INTERN. SOC., ETC. v. STADIUM AUTH. OF CITY, ETC.

• Decision Date: 07 November 1979
• Docket Number: Civ. A. No. 79-807.
• Citation: 479 F. Supp. 792
• Parties: INTERNATIONAL SOCIETY FOR KRISHNA CONSCIOUSNESS OF WESTERN PENNSYLVANIA, INC., a non-profit religious organization, Individually, and on behalf of the Members thereof, and Dennis Gorrick, President of the Pittsburgh Temple of the International Society for Krishna Consciousness of Western Pennsylvania, Inc., Plaintiffs, v. STADIUM AUTHORITY OF the CITY OF PITTSBURGH, a body politic and corporate, Charles E. Portman, Executive Director of the Stadium Authority of the City of Pittsburgh, Three Rivers Management Corporation, a Pennsylvania Corporation, and Walter E. Golby, Executive Director of the Three Rivers Management Corporation, Defendants.
• Court: U.S. District Court — Eastern District of Pennsylvania

479 F. Supp. 792

INTERNATIONAL SOCIETY FOR KRISHNA CONSCIOUSNESS OF WESTERN PENNSYLVANIA, INC., a non-profit religious organization, Individually, and on behalf of the Members thereof, and Dennis Gorrick, President of the Pittsburgh Temple of the International Society for Krishna Consciousness of Western Pennsylvania, Inc., Plaintiffs, v. STADIUM AUTHORITY OF the CITY OF PITTSBURGH, a body politic and corporate, Charles E. Portman, Executive Director of the Stadium Authority of the City of Pittsburgh, Three Rivers Management Corporation, a Pennsylvania Corporation, and Walter E. Golby, Executive Director of the Three Rivers Management Corporation, Defendants.

Civ. A. No. 79-807.

United States District Court, W. D. Pennsylvania.

November 7, 1979.

COPYRIGHT MATERIAL OMITTED

Michael Malakoff, Berger, Kapetan & Malakoff, Pittsburgh, for plaintiffs.

H. Woodruff Turner, Kirkpatrick, Lockhart, Johnson & Hutchison, Pittsburgh, Pa., for Three Rivers Management and Walter Golby.

David J. Armstrong, Dickie, McCamey & Chilcote, Pittsburgh, Pa., for Stadium Authority and Charles Portman.

OPINION

SNYDER, District Judge.

The International Society for Krishna Consciousness of Western Pennsylvania, Inc. (self styled ISKCON), brought action seeking injunctive and declaratory relief against, among others, the Three Rivers Management Corporation (Management) for interference with their First and Fourteenth Amendment rights. Management has counterclaimed for Federal trademark infringement and Federal and State unfair competition. Plaintiff has moved to dismiss the counterclaims and the motion will be granted.

I. Background

ISKCON, in its complaint, claims to be a religious society which imposes on its members the duty to perform "Sankirtan," the public broadcasting of the glories of God through religious rituals such as (a) the dissemination of the word of God through preaching and reading aloud from religious literature, (b) the distribution to the public of religious literature, and (c) the solicitation of contributions to ISKCON so that the members can spread the message of Krishna Consciousness.

In the Spring of 1979, members of ISKCON performed these religious practices at the Stadium and on the ramps, concourses, and walkways. Management threatened legal action if ISKCON continued its activities at the Stadium and allegedly prevented ISKCON from practicing their religion at the Stadium. ISKCON brought suit under 42 U.S.C. §§ 1983, 1988 and the First and Fourteenth Amendments for interfering with Plaintiffs' rights to free speech and assembly and the exercise of their religion.

Management claims in its counterclaim that in April 1979, members of ISKCON, while performing Sankirtan at the Stadium, were distributing buttons bearing an imitation of the Pirates team logo (the picture of a Pirate surrounded by the words "Pittsburgh Pirates")—a trademark owned by the Pittsburgh Athletic Club, Inc. (the Pirates) which the Pirates had duly registered and used in interstate commerce since at least 1972. Management claims that ISKCON's button distribution activity constituted trademark infringement and Federal and State unfair competition.

The Pirates are not parties to this action or to the counterclaims asserted by Management, which is a wholly-owned subsidiary of the Pirates. Management has leased Three Rivers Stadium from the Stadium Authority of the City of Pittsburgh and is responsible for the overall operation of the Stadium. Management leases the Stadium from time to time for specific events open to the public and to private groups. Management maintains security at the Stadium and claims it has consistently enforced a policy forbidding all charitable solicitation there. It was at Management's direction that ISKCON was denied access to the Stadium.

Management brings its counterclaims pursuant to an assignment by the Pirates "to transfer to Assignee the above-described trademark infringement and unfair competition claims and to confer on it the right in full power in its absolute discretion to dispose of the above-described trademark infringement claim. . . ." (A copy of the Assignment is attached hereto as Exhibit A.)

The Pirates have not licensed or assigned this trademark to ISKCON nor permitted ISKCON to distribute buttons bearing the trademark.

II. Discussion

A. The Trademark Infringement

We consider first the trademark infringement claim on which the parties concentrated their arguments. The Lanham Act, 15 U.S.C. § 1114, provides in part:

"(1) Any person who shall, without the consent of the registrant—infringe on a trademark shall be liable in a civil action by the registrant for the remedies hereinafter provided."

ISKCON argues that Management is not a registrant, or a licensee or assignee of the trademark, and hence cannot assert the trademark infringement claim, citing Quabaug Rubber Co. v. Fabiano Shoe Co., 567 F.2d 154 (1st Cir. 1977).

Management points to the "Definitions" section of the Lanham Act, 15 U.S.C. § 1127, wherein "registrant" is defined as "embracing the legal representatives, predecessors, successors and assigns of such . . . registrant."

The property rights in trademark are unique, existing only by statute. As stated in Dresser Industries, Inc. v. Heraeus Engelhard Vacuum, Inc., 395 F.2d 457, 464 (3rd Cir.), cert. denied 393 U.S. 934, 89 S.Ct. 293, 21 L.Ed.2d 270 (1968),

"a trademark is not property in the ordinary sense but only a word or symbol indicating the origin of a commercial product. The owner of the mark acquires the right to prevent the goods to which the mark is applied from being confused with those of others and to prevent his own trade from being diverted to competitors through their use of misleading marks. There are no rights in a trademark beyond these. It cannot be assigned in gross and may only be transferred with a business to identify the merchandise of the owner."

In Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24, 43 S.Ct. 254, 67 L.Ed. 516 (1923), an action was brought for patent infringement by the assignee of the patent owner's claims arising out of the alleged infringement of the patent by the defendant. The attempted assignment was held invalid and we find the reasoning instructive here.

The Supreme Court first explained the nature of the property right bestowed by the patent statute:

"The government is not granting the common-law right to make, use and vend, but it is granting the incident of exclusive ownership of that common-law right, which cannot be enjoyed save with the common-law right. A patent confers a monopoly. . . . The idea of monopoly held by one in making, using and vending connotes the right in him to do that thing from which he excludes others."

261 U.S. at 35-36, 43 S.Ct. at 257, 67 L.Ed. at 520. (Citations omitted).

The Court then quoted from Waterman v. Mackenzie, 138 U.S. 252, 255, 11 S.Ct. 334, 34 L.Ed. 923 (1891):

"`The monopoly thus granted is one entire thing, and cannot be divided into parts, except as authorized by those laws. The patentee or his assigns may, by instrument in writing, assign, grant, convey, either, 1st, the whole patent, comprising the exclusive right to make, use, and vend the invention throughout the United States; or, 2d, an undivided part or share of that exclusive right; or, 3d, the exclusive right under the patent within and throughout a specified part of the United States. . . . Any assignment or transfer, short of one of these, is a mere license, giving the licensee no title in the patent, and no right to sue at law in his own name for an infringement.'"

261 U.S. at 37, 43 S.Ct. at 257, 67 L.Ed. at 520.

And the Court, quoting from Gayler v. Wilder, 51 U.S. (10 How.) 477, 13 L.Ed. 504 (1851), then stated:

"`It was obviously not the intention of the Legislature to permit several monopolies to be made out of one, and divided among different persons within the same limits. Such a division would inevitably lead to fraudulent impositions upon persons who desired to purchase the use of the improvement, and would subject a party who, under a mistake as to his rights, used the invention without authority, to be harassed by a multiplicity of suits instead of one, and to successive recoveries of damages by different persons holding different portions of the patent right in the same place.'"

261 U.S. at 38, 43 S.Ct. at 257, 67 L.Ed. at 520-21. (Citations omitted).

The Court responded to Nye Tool's argument that the right to sue was an assignable chose in action, as follows:

"It is said that the claim of an owner of a patent for damages for infringement is only a chose in action which in modern days may be so assigned that the assignee acquires full title and the right to sue at law as well as in equity without joining his assignor. This view ignores the peculiar character of patent property and the recognized rules for the transfer of its ownership and its incidents. Patent property is the creature of statute law and its incidents are equally so and depend upon the construction to be given to the statutes creating it and them, in view of the policy of Congress in their enactment. This is shown by the opinion of this Court in Waterman v. Mackenzie, supra, and in the line of authorities followed therein. It is not safe, therefore, in dealing with a transfer of rights under the patent law, to follow implicitly the rules governing a transfer of rights in a chose in action at common law. As Chief Justice Taney said in Gayler v. Wilder, supra:

`The monopoly did not exist at common law, and the rights, therefore, which may be exercised under it cannot be regulated by the rules of the common law. It is created by the act of Congress; and no rights can be acquired in it unless authorized by statute, and in the manner the statute prescribes.'

The law as to who should bring a suit at law for damages by infringement of a patent is clearly and correctly stated in Robinson on Patents, vol. 3, § 937, as

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