International Olympic Committee v. San Francisco Arts & Athletics

• Decision Date: 27 January 1986
• Docket Number: 84-2528,Nos. 84-1759,s. 84-1759
• Citation: 781 F.2d 733
• Parties: INTERNATIONAL OLYMPIC COMMITTEE, a corporation organized and existing under the laws of Switzerland; United States Olympic Committee, a corporation organized and existing under the laws of the United States of America, Plaintiffs-Cross-Defendants-Appellees, v. SAN FRANCISCO ARTS & ATHLETICS, a California corporation, and Thomas P. Waddell, Defendants-Cross-Plaintiffs-Appellants.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 733

781 F.2d 733

228 U.S.P.Q. 585

INTERNATIONAL OLYMPIC COMMITTEE, a corporation organized and existing under the laws of Switzerland; United States Olympic Committee, a corporation organized and existing under the laws of the United States of America Plaintiffs-Cross-Defendants-Appellees, v. SAN FRANCISCO ARTS & ATHLETICS, a California corporation and Thomas P. Waddell Defendants-Cross-Plaintiffs-Appellants.

Nos. 84-1759, 84-2528.

United States Court of Appeals, Ninth Circuit.

Argued and Submitted June 11, 1985.

Decided Jan. 27, 1986.

Walter Allan, John Hansen, Vaughn Walker, Pillsbury, Madison, & Sutro, San Francisco, Cal., Richard Kline, Joseph Lewis, Edward T. Colbert, Beveridge, Degrandi, & Kline, Washington, D.C., for plaintiffs-cross-defendants-appellees.

Mary C. Dunlap, San Francisco, Cal., Susan McGreivy, American Civil Liberties Union Nat. Gay/Lesbian Rights Project, Los Angeles, Cal., for defendants-cross-plaintiffs-appellants.

Appeal from the United States District Court for the Northern District of California.

Before GOODWIN and WALLACE, Circuit Judges, and STEPHENS, District Judge ^*.

GOODWIN, Circuit Judge.

This case arises out of the San Francisco Arts and Athletics' (SFAA) use of the phrase "Gay Olympics" to describe an athletic competition it sponsored. The United States Olympic Committee (USOC) and the International Olympic Committee (IOC) brought suit under the Amateur Sports Act of 1978, codified at 36 U.S.C. Secs. 371-96 (1982), against SFAA and various individuals to restrain the use of "Olympics" to describe the event. Plaintiffs also made various related claims, which were not subsequently pressed, and are no longer in the case. The district court issued a temporary restraining order and then a preliminary injunction, which was affirmed by this court. After further proceedings in the district court, summary judgment and a permanent injunction were awarded to USOC and IOC. Defendants appealed from the judgment and injunction and an award of attorneys' fees. The appeals were consolidated and are now before us. We affirm the summary judgment and injunction, but reverse and remand the award of attorneys' fees.

I. The Amateur Sports Act Claim

A. The Act

The Amateur Sports Act of 1978 confers a corporate charter on USOC and gives that body certain rights in the word "Olympics" and related symbols. The act provides:

(a) Without the consent of [USOC], any person who uses for the purpose of trade, to induce the sale of any goods or services, or to promote any theatrical exhibition, athletic performance, or competition--

* * *

(4) the words "Olympic," "olympiad," "Citius Altius Fortius," or any combination or simulation thereof tending to cause confusion, to cause mistake, to deceive, or to falsely suggest a connection with [USOC] or any Olympic activity;

shall be subject to suit in a civil action by the [USOC] for the remedies provided in the Act of July 5, 1946 (60 Stat. 427; popularly known as the Trademark Act of 1946)....

36 U.S.C. Sec. 380(a)(4)(1982).

It is uncontested that SFAA used "Olympic" in the promotion of its games. This use involved not only the advertising of the games, but the selling of products with the word "Olympic" on them. Because confusion between USOC's use and SFAA's use was a disputed question of fact, the summary judgment can be sustained only if the Act does not require confusion.

SFAA argues that Sec. 380(a)(4) can only be read as requiring confusion between uses because the "tending to cause confusion" language must be applied to the whole clause. USOC argues that confusion is an element of a claim under the clause only where a simulation is used rather than the proscribed words and symbols.

The difficulty with SFAA's argument is that when Sec. 380 was adopted, it replaced a provision prohibiting the use of the protected words or any combination of them. See 36 U.S.C. Sec. 379 (1976) (amended 1978). Section 380 was intended to make the civil remedies of the Trademark Act of 1946 available to USOC and to give USOC the exclusive right to market licenses for use of the protected words and symbols. See H.R.Rep. No. 1627, 95th Cong., 2d Sess. 1978, 8-10, 15, 37, reprinted in 1978 U.S.Code Cong. & Ad.News 7478-95. See also United States Olympic Committee v. Intelicense Corp., 737 F.2d 263, 266-67 (2d Cir.), cert. denied, --- U.S. ----, 105 S.Ct. 387, 83 L.Ed.2d 321 (1984) (false association with the USOC not required); United States Olympic Committee v. International Federation of Bodybuilders, 219 U.S.P.Q. 353, 361 (D.D.C.1982) (likelihood of confusion that goods or services stem from USOC not required). Other courts have remarked on the need to insure the market value of licenses for the use of Olympic symbols. See Stop the Olympic Prison v. United States Olympic Committee, 489 F.Supp. 1112, 1120 (S.D.N.Y.1980). In view of the pre-existing criminal sanction that prohibited nonconfusing uses and the intent to broaden USOC's protection and to ensure its power to license the symbols and words, we conclude that confusion is unnecessary.

SFAA also raises various Lanham Act defenses. When Congress adopted the Amateur Sports Act, it provided that Lanham Act remedies would be available to USOC. It omitted any provision for Lanham Act defenses. In light of the purpose of the Act, which gives the USOC more power than any ordinary trademark holder by allowing it to prohibit nonconfusing uses, and the express inclusion of Lanham Act defenses in a similar statute, see The Trademark Counterfeiting Act of 1984, Pub.L. No. 98-473, Sec. 1502(a), 98 Stat. 1837, 2178-79, codified at 18 U.S.C.A. Sec. 2320(c) & (d)(1)(B) (West.Supp.1985), we conclude Congress' omission was intentional. As a result, the Lanham Act defenses raised are irrelevant.

B. Application

SFAA claims that even if the statute was intended to bar the use of the word "Olympics" notwithstanding a confusing effect, the application of the statute to SFAA is unconstitutional.

SFAA's first argument is based on the equal protection component of the Fifth Amendment due process clause. It argues that USOC has discriminated between homosexual groups and others in determining against whom to enforce its rights in "Olympic." It cites numerous other competitive games advertised as "Olympics" which have gone unchallenged by USOC. USOC denies discrimination and adduces other litigation by it, albeit begun after SFAA made a claim of discrimination in the instant case.

We need not resolve the difficult issue of the applicability of equal protection guarantees or determine whether USOC discriminated because we find the absence of governmental involvement in the alleged discrimination dispositive. SFAA argues that the judicial enforcement of the Olympic Committee's rights constitutes sufficient involvement, citing Shelley v. Kraemer, 334 U.S. 1, 68 S.Ct. 836, 92 L.Ed. 1161 (1948). However, in the absence of special benefit flowing to the state from the challenged action, see Burton v. Wilmington Parking Authority, 365 U.S. 715, 724, 81 S.Ct. 856, 861, 6 L.Ed.2d 45 (1961), state action will not be found unless there was a governmental decision to violate rights. Therefore, state enforcement of private rights generally will not itself meet the state action requirement. See Cobb v. Georgia Power Co., 757 F.2d 1248, 1251 (11th Cir.1985). That the United States conferred special property rights in USOC's trademarks does not make USOC's exploitation of those rights state action. Many property rights, such as ordinary trademarks and copyrights, see, e.g., Walt Disney Productions v. Air Pirates, 345 F.Supp. 108, 115-16 (N.D.Cal.1972), aff'd in relevant part, 581 F.2d 751, 758-59 (9th Cir.1978), cert. denied, 439 U.S. 1132, 99 S.Ct. 1054, 59 L.Ed.2d 94 (1979) or the right to exclude, see Hudgens v. NLRB, 424 U.S. 507, 512-21, 96 S.Ct. 1029, 1032-37, 47 L.Ed.2d 196 (1976), can be enforced to limit protected speech without violating the Constitution because there is no state action. While SFAA's claims that the government financed USOC and jointly marketed Olympic medals with it are more persuasive, Rendell-Baker v. Kohn, 457 U.S. 830, 102 S.Ct. 2764, 73 L.Ed.2d 418 (1982), makes clear that neither financing nor contractual relationships by themselves suffice to make a private entity a governmental actor. Id. at 840-41, 102 S.Ct. at 2770-71.

SFAA also appears to argue that by barring nonconfusing speech, the Act violates the rights of commercial speech under the First Amendment. See Central Hudson Gas & Electric Corp. v. Public Service Commission, 447 U.S. 557, 563-64, 100 S.Ct. 2343, 2350, 65 L.Ed.2d 341 (1980). Ordinary trademark actions are based on a finding of confusion of products, and hence of misleading speech, and SFAA claims this limit is constitutionally imposed. However, the word "Olympic" and its associated symbols and slogans are essentially property. Such property rights can be protected without violating the First Amendment. See Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 573-77, 97 S.Ct. 2849, 2856-58, 53 L.Ed.2d 965 (1977) (property rights in performance of human cannonball act may properly receive priority over First Amendment rights of broadcaster), Hudgens v. NLRB, 424 U.S. 507, 518-21, 96 S.Ct. 1029, 1035-37, 47 L.Ed.2d 196 (1976) (state private property rights defeat claim to speak freely on the property of another). The Supreme Court has approved the decisions of federal trial courts upholding the exclusive right to use literary works against First Amendment challenge. See Zacchini, 433 U.S. at 576-77 & 577 n. 13, 97 S.Ct. at 2857-58 & 2858 n. 13. Because SFAA had satisfactory alternative means for expressing its opposition to the Olympics, it has no First Amendment right to use "Olympics" or the Olympic symbols to promote its games or products.

C. Relief Awarded

The district judge granted USOC a permanent injunction against SFAA's use of the name. SFAA argues that...