Pirone v. MacMillan, Inc.

• Citation: 894 F.2d 579
• Decision Date: 29 January 1990
• Docket Number: No. 461,D,461
• Parties: , 17 Media L. Rep. 1472 Dorothy Ruth PIRONE, Julia Ruth Stevens, Babe Ruth League, Incorporated and Curtis Management Group, Incorporated, Plaintiffs-Appellants, v. MACMILLAN, INCORPORATED, Defendant-Appellee. ocket 89-7750.
• Court: United States Courts of Appeals. United States Court of Appeals (2nd Circuit)

Page 579

894 F.2d 579

13 U.S.P.Q.2d 1799, 17 Media L. Rep. 1472

Dorothy Ruth PIRONE, Julia Ruth Stevens, Babe Ruth League, Incorporated and Curtis Management Group, Incorporated, Plaintiffs-Appellants, v. MACMILLAN, INCORPORATED, Defendant-Appellee.

No. 461, Docket 89-7750.

United States Court of Appeals, Second Circuit.

Argued Dec. 7, 1989.

Decided Jan. 29, 1990.

W. Mack Webner, Washington, D.C. (Baker & Hostetler, Wash., D.C.; Bryan, Levitin, Franzino & Rosenberg, New York City, of counsel), for plaintiffs-appellants.

Richard M. Constantine, New York City (Jerry S. Birenz, Sabin, Bermant & Gould, Jan F. Constantine, New York City, of counsel), for defendant-appellee.

(R. Bruce Rich, Gregory S. Shatan, Weil, Gotshal & Manges, New York City, submitted a brief for amicus curiae Association of American Publishers, Inc.)

Before KAUFMAN, NEWMAN and WINTER, Circuit Judges.

IRVING R. KAUFMAN, Circuit Judge:

For almost a century and a half, baseball has been central to our common American heritage. The "National Pastime" has become a part of the national character and, to an extent, it belongs to all of us. Baseball's great players are public icons. But, to varying degrees, their names and pictures are also valuable commodities owned by persons anxious to prevent any unauthorized use of their property. This case forces us to assay the extent to which the name and likeness of George Herman "Babe" Ruth is such a protectible commodity.

Babe Ruth hardly needs an introduction. He was one of the greatest baseball players of all time. A stand-out pitcher in his While he lived, Ruth was paid by manufacturers for the use of his picture or name in promoting the sale of various products. After Ruth's death, his daughters, appellants Dorothy Ruth Pirone and Julia Ruth Stevens, registered the words "Babe Ruth" as a trademark for "paper articles, namely, playing cards, writing paper and envelopes." Appellant Babe Ruth League, Inc., an amateur baseball league, was licensed to use the trademark to promote the league and to sell products bearing the Babe Ruth name, which it has done since 1955. Appellant Curtis Management Group, Inc., was authorized to license the mark to third parties in exchange for royalties.

                early years, his renown derives principally from his prowess as a hitter.  His place in the pantheon of baseball legends is assured and his name is among those "that have sparked the diamond and its environs and that have provided tinder for recaptured thrills, for reminiscence and comparisons, and for conversation and anticipation in-season and off-season."    Flood v. Kuhn, 407 U.S. 258, 262, 92 S.Ct. 2099, 2102, 32 L.Ed.2d 728 (1972)
                

In 1987, the appellee published The 1988 MacMillan Baseball Engagement Calendar. In addition to the inclusion of "MacMillan" as part of the title, the back cover, the title page, and the copyright page all prominently refer to the MacMillan Publishing Company. The words "Babe Ruth" do not appear on the cover.

We shall attempt to describe the exhibit in dispute. Each right-hand page consists of a calendar for a given week, supplemented by baseball trivia linked to a particular date. Each left-hand page bears a photograph of a baseball player, ballfield, or other item of potential interest to fans. For example, the week of June 13 features a grinning Lou Gehrig crossing the plate after hitting a home run, while the week of October 17 displays Mickey Mantle in full swing.

This appeal concerns the inclusion of three Babe Ruth photos in the calendar. A picture of Ruth helping a small boy with his batting grip appears on its cover. The week of October 31-November 6 shows Ruth saluting General John Pershing. In addition, a baseball autographed by Ruth illustrates the week of December 5. Though they claimed no particular ownership interest in these specific photographs, Pirone and the other appellants (hereinafter collectively referred to as "Pirone") objected to the use of Ruth's likeness.

Pirone filed suit, alleging federal and common law trademark infringement and unfair competition, infringement of the common law right of publicity, and violation of the New York Civil Rights Law. Pirone sought a permanent injunction, an accounting, damages, and attorneys' fees. The district court granted MacMillan's motion for summary judgment on the trademark infringement and unfair competition claims, see Fed.R.Civ.P. 56, and also granted its motion to dismiss the remaining counts for failure to state a claim on which relief may be granted, pursuant to rule 12(b)(6).

DISCUSSION

A trademark is a very unique type of property. "There is no such thing as property in a trade-mark except as a right appurtenant to an established business or trade in connection with which the mark is employed." United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97, 39 S.Ct. 48, 50, 63 L.Ed. 141 (1918). Therefore, a trademark is "not property in the ordinary sense," but only a word or symbol indicating the origin or source of a product. Industrial Rayon Corp. v. Dutchess Underwear Corp., 92 F.2d 33, 35 (2d Cir.1937), cert. denied 303 U.S. 640, 58 S.Ct. 610, 82 L.Ed. 1100 (1938). The owner of the mark acquires the right to prevent his goods 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 trade-mark beyond these." Id.

To prevail on a statutory or common law trademark infringement claim a plaintiff must demonstrate an infringement of this limited property right. He must establish that the symbols in which this property To be awarded summary judgment, MacMillan must demonstrate the absence of any material factual issue genuinely in dispute and that it is deserving of judgment as a matter of law. Fed.R.Civ.P. 56(c); Heyman v. Commerce & Indus. Ins. Co., 524 F.2d 1317, 1319-20 (2d Cir.1975). The record must be construed in the light most favorable to Pirone, and all reasonable inferences must be drawn to its advantage. United States v. Diebold, 369 U.S. 654, 655, 82 S.Ct. 993, 994, 8 L.Ed.2d 176 (1962) (per curiam). Bearing these principles in mind, we conclude that MacMillan carried its burden and was entitled to summary judgment on the trademark infringement and unfair competition claims.

right is asserted are valid, legally protectible trademarks; that they are owned by plaintiff; and that defendant's subsequent use of similar marks is likely to create confusion as to origin of the goods. See Estate of Presley v. Russen, 513 F.Supp. 1339, 1362 (D.N.J.1981), and cases cited therein.

Pirone's federal claims are based on sections 32(1) and 43(a) of the Lanham Act, 15 U.S.C. Secs. 1114(1), 1125(a). ¹ The first question we must address under the section 32(1) infringement claim is whether Pirone's registered trademark embraces the photographs at issue. Put another way, can the photos of Ruth be considered a "colorable imitation" of Ruth's registered mark?

The starting point of our examination is to determine whether a mark is eligible for protection. This Court has in the past categorized marks by their eligibility to trademark status and their relative strength. ² While these categories can be useful, establishing a particular term or symbol as a valid trademark "depends ultimately on its distinctiveness, or its 'origin-indicating' quality, in the eyes of the purchasing public." McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1131 (2d Cir.1979).

Pirone argues that it owns valid, protectible trademark rights in the image and name of Babe Ruth. Although its registration is limited to the words "Babe Ruth," Pirone would have us read her rights in that word mark to include every photograph of Ruth ever taken. We decline to do so.

While "words and their pictorial representations should not be equated as a matter of law, a district court may make such a determination as a factual matter," Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 257 (2d Cir.1987). Nonetheless, Pirone's position finds support in neither precedent nor common sense. Every case in which the owner of a word mark received protection against infringing use of a picture mark, or vice versa, involved a true picture mark, a single pictorial representation used repeatedly as an indication of origin. ³ For example, a picture of an overflowing stein of beer on a package of peanuts intended for the tavern trade was held to infringe the registered word mark "Beer Nuts" held by a rival Unlike a stylized flying horse or similar picture marks, an individual's likeness is not a consistently represented fixed image--different photographs of the same person may be markedly dissimilar. Thus a photograph of a human being, unlike a portrait of a fanciful cartoon character, is not inherently "distinctive" in the trademark sense of tending to indicate origin. Allen v. Men's World Outlet, Inc., 679 F.Supp. 360, 366 n. 12 (S.D.N.Y.1988). Under some circumstances, a photograph of a person may be a valid trademark--if, for example, a particular photograph was consistently used on specific goods. Pirone, however, asserts rights in every photograph of Ruth.

supplier of similar nuts. Beer Nuts, Inc. v. King Nut Co., 477 F.2d 326 (6th Cir.1973). Our decision in Mobil Oil involved the interplay between the word mark "Pegasus" and Mobil's well known flying horse symbol which had been in use for over fifty years and was conceded to be a very strong mark. 818 F.2d at 257.

This sweeping contention resembles that rejected in Estate of Presley v. Russen, 513 F.Supp 1339 (D.N.J.1981). The estate of the entertainer Elvis Presley argued that his "image and likeness" was a valid mark. The District of New Jersey rejected the claim as too broad. Id. at 1363-64. However, the court went on to note that a particular image of Presley ⁴ could be a valid mark since it had been used consistently in promotional and advertising materials and thus had...