Three Blind Mice Designs Co., Inc. v. Cyrk, Inc.
| Decision Date | 16 June 1995 |
| Docket Number | Civ. A. No. 94-11710-PBS. |
| Citation | 892 F. Supp. 303 |
| Parties | THREE BLIND MICE DESIGNS CO., INC., Plaintiff/Counterdefendant, v. CYRK, INC., Defendant/Counterplaintiff. |
| Court | U.S. District Court — District of Massachusetts |
COPYRIGHT MATERIAL OMITTED
Ralph A. Loren, Ann Lamport Hammitte, Lahive & Cockfield, Boston, MA, for Three Blind Mice Designs Co., Inc.
Edward R. Schwartz, Christie, Parker & Hale, Pasadena, CA, Roger M. Barzun, Law Office of Roger M. Barzun, Concord, MA, for Cyrk, Inc.
FINDINGS OF FACT, CONCLUSIONS OF LAW AND ORDER OF ENTRY OF JUDGMENT
Plaintiff Three Blind Mice Designs Co., Inc. ("TBM") and defendant Cyrk, Inc. ("Cyrk"), both produce t-shirts and other apparel imprinted with caricatures of sports referees in the form of three blind mice. Plaintiff files claims under the federal unfair competition statute, section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) and state law. After a bench trial, this court concludes that defendant has violated section 43(a). Although TBM has failed to establish entitlement to damages, the Court orders Cyrk to refrain from selling any of its apparel with the "3 Blind Refs" design in Massachusetts.
Three Blind Mice Designs Company, Inc. (TBM) was incorporated in Massachusetts on September 25, 1992, by Paul Stewart. TBM's sole office is located at the situs of Robert Morahan's business, Hunter's Enterprises, in Woburn, Massachusetts. Stewart is the President and principal shareholder of TBM. Plaintiff uses the trade name Three Blind Mice.
Stewart is a National Hockey League ("NHL") Official, and has been so since 1985. He has been involved in professional hockey, originally as a player, for twenty years. So were his father and grandfather before him. The nursery rhyme, "Three Blind Mice" is commonly played at hockey games when the officials come onto the ice. This gave Stewart the idea of creating a tasteful, good-humored design showing three blind mice as hockey referees.
After the hockey season was over in 1991, Stewart sought out the services of an artist to design a three blind mice motif for sports officials, which he then had placed on shirts. Initially, in 1991 he gave shirts with this design away to people he worked with, and at charity events, like one for the Special Olympics. After displaying his shirt on a local television show in October, 1991, he filled orders for 30 shirts with the three blind mice logo. Stewart has used the "Three Blind Mice" hockey design on clothing, as a designation of source or origin, since August or September 1991. Plaintiff has sold apparel with the remaining designs (soccer, basketball, baseball, football) in interstate commerce on clothing, as a designation of source or origin, since October 1992. Stewart also uses the three blind mice design and name on business cards, letterhead, stationery and mail order sheets.
The "Three Blind Mice" designs are fanciful representations of three gray mice wearing dark glasses and officials' shirts. See Appendix A. The designs are customized for soccer, hockey, basketball, football, and baseball by, inter alia, placing the equipment for the particular sport into the hands of one of the referee mice. The "Three Blind Mice" designs are displayed on t-shirts and sweat-shirts in silk-screened form. The Three Blind Mice Designs are also embroidered on hats, the breast of golf shirts, the breast of sweaters, and the neck of turtleneck sweaters.
Stewart owns Massachusetts Trademark Registration No. 46738, dated April 21, 1992 for a design mark for use on clothing. Massachusetts Trademark Registration No. 46738 is for a design mark depicting three gray mice, dressed in black and white striped referee shirts, and wearing sunglasses. All the mice are on hockey skates. On the application dated April 14, 1992, Stewart stated that he first used the mark in Massachusetts in 1992.
Stewart has marketed TBM apparel in a variety of different ways. Beginning in July, 1992, Stewart appeared regularly on local and national television and on radio talk shows, in his capacity as a hockey referee, and displayed his clothing bearing the "Three Blind Mice" designs. TBM also obtains considerable publicity by donating clothing and a percentage of its revenues to charitable and fund-raising organizations, and has done so since its inception. For example, in 1993 and 1994, Stewart gave away shirts at the Salvation Army, at the Special Olympics, the Juvenile Diabetes Foundation, at the Channel 2 Auction, and at innumerable hockey, golf and school events. However, Stewart is a poor recordkeeper, and has not maintained records of how much money or clothing was actually contributed to charity.
More conventionally, plaintiff also advertises its goods in print in Referee Magazine, which goes to all sports officials in the United States, and in Hockey/U.S.A. In 1992, he sent out mail order catalogues to all NHL employees, and sold his shirts from 1992 in national "slap" shops which cater to hockey players. He has placed his hockey apparel in kiosks in most hockey arenas in North America. He also in 1993 sold shirts through the Central Hockey League in Tulsa, Oklahoma, and the International Hockey League. TBM's advertising and promotional expenses for 1993 were $6,068, and for 1994, $2,310.
The print advertisements often state that proceeds are given to charitable organizations, as do the hang tags or inserts attached to plaintiff's goods. However, TBM does not have a written contract with either Special Olympics or Massachusetts Juvenile Diabetes authorizing TBM's solicitations on their behalf; has never registered as a commercial co-venturer with the public charities division of the Massachusetts Attorney General's Office (the "Division"); has never filed a bond or a financial statement with the Division; has never guaranteed that a specific percentage of its sales proceeds would go to the designated charity; and has not kept complete financial records of its activities within the Commonwealth.
Plaintiff markets its clothing in commerce to the public directly, in retail stores in Massachusetts, like Holivak and Coughlin and five Crosby Athletic stores in New York. In November 1992, he hired three part-time sales representatives, who attempted to sell goods in New Jersey, New York, Philadelphia and Los Angeles. While TBM gave samples to many celebrities (like President Clinton, Wayne Gretzky and even Robert Shapiro) and to retail stores in different states and Canada, he never made any significant inroads into any non-hockey markets other than Massachusetts. Indeed, in both 1993 and 1994, TBM was "in the red." Its sales force has been cut down to one.
TBM has made the following applications to the U.S. Trademark Office1:
Application
Serial No. Filing Date Design
74/532,253 June 1, 1994 Three Blind
Mice Soccer
Design
74/532,300 June 1, 1994 Three Blind
Mice Basketball
Design
74/532,325 June 1, 1994 Three Blind
Mice Hockey
Design
These applications have been rejected by the PTO on the grounds that the designs are mere ornamentation. Although the three blind mice designs are not registered with the PTO, TBM nevertheless has improperly used the federal trademark registration symbol, an R within a circle, with the designs since their creation.
Cyrk, Inc., is a publicly traded corporation located in Gloucester, Massachusetts, which has been designing, manufacturing and distributing items of apparel, including t-shirts, since 1976. In addition to apparel sold under the Cyrk house mark, Cyrk private labels t-shirts for such prominent companies as Gillette, FAO Schwartz, Fidelity Investments, and Esprit. As a result of its nearly twenty years in the apparel business, Cyrk is well-known in the trade as a source of high quality athletic apparel.
Cyrk presently employs approximately 50 artists in-house. In July 1993, it employed approximately 40 artists. One of Cyrk's divisions is devoted to the design and sale of Cyrk-branded athletic apparel. Cyrk has made t-shirts which are addressed to the soccer market for six or seven years and is very well known in the soccer trade. In 1994, Cyrk added a basketball line of t-shirts.
Cyrk brand apparel is promoted at trade shows and by Cyrk sales representatives. Cyrk customers include athletic retail chain stores and soccer specialty stores. Cyrk has thousands of accounts, of which hundreds have purchased the accused t-shirts. Cyrk does not make hockey apparel and its products are not sold at hockey arenas.
Cyrk usually introduces two lines of t-shirts per year. These lines are shown in Cyrk catalogs which are distributed at trade shows and to Cyrk's prospective customers and customers. Cyrk-branded t-shirts have a label attached on the inside of the collar which identifies the Cyrk brand. In addition, a hangtag is attached to the t-shirts which clearly identifies Cyrk as the source of the t-shirt. Further, some t-shirts, such as the accused t-shirts, bear a copyright notice indicating Cyrk as the owner of the T-shirt's design.
Anton Nistl, Cyrk's director of sales-retail, played soccer for many years. His career culminated with his earning All-American honors at UCLA and playing for the United States National Team. Upon joining Cyrk in July 1993, Nistl suggested an idea for a t-shirt design which he had had since his youth. The idea, which was based on a parody of the nursery rhyme, "Three Blind Mice," was to have three blind mice as soccer referees. Peter Silva, one of Cyrk's top staff artists, was told the idea by Nistl but was not given any instructions as to the actual design. Silva promptly created a design based on Nistl's idea. See Appendix B. The...
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