University of Pittsburgh v. Champion Products, Inc.

• Citation: 566 F. Supp. 711
• Decision Date: 23 June 1983
• Docket Number: Civ. A. No. 81-2167.
• Parties: UNIVERSITY OF PITTSBURGH, a non-profit corporation, Plaintiff, v. CHAMPION PRODUCTS, INC., a corporation, Defendant.
• Court: U.S. District Court — Eastern District of Pennsylvania

566 F. Supp. 711

UNIVERSITY OF PITTSBURGH, a non-profit corporation, Plaintiff, v. CHAMPION PRODUCTS, INC., a corporation, Defendant.

Civ. A. No. 81-2167.

United States District Court, W.D. Pennsylvania.

June 23, 1983.

Walter Blenko, Buell, Blenko, Ziesenheim & Beck, Pittsburgh, Pa., for plaintiff.

William H. Hauser, Anderson, Moreland & Bush, Pittsburgh, Pa., Paul J. Weiner, Breed, Abbott & Morgan, New York City, for defendant.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

COHILL, District Judge.

Introduction

This is the second set of findings of fact and conclusions of law we have issued in this case.

We have considerable sympathy for the plaintiff, University of Pittsburgh ("Pitt"). The notion that a university's name and insignia are its own property, to do with as it chooses, has a certain common-sense appeal. An examination of the law and the facts in this case has convinced us, however, that neither Congress, nor the Pennsylvania Legislature, nor the common law has created the property right that Pitt asserts here. We believe that were we to rule in favor of Pitt, we would be creating a new substantive right in an area of the law in which Congress and the states have legislated extensively. The relief sought by Pitt is not minor; it amounts to a judicially created, perpetual monopoly on a product, Pitt-insignia soft goods, which many people wish to purchase.

For the reasons that follow, we believe that Pitt has failed to prove a violation of either federal or state trademark law by Champion Products, Inc.

Findings of Fact

I. Procedural Background

1. This case is before us on remand from the United States Court of Appeals for the Third Circuit. University of Pittsburgh v. Champion Products Inc., 686 F.2d 1040 (3d Cir.), cert. denied, ___ U.S. ___, 103 S.Ct. 571, 74 L.Ed.2d 933 (1982) (hereinafter "686 F.2d at ___").

2. Our original opinion of January 7, 1982, University of Pittsburgh v. Champion Products, Inc., 529 F.Supp. 464 (W.D.Pa. 1982), dealt only with the question of laches. The Court of Appeals reversed only to the extent that it held that Pitt's claim for prospective injunctive relief was not barred by laches. The Court of Appeals remanded the case for disposition of all the remaining issues. 686 F.2d at 1049.

3. The Court of Appeals specifically affirmed our findings of "historical facts." 686 F.2d at 1041.

II. Supplemental Findings of Fact

1. We now specifically reaffirm our original Findings of Fact 1-37 made January 7, 1982. 529 F.Supp. at 465-469. Findings of Fact 5-6 and 36-37 will require further explanation because of the additional issues present on remand.

A. Likelihood of Confusion

2. We find, as a matter of fact, that there is no likelihood of confusion, whether of source, origin, sponsorship, endorsement, or any other nature, between the soft goods of defendant, Champion Products, Inc. ("Champion"), emblazoned with Pitt insignia, and with the plaintiff, Pitt.

3. This finding rests upon, inter alia, the following facts:

(1) Champion's long-standing sales of the Pittsburgh insignia soft goods in commerce without any instances of actual confusion (Original Findings 14-15 and 35 and Supplemental Findings 4-21 hereunder);

(2) The total absence of any other probative evidence of consumer attitudes or reactions (Supplemental Finding 22 hereunder);

(3) Champion's efforts to indicate the actual source, origin, sponsor, and endorser — i.e., Champion — of the Pitt insignia soft goods at issue (Original Findings 28-31 and Supplemental Findings 23-24 hereunder);

(4) The lack of any evidence that Champion has ever done anything to indicate or represent that the Pitt insignia on its soft goods amounted to an indicator of source, origin, sponsorship or endorsement (Original Findings 32-35 and Supplemental Findings 25-26 hereunder);

(5) The fact that there was no historical custom or practice in the soft goods industry treating the school, college or university insignia prominently emblazoned on the outside of soft goods as an indicator of source, origin, sponsorship or endorsement. (Original Findings 15-19 and Supplemental Findings 27-29 hereunder)

(1) Absence of Actual Confusion

4. We previously found as follows:

"14. From in or about 1936 to the present, Champion's sales were continuous and substantial, with two minor exceptions, one during World War II, and one noted in paragraph 18 herein. Champion has sold soft goods bearing Pitt insignia in each year since 1946 to entities not affiliated with Pitt.

"15. From about 1936 to 1960, Champion sold its soft goods bearing the Pitt insignia to the main University book store located on the Pitt campus. During that same period of time, Champion sold Pitt insignia software continuously to others not affiliated with Pitt."

529 F.Supp. at 464, 467.

5. Despite these 47 years of continuous and substantial sales, Pitt has failed to provide a convincing instance of actual confusion involving these goods, i.e., an instance in which a consumer has purchased or attempted to purchase Champion Pitt insignia soft goods in the erroneous belief that Pitt was the source, origin, sponsor, or endorser thereof.

6. Pitt pointed to only two incidents of supposed consumer confusion.

7. One, was a customer who came to the Pitt Bookstore with a shirt which, according to the customer, had worn out prematurely, and the shirt had been purchased elsewhere.

8. Pitt presented no proof that the garment involved was even a Champion garment. (Bonach, 273-274, 276-278). (Citations to trial testimony will be by witness name and transcript page number throughout these Findings of Fact and Conclusions of Law.) In order to prove likelihood of confusion between Champion products and Pitt, there would have to be some evidence that a Champion product was involved in the transaction in one way or another.

9. This testimony would at best be an indication of confusion after the sale had been made, not of purchaser confusion:

"Not only is this incident suggestive only of confusion after a purchase has been made, but also there is considerable evidence of the care taken by the defendant to prevent customer confusion including clearly labeling both the product and containers in which they were shipped...."

Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 237, 84 S.Ct. 779, 781, 11 L.Ed.2d 669 (1964).

10. Finally, there is a third problem with this one alleged incident to which Mrs. Bonach testified. There is no evidence that Pitt ever used the Pitt insignia emblazoned on garments in order to determine which goods had been sold at the university book store or not, and were entitled to return or refund there.

11. That function was performed solely by the sales slip. (Bonach, 276-278).

12. Mrs. Bonach also testified that students had attempted to return books and other goods which did not display the Pitt insignia at all. (Bonach, 277-278).

13. It would not be appropriate to hold that because there is evidence that one person over a period of many years attempted to return retail goods of a particular type which the university book store stocked, but which had been purchased elsewhere, that the university could obtain a permanent injunction against their sale to anyone else.

14. The second incident of alleged confusion to which Pitt referred is the testimony of Mr. McKenzie. (McKenzie, 108-111).

15. This Court has previously found as follows:

"35. Pitt introduced some testimony at trial through Jay McKenzie, a Pittsburgh retailer, that some unidentified person, who answered the telephone at Champion, had advised him that Champion did, indeed, have a license to use Pitt insignia on its soft goods. Champion personnel denied this, and we find the testimony under these circumstances not to be relevant to the issue of fraudulent concealment by Champion." 529 F.Supp. at 468-469.

16. For similar reasons of credibility, we again decline to give any probative weight to this purported incident.

17. Even if Mr. McKenzie were "confused" at all, he was not confused in the trademark sense, i.e., confused as to the source, origin, sponsorship, or endorsement of the goods at issue by observing the goods in the ordinary course of commerce.

18. The record reveals that, at the time of his alleged "confusion," Mr. McKenzie had had a series of in-person conversations and discussions with Mr. Talarico concerning Pitt's early attempts to set up a licensing program of some kind for the Pitt insignia. (McKenzie, 115-119).

19. The record fails to show that Mr. McKenzie, at the time he was "confused," had even looked at the Champion Pitt-insignia soft goods, which are the subject matter of this litigation. (McKenzie, 114).

20. Indeed, assuming that both of these alleged incidents did amount to consumer confusion, such instances of confusion would be so infrequent as to create a presumption against likelihood of confusion in the future. Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 263 (5th Cir.1980).

(2) Lack of Any Other Evidence of Consumer Attitudes

21. Pitt has not introduced any poll, survey, or study, or any other evidence, probative of consumer attitudes or reaction to Pitt-insignia soft goods.

(3) Champion's Efforts to Indicate the True Source, Origin or Sponsorship of its Pitt-Insignia Soft Goods

22. We have previously found that:

"28. Champion's labels and packaging clearly identify Champion as the source and origin of the goods. Champion's trademarks are well-known and the goodwill connected therewith has been built up over the years of Champion's existence.

"29. For many years Champion's marketing of soft goods containing insignia or other identification of colleges or universities has been presented as a total line.

"30. Champion has built up substantial goodwill in the business of selling soft goods bearing college or university insignia. Champion has a sales force of between 100 and 125 salesmen who serve more than 10,000 accounts.

"31. Champion's

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