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Basketball Mktg. Co. v. Upscale Entm't & Mktg. Group

United States Court of Appeals for the Sixth Circuit

June 29, 2007, Filed

File Name: 07a0459n.06

Case No. 05-3753

Opinion

 [*492]  ALICE M. BATCHELDER, Circuit Judge. Defendant FX Digital Media, Inc. ("FX Digital") appeals the district court's grant of summary judgment in favor of The Basketball Marketing Company, Inc. and BMC Players, Inc. (collectively "And 1" or "Plaintiffs") on Plaintiffs' claim of trademark infringement under the Lanham Act, 15 U.S.C. § 1114.

Plaintiffs own and operate the "And 1 Mix Tape Tour," which is a highly profitable nationwide series of exhibition basketball games. In connection with these enterprises, Plaintiffs own six federally registered trademarks, including the "And 1" name, the "And 1" logo, and the "And 1 Mix Tape." On December 7, 2002, Lisa Thomas ("Thomas"), owner and operator  [**2] of Upscale Entertainment and Marketing Group ("Upscale"), organized and promoted an exhibition basketball game in St. Louis, Missouri, which she advertised as "The Streeball Legends AND 1 Mix Tape Tour Basketball Game." Upscale contracted with FX Digital to provide And 1-affiliated players for the game and to print 20,000 flyers stating that the event "featur[ed] players from the AND 1 Mix Tapes[.]" Neither Upscale nor FX Digital requested Plaintiffs' permission to use their trademarks, even though the President of FX Digital, Columbus Woodruff ("Woodruff"), assumed Plaintiffs owned a trademark on "And 1" and its corresponding logo.

Plaintiffs filed suit against Upscale, Thomas, FX Digital, and Woodruff, alleging federal trademark infringement under the Lanham Act, 15 U.S.C. § 1114. 1 The  [*493]  district court granted Plaintiffs' motion for summary judgment against Upscale, Thomas, and FX Digital and ordered these three defendants to pay $ 40,000 in damages, $ 28,541.50 in attorneys' fees, and $ 4,338.61 in costs. 2 FX Digital obtained leave to file a late notice of appeal and brought this appeal, challenging both the finding of infringement and the award of damages and attorneys' fees. No  [**3] other party appealed.

The district court thoroughly reviewed Plaintiffs' claim of trademark infringement and the law governing that claim. The court concluded that Plaintiffs owned a valid registered trademark and had continuously used the trademark, and that FX Digital's use of the trademark created a likelihood of confusion regarding the sponsorship of the December 7th Event. In determining that a likelihood of confusion existed, the court carefully considered and weighed the eight Frisch factors, see Frisch's Restaurants, Inc. v. Elby's Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th Cir. 1982),  [**4] and determined that the factors weighed heavily in favor of Plaintiffs' claim of trademark infringement. The court granted summary judgment to the Plaintiffs, holding that the Defendants had in fact infringed the marks and calculating the $ 40,000 damages figure based on the profits earned by Upscale from its infringing use of Plaintiffs' trademarks.

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227 Fed. Appx. 492 *; 2007 U.S. App. LEXIS 16562 **; 2007 FED App. 0459N (6th Cir.)

THE BASKETBALL MARKETING COMPANY, INC., et al., Plaintiffs-Appellees, v. UPSCALE ENTERTAINMENT AND MARKETING GROUP, et al., Defendants-Appellants.

Notice: NOT RECOMMENDED FOR FULL-TEXT PUBLICATION. SIXTH CIRCUIT RULE 28(g) LIMITS CITATION TO SPECIFIC SITUATIONS. PLEASE SEE RULE 28(g) BEFORE CITING IN A PROCEEDING IN A COURT IN THE SIXTH CIRCUIT. IF CITED, A COPY MUST BE SERVED ON OTHER PARTIES AND THE COURT. THIS NOTICE IS TO BE PROMINENTLY DISPLAYED IF THIS DECISION IS REPRODUCED.

Prior History:  [**1] ON APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF OHIO.

CORE TERMS

infringement, trademark, trademark infringement, summary judgment, district court, players, profits, likelihood of confusion, basketball game, damages, flyers, registered trademark, federal trademark, award of damages, severally liable, attorney's fees, Lanham Act, exhibition, willfully, factors, jointly, weighed, print

Trademark Law, Damages, Types of Damages, Profits, Causes of Action Involving Trademarks, Infringement Actions, General Overview