Bi-Rite Enters. v. Button Master

Bi-Rite Enters. v. Button Master

Opinion

 [***912]   [*1191]  OPINION AND ORDER

 ABRAHAM D. SOFAER, D.J.:

The plaintiffs in this case raise an array of claims aimed at protecting the commercial value of well-known trademarks on buttons. In recent years a major market has developed for the sale of novelty items bearing the likenesses, logos, trademarks, service marks and names (hereinafter the "marks") of popular recording artists. See generally McCarthy, Important Trends in Trademark & Unfair Competition Law During the Decade of the 70's, 71 Trademark Rptr. 93, 135 (1981). These novelty items are sold outside concert halls, on the streets, and in shops. Some who sell these items are licensed to do so by the persons or groups whose marks the items bear. Many sellers are not licensed, however, and the recent [**2]  increased commercial significance of this novelty market has led owners and licensees of well-known marks to seek to control their exploitation.

Plaintiff Bi-Rite Enterprises ("Bi-Rite") is a manufacturer and distributor of posters, buttons, patches, bumper stickers and other novelty items bearing the marks of popular rock music groups. It sues both as the authorized licensee of various rock artists, some of whom are also joined as plaintiffs, and as a direct competitor seeking to prevent defendants from engaging in illegal and unfair competition. The plaintiffs also include several rock groups -- Judas Priest, Molly Hatchett, Devo, Styx, and Iron Maiden -- their individual members, and two solo performers, Neil Young and Pat Benatar (hereinafter collectively "the Performers"). These Performers have sued as trademark owners. Defendants are all manufacturers and/or distributors of buttons and other novelty items bearing among other things the marks of the plaintiff Performers and other rock groups.

Plaintiffs claim that defendants' unlicensed sales of buttons bearing logos and likenesses the plaintiffs own or control constitute trademark infringement and unfair competition under [**3]  the common law, the New York General Business Law § 368-d (McKinney 1968), and § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1976). The Performers and Bi-Rite all assert that defendants are using marks which only the performers and/or Bi-Rite are authorized to  [*1192]  use. In addition, however, Bi-Rite seeks to enjoin defendants from distributing any buttons bearing marks for which defendants have no license or authorization, even though Bi-Rite has no license to use or police the marks at issue. Bi-Rite argues that in the button industry retail success depends upon the number of different, desirable buttons offered to the consumer. Unethical distributors who offer the most inclusive line of buttons therefore gain a competitive advantage in the market over dealers  [***913]  such as Bi-Rite, which are penalized and damaged by their own ethical practice of distributing buttons only of those groups for which they have licenses. Plaintiffs also claim defendants have violated their statutory right to privacy under New York Civil Rights Law § 51 (McKinney Supp. 1981), and their common law right of publicity. They argue that the undisputed facts establish all their common-law and statutory [**4]  rights and therefore move for summary judgment on all claims.

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