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United States District Court for the Southern District of New York
January 14, 1983
No. 81 Civ. 5642 (ADS)
[***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.
Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.
555 F. Supp. 1188 *; 1983 U.S. Dist. LEXIS 20031 **; 217 U.S.P.Q. (BNA) 910 ***; 9 Media L. Rep. 1531
BI-RITE ENTERPRISES, INC.; PAT BENATAR; NEIL YOUNG; ROB HALFORD, K.K. DOWNING, IAN HILL, GLEN TIPTON and DAVE HOLLAND, Individually and as Members of the Musical Group Judas Priest; BRUCE CRUMP, BANNER THOMAS, DUANE FOLAND, DAVE HLUBECK, STEVE HOLLAND and JIMMY FARRER, Individually and as Members of the Musical Group Molly Hatchet; ROBERT CASALE, GERALD V. CASALE, MERK BAUGH, ROBERT BAUGH and ALAN MYERS, Individually and as Members of the Musical Group Devo; TOMMY SHAW, JOHN PANOZZO, JAMES YOUNG, DENNIS DE YOUNG and CHUCK PANOZZO, Individually and as Members of the Musical Group Styx; PAUL DI'ANNO, STEVE HARRIS, CLIVE BURR, DAVE MURRAY and ADRIAN SMITH, Individually and as Members of the Musical Group, Iron Maiden; AND ALL OTHER PERSONS SIMILARLY SITUATED, Plaintiffs, v. BUTTON MASTER; BUTTON-UP; KRAFT WERK CO.; S.S.H. ENTERPRISES, LTD.; LITTLE ISLAND MARKETING LTD.; HAROLD KAPLAN; DOUG BLUNDEN; FRANK MACK; LUNEY TUNES RECORDS AND TAPES, INC.; PHIL CECCOLA; LUNEY TUNES, INC. and BARRY CLARK, Defendants
marks, trademark, licenses, buttons, right of publicity, privacy, unfair competition, rights, plaintiffs', Performers, likeness, summary judgment, consumers, dilution, emblems, manufacturer, exploited, licensee, damages, right to privacy, unauthorized, feelings, proprietary, monopoly, rock, commercial value, Lanham Act, reputation, confuse, novelty
Business & Corporate Compliance, Causes of Action Involving Trademarks, Infringement Actions, Determinations, Trademark Law, Unfair Competition, Federal Unfair Competition Law, General Overview, Torts, Business Torts, Unfair Business Practices, Lanham Act, Likelihood of Confusion, Confusion Among Noncompeting Products, Dilution, False Designation of Origin, Elements of False Designation of Origin, Entertainment Industry Falsity & Performance Misattribution, Trade Dress Protection, False Advertising, Consumer Confusion, Patent Law, Originality, Joint & Sole Inventorship, Trademark Enforcement by US Customs, Commercial Use, Conveyances, Eligibility for Trademark Protection, Distinctiveness, Dilution of Famous Marks, Remedies, Equitable Relief, Civil Procedure, Subject Matter Jurisdiction, Supplemental Jurisdiction, Invasion of Privacy, Intrusions, Federal & State Interrelationships, Choice of Law, Appropriation, Procedural Matters, Conflict of Law, Place of Injury, Defenses, Privileges, Public Disclosure of Private Facts, Scope of Copyright Protection, Assignments & Transfers, State Regulations, Copyright Law, Civil Infringement Actions, Standing, Copyright Act of 1976, Justiciability, Constitutional Law, Supremacy Clause, Federal Preemption, Trade Secrets Law, Federal Versus State Law, Common Law, Constitutional Copyright Protections, Federal & State Law Interrelationships, Defenses