Law School Case Brief
MJ & Partners Rest. Ltd. Pshp. v. Zadikoff - 10 F. Supp. 2d 922 (N.D. Ill. 1998)
The legal inquiry in a claim under 15 U.S.C.S. § 1125 for trademark infringement under the Lanham Act is the same as under the Illinois Consumer Fraud and Deceptive Business Practices Act, 815 Ill. Comp. Stat. § 505/1 et seq., and the Deceptive Trade Practices Act, 815 Ill. Comp. Stat. § 510/1 et seq. Further, the Deceptive Trade Practices Act codifies the state's common law right to a claim for unfair competition.
Michael Jordan was the president of corporation Jump. Jump and 23 Food, Inc. (“23 Food”) were signatories to a restaurant license agreement. The agreement granted 23 Food the right to use Jordan's name, likeness, voice, and persona (collectively, “Name”). The restaurant license agreement further stated that Jump "will not take any action or enter into any new agreements in the restaurant industry that in any manner violates or interferes with the rights granted to Food by Jump hereunder." MJ & Partners was a sublicensee under the agreement. Jump and 23 Food also entered into a side agreement that supplemented the restaurant license agreement. The side agreement stated that neither Jump nor any of its affiliates shall grant, sell, assign or otherwise entitle any person, firm, corporation or other entity the right to open any restaurant based on the Name within Cook, Lake, DuPage, Will, Kane and McHenry Counties, Illinois. In April 1993, plaintiffs opened Michael Jordan's Restaurant at the corner of LaSalle and Illinois Streets in Chicago. The restaurant became one of the most visited tourist attractions in Chicago and Jordan personally received significant monetary benefits in the form of royalty payments, pursuant to the restaurant licensing agreement. Based on the success of the restaurant plaintiffs planned to open several additional restaurants and nightclubs based on the Name in the Chicago metropolitan area. Zadikoff was chief executive for the restaurant and had access to many secrets. Plaintiffs claimed that while continuing to work on behalf of MJ’s Restaurant, Zadikoff made plans with Jordan to open a new restaurant in Chicago using his name. Plaintiffs didn’t consent to the use of the name at any restaurant other than the Michael Jordan’s Restaurant on LaSalle. Plaintiffs demanded that Zadikoff cease his activities with respect to the new restaurant, but Zadikoff refused. Plaintiffs claimed Zadikoff breached his fiduciary duty. Zadikoff claimed that plaintiffs couldn't claim for breach of fiduciary duty because they could not establish that he was plaintiffs' agent. He argued that he was an independent contractor.
Was MJ & Partners’ infringement claims meritorious?
The court held that MJ & Partners could not successfully bring an action for infringement because no likelihood of public confusion existed as to the actual source of the mark - the celebrity. However, the court held that MJ & Partners could state a claim for misappropriation of right to publicity because the right was assigned to MJ & Partners. The court also held that Zadikoff arguably stood in a fiduciary relationship to MJ & Partners by virtue of operating their restaurant and having access to confidential business information. Thus, the court held that MJ & Partners had successfully stated claims for both breach of fiduciary duty and misappropriations of trade secrets.
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