Packman v. Chicago Tribune Company

267 F.3d 628 (7th Cir. 2001)

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Nature of the Case

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Facts

In recognition of the Chicago Bulls' sixth National Basketball Association ('NBA') championship, D's front page headline read 'The joy of six.' As it has done on several other historic occasions, D reproduced its entire front page on t-shirts, posters, plaques and other memorabilia. P holds federal and Illinois trademarks for the phrase 'the joy of six,' for use in relation to football and basketball games. The phrase 'the joy of six' is a play on the 1970s book series The Joy of Sex. P's husband, Richard, began using the phrase 'the joy of six' in the mid-1980s to describe a group with whom he exercised at a local health club at 6:00 a.m. P began printing the phrase on flyers to advertise occasional gatherings of family and friends to watch football games. P obtained a federal trademark for 'the joy of six' for use in connection with 'entertainment services in the nature of football games.' P also printed 'the joy of six' on small quantities of hats and t-shirts to promote the gatherings, in connection with National Football League teams pursuing a possible sixth Super Bowl championship, in particular the San Francisco 49ers and the Dallas Cowboys and in relation to the Chicago Bulls' pursuit of a sixth NBA championship. A small quantity of t-shirts and hats were given away, sold to friends and family, or sold at one Ohio retail outlet and generated little if any, profit. P sold an unknown number of 'The Joy of Six is Coming . . . Chicago Basketball' t-shirts at cost to a homeless street vendor, who presumably resold them. P attempted, without success, to negotiate contracts to license 'the joy of six' for use in connection with National Football League and NBA teams. Just prior to the Bulls' sixth NBA championship, P began negotiating a deal for t-shirts bearing 'the joy of six' mark to be produced by a Chicago retailer. P claims that the retailer backed out of the deal after D introduced its t-shirts bearing the June 15, 1998, front page and 'The joy of six' headline. P brought this action against Ds under the Lanham Act for trademark infringement and unfair competition and Illinois law. Shortly after D's headline appeared, several of P's friends and family members contacted them to congratulate them on their 'deal' with D. These individuals had seen the Tribune's headline and knew of P's trademark on 'the joy of six,' but there is no evidence that they purchased or attempted to purchase either D's memorabilia or P's hats and t-shirts. P only objects to the reproduction of D's front page, including 'The joy of six' headline, onto promotional memorabilia. Ds filed a joint motion for summary judgment, and P filed a cross-motion for summary judgment on Ds' liability. Ds' motion was granted. Ds employed 'The joy of six' in a non-trademark use in good faith to describe a characteristic of their product, and, accordingly, the 'fair use' defense protected them from liability for trademark infringement or unfair competition under the Lanham Act. It also found that P could not prevail on her trademark infringement claim because consumers were not likely to be confused about the source of the Tribune's goods. P appealed.