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Oct. 2 — A T-shirt in Nike's Black Mamba line of goods created no likelihood of confusion with the name of a Cooperstown, N.Y., baseball memorabilia retail shop, the U.S. District Court for the Northern District of New York ruled Sept. 30.
Granting summary judgment in favor of Nike, the court found no factors in an eight-factor balancing test favoring the Cooperstown retail store owner, who alleged that a Black Mamba T-shirt bearing the phrase “Legends Live Forever” infringed his “Legends Are Forever” trademark.
In 2001, Jeffrey Foster established Legends Are Forever Inc., a retail store in Cooperstown, N.Y., specializing in baseball memorabilia. Starting in 2007, Foster began to try to register the term “Legends Are Forever” with the Patent and Trademark Office. The registration was eventually granted in 2009.
Nike Inc. of Beaverton, Or. is the worlds largest maker of athletic footwear and clothing. Federal district courts have found that the company's “Nike” trademark and “swoosh” logo are famous under U.S. trademark law.
In 2011, Nike released a short film—“The Black Mamba”—featuring NBA star Kobe Bryant, who has played with the Los Angeles Lakers since 1996.
The film ends with a narrator beginning the sentence, “Heroes come and go …,” and Bryant completing it with “… but legends are forever.” Foster sought to license use of the his “Legends Are Forever” trademark to Nike, but no license was executed.
In conjunction with the film, Nike released a line of Kobe Bryant apparel for the summer of 2011. In the designing process, the phrase “legends are forever” was considered, and 10 samples of a Black Mamba T-shirt bearing that phrase were produced, one of which was obtained by Foster through the eBay online auction website.
But the final text chosen for production was “Legends Live Forever.” Some descriptions of the Black Mamba shirt included the phrase “Legends Are Forever.”
In 2012, Foster sued Nike, alleging trademark infringement, unfair competition, and trademark dilution under federal law, as well as claims under New York state law. Nike moved for summary judgment.
Applying a multi-factor balancing test for likelihood of confusion set forth by Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 128 U.S.P.Q. 411 (2d Cir. 1961), the court found that none of the factors weighed in Foster's favor and most of them weighed heavily in Nike's favor.
For example, the court noted that Nike and Legends Are Forever were not in the same business line and there was no evidence that Foster “will expand its business to include celebrity-themed basketball shoes and apparel like the Kobe Bryant line at issue, nor is there evidence that Plaintiff is seeking to grow its business to compete for Defendant's large consumer base.”
The court thus granted summary judgment for Nike on the federal trademark infringement and unfair competition claims. On the same basis, the court granted summary judgment on the New York state common law claims.
The dilution claim failed on the basis that there was no evidence that Foster's trademark was famous for the purposes of federal trademark dilution law.
The court's ruling was authored by Judge Lawrence E. Kahn. Legends Are Forever was represented by the Law Office of Timothy A. Benedict, Rome, N.Y. Nike was represented by Osborn, Reed & Burke LLP, Rochester, N.Y.
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