Packman v. Chicago Tribune Co.

Brief Fact Summary.

Plaintiff trademarked the phrase “the joy of six” in connection with “entertainment services in the nature of football games” and in connection with “entertainment services in the nature of basketball games.”In 1998, when the Bulls won their sixth  NBA championship, Defendant ran a banner headline which read “The joy of six.” Eighteen months after the headline and merchandise appeared, Plaintiff accused Defendant of trademark infringement through the use of “the joy of six” on its memorabilia. The trial judge granted Defendant’s summary judgment, holding that Defendant successfully asserted a “fair use” defense, i.e., it used the phrase in a non-trademark, good-faith, and descriptive manner. Plaintiff appealed.

Synopsis of Rule of Law.

To claim fair use as a defense against a claim of trademark infringement, a defendant must show that its use was non-trademark in nature, merely descriptive of the product or service, and in good faith.

Facts.

In 1994, Packman (Plaintiff) began to print the phrase “the joy of six” on flyers to advertise gatherings of family and friends to watch sporting events. In 1997 and 1998, Plaintiff obtained a federal trademark for using “the joy of six” in connection with “entertainment services in the nature of football games” and in connection with “entertainment services in the nature of basketball games.” Plaintiff also printed the phrase on small quantities of hats and t-shirts to promote the gatherings. In 1996, sportswriters at the Chicago Tribune (Defendant) began to use “the joy of six” in connection with the Chicago Bulls’ anticipated sixth NBA championship. Plaintiff did not object to the use of the phrase in the newspaper but sent a letter, hat, and t-shirt to the writers to inform them of her registered trademark and to encourage them to use the phrase in their publications. In 1998, after the Bulls won the title, the Defendant ran a banner headline which read “The joy of six.” At least eight other newspapers used the phrase in their headlines that day. As it had done with other major front pages, the Defendant reproduced the entire image of the front page onto t-shirts, posters, and other memorabilia. It did so without editorial input. Eighteen months after the headline and merchandise appeared, Plaintiff accused the Defendant of trademark infringement through the use of “the joy of six” on its memorabilia. The trial judge granted the Defendant summary judgment, holding that the Defendant successfully asserted a “fair use” defense, i.e., it used the phrase in a non-trademark, good-faith, and descriptive manner. Plaintiff appealed.

Issue.

Whether to claim fair use as a defense against a claim of trademark infringement, a defendant must show that its use was non-trademark in nature, merely descriptive of the product or service, and in good faith.

Held.

Yes. The trial court’s ruling is affirmed. To claim fair use as a defense against a claim of trademark infringement, a defendant must show that its use was non-trademark in nature, merely descriptive of the product or service, and in good faith.

Discussion.

A trademark is any word, symbol, or combination thereof used to identify and distinguish one’s goods or services from those sold by others and to indicate the source of the goods or services. Therefore, to show that its use was non-trademark in nature, the Defendant must first show that the mark was not intended to distinguish its products from those of other vendors and to indicate the source of the goods. Here, the Defendant has not used “The joy of six” to distinguish its memorabilia from others’ memorabilia. Rather, the Defendant’s masthead, displayed prominently on the memorabilia, is used to identify itself as the source of the products. The use of the masthead also identifies the phrase as a newspaper headline reporting on an event rather than as a trademark. Thus there is no unique association between “the joy of six” and the Defendant. Second, the Defendant must show that the phrase or its use thereof was merely descriptive. A mark is more than descriptive if it has acquired a secondary meaning, which is a mental association in buyers’ minds between the alleged mark and a single source of the product. The Defendant used “the joy of six” to describe a newsworthy event and the happiness associated with the Bulls’ sixth NBA championship. Putting the image of the paper’s front page onto memorabilia does not change that fact. Plaintiff herself admitted that “the joy of the six” is a phrase commonly used to describe the joy of six of anything. Plaintiff used the mark in small group settings, did not commercially advertise her products, and used the phrase in connection with the Bulls for less than three years. Thus the “joy of six” did not acquire a secondary meaning and its use was merely descriptive. Finally, there is no evidence of the Defendant copying the phrase in bad faith. A defendant’s knowledge of another’s trademark does not establish bad faith. Bad faith can be shown only by a defendant’s subjective purpose in using the slogan. Reprinting a front page onto memorabilia is consistent with its tradition of capturing historical events reported by the paper and the decision to do so was made without editorial input or knowledge of what the exact wording of the headline would be. Plaintiff has failed to rebut this showing of good faith by the Defendant.