Opinions of the United
2007 Decisions                                                                                                             States Court of Appeals
                                                                                                                              for the Third Circuit


12-11-2007

Basketball Marketing v. FX Digital Media Inc
Precedential or Non-Precedential: Non-Precedential

Docket No. 06-2216




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                                                       NOT PRECEDENTIAL

                       UNITED STATES COURT OF APPEALS
                            FOR THE THIRD CIRCUIT

                                 Nos: 06-2216 & 06-3274

                 THE BASKETBALL MARKETING COMPANY, INC.
                   doing business as AND 1; BMC PLAYERS, INC.,

                                             Appellants

                                             v.

               FX DIGITAL MEDIA, INC.; COLUMBUS WOODRUFF;
                      TIM GITTENS, also known as Headache

                     On Appeal from the United States District Court
                        for the Eastern District of Pennsylvania
                                     (04-cv-01733)
                         District Judge: Hon. Juan R. Sanchez

                               Argued: October 3, 2007
                     Before: McKee, Barry & Fisher, Circuit Judges
                              (Filed December 11, 2007)


Barry L. Cohen, Esq. Argued
Thorp, Reed & Armstrong
2005 Market Street
One Commerce Square, Suite 1910
Philadelphia, PA 19103

       Attorney for Appellants

Conrad O. Kattner, Esq.
McShea & Tecce
1717 Arch Street
28 th Floor, The Bell Atlantic Tower
Philadelphia, PA 19103

       Attorney for Appellees FX Digital Media, Inc.
       and Columbus Woodruff

Gene M. Linkmeyer, Esq.
Matthew I. Cohen, Esq.
Joshua A. Gelman, Esq. Argued
Jacobs Law Group
1800 John F. Kennedy Boulevard
Suite 404
Philadelphia, PA 19103-7405

       Attorneys for Appellee Tim Gittens

                                         OPINION

McKee, Circuit Judge

       The Basketball Marketing Company, Inc. d/b/a AND 1 and BMC Players, Inc.

(collectively “AND 1" or “Plaintiffs”) appeal the verdict the trial court entered in favor of

Tim Gittens a/k/a “Headache,” in this trademark infringement action, as well as the

attorney’s fees the court awarded to Gittens.1 For the reasons that follow, we will affirm

the verdict in favor of Gittens, but reverse the order awarding Gittens attorney’s fees.

                                             I.

       Inasmuch as we write primarily for the parties who are familiar with this case, we

need not set forth the factual or procedural background except insofar as may be helpful

to our brief discussion.




   1
    Plaintiffs also sued FX Digital Media, Inc., (“FX”), and Columbus Woodruff, but
both of those defendants defaulted, and those claims are not before us. AND 1 originally
appealed the zero damages and fees award entered in favor of FX and Woodruff, but
those claims were settled prior to argument in this appeal and are also not before us.

                                              2
                                 II. Trademark Infringement

         AND 1 claimed that Woodruff, FX and Gittens engaged in trademark infringement

and false advertising in violation of the Lanham Act.2 Accordingly, AND 1 had to prove

that “(1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) the




   2
       Section 1125 of the Lanham Act provides:
                Any person who, on or in connection with any goods or services,
                or any container for goods, uses in commerce any word, term,
                name, symbol, or device, or any combination thereof, or any
                false designation of origin, false or misleading description of
                fact, or false or misleading representation of fact, which - (A) is
                likely to cause confusion, or to cause mistake, or to deceive as
                to the affiliation, connection, or association of such person with
                another person, or as to the origin, sponsorship, or approval of
                his or her goods, services, or commercial activities by another
                person, or (B) in commercial advertising or promotion,
                misrepresents the nature, characteristics, qualities, or geographic
                origin of his or her or another person's goods, services, or
                commercial activities, shall be liable in a civil action by any
                person who believes that he or she is or is likely to be damaged
                by such act.

15 U.S.C. § 1125(a)(1).

Section 1114 of the Lanham Act provides:

                Any person who shall, without the consent of the registrant . . .
                use in commerce any reproduction, counterfeit, copy, or
                colorable imitation of a registered mark in connection with the
                sale, offering for sale, distribution, or advertising of any goods
                or services on or in connection with which such use is likely to
                cause confusion, or to cause mistake, or to deceive . . . shall be
                liable in a civil action by the registrant . . . .

15 U.S.C. § 1114(a).

                                                 3
defendant’s use of the mark to identify goods or services causes a likelihood of

confusion.” A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 

, 210

(3d Cir. 2000).

       It is undisputed that AND 1 owns the mark and that the mark is legally protected.

However, AND 1 claims that the district court erred in finding that Gittens’ use of AND

1's mark did not create a likelihood of confusion, and that Gittens had no secondary or

“contributory liability” for the defaulting defendants’ use of AND 1's marks.

       We review the court’s factual findings for clear error, but the court’s legal rulings

are subject to de novo review. Berg Chilling Systems, Inc. v. Hull Corp., 

,

461(3d Cir. 2006). We review the court’s determination of the likelihood of confusion

for clear error. Century 21 Real Estate Corp. v. Lendintree, Inc., 

, 226 n.5

(3d Cir. 2005).

       A. Direct Infringement

       In Interpace Corporation v. Lapp, Inc., 

, 463 (3d Cir. 1983), we

developed a ten-factor inquiry to determine whether the use of a protectable mark creates

the “likelihood of confusion” required for trademark infringement. AND 1 argues that

the district court erred because it limited its analysis to some of those factors rather than

applying all ten. In the alternative, AND 1 argues that the evidence established a

likelihood of confusion based only upon the Lapp factors that the district court did

examine. We disagree.



                                               4
       We have previously explained that the Lapp test is a qualitative inquiry, and “[n]ot

all factors will be relevant in all cases; further, the different factors may properly be

accorded different weights depending on the particular factual setting.” A & 

. Accordingly, the district court can not be faulted for failing to apply all ten

Lapp factors.3 As we explain below, on this record, there was no need for the district

court to apply a Lapp analysis in the first place. Thus, the court certainly did not err in

not employing all of those factors in the analysis it did undertake.

       Initially, we note that AND 1's argument conflates the actions of Gittens and the

actions of the defaulting defendants. By defaulting, Woodruff and FX constructively

admitted that the flyers advertising the Legends Tour infringed on AND 1's marks.

However, Plaintiffs must still prove a likelihood of confusion arising from Gittens’

actions to establish a claim of direct infringement against Gittens.

       The district court found that Gittens did not design or create the infringing flyers

for the Streetball Legends games, and the record supports that conclusion. Therefore,

Gittens can not be directly liable for any “likelihood of confusion” that may have resulted




   3
     Although it was not necessary to apply all of the Lapp factors, we have explained the
importance of explaining the choice of Lapp factors relied upon. See, e.g., A&

, n.8 (“Although a district court may reasonably decide that certain of the Lapp
factors are inapplicable or unhelpful in a particular case, we do counsel that, to facilitate
review, the court explain its choice not to employ those factors.”); Freedom Card, Inc. v.
JPMorgan Chase & Co., 

, 471 (3d Cir. 2005) (“We have instructed that, if a
district court decides that certain of the Lapp factors do not advance its analysis, it should
explain the reason for not using those factors in order to facilitate our review.”).

                                               5
from the flyers, even though he distributed them.4 See, e.g., Allen Organ Co. v. Galanti

Organ Builders Inc., 

, 1166-70 (E.D. Pa. 1992) (finding manufacturer

and wholesaler not liable for false advertising where they did not participate in

preparation of the advertisements), aff’d, 

(3d Cir. 1993).

       Nor are we persuaded by Plaintiffs’ argument that Gittens is liable as an infringer

because of his role in organizing the Legends Tour. The district court explained that

“AND 1 has introduced no evidence that Gittens used AND 1's marks in any way in

arranging for players to play in the Streetball Legends games.” Mem. op. at 9, n.4. We

see no evidence of error, clear or otherwise, in this finding.

       AND 1's attempt to rely upon Gittens’ use of its mark on his autograph cards,

uniform, and on a basketball, is nothing short of frivolous. As the district court

explained, the Endorsement Agreement Gittens had with AND 1 required him to use

“reasonable efforts to wear and use exclusively AND 1 Products throughout the term of

this Agreement while participating or attending all athletic activities, including . . . any

occasion during which he wears athletic apparel and/or poses for photographs.” Indeed,

had Gittens not used AND 1's mark as he did, he would have been exposed to a claim of

breach of contract under that Endorsement Agreement. AND 1 can not require Gittens to

use its mark and then attempt to hold him liable for infringement of the mark when he




   4
    We separately consider the charge of contributory infringement against Gittens
below.

                                               6
complies.

       B. Contributory Infringement

       To establish contributory infringement, AND 1 must establish Gittens knew that

another’s use of a product infringed And 1's mark. AT&T v. Winback & Conserve

Program, Inc., 

, 1432 (3d Cir. 1994) See also Metro-Goldwyn-Mayer

Studios, Inc. v. Grokster, Ltd., 

, 930 (2005) (“One infringes contributorily by

intentionally inducing or encouraging direct infringement. . . .”). The district court found

that Gittens did not knowingly promote or facilitate any infringement of AND 1's marks.

Again, we agree.

       Plaintiffs again point to Gittens’ role in organizing players and handing out flyers

for the games. However, even if we were convinced that these acts established liability (a

proposition that we doubt),5 Plaintiffs’ claim would still fail because they have not

established that Gittens knew of any underlying infringement. To the contrary, since an

AND 1 consultant designed the flyers and initially participated in organizing and

advertising the Legends Tour, Gittens had every reason to believe the nominative use of

AND 1's marks was authorized (at least tacitly) by AND 1. The district court found that




   5
     Cases finding contributory infringement usually involve more central participation
than is to be found on this record. See Transdermal Products, Inc. v. Performance
Contract Packaging, Inc., 

, 553 (E.D. Pa. 1996) (“[T]he vast majority of
contributory infringement cases have concerned manufacturers who sold generic products
to retailers and either encouraged these retailers to infringe a trademark or, knowing that
these retailers were infringing a trademark, continued to supply the products.”)

                                             7
AND 1 had not provided any affirmative evidence that Gittens knew FX and Woodruff

were infringing AND 1's marks, and Plaintiffs have pointed to nothing to undermine that

conclusion. Inadvertent participation in infringing activities does not give rise to

contributory liability. Fonovisa, Inc. v. Cherry Auction, Inc., 

, 264 (9th Cir.

1996) (“[O]ne who, with knowledge of the infringing activity, induces, causes or

materially contributes to the infringing conduct of another, may be held liable as a

contributory infringer.”) (citation and internal quotation marks omitted) (emphasis

added).

                                  III. Breach of Contract

       Plaintiffs contend the district court erred in concluding that Gittens did not breach

the Endorsement Agreement. The argument is meritless, and we will affirm the district

court’s verdict, substantially for the reasons set forth in the court’s Memorandum and

Order. Mem. op. at 14-15. We need only add, as stated above, there is no evidence that

Gittens knew anyone was infringing AND 1's mark. Absent evidence of such knowledge,

Gittens can not be liable for failure to report third party infringement pursuant to his

contract with AND 1. Moreover, the evidence tends to show that AND 1 and its

representatives were aware of the Legends Tour from its inception and had access to at

least some of the marketing flyers.

                              III. Award of Attorney’s Fees

       The final issue raised is the award of attorney’s fees to Gittens. The district court



                                              8
appears to have concluded that AND 1 filed this suit in retaliation for a lawsuit Gittens

filed against AND 1 thirty-six days earlier,6 and therefore awarded Gittens attorney’s fees

under section 35 of the Lanham Act, 15 U.S.C. § 1117(a).7 AND 1 argues this is not an

“exceptional” case warranting an award of attorney’s fees because AND 1 had a

meritorious claim and there was no evidence of retaliatory intent other than Gittens’

assertion.

       We review an appeal from an award of attorney’s fees under the Lanham Act for

an abuse of discretion, unless the district court applied the incorrect standard. Ferrero

U.S.A., Inc. v. Ozak Trading, Inc., 

, 48 (3d Cir. 1991).8 Our examination of

the “exceptional circumstances” standard under § 35(a) is plenary. SecuraComm

Consulting, Inc. v. Securacom Inc., 

, 279 (3d Cir. 2000).

       Abuse of the litigation process may justify an award of fees to a prevailing party


   6
    AND 1 points out that this finding is not clearly stated. Although in some instances
we have remanded for a clearer statement from the district court, we decline to do so here
as we find that the record does not clearly indicate “bad faith, fraud or malice” on the part
of AND 1.
   7
    This section reads in pertinent part: “The court in exceptional circumstances may
award reasonable attorney fees to the prevailing party.” 15 U.S.C. § 1117(a).
   8
    We decline Gittens’ invitation to disregard our own precedent and follow the lead of
those circuits that employ a “clear error” standard of review. See Third Circuit Internal
Operating Procedure 9.1 (“It is the tradition of this court that the holding of a panel in a
precedential opinion is binding on subsequent panels. Thus, no subsequent panel
overrules the holding in a precedential opinion of a previous panel. Court en banc
consideration is required to do so.”); Auguste v. Ridge, 

, 149 (3d Cir. 2005)
(applying same).


                                              9
under the Lanham Act. See 

(upholding fee award to

plaintiff where rather than “litigating the case fairly on the merits,” defendant attempted

to “crush” plaintiff financially by instituting several separate actions in multiple fora).

Determining the propriety of any such award is a two-step inquiry. First, the district court

must determine whether the party engaged in culpable conduct such as bad faith, fraud or

malice. Green v. Fornario, 

, 103 (3d Cir. 2007) (citing 

). Secondly, if there is culpable conduct, the district court determines if the

“circumstances are ‘exceptional’ enough to warrant a fee award.” 

.

       Here, in concluding that this suit was retaliatory, the district court appears to have

relied solely on the facts that AND 1 filed this action thirty-six days after Gittens sued

AND 1, and AND 1 only sued Gittens and no other streetball players. Neither

consideration demonstrates the “culpable conduct” required for an attorney’s fee award.

       It is not hard to understand why AND 1 only sued Gittens. His involvement in the

Legends Tour was far more extensive than other players. He obtained players for the

tournament and he shepherded them to the games. He arguably functioned more like a

promoter than a mere player.

       Furthermore, assuming arguendo that a retaliatory motive is an “exceptional

circumstance” that would justify awarding fees, more is needed to establish such a motive

than the mere fact that one suit closely follows another. It is certainly not uncommon for



                                              10
multiple law suits to arise from a set of circumstances or contracts, and we will not adopt

a rule that suggests that any related suits that are not filed simultaneously give rise to an

inference of a retaliatory motive. More is needed to show the kind of retaliatory motive

that could arguably support an award of attorney’s fees.

       Our review of the record reveals no other evidence of bad faith, fraud, or malice on

the part of AND 1. Though Plaintiffs ultimately failed to carry their burden of persuasion

in this action, their claims were at least colorable. Gittens points to AND 1's opposition

to the consolidation of his suit with this action as evidence of bad faith. However, since

the district court denied the motion to consolidate, we must conclude that AND 1's

opposition had some basis in law and fact.9

       Because the record fails to establish that AND 1 engaged in “culpable conduct”

and because we find no “exceptional circumstances,” the award of fees was an improper

use of the district court’s discretion. 

. We will therefore reverse

the award of fees.

                                       II. Conclusion

       For the foregoing reasons, we affirm the district court’s entry of judgment for



   9
     See Fed. R. Civ. P. 42(a) (“When actions involving a common question of law or fact
are pending before the court, it may order a joint hearing or trial of any or all the matters
in issue in the actions; it may order all the actions consolidated; and it may make such
orders concerning proceedings therein as may tend to avoid unnecessary costs or
delays.”).



                                              11
Gittens on all claims brought by Plaintiffs, but reverse the award of attorney’s fees to

Gittens.




                                             12