Packman, Diana v. Chicago Tribune Co

In the
United States Court of Appeals
For the Seventh Circuit
No. 01-1016
DIANA PACKMAN,
Plaintiff-Appellant,
v.
CHICAGO TRIBUNE COMPANY, an Illinois
Corporation, and FRONT PAGE NEWS,
INCORPORATED, a California Corporation,
Defendants-Appellees.
Appeal from the United States District Court
for the Northern District of Illinois, Eastern Division.
No. 99 C 7458--Charles P. Kocoras, Judge.
ARGUED MAY 9, 2001--DECIDED September 27, 2001
Before RIPPLE, MANION and KANNE, Circuit
Judges.
RIPPLE, Circuit Judge. On June 15, 1998,
in recognition of the Chicago Bulls’
sixth National Basketball Association
("NBA") championship, the headline of the
front page of the Chicago Tribune read
"The joy of six." As it has done on
several other historic occasions, the
Chicago Tribune Company reproduced its
entire front page on t-shirts, posters,
plaques and other memorabilia. The
Tribune contracted with Front Page News,
Inc., to print on t-shirts a collage
comprised of the Tribune masthead and six
headlines describing each of the Bulls’
NBA victories, including "The joy of six"
headline.
Diana Packman holds federal and Illinois
trademarks for the phrase "the joy of
six," for use in relation to football and
basketball games. She brought this action
against the Tribune and Front Page under
the Lanham Act for trademark infringement
and unfair competition and Illinois law.
The district court granted the
defendants’ joint motion for summary
judgment, holding that the "fair use"
defense defeated Ms. Packman’s claims,
and, in the alternative, that there was
no evidence that consumers were likely to
be confused as to the source of the
defendants’ products. Ms. Packman appeals
from the district court’s summary
judgment ruling, as well as from the
court’s denial of her motion to compel
discovery. For the reasons set forth in
the following opinion, we affirm the
district court in both respects.
I
BACKGROUND
The phrase "the joy of six" is a play on
the 1970s book series The Joy of Sex./1
It has been used to describe positive
feelings associated with six of anything,
e.g., the birth of sextuplets, a six-run
inning in a baseball game, six characters
on a television show, and, in this case,
six championships in a sporting event.
A. The History of Ms. Packman’s
Trademark
Ms. Packman’s husband, Richard Packman,
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. In 1994, the Packmans began
printing the phrase on flyers to
advertise occasional gatherings of family
and friends to watch football games. On
July 1, 1997, Ms. Packman obtained a
federal trademark for "the joy of six"
for use in connection with "entertainment
services in the nature of football
games."/2 Beginning in September 1996,
the Packmans began using "the joy of six"
to promote outings to watch or attend
basketball games and on February 3, 1998,
Ms. Packman obtained a federal trademark
to use the phrase in connection with
"entertainment services in the nature of
basketball games."/3 Ms. Packman 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.
Ms. Packman did not produce evidence of
the number of gatherings or outings, the
number of attendees, or the profit, if
any, they generated. The record does not
contain any documentary evidence of the
Packmans’ sales of hats and t-shirts
bearing "the joy of six" mark. Taking the
Packmans’ deposition testimony as true,
however, 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. In
addition, Mr. Packman 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. In addition, the Packmans
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, the
Packmans began negotiating a deal for t-
shirts bearing "the joy of six" mark to
be produced by a Chicago retailer. The
Packmans claim, however, that the
retailer backed out of the deal after the
Tribune introduced its t-shirts bearing
the June 15, 1998 front page and "The joy
of six" headline.
B. The Tribune’s Use of "the joy of six"
As early as 1996, sportswriters at the
Tribune and the Chicago Sun-Times began
using "the joy of six" to describe the
Bulls’ anticipated sixth NBA
championship. The Packmans did not
protest the use of the phrase they had
trademarked, but instead sent a letter,
hat and t-shirt to the writers,
encouraging them to use the phrase:
Recently granted the registered trademark
for "The Joy of Six" slogan, I encourage
you to employ this catchy tag line in
your writings and reports throughout the
1997-1998 NBA season as the Bulls shoot
for their sixth straight year of stellar
success.
R.15 at 2. Mr. Packman admitted that,
based on this letter, he would not have
objected to the writers’ using the phrase
in a column headline.
On June 15, 1998, the Tribune printed,
on its front page directly beneath its
masthead, a banner headline that read
"The joy of six," describing the sixth
NBA championship won by the Bulls the
previous night. The headline included a
graphic listing the six years in which
the Bulls had won championships and the
names of the defeated teams. The font and
size of the phrase in the Tribune
headline are visibly distinct from the
font and size used by the Packmans on
their flyers, hats and t-shirts. At least
eight other newspapers in the United
States used the phrase "the joy of six"
in their headlines that day.
As it has done with other historic front
pages, the Tribune reproduced its front
page, including "The joy of six"
headline, on t-shirts, posters, plaques,
and other memorabilia, to promote the
Tribune and memorialize its coverage of
the Bulls’ historic victory. The manager
of the Chicago Tribune Store, Mary
Tremont, decided, without input from the
Tribune’s editorial board, to reproduce
the entire June 15 front page onto these
promotional items. The items were sold at
the Michigan Avenue Tribune Store, at a
storefront of the Tribune’s offices in
Vernon Hills, and, for one month in 1999,
at the Tribune’s kiosk in Woodfield Mall.
The Tribune also instructed one of its
vendors, Front Page News, to create a t-
shirt bearing the Tribune masthead amidst
a collage of the actual headlines
reporting all of the Bulls’
championships: "Two for Two: Bulls Still
Champs," "Three-mendous," "Ringmasters,"
"The Jackson Five," and "The joy of six."
Anticipating the Bulls’ winning the cham
pionship and the Tribune’s printing a
catchy phrase to describe the victory,
Ms. Tremont and Front Page designed this
shirt before June 15, without knowledge
of the exact wording of the headline. The
collage t-shirt was sold in the Tribune
store and, for four days in 1998, by
Front Page to wholesalers.
Shortly after the Tribune’s June 15
headline appeared, several of the
Packmans’ friends and family members con
tacted them to congratulate them on their
"deal" with the Tribune. These
individuals had seen the Tribune’s
headline and knew of Ms. Packman’s
trademark on "the joy of six," but there
is no evidence that they purchased or
attempted to purchase either the
Tribune’s memorabilia or the Packmans’
hats and t-shirts.
C. Ms. Packman’s Lawsuit
On November 16, 1999, nearly 18 months
after "The joy of six" appeared on the
Tribune’s front page and on its
championship memorabilia, Ms. Packman
filed a complaint against the Tribune and
Front Page, alleging trademark
infringement, 15 U.S.C. sec. 1114, unfair
competition, 15 U.S.C. sec. 1125(a), and
trademark infringement under Illinois
law, 765 ILCS 1036/60. Ms. Packman does
not challenge the Tribune’s printing "The
joy of six" on its June 15 front page;
she only objects to the reproduction of
the Tribune’s front page, including "The
joy of six" headline, onto promotional
memorabilia.
D. Discovery and Ms. Packman’s Motion to
Compel
After filing the complaint, Ms. Packman
served defendants with two document
requests and a set of interrogatories;
she also served the Tribune with a notice
of deposition under Fed. R. Civ. P.
30(b)(6). On September 1, 2000, the
Tribune produced Ms. Tremont, the manager
of the Chicago Tribune Store, for
deposition on topics 3 through 9 of Ms.
Packman’s notice./4 The Tribune refused
to produce a witness on topics 1 and 2,
which inquired about the Tribune’s
process and procedures for selecting
headlines, in particular "The joy of six"
headline for the June 15, 1998 front
page. The Tribune maintained that topics
1 and 2 were not relevant because Ms.
Packman had admitted that she objected
not to the Tribune’s use of "The joy of
six" on its June 15, 1998 front page, but
only to its reproduction of the headline
on the championship memorabilia. The
Tribune also objected to topics 1 and 2
on First Amendment grounds.
Discovery closed on September 5, 2000.
On that date the parties appeared before
the district court for a status
conference. Ms. Packman’s counsel
informed the court that she had not
received the discovery she requested
because Ms. Tremont was not knowledgeable
about three topics in the notice of
deposition: (1) the Tribune’s process and
procedures for avoiding trademark
infringement (topic 3); (2) the Tribune’s
process and procedures for avoiding
infringement of "the joy of six" (topic
5); and (3) the Tribune’s process and
procedures for permitting reproduction of
its headlines on products (topic 7). The
court instructed Ms. Packman’s counsel
that, if he had a complaint about
discovery, he should promptly make a
motion because the discovery cutoff was
that day. The court did not expressly
extend the discovery cutoff, but
instructed the parties to work out any
outstanding issues on their own, and, if
necessary, file a prompt motion. At the
conference, the defendants also informed
the court of their intent to move for
summary judgment, and the court set
October 3, 2000 as the deadline for
filing that motion.
Despite the court’s warning "not to
tarry" in filing a motion to compel, Ms.
Packman waited until October 5, 2000 (two
days after the defendants’ motion for
summary judgment was filed) to do so.
R.27-1 at 5. The district court orally
denied the motion at a conference on
October 27, 2000, on the grounds that:
(1) it was untimely, having been filed
after the close of discovery and without
explanation for the undue delay; (2) it
sought information, i.e., the headline
selection policy, that was not relevant
because it was not the basis of Ms.
Packman’s claims; and (3) no witness
other than Ms. Tremont could articulate a
more express policy for permitting others
to reproduce the Tribune’s headlines on
products.
E. The District Court’s Decision
On October 3, 2000, the Tribune and
Front Page filed a joint motion for
summary judgment, and on November 9,
2000, Ms. Packman filed a cross-motion
for summary judgment on defendants’
liability. On December 6, 2000, the
district court granted defendants’ motion
and denied Ms. Packman’s motion./5 The
court found that defendants 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.
In the alternative, the district court
found that Ms. Packman could not prevail
on her trademark infringement claim
because consumers were not likely to be
confused about the source of the
Tribune’s goods. The court declined to
address the two other arguments advanced
by defendants in support of their motion:
that Ms. Packman’s "the joy of six" was
not a valid trademark because the phrase
was generic or, at most, descriptive; and
that the Tribune had a First Amendment
right to reproduce any of its front pages
to promote its newspaper. Having
dismissed Ms. Packman’s federal claims,
the court also declined to exercise
supplemental jurisdiction over her state
law trademark infringement claim./6 This
appeal followed.
II
DISCUSSION
A. Motion for Summary Judgment
This court reviews de novo the district
court’s decision to grant summary
judgment. Albiero v. City of Kankakee,
246 F.3d 927, 931 (7th Cir. 2001). Only a
"genuine" issue of "material" fact
precludes summary judgment. Fed. R. Civ.
P. 56(c). Factual disputes are "’genuine’
only ’if the evidence is such that a
reasonable jury could return a verdict
for the [non-movant],’" and are
"’material’ only when they ’might affect
the outcome of the suit under the
governing law.’" Oest v. Ill. Dep’t of
Corrections, 240 F.3d 605, 610 (7th Cir.
2001) (quoting Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986)). Summary
judgment is appropriate when the
"pleadings, depositions, answers to
interrogatories, and admissions on file,
together with the affidavits, if any,
show that there is no genuine issue as to
any material fact and that the moving
party is entitled to judgment as a matter
of law." Fed. R. Civ. P. 56(c). Thus, in
ruling on a summary judgment motion, the
district court must decide "’whether the
evidence presents a sufficient
disagreement to require submission to a
jury or whether it is so one-sided that
one party must prevail as a matter of law.’"
Oest, 240 F.3d at 610 (quoting Liberty
Lobby, 477 U.S. at 248).
In reviewing the district court’s
decision, we "must construe all facts in
the light most favorable to the non-
moving party." Albiero, 246 F.3d at 931.
The non-movant may not rest on the
pleadings but must adduce evidence
"set[ting] forth specific facts showing
that there is a genuine issue for trial."
Fed. R. Civ. P. 56(e). Ms. Packman must
create more than mere doubt as to the
material facts, see Albiero, 246 F.3d at
932 (citations omitted), and will not
prevail by relying on a mere scintilla of
evidence or speculation to support her
position, see Liberty Lobby, 477 U.S. at
252; Patterson v. Chicago Ass’n for
Retarded Citizens, 150 F.3d 719, 724 (7th
Cir. 1998) (stating that plaintiff’s
speculation is "not a sufficient defense
to a summary judgment motion") (citation
omitted).
In a trademark infringement case, the
classification of a word or phrase as
descriptive, the determination that a de
fendant’s use was a non-trademark use in
good faith, and the finding that
consumers are not likely to be confused
about the origin of a defendant’s
products are questions of fact.
Nevertheless, these issues may be
resolved on summary judgment "if the
evidence is so one-sided that there can
be no doubt about how the question should
be answered." Door Sys., Inc. v. Pro-Line
Door Sys., Inc., 83 F.3d 169, 171 (7th
Cir. 1996). With these principles in
mind, we turn to Ms. Packman’s claims.
Ms. Packman submits that, in holding
that the fair use defense barred her
claims, the district court ignored
evidence of defendants’ use of "The joy
of six" as a trademark and improperly
inferred that defendants acted in good
faith. She further argues that the
district court committed both factual and
legal errors in its likelihood of
confusion analysis, and that defendants
used the same mark for the same goods in
the same geographical area in a manner
likely to confuse and which actually
confused consumers. At least, she
contends, she demonstrated genuine issues
of material fact as to the fair use
defense and the likelihood of confusion
analysis. In addition, Ms. Packman
contends that the district court abused
its discretion in denying her motion to
compel discovery on the issue of
defendants’ intent in selecting "The joy
of six" for its front page and in
reproducing its front page on
championship memorabilia.
Defendants respond that the district
court properly granted summary judgment
in their favor because they used "The joy
of six" in good faith as a descriptive
phrase. They also submit that the
undisputed evidence demonstrates that
there was no likelihood that any consumer
would mistake the Tribune’s memorabilia
for one of Ms. Packman’s products. They
also maintain that Ms. Packman’s "the joy
of six" mark is a descriptive phrase
unworthy of trademark protection./7
Finally, they contend that the district
court did not abuse its discretion in
denying Ms. Packman’s motion to compel
discovery because it was both untimely
and immaterial.
1. The Lanham Act
The Lanham Act protects registered marks
from interference by state legislation,
prevents unfair competition, and protects
against fraud "by the use of
reproductions, copies, counterfeits, or
colorable imitations of registered
marks." 15 U.S.C. sec. 1127; Eli Lilly &
Co. v. Natural Answers, Inc., 233 F.3d
456, 461 (7th Cir. 2000). To prevail on a
Lanham Act claim, a plaintiff must
establish that (1) her mark is
protectable, and (2) the defendant’s use
of the mark is likely to cause confusion
among consumers. Eli Lilly, 233 F.3d at
461./8
A trademark includes:
any word, name, symbol, or device, or any
combination thereof [used by any person]
to identify and distinguish his or her
goods, including a unique product, from
those manufactured and sold by others and
to indicate the source of the goods, even
if that source is unknown.
15 U.S.C. sec. 1127. In order to be
registered, a mark must distinguish the
applicant’s goods from those of others.
See 15 U.S.C. sec. 1052. The law
recognizes five categories of trademarks,
in ascending order of distinctiveness:
generic, descriptive, suggestive,
arbitrary, and fanciful. See Two Pesos,
Inc. v. Taco Cabana, Inc., 505 U.S. 763,
768 (1992); Abercrombie & Fitch Co. v.
Hunting World, Inc., 537 F.2d 4, 9-11 (2d
Cir. 1976) (Friendly, J.). Once a mark is
registered, the Act affords a plaintiff
one of two presumptions: (1) that her
registered trademark is not merely
descriptive or generic; or (2) that if
descriptive, the mark is accorded
secondary meaning. See Liquid Controls
Corp. v. Liquid Control Corp., 802 F.2d
934, 936 (7th Cir. 1986). The Act
provides that:
a mark registered on the principal
register . . . shall be prima facie
evidence of the validity of the
registered mark . . . and of the
registrant’s exclusive right to use the
mark in commerce on or in connection with
the goods or services specified in the
registration subject to any conditions or
limitations stated therein, but shall not
preclude another person from proving any
legal or equitable defense or defect . .
. which might have been asserted if such
mark had not been registered.
15 U.S.C. sec. 1115(a). Secondary meaning
exists "only if most consumers have come
to think of the word not as descriptive
at all but as the name of the product."
Blau Plumbing, 781 F.2d at 609; see Part
II.A.2.b, infra.
The defendant may overcome this
presumption with evidence that the mark
is merely generic or descriptive, or that
it lacks secondary meaning. See Liquid
Controls, 802 F.2d at 936 (citations
omitted). And, even if the mark is
sufficiently distinctive to warrant
trademark protection, the defendant may
still prevail by showing that its use of
the mark is not "likely to cause
confusion, or to cause mistake, or to de
ceive." 15 U.S.C. sec. 1114(1)(a); see
Sunmark, Inc. v. Ocean Spray Cranberries,
Inc., 64 F.3d 1055, 1060 (7th Cir. 1995).
In addition to attacking the validity of
the plaintiff’s mark, the defendant may
also invoke the "fair use" defense
bydemonstrating that the alleged
infringement "is a use, otherwise than as
a mark . . . which is descriptive of and
used fairly and in good faith only to
describe the goods or services of such
party . . . ." 15 U.S.C. sec. 1115(b)(4);
see M.B.H. Enter., Inc. v. WOKY, Inc.,
633 F.2d 50, 52 (7th Cir. 1980). This
defense "is based on the principle that
no one should be able to appropriate
descriptive language through trademark
registration." Sands, Taylor & Wood Co.
v. Quaker Oats Co., 978 F.2d 947, 951
(7th Cir. 1992).
In this case, defendants asserted the
fair use defense in addition to arguing
that there was no likelihood of confusion
and that Ms. Packman’s mark was invalid.
The district court did not rule on the
validity of the mark, nor shall we,
because the fair use defense and
likelihood of confusion analysis dispose
of Ms. Packman’s claims in their
entirety.
2. The Fair Use Defense
To prevail on the fair use defense,
defendants must show that: (1) they used
"The joy of six" in a non-trademark use;
(2) the phrase is descriptive of their
goods or services; and (3) they used the
phrase "fairly and in good faith" only to
describe their goods or services. 15
U.S.C. sec. 1115(b)(4); Sands, Taylor &
Wood, 978 F.2d at 951; M.B.H. Enter., 633
F.2d at 52.
a. Non-Trademark Use
The district court held that, because
Ms. Packman did not rebut evidence that
defendants used "the joy of six" only in
a descriptive manner, she failed to raise
a genuine issue of material fact as to
the nature of defendants’ use of the
phrase. Ms. Packman contends that, in
reaching this conclusion, the district
court ignored facts showing that
defendants’ use of "The joy of six" was a
traditional trademark use: (1) defendants
applied the mark directly to the goods;
(2) defendants labeled the items with the
phrase; and (3) the phrase is the most
prominent text on all the items and, in
her view, was used as "an attention-
getting symbol." Appellant’s Br. at 15.
We agree with the district court that Ms.
Packman failed to rebut the evidence of
defendants’ descriptive, non-trademark
use of "The joy of six."
First, the record does not support Ms.
Packman’s argument that the Tribune used
"The joy of six" to identify itself as
the source of the newspaper or the
championship memorabilia. Rather, the
Tribune’s distinctive masthead, which
appears prominently on the front page and
on each piece of memorabilia containing
the phrase, identifies the source of the
products. In addition, the Tribune
masthead also prominently appears on one
side of the products’ tags, plainly
indicating the Tribune as the source. The
masthead signifies that the products come
from the Tribune and not any of the other
newspapers that ran the same headline on
June 15, 1998. The Tribune’s use of its
well-known masthead also identifies the
phrase as a newspaper headline reporting
on an event, and not as a Tribune
trademark. Cf. M.B.H. Enter., 633 F.2d at
54 (radio station’s call letters and
frequency, not slogan, identified source
of advertising). The phrase "The joy of
six" does not identify the source of any
of the defendants’ memorabilia, and thus,
the defendants’ use was "otherwise than
as a [trade]mark." 15 U.S.C. sec.
1115(b)(4); cf. Platinum Home Mortgage
Corp. v. Platinum Fin. Group, Inc., 149
F.3d 722, 728 (7th Cir. 1998) (because
"platinum" described quality of mortgage
services and did not identify particular
source or designate specific origin of
services, it was not entitled to
trademark protection absent proof of
secondary meaning); M.B.H. Enter., 633
F.2d at 55 (defendant’s "I LOVE YOU"
slogans attributed quality of civic
involvement and words, by themselves, did
not designate source of services and thus
did not constitute trademark use).
Second, Ms. Packman ignores her own
deposition testimony, in which she
admitted that, in the context of the
Bulls, "the joy of six" referred to
happiness about their six championships
and that the phrase is widely used to de
scribe the joy of six of anything. The
Tribune used the phrase "The joy of six"
to describe the happiness associated with
six Bulls’ championships. On the front
page of the Tribune and the championship
memorabilia, "The joy of six" reflects
that very emotion. See Sunmark, 64 F.3d
at 1059 (word or mark is considered
descriptive if it merely refers to a
characteristic of the product).
Our decision in Sunmark supports the
district court’s finding that the Tribune
did not employ "The joy of six" as a
trademark. In Sunmark, the maker of
"SweeTARTS" candy sought to enjoin Ocean
Spray from using the phrase "sweet-tart"
to describe its cranberry juice drinks.
In addition to finding that Ocean Spray
had used "sweet-tart" merely to describe
the taste of its drinks, this court noted
that Ocean Spray had not claimed
exclusive use of the phrase and could not
object if other juice-makers used it. See
Sunmark, 64 F.3d at 1059. Nor could these
defendants have objected to wide use of
the phrase, as evidenced by several other
newspapers’ printing "the joy of six"
headline on June 15, 1998, to describe
the Bulls’ championships and the varied
use of the phrase to describe positive
emotions associated with six of anything,
such as sextuplets.
Sands, Taylor & Wood, on which Ms.
Packman relies, is distinguishable. The
fair use defense was unavailable in that
case because the defendant’s slogan,
"Gatorade is Thirst-Aid," used the
plaintiff’s "Thirst-Aid" mark as a
trademark. Sands, Taylor & Wood, 978 F.2d
at 954. Integral to the court’s
conclusion was evidence that "Thirst-Aid"
appeared more prominently than "Gatorade"
in the advertisements and that the
rhyming quality of the two words created
a "memorable slogan . . . uniquely
associated" with the defendant’s
"Gatorade" product. Id. Here, the Tribune
used its masthead, not "The joy of six,"
to foster the association between the
products (the memorabilia) and their
source (the Tribune). Cf. M.B.H. Enter.,
633 F.2d at 54 (defendant’s prominent
display of its call letters and frequency
in connection with "I LOVE YOU" slogans
indicated defendant as source of
advertisements and thus was non-trademark
use). Furthermore, the wide and varied
use of "the joy of six" bars a conclusion
that any association between the Tribune
and the phrase is unique. Cf. Sunmark, 64
F.3d at 1059 (descriptive use of common
phrase was unlikely to constitute
trademark use). And, the masthead and the
phrase appear in proximity to each other,
but not as part of a "memorable slogan,"
rendering any association between the two
weaker than was present in Sands, Taylor
& Wood.
Accordingly, because Ms. Packman failed
to raise a genuine issue of material fact
as to the nature of defendants’ use of
"The joy of six," we agree with the
district court that defendants employed
the phrase in a non-trademark use.
b. Defendants Used the Phrase
Descriptively
Descriptive terms "’impart information
directly.’" M.B.H. Enter., 633 F.2d at 54
(citation omitted). The defendants used
"The joy of six" as a headline to
describe a newsworthy event and the
happiness associated with the Bulls’
sixth NBA championship. This use did not
change with the reproduction of the
Tribune’s front page onto championship
memorabilia. As Ms. Packman herself
admitted, "the joy of six" is a phrase
commonly used to describe the emotions
associated with six of anything. Ms.
Packman cannot appropriate the phrase to
herself and thereby prevent others from
using the phrase in a descriptive sense,
as defendants did here. See Blau
Plumbing, 781 F.2d at 609-10 (a person
"cannot appropriate the English language"
and thereby render others inarticulate);
M.B.H. Enter., 633 F.2d at 55 (owner of
registered mark "’may not appropriate to
itself common English slang terms and
thus prevent others from using such
phrases in their descriptive sense’")
(citation omitted). The district court
correctly concluded that no genuine issue
of material fact existed as to
defendants’ descriptive use of the
phrase.
Furthermore, the record lacks any
evidence that "the joy of six" had
acquired a secondary meaning as used by
Ms. Packman, and she does not point to
any evidence in rebuttal. Secondary
meaning is "a mental association in
buyers’ minds between the alleged mark
and a single source of the product." 2 J.
Thomas McCarthy, Trademarks and Unfair
Competition sec. 15:5, at 15-9 (4th ed.
2001) (emphasis in original). A mark
acquires secondary meaning when it has
been used so long and so exclusively by
one company in association with its goods
or services that the word or phrase has
come to mean that those goods or services
are the company’s trademark. Id. sec.
15:5, at 15-10; see Platinum Home
Mortgage, 149 F.3d at 728. Proof of
secondary meaning can be established
through direct consumer testimony,
consumer surveys, length and manner of
use, amount and manner of advertising,
volume of sales, place in the market, and
evidence of intentional copying. See
Platinum Home Mortgage, 149 F.3d at 728;
Spraying Sys. Co. v. Delavan, Inc., 975
F.2d 387, 393 (7th Cir. 1992). Ms.
Packman’s assertion of secondary meaning
is purely speculative. She does not tell
us how many shirts or hats the Ohio store
or the Chicago street vendor sold, how
many items she produced, who purchased
them, or whether she advertised her
products. See Platinum Home Mortgage, 149
F.3d at 729 (rejecting plaintiff’s
circumstantial evidence of advertising
and sales). Thus, the record confirms the
absence of a secondary meaning
altogether. Ms. Packman used the mark
primarily in connection with small group
outings to sporting events, did not
commercially advertise her outings or her
products, and used the phrase in
connection with the Bulls for less than
three years. See id., 149 F.3d at 728
(plaintiff who used mark for only three
years could not demonstrate that mark had
secondary meaning). The phrase "the joy
of six" did not achieve a level of
distinctiveness with respect to Ms.
Packman’s goods or services, nor does it
exclusively relate to the Bulls’ sixth
championship. See Spraying Sys., 975 F.2d
at 393 (evidence of third-party use of
mark cast further doubt on plaintiff’s
assertion of secondary meaning).
Accordingly, the record supports only one
conclusion, that "the joy of six" is
merely a descriptive phrase without a
secondary meaning, a phrase which
defendants, or any other person, may
rightfully use. See Blau Plumbing, 781
F.2d at 610 (descriptive mark without
secondary meaning was unworthy of
trademark protection).
c. Defendants Used the Phrase in Good
Faith
Ms. Packman maintains that the Tribune’s
knowledge of her trademark (as a result
of Mr. Packman’s letter to the
sportswriters) before running the "The
joy of six" headline and its failure to
cease its sale of the championship
memorabilia after she threatened legal
action are evidence of the defendants’
bad faith. The district court determined
that this evidence did not give rise to
an inference of bad faith because Mr.
Packman’s letter encouraged rather than
discouraged use of the phrase, and the
Tribune used the phrase in the very
manner suggested: as a headline to
celebrate the Bulls’ success in winning a
sixth championship.
Mere knowledge of Ms. Packman’s
trademark on the phrase is insufficient
to establish that the Tribune acted in
bad faith and to preclude summary
judgment. See M.B.H. Enter., 633 F.2d at
54. The defendants’ good faith "can be
judged only by inquiry into [their]
subjective purpose in using the slogan[
]." Id., 633 F.2d at 54. In M.B.H.
Enter., the plaintiff had a registered
trademark for the words "I LOVE YOU" for
use in entertainment services related to
radio programs and had licensed a
promotion using the phrase "I LOVE YOU
MILWAUKEE" to radio station WISN in
Milwaukee. Id. at 51. When radio station
WOKY began its own campaign professing
its love for Milwaukee, using the phrases
"WOKY LOVES MILWAUKEE" and "I LOVE
MILWAUKEE" signed by WOKY, the plaintiff
sought to enjoin WOKY’s efforts. Id. at
52. Addressing the issue of WOKY’s good
faith, the court found that WOKY’s intent
to reap commercial advantage from its
declarations of love for the city did not
demonstrate that WOKY intended to use the
phrase as a trademark. Id. at 54. Rather,
WOKY’s use of its call letters and radio
frequency--its trademarks identifying
WOKY as the source--in each of the ads
suggested that WOKY lacked the intent to
use the slogans as trademarks. Id. at 54-
56. Accordingly, the court found that
WOKY had not acted in bad faith or with
the intent to confuse the public about
the source of the affection for
Milwaukee. Id.
Similarly, the presence of the Tribune’s
distinctive masthead above "The joy of
six" headline and on each piece of
championship memorabilia will not support
an inference that the Tribune acted in
bad faith. Nor does the defendants’
receipt of commercial benefit from
promoting the newspaper or selling
championship memorabilia demonstrate use
of "The joy of six" in bad faith. Ms.
Tremont, manager of the Tribune Store,
testified that she selected the June 15,
1998 front page for reproduction onto
memorabilia consistent with the Tribune’s
practice of capturing historical events
reported by the newspaper. This decision
was made without editorial input and
without knowledge of the exact wording of
the headline for that day. Therefore the
syntax of the headline played no part in
the decision to produce and market the
Tribune’s products in celebration of the
Bulls’ sixth championship, and therefore
will not support any inference that the
defendants acted in bad faith.
Ms. Packman failed to adduce evidence
creating a genuine issue of fact as to
any of the three elements of the fair use
defense. Accordingly, the district court
did not err in finding that defendants’
use of "The joy of six" was a non-
trademark use, in good faith, to describe
a characteristic or quality of their
goods.
3. Likelihood of Confusion
In addition to showing that her mark is
protected under the Lanham Act, a
plaintiff in a trademark infringement
suit must demonstrate that the challenged
mark is likely to confuse consumers. See
Barbeque Marx, Inc. v. 551 Ogden, Inc.,
235 F.3d 1041, 1043 (7th Cir. 2000).
Without determining the validity of Ms.
Packman’s "the joy of six" mark, the
district court found that she could not
prevail because she failed to demonstrate
a genuine issue of material fact as to
whether consumers were likely to be
confused about the source of the
defendants’ goods. Ms. Packman now argues
that, in granting summary judgment for
defendants, the district court failed to
draw inferences in her favor, ignored
evidence of actual confusion and
misapplied the likelihood of confusion
analysis. Although likelihood of
confusion is a question of fact, the
issue may be resolved on summary judgment
where the evidence is "so one-sided that
there can be no doubt about how the
question should be answered." Door Sys.,
83 F.3d at 171 (affirming summary
judgment for defendant where there was
"no reasonable likelihood that any
significant number of consumers could
mistake the defendant for the
plaintiff").
Seven factors comprise the likelihood of
confusion analysis: (1) similarity
between the marks in appearance and
suggestion; (2) similarity of the
products; (3) area and manner of
concurrent use; (4) degree of care likely
to be exercised by consumers; (5)
strength of the plaintiff’s mark; (6)
actual confusion; and (7) intent of the
defendant to "palm off" his product as
that of another. See Ty, Inc. v. Jones
Group, Inc., 237 F.3d 891, 897-98 (7th
Cir. 2001). No single factor is
dispositive, and courts may assign
varying weights to each of the factors
depending on the facts presented,
although, in many cases, the similarity
of the marks, the defendant’s intent, and
actual confusion are particularly
important. Id. at 1044.
a. Similarity of the Marks
In determining whether two marks are
similar, the comparison is made "’in
light of what happens in the
marketplace,’ [and] not merely by looking
at the two marks side-by-side." Ty, Inc.,
237 F.3d at 898 (citations omitted). Ms.
Packman argues that the defendants’ mark
is identical to hers. While she is
correct that the words are the same, the
appearance and placement of the words are
distinct such that a consumer would not
associate one product with the other. In
Ms. Packman’s mark, the words "the joy of
six" are placed vertically, with "joy"
and "six" in larger print. The letters
are script-like, with the words ". . . is
coming" printed in smaller letters
beneath the word "six." The background of
both the hat and the t-shirt is black,
with the lettering on the hat a
combination of white and blue, and on the
t-shirt a combination of orange and gold.
In contrast, "The joy of six" appears on
the defendants’ white t-shirts in the
context of the Tribune’s entire June 15,
1998 front page, including all of the
other headlines and articles of the day.
Beneath the blue and white Tribune
masthead, "The joy of six" is printed
horizontally in black newsprint-style
letters. Below the phrase appears the
Bulls’ logo, a list of the championship
years and defeated teams, and a color
photograph of Coach Phil Jackson
embracing Michael Jordan. On defendants’
black collage t-shirt, a large red "6"
encompasses each of the headlines for the
six championship years and, the Tribune
masthead is displayed prominently.
Outside the "6" is printed "NBA
CHAMPIONS" and a list of the championship
years. Although the words on defendants’
and Ms. Packman’s t-shirts are the same,
the words’ appearances do not resemble
each other and are not likely to cause
confusion. See M.B.H., 633 F.2d at 54
(although words "I LOVE YOU" were
identical to plaintiff’s mark,
defendant’s slogan was distinguishable by
prominently displayed call letters and
frequency). Different packaging,
coloring, and labeling can be significant
factors in determining whether there is a
likelihood of confusion. See Syndicate
Sales, Inc. v. Hampshire Paper Corp., 192
F.3d 633, 637 (7th Cir. 1999). Although
hang-tag design and content may often be
deserving of comparatively lesser weight
than other packaging material, cf. Ty,
237 F.3d at 899, we think that, here, the
hang-tag with the Tribune masthead on a
product sold out of a Tribune-operated
establishment is deserving of some
weight. See Syndicate Sales, 192 F.3d at
637 (different packaging, coloring and
labeling distinguished defendants’
plastic flower baskets from plaintiff’s).
In sum, the distinctiveness of the marks
weighs against a finding of likelihood of
confusion.
b. Defendants’ Intent
Another "more important" factor in
determining likelihood of confusion is
defendants’ intent. This factor looks
primarily for evidence that the
defendants are attempting to "pass off"
their products as having come from the
plaintiff. See Liquid Controls, 802 F.2d
at 940. Although the district court, in
its fair use analysis, found that defend
ants had acted in good faith, the court
did not directly address defendants’
intent in its likelihood of confusion
analysis.
The "evidence" of defendants’ bad faith
urged by Ms. Packman--that Mr. Packman’s
letter to the sportswriters gave the
Tribune notice of her trademark--does not
demonstrate that they intended to "pass
off" their championship memorabilia as
having come from Ms. Packman. Rather, the
prominent display of the Tribune masthead
above "The joy of six" on each of
defendants’ products demonstrates the
Tribune’s intent to promote itself as the
source. Cf. M.B.H. Enter., 633 F.2d at 54
(display of call letters and frequency
was evidence that defendant did not
intend to use plaintiff’s slogan as a
trademark).
Furthermore, using a descriptive phrase
such as "the joy of six" is consistent
with the inference that defendants
intended in good faith to inform
consumers about a newsworthy event and
characteristic of their products: the
celebration of the Bulls’ sixth
championship victory. See Liquid
Controls, 802 F.2d at 940 (explaining
that copying descriptive phrase is
consistent with intent to inform
consumers about properties of its own
product, not to pass off). That
defendants may have been aware of Ms.
Packman’s mark before reproducing "The
joy of six" memorabilia does not show
fraudulent intent, particularly because
the phrase has been widely used to
celebrate six of anything (as Ms. Packman
admitted) and the appearance of the
phrase on defendants’ products is
visually distinct. See Barbeque Marx, 235
F.3d at 1046 (defendant’s knowledge of
plaintiff’s mark did not show intent to
pass off); Ziebart Int’l Corp. v. After
Market Assoc., 802 F.2d 220, 227 (7th
Cir. 1986) ("mere knowledge" of
competitor or its mark does not show
fraudulent intent where marks are
dissimilar). Moreover, Ms. Tremont’s
independent decision to reproduce the
"The joy of six" headline on the
championship memorabilia, without
knowledge of Ms. Packman’s letter to the
Tribune and of her mark, is evidence of
good faith. Ms. Packman’s conclusory
assertions that defendants acted in bad
faith are unsupported by evidence in the
record and fail to create a genuine issue
of material fact. See Albiero, 246 F.3d
at 933 (conclusory statements unsupported
by the record are insufficient to avoid
summary judgment).
c. Evidence of Actual Confusion
As evidence that consumers were actually
confused by defendants’ use of "The joy
of six," Ms. Packman points to phone
calls she received from two friends, her
father, and Mr. Packman’s former co-
worker who had seen the Tribune’s front
page and called to congratulate her on
her "deal" with the Tribune. The district
court correctly rejected this evidence as
irrelevant to the question of confusion
over the source of defendants’
championship memorabilia.
Ms. Packman did not show that the four
individuals had purchased or attempted to
purchase "the joy of six" goods, either
from her or from defendants, and thus
they were not relevant "consumers" under
the Lanham Act. See Syndicate Sales, 192
F.3d at 636-37 (plaintiff failed to
produce sufficient evidence of actual
confusion by relevant group of
consumers). Even if the four callers fell
into the relevant category of consumers,
however, the district court properly
discounted such de minimis evidence of
confusion. See Door Sys., 83 F.3d at 173
(evidence that two consumers were misled
by defendant’s mark did not create
"contestable issue" of likelihood of
confusion); Sunmark, 64 F.3d at 1060
(evidence that three consumers were
confused did not demonstrate likelihood
of confusion); Blau Plumbing, 781 F.2d at
610 (de minimis evidence of actual
confusion is insufficient to prove
likelihood of confusion). Therefore, the
district court correctly determined that
the four phone calls Ms. Packman received
were not probative of, or "material" to,
the issue of actual confusion.
d. Remaining Likelihood of Confusion
Factors
Ms. Packman failed to demonstrate
genuine issues of material fact as to the
three most important factors in the
likelihood of confusion analysis. She
also has not demonstrated any issues of
fact as to the remaining factors.
Although the parties both produced t-
shirts and hats, each offered their
products in a distinctive style and
manner, minimizing the likelihood of
confusion. Ms. Packman produced her items
primarily in relation to group outings to
sporting events, and only alluded to the
possibility of the Bulls’ sixth
championship; in contrast, defendants
used "The joy of six" in a newspaper
headline and on items celebrating the
Bulls’ sixth championship. All of
defendants’ products--and their tags--
prominently display the well-known
Tribune masthead, providing a strong
indication that there is no likelihood of
confusion. See Syndicate Sales, 192 F.3d
at 637; Venn v. Goedert, 319 F.2d 812,
816 (8th Cir. 1963) (defendant’s
prominent display of its name on
container, package, wrapping or label
informs consumers of source of goods and
precludes charge of trademark
infringement or unfair competition).
Thus, the parties’ products were distinct
in the manner in which they appeared in
the marketplace. See Barbeque Marx, 235
F.3d at 1045 (although both parties
served same product (barbeque), evidence
of differences in ambience, theme and
style weighed against finding likelihood
of confusion); Dynamics Res. Corp. v.
Langenau Mfg. Co., 704 F.2d 1575, 1577
(Fed. Cir. 1983) (no likelihood of
confusion in using identical mark "DRC"
to describe distinctly different
products).
In terms of area and manner of use,
defendants sold their championship
memorabilia from three discrete Tribune-
operated locations; Ms. Packman gave away
or sold her items out of her home to
friends and family. The only store in
which her items were sold was located in
Ohio, and the only distributor in Chicago
was a homeless street vendor, to whom Mr.
Packman sold an unknown number of
t-shirts. Ms. Packman did not bring forth
any evidence to show that her
distribution channels in any way
overlapped with defendants or that she
advertised her products through the same
media channels as defendants. Indeed,
there is no evidence in the record that
either party commercially advertised its
products. The distinction between the
areas in which the parties’ products
appeared weighs against finding a
likelihood of confusion and Ms. Packman
has failed to come forth with sufficient
evidence to the contrary. See Smith
Fiberglass Prod., 7 F.3d at 1330 (no
likelihood of confusion where parties’
products were not in direct competition);
Elec. Design & Sales, Inc. v. Elec. Data
Sys. Corp., 954 F.2d 713, 717-18 (Fed.
Cir. 1992) (likelihood of confusion
diminished where there was minimal, if
any, overlap in customers); cf. Barbeque
Marx, 235 F.3d at 1045 (location of
defendant’s restaurant in distinct
Chicago neighborhood minimized likelihood
of confusion with plaintiff’s
restaurant).
When considering the degree of care
likely to be exercised by consumers, the
district court did not consider the
sophistication of potential customers,
but this oversight is of no consequence,
since Ms. Packman introduced no evidence,
other than her own conclusory assertions,
about buyers of either her products or
defendants’. Thus, she failed to
establish a genuine issue of fact as to
consumer sophistication, weighing against
a finding of likelihood of confusion. See
Albiero, 246 F.3d at 933.
Finally, in assessing the strength of
Ms. Packman’s mark, the district court
correctly concluded that the mark
wasrelatively weak; it was a widely used
descriptive phrase lacking
distinctiveness or recognition with
respect to the Bulls’ sixth championship.
Her own use of the phrase for multiple
purposes, from early-morning workout
groups to family sporting excursions,
negates her unsubstantiated assertion
that her mark is strong. See Blau
Plumbing, 781 F.2d at 610 (widely used
descriptive phrase is weak mark unworthy
of trademark protection).
As with the three "more important"
factors, Ms. Packman failed to bring
forth evidence to establish a genuine
issue of fact as to any of the remaining
likelihood of confusion factors.
Accordingly, the district court correctly
determined that Ms. Packman could not
prevail on her claims because she had
failed to demonstrate a jury question as
to likelihood of confusion. See Albiero,
246 F.3d at 934.
B. Motion to Compel Discovery
District courts have broad discretion in
discovery matters, and therefore this
court reviews the denial of Ms. Packman’s
motion to compel discovery for an abuse
of discretion. See Kalis v. Colgate-
Palmolive Co., 231 F.3d 1049, 1056 (7th
Cir. 2000). We shall not reverse the
district court’s ruling absent a clear
showing that the denial of discovery
resulted in actual and substantial
prejudice to Ms. Packman. See Searls v.
Glasser, 64 F.3d 1061, 1068 (7th Cir.
1995).
Based on the timing and the substance of
Ms. Packman’s motion, we conclude that
the district court did not abuse its
discretion in denying the motion.
Although Ms. Packman had complaints about
Ms. Tremont’s deposition and the adequacy
of defendants’ responses to her discovery
requests before the close of discovery,
and despite the court’s warning that she
should not "tarry" in filing a motion to
compel, she waited to file her motion to
compel until after discovery had closed,
the summary judgment briefing schedule
had been set, and defendants had filed
their summary judgment motion. In light
of her lack of diligence in pursuing the
perceived inadequacies in discovery, the
district court did not abuse its
discretion in denying Ms. Packman’s
motion to compel as untimely. See Kalis,
231 F.3d at 1058 (no abuse of discretion
in denying motion to compel filed after
discovery closed, summary judgment motion
was filed, briefing schedule was set, and
plaintiff’s response was due); Brill v.
Lante Corp., 119 F.3d 1266, 1275 (7th
Cir. 1997) (no abuse of discretion in
denying motion to compel filed after
summary judgment motion filed and despite
court’s instruction to parties to work
out their discovery disputes within one
week and file any motions to compel
"shortly thereafter").
Furthermore, Ms. Packman has not
demonstrated actual and substantial
prejudice resulting from the denial of
discovery. Topics 1 (the Tribune’s
headline selection procedures) and 2 (the
Tribune’s procedures for selecting "The
joy of six" as the headline for June 15,
1998) in the Rule 30(b)(6) notice were
not relevant, since Ms. Packman is not
complaining about, and in fact
encouraged, the Tribune’s use of "The joy
of six" in a literary fashion on its
front page. See Griffin v. City of
Milwaukee, 74 F.3d 824, 829 (7th Cir.
1996) (no abuse of discretion in denying
motion to compel discovery of evidence
not relevant to plaintiff’s claims);
Rennie v. Dalton, 3 F.3d 1100, 1110 (7th
Cir. 1993) (same). In addition, Ms.
Tremont did testify about her decision to
reproduce "The joy of six" headline on
the championship memorabilia, a decision
she made independent of the editorial
process and without knowledge of Ms.
Packman’s mark. The Tribune thus
disclosed all there was to know about
topic 7 (the Tribune’s procedures for
permitting the reproduction of headlines
on products) of the Rule 30(b)(6) notice;
that Ms. Packman did not receive the
answers or information she had hoped to
find to support her claims does not
amount to prejudice from the denial of
discovery. Accordingly, the district
court did not abuse its discretion in
denying the motion. Cf. Brill, 119 F.3d
at 1275 (untimely motion to compel
discovery did not relieve plaintiff of
burden of producing specific facts to
show that genuine issue of material fact
existed to defeat motion for summary
judgment).
Conclusion
The district court correctly granted
summary judgment for defendants because
Ms. Packman failed to establish a genuine
issue of material fact as to the elements
of the fair use defense and the
likelihood of confusion. In addition, the
district court did not abuse its
discretion in denying Ms. Packman’s
eleventh-hour motion to compel discovery.
Accordingly, the judgment of the district
court is affirmed.
AFFIRMED
FOOTNOTES
/1 Alex Comfort, The Joy of Sex (1977).
/2 The trademark was registered in Ms. Packman’s
name for estate planning purposes.
/3 On May 5, 1997, Ms. Packman registered "the joy
of six" as a servicemark for use in connection
with basketball games under Illinois law.
/4 The Notice listed the following topics for the
Tribune’s deposition:
(1) Process and procedures used by the Chicago
Tribune to select headlines for its newspapers,
including but not limited to approvals and clear-
ances needed.
(2) Process and procedures used by the Chicago
Tribune to select "THE JOY OF SIX" as the head-
lines [sic] for the June 15, 1998 edition of its
newspaper.
(3) Process and procedures used by the Chicago
Tribune to avoid trademark infringement.
(4) Process and procedures used by the Chicago
Tribune to avoid infringement of Plaintiff’s "THE
JOY OF SIX" mark, including procedures and steps
taken to avoid willful infringement.
(5) Process and procedure used by the Chicago
Tribune to select portions of its publications
that are reproduced on products, such as tee
shirts, plaques, paperweights, and rugs.
(6) Process and procedures used by the Chicago
Tribune to select the front page of the June 15,
1998 edition of its newspaper for reproduction on
products, such as tee shirts, plaques, paper-
weights, and rugs.
(7) Process and procedure used by the Chicago
Tribune to permit others to reproduce or repli-
cate portions or headlines of its newspapers on
products, such as tee shirts.
(8) The decision by the Chicago Tribune to permit
Front Page News, Inc[.] to produce the tee shirt
shown in Exhibit 7 of the Complaint in this
action.
(9) The circumstances and facts relating to a
"computer system crash" identified in Defendant
Chicago Tribune Company’s Response to Plaintiff’s
First Request for Production of Documents, Re-
sponse to Request Number 23, including a descrip-
tion of certain documents that may have been
responsive to the document request.
/5 The court also denied Ms. Packman’s motion to
strike certain exhibits in defendants’ motion for
summary judgment, a ruling she does not contest
on appeal.
/6 Ms. Packman does not contest this ruling on
appeal, and, in any event, the district court’s
decision was entirely proper. See United Mine
Workers of America v. Gibbs, 383 U.S. 715, 726
(1966); Blau Plumbing, Inc. v. S.O.S. Fix-It,
Inc., 781 F.2d 604, 611 (7th Cir. 1986).
/7 The defendants do not raise on appeal their First
Amendment defense to Ms. Packman’s claims.
/8 Proof of these two elements is required for both
federal claims in this case: trademark infringe-
ment, 15 U.S.C. sec. 1114, and unfair competi-
tion, 15 U.S.C. sec. 1125(a). See Smith Fiber-
glass Prod., Inc. v. Ameron, Inc., 7 F.3d 1327,
1329 (7th Cir. 1993).