The opinion of the court was delivered by: Hon. Rudolph T. Randa Chief Judge
This is an unfair competition and trademark infringement action between competitors in the wrestling entertainment field. The plaintiff, Albert Patterson d/b/a World Wrestling Association, Superstars of Wrestling, Inc., and d/b/a W.W.A. Superstars ("Patterson"), claims that the Defendants World Wrestling Entertainment, Inc. ("WWE" or "the Defendant wrestling business") and Good Humor Corporation, d/b/a Good Humor Breyers Ice Cream ("Good Humor") (collectively "the Defendants") are infringing upon his marks -- World Wrestling Association, WWA, Superstar Wrestling, Superstars Wrestling, Superstars of Wrestling, Superstars of Pro Wrestling, WWA Superstar Wrestling, WWA Superstars Wrestling, WWA Superstars of Wrestling, and WWA Superstars of Pro Wrestling. In a sense, this action is a re-match because of previous related trademark litigation in this district, United Wrestling Association, Inc., d.b.a. U.W.A. Superstar Wrestling v. Titan Sports, Inc., Case No. 90-C-0991 (E. D. Wis.) ("the 1990 action"), that was terminated by consent decree.
This Court has jurisdiction over the federal claims in this action pursuant to 28 U.S.C. § 1331, 15 U.S.C. § 1121, and 28 U.S.C. § 1338(a). Supplemental jurisdiction over Patterson's state law claims is afforded by 28 U.S.C. § 1367. Venue lies in this district under 28 U.S.C. § 1391(b) & (c).
This decision addresses the motion for summary judgment filed by the Defendants seeking dismissal of all five claims*fn1 brought against them by Patterson.*fn2
Before delving into the motion, the Court addresses a recent documentary submission. On January 10, 2006, Patterson filed additional documents as part of his response to the Defendants' motion which, he states, became available to him after his response to the Defendants' motion was filed. Patterson's response to the summary judgment motion was filed on June 5, 2005. Over six months have since passed and the briefing of the motion has long since closed. Patterson's new documents will not be considered at this eleventh hour. The Court's analysis of the parties' voluminous summary judgment submissions was well into its final stages when it received Patterson's filing. The Court will not prolong the process by considering these new submissions and the Defendants rejoinder thereto.
Standard For Summary Judgment
Summary judgment "shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with affidavits, if any, show that there is no genuine issue of material fact and that the moving party is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c); see also, Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986). A party "opposing a properly supported motion for summary judgment may not rest upon the mere allegations or denials of his pleading, but . . . must set forth specific facts showing that there is a genuine issue for trial." Doe v. Cunningham, 30 F.3d 879, 883 (7th Cir. 1994) (quoting Anderson, 477 U.S. at 248; also citing Celotex Corp., 477 U.S. at 324; Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986); United States v. Rode Corp., 996 F.2d 174, 178 (7th Cir. 1993)).
"Material facts" are those facts that under the applicable substantive law "might affect the outcome of the suit." See Anderson, 477 U.S. at 248. A dispute over "material facts" is "genuine" if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. The burden of showing the needlessness of a trial -- (1) the absence of a genuine issue of material fact and (2) an entitlement to judgment as a matter of law -- is upon the movant. In determining whether a genuine issue of material fact exists, the Court must consider the evidence in the light most favorable to the nonmoving party. See Matsushita Elec. Indus. Co., Ltd., 475 U.S. at 587.
Failure to respond to a summary judgment motion does not automatically result in judgment against the non-moving party. See Cunningham, 30 F.3d at 883. "A party is never required to respond to a motion for summary judgment in order to prevail since the burden of establishing the nonexistence of a material factual dispute always rests with the movant." Id. (citations omitted).
These facts trace, to the extent not disputed, the history of Patterson's wrestling business and that of WWE. The facts are complicated and, at times, confusing because both wrestling businesses have been known by multiple names and have used multiple marks. The factual recitation is further complicated by a confidential agreement regarding the use of "WWF" as a trademark between the Defendant wrestling business and the WWF-World Wide Fund for Nature ("the Fund"). The Defendant wrestling business was found to have breached that agreement by the English Court of Appeals in WWF - World Wide Fund for Nature (formerly World Wildlife Fund) and World Wildlife Fund Inc. v. World Wrestling Federation Entertainment Inc.,  EWCA Civ 1 196 (Eng.) ("English Court of Appeals' decision"), prompting certain changes by the Defendant wrestling business.
Patterson And His Business Entities
In 1969, Patterson became involved in the wrestling entertainment business with Justi Fontaine ("Fontaine") in Milwaukee, Wisconsin ("Milwaukee"). In 1974, Fontaine died and Patterson took over the business. Patterson was the sole owner of the local wrestling promotion entity called United Wrestling Association, Inc., ("United Wrestling"), during the 1970's and early 1980's. United Wrestling promoted periodic wrestling shows at small venues in Milwaukee and surrounding towns under the names "United Wrestling Association," "U.W.A.," "Super Star Wrestling," and "Superstars of Wrestling."
Patterson also performed as a wrestler and first won the WWA ("World Wrestling Association") belt in December 1977. Patterson's first promotional use of the "WWA" and "World Wrestling Association" marks was in 1978.*fn4 Specifically, Patterson first used those marks for purposes of promoting entertainment in the form a wrestling match on March 5, 1978, at the "Palace"*fn5 in Milwaukee. Approximately 500 people attended that event.
Eventually, United Wrestling declared bankruptcy and ceased all operations in about 1984. Patterson used a variety of other business entities in his wrestling entertainment business. King Kong Enterprises Inc. was incorporated on June 24, 1988. (Pl.'s Exs. in Opp'n to Defs.' Mot. for Summ. J. ("Pl.'s Exs."), Vol. V, Ex. 49.) On July 19, 1989, King Kong Enterprises Inc. filed with the Wisconsin Secretary of State, a statement of adoption of the trade name "World Wrestling Association" "in any form, size, color, or style of lettering; as it pertains to the promotion of wrestling matches, ticket sales, goods and services" and a statement of adoption of the trade name "WWA Super Stars of Pro Wrestling" in any form, size, color, or size of lettering; as it pertains to promoting wrestling matches and promoting ticket sales." (Id.)
Beginning in 1989, at wrestling event promoted by Patterson caps were sold bearing the mark "World Wrestling Assoc. TM' W.W.A. Superstars'TM." After 1989 and up to the present, T-shirts sold at similar events bore the mark "World Wrestling Association Superstars of Wrestling." Generally, these caps and T-shirts were sold at live events organized by Patterson's business entities.
The early rumblings of a conflict could be heard even back then. In August 1989, Patterson's attorney sent letters to Vincent McMahon ("V. McMahon")*fn6 and Gold Bond Ice Cream, Inc., (a predecessor-in-interest to Good Humor) demanding that they stop using the trademarks, "Superstars of Wrestling," "Superstars of Pro Wrestling," and "Superstar Wrestling." These letters, dated August 2, and August 11, 1989, do not claim any rights to "World Wrestling Association" and "WWA" or demand that V. McMahon or Gold Bond Ice Cream stop using "World Wrestling Federation" and "WWF," although Patterson knew that the Defendant wrestling business as doing business under those marks at that time.
In a letter dated December 27, 1989, to V. McMahon, Patterson offered to sell to Titan, an entity which operated WWWF and its successors, his tradenames identified as "1. Super Star Wrestling" and "2. Super Stars of Wrestling." (Defs.' App. in Supp. of Mot. for Summ. J. ("Defs.' App."), Ex. 3 (Patterson Dep. Nov. 22-23, 2004) 282, Ex. 26.)
On June 6, 1991, United Wrestling was merged into World Wrestling Assoc. (W.W.A.) Inc. (Pl.'s Exs., Ex. 50.) After the merger, the WWA mark was used in a 1991 press conference, by announcer Harold A. Naboisek ("Naboisek") (using the business name David Starr) who introduced the wrestler Gargantua,*fn7 as a new "WWA" wrestler. "WWA" was also used in the 1992 African World Festival*fn8 live wrestling event.
From 1993 to the present, Patterson's business entities continued to use, and to be known by, names other than the World Wrestling Association or the WWA. Between 1992 and 1993, Patterson aired UWA wrestling matches from the 1980's, on certain local access cable channels in Wisconsin, under the program title "Superstars of Wrestling." A June 12, 1996, letter from the African World Festival identifies Patterson's company as "Superstars of Wrestling."
Patterson has not made a profit from his wrestling business endeavors since 1979. The federal tax return filed for WWA/Superstar Wrestling, Inc., in 1993, reported a net loss of approximately $29,500. Personally, Patterson has not filed a personal income tax return for over 20 years.
Patterson purchased all of the assets of United Wrestling on December 7, 1992, for $9,500. Verified records from the Wisconsin Department of Financial Institutions demonstrate that WWA/Superstar Wrestling, Inc., Patterson's wholly-owned corporation, which he claimed owned the marks, was administratively dissolved on November 4, 1994.
Patterson's September 3, 2004, Supplemental Responses to Interrogatory No. 5 of the Defendants' First Set of Interrogatories contains a list of 40 wrestling shows from 1978 to 2003 that were promoted as "World Wrestling Association" and "WWA" shows. The list was compiled from Patterson's memory. On March 8, 2005, Patterson served a Supplemental Response to the Defendants' First Set of Interrogatories that added a June 19, 2001, show, to Patterson's "Schedule of Use of WWA Wrestling, Inc."
During his November 22, 2004, deposition, Patterson was questioned with the promotional materials for pre-1993 shows listed on his "Schedule of Use of WWA Wrestling, Inc.," that do not in any way reference "World Wrestling Association" or "WWA." Initially, Patterson maintained that they were "World Wrestling Association" and "WWA" shows based on other unidentified evidence. However, eventually Patterson conceded that he did not promote any wrestling shows using "World Wrestling Association" or "WWA" until years later than his alleged 1978 first use.
During his November 23, 2004, deposition, Patterson stated that he did not offer to sell the marks "World Wrestling Association" and "WWA" to V. McMahon because "I did not think I had exclusive rights to World Wrestling Association at that time." (Defs.' App., Ex. 3, 287.) Also, during Patterson's November 22, 2004, deposition, he stated that, at the conclusion of the 1990 Action, he understood that he required "a consent statement" and "a release" from World Wrestling Federation or WWF to use "World Wrestling Association" as the name of his business.
WWE, a publicly traded corporation on the New York Stock Exchange, is an integrated media and entertainment company principally engaged in the development, promotion and marketing of television programming, pay-per-view programming, and live arena events, and the licensing and sale of branded consumer products featuring its "World Wrestling Entertainment" brand of entertainment. WWE has developed into an international media conglomerate that is a leading provider of family entertainment.
Currently, WWE produces and distributes seven weekly television programs that reach over ten million households each week. WWE is the largest provider of pay-per-view revenue in the world with 5.6 million purchases of WWE's 12 pay-per-view events in 2004. WWE's Wrestlemania XX pay-per-view event in March 2004 grossed the highest pay-per-view revenue ever recorded. WWE promotes over 300 live events annually, which are attended by over 1.64 million people. WWE's nationally circulated magazines sold over 4.3 million copies in 2004.
The mark "WWE" is a highly popular licensed property. "WWE"-branded video games sold over four million units*fn9 in 2004 and "WWE"-branded books have sold over five million gross units to date with 13 titles appearing on the New York Times Best Seller List, including three number one best seller books and one best seller at number two. "WWE" home videotapes sold over 1.8 million units in 2003 and released 27 new titles. Other "WWE"-branded merchandise is sold through national retailers such as Wal-Mart, Target and Toys R Us, as well as directly through "WWE's" website, catalog and at live events. WWE's website, www.wwe.com, receives 6.8 million visits per month with more than eight million video streams downloaded monthly.
Good Humor is WWE's licensee.*fn10
Prior Litigation Between Patterson & Titan
The 1990 action, Patterson's first trademark infringement lawsuit against Titan, WWE's predecessor-in-interest, was resolved by a November 25, 1992, settlement entered as a written Consent Order ("the Consent Order") by United States District Judge Thomas J. Curran on January 22, 1993. The Consent Order precludes WWE from using the names "Superstars of Wrestling,"*fn11 "Superstar Wrestling," and "Superstars of Pro Wrestling" in conjunction with wrestling activities. The Consent Order expressly states: "This judgment does not preclude any party from using the term 'Superstars.'" (Defs.' App., Ex. 8 (Consent Order) 2.) The action was dismissed with prejudice. (Id.)
Shortly after entry of the Consent Order, Patterson brought an order to show cause why Titan should not be held in civil contempt for allegedly violating the injunction.*fn12 He claimed, among other things, that the Defendant wrestling business's use of "WWF's Superstars" violated the Consent Order. During the November 17, 1993, hearing on the motion, Patterson told the court that he had been operating under "WWA Superstars since 1989." (Defs.' App., Ex. 23 (Nov. 17, 1993, Order to Show Cause Hearing in the 1990 action, Tr. 9).) Judge Curran stated "there's no evidence of that." (Id.) In denying the contempt motion, Judge Curran stated:
As to the issue of whether the defendant's use of a confusingly similar mark has been a violation, the court would have been sympathetic toward this position would it not have been for the fact that the Secretary of State's office shows that the plaintiff after this injunction was entered sought to change the name of King Kong Enterprises to Superstars of Wrestling, WWA Superstars, Inc.
Certainly in the court's mind that is confusing and is likely to confuse the public. . . . just by reading this, "WWA Superstars Inc." is so close to "WWF Superstars" that I can't conceive of any reason for that change other than to piggyback the benefits that might flow from the identity of WWF which changed its name previously pursuant to the injunctive relief sought and received in this court. (Defs.' App., Ex. 23, Tr. 37-38 (emphasis added).)
As of her January 16, 1992, deposition, L. McMahon*fn13 did not claim ownership of any entity named "Worldwide Wrestling." From 1980 to 1982, Titan used the trade name or logo "Worldwide Wrestling Federation."*fn14 but she did claim ownership of "World Wrestling Federation." In her sworn declaration to the United States Patent and Trademark Office ("PTO"), filed on June 3, 1983, in connection with Serial No: 73/428666, L. McMahon declared that the first use of the service mark, "World Wrestling Federation," was in February of 1983. Although Patterson claims that he began using the marks "World Wrestling Association" and "WWA" in 1978, he did not allege in the 1990 action that "World Wrestling Federation" or "WWF" infringed his "World Wrestling Association" or "WWA" marks.
The World Wide Wrestling Federation ("WWWF") was the name of the wrestling organization founded by V. McMahon's father in 1963. V. McMahon and L. McMahon believed that these names were cumbersome -- that there were too many words in the original name and were difficult to repeat. Therefore, the organization's name was changed to "World Wrestling Federation" or "WWF,"*fn15
Titan bought a company called Capitol Wrestling in June of 1982. From 1980 to 1982, Titan's principal activity from 1980 through 1982 was as a promotion company. Titan used the talent of Capitol Wrestling which operated under the name of "WWWF."
In 1984 or 1985, Patterson watched "WWF Superstars of Wrestling" WrestleMania I in which the "World Wrestling Federation" and "WWF" marks were featured prominently. (Defs.' App. Ex. 3, 225:19-226:15, Ex. 12 (WrestleMania I-X8).)*fn16 On January 1, 1996, Patterson sent the Defendant wrestling business a complaint alleging trademark infringement that was virtually identical to the complaint in this action. Patterson did not file that particular complaint in any court.
On January 12, 1988, WWF -- the former WWWF- changed its name to Titan.*fn17
More changes were coming. On July 29, 1999, Titan changed its name to "World Wrestling Federation Entertainment, Inc." And finally, fFollowing the English Court of Appeals' decision, "World Wrestling Federation Entertainment, Inc." changed its name to "World Wrestling Entertainment, Inc."on June 12, 2002.
The Fund began using the mark "WWF" in 1961. The mark "WWF" has been owned by the Fund under Serial Number 72223194 and Registration Number 81716 since at least 1965, when it was registered. The Fund filed for registration of "WWF" on May 8, 1981, and the mark was registered under number 733090997.*fn18 The mark under registration number 1305671 is owned by the Fund with respect to "IC 028, US 022; IC 025 US 039; IC 024 US 042; IC 020 US 050; IC 018 US 003; IC 016 US 022 037 038; IC 014 US 027, 28; IC 009 US 036; and IC 008 US 023." (Pl.'s Statement of Facts in Opp'n to Defs.' Mot. to Summ. J. ("Pl.'s Statement of Facts") ¶ 4.)
On January 20, 1994, the Fund and Titan entered into an agreement pursuant to which Titan received limited permission to use the mark "WWF." The agreement provided that neither party would disclose the terms or existence of the agreement. (Pl.'s Exs., Vol. I, Ex. 1 at 12 (Art. 7).)*fn19 The January 20, 1994, agreement was preceded by a September 12, 1989, letter agreement between Titan and the Fund's predecessor, World Wildlife Fund. (Pl.'s Exs., Vol. I, Ex. 1, Art. 5 & Annex 3.) In that letter, Titan agreed not to use the mark "WWF" in "Times Roman" typeface ...