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050807 Trademark Law: Tyler Green Sports

By Sean Fowler

Green v. Fornario, 3rd U.S. Circuit Court of Appeals, No. 06-2649 (May 8, 2007):

Issue:
Tyler Green was a Phillies baseball player that washed out quickly because of injuries but has stayed large in the Philadelphia-area baseball community with local media coverage of his coaching, and he has a sports business called Tyler Green Sports. Fornario was a Philadelphia-area sports-bar bartender that allegedly tried and failed to get into the handicapping business. He dropped out soon after entering. Said the court:

"Fornario did, however, market this short-lived venture as Tyler Green Sports. He testified that the business was never affiliated with anyone named Tyler or Green. Rather, he purportedly came up with "Green" because handicapping businesses, he said, typically have some reference to money in their names. Green is, of course, the color of money, so it fit. Fornario then tried to come up with something "catchy" to put with Green. He settled on Tyler, he claimed, because he is an Aerosmith fan, and Stephen Tyler is the group's lead singer. Thus, Tyler Green Sports. He testified that at the time he had never heard of Tyler Green the baseball player. He admitted, however, to being a fan of all sports except hockey. The Philadelphia teams have no allure for him, as he is a New York native. He described himself as a "diehard" Yankees fan. While all of this is more than a mite shaky, it is Fornario's story, and he is sticking to it."

A few years later, Fornario bought the rights to tylergreensports.com and began marketing a reportedly unsuccessful sports-themed event planning and entertainment service of the same name. The real Tyler Green's attorney called up the business and confirmed that no one associated with the business was named Tyler or Green, so the lawyer requested the company cease and desist using the name. Fornario refused, and Green brought actions for misdescription, dilution, and cybersquatting. Green was awarded costs but denied attorneys' fees, and Green appealed.

Pertinent Issue of Trademark Law:
1) What constitutes "exceptional" under the Lanham Act?

Conclusion:
The Lanham Act allows for the award of attorneys' fees in "exceptional" cases. Green argued that Fornario's refusal to cease and desist was a flagrant refusal to comply with federal law. The appeals court agreed that it could be, but it said that to presume so would require that the appeals court acknowledge that Fornario acted outside of good faith by refusing despite knowing that he had no right to use the mark. The appeals court refused to acknowledge such as the lower court did not acknowledge this fact either. The lower court refused to find that Fornario had to have been aware of Tyler Green's status as a local sports hero, since Green's sports history in the Major League was fleeting, and his career after that has been fairly small stage. Further, Fornario's company was otherwise legitimate, and this weighed upon the courts' consideration of cybersquatting, etc. Since the appeals court could not find the lower court's belief clear error, it could not find that the case was exceptional. Fornario had a colorable defense to the claims; he could have had a good faith belief in his right to the mark. As such, the lower court was affirmed.

Full post as published by Cogito Ergo Teneo; an intellectual property blawg on August 20, 2007 (boomark / email).