Abdul Jabbar v. General Motors - Mark Roesler

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75 F.3d 1391 Page 464 USLW 2507, 37 U.S.P.Q.2d 1694, 96 Cal. Daily Op. Serv. 906, 96 Daily Journal D.A.R. 1445(Cite as: 75 F.3d 1391)GMC offers two defenses in response to thisclaim: 1) Abdul-Jabbar lost his rights to the nameLew Alcindor when he "abandoned" it; and 2)GMC's use of the name Lew Alcindor was anominative fair use which is not subject to theprotection of the Lanham Act. The district courtheld both defenses applicable.a) Abandonment under the Lanham ActWhile the district court found that there was nodispute as to GMC's failure to seek or obtainAbdul-Jabbar's consent to use his former name inits commercial, and that "on its face, the LanhamAct applies," it held that GMC was entitled tosummary judgment on the basis of its finding thatAbdul-Jabbar had abandoned his former namethrough nonuse under the Lanham Act. Title 15U.S.C. § 1127 (1992) provides in pertinent part:A mark shall be deemed to be "abandoned" wheneither of the following occurs:(1) When its use has been discontinued with intentnot to resume such use. Intent not to resume maybe inferred from circumstances. Nonuse for twoconsecutive years shall be prima facie evidence ofabandonment. "Use" of a mark means the bonafide use of that mark made in the ordinary courseof trade, and not merely to reserve a right in amark.(2) When any course of conduct of the owner,including acts of omission as well as commission,causes the mark to become ... generic....[4] Once created, a prima facie case ofabandonment may be rebutted by showing validreasons for nonuse or lack of intent to abandon themark. Star-Kist Foods, Inc. v. P.J. Rhodes & Co.,769 F.2d 1393, 1396 (9th Cir.1985). [FN4]Because Abdul-Jabbar acknowledged that he hadnot used the name Lew Alcindor in over ten years,and because the district court found that plaintiff'sproffered religious reasons for nonuse were notapplicable, [FN5] the court held that Abdul-Jabbarhad in effect abandoned the name.FN4. In some circuits, a showing of nonuseshifts the burden of persuasion to thetrademark owner to show intent to resume;in others, including the Ninth, Second andSeventh, prima facie abandonment createsonly a rebuttable presumption ofabandonment.FN5. We need not decide whether Abdul-Jabbar's proffered reasons for non-use of hisbirth name would serve to rebut a primafacie case of abandonment. Abdul-Jabbarargues that the district court's abandonmentruling substantially burdens his FirstAmendment right to free exercise ofreligion. The gist of this argument is thatby holding that one loses rights to his givenname on adopting a new name for religiouspurposes, the court puts pressure on areligious believer to "modify his behaviorand violate his beliefs." See Frazee v.Illinois Dep't of Employment Sec., 489 U.S.829, 832, 109 S.Ct. 1514, 1516, 103 L.Ed.2d914 (1989). Because we hold GMC failedto establish a prima facie case ofabandonment under the Lanham Act, we donot reach or resolve this argument.[5][6] Trademark law withdraws its protection froma mark that has become generic and deems itavailable for general use. Given that*1396 the primary cost of recognizing propertyrights in trademarks is the removal of words from(or perhaps non-entrance into) our language, ... theholder of a trademark will be denied protection if itis (or becomes) generic, i.e., if it does not relateexclusively to the trademark owner's product.New Kids on the Block v. News America Pub.,Inc., 971 F.2d 302, 306 (9th Cir.1992). Similarly,the law ceases to protect the owner of anabandoned mark. Rather than countenancing the"removal" or retirement of the abandoned markfrom commercial speech, trademark law allows itto be used by another. Accordingly, courts haveheld that an unused mark may not be held inabeyance by its original owner. See, e.g., LaSociete Anonyme des Parfums Le Galion v. JeanPatou, Inc., 495 F.2d 1265, 1272 (2d Cir.1974).[FN6]FN6. GMC's reliance on Major LeagueBaseball Properties, Inc. v. Sed Non OletDenarius, Ltd., 817 F.Supp. 1103(S.D.N.Y.1993), vacated pursuant tosettlement, 859 F.Supp. 80 (S.D.N.Y.1994),is inapposite. Aside from the fact that avacated case is poor authority, we observethat, unlike the case at bar, Major Leaguewas decided after full consideration of the
75 F.3d 1391 Page 564 USLW 2507, 37 U.S.P.Q.2d 1694, 96 Cal. Daily Op. Serv. 906, 96 Daily Journal D.A.R. 1445(Cite as: 75 F.3d 1391)evidence at a trial on the merits.[7] While the Lanham Act has been applied to casesalleging appropriation of a celebrity's identity, theabandonment defense has never to our knowledgebeen applied to a person's name or identity. Wedecline to stretch the federal law of trademark toencompass such a defense. One's birth name is anintegral part of one's identity; it is not bestowed forcommercial purposes, nor is it "kept alive" throughcommercial use. A proper name thus cannot bedeemed "abandoned" throughout its possessor's life,despite his failure to use it, or continue to use it,commercially.[8] In other words, an individual's given name,unlike a trademark, has a life and a significance quiteapart from the commercial realm. Use or nonuse ofthe name for commercial purposes does not dispelthat significance. An individual's decision to use aname other than the birth name--whether the decisionrests on religious, marital, or other personalconsiderations--does not therefore imply intent to setaside the birth name, or the identity associated withthat name.[9] While the issue of whether GMC's use of thename Lew Alcindor constituted an endorsement of itsproduct is far from clear, we hold that GMC cannotrely on abandonment as a defense to Abdul-Jabbar'sLanham Act claim.b) Lanham Act "fair use" doctrineThe district court cited the "fair use" defense, 15U.S.C. § 1115(b)(4), as an alternative ground fordismissal of plaintiff's Lanham Act claim. Wediscussed this defense in New Kids, where we heldthat the use by two newspapers of the "New Kids"name to conduct phone-in polls measuring thegroup's popularity was a nominative or nontrademark"fair use" of the name not subject toprotection under the Lanham Act. 971 F.2d at 306-09."[T]rademark law recognizes a defense where themark is used only 'to describe the goods or servicesof [a] party, or their geographic origin.' " Id. at 306;(quoting 15 U.S.C. § 1115(b)(4)). We cited theexample of a Volkswagen repair shop which used thename "Volkswagen" in the sign advertising itsbusiness. Volkswagenwerk Aktiengesellschaft v.Church, 411 F.2d 350, 352 (9th Cir.1969). There,we had recognized that it " 'would be difficult, if notimpossible, ... to avoid altogether the use of the word"Volkswagen" or its abbreviation "VW" ... [to]signify appellant's cars.' ... Therefore, his use of theVolkswagen trademark was not an infringing use."Id. at 307 (quoting VolkswagenwerkAktiengesellschaft v. Church, 411 F.2d 350, 352 (9thCir.1969)).We explained that "[c]ases like these are bestunderstood as involving a nontrademark use of amark--a use to which the infringement laws simplydo not apply." Id.[W]e may generalize a class of cases where the useof the trademark does not attempt to capitalize onconsumer confusion or to appropriate the cachet ofone product for a different one. Such nominativeuse of a mark--where the only word reasonably*1397 available to describe a particular thing ispressed into service--lies outside the strictures oftrademark law: Because it does not implicate thesource-identification function that is the purpose ofthe trademark, it does not constitute unfaircompetition; such use is fair because it does notimply sponsorship or endorsement by thetrademark holder.Id. at 307-08.New Kids was not the classic fair use case becausethe New Kids trademark was being used not todescribe the defendant's own product (newspapers),but to describe the plaintiff's product (rock band).Id. at 308. However, we held that in such cases, acommercial user is nevertheless entitled to thenominative fair use defense if it meets threerequirements:First, the product or service in question must beone not readily identifiable without use of thetrademark; second, only so much of the mark ormarks may be used as is reasonably necessary toidentify the product or service; and third, the usermust do nothing that would, in conjunction withthe mark, suggest sponsorship or endorsement bythe trademark holder.Id. (footnotes omitted). Because 1) the New Kidsrock band could not be referenced without using itsname; and 2) the newspapers used the name onlyto the extent necessary to identify them; and 3)nothing in the newspaper announcements impliedsponsorship or endorsement by the New Kids, weheld that the papers were entitled to the nominativefair use defense. Id. at 308-10.[10] The district court here found that GMC met
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Abdul Jabbar v. General Motors - Mark Roesler

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