Seventh Circuit YouTube Reference Thwarted by Major League Baseball

Even judges like YouTube. Judge Evans of the Seventh Circuit, in an opinion this week on trademark law, begins with a vivid account of the legendary "Pine Tar Incident" which took place in a game between the Kansas City Royals and the New York Yankees in 1983. The incident involved a winning homer by Hall of Famer George Brett, and a challenge to the score by Yankees' manager Billy Martin. The issue: how many inches of pine tar on the bat. Too many, as it turned out.

Judge Evans closes his account of the incident with a citation to a video of the incident available on YouTube.

Naturally we had to check out the video. But alas! The url returns an error message: "This video is no longer available due to a copyright claim by MLB Advanced Media."

The court's inclusion of a citation to the YouTube video is interesting in light of the Ninth Circuit's recent opinion in Perfect 10 v. Amazon.com (remanding to the District Court for further proceedings Perfect 10's claims of contributory copyright infringement against search engines for providing links to unauthorized copies of copyright images).

In any event, Judge Evans's opinion in Central Manufacturing, Inc. v. Brett, No. 06-2083 (7th Cir. July 9, 2007), is a fun summer read, considering it involves, as the opinion relates, another appeal of a dispute involving George Brett and a baseball bat. And some basics of trademark infringement law, and the manner in which proof of trademark rights must be established. And, the consequences of bringing and action for infringement of trademark rights that the plaintiff is unable to establish.

As the opinion relates, a company founded by George Brett and his brother manufactures specialized wood bats, one of which was designated the "Stealth" model. Central Manufacturing and Stealth Industries, both controlled by Leo Stoller, hold a trademark registration for the use of the word "Stealth" on a wide variety of sporting goods. In 2001, Central filed an application for the use of the Stealth mark on baseball bats; the registration was granted in 2004. Stoller has also filed a large number of other applications for the "Stealth" mark on other products, and presently has upwards of 50 applications for the mark pending in the U.S.P.T.O. And he has been very successful in obtaining licensing fees from a wide variety of users of the term "stealth" on products, including a $10 licensing fee from Northrop Grumman for the use of the term on the stealth bomber fighter plane.

Central sued the Brett Brothers company for trademark infringement and ultimately (skipping a lot of detail) the issue came down to whether Central could show use of the mark in commerce prior to that of Brett Brothers. The District Court discounted Stoller's late-produced evidence of sales of baseball bats with the Stealth mark, and the appellate court agreed with its assessment:

Stoller has repeatedly sought ways to get around trademark law's prohibition on the stockpiling of unused marks, and this case is no different. It is unfathomable that a company claiming to have engaged in thousands of dollars of sales of a product for more than a decade would be unable to produce even a single purchase order or invoice as proof. Self-serving deposition testimony is not enough to defeat a motion for summary judgment. By exposing Central’s failure to make bona fide use of the “Stealth” mark for baseballs, Brett Brothers met its burden to overcome the presumption afforded by the 1985 registration, and summary judgment in its favor was the appropriate course.

Judgment in favor of the Brett Brothers affirmed, along with cancellation of the Stealth mark for baseball bats, and the award of attorney fees.