Wwe v. Big Dog Holdings, Inc.

280 F.Supp.2d 413

WORLD WRESTLING FEDERATION ENTERTAINMENT, INC., a Delaware corporation, Plaintiff, v. BIG DOG HOLDINGS, INC., a Delaware corporation, Defendant.

No. 01-CV-394.

United States District Court, W.D. Pennsylvania.

March 10, 2003.

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Jerry S. McDevitt, Robert L. Byer, Curtis B. Krasik, Jill D. Helbling, Kirkpatrick & Lockhart, Pittsburgh, PA, for Plaintiff.

Mark R. Hamilton, Zimmer Kunz, Pittsburgh, PA, Jacqueline A. Criswell, David Butman, Tressler, Soderstrom, Maloney & Priess, Chicago, IL, for Defendant.

OPINION OF THE COURT

CERCONE, District Judge.

I. INTRODUCTION

The Worldwide Wrestling Federation Entertainment, Inc. ("WWE") filed a seventeen (17) count Amended Complaint asserting claims against Big Dog Holdings, Inc. ("Big Dog") for copyright infringement (Counts I through VI), trademark infringement under Section 32 of the Lanham Act, 15 U.S.C. § 1114, (Count VII), trademark infringement and false designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), (Count VIII), trade dress infringement under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), (Count IX), misappropriation and unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), (Count X), trademark dilution under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), (Count XI), violation of the Pennsylvania anti-dilution statute, 54 PA. CONS. STAT. ANN. § 1124 (Count XII), violation of Pennsylvania fair trade practices statutes, 73 PA. CONS. STAT. ANN. §§ 201-2 and 201-3 (Count XIII), unfair competition under the common law of Pennsylvania (Count XIV), and violation of the right of publicity under the common law of Pennsylvania (Counts XV, XVI, and XVII).

Following the close of discovery, Big Dog filed a Motion for Summary Judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure. WWE has responded and the motion is now before the Court.

II. STATEMENT OF THE CASE

A. The Contestants

WWE is an integrated media and entertainment company 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. (Am. Cmplnt. ¶¶ 11 and 16). WWE has been involved in the sports entertainment business for over twenty (20) years and has developed story lines based around its wrestling characters. (Am. Cmplnt. ¶¶ 17 and 18). Currently, WWE produces five television programs each week: (i) "Raw" and "War Zone" shown consecutively on Monday nights and known as "Raw is War"; (ii) "WWF Smackdown!" on Thursday nights; (iii) "Live Wire" on Saturday mornings; (iv) "Superstars" on Sunday mornings; and (v) "Heat" on Sunday nights. (Am. Cmplnt. ¶ 17).

Through its programming, described by WWE as "... action-packed episodic drama ... akin to an ongoing, ever-developing soap opera," WWE has developed popular wrestling characters appearing under unique names and portrayed with unique persona, history relationships, music and visual appearance, and behavior. (Am. Cmplnt. ¶¶ 17 and 19). A principal component of WWE's business is the merchandising and licensing of branded consumer products depicting these characters' names, likenesses, signature phrases, as well as depicting WWE's programming. (See Appendix to WWE's Opposition to Big Dog's Motion for Summary Judgment Exhibit R) (hereinafter "WWE Exhibit ___"). These branded consumer products are marketed and sold through two separate operations: (1) WWE direct merchandising, which refers to WWE's own design production and sale of product principally through WWE's internet website, semiannual catalogs and sales at live events; and (2) licensing, which refers to WWE's licensing of its intellectual property by category (i.e., t-shirts, trading cards, posters, action figures, etc.) to third-party companies that pay royalties to WWE on product sales.¹ (WWE Exhibit T, p. 6 lines 7-22). WWE, in turn, pays royalties to the individual portraying the character based on revenues from the sales of products depicting the individual's WWE character. (WWE Exhibit Q, ¶ 6).

Through predecessor companies, Big Dog has been in business since 1983, and its first full year of operations under current ownership was in 1993. (Big Dog Exhibit G, ¶ 1). Big Dog develops, markets, and retails a branded lifestyle collection of unique, high quality, popular priced consumer products, including active wear, casual sportswear, accessories and gifts. (Big Dog Facts ¶ 18). Big Dog has registered trademarks in both "Big Dogs" and its famous dog design logo. (Big Dog Facts ¶ 35). Its merchandise is sold solely through its own Big Dog stores, its catalogs, and through Big Dog's website. (Big Dog Facts ¶ 19). It is Big Dog's contention that it has always developed certain graphics as parodies of popular culture which poke fun at what is going on in the world. (Big Dog Exhibit F at pp. 13 and 18; Big Dog Exhibit J). Big Dog further contends that the depiction of the Big Dog character over and over in different contexts is part of a long-running joke that consumers have come to identify with the Big Dog brand. (WWE Exhibit A, p. 110:lines 1-12).

Big Dog contends that its Big Dog character is intended to be irreverent, funny, and not afraid to make fun of "overinflated aspects of our society." (WWE Exhibit A, p. 92: lines 15-18). Moreover, Big Dog alleges that its t-shirts appeal to customers who enjoy mocking "over-promoted pop phenomena" that are prevalent in today's media. (Big Dog Facts ¶ 32). The Big Dog graphics ridicule, poke fun at, and mock these self-serious icons by characterizing them as dogs, particularly associating them with the Big Dog character, giving them humorous names, and "dogifying" them. (WWE Exhibit A, p. 68: lines 18-25; p. 69: lines 1-6). A Big Dog graphic artist described "dogify" as a means "to satirize a given entity by giving him big floppy ears, a big silly tail, turning him into this variety of dog that we turn everything into." (WWE Exhibit B, p. 12: lines 5-8). The dog graphic essentially is a caricature of the intended subject, copying elements of the subject so in satirizing a particular person or thing, it is recognizable to the public. (WWE Exhibit B, p. 15: lines 1-16). Big Dog continues its long-running dog joke parody by always inserting the dog and showing the Big Dog character in many different contexts. (WWE Exhibit A, p. 110: lines 1-12)

B. WWE's Intellectual Property

"THE ROCK", portrayed by Dwayne Johnson, "STONE COLD STEVE AUSTIN", portrayed by Steve Williams, and the "UNDERTAKER", portrayed by Mark Calloway, have been three of the WWE's most popular wrestling characters over the past five (5) years. (WWE Exhibit Q, ¶¶ 7 and 8). WWE alleges that it has developed and promoted THE ROCK since 1997, and has created and developed a unique trademarked name, persona and trade dress for THE ROCK. (Am. Cmplnt ¶¶ 27 and 28). Similarly, a unique trademarked name, persona and trade dress has been created, developed and promoted by WWE for STONE COLD STEVE AUSTIN since 1996, and the UNDERTAKER since 1990. (Am. Cmplnt. ¶¶ 47, 48, 67, 68 and 69). WWE further contends that it owns trademarks and service marks in THE ROCK, STONE COLD STEVE AUSTIN, and the UNDERTAKER.² (Am. Cmplnt. ¶¶ 42, 61 and 80; WWE Appendix Exhibit EE). In addition, WWE claims ownership in trademarks and service marks for: (1) registrations for WWF; (2) the WWF scratch logo; (3) WWF Smackdown! design mark; and (4) AUSTIIN 3:16. (Am. Cmplnt. ¶¶ 21, 22, 24, 61, 88, and 89; WWE Appendix Exhibits DD and EE).

In conjunction with its registration of THE ROCK mark, WWE alleges that it has acquired common law trademarks in THE ROCK's signature catch phrases and slogans: "Know Your Role"; "Jabroni"; and the "Brahma Bull". (Am. Cmplnt.¶¶ 40-43). WWE also contends it has acquired a common law trademark in THE ROCK's Brahma Bull design mark. (Am.Cmplnt. ¶ 43).

Integral to WWE's portrayal of the STONE COLD STEVE AUSTIN character is the use of catch phrase slogans and symbols, including: "Open Up a Can of Whoop Ass"; "Austin 3:16"; "Rattlesnake"³; "Cause Stone Cold Said So"; and the Skull design. (Am.Cmplnt. ¶ 59). WWE contends that it has acquired a common law trademark in the "Open Up a Can of Whoop Ass," "Rattlesnake," and the "Cause Stone Cold Said So" marks and the Skull design mark. (Am.Cmplnt. ¶ 63).

In addition to their unique persona and character, WWE has portrayed THE ROCK, STONE COLD STEVE AUSTIN and the UNDERTAKER characters with unique and distinctive trade dress. A central component of THE ROCK's trade dress is the Brahma Bull symbol. Not only is THE ROCK often referred to as the "Brahma Bull," but he has a tattoo of a Brahma Bull on his right arm, and his clothing, including his wrestling trunks, t-shirts and black leather jacket, bear the image of a Brahma Bull. (Am.Cmplnt. ¶ 31). THE ROCK is generally portrayed wearing tinted sunglasses, which are often tipped down to reveal THE ROCK's signature facial expressions, most notably, the "People's Eyebrow."⁴ (Am.Cmplnt. ¶ 31). STONE COLD STEVE AUSTIN is generally depicted with solid black wrestling trunks, black wrestling boots, no shirt and an open black leather vest with an image of a white skull on the left side and the name "AUSTIN" written vertically in white lettering down the right side. (Am. Cmplnt. ¶ 50).

To further the "menacing persona" of the UNDERTAKER, he has been generally portrayed in all black clothing with black leather designs on the legs, a black leather vest with silver buckles, and tattoos covering his body. (Am.Cmplnt. ¶ 70). The UNDERTAKER also wore black elbow pads, black leather fingerless gloves, black leather boots, and often entered the ring wearing a long black cape. (Am. Cmplnt. ¶ 71). The persona, trade dress and character traits of THE ROCK, STONE COLD STEVE AUSTIN, and the UNDERTAKER are used by...