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World Wrestling Entertainment, Inc. v. AWA Wrestling Entertainment, Inc.: US District Court : TRADEMARK | UNFAIR COMPETITION - summary judgment on trademark, unfair competition, cybersquatting claims

1 Previously, the Court ordered entry of default judgment against Defendant AWA
Wrestling Entertainment, Inc. [Docket No. 46] after the company failed to plead or otherwise
defend in this action.
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
World Wrestling Entertainment, Inc. and
WWE Libraries, Inc.,
Plaintiffs, MEMORANDUM OPINION
AND ORDER
v. Civil No. 07-2058 ADM/JSM
AWA Wrestling Entertainment, Inc., and
Dale R. Gagner, an individual, a/k/a Dale R.
Gagne, a/k/a Dale Gagne,
Defendants.
______________________________________________________________________________
Surya Saxena, Esq., Dorsey & Whitney, L.L.P., Minneapolis, MN and Curtis B. Krasik, Esq.,
Kirkpatrick & Lockhart Preston Gates Ellis, L.L.P., Pittsburgh, P.A., argued on behalf of
Plaintiffs.
Dale R. Gagner, pro se.
______________________________________________________________________________
I. INTRODUCTION
On September 24, 2008, the undersigned United States District Judge heard oral
argument on the Motion for Summary Judgment of Plaintiffs World Wrestling Entertainment,
Inc. and WWE Libraries, Inc. (collectively Plaintiffs) [Docket No. 59]. Plaintiffs assert claims
of trademark infringement, unfair competition, and cybersquating under federal law, as well as
claims of deceptive trade practices under Minnesota law. Compl. [Docket No. 1] 45-69.
Defendant1 Dale R. Gagner (Gagner) did not file any written response to Plaintiffs Motion for
Summary Judgment, however, he did appear and argue at oral argument. For the reasons set
forth below, Plaintiffs Motion for Summary Judgment is granted.
2
II. BACKGROUND
The American Wrestling Association (AWA) was a wrestling promotion organization
founded in the late 1950s by Verne Gagne. Gagne Decl. [Docket No. 62] 3. From its inception
until the 1990s, the AWA promoted professional wrestling exhibitions throughout the Midwest
and produced televised programming through Minneapolis Boxing & Wrestling Club, Inc.
(MBW), which was also owned by Verne Gagne. Id. 6; Compl. 23. Additionally, the
AWA actively used and licensed to third parties an extensive library of archival wrestling video
footage. Gagne Decl. 8.
Verne Gagne obtained (through MBW and another company that he owned, Squared
Circle Ventures, Inc.) federal trademark registrations for various marks used and associated with
the AWA, including: (1) American Wrestling Association, United States Registration Number
1,410,887, registered on September 23, 1986, for promotion and production of wrestling matches
for live events and television based on use of the mark as early as 1960 and (2) AWA, United
States Registration Number 1,401,633, registered on July 15, 1986, for promotion and
production of wrestling matches for live events and television based on use of the mark as early
as 1952. Compl. 25; Verdini Decl. [Docket No. 66] Exs. 2, 3. These marks (collectively the
AWA marks) acquired incontestable status in 1992. Compl. 26; Verdini Decl. Exs. 4, 5.
Gagner worked for MBW from approximately 1988 to 1990 selling live events,
organizing shows in different cities across the country, arranging air travel for performers, and
distributing compensation to the performers on the day of the show. Gagne Decl. Ex 1 (Gagner
Depo.) at 14-18. During that time, MBW promoted shows under the names American Wrestling
Association and AWA Championship Wrestling. Id. at 16. Gagners employment with MBW
3
ended in January 1990 when MBW learned that Gagner had conducted a wrestling event as an
AWA event without the knowledge, participation, or consent of MBW. Gagne Decl. 11. As a
result of this incident, MBW filed a trademark infringement action in the United States District
Court for the District of Minnesota, and an order was issued in June 1990, permanently enjoining
Gagner from, inter alia, (1) using the AWA marks, AWA Design Logo, or any colorable
imitation thereof and (2) making any representation or distributing any promotional material
likely to cause others to believe that Gagner or his businesses are in any manner associated with
the AWA. Verdini Decl. Ex. 6.
In early 2003, Plaintiffs acquired ownership of the AWA marks, as well as certain
archival video footage owned by Verne Gagne and his various companies. Langham Decl.
[Docket No. 65] 4-5, Ex. 1. The asset purchase agreement memorializing that transaction
defines the intellectual property that Plaintiffs acquired as:
Any and all intellectual property owned by Seller or used by Seller
in connection with its professional wrestling business including
without limitation the names American Wrestling Association,
AWA, . . . and any variants thereof, any logos, . . . character names,
talent names, likenesses, rights of publicity, . . . internet domain
names, . . . trademarks, . . . and the goodwill . . . associated with such
intellectual property, including any claims in respect of past
infringements . . . .
Id. Since acquiring the AWA marks, Plaintiffs have continued to develop and promote the
goodwill in the AWA marks. Kaufman Decl. [Docket No. 63] 13. In particular, Plaintiffs
released for sale a home video entitled The Spectacular Legacy of the AWA in 2006 and have
marketed and promoted the AWA marks by airing historical AWA footage on cable television.
Id. 14.
After acquiring the AWA marks, Plaintiffs learned that Gagner had allegedly been
2 The wrestlers depicted on Gagners website include, among others, Verne Gagne,
Crusher Lisowski, Dick the Bruiser, Mad Dog Vachon, Nick Bockwinkel, and Baron
Von Raschke. Gagner Depo. 87-89, Ex. 11.
4
infringing on the AWA marks. Id. 16. Plaintiffs allege that Gagner has (1) operated Internet
websites that infringe on the AWA marks by virtue of their names (www.awastars.com and
www.myspace/awastars.com) and their extensive use of the AWA marks; (2) unlawfully
exploited and traded on the goodwill associated with the AWA marks by doing business under
the name American Wrestling Association and AWA Wrestling Entertainment, Inc., selling
merchandise featuring the AWA marks, promoting wrestling events using the AWA marks, and
displaying images of wrestlers formerly associated with the AWA2; and (3) unlawfully licensed,
sanctioned, or otherwise purported to authorize third parties to use the AWA marks in
connection with wrestling activities and promotions throughout North America in exchange for a
fee. See Compl. 36-39; Gagner Depo. 83-86. Plaintiffs initiated this action, asserting that
Gagners alleged activity constitutes trademark infringement, unfair competition, cybersquating,
and deceptive trade practices. Compl. 11-15. Plaintiffs seek summary judgment.
III. DISCUSSION
A. Standard of Review
Federal Rule of Civil Procedure 56(c) provides that summary judgment shall issue if the
pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no
genuine issue as to any material fact and that the movant is entitled to judgment as a matter of
law. Fed. R. Civ. P. 56(c); see Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S.
574, 587 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986); Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986). On a motion for summary judgment, the Court views the
3 Trademark-infringement claims and unfair-competition claims under the Lanham Act
are both subject to this two-part test. See Jeld-Wen, Inc. v. Dalco Indus., Inc., No. 99-1005,
1999 WL 1024002, at *2 (8th Cir. Nov. 10, 1999) (citing Hubbard Feeds, Inc. v. Animal Feed
Supplement, Inc., 182 F.3d 598, 601 (8th Cir. 1999)); Eniva Corp. v. Global Water Solutions,
Inc., 440 F. Supp. 2d 1042, 1049, n.3 (D. Minn. 2006).
5
evidence in the light most favorable to the nonmoving party. Ludwig v. Anderson, 54 F.3d 465,
470 (8th Cir. 1995). The nonmoving party may not rest on mere allegations or denials, but
must demonstrate on the record the existence of specific facts which create a genuine issue for
trial. Krenik v. County of Le Sueur, 47 F.3d 953, 957 (8th Cir. 1995).
B. Trademark Infringement, Unfair Competition, and Deceptive Trade Practices
Plaintiffs Complaint alleges claims under the Lanham Act, 15 U.S.C. 1114, 1125(a),
and the Deceptive Trade Practices Act, Minn. Stat. 325D.44. The evaluation of Plaintiffs state
law claims require the same analysis as their claims under the Lanham Act, and, therefore, the
Court analyzes these claims together, using the same standards. See DaimlerChrysler AG v.
Bloom, 315 F.3d 932, 936, n.3 (8th Cir. 2003). To prevail on their claims for trademark
infringement and unfair competition under the Lanham Act, Plaintiffs must prove (1) that they
own a valid, distinctive trademark and (2) a likelihood of confusion between the registered mark
and the alleged infringing use by Gagner.3 See First Bank v. First Bank Sys., Inc., 84 F.3d
1040,1044 (8th Cir. 1996).
1. Ownership of a Valid and Distinctive Trademark
Registration of a trademark is prima facie evidence of the validity of the mark. See 15
U.S.C. 1057. In addition, registered trademarks are presumed to be distinctive. Aromatique,
Inc. v. Golden Seal, Inc., 28 F.3d 863, 869 (8th 1994). When a trademark meets certain
requirements, primarily continuous use for five years after registration, it becomes incontestable.
6
See 15 U.S.C. 1065. And the fact that a registered trademark has achieved incontestable status
is conclusive evidence of the marks validity, its registration, the registrants ownership, and the
registrants exclusive right to use the mark in commerce. See 15 U.S.C. 1115(b); Hubbard
Feeds, 182 F.3d at 600 n.2.
Here, Plaintiffs have offered evidence that the AWA marks are federally registered and
have achieved incontestable status. Gagner has presented no evidence to the contrary. Based on
his statements at oral argument, however, it appears that Gagner believes that because he was
permitted to incorporate, under Minnesota state law, a business named AWA Wrestling
Entertainment, Inc., he (or AWA Wrestling Entertainment, Inc.) acquired the rights to the AWA
marks. Gagners position is without merit. See Richardson v. Commr of Internal Revenue.,
509 F.3d 736, 743 (6th Cir. 2007) ([A] valid registration of a name of incorporation under state
law does not innoculate it from challenge under the federal trademark laws . . . .).
Given the undisputed evidence that the AWA marks are federally registered and have
achieved incontestable status, there are no issues of fact and the Court finds that the AWA marks
are valid and distinctive.
2. Likelihood of Confusion
The likelihood of customer confusion is the hallmark of any trademark infringement
claim. Northland Ins. Cos. v. Blaylock, 115 F. Supp. 2d 1108, 1117 (D. Minn. 2000) (quoting
Polymer Tech. Corp. v. Mimran, 37 F.3d 74, 80 (2d Cir. 1994)). In evaluating whether a
likelihood of confusion exists, the Court considers the following factors: (1) the strength of the
owners mark; (2) the similarity between the owners mark and the alleged infringers mark; (3)
the degree to which the products compete with each other; (4) the alleged infringers intent to
7
pass off its own goods as those of the trademark owner; (5) incidents of actual confusion; and
(6) whether the degree of care exercised by a consumer can eliminate a likelihood of confusion
that would otherwise exist. Hubbard Feeds, 182 F.3d at 602; see also SquirtCo v. Seven-Up Co.,
628 F.2d 1086, 1091 (8th Cir. 1980). These factors do not operate in a mathematically precise
formula; rather, [courts] use them at the summary judgment stage as a guide to determine
whether a reasonable jury could find a likelihood of confusion. Duluth New-Tribune v. Mesaba
Publg Co., 84 F.3d 1093, 1096 (8th Cir. 1996). [N]o one factor controls, and because the
inquiry is inherently case-specific, different factors may be entitled to more weight in different
cases. Kemp v. Bumble Bee Seafoods, Inc., 398 F.3d 1049, 1054 (8th Cir. 2005).
a. Strength of the Mark
Plaintiffs assert that as a result of the promotion and popularity of the AWA since its
inception nearly fifty years ago, the AWA marks have become indelibly linked in the publics
mind with the AWAs unique and rich history and that the goodwill associated with the AWA
marks is invaluable. Compl. 27. Plaintiffs argue that the AWA marks are therefore strong
because they have been used in commerce in connection with wrestling entertainment services
for almost fifty years . . ., have been federally registered for over twenty years . . .[,] and were
used in connection with a daily and/or weekly cable television program that was broadcast across
the United States. Pls. Mem. in Supp. Mot. for Summ. J. [Docket No. 61] at 23. Gagner has
introduced no evidence to create a genuine issue of fact regarding Plaintiffs assertion that the
AWA marks are strong. Accordingly, the strength of the marks has been established and this
factor weighs in favor the likelihood of confusion.
8
b. Similarity of the Marks
Plaintiffs assert that the marks used by Gagnernamely, AWA, American Wrestling
Association, AWA Wrestling Entertainment, Inc., and AWA Worldwideare virtually identical
to the AWA marks. Again, Gagner has offered no evidence to rebut this assertion. Faced with
such undisputed evidence in the record, therefore, the Court finds that this factor also weighs in
favor of the likelihood of confusion. See Davis v. Walt Disney Co., 430 F.3d 901, 903-04 (8th
Cir. 2005) (holding that the use of a mark that is almost identical to the owners mark weighs
in favor of a finding of a likelihood of confusion).
c. Degree of Competition
Plaintiffs have used the AWA marks in connections with their airing of historical footage
of AWA wrestling matches on cable television and production and marketing of a home video
entitled The Spectacular Legacy of the AWA. Kaufman Decl. 13-14. Gagner has used the
AWA marks and variations thereof in connection with his websites www.awastars.com and
www.myspace.com/awastars and his sanctioning and promotion of various wrestling events.
There is nothing in the record to suggest that the products and services of Plaintiffs and those of
Gagner, both of which relate to the production and promotion of professional wrestling, are not
engaged in direct competition with each other. The degree of competition, therefore, weighs in
favor of the likelihood of confusion.
d. Intent to Pass Off
Although intent is not an element of a claim for trademark infringement, [i]ntent on the
part of the alleged infringor to pass off its goods as the product of another raises an inference of
likelihood of confusion. SquirtCo, 628 F.2d at 1091. Plaintiffs point out, and the Court agrees,
9
that because Gagner was previously enjoined from infringing on the AWA marks in 1990,
establishes that he had prior knowledge of the AWA marks and an intent to mislead consumers
and trade on the goodwill connected with the AWA marks. See Insty*Bit, Inc. v. Poly-Tech
Indus., Inc., 95 F.3d 663, 671 (8th Cir. 1996) (holding that evidence of a prior relationship
provides evidence of the alleged infringers intent to trade on the plaintiffs goodwill). Given no
evidence Gagners intent was otherwise, this factor weighs in favor of the likelihood of
confusion.
e. Incidents of Actual Confusion
Proof of incidents of actual confusion is not essential to a trademark-infringement claim,
although it is positive proof of likelihood of confusion. SquirtCo, 628 F.2d at 1091. There is
no evidence in the record of actual confusion, [h]owever, failure to meet this factor is not
dispositive of a finding of likelihood of confusion. Faegre & Benson, LLP v. Purdy, 447 F.
Supp. 2d 1008, 1016 (D. Minn. 2006). This factor does not weigh for or against either party on
the likelihood of confusion.
f. Degree of Purchaser Care
The final factor considers whether the degree of purchaser care can eliminate any
likelihood of confusion that would otherwise exist. Plaintiffs allegations of infringement
include Gagners use the AWA marks on his websites, www.awastars.com and
www.myspace.com/awastars. The courts have recognized that [b]ecause of the nature of the
internet, consumers are unlikely to avoid confusion even through the exercise of due care. Id.
at 1016. Because it takes little effort to enter a web site, usually one click from a search
engines list, consumers are more likely to be confused as to the ownership of a web site than
10
traditional patrons of a brick-and-mortar store would be of a stores ownership. Id. (quoting
Coca-Cola Co. v. Purdy, No. 02-1782 ADM/JGL, 2005 WL 212797, at *3 (D. Minn. Jan. 28,
2005)). Because the domain name of Gagners website is simply a variation of the AWA marks,
the final factor weighs in favor of a likelihood of confusion.
In sum, there are no triable fact issues regarding (1) the validity and distinctiveness of the
AWA marks or (2) whether the listed factors weigh in favor of (or are neutral on) the issue of the
likelihood of confusion. As such, the Court grants summary judgment in favor of Plaintiffs on
their claims for trademark infringement and unfair competition under the Lanham Act and their
claim for deceptive trade practices under Minnesota law.
C. Cybersquating
Plaintiffs argue that they are also entitled to summary judgment on their claim under the
Anticybersquating Consumer Protection Act (ACPA), 15 U.S.C. 1125(d). To establish such
a claim, a plaintiff must show that (1) the alleged infringor registers, traffics in, or uses a domain
name that is identical or confusingly similar to the plaintiffs mark; (2) the plaintiffs mark was
distinctive or famous when the alleged infringor registered the domain name; and (3) the alleged
infringor had a bad faith intent to profit from the plaintiffs mark. See 15 U.S.C.
1125(d)(1)(A); see also Coca-Cola Co. v. Purdy, 382 F.3d 774, 782-84 (8th Cir. 2004). As
previously discussed, undisputed evidence in the record demonstrates that the AWA marks are
distinctive. Thus, only the first and third elements remainthat is, whether Gagners domain
names are identical or confusingly similar to the AWA marks and whether Gagner had a bad
faith intent to profit from the AWA marks.
In answering the first question, a court compares the challenged domain names and the
11
plaintiffs mark. Coca-Cola, 382 F.3d at 783. The Eighth Circuit has stated that when an
infringor merely adds generic terms to a plaintiffs mark, the resulting domain name is
confusingly similar, if not identical, to the [plaintiffs] mark. Id. The court concluded,
therefore, that domain names such as drinkcoke.org, mycoca-cola.com, and mymcdonalds.com
were confusingly similar to the Coke and McDonalds marks. Id. Like in Coca-Cola, the
challenged domain names here merely consist of the addition of a generic termstarsto a
protected mark. There are no triable issues of fact regarding whether the domain names are
confusingly similar to the AWA marks.
With regard to the third element of Plaintiffs ACPA claim, there are numerous,
nonexclusive factors that are considered in determining whether a defendant has acted with bad
faith intent. 15 U.S.C. 1125(d)(1)(B)(i). The undisputed evidence shows that an evaluation of
several of the factors weigh in favor of finding that Gagner had a bad faith intent to profit from
the AWA marks in registering and using domain names that incorporate those marks. In
particular, there is no evidence suggesting that Gagner has any trademark or other intellectual
property rights in the domain names at issue (factor I); the domain names do not contain any
name by which Gagner is known (factor II); Gagners use of the AWA marks in the sites
accessible under the offending domain names is entirely commercial and thus has no
noncommercial or fair use (factor IV); and there has been nothing offered to dispute that the
domain names and Gagners use of the AWA marks demonstrates an intent to lead consumers
searching for information regarding the AWA to Gagners website and that there is a likelihood
that such consumers would believe that the website is owned, sponsored, or affiliated with the
rightful owner of the AWA marks (factor V). See id. Additionally, the record is devoid of
12
evidence that would support a determination that Gagner did not have such a bad faith intent.
Therefore, the Court finds that there are no triable fact issues regarding Plaintiffs ACPA claim
and that Plaintiffs are entitled to summary judgment on that claim.
D. Civil Contempt
Finally, in their Motion for Summary Judgment, Plaintiffs maintain that Gagner should
also be held in contempt for his continued violations of [the 1990] permanent injunction
enjoining him from any use of the AWA [m]arks. Pls. Mem. in Supp. Mot. for Summ. J. at 14-
15. Given the considerable length of time since the injunction was put in place, the fact that no
formal motion for an order to show cause has been made, and the fact that the parties did not
address the contempt issue at oral argument, the Court believes that a finding of civil contempt is
not warranted at this time. Should Gagner fail to comply with this Order, Plaintiffs may renew
their request for a finding of contempt.
13
IV. CONCLUSION
Based upon the foregoing, and all the files, records, and proceedings herein, IT IS
HEREBY ORDERED that:
1. Plaintiffs Motion for Summary Judgment [Docket No. 59] is GRANTED;
2. Gagner and his partners, associates, agents, representatives, servants, employees,
successor and assigns, and all others acting in concert therewith or having knowledge thereof are
permanently prohibited and enjoined from infringing on any of the AWA marks or Plaintiffs
rights therein, including, but not limited to, in any way, using, exploiting, or trading on the AWA
marks or any derivations or colorable imitations thereof;
3. Gagner and his partners, associates, agents, representatives, servants, employees,
successor and assigns, and all others acting in concert therewith or having knowledge thereof are
permanently prohibited and enjoined from registering, using, owning, holding in any way, or
trafficking in the www.awastars.com and www.myspace.com/awastars domain names or any
other domain names that are identical or confusingly similar to the AWA marks;
4. Gagner shall forthwith advise all domain name registrars he has previously or
currently employed of this Order and instruct them to take all actions necessary to stop the
functioning of the domain names listed in paragraph 3 and shall instruct all such domain name
registrars to cooperate in the transfer of such domain names to Plaintiffs as specified in
paragraph 5 below;
5. Gagner shall transfer to Plaintiffs within three days the ownership of the domain
names listed in paragraph 3; and
6. Gagner shall, within ten days from the date of this Order, file a report with the Court
14
and provide a copy to Plaintiffs, setting forth the manner in which he has complied with the
terms of this Order.
BY THE COURT:
s/Ann D. Montgomery
ANN D. MONTGOMERY
U.S. DISTRICT JUDGE
Dated: October 21, 2008.
 

 
 
 

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