Instrumentalist Co. v. Marine Corps League

509 F. Supp. 323, 31 Fed. R. Serv. 2d 584, 210 U.S.P.Q. (BNA) 841, 1981 U.S. Dist. LEXIS 10787
CourtDistrict Court, N.D. Illinois
DecidedFebruary 6, 1981
Docket80 C 5195
StatusPublished
Cited by37 cases

This text of 509 F. Supp. 323 (Instrumentalist Co. v. Marine Corps League) is published on Counsel Stack Legal Research, covering District Court, N.D. Illinois primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Instrumentalist Co. v. Marine Corps League, 509 F. Supp. 323, 31 Fed. R. Serv. 2d 584, 210 U.S.P.Q. (BNA) 841, 1981 U.S. Dist. LEXIS 10787 (N.D. Ill. 1981).

Opinion

MEMORANDUM OPINION AND ORDER

SHADUR, District Judge.

Plaintiff The Instrumentalist Co. (“Instrumentalist”) filed this action against defendants Marine Corps League (“League”) and United States Marines Youth Foundation, Inc. (“Youth Foundation”), alleging that defendants have infringed Instrumentalist’s registered mark “JOHN PHILIP SOUSA,” 1 violated Section 43 of the Lanham Act and committed acts of common law mark infringement and unfair competition in conjunction with their sponsoring of the “Semper Fidelis” award for high school band musicians. Instrumentalist has moved for a preliminary injunction to enjoin defendants from using (1) the Sousa name in a prominent fashion and (2) any representation of Sousa 2 in connection with the Semper Fidelis (or any) band award.

On January 14-16, 1981 this Court conducted a hearing on Instrumentalist’s motion. For the reasons stated in this memorandum opinion and order, Instrumentalist’s motion for a preliminary injunction is granted.

Facts 3

Instrumentalist is an Illinois corporation that publishes “The Instrumentalist,” a national music magazine devoted exclusively to school band and orchestra directors and to teachers of instrumental music. Since 1955 it has made available to high schools the “John Philip Sousa Band Award” (the *326 “Sousa Award”) for outstanding achievement in band music.

Over the years Instrumentalist has been careful to maintain strict “quality control” over the Sousa Award. Because the Award is intended to recognize the single outstanding graduating senior band member in each participating high school, Instrumentalist has refused to sell more than one Award to any one high school in any year, except in rare instances where a band director has certified that a tie has occurred and two Awards were appropriate that year. At each high school’s election, the Sousa Award to the outstanding senior takes the form of one or more of a certificate with the name and picture of Sousa prominently displayed, a lapel pin and a marble desk piece (each of the latter two featuring a medallion relief of Sousa). As indicated in footnote 1, Instrumentalist also sells to each participating high school a wall plaque bearing Sousa’s name and likeness.

Instrumentalist originally received authorization from Sousa’s children in 1954 to initiate the Award. It has grown in importance and distribution over the past 25 years to an annual distribution to some 6000 high schools (aggregate Sousa Awards in the past eight years have come to 45-50,-000, with perhaps twice that number having been awarded over the entire 25-year period).

No efforts were made to obtain federal registration of any mark until 1966, when the secretary to Instrumentalist’s President (the same person, a non-lawyer, who handled run-of-the-mill copyright filings for Instrumentalist) applied for trademark registration of the depiction of Sousa. In response the Patent Office wrote (PI. Ex. 10):

On the basis of the record, registration is refused on the ground that the picture of John Philip Sousa constitutes merely the subject matter of the goods. Thus considered, it is not believed the picture functions as a trademark as defined in Section 45 of the 1946 Trademark Act.....
If desired, the services of a competent trademark attorney may be employed. In view of the subject matter presented, however, it is not believed that registration of the mark will ensue.

Instrumentalist did not pursue the matter further at that time.

In 1973, when James Rohner succeeded his father as Instrumentalist’s President, he directed the same counsel who have represented Instrumentalist in this action to file for federal registration. That application related to the Sousa name and was originally characterized as a servicemark application. In response to Patent and Trademark Office Actions, the application was amended to seek a trademark and to reflect a statement of goods “awards in the nature of plaques,” and Registration 1,045,937 was then issued.

League is a United States corporation and Youth Foundation a Virginia non-profit corporation, both of whom work closely with the United States Marine Corps. Retired Marine Corps Major General Walter Churchill, now Chairman of the Board of a supermarket chain in Toledo, is National Commandant of the League, an organization founded to preserve the traditions and promote the interests of the Marine Corps, to provide a link between present and former Marines and to promote better citizenship among its members. As director of the League’s youth activities, General Churchill developed and promoted several of its programs, including the band award that ultimately gave rise to this litigation. In 1967 General Churchill initiated the Youth Foundation, funded by individual and corporate contributions, which also seeks to foster comparable purposes, focusing primarily on youth activities.

Since 1967 League and Youth Foundation have been issuing a Distinguished Musician Award in cooperation with the National Band Association (“NBA”) to outstanding high school band musicians. In January 1980 defendants decided to follow a suggestion General Churchill had urged for several years by changing the name of their award to the “John Philip Sousa Award for Musical Excellence.” They had no prior knowledge of Instrumentalist or its Sousa Award *327 and thus no intention to infringe on'anyone’s claimed rights.

Instrumentalist learned of defendants’ plans when one of the band directors who had participated in the Sousa Award for many years learned of the change in defendants’ award and called to ask Instrumentalist whether it was giving up its Sousa Award. Instrumentalist immediately objected to the proposed renaming, asserting that it would constitute a violation of Instrumentalist’s mark.

At that time defendants had already prepared a mock-up of its new award certificate, but as General Churchill testified he recognized that Instrumentalist “had every right to complain about a John Philip Sousa Award.” 4 Accordingly, after conferring with the Marine Corps and with the Navy Patent Counsel, the mock-up was changed by substituting “Semper Fidelis” for the Sousa name on the newly-designed certificate, retaining the large multi-color likeness of Sousa on the front and the Sousa name and biography on the back. “Semper Fidel-is” was of course chosen as the new name both because it was the name of one of Sousa’s most famous marches and because “Semper Fidelis” is the Marine Corps motto.

As so modified, what is now defendants’ “Semper Fidelis Award” is a certificate on which a colored picture of Sousa, covering nearly one quarter of the certificate’s surface, is prominently displayed — indeed dominates the award visually. 5 Sousa’s name appears in small type at the base of the picture. On the reverse side are “JOHN PHILIP SOUSA (1854-1932)” printed in large letters at the top and the biographical sketch focusing on Sousa’s association with the Marine Band.

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509 F. Supp. 323, 31 Fed. R. Serv. 2d 584, 210 U.S.P.Q. (BNA) 841, 1981 U.S. Dist. LEXIS 10787, Counsel Stack Legal Research, https://law.counselstack.com/opinion/instrumentalist-co-v-marine-corps-league-ilnd-1981.