Estate of Ellington v. Gibson Piano Ventures, Inc. (S.D.Ind. 2005)

Full title: THE ESTATE OF MERCER K. ELLINGTON, Plaintiff, v. GIBSON PIANO VENTURES…

Court: United States District Court, S.D. Indiana, Indianapolis Division

Date published: Jun 24, 2005

No. 1:03-cv-0804-WTL-DFH (S.D. Ind. Jun. 24, 2005)

Opinion

No. 1:03-cv-0804-WTL-DFH.

June 24, 2005

ENTRY ON DEFENDANTS' MOTION FOR PARTIAL SUMMARY JUDGMENT AND PLAINTIFF'S MOTION FOR PARTIAL SUMMARY JUDGMENT

WILLIAM LAWRENCE, Magistrate Judge

Plaintiff, the Estate of Mercer K. Ellington ("Plaintiff"), brings this action against Gibson Piano Ventures, Inc., and Baldwin Piano, Inc. (collectively "Defendants").¹ Plaintiff claims that the Defendants' use of the mark "Ellington" for pianos is likely to cause confusion or mistake in violation of the Lanham Act. Further, Plaintiff claims that Defendants have diluted and tarnished the "Duke Ellington" mark in violation of the Lanham Act. Plaintiff also brings claims for unfair competition, conversion, and unjust enrichment against Defendants. Finally, Plaintiff claims that Defendants have used the "Ellington" mark in violation of the Indiana Right of Publicity Statute. For the reasons set forth below, the Court finds as follows:

1 According to Defendants, Gibson Guitar, Inc. purchased the assets of Baldwin Piano, Inc. out of bankruptcy in or around 2001. Baldwin Piano, Inc.'s assets were then transferred to Gibson Piano Ventures, Inc., a subsidiary of Gibson Guitar, Inc., whose name, at the time of transfer of assets was changed from "Gibson Piano Ventures, Inc." to "Baldwin Piano, Inc." As such, Gibson Piano Ventures, Inc. and Baldwin Piano, Inc. became one and the same entity, which is now known as "Baldwin Piano, Inc." (See Ex. F to Defs.' Mem. in Supp. of Mot.)

1. Defendants' Motion for Partial Summary Judgment is GRANTED IN PART and DENIED IN PART; and

2. Plaintiff's Motion for Partial Summary Judgment is DENIED.

II. Facts

Plaintiff owns four trademark registrations for the marks "Duke Ellington", "The Duke Ellington Orchestra", and "Duke Ellington (signature)", for entertainment services through the rendition of musical performances; and "Duke Ellington" for games, audio video recordings, books, clothing, playthings, and licensing services.² Aside from Mr. Ellington's signature, the earliest date of first use of any of the word marks "Duke Ellington" is 1974. (See Ex. A to Defs.' Mem. in Supp. of Mot.)

2 Plaintiff has provided a thorough background of the career of Duke Ellington in its Memorandum of Law in Support of Plaintiff's Motion for Partial Summary Judgment on pages 3-5. The Court need not repeat the history of Duke Ellington at this time.

Beginning in 1893, D.H. Baldwin sold a line of pianos under the mark "Ellington." The Ellington pianos were sold to families in search of an entry level piano during the piano boom years up until the 1930's. Defendants reintroduced the "Ellington" mark in the 1980's and again in September of 2002.³ The "Ellington" mark is traditionally displayed in a "vector art" style, accompanied by the tag line "Since 1983." The mark generally appears in this format on the pianos themselves and in the company's advertising. Plaintiff alleges that Defendants are wrongfully using the marks "Ellington (in special font)" and "Ellington" for pianos.⁴

3 Plaintiff contends that although there is some evidence of use of the "Ellington" mark in connection with pianos during the 1890 to 1930 period, there is little, if any, evidence of any use of the "Ellington" mark from 1931 through the mid-1980's. Plaintiff further contends that it is controverted that there was ever any use in the mid-1980's. This raises the issue of abandonment. However, the parties have not briefed and the Court will not decide the issue of abandonment at this time.

4 Any other pertinent facts shall be discussed throughout the opinion.

III. Summary Judgment Standard

Pursuant to Trial Rule 56(c), a party is entitled to summary judgment if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue of material fact and that the moving party is entitled to a judgment as a matter of law. Fed.R.Civ.P. 56(c). A fact is material if it is outcome determinative. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A fact is genuine where the evidence is such that a reasonable jury could return a verdict for the non-moving party. See id.

In determining whether a genuine issue exists, the court must view the record and all reasonable inferences in light most favorable to the non-moving party. See National Soffit Escutcheons, Inc. v. Superior Sys., Inc., 98 F.3d 262, 265 (7^th Cir. 1996). While the moving party bears the burden of demonstrating the absence of evidence on an essential element of the non-moving party's case, the non-moving party may not simply rest on the pleadings, but must affirmatively demonstrate by specific factual allegations that a genuine issue of material fact exists for trial. See Celotex Corp v. Catrett, 477 U.S. 317, 324 (1986). If the non-moving party fails to make a sufficient showing on an issue to which he has the burden of proof, the moving party is entitled to judgment as a matter of law. See Ripberger v. Western Ohio Pizza, Inc., 908 F. Supp. 614, 617 (S.D. Ind. 1995) (citing Celotex Corp., 477 U.S. at 323). "If, however, doubts remain as to the existence of a material fact, then those doubts should be resolved in favor of the non-moving party and summary judgment denied." Wolf v. City of Fitchburg, 870 F.2d 1327, 1330 (7^th Cir. 1989).

IV. Discussion

Count I and Count II of Plaintiff's Complaint Sections 1114 and 1125(a) of the Lanham Act

Defendants move for Summary Judgment on Plaintiff's Lanham Act claims, §§ 1114 and 1125(a), in Counts I and II in Plaintiff's Complaint. Although disputed questions of fact may prevent summary judgment in certain instances, the question of whether likelihood of confusion exists may be resolved on summary judgment "if the evidence is so one-sided that there can be no doubt about how the question should be answered." Door Sys., Inc. v. Pro-Line Door Sys., Inc., 83 F.3d 169, 171, 173 (7^th Cir. 1996) (affirming summary judgment for the defendant when there was "no reasonable likelihood that any significant number of consumers could mistake the defendant for the plaintiff").

In a trademark dispute, the moving party must establish "that 1) he has a protectable mark, and 2) that a `likelihood of confusion' exists between the marks or products of the parties."Meridian Mut. Ins. Co. v. Meridian Ins. Group, Inc., 128 F.3d 1111, 1115 (7<sup>th</sup> Cir. 1997).<sup>5</sup> In determining whether the use of the mark is likely to cause confusion among consumers, a court should consider the following seven factors: "(1) similarity between the marks in appearance and suggestion; (2) similarity of the products; (3) the area and manner of concurrent use; (4) the degree of care likely to be exercised by consumers; (5) the strength of the plaintiff's mark; (6) whether actual confusion exists, and (7) whether the defendant intended to `palm off' his product as that of the plaintiff." CAE, Inc. v. Clean Air Eng'g, Inc., 267 F.3d 660, 677-78 (7^th Cir. 2001). "No single factor is dispositive and courts may assign varying weights to each of the factors depending on the facts presented."Id. at 678. In many cases, however, the similarity of the marks factor, the actual confusion factor, and the intent factor are particularly important. See id.

1. Similarity Between Marks

5 Plaintiff contends that a dispute exists as to whether Defendants' predecessors-in-interest abandoned the "Ellington" mark through fifty years of non-use. Moreover, Plaintiff contends that an issue remains as to whether Defendants ever obtained any rights in the "Ellington" mark through its purchase of certain intellectual property assets. Nonetheless, Defendants maintain that they have not rested any of their arguments in their Motion on a prior rights argument. Any determination on Defendants' alleged abandonment of the mark, loss of "prior rights", and ownership of the mark is left for trial.

In comparing two marks for their similarity, the Court should not "focus on minor stylistic differences" when the public does not encounter the two together. Meridian Mut. Ins. Co., 128 F.3d at 1115. Nor should it compare the two side by side if consumers ordinarily do not make such comparisons. See id. Instead, the Court should make a comparison under conditions that are likely to appear in the market. See id. Rather than parsing words to detect theoretical distinctions, it ought to employ a common sense approach and view the mark as a consumer might. See Int'l Kennel Club of Chicago, Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1088 (7^th Cir. 1988). If a particular word or feature of the mark is the most salient part of the mark, special focus can be afforded to that part of the mark. See id. at 1087-88.

In this case, the Plaintiff's trademarks at issue are "Duke Ellington", "The Duke Ellington Orchestra", and "Duke Ellington (signature)" for entertainment services through the rendition of musical performances. Also at issue is the trademark "Duke Ellington" for games, audio video recordings, books, clothing, playthings, and licensing services.⁶ (See Ex. A to Defs.' Mem. in Supp. of Mot.) Plaintiff alleges that Defendants are wrongfully using the marks "Ellington (in special font)" and "Ellington" for pianos. (See Ex. B to Defs.' Mem. in Supp. of Mot.)

6 Plaintiff also claims common law rights to the name "Duke Ellington." The Court applies the same likelihood of confusion analysis to the common law rights counts.

In reviewing the marks of both Plaintiff and Defendants, the Court notes that none of Plaintiff's products display the word "Ellington" alone as a trademark. In fact, the only commonality between the two marks is the term "Ellington" and that one word is not displayed in the same way. The "Ellington" mark used on the pianos is generally displayed in a "vector art" style. (See Williams Dep., pg. 161.) Further, Defendants have used the mark "Ellington" as a single word mark on the soundboards of their pianos. (See id.) Additionally, the "Ellington" mark is generally accompanied by the phrase "Since 1893". (See Ex. 4 to Defs.' Mem. in Supp. of Mot.) In Defendants' advertising where "Ellington" is used in plain font, without the tag line, it is on the same page where the logo and tag line are also used. (See id.) In addition to the use of the tag line, Defendants have included text which further distinguishes the brand by telling the Baldwin story about the Ellington pianos. (See id.)

In arguing that the marks are similar, Plaintiff contends only that the most salient feature of "Duke Ellington" and the "Duke Ellington Orchestra" marks is "Ellington." (See Reavis Dep., pg. 142.) As Defendants point out, however, the only mark that Plaintiff uses in connection with its related products is the signature of Duke Ellington. The website advertising of the pens and watches which Plaintiff attached to its Response Brief show only the signature mark used on the products. (See Ex. R. to Pl.'s Resp. Br.) Plaintiff does not use the plain typed word marks on any of its licensed pens, watches or toy pianos, which Plaintiff claims are likely to be confused with Defendants' pianos. As Helen Reavis explained, the pens come in a box with Duke Ellington's signature mark on it and the back of the "Oris" watch has the Duke Ellington signature mark on it. (See Reavis Dep., pgs. 77-78.) With regard to the toy piano, no copies of the use of any mark were produced. For these reasons, the Court finds that the similarity of the marks factor tilts in favor of Defendants.

2. Similarity Between Products or Services

In assessing the similarity between the parties' products or services factor, the Court should not focus its attention solely on the similarity of the products and services offered by the parties. See CAE, Inc., 267 F.3d at 679. Consumer confusion may exist even if the parties offer "quite different" products or services or are not in direct competition. See d. The proper inquiry is "whether the public is likely to attribute the products and services to a single source." Id.

Of the products licensed by Plaintiff, none are musical instruments. However, Plaintiff argues that the products are related to music. Specifically, Plaintiff argues that the pens are related to musical instruments because they come in a box that looks like a piano keyboard. (See Reavis Dep., pgs. at 76-77.) Further, Plaintiff contends that the watch is related to musical instruments because the back of the watch has an engraved picture of Duke Ellington seated at the piano. (See id. at 77-78.) Defendants, however, contend that while the products may be arguably related to music because they all peripherally relate to the music world, they are not related to pianos as products. Further, they are not competitive of Defendants' pianos. Because of the distinct uses of the products, Defendants contend that there is no evidence of any customers of either party, actual or potential, who, in need of both a piano or watch, may become confused.

Courts, however, have also recognized that an important reason to protect trademark owners against the use of similar marks on closely related products is "to protect the owner's ability to enter product markets in which it does not now trade but into which it might reasonably be expected to expand in the future."Sands, Taylor Wood Co. v. Quaker Oats Co., 978 F.2d 947, 958 (7^th Cir. 1992). Upon this notion, Plaintiff contends that it wants to expand into directly competitive products and that its attempts to do so were aborted due to Defendants' Ellington piano.⁷ (See Roesler Dep., pgs. 47-50; Reavis Dep., pgs. 70-71.) In light of the above, this Court agrees with Plaintiff that the similarity of products factor tilts in its favor.

7 Defendants point out that Steinway began marketing its Duke Ellington centennial grand piano in 1999, before Defendant revived their Ellington brand in 2002. (See Dudek Decl.; Exs. 90 and 91 to Defs.' Mem. in Supp. of Mot.) However, Plaintiff never entered into an agreement with Steinway to do so. (See Dudek Decl.) Plaintiff maintains that it wants the opportunity to market a line of Ellington pianos with a piano manufacturer.

3. Area and Manner of Concurrent Use

The third factor in the likelihood of confusion analysis assesses "whether there is a relationship in use, promotion, distribution, or sales between the goods or services of the parties." CAE, Inc., 267 F.3d at 681 (quoting Forum Corp. of N. Am. v. Forum, Ltd., 903 F.2d 434, 442 (7^th Cir. 1990)). In this matter, the relevant "markets" for the majority of Plaintiff's licensed products are generally venues selling relatively low-priced items, such as t-shirts, postcards, calendars, CDs or other Duke Ellington memorabilia. (See Ex. 78 to Defs.' Mem. in Supp. of Mot.; Roesler Dep., pg. 99.) The other products licensed by Plaintiff that are relatively expensive are presumably not sold through piano dealers, but through pen, watch and toy dealers. The Ellington pianos, however, are sold through a dealer network. (See Williams Dep., pg. 115; Larry Fine, The Piano Book, p. 62, attach. as Ex. C to Defs.' Mem. in Supp. of Mot.) Also, the acquisition of pianos by the ultimate consumer involves negotiations and decisions over some period of time. (See The Piano Book, pg. 60.)

While Plaintiff admits that the Ellington pianos are sold through a dealer network, it contends that Defendants' products are now largely sold through internet liquidators and that these liquidators do not provide information related to the "Ellington history" further increasing the likelihood of confusion. (See Ex. L to Pl.'s Resp. Br.) Plaintiff adds that "[i]f a signature series DUKE ELLINGON or THE DUKE ELLINGON ORCHESTRA piano were to be introduced into the marketplace, there is no reason to think it would not also be marketed over the internet." (Pl.'s Resp. Br., pg. 8.) Plaintiff's speculation, however, is not enough to tilt this factor in its favor.

4. Degree of Care by Consumers

In determining the degree of care likely to be exercised by consumers, the Court must consider the potential consumers of both parties. See CAE, Inc., 267 F.3d at 682. The sophistication of potential consumers may be a relevant consideration when assessing the likely degree of care exercised by consumers. See id. at 683. Also, if the product is widely available and is inexpensive, the likelihood is increased that the consumers will not exercise much care in purchasing the product or service. See id.

Here, the products which Plaintiff claims are related to musical instruments and the Defendants' pianos are sold at a high price. Pianos are purchased infrequently and are expensive. (See The Piano Book, pg. 60.) Further, the pen in the keyboard case is "very expensive" and the watch is $1,495. (See Reavis Dep., pgs. 76-77.) These factors support a finding that a high degree of care is exercised by purchasers of each of the products.

Plaintiff argues, however, that the Ellington pianos are considered "entry level" and that the likely purchasers of an entry level type of piano are parents looking for a starter piano for their children. (See Williams Dep., pgs. 95-96.) Moreover, Plaintiff argues that the "relative cost and apparent widespread availability of the Defendants' pianos does not support Defendants motion." (Pl.'s Resp. Br., pg. 16.)

Aside from mere assertions, however, Plaintiff has offered no evidence that parents are unsophisticated buyers. Nor does Plaintiff dispute that consumers generally show a lot of care in making the infrequent purchase of an expensive item like a piano. For this reason, the Court finds that the degree of care by consumers factor tilts in favor of Defendants.

5. Strength of Mark

To assess the strength of a trademark, the court should inquire into the trademark's "distinctiveness, meaning its propensity to identify the products sold as emanating from a particular source." CAE, Inc., 267 F.3d at 684. While Defendants do not dispute that Duke Ellington is a famous figure, they argue that the strength of the trademarks "The Duke Ellington Orchestra", "Duke Ellington", or the signature of Duke Ellington, is another issue. According to Defendants, when Plaintiff has ventured into licensing the marks for pens, watches or toy pianos, the sales have been very low. (See Roessler Dep. pgs. 122-23; 125-27.)

Plaintiff, however, argues that its marks are incontestable under 15 U.S.C. § 1052(f), therefore, weighing in favor of finding strength of the Plaintiff's marks. The rebuttable presumption created under Section 1052, however, addresses only the "validity of the registered mark", not its strength. See 15 U.S.C. §§ 1057(b) and 1115.

Nonetheless, Plaintiff also argues that in addition to the above, Plaintiff has also presented this Court with credible evidence of secondary meaning. Specifically, Plaintiff contends that "(1) Plaintiff's Ellington marks have been in use since as early as 1923 (Ex. "J-3"); (2) licensing of the marks have generated millions of dollars in the United States (M. Roessler, Depo., Ex. "G", pp. 26-27, 55); and (3) registration of several federal trademarks that feature the Ellington marks. (H. Reavis Dec., Ex. "F")." (See Pl.'s Resp. Br., pg. 18.) The Court, however, cannot glean from Plaintiff's submission whether the "millions of dollars" Plaintiff claims to have generated comes from licenses for Duke Ellington's compositions and recordings. As Defendants correctly point out, Plaintiff has not made a claim in its Likelihood of Confusion Counts that there is any confusion likely between Duke Ellington compositions and the Ellington pianos. Therefore, this Court finds that this factor tips neither in favor of Plaintiff or Defendants.

6. Actual Confusion

Evidence of actual confusion is entitled to substantial weight in the likelihood of confusion analysis. See CAE, Inc., 267 F.3d at 686. One instance of actual confusion has been found by the Seventh Circuit to be adequate to find in favor of the plaintiff on the actual confusion factor. See id. However, the Seventh Circuit has also found in some cases that a showing of only a few instances of actual confusion is de minimis and is insufficient to tilt the actual confusion factor in the favor of the plaintiff. See Packman v. Chicago Tribune Co., 267 F.3d 628, 645 (7^th Cir. 2001). "Actual confusion can be shown by either direct evidence or by survey evidence." Rust Env't Infrastructure, Inc. v. Teunissen, 131 F.3d 1210, 1218 (7^th Cir. 1997).

In this case, Defendants contend that not only is there no evidence of actual confusion, but that Plaintiff has failed to offer a relevant consumer survey to attempt to demonstrate actual confusion. Plaintiff, however, contends that there are at least three identified instances of actual confusion. The first two, according to Plaintiff, lie with the examining attorneys for the United States Patent and Trademark Office (USPTO). According to Plaintiff, both concluded that there should exist a presumption of likelihood of confusion arising from Defendants' use of the "Ellington" mark. (See Ex. H to Pl.'s Resp. Br.) As pointed out by Defendants, however, the initial rejections by the USPTO's trademark examining attorneys are not evidence of a likelihood of confusion. See AH Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 220 (3^rd Cir. 2000) (finding that while an "initial PTO determination by an examining attorney may be considered, it need not be given weight when the PTO attorney did not review all the evidence available to the District Court."). Further, Plaintiff neglected to point out that the first examining attorney reviewed the submissions further, and then approved the Defendants' "Ellington" piano mark to proceed to publication by issuing a Notice of Publication.⁸ Therefore, Plaintiff's reference to the initial opinions of the trademark examiners is irrelevant.

8 Ms. Reavis admits in her deposition testimony that the USPTO Examining Attorney for the 420 Application did, in fact and to her knowledge, approve the "Ellington" mark for publication. (See Reavis Dep., pgs. 95, 109.)

The third instance of actual confusion, Plaintiff contends, lies with its expert. By Plaintiff's experts own admission, however, he did not perform a trademark or likelihood of confusion survey. (See Gelb Dep., pg. 58.) In fact, Mr. Gelb conceded that he did not know what Plaintiff's trademarks were. (See Gelb Dep., pg. 53.) Therefore, Plaintiff's expert does not aid Plaintiff in contending that there is evidence of actual confusion. This factor tilts in favor of Defendants.

7. Intent to Confuse Consumers

Whether or not the defendant intended there to be confusion between the defendant's product or service and the plaintiff's product or service is an important factor under the consumer confusion analysis. See CAE, Inc., 267 F.3d at 686 (indicating that a court should consider whether the defendant intended to "palm off" his goods as the plaintiff's goods and stating that intent is irrelevant if there is undisputed evidence that the defendant acted in good faith). Intent in the trademark infringement context "refers to the intent to confuse customers, not merely the intent to use a mark that is already in use somewhere else." Meridian Mut. Ins. Co., 128 F.3d at 1120. Mere similarity between two names does not indicate intent. See Barbecue Marx Inc. v. Ogden, Inc., 235 F.3d 1041, 1046 (7^th Cir. 2000).

Defendants contend that before reusing the name and filing for trademark protection in 2002, Defendants sought the opinion of trademark counsel, who performed a search and submitted an opinion of no conflict with any existing marks. (See Beavers Dep., pgs. 86-90.) According to Defendants, they reasonably relied upon such an opinion and no evidence of bad intent exists in this case. See Sands, Taylor Wood, 978 F.2d at 962 (7^th Cir. 1992) ("A party who acts in reasonable reliance on the advice of counsel regarding a close question of trademark law generally does not act in bad faith.")

Plaintiff, however, contends that Defendants' trademark counsel also advised Defendants that when he performed his internet search using the words "Ellington" and "piano" it produced "hundreds of hits." (See Ex. N to Pl.'s Resp. Br.)⁹ While the evidence that Plaintiff refers to does indicate that Defendants' trademark counsel found "hundreds of hits" referring to Duke Ellington, the evidence further demonstrates that Defendants' trademark counsel discussed the history of the "Ellington" mark with Lloyd Williams and formed the opinion that due to the historical use of the "Ellington" mark off and on without objection, it was unlikely that there would be any complaint made by Duke Ellington. (See id.) Further, he indicated that Duke Ellington had never been associated with the Ellington piano. (See id.) This suggests that there was no intention of using the Ellington name to "palm off" the Ellington piano as Plaintiff's goods.

9 Exhibit N to Plaintiff's Response Brief is filed under seal in accordance with the Protective Order in this case.

Secondly, Plaintiff claims that the credibility of Mr. Williams' testimony is disputed because despite the fact that the Ellington name was selected from a pool of twenty-five (25) to thirty (30) names, no consideration was given to the possibility that there would be confusion with Duke Ellington or that Defendants would get a "free ride" from the goodwill of Duke Ellington. (See Pl.'s Resp. Br., pg. 21; referring to Williams Dep., pgs. 72, 81-89.) Plaintiff's contentions, however, are not supported by the deposition testimony referenced above. In fact, the pages referred to by Plaintiff contain the testimony of Mr. Williams who explained the strength and weaknesses of the names considered. There is no evidence in this testimony that the Ellington name was chosen to get a "free ride" from the goodwill of Duke Ellington.

Finally, Plaintiff contends that Defendants' intent can be inferred from their alleged inequitable conduct before the trademark office. Plaintiff submits that Defendants provided false and misleading information to the USPTO in order to obtain a favorable reversal of the original office action. Specifically, Plaintiff states that Lloyd Williams told the USPTO, through his declaration, that the "Ellington" marks had been in use since 1893. (See Williams Dec.) However, in his deposition for this matter, Mr. Williams explained that the use was discontinued from the 1930's to the 1980's. (See Williams Dep., pgs. 52-53.) The Court assumes that Plaintiff is referring to the following portion of Mr. Williams' Declaration to support its argument:

The ELLINGTON brand was first used by the Ellington Piano Company in 1893. Production figures for the years 1895 through 1930 are shown on the attached Exhibit A which is a copy of page 110 of the 10^th edition of Pierce Piano Atlas, which is the recognized authority on such matters in the piano industry. Production of the ELLINGTON pianos continued throughout the decades under the control of Baldwin Piano Organ Company. Although exact records are not present, Exhibit B which is a copy of page 10 from the 10^th edition of Pierce Piano Atlas indicates that ELLINGTON brand pianos continued to be sold along with various other brands controlled by Baldwin Piano Organ Company. I know from my personal observation of company records that Baldwin Piano Organ Company was selling ELLINGTON brand pianos again in the early 1980's. Exhibit C is a copy of a product brochure used by Baldwin in the early 1980's.

(See Williams Dec.) While Plaintiff maintains that Defendants' intent can be inferred from the difference in Mr. Williams' Declaration and his deposition testimony, the Court notes that in his Declaration, Mr. Williams states "I know from my personal observation of company records that Baldwin Piano Organ Company was selling ELLINGTON brand pianos again in the early 1980's." (emphasis added.) This suggests that Mr. Williams deposition testimony and his Declaration are not at odds with one another.

After carefully considering Plaintiff's arguments, this Court concludes that Plaintiff has not produced evidence sufficient to show that Defendants intended to "palm off" their pianos as Plaintiff's goods. Therefore, this factor tilts in favor of Defendants.

8. Balancing of Consumer Confusion Factors

As previously stated, although the Seventh Circuit has recognized that the similarity of the marks, evidence of actual confusion, and the intent of the defendant are the three most important factors in the likelihood of confusion analysis, there is no hard and fast requirement that all three of these factors must weigh in the plaintiff's favor in order to find that a likelihood of confusion exists. In this case, however, not only do those three factors weigh in Defendants' favor, but so do most of the factors outlined above. Therefore, this Court must conclude that a likelihood of confusion does not exist as a matter of law. Defendants' Motion for Partial Summary Judgment as to Counts I and II of Plaintiff's Compliant is GRANTED.

Count III of Plaintiff's Complaint Dilution under § 1125(c) of the Lanham Act

Defendants have also moved for Summary Judgment on Plaintiff's Dilution claim found in Count III of Plaintiff's Complaint. The owner of a famous mark is entitled to injunctive relief against another person's commercial use of a mark or trade name if that use "causes dilution of the distinctive quality" of the famous mark. See 15 U.S.C. § 1125(c)(1). "This text unambiguously requires a showing of actual dilution, rather than a likelihood of dilution." Moseley v. Victoria Secret Catalogue, Inc., 537 U.S. 418, 433 (2003). "This conclusion is fortified by the definition of the term `dilution' itself." Id. The definition provides:

"The term `dilution' means the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of —

(1) competition between the owner of the famous mark and other parties, or

(2) likelihood of confusion, mistake, or deception."

15 U.S.C. § 1127. "The contrast between the initial reference to an actual `lessening of the capacity' of the mark, and the later reference to a `likelihood of confusion, mistake, or deception' in the second caveat confirms the conclusion that actual dilution must be established." Moseley, 537 U.S. at 433. This does not mean, however, "that the consequences of dilution, such as an actual loss of sales or profits, must also be proved."Id. ¹⁰

10 Defendants do not dispute that the "Duke Ellington" mark is famous.

Plaintiff maintains that it has submitted evidence of actual dilution to survive Summary Judgment. Specifically, Plaintiff contends that the expert report of Mark Roesler explains how, as a result of Defendants' use of the "Ellington" mark, Plaintiff has lost the ability to use its mark in connection with the "crown jewel" of the Duke Ellington intellectual property rights — the piano. (See Roesler Report, Ex. P. To Pl.'s Resp. Br.) Defendants, however, contend that Mr. Roesler's opinion of causation has been destroyed by the Steinway Duke Ellington piano. According to Defendant, the 1999 launch date of the Duke Ellington Steinway piano predates the 2002 revival of the Ellington piano by Defendants. Therefore, Defendants contend that Plaintiff cannot prevail on a claim that Defendants' use of the "Ellington" mark thwarted Plaintiff's negotiations with Steinway and other piano manufacturers, when Steinway had already launched the Duke Ellington centennial piano.

As previously noted in this opinion, Plaintiff did not enter into an agreement with Steinway for the Duke Ellington centennial piano. (See Dudek Decl.) Further, Plaintiff maintains that it desires to market a line of Duke Ellington pianos. This Court notes a distinction between marketing a line of Duke Ellington pianos and one piano produced for a specific reason. Further, this Court finds that Mr. Roesler's opinion is the "trial-type evidence" needed to determine whether there has been any lessening of the capacity of Plaintiff's mark to identify and distinguish goods or services. See Ty, Inc. v. Softbelly's Inc., 353 F.3d 528, 535 (7^th Cir. 2003). Therefore, this Court believes that the best course is to permit the Plaintiff the opportunity to present its Dilution claim to the jury. Defendants' Motion for Partial Summary Judgment on Plaintiff's Dilution claim contained in Count III of Plaintiff's Complaint is DENIED.

Count IV Tarnishment under § 1125(c) of the Lanham Act

Defendants have also moved for Summary Judgment on Plaintiff's Tarnishment claim contained in Count IV of Plaintiff's Complaint.

Tarnishment "generally arises when the plaintiff's trademark is linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context likely to evoke unflattering thoughts about the owner's product. In such situations, the trademark's reputation and commercial value might be diminished because the public will associate the lack of quality or the lack of prestige in the defendant's goods with the plaintiff's unrelated goods, or because the defendant's use reduces the trademark's reputation and standing in the eyes of consumers as a wholesome identifier of the owner's products or services."

Caterpillar, Inc. v. Walt Disney Co., 287 F. Supp. 2d 913, 921-22 (C.D. Ill. 2003) (quoting Deere and Co. v. MTD Prods., Inc., 41 F.3d 39, 43 (2d Cir. 1994)).

Plaintiff alleges that evidence exists within the record which indicates that Defendants' Ellington pianos are of shoddy quality. Specifically, Plaintiff states that "[t]hey are intended to be purchased by parents for their children" and that "[t]here were a number of reported defects in the pianos, including complaints that the finish was of poor quality or otherwise had a `bubbled' look." (Pl.'s Resp. Br., pg. 26; See Williams Dep., pg. 192.) As Defendants note, however, just because the Ellington pianos are "entry level" does not mean they are of shoddy or of low quality. Further, the deposition testimony of Mr. Williams, which Plaintiff references above, also stated that the Ellington pianos had a "good reputation" with piano dealers and consumers. (See Williams Dep., pg. 95.) While Plaintiff may not need to prove actual dilution in order to prevail on its tarnishment claim, See Caterpillar Inc., 287 F. Supp. 2d at 922. (noting the open question), the Court finds Plaintiff's arguments in regards to its tarnishment claim to be unpersuasive. Therefore, Defendants' Motion for Partial Summary Judgment on Plaintiff's Tarnishment claim contained in Count IV of Plaintiff's Complaint is GRANTED.

Count V Indiana Right of Publicity Statute

Plaintiff moves for Summary Judgment on Count V of its Complaint which alleges that Defendants have violated the Indiana Right of Publicity Statute (IROP). The IROP provides:

A person may not use an aspect of a personality's right of publicity for a commercial purpose during the personality's lifetime or for one hundred (100) years after the date of the personality's death without having obtained previous written consent from a person specified in section 17 of this chapter.

Ind. Code § 32-36-1-8. Indiana Code § 32-36-1-7 defines the term "right of publicity" as: a personality's property interest in the personality's: (1) name; (2) voice; (3) signature; (4) photograph; (5) image; (6) likeness; (7) distinctive appearance; (8) gestures; or (9) mechanisms. The Act defines "personality" as a living or deceased natural person whose: (1) name; (2) voice; (3) signature; (4) photograph; (5) image; (6) likeness; (7) distinctive appearance; (8) gesture; or (9) mannerisms; has commercial value, whether or not the person uses or authorizes the use of the person's rights of publicity for a commercial purpose during the person's lifetime. Ind. Code § 32-36-1-6. While there are no reported Indiana cases addressing this issue, the IROP, on its face, only addresses the "use" of an aspect of a personality's right of publicity. See Ind. Code § 32-36-1-8.

Plaintiff contends that more than a de minimus number of persons identify Duke Ellington with Defendants' use of the Ellington name for their pianos, thus rendering Defendants liable under the IROP. Defendants, however, argue that there is a disputed issue of material fact regarding whether Defendants use any aspect of the Plaintiff's asserted "Duke Ellington" right of publicity. Specifically, Defendants contend that they are not using the name "Duke Ellington" and that any claim made by Plaintiff that the name "Ellington" equates with the name "Duke Ellington" is a material fact in dispute. This Court agrees.

Further and for the sake of completeness, the Court acknowledges that both Plaintiff and Defendants spent a considerable amount of time in their Briefs outlining the surveys conducted by their experts. According to Plaintiff, Mr. Gelb questioned two hundred twenty-eight (228) consumers regarding the identity of the Ellington line of pianos with Duke Ellington. (See Ex. B to Pl.'s Mem. in Supp. of Mot.) After reviewing Defendants' Ellington piano advertisement, Plaintiff contends that one out of every five respondents identified Duke Ellington by name with the piano shown in Defendants' advertisement. This survey evidence, Plaintiff contends, is sufficient to establish the identifiability element as a matter of law.

Defendants, however, contend that the Gelb survey is seriously and fatally flawed, contradicted, and undeniably in dispute. Their expert, Dr. Steckel, found Gelb's survey to contain leading questions, which in his opinion, biased respondents' answers. (See Ex. K to Defs.' Resp. Br.) Further, Defendants contend that Steckel's own survey demonstrated that there was no meaningful or significant consumer identification of Duke Ellington and Baldwin's Ellington piano.

The differences of opinion for both sides demonstrates a genuine issue of material fact as to the issue of identifiability. Therefore, Plaintiff's Motion for Partial Summary Judgment as to Count V of its Complaint is DENIED.

Count VI Conversion

Defendants have also moved for Summary Judgment on Plaintiff's Conversion Claim found in Count VI of Plaintiff's Complaint. Plaintiff claims that Defendants "exerted unauthorized control over the property of another", citing Ind. Code § 35-43-4-3. (See Complaint ¶ 50.) Conversion, as a tort, consists either in the appropriation of the personal property of another to the party's own use and benefit, or in its destruction, or in exercising dominion over it, in exclusion and defiance of the rights of the owner or lawful possessor, or in withholding it from his possession, under a claim and title inconsistent with the owner's. Computers Unlimited, Inc. v. Midwest Data Sys., Inc., 657 N.E.2d 165, 171 (Ind.App. 1995).¹¹

According to Defendants, there is no evidence that any conduct by Defendants in displaying the "Ellington" mark excluded Plaintiff from possession of its property. Specifically, Defendants contend that the evidence shows to the contrary — that Plaintiff continued to possess and direct the use of its "Duke Ellington" marks. This Court agrees.

In its Response Brief, Plaintiff made no response to the fact that it has proffered no evidence or support for an essential element of a conversion claim: that Defendants have taken and appropriated Plaintiff's personal property for Defendants' own use and benefit, "in exclusion and defiance of the owner's rights." Shourek v. Sterling, 621 N.E.2d 1107, 1109 (Ind. 1993). Therefore, Defendants' Motion for Partial Summary Judgment on Plaintiff's Conversion Claim is GRANTED.

V. Conclusion

For the reasons stated above, this Court GRANTS Defendants' Motion for Partial Summary Judgment as to Plaintiffs' claims contained in Count I and Count II (§§ 1114 and 1125(a) of the Lanham Act), Count IV (Tarnishment under § 1125(c) of the Lanham Act), and Count VI (Conversion) of Plaintiff's Complaint. The Court DENIES Defendants' Motion for Partial Summary Judgment as it pertains to Count III (Dilution under § 1125(c) of the Lanham Act) of Plaintiff's Complaint. Further, the Court DENIES Plaintiff's Motion for Partial Summary Judgment as it pertains to Count V (Indiana Right of Publicity Statute) of its Complaint.

The Court will defer ruling on Plaintiff's unjust enrichment and unfair competition claims (found in Counts VII and VIII of Plaintiff's Complaint), and any other issues left unresolved by this Entry pending submission at the trial of this cause.