Ruling on Use of Athlete's Name

It's possible to win the war but lose the final battle. Although former Philadelphia Phillies pitcher Tyler Green prevailed in his lawsuit against a man who used his name for a sports-handicapping Web site, he has now lost his appeal demanding that the man be ordered to reimburse Green's legal fees. And for Green's lawyer, John P. Elliott, the decision from the U.S. Court of Appeals for the Third Circuit came with a one-two punch. Not only was Elliott denied a fee award, but he also got a stern finger-wagging from an appellate judge who complained that a letter he wrote to the defendant was 'particularly combative' and employed a 'most unwise tactic.' Green v. Fornario, 06-2649.

Legally, the decision may prove to be particularly important to intellectual-property lawyers because the appellate court announced a broad deference to lower courts in determining whether a Lanham Act case is so 'exceptional' that it justifies a fee award. 'We emphasize that the term 'exceptional' is not, as the plaintiff seems to suggest, a throwaway. Rather, it calls for a district court to determine whether it finds a defendant's conduct particularly culpable ' enough to alter the general American rule that parties to litigation pay their own attorneys' fees,' U.S. Circuit Judge Thomas L. Ambro wrote.

The Case

Green is a former pitcher for the Phillies, drafted in 1991 on the heels of a stellar college career at Wichita State University that included two College World Series appearances. But Green's career in the major leagues was a short one because he was plagued by injuries from the start. Since retiring from professional baseball, Green has worked as the pitching coach for the nationally acclaimed Germantown Academy varsity baseball team and regularly appears on local Philadelphia-area television and radio baseball programs.

In October 2003, Green's agent discovered that a local business was using
the name 'Tyler Green Sports.' The business was run by Greg Fornario, a former bartender at a Philadelphia-area sports bar who had decided in the late 1990s to start a sports-handicapping business. As Judge Ambro described it, 'handicappers are the stock analysts of the sports gambling world: They provide information to sports bettors.'

But while Fornario said he saw the business as an easy way to make money, he ultimately operated for only one day due to a mix-up with his 800-number. Sometime later, he began using the same business name for an entertainment promotion company. When Tyler Green's agent demanded that Fornario stop using his client's name, Fornario refused. Green was forced to sue when Fornario likewise ignored a cease-and-desist letter from Green's lawyer.

In his deposition, Fornario testified that he had never heard of a baseball player named Tyler Green and that his choice of the business name 'Tyler Green Sports' was dreamed up by pairing 'green,' the color of money, with his favorite rock star, Aerosmith lead singer Steven Tyler. Judge Ambro was downright skeptical of Fornario's explanation, but stopped short of rejecting it. 'While all of this is more than a mite shaky, it is Fornario's story, and he is sticking to it,' Ambro wrote.

The litigation ended quickly when Fornario signed a consent decree in which he agreed to stop using the name Tyler Green in trade. But when Green's lawyer filed a motion seeking a fee award, Senior U.S. District Judge Robert F. Kelly, of the United States District Court for the Eastern District of Pennsylvania, denied it, awarding only costs. On appeal, Green's counsel Elliott argued that Kelly erred because Fornario's conduct included not only his culpability in committing a knowing infringement, but also his bad-faith refusal to stop when Green demanded.

Third Circuit Ruling

But the Third Circuit found that the district judge's ruling that the case wasn't 'exceptional' was premised on his factual findings, none of which were clearly erroneous. The appeals court noted that Fornario had lived in the Philadelphia area for at least five years and had 'spent considerable time around sports as a fan, a bartender in a sports bar, and a nascent handicapper.' As a result, Judge Ambro said, 'he seems the sort of person who would know of a pitcher on the Phillies' team.' But to reject the lower-court's finding that Fornario wasn't aware of Green, the appellate court would have to discredit Fornario's testimony and find instead that Green 'was famous enough that Fornario could not but know of him.'

Green's fame, Ambro found, wasn't as strong as that. 'While Tyler Green was known regionally in his short career and his post-retirement work continues to garner some attention, we cannot conclude that the record evidence of his recognition means that Fornario must have known of him,' Ambro wrote. 'Because the district court's resolution of this disputed issue of fact was not clearly erroneous, we cannot disturb it notwithstanding our suspicions about Fornario's explanation for his trade name.'

Conduct of Counsel

However, the conduct of plaintiff's counsel Elliott was another matter. In a lengthy footnote, Judge Ambro criticized Elliott for the tone and content of his cease-and-desist letter, saying its threat of possible criminal prosecution raised ethical questions. 'While cease-and-desist letters are understandably neither warm nor friendly, we cannot help but note that Green's were particularly combative,' Ambro wrote. Ambro noted that Elliott's February 2004 letter warned Fornario that he would be referred 'to the appropriate criminal authorities.' 'This is curious,' Ambro said in the footnote, 'as the Lanham Act is a purely civil statute. There is a parallel criminal counterfeiting statute, but to be 'counterfeit' a mark must be similar to a registered trademark.'

Although Green's complaint about the misuse of his name was a 'serious tort,' Ambro stated, 'we see nothing in this record that approaches criminal conduct, nor do we see any evidence that Green's counsel followed up (or had any intention of following up) on this threat.'

In an interview, Elliott said that Ambro misunderstood his letter. The mention of criminal issues, he said, related not to the Lanham Act, but to Pennsylvania's identity-theft statute, a law that would apply to Fornario's conduct. Elliott said he regretted that the Third Circuit didn't hold an oral argument in the case 'because we could have cleared that up if we knew the judge had that question.'

Shannon P. Duffy is U.S. Courthouse correspondent for The Legal Intelligencer, a sibling publication of Entertainment Law & Finance.

It's possible to win the war but lose the final battle. Although former Philadelphia Phillies pitcher Tyler Green prevailed in his lawsuit against a man who used his name for a sports-handicapping Web site, he has now lost his appeal demanding that the man be ordered to reimburse Green's legal fees. And for Green's lawyer, John P. Elliott, the decision from the U.S. Court of Appeals for the Third Circuit came with a one-two punch. Not only was Elliott denied a fee award, but he also got a stern finger-wagging from an appellate judge who complained that a letter he wrote to the defendant was 'particularly combative' and employed a 'most unwise tactic.' Green v. Fornario, 06-2649.

Legally, the decision may prove to be particularly important to intellectual-property lawyers because the appellate court announced a broad deference to lower courts in determining whether a Lanham Act case is so 'exceptional' that it justifies a fee award. 'We emphasize that the term 'exceptional' is not, as the plaintiff seems to suggest, a throwaway. Rather, it calls for a district court to determine whether it finds a defendant's conduct particularly culpable ' enough to alter the general American rule that parties to litigation pay their own attorneys' fees,' U.S. Circuit Judge Thomas L. Ambro wrote.

The Case

Green is a former pitcher for the Phillies, drafted in 1991 on the heels of a stellar college career at Wichita State University that included two College World Series appearances. But Green's career in the major leagues was a short one because he was plagued by injuries from the start. Since retiring from professional baseball, Green has worked as the pitching coach for the nationally acclaimed Germantown Academy varsity baseball team and regularly appears on local Philadelphia-area television and radio baseball programs.

In October 2003, Green's agent discovered that a local business was using
the name 'Tyler Green Sports.' The business was run by Greg Fornario, a former bartender at a Philadelphia-area sports bar who had decided in the late 1990s to start a sports-handicapping business. As Judge Ambro described it, 'handicappers are the stock analysts of the sports gambling world: They provide information to sports bettors.'

But while Fornario said he saw the business as an easy way to make money, he ultimately operated for only one day due to a mix-up with his 800-number. Sometime later, he began using the same business name for an entertainment promotion company. When Tyler Green's agent demanded that Fornario stop using his client's name, Fornario refused. Green was forced to sue when Fornario likewise ignored a cease-and-desist letter from Green's lawyer.

In his deposition, Fornario testified that he had never heard of a baseball player named Tyler Green and that his choice of the business name 'Tyler Green Sports' was dreamed up by pairing 'green,' the color of money, with his favorite rock star, Aerosmith lead singer Steven Tyler. Judge Ambro was downright skeptical of Fornario's explanation, but stopped short of rejecting it. 'While all of this is more than a mite shaky, it is Fornario's story, and he is sticking to it,' Ambro wrote.

The litigation ended quickly when Fornario signed a consent decree in which he agreed to stop using the name Tyler Green in trade. But when Green's lawyer filed a motion seeking a fee award, Senior U.S. District Judge Robert F. Kelly, of the United States District Court for the Eastern District of Pennsylvania, denied it, awarding only costs. On appeal, Green's counsel Elliott argued that Kelly erred because Fornario's conduct included not only his culpability in committing a knowing infringement, but also his bad-faith refusal to stop when Green demanded.

Third Circuit Ruling

But the Third Circuit found that the district judge's ruling that the case wasn't 'exceptional' was premised on his factual findings, none of which were clearly erroneous. The appeals court noted that Fornario had lived in the Philadelphia area for at least five years and had 'spent considerable time around sports as a fan, a bartender in a sports bar, and a nascent handicapper.' As a result, Judge Ambro said, 'he seems the sort of person who would know of a pitcher on the Phillies' team.' But to reject the lower-court's finding that Fornario wasn't aware of Green, the appellate court would have to discredit Fornario's testimony and find instead that Green 'was famous enough that Fornario could not but know of him.'

Green's fame, Ambro found, wasn't as strong as that. 'While Tyler Green was known regionally in his short career and his post-retirement work continues to garner some attention, we cannot conclude that the record evidence of his recognition means that Fornario must have known of him,' Ambro wrote. 'Because the district court's resolution of this disputed issue of fact was not clearly erroneous, we cannot disturb it notwithstanding our suspicions about Fornario's explanation for his trade name.'

Conduct of Counsel

However, the conduct of plaintiff's counsel Elliott was another matter. In a lengthy footnote, Judge Ambro criticized Elliott for the tone and content of his cease-and-desist letter, saying its threat of possible criminal prosecution raised ethical questions. 'While cease-and-desist letters are understandably neither warm nor friendly, we cannot help but note that Green's were particularly combative,' Ambro wrote. Ambro noted that Elliott's February 2004 letter warned Fornario that he would be referred 'to the appropriate criminal authorities.' 'This is curious,' Ambro said in the footnote, 'as the Lanham Act is a purely civil statute. There is a parallel criminal counterfeiting statute, but to be 'counterfeit' a mark must be similar to a registered trademark.'

Although Green's complaint about the misuse of his name was a 'serious tort,' Ambro stated, 'we see nothing in this record that approaches criminal conduct, nor do we see any evidence that Green's counsel followed up (or had any intention of following up) on this threat.'

In an interview, Elliott said that Ambro misunderstood his letter. The mention of criminal issues, he said, related not to the Lanham Act, but to Pennsylvania's identity-theft statute, a law that would apply to Fornario's conduct. Elliott said he regretted that the Third Circuit didn't hold an oral argument in the case 'because we could have cleared that up if we knew the judge had that question.'

Shannon P. Duffy is U.S. Courthouse correspondent for The Legal Intelligencer, a sibling publication of Entertainment Law & Finance.