Welsh v. The Big Ten Conference, Inc., (Case. No 08 C 1342, ND Illinois 11/21/08)
Perhaps an easy lay-up to a seasoned trademark professional, this case presents some interesting facts surrounding confidentiality agreements, ideas, and trademarks. In the case, Welsh, a supporter of Big Ten Athletics approached the Big Ten Conference (“Big Ten”) with a business plan that included an idea for a “Big Ten Network,” a cable station that would provide coverage of Big Ten athletic events, including commentary, talk shows, and game broadcasts. Big Ten reviewed the materials, pursuant to a confidentiality agreement, and subsequently determined to punt on the business relationship with Welsh.
Many years alter, Big Ten created the Big Ten Network, which included a number of ideas from those set forth in Welsh’s business plan. Welch sued for violation of Section 38 of the Lanham Act, and sued under the Illinois Trade Secrets Act, and for breach of contract. Big Ten moved to dismiss the complaint, citing Keane v. Fox Television Stations, Inc., 297 F.Supp. 2d 921 (S.D. Tex 2004), which held that an idea for a television show (“American Idol”) cannot be protected under trademark law.
In his pleadings, the Plaintiff argued that while he had not yet made use of the mark BIG TEN NETWORK; and neither had he filed an application for the mark, his BIG TEN NEWORK was protected under trade secret law. The court disagreed and sided with Big Ten.
The court found that Plaintiff had made an overly broad reading of the Lanham Act and found that Welsh could not assert a trademark right in his idea for a name of or content of BIG TEN NETWORK. Moreover, citing a nearly 100 year old Supreme Court case, United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918), the district court found that “use” of a trademark is not made when it is presented as a idea, and not alongside a product or services as a distinguishing mark.
The court finally noted that misappropriation of trade secrets, which is a state claim, and, without a federal Lanham Act cause of action, the state claims were dismissed for lack of subject matter jurisdiction.
Practice Note: Notwithstanding what trade secret claims a plaintiff may have in the above fact pattern, clients should proceed carefully in third party solicitations of business relationships. Most importantly, it has no ownership rights in any catchy trademarks and phrases, particularly those that embody a third party’s existing trademark.