1

I held a bench trial on September 14, 2005 during which Gittens, Woodruff and And 1’s corporate

designee testified. I specifically find credible Gittens’s testimony, whose demeanor on the stand was

far from a headache.

1

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF PENNSYLVANIA

THE BASKETBALL MARKETING : CIVIL ACTION

COMPANY, INC. d/b/a AND 1, :

BMC PLAYERS, INC. :

:

v. : NO. 04-1733

:

FX DIGITAL MEDIA, INC., :

COLUMBUS WOODRUFF, and :

TIM GITTENS a/k/a HEADACHE :

MEMORANDUM AND ORDER

Juan R. Sánchez, J. March 10, 2006 

Basketball Marketing Company Inc., known as And 1, asks this Court to find the promoters

of a rival street ball tour and Tim Gittens, a player known as Headache, infringed the company’s

trademarks. Default has been entered against defendants FX Digital Media Inc. (FX) and Columbus

Woodruff. Because I find Gittens’s contract with And 1 required him to wear And 1 branded items

and allowed him to play for other tours, I will grant judgment in favor of Gittens.

FINDINGS OF FACT

1

And 1 manufactures, sells and distributes street basketball related merchandise, including

footwear, apparel and accessories, bearing the And 1 name, logos and trademarks. (Trial Tr. 131,

Sept. 14, 2005.) Since 2000, And 1 has organized, sponsored and promoted the Mix Tape Tour, a

series of street basketball games featuring professional street basketball players. (Tr. 126-27.) In

2003, the And 1 Mix Tape Tour played to more than 150,000 people in thirty American cities. (Tr.

Case 2:04-cv-01733-JS Document 39 Filed 03/10/06 Page 1 of 18
2The August 1, 2001 agreement was testified to, but was not offered as evidence.

2

127.) And 1 distributes and sells DVDs and videos from its Mix Tape Tour, which is also the basis

of the series on ESPN television, “Streetball, The And 1 Mix Tape Tour.” ( Tr. 126-27.) And 1’s

target audience for its Mix Tape Tour is pre-teen to adult basketball players. (Tr. 131-32.) And 1

owns seven trademarks including the And 1 logo, the name And 1, and the words “Mix Tape” in

block lettering, although none of these trademarks are classified as for the promotion, sale, arranging

or production of basketball games or tournaments. (Tr. 125, 128-29.) 

Gittens is a professional street basketball player, formerly with the And 1 Mix Tape Tour.

Endorsement Agreements between Gittens and And 1, dated August 1, 2001,2 February 1, 2002 and

November 22, 2002, required Gittens to “use reasonable efforts to wear and use exclusively And 1

Products throughout the term of this Agreement while participating or attending all athletic activities,

including but not limited to, any occasion during which he wears athletic apparel and/or poses for

photographs.” (Tr. 109-10; Ex. P-19, ¶ 11.) Gittens was allowed, under the agreements, to

participate in basketball games and related events sponsored by companies other than And 1. (Ex.

P-19, ¶ 9; Ex. D-2, ¶ 8.) Under the agreements, Gittens was obligated to notify And 1 if any third

party asked him to use the And 1 name or logos. (Tr. 138.) The February 1, 2002 endorsement

agreement states: 

Under no circumstances may Player [Gittens] allow a third-party, other than And 1,

to use the And 1 name or logos to promote a basketball game or tournament. Should

a third-party contact Player and ask him to use the And 1 name or logos for such a

use, Player [Gittens] shall immediately notify And 1.

(Ex. P-19, ¶ 10.) The November 22, 2002 Endorsement Agreement contains the same language and

adds a clause relieving Gittens of responsibility for any third party’s use of the And 1 trademarks.

Case 2:04-cv-01733-JS Document 39 Filed 03/10/06 Page 2 of 18
3

(Ex.D-2, ¶ 9.)

 Woodruff, through his company, FX, sponsored the eight Streetball Legends basketball

games from November, 2000 through December, 2002 which are at issue. (Tr. 22.) These games

were similar to the games on the And 1 Mix Tape Tour and held in cities the Mix Tape Tour did not

visit. (Tr. 89.) And 1 never gave Woodruff or FX permission to use its name and/or marks for these

games. (Tr. 65.) The target audience for FX’s Streetball Legends games was high school to adult

players and fans. (Tr. 104.) Gittens played in six of the eight Streetball Legends games. (Tr. 25,

26, 36, 42, 50, 60, 101.)

The first game was in Cleveland, Ohio in November, 2000, organized with the help of Mark

Edwards, a sometime marketing consultant to And 1, who Woodruff thought was an employee of

And 1 at the time. (Tr. 21-22.) Edwards promoted the games and arranged for and paid the players

for the first few games organized by Woodruff and FX. The second game took place in Toledo,

Ohio and was marketed as “featuring players from the And 1 Mix Tape” on flyers and radio

advertisements marketing the game. (Tr. 26.) This game was attended by Chris Hightower, an

And 1 employee, who told Woodruff he could not call his games “And 1 Games,” but otherwise

complimented Woodruff on the event. (Tr. 86-87.) After the third game, which took place in

Detroit in January of 2001, FX and Woodruff stopped working with Mark Edwards. For the

remaining five games, Gittens arranged for and paid basketball players for the Streetball Legends

games. (Tr. 42-43.) 

Woodruff testified he asked Gittens to provide the players “because he was different from

the rest of the guys, . . . he didn’t go out and party, he didn’t go out and drink[.] . . . He was more of

a homebody, so he kind of gravitate to myself and my wife, who didn’t do those things either.” (Tr.

Case 2:04-cv-01733-JS Document 39 Filed 03/10/06 Page 3 of 18
4

91.) Woodruff said the players looked at Headache (Gittens) as a leader. (Tr. 91.) Gittens procured

street ball players such as Half Man/Half Amazing, Main Event, Shane the Dribbling Machine, High

Octane, Stick With It and Hot Sauce for the Legends tour, shepherded them onto planes, to hotel

rooms and paid them for playing with gate receipts provided by Woodruff. (Tr. 42, 91, 93, 99.)

FX and Woodruff marketed the Streetball Legends games with flyers and radio

advertisements. All of these flyers stated Streetball Legends “featured players from the And 1 Mix

Tapes.” (Tr. 26; Exs. P-10, P-14, P-15.) The reverse side of the flyers used to advertise the Detroit

game in January 2001 states: “You have seen the And 1 mixtapes, bangin [sic] commercials and

videos now come see them live in person. The Hottest Street Basketball Team Ever!!!” (Ex. P-18.)

The reverse side of the flyers used to advertise the Indianapolis and Bahamas events state: “You have

seen the mixtapes, banging commercials and videos and now come see them live in person. The

Hottest Street Basketball Team Ever!!!” (Exs. P-14, P-15.) 

Gittens provided FX with an image of himself for T-shirts sold at the Cincinnati game and

used on flyers used to advertise the games. (Tr. 42.) All of the players handed out the flyers on the

day of the games they played in. (Tr. 93, 116.) Gittens handed out flyers advertising the games in

Cincinnati, Cleveland, Indianapolis and the Bahamas. (Tr. 93.) Gittens did not assist Woodruff and

FX in designing or printing the flyers, applying for permits, hiring any of the facilities or selling

tickets for any of the Streetball Legends games. Gittens did not show any of the FX flyers

advertising the Streetball Legends games to And 1, or notify And 1 of any of FX’s use of the And 1

trademarks and logos in promoting the Streetball Legends games. (Tr. 139.) 

While under contract with And 1, Gittens designed an autograph card featuring a picture of

himself wearing official And 1 apparel. Gittens printed 15,000 to 20,000 of the cards to provide

Case 2:04-cv-01733-JS Document 39 Filed 03/10/06 Page 4 of 18
3Section 1125 of the Lanham Act provides: 

Any person who, on or in connection with any goods or services, or any container for

goods, uses in commerce any word, term, name, symbol, or device, or any

combination thereof, or any false designation of origin, false or misleading

description of fact, or false or misdealing representation of fact which- (A) is likely

to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection,

or association of such person with another person, or as to the origin, sponsorship,

or approval of his or her goods, services, or commercial activities by another person,

or (B) in commercial advertising, or promotion, misrepresents the nature,

characteristics, qualities, or geographic origin of his or her or another person’s goods,

services, or commercial activities, shall be liable in a civil action by any person who

believes that he or she is likely to be damaged by such act. 

15 U.S.C. § 1125(a)(1). 

Section 1114 of the Lanham Act provides: 

Any person who shall, without the consent of the registrant...use in commerce any

reproduction, counterfeit, copy, or colorable imitation of a registered mark in

connection with the sale, offering for sale, distribution, or advertising of ant goods

or services on or in connection with which such use is likely to cause confusion, or

to cause mistake, or to deceive . . . shall be liable in a civil action by the registrant[.]

15 U.S.C. § 1114(1)(a).

5

autographs to children, to promote himself, his company, his website and his basketball camp. (Tr.

144, 121-22.) And 1 knew of Gittens’s use of the autograph cards. (Tr. 118.) Gittens handed out

these autograph cards both at Streetball Legends events and official And 1 events. (Tr. 113.) 

DISCUSSION

And 1 claims Woodruff and FX engaged in trademark infringement and false advertising

under the Lanham Act3 and makes a claim of contributory infringement against Gittens. And 1 also

claims unfair competition and unfair trade practices, intentional interference with existing and

prospective contractual relations, and unjust enrichment against defendants Woodruff, FX and

Gittens, and breach of contract against Gittens. Default has been entered against Woodruff and FX

for failing to respond, leaving only the issue as to FX and Woodruff the amount of damages,

Case 2:04-cv-01733-JS Document 39 Filed 03/10/06 Page 5 of 18
6

attorney’s fees and costs, pursuant to 15 U.S.C. § 1117. The Court must only decide And 1’s claims

against Gittens.

To prove a Lanham Act violation, And 1 must demonstrate “(1) it has a valid and legally

protectable mark; (2) it owns the mark; and (3) the defendant’s use of the mark to identify goods or

services causes a likelihood of confusion.” A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc.,

237 F.3d 198, 210 (3d Cir. 2000).

 If a plaintiff can show “the mark at issue is federally registered and has become

incontestable, then validity, legal protectability, and ownership are proved.” Commerce Nat’l Ins.

Servs. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 438 (3d Cir. 2000) (citing Ford Motor Co. v.

Summit Motor Prods., Inc., 930 F.2d 277, 292 (3d Cir. 1991). To be incontestable under 15 U.S.C.

§ 1065, a mark must be registered with the U.S. Patent and Trademark Office (PTO) and in

continuous use for five years subsequent to registration without challenge. Id. at 438 n.4 (citing 15

U.S.C. §§ 1058, 1065; Fisons Horticulture, Inc. v. Vigoro Indus., F.3d 466, 472 n.7 (3d Cir. 1994)).

If not incontestable, a mark’s “validity depends on proof of secondary meaning, unless the

unregistered or contestable mark is inherently distinctive.” Id. at 438. A mark is inherently

distinctive if it may be “fairly characterized as arbitrary, fanciful or suggestive.” Id. at 438 n.5. A

mark has secondary meaning when it is “interpreted by the consuming public to be not only an

identification of the product or services, but also a representation of the origin of those products or

services.” Id. The Third Circuit follows the degree of imagination test which divides marks into

four classifications – generic, descriptive, suggestive, and arbitrary or fanciful – to determine

whether a mark is protectable as a trademark. A & H Sportswear, 237 F.3d at 221. Arbitrary or

fanciful marks are those using terms that do not describe or suggest anything about the product, and

Case 2:04-cv-01733-JS Document 39 Filed 03/10/06 Page 6 of 18
7

“bear no logical or suggestive relation to the actual characteristics of the goods.” Id. (quoting A.J.

Canfield Co. v. Honickman, 808 F.2d 291, 296 (3d Cir. 1986)). Suggestive marks require consumers

to use “imagination, thought or perception” to determine what the product is. Honickman, 808 F.2d

at 296.

Plaintiffs have seven trademarks registered with the PTO for the phrase And 1, their logo

which features the phrase And 1 and a figure playing basketball, and the phrase “Mix Tape.” Only

one of these trademarks, the phrase And 1, had been registered for the requisite five years at the

times of infringement to be incontestable under the statute. As to the other marks, And 1 had to

show either the marks are inherently distinctive, or they have acquired a secondary meaning.

Registration gives trademarks a presumption of validity and distinction. 15 U.S.C. § 1115(a);

Ciba-Geigy Corp. v. Bolar Pharm. Co. Inc., 747 F.2d 844, 852 (3d Cir. 1984). A plaintiff is entitled

to “a strong prima facie presumption that its registered mark is either not ‘merely descriptive’ or if

descriptive, that secondary meaning is presumed, which amounts to the same thing.” 2 MCCARTHY

ON TRADEMARKS AND UNFAIR COMPETITION, 4th ed. § 11:43, cited in A & H Sportswear Co. v.

Victoria's Secret Stores, Inc., 167 F. Supp. 2d 770, 776 (E.D. Pa. 2001); see also FM 103.1, Inc. v.

Universal Broad. of N. Y., Inc., 929 F. Supp. 187, 194 (D.N.J. 1996) (reasoning registration of a

service mark creates a presumption the mark is not generic).

And 1 does not need to rely only on the presumption from registration because “Mix Tape”

has acquired a secondary meaning. A secondary meaning is acquired when in the minds of the

public the primary significance of a mark is to identify its source. See Qualitex Co. v. Jacobson

Prods. Co., 514 U.S. 159, 163 (1995). The Mix Tape Tour, Mix Tape videos and DVDs, and

television show on ESPN identify the phrase “Mix Tape” with And 1. The use of the phrase “mix

Case 2:04-cv-01733-JS Document 39 Filed 03/10/06 Page 7 of 18
8

tape” by FX and Woodruff in the flyers advertising their Streetball Legends games, caused the public

to identify the Streetball Legends games with the And 1 Mix Tape Tour. Gittens has not rebutted

the presumption of secondary meaning.

Once validity, legal protectability and ownership of a mark have been established, the crux

of an infringement claim lies in the third prong: the defendant’s use of the mark to identify goods

or services causes a “likelihood of confusion.” A & H Sportswear, 237 F.3d at 210. And 1 must

show that the defendants created a likelihood of confusion between And 1’s clothing and video

products and FX’s live Streetball Legends games. Because defendants Woodruff and FX defaulted,

the only issue is whether defendant Gittens’s use of And 1’s marks created a likelihood of confusion.

A likelihood of confusion exists when “consumers viewing the mark would probably assume

that the product or service it represents is associated with the source of a different product or service

identified by a similar mark.” A & H Sportswear, 237 F.3d at 211. The Third Circuit has identified

ten factors to determine whether there is a likelihood of confusion between marks used on either

competing or non-competing goods:

(1) the degree of similarity between the owner’s mark and the alleged infringing

mark;

(2) the strength of the owner’s mark;

(3) the price of the goods and other factors indicative of the care and attention

expected of consumers when making a purchase;

(4) the length of time the defendant has used the mark without evidence of actual

confusion arising;

(5) the intent of the defendant in adopting the mark; 

(6) the evidence of actual confusion

(7) whether the goods, though not competing, are marketed through the same

channels of trade and advertiser through the same media;

(8) the extent to which the targets of the parties’ sales efforts are the same;

(9) the relationship of the goods in the minds of consumers because of the similarity

of function;

(10) other facts suggesting that the consuming public might expect the prior owner

Case 2:04-cv-01733-JS Document 39 Filed 03/10/06 Page 8 of 18
4And 1 alleges Gittens used their marks by procuring players for games promoted by FX, Woodruff

and/or Mark Edwards, handing out promotional flyers for the games and by using his autograph

cards. And 1 has introduced no evidence that Gittens used And 1’s marks in any way in arranging

for players to play in the Streetball Legends games. 

9

to manufacture a product in the defendant’s market or that he is likely to expand into

that market. 

A&H, 237 F.3d at 215 (citing Interpace Corp. v. Lapp Inc., 721 F.2d 460, 463 (3d Cir. 1983), and

applying the Lapp factors to competing as well as non-competing goods). No factor is

determinative; each is weighed separately and balanced against the others. Checkpoint Sys. v. Check

Point Software Techs. Inc., 269 F.3d 270, 280 (3d Cir. 2001). 

When I weigh the Lapp factors, I find Gittens’s use of the marks did not create a likelihood

of confusion because Gittens was entitled to use the And 1 logo on his autograph card, on his

uniform and on a basketball he is holding in the photograph.4 Only the first, fourth, eighth and ninth

factors apply to Gittens. Under the first Lapp factor the similarity of the marks does not determine

the likelihood of confusion, as the use of the And 1 marks was not a misuse by Gittens. The marks

used on the Streetball Legends promotional flyers, the phrases “mix tape” and And 1, and the And 1

logo, are identical to And 1’s marks. Gittens did not design or create the flyers; thus, the first factor

does not weigh heavily in favor of a finding of a likelihood of confusion arising from Gittens’s use

of And 1’s marks. 

The fourth Lapp factor asks how long the defendant used the mark. Defendants FX and

Woodruff used the And 1 marks for two years during which Gittens distributed promotional flyers

for the Streetball Legends games on, at the most, four occasions. Gittens used his autograph card

for about a year without any evidence of actual confusion at both official And 1 and Streetball

Legends games to promote himself, not the Streetball Legends games.

Case 2:04-cv-01733-JS Document 39 Filed 03/10/06 Page 9 of 18
5

 Because I have determined Gittens’s use of the And 1marks did not create a likelihood of confusion

in the minds of consumers, it is not necessary to consider Gittens’s fair use defense. 

10

Because the parties targeted the same consumers, the eighth factor, market overlap, creates

“a stronger likelihood of confusion.” Checkpoint Sys., 269 F.3d at 289. Gittens targeted a smaller

group of these same consumers with his autograph cards, but his use was permissive, not a misuse.

The ninth Lapp factor is the relationship of the goods bearing the marks. Gittens argues

And 1’s marks are registered only for their clothing and athletic products which are not related in

the minds of consumers to the Streetball Legends live basketball games. Even though the trademarks

are not classified as for live basketball events, the popularity of the And 1 Mix Tape Tour games

increases the likelihood of confusion of the two street ball tours. The likelihood of confusion did

not arise from defendant Gittens’s use of And 1’s marks but from the marketing of the Streetball

Legends tour.

Balancing the Lapp factors, I conclude Gittens’s use of And 1’s marks did not lead to a

likelihood of confusion on the part of consumers because he did not create or promote the use of the

marks in the flyers.5 Gittens’s use of the And 1 marks on his autograph cards was required by his

contract and so could not infringe. By default, FX and Woodruff infringed And 1’s marks.

And 1 argues Gittens is jointly and severally liable for FX and Woodruff’s infringement.

Principles of joint and several liability apply to claims brought under the Lanham Act. Interstate

Battery Sys. of Am. Inc. v. Wright, 811 F. Supp. 237, 244 n.5 (N.D. Tex. 1993) (citing SmithKline

Beckman Corp. v. Pennex Prods. Co., 103 F.R.D. 539, 540 (E.D. Pa. 1984)). Defendants are jointly

responsible where they “act together in committing the wrong” or where their separate acts “unite

in causing a single injury.” Allen Organ Co. v. Galanti Organ Builders Inc., 798 F. Supp. 1162,

Case 2:04-cv-01733-JS Document 39 Filed 03/10/06 Page 10 of 18
11

1171 (E.D. Pa. 1992), aff’d, 995 F.2d 215 (3d Cir. 1993). To impose joint and several liability for

contributory infringement, And 1 must prove that Gittens’s actions “[r]ise to a level of substantial

assistance” to FX and Woodruff. Id. Substantial assistance is shown if the defendant encouraged

the actual infringement, assisted in the preparation of the alleged infringement, or was the sole

source of the alleged infringing materials. Id. at 1171-72. 

Gittens did not plan any of the Streetball Legends basketball games with Woodruff or FX.

Nor did he do anything more to promote the games than any other player. While Gittens did provide

a photograph of himself to Woodruff and FX which was used on some of the flyers promoting the

games, he did not design the flyers. The And 1 logo is partially visible in the photograph provided

by Gittens, however, under the terms of his contract with And 1, Gittens was encouraged by And 1

to be seen wearing And 1 basketball gear, even when not appearing in And 1 events. 

Gittens did help Woodruff by making arrangements with the players for five of the Streetball

Legends games. This does not, however, rise to the “level of substantial assistance” on the part of

Gittens. And 1 has not shown that Gittens was the sole source, or any source at all of the alleged

infringing materials. Joint and several liability is not imposed. 

The Lanham Act does not limit liability to the direct infringer. Transdermal Products, Inc.

v. Performance Contract Packaging, Inc., 943 F. Supp. 551, 552-53 (E.D. Pa. 1996) (quoting

Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982)). And 1 argues even if the facts do

not support a direct infringement claim against Gittens, he is contributorily responsible. To establish

contributory infringement, And 1 must show supply of a product and knowledge of direct

Case 2:04-cv-01733-JS Document 39 Filed 03/10/06 Page 11 of 18
6The concept of contributory infringement is most commonly applied in a manufacturing setting,

where the manufacturer facilitates a distributor in counterfeiting or otherwise passing off its goods

as the goods of another. Some courts have allowed the expansion of contributory infringement to

areas outside of direct manufacturing, in cases where the defendants promoted and facilitated the

infringement of a mark, but were not directly involved in the sale of a product or service. AT&T v.

Winback & Conserve Program, Inc., 42 F.3d 1421, 1432 (3d Cir. 1994); Fonovisa, Inc. v. Cherry

Auction, Inc., 76 F.3d 259, 264-65 (9th Cir. 1996). 

12

infringement.

6

 AT&T v. Winback & Conserve Program, Inc., 42 F.3d 1421, 1432 (3d Cir. 1994).

Gittens did not promote or facilitate the infringement of And 1’s marks. And 1 has not provided any

evidence Gittens knew FX and Woodruff were infringing And 1’s marks.

To assert a claim for false advertising under the Lanham Act, And 1 must prove defendants’

commercial message is either literally false or tends to deceive consumers. Novartis Consumer

Health, Inc. v. Johnson & Johnson-Merck Consumer Pharms. Co., 290 F.3d 578, 586 (3d Cir. 2002).

If the plaintiff proves literal falsity there is no need to show that the buying public was misled.

Johnson & Johnson v. Rhone-Poulenc, 19 F.3d 125, 129-30 (3d Cir. 1994). If there is no actual

falsity, the plaintiff must prove “there is actual deception or at least a tendency to deceive a

substantial portion of the intended audience.” Santana Prods. v. Bobrick Washroom Equip., Inc.,

401 F.3d 123, 136 (3d Cir. 2005). 

And 1 brought no evidence any message presented by Gittens was actually false. Gittens did

not create or present the flyers used by FX to promote their Streetball Legends games. His mere

assistance in distributing the flyers does not amount to his presenting the message contained in them.

And 1 cannot succeed with a false advertising claim against Gittens based on FX’s promotional

flyers for the Streetball Legends games. The message contained in Gittens’s autograph card was not

actually false. In using a picture of himself in his And 1 uniform, Gittens was conforming to the

terms of his contract, by sending the true message that he was an And 1 player. And 1 presented no

Case 2:04-cv-01733-JS Document 39 Filed 03/10/06 Page 12 of 18
13

evidence Gittens intended to, or actually did deceive anyone with his autograph card. Gittens’s using

a photograph of himself in his And 1 uniform shows only an intent to conform to his contract by

appearing in photographs in And 1 products. And 1 has failed to establish a claim for false

advertising against Gittens. 

And 1 claims both common law and statutory unfair competition under Pennsylvania law.

The elements for a common law cause of action for unfair competition are the same as the elements

of trademark infringement under the Lanham Act when the allegedly misleading conduct is

undertaken by a competitor. Serbin v. Ziebart Int’l. Corp., 11 F.3d 1163, 1175, 1179 (3d Cir. 1993);

Louis Vuitton Malletier & Oakley, Inc. v. Veit, 211 F. Supp. 2d 567, 580 (E.D. Pa. 2002). And 1 has

failed to establish the elements of trademark infringement under the Lanham Act against Gittens;

thus, And 1 has also failed to establish the elements of an unfair competition claim under

Pennsylvania common law. Only purchasers of goods or services may bring a cause of action under

the state’s statutory unfair competition law. 73 P.S. § 201-1 et seq. And 1 introduced no evidence

to show it purchased Streetball Legends tickets or merchandise from Gittens. And 1 cannot establish

a cause of action under Pennsylvania’s statutory unfair competition law. 

And 1’s state law claim the defendants intentionally interfered with existing and prospective

contractual relations with third parties fails because And 1 offered no evidence of any contract with

any third party. Adler, Barish, Daniels, Levin & Creskoff v. Epstein, 393 A.2d 1175, 1183 (Pa. 1978)

(quoting Restatement Second of Torts § 766). Lack of evidence also precludes And 1’s claim for

tortious interference with prospective contractual relations. Strictland v.Univ. of Scranton, 700 A.2d

979, 985 (Pa. Super. 1997). 

To establish a cause of action for unjust enrichment, And 1 must prove (1) “benefits

Case 2:04-cv-01733-JS Document 39 Filed 03/10/06 Page 13 of 18
14

conferred on defendant by plaintiff,” (2) “appreciation of such benefits by defendant,” and (3)

“acceptance and retention of such benefits under such circumstances that it would be inequitable for

defendant to retain the benefit without payment of value.” Styer v. Hugo, 619 A.2d 347, 350 (Pa.

Super. Ct. 1993), aff’d 637 A.2d 276 (Pa. 1994). The doctrine of unjust enrichment does not apply

where the defendant may have simply benefitted as a result of actions by the plaintiff; the enrichment

must be unjust. Id. And 1 has not shown that Gittens was unjustly enriched to And 1’s detriment.

Gittens earned the pay he received by performing in basketball games and making arrangements for

other players to perform in basketball games. This enrichment was not conferred upon Gittens by

And 1, but by the other defendants in this action. Because And 1 has failed to prove any of the

elements necessary to recover for unjust enrichment, it is denied. 

To establish breach of contract under Pennsylvania law, And 1 must show three elements:

“(1) the existence of a contract, including its essential terms, (2) a breach of duty imposed by the

contract, and (3) resultant damages.” Williams v. Nationwide Mut. Ins., Co., 750 A.2d 881, 884 (Pa.

Super. Ct. 2000). The court will enforce the terms of a contract when its plain language clearly

explains the parties’ rights. Glenn Distribs. Corp. v. Carlisle Plastics, Inc., 297 F.3d 294, 300 (3d

Cir. 2002). 

And 1 asserts Gittens had a duty under the Endorsement Agreements to inform And 1 of any

third party usage of And 1’s trademarks. The plain language of the Endorsement Agreements does

not support And 1’s argument. Under the agreements, Gittens was only obligated to notify And 1

if any third party asked him to use the And 1 name or logos, and the November 22, 2002

Endorsement Agreement relieves Gittens of responsibility for any third-party infringement. And 1

has not shown any evidence that anyone asked Gittens to use any of And 1’s trademarks. The

Case 2:04-cv-01733-JS Document 39 Filed 03/10/06 Page 14 of 18
7

15 U.S.C. § 1117(a) Profits; damages and costs; attorney fees

When a violation of any right of the registrant of a mark registered in the Patent and

Trademark Office, a violation under section 1125(a) or (d) of this title, or a willful

violation under section 1125(c) of this title, shall have been established in any civil

action arising under this chapter, the plaintiff shall be entitled, subject to the

provisions of sections 1111 and 1114 of this title, and subject to the principles of

equity, to recover (1) defendant's profits, (2) any damages sustained by the plaintiff,

and (3) the costs of the action. The court shall assess such profits and damages or

cause the same to be assessed under its direction. In assessing profits the plaintiff

shall be required to prove defendant's sales only; defendant must prove all elements

of cost or deduction claimed. In assessing damages the court may enter judgment,

according to the circumstances of the case, for any sum above the amount found as

actual damages, not exceeding three times such amount. If the court shall find that

the amount of the recovery based on profits is either inadequate or excessive the

court may in its discretion enter judgment for such sum as the court shall find to be

just, according to the circumstances of the case. Such sum in either of the above

circumstances shall constitute compensation and not a penalty. The court in

exceptional cases may award reasonable attorney fees to the prevailing party.

15

Endorsement Agreements permitted Gittens to participate in basketball games and related events

sponsored by companies other than And 1, and required Gittens to wear And 1’s clothing in public.

Any use of And 1’s marks by Gittens was not at the request of FX, Woodruff, or anyone other than

And 1 and, thus, in accord with Gittens’s duties under the Endorsement Agreement with And 1.

The Lanham Act entitles a successful plaintiff to recover “(1) defendant’s profits, (2) any

damages sustained by the plaintiff, and (3) the costs of the action. . . . The court in exceptional cases

may award reasonable attorney’s fees to the prevailing party.” 15 U.S. C. § 1117(a).

7

 Woodruff and

FX have defaulted, leaving only the issue of the amount of damages, attorney’s fees and costs.

And 1 is seeking defendant’s revenues and attorney’s fees. In the present matter, And 1 claims the

revenues of FX and Woodruff from six games: Cleveland Tri C, $21,000; Toledo, $25,000; Detroit,

$35,000; Cincinnati, $20,625; Cleveland State, $20,400; and, Indianapolis, $35,000. And 1 does not

Case 2:04-cv-01733-JS Document 39 Filed 03/10/06 Page 15 of 18
16

include the revenues from the Bahamas Events in its claim for damages. The total revenue And 1

claims is $157,025. Even though And 1 fulfilled its burden under section 1117(a) to prove

revenues, the section allows the court “in its discretion [to] enter judgment for such sum as the court

shall find to be just, according to the circumstances of the case.” 15 U.S.C. § 1117(a). Woodruff

believed he had And 1’s permission to stage the Streetball Legends tour and Woodruff testified

credibly his profits after expenses were minimal, ranging from nothing to an estimate of $4,000 for

the Indianapolis game. For those reasons, I will award no profits to And 1. 

And 1 also claims $33,459.08 in legal fees and $1,923.78 in costs. The Third Circuit has

interpreted exceptional circumstances to include culpable conduct on the part of the losing party,

such as bad faith, fraud, malice or knowing infringement. Ferrero U.S.A., Inc. v. Ozak Trading, Inc.,

952 F.2d 44, 47 (3d Cir. 1991). There is no evidence of bad faith, fraud, malice or even knowing

infringement on the part of Woodruff and FX. Woodruff stated he thought And 1 knew of their use

of the And 1 name and he contacted Mark Edwards because he thought Edwards was an employee

of And 1. An award of attorney’s fees to And 1 is not appropriate. 

In exceptional circumstances, a defendant is also entitled to attorney fees when he is the

prevailing party. 15 U.S.C. § 1117 (a); SecuraComm Consulting, Inc. v. Securacom Inc., 224 F.3d

273, 282 (3d Cir. 2000) (holding the Lanham Act permits a district court to find a case exceptional

based on a party’s culpable conduct other than willful infringement). Gittens states And 1’s claims

against him were brought in retaliation for the complaint Gittens filed against And 1 and the

Basketball Marketing Company for breach of contract. And 1 and the Basketball Marketing

Company knew at the time Gittens was playing for FX and did not sue any other player in the games.

And 1 brought this case against Gittens thirty-six days after Gittens brought his breach of contract

Case 2:04-cv-01733-JS Document 39 Filed 03/10/06 Page 16 of 18
17

claim against Basketball Marketing. An award of attorney’s fees to defendant Gittens is warranted

as the prevailing party. 

An appropriate order follows.

Case 2:04-cv-01733-JS Document 39 Filed 03/10/06 Page 17 of 18
IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF PENNSYLVANIA

THE BASKETBALL MARKETING : CIVIL ACTION

COMPANY, INC. d/b/a AND 1, :

BMC PLAYERS, INC. :

:

v. : NO. 04-1733

:

FX DIGITAL MEDIA, INC., :

COLUMBUS WOODRUFF, and :

TIM GITTENS a/k/a HEADACHE :

ORDER

And now, this 10th day of March, 2006, judgment is entered in favor of Defendant Tim

Gittens and against the Basketball Marketing Company, Inc., d/b/a And 1and BMC Players, Inc.

Attorney fees and costs are awarded to Defendant Tim Gittens and against the Basketball Marketing

Company, Inc., d/b/a And 1and BMC Players, Inc. pursuant to 15 U.S.C. § 1117(a). Judgment only,

without damages or attorney fees, is entered in favor of Plaintiff Basketball Marketing Company,

Inc., d/b/a And 1and BMC Players, Inc. and against Defaulting Defendants FX Digital Media Inc.

and Columbus Woodruff. Defendant Tim Gittens’s Motion to Strike (Document 34) is DENIED.

 \s\ Juan R.Sánchez 

Juan R. Sánchez, J.

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