continues to use marks owned by the licensor after termination of the license.” Bunn-O-Matic
Corp. v. Bunn Coffee Serv., Inc., 88 F.Supp.2d 914, 922 (C.D. Ill. 2000); see also Burger King
Corp. v. Mason, 710 F.2d 1480, 1492 (11th Cir, 1983); United States Jaycees v. Philadelphia
Jaycees, 639 F.2d 134, 143 Grd Cir. 1981). Here, it is undisputed that DW continues to
manufacture, advertise and sell in interstate commerce products bearing trademarks that are
identical to the WURLITZER Registered Trademarks. Having established both elements that it
needs to prevail on its trademark infringement and unfair competition claims, Baldwin is
accordingly entitled to partial summary judgment on Counts I and II.

DW’s only objection to this motion pertains to Baldwin’s draft injunction. DW argues
that any order prohibiting it from using any “colorable imitation” of the WURLITZER
Registered Trademarks would be inconsistent with its independent right to continue using its
corporate name As background, the License Agreement was part of a larger transaction
involving the sale of DW by Baldwin’s alleged predecessor to Nelson Tobacco. That sale was
implemented through a “Purchase and Sale Agreement,” to which the License Agreement was an
exhibit. Paragraph 6(A) of the Purchase and Sale Agreement provides that “(njothing in this
Agreement or in the Trademark License Agreement shall prevent the Company hereafter from
using its present corporate name.” That provision simply means that DW can continue to refer to
itself as “Deutsche Wurlitzer GmbH,” but it does not permit DW to use the WURLITZER

Registered Trademarks, or “cglorable imitations” thereof, on goods or services in commerce after

2 Baldwin agrees with DW that provision “e” of the draft injunction prohibiting DW
from “unfairly competing with Baldwin in any manner” is not appropriate at this point because
Baldwin’s present motion is limited to partial summary judgment with regard to its federally
registered marks. Accordingly, I have deleted this provision from the injunction entered.

4



Sales, U.S.A., Inc. v. Profile Cocktail Lounge, Inc., No. 99 C 5377, 2001 WL 123787, at *2 nl
(N.D. Ill. Feb. 13, 2001). To establish a prima facie case of either, Baldwin must “show that it
owns valid registered trademarks and the defendant[’s] use of these trademarks is ‘likely to cause
confusion, or cause mistake, or to deceive.’” Jd. (citations omitted).

In this case, Baldwin’s federal registrations of the WURLITZER Registered Trademarks
are prima facie evidence of: (1) Baldwin’s ownership of the marks; (2) the validity of the marks;
and (3) Baldwin’s exclusive right to use the marks in commerce. 15 U.S.C. § 1115(a); see also
Promatek Indus., Ltd. y, Equitrac Corp., 300 F.3d 808, 812 (7th Cir. 2002) (federal registration
“is prima facie evidence of the mark’s validity”). Accordingly, Baldwin has made a prima facie
showing that it owns valid registered trademarks.

DW’s continued use of the WURLITZER Registered Trademarks is also likely to cause
confusion that its products are authorized or sponsored by or otherwise affiliated with the
trademark owner, Baldwin. Ordinarily, in assessing the likelihood of consumer confusion, I look
to seven factors that bear on this determination.' However, the analysis becomes truncated when
a terminated licensee continues to use its licensor’s trademarks:

In sum the law is simple. If, as a matter of contract law, a service mark or trademark

license has ended, the licensee has no right to continue use of the mark. Any such use is

without the trademark’s licensor’s consent and constitutes infringement.
4 J. Thomas McCarthy, McCARTHY ON TRADEMARKS AND UNFAIR COMPETITION

§ 25:31. Stated differently, “[t]he likelihood of confusion exists as a matter of law if a licensee

' The seven factors are: (1) the similarity between the marks in appearance and
suggestion, (2) the similarity of the products, (3) the area and manner of concurrent use of the
products, (4) the degree of care likely to be exercised by consumers, (5) the strength of the
plaintiff's marks, (6) any evidence of actual confusion, and (7) the defendant’s intent to palm off
its goods as those of the plaintiff. See Promatek Indus., Ltd., 300 F.3d at 812,

3



termination of the License Agreement. Indeed, DW’s insistence that any injunction be
circumscribed by the Lanham Act’s express provisions confirms the propriety of the draft
injunction’s language. 15 U.S.C. § 1114(1) expressly prohibits the “use in commerce [of] any . .
. colorable imitation of a registered mark in connection with the sale, offering for sale,
distribution or advertising of any goods or services.”

In sum, Baldwin has suffered irreparable harm, for which it has no adequate remedy at
{aw, as a result of DW’s continuing use of the trademarks. Furthermore, unless DW is enjoined,
Baldwin will continue to suffer such harm. Accordingly, in conjunction with this decision
granting summary judgment, [ will enter an injunction prohibiting such continued use, but will
refrain from doing so until a discussion of issues pertaining to the injunction bond at the

February 10, 2004 status hearing for this case.

For the reasons above, Baldwin’s Motion for Partial Summary Judgment on Counts I and
Il is GRANTED.

ENTER:

Nan B Cal

B. Zagel ay
Oni ed States Di: fudge
DATE: 7 Fe ial


Minute Order Form (06/97)

United States District Court, Northern District of Illinois

Name of Assigned Judge
or Magistrate Judge

Sitting Judge if Other

James B. Zagel
eB than Assigned Judge

CASE NUMBER 03 C 2105 DATE 2/9/2004
CASE BALDWIN PIANO, INC. vs. WURLITZER, ET AL
TITLE

[In the following box (a) indicate the party filing the motion, e.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
of the motion being presented.]

(1)

MOTION:

DOCKET ENTRY:

(1) Qa Filed motion of [ use listing in “Motion” box above.]

(2) oO Brief in support of motion due

G3) a Answer brief to motion due . Reply to answer brief due___.

(4) Q Ruling/Hearingon___set for___at

(5) a Status hearing[held/continued to] (set for/re-set for] on setfor att

(6) Oo Pretrial conference[held/continued to) [set for/re-set for] on setfor_ at.

(7) o Trialfset for/re-set for}on_ at.

(8) 0 [Bencl/Jury trial] [Hearing] held/continued to at

(9) (ta) This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]
COFRCP4(m) Local Rule 41.1 OOPRCP41(a)(1) [1 FRCP41(a)(2).

ao) {Other docket entry] Plaintiff's motion for partial summary judgment on Counts I and ILis granted.

Enter Memorandum Opinion and Order.

[For further detail see order attached to the original minute order.]

No notices required,

No notices required, advised in open court,

“Document
vigeumber

number of notices

Notices mailed by judge’s staff.
Notified counse! by telephone.
Docketing to mail notices.
Mail AO 450 form.

Copy to judge/magistrate judge

courtroom
deputy’s
initials

DW

AYAO9 |

central Clerk's Office

Date/time received in

FEB i 7 2004

FER i Z none?

date mailed notion

mailing deputy initials



ts

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
BALDWIN PIANO, INC.,
Plaintiff,
v. No. 03 C 2105
Judge James B. Zagel
DEUTSCHE WURLITZER GMBH d/b/a
WURLITZER JUKEBOX COMPANY,

Defendant.

MEMORANDUM OPINION AND ORDER

Plaintiff Baldwin Piano, Inc. is a Delaware corporation with its principal place of
business located in Nashville, Tennessee. Defendant Duetsche Wurlitzer GmbH (“DW”) is a
limited liability company organized under the laws of the Federal Republic of Germany that did
business as the Wurlitzer JukeBox Company, but that currently does business as Wurlitzer USA.
Wurlitzer USA is the United States distributor for DW and is located in Gurnee, Illinois.

For many years, DW had manufactured, advertised, marketed and sold various products _

bearing various federally registered trademarks (the “WURLITZER Registered Trade; ks) “

X\

Ky

. . got
pursuant to a 1985 License Agreement. Paragraph 6 of the Agreement provided that: eB at 1
Licensee undertakes that it will not at any time do or cause to be done any act or thing,
directly or indirectly, contesting or in any way impairing or tending to impair any part of
Licensor’s right, title, or interest in the Trademark. :
Paragraph 6 also provides that DW’s “permitted use of the Trademark . . . shall inure to the
benefit of Licensor, and be deemed use by the Licensor for purposes of registering, maintaining,

and defending the Trademark.” Pursuant to paragraph 11 of the Agreement, DW agreed that

upon termination:



it will immediately cease and desist from all use of the Trademark on the Goods and will

deliver up to Licensor or its duly authorized representatives, without charge, all material

and papers upon which the Trademark appears. Licensee furthermore agrees that it will
not adopt or use, whether during the term of this Agreement, its extension, or after
termination of the Agreement, any word or symbol which is identical or similar to the

Trademark without the Licensor’s prior written consent.

Baldwin is now the current owner of the WURLITZER Registered Trademarks. Ina
March 24, 2003 letter, Baldwin notified DW that Baldwin was terminating the License
Agreement effective immediately. Since this termination, DW has continued to manufacture,
advertise, market, offer for sale, sell and/or distribute, in interstate commerce to consumers and
other third parties, products bearing the WURLITZER Registered Trademarks, including, but not
limited to jukeboxes, speakers, t-shirts, jackets, clocks, and hats. DW also continues to host a
website that advertises products bearing the trademarks,

Based upon these facts, Baldwin moves for partial summary judgment on its Lanham Act
claims for injunctive relief pleaded in Counts I and II of its Complaint. Summary judgment is
proper when “there is no genuine issue as to any material fact and . . . the moving party is entitled
to judgment as a matter of law.” Fed.R.Civ.P. 56(c). A genuine issue of fact “exists only when a
reasonable jury could find for the party opposing the motion based on the record as a whole.”
Pipitone v. United States, 180 F.3d 859, 861 (7th Cir. 1999).

In Count I of the Complaint, Baldwin alleges that DW’s continued use of the
WURLITZER Registered Trademarks after the termination of the License Agreement constitutes
trademark infringement pursuant to 15 U.S.C. § 1114(1)(a). In Count II, Baldwin alleges that

this same conduct constitutes unfair competition in violation of 15 U.S.C. § 1125(a). Trademark

infringement and unfair competition claims are measured “by identical standards.” Toyota Motor