NOT RECOMMENDED FOR FULL-TEXT PUBLICATION

File Name: 07a0459n.06

Filed: June 29, 2007

Case No. 05-3753

UNITED STATES COURT OF APPEALS

FOR THE SIXTH CIRCUIT

THE BASKETBALL MARKETING

COMPANY, INC., et al.

Plaintiffs-Appellees,

v.

UPSCALE ENTERTAINMENT AND

MARKETING GROUP, et al.

Defendants-Appellants.

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ON APPEAL FROM THE

UNITED STATES DISTRICT

COURT FOR THE NORTHERN

DISTRICT OF OHIO

BEFORE: RYAN, BATCHELDER, and SUTTON, Circuit Judges.

ALICE M. BATCHELDER, Circuit Judge. Defendant FX Digital Media, Inc. (“FX

Digital”) appeals the district court’s grant of summary judgment in favor of The Basketball

Marketing Company, Inc. andBMC Players, Inc. (collectively “And 1” or “Plaintiffs”) on Plaintiffs’

claim of trademark infringement under the Lanham Act, 15 U.S.C. § 1114.

Plaintiffs own and operate the “And 1 Mix Tape Tour,” which is a highly profitable

nationwide series of exhibition basketball games. In connection with these enterprises, Plaintiffs

own six federally registered trademarks, including the “And 1” name, the “And 1” logo, and the

“And 1 Mix Tape.” On December 7, 2002, Lisa Thomas (“Thomas”), owner and operator of

Upscale Entertainment and Marketing Group (“Upscale”), organized and promoted an exhibition

basketball game in St. Louis, Missouri, which she advertised as “The Streeball Legends AND 1 Mix
In addition to the claim for violation of the Lanham Act, the Plaintiffs raised six other claims in this action. 

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The district court granted summary judgment in favor of the Plaintiffs on the claims brought under the Ohio common

law of trademark infringement and the Ohio Deceptive Trade Practices Act (“ODTPA”), Ohio Rev. Code § 4165.02,

and dismissed the remaining claims with prejudice after determining that Plaintiffs had abandoned them. Only the

judgment on the Lanham Act claim is challenged in this appeal.

The district court refused to grant summary judgment against Woodruff in his individual capacity, and 2

Plaintiffs eventually dismissed him from the suit.

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Tape Tour Basketball Game.” Upscale contracted with FX Digital to provide And 1-affiliated

players for the game and to print 20,000 flyers stating that the event “featur[ed] players from the

AND 1 Mix Tapes[.]” Neither Upscale nor FX Digital requested Plaintiffs’ permission to use their

trademarks, even though the President of FX Digital, Columbus Woodruff (“Woodruff”), assumed

Plaintiffs owned a trademark on “And 1” and its corresponding logo.

Plaintiffs filed suit against Upscale, Thomas, FX Digital, and Woodruff, alleging federal

trademark infringement under the Lanham Act, 15 U.S.C. § 1114. The district court granted

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Plaintiffs’ motion for summary judgment against Upscale, Thomas, and FX Digital and ordered these

three defendants to pay $40,000 in damages, $28,541.50 in attorneys’ fees, and $4,338.61 in costs.2

FX Digital obtained leave to file a late notice of appeal and brought this appeal, challenging both the

finding of infringement and the award of damages and attorneys’ fees. No other party appealed.

The district court thoroughly reviewed Plaintiffs’ claim of trademark infringement and the

law governing that claim. The court concluded that Plaintiffs owned a valid registered trademark

and had continuously used the trademark, and that FX Digital’s use of the trademark created a

likelihood of confusion regarding the sponsorship of the December 7th Event. In determining that

a likelihood of confusion existed, the court carefully considered and weighed the eight Frisch

factors, see Frisch’s Restaurants, Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th

Cir. 1982), and determined that the factors weighed heavily in favor of Plaintiffs’ claim of trademark
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infringement. The court granted summary judgment to the Plaintiffs, holding that the Defendants

had in fact infringed the marks and calculating the $40,000 damages figure based on the profits

earned by Upscale from its infringing use of Plaintiffs’ trademarks.

After carefully reviewing the record, the applicable law, and the parties’ briefs (oral argument

was waived in this case), we are convinced that the district court did not err in its conclusion that

Plaintiffs were entitled to summary judgment on their federal trademark infringement claim. The

evidence is undisputed that FX Digital printed 20,000 flyers stating that the December 7th Event

would “featur[e] players from the And 1 Mix Tapes,” and that this use of the “And 1 Mix Tape”

trademark was not authorized by Plaintiffs. FX Digital produced no evidence suggesting that these

flyers would not create a likelihood of confusion that Plaintiffs were the source of the December 7th

Event.

FX Digital argues that it did not willfully infringe on Plaintiffs’ trademarks and therefore the

district court erred in awarding $40,000 in damages. Because “there is no express requirement that

the . . . infringer willfully infringe the trade[mark] to justify an award of profits,” Wynn Oil Co. v.

Am. Way Serv. Corp., 943 F.2d 595, 607 (6th Cir. 1991) (quoting Roulo v. Russ Berrie & Co., 886

F.2d 931, 941 (7th Cir. 1989)) we find no error in the award of damages based on the infringers’

profits. Nor do we find error in the district court’s holding that FX Digital is jointly and severally

liable for the profits earned by Upscale and Thomas. See Costello Publishing Co. v. Rotelle, 670

F.2d 1035, 1043 (D.C. Cir. 1981) (“Since joint tortfeasors are jointly and severally liable, the victim

of trademark infringement may sue as many or as few of the alleged wrongdoers as he chooses.”).

As the district court’s opinion carefully and correctly sets out the law governing the issues

raised, and clearly articulates the reasons underlying its decision, issuance of a full written opinion
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by this court would be largely superfluous and serve no useful purpose. Accordingly, we AFFIRM

for the reasons stated in the district court’s opinion.