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14 Page of 65 DOCUMENTS
AGOSTINO D'ANGELO, PAUL W. D'ANGELO, and PETER V. D'ANGELO,
Plaintiffs v. BOSTON RED SOX BASEBALL CLUB LIMITED PARTNERSHIP,
JOHN L. HARRINGTON, JRY CORPORATION, TWINS ENTERPRISES, INC.,
and CORPORATE IMAGE, INC., Defendants
CIVIL ACTION NO. 97-12446-GAO
UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS
2001 U.S. Dist. LEXIS 18233
July 9, 2001, Decided
DISPOSITION: Findings of fact and conclusions of law.
CASE SUMMARY:
PROCEDURAL POSTURE: Plaintiffs asserted that defendants engaged in unfair and deceptive trade practices under
Mass. Gen. Laws ch. 94A 2 and 11. All the counts but one were tried to jury. Count one was tried to the court.
OVERVIEW: Plaintiffs alleged that defendants infringed their trademark rights in a certain phrase, improperly asserted
that a professional baseball team owned trademark rights in that phrase, and attempted to interfere with the plaintiffs'
use of that phrase. For a number of years, plaintiffs had sold T-shirts from a movable cart on the streets outside a major
league ballpark with the phrase written on it. After the baseball team registered the phrase as a trademark with the
United States Patent and Trademark Office, the plaintiffs refused to enter into a licensing agreement. The plaintiffs did
not acquire a trademark or other property interest in the phrase. In dealing with the plaintiffs, defendants acted with the
legitimate intent to protect the baseball team's right to use the phrase in connection with promotional goods and/or as a
trademark. Such good faith efforts were not unfair for purposes of Mass. Gen. Laws ch. 93, 11. They did not fall with in the penumbra of some common-law, statutory, or other established concept of unfairness or as being immoral, uneth ical, oppressive, or unscrupulous.
OUTCOME: The court found in favor of defendants on count one.
CORE TERMS: trademark, unfair, baseball, shirts, conclusions of law, deceptive, promotional, souvenir, street, trade mark infringement, unscrupulous, common-law, unfairness, oppressive, infringed, unethical, penumbra, printed, license,
immoral, baseball fans, nickname, licensed, licensee, charity, selling, cartoon, played, cap
LexisNexis(R) Headnotes
Torts > Business Torts > Unfair Business Practices > General Overview
[HN1] Conduct is "unfair" for purposes of a suit between businesses under Mass. Gen. Laws ch. 93, 11, if it falls
within at least the penumbra of some common-law, statutory, or other established concept of unfairness or is immoral,
unethical, oppressive, or unscrupulous. The objectionable conduct must attain a level of rascality that would raise an
eyebrow of someone inured to the rough and tumble of the world of commerce.
Torts > Business Torts > Unfair Business Practices > General Overview
Trademark Law > Conveyances > Licenses
Trademark Law > U.S. Trademark Trial & Appeal Board Proceedings > Oppositions > General Overview
[HN2] Good faith efforts to protect trademark interests are not unfair for purposes of a Mass. Gen. Laws ch. 93A, 11
claim, because such efforts could not be classified as falling within the penumbra of some common-law, statutory, or
other established concept of unfairness or as being immoral, unethical, oppressive, or unscrupulous.
COUNSEL: [*1] For AGOSTINO D'ANGELO, PAUL W. D'ANGELO, PETER V. D'ANGELO, Plaintiffs: Joel B.
Barshak, Yasi & Yasi, PC, Salem, MA.
For PETER V. D'ANGELO, Plaintiff: Arthur E. Levine, Boston, MA.
For BOSTON RED SOX BASEBALL CLUB, JOHN L. HARRINGTON, JRY CORPORATION, Defendants: Victor
H. Polk, Jr., Bingham, Dana & Gould, Boston, MA.
For BOSTON RED SOX BASEBALL CLUB, Defendant: Joshua M. Dalton, Bingham Dana LLP, Boston, MA.
For TWINS ENTERPRISES, INC., Defendant: George R. Suslak, Stanton & Lang, Lynnfield, MA USA.
For CORPORATE IMAGE INC., Defendant: Thomas R. Murphy, Thomas R. Murphy Smith & Duggin LLP, Boston,
MA.
For BOSTON RED SOX BASEBALL CLUB, JOHN L. HARRINGTON, JRY CORPORATION, Counter-Claimants:
Victor H. Polk, Jr., Bingham, Dana & Gould, Boston, MA.
For AGOSTINO D'ANGELO, PAUL W. D'ANGELO, PETER V. D'ANGELO, Counter-Defendants: Joel B. Barshak,
Yasi & Yasi, PC, Salem, MA.
JUDGES: George A. O'Toole Jr., DISTRICT JUDGE.
OPINION BY: George A. O'Toole Jr.
OPINION
FINDINGS OF FACTS AND CONCLUSIONS OF LAW WITH RESPECT TO COUNT I OF THE COMPLAINT
July 9, 2001
O'TOOLE, D.J.
In Count I of the complaint, the plaintiffs alleged that their business had been damaged by reason [*2] of the defendants' use or employment of unfair or deceptive business acts or practices in violation of Mass. Gen. Laws ch. 93A, 2
and 11. Although other counts in the complaint were tried to a jury, Count I was tried to the Court. After consideration
of the evidence and contentions of the parties, the Court makes the following findings of fact and conclusions of law,
pursuant to Fed. R. Civ. P. 52(a).
FINDINGS OF FACT
1. The Boston Red Sox have played their professional Major League Baseball home games at Fenway Park in Boston
since 1912. Fenway Park is owned by the defendant Boston Red Sox Baseball Club Limited Partnership.
2. Fenway Park has a distinctive 37-foot high wall bordering its left field. Since 1947, the left field wall has been
painted green and has been often referred to by the nickname "Green Monster." The exact origin of the nickname is un certain, but it was probably coined by a sportswriter in the late 1940s. For decades, baseball fans generally, and Boston
baseball fans in particular, have associated the phrase "Green Monster" with the left field wall at Fenway Park.
3. The Red Sox have employed the term "Green Monster" to refer to the left field wall at [*3] Fenway Park in various
promotional materials over the years, including souvenir posters and ticket brochures. In 1976, after the left field wall
had been refurbished, the Red Sox auctioned off pieces of the old wall, identifying the souvenir as a piece of the "Green
Monster," and donated the proceeds to the Jimmy Fund, a charity that helps to fund cancer research.
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4. In the late 1970s, Harry M. Stevens, Inc., a concessionaire licensed by the Red Sox to sell goods within Fenway Park,
sold a children's T-shirt that bore the phrase "Green Monster." Another licensee of the Red Sox, the defendant Twins
Enterprises, Inc., had also used the phrase on caps, pennants, and T-shirts in the 1960s 1970s.
5. and In 1986, the plaintiffs began selling T-shirts bearing the phrase "Green Monster" and a cartoon of an anthropomorph ized wall. The cartoon included features of, and was intended to recall, the left field wall at Fenway Park.
6. The plaintiffs sold "Green Monster" T-shirts from about April, 1986, through the end of the 1993 baseball season.
They sold their shirts from a movable cart on the streets adjoining Fenway Park. One location the plaintiffs particularly
preferred was on Lansdowne [*4] Street adjacent to the left field wall, because their shirts were intended to celebrate
and evoke the wall for purchasers. The plaintiffs never sold their shirts anywhere but in the vicinity of Fenway Park.
They sold the shirts only on days when the Red Sox played at Fenway Park. It is clear that the plaintiffs intended to, and
did, take advantage of fans' identification of the phrase "Green Monster" on their T-shirts with the well-known feature
of Fenway Park.
7. In 1992, the Red Sox registered the words "Green Monster" as a trademark with the United States Patent and Trade mark Office for goods in International Class 25, which includes T-shirts and other apparel. In their application for the
trademark, the Red Sox asserted that the mark "Green Monster" had been in commercial use by them since at least
1991. At trial, the Red Sox showed by clear and convincing evidence that the phrase "Green Monster" was in fact used
by the Red Sox or their licensees in connection with promotional goods, including some T-shirts, before the plaintiffs'
first use of the phrase on their T-shirts in 1986.
8. In 1993, a Red Sox official received a customer complaint about the quality of a "Green Monster" [*5] T-shirt. On
investigation, he found that the plaintiffs were selling shirts that contained the phrase "Green Monster," as well as other
features making a connection with the Red Sox or Fenway Park, such as showing the letter "B" on a baseball cap and
using the word "Fenway."
9. The Red Sox objected to the plaintiffs' sale of goods using the term "Green Monster" without the Red Sox' permis sion. The Red Sox offered to enter into a licensing agreement with the plaintiffs. Under the Red Sox proposal, the
plaintiffs would be licensed to use the phrase "Green Monster" and other trademarks of the Red Sox in exchange for a $
500 contribution to a charity, which would be matched by the Red Sox. The plaintiffs did not accept the Red Sox pro posal, and they made no counter-proposal. Rather, they insisted that they were the owners of the trademark "Green
Monster."
10. Evidence presented at trial demonstrates that the Red Sox, in dealing with the plaintiffs, acted with the legitimate in tent to protect the Red Sox' right to use the phrase "Green Monster" in connection with promotional goods and/or as a
trademark.
11. The defendant Corporate Image, Inc. printed T-shirts for both the Red Sox and [*6] for the plaintiffs that incorporated the phrase "Green Monster." The defendant Twins Enterprises, Inc., sold baseball memorabilia and souvenirs, in cluding T-shirts, under license from the Red Sox initially and later from Major League Baseball.
CONCLUSIONS OF LAW
1. The basis of the plaintiffs' claim of unfair and deceptive trade practices under Mass. Gen. Laws ch. 93A, 2 and 11,
presented at trial was that the Red Sox infringed the plaintiffs' trademark rights in the phrase "Green Monster," improp erly asserted that the Red Sox owned trademark rights in that phrase, and attempted to interfere with the plaintiffs' use
of that phrase. The plaintiffs' claims against the defendants Corporate Image, Inc. and Twins Enterprises, Inc., were that
those defendants similarly infringed when they printed (in the case of Corporate Image) and sold (in the case of Twins
Enterprises) infringing goods. In sum, the claim that the defendants are liable under chapter 93A depends essentially on
the plaintiffs' claim of trademark infringement. 1
1 A claim that the Red Sox violated chapter 93A by refusing to consent to the issuance of a street vendor's permit for 1994 to the plaintiffs
by the City of Boston was disposed of by the Court's ruling in the defendants' favor on a motion in limine, quod vide.
[*7] 2. [HN1] Conduct is "unfair" for purposes of a suit between businesses under 11 of chapter 93A if it falls with in "at least the penumbra of some common-law, statutory, or other established concept of unfairness . . . [or] is immoral,
unethical, oppressive, or unscrupulous." Zayre Corp. v. Computer Sys. of Am., Inc., 24 Mass. App. Ct. 559, 511 N.E.2d
23, 30 (Mass. App. Ct. 1987) (citing Levings v. Forbes & Wallace, Inc., 8 Mass. App. Ct. 498, 396 N.E.2d 149, 153
(Mass. App. Ct. 1979). "The objectionable conduct must attain a level of rascality that would raise an eyebrow of
someone inured to the rough and tumble of the world of commerce." Levings, 396 N.E.2d at 153.
3. The plaintiffs did not acquire a trademark or other property interest in the phrase "Green Monster," and the defend ants did not infringe any trademark belonging to the plaintiffs. To the extent that the plaintiffs' claim that the defendants
violated chapter 93A was based on their claims of trademark infringement or unfair competition, the chapter 93A claims
fail. See McKernan v. Burek, 118 F. Supp. 2d 119, 125 (D. Mass. 2000).
4. To the extent that the [*8] plaintiffs' claim could be understood to assert that the Red Sox acted unfairly in insisting
that the plaintiffs agree to a license or face the Red Sox opposition to their continued sale of "Green Monster" T-shirts,
it also fails. [HN2] Good faith efforts to protect trademark interests are not unfair for purposes of a chapter 93A, 11
claim, because such efforts could not be classified as falling within "the penumbra of some common-law, statutory, or
other established concept of unfairness" or as being "immoral, unethical, oppressive, or unscrupulous." See Zayre
Corp., 511 N.E.2d at 30; Levings, 396 N.E.2d at 152-53.
5. Because the evidence fails to establish that any defendant committed unfair or deceptive acts as defined by chapter
93A, 11, the Court finds in favor of the defendants on Count I.
July 9, 2001
DATE
George A. O'Toole Jr.
DISTRICT JUDGE