Defense Digest

Diehard baseball fans may recognize the name Tyler Green. Green had a brief major league career in the 1990s as a pitcher for the Philadelphia Phillies that was cut short by arm troubles. Before his arm difficulties began, Green could be seen at Veteran's Stadium in Philadelphia mystifying National League hitters with a nasty pitch known as a knuckle-curve ball. Green's dominance during the first half of the 1995 Major League Baseball season resulted in an invitation to the Major League Baseball All Star Game. Green continues to live in the Philadelphia area. He is the pitching coach for the nationally acclaimed Germantown Academy varsity baseball team. Green also has been known to appear on regional television and radio baseball programs, and he participates in a variety of Phillies-related charitable events. It seems, however, that Green's lack of name recognition resulted in his inability to recover legal fees incurred in prosecuting his claims against Greg Fornario of "Tyler Green Sports." Green v. Fornario, 2006 U.S. Dist. Lexis 18409 (E.D. Pa., Apr. 11, 2006).

Generally, parties to a civil matter are not permitted to recover legal fees they incur in prosecuting or defending civil claims. This is known as the "American rule," since other countries allow for the recovery of legal fees to a prevailing party in civil matters. There are some statutory exceptions to this general premise, including civil rights cases, debt collection cases, and trademark cases among others. Under the Lanham Act, 15 U.S.C.S. § 1051 et seq., which address trademark violations, a prevailing plaintiff is entitled to recover costs, along with damages and profits; however, he may only recover attorneys' fees in "exceptional" cases. In determining whether a case is exceptional under the Act, a court must apply a two-step process. First, it has to decide whether the defendant engaged in any culpable conduct as related to the violation of the Act and subsequent litigation. Culpable conduct includes, but is not limited to, bad faith, fraud, malice, and knowing infringement. Second, if culpable conduct is found, the court has to decide whether the circumstances are exceptional enough to warrant a fee award.

Fornario graduated from a Philadelphia area high school in 1992. He later became a bartender in a Philadelphia area sports bar. In the late 1990s, he started a sports handicapping business and named it Tyler Green Sports. The business quickly faltered; however, in 2000, Fornario resumed using the name Tyler Green Sports in connection with an entertainment promotion company. In October of 2003, Green's agent, Rex Gary, demanded that Fornario cease trading under his client's name. When Fornario refused, Green's attorneys sent formal cease and desist letters in February and March of 2003. Fornario offered to stop using the name in return for $3,000; however, Green declined the offer and filed suit against Fornario in the United States District Court for the Eastern District of Pennsylvania, asserting claims of misdescription, dilution, and cyber squatting under the Lanham Act. Within two weeks of fling his Answer to the Complaint, Fornario signed a consent decree in which he agreed to stop using the name Tyler Green in trade. The issue of Green's costs and attorney fees remained. The District Court awarded Green his costs associated with prosecuting the case; however, the court declined to award attorney fees, finding that the case was not exceptional. Green appealed to the Third Circuit Court of Appeals.

Green asserted that he was entitled to recover his legal fees because the case was exceptional since (1) Fornario knew Green's name and intentionally used it to profit from Green's goodwill and (2) because of Fornario's bad faith failure to stop using the name at Green's request.

Fornario denied knowledge and intent, and further testified that he named his business after Steven Tyler, the lead singer of Aerosmith, a rock band of which he was a fan, and the color of money, green. Fornario further contended that he refused to cease and desist because he believed he had a colorable claim to use the Tyler Green name since he had never heard of the baseball player. The District Court found that Green had not demonstrated that Fornario knew of Tyler Green and intentionally used his name for profit or that Fornario acted in bad-faith in refusing to cease and desist. The Third Circuit expressed doubts with respect to the credibility of Fornario's testimony; however, it concluded that the District Court's finding were not clearly erroneous and could not be overturned. Green v. Fornario, 2007 U.S. App. LEXIS 10873 at *22, (3d Cir. Pa., May 8, 2007).

A question arises as to how a plaintiff can demonstrate a defendant's subjective state of mind as related to his alleged improper use of a trademark. While Tyler Green may not be a household name, where might a jury draw the line in finding that, despite a defendant's denials, he knowingly used a famous name of another for profit? Perhaps if one opened a business and called it Tiger Woods Sports, the result might be different.

*Aaron works in the firm's Philadelphia, Pennsylvania, office and can be reached at (215) 575-2899 or aemoore@mdwcg.com.