By Robert B. Barnett Jr., J.D.
The request for a TRO to stop production of t-shirts containing a parody of a wrestling commentator failed all four requirements for granting a TRO, and the wrestler was engaging in protected speech.
A professional wrestling commentator has been denied a temporary restraining order against a professional wrestler to prevent him from selling t-shirts that mocked the commentator because the personality failed to establish any elements of his TRO claim, including a likelihood of success on his trademark-related claims or irreparable harm, the federal district court in Pittsburgh has ruled. In addition, the First Amendment protected the wrestler in his attempts to parody the commentator (Cornette v. Graver, July 20, 2020, Gibson, K.).
Background. James Cornette is a professional wrestling commentator who has built a reputation within the professional wrestling community. Brandon Graver is a professional wrestler who wrestles under the name G-Raver. In August 2019, Cornette and G-Raver became involved in a wrestling-related dispute that led to this lawsuit.
The commentator is known for his distaste of deathmatch wrestling, which is a violent and bloody style of wrestling in which multiple wrestlers get into a ring and slug one another with various implements, including barbed wire, weed whackers, and light tubes. G-Raver is a deathmatch wrestler known for using tattoo needles as his weapon of choice. Following a deathmatch in which G-Raver was seriously injured and almost died, the commentator criticized the wrestler’s participation in such events and half-heartedly suggested that the officials should have let him bleed out.
The wrestler ultimately exacted his revenge by getting the people of Indy Connection, a counterculture e-commerce store, to produce a t-shirt with an image of the commenter. The t-shirt, which ultimately was produced in three similar versions, contained an image of the commentator with his mouth and eyes crossed out in red, needles sticking out of his head, and the words "Fuck James Cornette" underneath the image. The commentator sued the wrestler, Indy Connection, and Indy Connection’s owners in Pennsylvania federal court, asserting claims for (1) unfair competition in violation of the Lanham Act, (2) trademark dilution in violation of the Lanham Act, (3) trademark cyberpiracy in violation of the Lanham Act, (4) common law trademark infringement, unfair competition, and trademark dilution, and (5) unauthorized use of likeness in violation of Pennsylvania’s Right of Publicity statute. The court denied the defendants’ motion to dismiss. Two months later, the commentator filed a motion for a temporary restraining order, asking the court to order that the wrestler stop selling any t-shirts bearing the commentator’s likeness.
TRO. The commentator, to obtain his TRO, had to establish four elements: a likelihood of success on the merits, irreparable harm, a balance of equities in his favor, and public interest in his favor.
Likelihood of success—unfair competition. Starting with the unfair competition claim, the court concluded that the commentator had failed to establish that the creation, sale, and promotion of the t-shirts was commercial speech. The Lanham Act, of course, regulates only commercial speech. The t-shirts did not refer to a specific product because they expressed a message about the commentator and not to any products or services. Furthermore, the wrestler had no economic motivation for selling and promoting the t-shirt. While he did make some money selling the t-shirts, he did not promote the t-shirts substantially for economic reasons. In the absence of proof of commercial speech, therefore, the commentator failed to show a likelihood of success on the merits of the unfair competition claim.
Likelihood of confusion—unfair competition. While the failure to show likelihood of success on the unfair competition claim doomed the TRO, in the interest of completeness, the court looked also at the likelihood of confusion. In the absence of any federal registration of the mark, the question turned to whether the mark possessed secondary meaning, which requires an association in the minds of consumers between the mark and the provider using the mark. "Scarce evidence" existed in the record of secondary meanings. Even assuming that secondary meaning existed, the court concluded that no likelihood of confusion existed. Looking at the 10 factors for determining likelihood of confusion, the court concluded that the evidence overwhelming established that no likelihood existed. For example, the wrestler’s use of the commentator’s name and likeness on the t-shirts was not similar to the commentator’s use on his own merchandise. In addition, the commentator failed to establish that his mark was strong, even in the wrestling world.
Likelihood of success—dilution. Turning to the dilution claim, the court concluded that the commentator failed to satisfy the likelihood of success requirement for the dilution claim because his mark was not famous among consumers generally. In addition, of course, the Lanham Act claim would also likely fail because it did not involve commercial speech. And, as if the two reasons were not enough, the commentator failed to establish that the trademark had been diluted by blurring. The marks were not similar. The commentator was not famous. And he offered no evidence that he had engaged in exclusive use of his mark before the dispute. Next, the court concluded that the commentator had failed to show a likelihood of dilution by tarnishment because the commentator’s mark and the t-shirt were not similar.
Likelihood of success—cyberpiracy. As with the previous two Lanham Act claims, the TRO claim for cyberpiracy failed because the likelihood of success did not exist given that the speech was not commercial. The cyberpiracy TRO claim also failed, however, because no evidence existed that the wrestler used the mark in bad faith. The evidence established that the wrestler believed that his use of the name and likeness was for lawful parody. His reasonable grounds for believing it meant that no bad faith existed.
Likelihood of success—common law claims. The common law claims for unfair competition, dilution, and cyberpiracy were the same as the Lanham Act claims, minus the need for interstate commerce. As a result, for the same reasons that the TRO effort based on those claims failed, they failed for these claims as well.
Likelihood of success—right of publicity. The TRO based on the right of publicity claim also failed, primarily because the t-shirts were considered to be expressive works protected by the First Amendment. The t-shirt was also determined to be a communications medium, no different from a newspaper ad or a black armband. To balance the right of publicity against the right of free expression, the court applied the Transformative Use test, which asks whether the new work adds something new to the original meaning of the mark. The court concluded that the t-shirt did, in fact, constitute a transformative use because the image on the t-shirt became the wrestler’s own expression. The expression on the t-shirts, therefore, was protected expression, which meant that the commentator was not likely to prevail on his right of publicity claim.
Irreparable harm. In addition to finding no likelihood of success on the merits for each of the claims, the court concluded that the commentator failed to establish irreparable harm, the second element for establishing a right to the TRO. Any harm caused to the commentator’s brand through parodies or satire get First Amendment protection. In addition, no evidence existed to date that his brand had suffered any harm from the t-shirts.
Balance of equities. The third requirement, a balance of equities, also favored the wrestler. At one point, the commentator sold the supposedly offending t-shirts on his own website. It would be inequitable to prohibit the wrestler from doing what the commentator was also doing.
Public interest. The fourth and final element, the public’s interest, also favored the wrestler. The public’s interest in free expression and the right to critique ideas found objectionable outweighed any other interests involved here.
The court, therefore, denied the motion for a temporary restraining order.
This case is No. 3:19-cv-00219-KRG.
Attorneys: Robert Dunlap (Robert Dunlap Esq, PLLC) for James "Jim" Cornette. Max Petrunya (Max Petrunya, P.C.) for Brandon Graver, William J. Molnar, Jr. and Indy Rail Connection, Inc.
Companies: Indy Rail Connection, Inc.
MainStory: TopStory PublicityRights TechnologyInternet Trademark PennsylvaniaNews GCNNews
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