Curry" in 1983, and only used the name in conjunction with performances featuring John Curry. Additionally, a three-year personal services contract granted plaintiff's predecessor corporation the exclusive right to use the name for the term of the contract. Plaintiff claims rights in the mark based on the contract and on the sums spent advertising and promoting the name.
Because the mark in question contains a personal name, not plaintiff's own, the plaintiff can only establish the first element of a claim for unfair competition by showing that the mark has acquired "secondary meaning." See, e.g., Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1228 (3rd Cir. 1978). Secondary meaning exists when the primary meaning of the tradename as identifying an individual is overshadowed in the mind of the consuming public by the origin or quality of the product or service marketed under the name. E.g., Levitt Corp. v. Levitt, 593 F.2d 463, 468 (2d Cir. 1979); Scott Paper Co., 589 F.2d at 1228. Although there is no quantifiable test to determine when secondary meaning is achieved, courts consider as relevant (1) the duration and continuity of use of the mark, (2) the extent of advertising and promotion and amount of money spent thereon and (3) figures showing sales or viewings of plaintiff's product. E.g., American Association for Advancement of Science v. Hearst Corp., 498 F. Supp. 244, 257 (D.D.C. 1980). Plaintiff's use of the mark can date no earlier than February, 1983, when its predecessor Symphony was formed to begin promoting Curry's balletic skaters. The plaintiff stopped using the mark after Mr. Curry severed relations with the corporation in March of 1985. Advertising expenses of approximately $600,000.00 were incurred in connection with promotion of the mark, and resulted in successful, critically acclaimed performances.
Two and a half years of use, more than half a million dollars in promotional expenses, and critical praise are stepping stones to the achievement of secondary meaning in a mark. Courts that found secondary meaning in a personal name mark, however, were presented with evidence of much longer use and more substantial investments in advertising and other promotional expenses than found here. See Taylor Wine Co. v. Bully Hill Vineyards, Inc., 569 F.2d 731 (2d Cir. 1978) (mark used for over 90 years, with nearly 10 million dollars of advertising expenditures in ten years); ChiChi's, Inc., 568 F. Supp. at 736 (twenty-five years of continuous use and advertising of name); Markel v. Scovill, 471 F. Supp. 1244, 1249 (W.D.N.Y. 1979) (continuous use of trade name for fifty years and expenditures of "considerable sums" on product promotion and advertising). Cases, such as Duggal v. Krishna, 554 F. Supp. 1043, 1047 (D.D.C. 1983), in which secondary meaning in a mark is found after comparatively brief use, are not dispositive, because none have involved personal name marks. This distinction is not lightly noted: the interest an individual has in conducting an enterprise under his own name, using his own skills and knowledge, is protected by the Courts, and his right to use his name will not be lightly wrested from him. E.g., Taylor Wine Co., 569 F.2d at 735. For this reason, a higher showing is required to establish secondary meaning in a personal name mark. The undisputed facts of this case material to the issue of secondary meaning, when viewed in the light most favorable to plaintiff, do not establish that plaintiff has given secondary meaning to the mark "The John Curry Skating Company."
At oral argument, plaintiff contended that any secondary meaning or "celebrity value" that John Curry had given to his name passed, in toto, to plaintiff through the contract between Frozen Assets and Symphony, and must be added to plaintiff's use of the name to determine whether secondary meaning exists. Given the nature of the underlying contract,
the Court is not persuaded by this argument. Although many of the facts surrounding the assignment of the contract and the parties' performance thereunder are bitterly contested, it is undisputed that the contract was for the personal services of Mr. Curry, and not for the sale of his "business," his name, or his goodwill. The right to use John Curry's name for three years was coterminous with Mr. Curry's performance of services under the contract. The contract thus resembles a license agreement. Plaintiff's reliance on cases involving parties' rights subsequent to outright sales of businesses, and their personal-name marks, is misplaced.
The contract at issue did not confer secondary meaning on the mark, and the potential validity of the parties' claims of breach and wrongdoing does not permit this dispute to be cloaked with the protection of the Lanham Act. See generally, Silverstar Enterprises, Inc. v. Aday, 537 F. Supp. 236, 242 (S.D.N.Y. 1982) (dispute between licensee and licensor of trademark dismissed for lack of jurisdiction under Lanham Act).
Under Rule 56 of the Federal Rules of Civil Procedure, a grant of summary judgment is appropriate where there are no disputed issues of material fact and the moving party is entitled to a judgment as a matter of law. See also Barrer v. Women's National Bank, 245 U.S. App. D.C. 349, 761 F.2d 752, 757 (D.C. Cir. 1985). The facts material to the necessary first element of plaintiff's claim of unfair competition are undisputed. Failure to establish secondary meaning in the mark vitiates plaintiff's claim of protectable rights in the mark. Defendants accordingly are entitled to a grant of summary judgment on the claim under the Lanham Act. As a result, the Court is left with plaintiff's pendent state law claims for breach of contract, tort, trademark and unfair competition. When the federal claim to which state claims are joined is dismissed before trial, the state law claims should ordinarily be dismissed as well. United Mine Workers v. Gibbs, 383 U.S. 715, 16 L. Ed. 2d 218, 86 S. Ct. 1130 (1966). As plaintiff's pendent claims implicate exclusively considerations of state law, the Court finds no reason to exercise its discretion to retain the claims. For the foregoing reasons, defendants' motion for summary judgment must be granted in part, and defendants' motion to dismiss the remaining claims for lack of federal jurisdiction will also be granted. An order consistent with the terms of this opinion shall be issued.
Dated: October 18, 1985.
Upon consideration of defendants' Motion to Dismiss or in the Alternative for Partial Summary Judgment, plaintiff's opposition, the memoranda and affidavits filed therewith, and the arguments of counsel in open court, it is 18th day of October, 1985 hereby
ORDERED that defendants' Motion for Summary Judgment on the Lanham Act claim and Motion to Dismiss the remaining claims are granted, for the reasons set out in the accompanying memorandum opinion" and the complaint is accordingly dismissed.