## Facts

- Diana Packman owned federal registrations for “the joy of six” for entertainment services involving watching football and basketball games.
- The phrase was a common wordplay expression used by others to describe positive feelings associated with “six” in various contexts.
- In 1996, Chicago Tribune sportswriters used “the joy of six” in coverage anticipating the Chicago Bulls’ possible sixth NBA championship; Packman did not object and sent a letter and merchandise encouraging use while noting her registration.
- After the Bulls won in 1998, the Tribune ran a front-page banner headline reading “The joy of six.”
- The Tribune sold memorabilia reproducing the entire front page (including masthead, photos, and headlines) and contracted with Front Page News, Inc. to print a collage featuring multiple Bulls-championship headlines, including “The joy of six.”
- About eighteen months later, Packman sued the Tribune and Front Page News under the Lanham Act and Illinois law, alleging infringement and unfair competition based on the phrase’s appearance on the memorabilia.
- The district court granted summary judgment for defendants on fair use and, alternatively, lack of likelihood of confusion, and denied Packman’s motion to compel discovery.

## Issues

1. Whether defendants established Lanham Act classic fair use by using “The joy of six” other than as a mark, descriptively, and in good faith.
2. Whether Packman produced sufficient evidence of a likelihood of consumer confusion as to source or sponsorship of the memorabilia.
3. Whether the denial of Packman’s motion to compel discovery was an abuse of discretion.

## Decision

- The Seventh Circuit affirmed summary judgment for the Tribune and Front Page News.
- The court held defendants’ use was classic fair use: non-trademark use within a faithful reproduction of editorial content, descriptive of the Bulls’ sixth championship, and made in good faith.
- The court agreed that Packman failed, as a matter of law, to show likelihood of confusion.
- The court upheld the denial of the motion to compel discovery as within the district court’s discretion.

## Legal Principles

- Classic fair use under the Lanham Act requires proof that the challenged term is used (1) other than as a trademark, (2) descriptively, and (3) in good faith.
- A term’s function and context control: use embedded in a reproduced newspaper front page or collage may be non-trademark use rather than a source identifier for merchandise.
- Descriptive use includes using a phrase to describe an event or the emotion associated with it, particularly where the phrase is commonly used in similar contexts.
- Even where marks are identical, a plaintiff must present evidence supporting likelihood of confusion; absence of meaningful evidence of actual confusion and non-branding presentation can defeat the claim at summary judgment.
- Discovery rulings are reviewed for abuse of discretion; denial is proper where the requested discovery would not affect dispositive issues such as the character of the challenged use.

## Conclusion

The court affirmed judgment for the defendants because the headline phrase on memorabilia reproducing a newspaper’s front page was a descriptive, good-faith, non-trademark use protected by classic fair use, and the plaintiff also failed to show a likelihood of confusion; the discovery denial was not an abuse of discretion.


Packman v. Chi. Tribune Co., 267 F.3d 628 (7th Cir. 2001)