## Facts

- Nolan Ryan, a well-known former professional baseball player, licensed his name, likeness, and facsimile signature for use on merchandise through agreements administered by his agent, Mattgo Enterprises, Inc.
- Volpone Stamp Co., Inc. obtained exclusive rights under a master license and related product-specific agreements (including train set and teddy bear licenses) to manufacture, market, and sell multiple Ryan-branded items.
- The agreements required Volpone to pay royalties (including minimum royalties) and provided a notice-and-cure mechanism: upon nonpayment, Volpone had 60 days to cure; if uncured, the licenses would terminate and rights would revert to Ryan’s side.
- Volpone asserted that Ryan and Mattgo undermined exclusivity by licensing similar rights to others and, in response, stopped payment on certain royalty checks.
- Ryan sent notice of default and, after the cure period elapsed without payment, notified Volpone that the agreements were terminated.
- After the termination notice, Volpone continued to manufacture and distribute products using Ryan’s name, likeness, and facsimile signature, allegedly suggesting ongoing authorization or endorsement.
- Ryan sued in federal court asserting § 43(a) Lanham Act claims and New York Civil Rights Law §§ 50–51 claims, among others, while related contract disputes were pending in New York state court.
- Defendants moved to dismiss or, alternatively, to stay or defer in favor of the state action; Ryan moved for a preliminary injunction to stop continued post-termination use.

## Issues

1. Whether the complaint plausibly alleged a § 43(a) Lanham Act claim (and thus federal question jurisdiction) where an ex-licensee continued using a celebrity’s name and likeness after termination.
2. Whether the federal court should dismiss or stay the action in deference to a related state court proceeding involving overlapping contractual issues.
3. Whether Ryan satisfied the requirements for a preliminary injunction, including irreparable harm and likelihood of success on the merits of the Lanham Act and New York Civil Rights Law claims.

## Decision

- The court denied defendants’ motion to dismiss, holding the complaint stated a viable § 43(a) claim and supported federal question jurisdiction.
- The court declined to abstain or defer to the state court action and retained the case.
- The court granted Ryan’s motion for a preliminary injunction, enjoining defendants from using Ryan’s name, likeness, and signature in connection with products pending final resolution.

## Legal Principles

- A dispute between a licensor and an ex-licensee can support a Lanham Act § 43(a) claim when post-termination use of a name, likeness, or signature is likely to cause consumer confusion about sponsorship or endorsement, even if contractual questions are also present.
- Post-termination sales by an ex-licensee using the former licensor’s source-identifying indicia are especially likely to confuse consumers and support injunctive relief.
- Federal courts generally must exercise properly invoked federal question jurisdiction; abstention in favor of parallel state litigation is disfavored absent extraordinary circumstances.
- In the Second Circuit, preliminary injunctive relief requires irreparable harm and either (a) likelihood of success on the merits or (b) serious questions on the merits plus a balance of hardships tipping decidedly toward the movant.
- Under New York Civil Rights Law §§ 50–51, use of a person’s name or likeness for advertising or trade purposes without valid written consent can be enjoined; consent tied to a license may end upon termination, making continued commercial use unauthorized.

## Conclusion

The court held that continued, post-termination commercialization of Nolan Ryan’s persona by an ex-licensee plausibly created consumer confusion actionable under § 43(a) and likely violated New York’s statutory publicity protections, warranting a preliminary injunction and rejecting dismissal or abstention despite related state contract litigation.


Ryan v. Volpone Stamp Co., 107 F. Supp. 2d 369 (S.D.N.Y. 2000)