A federal judge yesterday ruled for the "Kamikaze Kid" and against the Oakland Zoo Fan Club in the battle of the basketball T-shirts.
Chief U.S. District Judge Donetta Ambrose said street vendor Charles Bonasorte, a University of Pittsburgh football player in the 1970s who owns The Pittsburgh Stop Inc., can keep selling the popular Oakland Zoo T-shirts.
The judge refused to issue a preliminary injunction requested by the fan club to stop Bonasorte on grounds that he was violating the club's trademark on the shirts.
"I find that it is likely that The Pittsburgh Stop may be the continuous prior user of the trademark and, thus, the owner of the trademark," the judge wrote.
Bonasorte, who earned the "Kamikaze Kid" label as a player on Pitt's 1976 national championship team, was thrilled.
"What a great day!" he said from his vending station on the Pitt campus. "My lawyer told me not to get too excited. But the truth is coming out. We believe the judge made the 1,000 percent right decision. We're really excited, and justice prevails."
Fan club president Matt Cohen, a Pitt student and basketball fanatic, couldn't be reached yesterday.
His lawyer, Steve Irwin, said he was disappointed with the ruling but that the underlying trademark infringement suit against Bonasorte continues. Although the preliminary injunction phase of the case is over, the suit will proceed now to the discovery stage.
The judge considered several factors in making her decision.
One of the key ones was whether Cohen, who founded the Oakland Zoo club with fellow student Zach Hale, is likely to win. Ambrose said his case is "weak."
Although Cohen received a Pennsylvania trademark in November 2002 and Bonasorte didn't get his U.S. trademark until this year, Ambrose said it doesn't matter.
The Pittsburgh Stop was selling the shirts before either date. Under federal law, the judge said, "it is well-settled ... that ownership is established by the first to use in commerce, not by registration."
Bonasorte's first sales were in November 2001. Cohen came up with the idea and Hale designed the first shirt, but the club didn't start selling shirts until March 2002.
The judge also had to decide if Cohen and Co. would suffer "irreparable harm" if she didn't issue an injunction. She said the club knew about the alleged infringement long before sending out a letter to Bonasorte telling him to stop selling shirts.
"The delay of almost one year in sending out a cease and desist letter and another six-month delay in moving for injunctive relief forces me to conclude that there is no need for injunctive relief," Ambrose wrote.
Cohen, 21, of Philadelphia, had argued in court last week that Bonasorte is profiting from his idea without giving him any money, as other vendors do. Proceeds from the shirts that the club sells go into a university student account to pay for students to take road trips to Pitt's away games.
Torsten Ove can be reached at email@example.com or 412-263-2620.