Saint Xavier University v. Mossuto

Filing 82

MEMORANDUM Opinion and Order: The Court grants defendant's motion for summary judgment 61 . Civil case terminated. Signed by the Honorable Sharon Johnson Coleman on 9/16/2022. Mailed notice. (ym, )

UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
ST. XAVIER UNIVERSITY,
Plaintiff,
v.
ROCCO MOSSUTO,
Defendant.

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Case No. 20-cv-05206
Judge Sharon Johnson Coleman

MEMORANDUM OPINION AND ORDER
Plaintiff St. Xavier University (“SXU”) brings this action against the former head coach of
SXU’s men’s baseball team, Rocco Mossuto (“Mossuto”), on claims of trademark infringement
(Count I) and conversion (Count II). Mossuto moves for summary judgment on both counts. For
the following reasons, the Court grants the motion [61].
Background
As discussed below, the following facts are undisputed or deemed admitted unless otherwise
noted. SXU is a Chicago-based nonprofit corporation that operates Saint Xavier University (the
“University”). In July 2014, SXU hired Mossuto, an alum of the University, as head baseball coach.
In or around 2014 or 2015, Mossuto registered a social media account for the SXU baseball team on
Twitter.com (the “Twitter Account”) with the Twitter handle 1 @SXUbaseball.
On June 24, 2020, SXU terminated Mossuto’s employment for reasons that are unrelated to
this motion, but which Mossuto claims were unjust. On the same day, Mossuto published a tweet
from the Twitter Account (the “First Tweet”). He contends that he attempted to remove any
reference to SXU by changing the account name to “Coach Rocco Mossuto.” He did not, however,

A Twitter handle, which is distinct from a user’s Twitter name, is a unique identifier that appears at the end of the
Twitter URL.

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change the Twitter Account’s handle until a few hours later. Mossuto also kept the SXU Logo on
the account for a few hours, which he claims was by error. The First Tweet states, “Last tweet for
me about SXU Baseball. Thank you to all Cougar baseball nation! Love you all! Please read below.
@NAIABall @FacultySxu @disabato.” (Dkt. 62, ¶ 40.) Attached to the First Tweet are three
screenshots of a statement authored by Mossuto about his departure from the SXU baseball team in
which he briefly explains his “reason for no longer being the head baseball coach.” (Id.)
Between June 28, 2020 and July 17, 2020, Mossuto published four more tweets—two
pertaining to baseball, one about his son’s christening, and a final tweet (the “Fifth Tweet”) about
the ownership of the Twitter Account. The Fifth Tweet states, “Per the threat of legal action from
my former university this Twitter account will be deleted or taken over by the university. My
affiliation with this account will end Monday. Thank you all again for your support.” (Id., ¶ 45.)
SXU admits that Mossuto did not use the Twitter Account for any monetary purpose. (Id., ¶¶ 47–
48.) On July 21, 2020, Mossuto turned the Twitter Account over to SXU.
Following the five tweets, SXU contends and Mossuto denies, that the University was
damaged by a decrease in donations to its baseball program by approximately $50,000. (Dkt. 76, ¶
6.) By comparison, SXU asserts that the decrease was more significant than the decrease in
donations to the University’s football program. (Id.) Further, student baseball athletes subsequently
left the baseball program and prospective student baseball athletes decided not to attend the
University, which SXU attributes to Mossuto’s alleged trademark infringement. (Id.)
Legal Standard
Summary judgment is appropriate “if the movant shows that there is no genuine dispute as
to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a);
see also Celotex Corp. v. Catrett, 477 U.S. 317, 322–23, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986). A
genuine dispute as to any material fact exists if “the evidence is such that a reasonable jury could
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return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.
Ct. 2505, 2510, 91 L. Ed. 2d 202 (1986). When determining whether a genuine dispute as to any
material fact exists, the Court must view the evidence and draw all reasonable inferences in favor of
the nonmoving party. Id. at 255; Lovelace v. Gibson, 21 F.4th 481, 483 (7th Cir. 2021). After “a
properly supported motion for summary judgment is made, the adverse party ‘must set forth specific
facts showing that there is a genuine issue for trial.’” Anderson, 477 U.S. at 255 (citation omitted).
Discussion
As an initial matter, the Court must determine whether SXU failed to comply with the
requirements of Northern District of Illinois Local Rule 56.1. Under the Rule, a party opposing a
motion for summary judgment is required to file “a concise response to the movant’s statement [of
facts] that shall contain… a response to each numbered paragraph in the moving party’s statement,
including, in the case of disagreement, specific references to the affidavits, parts of the record, and
other supporting materials relied upon.” N.D. Ill. R. 56.1(b)(3)(B). The Seventh Circuit routinely
upholds a “district court’s discretion in requiring parties to comply strictly with local rule
requirements.” Curtis v. Costco Wholesale Corp., 807 F.3d 215, 219 (7th Cir. 2015) (citation omitted).
Mossuto argues that SXU’s lack of compliance with Rule 56.1 should result in the admission
of certain facts. First, Mossuto maintains SXU improperly denies several of his statements of fact
(Dkt. 73, ¶¶ 39, 58–60, 62, 65, 69, 78) without adequate support. Because SXU fails to “provide the
admissible evidence that supports [its] denial in a clear, concise, and obvious fashion, for quick
reference of the court,” the facts are deemed admitted. Curtis, 807 F.3d at 219. Likewise, SXU’s
denial of material facts by boilerplate objection (Dkt. 73, ¶¶ 3–7, 9, 11, 13–24, 28, 49, 73–77) is
improper. Curtis, 807 F.3d at 219. Finally, SXU objects to Mossuto’s statements citing allegations in

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the First Amended Complaint that were later withdrawn. 2 Understanding the withdrawal, the Court
will give the statements the weight they are due. Mossuto’s further objections to SXU’s responses
are stricken as moot, as they have no bearing on the outcome of this motion.
The Court now turns to Mossuto’s motion for summary judgment on SXU’s trademark
infringement claim (Count I). Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), imposes
liability for damages caused by or likely to be caused by
(1) [a]ny person who, on or in connection with any goods or services, or any container
for goods, uses in commerce any word, term, name, symbol, or device, or any
combination thereof, or any false designation of origin, false or misleading description
of fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation,
connection, or association of such person with another person, or as to the origin,
sponsorship, or approval of his or her goods, services, or commercial activities by
another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics,
qualities, or geographic origin of his or her or another person's goods, services, or
commercial activities…
15 U.S.C. § 1125(a)(1). SXU brings its claim under § 1125(a)(1)(A), which covers “false association”
or “false endorsement” claims. Actions brought under § 1125(a)(1)(B) cover “false advertising”
claims, which SXU does not allege. See Lexmark¸ 572 U.S. at 122.
Mossuto argues that SXU lacks standing to bring its claim under the Lanham Act. The
Court must “reach the jurisdictional issue first, as ‘[w]ithout jurisdiction the court cannot proceed at
all in any cause.’” Rodas v. Seidlin, 656 F.3d 610, 615 (7th Cir. 2011) (citing Steel Co. v. Citizens for a
Better Env’t, 523 U.S. 83, 94, 118 S. Ct. 1003, 140 L. Ed. 2d 210 (1998) (quotation omitted)). The
issue of standing “remains open to review at all stages of the litigation.” Pennell v. Glob. Tr. Mgmt.,
LLC, 990 F.3d 1041, 1044 (7th Cir. 2021) (quotation omitted). A plaintiff must support its standing

Quizzically, SXU opted to file a stipulation withdrawing certain paragraphs from the First Amended Complaint (Dkt.
46) rather than move to file a Second Amended Complaint, requiring the Court to cross-reference both documents to
understand what remains of SXU’s allegations.

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with the manner and degree of evidence required at the present stage of litigation. Lujan v. Defs. of
Wildlife, 504 U.S. 555, 561, 112 S. Ct. 2130, 119 L. Ed. 2d 351 (1992). At the summary judgment
stage, the Court asks “whether the plaintiffs have supplied evidence of ‘specific facts’ that, taken as
true, show each element of standing.” Spuhler v. State Collection Serv., Inc., 983 F.3d 282, 286 (7th Cir.
2020) (quoting id.).
Mossuto contends that, because the content of his posts on the Twitter Account were not
“in connection with any goods or services,” SXU does not have standing under the Lanham Act. 15
U.S.C. § 1125(a). This argument conflates two distinct requirements to bring a Lanham Act claim—
the “use in commerce requirement” and the “commercial use requirement.” See Utah Lighthouse
Ministry v. Foundation for Apologetic Info. & Rsch., 527 F.3d 1045 (10th Cir. 2008) (differentiating
between the two). The former is a “jurisdictional predicate to any law passed by Congress under the
Commerce Clause.” Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 677 (9th Cir. 2005). The latter,
described further below, is the statutory requirement that the alleged infringement must be “in
connection with any goods or services.” 15 U.S.C. § 1125(a). Therefore, whether Mossuto’s tweets
were made “in connection with goods or services” is not relevant to his standing argument.
To establish standing for a Lanham Act claim, the plaintiff must show that (1) it experienced
an injury to a commercial interest in sales or business reputation; and (2) the defendant proximately
caused the injury. Lexmark Int’l, Inc. v. Static Control Components, Inc.¸572 U.S. 118, 134 S. Ct. 1377,
188 L. Ed. 2d 392 (2014). Although Lexmark involved a false advertising claim, courts have also
applied the Lexmark test to false association claims. See Towada Audio Co. v. Aiwa Corp., No. 18-cv4397, 2019 WL 1200748, at *7 (N.D. Ill. Mar. 14, 2019) (Blakey, J.). SXU passes the commercial
interest prong because it provides evidence of an injury that affected its bottom line. Id.
Mossuto’s second argument, that he did not proximately cause SXU’s injuries, more directly
attacks SXU’s standing. SXU responds that Mossuto’s use of its trademark to falsely criticize
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Mossuto’s firing proximately caused a decline in donations from alumni and loss of tuition from
prospective student-athletes and current student-athletes who departed. See Lexmark, 572 U.S. at
138 (“[A] defendant who seeks to promote his own interests by telling a known falsehood to or
about the plaintiff… may be said to have proximately caused the plaintiff’s harm.”) (quotation
omitted). In support, SXU maintains that SXU’s donations to the baseball program dropped by
approximately $50,000 following Mossuto’s tweets. (Dkt. 73, ¶ 6.) Taking as true the evidence
supplied by SXU, as the Court must, SXU has standing to bring this suit. Spuhler, 983 F.3d at 286.
Next, as to the merits of the motion, Mossuto argues that he is entitled to summary
judgment on SXU’s trademark infringement claim because SXU has not met the commercial use
requirement of the Lanham Act—that is, that the alleged infringement was “in connection with any
goods or services.” 15 U.S.C. § 1125(a). While the Seventh Circuit has not yet squarely opined on
this issue, the opinions of several other circuit courts are persuasive. See Bosley, 403 F.3d at 680
(holding that plaintiff could not use the Lanham Act as a sword to silence noncompetitor
defendant’s criticism because defendant’s use of plaintiff’s trademark was not “in connection with
the sale of goods”); Utah Lighthouse Ministry, 527 F.3d at 1053 (affirming summary judgment for
defendants where defendants’ use of plaintiff’s trademark was not in connection with any goods or
services); Radiance Found., Inc. v. N.A.A.C.P., 786 F.3d 316 (4th Cir. 2015) (holding that the “‘in
connection with’ language must denote a real nexus with goods or services…”); Taubman Co. v.
Webfeats, 319 F.3d 770 (6th Cir. 2003) (“If [defendant’s] use is commercial, then, and only then, do
we analyze his use for a likelihood of confusion.”).
SXU responds, without support, that Mossuto’s allegedly infringing conduct satisfies the
commercial use requirement because “posting information on a social media service in connection
with a trademark is commercial speech subject to the Lanham Act.” (Dkt. 69 at 5.) The Court
agrees with the Tenth Circuit that not every use of the internet is commercial for purposes of the
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Lanham Act. See Utah Lighthouse Ministry, 527 F.3d at 1054. Such a holding would “greatly expand
the scope of the Lanham Act to encompass objectively noncommercial speech.” Id. In addition,
that the Patent and Trademark Office allows registration of trademarks for the purpose of providing
information via the internet, SXU argues, is evidence that such a restriction does not exist. A plain
reading of the Lanham Act is evidence to the contrary. 15 U.S.C. § 1125(a)(1) (“Any person who,
on or in connection with any goods or services…”). SXU must show something more to connect
Mossuto’s actions to goods or services sufficient to sustain a Lanham Act claim.
The undisputed evidence shows that Mossuto’s use of SXU’s trademark was not
commercial. Though SXU readily admits that Mossuto did not use the Twitter Account for any
monetary purpose, it nevertheless brings this claim under the Lanham Act for an alleged trademark
infringement that lasted a few hours. (Dkt. 73, ¶ 47–48.) The real issue seems to be that Mossuto
used the Twitter Account as a platform to criticize SXU’s reasons for terminating his employment.
Such a use is not actionable under the Lanham Act. See Utah Lighthouse Ministry, 527 F.3d at 1053
(“In our view, the defendant… must use the mark in connection with the goods or services of a
competing producer, not merely to make a comment on the trademark owner’s goods or services.”).
Thus, the Court grants Mossuto’s motion for summary judgment as to Count I.
Finally, because SXU failed to respond to Mossuto’s motion as to Count II, SXU waives any
response. Bonte v. U.S. Bank, N.A., 624 F.3d 461, 466 (7th Cir. 2010) (“Failure to respond to an
argument… results in waiver.”).
Conclusion
For the foregoing reasons, the Court grants defendant’s motion for summary judgment [61].
IT IS SO ORDERED.
Date: 9/16/2022

Entered: _____________________________
SHARON JOHNSON COLEMAN
United States District Judge
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