Free Motion for Summary Judgment - District Court of California - California

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 1 of 26

1 2 3 4 5
6

JAMES P. COLLINS, JR. (SBN 47608) COTKIN & COLLINS A PROFESSIONAL CORPORATION 200 West Santa Ana Blvd., Suite 800 P.O. Box 22005 Santa Ana, CA 92702-2005 Telephone: (714) 835-2330 Facsimile: (714) 835-2209 Email: [email protected] DAVID T. SCHULTZ (MN NO. 169730) JOLYNN M. MARKISON (MN NO. 0386876) JOHN K. DARDA (MN NO. 0388298) MASLON EDELMAN BORMAN & BRAND LLP 3300 Wells Fargo Center 90 South 7th Street Minneapolis, MN 55402-4140 Telephone: (612)672-8200 Facsimile: (612) 672-8397 Email: [email protected] [email protected] [email protected] Attorneys for Plaintiffs STEVEN SCHUSSLER and SCHUSSLER CREATIVE, INC. UNITED STATES DISTRICT DISTRICT COURT

7 8 9 10 11 12 13 14 15

SOUTHERN 16 17 18 19 20 21 22 23
24 25

OF CALIFORNIA (AJB)

STEVEN SCHUSSLER and SCHUSSLER CREATIVE, INC., Plaintiffs, vs. J. FRANK WEBSTER, aka "MR. HOT DOG," aka "UNCLE FRANK, " Defendants.

Case No. 07CV2016IEG

PLAINTIFFS' STATEMENT OF UNDISPUTED FACTS IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT DATE: August 18, 2008 TIME: 10:30 a.m. COURTROOM: 1

III III III III III

26 27
28

220303-l.wpd

-1-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 2 of 26

1 2 3 4 5 6 7

SUMMARY

This case involves a dispute over the right to use the name "Hot Dog Hall of Fame." On one hand, Mr. Schussler has

registered that name with the United States Trademark and Patent Office in conjunction with a chain of restaurants he is developing. On the other hand, Mr. Webster has long used

that name to refer to his personal collection of hot dog

8 memorabilia and his various non-commercial activities. 9 Mr. Webster first came up with the name "The Hot Dog

10 Hall of Fame" in or around 1982 when he was inspired by a 11 menu at a Denny's®Restaurant that described its hamburgers 12 under the banner "The Hamburger Hall of Fame." (Deposition

13 of J. Frank Webster ("Webster Dep.") at 87:20-88:12.} As its 14 self-proclaimed "President," Mr. Webster alternately

15 describes "The Hot Dog Hall of Fame" as "a loose affiliation 16 of hot dog lovers" and as the activities which he conducts 17 18 for his and their amusement. 262:14.)
(Id. at

59:17-60:4, 261:9-

Mr. Webster hopes to one day open a restaurant, hall of fame, gallery, and gift shop, as the

19 museum,

20 permanent embodiment of "The Hot Dog Hall of Fame." (Id. at 21 22 71:8-10, 58:23-59:4.) He has not yet done so due to his lack of monetary resources and his inability to attract investors
(Id. at 71:14-18.)

23 willing to fund his dream. 24 25 26 27

Thus, despite

the persistence of his hobby, Mr. Webster has never operated any commercial enterprise using the name "Hot Dog Hall of Fame," nor has he ever applied to register a trademark for "Hot Dog Hall of Fame." (Id. at 61:21-62:10.) Nonetheless,

28 Mr. Webster asserts that he has an exclusive common law right

220303-1.wpd

-2-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 3 of 26

1

to that name by virtue has conducted.

of the non-commercial

activities

he

2
3
4

(Id. at 61:7-14.)

I.

MR. WEBSTER'S "HOT DOG IlALL OF FAME"

A.

Mr. Webster's Memorabilia Collection
between 1976 and 1979, as a result of his

5 6 7 8
9

Sometime personal

love of and fascination

with hot dogs, Mr. Webster (Webster Dep. at 53:23was a friction-drive toy

began collecting hot dog memorabilia. 54:8.) The first item he obtained

car catering By 1979, Mr.

wagon with a hot dog on top. Webster had amassed 800

(Id. at 54:1-3.) of hot dog or

10
11

pieces

memorabilia, acquaintances,

most of which including contributor

were given

to him by friends

12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

by his wife Darla, whom he credits to his collection. (Id. at 76:17-

as the biggest 18. ) Today, sorts of

Mr. Webster's items, hot

hot dog collection toy coin model

comprises

all

including dog shaped

Oscar-Meyer dog shaped

Wienermobiles, telephones, plates hot

banks,

hot

hot dog themed

jewelry

and clothing, shakers and

decorative

and platters, shaped

salt and pepper and music

and cookware, signage and

dog

radios

boxes,

statues from hot dog stands that have gone out of business. (Id. at 77:23-79:1.) the general public This collection and Mr. has never been open to has never charged

Webster

admission

to view it. the last

(Id. at 54:14-55:10, time Mr. Webster

53:23-25.) has even seen the (ld.

In fact,

entire collection was in 1979 at his home in Santa Clara. at 55:5-16.) boxes. Since 1979, the collection

has been stored in pieces of

(Id. at 58:1-6, 75:20-76:14.)
-3-

Miscellaneous

220303-l.wpd

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 4 of 26

1 2 3 4
5 6

the collection at a hot dog

have been displayed stand operated by

only twice: once in 1983 Mr. Webster, called Hot

Diggity called Center

Dogs, and once in 1996 at a pop culture the "Hall of Fame Hall of Fame," for the Arts in San Francisco.

art exhibit

at the Yerba Buena This kitsch pop-art kinds of hall's of Hot Dog 58:8no in he

exhibit exhibited fame, including

items from 54 different about 50 pieces

7
8

from Mr. Webster's

Hall of Fame collection.
II.).
I

(Webster Dep. at 81:17-20, Mr. Webster

9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

(Id. at 57:14-15,

80:20-22.)

received

compensation the exhibit,

from the Yerba Buena Center for participating nor was he reimbursed for any expenses

incurred in transporting 16. ) In November collection order

his items to the show.

(Id. at 81:3-

of 2006, Mr. Webster James being sold

sold his entire hot dog for one dollar, (Id. at Webster in

to his brother it from

Webster seized. it,

to protect

73: 1-17, retains

74:21-23.} possession

Despi te

having

Mr.

of the collection,

which he stores at his home in Mr. Webster believes

EI Cajon, California.

(Id. at 73:3-7).

his brother would "donate" it back to him if Mr. Webster were able to find a permanent
B.

home for it. Commercial

(Id.)

Mr. Webster's

Activities operated a series of His first

Between unsuccessful

1976 and 1983, Mr. Webster

hot dog stands in central California. motorcycle

hot dog stand was a three-wheeled

equipped with a

1 The exhibit included items from, for example, the Poultry Hall of Fame, the Burlesque Hall of Fame and the International Towing and Recovery Hall of Fame, to name a few (Id., Ex. 17).

220303 -1. wpd

-4-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 5 of 26

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

hot

dog steamer

and an ice chest.

(Webster

Dep.

at 26: 12-

27:5.) totaled Webster

For approximately his motorcycle

two weeks-until and put him

a traffic accident of business-Mr.

out

sold hot dogs and canned soft drinks under the name Franks" to customers at car dealerships California. business was was on

"Frank's Quality

EI Camino Real in San Jose and Sunnyvale, 27:8-13, called 28:15-17, "The Hot 29:2.) Hall This of first

(Id. at
never phrase or

Dog

Fame,"

nor

that

associated with the business through signage, advertising, any other means.

(Id. at 29:5-6.)
at operating This and

In 1978, Mr. Webster made a second attempt a mobile hot dog sales business.

(Id. at 29: 7-12. )

time, he called it "The Great American Hot Dog Machine," rather than using a motorcycle, Mr. Webster

sold hot dogs with a hot 17-23). for Mr. of or

from the back of a Datsun pick-up dog steamer Mr. Webster and an ice chest. 2 operated this

truck outfitted

(Id. at 29:11-12,
hot dog

second

stand

approximately Webster Fame," never nor

six to eight months. called he this use business that

(Id. at 30:18-19.)
"The on Hot any Dog Hall

did

phrase

signage

2Mr. Webster generically refers to each iteration of his mobile hot dog sales vehicle as "The Great American Hot Dog Machine." For example, Mr. Webster refers to his threewheeled motorcycle, from which he sold hot dogs under the name "Frank's Quality Franks," as The Great American Hot Dog Machine No. I, and the Datsun pick-up truck as The Great American Hot Dog Machine No.2. (Id. at 26:8-13, 29:7-12.) Between 1982 and 2006, Mr. Webster has sporadically worked on building four more great American hot dog machines. (Id. at 30:20-31:9 (machine no. 3 in 1982), 31:25-32:9 (machine no. 4 in 1985), 40:21-41:24 (machine no. 5 circa 1988), 48:15-50:24 (machine no. 6 in 2006 - also called "the Woodie Weenie Wagon").) Mr. Webster never completed any of these four vehicles nor did he ever sell hot dogs from them. (Id.) Mr. Webster never called any of the vehicles The Hot Dog Hall of Fame. (Id.)
-5-

220303-1.wpd

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 6 of 26

1

advertising Machine." For

associated

with

"The

Great

American

Hot

Dog

2
3
4

(Id. at 29:24-30:1.)
approximately six months in 1983, Mr. Webster

operated a 23-seat hot dog stand called "Hot Diggity Dogs" on EI Camino Real in Santa Clara, 33:9-20.) building Mr. Webster in which California.

5 6 7 8
9

(Id. at 35:8-13,

did not own the hot dog stand or the but merely "took it over"

it was located,

from the owner. dog stand,

(Id. at 33: 15-35: 7.) While operating the hot
displayed approximately 40 items of

Mr. Webster

10

hot dog memorabilia he placed

on one interior wall of the restaurant, a hand-painted sign that said "The Hot 37:6-8.) The hot dog

11 over which

12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Dog Hall of Fame."

(Id. at 36:21-22,

stand itself was not called Mr. Webster displayed did not charge

"The Hot Dog Hall of Fame" and customers to see the memorabilia

at the hot dog stand. Hot Diggity Dogs

(Id. at 36:18-20, 37:9~13.)
"barely paid the bills."

Ultimately, Because

this restaurant

"didn't turn out to be worth doing," when the building Mr. was sold in has not the

Mr. Webster

ceased operations 33:12-14,

1983.

(Id. at

34:6-7.)

Webster

operated any hot dog stand-either

mobile or stationary-in

quarter century since Hot Diggity Dogs went belly-up. 52:24-53:20.) c. Mr. Webster's Other Activities

(Id. at

Over the past twenty-five in several non-commercial the "true"

years, Mr. Webster has engaged activities Hall that he claims

constitute speaking,

"Hot Dog

of Fame."

Generally categories:

these activities

fall into two broad

(I) dissemination

of hot dog related

"news" and information,

220303-1.wpd

-6-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 7 of 26

1 2 3 4 5 6
7

and (2) ceremonial duties designed to promote interest in hot dogs. In addition, Mr. Webster has ideas for future hot dog

items that might one day contribute to uThe Hot Dog Hall of Fame," specifically the creation of a hot dog vehicle. The

thrust of Mr. Webster's activities is to amuse persons who share his passion for all things hot dog.
1.

Dissemination

of Hot Dog News and Information

8 9

Mr. Webster has disseminated limited hot dog news and information through various media outlets. First, Mr.

10 Webster has sporadically produced a newsletter, dubbed uThe 11 Frankfurter Chronicles, The Newsletter with Relish." (Webster at 105:7-25.) to In addition, Mr. Webster who receive the has sent

12 Dep. 13

uWeenieGrams"

persons

Frankfurter Mr. Webster

14 Chronicles. (Id. at 115:14-17, 116:15-117:10.)

15 also maintains a website, where he posts hot dog recipes, 16 personal anecdotes, photos of pieces from his collection, and 17
18

other hot dog oddities that are not a part of his collection.
See

http://www.thehotdoghalloffame.com.Finally.Mr to write a book, which will

. Webster

19 20 21 22 23 24 25

is attempting

incorporate

elements and excerpts from his various newsletters. (Id. at 101:15-20, 103:22-105:6.) In Mr. Webster's words, the Frankfurter Chronicles is Uthe official organ of The Hot Dog Hall of Fame," and Uit speaks for us and our pursuit of The Hot Dog Hall of Fame." (Id. at 108:15-23.) The newsletter generally contains Mr.

26 Webster's commentary on movies and television shows that 27 28

220303-1.wpd

-7-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 8 of 26

1 2
3 4

contain references

to or relate in some way to hot dogs,3 hot of family events and activities national that

dog recipes, narratives take place

in July during

hot dog month,4 letters

from friends,

as well as news and jokes.' (Id. at 107:5-24.) his first newsletter sometime in early

5
6 7 8

Mr. Webster produced
1996, and printed

a total of 24 issues at irregular intervals (Id. at 105:12-19,
114:25-115:6).

from that time until 1998. In 1998, Mr. Webster the expense

stopped printing

the newsletter health.

due to (Id. at

9
10

of mailing

it and due to poor

11
12 13 14 15 16 17 18 19 20 21

3 For example, in the July 2004 edition of the Frankfurter Chronicles (Id., Ex. 13 at p. DEFT 000007) Mr. Webster reviewed an episode of The Jimmy Kimmel Show:

Did you happen to catch the recent episode of The Jimmy Kimmel Show where his Uncle Frank auditioned to take over the role of spokesman for Ball Park's Grill Master Franks? That's the same product that their current spokesman (Larry Jo Campbell) promotes with the "Be big, be meaty, be frank" commercials. Larry Jo was caught purely he says that they've have a guest on the show that night (which I by accident as I'm never up that late) and they have already shown 5 of 33 commercials already filmed for the campaign.

It was all an elaborate ruse and they "Punk'd" Jimmy's Uncle Frank and made him think he was going to get the job (he was horrible at it). 4Similarly, in the July 2004 edition of the Frankfurter Chronicles, Mr. Webster described his family's activities during National Hot Dog Month (Id., Ex. 13 at DEFT 000011): It was a very low key National Hot Dog Month for us this year, with half a dozen WeenieGrams, Frankie Awards (very late this year, on the 15th of July), the Italian sausage pizza experiment on the 3rd (for some strange reason, the Boy had never had a sausage pizza before), we did the Great Johnsonville Brat Experiment (the Boy had to admit that he liked this despite his aversion to onions in almost any form and his general ambivalence to the great ales of the world, unlike his dear 01' dad), on the 4th after watching the Nathan's Contest, we passed along several articles (courtesy of Alan Pesetsky), and a great photo courtesy of Marti Marek, one of Uncle Frank's buddies from the war, a teaser for this issue~"
-8-

22
23 24 25 26 27 28

220303-1.wpd

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 9 of 26

1 2 3 4 5 6

114:9-22.) In 2003 Mr. Webster resumed the newsletter, distributing it monthly bye-mail. Mr. Webster boasts
(Id. at 110:1-8, 114:9-10.)

Although the

200

readers

of

his

newsletter,

recipients are primarily his friends and family, his college roommate, and individuals to whom Mr. Webster sends

7 unsolicited copies of the newsletter. (Id. at 108:23-110:8.) 8 9 10 The newsletter is sent by invitation only, and is not

available to the general public. (Id. at 60:17-18, 110:1825). Further, the newsletter is not of a commercial nature.

11 Mr. Webster does not sell advertising space or run classified 12 ads in the newsletter, nor does he sell subscriptions to the The words

13 newsletter itself. (Id. at 114:6, 116:2, 116:13.) 14 15 16

"The Hot Dog Hall of Fame" appear on the newsletter only sporadically. (Id. at 113:21-114:3.) In addition to the Frankfurter Chronicles, in about 1996

17 Mr. Webster started sending "WeenieGrams" to persons who also 18 19 receive the Frankfurter Chronicles to Mr. newsletter. Webster,
(Id.

at

116:15-117:10.)

According

he

sends

20 WeenieGrams (which are short, mass e-mails) to announce time21 22 23 24 25 26 27
28

sensitive hot dog news. (Id.)

For example, Mr. Webster once

used a WeenieGram to announce that a hot dog eating contest would be broadcast on television the following day: "Hey, don't forget to watch the Nathan's Hot Dog Eating Contest tomorrow!"
(Id.)

Mr. Webster only sends WeenieGrams on a

"very sporadic" basis and, like the Frankfurter Chronicles, entirely discontinued sending them between 1998 and 2003.
(Id.

at

118:22,

117:10-14.)

Mr.

Webster

distributes

220303-l.wpd

-

9-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 10 of 26

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

WeenieGrams

for free and the words "The Hot Dog Hall of Fame" in them. (Id.) website added has that an online component "store," sometime Mr.

seldom appear Although Mr. Webster

Mr. Webster's only recently

during the second half of January Webster counsel that in created this "store"

2008. (Id. at 124:7.) he heard

because

Plaintiffs'

say to the Court during the early neutral evaluation order use. to have trademark rights one must four have a

commercial listed called

(Id. at

125:6-15.)

There

are

items

as being

for sale on the store webpage:

(1) a movie

The Weenie Roast Massacre;

(2) a book called 50 Ways

to Top a Hot Dog;

(3) "The Hot Dog Hall of Fame" t-shirts; (Id. at 121:20-

and (4) "The Hot Dog Hall of Fame" ball caps. 125:4.) Although Mr. Webster has

lists these items as being for from the website since

sale, Mr. Webster starting the online

sold nothing (Id.)

store.

Further, with respect to the movie and book, Mr. Webster is not operating inventory them. as a retailer. (Id.) He does not have an

of the movie

and book items and he does not sell store merely contains links to other

(Id.) His online operated

websites

by the creators

of the book and the movie (Id.) and baseball caps, Mr.

where the items can be purchased. With respect to the t-shirts

Webster has not even sold one of these products. ordered sixteen screen-printed Hot Dog Hall of Fame" printed shirts sold that he ordered, (Id.) Mr.

Mr. Webster

t-shirts that have "Approved: on them. (Id.) Of the sixteen

Mr. Webster Webster gave

has given away six and shirts to his brother

none.

220303-1.wpd

-10-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 11 of 26

1

James Webster,

his neighbor

Neil,

"Sam the Cooking Guy"

(who

2 3 4
5 6 7 8
9

is the host of a local cooking friend, "Hamburger" Harry Sperl. ordered 12 embroidered ball

program),

and Mr. Webster's Mr. Webster store. (Id.)

(Id.) Similarly,

caps from a local

Just as with the t-shirts,

Mr. Webster has not sold any hats each to his brother James, his

but has given away three-one neighbor

Neil, and his friend Alan Pesetsky.

(Id.)

Though he claims to be holding items out for sale on his website, Mr. Webster stated that he has deliberately keep his website tried to

10

from the general public by not listing the search engines, (Id.

11 name "The Hot Dog Hall of Fame" with internet

12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

in order to keep the public from linking to his website. at 110:10-113:21.) Finally, book, entitled This book since 1994 Mr. Webster has been working

on a

"Hot Dogs in a Cold World." primarily of

(Id. at 99:10-16.) from past

consists

excerpts

newsletters. eventually dog

(Id. at 100:11-12.)

In addition,

the book will

include hot dog recipes, jokes, and a Mr. list Webster's of songs

"certain elements of hot reviews which Mr. of movies and calls

humor,"

television, "Tubesteak claims

Webster

Tunes." the

(Id. at 104:8-13.) book is 75 to

Although

Mr. Webster its

that

80 percent

complete,

various components have not been edited or assembled. 104:3-8)

(Id. at

Various parts of the book are "in files allover," of "pieces of this, pieces of that." (Id.) Mr.

and consist Webster

has not yet found a publisher

for the book.

(Id. at

103:8-12.)

220303-1.wpd

-11-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 12 of 26

1

2.

Ceremonial

Activities activities include (1) issuing

2
3

Mr. Webster's hot dog awards;
(2)

ceremonial appearing

in a white tuxedo with his wife at "grand with stand for and

4
5
6

(who wears a hot dog costume and waves at traffic) openings" customers; operators electronic sending of
(3)

new

hot

dog

stands

and

shaking hot

hands dog

offering seek his

free

advice

to any and hot
(4 )

7 8
9

who

counsel; that

looking themes

greeting

cards

have

dog

them to his friends during July

and acquaintances. (National Hot Dog Month),5 Mr. he has named "The Frankie.,,6

10

Every year,

11 Webster

issues an award,

which

12 13 14 15 16 17 18 19 20 21
22

The Frankie Award is embodied a plastic gold-colored

in a statuette that consists of The words

hot dog on a wooden base. on a plaque None attached

"The Frankie" (Webster Dep. words

are printed at

to the base. have (rd.) given to the

93: 18 -22. )

of the

awards

"The Hot Dog Hall of Fame" printed to Mr. Webster, in the believes The

on them. is

According recognize 87:7-8.)

Frankie of hot

"excellence Mr. Webster

field

dogs."

(rd. at

that giving out the award is of "The Hot Dog Hall of does. these It appreciates

one of the most important Fame:" "that's what

activities of fame

a hall

excellence

in the field.

It celebrates

individuals." "The [Hot Dog] [It

23 24 25 26 27 28

(rd. at 87:16-18.)

According

to Mr. Webster,

Hall of Fame is The Frankie Award for Hot Dog Excellence.

5 Mr. Webster estimates that he conducts 70 percent of his activities during national hot dog month. (Webster Dep. at 262:15- 23.) 6 A photo of The Frankie Ex. 13, p. DEFT 000012. can be seen at Webster Dep.,

220303-1.wpd

-12-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 13 of 26

1

is t]he people what it is." (his mother,

who have made the wonderful (Id. at 59:7-10.) brother, wife,

world of wieners and his family who should

2 3 4
5 6 7

Mr. Webster and son)

decide

receive a Frankie Award. Webster has bestowed such as

(Id. at 94:20-21.) 37

Since 1982, Mr. in to ad-hoc dog

approximately outstanding

Frankies

categories history, year. most

contribution

hot

artist

of the year,

and push

cart operator

of the

8
9

(Id. at 86:14-16, 93:11-12, of the awards

93:20, 89:10-14.) presented for

However, "hot dog that

are generically

10

excellence."

(Id. at 89:16-20.) bestows varies

The number

of awards

11 Mr. Webster

from year to year, and there was (Id.

12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

at least one year when Mr. Webster made no award at all. at 92:5-10.) Several Webster's Frankie Award recipients are members of

Mr.

family,

some are operators

of hot dog stands, and

still others are people Mr. Webster has admired but has never been able to locate. one year Mr. Webster (Id. at 94:2-4, 92:11-14.) heard about a lottery For example, who had store.

winner

bought a winning ticket and a hot dog at a convenience (Id. at 90:3-7.) but unfortunately,

Mr. Webster wanted to award him a Frankie, could not locate him. (Id.) Mr. Webster the former lottery

also wanted to give a Frankie to Takeru Kobayashi, hot dog eating contest champion, but, like him.

the

winner, 93:2.)

Mr. Webster Mr. Webster

was unable awarded

to locate

(Id. 92 :20-

a Frankie

to a friend he calls (Id.

"Mr. Potato Head" for giving Mr. Webster a toy figurine. at 90:9-91:1.) Mr. Webster explained:

"Mr. Potato Head gave

220303-1.wpd

-13-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 14 of 26

1 us the Frankie Frank, which is Mr. Potato Head's mutant 2 3
4 5 6

wiener cousin."

(Id. at 90:9-91:1.)

The first seven times that Mr. Webster presented his Frankie Awards (from 1982 to 1989), he hosted a 4th of July barbeque at a public park for his friends. (Id. at 96:1098:17.) Mr. Webster did not print flyers or otherwise

7

advertise the barbeque.

Though the public was not invited, (Id. at 98:20-

8 9 10 11 12 13

several curious on-lookers did happen by. 99:7.)

Mr. Webster has not held an awards party since 1989.

(Id. at 96:10-25.) Mr. Webster also claims that he performs certain other uofficial" duties on a voluntary basis. (Id. at 157:22-25, 158:15-20.) These duties have included coaxing his wife to

14 don a hot dog costume and wave at traffic during ugrand 15 openings" of new hot dog stands while Mr. Webster, wearing a 16 white tuxedo, shakes hands with customers. (Id. at 151:5-11, 17 18
19

160:6-12.)

He has also called local community newspapers to

encourage them to send reporters to cover the grand openings. (Id.) though These ceremonial duties are strictly voluntary, and Mr. Webster has attended Ufour or five" grand

20 21 22 23 24 25 26

openings, he has not attended one since 2003. (Id. at 159:37.)

In addition, Mr. Webster offers free advice to any hot dog stand operators who seek his counsel and looks for

electronic greeting cards that have hot dog themes (e.g., UHappy Hallowienie," uWiener Wonderland") and sends them to

27 his friends and acquaintances. (Id. at 158:8-20, 262:2-12.) 28

220303-l.wpd

-14-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 15 of 26

1

3.

The Hot Dog Vehicle

2

Mr. Webster has dreamed of building a hot dog shaped

3 vehicle, which he would use to promote his restaurant, when 4
5 6

and if it he opened one. (Webster Dep. at 58:20-22.)

His

plan was to build a hot dog shaped body out of fiberglass and install a Volkswagen stock engine-it would be called the "Lamborweenie." (Id. at 128:14-130:25.) The Lamborweenie

7
8

would seat two, and Mr. Webster envisioned himself giving rides to customers and members of the press. (Id. at 130:1725.) Mr. Webster also dreamed of one day challenging the

9 10

11 Oscar Meyer Wienermobile to a drag race. (Id. at 130:6-8.) 12 In 1985 Mr. Webster began building the Lamborweenie, but

13 abandoned the project in 2003 due to a lack of funding. (Id. 14 at 31:21-32:8, 130:13-16.) 15 16 As detailed in the preceding paragraphs, Mr. Webster claims that the activities he conducts as "The Hot Dog Hall He has described

17 of Fame" are broader than his collection. 18 19

"The Hot Dog Hall of Fame" as a "loose affiliation of hot dog lovers."
(Id. at

53:19-24.)

Though it is difficult to

20 understand what Mr. Webster's "Hot Dog Hall of Fame" is, it 21 22 is easy to see what it is not. of business. It is not any recognized form

Mr. Webster's "Hot Dog Hall of Fame" does not
(Id. 63:21-23.)

23 have paid employees. 24 25 26 27 28

It has never filed

either state or federal income taxes nor does it have a California sales tax registration certificate. (Id. at 63:1114, 18-19.) Mr. Webster has never had any earnings

conducting business as "The Hot Dog Hall of Fame." (Id. at 63:14-17.) "The Hot Dog Hall of Fame" is not a non-profit

220303-l.wpd

-15-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 16 of 26

1 2
3
4

organization.

(Id. at 151:4.) plan.

It does

not have

a written Mr.

business plan or marketing Webster has never operated

(Id. at 64:6-7, 21-23.) gallery,

a restaurant,

or museum "The Hot

called "The Hot Dog Hall of Fame." Dog Hall of Fame" has no commercial II. Mr. Schussler And Schussler Use Of UHot Dog Hall Of Fame"

Thus, in effect, presence

5

whatsoever.

6
7 8
9

Creative,

Inc.'S Commercial Inc. (collectively specialize in the and "T-

Mr. Schussler and Schussler Creative, referred to as of "Schussler innovative Creative") concepts

10 11 12 13 14 15 16 17
18

development entertainment Rex,"

for

restaurants Cafe" to be and

venues

such as "The Rainforest Creative has come

for which

Schussler

known. ~~ 1Chief

(Declaration
4. )

of Steven Schussler the

("Schussler Decl."), of the Board and

Mr.

Schussler, of Schussler

Chairman

Executive

Creative,

Inc., is the main creative these innovative restaurant (Id.) in that that are (Id. at

force responsible concepts

for generating

and turning

them into actual businesses. business model is unique

Schussler the restaurants very expensive ~ 14.)

Creative's

19
20

it designs are elaborate attractions to construct and to initially operate. are often located venues

21
22

The restaurants

in large shopping Cafe In

malls or other expensive at The Mall of America order to be

such as the Rainforest Minnesota. Creative (Id.)

23 24 25
26

in Bloomington, Schussler

profitable,

must

secure

financing in the form of tenant allowances developers at ~ 15.) or other favorable Tenant allowances beneficial

from shopping mall arrangements. (Id.

27
28

are low-interest

or no-interest

loans or grants provided tenants, which these

by developers tenants -16then

to certain preferred use to finance the

220303-1.wpd

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 17 of 26

1

construction
(Id.

and opening

of the expensive

retail

concepts.

2 3
4

at ~~ 15, 16.) In 1998, Schussler Creative began research and

development

on a new restaurant at ~ 17.)

and retail In developing over

store called HOT Hot Dog Hall of building a

5 6 7 8

DOG HALL OF FAME. (Id. Fame, Schussler of the Minnesota. and

Creative

spent

$200,000

prototype Valley,

restaurant
(Id.

at its headquarters ~ 6; Pl.' s Ex. are 1.) to

in Golden Potential a weekly

at

9 10
11

investors

business

partners

invited

Ushow" which consists functioning each show restaurant costs

of turning with

the prototype
(Id.)

into a fully Producing labor, food

a test menu. and $1,000 and

12 13 14 15 16 17 18 19 20 21
22

between and

$750

for

supplies,
(Id.)

utili ties,

set -up

break-down

expenses.

Major hot dog and condiment Beef, Inc. and Hunts, Brothers,

brands,

such as Chicago-

based Vienna brands

Inc., as well as gourmet products with

such as Allen

send complementary

for use in the shows. Schussler included Creative research Volunteer Creative on in

These companies an effort to

are negotiating have their

products Schussler market
(Id.)

HOT DOG HALL OF FAME'S menu. uses testing these menu weekly items shows on

(Id.)

also by

to

conduct groups.

focus

participants

are paid which

$10 to $20 to sample Schussler Creative

foods

23
24

and to complete business partners menu.
(Id. )

a survey,

and its

then use to develop Hot Dog Hall of Fame's

25 26 27 28

In 2005, Schussler Creative hired Cunningham Architects, Inc. to help develop Hot Dog Hall of Fame's trade dress and branding.
(Id.

at ~ 7; PI.'s Ex. 2.)

The two companies

have

220303-1.wpd

-17-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 18 of 26

1 2 3 4 5

thereafter engaged in a collaborative design review process, which includes drafting designs of the exterior and interior spaces and developing Hot Dog Hall of Fame characters such as an anthropomorphic hot dog, and mustard and ketchup

characters designed to appeal to children and to strengthen identification.
(Id.)

6 brand

These

characters

will

be

7 displayed prominently on building signage and facades and in 8 printed material such as brochures, menus, and advertising.
9 (Id.)

This effort to build a brand is essential to creating To date, Schussler

10 a successful restaurant concept. (Id.) 11

Creative has spent $150,783 on design review for Hot Dog Hall

12 of Fame. (Id.) 13 14 15 16 Hot Dog Hall of Fame will serve gourmet food items including nine varieties of hot dogs, nine varieties of

sausage, varieties of French fries, and nine varieties of dumplings. (Id. at ~ 8.) Hot Dog Hall of Fame will also In order to provide

17 offer 3,700 varieties of mustard. (Id.) 18

such a large variety, Schussler Creative is negotiating the

19 purchase of the Mustard Museum in Mount Horeb, Wisconsin. 20 21 22 23
(Id.)

Integral to Schussler Creative's business concept is the ability to use the name, Hot Dog Hall of Fame, in which Schussler Creative has invested considerable time and money.

24 As part of its effort, Mr. Schussler applied for and obtained 25 U.S. Trademark Application Serial No. 78591560 for the Hot 26 Dog Hall of Fame trademark for restaurant services, retail 27 28 store and wholesale distributorship services and U.S.

Trademark Application Serial No. 77262782 for the ART OF

220303-1.wpd

-18-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 19 of 26

1 2
3

MUSTARD trademark for mustards, services
Ex. 3.)
7

dipping sauces and restaurant

for consumption

on the premises.

(Id. at ~ 9; PI.'s

4 5 6 7 8 9 10 11 12 13 14 15

In May 2007, partnership Development, restaurants

Schussler with

Creative shopping

signed mall

a $100 million developer Red

agreement

LLC ("Red Development") including

to develop ten new theme

Hot Dog Hall of Fame. Creative

(Id. at ~ 10.)

Under this contract Schussler line of credit. Creative's

secured a $20 million like all of Schussler representing that

(Id.)

This contract,

contracts,

contains a provision

Schussler Creative owns all rights, trademarks, the concepts it is developing.

or patents in

(Id. at ~ 9.)
this

Hot Dog Hall of Fame will open its first restaurant summer at Red Development's million, 1.2 million

Legends at Village West - a $500 mall in Kansas City.

sq. ft. shopping

16
17 18 19

(Id. at ~ 11.)

Hot Dog Hall of Fame will seat 50 customers customers.

in the dining room and will also serve drive-thru

(Id.) The second Hot Dog Hall of Fame will open in 2009 at
Red Development's outdoor mall Legends just at Sparks Marina of Reno, - an 800,000 sq.

20ft. 21 22 23 24 25 26 27 28

outside

Nevada.

(Id.)

In

order to open these restaurants and Red Development have

and malls, Schussler Creative into licensing financing agreements to

entered

with each city to secure

the public

necessary

7 Application No. 78591560 ("Hot Dog Hall of Fame" word) was approved subject to demonstration of actual use in commerce on or before March 14, 2009. Since Schussler Creative's first restaurant is scheduled to open in Kansas City in summer 2008, this condition will be fulfilled. Similarly, Application No. 77328889 (Hot Dog Hall of Fame design) was published for opposition on May 7, 2008.

220303-1.wpd

-19-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 20 of 26

1 2 3 4 5 6

fund the massive shopping mall construction projects. (Id. at ~ 16.) In addition to installing Schussler Creative restaurant concepts at its Legends mall projects, Red Development is currently brokering contracts to install Hot Dog Hall of Fame restaurants at (1) the Meadowlands Xanadu, a six-story, 4.8

7 million sq. ft. shopping and entertainment complex in East 8 Rutherford, New Jersey; 9 world's 10 second largest (2) the Mohegan Sun Casino, the casino located in Uncasville,

Connecticut; and (3) Harrah's Casinos at its Las Vegas and
(Id. at ~ 11.)

11 Biloxi, Mississippi locations. 12

All told,

Schussler Creative and Red Development plan to open 200 units

13 of Hot Dog Hall of Fame over the next ten years. (Id. at ~ 14 15 10.) Schussler Creative has contracted with several other

16 well-established businesses in developing Hot Dog Hall of 17 18 19 20 21 22 23 24 25 26 27 28 Fame. It has contracted with Levy Restaurants, Inc.,

("Levy") to scout locations and market Hot Dog Hall of Fame to large shopping centers and entertainment venues, as well as to develop the Hot Dog Hall of Fame concept and menu. (Id. at ~ 12; PI.'s Ex. 4.) and sports Levy, a Chicago-based restaurateur generated $1.17 billion in

concessionaire,
(Id.)

revenues in 2006.

Levy and Schussler Creative are

currently in license negotiations with Olympia Entertainment, Inc., concessions operator for the Detroit Red Wings at Joe Lewis Stadium and with Delaware North Companies, concession operator for the Detroit Tigers at Comerica Stadium to

install Hot Dog Hall of Fame restaurants at those locations.

220303-1.wpd

-20-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 21 of 26

1 2 3 4 5
6

(Id.) In promoting has organized a Hot Dog Hall media of Fame, that Schussler has Creative

campaign

successfully

attracted media. III.

the attention

of the industry press and mainstream

(Id. at ~ 13; PI's Ex. 4.) The Current Dispute

7
8
9

Beginning campaign business.

in

June

2007,

Mr.

Webster

embarked

on

a

to ruin Schussler

Creative's

Hot Dog Hall of Fame sent an e-mail immediately to

On June 10, 2007, Mr. Webster demanding that Mr. Schussler

10 11 12 13 14
15

Mr. Schussler

cease

and desist using the name Hot Dog Hall of Fame. Webster Dep. at 172: 9-13.) In this

(PI.'s Ex. 7; . Webster to

e-mail.Mr his

threatened

to sue Mr.

Schussler,

stating (Id.) media

intention

Uturn the lawyers Mr. Webster

loose on him." contacted alleging property

Shortly

thereafter, and and Fame

also companies

organizations name, of

16 17 18 19 20 21 22 23
24

hospitality related belonged stolen

that of

the concept, Hot Dog Hall

intellectual exclusively concept

to him, and that Schussler of the Hot Dog Hall

Creative had from him.

the

of Fame

(PI.'s Ex. 7; Webster In response, Creative's

Dep. at 171:18-172:8.)8 dated June 11, 2007, Schussler

by letter

legal counsel

contacted

Mr. Webster

and informed

him that Schussler

Creative was the lawful owner of the u.S. for Hot Dog Hall of Fame, and requested

Trademark Application

25 26 27 28
8 The media organizations and hospitality companies to which Mr. Webster made these allegations included Host Marriott, Levy Restaurants, Success Magazine, The Harford Courant, The Rocky Mountain News, The Chicago Sun Times, The San Diego Union Tribune and Chain Leader Magazine. (PI.'s Ex. 7; Webster Dep. at 171:19-172:13.)

220303-1.wpd

-21-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 22 of 26

1 2 3 4 5 6

that

Mr.

Webster

stop

sending

false,

misleading,

and

defamatory statements regarding Schussler Creative. (Pl.' s Ex. 8; Schussler Decl. at ~ 23.) In the letter, Schussler

Creative's counsel explained that "it is well-settled law that trademark rights are established only through use for an actual product or service. Such use must be genuine for

7 products or services offered to the public, and not a mere 8 fantasy or ambition to launch a business at some future

9 date." (Pl.'s Ex. 7.) 10 In an edition of his newsletter dated June 17, 2007, Mr.

11 Webster described his intention to damage Schussler Creative, 12 and stated that he planned to "poison the well" by contacting 13 Schussler Creative's current business partners, potential 14 business associates, and the media to accuse Schussler

15 Creative of theft of intellectual property and to threaten 16 legal action. (Pl.'s Ex. 10 at 3.) In this same newsletter,

17 Mr. Webster posted a copy of a letter he had previously sent 18 to one of Schussler Creative's business partners, in which

19 Mr. Webster had threatened: "be advised that we plan to first 20 blacken both of your eyes (yours and Mr. Schussler's)

21 professionally, first in the papers and on TV, then we will 22 23 24 25 26 see you in court." (Pl.'s Ex. 10 at 5.) In September, 2007, undeterred by the letters from

Schussler Creative's legal counsel, Mr. Webster began to contact Schussler Creative's business partners directly for the express purpose of disrupting Schussler Creative's

27 business. (Webster Dep. at 184:22-25.)

In an e-mail to Red

28 Development dated September 17, 2007, Mr. Webster stated that

220303-1.wpd

-22-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 23 of 26

1 Mr. Schussler was a "liar," a "thief," and a "con man," and 2 3 4 5 6 that Mr. Schussler was attempting to steal the concept and name of Hot Dog Hall of Fame from him. (Schussler Decl. at ~~ 24, 27; PI.'s Ex. 11 at 3.) Mr. Webster's entire basis for

calling Mr. Schussler a liar, thief, and con man was his contention that Mr. Schussler did not have the legal right to (Webster

7 use the name Hot Dog Hall of Fame for a restaurant. 8 Dep. at 186:5-11.) 9 10 11 12 13 14

In an e-mail dated September 18, 2007,

sent to Dave Claflin of Red Development, Mr. Webster wrote, "We have also been talking to someone within [Schussler's] organization who tells us that [Mr. Schussler] may not

actually own another one of the concepts he's currently touting." (Pl.'s Ex. 11.) Mr. Webster claimed that he

received this information from an anonYmous source but did to verify the truth of the information before

15 nothing

16 publishing it. 17 Mr. Webster

(Webster Dep. at 187:18-188:14, 192:7-13.) these e-mails to Schussler Creative's

sent

18 business partners with the deliberate intent to stop Hot Dog 19 Hall of Fame from opening and to convince Red Development not 20 21 22 23 24 25 26 27 28 to work with 192:14-17.) That same day, September 18, 2007, Mr. Webster sent a second e-mail.this one to the Mayor and City Council for the in which he again called Mr. Schussler Creative.
(Id.

at 184:22-185:14,

City of Sparks, Nevada,

Schussler a "liar," a "thief," and a "con man," and claimed that Mr. Schussler had stolen the concept and name of Hot Dog Hall of Fame from him. (PI.'s Ex. 11.) Mr. Webster

threatened to go "VERY public" with these accusations and

220303-1.wpd

-23-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 24 of 26

1 2

warned the Mayor and City Council of the ufallout this will cause."
(Id.)

The

e-mail he

also

contained

links to Mr. false and

3 Webster's
4
5 6

website

where

published

similar

defamatory allegations. (Id.) Again, Mr. Webster's intention was to disrupt Schussler Creative's development with the City of Sparks. (Webster Dep. at 203:8-12.) Finally, on October 10, 2007, Mr. Webster posted an edition of the Frankfurter Chronicles on his website in which he repeated his allegations that Schussler Creative had stolen his intellectual property. (Pl.'s Ex. 10.) He again

7
8
9

10

11 expressly stated his intention to damage Schussler Creative's

12 business through extra-legal means: 13
14 15 16

17 18
19

~ we can't possibly hope to prevail in the legal system as he's far more affluent then we are or ever really hope to be. Instead, we are going to upoison the well" so to speak. If he thinks he can steal from us, he had another thing [sic] coming. We didn't spend most of our lives doing this, at enormous expense to ourselves, just to rollover and play dead so he can walk right in and take whatever he wants. every time he uses our name, concept, variants of our URL, etc., we will e-mail these individuals. . and point out that they are being conned . . . and that WE are the Hot Dog Hall of Fame and have fulfilled all of the duties of the Hot Dog Hall of Fame for almost 30 years now.
( Pl. r s Ex. lOa
t

20 21
22

6.) of Mr. Webster's e-mails, Schussler

23 24 25 26 27 28

As

a

result

Creative's business associates, including Red Development and city officials in Sparks, Nevada, became concerned and

expressed their hesitancy to proceed with the relationship. (Schussler Decl. ~ 28.) key representation Their concern directly implicates a by Schussler Creative in its

made

220303 -1. wpd

-24-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 25 of 26

1 2 3 4 5

contracts with its business partners-that Schussler Creative owns the rights to Hot Dog Hall of Fame.
(Id.)

Because

cities finance Red Development's projects with public funds, they are particularly sensitive to any potential liability issues such as those threatened by Mr. Webster. (Id.) Red

6 Development was concerned that the city would refuse to 7 license its shopping mall developments if city officials

8 believe that litigation may arise over the rights to Hot Dog 9 Hall of Fame. (Id.) Consequently, Red Development had stated 10 11 12 13 that it would not finalize the projects until this matter is resolved by court order. Further, Schussler Creative's business niche is a very competitive enterprise involving a high degree of risk to Schussler Creative has succeeded

14 developers. (Id. at ~ 30.)

15 by securing anchor tenant space and the highly-coveted tenant 16 17 allowances that come with it, as well as other favorable financing arrangements.
(Id.)

This has only been possible

18 because of Schussler Creative's excellent reputation as a 19 20 21 successful developer of original restaurant concepts. (Id.) Because of the prospective and uncertain nature of the mall development industry, developers award tenant allowances

22 based entirely on the reputation of franchises. (Id.) 23 24 Schussler Creative's reputation has benefitted

immeasurably from favorable media coverage. (Id. at ~ 31.)

25 However, Mr. Webster's defamatory e-mail campaign has reached 26 many people in the industry and has begun to spark a domino 27
28

effect, blackening Schussler Creative's business reputation.
(Id.)

Schussler Creative's business is beginning to suffer

220303-1.wpd

-25-

Case 3:07-cv-02016-IEG-AJB

Document 32-3

Filed 06/27/2008

Page 26 of 26

1
2

from the delay The delay and

caused

by Mr. Webster's negative and will

interference. impact on

(Id.)

subsequent has

Schussler the

3

Creative's quantity

reputation

continue

to affect

4
5 6 7 8
9

and quality of tenant allowances of securing secure it faces As in the future. a critical

Schussler
(Id.)

Creative

is capable Creative tenant credit. threatened

If Schussler of on these prime of

cannot leases,
(Id. )

number default Mr.

potential noted,

its line

already the first

Webster's

campaign

to halt

restaurant the potential

set to be opened. damages caused by

10 11 12

Unless permanently

enjoined,

Mr. Webster's defamatory mi 11ion. Creative (I d. ) Because

e-mail campaign may well exceed $100 the stakes are so high, Schussler judgment

13
14 15 16 17 18 19 20 21
22

filed this lawsuit to obtain a declaratory

that its use of Hot Dog Hall of Fame does not infringe upon any protectible Hall of Fame. interest Mr. Webster has in the name Hot Dog To date, Schussler Creative has incurred
(Id.

$44,296 in legal fees as a result of this litigation. ~ 29.) DATED: June

at

i7,

2008

JAMES P. COLLINS, JR. COTKIN & COLLINS A PROFESSIONAL CORPORATION T. SCHULTZ DELMAN BORMAN

& BRAND
,

23 24 25 26 27 28 By

~~'.

James P. Collins, Jr. Attorneys for Plaintiffs STEVEN SCHUSSLER and SCHUSSLER CREATIVE, INC.

220303-1.wpd

-26-