Frayne v. Chicago 2016, No. 08 C 5290, Slip Op. (N.D. Ill. Oct. 2, 2009) (Kennelly, J.). 

Judge Kennelly denied defendants Chicago 2016’s and the United States Olympic Committee’s ("USOC") motion for summary judgment regarding its Stevens Act and Anticybersquatting Consumer Protection Act ("ACPA") claims regarding plaintiff’s website. And the Court granted defendants summary judgment as to plaintiff’s federal and state constitutional claims, and plaintiff’s laches defense. Plaintiff registered the domain in 2004, and after the sale, the domain registrar maintained a parking page on the site which included advertising links. Revenues for the links went to the registrar, not plaintiff.

Stevens Act*

The Court held that the parking page was commercial. But there was a question of fact as to whether plaintiff "used" the trademark, in this case the domain, for commercial purposes as required by the Stevens Act. Plaintiff did not receive revenues from the parking page and it was even unclear whether plaintiff knew of the parking page or consented to the registrar’s use of the parking page.

The Court also analyzed whether Chicago 2016 was a mark that fell within the Stevens Act. While city-plus-Olympic-year combinations were not automatically protectable marks within the scope of the Stevens Act, certain city-plus-Olympic-year combinations can acquire an association with the USOC and the Olympics. Chicago 2016 likely gained that association by April 2007 when the USOC picked Chicago as a 2016 Olympic candidate. But the parties did not brief the issue of when the association occurred, so the determination required further proceedings.


The ACPA claim was not ripe for summary judgment because it depended upon a determination that Chicago 2016 was a protected mark pursuant to the Stevens Act which the Court had held required further proceedings. Additionally, there was a question of fact as to whether plaintiff had a bad faith intent to profit from the Chicago 2016 mark.


The Court granted defendants summary judgment on plaintiff’s laches claim. Plaintiff argued that if he had been aware of defendants’ intent to pursue this suit, he would have challenged defendants’ Chicago 2016 mark in the Patent & Trademark Office. But defendants second Chicago 2016 mark application was published concurrently with their first threat to take action against plaintiff. Plaintiff did not, however, challenge that application. No reasonable fact-finder could find plaintiff was prejudiced in those circumstances.

Constitutional Claims

The Court granted defendants summary judgment as to plaintiff’s constitutional claims based upon the Noer-Pennington doctrine. Noer-Pennington protects a party’s right to file a lawsuit so long as the suit is not a sham. Defendants’ claims regarding their Chicago 2016 mark were backed by precedent. Defendants cited several cases in which WIPO ruled for Olympic organizations regarding city-plus-Olympic-year combination marks. 

* For more on the Steven Act, which grants the USOC absolute rights in certain Olympics-related trademarks click here