IP Law Daily, PUBLICITY RIGHTS—W.D. Pa.: Former Steeler’s ‘home field’ is proper forum for claims against equipment maker, (Apr 23, 2025)

By Sheri A. Wattles-Miller, J.D.

Neither dismissal of player’s Lanham Act and common law claims nor transfer of forum was appropriate since safety equipment manufacturer’s contacts were purposefully directed at Pittsburgh area to secure player’s endorsement.

A former professional football player’s claims alleging Lanham Act and common law publicity-rights violations by an athletic safety equipment manufacturer were appropriately brought in the Western District of Pennsylvania; thus, dismissal of the case or a transfer of forum were inappropriate, a federal district court in Pittsburgh ruled. The manufacturer approached the player to promote its products, and ultimately the parties entered into a promotional license agreement. A second agreement renewed the arrangement. Once the second agreement lapsed and was not renewed, the player contended that the manufacturer misappropriated his name, image, and likeness to continue to promote its products in violation of the agreement. The manufacturer’s contacts with the Pittsburgh area were “purposefully directed” at the forum, and the manufacturer did not offer a convincing argument that would necessitate a transfer of forum (Harrison v. Unequal Technologies Co., No. 2:24-cv-01204-WSS (W.D. Pa. Apr. 21, 2025)).

Background. James Henry Harrison, Jr. was a former linebacker for the Pittsburgh Steelers, a professional National Football League team. Unequal Technologies Company (“Unequal”) was developing a line of athletic equipment, including the Gyro Padded Football Helmet, which it asked Harrison to promote. Harrison evaluated the equipment at a practice session and decided to endorse the helmet. The parties entered into a promotional license agreement, dated November 18, 2011, and later renewed that arrangement in a second promotional license agreement, dated July 1, 2016. The agreements granted the manufacturer a license to use the player’s name, image, likeness, and any other means of endorsement for specifically define terms, and the agreements prohibited Unequal from using Harrison in any advertising or promotion after the expiration of the second agreement.

Harrison filed suit in the Western District of Pennsylvania, alleging that Unequal continued to use his name, image, and likeness without right or consent after the term of the second agreement. He claimed (1) false endorsement under the Lanham Act; (2) infringement of the right of publicity; (3) unfair competition; (4) breach of contract; and (5) unjust enrichment. Unequal responded with a motion to dismiss the claims saying the Western District of Pennsylvania was an improper forum under Fed. R. Civ. P. 12(b)(3). Alternatively, Unequal argued that venue would be more convenient in the Eastern District of Pennsylvania. The court denied Unequal’s motion to dismiss, as well as its alternative motion for a transfer of forum.

General personal jurisdiction. Viewing the facts in the light most favorable to Harrison, the court first determined that it did not have general personal jurisdiction over Unequal, because Unequal’s principal place of business was not located within the Western District. Moreover, Harrison did not show that Unequal’s contacts with the Western District were continuous and systematic. The fact that the relationship between Harrison and Unequal was negotiated in the Western District did not provide sufficient minimum contacts to establish general jurisdiction over Unequal.

Specific jurisdiction. However, the court determined that it had specific jurisdiction because the litigation arose from conduct that Unequal “purposely directed” at the Western District. Unequal’s contacts with the forum, not only with respect to its product, but also with Harrison’s endorsement were purposely directed at the forum for Unequal’s gain. Harrison was specifically targeted in Western Pennsylvania, where he lived and worked. Unequal’s CEO and other representatives met with Harrison in the Pittsburgh area. They visited the Steelers’ facility in Pittsburgh and a nearby training facility that was also in the Western District. Unequal shipped products to Harrison at his home and donated products to Harrison’s charitable foundation located in the Western District.

The litigation arose out of Harrison’s endorsement of Unequal’s product and Unequal’s alleged misconduct in continuing to use Harrison’s identity after the expiration of the second agreement. Finally, the court’s exercise of jurisdiction comports with traditional notions of “fair play and substantial justice.” Unequal must reasonably anticipate being haled into court in Western Pennsylvania.

Transfer of forum. Unequal argued that venue would be more convenient in the Eastern District of Pennsylvania. However, the court considered public and private factors affecting the convenience of the parties and determined that those factors weighed strongly against transferring the case. Considering the private factors, the court noted that Harrison filed this action in the district where he resided, and deference was given to the plaintiff as to choice of forum. The relationship giving rise to Harrison’s claims arose in the Western District. The actionable conduct occurred both within and outside of the Western District. The location of witnesses and exhibits did not weigh in favor of transferring the action from one Pennsylvania district to another.

On the public factors, the court considered that Harrison brought both federal and state law claims. The two Pennsylvania courts could equally address those issues. Public policy did not weigh in favor of one district over the other. There were no concerns with respect to the enforceability of any judgment. The Western District would be able to facilitate an easy, expeditious and inexpensive resolution of the case.

Conclusion. Unequal’s motion to dismiss the case was denied. Likewise, the motion to transfer forum was also denied.

The Case is No. 2:24-cv-01204-WSS.

Judge: Stickman, W.

Attorneys: J. Alexander Hershey (Clark Hill PLC) for James Henry Harrison. James T. Tallman (Elliott & Davis, PC) for Unequal Technologies Co.

Companies: Unequal Technologies Co.

Cases: PublicityRights Trademark PennsylvaniaNews