Peaceable Planet , Inc . v. T Y , INC . and H. T Y WARNER

In the
United States Court of Appeals
For the Seventh Circuit
____________
No. 03-3452
P EACEABLE P LANET , I NC .,
Plaintiff-Appellant,
v.
T Y , I NC . and H. T Y W ARNER ,
Defendants-Appellees.
____________
Appeal from the United States District Court for the
Northern District of Illinois, Eastern Division.
No. 01 C 7350—John W. Darrah, Judge.
____________
A RGUED F EBRUARY 26, 2004—D ECIDED A PRIL 2, 2004
____________
Before B AUER , P OSNER , and K ANNE , Circuit Judges.
P OSNER , Circuit Judge. In the most common type of suit for
trademark infringement, the plaintiff complains that the
defendant is passing off his (inferior) product as the plain-
tiff’s. But here we have the converse case of “reverse passing
off,” in which the plaintiff complains that the defendant is
trying to pass off the plaintiff’s product as the defendant’s.
Illinois High School Ass’n v. GTE Vantage Inc., 99 F.3d 244, 246
(7th Cir. 1996); Sands, Taylor & Wood Co. v. Quaker Oats Co.,
978 F.2d 947, 957-58 (7th Cir. 1992); A & H Sportswear, Inc. v.
Victoria’s Secret Stores, Inc., 237 F.3d 198, 227-29 (3d Cir.

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2 No. 03-3452
2000); Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 740-41 (2d
Cir. 1994). Why would anyone want to do such a thing? One
reason might be to obliterate the plaintiff’s corporate
identity and prevent him from entering new markets, where
the defendant, having appropriated the plaintiff’s trade-
mark, would claim that the plaintiff was the infringer. Such
would be a case of deliberate reverse passing off, and terms
like “passing off” and “reverse passing off” are sometimes
reserved for deliberate efforts to confuse the consuming
public, but either form of confusion can be actionable
without proof of intent to confuse.
The trademark infringement claim is federal, and there is
also a claim for false advertising, also under the Lanham
Act, plus several claims governed by Illinois law, including
one for product disparagement. All the claims were rejected
on summary judgment.
The disappointed plaintiff is Peaceable Planet. Like the
defendant, the much larger and better known Ty Inc. (there
is no comma in Ty’s name, but we have left it in the name as
it appears in the caption because that is what it is called in
the complaint), Peaceable Planet makes plush toys in the
shape of animals, filled with bean-like materials to give the
toys a soft and floppy feel. Ty’s plush toys are, of course, the
famous “Beanie Babies.”
In the spring of 1999, Peaceable Planet began selling a
camel that it named “Niles.” The name was chosen to evoke
Egypt, which is largely desert except for the ribbon of land
bracketing the Nile. The camel is a desert animal, and
photos juxtaposing a camel with an Egyptian pyramid are
common. The price tag fastened to Niles’s ear contains
information both about camels and about Egypt, and the
Egyptian flag is stamped on the animal.
A small company, Peaceable Planet sold only a few
thousand of its camels in 1999. In March of the following

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No. 03-3452 3
year, Ty began selling a camel also named “Niles.” It sold a
huge number of its “Niles” camels—almost two million in
one year—precipitating this suit. The district court ruled
that “Niles,” being a personal name, is a descriptive mark
that the law does not protect unless and until it has acquired
secondary meaning, that is, until there is proof that consum-
ers associate the name with the plaintiff’s brand. Peaceable
Planet did not prove that consumers associate the name
“Niles” with its camel.
The general principle that formed the starting point for
the district court’s analysis was unquestionably sound. A
descriptive mark is not legally protected unless it has
acquired secondary meaning. 15 U.S.C. §§ 1052(e), (f); Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992); Ty
Inc. v. Perryman, 306 F.3d 509, 513-14 (7th Cir. 2002); Plati-
num Home Mortgage Corp. v. Platinum Financial Group, Inc.,
149 F.3d 722, 727 (7th Cir. 1998); Abercrombie & Fitch Co. v.
Hunting World, Inc., 537 F.2d 4, 10 (2d Cir. 1976). An exam-
ple is “All Bran.” The name describes the product. If the first
firm to produce an all-bran cereal could obtain immediate
trademark protection, and thus prevent all other producers
of all-bran cereal from describing their product as all bran,
it would be difficult for competitors to gain a foothold in the
market. They would be as if speechless. Had Peaceable
Planet named its camel “Camel,” that would be a descrip-
tive mark in a relevant sense, because it would make it very
difficult for Ty to market its own camel—it wouldn’t be
satisfactory to have to call it “Dromedary” or “Bactrian.”
Although cases and treatises commonly describe personal
names as a subset of descriptive marks, Perini Corp. v. Perini
Construction, Inc., 915 F.2d 121, 125 (4th Cir. 1990); Marker
Int’l v. DeBruler, 844 F.2d 763, 764 (10th Cir. 1988); Yarmuth-
Dion, Inc. v. D’ion Furs, Inc., 835 F.2d 990, 993 (2d Cir. 1987);
4 Callmann on Unfair Competition, Trademarks & Monopolies §

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4 No. 03-3452
22:42 (4th ed. 2003), it is apparent that the rationale for
denying trademark protection to personal names without
proof of secondary meaning can’t be the same as the
rationale just sketched for marks that are “descriptive” in
the normal sense of the word. Names, as distinct from
nicknames like “Red” or “Shorty,” are rarely descriptive.
“Niles” may evoke but it certainly does not describe a
camel, any more than “Pluto” describes a dog, “Bambi” a
fawn, “Garfield” a cat, or “Charlotte” a spider. (In the Tom
and Jerry comics, “Tom,” the name of the cat, could be
thought descriptive, but “Jerry,” the name of the mouse,
could not be.) So anyone who wanted to market a toy camel,
dog, fawn, cat, or spider would not be impeded in doing so
by having to choose another name.
The reluctance to allow personal names to be used as
trademarks reflects valid concerns (three such concerns,
to be precise), but they are distinct from the concern that
powers the rule that descriptive marks are not protected
until they acquire secondary meaning. One of the concerns
is a reluctance to forbid a person to use his own name in his
own business. Sardi’s Restaurant Corp. v. Sardie, 755 F.2d 719,
725-26 (9th Cir. 1985); Taylor Wine Co. v. Bully Hill Vineyards,
Inc., 569 F.2d 731, 735-36 (2d Cir. 1978); 2 McCarthy on
Trademarks & Unfair Competition § 13:5 (4th ed. 2003); cf. L.E.
Waterman Co. v. Modern Pen Co., 235 U.S. 88, 95-98 (1914)
(Holmes, J.); Herring-Hall-Marvin Safe Co. v. Hall’s Safe Co.,
208 U.S. 554, 559-60 (1908) (Holmes, J.). Supposing a man
named Brooks opened a clothing store under his name,
should this prevent a second Brooks from opening a
clothing store under his own (identical) name even though
consumers did not yet associate the name with the first
Brooks’s store? It should not. Abraham Zion Corp. v. LeBow,
761 F.2d 93, 104-05 (2d Cir. 1985); Creager v. Russ Togs, Inc.,
218 U.S.P.Q. 582, 585 (C.D. Cal. 1982); D & W Food Corp. v.
Graham, 286 P.2d 77, 82 (Cal. App. 1955); Continente v.

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No. 03-3452 5
Continente, 244 F. Supp. 688, 689 (N.D. Cal. 1965), aff’d, 378
F.2d 279 (9th Cir. 1967); cf. Scott Paper Co. v. Scott’s Liquid
Gold, Inc., 589 F.2d 1225, 1231-32 (3d Cir. 1978); S.C. Johnson
& Son, Inc. v. Johnson, 116 F.2d 427, 429-30 (2d Cir. 1940) (L.
Hand, J.); compare Brooks Bros. v. Brooks Clothing of Califor-
nia, 60 F. Supp. 442, 454 (S.D. Cal.) (secondary meaning
acquired by “Brooks Brothers”) decision supplemented, 5
F.R.D. 14 (S.D. Cal. 1945), and aff’d, 158 F.2d 798 (9th Cir.
1947).
Another and closely related concern behind the personal-
name rule is that some names are so common—such as
“Smith,” “Jones,” “Schwartz,” “Wood,” and “Jackson”—
that consumers will not assume that two products having
the same name therefore have the same source, and so they
will not be confused by their bearing the same name. 2
McCarthy on Trademarks & Unfair Competition, supra, § 13:4;
Restatement (Third) of Unfair Competition § 14, comment e
(1995); cf. Scott Paper Co. v. Scott’s Liquid Gold, Inc., supra, 589
F.2d at 1231 and n. 4; S.C. Johnson & Son, Inc. v. Johnson,
supra, 116 F.2d at 430. If there are two bars in a city that are
named “Steve’s,” people will not infer that they are owned
by the same Steve.
The third concern, which is again related but brings
us closest to the rule regarding descriptive marks, is that
preventing a person from using his name to denote his
business may deprive consumers of useful information.
Maybe “Steve” is a well-known neighborhood figure. If he
can’t call his bar “Steve’s” because there is an existing bar of
that name, he is prevented from communicating useful
information to the consuming public. 2 McCarthy on Trade-
marks & Unfair Competition, supra, § 13:3; cf. Basile, S.p.A. v.
Basile, 899 F.2d 35, 38-40 (D.C. Cir. 1990); Charles J. Donnelly,
Inc. v. Donnelly Bros., Inc., 191 A.2d 143, 146 (R.I. 1963).

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6 No. 03-3452
The scope of a rule is often and here limited by its ratio-
nale. Or, to make the same point differently, one way of
going astray in legal analysis is to focus on the semantics of
a rule rather than its purpose. Case 1 might say that a
personal name could not be trademarked in the circum-
stances of that case without proof of secondary meaning.
Case 2 might say that personal names cannot be trade-
marked without proof of secondary meaning but might
leave off the qualifications implicit in the circumstances of
the case. And then in Case 3 the court might just ask, is the
trademark at issue a personal name? As we observed in AM
Int’l, Inc. v. Graphic Management Associates, Inc., 44 F.3d 572,
575 (7th Cir. 1995), “rules of law are rarely as clean and
strict as statements of them make them seem. So varied and
unpredictable are the circumstances in which they are
applied that more often than not the summary statement of
a rule—the terse formula that judges employ as a necessary
shorthand to prevent judicial opinions from turning into
treatises—is better regarded as a generalization than as the
premise of a syllogism.” The “rule” that personal names are
not protected as trademarks until they acquire secondary
meaning is a generalization, and its application is to be
guided by the purposes that we have extracted from the
case law. When none of the purposes that animate the
“personal name” rule is present, and application of the
“rule” would impede rather than promote competition
and consumer welfare, an exception should be recognized.
And will be; for we find cases holding, very sensibly—and
with inescapable implications for the present case—that
the “rule” does not apply if the public is unlikely to under-
stand the personal name as a personal name. Lane Capital
Management, Inc. v. Lane Capital Management, Inc., 192 F.3d
337, 345-46 (2d Cir. 1999); Circuit City Stores, Inc. v. CarMax,
Inc., 165 F.3d 1047, 1054 (6th Cir. 1999).

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No. 03-3452 7
The personal-name “rule,” it is worth noting, is a common
law rather than statutory doctrine. All that the Lanham Act
says about personal names is that a mark that is “primarily
merely a surname” is not registrable in the absence of
secondary meaning. 15 U.S.C. §§ 1052(e)(4), (f). There is no
reference to first names. The reason for the surname provi-
sion is illustrated by the Brooks example. The extension of
the rule to first names is a judicial innovation and so needn’t
be pressed further than its rationale, as might have to be
done if the rule were codified in inflexible statutory lan-
guage. Notice too the limitation implicit in the statutory
term “primarily.”
In thinking about the applicability of the rationale of the
personal-name rule to the present case, we should notice
first of all that camels, whether real or toy, do not go into
business. Peaceable Planet’s appropriation of the name
“Niles” for its camel is not preventing some hapless camel
in the Sahara Desert who happens to be named “Niles”
from going into the water-carrier business under its own
name. The second thing to notice is that “Niles” is not a very
common name; in fact it is downright rare. And the third
thing to notice is that if it were a common name, still there
would be no danger that precluding our hypothetical
Saharan water carrier from using its birth name “Niles”
would deprive that camel’s customers of valuable informa-
tion. In short, the rationale of the personal-name rule is
wholly inapplicable to this case.
What is more, if one wants to tie the rule in some fashion
to the principle that descriptive marks are not protectable
without proof of second meaning, then one must note that
“Niles,” at least when affixed to a toy camel, is a suggestive
mark, like “Microsoft” or “Business Week,” or—coming
closer to this case—like “Eor” used as the name of a donkey,
or the proper names in Circuit City Stores, Inc. v. CarMax,

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8 No. 03-3452
Inc., supra, 165 F.3d at 1054, rather than being a descriptive
mark. Suggestive marks are protected by trademark law
without proof of secondary meaning. Two Pesos, Inc. v. Taco
Cabana, Inc., supra, 505 U.S. at 768; Platinum Home Mortgage
Corp. v. Platinum Financial Group, Inc., supra, 149 F.3d at 727;
Mil-Mar Shoe Co. v. Shonac Corp., 75 F.3d 1153, 1156 (7th Cir.
1996); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1142 n. 3 (9th Cir. 2002). Secondary meaning is not required
because there are plenty of alternatives to any given sugges-
tive mark. There are many more ways of suggesting than of
describing. Suggestive names for camels include “Lawrence
[of Arabia]” (one of Ty’s other Beanie Babies is a camel
named “Lawrence”); “Desert Taxi,” “Sopwith” (the Sopwith
Camel was Snoopy’s World War I fighter plane), “Camelia,”
“Traveling Oasis,” “Kamelsutra,” “Cameleon,” and
“Humpy-Dumpy.”
If “Niles” cannot be a protected trademark, it must be
because to give it legal protection would run afoul of one of
the purposes of the common law rule that we have identi-
fied rather than because it is a descriptive term, which it is
not. But we have seen that it does not run afoul of any of
those purposes. “Niles” is not the name of the defen-
dant—it’s not as if Peaceable Planet had named its camel
“Ty Inc.” or “H. Ty Warner.” It also is not a common name,
like “Smith” or “Jackson.” And making Ty use a different
name for its camel would not deprive the consumer of
valuable information about Ty or its camel.
Treating the personal-name rule as a prohibition against
ever using a personal name as a trademark (in the absence
of secondary meaning) would lead to absurd results, which
is a good reason for hesitating to press a rule to its logical
limit, its semantic outer bounds. It would mean that the
man who invented “Kitty Litter” could not trademark the
name (“Kitty” is a more common first name than “Niles”)

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No. 03-3452 9
until it had acquired secondary meaning. So as soon as
“Kitty Litter” hit the market, a much larger producer of cat
litter could appropriate the name, flood the market with its
product, and eventually obtain an enforceable trademark in
the name by dint of having invested it with secondary
meaning, squashing the originator. This is not an entirely
fanciful example. Kitty Litter was invented (and named) in
1947 by a young man, Ed Lowe, in Cassopolis, Michigan, a
town of notable obscurity. (As recently as July 2002, its
population was only 1,703. We do not know what it was in
1947.) At first he sold the new product mainly to neighbors.
On Ty’s conception of the personal-name rule, without a
patent Lowe could not have prevented a large company
from selling the same product under the same name, thus
squashing him. We cannot see what purpose of trademark
law would be served by encouraging such conduct. Ty
marks its “Niles” camel with the trademark symbol, and
given the ratio of its sales to those of Peaceable Planet’s
“Niles,” the Ty Niles may be well on its way to acquiring
secondary meaning—at which point it will be able to enjoin
Peaceable Planet from using the name on Peaceable’s camel
even though Peaceable thought of naming a camel “Niles”
before Ty did. For all we know, Ty may have copied the
idea from Peaceable, though Peaceable has not proved that.
Ty argues (we are quoting from its brief) that “one com-
petitor should not be allowed to impoverish the language of
commerce by monopolizing descriptive names,” and “there
are a limited number of personal names that are recognized
as such by the public.” All true. But the suggestion that
“Niles” belongs to the limited class of “recognized” names
or that “Niles” is the only way to name a camel is ridicu-
lous.
And there is more: as both Lane Capital Management, Inc. v.
Lane Capital Management, Inc., and Circuit City Stores, Inc. v.

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10 No. 03-3452
CarMax, Inc., which we cited earlier, point out, a word that
is used as a person’s name can be understood as something
else (“Kitty,” again), in which event the personal-name rule
falls by the wayside. On the question whether “Niles” is
likely to be understood by the plush-toy consuming public
as a personal name rather than as a play on “Nile” the river,
Ty conducted a survey in which about half the respondents
indicated that they consider “Niles” a personal name. That
is not an impressive fraction; imagine the response if one
asked whether “William” is a personal name, or “Michael”
or “Judith.” Moreover, the survey was limited to adults
even though Ty’s primary market is children, and the
questions posed to the respondents were slanted by obses-
sive repetition of the term “person’s name,” as in (we are
quoting from the survey) “Do you think of the word on this
card mainly as a person’s name, mainly as something other
than a person’s name, or as both a person’s name and as
something else, or don’t you have an opinion?” The inten-
tion doubtless was to create a subliminal association
between “Niles” and “person’s name.” But the survey was
not merely devoid of probative value, unprofessional, and
probably inadmissible under the Daubert standard; it was
irrelevant. If people were asked what came to mind when
they saw the word “Niles” and they said a camel, there
would be an argument that “Niles” was a descriptive mark,
and Peaceable Planet would be sunk. The fact that “Niles”
can be a person’s name (as can almost any combination of
letters)—although according to Ty’s own statistics only
about one resident of Illinois in 50,000 is named
“Niles”—does not bear on whether “Niles” is a descriptive
mark as applied to a plush toy camel. It is not.
There is a town named “Niles” in Illinois and another one
in Michigan, and this is a reminder of the importance of
context in characterizing a trademark. “Apple” is a generic
term when used to denote the fruit, but a fanciful mark (the

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No. 03-3452 11
kind that receives the greatest legal protection) when used
to denote a computer. If a gas station in Niles, Michigan,
calls itself the “Niles Gas Station,” it cannot before acquiring
secondary meaning enjoin another firm from opening the
“Niles Lumber Yard” in the town, on the ground that
people will think that the firms are under common owner-
ship. 15 U.S.C. §§ 1052(e)(2), (f); Barcelona.com, Inc. v.
Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 628-
29 (4th Cir. 2003); Boston Beer Co. Limited Partnership v. Slesar
Bros. Brewing Co., 9 F.3d 175, 181-82 (1st Cir. 1993); 2
McCarthy on Trademarks & Unfair Competition, supra, §§ 14:1,
14:7. In a town named Niles, firms bearing the name are
sharing a name that is too common to be appropriable
without proof of secondary meaning. That is not the case
when the name is applied to a camel. And while both Niles,
Illinois, and Niles, Michigan, are fine towns, neither is the
place of origin of the camel or identified with that animal in
some other way.
We conclude that Peaceable Planet has a valid trademark
in the name “Niles” as applied to its camel, and so the case
must be returned to the district court, where Peaceable
Planet, to prove infringement of its trademark (“reverse
confusion”), will have to show that a substantial number of
consumers think that its camel is actually Ty’s. For in that
event Peaceable Planet will have suffered injury by losing
“the value of the trademark—its product identity, corporate
identity, control over its goodwill and reputation, and
ability to move into new markets,” Sands, Taylor & Wood Co.
v. Quaker Oats Co., supra, 978 F.2d at 957, quoting Ameritech,
Inc. v. American Information Technologies Corp., 811 F.2d 960,
964 (6th Cir. 1987), and so will be entitled to a remedy. But
we agree with Ty that Peaceable Planet cannot prove its case
by showing that consumers will think it pirated Ty’s
product. DeCosta v. Viacom Int’l, Inc., 981 F.2d 602, 609-
10 (1st Cir. 1992); M2 Software, Inc. v. Viacom, Inc., 119 F.

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12 No. 03-3452
Supp. 2d 1061, 1068-69 (C.D. Cal. 2000), reversed on other
grounds, 2002 WL 123571 (9th Cir. 2002). That is a charge of
defamation rather than of reverse passing off. The purpose
of trademark law (setting to one side dilution cases) is to
prevent confusion by consumers concerning the sources of
the products they buy. Knowing or thinking that a producer
is a pirate is not a confusion about source; you know who
the source is, whether you think him a good guy or a bad
guy.
It is true that some cases say, contrary to DeCosta, that
being thought a pirate is one of the harms that the prohibi-
tion of reverse passing off is intended to prevent. Sands,
Taylor & Wood Co. v. Quaker Oats Co., supra, 978 F.2d at 958;
W.W.W. Pharmaceutical Co. v. Gillette Co., 984 F.2d 567,
571 (2d Cir. 1993); Banff, Ltd. v. Federated Dept. Stores, Inc.,
841 F.2d 486, 490 (2d Cir. 1988). But we think that what
these cases mean—this is explicit in our opinion in Sands—
is that the junior user (Ty) might injure the senior user
(Peaceable Planet) by suing for trademark infringement if
the latter tried to enter a new market in which the junior
was already operating. That would be a case in which
reverse passing off had engendered confusion as to source.
But that is not argued here, and so if there is reverse passing
off here it has to be grounded in evidence other than that of
perceived piracy.
Ty contends that there is no other evidence of reverse
passing off; and, as is its right, it urges us to affirm the dis-
missal of the trademark count on this alternative ground,
which the district court did not reach because it didn’t think
Peaceable Planet had a trademark on which to base a suit in
the first place. Ty urges the alternative ground in spare and
conclusional terms, however, and we think that Peaceable
Planet did present enough admissible evidence, though
barely, to create a triable issue. The similarity of the prod-
ucts, the identity of the marks, the disparity in the fame of

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No. 03-3452 13
the respective producers, and the fact that Ty flooded the
market—selling 1.8 million of its Niles camels in only a
year—and advertised the camel on its popular website, and
that traffic on Peaceable Planet’s website soared 600 percent
after Ty announced the launching of its Niles, taken to-
gether, enable though they do not compel an inference that
a substantial number of consumers thought that Peaceable’s
Niles was actually Ty’s. It is an issue for trial.
But we think the district judge was right to dismiss the
product-disparagement count in Peaceable Planet’s com-
plaint. It is conceivable that some consumers, mistakenly
thinking that Ty must have been the inventor of “Niles” the
camel, would think Peaceable Planet a pirate and think
worse of it on that account, though most consumers would
probably not care a whit. But product disparagement and
defamation are distinct torts. Brown & Williamson Tobacco
Corp. v. Jacobson, 713 F.2d 262, 269 (7th Cir. 1983) (Illinois
law); Crinkley v. Dow Jones & Co., 385 N.E.2d 714, 719 (Ill.
App. 1978); Boule v. Hutton, 328 F.3d 84, 94 n. 8 (2d Cir.
2003); W. Page Keeton, et al., Prosser and Keeton on the Law of
Torts § 128, p. 964 (5th ed. 1984). A pirated product is
not necessarily inferior to the lawful original; it may indeed
be identical to it. So an accusation of piracy is not, as
Peaceable Planet appears to think, product disparagement
per se. Fedders Corp. v. Elite Classics, 279 F. Supp. 2d 965,
972 (S.D. Ill. 2003); see Curtis-Universal, Inc. v. Sheboygan
Emergency Medical Services, Inc., 43 F.3d 1119, 1124 (7th Cir.
1994); Allcare, Inc. v. Bork, 531 N.E.2d 1033, 1037-38 (Ill. App.
1988); American Pet Motels, Inc. v. Chicago Veterinary Medical
Ass’n, 435 N.E.2d 1297, 1302-03 (Ill. App. 1982), overruled
on other grounds in Kuwik v. Starmark Star Marketing &
Administration, Inc., 619 N.E.2d 129, 133 (Ill. 1993). Highly
ethical consumers may think worse of the pirate and turn
away from his goods; but if so, and if the junior user is
responsible for the false impression that the senior is a

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14 No. 03-3452
pirate, the junior is guilty of defamation. See Brown &
Williamson Tobacco Corp. v. Jacobson, supra, 713 F.2d at 269
(Illinois law); Gardner v. Senior Living Systems, Inc., 731
N.E.2d 350, 355-56 (Ill. App. 2000); Allcare, Inc. v. Bork, supra,
531 N.E.2d at 1037 (Ill. App. 1988); Crinkley v. Dow Jones and
Co., supra, 385 N.E.2d at 719. There is no evidence of that
here; indeed, the complaint contains no defamation count.
As a detail, we note the superficial oddity of Peaceable
Planet’s naming Ty Warner as a defendant along with Ty
Inc. He is, it is true, the sole owner of Ty Inc., but unless a
shareholder—sole, controlling, or otherwise—is shown to
have been personally involved in the commission of the tort
by his corporation, he is not jointly liable for the tort.
However, there is some evidence that Warner may have
been personally involved in the decision to use the name
Niles on a Ty camel, and if so he may be (we do not say he
is—it is an issue for resolution on remand) a joint tortfeasor
and therefore suable. Itofca, Inc. v. Hellhake, 8 F.3d 1202,
1204 (7th Cir. 1993); Prince v. Zazove, 959 F.2d 1395, 1401 (7th
Cir. 1992); Buckner v. O’Brien, 677 N.E.2d 1363, 1367 (Ill.
App. 1997), aff’d under the name Buckner v. Atlantic Plant
Maintenance, Inc., 694 N.E.2d 565 (Ill. 1998); National Accep-
tance Co. of America v. Pintura Corp., 418 N.E.2d 1114, 1116-17
(Ill. App. 1981).
It remains to consider the other state-law claims in the
complaint, plus the federal false-advertising claim. The
other state-law claims are violation of the Illinois Uniform
Deceptive Trade Practices Act, 815 ILCS 510/1 et seq.,
violation of the Illinois Consumer Fraud and Deceptive
Business Practices Act, 815 ILCS 505/1 et seq., and common
law trademark infringement. The district court thought that
all these claims, including the false-advertising claim, fell
with the federal trademark infringement claim. Ty doesn’t
argue that if we reverse the dismissal of that claim we

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No. 03-3452 15
should nevertheless affirm the dismissal of the other claims
on some other ground, and so we shall vacate their dis-
missal as well.
To summarize, the dismissal of the product-disparage-
ment count is affirmed, but the dismissal of the remaining
counts is reversed and the case is remanded for further
proceedings consistent with this opinion.
A FFIRMED IN P ART , R EVERSED IN P ART , AND R EMANDED .
A true Copy:
Teste:
_____________________________
Clerk of the United States Court of
Appeals for the Seventh Circuit
USCA-02-C-0072—4-2-04

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