General Motors Corp. v. Let's Make a Deal, CV-N-02-0384-DWH(VPC).
| Decision Date | 29 August 2002 |
| Docket Number | No. CV-N-02-0384-DWH(VPC).,CV-N-02-0384-DWH(VPC). |
| Citation | 223 F.Supp.2d 1183 |
| Parties | GENERAL MOTORS CORPORATION, a Delaware Corporation, Plaintiff, v. LET'S MAKE A DEAL, an entity of unknown origin, and Richard Castellanos, an individual, Defendants. |
| Court | U.S. District Court — District of Nevada |
Jeremy Nork, Reno, NV, Gregory D. Phillips, Howard Phillips & Anderson, Salt Lake City, UT, Scott R. Ryther, Howard Phillips & Anderson, Salt Lake City, UT, Charles H. Ellerbrock, General Motors, Detroit, MI, for Plaintiff.
Kent Hanson, Reno, NV, for Defendant.
Before the court is plaintiff's motion for preliminary injunction (# 3), defendants' opposition (# 's 17/18), and plaintiff's reply (# 19). Also before the court is its order (# 22) requiring plaintiff to show cause why defendants were properly notified of the preliminary injunction proceedings. For the reasons set out below, the court finds that defendants were properly notified of the proceedings and that plaintiff is entitled to injunctive relief.
Plaintiff, a Delaware corporation, is an automobile manufacturer, and it and its predecessors have developed and sold the Hummer vehicles since 1981. Hummer vehicles are a type of sports utility vehicle that gained popularity through its use as a military vehicle during the Gulf War.
Since 1999, plaintiff has owned all rights to the trademarks and trade dress of the vehicles as well as the goodwill. In that regard, plaintiff owns registered trademarks for HUMMER and the HUMMER GRILL (comprising the nose and grill of vehicle). Plaintiff also has applications pending in the United States Patent and Trademark Office for the symbols H1 and H2. Plaintiff also claims trade dress in the exterior design and shape of the Hummer vehicles. Plaintiff collectively refers to all of these components as "Hummer Marks." (Pl.'s Mot. (# 3), at 4.)
Plaintiff alleges they have spent hundreds of millions of dollars developing these unique characteristics as well as marketing the Hummer vehicles throughout the world, and that as a result of these efforts, the Hummer marks are widely known and recognized throughout the world as symbols of high quality and unique vehicles.
Defendants operate "Let Make a Deal," a used car lot, in Reno, Nevada. According to plaintiff, defendants have been producing "car kits" that capture all the unique characteristics of the Hummer vehicles, and have been advertising them on their website, www.hmmmv.com.
Plaintiff alleges that these actions give rise to claims for trademark and trade dress dilution, 15 U.S.C. § 1125(c); federal trademark infringement and counterfeiting, 15 U.S.C. § 1114(1); false designation of origin or sponsorship, false advertising, and trade dress infringement, 15 U.S.C. § 1125(a); and common law trademark infringement. (See generally Id.) Plaintiff is seeking injunctive relief as well as damages against defendants. Before the court is plaintiff's request for preliminary relief under the Lanham Act.
In its order regarding plaintiff's motion for preliminary injunction, the court ordered plaintiff to serve defendants with all documents on file along with a copy of the order no later than July 23, 2002. The order further specified that defendants were to file their opposition by August 5, 2002, and plaintiff's reply was due August 14, 2002. (See Order (# 6).)
On August 13, 2001, plaintiff filed a notice asserting that defendants were properly served and had failed to oppose the preliminary injunction motion. (See Notice (# 10).) Defendants filed a response arguing that plaintiff failed to serve them in accordance with Fed.R.Civ.P. 4 and this court's order. (Def.'s Resp. & Opp'n (#'s 17/18), at 3-4.) In response to this challenge by defendants, the court ordered plaintiff to file a memorandum demonstrating that defendants were properly served. (See Mins. of Ct. (# 21).) It appears that defendants were adequately notified of the proceedings.
Pursuant to Fed.R.Civ.P. 65(a)(1), "[n]o preliminary injunction shall be issued without notice to the adverse party." However, neither the rule nor the advisory comments define adequate notice. While the Ninth Circuit has not addressed this issue in a published opinion, other circuits have developed two approaches for evaluating the sufficiency of notice.
In the majority of circuits, determinations of whether a party was given sufficient notice are within the trial court's discretion. See, e.g., Dominion Video Satellite, Inc. v. EchoStar Satellite Corp., 269 F.3d 1149, 1154 (10th Cir.2001); Ciena Corp. v. Jarrard, 203 F.3d 312, 319 (4th Cir.2000); Anderson v. Davila, 125 F.3d 148, 156-57 (3d Cir.1997); Levi Strauss & Co. v. Sunrise Intern. Trading Inc., 51 F.3d 982, 986 (11th Cir.1995); Illinois ex rel. Hartigan v. Peters, 871 F.2d 1336, 1340 (7th Cir.1989). Under this approach, a determination of adequate notice is to be guided by the purpose of Rule 65(a)'s notice requirement: "The notice required by Rule 65(a) before a preliminary injunction can issue implies a hearing in which the defendant is given a fair opportunity to oppose the application and to prepare for such opposition." Granny Goose Foods, Inc. v. Brotherhood of Teamsters and Auto Truck Drivers Local No. 70 of Alameda County, 415 U.S. 423, 433 n. 7, 94 S.Ct. 1113, 39 L.Ed.2d 435 (1974). Priors court have determined that one to three days notice is adequate time to prepare a defense. See, e.g., United States v. Alabama, 791 F.2d 1450, 1458 (11th Cir.1986).
In the alternative, the Fifth Circuit requires that notice be given in accordance with Fed.R.Civ.P. 6(d). Parker v. Ryan, 960 F.2d 543, 544 (5th Cir.1992). Rule 6(d) requires that, with any written motion that can not be heard ex parte, the motion and notice of the hearing be served at least five days before the hearing date. However, compliance with this rule is not necessary if the facts are not in dispute or the adverse party has actual notice of the proceeding. In this situation, the notice must simply alert the party to the hearing and provide the party an adequate amount of time to prepare a defense. Parker, 960 F.2d at 545.
It appears here that defendants were given adequate notice under both standards. First, in their memorandum, plaintiff provided affidavits demonstrating that their process servers made multiple attempts to serve both Castellanos and Let's Make a Deal, and that they delivered all materials required by the order to Let's Make a Deal's business premises on July 23, 2002. (Pl.'s Mem. Re: Service (# 23), Exs. A-E.) While defendants contend that plaintiff served a "seventeen year old girl who was waiting for her mother to pick her up," defendants do not state that they did not receive notice through this service. Additionally, it appears that defendants received actual notice through this because defendants do not deny that a Gary, who held himself out as defendant Castellanos' son and as in charge of Let's Make a Deal, contacted plaintiff's counsel on July 23, 2002 to discuss the lawsuit and upcoming deadlines. (See Def.'s Resp. & Opp'n (#'s 17-18), at 3-4.) Moreover, defendants filed an opposition to the preliminary injunction motion and appeared at the hearing. Accordingly, it appears that defendants were adequately notified within the meaning of Rule 65(a) and in compliance with this court's previous order.
A preliminary injunction is "an extraordinary remedy, which should be granted only in limited circumstances." Instant Air Freight Co. v. C.F. Air Freight, Inc., 882 F.2d 797, 800 (3d Cir. 1989) (quoting Frank's GMC Truck Center, Inc. v. G.M.C., 847 F.2d 100, 102 (3d Cir.1988)). This remedy should only be granted where the merits of the case clearly favor one party over the other. See Remlinger v. Nevada, 896 F.Supp. 1012, 1015 (D.Nev.1995). As the Remlinger court explained
The cases best suited to preliminary relief are those in which the important facts are undisputed, and the parties simply disagree about what the legal consequences are of those facts. The court in such a case can take the undisputed facts, apply the law to them, and fairly easily decide which party is likely to prevail.
A party seeking a preliminary injunction must fulfill one of two standards, described in the Ninth Circuit as "traditional" and "alternative." See Cassim v. Bowen, 824 F.2d 791, 795 (9th Cir. 1987). Under the traditional standard, a court may issue preliminary relief if it finds that (1) the moving party will probably prevail on the merits; (2) the moving party will suffer irreparable injury if the relief is denied; (3) the balance of the hardships favor the moving party; and (4) the public interest favors granting relief. Id.
Under the alternative standard, the moving party may meet its burden by demonstrating either (1) a combination of probable success on the merits and the possibility of irreparable injury; or (2) that serious questions exist and the balance of hardships tips sharply in its favor. See id. This latter formulation represents two points on the sliding scale in which the required degree of irreparable harm increases as the probability of success decreases. See Oakland Tribune, Inc. v. Chronicle Publishing Co., 762 F.2d 1374, 1376 (9th Cir.1985).
In evaluating plaintiff's Lanham Act claims, it appears plaintiff is likely to succeed on the merits of these claims, and accordingly is entitled to preliminary relief.
Section 1125(c) of the Lanham Act provides for injunctive remedies for the dilution of trademarks. To establish a...
To continue reading
Request your trial
-
Global Mfg. Group, LLC v. Gadget Universe.Com
..."In contrast, nonfunctional features are those that are arbitrarily affixed or included for aesthetic purposes." GMC v. Let's Make A Deal, 223 F.Supp.2d 1183, 1196 (D.Nev.2002) (finding unique and ornamental design of the Hummer vehicle eligible for trade dress protection). For example, the......
-
Caesars World, Inc. v. Milanian, CV-S-02-1287-RLH RJJ.
...are identical to the elements necessary under section 43(a) of the Lanham Act, 15 U.S.C. s 1125(a). General Motors Corp. v. Let's Make A Deal, 223 F.Supp.2d 1183, 1188 (D.Nev. 2002); A.L.M.N. v. Rosoff, 104 Nev. 274, 277, 757 P.2d 1319 (1988). The Court will thus analyze these claims 23. Th......
-
Bentley Motors Ltd. v. McEntegart
...that defendant's car kits that replicate exterior features of Ferrari vehicles are considered trademark infringement); Let's Make a Deal, 223 F.Supp.2d 1183 (holding that defendant's car kits that capture the unique characteristics of Hummer vehicles are considered trademark and trade dress......
-
Smc Promotions, Inc. v. Smc Promotions
...of [his] trademark infringement or unfair competition claims, irreparable injury may be presumed." General Motors Corporation v. Let's Make A Deal, 223 F.Supp.2d 1183, 1197 (D.Nev.2002) (citing Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 612 n. 3 (9th Cir.1989)); Philip Morris Inco......