Chemical Corp. of America v. Anheuser-Busch, Inc.

• Decision Date: 19 November 1962
• Docket Number: No. 19007.,19007.
• Citation: 306 F.2d 433
• Parties: CHEMICAL CORPORATION OF AMERICA, Appellant, v. ANHEUSER-BUSCH, INCORPORATED, Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

306 F.2d 433 (1962)

CHEMICAL CORPORATION OF AMERICA, Appellant, v. ANHEUSER-BUSCH, INCORPORATED, Appellee.

No. 19007.

United States Court of Appeals Fifth Circuit.

August 15, 1962.

Rehearing Denied November 19, 1962.

Julius F. Parker, Caldwell, Parker, Foster, Madigan & Oven, Tallahassee, Fla., for appellant.

Roy A. Lieder, St. Louis, Mo., J. Lewis Hall, Tallahassee, Fla., Owen J. Ooms, Ooms, Welsh & Bradway, Chicago Ill., Gravely, Lieder & Woodruff, St. Louis Mo., for plaintiff-appellee, Hall, Hartwell & Douglass, Tallahassee, Fla., of counsel.

Before TUTTLE, Chief Judge, and BROWN and BELL, Circuit Judges.

TUTTLE, Chief Judge.

This is a suit brought by the appellee, Anheuser-Busch, Incorporated, the owner of the slogan, "Where there's life . . . there's Bud," used in the sale of Budweiser beer, seeking to enjoin, as an infringement, a slogan subsequently adopted and used by the defendant-appellant in the sale of a combined floor wax and insecticide, "Where there's life . . . there's bugs." After a full trial on the merits, the trial judge granted a permanent injunction against the use of the "Bugs" slogan by the appellant.

The record on appeal fully warrants findings by the trial court of the following facts quoted from the court's "Findings of Fact:"

"Plaintiff is engaged in the manufacture and sale of various food and beverage products. The most notable of its products is Budweiser beer. This beer is also advertised and marketed under the name of "Bud" as well as Budweiser beer. Both of these names have been registered as trademarks in accordance with the provisions of the Lanham Act, 15 U.S.C. Section 1051, et seq. In October, 1960, after this suit was commenced, plaintiff registered `Where there\'s life . . . there\'s Bud\' and `Where there\'s life . . . there\'s Budweiser\' on the supplemental register under the provisions of the Lanham Act.

"In 1933 plaintiff began using the slogan `Where there\'s life . . . there\'s Budweiser\' in its advertising. From 1933 to 1956 plaintiff used the slogan infrequently. In 1956 plaintiff undertook sales campaigns employing the slogans and trademarks `Where there\'s life . . . there\'s Bud\'. Plaintiff, having found that the slogans were effective in successfully marketing its product, spent in excess of $40,000,000.00 in advertising which contained the two slogans. Plaintiff advertised Budweiser beer with the slogans and trademarks on radio stations, television, national billboards, newspapers and national circulated magazines. The evidence shows that plaintiff\'s sales have increased since 1956 and a great portion of the increase is attributable to the success of plaintiff\'s advertising.

"The slogans were not affixed directly on the bottles or upon the beer cans, nor upon the labels on the bottles and cans. Some of the cartons and containers used in packaging and for carrying plaintiff\'s beer bore one or more of the slogans. These cartons and containers cost plaintiff approximately $9,000,000.00.

"In an effort to determine the effectiveness of the advertising program, plaintiff employed advertising surveys to determine whether the public was acquainted with the plaintiff\'s slogans, and whether the public associated the slogans with plaintiff\'s product. The results of the surveys showed that a substantial portion of the public was not only acquainted and familiar with the slogans but also associated the slogans with Budweiser beer.

"The court finds that as a result of the wide dissemination of advertising employing the slogans, for the long period which plaintiff has used the slogans in advertising its product, that the public did, in fact, know the slogans, associated the slogans with the products, and associated plaintiff as the source of the advertising.

"The court also finds that the slogans which were placed upon the containers and cartons were sufficient to identify the product.

"Defendant is engaged in the manufacture and sale of a floor wax which contains an insecticide. The product is sold under the name of Freewax. It has heretofore been marketed primarily in the Southern part of the United States. Defendant had been using the slogan `Life on Floors . . . Death on Bugs\' to advertise its product.

"At the time that the idea to use `Where there\'s life . . . there\'s Bugs\' arose, defendant knew that plaintiff was using the slogans `Where there\'s life . . . there\'s Bud\' and `Where there\'s life . . . there\'s Budweiser\'.

"On July 7, 1960, defendant, after warnings by plaintiff not to use the slogan, advertised Freewax on television in the Tallahassee, Florida — Thomasville, Georgia area.

"The court finds from listening to the tapes, and from watching the film strips, that defendant\'s use of the slogan was confusingly similar to plaintiff\'s. This is not to say that the tunes or the words in the advertising were exactly the same, but from the rhythm, meter and the pictures which appeared at the time that the slogan was used, when taken as a whole, created the impression that defendant\'s advertising had some connection with the plaintiff or plaintiff\'s product. Some of defendant\'s film strips show drinking glasses being filled, people dancing, and a simultaneous use of the slogan `Where there\'s life . . . there\'s Bugs\'. These films follow a format which plaintiff had employed for some four years. The court finds that the advertising of defendant is deceptively similar, so as to confuse the advertising of plaintiff and defendant.

"The court also finds that the value and effectiveness of plaintiff\'s prior advertising is impaired to some extent by the deceptively similar phraseology and treatment employed by defendant in its advertising. Unless enjoined, there is sufficient likelihood to damage to plaintiff, despite the fact that the court finds that no recompensable damages were incurred by plaintiff.

"The goods of plaintiff and the goods of defendant are not competitive, but the goods of plaintiff and defendant are sold at the same retail outlets and the association of bugs with Bud or Budweiser is sufficient to merit the apprehension that the ill repute of one type of goods is likely to be visited upon the other."

Without making any significant attack on the findings of fact, appellant here contends that these facts do not, under the Florida law, which appellant contends is the standard to be applied, provide basis for the granting of an injunction. Appellant's basic contention is that since it is clear that plaintiff and defendant are not in actual competition in the sale of their products — the one selling beer and the other selling a combined insecticide and floor wax — it has every right to appropriate and make use in any way it sees fit of the slogan which the appellee has popularized by the expenditures of effort and money over the years, regardless of any resulting injury or damage to the appellee caused by any confusion as to the source of the insecticide or by any dilution of or depreciation of the value of the slogan.

Appellee contends, on the contrary, that it has: (1) a federal right under the Lanham Act, 15 U.S.C.A. § 1114(1), which point was ruled against it by the trial court, and (2) a state common law action under the Florida law. It contends that the trial court properly found threatened injury to its common law trademark or business slogan and acts of unfair competition justifying the intervention of a court of equity. We shall first discuss the issue on the assumption that it is controlled solely by the Florida laws as in a diversity case.

We first dispose of the appellant's contention that the appellee is here seeking to preempt for itself exclusive use of any slogan containing the words "Where there's life." This is clearly not embraced in any claim made by the appellee. The appellee says merely that the complete slogan, "Where there's life . . . there's Bud," has, through its wide and repeated use, particularly by radio and television programs, become in fact identified with its product, Budweiser beer, and with it as the manufacturer of the product. It says that the defendant's use of a slogan that is deceptively similar to the entire slogan created by it is the thing to be restrained. It is obvious to any listener or reader that from any point of view from which it may be heard or seen it is the completed "bugs" slogan that is deceptively familiar with the "Bud" slogan, rather than merely the use of the words, "Where there's life." We conclude, therefore, that any protection that may be afforded to the appellee on the facts of this case would not, as fully recognized by the appellee, result in the appropriation of the words, "Where there's life," in combination with all other words by the appellee to the exclusion of all others.

The main thrust of the appellant's argument in this Court is that the absence of direct competition between Anheuser-Busch and Chemical Corporation of America in the sale by the former of beer and the sale by the latter of floor wax, prevents a court of equity, applying Florida law, from enjoining a deceptively similar slogan used by the latter in the sale of its products, notwithstanding the finding of the trial court that the adoption of the "bugs" slogan was with knowledge of the "Bud" slogan, and that the use of the "bugs" slogan would cause confusion in the minds of the public as to the source of the floor wax product and would damage the "public image" of the appellee by associating in the minds of the public the idea of bugs with a food product.

Appellant supports this thesis by referring to Florida cases in which the courts stress the matter of competition in cases in which the owner of a trademark has attempted to prevent its use by another in the sale of the same or similar products, particularly Stagg Shop of Miami, Inc. v. Moss, 120 So.2d 39, a case decided by the District Court of Appeals of...