WSM, Inc. v. Hilton, 82-4107-CV-C-5.

Citation545 F. Supp. 1212
Decision Date27 August 1982
Docket NumberNo. 82-4107-CV-C-5.,82-4107-CV-C-5.
PartiesWSM, INCORPORATED, Plaintiff, v. Dennis E. HILTON, an individual, and Country Shindig Opry, Defendants.
CourtU.S. District Court — Western District of Missouri

L. Lawton Rogers, Arlington, Va., David Brydon, Jefferson City, Mo., for plaintiff.

Lionel L. Lucchesi, St. Louis, Mo., James W. Gallaher, Jefferson City, Mo., for defendants.

ORDER AND MEMORANDUM

SCOTT O. WRIGHT, District Judge.

This action for permanent injunctive relief arises out of claims by WSM that Hilton and the Country Shindig Opry have infringed WSM's federally registered trademarks in violation of 15 U.S.C. § 1114(1), have engaged in unfair competition in violation of 15 U.S.C. § 1125 and Missouri common law, and have diluted the distinctiveness of WSM trademarks in violation of Section 417.061 of the Revised Statutes of Missouri. The parties have agreed that the central issue to be adjudicated by this Court is whether or not the word "Opry" is generic. If the Court finds that it is generic, then Hilton and the Country Shindig Opry are entitled to use it in describing the nature of the entertainment services which they offer to the public. If, on the other hand, the Court finds that "Opry" is not generic and has service-mark significance, then WSM is entitled to permanently enjoin the defendants' use of the word. The parties concede that the Court's finding on this issue has the same effect on each of the four counts alleged by WSM.

The case was bench-tried on July 13 and 14. After the trial, the parties submitted exhaustive briefs, proposed findings of fact and proposed conclusions of law. The Court, after a thorough review of the evidence and the law, finds that the word "opry" is generic, that the defendants may use the word to describe their entertainment services, and that, as a consequence, the registration of the word "Opry" by WSM in January of 1982 is cancelled.

I. FINDINGS OF FACT

1. WSM is a Tennessee corporation with a place of business located at 2800 Opryland Drive, Nashville, Tennessee. Dennis Hilton is a resident of Missouri and has a place of business at Highway 54 in Osage Beach, Missouri. Country Shindig Opry is a Delaware corporation which has its principal place of business in Osage Beach, Missouri. Hilton is the sole shareholder, sole director and chief executive officer of Country Shindig Opry.

2. WSM has for many years provided entertainment services in interstate commerce under the name of "Grand Ole Opry." The name "Grand Ole Opry" was registered on July 11, 1950 and bears U. S. Registration Number 527,589. The registration has been renewed and is presently in effect. On May 21, 1957, WSM obtained a second federal registration of "Grand Ole Opry" for entertainment services which would be produced for television. The second registration bears the number 645,898.

3. WSM is the owner of the registered mark known as "Opryland USA" for amusement park services. The mark was obtained on February 6, 1973, and bears U. S. Registration Number 952,938.

4. WSM is the owner of the registered mark known as "Opryland USA" (design). It was obtained on February 26, 1974, and bears U. S. Registration Number 979,662.

5. WSM is the owner of the registered mark known as "Opryland Hotel" for hotel and restaurant services. The mark was obtained on February 17, 1981, and bears U. S. Registration Number 1,147,384.

6. WSM is the owner of the registered mark known as "Opryland Hotel" (design). It was obtained on April 14, 1981 and bears U. S. Registration Number 1,151,290.

7. WSM is the owner of a registered mark known as "Opryland" for amusement park services. The mark was obtained on April 28, 1981, and bears U. S. Registration Number 1,152,702.

8. WSM is the owner of the registered mark known as "Opryland Talent Agency" for entertainment booking services. The mark was obtained on August 4, 1981, and bears U. S. Registration Number 1,164,025.

9. WSM is the owner of a registered mark known as "Opry" for entertainment services. The mark was obtained on January 12, 1982, and bears U. S. Registration Number 1,186,169.

10. The word "opera" has been in common use from the eighteenth century to the present in connection with classical grand opera and with satirical references to grand opera. Several of the satirical references to grand opera include "horse opera," "medicine opera," "jig opera," and "burnt-cork opera." A "horse opera" describes a particular genre of cowboy-western movie in which western folk songs are sung by the cowboys. A "medicine opera" describes an entertainment program which often consists of the showing of a short motion picture, of the live performance of folk or country songs and dances, of comical displays by white persons disguised as Negroes, and of the sale of medicinal and other goods. A "jig opera" or "burnt-cork opera" describes a minstrel show performed by black persons or white persons with blackened faces. These types of "operas" were often performed in the town "opera house."

11. Certain persons who reside along the mid-Atlantic seaboard, in Appalachia and in the Ozarks have adhered to a rule of pronunciation under which words ending with the letter "a" are pronounced as if the word ended with the letter "y". The word "opera" is among at least 175 words to which this rule of dialectic pronunciation applies. For example, "opera" is pronounced as "opery" or "opry". The horse, medicine and jig operas were often respectively referred to as "horse opry" or "hoss opry", "medicine opry" or "med-opry", and "jig opry."

12. WSM first made commercial use of the word "opry" in 1927. The adoption of the "Grand Ole Opry" mark by WSM had its origin in the satirical contrast to a program of grand opera which immediately preceded the WSM Barndance Radio Program. Judge George D. Hay, the WSM radio announcer for the Barndance, established the satirical reference when he commented on the program that "for the past hour we have been listening to music taken largely from grand opera, but from now on we will present, `The Grand Ole Opry.'" Judge Hay, as a newspaper reporter who lived in close contact with the rural and mountain people of Tennessee, was aware of their common vernacular, was familiar with the dialectic variation of "opera" as "opry" and knew that the satirical comparison with grand opera would be enhanced by the use of the word "opry."

13. The word "opry" is listed and defined in Webster's New Third International Dictionary as a dialectic variation of the word "opera" and as a substandard word which is today used by certain portions of the speaking American public. The use of the word "opry" is more likely to occur in oral speech rather than in printed matter. The American Thesaurus of Slang lists "opry" as a "musical performance," describes an "opery house" as a "theatre," and includes "horse opera" and "hoss opry" among terms referring to a "circus."

14. The word "opry" has been and is now used in connection with country music performances of various types. Cowboy performers in the "horse oprys" sang western songs. Minstrels in the "medicine," "jig" and "burnt-cork" oprys sang country and folk songs, and danced to similar music. Today, the word "opry" describes a show consisting of country music, dancing and comedy routines. It does not always connote "Grand Ole Opry" when it is used in oral or written discourse. When "opry" is used in connection with a description of the country music entertainment services provided by the Grand Ole Opry, it connotes the Grand Ole Opry. Similarly, when it is used in connection with the country music entertainment services provided by other organizations, like Dennis Hilton's Country Shindig Opry Show, Lee Mace's Ozark Opry, the Grapevine Opry, the Union Mill Opry, the Country Hayride Opry, and the Kansas City Opry, it connotes those organizations.

15. On February 20, 1962, Lee Mace became the owner of the registered mark known as "Ozark Opry" for entertainment services. That mark bears U. S. Registration Number 727,814. Mace had been providing opry entertainment to the public at his business establishment in Osage Beach, Missouri since 1954. In the early 1960's, Austin Wood, a licensee of WSM, began to provide country music entertainment services to the public under the name Austin's Ozark Nashville Opry. Austin's Opry featured persons who performed at the Grand Ole Opry. Lee Mace objected to Austin's use of the word "Ozark." As a consequence, Austin changed the name of his show to Austin's Nashville Opry.

16. In 1969, WSM instituted suit against Kansas City Southern Industries the employer of Lee Mace, for infringement of its Grand Ole Opry registered mark. The suit was settled in 1970. Under the settlement agreement, the mark "Ozark Opry" was assigned to WSM under a license agreement executed on May 11, 1970 and reaffirmed on May 11, 1980. The license agreement prohibits Mace from using the business title "Ozark Opry" in Kentucky and Tennessee. Mace is not prohibited from using the word in the other 48 states. The agreement also prohibits Mace from advertising that his opry is connected with the Grand Ole Opry, and establishes certain standards which Mace must follow with respect to the appearance of the facility, the quality of the performance and the lyric content of the songs sung at the opry. Mace writes the show, and selects the members of the cast and the songs to be performed. WSM has periodically checked the performance against the standards established in the license. WSM has never questioned any of Mace's business practices or the quality of the performances.

17. Hilton commenced business as the Country Shindig on May 25, 1970. The name "Country Shindig" was used from May 25, 1970 to the summer of 1973. In the summer of 1973, the name was changed to Denny Hilton's Country Shindig Opry Show. The name was changed after Hilton learned that potential customers believed that the show consisted...

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