Warner Bros., Inc. v. Gay Toys, Inc., 81 Civ. 1880 (WK).

• Decision Date: 05 January 1983
• Docket Number: No. 81 Civ. 1880 (WK).,81 Civ. 1880 (WK).
• Citation: 553 F. Supp. 1018
• Parties: WARNER BROS., INC., Plaintiff, v. GAY TOYS, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

553 F. Supp. 1018

WARNER BROS., INC., Plaintiff, v. GAY TOYS, INC., Defendant.

No. 81 Civ. 1880 (WK).

United States District Court, S.D. New York.

January 5, 1983.

Cowan, Liebowitz & Latman, P.C. by Carol Simkin, Weiss, Dawid, Fross, Zelnick & Lehrman by Michael Davis, New York City, for plaintiff.

Milton M. Wolson, Bernard Malina, New York City, Robert G. Mentag, Detroit, Mich., for defendant.

MEMORANDUM & ORDER

WHITMAN KNAPP, District Judge.

Plaintiff moves for partial summary judgment permanently enjoining defendant from manufacturing or distributing certain toy cars which are concededly patterned after the "General Lee," an automobile which plays a central role in plaintiff's formerly vastly successful television program, "The Dukes of Hazzard." The facts and contentions of the parties are set forth in our original opinion denying plaintiff's motion for a preliminary injunction (513 F.Supp. 1066) and in the Court of Appeals opinion reversing the same (658 F.2d 76). Familiarity with both of those opinions is assumed.

The principal dispute between the parties is whether there exists a viable issue of fact as to whether or not the distribution of defendant's toys has a tendency to foster the false assumption that such distribution is in some way sponsored by plaintiff. Defendant contends that there is no evidence to support the existence of such a tendency. Plaintiff responds that the tendency is conclusively established by the Court of Appeals opinion reversing our denial of temporary injunction. Defendant rejoins that since the Court was dealing only with temporary relief it did not intend its sweeping language to be given full effect, and that it should not be deemed to have foreclosed further examination of the issue. Although this rejoinder may be plausible, our duty is to take the opinion's language at face value, leaving it to the Court to make any modification it may deem appropriate.¹ We therefore grant summary judgment.

As any reversal of our judgment would result in further proceedings, we shall set forth in some detail our understanding of the issues involved and of the Court's resolution thereof so that — should such understanding turn out to be mistaken — the Court may be in a position to give meaningful direction to us and to the parties.

The instant case presents a classic dispute between a producer of television entertainment for children and a manufacturer of children's toys. Successful children's television programs usually produce an intense desire among their viewers to act out the parts of characters in the televised dramas. This, in turn, creates a market for toys which would assist the children in pursuing their fantasies. In the instant case, a rather striking automobile called the "General Lee" is prominent in plaintiff's show "The Dukes of Hazzard." This creates a great demand for toy facsimiles of the "General Lee."² The legal question which the phenomenon poses is whether or not a television producer should be entitled — in addition to whatever direct revenue it may obtain by selling its program to networks and independent stations — to exploit such demand for toy imitations by restricting their distribution to its own licensees. In other words, whether — in the absence of copyright, trademark, or patent protection — a producer can be granted a monopoly over any market created by the popularity of its show.³

In cases such as the one at bar — where no copyright, trademark or patent protection can be claimed — the Lanham Act has been used by plaintiffs seeking to enforce restrictions on the distribution of toy imitations. That Act, which deals with fraud and deception ("false designations of origin and false description"), is by no means an ideal vehicle. However, there appears to exist among toy distributors an assumption (wholly without the support of any fact of which we are aware) that children not only demand facsimile toys adapted to pursuing their fantasies, but also require assurance that the facsimiles be in some way "official" or "sponsored" by the television producer.⁴ It is the defendant's contention that this assumption is wholly unwarranted, and it asks leave to conduct discovery which, it asserts, would establish the contrary. Defendant further contends that it engaged in no deceptive practice warranting the imposition of sanctions upon it, but rather that it did no more than openly assert a right to share in whatever market may have been created by the success of plaintiff's television show.⁵ As we read the Court's opinion, however, it is the law of this case that these contentions are simply no longer relevant to our consideration. The Court has conclusively presumed — from the conceded fact that the facsimiles manufactured by the defendant are immediately associated by children with plaintiff's show — both the desire of the plaintiff's audience for sponsored toys and the deliberate creation by defendant of sufficient confusion to warrant invocation of the protection of the Lanham Act. 658 F.2d at 78.

In light of this conclusive presumption and of the Court's express finding that "any lingering doubt" as to the existence of confusion (and of defendant's intent to induce it) is eliminated by the conceded fact that defendant intended its toys to be used by children in "Dukes of Hazzard" games, further discovery on this issue would appear to be inappropriate. Defendant's request for such discovery is accordingly denied.

In addition to defendant's central contention that an issue of fact remains as to the tendency of its cars to confuse purchasers as to their sponsorship, defendant suggests several other areas where further discovery might lead to evidence on the basis of which it could resist plaintiff's demand for a permanent injunction. Defendant's position as to these additional areas is not stated with the utmost clarity, and some of its contentions were abandoned in the course of premotion conferences. However, as we analyze defendant's position, it still contends that further discovery might establish any one of the following three "defenses":

(a) The design of defendant's car is "functional" in that it permits children playing with the car to pretend that they are characters in "The Dukes of Hazzard";

(b) Plaintiff has not exercised sufficient control over the quality of the "General Lee" facsimiles distributed by its licensees and has thus abandoned its claim to Lanham Act protection;

(c) By making unjustified threats of criminal prosecution for copyright infringement, plaintiff has deprived itself of the "clean hands" essential to equitable relief.

The first of these contentions is rather bizarre, at least if we correctly interpret the Court of Appeals opinion. As above indicated, we read that opinion as adopting the position that a television producer is entitled to monopolize any market created by the popularity of its shows. If this interpretation be correct, it would be a strange doctrine that would permit a defendant to avoid an injunction by showing its products to be "functional" in that they were expressly designed to defeat...