Southern Monorail Co. v. Robbins & Myers, Inc.

Citation666 F.2d 185
Decision Date22 January 1982
Docket NumberNo. 81-7244,81-7244
PartiesSOUTHERN MONORAIL COMPANY, Plaintiff-Appellee, v. ROBBINS & MYERS, INC., Defendant-Appellant. . Unit B *
CourtUnited States Courts of Appeals. United States Court of Appeals (5th Circuit)

Kilpatrick & Cody, Jerre B. Swann, Atlanta, Ga., for defendant-appellant.

Chambers, Chambers & Chambers, John W. Chambers, Jr., Atlanta, Ga., for plaintiff-appellee.

Appeal from the United States District Court for the Northern District of Georgia.

Before MORGAN, KRAVITCH and ANDERSON, Circuit Judges.

ANDERSON, Circuit Judge:

Plaintiff-appellee Southern Monorail Company ("Southern Monorail") sued defendant-appellant Robbins & Myers, Inc. ("Robbins & Myers") and defendant The Barton Company, Inc. ("The Barton Company"), alleging federal antitrust violations and related state claims. In its answer, Robbins & Myers counterclaimed against Southern Monorail for trademark/trade name infringement, unfair competition, unfair and deceptive trade practices, and money due on open account, under the Lanham Act, 15 U.S.C.A. § 1125(a) (West 1974) and under state statutory and common law. Robbins & Myers alleged that after it terminated Southern Monorail's distributorship, Southern Monorail unlawfully continued to advertise itself in the Atlanta Yellow Pages as an authorized representative for Twin City products, 1 thus improperly inducing potential Twin City customers to deal with Southern Monorail instead. Robbins & Myers moved for a preliminary injunction against Southern Monorail requiring the placement of an "intercept" on Southern Monorail's telephone number. An independent answering service would respond to calls made to that number, inquire whether the caller wished to speak with Southern Monorail or with Twin City, and then would provide the caller with the appropriate number. Concluding that Southern Monorail would suffer far more harm from the intercept than Robbins & Myers would endure without the intercept, the district court denied the preliminary injunction. We affirm.

The sole issue in this interlocutory appeal is whether the district court properly denied Robbins & Myers' motion for a preliminary injunction requiring an intercept on Southern Monorail's telephone number. 2

The four prerequisites for the issuance of a preliminary injunction are (1) a substantial likelihood that the movant will prevail on the merits; (2) a substantial threat that the movant will suffer irreparable injury if the injunction is not granted; (3) that the threatened injury to the movant outweighs the threatened harm an injunction may cause the opponent; and (4) that granting the preliminary injunction will not disserve the public interest. The district court's grant or denial of a preliminary injunction is reviewable only for abuse of discretion. See, e.g., Middleton-Keirn v. Stone, 655 F.2d 609, 610-11 (5th Cir. 1981); Foley v. Alabama State Bar, 648 F.2d 355, 358 (5th Cir. 1981); Clements Wire & Manufacturing Co. v. NLRB, 589 F.2d 894, 897 (5th Cir. 1979). Here, the district court denied the injunction solely on the basis of the third factor, concerning the balance of harm. A preliminary injunction may not issue unless the movant carries the burden of persuasion as to all four prerequisites. Vision Center v. Opticks, Inc., 596 F.2d 111, 114 (5th Cir. 1979), cert. denied, 444 U.S. 1016, 100 S.Ct. 668, 62 L.Ed.2d 646 (1980). Thus, because we uphold the district court's ruling on the balance of harm question, we need not address the parties' contentions concerning the other three factors.

We agree with the district court that the threatened injury to Robbins & Myers from the telephone directory advertisement does not outweigh the harm that Southern Monorail would suffer from an intercept on its telephone number. As the district court found, the only advertised association between Twin City and Southern Monorail appears in the current Atlanta Yellow Pages. Robbins & Myers has made no showing as to how much of its geographic market area for Twin City products is potentially affected by the advertisement. However, we note that Robbins & Myers' Twin City products are sold throughout the United States and Canada, not just in Georgia. (R-102). Consequently, any confusion caused by the allegedly improper advertisement appears restricted to a relatively small portion of the geographic market area for Twin City products, i.e., Robbins & Myers' Georgia business. In addition, Robbins & Myers has made little showing of actual harm. At the hearing on the preliminary injunction, counsel for Robbins & Myers stated that "(W)e will stipulate that we are not offering evidence of actual confusion." (T-47) Southern Monorail's president testified that Southern Monorail accounted for only 4-5% of the total sales of Twin City products in 1979 in the United States and Canada. Robbins & Myers produced no evidence indicating that Southern Monorail presently accounts for any greater proportion of the total business in Twin City products. In sum, the degree of harm to Robbins & Myers' business in Twin City products caused by the advertisement does not seem particularly great, especially when the restricted geographic (Georgia) and sales (4-5%) impact of the challenged advertisement is compared to the harm that Southern Monorail would suffer from the intercept.

Apart from Twin City, Southern Monorail represents four other companies: Kone, Mayfram, Ductoware, and American Monorail. Southern Monorail's president testified that in 1980, Twin City products accounted for only 20% of Southern Monorail's profit. (T-137) The other 80% derived from the sales of other represented companies' products and from Southern Monorail's parts and service business. 3 A telephone intercept would single out one represented company for special treatment. Southern Monorail argues that this singling-out would create the impression in a potential customer's mind that something improper is afoot at Southern Monorail, thus affecting Southern Monorail's other legitimate business. The district court apparently agreed with this contention, and we perceive no reason to disturb this finding.

Moreover, because Southern Monorail advertises nationally and receives phone calls from all over the country in connection with its business, potential customers who are unlikely to have seen the Atlanta Yellow Pages would encounter the suspicious intercept. For example, Southern Monorail split with Kone the $60,000 cost for an advertisement, not mentioning Twin City, in the Thomas Register, a national publication to which major United States users of crane and hoist equipment subscribe. In addition, Southern Monorail demonstrated that it places much value in the telephone number itself. Because the number is located in Southern Monorail's former exchange area, Southern Monorail must pay an extra charge to continue using it.

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  • Johnson v. U.S. Dept. of Agriculture
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    ...Callaway, 489 F.2d 567 (5th Cir.1974). Accord, United States v. Lambert, 695 F.2d 536 (11th Cir.1983); Southern Monorail Co. v. Robbins & Myers, Inc., 666 F.2d 185 (5th Cir. Unit B 1982). The United States magistrate found that granting the injunction in this case would not serve the public......
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    ...public interest. Id. at 1519; West Point-Pepperell, Inc. v. Donovan, 689 F.2d 950, 956 (11th Cir.1982); Southern Monorail Co. v. Robbins & Myers, Inc., 666 F.2d 185, 186 (11th Cir.1982). "The preliminary injunction is an extraordinary and drastic remedy not to be granted unless the movant '......
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    ...injury” even when the movant shows a substantial likelihood of success on the merits. Id. (quoting S. Monorail Co. v. Robbins & Myers, Inc., 666 F.2d 185, 188 (5th Cir. Unit B 1982)). Because dilution gradually “whittles away” a mark's uniqueness and distinctive selling power, its harm accr......
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    ...that satisfying one requirement does not necessarily affect the analysis of the other requirements. In Southern Monorail Co. v. Robbins & Myers, Inc ., 666 F.2d 185 (5th Cir. Unit B 1982), for example, the district court had denied a preliminary injunction solely because it found that the m......
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1 books & journal articles
  • Trademark Modernization Act and the Codification of the Presumption of Irreparable Harm
    • United States
    • University of Georgia School of Law Journal of Intellectual Property Law (FC Access) No. 30-1, 2022
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    ...seeking injunctive relief and had minimal likelihood of increased harm to its trademark); S. Monorail Co. v. Robbins & Myers, Inc., 666 F.2d 185, 187-88 (5th Cir. 1982) (dismissing the case on the balance of harm question).63. J. Thomas McCarthy, Are Preliminary Injunctions Against Trademar......

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