Processed Plastic Co. v. Warner Communications, Inc.
| Decision Date | 04 March 1982 |
| Docket Number | No. 81-2157,81-2157 |
| Citation | 675 F.2d 852 |
| Parties | PROCESSED PLASTIC COMPANY, Plaintiff, Counterdefendant-Appellant, v. WARNER COMMUNICATIONS, INC., Defendant-Appellee, and Warner Bros., Inc., Defendant, Counterplaintiff-Appellee. |
| Court | U.S. Court of Appeals — Seventh Circuit |
Lambert M. Ochsenschager, Reid, Ochsenschlager, Murphy & Hupp, Aurora, Ill., for plaintiff, counterdefendant-appellant.
James M. Amend, Kirkland & Ellis, Chicago, Ill., for defendant-appellee.
Before CUMMINGS, Chief Judge, and PELL and WOOD, Circuit Judges.
This appeal is taken by plaintiff, counterdefendant-appellant Processed Plastic Company from an order granting a preliminary injunction in favor of the defendant, counterplaintiff-appellee Warner Bros., Inc., under Section 43(a) of the Lanham Act. The preliminary injunction order granted by the United States District Court for the Northern District of Illinois, Eastern Division, enjoined the Processed Plastic Company from manufacturing or distributing toy cars bearing the symbols of origin which have become associated with Warner Bros.' "The Dukes of Hazzard" television series. For the reasons stated herein, we affirm.
The facts of this case are substantially undisputed. Plaintiff, counterdefendant-appellant, Processed Plastic Company (hereinafter "PPC") is a Delaware Corporation located in Kane County, Illinois, engaged in the manufacture and sale of plastic toy products including toy cars and other vehicles. Defendant, counterclaimant-appellee Warner Bros., Inc. is a major supplier of movies and television programs with a registered copyright in the "Dukes of Hazzard" television series.
In 1981 PPC modified the mold of a plastic Maverick toy car which the company had manufactured for approximately ten years previously so as to resemble a car that figures prominently in the "Dukes of Hazzard" television series, the so-called "General Lee" car. 1 In the same year PPC began producing for the first time a large plastic 1969 Dodge Charger toy car also modeled after the "General Lee."
The "General Lee" of the "Dukes of Hazzard" television series is a bright orange-colored 1969 Dodge Charger with a Confederate flag painted on the roof and the numbers "01" painted on the two side doors. The "General Lee" car appears in approximately 30% to 35% of each broadcast of the television show; it is considered by the producers to be a "star" of the show and one of the leading contributors to the show's success. The "Dukes of Hazzard" series, which has been broadcast since 1979, was ranked as the third most popular show on commercial television during the 1980-1981 season, reaching more than 46 million viewers weekly.
As modified, PPC's Maverick toy car was produced in a bright orange color, with a Confederate flag affixed to the roof and the numerals "07" on the two side doors. PPC also introduced its toy model of a 1969 Dodge Charger in a bright orange color, with a Confederate flag on the top and the numerals "07" on the side doors.
On June 1, 1981, PPC initiated this lawsuit by filing a complaint for declaratory and injunctive relief in the United States District Court for the Northern District of Illinois, Eastern Division, against Warner Communications, co-defendant herein, and its wholly-owned subsidiary Warner Bros., Inc. for violations of Sections 1 and 2 of the Sherman Act, 15 U.S.C. §§ 1 and 2. The complaint alleged that Warner Bros., Inc., in combination and conspiracy with its parent company, Warner Communications, Inc., attempted to license certain rights which it claimed arose out of its "Dukes of Hazzard" television show to manufacture a toy car named the "General Lee." Furthermore, the complaint alleged that the defendants embarked upon a campaign of harassment and predatory conduct in which the defendants threatened to enforce their claimed licensing rights through legal action for the purpose of discouraging and inhibiting the production and sale of any toys in competition with the "General Lee" toy car product. 2
Warner Bros. had previously granted a number of toy manufacturers licenses to manufacture and sell replicas of the "General Lee". The estimated retail sales of licensed products based on the "General Lee" was over $100 million in 1981. In a motion for a temporary restraining order and a preliminary injunction Warner Bros. counterclaimed for copyright infringement under 17 U.S.C. § 101 et seq. and for trademark infringement under 15 U.S.C. § 1059 et seq. as well as under common law trademark infringement, false designation of origin and related state and common law theories of action.
The hearing on Warner Bros.' motion for a preliminary injunction was held on June 19 and 26, 1981. At the hearing Warner Bros. introduced a survey of children between the ages of 6 to 12 in which 82% of the children identified a toy car identical to PPC's Maverick Rebel as the "Dukes of Hazzard" car and of that number 56% of them believed it was sponsored or authorized by the "Dukes of Hazzard" television program.
At the hearing, the vice president of PPC admitted under questioning that following the modification of the Maverick toy car and the introduction of the 1969 Dodge Charger in 1981, the company had taken four times as many orders of the toy "Rebel" cars as had ever been sold of the former Maverick toy car line in one year. The vice president attributed the upsurge in sales in part to the popularity of the "Dukes of Hazzard" television series. He also admitted that in part the choice of the late model 1969 Dodge Charger, the use of the orange color, the symbols "07" and the Confederate flag on the "Rebel" cars, were with reference to the "General Lee" car shown in the television series and in response to the demand for that particular toy car by PPC's customers. The vice president further testified that in the marketing, advertising and packaging of the "Rebel" cars no reference was made to the "Dukes of Hazzard," "Warner Bros.," or to the "General Lee". 3
On the basis of the evidence adduced at the hearing the district court held that Warner Bros. was entitled to a preliminary injunction on its Section 43(a) infringement claim because Warner Bros. was likely to prevail on the merits of that claim and would suffer irreparable harm without adequate remedy at law unless a preliminary injunction issued. Specifically, in its preliminary injunction order of June 30, 1981, the district court found:
For purposes of this order, the two DX-20 and DX-21 toy cars being manufactured and sold by PPC infringe Warner Bros.' rights in the General Lee car as shown in "The Dukes of Hazzard" television series. Specifically, PPC's imitation of the General Lee car (DX-20 and DX-21) is a deliberate attempt to represent PPC's toy cars as replicas of Warner Bros.' General Lee car and thereby to benefit from the consumer demand created for authentic replicas by Warner Bros.' successful television series and by Warner Bros.' advertising expenditures. PPC's actions are likely to cause and have caused confusion among potential customers as to the source and sponsorship of PPC's imitations of the General Lee car.
Accordingly, the district court enjoined PPC from manufacturing, selling, or distributing toy cars bearing the symbols of origin which have become associated with Warner Bros.' the "Dukes of Hazzard" television series. PPC thereupon appealed to this court.
The issue on appeal is whether the district court abused its discretion in entering a preliminary injunction against the manufacture and sale of toy cars by PPC. PPC takes the position that the district court applied an erroneous standard in finding that Warner Bros., Inc. had a likelihood of success on the merits of its infringement claim by failing to address the issue of secondary meaning. 4 PPC argues that Warner Bros. has at best shown that the "General Lee" car is a designation of its product the "Dukes of Hazzard" television series but not an identification of the producer Warner Bros., Inc., noting in this regard that "there was never a shred of evidence that consumers even believed the 'General Lee' was sponsored by Warner Bros." Thus according to PPC the Warner Bros.' survey fails to address the "critical issue" since it only indicates that "some small children thought the PPC car was sponsored or authorized by 'The Dukes of Hazzard' television program."
However, this Court has previously noted that to establish secondary meaning it is not necessary for the public to be aware of the name of the manufacturer which produces a product; rather, it is sufficient if the public assumes that the product comes from a single though anonymous, source. Union Carbide Corp. v. Ever-Ready, Inc., et al., 531 F.2d 366 (7th Cir. 1976), cert. denied, 429 U.S. 830, 97 S.Ct. 91, 50 L.Ed.2d 94 (1976); see also Miller Brewing Company v. Falstaff Brewing Corporation, (supra) 503 F.Supp. at 904; see generally J. Gilson, (supra) § 1.03; E. Vandenburgh, Trademark Litigation and Procedure, § 4.71 at 120 and § 1.23 at 34-36 (2d ed. 1968).
Therefore as a matter of law the capacity of the PPC "Rebel" or the "General Lee" cars to indicate the "Dukes of Hazzard" television show establishes the existence of secondary meaning in this case inasmuch as the toy cars are associated with a single source-the television series sponsored by Warner Bros. This follows even though Warner Bros., Inc. is not a manufacturer of toy cars. See e.g., Boston Pro. Hockey Assn. v. Dallas Cap and Emblem Mfg., Inc., 510 F.2d 1004, 1012 (5th Cir. 1975), cert. denied, 423 U.S. 868, 96 S.Ct. 132, 46 L.Ed.2d 98, reh. denied, 423 U.S. 991, 96 S.Ct. 408, 46 L.Ed.2d 98 (1975) (discussed infra). 5
It should be noted that Warner Bros., Inc. v. Gay Toys, Inc., 658 F.2d 76 (2nd Cir. 1981), which was decided subsequent to the district court's judgment herein, is practically on all fours with the instant...
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