724 F.2d 1320 (8th Cir. 1984), 82-2139, WSM, Inc. v. Hilton

Docket Nº:82-2139.
Citation:724 F.2d 1320
Party Name:WSM, INCORPORATED, Appellant, v. Dennis E. HILTON and Country Shindig Opry, Inc., Appellees.
Case Date:January 12, 1984
Court:United States Courts of Appeals, Court of Appeals for the Eighth Circuit
 
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Page 1320

724 F.2d 1320 (8th Cir. 1984)

WSM, INCORPORATED, Appellant,

v.

Dennis E. HILTON and Country Shindig Opry, Inc., Appellees.

No. 82-2139.

United States Court of Appeals, Eighth Circuit

January 12, 1984

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[Copyrighted Material Omitted]

Submitted June 14, 1983.

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James W. Gallaher, Bushmann, Neff, Gallaher & Brown, Jefferson City, Mo., Lionel L. Lucchesi, Polster, Polster & Lucchesi, St. Louis, Mo., for appellees.

L. Lawton Rogers, III, Arlington, Va., Francis M. Wentworth, Jr., Nashville, Tenn., for appellant.

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Before JOHN R. GIBSON, and FAGG, Circuit Judges, and WOODS, [*] District Judge.

JOHN R. GIBSON, Circuit Judge.

"Opry," what it means and whether the word, as a registered trademark of WSM, Incorporated, was infringed bye Dennis Hilton and his Country Shindig Opry are the primary issues in this case. WSM is also the holder of trademarks for Grand Ole Opry and several marks using Opryland. The district court 1 found that "opry" was generic, that there was no confusion between the Country Shindig Opry and the various marks and enterprises of WSM, and that a permanent injunction should be denied WSM. WSM argues on appeal that the court erred in holding "opry" to be generic, in holding that there was no likelihood of confusion between the Country Shindig Opry and WSM's opry family of marks, and in limiting its consideration of dilution to "opry" and to a likelihood of confusion. We affirm the judgment of the district court.

WSM first made commercial use of the word "opry" in 1927 when the WSM Barn Dance Radio Program, which immediately followed a program of classical music, was referred to as the "Grand Ole Opry." "Grand Ole Opry" was registered as a trademark by WSM on July 11, 1950. WSM registered "Opryland USA" on February 6, 1973, a design of the same name on February 26, 1974, "Opryland Hotel" on February 17, 1981, and a design on April 14, 1981, "Opryland" for an amusement park on April 28, 1981, and "Opryland Talent Agency" on August 4, 1981.

"Opry" was registered by WSM on January 12, 1982. Over the years WSM has operated the various enterprises, including the presentation of the Grand Ole Opry.

Dennis Hilton commenced operating the Country Shindig on May 25, 1970, and used that name until the summer of 1973 when the business name was changed to Denny Hilton's Country Shindig Opry Show. As found by the district court, the name was changed after Hilton learned that potential customers believed that the show consisted wholly of dancing. On February 17, 1976, Hilton became the owner of a registered mark known as "Country Shindig."

In each of the years 1979 through 1982, WSM demanded that Hilton cease his alleged infringement of the mark "Grand Ole Opry." This action was brought in the spring of 1982 making the following claims against Hilton and the Country Shindig Opry: (1) infringement of WSM's registered trademarks in violation of 15 U.S.C. Sec. 1114(1) (1963); (2) engaging in unfair competition in violation of 15 U.S.C. Sec. 1125 (1982) and Missouri common law; and (3) diluting the distinctiveness of WSM's trademarks in violation of Sec. 417.061 of the Revised Statutes of Missouri.

Following a two-day trial, the court entered its order and extensive findings of fact. 2 The court stated that the word

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"opry" is a dialectical variation of "opera," which has been in common use from the eighteenth century to the present, and that "opry" has been and is now used to describe a show consisting of country music, dancing, and comedy routines. The court found that the public is aware of the different ownership of the Grand Ole Opry and Denny Hilton's Country Shindig Opry Show and has exhibited no confusion in distinguishing them. WSM, Inc. v. Hilton, 545 F.Supp. 1212, 1214-16 (W.D.Mo.1982).

The district court held that the test of infringement under Sec. 1114(1) required a showing that confusion, mistake or deception is likely to occur in the minds of the public. It found that "opry" was the only possible cause for confusion and concluded that

the members of the public who purchase country music entertainment services exercise a degree of care which obviates the likelihood that they will be confused as to whose services they are purchasing. The public has exhibited no confusion in distinguishing between Lee Mace's Ozark Opry and Denny Hilton's Country Shindig Opry Show, or in distinguishing between the Grand Ole Opry and Denny Hilton's Country Shindig Opry Show. Persons who attended the Ozark Opry or the Country Shindig Opry Show do not believe that they are attending a performance of the Grand Ole Opry.

Hilton, supra, 545 F.Supp. at 1217.

The district court also concluded that no evidence was introduced by WSM which

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showed that the public was actually confused about whether there was an association between Grand Ole Opry and Denny Hilton's Country Shindig Opry Show.

The district court held that the prima facie showing of WSM's exclusive right to use Opry as its mark under 15 U.S.C. Sec. 1115(a) (1982) was rebutted by a showing that the word "opry" is generic. The buyer understanding test was applied. The court found that "opry" is a generic word which connotes in the minds of the public a country music performance that includes dancing and comedy routines. The court further found that the generic nature of the word "opry" did not change in 1927 when WSM commenced its commercial use of the word.

The district court concluded that WSM had not shown violation of Section 43(a) of the Lanham Act, 115 U.S.C. Sec. 1125(a), or the Missouri common law of unfair competition because the use of the word "opry" by Hilton does not amount to a false description or representation since the word is generic. It concluded that because of its finding that the business entitled "Denny Hilton's Country Shindig Opry Show" is not likely to cause confusion or misapprehension in the minds of the public with respect to the marks owned by WSM, there was no basis for a common law unfair competition claim. The district court also rejected WSM's claim of violation of the Missouri Anti-Dilution Statute, Mo.Rev.Stat. Sec. 417.061 (1978), concluding that since "opry" is generic, the question of dilution does not arise.

WSM's request for a permanent injunction was denied. On appeal WSM argues that whether "opry" is generic must be evaluated at a relevant time and in a relevant market, and the district court erred in failing to so consider the issue. WSM argues that the evidence does not support the findings of the district court in this respect. It further argues that the district court failed to consider all of WSM's marks individually and collectively, and that it failed to consider Hilton's intent. WSM argues that the court's conclusion that the public associated Grand Ole Opry and Ozark Opry but found no inference of confusion between Grand Ole Opry and Country Shindig Opry was inconsistent. It further argues that the court improperly limited its consideration to "opry" with respect to dilution and did not consider the other marks in the "opry family," and limited its analysis to likelihood of confusion contrary to the clear language of the statute.

I.

A generic term refers to "a particular genus or class of which an individual article or service is but a member," Soweco, Inc. v. Shell Oil, 617 F.2d 1178, 1183 (5th Cir.1980), cert. denied, 450 U.S. 981, 101 S.Ct. 1516, 67 L.Ed.2d 816 (1981); Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir.1976); it suggests the "basic nature of articles or services." Soweco, supra, 617 F.2d at 1183. The test for deciding whether a word has become a generic title of a product or service is one of buyer understanding: "What do the buyers understand by the word for whose use the parties are contending?" Dresser Industries, Inc. v. Heraeus Engelhard Vacuum, Inc., 395 F.2d 457, 463 (3d Cir.1968), cert. denied, 393 U.S. 934, 89 S.Ct. 293, 21 L.Ed.2d 270 (1968), (quoting Bayer Co. v. United Drug Co., 272 F. 505, 509 (S.D.N.Y.1921)). See also Miller Brewing Co. v. Jos. Schlitz Brewing Co., 605 F.2d 990 (7th Cir.1979), cert. denied, 444 U.S. 1102, 100 S.Ct. 1067, 62 L.Ed.2d 787 (1980). We must apply the same test to our question which is one involving entertainment services.

How a particular word has been used and how it has been understood by the public is a question of fact. Dresser, supra, 395 F.2d at 461. A term for which trademark protection is claimed will fall in one of four categories: (1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary or fanciful. These categories, like colors in a spectrum, tend to blur at the edges and merge together, making it difficult to apply the appropriate label. Soweco, supra, 617 F.2d at 1183; Vision Center v. Opticks, Inc., 596 F.2d 111, 115 (5th Cir.1979), cert. denied,

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444 U.S. 1016, 100 S.Ct. 668, 62 L.Ed.2d 646 (1980). The correct categorization of a given term is also a factual issue. Soweco, supra 617 F.2d at 1183 n. 12; 3 Callmann, The Law of Unfair Competition, Trademarks and Monopolies, 66 (Cum.Supp.1982).

We therefore review the district court's findings under the clearly erroneous standard of Rule 52 of the Federal Rules of Civil Procedure. Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 793 (5th Cir.1983); Walt-West Enterprises, Inc. v. Gannett Co., 695 F.2d 1050, 1059 (7th Cir.1982); Hindu Incense v. Meadows, 692 F.2d 1048, 1050 (6th Cir.1982); Anti-Monopoly, Inc. v. General Mills Fun Group, Inc., 684 F.2d 1316, 1318 (9th Cir.1982), cert. denied, --- U.S. ----, 103 S.Ct. 1234, 75 L.Ed.2d 468 (1983); Dresser, supra, 395 F.2d at 461.

Under the Lanham Act, 15 U.S.C. Sec. 1057(b) (1976), WSM's registration of "opry" "shall...

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