724 F.2d 327 (2nd Cir. 1983), 161, Warner Bros., Inc. v. Gay Toys, Inc.

Docket Nº:161, Docket 83-7365.
Citation:724 F.2d 327
Party Name:WARNER BROS. INC., Plaintiff-Appellee, v. GAY TOYS, INC., Defendant-Appellant.
Case Date:December 21, 1983
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

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724 F.2d 327 (2nd Cir. 1983)

WARNER BROS. INC., Plaintiff-Appellee,


GAY TOYS, INC., Defendant-Appellant.

No. 161, Docket 83-7365.

United States Court of Appeals, Second Circuit

December 21, 1983

Argued Oct. 26, 1983.

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[Copyrighted Material Omitted]

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Robert G. Mentag, Detroit, Mich. (Milton Wolson, Bernard Malina, New York City, of counsel), for defendant-appellant.

Arthur J. Greenbaum, New York City (Carol F. Simkin, Louis S. Ederer, Jane Ginsburg, Cowan, Liebowitz & Latman, Michael I. Davis, Weiss, Dawid, Fross, Zelnick & Lehrman, New York City, of counsel), for plaintiff-appellee.

Before LUMBARD, OAKES, and KEARSE, Circuit Judges.

OAKES, Circuit Judge:

This is the rather unusual case of an appeal from the grant of a final injunction after this court had directed the district court to enter a preliminary injunction. Warner Bros. Inc. v. Gay Toys, Inc., 658 F.2d 76 (2d Cir.1981). On remand, the United States District Court for the Southern District of New York, Whitman Knapp, Judge, granted summary judgment for Warner Bros. Inc. (Warner), on its claim under Section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a) (1976), that the toy cars marketed by Gay Toys, Inc. (Gay Toys), and patterned after the "General Lee," 1 an automobile featured in Warner's television series "The Dukes of Hazzard," tended to confuse purchasers as to their source or sponsorship. We affirm.

Our previous opinion held that (1) unregistered trademarks are protected under Sec. 43(a), 658 F.2d at 77-78; (2) protection may extend to symbols associated with specific ingredients of successful television series such as the symbols which identify the "General Lee," id. at 78; (3) to obtain an injunction under Sec. 43(a) only a likelihood of confusion as to source or sponsorship need be shown, id. at 79; and (4) Gay Toys' use of the "General Lee" symbols created a likelihood of confusion as to the source or sponsorship of the toy cars, id. at 78, 79. We rejected Gay Toys' argument that for likelihood of confusion to exist it was necessary that Warner be the manufacturer of the real "General Lee" toy car. Id. at 79. 2

On remand the district court, after questioning the applicability of the Lanham Act in the first instance, 553 F.Supp. 1018 at 1019, said that our opinion "conclusively presumed" both the desire of Warner's audience for officially sponsored toys and the deliberate creation by Gay Toys of sufficient confusion to invoke the Act. Id. at 1020. The court, then, assumed that the consumers' motivation in desiring to buy officially sponsored toys was somehow relevant in establishing the requisite secondary meaning to show identification with a source. It concluded that in our earlier opinion we "presumed" that consumers' desire

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for the "official" toy demonstrated this motivation. The court then rejected the defense that the design of the "General Lee" is "functional" insofar as the symbols are required to permit children to play "The Dukes of Hazzard" with the toy car. Id. at 1020-21. It also rejected defenses of abandonment and lack of clean hands. 553 F.Supp. at 1020-21.

On this appeal Gay Toys renews the argument of "functionality" made below. It further claims that because "consumer motivation" is a necessary element of secondary meaning required to show identification with a source, and proof of such was lacking here, the district court decision (and by implication, at least, our previous decision) was contrary to a long line of authority in this court. 3 Finally it argues that the district court erred in rejecting as a matter of law the defenses of lack of clean hands and abandonment by "naked licensing."


Functional symbols (those that are essential to a product's use as opposed to those which merely identify it) are not protected under Sec. 43(a), see, e.g., Vibrant Sales, Inc. v. New Body Boutique, Inc., 652 F.2d 299, 303 (2d Cir.1981), cert. denied, 455 U.S. 909, 102 S.Ct. 1257, 71 L.Ed.2d 448 (1982). Gay Toys claims the "General Lee" symbols in question are functional in the sense that they are essential to enable children to play "Dukes of Hazzard" with the cars. This is a paradoxical argument, since it is precisely the fact that the symbols provide identification that make them "functional" in the sense urged on us by Gay Toys, while Warner's exclusive right to use its own identifying symbols is exactly what it seeks to protect. Carried to a logical conclusion, Gay Toys' argument would enlarge the functionality defense so as to eliminate any protection for any object, since presumably each feature of any object is designed to serve a particular "function" in Gay Toys' sense of the term.

Warner's position is that functionality should be considered in terms of toy cars generally and not "Dukes of Hazzard" toy cars specifically, so that, for example, the use of wheels cannot be protected, but the Confederate flag marking coupled with the numerals, all on a bright orange background, can be. It cites In re DC Comics, 689 F.2d 1042, 1045 (Cust. & Pat.App.1982) (dolls generally and not Superman dolls are the class by which functionality is determined), and language of this court relying upon a law review note that identifies functional features as those "having value independent of identification." Vibrant Sales, Inc., 652 F.2d at 303 (citing Developments in the Law--Competitive Torts, 77 Harv.L.Rev. 888, 918 (1964)).

Gay Toys relies primarily on a Ninth Circuit case which held that an identifying insignia of a fraternal organization is functional and nonprotectable as a trademark when used on jewelry, at least as long as no one is confused that the jewelry was made or licensed by the fraternity. International Order of Job's Daughters v. Lindeburg & Co., 633 F.2d 912...

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