John Walker & Sons, Ltd. v. Bethea, Civ. A. No. 66-526.

• Decision Date: 19 September 1969
• Docket Number: Civ. A. No. 66-526.
• Court: U.S. District Court — District of South Carolina
• Parties: JOHN WALKER & SONS, LTD., Plaintiff, v. John W. BETHEA, Defendant.

305 F. Supp. 1302

JOHN WALKER & SONS, LTD., Plaintiff, v. John W. BETHEA, Defendant.

Civ. A. No. 66-526.

United States District Court D. South Carolina, Florence Division.

September 19, 1969.

William H. Blackwell, Wright, Scott, Blackwell & Powers, Florence, S. C., and James L. Kurtz, Mason, Fenwick & Lawrence, Washington, D. C., for plaintiff.

William T. McGowan, Jr., Florence, S. C., and S. Norwood Gasque, Latta, S. C., for defendant.

AMENDED ORDER

HEMPHILL, District Judge.

This is a civil action based upon unfair competition and trademark infringement arising under the Trademark Laws of the United States, 15 U.S.C. § 1051 et seq., and specifically under 15 U.S.C. § 1114¹. Plaintiff John Walker & Sons, Ltd., is a blender, bottler and seller of scotch whiskey, enjoying worldwide recognition of its product, which is distributed in many countries. Defendant operates a twenty unit motel under the style of Johnny Walker Motel on Highway 301 near Latta in Dillon County, South Carolina. Plaintiff, alleging trademark infringement and unfair competition, prays that defendant be enjoined from using the words Johnny Walker in connection with his motel enterprise. The matter was heard by the court without a jury on June 2nd and 3rd of 1969. After hearing the testimony, listening to the arguments of counsel and reviewing the entire matter, including exhibits, this court publishes its:

FINDINGS OF FACT

1. Plaintiff, John Walker & Sons, Ltd., is a limited liability company organized and existing under the laws of the United Kindom, having its principal place of business in London, England. John Walker & Sons, Ltd. was founded in 1820 as a sole proprietorship, was later incorporated and in 1923 became a public company. In 1925, Distillers Company, Ltd., purchased all the ordinary stock and John Walker & Sons became a wholly owned subsidiary of the former company.

2. John Walker & Sons, Ltd., has, since 1820, blended, bottled and sold scotch whiskey. The company distributes its product under the labels, JOHNNIE WALKER Red Label and JOHNNIE WALKER Black Label. The trademark JOHNNIE WALKER is registered in over 150 countries. It has long been used in the United States and was first registered in this country in 1910. In the United States from 1935 to 1960 John Walker & Sons has sold its whiskey under the JOHNNIE WALKER Red Label and JOHNNIE WALKER Black Label wherein the words JOHNNIE WALKER were presented in Old English Script. In 1960 the labels were changed so that the words JOHNNIE WALKER were presented in a blocked form, which is currently used. The words Red Label and Black Label which appear on the respective labels continued to be, and today are, presented in Old English Script. Associated with JOHNNIE WALKER Red Label, appearing both upon the bottle and generally in the advertising of that whiskey is the picture of a striding figure, an English gentleman wearing a top hat and monocle and carrying a cane. This figure seems to have been extensively advertised with JOHNNIE WALKER Red Label whiskey and is widely associated by the general public with JOHNNIE WALKER whiskey.

3. JOHNNIE WALKER has been widely advertised and is highly popular in the United States and in South Carolina. It has been extensively advertised in magazines and newspapers and by other promotional methods such as bill-boards and signs; in connection with sporting events and by various "point of sale" promotional techniques. Johnnie Walker advertisements have appeared in such national publications as Fortune, Look, Esquire, Playboy, Life, Sports Illustrated, Yachting, Boating, Wall Street Journal, Time, Newsweek, and New Yorker. Since 1935 the United States importer of JOHNNIE WALKER whiskey has expended in excess of twenty-six (26) million dollars on advertisement and John Walker & Sons, Ltd., has made advertising contributions in this country of nearly twelve (12) million dollars. During the five-year period between 1963 and 1968 some 5,359,250 cases of scotch, each containing twelve "fifths," were sold in the United States. Approximately 88 percent of the business of John Walker & Sons, Ltd. is export business and sales in the United States comprise in excess of 25 percent of its exports. Thus it is clear that JOHNNIE WALKER scotch is widely advertised and highly popular in the United States. The name JOHNNIE WALKER has become associated by the general public with fine scotch whiskey. The words JOHNNIE WALKER therefore have acquired a "secondary meaning" with the general public, designating the particular type of scotch whiskey sold by John Walker & Sons, Ltd. The words JOHNNIE WALKER are not descriptive of plaintiff's product, but rather represent an arbitrary mark by which the public distinguishes plaintiff's product from like scotch whiskies sold by competitors.

4. The defendant is named John Walker Bethea and is known by his friends as "Johnny Walker Bethea." For all practical purposes "Johnny Walker" is his first name.

The defendant is forty-six years old, married and has three young children. He graduated from high school in 1941 and shortly thereafter entered the Navy, where he served during World War II. Defendant was discharged from the Navy in 1946 and subsequently opened a small retail and wholesale ice cream establishment in Hartsville, South Carolina. At the suggestion of his mother he named it "Johnny Walker Ice Cream." Defendant operated this ice cream business about eleven years. After closing that business he held two jobs during a short period of time before constructing his motel which was opened in March of 1960.

5. Defendant's motel at first consisted of ten units and an office. It occupies four or five acres fronting on U.S. Highway 301 which his mother gave him for the purpose of constructing the motel. The motel site is part of a 60-acre tract which was the Bethea family farm. Since construction of the first ten units, defendant has added an additional ten units, a breezeway and a swimming pool. Defendant lives in a house about a hundred yards behind the motel and operates the business himself with the help of two or three employees and the occasional help of his wife. The motel is located on U.S. Highway 301 which prior to the opening of I-95 was a principal artery for north-south vehicular traffic. It appears that most of the persons traveling U.S. 301 and most of defendant's patrons are travelers from the northeastern states to the resort areas of Florida. Defendant testified that it was again at the suggestion of his mother that he selected the name "Johnny Walker Motel" for his business. When defendant adopted and used the name "Johnny Walker" for his motel, he was aware that there was a brand of liquor sold under the name JOHNNIE WALKER.

6. Defendant's motel operation is a small family business limited to one location. The extent of his advertising activities is likewise limited. He is listed with the American Automobile Association (AAA) and he distributes to his guests postal cards with a picture of his motel shown thereon and mileage cards giving distances north and south of the motel. His exterior advertising consists of five highway approach signs and one sign located in front of the motel. These signs were erected contemporaneously with the opening of the motel. The signs were originally comprised of a maroon background with the words "Johnny Walker" presented in Old English Script. In 1963 when the maroon color faded the background was changed to red. Subsequently, in 1965, the body of the sign was again changed from red to black. The Old English Script form of the words "Johnny Walker" has at all times been maintained.

This court finds as a fact there is a likelihood of confusion, mistake, or deception caused by defendant's operating his motel establishment under the style "Johnny Walker Motel." In fact a substantial number of people are likely to associate defendant's motel with plaintiff's product. The public has come to associate the words "JOHNNIE WALKER" with whiskey and more particularly with a famous brand of scotch whiskey which is in fact produced by John Walker & Sons, Ltd. The results of three surveys² conducted by the plaintiff demonstrate that upon viewing a picture of the portion of defendant's sign which contains the words "Johnny Walker Motel" a substantial number of people made the association between the words "Johnny Walker" and liquor. Stated another way, the surveys proved that when shown to a substantial number of people, defendant's sign brought to mind plaintiff's product, whiskey.

These surveys competently and scientifically demonstrate that many people make the association between plaintiff's product and defendant's motel. It is a common practice for hotels and motels to use their name to sell alcoholic beverages under their name. Admiral Ben Bow Inns, Downtowner Motels, Hilton Hotels, Holiday Inns of America, Knott Hotels, Manger Hotels, Sheraton Hotels, and Waldorf-Astoria are several hotels and motels which sell alcoholic beverages under their names. Moreover, it is common knowledge that motels and hotels sell alcoholic beverages upon their premises. Additionally, the public is aware of the present trend for formerly specialized businesses to diversify their activities by entering other fields of endeavor. These factors could lead persons to conclude that plaintiff's whiskey and defendant's motel are somehow associated by causing confusion as to the source of either plaintiff's products or defendant's services.

7. John Walker & Sons first became aware that defendant was operating a motel under the name "Johnny Walker" in September or October of 1964 by a letter from its agent, the Canada Dry Corporation. After becoming aware of the situation, plaintiff decided to take action, and a letter was written to defendant in March of 1966 requesting that he discontinue operating his motel under the style "Johnny Walker Motel." Suit was filed on July 20, 1966. After...