American Intern. Group, Inc. v. London American Intern. Corp. Ltd.

• Decision Date: 13 November 1981
• Docket Number: D,No. 23,23
• Parties: AMERICAN INTERNATIONAL GROUP, INC., Plaintiff-Appellant, v. LONDON AMERICAN INTERNATIONAL CORPORATION LIMITED and Midland Bank Limited, Defendants-Appellees. ocket 81-7237.
• Court: U.S. Court of Appeals — Second Circuit

Page 348

664 F.2d 348

212 U.S.P.Q. 803

AMERICAN INTERNATIONAL GROUP, INC., Plaintiff-Appellant, v. LONDON AMERICAN INTERNATIONAL CORPORATION LIMITED and Midland Bank Limited, Defendants-Appellees.

No. 23, Docket 81-7237.

United States Court of Appeals Second Circuit.

Argued Sept. 3, 1981.

Decided Nov. 13, 1981.

David R. Hyde, New York City (Loretta A. Preska, Cahill Gordon & Reindel, Stephen B. Judlowe, Hopgood, Calimafde, Kalil, Blaustein & Judlowe, New York City, on the brief) for plaintiff-appellant.

T. Barry Kingham, New York City (Jerome R. Bidinger, Robert E. Smith, Curtis, Mallet-Prevost, Colt & Mosle, New York City, on the brief), for defendants-appellees.

Before NEWMAN and KEARSE, Circuit Judges, and EGINTON, District Judge. ^*

KEARSE, Circuit Judge:

Plaintiff American International Group, Inc. ("AIG") appeals from a final judgment of the United States District Court for the Southern District of New York, Kevin Thomas Duffy, Judge, following the granting of summary judgment for defendants London American International Corporation Limited ("London American International" or "LAI") and Midland Bank Limited ("Midland") in AIG's action for infringement of its "American International" service mark. AIG complained that the defendants' use of "American International" in London American International's name violated the Lanham Trade Mark Act by infringing AIG's registered service mark in violation of 15 U.S.C. § 1114(1) (1976), and constituting a false designation of origin or false description of services in violation of 15 U.S.C. § 1125(a) (1976), and that such use diluted the distinctiveness of AIG's trade name in violation of New York General Business Law § 368-d (McKinney 1968).

Since we find that there were genuine issues as to material facts which were inappropriate for disposition on a motion for summary judgment, we reverse and remand.

FACTS

As set forth in various affidavits, depositions, reports and other documents submitted to the district court, the facts appear to be as follows. AIG is a Delaware holding company whose principal business is insurance. Currently headquartered in New York's financial district, the company was founded in Shanghai shortly after World War I and has been using the name "American International" since 1926. It has grown to be the largest international insurance organization in the United States, and one of the largest in the world, operating through more than 150 subsidiaries and related companies in more than 130 countries. Many of these operating companies include "American International" in their corporate name, often in conjunction with a geographic modifier, e. g., American International de Mexico, S. A., American International Insurance Company of Ireland, Ltd., American International Insurance Company (Nigeria) Limited, and American International Underwriters (London) Ltd. Although AIG provides sophisticated insurance coverage for a wide range of risks to businesses around the world, the majority of its income is derived not from risk underwriting but from the investment of insurance premiums. The bulk of this investment is in tax-exempt bonds, but AIG also invests in stocks, real estate, time deposits, collateral loans, and other short term investments. In addition to its investments and insurance services, AIG provides various real estate, broker-dealer, pension fund administration, and installment loan services. It thus provides a variety of international financial services to corporations.

Midland is the third largest bank in the United Kingdom and the twenty-sixth largest bank in the world. With its subsidiaries, it provides a wide range of financial services, both domestically and internationally, including commercial and merchant banking, insurance, travel, personal and corporate financial advice, and international export finance and marketing services. Midland owns 75% of London American International, which is the only Midland subsidiary to use the words "American International" in its name.

London American International is a British holding company with operations in more than 100 countries, providing international marketing and distribution services through one group of subsidiaries, and financing for purchasers of raw materials and manufactured goods in international trade through another group. Although LAI apparently does not itself underwrite insurance, at least one LAI subsidiary arranges insurance for its customers in most of its transactions. None of LAI's subsidiaries uses the words "American International" in its name. They identify themselves, in general, as members of the London American Group.

London American International has used its current name only since 1978. Prior to 1966 the company was known as Eggar Forrester & Verner Limited. In 1966 the name was changed to B.O.E.C.C. (Holdings) Limited, and in 1971 to London American Finance Corporation Limited. In 1977 London American International acquired a new subsidiary, B.O.E.C.C. (Medium Term) Limited, and this new subsidiary's name was changed to London American International Corporation Limited to reflect its international trading capabilities. In 1978, as part of a corporate restructuring, the parent and subsidiary exchanged names, thus giving London American International its current name. Prior to LAI's adopting "American International" as part of its name, some of its employees were aware of AIG; but London American International did not search records of the United States Patent and Trademark Office to determine whether a competing mark might have been registered.

During 1978, defendants commenced public use of the new name that included "American International." Midland published a newspaper advertisement several times during the year in the Economist and International Marketing Services. Competitively.

Financial Times which stressed the range of financial services Midland offered, and included a reference to London American International:

A unique range of marketing and export finance services through the London American International Corporation Limited, operating in over 100 countries.

Information on regulations, tariffs, documentation procedures and exchange control.

On June 30, 1978 the Asian edition of the Wall Street Journal published a short article on a new London American International office:

London American Finance Forms Office in Singapore

SINGAPORE (Reuter)-London American Finance Corp. (i. e., the subsidiary with which London American International had exchanged names earlier in the year) said it established a regional representative office in Singapore.

The company, the international trade finance division of London American International Group and a subsidiary of the Britain's (sic) Midland Bank, also will establish a representative office in Sydney.

The reference in this article to "London American International Group"-a designation that defendants insist they do not use-appears to have convinced AIG that there was a potential for confusion between London American International and itself on the basis of the similarity in their names.

In April 1979, having tried unsuccessfully for several months to persuade defendants to eliminate use of the phrase "American International" in LAI's name, AIG filed this Lanham Act action. Following a year of discovery, defendants moved for summary judgment. Their detailed statement, pursuant to Rule 9(g) of the Local Rules of the court, of the material facts as to which they contended there was no genuine dispute included the specifics as to their and AIG's businesses and names, and concluded that "(t)here is no likelihood of confusion between London American's name and businesses and the name and businesses of AIG." AIG opposed the motion, presenting a very brief affidavit and excerpts from several depositions of its own and defendants' executives, and relying on documents attached to its complaint, and other court papers. AIG also submitted a brief statement of material facts "upon which there is apparent dispute between the parties." This statement did not dispute the detailed statements of fact put forth in defendants' moving Rule 9(g) statement; it did however state that the services provided by AIG "and by defendants under the trade style LONDON AMERICAN INTERNATIONAL are both overlapping and complementary to a very substantial extent," and it stated that there was a likelihood of confusion as to the origin of the services provided by AIG and the defendants.

The district court granted the motion for summary judgment, stating that "it is obvious that there is no possibility of confusion," that AIG had "failed to demonstrate either that American International is an inherently strong trade name susceptible to dilution or that it has acquired a secondary meaning," and that "it is evident that defendant LAI chose its trade name in good faith." ¹

DISCUSSION

The standards for summary judgment under Rule 56(c) of the Federal Rules of Although we have recently recognized the appropriate use of summary judgment in "putting a swift end to meritless litigation," Quinn, supra, 613 F.2d at 445; Markowitz v. Republic National Bank, 651 F.2d 825, 828 (2d Cir. 1981), it remains true that summary judgment is improper when the court merely believes that the opposing party is unlikely to prevail on the merits after trial. Quinn, supra; Jaroslawicz v. Seedman, 528 F.2d 727, 731 (2d Cir. 1975); FLLI Moretti Cereali v. Continental Grain Co., 563 F.2d 563, 565 (2d Cir. 1977); Heyman, supra. As we explained in Jaroslawicz, supra, "the responsibility of the district judge on a motion for summary judgment is merely to determine whether there are issues to be tried, rather than to try the issues himself via affidavits." 528 F.2d at 731.

Civil Procedure are well established. It is a remedy reserved for cases in which the Rule's requirements are clearly satisfied. The burden is on the moving party "to demonstrate the absence...