Eastman Kodak Co. v. Fotomat Corporation, Civ. A. No. 12455.
| Decision Date | 26 March 1970 |
| Docket Number | Civ. A. No. 12455. |
| Citation | 317 F. Supp. 304 |
| Parties | EASTMAN KODAK CO., Plaintiff, v. FOTOMAT CORPORATION, Defendant. |
| Court | U.S. District Court — Northern District of Georgia |
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Alston, Miller & Gaines, Atlanta, Ga., for plaintiff.
Kilpatrick, Cody, Rogers, McClatchey & Regenstein, Atlanta, Ga., for defendant.
STATEMENT OF THE CASE
Plaintiff Eastman Kodak Co. brought this action seeking an injunction against defendant Fotomat Corporation based upon the allegation of unfair competition, alleging that the defendant in connection with a large number of kiosks (also referred to as Fotomats drive-thrus or huts) was infringing upon Plaintiff's trademark and trade dress and misleading the public into the belief that these kiosks were operated by the plaintiff and that plaintiff was the party developing the films left by customers for processing.
The defendant, after a denial of plaintiff's claims, by way of cross-bill made allegations as to practices of the plaintiff which defendant contended misled the public and caused danger of loss to the defendant. Contentions of the parties as taken from the pleadings and other sources are specifically set forth below.
This matter came before the Court for a hearing on the prayers of each party for a temporary injunction. The Court passed an order seeking to define the range and the quantity of evidence necessary for a decision of that issue.1 However, it appeared clearly to the Court that each party desired practically a full and complete hearing on all of the issues involved. The Court thereupon (while not agreeing to such a plenary hearing and while seeking to confine the evidence within the range aforesaid) entered an order consolidating the hearing for temporary injunction with the subsequent hearing to be had on prayers for permanent injunction pursuant to Rule 65, Federal Rules of Civil Procedure.
Suggestion by the Court that this hearing be full and complete and that at the conclusion a final judgment should be rendered rather than temporary injunctions only, did not meet with the approval of the parties who sought early decision on the prayers for temporary injunction, but such early decision has been found impossible because of the complexity of the issues involved and the extensive testimony, including a large number of exhibits adduced at the hearing.
The Court wishes to make it clear that the rulings made and the judgment rendered herein and the discussions of the facts involved shall have no more force and effect than customarily given in connection with hearings for temporary injunction. However, at the suggestion of the Court each party filed a motion for summary judgment and the Court held a brief and incomplete hearing by way of pretrial, and the rulings made herein and the evidence in this record will be considered by this Court in connection with partial summary judgment and subsequent pretrial looking toward a decision on the prayers for permanent injunction and will shorten that hearing considerably.
From the inception of this matter and beginning at the first hearing, both parties with the assistance of the Court attempted to arrive at the enumeration of changes to be effectuated by both defendant and plaintiff which would serve the basis for temporary injunctions, with the distinct understanding that this would will be done without prejudice to the rights of the parties on the hearing for permanent injunction. By consent of both parties the Court at one stage of the hearings turned to the consideration by the Court of changes which in the opinion of the Court would satisfy the demands of each party by the removal of confusion in the minds of the public ad reference thereto will hereinafter be made.2
(a) Plaintiff alleges that defendant is guilty of common law unfair competition;
(b) Plaintiff alleges that defendant is guilty of unfair competition under the federal law, 15 U.S.C.A., § 1125(a) in that defendant has appropriated the design and overall appearance from plaintiff's trade dress;
(c) Plaintiff alleges that defendant is guilty of deceptive trade practices under the Georgia law, in that defendant's practices will cause a likelihood of confusion;
(d) Plaintiff alleges that defendant's acts and practices are likely to injure plaintiff's business reputation and dilute the distinctiveness of plaintiff's trademark, trade name and trade dress in violation of the Georgia law.
(e) Plaintiff alleges that defendant has infringed plaintiff's trademark and service marks and has misappropriated and used these marks with the sale of products and processes other than plaintiff's. Plaintiff further alleges that defendant infringed with the intent to infringe, and without license from or consent from plaintiff.
Plaintiff lays great stress on the contention that defendant is violating plaintiff's "trade dress". This is defined by plaintiff's counsel (Tr. 1225) as "a predominantly yellow background with red or black, sometimes accompanied by accent colors in conjunction with one or more KODAK trade marks".
Plaintiff's registered trademark consisting of the word "KODAK" makes no reference to colors to be used in connection therewith, but plaintiff contends that for a period of sixty (60) years or more it has used said trademark in connection with the yellow background with red or black colors in connection therewith.3 On the trial of the case plaintiff at times made claim to the exclusive use of yellow in connection with photographic supplies and processing, but in many instances defined its alleged "trade dress" as including its trademark "KODAK". Plaintiff also during the trial explained its efforts during recent years to induce all of its dealers to use a yellow background only on portions of its buildings which have reference to Kodak films and supplies, and not on portions of the buildings which identify the name of the owner or operator, and the evidence shows many dealers have already complied with plaintiff's request in that regard.
Specific questions raised by plaintiff are hereinafter discussed.
Plaintiff for over fifty years has used "a trade dress consisting of a predominantly yellow background used in connection with the colors red or black, or both together, with the plaintiff's trademarks and service marks all in a distinctive style of printing long associated with plaintiff." Plaintiff alleges that defendant "is now using in commerce in the operation and design of its Fotomats a trade dress and style which are deceptively and confusingly similar to plaintiffs, including a yellow roof with plaintiff's mark and trade name "KODAK" appearing in a dominant position thereon in red letters in plaintiff's distinctive style of printing."
Plaintiff then makes the following allegation which seems to be of primary importance in this case, to-wit: "Plaintiff claims that defendant has failed adequately to identify itself on these Fotomats and that this, together with the unlawful appropriation and use, has resulted in widespread and unparalleled public confusion, both confusion as to the ownership and/or sponsorship of defendant's Fotomats, and confusion as to the source of origin of the products and processing services being merchandised through such Fotomats." The following allegation by plaintiff is significant, to-wit: "The public has been led and is being led to believe that defendant's Fotomats are plaintiff's and that plaintiff's processing services are being offered at such Fotomats when such is not the case."
Plaintiff makes the contention that it has the absolute exclusive right to use of the color yellow in connection with photographic material and services.4 In its brief filed September 12, 1969 (captioned Eastman Kodak Company's Rights to the Color Yellow) the opening paragraph is in part as follows:
"Eastman Kodak Company alleges a property right to its very valuable trade dress consisting of a predominantly yellow background, in combination with red or black, or both, used in the photographic industry in conjunction with its various trademarks and service marks lettered in a distinct style of printing." (Italics supplied)
Subsequently the brief refers to the "misuse by Fotomat Corporation of the color yellow which the public has identified as the predominant feature of Eastman Kodak Company's trade dress." While recognizing "that under ordinary circumstances a manufacturer may not claim particular rights in a color" (citing Campbell Soup Company v. Armour and Company, 3 Cir., 175 F.2d 795), counsel cited an alleged leading case which used the following language:
"While it is true no one has the right to monopolize a particular color, yet the courts have repeatedly held that a person may be restrained from using a particular color, in combination with other things, to mislead the public and market his goods as those of another." Ohio Baking Co. v. National Biscuit Co., 127 F. 116, 121 (6th Cir. 1904) cert. den. 195 U.S. 630, 25 S.Ct. 788, 49 L.Ed. 352 (1904).
Other cases refer to the function of color as being "an extensive element of deceit." Counsel also cited Barbasol Co. v. Jacobs, 160 F.2d 336 (7th Cir.) referring not only to a combination of colors but stating "the unique packaging design of the plaintiff distinguished its products from others and accordingly injunctive relief was granted."
Under the pleadings and the evidence in this case the issue is not specifically raised as to whether or not defendant's use of a yellow roof is a violation of plaintiff's trade dress.5 Under the above authorities, however, this Court would be required to rule that a yellow color would be enjoined...
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