Frisch's Restaurants, Inc. v. ELBY'S BIG BOY, ETC.

• Decision Date: 20 January 1981
• Docket Number: No. C-2-78-1316.,C-2-78-1316.
• Citation: 514 F. Supp. 704
• Parties: FRISCH'S RESTAURANTS, INC., Plaintiff, v. ELBY'S BIG BOY OF STEUBENVILLE, INC., et al., Defendants.
• Court: U.S. District Court — Southern District of Ohio

514 F. Supp. 704

FRISCH'S RESTAURANTS, INC., Plaintiff, v. ELBY'S BIG BOY OF STEUBENVILLE, INC., et al., Defendants.

No. C-2-78-1316.

United States District Court, S. D. Ohio, E. D.

January 20, 1981.

COPYRIGHT MATERIAL OMITTED

Gary D. Greenwald, Carl Genberg, Columbus, Ohio, for plaintiff.

Keith A. Sommer, Martins Ferry, Ohio, Arthur M. Recht, Wheeling, W. Va., Thomas J. Collin, Cleveland, Ohio, for defendants.

MEMORANDUM AND ORDER

DUNCAN, District Judge.

This matter is before the Court on plaintiff's motion for preliminary injunction pursuant to Fed.R.Civ.P. 65. This is a trademark infringement action brought under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), common law principles of unfair competition, and Ohio's Deceptive Trade Practices Act. For the reasons stated below, the plaintiff's request for preliminary injunctive relief is granted in part. In accordance with the requirements of Rule 65(d), the Court makes the following findings.

I. Findings of Fact

1. Plaintiff, Frisch's Restaurants, Inc. (Frisch's), is an Ohio corporation engaged in the business of preparing and processing food products in Ohio and other states. Plaintiff owns and franchises family restaurants in the state of Ohio, many of which engage in business under the "Big Boy" trademark and service mark.

2. Defendant The Boury Corporation, Inc. is the parent corporation for all of the company-owned Elby's Family Restaurants located in Ohio and West Virginia. Defendant Elby's, Inc. is a wholly-owned subsidiary of The Boury Corporation, Inc. Defendant George Boury is the president of The Boury Corporation, Inc. Defendant Ellis Boury is an officer, director, and shareholder of The Boury Corporation, Inc., and is responsible for supervision of the advertising and promotional campaigns of the Elby's Family Restaurants located in Ohio and West Virginia. Defendant David Carr is an employee of Elby's, Inc., and is the person primarily responsible for the creation and placement of advertisements on behalf of Elby's Family Restaurants in Ohio and West Virginia.

3. Marriott Corporation is the holder of the registration for the federally-registered trademark "Big Boy" bearing Registration No. 574,742 on the Principal Register of the United States Patent Office. This registration is in full force and effect.

4. On October 25, 1953, plaintiff was granted by the predecessor in interest of Marriott Corporation a license to use in Ohio the "Big Boy" trademark in connection with a double-decker hamburger and the restaurant where the hamburger is sold.

5. Defendant The Boury Corporation holds the exclusive right to use the Big Boy trademark in the panhandle of West Virginia, including the Wheeling area, and in Pennsylvania except in the Philadelphia and Pittsburgh areas. Defendants have an obligation under these various license agreements to promote and advertise the "Big Boy" mark.

6. The Marriott Corporation is currently the common licensor of plaintiff and defendants. Plaintiff now operates approximately 80 restaurants in Ohio under the "Big Boy" mark. Defendants now operate 7 restaurants in northern West Virginia and 5 restaurants in western Pennsylvania under the "Big Boy" mark.

7. Prior to 1971, Elby's Family Restaurant of Steubenville, Inc. was authorized, pursuant to a franchise agreement with plaintiff, to use the "Big Boy" mark in connection with the Elby's Family Restaurants in eastern Ohio. In late 1971, Elby's and a related corporation terminated the agreements pursuant to which the "Big Boy" mark was used in eastern Ohio.

8. Shortly thereafter, in early 1972, plaintiffs initiated an action in West Virginia state court alleging, among other things, that Elby's Family Restaurants of Steubenville, Inc. and the related corporation were violating provisions of the prior franchise agreements relating to cessation of trademark and tradename use after termination of the agreements. In response to a request from plaintiff in connection with the pending state court litigation, the West Virginia Supreme Court of Appeals, in July 1973, entered a preliminary injunction, which continues in effect, enjoining defendants Park Corporation of Ohio and Elby's Family Restaurant of Steubenville, Inc. from using the "Big Boy" trademark in connection with their restaurants in Ohio.

9. Defendants currently operate restaurants under the name "Elby's Family Restaurants" in the Ohio cities of Steubenville, Marietta, Dover, Cambridge, and St. Clairsville (hereafter Ohio Elby's). As noted earlier, the Ohio Elby's authority to use the "Big Boy" mark was terminated in 1971.

10. Defendant Elby's Commissary, Inc. was and is the corporation responsible for the creation and placement of television, radio and newspaper advertisements on behalf of Elby's Family Restaurants located in West Virginia and Ohio. Defendant Ellis Boury is an officer, director and shareholder of The Boury Corporation, Inc. and is directly responsible for the supervision of the advertising and promotional campaigns on behalf of Elby's Family Restaurants located in West Virginia and Ohio.

11. The Elby's Family Restaurants located in the cities of Steubenville, St. Clairsville, Bridgeport, Marietta, Cambridge and Dover, Ohio, have erected billboards on their restaurant properties directing the general public to watch for Elby's advertisements on Wheeling, West Virginia, television station WTRF whose signal is broadcast from Bridgeport, Ohio, and is widely received by television sets throughout the eastern portion of the state of Ohio.

12. In addition to these billboards, the above-named Elby's Family Restaurants have placed in their respective restaurants in-store promotional pieces, including matchbooks and sugar packets, which advertise WTRF.

13. Defendant Elby's Commissary, Inc. creates and places on behalf of Elby's Family Restaurants, a large number of television advertisements on WTRF, most of which either contain a pictorial representation of the "Big Boy" figure, advertise "Big Boy" food items and/or contain jingles which strongly identify "Elby's Family Restaurants" with the "Big Boy" trademark and service mark.

14. Defendant Elby's Commissary, Inc. creates and places advertisements in newspapers published in West Virginia and having circulation in both West Virginia and eastern Ohio. These advertisements advertise food items available at Elby's Family Restaurants with the aid of the "Big Boy" trademark and service mark.

15. None of the television or newspaper advertisements placed on behalf of Elby's Family Restaurants and received by persons living in the eastern portion of the state of Ohio advises the public that the Elby's Family Restaurants located in Ohio are not affiliated with the "Big Boy" trademark and service mark and that "Big Boy" food items are unavailable at those restaurants.

16. In addition to the advertising described above, the Ohio Elby's also employ a variety of advertising media which originate in Ohio. None of these Ohio advertisements use the "Big Boy" mark. Moreover, when defendants have advertised a specific Ohio Elby's location in a West Virginia medium, no reference to the "Big Boy" mark has been included. Tr. 115-16.

17. The advertisements placed on WTRF on behalf of Elby's Family Restaurants coupled with the WTRF promotional material located in Ohio Elby's are likely to confuse and indeed have confused persons residing in the eastern portion of Ohio, near the West Virginia panhandle, into believing that the Elby's Family Restaurants located in Ohio are affiliated with the "Big Boy" trademark and service mark and that "Big Boy" food items are available at such restaurants.

18. Plaintiff's claim of likelihood of confusion was supported by the testimony of Dr. Lee B. Becker, a qualified expert in the field of scientific survey analysis. Becker supervised a survey carried out in July of 1979 which was designed to measure whether residents of eastern Ohio are confused concerning the availability of Big Boy products in Ohio. The Court finds the survey and testimony of Dr. Becker to be worthy of significant weight.

19. The Court finds that residents of eastern Ohio are in fact confused about the availability of the Big Boy products in Ohio. As Dr. Becker wrote: "Many think this product can be purchased at Elby's Family Restaurants operated in Ohio." Plaintiff's Ex. 2, p. 1.

20. Dr. Becker found that the confusion concerning the Big Boy products was "associated with" the following factors:

(a) proximity of the particular Ohio community to West Virginia where consumers can purchase a Big Boy at Elby's;

(b) length of residence in the respective community; i.e., residents for a period greater than eight years are more likely to be confused;

(c) frequent travel to West Virginia; and

(d) viewing of Elby's advertisements on WTRF.

21. The first three factors causing confusion are not attributable to defendants; but are instead a result of the fairly unique geography of this tri-state area. The confusion associated with WTRF advertising is, however, attributable to defendants.

22. Although the Court claims no expertise in the field of consumer survey research, the Court's own viewing of the WTRF advertisements confirms the view that the confusion in eastern Ohio communities is in part attributable to the WTRF-TV advertising which reaches the homes of 96.3% of the sample surveyed by Dr. Becker.

23. Plaintiff currently has no restaurants in the coverage area of defendant's WTRF-TV advertising. However, plaintiff has previously sub-licensed the "Big Boy" trademark in this area and may well attempt to do so in the future.

24. The crucial facts in this matter can be summarized as follows. Ohio Elby's restaurants previously paid plaintiff under a franchise agreement for the right to use the "Big Boy" mark in association with its Elby's restaurants in Ohio. Although the authority to use the trademark was terminated in 1971, the continued use of the...