G. Heileman Brewing Co. v. Anheuser-Busch Inc., 84-C-511

• Decision Date: 31 December 1987
• Docket Number: 84-C-738.,No. 84-C-511,84-C-511
• Citation: 676 F. Supp. 1436
• Parties: G. HEILEMAN BREWING COMPANY, INC., Plaintiff-Counterdefendant, v. ANHEUSER-BUSCH INCORPORATED, Defendant-Counterclaimant. MILLER BREWING COMPANY, Plaintiff-Counterdefendant, v. ANHEUSER-BUSCH INCORPORATED, Defendant-Counterclaimant.
• Court: U.S. District Court — Eastern District of Wisconsin

676 F. Supp. 1436

G. HEILEMAN BREWING COMPANY, INC., Plaintiff-Counterdefendant, v. ANHEUSER-BUSCH INCORPORATED, Defendant-Counterclaimant.

MILLER BREWING COMPANY, Plaintiff-Counterdefendant, v. ANHEUSER-BUSCH INCORPORATED, Defendant-Counterclaimant.

Nos. 84-C-511, 84-C-738.

United States District Court, E.D. Wisconsin.

December 31, 1987.

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David E. Beckwith, Michael Lechter, Mark Foley, Foley & Lardner, Milwaukee, Wis., for G. Heileman Brewing Co., Inc.

Laurence C. Hammond, Jr., Allan Leiser, George Whyte, Jr., Wayne Babler, Quarles & Brady, Milwaukee, Wis., for Miller Brewing Co.

Beverly Pattishall, Pattishall, McAuliffe & Hofstetter, Chicago, Ill., George Solveson, Glenn O. Starke, Andrus, Sceales, Starke & Sawall, Milwaukee, Wis., Peter E. Moll, Howrey & Simon, Washington, D.C., for defendant Anheuser-Busch Inc.

MEMORANDUM OF DECISION

CURRAN, District Judge.

The G. Heileman Brewing Company, Inc. and the Miller Brewing Company, plaintiffs in the above-captioned consolidated cases, compete with defendant Anheuser-Busch, Inc. in the business of brewing and selling beer. Hoping to repeat Miller's success in marketing low calorie LITE beer, Anheuser-Busch developed and began to market a beer with low alcohol content which it called "LA."¹ When Heileman announced plans to use the LA name on its own low alcohol beer, Anheuser-Busch demanded that it cease and desist. Shortly thereafter, Heileman, later joined by Miller, filed suit asking this court to declare that, by using the LA mark, they are not engaging in trademark infringement or unfair trade practices. The plaintiffs claim that Anheuser-Busch, by attempting to prevent competitors from using the LA name, has engaged in unfair trade practices and has attempted to monopolize the low alcohol beer market.

I. PRETRIAL PROCEEDINGS

Several days after filing its complaint, Heileman brought a motion for a temporary restraining order asking this court to enjoin all proceedings in a mirror-image lawsuit which Anheuser-Busch had filed against Heileman in the United States District Court for the Southern District of Illinois. In part, because the Illinois case was filed several hours after Heileman's action, the court granted Heileman's motion. See Temporary Restraining Order of April 24, 1984. Heileman then moved for a preliminary injunction, while Anheuser-Busch moved to vacate the restraining order and to dismiss the complaint. On May 12, 1984, following a hearing, the court denied Anheuser-Busch's motion, but granted Heileman preliminary relief, ordering that:

Defendant is hereby ENJOINED from proceeding with its claims against Heileman in the United States District Court for the Southern District of Illinois and from commencing any other action involving the same claims or arising out of the same transactions or occurrences, pending final judgment, including any appeal, in this action.

Order of May 12, 1984, at 6.

After the preliminary injunction was in effect, the defendant moved for an order temporarily restraining Heileman from using the term "LA" in its advertising until after the issuance of a decision in a related case pending in the Eastern District of Missouri in which Anheuser-Busch was suing to enjoin another competitor, the Stroh Brewery Company, from using the LA mark. See Anheuser-Busch, Inc. v. Stroh Brewery Company, 587 F.Supp. 330 (E.D. Mo.), aff'd, 750 F.2d 631 (8th Cir.1984). After a hearing, this court denied the Anheuser-Busch motion on May 21, 1984.²

With its preliminary motions denied, Anheuser-Busch filed its answer and asserted a counterclaim for trademark infringement, unfair competition and trademark dilution. The defendant also moved for a preliminary injunction preventing Heileman from using the name "LA" during the pendency of this action. This motion was held open until trial. Meanwhile, on June 4, 1984, the Miller Brewing Company filed a parallel action against Anheuser-Busch which was consolidated with Heileman's case for all purposes. See Decision and Order of August 21, 1984.

II. CLAIMS AND ISSUES

By the time the pleadings closed, Heileman, asserting jurisdiction under 15 U.S.C. ?? 15 and 26 and 28 U.S.C. ?? 1332(a), 1337 and 1338, had alleged four causes of action against Anheuser-Busch:

Count I: seeking injunctive relief and a declaratory judgment of noninfringement under the trademark laws;

Count II: seeking injunctive relief and a declaratory judgment that it is not unfairly competing with Anheuser-Busch under federal law, Wisconsin statutory law, or the common law;

Count III: seeking damages, claiming that Anheuser-Busch is engaging in unfair competition under 15 U.S.C. ? 1125(a) and the common law;

Count IV: seeking treble damages, claiming that Anheuser-Busch is attempting to monopolize the low alcohol beer market in the United States in violation of 15 U.S.C. ? 2.

Based on these claims, Heileman seeks a declaration and judgment as follows:

1. Declaring:

(a) Plaintiff's use of "BLATZ L.A.", "CARLING BLACK LABEL L.A.", "OLD STYLE L.A.", "SCHMIDT L.A.", "LONE STAR L.A.", and "RANIER L.A." on its low alcohol beers does not infringe any rights of or constitute unfair competition with defendant;

(b) Plaintiff's use of the description sic and generic terms "low alcohol", "LA" or "L.A." is not in violation of any right of defendant;

(c) The term "L.A." is a generic and descriptive term properly denominating and describing beers, particularly those beers having a low alcohol or lesser alcoholic content than regular beer; and

(d) Plaintiff's use of the term "BLATZ L.A.", "CARLING BLACK LABEL L.A.", "OLD STYLE L.A.", "SCHMIDT L.A.", "LONE STAR L.A.", or "RANIER L.A." is not confusingly similar to, or in conflict with, the use of the word "L.A." and/or "LA" as asserted to be the mark(s) of defendant.

2. Ordering:

(a) In accordance with 15 U.S.C. ?? 1119 and 1056, that defendant disclaim the descriptive and generic term "L.A." and/or "LA" as forming any part of its registration to issue on said application Serial No. 461,853 filed January 20, 1984 and Serial No. 462,371 filed January 23, 1984;

(b) That all or a portion of the trademark registration applications Serial No. 461,853 filed January 20, 1983 and Serial No. 462,371 filed January 23, 1984 be cancelled; and

(c) That defendant advise the trade that it no longer will threaten suit or make demands against persons using the generic and descriptive term "L.A." and/or "LA" to denominate and describe low alcohol beer, or otherwise assert purported rights to the terms "low alcohol", "LA" or "L.A." for low alcohol beer.

3. Preliminarily and permanently enjoining defendant, its officers, agents, servants, employees, representatives, successors and assigns, and all persons in active concern or participation with them, and any and all persons acting by, through or under authority from defendant, either separately or jointly, from:

(a) in any way interfering or threatening to interfere with use by plaintiff or its distributors or retailers of the generic and descriptive term "L.A." to denominate and describe low alcohol beer, particularly its beer sold in association with the labels illustrated herein as "BLATZ", "CARLING BLACK LABEL", "OLD STYLE", "SCHMIDT", "LONE STAR" and "RANIER" labels;

(c) interfering with plaintiff's use of the abbreviation "L.A." to describe its low alcohol beers, or from otherwise engaging in unlawful acts complained of herein.

4. Awarding to Plaintiff:

(a) any and all damages it has or will sustain by reason of defendant's aforesaid unfair competition;

(b) the sum of $500,000 as punitive damages for defendant's deliberate and willful unfair competition;

(c) the costs of this action, including reasonable attorneys' fees pursuant to 15 U.S.C. ? 1117;

(d) treble the amount of damages sustained by plaintiff as the proximate result of defendant's aforesaid violations of the antitrust laws, including costs and reasonable attorneys' fees incurred by plaintiff; and

(e) such other and further relief as this court may deem just and equitable.

Amended Complaint of G. Heileman Brewing Company, Inc. at 12-15.

Miller Brewing Company's complaint raises similar claims and asks for the following relief:

(a) For a declaration that "LA," or its equivalents, as used for low alcohol beer, is an unprotectable designation, that A-B has no protectable rights therein, and that Miller is free to use the same as it sees fit.

(b) For an order permanently enjoining A-B, and any person or party in privity or concert with it, from claiming, seeking (by registration or otherwise), asserting, or attempting to enforce any rights in "LA," or its equivalents, as against Miller or its customers, or otherwise engaging in the unlawful acts complained of.

(c) For an award to Miller of its damages, trebled, all profits of A-B attributable to its unlawful acts, costs and attorneys' fees.

(d) For such other and further relief as this court may deem just or equitable.

Complaint of Miller Brewing Company at 5.

Anheuser-Busch answered both complaints and filed counterclaims against both plaintiffs. Alleging jurisdiction under 15 U.S.C. ? 1121 and 28 U.S.C. ?? 1332 and 1338, the counterclaimant asserts causes of action for trademark infringement and unfair competition, arising under 15 U.S.C. ? 1125(a) and the common law, and for trademark dilution, arising under the laws of Illinois and "various other states," asking that:

1. Counterdefendant, its officers, agents, servants, employees, attorneys and all others in active concert or participation with counterdefendant, be enjoined and restrained, during the pendency of this action and permanently thereafter, from:

(a) using, in the advertising, promotion or sale of counterdefendant's beer,

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