Gaylord Entertainment Co. v. Gilmore Entertainment

• Decision Date: 28 September 2001
• Docket Number: No. 3:99CV0629.,3:99CV0629.
• Citation: 187 F.Supp.2d 926
• Parties: GAYLORD ENTERTAINMENT COMPANY, Plaintiff, GILMORE ENTERTAINMENT GROUP, LLC., Defendant.
• Court: U.S. District Court — Middle District of Tennessee

187 F.Supp.2d 926

GAYLORD ENTERTAINMENT COMPANY, Plaintiff,

GILMORE ENTERTAINMENT GROUP, LLC., Defendant.

No. 3:99CV0629.

United States District Court, M.D. Tennessee, Nashville Division.

September 28, 2001.

Memorandum Denying Reconsideration October 8, 2002.

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Lee Webb Campbell, II, Thomas Johnson Sherrard, Stephen P. Spann, Sherrard & Roe, Nashville, TN, Judith A. Powell, Jerre B. Swann, William H. Brewster, R. Charles Henn, Jr., Kilpatrick Stockton LLP, Atlanta, GA, for Gaylord Entertainment Company.

Waverly David Crenshaw, Jr., Waller, Lansden, Dortch & Davis, Nashville, TN, Christopher Craig Larkin, Kenneth Leonard Wilton, Jack Donald Samuels, Small Larkin, LLP, Los Angeles, CA, Thomas H. Dundon, James F. Neal, Mark P. Chalos Neal & Harwell, Nashville, TN, Norman H. Zivin, John R. Garber, Cooper & Dunham, LLP, New York City, for Calvin Gilmore Productions Inc, Gilmore Entertainment Group, LLC.

MEMORANDUM

HAYNES, District Judge.

Plaintiff, Gaylord Entertainment Company ("Gaylord"), a Delaware corporation, with its principal place of business in Nashville, Tennessee, filed this action under the Federal Trademark Act of 1946 ("Lanham Act"), 15 U.S.C. § 1051 et seq., as amended, against the defendants: Calvin Gilmore Productions, Inc., a Delaware corporation with its principal place of business in Myrtle Beach, South Carolina¹ and Gilmore Entertainment Group, LLC. ("GEG"), a South Carolina corporation with its principal place of business in Myrtle Beach, South Carolina. Gaylord also asserts supplemental state law claims under Tennessee trademark dilution statute law and similar laws of other states.

Gaylord is the owner of the Grand Ole Opry, that also is referred to as the "Opry" both in the trade and by the public. Gaylord owns a wide range of federal and state trademark registrations for marks incorporating the formative "Opry," most notably including the "Grand Ole Opry" and "Opryland."

GEG conducts a music and variety show in Myrtle Beach, South Carolina under the name and mark "The Carolina Opry." GEG advertises its show as "the Opry," and uses the toll-free number 1-800-THE-OPRY to solicit ticket sales. GEG also promotes its show using domain names incorporating the term "Opry."

Gaylord alleges, in essence, that GEG's adoption and promotion of "The Carolina Opry" name and mark for its musical revue, and its use of the term "Opry" in connection with advertising and the solicitation of ticket sales for "The Carolina Opry," violates Gaylord's trademarks. Gaylord also alleges that GEG's activities in advertising and promoting their musical show constitute unfair competition because they are likely to cause confusion in the market as to a possible relationship or affiliation between "The Carolina Opry" and the "Grand Ole Opry." In addition, Gaylord alleges that the use and promotion of the mark "Carolina Opry" will dilute the distinctiveness of Gaylord's family of Opry marks. Gaylord specifically asserts the federal claims for trademark infringement, unfair competition, and trademark dilution under the Lanham Act, 15 U.S.C. § 1051 et seq., as amended. In addition, Gaylord also asserts claims for violations of various state laws on trademark dilution, trademark infringement, and common law trademark infringement.

Gaylord seeks a permanent injunction against GEG. Gaylord also seeks an accounting for all profits received from infringement, unfair competition, dilution or other improper activity, and damages for injury that it has sustained. Finally, Gaylord seeks an order for the impoundment of all infringing materials or goods using any unauthorized colorable imitation of the Opry marks. (Docket No. 3, first amended complaint).

Before the Court is the GEG's motion for summary judgment (Docket Entry No. 60) for which oral arguments were held (Docket No. 123).

The gravamen of GEG's motion is that the term "Opry" is generic. GEG asserts that if "Opry" is a generic term, then it is not entitled to any federal, state, or common law protection. GEG argues that Gaylord cannot claim exclusive right to the use of the term "Opry" and that GEG's use of such term in the promotion of "The Carolina Opry" cannot give rise to trade-mark infringement, trademark dilution, or unfair competition claims. Second, GEG also contends that in light of a prior adverse court decision, Gaylord is collaterally estopped from litigating the generic nature and meaning of the term "Opry." Thus, GEG argues that it is entitled to judgment as a matter of law on all of Gaylord's causes of action.

In response, Gaylord argues that material factual disputes exist on all claims such that summary judgment is inappropriate. Specifically, Gaylord argues that the term "Opry" is not generic, and that collateral estoppel does not preclude them from disputing the generic status of the term "Opry." In addition, Gaylord argues that even if the term "Opry" were found to be generic, Gaylord could still prevail on its unfair competition or trademark infringement claims. (Docket Entry No. 123, oral argument).

A. Review of the Record²

Gaylord's predecessors³ founded the Grand Ole Opry in 1927. Initially, the Grand Ole Opry, a musical revue featuring country music and dramatic, comedy, and variety performers, was performed live before a studio audience in Nashville, Tennessee. By 1943, NBC Radio was broadcasting the Grand Ole Opry to 125 stations nationwide. In 1955, the Grand Ole Opry made its television debut with NBC and ABC airing the shows nationwide. The Grand Ole Opry has continued to grow in popularity and notoriety over the past several decades. In 1983, the Grand Ole Opry began making weekly nationwide broadcasts on The Nashville Network (TNN), including a half-hour pre-show entitled Opry Backstage. Over its history, the Grand Ole Opry has showcased and periodically inducted as new members many of the greatest twentieth-century country music performers. These performers, as well as news sources, music aficionados and the public consistently refer to the Grand Ole Opry as the "Opry." (Docket Entry No. 1, ¶ 13-15, 20-21, at 5-7; see also Docket Entry No. 113, defendant's response to plaintiff's statements of material facts, ¶ 3-4, at 2).

Gaylord registered the "Grand Ole Opry" as a trademark on July 11, 1950.⁴ Since that date, Gaylord has registered and currently owns at least 39 marks that contain the formative "Opry," most notably including the marks "Grand Ole Opry," "Opryland USA," "Opryland Hotel," "Opryland," "1-800-SEE-OPRY," "1-800- WSM-OPRY." (Docket Entry No. 1, ¶ 24-35, at 8-14). In addition to the federally registered trademarks, Gaylord also owns State of Tennessee registrations for several marks that incorporate the formative "Opry." See id. ¶ 14, at 6. Gaylord has continuously and extensively used the Opry marks since founding the Grand Ole Opry in 1927. Gaylord also registered the mark "Opry" on January 12, 1982.⁵ It has spent substantial time and money advertising the Opry marks. According to Gaylord, "billions of dollars worth of goods and services have been sold by Gaylord and its predecessors under the Opry marks." (Docket Entry No. 1, ¶ 37, at 15).

In 1986, GEG's predecessors⁶ started The Carolina Opry in Myrtle Beach, South Carolina. At that time, the founders of The Carolina Opry were aware of the existence of the Grand Ole Opry music show. (Docket Entry No. 58, Answer ¶ 40). GEG is the present operator of The Carolina Opry, which like the Grand Ole Opry, is a music and variety show. (Docket Entry No. 82, undisputed facts ¶ 1, at 1). It has been in continuous operation from 1986 to the present. (Docket Entry No. 58, Counterclaim ¶ 3).

Since its inception, GEG has advertised and promoted The Carolina Opry as "the Opry." It uses the toll-free number "1-800-THE-OPRY" to solicit ticket sales. GEG also maintains internet domain names that incorporate the formative "Opry," including THEOPRY.COM and OPRY.NET. (Docket Entry No. 113, response to plaintiffs' statement of material facts as to which there exists a genuine issue to be tried ¶ 10, at 5). In addition, the first advertising campaign for The Carolina Opry used the slogan "Like the Grand Old [sic] Opry with a Dash of Broadway."⁷ Id. ¶ 17, at 7.

GEG owns a federal registration for the mark "The Carolina Opry" (& design) and the mark "Calvin Gilmore Presents The Carolina Opry" (& design). (Docket Entry No. 82, Plaintiff's Responses to Defendants's Statement of Undisputed Facts ¶ 4). GEG did not disclaim rights in the term "Opry" in connection with either of these marks. See id. Both marks are for "entertainment services in the nature of country and western music shows." (Docket Entry No 58, counterclaim ¶ 4).

1. Gaylord's Evidence

Gaylord has produced evidence to dispute the notion that the term "Opry" is, or has ever been, a generic term for its current meaning of a country barn dance. Gaylord has retained as an expert witness Celia Tichi, Ph.D., a Professor of English at Vanderbilt University who testified that the name "the Grand Ole Opry" was not generic, but rather a distinctive brand name coined by Gaylord's predecessors which combined the familiar terms "opry" and "grand opera" in new way to produce a "unique hybrid name." (Docket Entry No. 85, Exhibit 2, Tichi Declaration ¶ 21). Tichi compared this hybrid name with other trademark products that have combined two familiar words in new combinations, including Lucky Strike cigarettes and Eskimo Pie ice cream bars. Id. She stated that the term "opry," was a dialectic variation of "opera" and had been used in the United States since the seventeenth century to refer to "a public performance venue featuring varying musical and theatrical performance, none of which resembled classical opera." Id. at ¶ 17. Tichi testified that "opry" did not itself, however, "refer to the rural country music show, whose generic term instead had been `barn dance'." Id. at ¶ 18...