Gen. Motors Co. v. Urban Gorilla LLC
| Decision Date | 27 December 2010 |
| Docket Number | Civil No. 2:06-CV-00133 BSJ |
| Parties | GENERAL MOTORS COMPANY, Plaintiff, v. URBAN GORILLA, LLC, a Utah limited liability company, Defendant. |
| Court | U.S. District Court — District of Utah |
Plaintiff General Motors Company ("GM") seeks injunctive relief against defendant Urban Gorilla, LLC ("Urban Gorilla") for various trademark and trade dress infringement and dilution claims under the United States Trademark Act of 1946 (the "Lanham Act"), 15 U.S.C. § § 1114(1), 1125(a) and 1125(c), and trademark infringement at common law. GM asserts that Urban Gorilla's "body kits" and marketing related to the kits infringe upon and dilute GM's Hummer trademarks and trade dress. Urban Gorilla responds that the defenses of laches and acquiescence bar injunctive relief and the awarding of costs and attorney's fees. Counterclaims by Urban Gorilla were dismissed upon the stipulation of counsel.1
The matter was argued before this Court from September 22, 2008 through September 25, 2008 and reserved by the Court.2 Supplemental briefs were requested by the Court andsubsequently filed in February 2010 before further argument was heard on February 24, 2010.3Additional supplemental briefs addressing a different question were filed at the request of the Court in June and July 2010.
Appearing on behalf of the plaintiff General Motors Company were Gregory D. Phillips, Scott R. Ryther and Thomas R. Lee of Howard Phillips & Andersen. Appearing on behalf of the defendant Urban Gorilla were Jeremy G. Knight, Peter H. Barlow and Stephen J. Traynor of Strong & Hanni.
This Court has jurisdiction pursuant to 28 U.S.C. § 1338(a) which provides the district courts with jurisdiction over actions arising under federal trademark laws, and 28 U.S.C. § 1367 which provides for supplemental jurisdiction of the state law claims in this action. Venue is proper under 28 U.S.C. § 1391.
Having heard and considered the arguments advanced by counsel, and having reviewed the briefs and record in this case as well as the pertinent authorities, this Court now rules as follows: (1) the 2006 amendments to 15 U.S.C. § 1125(c) should be applied to this case; (2) Urban Gorilla's body kits and related marketing are likely to cause dilution by blurring of the Hummer trademarks and trade dress; (3) some of Urban Gorilla's body kits infringe on the Hummer trade dress; (4) Urban Gorilla's laches and acquiescence defenses fail; and (5) no costs and attorney's fees should be awarded.
During Operation Desert Storm in 1991, the military Humvee gained national attention. The Humvee's manufacturer, AM General Corporation ("AM General"), created a civilian version of the vehicle called the Hummer.4 General Motors Corporation ("GM Corp") purchased the trademark rights to the Hummer from AM General in 1999.5 The rights were sold and transferred to GM following GM Corp's filing of Chapter 11 bankruptcy and this Court granted GM Corp's Motion for Substitution of Plaintiff.6 GM has a registered trademark in the shape and design of the H1 model of Hummer, the Hummer nose and grill area, the word "Hummer, " and the slogan "Like Nothing Else."7
The Hummer H1 costs approximately $140,000 and other models cost less.8 Production of the H1 ceased in approximately 2006.9 Other Hummer models continue to be sold and GM obtains substantial revenue from licensing the Hummer trademarks.10 GM has spent millions of dollars marketing the Hummer line in print pieces, on television, on the internet, at dealerships, and through event oriented promotions.11
In 1997, Active Power, Inc. ("Active Power"), the predecessor in interest to Urban Gorilla, launched the Urban Gorilla product line.12 Urban Gorilla purchased the product line from Active Power in February 2004 and continues to produce and market the line.13 The Urban Gorilla product line consists of steel and fiberglass "body kits" which customers install on an existing truck chassis (known as a "donor").14 The body kits cost approximately $10,000.15Between 1997 and 2004, approximately 85 Urban Gorilla body kits were manufactured and sold by Active Power.16 An additional estimated 18 to 19 civilian kits were sold between 2004 and 2008 by Urban Gorilla.17
Urban Gorilla's kits have been advertised in print and on the internet since 1997.18Additionally, one kit was featured on a television show called 'Xtreme 4x4' in 2005.19 Urban Gorilla does not use dealerships to sell its products.20
On October 6, 1998 after viewing promotional materials for the Urban Gorilla body kits, AM General sent Active Power a cease-and-desist letter suggesting that the kits infringed on its Hummer trademarks.21 The letter specifically referenced AM General's registered trademarks "Humvee, " "Hummer, " and the "Hummer vehicle Nose Design."22 In response to that letter, Active Power agreed to change its product design to address AM General's concerns.23 AM General requested to review "formal documentation" of the proposed changes.24 Neither party produced conclusive evidence that Active Power or Urban Gorilla provided, or that AM General or GM received the changes made to the product design.25 It is undisputed, however, that changes were in fact made to the nose and grill of the Urban Gorilla body kit and that Active Power's use of surplus Hummer parts in its kits was discontinued.26 There is no record of contact between the parties or their predecessors-in-interest after these exchanges in 1999 until 2006.
On February 13, 2006, GM filed its complaint against Urban Gorilla and concurrently filed a motion for preliminary injunction.27 The motion was denied because at the time and on the record before this Court, there was insufficient evidence to warrant a preliminary injunction.28GM appealed and the appellate court upheld the denial.29
The Federal Trademark Dilution Act ("FTDA") was amended by the Trademark Dilution Revision Act ("TDRA") effective Oct. 6, 2006 in response to the U.S. Supreme Court's decision in Moseley v. VSecret Catalogue, 537 U.S. 418, 433 (2003). 151 Cong. Rec. H2121, H2122 (Apr. 19, 2005) (statement of Rep. Jim Sensenbrenner). In Moseley the court held that actual dilution, as opposed to a likelihood of dilution, was required for the court to provide injunctive relief to the owner of a famous mark. Id. at 433. The amended § 1125(c)(1) now calls for a relaxed "likelihood of dilution" standard. 15 U.S.C. § 1125(c)(1). Before examining the issue of dilution this Court must determine which standard should be applied in this case. I conclude that the 2006 amendments to § 1125(c) apply and GM must therefore, in addition to the other elements of dilution, prove that a likelihood of dilution exists.
In Landgraf v. USI Film Products the U.S. Supreme Court laid out a two-part test to determine whether a statute should be applied retroactively. Landgraf v. USI Film Products, 511 U.S. 244, 280 (1994). First, the court must determine whether the language of the statute expressly "prescribes the statute's proper reach." Id. Clear congressional intent favoring retroactivity overrides the traditional presumption against it. Id. Second, if the statute has no express command "the court must determine whether the new statute would have retroactive effect, i. e., whether it would impair rights a party possessed when he acted, increase a party's liability for past conduct, or impose new duties with respect to transactions already completed." Id.
The U.S. Supreme Court has also held that "relief by injunction operates in futuro" and therefore, the law in effect at the time of the hearing should be applied. American Steel Foundries v. Tri-City Cent. Trades Council, 257 U.S. 184, 201 (1921). Thus, even absent clear congressional intent, where a party calls for prospective relief the legislation currently in effectshould be applied because prospective relief by definition has no retroactive effect—it is forward looking relief. Viacom Inc. v. Ingram Enters., 141 F.3d 886, 888 (8th Cir. 1998).
Whether the amended portion of § 1125(c)(1) should be applied to a case filed before the amendments took effect appears to be a question of first impression in this circuit. This question has been addressed, however, in at least four other circuits.30 The courts have uniformly applied the law in effect at the time of trial.31 The rationale behind these decisions is that when an "intervening statute authorizes or affects the propriety of prospective relief, application of the new provision is not retroactive." Landgraf, 511 U.S. at 273. Thus, the U.S. Supreme Court has spoken on this issue. Additionally, the Tenth Circuit has acknowledged that
the presumption against retroactivity does not apply in certain circumstances. When the intervening statute authorizes or affects the propriety of prospective relief, application of the new provision is not retroactive because relief by injunction operates in futuro and plaintiff has no "vested right" in the decree entered by the trial court.
Jurado-Gutierrez v. Greene, 1999 U.S. App. LEXIS 30711, *36 (10th Cir. 1999). Accordingly, it is proper for this Court to apply the new standard set forth in § 1125(c)(1) requiring a plaintiff seeking injunctive relief to show only that a "likelihood of dilution" exists. 15 U.S.C. § 1125(c)(1).
Whether to apply the amended § 1125(c)(1) where a plaintiff seeks the additional remedies listed in § 1125(c)(5) is a separate matter because the remedies referenced in (c)(5) include non-prospective relief. Therefore, applying the test articulated in Landgraf, the language of the statute and congressional intent must be examined. Landgraf, 511 U.S. at 280. Section 1125(c)(5) unambiguously states that the remedies set forth in § 1117(a) () are available under the amended standard only if:
(A) the mark... that is likely to cause...
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