George P. Ballas Buick-GMC, Inc. v. Taylor Buick, Inc.

• Decision Date: 16 April 1982
• Docket Number: BUICK-GM,INC
• Citation: 5 Ohio App.3d 71,5 OBR 182,449 N.E.2d 503
• Parties: , 5 O.B.R. 182 GEORGE P. BALLAS, Appellant, v. TAYLOR BUICK, INC., et al., Appellees. *
• Court: Ohio Court of Appeals

Page 71

5 Ohio App.3d 71

449 N.E.2d 503, 5 O.B.R. 182

GEORGE P. BALLAS BUICK-GMC, INC., Appellant, v. TAYLOR BUICK, INC., et al., Appellees. ^*

Court of Appeals of Ohio, Sixth District, Lucas County.

April 16, 1982.

Syllabus by the Court

1. In determining whether a trade dress of a product is entitled to protection under R.C. 4165.03 because a competing trade dress causes a "likelihood of confusion," the test is not whether the plaintiff in the action deems the defendant's action to be reprehensible, but rather a court must examine whether the buying public is likely to be confused by the competing trade dress.

2. It is generally improper for a court to dispose of a case on the merits following a hearing for preliminary injunction without consolidating that hearing with a hearing on the merits or otherwise giving notice to counsel that the merits would be considered. A trial court acts properly in dismissing plaintiff's complaint, if, after an extensive hearing, the evidence "does not reveal any conflict of material fact that justifies a full trial on the merits."

Richard Farrar, Toledo, for appellant.

Robert G. Clayton, Toledo, for appellees.

PER CURIAM.

This appeal results from the dismissal of plaintiff's complaint for temporary and permanent injunctions and for damages. Plaintiff filed a complaint against Taylor Buick, Inc. and Stephen D. Taylor, alleging that plaintiff, George P. Ballas Buick-GMC, Inc., in 1977 commenced a large scale advertising promotional program in the Toledo metropolitan area, which involved the erection in the city of Toledo at Interstate 475 and Washington Boulevard, of a billboard which became a familiar design with the motor vehicle buying public in the Toledo metropolitan market. Plaintiff alleged that the defendant, Taylor Buick, Inc., under the direction of defendant Stephen D. Taylor, did, without permission, copy and duplicate the design on the billboard and placed its billboard at Interstate Route 475 and Jackman Road. The plaintiff stated in its complaint that the acts of the defendant constituted unfair competition with plaintiff and were appropriations of the research, design, promotion and skill of the plaintiff, and that defendants committed an unlawful appropriation of plaintiff's property rights in said advertising design and deprived plaintiff of sales and profits to which it was entitled. Plaintiff further alleged that the conduct of the defendants was calculated and designed to unlawfully trade upon the popularity and goodwill created by plaintiff in the Toledo metropolitan area.

The plaintiff copied the familiar Interstate Highway System sign design for the background for some of its billboard advertising. The billboard utilized a rectangular green sign with a white border; the advertising copy appears in white letters. The name "George Ballas" is the most predominant feature of the sign. The Interstate Highway System shield, consisting of red, white and blue colors, is displayed on the green background. On the shield appears the word, "Ohio," in white lettering, and across the lower blue shield, in white lettering, the symbol "# 1." The Ballas billboard has never been copyrighted nor has any part of it been registered as a service mark.

In 1981 the defendant, Taylor Buick, Inc., erected a billboard utilizing the same rectangular green sign with a white border. Across this green background the Taylor name is prominently displayed. The Taylor sign also utilizes the Interstate Highway System red, white and blue shield. However, in the red shield appears in white lettering the word "Toledo's" and in the lower blue shield following appears in white lettering, "# 1." The Taylor sign prominently displays the word "Taylor" and the Buick Hawk. The Buick Hawk had been used on the George Ballas billboard but has now been removed. Plaintiff alleged that the defendant's billboard was painted directly from a photograph of plaintiff's billboard containing the same design concept.

The cause came on for hearing on plaintiff's motion for preliminary injunction and the trial court, after an extensive hearing, filed the following judgment entry:

"It is therefore ORDERED, ADJUDGED and DECREED that the complaint of the plaintiff, George P. Ballas Buick-GMC, Inc., is hereby dismissed with prejudice at the plaintiff's costs."

Thereafter, the plaintiff filed a motion for relief from that judgment on the grounds that Civ.R. 65(B)(2) requires a full trial on the merits unless there was a consolidation of the preliminary hearing with a hearing on the merits. The trial court ruled that since the plaintiff could not show any right to relief, it was appropriate for that court to dismiss the plaintiff's complaint and said court denied plaintiff's motion for relief from judgment. From the judgment of the court the plaintiff has appealed and filed the following assignments of error:

"I. The trial court erroneously relied upon International Heating Co. v. Oliver Gas Burner & Machine Co., 288 F. 708 (8th Cir., 1923) as the applicable law in this litigation.

"II. The introduction of evidence showing actual confusion as to the source of a service or one's affiliation, connection, or association with another is sufficient to demonstrate likelihood of confusion for purposes of Section 4165.02 of the Ohio Revised Code.

"III. When defendant imitated the billboard design concept of plaintiff George P. Ballas Buick-GMC Truck, Inc. and caused the likelihood of confusion in the public's mind as to the relationship between plaintiff's and defendant's businesses, defendant committed an actionable tort and may be enjoined from the continued use thereof.

"IV. When at a hearing for a preliminary injunction the plaintiff introduces sufficient evidence to state a claim upon which relief can be granted, the court is without the authority to dismiss plaintiff's complaint absent an order by the court for the merits to be advanced and consolidated with the hearing of the application for the preliminary injunction."

We find all of the foregoing assignments of error not well taken. Rather than repeat the reasoning and citations contained therein, as part of our decision and judgment entry we incorporate the detailed and well-reasoned decision of the trial judge, Judge Francis Restivo. See George P. Ballas Buick-GMC, Inc. v. Taylor Buick, Inc. (1981), 5 Ohio Misc.2d 16, 449 N.E.2d 805.

In finding the plaintiff's assignments of error not well taken, we find, as did the trial court, that plaintiff's billboard design was not copyrighted. Under the holding in Sears, Roebuck & Co. v. Stiffel Co. (1964), 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661, the general rule has been established that a person has a right to copy whatever federal patent and copyright laws leave in the public domain. Therefore, the plaintiff's rights were restricted to the Ohio Deceptive Trade Practices Act. R.C 4165.01 et seq. ¹ See, also, R.C. 1329.54 for definitions of "trademark" and "service mark." ²

We agree with the trial court that, upon every advertising billboard the plaintiff's name and other wording are the dominant characteristic and that the plaintiff's service mark, if any, consists of its advertising billboard as a whole.

In Mr. Gasket Co. v. Travis (1973), 35 Ohio App.2d 65, 299 N.E.2d 906 , that court set forth in paragraph two of the syllabus the following two-part test:

"To entitle the trade dress of a product to protection against a deceptive trade practice under R.C. 4165.03, it must be shown that the competing trade dress either 'causes likelihood of confusion or misunderstanding as to the source, sponsorship, approval, or certification of goods or services,' [R.C. 4165.02(B) ] or 'causes likelihood of confusion or misunderstanding as to affiliation, connection or association with * * * another,' [R.C. 4165.02(C) ] and it must be established that the trade dress has acquired a secondary meaning. There can be no confusion of source without secondary meaning."

The trial court's decision relative to the finding by it of a...