Horn Abbot Ltd. v. Sarsaparilla Ltd.

• Decision Date: 03 December 1984
• Docket Number: No. 84 C 10138.,84 C 10138.
• Citation: 601 F. Supp. 360
• Parties: HORN ABBOT LTD., Plaintiff, v. SARSAPARILLA LTD., Joseph A. DeBartolo and Various John Does, Defendants.
• Court: U.S. District Court — Northern District of Illinois

601 F. Supp. 360

HORN ABBOT LTD., Plaintiff, v. SARSAPARILLA LTD., Joseph A. DeBartolo and Various John Does, Defendants.

No. 84 C 10138.

United States District Court, N.D. Illinois, E.D.

December 3, 1984.

COPYRIGHT MATERIAL OMITTED

Clarence J. Fleming, James P. Ryther, Thomas C. Elliott, Jr., McDougall, Hersh, Scott, Chicago, Ill., for plaintiff.

Francis E. Sabato, Arnette R. Hubbard, Chicago, Ill., for defendants.

MEMORANDUM OPINION AND ORDER

ASPEN, District Judge:

The plaintiff Horn Abbot, Ltd. ("Horn Abbot") has sued defendants Sarsaparilla, Ltd. ("Sarsaparilla") and its president Joseph DeBartolo ("DeBartolo"), alleging trademark and copyright infringement. The dispute centers about Horn Abbot's enormously popular board game "Trivial Pursuit." Sarsaparilla has recently published, in time for the Christmas selling season, what it terms a "reference book" or "supplement" to Trivial Pursuit. Titled "In Further Pursuit of Trivial Pursuit," Sarsaparilla's book reproduces verbatim all 6,000 questions and answers of the "Genus Edition" of Trivial Pursuit. Horn Abbot has moved the Court to enter a temporary restraining order, prohibiting Sarsaparilla from further distribution and sale of In Further Pursuit pending a hearing on possible preliminary injunctive relief. For the reasons stated below, we hold that Horn Abbot has satisfied the prerequisites for extraordinary temporary injunctive relief, and we accordingly grant its motion for a temporary restraining order.

Facts

Horn Abbot filed this suit and the pending motion on November 26, 1984. Sarsaparilla responded to the motion late on November 29, 1984, and on November 30, 1984, the Court held a hearing on the motion and heard arguments and examined evidence submitted by both sides. Based upon careful consideration of the averments of counsel, the various affidavits, exhibits, and the other evidentiary offerings, we make the following interim findings of fact.

Trivial Pursuit is a board game which contains a playing board, a die, player tokens and scoring wedges. The heart of the game is 1,000 cards, each of which contains six trivia questions on one side and the corresponding six answers on the other. The questions for the basic, or "Genus Edition" of the game, are broken into six topical categories, and each card poses one question from each category.¹ Players of the game move their respective tokens around the board, trying to answer as many questions as possible. Without detailing how players score points and win, we can fairly say the winner will usually be the player who knows the most answers and/or enjoys the luckiest rolls of the die.

The game is packaged in a square blue box. The top of the box is trimmed with a thin line of orange-gold which forms a border near the edge. The words "Trivial Pursuit" appear in script at the center of the top of the box. Above and below these words, a fine-lined scroll design is displayed. These markings, too, are orange-gold.

The game was developed by two Canadian citizens, who later sold their rights to Horn Abbot and who are now shareholders of Horn Abbot. After marketing the game in Canada in 1982, Horn Abbot licensed Selchow & Righter Co. to manufacture and distribute the game in the United States. The sales of the game have been extraordinary. In 1983, 2½ million were sold in Canada and 1½ million in the United States. During the first three quarters of 1984, United States sales reached 13 million, with several million more sales anticipated during the present Christmas buying season. The game now retails in the neighborhood of $25-$30.

In March of 1984, DeBartolo contacted Horn Abbot seeking a license to publish a book based on Trivial Pursuit. The idea of the book was to reproduce the 6,000 questions and answers of the game, along with additional explanatory material for each answer. There is some dispute as to what transpired between the Spring and July of 1984. DeBartolo asserts that he had hired a team of researchers to develop the explanatory material and spent a good deal of his own funds writing the book. He also asserts that Horn Abbot led him to believe that it would license the book and encouraged him to spend the money researching and writing it. Horn Abbot's affidavits do not detail the pre-July 1984 occurrences. In any event, this much is clear. As of late July 1984, the book had not been published. On July 2, 1984, John Hozack of Horn Abbot wrote DeBartolo that, as far as Horn Abbot was concerned, the manuscript of the book had not yet been approved by Horn Abbot's directors, and that DeBartolo was not an agent of Horn Abbot. On July 23, 1984, Canadian counsel for Horn Abbot wrote Sarsaparilla that Horn Abbot had recently seen a flyer which advertised the forthcoming availability in In Further Pursuit of Trivial Pursuit.² The letter advised Sarsaparilla that it and Horn Abbot as yet had no license or agreement, and that Sarsaparilla's activities infringed Horn Abbot's rights. Finally, on July 25, 1984, Horn Abbot notified Sarsaparilla by letter that Horn Abbot's directors had voted against licensing the book. The letter indicated that Horn Abbot expected Sarsaparilla to comply fully with Horn Abbot's letter of July 23, 1984.

On July 25, 1984, DeBartolo wrote a letter to Horn Abbot, expressing disappointment that he and Horn Abbot would no longer be working together to develop the book. The letter also demanded that Horn Abbot compensate Sarsaparilla for its expenses to date, and that Horn Abbot return DeBartolo's manuscript and other materials he had sent. The letter concludes with a complaint that Horn Abbot had treated Sarsaparilla shabbily. However, the letter does not state that DeBartolo was planning to publish the book. On July 26, 1984, counsel for Sarsaparilla in further response to Horn Abbot's letter of July 23, wrote Horn Abbot that Sarsaparilla disagreed with some of the statements in the July 23rd letter, and that counsel were studying the matter to advise Sarsaparilla. The letter did not state that Sarsaparilla planned to publish the book despite Horn Abbot's recent actions.

Sometime in October, DeBartolo and Sarsaparilla did publish and market the book. Listing for $13.95, the book admittedly reproduces, verbatim, all 6,000 questions and answers of the Genus Edition of Trivial Pursuit. Upon examining a copy of the book, the Court finds that the questions and answers are divided into the same topical categories as those in the game. Within each category, the question-answer pairs are arranged alphabetically by answer. The matching question follows, and that in turn is followed by additional, relevant factual information researched by the book's authors.³ The front cover of the book is colored a shade of blue similar to that of the game. The cover also has a thin orange-gold line running around the edge. In orange-gold print, the title, "In Further Pursuit of Trivial Pursuit," appears, surrounded by an ornamental scroll design which is not identical, but is not dissimilar, to that found on the game's box. The words "Trivial Pursuit" appear on a separate line from the rest of the title and are larger and bolder than the rest of the title. The following disclaimer appears in small, orange-gold print near the bottom of the front cover:

TRIVIAL PURSUIT ® is a Registered TRADEMARK OF HORN ABBOTT sic LTD., Downsview, Ontario, Canada for its Board Game and equipment including a playing board, die, rules of play, question and answer cards, card boxes, player tokens and scoring materials. This book does not emanate from and is neither sponsored nor authorized by Horn Abbott Ltd.

Horn Abbot apparently learned of the actual publication of the book in early November. It filed this suit on November 26th. The seven count complaint alleges: (a) common law trademark infringement; (b) infringement of a United States trademark registration, as provided for by 15 U.S.C. §§ 1114 et seq.; (c) unfair competition under the laws of the United States, as provided for by 15 U.S.C. §§ 1121 and 1125(a); (d) infringement of a United States copyright, as provided for by 17 U.S.C. §§ 501 et seq.; (e) common law unfair competition; (f) dilution of trademarks as provided for by Ill.Rev.Stat., ch. 140 §§ 22 et seq. (1983); and (g) deceptive trade practices, as provided for by Ill.Rev.Stat. ch. 121½, §§ 311 et seq. (1983).

Discussion

We turn now to the merits of Horn Abbot's motion for a temporary restraining order. The parties do not dispute that the traditional four part standard applies to this request for emergency injunctive relief. In particular, we may grant Horn Abbot's motion only if we find that (1) Horn Abbot has some likelihood of success on the merits; (2) Horn Abbot will have no adequate remedy at law and will suffer irreparable harm if we do not grant its motion; (3) granting the injunction will not disserve the public interest; and (4) the balance of hardships as between Horn Abbot and Sarsaparilla does not tilt significantly in favor of the latter. See Roland Machinery Co. v. Dresser Industries, Inc., 749 F.2d 380 at 386-388 (7th Cir.1984); Hyatt Corp. v. Hyatt Legal Services, 736 F.2d 1153, 1157-59 (7th Cir.1984). We will consider each of these factors in turn.

A. Likelihood of Success on the Merits

Horn Abbot has shown clear trademark and copyright infringements and has a substantial likelihood of success on at least these counts of the complaint. The common law and statutory claims for trademark infringement are quite powerful. For example, under § 32(1) of the Lanham Act, 15 U.S.C. § 1114(1),⁴ the crucial test for trademark infringement is whether the alleged infringer is using the same or similar mark in a way which is likely to confuse or deceive the public. See James Burrough Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 274 (7th Cir.1976); Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 281-82 (7th Cir.1976), cert. denied, 429 U.S. 830, 97 S.Ct. 91, 50 L.Ed.2d...