Lone Ranger v. Currey

• Decision Date: 28 July 1948
• Docket Number: Civil Action No. 3062.
• Citation: 79 F. Supp. 190
• Parties: LONE RANGER, Inc. v. CURREY et al.
• Court: U.S. District Court — Western District of Pennsylvania

79 F. Supp. 190

LONE RANGER, Inc. v. CURREY et al.

Civil Action No. 3062.

District Court, M. D. Pennsylvania.

July 28, 1948.

Raymond J. Meurer, of Detroit, Mich., Stanley F. Coar and J. Julius Levy, both of Scranton, Pa., for plaintiff.

Paul A. McGlone and Frank J. McDonnell, both of Scranton, Pa., and Paul F. Gibbons, of Washington, D. C., for defendants.

MURPHY, District Judge.

This is an action for damages and an injunction based upon charges of unfair competition and unfair trade involving the alleged infringement of plaintiff's good will, trade-name, trade-mark and copyrights.

Plaintiff, The Lone Ranger Inc., incorporated under the laws of the State of Michigan, is a citizen and resident of that State; defendant Earl W. Currey is a citizen and resident of the State of Illinois; defendant "Jack" Smith is a citizen and resident of Pennsylvania.

Jurisdiction of this court is based upon diversity of citizenship and a dispute involving the required jurisdictional amount; similarly jurisdiction arises from Section 24(7) of the Judicial Code, 28 U.S.C.A. § 41(7). Personal service was made on each defendant in this district.

We have before us plaintiff's complaint, defendants' answer and counterclaim and the record of testimony as offered by plaintiff and defendants at a final hearing.

The uncontradicted evidence shows and we find as a fact the following:¹

1. From the time of the first radio broadcast, January 30, 1933, over Station WXYZ, Detroit, and seven other Michigan radio stations, the Lone Ranger program has been broadcast, each script with but few exceptions being a complete episode, continuously three times weekly and has grown in coverage so that in 1948 it is broadcast over 179 stations of the Pacific and Blue networks and 67 additional stations in southeastern United States. The program appeals particularly to children. Commencing November 1933 the program has had various sponsors and is presently sponsored by General Mills Inc. and the American Baking Company.

2. From its first appearance, September 11, 1938, in the New York Journal American, the Lone Ranger comic or cartoon strip has increased its coverage so that in 1948 it appears through license arrangements with King Features Syndicate in 82 United States and 22 foreign countries' Sunday papers, and in 129 United States and 14 foreign countries' daily papers.

3. Republic Pictures have produced under license two movie serials portraying episodes of the Lone Ranger.

4. Since October 8, 1935, Whitman Publishing Company of Racine, Wisconsin, and Grosset & Dunlap of New York have under license published books of Lone Ranger adventure stories.

5. From July 12, 1938, by license Kilgore Manufacturing Company, an Ohio corporation, and other manufacturers, distributors and miscellaneous vendors have been permitted to sell various articles of merchandise identified as having some connection with the Lone Ranger.

6. Over four million children throughout the United States have been enrolled in the Lone Ranger Safety Club, four awards have been made for safety, two C.I.T. foundation awards. The purpose of the Club is to promote and foster good sound amusement, respect for parents, respect for law and order, and is especially devoted to the protection of life and limb.

7. Articles telling the story of the origin, rise and success of the Lone Ranger program have appeared in the Saturday Evening Post of October 13, 1939; Liberty Magazine of March 25, 1944; and Pic Magazine of May 5, 1945.

8. From the time of the conception of the Lone Ranger program by George W. Trendle of the Kunsky (now King)-Trendle Broadcasting Corporation, and the subsequent assignment of all rights therein to the plaintiff, incorporated by the State of Michigan January 31, 1935, to date, upwards of one million dollars have been invested in the creation, distribution, exploitation and advertising of the Lone Ranger, the characters and objects named in the program and all things incidental thereto.

9. To protect its trade-mark, trade-name and copyrights, the trade-mark was registered with the State of Michigan; the trade mark and articles of incorporation were registered with the United States Bureau of Patents. Each individual manuscript of the radio programs, comic or cartoon strips in the newspapers and comic books, all books published, as well as all forms used in connection with the Lone Ranger Safety Club, and photographs portraying the Lone Ranger in his distinctive mask and cowboy regalia, his horse Silver, and the Indian Tonto, have been noticed and copyrighted.

10. In every case where licenses have been granted the plaintiff has exercised strict and continuous supervision so that its aims and objectives of promoting law, good morals and safety may not be interfered with, and so that the high standard of quality and excellence of its product may be maintained.

11. The outstanding physical characteristics of the Lone Ranger episode story on the radio, in the movies, and in the comic and cartoon strips and books are the name "The Lone Ranger," the cowboy garb, the large hat, the mask, the silver trappings, the horse Silver, the unique cry or call "Hi Yo Silver" and "Hi Yo Silver Away," the little boy Dan Reid, and the Indian Tonto. Actually the Lone Ranger is a created fictional character, a mythical western cowboy. The words "Lone Ranger" do not describe any living person except insofar as such person might be employed to dramatize the literary property.

12. The aim of those who conceived the idea was to produce a show portraying life in the west between 1865 and 1890. The principal character rides about masked and on a white horse named Silver with a distinctive call "Hi Yo Silver" and "Hi Yo Silver Away," and with his Indian companion Tonto. The Lone Ranger's sole aim and purpose is to spend all his time championing, against tremendous odds, the cause of the oppressed, respect for law and order, honor and respect for parents, safety of children, and to be generally a force for good in redressing the wrongs of the community, and then disappear immediately from public gaze. Mystery was to be vital to his role; his identity was to be absolutely unknown. His character and actions were to be exemplary, his English perfect, his diction clear and distinct. No bad habits were to be portrayed; no smoking, swearing, gambling or drinking. His conduct was to be such as children would strive to emulate. In short, he was to become a popular hero and an idol of children. The name of "The Lone Ranger," the Indian "Tonto," and the phrase "Hi Yo Silver" and "Hi Yo Silver Away" have become by-words in the national vocabulary. The result is that the plaintiff has built up immense public good will and a business of great value.

13. All rights, title and interest in and to the dramatic literary composition "The Lone Ranger," including the title and names of characters and of the horse "Silver" and the distinctive cry "Hi Yo Silver" and "Hi Yo Silver Away," the mask, the cowboy regalia, silver saddle, and any and all adaptations thereof when used in conjunction are the sole and exclusive property of the plaintiff.

14. The only time the plaintiff authorizes the appearance of a person as "The Lone Ranger" at places outside the City of Detroit is on occasions of great importance, and then only under plaintiff's direct supervision and control, the agreement permitting the second party to advertise in a limited way.

15. Plaintiff has never bargained, sold, assigned or transferred any of its rights to anyone other than as hereinabove set forth.

16. Plaintiff has never bargained, sold, assigned, licensed, or transferred any of its rights to either of the defendants; nor has it ever given to the defendants or either of them any right to hold themselves out to the public as having any connection whatever with plaintiff or any of its rights herein described.

17. On three occasions plaintiff has successfully opposed other attempted registrations in the United States Patent Office of trade marks, two containing "Hi Yo Silver," another "Hio Ranger." By consent decree in Civil Action 160, the United States District Court for the Middle District of Pennsylvania on July 14, 1939, restrained one Lee Powell et al. from the improper use of the name "The Lone Ranger." Another phase of this matter was subsequently before the United States Circuit Court of Appeals for the Fourth Circuit, and the refusal of the United States District Court for the Western District of South Carolina, Lone Ranger v. Cox, D.C., 39 F.Supp. 487, to enjoin the defendant Lee Powell et al. from the improper use of the name "The Lone Ranger" was reversed. The proceedings are reported as Lone Ranger, Inc., v. Cox et al., 4 Cir., 1942, 124 F.2d 650.

We find as a fact from the credible evidence the following:

As to the defendant Currey —

Defendant herein asserts no claim to any of the rights, title, or interest of the plaintiff; admits he has no right to represent himself as the Lone Ranger; that he does not have a horse named Silver, Hi Ho Silver, or Hi Yo Silver or the right to use the cry "Hi Yo Silver" or "Hi Yo Silver Away," and that he does not have an Indian companion named Tonto or Tonta.

Defendant first used the name "The Lone Star Ranger" at Houston, Texas, January 1940. When plaintiff complained that defendant's advance notices confused the newspaper, the Houston Post, and many of the general public into believing that defendant was the Lone Ranger, his Indian companion advertised as Tonta was Tonto, his horse advertised as Hi Ho Silver was Silver, the billing was immediately corrected to read "Capt. E. W. Currey and his Horses."

At San Antonio, Texas, in March 1947, the newspaper, the San Antonio Light, describing defendant as the Lone Star Ranger better known to light comic readers as the Lone Ranger, stated that enroute to Hollywood defendant would appear locally with his famous horse Silver. Plaintiff...