Marker Intern. v. DeBruler
| Decision Date | 07 February 1986 |
| Docket Number | No. 85-C-1018S.,85-C-1018S. |
| Parties | MARKER INTERNATIONAL, Plaintiff, v. Gregory deBRULER, an individual; Debco International Trading, Ltd.; Marker Surf America; and Doe Entities A through X, Defendants. |
| Court | U.S. District Court — District of Utah |
COPYRIGHT MATERIAL OMITTED
COPYRIGHT MATERIAL OMITTED
John Ashton and Robert G. Wing, Prince, Yeates & Geldzahler, Salt Lake City, Utah, for plaintiff.
Damian C. Smith and Stanley J. Preston, Snow, Christensen & Martineau, Salt Lake City, Utah, for defendants.
This matter is before the court on Defendants' Motion for Reconsideration or in the Alternative for Stay of Injunction Pending Appeal. Upon review of the parties' pleadings, documents, and memoranda, the court hold, rules, and finds as follows:
DECISION
The court notes at the outset that the Federal Rules of Civil Procedure do not provide for a Motion for Reconsideration as requested by defendants. Defendants' reference to the court's Rule 42(b) discretionary power to dispose of a case in stages and to the interlocutory nature of rulings made at those various stages has no relevance here where the court has granted plaintiff's Motion for Partial Summary Judgment as to all claims of unfair competition and trademark infringement arising in this action against defendants Gregory deBruler, Debco International Trading, Ltd., and Marker Surf America. The following Memorandum Decision will include the court's findings of fact and conclusions of law in support of its ruling.
Plaintiff, Marker International, is a Utah corporation concerned with the manufacture, distribution, and sale of Marker ski bindings and related ski equipment. Northwest Energy Company ("Northwest"), a non-party to this action, created Marker International as an acquiring company in which to place ski-related assets and subsidiaries purchased from Hannes Marker, the originator of the Marker ski binding. Defendants Greg deBruler, Cyndy deBruler, and Stan deBruler are the owners and operators of Debco International Trading, Ltd. ("Debco"), a Washington corporation formed to distribute sailboards of various origins. Defendant Marker Surf America is a company originally created by the deBrulers and Debco for the express purpose of the United States distribution of Marker Surf sailboards and other products developed by Hannes Marker.
The controversy between the parties centers on the propriety of Debco's use of the name Marker Surf America and the sloping "M" logo in its advertising and distribution of sailboards neither manufactured nor controlled by Hannes Marker or Marker International, the owner of the "Marker" trademark.
Plaintiff seeks to enjoin deBrulers and Debco from manufacturing, distributing, or selling sailboards or any other product related to the sporting good industry that bears the name Marker in any form in conjunction with the sloping "M" logo. It alleges that such activity constitutes: (1) trademark infringement in violation of the 15 U.S.C. § 1114(1); (2) infringement of the common law trademark owned by Marker International; and (3) unfair competition and false designation of the origin and sponsorship of Marker Surf America's goods in violation of 15 U.S.C. § 1125(a).
Subject matter jurisdiction is asserted under 15 U.S.C. § 1121 by virtue of plaintiff's § 1114(1) () and § 1125(a) () claims. The state cause of action is properly before the court under the doctrine of pendent jurisdiction. See United Mine Workers of America v. Gibbs, 383 U.S. 715, 86 S.Ct. 1130, 16 L.Ed.2d 218 (1966).
In 1952, Hannes Marker, a resident of Germany, developed a line of ski bindings and ski equipment that was sold under his family name, "Marker." He later introduced the equipment in the United States using the Marker name to advertise and distinguish his products which, since 1953, have been sold continuously in this country by Hannes Marker and his successors in interest. Marker Affidavit at 2, paragraph 2. Both parties to this suit agree that the Marker name is well-recognized as standing for high quality in the sporting goods industry. Greg deBruler Deposition at 25. Between the years 1953 and 1980, Hannes Marker organized and managed several subsidiaries involved with marketing sporting equipment internationally. Each of the subsidiaries included the Marker family name in its corporate title.1
In 1974, Hannes Marker began manufacturing sailboards and equipment related to windsurfing or sailboarding under the name "Marker Surf." On May 20, 1981, Hannes Marker agreed by letter to sell the Marker name, trademark and logos together with assets of all the various subsidiaries to Northwest Energy Company. The terms of the letter were memorialized by written contract approximately two weeks later, and Northwest placed the Marker assets in plaintiff Marker International, a Utah corporation. Id. Northwest and Hannes Marker agreed in the contract that Northwest would not assume the assets of Marker Surf2 and that Hannes Marker could continue to use the Marker family name in connection with Marker Surf, but that he was prohibited from using the Marker trademark3 on Marker Surf products. Hannes Marker was permitted to retain use of the sloping "M" trademark that had been placed on Marker Surf products since 1974.4 The configuration of the sloping "M" is identical to that of the letter "M" that commences the Marker trademark. The agreement further prohibited Hannes Marker from selling the Marker family name or trademark to third parties in the sport business.5 The parties lined out of paragraph seven the following sentence: "The new company shall have the right of first refusal for the distribution and marketing of Marker Surf products worldwide except in Germany, Austria, and Switzerland." By making the above deletion, Northwest indicated it did not desire to distribute or market Marker Surf products. Both Northwest and Hannes Marker agree that by the above-mentioned contract, Hannes was merely granted the use of the Marker family name and the sloping "M" so long as he should continue to be "the principal in the company known as Marker Surf." Marker Affidavit, paragraph 6; Tauber Deposition at 40. In the event he ceased to be the principal or majority owner thereto, "the name Marker Surf would no longer be used with that company, and in fact any and all rights to the name Marker in connection with Marker Surf and the sloping M would revert to Northwest Energy." Marker Affidavit, paragraph 6.
Defendant Gregory deBruler had a background of selling or distributing various products for short periods of time and under several different auspices, including foreign food items, Indian artifacts, jewelry, fine metals, baby thermos bottles, storm windows, insulation, and pollution control devices. Greg deBruler Deposition at 7-11. In 1980, deBruler began importing and distributing "Seamate" sailboards, a Taiwanese product, as well as another line of sailboards. At that time, he formed a company, Debco International Trading, Ltd., that was completely owned and operated by him, his wife, Cyndy deBruler, and his father, Stan deBruler. Id. at 5; Defendants' Memorandum of Points and Authorities in Support of a Motion for Summary Judgment at 2.
In November, 1982, Greg deBruler initiated contact with Hannes Marker and later met with him in West Germany to request authorization for the deBrulers d.b.a. Debco to act as executive distributor of Marker Surf products in North America.6 Greg deBruler Deposition at 15. Under the distributorship agreement that resulted from deBruler's proposal, he was required to buy for distribution during the 1982-83 year, a minimum of 500 boards made in Germany by Marker Surf. Id. at 20. The distributorship agreement also allowed Debco to use the name Marker Surf America in connection with deBruler's distribution of the German product as long as either party did not terminate the agreement. Paragraph 12(a) therein specifically provides that the right to use the Marker name would expire immediately upon notice by either Hannes Marker or Greg deBrulers.7 Paragraph two prohibited Debco from purchasing either sailboards or components of sailboards from third parties without Hannes Marker's written consent, and required that Debco should use the Marker trademark solely for application to Marker products. In his deposition, Greg deBruler admits he clearly understood that if the distributorship arrangement between Hannes Marker and Debco terminated, Debco and deBruler would lose the right to distribute sailboards under the Marker Surf name.8 Greg deBruler Deposition at 24, 25. After entering the agreement, Greg hired five Debco sales representatives to aid in marketing Marker Surf America products throughout the United States. Id. at 28.
In December, 1983, Hannes Marker decided to terminate his contract with Debco because of his dissatisfaction with their past business relationship.9 In a registered letter to deBruler dated December 19, 1983, Hannes gave the requisite notice of termination as follows: "In accordance with our agreement, I herewith give notice to terminate (I want to quit) our contract concerning the exclusive right to sell Marker Surf products in the US sic."
On February 1, 1984, Marker Surf and Debco entered a subsequent agreement that extended the distributorship until August 30, 1984 and was renewable only if the parties determined the past season had been successful. The contract required that the deBrulers and Debco should purchase a minimum of 900 surfboards during the 1984 year and should issue a letter of credit in the amount of 180 Deutsche Mark. Paragraph five permits Greg deBruler to make his own board design for the United States market with all changes in board designs being made at his expense. DeBruler was also allowed...
To continue reading
Request your trial
-
University of Kansas v. Sinks
...510, 522 (N.D.Tex.2006). 101. See Universal Money Ctrs., 22 F.3d at 1532. 102. 461 F.Supp.2d at 522; see also Marker Int'l v. deBruler, 635 F.Supp. 986, 1000 (D.Utah 1986) (finding intent where infringer stated "without equivocation that he continued to use the Marker name and sloping `M' b......
-
Craft Smith, LLC v. Ec Design, LLC
...presumed he did so in order to cause confusion between his products and those of the one holding the trademark." Marker Int'l v. deBruler , 635 F. Supp. 986, 1000 (D. Utah 1986), aff'd , 844 F.2d 763 (10th Cir. 1988). However, "[t]rade dress protection must subsist with the recognition that......
-
Coherent, Inc. v. Coherent Technologies, Inc., Civ. A. No. 89-A-952.
...of the term "coherent" in Plaintiff's trade name and marks and in Defendant's trade name are identical. In Marker Int'l v. deBruler, 635 F.Supp. 986, 999 (D.Utah 1986), aff'd, 844 F.2d 763 (10th Cir.1988), the district court A defendant in a trademark infringement or unfair competition case......
-
Nature's Way Products, Inc. v. Nature-Pharma, Inc.
...that the source of certain goods is a person or company other than their true source. 15 U.S.C. § 1125(a); Marker Int'l v. deBruler, 635 F.Supp. 986, 996 (D.Utah 1986), aff'd, 844 F.2d 763 (10th Cir.1988). Literal truth is not an absolute defense to a Lanham Act section 43(a) claim if the t......
-
AGAINST SECONDARY MEANING.
...the defendant constitute an admission that the Marker International trademark has secondary meaning." (citing Marker Int'l v. deBruler, 635 F.Supp. 986, 1000 (D. Utah (131) 2 MCCARTHY, supra note 50, [section] 15:38. (132) 15 U.S.C. [section]1065(2018). (133) Id. [section] 1115(b). See gene......