Miller Brewing Co. v. Carling O'Keefe Breweries

• Decision Date: 06 June 1978
• Docket Number: No. Civ. 78-148.,Civ. 78-148.
• Citation: 452 F. Supp. 429
• Parties: MILLER BREWING COMPANY, Plaintiff, v. CARLING O'KEEFE BREWERIES OF CANADA, LTD. and Taft Broadcasting Company, Defendants.
• Court: U.S. District Court — Western District of New York

452 F. Supp. 429

MILLER BREWING COMPANY, Plaintiff, v. CARLING O'KEEFE BREWERIES OF CANADA, LTD. and Taft Broadcasting Company, Defendants.

No. Civ. 78-148.

United States District Court, W. D. New York.

June 6, 1978.

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Conboy, Hewitt, O'Brien & Boardman, Anthony L. Fletcher, of counsel, New York City, Jaeckle, Fleischmann & Mugel, David J. Calverley, of counsel, Buffalo, N. Y., for plaintiff.

Nims, Howes, Collison & Isner, Oliver P. Howes, Jr., of counsel, New York City, Cohen, Swados, Wright, Hanifin, Bradford & Brett, Jay E. Brett, of counsel, Buffalo, N. Y., for defendant Carling.

Diebold & Millonzi, Leonard Kriss, of counsel, Buffalo, N. Y., for defendant Taft.

MEMORANDUM and ORDER

ELFVIN, District Judge.

Miller Brewing Company ("Miller") complained against Carling O'Keefe Breweries of Canada, Ltd.,¹ ("Carling") and Taft Broadcasting Company ("Taft") alleging that the broadcasts of three television commercials which advertise and promote Carling's HIGHLITE low calorie beer by a federally licensed television station (WGRTV) owned and operated in Buffalo in the Western District of New York by Taft constituted copyright infringement, trademark infringement and unfair competition. Miller has moved for a preliminary injunction to restrain the broadcasting of such commercials pending the resolution of the instant action on the merits.²

Miller is engaged in the business of brewing, marketing and selling alcoholic beverages — beer, ale and malt liquor — primarily in the United States. It is currently the second largest brewer and seller of beer in this country, marketing its HIGH LIFE, LITE and LOWENBRAU brands. Recently Miller has been the fastest growing major brewery in the United States. Its most successful brand, and also its oldest, is Miller HIGH LIFE which is a nationally marketed premium beer sold throughout the United States and in the Canadian province of Alberta. Miller HIGH LIFE is not sold anywhere else in Canada. It is alleged that this brand of beer is referred to by consumers as Miller HIGH LIFE, Miller or HIGH LIFE. It has been heavily and extensively advertised on national television and in print under the overall "Miller time" theme. Miller's advertising expenditures for Miller HIGH LIFE exceeded twelve million dollars in 1973, thirteen million in 1974, fifteen million in 1975, eighteen million in 1976 and twenty million in 1977. Miller HIGH LIFE's sales record has been very successful in recent years with sales increasing steadily from five million barrels in 1973 to fifteen million barrels in 1977.

Beginning in May 1967, a reduced calorie beer had been brewed in the United States by a Chicago brewer, Meister Brau, Inc. In 1972, Miller acquired certain of the trademarks, recipes and registrations of Meister Brau, including its LITE brand. Meister Brau had marketed and sold LITE on a regional basis in the United States until July 1972 and Miller continued brewing and selling LITE in its then current packaging until 1974. In 1973, Miller had decided that reduced calorie, less filling beer had considerable unrealized profit potential and "restaged" LITE with a new recipe, new packaging and a new marketing-advertising approach. In January 1975, after introducing this brand in several test markets, Miller began marketing and selling its "new" LITE on a national basis throughout the United States. It is not marketed or sold anywhere in Canada at the present time. Miller's LITE beer has been heavily advertised with expenditures exceeding ten million dollars in 1975, twelve million in 1976, and fifteen million in 1977. LITE's sales record reflects Miller's successful advertising and promotional campaign with annual sales increasing from 2.5 million barrels in 1975 to six million barrels in 1977.

As part of its advertising campaign to promote LITE beer, Miller has used four television commercials: John Mackey-Matt Snell, football Superbowl heroes; Mendy Rudolph-Tom Heinsohn, former National Basketball Association ("NBA") referee and coach; Deacon Jones, former National Football League lineman and member of the "fearsome foursome"; and the VanArsdale twins, former NBA basketball players. Miller characterizes these commercials as "unique" and "attention-getting". The setting of each of the four commercials is a tavern. In Mackey-Snell, the two are seen arm wrestling while Mackey addresses the camera and informs the audience that LITE is less filling, has one-third fewer calories than Miller's regular beer, and "really tastes great." Both then recite in unison that "in fact, after I teach this guy a lesson, I'm going to have another bottle." The camera immediately focuses on a close-up of the familiar triumvirate of bottle, can and filled foamy-headed glass of beer, a groan is heard signaling the end of the arm wrestling duel, and an announcer's voice reads the words emblazoned across the screen: "LITE beer from Miller. Everything you always wanted in a beer. (Pause) And less." In Rudolph-Heinsohn, after Heinsohn notes their frequent basketball game disagreements over the years, he acknowledges that they finally agree on something — LITE beer from Miller. Nevertheless, they quickly digress into an argument over which of LITE's attributes — less filling or great taste — is better. The tension mounts culminating in the former referee blowing his whistle and ejecting the NBA coach from the tavern. The announcer again tells the audience that LITE is everything a beer drinker wants. In the third commercial, Deacon Jones strolls menacingly through a bar as the crowd parts in his path and then poetically relates LITE's beneficial characteristics ending with a threat to break a nose if he is not believed. The same concluding format is utilized with the announcer's voice heard as the camera focuses on the trio of bottle, can and frosty beer glass. Finally, the advertisement with the VanArsdale twins employs the advertising technique of having two identical twins recite the commercial's message in unison. However, a disagreement soon arises over whether LITE has a third less calories or great taste resulting in utter confusion between them as to each's identity. Again, the familiar announcer's voice is heard reinforcing the words displayed across the screen. Miller has registered its claim to copyright in each of these four commercials by filing certificates of copyright registration (Reg. Nos. PA 250, PA 251, PA 252 and PA 253) with the United States Copyright Office. In addition, Miller is the owner, inter alia, of the following trademarks registered on the principal register in the United States Patent and Trademark Office: HIGH LIFE (Reg. No. 305,854), HIGH LIFE in design (Reg. No. 614,062), LITE (Reg. No. 929,277), and LITE design (Reg. No. 905,236).

Carling has for many years engaged in the business of brewing, marketing and selling alcoholic beverages, including beer and ale, primarily in the Dominion of Canada, but also through subsidiaries in the United States. In February 1978 Carling commenced selling a reduced calorie beer in Canada under the trademark HIGHLITE.³ In the development of such light beer, Carling requested its advertising agency, the Caledon Advertising Company, Ltd., of Toronto ("Caledon") to submit proposed brand names. Of the names submitted, Carling at first preferred SUPERLITE; however, the Canadian Consumer and Corporate Affairs Department refused to grant approval on the ground that SUPERLITE would have a tendency to mislead consumers into thinking that the beer was a very light beer or had a very low alcoholic content. Thereafter, Carling decided to use the name HIGHLITE allegedly to convey the message to consumers that its new light beer was of special interest or significance. At the present time, Carling does not sell HIGHLITE in the United States and it is sold in only four Canadian provinces. In order to promote sales of its low calorie beer, Carling has and is utilizing, inter alia, the following three television commercials: the arm wrestle, the delivery man, and the McCluskey brothers. These commercials were developed and produced on behalf of Carling by Caledon. Each of Carling's said commercials is set in a tavern. In the first commercial, two unidentified men are seen engaged in arm wrestling while one tells the other that HIGHLITE is brewed like regular beer. He in turn responds that he drinks HIGHLITE because it tastes less filling. The statements are repeated three times. In the interim, the camera focuses on two bottles of HIGHLITE and a third man sits down between the arm wrestlers. He points out to them that they both drink HIGHLITE because it tastes great and has fewer than seventy calories per bottle. The arm wrestlers agree and cease their arguments momentarily, but lapse immediately into a disagreement over who will buy the next round of beer. A close-up follows showing a HIGHLITE bottle next to a filled glass of beer and an announcer's voice exclaims that HIGHLITE is "a new light beer for all kinds of reasons." In the delivery man commercial, a gregarious fellows joins his friends at a table in a tavern and states "Not snow nor sleet nor dead of night will keep me from the friends I like. Each has a reason for him that's right to drink this new light beer, HIGHLITE." His group of friends responds "All right." The supposed delivery man after pouring a glass of HIGHLITE continues: "You know I like this new HIGHLITE. Tastes good cause it's brewed like regular beer and has a little less than seventy calories a bottle. But what I also like is this. Although it tastes like it takes less space, still new HIGHLITE delivers taste." This brings forth a roar from the crowd. The familiar announcer's voice is then heard over a close-up of a HIGHLITE bottle and foamy glass of beer. In the McCluskey brothers, the three brothers are standing arm-in-arm. Joe McCluskey, the oldest,...