Ocean Bio-Chem v. Turner Network Television

• Decision Date: 02 July 1990
• Docket Number: No. 90-6044-CIV.,90-6044-CIV.
• Citation: 741 F. Supp. 1546
• Parties: OCEAN BIO-CHEM, INC., Plaintiff, v. TURNER NETWORK TELEVISION, INC., Turner Broadcasting System, Inc., and Farrell/Minoff Productions, Defendants.
• Court: U.S. District Court — Southern District of Florida

741 F. Supp. 1546

OCEAN BIO-CHEM, INC., Plaintiff, v. TURNER NETWORK TELEVISION, INC., Turner Broadcasting System, Inc., and Farrell/Minoff Productions, Defendants.

No. 90-6044-CIV.

United States District Court, S.D. Florida.

July 2, 1990.

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John H. Oltman, Oltman and Flynn, Fort Lauderdale, Fla., for plaintiff.

Thomas R. Julin, Adalberto Jordan, Steel Hector & Davis, Miami, Fla., for defendants.

MEMORANDUM ORDER

RYSKAMP, District Judge.

I. INTRODUCTION

THIS MATTER is before the court on the parties' motions. Plaintiff Ocean Bio-Chem, Inc. ("Ocean") moved for a preliminary injunction, pursuant to Federal Rule of Civil Procedure 65, and defendants Turner Network Television, Inc., Turner Broadcasting System, Inc., and Farrell/Minoff Productions oppose that motion. Defendants moved to dismiss Ocean's complaint for lack of subject matter jurisdiction and for failure to state a claim on which relief can be granted, pursuant to Rules 12(b)(1) and 12(b)(6); or, in the alternative, for summary judgment, pursuant to Rule 56. The court heard argument from the parties, and thereafter Ocean moved for leave to file a supplemental affidavit and letter regarding its motion for a preliminary injunction and for a supplemental hearing on that motion.

The court grants Ocean's motion for leave to file a supplemental affidavit and letter. However, a supplemental hearing is unnecessary, and the court thus denies that motion. For the reasons discussed below, the court denies Ocean's motion for a preliminary injunction, denies defendants' motion to dismiss the complaint, and grants defendants' alternative motion for summary judgment as to Count I of the complaint. The court declines to exercise pendent jurisdiction over the state claims presented by Counts II and III of the complaint and thus dismisses those counts.

II. BACKGROUND AND PROCEDURAL HISTORY

Ocean's three-count complaint against defendants alleges (1) misrepresentation of its trademark and trade name in violation of 15 U.S.C. § 1125(a) (1988), the codification of the Lanham Trade-Mark Act;¹ (2) injury to business reputation in violation of Fla.Stat. § 495.151 (1989); and (3) dilution of trademark and trade name in violation of Fla.Stat. § 495.151 (1989). Ocean alleges that it was injured when defendant Turner Network Television, Inc. broadcast "Incident at Dark River," a fictional television movie produced by defendant Farrell/Minoff Productions. The movie, first broadcast December 4, 1989, portrayed a father's anguish over his daughter's death, which was caused by the river pollution of a company called "Starbrite Batteries." The movie was aired four times before this action was filed.

Ocean does not produce batteries. But from November 1973 until October 1974, Ocean existed as Star Brite Corporation; its wholly-owned subsidiary Star Brite Distributing, Inc. still uses that name. Ocean claims to market 168 different products under the Star Brite trademark, including marine and automotive cleaners and polishes. Star Brite products, which have been sold since 1972, are alleged to approximate seventy percent of the market share of polishes for boats and recreational vehicles.

Although "Incident at Dark River" was a movie about a battery manufacturer, Ocean alleges that defendants' movie made use of its trade name and trademark and created a likelihood of confusion with its products. Specifically, Ocean alleges that the movie makes repeated reference to the fictional company as merely Star Brite, instead of Star Brite Batteries, and portrays the Star Brite trademark visually in two scenes, in a sign over a factory gate and in a newspaper headline.

Beyond creating a likelihood of confusion, Ocean claims that the movie has already created actual confusion, as one potential customer has refused to purchase products from Ocean because "it was dumping toxic chemicals into a river." According to Ocean's president, the false impression created by the television movie unfairly injured its business reputation and diluted its trademark, because the company has exercised care to be environmentally conscious.

Ocean seeks an injunction against future broadcasts of the movie. The Turner Network has delayed additional broadcasts pending the outcome of this litigation, although the movie is scheduled for distribution on the home video market in October 1990 and is being considered for possible international syndication.

Defendants oppose Ocean's motion for an injunction, arguing that Ocean cannot succeed on its claims. Defendants also move to dismiss the complaint or, in the alternative, for summary judgment.

III. ANALYSIS

A. General Standards for a Preliminary Injunction.

Both the federal and Florida law on which Ocean relies provide for injunctive relief. Under the federal trademark act, a district court has the power to grant an injunction to prevent the violation of any right of a registrant who has registered its mark with the United States Patent and Trademark Office or to prevent a violation of section 1125. 15 U.S.C. § 1116 (1988). The very terms of the Florida antidilution statute allow for injunctions to issue.

To prevail in federal court on its motion for a preliminary injunction, Ocean must establish that (1) it has a substantial likelihood of success on the merits of its claims; (2) a substantial threat exists that it will suffer irreparable injury if injunctive relief is denied; (3) the threatened injury to Ocean outweighs the threatened harm the injunction may do to the defendants; and (4) granting a preliminary injunction will serve the public interest. Tally-Ho, Inc. v. Coast Community College District, 889 F.2d 1018, 1022 (11th Cir.1989). In determining the propriety of an injunction in a trademark case, the critical issue is whether the plaintiff is likely to succeed on the merits of its claim, as "the other decisions will flow from that ruling." Keds Corp. v. Renee Intern. Trading Corp., 888 F.2d 215, 220 (1st Cir.1989).

B. Whether Ocean States a Cause of Action Under the Lanham Act.

Defendants move to dismiss Ocean's complaint, arguing that because the allegedly infringing use occurred in a fictional context the first amendment precludes Ocean from stating a cause of action under the Lanham Act. While first amendment concerns affect application of trademark law, the first amendment does not insulate artistic works from Lanham Act claims. Cliff's Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc., 886 F.2d 490, 493 (2d Cir.1989) (citing Silverman v. CBS, Inc., 870 F.2d 40, 49 (2d Cir.1989), cert. denied, ___ U.S. ___, 109 S.Ct. 3219, 106 L.Ed.2d 569 (1989)); Rogers v. Grimaldi, 875 F.2d 994, 998 (2d Cir. 1989); see also Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 402-03 (8th Cir. 1987), cert. denied, 488 U.S. 933, 109 S.Ct. 326, 102 L.Ed.2d 344 (1988) (issuance of injunction did not infringe on first amendment protections, because injunction directed against marketing of T-shirts, mugs, and other products featuring design with phrase "Mutants of Omaha" to express opposition to nuclear arms). Thus, Ocean is not precluded as a matter of law from asserting a Lanham Act claim against use of its trademark associated with a fictional work, and defendants' motion to dismiss plaintiff's complaint must be denied.

Notwithstanding, defendants' fictional film is entitled to the full extent of protection afforded by the first amendment.² When first amendment values are involved, the Lanham Act must be construed narrowly. Cliff's Notes, 886 F.2d at 494-95 (vacating Lanham Act injunction against publication of study guide parody satirizing bestseller novels, noting "somewhat more risk of confusion is to be tolerated when a trademark holder seeks to enjoin artistic expression").

C. Likelihood of Confusion Under the Lanham Act.

In the first count of Ocean's complaint, it seeks recovery under 15 U.S.C. § 1125(a), which forbids false designations of origin and false descriptions. Section 1125 provides that:

(a) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, of any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which —

(1) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(2) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such an act.

15 U.S.C. § 1125(a) (1988).

To prevail under section 1125(a), a plaintiff must demonstrate (1) that it is the prior owner of the trademark, and (2) that the defendant adopted a trademark that is the same or confusingly similar, so that consumers likely will be confused about "the proper origin of the goods or services, such that a consumer is likely to believe that defendant's goods or services are being sold with the consent or authorization of the plaintiff, or that defendant is affiliated with or connected to the plaintiff." American United Life Ins. v. American United Ins. Co., 731 F.Supp. 480, 485 (S.D. Fla.1990) (citing Conagra, Inc. v. Singleton, 743 F.2d 1508, 1512 (11th Cir.1984)); Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., 716 F.2d 833, 839 (11th Cir.1983) (dispositive issue under § 1125(a) whether consumers likely to confuse defendant's products "as being rendered, authorized, sponsored, or endorsed" by plaintiff).

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