Pebble Beach Co. v. Tour 18 I, Ltd., Civil Action No. 93-3875.
| Court | United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Southern District of Texas |
| Writing for the Court | Hittner |
| Citation | 942 F.Supp. 1513 |
| Parties | PEBBLE BEACH COMPANY, Resorts of Pinehurst, Inc., and Sea Pines Company, Inc., Plaintiffs, v. TOUR 18 I, LTD., Defendant. |
| Docket Number | Civil Action No. 93-3875. |
| Decision Date | 10 September 1996 |
v.
TOUR 18 I, LTD., Defendant.
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Stephen M. Trattner, Jennifer B. Lucas, Lewis & Trattner, Washington, DC, James B. Gambrell, Akin, Gump, Strauss, Hauer & Feld, Austin, TX, William H. Knull, III, Mayer, Brown & Platt, Houston, TX, for Plaintiffs.
William Donald Durkee, Charles H. De La Garza, J. Mike Amerson, William D. Raman, John C. Cain, Arnold White & Durkee, Houston, TX, for Defendant Tour 18 I, Ltd.
HITTNER, District Judge.
Plaintiffs Pebble Beach Company ("Pebble Beach"), Resorts of Pinehurst, Inc. ("Resorts"), and Sea Pines Company, Inc. ("Sea Pines"), brought suit against Tour 18 I, Ltd. ("Tour 18"), which operates a public golf course in Humble, Texas named "Tour 18." Plaintiffs allege that Tour 18's replication of their golf hole designs and use of their service marks in advertisements, promotional materials, and on its golf course signs, violate various provisions of federal and state law.
Plaintiffs filed their complaint asserting causes of action under the Lanham Act, 15 U.S.C. § 1051 et. seq., for service mark and trade dress infringement, unfair competition, and false advertising. Plaintiffs also allege claims under Texas law for common law unfair competition, conversion, civil conspiracy, and service mark and trade dress dilution under the Texas anti-dilution statute, Tex. Bus. & Com.Code Ann. § 16.29. Pebble Beach asserts a claim for copyright infringement.
Defendant Tour 18 asserts counterclaims against plaintiffs under Texas common law for unfair competition, interference with existing and prospective business relations, and civil conspiracy. All of Tour 18's counterclaims arise out of plaintiffs' actions in prosecuting this lawsuit. Specifically, Tour 18 claims that this lawsuit is frivolous and intended only to put Tour 18 out of business.
This case was tried to the Court beginning on October 31, 1995, with final post-trial submissions filed by the parties on January 11, 1996. After reviewing the evidence, the submissions of the parties, and the applicable law, the Court enters the following findings of fact and conclusions of law.
I. The Parties
Pebble Beach is a California general partnership with its principal place of business in Pebble Beach, California. Pebble Beach
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owns and operates a golf and vacation resort in northern California, which includes five golf courses: (1) Pebble Beach Golf Links; (2) The Links at Spanish Bay; (3) Spyglass Hill; (4) Peter Hay Golf Course; (5) Old Del Monte Golf Course.
Resorts is a North Carolina corporation with its principal place of business in Pinehurst, North Carolina. Resorts owns and operates a golf resort in North Carolina that includes seven golf courses, numbered 1 through 7. Resorts is owned by Club Corporation of America, a company which owns and manages golf courses and clubs nationwide.
Sea Pines is a South Carolina corporation with its principal place of business on Hilton Head Island, South Carolina. Sea Pines owns and operates Harbour Town Golf Links as part of its golf and tennis resort on Hilton Head Island.
Tour 18 is a Texas limited partnership with its principal place of business in Humble, Texas. The partnership has merged into Tour 18, Inc., a Texas corporation. Tour 18 owns and operates a golf course in Humble, Texas (near Houston) and a golf course in Flower Mound, Texas (near Dallas). Tour 18's golf courses consist of golf holes that are copies of golf holes from famous golf courses around the United States. For its Humble, Texas course Tour 18 replicated three holes from plaintiffs' golf courses: Pebble Beach Hole 14, Pinehurst No. 2 Hole 3, and Harbour Town Hole 18. Additionally, Tour 18 replicated Harbour Town Hole 18 for its Flower Mound, Texas course.
II. The Parties' Facilities and Operations
A. Pebble Beach
Pebble Beach originated in 1881 when Pebble Beach Company's predecessor-in-interest, the Pacific Improvement Company, purchased approximately 5,300 acres within the Del Monte Forest near Carmel Bay in California, in an area named "Rancho El Pescadero." The Pacific Improvement Company named an unincorporated portion of this area "Pebble Beach" in 1909. That area remains unincorporated within what is still referred to by the State of California as "Rancho El Pescadero." Pebble Beach Company controls access into this area by several security gates and charges a fee for admission. Pebble Beach Company also controls commercial activities within the Del Monte Forest area.
One of Pebble Beach's former principals, Samuel Morse, dedicated a large portion of the Del Monte Forest to a trust to preserve its natural state. In addition, he selected land adjacent to the Pacific Ocean for a golf course, which he named Pebble Beach Golf Links. The golf course opened in 1919 and has since been continuously referred to as "Pebble Beach." Pebble Beach Golf Links has consistently been named among the top five golf courses in the United States.1 Furthermore, the evidence establishes that Pebble Beach Golf Links is a famous golf course among golfers nationwide. The fame of the course is based on a number of factors. First, its location on the shores of the Pacific Ocean give it a natural beauty that may be unsurpassed by any other golf course. Second, Pebble Beach Golf Links has hosted many nationally televised professional golf tournaments.2 Additionally, many unsolicited articles written in books, magazines, and newspapers, and numerous statements of praise by distinguished golf writers and professional golfers, have added to Pebble Beach's reputation.3
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To promote its golf course and resort, Pebble Beach Company advertises Pebble Beach nationally, including in Texas. Golfers from Texas, including some from the Houston area, constitute approximately five percent of Pebble Beach's customers. Furthermore, while Pebble Beach is a public golf resort, the combination of Pebble Beach's history, beauty, and fame makes Pebble Beach an exclusive luxury golf resort to which people from around the world travel for vacations. Green fees4 at Pebble Beach Golf Links are approximately $245.00 for golfers not staying overnight at the Lodge at Pebble Beach. For guests of the Lodge, green fees are approximately $195.00. The Lodge at Pebble Beach costs at least $280.00 per night.
Tour 18 replicated Pebble Beach Hole 14 for one of its golf holes at its Humble, Texas golf course and uses the phrase PEBBLE BEACH in its advertising, promotional brochures, and on its golf course signs. Pebble Beach Hole 14 is a par five, dog-leg right that is ranked as Pebble Beach's number one handicap hole, identifying it as the most difficult hole on the course. The 14th Hole is not adjacent to the Pacific Ocean, but it provides golfers with a view of the ocean from the tee box and while walking from the tee box to the green. Its fairway is lined with tall cypress and oak trees. One of the most notable features of Hole 14 is the large sand bunker guarding the left side of the green. In one of its brochures, Tour 18 touts this bunker as "one of the most critical bunkers in golf."
While the evidence shows that Pebble Beach Golf Links is a famous golf course, the evidence is insufficient to demonstrate that the design of the 14th Hole at Pebble Beach is famous among golfers. The 14th Hole is not Pebble Beach's "signature" hole and it has not been emphasized by Pebble Beach in its advertising and promotional brochures.5 The evidence also indicates that the 18th and 7th Holes at Pebble Beach are more often photographed and emphasized in golf publications and literature because of their beauty and proximity to the rocky cliffs overlooking the Pacific Ocean.
Pebble Beach owns an incontestable6 federal service mark registration of the phrase PEBBLE BEACH for golfing services, Reg. No. 1,065,027. Pebble Beach does not have a federal trademark registration for the design of Pebble Beach Hole 14. Pebble Beach also does not have a copyright, design patent, or utility patent on the design of Hole 14.
B. Pinehurst No. 2
On a parcel of land in an unincorporated area of North Carolina, Resorts' founder, James Walker Tufts, built four golf courses and a resort hotel that he initially called Tuftstown, and later in 1895, renamed Pinehurst. Pinehurst remained an unincorporated area until 1980, when it was incorporated as the "Village of Pinehurst." Resorts now owns six and operates seven golf courses on the land acquired by Mr. Tufts. Tour 18 replicated Pinehurst No. 2 Hole 3 for its Humble, Texas course, and uses the phrase PINEHURST in its advertising, promotional brochures, and on its golf course signs.
Donald Ross was the architect of the Pinehurst No. 2 course. Many golfers and golf
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historians consider Ross one of the greatest golf course architects. (PX 426, 410). He designed over 600 golf courses in the United States, including several courses ranked in the top 100 in the United States by Golf Digest and other trade publications. (PX 426). According to the evidence, Pinehurst No. 2 is considered Ross' masterpiece and is therefore the most famous of the seven courses at the Pinehurst resort.7 Ross designed the first nine holes for Pinehurst No. 2 in 1903,...
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Cowboys Football Club v. America's Team Properties, Civil Action No. 3:06-CV-1906-K.
...say it may cause consumers to believe the Defendant is sponsored or endorsed by the Cowboys. See Pebble Beach Co. v. Tour 18 I Ltd., 942 F.Supp. 1513, 1541 (S.D.Tex.1996). Or it may cause "initial interest confusion" by attracting consumers who are looking for Cowboys merchandise. See Elvis......
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Santander Consumer U.S. Inc. v. Walsh, Civil Action No. 08–11778–MBB.
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E. & J. Gallo Winery v. Spider Webs Ltd., No. CIV. A. H-00-450.
...Gallo must show that it owns a distinctive mark and that there is a likelihood of dilution. See Pebble Beach Co. v. Tour 18 I, Ltd., 942 F.Supp. 1513, 1564 (S.D.Tex. 1996), aff'd, 155 F.3d 526 (5th Cir.1998); see generally RESTATEMENT OF THE LAW (3D) UNFAIR COMPETITION § 25 (1995). "The pur......
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