Pignons S.A. de Mecanique de Precision v. Polaroid Corp.

Decision Date11 August 1981
Docket NumberNo. 80-1744,80-1744
PartiesPIGNONS S. A. de MECANIQUE de PRECISION, et al., Plaintiffs, Appellants, v. POLAROID CORPORATION, et al., Defendants, Appellees.
CourtU.S. Court of Appeals — First Circuit

Richard J. Birch, Boston, Mass., with whom Thompson, Birch, Gauthier & Samuels, Boston, Mass., was on brief, for appellants.

Herbert F. Schwartz, New York City, with whom William K. Kerr, Patricia A. Martone, Fish & Neave, New York City, Laurence S. Fordham, William J. Cheeseman, and Foley, Hoag & Eliot, Boston, Mass., were on brief, for appellees.

Before ALDRICH, CAMPBELL and BREYER, Circuit Judges.

LEVIN H. CAMPBELL, Circuit Judge.

This suit raises the question whether use of the Greek letter word "Alpha" in the designation of a series of Polaroid cameras infringed or diluted the trademark "Alpa" (after the mountains) owned by a Swiss camera maker, or otherwise constituted unfair competition.

I. Background

Pignons is a Swiss corporation that has long supplied high-tolerance, precision mechanical components to the Swiss watch industry. In the early 1930's Pignons began manufacturing photographic equipment and since 1949 has marketed in the United States various models of 35 millimeter, single lens reflex cameras and corresponding lines of lenses and photographic accessories, all under the registered trademark "Alpa." Pignons obtained federal trademark registration for its mark in 1948 in connection with "photographic apparatus and accessories namely, lenses, filters, sunshades, cable releases, self-timers, tripods, viewers, and film cartridges." This registration was renewed in 1968. A separate federal registration for the mark "Alpa" was granted in 1978 in connection with cameras. A Massachusetts trademark registration for the mark "Alpa" was granted in 1977. From 1953 to 1976, Pignons' Alpa cameras were distributed in the United States by Karl Heitz, Inc. T.A.G Photographic, Inc. became the exclusive distributor of Alpa cameras in 1976.

Polaroid Corporation is an American enterprise that since 1948 has manufactured and sold "instant" cameras, that is, cameras capable of producing a fully developed photograph moments after a picture is taken. In 1972, Polaroid introduced a new type of instant camera, known as the Polaroid SX-70 Land Camera, which could produce a finished picture without the need for peeling or stripping away waste material. The present litigation was triggered by Polaroid's introduction of several new versions of its SX-70 Land Camera in the late summer and fall of 1976. All bore the name "Alpha":

Polaroid SX-70 Land Camera Alpha 1;

Polaroid SX-70 Land Camera Alpha 1 SE;

Polaroid SX-70 Alpha Executive Land Camera;

Polaroid SX-70 Land Camera Alpha Sears Special.

Polaroid advertised and distributed all of these various models except the Polaroid SX-70 Land Camera Alpha Sears Special, which was marketed by Sears, Roebuck and Company. 1

On February 9, 1977, Pignons and T.A.G. filed a four-count complaint in federal district court, 498 F.Supp. 805, stating that use of the mark "Alpha" by Polaroid and Sears infringed upon the trademark "Alpa" in violation of federal and state trademark laws, 15 U.S.C. § 1114(1) and Mass.Gen.Laws Ann. c. 110B, § 11; constituted unfair competition in violation of the Lanham Act, 15 U.S.C. § 1125(a); and diluted the distinctive quality of the mark "Alpa" in violation of Mass.Gen.Laws Ann. c. 110B, § 12. The complaint sought injunctive relief and damages. Polaroid and Sears answered on April 6, 1977, denying any wrongful conduct, and discovery began. (We will hereafter refer to the parties collectively as Pignons and Polaroid.)

Approximately three years later, on March 26, 1980, Pignons requested leave to file a supplemental complaint which, for the most part, updated and expanded upon allegations in the original complaint. One of the four counts in the supplemental complaint added a new claim of federal trademark infringement based upon the federal registration Pignons had obtained in 1978 for use of the mark "Alpa" in connection with cameras. Another count added to the unfair competition claim in the original complaint new allegations that in its advertisements Polaroid had manipulated the color of photographs taken with SX-70 cameras so as to deceive consumers about the quality of pictures obtainable with Polaroid instant cameras.

On August 12, 1980, before the court had ruled on Pignons' request for leave to file its supplemental complaint, Polaroid moved for summary judgment. Ten days later the parties submitted various pretrial documents, among them a stipulation of facts, a statement of issues, and a list of witnesses and exhibits. At the same time, in connection with the unfair competition claim, Pignons asked that Polaroid be compelled to answer certain interrogatories and requests for admissions relating to SX-70 film and the quality of its color reproduction.

On August 29, Pignons was given leave to file its supplemental complaint. The same day, it filed a memorandum opposing Polaroid's motion for summary judgment and requesting that summary judgment be granted in its favor. It further asked that Polaroid be compelled to answer the supplemental complaint.

Oral argument on the summary judgment motions took place on September 8, and the district court issued its memorandum and order on October 7. (The court did not rule on Pignons' request that Polaroid be compelled to answer the supplemental complaint and respond to related interrogatories.) In a lengthy discussion, the district court disposed of Pignons' federal and state trademark infringement claims, as well as its claim of unfair competition, on a single ground. Based on the parties' submissions the court saw no possibility that Pignons could prove an element essential to each of those claims that Polaroid's use of "Alpha" was "likely to confuse consumers about either the source of their goods, or a possible relationship between their respective business concerns." As for Pignons' claim of trademark dilution in violation of Massachusetts law, the court ruled that Pignons' mark "Alpa" was insufficiently distinctive to warrant relief. Summary judgment was granted in favor of the defendants on all counts. Pignons' original and supplemental complaints were dismissed.

Pignons now appeals, arguing that summary judgment was improper because its pleadings, depositions and affidavits raised genuine issues of material fact for purposes of Fed.R.Civ.P. 56. It further contends that the district court misinterpreted the required elements of an unfair competition claim under section 43(a) of the Lanham Act, 11 U.S.C. § 1125(a).

II. The Standard for Summary Judgment

While summary disposition is usually inappropriate in complex infringement and unfair competition cases, it is not unheard of. See, e. g., B & L Sales Associates v. H. Daroff & Sons, Inc., 421 F.2d 352 (2d Cir.), cert. denied, 398 U.S. 952, 90 S.Ct. 1873, 26 L.Ed.2d 292 (1970); Beef/Eater Restaurants, Inc. v. James Burroughs Ltd., 398 F.2d 637 (5th Cir. 1968); Westward Coach Manufacturing Co. v. Ford Motor Co., 388 F.2d 627 (7th Cir.), cert. denied, 392 U.S. 927, 88 S.Ct. 2286, 20 L.Ed.2d 1386 (1968). The question is whether summary judgment was appropriate here. Summary judgment is proper only "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). A factual dispute is material if it "affects the outcome of the litigation," and genuine if manifested by "substantial" evidence "going beyond the allegations of the complaint." Hahn v. Sargent, 523 F.2d 461, 464 (1st Cir. 1975), cert. denied, 425 U.S. 904, 96 S.Ct. 1495, 47 L.Ed.2d 54 (1976). In passing on a summary judgment motion, the court must view the record and draw inferences most favorably to the opposing party. Hahn, 523 F.2d at 464.

III. State and Federal Trademark Infringement

Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), provides that,

(1) Any person who shall, without the consent of the registrant

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive;

shall be liable in a civil action by the registrant for the remedies hereinafter provided.

In substantially similar form, Mass.Gen.Laws Ann. c. 110B, § 11 declares that,

any person who shall:

(a) use, without consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of a mark registered under this chapter in connection with the sale, offering for sale, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services;

shall be liable to a civil action by the owner of such registered mark for any or all of the remedies provided in section thirteen, except that under this section the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such mark is intended to be used to cause confusion or mistake or to deceive.

Likelihood of confusion is thus an essential element of a claim of trademark infringement whether asserted under Massachusetts or federal law, see Coca-Cola Co. v. Snow Crest Beverages, Inc., 162 F.2d 280, 283 (1st Cir.), cert. denied, 332 U.S. 809, 68 S.Ct. 110, 92 L.Ed. 386 (1947); 3 R. Callman, The Law of Unfair Competition, Trademarks and Monopolies § 80 (3d ed. 1969). Viewing the pleadings, depositions, answers to interrogatories, admissions and...

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