PIGNONS SA de MECANIQUE, ETC. v. Polaroid Corp.

• Decision Date: 24 November 1980
• Docket Number: Civ. A. No. 77-392-MA.
• Citation: 498 F. Supp. 805
• Parties: PIGNONS S. A. de MECANIQUE de PRECISION and T.A.G. Photographic, Inc., Plaintiffs, v. POLAROID CORPORATION and Sears, Roebuck and Co., Defendants.
• Court: U.S. District Court — District of Massachusetts

498 F. Supp. 805

PIGNONS S. A. de MECANIQUE de PRECISION and T.A.G. Photographic, Inc., Plaintiffs, v. POLAROID CORPORATION and Sears, Roebuck and Co., Defendants.

Civ. A. No. 77-392-MA.

United States District Court, D. Massachusetts.

October 7, 1980.

As Amended November 24, 1980.

COPYRIGHT MATERIAL OMITTED

Richard J. Birch, Thompson, Birch, Gauthier & Samuels, Boston, Mass., for plaintiffs.

Laurence S. Fordham, William J. Cheeseman, Foley, Hoag & Elliot, Boston, Mass., for defendants; William K. Kerr, Herbert F. Schwartz, Patricia A. Martone, Fish & Neave, New York City, of counsel.

MEMORANDUM AND ORDER

MAZZONE, District Judge.

This is an action for injunctive relief and damages based on alleged trademark infringement, unfair competition and trademark dilution. The plaintiffs have sold cameras in the United States under the registered trademark "ALPA." This complaint is based on the defendants' use of the term "Alpha" in connection with the sale of the Polaroid model SX-70 instant camera. The Complaint and Supplemental Complaint are lengthy, replete with a mass of details, exhibits and recitations of an evidentiary nature.¹ Counts One and Five allege federal trademark infringement in violation of section 32(1)(a) of the Lanham Act, 15 U.S.C. § 1114(1)(a). Counts Two and Seven allege federal unfair competition in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Counts Three and Eight allege state trademark infringement, in violation of M.G.L.A. c. 110B, § 11. Finally, Counts Four and Six allege violations of the Massachusetts "anti-dilution" statute, M.G.L.A. c. 110B, § 12.²

Jurisdiction over the federal claims is based on 15 U.S.C. § 1121 and 28 U.S.C. §§ 1338(a) and (b). Jurisdiction over the state claims is based on diversity, pursuant to 28 U.S.C. § 1332(a). Venue in the District of Massachusetts is proper, pursuant to 28 U.S.C. §§ 1391(b) and (c).

Plaintiff Pignons S.A. de Mecanique de Precision (Pignons) is a Swiss corporation with considerable expertise in the manufacture and assembly of high-tolerance, precision mechanical components for the Swiss watch industry. Plaintiff T.A.G. Photographic, Inc. (T.A.G.), Pignons' exclusive distributor in the United States, is a New York Corporation having a principal place of business in Westbury, New York.

Defendant Polaroid Corporation (Polaroid), known internationally as an innovator in the field of instant photography, is a Delaware corporation, with a principal place of business in Cambridge, Massachusetts. Defendant Sears, Roebuck and Co., the largest mass-merchandise retailer in the United States, is a New York corporation with a principal place of business in Natick, Massachusetts.

In 1948, Pignons' application for federal trademark registration of the mark "ALPA" in connection with the manufacture and sale of photographic apparatus and accessories was approved. The following year, Pignons introduced a 35 mm single lens reflex camera in the United States market, and a corresponding line of lenses and photographic equipment, all bearing the trade name ALPA.³

Pignons alleges that sales of ALPA cameras and equipment in the United States have been continuous since 1949. The record indicates that sales fluctuated widely during the period 1965 to 1976, reached a peak of $721,221.69⁴ in 1978, and diminished thereafter. Since June, 1978, Pignons has not shipped any ALPA cameras to the United States, although documents recently submitted by plaintiffs' counsel indicate Pignons intends to resume marketing activity here in the near future.

"T.A.G." is an abbreviation for The Alpa Group. It has been Pignons' exclusive distributor of ALPA cameras and accessories in the United States since 1976. From 1953 to 1976, ALPA cameras were distributed in the United States by Karl Heitz, Inc. At all times relevant to the instant controversy, ALPA cameras and equipment have been sold to the public exclusively through select camera specialty stores. On November 21, 1978, T.A.G. filed a Chapter XI petition in the District Court for the Eastern District of New York, and was adjudicated a bankrupt on June 27, 1979. Plaintiffs make no claim that defendants' marketing activities were a proximate cause of the bankruptcy.⁵

On or about September, 1976, Polaroid began advertising and selling in the United States a new model of its popular SX-70 instant camera, known as the "Polaroid SX-70 Land Alpha." Polaroid claims it chose the word Alpha to designate the new model because of its relationship to certain electrical circuitry developed for use in the SX-70 camera. The features of the SX-70 Alpha are described more fully infra.

Polaroid's SX-70 Alpha camera was advertised and sold nationally through department stores, camera shops, drug and discount stores. Defendant Sears advertised and sold a special version of the camera designated "Polaroid SX-70 Land Camera Alpha Sears."⁶ Upon information and belief, a Polaroid representative has stated that the defendant no longer manufactures Alpha cameras for sale in the United States, and has only about 12,000 such cameras in its inventory. The defendants have offered no evidence to dispute this claim.

The gravamen of plaintiffs' complaint is that, given the nature of Pignons' and Polaroid's products, i. e., cameras, defendants' use of the term Alpha is likely to cause and has confused among consumers between the companies and/or their products.⁷ Pignons also claims defendants' use of the term Alpha has diluted the distinctive quality of its ALPA mark, in violation of state law. As a result of defendants' activities, plaintiffs claim they have suffered, and continue to suffer, substantial injury to their business reputation and good will.

After more than three years of pleading and discovery, the defendants now move for summary judgment, claiming, inter alia: plaintiffs have failed to raise a genuine issue as to the likelihood that customers will be confused by Polaroid's use of the term Alpha as a model designation; plaintiffs have no enforceable right to use the term ALPA in the United States; and plaintiffs have no enforceable right to use the term Alpha in the United States. The plaintiffs oppose this motion on the grounds that (1) if material facts are not in dispute, then they are entitled to summary judgment and (2) if material facts are in dispute, then the defendants are not entitled to summary judgment. Argument was heard by this Court on September 6, 1980. We address first the appropriateness of resolving this dispute by way of summary judgment.

I. APPROPRIATENESS OF SUMMARY JUDGMENT

Rule 56(c) of the Fed.R.Civ.P. provides, in pertinent part, that summary judgment shall be granted:

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.

This Circuit has indicated that unless there is a genuine dispute of material fact manifested by "substantial" evidence, summary judgment should be granted. Hahn v. Sargent, 523 F.2d 461 (1st Cir. 1975), cert. denied 425 U.S. 904, 96 S.Ct. 1495, 47 L.Ed.2d 54 (1976).

Most situations in which trademark rights are asserted present a complicated array of factual issues requiring substantial development. As a result, the federal courts have developed an informal but well-recognized policy against summary disposition of complex infringement and unfair competition cases. See Albert Dickinson Co. v. Mellos Peanut Co., 179 F.2d 265, 270 (7th Cir. 1950); National Color Laboratories, Inc. v. Phillip Foto Co., 273 F.Supp. 1002, 1004 (S.D.N.Y.1967).

On the other hand, the Court may determine that the facts have been fully developed through pleadings, affidavits, documents, and exhibits and that the legal issues are squarely presented. Where it appears that a trial is not likely to develop additional evidence helpful to either side, summary judgment may well be an appropriate method of disposing of a case, even as to issues of distinctiveness and likelihood of confusion. United States Jaycees v. San Francisco Junior Chamber of Commerce, 354 F.Supp. 61 (E.D.Cal.1973); James Burrough Ltd. v. Beef/Eater Restaurants, Inc., 272 F.Supp. 489 (N.D.Ga.1967), aff'd 398 F.2d 637 (5th Cir. 1968).

In this case, the legal issues are apparent, and there is an extensive record consisting of pleadings, depositions, affidavits, exhibits, answers to interrogatories, stipulations and memoranda. We are unaware of any additional factual development that remains to be undertaken, which might alter the present circumstances. Therefore, we must decide whether, under any reasonable construction of the facts and under any acceptable theory of law, the plaintiffs could possibly prevail. United States Jaycees, supra. All doubts must be resolved in favor of the party opposing the motion, Hahn v. Sargent, supra; and the record must be viewed in the light most favorable to the plaintiff. See, e. g., Poller v. Columbia Broadcasting System, 368 U.S. 464, 473, 82 S.Ct. 486, 491, 7 L.Ed.2d 458 (1962). We turn then to the heart of the instant case— the issue of likely confusion.

II. LIKELIHOOD OF CONFUSION

In order to sustain a claim of trademark infringement under federal as well as Massachusetts law, the plaintiff is required to demonstrate that the defendant's use of the same or similar mark is likely to cause confusion among potential consumers as to the source of its product. 15 U.S.C. § 1114(1)(a); M.G.L.A. c. 110B, § 11; Fisher Stoves, Inc. v. All-Nighter Stove Works, Inc., 626 F.2d 193, 194 (1st Cir. 1980); Coca-Cola Co. v. Snow Crest Beverages, 162 F.2d 280, 283 (1st Cir.), cert. denied 332 U.S. 809, 68 S.Ct. 110, 92 L.Ed. 386 (1947). Likelihood of confusion is also an essential element of an unfair competition claim based on section 43(a) of the Lanham Act, 15 U.S.C. § 1125. Quabaug Rubber Co. v. Fabiano...