Remco Industries, Inc. v. Toyomenka, Inc.
| Decision Date | 26 April 1968 |
| Docket Number | No. 68 Civ. 1157.,68 Civ. 1157. |
| Citation | 286 F. Supp. 948 |
| Parties | REMCO INDUSTRIES, INC., Plaintiff, v. TOYOMENKA, INC. and Bert Gorman, Inc., d/b/a Bert Gorman & Associates, Defendants. |
| Court | U.S. District Court — Southern District of New York |
COPYRIGHT MATERIAL OMITTED
Alvin D. Lurie, New York City, for plaintiff; Robertson, Bryan, Parmelee & Johnson, Stamford, Conn., of counsel.
Guggenheimer & Untermyer, New York City, for defendant Toyomenka, Inc.; Harold Baer, Jr., William J. Cohen, Howard B. Weinreich, Joel H. Kagan, New York City, of counsel.
The plaintiff, Remco Industries, Inc. (Remco), sues defendants Toyomenka, Inc. (Toyomenka) and Bert Gorman, Inc. (Gorman), for unfair competition and violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The complaint seeks a permanent injunction and damages. Jurisdiction is based upon diversity of citizenship, 28 U.S.C. § 1332, and the trademark laws. 28 U.S.C. § 1338 and 15 U.S.C. § 1121.
Plaintiff has moved for a preliminary injunction enjoining the defendants, during the pendency of the action, from engaging in continued acts of unfair competition and trademark infringement.
The plaintiff, a New York corporation, manufactures and sells an extensive line of children's toys throughout the United States. The present action is concerned with one of the plaintiff's products—a small battery powered toy vehicle, sold under the trademarks "Remco" and "Mighty Mike." Also involved are three separately sold accessories for attachment to the basic vehicle. These products have been on the market since 1966.
The plaintiff's toy, called the "Mighty Mike" is a battery powered jeep, measuring about 5¼" in length. The body of the jeep is white; the underpart black. Since there is no hood, the silvered imitation motor is plainly visible. In front of the motor there is a black grill to which are attached silvered headlights. Two silvered exhaust pipes, one on each side, extend back from the motor, toward the rear of the jeep. A white windshield frame separates the motor and the single seat cab. There are no doors on the side and no roof. Instead there are "U" shaped openings on each side of the seat. The seat itself, mounted on the white body of the jeep, is colored black and is ribbed, to simulate upholstery. An immobile white steering wheel is attached to the white dashboard. The rear portion of the jeep is box-like. On top of the rear portion there is a black spare tire. The jeep has four black tires with white rims; these are half tires, hollow on the side closest to the body. On the outside there is a small black knob or switch which is turned to set the jeep in motion.
A prominent red label is affixed to the outside of plaintiff's jeep, reading, in white and yellow lettering, "MOTORIZED MIGHTY MIKE." The lettering is in sizeable block capitals and plainly visible. In addition, the word "Remco" is stamped on the black front or grill. The words "Remco Ind. Inc." are also stamped on the underside.
In terms of function, the jeep runs on batteries and moves only in a forward direction. On the underside there is a metal chain which runs the front wheels. The vehicle is able to climb uphill and over objects.
The basic vehicle is sold as a distinct unit. The plaintiff, however, manufactures and sells separately various accessories for the jeep. Only three of the six available accessories are of any concern here—the cement mixer, the tow truck and the trailer. The cement mixer attaches to the jeep. Its drum is predominantly white, except for a bright red encircling band; the base is also bright red. The tow truck also attaches to the back of the jeep. The base is bright blue. Most of the towing mechanism is white except for a blue roller which may be hand-turned by means of a silvered cranking mechanism. Finally, a bright red trailer with prominent white side stakes is also available.
Plaintiff's product is packaged in a rectangular cardboard box. The background is white. There are a number of illustrations of the accessories on the package, and a good deal of writing. The words "MIGHTY MIKE" and "REMCO" are prominent and each legend appears four times.
Defendants' products are sold as three complete units—a climbing jeep trailer, a climbing wrecker jeep and a climbing cement mixer. Each unit consists of a battery powered vehicle, which is the same in all units, plus one of the accessories. These accessories are removable but not separately available.
The defendants' basic jeep is about two inches longer, about one inch higher and some 40% larger than the plaintiff's. Like the plaintiff's, it is basically white in color. In the front there is a silvered exposed motor that is considerably larger than the motor on the "Mighty Mike". The details of the motor are different. There is a red fan in front of the motor which is not found on the Remco jeep. The front grill is white; plaintiff's grill is black. The basic shape of the cab is the same. Defendants' jeep has a high white windshield, and has no doors or roof. The back portion of defendants' jeep, like plaintiff's, is solid white and entirely closed.
The details of the two products differ markedly. Defendants' vehicle has no spare tire or headlights and the tires are full ones, in contrast to the half tires on plaintiff's vehicle; they have silvered rather than white rims. The seats in defendants' vehicle are red rather than black. Moreover, there are two distinct seats in the front, separated by operating levers. The steering wheel is black on a red dashboard. It is considerably larger than the steering wheel on the Remco jeep and is movable.
The color schemes of the three attachments to the defendants' vehicle are basically the same as those for the "Mighty Mike." The climbing wrecker mechanism, like plaintiff's tow truck attachment, is blue and white. However, it is larger and more detailed than the plaintiff's and operates differently. The cement mixer has the same red and white color combination as the Remco mixer. The defendants' trailer is completely red; unlike plaintiff's it has no side stakes.1
Although both vehicles run on batteries and are able to climb, their operations are quite dissimilar in other respects. Plaintiff's jeep runs only at one speed and in one direction. Defendants' vehicle can run both forward and in reverse at two speeds. Speed and direction are regulated by two levers between the front seats. The drive mechanism is visible on plaintiff's jeep, while the mechanism on defendants' is enclosed.
The labelling of defendants' product is not similar to that on the Remco vehicle. On the underside of the defendants' vehicle, the words "Bandai" and "Made in Japan" are embossed, as is a Bandai symbol.
The defendants' products are packaged in rectangular boxes which are different in shape and size from plaintiff's packaging. The background is red rather than white. The lettering is mainly in white, with some black. The Bandai symbol appears four times on the package and the word "Bandai" five times. In addition the package says "Made in Japan" four times. These descriptions of source are plainly visible. The descriptive names of the defendants' toys appear several times on each package. For example, on one carton the words "CLIMBING CEMENT MIXER" appear four times in prominent lettering.
Thus there are marked similarities between the two toys. But there are also marked differences in size, detail, mechanism, packaging and markings, among other things.
The gist of the plaintiff's claim of unfair competition is that the defendants have simulated the allegedly unique and non-functional design characteristics as well as the color, size and shape relationships of the Remco jeep and accessories, and that these features have acquired secondary meaning. It is also claimed that the defendants have palmed off their toy as that of the plaintiff.
The defendants deny that the plaintiff's product has acquired secondary meaning or that it has palmed off its product as that of plaintiff. It claims that some of the features incorporated in plaintiff's products appeared earlier in defendants' toys, and that in any event the plaintiff has failed to demonstrate that it is entitled to a preliminary injunction.
The first of plaintiff's claims for unfair competition is grounded upon the doctrine of secondary meaning. Basically, plaintiff alleges that the defendants have simulated unique, non-functional features of plaintiff's product, and that this product simulation should be enjoined because these features of the "Mighty Mike" jeep and its accessories have acquired secondary meaning.
It is clear that the toys are not identical. While the colors of the accessories are basically the same, there are differences in size, functioning, design and detail. Moreover, the plaintiff's vehicle itself imitates the real jeep which has been well-known in the automotive trade for many years. As to the exposed simulated motor on the toy, on which plaintiff lays much stress, it is not at all plain on the record before me where that idea originated.
Thus the issue of copying is by no means clearly weighted in plaintiff's favor. Assuming, however, that defendants' products would have the same visual impact on a consumer, it is clear that the mere manufacture and sale of an exact copy of an unpatented design does not itself constitute unfair competition. See Sears Roebuck & Co. v. Stiffel, 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964); Compco Corp. v. Day-Brite Lighting, 376 U.S. 234, 84 S.Ct. 779, 11 L.Ed.2d 669 (1964). See also Feathercombs, Inc. v. Solo Prods. Corp., 306 F.2d 251, 257 (2d Cir.), cert. denied, 371 U.S. 910, 83 S.Ct. 253, 9 L.Ed.2d 170 (1962); Hygienic Specialties Co. v. H. G. Salzman, Inc., 302 F.2d 614, 619 (2d Cir. 1962); Pezon et Michel v. Ernest R. Hewin Associates, Inc., 270 F.Supp. 423 (S.D.N.Y.1967); Crossbow, Inc. v. DanDee Imports, Inc., ...
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