Rolls-Royce Motors Ltd. v. A & A FIBERGLASS, INC.

• Decision Date: 11 March 1977
• Docket Number: Civ. A. No. C-75-2013-A.
• Citation: 428 F. Supp. 689
• Parties: ROLLS-ROYCE MOTORS LIMITED et al. v. A & A FIBERGLASS, INCORPORATED.
• Court: U.S. District Court — Northern District of Georgia

428 F. Supp. 689

ROLLS-ROYCE MOTORS LIMITED et al. v. A & A FIBERGLASS, INCORPORATED.

Civ. A. No. C-75-2013-A.

United States District Court, N. D. Georgia, Atlanta Division.

Order October 29, 1976.

Order of Final Judgment February 28, 1977.

As Amended March 11, 1977.

Miles J. Alexander, James H. Coil, Jr., Kilpatrick, Cody, Rogers, McClatchey & Regenstein, Atlanta, Ga., for Rolls-Royce Motors Ltd. et al.; Ronald J. Lehrman, Weiss, Dawid, Fross & Lehrman, Donald H. Rivkin, Busby, Rivkin, Sherman, Levy, and Rehm, New York City, of counsel.

George M. Hopkins, Newton, Hopkins & Ormsby, Atlanta, Ga., for A & A Fiberglass, Inc.

ORDER

HENDERSON, District Judge.

This is an action for injunctive relief and damages brought by Rolls-Royce Motors, Ltd., and its wholly-owned American subsidiary¹ (hereinafter referred to collectively as "Rolls-Royce") against A & A Fiberglass, Inc. (hereinafter referred to as "A & A"). Presently pending are the parties' motions for summary judgment.²

This case concerns the manufacture and sale by A & A of automobile customizing kits designed for the Volkswagen Beetle model. Included in this "Elegant Beetle" kit are parts for radiator grill modification and hood ornamentation which the plaintiffs contend are copies of similar parts installed on Rolls-Royce automobiles. The complaint is in six counts and seeks to recover for federal, state and common law trademark infringement and unfair competition, injury to business reputation, deceptive trade practices and trademark dilution. The defendant filed a counterclaim for cancellation of the plaintiffs' state and federal trademarks, unfair competition and antitrust violations.

Rolls-Royce is a British corporation which has manufactured Rolls-Royce and Bentley automobiles since 1906. The current Rolls-Royce models are base-priced between $38,000.00 and $90,000.00. Sales volume since 1959 has reached $150,000,000.00 and advertising in the period 1965-1975 exceeded $5,000,000.00.

In 1911, Rolls-Royce introduced a front hood ornamentation in the form of a statuette called "The Spirit of Ecstasy" or, more commonly, the "Flying Lady." It has been used continuously since that time. In the early years of its production the Flying Lady could be turned to unscrew the radiator cap but is now attached directly to the grill and serves no engineering function. Federal trademark registration was first obtained in 1918 and, despite a ten-year lapse in such protection, trademark recognition was again procured in 1968.

Another distinctive feature of the Rolls-Royce automobile is its front grill, squareframed and vertically shuttered and called the "Classic Grill." It was first introduced in 1906 and from 1926 to 1940 the louvers were adjustable, either manually or mechanically, to regulate the flow of air to the radiator. Beginning in 1946 these shutters were fixed at a predetermined angle.³ The grill on the current Rolls-Royce models is completely dysfunctional. A United States design patent was obtained for the Classic Grill in 1914 but application for federal trademark registration was denied in 1975. Georgia trademark registration for both the grill and the Flying Lady was successfully procured in 1975.

The defendant is a Georgia corporation engaged in the business of selling plastic and fiberglass products, including specialty automobile parts. In March of 1972, A & A began selling and advertising its so-called "Elegant Beetle" package, an assortment of auto parts designed to change the appearance of Volkswagen automobiles. Advertising since 1972 has run into the thousands of dollars and has stressed the likeness of the Volkswagen, as modified, to the Rolls-Royce.

The kit itself includes both a simulated grill and hood ornament bearing striking resemblance, excepting minor details⁴ and the difference in fabrication,⁵ to the Classic Grill and Flying Lady. The hood ornaments are not manufactured by the defendant but are supplied to A & A by an independent concern.

A & A is not the only firm marketing automotive style-change kits. Although some have voluntarily ceased manufacturing the duplicative Rolls-Royce parts, there is no reason to believe that A & A is the sole remaining supplier.

Rolls-Royce first became aware of the modification kits in mid-1972. The defendant, as well as other purported infringers, was notified of Rolls-Royce' objections to the continued sale of the kits in January, 1973. The letter sent to the defendant made no explicit mention of Rolls-Royce' claim of trademark infringement. A & A failed to reply and the plaintiffs did not attempt further direct contact until August, 1975, when they sent a second letter demanding cessation of the defendant's activities.

In late 1972 or early 1973 Rolls-Royce sought to obtain the cooperation of Volkswagen of America in discouraging continued infringements by kit manufacturers. In response, Volkswagen notified its distributors that their purchase of the kits was inconsistent with company policy and potentially damaging to its reputation. No direct contact between Rolls-Royce and individual purchasers was made.

Although it is apparent that A & A has refused Rolls-Royce' demand for voluntary termination of its "Elegant Beetle" sales, it is not certain that the defendant has continued its marketing activities in this respect during the pendency of this litigation.

The defendant seeks to avoid liability for trademark infringement at the outset by contending that neither the Classic Grill nor the Flying Lady is capable of trademark recognition. It argues that, to the extent that these parts are functional, protection can be found only in the patent laws and that, to the extent that they are nonfunctional, copyright is the only safeguard. Under this analysis, however, no three-dimensional article, whether utilitarian or not, could ever be the subject of a trademark.⁶

Objects which serve some practical purpose are not necessarily precluded from identification as trademarks unless they are primarily utilitarian. See In re World's Finest Chocolate, Inc., 474 F.2d 1012 (Cust. & Pat.App.1973); In re Deister Concentrator Co., Inc., 289 F.2d 496, 48 C.C.P.A. 952, (1961). The Classic Grill at one time had adjustable louvers and the Flying Lady, similarly, could be used to remove the radiator cap. Neither serves such function at the present time. The plaintiffs submitted proof that, not only does the Classic Grill have no mechanical purpose, but that both it and the Flying Lady could be eliminated from the motor car with no effect on its operation.⁷

On the other hand, the defendant maintains that if these two parts are not functional, they are merely ornamental and could be covered only by copyright or design patent. It relies heavily on the landmark case of Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964), and Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 84 S.Ct. 779, 11 L.Ed.2d 669 (1964). See also Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 59 S.Ct. 109, 83 L.Ed. 73 (1938). These cases simply held that articles unprotected by federal copyright or patent laws could not find refuge in state or common law unfair competition principles.

That Sears and Compco did not purport to redefine the permissible scope of trademark protection, however, was made clear in Boston Professional Hockey Ass'n, Inc. v. Dallas Cap & Emblem Mfg. Inc., 510 F.2d 1004 (5th Cir. 1975), where the court held that copying and sale of hockey team symbols infringed the team's trademarks.

The argument that the symbols could be protected only if copyrighted likewise misses the thrust of trademark protection. A trademark is a property right which is acquired by use. . . . It differs substantially from a copyright, in both its legal genesis and its scope of federal protection. . . . An individual selects a word or design that might otherwise be in the public domain to represent his business or product. If that word or design comes to symbolize his product or business in the public mind, the individual acquires a property right in the mark. The acquisition of such a right through use represents the passage of a word or design out of the public domain into the protective ambits of trademark law. Under the provisions of the trademark statute, the owner of a mark acquires a protectable property interest in his mark through registration and use.

Id. at 1013-14. See Truck Equipment Serv. Co. v. Fruehauf Corp., 536 F.2d 1210 (8th Cir. 1976).

There is no doubt that the plaintiffs' Classic Grill and Flying Lady are attractive objects. As such, they may be deserving of copyright or design patent protection. Their entitlement to trademark recognition, however, depends not on their eye appeal but on their characteristic of identifying the manufacturer of Rolls-Royce motor cars.

The underlying purpose and the essence of patent rights are separate and distinct from those appertaining to trademarks. No right accruing from the one is dependent upon or conditioned by any right concomitant to the other. The longevity of the exclusivity of one is limited by law while the other may be extended in perpetuity.

In re Mogen David Wine Corp., 328 F.2d 925, 929, 51 C.C.P.A. 1260, (1964).⁸ See In re Honeywell, Inc., 497 F.2d 1344 (Cust. & Pat.App. 1974). See also Pachmayr Gun Works, Inc. v. Olin Mathieson Chemical Corp., 502 F.2d 802 (9th Cir. 1974).

It is tenuous at best to contend that the grill and hood statuette are the motivating factors in the purchase of a $50,000.00 automobile. They are valuable because, absent the various attempts to copy by the defendant and others, no other automobile in the world that carries these symbols is a Rolls-Royce.

Rolls-Royce does not contend that it should be permitted to have a trademark on its entire car or grills and ornaments as generic objects. But if these articles have the characteristic of secondary meaning, that is, identification of...