Western Chemical Pumps, Inc. v. Superior Mfg.

• Decision Date: 12 December 1997
• Docket Number: Civil Action No. 96-2305-EEO.
• Citation: 989 F.Supp. 1112
• Parties: WESTERN CHEMICAL PUMPS, INC., Plaintiff, v. SUPERIOR MANUFACTURING, INC., an Oklahoma Corporation, and Alan H. Hulva, an individual, Defendants.
• Court: U.S. District Court — District of Kansas

989 F.Supp. 1112

WESTERN CHEMICAL PUMPS, INC., Plaintiff, v. SUPERIOR MANUFACTURING, INC., an Oklahoma Corporation, and Alan H. Hulva, an individual, Defendants.

Civil Action No. 96-2305-EEO.

United States District Court, D. Kansas.

December 12, 1997.

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Michael Yakimo, Jr., D.A.N. Chase, Chase & Yakimo, Overland Park, KS, Ronald S. Reuter, Perry & Renter, L.C., Overland Park, KS, for Plaintiff.

Bernard F. Weinand, Blackwood & Langworthy, L.C., Kansas City, MO, Bart A. Boren, Williams, Luttrell & Boren, Oklahoma City, OK, for Defendant.

MEMORANDUM AND ORDER

EARL E. O'CONNOR, Senior District Judge.

This is a trade dress infringement, commercial misrepresentation, and unfair competition action. Plaintiff Western Chemical Pumps, Inc. ("Western") contends that defendants Superior Manufacturing, Inc. ("Superior") and Alan H. Hulva infringed the trade dress of two of Western's chemical injection pumps in violation of the Lanham Act, particularly 15 U.S.C. § 1125(a). Western also claims that defendants misrepresented the nature of Superior's chemical injection pumps in its advertisements in violation of the Lanham Act. Finally, Western claims that defendants' actions constitute unfair competition and misappropriation under Kansas law.

On August 27 and 28, 1997, this case came on for trial before the court. After carefully considering the arguments of counsel, the testimony at trial, the exhibits, and the briefing submitted by the parties, the court makes the following findings of fact and conclusions of law as required by rule 52(a) of the Federal Rules of Civil Procedure.

Findings of Fact

1. Plaintiff Western is a Missouri corporation with its plant facility in Olathe, Kansas.

2. Defendant Superior is an Oklahoma corporation with its principal office in Oklahoma City, Oklahoma.

3. Defendant Alan H. Hulva resides in Edmond, Oklahoma, and is president of Superior. Mr. Hulva owns 100% of the capital stock of Superior.

4. Western filed suit for trade dress infringement and commercial misrepresentation under the Lanham Act, 15 U.S.C. § 1051 et seq., particularly 15 U.S.C. § 1125(a), copyright infringement pursuant to 17 U.S.C. § 1, as well as for unfair competition and misappropriation under Kansas common law.

5. Western manufactures and sells chemical injection pumps, which pump process treatment chemicals either into oil well down holes or into flow lines. The pumps are most frequently found at gas wells or oil wells and at oil tank collection batteries, along pipelines and refineries.

6. Western currently sells, among other products, two types of chemical injection pumps. The model DFF pump is a gas operated pump which is driven by natural gas under pressure available at the well head or in a pipeline.

7. The other Western pump at issue is the model LD, which is a chemical injection pump that is attached to the walking beam of an oil pumping rig. The movement of the walking beam causes the pump to inject chemicals into the oil well hole or a flow line.

8. The model DFF originated with a model DF pump designed by Mr. Orla Watson (now deceased). The DF pump was manufactured and sold by Mr. Watson's company Western Machine Company, beginning in 1948.

9. The model DFF in its current configuration has been manufactured and sold since 1969.

10. The model LD also was designed and developed by Mr. Watson and, beginning in 1962, was manufactured and sold by Western Machine Company.

11. On November 26, 1971, Mr. Watson sold his chemical pump business to Western (Western Chemical Pumps, Inc.), a Missouri corporation of which Mr. and Mrs. Leslie L. Simmons were the sole shareholders.

12. The contract for the purchase provided that Western would "acquire furniture, fixtures and patents, goodwill and the right to continue operation of the business," and it was Mr. Simmons' understanding that he was acquiring the pumps, the designs, and the goodwill of the business.

13. In December 1979, Mr. Simmons sold all of the outstanding stock in Western to Thomas J. Seitz, the current owner of all such stock of Western.

14. Western has continued the operation of the business, including the manufacture and sale of the model DFF pump and the model LD pump, from 1972 until the present.

15. Western is the successor to Mr. Orla Watson and Western Machine Company with respect to the manufacture and sale of the model DFF and model LD chemical pumps and as such is the owner of the design and configuration of the model DFF and model LD chemical pumps.

16. Vega Products ("Vega"), a division of Powerseal, manufactured and sold a gas chemical injection pump similar in appearance to Western's DFF pump for three years in the mid to late 1980s. Powerseal is a manufacturer with a full line of oilfield products marketed nationwide.

17. Tri-Chem, from 1986 until 1994, manufactured and sold a beam pump similar in appearance to Western's LD beam pump.

18. Western did not take any action against Vega or Tri-Chem for their use of chemical pumps similar in design to the DFF and LD pumps.

19. Superior's President, Mr. Hulva, prior to deciding on the type of pump to manufacture, studied the market, several pumps, and manufacturers' catalogs.

20. In mid 1995, Superior reverse engineered a gas chemical injection pump by tearing down a Western DFF gas chemical injection pump and a gas chemical injection pump manufactured by Vega. Superior called its pump an "AHH2 pump."

21. Superior also reverse engineered a beam pump by tearing down a Western LD beam pump and a Tri-Chem beam pump. Superior called its pump a "JP pump."

22. The channels of trade and the potential customers for Superior and Western pumps are identical. Customers include primarily oil and gas companies, pipeline companies, oil field supply stores, and chemical companies.

23. Potential customers of the Superior and Western pumps normally do not make a side-by-side comparison of the pumps.

24. Potential and actual purchasers of Western's and Superior's chemical pumps are sophisticated in the oil and gas industry, know oil and gas equipment, and generally have worked in the industry in various capacities.

25. Purchasers of chemical pumps generally understand that many manufacturers make similar looking products in the oil and gas industry.

26. In 1996, the list price of the Western DFF pump was $950 and the list price of the Western LD pump was $345.

27. In 1996, Superior sold its AHH2 pump for $684 and its JP pump for $248.

28. Based on the consumers' experience in the oil and gas industry, the price of the pumps, and the purpose of the pumps, consumers generally exercise a high level of care in purchasing chemical injection pumps.

29. Each year, Western distributes approximately 1,000 general catalogs, 900 brochures for the DFF pump, and 1,600 brochures for the LD pump. Western also advertises its pumps in the World Petroleum directory, attends oil shows in connection with the marketing of its pumps, and assists its distributors in conducting seminars for oil companies in connection with its pumps.

30. Superior clearly labeled its pumps with its trade name, which is stamped into the top plate of the pump (side plate of the JP pump), displayed on a silver colored label which is bolted onto the top plate, and displayed on a silver label affixed to its stand. Superior's pump is delivered to the customer in a box on which its trade name is clearly stenciled on two sides. The model number is also stenciled on one side of the box. An operations manual, clearly indicating that it is Superior's, is included with the pump.

31. Western clearly labeled its pumps with its trade name, which is stamped into the top plate of the pump (side plate of the LD pump), displayed on a silver colored label which is bolted onto the top plate, and displayed on a silver label affixed to its stand. Western's pump is delivered to the customer in a box on which its trade name is clearly stenciled. The model number is also stenciled on one side of the box. An operations manual, clearly indicating that it is Western's, is included with the pump.

32. Both Western and Superior have serial number labels on their pumps which denote manufacturer and place of manufacture.

33. Superior's pumps are painted blue, while Western's pumps are painted green. Certain fixtures on the Superior pumps have a brass colored appearance while Western paints their fixtures green.

34. Both Western and Superior sell their pumps through exclusive manufacturing representatives.

35. Customers generally are aware which company is represented by the various distributors and sales representatives.

36. The AHH2 pump and the JP pump are sold exclusively by and through manufacturing representatives and are invoiced by Superior. The invoices clearly indicate to consumers that they are purchasing a Superior pump. The invoices carry Superior's name and Superior's address.

37. Western also utilizes invoices which denote Western as the manufacturer of its pump.

38. Mr. Russell, an end-user of chemical pumps who had purchased both Western and Superior pumps, testified that Superior's representatives attempted to distinguish its pumps from Western's, primarily on the basis of price. Mr. Russell also testified that Superior did not indicate in any way that it was affiliated with Western during its sales presentation.

39. Mr. Russell testified that he did not believe that the Western and Superior pumps were manufactured by the same company "just because the shape of the pump."

40. In developing the AHH2 pump, Superior intended to manufacture a pump which was simple, with an easy manufacturing design.

41. There are only three basic designs available for a gas operated chemical injection pump: vertical diaphragm, horizontal diaphragm, or drum/barrel.

42. The shape of the Western DFF gas operated pump is a matter of function. The DFF pump primarily...