Opposition — General Footwear Co. v. American Footwear Corp.

In THE

Supreme Court of the United States

OotosER TzRM, 1979

No. 79-1224

GenERAL Footrwean Company Limirep,

and

UntversaL City Srupios, Ino.,

Petitioners,

agaist

AmERIOAN Footwear CORPORATION,

Respondent.

a

a

RESPONDENT’S BRIEF IN OPPOSITION TO THE

PETITION FOR WRIT OF CERTIORARI

LawRENCE RosENTHAL

Attorney for Respondent

730 Third Avenue

New York, New York 10017

Of Counsel:

Buium, Kapuan, FrrmpMan, SruBERMAN & BERAN

TABLE OF CONTENTS

Page

Question Presented for Review 2

Corrected Statement of the Case 2

Reasons Why The Writ Should Be Denied 5

l. This Case Was Decided On

Its Facts And Presents No

Important Issues 5

2. There Is No Conflict

Between The Second and

Fifth Circuits 7

Conclusion be

ii

TABLE OF CITATIONS

CASES Page

Boston Professional Hockey Assoc.,

Inc. v. Dallas Cap & Emblem Mfg.,

Inc.

510 F.2d 1004 (5th Cir. 1975),

cert. denied, 423 U.S. 868.... 8,9

D C Comics, Inc. v. Powers,

465 F.Supp. 843 (S.D.N.Y.

Dee Seba Chan ew kes whe wake oe 10,11

Flexitized, Inc. v. National

Flexitized Corp.

335 F.2d 774 (2d Cir. 1964),

cert. denied, 380 U.S.913

(1965) ecccecs TTT eee Te svecse 20

HMH Publishing Co. v. Brincat,

504 F.2d 713 (9th Cir. 1974).. 10

National Lampoon,Inc. v.

American Broadcasting Co.

376 F.Supp. 733 (S.D.N.Y.

1974), aff'd, 497 F.2d

1343 (2d Cir. 1974)

POE CUE SO cee ce taccceveccses LO

iii

CASES Page

United Drug Co. v. Theodore

Rectanus Co.

248 U.S. 90 (1918)......2.200- 6

STATUTES

15 U.S.C. §SLLL4. cc. ccccccee cccee 8

15 U.S.C. §$lL{A5 ..cccccccccccsccese Sil

RULES

Rule 19, Rules of the Supreme

Ee on ies ‘a boa 6 hb 06 re ee eh eee 5,7

In The

Supreme Court of the United States

OCTOBER TERM, 1979

No. 79-1224

GENERAL FOOTWEAR COMPANY, LIMITED,

and

UNIVERSAL CITY STUDIOS,INC.,

Petitioners,

against

AMERICAN FOOTWEAR CORPORATION,

Respondent.

RESPONDENT'S BRIEF IN OPPOSITION TO THE

PETITION FOR WRIT OF CERTIORARI

Respondent American Footwear Corpo-

ration respectfully requests that this

Court deny the petition for writ of cer-

tiorari, seeking review of the Second

Circuit's opinion in this case. That

opinion is now reported at 609 F.2d 655.

QUESTION: PRESENTED FOR REVIEW

Petitioners' "question presented

for review" is not merely partisan. The

"question" is an argument grounded on

"facts" not found in the record and

contrary to the facts as found by the

district court and accepted by the Sec-

ond Circuit. Simply stated, the issue

presented is:

Whether the descriptive non-trade-

mark usage of a dictionary term in a

television series gives the owner of the

series the exclusive right to use that

term as a trademark for footwear, so as

to bring within the ambit of 15 U.S.C.

§1125 the first user of the term as a

trademark for footwear, in the absense

of any predatory trading on the tele-

vision series.

CORRECTED STATEMENT OF THE CASE

Again, in their "statement of the

case", Petitioners have gone beyond

partisanship to misstatement and mis-

characterization. Inasmuch as sufficiently

complete statements of the facts are

contained in both the Second Circuit and

the district court opinions reproduced

in the Appendix to the Petition (herein-

after referred to as "A "), it suffices

here to note the following salient facts

ignored by Petitioners, as found by the

district court and as adopted by the

Second Circuit:

a. The term “bionic” is a diction-

ary term meaning "(t]he science of de-

Signing instruments or systems modeled

after living organisms", and is not a

coined term. (Al4, A30).

b. The term "bionic" was used

descriptively by Universal, and not as a

trademark. (A8-9, A31,33).

c. The licensing program of Uni-

versal's licensing agent, Merchandising,

was a character endorsement program and

not a program to license "bionic" as a

trademark. (A7, A31,33). It should be

noted that the titles of the television

shows were "THE SIX MILLION DOLLAR MAN"

and "THE BIONIC WOMAN". |

d. American was the first entity

to adopt the term "BIONIC" as a trade-

mark for footwear and was the first

entity to seek registration of that term

as a trademark for footwear. American

4

adopted the trademark upon advice of into believing that any sponsor-

, - ship arrangement existed between

counsel and applied for federal registra Universéat's SY Ghows ané Americes's

tion before any charge of infringement | product.

by Universal. (A6-7,17,A27-29,34). (A8 at n.2). The district court was so

e. American always clearly unimpressed with this “evidence" that it

identified itself as the source of its . found it unworthy of mention despite the

boots. (A6, 8 (and n.2), A27-28, 30-31). stress placed thereon in Petitioners'

f. American made no effort of any briefs.

kind to associate its boot with Univer- g- There is no likelihood that the

sal's television series or to exploit public would confuse American's BIONIC

the reputation and good will engendered boot as emanating from or having connect-

by the television series. (A8, 13, A30- ion with any of Petitioners. (A4, A33).

31, 33). The “running girl" poster, the |

sole evidence relied upon by Petitioners | REASONS WHY THE WRIT SHOULD

to the contrary, was dismissed by the | BE DENIED

Second Circuit as follows: ; 1. This Case Was Decided On

Its Facts And Presents No

Important Issues

conceding that American's "Bionic

Boots" were not designed to be

the functional equivalent of this case out of proportion to reality

track shoes, an advertisement

for footwear does lend itself ]

to a running pose. Moreover, this Court. A consideration of the

the similarities between the

poster and the scenes from the

TV shows are not so marked case was decided on its facts and not on

that, when the poster is display-

ed together with numerous and

prominent references to American Petitioners. Petitioners' claims were

sc aiiaceie orubant gerehaect not defeated by reason of the Second

would be likely to be misled Circuit's application of the standard

Petitioners attempt to aggrandize

in an attempt to come within Rule 19 of

Second Circuit opinion reveals that this

the lofty principles enunciated by

for “likelihood of confusion".

Rather, Petitioners’ trademark

Claims were defeated by reason of their

failure to prove that either Universal's

descriptive, non-trademark use of the

dictionary term "bionic" or Merchan-

dising's program of licensing the THE

SIX MILLION DOLLAR MAN and THE BIONIC

WOMAN characters created a property

right in the term "bionic" per se for

footwear, no less for all goods. A

trademark right is not "a right in gross

or at large like a statutory copyright

or a patent for an invention" and "([t]here

is no such thing as property in a trade-

mark except as a right appurtenant to an

established business or trade in connect-

ion with which the mark is employed."

United Drug Co. v. Theodore Rectanus

Co., 248 U.S. 90, 97 (1918). While

Petitioners' claim to trademark rights

in gross in “bionic” must fall as a

matter of law, in fact it never gets off

the ground by reason of Petitioners’

failure to prove the existence of any

trademark right in “bionic” per se.

Petitioners’ unfair competition

Claims were likewise defeated on the

facts, and not the law. Petitioners

failed to prove any act of unfair

competition by American. Unlike the

defendants in the cases relied upon by

Petitioners, American made no effort of

any kind to associate its boot with

Universal's television shows or with any

of the characters in those shows. Rather,

American, at all times, made it clear

that its BIONIC boot was an American

product.

The opinion of the Second Circuit

in no way interferes with the licensing

of legitimate "properties" generated by

the television and movie industries.

Prove a property right or predatory

conduct by the defendant and the Second

Circuit will provide a remedy. Fail to

prove either, as Petitioners did here,

and you are no more likely to gain relief

in Texas then in New York.

2. There Is No Conflict Between

The Second and Fifth Circuits

In an alternative attempt to come

within Rule 19 of this Court, Petitioners

attempt to create a conflict between the

Second and Fifth Circuits where none

exists. |

Petitioners rely on Boston Profes-

sional Hockey Assoc., Inc. v. Dallas Cap

& Emblem Mfg., Inc., 510 F.2d 1004 (5th

Cir. 1975), cert. denied, 423 U.S. 868.

In the Boston case, the defendant copied

the uncopyrighted team symbols of plain-

tiff professional hockey teams after

being denied a license and sold the

team symbols as embroidered cloth emblems.

The Fifth Circuit faced a difficult

conceptual problem in that plaintiffs'

trademarks were being sold by defendant,

the dominant feature of the emblems (the

"goods") being the trademarks. The

court grounded its decision on three

factual determina- tions not present in

the instant case. Id. at 1011. The

court's analysis of the secondary meaning

requirement under 15 U.S.C. §1114 (in-

fringement of a federally registered

trademark - a section not at issue in

this petition), did not reject "source

of origin" as a focal point of con-

fusion, but rather, found a likelihood

of confusion in the sale of trademark

symbols by a defendant who knew that the

buyer would conclude that the source and

origin of the trademark symbols were

plaintifts. In other words, the likeli-

hood of confusion was grounded on a

finding of an intent to confuse.

The Boston case is distinguishable

from the instant case on its facts. In

Boston the defendant sought a license

from plaintiffs, appropriated established

trademarks and used such trademarks in a

manner intended to associate its emblems

with plaintiffs' teams and to exploit

the reputation and good will engendered

by such teams. Id. at 1011-1012. In

the instant case, Respondent made no

request for a license, appropriated no

trademark of Petitioners and, as found

by the courts below, made no effort to

associate its boot with Universal's

television series or to exploit the

reputation and good will engendered by

the television series. (A8). Having

found no indicia of predatory conduct

sufficient to satisfy the likelihood of

confusion test (Al3), the Second

Circuit turned to the main branch of the

test for likelihood of confusion, "the

likelihood that the consuming public

will be confused as to the source of the

10

allegedly infringing product", and found

no such likelihood. (Al6).

The Second Circuit would have grant-

ed a remedy to the plaintiffs in the

Boston case, given the proof of pred-

atory conduct by the defendants. Cf.

Flexitized, Inc. v. National Flexitized

Corp., 335 F.2d 774 (2d Cir. 1964),

cert. denied, 380 U.S. 913 (1965);

National Lampoon, Inc. v. American

Broadcasting Co., 376 F.Supp. 733

(S.D.N.Y. 1974), aff'd, 497 F.2d 1343

(2d Cir. 1974) (per curiam). On the

other hand, given the facts in this

case, Petitioners could not have pre-

vailed in any circuit. Cf. HMH Publish-

ing Co. v. Brincat, 504 F.2d 713, 718-20

(9th Cir. 1974) (preliminary finding of

no likelihood of confusion, based on the

descriptive nature of the trademark and

the remoteness of the respective pro-

ducts of the parties, overcome by

presence of predatory conduct).

D C Comics, Inc.v. Powers, 465 F.

Supp. 843 (S.D.N.Y. 1978), also relied

upon by Petitioners, is likewise dis-

tinguishable on its facts. In DC

Comics the court found predatory conduct

4d.

by defendants - the contents and promo-

tion of defendants’ newspaper was built

thematically around plaintiff's Superman

character. In the instant case, "there

was no proof that American's advertising

was built thematically around Universal's

television shows ...." (Al3). DC

Comics merely demonstrates that had

Petitioners proved either predatory

conduct or pertinent trademark rights,

they would have been granted a remedy

by the Second Circuit.

Accordingly, there is no conflict

between the Second and Fifth Circuits

in connection with the "likelihood of

confusion" test, nor did the Second

Circuit err in applying that test in

this case.

CONCLUSION

The decision of the Second Circuit

denying Petitioners’ claims under 15

U.S.C. §1125 is manifestly correct. No

conflict between the circuits has been

demonstrated. No important question of

federal law unsettled by this Court has

been presented. Accordingly, it is

respectfully submitted that the petition

12

for certiorari should be denied.

Respectfully submitted,

Lawrence Rosenthal

Attorney for Respondent

730 Third Avenue

New York, New York 10017

Of Counsel:

BLUM KAPLAN FRIEDMAN

SILBERMAN & BERAN