Petition for Writ of Certiorari — Hyatt Legal Services v. Hyatt Corp.

8 4 - 4 4 6 | = Court. US.

ED

IN THE

SEP 20 1094

ALEXANDER |. STEVAS.

Supreme Court of the United Staten:

OCTOBER TERM, 1983 __

>

HYATT LEGAL SERVICES and JOEL HYATT,

—_—V.—

HYATY CORPORATION,

Petitioners,

Respondent.

PETITION FOR A WRIT OF CERTIOKARI TO THE

UNITED STATES COURT OF APPEALS FOR THE

SEVENTH CIRCUIT

JAY GREENFIELD

(Counsel of Record)

345 Park Avenue

New York, New York 10154

(212) 644-8124

MAX E. WILDMAN

DAVID L. SCHIAVONE

One IBM Plaza, Suite 3000

Chicago, Illinois 60611

(312) 222-0400

Attorneys for Petitioners

THOMAS J. FLEMING

PAUL, WEISS, RIFKIND, WHARTON & GARRISON

A partnership including professional

corporations

WILDMAN, HARROLD, ALLEN & DIXON

Of Counsel

ee mpcemen

QUESTIONS PRESENTED

Petitioner Hyatt Legal Services has been operating under the

last name of its founding partner, petitioner Joel Hyatt, since

its inception in 1977. Respondent, the operator of Hyatt

Hotels, challenges its right to use that name.

The Seventh Circuit has ruled that under the Illinois Anti-

Dilution Act, Ill. Rev. Stat. ch. 140, § 22 (Supp. 1984), Hyatt

Legal Services should be preliminarily enjoined from operating

under that name. While the Court of Appeals has not identi-

fied the geographic scope of the state-law injunction, respond-

ent has argued that it should apply nationwide.

The Court of Appeals decision raises the following constitu-

tional questions:

1. Does an injunction based solely upon tne Illinois Anti-

Dilution Act and covering Illinois contravene the Commerce

Clause by imposing burdens on Hyatt Legal Services’ interstate

commerce that are excessive in relation to the local interests

that the Illinois statute purportedly serves?*

2. Would such an injunction violate the Due Process and

Commerce Clauses as well as fundamental principles of fed-

eralism if it covered the entire nation?

3. Where the Lanham Act grants a service mark owner the

exclusive right to use a name (HYATT) in limited areas of

commerce, does the Supremacy Clause preempit Illinois from

expanding that right so as to bar another from using a similar

name (Hyatt Legal Services) in other areas of commerce when

there is no confusion and no violation of the federal statute?

PARTIES TO THE PROCEEDING

The caption of the case in this Court contains the names of

all parties.

The Illinois Anti-Dilution Act prohibits “dilution of the distinctive

quality” of a trademark or trade name, even where there is no

confusion between the similarly named products or services.

ill

TABLE OF CONTENTS

PAGE

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ee oe a ed wns ab 00.08 604656 l

Statutory and Constitutional Provisions Involved...... 2

ee 3

RS ra 3

The Dispute over Hyatt Legal Services’ Right to Use

ks cd abbas ee ees s keen

4

eee enka ca Aw ae eee es ena 5

ETT TT TET ET TE ETE ETT 5

TM te Oe PROBING on cc cence csccnnces 6

The Anti-Dilution Laws in the United States...... 8

Reasons for Granting the Writ .... 2... 0... ccccccecss 9

I. The injunction ordered by the Court of Appeals

would impermissibly burden interstate commerce 10

Il. Extraterritorial application of the Illinois Anti-Di-

lution Act would violate the Due Process Clause,

the Commerce Clause and fundamental principles

CE eee ee eee ee 13

Ill. The Lanham Act preempts the application of the

Illinois Anti-Dilution Act to Hyatt Legal Services 15

iV

PAGE

ee error rte Tr rere ee 19

Appendices:

A- Opinion of the Seventh Circuit ..........--- la

B- Memorandum and Order of the United States

District Court for the Northern District of

e.g cae eek bohRe Seep beeeUE Eee Shs 12a

C- Judgment of the Seventh Circuit............ 18a

D- Order of the Seventh Circuit Denying Re-

OUTER occ cen cccccsscnnanssnsnssocns 20a

E- Model State Trademark Bill § 12 and Citations

to All Anti-Dilution Statutes in the United

rrr reer ers eS ee 22a

TABLE OF AUTHORITIES

Cases: PAGE

Aetna Life Insurance Co. v. Dunken, 266 U.S. 389

TE eee Cee re rer gr ee ee 14

Allied Maintenance Corp. v. Allied Mechanical Trades,

Inc., 42 N.Y.2d 538, 369 N.E.2d 1162, 399 N.Y.S.2d

8g et er ry ee ee et er oe ree see 8

Baldwin v. G.A.F. Seelig, Inc., 294 U.S. 511 (1935).... 12

Bates v. State Bar of Arizona, 433 U.S. 350 (1977) .... 3

Bibb v. Navajo Freight Lines, Inc., 359 U.S. 520 (1969) 11

Compco Corp. v. Day-Brite Lighting, Inc. , 376 U.S. 234

TUE sav Ka Chanda ceueebercaaancbkabkcek sien 17

Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema,

Ltd., 467 F. Supp. 366 (S.D.N.Y.), aff’d, 604 F.2d 200

CRN AE TEGO sek is vavecewsnswaeqenwenecncsacess 18

Edgar v. Mite Corp., 457 U.S. 624 (1982)......... 10, 11, 12

Golden Door, Inc. v. Odisho, 646 F.2d 347 (9th Cir.

PE NV See e saben ccceekn ee aewecsseeashea eee a 18

Instrumentalist Co. v. Marine Corps League, 509 F.

Se, Bee ares Bee Sacks eebeci eka eee 14

Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366 (lst

Ea ME cases kvuakcavadeusarcsenienaseteroi et 18

Mr. Donut of America, Inc. v. Mr. Donut, Inc., 418 F.2d

Se eS Vk ene ccnds enuucueeesee tence 17

New York Life Insurance Co. v. Head, 234 U.S. 149

Ss cishantnakaekecks al enha nas wie ee eensrin 14

Funmager ¥. Meaty, 55 U.S. TH4 CGT) wos noc cccvcccens 13, 14

Philco Corp. v. Phillips Mfg. Co., 133 F.2d 663 (7th Cir.

NN 6405 cdi ekaeepetendabaues baecedewadeeasan 17

vi

PAGE

Pike v. Bruce Church, Inc., 397 U.S. 137 (1970) ...... 12

Polaroid Corp. v. Polaraid, Inc., 319 F.2d 830 (7th Cir.

Es 6.4.06 64400006 0060 500504505506005 60500600505 iS)

Sargent & Co. v. Welco Feed Mfg. Co., 195 F.2d 929

PN Cr, POGED oc cae ccc ccccncecccscccccseseccscn 17

Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225

SOONER % 65.04% 64.04 0440040606406660000000466646545 16, 17

Southern Pacific Co. v. Arizona, 325 U.S. 761 (1945).. 12

United Mine Workers v. Gibbs, 383 U.S. 715 (1968) ... 2

Wedgwood Homes, Inc. v. Lund, 294 Or. 493, 659 P.2d

TTT CRGBS). wn cecvccnsccvccccccsencnsccnsasecsens 8

Constitutional Provisions and Statutes:

U.S. Const. art. 1, § 8, ch So... ccc c cece cee wesw enens 2

U.S. Const. art. VI, cl 2... cc cece cece ewes wees 3

U.S. Const. amend. XIV, § 1.1... cee eee eee 2

15 U.S.C. §§ 1051-1127 (1982)... 6. cee eee ees 5, 15

15 U.S.C. §§ 1114-1119 (1982)... 6. eee 15

15 U.S.C. & LUDE CIDER). 0. ccc nc esecrcncccnsennnces 2

15 U.S.C. § UNZS (ISSR)... ccc ener ecnccccnsccccees 15

15 U.S.C. & L1Z7 CIDA). 0 ccc nc ecescccnnscnnnens 3, 16

28 U.S.C. § 1254(1) (1982) 2... cc cece reece cece eens 2

28 U.S.C. § 1332 (I9B2). 0... cece cece cece cnccnens 2

28 U.S.C. § 1338(a) (1982)... cree cece ees enenees 2

Trademark Act of Feb. 20, 1905, ch. 592, 33 Stat. 724

CIDER) nc nncescncnenccnsewadasccesccceceecssacnn 17 n.6

Aia. Code § 8-12-17 (Supp. 1983) ............es00005 22a

Ark. Stat. Ann. § 70-550 (1979)... 6... eee eee eens 22a

Vii

PAGE

Cal. Bus. & Prof. Code § 14330 (West Supp. 1984).... 22a

Conn. Gen. Stat. § 35-1 1ifc) (1981)... cc ccc ccc ccs 22a

Del. Code Ann. tit. 6, § 3313 (Supp. 1982) ........... 22a

wom. Stat. Amm. § G0S.181 (CIDTA) ..c ccc cc cc scccnccs 22a

Co, Ge © Bete CUED 6 bb k caceccccceeiscvetiac 22a

a Ee 22a

Ili. Rev. Stat. ch. 140, § 22 (Supp. 1984)............. passim

lowa Code § 548.11(2) (Supp. 1984) .........0000000. 22a

Me. Rev. Stat. Ann. tit. 10, § 1530 (1980)............ 22a

Mass. Gen. Laws Ann. ch. 110B, § 12 (West Supp. 1980) 23a

Mo. Ann. Stat. § 417.061(1) (Vernon 1979) ........... 23a

Mont. Code Ann. § 30-13-334 (1983) ................ 23a

NOD. Rev. Stat. § C7122 (ISTE)... wc nc ccscccccccss 23a

N.H. Rev. Stat. Ann. § 350-A:12 (Supp. 1981)........ 23a

N.M. Stat. Ann. § 47-3-10 (1978) ................25. 23a

N.Y. Gen. Bus. Law § 368-d (McKinney 1984) ........ 23a

Ore. Rev. Stat. § 647.107 (1971) ..... ccc ccc ccc cc cces 23a

54 Pa. Cons. Stat. Ann. § 1124 (Supp. 1984) ......... 23a

R.I. Gen. Laws § 6-2-12 (Supp. 1983). ............... 23a

Tenn. Code Ann. § 47-25-433 (Supp. 1983) ........... 23a

Rules:

Federal Rule of Appellate Procedure 41(b) ........... 2

Miscellaneous:

Griewe, Anti-Dilution Statutes: A New Attack on Com-

parative Advertising, 72 Trademark Rep. 178 (1982) ..8 n.3

Vili

PAGE

Model State Trademark Bill § 12 (U.S. Trademark Ass’n

Pattishall, The Dilution Rationale for Trademark, 71

Nw. U.L. Rev. 618 (1976)... 0. ccc wwe deccceccees 8 n.3

S. Rep. No. 1333, 79 Cong. 2d Sess., reprinted in 1946

U.S. Code Cong. Service 1274 .... 2.6... eee ee eees 16

Winner, Right of Identity: Right of Publicity and Pro-

tection fo a Trademark’s “Persona”, 7) Trademark

Rep. 193 (1981)... 0... cece eee eee eees 8 n.3, 9, 14n.5

IN THE

Supreme Court of the United States

OCTOBER TERM, 1983

——

HYATT LEGAL SERVICES and JOSL HYATT,

Petitioners,

—_Vv—

HYATT CORPORATION,

Respondent.

>

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS FOR THE

SEVENTH CIRCUIT

Petitioners Hyatt Legal Services and Joei Hyatt respectfully

petition for a writ of certiorari to review the judgment of the

Court of Appeals for the Seventh Circuit.

OPINIONS BELOW

The opinion of the Court of Appeals, not yet officially

reported, is annexed as Appendix A. The opinion of the United

States District Court for the Northern District of Illinois

(Moran, J.), which has also not been officially reported, is

annexed as Appendix B.

JURISDICTION

The judgment of the Court of Appeals, dated June 11, 1984

and entered on that date, is annexed as Appendix C. Peti-

2

tioners’ application for rehearing with suggestion that re-

hearing be en banc was denied on July 24, 1984. (App. D) The

Court of Appeals stayed its mandate pursuant to Federal Rule

of Appellate Procedure 41(b).

The jurisdiction of this Court is invoked pursuant to 28

U.S.C. § 1254(1). Jurisdiction in the District Court was based

on 15 U.S.C. § 1121 and 28 U.S.C. §§ 1332 & 1338(a) and the

doctrine of pendent jurisdiction, United Mine Workers v.

Gibbs, 383 U.S. 715 (1968).

STATUTORY AND CONSTITUTIONAL

PROVISIONS INVOLVED

The Illinois Anti-Dilution Act, Ill. Rev. Stat. ch. 140, § 22

(Supp. 1984) provides in pertinent part:

Every person . . . adopting and using a mark, trade

name, label or form of advertisement may proceed by

suit, and the circuit court shall grant injunctions, to

enjoin subsequent use by another of the same or any

similar mark, trade name, label or form of advertisement

if there exists a likelihood of injury to business reputation

or of dilution of the distinctive quality of the mark, trade

name, label, or form of advertisement of the prior user,

notwithstanding the absence of competition between the

parties or of confusion as to the source of goods o7

services;....

Article I, section 8, clause 3 of the United States Constitu-

tion, the Commerce Clause, provides in pertinent part:

The Congress shall have Power. . . To regulate Com-

merce. . . among the several States,... .

Section | of the Fourteenth Amendment to the United States

Constitution, the Due Process Clause, provides in pertinent

part:

3

. . . No state shall make or enforce any law which shall

abridge the privileges or immunities of citizens of the

United States; nor shall any State deprive any person of

life, liberty, or property, without due process of law; nor

deny to any person within its jur‘sdiction the equal pro-

tection of the laws.

Article VI, clause 2 of the United States Constitution, the

Supremacy Clause, provides in pertinent part:

This Constitution, and the Laws of the United States

which shall be made in Pursuance thereof . . . shall be

the supreme Law of the Land; and the Judges in every

State shall be bound thereby, any Thing in the Constitu-

tion or Laws of any State to the Contrary notwithstand-

ing.

Section 45 of the Lanham Act, 15 U.S.C. § 1127 (1982),

provides in pertinent part:

The intent of this chapter is to regulate commerce

within the control of Congress by making actionable the

deceptive and misleading use of marks in such commerce;

to protect registered marks used in such commerce from

interference by State, or territorial legislation; ... .

STATEM™NT OF THE CASE

The Parties

Hyatt Legal Services is a pioneering national law firm

offering innovative low-cost services to the millions of persons

whose legal needs have not been met by traditional law firms.

Because of the demand for, and quality of, its services, the

firm has achieved substantial success. Since its founding in

1977 (shortly after this Court’s landmark decision in Bates v.

State Bar of Arizona, 433 U.S. 350 (1977)), it has grown from

a single office in Cleveland, Ohio to more than 125 offices in

19 jurisdictions. The firm has served more than 360,000 clients

and now employs over 350 attorneys.

4

Advertising has been critical to the firm’s growth. The

primary medium for its advertising is television and, at any

given time, the firm runs identical television advertisements in

several states. All of the ads prominently feature both Joel

Hyatt, as the firm’s spokesperson, and the name “Hyatt Legal

Services.” As a result of substantial advertising expenditures—

more than $3 million in 1983 alone—and seven years of

effective legal representation, the firm’s name has gained

widespread recognition and valuable good will.

Joel Hyatt founded the firm with his partner and Yale Law

School classmate, Wayne Willis. Mr. Hyatt’s name was chosen

as the firm name because, when the firm was formed, Mr.

Willis (unlike Mr. Hyatt) was not admitted to the Ohio Bar, a

fact that then precluded practicing under his name in Ohio.

Under Ohio legal ethics provisions, Hyatt was the only name

available. '

Respondent Hyatt Corporation (“Hyatt Hotels”), a Dela-

ware corporation, operates a chain of 70 hotels in the United

States, including several in Illinois. (App. 13a) In 1971, re-

spondent registered with the United States Patent Office the

service mark HYATT under the classification for “hotel, motel

and reservation services.” (App. 2a)

The Dispute Over Hyatt Legal Services’ Right to Use Its

Founder’s Name

The dispute over the Hyatt name is of recent vintage. When

Hyatt Legal Services started its law practice in Cleveland,

Hyatt Corporation did not have any hotels in Ohio. And

during the first four years of the law firm’s growth, it heard

I Mr. Hyatt’s name at birth was Joel Hyatt Zylberberg. Shortly after

he graduated from law school in 1976 (long before the opinion in Bates

and long before he opened a law office), he dropped “Zylberberg”

because it was unpronounceable. The District Court found that this

change was “unrelated” to the conception of Hyatt Legal Services.

(App. 13a) In its brief to the Court of Appeals, respondent acknowl-

edged that Mr. Hyatt’s “changing his name. . . is not an issue.”

5

nothing from the hotel chain. In August, 1981, Hyatt Hotels

first voiced an objection to Hyatt Legal Services’ operation

under Mr. Hyatt’s name. (App. 14a) Respondent demanded

that the name be changed, and its demand was rejected.

On October 8, 1982—more than five years after Hyatt Legal

Services commenced its practice and more than a year after

Hyatt Hotels’ initial objection—Hyatt Hotels filed a complaint

in the United States District Court for the Northern District of

Illinois. It claimed that petitioners’ use of the Hyatt name

violated the Lanham Act, 15 U.S.C. §§ 1051-1127 (1982) and

the Illinois Anti-Dilution Act, Ill. Rev. Stat. ch. 140, § 22

(Supp. 1984). (Various other claims were made but have not

been pressed.)

Respondent based its Lanham Act claim on the charge that

petitioners’ use of Mr. Hyatt’s name created confusion over the

law firm’s relationship to Hyatt Corporation, causing the

public to believe that the law firm was affiliated with Hyatt

Hotels. Respondent’s claim under the Illinois Anti-Dilution

Act was based upon petitioners’ alleged dilution of the “dis-

tinctive quality” of the HYATT mark.

PROCEEDINGS BELOW

The District Court

Two weeks after filing its complaint, Hyatt Hotels moved

for a preliminary injunction barring Hyatt Legal Services from

operating under the Hyatt name. The District Court (Moran,

J.) conducted an evidentiary hearing and on April 5, 1983, it

issued a memorandum opinion and order denying the motion.

(App. B)

The District Court found, first, that Hyatt Hotels failed to

demonstrate a “likelihood of confusion” amongst consumers

over the origin of petitioners’ law firm and its relationship to

Hyatt Hotels. (App. 16a) Observing that “the services provided

[by the parties] are distinctly different,” the District Court

concluded: “It is difficult . . . to believe that . . . a [Hyatt

6

Legal Services] sign at a shopping center legal clinic could lead

any person giving any real thought to the matter to the

conclusion that that clinic was somehow related to Hyatt

Corporation.” (App. 15a-16a) Accordingly, the District Court

rejected respondent’s Lanham Act claim.

In denying injunctive relief, the District Court did not

separately detail the inadequacies of respondent’s claim under

the Illinois Anti-Dilution Act. The court’s discussion of the

Lanham Act issues, however, included two key findings that

bear on the state law claim. After a careful review of business

directories and phone books, the trial court found that “[t}he

name ‘Hyatt’ is reasonably common.” (App. 14a) It ruled

further that Hyatt Hotels’ “HYATT service mark is not arbi-

trary or fanciful.” (App.15a) These findings establish that the

HYATT mark lacks the “distinctive quality” required for relief

under the Illinois Anti-Dilution Act.

Finally, the District Court held that “the balance of hard-

ships favors” Hyatt Legal Services. (App. 17a) Under the

injunction sought by Hyatt Hotels, the law firm would bear

not merely “the cost of changing signs and television commer-

cials,” but also “the less measurable cost of re-educating the

public to a different name or of accepting disclaimers.” (App.

17a) The proposed injunction would, however, entail far more.

The good will lost in the wake of a name change could never be

fully recaptured. And, since the name change would be court

ordered, the public would perceive that petitioners had violated

an Illinois statute—a very serious charge which would ag-

gravate Hyatt Legal Services’ loss of good will.

The Court of Appeals

A panel of the United States Court of Appeals for the

Seventh Circuit unanimously affirmed the District Court’s

finding that Hyatt Hotels had failed to demonstrate a likeli-

hood of success on its Lanham Act claim. By a vote of two to

one. however, the panel reversed the judgment of the District

Court, finding that respondent was likely to prevail on its

claim that Hyatt Legal Services had violated the Illinois Anti-

7

Dilution Act. (Apps. A & C) The majority remanded for entry

of a preliminary injunction “prohibiting ‘petitioners] from

using the name Hyatt Legal Services.” (App. 10a)

Notwithstanding the District Court’s finding that the Hyatt

name is “reasonably common” and “not . . . fanciful,” the

majority concluded that respondent was likely to succeed in

proving that the HYATT mark used in the hotel business

possessed a “distinctive quality” which was being diluted in

violation of the Illinois statute. (App. 5a-7a) The majority

opinion did not address Hyatt Legal Services’ showing that at

least 180 businesses in the United States use the Hyatt name,

including several owned by Hyatt Corporation that are unre-

lated to its hotel operations. Nor did the majority address the

fact that the Hyatt \name had been registered as a trademark by

others on three separate occasions: for billiard balls (Reg. No.

509,016), for bearings (Reg. No. 322,420), and for roller

bearings (Reg. No. 128,981). The majority apparently con-

cluded that distinctiveness and dilution were established by the

mere fact that respondent had used the Hyatt name first and

had advertised it extensively.

Circuit Judge Wood dissented from the court’s “original

analysis and disposition” of the Illinois Anti-Dilution Act

claim. Judge Wood took the position that this claim should be

remanded to the District Court “for its further consideration.”

(App. Ila)

In finding for Hyatt Hotels, the Court of Appeals said

nothing about the geographic scope of the injunction. Hyatt

Hotels, however, has taken the position that the Court of

Appeals has directed a nationwide injunction, even though an

alleged violation of state law is the sole wrong to be redressed.

Petitioners contend that any injunction is to be limited to

Illinois. (As noted below, significant constitutional questions

are raised in either event.)

Hyatt Legal Services filed a petition for rehearing with the

suggestion that rehearing be en banc. After directing Hyatt

Hotels to file an answering brief, the Court of Appeals denied

the rehearing petition. It later granted Hyatt Legal Services’

8

motion for a stay of the mandate pending the filing of this

Petition.

The Anti-Dilution Laws in the United States

Under the Court of Appeals decision, the Illinois Anti-Dilu-

tion Act has become the focal point of this litigation. Since this

Court has never adjudicated a case involving an anti-dilution

law, a brief review of the Illinois statute and the anti-dilution

laws of other states is appropriate.

Twenty-two states have enacted anti-dilution statutes similar

in wording to the Illinois law.” By their express terms, these

laws prohibit business practices that may cause the “dilution”

of the “distinctive quality” of a trademark or trade name. See

Model State Trademark Bill § 12 (U.S. Trademark Ass’n

1964). (App. E) They are “designed to prevent ... the

gradual whittling away of a firm’s distinctive trade-mark or

name.” Allied Maintenance Corp. v. Allied Mechanical Trades,

Inc., 42 N.Y.2d 538, 544, 369 N.E.2d 1162, 1166, 399 N.Y.S.2d

628, 632 (1977).

Although similar in language, the anti-dilution laws have

been subject to a wide variety of interpretations. Courts have

developed different definitions of the key statutory terms,

“distinctive” and “dilution.” Most jurisdictions have also re-

quired a showing of competition or confusion, even though the

language of the statute may appear to have done away with

this requirement. See Allied Maintenance Corp. v. Allied

Mechanical Trades, Inc., supra, 42 N.Y.2d at 543-544, 369

N.E.2d at 1165-1166, 399 N.Y.S.2d 631-632; Wedgwood

Homes, Inc. v. Lund, 294 Or. 493, 499, 659 P.2d 377, 382

(1983).

2 A complete list of these statutes as well as the text of the model

statute on which they are based appears as Appendix E.

3 See also Griewe, Anti-Dilution Statutes: A New Attack on Com-

parative Advertising, 72 Trademark Rep. 178, 182-183 (1982); Pat-

tishall, The Dilution Rationale for Trademark, 71 Nw. U.L. Rev. 618,

621-623 (1976); Winner, Right of Identity: Right of Publicity and

Protection for a Trademark’s “Persona”, 71 Trademark Rep. 193,

204-207 (1981).

9

The Illinois Anti-Dilution Act stands as “the exception

rather than the rule” among the minority of jurisdictions with

anti-dilution statutes. Winner, Right of Identity: Right of

Publicity and Protection for a Trademark’s “Persona”, 7}

Trademark Rep. 193, 205 (1981). Of all the anti-dilution laws,

the Illinois act, as interpreted by the Seventh Circuit in Pola-

roid Corp. v. Polaraid, Inc., 319 F.2d 830 (7th Cir. 1963), has

been the most broadly construed.‘ Based on the Polaroid

precedent, Illinois law now affords perhaps the greatest protec-

tion of any state for trademarks and trade names used within

its borders. The converse is equally true: Illinois stands as

perhaps the greatest trademark roadblock for businesses that

are expanding their markets.

What is prohibited by the Illinois Anti-Dilution Act is

permitted by the laws of the 28 states which have no anti-dilu-

tion statute—and by the laws of most or all of the remaining

21 states. This absence of consistency among the fifty states

has the potential for imposing substantial restrictions on enti-

ties which operate under the same name in more than one

state. Under the decision below, that potential will become a

reality for petitioners.

REASONS FOR GRANTING THE WRIT

While only a minority of states have anti-dilution statutes,

that minority is significant. The decision below raises the

questions of the extent to which such statutes may be applied

to impede interstate commerce and prohibit conduct lawful

under the Lanham Act—questions never addressed by this

Court. The panel majority would apply an anti-dilution statute

in a manner which would contravene constitutional restrictions

on state power. In so doing, it would seriously impede the

operations of a unique legal services organization which is

satisfying an important public need that previously has been

unmet.

4 The Illinois Anti-Dilution Act has never been considered by the

Illinois Supreme Court. [t was not construed by any state appellate

court prior to the Seventh Circuit Polaroid decision.

10

The injunction ordered by the Court of Appeals would

impermissibly burden interstate commerce.

An injunction prohibiting Hyatt Legal Services from using

its name in Illinois, based on a distinctive rule of that state,

cannot be reconciled with the Commerce Clause. Edgar v. Mite

Corp., 457 U.S. 624, 643-646 (1982). Such an injunction would

sharply disrupt Hyatt Legal Services’ interstate trade and its

operations outside Illinois without meaningfully advancing any

interest of the State of Illinois.

The record establishes that an injunction would have an

immediate and substantial detrimental effect on Hyatt Legal

Services’ operations. Hyatt Legal Services functions as a na-

tional law firm. It uses uniform television advertising through-

out the country, featuring Mr. Hyatt and the name Hyatt Legal

Services. Its signs and letterhead are similar in all states in

which it operates. Its law practice concentrates on frequently

needed legal matters, and its efforts and advertising are

directed to the 70% of the population that has never consulted

a lawyer. (App. 2a; Trial Tr. at 47-48) Because of its large

volume of similar casetypes, the firm is able to make, and does

make, maximum use of computerized equipment; this achieves

substantial cost savings, which are passed on to the firm’s

clients. (Trial Tr. at 64)

Thus, in addition to causing substantial direct expense, an

injunction requiring Hyatt Legal Services to change its name in

Illinois would seriously disrupt the firm’s nationwide interstate

operations. The firm could not use a single television advertise-

ment throughout the entire country. The advertisements which

it runs in Illinois would be confusing to persons in other states

(e.g., Indiana) who view both Illinois and non-lIllinois televi-

sion stations. Clients and potential clients would be in doubt as

to the relationship between a non-lIllinois office utilizing the

name Hyatt Legal Services and an Illinois office utilizing a

1]

different name. The firm’s image as a nationwide operation

would be severely damaged.

These burdens serve no meaningful state interest. Illinois

consumers are not threatened with confusion over the relation-

ship between the law firm and the hotel chain. (App. 3a, 4a &

16a) Hyatt Hotels has not shown any injury arising out of any

alleged dilution in Illinois. In addition, any “protection” which

it receives in Illinois would not protect it in the other states

where Hyatt Legal Services may lawfully use the Hyatt name

and where Hyatt Hotels conducts most of its business.

Here, as in any Commerce Clause case involving state

regulation of an interstate enterprise, the courts must consider

the balance between the burden which the state law imposes

upon interstate commerce and the legitimate interests served by

the state regulation. See Bibb v. Navajo Freight Lines, Inc.,

359 U.S. 520 (1959). Edgar v. Mite Corp., 457 U.S. 624 (1982),

considers this balance in the context of another Illinois statute,

and its holding and rationale are fully applicable here.

In Edgar, this Court held that, under the Commerce Clause,

“when a state statute regulates interstate commerce indirectly,

the burden imposed on that commerce must not be excessive in

relation to the local interests served by the statute.” 457 U.S. at

643. The Illinois Business Take-Over Act reviewed there had

the effect of regulating a nationwide tender offer whenever the

offer had certain contacts with Illinois. The Court found that

the state law’s indirect, nationwide regulation had “substan-

tial” effects on interstate trade, including the hindrance of the

allocation of economic resources. Jd. Moreover, despite bur-

dening trade outside Illinois, the state take-over statute did not

afford any real, additional safeguards to Illinois residents. Jd.

at 645. The Court concluded therefore that the Illinois law

imposed burdens on interstate commerce that were “excessive

in relation to the local interests served by the statute.” Jd. at

643. Under the Commerce Clause, the Court held, the Illinois

law was illegal.

12

The decision in Edgar amplified the holding of Pike v. Bruce

Church, Inc., 397 U.S. 137 (1970), a case which is equally

instructive. In Pike, the Court struck down an Arizona statute

that required Arizona-grown produce to be packed within that

state. Arizona justified the law as a means of enhancing the

reputation of Arizona’s fruit growers. In effect, the law com-

pelled Bruce Church, which packed Arizona cantaloupes in its

California plant, to construct a new packing facility in Arizona

at a cost of $200,000. Jd. at 144. The Court weighed the state’s

interest, which it termed “minimal at best,” against the

“straight jacket” Arizona imposed “with respect to the alloca-

tion of [the California packer’s] imerstate resources.” Jd. at

146. Because Arizona’s interest could not justify the substan-

tial additional expense to be borne by the packer, the law was

held to violate the Commerce Clause.

The injunction ordered by the Court of Appeals in our case

suffers from the same constitutional infirmities as the state

laws reviewed in Edgar and Pike. Here, as in those cases, the

application of the Illinois Act would have the practical effect

of impeding an interstate firm’s activities outside the state and

imposing upon the firm (and ultimately, its clients) substantial

additional operating expense. Yet, no meaningful local interest

is served by this costly and burdensome regulation. In fact, the

“minimal” interest underlying the Arizona law in Pike

(enhancing the reputation of local fruit growers) is greater than

the interest served by the Illinois Anti-Dilution Act (supple-

menting the strength of a national trademark that is used

locally).

As the number of states with anti-dilution laws increases and

as rights under those laws are asserted, national and regional

businesses will inevitably find themselves subject to a host of

conflicting state regulations that may sharply restrict an en-

terprise’s ability to expand its trade and promote its name. For

example, under the Court of Appeals decision, a cement maker

in Illinois named “Calvin Klein” might halt sales in that state

by the world famous fashion designer with the same name; if

the decision below stands, the cement maker would only have

13

to show a prior use of his trade name and advertising of that

name.

The case of Hyatt Legal Services is no different. Before

entering Illinois, the law firm had practiced for five years and

had grown to include more than 100 offices throughout the

country—all without any charge by Hyatt Hotels of unlawful

“dilution”. But, according to the Court of Appeals, it could

not expand into Illinois without modifying its nationwide

operations or abandoning its valuable name. This is precisely

the type of impediment which the Commerce Clause protects

against.

Extraterritorial application of the Illinois Anti-Dilution Act

would violate the Due Process Clause, the Commerce

Clause and fundamental principles of federalism.

In their petition for rehearing below, petitioners maintained

that the Court of Appeals decision did not, and could not,

require an injunction outside the State of Illinois. Petitioners

requested that the majority opinion be clarified to expressly

limit any injunction to Illinois. In opposition, respondent

maintained that the Court of Appeals decision mandated entry

of a nationwide injunction. In denying a rehearing, the Circuit

Court did not address this issue.

If, as respondent contends, the District Court is required to

enter a nationwide injunction, there is a violation not only of

the Commerce Clause, but also of the Due Process Clause and

fundamental principles of federalism. As far back as Pennoyer

v. Neff, 95 U.S. 714, 722 (1877), this Court acknowledged the

“elementary principle” that under the Due Process Clause “the

laws of one State have no operation outside of its territory.

. . .” Since Pennoyer, the Court has adhered to this principle

without exception. E.g., Southern Pacific Co. v. Arizona, 325

U.S. 761, 775 (1945) (striking down state law where the

“practical effect” of the law “is to control [conduct] beyond

the boundaries of the state. . . .”); Baldwin v. G.A.F. Seelig,

14

Inc., 294 U.S. 511, 521 (1935) (“New York has no power to

project its legislation into Vermont. . . .”); Aetna Life Insur-

ance Co. v. Dunken, 266 U.S. 389 (1924); New York Life

Insurance Co. v. Head, 234 U.S. 149, 161 (1914) (“it would be

impossible to permit the statutes of Missouri to operate beyond

the jurisdiction of that State . . . without throwing down the

constitutional barriers by which all the States are restricted

within the orbits of their lawful authority. . . .”).

The fact that only a minority of states have enacted trade-

mark anti-dilution laws—and that the Court of Appeals’ broad

interpretation of the Illinois law is the “exception rather than

the rule” within that minority’—underscores the impropriety

of applying the Illinois statute to regulate trade in sister states.

There is no Supreme Court or Circuit Court decision holding

that state anti-dilution laws are entitled to the sweeping extra-

territorial application urged by respondent. The only relevant

citation offered by respondent below, /nstrumentalist Co. v.

Marine Corps League, 509 F. Supp. 323, 340 (N.D. Ill. 1981),

cannot rewrite the constitutional principles established in Pen-

noyer and its progeny. To the extent the district court in

Instrumentalist ignored these principles, its decision is incor-

rect. If anything, the decision in /nstrumentalist is a further

ground for this Court to resolve the questions that arise when a

multi-state enterprise’s name is challenged under an anti-dilu-

tion law.

The majority opinion below, as construed by respondent,

has far-ranging implications for all businesses that promote

their trade in Illinois or in any of the other states with

anti-dilution laws. The case of Hyatt Legal Services demon-

strates the harsh results that would occur: In 1982, Hyatt Legal

Services lawfully operated more than 100 offices throughout

the country, but, according to Hyatt Hotels’ reading of the

majority opinion, upon opening its first Illinois office that

year, the firm immediately forfeited its right to use the Hyatt

name everywhere. Under our federal system, Illinois cannot so

“nationalize” its unique law.

5 Winner, Right of Identity: Right of Publicity and Protection for a

Trademark’s “Persona”, 71 Trademark Rep. 193, 205 (1981).

ee Te

15

The Lanham Act preempts the application of the Illinois

Anti-Dilution Act to Hyatt Legal Services.

The District Court found that respondent had not proven

that the name Hyatt Legal Services caused any confusion with

respondent’s federally registered service mark. Accordingly,

the District Court concluded that respondent was not likely to

prevail on its claim under the Lanham Act, 15 U.S.C. §§ 1051-

1127 (1982). (App. 14a-16a) The Court of Appeals affirmed

this finding, but nevertheless held that, under the Illinois

Anti-Dilution Act, respondent’s mark was entitled to rights

denied by the federal law. In so holding, the Court of Appeals

ordered entry of an injunction which interferes with federal

regulation of marks. The state regulation which the Circuit

Court’s order permits (indeed, requires) is precluded by the

Supremacy Clause.

Under the Lanham Act, the federal government has awarded

Hyatt Hotels the exclusive right to certain uses of the HYATT

mark aiid the right to prevent others from any use of that mark

which causes confusion. 15 U.S.C. §§ 1114-1119 & 1125

(1982). The statute gives Hyatt Hotels a limited and carefully

defined monopoly. In granting Hyatt Hotels this exclusive

right, Congress struck a balance: By delineating the field over

which Hyatt Hotels shall have absolute control and by prohib-

iting confusing uses of its name, Congress left available all

other non-confusing uses of the Hyatt name.

The Illinois Anti-Dilution Act, as construed and applied by

the Court of Appeals, disrupts the balance established by

Congress. Under the Court of Appeals opinion, the Illinois law

becomes a vehicle for significantly expanding the monopoly

rights of Hyatt Hotels—and for narrowing Hyatt Legal Ser-

vices’ rights to engage in activity lawful under the federal

scheme.

16

The Senate Committee Report accompanying the Lanham

Act articulates Congress’ intent to abolish any such state

interference. The Report explains:

The theory once prevailed that protection of trade-

marks was entirely a State matter and that the right to a

mark was a common-law right. This theory was the basis

of previous national trade-mark statutes. Many years ago

the Supreme Court held and has recently repeated that

there is no Federal common law. It is obvious that the

States can change the common law with respect to trade-

marks and many of them have, with the possible result

that there may be as many different varieties of common

law as there are States. A man’s right in his trade-mark in

one State may differ widely from the rights he enjoys in

another.

However, trade is no longer local, but is national.

Marks used in interstate commerce are properly the sub-

ject of Federal regulation. It would seem as if national

legislation along national lines securing to the owners of

trade-marks in interstate commerce definite rights should

be enacted and should be enacted now. S. Rep. No. 1333,

79 Cong. 2d Sess. 2-4, reprinted in 1946 U.S. Code Cong.

Service 1274, 1276-1277 (emphasis added).

Congress’ desire to have “[m]Jarks used in interstate com-

merce . . . [be] the subject of Federal regulation” is ciearly

expressed in the Lanham Act itself. Section 45 of the Act, 15

U.S.C. § 1127 (1982), provides in pertinent part:

The intent of this chapter is to regulate commerce

within the control of Congress by making actionable the

deceptive and misleading use of marks in such commerce;

to protect registered marks used in such commerce from

interference by State, or territorial legislation, ... .

(emphasis added)

In light of this legislative intent, this Court’s analysis of

federal patent monopoly rights in Sears, Roebuck & Co. v.

17

Stiffel Co., 376 U.S. 225 (1954) and Compco Corp. v. Day-

Brite Lighting, Inc., 376 U.S. 234 (1964), provides the appro-

priate constitutional standard for judging state regulation

expanding the federal rights of Hyatt Hotels. In Sears and

Compco, the Court reviewed state unfair competition laws that

had the effect of expanding the monopoly rights awarded

patent holders by federal legislation. The Court recognized

that in granting patent monopolies, Congress had struck a

balance between encouraging invention and permitting free

trade. 376 U.S. at 230-231. Any state law that expanded the

rights of a patent holder, the Court concluded, inevitably

interfered with the federal scheme and violated the Supremacy

Clause. Jd. at 231-232 & 237.

An interpretation of the Illinois Anti-Dilution Act that

would give Hyatt Hotels rights to the name Hyatt which were

denied it by federal law is similarly flawed. As in Sears and

Compco, Illinois may not grant a monopoly greater than the

monopoly provided by Congress, without encroaching on the

federal trademark scheme and violating the Supremacy Clause.

While several lower courts have addressed the question of

the preemptive effect of the Lanham Act on state laws con-

cerning federally registered marks, the issue remains unsettled.

Some courts have indicated preemption may occur. Sargent &

Co. v. Welco Feed Mfg. Co., 195 F.2d 929, 935-936 (8th Cir.

1952) (“Congress has entered and pre-empted the field of

trademark law in its application to interstate commerce.”);

Philco Corp. v. Phillips Mfg. Co., 133 F.2d 663, 672 (7th Cir.

1943) (“Registration of plaintiff’s trademark [under federal

law] rendered all questions concerning its use and protection in

interstate commerce questions of federal law. .. .”);° Mr.

Donut of America, Inc. v. Mr. Donut, Inc., 418 F.2d 838, 844

(9th Cir. 1969) (“The Lanham Act has pre-empted the field of

6 In Philco, the court reviewed claims under the Trademark Act of

1905, ch. 592, 33 Stat. 724 (1905), the predecessor sta.ute to the

Lanham Act. The 1905 law was, if anything, less comprehensive than

the present statute.

18

trademark law and controls.”), overruled, Golden Door, Inc.

v. Odisho, 646 F.2d 347, 352 (9th Cir. 1980). Other courts have

ruled that state trademark statutes may properly expand rights

granted by federal law. See Golden Door, Inc. v. Odisho, 646

F.2d 347, 352 (9th Cir. 1980); Keebler Co. v. Rovira Biscuit

Corp., 624 F.2d 366, 372 n.3 (Ist Cir. 1980); Dallas Cowboys

Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 467 F. Supp. 366

(S.D.N.Y.), aff’d, 604 F.2d 200 (2d Cir. 1979).

This case presents the Court with an opportunity to resolve

the confusion engendered by these inconsistent decisions, to

correct error in the Court of Appeals decision, and to preserve

the regulatory system embodied in the Lanham Act.’

7 Petitioners have argued below that the Court of Appeals order

would deprive them of rights under the First Amendment. While

petitioners do not make this argument here, they reserve the right to do

so in future proceedings below.

19

CONCLUSION

For the foregoing reasons, the Court should grant a writ of

certiorari to review the decision below.

Dated: September, 1984

Respectfully submitted,

JAY GREENFIELD

(Counsel of Record)

345 Park Avenue

New York, New York 10154

(212) 644-8124

MAX E. WILDMAN

DAVID L. SCHIAVONE

One IBM Plaza, Suite 3000

Chicago, Illinois 60611

(312) 222-0400

Attorneys for Petitioners

THOMAS J. FLEMING

PAUL, WEISS, RIFKIND, WHARTON & GARRISON

A partnership including professional

corporations

WILDMAN, HARROLD, ALLEN & DIXON

Of Counsel

la

APPENDIX A

Opinion of the Seventh Circuit

IN THE

UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

No. 83-1687

a os

HYATT CORPORATION,

Plaintiff-Appellant,

v.

HYATT LEGAL SERVICES and JOEL HYATT,

Defendants-A ppellees.

+

APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE

NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION.

NO. 82 C 6178—JAMES B. MORAN, JUDGE.

—

ARGUED FEBRUARY 24, 1984—DECIDED JUNE 11, 1984

——

Before WOOD and COFFEY, Circuit Judges, and HENLEY,

Senior Circuit Judge.*

° The Honorable J. Smith Henley, Senior Circuit Judge of the United

States Court of Appeals, Eighth Circuit, is sitting by designation.

P

2a

HENLEY, Senior Circuit Judge. This matter comes before

the court on appeal of the district court’s denial of a prelimi-

nary injunction. Appellant Hyatt Corporation, hereinafter

Hyatt Hotels, filed suit against appellees Hyatt Legal Services

and Joel Hyatt alleging violations of the Illinois Anti-Dilution

Act and the Lanham Act, and asserting various other claims.

Injunctive relief and damages were requested. After a hearing

on Hyatt Hotels’ motion for a preliminary injunction, the

district court refused to grant the injunction based on its

finding that Hyatt Hotels failed to show a likelihood of success

on the issue of confusion. While we cannot disagree with the

district court concerning its conclusions under the Lanham

Act, we disagree with its implicit finding that Hyatt Hotels did

not meet the requirements for a preliminary injunction under

the Anti-Dilution Act. We therefore reverse and remand for

entry of a preliminary injunction against Hyatt Legal Services.

Appellant Hyatt Hotels is a well known and well regarded

hotel operator with some seventy hotels in the United States. It

has operated hotels under the Hyatt name for some twenty-five

years. Hyatt Hotels advertises nationally, primarily in newspa-

pers and magazines. It spends approximately $50 million an-

nually for advertising. Twelve million people spend the night at

a Hyatt Hotel every year, and several more millions attend

meetings and events at the hotels. The prices of its hotel rooms

range from moderate to expensive.

Hyatt Legal Services, founded in 1977 in Cleveland, Ohio, is

and always hes beer a legal entity completely separate and

apart from Hyatt Hotels. It provides legal services in a growing

number of states, sixteen at the time of the hearing. There are

four partners, appellee Joel Hyatt, Susan Hyatt, Wayne Willis

and William Brooks. Hyatt Legal Services advertises exten-

sively, mainly on television, and directs its advertisements

towards people with low and moderate incomes. It takes only

certain kinds of cases, primarily simple cases which can be

rapidly handled at high volume. Its goal is to provide basic

legal services at reasonable prices to people who might

otherwise not see a lawyer. Hyatt Legal Services spent approxi-

mately $3 million in advertising in 1982.

3a

I. LANHAM ACT.

Hyatt Hotels registered the service mark “Hyatt” under the

Lanham Act, 15 U.S.C. § 1051 et seq, in 1971. See 15 U.S.C.

§ 1053. It complains that Hyatt Legal Services is guilty of

infringement of that mark, see 15 U.S.C. § 1114, and of unfair

competition, 15 U.S.C. § 1125. At this stage, the vatidity of

the registration is not disputed.

In order to show infringement, the owner of a mark must

show that the alleged infringer is using the same or similar

mark in a way which “is likely to cause confusion, or to cause

mistake, or to deceive.” 15 U.S.C. § 1114(1). The district court

noted that the services provided by Hyatt Hotels and Hyatt

Legal Services are “distinctly different.” The court then evalu-

ated Hyatt Hotels’ evidence of confusion as follows:

Among the thousands of telephone calls to [Hyatt Hotels]

daily, there have been occasional instances in which per-

sons seeking to call Hyatt Legal Services have called the

Hyatt Corporation legal department . . . or have called a

hotel or another of [Hyatt Hotels’] offices to inquire

whether there was any relationship . . . . These occa-

sional calls do not add up, in this court’s judgment, to a

likelihood of confusion.

Hyatt Corp. v. Hyatt Legal Services, No. 82 C 6178(N.D. Ill.

1983). The court emphasized that Hyatt Legal Services’ adver-

tisements do not in any way imply a connection with Hyatt

Hotels and concluded that Hyatt Legal Services’ present use of

the mark “does not support the conclusion that [Hyatt Hotels]

has a reasonable likelihood of prevailing on the merits.” Jd.

Two rules call for restraint in our review here. First, the

question of likelihood of confusion is one of fact and is

therefore subject to the clearly erroneous rule. Processed

Plastic Co. v. Warner Communications, Inc., 675 F.2d 852,

857 (7th Cir. 1982). Second, the district court merely denied a

preliminary injunction; it did not decide the case on the merits.

A denial of a preliminary injunction will be reversed only for

aii ei es |

4a

an abuse of discretion. See id. at 858; Ideal Industries, Inc. v.

Gardner Bender, Inc. 612 F.2d 1018, 1022 (7th Cir. 1979), cert.

denied, 447 U.S. 924 (1980).

The district court’s opinion shows that it gave consideratior.

to all the evidence. Cf. Union-Carbide Corp. v. Ever-Ready,

Inc., 531 F.2d 366, 387 (7th Cir.), cert. denied, 429 U.S. 830

(1976). The evidence of confusion put forth by Hyatt Hotels

was not overwhelming. While our reading of the depositions,

exhibits and hearing transcript would lead us to conclude that

there was more evidence of confusion than occasional mis-

directed phone calls, and while perhaps the evidence would

have supported the opposite result, the district court’s conclu-

sion that Hyatt Hotels did not show a likelihood of success on

the issue of confusion is not clearly erroneous. We find no

abuse of discretion in the court’s refusal to grant the motion

on Lanham Act grounds.’

Hyatt Hotels also argues that Hyatt Legal Services uses the

same typeface as Hyatt Hotels, which enhances the confusion

caused by use of the same mark. In the abstract, there is some

merit to this position. However, on the record before us we are

unable to conclude that Hyatt Hotels consistently uses the

typeface used by Hyatt Legal Services; rather it appears to be

one of several used by Hyatt Hotels and not an inherent part

of the mark. The district court characterized the typeface as of

“no compelling distinctive style.” Nor does the record indicate

specific instances of confusion caused, at least in part, by

similarity of typeface. We are not deciding this issue against

Hyatt Hotels. Rather, we merely find that on the record as

developed so far Hyatt Hotels has not established a likelihood

of success on the issue of whether the similarity of typeface

causes increased confusion.

1 Of course, Hyatt Hotels may present further evidence of confusion

when the case is tried on the merits.

Sa

Il. ANTI-DILUTION ACT.

The Illinois Anti-Dilution Act provides in pertinent part that

[e]very person . . . adopting and using a mark [or] trade

name, . . . may proceed by suit, and the circuit court

shall grant injunctions, to enjoin subsequent use by

another of the same or any similar mark [or] trade name

. if there exists a likelihood of injury to business

reputation or of dilution of the distinctive quality of the

mark [or] trade name. . . of the prior user notwithstand-

ing the absence of competition between the parties or of

confusion as to the source of goods or services.

Ill. Rev. Stat. ch. 140 § 22 (1981). Thus, an injunction must be

granted if the prior user can show that the mark is distinctive

and that the subsequent user’s use dilutes that distinctiveness;

neither competition between the users nor confusion need be

shown. Polaroid Corp. v. Polaraid, Inc., 319 F.2d 830, 836

(7th Cir. 1963); Edgewater Beach Apartments Corp. v. Edge-

water Beach Management Co., 299 N.E.2d 548, 554 (Ill. App.

1973).

A. Likelihood of success.

While some of the evidence the district court considered in

evaluating Hyatt Hotels’ Lanham Act claim is relevant to the

dilution question, the district court did not address separately

Hyatt Hotels’ dilution claim. The court’s focus was clearly on

the lack of confusion, which is not essential to a dilution claim.

In a claim under the Anti-Dilution Act, the relevant factors

are, as stated, distinctiveness of the mark and whether the

2 An injunction must also be granted if the prior user shows a

likelihood of injury to reputation. The district court found that Hyatt Legal

Services had conducted itself “in a circumspect manner,” and there is no

evidence to the contrary. We are unwilling to conclude that the mere

possibility of a few malpractice claims against Hyatt Legal Services will result

in harm to Hyatt Hotels’ reputation.

6a

mark is being diluted.’ We consider the evidence before this

court to be more than sufficient to mandate a finding that

Hyatt Hotels is likely to succeed on the merits.

1. Distinctiveness of the mark.

Hyatt Legal Services points out that “Hyatt” is a personal

name and argues that therefore it cannot be distinctive. Hyatt

Legal Services also contends that because a number of other

businesses in the United States use “Hyatt” in their names, the

“Hyatt” mark is not distinctive.

The district court found the name “Hyatt” to be “reasona-

bly common.” Even if this is so,* it does not preclude a finding

that the mark “Hyatt” is distinctive. The fact that a mark is

“coined” or invented may make distinctiveness easier to show.

Polaroid, 319 F.2d at 837. Other factors are also important,

however, including the length of time the mark has been used,

the scope of advertising and promotions, the nature and extent

of the business, and the scope of the first user’s reputation. See

id. at 832; Instrumentalist Co. v. Marine Corps League, 509 F.

Supp. 323, 332 (N.D. Ill. 1981).

In this case, Hyatt Hotels has been using its mark for some

twenty-five years. It has been registered for thirteen years.

Over the past several years, Hyatt Hotels has conducted an

extensive advertising campaign designed to expand recognition

of its trade name. That advertising in no way implies that

“Hyatt” is a particular person’s name; rather “Hyatt” is used

as a trade name to indicate the source of the service. The hotel

business is one in which travelers consider the name of a hotel

to indicate its quality, cost, services, etc. Hyatt Hotels’ reputa-

tion in its field is, as the district court found, excellent. Except

for the appellee, the record shows no other national or regional

business which uses the name “Hyatt” to identify its services.

3 Prior use must also be established. That is undisputed here.

4 The evidence relied upon by the district court on this point was far

from compelling. However, we see no reason to address its correctness in

view of the remainder of our discussion.

—

7a

In these circumstances, we have no difficulty in concluding

that Hyatt Hotels’ trade name “Hyatt” is distinctive.

2. Dilution.

The second issue is whether Hyatt Legal Services’ use of the

mark “Hyatt” dilutes the mark. Important factors in this

determination are the similarity between the marks used by the

parties, and the extent of the marketing effort by the second

user. Polaroid, 319 F.2d at 832; Instrumentalist, 509 F. Supp.

at 323.

Hyatt Legal Services uses the same mark as Hyatt Hotels. It

is not modified in any way to show that it is a personal name

rather that a trademark, as would be the case if “Joel Hyatt

Legal Services” or “Hyatt, Hyatt, Willis & Brooks” were used

to identify the firm. As indicated, Hyatt Legal Services has

extensively advertised in the past few years, spending millions

of dollars. While it does not yet operate in every state or every

major city, such a national operation is part of its expansion

plans, and it presently has offices in nearly a third of the

states. Hyatt Legal Services’ use of the mark is far more

extensive than was the use of Polaroid, where the defendant

operated in only three states and spent only $1,000.00 on

advertising annually. Polaroid, 319 F.2d at 832. We think it

clear that Hyatt Hotels has shown a likelihood of success on

the question whether Hyatt Legal Services’ use dilutes the

mark.

B. Irreparable injury.

Hyatt Hotels argues that Hyatt Legal Services’ use of its

mark “threaten[s] to unravel the result of more than twenty-

five years of effort by [Hyatt Hotels] to establish the Hyatt

mark.” We note that it is the very nature of dilution to gnaw

away insidiously at the value of a mark. See Polaroid, 319 F.2d

at 836. Such an injury would be remarkably difficult to convert

into damages. “[T]here is no effective way to measure the loss

of sales or potential growth—to ascertain the people who don’t

knock on the door or to identify the specific persons who do

8a

not [return] because of the existence of the infringer.” Jnstru-

mentalist, 509 F. Supp. at 323. We conclude that the difficulty

Hyatt Hotels would encounter in proving damages incurred

because of Hyatt Legal Services’ dilution of its mark and the

nature of the injury direct a finding of irreparable injury.

C. Public interest.

Granting the injunction will not disserve the public interest.

Wesley-Jessen Division v. Bausch & Lomb Inc., 698 F.2d 862,

864 (7th Cir. 1983). The public has an interest in the protection

of trademarks and trade names. Further, the public interest in

affordable legal services and accurate advertising of legal

services will not be adversely affected by the injunction.

D. Balance of hardships.

Hyatt Legal Services argues that a preliminary injunction

will be costly and will result in the loss of the extensive name

recognition it has attained over the past few years.

We recognize that a name change will cost Hyatt Legal

Services money. Signs, stationery, and advertising will have to

be changed. However, Mr. Hyatt conceded during the prelimi-

nary injunction hearing that television ads get “stale” and have

to be changed frequently. Offices run out of stationery, which

then has to be reordered. A name change need not add

substantially to these costs. Further, we consider Hyatt Hotels’

proof that Hyatt Legal Services is violating the Anti-Dilution

Act to go substantially farther than showing a likelihood of

success, and we may certainly take into account the strength

of Hyatt Hotels’ case in balancing the equities. Omega Satellite

Products Co. v. City of Indianapolis, 694 F.2d 119, 123 (7th

Cir. 1982). Finally, it appears that Hyatt Hotels’ rights to an

undiluted trade name are being diminished every time a Hyatt

Legal Services advertisement appears before the public. See

Instrumentalist, 509 F. Supp. at 334. It would be difficult to

cure this injury with money damages. We conclude that the

harm caused Hyatt Hotels by denying the injunction would be

more serious than the harm caused Hyatt Legal Services by

granting the injunction.

9a

Ill. REMEDY.

Hyatt Hotels does not request that Hyatt Legal Services be

enjoined from using the name “Hyatt” at all. Rather, Hyatt

Hotels requests that Hyatt Legal Services be directed to use

Joel Hyatt’s full name, a disclaimer of connection with Hyatt

Hotels, and a different typeface for the word “Hyatt.” We

agree that limited injunctive relief is proper in this case, but we

think Hyatt Hotels’ approach may not be the best in the

circumstances.

The dilution of Hyatt Hotels’ mark flows primarily from

Hyatt Legal Services’ use of the name “Hyatt” without modifi-

cation or any indication that it is a personal name, not a trade

name. Hyatt Hotels’ mark is also diluted because of the

nationwide scope of Hyatt Legal Services’ business. Hyatt

Hotels has not requested that we enjoin Mr. Hyatt from

further expanding his business, and we would not consider

such an injunction appropriate in this case. Thus, protection of

the “Hyatt” mark must come by way of modification of Hyatt

Legal Services’ name. A name such as “Joel Hyatt Legal

Services” or some combination of the last names of the

partners—the traditional means of identifying a law firm—

would meet this concern. There may be other appropriate

names which would not violate the Anti-Dilution statute.

Rather than selecting the name ourselves, we believe the better

practive would be to allow Hyatt Legal Services to select its

new name. If Hyatt Hotels believes the new name violates the

5 This will also allow Hyatt Legal Services to make sure its name will

not violate ethics codes in states in which it operates. We are not sympathetic

to Mr. Hyatt’s claim that requiring a name change may force him to act

unethically. Not to require a change would allow a violation of the Anti-Dilu-

tion Act to go unchecked. Mr. Hyatt and his partners must operate their law

practice in compliance with both the Anti-Dilution Act and state ethics

requirements. We believe that by allowing Mr. Hyatt and his partners to

select their new name, the court can avoid the ethical questions which are not

a proper matter for the district court to consider in the context of this case.

We assume the name chosen will have no obvious ethical problems (i.e., The

Best Law Firm in Town); the ethical improprieties pointed out by Mr. Hyatt

10a

Anti-Dilution Act or the Lanham Act, leave to amend its

complaint should be freely granted.

As discussed supra in a slightly different context, we do not

believe Hyatt Hotels has proved that its use of a special

typeface is distinctive, and therefore decline at this point to

enjoin Hyatt Legal Services from: using that typeface. Of

course, more evidence from both parties can be received when

the case is tried.

We are not sure that a disclaimer of association with Hyatt

Hotels is necessary. We think it likely that the name change will

be sufficient to protect Hyatt Hotels since it will make clear

that the name “Hyatt” as used by Hyatt Legal Services is a

personal name, not a trade name. However, we leave this to the

district court to evaluate in light of the name chosen by Hyatt

Legal Services; it may also be considered if more evidence is

presented after a hearing on the merits.

CONCLUSION

The case is reversed and remanded to the district court for

entry of an injunction prohibiting the appellee from using the

name Hyatt Legal Services. The appellee is to select promptly a

new name, and should notify the district court of the change.

Trial on the merits may then proceed.°®

The judgment of the district court is reversed and remanded

for entry of a preliminary injunction and for further proceed-

ings consistent with this opinion.

—

are much less clear, and might differ from state to state. In this case the

district court cannot be required to investigate on its own, nor can Hyatt

Hotels be charged with an investigation, of the propriety of the new name.

That is the responsibility of Mr. Hyatt and his law partners.

6 We note that Hyatt Hotels raised other claims against Hyatt Legal

Services in its complaint, including common law unfair competition. These

claims may, of course, be taken up at the trial on the merits.

lla

WOOD, Circuit Judge, concurring in part and dissenting in

part.

Although I fully concur with the majority disposition of the

Lanham Act claim, I have some reservation about undertaking

our own original analysis and disposition of the Illinois Anti-

Dilution Act claim, which was not addressed specifically by the

district court.

As sound as this court’s analysis of the Anti-Dilution Act

claim may be, I would prefer to remand that issue to the

district court for its further consideration and the fashioning

of its own appropriate remedy, if necessary. To that extent only,

I respectfully dissent.

A true Copy:

Teste:

Clerk of the United States Court of

Appeals for the Seventh Circuit

12a

APPENDIX B

Memorandum and Order of the United States

District Court for the Northern District of Illinois

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

No. 82 C 6178

———

HYATT CORPORATION,

Plaintiff,

VS.

HYATT LEGAL SERVICES, a partnership, and JOEL HYATT,

Defendants.

no

MEMORANDUM AND ORDER

In this action a familiar hotel operator seeks to restrain an

increasingly familiar legal services enterprise from using a

name—Hyatt. Plaintiff registered the service mark HYATT in

1972, and it now contends that defendant is violating the

Lanham Act by infringement of that service mark and by

unfair competition. It also alleges that defendants’ use of the

designation is common law unfair competition, violates the

Illinois Anti-Dilution Act (Ill. Rev. Stat., ch. 140, § 22),

violates the Illinois Deceptive Trade Practices Act (Ill. Rev.

Stat., ch. 121-1/2, § 311 et seqg.), and violates the Illinois

Consumer Fraud and Deceptive Business Practices Act (Ill.

Rev. Stat., ch. 121-1/2, § 261, et seq.). Defendant denies those

allegations and also attacks the validity of the registration.

ee

13a

More immediately, plaintiff seeks preliminary relief enjoining

defendants from using the name “Hyatt” unless the individual

defendant’s full name is used, there is a disclaimer and the

name is not highlighted and is not displayed by the present

typeface. The motion is denied.

Plaintiff registered the service mark HYATT in 1971, under

the classification for hotel, motel and reservation services. The

service mark is uncontestable. Plaintiff operates about 70

hotels throughout the United States, including several in the

Chicago area. It is a well-known and well-regarded hotel

operator. It uses the name “Hyatt” extensively in its advertising

although, the court notes, the use is generally in conjunction

with a logo which consists of a symbol within a symbol

surrounded by a circle. The typeface generally used appears to

be block letters of no compelling distinctive style.

Joel Hyatt was born Joel Hyatt Zylberberg—his first and

middle names being those of family members who died in the

Holocaust. Born and raised in Cleveland, he graduated from

Dartmouth and Yale, receiving his law degree from the latter

school in January 1976. During that year he was engaged in a

political campaign for his now father-in-law. From there he

went to a prominent New York law firm. Because of the

practical difficulties occasioned by his last name, defendant

used “Hyatt” as his name during the campaign and, in July

1976, legally changed his name to Joel Z. Hyatt.

A year after the individual defendant had petitioned for a

change of name, the Supreme Court in Bates v. State Bar of

Arizona, 433 U.S. 350 (1977), held unconstitutional various

prohibitions on advertising by lawyers. While plaintiff urges

that Joel Hyatt, through some sort of clairvoyance, changed

his name in anticipation of that decision for the purpose of

trading on its name, this court rejects that conclusion. I believe

that Joel Hyatt conceived the notion of opening legal clinics

following the Bates decision, and that the name change was

unrelated to that conception and was, rather, related to the

realities of politics and big-firm New York practice.

Hyatt Legal Services began with a single office in Cleveland,

a partnership of Joel Hyatt and Wayne G. Willis. At that time

l4a

Willis was not licensed to practice law. It is unclear whether

that was the reason for using Hyatt’s name as designating the

partnership or whether it was a natural outgrowth of what

appears to have been Hyatt’s more visible posture in the

partnership. In any event, at that time Ohio required that those

practicing law designate themselves by at least one surname.

Hyatt Hotels did not then have any hotels in Ohio.

Since 1977 Hyatt Legal Services has grown into a multi-state

network of law offices, presently having over 200 attorneys in

over 100 neighborhood law offices located in numerous cities

in sixteen states. Approximately 80 per cent of its advertising is

through the medium of television. The remainder of its adver-

tising budget is divided among Yellow Pages listings, advertise-

ments in local newspapers at the time a new office opens, and

promotional material—including a sign—at each neighbor-

hood office. Hyatt Legal Services has about eleven offices

presently in the Chicago metropolitan area.

The name “Hyatt” is reasonably common. It appears in

numerous listings in telephone directories and in commercial

directories listing businesses. Plaintiff did not communicate

with defendants concerning the use of the name Hyatt Legal

Services until the summer of 1981. While the evidence on this

aspect was not developed, it appears that plaintiff’s concerns

were directly related to the growth of Hyatt Legal Services as a

force in the national marketplace.

For the purposes of this motion, the court assumes that

Hyatt Corporation has an incontestable service mark which

gives it the exclusive right to use it with the services specified in

its registration, without being subject to any laches defense.

See United States Jaycees v. Chicago Junior Association of

Commerce and Industry, 505 F.Supp. 998 (N.D. Ill. 1981).

Here, however, the services provided by Hyatt Legal Services

are far different from those encompassed in plaintiff’s registra-

tion, and the thrust of its motion is that it has an established

service mark and that the use of the word “Hyatt” in connec-

tion with legal services creates a likelihood of confusion in the

perception of the public respecting the origin of these services

and the possible affiliation of those services to Hyatt Corpora-

SE ee a eee a

SAO at adam os

lSa

tion. It also urges that defendants’ conduct dilutes its service

mark. ;

The HYATT service mark is not arbitrary or fanciful. In-

deed, it is a personal name, and the courts have traditionally

been somewhat reluctant in restricting the use by another of his

name in connection with his trade or business. See Gilson,

Trademark Protection & Practice, § 2.08. It is beyond dispute,

however, that a person does not have an absolute right to use

his name for business purposes under federal trademark law,

John R. Thompson Co. v. Holloway, 366 F.2d 108 (Sth Cir.

1966) or under the Illinois Anti-Dilution Act, Burghoff Restau-

rant Co., Inc. vs. Louis W. Burghoff, Inc., 499 F.2d 1183 (7th

Cir. 1974). That use is permissible only if it is not likely to

cause confusion, John R. Thompson Co. v. Holloway, supra,

or there is not a likelihood of injury to business reputation or

dilution of the distinctive quality of another’s mark, Polaroid

Corporation v. Polaraid, Inc., 319 F.2d 830 (7th Cir. 1963).

The paramount interest is the protection of the public from

confusion, which protects the mark’s owner’s right to a non-

confused public. James Burrough Ltd., v. Sign of Beafeater,

Inc., 540 F.2d 266 (7th Cir. 1976).

Here the services provided are distinctly different—not

another restaurant or a restaurant and a related consumable,

where a highway sign may lead to an association in the mind of

a casual and weary traveler. Indeed, it is difficult to perceive of

services which are less related. Hyatt Corporation has not

shared with the court any plans to enter the field of providing

legal services. While there are some Hyatt hotels in the moder-

ate price range, the thrust of plaintiff’s advertising is toward a

market which can afford excellent accommodations. Hyatt

Legal Services caters to persons of moderate incomes who have

routine legal problems of a nature that a law office would find

repetitive.

What evidence is there then of likely consumer confusion?

That evidence consists almost entirely of “a few isolated

instances of misdirected phone calls . . . .” Walt-West En-

terprises, Inc. v. Gannett Company, Inc., F.2d ____ (7th

Cir. 1982). Among the thousands of telephone calls to plaintiff

l6a

daily, there have been occasional instances in which persons

seeking to call Hyatt Legal Services have called the Hyatt

Corporation legal department to inquire whether it was Hyatt

Legal Services or have called a hotel or another of plaintiff’s

offices to inquire whether there was any relationship. There is

no indication that any of these few callers was an actual

customer of plaintiff or that it was more than a short-lived

confusion by individuals casually acquainted with the business.

See Armco, Inc. v. Armco Burglar Alarm Co., Inc., 693 F.2d

1155 (Sth Cir. 1982).

Those occasional calls do not add up, in this court’s judg-

ment, to a likelihood of confusion, as that term is understood

in the law. This court has viewed a television commercial, and

it has nothing to do with hotels, does not emphasize the Hyatt

name by itself, and it does not seek in any manner to trade on

plaintiff’s good will. Even if we should compare the printed

material side-by-side, to whatever extent that may have a

bearing on the issue of public perception, the only material

that could possibly raise any question are the store signs, which

contain the word “Hyatt” in block capitals of a size larger than

the designation “Legal Services”. It is difficult, however, to

believe that such a sign at a shopping center legal clinic could

lead any person giving any real thought to the matter to the

conclusion that that clinic was somehow related to Hyatt

Corporation.

Obviously, the use of the name “Hyatt Legal Services” for a

national organization carries the potentiality for possible con-

fusion unless the defendants conduct themselves in a circum-

spect manner. Defendants’ present use, however, does not

support the conclusion that plaintiff has a reasonable likeli-

bood of prevailing upon the merits. Plaintiff’s evidence indi-

cates that some people will wonder whether a different

enterprise using the same surname is somehow associated with

a vigorous national organization of that name, even though the

services of the enterprises are entirely different. That notion is,

perhaps, fostered by diversification strategies of recent years,

but it is not enough to translate into total protection of the

eT a ee ae ee

17a

name of a national company, regardless of the field of en-

deavor in which the name might otherwise be used. .

Further, defendants’ enterprise has, at great expense, been

advertised as Hyatt Legal Clinics or Hyatt Legal Services since

1977. The cost of changing signs and television commercials,

and the less measurable cost of re-educating the public to a

different name or of accepting disclaimers, all militate against

the conclusion that the balance of hardships favors the plain-

tiff. Indeed, this court concludes quite the contrary. For the

reasons stated, the motion for preliminary injunction is denied.

/s/ James B. Moran

JAMES B. MORAN

Judge, United States District Court

April 5, 1983.

18a

APPENDIX C

Judgment of the Seventh Circuit

UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

Chicago, Illinois 60604

June 11, 1984

Before

Hon. HARLINGTON WOOD, JR., Circuit Judge

Hon. JOHN L. COFFEY, Circuit Judge

Hon. J. SMITH HENLEY, Senior Circuit Judge*

Roa

HYATT CORPORATION,

Plaintiff-Appellant,

No. 83-1687 —vs.—

HYATT LEGAL SERVICES, a partnership and JOEL HYATT,

Defendants-Appellees.

Appeal from the United States District Court

for the Northern District of Illinois, Eastern Division

No. 82 C 6178

Judge James B. Moran

*

° The Honorable J. Smith Henley, Senior Circuit Judge of the United

States Court of Appeals, Eighth Circuit, is sitting by designation.

19a

Opinion by Judge Henley

Judge Wood concurring in part and dissenting in part

7

JUDGMENT—ORAL ARGUMENT

This cause was heard on the record from the United States

District Court for the Northern District of Illinois, Eastern

Division, and was argued by counsel.

On consideration whereof, IT IS ORDERED AND AD-

JUDGED by this Court that the judgment of the said District

Court in this cause appealed from be, and the same is hereby

REVERSED, with costs, and the case is REMANDED, in

accordance with the opinion of this Court filed this date.

20a

APPENDIX D

Order

UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

Chicago, Illinois 60604

July 24, 1984

Before

Hon. HARLINGTON WOOD, JR., Circuit Judge

Hon. JOHN L. COFFEY, Circuit Judge

Hon. J. SMITH HENLEY, Senior Circuit Judge*

7

HYATT CORPORATION,

Plaintiff-Appellant,

No. 83-1687 —Vvs.—

HYATT LEGAL SERVICES and JOEL HYATT,

Defendants-Appellees.

Appeal from the United States District Court

for the Northern District of Illinois, Eastern Division

No. 82 C 6178

James B. Moran, Judge

-

° The Honorable J. Smith Henley, Senior Circuit Judge of the United

States Court of Appeals, Eighth Circuit, is sitting by designation.

ee Meee:

2la

ORDER

On consideration of the petition for rehearing and sugges-

tion for rehearing en banc filed in the above-entitled cause by

counsel for Defendants-Appellees, no judge in active service

has requested a vote thereon, and a majority of the judges on

the original panel have voted to deny a rehearing. Accordingly,

IT IS ORDERED that the aforesaid petition for rehearing

be, and the same is hereby, DENIED.

22a

APPENDIX E

Model State Trademark Bill

The Model State Trademark Bill (U.S. Trademark Ass’n

1964),* as amended, provides in section 12:

Likelihood of injury to business reputation or of dilu-

tion of the distinctive quality of a mark registered under

this Act, or a mark valid at common law, or a trade name

valid at common law shall be a ground for injunctive

relief notwithstanding the absence of competition between

the parties or the absence of confusion as to the source of

goods or services.

ee a ee er ee

States with Anti-Dilution Statutes )

Alabama Ala. Code § 8-12-17 (Supp. 1983)

Arkansas Ark. Stat. Ann. § 70-550 (1979)

California Cal. Bus. & Prof. Code § 14330 (West

Supp. 1984)

Connecticut Conn. Gen. Stat § 35-1 1i(c) (1981)

Delaware Del. Code Ann. tit. 6, § 3313 (Supp. 1982)

Florida Fla. Stat. Ann. § 495.151 (1972)

Georgia Ga. Code § 106-115 (1984)

Idaho Idaho Code § 48-512 (1977)

Illinois Ill. Rev. Stat. ch. 140, § 22 (Supp. 1984)

lowa lowa Code § 548.11(2) (Supp. 1984)

Maine Me. Rev. Stat. Ann. tit. 10, § 1530 (1980)

° The Model State Trademark Bill was prepared by the United States

Trademark Association in 1949. Its anti-dilution provision, section 12, was :

added in 1964. See Model State Trademark Bill, Statement (U.S. :

Trademark Ass’n 1964).

Massachusetts

Missouri

Montana

Nebraska

New

Hampshire

New Mexico

New York

Oregon

Pennsylvania

Rhode

Island

Tennessee

23a

Mass. Gen. Laws Ann. ch. 110B, § 12 (West

Supp. 1980)

Mo. Ann. Stat. § 417.061(1) (Vernon 1979)

Mont. Code Ann. § 30-13-334 (1983)

Neb. Rev. Stat. § 87-122 (1978)

N.H. Rev. Stat. Ann. § 350-A:12‘(Supp.

1981)

N.M. Stat. Ann. § 57-3-10 (1978)

N.Y. Gen. Bus. Law § 368-d (McKinney

1984)

Ore. Rev. Stat. § 647.107 (1971)

54 Pa. Cons. Stat. Ann. § 1124 (Supp.

1984)

R.I. Gen. Laws § 6-2-12 (Supp. 1983)

Tenn. Code Ann. § 47-25-433 (Supp. 1983)