Conan Properties, Inc. v. Conans Pizza, Inc.

145 motions, pretrial procedures. reassignments mandatory and new such should Therefore, greatest Bay infrequently we find that Green made and with is not are confident that the remaining have a decide the reluctance.”26 We entitled to the case to judge in this district who has heard litigation. issues fact disputed stage capable according Green is entitled, Bay hearing the fair to which it is IV. therefore, prejudge decline his abili- Bay urges that the district Green ty by judge. this case another assigning disqualified himself. judge should assiduously asserted and For reasons the is REMAND- argument, these case This maintained, evidentiary not survive even ED to district court for an stoutly does Bay hearing remaining disputed analysis. has nei on the issues. superficial Green slightest alleged proved “per nor ther extrajudicial derived

sonal bias

source,” allegations are critical to a to recuse.23

motion that, during the Bay argues

Green 16, pretrial May on

course of conferences 1979,

1979, 16, and in the and December 21, opinion court’s of December district PROPERTIES, INC., 1979, “prejudicial” state the court made Plaintiff-Appellant, characterizing the most-favored- ments these statements clause and that nations v. pervasive bias and demonstrated “such PIZZA, INC., CONANS require recusal.” On each prejudice as Defendant-Appellee. occasions, the district court of the three No. 83-1687. proceedings or on the made observations n rulings. may sug comments

judicial These Appeals, Court United States matter, legal gest early judgment on a Fifth Circuit. extrajudicial they contain no hint of bias 4, Feb. 1985. against disquali To be prejudice party.24 alleged extrajudi must be fying, the bias rulings.25 upon not based in-court

cial and urges that we order Bay

Green assigned judge to another on case to be suggestion unwarrantedly

remand. given us judge The district

invidious. that he will contin reason believe

no fairly proceedings to conduct these

ue weigh impartially the evi he will not “Although be submitted.

dence authority courts on re

appellate do have bias, appearance of

mand to avoid even the 2641, (1977); Corrugated Litiga Davis v. Antitrust L.Ed.2d In re Container 97 53 250 23. denied, 1044, Commissioners, 958, tion, Cir.), cert. Board School 517 F.2d 614 F.2d 964 denied, (5th Cir.1975), cert. 114 U.S. 101 S.Ct. 66 L.Ed.2d U.S. cases). (1980) (collecting L.Ed.2d re Business Machines 24. See In International Richardson-Merrell, Inc., 26. Koller v. Cir.1980). (2d Corp., J., (D.C.Cir.1984) (Richey, concur Zant, (citations omitted); Spivey see also ring) Haldeman, United States 559 F.2d (5th Cir.1982). n. 6 (D.C.Cir.1976), n. 297

Lieberman, Nowak, L. Mi- Rudolph & Rudolph, Kalow, chael A. David New York City, for plaintiff-appellant. McGinnis, L. Lochridge Kilgore, & David Durkee, Orr, Arnold, T. White & Michael Tex., McLemore, Austin, defendant-ap- pellee. CLARK, Judge,

Before Chief JOHNSON WILLIAMS, Judges. Circuit WILLIAMS, Judge: S. Circuit JERRE (CPI) Inc. Properties, Conan owns literary rights in the property fictional THE BARBARIAN” character “CONAN others to use the character in and licenses commercial and entertainment various Pizza, (Co- sued Conans works. CPI nans) infringement of its federal trade- misap- mark and for unfair property of its under Texas propriation verdict, By special common law. unfair found trademark damages, competition but refused award concluding unreasonably had de- instituting ac- this suit and had layed in Conans’ conduct. After quiesced trial, relief, injunctive CPI moved for but court denied the motion. CPI the district judgment, claiming appeals from that injunctive notwith- it was entitled standing jury’s findings of laches asserts acquiescence. Conans con- finding of likelihood of jury’s implicit by the evidence. unsupported fusion was part find the district affirm but we relief was court’s denial all error, In all and we reverse to that extent. judgment of the district respects, the court is affirmed.

I. character was created in The CONAN by Howard. But the charac- Robert relatively dormant until the ter remained 1950’s, Sprague deCamp, L. a con- when author, began temporary rediscovered writing featuring books Scott Leist from CONAN THE Conan’s creators— Sprague deCamp.” L. might suggest, BARBARIAN. As title THE BARBARIAN se- deCamp’s deCamp At trial testified that he gigantic, ries told the tales of sword and attorney formed CPI’s about the existence wielding battle-ax barbarian adventurer of Conans Pizza in late 1976 and that who roamed the world search of foes. CPI board of from time at directors to time Many deCamp’s works were illustrated meetings discussed the trademark issue Frazetta, Frank an artist famous for his raised the existence of Conans Pizza. sorcery” style “sword and artwork. In January wrote to Piz- 1970, the licensed Marvel Howard estate objected za and for first time to Co- publish Comics to a series of comic books nans’ use of 'CPI’s mark. CPI demanded featuring CONAN THE BARBARIAN. To using Conans cease mark. Later rights in litigation avoid over CO- who much, using Conans discontinued BARBARIAN, the NAN THE Howard es- all, certainly not the of CONAN THE BAR- deCamp tate their in and united interests It using BARIAN indicia. continued “Co- in the CONAN character 1976 and formed nan” in describing its trade name and the of the DeCamp CPI. is one two share- 50% pizza Savage”. featured as “The It re- year holders of In that same CPI. only prints moved Frazetta those that actu- United States Patent and Trademark Office CONAN, ally depicted though the remain- (USPTO) granted federally regis- CPI a ing prints closely resembled those few that tered trademark the title for “CONAN featured CPI in CONAN. filed this suit for comic BARBARIAN” books. 1982, approximately years March after 5V2 deCamp first saw Conans Pizza. in year,

Also this same Scott Leist. and Jerry Pizza”, opened Strader “Conans a From 1976 to opened had Austin, in restaurant Texas. The restau- four additional “Conans Pizza” restaurants menus, signs, material, rant’s promotional In April the Austin area. before items, specialty general and decor featured objecting CPI had sent its letter to the use closely Pizza”, a barbarian-like man who resembled of the name “Conans Conans filed example, CONAN character. For application with the USPTO an for the ser- depicted Conans Pizza’s a menus loincloth- vice mark PIZZA” “CONANS for restau- clad, wielding, wearing, sword sandal bar- application grant- rant services. That was muscleman, they barian-like and in July described ed the USPTO after one of the pizzas “Savage, featured as the meantime, suit had In the been filed. Barbaric, All Way Pizza.” The January owners before suit was filed decorated the restaurant with dozens of after Conans had received CPI’s of letter reproductions artwork, of Frank Frazetta’s objection, opened a Conans Pizza although only reproductions Antonio, of the few restaurant in San Texas. This actually represented CONAN THE BAR- restaurant was the sixth in the chain and BARIAN. the first outside the Austin area. Conans’ combined sales from its six restaurants visiting approx- While relatives Austin thirty-fold creased from 1976 to ac- imately one month after Conans Pizza counting exceeding gross for annual sales opened, deCamp noticed restaurant. $3,000,000. restaurant, stopped by He spoke Strader, Jerry relief, and sought identified himself as one its suit CPI damages, of the creators of the CONAN accounting profits. character. and an for alleged He wished Strader success with his name busi- Conans Pizza photograph infringed ness and had a taken of Strad- Conans’ activities CPI’s fed- erally registered and himself in of one of er front the restau- trademark under section Later, 32(1) signs. deCamp Act, rant’s sent of the Lanham Trademark Strader a § 1114(1) copy photograph, (1982), of the on which he wrote: U.S.C. created a false des- Jerry 43(a) ignation origin “With best wishes of under section Stader Act, 1125(a) (1982), The appellate 15 U.S.C. standard of an Lanham unfair of a jury’s constituted mis- review verdict court’s is narrow merchandising property of appropriation exacting. upheld The must verdict Texas common law. Conans denied under facts point unless the and inferences so allegations and asserted the of CPI’s each strongly overwhelmingly and so favor acquies- defenses laches persons party reasonable could cence. contrary at a verdict. Western not arrive States, Co. North America United partial for to trial Conans Prior moved (5th Cir.), on CPI’s common law summary judgment — U.S. -, 78 L.Ed.2d 228 misappropriation of merchandis- claim if granted Even verdict was The district court ing property. conflicting sharply dismissed this claim. The evidence and motion and based on remaining were tried and submitted appeals issues determines that rea verdict, special jury jury. By a to the persons might contrary reach sonable proved had all of ele- result, found jury upheld. verdict must be of both a trademark ments Curry, Slavin v. an unfair Lanham Act and under the claim 6,162.78 States v. Acres Cir.1982); United under Texas common competition claim Land, (5th Cir.1982). found, however, that CPI jury law. task, therefore, is limited determin Our elements under proved all whether had before it designation Lanham Act of false competent and evidence that substantial special response claim. to origin verdict. Stewart fairly supports jury determined that interrogatories, 1002, Thigpen, 730 (5th F.2d 1007 Cir. acquiescence and laches defenses Conans’ 1984). the recov- precluded and either were valid accounting prof- ery damages of or infringe prevail on trademark To moved for After the trial CPI CPI. claims, ment and unfair CPI relief, seeking Conans prevent use of needed to demonstrate that Conans’ PIZZA using the mark CONANS both THE BARBARIAN mark and the CONAN nationally. A nationwide in- locally and likely in the image to create confusion was important CPI particularly was junction ordinary consumer to the mind of the as planning tentatively a Conans was because affiliation, source, sponsorship of Co- or franchising scheme. The district national See, e.g., Ams product. and nans’ service post-trial motion for denied CPI’s Pizza, Inc., 615 Corp. tar v. Domino’s junctive relief. 252, (5th Cir.) (likelihood confu 258 of applies unfair sion test to common law II. un competition claims as claims as well Findings Trademark Jury’s A. The §§ de 1125(a)), cert. 1114(1), der 15 of U.S.C. , Competi- Infringement nied, 66 U.S. 101 S.Ct. Unfair 899 tion list L.Ed.2d 129 A nonexhaustive determining of factors to be considered appeal in this is whether The initial issue exists of confusion whether a likelihood infringe- of findings trademark jury’s alleged trademark type § (1) the 1114(1) includes: and unfair under 15 U.S.C. ment (2) similarity of infringed, to have been law Texas common can competition under marks, (3) design similari between two they against claim that were stand services, (4) ty the identi products of the a Conans Pizza as matter law. error (5) purchasers, ty of retail outlets and implicit finding of argues advertising uti identity of the medium for both the trade- of confusion likelihood (7) lized, intent, (6) defendant’s competi- and the unfair mark Armco, Inc. of actual confusion. evidence against great weight claims tion was Co., Burglar Alarms v. Armco must be reversed. evidence Cir.1983). absence B. Conans’ Clean Hands ordinarily presence of factor is not The critical issue CPI raises is indeed, dispositive; finding a of likelihood whether Pizza an intentional Conans was supported by need not be confusion even infringer therefore lacked the clean majority a the seven factors. Id. at necessary hands to assert acquiescence. defenses of laches and proving shoulders the burden of that Co- presented that CPI conclude See, nans’ were e.g., hands unclean. Ken sufficient related to these seven evidence tucky Fried Chicken v. Diversified find permit factors to that Co- Corp., Packaging 549 F.2d created nans’ conduct confu likelihood (5th Cir.1977), aff'g, F.Supp. source, sponsorship, sion as to the or affili (S.D.Fla.1974); United v. Second States product. ation of its service and The evi Miami, National Bank North 502 F.2d dence at trial revealed adduced (5th Cir.1974), was the CONAN THE BARBARI aware of U.S. 43 L.Ed.2d 777 prior adoption AN character to its (1975); Andrus, Apache Jicarilla Tribe v. Additionally, name Conans Pizza. Conans’ (10th Cir.1982). CPI- material, menus, advertising specialty essentially asks us to conclude that Conans items, general decor featured charac employed the CONAN THE BARBARIAN unmistakably ter similar if not identical to explicit mark with the faith bad intent of CONAN THE BARBARIAN. “passing product off” its service and as emanating from or endorsed CPI. The per- answers that no reasonable support record does not such conclusion. son could believed that its restaurants were to CPI’s related BAR- Passing off found only BARIAN, products since and services where the defendant “subjectively and provided each were different. We must knowingly” buyers. intended to confuse disagree. Although never licensed McCarthy, J. Trademarks Unfair any entity use its connection § Competition 25:1, 31:2, at at 381 services, ordinary with restaurant consum- (1st 1973). ed. recognized This court has ers well believe that Conans was in that a defendant’s mere awareness of a fact licensed CPI. At the trial CPI plaintiffs claim to the mark same neither presented evidence of numerous cartoon passing amounts to off nor establishes the names, marks, and other characters whose necessary bad intent preclude to the avail images or used in licensing were extensive ability Armco, of the laches defense. programs promote to everything from chil- burden, F.2d at n. 7. toys dren’s to fast-food restaurants. These therefore, heavy. To foreclose the lach SNOOPY, POPEYE, characters included defenses, acquiescence es and the TRACY, PAN, E.T., DICK PETER and must something offer than more mere ob Many today’s ROY ROGERS. consum- jective evidence to that demonstrate the expect ers and such endorsements act fa- employed allegedly defendant infring the vorably them. toward It is reasonable to ing wrongful capi mark with the intent of assume, jury found, ordinary as the that talizing goodwill. on its patronized consumers who Conans Pizza experienced pervasive, and inescapable In this case the jury did not find and aura of THE CONAN BARBARIAN in the support record finding would likely those restaurants were to deprive believe bad faith to equita Conans way the restaurants were in Although parties some ble defenses. sub licensed special interrogatories or affiliated with CPI. mitted We several to the jury’s jury, therefore leave undisturbed the find- none jury asked the to determine ings of infringement trademark and intentional, unfair whether Conans Pizza an was competition. infringer bad faith when began us- contrary. THE BARBARIAN to the offered no evidence Final- the CONAN Additionally, jury’s ly, they image.1 they find- testified that were unaware of and person entity employing and unfair ings of trademark finding image products to sell did not constitute Conan mark food wrongful they changed intent but that would their acted with that Conans goodwill, deCamp any objection since name if on CPI’s voiced capitalize to merely at one of least when first the restaurant. intent is he visited wrongful contributing to a view and critical elements of this evidence the absence of seven evidence, of confusion. See hold finding contrary of likelihood we that CPI has Banks Armco, proving F.2d at Sun not carried its burden that Co- Savings and Florida, Federal subjectively knowingly Inc. Sun nans intended (5th Association, purpose deriving Loan to' use mark for the Cir.1981). goodwill. benefit from equitable assert therefore was able to similarly fails reveal the to The record acquiescence. of laches and defenses necessary subjective knowing bad faith Al- defenses. to foreclose Injunctive Motion C. CPI’s Relief for doubt that though appears to be little there argues jury's next THE CPI use the CONAN Conans intended to acquiescence proper findings of laches and image, sufficient BARBARIAN mark barred, ly request damages for regarding whether that use exists doubt good- precluded it securing should not have designed capitalize to on CPI’s was injunction preventing at trial Conans from con Leist and testified will.2 Strader tinuing infringe locally its mark adopted the name be- both they CONAN nationally. respect in their mar- With to Conans’ way it sounded cause of locally, of CPI’s mark Chicago infringement Cosmic Aus keting jingle—“Conans tin, Pizza”, must conclude that the district Style and that barbarian man we correctly way request denied CPI’s unique as a was used clever product. considering relief after They their service market acquiescence. although they findings were famil- of laches and also stated however, emphasize, only is the THE BARBARIAN Austin iar the CONAN restaurant, pro right area in CPI waived its opening their prior character mark, tect BARBARIAN. they character was neither believed cease and desist let- in Austin. Conans received CPI’s popular nor well known evidence, public sponsorship the source or submitted confusion as to 1. At the close instructions, many proposed product World from 60 to 80 or service. Louisiana Ex inapplicable Logue, of which the district court found position, proposed jury Pizza, Inc., instructions this case. One of its Cir.1984); Amstar v. Domino’s essentially jury if the found 252, denied, stated (5th Cir.), 615 cert. 449 F.2d 263 intentional in Conans’ conduct amounted to 268, 899, (1980); 66 L.Ed.2d 129 U.S. 101 S.Ct. acquies fringement, the of laches and defenses 729, (1938). f Restatement of Torts comment During to would be unavailable Conans. cence however, give showing, The does not rise same conference, CPI’s jury the court denied re the intended presumption to a that the defendant to proposed jury quest instruction. to include this plaintiffs goodwill its appropriate the from use denial, object specifically or CPI otherwise, to to the failed Armco, infringing allegedly of mark. 693 the jury the be either at conference 7; Inns, Holiday Inc. F.2d n. also v. at 1159 see jury waived its retired. CPI therefore fore the America, 445, (5th Holiday 481 449 Out In F.2d objection precluded potential from and is rais Cir.1973). respect The is this case with to issue appeal. on Fed.R.Civ.P. Carl issue availability is of defenses not the the 203, Shelton, (5th Cir.), F.2d 206 n. 3 ton v. 722 to use the Conans intended CONAN whether — 2389, denied, -, U.S. 104 S.Ct. 81 cert. image THE BARBARIAN mark whether (1984); Bros. Robin Wilson Drill L.Ed.2d 347 to derive benefit from and Conans intended 96, (5th Cir.1983). ing, F.2d 719 97 goodwill capitalize on CPI’s the CONAN char- showing defendant intended use 2. A the by using the the mark in manner in which acter . knowledge allegedly infringing mark with of the it did. may give pre- predecessor's rise to the sumption to cause that the defendant intended 152 Antonio res prior delay San tiff’s opening

ter the unreasonable the defend- opened that taurant. Conans therefore upon pre- ant’s actual delay reliance peril, without the restaurant at its own cluded injunction). the of an issuance See, acquiescence. defenses of laches and § 26:3; In e.g., McCarthy, supra, unreasonably 2 J. James this case CPI de Beefeater, layed Burroughs Sign Austin, in protecting rights Ltd. v. (7th Cir.1978); 574, Big 578 prejudiced dilatoriness Conans. More Dealers, Goodyear Tire Tire & O over, through the affirmative acts of L. 1365, (10th Cir.1977) Co., F.2d Rubber 561 Sprague one deCamp, agents, of its (even assuming first use of the defendant’s implicitly if explicitly not authorized Co- faith, good infringing it could mark was using nans to continue national planned advertising execute a not image BARBARIAN name connec campaign using mark after it had re tion with restaurant services in Austin. objection), plaintiff’s ceived the cert. dis Responding special interrogatories, 1052, missed, 905, 98 S.Ct. 54 U.S. proven found that Conans had all (1978). L.Ed.2d 805 elements of defenses of laches A finding of laches alone ordi acquiescence. affirmative narily plaintiff’s request will not bar the finding acquiescence establishes the re relief, although injunctive typically for it preclude liance necessary to issuance foreclose for an accounting a demand injunction,3 an supports and the record Holt, damages. Menendez v. jury’s implicit conclusion that relied 514, 524, 145, 9 S.Ct. 32 L.Ed. 526 upon deCamp’s conduct. We therefore (1888); Fleming, 96 McLean v. U.S. hold that court properly the district denied (1877); 24 L.Ed. Burrough James post-trial request CPI’s injunctive for Beefeater, Inc., Sign Ltd. v. related to the Austin area. Cir.1978); Grotrian, F.2d A question more difficult is whether Schulz, Helfferich, Steinwag Th. Nachf v. acquiescence CPI’s laches and in one locale Sons, (2d Steinway & eternally it asserting forecloses Cir.1975). This is because courts construe rights expands if beyond that area. plaintiff’s delay imply unreasonable CPI instituted suit after it learned that conduct, consent the defendant’s applied Conans had with the USPTO for a to nothing amounts more than a revocable service mark for “Conans Pizza” and was license; the license is revoked once the contemplating franchising national plaintiff objects infringe to the defendant’s scheme. In rejecting post-trial re- Menendez, ment. 128 U.S. at relief, quest for the district court 145; University Pittsburgh at v. Cham implicitly determined that laches in lo- Products, Inc., pion cale everywhere. resulted in laches We (3d Cir.), U.S. conclude that acquies- CPI’s laches and L.Ed.2d 933 cases cence in Austin did not constitute an eter- actually upon where defendant relies reverse, nal abandonment nationwide. act, however, affirmative therefore, judgment implied inapplicable the district fiction consent injunction See, judgment court insofar an issue. as denied e.g., Lehman, injunction geographical Saratoga Vichy Spring Co. v. area other Cir.1980) 1037, 1041(2d (the plain- F.2d than Austin. (2) implied The district court’s instruction for Co- conduct Plaintiff's that Plain- acquiescence pertinent objection defense stated in nans’ tiff had no to Defendant’s use of name; part: (3) time, since Defendant up has defense, assumption built its business under the To establish this Defendant must that it could use that name so be that it would prove that unjust (1) to allow Plaintiff to force to Defendant Plaintiff or should have knew known of added) stop using PIZZA; (emphasis that name now. Defendant’s use name CONANS business, expanded of laches and its the defendant definitions is respective compelling rea acquiescence the most pressed offer hard to demonstrate it how could did not forfeit concluding that son for upon plain- its detriment have relied to commonly is Laches nationally. rights its inactivity or tiff’s other conduct. Stated delay that results as an inexcusable defined simply, the defendant at can best show Matter in to the defendant. prejudice of only plaintiff acquiesced that the or unrea- Cir.1984); 313, (5th Bohart, 743 F.2d sonably delayed protecting in mark its in 1161; Armco, Environmental F.2d at showing the local area. Since a of mere Alexander, Fund, 614 F.2d v. Defense delay support finding a not of laches or denied, Cir.), (5th 449 U.S. cert. Bohart, acquiescence, 743 F.2d at 66 L.Ed.2d invalid. In this defenses are case we con- plain acquiescence involves the Similarly, has clude that Conans made sufficient explicit assurances to the implicit tiffs or showings prejudice reliance and in reliance which induces defendant justify denying injunc- to an Austin area v. Dwinell-Wright Co. White defendant. tion, evidence, any has failed to offer (2d Co., Milk 132 F.2d House carry its of demonstrating let alone burden Cir.1943); Brewing West Co. Golden prejudiced if it be from that would barred Sons, Inc., 104 F.2d & Milionas infringing CPI’s mark area other Cir.1939); Procter & Gamble Co. than Austin. Co., (3d J.L. Prescott Cir.), practical Three other considerations (1939). As affirmative defens 84 L.Ed. 468 guide our determination CPI’s laches es, prove how it defendant must will be acquiescence not should have barred plaintiffs unreasonable prejudiced post-trial request its delay implicit explicit or assurances. First, allowing Conans, outside Austin. Bohart, 743 at 326 n. Environ infringed has found to have been Fund, at 479. mental Defense mark Texas and violated unfair com- infringement against An future injunction laws, expand petition to its trademark vio- laches ac particular in a locale when lation and unfair would be in- case, found, as in quiescence have been judicial unworthy protec- plaintiffs delay if the properly is denied Second, permitting expand to tion. induced reliance on the other conduct either infringement into geographical areas it its part or will result substan defendant’s grant penetrated never would has plain if prejudice tial to the defendant Finally, creating unjustified windfall. a an rights in the permitted to enforce its tiff is may asserting risk that CPI barred phrased as Whether “reliance” trademark. rights nationwide because of its failure effect is the same—the “prejudice”, challenge it what have considered a something has it otherwise defendant done spur minimis, infringement may local de done absent would not have litigation litigation where otherwise would conduct. necessary, since CPI would be not be however, different, when The result bring infringement suits local forced oc- infringement would the asserted future situations.4 de minimis other than the geographical cur in a area Having concluded that CPI is entitled to right plaintiff waived its one in which the injunction prohibiting Conans from in- protect geographi- new its mark. yet fringing mark CONAN THE BAR- the defendant not cal area where consequent weakening without recourse 4. Since incidental isolated Similarly, protect if a fails to may halt, ineffective to its mark. be difficult to detect and cost good aof faith but plaintiff may its mark because mistaken make a conscious business particular assumption only defendant's use prosecute who those defendants decision pose mark, course, pose plain- a threat to its its mark does it to its mark. Of if a a threat right against waiving protect its against mark protecting its risks tiff num- declines geographical in that area. infringers, it that defendant must suffer ber of "incidental” Austin, Texas, injunction, BARIAN in outside deciding areas we assumed without scope injunction. we now turn to the that absent its conduct other the defendant stated, As the conduct which previously would alleged- have been entitled to use the alleges engages that CPI currently ly confusing but that history marks its infringement of its mark constitutes an improper justified behavior injunc- broad (1) cludes service mark “CO- using the tion. injunction We reasoned that “[a]n name, (2) NANS PIZZA” restaurants’ as its can be therapeutic protective. as well as describing pizzas featured one of the as In fashioning against relief a party who (3) decorating “The Savage”, and the res- transgressed governing legal stan- taurants Frazetta’s with Frank artwork dards, equity proscribe a court of is free to commonly which is associated with CO- that, alone, standing activities would have NAN THE BARBARIAN books and the been unassailable.” Id. at 390. BARBARIAN character. In justify These standards the issuance of using Conans discontinued all other injunction an case prohibiting Co- trademark, including indicia of CPI’s using any nans ever semblance of the T-shirts, man on use of the ad- barbarian CONAN THE BARBARIAN theme in its material, signs. vertising current and future restaurants outside injunction fashioning When in a suit using Austin. This includes the barbarian this, give such as must the court careful menus, items, name or specialty theme on possibility consideration to the that a de signs, Specifically, etc. Conans must not infringed either fendant found to have permitted any “The Savage” use plaintiff’s unfairly competed mark or with phrase similar to describe its food items. plaintiff modify his behavior ever Further, printing of the name “Co- slightly attempt so to skirt the line of nans” must be in a form which does not permissible respond conduct. Courts have way any resemble in the manner in which problem issuing injunc ed to this broad prints writing the name CONAN. The prohibit tions that that clearly conduct in of the script name “Conans” form as fringes mark as well as con doing Conans is now is a reasonable duct ordinarily justify would not any proper presentation of the Finally, name. example, relief. For in Chevron Chemical display Conans must not either the familiar Voluntary Purchasing Co. v. Groups, prints any Frazetta other artwork that (5th Cir.1980), 659 F.2d 695 cert. de even remotely suggests a nied, connection be- tween it (1982), and CONAN THE L.Ed.2d 1342 we BARBARIAN. stated that: Because opened the San Antonio business, competitive once convicted [A] restaurant after had it notice of CPI’s ob- given of unfair in a particu- jection mark, lar, to its use of CPI’s injunc- required should thereafter be keep tion away apply equal a safe must margin distance from the with force to that requirement line—even if that restaurant. involves handicap compared as with those who perceive no need to invoke the disqualified have not themselves. full powers breadth of pro the court’s omitted). (quotation Id. at 705 Similarly, in name, hibit using Conans from “Conans Kentucky Fried Chicken v. Diversi Pizza”, or the “Conan” in word the San Packaging Corp., 549 F.2d 368 fied Antonio any restaurant or in future restau Cir.1977), a case in which the defendant rant outside Austin. This case is unlike engaged had in an elaborate and calculated the Chevron Chemical and Kentucky competition, scheme of unfair we declined cases, Fried Chicken where the defend modify permanent scope injunc egregious, ants’ conduct was prohibited tion that and this the defendant from us Court was certain marks that concerned alleged than likely injunctions were to cause confusion broad permit would upholding trademarks. part the broad goodwill defendants retain

155 Trailers, Inc., from Co. Ed Hanover 434 they originally misappropriated (Tex.1968); S.W.2d 111 re In laches and In plaintiffs. view of CPI’s Glen Inc., Knitting Mills, U.S.P.Q. Raven 153 conduct as acquiescence, we view Conans’ (T.T.A.B.1967); Corp. 134 Hotels Dunfey the defendants’ significantly different from Group, v. Meridien Hotels and Ken- Investments Chemical conduct Chevron (S.D.N.Y. addition, F.Supp. 371, 378, see 504 380 we tucky Fried Chicken. 1980) any (plaintiff retain established that the name no likelihood that Conans misappropri- “Parker House” is a well-known service goodwill may have been mark hotel failed to using the names services but estab by merely from ated CPI any merely trig lish the name “Parker” without that Pizza” or “Conans” “Conans public gered recognition). the same THE BARBARIAN. One indicia CONAN noted commentator has test stated our compels reason con Another requires show that “the enjoined should not be clusion that Conans public recognize personal has come to expands if it using these names be symbol name as a which identifies and dis reduced to yond argument CPI’s Austin. tinguishes goods or only services of rights it has in the its core is that exclusive § McCarthy, supra, seller.” 1 J. 13:2 at any name Conan in form and connection (footnote omitted). 446 any reject this product or service. We At failed any trial CPI to introduce evi- argument. Although we conclude CPI dence, testimonial, statistical, otherwise, protectable rights in CONAN THE has demonstrating that merely its use of character, name we hold BARBARIAN requisite name Conan established the dis- rights merely similar that CPI lacks in the ordinary tinctiveness minds of con- name “Conan” is a surname5 and Conan. introduce any sumers. CPI’s failure to evi- term regarded descriptive can as a rath establishing secondary meaning dence inherently er than an distinctive mark. denying the name Conan mandates the ex- Pizza, Inc., Amstar Domino’s traordinarily injunction it broad seeks. We Cir.) (the “Domino” name therefore, conclude, Conans’ use of protection and warrants less surname existing trade name on and future restau- mark) arbitrary than sig- rants Austin no poses legally outside L.Ed.2d 129 U.S. nificant threat to CPI’s mark.6 ac (1980). Descriptive terms protection only quire with a trademark D. Misappropriation a Merchandis- showing through usage the name Property; Jury Instruc- Defective (the acquired so-called sec distinctiveness tions meaning requirement) in the ondary minds remaining two claims ordinary consumers. L.E. Waterman Co., 88, 94, First, long argues Pen 235 U.S. 35 need not detain us. v. Modern Co. (1914); improperly granted L.Ed. 142 Herring- the district court S.Ct. Co., dismissing its summary judgment Hall’s claim for Hall-Marvin Co. v. Safe Safe 554, 559, misappropriation merchandising prop (1908); Amstar, erty. Although yet L.Ed. 615 F.2d at Texas courts Holloway, cause of Thompson R. Co. v. 366 determined whether such a action John (5th Cir.1966); independent Hanover exists of common law trade- Mfg. E.g., Doyle, registrations). tell Conan creator of the We cannot from the Sir Arthur master sleuth Sherlock Holmes. record whether has instituted cancellation proceeding challenges the in the USPTO which 6. Since neither Conans nor CPI asked propriety registration of Conans’ of the service validity federally Conans' to determine first See 15 U.S.C. in the instance. mark, Pizza”, registered “Conans we de- service today decision §§ 1064 & 1092 Our express no cline to address this issue and view existing necessarily proceed- does not moot viability regarding continuing of Conans’ ing or bar a future action in that forum. (federal (1982) mark. See 15 U.S.C. courts the cancellation are authorized order competition unfair 1125(a). Any violated section er- asserted laws, that Texas courts ror recognized we was harmless. Fed.R.Civ.P. have scope consistently expanded have Accordingly, the judgment we affirm competi- protection by the unfair afforded part. the district court in We reverse and tion Charles Capital laws. Films v. remand for the district court to formulate Productions, Inc., Fries injunction and order an in accordance with (5th Cir.1980); City see also Universal opinion. this Industries, Studios, Inc., Inc. Kamar v. part; AFFIRMED in REVERSED AND (S.D.Tex.1982) U.S.P.Q. REMANDED in part. (finding misap- that of action for a cause propriation merchandising property ex- of a CLARK, Judge, Chief dissents. law). prevail ists under To on a Texas CLARK, Judge, Chief dissenting: merchandising misappropriation prop- of a Judge I in all opinion concur Williams’ erty claim, plaintiff must demonstrate except part for the per- which appropriated that the defendant and used mits defendant to continue its use of the (e.g., property its trademark or city name CONAN outside of Aus- interest) unique pecuniary without its au- tin. this court has chosen Since to frame a thority competition and in with own injunction, proper arewe bound to balance licensing Brothers, program. Warner equities in ordering its terms. Inc., (2d Gay Toys, It Cir.1981); Studios, setting could be true some abstract City Universal that use the name U.S.P.Q. CONAN becomes at 1168. this case conclude we innocuous when it is disembodied from summary judgment should not have THE BARBARIAN and other associated granted been on this claim because CPI trappings adopted by plaintiff. I think question demonstrated that factual exist- unlikely it is here. CONAN does not refer ed regarding appropriated whether Conans Doyle to Arthur Conan or family. his Nor used property with does it refer to Scott Leist Gerald Strad- Nevertheless, licensing program. descriptive er. It of defendant’s improper dismissal of this claim harm- was by style restaurant product. reversal, less and does not warrant even assuming jury would have found majority says that once CONAN claim, CPI on jury’s findings this since the by isolating been civilized it from its cre- acquiescence of laches and would have ation, it good carries none of the will de- any recovery by barred CPI on this unfair appropriated plaintiffs fendants intel- competition claim. property. being so, lectual That the name significance alone can be of no business applies This also conclusion re- defendant either. leaves pos- This but two maining jury’s claim that the failure to find One, sible effects its continued use: no § 1125(a),although violation of 15 U.S.C. Two, know what CONAN means. it had found violation of 15 U.S.C. those who are familiar prop- with § 1114(1), jury demonstrated that in- erty will continue to associate CONAN See, fatally e.g., structions were defective. BARBARIAN. Association, Hockey Boston Professional Cap Mfg., Inc. Dallas & Emblem originated Defendant’s use of (5th Cir.1975) (rights infringement, albeit innocent. As ma- § 1114(1) observes, are merely jority afforded a subset gives no defendant rights 1125(a)). right expand original afforded use and the jury need not determine whether likelihood of jury confusion deficient, structions were since the it carried. found Continued use of CO- laches acquiescence findings would outside of NAN Austin creates a distinct precluded any recovery by even if injured. hazard will be That found Conans’ conduct use is no established benefit to defend- equities between Balancing the- ants. framing

parties wipe should we clearly indicates

granted Austin. clean outside of

the slate

NASCO, INC., Plaintiff-Appellee, AND RA TELEVISION

CALCASIEU

DIO, Russell INC. G.

Chambers, Defendants-Appellants, III, Carmouche, Barsh, Gray, Camp, A.J. Hoffman, Hunter, Geralyn P. Gray & Gar- Baker, for the Trustee Hunter, Charles, La., Mabel Christine K. Lake vey, Edwin Trust, Facility Defendant. defendants-appellants. for Harwell, Ross, Nashville, D. Neal & Jon No. 84-4209 Scofield, Tenn., Hoskins, L. B. David John Summary Calendar. Charles,’La., Mount, Lake Benjamin W. Appeals, Court United States plaintiff-appellee. Fifth Circuit. 4, 1985. Feb. JOLLY, HILL, WILLIAMS,

Before Judges. Circuit HILL, MADDEN Circuit ROBERT Judge: judg- appeal second

This is the defend- court in which ment of the district Television ants-appellants, Calcasieu Chambers, Radio, were and G. Russell of a contempt for violation adjudged in district injunction issued preliminary Nasco, Inc., has Plaintiff-appellee, court. ground appeal this on moved to dismiss prose- previously sought appellants contempt judg- appeal from the cute an § 1292(b) and to 28 U.S.C. pursuant ment was denied Fed.R.App.P. 5 that opinion are of Court. We should be dismissed. present appeal also appellate court court and the The lower amplification. needs history this case

Case Details

Case Name: Conan Properties, Inc. v. Conans Pizza, Inc.

Court Name: Court of Appeals for the Fifth Circuit

Date Published: Feb 4, 1985

Citation: 752 F.2d 145

Docket Number: 83-1687

Court Abbreviation: 5th Cir.