Opinion
CIVIL ACTION NO. 04-72939.
September 21, 2005
ROBERT C.J. TUTTLE (P25222) BROOKS KUSHMAN P.C. Southfield, Michigan.
GREGORY D. PHILLIPS SCOTT R. RYTHER HOWARD, PHILLIPS ANDERSEN Salt Lake City, Utah, Attorneys for Plaintiff General Motors Corp.
JAMES L. WERNSTROM (P23071) DAVID W. CENTNER (P43071) LAW WEATHERS RICHARDSON P.C. Grand Rapids, Michigan.
BEN D. WHITWELL JEFFREY M. TANZER WHITWELL JACOBY EMHOFF LLP Beverly Hills, California, Attorneys for Defendants Hot Carts, Ultra Golf Carts, Alisha Miller, Chuck Berry.
JAMES K. THOME VANDEVEER GARZIA, P.C. Troy, Michigan, Attorneys for Defendant Electric Car Distributors
I. INTRODUCTION
Plaintiff General Motors Corporation ("GM") brought this action against defendants Hot Carts, Inc. ("Hot Carts"), Ultra Golf Cars, Inc. ("Ultra"), Alisha Miller, Chuck Berry, Andrew Couch (collectively the "Hot Carts Defendants"), and Electric Car Distributors, Inc. ("Electric Car") (all collectively "Defendants") to enjoin the Defendants from (1) manufacturing, advertising, and/or selling golf carts or other vehicles that use, display, incorporate, or embody the inherently distinctive trade dress and shape of GM's HUMMER® and CADILLAC® ESCALADE® vehicles or that use any confusingly similar shape or trade dress, (2) manufacturing, advertising, and/or selling golf carts or other vehicles that use, display, incorporate, or embody GM's federally registered trademark in the HUMMER GRILL®, or any confusingly similar variation thereof, and (3) using in any way without authorization GM's federally registered trademarks CADILLAC®, ESCALADE®, the CADILLAC CREST®, or HUMMER®, and/or any designations or marks confusingly similar or any variations thereof, in violation of GM's rights in the above-mentioned trademarks and trade dress.
In this lawsuit, GM alleges that the Defendants manufacture and/or advertise and sell "X-4," "X-6," and "Escalade" golf carts that knock off and misappropriate the trade dress (or shape) of GM's HUMMER® and CADILLAC® ESCALADE® vehicles, that infringe and dilute the trademarks HUMMER®, CADILLAC®, and ESCALADE®, and that infringe and dilute GM's federally registered trademark in the HUMMER GRILL®.
Against all Defendants, GM asserts claims for federal trademark and trade dress dilution, federal trademark infringement, false designation of origin or sponsorship, false advertising, and trade dress infringement under Sections 43(c), 32(1), and 43(a) of the United States Trademark Act of 1946, as amended (the "Lanham Act"), 15 U.S.C. §§ 1125(c), 1114(1), and 1125(a), and trademark infringement under common law.
Against the Hot Carts Defendants only, GM has moved for an order holding the Hot Carts Defendants in contempt of an earlier injunction entered by this Court in the matter of General Motors Corp. v. Ultra Golf Carts, Inc. (No. 02-73853 U.S.D.C., E.D. Mich., February 28, 2003).
The parties stipulate to the following findings of fact and conclusions of law, consent to entry of a judgment and permanent injunction as set forth below. Further, because the parties' settlement was reached prior to the issuance by the Court of its Memorandum Opinion And Order of May 13, 2005 (Dkt. 30) in which the Court denied GM's motion for preliminary injunction, the parties stipulate and jointly request that the Court vacate the May 13, 2005 Memorandum Opinion And Order (Dkt. 30). Accordingly, the Court enters the following:
II. FINDINGS OF FACT
GM is a Delaware corporation with its principal place of business in Detroit, Michigan.
Defendant Hot Carts, Inc. is a California corporation with its principal place of business at 1771-101 Delilah Street, Corona, California 92879. Defendant Ultra Golf Carts, Inc. is a Nevada corporation conducting business at 7205 Arlington Ave, Unit B, Riverside, California. Defendant Alisha Miller is an individual and President of defendant Hot Carts, and an officer and director of defendant Ultra. Defendant Chuck Berry is an individual who has performed services for and loaned money to defendants Hot Carts and Ultra. Defendant Andrew Couch is the registered agent of defendant Hot Carts, and acted as legal counsel for both defendants Hot Carts and Ultra during the earlier action against Ultra.
Defendant Electric Car Distributors, Inc. is a California Corporation conducting business at 71441 Highway 111, Rancho Mirage, California 92270.
Continually since 1981, GM and its predecessors in interest, have used the trademarks HUMMER®, the registered HUMMER GRILL®, and the HUMMER trade dress (including the inherently distinctive and non-functional shape of the world-famous HUMMER® vehicles). In 1999, GM acquired all rights to the trademarks and trade dress for the HUMMER® vehicles, and the associated goodwill.
GM also owns trademark rights in the trademarks CADILLAC®, the CADILLAC CREST®, ESCALADE®, and the ESCALADE GRILL.
GM has developed these trademarks and rights in connection with the sale, distribution, maintenance, service, and repair of HUMMER® and CADILLAC® products and services.
The HUMMER® H1 is the civilian version of the U.S. Army's Humvee, which gained fame during the Gulf War and was later brought to the market at the urging of actor Arnold Schwarzenegger. GM has since marketed the HUMMER® H2, a newer generation and modernized HUMMER®.
Both the HUMMER® H1 and HUMMER® H2® bear a distinctive nose and grill. GM owns a trademark registration, U.S. Registration No. 1,959,544, for the distinctive shape and non-functional design of the nose of HUMMER® vehicles (the HUMMER GRILL®).
In addition, GM and its predecessors in interest own trademark registrations of the trademark HUMMER®, including U.S. Registration No. 1,730,936 registered on November 10, 1992, for the word HUMMER for use with automobiles and parts thereof. These Trademark Registrations are valid, unrevoked, subsisting, and incontestible; and constitute prima facie evidence of GM's exclusive ownership of the HUMMER GRILL®, HUMMER®, H2®, and the H2 Logo® trademarks. These "Hummer" trademarks, along with the trade dress of the HUMMER® vehicles are hereinafter collectively referred to as the "Hummer Marks."
GM also owns trademark registrations for the trademarks CADILLAC®, ESCALADE®, the CADILLAC CREST®, and has developed trademark rights in the design and shape of the ESCALADE GRILL. The "Cadillac" trademarks referred to here, including the ESCALADE GRILL design, are collectively referred to herein as the "Cadillac Marks."
GM and its predecessors have extensively employed and caused to be advertised and publicized throughout the world, the Hummer Marks and the Cadillac Marks to identify HUMMER® and CADILLAC® vehicles, parts, products, and services.
The distinctive design and shape of HUMMER® vehicles is immediately identifiable and associated by the general public with the Hummer Marks and with GM, and has thus acquired secondary meaning. The distinctive design and shape of the CADILLAC® ESCALADE® and the ESCALADE GRILL design are immediately identifiable and associated by the general public with the Cadillac Marks and with GM, and have thus acquired secondary meaning.
GM and its predecessors have spent hundreds of millions of dollars and have expended significant effort in advertising and promoting authorized HUMMER® and CADILLAC® products and services and in developing the Hummer Marks and the Cadillac Marks throughout the world. GM prominently displays the Hummer Marks and the Cadillac Marks, including the trade dress of the distinctively shaped HUMMER® vehicles and the ESCALADE GRTLL in its advertisements. As a result of such advertising and expenditures, GM has established considerable good will in the Hummer Marks and the Cadillac Marks. The Hummer Marks and the Cadillac Marks have become widely known and recognized throughout the world as the symbols of unique and high quality vehicles and services.
Subsequent to GM's and its predecessors' development and use of the Hummer Marks and the Cadillac Marks, and subsequent to GM's registrations of the same, and without the consent of GM or its predecessors, Defendants began using the Hummer Marks and trade dress and the Cadillac Marks, or confusingly similar versions of them, on and in connection with the advertising of golf carts that knock off and copy the Hummer Marks and the Cadillac Marks. For example, the Hot Carts Defendants initially manufactured, advertised, and sold "Humdinger" golf carts that knocked off and misappropriate the trade dress (or shape) of HUMMER® vehicles, and that infringed and diluted GM's federally registered trademarks in the HUMMER GRILL®, and that infringed and diluted GM's HUMMER® trademarks.
After being enjoined in 2003 from producing and marketing the "Humdinger" golf carts mentioned above, the Hot Cart Defendants began to manufacture "X-4" and "X-6" golf carts that knocked off and copied the Hummer Marks and trade dress. In addition, the Hot Carts Defendants began to manufacture and market an "Escalade" golf cart that copied and misappropriated GM's Cadillac Marks and trade dress, including the ESCALADE GRLLL design.
Defendant Electric Car Distributors, Inc. has marketed, promoted, and sold all versions of the golf carts produced by the Hot Carts Defendants, of which GM complains.
Defendants are in no way affiliated with, authorized, or sponsored by GM to use the Hummer Marks or the Cadillac Marks.
Defendants' misappropriation of the Hummer Marks and Cadillac Marks in conjunction with the manufacture, advertisement, promotion, and sale of the "Humdinger," "X-4," "X-6," and "Escalade" golf carts and related products and services is a misappropriation of GM's Hummer Marks and Cadillac Marks and associated good will. This use of GM's marks and trade dress is likely to cause potential purchasers of Defendants' products listed above, as well as the public at large, to believe that Defendants' products are affiliated with, authorized, sponsored by, or endorsed by GM.
In addition, Defendants' unaffiliated use of the Hummer Marks and Cadillac Marks and trade dress, or confusingly similar versions thereof, is likely to dilute, tarnish, and whittle away the distinctiveness of the Hummer Marks and Cadillac Marks.
III. CONCLUSIONS OF LAW
This Court has subject matter jurisdiction of GM's claims in this action.
Defendants' manufacture, advertisement, and sale of "Humdinger," "X-4," "X-6," and "Escalade" golf carts infringes and dilutes the Hummer Marks and the Cadillac Marks and trade dress in violation of the Lanham Act, 15 U.S.C. § 1051 et. seq., and constitutes a false designation of origin of the Hot Carts Defendants' products in violation of the Lanham Act. See General Motors v. Let's Make A Deal, 223 F.Supp.2d 1183 (D.Nev. 2002) (enjoining manufacture, advertisement, and sale of "H-Kit" kit cars that were in the shape of HUMMER® vehicles).
JUDGMENT AND PERMANENT INJUNCTION
Based on the foregoing, Defendants, their owners, shareholders, officers, directors, employees, and successors, and all persons in active concert or participation with Defendants or any of them, shall be and are hereby ordered and permanently enjoined and restrained as set forth below.
WHEREFORE, IT IS HEREBY ORDERED THAT:
1. The Hot Carts Defendants are ordered collectively to pay to GM the sum of thirty-five thousand dollars ($35,000.00) within 15 days of the date of this Judgment and Permanent Injunction. Defendant Electric Car is ordered to pay to GM the sum of fifteen thousand dollars ($15,000.00) within 15 days of the date of this Judgment and Permanent Injunction.
2. Defendants and their owners, shareholders, officers, directors, employees, and successors, and all persons acting in concert or in participation with any of them, are enjoined from (a) without GM's written authorization, manufacturing, advertising, and/or selling golf carts or other vehicles that use, display, incorporate, or embody the inherently distinctive trade dress and shape of GM's HUMMER® or CADILLAC® ESCALADE® vehicles, or that use any confusingly similar shape or trade dress; (b) without GM's written authorization, manufacturing, advertising, and/or selling golf carts or other vehicles that use, display, incorporate, or embody GM's federally registered trademarks in the HUMMER GRILL® or GM's established rights in the ESCALADE GRILL design, or any confusingly similar variation thereof; (c) without GM's written authorization, using GM's marks HUMMER®, H2®, CADILLAC®, ESCALADE®, and/or the CADILLAC CREST®, or any confusingly similar variation thereof.
3. Nothing in this Judgment and Permanent Injunction shall be construed to prevent Defendants, or any of them, from manufacturing, selling, repairing, or refurbishing golf carts or vehicles bearing GM's trademarks or trade dress if such products are originally manufactured or licensed by GM.
4. Defendants, their owners, shareholders, officers, directors, employees, and successors, and all persons acting in concert or in participation with any of them, are enjoined from using any other false designation or false description or representation or trade dress or any other thing calculated or likely to cause confusion or mistake in the public mind or to deceive the public into believing that any golf carts or related products are related in any way to GM or its HUMMER® or CADILLAC® vehicles or brands.
5. Defendants, their owners, shareholders, officers, directors, employees, and successors, and all persons acting in concert or in participation with any of them, shall immediately cease their advertisement and/or sale of any "Humdinger," "X-4," "X-6," or "Escalade" golf carts or related products that use, display, incorporate, or embody the inherently distinctive trade dress and shape of GM's HUMMER® or CADILLAC® ESCALADE® vehicles, or that use any confusingly similar shape or trade dress, or that use, display, incorporate, or embody GM's federally registered trademarks in the HUMMER GRILL®, HUMMER®, H2®, CADILLAC®, ESCALADE®, and/or the CADILLAC CREST®, or any confusingly similar variation thereof on the Internet, within any Internet domain name, or in any other manner or medium.
6. Defendants and their owners, shareholders, officers, directors, employees, and successors, and all persons acting in concert or in participation with any of them, are enjoined from using the trademarks HUMMER®, H2®, CADILLAC®, ESCALADE®, and/or the CADILLAC CREST®, the HUMMER trade dress, the HUMMER GRILL®, and from doing any other act or thing which is likely to dilute the distinctive quality of the aforementioned trademarks, or to tarnish or injure the reputation of the HUMMER® or CADILLAC® brands.
7. Defendants and their owners, shareholders, officers, directors, employees, and successors, and all persons acting in concert or in participation with any of them, are enjoined from filling any orders for vehicles or any other items or things for "Humdinger," "X-4," "X-6," or "Escalade" golf carts or related products that use, display, incorporate, or embody the inherently distinctive trade dress and shape of GM's HUMMER® or CADILLAC® ESCALADE® vehicles, or that use any confusingly similar shape or trade dress, or that use, display, incorporate, or embody GM's federally registered trademarks HUMMER GRILL®, HUMMER®, H2®, CADILLAC®, ESCALADE®, and/or the CADILLAC CREST®, or any confusingly similar variation thereof;
8. Defendants and their owners, shareholders, officers, directors, employees, and successors, and all persons acting in concert or in participation with any of them, are enjoined from transferring, consigning, selling, shipping or otherwise moving any goods, packaging or other materials in Defendants' possession, custody or control bearing a design or mark substantially identical to or confusingly similar to the HUMMER GRILL®, the HUMMER trade dress, or GM's CADILLAC® ESCALADE® trade dress or the ESCALADE GRILL design, either in its appearance or sound;
9. Defendants and their owners, shareholders, officers, directors, employees, and successors, and all persons acting in concert or in participation with any of them, are ordered to, within thirty (30) days after the entry of this Final Judgment and Permanent Injunction, deliver to GM for destruction all golf cart or vehicle parts, body panels, emblems, products, labels, tags, signs, prints, packages, videos, and advertisements in their possession or under their control, bearing or using any or all of the HUMMER GRILL® design, the HUMMER trade dress, the ESCALADE GRILL design, or any of the registered marks HUMMER®, H2®, CADILLAC®, ESCALADE®, and/or the CADILLAC CREST®, or any simulation, reproduction, counterfeit, copy or colorable imitation thereof, and all plates, molds, matrices and other means of making the same, pursuant to 15 U.S.C. § 1118. Defendants need not surrender to GM any golf cart or vehicle chassis that do not contain, display, imitate, or otherwise appear confusingly similar to any of the trademarks or trade dress mentioned above.
10. Defendants, their owners, shareholders, officers, directors, employees, and successors are ordered to serve upon GM's counsel within thirty (30) days after entry of this Final Judgment and Permanent Injunction, a report in writing under oath, setting forth in detail the manner and form in which Defendants have complied with the above.
11. Defendants are ordered to permit GM, and/or auditors for GM, to audit and inspect the books and records of Defendants for a period of six months after entry of this Final Judgment and Permanent Injunction to determine the scope of Defendants' compliance with this Final Judgment and Permanent Injunction. Any information revealed during such audit or inspection shall not be disclosed except to those persons/entities necessary to address a purported violation of this Final Judgment and Permanent Injunction.
Each of the parties shall bear its own attorneys' fees and costs.
Based upon the parties' representation to the Court that the settlement and stipulation were reached in principle prior to the issuance of the Court's Memorandum Opinion and Order denying Plaintiff's motion for preliminary injunction, the Court's Memorandum Opinion and Order issued in this matter on may 13, 2005 (Dkt. 30) is hereby VACATED.
SO ORDERED AND ADJUDGED.