United States District Court, W.D. Kentucky, Paducah Division
MEMORANDUM OPINION, ORDER, AND AMENDED
INJUNCTION
Thomas
B. Russell, United States District Court Senior Judge
This
matter is before the Court on various post-trial motions and
briefs filed by both parties. This litigation began when
Plaintiff, Deere & Company (“Deere”) brought
suit against Defendant FIMCO, Inc. (“FIMCO”)
alleging that FIMCO was acting in violation of federal
trademark and common law by producing and distributing
trailed agricultural sprayers and applicators bearing green
and yellow colors that are indistinguishable from the green
and yellow colors Deere uses on its agricultural
equipment.[1] Deere brought four claims against FIMCO,
including those for federal trademark infringement in
violation of 15 U.S.C. § 1114, federal false designation
of origin and unfair competition in violation of 15 U.S.C.
§ 1125(a), federal trademark dilution in violation of 15
U.S.C. § 1125(c), and common law trademark infringement
in violation of the laws of Kentucky. [DN 1 at 6-9
(Complaint).]
After a
five-day bench trial, the Court issued Findings of Fact,
Conclusions of Law, and a Judgment. [DN 369.] Therein, the
Court found for Deere on all of its claims and issued the
following permanent injunction against FIMCO:
Defendant FIMCO, Inc. and its affiliates, officers, agents,
servants, employees, attorneys, and all other persons in
active concert or participation with FIMCO are hereby
permanently enjoined from using a combination of green and
yellow colors in the manufacture, sale, offering for sale,
distribution, promotion, marketing, or advertising of FIMCO
trailed and wheeled agricultural equipment at any locality
within the United States. This injunction does not prohibit
the above-described persons and entities from using solely
the color green or solely the color yellow in connection with
agricultural equipment, nor does it prohibit the use of green
with another color or yellow with another color. However, it
does prohibit the use of any combination of green
and yellow together on a piece of equipment.
[Id. at 106.]
Now,
the parties have raised several issues for the Court to
address. First, FIMCO moved to have the Court's Findings
of Fact, Conclusions of Law, and Judgment altered, amended,
vacated, and supplemented and, alternatively, for a new
trial. [DN 379.] Second, the parties each dispute how to
interpret the injunction as it is currently worded. Third,
both parties request that the Court modify the scope of
injunction. Naturally, FIMCO moves to narrow the injunction
and Deere moves to broaden it. The Court will address all of
these issues below.
DISCUSSION
A.
Scope of the Injunction
1.
Types of FIMCO Equipment Covered
The
first dispute between the parties regarding the scope of the
injunction concerns the types of FIMCO equipment to which the
injunction applies. As it is currently worded, the injunction
extends to “FIMCO trailed and wheeled agricultural
equipment.” [DN 369 at 106.] According to FIMCO, this
wording means that the injunction extends only to “Ag
equipment”, which, according to its definition,
includes only “[t]railed and wheeled agricultural
equipment with large yellow wheels,
such as sprayers, applicators, elliptical sprayers and
Patriot pathfinder trailers.” [DN 388 at 13.] This
includes the following equipment:
(Image
Omitted)
[Id.] FIMCO's position is that the types of
equipment depicted in the above four photos are the only
types of equipment to which the injunction should extend.
[Id.]
FIMCO
goes on to argue that the injunction as currently worded
could, but should not, be construed to apply to what it calls
mere “large equipment, ” which includes
“[t]railed and wheeled equipment with smaller white
wheels and large tanks of more than 500 gallons, ”
such as the equipment in the following photo:
(Image
Omitted)
[Id.] FIMCO further argues that the injunction does
not and should not apply to “utility equipment, ”
which includes “Commercial, Turf, Lawn & Garden
equipment with smaller white wheels and a 500 gallon
or smaller tank, ” as is displayed in the following
picture:
(Image
Omitted)
[Id. at 14.] According to FIMCO, both large
equipment and utility equipment have small white wheels,
which indicates that they are “not designated for
agricultural use.” [Id. at 23.]
Next,
FIMCO argues that the injunction does not and should not
apply to “mounted equipment, ” which does not
have wheels at all:
(Image
Omitted)
[Id. at 14-15.] And finally, FIMCO claims that the
injunction does not and should not apply to its “lawn
and garden equipment, ” which also does not have
wheels, such as the following piece of equipment:
(Image
Omitted)
[Id. at 15.]
FIMCO's
argument that the injunction should only extend to
“FIMCO's green framed and yellow wheeled
agricultural sprayers and applicators, ” [DN 388 at 6],
rests on two main points. First, FIMCO claims that the text
of Deere's “three trademarks at issue expressly
require bright green frames/bodies and bright yellow
wheels.” [Id. at 16.] Therefore, according to
FIMCO, “it is axiomatic that products with
frames/bodies of a color other than bright green and wheels
of a color other than bright yellow cannot infringe.”
[Id.] Second, FIMCO argues that Deere's
complaint and Deere's evidence at trial was limited
solely to FIMCO's green and yellow “‘trailed
and wheeled' agricultural equipment, ” and
therefore that the injunction cannot extend to any type of
equipment that does not meet that description. [Id.
at 19.]
However,
the Court has consistently rejected FIMCO's arguments
that the only equipment or color arrangement that can
infringe Deere's trademark rights are those that are
identical to the equipment and marks over which
Deere has trademark rights. As the Court explained in its
Memorandum Opinion and Order denying FIMCO's motion for
summary judgment, [DN 161], “[t]he appearance of the
litigated marks side by side in the courtroom does not
accurately portray market conditions.” Daddy's
Junky Music Stores, Inc. v. Big Daddy's Family Music
Ctr., 109 F.3d 275, 283 (6th Cir. 1997) (quoting
Homeowners Grp., Inc. v. Home Mktg. Specialists,
Inc., 931 F.2d 1100, 1106 (6th Cir. 1991)).
Rather, courts must determine whether a given mark would
confuse the public when viewed alone, in order to account for
the possibility that sufficiently similar marks
“may confuse consumers who do not have both marks
before them but who may have a ‘general, vague, or even
hazy, impression or recollection' of the other
party's mark.”
Id. (quoting Wynn Oil Co. v. Thomas, 839
F.2d 1183, 1188 (6th Cir. 1988)). Accordingly, “courts
must view marks in their entirety and focus on their overall
impressions, not individual features.” Id.
This approach is commonsense when considering the fact that
“[o]wnership of a mark confers both the right to use a
particular mark and the right to prevent others from using
the same or a confusingly similar mark.”
Homeowners Grp., 931 F.2d at 1106. Therefore,
whether FIMCO's equipment is trailed or wheeled and
whether it uses the exact same placement of green and yellow
as is recited in Deere's trademarks is not the issue.
Whether FIMCO's use of green and yellow is
“confusingly similar, ” however, is the question
for trademark infringement purposes.
And for
trademark dilution purposes, the question is whether an
“association aris[es] from the similarity
between a mark or trade name and a famous mark that impairs
the distinctiveness of the famous mark.” 15 U.S.C
§ 1125(c)(2)(B) (emphasis added). In the dilution
context, “[t]he purpose . . . is to provide a narrow
remedy when the similarity between two marks is great enough
that even a noncompeting, nonconfusing use is harmful to the
senior user.” AutoZone, Inc. v. Tandy Corp.,
373 F.3d 786, 805-06 (6th Cir. 2004) (quoting Jet, Inc.
v. Sewage Aeration Sys., 165 F.3d 419, 425 (6th Cir.
1999)). In the Court's Findings of Fact and Conclusions
of Law, the Court noted that the parties stipulated to the
fact that the green and yellow colors FIMCO uses on its
equipment are indistinguishable from the green and yellow
colors Deere uses. [DN 369 at 70, 95.] Additionally, the
Court found that “the placement of the green and yellow
colors on the parties' respective agricultural equipment
is also very similar. FIMCO's sprayers and applicators
predominantly feature yellow tanks, yellow wheels, and green
frames. [See, e.g., PX-301; PX-331.] Likewise,
Deere's sprayers and applicators feature yellow tanks,
yellow wheels, and green frames. [See, e.g., PX-6;
PX-7.].” [Id. at 70.] Finally, the Court noted
that “photographs of FIMCO trailed agricultural
equipment being pulled by John Deere tractors likewise show
the high degree of similarity between the use of green and
yellow on the two types of goods.” [Id. at
96.] Therefore, while FIMCO is correct that district courts
“should limit the scope of the injunction to the
conduct ‘which has been found to have been pursued or
is related to the proven unlawful conduct, '”
Howe v. City of Akron, 801 F.3d 718, 753 (6th Cir.
2015) (quoting E.E.O.C. v. Wilson Metal Casket Co.,
24 F.3d 836, 842 (6th Cir. 1994)), any confusingly similar
use of green and yellow properly fits within the purview of
an injunction in this case.
As
Deere points out, courts issuing injunctions after finding
trademark infringement and trademark dilution have not
limited those injunctions only to the exact goods or
services that were found to use the protected trademark in an
infringing manner, as FIMCO seeks to do here. For instance,
Deere cites to the Michigan district court's decision in
Audi AG v. D'Amato, in which the infringing
party used various Audi trademarks and logos on merchandise
offered for sale on his website, www.audisport.com.
Audi AG v. D'Amato, 381 F.Supp.2d 644, 649, 660
(E.D. Mich. 2005), aff'd, 469 F.3d 534 (6th Cir.
2006). Though the defendant used Audi's logos on hats and
shirts (as did Audi itself), the district court enjoined the
defendant from any use of Audi's trademarks and logos on
“any service or product, ” not just hats
and shirts. Id. at 669 (emphasis added). In detail,
after finding both trademark infringement and trademark
dilution, the district court enjoined the defendant from
“using any simulation, reproduction, counterfeit, copy
or colorable imitation of the Audi Trademarks or trade dress
in connection with the promotion, advertisement, display,
sale, offering for sale, manufacture, production, circulation
or distribution of any service or product.”
Id. The Sixth Circuit affirmed the district
court's decision and award of injunctive relief. Audi
AG v. D'Amato, 469 F.3d 534, 550 (6th Cir. 2006).
More
recently, in Rolls-Royce Motor Cards Ltd. v. Davis,
the district court found that the defendant infringed on
Roll's Royce's trademarks when he “record[ed]
and s[old] music under the stage name ‘Rolls Royce
Rizzy, '” “advertise[d] his music under that
name on his YouTube channel, ” sold “shirts that
contain[ed] the words ‘Team Rolls Royce' through
his online store, http://rollsroycerizzy.spreadshirt.com,
” and “ma[de] use of the RR Badge.”
Rolls-Royce Motor Cards Ltd. v. Davis, No. 15-0417
(KM), 2016 WL 3913640, at *1 (D. N.J. Mar. 11, 2016). Though
the defendant used Roll's Royce's trademarks in a
different manner than Rolls Royce does, in connection with
the distribution of Rolls Royce vehicles, the district court
nonetheless permanently enjoined defendant from using those
trademarks, ‘or any other reproduction, copy, or
colorable imitation of the ROLLS-ROYCE mark in any manner
in connection with the conduct of his business, either
alone or in conjunction with other words.” Id.
at *11.
Our
sister district court in Maker's Mark Distillery,
Inc. v. Diageo North America, Inc., similarly enjoined
the defendants from using Maker's Mark's red dripping
wax seal not only on the exact Cuervo bottle that was found
to be infringing, but in connection with any
“Cuervo tequila products at any locality within the
United States.” Maker's Mark Distillery, Inc.
v. Diageo N. Am., Inc., 703 F.Supp.2d 671, 702 (W.D. Ky.
2010), aff'd, 679 F.3d 410 (6th Cir. 2012).
Based
on the above cases, the Court disagrees with FIMCO's
argument that the injunction should extend “only [to]
trailed and wheeled agricultural sprayers and
applicators.” [DN 394 at 10.] The Court is also
skeptical of FIMCO's distinctions between what it now
refers to as its “ag equipment, ” “large
equipment, ” “utility equipment, ”
“mounted equipment, ” and “lawn and garden
equipment, ” all marketed under FIMCO's Ag Spray
brand. [See DN 388 at 13-15.] As Deere points out,
FIMCO has never made these distinctions between the equipment
in its Ag Spray division at any point in this litigation
until now. Rather, at trial, Dave Wipson, FIMCO's
President and COO, testified that FIMCO has “two
divisions. We have what we consider our lawn and garden
division, which goes under the FIMCO brand, and then we have
our ag division, which currently goes under the Ag Spray
brand.” [DN 238 at 41 (Dave Wipson Trial Testimony).]
Wipson further explained that the FIMCO lawn and garden
equipment is generally “white with red and black
accents, ” and primarily includes such equipment as
fifteen to forty gallon sprayers and “a full line of
attachments that would typically go behind a lawn and garden
tractor or riding lawnmower or an ATV. So we offer carts that
can be towed behind, aerators, spikers, things that you would
use to take care of an acre-size lawn or so.”
[Id. at 41-42.]
With
regard to FIMCO's Ag Spray division, Wipson explained
that “Ag Spray” is “the brand that we use
on the ag side of our business. And our primary colors that
we use for ag sprayers is green and yellow.”
[Id. at 43.] Wipson testified at length that the ...