(1986) Tags: Paramount
Paramount Pictures Corp. v. Dorney Park Coaster Co.
Electronic Realty Assoc. v. Paramount Pictures
Defendant Zamperla, Inc., sells amusement rides, recreational goods and game machines. One of Zamperla’s products, the subject of this lawsuit, is a participatory ride, known as “TOP GUN”, which combines the typical circular and/or vertical motion of an amusement ride with a video game.
In November, 1987, at a trade show in New Orleans, Zamperla sold one such ride to Dorney Park Coaster Company, which maintains its principal place of business, the operation of an amusement park, in Allentown, Pennsylvania. The ride was installed in time for the 1988 summer season at Dorney Park, and it thus became the only amusement park in the United States to operate a ride of this type.
As the result of a letter received from a Dorney Park employee in June, 1988, Paramount became aware of the Top Gun ride and addressed letters to both Zamperla and Dorney demanding that they cease and desist from using the name Top Gun and a design on the center portion of the ride, as installed at Dorney Park, which Paramount characterized as a copy of the distinctive logo developed in connection with the movie and included on various goods distributed by Paramount licensees.
Paramount subsequently filed suit against Dorney and Zamperla and moved for a preliminary injunction. Paramount’s claims are based upon 15 U.S.C. § 1125(a), a portion of the trademark laws which prohibits a false designation of the origin of goods or services and is, in effect, the federal statutory counterpart to common law actions for unfair competition. In addition, Paramount has asserted a claim under the copyright laws, 17 U.S.C. § 101, et seq. and pendent state law claims under the statutory and common law of Pennsylvania for trademark infringement, unfair competition and dilution.
Judgment: Plaintiff’s motion for a preliminary injunction and defendant’s response thereto, IT IS ORDERED that plaintiff’s motion is GRANTED.
Defendant Zamperla, Inc., together with its officers, directors, agents, employees, successors, assigns and all those controlled by them, or in active concert or participation with them are, until further order of this Court, ENJOINED
(1) From reproducing, copying, colorably imitating or otherwise using in any way in connection with defendant’s business or services, Paramount’s “Top Gun” trademark;
(2) From using in any way in connection with its business or services any other name, artwork, logo or trademark so similar to Paramount’s trademarks as to be likely to cause confusion, to cause mistake or to deceive;
(3) From using, licensing or authorizing others to use Paramount’s trademarks in any manner which suggests an association with or sponsorship by Paramount;
(4) From misappropriating Paramount’s trademarks;
(5) From trading on Paramount’s name and mark, reputation and goodwill;
(6) From passing off defendant’s services as those of Paramount;
(7) From injuring Paramount’s business reputation and otherwise unfairly competing, directly or indirectly, with Paramount.
Electronic Realty Assoc. v. Paramount Pictures
Plaintiff has brought this declaratory judgment action seeking the court’s determination that it has not infringed upon any valid trademark rights and/or copyrights possessed by defendants. Defendants respond and contend that dismissal or transfer of plaintiff’s action against defendant Famous Music is appropriate.
Defendant Famous Music grants licenses to third parties that allow the use of the musical compositions that it owns. Famous Music collects royalty payments for that usage. In order for a third party to incorporate one of defendant Famous Music’s musical compositions in synchronization with visual images, such as in a videocassette presentation, that person must seek a “synchronization license.” Defendant Famous Music negotiates directly with third parties seeking a synchronization license and it maintains the right to determine whether, and upon what terms, it will issue such a license.
Plaintiff developed a “Top Gun” training program. In conjunction with this training program, plaintiff had a logo designed and had a promotional training video produced that incorporated allegedly protected trade-mark and copyrighted materials of defendant Paramount’s “Top Gun” motion picture. Specifically, plaintiff’s “Top Gun” promotional training video contains footage of defendant Paramount’s “Top Gun” movie and the accompanying synchronization of the “Top Gun” musical compositions owned by defendant Famous Music. Plaintiff did not negotiate, nor obtain the necessary licenses to use the “Top Gun” footage or music in its promotional training video.
In late 1994, defendant Paramount sent plaintiff two cease and desist letters. Defendant Paramount informed plaintiff in those letters that the logo plaintiff was using in its “Top Gun” training program was an infringement upon defendant Paramount’s trademark rights. Defendant Famous Music joined defendant Paramount in sending another cease and desist letter in December 1995. In that letter, defendants informed plaintiff that the “Top Gun” promotional training video infringed upon their copyrighted material. This letter was the only contact that defendant Famous Music had with plaintiff in the state of Kansas.