Miller Brewing Co. v. Carling O'Keefe Breweries of Canada, Ltd.
199 U.S.P.Q. (BNA) 470, 452 F. Supp. 429, 1978 U.S. Dist. LEXIS 17378 (1978)
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Rule of Law:
The use of a trademark in television commercials broadcast within the United States constitutes "use in commerce" under the Lanham Act, establishing jurisdiction even if the product is not sold in the U.S. A preliminary injunction is warranted where a mark is so strikingly similar in appearance and pronunciation to a competitor's strong, pre-existing mark for a related product that it is likely to cause consumer confusion.
Facts:
- Miller Brewing Company ('Miller') has long brewed, marketed, and extensively advertised its premium beer under the registered trademark 'HIGH LIFE'.
- In 1975, Miller also began nationally marketing a reduced-calorie beer under the registered trademark 'LITE', promoting it with a unique and heavily-funded series of television commercials featuring famous athletes in tavern settings.
- Miller registered its claims to copyright in its LITE commercials.
- In February 1978, Carling O’Keefe Breweries of Canada, Ltd. ('Carling'), a Canadian brewer, began selling a new reduced-calorie beer in Canada under the name 'HIGHLITE'.
- Carling does not sell its HIGHLITE beer anywhere in the United States.
- To promote HIGHLITE to Canadian audiences, Carling created television commercials featuring themes also present in Miller's LITE commercials, such as men arm-wrestling in a tavern.
- Carling contracted with Taft Broadcasting Company to broadcast its HIGHLITE commercials on a television station in Buffalo, New York, because the station's signal is received by viewers in Ontario, Canada.
Procedural Posture:
- Miller Brewing Company filed a lawsuit against Carling O'Keefe Breweries of Canada, Ltd. and Taft Broadcasting Company in the United States District Court for the Western District of New York.
- The complaint alleged copyright infringement, trademark infringement, and unfair competition.
- Miller Brewing Company then filed a motion for a preliminary injunction, seeking to restrain the defendants from broadcasting the HIGHLITE television commercials pending the final resolution of the case.
- The case is before the district court for a determination on the plaintiff's motion for a preliminary injunction.
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Issue:
Does a Canadian brewer's use of the trademark 'HIGHLITE' in television commercials broadcast in the United States constitute trademark infringement of the established 'HIGH LIFE' mark, thereby warranting a preliminary injunction to halt the broadcasts?
Opinions:
Majority - Elfvin, District Judge.
Yes, the use of 'HIGHLITE' in U.S. television broadcasts likely constitutes trademark infringement of the 'HIGH LIFE' mark and warrants a preliminary injunction. Although the copyright claim fails, the trademark claim is likely to succeed. With respect to copyright, the general themes used in Carling's commercials—such as arm wrestling, arguments in a tavern, and reciting poetry—are unprotectable ideas, not the specific, protected expressions found in Miller's ads. However, the trademark claim has merit. The court has jurisdiction because broadcasting commercials in the U.S. constitutes 'use in commerce' under the Lanham Act, regardless of where the product is sold. In assessing the likelihood of confusion, the court found that the 'HIGHLITE' mark is strikingly similar in appearance and pronunciation to Miller's 'HIGH LIFE' mark. Given that 'HIGH LIFE' is a strong, arbitrary mark for a closely related product (beer) and that consumers are unlikely to exercise a high degree of care when purchasing such an inexpensive item, there is a strong probability of confusion as to the source of the product. Carling, as a 'second comer' to the market, had a duty to select a mark that would avoid such confusion, and the evidence suggests an intent to trade on Miller's goodwill.
Analysis:
This case clarifies two significant legal principles in intellectual property law. First, it demonstrates the limits of copyright protection for advertisements, reinforcing that common themes and advertising tropes fall on the 'idea' side of the idea-expression dichotomy and are not protectable. Second, and more importantly, it establishes a broad interpretation of 'use in commerce' for Lanham Act jurisdiction, holding that merely broadcasting advertisements into the U.S. is sufficient, even without any domestic sales of the product. This decision has a significant impact on foreign companies that advertise to cross-border markets, putting them on notice that their branding is subject to U.S. trademark law if their commercials reach a U.S. audience.
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