Monday, July 10, 2006
Court Upholds Injunction Against Nevada Air Show Vendor
By a MetNews Staff Writer
The Ninth US. Circuit Court of Appeals Friday upheld a permanent injunction prohibiting a vendor from selling unlicensed merchandise outside the gates of the annual Reno Air Show in Nevada.
Judges Arthur L. Alarcón and M. Margaret McKeown, along with H. Russel Holland, senior district judge for the District of Alaska, sitting by designation, unanimously upheld the ruling of U.S. District Court Judge Howard D. McKibben of Nevada that Jerry McCord infringed the trademark of Reno Air Racing Association, Inc.
The appellate panel, however, reversed the district judge’s finding that McCord committed civil contempt by violating a temporary restraining order.
Reno Air operates an annual air racing show at the Reno/Stead Airport in Nevada. The show features planes racing around pylons and performances by stunt aircraft.
The event, advertised as the as “Reno Air Races,” draws up to 90,000 people each year, generating millions of dollars for Reno Air.
Reno Air has registered its trademark logo —consisting of a checkered pylon with two airplanes circling it — to identify the event and merchandise promoting the event.
McCord sold t-shirts, caps and mugs containing images of at least one plane and a pylon and the words “Reno Air Races” from booths just outside the gates of the races between 1999 and 2002, the record showed.
Reno Air filed suit seeking damages and an injunction alleging that McCord infringed its federally registered “pylon logo” mark and its unregistered “Reno Air Races” mark.
After McKibben entered judgment finding that McCord had violated both the pylon and the “Reno Air Race” trademarks, McCord appealed with respect to the pylon trademark, arguing that the trademark was invalid because the python depicted was generic.
McKeown, writing for the Ninth Circuit, disagreed, saying, “[T]he district court correctly focused its validity inquiry on the trademark as a whole and appropriately concluded that McCord failed to meet his burden of showing that the registered pylon logo had become generic.”
McCord also argued that the airplane and pylon shown on his merchandise did not resemble those on Reno Air’s trademark, and thus was not confusingly similar.
Declining McCord’s invitation to compare the figures, McKeown explained, “The confusing similarity arose from the fact that McCord sold merchandise featuring the airplane/pylon motif alongside the terms ‘Reno Air Races,’ outside the gates of the air show, in close proximity to the sale of official merchandise.”
On the same day it filed suit, Reno Air obtained an ex parte temporary restraining order, asserting that the TRO must issue without notice because of the significant risk that McCord might leave the area and destroy or conceal infringing merchandise once McCord received notice of the lawsuit. However the only evidence to support the allegations was a declaration by Reno Air’s counsel that in his experience, this is a common occurrence when dealing with infringers at one-time famous events, McKeown noted.
McKeown said the application offered no support for the argument that there was a significant risk that McCord, who had been working in the area for many years, might leave the area.
The court held that the TRO was improperly granted ex parte.
The court also found that the TRO lacked fair notice of the prohibited conduct because it did not identify or forbid infringement of Reno Air’s trademark, but attached a picture of t-shirts sold by McCord and prohibited infringement of the trademarks depicted therein.
McKeown said, “This appeal highlights the sometimes routine fashion in which TROs are issued to unsuspecting parties, who, lacking fair notice of the prohibited conduct, may unwittingly invite a contempt citation.”
The case is Reno Air Racing Association, Inc. v. McCord, 04-16001.
Copyright 2006, Metropolitan News Company