469 F. 2d 1063 - Amf Incorporated v. International Fiberglass Company Inc

The appellee, AMF, Incorporated (AMF), makes and sells the "Sunfish" sailboat, the name having been a registered trademark since 1959. Appellant Caccavaro was and is president and owner of International Fiberglass Company, Inc. ("Fiberglass") and of its successor corporation, the appellant International Boat Co., Inc. ("Boat"). In 1971, AMF sued Fiberglass for trademark infringement and unfair competition, its claim arising from Fiberglass' having made and sold, under the name "Funfish", a sailboat which resembled the Sunfish.

AMF's suit against Fiberglass was terminated by the entry of a final decree on December 23, 1971 to which all parties consented.1

On May 10, 1972, AMF filed a contempt petition against Caccavaro and Fiberglass, and, later (when it learned that Boat had succeeded Fiberglass) against Boat, charging violations of the consent decree. After hearing, the district court found the appellants to be in contempt. It ordered Fiberglass and Boat, jointly and severally, to pay a fine of $1,000, and Caccavaro to pay a fine of $500, to AMF, to recompense it for loss of goodwill and costs of the proceeding. Caccavaro and Boat, but not Fiberglass, have appealed.

We affirm. The record fully supports the district court's findings that appellants had engaged in conduct which violated the terms of the decree.

There was evidence of advertising and representations associating appellants' boat (named, since entry of the decree, a "Viking") with the Sunfish.2 The Viking was listed in a dealer's advertisement as a "Sunfish Class Sailboat". An ad, under the name of Boat, pictured a sailboat with the caption, "Ours is a Fish too!" Signs at the boat shows in New York and Boston read, "What's the price of Fish? High Priced Fish $4.10 lb. Our Fish $2.87 lb." Caccavaro said at a boat show that the Viking and Sunfish were identical and had interchangeable sails, and that the Sunfish people "have had a hard time finding the difference. . . ." A dealer advertised, "Compare the new Viking with other identical well known sailboards." There was evidence from which the district court could reasonably infer appellants' responsibility for dealers' advertisements.

The district court could conclude that such representations of identity and interchangeability of parts, and use of the words "fish" and "sunfish class", were intended and were likely to cause confusion and a dilution of the distinctive quality of the Sunfish trademark. They also violated express prohibitions in paragraphs (3) and (4).

While "fish" is a generic term, its use here was not innocent as appellants contend. Having been forbidden to use "Funfish", appellants can reasonably be found to have selected "fish" to convince buyers that the boat was still in essence a Sunfish at bargain prices. A party under injunction "must do more than see how close [it] can come with safety to that which [it was] enjoined from doing." Eskay Drugs, Inc. v. Smith, Kline & French Laboratories, 188 F.2d 430, 432 (5th Cir. 1951).

That appellants were representing the Viking boat to be exactly like the Sunfish-in violation of paragraphs (3) and (4) of the decree-was further shown by Caccavaro's letter to dealers, on Boat's letterhead, representing that Boat "began making the same boat" as a sailboat called "Sunfish" and that its price was "much less".

The evidence also supports the district court's finding that by advertising bogus "discounts" the appellants violated provisions of the decree relating to pricing.

The appellants may not, of course, now attack the terms of the decree. United States ex rel. Shell Oil Co. v. Banco Corp., 430 F.2d 998, 1001 (8th Cir. 1970); Hopp Press, Inc. v. Joseph Freeman & Co., 323 F.2d 636, 637 (2nd Cir. 1963); Kiwi Coders Corp. v. Arco Tool & Die Works, 250 F.2d 562, 568 (7th Cir. 1957). See also Maggio v. Zeitz, 333 U.S. 56, 68, 68 S.Ct. 401, 92 L.Ed. 476 (1948). They were bound to obey until the court modified the decree. Their afterthoughts about its wording are particularly inappropriate where they had consented to the terms. See United States v. Armour & Co., 402 U.S. 673, 681-682, 91 S.Ct. 1752, 29 L.Ed.2d 256 (1971).

Since the district court's findings are plainly supported in the record, we prefer to express no opinion on the merits of appellee's rather refined argument that Boat's appeal is moot in the absence of Fiberglass as a co-party appellant.

Affirmed. Double costs in favor of the appellee.