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U.S. District Court for the Northern District of Illinois - 342 F. Supp. 203 (N.D. Ill. 1972)
May 3, 1972
342 F. Supp. 203 (1972)
Wilbur A. HEINEMANN, Jr., Plaintiff,
v.
GENERAL MOTORS CORPORATION, Defendant.
No. 70 C 3023.
United States District Court, N. D. Illinois, E. D.

February 28, 1972.
On Motion for Amendment of Judgment May 3, 1972.
George Bullwinkel, Chicago, Ill., for plaintiff.

E. Manning Giles, Chicago, Ill., for defendant.


MEMORANDUM OPINION AND ORDER
BAUER, District Judge.

This cause comes on plaintiff's and defendant's cross-motions for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure.

Plaintiff, Wilbur A. Heinemann, Jr. (hereinafter referred to as "Heinemann"), is a resident of Indiana. Defendant, General Motors Corporation (hereinafter referred to as "GM"), is a Delaware corporation licensed to do business *204 in the State of Illinois. The amount in controversy exceeds $10,000, exclusive of interests and costs, and this Court is alleged to have jurisdiction to hear this case under diversity of citizenship and various federal statutes dealing with trade marks and unfair competition. The material facts in this case are not in dispute and, accordingly, the matter is appropriate for disposition by summary judgment.

Ever since he was quite young the Plaintiff has been interested in automobiles. Upon obtaining his first car at the age of 18, Heinemann began "modifying" it as soon as he could. Plaintiff's interest led him to purchase a succession of automobiles, many of which he "modified" or changed radically. In 1961, Heinemann extensively modified a 1951 Ford convertible which he named "SAINTNIC'S SLAY" and exhibited in several automobile shows. In 1964, the Plaintiff modified a 1958 Chevrolet which he named "BRAND X" and entered in drag races. Later in 1964, Plaintiff acquired an interest in a 1932 Model A Ford, the automobile involved in the instant suit. Upon acquisition of this interest, Heinemann began extensive modification of this automobile in his spare time.

In February of 1968, Plaintiff, with his brother and a friend, narrowed down the number of possible names for this heretofore unnamed automobile to four "The Machine", "The Judge", "The Boss" and "Shotgun". After a discussion, the name "The Judge", was selected. The origin of this name and Heinemann's reason for selecting it are clearly shown by this colloquy during the Plaintiff's deposition:


Q [Mr. Ballard] When did the possibility of naming it The Judge first occur to you, if you recall?

A [Heinemann] When the television show Laugh-In came on the air and became the great topic of conversation. It became so popular.[1]
On June 15, 1968, Plaintiff had the words "The Judge" painted on the side of his automobile by an advertising company.

On July 2, 1968, Plaintiff displayed his automobile in the showroom of a Milwaukee, Wisconsin, Chevrolet dealer; Plaintiff received no money for displaying the automobile but did receive free radio advertising and free entry to the July 4, 1968, week-end racing at Union Grove, Wisconsin. In the next two or three months, Plaintiff exhibited or raced his car at several events in the Milwaukee area. These included the "Summerfest" event in July, the "Youth on Wheels" exhibit in August, and the Great Lakes Dragway event in September. Heinemann was not paid for participating in any of these events although he did receive a mileage allowance of $27.50 in October for having brought his car to the "Youth on Wheels" exhibit.

During the spring of 1968, officials of GM's Pontiac Motor Division (hereinafter referred to as "Pontiac") decided to produce a new, high performance model of its Tempest GTO line. John Z. DeLorean, Vice President of GM and General Manager of Pontiac from July, 1965, to February, 1969, stated on affidavit that he had decided to name this new model "The Judge" on July 19, 1968, subject to clearance from Defendant's General Counsel's office that the name was available for Pontiac's use. Mr. DeLorean stated:


That the Rowan and Martin TV Show "Laugh In" is one of his favorite TV programs, which he has watched at every opportunity and that from the time he first heard the expression "Here Comes de Judge" on the TV Show "Laugh-In", in the fall of 1967, he thought that the name *205 "THE JUDGE" would be a good name for an automobile.

That he selected the name "THE JUDGE" because of the popularity of the expression "Here Comes de Judge" on the Rowan and Martin TV Show "Laugh In".

That he never heard of plaintiff, Wilbur A. Heinemann, or his rebuilt 1932 Ford called THE JUDGE until September 29, 1971, when Mr. Mosher of General Motors Legal Staff advised him of the [instant] suit.
On July 30, 1968, an officer of Pontiac asked George R. Mosher, a member of GM's General Counsel, to advise Pontiac on the availability of the words "Judge" and "TJ" for use with automobiles. After a thorough search disclosed no prior use of the words "Judge" or "TJ" for automobiles, GM's General Counsel sent a letter of opinion dated August 6, 1968, to Pontiac indicating that such names were available.

The first public showing of Pontiac's "The Judge" was on September 26, 1968; that same day Heinemann learned of Pontiac's new automobile when he went to a local Pontiac dealer to see the new 1969 line of automobiles. Prior to that date, Heinemann had no knowledge whatsoever that GM was going to produce an automobile with the same name as his own. Shortly after learning of Pontiac's new automobile, Plaintiff went to be a law firm and, on October 1, 1968, made application for registration of the trade mark "The Judge" with the State of Wisconsin. On October 3, 1968, the following trade mark was registered with the State of Wisconsin in Heinemann's name: