The opinion of the court was delivered by: SWEET
ROBERT W. SWEET, U.S.D.J.
Defendant, The Goodyear Tire & Rubber Company ("Goodyear"), has brought a motion pursuant to Rule 12, Fed.R.Civ.P., to dismiss the complaint filed by plaintiffs Airship Industries (UK) Ltd. and Airship Industries (USA), Inc. (collectively "Airship"). For the following reasons the motion will be denied in part and granted in part.
Airship designs, manufactures and operates lighter-than-air "airships," also commonly known as "blimps." During the 1980s, blimps produced by Airship have been used for a variety of commercial and military purposes. A significant portion of Airship's business is the lease or sale of blimps to other companies for use in aerial advertising and related print, media and other advertising depicting blimps. Citibank, Resorts International, Fuji, The Swan Brewery Company Limited, Pan Am and British Caledonian Airlines have all promoted and advertised their services and goods in the United States and other countries by means of airships produced and operated by Airship Industries. Airship Industries blimps have flown throughout the continental United States and have appeared at the 1984 Olympic Games, Rose Bowl, the Rose Bowl Parade, the Farm Aid Concert, the New York City Marathon, the Boston Marathon and various baseball games. In addition to engaging in direct aerial advertising on airborne blimps, these firms have engaged in related advertising and promotional activities, including advertisements in print, the media and point-of-purchase displays showing photographs, pictures or other depictions of these airships promoting the companies and their products ("secondary advertising").
Airship promotes its blimps to prospective customers by the benefits resulting from not only the display of their company logo and products on airborne blimps, but also the depiction of their products in association with blimps in secondary advertising. The relationship between aerial and secondary blimp advertising is reflected in the contracts between Airship and its customers. For example, the contract pursuant to which Fuji is using the airships states:
[Airship] hereby authorizes Charterer's and/or Charterer's clients [i.e., Fuji] pursuant to Charterer's request to photograph and film the Airship and Airship's crew for the purpose of utilizing same for Charterer's advertising and promotion purposes only.
Goodyear has been operating blimps since 1919 and currently operates three blimps in the United States which each travel approximately 100,000 air miles each year. Although at one time Goodyear chartered its blimps to other advertisers, since 1955 Goodyear has refused all requests from other companies to purchase or rent blimps. Goodyear spends approximately $10 million, or one-fourth of its annual advertising budget, maintaining and promoting its blimps. In addition, Goodyear utilizes the depiction of a blimp as a trademark in connection with its advertising, promotion and sale of goods. The design of the blimp alone and in conjunction with the Goodyear name has been registered with the United States Patent and Trademark Office.
Recently, Goodyear filed two civil actions in Florida and Nebraska against one of Airship's customers seeking damages and injunctive relief based on these states' anti-dilution statutes. The Florida action was filed on December 20, 1985 in a circuit court of the State of Florida against Fuji. This action was subsequently removed to the federal district court on the basis of diversity of citizenship and it is anticipated that a motion by Fuji to transfer to this district may be resolved in the near future.
Goodyear's single claim for relief in that action arises under the Florida Anti-Dilution Statute, Fla. Stat. Ann. § 495.151 (West 1972), which provides:
Every person, association, or union of workingmen adopting and using a mark, trade name, label or form of advertisement may proceed by suit, and all courts having jurisdiction thereof shall grant injunctions, to enjoin subsequent use by another of the same or any similar mark, trade name, label or form of advertisement if it appears to the court that there exists a likelihood of injury to business reputation or of dilution of the distinctive quality of the mark, trade name, label or form of advertisement of the prior user, notwithstanding the absence of competition between the parties or of confusion as to the source of goods or services.
Goodyear alleges that Fuji has promoted its products through a "Play Blimpo" game or bonus promotion in which Fuji distributes "Play Blimpo" cards utilizing the shape and symbol of a blimp as a prominent element in the design of the card. Goodyear claims that "the continued use of the shape and symbol of a blimp in Fuji's and Fuji U.S.A.'s print and media advertising and in point-of-purchase marketing and promotion by Fuji . . . is likely to injure the business reputation of Goodyear, . . . is likely to dilute the distinctive quality of Goodyear's blimp trademark" and "may cause Goodyear's blimp trademark to lose its distinctiveness entirely and destroy the advertising value of Goodyear's blimp trademark." Goodyear asks for damages and an injunction prohibiting use of "the shape and symbol of a blimp, or depiction of a blimp in the printed advertising, broadcast media advertising, point-of-purchase marketing and promotional materials and any other advertising and promotional materials." Goodyear has not sought to enjoin Fuji from buying or leasing blimps from Airship or others or from using blimps as "flying billboards" to carry Fuji's name or advertising.
The Nebraska action was filed by Goodyear on the same day, December 20, 1985 in the United States District Court for the District of Nebraska. It contains the same factual allegations, including the allegations regarding the "Play Blimpo" promotion, but sets forth two counts, both arising under statutes of the State of Nebraska. The first count alleges a violation of the Nebraska Anti-Dilution Statute, Neb.Rev.Stat. § 87-122 (1981), which provides:
Likelihood of injury to business reputation of or dilution of the distinctive quality of a trademark . . . valid at common law, shall be a ground for injunctive relief not withstanding the absence of competition between the parties or the absence of confusion as to the source of goods.
Goodyear alleges that "the use of the shape and symbol of a blimp" in Fuji's "print and media advertising and in point-of-purchase marketing and promotion" is likely to injure Goodyear's business reputation, dilute the distinctive quality of its blimp trademark, and destroy the advertising value of the blimp trademark.
Goodyear's second count alleges a violation of the Nebraska Deceptive Trade Practice Statute, Neb.Rev.Stat. § 87-302 (1981), which provides:
(a) A person engages in a deceptive trade practice when in the course of his business, vocation, or occupation, he . . . (3) causes likelihood of confusion or of misunderstanding as to affiliation, connection, or association with, or certification by, another . . .
Goodyear alleges that Fuji's use of "the shape and symbol of a blimp in its print and media advertising and promotion activities and in its point-of-purchase marketing and promotional materials is likely to cause confusion or misunderstanding as to ...