No Preliminary Injunction for GM and the Hummer
Can one talk about the Hummer without mentioning Arnold Schwarzenegger? Apparently not. In General Motors Corp. v. Urban Gorilla, LLC, No. 06-4128, the Tenth Circuit affirmed the denial of a preliminary injunction to GM in its trade dress and dilution claims against a company that sells steel "body kits." These body kits, which GM claims are a knock-off of the Hummer, allow customers to install a new body on top of an existing truck chassis for about $10,000.
However, back in 1998 (Urban Gorilla's predecessor had been selling the steel body kits since 1997), GM's predecessor in interest sent a cease and desist letter to Urban Gorilla's predecessor claiming that the body kits infringed its Hummer trademarks. In response, Urban Gorilla's predecessor made changes to the body kit design and GM's predecessor did not pursue the matter further. But in February 2006, GM filed a complaint against Urban Gorilla claiming, among other things, trade dress infringement and dilution and sought preliminary injunctive relief. But the District Court denied GM's request for a preliminary injunction, concluding that GM had not marshaled sufficient evidence to justify the relief.
The Tenth Circuit agreed, affirming the District Court's decision and also suggesting that GM may need the Hummer to navigate the possibly rough terrain ahead of it in pursuing its claims. Interestingly, both the District Court and the Tenth Circuit appeared to have doubts about the strength of GM's trade dress claim. Indeed, the Tenth Circuit noted that the District Court appeared to be "skeptical as to whether the allegedly unique features of the Hummer were not actually shared by all military-style vehicles." In addition, although not addressed on appeal, Urban Gorilla raised several seemingly meritorious defenses including laches, acquiescence and estoppel.
And for the record, the mention of Arnold Schwarzenegger came in the Tenth Circuit's recitation of the Hummer's history, noting that the civilian version of the Humvee (the Hummer) came about "[a]t the urging of then-actor and now Governor Arnold Schwarzenegger."
