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Pebble Beach Co. v. Tour 18 I Ltd.

United States Court of Appeals for the Fifth Circuit

September 14, 1998, Decided

No. 96-21102

Opinion

 [***1067]   [*532]  KING, Circuit Judge:

Defendant Tour 18 I, Ltd. appeals the district court's judgment that it infringed and diluted the plaintiffs' service marks and one of the three golf-hole designs at issue, and it challenges the district court's injunction [**2]  as vague, punitive, and overly broad. See Pebble Beach Co. v. Tour 18 I, Ltd., 942 F. Supp. 1513 (S.D. Tex. 1996). Plaintiffs Pebble Beach Co.; Resorts of Pinehurst, Inc.; and Sea Pines Co., Inc. cross-appeal, arguing that (1) the district court erroneously held that two of the three golf-hole designs at issue were not infringed or diluted, (2) its injunction is inadequate to bar future infringement, and (3) its denial of an accounting of profits and an award of attorneys' fees was erroneous. See id. We affirm the district court's judgment as modified below.  [*533]  I. BACKGROUND 1 

Defendant-appellant-cross-appellee Tour 18 I, Ltd. (Tour 18) owns and operates a public golf course in Humble, Texas named "Tour 18." Tour 18 began life as a limited partnership that subsequently merged into Tour 18, Inc.  [**3]  , which also owns and operates a "Tour 18" public golf course in Flower Mound, Texas. Tour 18 has created these two golf courses exclusively of golf holes copied from famous golf courses across the country. The Tour 18 course in Humble, Texas has three golf holes that are copies of golf holes from golf courses owned and operated by plaintiffs-appellees-cross-appellants Pebble Beach Co. (Pebble Beach); Resorts of Pinehurst, Inc. (Pinehurst); and Sea Pines Co., Inc. (Sea Pines) (collectively, the Plaintiffs).

A. The Plaintiffs

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155 F.3d 526 *; 1998 U.S. App. LEXIS 22363 **; 48 U.S.P.Q.2D (BNA) 1065 ***

PEBBLE BEACH COMPANY; SEA PINES COMPANY INCORPORATED, Plaintiffs-Appellees-Cross Appellants, v. TOUR 18 I LIMITED, Defendant-Appellant-Cross Appellee. RESORTS OF PINEHURST INCORPORATED, Plaintiff-Appellee-Cross Appellant, v. GOLFORMS INCORPORATED; ET AL, Defendants, TOUR 18 I LIMITED, Defendant-Appellant-Cross Appellee.

Subsequent History:  [**1]  Rehearing Denied October 26, 1998, Reported at: 1998 U.S. App. LEXIS 29648.

Rehearing denied by Pebble Beach Co. v. Tour 18 I, 1998 U.S. App. LEXIS 29648 (5th Cir. Tex., Oct. 26, 1998)

Prior History: Appeals from the United States District Court for the Southern District of Texas. H-93-CV-3875. David Hittner, US District Judge.

Pebble Beach Co., 942 F. Supp. 1513, 1996 U.S. Dist. LEXIS 20046 (S.D. Tex., 1996)

Disposition: AFFIRMED.

CORE TERMS

hole, golf, marks, Plaintiffs', lighthouse, district court, trade dress, trademark, injunction, copied, advertising, golf-hole, infringement, designs, secondary meaning, disclaimers, likelihood of confusion, replica, golf course, dilution, functionality, profits, attorney's fees, configurations, consumers, registration, features, argues, affiliation, nominative

Business & Corporate Compliance, Entertainment Industry Falsity & Performance Misattribution, Trade Dress Protection, Causes of Action, Trademark Law, Infringement Actions, Burdens of Proof, General Overview, Causes of Action Involving Trademarks, Likelihood of Confusion, Special Marks, Service Marks, Particular Subject Matter, Names, Subject Matter of Trademarks, Nontraditional Trademarks, Color Marks, Conveyances, Determinations, Terms Requiring Secondary Meaning, Eligibility for Trademark Protection, Distinctiveness, Consumer Confusion, Civil Procedure, Appeals, Standards of Review, Clearly Erroneous Review, Criminal Law & Procedure, De Novo Review, Trademark Cancellation & Establishment, Registration Procedures, Federal Registration, Generic Names, Strength of Trademark, Terms With Inherent Distinctiveness, Suggestive Terms, Descriptive & Laudatory Terms, Terms With Inherent Distinctiveness, Factors for Determining Confusion, Intent of Defendant to Confuse, Direct Evidence, Surveys as Evidence of Confusion, Trademark Enforcement by US Customs, Commercial Use, Circuit Court Factors, 5th Circuit Court, Similarity of Marks, Appearance, Meaning & Sound, Federal Unfair Competition Law, Lanham Act, Governments, Legislation, Effect & Operation, Patent Law, Originality, Joint & Sole Inventorship, Fragrance Marks, Remedies, Injunctions, Permanent Injunctions, Dilution of Famous Marks, Equitable Relief, Abuse of Discretion, Damages, Copyright Law, Types of Damages, Infringement Profits, Equitable Accountings, Profits, Antitrust & Trade Law, Private Actions, Costs & Attorney Fees, Clayton Act, Attorney Fees & Expenses, Basis of Recovery, Statutory Awards, Defenses, Inequitable Conduct, Increased Damages