General Motors Corporation v. Urban Gorilla, LLC

General Motors Corporation ("GM") appeals from the district court's denial
of a motion for preliminary injunction against Urban Gorilla, LLC ("Urban
Gorilla"). GM alleges that Urban Gorilla's "body kits" infringe upon and dilute
GM's trade dress rights in its Hummer line of vehicles. Because the district court
did not abuse its discretion in finding that GM failed to make a strong showing of
a likelihood of success on the merits, we AFFIRM.

I

Weighing in at 1.25 tons and able to cross a variety of rough terrain, the
military Humvee gained national attention during Operation Desert Storm in
1991. At the urging of then-actor and now Governor Arnold Schwarzenegger,
Humvee's manufacturer, AM General Corporation ("AM General") created a
civilian version of the vehicle, called the Hummer. In 1999, GM purchased the
trademark rights to the Hummer from AM General, and it now markets three
versions of the Hummer under the GM brand name: the H1, H2, and H3. GM has
a registered trademark in the distinctive shape and design of the H1, the Hummer
nose and grill area, the word "Hummer," and the slogan "Like Nothing Else."
The H1 retails for around $140,000, and the other models cost less. Since 2000,
GM has spent tens of millions of dollars advertising the Hummer line as luxury
sport utility vehicles geared toward high-income purchasers.

In 1997, Active Power, Inc. ("Active Power"), the predecessor in interest to
defendant Urban Gorilla, launched the Urban Gorilla product line, which consists
of steel "body kits." These kits allow customers to install a new body on top of
an existing truck chassis, at a price of around $10,000. According to Urban
Gorilla, the kits are designed to make a truck look like a military-style vehicle.
Urban Gorilla's kits have been advertised in magazines and on the internet since
1997, and one kit was featured on a television show called "Xtreme 4x4" in 2005.

On October 6, 1998, AM General sent a cease and desist letter to Active
Power, suggesting that the design of the Urban Gorilla kits infringed on AM
General's Hummer trademarks. In response to that letter, Active Power agreed to
make changes to the Urban Gorilla product design, but despite AM General's
request to review these changes, Active Power never sent them to AM General.
AM General did not pursue the matter further, and as noted supra, it sold its
interest in the Hummer line to GM the following year. In February 2004, Merrick
Maxfield purchased the Urban Gorilla product line from Active Power. He is now
president of Urban Gorilla, which continues to produce and market the body kits.

On February 13, 2006, GM filed a complaint against Urban Gorilla for,
among other things, trade dress infringement and dilution in violation of the
Lanham Act, 15 U.S.C. § 1125(a), (c), and moved for a preliminary injunction.
In its complaint, GM alleges that the Urban Gorilla design is a "knock off" of the
Hummer, and points to several examples of explicit, public comparisons between
the two products.

In 2005, the Urban Gorilla website was changed to include customer
testimonials comparing the Urban Gorilla to the Hummer. One customer quoted
on the site bragged that at the All Truck Nationals Show, he entered his Urban
Gorilla kit truck into a competition against "$125,000 custom Hummers" and won
first place. The kit he used was featured elsewhere on the website, with a caption
stating that it had recently won first place in a national truck competition against
custom Hummer H1s, and claiming "[i]t gives you the look and performance you
are looking for." In addition, the site included the slogan, "When Nothing Else
Will Do," which GM alleges is similar to the trademarked Hummer slogan, "Like
Nothing Else." Although GM concedes that these elements have been removed
from the website, it asserts that the testimonials and slogan still appear in an
Urban Gorilla catalog. In addition to Urban Gorilla's own promotional materials,
GM offered into evidence a November 10, 2005 article from Canada's National
Post entitled "Kit will turn your Chevy pickup into a Hummer - on the cheap."
The article begins, "Just because you don't own a Hummer doesn't mean you can't drive around looking like you do. Urban Gorilla's 4x4 off-road body kits
cost a fraction of the price and offer a full range of steel bodies that'll make your
standard Chevy pickup truck look like 100 grand."

Urban Gorilla responded to GM's complaint and motion for preliminary
injunction by pointing out numerous differences in the designs of the products;
raising the defenses of laches, acquiescence, and estoppel based on its
correspondence with GM's predecessor in interest, AM General; and presenting
evidence that its small business would close if an injunction were to issue. After
conducting a hearing on GM's motion, the district court declined to issue a
preliminary injunction, finding that there was insufficient evidence to justify
GM's request for emergency relief "with particular emphasis on the question of
likelihood," but allowing discovery to continue in the case. GM subsequently
moved for an injunction pending appeal in both the district court and this court,
and both motions were denied. GM now appeals from the district court's initial
denial of the motion for preliminary injunction.

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To obtain a preliminary injunction, the movant must show: (1) a
substantial likelihood of success on the merits; (2) irreparable harm to the movant
if the injunction is denied; (3) the threatened injury outweighs the harm that the
preliminary injunction may cause the opposing party; and (4) the injunction, if
issued, will not adversely affect the public interest. Greater Yellowstone Coal. v.
Flowers, 321 F.3d 1250, 1255 (10th Cir. 2003) (quotation and citation omitted).
In general, "a preliminary injunction is an extraordinary remedy; it is the
exception rather than the rule." GTE Corp. v. Williams, 731 F.2d 676, 678 (10th
Cir. 1984). Moreover, when a preliminary injunction would alter the status quo,
such as the injunction at issue in this case, the movant bears a heightened burden
and "must make a strong showing both with regard to the likelihood of success on
the merits and with regard to the balance of harms." O Centro Espirita
Beneficente Uniao Do Vegetal v. Ashcroft, 389 F.3d 973, 976 (10th Cir. 2004)
(en banc, per curiam), aff'd, 546 U.S. 418 (2006).

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Pursuant to the Lanham Act, a person may bring a federal cause of action
for trade dress infringement. 15 U.S.C. §1125(a); Hartford House, 846 F.2d at
1271. A product's trade dress "is its overall image and appearance, and may
include features such as size, shape, color or color combinations, texture,
graphics, and even particular sales techniques." Sally Beauty Co., Inc. v.
Beautyco, Inc., 304 F.3d 964, 977 (10th Cir. 2002) (citing Two Pesos, Inc. v.
Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992)). To establish a claim of trade
dress infringement, a plaintiff must show: (1) The trade dress is inherently
distinctive or has become distinctive through secondary meaning; (2) There is a
likelihood of confusion among consumers as to the source of the competing
products; and (3) The trade dress is nonfunctional. Id.; 15 U.S.C. § 1125(a)(3).

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