IN RE: "Lite Beer" Trademark Litigation

Case MDL No. 302 Document 2 Filed 05/05/15 Page 1 of 6
BEFORE THE JUDICIAL PANEL
ON
MULTIDISTRICT LITIGATION : )
IN RE "LITE BEER" TRADEMARK ) DOCKET NO. 302 Qw = Ca
LITIGATION ) hue em Ce oC
OPINION AND ORDER HE Te 400
—= TT TEs
_— Fis w Fo a
BEFORE JOHN MINOR WISDOM, CHAIRMAN, AND EDWARD WEINFELD, EDWING. J=5
ROBSON, JOSEPH S. LORD, III*, STANLEY A. WEIGEL, ANDREW ASE ~~ So Co Le
CAFFREY, AND ROY W. HARPER¥*, JUDGES OF THE PANEL. = EEE
. n » - -
PER CURIAM | 9013/77
This litigation consists of five actions filed in five a.
districts ~—- one each in the Eastern District of Wisconsin, the So 3
Western District	of Wisconsin, the Northern District of Illinois, oo : :
the Southern District of New York, and the Eastern District of :
: i . : ) : : |
Missouri. EE
Four of those actions have been filed by Miller Brewing
Co. against Joseph Schlitz Brewing Co. (E.D. Wis.), Peter Hand BE. oo
Brewing Co. (N.D. Il1l.), G. Heileman Brewing Co. (W.D. Wis.) and
Genesee Brewing Co. (S.D. N.Y.), respectively. The Heileman a
action was filed on November 1, 1976. The other three actions
brought by Miller were filed on October 31, 1975. In its com~ : a.
plaints, Miller alleges that in 1972 it acquired from another
brewer the "Lite" trademark and brand name for reduced calorie, .
reduced carbohydrate beer. Miller further recites that it : :
spent large sums of money test marketing an improved low calorie _
*Judges Lord and Harper took no part in the consideration or oo
decision of this matter.

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: beer, entering into the national market for low calorie beer, and
advertising the new product on a nationwide scale. The four I
defendants have either begun to market or have made plans ‘to =
market their own brand of reduced calorie beer. Miller has ’
charged that the defendant brewers, by prominently using the
terms "light" or "lyte" in their marketing and advertising for Co
their respective new brands, have imitated a registered trademark oo
in violation of Section 39 of the Lanham Act, have falsely designated
the origin of goods in violation of Section 43 of the Lanham Act,
| and have engaged in unfair competition by misappropriating a brand | |
name and palming off their products as Miller's. Miller seeks = |
injunctions and/or damages in these actions. .
The fifth action in this litigation was brought by |
i Anheuser-Busch, Inc. on January 31, 1977, in the Eastern Dis- :
trict of Missouri seeking a declaratory judgment against Miller.
Anheuser-Busch seeks a judicial determination that (i) "Light" is
a generic term, (ii) Anheuser-Busch's proposed labeling for its :
low calorie beer does not infringe upon any of Miller's rights or |
constitute unfair competition, (iii) Miller must disclaim the
term "Light" in its trademark, (iv) Miller has misused its federal | So
trademark registration and should therefore have its trademark
cancelled, (v). Miller's threats of litigation and course of con- |
duct have constituted unfair competition, and (vi) Miller	is
trying to monopolize themanufacture and sale of light beer. | i |
i

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oe On January 21, 1977, a preliminary injunction was
® granted by the district court in the Heileman action enjoining
Heilman's marketing of beer containing the words "Light,"
"Lite" or any colorable imitation thereof. Thereafter,
Heileman appealed the preliminary injunction order to the
United States Court of Appeals for the Seventh Circuit.
That court, in an opinion handed down on August 17, 1977,
reversed the district court ruling and held that "'light'
is a generic or common descriptive word when applied to
beer, [and that] neither that word nor its phonetic
equivalent may be appropriated as a trademark for beer.”
Miller Brewing Company v. G. Heileman Brewing Company, Inc.,
No. 77-1246, slip op. at 1 (7th Cir. August 17, 1977).
| Pursuant to 28 U.S.C. §1407(c)	(i) and Rule 8,
® R.P.J.P.M.L., 65 F.R.D. 253, 258-59 (1975), the Panel
issued an order to show cause why these five actions should
not be transferred to a single district for coordinated
or consolidated pretrial proveedings. In a brief letter
to the Panel, Peter Hand has stated that it has no ob-
jection to transfer, but the remaining parties oppose
transfer of their respective actions. Although we recog- |
nize the existence of some common questions of fact among
these actions, we find that transfer would not necessarily _
1/Subsequent to the entry of the show cause order, the
Panel has been informed of three other actions which appear
to be related to this litigation: Miller Brewing Co. V.
Pittsburgh Brewing Co., et al., E.D. Mo., Civil Action No.
77-0104C (4); Miller Brewing Co. v. Erie Brewing Co.,
~ W.D. Pa., Civil Action No. 77-18 Erie; and Miller Brewing
— Co. v. Olympia Brewing Co,, W.D. Wash., Civil Action No.
Cc 77-65T.

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serve the convenience of the parties and witnesses or Lo
promote the just and efficient conduct of the litigation. C
Accordingly, the order to show cause is vacated.
The predominant questions of fact shared by the
actions before us relate to the alleged invalidity of |
Miller's "Lite" trademark. The recent appellate determi-
nation in Heileman that Miller's trademark is invalid,
however, could have a dispositive effect upon all other
actions, at least regarding the issue of trademark validity,
because of the likelihood that parties in the remaining
actions will now seek collateral estoppel relief under the
principles of Blonder-Tongue Laboratories, Inc. v. University
of Illinois Foundation,	402 U.S..313, 91 Ss. Ct. 1434, 28 L.
Ed. 24 788 (1971). Moreover,	it appears from the parties' rep-
resentations before the Panel that discovery is substantially ®
completed in the Schlitz and Peter Hand actions and that
both actions are nearing trial. And the parties to the
Genesee action have, with court approval, agreed to stay
that action pending the outcome of the other related
actions. Under these circumstances, transfer will not
further the purposes of Section 1407.
Furthermore, while not in itself determinative,
the nearly unanimous opposition of the parties to transfer,
coupled with the absence of any party's affirmative support
for transfer, 1s another persuasive factor in our decision
to deny transfer. See In re Asbestos and Asbestos Insulation
Materials Products Liability Litigation, 431 F. Supp. 906,
910 (J.P.M.L. 1977). *

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Co IT IS THEREFORE ORDERED that the show cause order
® previously entered concerning the actions listed on the
following Schedule A be, and the same hereby is, VACATED.

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SCHEDULE A
DOCKET NO. 302 A ®NORTHERN DISTRICT OF ILLINOIS Civil Action No.
Miller Brewing Co. v. Peter Hand Brewing 75C3673
Co. .
EASTERN DISTRICT OF MISSOURI
Anheuser-Busch, Inc. v. Miller Brewing 77-100~-C(2)
Co.
SOUTHERN DISTRICT CF NEW YORK .
Miller Brewing Co. Vv. Genesee Brewing 75 Civ 5443 |
Co.
EASTERN DISTRICT OF WISCONSIN |
Miller Brewing Co. Vv. Jos. Schlitz 75-C~-636
Brewing Co. :
WESTERN DISTRICT OF WISCONSIN
miller Brewing Co. Vv. G. Heileman 76C584
rewing Co. ®
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