court will assume that a jury reasonably might infer an improper motive from it.
Defendant's principal contention is that the evidence of record compels the conclusion that AIG in good faith sought and relied on advice of counsel, and thus had probable cause to pursue the underlying action as a matter of law. The testimony of Messrs. Mead and Hopgood, uncontroverted on its face, supports defendant's contention. Plaintiff argues that a jury could find that AIG failed to disclose relevant facts to counsel, or that the purported advice was so unsound and inconsistent with Mr. Mead's characterization of the AIG mark during testimony in the underlying litigation as to raise an inference that it was in fact never really given or relied upon.
Plaintiff points specifically to a market study by AIG which showed a relatively low identification of its mark with its services by prospective customers in its own service market, and the very limited nature of AIG's aviation activity. It is uncontroverted, however, that no later than July 1989, prior to the injunction hearing or trial, AIG gave its market study to the Hopgood firm. It is also uncontroverted that the Hopgood firm had free access to the AIG employees responsible for marketing and for operation of the corporate aircraft prior to initiating the underlying litigation, and that Mr. Miller interviewed them and reviewed AIG's aviation related activity prior to drafting a complaint. Correspondence the authenticity of which is not questioned shows that AIG provided the Hopgood firm with information about corporate aviation activity as early as November 1984. From its presentation of AIG's case, it is clear that litigation counsel was well aware of those AIG activities which even arguably related to aviation.
Further, the area of trademark or service mark law is relatively obtuse to a layman or one not specializing in the field. This was not an assault claim where an unsuccessful plaintiff failed to disclose to his attorney prior provocation, a breach of contract claim where an unsuccessful plaintiff failed to disclose a prior failure to perform on his part or a product liability claim where an injured plaintiff failed to disclose that he had substantially altered the product subsequent to purchase. Defendant provided counsel with all information and free access to all employees and data counsel deemed significant, and did not authorize suit until counsel expressed satisfaction. Testimony of counsel that they had all they required to render their advice is uncontroverted. Mr. Mead's colloquial reference to the AIG mark as descriptive clearly was not an expert opinion and did not connote a belief as to the appropriate legal characterization of the mark.
The Hopgood theory was variously that AIG used an arbitrary or fanciful mark in the relevant market prior to Airways' first use on November 18, 1981 and thus had acquired protectible rights without the need to demonstrate secondary meaning, or that the AIG mark was so fanciful and distinctive that its prior use in commerce was sufficient to defeat a claim of right by a user in a non-competing field without proof it had acquired secondary meaning in that field. This theory was unsound. AIG's aviation activities were very limited and it had no presence, prior or subsequent to Airways' use of the mark in question, in the commercial air services market. The name "American International" is essentially a descriptive mark which is preemptive only upon a showing that it has acquired secondary meaning in the alleged infringer's market. See Interpace Corporation v. Lapp, Inc., 721 F.2d 460, 465 (3d Cir. 1983).
In reversing a grant of summary judgment against AIG, the Court in American Intern. Group v. American Intern. Bank, 926 F.2d 829 (9th Cir. 1991) found that although "'American International' is inherently a weak mark," there was a material factual question of whether there was sufficient public identification of the mark with AIG's financial services business to create a likelihood of confusion as to the source of the "complementary or related" banking services provided by defendant. Id. at 832. In his opinion dissenting on the issue of laches, Judge Kozinski forcefully notes that "there are few terms more generic than American; it describes someone or something originating in the United States. International is an equally descriptive word, suggesting a connection with foreign trade or commerce. Nor does it take much creativity to juxtapose the two . . . dozens of businesses across the country use American International as part of their name." Id. at 834. See also American Intern. Group, Inc. v. London American Intern., 664 F.2d 348, 351-52 (2d Cir. 1981)(reversing summary judgment against AIG upon finding of factual question of whether its mark had acquired "secondary meaning" in the international financial services market).
Mr. Mead testified in the underlying litigation that to him the name American International "implies that we do business in America and on an international basis." Counsel for AIG in the underlying litigation could cite no case in which a court had found the AIG mark to be distinctive or "arbitrary" and counsel for AIG in the instant litigation acknowledged at oral argument that he is aware of no such case.
There is no requirement under the Dragonetti Act, however, that counsel's advice be sound. As counsel for plaintiff acknowledged, at least where an unsuccessful litigant has acted in consultation with an attorney, the legislature has made it quite difficult, presumably intentionally so, for the successful defendant to prevail on a wrongful use of civil proceedings claim in Pennsylvania. The only reasonable conclusion from the record adduced is that AIG throughout the underlying litigation in good faith sought and relied upon legal advice of counsel after disclosing or providing free access to all information deemed by counsel and perceived by AIG to be pertinent. When the Hopgood firm advised Mr. Mead that AIG had a meritorious claim, he authorized the initiation and prosecution of the underlying litigation. When the Cahill firm advised Mr. Mead that AIG did not have a meritorious appeal, he directed that AIG's notice of appeal be withdrawn and that the underlying litigation be terminated.
On the record before it, the court concludes that defendant is entitled to judgment and an appropriate order will be entered.
ORDER -- March 23, 1993, Entered
AND NOW, this 22nd day of March, 1993, upon consideration of defendant's Motion for Summary Judgment and plaintiff's response thereto, following oral argument thereon and consistent with the accompanying memorandum, IT IS HEREBY ORDERED that said Motion is GRANTED and JUDGMENT is ENTERED in the above-captioned case for the defendant and against the plaintiff.
BY THE COURT:
JAY C. WALDMAN, J.