Case Study: St. Louis Home Builders Association sues to protect its name
By Michael J. Flynn & Linda Kephart Flynn
Suing a fellow show organizer wasn’t exactly something Gary Zide could even imagine 20 years ago when he started producing consumer events for the Home Builders Association (HBA) of Greater St. Louis. And yet, as he sat in federal district court in December 1998 and watched as the judge considered the association’s position, he believed it was the only thing he could have done to protect the name and reputation of his events.
The HBA’s case came after the association accused a competitor, Bloomington, MN-based L&L Exhibition Management Inc, of unfair competition for essentially pirating HBA’s show name and reputation to attract exhibitors and attendees to its own event. L&L claimed it did nothing wrong. “We tried to use what we thought was a generic term,” says Jonathan Lawrence, spokesman for L&L. But after testimony from a polling expert and more than 30 witnesses who said they were confused by the newcomer’s ads, the judge ruled in HBA’s favor. The court also awarded the plaintiff the cost of pursuing the case and reasonable attorney’s fees, as well as $25,000 in damages. The defendant recently lost an appeal in September 2000.
A newcomer Zide, who is HBA’s Senior Staff Vice President for Home Shows and Special Projects, first learned about his new competitor when a long-time exhibitor phoned. “He called and said, ‘Is this you guys?’ in response to a sales call or some materials he’d received,” says Zide. “He was confused. It was the same hall, the same name most people associated with our event and was happening about the same time of year.”
For its first 30 years, the HBA called its annual show the “Builders’ Home Show,” “St. Louis Home Show” or just the “Home Show.” When the association added a fall show in 1981, it renamed its large spring event the “St. Louis Builders Home and Garden Show” and the smaller fall event the “St. Louis Builders Home and Remodeling Show.” Both are held in the city’s America’s Center.
The newcomer also booked America’s Center for its event, officially dubbed the “Home Improvement & Building Show.” L&L, however, promoted its gathering as the “Home Show” or the “St. Louis Home Show,” without identifying itself as the sponsor. “It had nothing to do with their shows or what they were trying to do, but the court decided the term ‘home show’ had secondary meaning in the St. Louis market,” says Lawrence. Compared to HBA’s 418,000 net square feet and 600 exhibiting companies, L&L’s event used an 80,000-square-foot hall andincluded between 70 and 80 exhibiting companies. An estimated 10,000 consumers attended L&L’s first event.
HBA initially did nothing to stop the smaller show producer. “They had a right to produce an event, and it was never our intention to put them out of business,” Zide says. “But our concern, after we saw what they were doing, was the damage they were doing to the home show name in this market.”
Which show? After witnessing the consumer and exhibitor confusion between the competing shows, HBA’s directors asked Zide to approach L&L directly to discuss the problem. His calls, he says, were never returned.
Meanwhile, America’s Center officials received so many consumer complaints regarding the confusion that they required L&L to include its name in all subsequent advertising. The promoter complied for shows in January and May 1998, but in such a way — according to later court documents — that the name “Home Show” or “St. Louis Home Show” was emphasized, and L&L’s sponsorship was de-emphasized.
Four months after L&L’s first show, the HBA filed suit in U.S. District Court, Eastern District of Missouri, alleging that L&L was engaging in unfair competition in violation of the Lanham Act (a federal law that addresses fair competition practices); copying HBA expositions’ trade dress; and engaging in unfair competition in violation of Missouri law.
“Anytime you enter a lawsuit situation, it can be very expensive and take a lot of time, so you don’t do it lightly,” Zide says. “But when it was clear that L&L wouldn’t talk with us, our leadership felt that we couldn’t sit back and see our good will be destroyed. It wasn’t an opportunity to gain anything; it was a protective measure.”
The HBA tapped Harry Wilson, an attorney with Husch & Eppenberger LLC, and a specialist in trade dress and intellectual property cases, to represent the association.
Before hearing the case, the district court judge required Zide and L&L principal Lawrence to meet with a mediator. “His position was, ‘It is what it is, and I’m not changing anything,’ ” Zide recalls.
With a trial on the horizon, HBA staff members spent long days documenting the shows’ history (See sidebar, page 96). Zide, alone, estimates that he’s put in more than 150 hours on the lawsuit, trial and appeal preparations over the last three years. He also reviewed interviews from
70 witnesses, dug up financial records, followed the legal team’s progress and kept his board abreast of the developments.
Wilson advised the association to hire a polling expert to survey city residents and testify on his results. That effort proved that the phrase “Home Show” had acquired secondary meaning — or unique significance directly related to HBA events in St. Louis — which was also key in the association’s trial success, even though the term wasn’t trademarked. “The problem is it’s difficult to trademark a term like Home Show. We probably should have tried, but we never did,” says Zide.
Name game During the trial, L&L explained that it operated in six (now seven) cities throughout the country, each of which already had an established home products and services show. In nearly every locale, L&L’s event name, venue and show dates mirrored the established show.
The “smoking gun” in the case stemmed from the National Association of Remodeling Industry’s “Home Remodeling Exposition,” held in Madison, WI. In that market,instead of its usual “Home Show” moniker, L&L named its show the “Remodeling and Interior Design Exposition.” When Wilson brought this up during the proceedings, then pointed it out to the defendant’s own statistical expert witness, the witness had to admit that the odds of the identical naming being accidental were very, very low.
The three-and-a-half-day trial took place in December 1998. The judicial team then reviewed the case for nine months before issuing findings in August 1999.
The district court concluded that although L&L was not guilty of trade dress infringement, it had engaged in unfair competition in violation of the Lanham Act and Missouri state law. Besides awarding HBA $25,000, its costs in pursuing the cause of action and reasonable attorney’s fees, the judge also placed considerable restrictions on the way L&L can advertise and market its shows in the St. Louis region.
Looking back HBA had once estimated it would cost $115,000 to pursue its case. The initial trial was more, and Zide expects the appeal to cost at least another $25,000. Despite the expense, however, the association feels it was worth the time, trouble and money.
“We wanted to protect our show, and we reached that objective,” Zide says. “Along the way, though, I think we gained the respect of our entire exhibitor base. They respected that we were willing to protect the show and its name and that we’d go to the lengths we did to defend it.”
Michael & Linda Kephart Flynn are regular EXPO contributors.
Sidebar: Shows at a Glance
Official Show Name: The St. Louis Builders Home and Garden Show Show Organizer: Home Builders Association of Greater St. Louis Web site: www.stlhba.com Date: Held annually each spring Site: America’s Center and TWA Dome Size: 418,000 net square feet Exhibitor profile: 1,600 booths, 600 exhibiting companies ranging from HBA members that build residential housingto associate members that supply goods and services to home builders and consumers. Show segments include lawn and garden, kitchen and bath, interior design, pool and spa, and building products and services areas. Attendees: Consumer attendance running into six figures includes those interested in new-home construction and all phases of home remodeling and landscaping. Official Show Name: The St. Louis Builders Home and Remodeling Show Show organizer: Home Builders Association of Greater St. Louis Web site: www.stlhba.com Date: Held annually each fall Site: America’s Center Size: 160,000 net square feet Exhibitors: 275 booths, more than 200 exhibiting companies focused primarily on interior remodeling and design Attendees: Consumer attendance of 20,000 interested in home remodeling products and services.
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