## Facts

- Caterpillar Inc. owned numerous federally registered trademarks for “Caterpillar,” “Cat,” and related design marks and licensed them broadly, generating substantial licensing revenue.
- The Walt Disney Company produced the direct-to-video film *George of the Jungle 2*, and Buena Vista Home Entertainment, Inc. handled home-video distribution.
- The film depicted villains using genuine Caterpillar bulldozers bearing unaltered Caterpillar and Cat marks while attempting to destroy the protagonist’s jungle home.
- The film’s narrator described the bulldozers with negative, comedic phrases such as “deleterious dozers” and “maniacal machines.”
- Caterpillar alleged the film’s depiction would harm its goodwill, imply sponsorship or approval, and dilute its marks, and it sought to stop release unless the scenes were changed.
- Caterpillar sued under the Lanham Act for infringement, false designation of origin, and dilution, plus related Illinois claims, and moved for an emergency temporary restraining order (TRO).

## Issues

1. Whether Caterpillar showed a likelihood of success on Lanham Act trademark infringement and false designation claims by establishing a likelihood of confusion as to Disney’s film being sponsored or endorsed by Caterpillar.
2. Whether Caterpillar showed a likelihood of success on a federal dilution theory (including tarnishment) based on the film’s portrayal of Caterpillar-branded machines.
3. Whether Caterpillar demonstrated irreparable harm and the absence of an adequate remedy at law to justify emergency injunctive relief.
4. Whether the balance of harms and public interest favored enjoining distribution of an expressive work shortly before or during release.

## Decision

- The court denied Caterpillar’s motion for a TRO.
- Caterpillar did not make the required showing of likely success on the merits of infringement/false designation because the film’s use of Caterpillar-branded machines as props in a fictional story did not plausibly imply sponsorship or approval.
- The court found the negative descriptors were narrative, comedic characterizations tied to the villains’ actions, not actionable branding statements likely to mislead consumers about source or endorsement.
- Caterpillar did not show a sufficient likelihood of success on dilution; the challenged use was part of an expressive portrayal rather than a commercial use likely to dilute the marks in the statutory sense.
- Caterpillar’s asserted harm to goodwill was too speculative to support a finding of irreparable harm at the emergency stage, and post-release legal remedies could address proven injury.
- Enjoining a completed film’s distribution would impose substantial harm on Disney and Buena Vista, and the public interest weighed against restraining non-misleading expressive content.

## Legal Principles

- Emergency injunctive relief requires a showing of (1) some likelihood of success on the merits, (2) no adequate remedy at law, and (3) irreparable harm; if met, courts balance harms and consider the public interest under a sliding-scale approach.
- In Lanham Act claims involving expressive works, the mere depiction of a genuine branded product with visible marks generally does not establish sponsorship or endorsement confusion without concrete evidence of likely consumer confusion.
- Alleged dilution by tarnishment requires more than a negative fictional association; narrative use in an expressive work, without a strong showing of statutory dilution, is unlikely to justify extraordinary injunctive relief.
- Speculative reputational injury, without concrete supporting evidence at the emergency stage, is insufficient to establish irreparable harm.

## Conclusion

The court refused to halt distribution of *George of the Jungle 2* because Caterpillar did not show a meaningful likelihood of confusion or dilution from the film’s narrative use of genuine Caterpillar marks, failed to establish irreparable harm, and could not overcome the substantial harms and public-interest concerns associated with enjoining an expressive work.


Caterpillar Inc. v. Walt Disney Co., 287 F. Supp. 2d 913 (C.D. Ill. 2003)