## Facts

- Warner Bros. produced *The Dukes of Hazzard* and held merchandising and licensing rights connected to the series.
- The series prominently featured a distinctive car, the “General Lee,” depicted as a bright orange 1969 Dodge Charger with a Confederate flag emblem on the roof and “01” on the doors.
- Gay Toys sought but did not obtain a license from Warner to make related toys.
- Gay Toys marketed toy cars closely modeled on the General Lee, often using the same emblems and substituting “10” for “01,” and later sending “1” and “0” labels so customers could configure “01.”
- Warner sued under Lanham Act § 43(a), alleging the imitative toy design and markings were likely to confuse consumers about source or sponsorship.
- After an earlier appeal required entry of a preliminary injunction, the district court granted summary judgment for Warner and entered a permanent injunction; Gay Toys appealed.

## Issues

1. Whether the prior appellate decision resolving protectability and likelihood of confusion under Lanham Act § 43(a) limited Gay Toys’ ability to relitigate those elements on appeal from summary judgment and a permanent injunction.
2. Whether the General Lee’s identifying symbols and configuration were “functional” and therefore ineligible for protection under § 43(a).
3. Whether Warner was required to prove, and did prove, source-identifying significance (including secondary meaning) for the General Lee symbols to support injunctive relief under § 43(a).

## Decision

- The Second Circuit affirmed the grant of summary judgment and the permanent injunction for Warner.
- The court treated its earlier decision as having already determined that the General Lee symbols were protectable under § 43(a) and that Gay Toys’ copying created a likelihood of confusion as to source or sponsorship.
- The court rejected Gay Toys’ functionality defense, concluding the symbols served primarily a source-identifying role rather than a utilitarian product function.
- The court held that the absence of a genuine dispute of material fact, given the copying and the prior rulings, made summary judgment and permanent injunctive relief proper.

## Legal Principles

- Lanham Act § 43(a) protects unregistered marks and trade dress, including distinctive symbols associated with identifiable elements of a television series, when they function to identify source or sponsorship.
- For injunctive relief under § 43(a), a plaintiff must show a likelihood of confusion as to source or sponsorship; confusion need not concern who physically manufactured the goods.
- The functionality doctrine does not bar protection merely because copied features increase consumer appeal or enable role-play; trademark functionality concerns features essential to product use or affecting cost or quality.
- When an appellate court has already resolved core § 43(a) determinations in the same litigation, those determinations constrain later proceedings absent a material factual dispute.

## Conclusion

The Second Circuit upheld a permanent injunction barring unlicensed toy cars that copied the General Lee’s distinctive markings and appearance, concluding that § 43(a) protects such source-identifying television-series symbols against imitations likely to cause confusion about sponsorship and that “play value” did not make the symbols functional in the trademark sense.


Warner Bros. Inc. v. Gay Toys, Inc., 724 F.2d 327 (2d Cir. 1983)