Conan Properties, Inc. v. Conans Pizza, Inc.

Conan the Barbarian (Conan) was a fictional character. L. Sprague deCamp wrote many Conan books, which Frank Frazetta often illustrated. Frazetta also illustrated other characters closely resembling Conan. Conan Properties, Inc. (CPI) (plaintiff), in which deCamp was a partner, owned the literary property rights to Conan. Conans Pizza, Inc. (Pizza) (defendant) was a pizzeria chain founded in Austin, Texas. Pizza’s stores and marketing material featured a character closely resembling Conan, and Pizza decorated its restaurants with Frazetta’s illustrations of Conan and Conan-like characters. During a visit to Pizza’s original store soon after it opened, deCamp identified himself as a creator of Conan and wished Pizza success. DeCamp told CPI about Pizza, leading its board periodically to discuss potential trademark issues. Meanwhile, between 1976 and 1980, Pizza opened four additional restaurants in Austin. In January 1981, CPI demanded Pizza cease using the Conan trademark, but Pizza continued to use the Conan name and display Frazetta’s depictions of Conan-like characters. In January 1982, Pizza opened a restaurant in San Antonio, Texas, its first non-Austin store. In March 1982, upon learning that Pizza was considering a national franchising plan and had applied for a federal service-mark registration, CPI sued Pizza alleging, among other things, that Pizza was infringing CPI’s trademark in violation of the Lanham Act. Pizza asserted laches and acquiescence defenses. The jury found for CPI on infringement and for Pizza on laches and acquiescence. CPI then moved for a permanent injunction prohibiting Pizza from using the CONANS PIZZA mark nationwide. The district court denied CPI’s motion for injunctive relief due to laches and acquiescence. CPI appealed.