may not be cited except as provided by
Minn. Stat § 480A.08, subd. 3 (1996)
STATE OF MINNESOTA
IN COURT OF APPEALS
Gary W. Polzin, d/b/a Polzin Glass,
Thomas W. Polzin, d/b/a Polzin Auto Glass,
File No. C3961060
David A. Thompson, Tuma & Thompson, P.L.L.P., 105 East Fourth Street, Suite 303, Northfield, MN 55057 (for appellant)
Jeffrey M. Johnson, Schurhammer & Johnson, P.A., 25 Northwest Second Street, Faribault, MN 55021 (for respondent)
Considered and decided by Klaphake, Presiding Judge, Forsberg, Judge,** and Holtan, Judge.
*Retired judge of the district court, serving on the Minnesota Court of Appeals by appointment pursuant to Minn. Const. Art VI, § 10.
**Retired judge of the Minnesota Court of Appeals, serving by appointment pursuant to Minn. Const. Art VI, § 10.
Gary Polzin sued his brother, Tom Polzin, for deceptive trade practices. After the jury found Tom Polzin guilty, the district court issued an injunction, which Gary Polzin now challenges as insufficient to protect his business from Tom Polzin's deceptive practices. Gary Polzin also challenges the district court's award of attorney fees. Because the district court did not abuse its discretion when it issued the injunction or in its determination of attorney fees, we affirm.
Gary Polzin purchased a business called "The Glass Van" in 1977 and shortly after renamed it "Polzin Glass." The business is located in Northfield, but because of the nature of the glass business, serves customers in several surrounding communities.
Tom Polzin, Gary Polzin's younger brother, worked for Gary Polzin from shortly after he purchased the business until December 1994. Tom left because of ongoing difficulties with his brother.
In January 1995, Tom began operating his own auto glass repair business from his home in Faribault. He obtained a certificate of assumed name from the Secretary of State for the name "Polzin Auto Glass" and published the notice of the assumed name in the Faribault Daily News, as required. See Minn. Stat. § 333.01, subd. 1 (Supp. 1997). Gary did not contest Tom's registration of the name at that time.
On July 15, 1996, Gary brought suit against Tom, alleging Tom violated the Minnesota Deceptive Trade Practices Act by choosing a name that was likely to cause confusion in the minds of consumers. Specifically, Gary alleged that Tom violated Minn. Stat. §§ 325D.44, subds. 1(2) and 1(3), and 325D.165 (1996). Tom counterclaimed, alleging Gary used deceptive trade practices by opening a branch office in Fairibault after Tom started his business there. Tom also alleged Gary defamed him by sending a letter to previous customers.
In its special verdict, the jury found that Tom willfully infringed on Gary's trade name and willfully engaged in a deceptive trade practice. It also found that Gary had not engaged in deceptive trade practices.
On October 30, 1997, the district court issued its findings of fact, conclusions of law, and order for judgment. It found that although there was substantial initial consumer confusion regarding the two businesses, Gary had failed to establish much current confusion. It then restrained Tom from using the name "Polzin" in his business name unless the signs, advertisements, and correspondence clearly identify the business name as "Tom Polzin Auto Glass" and clearly indicate that it is located in Faribault.
The court awarded Gary costs and disbursements and, although Gary asked for $26,952.58 in attorney fees, the court awarded $5,000, finding the amount requested grossly excessive. Gary appeals the district court's order, alleging Tom should have been completely prohibited from using the name "Polzin" and should have been required to change his phone number. He also appeals the district court's award of attorney fees.
Where there is sufficient evidence to support or deny the issuance of an injunction, the district court's decision will not be reversed on appeal absent a clear abuse of discretion. Cherne Industrial, Inc. v. Grounds & Associates, 278 N.W.2d 81, 91 (Minn. 1979).
A party alleging a violation of the Minnesota Deceptive Trade Practices Act need not prove competition between the parties, actual confusion, or misunderstanding. Minn. Stat. § 325D.44, subd. 2 (1996). To establish a violation of the act, plaintiff must show that there is a likelihood of confusion. Claybourne, 414 N.W.2d at 451.
Gary Polzin alleges the district court erred by requiring proof of actual confusion. But the district court did not require proof of actual confusion before finding Tom Polzin violated the act. The jury found Tom Polzin willfully violated the act. The district court, in fashioning its remedy, noted that its order would be sufficient because there was not much current confusion.
The amount of consumer confusion is a relevant factor to consider when fashioning an injunction. See Duluth News-Tribune v. Mesabi Publ'g Co., 84 F.3d 1093, 1098 (8th Cir. 1996) (weight should be given to the number and extent of the instances of actual confusion). The district court therefore did not err by applying the wrong legal standard. The court considered actual confusion only when it fashioned its remedy, not in determining whether a violation of the statute had taken place.
Although the use of one's surname has historically been viewed as an inalienable right, see Basile, S.p.A. v. Basile, 899 F.2d 35, 39 (D.C. Cir. 1990), the Supreme Court, as early as the beginning of this century, made clear that the right of an individual to use their name in connection with their trade must yield to the need to eliminate confusion. See Herring-Hall-Marvin Safe Co. v. Hall's Safe Co., 208 U.S. 554, 559-60, 28 S. Ct. 350, 351-52 (1908); L.E. Waterman Co. v. Modern Pen Co., 235 U.S. 88, 94, 35 S. Ct. 91, 92 (1914). Although those cases do not deal with the Minnesota Deceptive Trade Practices Act, the claims created under that act mirror those under the Lanham Act, as interpreted in Hall's Safe and Waterman. Hillerich & Bradsby Co. v. Christian Bros., Inc., 943 F.Supp. 1136, 1140 (D. Minn. 1996). There is therefore no absolute right to use one's name in connection with one's trade.
With that in mind, this court must ask whether the district court abused its discretion by allowing Tom Polzin to continue using his last name in the name of his business. Both Gary Polzin and Tom Polzin helped contribute to the goodwill now associated with the name "Polzin," despite the fact that only one Polzin was the actual owner of the business. Furthermore, the district court found that while there was much initial confusion, there is not much current confusion and, again, the amount of current, as opposed to initial, confusion is a relevant factor to consider. Duluth News-Tribune, 84 F.3d at 1098. On these facts, we cannot say the district court abused its discretion in fashioning the order as it did.
Gary Polzin next challenges the district court's reference to the new U.S. West Directory yellow pages that was not available at the time of trial and was therefore not introduced as evidence. In its finding of fact number ten, the court stated:
It is not necessary to totally enjoin Defendant from using the name "Polzin" or to require him to change his business phone number to prevent confusion. (The Court notes that in the new U.S. West Directory Defendant does not have a phone listing in Northfield and his listing in Faribault contains the name "Tom;" Plaintiff's listing, which appears next to Defendant's listing, contains phone numbers for both Northfield and Faribault and identifies that business as "the original" and "since 1977.")
The district court's reference to the directory appears more illustrative than evidentiary. Furthermore, the district court was entitled to take judicial notice of what the ads in the phone book look like because they are a matter of common knowledge among the people of the area and are readily available for others to verify. Minn. R. Evid. 201. Even if it was error for the district court to consider the ads in the new directory, the error was harmless because it did not affect the jury's decision with regard to whether or not a violation occurred.
The jury found that Tom Polzin willfully infringed on Gary Polzin's trade name and willfully used a deceptive trade practice. Based on these findings, the district court awarded Gary $5,000 in attorney fees. It refused, however, to award the $26,952.58 asked for because it found that amount of fees grossly excessive.
Although the reduction was substantial, the issues were not that complex and the trial lasted but three days. The district court observed the trial and found that $5,000 was reasonable under the circumstances. Given the broad discretion afforded district courts with regard to attorney fees, we cannot say the district court's award was an abuse of discretion.