The opinion of the court was delivered by: Moran, District Judge.
On April 5, 1983, this court denied plaintiff's motion for
a preliminary injunction. The Seventh Circuit reversed,
finding that defendant's use of the name Hyatt was a probable
violation of the Illinois Anti-Dilution Act, Ill.Rev.Stat. ch.
140, § 22 (1981). See Hyatt Corp. v. Hyatt Legal Services,
736 F.2d 1153 (7th Cir.), cert. denied ___ U.S. ___, 105 S.Ct. 434,
83 L.Ed.2d 361 (1984). The circuit court remanded the action to
this court "for entry of an injunction prohibiting the appellee
from using the name Hyatt Legal Services. The appellee
is to select promptly a new name . . ." The circuit court also
ordered "further proceedings consistent with this opinion."
Id. at 1160. Two issues remain to be decided before entering
the injunction ordered by the Court of Appeals. First, what
name would be appropriate for use by defendant. Second, whether
the Constitution limits the permissible scope of the injunction
premised on Illinois law.
In its opinion, the Court of Appeals suggested that
defendant select a new name for itself. 736 F.2d at 1160.
Defendant seeks to use only a disclaimer. A disclaimer would
aid in reducing consumer confusion, but confusion is not the
issue here. The Seventh Circuit found dilution. Dilution
occurs with repeated use of the same distinctive name. A name
change must occur to maintain the distinctiveness of
Defendant has proposed, as a possible new name, J. Hyatt
Legal Services. Plaintiff has accepted that change with
certain safeguards. First, that the word Hyatt never be used
without the J. preceding it. Second, that the words J. Hyatt
be the same size and type face as Legal Services on all
promotional material. Third, that a disclaimer be used.
A disclaimer is not required. The Seventh Circuit
specifically stated a disclaimer would probably not be
required. 736 F.2d at 1160. As previously stated, a disclaimer
would not protect the distinctiveness of plaintiff's mark.
This court, however, requires all promotional material and
letterheads to use J. Hyatt instead of Hyatt alone. This
requirement does not extend to normal correspondence or
business conversation. Finally, the court requires that the
letter J. be the same size, type, and color as the Hyatt in
all signs and promotional materials. The court finds no reason
to require the words J. Hyatt to be the same size and type as
Legal Services. The court finds that the new name, with the
safeguards stated, appropriately effectuates the goals of
Illinois' anti-dilution statute.
In its order remanding the action to this court, the Seventh
Circuit suggests a nationwide preliminary injunction. The
court stated that one reason for dilution of plaintiff's mark
was the "nationwide scope of Hyatt Legal Services' business."
736 F.2d at 1159. The court also, in allowing defendant to
choose a new name for itself, indicated a concern for ethical
rules controlling the names of law firms in the states where
defendant operates. Id. at n. 5. Defendant argues, however,
that applying an Illinois law beyond its borders is
unconstitutional. Defendant cites New York Life Insurance Co.
v. Head, 234 U.S. 149, 34 S.Ct. 879, 58 L.Ed. 1259 (1914), and
apparently raises due process arguments against a nationwide
injunction, an issue not specifically discussed by the Court of
The Illinois anti-dilution statute provides for injunctive
relief if there exists a likelihood of injury through
dilution. See Ill. Rev.Stat. 140 § 22. The statute does not
specify the scope of the injunction, but courts have extended
its protections well beyond Illinois' borders. See
Instrumentalist Co. v. Marine Corps League, 509 F. Supp. 323,
340 (N.D.Ill. 1981) (nationwide injunction), aff'd on other
grounds, 694 F.2d 145 (7th Cir. 1982); National Football League
Properties, Inc. v. Dallas Cap & Emblem Mfg., Inc.,
26 Ill. App.3d 820, 327 N.E.2d 247 (1st Dist. 1975) (enjoining
Texas manufacturer from producing certain products). See also
Polaroid Corp. v. Polaraid, Inc., 319 F.2d 830 (7th Cir. 1963)
(granting multistate injunction under Illinois' unfair
competition and anti-dilution laws). The desire to extend
nationwide an injunction based upon an Illinois law is
understandable. As Judge Shadur, in Instrumentalist, supra,
509 F. Supp. at 340.*fn1 This court, as Judge Shadur stated,
certainly has the power to issue such an injunction by virtue
of its jurisdiction over the parties. 509 F. Supp. at 340.
However, when an interpretation of a law conflicts with the
constitution, the "very essence of judicial duty" requires a
court to apply the superior law to the case. Marbury v.
Madison, 5 U.S. (1 Cranch) 137, 176, 2 L.Ed. 60 (1803). In the
present case, the court believes there to be a conflict between
an interpretation of the anti-dilution law which allows for a
nationwide injunction and the commerce clause of the United
Since the court decided Cooley v. Board of Wardens, 53 U.S.
(12 How) 299,13 L.Ed. 996 (1851), it has been well recognized
that the commerce clause, U.S. Const. Art. 1, § 8, Cl. 3,
places implicit limitations on the powers of states to regulate
interstate commerce even in the absence of explicit
congressional legislation in the area.*fn2 Traditionally,
cases applying the negative or dormant commerce clause, as the
implied limitations are referred to, involved discriminatory
treatment of interstate commerce by a state. See e.g., City of
Philadelphia v. New Jersey, 437 U.S. 617, 98 S.Ct. 2531, 57
L.Ed.2d 475 (1978); Hunt v. Washington State Apple Advertising
Commission, 432 U.S. 333, 97 S.Ct. 2434, 53 L.Ed.2d 383 (1977).
No such discriminatory treatment is involved in the present
case. A nationwide injunction, however, seems to violate two
other principles of commerce clause jurisprudence: (1) that
states cannot directly regulate interstate commerce; and (2)
that incidental regulations of interstate commerce cannot be
excessive in light of local interests furthered by the law. See
Edgar v. MITE Corp., 457 U.S. 624, 640, 102 S.Ct. 2629, 2639,
73 L.Ed.2d 269 (1982).
In Shafer v. Farmers Grain Co., 268 U.S. 189, 45 S.Ct. 481,
69 L.Ed. 909 (1925), the Court held that "a state statute which
by its necessary operation directly interferes with or burdens
[interstate] commerce is a prohibited regulation and invalid,
regardless of the purpose with which it was enacted." Id. at
199, 45 S.Ct. at 485. Where a state law has inevitably and
directly interfered with "the natural functioning of the
interstate market, either through prohibition or through
burdensome regulation," the law has been held to violate the
commerce clause. Hughes v. Alexandria Scrap Corp.,
426 U.S. 794, 806, 96 S.Ct. 2488, 2496, 49 L.Ed.2d 220 (1976). The
commerce clause has also prohibited the application of a state
statute to commerce that occurs wholly outside the state's
borders, whether or not the commerce has effects within the
state. See Edgar v. MITE Corp., 457 U.S. 624, 102 S.Ct. 2629,
73 L.Ed.2d 269 (plurality opinion of White, J.).
If the mandated injunction is spread nationwide, it may
directly affect interstate commerce. Advertising is an
inevitable and often vital aspect of interstate commerce.
See generally Hunt v. Washington State Apple Advertising
Commission, 432 U.S. 333, 97 S.Ct. 2434, 53 L.Ed.2d 383 (1977).
The regulation of advertising within a state, such as occurred
in Hunt, can impinge on interstate commerce and violate the
commerce clause. A direct state injunction reaching advertising
disseminated out of the state and intended for consumers out of
the state would appear to be a direct interference with
interstate commerce.*fn3 If that be so, the imposition of