OPINION AND ORDER
SPRIZZO, District Judge:
Plaintiffs, the producer and licensing agent of the "Miami Vice" television series, seek a preliminary injunction enjoining defendants from selling "Miami Mice" t-shirts.
The Court has received briefs from both parties and has held an evidentiary hearing. At the hearing, the Court viewed excerpts from the "Miami Vice" television series, heard testimony from several witnesses, and accepted into evidence various exhibits relating to both the t-shirts and the television series. After considering all the evidence and arguments of counsel in this action, the Court concludes that plaintiff's application for a preliminary injunction must be denied for the reasons set forth infra.
Plaintiff Universal City Studios Inc. ("Universal") is the producer of the television series "Miami Vice." Universal holds a copyright on the series and has also applied for a trademark registration for the logo "Miami Vice." See Transcript of Hearing ("Tr.") at 20-21; Pl. Ex. 25 & 26. This logo is displayed at the beginning of every "Miami Vice" show and is printed in stylized block letters with the word "Miami" above the word "Vice."
Plaintiff Merchandising Corporation of America, Inc. ("Merchandising") is the exclusive merchandising arm of Universal and grants licenses to manufacturers and distributors, authorizing them to produce various products relating to the "Miami Vice" television series. See Tr. at 20. Approximately fifteen such merchandising licenses have already been issued for "Miami Vice" products. These licenses cover a variety of products, including t-shirts. See id. at 21-22.
It is undisputed that "Miami Vice" is one of the most popular shows on television today. The show revolves around two main characters, Detective Sonny Crockett, who is white, and Detective Ricardo Tubbs, who is black. These detectives battle
"Miami Vice" is promoted as a highly stylized television series with an art deco, flashy look. See Tr. at 5, 11. Pastel color patterns predominate on the filming set; earth tones are never permitted. See id. at 8. Crockett and Tubbs wear fashionable clothing in tropical pastel colors, adding to the overall style of the show. Crockett generally wears a single-breasted jacket, collarless shirt, and pants with no belt. See id. at 6. Tubbs, on the other hand, tends to wear a notch-collar shirt, a thin tie, and a double-breasted suit. See id. at 7. Finally, one of the most important elements in the overall style of the show is that the music and lyrics of popular rock-and-roll songs are blended into the action on the set and take the place of extended dialogue. See id. at 8.
Defendant T-Shirt Gallery ("the Gallery") manufactures and distributes, inter alia, five different types of "Miami Mice" t-shirts, and holds a New York State trademark and a federal copyright for the cartoon drawings of "Miami Mice."
Each of the t-shirts features two comical cartoon mice, who wear sun glasses and dress in clothing similar to the costumes of Crockett and Tubbs. Thus, one mouse, who has an "Afro" hairstyle, is wearing a double-breasted suit (as does Tubbs) while the other mouse wears a t-shirt and a single breasted suit (as does Crockett). Furthermore, the t-shirts depict these mice in various settings: on a beach, in New York City, leaning against an expensive sports car, and at a dance club. See generally Pl. Ex. 27. Plaintiffs allege these settings correspond to typical settings in the Miami Vice television series. See Plaintiffs' Post Hearing Brief at 4. Finally, the clothing of the mice, the "Miami Mice" logo, and any buildings or cars appearing in the t-shirts, are all generally colored in with pastel colors.
Defendant Bob Edelson is a merchandising agent for the Gallery. See Tr. at 36.
A preliminary injunction is proper only when the plaintiff establishes possible irreparable injury, plus either (a) probability of success on the merits, or (b) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in the plaintiffs' favor. See Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 206-07 (2d Cir.1979); see also Sonesta International Hotels Corp. v. Wellington Associates, 483 F.2d 247, 250 (2d Cir.1973).
In cases which involve unfair competition and Lanham Act claims, irreparable injury will be presumed if the plaintiffs
I. PROBABILITY OF SUCCESS ON THE MERITS
A. New York Unfair Competition Claim
Plaintiffs' principal argument offered in support of their application for a preliminary injunction is that the defendants have violated the misappropriation branch of New York's unfair competition law. The New York law of unfair competition is a "broad and flexible doctrine" encompassing "any form of commercial immorality." See Roy Export Co. v. Columbia Broadcasting System, 672 F.2d 1095, 1105 (2d Cir.) (quoting Metropolitan Opera Assoc. v. Wagner-Nichols Recorder Corp., 199 Misc. 786, 792-96, 101 N.Y.S.2d 483, 488-93 (Sup.Ct.1950), aff'd, 279 A.D. 632, 107 N.Y.S.2d 795 (1951) (per curiam), cert. denied, 459 U.S. 826, 103 S.Ct. 60, 74 L.Ed.2d 63 (1982)). The misappropriation branch of New York's unfair competition law generally concerns the taking and use of the plaintiff's property to compete against the plaintiff. See id.; see also International News Service v. Associated Press, 248 U.S. 215, 239, 39 S.Ct. 68, 63 L.Ed. 211 (1918). Thus, a defendant can be liable for unfair competition if he misappropriates the "skill, expenditures, and labors of a competitor." See Flexitized, Inc. v. National Flexitized Corporation, 335 F.2d 774, 781 (2d Cir.1964) (quoting Electrolux Corp. v. Val-Worth, Inc., 6 N.Y.S.2d 556, 567, 190 N.Y.S.2d 977, 986, 161 N.E.2d 197, 203 (1959)).
In this case, plaintiffs argue that defendants have misappropriated from the Miami Vice show; (a) the settings, (b) the style, dress and essential expressions of the lead characters, (c) the color patterns and (d) the title. See Plaintiffs Post-Hearing Brief at 4, see also Tr. at 53.
Under § 301, a state law claim is preempted by the federal copyright laws if
Turning to the second condition for federal preemption under § 301, a state law cause of action is preempted only if the state law creates rights that are "equivalent to any of the exclusive rights within the general scope of copyright." See 17 U.S.C. § 301(b)(3). A state right is equivalent to copyright if the state right "is infringed by the mere act(s) of reproduction, performance, distribution or display." See Mayer supra, 601 F.Supp. at 1535 (quoting Nimmer, supra, § 1.01[B], at 1-11-12). On the other hand, if the state law violation requires an extra qualitative element beyond those acts, preemption will not apply. See Harper & Row, supra, 723 F.2d at 200; Nimmer, supra, § 1.01[B] at 1-12. Since the unfair competition complained of here consists simply of the misappropriation and reproduction of the style and characters of plaintiffs' television series into t-shirt form, the second condition under § 301 is satisfied and plaintiffs' New York unfair competition claim is preempted. See Walker v. Time Life Films, Inc., 784 F.2d 44, 53 (2d Cir.1986); Warner Bros., supra, 720 F.2d at 247; Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 918-19 (2d Cir.1980); Mayer, supra, 601 F.Supp. at 1535-36; Giangrasso v. CBS, 534 F.Supp. 472, 478 (E.D.N.Y.1982).
Plaintiffs argue, however, that their claim of unfair competition includes allegations of commercial immorality and an unjustifiable attempt to profit from the efforts of another, see e.g., Metropolitan Opera Assoc., supra, 199 Misc. at 792-96, 101 N.Y.S.2d at 488-93, which are additional elements to their cause of action negating preemption. See Plaintiffs' Supplemental Memorandum of Law at 4. This argument is not persuasive. As Judge Leisure noted in Mayer, supra, 601 F.Supp. at 1535, commercial immorality is not an extra element of the cause of action for misappropriation
B. Lanham Act Claim
Plaintiffs argue in the alternative that defendants have violated section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), by "intend[ing] to take advantage of plaintiffs' efforts and to deceive the public into believing that the [t-shirts] are either authorized by or connected with the plaintiffs and the television series." Plaintiff's Memorandum of Law, at 7.
The first two factors listed above tend to somewhat favor plaintiffs' position. Thus, defendants do not dispute the popularity of plaintiffs' television series. Furthermore, it is undisputed that there is a proximity between the products, at least in so far as plaintiffs' licenses for t-shirts have the potential for competition with the "Miami Mice" t-shirts. As to the third factor, the sophistication of the likely consumers, this appears to be a neutral factor given that neither party has presented any evidence on this issue.
Both the fourth and fifth factors, however, favor defendants' position and tip the balance against the issuance of a preliminary injunction. While there are similarities between the "Miami Mice" t-shirts and the "Miami Vice" television series, i.e., the titles,
Moreover, the t-shirts' mouse-like characters, coupled with the title "Miami Mice," clearly parody the serious, highly stylized nature of the television series. The strength of this parody highlights the differences between the two products and should further dispel any confusion on the part of consumers that plaintiffs manufactured, authorized sponsored, or were in any way connected with the t-shirts. See Nintendo, supra, 746 F.2d at 116; cf. Tetley, Inc. v. Topps Chewing Gum, Inc., 556 F.Supp. 785, 790 (E.D.N.Y.1983). In sum, the Court concludes that the conceptual
This conclusion is in substantial accord with a decision rendered by Judge Aronovitz in the Southern District of Florida, which denied these same plaintiffs' motion for a preliminary injunction against another producer of "Miami Mice" t-shirts. See Universal City Studios v. Casey & Casey, Inc., 622 F.Supp. 201 (S.D.Fla.1985). The "Miami Mice" t-shirts in Casey were very similar to the defendants' t-shirts in this action.
The Court's conclusion that plaintiffs in the instant action have failed to establish a probability of success on the merits of their Lanham Act claim is bolstered by the absence of any survey evidence indicating that consumer confusion actually occurred. Although the plaintiffs need only demonstrate a likelihood of confusion and not actual confusion to warrant equitable relief, see Warner Bros., Inc. v. Gay Toys, Inc., 658 F.2d 76, 79 (2d Cir. 1981), the Court may properly infer that there is no likelihood of consumer confusion from this absence of survey evidence. See Tetley, Inc., supra, 556 F.Supp. at 791. This is especially true where, as here, a likelihood of confusion is not obvious due to substantial dissimilarities between the products. See, e.g., Nintendo, supra, 746 F.2d at 117; Mattel, Inc. v. Azrak-Hamway, Int'l., Inc., 724 F.2d 357, 361 (2d Cir.1983) (per curiam).
Plaintiffs argue, however, that the defendants in bad faith deliberately copied plaintiffs' marks and that the Court should presume a likelihood of confusion from this conduct. See Plaintiffs' Memorandum of Law, at 5. The Second Circuit has recognized that evidence of intentional copying raises a presumption that the second comer intended to create consumer confusion and succeeded. See Warner Bros., supra, 720 F.2d at 246-47. While it is clear that the defendants were influenced by the "Miami Vice" television series, see Tr. at 69-71, and that defendants expected that the success of the t-shirts would, in part, be attributable to the popularity of the television series, see id. at 38-39, 45, the evidence does not support plaintiffs' argument that the defendants copied plaintiffs' marks with the intent to create consumer confusion.
II. IRREPARABLE INJURY AND BALANCE OF HARDSHIPS
Since plaintiffs have failed to establish a probability of success on the merits, plaintiffs must establish sufficiently serious questions going to the merits making it a fair ground for litigation, irreparable injury, and a balance of hardships tipping decidedly in their favor to succeed in their preliminary injunction motion. See Dallas Cowboys, supra, 604 F.2d at 206-07.
Plaintiffs have not demonstrated irreparable injury. The Court will not presume irreparable injury in the absence of a showing of a probability of success on the merits. Cf. Windsor Industries, Inc. v. U.S. Diamond Imports, 549 F.Supp. 415, 416-17 (S.D.N.Y.1982). Plaintiffs have failed to produce any evidence that the t-shirts have harmed plaintiffs' licensing program or the good will associated with plaintiffs' marks. Moreover, it appears that any losses suffered by plaintiffs as a result of the sale of the t-shirts, if proven, would be compensable in money damages after a full adjudication of plaintiffs' claims. Accord, Casey, supra, 622 F.Supp. at 206.
Plaintiffs have also failed to establish a balance of hardships tipping decidedly in their favor. If anything, the hardships test favors defendants, since an injunction will prevent defendants from selling their inventory, whereas plaintiffs have not offered any evidence, as noted above, to indicate that plaintiffs will suffer any similar hardships if the injunction is denied.
For all the foregoing reasons, plaintiffs' motion for a preliminary injunction is denied. All parties shall appear before the Court for a Pre-Trial Conference on June 20, 1986 at 10:00 A.M.
It is SO ORDERED.
(a) On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.
(b) Nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to—
The Court also finds no merit in plaintiffs' argument that preemption does not apply because defendants are unfairly competing with plaintiffs' licensing program, which cannot be copyrighted. See Plaintiffs' Supplemental Memorandum of Law, at 4. The gravamen of plaintiffs' state law claim is the misappropriation of plaintiffs' copyrighted television series. At best, any harm done to plaintiffs' licensing program represents additional damages flowing from the misappropriation claim. The strictures of § 301 cannot be circumvented merely by characterizing these potential additional damages as a separate unpreempted claim.
Neither party has briefed the issue of whether plaintiffs' trademarks have acquired a secondary meaning. Given the Court's holding infra that plaintiffs have not established a probability of success that there will be a likelihood of consumer confusion, the Court need not reach the secondary meaning issue.
The second letter plaintiffs rely on was a letter from Edelson to the Court dated September 30, 1985. In that letter, which was Edelson's "response to the complaint," Edelson reiterated that "Miami Mice is intended to be an animated, comical parody of TV cop/crime shows, not like other real life imitations of Miami Vice." Edelson also noted in the letter that he believed it was proper in our "free competitive consumer marketplace" to "emulat[e]" popular products until the market is saturated. The Court notes that section 43(a) of the Lanham Act is not designed to prevent people from taking advantage of popular trends in the marketplace. The harm that the Lanham Act seeks to protect against is the "misrepresentation of a common source." See Warner Bros., supra, 720 F.2d at 247. This letter does not indicate an intent to misrepresent or confuse consumers.
The final letter plaintiffs rely on was from Finn. This letter, dated August 27, 1985, was a response by Finn to plaintiffs' charges of unfair competition. See Defendants' Memorandum of Law in Opposition at Ex. D. Although Finn stated that, "[w]e are appreciative ... of the popularity of your product ...," Finn also denied any wrongdoing, claiming that "we do not believe there is any likelihood of confusion or intent to deceive by our use of rodents as obvious cartoon characters." See id.
The Court also notes that at the hearing on plaintiffs' motion for a preliminary injunction, Finn acknowledged that the Miami Vice series influenced the development of the t-shirts but denied that it was his intent to copy the series. Tr. at 69-71.
In granting the preliminary injunction, the district court noted that the inference of a likelihood of confusion was readily drawn from the defendants' deliberate attempts "to cash in on the Dallas Cheerleaders' popularity and attracting power," see id. at 377, which indicated that the defendant expected consumer confusion. See id. at 375. The Dallas Cowboys case is distinguishable from the present case, however, because there was overwhelming evidence in that case that the defendants intended and expected consumer confusion. In addition to defendants' use of a cheerleading uniform which was almost identical to the Dallas Cowboys Cheerleaders' uniform, the film was promoted with advertisements containing deliberately misleading phrases such as, "Starring Ex Dallas Cowgirl Cheerleader Bambi Woods" and "You'll Do More Than Cheer For this X Dallas Cheerleader." See id. at 371. The star of the film was never a Dallas Cowboys Cheerleader. In the present case, as noted above, there is no evidence that defendants deliberately intended to deceive the public into believing that plaintiffs were in any way connected with the Miami Mice t-shirts.
Assuming plaintiffs' complaint could be deemed amended to include this belated claim for copyright infringement, cf. Studebaker Corp. v. Gittlin, 360 F.2d 692, 694 (2d Cir.1966), plaintiffs have still failed to establish a likelihood of success on the merits. First, to succeed on a claim for copyright infringement, plaintiffs must establish a substantial similarity between the two works. See Warner Bros., supra, 720 F.2d at 239. Due to the differences between the television series and the t-shirts as noted above, it is unlikely that plaintiffs will be able to establish this element at trial. Accord, Casey, supra, 622 F.Supp. at 206. Moreover, given the obvious satiric effect of their rodent-like caricatures, defendants' t-shirts may fairly be characterized as a non-infringing parody under the "fair use" doctrine. Cf. Warner Bros., supra, 720 F.2d at 242.
In their final brief, plaintiffs also argued that defendants should be enjoined under New York's anti-dilution statute. N.Y.Gen.Bus.Law § 368-d (McKinney 1984). This claim was also not raised in the complaint. Even if this claim had been included in the complaint, however, the Court finds this claim to be without merit at this time because there has been no showing that plaintiffs' marks will be tarnished or blurred by the t-shirts. See Warner Bros., supra, 720 F.2d at 248; Sally Gee, Inc. v. Hogan, 699 F.2d 621, 624-26 (2d Cir.1983).