MOTLEY, Senior District Judge.
For the third time in as many years plaintiff Woody Allen ("Allen"), the well-known entertainment figure recently characterized as "America's most consistently venturesome film maker,"
Allen first sought relief from this court in April 1984 against National Video, Inc.,
On April 5, 1986, Newsday ran an ad for defendant Men's World featuring a photograph of Boroff with a clarinet.
The Present Case
The present action involves the same June 1986 Newsday ad as did Allen II. The difference is that instead of suing Smith and Boroff, Allen is now suing Men's World and R & S, the advertising agency that created the ad. The Complaint alleges that the ad violates Allen's rights under the Lanham Act, N.Y.Civ.Rights L. §§ 50-51, N.Y.Gen.Bus.L. § 368-d (McKinney 1984), and the New York common law of unjust enrichment, and seeks a permanent injunction,
As noted above, defendants offer three motions to dismiss under two theories. R & S moves under Fed.R.Civ.P. 12(b)(6) to dismiss for failure to state a claim; both R & S and Men's World move to dismiss on the theory that Allen II, having been decided against Allen, is res judicata and bars any further action against them.
The Claims of Former Adjudication
R & S and Men's World claim that this court's denial of the contempt motion in Allen II bars Allen's present claims against them, on theories of claim preclusion (res judicata) and issue preclusion (collateral estoppel) alike. These contentions must be rejected.
Our Court of Appeals recently set out the familiar principles of claim preclusion as follows:
NLRB v. United Technologies Corp., 706 F.2d 1254, 1259 (2d Cir.1983) (citation omitted). Although R & S argues strenuously that Allen II and the present case involve the same claim or cause of action, it strangely does not argue at all that it and Men's World are privies of the parties in Allen II.
This court's own study of the matter discloses no reason to regard the present defendants as privies of the parties in Allen II. This court and our Court of Appeals have taken privity to consist of a "mutual or successive relationship to the same right of property," Price v. Worldvision Enterprises, Inc., 455 F.Supp. 252, 259 (S.D.N.Y.1978) (emphasis deleted) (quoting Litchfield v. Goodnow, 123 U.S. 549, 550-51, 8 S.Ct. 210, 210-11, 31 L.Ed. 199 (1887)), aff'd mem., 603 F.2d 214 (2d Cir.1979), and have noted that "one whose interests were adequately represented by another vested with the authority of representation is bound by the judgment, although not formally a party to the litigation," Expert Electric, Inc. v. Levine, 554 F.2d 1227, 1233 (2d Cir.), cert. denied, 434 U.S. 903, 98 S.Ct. 300, 54 L.Ed.2d 190 (1977). See Staten Island Rapid Transit Operating Authority v. ICC, 718 F.2d 533, 543 (2d Cir.1983). Defendants point to no right of property whatsoever that they have in common with the Allen II defendants. Indeed, R & S and Men's World are connected with Smith and Boroff by nothing more than their mutual involvement with the offending Newsday ad. Claim preclusion (res judicata) requires "a much stronger link between the parties and their `privies'" than the mere "`affinity of interest'" found here.
For these reasons, this court holds that Allen II is not res judicata as to the present defendants, and the motion to dismiss the complaint on that ground is denied.
In United Technologies, the Court of Appeals also reviewed the elements of collateral estoppel:
706 F.2d at 1260. R & S argues that the present action is barred by collateral estoppel, inasmuch as in order to find in Allen II that Smith and Boroff had not violated the contempt order, it was essential for this court to find that the ad did not create a likelihood of confusion — the question at issue in the present Lanham Act suit.
It takes little effort to see the invalidity of this argument. The very language of this court's memorandum opinion in Allen II shows clearly that only a technical deficiency in the drafting of the contempt order prevented a finding that Smith and Boroff were in contempt. We found their arguments "disingenuous," Memorandum Opinion at 2, only "reluctantly" denying Allen's contempt motion, and asserted that "the challenged advertisements are in clear contempt of the spirit of this court's order and opinion of last May 1985." Id. It was not necessary that we decide whether the ad caused consumer confusion: indeed, we expressly noted that one reason for denying the motion was that the manner in which the order was drafted left that question open: "[D]efendants have a weak but colorable argument that the advertisements in question were in compliance with the court's order because they did not in fact create consumer confusion of a prohibited type." This language shows clearly that this court did not reach the question of whether the Men's World ad caused consumer confusion, while intimating that it would answer that question affirmatively if it were to reach the question.
Because the issue of consumer confusion was not decided, let alone necessarily decided, in Allen II, that opinion has no collateral estoppel effect in the present case. R & S's motion to dismiss Allen's complaint on collateral estoppel grounds is denied.
The Men's World Motion
Res judicata is an affirmative defense, Fed.R.Civ.P. 8(c), and as such is waived if not affirmatively pleaded in the answer. Evans v. Syracuse City School District, 704 F.2d 44, 47-48 (2d Cir.1983). Men's World's answer to the complaint pleads six affirmative defenses, see id. FIFTEENTH-TWENTIETH, but res judicata is not among them. Therefore there is no need to consider Men's World's motion papers on this topic separately.
R & S's Rule 12(b)(6) Motion
R & S moves to dismiss each of Allen's causes of action for failure to state a claim. This court is persuaded that the motion must be granted as to some, though not all, of Allen's causes of action.
Allen claims that defendants "have been unjustly enriched through their unauthorized exploitation of [his] name, portrait, picture, likeness, and persona." Complaint ¶ 40 (emphasis in original). This is a common law claim against defendants for their alleged commercial use of "the name, portrait, or picture of any living person without first having obtained the written consent of such person."
Stephano v. News Group Publications, Inc., 64 N.Y.2d 174, 183, 474 N.E.2d 580, 584, 485 N.Y.S.2d 220, 224 (1984) (citations and footnote omitted). This claim must be dismissed.
Allen's § 368-d Claim
Allen correctly maintains that the Stephano court held only that the Civil Rights Law preempts common law causes of action, not statutory claims such as Allen makes under § 368-d of the General Business Law.
If Allen's claim is that his likeness rather than his face is a trademark, it would not appear to be dilutable within the meaning of § 368-d.
Thus, Allen's § 368-d claim essentially is one of unauthorized use of his likeness for commercial purposes. As such it is equivalent to a claim of violation of his right of publicity, and so is cognizable only under the New York Civil Rights Law, not the General Business Law. This claim must, therefore, be dismissed.
Allen's Civil Rights Law Claim
Allen renews his contention that unauthorized use of Boroff's picture for commercial purposes violates his right to privacy under Civil Rights Law §§ 50-51. The difficulty with this contention is that the statute by its terms extends protection only to likenesses of Allen, and the Men's World photo is a photo of Boroff. In National Video, as noted, this court left open the question whether a photo of Boroff could be a "portrait or picture" of Allen for §§ 50-51 purposes, but noted that the applicable standard would be whether "most persons who could identify an actual photograph of [Allen] would be likely to think that this was actually his picture." National Video, 610 F.Supp. at 624. Here, we are confronted with the same question, but with the added twist that a disclaimer appears under the photo. In view of this difference, R & S argues that no reasonable person could find that the Men's World ad contained a portrait or picture of Allen.
This novel and theoretically interesting argument would be worthy of more serious consideration than a 12(b)(6) motion allows, and would incline this court to treat the motion as one for summary judgment, reserving decision to permit the parties to make such further submissions as are contemplated by Rule 56 and this court's Local Rules, were it not for the fact that we need not decide the motion. The situation is parallel to that in National Video, where this court noted that Allen would be entitled to virtually identical relief under either a § 51 or a Lanham Act claim, and that he was entitled to summary judgment on his Lanham Act claim. In this case, which presents even more unusual facts than did National Video, under § 51 Allen would be able to obtain a prohibition against defendants representing that he had endorsed Men's World's products, relief available to him under the Lanham Act.
Allen's Lanham Act Claim
Allen's Lanham Act claim in this case is made under the same provision he
R & S fails in this endeavor. Its principal argument is that unlike the defendants in National Video, Men's World is not in competition with Allen, and "[t]he statute is directed against unfair competition. To be actionable, conduct must not only be unfair but must in some discernible way be competitive." Halicki v. United Artists Communications, Inc., 812 F.2d 1213, 1214 (9th Cir.1987). So it must, but as this court and our Court of Appeals have many times made clear, the operative word is "discernible," not "competitive."
Thus, in National Video itself, we held that "[t]here is no requirement under the [Lanham] Act that plaintiff and defendant actually be in competition." 610 F.Supp. at 628. It was sufficient that National Video's audience of movie watchers was "the same audience to which plaintiff's own commercial efforts are directed." Id. And in one of this court's most seminal, widely cited cases on § 1125, Judge Griesa wrote:
Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 467 F.Supp. 366, 374 (S.D.N.Y.), aff'd, 604 F.2d 200 (2d Cir. 1979).
Not only to stand, but to prevail. As in National Video, this court's analysis of likelihood of confusion in an § 1125(a) case is guided by the six factors suggested by the Second Circuit in Standard & Poor's Corp. v. Commodity Exchange, Inc., 683 F.2d 704, 708 (2d Cir.1982). The status of the first two Standard & Poor's factors — the strength of plaintiff's "mark" and its similarity to defendant's "mark" — remains unchanged from National Video. Allen remains well known and Boroff continues to resemble him strongly. The third factor, proximity of the products, requires a slightly different treatment than in National Video, in which Allen's identification with movies and National Video's operation of video rental stores marked off a common audience of movie watchers. Here, we begin with the proposition that there is at least an overlap between the Men's World audience of purchasers of discount clothing and Allen's audience of movie watchers. It is to the intersection of these audiences that Men's World is appealing, by placing an ad containing a picture of Boroff in a periodical that also regularly publishes movie theatre schedules, display ads for Allen's films, and other features
As in National Video, the fourth factor, evidence of actual confusion, is probative of likelihood of confusion but not required. With respect to the fifth factor, sophistication of the audience, defendants here stand worse than in National Video, where the advertising venue was Video Review, a magazine targeted at video consumers whose sophistication weighed, to some degree, against likelihood of confusion. Newsday, by contrast, is a general-interest tabloid daily newspaper circulated throughout the New York City metropolitan area; as one of the area's four major metropolitan dailies, it necessarily aims for the widest possible circulation, and so its readers' sophistication about film must be presumed to be less than that of Video Review's readers.
Finally, Standard & Poor's bids the court to consider the good or bad faith of the defendants. In this connection, the court has reviewed the hearing on the contempt order in Allen II conducted on June 5, 1986, as well as the affidavit of Howard Blasberg ("Blasberg Aff."), Director of Operations of Ron Smith Celebrity Look-Alikes, docketed in this court on June 2, 1986. The Blasberg affidavit makes clear that R & S knew of National Video; it consists largely of an account of conversations between Blasberg and Sheila Kauvar of R & S involving the placement and character of the disclaimer required by National Video.
First, after Ms. Kauvar sent layouts indicating the placement of the disclaimer, Blasberg affirms:
Blasberg Aff. ¶ 7. Later, Blasberg affirms,
Id. ¶ 9. Thus, the Blasberg affidavit shows that R & S was aware of the existence of the National Video litigation and of the existence of this court's order in that litigation. It does not show that Smith transmitted a copy of the order to R & S; at best it establishes that Smith, through its agent Blasberg, informed R & S of the requirements of the order in a general way. More particularly, the Blasberg affidavit does not demonstrate that R & S was aware of the ambiguity in the order that allowed Smith and Boroff to escape contempt in Allen II. When Blasberg speaks of "the disclaimer," he means the advertising copy "This is a Ron Smith Celebrity Look-Alike." This court, at the June 5, 1986 hearing, required that this language be supplemented by a disclaimer that Allen endorsed Men's World's products and services. The Blasberg affidavit does not demonstrate that R & S knew that the spirit of the court's order, as has been explained, was that such language be included. Thus, at a minimum, the same
National Video, 610 F.Supp. at 628.
Thus, taking the Standard & Poor's factors into account, this court is led, as it was in National Video, "to the inescapable conclusion that defendants' use of Boroff's photograph in their advertisement creates a likelihood of consumer confusion over plaintiff's endorsement or involvement." Id. Neither party's submissions bring to this court's attention any difference between the Men's World advertisement, the subject of Allen II, and the National Video advertisement sufficient to raise a genuine issue of material fact in this case. This court remarked, informally, at the Allen II contempt hearing that the Men's World ad created a likelihood of consumer confusion.
Since 1961, when Judge Medina went out of his way to recant his earlier views,
Allen's Other Requests for Relief
In addition to an injunction, Allen seeks the following kinds of relief:
2. Five million dollars in punitive damages. Punitive damages have been held not to be recoverable in Lanham Act cases. Electronics Corporation of America v. Honeywell, Inc., 358 F.Supp. 1230, 1235 (D.Mass.), aff'd, 487 F.2d 513 (1st Cir.1973), cert. denied, 415 U.S. 960, 94 S.Ct. 1491, 39 L.Ed.2d 575 (1974).
3. Attorney's fees. In 1975 Congress amended 15 U.S.C. § 1117 to allow recovery of attorney's fees in "exceptional cases" in Lanham Act actions. Exceptional cases have generally been held to be such as involve fraud or bad faith. See, e.g., Safeway Stores, Inc., v. Safeway Discount Drugs, Inc., 675 F.2d 1160, 1169 (11th Cir. 1982). Because this court declined to find that there is evidence of fraud or bad faith on defendants' part in this case, it declines in its discretion to award Allen attorney's fees.
4. An accounting of profits derived from the advertisement. Although our Court of Appeals has long permitted an accounting in Lanham Act cases even where there is no direct competition between products, see, e.g., W.E. Bassett Co. v. Revlon, Inc., 435 F.2d 656, 664 (2d Cir. 1970), its policy justification has been deterrence:
In the circumstances of this case, however, this court concludes that a permanent injunction is a sufficient deterrent to provide Allen with complete relief.
In summary, then, defendants' motions to dismiss on the grounds that this case is res judicata and of collateral estoppel are DENIED;
Defendant R & S's motion to dismiss Allen's common law unjust enrichment claim is GRANTED;
R & S's motion to dismiss Allen's dilution claim under N.Y.Gen.Bus.L. § 368-d is GRANTED;
The court DECLINES TO REACH R & S's motion to dismiss Allen's claim under N.Y.Civ.Rights L. §§ 50-51;
R & S's motion to dismiss Allen's claim under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), is DENIED.
With respect to Allen's Lanham Act claim, this court finds that there are no disputed issues of material fact and that Allen is entitled to judgment as a matter of law, and consequently under Fed.R.Civ.P. 56 GRANTS SUMMARY JUDGMENT on that claim, with relief as described in the Order that accompanies this Opinion.
In conformity with the opinion filed simultaneously herewith,
Defendants' motions to dismiss on the grounds that this case is res judicata and of collateral estoppel are DENIED;
Defendant Ribaudo & Schaefer (R & S)'s motion to dismiss Allen's common law unjust enrichment claim is GRANTED;
This court DECLINES TO REACH R & S's motion to dismiss Allen's claim under N.Y.Civ.Rights L. §§ 50-51;
R & S's motion to dismiss Allen's claim under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), is DENIED; treating that motion as one for summary judgment under Fed.R.Civ.P. 56, this court GRANTS SUMMARY JUDGMENT as to Allen's claim of liability under the Lanham Act;
It is ORDERED that defendants, insofar as is applicable, be enjoined from engaging in any of the practices creating a likelihood of consumer confusion that were enjoined in this court's June 25, 1986 amended order in Allen v. National Video, Inc., No. 84 Civ. 2764 (CBM) [Available on WESTLAW, 1986 WL 7270].
Thus, even in a second action between the same parties res judicata requires a tighter link between claims than is found here. In Allen II, the issue was whether Smith and Boroff had violated this court's National Video contempt order. Evidence germane to this issue would relate to such matters as Smith and Boroff's knowledge of the order and what it required, Allen's showing that Smith and Boroff had willfully violated the order, and so on. In this Lanham Act case, the issue is whether Men's World and R & S, parties not bound by the order, engaged in conduct that created a likelihood of consumer confusion. Evidence relevant to this issue has nothing whatever to do with whether Smith and Boroff, who are not parties to this action, violated the order, even though the two cases concededly involve the same series of transactions.
It is noteworthy that R & S tries to distance itself from Smith and Boroff in its Memorandum of Law in Support of its Motion to Dismiss, observing that it was not a party to the Allen II orders and claiming that it "acted in good faith in its very limited use of the Boroff photograph," id. at 5, and that "Ribaudo & Schaefer have been inadvertently caught in the crossfire. ... Plaintiffs crusade should not be carried out at the expense of these marginally connected defendants," id. at 12. A "marginally connected" party can scarcely be said to be a privy.
R & S cannot blow hot and cold in the same lawsuit: either the present defendants are closely connected enough with Smith and Boroff to be their privies, in which case R & S is scarcely the "inadvertent" victim of a crusade against Smith and Boroff, or they are not, in which case R & S cannot claim what it supposes to be the benefits of res judicata.
Yale Electric Corp. v. Robertson, 26 F.2d 972, 974 (2d Cir.1928). Patently, this passage does not assert that a face can be a trademark. Rather, it explains that dilution without competition is tortious because the relation between trademark and owner is as intimate as that between face and owner.
The faces of cartoon characters are of course both copyrightable, Walt Disney Productions v. Air Pirates, 581 F.2d 751 (9th Cir.1978), cert. denied sub nom. O'Neill v. Walt Disney Productions, 439 U.S. 1132, 99 S.Ct. 1054, 59 L.Ed.2d 94 (1979), and registrable under the Lanham Act, e.g., Frederick Warne & Co. v. Book Sales, Inc., 481 F.Supp. 1191, 1196-97 (S.D.N.Y.1979), but they are distinguishable from human faces in that they are essentially artifacts.
Even if Allen had established that his likeness has secondary meaning, to state a claim under § 368-d he would have to prove likelihood of dilution. Sally Gee, 699 F.2d at 625. In Sally Gee the Second Circuit endorsed a distinction between two kinds of dilution: "Junior uses may blur a mark's product identification or they may tarnish the affirmative associations a mark has come to convey." Id. (quoting 3 R. Callman, The Law of Unfair Competition, Trademarks, and Monopolies § 84.2, at 954-55 (footnote omitted)). Because Allen does not allege that Men's World sells inferior clothing, thereby tarnishing his mark, his theory is presumably one of blurring. This, however, requires a showing of "sufficient similarity between the two marks to show that the allegedly infringing mark is likely to blur plaintiff's mark." Universal City Studios, Inc. v. Nintendo Co., 578 F.Supp. 911, 930 (S.D.N.Y.1983), aff'd, 746 F.2d 112 (2d Cir.1984). Allen has not made such a showing.