Bigstar Entertainment, Inc. v. Next Big Star, Inc.
| Decision Date | 17 April 2000 |
| Docket Number | No. 00 Civ. 0911 VM.,00 Civ. 0911 VM. |
| Citation | 105 F.Supp.2d 185 |
| Parties | BIGSTAR ENTERTAINMENT, INC., Plaintiff, v. NEXT BIG STAR, INC., Next Big Star L.L.C., Victory Entertainment Corporation and Michael H. Gerber, Defendants. |
| Court | U.S. District Court — Southern District of New York |
Jeffrey A. Conciatori, Lisa T. Simpson, Orrick, Herrington & Sutcliffe, L.L.P., New York, NY, for Plaintiff.
Steven J. Stein, Kay, Collier et ano., New York, NY, for Defendants.
DECISION AND ORDER
BigStar Entertainment, Inc. ("BigStar"), plaintiff in this action for a preliminary injunction, seeks to restrain Next Big Star, Inc. and related defendants (collectively, "Next Big Star") from using a name that plaintiff contends infringes on BigStar's prior trademark rights. BigStar's business for over two years has been principally the sale of videos, offered along with free information about the film industry, chat rooms and interviews with movie celebrities, all conducted online through the World Wide Web at "www.bigstar.com". Next Big Star was launched recently to conduct an entertainment talent search. For this purpose, defendants established a website at "www.nextbigstar.com" through which they plan to conduct their talent contest and offer related information, chat rooms and interviews with celebrities.
The case, typical of many trademark disputes, reaches to the fringes of the subtleties that very often enter into what is in a name and manifests the weighty consequences associated with the choice. The parties' legal quarrels here, and the issues they raise, are familiar. But the controversy adds the dimension of cyberspace. It joins the ranks of the exponential number of legal struggles arising out of the use of the Internet — as a mass medium of communication and commerce, and, more and more prolific as consumers and markets expand and competing users clash, as an incubator of lawsuits. Many among this rapidly growing variety of cases raise knotty issues, some of them novel. Do these online collisions pose new, unique difficulties to the law? To what extent do the distinct dimensions of the World Wide Web challenge the established concepts and methods developed to resolve legal conflicts arising from other media? Do the familiar approaches suffice to accommodate analysis of unaccustomed aspects of the new disputes? The case before the Court prompts some of these questions, aspects of which have not been fully addressed in this Circuit.
The Court, having reviewed the parties' papers raising some of these issues, and having heard oral argument, sets forth its findings of fact and conclusions of law in accordance with Rule 52(a) of the Federal Rules of Civil Procedure. For the reasons described below, this Court has concluded that BigStar, though first in time as between these parties to stake out its name, trademark and web domain, has not met the legal burden to establish it is entitled to enjoin Next Big Star at this stage of these proceedings.
The facts before this Court are undisputed. The parties' disagreement is limited to the application of relevant legal standards to these facts.
BigStar, a Delaware corporation with an office in New York, has its principal address in cyberspace at "www.bigstar.com". There it operates as an online retailer dedicated exclusively to filmed entertainment products such as videocassettes, digital video discs ("DVDs") and related movie merchandise. Plaintiff's website also provides its visitors with movie industry news, interviews with celebrities, movie previews and periodic online chats in real time with film celebrities.
Plaintiff has used variations of its name as trademarks and in a logo to identify its "Movie Superstore" on the Internet since its incorporation in March 1998 and has used and advertised its name and domain address since the launching of its website in May of 1998. Its website logo contains the words "bigstar.com" and appears in black ("bigstar") and red (".com"). A five-pointed red star is used to dot the "i", and a light bluish-grey trail evinces that the star has streaked across the top of the logo to the left from the right.
Plaintiff filed applications for trademark registration protection with the Patent and Trademark Office ("PTO") in October 1998 for "BIGSTAR" and in May 1999 for "BIGSTAR.COM". These applications remain pending. While no opposition to them has been filed to date, at least two parties, including defendants herein, have requested additional time from the PTO within which to consider whether to file a Notice of Opposition to plaintiff's marks. Plaintiff states it has spent over $12 million to date on marketing BigStar's name and products, by virtue of which it contends its trademarks have become well known and established in the market in which they operate. According to plaintiff, it received over 3 million unique visits to its website in January 2000.
In December 1999, BigStar formed an alliance with Value Vision International Inc. ("Value Vision") and announced a venture into the offline world, where it hopes to produce a weekly television program for Value Vision's cable network. BigStar's show, to be called "THE BIGSTAR SHOW" will consist of human interest stories about film celebrities and their movies and will offer plaintiff's merchandise for sale. Plaintiff has also filed with the PTO an application to register "THE BIGSTAR SHOW" in connection with its television production.
Defendants Next Big Star, Inc. and Next Big Star L.L.C. are corporations organized in December 1999 and January 2000, respectively, under the laws of the state of Delaware. Both entities are involved with defendant Victory Entertainment Corporation, a multimedia company incorporated in Florida, in the development, sponsorship and production of an online talent competition to be conducted and judged on the Internet and of a related network television program to be produced quarterly in order to introduce the competition winners. Defendant Michael H. Gerber is a New York resident who serves as president and chief executive officer of Victory Entertainment Corporation, and as senior executive of the other corporate defendants. Mr. Gerber assisted with the creation of the "Next Big Star" mark2 and the implementation of the talent search venture.
The defendants, in or about October 1999, approached Ed McMahon, a television personality who was previously associated with The Tonight Show and who had hosted a talent competition on national television called Star Search, in an attempt to enlist him in their enterprise. Mr. McMahon joined forces with the defendants and, from November 1999 through January 2000, helped them design the contest, television show and website.
On January 25, 2000, defendants issued a press release promoting their new online talent competition and related television program and the launching of "www.nextbigstar.com" as the site for the competition. Defendants claim that their website received 4.75 million "hits" in the weeks immediately following the announcement of their venture.
Defendants' logo, which was revised shortly after this litigation commenced as a direct result of plaintiff's instant application, now contains the words "ED McMAHON'S nextbigstar.com", the first half of which appears in white or red ("ED McMAHON'S"), with the other words in yellow ("nextbigstar" and "com"). It, too, has a five point red star, but here the star replaces the period in ".com", above which there is a long triangular red mark designed to resemble the upward beam of a searchlight.
Defendants' website celebrity interviews, along with the information there provided, are intended primarily to promote the talent search and encourage participation. Defendants are also sponsoring a national bus tour to search for talent and, to this end, were scheduled to start visiting some 40 cities in March 2000. Persons interested in entering the competition, whether enlisted by promotion online or through the bus tour, may select the category that best fits their skills from the many choices offered by defendants such as music, comedy, dance and modeling. The aspiring performer is invited to complete and sign an entry form which may be copied from the website and submitted to defendants, along with a registration fee of $19.95 and a self-produced videotaped performance.
Performances are to be displayed on the Internet for judging by individuals at home who may download, view and vote on them. Under defendants' plan, the online contest winners are to appear on a nationally televised competition to be broadcast four times a year on a major network. The television contest, which is to be called "The Next Big Star Show", is to be hosted by Mr. McMahon and will be simulcast on the World Wide Web. Performers who reach the television competition are eligible to win cash awards up to $10,000.00 and other prizes.
Plaintiff, upon learning of defendants' plans as announced on January 25, 2000, moved on February 7, 2000 for a preliminary injunction under Rule 65 of the Federal Rules of Civil Procedure to restrain defendants from (a) using "Next Big Star" or "nextbigstar.com" as a trademark, trade name, Internet domain name or as part of a logo in connection with their new online talent competition or related television program and (b) taking any other actions designed or intended to infringe and dilute the value of plaintiff's trademarks, logo and domain name. This Court heard oral argument on February 22, 2000.
A preliminary injunction is an extraordinary equitable remedy which places on the movant the burden of proving each element requisite for such relief. The decision to grant a preliminary injunction rests within the sound discretion of the Court. To obtain a preliminary injunction in this Circuit, the moving party must show (1) irreparable harm and (2) either (a) a...
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