856 F.2d 1445 (9th Cir. 1988), 87-6607, Miss World (UK) Ltd. v. Mrs. America Pageants, Inc.
|Citation:||856 F.2d 1445|
|Party Name:||8 U.S.P.Q.2d 1237 MISS WORLD (UK) LIMITED, et al., Plaintiffs-Appellants, v. MRS. AMERICA PAGEANTS, INC., et al., Defendants-Appellees.|
|Case Date:||September 15, 1988|
|Court:||United States Courts of Appeals, Court of Appeals for the Ninth Circuit|
Submitted July 25, 1988[*]
Dorette S. Feit, Irell & Manella, Los Angeles, Cal., Davis & Gilbert, New York City, for plaintiffs-appellants.
Ronald S. Rosen, Silverberg, Rosen, Leon & Behr, Los Angeles, Cal., for defendants-appellees.
Appeal from the United States District Court for the Central District of California.
Before SNEED, KOZINSKI and THOMPSON, Circuit Judges.
SNEED, Senior Circuit Judge:
Miss World (UK) Ltd. and Miss World (Jersey) Ltd. (collectively hereinafter referred to as "Miss World Ltd.") appeal the denial of a motion for a preliminary injunction against Mrs. America Pageants, Inc. and its promoters' use of the title "Mrs. of the World" in a beauty pageant. We affirm.
FACTS AND PROCEEDINGS BELOW
Miss World Ltd. has produced beauty pageants since 1951. Unmarried women from over eighty countries annually vie for the title of "Miss World." The winner of
each competition spends the next year representing Miss World at various charitable and commercial functions.
The Miss World contest, which is held in the United Kingdom, has been publicized and televised in the United States for a number of years. The United States has had a contestant in the pageant since 1952. The competition to select that contestant is run by franchisees of Miss World Ltd. Thus, as Miss World Ltd.'s brief indicates, 'MISS WORLD' connotes the corporate entities involved, the Miss World Ltd.'s international pageant, the contestants and, of course, the titlist.
In 1984, one of the defendant-appellees, David Z. Marmel, the producer of the Mrs. America Pageant, incorporated Mrs. of the World, Inc. 1 to produce a new international beauty pageant for married women. The idea has its source in the desire to create an international pageant to complement the Mrs. America Pageants, Inc. whose contestants were married women from each of the United States. The projected international competition would mirror the Mrs. America Pageant's stress on "not only beauty but also the expression of opinions on marriage and important current issues" and additionally "would foster greater communication, friendship and mutual understanding among people of all cultures." Appellees' Brief, p. 4.
Mrs. America Pageants chose the name "Mrs. of the World" for their new pageant. Miss World Ltd., upon learning of this pageant, demanded that Mrs. America Pageants stop using that name. Mrs. America Pageants assured Miss World Inc. that they did not intend to cause confusion or exploit its mark, and changed the name of their 1984 pageant to "Mrs. Woman of the World." 2 Although, by their account, the pageant was a great success, receiving extensive media coverage and being broadcast internationally, in their subsequent pageants Mrs. America Pageants reverted to the name it had originally chosen, "Mrs. of the World." Through the letters of counsel, the parties asserted their legal position with respect to whether the trademark "Mrs. of the World" infringed on the trademark "Miss World." Miss World Ltd. claims that there was some sort of agreement between the parties that Mrs. America Pageants would only use "Mrs. Woman of the World." Miss World Ltd. does not attempt to rest this case exclusively on this agreement.
On September 15, 1986, while Mrs. America Pageants was taping its third Mrs. of the World pageant, Miss World Ltd. brought this suit in the Central District of California for service mark infringement and unfair competition under the Lanham Act and for unfair competition under California law. 3 The district court denied Miss World Ltd.'s request for a temporary restraining order and its motion for a preliminary injunction. After requesting and being denied an injunction pending appeal Miss World Ltd. filed an emergency motion with this court seeking an injunction pending appeal and an expedited appeal. This court granted the motion in part by enjoining Mrs. America Pageants' use of "Mrs. World," but permitting the use of "Mrs. of the World." After briefing and argument this court vacated the district court's order and remanded with instructions to make more detailed findings on the factors relevant to assessing the likelihood of confusion in the use of "Mrs. of the World." After applying the factors, the district court again came to the conclusion that a preliminary injunction should not issue. Miss World Ltd. now appeals from that decision.
The district court had jurisdiction under the Lanham Act, 15 U.S.C. Sec. 1121, 28 U.S.C.
STANDARD OF REVIEW
We review the legal conclusion of likelihood of confusion de novo, but we review the facts leading to that conclusion under the clearly erroneous standard. Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 782 F.2d 1508, 1509 (9th Cir.1986).
THE PRELIMINARY INJUNCTION STANDARD
The standard for granting a preliminary injunction is settled: "To obtain a preliminary injunction, a party must show either (1) a likelihood of success on the merits and the possibility of irreparable injury, or...
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