Ringling Bros. v. BE Windows Corp.

• Decision Date: 02 August 1996
• Docket Number: No. 96 Civ. 4758 (SAS).,96 Civ. 4758 (SAS).
• Citation: 937 F. Supp. 204
• Parties: RINGLING BROS.-BARNUM & BAILEY COMBINED SHOWS, INC., Plaintiff, v. B.E. WINDOWS CORPORATION, Defendant.
• Court: U.S. District Court — Southern District of New York

937 F. Supp. 204

RINGLING BROS.-BARNUM & BAILEY COMBINED SHOWS, INC., Plaintiff, v. B.E. WINDOWS CORPORATION, Defendant.

No. 96 Civ. 4758 (SAS).

United States District Court, S.D. New York.

July 11, 1996.

Opinion Denying Reargument August 2, 1996.

Laura E. Goldbard, Stroock & Stroock & Lavan, New York City, for Ringling Bros.-Barnum & Bailey Combined Shows, Inc.

Theresa M. Gillis, Jones, Day, Reavis & Pogue, New York City, for B.E. Windows Corp.

OPINION AND ORDER

SCHEINDLIN, District Judge.

Plaintiff Ringling Bros.-Barnum & Bailey Combined Shows, Inc. ("Ringling") brings this action against Defendant B.E. Windows Corporation ("B.E.") alleging violation of its rights to the trademark phrase THE GREATEST SHOW ON EARTH. Ringling has moved by Order to Show Cause for a preliminary injunction pursuant to Rule 65 of the Federal Rules of Civil Procedure based upon its claims for dilution of this trademark under 15 U.S.C. § 1125(c) and § 368-d of the New York General Business Law.¹ Plaintiff asks the Court to enjoin B.E. from using the name "The Greatest Bar on Earth," which recently opened atop the World Trade Center. An evidentiary hearing was held on July 3, 1996. For the reasons discussed below, Plaintiff's motion is denied.

I. Factual and Procedural Background

A. Ringling and Its Mark

Ringling has been in the circus and entertainment business since the 1870s and has been using the phrase THE GREATEST SHOW ON EARTH continuously from that time until the present in its advertisements, promotions and productions. Complaint ("Cplt.") ¶ 11. Ringling is the owner of several U.S. trademarks, including registrations for the use of THE GREATEST SHOW ON EARTH in television programs, t-shirts, program books, playing cards and coloring books. Id. ¶¶ 6-10. Plaintiff also owns trademarks for the well-known globe design used in conjunction with the phrase. Id. Ringling's central activity is providing circus entertainment throughout the United States; it presents approximately 1,000 shows per year in 95 cities to approximately 12 million people. Id. ¶ 12. The circus appears in the New York City metropolitan region for two months out of every year. Id. ¶ 13. Through various media outlets, the mark THE GREATEST SHOW ON EARTH is exposed to over 70 million people per year. Id. ¶ 12.

Ringling heavily advertises its circus in each market where it appears, saturating the area with billboards, direct mail, and newspaper, radio and television advertisements. Cplt. ¶ 15. Plaintiff also enters into joint promotions with retailers, radio stations, governmental agencies, and manufacturers of products as varied as hair spray and frozen hamburgers. Id. ¶ 16; Plaintiff's Exhibit ("Pl.Ex.") 19. The joint agreements generally require Ringling to provide circus tickets to the co-promoters who in turn pay for print advertisements that feature their goods or services in association with "The Greatest Show on Earth." Joint promotions are subject to highly restrictive guidelines, as are Ringling's trademark licensing agreements. Cplt. ¶ 14. The phrase THE GREATEST SHOW ON EARTH is prominently used in conjunction with or as a substitute for the name "Ringling Bros."² Id. ¶ 15. During the past fiscal year, Ringling's advertising expenditures totalled over $19 million. Id.

As part of its long-standing corporate policy, Ringling vigorously protects any abuse of its trademark. Cplt. ¶ 14. Ringling's legal department handles many incidents of possible trademark infringement each year, in an effort to protect THE GREATEST SHOW ON EARTH.³ Testimony of Julie Alexa Strauss, Ringling's Vice President and Corporate Counsel, July 3, 1996. When Ringling is notified of a possible infringement (by an employee or otherwise) it investigates and, if necessary, sends a cease and desist letter to the offending party. Id. In almost every instance, Ringling either obtains an agreement from the party to cease its use or grants a license to the party. Affidavit of Julie Alexa Strauss, June 24, 1996 ("Strauss Aff.") ¶ 9.

Ringling further alleges that in an effort to preserve its family-oriented image, it does not conduct joint promotions or licensing with companies whose business involves cigarettes, sex, or alcohol. Id. However, Stephen Yaros, Ringling's New York Regional Marketing Director, testified that beer is frequently sold by concessionaires at the various arenas around the country where the circus performs. He also testified that some of Ringling's restaurant sponsors sell alcohol.

B. B.E. Windows and Its Bar

Defendant B.E. Windows Corporation recently opened "The Greatest Bar on Earth" on the 107th floor of the World Trade Center. Cplt. ¶ 20. The bar is the creation of Joseph Baum, widely known for his innovative restaurant creations, such as the Rainbow Room, Mama Leone's, and the original Windows on the World. Memorandum in Opposition to Plaintiff's Application for an Order to Show Cause for a Preliminary Injunction ("Opp.Mem.") at 2. B.E. claims that the bar's location works together with Baum's creative genius to entitle the bar to its designation as "The Greatest Bar on Earth." Id. at 15. It is a bar which "conceptually ... is on earth but seems halfway to the moon." Id. at 2. Because of this, the bar employs a moon and stars graphic motif, which is used in conjunction with the name "The Greatest Bar on Earth" on food and drink menus. Pl.Ex. 28. More than $50,000 was invested in the design and production of the logo and collateral material used in connection with the bar's name. Declaration of David Emil, President of B.E. Windows, June 28, 1996 ("Emil Dec.") ¶ 8.

C. The Present Action

Toward the end of May 1996, Ringling became aware that B.E. was about to open "The Greatest Bar on Earth." On June 3, 1996, Ringling's counsel informed David Emil that B.E.'s proposed name constituted a violation of Ringling's trademark rights. Cplt. ¶ 21. A follow-up letter was sent on June 4, 1996, requesting that B.E. refrain from its planned use of the name. Id. B.E.'s counsel responded with a letter of her own, dated June 13, 1996, in which she stated her belief that "The Greatest Bar on Earth" did not infringe upon Ringling's trademark. Id. ¶ 22. Ringling sent a second letter to B.E. on June 14, reiterating its position. Id. ¶ 23. A telephone conversation between counsel for the parties took place on June 19. Upon being informed by B.E. that it planned to keep the name, Ringling issued a third warning in writing, stating clearly that Ringling intended to enforce its rights to prevent the dilution of its trademark. Id. ¶ 24. Ringling filed its Complaint on June 24, 1996.

II. Legal Standards

Because of the great potential for harm which may occur from the issuance of a preliminary injunction, the party seeking the injunction must sustain a heavy burden. Before an injunction may be issued, the moving party "must establish (1) irreparable injury and (2) either a likelihood of success on the merits, or a sufficiently serious question going to the merits and a balance of hardships tipping decidedly in the moving party's favor." Laureyssens v. Idea Group, Inc., 964 F.2d 131, 135-36 (2d Cir.1992) (emphasis in original). At this stage of the lawsuit, Plaintiff has not satisfied these criteria.

Ringling seeks a preliminary injunction based only upon its claims for trademark dilution. A claim for dilution can be made out under both Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c),⁴ and under New York state law, N.Y.Gen.Bus.Law § 368-d.⁵

The statutes are similar in several regards. First, both require that the mark have "distinctive quality." Further, both statutes state that a claim for dilution can be established regardless of whether the goods or services are in competition, and regardless of whether there exists a likelihood of consumer confusion. Additionally, both provide protection whether or not the trademark is registered.

A. Federal Trademark Dilution Act of 1995

Because the Federal Trademark Dilution Act of 1995 ("the Act") was enacted just over six months ago, there is virtually no precedent upon which to rely for guidance as to its interpretation.⁶ The legislative history of the Act indicates that its purpose is "to protect famous trademarks from subsequent uses that blur the distinctiveness of the mark or tarnish or disparage it, even in the absence of a likelihood of confusion." H.R.Rep. No. 374, 104th Cong., 1st Sess. 3 (1995) U.S.Code Cong. & Admin.News 1995 pp. 1029, 1030. The Act created a federal cause of action to protect trademarks from unauthorized users who "attempt to trade upon the goodwill and established renown of such marks." Id. Congress apparently thought that federal protection was necessary, given the fact that at the time of the Act's passage, only half of the fifty states had laws protecting trademarks from dilution. See 141 Cong. Rec. H14317-01, H14317 (daily ed. Dec. 12, 1995) (statement of Rep. Moorhead). Because protection was "only available on a patch-quilt system," Congress sought to discourage forum-shopping and give authority to federal courts to issue nationwide injunctions based upon trademark dilution. Id. at H14318.

Members of Congress also spoke in favor of the Act as a way to assist the United States in its worldwide business efforts. See, e.g., 141 Cong.Rec. S19306-10, S19310 (daily ed. Dec. 29, 1995) (statement of Sen. Hatch); 141 Cong.Rec. S19312-01 (daily ed. Dec. 29, 1995) (statement of Sen. Leahy) ("We intend for this legislation to strengthen the hand of our international negotiators from the Office of the U.S. Trade Representative and the Department of Commerce as they press for bilateral and multilateral agreements to secure greater protection for the world famous marks of our U.S. companies.").

Significantly, the Act was not intended to "pre-empt existing state dilution statutes. ... A federal dilution statute should ... coexist with state dilution law." H.R.Rep. No. 374, 104th Cong., 1st Sess....