Allen v. Men's World Outlet, Inc., 87 Civ. 1631 (CBM).

• Decision Date: 29 January 1988
• Docket Number: No. 87 Civ. 1631 (CBM).,87 Civ. 1631 (CBM).
• Citation: 679 F. Supp. 360
• Parties: Woody ALLEN, Plaintiff, v. MEN'S WORLD OUTLET, INC. and Ribaudo & Schaefer, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

679 F. Supp. 360

Woody ALLEN, Plaintiff, v. MEN'S WORLD OUTLET, INC. and Ribaudo & Schaefer, Inc., Defendants.

No. 87 Civ. 1631 (CBM).

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

January 29, 1988.

Laufer & Farkash by Jacob Laufer and Patricia M. Karish, New York City, for plaintiff.

Satterlee & Stephens by James F. Rittenger and Mario Aieta, New York City, for Ribaudo & Schaefer, Inc.

Morris, Graham, Stephens & McMorrow by Donald K. Koch, Great Neck, N.Y., for Men's World Outlet, Inc.

OPINION

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,"¹ comes before this court to enjoin what he contends is the unauthorized exploitation of his likeness and reputation through the use of celebrity look-alikes in advertising matter. Defendants Men's World Outlet, Inc. ("Men's World") and Ribaudo & Schaefer ("R & S") argue that three is one time too many. Presently before this court are motions by R & S to dismiss on the grounds of (1) res judicata and collateral estoppel and (2) failure to state a claim under Fed.R.Civ.P. 12(b)(6), and a motion by Men's World to dismiss on the grounds of res judicata and collateral estoppel. For the reasons set forth below the court denies the motions to dismiss on grounds of former adjudication; grants R & S's 12(b)(6) motion as to Allen's common law unjust enrichment and New York General Business Law § 368-d claims; declines to reach the 12(b)(6) motion as to Allen's New York Civil Rights Law §§ 50-51 claim; denies the motion as to Allen's Lanham Act claims; and, treating the motion as one for summary judgment under Fed.R.Civ.P. 56, enters summary judgment for Allen on those claims.

FACTS

Prior Proceedings

Allen first sought relief from this court in April 1984 against National Video, Inc., which used a photograph of the Allen look-alike Phil Boroff to promote its nationally franchised video rental chain. Allen v. National Video, Inc., 610 F.Supp. 612 (S.D.N. Y.1985). In National Video, Allen sued National Video, Boroff, and Boroff's agent, Ron Smith. Allen contended that such look-alike advertising violated his rights under both the Lanham Trade-Mark Act, 15 U.S.C. §§ 1051-1127 (1982), and N.Y. Civ.Rights L. §§ 50-51 (McKinney 1976 & Supp.1988). Because the offending photograph was not one of Allen, this court declined to reach the state law claim, but granted summary judgment on Allen's Lanham Act claim, having found that the advertisement "created the likelihood of consumer confusion over whether plaintiff endorsed or was otherwise involved with National Video's goods and services." National Video, 610 F.Supp. at 627. An order issued simultaneously with the opinion enjoined Boroff "from appearing as a look-alike for plaintiff in advertising for products or services in interstate commerce which creates a likelihood that a reasonable person might believe that he was actually plaintiff or that plaintiff had approved of his appearance" and Smith from "using or offering the services of defendant Boroff for any advertising creating a likelihood of consumer confusion as described in the injunction against Boroff."

On April 5, 1986, Newsday ran an ad for defendant Men's World featuring a photograph of Boroff with a clarinet.² The copy evoked the "schlemiel" persona Allen cultivated up through his appearance in Annie Hall. Below the picture of Boroff, in small lightface type, appeared the sentence "This is a Ron Smith Celebrity Look-Alike." Allen moved to hold Smith and Boroff in contempt of this court's May 1985 Order. A hearing was held on June 5, 1986, and a memorandum opinion denying the motion filed on June 25, 1986. Although this court found the Men's World advertisement in "clear contempt" of the spirit of its order and opinion, it also found, reluctantly, that "the advertisements are not strictly violative of the letter of these mandates." Allen v. National Video, Inc., No. 84 Civ. 2764 (CBM) (S.D.N.Y. June 25, 1986) Allen II, slip op. at 2 Available on WESTLAW, 1986 WL 7270. Because the order failed to specify how Smith and Boroff were to avoid consumer confusion — by placing disclaimers in boldface type that both identified Boroff as a look-alike and stated that Allen did not endorse the product — this court could not hold Smith and Boroff in contempt. The order's generalized definition of consumer confusion in terms of the reaction of a reasonable person gave these defendants a "weak but colorable" argument that they did not in fact create such confusion, depriving the underlying mandate of the "clear and unambiguous" character it must have if contempt sanctions are to be imposed for its violation. Id. However, an amended order supplementing the May 1985 order was filed simultaneously, to clarify what defendants were required to do in order to avoid illegal consumer confusion.³

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, compensatory and punitive damages, an accounting, and costs.

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.

DISCUSSION

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.

Res Judicata

Our Court of Appeals recently set out the familiar principles of claim preclusion as follows:

The basic principles of res judicata are familiar. "A valid, final judgment on the merits is a bar to a subsequent action between the same parties, or those in privity with them, upon the same claim or demand...." Such a judgment precludes the subsequent litigation both of issues actually decided in determining the claim asserted in the first action and of issues that could have been raised in the adjudication of that claim.

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.⁴Staten Island Rapid Transit Operating Authority, 718 F.2d at 542. As for the Expert Electric criterion of privity, there is not the slightest indication in the record that R & S and Men's World gave Smith and Boroff authority to represent them, or reason to suppose that Smith and Boroff adequately represented Men's World's and R & S's interests.⁵

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.

Collateral Estoppel

In United Technologies, the Court of Appeals also reviewed the elements of collateral estoppel:

The doctrine of collateral estoppel ... normally will bar the relitigation of an issue of law or fact that was raised, litigated, and actually decided by a judgment in a prior proceeding between the parties, if the determination of that issue was essential to the judgment, regardless of whether or not the two proceedings are based on the same claim.

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"...