Elvis Presley Enterprises, Inc. v. Elvisly Yours, Inc.
| Decision Date | 28 April 1987 |
| Docket Number | No. 85-5767,85-5767 |
| Citation | 817 F.2d 104 |
| Parties | , 14 Media L. Rep. 1053 Unpublished Disposition NOTICE: Sixth Circuit Rule 24(c) states that citation of unpublished dispositions is disfavored except for establishing res judicata, estoppel, or the law of the case and requires service of copies of cited unpublished dispositions of the Sixth Circuit. ELVIS PRESLEY ENTERPRISES, INC., Plaintiff-Appellant, v. ELVISLY YOURS, INC., a Tennessee Corporation, Sid Shaw, individually, Elvisly Yours, Ltd., Defendants-Appellees. |
| Court | U.S. Court of Appeals — Sixth Circuit |
Before KENNEDY and MILBURN, Circuit Judges, and JOINER *, Senior District Judge.
Elvis Presley Enterprises, Inc. ("EPE") appeals the denial of a preliminary injunction against Elvisly Yours, Ltd., a corporation of England, Elvisly Yours, Inc. and Sid Shaw (referred to collectively as "Shaw") for trademark infringement and unfair competition. The District Court denied the injunction based on its assessment of no strong likelihood of success on the merits. We find that the District Court erred in its determination of no likelihood of success as to infringement of certain marks on certain goods. We reverse and remand.
EPE is the assignee of state and federal trademarks, service marks, copyrights, and identification (publicity) rights of the Estate of Elvis Presley, variously in the names Elvis, Elvis Presley, or the likeness of Elvis Presley. Presley died in 1977. Tennessee state registration issued in 1981, and federal trademark registrations began to issue in 1983. Shaw registered his trademark "Elvisly Yours" in England in 1979 and in Tennessee in 1982. Shaw has sold goods under this logo since at least 1982. EPE brought suit after an advertisement appeared in January, 1985 in the New York Times offering goods by "Elvisly Yours."
The denial of a preliminary injunction is reviewable under the abuse of discretion standard. Frisch's Restaurant, Inc. v. Shoney's Ins., 759 F.2d 1261, 1263 (6th Cir. 1985). The District Court found no evidence that EPE had used the claimed trademarks with respect to any specific items of merchandise. The court apparently agreed with Shaw's proposition that EPE has only a trademark in gross, with no attachment of specific marks to specific goods as required by the Lanham Act, 15 U.S.C. Sec. 1127. However, EPE introduced into evidence a 54-page catalog section of products carrying EPE marks which were sold by Presley, EPE, or its licensees. The court's finding of "no evidence [that EPE] ... [has] used the claimed trademarks with respect to any specific items of merchandise," Joint Appendix at 9, is clearly erroneous. Despite the court's finding, it continued to analyze the trademark issue, assuming, as is indeed the case, that EPE had established superior rights in the marks.
We held in Frisch's Restaurant that a preliminary injunction is available to a plaintiff under the Lanham Act upon a demonstration of likelihood of confusion as to the origin of the goods resulting from defendant's use of the marks and a demonstration of irreparable harm to plaintiff's interests. 759 F.2d at 1264. The same test applies under Tennessee law. Tenn. Code Ann. Sec. 47-25-511(1). Likelihood of confusion is a question of law based on an analysis of all material facts. WSM, Inc. v. Tennessee Sales Co., 709 F.2d 10841 1086 (6th Cir. 1983). The District Court held that EPE had faied to show a likelihood of confusion. The court noted that likelihood of confusion can be proven by survey evidence, evidence of actual confusion or argument based on a clear inference arising from a comparison of the marks and the context of their use. The court found EPE had presented no survey evidence, no evidence of actual confusion, and further found EPE had presented no evidence from which confusion could be inferred. The court applied essentially the same test for registered and unregistered marks. The court added that EPE had not established that the balancing of the hardships tipped decidedly in its favor, which, along with serious questions going to the merits, serves the same purpose in the analysis as likelihood of success on the merits. Frisch's Restaurants, Inc. v. Elby's Big Boy of Steubenvill, Inc., 670 F.2d 642, 651 (6th Cir.), cert. denied, 459 U.S. 916 (1982).
EPE argues that there was ample evidence in the record to support an inference of confusion, contrary to the conclusion of the District Court. Upon an examination of the record, we find this argument persuasive. Shaw admitted using the same marks on the same goods in the same trade channels to the same consumers as did EPE. Joint Appendix 169. From this alone one must infer confusion. We find it unnecessary to undertake an extended analysis into such factor as defendant's intent where there is no difference between the marks or the goods or the markets. See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979).
Furthermore, at least some of the goods marketed by Shaw are expressly covered by EPE trademarks. EPE has a federal registration for the mark "Elvis" for clothing, specifically T-shirts and jackets. Federal trademark registration creates a presumption of the exclusive right to use the marks in commerce on the goods listed on the registration. 15 U.S.C. Secs. 1057(b), 1115(a). The District Court did not address this presumption, although Shaw's sales literature advertised a jacket with the word "Elvis" displayed prominently on the front. Joint Appendix at 265.
Finally the court noted that the only goods bearing the infringing marks actually introduced into evidence were ladies' underwear sporting Presley's likeness. Under EPE's Tennessee trademark the likeness of Presley on memorabilia is included. The underwear therefore appears to be a clear infringement of at least the state trademark. More importantly, though, EPE did introduce into evidence catalogs offered by Shaw...
To continue reading
Request your trial
-
Elvis Presley Enterprises, Inc. v. Elvisly Yours, Inc.
...EPE would succeed on the merits and was entitled to a preliminary injunction. See Elvis Presley Enter., Inc. v. Elvisly Yours, Inc., et al., No. 85-5767 (6th Cir. April 28, 1987) [817 F.2d 104 (table) ]. On May 4, 1987, EPE amended its complaint to add claims for violations of EPE's common ......