Miss Universe, Inc. v. Flesher

• Decision Date: 04 October 1979
• Docket Number: Nos. 77-2435,77-2710,s. 77-2435
• Citation: 204 USPQ 354,605 F.2d 1130
• Parties: MISS UNIVERSE, INC., a California Corp., Plaintiff-Appellee, v. William FLESHER, Fran Flesher, Mel Lynn and Treehouse Fun Ranch, Inc., a California Corp., Defendants-Appellants. MISS UNIVERSE, INC., a California Corp., Plaintiff-Appellant, v. William FLESHER, Fran Flesher, Mel Lynn and Treehouse Fun Ranch, Inc., a California Corp., Defendants-Appellees,
• Court: U.S. Court of Appeals — Ninth Circuit

Page 1130

605 F.2d 1130

204 U.S.P.Q. 354

MISS UNIVERSE, INC., a California Corp., Plaintiff-Appellee, v. William FLESHER, Fran Flesher, Mel Lynn and Treehouse Fun

Ranch, Inc., a California Corp., Defendants-Appellants.

MISS UNIVERSE, INC., a California Corp., Plaintiff-Appellant, v. William FLESHER, Fran Flesher, Mel Lynn and Treehouse Fun

Ranch, Inc., a California Corp., Defendants-Appellees,

Nos. 77-2435, 77-2710.

United States Court of Appeals Ninth Circuit.

Oct. 4, 1979.

Thomas D. Kiley, Lyon & Lyon, Los Angeles, Cal., for defendants-appellants.

Robert E. Hinerfeld, Murphy, Thornton, Hinerfeld & Cahill, Los Angeles, Cal., for plaintiff-appellee.

Appeals from the United States District Court for the Central District of California.

Before TRASK, KENNEDY and ANDERSON, Circuit Judges.

J. BLAINE ANDERSON, Circuit Judge:

This is an appeal from the grant of a preliminary injunction. ¹ The district court found that there was inherent confusion of source and dilution of plaintiff's registered marks by the defendants' use of the marks "Miss Nude U.S.A." and "Ms. Nude U.S.A." ² The defendants appeal from the entire injunction. The plaintiff appeals from one portion of the injunction. We find one part of the injunction unworkable and reverse as to it, and otherwise affirm the issuance of the preliminary injunction.

FACTS

The plaintiff, Miss Universe, Inc. (referred to as Miss Universe), is the owner of the trademark and service mark Miss U.S.A. ³ Since 1952, Miss Universe has produced the Miss U.S.A. beauty pageant. Contestants from every state vie for the crown of Miss U.S.A. The contestants, all unmarried females, are judged on various qualities such as beauty, congeniality, background, and intelligence. The winner of the contest becomes this country's representative in the plaintiff's related Miss Universe pageant which includes entrants from around the world.

The defendants include: William and Fran Flesher, who are officers of the Treehouse Fun Ranch, Inc., as well as managing agents of the Treehouse's beauty pageant; the Treehouse corporation; and Mel Lynn, director of the 1977 pageant. The beauty pageant sponsored by Treehouse is variously The district court made the following factual findings about the two pageants:

referred to as the Miss Nude U.S.A., Ms. Nude U.S.A., and the Miss Nude International Beauty Pageant. The most obvious distinction between the two pageants arises from the fact that the plaintiff's contestants remain clothed (at least partially) throughout the contest, whereas the defendants' contestants (as indicated by the various titles) do not.

"3. Plaintiff's MISS U.S.A. Beauty Pageant has been broadcast on the CBS Television Network annually since 1965, sponsored by Procter & Gamble Company. In the Spring of 1976, the pageant was seen by an estimated viewing audience exceeding 60,000,000 people. The annual MISS UNIVERSE Beauty Pageant, in which MISS U.S.A. participates as a contestant, involves female contestants representing many nations. The international pageant is televised annually by Atlantic and Pacific satellite to an estimated viewing audience of 500,000,000 people in more than 40 countries. The total annual sponsor cost of the MISS U.S.A. and the MISS UNIVERSE Beauty Pageants exceeds $2,000,000.

"5. It is the policy and practice of plaintiff to conduct its MISS U.S.A. and MISS UNIVERSE Beauty Pageants in good taste and in a clean and wholesome manner. These pageants are dependent upon the goodwill of the contestants and their parents, many of whom would be likely to object if their daughters entered a MISS U.S.A. Beauty Pageant which they thought to have any relation to a MISS NUDE U.S.A. Beauty Pageant. In addition, the standards of the television broadcasting industry and of plaintiff's telecast sponsors oblige plaintiff to maintain a high moral tone to its beauty pageants and all associations therewith in the public mind.

"9. Defendants Flesher and Treehouse have promoted a beauty pageant in the County of San Bernardino in June of 1973, 1974, 1975, and 1976 under the name MISS NUDE U.S.A. Beauty Pageant. A majority of the contestants in those pageants were, at the time of competing, residents of the State of California. In none of the contests was there more than 27 contestants. Most of the States have not been represented by a contestant in any MISS NUDE U.S.A. Beauty Pageant. The entry rules for the contest have never required contestants to reside in, or be nationals, of, the United States of America. Until restrained by this Court's order, dated 7 April 1977, those defendants and defendant Lynn were publicizing promotion of a contest under the name MS. NUDE U.S.A. Since 17 April 1977, defendants have begun to promote a beauty pageant for the same time and place formerly assigned by them to the MS. NUDE U.S.A. Beauty Pageant. The new pageant uses a name formerly used by defendants Treehouse and Flesher for a beauty pageant promoted by them prior to 1976, viz. MISS NUDE INTERNATIONAL Beauty Pageant."

Miss Universe, Inc. v. Flesher, 433 F.Supp. 271, 272-273 (C.D.Cal.1977).

In July 1976, having learned of the defendants' contest, the plaintiff asked the defendants to desist from using the Miss Nude U.S.A. title. After the attempts at informal resolution of the controversy proved fruitless, the plaintiff brought the present action for infringement in district court. ⁴ The district court issued a temporary restraining order on May 7, 1977, which was followed by the entering of a preliminary injunction on June 22. The appeal is taken from this preliminary injunction.

STANDARD OF REVIEW

As a general rule, the grant or refusal to grant a preliminary injunction will be overturned on appeal if there has been While the parties pay lip service to the standard of review, both the plaintiff and the defendant attempt to try the merits of their respective cases in this court. They invite this court to make the initial findings, ⁶ based upon various pieces of documentary evidence included on appeal, on the various factors which are considered in determining whether there is a likelihood of confusion. We decline the invitation.

                an abuse of discretion by the court below.  5  Benda v. Grand Lodge of Intern. Ass'n, etc., 584 F.2d 308, 314 (9th Cir. 1978)
                

The Court of Appeals does review factual findings; however, we do not generally serve as fact-finders of first instance. Our review of factual issues is governed by carefully circumscribed standards which vary according to the type, stage, and nature of the previous proceedings. After a final decision on the merits, we can closely examine the different variables which are relevant to the likelihood of confusion determination. See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979). ⁷ However, the more narrow abuse of discretion standard applies when we are called upon to review the grant or denial of a preliminary injunction. ⁸

In cases such as the present one, in granting a preliminary injunction, the parties will not have had a full opportunity to either develop or present their cases and the district court will have had only a brief opportunity to consider the different factors relevant to the likelihood of confusion determination. ⁹ That is one reason why this court generally limits its review to the more general determination as to whether the court below abused its discretion. See Burton v. Matanuska Valley Lines, 244 F.2d 647, 650 (9th Cir. 1957). After all, the injunction is merely attempting to maintain the status quo pending the trial on the merits. Id. Otherwise, if we were to decide all of these matters as requested by the parties, we would be prejudging the merits before there was a decision by the district court.

In determining whether there was an abuse of discretion in granting the preliminary injunction we look to see whether the court below correctly applied the proper In our previous decisions, this court has announced two legal standards applicable to the grant or denial of preliminary injunctions. See Jones v. Pacific Intermountain Express, 536 F.2d 817, 818-819 (9th Cir. 1976); William Inglis & Sons Baking Co. v. ITT Continental Baking Co., 526 F.2d 86, 88 (9th Cir. 1975). At first glance these standards may appear entirely different; nonetheless "they are merely extremes of a single continuum." Benda, supra, 584 F.2d at 315. On the one end of the scale we require the moving party to show (1) probable success, and (2) the possibility of irreparable injury. Benda, supra, 584 F.2d at 314-315; Jones, supra, 536 F.2d at 818-819. On the other end, the moving party is required to demonstrate (1) that serious questions are raised, and (2) that the balance of hardships are tipped sharply in his favor. Benda, supra, 584 F.2d at 314-315; William Inglis & Sons Baking Co., supra, 526 F.2d at 88. Our review is thus confined to these matters.

legal standard relating to the issuance of this type of injunction. Benda, supra, 584 F.2d at 314.

DISCUSSION

The court below found that the plaintiff had and would continue to suffer irreparable harm so long as the defendants continued to use the names Miss Nude U.S.A. or Ms. Nude U.S.A. Additionally, the balance of equities favored the restraint of the defendants' use of the above names. The court noted that the plaintiff had a substantial investment which had been made "over many years in its well-known and highly regarded registered marks." On the other hand, the investment of the defendants in the Miss Nude U.S.A. and Ms. Nude U.S.A. names was found "de minimis." We do not believe that the district court abused its discretion in finding either irreparable harm or that the balance of hardship favored granting the injunction in favor of the plaintiff.

The court below did not expressly state that the plaintiff would probably succeed on the merits or that the case presents a serious question. Nevertheless, these determinations are implicit in the court's...