Miss Universe, Inc. v. Pitts

• Decision Date: 14 April 1989
• Docket Number: Civ. A. No. 89-0489.
• Citation: 14 USPQ 2d 2004,714 F. Supp. 209
• Parties: MISS UNIVERSE, INC. v. Robert J. PITTS and Vicky Durbin Pitts.
• Court: U.S. District Court — Western District of Louisiana

714 F. Supp. 209

14 USPQ 2d 2004

MISS UNIVERSE, INC. v. Robert J. PITTS and Vicky Durbin Pitts.

Civ. A. No. 89-0489.

United States District Court, W.D. Louisiana, Shreveport Division.

April 14, 1989.

Michael A. Cardozo, Chaim A. Levin, Proskauer, Rose, Goetz & Mendelsohn, New York City, John M. Madison Jr., Susie Morgan, Wiener, Weiss, Madison & Howell, Shreveport, La., for plaintiff.

E. Ray Kethley, Frances Baker Jack, Jacqueline Taylor, Shreveport, La., for defendants.

MEMORANDUM RULING

STAGG, Chief Judge.

On March 1, 1989, MISS UNIVERSE, INC., plaintiff herein, filed the instant suit against Robert J. Pitts and Vicky Durbin Pitts, defendants herein, alleging violations of the Lanham Act, 15 U.S.C. § 1051 et seq., the Louisiana Unfair Competition Statute, La.Rev.Stat.Ann. 51:1401 et seq. and the Louisiana Trademark, Trade names and Antidilution Statute, La.Rev.Stat.Ann. 51:211 et seq. On the same date, plaintiff filed the present motion for a preliminary injunction. Plaintiff seeks to have this court preliminarily enjoin the defendants from using the names MRS. USA, MRS. UNIVERSE and/or MRS. STATE OR LOCALITY USA. The court has read the affidavits and depositions, examined the exhibit books, listened carefully to the testimony of all witnesses at the hearing and for the reasons that follow concludes that the preliminary injunction should be granted.

FACTS

Plaintiff began its operations in the pageantry business in 1952, periodically conducting pageants under the names MISS USA and MISS UNIVERSE. Most recently, on February 28, 1989, the MISS USA contest was held in Mobile, Alabama. The Mobile pageant, like all of plaintiff's pageants, was the subject of much public attention. It is estimated that over 20 million people watched the pageant on television. In May of this year, MISS USA will go to Cancun, Mexico, and, along with women representing at least 60 other countries, compete for the title MISS UNIVERSE. Approximately 100 million people are expected to watch the finals of this pageant.

The road to the finals begins with a series of pageants conducted on a statewide basis by individuals holding licenses from plaintiff. Each pageant is conducted in accordance with guidelines published by plaintiff in an Operations Manual. This manual, which is designed to ensure quality and uniformity among the many pageants, prescribes the entry forms, the conduct of the pageant, judging procedures, prizes and gifts and program books. In all of plaintiff's pageants, each contestant is judged in three categories: (1) evening gown, (2) swimsuit and (3) personal interview.

The winner of each state carries the title MISS STATE USA and these winners are the only competitors allowed in the annual MISS USA pageant. The MISS USA pageant, which is hosted by a different city each year, is broadcast nationally by CBS and distributed by Paramount Pictures to over 20 countries. In 1987, this pageant was the third most watched television special that season.¹

MISS UNIVERSE expanded its pageant operations in 1983 to include a MISS TEEN USA pageant. This competition is open to unmarried females ages 15 to 18, whereas the older ladies, ages 17 to 34, compete in the MISS USA pageant. Contestants in the MISS TEEN USA pageant are winners from the various state preliminaries, which are also conducted by licensees of MISS UNIVERSE. The annual television audience for the MISS TEEN USA pageant is estimated to be at least 40 million people in the United States alone.

Enormous sums are expended by plaintiff and others in supporting and promoting the various pageants. Proctor & Gamble Company pays an annual fee of approximately $6 million to sponsor the MISS UNIVERSE, MISS USA and MISS TEEN USA television programs. $200,000 will be spent by plaintiff, alone, in advertising and promoting the three pageants for 1989. Other sponsors include J.C. Penney, which has guaranteed plaintiff an annual minimum royalty of $150,000 for the use of the name MISS USA, in connection with a line of clothing.

Plaintiff's first mark, MISS UNIVERSE, was initially registered on January 31, 1956. Affidavits of continuing use and incontestability have also been filed. The registration was renewed on January 31, 1986. On May 24, 1966, plaintiff registered the mark MISS USA. An affidavit of continuing use has been filed, and the registration was renewed on May 24, 1986. The marks MISS USA and MISS USA COLLECTION have also been registered in connection with items such as dolls, sportswear and jewelry. Plaintiff has also obtained registration for the name MISS STATE USA in many states throughout the United States. Additionally, the mark MISS UNIVERSE has been registered in approximately 70 countries.

The Pittses have become increasingly involved in the pageant business over the last several years. Along with their modeling and advertising businesses, they maintain a full-time pageant office in Shreveport. Both defendants have judged pageants on various levels.

The first pageant in which the Pittses were involved was the MISS BOSSIER CITY USA and the MISS TEEN BOSSIER CITY USA pageant, held August 24, 1986. Janet Hill Rice, executive producer of this pageant, introduced the Pittses to Fran LaSalle, state director for plaintiff's local Louisiana pageants. Mr. LaSalle authorized Ms. Rice, and subsequently the Pittses, to produce this pageant as the official local preliminary to the MISS LOUISIANA USA and MISS TEEN LOUISIANA USA pageants. On October 4, 1986, the Pittses conducted the MISS SHREVEPORT USA and the MISS TEEN SHREVEPORT USA. They also conducted the MISS MINDEN USA and MISS TEEN MINDEN USA pageants on October 18, 1986. The winners from these preliminaries competed at the MISS LOUISIANA USA and MISS TEEN LOUISIANA USA pageants held on November 8, 1986.

The Pittses' second MISS SHREVEPORT USA and MISS TEEN SHREVEPORT USA pageant was conducted on July 25, 1987. Because the 1986 pageants lost money, several new divisions, including TINY, JUNIOR MISS and MRS. were added. Even more divisions were added to the MISS BOSSIER CITY USA and the MISS TEEN BOSSIER CITY USA pageant held on August 29, 1987. The Shreveport and Bossier pageants were repeated in 1988, with some success.

The first (and to this date, the only) MRS. LOUISIANA USA pageant was held on October 29, 1988. According to the defendants, they got the idea for forming such a pageant from the winners of their MRS. SHREVEPORT USA and MRS. BOSSIER CITY USA pageants. Apparently, these ladies represented their respective cities in the MRS. LOUISIANA AMERICA pageant, because they had no other pageant to advance to. According to the defendants, the defendants were requested to expand their pageants into the national and international arenas.

The Pittses' preparations began. Mr. Pitts applied to the Secretary of State of each state for registration of the mark MRS. STATE USA. He also applied to federally register the marks MRS. USA and MRS. UNIVERSE in the United States Trademark Office. An application to register the mark MRS. NORTH AMERICA, was also made.

Whether one calls the MRS. LOUISIANA USA pageant a success, depends on one's perspective. Contestants were originally told that the pageant would be held in Baton Rouge, Louisiana, in November 1988 in conjunction with the MISS LOUISIANA USA and MISS TEEN LOUISIANA USA pageants. The schedule of events for the pageants included a "USA Party" to be held on the Friday night of the pageant. The MISS LOUISIANA USA pageant would be held the next day, and the MRS. LOUISIANA USA pageant would be held on Sunday. Contestants were mailed a schedule of activities that included not only the MRS. LOUISIANA USA pageant, but also the MISS LOUISIANA USA pageant.

Despite the above preparations, the Pittses' pageant plans were changed.² The MRS. LOUISIANA USA pageant was held, instead, on a boat called the "La Cruise." The contestants boarded at Port Fourchon in Galliano, Louisiana. According to some, the contestants were told enticing tales of large dressing rooms, lavish buffets and casino gambling. The schedule of events as set out in the program booklet was as follows: Parade of Contestants, Introduction of Judges, Introduction of Auditors, Introduction of Visiting Queens, Entertainment, Swimsuit Competition, More Entertainment, Evening Gown Competition, More Entertainment, Introduction of Special Guests, Recognition of Sponsors, More Entertainment, and, finally, the Naming of Winners.³

As alluded to earlier, things did not go smoothly. Only seven contestants participated in the competition; there were only three judges and possibly one auditor.⁴ No visiting queens participated. The scheduled entertainment failed to show up. There was no introduction of special guests. The recognition of sponsors consisted of mentioning the names of those who had placed ads in the program booklet. None of the sponsors mentioned were on the boat. Deposition of Robert Pitts, Vol. I, pp. 33-35.

The lavish buffet was nothing more than a cafeteria line, and contestants were required to share, four at a time, a 4' × 6' dressing room. The elevated runway had been taped together and the runway carpet was rumpled and ravelled. The boat constantly rocked during the entire pageant such that contestants were unable to show off their poise and/or modeling skills.⁵

Plaintiff was contacted by the Pittses in November of 1988. At that time, Mr. Pitts proposed that he become affiliated with the plaintiff to produce a national married women's pageant. At a subsequent meeting, on December 8, 1988, defendant informed Michael Bracken, vice president of plaintiff's legal and business affairs department, that he was in the process of registering the marks MRS. USA, MRS. UNIVERSE and MRS. STATE USA. Mr. Pitts proposed that he administer a MRS. USA and MRS. UNIVERSE pageant for $100,000 per year plus 10 percent of the profit. Plaintiff's executives informed Mr. Pitts that they would consider the...