Miss Universe, L.P., Lllp v. Villegas

• Decision Date: 09 December 2009
• Docket Number: No. 06 Civ. 4977.,06 Civ. 4977.
• Citation: 672 F.Supp.2d 575
• Parties: MISS UNIVERSE, L.P., LLLP, Plaintiff, v. Virgelia B. VILLEGAS and Virgelia, Productions, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

672 F.Supp.2d 575

MISS UNIVERSE, L.P., LLLP, Plaintiff, v. Virgelia B. VILLEGAS and Virgelia, Productions, Inc., Defendants.

No. 06 Civ. 4977.

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

December 9, 2009.

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Andrea Lynne Calvaruso, Marya Lenn Yee, Donovan & Yee LLP, New York, NY, for Plaintiff.

Gabrielle Rae Schaich, Farrell Fritz, P.C., Uniondale, NY, James Matthew Wicks, David Anthony Scheffel, Ellis & Venable, P.C., Phoenix, AZ, Monica McCarroll, Willis & Young, P.C., Jersey City, NJ, Patrick R. Hanes, Williams Mullen, Richmond, VA, for Defendants.

MEMORANDUM OPINION AND ORDER

RICHARD J. HOLWELL, District Judge.

Miss Universe, owner of the pageant and trademark "Miss USA," brought this action against Virgelia Villegas and his production company (collectively, "defendants") for their use of the mark "Miss Asia USA." Miss Universe alleged trademark infringement under Section 32 of the Lanham Trade-Mark Act, 15 U.S.C. §§ 1051 et seq. ("Lanham Act" or "Act"); unfair competition under Section 43(a) of the Act and at common law; and dilution under Section 43(c) of the Act and under New York law. It requested injunctive relief and compensatory damages. The defendants moved for summary judgment on all claims, as did the plaintiff on all but the dilution claims. The parties later withdrew those dispositive motions and stipulated that the evidentiary record was sufficiently developed for the Court to decide the action on the merits.

This Memorandum Opinion and Order sets forth findings of fact and conclusions of law in accordance with Rule 52 of the Federal Rules of Civil Procedure. For the reasons that follow, the Court grants judgment to the defendants.

FINDINGS OF FACT

Miss Universe owns and operates the Miss USA pageant, an annual beauty pageant with a national reputation. (Defs.' Mem. Ex. B ("Stip.") ¶¶ 1, 5-8.) The pageant's format is familiar: contestants compete in state pageants, and the winners from each state compete in a national competition. (Santomauro Aff. ¶ 24.) The national competitors are winnowed to fifteen, and those fifteen compete in a live telecast for the Miss USA title. (Calvaruso Aff. Ex. A ("Santomauro Dep.") 12-13.) This format is not, of course, unique to Miss USA. (Stip. ¶ 10.) The Miss America pageant proceeds in roughly the same manner, as do a number of other pageant systems not related to the plaintiff or defendants in this action. (Santomauro Dep. 16-17.) The "Miss USA" name is also typical of beauty pageants' names in that it consists of a marital prefix followed by a geographic descriptor. (Pltf.'s Responses to Defs.' R. 56.1 Stmt. ¶ 6.) "Miss America" and "Miss World," to name two other well-known pageant operators, do too.

Miss Universe and its predecessors have used the "Miss USA" mark in connection with beauty pageants since at least 1952. (Stip. ¶ 1.) Miss Universe has obtained federal and state trademark registrations for "Miss USA," "Miss Teen USA," and variations on both. (Stip. ¶¶ 2-3.) But Miss Universe does not own and has never used a trademark containing the word "Asia." (Stip. ¶ 9.)

The defendants own and operate Miss Asia USA, a beauty pageant held annually since about 1988. (Stip. ¶ 11.) Dindo Reyes, a pageant "aficionado," began using the "Miss Asia USA" mark in connection with beauty pageants in 1988. (Calvaruso Aff. Ex. B ("Reyes Dep.") 16, 42; Stip. ¶ 11.) Reyes sold his pageant business in 2003 to defendant Villegas. (Reyes Dep. 47-50.) Since 2004, the Villegas defendants have held their own Miss Asia USA pageant. (Calvaruso Aff. Ex. C ("Villegas Dep.") 74.)

In many respects, Miss Asia USA resembles other national beauty pageants, including Miss USA. It features female contestants who compete in an evening gown and swimsuit competition and a question-and-answer segment; it often employs well-known individuals as judges; and the competition's winner is crowned and sashed and spends her victory year making appearances on behalf of the pageant and various charities. (Defs. Mem. Ex. E ("Villegas Decl.") ¶¶ 8, 12.)

Still, Miss Asia USA is more than a carbon copy. The defendants bill Miss Asia USA as a cultural pageant designed to display the rich ethnic traditions and diversity of Asian cultures in the United States. (Stip. ¶ 12; Villegas Decl. ¶ 8.) The Miss Asia USA pageant opens each year with a "Parade of National Costumes," and each contestant in the pageant wears a sash with the name of the Asian country she is representing. (Villegas Decl. ¶ 8-9.) Only persons with some Asian ancestry may participate in the competition. (Villegas Decl. ¶ 6.) The hosts of the competition are of Asian descent, as are many of the judges. (Villegas Decl. ¶ 10-11.) Miss USA's pageant does not have this kind of "cultural" or "ethnic" element. (Santomauro Dep. 13.) Nor does it claim to have any concrete plans to produce or license a cultural pageant like Miss Asia USA. (Santomauro Dep. 13-15.) The plaintiff, however, "has explored" that "avenue," and Miss Universe's vice-president of business planning said at deposition that the company is currently discussing whether to refocus the pageant format on an "ethnic or cultural element" rather than an "age element." (Santomauro Dep. 13-15.)

The level of publicity Miss Asia USA receives is also materially different from that Miss USA receives. Miss USA and Miss Teen USA events draw considerable media coverage each year, and the annual pageants are nationally broadcast on prime-time television. (Stip. ¶ 6-7; Santomauro Aff. ¶ 16, 18.) The Miss Asia USA pageant has been televised only once, in 2006, on ImaginAsian TV and on Charter Communications, a local cable network in Southern California. (Villegas Decl. ¶ 14.)

Miss Universe has long opposed the use and registration of marks that it views as infringing its "Miss USA" mark. (Santomauro Aff. ¶ 21-22.) These include marks that add a term after "Miss USA," as "Miss USA World" would, and marks that insert a term between "Miss" and "USA," as "Miss Asia USA" does. (Santomauro Aff. ¶ 22.) Miss Universe claims that it first became aware of the defendants' use of "Miss Asia USA" in October of 2003, when the defendants sent Miss Universe a letter asking it to sponsor the Miss Asia USA pageant. (Santomauro Aff. ¶ 6.) Miss Universe refused, and it objected to the defendants' continued use of the mark. (Santomauro Aff. ¶ 7.) Thereafter, defendants continued to use the mark. They registered the Internet domain name missasiausa. org and now use it as their pageant website. (Defs.' Answer ¶ 22.) In 2004, they filed a trademark application with the United States Patent and Trademark Office for the mark "Miss Asia-U.S.A. Pageant." (Calvaruso Aff. Ex. D.) Plaintiff opposed this application, and that trademark registration proceeding has been suspended pending a final determination in this action. (Calvaruso Aff. ¶ 8.) Defendants have since filed applications for "Miss Teen Asia USA" and "Mrs. Asia USA." (Calvaruso Aff. ¶¶ 9, 10.)

Miss Universe has presented no survey or polling data as evidence that "Miss Asia USA" could be confused as a pageant affiliated with the owners of "Miss USA." But in the spring of 2006, Miss Universe did receive six separate emails from four different email addresses inquiring as to whether the "Miss Asia USA" pageant had any relationship to or affiliation with Miss Universe's family of pageants. (Santomauro Aff. ¶ 5 and Ex. A.)

CONCLUSIONS OF LAW

I. Trademark Infringement Claims

Section 32 of the Lanham Act makes it illegal to use in commerce, without a trademark-holder's consent, a "reproduction, counterfeit copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive. . . ." 15 U.S.C. § 1114(1)(a) (2006). To successfully make out a claim under Section 32, the trademark-holder must show that its mark is protectable and that the allegedly infringing mark is likely to confuse consumers. Playtex Prods., Inc. v. Georgia-Pacific Corp., 390 F.3d 158, 161 (2d Cir.2004). A valid, incontestable trademark registration is "conclusive evidence" of the plaintiff's exclusive right to use that mark, 15 U.S.C. § 1115(b), and is "presumptively distinctive," Brown v. Quiniou, 744 F.Supp. 463, 469 (S.D.N.Y.1990).

It is common ground between the parties that plaintiff's trademarks for "Miss U.S.A." and "Miss Teen U.S.A." are valid and incontestable. Thus plaintiff has satisfied the first prong of the trademark infringement test. The central question in this case, as in the many other cases where Miss Universe has attempted to quash allegedly infringing marks, is whether the defendants' marks are likely to cause confusion.

This question is not easily parsed in the abstract. See Centaur Commc'ns, Ltd. v. A/S/M Commc'ns, Inc., 830 F.2d 1217, 1225 (2d Cir.1987), overruled on other grounds by Paddington Corp. v. Attiki Importers & Distributors, Inc., 996 F.2d 577, 585 (2d Cir.1993) (calling the likelihood-of-confusion question "a tangle of underbrush"); see also Miss Universe, Inc. v. Patricelli, 753 F.2d 235, 237 (2d Cir. 1985) ("In assessing the likelihood of confusion, a consideration of the facts and circumstances of each case is necessary."). Recognizing this reality, Circuits have devised various multi-factored tests to guide a court's assessment of whether a particular trademark is likely to be confused with another. See, e.g., Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 46 (2d Cir. 2000) (summarizing the Second Circuit's eight-factor test); Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir.1981) (setting forth a similar eight-factor test); Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983) (establishing a ten-factor...