Motown Productions, Inc. v. Cacomm, Inc.

• Decision Date: 01 September 1987
• Docket Number: No. 86 CIV. 6885 (PKL).,86 CIV. 6885 (PKL).
• Citation: 668 F. Supp. 285
• Parties: MOTOWN PRODUCTIONS, INC., Plaintiff, v. CACOMM, INC., Defendant, v. MOTOWN RECORD CORPORATION, Motown Productions, Inc., and King World Productions, Inc., Counterclaim Defendants.
• Court: U.S. District Court — Southern District of New York

668 F. Supp. 285

MOTOWN PRODUCTIONS, INC., Plaintiff, v. CACOMM, INC., Defendant, v. MOTOWN RECORD CORPORATION, Motown Productions, Inc., and King World Productions, Inc., Counterclaim Defendants.

No. 86 CIV. 6885 (PKL).

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

September 1, 1987.

COPYRIGHT MATERIAL OMITTED

Corbin Silverman & Sanseverino, New York City, for plaintiff and counterclaim defendants; Marc J. Gottridge, of counsel.

Hedman, Gibson, Costigan & Hoare, P.C., New York City, for defendant; Thomas M. Gibson, of counsel.

OPINION & ORDER

LEISURE, District Judge:

This action arises out of the parties' uses of the name "Nightlife." Plaintiff/counterclaim defendant Motown Productions, Inc. ("Motown") produces, in association with counterclaim defendant King World Productions, Inc. ("King World"), a nightly television program with that title (the "Motown Program"), starring comedian David Brenner and featuring musician Billy Preston and a band. The Motown Program premiered on September 8, 1986, and has been broadcast on more than 100 over-the-air television stations.

From January to September 1984 and again between April and August 1985, defendant Cacomm, Inc. ("Cacomm") transmitted over a cable television network covering part of New Jersey a low-budget show called "Nightlife" (the "Cacomm Program"). The Cacomm Program consisted almost exclusively of interviews shot with a single camera and taped in Atlantic City, New Jersey. Cacomm removed its show from cable television in August 1985, more than a year before the premiere of the Motown Program.

On September 4, 1986, Motown and King World learned of letters in which counsel for Cacomm demanded that they cease and desist from using the name "Nightlife." On September 5, 1986, Motown commenced this action seeking a declaratory judgment that Cacomm has no exclusive trademark rights in the name "Nightlife." The following week, Cacomm consented to the entry of a preliminary injunction prohibiting it from sending further "cease and desist" letters or otherwise claiming any exclusive right to the "Nightlife" name.

Cacomm filed four counterclaims against Motown, Motown Record Corporation ("MRC"), and King World (hereinafter referred to collectively as the "Motown Parties"). The first counterclaim charges false designation of origin pursuant to Lanham Act § 43(a), 15 U.S.C. § 1125(a). The second and third allege that the Motown Parties' use of the name "Nightlife" constitutes unfair competition under the common law of New York and New Jersey, respectively. The fourth challenges MRC's pending application for a service mark.

The Motown Parties have moved for summary judgment, pursuant to Fed.R. Civ.P. 56, and for the imposition of sanctions, including attorneys' fees and costs, against Cacomm and/or its counsel, pursuant to Fed.R.Civ.P. 11 and Lanham Act § 35(a), 15 U.S.C. § 1117(a). Cacomm has cross-moved for summary judgment and sanctions. The parties have entered into a stipulation with regard to certain facts which are not in dispute. See Affidavit of Marc J. Gottridge, Esq., sworn to on January 13, 1987 (the "Gottridge Aff."), Exh. M (hereinafter referred to as the "Stipulation").

Discussion

I. Lanham Act § 43(a)

In its first counterclaim, Cacomm urges that the use of "Nightlife" as the title of the Motown Program constitutes a false description or representation of origin in violation of Lanham Act § 43(a). Judge Weinfeld has explained,

The Lanham Act has been construed to protect the title of a creative work in the limited situation when: (1) the title has acquired `secondary meaning,' i.e., that the public identifies the title with the plaintiff and his work; and (2) there is a `likelihood of public confusion,' i.e., that the public will be misled into believing that defendants' work originated or is associated with or sponsored by plaintiff because both works bear the same title.

Davis v. United Artists, Inc., 547 F.Supp. 722, 727-28 (S.D.N.Y.1982) (citations omitted).¹

A. Secondary Meaning

1. Applicability of Requirement

Cacomm contends that no showing of secondary meaning is required under § 43(a) because the "creative works" here are series of television programs, rather than individual shows. Defendant's Memorandum of Law at 24, 31-32 (citing Application of Cooper, 254 F.2d 611, 617 (C.C.P. A.), cert. denied, 358 U.S. 840, 79 S.Ct. 63, 3 L.Ed.2d 75 (1958); In re Polar Music International AB, 714 F.2d 1567, 1572 (Fed.Cir.1983)). Cooper and Polar Music are clearly inapposite, however. Those cases involved series of works where the trademark for the series was not descriptive of any one work and, in addition, each work had an individual name or title. See Cooper, 254 F.2d at 615; Polar Music, 714 F.2d at 1572. In this case, the individual shows in the Cacomm and Motown series do not have an individual name or title. The name "Nightlife" describes each show, as well as each series as a whole.

Cacomm also argues that the Motown Parties should be estopped from claiming that "Nightlife" is descriptive because of their pending application to register a service mark containing the name. Defendant's Memorandum of Law at 30. MRC's application, however, seeks protection not merely for the name "Nightlife," but for "Nightlife and Design." Chaum Dep., Exh. 13. Thus, the service application merely signifies that the name "Nightlife," when used with a highly distinctive and fanciful design, may be protected by the trademark laws. See Chicago Reader, Inc. v. Metro College Publishing Co., 711 F.2d 801, 804 (7th Cir.1983) (Neaher, J.).

Finally, Cacomm relies on the affidavit of a Chicago lawyer who is reviser of a treatise on trademark law. See Defendant's Notice of Motion, Exh. M (Affidavit of Louis Altman, Esq., sworn to on January 19, 1987). The attorney states that the name "Nightlife," as applied to the Cacomm Program, is "suggestive." Id. at ___ _ ___. In this Circuit, however, the expert testimony of an attorney as to an ultimate issue of domestic law or as to the legal significance of facts is inadmissible. Marx & Co. v. The Diners' Club, Inc., 550 F.2d 505, 508-11 (2d Cir.), cert. denied, 434 U.S. 861, 98 S.Ct. 188, 54 L.Ed.2d 134 (1977). Accord United States v. Sprogis, 763 F.2d 115, 123 (2d Cir.1985). Accordingly, the Altman affidavit may not be considered on the instant cross-motions. See Fed.R.Civ.P. 56(e).²

2. Cacomm's Evidence

"`Proof of secondary meaning entails rigorous evidentiary requirements.'" Thompson Medical Co. v. Pfizer Inc., 753 F.2d 208, 217 (2d Cir.1985) (citation omitted). The most important indicia of secondary meaning are advertising expenditures, consumer studies linking the name to a source, sales success, unsolicited media coverage of the product, attempts to plagiarize the mark, and length and exclusivity of the mark's use. Id. (citations omitted). Each of these factors militates against Cacomm's claim.

First, Cacomm expended a total of no more than $14,000 on advertising for its program over a period of more than a year and a half. There is no evidence that Cacomm's minimal advertising was effective in developing secondary meaning. See McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1133 n. 4 (2d Cir.1979). Such "meager promotional expenditures" weigh in favor of a finding of no secondary meaning. H. Lubovsky, Inc. v. Esprit de Corp., 627 F.Supp. 483, 487 (S.D.N.Y.1986).

Second, defendant has failed even to undertake a consumer survey concerning the public perception of the Cacomm Program and its source. Mastrorilli Dep. at 121-22. Compare American Footwear Corp. v. General Footwear Co., 609 F.2d 655, 663 (2d Cir.1979) (finding survey results insufficient to establish secondary meaning), cert. denied, 445 U.S. 951, 100 S.Ct. 1601, 63 L.Ed.2d 787 (1980).

Third, Cacomm performed no surveys to test the size of its viewing audience. Mastrorilli Dep. at 102-06. Even accepting Cacomm's own dubious estimates, however, the Cacomm Program had only 6,210 viewers. Id. at 108-09, 113; Stipulation at ¶ 90. The deposition testimony reveals, moreover, that Cacomm "pulled" the show from New Jersey cable television in August 1985 for lack of any advertisers, and was unable in the following months to obtain any new sponsors. Mastrorilli Dep. at 171-72, 181-82; Hartnett Dep. at 269-71. Thus, for the one year period preceeding the premiere of the Motown Program, Cacomm had no "sales." This factor weighs heavily against a finding of secondary meaning, even in the limited geographical area where Cacomm's program was transmitted. See Abraham Zion Corp. v. Lebow, 761 F.2d 93, 105 (2d Cir.1985) (citing plaintiff's "small and declining share of the market").

Fourth, Cacomm is unable to offer any evidence of "unsolicited" media coverage of its program. See Thompson Medical, 753 F.2d at 217. It points to a total of three items, each of which was the direct result of a press release or promotional effort. Hartnett Dep. at 235-36 & Exh.'s 9-11. Moreover, the most recent of these instances of media coverage occurred in December 1984—21 months before the Motown Program first appeared. See Le Sportsac, Inc. v. Dockside Research, Inc., 478 F.Supp. 602, 608 (S.D.N.Y.1979) (secondary meaning required at time when alleged infringer entered the market).

Fifth, there is no evidence of plagiarism by "conscious imitation" or "intended similarity." See, e.g., Harlequin Enterprises Ltd. v. Gulf & Western Corp., 644 F.2d 946, 949 (2d Cir.1981). In fact, defendant has not shown that the Motown Parties were aware of the Cacomm Program when they named their production.

Finally, the "length and exclusivity" of Cacomm's use of the mark is unimpressive. See, e.g., Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 968 (2d Cir.1981) (citing various prior uses of mark). Cacomm only used the name "Nightlife" during a seven-month period of 1984 and a four-month period of 1985, and its program did not appear every night, or even every week, during those...