Universal City Studios v. T-Shirt Gallery, Ltd.

• Decision Date: 19 May 1986
• Docket Number: No. 85 Civ. 7126 (JES).,85 Civ. 7126 (JES).
• Citation: 634 F. Supp. 1468
• Parties: UNIVERSAL CITY STUDIOS, INC. and Merchandising Corporation of America, Inc., Plaintiffs, v. The T-SHIRT GALLERY, LTD., Ra Productions and Bob Edelson, Defendants.
• Court: U.S. District Court — Southern District of New York

634 F. Supp. 1468

UNIVERSAL CITY STUDIOS, INC. and Merchandising Corporation of America, Inc., Plaintiffs, v. The T-SHIRT GALLERY, LTD., Ra Productions and Bob Edelson, Defendants.

No. 85 Civ. 7126 (JES).

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

May 19, 1986.

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Evan L. Gordon, New York City, for plaintiffs.

Kazlow & Kazlow, New York City, for defendants; Amos Weinberg, of counsel.

OPINION AND ORDER

SPRIZZO, District Judge:

Plaintiffs, the producer and licensing agent of the "Miami Vice" television series, seek a preliminary injunction enjoining defendants from selling "Miami Mice" t-shirts.¹ Plaintiffs seek relief primarily on the grounds that the defendants have violated New York's unfair competition law relating to misappropriation. Alternatively, plaintiffs argue that the defendants have violated section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1982).

The Court has received briefs from both parties and has held an evidentiary hearing. At the hearing, the Court viewed excerpts from the "Miami Vice" television series, heard testimony from several witnesses, and accepted into evidence various exhibits relating to both the t-shirts and the television series. After considering all the evidence and arguments of counsel in this action, the Court concludes that plaintiff's application for a preliminary injunction must be denied for the reasons set forth infra.

FACTS

Plaintiff Universal City Studios Inc. ("Universal") is the producer of the television series "Miami Vice." Universal holds a copyright on the series and has also applied for a trademark registration for the logo "Miami Vice." See Transcript of Hearing ("Tr.") at 20-21; Pl. Ex. 25 & 26. This logo is displayed at the beginning of every "Miami Vice" show and is printed in stylized block letters with the word "Miami" above the word "Vice."

Plaintiff Merchandising Corporation of America, Inc. ("Merchandising") is the exclusive merchandising arm of Universal and grants licenses to manufacturers and distributors, authorizing them to produce various products relating to the "Miami Vice" television series. See Tr. at 20. Approximately fifteen such merchandising licenses have already been issued for "Miami Vice" products. These licenses cover a variety of products, including t-shirts. See id. at 21-22.²

It is undisputed that "Miami Vice" is one of the most popular shows on television today. The show revolves around two main characters, Detective Sonny Crockett, who is white, and Detective Ricardo Tubbs, who is black. These detectives battle against drug smugglers, mob bosses, and many other evil criminal figures. Plaintiffs' exhibits, a collection of articles about "Miami Vice," as well as selected videotaped segments from the series, establish that the show's major themes are crime and violence, with sexual overtones thrown in. See Pl. Ex. 1-21.

"Miami Vice" is promoted as a highly stylized television series with an art deco, flashy look. See Tr. at 5, 11. Pastel color patterns predominate on the filming set; earth tones are never permitted. See id. at 8. Crockett and Tubbs wear fashionable clothing in tropical pastel colors, adding to the overall style of the show. Crockett generally wears a single-breasted jacket, collarless shirt, and pants with no belt. See id. at 6. Tubbs, on the other hand, tends to wear a notch-collar shirt, a thin tie, and a double-breasted suit. See id. at 7. Finally, one of the most important elements in the overall style of the show is that the music and lyrics of popular rock-and-roll songs are blended into the action on the set and take the place of extended dialogue. See id. at 8.

Defendant T-Shirt Gallery ("the Gallery") manufactures and distributes, inter alia, five different types of "Miami Mice" t-shirts, and holds a New York State trademark and a federal copyright for the cartoon drawings of "Miami Mice."³ See Tr. at 68; Def.Ex. B & C. Each of the t-shirts has the words "Miami Mice" printed across the top of the t-shirt in non-stylized block letters over a diamond shaped design. The words "T-Shirt Gallery" are printed near the bottom of the shirts.

Each of the t-shirts features two comical cartoon mice, who wear sun glasses and dress in clothing similar to the costumes of Crockett and Tubbs. Thus, one mouse, who has an "Afro" hairstyle, is wearing a double-breasted suit (as does Tubbs) while the other mouse wears a t-shirt and a single breasted suit (as does Crockett). Furthermore, the t-shirts depict these mice in various settings: on a beach, in New York City, leaning against an expensive sports car, and at a dance club. See generally Pl. Ex. 27. Plaintiffs allege these settings correspond to typical settings in the Miami Vice television series. See Plaintiffs' Post Hearing Brief at 4. Finally, the clothing of the mice, the "Miami Mice" logo, and any buildings or cars appearing in the t-shirts, are all generally colored in with pastel colors.

Defendant Bob Edelson is a merchandising agent for the Gallery. See Tr. at 36.⁴ According to Edelson's deposition, Edelson and Markku Anunio, a.k.a. "Finn," the president of the Gallery, had an informal verbal agreement that Edelson would get 25% of the profits from any merchandising deals he arranged for "Miami Mice" products. See Tr. at 36. Pursuant to that agreement, Edelson sent a letter dated August 8, 1985, to Universal in which he offered to seek the "movie-TV-merchandising rights" to "Miami Mice." In the letter, Edelson explained that "Miami Mice is an animated parody of Miami Vice," and that he thought Universal would have the resources to develop it "into a sophisticated animated crime-fun TV show." Universal replied by filing the present action.

ANALYSIS

A preliminary injunction is proper only when the plaintiff establishes possible irreparable injury, plus either (a) probability of success on the merits, or (b) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in the plaintiffs' favor. See Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 206-07 (2d Cir.1979); see also Sonesta International Hotels Corp. v. Wellington Associates, 483 F.2d 247, 250 (2d Cir.1973).

In cases which involve unfair competition and Lanham Act claims, irreparable injury will be presumed if the plaintiffs first establish a probability of success on the merits. See American Home Products v. Johnson Chemical Co., 589 F.2d 103, 106 (2d Cir.1978); Russ Berrie & Co. v. Jerry Elsner Co., 482 F.Supp. 980, 989-990 (S.D.N.Y.1980); see also Standard & Poor's Corp. v. Commodity Exchange, 683 F.2d 704, 708 (2d Cir.1982) (in Lanham Act claim, a showing of likelihood of confusion, which is an essential element of success on the merits, will also establish the requisite risk of irreparable harm); cf., Wainwright Securities, Inc. v. Wall Street Transcript Corp., 558 F.2d 91, 94 (2d Cir.1977) (court may presume irreparable injury in copyright infringement action if prima facia case of infringement is made out). Thus, the Court will first discuss whether the plaintiffs have demonstrated a probability of success on the merits before turning to the issues of irreparable injury and balance of hardships.

I. PROBABILITY OF SUCCESS ON THE MERITS

A. New York Unfair Competition Claim

Plaintiffs' principal argument offered in support of their application for a preliminary injunction is that the defendants have violated the misappropriation branch of New York's unfair competition law. The New York law of unfair competition is a "broad and flexible doctrine" encompassing "any form of commercial immorality." See Roy Export Co. v. Columbia Broadcasting System, 672 F.2d 1095, 1105 (2d Cir.) (quoting Metropolitan Opera Assoc. v. Wagner-Nichols Recorder Corp., 199 Misc. 786, 792-96, 101 N.Y.S.2d 483, 488-93 (Sup.Ct.1950), aff'd, 279 A.D. 632, 107 N.Y.S.2d 795 (1951) (per curiam), cert. denied, 459 U.S. 826, 103 S.Ct. 60, 74 L.Ed.2d 63 (1982)). The misappropriation branch of New York's unfair competition law generally concerns the taking and use of the plaintiff's property to compete against the plaintiff. See id.; see also International News Service v. Associated Press, 248 U.S. 215, 239, 39 S.Ct. 68, 63 L.Ed. 211 (1918). Thus, a defendant can be liable for unfair competition if he misappropriates the "skill, expenditures, and labors of a competitor." See Flexitized, Inc. v. National Flexitized Corporation, 335 F.2d 774, 781 (2d Cir.1964) (quoting Electrolux Corp. v. Val-Worth, Inc., 6 N.Y.S.2d 556, 567, 190 N.Y.S.2d 977, 986, 161 N.E.2d 197, 203 (1959)).

In this case, plaintiffs argue that defendants have misappropriated from the Miami Vice show; (a) the settings, (b) the style, dress and essential expressions of the lead characters, (c) the color patterns and (d) the title. See Plaintiffs Post-Hearing Brief at 4, see also Tr. at 53.⁵ Plaintiffs, however, have failed to establish a probability of success on the merits on this claim because this claim is preempted by the federal copyright laws. See 17 U.S.C. § 301 (1982); see also Warner Bros. v. American Broadcasting Co., 720 F.2d 231, 247 (2d Cir. 1983)⁶.

Under § 301, a state law claim is preempted by the federal copyright laws if two conditions are satisfied: (1) the subject matter of the work in which the state law rights are asserted comes within the subject matter of the copyright laws; and (2) the state law rights asserted in the work are equivalent to the exclusive rights protected by the federal copyright laws. See Harper & Row, Publishers, Inc. v. Nation Enterprises, 723 F.2d 195, 200 (2d Cir. 1983), rev'd on other grounds, ___ U.S. ___, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985); Mayer v. Josiah Wedgwood & Sons, Ltd., 601 F.Supp. 1523, 1531 (S.D.N.Y.1985); 1 M. Nimmer, Nimmer on Copyright ("Nimmer") § 1.01B, at 1-9. The first condition under § 301 is...