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Complaining Work

Defending Work

Morales and Robertson aka "Fat Boys"

"Stick 'em"

Hear Sound Recording

Miller Brewing Co.

TV ad for Miller Lite

View Television Commercial

 

Comment

The video clip under the defending work above contains clips of both the video recording of the Fat Boy's "Stick 'em" (plays first) and the television advertisement for Miller Lite (plays second).

This case considers a nettlesome but ineluctable issue in many music infringement cases: at what point do non-protectible compositional elements like rhythmic motives, instrumental sounds or performance techniques, through their particular combination, become original expression? In the instant case, does the plaintiffs' use of both a tongue trill and a "hugga hugga" call within the same work mean that they can prevent others from using the same combination of sounds in another work? The court did not decide this ultimate question, but did find that given that merely a "dash" of creativity will satisfy the originality requirement needed for copyright protection (citing Gasté v. Kaiserman [1988]) a jury might find that the Fat Boys' use of these sounds in "Stick 'em" constitutes protectible expression. Given the possibility of a jury determining this, the court denied the defendants' request for summary judgment.

 

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Opinion by Judge Charles S. Haight, Jr.

In this action alleging copyright infringement, Lanham Act violations, and pendent state statutory and common law claims, defendants' motion to dismiss the first amended complaint under Rule 12(b)(6), Fed. R. Civ. P., was granted in part and denied in part in an opinion reported at 737 F. Supp. 826 (S.D.N.Y. 1990), familiarity with which is assumed. Following extensive discovery, defendants now move for summary judgment under Rule 56 dismissing the plaintiffs' surviving claims.

I. Standards for Granting or Denying Summary Judgment

Under Fed.R.Civ.P. 56(c), the moving party is entitled to summary judgment if the papers "show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." On such a motion, "a court's responsibility is to assess whether there are any factual issues to be tried, while resolving ambiguities and drawing reasonable inferences against the moving party." Coach Leatherware Co., Inc. v. Ann Taylor, Inc., 933 F.2d 162, 167 (2d Cir. 1991) (citing Knight v. U.S. Fire Insurance , 804 F.2d 9 (2d Cir. 1986), cert. denied , 480 U.S. 932, 94 L. Ed. 2d 762, 107 S. Ct. 1570 (1987)) (citation omitted). The responding party "must set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). "The non-movant cannot 'escape summary judgment merely by vaguely asserting the existence of some unspecified disputed material facts,'... or defeat the motion through 'mere speculation or conjecture.'" Western World Ins. Co. v. Stack Oil, Inc., 922 F.2d 118, 121 (2d Cir. 1990) (citations omitted). While the party resisting summary judgment must show a dispute of fact, it must also be a material fact in light of the substantive law. "Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986).

II. The Copyright Infringement Claims

The Copyright Act furnishes the governing law for plaintiffs' copyright infringement claims. Where proof of unauthorized copying of protectible material rises to the level where no reasonable juror could find otherwise, a copyright holder is entitled to summary judgment on the issue of infringement. Rogers v. Koons , 960 F.2d 301, 307 (2d Cir.), cert. denied , 121 L. Ed. 2d 278, 113 S. Ct. 365 (1992). Conversely, and more pertinent to the present motion, where the similarity demonstrated pertains solely to noncopyrightable material, summary judgment for the accused infringer is appropriate. Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 915 (2d Cir. 1980).

Plaintiffs' second amended complaint, filed after this Court's opinion on defendants' motion to dismiss, alleges in its first claim that the Miller Beer television commercial produced and performed by defendants infringed plaintiffs' registered copyrights in a number of musical compositions listed in P 16 of the pleading. The second claim alleges that defendants infringed plaintiffs' copyrights in the sound recordings of those compositions.

Subsequent discovery sharpened the focus of plaintiffs' claims. In responses to defendants' interrogatories, plaintiffs now say that the musical composition defendants copied is called "Stick 'Em," and the sound recording defendants copied is that of the same composition. Plaintiffs identify the Particular "musical and lyrical phrases" defendants copied as including, "inter alia, the sounds designated as the 'Brrr' and 'Hugga Hugga' sounds." Plaintiffs' response to defendants' interrogatory no. 5 (second set). The composition "Stick 'Em" is one of several compositions appearing on a video tape made by the individual plaintiffs, professionally known as the "Fat Boys," which at the pertinent times was available for purchase at retail stores.

Plaintiffs obtained Composition Copyright Registration Number PA 229-080 for the composition "Stick 'Em" and Sound Recording Copyright Registration Number SR 59-448 for the same work. Specifically, Registration Number PA 229-080 is for the work titled "Stick 'Em"; the specified nature of the work is "words & music"; the authors are plaintiffs Morales and Robinson; and the copyright claimant is plaintiff Fools Prayer Music, Inc., "as per songwriters agreement." Registration Number SR 59-448 is on a form the Copyright Office apparently uses for sound recordings; the "nature of material recorded" is designated as "musical"; the title of the work is "Fat Boys SUS-1015 (album)", a reference to the album comprising "Stick 'Em" and a number of other works; and plaintiff Sutra Records, Inc. is identified as both the author of the work and copyright claimant.

The Copyright Act provides that a certificate of registration "shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate." 17 U.S.C. § 410(c). The certificate "establishes a presumption of originality in the work registered." Business Trends Analysts, Inc. v. The Freedonia Group, Inc., 700 F. Supp. 1213, 1231 (S.D.N.Y. 1988). The presumption of originality conferred by a certificate of registration is inherent in the statutory scheme, since only "original works of authorship" are entitled to copyright protection. 17 U.S.C. § 102(a). See also Rogers v. Koons , supra, at 307 ("Since the [Copyright Act] protects authors' exclusive rights to their works, the cornerstone of that law is that the work protected must be original."). In Gaste v. Kaiserman, 863 F.2d 1061, 1066 (2d Cir. 1988), a case involving a musical composition, the Second Circuit said that "on the issue of originality, as compared to the issue of compliance with statutory formalities, it is even clearer that copyright registration created a presumption of validity under the 1909 [Copyright] Act." That presumption applies a fortiori to the case at bar, arising under the 1976 Copyright Act, since "unlike the 1976 Act, ... the 1909 Act does not say that the certificate of registration shall constitute prima facie evidence 'of the facts stated therein.'" Id. at 1064.

In Koons v. Rogers the Second Circuit, while recognizing that the copyrighting of a whole work "does not mean that every element of it is copyrighted; copyright protection extends only to those components of the work that are original to the creator," went on to say: "But the quantity of the originality that need be shown is modest - only a dash of it will do." Id. at 307. In Gaste v. Kaiserman the Second Circuit, considering the originality of a musical work, noted that "the originality requirement for obtaining a copyright is an extremely low threshold, unlike the novelty requirement for securing a patent. ... [A] showing of virtually any independent creativity will do." 863 F.2d at 1066.

The prima facie evidence of copyright validity resulting from the certificate shifts to the alleged infringer "the burden of proving to the contrary." Hasbro Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189, 193 (2d Cir. 1985).

These principles are pertinent to the case at bar because defendants contend, at least with respect to plaintiff's composition copyright for "Stick 'Em," that the sounds "Brrr" and "Hugga-Hugga", standing alone, are not protectible. Defendants analogize the "Brrr" and "Hugga-Hugga" sounds "to a drumbeat, or to any other percussion effect." "As such," the argument continues, "while a particular pattern or sequence of these sounds may constitute original musical expression, a single Brrr or Hugga-Hugga sound, like a single drumbeat, does not." Main brief at 18. Defendants submit an affidavit of Earl V. Spielman, a musicologist, who expresses the opinions that the only "significant similarities" between the copyrighted work and the commercial are these two vocal percussion effects," and that only "a particular pattern or sequence of percussion sounds ... can constitute original musical expression." Spielman's analysis of the two works causes him to conclude that "the rhythmic patterns created by the respective vocal effects are not similar"; and "because their rhythmic durations are distinctly different from one another there is no indication of copying." Affidavit at PP 8-10.

The threshold issue in copyright infringement cases is originality, not copying. Within the context of the composition copyright, plaintiffs stress that the Copyright Office issued Registration Number PA 229-080 for the "words & music" of "Stick 'Em". They criticize Spielman's analysis as focusing too narrowly on the Brrr and Hugga-Hugga sounds, while disregarding their copyrighted function as lyrics. Plaintiffs offer the declaration of John Leland, a writer and critic specializing in popular music, who states that plaintiff Robinson, who generates the Hugga-Hugga sound, "was one of the first rap artists to be known nationally for creating human beat box sounds," thereby earning the industry nickname "the Human Beat Box." Leland also says the Brrr and Hugga-Hugga sounds "were uniquely associated with the Fat Boys"; he adds that "I am unaware of any other rap act that used the lyric/sound 'Hugga-Hugga' or the trilling 'Brrr' lyric sound created by the Fat Boys." Declaration at P 16.

When the originality of a copyrighted work is at issue, it becomes a question of fact for the jury to resolve. See the jury charge appearing in 3 Devitt, Blackmar and Wolff, Federal Jury Practice and Instructions (4th ed. 1987) at § 99.04, p. 808 (advising the jury in copyright actions that "[the] first disputed issue is originality," and going on to define that concept). This fact question is withheld from the jury only if the accused infringer persuades the trial court that, as a matter of law, plaintiff's work which defendant allegedly copied was not original and hence not protectible. The defendant bears the burden of that persuasion in order to overcome the presumption of validity accorded the copyright registration: in this case, registration of the words and music of plaintiffs' work "Stick 'Em. " See Gaste v. Kaiserman at 1065-66. In Gaste Judge Conner submitted to the jury all disputed issues, including that of the validity of the copyright. Affirming a judgment in plaintiff's favor, the Second Circuit held that the trial judge was right to do so, saying of the song at issue: "On the evidence presented by both sides, we cannot say as a matter of law that Gaste's 'Pour Toi' was not original enough to be accorded copyright protection." In Levine v. McDonald's Corp. , 735 F. Supp. 92, 99 (S.D.N.Y. 1990), Judge Patterson followed Gaste in denying the accused infringer's motion for summary judgment, holding that the jury could find plaintiff's composition "sufficiently creative to warrant copyright protection."

In the case at bar, I conclude that defendants are not entitled to summary judgment dismissing plaintiffs' composition copyright claim on the ground of copyright invalidity. I hold that a jury could find that the Hugga-Hugga and Brrr sounds, used as lyrics in the copyrighted work, are sufficiently creative to warrant copyright protection, quite apart from the rhythmic patterns or durations demonstrated by that work and the commercial. These sounds are more complex than the single drum beat hypothesized in Spielman's affidavit, and in that complexity lies, arguably at least, the fruit of creativity. The relatively few cases considering originality in musical compositions do not point clearly in either direction; they are too fact-specific to do so. While they may not prevail, plaintiffs are entitled to test their claim of originality at trial, where they will have the assistance of a jury instruction concerning the registration's presumption of validity. On this motion for summary judgment, having that presumption in mind and, as I must, resolving ambiguities and drawing reasonable inferences against the moving party, I hold that summary judgment on this issue is not appropriate.

The next issue is copying. In infringement cases copying may be proved by direct evidence, a "rare scenario," Rogers v. Koons at 307. "Because copiers are rarely caught red-handed, copying has traditionally been proved circumstantially by proof of access and substantial similarity." Gaste v. Kaiserman at 1066.

In the case at bar, there is direct evidence of copying that a jury would be entitled to consider. Deposition testimony indicates that defendant Miller wished to promote its beer to younger consumers. An employee of defendant Backer & Spielvogel, Inc., Miller's advertising agency, asked one of the Fat Boys' agents if the Boys would appear with defendant Piscopo in a humorous television commercial for Miller Lite Beer. Plaintiffs rejected that overture out of hand. A Backer employee then purchased a Fat Boys videotape that included the "Stick 'Em" work and made it available to the production team for the commercial. The videotape cover portrayed the Fat Boys in distinctive dress. The Backer employee in charge of production gave wardrobe instructions that Piscopo was to be dressed "as a fat rapper, loosely based on the Fat Boys, a popular black rap group." In casting the commercial for backup artists to appear with Piscopo, the casting agent was instructed to look for black actors "a la the Fat Boys and al la Run-DMC." Run-DMC was another prominent rap group. Its dress and style were significantly different from the Fat Boys, which the commercial closely resembles. The writer of the commercial acknowledged listening to the music on the Fat Boys videotape to get the "feel of the sound." Plaintiffs' expert John Mahoney, a musician and music producer, submits an affidavit expressing his opinion that the sound track of the commercial "contained material sampled from the Fat Boys, most probably from 'Stick Em.'" Affidavit at P 16. "Sampling" in this context means actually physically copying the sounds from one recording to another.

In addition to this evidence of direct copying, plaintiffs rely upon the similarities between "Stick 'Em" and the commercial in respect of the lyrics (Brrr and Hugga-Hugga) and the sound recording. When portions of "Stick 'Em" are juxtaposed with the commercial, as on an exhibit to the affidavit of plaintiff's counsel Jonathan Zavin, the similarities are striking.

Defendants disclaim any copying and put forward explanations for the evidence that would seem to suggest it. They stress that Mahoney was unable to specifically identify which portion of a Fat Boys sound recording defendants sampled (or copied). Mahoney explains that inability by the fact that the producers of the commercial discarded the unmixed master tape, which would have permitted a more precise electronic analysis; nevertheless, he adheres to his opinion that sampling of the "Stick 'Em" sound recording occurred. It is common ground that if defendants did sample plaintiffs' copyrighted sound recording, they infringed that copyright, whatever may be said of the composition copyright.

I need not recount the conflicting evidence and contentions at length. The contested issue of copying is not appropriate for summary disposition.

For the foregoing reasons, defendants' motion for summary judgment dismissing plaintiffs' copyright infringement claims is denied.

III. The Trademark Claims

Individual plaintiffs Morales, Wimbley and Robinson adopted the name "Fat Boys" to identify their musical performing group. On application by plaintiff Tin Pan Apple, the United States Patent and Trademark Office issued to the group Service Mark Registration Number 1,351054 on July 23, 1985. Plaintiffs allege that they have entered into license agreements for use of the name "Fat Boys" for numerous products, including clothing and toys; that the Fat Boys have become well-known for their unique musical and performing style; that the public associates Morales, Wimbley and Robinson specifically with the Fat Boys by reason of their physical size, style of performance and costuming; and that the Fat Boys, by reason of their "message" of abstinence and probity, have created goodwill in their name, performing style, singing style, and identification with an adolescent audience.

Plaintiffs further allege that by copying the Fat Boys style and appearance in the commercial, the acts of defendants represent a deliberate attempt to misrepresent, mislead and confuse the public and customers of plaintiffs' products and services into falsely believing: 1) that defendants' Commercial for a Miller-brand beer is performed by Morales, Wimbley and Robinson as FAT BOYS; 2) that defendants' Commercial for a Miller-brand beer is performed by Morales, Wimbley and Robinson as FAT BOYS in conjunction with and as back-up musical vocals to defendant Piscopo; 3) that Morales, Wimbley and Robinson, as FAT BOYS, endorse the drinking of beer and, specifically, the Miller product.

Second amended complaint at P 51.

Plaintiffs charge defendants with false advertising, in violation of the Lanham Act, 15 U.S.C. § § 1114 and 1125(a) (third claim); and with unfair competition, in violation of § 1125(a) (fourth claim).

Plaintiffs' theory of the case is that defendants, having asked the Fat Boys to do a beer commercial and been rebuffed, deliberately copied the Fat Boys' distinctive sounds and appearances, thereby accomplishing by deceit impressions to which plaintiffs had specifically refused to agree. They assert several claims based on that theory.

Plaintiffs seek an injunction against further broadcasting of the commercial or other imitation by defendants of plaintiffs' music or likeness. They pray that defendants be required to account for and pay over profits derived from the infringing commercial. They also pray for compensatory and punitive damages.

As in the copyright context, defendants deny that they copied the Fat Boys' performances or appearance. They say that the commercial reflects nothing more than generic rappers, and that there was no infringement.

Whether or not defendants deliberately copied services covered by the plaintiffs' registered trademark poses a genuine issue as to a fact that is material under trademark law. It follows that plaintiffs' trademark claims are not subject to summary disposition.

(a) Claim for an Injunction

Insofar as plaintiffs ask for injunctive relief, they seek protection against future consumer confusion. The "central issue in trade name infringement cases ... is the same as it is in trademark cases, namely, whether there is a likelihood of confusion." Lang v. Retirement Living Publishing Co., Inc., 949 F.2d 576, 579 (2d Cir. 1991). "Whether a trademark owner receives judicial protection depends on 'whether there is any likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question." Id. at 579-80 (citing and quoting McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1130 (2d Cir. 1979)). Consumer confusion as to source does not require that the consumer "believe that the owner of the mark actually produced the [infringing] item and placed it on the market." Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 204 (2d Cir. 1979). In that case, involving the unauthorized use in a pornographic movie of a distinctive uniform which "unquestionably brings to mind the Dallas Cowboy Cheerleaders," the Second Circuit said: "The public's belief that the mark's owner sponsored or otherwise approved the use of the trademark satisfies the confusion requirement." Id. at 205. Looking towards trial, the court of appeals added:

Plaintiff expects to establish on trial that the public may associate it with defendants' movie and be confused into believing that plaintiff sponsored the movie, provided some of the actors, licensed defendants to use the uniform or was in some other way connected with the production. The trademark laws are designed not only to prevent consumer confusion but also to protect "the synonymous right of a trademark owner to control his product's reputation." James Burrough Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266, 174 (7th Cir. 1976) (Markey, C.J.)

In Dallas the court of appeals affirmed the district court's conclusion that plaintiff had established a likelihood of confusion sufficient to justify a preliminary injunction under the Lanham Act.

In the case at bar Lynda West, an officer of plaintiff Tin Pan Apple, the Fat boys' manager, submits a declaration which, after reciting the refusal of the Fat Boys to appear in a commercial for Miller Lite Beer, goes on to say in P 12:

I was thus quite surprised when I began receiving telephone calls and comments from friends and colleagues several months later congratulating me on having gotten the Fat Boys in a Miller Lite Commercial. Soon thereafter, my office began receiving letters commenting on the Fat Boys' "appearance" in the commercial with Joe Piscopo. Most fan mail is not kept in the regular course of TPA's business and unfortunately these letters were not retained. The same confusion happened, however, while the group was on tour. Fans would often comment on what they thought to be the Fat Boys' appearance in the commercial. The comments ranged from the congratulatory to the derogatory.

Fans of the Fat Boys are members of the public and consumers of the group's musical and vocal services. Their declarations, as recounted by West, manifest a form of confusion closely analogous to that held sufficient in Dallas to justify equitable relief. 1

Defendants dismiss West's evidence as "self-serving" and "hearsay." Main Brief at 31. Characterizing evidence as "self-serving" is a means of attacking its credibility, but credibility is for the jury. As for hearsay, a witness is entitled to describe an out-of-court declarant's statement of a "then existing state of mind. . ." Rule 803(3), Fed.R.Evid. To the extent that West (or other plaintiff's witnesses') had personal knowledge of what fans of the Fat Boys wrote or said, and to the extent those written or oral declarations show a then-existing confusion on a declarant's part, the testimony falls outside the hearsay rule.

Defendants rely upon this Court's opinion in Resource Developers, Inc. v. Statue of Liberty-Ellis Island Foundation , 1990 U.S. Dist. LEXIS 5877, (S.D.N.Y. May 16, 1990) aff'd, 926 F.2d 134 2d Cir. 1991). But the declaration in that case said no more than "stores ... were confused and believed that Dettra was officially affiliated with the restoration effort ..." I held that "this is far too broad and non-specific a statement to qualify as admissible evidence under the hearsay rule." In the case at bar, the West declaration suggests at least the potential of more specific statements of fans' then existing states of mind which would qualify under Rule 803(3). It is not possible to resolve the admissibility of such evidence on the present record. Appropriate evidentiary rulings may be made at trial.

In determining whether consumer confusion is sufficiently likely to justify an injunction, actual confusion is only one of the recognized factors. The others include the strength of the prior owner's mark, the similarity between the two marks, the competitive proximity of the products, the likelihood that the prior user will bridge the gap, the defendant's good faith, the quality of defendant's product, and the sophistication of the buyers. Lang at 580. Without attempting an analysis of each of these factors on the present motion, I am prepared to say that plaintiffs could prove at trial a combination of actual confusion, defendants' bad faith, and lack of consumer sophistication sufficient to entitle them to a permanent injunction. Summary judgment is not appropriate on this aspect of the case. 2

(b) Claim for an Accounting

Plaintiffs will be entitled to an accounting of defendant Miller's commercial-generated profits if they prove that defendants' infringement was fraudulent. That is so, even if plaintiffs cannot prove lost sales because their services (musical performances) are different from Miller's product (beer). In George Basch Co., Inc. v. Blue Coral, Inc., 968 F.2d 1532 (2d Cir. 1992), a case upon which defendants place a misguided reliance, the Second Circuit, invoking the principle of "deterrence," held that "a court may award a defendant's profits solely upon a finding that the defendant fraudulently used the plaintiff's mark." Id. at 1539. The court's power to direct an accounting in a Lanham Act case derives from section 35(a) of the statute, 15 U.S.C. § 1117(a), which entitles a plaintiff, "subject to the principles of equity", to "recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action." As the Second Circuit held in Basch , a Lanham Act plaintiff may recover defendant's damages even if plaintiff suffered no damages. The court of appeals explained:

The rationale underlying this holding is not compensatory in nature, but rather seeks to protect the public at large. By awarding the profits of a bad faith infringer to the rightful owner of a mark, we promote the secondary effect of deterring public fraud regarding the source and quality of consumer goods and services

Id. at 1539.

At the risk of repeating the obvious, whether or not defendants at bar acted in bad faith is an issue of fact requiring trial. Defendants quote selectively from Basch in an effort to persuade the Court that the record negates bad faith as a matter of law. I do not agree. Basch reached the court of appeals after plenary trial in the district court. The district judge directed a verdict in defendant's favor on plaintiff's claim for damages on its trade dress infringement claim because plaintiff "had failed to produce any evidence regarding actual consumer confusion or that Blue Coral acted with intent to deceive the public." Id. at 1535. However, having concluded that plaintiff would be entitled to an accounting even in the absence of such proof (the point on which the Second Circuit reversed him), the district judge sent plaintiff's infringement claim to the jury under a special verdict. The jury found infringement, but stated that defendant's acts in violation of plaintiff's rights were not "done maliciously and in reckless disregard" of those rights. Id. at 1541.

In short, Basch involved an appeal following full trial in the district court, at the conclusion of which both judge and jury found that defendant had not acted in bad faith, the judge commenting that plaintiff had failed to produce "any evidence" that defendant acted to deceive the public. As noted supra, such evidence is available to the present plaintiffs. Basch furnishes no support for a summary disposition of the issue. Each case "depend[s] on the circumstances," as the Basch court noted at 1541. Plaintiffs' Lanham Act claim for an accounting must be resolved by trial.

(c) Claim for Damages In addition to plaintiffs' claim for an accounting, Basch is instructive on the claim for compensatory damages. The Second Circuit said at 1537:

It is well settled that in order for a Lanham Act plaintiff to receive an award of damages the plaintiff must prove either "actual consumer confusion or deception resulting from the violation," Getty Petroleum Corp. v. Island Transportation Corp., 878 F.2d 650, 655 (2d Cir. 1989) (quoting PPX Enterprises, Inc. v. Audiofidelity Enterprises, Inc., 818 F.2d 266, 271 (2d Cir. 1987)), or that the defendant's actions were intentionally deceptive thus giving rise to a rebuttable presumption of consumer confusion. See Resource Developers, Inc. v. Statue of Liberty-Ellis Island Foundation, Inc. 926 F.2d 134, 140 (2d Cir. 1991); PPX Enterprises , 818 F.2d at 273.

In the context of compensatory damages, the element of "actual consumer confusion or deception" requires a plaintiff suing for either trademark infringement or unfair competition "to show that buyers, who wished to buy the plaintiff's goods, have been actually misled into buying the defendant's." G.H. Mumm Champagne v. Eastern Wine Corp., 142 F.2d 499, 501 (2d Cir.), cert. denied, 323 U.S. 715, 89 L. Ed. 575, 65 S. Ct. 41 (1944) (cited and quoted in Getty Petroleum Corp. v. Island Petroleum Corp., 878 F.2d 650, 655 (2d Cir. 1989), in turn cited and quoted in Basch )). There is no evidence in the present record that plaintiffs are in a position to make such a showing. None of the evidence plaintiffs proffered in response to defendants' interrogatories inquiring into actual confusion comes close to doing so.

Plaintiffs rely on Basch's alternative formulation that a defendant's intentionally deceptive conduct gives rise "to a rebuttable presumption of consumer confusion." Whether defendants engaged in intentionally deceptive conduct is a triable issue of fact. It is not clear, however, that the rebuttable presumption referred to in Basch and the cases it cites for the proposition is applicable to the case at bar. All these cases involve direct competition in the marketplace between similar products. In Basch both parties marketed cans of metal polish. In Resource Developers, Inc. v. Statue of Liberty-Ellis Island Foundation, Inc., 926 F.2d 134 (2d Cir. 1991), and PPX Enterprises, Inc. v. Audiofidelity Enterprises, Inc., 818 F.2d 266 (2d Cir. 1987), both cited in Basch , the parties marketed flags and record albums respectively. It is not clear how such cases apply to that at bar, where the plaintiffs' services are so different from defendant Miller's product.

It may be, therefore, that defendants are entitled to summary dismissal of plaintiffs' Lanham Act claim for compensatory damages. I make no ruling on the point at present because, for reasons stated elsewhere, defendants' motion for summary judgment dismissing the entire complaint will be denied. The viability of a claim for Lanham Act compensatory damages may be considered in limine prior to trial.

Defendants' motion for summary judgment dismissing plaintiffs' Lanham Act claims is denied.

IV. The State Law Claims

Plaintiffs assert claims for unfair competition under § § 349 and 350 of the New York General Business Law, and for violation of their rights of privacy and publicity under § § 50 and 51 of the New York Civil Rights Law. These claims depend for their viability in law upon the nature of defendants' conduct. For the reasons sufficiently stated supra, they turn upon material facts as to which genuine issues exist.

The same is true of plaintiffs' claim for punitive damages in connection with their state law unfair competition claim. See Getty Petroleum Corp., supra, at 657.

For the foregoing reasons, defendants' motion for summary judgment dismissing the complaint is denied.

It is SO ORDERED.

Dated: New York, New York February 23, 1994

CHARLES S. HAIGHT, JR.

UNITED STATES DISTRICT JUDGE

 

 

Footnotes

1 Defendants contend that the Second Circuit's subsequent decision in Pirone v. MacMillan, Inc., 894 F.2d 579 (2d Cir. 1990), defines and limits the holding in Dallas. I do not see that Pirone affects the Dallas rationale in any way. Pirone says of Dallas that the case involved "a specific arbitrary symbol that had been used over time and had become associated in the public mind with the plaintiffs. The use of the Cheerleaders' uniform ... might well have led consumers to believe that the owners of those symbols authorized the challenged use."

Id. at 585

While defendants stress confusion linked to purchasing decisions, the Second Circuit did not say in Pirone that the Cheerleaders would have a viable Lanham Act claim for an injunction only if they could prove that consumers bought defendant's pornographic movie because of the mistaken impression that the Cheerleaders were in some way connected with its production. Dallas holds that a false impression of sponsorship is enough to satisfy the requirement of consumer confusion. Picone does not change that holding.

2 Defendants say that the injunctive aspect of the case is moot because they do not intend to broadcast the commercial again. If plaintiffs sustain their claims of infringement, they are entitled to the assurance an injunction will give them.

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