Opinion
03 Civ. 10258 (HB).
June 15, 2004
OPINION ORDER
Plaintiff Coleen A. Christian ("Christian") moved to preliminarily enjoin defendants' allegedly unauthorized use of her GOSSIP GIRL® trademark, which defendants opposed. Oral argument on the motion was held on May 11, 2004. For the reasons stated on the record at the conclusion of the oral argument and the reasons set forth below, Christian's motion is denied. As required by Fed.R.Civ.P. 52(a), following are the Court's findings of fact and conclusions of law.
I. FINDINGS OF FACT
Christian is an entertainment reporter for Steppin' Out, a free regional entertainment magazine reaching some 75,000 souls at colleges, supermarkets, delicatessens, sidewalk street boxes, etc. in northern New Jersey, southern New York, the Jersey Shore, and Manhattan. Since 1999, Christian has written a weekly entertainment column using the GOSSIP GIRL® mark, which contains news and information about celebrities and Hollywood. Christian's columns also prominently feature her name, photograph, and the subtitle, "Hollywood Will Never Be the Same." Christian has written approximately 195 columns, which have appeared in a number of websites in addition to their publication in Steppin' Out magazine. Christian has also appeared on three nationally broadcast television shows and two newspapers have written articles about her column. On October 29, 2001, the United States Patent and Trademark Office ("USPTO") registered Christian's GOSSIP GIRL® mark based on her January 29, 2001 application. Christian first learned of defendants' use of the phrase "Gossip Girl" in April 2002.
Seventeenth Street Productions is a division of Alloy, Inc., which was formally known as Alloy Online, Inc. (collectively, "Alloy"). Alloy is a media and marketing company that targets teenagers and young adults. In the Spring of 2000, Alloy thought up the idea for a series of novels set in a fictitious private high school located on the Upper East Side of Manhattan. These novels, authored by Cecily von Ziegesar, are targeted for the niche market of teenage girls and use the phrase "Gossip Girl" in the title. The novels have an anonymous narrator named "Gossip Girl," who posts gossip about the characters on an internet site that contain references to celebrities. The books' trade dress features the Cecily von Ziegesar's name, a photograph of teenage girls or boys (with a portion of their faces cut off), and an open mouth lips logo. The second half of the title for each book (other than the first in the series) is the phrase, "A Gossip Girl Novel."
The Gossip Girls novels published to date are entitled: (1)Gossip Girl; (2) You Know You Love Me A Gossip Girl Novel; (3) All I Want Is Everything A Gossip Girl Novel; (4) Because I'm Worth It A Gossip Girl Novel; (5) I Like It Like That A Gossip Girl Novel.
Alloy applied for a trademark after it decided to publish a series of novels because of the success of the first book,Gossip Girl. The USPTO, however, rejected Alloy's December 30, 2002 application for use of the "Gossip Girl" mark in connection with entertainment, film, video, television, etc. because it was so similar to Christian's mark that it was likely to cause confusion. The USPTO approved Alloy's application once Alloy restricted the use of the mark to fictional teenagers living in New York City. Alloy has published five novels in the series to date, the first of which was released in April 2002. Two of the novels have been listed on the New York Times bestseller lists for children's books. Alloy has contemplated both a television series and movie based on the Gossip Girl series. To that end, Alloy began negotiations with Warner Brothers to produce a Gossip Girl movie, although the project is presently on-hold.
The USPTO also rejected Alloy's January 2003 trademark application, in which it sought to register the "Gossip Girl" mark in connection with publications for teenage girls and the provision of on-line information and forums for teenage girls. The USPTO's decision was again based on a likelihood of confusion with Christian's mark. The record is unclear whether Alloy made another application and, if so, whether the second application was rejected, granted, or is still pending.
Christian initially filed suit against the defendants for their alleged trademark infringement and unfair competition on May 23, 2003. In June 2003, Christian, through her counsel, sent a cease and desist letter to Alloy in which she informed it of her federal trademark infringement lawsuit. Thereafter, Christian voluntarily discontinued the action on September 25, 2003. From approximately June to December 2003, the parties unsuccessfully attempted to settle the matter. Christian then initiated the instant action on December 29, 2003 and re-alleged violations of 15 U.S.C. § 1114, 1125(a) and New York's unfair competition law. In her complaint, Christian sought, inter alia, a preliminary and permanent injunction, an accounting, an award of Christian's damages, to be trebled, defendants' profits, and reasonable attorneys' fees and costs. On March 23, 2004, Christian moved for a preliminary injunction. Defendants opposed the grant of preliminary relief and moved for expedited discovery, which was granted.
This first case was assigned docket number 03 Civ. 3702 (HB).
Christian's second complaint was assigned docket number 03 Civ. 10258 (HB) and was deemed related to her earlier action, 03 Civ. 3702 (HB), which is closed.
II. CONCLUSIONS OF LAW
A preliminary injunction is "an extraordinary and drastic remedy which should not be routinely granted." Med. Soc'y of State of N.Y. v. Toia, 560 F.2d 535, 538 (2d Cir. 1977). To obtain injunctive relief, the movant must demonstrate: "(a) that it will suffer irreparable harm in the absence of an injunction and (b) either (i) a likelihood of success on the merits or (ii) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in the movant's favor." Tom Doherty Assocs., Inc. v. Saban Entm't, Inc., 60 F.3d 27, 33 (2d Cir. 1995). Here Christian seeks a mandatory injunction, i.e., an injunction that would "alter the status quo by commanding some positive act."Id. at 34. A mandatory injunction requires a "clear" or "substantial" showing of a likelihood of success on the merits.Jolly v. Coughlin, 76 F.3d 468, 473 (2d Cir. 1996). Christian has failed to meet the lesser test, no less the test for a mandatory injunction.
A. Irreparable Harm
Christian's two-year delay alone may be sufficient to negate the irreparable harm. The Second Circuit has held that "any . . . presumption of irreparable harm is inoperative if the plaintiff has delayed either in bringing suit or in moving for preliminary injunctive relief . . . [S]uch delay . . . may, standing alone, . . . preclude the granting of preliminary injunctive relief . . . because the failure to act sooner undercuts the sense of urgency that ordinarily accompanies a motion for preliminary relief and suggests that there is, in fact, no irreparable injury." Tough Traveler, Ltd. v. Outbound Prods., 60 F.3d 964, 968 (2d Cir. 1995) (internal citations and quotation marks omitted). Although Christian first learned of the defendants' alleged infringement and unfair competition in April 2002, she did not seek to avail herself of legal remedies until over a year later when she first filed suit in May 2003. Christian then voluntarily discontinued that action, only to re-file some seven months later. Thereafter, she then waited an additional three months to move for preliminary relief. Any irreparable harm is belied by the sheer length of time since she discovered her alleged injury and the number of previous opportunities she had to move for the same relief. Courts have denied preliminary injunctive relief based on far fewer and shorter delays. E.g., Christopher Norman Chocolates, Ltd. v. Schokinag Chocolates N. Am., Inc., 270 F. Supp.2d 432, 438 (S.D.N.Y. 2003) (eight to nine months); Brockmeyer v. The Hearst Corp., No. 01 Civ. 7746, 2002 WL 1402320, at *4 (S.D.N.Y. June 27, 2002) (sixteen months); Greenpoint Fin. Corp. v. Sperry Hutchinson Co., Inc., 116 F. Supp.2d 405, 409 (S.D.N.Y. 2000) (four months).
Christian argued that there was, in fact, no delay because she moved rapidly — within one month — for injunctive relief after she learned of Alloy's movie deal with Warner Brothers. Christian's attempt to re-frame the issue and thus re-set the relevant timeframe in this manner is unpersuasive. Her pleadings, motion papers, and argument in Court on May 11, 2004 all indicated that the thrust of the alleged infringement is defendants' book series, not the proposed movie deal, which, parenthetically, is apparently going nowhere, at least not for the time being. And while Christian argued that she too contemplated using her mark in a Hollywood film venture, she has presented no credible evidence that she seriously intended to use the mark in that realm. To prevail, Christian may not rely on "a mere possibility that [she] will be irreparably harmed." Med. Econ. Co., Inc. v. Prescribing Reference, Inc., 294 F. Supp.2d 456, 450 (S.D.N.Y. 2003). Instead, she "must demonstrate an injury that is neither remote nor speculative, but actual and imminent." Tucker Anthony Realty Corp. v. Schlesinger, 888 F.2d 969, 975 (2d Cir. 1989) (internal quotation marks and citation omitted). Christian's perceived inability to pursue future film ventures with her GOSSIP GIRL® mark is thus too remote to support a finding of irreparable harm. Christian further argued that a preliminary injunction was necessary to prevent her "from being buried underneath the avalanche of media surrounding [defendants'] movie." Tr. at 6:6-7. Even if it were likely that defendants' movie would be a blockbuster success and inundate media channels to her detriment when and if it ever surfaces, Christian offers no evidence of success on the merits.
Finally, Christian argued that she should not be punished for attempting to resolve the dispute without legal intervention. Settlement is highly favored by the courts and Christian's efforts to amicably resolve the matter are to be applauded, but the mere fact that she attempted to negotiate a settlement does not relieve her of her burden to demonstrate irreparable harm. Settlement negotiations and a motion for preliminary relief are in no way mutually exclusive; indeed, the gossip surrounding such a motion for preliminary relief might have enhanced the settlement possibilities. In short, Christian did not carry her burden with respect to irreparable harm and thus failed to satisfy the first prong of the inquiry.
B. Likelihood of Success
To prevail on a trademark infringement suit under the Lanham Act, a "plaintiff must prove that its mark is entitled to protection and . . . that the defendant's use of its own mark will likely cause confusion with plaintiff's mark." Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072, 1074 (2d Cir. 1993). Registration of a trademark is prima facie evidence that the mark is valid and owned by the registrant, who has the exclusive right to use the mark in connection with the goods or services identified in the certificate. 15 U.S.C. § 1057(b). Christian has supplied such evidence and thus satisfied this component of the inquiry.
Success on the merits is in large part based on whether there is a likelihood of confusion, which is determined by the 8-factor test set out in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). These factors are: "(1) the strength of the mark; (2) the degree of similarity between the two marks; (3) the proximity of the products; (4) the likelihood that the prior owner will `bridge the gap' . . .; (5) actual confusion; (6) the defendant's good faith in adopting its mark; (7) the quality of the defendant's product; and (8) the sophistication of the buyers." Time, Inc. v. Petersen Pub. Co. L.L.C., 173 F.3d 113, 117 (2d Cir. 1999). Of these, no single factor is dispositive. Instead, the totality of the factors must indicate a "probability of confusion, not a mere possibility" of confusion. Gruner + Jahr USA Publ'g, 991 F.2d at 1077 (emphasis supplied). And because Christian sought a mandatory injunction, the standard is that much higher and requires a clear or substantial showing of this probability, something that she has not done.
Neither party presented any evidence or argument on the seventh factor, which relates to the quality of defendants' products. Accordingly, I have not considered in this factor in my analysis.
With respect to the first Polaroid factor, the strength of Christian's mark is slight, given that it is primarily used in a regional publication with a mere circulation of 75,000. Christian contends that her appearances on three television programs and two newspaper articles written about her column constitute "widespread media exposure," which indicates that her mark has become distinctive in the marketplace. Pl. Mem. at 14. I disagree. To the contrary, Christian has presented no persuasive evidence of a strong mark.
The second and third Polaroid factors, which address the similarity of the marks and proximity of the products, do not weigh in Christian's favor either. Christian's and the defendants' marks may be similar, i.e., they both use the phrase "Gossip Girl," but the products that bear the marks are wholly dissimilar in substance, format, trade dress, target market, and consumers. Christian's attempts to persuade the Court that her column and defendants' novels are closely related are unavailing. The mere fact that both products appear in print, for example, is far too broad a criteria to serve as a meaningful point of comparison. On the other hand, the fact that Christian's column has appeared in a free publication is not similar to defendants' novels, each of which costs $9.00 at a bookstore or other point of sale. Likewise, Christian's allegation that both products reference the same celebrities completely ignores the context of these references. In its simplest form, the products are not similar or proximate. Christian writes a non-fiction gossip column for young adults in a regional publication and defendants write and publish fictional novels for teenage girls.
As for the fourth factor in the Polaroid test, "bridging the gap," Christian contends that defendants have entered into the realm of gossip columns through their strategic alliance with Hachette Filipacchi Media U.S., Inc., who Christian believes is responsible for the production of a website entitled, "This Week's Gossip Girl." Defendants have disavowed any connection with this website and indicated that their business with Hachette relates to entirely different undertakings and Christian has produced no evidence to the contrary. This, together with the evidence that indicates that defendants' future projects are primarily in the realm of television and movies, undercuts Christian's allegation. Christian further asserts that she contemplated writing a book, however, any such book would be a compilation of her columns and thus would be dissimilar from defendants' novel series. As noted earlier, Christian's plans for entering the film industry were entirely too speculative for the "bridging the gap" factor to weigh in her favor.
Christian endeavored to present evidence of actual confusion, the fifth Polaroid factor, to tip the balance in her favor. She did not, however, present any credible evidence from the purchasing public. One method frequently resorted to in such a situation is to initiate a consumer survey, here, with plenty of time to do so, Christian did nothing of the kind. Instead, she presented two affidavits from her husband and friend. Neither reflects any confusion on the part of the purchasing public. Nor do I find convincing the passing remarks of Burt Kearns, the editor and owner of a website that publishes Christian's column, particularly since he attested that he has not observed any instances of confusion between Christian's column and the defendants' novels.
It is noteworthy too that defendants allege Kearns is a friend of Christian's husband
In his declaration, Kearns attested, in pertinent part, that: "From the time I first included Ms. Christian's column in the Website to the present, I have not encountered any instances of confusion between Ms. Christian or Ms. Christian's columns and defendants . . . However, when I heard news of a film deal for "Gossip Girl," I did at first think it was connected to Ms. Christian's column." Kearns Decl. ¶ 9.
Christian further argues that defendants' failure to conduct a trademark search prior to their use of the phrase "Gossip Girl" or applying for their own trademark with respect to the "Gossip Girl" novel series negates the defendant's good faith, the sixthPolaroid factor. Christian overlooks the fact that here bad faith refers to more sinister conduct. As defendants note, in the context of the Polaroid analysis, the bad faith factor "examines whether defendants `adopted [their] mark with the intention of capitalizing on plaintiff's reputation and goodwill and any confusion between [their] and [plaintiff's] product."Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 745 (2d Cir. 1998) (alteration in original). Christian has presented no argument or evidence of the sort.
Finally, with respect to the eighth Polaroid factor, while I find that the consumers — at least the target teenage audience of defendants' novels — may be less sophisticated, they too can distinguish between a non-fiction newspaper column and a fictional novel. At best, this factor is a draw. The balance of the Polaroid factors therefore weighs in defendants' favor. This, coupled with a lack of proof on the issue of irreparable harm, compels dismissal of Christian's motion for preliminary injunctive relief.
III. CONCLUSION
For the foregoing reasons, Christian's motion is denied. The Clerk of the Court is instructed to close this motion and any remaining open motions. Trial on Christian's claims will be held as scheduled in September 2004.