MJM Productions v. Kelley Productions CV-03-390-JD 09/24/03 P UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE
MJM Productions, et al.
v. Civil No. 03-390-JD Opinion No. 2003 DNH 159 Kelley Productions, Inc., et al.
O R D E R
The plaintiffs, MJM Productions ("MJM"), Michael J. MacLeod,
and Jefferson Dutton have produced a film called Brotherhood,
which is set in a small town in New Hampshire. They bring suit
against Kelley Productions, Inc. ("KPI"), CBS Broadcasting, Inc.
("CBS"), and Twentieth Century Fox Film Corporation ("Fox"),
alleging that the defendants' television series. The Brotherhood
of Poland, New Hampshire, constitutes unfair competition and
infringes their trademark rights in Brotherhood. The plaintiffs
seek a preliminary injunction with certain restraints against the
defendants' use of "Brotherhood," including an injunction against
the broadcast of The Brotherhood of Poland, New Hampshire, in New
Hampshire. The series is scheduled to premiere nationwide on
September 24, 2003. The court held a hearing on the plaintiffs'
motion on September 22, 2003. Background
The court makes the following preliminary findings of fact
based on the evidentiary materials submitted by the parties and
the representations of counsel at the motion hearing. See Fed.
R. Civ. P. 52(a); TEC Enq'q Corp. v. Budget Holders Supply, Inc.,
82 F .3d 542, 544 (1st Cir. 1996).
A. The Plaintiffs' Perspective
The following facts are drawn from MacLeod's affidavit,
submitted in connection with the motion for preliminary
injunction.1 The plaintiffs' film was born in March 2002, when
MacLeod and Dutton began to develop the idea for a story about a
group of friends returning from college to a small town in New
Hampshire. MacLeod owns defendant MJM, a film production and
location scouting company in Manchester, New Hampshire. Dutton
studies film at a college in upstate New York.
MacLeod and Dutton began writing the film in April of 2002.
The screenplay focused on five male characters, with the action
centered around an actual diner in Derry, New Hampshire.
Shooting took place between June 24, 2002, and July 15, 2002, at
1The defendants have filed an objection to a number of the statements in MacLeod's affidavit on evidentiary grounds. For reasons which will appear, the resolution of this objection is not material to the outcome of the plaintiffs' motion.
2 in-state locations, including the diner. The film premiered in a
private showing at the same diner on August 9, 2002.
MJM later submitted copies or synopses of the screenplay to
"several major motion picture and television studios." Warner
Brothers apparently expressed interest, asking for a copy of the
screenplay for consideration as a motion picture, reviews of the
film published by college students, and a script for a television
version of the film. At Warner Brothers' direction, MJM screened
the film in a theater at Brandeis University in Massachusetts on
December 3, 2003, receiving a "very positive" audience reaction.
MacLeod also claims that "[t]he film was discussed with Fox Los
Angeles," although he does not relate the participants, content,
time, or place of these discussions.
The film also drew the attention of local media.A
Manchester radio station interviewed Dutton and MacLeod about the
film in June 2002. Another interview was broadcast on the Derry
television station WNDS in early July 2002, and an article about
the film appeared in The Derry News and The New England
Entertainment Digest around the same time. In late November
2002, WNDS aired another interview with MacLeod and Dutton, which
included a synopsis of and clips from the finished film.
Following the screening at Brandeis, The New England
Entertainment Digest ran another article about the film, which
3 "contained many positive comments." MacLeod claims that he and
his company "invested almost all our time, efforts and money in
developing, creating, filming, publicizing and marketing the
film" between early 2002 and spring 2003. Apart from the facts
already set forth, however, MacLeod's affidavit does not describe
any of these efforts, how much they cost, or their degree of
success. The plaintiffs' counsel conceded at the hearing that
Brotherhood has never been shown to a paying audience in New
Hampshire. It is not clear whether the attendees at the Brandeis
screening were charged admission.
MacLeod's affidavit is also unclear as to when the
plaintiffs began calling their film Brotherhood. Although he
uses the name to refer to the plaintiffs' film as it existed
throughout its development, he also relates that as late as July
2002, the film was "tentatively titled The Town of Brotherhood."
No other evidence on this point was submitted. The court finds
that the plaintiffs did not begin calling their film The Town of
Brotherhood until July 2002, and did not use the title
Brotherhood until they first screened the film on August 9, 2002.
In February 2003, a WNDS reporter called MacLeod to
congratulate him, believing he had sold Brotherhood to be
released as David E. Kelley's The Brotherhood of Poland, New
Hampshire. That was the first time MacLeod heard of The
4 Brotherhood of Poland, New Hampshire. Later that month, MacLeod
claims to have called KPI and "asked them to change the name of
their television series," only to be rebuffed by Veronica Wilson,
KPI's vice president of legal affairs.2 Beginning with a letter
from MJM's attorneys to KPI on April 11, 2003, counsel for MJM
and KPI engaged in acerbic correspondence about the use of
"Brotherhood" in the title of KPI's series and the degree of
similarity between its content and that of MJM's film. MJM's
lawyers threatened suit in a letter to CBS' general counsel on
June 11, 2003. They also offered to forebear from filing an
action until June 25, 2003.
When that day arrived, however, KPI, Fox, and CBS brought a
declaratory judgment action in the United States District Court
for the Central District of California, challenging MJM's and
MacLeod's claim to trademark rights in "Brotherhood." MJM and
MacLeod filed a motion to dismiss or transfer that case to New
Hampshire on the basis of lack of personal jurisdiction on July
28, 2003. On August 25, 2003, the court in California granted
the ex parte application of the plaintiffs for discovery on the
2Wilson remembers her conversation with MacLeod differently. She relates that he simply "asked if there might be any conflicts" between MJM's Brotherhood and KPI's series, and wished her "good luck with [KPI's] project" at the end of the conversation. The resolution of these competing versions of the call, however, is not material to the outcome of this motion.
5 jurisdictional issue and scheduled a hearing on the pending
motion for November 17, 2003. Because the hearing was to take
place after The Brotherhood of Poland, New Hampshire was to
debut, MJM, MacLeod, and Dutton filed this action on September
10, 2003, together with a motion for a preliminary injunction.
B. The Defendants' Perspective
The defendants offer a different backstory to this
litigation. Kelley, the chief executive officer of KPI and the
creator of a number of previous television series, wrote the
script which became the pilot episode of The Brotherhood of
Poland, New Hampshire in 2002. At that time, he had never heard
of any of the plaintiffs or their Brotherhood project.
KPI later reached an agreement with Fox to distribute the series
On January 17, 2003, Fox registered the pilot with the United
States Copyright Office under the name The Brotherhood of Poland
New Hampshire. Fox claims to have no record of any feature film
entitled Brotherhood which was submitted for its consideration a
of April 2003 or, for that matter, any feature film submission
which involved any of the plaintiffs.
In February 2003, Fox ordered a "trademark and title search
of the title The Brotherhood of Poland, New Hampshire. The
search revealed no existing films or television series with the same name, but turned up more than fifty works with the word
"Brotherhood" in the title. Fox's April 17, 2003, search of the
Internet Movie Database, , revealed fifteen films,
eight made-for-TV movies, and four straight-to-video releases
whose titles included the word "Brotherhood." On the same day,
Amazon.com was offering for sale 422 books, 10 DVDs, and 24
videos containing "Brotherhood" in their titles. The
Filmtracker/Baseline database, a storehouse of information on
film and television development, listed 27 projects whose titles
included "Brotherhood" as of April 21, 2003. At this preliminary
stage in the proceedings, the court finds the foregoing
evidence--which was received without objection from the
plaintiffs--sufficiently reliable to demonstrate the widespread
use of the word Brotherhood" as an artistic or literary title.
The series, which the defendants plan to broadcast on CBS,
"focuses on the family and career challenges of three middle-aged
brothers in the fictional town of Poland, New Hampshire." Aside
from a portion of the pilot episode shot in the real New
Hampshire town of Plymouth, the entire series to date has been
filmed in California.3
3During the war of words which preceded the litigation, the plaintiffs claimed further similarities between the content of their film and that of The Brotherhood of Poland, New Hampshire in that the series is to contain scenes shot in a diner and
7 CBS claims to have spent "well in excess of $10 million" to
date promoting The Brotherhood of Poland, New Hampshire. This
sum paid for on-air promotions, national print ads, local radio
and cable spots, and billboards and other outdoor print media,
all of which "prominently featured the title . . . in an effort
to make the name memorable and synonymous with the [p]rogram."
Accordingly, the defendants contend that they cannot change the
name at this late date without losing viewers. CBS also contends
that the sole means of stopping the program from airing in New
Hampshire is to pull it from its affiliates in Boston,
Massachusetts, Burlington, Vermont, and Portland, Maine, each of
which broadcasts into part of New Hampshire. This would cause
more than 2.5 million viewers outside of New Hampshire to miss
the show as well, imperiling the ratings guarantees which CBS has
made to its advertisers in connection with the premiere. CBS
expects the premiere alone to generate $1.3 million in revenue.
feature flashbacks to the college days of the middle-aged characters. The plaintiffs offered no competent evidence on this point in connection with their motion, however. More importantly, the Supreme Court has made clear that the Lanham Act does not protect "any idea, concept, or communication" embodied in a film, but merely the film itself as a tangible good. See Dastar Corp. v. Twentieth Century Fox Film Corp., 123 S. C t . 2041, 2050 (2003). Accordingly, the asserted similarities between the content of the plaintiffs' and defendants' works does not inform the court's analysis of the plaintiff's claim. Standard of Review
A court must consider four factors when determining whether
to issue a preliminary injunction: (i) the plaintiff's
likelihood of success on the merits; (ii) whether the plaintiff
risks suffering irreparable harm if the injunction is not
granted; (ill) whether such injury outweighs the harm that
injunctive relief would cause for the defendant; and (iv) whether
the public interest would be adversely affected by granting or
denying the injunction. See Am. Bd. of Psychiatry & Neurology,
Inc. v. Johnson-Powell, 129 F.3d 1, 3 (1st Cir. 1997). "In the
trademark context, 'irreparable harm may be shown even in the
absence of actual injury to plaintiff's business based on
plaintiff's demonstration of a likelihood of success on the
merits on its claim.'" I.P. Lund Trading ApS v. Kohler Co., 163
F.3d 27, 33 (1st Cir. 1998) (guoting Calamari Fisheries, Inc. v.
Village Catch, Inc., 698 F. Supp. 994, 1013 (D. Mass. 1988)).
The key issue, therefore, is the plaintiffs' likelihood of
success on the merits. See New Comm Wireless Servs. v.
Sprintcom, Inc., 287 F.3d 1, 8 (1st Cir. 2002) .
Discussion
The plaintiffs' complaint asserts claims against the
defendants for (1) trademark infringement, (2) false designation of origin under section 43(a) the Lanham Act, 15 U.S.C. §
1125(a), (3) violation of New Hampshire Revised Statutes
Annotated 358:A, which prohibits unfair or deceptive trade
practices, (4) conversion, and (5) unjust enrichment. In their
memorandum in support of their motion for preliminary injunction,
however, the plaintiffs elected to proceed solely on the basis of
their trademark claim under the Lanham Act. The court's analysis
of the plaintiffs' motion is therefore limited to that ground.
The plaintiffs seek alternative forms of injunctive relief.
They ask the court either to prohibit the defendants from
broadcasting their program in New Hampshire under its current
title, or to reguire them to air the show (and any future
television advertising of it) in New Hampshire only with a
written disclaimer that it is "not affiliated with or sponsored
by the film Brotherhood produced by MJM Productions of
Manchester, New Hampshire." The plaintiffs do not contend that
the name "Brotherhood" has achieved distinctiveness outside of
New Hampshire, or that The Brotherhood of Poland, New Hampshire
will be confused with their film outside of New Hampshire.
The defendants object on a number of grounds. First, they
criticize the plaintiffs for waiting until the eleventh hour to
enjoin the broadcast, despite having known about The Brotherhood
of Poland, New Hampshire since February 2003. Second, they
10 dispute that the plaintiffs have shown a likelihood of success on
their trademark claim, because their mark is neither distinctive
nor is their film likely to be confused with the defendants'
series. Finally, the defendants contend that the balance of
harms tips in their favor, given their investment in promoting
the series to premiere under its current name.4
A. The Plaintiffs' Delay in Seeking Injunctive Relief
In deciding whether to issue an injunction, a court may take
into account the movant's delay in seeking injunctive relief.
See SMA Life Assurance Co. v. Sanchez-Pica, 960 F.2d 274, 277-28
(1st Cir. 1992); 13 James Wm. Moore et al., Moore's Federal
Practice § 65.06[5][b] (2003). The plaintiffs admit to learning
of the existence of The Brotherhood of Poland, New Hampshire in
February 2003, more than six months before they brought this
action to enjoin the program on September 10, 2003. The
defendants imply that the plaintiffs have intentionally tried to
gain an unfair advantage by waiting until just sixteen days
4Ihe defendants also moved to transfer this case to the Central District of California to be consolidated with the litigation pending there, or to stay this action until the California case is resolved. At the hearing on the preliminary injunction, the court ruled that it would take up the merits of the defendants' motion after considering the plaintiffs' application for injunctive relief, and after the plaintiffs had an opportunity to respond to the defendants' motion.
11 before the scheduled premiere of the series to seek an
injunction. The plaintiffs explain that they were initially held
up by their efforts to resolve the dispute without litigation, as
presumably reflected by their lawyers' letters to the defendants
during the late spring of 2003. The plaintiffs attribute their
inaction over the summer to the defendants' tactic of bringing
suit against them in California and then delaying the resolution
of their personal jurisdiction defense. Under these
circumstances, the plaintiffs contend that their motion for a
preliminary injunction was timely, brought shortly after it
became clear that their motion to dismiss the California action
for lack of personal jurisdiction would not be heard until after
the program debuted.
The defendants' objection to the last-minute effort by the
plaintiffs to enjoin the showing of The Brotherhood of Poland,
New Hampshire as scheduled is well-taken. Indeed, the
plaintiffs' proffered justification--that they expected their
motion to dismiss the California action to be decided in advance
of the show's premiere--makes little sense. First, their
position assumes that their motion to dismiss or transfer the
litigation would have been granted.5 Second, the dismissal of
5Naturally, this court expresses no opinion on the merits of the jurisdictional issue raised in the California action.
12 the California case for lack of personal jurisdiction would have
done nothing to resolve the merits of the plaintiffs'
infringement claim and therefore posed no obstacle to the
defendants' proceeding with the broadcast as scheduled. In
short, the pendency of the California action should not have
factored heavily into the plaintiffs' decision to abstain from
seeking to enjoin the premiere of the defendants' program in a
more timely fashion. The court is therefore left to conclude
that the timing of the plaintiffs' reguest for injunctive relief
was primarily the product of tactical, rather than practical,
considerations. Nevertheless, the court does not find the
plaintiffs' delay in pursuing relief in this court, in and of
itself, sufficient grounds to deny the injunction.
B. The Plaintiffs' Likelihood of Success on The Merits
In the First Circuit, a preliminary injunction cannot issue
absent the movant's "clear likelihood of success" on the merits
of its claim. Pve ex rel. NLRB v. Sullivan Bros. Printers, Inc.,
38 F.3d 58, 67 (1st Cir. 1994). The parties are in agreement
that, in order to prevail on their claim under section 4 3 (a) of
the Lanham Act, the plaintiffs must prove both that (1)
"Brotherhood" has acguired a distinctiveness sufficient to
gualify it for trademark protection, and (2) the defendants' use
13 of The Brotherhood of Poland, New Hampshire as a title causes a
likelihood of confusion between the sources of their show and the
plaintiffs' film. See 15 U.S.C. § 1125(a); Chrysler Corp. v.
Silva, 118 F.3d 56, 58 (1st Cir. 1997).
_____ 1. The distinctiveness of the plaintiffs' mark.
The plaintiffs concede that, because Brotherhood is the
title of a single literary work, they can prove distinctiveness
solely on the basis of secondary meaning (as opposed to showing
that the title is arbitrary, fanciful, or suggestive). See Twin
Peaks Prods., Inc. v. Publ'ns Int'l, Ltd., 996 F.2d 1366, 1379 n.
4 (2d Cir. 1993); 2 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition § 10:2 (4th ed. 2003). In order for a
literary title to have secondary meaning, consumers must
associate it with a particular source, but need not know the
identity of the source itself. See 2 McCarthy § 10:10.
"'Proof of secondary meaning entails vigorous evidentiary
reguirements.'" Boston Beer Co. Ltd. P'ship v. Slesar Bros.
Brewing C o ., 9 F.3d 175, 181 (1st Cir. 1993) (guoting Perini
Corp. v. Perini Constr., Inc., 915 F.2d 121, 125 (4th Cir.
1990)). A party may fulfill these reguirements through either
direct or circumstantial evidence. See Yankee Candle Co. v.
Bridgewater Candle Co., 259 F.3d 25 (1st Cir. 2001). Consumer
14 surveys are the only form of direct evidence of a mark's
secondary meaning which courts have generally accepted. See
Boston Beer, 9 F.3d at 182. Indeed, "[c]ustomer survey evidence,
while not reguired, is a valuable method of showing secondary
meaning." I .P . Lund, 163 F.3d at 42.
The plaintiffs have not come forward with proof of any
consumer survey attesting to a public association between the
title Brotherhood and any single source. Instead, they have
submitted affidavits from thirty-two people who claim to be
"familiar with the film ''Brotherhood' which was written by
Jefferson Dutton and produced by Michael MacLeod and MJM" and to
have "associated the movie title 'Brotherhood' with [the
plaintiffs] and not with any other company or person." The court
finds these affidavits wanting in several respects as direct
evidence of secondary meaning.
As an initial matter, the individual statements of a select
group of individuals do not constitute the kind of survey
evidence which courts have traditionally found probative of a
mark's secondary meaning. C f . President & Trs. of Colbv Coll. v.
Colbv Coll.-N.H., 508 F.2d 804, 809 (1st Cir. 1975) (testimony of
"experienced surveyor" who polled "representative cross-section
15 of the population," consisting of 500 people each from Maine, New
Hampshire, and metropolitan Boston, accepted as evidence of
secondary meaning in New England); 2 McCarthy § 15:42 ("To be
effective, a survey must be carefully conducted by an expert
survey director . . . [QJuestions to be asked in the survey must
be carefully phrased so as to elicit honest and unprompted
consumer reaction . . . .
Here, the plaintiffs have provided no explanation whatsoever
as to how the affidavits were procured, including how the
affiants were selected from the consuming public or what
guestions were asked of them. Moreover, in the absence of any
expert testimony to the contrary, the court cannot accept the
views of thirty-two people (five of whom do not even reside in
New Hampshire) as reflecting the secondary meaning of the
plaintiff's mark across the state. Finally, the conclusory
nature of the statements in the affidavits, the similarity of
each affiants' testimony to that of the others, and the fact that
many of the witnesses claim to have spoken with one of the
plaintiffs before swearing out the affidavit casts further doubt
on their evidentiary value. The court finds the affidavits to
constitute unpersuasive evidence of secondary meaning.
16 Although consumer survey evidence is valuable, it has
never been treated as a "sine qua non" of secondary meaning in
the First Circuit. I .P . Lund, 163 F.3d at 42. Secondary meaning
may also be proven through circumstantial evidence. The circuit
has endorsed a number of factors to be considered in assessing
circumstantial proof of a mark's secondary meaning. They
include: (1) the length and manner of the mark's use, (2) the
nature and extent of its advertising and promotion, (3) the
efforts made to promote a conscious connection between the mark
and the product's source, (4) the product's established place in
the market, and (5) proof of the defendant's intentional copying
of the mark. See Yankee Candle, 259 F.3d at 43-44. The list of
factors is not intended to foreclose other means of proving
secondary meaning. See I .P . Lund, 163 F.3d at 41. In addition,
a party need not prove the existence of each factor in order to
prevail on a showing of secondary meaning. See id.
The plaintiffs argue that, because they have proven that the
defendants intentionally copied the title of the film, the burden
shifts to the defendants to prove that Brotherhood lacks
secondary meaning. For this proposition, the plaintiffs rely on
Yankee Candle, 259 F.3d at 38. In that case, however, the First
17 Circuit listed "proof of intentional copying" among the factors
to be considered in evaluating secondary meaning, rather than
assigning it any special weight. Id. at 44. Moreover, the court
expressly found that the plaintiff's evidence of intentional
copying was not probative of secondary meaning, despite evidence
that the defendant's designers were told to make their wares look
more like the plaintiffs'. See id. Accordingly, Yankee Candle
does not appear to adopt the minority view that evidence of
copying triggers a presumption of secondary meaning. See 2
McCarthy § 15:38.
In any event, the plaintiffs' argument depends on a factual
premise wholly unsupported by the evidence. The plaintiffs
invite this court to infer that the defendants intentionally
copied the title Brotherhood from the fact that the defendants
refused to rename The Brotherhood of Poland, New Hampshire as
demanded by the plaintiffs. The court declines to make that
inference. The argument that the defendants acted wrongfully by
refusing to scrap their title on the asserted strength of the
plaintiffs' mark presumes exactly what is at issue in this
litigation. Furthermore, the evidence submitted by the
defendants demonstrates that (1) Kelley had never heard of the
18 plaintiffs or their film before April 2003, long after the pilot
had been registered with the copyright office as The Brotherhood
of Poland, New Hampshire, (2) Fox has no record of having
received anything concerning the plaintiffs' film, and (3) Fox
performed due diligence in August 2003 which failed to reveal the
existence of Brotherhood. The court finds no evidence that the
defendants intentionally copied the plaintiffs' mark.
The plaintiffs also argue that the "length and exclusivity"
of their use of Brotherhood, their efforts to market and promote
the film, and the media attention it has received point in the
direction of the title's secondary meaning. The court disagrees.
First, MacLeod's affidavit establishes that the plaintiffs have
been using the word "Brotherhood" in their film's title since
July 2002 at the earliest. Thus, no more than six months had
elapsed between the plaintiffs' use of the mark and Kelley's
registration of The Brotherhood of Poland, New Hampshire with the
copyright office. In addition, the plaintiffs' use of
"Brotherhood" was in no way exclusive, given the number of pre
existing films, television programs, and other media which also
used the word in their titles. The court finds that the factor
of the length and exclusivity of the plaintiffs' use of their
19 mark does not weigh in favor of a finding of secondary meaning.
The court also finds that the plaintiffs' promotional and
marketing efforts do not suffice to establish secondary meaning.
The plaintiffs argue, in essence, that due to their limited
resources they should face a lower threshold in making out this
factor. Regardless of the merit of this contention as an
eguitable matter, the plaintiffs simply have not provided enough
proof of their endeavors in promoting and marketing their film.
MacLeod himself states that his efforts in this regard were
limited to just over one year's time, between early 2002 and
spring 2003.6 They also appear to have been limited to screening
the film twice (once outside of New Hampshire) and attempting to
interest film and television studios in a largely unspecified
way. Indeed, MacLeod does not describe his efforts with any
particularity, making it impossible to gauge their intensity.
Most significantly, the plaintiffs concede that nobody has
ever paid to see their film, at least in New Hampshire. Although
some courts and commentators have recognized that pre-sales
61he plaintiffs argue that this period should be deemed sufficient because MacLeod gave up on trying to promote their film only after learning of the defendants' production. Again, this argument presumes what is at issue in this litigation, i.e., that the defendants were wrongfully using the word "Brotherhood" in the title of their series.
20 publicity can suffice to create secondary meaning even before a
product has actually been sold, the evidence does not support
such a theory here. C f . 2 McCarthy § 15:57. Based on this
evidence, the court concludes that the plaintiffs' marketing and
promotional efforts have not lent secondary meaning to the title
Brotherhood.
The plaintiffs suffer from a similar evidentiary deficiency
with regard to their argument that Brotherhood has accumulated
secondary meaning through the unsolicited media attention the
film has received. Indeed, while MacLeod lists a number of
stories about the film which have run in the local media, the
plaintiffs have not supplied any of those news articles, or
transcripts of the radio or television interviews. Accordingly,
it is impossible to determine whether any of these stories (save
that which referred to the film as "tentatively titled The Town
of Brotherhood") even referred to the film by its title. In
addition, the plaintiffs have not presented any information, such
as circulation or audience statistics, which would enable the
court to determine whether these stories reached enough consumers
to create secondary meaning throughout the state. The court
finds that the plaintiffs' evidence of "unsolicited media
21 attention" does not establish secondary meaning.
Accordingly, the court finds that the plaintiffs have failed
to carry their burden to show a secondary meaning attributable to
the title Brotherhood. Based on the evidence presented in
connection with the preliminary injunction motion, the court
rules that the likelihood of success on the merits of the
plaintiffs' Lanham Act claim is highly improbable.
_____ 2. Likelihood of consumer confusion
Having found that the plaintiffs' mark was "not entitled to
trademark protection because [it has] not attained secondary
meaning, . . . the court [does] not need to address the guestion
of likelihood of confusion." Boston Beer, 9 F.3d at 183.
Nevertheless, the court also finds that there is little
likelihood of confusion between the plaintiffs' film title and
the name of the defendants' television series, based largely upon
the findings already set forth.
The First Circuit has listed eight factors to be weighed in
considering likelihood of confusion, including: (1) the
similarity of the marks; (2) the similarity of the goods; (3) the
relationship between the parties' channels of trade; (4) the
22 relationship between the parties' advertising; (5) the classes of
prospective purchasers; (6) evidence of actual confusion; (7) the
defendants' intent in adopting their mark; and (8) the strength
of the plaintiffs' mark. See Boston Athletic Ass'n v. Sullivan,
867 F.2d 22, 29 (1st Cir. 1989). Other than the apparent
similarity of the marks, none of these factors appears to weigh
in the plaintiffs' favor. A nationally broadcast television
program and a film which has been shown only twice cannot be said
to be similar goods, share channels of trade, or target the same
classes of purchasers. The defendants have advertised their film
through a number of national media channels, while the plaintiffs
provide no evidence of how they have advertised their film (if at
all). Finally, for the reasons set forth in the court's analysis
of secondary meaning, it is clear that there is virtually no
probative evidence of actual confusion or actual copying, and
that the plaintiffs' mark is weak. Accordingly, the court finds
that the plaintiffs have failed to shoulder their burden of
showing a likelihood of confusion.
23 Conclusion
Based on the foregoing, the plaintiffs' motion for
preliminary injunction (document no. 3) is DENIED for failure to
show a likelihood of success on the merits of their Lanham Act
claim.
SO ORDERED.
Joseph A. DiClerico, Jr. United States District Judge
September 24, 2003
cc: Irvin D. Gordon, Esguire Mark Schonfeld, Esguire Cameron G. Shilling, Esguire Adam J. Thurston, Esguire Rodney F. Page, Esguire