Mrs. U.S. Nat'l Pageant, Inc. v. Williams

353 F. Supp. 3d 213
CourtDistrict Court, W.D. New York
DecidedFebruary 14, 2019
Docket18-CV-6587L
StatusPublished
Cited by4 cases

This text of 353 F. Supp. 3d 213 (Mrs. U.S. Nat'l Pageant, Inc. v. Williams) is published on Counsel Stack Legal Research, covering District Court, W.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Mrs. U.S. Nat'l Pageant, Inc. v. Williams, 353 F. Supp. 3d 213 (W.D.N.Y. 2019).

Opinion

DAVID G. LARIMER, United States District Judge

INTRODUCTION

Plaintiff Mrs. United States National Pageant, Inc. ("plaintiff"), a producer of beauty pageants, brings this action against defendants Stephanie L. Williams ("Williams"), a former licensee of plaintiff, and two businesses operated by Williams, Crown Garland, LLC ("Crown Garland") (together with Williams, and for purposes of the current motion, "defendants") and Cosmos International Pageants, Inc. ("Cosmos"), alleging claims for, inter alia, trademark infringement, misappropriation of trademarks, breach of contract, and tortious interference with business relations. (Dkt. # 1).

Now before the Court is a motion by plaintiff for preliminary injunctive relief. (Dkt. # 7). For the reasons that follow, that motion is denied.

BACKGROUND

I. Facts

Familiarity with the facts underlying this matter, summarized as follows, is presumed. Plaintiff is an organizer and producer of beauty pageants held throughout the country. (Dkt. # 7-2 at ¶ 3). In furtherance of its business, plaintiff owns nine Federally Registered trademarks, including Mrs. United States National Pageant, Mrs. United States, Little Miss United States, Miss Pre-Teen United States, Miss Junior Teen United States, Miss Teen United States, Miss United States, Ms. United States, and Ms. Woman United States (collectively, "plaintiff's trademarks"). (Id. at ¶¶ 4-5). Each of plaintiff's trademarks, with the exception of "Mrs. United States National Pageant," represents a different beauty pageant division in which contestants can compete annually at the local, state, and national levels. (Id. at ¶ 6).

Williams worked with plaintiff in various capacities from 2010 until July 2018. (Dkt. # 18-9 at ¶¶ 2, 4, 39). Of particular significance here is her role as national director for several of plaintiff's beauty pageant divisions. On November 16, 2016, plaintiff, as licensor, and through its president and executive director, Isabella Ilacqua, entered into an agreement with Williams, individually and on behalf of defendant Crown Garland, LLC, (the "2016 Agreement"), wherein plaintiff granted Williams an "exclusive, revocable, license" for the right to promote, finance, and produce national pageants for the divisions corresponding to the following seven of plaintiff's trademarks: Little Miss United States; Miss Pre-Teen United States; Miss Junior Teen United States; Miss Teen United States; Miss United States; Ms. United States; and Ms. Woman United States (collectively, "Miss United States Division"). (Dkt. # 7-11). The 2016 Agreement was for a term of two years. (Id. at 1-2).

On November 7, 2017, plaintiff entered into a similar licensing agreement with defendants, (the "2017 Agreement" and together with the 2016 Agreement, the "Licensing *216Agreements"), which granted defendants an "exclusive, revocable, license" for the right to promote, finance, and produce plaintiff's 2018 Mrs. United States National Pageant (the "Mrs. United States Division"). (Dkt. # 7-12). The terms of the 2017 Agreement expired on July 8, 2018, that is, "the day following the 2017/2018 National Pageant." (Id. at 1). Together, the Licensing Agreements made Williams the national director for all divisions of plaintiff's beauty pageants. (Dkt. # 18-9 at ¶ 6).

Among other things, the Licensing Agreements required the defendants, as licensee, to enter into separate contracts with individuals who would be responsible for conducting the state-level pageants ("State Directors"), with whom defendants were "solely responsible for retaining, managing, and communicating." (Dkt. ## 7-11 at 2; 7-12 at 2). The resulting state-level titleholders would then compete in the national-level competitions managed by defendants as licensee. (Id. ). Williams alleges that the "production of the pageants was done solely at Crown Garland's expense, time and resources. [Plaintiff] did not contribute resources or materials to help with the production of the pageants throughout the duration of the [L]icensing [A]greements. Rather, [plaintiff] would simply collect monies owed under the terms of the [L]icensing [A]greements while [Williams and her] company ... did all of the work and took all of the risk." (Dkt. # 18-9 at ¶ 7).

The relationship between the parties apparently began to erode leading up to the 2018 National Pageant. On May 24, 2018, Williams notified plaintiff of her intent to terminate the 2016 Agreement at the same time the 2017 Agreement was set to expire-July 8, 2018. (Dkt. # 7-13). Williams cited the "considerable[ ]" change in "working conditions," and "irreconcilable" differences between herself and Anthony Ilacqua ("Ilacqua"), plaintiff's director of operations and the highest-ranking executive, as the reasons for the termination.1 (Id. ). Then, on June 28, 2018, in anticipation of the 2018 National Pageant, Williams's attorneys sent a cease and desist letter to Ilacqua, stating that "[b]ased upon the state of the current relationship between you and Ms. Williams, we respectfully request that you do not attend or attempt to interfere with any of the private pageant events planned and administered by [Crown Garland] for the time period of July 3, 2018 through July 7, 2018[.]" (Dkt. # 7-14 at 1).

Ultimately, Williams stopped working for plaintiff in July 2018, after the 2018 National Pageant. The circumstances surrounding her departure from plaintiff, including what she allegedly said to pageant contestants and State Directors during and after the 2018 National Pageant about their legal obligations to plaintiff or defendants, and who owns specific intellectual property, materials, and information created during the terms of the Licensing Agreements, are the principal matters in dispute.

II. Plaintiff's Motion for a Preliminary Injunction

As this Court has previously observed, the beauty pageant industry has long been a "crowded field," in which multiple entities, holding pageants that are similar in structure and appearance, often compete for the use and protection of similar trademarks.

*217Mrs. U.S. Nat'l Pageant, Inc. v. Miss U.S.A. Org., LLC , 875 F.Supp.2d 211, 227 (W.D.N.Y. 2012) (citing Miss World (UK) Ltd. v. Mrs. America Pageants, Inc. , 856 F.2d 1445, 1449 (9th Cir. 1988) ).

Plaintiff claims that defendants have misappropriated plaintiff's trademarks and breached the Licensing Agreements by converting and/or retaining certain intellectual property and other materials generated pursuant to the Licensing Agreements, and have tortiously interfered with plaintiff's business relations by making false representations to plaintiff's current and/or former State Directors and titleholders. Accordingly, plaintiff's current motion (Dkt. # 7), seeks an order enjoining defendants from making further use of the disputed materials, and ordering defendants to produce certain intellectual property, materials and information to plaintiff.

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353 F. Supp. 3d 213, Counsel Stack Legal Research, https://law.counselstack.com/opinion/mrs-us-natl-pageant-inc-v-williams-nywd-2019.