178 F. Supp. 762 | S.D.N.Y. | 1959
Plaintiif moves to enjoin the defendant from advertising and broadcasting any television program entitled “Law Of The Plainsman” or one under any other title containing a reference to “The Plainsman” and from broadcasting any television show featuring or presenting any character therein known or designated as “The Plainsman”. Defendant’s program has been broadcast over its national network stations since October 1, 1959 and is scheduled to be presented each Thursday evening. The viewing potential is 41,000,000 television sets or an estimated audience of 140,000,000 persons.
Jurisdiction is asserted upon diversity of citizenship and the Trade Mark Act of 1946.
Plaintiff’s use of the name “The Plainsman” originated in a sponsored television program broadcast by a local station, KFDA, at Amarillo, Texas. The range of the station extended to an area known as the High Plains, part of the Great Plains, which includes the Panhandle of Texas, parts of New Mexico, Oklahoma, Kansas and Colorado. The viewing potential of the television station is 170,000 television sets or an estimated 500,000 persons.
The sponsor was Plains Creamery, a distributor of milk products in the High Plains area. The name of the sponsor and the locale, suggested the adoption by plaintiff of the name “The Plainsman”. In his own words:
“Our sponsor was ‘Plains Creamery’ — This being the High Plains, it tied in that I should be called ‘The Plainsman’ for ‘Plains Creamery’.”
Plaintiff was depicted as a cowboy who narrated cowboy adventures. The promotional appeal for the sponsor’s milk products was directed principally to children in the High Plains area. The show was presented five days a week, Monday through Friday, from May 1954 to April 1958, when it was discontinued because the sponsor was merged with a national dairy company. The show was owned by the television station by which plaintiff was employed as production manager. With the consent of the station owner, the plaintiff, in April 1957, registered the title, “The Plainsman” in the United States Patent Office, as a service mark for a television show of the western adventure type.
In addition to his regular appearances on the weekly program, plaintiff, in his character as “The Plainsman”, attended rodeo shows, appeared occasionally on other television programs, made public appearances throughout the High Plains area for various charities, chambers of commerce and similar organizations. He was referred to as “The Plainsman” in all media of advertising. He asserts that some 12,000 children who listened to his program joined, under his inspiration, a club known as “The Plains Riders”, sponsored by Plains Creamery as part of
Although the sponsored program, on which plaintiff originally appeared at Amarillo, Texas, has been discontinued for a year and one-half, he asserts that he has not abandoned the use of the title or character; that, on the contrary, he anticipates it will be resumed; that there are available multiple sponsors but he is holding out for a single sponsor.
When the defendant announced, shortly before its initial showing, that it planned to broadcast a television program entitled “The Law Of The Plainsman”,
The chief character in the defendant’s show is a Harvard educated Apache Indian who returns to the west to act as a United States Deputy Marshal. The film on the show does not describe or refer to the character so portrayed as “The-Plainsman”. At the start and finish of the show the title, “The Law Of The-Plainsman”, appears across the screen and other than this there is no reference to any “Plainsman”.
Thus, the characters portrayed are entirely different — indeed, no claim is made that the principal character in the defendant’s shows, simulates or imitates-the character role of the plaintiff. To the contrary, the essence of the charge is-that because the defendant’s character is-different — in the plaintiff’s own words “a Harvard educated Apache with a page-boy haircut”- — whereas he, the plaintiff is “a real cowboy”, the defendant’s title, “The Law Of The Plainsman”, burdens the plaintiff with an undesirable association, tends to destroy the valuable good will which he claims in “The Plainsman”, and hinders him from obtaining new sponsorship for his program. AH this is based on the assertion that the defendant’s title causes confusion with plaintiff’s title and that the public will be misled into believing that it is the plaintiff’s show, “The Plainsman”, centering about his character, that is being presented.
Since there is no claim that the defendant's character imitates the plaintiff’s character, the “Mutt and Jeff”, “Buster Brown”,
In opposition, the defendant contends that “The Plainsman” is a general descriptive term — that it is neither arbitrary nor fanciful, but merely descriptive of “a man who lives in the plains” and to support its position it cites dictionary definitions and gives instances of many and varied uses of the title. However, this is not dispositive of the matter since even a descriptive term may achieve a secondary meaning in the public mind.
To succeed on this motion, the plaintiff must establish (1) a reasonable probability that he will succeed upon the trial on the basic issues of secondary meaning and likelihood of confusion, and, even if this does appear, (2) that irreparable injury will result if immediate injunctive relief is not granted.
I am not persuaded that the plaintiff has sustained his burden. His right to the claimed exclusive use of the title, “The Plainsman”, based upon a secondary significance attaching in his favor, is, upon this record, not so clear that it can be said he will prevail upon the trial. No substantial evidence has been submitted to support the charge of likely confusion. The circumstance that, contrary to the advertising by defendant of its full title, “The Law Of The Plainsman”, several publications abbreviated the title to “The Plainsman”, as a matter of journalistic shorthand, does not establish, at least for the purposes of this motion, that the viewing public has been, or will be, misled into believing that it is the plaintiff’s program and the plaintiff’s character that is to be presented. No instance has been cited that any viewer of television, familiar with plaintiff’s show, expected to see the plaintiff’s program when he first saw the defendant’s notice or its title across the screen. And, if one did view the defendant’s show, there could be no confusion or deception since it depicts adventures in law enforcement by a full-blooded Apache Deputy United States Marshal, whereas the theme of plaintiff’s shows was a narration to youngsters of cowboy adventures. The character and subject matters are entirely different.
Neither has plaintiff established that irreparable injury will result if immediate restraint is not granted. His show has not been presented for eighteen months. While he contends he has not abandoned it, no sponsor has appeared, although it is claimed some are interested. The defendant urges that even if
The registration of the title, the validity of which is challenged by the defendant, affords no ground for relief since in any event the same basic issues must be met by the plaintiff. The registration conferred no greater rights upon the plaintiff than he enjoyed at common law.
The motion is denied.
The foregoing is without prejudice to an application by the plaintiff, if so advised, to apply for a preference in accordance with the rules of this Court.
Settle order on notice.
. 60 Stat. 427 (1946), 15 U.S.O. §§ 1051-1127.
. Originally the proposed show was announced as “Tales Of The Plainsman” but prior to the initial broadcast the title was changed to “The Law Of The Plainsman”.
. Fisher v. Star Co., 231 N.Y. 414, 132 N.E. 133, 19 A.L.R. 937, certiorari denied, 1921, 257 U.S. 654, 42 S.Ct. 94, 66 L.Ed. 419; New York Herald Co. v. Star Co., D.C.S.D.N.Y., 146 F. 204, affirmed without opinion, 2 Cir., 1906, 146 F. 1023.
. Norwich Pharmacal Co. v. Sterling Drug, Inc., 2 Cir., 1959, 271 F.2d 569.
. Albany Packing Co. v. Crispo, 1929, 227 App.Div. 591, 237 N.Y.S. 614, affirmed without opinion, 1930, 253 N.Y. 607, 171 N.E. 803; Maintenance Co. v. Colletti, Sup.Ct., N.Y.Co.1946, 62 N.Y.S.2d 329.
. Speedry Products, Inc. v. Dri Mark Products, Inc., 2 Cir., 1959, 271 F.2d 646.
. See Golenpaul v. Rosett, 1940, 174 Misc. 114, 18 N.Y.S.2d 889.
. Willson v. Graphol Products Co., 1951, 188 F.2d 498, 38 CCPA 1030.