MEMORANDUM & ORDER
Re: Plaintiffs Motion for Preliminary Injunction
On September 29, 2006, plaintiff Nova Wines, Inc. (“Nova” or “plaintiff’) brought this action against defendants Adler Fels Winery LLC (“Adler Fels”), Saal Brown, Inc. dba Pacific Licensing (“Pacific Licensing”), Gary Saal (“Saal”), and Tom Kelly Studios, Inc. (“TKS”) (collectively “defendants”) asserting claims for trademark infringement, trade dress infringement, unfair competition and passing off. Now before the court is plaintiffs motion for a preliminary injunction. Having considered the parties’ arguments and for the reasons stated below, the court enters the following memorandum and order.
BACKGROUND
Plaintiff Nova Wines, a St. Helena, California winery, does business as Marilyn Wines and sells wines bearing photographs of Marilyn Monroe. Plaintiff has produced wine under the Marilyn Merlot brand name since 1987, the Marilyn Cabernet brand name since 1993, the Norma Jeane brand name since 1998 and the Velvet Collection brand name since 2004. Holder Dec. ¶ 6, Exhs. B-E. The Velvet Collection wine is sold either in 1.5-liter single bottles, or in a three-bottle “premium” set which includes 3-liter, 1.5-liter and 750-milliliter sizes. Richardson Dec. ¶ 8, Exh. 24. Since 1989, plaintiff has held an exclusive license to use, on wine, the registered trademark “Marilyn Monroe,” as well as common law trademarks for Monroe’s name, image and likeness from the Monroe estate. Howard Dec. ¶ 1, Exh. A; Stras-berg Dec. ¶ 2. Plaintiff has been the sole winery using photographs of Marilyn Monroe on wine for nearly twenty years. Holder Dec. ¶ 3.
Defendant TKS holds copyrights for a series of nude photographs taken of Marilyn Monroe by Tom Kelley, Sr., in 1949. Saal Dec. ¶ 9, Exh. 6. While Marilyn Monroe was still alive, she signed a model release consenting to use of her “name, portraits, and pictures and reproductions thereof’ of the photographs taken by Kelley. Id. at ¶ 18, Exh. 12. Defendant Saal Brown, Inc., doing business as Pacific Licensing, is the licensing agent for TKS. Saal Dec. ¶ 2. In 1999 or 2000, TKS began using the term “Red Velvet Collection” as a trademark for the collection of Kelley photographs. Id. at ¶ 4; Richardson Dec. ¶ 4, Exh. 21. In August 2000, TKS applied to register the term “Red Velvet Collection” as a trademark. Id. at ¶¶ 5-6, Exh. 22. TKS ultimately abandoned its registration application. Id. In September 2003, Pacific filed a fictitious business name statement with the Sonoma County Clerk for the term “Red Velvet Collection” for use in licensing and promoting the Kelley photographs. Saal Dec. ¶ 5, Exh. 1.
In 1999 Pacific first contacted plaintiff to propose licensing the Red Velvet Collec
In 2004 TKS and plaintiff entered a license agreement for use of Red Velvet Collection photos. Holder Dec. ¶¶ 7-8; Saal Dec. ¶ 9, Exh. 6. In May and June of 2005, relations between the parties began to deteriorate, and TKS notified plaintiff that it would “establish[] a new licensee for the remainder of the Red Velvet Collection Wine images for the successive years” covered in parties’ 2004 agreement. Saal Dec. ¶ 11, Exh. 9. At that time, plaintiff received a license from Playboy Enterprises, Inc., for another photograph from the Red Velvet Collection series, which it used for its 2005 and 2006 Velvet Collection releases. Holder Dec. ¶ 8; see also Saal Dec. ¶ 10. In September 2005, TKS terminated its license agreement with plaintiff. Holder Dec. ¶ 10, Exh. 8. On September 21, 2005 plaintiff informed TKS’s counsel that pursuant to a district court judgment against TKS, it would consider the Red Velvet Collection image licensed by TKS part of the public domain, and it would seek return of royalties paid by plaintiff to TKS for use of the image. Richardson Dec. ¶ 8, Exh. 27. Nova and TKS are currently in arbitration regarding the revocation of the license agreement.
After TKS terminated its agreement with plaintiff, it began negotiations with other wineries, including Sonoma Wine Company, to license the Red Velvet Collection images for use on wine labels. Saal Dec. ¶ 13. On February 23, 2006 plaintiffs counsel informed Sonoma Wine Company that it was “the exclusive licensee” of rights in Marilyn Monroe’s image and likeness for wine, that Sonoma’s release of wine with Marilyn Monroe’s image on the label would constitute “infringement” and that plaintiff would take “all appropriate action” in response. Id. at ¶ 14, Exh. 10. Sonoma Wine Company thereafter withdrew from negotiations with TKS. Id.
In June or July 2006, plaintiff learned that defendant Adler Fels was marketing a wine bearing a photograph from the Velvet Collection. Redding Dec. ¶ 3; Lindsay Dec. ¶ 5. Plaintiffs broker, the American Beverage Group, informed Adler Fels that plaintiff was the exclusive licensee of the Monroe estate. Redding Dec. ¶ 3; Lindsay Dec. ¶ 5. On July 5, 2006 counsel for plaintiff Wines informed Adler Fels that “no one else” besides plaintiff had “the right to produce wines [bearing Marilyn Monroe’s] likeness,” and that plaintiff would “aggressively protect” its rights. Lindsay Dec. ¶ 6, Exh. 13. Counsel representing Adler Fels, TKS and Pacific Licensing responded on July 7, 2006 that his clients “decline to succumb to your threats.” Id. ¶ 7, Exh. 14. Defendants subsequently informed plaintiff that they would not release a 1.5-liter bottle in the fall of 2006. Id. at ¶ 8. However, defendants’ counsel also advised plaintiff that defendants might release a 750-milliliter bottle using Red Velvet Collection labels in Fall 2006. Id. at ¶ 8. This was the last communication between parties before plaintiff filed its complaint on September 29, 2006.
In late August 2006 Adler Fels began marketing 750-milliliter bottles of its “Red Velvet Collection ... ultra-fine wines.”
In September 2006 plaintiff received an announcement regarding Adler Fels’ Red Velvet Collection wine, urging consumers to place orders by September 15. Holder Dec. ¶ 15, Exhs. J-K. The announcement attached a “mock-up” of the wine bottle for Adler’s Red Velvet Collection line. Id. at Exh. K. The mock-up showed a photograph from TKS’s Red Velvet Collection series on a bottle of red wine, though not a photo that plaintiff had used on any of its wines. Id.
Plaintiff filed its complaint for trademark infringement, trade dress infringement, unfair competition and passing off on September 29, 2006. Plaintiff served its complaint on defendants on October 5, 2006. That same day, plaintiff filed its ex parte application for a temporary restraining order and motion for preliminary injunction. This court granted a temporary restraining order on October 10, 2006, pending briefing and determination of plaintiffs request for preliminary injunction. On October 26, the court heard arguments regarding plaintiffs request for preliminary injunction.
LEGAL STANDARD
“A preliminary injunction is a provisional remedy, the purpose of which is to preserve status quo and to prevent irreparable loss of rights prior to final disposition of the litigation.”
Napa Valley Publ’g Co. v. City of Calistoga,
As in any other civil proceeding, the likelihood of success on the merits and the balance of hardships are the critical considerations in determining whether a preliminary injunction should issue in a trademark infringement action.
See, e.g., Dr. Seuss Enters., L.P. v. Penguin
Books
DISCUSSION
Plaintiff seeks protection for the following trademarks or trade dresses for use on wine: the registered trademark “Marilyn Monroe,” the common law trademark “Marilyn,” the common law trademarks consisting of the images and likenesses of Marilyn Monroe, 1 the common law trademark “Velvet Collection,” and the trade dress comprised of “high quality, distinctive photographs of Marilyn Monroe in various poses taken at different times during her career that show her, [sic] beauty, glamour and sex appeal” (“the Marilyn Wines trade dress”). With the exception of “Velvet Collection” and the Marilyn Wines trade dress, plaintiff asserts that these marks are each owned by the Marilyn Monroe estate, which has granted plaintiff an exclusive license to use the marks in connection with wine. Significantly, plaintiff seeks protection for these marks and dresses only as they are used on wine bottles.
I. Likelihood of Success on the Merits
A. The “Marilyn Monroe” and “Marilyn” Marks
As a preliminary matter, defendants assert that plaintiff has no standing to bring infringement claims based on trademarks owned by the Marilyn Monroe estate, as such claims can only be brought by the owner or assignee of the marks. Defendants’ argument in this regard is limited to claims under Section 32 of the Lanham Act (15 U.S.C. section 1114).
2
The issue is whether plaintiffs status as a licensee of the federally registered trademark “Marilyn Monroe” belonging to the Marilyn Monroe estate confers standing
Plaintiff also asserts claims based on the common law trademark “Marilyn.” The common first name “Marilyn,” standing alone, is likely not a protectable trademark.
Quiksilver, Inc. v. Kymsta Corp.,
B. The ‘Velvet Collection” Mark
Plaintiff claims a common law trademark interest in the term “Velvet Collection” as it applies to wine. Plaintiff asserts that it has been using this term on its Marilyn Monroe wines since 2004. Defendants assert that this term is derived from the mark “Red Velvet Collection,” owned by TKS, and that plaintiffs right to use the term is based solely on the licensing agreement that TKS and plaintiff entered into in May 2004. This licensing agreement is currently the subject of an arbitration pending elsewhere, and the court is hesitant to reach any conclusions that may influence, conflict with, or otherwise interfere with those proceedings. For the purposes of this preliminary injunction motion, the court therefore declines to reach the issue of whether plaintiff has a valid interest in the “Velvet Collection” mark.
In sum, plaintiff lacks standing to bring claims based on the “Marilyn Monroe” trademark. Regarding the “Marilyn”
C. The Marilyn Wines Trade Dress
Trade dress involves “the total image of a product and may include features such as size, shape, color or color combination, texture, graphics, or even particular sales techniques.”
Mattel, Inc. v. Walking Mountain Prods.,
1. Distinctiveness
In assessing distinctiveness, courts employ a five-part continuum of increasing inherent distinctiveness. A trademark or trade dress may be (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful.
Abercrombie & Fitch Co. v. Hunting World, Inc.,
While not explicitly tied to plaintiffs distinctiveness argument, defendants’ arguments regarding the characterization of plaintiffs purported trade dress as merely an “idea or concept” are best addressed in this context. Defendants assert that placing images of Marilyn Monroe on wine bottles cannot be protected because it is “merely an idea or concept of putting photographs of Marilyn Monroe on a wine label.” Defendants point to the common practice of attaching images of Marilyn Monroe to a wide variety of products as evidence that such a practice cannot be protected as trade dress.
Defendants’ argument in this regard is unconvincing. The case upon which defendants rely,
Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc.,
A related argument raised by defendants is the assertion that the mere image or likeness of a famous individual is not subject to protection. Because plaintiff does not have a trademark in any specific image of Marilyn Monroe, Adler Fels’ use of the TKS image on its wine bottle will infringe plaintiffs trade dress only if this trade dress can be construed to consist of the use of any image of Marilyn Monroe on wine.
Other courts have addressed the use of a famous likeness in trademark and trade dress. In
Pirone v. MacMillan, Inc.,
Similarly, in
Estate of Presley v. Russen,
Finally, in
ETW Corp. v. Jireh Publ’g, Inc.,
[ijmages and likenesses of Woods are not protectable as a trademark because they do not perform the trademark function of designation. They do not distinguish and identify the source of goods. They cannot function as a trademark because there are undoubtedly thousands of images and likenesses of Woods taken by countless photographers, and drawn, sketched, or painted by numerous artists, which have been published in many forms of media, and sold and distributed throughout the world. No reasonable person could believe that merely because these photographs or paintings contain Woods’s likeness or image, they all originated with Woods.
Id. at 922. The court further announced the “general rule” that “a person’s image or likeness cannot function as a trademark.” Id.
Each of these cases is legally and factually distinguishable from the circumstances here. In each case, the plaintiff was attempting to establish an individual’s likeness or image as a trademark, essentially attempting to secure control over all use of the person’s likeness whatsoever. The nature of the mark to be protected and use to be enjoined were both very broad — the plaintiffs sought protection for all likenesses of a particular person, and sought to enjoin the use of those likenesses in all circumstances. The context in which plaintiff has used the Marilyn Monroe image, combined with the fact that plaintiffs asserted rights derive from trade dress rather than trademark, manifestly distinguishes plaintiffs case from these trademark cases. While trademarks are rights in gross regarding a particular image, trade dress protects only the general appearance of a particular product or service. Put another way, the use at issue in this case is not simply the use of the Marilyn Monroe image, it is the use of the Marilyn Monroe image
on wine bottles.
Plaintiffs unique, long-standing practice of placing various images of Marilyn Monroe on its wines has created a recognizable trade dress specifically limited to the sale of wine. Accordingly, the fact that the trade dress includes a component that is not independently protectable as a trademark does not defeat the validity of the trade dress.
See Jeffrey Milstein,
Because the use of Marilyn Monroe images on wine labels is a valid trade dress and there is no natural connection between Marilyn Monroe and wine, the Marilyn Wines trade dress is inherently distinctive.
2. Functionality
Defendants claim that the Marilyn Monroe trade dress is aesthetically functional. Because defendants misstate the applicable standard in the Ninth Circuit, this argument warrants little discussion. The Ninth Circuit recently discussed aesthetic functionality at length in
Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc.,
3. Secondary Meaning
Although secondary meaning is not required to protect an inherently distinctive trade dress, a brief discussion of secondary meaning is appropriate given the factors the court must consider in a preliminary injunction inquiry. Trade dress acquires secondary meaning “when the purchasing public associates the dress with a particular source.”
Fuddruckers, Inc. v. Doc’s B.R. Others, Inc.,
Plaintiff asserts that its use of the Marilyn Monroe trade dress has acquired secondary meaning because plaintiff has been using Marilyn Monroe images on its wine bottles for nearly twenty years, and invested substantial amounts in marketing based on the Marilyn Monroe branding. While plaintiff does not submit any consumer data to show actual consumer association between Marilyn Monroe wine labels and Nova wines, the fact that plaintiff has been using Marilyn Monroe prominently on its labels and promotional materials for a substantial period of time&emdash;and, indeed, appears to be the only winery to make such use of the Marilyn Monroe image during this time&emdash;suggests a strong connection between Marilyn Monroe wine labels and Nova wines.
In response, defendants assert that the photographs of Marilyn Monroe are “part of the product itself’ rather than a source identifier, relying on
Rock & Roll Hall of Fame & Museum, Inc. v. Gentile Productions,
[W]hen we view the photograph in Gentile’s poster, we do not readily recognize the design of the Museum’s building as an indicator of source or sponsorship. What we see, rather, is a photograph of an accessible, well-known, public landmark. Stated somewhat differently, in Gentile’s poster, the Museum’s building strikes us not as a separate and distinct mark on the good, but, rather, as the good itself.
Id. at 754 (emphasis in original). Here, Marilyn Monroe is not the good itself. The good is the wine inside the bottle, and the Marilyn Monroe image is a mark on the good indicating its source.
Accordingly, the court finds that plaintiff is likely to prevail on the issue of
D. Likelihood of Confusion
To determine whether plaintiff is entitled to injunctive relief regarding its trade dress claim, the central inquiry is whether Adler Fels’ use of the asserted dress is likely to cause consumer confusion.
See Brookfield Commc’ns,
1. Similarity of the Marks
The first
Sleekcraft
factor, the similarity of the parties’ marks, is “the most crucial factor in determining the likelihood of confusion.”
Newsguy, Inc. v. Yomtobian,
No. C 04-0811 CRB,
Here, Adler Fels’ Red Velvet Collection bottle is virtually identical to plaintiffs 2002 and 2004 Velvet Collection bottles.
5
Holder Dec., Exhs. E
&
K. The
2.Strength of Plaintiff's Mark
The second
Sleekcraft
factor is the strength of plaintiffs Marilyn Wines trade dress. The strength of protection afforded to a trade dress is proportionate to the likelihood that the public will remember the mark and associate it with the source of the trademarked goods.
GoTo. com,
3. Relatedness or Proximity of the Goods
The third
Sleekcraft
factor to be considered is the relatedness or proximity of the parties’ goods. This factor reflects the common-sense intuition that the danger of consumer confusion is heightened where goods are related or complimentary.
See E. & J. Gallo,
4. Marketing Channels Used
The fourth
Sleekcraft
factor requires the court to examine the marketing channels that each of the parties uses to sell and advertise its goods or services. “Convergent marketing channels increase the likelihood of confusion.”
Official Airline Guides,
The consideration of this factor is necessarily conjectural, as Adler Fels has not begun selling its Red Velvet Collection wine. The court therefore affords this
5. Degree of Care Likely to Be Exercised by the Purchaser
The next factor to be considered is the degree of care that a consumer is likely to exercise in purchasing the parties’ products. The court views the parties’ products from the standpoint of “typical buyer exercising ordinary caution.”
Sleekcraft,
Plaintiff asserts that even careful consumers are likely to view Adler Fels’ Red Velvet Collection as associated with, or a brand extension of, plaintiffs existing line of products. Defendants claim that there is no likelihood of confusion because the Marilyn Monroe images appear on the “back” labels of the respective wine bottles, while the “front” labels contain source-identifying information required by federal law. Defendants cite 27 C.F.R. section 4.35 in support of this position. According to defendants, the specificity of the information required by the C.F.R. makes confusion “virtually impossible.”
This argument is nothing short of absurd. To begin with, although the C.F.R. lists several requirements regarding the information to be included on wine packaging, the words “front” and “back” appear nowhere in the section cited by defendants. Rather, the section provides that the required information appear on
“A
label on each container of American wine.” 27 C.F.R. § 4.35(a) (emphasis added). More importantly, the suggestion that Nova or Adler Fels would go through the trouble of licensing and placing a visually compelling image on their wine bottles just so they could appear on the “back” of the bottle is outrageous. Consumers purchasing Marilyn Monroe wines are drawn to the image of Marilyn Monroe, not the detailed textual source information on the opposite side of the bottle. Adler Fels’ own promotional announcement regarding its Red Velvet Collection wine contained a photograph not of the purported “front” of its wine bottle, but of the portion of the label consisting entirely of the Marilyn Monroe image. Holder Dec. ¶ 15, Exhs. J-K. As a general matter, furthermore, no wine retailer that this court is aware of, no matter how large or small, shelves its wine bottles with the artwork facing the wall. This is precisely because consumers, in selecting wine, are much more concerned with the distinctive design of the wine label than with the textual information regarding geographic origin, the dangers of
Accordingly, the court finds that plaintiff is likely to show that the ordinary degree of care exercised by typical wine purchasers will not lead these purchasers to verify the source of the wine by reading the reverse side of the Marilyn Monroe label. This factor therefore favors plaintiff.
6.Defendant’s Intent in Selecting the Mark
The next
Sleekcraft
factor directs the court to consider defendant’s intent in selecting the Marilyn Wines trade dress. Because courts assume that a defendant who intentionally attempts to confuse consumers will in fact succeed in doing so, evidence of such an intent is probative of likelihood of confusion.
Playboy Enters., Inc. v. Netscape Commc’ns Corp.,
The communications between the parties in summer 2006 are instructive in this regard. When plaintiff first learned that Adler Fels was marketing a wine bearing a photograph from the Red Velvet Collection, plaintiffs broker contacted Adler Fels and informed them that plaintiff was the exclusive licensee of the Monroe estate. Reading Dec. ¶ 3; Lindsay Dec. ¶ 5. Shortly thereafter, counsel for Nova Wines informed Adler that “no one else” besides plaintiff had “the right to produce wines [bearing Marilyn Monroe’s] likeness,” and that plaintiff would “aggressively protect” its rights. Lindsay Dec. ¶ 6, Exh. 13. Counsel representing Adler, TKS and Pacific responded the following day, expressing skepticism that plaintiff had exclusive rights to use Marilyn Monroe’s name and likeness for all wines, and stating that Adler Fels would not “succumb to [Nova’s] threats.” Id. ¶ 7, Exh. 14. A review of this correspondence reveals that the discussion centered around the contractual rights of each party to use the Marilyn Monroe images, rather than any specific mention of trademark, trade dress, or consumer confusion. Plaintiffs make no showing that defendants’ intention in using the images was to capitalize on plaintiffs established trade dress or otherwise create consumer confusion. This factor therefore favors defendants.
7. Evidence of Actual Confusion and Likelihood of Expansion
Plaintiff claims that the final two factors — evidence of actual confusion and likelihood of expansion into competing product lines- — bear little weight in this case, and the court agrees. Because Adler Fels has not yet begun to sell its Red Velvet Collection wines, actual consumer confusion is necessarily limited, if it exists at all. Furthermore, the expansion factor is irrelevant because Nova and Adler Fels are already direct competitors.
8. Weighing the Sleekcraft Factors
In summary, the court finds the following
Sleekcraft
factors weigh in favor
of
plaintiff: the similarity of the trade dresses, the strength of the Marilyn Wines trade dress, the relatedness of the parties’ goods, and the degree of care likely to be
This does not end the inquiry as to likelihood of success on the merits, however, as defendants have raised a number of specific defenses that remain to be considered. Essentially, defendants claim on several grounds that they have a superior right to use the Red Velvet Collection images on wine labels, and this right cannot be defeated by trade dress protection.
E. TKS’s Claims to Superior Rights in the Marilyn Monroe Image
Defendants assert that TKS owns copyrights in the Red Velvet Collection images, and plaintiffs trade dress interests cannot prevent TKS from licensing its copyrighted works to Adler Fels for the use on wine labels. This case therefore presents a conflict between two asserted intellectual property rights: Nova’s trade dress and TKS’s copyright. The issue is whether plaintiffs trade dress rights can prevent TKS from exploiting its copyright by licensing images for use on wine labels. While the parties cite to no cases addressing this specific intersection between copyright and trade dress, the Federal Circuit has found that service mark registration does not give the owner of the mark the right to infringe another’s copyright.
Boyle v. United States,
Similarly, defendants claim that their intended use of the Red Velvet Collection images is authorized by a model release signed by Marilyn Monroe before her death. Plaintiff states that it contests
In addition to these specific rights, defendants assert that the Marilyn Monroe estate itself has no valid rights of publicity to assign to plaintiff, and any rights of publicity that may exist are preempted by TKS’s copyrights. Marilyn Monroe’s purported rights of publicity are currently the subject of ongoing litigation in several states, including, according to defendants, Marilyn Monroe’s probate proceeding which has been open since her death in 1962. Given the fact that the instant action involves trademarks and trade dress, rather than the right of publicity, the court is not persuaded of the relevance of defendants’ argument. The court therefore declines to wade into the murky waters surrounding the estate’s purported rights of publicity.
Finally, defendants assert that, under the terms of the licensing agreement between TKS and plaintiff, plaintiff was prohibited from acquiring any rights in the Red Velvet Collection images based on its use of the images on its wine labels. Again, the court is hesitant to interpret the licensing agreement while the separate arbitration between TKS in Nova is pending. Nonetheless, the court finds that this argument is without merit. Plaintiffs trade dress interest does not arise from its license or use of the Red Velvet Collection images. Rather, the trade dress interest in placing Marilyn Monroe images on wine labels was in place before plaintiff licensed the Red Velvet Collection images from TKS. While securing copyright licenses for various Marilyn Monroe images was necessary to develop the trade dress over time, by the time plaintiff secured its copyright license from TKS the trade dress was well-established. The specific May 2004 license was a means of adding another Marilyn Monroe wine to plaintiffs existing line of products. It did not create a new trade dress out of whole cloth that TKS was entitled to acquire under the licensing agreement.
Accordingly, defendants’ claim to superi- or rights in the Red Velvet Collection photographs for use on wine labels is unconvincing. Because plaintiff has asserted a valid trade dress inference and shown a likelihood of confusion, the court finds that plaintiff has demonstrated a likelihood of success on the merits. “Once the plaintiff has demonstrated a likelihood of confusion, it is ordinarily presumed that the plaintiff will suffer irreparable harm if injunctive relief is not granted.”
Brookfield Commc’ns.,
II. Balance of Hardships
While plaintiffs demonstration of likelihood of confusion is sufficient to warrant injunctive relief, the court further finds that injunctive relief is warranted under the Ninth Circuit’s alternative test: serious questions going to the merits of the case combined with the balance of hardships tipping sharply in favor of the plaintiff.
Southwest Voter Registration Educ. Project,
In contrast, defendants have made very little showing of hardship should an injunction issue. Defendants claim that they will suffer irreparable harm through loss of “market time,” injury to reputation by being unable to follow through with its planned introduction of its Marilyn Monroe wines, and a negative perception in the marketplace as an infringer without proof that plaintiff has any rights or that defendants have violated those rights. Defendants assert that they will suffer financial losses in excess of $4 million should an injunction issue, based on their inability to fill orders and exploit “initial publicity and buzz” in time to make holiday season sales. Lindsay Dec. ¶¶ 18-14; Saal Dec. ¶ 21. Defendants offer no data to support this figure.
Defendants cite cases in which parties suffered harm by being forced to withdraw their products or were effectively shut down by the injunction.
Illinois Tool Works, Inc. v. Grip-Pak, Inc.,
Finally, defendants claim that plaintiffs delay in filing its TRO application and motion for preliminary injunction militate against granting a preliminary injunction. The court does not find undue delay here. Although the initial controversy erupted in June or July 2006, plaintiff did not learn that Adler Fels was actually marketing its upcoming Red Velvet Collection wine until September, and the earlier communications between the parties did not indicate that Adler Fels would be selling such a wine. Plaintiff served its complaint, TRO application, and motion for a preliminary injunction, the following month. This time frame was reasonable and therefore does not bar injunctive relief.
Accordingly, the court finds that the balance of hardships tips sharply in plaintiffs favor.
CONCLUSION
For the reasons stated above, the court GRANTS plaintiffs motion for a preliminary injunction.
IT IS SO ORDERED.
Notes
. Defendants have cited authority indicating that the image or likeness of a famous individual, standing alone, cannot be protected as a trademark. Plaintiff does not appear to contest that such "in gross” protection is not available, but rather argues that it seeks protection for the use of Marilyn Monroe’s image and likeness on wine bottles only. Accordingly, the protectable interest in Marilyn Monroe’s image is better assessed in the context of trade dress, discussed infra.
. Defendants do not argue that plaintiff lacks standing to bring claims under Section 43(a) of the Lanham Act (15 U.S.C. section 1125(a)) for common law trademarks, and it appears that plaintiff clearly has standing under this provision.
See, e.g., Halicki v. Carroll Shelby Int’l, Inc.,
No. CV 04-8813 SJO,
. Because plaintiff lacks standing to bring claims based on the "Marilyn Monroe” trademark, the court does not reach defendants' argument that their use of the "Marilyn Monroe” trademark constitutes fair use.
. Defendants also point out that neither plaintiff nor the Marilyn Monroe estate ever identified the images of Marilyn Monroe as trademarks by designating them with the “TM” indicator. This argument is without merit regarding the trade dress claim, however, as the specific images of Marilyn Monroe need not be trademarked in order to give rise to trade dress protection.
. According to the exhibits submitted with the Holder Declaration, plaintiff used the same photo of Marilyn Monroe on its 2002 and 2004 releases.