Citation. Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 203 U.S.P.Q. (BNA) 161, 5 Media L. Rep. 1814 (2d Cir. N.Y. Aug. 9, 1979)
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Brief Fact Summary.
The United States District Court for the Southern District of New York issued preliminary injunctions against the Appellants, Pussycat Cinema, Ltd. and Michael Zaffarano (Appellants), prohibiting them from exhibiting or distributing a motion picture on the grounds of trademark infringement, unfair competition, and dilution of trademark. The Appellants challenged the orders.
Synopsis of Rule of Law.
If the design of an item is nonfunctional and has acquired secondary meaning (the power of a name or other configuration to symbolize a particular business, product or company), the design may become a trademark even if the item itself is functional.
The Appellee, the Dallas Cowboy Cheerleaders Inc. (Appellee), brought an action against the Appellant to enjoin the company from promoting their film Debbie Does Dallas in which the title character, wishing to join the Dallas Cowboy Cheerleaders, engages in a variety of sexual acts to raise money to travel to Dallas to try out for the squad. The Appellee alleges a Lanham Act trademark violation. The trial judge granted a preliminary injunction and the Appellant appealed. The U.S. Court of Appeals for the Second Circuit reviewed.
Did the Appellee have a valid trademark of the distinctive Dallas Cowboy Cheerleaders’ uniform making the Appellants’ action a violation and thus justifying the injunction?
Yes. The court affirmed the order, holding that the Appellants violated the Dallas Cowboy Cheerleaders’ trademark and an injunction was proper. The Appellee established a probability of success at trial and the confusion engendered by the Appellants’ movie would have resulted in irreparable harm were the Appellants not enjoined from its distribution and exhibition.
The central item at issue in this case is the distinct uniform employed by the cheerleading organization and the likelihood of confusion through use of a similar uniform in Debbie Does Dallas. This was essentially a factual issue, which the court characterized in the following manner: “The combination of the white boots, white shorts, blue blouse, and white star-studded vest and belt of Appellee’s uniform was an arbitrary design, which made the otherwise functional uniform a trademark. The depiction of the uniform in a motion picture violated that trademark because the uniform in the movie closely resembled Appellee’s uniform and the public was likely to be confused within the meaning of the Lanham Act.” (The latter is the federal statute governing trademark infringement.) As the court explained, “It is well established that, if the design of an item is nonfunctional and has acquired secondary meaning, the design may become a trademark even if the item itself is functiona
l.” The uniform, by its distinctive design and broad familiarity to national audiences, met these criteria. Defendants argued that the uniform was purely functional, and thus common for use in cheerleading routines. The court disagreed, noting, “Thus, the fact that an item serves or performs a function does not mean that it may not at the same time be capable of indicating sponsorship or origin, particularly where the decorative aspects of the item are nonfunctional.”
Having established the trademark issue, the court turned to the question of whether injunction was the proper remedy, and outlined the standard to be applied: “The district court’s issuance of a preliminary injunction is reversible only for abuse of discretion. A preliminary injunction is proper where the plaintiff establishes possible irreparable harm and either (1) probable success on the merits or (2) 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.” Since, as noted, the confusion engendered by Appellant’s movie would have resulted in irreparable harm were the Appellants not enjoined from its distribution and exhibition, the Second Circuit affirmed.