The opinion of the court was delivered by: KNAPP
In this suit based on alleged violations of the Lanham Act and related state claims of unfair competition, plaintiff moves for a preliminary injunction restraining the defendant from marketing toy automobiles that resemble those which form the focal point for plaintiff's television series. Having carefully considered the submissions made by the parties and the arguments of counsel, we deny plaintiff's motion. This memorandum shall constitute our findings of fact and conclusions of law.
Plaintiff, a Delaware corporation having its principal place of business in California, is a well-known producer of movies and television shows. Defendant, a Michigan corporation having its principal place of business in that state, is a leading manufacturer of toys.
Among the television shows produced by plaintiff is a highly successful series known as "The Dukes of Hazzard" which, since January of 1979, has been regularly broadcast on the CBS television network. A prominent feature of this series referred to by plaintiff as the series' "signature" is the "General Lee", a striking orange automobile identified by the words "GENERAL LEE" and a modified confederate flag on its roof, and the number "01" prominently affixed to each side door. This car appears to be a central figure in each episode of the series and the human actors, the "Duke Boys", employ it in a never-ending succession of adventures in which its spectacular performance enables them repeatedly to escape from the clutches of the evil sheriff of fictitious Hazzard County. Because of the car's use in the program and the vast amounts of money plaintiff has spent in advertisements of the series with the "General Lee" prominently featured, it has come about that a substantial segment of the public especially children instantly think of the series when they see the car or a replica of it.
As is customary in the television industry, the plaintiff plans to profit from the "General Lee's" popularity by granting a number of manufacturers licenses to copy it. We are informed by counsel for the plaintiff that again, as is customary in the industry the revenues plaintiff expects to derive from such licenses in 1981 exceed by far the broadcast revenues expected from the series itself for that year.
Defendant has, for some time, sold toy automobiles made in the image of a Dodge Charger, and produced in a number of colors. After plaintiff's "General Lee" demonstrated its appeal, defendant decided to capitalize on its popularity. Having requested and been denied a non-exclusive license from the plaintiff, defendant put out the toy here in issue, an orange Dodge Charger with a confederate flag on its top and the number "10" on each side door. This toy is for all practical purposes identical in appearance to the "General Lee" except that the words "GENERAL LEE" are not written on its roof, and the numbers on its side doors are the reverse of those found on the real "General Lee" ("10" instead of "01"). At the time the defendant placed its toy on the market, neither plaintiff nor any of its licensees had so far as the evidence before us indicates come out on the market with any significant number of toys or other objects associated with the "Duke of Hazzard" program.
After this action had been brought, plaintiff caused a survey to be taken which establishes, to our satisfaction, that a substantial number of children, when holding defendant's car in their hand, immediately think of plaintiff's "General Lee" and "The Dukes of Hazzard" television series.
From this we would infer that many children buy the car (or induce their parents to buy it for them) as a prop for play in which they pretend they are the "Duke Boys" of television fame. However, there is nothing in the survey to suggest that purchasers are in any way concerned with who may manufacture the car, nor is there anything to suggest that purchasers think that plaintiff controls the quality of defendant's toy or in any other way "sponsors" it.
In this lawsuit, plaintiff seeks to have defendant enjoined from marketing its toy copy of the "General Lee".
In so doing, plaintiff does not allege any copyright, design patent, or registered trademark which protects its design per se. It relies exclusively on the facts which we find to be facts that plaintiffs created the design and made it popular by virtue of its broadcasting and advertising activities, that defendant's product is readily identified as resembling plaintiff's creation, and that defendant intentionally designed its product to capitalize on the popularity of plaintiff's "General Lee". Plaintiff now moves for a preliminary injunction barring defendant from marketing its product without first removing the modified confederate flag from its roof and the "10" from its side doors. For the reasons set forth below, that motion is denied.
In this Circuit, a plaintiff seeking preliminary injunctive relief must make a showing of irreparable harm and, in addition, demonstrate either a likelihood of success on the merits or the existence of sufficiently serious questions going to the merits to make them a fair ground for litigation. In the latter situation (fair ground for litigation), it must also establish that the balance of hardships tips decidedly in its favor. Jack Kahn Music Co., Inc. v. Baldwin Piano & Organ Co. (2d Cir. 1979) 604 F.2d 755, 758-59. Assuming arguendo that plaintiff has established irreparable harm, we turn to an examination of plaintiff's substantive position.
The basic inquiry in an unfair competition action in this forum is whether the public is likely to be misled into believing that the defendant is distributing products manufactured or vouched for by the plaintiff.
Thus, in American-Marietta Co. v. Krigsman (2d Cir. 1960) 275 F.2d 287, Judge Hand observed (at 289):
"The whole basis of the law of "unfair competition' ... is that no one shall sell his goods in such a way as to make it appear that they come from some other source."
Accord: Vitarroz Corp. v. Borden, Inc. (2d Cir. 1981) 644 F.2d 960; Perfect Fit Industries, Inc. v. Acme Quilting Co. (2d Cir. 1980) 618 F.2d 950, 953; American Footwear Corp. v. General Footwear Co. (2d Cir. 1979) 609 F.2d 655, 663, cert. denied, 445 U.S. 951, 100 S. Ct. 1601, 63 L. Ed. 2d 787 (1980); McGregor-Doniger, Inc. v. Drizzle Inc. (2d Cir. 1979) 599 F.2d 1126, 1130; Mushroom Makers, Inc. v. R. G. Barry Corp. (2d Cir. 1978) 580 F.2d 44, 47, cert. denied, 439 U.S. 1116, 99 S. Ct. 1022, 59 L. Ed. 2d 75 (1979); Societe Comptoir de l'Industrie Cotonniere Etablissements Boussac v. Alexander's Dept. Stores, Inc. (2d Cir. 1962) 299 F.2d 33, 36; Joshua Meier Co. v. Albany Novelty Mfg. Co. (2d Cir. 1956) 236 F.2d 144, 147; Triangle Publications v. Rohrlich (2d Cir. 1948) 167 F.2d 969, 972; Yale Electric Corp. v. ...