The opinion of the court was delivered by: KRAM
MEMORANDUM OPINION AND ORDER
SHIRLEY WOHL KRAM, U.S.D.J.
Plaintiff Sugarhill Records Ltd. ("Sugarhill") commenced this action against Motown Record Corporation ("Motown"), MCA Distributing Corporation ("MCA"), and Rick James seeking monetary and injunctive relief. Sugarhill asserts a claim for misdescription of goods under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), as well as various pendent state law claims, including a claim for tortious interference with contractual relationships. Sugarhill's claims arise out of the production of a record album entitled "Cold Blooded" containing the recorded performances of Rick James and others. James is also the producer, Motown the manufacturer, and MCA the distributor, of the album. One of the cuts on the album, "P.I.M.P. the S.I.M.P.", includes the performance of three performers who are members of a group known as "Grand Master Flash and the Furious Five." Grand Master Flash and the Furious Five, and each of its six members, are under an exclusive recording agreement with Sugarhill. The album jacket and sleeve indicate that "P.I.M.P. the S.I.M.P." features Grand Master Flash, and that "Grand Master Flash appears courtesy of Sugarhill Records Ltd." Sugarhill contends that these statements are untrue. The action is before this Court upon Sugarhill's motion for a preliminary injunction enjoining defendants from selling "Cold Blooded" with the designation "Grand Master Flash" or with the recorded performance of any members of "Grand Master Flash and the Furious Five." This Court has reviewed the papers submitted herein and the arguments made to the Court at the hearing on the within motion held on August 22, 1983. For the reasons stated below, Sugarhill's motion is denied.
Sugarhill is a corporation engaged in producing and manufacturing phonograph records. In 1980 Sugarhill entered into an exclusive recording agreement with six individuals: Nathaniel Glover, Melvin Glover, Keith Wiggins, Guy Todd Williams, Joseph Saddler, and Eddie Morris. These six individuals are performing artists who comprise the performing group known as "Grand Master Flash and the Furious Five."
Grand Master Flash and the Furious Five is an up and coming group in music today. Its recent record albums, produced under the aegis of Sugarhill, have received widespread critical acclaim and have sold well -- over two million copies of the group's albums have been sold. Grand Master Flash and the Furious Five is known for its performance of "rapping" -- rhythmically spoken lyrics over a musical background.
Motown is a corporation engaged in manufacturing phonograph records. MCA is a corporation engaged in distributing the productes of Motown.
Rick James is a well-known musical artist. James is a songwriter, composer, producer, and performer. His albums have received widespread critical acclaim and have sold very well -- over six million copies of his albums have been sold.
James recently composed the music and wrote the lyrics for nine songs. Those songs are contained on an album entitled "Cold Blooded." James sings all nine songs on the album. Three of the songs also feature guest vocal appearances: Smokey Robinson appears with James in "Ebony Eyes"; Billy Dee Williams appears in "Tell Me (What You Want)"; and Melvin Glover, Guy Todd williams, and Eddie Morris appear in a rap in "P.I.M.P. the S.I.M.P."
"Cold Blooded" has been recorded and is available on phonograph records and cassette tapes. The album jacket, the record sleeve, and the label insert with the cassettes credit the performance of all the featured artists. The performances of Glover, Williams, and Morris is noted as that of "Grand Master Flash." The record sleeve further indicates that "Grand Master Flash appears courtesy of Sugarhill Records Ltd."
Approximately 546,000 copies of the album have been pressed and distributed to retail shops across the country for sale to the public. The record on this motion does not indicate how many tapes have been distributed to date.
Sugarhill has moved this Court for a preliminary injunction pursuant to Rule 65 of the Federal Rules of Civil Procedure. The standards governing the issuance of a preliminary injunction are well established in this Circuit. A preliminary injunction will issue only upon
a showing of (a) irreparable harm and (b) either (1) likelihood of 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 ...