The opinion of the court was delivered by: Kram, District Judge.
MEMORANDUM OPINION AND ORDER
The familiar two-prong standard for a preliminary injunction is:
(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 decidedly toward the party requesting the
Seaboard World Airlines, Inc. v. Tiger Int'l Inc., 600 F.2d 355, 359-60
(2d Cir. 1979) (quoting Jackson Dairy, Inc. v. HP. Hood & Sons, Inc.,
596 F.2d 70, 72 (2d Cir. 1979)). Plaintiff has satisfied its burden of
demonstrating irreparable harm and a likelihood of success on the
copyright and trademark claims against Mow Trading.
A prima facie claim of copyright infringement here comprises two
elements: (1) ownership of a valid copyright in the artwork, characters,
distinctive phrases and other creative elements incorporated in or
associated with THE SIMPSONS; and (2) that defendant copied the works in
question. Hasbro Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189, 192
(2d Cir. 1985). According to section 410(c) of the Copyright Act,
17 U.S.C. § 410 (c), a certificate of copyright registration issued
within five years of the publication of the copyrighted work constitutes
prima facie evidence of the validity of the copyright and its ownership.
Sec, e.g., Kenbrooke Fabrics, Inc. v. Holland Fabrics, Inc.,
602 F. Supp. 151 (S.D.N.Y. 1984). The plaintiff has produced the
certificate of copyright registration for THE SIMPSONS Style Book, which
was effective January 4, 1990. See Copyright Certificate of Copyright
Registration, attached as Exhibit A to Complaint. The first element of
copyright ownership is therefore satisfied.
The evidence on the second element is similarly strong. The testimony
and evidence introduced at the hearing demonstrate a clear case of
copying. One investigator testified that he purchased infringing shirts
from Mr. Yun, as representative of Mow Trading, and several others
testified that they were present during the seizure, at which over ten
thousand infringing SIMPSONS products were taken. Plaintiff also produced
two silk screens that were used to make some of the unauthorized SIMPSONS
shirts seized from Mow Trading.
Section 43(a) of the Lanham Act creates a federal claim for unfair
competition. To prevail on this claim, plaintiff must show that its marks
or design features have acquired secondary meaning and that the
defendant's conduct has created a likelihood of confusion to the public
as to the source or origin of the product in question. See Standard &
Poor, Corp. v. Commodity Exchange. Inc., 683 F.2d 704 (2d Cir. 1982).
Since its premiere in December, 1989, THE SIMPSONS has become a very
successful, one-half hour television show. Furthermore, the broad
interest in copying Bart Simpson and the other characters that make up
THE SIMPSONS strongly suggests secondary meaning. There is also strong
evidence on the likelihood of confusion, as many of the characters on the
seized counterfeit merchandise are identical to those appearing in the
show and on the licensed products. See, e.g., Joel v. Various John Does,
499 F. Supp. 791 (E.D.Wis. 1980) (unauthorized production and sale of
T-shirts with performer's name or likeness
violated section 43(a) of Lanham Act); Winterland Concession Co. v.
Silco, 528 F. Supp. 1201 (N.D.Ill. 1981) (unauthorized T-shirts produced
in violation of section 43(a)), aff'd, 830 F.2d 195 (7th Cir. 1987).*fn2
Once a copyright holder demonstrates a "reasonable probability of
prevailing on the merits" a preliminary injunction should issue because
the "copyright holder in the ordinary case may be presumed to suffer
irreparable harm when his right to the exclusive use of the copyrighted
material is invaded." Novelty Textile Mills, Inc. v. Joan Fabrics Corp.,
558 F.2d 1090, 1094 (2d Cir. 1977). This presumption of irreparable harm
applies here. Moreover, the plaintiff has demonstrated irreparable harm,
particularly through its testimony and evidence that ...