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FOX v. MOW TRADING CORP.

July 25, 1990

TWENTIETH CENTURY FOX FILM CORPORATION AND TWENTIETH CENTURY FOX LICENSING AND MERCHANDISING CORPORATION, PLAINTIFFS,
v.
MOW TRADING CORP. D/B/A MOWCO, SWEATSHIRTS AND MORE, JOHN DOES (NOS. 1-1000) AND JANE DOES (NOS. 1-1000), DEFENDANTS.



The opinion of the court was delivered by: Kram, District Judge.

MEMORANDUM OPINION AND ORDER

The plaintiffs (hereinafter "Fox") brought this action for copyright infringement and unfair competition to protect its copyrights in the characters of the television show "THE SIMPSONS", which runs on the Fox Television Network. Presently before this Court is plaintiff's motion for a preliminary injunction and expedited discovery against the defendant Mow Trading. This Court signed a temporary restraining order and seizure order on June 28, 1990, which was extended once to run until July 24, 1990. Defendant Sweatshirts and More stipulated to a preliminary injunction and expedited discovery. The Court held a hearing on July 24, 1990 on plaintiff's motion with respect to Mow Trading,*fn1 after which this Court orally granted the preliminary injunction against Mow Trading and indicated that this order would follow.

DISCUSSION

Preliminary Injunction

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
  preliminary relief.

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) Likelihood of Success

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

b) Irreparable Harm

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 ...


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