The opinion of the court was delivered by: Whitman Knapp, District Judge.
This litigation arises from a dispute between a licensor and
its licensee over the right to use the "Gloria Vanderbilt"
trademark (the "Mark") on women's swimwear, sweaters, and
activewear. The parties first appeared before us on September 12,
1989 shortly after the complaint was filed. However, later in the
same month the parties advised us that they had entered into
serious settlement negotiations and, at their request, all
litigation activity was suspended for about fourteen months.
The matter is now before us on three separate motions: (1)
defendant-licensor G.V. Licensing, Inc.'s ("Licensing") motion
for a preliminary injunction prohibiting plaintiff from further
use of the Mark during the course of the litigation; (2)
plaintiff's motion for partial summary judgment on its claim that
its licenses are exclusive; and (3) the motion of defendants
Licensing, G.V. Gitano, Inc. ("G.V. Gitano"), and The Gitano
Group, Inc. ("Group") to dismiss various claims asserted in the
This opinion will deal only with Licensing's motion for a
preliminary injunction. For reasons that follow, that motion is
denied because the inordinate delay in seeking such relief makes
impossible a finding of irreparable harm.
I. Events Giving Rise to the Litigation.
Plaintiff obtained its licenses from the Mark's former owners,
Murjani International Limited and its successor, Murjani
Worldwide, B.V. (collectively, "Murjani"), pursuant to three
agreements, each covering a different category of women's
apparel. The first such agreement, dated May 18, 1984, covers
swimwear and, on November 15, 1984, was expanded to include
beachwear (the "Swimwear License"); the second, dated September
29, 1988, covers sweaters and coordinated sweater bottoms (the
"Sweater License"); and the third, also dated September 29, 1988,
covers performancewear and activewear, which include tennis,
bicycle and warm-up suits (the "Activewear License"). The three
twenty-plus page agreements drafted by Murjani are almost
According to plaintiff, Murjani never strictly enforced these
requirements, and licensor and licensee enjoyed an amiable and
successful collaboration from the inception of their relationship
in May of 1984, until on or about December 23, 1988, when Murjani
sold the Mark to defendant G.V. Gitano and assigned to it all of
its rights under various licensing agreements, including those
entered into with plaintiff. G.V. Gitano later changed its name
to G.V. Licensing, Inc. For ease of reference, we will refer to
it as "Licensing."
When Licensing took over as plaintiff's licensor, an
increasingly discordant relationship ensued. On February 3, 1989,
Licensing notified plaintiff that it had begun "formulating [its]
overall licensing and marketing strategies." Exh. A, Sneider Feb.
25 Affid. These "strategies" apparently included a decision to
assert that the licenses plaintiff had obtained from Murjani were
non-exclusive. Concurrently, Licensing began requiring strict
compliance with the terms of the various agreements, and set
forth with particularity the procedures by which plaintiff was to
effect such compliance. See Exh. 23 to Albert Reply Affid.
Plaintiff — to an extent not possible to determine on this record
— failed so to comply. It opposed Licensing's stated position
that the licenses were non-exclusive, and claimed, among other
things, that Licensing had improperly rejected garments it had
submitted for approval.
A letter dated July 27, 1989 sent by Licensing to Luis Sneider,
plaintiff's chief executive officer, illustrates the tenor of the
escalating conflict between the two entities:
After reviewing the bathing suits and the
"Swimwear" line list received on July 13 as a result
of our meeting at your offices, we are unable to
process your "Swimwear" submission.
As previously noted, we can not make an approval
decision without a complete representation of a
season's line. During our visit to your office and
warehouse, we saw numerous garments containing the
"Beachwear" Gloria Vanderbilt label. However, no such
items were submitted for approval. As we have told
you in the past, until we receive samples (and
completed approval forms) that represent the entire
Fall '89 Swimwear line (which includes coordinated
cover-ups), you may not sell or offer for sale any
such items — they must be submitted first for
Also, I received a copy of your letter dated July
10, 1989. . . . In it you made reference to ...