storyboard and script for the commercial, is the following handwritten note: "approved Bryan Jay Yolles 29 Oct. 1993"); Mem. from David DeMuth to Bryan Yolles, Undated, Pl.'s Ex. 23 (asking for review of storyboard and referencing previous conversations on the issue of whether to use the actual Deere Logo or an altered version of it, and indicating that DeMuth would follow up with Yolles by telephone); Mem. from Bryan Yolles to David DeMuth, Jan. 7, 1994, Pl.'s Ex. 16 (approving the "use [of] the actual John Deere Logo as long as [the commercial] indicate[s] that the logo is a registered trademark of The John Deere Company [sic].") Yolles ultimately approved the commercial based on the storyboard, the script, and his discussions with DeMuth, because Yolles believed it was permissible to animate a competitor's logo. See Yolles Test., Transcript of April 21 and 22, 1994, Preliminary Injunction Hearing ("PI Hr'g Tr.") at 75-77.
Despite Yolles admonition to "use the actual John Deere Logo," Mem. from Bryan Yolles to David DeMuth, Jan. 7, 1994, Pl.'s Ex. 16, Doner concededly altered the static logo actually found on Deere tractors for use in the Commercial. In addition to the inserting the registered trademark symbol in the bottom right-hand corner outside the logo, a change -- if it can be called that -- which Yolles himself suggested, Doner removed "John Deere" from the version of the Deere Logo used by Deere on the front of its lawn tractors, a change Yolles concedes that he approved, see PI Mr'g Tr. 85; see also Mem. from David DeMuth to John Parlato/Judy Wittenberg, Dec. 16, 1993, Pl.'s Ex. 24 (describing need to alter version of the Deere Logo found on its lawn tractors because that version "has the words 'John Deere' beneath the symbol."), and changed the shape of the boundary (making it more sharply rectangular than the actual Deere Logo). See Nolan Aff. II at 2. Plaintiff also contends that "the leaping deer design in the commercial appears to be a somewhat distorted version of Deere's leaping deer design trademark even before the deer design is animated in the commercial." Id. The Court agrees that the deer in the Commercial appears to be somewhat differently proportioned, particularly with respect to its width, than the deer in the Deere Logo. Compare Storyboard, Def.'s Ex. O with Nolan Aff. II Ex. I.
In addition, of course, the animation of the static Deere logo -- a detailed description of which follows -- alters the static logo, at least to the extent that (considering the Commercial from a frame-by-frame perspective) the Commercial places the deer in myriad poses different from the pose it strikes in the Deere Logo. Of greater significance and concern to Plaintiff is the fact that the deer is made to move -- to look behind it, to run, to jump, to change direction -- something the static Deere Logo obviously (and by definition) does not do.
A description of the completed version of the Commercial (including the revisions incorporated just prior to the April 1, 1994, hearing) follows. The Commercial begins with a full, front-on shot of a John Deere lawn tractor; on the front of the tractor is the commercial Logo.
The next shot is a full screen close-up of the Commercial Logo; in the lower right-hand corner of the Commercial Logo, outside the border, is the symbol indicating a registered trademark (a capital "R" with a circle around it); below the Commercial Logo is the text: "This is a trademark of John Deere and not affiliated with Yard-Man". See Storyboard, Def.'s Ex. O; Videotape, Pl.'s Ex. 39. The voice-over that accompanies the first three cuts of the Commercial states: "A very expensive maker of lawn tractors likes to say 'nothing runs like 'em.'" See Storyboard, Def.'s Ex. O; Videotape, Pl.'s Ex. 39. This is an obvious reference to the Deere slogan "NOTHING RUNS LIKE A DEERE", which is a registered trademark of Deere. See Nolan Aff. I Ex. C. After a number of live action shots of the Yard-Man tractor cutting a lawn, accompanied by a voice-over description of some of the tractor's features, another close-up of the Commercial Logo appears -- this time without the registered trademark symbol in the lower right-hand corner. The deer inside the Commercial Logo springs to life through animation, turning its head toward the viewer in order to look behind it (to the viewer's right) -- presumably to see the Yard-Man tractor bearing down on it. The deer turns and faces forward again (to the viewer's left), lowers its head, and jumps forward (again to the viewer's left) through the left vertical border of the Commercial Logo, which breaks into pieces and tumbles toward the ground. The deer lands in a live action shot of the lawn, and continues throughout the Commercial to be superimposed onto live action footage. The deer begins to run with the tractor in pursuit. A close-up shot of the tractor is accompanied by the voice-over: "So it runs like a you-know-who. Only it doesn't cost nearly as much money." See Storyboard, Def.'s Ex. O; Videotape, Pl.'s Ex. 39. The deer, still moving from right to left, runs past a leashed dog; the dog is of a breed which, although unspecified in the record, is recognizable as being a breed that is short in stature. The dog barks or snaps at the deer, which changes direction and runs away from the dog; the deer continues to move from right to left, but in a way that makes it appear as if the deer is moving toward the viewer before it disappears into the lower left-hand corner of the screen. After a shot of a stationary Yard-Man tractor flanked by two Yard-Man lawn mowers, with a voiceover that states "Yard-Man. American Made. American Owned.",
there is a final shot of the deer, now dwarfed by the Yard-Man tractor, running left to right with the Yard-Man tractor in pursuit.
The Commercial was submitted to ABC, NBC, and CBS for clearance by the legal staffs of those networks prior to their running it. All three networks sought and received substantiation of the claims made in the Commercial; Defendant has provided copies of the substantiation it submitted in support of the Commercial. See DeMuth Aff. Exs. D-1, D-2, and D-3.
NBC approved the Commercial outright. ABC approved the Commercial with the following handwritten proviso: "Please be reminded ABC has the right to re-evaluate this commercial should there be [a] responsible complaint." See DeMuth Aff. Ex. D-1. CBS approved the Commercial after demanding and receiving a letter of indemnity from Doner, even though, according to Defendant, it is standard practice for a buyer of media time contractually to indemnify the network, and therefore, Doner already had indemnified CBS. See, e.g., Yolles Test., PI Hr'g Tr. 89-92.
The Commercial was scheduled to run, and presumably did run, during sports programs on major network, spot market, and cable television from the week of March 7, 1994, through the week of May 23, 1994. See Yard-Man '94 Spring Advertising Schedule, Def.'s Ex. Y. On March 27, 1994, John M. Nolan, Senior Patent Counsel for Deere, viewed a broadcast of the original version of the Commercial on WHBF-TV, a television station broadcasting from Rock Island, Illinois that is associated with CBS.
After a flurry of communication between Plaintiff's counsel and Defendant's general and outside counsels, Plaintiff commenced the instant action on April 1, 1994.
At issue is plaintiff's application for a preliminary injunction, inter alia, prohibiting further airing of the Commercial. It is well established that
the standard in the Second Circuit for injunctive relief clearly calls for 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 decidedly toward the party requesting the preliminary relief.
Bridgeport Coalition for Fair Representation v. City of Bridgeport, No. 93-9254 (renumbered No. 1592--August Term, 1993), 26 F.3d 271, 1994 U.S. App. LEXIS 14152, *10 (2d Cir. 1994) (quoting Jackson Dairy v. H.P. Hood & Sons, 596 F.2d 70, 72 (2d Cir. 1979)).
For reasons that will become clear, the Court limits its consideration of Plaintiff's motion for a preliminary injunction to the contention that the Commercial violates the New York antidilution statute. Section 368-d of Article 24 of the New York General Business Law states:
Likelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name shall be a ground for injunctive relief in cases of infringement of a mark registered or not registered or in cases of unfair competition, notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services.