United States District Court, S.D. New York
June 15, 2004.
COLEEN A. CHRISTIAN, Plaintiff,
ALLOY, INC., ALLOY ONLINE, INC., 17th STREET PRODUCTIONS, and CECILY VON ZIEGESAR, Defendants.
The opinion of the court was delivered by: HAROLD BAER, JR., District Judge
OPINION & ORDER
Plaintiff Coleen A. Christian ("Christian") moved to
preliminarily enjoin defendants' allegedly unauthorized use of
her GOSSIP GIRL® trademark, which defendants opposed. Oral
argument on the motion was held on May 11, 2004. For the reasons
stated on the record at the conclusion of the oral argument and
the reasons set forth below, Christian's motion is denied. As
required by Fed.R.Civ.P. 52(a), following are the Court's
findings of fact and conclusions of law.
I. FINDINGS OF FACT
Christian is an entertainment reporter for Steppin' Out, a
free regional entertainment magazine reaching some 75,000 souls
at colleges, supermarkets, delicatessens, sidewalk street boxes,
etc. in northern New Jersey, southern New York, the Jersey Shore,
and Manhattan. Since 1999, Christian has written a weekly
entertainment column using the GOSSIP GIRL® mark, which contains
news and information about celebrities and Hollywood. Christian's
columns also prominently feature her name, photograph, and the
subtitle, "Hollywood Will Never Be the Same." Christian has
written approximately 195 columns, which have appeared in a
number of websites in addition to their publication in Steppin'
Out magazine. Christian has also appeared on three nationally
broadcast television shows and two newspapers have written
articles about her column. On October 29, 2001, the United States
Patent and Trademark Office ("USPTO") registered Christian's
GOSSIP GIRL® mark based on her January 29, 2001 application.
Christian first learned of defendants' use of the phrase "Gossip Girl" in
Seventeenth Street Productions is a division of Alloy, Inc.,
which was formally known as Alloy Online, Inc. (collectively,
"Alloy"). Alloy is a media and marketing company that targets
teenagers and young adults. In the Spring of 2000, Alloy thought
up the idea for a series of novels set in a fictitious private
high school located on the Upper East Side of Manhattan. These
novels, authored by Cecily von Ziegesar, are targeted for the
niche market of teenage girls and use the phrase "Gossip Girl" in
the title. The novels have an anonymous narrator named "Gossip
Girl," who posts gossip about the characters on an internet site
that contain references to celebrities. The books' trade dress
features the Cecily von Ziegesar's name, a photograph of teenage
girls or boys (with a portion of their faces cut off), and an
open mouth lips logo. The second half of the title for each book
(other than the first in the series) is the phrase, "A Gossip
Alloy applied for a trademark after it decided to publish a
series of novels because of the success of the first book,
Gossip Girl. The USPTO, however, rejected Alloy's December 30,
2002 application for use of the "Gossip Girl" mark in connection
with entertainment, film, video, television, etc. because it was
so similar to Christian's mark that it was likely to cause
confusion. The USPTO approved Alloy's application once Alloy
restricted the use of the mark to fictional teenagers living in
New York City.*fn2 Alloy has published five novels in the
series to date, the first of which was released in April 2002.
Two of the novels have been listed on the New York Times
bestseller lists for children's books. Alloy has contemplated
both a television series and movie based on the Gossip Girl
series. To that end, Alloy began negotiations with Warner
Brothers to produce a Gossip Girl movie, although the project is
Christian initially filed suit against the defendants for their
alleged trademark infringement and unfair competition on May 23,
2003.*fn3 In June 2003, Christian, through her counsel, sent a cease and desist letter to Alloy in which she
informed it of her federal trademark infringement lawsuit.
Thereafter, Christian voluntarily discontinued the action on
September 25, 2003. From approximately June to December 2003, the
parties unsuccessfully attempted to settle the matter. Christian
then initiated the instant action on December 29, 2003*fn4
and re-alleged violations of 15 U.S.C. § 1114, 1125(a) and New
York's unfair competition law. In her complaint, Christian
sought, inter alia, a preliminary and permanent injunction,
an accounting, an award of Christian's damages, to be trebled,
defendants' profits, and reasonable attorneys' fees and costs. On
March 23, 2004, Christian moved for a preliminary injunction.
Defendants opposed the grant of preliminary relief and moved for
expedited discovery, which was granted.
II. CONCLUSIONS OF LAW
A preliminary injunction is "an extraordinary and drastic
remedy which should not be routinely granted." Med. Soc'y of
State of N.Y. v. Toia, 560 F.2d 535, 538 (2d Cir. 1977). To
obtain injunctive relief, the movant must demonstrate: "(a) that
it will suffer irreparable harm in the absence of an injunction
and (b) either (i) a likelihood of success on the merits or (ii)
sufficiently serious questions going to the merits to make them a
fair ground for litigation and a balance of hardships tipping
decidedly in the movant's favor." Tom Doherty Assocs., Inc. v.
Saban Entm't, Inc., 60 F.3d 27, 33 (2d Cir. 1995). Here
Christian seeks a mandatory injunction, i.e., an injunction that
would "alter the status quo by commanding some positive act."
Id. at 34. A mandatory injunction requires a "clear" or
"substantial" showing of a likelihood of success on the merits.
Jolly v. Coughlin, 76 F.3d 468, 473 (2d Cir. 1996). Christian
has failed to meet the lesser test, no less the test for a
A. Irreparable Harm
Christian's two-year delay alone may be sufficient to negate
the irreparable harm. The Second Circuit has held that "any . . .
presumption of irreparable harm is inoperative if the plaintiff
has delayed either in bringing suit or in moving for preliminary
injunctive relief . . . [S]uch delay . . . may, standing alone, . . .
preclude the granting of preliminary injunctive relief . . .
because the failure to act sooner undercuts the sense of urgency
that ordinarily accompanies a motion for preliminary relief and suggests that there is, in
fact, no irreparable injury." Tough Traveler, Ltd. v. Outbound
Prods., 60 F.3d 964, 968 (2d Cir. 1995) (internal citations and
quotation marks omitted). Although Christian first learned of the
defendants' alleged infringement and unfair competition in April
2002, she did not seek to avail herself of legal remedies until
over a year later when she first filed suit in May 2003.
Christian then voluntarily discontinued that action, only to
re-file some seven months later. Thereafter, she then waited an
additional three months to move for preliminary relief. Any
irreparable harm is belied by the sheer length of time since she
discovered her alleged injury and the number of previous
opportunities she had to move for the same relief. Courts have
denied preliminary injunctive relief based on far fewer and
shorter delays. E.g., Christopher Norman Chocolates, Ltd. v.
Schokinag Chocolates N. Am., Inc., 270 F. Supp.2d 432, 438
(S.D.N.Y. 2003) (eight to nine months); Brockmeyer v. The Hearst
Corp., No. 01 Civ. 7746, 2002 WL 1402320, at *4 (S.D.N.Y. June
27, 2002) (sixteen months); Greenpoint Fin. Corp. v. Sperry &
Hutchinson Co., Inc., 116 F. Supp.2d 405, 409 (S.D.N.Y. 2000)
Christian argued that there was, in fact, no delay because she
moved rapidly within one month for injunctive relief after
she learned of Alloy's movie deal with Warner Brothers.
Christian's attempt to re-frame the issue and thus re-set the
relevant timeframe in this manner is unpersuasive. Her pleadings,
motion papers, and argument in Court on May 11, 2004 all
indicated that the thrust of the alleged infringement is
defendants' book series, not the proposed movie deal, which,
parenthetically, is apparently going nowhere, at least not for
the time being. And while Christian argued that she too
contemplated using her mark in a Hollywood film venture, she has
presented no credible evidence that she seriously intended to use
the mark in that realm. To prevail, Christian may not rely on "a
mere possibility that [she] will be irreparably harmed." Med.
Econ. Co., Inc. v. Prescribing Reference, Inc., 294 F. Supp.2d 456,
450 (S.D.N.Y. 2003). Instead, she "must demonstrate an
injury that is neither remote nor speculative, but actual and
imminent." Tucker Anthony Realty Corp. v. Schlesinger,
888 F.2d 969, 975 (2d Cir. 1989) (internal quotation marks and citation
omitted). Christian's perceived inability to pursue future film
ventures with her GOSSIP GIRL® mark is thus too remote to support
a finding of irreparable harm. Christian further argued that a
preliminary injunction was necessary to prevent her "from being buried underneath the avalanche of media
surrounding [defendants'] movie." Tr. at 6:6-7. Even if it were
likely that defendants' movie would be a blockbuster success and
inundate media channels to her detriment when and if it ever
surfaces, Christian offers no evidence of success on the merits.
Finally, Christian argued that she should not be punished for
attempting to resolve the dispute without legal intervention.
Settlement is highly favored by the courts and Christian's
efforts to amicably resolve the matter are to be applauded, but
the mere fact that she attempted to negotiate a settlement does
not relieve her of her burden to demonstrate irreparable harm.
Settlement negotiations and a motion for preliminary relief are
in no way mutually exclusive; indeed, the gossip surrounding such
a motion for preliminary relief might have enhanced the
settlement possibilities. In short, Christian did not carry her
burden with respect to irreparable harm and thus failed to
satisfy the first prong of the inquiry.
B. Likelihood of Success
To prevail on a trademark infringement suit under the Lanham
Act, a "plaintiff must prove that its mark is entitled to
protection and . . . that the defendant's use of its own mark
will likely cause confusion with plaintiff's mark." Gruner
Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072, 1074 (2d Cir.
1993). Registration of a trademark is prima facie evidence
that the mark is valid and owned by the registrant, who has the
exclusive right to use the mark in connection with the goods or
services identified in the certificate. 15 U.S.C. § 1057(b).
Christian has supplied such evidence and thus satisfied this
component of the inquiry.
Success on the merits is in large part based on whether there
is a likelihood of confusion, which is determined by the 8-factor
test set out in Polaroid Corp. v. Polarad Elecs. Corp.,
287 F.2d 492, 495 (2d Cir. 1961). These factors are: "(1) the
strength of the mark; (2) the degree of similarity between the
two marks; (3) the proximity of the products; (4) the likelihood
that the prior owner will `bridge the gap' . . .; (5) actual
confusion; (6) the defendant's good faith in adopting its mark;
(7) the quality of the defendant's product; and (8) the
sophistication of the buyers." Time, Inc. v. Petersen Pub. Co.
L.L.C., 173 F.3d 113, 117 (2d Cir. 1999).*fn5 Of these, no
single factor is dispositive. Instead, the totality of the
factors must indicate a "probability of confusion, not a mere possibility" of confusion. Gruner Jahr
USA Publ'g, 991 F.2d at 1077 (emphasis supplied). And because
Christian sought a mandatory injunction, the standard is that
much higher and requires a clear or substantial showing of this
probability, something that she has not done.
With respect to the first Polaroid factor, the strength of
Christian's mark is slight, given that it is primarily used in a
regional publication with a mere circulation of 75,000. Christian
contends that her appearances on three television programs and
two newspaper articles written about her column constitute
"widespread media exposure," which indicates that her mark has
become distinctive in the marketplace. Pl. Mem. at 14. I
disagree. To the contrary, Christian has presented no persuasive
evidence of a strong mark.
The second and third Polaroid factors, which address the
similarity of the marks and proximity of the products, do not
weigh in Christian's favor either. Christian's and the
defendants' marks may be similar, i.e., they both use the phrase
"Gossip Girl," but the products that bear the marks are wholly
dissimilar in substance, format, trade dress, target market, and
consumers. Christian's attempts to persuade the Court that her
column and defendants' novels are closely related are unavailing.
The mere fact that both products appear in print, for example, is
far too broad a criteria to serve as a meaningful point of
comparison. On the other hand, the fact that Christian's column
has appeared in a free publication is not similar to defendants'
novels, each of which costs $9.00 at a bookstore or other point
of sale. Likewise, Christian's allegation that both products
reference the same celebrities completely ignores the context of
these references. In its simplest form, the products are not
similar or proximate. Christian writes a non-fiction gossip
column for young adults in a regional publication and defendants
write and publish fictional novels for teenage girls.
As for the fourth factor in the Polaroid test, "bridging the
gap," Christian contends that defendants have entered into the
realm of gossip columns through their strategic alliance with
Hachette Filipacchi Media U.S., Inc., who Christian believes is
responsible for the production of a website entitled, "This
Week's Gossip Girl." Defendants have disavowed any connection
with this website and indicated that their business with Hachette
relates to entirely different undertakings and Christian has produced no evidence to the
contrary. This, together with the evidence that indicates that
defendants' future projects are primarily in the realm of
television and movies, undercuts Christian's allegation.
Christian further asserts that she contemplated writing a book,
however, any such book would be a compilation of her columns and
thus would be dissimilar from defendants' novel series. As noted
earlier, Christian's plans for entering the film industry were
entirely too speculative for the "bridging the gap" factor to
weigh in her favor.
Christian endeavored to present evidence of actual confusion,
the fifth Polaroid factor, to tip the balance in her favor. She
did not, however, present any credible evidence from the
purchasing public. One method frequently resorted to in such a
situation is to initiate a consumer survey, here, with plenty of
time to do so, Christian did nothing of the kind. Instead, she
presented two affidavits from her husband and friend. Neither
reflects any confusion on the part of the purchasing public. Nor
do I find convincing the passing remarks of Burt Kearns,*fn6
the editor and owner of a website that publishes Christian's
column, particularly since he attested that he has not observed
any instances of confusion between Christian's column and the
Christian further argues that defendants' failure to conduct a
trademark search prior to their use of the phrase "Gossip Girl"
or applying for their own trademark with respect to the "Gossip
Girl" novel series negates the defendant's good faith, the sixth
Polaroid factor. Christian overlooks the fact that here bad
faith refers to more sinister conduct. As defendants note, in the
context of the Polaroid analysis, the bad faith factor
"examines whether defendants `adopted [their] mark with the
intention of capitalizing on plaintiff's reputation and goodwill
and any confusion between [their] and [plaintiff's] product."
Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 745 (2d
Cir. 1998) (alteration in original). Christian has presented no
argument or evidence of the sort.
Finally, with respect to the eighth Polaroid factor, while I
find that the consumers at least the target teenage audience of
defendants' novels may be less sophisticated, they too can distinguish between a non-fiction newspaper column and a
fictional novel. At best, this factor is a draw. The balance of
the Polaroid factors therefore weighs in defendants' favor.
This, coupled with a lack of proof on the issue of irreparable
harm, compels dismissal of Christian's motion for preliminary
For the foregoing reasons, Christian's motion is denied. The
Clerk of the Court is instructed to close this motion and any
remaining open motions. Trial on Christian's claims will be held
as scheduled in September 2004.
THIS CONSTITUTES THE DECISION AND ORDER OF THE COURT.