The opinion of the court was delivered by: Richard J. Holwell
MEMORANDUM OPINION & ORDER
Plaintiff Medici Classics Productions LLC ("Medici Classics") seeks a preliminary injunction to protect its registered trademark, "Medici Classics Productions," from alleged infringement by defendant Naxos of America, Inc. ("Naxos"). Naxos is the U.S. distributor of CDs and DVDs produced by co-defendants Medici Group LLC and its affiliates (collectively, the "Medici Group") and bearing the marks "Medici Arts" and "Medici Masters." For the reasons set forth below, the Court finds that plaintiff has failed to satisfy the prevailing standards for issuance of a preliminary injunction and, therefore, that its motion should be denied.
Plaintiff is a small recording company that was formed by its principal, Jerome Rose, in 2003 to record and release his piano performances of various classical pieces. Declaration of Jerome Rose dated June 2, 2008 ("Rose Dec."), ¶ 10. Until 2002, Rose, a well-known concert pianist and a professor of music at the Mannes College of Music, released his recordings through various unaffiliated production companies including Vox, SPJ Music and Newport Classic. (Transcript of Hearing dated October 23, 2008 ("Tr. I") at 8-9. Due to adverse developments in the music industry, Rose began his own record label, Monarch Classic Productions in 2002 (Tr. I at 10). He thereafter learned of the existence of another record company, "Monarch Records" that produced country western music, and to avoid any unpleasantness formed Medici Classics Productions in its stead. (Tr. I at 15-17.) A trademark registration filing for Medici Classics Productions was made in 2004 but lapsed; the application was refilled in 2008 and the mark was issued on January 22, 2008. (Transcript of Hearing dated October 30, 2008 ("Tr. II") at 2-3.
Since January 2003 plaintiff has sold under the Medici Classics mark 494 copies of five CD recordings by Mr. Rose and 335 copies of two DVD performance for gross revenues of approximately $7,000. Affidavit of Daniel J. Kornstein dated September 29, 2008 ("Korenstein Aff."), Ex. I. During this period, Mr. Rose has continued to sell his inventory of recordings on the Monarch Classics label.*fn1
In or around June of 2007 Mr. Rose first became aware of the Medici Group and their use of allegedly infringing marks through a phone call from a self-described producer of "Medici Masters" CDs. Rose Dec. ¶21. On August 3, 2007, Rose received an e-mail from defendant EuroArts Medien GmbH's general counsel inquiring whether he had "any objection" to their use of the marks "Medici Masters" and "MediciArts." He did. Discussions between the parties' counsel followed. Id. ¶ 22-32. They were unsuccessful and plaintiff filed suit on November 9, 2007.
The Medici Group defendants produce and market CDs, DVDs, documentary films and audiovisual content for broadcast over the internet. Declaration of Bernd Hellthaler dated September 26, 2008 ("Hellthaler Dec.") ¶¶ 6-12; Declaration of John Pattrick dated September 26, 2008 ("Pattrick Dec.") ¶ 3-9; Declaration of Hervé Boissière dated September 26, 2008 ("Boissière Dec.") ¶ 15-26. They release a relative broad range of orchestral music; chamber music and ballets including archived recordings by renowned artists such as Toscanini, Rostropovich and Bernstein. They do not, however, release recordings by Jerome Rose. The Medici Group began distributing CDs and DVDs bearing the marks Medici Masters, Medici Arts and medici.tv in the U.S. in early 2007. Defendant Naxos is the U.S. distributor of these recordings. In the past 18 months Naxos has sold approximately 42,000 DVDs and 20,000 CDs bearing the allegedly infringing marks.
To obtain preliminary relief against Naxos,*fn2 plaintiff must make the familiar showing of (1) irreparable harm and (2) either (a) a likelihood of success on the events or
(b) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward plaintiff. Brennan's Inc. v. Brennan's Resaurant, LLC, 360 F.3d 125, 129 (2d Cir. 2004). In a trademark infringement action, proof of a likelihood of confusion between defendants' and plaintiff's products establishes both a likelihood of success on the merits and irreparable harm. Id.
In order to determine if there is a "likelihood of confusion," courts look to the Polaroid factors which include: (1) the strength of the mark; (2) the degree of similarity between the two marks; (3) the competitive proximity of the products; (4) the likelihood that the prior owner will bridge the gap between the products; (5) actual confusion; (6) the defendant's good faith in adopting its own mark; (7) the quality of defendant's product; and (8) the sophistication of the buyers. Polaroid Corp. v. Polarad Electronics Corp., 297 F.2d 492, 495 (2d Cir. 1961). Each Polaroid factor must be considered in the context of the other factors, and no single factor is dispositive of the likelihood of confusion. See Nikon, Inc. v. Ikon Corp., 803 F.Supp. 910, 915 (S.D.N.Y. 1992). Additionally, all factors "must be evaluated in the context of how it bears on the ultimate question of likelihood of confusion as to the source of the product." Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 872 (2d Cir. 1986).
Turning to the first factor, the strength of the trademark "refers to its ability to identify the source of the goods being sold under its aegis." Brennan's Inc., 360 F.3d at 130. "There are two components of a mark's strength: its inherent distinctiveness and the distinctiveness it has acquired in the marketplace." Id. at 130-31. "[C]courts classify a mark in one of four categories in increasing order of inherent distinctiveness: generic, descriptive, suggestive and arbitrary." Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 744 (2d Cir. 1998). Distinctiveness in the marketplace turns on the recognition of the plaintiffs' mark in the relevant marketplace. See Brennan's Inc., 360 F.3d at 132.
Regarding inherent distinctiveness, Medici Classics is properly categorized as a "suggestive" mark as the mark is not directly descriptive but suggests a quality or qualities of the product-here the suggestion of the Renaissance and patrons of the fine arts-that requires the use of "imagination, thought and ...