Opinion
05 Civ. 6461 (JSR).
June 27, 2006
MEMORANDUM
Before she embarked on her successful "solo" career, plaintiff Kimberly Jones, publicly known as "Lil' Kim," was a member of the rap group "Junior M.A.F.I.A.," along with, among others, defendant James Lloyd, publicly known as "Lil' Cease," and Christopher Wallace, publicly known as "Biggie Smalls" and "Notorious B.I.G." In November 2004, several years after Jones severed her association with Junior M.A.F.I.A., defendant Lloyd, along with April Maiya and A.J. Perez, produced, marketed, and distributed under the label "Ground Zero Entertainment" a documentary DVD titled "The Chronicles of Junior M.A.F.I.A." (the "DVD"), which featured the name "Lil' Kim" and Jones's likeness on its cover and promotional materials.
Jones then filed this action stating claims for unfair competition, false endorsement, and false advertising in violation of section 43(a) of the Lanham Act; invasion of privacy in violation of New York Civil Rights Law §§ 50-51; deceptive trade practices in violation of New York General Business Law § 349, et seq.; unfair competition in violation of New York common law and New York General Business Law § 360; and misappropriation and unjust enrichment under New York common law.
In addition to damages, Jones sought preliminary injunctive relief, and the Court, by Order dated November 7, 2005, granted certain of the relief and preliminarily enjoined defendants from making any use of any advertising or promotional material whatever that uses the mark "Lil' Kim." This Memorandum states the reasons for that Order.
To obtain a preliminary injunction, Jones must establish "(1) the likelihood of irreparable injury in the absence of such an injunction, and (2) either (a) likelihood of success on the merits or (b) sufficiently serious questions going to the merits to make them a fair ground for litigation plus a balance of hardships tipping decidedly toward the party requesting the preliminary relief." See Federal Express Corp. v. Federal Espresso, Inc., 201 F.3d 168, 173 (2d Cir. 2000). Although not persuaded that Jones is likely to prevail on certain of her claims, the Court finds that Jones is likely to prevail on her claim that the defendants' use of her trade name, "Lil' Kim," constitutes false endorsement in violation of the Lanham Act. Because the "Lil' Kim" mark appears prominently on certain of the covers of the DVD, as well as some of the promotional material, in a manner that suggests endorsement, "an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question," see, e.g., Chambers v. Time Warner, Inc., 282 F.3d 147, 155 (2d Cir. 2002) (quoting Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir. 1978)); EMI Catalogue Pshp. v. Hill, Holliday, Connors, Cosmopulos Inc., 2000 U.S. App. LEXIS 30761 at *10 (2d Cir. 2000) ("If consumers believe that the trademark owner sponsors or endorses the use of the challenged mark, the confusion requirement is satisfied.");see also Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961).
Defendants say that the use of "Lil' Kim" is simply descriptive of one of the prominent persons featured in the documentary. The doctrine of fair use, codified in the Lanham Act at 15 U.S.C. § 1115(b) (4), permits use of a protected mark by others to describe certain aspects of the user's own goods, see Car-Freshner Corp. v. S.C. Johnson Son, Inc., 70 F.3d 267, 270 (2d Cir. 1995), but is inapplicable here, as the Court finds (for purposes of preliminary injunctive relief only) that the use here strongly suggests endorsement and, in any event, was not in good faith, see EMI Catalogue Pshp., 2000 U.S. App. LEXIS 30761 at *24 ("a lack of good faith [is equated] with the subsequent user's intent to trade on the good will of the trademark holder by creating confusion as to source or sponsorship."). For similar reasons, defendants' use does not meet the requirements of so-called "nominative" fair use, which permits use of a mark to identify or describe the plaintiff's product. See, e.g., New Kids on the Block v. News America Pub., Inc., 971 F.2d 302, 308 (9th Cir. 1992) ("But, where the defendant uses a trademark to describe the plaintiff's product, rather than its own, we hold that a commercial user is entitled to a nominative fair use defense provided he meets the following three requirements: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder."); see also Chambers v. Time Warner, 123 F. Supp. 2d 198 (S.D.N.Y. 2000).
Jones's image, on the other hand, does not imply endorsement of the DVD, and is therefore not entitled to protection under the Lanham Act. See Pirone v. MacMillan, Inc., 894 F.2d 579 (2d Cir. 1990) ("a photograph of a human being, unlike a portrait of a fanciful cartoon character, is not inherently 'distinctive' in the trademark sense of tending to indicate origin.").
In a case brought under the Lanham Act, "a showing of likelihood of confusion establishes both a likelihood of success on the merits and irreparable harm." Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 73 (2d Cir. 1988). Consequently, for the foregoing reasons, the Court entered its order of November 7, 2005, granting a preliminary injunction in this matter.
Having found that Jones is likely to succeed on her trademark infringement claims, the Court need not reach her alternative argument that defendants' use constitutes false advertising in violation of the Lanham Act. See, e.g., 15 U.S.C. § 1125(a) (1) (B); Societe des Hotels Meridien v. LaSalle Hotel Operating P'ship, L.P., 380 F.3d 126, 132 (2d Cir. 2004).
SO ORDERED.