Dallas Cowboys Cheerleaders, Inc v. Pussycat Cinema

[Plaintiff obtained an injunction against defendant Pussycat Cinema, Ltd., prohibiting the showing of the movie here; enforcement for contempt resulted in the arrest of people responsible for its showing. Plaintiff Dallas Cowboys Cheerleaders then moved for an injunction against defendant Zaffarano, the owner of Pussycat Cinema, prohibiting his showing of the defendants pornographic movie. This case is the trial court judges brief.]

Griesa, J.

The Dallas Cowboys Cheerleaders came into being in 1972. They have appeared at professional football games since that time. At these games they perform choreographed cheerleading and dance routines. Through these games they have become known to millions of persons attending the games and watching them on television. They have become a highly popular entertainment group. * * *

Plaintiff also licenses the use of the Dallas Cowboys Cheerleaders name and the distinctive uniform used by the cheerleaders for use in connection with certain products such as posters, playing cards, calendars, and T shirts. Plaintiff derives substantial revenues from this licensing.

Plaintiff has exercised substantial effort and care to promote the popularity of the Dallas Cowboys Cheerleaders and to give them a particular public image. The members of the 36-member group are carefully chosen. Thousands have applied for the small number of positions available. Not only must the cheerleaders have physical beauty, but they must also have dancing ability and they must represent various occupations which can be thought to constitute something of the cross-section of the American woman.

The Dallas Cowboys Cheerleaders must meet standards regarding moral character. For instance, no one is accepted who has been photographed for magazines such as Playboy or Hustler.

The Dallas Cowboys Cheerleaders are also known by the somewhat shorter names of Dallas Cheerleaders and Dallas Cowgirls. The uniform in which they appear and perform consists of a blue bolero blouse, white vest decorated with three blue five-pointed stars on each side of the front of the vest and white fringe at the bottom of the vest, tight white shorts with a belt decorated with blue stars, and white boots.

The evidence shows that the names Dallas Cowboys Cheerleaders, Dallas Cheerleaders, and Dallas Cowgirls have become identified in the public mind with plaintiff's cheerleader group. The evidence further shows that the Dallas Cowboys Cheerleaders uniform has come to be identified as the distinctive uniform of plaintiff's group, and is associated with the Dallas Cowboys Cheerleaders as distinguished from other entertainment groups. This identification and association have been acquired through use of the uniform in Dallas Cowboys Cheerleaders performances and appearances, both live and on television, over a period of years, and through the use of the uniform in the licensed products already described.

It appears that the "world premiere" of Debbie Does Dallas occurred at the Pussycat Cinema at 49th and Broadway, New York City, in October 1978. Plaintiff hoped that the film would promptly pass out of existence and that no court action would be required. However, the film kept showing in New York City, and plaintiff learned of the arrangements for distribution elsewhere. Therefore this action was commenced. * * *

The film Debbie Does Dallas lasts for 90 minutes. It has no other purpose than to display sex acts in minute detail. * * * The main character of the film is Debbie, played by one Bambi Woods. * * * Debbie has been selected to become a cheerleader in Dallas. Although there is no explicit reference to Dallas Cowboys Cheerleaders as being the group she is to join, this idea is clearly intended to be conveyed to the viewer. Debbie needs to finance her trip to Dallas, and for some unexplained reason her six friends wish to accompany her to Dallas, and also need money for their expenses. They decide to offer sexual services to various local businessmen. * * *

While the film was playing at the original theater, Pussycat Cinema, there was a large marquee, each side of which contained a picture of Debbie in the uniform closely resembling the Dallas Cowboys Cheerleaders uniform. Also, the marquee contained the title of the film and the slogan "STARRING EX DALLAS COWGIRL CHEERLEADER BAMBI WOODS." Below the marquee, on each side of the theater entrance, was a large poster showing Debbie in the same uniform appearing on the marquee, with even more emphasis upon the features of the Dallas Cowboys Cheerleaders uniform. On these posters there was a quotation from Sir Magazine, starting with the phrase "Cheers for X-Dallas Cowgirl Bambi Woods!" * * * Bambi Woods is not now, and never has been, a Dallas Cowboys Cheerleader.

Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a) provides:

Anyone who sends goods or services into commerce, knowingly using false representations regarding their origin, or anyone who knowingly transports such goods, is civilly liable to any person who is likely damaged thereby.

New York General Business Law 368-d, known as the Antidilution Law, provides:

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.

Plaintiff contends that the showing and advertising of Debbie Does Dallas involves the misappropriation of plaintiff's service marks and trademarks, and further creates a misleading and confusing association of Debbie Does Dallas with plaintiff's cheerleader group, in violation of Section 43(a) of the Lanham Act. Plaintiff further contends that the showing and advertising of Debbie Does Dallas dilutes the quality of plaintiff's trade name and service marks and trademarks in violation of New York General Business Law 368-d.

* * * The defense contends that the film is a parody or satire on female cheerleaders, and that, even though there is some reference to Dallas and some use of a uniform similar to that of the Dallas Cowgirls Cheerleaders in the film, no one could rationally believe that the film originated with plaintiff or is associated with plaintiff. The defense contends that the film violates neither of the statutes referred to, and is protected by the First Amendment. The defense argues that, even if certain elements of the advertising and promotion should be enjoined, the injunction should not reach the film itself.

We come to the question of whether plaintiff has a valid common law trademark and service mark in the uniform of the Dallas Cowboys Cheerleaders. The specific elements of the uniform their color, design, and ornamentation are distinctive and arbitrary, and thus susceptible of becoming a valid trademark and service mark. [Citations.] The evidence shows that the uniform has acquired a secondary meaning associated with the Dallas Cowboys Cheerleaders. [Citations.]

Defendant Zaffarano argues that color may not be trademarked. While a person cannot acquire a trademark by color alone, color taken in connection with other characteristics can be an element of a trademark. [Citations.]

I hold that the Dallas Cowboys Cheerleaders uniform is a valid trademark and service mark belonging to plaintiff. * * *

Section 43(a) of the Lanham Act makes illegal the use of "a false designation of origin" with respect to goods or services, "or any false description or representation, including words or other symbols tending falsely to describe or represent" the goods or services.

In considering the question of whether there is a tendency to deceive or a likelihood of confusion within the purview of the statute, it must be realized that the buying public includes the unthinking and the credulous. The public cannot be expected to analyze or carefully weigh what is presented to them in promotion and advertisements. The question is what is the likely ultimate impression, upon customers and potential customers of the relevant services and products which will be created by what is said and what is reasonably implied. * * *

In the copyright area, one means of accommodation between the conflicting interests [free speech v. copyright protection] is the "fair use" doctrine, which permits certain use of copyrighted material to be made for purposes such as news reporting, criticism, scholarship and parody and satire. [Citations.] * * *

Defendant Zaffarano argues that the doctrine of "fair use" is applicable in a trademark case and that the movie Debbie Does Dallas is a parody or satire not subject to legal restriction. * * *

I find that the movie is in no sense a parody or satire.

A parody is a work in which the language or style or another work is closely imitated or mimicked for comic effect or ridicule. A satire is a work which holds up the vices or shortcomings of an individual or institution to ridicule or derision, usually with an intent to stimulate change; the use of wit, irony or sarcasm for the purpose of exposing and discrediting vice or folly.

In the present case, there is no content, by way of story line or otherwise, which could conceivably place the movie Debbie Does Dallas within any definition of parody or satire. The purpose of the movie has nothing to do with humor; it has nothing to do with a commentary, either by ridicule or otherwise, upon the Dallas Cowboys Cheerleaders. * * *

The next question is whether there is a sufficient showing of likelihood of deception or confusion to bring the case within Section 43(a) of the Lanham Act. * * *

In the present case, I find that the movie Debbie Does Dallas and its advertising create a likelihood of confusing members of the public as to the sponsorship of the movie by the Dallas Cowboys Cheerleaders and the participation of a member of the group in the film. Consequently I hold that Debbie Does Dallas and its advertising violate Section 43(a) of the Lanham Act.

I also find that the showing and advertising of Debbie Does Dallas threaten irreparable harm to plaintiff. It is apparent that defendant Zaffarano, if not enjoined, will not only resume the showing of the film in New York, but will arrange for its distribution and exhibition throughout the country. It follows from the findings I have already made that these activities threaten widespread confusion in the public mind as to the association of plaintiff and its cheerleaders with pornographic films. The harm to plaintiff's reputation and standing is obvious.

I also hold that plaintiff has made out a valid case under the New York Anti-dilution Law. Defendant Zaffarano, and the others associated with him in the production, distribution and promotion of Debbie Does Dallas, have willfully misappropriated plaintiff's trade names and trademarks and service marks. If such activities are allowed to continue, there will inevitably be a dilution, or whittling down, of the reputation and good will associated with plaintiff's names and marks.

Certainly a preliminary injunction is warranted.

Case Questions -

Min 500 words

Do you agree that no one would rationally believe that the film originated with the Dallas Cowboys or the Dallas Cowgirls? If no one would rationally believe this, how could there be any damage suffered by, or any remedy, for the plaintiffs?

In creating judgment for the plaintiffs, is the Court actually infringing the right of free expression by the defendants? Its a free country, right? The First Amendment says that Congress shall make no law infringing the right of free speech or the press. How can you reconcile the federal and state statutes here with the First Amendment?

Plaintiffs case for dilution under New York State law requires them to prove likelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name. Even if society as a whole might be better off without films like Debbie Does Dallas, do you think that the narrative and evidence here show by a preponderance of the evidence that there is injury to the Dallas Cowboys business reputation? Dilution of the distinctive quality of the mark and/or trade name? Explain.

What is a preliminary injunction?