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July 2003
(Issue No. 1: Decisions published June 16–30)
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Court Decision: |
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MARY DE LA TORRE BUENO & LAURA DE LA TORRE BUENO, Plaintiffs, - against - DANCE PERSPECTIVES FOUNDATION, INC. Defendant. |
Cowan, DeBaets, Abrahams & Sheppard LLP, for David B. Wolf, Plaintiffs.
David M. Israel, New York, New York, for Defendant.
OPINION AND ORDER
OWEN, District Judge:
Plaintiffs Mary and Laura de la Torre Bueno are the daughters of the late Jose Rollins de la Torre Bueno. Jose Rollins de la Torre Bueno was an editor at Wesleyan University Press ("WUP") and established its program in dance publishing. Defendant Dance Perspectives Foundation ("DPF") is a non-profit corporation founded in 1967 by Jose and four other individuals for purposes related to promoting and developing research and publication in the field of dance. When Jose retired from WUP in 1972, "The de la Torre Bueno Prize" was established in his honor and from then on, the prize was awarded almost annually, first by WUP and DPF jointly and then beginning in 1980 solely by DPF, to an author of a work of scholarship in dance.
Said daughter Mary Bueno was a member of the Board of Directors of DPF for most of the period between 1992 and 2002. For the last two years of her tenure, she had complaints [*2] about the way DPF was administering the prize and at a board meeting on March 9, 2002, the board asked for her resignation. By letter from her counsel dated March 12, Mary resigned and wrote that she was "very unsatisfied with the manner in which DPF has handled The de la Torre Bueno Prize ..." and she "insists that DPF immediately stop using her family name." By a letter to her from Theodore W. Striggles, counsel for DPF, dated April 12, the board accepted her resignation and advised that her "desire to have the Foundation ... stop using her family name is granted effective immediately" and that "past contributions designated for the prize have been segregated in an independent account [and] will continue but [Mary Bueno's] family name will no longer be associated in any way with the Foundation, its work or its prizes." n1
n1 While defendant contends that Mr. Striggles had no authority to send this letter on the board's behalf and that the board never saw this letter until this litigation, the letter itself indicates that copies were sent to at least two members of the board of DPF and fax transmittal pages indicate that a draft of this letter was also successfully sent to these individuals without response.
[*3]
After receiving this letter from Mr. Striggles, plaintiffs authorized the Society of Dance History Scholars ("SDHS") to administer "The de la Torre Bueno Prize" in the future, which SDHS announced in a press release dated May 25.
On July 18, DPF filed an application with the Patent and Trademark Office to register "The Jose Rollins de la Torre Bueno Prize in Dance Literature" as a service mark and on July 23 they sent a letter to SDHS advising them of the application and that they intended to begin awarding this prize later that year. This letter also asserted DPF's counsel's belief that SDHS's plan to award "The de la Torre Bueno Prize" would "usurp DPF's sole and exclusive rights and interests with regard to the prize, cause confusion within the dance community ... and, thus, is likely to cause DPF to sustain irreparable damage" and the letter threatened SDHS with an action for injunctive relief and damages if SDHS awarded its prize.
On July 31 DPF issued a press release in which it "announced the 2002 winners of the Jose Rollins de la Torre Bueno Prize in Dance Literature (formerly known as The de la Torre Bueno Prize) ...."
On August 9 plaintiffs' counsel wrote to DPF rejecting [*4] DPF's claim of rights and asserted that DPF was violating plaintiffs' rights and interfering with their business relation with SDHS and demanded that DPF cease and desist. On August 12 plaintiffs filed their own application with the Patent and Trademark Office to register "The de la Torre Bueno Prize" as a service mark.
While SDHS announced that it would not award its prize in 2002 because of the legal issues, DPF did announce on October 9 that it would award its prize on November 11.
At this point, both parties are before the Court seeking to preliminarily enjoin the other from issuing the prize. In order to receive a preliminary injunction, plaintiff must show "the likelihood of irreparable injury, and ... either (a) likelihood of success on the merits, or (b) sufficiently serious questions going to the merits and a balance of hardships tipping decidedly in the movant's favor." Tough Traveler, Ltd. v. Outbound Prods., 60 F.3d 964, 967 (2d Cir. 1995).
Plaintiff has shown that irreparable injury has already been suffered as SDHS, though authorized, will not currently award the "de la Torre Bueno Prize." I need take no position as DPF requests as to whether or not [*5] DPF was required to grant Mary Bueno's demand that DPF cease using her "family name" upon her resignation from the board. However, the April 12 letter from Mr. Striggles on behalf of DPF's board did grant Ms. Bueno's request, at which point Ms. Bueno was free to approach SDHS to ask them to administer the award in the future. For this reason, I am denying defendant's cross-motion in its entirety. Defendant has continued to use Ms. Bueno's family name after she withdrew her permission and after defendant acquiesced in that withdrawal. While DPF has changed the name of their prize, the new name is sufficiently "confusing" under the factors outlined in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961) (Friendly, J.) n2 to support a finding of a "likelihood of success on the merits." This coupled with the above-discussed showing of irreparable injury fully justifies a preliminary injunction in favor of plaintiffs at this time.
n2 These factors include "the strength of [the] mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant's good faith in adopting its own mark, the quality of defendant's product, and the sophistication of the buyers." Id.
[*6]
Submitted proposed injunction on notice.
Dated: New York, New York
June 17, 2003
RICHARD OWEN
United States District Judge
