Dallas Cowboys Cheerleaders. Inc. v. Pussycat Cinema Ltd.

Name: Dallas Cowboys Cheerleaders. Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979)

Facts: Pussycat Cinema makes a pornographic film entitled “Debbie Does Dallas” with a scene depicting one its stars in a uniform that is “strikingly similar” to that worn by the Dallas Cowboys Cheerleaders. In the scene, while clad in the uniform, the star performs various sexual activities. The film was advertised with posters of the star in the allegedly infringing uniforms with the captions such as “Starring Ex Dallas Cowboys Cheerleader Bambi Woods” and “You’ll do more than cheer for this X Dallas Cheerleader.” Plaintiff sued for alleged trademark infringement under §43(a) of the Lanham Act, unfair competition, and dilution of trademark under New York Law.

Procedural Posture: The United States District Court for the Southern District of New York granted plaintiff’s preliminary injunction prohibiting defendant from distributing or exhibiting the film. Defendants’ motion to stay the injunction and an order for expedited appeal was granted by this court. This court dissolved the stay and reinstated the preliminary injunction following argument of the case.

Issue: Whether a “substantially similar” depiction of a valid trademark in an adult film constitutes trademark infringement.

Holding: Yes, because the uniforms worn in the movie and shown in the marquee (already determined to be valid trademarks) closely resemble plaintiff’s uniform and the public was likely to identify it as plaintiff’s uniform.

Analysis: First, the court determined the preliminary issue of whether plaintiff had a valid trademark in its cheerleader uniform. Disagreeing with defendant’s assertion that the uniform is purely functional, the court stated that “it is well established that, if the design of an item is nonfunctional and has acquired secondary meaning, the design may become a trademark even if the item itself is functional.” The court also stated the “decorative aspects” were nonfunctional. The combination of white boots, white shorts, blue blouse, and white star-studded vest and belt is “an arbitrary design which makes the other wise functional uniform trademarkable.”

The court then moved on to the issue of this case, as stated above. The court said the confusion requirement of the Lanham Act was read too narrowly by the defendants, stating that “in order to be confused, a consumer need not believe that the owner of the mark actually produced the item and placed it on the market.” It is enough that the public believes the owner of the mark sponsored or approved of the use of the trademark to satisfy the confusion requirement. In this case, the court found that the “uniform depicted in ‘Debbie Does Dallas’ unquestionably brings to mind the Dallas Cowboys Cheerleaders.”

In responding to the defendant’s assertion that the fair use doctrine should apply to trademark infringement, the court did not reach that question, finding that defendants use did not qualify as parody or any other form of fair use. The court also found that no other first amendment doctrine protected defendant.

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