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NFL Properties v Playoff Inc

National Football League Properties v. Playoff, Inc, 808 F.Supp. 1288 (N.D.Tex 1992)

Facts: NFL is alleging trademark infringement. “In the spring of 1992, Defendant began negotiations with the Players Association to use the names, likenesses and data of Association players. These negotiations ended in the granting of a license, for which Defendant has paid $1.9 million; there are two extensions to follow, one at $1.2 million and another at $1.3 million. In late August of 1992, Defendant approached Plaintiff and sought a license to use the names, likenesses and personal data of Plaintiff's players and to use trademarked NFL logos. It was Defendant's intention to display on trading cards the players for whom it was licensed along with NFL team logos depicted separately from the players on the cards. Players would also appear in their team uniforms complete with any NFL or team marks that are attached to the uniforms. Plaintiff, however, declined to grant Defendant a license for either the names and likenesses or for the NFL marks. Defendant then abandoned intentions to use NFL team logos depicted separately from the actual players and changed the appearance of its cards, removing the TEAM NFL logo, adding disclaimers to packaging and removing team names. Promotional cards do, however, continue to display players in their uniforms, although Defendant has tried to minimize the appearance of team and NFL logos on the uniforms and helmets. Defendant displays only players for whom it has been licensed through the Players Association and does not display players licensed through Plaintiff. Plaintiff claims that displaying players in their uniforms at all constitutes infringement, while Defendant characterizes the depictions as incidental or fair use. Defendant has distributed promotional materials for its cards, has received orders and intends to ship its cards on December 21, 1992.”#

Procedural History: Hearing for Temporary Restraining Order was held and the order was denied. This is now the hearing for the motion for a preliminary injunction.

Issue: The Court must determine if the plaintiff can satisfy the standards for the granting of such extraordinary relief.

Law: “Specifically, Plaintiff must show that it is substantially likely to succeed on the merits of its claim, that the Court's failure to issue the injunction poses a substantial threat of irreparable injury, that the threatened injury outweighs any damage that the injunction's issuance might cause to the opposing party and that the injunction's issuance will not undermine the public interest.” To receive relief, plaintiff must satisfy all four factors.
a. Likelihood of Success
Trademark law determines the likelihood of success in this case. First, there must be a protectable mark and, second, if there is a likelihood of confusion. The NFL has acquired secondary meaning and several courts have determined their marks being strong. To determine likelihood of confusion, one considers a variety of factors, including the strength of a trademark at issue, similarity of design, similarity of product, identity of retail outlets and purchasers, identity of advertising media used, the defendant's intent and actual confusion. The first factor, the strength of the mark, goes in NFL favor because their marks are strong. The second factor goes in favor of NFL as well, because the logos being used in the cards are not similar marks, but they are the actual marks. The third factor, similarity of design, also goes in favor of the NFL. While their cards are somewhat different than other manufacturers of cards, “they are at least substantially similar to other cards.” Defendants’ cards are sold and marketed through the same channels of trade and therefore this factor also favors the NFL. The advertising will be conducted through the same media as well. There is no bad intent on behalf of the defendant, as evidenced by their intent to obtain a license from the NFL. There is no evidence of actual confusion yet, because the cards have no gone on the market. Defendant raises a number of defenses, including First Amendment, but the Court concluded that these defenses did not mitigate against finding that the Plaintiff has demonstrated a likelihood of success on the merits. The plaintiff has satisfied the first prong of the preliminary injunction test.
b. Irreparable Harm
Irreparable injury is a showing that money damages cannot remedy the harm. Here the court finds this factor in favor of the defendant because the defendant would be able to pay the monetary damages, and any damage caused could be remedied by the monetary reward.
c. Harm from Injunction Resulting to Defendant
“The Court finds that harm resulting to Defendant would be substantial, destructive, perhaps fatal to Defendant as Defendant now exists. Defendant's president attested at the TRO hearing that such an injunction would force Defendant from the football trading card market and that Defendant would probably be forced to change its name. On balance, the Court determines that the harm that would accrue to Defendant should an injunction issue would greatly outweigh harm resulting to Plaintiff should the injunction not issue.”

Holding: Motion for preliminary injunction denied.

Reasoning: While the plaintiff was able to show likelihood of success on the merits, it could not satisfy the rest of the test for a preliminary injunction. Plaintiff would not suffer irreparable harm and if a preliminary injunction were issued wrongly the defendant would suffer a great harm.










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