Dec., P 37. Jukebox alleges Defendants have recently promoted their program as the "ORIGINAL MAKE BELIEVE BALLROOM." Complaint, P 31. WVNJ-AM's MAKE BELIEVE BALLROOM program is hosted by disc jockey Bill Owen who, until February 1996, had been employed at Jukebox where he was the on-air host of Jukebox's MAKE BELIEVE BALLROOM program. Turro Dec., PP 36-37; Complaint, P 32.
Jukebox asserts WVNJ-AM's use of the alleged service marks and hiring of Jukebox employees has caused confusion. The evidence presented by Jukebox of this alleged confusion consists of three examples. First, according to an employee of Jukebox, Dara Hershman, General Manager of the John Harms Center for the Arts, inquired "whether or not Jukebox had the right to use the service mark MAKE BELIEVE BALLROOM, because she had seen WVNJ[AM]'s use of the [same] service mark." Epstein Dec., P 3. According to the president of Jukebox, Geoffrey Moore of the Bergen County Museum of Arts and Science "expressed concern that WVNJ[-AM] ... was also using the service mark MAKE BELIEVE BALLROOM." Turro Dec., P 47. Bruce Emra, radio listener, stated that WVNJ-AM and Jukebox "seemed so similar" because they have the "same big band format ... and also broadcast the same service marks." Emra Dec., PP 11, 14.
D. Efforts By Jukebox to Stop Defendants' Use of the Alleged Service Marks
On 20 March 1996, Jukebox wrote Defendants requesting they cease and desist from using the alleged service marks. Manna Dec., P 2 and Exh. A. On 21 March 1996, Defendants requested Jukebox provide documentation of service mark registration for the two phrases. Manna Dec., P 2 and Exh. B. On 22 March 1996, Jukebox repeated its demand Defendants cease and desist from using the alleged service marks without providing documentation of service mark registration. Manna Dec., P 3 and Exh. C. On 27 March 1996, Defendants informed Jukebox it considered its claims to exclusive use of the alleged service marks without basis in law or fact. Manna Dec., P 4 and Exh. D. Defendants have not stopped using the alleged service marks.
Complaint, P 36.
Defendants contend countless radio stations, both locally and across the nation, refer to themselves as that market's "Hometown Radio Station." Warshaw Aff., P 6. Defendants also contend the phrase "MAKE BELIEVE BALLROOM" is identified with big band music through common usage. Id., P 8. Defendants point to several examples of the use of the phrase "MAKE BELIEVE BALLROOM" or similar phrases to describe big band music: a song entitled "It's Make Believe Ballroom Time", a radio program broadcast since the 1970s to portions of New Jersey entitled "America's Ballroom", a Saturday night music program in which songs are introduced with the phraseology "coming in from the make believe ballroom, here's a song entitled ...." broadcast into the Bergen County market from radio station WQEW in New York City and a radio station in Boca Raton, Florida which uses the phrase "MAKE BELIEVE BALLROOM." Id., PP 9-13.
On 15 April 1996, Jukebox filed the Complaint initiating this action. Jukebox presently seeks a temporary restraining order and a preliminary injunction pursuant to Rule 65 of the Federal Rules of Civil Procedure enjoining the alleged service mark infringement, unfair competition and passing off under section 43(a) of the Lanham Act, as amended 15 U.S.C. § 1125(a), N.J.S.A. 56:4-1 and state common law.
A. Preliminary Injunction and Temporary Restraining Order Standards
In this Circuit, a preliminary injunction is issued upon review four factors:
(1) whether the movant has shown a reasonable probability of success on the merits; (2) whether the movant will be irreparably injured by denial of the relief; (3) whether granting preliminary relief will result in even greater harm to the nonmoving party; and (4) whether granting the preliminary relief will be in the public interest.
Gerardi v. Pelullo, 16 F.3d 1363, 1373 (3d Cir. 1994); see also S & R Corp. v. Jiffy Lube Int'l, Inc., 968 F.2d 371, 374 (3d Cir. 1992); Merchant & Evans. Inc. v. Roosevelt Bldg. Prods. Co., 963 F.2d 628, 632 (3d Cir. 1992); Opticians Ass'n of Am. v. Independent Opticians of Am., 920 F.2d 187, 191-92 (3d Cir. 1990); Tyco Indus., Inc. v. Tiny Love, Ltd., 914 F. Supp. 1068, 1071 (D.N.J. 1996); Atlantic Coast Demolition & Recycling, Inc. v. Board of Chosen Freeholders, 893 F. Supp. 301, 307 (D.N.J. 1995); Bakery Drivers & Salesmen Local 194 v. Harrison Baking Group, Inc., 869 F. Supp. 1168, 1176 (D.N.J. 1994); Gruntal & Co. v. Steinberg, 854 F. Supp. 324, 331 (D.N.J.), aff'd, 46 F.3d 1116 (3d Cir. 1994) (table).
Of these four requirements, the Circuit has placed particular weight on the probability of irreparable harm and the likelihood of success on the merits, stating: "'We cannot sustain a preliminary injunction ordered by the district court where either or both of these prerequisites are absent.'" Hoxworth v. Blinder, Robinson & Co., 903 F.2d 186, 197 (3d Cir. 1990) (quoting In re Arthur Treacher's Franchisee Litig., 689 F.2d 1137, 1143 (3d Cir. 1982)); see also Instant Air Freight Co. v. C.F. Air Freight, Inc., 882 F.2d 797, 800 (3d Cir. 1989); Morton v. Beyer, 822 F.2d 364, 367 (3d Cir. 1987).
Significantly, the Circuit has repeatedly stated that a "grant of injunctive relief is an extraordinary remedy which should be granted only in limited circumstances." Frank's GMC Truck Center, Inc. v. General Motors Corp., 847 F.2d 100, 102 (3d Cir. 1988); accord Chez Sez III Corp. v. Union, 945 F.2d 628, 634 (3d Cir. 1991), cert. denied, 503 U.S. 907, 117 L. Ed. 2d 493, 112 S. Ct. 1265 (1992); Instant Air, 882 F.2d at 800; United States v. City of Philadelphia, 644 F.2d 187, 191 n.1 (3d Cir. 1980); see also E.B. v. Poritz, 914 F. Supp. 85, 90 (D.N.J. 1996) ("'there is no power the exercise of which is more delicate, which requires greater caution, deliberation, and sound discretion, or more dangerous in a doubtful case, than the issuing [of] an injunction'") (quoting Falter v. Veterans Admin., 632 F. Supp. 196, 201 (D.N.J. 1986)); Bakery Drivers, 869 F. Supp. at 1177; Gruntal & Co., 854 F. Supp. at 332. An injunction should be issued only if the plaintiff produces evidence sufficient to convince the court all four factors favor preliminary relief. AT&T v. Winback & Conserve Program, Inc., 42 F.3d 1421, 1427 (3d Cir. 1994), cert. denied, 131 L. Ed. 2d 757, U.S. , 115 S. Ct. 1838 (1995); S & R Corp., 968 F.2d at 374; Opticians Ass'n of Am., 920 F.2d at 192; accord E.B., 914 F. Supp. at 90. The grant or denial of a preliminary injunction lies within "the sound discretion of the district judge, who must balance all of these factors in making a decision." Kershner v. Mazurkiewicz, 670 F.2d 440, 443 (3d Cir. 1982); accord Atlantic Coast Demolition, 893 F. Supp. at 307.
In order to obtain a temporary restraining order, the moving party must demonstrate immediate and irreparable injury, loss, or damage will result to the applicant before the adverse party or that party's attorney can be heard in opposition. Fed.R.Civ.P. 65(b). As set forth below, Jukebox has not shown any violation of its statutory or common law rights and therefore cannot demonstrate any injury, loss or damage.
B. Infringement Under Section 43(a) of the Lanham Act Section 43(a) of the Lanham Act provides:
Any person who, on or in connection with any goods or services ... uses in commerce any word, term, name, symbol or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which - (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities - shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.