604 F.

2d 200
203 U.S.P.Q. 161, 5 Media L. Rep. 1814

DALLAS COWBOYS CHEERLEADERS, INC., PlaintiffAppellee,

v.
PUSSYCAT CINEMA, LTD. and Michael Zaffarano,
Defendants-Appellants.
No. 950, Docket 79-7179.

United States Court of Appeals,

Second Circuit.
Argued April 6, 1979.
Decided Aug. 14, 1979.

Herbert S. Kassner, New York City (Kassner & Detsky, P. C., Ralph J.
Schwarz, Jr., New York City, of counsel), for defendants-appellants.
Asa Rountree, New York City (Debevoise, Plimpton, Lyons & Gates,
Richard I. Janvey, Nicole A. Gordon, New York City, of counsel), for
plaintiff-appellee.
Before MULLIGAN, TIMBERS and VAN GRAAFEILAND, Circuit
Judges.
VAN GRAAFEILAND, Circuit Judge:

This is an appeal from orders of the United States District Court for the
Southern District of New York granting plaintiff's motions for a preliminary
injunction prohibiting Pussycat Cinema, Ltd., and Michael Zaffarano from
distributing or exhibiting the motion picture "Debbie Does Dallas." On March
14 this Court granted defendants' motion to stay the injunction and ordered an
expedited appeal. The case was argued before us on April 6, following which
we dissolved the stay and reinstated the preliminary injunction. We now affirm
the orders of the district court.
Plaintiff in this trademark infringement action is Dallas Cowboys Cheerleaders,

Inc., a wholly owned subsidiary of the Dallas Cowboys Football Club, Inc.
Plaintiff employs thirty-six women who perform dance and cheerleading
routines at Dallas Cowboys football games. The cheerleaders have appeared
frequently on television programs and make commercial appearances at such
public events as sporting goods shows and shopping center openings. In
addition, plaintiff licenses others to manufacture and distribute posters,
calendars, T-shirts, and the like depicting Dallas Cowboys Cheerleaders in their
uniforms. These products have enjoyed nationwide commercial success, due
largely to the national exposure the Dallas Cowboys Cheerleaders have
received through the news and entertainment media. Moreover, plaintiff has
expended large amounts of money to acquaint the public with its uniformed
cheerleaders and earns substantial revenue from their commercial appearances.

At all the football games and public events where plaintiff's cheerleaders
appear and on all commercial items depicting the cheerleaders, the women are
clad in plaintiff's distinctive uniform. The familiar outfit consists of white vinyl
boots, white shorts, a white belt decorated with blue stars, a blue bolero blouse,
and a white vest decorated with three blue stars on each side of the front and a
white fringe around the bottom. In this action plaintiff asserts that it has a
trademark in its uniform and that defendants have infringed and diluted that
trademark in advertising and exhibiting "Debbie Does Dallas."

Pussycat Cinema, Ltd., is a New York corporation which owns a movie theatre
in New York City; Zaffarano is the corporation's sole stockholder. In
November 1978 the Pussycat Cinema began to show "Debbie Does Dallas," a
gross and revolting sex film whose plot, to the extent that there is one, involves
a cheerleader at a fictional high school, Debbie, who has been selected to
become a "Texas Cowgirl."1 In order to raise enough money to send Debbie,
and eventually the entire squad, to Dallas, the cheerleaders perform sexual
services for a fee. The movie consists largely of a series of scenes graphically
depicting the sexual escapades of the "actors". In the movie's final scene
Debbie dons a uniform strikingly similar to that worn by the Dallas Cowboys
Cheerleaders and for approximately twelve minutes of film footage engages in
various sex acts while clad or partially clad in the uniform. Defendants
advertised the movie with marquee posters depicting Debbie in the allegedly
infringing uniform and containing such captions as "Starring Ex Dallas Cowgirl
Cheerleader Bambi Woods" and "You'll do more than cheer for this X Dallas
Cheerleader."2 Similar advertisements appeared in the newspapers.

Plaintiff brought this action alleging trademark infringement under section

43(a) of the Lanham Act (15 U.S.C. 1125(a)), unfair competition, and dilution
of trademark in violation of section 368-d of the New York General Business

Law. The district court, in its oral opinion of February 13, 1979, found that
"plaintiff ha(d) succeeded in proving by overwhelming evidence the merits of
each one of its contentions." Defendants challenge the validity of all three
claims.
6

A preliminary issue raised by defendants is whether plaintiff has a valid

trademark in its cheerleader uniform. 3 Defendants argue that the uniform is a
purely functional item necessary for the performance of cheerleading routines
and that it therefore is not capable of becoming a trademark. We do not quarrel
with defendants' assertion that a purely functional item may not become a
trademark. See In re Honeywell, Inc., 532 F.2d 180, 182-83 (C.C.P.A.1976).
However, we do not agree that all of characteristics of plaintiff's uniform serve
only a functional purpose or that, because an item is in part incidentally
functional, it is necessarily precluded from being designated as a trademark.
Plaintiff does not claim a trademark in all clothing designed and fitted to allow
free movement while performing cheerleading routines, but claims a trademark
in the particular combination of colors and collocation of decorations that
distinguish plaintiff's uniform from those of other squads.4 Cf. Socony Vacuum
Oil Co. v. Rosen, 108 F.2d 632, 636 (6th Cir. 1940); John Wright, Inc. v.
Casper Corp., 419 F.Supp. 292, 317 (E.D.Pa.1976). It is well established that, if
the design of an item is nonfunctional and has acquired secondary meaning,5
the design may become a trademark even if the item itself is functional. Ives
Laboratories, Inc. v. Darby Drug Co., 601 F.2d 631, 642 (2d Cir. 1979); Truck
Equipment Service Co. v. Fruehauf Corp., 536 F.2d 1210, 1215 (8th Cir.), Cert.
denied, 429 U.S. 861, 97 S.Ct. 164, 50 L.Ed.2d 139 (1976). Moreover, when a
feature of the construction of the item is arbitrary, the feature may become a
trademark even though it serves a useful purpose. In re Deister Concentrator
Co., 289 F.2d 496, 506, 48 C.C.P.A. 952 (1961); Fotomat Corp. v. Cochran,
437 F.Supp. 1231 (D.Kan.1977). Thus, the fact that an item serves or performs
a function does not mean that it may not at the same time be capable of
indicating sponsorship or origin, particularly where the decorative aspects of
the item are nonfunctional. See In re Penthouse International Ltd., 565 F.2d
679, 681 (Cust. & Pat.App.1977). See also In re World's Finest Chocolate, Inc.,
474 F.2d 1012 (Cust. & Pat.App.1973). In the instant case the combination of
the white boots, white shorts, blue blouse, and white star-studded vest and belt
is an arbitrary design which makes the otherwise functional uniform
trademarkable.6

Defendants argue that Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84
S.Ct. 784, 11 L.Ed.2d 661 (1964), and Compco Corp. v. Day-Brite Lighting,
Inc., 376 U.S. 234, 84 S.Ct. 779, 11 L.Ed.2d 669 (1964), preclude a finding that
plaintiff's uniform is a trademark. We disagree. In Sears-Compco the Court

held merely that a state may not, through its law banning unfair competition,
undermine the federal patent laws by prohibiting the copying of an article that
is protected by neither a federal patent nor a federal copyright. For the Court to
have held otherwise would have been to allow states to grant a monopoly to a
producer where the federal government had specifically determined that free
competition should prevail. This consideration does not apply in a trademark
infringement action where the plaintiff does not assert exclusive rights to the
sale of a product but merely to a mark indicating its origin or sponsorship. The
question presented therefore is one of trademark law, and it is clear that SearsCompco did not redefine the permissible scope of the law of trademarks insofar
as it applies to origin and sponsorship. See Sears, Roebuck & Co. v. Stiffel,
supra, 376 U.S. at 232, 84 S.Ct. 784; Ives Laboratories, Inc. v. Darby Drug Co.,
supra, at 642 nn. 13-14; Flexitized, Inc. v. National Flexitized Corp., 335 F.2d
774, 781 n. 4 (2d Cir. 1964), Cert. denied, 380 U.S. 913, 85 S.Ct. 889,13
L.Ed.2d 799 (1965); Rolls-Royce Motors Ltd. v. A & A Fiberglass, Inc.,428
F.Supp. 689, 692 (N.D.Ga.1977).
8

Having found that plaintiff has a trademark in its uniform, we must determine
whether the depiction of the uniform in "Debbie Does Dallas" violates that
trademark. The district court found that the uniform worn in the movie and
shown on the marquee closely resembled plaintiff's uniform and that the public
was likely to identify it as plaintiff's uniform. Our own comparison of the two
uniforms convinces us that the district court was correct,7 and defendants do not
seriously contend that the uniform shown in the movie is not almost identical
with plaintiff's. Defendant's contention is that, despite the striking similarity of
the two uniforms, the public is unlikely to be confused within the meaning of
section 43(a) of the Lanham Act.

Defendants assert that the Lanham Act requires confusion as to the origin of the
film, and they contend that no reasonable person would believe that the film
originated with plaintiff. Appellants read the confusion requirement too
narrowly. 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. See Syntex
Laboratories, Inc. v. Norwich Pharmacal Co., 437 F.2d 566, 568 (2d Cir. 1971);
Boston Professional Hockey Association v. Dallas Cap & Emblem Mfg., Inc.,
510 F.2d 1004, 1012 (5th Cir.), Cert. denied, 423 U.S. 868, 96 S.Ct. 132, 46
L.Ed.2d 98 (1975). The public's belief that the mark's owner sponsored or
otherwise approved the use of the trademark satisfies the confusion
requirement. In the instant case, the uniform depicted in "Debbie Does Dallas"
unquestionably brings to mind the Dallas Cowboys Cheerleaders. Indeed, it is
hard to believe that anyone who had seen defendants' sexually depraved film
could ever thereafter disassociate it from plaintiff's cheerleaders. This

association results in confusion which has "a tendency to impugn (plaintiff's

services) and injure plaintiff's business reputation . . . ." See Coca-Cola Co. v.
Gemini Rising, Inc., 346 F.Supp. 1183, 1189 (E.D.N.Y.1972). In the Coca-Cola
case the defendant had manufactured a poster showing the familiar red and
white Coca-Cola design with the word "Cocaine" substituted for "Coca-Cola".
As in this case, the defendant there argued that no reasonable purchaser would
be confused by the poster; however the court held that a person of average
intelligence could believe "that defendant's poster was just another effort . . . by
plaintiff to publicize its product," although in a distasteful way. Id. at 1190. In
another case, a similarity between the plaintiff's and the defendant's trade
slogans was held to confuse the public and "(threaten) injury to the good name
of the first user." See Chemical Corp. of America v. Anheuser-Busch, Inc., 306
F.2d 433 (5th Cir. 1962), Cert. denied, 372 U.S. 965, 83 S.Ct. 1089, 10 L.Ed.2d
129 (1963). There, the defendant advertised its insecticide by changing
plaintiff's slogan "Where there's life, there's Bud" to the slogan "Where there's
life, there's bugs." The court's reasoning in upholding the finding of unfair
competition is equally applicable here:
10 gist of this action is that the plaintiff has a property interest in the slogan, built
The
up at great expense, and that it and its products are favorably known as a result of its
use of this property right and that the defendant, with full knowledge of the right and
with the purpose of appropriating some of the value engendered in the minds of the
public by its use has used, and proposes further to make use of, a deceptively similar
slogan in a manner that will bring direct financial loss to the plaintiff, both by reason
of confusing the source of the defendant's product, and by reason of the peculiarly
unwholesome association of ideas when the word "bugs" was substituted in the
slogan for the word "Bud," referring to a food product.
11

Id. at 437.

12

Plaintiff expects to establish on trial that the public may associate it with
defendants' movie and be confused into believing that plaintiff sponsored the
movie, provided some of the actors, licensed defendants to use the uniform, or
was in some other way connected with the production. The trademark laws are
designed not only to prevent consumer confusion but also to protect "the
synonymous right of a trademark owner to control his product's reputation."
James Burrough Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266, 274 (7th Cir.
1976) (Markey, C. J.). The district court did not err in holding that plaintiff had
established a likelihood of confusion within the meaning of the Lanham Act
sufficient to entitle it to a preliminary injunction and that plaintiff had a right to
preliminary relief on its claims of unfair competition and dilution.8 See id. at
274 n. 16.

13

14

Defendants assert that the copyright doctrine of "fair use" should be held
applicable to trademark infringement actions and that we should apply the
doctrine to sanction their use of a replica of plaintiff's uniform. Fair use is "a
'privilege in others than the owner of a copyright to use the copyrighted
material in a reasonable manner without his consent . . . .' " Rosemont
Enterprises, Inc. v. Random House, Inc., 366 F.2d 303, 306 (2d Cir. 1966)
(quoting Ball, The Law of Copyright and Literary Property 260 (1944)), Cert.
denied, 385 U.S. 1009, 87 S.Ct. 714, 17 L.Ed.2d 546 (1967). The fair use
doctrine allows adjustments of conflicts between the first amendment and the
copyright laws, See Wainwright Securities Inc. v. Wall Street Transcript Corp.,
558 F.2d 91, 95 (2d Cir. 1977), Cert. denied,434 U.S. 1014, 98 S.Ct. 730, 54
L.Ed.2d 759 (1978), and is designed primarily to balance "the exclusive rights
of a copyright holder with the public's interest in dissemination of information
affecting areas of universal concern, such as art, science and industry." Id. at
94. It is unlikely that the fair use doctrine is applicable to trademark
infringements;9 however, we need not reach that question. Although, as
defendants assert, the doctrine of fair use permits limited copyright
infringement for purposes of parody, See Berlin v. E. C. Publications, Inc., 329
F.2d 541 (2d Cir. 1964), Cert. denied,379 U.S. 822, 85 S.Ct. 46, 13 L.Ed.2d 33
(1965), defendants' use of plaintiff's uniform hardly qualifies as parody or any
other form of fair use. See Walt Disney Productions v. Mature Pictures Corp.,
389 F.Supp. 1397, 1398 (S.D.N.Y.1975).
Nor does any other first amendment doctrine protect defendants' infringement
of plaintiff's trademark. That defendants' movie may convey a barely
discernible message10 does not entitle them to appropriate plaintiff's trademark
in the process of conveying that message. See Interbank Card Association v.
Simms, 431 F.Supp. 131 (M.D.N.C.1977); Edgar Rice Burroughs, Inc. v.
Manns Theatres, 195 U.S.P.Q. 159 (C.D.Cal.1976); Coca-Cola Co. v. Gemini
Rising, Inc., supra, 346 F.Supp. at 1191. Plaintiff's trademark is in the nature of
a property right, See Hanover Milling Co. v. Metcalf, 240 U.S. 403, 413, 36
S.Ct. 357, 60 L.Ed. 713 (1915); Alfred Dunhill of London, Inc. v. Dunhill
Tailored Clothes, Inc., 293 F.2d 685, 692, 49 C.C.P.A. 730 (1961), Cert.
denied, 369 U.S. 864, 82 S.Ct. 1030, 8 L.Ed.2d 84 (1962), and as such it need
not "yield to the exercise of First Amendment rights under circumstances where
adequate alternative avenues of communication exist." Lloyd Corp. v. Tanner,
407 U.S. 551, 567, 92 S.Ct. 2219, 2228, 33 L.Ed.2d 31 (1972). Because there
are numerous ways in which defendants may comment on "sexuality in
athletics" without infringing plaintiff's trademark, the district court did not
encroach upon their first amendment rights in granting a preliminary injunction.
See Walt Disney Productions v. Air Pirates, 581 F.2d 751, 758-59 (9th Cir.
1978); Reddy Communications, Inc. v. Environmental Action Foundation, 199

U.S.P.Q. 630, 634 (D.D.C.1977).

15

For similar reasons, the preliminary injunction did not constitute an

unconstitutional "prior restraint". This is not a case of government censorship,
but a private plaintiff's attempt to protect its property rights. The propriety of a
preliminary injunction where such relief is sought is so clear that courts have
often issued an injunction without even mentioning the first amendment. See, e.
g., Gilliam v. American Broadcasting Cos., 538 F.2d 14 (2d Cir. 1976); Edgar
Rice Burroughs, Inc. v. Manns Theatres, supra, 195 U.S.P.Q. 159. The
prohibition of the Lanham Act is content neutral, Cf. Schacht v. United States,
398 U.S. 58, 90 S.Ct. 1555, 26 L.Ed.2d 44 (1970), and therefore does not
arouse the fears that trigger the application of constitutional "prior restraint"
principles.

16

The district court's issuance of a preliminary injunction is reversible only for

abuse of discretion. Taylor Wine Co. v. Bully Hill Vineyards, Inc., 569 F.2d
731, 732 n. 1 (2d Cir. 1978). A preliminary injunction is proper where the
plaintiff establishes possible irreparable harm and either (1) probable success
on the merits or (2) sufficiently serious questions going to the merits to make
them a fair ground for litigation and a balance of hardships tipping decidedly in
the movant's favor. Selchow & Righter Co. v. McGraw-Hill Book Co., 580
F.2d 25, 27 (2d Cir. 1978). Plaintiff has established a probability of success at
trial, and the confusion engendered by defendants' movie would result in
irreparable harm to plaintiff were defendants not enjoined from its distribution
and exhibition. See Hills Brothers Coffee, Inc. v. Hills Supermarkets, Inc., 428
F.2d 379, 380-81 (2d Cir. 1970); See also Taylor Wine Co. v. Bully Hill
Vineyards, Inc., supra, 569 F.2d at 732 n. 1. Accordingly, we affirm the orders
of the district court.

17

Affirmed.

The official appellation of plaintiff's cheerleaders is "Dallas Cowboys

Cheerleaders", but the district court found that plaintiff also has a trademark in
the names "Dallas Cowgirls" and "Texas Cowgirls" which have been made
popular by the media

Bambi Woods, the woman who played the role of Debbie, is not now and never
has been a Dallas Cowboys Cheerleader

At present plaintiff does not have a registered trademark or service mark in its
uniform. However, plaintiff still may prevail if it establishes that it has a

common law trademark or service mark. See Boston Professional Hockey

Association v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004, 1010 (5th
Cir.), Cert. denied, 423 U.S. 991, 96 S.Ct. 408, 46 L.Ed.2d 312 (1975); New
York General Business Law 368-d. Whether plaintiff's uniform is considered
as a trademark or a service mark, the standards for determining infringement
are the same. West & Co. v. Arica Institute, Inc., 557 F.2d 338, 340 n. 1 (2d
Cir. 1977)
4

Plaintiff's design imparts a western flavor appropriate for a Texas cheerleading

squad. The design is in no way essential to the performance of cheerleading
routines and to that extent is not a functional aspect of the uniform

Secondary meaning is "(t)he power of a name or other configuration to

symbolize a particular business, product or company . . . ." Ideal Toy Corp. v.
Kenner Products Division of General Mills Fun Group, Inc., 443 F.Supp. 291,
305 n. 14 (S.D.N.Y.1977). There is no dispute in this case that plaintiff's
uniform is universally recognized as the symbol of the Dallas Cowboys
Cheerleaders

Although color alone is not capable of becoming a trademark, a combination of

colors together with a distinctive arbitrary design may serve as a trademark.
Quabaug Rubber Co. v. Fabiano Shoe Co., 567 F.2d 154, 161 (1st Cir. 1977)

To the extent that a finding of likelihood of confusion is based upon a

comparison of the two marks, See Beech-Nut, Inc. v. Warner Lambert Co., 346
F.Supp. 547, 550 (S.D.N.Y.1972), Aff'd, 480 F.2d 801 (2d Cir. 1973), the
appellate court may make an independent judgment as to the similarity of the
marks. See Hills Brothers Coffee, Inc. v. Hills Supermarkets, Inc., 428 F.2d
379, 380 (2d Cir. 1970)

Even if plaintiff had not established a likelihood of confusion, it would be

entitled to relief under New York General Business Law 368-d, which
permits the enjoining of trademark copying despite the absence of confusion as
to source or sponsorship. See Allied Maintenance Corp. v. Allied Mechanical
Trades, Inc., 42 N.Y.2d 538, 543-44, 399 N.Y.S.2d 628, 369 N.E.2d 1162
(1977)

Because the primary purpose of the trademark laws is to protect the public from
confusion, See W. E. Basset Co. v. Revlon, Inc., 354 F.2d 868, 871 (2d Cir.
1966), it would be somewhat anomalous to hold that the confusing use of
another's trademark is "fair use". See also Truck Equipment Service Co. v.
Fruehauf Corp., supra, 536 F.2d at 1215

10

The question whether "Debbie Does Dallas" is obscene is not before us