• FINDINGS OF FACT
  • Plaintiff
  • Defendant
• DISCUSSION and CONCLUSIONS OF LAW
  • I. Standing
  • II. Laches and Acquiescence
  • III. Preliminary Injunction Standards
    • A. Likelihood of Success on the Merits
      • 1. Right of Publicity
        • a. Right of Publicity in New Jersey
        • b. Theatrical Imitations and The Right of Publicity
      • 2. Common Law Trademark or Service Mark Infringement
        • a. Validity of Marks
          • (1). Names
          • (2). Logo
          • (3). Likeness and Image
        • b. Protectibility
        • c. Ownership
        • d. Likelihood of Confusion
          • (1). Strength of Plaintiff's Marks
          • (2). Similarity of the Marks
          • (3). Defendant's Intent
          • (4). Similarity of Services
          • (5). Similarity of Channels of Trade, Manners of Marketing, and Predominant Purchasers
          • (6). Actual Confusion
          • (7). Likelihood of Confusion--Conclusion
      • 3. Common Law Unfair Competition
      • 4. Section 43(a) of the Lanham Act
    • B. Irreparable Injury
      • 1. Right of Publicity
      • 2. Service Mark Infringement, Common Law Unfair Competition, and § 43(a) of the Lanham Act
    • C. The Balance of Equities
    • D. Public Interest
  • IV. Conclusion
• ORDER
• Footnotes

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BROTMAN, District Judge.

During his lifetime, Elvis Presley established himself as one of the legends in the entertainment business. On August 16, 1977, Elvis Presley died, but his legend and worldwide popularity have survived. As Presley's popularity has subsisted and even grown, so has the capacity for generating financial rewards and legal disputes. [FN1] Although the present case is another in this line, it presents questions not previously addressed. As a general proposition, this case is concerned with the rights and limitations of one who promotes and presents a theatrical production designed to imitate or simulate a stage performance of Elvis Presley.

This action is currently before the court on a motion by plaintiff, the Estate of Elvis Presley, for a preliminary injunction pursuant to Rule 65 of the Federal Rules of Civil Procedure. It seeks a preliminary injunction restraining defendant, Rob Russen, d/b/a THE BIG EL SHOW (hereafter Russen), or anyone acting or purporting to act in his or its behalf or in collaboration with it from using the name and service mark THE BIG EL SHOW and design, the image or likeness or persona of Elvis Presley or any equivalent, the names Elvis, Elvis Presley, Elvis in Concert, The King, and TCB or any equivalent or similar names on any goods, in any promotional materials, in any advertising or in connection with the offering or rendering of any musical services.

Plaintiff instituted suit on April 9, 1980 for federal law unfair competition (false designation of origin under § 43(a) of the Lanham Trademark Act, 15 U.S.C. § 1125(a)), common law unfair competition, common law trademark infringement, and infringement of the right of publicity. This court has jurisdiction by virtue of 15 U.S.C. § 1121, 28 U.S.C. § 1332, and 28 U.S.C. § 1338. Venue is properly laid in the District of New Jersey by 28 U.S.C. § 1391. Plaintiff seeks a permanent injunction, an impounding and delivery to plaintiff of promotional and advertising materials, letterheads, business cards and other materials, an accounting of defendant's profits, and an award of treble damages and reasonable attorneys' fees. Defendant answered the allegations contained in the complaint and also filed a counterclaim alleging that the plaintiff's actions were in violation of the anti-trust laws of the United States.

On October 2, 1980, the court conducted a hearing on the preliminary injunction motion, which is being submitted upon the proof taken at the hearing, pleadings, depositions, affidavits, exhibits, and written briefs. This opinion incorporates the court's findings of fact and conclusions of law as authorized by Rule 52(a) of the Federal Rules of Civil Procedure.

Every Finding of Fact that may be a Conclusion of Law is adopted as such; and every Conclusion of Law that may be a Finding of Fact is adopted as such.

Plaintiff

1. Plaintiff is the Estate of Elvis Presley (hereafter the Estate) located in Memphis, Tennessee, created by the Will of Elvis Presley and is, under the laws of the State of Tennessee, a legal entity with the power to sue and be sued. (Tennessee Code Annotated § 35-618; Exhibit P 26).

2. The Estate came into being upon the death of Elvis Presley on August 16, 1977. (Parker, Affidavit).

3. During his career, Elvis Presley established himself as one of the premier musical talents and entertainers in the United States, Europe and other areas of the world. He was the major force behind the American Rock and Roll movement, and his influence and popularity has continued to this day. During Presley's legendary career, his talents were showcased in many ways. He performed in concert, setting attendance records and selling out houses in Las Vegas and other cities in which his tour appeared. He starred in numerous motion pictures including one entitled Viva Las Vegas, which is also the name of the movie's title song which Presley sang. He made records which sold over one million copies and appeared on television programs and in television specials made from his tour programs. (Jarvis Testimony, Tr. pp. 42-63).

4. The Elvis Presley tours were billed as "Elvis in Concert," and his nightclub performances were billed as the Elvis Presley Show, while Elvis Presley shows in Las Vegas were billed simply as "Elvis." Most of Elvis Presley's record albums used the name ELVIS on the cover as part of the title. One of his albums was entitled ELVIS IN CONCERT. (Hanks, Affidavit; Jarvis Testimony, Tr. pp. 45, 49, 63; Exhibits, P 10, 12, 16).

5. Elvis Presley adopted the initials TCB along with a lightning bolt design to identify entertainment services provided by him. This insignia appeared on letterheads, jackets for personnel associated with the show, a ring worn by Presley while performing, and tails of Presley's airplanes. Also, Presley's band was identified as the TCB band. (Jarvis Testimony, Tr. pp. 45-46, 53-57; Exhibits, P 17A, 17B).

6. Elvis Presley's nickname was "THE KING." (Jarvis Testimony, Tr. p. 57).

7. Although Elvis Presley exhibited a range of talents and degrees of change in his personality and physical make-up during his professional career, he, in association with his personal manager, Thomas A. (Col.) Parker, developed a certain, characteristic performing style, particularly as to his live stage shows. His voice, delivery, mannerisms (such as his hips and legs gyrations), appearance and dress (especially a certain type of jumpsuit and a ring), and actions accompanying a performance (such as handing out scarves to the audience), all contributed to this Elvis Presley style of performance. (Jarvis Testimony, Tr. pp. 45-53; Exhibits P 10, 12, 16).

8. One particular image or picture of Presley became closely associated with and identifiable of the entertainment provided by Elvis Presley. This image (hereafter referred to as the "Elvis pose") consisted of a picture or representation of Elvis Presley dressed in one of his characteristic jumpsuits with a microphone in his hand and apparently singing. (Exhibits P 10, 12, 16).

9. Elvis Presley exploited his name, likeness, and various images during his lifetime through records, photographs, posters, merchandise, movies, and personal appearances. (Exhibits P 1, 12, 13, 16, 20, 21, 27; Jarvis Testimony, Tr. pp. 44-64).

10. As a result of Presley's own talent, as well as of the various promotional efforts undertaken on his behalf, the popularity of Elvis Presley and his entertainment services, as identified by certain trademark and service marks, reached worldwide proportions. Elvis Presley productions achieved a reputation for a certain level of quality and performance. Goodwill attached to Presley's performances and the merchandise bearing his name and picture.

11. From nearly the beginning of his life as an entertainer, Elvis Presley was represented in his career by Thomas A. (Col.) Parker. (Exhibit P 25; Parker Affidavit).

12. On March 26, 1956, Elvis Presley having reached age 21 entered into an agreement with Col. Parker, amending an agreement entered into in 1955 between Col. Parker and Elvis Presley and his parents, making Parker Elvis Presley's "sole and exclusive Advisor, Personal Representative and Manager in any and all fields of public and private entertainment." (Exhibit P 25).

13. Throughout Presley's professional career, Parker continued to supervise and authorize the commercialization of Presley's name, image, picture, and/or likeness. He granted different entities the right to use Elvis' name, image, picture or likeness on such merchandise as posters, statues, and buttons, for a limited time in return for a percentage on the sales of the articles involved. (Parker Affidavit). On July 26, 1956, Col. Parker, with Presley's approval, entered into an agreement with Special Projects, Inc. granting to it for a term of one (1) year a commercial license for the use of the name, photograph and likeness of Elvis Presley "in connection with the sale, marketing and exploitation of consumer items." (Exhibit P 27).

14. The working relationship between Presley and Parker begun in 1955 appears to have continued throughout Presley's career. Although there are some gaps in the documents showing this relationship during the next 22 years, the evidence presented sufficiently supports their continuing association. (Parker Affidavit; Davis Affidavit).

15. In particular, on January 22, 1976, Elvis Presley entered into an agreement (Exhibit P 1) with Col. Parker, d/b/a All Star Shows, whereby he authorized Parker to set up tours, promotion, merchandising sales and any other medium involving the artistry of Elvis Presley and to generally act as his agent for merchandising projects, personal appearances, motion picture performances, and "any other projects involving the personal services, name, photo or any likeness of the Artist," Elvis Presley. The agreement also sets forth the responsibilities of Presley and Parker with respect to the shows. "Presley is responsible for the presentation of the stage performance" and Col. Parker handles the "advertising and promotion of the show." Thus, Presley did not authorize any rights associated directly with the performances and how they were to be conducted.

This agreement which recognizes Presley's existing contracts did not preclude Elvis Presley from arranging any activities, including merchandising or performing, on his own behalf. The terms of the agreement appear to negate any implication of an "assignment," which would necessarily preclude Elvis Presley himself from entering into agreements pertaining to the use of his name, likeness and image. The agreement, which was limited to a seven (7) year period, gave Parker supervision of merchandising projects and a power of attorney-in-fact for specified purposes, but did not assign or sell the rights of Elvis Presley to his name, likeness or image.

16. In 1974, Boxcar Enterprises, Inc. was incorporated. Col. Parker and Elvis Presley were two of the original subscribers to the stock in the corporation. According to the charter of the corporation, it was formed for the purpose of, inter alia, publishing music, managing entertainers, producing records, producing motion pictures, producing entertainment, selling merchandise and otherwise generally engaging in the broad range of activities corporations may undertake. Col. Parker, Elvis Presley, and Tom Diskin, the President of Boxcar, did subscribe to shares in the corporation, for which shares Elvis Presley gave a consideration of three thousand dollars ($3,000.00). (Hanks Affidavit and Exhibits; Diskin Affidavit).

17. Col. Parker is the majority shareholder in and Chairman of the Board of Boxcar Enterprises, Inc. and he, under the terms of his agreement with Elvis Presley, licensed or sublicensed Boxcar Enterprises, Inc. to act on behalf of Elvis Presley to create and promote merchandise and articles using the name, likeness and image of Elvis Presley. (Exhibits P 5; Diskin Affidavit; Parker Affidavit).

18. There have been no licenses or assignments by Elvis Presley to Boxcar Enterprises, Inc. There have been only letters setting in writing the agreed division of the royalties and income from the sale of merchandise by Boxcar Enterprises, Inc. (Diskin Affidavit; Exhibit P 5. See Parker Affidavit).

19. The right to the commercial use of the name, likeness and image which Boxcar Enterprises has is derived from the license or sublicense granted to Boxcar by Col. Parker. Col. Parker's rights derive from the January 22, 1976 contract (Exhibit P 1) he entered into with Elvis Presley which will terminate in 1983. It is understood that the Parker-Boxcar agreement terminates at the same time. (Exhibit P 6; Diskin Affidavit. See Parker Affidavit).

20. In a letter dated August 23, 1977, one week after Elvis Presley's death, Vernon Presley, Elvis' father and the executor of Elvis' estate, asked Col. Parker to "carry on according to the same terms and conditions" of the agreement between Elvis Presley and Col. Parker dated January 22, 1976. (Exhibit P 3). In June 1979, after Vernon Presley's death, the Estate of Presley, through its representatives again reaffirmed the agreement between Col. Parker and Elvis Presley. (Exhibit P 4). The Estate's continued desire to have Col. Parker market the name, likeness and image of Elvis and, thus, obtain income for the estate is based on the Estate's position that Parker "could probably make the most of the opportunity that was there plus maintain the quality that he and Elvis had maintained throughout the period of their relationship." (Hanks Testimony Tr. pp. 22-26).

21. Boxcar Enterprises, Inc. and the Estate agreed by letter dated August 24, 1977, to Boxcar's continued payment to the Estate of royalties from the sale of merchandise. (Exhibit P 2).

22. Two days after Elvis Presley's death, on August 18, 1977, Boxcar Enterprises, Inc. granted an exclusive license to Factors Etc., Inc. (Factors) to use the name, likeness, characters, symbols, designs and visual representations of Elvis Presley, termed the "Feature," on merchandise throughout the world for a period of eighteen (18) months, renewable for four (4) one-year periods thereafter. The license specifically reserved to the licensor the right, title and interest to the Feature and specifically stated that the rights granted were not an assignment but only a license. The license sets forth quality control provisions for standards for the merchandise and specifically states that the rights licensed shall revert to the licensor upon the termination of the license. (Exhibit P 6; Turner Testimony, Tr. pp. 67-68).

23. As an inducement for Factors Etc., Inc. to enter into the license agreement with Boxcar Enterprises, Inc., Vernon Presley as Executor of the Estate, executed the agreement on a separate page, confirming "the truth of the representations and warranties of Boxcar contained in the agreement." (Exhibit P 6).

24. In the license between Boxcar and Factors, Boxcar sets forth that it "has exclusive ownership of all rights to the use of the Feature," that it is "the sole owner of the entire right, title and interest in the Feature when used in connection with ... merchandise," and that it has the "full right, authority and power to enter into this Agreement." (Exhibit P 6). Because of Boxcar's arrangement with Col. Parker, his control of Boxcar and his exclusive representation contract of Elvis Presley for seven years (or until 1983) (Exhibit P 1; Hanks Affidavit, Minutes of First Meeting of Incorporation), these representations, considering the time period of the license to Factors, though not completely accurate, were true as far as necessary for Factor's protection to operate under the license. No one else had the license rights for merchandise but Col. Parker/Boxcar. Given the time frame of the execution of the agreement (two days after Elvis Presley's death) and knowing of the agreement (Exhibit P 1) between Elvis Presley and Col. Parker, Vernon Presley's signature as "an inducement" cannot be considered an assignment of rights or a confirmation of an assignment, but rather an affirmation of Col. Parker's/Boxcar's exclusive license rights for a period of years. The continued understanding of the parties confirms that there has been no assignment of rights by Elvis Presley or his Estate but merely the licensing of the right to exploit commercially Elvis Presley's name, likeness and image for merchandise for a limited period of time. (Turner Testimony, Tr. p. 67; see Diskin Affidavit).

25. Elvis Presley's popularity did not cease upon his death. His records and tapes are still sold in considerable dollar and unit amounts and Elvis Presley movies are still shown in theaters and on television. Elvis Presley merchandise is still in demand and sold. Also, many people travel to Memphis, Tennessee to visit Presley's gravesite and to see Graceland Mansion, his former home. The extent of Presley's continued popularity and the value and goodwill associated with him and his performances on, for example, records, film, and tape, is evidenced by the over seven (7) million dollars in royalty and licensing payments which Presley's estate received in the first two years of its existence. (Hanks Affidavit; Hanks Testimony, Tr. p. 19; Parker Affidavit. See Davis Affidavit).

26. The agreements, including the Boxcar-Factors contract, relative to the commercial use of Elvis Presley's name, likeness and image are terminable. Upon their termination the existing rights to the name, likeness and image of Elvis Presley revert ultimately to the Estate. (Turner Testimony, Tr. p. 67; Diskin Affidavit).

27. Further, the Estate, during the existence of the agreements, that is, prior to their termination, has an interest in protecting the licensed rights not only for their value upon their reversion to it, but also to protect its continued royalties, which it receives from the licensees' sales of records, movies, merchandise and television performances of Elvis Presley. The Estate's licensees advertise and promote the marks identifying Presley's entertainment services and licensed merchandise to maintain their commercial value and goodwill. (Exhibit P 2; Hanks Testimony, Tr. pp. 18-20, 76-77).

28. The Estate has entered into a license agreement for the use of the logo TCB and the lightning bolt design to identify a band composed of the members of Elvis Presley's back-up band. The Estate receives royalties. (Exhibit P 23; Jarvis Testimony, Tr. p. 55; Hanks Testimony, Tr. pp. 76-77).

29. The Estate, with the agreement of Col. Parker, has entered into a movie contract with Warner Bros. Studio for a movie about Elvis Presley. (Exhibit P 22; Hanks Testimony, Tr. p. 76).

30. The Estate and its licensees and sub-licensees, and during his lifetime, Elvis Presley and his representatives and those with whom he had contracts or licenses have taken actions to protect the rights of the Estate and of the licensees. (Parker, Affidavit; Davis Affidavit; Hanks Testimony, Tr. pp. 82- 83). For example, the Estate has filed an opposition against the registration by defendant Russen of a trademark (Hanks Testimony, Tr. pp. 82-83) and Factors Etc., Inc. has instituted law suits. (See Factors Etc., Inc. v. Pro Arts, Inc., 444 F.Supp. 288 (S.D.N.Y.1977) (preliminary injunction), aff'd, 579 F.2d 215 (2nd Cir.1978), cert. denied, 440 U.S. 908, 99 S.Ct. 1215, 59 L.Ed.2d 455 (1979); 494 F.Supp. 1090 (S.D.N.Y.1980) (permanent injunction); Factors Etc., Inc. v. Creative Card Co., 444 F.Supp. 279 (S.D.N.Y.1977); Memphis Development Foundation v. Factors Etc., Inc., 441 F.Supp. 1323 (W.D.Tenn.), rev'd, 616 F.2d 956 (6th Cir.1980).)

Defendant

31. Defendant, Rob Russen d/b/a THE BIG EL SHOW (hereafter Russen) is the producer of THE BIG EL SHOW.

32. THE BIG EL SHOW is a stage production patterned after an actual Elvis Presley stage show, albeit on a lesser scale, and featuring an individual who impersonates the late Elvis Presley by performing in the style of Presley. The performer wears the same style and design of clothing and jewelry as did Presley, hands out to the audience scarves as did Presley, sings songs made popular by Presley, wears his hair in the same style as Presley, and imitates the singing voice, distinctive poses, and body movements made famous by Presley. (Exhibit P 11, 12, 14, 15; Exhibit D to Defendant's Answer; Jarvis Testimony, Tr. pp. 45-53; Russen Deposition, pp. 27-28, 54-55, 59).

33. Russen charges customers to view performances of THE BIG EL SHOW or alternatively charges fees to those in whose rooms or auditoriums THE BIG EL SHOW is performed who in turn charge customers to view THE BIG EL SHOW. (Exhibit D to Defendant's Answer).

34. THE BIG EL SHOW production runs for approximately ninety minutes. The show opens with the theme from the movie "2001--A Space Odyssey" which Elvis Presley also used to open his stage shows. (Exhibit D to Defendant's Answer; Jarvis Testimony, Tr. p. 62). The production centers on Larry Seth, "Big El," doing his Elvis Presley impersonation and features musicians called the TCB Band. The TCB Band was also the name of Elvis Presley's band; however THE BIG EL SHOW TCB Band does not consist of musicians from Presley's band. (Jarvis Testimony, Tr. pp. 53-57; Exhibits P 11, 14, 15, 17A-C, 23; Russen Deposition, pp. 53-54).

35. From the inception of THE BIG EL SHOW, the star was Larry Seth. Seth, who is under a long-term contract with THE BIG EL SHOW, recently "retired" from the show; but he may return. (Russen Affidavit; see Russen Deposition, p. 171). THE BIG EL SHOW has continued its performances by using replacements for Seth. (Russen Deposition, pp. 91-92).

36. THE BIG EL SHOW was first presented in 1975 (Russen Affidavit; Russen Deposition, p. 22; Exhibit D to Defendant's Answer) and has been performed in the United States and Canada. For example, performances have been given in cities and towns in Connecticut, Maryland, New Jersey, Pennsylvania, and Nevada (one engagement at a Hotel-Casino in Las Vegas). (Russen Deposition, pp. 28-33, 37, 91; Exhibits P 14, 19, 17C; Exhibit D to Defendant's Answer). In addition, Larry Seth as the star of THE BIG EL SHOW has appeared on television talk shows in Philadelphia and Las Vegas, and on the David Suskind Show, a nationally syndicated program. (Exhibit P 17C; Russen Deposition, pp. 55-56, 167).

37. Russen has advertised the production as THE BIG EL SHOW and displayed a photograph of the star, Larry Seth, or an artist's rendering of Seth dressed and posed as if in performance. The advertisements make such statements as "Reflections on a Legend ... A Tribute to Elvis Presley," "Looks and Sounds LIKE THE KING," "12 piece Las Vegas show band." (Russen Deposition, p. 176; Exhibits P 14, 15).

38. Although the various pictures and artist's rendering associated with THE BIG EL SHOW are photographs of Larry Seth, or based on such photographs (Russen Affidavit; Exhibit P 28), a reasonable viewer upon seeing the pictures alone would likely believe the individual portrayed to be Elvis Presley. Even with a side-to-side comparison of photographs of Larry Seth as Big El and of certain photographs of Elvis Presley, it is difficult, although not impossible, to discern any difference.

39. On October 18, 1978, Russen applied to the United States Patent and Trademark Office to register the name THE BIG EL SHOW and the design feature, of that name, i.e., an artist's rendition of Larry Seth as Big El, as a service mark. (Exhibit P 28). Plaintiff did prepare and timely file its Notice of Opposition in the United States Patent and Trademark Office to contest the defendant's right to register the mark. (Exhibit F to Plaintiff's Memorandum in Support of the Motion for Preliminary Injunction). The proceeding before the Trademark Trial and Appeal Board has been stayed by the Board pending the results in the suit before this court.

40. Russen has produced or had produced for him records of THE BIG EL SHOW (including two albums and three 45 RPMs). (Russen Deposition, pp. 72-74; see Exhibits P 11, 13, 18). Only a limited number of these records were pressed, and they were made for sales and promotional purposes. (Russen Deposition, pp. 73-74). One record album, entitled "Viva Las Vegas" (Exhibit P 11), has on the cover of the jacket only the title and an artist's sketch which upon reasonable observation appears to be of Elvis Presley. It is only on the back of the jacket in a short blurb and in the credits that the name BIG EL SHOW appears. It is also indicated that the show stars Larry Seth as Big El and features the TCB Band. The other album (Exhibit P 13) is entitled BIG EL SHOW "In Concert" and also features an artist's drawing, ostensibly of Big El, but which looks like Elvis Presley, with microphone in hand, singing. Only one of the 45s has been presented to this court. THE BIG EL SHOW insignia (Exhibit P 28) appears on both sides. The artists are designated as Larry Seth and TCB Orchestra, on Side I, and Larry Seth and PCB [sic] Orchestra on Side II.

41. In addition to selling records at performances of THE BIG EL SHOW, Russen sold Big El pendants and a button with the picture of Larry Seth as Big El. (Russen Deposition, pp. 77-78).

42. Russen began to produce THE BIG EL SHOW and to use his certain identifying marks, such as THE BIG EL SHOW logo, after Presley had become famous as one of the premier performers in the world and had used and established certain marks as strongly identifying his services and the merchandise licensed or sub- licensed by him.

43. Russen has never had any authorization from, license or contractual relation with Elvis Presley or with the Estate of Elvis Presley in connection with the production of THE BIG EL SHOW. (Parker Affidavit; Hanks Affidavit; Hanks Testimony, Tr. pp. 79-80).

I. Standing

The issue of standing requires us to determine "whether the plaintiff has 'alleged such a personal stake in the outcome of the controversy' as to warrant his invocation of federal court jurisdiction and to justify exercise of the court's remedial powers on his behalf." Warth v. Seldin, 422 U.S. 490, 498- 99, 95 S.Ct. 2197, 2205, 45 L.Ed.2d 343 (1975) (emphasis in original). Plaintiff has shown that it has an economic interest in the protection of the rights it asserts, for it receives royalty or percentage payments from those who sell merchandise using the name, likeness and image of Elvis Presley. Further, it receives payments from record sales, has entered into motion picture contracts and has licensed the TCB logo. (Cf. Factors Etc., Inc. v. Pro Arts, Inc., 579 F.2d 215, 222 (2nd Cir.1978) ("... income interest, continually produced from Boxcar's exclusive right of commercial exploitation should inure to Presley's estate at death like any other intangible property right.")).

Perhaps an even more compelling reason for granting standing than the Estate's income from the current licensing agreements, is the Estate's protection of and future ability to generate income from those property rights, such as the use of trademarks or service marks, associated with Elvis Presley's entertainment services which became owned by Presley's estate after his death. See generally Trademarks and Tradenames, 74 Am.Jur.2d, § 25 (1974). [FN2] It has been shown that those parties who have entered into agreements with Elvis Presley, or with his Estate, to make use of the name, likeness and image of Presley have been licensees. None of the agreements between Elvis Presley and others, including his manager and agent, Thomas A. (Col.) Parker, indicate that Presley assigned his right, title and interest to those property rights connected with his name, likeness and/or image. While the terms, "assignment," "exclusive license," and "license" are frequently used by courts and practitioners interchangeably, the differences are significant. An assignment passes legal and equitable title to the property while a license is mere permission to use. Assignment is the transfer of the whole of the interest in the right while in a license the owner retains the legal ownership of the property. Vandenburgh, Trademark Law and Procedure, 2d Ed. § 7.31; Gilson, Trademark Protection and Practice § 6.01.

An assignment presupposes the transfer of the entire interest in a trademark, while a license involves the transfer of something less than the entire interest, and does not affect the licensor's title. The assignee becomes the new owner while the licensee is a mere user. If the grant of an exclusive use of a trademark is limited as to duration or area, it will not confer title thereto upon the licensee or upon the party who purchases the trademarked article for resale. The licensee acquires only the right to a limited use of the trademark, for the title to the reversionary interest in that use remains with the owner.... The licensor is merely estopped from challenging the licensee's use of the mark under the agreement. In principle, an assignment is permanent and perpetual, while a license is temporary, provisional or conditional. (emphasis added).

Callmann, The Law of Unfair Competition, Trademarks and Monopolies (hereafter "Callmann"), § 78.2 (3d ed. 1969). Thus, even if Presley had licensed certain property rights such as service marks, the ownership of these rights and standing to protect them, remained with Presley, and, after his death became part of the assets of his estate. If, as is alleged by the plaintiff, the defendant's use of certain logos or advertising is likely to have a negative impact on these intangible property rights or on the goodwill associated with Presley or his Estate, then a sufficient reason for granting standing exists. As it has been noted with respect to trademark infringement, "[s]tanding to sue exists in anyone who 'is or is likely to be damaged' by the defendant's use of the disputed mark, and the parties need not be direct competitors. Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 151 (9th Cir.1963), cert. den., 374 U.S. 830, 83 S.Ct. 1870, 10 L.Ed.2d 1053." National Lampoon, Inc. v. American Broadcasting Cos., Inc., 376 F.Supp. 733, 746 (S.D.N.Y.), affirmed, 497 F.2d 1343 (2nd Cir.1974). In addition, we are convinced that "the [plaintiff's] personal stake in the outcome [is] compelling enough to assure aggressive and conscientious advocacy and that the issues" ... [are not] ... "so nebulous as to create the danger of judicial inquiry beyond customary bounds." Schiaffo v. Helstoski, 492 F.2d 413 (3d Cir.1974).

II. Laches and Acquiescence

Russen, having asserted the defenses of laches, and acquiescence in his Answer, argues that a preliminary injunction should not be granted. Although it has been noted that "there are cases in which preliminary injunctive relief has been held barred by laches ... [citations omitted]," Selchow & Righter Co. v. Book-of-the Month Club, Inc., 192 U.S.P.Q. 530, 532 (S.D.N.Y.1976) (action for trademark and copyright infringement, unfair competition and trademark dilution); see Saratoga Vichy Spring Co., Inc. v. Lehman, 625 F.2d 1037, 1041 (2nd Cir.1980) (federal trademark, unfair competition, false designation of origin); Le Sportsac, Inc. v. Dockside Research, Inc., 478 F.Supp. 602, 609 (S.D.N.Y.1979), "the laches defense is reserved for those rare cases where a protracted acquiescence by plaintiff induces a defendant to undertake substantial activities in reliance on the acquiescence." McNeil Laboratories, Inc. v. American Home Products Corp., 416 F.Supp. 804, 809 (D.N.J.1976). See, e.g., Jenn-Air Corp. v. Penn Ventilator Co., 464 F.2d 48 (3rd Cir.1972); John Wright, Inc. v. Casper Corp., 419 F.Supp. 292 (E.D.Pa.1976); Callmann, § 87.3(b). In any event "laches generally is not a bar to injunctive relief against unfair competition." Great Atlantic & Pacific Tea Co. v. A & P Trucking Corp., 51 N.J.Super. 412, 423, 144 A.2d 172 (App.Div.), modified and remanded, 29 N.J. 455, 149 A.2d 595 (1959). The equitable defense of acquiescence " '[a]s distinguished from laches, constitutes a ground for denial of relief only upon a finding of conduct on the plaintiff's part that amounted to an assurance to the defendant, express or implied, that the plaintiff would not assert his trademark rights against the defendant.' [citations omitted]" Carl Zeiss Stiftung v. VEB Carl Zeiss Jena, 433 F.2d 686, 704 (2nd Cir.1970).

In deciding whether the defendant has made a sufficiently strong showing of laches or acquiescence, we must examine the particular circumstances of the case. Id. at 703-04. See Playboy Enterprises, Inc. v. Chuckleberry Publishing, Inc., 486 F.Supp. 414, 434-35 (S.D.N.Y.1980). Our review of the available evidentiary sources indicates certain unsettled facts; however, we cannot conclude that the defendant has met his burden of proving, for the purposes of this preliminary injunction motion, laches or acquiescence.

In the first place, the defendant has not made a sufficient showing of implicit or explicit consent or inexcusable delay by the plaintiff. Although there is evidence that THE BIG EL SHOW, with Larry Seth starring, has been performed since 1975 (Findings of Fact # 35, # 36, supra ), Russen's application to register the mark THE BIG EL SHOW and DESIGN states that the first use of the mark was in June of 1978.

Of more importance, there is a significant question as to the "knowledge and acquiescence" of the Estate or its representatives or of Elvis Presley or his representatives. Russen stated that Presley and his manager, Col. Parker, were aware of the existence of THE BIG EL SHOW, that he, Russen, had spoken via telephone with Col. Parker, in June of 1977, and that Col. Parker had indicated that neither he nor Presley had any objection to THE BIG EL SHOW being performed or using the name THE BIG EL SHOW. (Russen Affidavit).

This purported acceptance by Parker is apparently contradicted by Parker's statement that "[a]t no time was defendant granted any rights by me, Boxcar Enterprises or anyone on behalf of Elvis Presley, to use Elvis' name, image, picture or likeness in any theatrical or entertainment endeavor." (Parker Affidavit). In addition, Joseph Hanks, a co-executor of the Estate of Elvis Presley, indicated that the Estate's files contained no references to Russen or THE BIG EL SHOW and that neither he nor any of the co-executors authorized or approved any uses by the defendant of Elvis Presley's name or image. (Hanks Affidavit; Hanks Testimony, Tr. p. 79). Finally, as noted above, the Estate of Elvis Presley and its licensee, Factors Etc., Inc., have taken steps, in addition to the present suit, to protect the rights of the Estate. The Estate did file a timely Notice of Opposition to Russen's application to register THE BIG EL SHOW and DESIGN as a service mark (Exhibit P 28; Exhibit F to Plaintiff's Memorandum in Support of the Motion for Preliminary Injunction), and Factors has instituted different legal actions.

Russen has also failed to show adequately that he was prejudiced by the delay. Although we assume Russen may have made some expenditures to produce and promote THE BIG EL SHOW and a limited number of records, Russen has failed to establish that his activities constituted the necessary prejudice. See Alfred Dunhill of London, Inc. v. Kasser Distillers Prods. Corp., 350 F.Supp. 1341, 1364-68 (E.D.Pa.1972), aff'd without opinion, 480 F.2d 917 (3rd Cir.1973); Tisch Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609, 615 (7th Cir.1965). See also Jenn-Air Corp., supra.

Since we have concluded that Russen has not made a sufficient showing of laches or acquiescence by Presley or his representatives or by the Estate of Presley to bar a preliminary injunction, we must now decide if a preliminary injunction should issue. [FN3]

III. Preliminary Injunction Standards

To prevail on a motion for a preliminary injunction, the moving party must show that it has a reasonable likelihood of eventual success in the litigation, that it will be irreparably injured pendente lite if relief is not granted, that a balance of equities favor the plaintiff, and that the public interest considerations support the preliminary injunction's issuance. SK & F, Co. v. Premo Pharmaceutical Laboratories, Inc., 625 F.2d 1055 (3d Cir.1980). See Tefal, S.A. v. Products International Co., 186 U.S.P.Q. 545, 547-48 (D.N.J.1975), aff'd, 529 F.2d 495, 497 (3rd Cir.1976); Fotomat Corp. v. Photo Drive-Thru, Inc., 425 F.Supp. 693, 701 (D.N.J.1977); McNeil Laboratories, supra. These elements will be evaluated in light of the various causes of action asserted by the plaintiff. We shall first examine the likelihood of plaintiff's success on each claim.

A. Likelihood of Success on the Merits

1. Right of Publicity

The plaintiff has asserted that the defendant's production, THE BIG EL SHOW, infringes on the right of publicity which plaintiff inherited from Elvis Presley.

The right of publicity [FN4] is a concept which has evolved from the common law of privacy and its tort "of the appropriation, for the defendant's benefit or advantages, of the plaintiff's name or likeness." [FN5] The term "right of publicity" has since come to signify the right of an individual, especially a public figure or a celebrity, to control the commercial value and exploitation of his name and picture or likeness and to prevent others from unfairly appropriating this value for their commercial benefit. [FN6] The idea generally underlying an action for a right of privacy is that the individual has a right personal to him to be let alone and, thus, to prevent others from invading his privacy, injuring his feelings, or assaulting his peace of mind. In contrast, underlying the right of publicity concept is a desire to benefit from the commercial exploitation of one's name and likeness. [FN7]

In the present case, we are faced with the following issues: a. Does a right of publicity and the concomitant cause of action for its infringement exist at common law in New Jersey; if so, does this right descend to the estate at the death of the individual? b. Assuming the existence and inheritability of a right of publicity, does the presentation of THE BIG EL SHOW infringe upon the plaintiff's right of publicity?

a. Right of Publicity in New Jersey

Although the courts in New Jersey have not used the term "right of publicity," they have recognized and supported an individual's right to prevent the unauthorized, commercial appropriation of his name or likeness. In the early and widely cited case of Edison v. Edison Polyform Mfg. Co., 73 N.J.Eq. 136, 67 A. 392 (1907), Thomas Edison sought to enjoin a company which sold medicinal preparations from using the name Edison as part of its corporate title or in connection with its business and from using his name, picture, or endorsement on the label of defendant's product or as part of the defendant's advertising. In granting the requested relief, the court concluded that:

Id. at 141. This idea that an individual has a property right in his name and likeness was reemphasized in Ettore v. Philco Television Broadcasting Corporation, 229 F.2d 481, 491-92 (3rd Cir.), cert. denied, 351 U.S. 926, 76 S.Ct. 783, 100 L.Ed. 1456 (1956) (interpreting New Jersey law) and Canessa v. Kislak, 97 N.J.Super. 327, 235 A.2d 62 (Law Div.1967). Cf. Palmer v. Schonhorn, 96 N.J.Super. 72, 232 A.2d 458 (Ch.1967). (The court did not characterize the right as property. However, the court held:

Id. at 79, 232 A.2d 458.) Judge Lynch in his thoughtful opinion in Canessa initially found that "in the concept of 'right of privacy' there is implicit the right of property, at least in the instance of an appropriation by defendant of another's likeness." 97 N.J.Super. at 339, 235 A.2d 62. After a comprehensive examination of a number of cases occurring prior to Canessa, Judge Lynch decided that:

97 N.J.Super. at 351-52, 235 A.2d 62.

In following the approach taken by pre-1968 cases evaluating New Jersey law, we conclude that, today, a New Jersey court would allow a cause of action for infringement of a right of publicity. In addition, this right, having been characterized by New Jersey courts as a property right, rather than as a right personal to and attached to the individual, is capable of being disassociated from the individual and transferred by him for commercial purposes. [ FN8] We thus determine that during his life Elvis Presley owned a property right in his name and likeness which he could license or assign for his commercial benefit.

In deciding whether this right of publicity survived Presley's death, we are persuaded by the approach of other courts which have found the right of publicity to be a property right. These courts have concluded that the right, having been exercised during the individual's life and thus having attained a concrete form, should descend at the death of the individual "like any other intangible property right." Factors Etc., Inc. v. Creative Card Co., 444 F.Supp. 279, 284 (S.D.N.Y.1977). [FN9] As Chief Justice Bird of the California Supreme Court has explained:

Lugosi, 25 Cal.3d at 846, 160 Cal.Rptr. at 344, 603 P.2d at 446 (Bird, C.J., dissenting). Following the line of reasoning in the above cases, we hold that Elvis Presley's right of publicity survived his death and became part of Presley's estate. [FN10]

b. Theatrical Imitations and The Right of Publicity

Having found that New Jersey supports a common law right of publicity, we turn our attention to a resolution of whether this right of publicity provides protection against the defendant's promotion and presentation of THE BIG EL SHOW. In deciding this issue, the circumstances and nature of defendant's activity, as well as the scope of the right of publicity, are to be considered. In a recent law journal article, the authors conducted an extensive and thorough analysis of the cases and theories bearing on media portrayals, i.e., the portrayal of a real person by a news or entertainment media production. Felcher & Rubin, Privacy, Publicity, and the Portrayal of Real People by the Media, [hereinafter "Portrayal"] 88 Yale L.J. 1577, 1596 (1979). They concluded that "[t]he primary social policy that determines the legal protection afforded to media portrayals [FN11] is based on the First Amendment guarantee of free speech and press." Id. at 1596. Thus, the purpose of the portrayal in question must be examined to determine if it predominantly serves a social function valued by the protection of free speech. If the portrayal mainly serves the purpose of contributing information, which is not false or defamatory, to the public debate of political or social issues or of providing the free expression of creative talent which contributes to society's cultural enrichment, [FN12] then the portrayal generally will be immune from liability. If, however, the portrayal functions primarily as a means of commercial exploitation, then such immunity will not be granted. See generally Portrayal, supra, at 1596-99. [FN13]

The idea that the scope of the right of publicity should be measured or balanced against societal interests in free expression has been recognized and discussed in the case law [FN14] and by other legal commentators. [FN15] In general, in determining whether a plaintiff's right of publicity can be invoked to prevent a defendant's activity, the courts have divided along the lines set out above. In cases finding the expression to be protected, the defendant's activity has consisted of the dissemination of such information as "thoughts, ideas, newsworthy events, ... matters of public interest," [FN16] Rosemont Enterprises, Inc. v. Random House, Inc., 58 Misc.2d 1, 6, 294 N.Y.S.2d 122, 129 (Sup.Ct.1968), aff'd mem., 32 App.Div.2d 892, 301 N.Y.S.2d 948 (1969) (biography of Howard Hughes) and fictionalizations. [FN17] The importance of protecting fictionalizations and related efforts as against rights of publicity was explained by Chief Justice Bird of the California Supreme Court:

Guglielmi, 25 Cal.3d at 869, 160 Cal.Rptr. at 358, 603 P.2d at 460 (Bird, C.J., concurring).

On the other hand, most of those cases finding that the right of publicity, or its equivalence, prevails have involved the use of a famous name or likeness predominantly in connection with the sale of consumer merchandise [FN19] or "solely 'for purposes of trade--e.g., merely to attract attention.' [without being artistic, informational or newsworthy] Grant v. Esquire, Inc., 367 F.Supp. 876, 881 (S.D.N.Y.1973) [unauthorized use of photo of Cary Grant in fashion article]." Ali v. Playgirl, Inc., 447 F.Supp. 723, 727, 728-29 (S.D.N.Y.1978) (unauthorized drawing of nude man, recognizable as Muhammed Ali, seated in corner of boxing ring). In these cases, it seems clear that the name or likeness of the public figure is being used predominantly for commercial exploitation, and thus is subject to the right of publicity. As the court in Palmer v. Schonhorn, supra, noted, "While one who is a public figure or is presently newsworthy may be the proper subject of news or informative presentation, the privilege does not extend to commercialization of his personality through a form of treatment distinct from the dissemination of news or information." Id. 96 N.J.Super. at 78, 232 A.2d 458 quoting Gautier v. Pro-Football, Inc., 304 N.Y. 354, 359 (1952) (emphasis added by Palmer court).

In the present case, the defendant's expressive activity, THE BIG EL SHOW production, does not fall clearly on either side. Based on the current state of the record, the production can be described as a live theatrical presentation or concert designed to imitate a performance of the late Elvis Presley. [FN20] The show stars an individual who closely resembles Presley and who imitates the appearance, dress, and characteristic performing style of Elvis Presley. The defendant has made no showing, nor attempted to show, that the production is intended to or acts as a parody, burlesque, satire, or criticism of Elvis Presley. [FN21] As a matter of fact, the show is billed as "A TRIBUTE TO ELVIS PRESLEY." In essence, we confront the question of whether the use of the likeness of a famous deceased entertainer in a performance mainly designed to imitate that famous entertainer's own past stage performances is to be considered primarily as a commercial appropriation by the imitator or show's producer of the famous entertainer's likeness or as a valuable contribution of information or culture. After careful consideration of the activity, we have decided that although THE BIG EL SHOW contains an informational and entertainment element, the show serves primarily to commercially exploit the likeness of Elvis Presley without contributing anything of substantial value to society. [FN22] In making this decision, the court recognizes that certain factors distinguish this situation from the pure commercial use of a picture of Elvis Presley to advertise a product. In the first place, the defendant uses Presley's likeness in an entertainment form and, as a general proposition, "entertainment ... enjoys First Amendment protection." Zacchini v. Scripps- Howard Broadcasting Co., 433 U.S. 562, 578, 97 S.Ct. 2849, 2859, 53 L.Ed.2d 965 (1977). See, e.g., Southeastern Promotions, Ltd. v. Conrad, 420 U.S. 546, 557-58, 95 S.Ct. 1239, 1246, 43 L.Ed.2d 448 (1975) (the musical play "Hair"); Joseph Burstyn, Inc. v. Wilson, 343 U.S. 495, 501, 72 S.Ct. 777, 780, 96 L.Ed. 1098 (1952) (the motion picture "The Miracle"); Goldstein v. Town of Nantucket, 477 F.Supp. 606, 608 (D.Mass.1979) (public performance of Nantucket's traditional folk music). However, entertainment that is merely a copy or imitation, even if skillfully and accurately carried out, does not really have its own creative component and does not have a significant value as pure entertainment. [FN23] As one authority has emphasized:

Netterville, "Copyright and Tort Aspects of Parody, Mimicry and Humorous Commentary," 35 S.Cal.L.Rev. 225, 254 (1962).

In the second place, the production does provide information in that it illustrates a performance of a legendary figure in the entertainment industry. Because of Presley's immense contribution to rock 'n roll, examples of him performing can be considered of public interest. However, in comparison to a biographical film or play of Elvis Presley or a production tracing the role of Elvis Presley in the development of rock 'n roll, the information about Presley which THE BIG EL SHOW provides is of limited value.

This recognition that defendant's production has some value does not diminish our conclusion that the primary purpose of defendant's activity is to appropriate the commercial value of the likeness of Elvis Presley. Our decision receives support from two recent cases. In Price v. Worldvision Enterprises, Inc., 455 F.Supp. 252 (S.D.N.Y.1978), aff'd without opinion, 603 F.2d 214 (2nd Cir.1979), the court found that the protection of the right of publicity could be invoked by the widows and beneficiaries, respectively, of Oliver Hardy and Stanley Laurel to enjoin the production or distribution of a television series entitled "Stan 'n Ollie," wherein two actors would portray the comedians Laurel and Hardy. Although the facts bearing on the content of the program are not entirely clear, it appears that the show was to be based on old Laurel and Hardy routines which the comedy team performed during the careers and was not a biographical portrayal of the lives of the two men. In this regard, the court can be deemed to have decided that an inherited "right of publicity" can be invoked to protect against the unauthorized use of the name or likeness of a famous entertainer, who is deceased, in connection with an imitation, for commercial benefit, of a performance of that famous entertainer. [FN24]

In Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 97 S.Ct. 2849, 53 L.Ed.2d 965 (1977) [FN25] the Supreme Court addressed a situation which implicated both a performer's right of publicity and the First Amendment. [FN26] The Court held that the First Amendment did not prevent a state from deciding that a television news show's unauthorized broadcast of a film showing plaintiff's "entire act," a fifteen second human cannonball performance, infringed plaintiff's right of publicity.

In reaching its conclusion, the Court reasoned that "[t]he broadcast of [the] film of petitioner's entire act poses a substantial threat to the economic value of that performance," id. at 576, 97 S.Ct. at 2857-2858; that

Id. at 576, 97 S.Ct. at 2857-2858; and that the "protection [of the right of publicity] provides an economic incentive for the performer to produce a performance of interest to the public." Id.

In the present case, although the defendant has not shown a film of an Elvis Presley performance, he has engaged in a similar form of behavior by presenting a live performance starring an imitator of Elvis Presley. To some degree, the defendant has appropriated the "very activity [live stage show] by which [Presley initially] acquired his reputation ..." id. at 576, 97 S.Ct. at 2857-2858, and from which the value in his name and likeness developed. The death of Presley diminishes the impact of certain of the court's reasons, especially the one providing for an economic incentive to produce future performances. However, through receiving royalties, the heirs of Presley are the beneficiaries of the "right of the individual to reap the reward of his endeavors." Id. at 573, 97 S.Ct. at 2856. Under the state's right of publicity, they are entitled to protect the commercial value of the name or likeness of Elvis Presley from activities such as defendant's which may diminish this value.

We thus find that the plaintiff has demonstrated a likelihood of success on the merits of its right of publicity claim with respect to the defendant's live stage production. In addition, we find this likelihood of success as to the defendant's unauthorized use of Elvis Presley's likeness on the cover or label of any records or on any pendants which are sold or distributed by the defendant. [FN27]

2. Common Law Trademark or Service Mark Infringement

Since the plaintiff does not assert any Federal or State of New Jersey trademark or service mark registrations, any trademark or service mark [FN28] infringement claims are governed by the common law, which provided the basis for and essentially parallels the protection provided by the Federal or State statutory schemes. [FN29] See Dallas Cowboys Cheerleaders v. Pussycat Cinema, 604 F.2d 200, 203 n. 3 (2nd Cir.1979); Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1228 (3rd Cir.1978); House of Westmore v. Denney, 151 F.2d 261, 265 (3rd Cir.1945); Caesars World, Inc. v. Caesar's Palace, 490 F.Supp. 818, 823 (D.N.J.1980); D.C. Comics, Inc. v. Powers, 465 F.Supp. 843, 846 (S.D.N.Y.1978), aff'd on reargument, 482 F.Supp. 494 (S.D.N.Y.1979). In order to prevail on a statutory or common law trademark or service mark infringement claim, the plaintiff must establish that the names or symbols are valid, legally protectible trademarks or service marks; that they are owned by the plaintiff; and that the defendant's subsequent use of the same or similar marks to identify goods or services is infringing, i.e., is likely to create confusion as to the origin of the goods or services. See, e.g., Scott Paper Co., supra; Perfectform Corp. v. Perfect Brassiere Co., Inc., 256 F.2d 736 (3rd Cir.1958); Caesars World, Inc., supra; Fotomat Corp., supra; Time Mechanisms, Inc., supra. Actions for trademark [or service mark] infringement serve both to protect the "right of the public to be free of confusion and the synonymous right of a trademark [or service mark] owner to control his product's [or service's] reputation." James Burrough, Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 274 (7th Cir.1976), rev'd on retrial, 572 F.2d 574 (7th Cir.1978).

Plaintiff asserts that Elvis Presley, during his lifetime, created and owned valid trademarks or, more specifically, service marks for musical entertainment services in the names of ELVIS, ELVIS PRESLEY, and THE KING, the phrase ELVIS (or ELVIS PRESLEY) IN CONCERT, the logo composed of the letters TCB and lightning bolt design, and the likeness of Elvis Presley, and that these marks were all legally protectible. After Presley's death the rights in these marks were acquired by the plaintiff, which is entrusted with the preservation and management of the property and rights of the decedent, Elvis Presley, for the benefit of Presley's heirs. The plaintiff points out that, in the fulfillment of its obligations, it has entered into a number of agreements licensing the use of the marks in various ways, including records, movies, merchandise and television performances of Presley, and that the licensees have continued to promote these trademarks and service marks. Thus, the plaintiff claims that since the service marks or trademarks are property rights and have continued to be used to identify the musical entertainment services of Presley, these marks have been inherited by and continue to exist in the plaintiff estate. Finally, the plaintiff argues that the defendant's uses of the name THE BIG EL SHOW, the logo composed of THE BIG EL SHOW name and the likeness ostensibly of Larry Seth as he appears in THE BIG EL SHOW, the term THE KING, the initials TCB with or without a lightning bolt, and all likenesses of Elvis Presley (whether or not they are really of Larry Seth as he appears or appeared in THE BIG EL SHOW) to identify his production, constitute infringements of plaintiff's marks.

Each of plaintiff's points will be evaluated in seriatim in the context of the requirements for an infringement claim. [FN30]

a. Validity of Marks

A service mark is defined as "a word, name, symbol, device or any combination thereof adopted and used in the sale or advertising of services to identify the service of the entity and distinguish them from the services of others." Caesars World, Inc., 490 F.Supp. at 822; 15 U.S.C. § 1127; N.J.S.A. 56:3-13.1(B). See generally 3 Callmann, "common law rights are acquired in a service mark by adopting and using the mark in connection with services rendered. [citations omitted]." Caesars World, Inc., 490 F.Supp. at 822. Since the plaintiff is principally claiming, at the present time, that its marks identify Elvis Presley entertainment services, [FN31] we will focus on the validity of the names and symbols as service marks. However, it should be noted that these marks also might be trademarks [FN32] which identify goods, id., or particular products licensed by the marks' owner. See Dallas Cowboys Cheerleaders v. Pussycat Cinema, 467 F.Supp. 366, 373 (S.D.N.Y.),affirmed, 604 F.2d 200 (2nd Cir.1979).

(1). Names

The plaintiff claims that the names ELVIS, ELVIS IN CONCERT, ELVIS PRESLEY, and THE KING are valid and protectible service marks. Our review of the record indicates that the first three names have not been used only to identify a particular individual, Elvis Presley. Rather they have been used in advertising, such as for performances, concerts, and on records, to identify a service. They have appeared in close association with a clear reference (i.e., IN CONCERT OR SHOW) to entertainment services of Presley. Thus, they have attained service mark status. See Five Platters, Inc., supra (the name "The Platters" functions as a service mark to identify the services of a singing and entertainment group); In re Carson, supra (the name JOHNNY CARSON functions as a service mark to identify entertainment services rendered by John W. Carson).

With respect to the name THE KING, the plaintiff has not established this name as a valid service mark. The record reveals that Elvis Presley's nickname was The King. However, plaintiff has not presented sufficient evidence as to how the name was used to identify services, see Hirsch v. S.C. Johnson & Son, Inc., 90 Wis.2d 379, 280 N.W.2d 129, 138-39 (1979), and thus to function as a service mark. Of course, the plaintiff is not precluded from establishing the term THE KING as a valid service mark by presenting appropriate evidence at trial.

(2). Logo

The plaintiff has presented sufficient evidence, for the purposes of a preliminary injunction, of connection with Presley entertainment services or business, to establish the logo composed of the initials TCB with or without the lightning bolt design as a service mark. For example, the logo was used on Presley's letterhead and on business cards, see, e.g., Re Reichold Chemicals, Inc., 167 U.S.P.Q. 376 (TMT & App.Bd.1970); Re Pierce, 164 U.S.P.Q. 369 (TMT & App.Bd.1970); 1 McCarthy, Trademarks and Unfair Competition, § 16:11, and it appeared on the tails of Presley's airplanes. See generally Boston Professional Hockey Ass'n, supra; Fotomat Corp., supra.

(3). Likeness and Image

The plaintiff asserts that the likeness and image of Elvis Presley serves as a service mark; however, the available evidence does not support such a broad position. Rather, the record only supports a conclusion that a picture or illustration of Elvis Presley dressed in one of his characteristic jumpsuits and holding a microphone in a singing pose is likely to be found to function as a service mark. This particular image (hereinafter referred to as the "Elvis Pose") has appeared in promotional and advertising material for concerts and on record albums. Thus, even though the "Elvis Pose" identifies the individual performer, we find it also has been used in the advertising and sale of Elvis Presley entertainment services to identify those services. See generally Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, 467 F.Supp. 366 (S.D.N.Y.), affirmed, 604 F.2d 200 (2nd Cir.1979). The court recognizes that the "Elvis Pose" has appeared in somewhat different forms; for example, the color of the outfit or the direction of the face has been altered. We do not find such changes to be determinative. Rather, we find the following idea persuasive reasoning for treating the "Elvis Pose" as a service mark:

Ilco Corporation v. Ideal Security Hardware Corporation, 527 F.2d 1221, 1224 (C.C.P.A.1976).

b. Protectibility

The requirements for a valid trademark or service mark to be considered protectible under the common law or the Lanham Act, depend on the characteristics of the marks themselves. Inherently distinctive trademarks or service marks, such as fanciful or arbitrary or non-descriptive, but suggestive, words and symbols, gain protected status upon their first adoption and use; while, non-inherently distinctive marks only achieve protection if the mark is shown to have secondary meaning. See McCarthy, supra, § § 15:1, 16:2; Scott Paper Co. v. Scott's Liquid Gold, Inc., 439 F.Supp. 1022, 1034 (D.Del.1977), rev'd, 589 F.2d 1225 (3rd Cir.1978). A trademark or service mark attains secondary meaning if the consuming public has come to recognize the mark not only as an identification of the goods or services but as a symbol indicating that the goods or services emanate from a single source, even though the identity of that source may in fact be unknown. Id.

Of the five names or symbols found to be valid service marks, the three containing the personal names (surname or first name) of Elvis Presley, will be considered as non-inherently distinctive terms. The evidence sufficiently shows that these marks have been used for a long period of time through various promotions and uses, such as in advertising and on records (as well as in connection with certain licensed products), and have acquired a secondary meaning associated with Elvis Presley entertainment services as distinct from other entertainment services. See Scott Paper Co., 589 F.2d at 1228; Wyatt Earp Enterprises, Inc. v. Sackman, Inc., 157 F.Supp. 621 (S.D.N.Y.1958) (name as televised by plaintiff in television show identified with merchandise upon which name licensed to appear). Cf. Five Platters, Inc., supra (the name, "The Platters" developed secondary meaning connected with singing and entertainment services by widespread circulation of records, public performances, and other promotional efforts).

The mark composed of the TCB and lightning bolt logo can be characterized as inherently distinctive since it is unique and arbitrary. See Q-Tips, Inc., supra; Standard Brands, Inc. v. Smidler, 151 F.2d 34 (2nd Cir.1945); Caesars World, Inc., 490 F.Supp. at 822-23. In the alternative, we also find that there is sufficient evidence of use of the mark in association with Elvis Presley entertainment services to show that the mark has acquired a secondary meaning of identifying the source of Presley entertainment services. Thus, the logo is protectible.

Finally, we find that there is sufficient evidence in the record for us to conclude that the particular "Elvis Pose" service mark, although perhaps a descriptive mark in that it illustrates the service, has acquired secondary meaning through its use in advertising and promoting of the entertainment services of Elvis Presley (as well as in identifying licensed products). See generally Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, 604 F.2d 200 (2nd Cir.1979); Volkswagenwerk Akg. v. Rickard, 175 U.S.P.Q. 563 (C.D.Tex.), affirmed, 492 F.2d 474 (5th Cir.1972). Volkswagenwerk Akg. v. Rose'Vear Enterprises, Inc., 199 U.S.P.Q. 744 (TMT & App.Bd.1978), affirmed, 592 F.2d 1180 (C.C.P.A.1979).

c. Ownership

Trademarks and service marks are in the nature of property rights. See Hanover Milling Co. v. Metcalf, 240 U.S. 403, 36 S.Ct. 357, 60 L.Ed. 713 (1915). They "can be alienated like any piece of property," McCarthy, supra, § 2:6; however, "unlike patents and copyrights, [they] have no existence independent of the article, service or business in connection with which the mark is used. Id. at § 2:7. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 39 S.Ct. 48, 63 L.Ed. 141 (1918). We find that after Presley's death, the rights to use the service marks and trademarks identifying the entertainment services of Elvis Presley and the merchandise licensed by him passed to Presley's legal representative as a part of the assets of his estate. See generally Trademarks and Tradenames, 74 Am.Jur.2d 325 (1974); Dilworth v. Hake, 64 S.W.2d 829, 830 (Tex.Civ.App.1933) (right to use trade name descended as part of estate to executrix.) See also Ward-Chandler Bldg. Co. v. Caldwell, 8 Cal.App.2d 375, 47 P.2d 758 (1935). Plaintiff through the trustee and executor of the estate, is entrusted with the preservation and management of the property and rights of the decedent for the benefit of the decedent's heirs. Restatement of Trusts 2d § 174 et seq. (1957). Thus, as long as these marks continue to be used to identify Elvis Presley entertainment services, which are still available in such forms as records, video tapes, movies, and television performances, the marks will continue to exist and will not be considered abandoned. See generally McCarthy, supra, § 17:3; La Societe Anonyme des Parfumes Le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1271 (2nd Cir.1974) ("The user who first appropriates the mark obtains an enforceable right to exclude others from using it as long as the initial appropriation and use are accompanied by an intention to continue exploiting the mark commercially.")

Although the record does not provide extensive evidence of the plaintiff's use of the five service marks (or trademarks), we conclude that the evidence is sufficient, for the preliminary injunction motion, to find that plaintiff still owns and properly uses the marks. For example, the plaintiff has licensed the use of the TCB logo to identify Presley's former back up band. The fact that the band previously performed with Presley is significant since there is a connection to Presley's entertainment services. The plaintiff also continues to receive royalties from licensing agreements wherein the licensees advertise and promote the service marks or trademarks to identify Elvis Presley records, movies, merchandise and television performances. In this regard, it should be re-emphasized that the "Elvis Pose" identified earlier is the only specific image of Elvis Presley for which there is sufficient evidence in the record to qualify as a service mark or trademark.

d. Likelihood of Confusion

The plaintiff claims that the defendant's uses in connection with THE BIG EL SHOW production of: the initials TCB with and without a lightning bolt, any artist's renderings or pictures, purportedly of Larry Seth as he appears in THE BIG EL SHOW, which resemble Elvis Presley, the name THE BIG EL SHOW, the logo composed of the name THE BIG EL SHOW and the artist's rendering, and the term THE KING, constitute infringements of plaintiff's service marks. [FN33] Because we find that the term THE KING, unlike the other items, has not been used by the defendant as a mark to identify his entertainment service, we will not consider this term in the infringement claim.

The test for infringement of common law service marks or trademarks, which is the same as for statutorily registered marks, see House of Westmore, 151 F.2d at 265, is whether the defendant has made a subsequent unauthorized use of marks, which are the same or similar to those marks used by the plaintiff, in the sale or advertising of his goods or services to identify those goods or services; and the defendant's use creates a likelihood of confusion or deception as to the source of those goods or services. See James Burrough Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 275 (7th Cir.1976); Tefal, S.A. v. Products International Co., 186 U.S.P.Q. 545, 548 (D.N.J.1975), affirmed, 529 F.2d 495 (3rd Cir.1976); DeCosta v. Columbia Broadcasting System, Inc., 520 F.2d 499, 513-15 (1st Cir.), cert. denied, 423 U.S. 1073, 96 S.Ct. 856, 47 L.Ed.2d 83 (1975); Perfectform Corporation, 256 F.2d at 741; Caesars World, Inc., 490 F.Supp. at 823; Fotomat Corp., 425 F.Supp. at 703; Time Mechanisms, Inc., 422 F.Supp. at 914; Great Atlantic & Pacific Tea Co. v. A & P Trucking Corp., 29 N.J. 455, 149 A.2d 595 (1959); N.J.S.A. 56:3-13.-11. See generally 3 Callmann, supra, § 80. The facts that Elvis Presley has died and that it is undisputed that almost no one would expect to see Elvis Presley performing live in THE BIG EL SHOW does not preclude a finding of infringement. The likelihood of confusion test refers to source, and, thus, may be satisfied if the plaintiff proves that consumers viewing the defendant's marks are likely to believe that plaintiff sponsored THE BIG EL SHOW production or licensed defendant to use the marks in connection with the show or was in some other way associated or affiliated with the production. See Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, 604 F.2d 200, 205 (2nd Cir.1979); James Burrough Ltd. v. Sign of Beefeater, Inc., 540 F.2d at 274.

The determination of likelihood of confusion necessitates our weighing various factors including, but not necessarily limited to, the strength of the plaintiff's mark, the degree of similarity between the marks, the intent of the defendant in adopting the allegedly infringing mark, the similarity of products or services involved, trade channels, manners of marketing and predominant purchasers, and the evidence of actual confusion. Q-Tips, Inc., 206 F.2d at 147-48; Caesars World, Inc., 490 F.Supp. at 823-24; Fotomat Corp., 425 F.Supp. at 703; McNeil Laboratories, Inc. v. American Home Products Corporation, 416 F.Supp. 804, 806 (D.N.J.1976). By applying these factors in light of our earlier findings of fact and discussions about plaintiff's marks, we have reached certain conclusions based on general comparisons applicable to all of the marks and on specific comparisons of each mark.

(1). Strength of Plaintiff's Marks

The strength or weakness of plaintiff's marks is an important consideration. In general, "strong marks are given ... protection over a wide range of related products [or services] and variations on appearance of the mark [, while] weak marks are given a narrow range of protection both as to products [or services] and as to visual variations." 1 McCarthy, supra, § 11:24. See Family Circle, Inc. v. Family Circle Associates, Inc., 332 F.2d 534 (3rd Cir.1964). "The term 'strength' as applied to trademarks refers to the distinctiveness of the mark, or more precisely, its tendency to identify the goods sold under the mark as emanating from a particular, although possibly anonymous, source. [citations omitted]." McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1131 (2nd Cir.1979). In view of our earlier discussion concerning the protectibility of plaintiff's marks, it is not necessary to conduct an extensive inquiry. For the purposes of this motion we find that plaintiff's service marks (ELVIS, ELVIS PRESLEY, ELVIS IN CONCERT, TCB with the lightning bolt and, to a lesser degree, without the lightning bolt, and the "Elvis Pose") have acquired great distinctiveness, in the eyes of the public and strongly identify Elvis Presley entertainment services and the source, although not necessarily known by name, of those services. See generally 1 McCarthy, supra, § § 3:1-3, 11:1-24. However, we do consider the TCB logo to be somewhat weaker than the others since it has received less public exposure.

(2). Similarity of the Marks

It is well-recognized that the greater the similarity between plaintiff's and defendant's marks, the greater the likelihood of confusion. See generally 2 McCarthy, supra, § § 23:3-23:16; Exxon Corp. v. Texas Motor Exchange of Houston, 628 F.2d 500, 505 (5th Cir.1980). An evaluation of similarity generally entails a comparison with respect to similarity of appearance, pronunciation, and meaning. See Caesars World, Inc., 490 F.Supp. at 824; 2 McCarthy, supra, § 23:4; Restatement of Torts, § 729(a) (1938). In the present case, appearance is the most dominant element, and similarity of appearance is determined "on the basis of the total effect of the designation, rather than on a comparison of individual features." Restatement of Torts § 729, comment b (1938). Using these general guidelines, we reach the following conclusions.

The defendant's first mark can be considered the initials TCB. The defendant's logo of TCB with the lightning bolt, and, to a slightly lesser degree, without the lightning bolt, is essentially identical to plaintiff's corresponding mark.

The second of the defendant's marks can be characterized as any of the artist's renderings or pictures, which are purportedly of the performer Larry Seth as he appears in THE BIG EL SHOW, standing alone without being part of THE BIG EL SHOW logo. (See, e.g., Exhibit P. 11). We find that such pictures are highly similar to the image of Elvis Presley portrayed in the "Elvis Pose." The use of an artist's rendering or sketch rather than a photograph does not diminish the resemblance.

The third mark, the name THE BIG EL SHOW, which is the name of defendant's production, is not as similar to one of the plaintiff's marks as the first two are. The plaintiff's marks ELVIS and ELVIS IN CONCERT provide the closest bases for comparison. Using the factors of appearance and pronunciation, we find that there is some similarity between plaintiff's marks and defendant's mark but the extent of similarity is less than for the first two marks. The resemblance results because the EL in THE BIG EL SHOW is the first two letters of Elvis, and it sounds similar, and the defendant's EL appears in the same type of blocked, capital letters as does plaintiff's ELVIS.

The fourth mark in question, and perhaps the most important, is the defendant's logo composed of the words THE BIG EL SHOW and the artist's rendering (Exhibit P. 28). Considering the total effect conveyed by this mark, we find there is a high degree of similarity with plaintiff's "Elvis Pose" and a slightly lower degree of similarity with the names ELVIS and ELVIS IN CONCERT. (See discussion, supra ). The connection in defendant's logo of the name THE BIG EL SHOW with the picture that looks like Elvis Presley results in the letters EL being more suggestive in meaning of the marks ELVIS and ELVIS PRESLEY.

(3). Defendant's Intent

Although the intent of the defendant in adopting a mark is only one of the factors, see Q-Tips, Inc., supra, if a plaintiff can demonstrate that a defendant adopted a mark with the intent of obtaining unfair commercial advantage from the reputation of the plaintiff, then "that fact alone 'may be sufficient to justify the inference that there is confusing similarity.' Restatement of Torts § 729, comment f (1938)." Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252 (5th Cir.1980). See John Wright, Inc. v. Casper Corp., 419 F.Supp. 292, 320 (E.D.Pa.1976). See also Perfectform Corporation, 256 F.2d at 741-42.

Because of the nature of the defendant's service, the defendant's intent as specifically related to his marks is interwoven with his intent as to the origin and presentation of the production. We have no doubt that a reason for Russen's starting his show was to capitalize on the popularity of Elvis Presley. It is also quite apparent that the show, the service in question, was designed to simulate or imitate a performance by Elvis Presley. The available evidence bearing on the defendant's reasons for adopting his marks must be considered in light of the nature of the production. It is possible that producer Russen adopted his marks in order to tell the public something about the production and to promote the show. On the other hand, such marks could have been designed mainly to deceive the public and to trade on the good will associated with plaintiff's marks.

Because the record contains a relative paucity of information bearing on defendant's intent, it is difficult to draw many strong conclusions. Based on our review, we make the following observations as to intent. Russen was well aware of Presley's TCB mark and adopted the same mark because of its connection to the Elvis Presley organization. See Caesars World, Inc., 490 F.Supp. at 825 (defendant's claim of innocent adoption negated by evidence of defendant's prior awareness of plaintiff's mark). He stated that he got the idea to use TCB as the name of his band because it is the name of Elvis Presley's fan clubs and serves as Presley's motto. We find that the use of TCB in connection with defendant's production was totally unnecessary and was done only to benefit from the good will which attached to Presley and his performances and organization.

As to the name THE BIG EL SHOW and the artist's rendering or picture of the performer Larry Seth as he appears in the show, we are unable to conclude that the defendant adopted these marks mainly to "bask in the reflected popularity" generated by plaintiff's marks. See Q-Tips, Inc., 206 F.2d at 147 (3rd Cir.), cert. denied, 346 U.S. 867, 74 S.Ct. 106, 98 L.Ed. 377 (1953). The defendant indicated that the name, THE BIG EL SHOW, was thought up by Larry Seth, the star of the production, and agreed to by the defendant Russen. The defendant also indicated that the artist's rendering or pictures were all of Larry Seth as the BIG EL. The plaintiff has not offered any other evidence, beyond the marks themselves, to prove improper motive. We conclude that there is insufficient evidence that the defendant adopted the name or used the pictures predominantly for the purpose of misleading or deceiving the public rather than for suggesting the nature of THE BIG EL SHOW production.

(4). Similarity of Services

As a rule, "[t]he greater the similarity between the products and services [provided by the defendant and plaintiff], the greater the likelihood of confusion." Exxon Corp. v. Texas Motor Exchange of Houston, 628 F.2d 500, 505 (5th Cir.1980). See generally Restatement of Torts § 731(e), comment d (1938). In the present case, the services of the plaintiff and of the defendant cannot be considered identical, but they are very similar. In general terms, each party's services can be described as musical entertainment provided by one singer or performer with instrumental or vocal background provided by others. There is some difference in the forms of presentation, since plaintiff's entertainment is provided mainly in the forms of records, film, video tape, and audio tape, while defendant's entertainment mainly appears as live, stage productions. [FN34] The defendant, however, has also produced records, albeit in limited numbers, of THE BIG EL SHOW. In addition, both parties have engaged in forms of licensing or sub-licensing their marks to appear on such merchandise as photographs, pendants, and buttons.

A more specific reason for finding strong similarity is that both parties' entertainment services involve Elvis Presley. The plaintiff provides actual performances of Presley, while the defendant provides an imitation of an Elvis Presley performance. The fact that the plaintiff does not provide live stage performances of Presley, admittedly an impossibility due to Presley's current state, makes identical services virtually impossible and does lessen the similarity somewhat. In any event, direct competition or identity of services or products is not required to prove likelihood of confusion. Great Atlantic & Pacific Tea Co., supra.

See Scarves by Vera, Inc. v. Todo Imports Ltd., supra, [544 F.2d 1167 (2d Cir.1976) ] (women's scarves and apparel with women's cosmetics and fragrances); James Burrough Ltd. v. Sign of the Beefeater, Inc., supra (liquor with restaurant selling liquor); Union Carbide Corp. v. Ever-Ready, Inc., supra [531 F.2d 366 (7th Cir.1976) ] (batteries and lamps with lightbulbs and lamps); Alfred Dunhill of London, Inc. v. Kasser Distillers Products Corp., 350 F.Supp. 1341 (E.D.Pa.1972), aff'd without opinion, 480 F.2d 917 (3rd Cir.1973) (pipe tobacco and bar accessories with scotch whiskey).

Scott Paper Co., 589 F.2d at 1230.

(5). Similarity of Channels of Trade, Manners of Marketing, and Predominant Purchasers

Similarities of channels of trade, manners of marketing, and predominant purchasers of plaintiff's and defendant's services, as well as licensed goods, increase the possibilities of confusion. See, e.g., Exxon Corp. v. Texas Motor Exchange of Houston, 628 F.2d at 505; DeCosta supra; Schmid Laboratories v. Youngs Drug Products, 482 F.Supp. 14, 19-20 (D.N.J.1979); Fotomat Corp., supra; Restatement of Torts § § 729(c), 731(c), (d), comment d (1938). The evidence in the record bearing on these factors is sketchy. By drawing some reasonable inferences from the available information and speculating on certain points, we have concluded that there is some similarity between the trade channels and marketing campaigns and that there is more similarity between the purchasers of the two services.

The enterprises of Presley, and more recently of plaintiff, have been national, including the New Jersey, Pennsylvania region, and international in scope and distribution. Since Presley's death, his performances as embodied in records and tapes have continued to be sold in major retail outlets. In addition, plaintiff's licensees and sublicensees have conducted marketing campaigns in order to sell a variety of merchandise. Plaintiff has also indicated that a movie about Presley has been filmed and will be released; however, the evidence does not reveal how much of the actual Presley performances will be included in the movie or when and where the movie will be exhibited. Plaintiff has not provided any other evidence that it is currently presenting any entertainment services in theaters or nightclubs. Plaintiff, however, has introduced a license agreement allowing Presley's former band to use the TCB logo on a record and in association with personal appearances.

The defendant's show has had a much smaller and more localized market. Although THE BIG EL SHOW has appeared in different American towns and cities, including Las Vegas, it basically has been localized in the Northeast generally and the New Jersey-Pennsylvania region specifically. The performances usually have been presented in smaller nightclubs, although there was an engagement at a Las Vegas hotel, and the show has been advertised on a local basis.

One particularly important aspect of the defendant's advertising is the emphasis placed on the disputed marks in the records, ads, and promotional materials themselves. The picture or artist's rendering, which we have already found to have an extremely close resemblance to plaintiff's mark, is highlighted along with the name THE BIG EL SHOW, except on one of the album covers which only has a sketch of the performer. The name and the written material, such as "A TRIBUTE TO ELVIS PRESLEY," does suggest the production is a type of simulation or imitation intended to honor Presley, but does not reveal the name of the star or any information as to the producer or sponsor of the show. In essence, there is nothing to negate the reasonable impression that the artist's rendering or picture is of Elvis Presley.

The marketing of limited quantities of THE BIG EL SHOW records and merchandise also appears to be on a highly localized and small scale basis. Most of the records were given away for promotional purposes. Those records which have been sold were distributed in a few stores in the New Jersey-Pennsylvania region; while the merchandise was sold mainly at THE BIG EL SHOW performances. Interestingly, Elvis Presley merchandise was also sold at THE BIG EL SHOW performances, and the evidence shows this to be the only side-by- side sale outlet of plaintiff's and defendant's products. In addition, another similarity exists in that both parties utilized a TCB logo with a lightning bolt on their stationery.

Based on the sketchy information in the record, we conclude that there is only some similarity between the marketing campaigns and the trade channels. See DeCosta, supra.

The similarity between the predominant purchasers is greater than that between the marketing campaigns and trade channels. Because defendant's enterprise, THE BIG EL SHOW, is a stylized imitation of an Elvis Presley performance, it seems likely that it would appeal to many of the same members of the public who are interested in and patronize plaintiff's entertainment services. These purchasers could be called members of the Elvis Presley consuming public. Of course, there are also significant areas of difference between the "customers." For example, since the defendant's production usually has been presented in nightclubs, the customers may attend mainly for the nightclub aspect and not the production; while plaintiff's services, because of their current forms of presentation, would appeal more to home entertainment consumers (but the release of the movie could extend the appeal of plaintiff's services to members of the public who patronize nightclubs and theaters.)

(6). Actual Confusion

Plaintiff has not presented any evidence of actual confusion by members of the consuming public. Plaintiff has not shown, for example by survey evidence, that people seeing THE BIG EL SHOW or advertisements for it thought the production was associated with the plaintiff or with Elvis Presley entertainment services. Although a showing of actual confusion could be significant, such evidence is not necessary to a finding of likelihood of confusion, see, e.g., Amstar Corp., supra; Caesars World, Inc., 490 F.Supp. at 825; Fotomat Corp., 425 F.Supp. at 703. See generally 2 McCarthy § 23:2, particularly where the party seeks only preliminary equitable relief. See, e.g., D.C. Comics, Inc., supra.

(7). Likelihood of Confusion--Conclusion

In determining the existence of a likelihood of confusion, we must look through "the eyes of 'ordinary purchasers, buying with ordinary caution,' McLean v. Fleming, 96 U.S. 245, 251, 24 L.Ed. 828 (1878), including people whose purchasers are motivated by appearance and general impressions, Dresser Industries, Inc. v. Heraeus Engelhard Vacuum, Inc., 395 F.2d 457, 462 (3rd Cir.1968), cert. denied, 393 U.S. 934, 89 S.Ct. 293, 21 L.Ed.2d 270 (1968)." Fotomat Corp., 425 F.Supp. at 703. An analysis of likelihood of confusion can be a complex process because of the variety of factors to be considered and because of the subjective and conjectural nature inherent in the process. In formulating our final conclusions we have used the perspective of the "ordinary purchaser" as our guide in balancing the extent and strength of the similarities against those of the dissimilarities. Based both on our evaluations of defendant's marks in light of the multiple factors and on our general sense impressions we have reached the following conclusions. The defendant's uses of both the initials TCB with or without the lightning bolt and of any artist's rendering or picture which resembles the "Elvis Pose," alone or as part of THE BIG EL SHOW logo, as service marks or trademarks to identify the defendant's production, records, or merchandise create a likelihood of confusion as to source or sponsorship. Although our analysis of the various factors provides ample support for our conclusion, we are especially persuaded by the strength of plaintiff's marks in the entertainment industry and the virtual equivalence of these two marks of the defendant with the corresponding marks of the plaintiff.

In making our decision, it is not necessary to conclude that the public be led to believe that defendant's show is composed of actual Elvis Presley performances or is produced by the plaintiff. It is not even necessary that the public know who the plaintiff is. What is required and what we find is that the ordinary purchaser generally familiar with plaintiff's marks is likely to believe that defendant's show is somehow related to, associated with, or sponsored by the same people or entity that provides the actual Elvis Presley entertainment services identified by its own marks. It is not at all unreasonable for the public to believe that this entity, which is the plaintiff, the Estate of Elvis Presley, has decided to license or sponsor a form of entertainment closely related to its other entertainment services. The public, realizing that an actual Elvis Presley live stage show is now impossible, might assume that the plaintiff's only alternative in order to enter this specific area of the entertainment field was to produce or sponsor an imitation of a real Elvis Presley performance, perhaps by using members of the actual Presley performing troupe or production staff or by supplying costumes or other official Presley items. It is also highly possible that consumers seeing the defendant's TCB logo or the advertisements highlighting the likeness of Elvis Presley might believe that the show is a multimedia presentation and incorporates films or recordings of actual Elvis Presley performances.

Our decisions with respect to the name THE BIG EL SHOW alone and in association with any pictures or artist's renderings resembling the "Elvis Pose" are closer. After careful consideration of the various factors, we have concluded that the use of the name THE BIG EL SHOW by itself does not create a likelihood of confusion, but its use as part of the logo or in connection with misleading pictures does create such confusion.

By attaching the artist's rendering to the name THE BIG EL SHOW to form the logo, the defendant has gone beyond allowable bounds. The likelihood of confusion associated with the artist's rendering is not sufficiently diminished by the use of the name with it. The picture, which certainly appears to be of Elvis Presley, provides the major triggering mechanism for the appeal to the public. The purchasing public seeing the picture and the name is likely to have a very similar reaction to the logo, believing the picture to be of Elvis, as it would if the picture were presented alone. The addition of the name may help to confirm that the production is an imitation of an actual Presley performance, but it really does not dispel any confusion as to plaintiff's association with or sponsorship of the production.

Thus, based on the current state of the record, we have found a likelihood of confusion with respect to the defendant's marks of TCB with or without the lightning bolt, any artist's renderings or pictures which resemble the "Elvis Pose," and the logo. The plaintiff has established the likelihood of its ultimate success on the merits of its infringement claims as to these marks. The plaintiff has not established the same likelihood as to the defendant's use of THE BIG EL SHOW, alone, as the name or mark for its production.

3. Common Law Unfair Competition

Plaintiff has alleged that the defendant's use of the names THE BIG EL SHOW, THE BIG EL SHOW IN CONCERT, THE KING, TCB (with or without the lightning bolt), the pictures resembling Elvis Presley and the presentation of the production imitating an Elvis Presley performance itself constitute common law unfair competition. Plaintiff claims that defendant's show, in combination with his advertising and promotion, should give rise to legal restraints because the defendant has "by unfair means usurped[ed] the goodwill and distinctive attributes of the business so constructed by [plaintiff]." House of Westmore, Inc. v. Denney, 151 F.2d 261, 265 (3rd Cir.1945).

The claim of common law unfair competition, which is governed in this case by New Jersey law, covers a broader spectrum of behavior than trademark or service mark infringement. "In fact the common law of trademarks is but a part of the broader law of unfair competition." Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 413, 36 S.Ct. 357, 360, 60 L.Ed. 713 (1916). Unfair competition "may be distinguished from infringement in that it does not involve the violation of the exclusive right to use a word, mark or symbol, but rather involves any violation of a right arising from the operation of an established business." House of Westmore v. Denney, 151 F.2d at 265. The focus in trademark litigation is on whether an alleged symbol or name functions to identify and distinguish one's goods or services and whether the usage by another of the same or similar mark is likely to confuse customers. Under unfair competition, the focus, generally, is on the buyer's likely confusion between two products or services based on an examination of everything that is likely to have an impact upon the purchaser. 1 McCarthy, Trademarks and Unfair Competition § 2:2 (1973). Many types of behavior are capable of constituting unfair competition. As one New Jersey court has noted:

American Shops, Inc. v. American Fashion Shops of Journal Square, Inc., 13 N.J.Super. 416, 421, 80 A.2d 575 (App.Div.1951).

One common form of unfair competition is closely linked to an action for trademark infringement and involves the use of the same or similar name, or symbols of a competitor or non-competitor. As in trademark infringement.

Great Atlantic & Pacific Tea Co. v. A & P Trucking Co., 51 N.J.Super. 412, 420, 144 A.2d 172 (App.Div.1958), modified and remanded, 29 N.J. 455, 459, 149 A.2d 595 (1959). See Perfectform Corporation v. Perfect Brassiere Co., 256 F.2d 736, 741-42 (3rd Cir.1958); Caesars World, Inc. v. Caesar's Palace, 490 F.Supp. 818, 828 (D.N.J.1980); Fotomat Corp. v. Photo Drive-Thru, Inc., 425 F.Supp. 693, 708-09 (D.N.J.1977). In addition, as with the trend in trademark infringement, injunctive relief will be granted "upon proof of likelihood of confusion as to source or sponsorship despite the diverse nature of the products or services involved. [citations omitted]." Great Atlantic & Pacific Tea Co. v. A & P Trucking Corp., 29 N.J. at 459, 149 A.2d 595. [FN35]

In light of our earlier discussion, in the service mark infringement context, of the likelihood of confusion as to the names and symbols used by the defendant, it is unnecessary for an extended analysis here. It is generally acknowledged that the same facts supporting a suit for trademark or service mark infringement will support a suit for unfair competition. See, e.g., Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 265 (5th Cir.1980); New West Corp. v. NYM Company of California, Inc., 595 F.2d 1194, 1201 (9th Cir.1979); James Burrough Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266, 274 n. 16 (7th Cir.1976); Time Mechanisms, Inc. v. Qonaar Corp., 422 F.Supp. 905, 915 (D.N.J.1976); American Shops, Inc. v. American Fashion Shops of Journal Square, Inc., 13 N.J.Super. at 421, 80 A.2d 575. Thus, our earlier decisions regarding likelihood of confusion and probable success on the merits also hold for the unfair competition claims. Because there are fewer restrictions for a showing of unfair competition and more leeway in the exercise of our equitable powers, we conclude that our findings of likelihood of confusion are even stronger. As Judge Gerry has explained, "[i]t is possible to be guilty of unfair competition even when trademark infringement is not present, if use of a similar but noninfringing mark or device is combined with unfair practices in a manner which is likely to deceive purchasers regarding the origin of goods [or services] under all the circumstances. [citations omitted]." Fotomat Corp. v. Photo Drive-Thru, Inc., 425 F.Supp. at 709. Therefore, even assuming the names ELVIS, ELVIS PRESLEY, and ELVIS IN CONCERT, the TCB logo, and the "Elvis Pose" have not functioned as service marks, the current uses by the defendant of THE BIG EL SHOW logo (words and Presley likeness), the pictures resembling Presley, and the initials TCB in his advertising and business and promotional materials are still likely to deceive the public as to the origin or sponsorship of the show itself.

As to the defendant's uses of the name THE BIG EL SHOW, without any accompanying photographs or artist's renderings, and the term THE KING, we still do not find a likelihood of confusion or deception. The plaintiff has not made a sufficient showing of unfair practices or other circumstances to convince us that the defendant's proper use of these two items constitutes unfair competition.

In addition to its claims against the defendant's use of certain names or symbols in its business, advertising, or promotional materials, the plaintiff argues that the defendant's production, itself, constitutes unfair competition. The plaintiff asserts that the packaging together of the image, dress, and style of Elvis Presley into an hour and one-half production designed to simulate an actual Elvis Presley production results in unfair competition since the audience viewing the performance is necessarily deceived into believing it is dealing with a service of the Estate of Elvis Presley. Plaintiff mainly relies on a type of unfair competition known as "unreasonable" or unprivileged imitation. As the Third Circuit recently noted in SK & F, Co. v. Premo Pharmaceutical Lab., 625 F.2d 1055 (3rd Cir.1980), the New Jersey cases define this tort "in roughly the same manner as did the First Restatement of Torts." Id. at 1062. Sections 711(c) and 741 provide the guidelines. The Restatement of Torts § 711(c) (1938) indicates that:

The definition is set forth in § 741 of the Restatement as follows:

See, e.g., French Amer. Reeds. Mfg. Co. v. Park Plastics Co., 20 N.J.Super. 325, 332-34, 90 A.2d 50 (App.Div.1952). See also Squeezit Corp. v. Plastic Dispensers, Inc., 31 N.J.Super. 217, 106 A.2d 322 (App.Div.1952). The plaintiff specifically points to United Cigar Stores Co. v. United Confectioners, 92 N.J.Eq. 449, 113 A. 226 (Ch.1921) to support its position. In that case, which involved similar store fronts, the court concluded that

Id. at 450, 113 A. 226.

Upon reviewing the record we find that the plaintiff has not presented sufficient evidence, such as eyewitness accounts, films, or video tapes, to show that the defendant's entire production is such a duplication of plaintiff's services that members of the public likely would be deceived into believing the production originated with the plaintiff. [FN36] Even assuming the defendant's production is shown to have a striking resemblance to an Elvis Presley concert, as embodied in a form such as film or video tape, this resemblance by itself, and without other evidence tending to show a deception of the public as to the origin of the production, probably would not constitute unfair competition in the same manner as a striking resemblance to a distinctive trade or business dress would. Unlike an outside appearance of a store, the presentation of the defendant's production, itself, which occurs in a theater or club, cannot act to mislead customers into attending a performance of the defendant's show in the mistaken belief that it is associated with the plaintiff. Rather, the defendant's advertising and promotional materials for the show function to induce and attract potential customers in a manner similar to a building design or a package for a product. See, e.g., Fotomat Corp., 425 F.Supp. at 709-10; Time Mechanisms, Inc., 422 F.Supp. at 915. See also Squeezit Corp., 31 N.J.Super. at 223-24, 106 A.2d 322.

In any event, even assuming the similarity in shows should be considered, we are convinced that the doctrine of unfair competition was not designed to attach strict liability to a good faith and non-confusing imitation of an entertainment service, such as a concert by a famous performer like Presley, particularly where the original performer is no longer living. As noted in Chaplin v. Amador, 93 Cal.App. 358, 362, 269 P. 544, 546 (1928), a case involving an unfair competition claim and an imitation of a performer:

Id. at 362, 269 P. at 546. (Emphasis in original). See also Lone Ranger v. Cox, 124 F.2d 650 (4th Cir.1942). Cf. West v. Lind, 186 Cal.App.2d 563, 9 Cal.Rptr. 288 (Cal.App.1960).

In deciding whether the defendant's activities constitute unfair competition, we must go beyond the question of whether THE BIG EL SHOW production is similar to an actual Elvis Presley performance as recorded on film, video tape, records, etc. Rather, our analysis must focus on the totality of the factors bearing on whether the defendant by his activities in the marketplace has attempted to deceive or confuse the public into believing THE BIG EL SHOW is connected with the actual Elvis Presley performances or sponsored by the same people, Elvis Presley's estate or its licensees, who have been presenting actual Elvis Presley entertainment services. See, e.g., DeCosta v. Columbia Broadcasting System, Inc., 520 F.2d 499, 513-15 (1st Cir.), cert. denied, 423 U.S. 1073, 96 S.Ct. 856, 47 L.Ed.2d 83 (1975); Lone Ranger v. Cox, supra; Ideal Toy Corp. v. Kenner Products, Etc., 443 F.Supp. 291, 307-09 (S.D.N.Y.1977); Wyatt Earp Enterprises v. Sackman, Inc., 157 F.Supp. 621 (S.D.N.Y.1958). After considering these circumstances in light of our earlier findings as to likelihood of confusion, we conclude that the plaintiff has adequately demonstrated a likelihood of success on the merits as to part of its unfair competition claim. The plaintiff has made a sufficient showing of the deceptive impact of the defendant's advertising and promotional materials and other communication to the public [FN37] but has not made such a showing with respect to the nature or composition of the defendant's show, itself.

4. Section 43(a) of the Lanham Act

The plaintiff argues that the defendant has violated § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), [FN38] by his use of the name THE BIG EL SHOW, the initials TCB, the phrase THE BIG EL SHOW IN CONCERT, the picture or artist's rendering which looks like Elvis Presley, and the logo composed of the name and artist's rendering. The plaintiff also claims that the defendant has violated § 43(a) by his complete adoption of the performance style, accouterment and songs made famous by Presley, and by his advertising of "A Tribute to Elvis Presley."

Section 43(a) of the Lanham Act ("Act"), 15 U.S.C. § 1125(a), [FN39] created a "distinct federal statutory tort," Franklin Mint, Inc. v. Franklin Mint, Ltd., 331 F.Supp. 827, 831 (E.D.Pa.1971), "designed to afford broad protection against various forms of unfair competition and false advertising," [FN40] John Wright, Inc. v. Casper Corp., 419 F.Supp. 292, 324-25 (E.D.Pa.1976), aff'd in part, rev'd and remanded in part sub. nom. Donsco, Inc. v. Casper Corp., 587 F.2d 602 (3rd Cir.1978), including deceptive and misleading advertising. See Nature's Bounty, Inc. v. SuperX Drugs Corp., 490 F.Supp. 50, 54 (E.D.N.Y.1980). The Third Circuit recently has noted that § 43(a).

SK & F, Co. v. Premo Pharmaceutical Laboratories, Inc., 625 F.2d 1055, 1065 (3rd Cir.1980).

Although § 43(a) may proscribe competitive torts not covered by trademark infringement law or common law unfair competition, SK & F, Co., 625 F.2d at 1065, as a general rule, the same facts which would support an action for trademark (or service mark) infringement or common law unfair competition (facts indicating a likelihood of confusion as to source or sponsorship of goods or services) would support an action for unfair competitive practices under § 43(a). See, e.g., New West Corp. v. NYM Co. of Cal., Inc., 595 F.2d 1194, 1201 (9th Cir.1979); Boston Professional Hockey Association, Inc. v. Dallas Cap & Emblem Manufacturing, Inc., 510 F.2d 1004, 1010 (5th Cir.), cert. denied, 423 U.S. 868, 96 S.Ct. 132, 46 L.Ed.2d 98 (1975); National Lampoon, Inc. v. American Broadcasting Co., Inc., 376 F.Supp. 733, 746 (S.D.N.Y.), aff'd, 497 F.2d 1343 (2nd Cir.1974); Frederick Warne & Co., Inc. v. Book Sales, Inc., 481 F.Supp. 1191, 1195 (S.D.N.Y.1979); John Wright, Inc., 419 F.Supp. at 325. See also, S K & F, Co., 625 F.2d at 1065. Because we have already addressed the strength or secondary meaning and the concomitant likelihood of confusion as to each of the names or symbols, as well as to the production itself, [FN41] we do not find it necessary to conduct a similar examination here. Those conclusions as to likelihood of success on the merits are sufficient to suggest that a similar result is likely for the § 43(a) claims.

As noted, one of the purposes of § 43(a), as distinguished from the common law of unfair competition, is to protect "consumers as well as commercial interests from the effects of false advertising." 2 McCarthy, Trademarks and Unfair Competition, supra, § 27:2 at 246. In view of the qualifications attached to our unfair competition decision, [FN42] we will address some comments to the permissible scope of the defendant's advertising for the stage production. [FN43] In this regard, we have found three lines of cases addressing unfair competition and § 43(a) claims to be especially informative. The cases are those where a violation occurs when a record is advertised so as to represent falsely the true nature or extent, if any, of the participation of a performer, see, e.g., RCA Records v. Kory Records, Inc., 197 U.S.P.Q. 908 (E.D.N.Y.1978); CBS, Inc. v. Springboard International Records, 429 F.Supp. 563 (S.D.N.Y.1976); CBS, Inc. v. Gusto Records, Inc., 403 F.Supp. 447 (