CSI Entertainment, Inc v. Anthem Media Group, Inc.

Filing 88

Decision and Order: I adopt Judge Reyes' R&R in its entirety, deny the plaintiff's request for a preliminary injunction, and deny the plaintiff's request for additional discovery to supplement its objections. Ordered by Judge Ann M. Donnelly on 6/27/2017. (Greene, Donna)

IN CLERK'S OFFICE

UNITED STATES DISTRICT COURT

us DISTRICT COURT E.D.N.Y.

EASTERN DISTRICT OF NEW YORK

^ JUN 2 7 2017 *

CSI ENTERTAINMENT,INC.,

BROOKLYN OFFICE

Plaintiff,
DECISION AND ORDER

- against 15-CV-03508(AMD)(RER)
ANTHEM MEDIA GROUP,INC., AND
FIGHT MEDIA,INC., D/B/A THE FIGHT
NETWORK,
Defendants.

ANN DONNELLY,District Judge.

The plaintiff, CSI Entertainment, Inc.("CSI"), brought this action against the defendants,
Anthem Media Group, Inc.("Anthem")and Fight Media Inc.("FM")(collectively, the
"defendants"), alleging that the defendants, in using the mark FIGHT NETWORK,infringed on
two of CSI's federally registered service marks: (1)FIGHT SPORTS,and(2)FIGHT SPORTS
NETWORK..On Jime 16,2015, CSI moved for an order to show cause for a preliminary

injimction to prohibit the defendants from using their mark,FIGHT NETWORK,during the

pendency ofthis litigation. (ECF No.4.) On November 3, 2015, Magistrate Judge Ramon E.
Reyes, Jr., held a four-day preliminary injunction hearing, and thereafter issued a Report and
Recommendation("R&R")on December 30, 2016, recommending that the plaintiffs request for
a preliminary junction be denied. (ECF No. 75.) The plaintiff filed objections to the R&R on

March 10,2017, and the defendants responded to the plaintiffs objections on April 7,2017. On

June 23,2017, CSI filed a motion to supplement its objections, to which the defendants
responded on June 26, 2017. (ECF No. 86; ECF No. 87.)

I have reviewed, among other things, the plaintiffs complaint,' the plaintiffs brief in
support ofthe order to show cause and the defendants' opposition to that brief. Judge Reyes'
R&R,the plaintiffs objections to the R&R,and the defendants' response to the plaintiffs

objections. For the reasons described in further detail below, I adopt Judge Reyes' thorough and
well-reasoned R&R in its entirety, and dismiss the plaintiffs request for a preliminary injunction

with prejudice.
BACKGROUND

The facts ofthis matter are discussed in greater detail in Judge Reyes' R&R. (ECF No.

75.) In summary,the plaintiff, CSI, is a multimedia company that acquires, produces, and
distributes fight-related content through various media outlets in the United States and
internationally. (ECF No. 75 at 3; ECF No. 80 at 3.) Among other trademarks, CSI has two

federally registered marks with the United States Patent and Trademark Office("USPTO")-one
for FIGHT SPORTS and the other for FIGHT SPORTS NETWORK -the trademarks at issue in

this matter. (ECF No. 75 at 3.) CSI registered FIGHT SPORTS NETWORK with the USPTO
on January 10, 2006,and registered FIGHT SPORTS with the USPTO on June 11, 2006. (ECF
No. 75 at 3.)

The defendants are Canadian companies, with principal places of business in Toronto,

Canada, and offer a "24/7" fight-related content channel called FIGHT NETWORK.^ (ECF No.
75 at 3,4,6-7.) When CSI became aware that the defendants' predecessor company. Fight

'
This case was reassigned to me in November of 2015.
^ Anthem acquired THE FIGHT NETWORK in 2011 and subsequently changed the name to FIGHT NETWORK.
(ECF No. 75 at 3.)

Media, was using THE FIGHT NETWORK mark in Canada, it sent a cease and desist letter to

the company on March 21,2007. (EOF No. 75 at 6.) Fight Media responded on April 13,2007,
claiming that the marks were generic and denying infringement, and that unless it heard "to the
contrary" from CSI, it would consider the matter "settled to CSI's satisfaction." (ECF No. 75 at

6.) CSI never responded to this letter. (ECF No. 75 at 6.) Anthem later acquired Fight Media in
2011. (ECF No. 75 at 3.)

Some time later, in June of2014, CSI learned ofthe defendants' entry into the U.S.
markets when the defendants launched their 24/7 FIGHT NETWORK channel. (ECF No. 75 at

7.) Thereafter, the defendants tried and failed to register its mark, FIGHT NETWORK,with the

USPTO;the USPTO rejected the application in part because the defendants' mark was similar to
CSI's registered marks. (ECF No. 75 at 7.) CSI commenced this action on June 16, 2015 and

requested a preliminary injunction to enjoin the defendants fi*om using the FIGHT NETWORK
mark during this litigation. (ECF No. 75 at 7.)

Judge Reyes held a four-day preliminary injunction hearing beginning on November 3,
2015. (ECF No. 83 at 3.) During the hearing, CSI called six witnesses to testify about the use of
CSI's marks, CSI's business model, and CSI's industry reputation. (ECF No. 75 at 2.) The

defendants called four witnesses to testify about the generic nature and use of CSI's marks,the

defendants' presence in the market, and the defendants' reputation in the industry. (ECF No. 75
at 2.)

On December 30,2016 Judge Reyes issued an R&R denying the plaintiffs request for a

preliminary injunction. On March 10,2017,the plaintiff submitted its objections to Judge
Reyes' R&R,to which the defendants responded on April 7, 2017. (EFC No. 80; ECF No. 83.)

Subsequently, on June 23,2017, CSI moved this Court to supplement its objections to the R&R,

and the defendants responded on June 26, 2017.^
For the reasons set forth below, I adopt Judge Reyes' R&R in its entirety.
DISCUSSION

In considering a magistrate judge's report and recommendation, the district courtjudge
"may accept, reject, or modify, in whole or in part, the findings or recommendations made by the
magistrate judge." Fed. R. Civ. P. 72(b).

When a magistrate judge makes a recommendation that is dispositive of a party's claim,
the districtjudge must review de novo any part of the magistrate judge's decision to which a
party properly objects. Fed. R. Civ. P. 72(b)(3). The court may adopt any sections ofthe
magistrate's report to which a party did not object, as long as the magistrate's decision was not
"facially erroneous." Markey v. Lapolla Indus., /wc.. No. 12-cv-4622-JS-AKT,2016 WL

324968, at *3(E.D.N.Y. Jan. 26,2016)(citation omitted). Motions for preliminary injunctions

are considered dispositive motions. See, e.g., Mitchell v. Century 21 Rustic Realty, 233 F. Supp.
2d 418,430(E.D.N.Y.), afF4 45 F. App'x 59(2d Cir. 2002).
If a party does not object to a conclusion in the magistrate judge's report, the argument is

waived, and will not be reviewed. See, e.g., Johnson v. Woods,426 F. App'x 10,11 (2d Cir.
2011)(citing Cephas v. Nash, 328 F.3d 98,107(2d Cir. 2003)).

^ The plaintiffs June 23,2017 application for additional discovery into the "recent expan[sion]" ofthe defendants'
use ofits mark in connection with Verizon's GO90 service is denied. (ECF No. 86.) Not only is this request
untimely- occurring months after the preliminary injunction hearing and the submission ofthe R&R- but Judge
Reyes already considered it in his R&R,and found that the factor the plaintiff contends it supports favored the
plaintiff. (ECF No. 75 at 4,fh 5,28-29.) Thus,the discovery the plaintiffseeks is needlessly duplicative. Finally,
as discussed below, additional discovery would not change my decision to adopt Judge Reyes' R&R. {Infra at 4-7.)

4

A party seeking the extraordinary remedy of a preliminary injunction must demonstrate
by a clear showing: (1)irreparable harm absent injunctive relief;(2)either a likelihood of

success on the merits, or a serious question going to the merits to make them fair ground for trial,
with the balance of hardships tipping decidedly in the movant's favor; and (3)that the public's
interest weighs in favor of granting an injunction. Red Earth LLC v. United States, 657 F.3d
138,143(2d Cir. 2011)(internal quotation marks and citations omitted); Moore v. Consolidated

Edison Co. ofNew York,409 F.3d 506, 511 (2d Cir 2005)(internal quotation marks and citations
omitted).

Here, the plaintiff did not object to Judge Reyes' determination that CSI failed to
establish that it would suffer irreparable harm in the absence of injunction relief. (EOF No. 75 at
9-20;see generally, ECF No. 80.) Nor did the plaintiff object to Judge Reyes' conclusion that

the public interest is not harmed by denying the plaintiffs request for injunctive relief. (ECF

No. 75 at 35-36;see generally, ECF No. 80.) I find, therefore, that CSI has waived further
review oftwo of the three prongs ofthe preliminary injunction analysis, and as a result, that

Judge Reyes' findings that the plaintiff has not carried its burden with respect to these two
prongs, stand. See Cephas, 328 F.3d at 107.
In view ofthe foregoing, it is unnecessary to consider the plaintiffs likelihood of success
on the merits-that the plaintiffs trademarks are entitles to protection and that the defendants'
use of its mark is likely to cause confusion. See Caldwell Mfg. Co. N. Am., LLC v. Amesbury
Grp., Inc.,]Ao. 1I-CV-6183T,2011 WL 3555833, at *6(W.D.N.Y. Aug. 11, 2011)("[bjecause
the plaintiff has failed to establish that it is subject to irreparable harm if the preliminary

injunction is not issued, the court need not determine whether or not plaintiff will likely succeed
on the merits ofits claim")(collecting cases); Stein v. 1-800-Flowers.com, Inc., No. I6-cv-6252-

RRM-RLM,2016 WL 8230128, at *3(E.D.N.Y. Dec. 2,2016)(denying request for a

preliminary injimction because the plaintiff failed to demonstrate irreparable harm despite
whether the plaintiff would be likely to succeed on the merits ofthe claim). Nevertheless,
because this issue constitutes the whole ofthe plaintiffs objections, I will address the point. The
plaintiff objects to Judge Reyes' conclusions that: (1)CSI's marks are "generic" and not
sufficiently "used in commerce" to warrant protection under § 1114 ofthe Lanham Act(15
U.S.C. § 1114), and (2)based on the Polaroid factors {Polaroid Corp. v. Polarad Elecs. Corp.,

287 F.2d 492(2d Cir. 1961)), there is not a high likelihood ofconsumer confusion between
CSI's and the defendants' marks. (ECF No. 80 at 6-17.) The plaintiffs arguments are not

persuasive. Judge Reyes thoughtfully analyzed the evidence from the four-day hearing, and
based his conclusions on that evidence. The plaintiff does not put forth any compelling legal
authority or additional evidence to substantiate its objections. In particular, I reject CSI's

assertion that Judge Reyes' finding of"genericness"[sic] amounts to a "forfeiture of a property
right." (ECF No.80 at 11.) Judge Reyes evaluated the plaintiffs likelihood ofsuccess on the
merits for purposes of deciding whether to grant a preliminary injunction; it is not a final
adjudication ofthe merits. See J.P. Morgan Sec. Inc. v. Louisiana Citizens Prop. Ins. Corp.,712
F. Supp. 2d 70,75(S.D.N.Y. 2010)("[t]he purpose of a preliminary injunction is to preserve the

status quo between parties pending a final determination ofthe merits .... a court is not called
upon finally to decide the merits ofthe controversy")(internal quotation marks and citations
omitted). The parties remain free to litigate the substantive issues to a final resolution.
Because the plaintiff has failed to establish(1)that it will suffer irreparable harm in the
absence ofinjunctive relief, and(2)that the public interest weighs in favor of granting injunctive

relief, the Court finds that the plaintiff has not made a clear showing that it is entitled to the
extraordinary remedy ofinjunctive relief.

CONCLUSION

Accordingly, I adopt Judge Reyes' R&R in its entirety, deny the plaintiffs request for a

preliminary injunction, and deny the plaintiffs request for additional discovery to supplement its
objections.
SO ORDERED.

s/Ann M. Donnelly
Ann M.Donnelly
United States District Judge
Dated: Brooklyn, New York
June 27,2017