Board of Park Commissioners of the Cleveland Metropolitan Park District v. Zoological Society of Pittsburgh

BOARD OF PARK COMMISSIONERS OF THE CLEVELAND METROPOLITAN PARK DISTRICT, Plaintiff, v. ZOOLOGICAL SOCIETY OF PITTSBURGH, Defendant.

No. 1:21-cv-01284

United States District Court, N.D. Ohio

July 22, 2021

ORDER [PARTIALLY RESOLVING DOC. 7]

JAMES S. GWIN UNITED STATES DISTRICT JUDGE

Plaintiff Board of Park Commissioners of the Cleveland Metropolitan Park District (“Cleveland Metroparks”) asks for a Rule 65 temporary restraining order and preliminary injunction.^[1] With this request, Plaintiff Cleveland Metroparks seeks to stop Defendant Zoological Society of Pittsburgh (“Pittsburgh Zoo”) from using the mark “Asian Lantern Festival.”^[2] Defendant opposes.^[3]

This Court held a hearing on Plaintiff's temporary restraining order and preliminary injunction motion on July 15, 2021. At the hearing, this Court denied Plaintiff's motion for a temporary restraining order but declined to rule on Plaintiff's preliminary injunction motion until after the parties could conduct expedited discovery.^[4]

For the following reasons, the Court DENIES Plaintiff's request for a temporary restraining order.

I. Background

Since 2018, Cleveland Metroparks has hosted an annual event at the Cleveland Zoo known as the Asian Lantern Festival.^[5] The Cleveland Zoo produces the event through an agreement with Tianyu Arts & Culture, Inc., a company that presents “light show[s] using light displays of various sizes” throughout the United States.^[6] Although Tianyu Arts & Culture, Inc. contracted and provided light shows in Louisville, Kentucky Des Moines, Iowa, and other locations, the Cleveland Asian Lantern Festival was the only Northeast Ohio area light show until this year.^[7]

In 2021, Defendant Pittsburgh Zoo hired the same Tianyu Arts & Culture, Inc., to produce a light show at the Pittsburgh Zoo.^[8] At the end of June, Plaintiff Cleveland Metroparks learned that Defendant Pittsburgh Zoo's light show was using the name “Asian Lantern Festival” for its event. Cleveland Metroparks unsuccessfully tried to convince Defendant Pittsburgh Zoo to stop using the name.^[9] This Lanham Act lawsuit and temporary restraining order request followed.

II. Temporary Restraining Order

a. Legal Standard

A court may issue a temporary restraining order without a hearing or notice to the adverse party if the moving party faces “immediate and irreparable injury, loss, or damage.”^[10]

When determining whether to issue a temporary restraining order, a Sixth Circuit court considers:

(1) whether the movant has a “strong” likelihood of success on the merits; (2) whether the movant would otherwise suffer irreparable injury; (3) whether issuance of a preliminary injunction [or temporary restraining order] would cause substantial harm to others; and (4) whether the public interest would be served by issuance of a preliminary injunction.^[11]

No factor is dispositive, but a likelihood of success on the merits is critical. “[A] finding that there is simply no likelihood of success on the merits is usually fatal.”^[12] Further, the likelihood of irreparable harm to the movant is also a key concern because a temporary restraining order's purpose is to maintain the status quo until a court can address an action's merits.^[13]

A temporary restraining order is an extraordinary remedy. The movant must establish their case by “clear and convincing evidence.”^[14]

b. Analysis

i. Likelihood of Success

At this point, Plaintiff Cleveland Metroparks does not show that they have a strong likelihood of success on the merits of their claim.

To begin, Defendant Pittsburgh Zoo makes a plausible argument that this Court does not have personal jurisdiction over Defendant and that venue is improper.^[15] Personal jurisdiction acts as a necessary prerequisite for injunctive relief.^[16] It is not clear that Defendant has sufficient connections to Ohio to give this Court jurisdiction.^[17] The Court will not rule on this jurisdictional concern now, but this jurisdiction question weighs against Plaintiff's likelihood of success.

At this point, Plaintiff does not show clear evidence that they are likely to succeed on the merits of their underlying Lanham Act trademark claim. To succeed, Plaintiff must demonstrate that the “Asian Lantern Festival” mark is “protectable” and that there is a likelihood of customer confusion regarding whether Pittsburgh customers purchased their tickets because of a customer belief that the Cleveland Zoo was operating the Pittsburgh event.^[18]

Defendant argues that the term “Asian Lantern Festival” is not protectable because it is generic.^[19] In response, Plaintiff contends that “Asian Lantern Festival” is a suggestive mark or at least a descriptive mark with a secondary meaning.^[20]

Although the words themselves may not be distinctive, ^[21] Plaintiff argues that they have come to symbolize the Cleveland event beyond the literal meaning of the words “Asian Lantern Festival.” Plaintiff asserts that “Asian Lantern Festival” has a secondary meaning associated with the Cleveland Zoo's event and carries the goodwill and reputation that Plaintiff Cleveland Metroparks has cultivated over three years of producing the event.^[22]Plaintiff extensively advertised the Cleveland event, which drew more than 165, 000 visitors from Northeast Ohio and Western Pennsylvania in 2020.^[23]

The Court cannot say that “Asian Lantern Festival” is not generic and is protectable.^[24]“Asian Lantern Festival” could describe a type of event, rather than the specific Cleveland event. Plaintiff has not provided sufficient evidence that “Asian Lantern Festival” is associated with the Cleveland event or has the level of distinctiveness they claim. Further, limited runs over three years is a relatively short amount of time for Plaintiff's event to have achieved a reputation amounting to a secondary meaning.^[25]

Additionally, the Court does not believe that there is a significant likelihood of confusion between the Pittsburgh and Cleveland events. In determining the likelihood of confusion “as a result of the would-be infringer's use of the mark, ” a court considers:

1. strength of the plaintiff's mark;

2. relatedness of the goods;

3. similarity of the marks;

4. evidence of actual confusion;

5. marketing channels used;

6. likely degree of purchaser care;

7. defendant's intent in selecting the mark; [and]

8. likelihood of expansion of the product lines.^[26]

The Court is not certain that Plaintiff's mark is particularly strong. Confusion seems unlikely because the events are centered around Cleveland's and Pittsburgh's respective zoos, even if they are both “turnkey” productions from Tianyu Arts & Culture.^[27] Plaintiff has not provided actual evidence that consumers would think the Cleveland Zoo sponsored the Pittsburgh Zoo's event or that they are exactly the same event in two different locations.^[28]While the event names are very similar, even the parties' websites present different names: “Asian Lantern Festival at the Pittsburgh Zoo & PPG Aquarium”^[29] and “Asian Lantern Festival Presented By Meijer.”^[30] Plaintiff's trademark application uses “Asian Lantern Festival Cleveland Metroparks Zoo.”^[31]

The likely degree of purchaser care is also a question here.^[32] Presumably, a ticket purchaser would exercise some care and consider factors beyond whether the events appear to be the same or linked, such as their preference for or proximity to the Pittsburgh Zoo or Cleveland Zoo. There is no evidence that a potential customer would be persuaded to go to Pittsburgh over Cleveland based on confusion regarding whether the Cleveland Zoo was sponsoring or directing the Pittsburgh event.

Plaintiff does not make a strong showing that Defendant intended to copy “Asian Lantern Festival” to benefit from Plaintiff's goodwill and reputation. Plaintiff argues that Defendant's intent to copy Plaintiff can be inferred from the fact that Defendant's employees attended the 2020 Cleveland event and knew Plaintiff Cleveland Metroparks used the “Asian Lantern Festival” mark.^[33] Plaintiff's argument does not persuade because it is not clear that “Asian Lantern Festival” is a protectable mark. Moreover, Defendant provides evidence that other Tianyu-produced festivals, although outside the Northeast Ohio/Western Pennsylvania geographic area, used the term “Asian Lantern Festival” or a close variation on the term.^[34] It is not clear that Defendant meant to specifically copy Plaintiff Cleveland Zoo's phrase.

Finally, from the parties' discussion at the July 15 hearing, there appears to be only a small amount of overlap between the parties' advertising markets and channels.

Plaintiff Cleveland Metroparks makes an insufficient showing that it is likely to succeed on its trademark infringement claim. Plaintiff has not sufficiently shown that “Asian Lantern Festival” is a protectable mark or that there is a likelihood of confusion between the Cleveland and Pittsburgh events.

c. Risk of Irreparable Injury

Plaintiff has not adequately demonstrated a risk of irreparable injury if Defendant Pittsburgh Zoo is permitted to continue to use the term “Asian Lantern Festival” during the pendency of this case.

Plaintiff hints at speculative harms that are insufficient to support irreparable harm finding.^[35] For example, Plaintiff highlights Youngstown as a potential overlapping customer base equidistant to both the Cleveland and Pittsburgh Zoos.^[36] But Plaintiff has not sufficiently shown an actual significant overlap in potential customers.

Courts often find irreparable injury where there is a “likelihood of confusion or possible risk to reputation.”^[37] Loss of reputational control can cause irreparable harm.^[38] But that is not the case here, where the Court has not found likely...