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Mutant X Articles: 8/9/01 Judge rules on Fox lawsuit



The Official Mutant X Site 8/9/01 | Details on Legal Eagle 8/9/01

August 9, 2001

Statement by Dick Askin, president and CEO of Tribune Entertainment, regarding this morning's decision by Judge Allen G. Schwartz of the United States District Court for the Southern District of New York regarding the new syndicated action hour program "MUTANT X":

"This morning (August 9, 2001), the U.S. District Court overwhelmingly ruled in our favor by denying Fox's claims seeking a preliminary injunction to halt production and use of the title for our eagerly awaited new action hour program 'MUTANT X' and dismissing all of the significant claims against Tribune Entertainment. We have always believed that there are no actionable similarities whatsoever between 'MUTANT X' and the motion picture 'X-Men,' and are pleased that Judge Schwartz agreed with us and rejected Fox's efforts to stop the show.

To date, we've produced seven episodes of 'MUTANT X' for its inaugural season, which will premiere the week of October 1st, and very much look forward to the long and successful run we anticipate this exciting program will enjoy."


Zap 2 It 8/9/01

'Mutant X' Just Sounds Like 'X-Men,' Court Rules
Thursday, August 09, 2001 10:00 PM PT

Mutation has never been so coveted.

A legal battle which arose between 20th Century Fox and Tribune Entertainment (a branch of the company that owns Zap2it) over the syndicated series "Mutant X" caused both parties to claim victory Thursday (Aug. 9), reports Variety.

New York District Court Judge Allen Schwartz turned down an injunction filed by Fox to halt production of Tribune's "Mutant X" series. At the same time, he ruled that Tribune's use of the "Mutant X" title violated Fox's rights -- but stopped short of forcing Tribune to change the series' name.

Fox had sued "Mutant X" producers Tribune, Marvel Enterprises and Fireworks Entertainment, arguing that the series bore more than a passing resemblance to its 2000 "X-Men" movie. The producers then counter-sued.

The U.S. District Court "overwhelmingly ruled in our favor [and dismissed] all of the significant claims against Tribune," says Tribune Entertainment president and CEO Dick Askin. "We have always believed that there are no actionable similarities whatsoever between 'Mutant X' and the motion picture 'X-Men.'"

At Fox, VP of litigation Ted Russell argues that Tribune had already altered the nature of the show, which will launch the week of Oct. 1, following his company's complaint. Russell also says that the court said that Fox had the option of seeking a permanent injunction or monetary damages if Tribune continues to use the show's title.

His slightly comic-book-villain-esque warning: "If Tribune and Marvel decide to use the title 'Mutant X,' they do so at their own peril."

© Zap 2 It


Hollywood Reporter 8/10/01

Court Won't Stop 'mutant X'
By Steve Brennan Date: Friday, August 10 2001

A bid to block production of the high-profile new-season syndicated sci-fi series "Mutant X" has been rejected by a U.S. District Court.

20th Century Fox Corp. initiated the action in April when it filed suit alleging that "Mutant X," on which Tribune Entertainment is partnered with Marvel Comics and Fireworks Entertainment, was a look-alike TV version of Fox's hit movie "X-Men," also based on Marvel Comics characters.

Following the publication of the court's findings Thursday, Tribune Entertainment and Fox both claimed victory in the case.

Tribune Entertainment president and CEO Dick Askin said, "The U.S. District Court overwhelmingly ruled in our favor by denying Fox's claims seeking a preliminary injunction to halt production and use of the title for our eagerly awaited new action hour program 'Mutant X' and dismissing all of the significant claims against Tribune Entertainment.

"We have always believed that there are no actionable similarities whatsoever between 'Mutant X' and the motion picture 'X-Men' and are pleased that Judge Schwartz agreed with us and rejected Fox's efforts to stop the show."

To date, seven episodes of the sci-fi weekly actioner have completed production, and the series is set to premiere Oct. 1.

However, Fox vp litigation Ted Russell said: "We never expected an injunction stopping the show; we sought an injunction stopping an 'X-Men' show. The show that we started with was an 'X-Men' show, and as the lawsuit progressed, changes were made that brought (the show) further from the 'X-Men.' "

A statement issued by Fox said the court found that Fox could "recover monetary damages" for Marvel and Tribune's use of the "Mutant X" title and that a permanent injunction on the title "may later issue."

The court found that "Fox has demonstrated a clear likelihood of success for a claim of breach of contract grounded in defendants' use of the 'Mutant X' name as the title of the proposed series."

However, the court ruled that nothing "in the evidence submitted in support of Fox's motion for a preliminary injunction indicates that the actions of Tribune and/or Fireworks, in assisting in the creation and production of the new series, suggests that it was their intent to induce a breach. Nor do the facts alleged reflect that either Tribune or Fireworks was the proximate cause of the alleged breach."

In relation to allegations that Tribune used Fox's "X-Men" logo to sell the "Mutant X" show, the court found that "all clips from and references to the 'X-Men' have been removed from such sales material. Defendants' original, green metallic 'Mutant X' logo purportedly appeared in certain entertainment industry publications in early 2001. However, while such publication may have infringed Fox's copyrights, any harm to the public as a result of its association of 'Mutant X' with 'X-Men' is illusory, because the goodwill associated with the 'X-Men' is Marvel's alone."

© The Hollywood Reporter


Comics Continuum: 8/10/01

MUTANT X TV UPDATE

The Mutant X television series is expected to begin on schedule the week of Oct. 1 despite a court ruling involving 20th Century Fox on Thursday.

Fox had sued the companies involved with the series, saying that Mutant X infringed on its X-Men movie rights.

According to Daily Variety, New York District Court Judge Allen Schwartz turned down an injunction filed by 20th to halt production of the series. At the same time, the court ruled that Tribune's use of the Mutant X title violated 20th's rights - but stopped short of actually forcing the distributor to change the series' name.

Fox issue a release Thursday night concerning the rulings. Here's what the release said:

"Twentieth Century Fox is pleased that the court issued an injunction against Marvel, Tribune and Fireworks, preventing them from violating Fox's rights in its X-Men movie.

"The court also held that Fox can recover monetary damages for Marvel and Tribune's use of Mutant X as the title of their television series, in violation of Fox's contract with Marvel, and that a permanent injunction on the title of the series may later issue. In the court's words, Fox 'demonstrated a clear likelihood of success for a claim of breach of contract grounded in (the) use of the Mutant X name as the title of the proposed series.'

"In this lawsuit, Fox forced the creators of Mutant X to change the content of their series, and the court has now ordered further changes to the logo, used to sell the Mutant X television series, which the court held infringes Fox's rights and can no longer be used. The court rejected Marvel's argument that television series rights were not 'frozen' by the parties' agreement.

"Finally, the court allowed Fox to proceed to a full trial. Fox looks forward to this opportunity to further vindicate its rights."

Tribune CEO Dick Askin told Daily Variety on Thursday that the U.S. District Court "overwhelmingly ruled in our favor … (and dismissed) all of the significant claims against Tribune."

Marvel Studios representatives have told The Continuum that they will not comment on litigation. A publicist for the show did not return requests for information on how the rulings will affect Mutant X's production status. The show is currently in hiatus.

© Comics Continuum


Cinescape: 8/10/01

Will MUTANT X Still Be MUTANT X? Fox continues legal actions to alter coming syndicated TV series.
Dateline: Friday, August 10, 2001
By: FRANK KURTZ, News Editor
Source: Variety

Given the commercials and promotional events lined up for the coming MUTANT X TV series, you'd think that the lawsuit regarding the property filed by 20th Century Fox against Tribune Entertainment had been settled. It hasn't.

On Thursday, New York District Court Judge Allen Schwartz turned down Fox's injunction that was filed to halt production of the MUTANT X TV series.

Meanwhile, the judge also declared that the use of MUTANT X as a title was in violation of Fox's rights to the X-MEN. Still, the judge did not, as yet, order a name change for the series.

Tribune Entertainment prexy-CEO Dick Askin spoke on this turn of events, declaring that the U.S. District Court "overwhelmingly ruled in our favor … (and dismissed) all of the significant claims against Tribune... We have always believed that there are no actionable similarities whatsoever between MUTANT X and the motion picture X-MEN."

However, in a statement issued by Fox on the matter, the studio says, "In this lawsuit, Fox forced the creators of MUTANT X to change the content of their series, and the court has now ordered further changes to the logo, used to sell the MUTANT X television series, which the court held infringes Fox's rights and can no longer be used. The court rejected Marvel's argument that television series rights were not 'frozen' by the parties' agreement.

"Finally, the court allowed Fox to proceed to a full trial. Fox looks forward to this opportunity to further vindicate its rights."

More pointedly, while talking to Variety, Ted Russell, Fox's VP of litigation stated, "If Tribune and Marvel decide to use the title MUTANT X, they do so at their own peril."

© Cinescape


Comics 2 Film 8/10/01

Reported By Comics2Film and Variety, 8/10/2001:

In April of this year 20th Century Fox and Marvel Enterprises, Inc. filed suits against one another over the syndicated TV program Mutant X. Fox asserted that the show infringed on its right to make X-Men features and violated their contract which forbade Marvel from developing X-Men related live-action TV shows without consent from Fox.

Marvel countered by stating the Mutant X is not an X-Men spin-off.

Subsequent to the filings, fans have seen a disclaimer appear on the Mutant X website stating in no uncertain terms that Mutant X is not related to X-Men. More recently, the art design for the show underwent a face-lift. This month the site rolled out the new look, logo and color-scheme, which further differentiated it from the feature film.

Yesterday New York District Court Judge Allen Schwartz handed in a ruling on the suits. The ruling was followed by a press release from Fox, claiming victory in the mutant battle. According to Fox's release, "the court issued an injunction against Marvel, Tribune and Fireworks, preventing them from violating Fox's rights in its X-Men movie."

The release also states that the court has held that Fox can recover monetary damages for Marvel and Tribune Entertainment's use of Mutant X as the title of their television series, in violation of Fox's contract with Marvel, and that a permanent injunction on the title of the series may later issue.

The release references the logo change as a direct result of the lawsuit and claims that the court has ordered further changes. Furthermore, Fox can now take their case against Marvel and Tribune to full trial.

All of this sounds like a resounding victory for Fox. However, an article in today's Variety states that Marvel and Tribune are also claiming victory.

Tribune Entertainment president-CEO Dick Askin told Variety that the judge, "overwhelmingly ruled in our favor...(and dismissed) all of the significant claims against Tribune."

For one thing, the court order does not prevent Tribune from launching the show. Mutant X will go into syndication on October 1 as planned.

Also, the order does not forbid the use of the title. So, there's nothing stopping Marvel and Tribune with proceeding with the launch without making any further alterations to the show's title, look or format.

However, with the option of a full trial open to Fox, the show's producers may be considering taking steps to avoid further problems. Ted Russell, Fox's VP of litigation cautioned, "If Tribune and Marvel decide to use the title Mutant X, they do so at their own peril."

© Comics 2 Film


ICv2 8/12/01

Mutant in the Middle: Both Sides Claim Victory in Mutant X Decision
August 12, 2001

Both Tribune Entertainment and 20th Century Fox claimed victory in Fox's lawsuit against Tribune and Marvel over the Mutant X syndicated TV series (see "Fox Sues Marvel Over Mutant X"). Fox, which is in pre-production on a sequel to its X-Men Movie, claimed that the Marvel/Tribune Entertainment Mutant X series violated Fox's rights, which derive from the original agreement that Fox made with Marvel to create the X-Men movie. In a ruling handed down last week in New York District Court, Judge Allen Schwartz rejected Fox's call for an injunction to halt the production of Mutant X. This means that Tribune Entertainment will proceed with the premier of the Mutant X series, which will debut in about 90% of the North American television markets during the week of October 1.

But the judge also ruled that the Mutant X title infringed on Fox's rights, though the ruling made no provision forcing the Tribune Company to change the series' name. Fox has the option of going back to court to attempt to force Tribune Entertainment to change the series name to something that doesn't have "X" in the title, but so far Fox has not said that it will go back to court. A Fox spokesperson did mention as part of his claim to victory that Tribune Entertainment had already modified the show to make it less like the X-Men.

With its mega budget X-Men sequel in the works, Fox obviously wants to avoid any confusion with lesser mutants, who might work in the wilds of syndication. Fox obviously feels that Mutant X could cheapen the whole X-Men/Mutant concept and dilute the effect of the studio's A-list film. Most retailers would probably hope that the Mutant X series, which is being produced by a team that includes some very savvy comics pros like Howard Chaykin, would be a success that would spawn a comics series and some toys, and maybe even get a few more kids to read comics. The court's decision appears to make it somewhat more likely that Mutant X will indeed make it on the air, though with the syndicated market as tough as it is, getting on the air is no guarantee of success.

© ICv2


Find Law 8/13/01

TWENTIETH CENTURY v MARVEL ENTERPRISES UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT
August Term 2001 Argued: October 10, 2001 Decided: January 14, 2002 Errata Filed: January 28, 2002 Docket No. 01-7983
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TWENTIETH CENTURY FOX FILM CORPORATION, a Delaware Corporation, Plaintiff-Appellant, v. MARVEL ENTERPRISES, INC., a Delaware Corporation; TRIBUNE ENTERTAINMENT COMPANY, a Delaware Corporation; FIREWORKS COMMUNICATIONS, INC., a Delaware Corporation and FIREWORKS TELEVISION (US) INC., a Nevada Corporation, Defendants-Appellees.
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Before: NEWMAN and KEARSE, Circuit Judges, and CARMAN,* Chief Judge, United States Court of International Trade.
Appeal from the August 13, 2001, order of the United States District Court for the Southern District of New York (Allen G. Schwartz, District Judge), denying a motion for a preliminary injunction sought under a breach of contract claim and a Lanham Act claim. Denial of preliminary injunction affirmed; case remanded for further consideration of Lanham Act claim.
Dale M. Cendali, O'Melveny & Myers LLP, New York, N.Y., for plaintiff-appellant.
Jonathan D. Reichman, New York, N.Y. (Dana R. Kaplan, John R. Hutchins, Kenyon & Kenyon, New York, N.Y., on the brief), for defendant-appellee Marvel Enterprises, Inc. Maura J. Wogan, New York, N.Y. (Gerald E. Singleton, Edward Hernstadt, Frankfurt Garbus Kurnit Klein & Selz, P.C., New York, N.Y., on the brief), for defendant-appellee Tribune Entertainment Company.
Steven H. Rosenfeld, Jason A. Advocate, Ohrenstein & Brown, LLP, Garden City, N.Y., signed, on behalf of defendants- appellees Fireworks Communications, Inc., and Fireworks Television (US) Inc., the joint brief for all defendants-appellees.

JON O. NEWMAN, Circuit Judge.

This appeal, raising issues concerning the rights of a trademark licensee, arises from a dispute between the motion picture studio that produced the film "X-Men" and the studio's licensor, which has published "X-Men" comic books and currently produces the television series, "Mutant X." Plaintiff-Appellant Twentieth Century Fox Film Corp. ("Fox") appeals from the Opinion and Order of the United States District Court for the Southern District of New York (Allen G. Schwartz, District Judge), entered August 13, 2001, denying a motion for a preliminary injunction to prevent the Defendants-Appellees Marvel Enterprises, Inc. ("Marvel"), Tribune Entertainment Co. ("Tribune"), and Fireworks Communications, Inc. and Fireworks Television (US), Inc. (collectively, "Fireworks") from airing the "Mutant X" television series, at least in its current form. The injunction was sought on the grounds that the TV series violated Fox's contractual rights and its rights under the Lanham Act. The ruling also dismissed Fox's Lanham Act claims. We conclude, contrary to the District Court, that a trademark licensee can sue its licensor for false advertising of the licensor's product, but we also conclude that the District Court did not err in denying the preliminary injunction. We therefore affirm the denial of the preliminary injunction but remand for further proceedings consistent with this opinion.

Background

The Parties. Fox is a Delaware corporation with its principal place of business in Los Angeles, California. Fox creates, produces, distributes, and markets throughout the world motion pictures and television shows, and goods, merchandise, and other products relating to such motion pictures and television shows. Marvel is one of the leading comic book/entertainment companies in the world, and is the largest publisher of comic books in the United States. Marvel's character-based entertainment business includes a proprietary library of over 4,500 characters. Marvel uses or licenses the use of its properties and characters on products, for special events, and in connection with animated and live action television series, television motion pictures, and theatrical film features.

The "X-Men" Property. In 1963, Marvel began publishing a comic book series entitled "X-Men," featuring a group of young, superpowered mutants led by Professor X, an older, superintelligent leader who sought to train his students and to protect them from a hostile society. Marvel has since released several dozen comic book series associated with the X-Men, including "Mutant X," which features the brother of one of the original X-Men.

The 1993 Agreement. In October 1993, Marvel and Fox signed an agreement (the "1993 Agreement") pursuant to which Marvel licensed to Fox all the rights that Fox may require in order to produce, distribute, exploit, advertise, promote, and publicize theatrical motion pictures based on the "X-Men" comic book series. The "X-Men" comic book series, referred to in the Agreement as the "Property," includes the X-Men Characters, specifically the "core" Characters and the Characters of the "X-Universe"; their origin stories; storylines from individual comic books; and "all other elements relating to the Property and the Characters." The rights granted to Fox included "the right to use the title (or subtitle or portion of the title) of the Property or any component of the Property as the title of any Picture or related exploitation." The Agreement reserved all television rights to Marvel, subject to a proviso, critical to Fox's pending contract claim, that Marvel would not "produce, distribute or exploit or authorize the production, distribution or exploitation of any live-action motion picture" without Fox's consent (the "Freeze").

The "Mutant X" Comic Books. In November 1998, Marvel began publishing a comic book series called "Mutant X," which featured a character known both as Havok and Alex Summers, the brother of one of the original X-Men characters, known both as Cyclops and Scott Summers. The "X-Men" Film. In 1999, Fox exercised the option granted by the 1993 Agreement and began shooting a motion picture entitled "X- Men." On July 14, 2000, the "X-Men" movie was released in theaters nationwide. Fox estimates that gross receipts from the film have totaled more than $290 million, not including earnings from the sales of videotapes, DVDs, and associated merchandising.

The "Mutant X" TV Series. In the summer of 2000, Marvel and Tribune entered into an agreement to develop a live-action television series, originally to be called "Genome X" and then changed to "Mutant X," involving characters that were the product of genetic splicing experiments gone awry. In November 2000, Tribune and Fireworks agreed to cooperate on the financing, production, and distribution of the TV series.

The Instant Action. In April 2001, Fox filed the instant lawsuit, claiming that the Defendants violated its intellectual property rights in the "X-Men" film and associated marketing and branding efforts by marketing and producing the "Mutant X" television series, whose concept, premise, and characters Fox alleges are virtually identical to those of the "X-Men" film. Further, Fox claims that in violating the contractual "Freeze," Marvel has created a "knock-off" product to "cash in" on Fox's efforts, thereby cheapening the value of Fox's film and associated marketing opportunities, inducing purchasers of TV programming and the public to believe that the "Mutant X" TV series is associated with Fox's film, and diminishing the market for Fox's planned sequel(s) to the "X-Men" film.

Fox sued for (1) breach of contract against Marvel, (2) breach of implied covenant of good faith and fair dealing against Marvel, (3) tortious interference with contractual relations against Tribune and Fireworks, (4) unfair competition and/or false designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), against all Defendants, (5) copyright infringement against all Defendants, (6) deceptive trade practices against all Defendants, and (7) common law unfair competition against all Defendants.

Fox filed a motion for a preliminary injunction, and the Defendants filed a motion to dismiss. The District Court (1) declined to dismiss the breach of contract claim, ruling that a significant factual dispute existed as to the scope of the rights under the contract; (2) dismissed the claim for breach of the implied covenant of good faith and fair dealing, as duplicative of the contract claim; (3) dismissed the tortious interference with contract claim for failing to allege the required elements; (4) dismissed the Lanham Act claim on the ground that a trademark licensee has no goodwill in the licensed trademark, and therefore has no standing to sue; (5) declined to dismiss the copyright claim, finding that Fox sufficiently alleged the elements of a copyright cause of action with respect to its logos; (6) dismissed the common law unfair competition claim, because any misappropriation claim is preempted by the copyright laws, and any false designation/false advertising claim is precluded for the same reason as the Lanham Act claim; and (7) dismissed the deceptive trade practices claim, because no harm to the public is alleged or reflected in the record. See Twentieth Century Fox Film Corp. v. Marvel Enterprises, Inc., 155 F. Supp. 2d 1 (S.D.N.Y. 2001).

As to the motion for a preliminary injunction, the District Court held that Fox was likely to prevail on its breach of contract claim as to Marvel's use of the proposed title of the TV series, but not as to the characters or storylines, and that even as to the title, Fox had failed to show irreparable harm warranting a preliminary injunction. As to the copyright claim, the court granted a preliminary injunction prohibiting the Defendants from using video clips of the "X-Men" film in the promotion of the TV series, and prohibiting use of a substantially similar logo.

Fox appeals from the denial of its request for a broader preliminary injunction in aid of both its contract and Lanham Act claims. Fox also seeks reversal of the District Court's dismissal of the Lanham Act claim.

Discussion

Our appellate jurisdiction is properly invoked under 28 U.S.C. § 1292(a)(1) to review the District Court's denial of Fox's motion for a preliminary injunction. Because that injunction was sought on the basis of both Fox's contract and Lanham Act claims, we consider each alleged basis for the injunction separately.

1. Contract Claim

The District Court declined to dismiss the breach of contract claim, ruling that a significant factual dispute exists as to the scope of the Freeze. 155 F. Supp. 2d at 15-16, 44. Fox contended that the phrase "live-action motion picture for free television exhibition" in the Freeze provision applied to hour-long episodes of movies made for TV; Marvel contended that the phrase precluded (without Fox's consent) only production of feature-length movies made for TV. The District Court deemed the phrase ambiguous, read in the context of the Freeze provision and the entire Agreement. Concluding that resolving the ambiguity would require extrinsic evidence, the Court denied the motion to dismiss the contract claim. Turning to the preliminary injunction request, the Court concluded that Fox had shown a probability of success on its claim that the "Mutant X" TV series breached the Freeze provision with respect to the title of the series, id. at 36, but not as to the characters or storylines of the series, id. at 40, 43.

However, the Court denied the preliminary injunction for lack of an adequate showing of irreparable injury, ruling that any harm to Fox could be estimated in monetary terms. See id. at 44. The Court noted that "[e]ach side present[ed] equally plausible, yet equally indeterminate, views concerning the impact of a television series, in particular a live-action series, on the value of a theatrical motion picture based on the same underlying property which is produced after the television series is released." Id. at 43. The Court contrasted Fox's view that a TV series of inferior quality, available on free TV, would impair the market for a sequel to the "X-Men" film with Marvel's view that the TV series would widen the audience for "X-Men" characters and increase the value of Fox's films. Assessing the affidavit evidence in support of these conflicting claims, the Court concluded that Fox had not shown any harm that "is actual or imminent," id. at 44, that "nothing in the record indicates that the new [TV] series will be of low quality," id., and that any loss of profits to Fox, "although difficult to precisely quantify . . . may be estimated in monetary terms," id. We review the Court's determination concerning irreparable injury for abuse of discretion, and conclude that the allowable discretion was not exceeded. In the first place, "when a party can be fully compensated for financial loss by a money judgment, there is simply no compelling reason why the extraordinary equitable remedy of a preliminary injunction should be granted."1 Borey v. National Union Fire Insurance Co., 934 F.2d 30, 34 (2d Cir. 1991). Moreover, the claim that a TV series of hour-long episodes, because of its allegedly poor quality, will impair the market for the sequel to a movie shown in theaters seems especially strained when the youthful age group of the likely audience is considered. Finally, the equities weigh against halting a TV series now being aired because of alleged injury to a film sequel that is, at best, in the planning stage.

2. Lanham Act Claim

The District Court gave no separate consideration to the preliminary injunction request based on Fox's Lanham Act claim because the Court dismissed that claim on the ground that Fox, as Marvel's licensee, had no goodwill of its own in the "X- Men" property. Although the dismissal of one claim in the absence of final judgment disposing of all claims is not appealable in the absence of compliance with Rule 54(b) of the Federal Rules of Civil Procedure, we are entitled to make some assessment of the sufficiency of Fox's Lanham Act claim in order to determine whether a preliminary injunction was properly denied with respect to that claim. See Volvo North America Corp. v. Men's International Professional Tennis Council, 839 F.2d 69, 75-76 (2d Cir. 1988) (grant of motion to dismiss certain counts reviewable because ruling in effect denied injunctive relief).2

Fox challenges the District Court's rejection of both its false designation of origin and its false advertising claims, which Fox sometimes combines into a generalized unfair competition claim. The claims are distinct, Resource Developers, Inc. v. Statue of Liberty-Ellis Island Foundation, Inc., 926 F.2d 134, 139 (2d Cir. 1991); Johnson & Johnson v. Carter-Wallace, Inc., 631 F.2d 186, 188 (2d Cir. 1980), and require separate consideration.

To the extent that Fox is alleging that the Defendants are falsely designating the origin of the TV series, the claim was properly dismissed. The District Court was correct in noting that the "origin" of the series (and the film), within the meaning of trademark law (i.e., the source of the goodwill inhering in the trademarks that Marvel licensed to Fox), is Marvel, the owner of the marks. 155 F. Supp. 2d at 22 n.33. Indeed, Marvel, as the licensor of the "X-Men" property, is obliged to maintain some control over the quality of the licensed property as an incident of valid licensing or risk abandonment of its mark. Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358, 367 (2d Cir. 1959); 2 McCarthy on Trademarks and Unfair Competition § 18.42, at 18-66 (4th ed. 2001). Fox, on the other hand, as Marvel's licensee, can claim no impairment of goodwill in the "X- Men" property associated with the "X-Men" trademark, see id. § 18.52, at 18-88 ("It is clear that use of a mark by a person while such person was a licensee builds up no rights in the mark as against the licensor.").3 Of course, if Marvel were representing that its TV series had been produced by Fox, thereby promoting the series on the basis of the goodwill associated with the mark "Fox," Fox would be able to claim false designation of origin.4

Nevertheless, Fox is not precluded as a licensee of Marvel from pursuing its claim that Marvel has falsely advertised its TV series, in particular by billing the "Mutant X" series as a "spin-off" of the "X-Men" movie. First Amended Complaint ¶ 39. A licensee is not without recourse under section 43(a) of the Lanham Act if its licensor makes false claims to promote a competing product (or falsely disparages the licensee's product). The licensor's sole enjoyment of the goodwill in the licensed mark does not entitle it to make false claims to promote its own product, allegedly to the detriment of its licensee. Trademark licensees have been permitted to sue competitors under section 43(a), Quabaug Rubber Co. v. Fabiano Shoe Co., 567 F.2d 154, 160 (1st Cir. 1977); Mastercard International Inc. v. Sprint Communications Co., No. 94 CIV. 1051 (JSM), 1994 WL 97097, at *3 (S.D.N.Y. Mar. 23, 1994); Business Trends Analysts v. Freedonia Group, Inc., 650 F. Supp. 1452, 1457 (S.D.N.Y. 1987), and we see no reason why a false advertising claim may not be brought by a licensee just because the alleged violator is the licensor.

Fox's Complaint endeavors to blend its claim of false advertising with a claim of false designation of origin by accusing the Defendants of "improperly marketing and promoting" the TV series "so as to create a false association between the Defendants' television show and Fox's 'X-Men' motion picture," and thereby "falsely designat[ing] to the public the nature, origin, and source" of the TV series. First Amended Complaint ¶ 59 (emphasis added). Improperly marketing the TV series by creating the false impression of a link between the TV series and the movie is a false claim about the series, actionable as false advertising. Such marketing is not a representation that the TV series has originated with Fox, i.e., that it has been produced subject to the quality control that Fox would have to exercise to permit the TV producer to benefit from the goodwill associated with Fox's own mark.5

However, despite the sufficiency of the false advertising component of Fox's Lanham Act claim, the District Court's denial of a preliminary injunction need not be disturbed. In the first place, most, and perhaps all, of the allegedly false advertising by the Defendants in the promotion of the TV series has already occurred, and some elements of the promotion campaign have been withdrawn or modified. Fox presents no substantial claim that the mere airing of the TV series, which is what Fox now seeks to enjoin, amounts to false advertising.6 Moreover, the District Court's rejection of Fox's claim of irreparable injury with respect to its contract claim appears to be equally applicable to whatever aspects of the Lanham Act claim are viable. If Fox's lost profits can be reasonably estimated to assess damages for the alleged breach of contract, they can be similarly determined to compensate for whatever section 43(a) claim Fox can prove at trial. Thus, the denial of the preliminary injunction, for lack of an adequate showing of irreparable injury, was within the District Court's discretion, regardless of the legal theory on which the injunction was sought.

Conclusion

We therefore affirm the denial of the preliminary injunction but remand for further proceedings consistent with this opinion.

FOOTNOTES
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[*] Honorable Gregory W. Carman, Chief Judge, United States Court of International Trade, sitting by designation.
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[1] Of course, if Fox prevails on the merits at trial, any claim by the Defendants that damages are too speculative to be reasonably estimated will be substantially undermined by their current position that irreparable injury, required for preliminary injunctive relief, has not been shown because, if there are any damages, they can be adequately compensated by a subsequent monetary award. See Brief for Appellees at 25 ("Here, Fox's claim that the financial injury to future X-Men sequels will be impossible to calculate is belied by two of its own witnesses, who testified that any financial harm to future X-Men sequels could be calculated. . . . It was not clearly erroneous for the District Court . . . to conclude that Fox thus has an adequate remedy at law.").
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[2] The Supreme Court has stated that a ruling that has the effect of denying an injunction is appealable under 28 U.S.C. § 1292(a)(1) "only in circumstances where an appeal will further the statutory purpose of 'permit[ting] litigants to effectually challenge interlocutory orders of serious, perhaps irreparable, consequence.'" Carson v. American Brands, Inc., 450 U.S. 79, 84 (1981) (quoting Baltimore Contractors, Inc. v. Bodinger, 348 U.S. 176, 181 (1955)) (emphasis added). Whether or not Fox has shown a sufficient risk of irreparable injury to require reversal of the denial of its motion for a preliminary injunction, which is the ultimate issue on appeal, its allegations sufficiently allege the possibility of irreparable consequence to warrant review of the dismissal of the Lanham Act claim on which injunctive relief is sought.
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[3] Fox contends that in Silverstar Enterprises, Inc. v. Aday, 537 F. Supp. 236 (S.D.N.Y. 1982), the court "ruled" that the plaintiff-licensee "had standing to assert §43(a) claims against its licensor." Brief for Appellant at 22. Although the District Court there noted that standing under section 43(a) "may lie with users of trademarks who are not owners of the marks," id. at 241, the Court in fact ruled that the licensee had failed to state a claim as to either false designation or false description, id. Fox also overreads Staff Builders of Philadelphia, Inc. v. Koschitzki, CIV. A. No. 88-6103, 1989 WL 97407 (E.D. Pa. Aug. 18, 1989), citing it for the proposition that a trademark licensee could sue its licensor "for false designation of origin." Brief for Appellant at 23. The licensee's claim was that the licensor had violated an exclusive territorial license by licensing a competitor in the plaintiff's territory. The Court permitted amendment of the complaint to allege a section 43(a) claim, but said nothing about false designation of origin. Id. at *2.
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[4] Fox's Complaint accuses the Defendants of "improperly marketing and promoting" the TV series "so as to create a false association between the Defendants' television show and Fox's 'X-Men' motion picture," and thereby "falsely designated to the general public the nature, origin, and source" of the TV series. First Amended Complaint ¶ 59 (emphasis added). The Complaint does not allege, however, that the Defendants have represented that Fox produced the TV series.
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[5] Precisely what Fox means by "a false association between" the TV series and the movie can be explored on remand in discovery to determine whether any aspect of this claim can survive a summary judgment motion and warrant a trial.
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[6] Whether such a claim can be developed upon a full trial remains to be determinedfree hit counter
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