Amin v. Hingorani

Background

Shilen Amin founded and operates the South Asian International Film Festival in New York City. He owns registrations for SOUTH ASIAN INTERNATIONAL FILM FESTIVAL, SOUTH ASIAN FILM FESTIVAL, SAFF, and SAIFF. Jitin Hingorani and entities associated with him conduct competing festivals using names that include terms such as “Dallas/Fort Worth South Asian Film Festival,” “NYC South Asian Film Festival,” and “Long Island South Asian Film Festival.”

Amin sued under Sections 32 and 43(a) of the Lanham Act, the federal trademark statute. He alleged that defendants’ names and acronyms infringed his marks and sought, among other relief, an order barring defendants from using the marks, requiring disclaimers, and requiring an accounting of festival revenue and expenses.

The court had previously denied Amin’s first request for a preliminary injunction in a September 21, 2023 bench ruling. A preliminary injunction is an order issued before the case ends that temporarily requires or prohibits conduct. Amin then moved for reconsideration and filed a second, substantially similar preliminary-injunction motion.

Legal standard

To obtain a preliminary injunction, Amin had to show either a likelihood of success on the merits or sufficiently serious questions for litigation combined with a balance of hardships strongly favoring him. He also had to show likely irreparable harm, a favorable balance of hardships, and that an injunction would serve the public interest.

The court explained that trademark-infringement claims require examining whether the mark is legally protectable and whether the defendant’s use is likely to confuse consumers about the source or sponsorship of the services.

Analysis

The court denied injunctive relief as to SOUTH ASIAN INTERNATIONAL FILM FESTIVAL and SAIFF because the complaint did not allege facts showing that defendants had used those marks.

As to SOUTH ASIAN FILM FESTIVAL, the court held that the phrase is geographically descriptive because it describes a film festival featuring films from South Asia. A descriptive mark receives protection only if it has acquired “secondary meaning,” meaning that consumers primarily associate the term with a particular source rather than with the service itself.

Although Amin’s marks were federally registered, the court explained that registration creates a rebuttable presumption of validity and does not prevent a court from independently evaluating protectability. The court found that the public record contained little evidence supporting acquired distinctiveness. Amin had relied mainly on a declaration stating that he had used the phrase substantially, exclusively, and continuously in commerce for at least five years. The court found no evidence showing that consumers, advertisers, or the general public primarily associated SOUTH ASIAN FILM FESTIVAL with Amin’s festival. It also considered evidence that other film festivals had used the same phrase or SAFF, which undercut Amin’s claim of substantially exclusive use.

The court concluded that Amin had not shown a likelihood of success or sufficiently serious merits questions concerning protection for SOUTH ASIAN FILM FESTIVAL. It reasoned that allowing one party to monopolize the phrase could prevent competing festivals from accurately describing their services.

The court applied the same reasoning to SAFF. Relying on a recent Second Circuit decision, it held that a recognizable abbreviation of a descriptive term is ordinarily descriptive as well. Because SAFF was used interchangeably with SOUTH ASIAN FILM FESTIVAL, Amin had not shown that SAFF was protectable for purposes of preliminary relief.

Disposition

The court denied Amin’s renewed motion for a preliminary injunction. It denied Amin’s motion for reconsideration as moot because the renewed injunction motion incorporated and effectively replaced the reconsideration arguments. The court directed the clerk to terminate both motions. The opinion addressed preliminary relief and did not state that it entered final judgment on the underlying infringement claims.