Go New York Tours, Inc. v. Aurora Tourism Services, LLC

Background

Go New York Tours Inc., which operates under the TopView brand, sued Aurora Tourism Services Inc., which operates as Iconic Tours, and Oluwabamise Jegede. The complaint asserted trademark infringement, unfair competition, and false designation of origin under the federal Lanham Act; New York common-law unfair competition; deceptive-practices claims under New York General Business Law § 349; and trademark infringement under New York General Business Law § 133.

Go New York Tours owns a federally registered “TOPVIEW” trademark. It alleged that Aurora-related ticket sellers used TopView-branded clothing, maps, brochures, and other materials; represented or appeared to represent TopView; and used similar wording online. Go New York Tours also presented evidence that at least one customer confused an unpleasant Iconic Tours experience with TopView.

The parties presented testimony and affidavits over two hearing days. The evidence showed that businesses in the Times Square tour-bus industry used independent contractors to advertise their services, and that some contractors worked with more than one tour operator. One person shown in Go New York Tours' photographs, Sergine Amar, testified that he had previously worked as an independent contractor for TopView. The court found his testimony credible. The court also found that Go New York Tours' witnesses had backed away from their initial assertions that Amar was affiliated with Iconic when he was photographed wearing TopView-branded clothing.

The parties had previously stipulated to restrictions on Aurora's online conduct. The court ordered that, while the case continued, Aurora-associated people could not infringe the registered TOPVIEW mark on Aurora's website, had to remove “Top-View” and “Top-Viewing” from Aurora-controlled websites, and could not suggest an association between Aurora and TopView. Those restrictions remained in effect under this opinion.

Legal standard

A preliminary injunction or temporary restraining order is temporary relief intended to preserve the parties' positions until trial. The requesting party must show a likelihood of success on the merits, a likelihood of irreparable harm without the order, that the balance of hardships favors the request, and that the public interest would not be harmed.

At this stage, the Federal Rules of Evidence do not strictly govern the hearing. Affidavits may be considered, and questions about whether evidence will ultimately be admissible generally affect its weight rather than whether the court may consider it for the motion.

Court's analysis

The court first considered the likelihood of success on the federal trademark claims. A trademark-infringement plaintiff must show ownership of a valid trademark used in commerce and infringement likely to cause consumer confusion. Go New York Tours established ownership of the federally registered TOPVIEW mark. The court also found that some of the evidence showed possible infringement and consumer confusion.

But the court concluded that Go New York Tours had not shown a likelihood of proving that Aurora or Jegede was responsible for the alleged infringement. The evidence concerned independent contractors, and no evidence showed that those contractors were acting at Aurora's direction. The court therefore did not need to decide the broader question of when a company may be liable for trademark infringement by an independent contractor.

The court also found no likelihood of irreparable harm. Go New York Tours said it had known about the alleged infringement since at least July 2022 but did not seek injunctive relief until January 2023. That delay prevented the usual presumption of irreparable harm from applying. The court further found that the evidence about contractors working for multiple operators did not establish that TopView was likely to lose control of its reputation before trial.

Finally, the court found that the balance of hardships was at most neutral because evidence suggested that people associated with both businesses may have engaged in conduct capable of confusing customers. The public-interest factor was also at most neutral because Go New York Tours had not shown that the requested order against Aurora and Jegede would protect the public from deception.

Disposition

The court denied Go New York Tours' motion for a preliminary injunction and temporary restraining order. It emphasized that the decision did not express a view about whether Go New York Tours would ultimately prevail on its federal or state-law infringement claims. The clerk was directed to terminate the motion, and the earlier online-use restrictions remained in place during the litigation.