Estate of Presley v. Russen

ON MOTION FOR A PRELIMINARY INJUNCTION, FINDINGS OF FACT AND CONCLUSIONS OF LAW

During his lifetime, Elvis Presley established himself as one of the legends in the entertainment business. On August 16, 1977, Elvis Presley died, but his legend and worldwide popularity have survived. As Presley’s popularity has subsisted and even grown, so has the capacity for generating financial rewards and legal disputes. 1 Although the present case is another in this line, it presents questions not previously addressed. As a general proposition, this case is concerned with the rights and limitations of one who promotes and presents a theatrical production designed to imitate or simulate a stage performance of Elvis Presley.

This action is currently before the court on a motion by plaintiff, the Estate of Elvis Presley, for a preliminary injunction pursuant to Rule 65 of the Federal Rules of Civil Procedure. It seeks a preliminary injunction restraining defendant, Rob Russen, d/b/a THE BIG EL SHOW (hereafter Russen), or anyone acting or purporting to act in his or its behalf or in collaboration with it from using the name and service mark THE BIG EL SHOW and design, the image or likeness or persona of Elvis Presley or any equivalent, the names Elvis, Elvis Presley, Elvis in Concert, The King, and TCB or any equivalent or similar names on any goods, in any promotional materials, in any advertising or in connection with the offering or rendering of any musical services.

Plaintiff instituted suit on April 9, 1980 for federal law unfair competition (false designation of origin under § 43(a) of the Lanham Trademark Act, 15 U.S.C. § 1125(a)), common law unfair competition, common law trademark infringement, and infringement of the right of publicity. This court has jurisdiction by virtue of 15 U.S.C. § 1121, 28 U.S.C. § 1332, and 28 U.S.C. § 1338. Venue is properly laid in the District of New Jersey by 28 U.S.C. § 1391. Plaintiff seeks a permanent injunction, an impounding and delivery to plaintiff of promotional and advertising materials, letterheads, business cards and other materials, an accounting of defendant’s profits, and an award of treble damages and reasonable attorneys’ fees. Defendant answered the allegations contained in the complaint and also filed a counterclaim alleging that the plaintiff’s actions were in violation of the anti-trust laws of the United States.

On October 2,1980, the court conducted a hearing on the preliminary injunction motion, which is being submitted upon the proof taken at the hearing, pleadings, depositions, affidavits, exhibits, and written briefs. This opinion incorporates the court’s findings of fact and conclusions of law as authorized by Rule 52(a) of the Federal Rules of Civil Procedure.

Every Finding of Fact that may be a Conclusion of Law is adopted as such; and every Conclusion of Law that may be a Finding of Fact is adopted as such.

FINDINGS OF FACT

Plaintiff

1. Plaintiff is the Estate of Elvis Presley (hereafter the Estate) located in Memphis, Tennessee, created by the Will of Elvis Presley and is, under the laws of the State of Tennessee, a legal entity with the power to sue and be sued. (Tennessee Code Annotated § 35-618; Exhibit P 26).

2. The Estate came into being upon the death of Elvis Presley on August 16, 1977. (Parker, Affidavit).

*1345 3. During his career, Elvis Presley established himself as one of the premier musical talents and entertainers in the United States, Europe and other areas of the world. He was the major force behind the American Rock and Roll movement, and his influence and popularity has continued to this day. During Presley’s legendary career, his talents were showcased in many ways. He performed in concert, setting attendance records and selling out houses in Las Vegas and other cities in which his tour appeared. He starred in numerous motion pictures including one entitled Viva Las Vegas, which is also the name of the movie’s title song which Presley sang. He made records which sold over one million copies and appeared on- television programs and in television specials made from his tour programs. (Jarvis Testimony, Tr. pp. 42-63).

4. The Elvis Presley tours were billed as “Elvis in Concert,” and his nightclub performances were billed as the Elvis Presley Show, while Elvis Presley shows in Las Vegas were billed simply as “Elvis.” Most of Elvis Presley’s record albums used the name ELVIS on the cover as part of the title. One of his albums was entitled ELVIS IN CONCERT. (Hanks, Affidavit; Jarvis Testimony, Tr. pp. 45, 49, 63; Exhibits, P 10, 12, 16).

5. Elvis Presley adopted the initials TCB along with a lightning bolt design to identify entertainment services provided by him. This insignia appeared on letterheads, jackets for personnel associated with the show, a ring worn by Presley while performing, and tails of Presley’s airplanes. Also, Presley’s band was identified as the TCB band. (Jarvis Testimony, Tr. pp. 45-46, 53-57; Exhibits, P 17A, 17B).

6. Elvis Presley’s nickname was “THE KING.” (Jarvis Testimony, Tr. p. 57).

7. Although Elvis Presley exhibited a range of talents and degrees of change in his personality and physical make-up during his professional career, he, in association with his personal manager, Thomas A. (Col.) Parker, developed a certain, characteristic performing style, particularly as to his live stage shows. His voice, delivery, mannerisms (such as his hips and legs gyrations), appearance and dress (especially a certain type of jumpsuit and a ring), and actions accompanying a performance (such as handing out scarves to the audience), all contributed to this Elvis Presley style of performance. (Jarvis Testimony, Tr. pp. 45-53; Exhibits P 10, 12, 16).

8. One particular image or picture of Presley became closely associated with and identifiable of the entertainment provided by Elvis Presley. This image (hereafter referred to as the “Elvis pose”) consisted of a picture or representation of Elvis Presley dressed in one of his characteristic jumpsuits with a microphone in his hand and apparently singing. (Exhibits P 10, 12, 16).

9. Elvis Presley exploited his name, likeness, and various images during his lifetime through records, photographs, posters, merchandise, movies, and personal appearances. (Exhibits P 1, 12, 13, 16, 20, 21, 27; Jarvis Testimony, Tr. pp. 44-64).

10. As a result of Presley’s own talent, as well as of the various promotional efforts undertaken on his behalf, the popularity of Elvis Presley and his entertainment services, as identified by certain trademark and service marks, reached worldwide proportions. Elvis Presley productions achieved a reputation for a certain level of quality and performance. Goodwill attached to Presley’s performances and the merchandise bearing his name and picture.

11. From nearly the beginning of his life as an entertainer, Elvis Presley was represented in his career by Thomas A. (Col.) Parker. (Exhibit P 25; Parker Affidavit).

12. On March 26, 1956, Elvis Presley having reached age 21 entered into an agreement with Col. Parker, amending an agreement entered into in 1955 between Col. Parker and Elvis Presley and his parents, making Parker Elvis Presley’s “sole and exclusive Advisor, Personal Representative and Manager in any and all fields of public and private entertainment.” (Exhibit P 25).

*1346 13. Throughout Presley’s professional career, Parker continued to supervise and authorize the commercialization of Presley’s name, image, picture, and/or likeness. He granted different entities the right to use Elvis’ name, image, picture or likeness on such merchandise as posters, statues, and buttons, for a limited time in return for a percentage on the sales of the articles involved. (Parker Affidavit). On July 26, 1956, Col. Parker, with Presley’s approval, entered into an agreement with Special Projects, Inc. granting to it for a term of one (1) year a commercial license for the use of the name, photograph and likeness of Elvis Presley “in connection with the sale, marketing and exploitation of consumer items.” (Exhibit P 27).

14. The working relationship between Presley and Parker begun in 1955 appears to have continued throughout Presley’s career. Although there are some gaps in the documents showing this relationship during the next 22 years, the evidence presented sufficiently supports their continuing association. (Parker Affidavit; Davis Affidavit).

15. In particular, on January 22, 1976, Elvis Presley entered into an agreement (Exhibit P 1) with Col. Parker, d/b/a All Star Shows, whereby he authorized Parker to set up tours, promotion, merchandising sales and any other medium involving the artistry of Elvis Presley and to generally act as his agent for merchandising projects, personal appearances, motion picture performances, and “any other projects involving the personal services, name, photo or any likeness of the Artist,” Elvis Presley. The agreement also sets forth the responsibilities of Presley and Parker with respect to the shows. “Presley is responsible for the presentation of the stage performance” and Col. Parker handles the “advertising and promotion of the show.” Thus, Presley did not authorize any rights associated directly with the performances and how they were to be conducted.

This agreement which recognizes Presley’s existing contracts did not preclude Elvis Presley from arranging any activities, including merchandising or performing, on his own behalf. The terms of the agreement appear to negate any implication of an “assignment,” which would necessarily preclude Elvis Presley himself from entering into agreements pertaining to the use of his name, likeness and image. The agreement, which was limited to a seven (7) year period, gave Parker supervision of merchandising projects and a power of attorney-in-fact for specified purposes, but did not assign or sell the rights of Elvis Presley to his name, likeness or image.

16. In 1974, Boxcar Enterprises, Inc. was incorporated. Col. Parker and Elvis Presley were two of the original subscribers to the stock in the corporation. According to the charter of the corporation, it was formed for the purpose of, inter alia, publishing music, managing entertainers, producing records, producing motion pictures, producing entertainment, selling merchandise and otherwise generally engaging in the broad range of activities corporations may undertake. Col. Parker, Elvis Presley, and Tom Diskin, the President of Boxcar, did subscribe to shares in the corporation, for which shares Elvis Presley gave a consideration of three thousand dollars ($3,000.00). (Hanks Affidavit and Exhibits; Diskin Affidavit).

17. Col. Parker is the majority shareholder in and Chairman of the Board of Boxcar Enterprises, Inc. and he, under the terms of his agreement with Elvis Presley, licensed or sublicensed Boxcar Enterprises, Inc. to act on behalf of Elvis Presley to create and promote merchandise and articles using the name, likeness and image of Elvis Presley. (Exhibits P 5; Diskin Affidavit; Parker Affidavit).

18. There have been no licenses or assignments by Elvis Presley to Boxcar Enterprises, Inc. There have been only letters setting in writing the agreed division of the royalties and income from the sale of merchandise by Boxcar Enterprises, Inc. (Dis-kin Affidavit; Exhibit P 5. See Parker Affidavit).

19. The right to the commercial use of the name, likeness and image which Boxcar *1347 Enterprises has is derived from the license or sublicense granted to Boxcar by Col. Parker. Col. Parker’s rights derive from the January 22, 1976 contract (Exhibit P 1) he entered into with Elvis Presley which will terminate in 1983. It is understood that the Parker-Boxcar agreement terminates at the same time. (Exhibit P 6; Dis-kin Affidavit. See Parker Affidavit).

20. In a letter dated August 23, 1977, one week after Elvis Presley’s death, Vernon Presley, Elvis’ father and the executor of Elvis’ estate, asked Col. Parker to “carry on according to the same terms and conditions” of the agreement between Elvis Presley and Col. Parker dated January 22, 1976. (Exhibit P 3). In June 1979, after Vernon Presley’s death, the Estate of Presley, through its representatives again reaffirmed the agreement between Col. Parker and Elvis Presley. (Exhibit P 4). The Estate’s continued desire to have Col. Parker market the name, likeness and image of Elvis and, thus, obtain income for the estate is based on the Estate’s position that Parker “could probably make the most of the opportunity that was there plus maintain the quality that he and Elvis had maintained throughout the period of their relationship.” (Hanks Testimony Tr. pp. 22-26).

21. Boxcar Enterprises, Inc. and the Estate agreed by letter dated August 24,1977, to Boxcar’s continued payment to the Estate of royalties from the sale of merchandise. (Exhibit P 2).

22. Two days after Elvis Presley’s death, on August 18, 1977, Boxcar Enterprises, Inc. granted an exclusive license to Factors Etc., Inc. (Factors) to use the name, likeness, characters, symbols, designs and visual representations of Elvis Presley, termed the “Feature,” on merchandise throughout the world for a period of eighteen (18) months, renewable for four (4) one-year periods thereafter. The license specifically reserved to the licensor the right, title and interest to the Feature and specifically stated that the rights granted were not an assignment but only a license. The license sets forth quality control provisions for standards for the merchandise and specifically states that the rights licensed shall revert to the licensor upon the termination of the license. (Exhibit P 6; Turner Testimony, Tr. pp. 67-68).

23. As an inducement for Factors Etc., Inc. to enter into the license agreement with Boxcar Enterprises, Inc., Vernon Presley as Executor of the Estate, executed the agreement on a separate page, confirming “the truth of the representations and warranties of Boxcar contained in the agreement.” (Exhibit P 6).

24. In the license between Boxcar and Factors, Boxcar sets forth that it “has exclusive ownership of all rights to the use of the Feature,” that it is “the sole owner of the entire right, title and interest in the Feature when used in connection with . . . merchandise,” and that it has the “full right, authority and power to enter into this Agreement.” (Exhibit P 6). Because of Boxcar’s arrangement with Col. Parker, his control of Boxcar and his exclusive representation contract of Elvis Presley for seven years (or until 1983) (Exhibit P 1; Hanks Affidavit, Minutes of First Meeting of Incorporation), these representations, considering the time period of the license to Factors, though not completely accurate, were true as far as necessary for Factor’s protection to operate under the license. No one else had the license rights for merchandise but Col. Parker/Boxcar. Given the time frame of the execution of the agreement (two days after Elvis Presley’s death) and knowing of the agreement (Exhibit P 1) between Elvis Presley and Col. Parker, Vernon Presley’s signature as “an inducement” cannot be considered an assignment of rights or a confirmation of an assignment, but rather an affirmation of Col. Parker’s/Boxcar’s exclusive license rights for a period of years. The continued understanding of the parties confirms that there has been no assignment of rights by Elvis Presley or his Estate but merely the licensing of the right to exploit commercially Elvis Presley’s name, likeness and image for merchandise for a limited period of time. (Turner Testimony, Tr. p. 67; see Diskin Affidavit).

*1348 25. Elvis Presley’s popularity did not cease upon his death. His records and tapes are still sold in considerable dollar and unit amounts and Elvis Presley movies are still shown in theaters and on television. Elvis Presley merchandise is still in demand and sold. Also, many people travel to Memphis, Tennessee to visit Presley’s gravesite and to see Graeeland Mansion, his former home. The extent of Presley’s continued popularity and the value and goodwill associated with him and his performances on, for example, records, film, and tape, is evidenced by the over seven (7) million dollars in royalty and licensing payments which Presley’s estate received in the first two years of its existence. (Hanks Affidavit; Hanks Testimony, Tr. p. 19; Parker Affidavit. See Davis Affidavit).

26. The agreements, including the Boxcar-Factors contract, relative to the commercial use of Elvis Presley’s name, likeness and image are terminable. Upon their termination the existing rights to the name, likeness and image of Elvis Presley revert ultimately to the Estate. (Turner Testimony, Tr. p. 67; Diskin Affidavit).

27. Further, the Estate, during the existence of the agreements, that is, prior to their termination, has an interest in protecting the licensed rights not only for their value upon their reversion to it, but also to protect its continued royalties, which it receives from the licensees’ sales of records, movies, merchandise and television performances of Elvis Presley. The Estate’s licensees advertise and promote the marks identifying Presley’s entertainment services and licensed merchandise to maintain their commercial value and goodwill. (Exhibit P 2; Hanks Testimony, Tr. pp. 18-20, 76-77).

28. The Estate has entered into a license agreement for the use of the logo TCB and the lightning bolt design to identify a band composed of the members of Elvis Presley’s back-up band. The Estate receives royalties. (Exhibit P 23; Jarvis Testimony, Tr. p. 55; Hanks Testimony, Tr. pp. 76-77).

29. The Estate, with the agreement of Col. Parker, has entered into a movie contract with Warner Bros. Studio for a movie about Elvis Presley. (Exhibit P 22; Hanks Testimony, Tr. p. 76).

30. The Estate and its licensees and sub-licensees, and during his lifetime, Elvis Presley and his representatives and those with whom he had contracts or licenses have taken actions to protect the rights of the Estate and of the licensees. (Parker, Affidavit; Davis Affidavit; Hanks Testimony, Tr. pp. 82-83). For example, the Estate has filed an opposition against the registration by defendant Russen of a trademark (Hanks Testimony, Tr. pp. 82-83) and Factors Etc., Inc. has instituted law suits. (See Factors Etc., Inc. v. Pro Arts, Inc., 444 F.Supp. 288 (S.D.N.Y.1977) (preliminary injunction), aff'd, 579 F.2d 215 (2nd Cir. 1978), cert. denied, 440 U.S. 908, 99 S.Ct. 1215, 59 L.Ed.2d 455 (1979); 494 F.Supp. 1090 (S.D.N.Y.1980) (permanent injunction); Factors Etc., Inc. v. Creative Card Co., 444 F.Supp. 279 (S.D.N.Y.1977); Memphis Development Foundation v. Factors Etc., Inc., 441 F.Supp. 1323 (W.D.Tenn.), rev’d, 616 F.2d 956 (6th Cir. 1980).)

Defendant

31. Defendant, Rob Russen d/b/a THE BIG EL SHOW (hereafter Russen) is the producer of THE BIG EL SHOW.

32. THE BIG EL SHOW is a stage production patterned after an actual Elvis Presley stage show, albeit on a lesser scale, and featuring an individual who impersonates the late Elvis Presley by performing in the style of Presley. The performer wears the same style and design of clothing and jewelry as did Presley, hands out to the audience scarves as did Presley, sings songs made popular by Presley, wears his hair in the same style as Presley, and imitates the singing voice, distinctive poses, and body movements made famous by Presley. (Exhibit P 11, 12, 14, 15; Exhibit D to Defendant’s Answer; Jarvis Testimony, Tr. pp. 45-53; Russen Deposition, pp. 27-28, 54-55, 59).

33. Russen charges customers to view performances of THE BIG EL SHOW or alternatively charges fees to those in whose rooms or auditoriums THE BIG EL SHOW *1349 is performed who in turn charge customers to view THE BIG EL SHOW. (Exhibit D to Defendant’s Answer).

34. THE BIG EL SHOW production runs for approximately ninety minutes. The show opens with the theme from the movie “2001 — A Space Odyssey” which Elvis Presley also used to open his stage shows. (Exhibit D to Defendant’s Answer; Jarvis Testimony, Tr. p. 62). The production centers on Larry Seth, “Big El,” doing his Elvis Presley impersonation and features musicians called the TCB Band. The TCB Band was also the name of Elvis Presley’s band; however THE BIG EL SHOW TCB Band does not consist of musicians from Presley’s band. (Jarvis Testimony, Tr. pp. 53-57; Exhibits P 11,14,15,17A-C, 23; Russen Deposition, pp. 53-54).

35. From the inception of THE BIG EL SHOW, the star was Larry Seth. Seth, who is under a long-term contract with THE BIG EL SHOW, recently “retired” from the show; but he may return. (Russen Affidavit; see Russen Deposition, p. 171). THE BIG EL SHOW has continued its performances by using replacements for Seth. (Russen Deposition, pp. 91-92).

36. THE BIG EL SHOW was first presented in 1975 (Russen Affidavit; Russen Deposition, p. 22; Exhibit D to Defendant’s Answer) and has been performed in the United States and Canada. For example, performances have been given in cities and towns in Connecticut, Maryland, New Jersey, Pennsylvania, and Nevada (one engagement at a Hotel-Casino in Las Vegas). (Russen Deposition, pp. 28-33, 37, 91; Exhibits P 14, 19, 17C; Exhibit D to Defendant’s Answer). In addition, Larry Seth as the star of THE BIG EL SHOW has appeared on television talk shows in Philadelphia and Las Vegas, and on the David Suskind Show, a nationally syndicated program. (Exhibit P 17C; Russen Deposition, pp. 55-56, 167).

37. Russen has advertised the production as THE BIG EL SHOW and displayed a photograph of the star, Larry Seth, or an artist’s rendering of Seth dressed and posed as if in performance. The advertisements make such statements as “Reflections on a Legend ... A Tribute to Elvis Presley,” “Looks and Sounds LIKE THE KING,” “12 piece Las Vegas show band.” (Russen Deposition, p. 176; Exhibits P 14, 15).

38. Although the various pictures and artist’s rendering associated with THE BIG EL SHOW are photographs of Larry Seth, or based on such photographs (Russen Affidavit; Exhibit P 28), a reasonable viewer upon seeing the pictures alone would likely believe the individual portrayed to be Elvis Presley. Even with a side-to-side comparison of photographs of Larry Seth as Big El and of certain photographs of Elvis Presley, it is difficult, although not impossible, to discern any difference.

39. On October 18, 1978, Russen applied to the United States Patent and Trademark Office to register the name THE BIG EL SHOW and the design feature, of that name, i. e., an artist’s rendition of Larry Seth as Big El, as a service mark. (Exhibit P 28). Plaintiff did prepare and timely file its Notice of Opposition in the United States Patent and Trademark Office to contest the defendant’s right to register the mark. (Exhibit F to Plaintiff’s Memorandum in Support of the Motion for Preliminary Injunction). The proceeding before the Trademark Trial and Appeal Board has been stayed by the Board pending the results in the suit before this court.

40. Russen has produced or had produced for him records of THE BIG EL SHOW (including two albums and three 45 RPMs). (Russen Deposition, pp. 72-74; see Exhibits P 11, 13, 18). Only a limited number of these records were pressed, and they were made for sales and promotional purposes. (Russen Deposition, pp. 73-74). One record album, entitled “Viva Las Vegas” (Exhibit P 11), has on the cover of the jacket only the title and an artist’s sketch which upon reasonable observation appears to be of Elvis Presley. It is only on the back of the jacket in a short blurb and in the credits that the name BIG EL SHOW appears. It is also indicated that the show stars Larry Seth as Big El and features the TCB Band. The other album (Exhibit P 13) is entitled BIG *1350 EL SHOW “In Concert” and also features an artist’s drawing, ostensibly of Big El, but which looks like Elvis Presley, with microphone in hand, singing. Only one of the 45s has been presented to this court. THE BIG EL SHOW insignia (Exhibit P 28) appears on both sides. The artists are designated as Larry Seth and TCB Orchestra, on Side I, and Larry Seth and PCB [sic] Orchestra on Side II.

41. In addition to selling records at performances of THE BIG EL SHOW, Russen sold Big El pendants and a button with the picture of Larry Seth as Big El. (Russen Deposition, pp. 77-78).

42. Russen began to produce THE BIG EL SHOW and to use his certain identifying marks, such as THE BIG EL SHOW logo, after Presley had become famous as one of the premier performers in the world and had used and established certain marks as strongly identifying his services and the merchandise licensed or sub-licensed by him.

43. Russen has never had any authorization from, license or contractual relation with Elvis Presley or with the Estate of Elvis Presley in connection with the production of THE BIG EL SHOW. (Parker Affidavit; Hanks Affidavit; Hanks Testimony, Tr. pp. 79-80).

DISCUSSION and CONCLUSIONS OF LAW

1. Standing

The issue of standing requires us to determine “whether the plaintiff has ‘alleged such a personal stake in the outcome of the controversy’ as to warrant his invocation of federal court jurisdiction and to justify exercise of the court’s remedial powers on his behalf.” Warth v. Seldin, 422 U.S. 490, 498-99, 95 S.Ct. 2197, 2205, 45 L.Ed.2d 343 (1975) (emphasis in original). Plaintiff has shown that it has an economic interest in the protection of the rights it asserts, for it receives royalty or percentage payments from those who sell merchandise using the name, likeness and image of Elvis Presley. Further, it receives payments from record sales, has entered into motion picture contracts and has licensed the TCB logo. (Cf. Factors Etc., Inc. v. Pro Arts, Inc., 579 F.2d 215, 222 (2nd Cir. 1978) (“... income interest, continually produced from Boxcar’s exclusive right of commercial exploitation should inure to Presley’s estate at death like any other intangible property right.”)).

Perhaps an even more compelling reason for granting standing than the Estate’s income from the current licensing agreements, is the Estate’s protection of and future ability to generate income from those property rights, such as the use of trademarks or service marks, associated with Elvis Presley’s entertainment services which became owned by Presley’s estate after his death. See generally Trademarks and Tradenames, 74 Am.Jur.2d, § 25 (1974). 2 It has been shown that those parties who have entered into agreements with Elvis Presley, or with his Estate, to make use of the name, likeness and image of Presley have been licensees. None of the agreements between Elvis Presley and others, including his manager and agent, Thomas A. (Col.) Parker, indicate that Presley assigned his right, title and interest to those property rights connected with his name, likeness and/or image. While the terms, “assignment,” “exclusive license,” and “license” are frequently used by courts and practitioners interchangeably, the differences are significant. An assignment passes legal and equitable title to the property while a license is mere permission to use. Assignment is the transfer of the whole of the interest in the right while in a license the owner retains the legal ownership of the property. Vandenburgh, Trademark Law and Procedure, 2d Ed. § 7.31; Gilson, Trademark Protection and Practice § 6.01.

An assignment presupposes the transfer of the entire interest in a trademark, while a license involves the transfer of something less than the entire interest, *1351 and does not affect the licensor’s title. The assignee becomes the new owner while the licensee is a mere user. If the grant of an exclusive use of a trademark is limited as to duration or area, it will not confer title thereto upon the licensee or upon the party who purchases the trademarked article for resale. The licensee acquires only the right to a limited use of the trademark, for the title to the reversionary interest in that use remains with the owner. ... The licensor is merely estopped from challenging the licensee’s use of the mark under the agreement. In principle, an assignment is permanent and perpetual, while a license is temporary, provisional or conditional, (emphasis added).

Callmann, The Law of Unfair Competition, Trademarks and Monopolies (hereafter “Callmann”), § 78.2 (3d ed. 1969). Thus, even if Presley had licensed certain property rights such as service marks, the ownership of these rights and standing to protect them, remained with Presley, and, after his death became part of the assets of his estate. If, as is alleged by the plaintiff, the defendant’s use of certain logos or advertising is likely to have a negative impact on these intangible property rights or on the goodwill associated with Presley or his Estate, then a sufficient reason for granting standing exists. As it has been noted with respect to trademark infringement, “[standing to sue exists in anyone who ‘is or is likely to be damaged’ by the defendant’s use of the disputed mark, and the parties need not be direct competitors. Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 151 (9th Cir. 1963), cert. den., 374 U.S. 830, 83 S.Ct. 1870, 10 L.Ed.2d 1053.” National Lampoon, Inc. v. American Broadcasting Cos., Inc., 376 F.Supp. 733, 746 (S.D.N.Y.), affirmed, 497 F.2d 1343 (2nd Cir. 1974). In addition, we are convinced that “the [plaintiff’s] personal stake in the outcome [is] compelling enough to assure aggressive and conscientious advocacy and that the issues” ... [are not] .. . “so nebulous as to create the danger of judicial inquiry beyond customary bounds.” Schiaffo v. Helstoski, 492 F.2d 413 (3rd Cir. 1974).

II. Laches and Acquiescence

Russen, having asserted the defenses of laches, and acquiescence in his Answer, argues that a preliminary injunction should not be granted. Although it has been noted that “there are cases in which preliminary injunctive relief has been held barred by laches ... [citations omitted],” Selchow & Righter Co. v. Book-of-the Month Club, Inc., 192 U.S.P.Q. 530, 532 (S.D.N.Y.1976) (action for trademark and copyright infringement, unfair competition and trademark dilution); see Saratoga Vichy Spring Co., Inc. v. Lehman, 625 F.2d 1037, 1041 (2nd Cir. 1980) (federal trademark, unfair competition, false designation of origin); Le Sportsac, Inc. v. Dockside Research, Inc., 478 F.Supp. 602, 609 (S.D.N. Y.1979), “the laches defense is reserved for those rare eases where a protracted acquiescence by plaintiff induces a defendant to undertake substantial activities in reliance on the acquiescence.” McNeil Laboratories, Inc. v. American Home Products Corp., 416 F.Supp. 804, 809 (D.N.J.1976). See, e. g., Jenn-Air Corp. v. Penn Ventilator Co., 464 F.2d 48 (3rd Cir. 1972); John Wright, Inc. v. Casper Corp., 419 F.Supp. 292 (E.D.Pa. 1976); Callmann, § 87.3(b). In any event “laches generally is not a bar to injunctive relief against unfair competition.” Great Atlantic & Pacific Tea Co. v. A & P Trucking Corp., 51 N.J.Super. 412, 423, 144 A.2d 172 (App.Div.), modified and remanded, 29 N.J. 455, 149 A.2d 595 (1959). The equitable defense of acquiescence “ ‘[a]s distinguished from laches, constitutes a ground for denial of relief only upon a finding of conduct on the plaintiff’s part that amounted to an assurance to the defendant, express or implied, that the plaintiff would not assert his trademark rights against the defendant.’ [citations omitted]” Carl Zeiss Stiftung v. VEB Carl Zeiss Jena, 433 F.2d 686, 704 (2nd Cir. 1970).

In deciding whether the defendant has made a sufficiently strong showing of laches or acquiescence, we must examine the particular circumstances of the case. *1352 Id. at 703-04. See Playboy Enterprises, Inc. v. Chuckleberry Publishing, Inc., 486 F.Supp. 414, 434-35 (S.D.N.Y.1980). Our review of the available evidentiary sources indicates certain unsettled facts; however, we cannot conclude that the defendant has met his burden of proving, for the purposes of this preliminary injunction motion, laches or acquiescence.

In the first place, the defendant has not made a sufficient showing of implicit or explicit consent or inexcusable delay by the plaintiff. Although there is evidence that THE BIG EL SHOW, with Larry Seth starring, has been performed since 1975 (Findings of Fact # 35, # 36, supra), Russen’s application to register the mark THE BIG EL SHOW and DESIGN states that the first use of the mark was in June of 1978.

Of more importance, there is a significant question as to the “knowledge and acquiescence” of the Estate or its representatives or of Elvis Presley or his representatives. Russen stated that Presley and his manager, Col. Parker, were aware of the existence of THE BIG EL SHOW, that he, Russen, had spoken via telephone with Col. Parker, in June of 1977, and that Col. Parker had indicated that neither he nor Presley had any objection to THE BIG EL SHOW being performed or using the name THE BIG EL- SHOW. (Russen Affidavit).

This purported acceptance by Parker is apparently contradicted by Parker’s statement that “[a]t no time was defendant granted any rights by me, Boxcar Enterprises or anyone on behalf of Elvis Presley, to use Elvis’ name, image, picture or likeness in any theatrical or entertainment endeavor.” (Parker Affidavit). In addition, Joseph Hanks, a co-executor of the Estate of Elvis Presley, indicated that the Estate’s files contained no references to Russen or THE BIG EL SHOW and that neither he nor any of the co-executors authorized or approved any uses by the defendant of Elvis Presley’s name or image. (Hanks Affidavit; Hanks Testimony, Tr. p. 79). Finally, as noted above, the Estate of Elvis Presley and its licensee, Factors Etc., Inc., have taken steps, in addition to the present suit, to protect the rights of the Estate. The Estate did file a timely Notice of Opposition to Russen’s application to register THE BIG EL SHOW and DESIGN as a service mark (Exhibit .P 28; Exhibit F to Plaintiff’s Memorandum in Support of the Motion for Preliminary Injunction), and Factors has instituted different legal actions.

Russen has also failed to show adequately that he was prejudiced by the delay. Although we assume Russen may have made some expenditures to produce and promote THE BIG EL SHOW and a limited number of records, Russen has failed to establish that his activities constituted the necessary prejudice. See Alfred Dunhill of London, Inc. v. Kasser Distillers Prods. Corp., 350 F.Supp. 1341, 1364-68 (E.D.Pa.1972), aff’d without opinion, 480 F.2d 917 (3rd Cir. 1973); Tisch Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609, 615 (7th Cir. 1965). See also Jenn-Air Corp., supra.

Since we have concluded that Russen has not made a sufficient showing of laches or acquiescence by Presley or his representatives or by the Estate of Presley to bar a preliminary injunction, we must now decide if a preliminary injunction should issue. 3 III. Preliminary Injunction Standards

To prevail on a motion for a preliminary injunction, the moving party must show *1353 that it has a reasonable likelihood of eventual success in the litigation, that it will be irreparably injured pendente lite if relief is not granted, that a balance of equities favor the plaintiff, and that the public interest considerations support the preliminary injunction’s issuance. SK&F, Co. v. Premo Pharmaceutical Laboratories, Inc., 625 F.2d 1055 (3rd Cir. 1980). See Tefal, S.A. v. Products International Co., 186 U.S.P.Q. 545, 547-48 (D.N.J.1975), aff’d, 529 F.2d 495, 497 (3rd Cir. 1976); Fotomat Corp. v. Photo Drive-Thru, Inc., 425 F.Supp. 693, 701 (D.N.J.1977); McNeil Laboratories, supra. These elements will be evaluated in light of the various causes of action asserted by the plaintiff. We shall first examine the likelihood of plaintiff’s success on each claim.

A. Likelihood of Success on the Merits

1. Right of Publicity

The plaintiff has asserted that the defendant’s production, THE BIG EL SHOW, infringes on the right of publicity which plaintiff inherited from Elvis Presley.

The right of publicity 4 is a concept which has evolved from the common law of privacy and its tort “of the appropriation, for the defendant’s benefit or advantages, of the plaintiff’s name or likeness.” 5 The term “right of publicity” has since come to signify the right of an individual, especially a public figure or a celebrity, to control the commercial value and exploitation of his name and picture or likeness and to prevent others from unfairly appropriating this value for their commercial benefit. 6 The idea generally underlying an action for a right of privacy is that the individual has a right personal to him to be let alone and, thus, to prevent others from invading his privacy, injuring his feelings, or assaulting his peace of mind.- In contrast, underlying the right of publicity concept is a desire to benefit from the commercial exploitation of one’s name and likeness. 7

In the present case, we are faced with the following issues: a. Does a right of publicity and the concomitant cause of action for its infringement exist at common law in *1354 New Jersey; if so, does this right descend to the estate at the death of the individual? b. Assuming the existence and inheritability of a right of publicity, does the presentation of THE BIG EL SHOW infringe upon the plaintiff’s right of publicity?

a. Right of Publicity in •New Jersey

Although the courts in New Jersey have not used the term “right of publicity,” they have recognized and supported an individual’s right to prevent the unauthorized, commercial appropriation of his name or likeness. In the early and widely cited case of Edison v. Edison Polyform Mfg. Co., 73 NJ.Eq. 136, 67 A. 392 (1907), Thomas Edison sought to enjoin a company which sold medicinal preparations from using the n