## Facts

- Wyatt Earp Enterprises, Inc. produced the widely popular television series *The Life and Legend of Wyatt Earp* and licensed merchandising rights to protect goodwill associated with the series.
- Sackman, Inc. manufactured children’s playsuits and previously did so under a license allowing use of “the name and likeness of Hugh O’Brian in the characterization of Wyatt Earp.”
- After the license expired and was not renewed, Sackman continued to manufacture and sell children’s playsuits using the name, mark, and symbol “Wyatt Earp,” though it omitted Hugh O’Brian’s likeness and explicit “ABC-TV” references.
- The post-expiration playsuits closely resembled the licensed versions, and Wyatt Earp Enterprises claimed consumers would believe the goods remained authorized or sponsored by the television producer.
- Wyatt Earp Enterprises sued for unfair competition and sought a preliminary injunction; Sackman petitioned to stay the case and compel arbitration under an arbitration clause in the expired license.

## Issues

1. Whether “Wyatt Earp,” as used on children’s playsuits tied to the television merchandising context, had acquired secondary meaning identifying plaintiff sponsorship such that defendant’s continued use was likely to cause confusion and constitute unfair competition.
2. Whether the unfair-competition dispute was within the scope of the expired license’s arbitration clause, requiring a stay and an order compelling arbitration under the Federal Arbitration Act.

## Decision

- The court granted a preliminary injunction barring Sackman from using the name, mark, or symbol “Wyatt Earp” on children’s playsuits pending final resolution.
- The court found plaintiff showed probable success on the merits because “Wyatt Earp” had acquired secondary meaning in this merchandising context and defendant’s continued use was likely to confuse consumers as to sponsorship.
- The court found threatened injury to goodwill and plaintiff’s licensing program warranted preliminary injunctive relief.
- The court denied Sackman’s petition to stay the action and compel arbitration, holding the unfair-competition claim was not referable to arbitration under the license’s arbitration clause.

## Legal Principles

- A historically famous name can acquire a protectable secondary meaning in a particular commercial setting when the public comes to associate the name with a specific source or sponsorship.
- Unfair competition includes misappropriation of another’s goodwill through conduct likely to mislead consumers about source, affiliation, or sponsorship.
- A former licensee’s continued post-expiration use of the licensed name or indicia on substantially similar goods can support an inference of likely confusion and justify injunctive relief.
- For preliminary injunctive relief, a showing of probable right and likely injury to goodwill may suffice where harm is difficult to quantify in money damages.
- An arbitration clause will not be enforced to compel arbitration of an independent post-expiration unfair-competition claim that does not depend on interpreting or enforcing contractual rights under the license.

## Conclusion

The court enjoined a former licensee from continuing to sell “Wyatt Earp” children’s playsuits after license expiration because the name had developed secondary meaning in the television merchandising context and defendant’s use was likely to cause confusion, and it declined to compel arbitration because the claim sounded in independent unfair competition rather than a contract dispute.


Wyatt Earp Enters., Inc. v. Sackman, Inc., 157 F. Supp. 621 (S.D.N.Y. 1958)