HMH Publishing Co. v. Turbyfill

• Decision Date: 30 August 1971
• Docket Number: No. 70-132-Civ-J.,70-132-Civ-J.
• Citation: 171 USPQ 461,330 F. Supp. 830
• Parties: HMH PUBLISHING CO., Inc., a Delaware corporation, Plaintiff, v. Harold D. TURBYFILL et al., Defendants.
• Court: U.S. District Court — Middle District of Florida

330 F. Supp. 830

171 USPQ 461

HMH PUBLISHING CO., Inc., a Delaware corporation, Plaintiff, v. Harold D. TURBYFILL et al., Defendants.

No. 70-132-Civ-J.

United States District Court, M. D. Florida, Jacksonville Division.

August 30, 1971.

Michael L. Shakman, R. Dickey Hamilton, Chicago, Ill., William H. Adams, III, Thomas M. Baumer, Jacksonville, Fla., for plaintiff.

W. Joe Sears, Jr., Jacksonville, Fla., for defendants.

OPINION AND ORDER

CHARLES R. SCOTT, District Judge.

Plaintiff, HMH Publishing Co., Inc. (hereinafter "HMH") is a corporation organized and existing under the laws of the State of Delaware, with its principal offices and place of business in Chicago, Illinois. The individual defendants are resident citizens of the State of Florida and the corporate defendants were organized and exist under its laws. In addition to this diversity of citizenship between the parties and an amount in controversy exceeding $10,000 (28 U.S.C. § 1332), the Court's jurisdiction is invoked through a claim arising under the Lanham Act of 1946, 15 U.S.C. § 1051 et seq.

HMH brought this action to halt the defendants' use of the word "Playboy" in the names and advertising of their two Florida theaters, on grounds that such use constitutes unfair competition and infringes trade or service marks registered with the United States Patent Office. See 28 U.S.C. § 1338.

Undisputed evidence reveals the following sequence of events:

1954: The United States Patent Office issued certificate No. 600,018 to HMH for the trademark "Playboy" in connection with magazines.

1964: The United States Patent Office issued certificate No. 769,702 to HMH for the service mark "Playboy" in connection with establishments featuring food, drink and entertainment. Also, HMH opened its "Playboy Theater" in Chicago.

1967: Defendants opened the "Playboy Drive-In Theatre" in Jacksonville, Florida.

1968: Defendants opened the "Playboy Theatre" in Lake Worth, Florida.

1969: The United States Patent Office issued certificate No. 875,827 to HMH for the service mark "Playboy" in connection with theaters.

HMH bases its claim of trademark infringement upon 15 U.S.C. § 1114, which states in part:

(1) Any person who shall, without the consent of the registrant —

(a) use in commerce any reproduction, * * * copy, or colorable imitation of a registered mark in connection with the sale * * * or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; * * *

shall be liable in a civil action by the registrant.

Standing alone, this Lanham Act provision could create problems of considerable scope for any established local or statewide business which suddenly found itself challenged by a federally-registered newcomer of similar name. To avoid such difficulties, Congress tempered § 1114 by providing that even where the right to use a registered mark had become "incontestable" under 15 U.S.C. § 1065, a defense to charges of infringement would lie where the defendant could show his mark

* * * was adopted without knowledge of the registrant's prior use and has been continuously used * * * from a date prior to registration of the mark * * *. Provided, however, That this defense or defect shall apply only for the area in which such continuous prior use is proved. * * * (15 U.S.C. § 1115(b) (5)).

Defendants take the position (1) that their use of "Playboy" for the theaters opened in 1967 and 1968 was without knowledge of a prior use of the word in like context by HMH, and hence is superior to HMH's 1969 registration, and (2) that their adoption of the term was not connected with either magazines or "food and entertainment clubs," and therefore raised no "likelihood of confusion" with HMH's previous registrations (1954, 1964). The premise behind this latter contention is that if no actionable confusion existed when the theaters opened in 1967 and 1968, HMH may not now prevail by expanding into the theater business and thus generating such confusion.

The legal aspects of defendants' first line of argument appear sound. It seems clear that HMH's 1969 registration of "Playboy" in connection with theaters cannot by itself preempt rights to the word established prior to such registration. 15 U.S.C. § 1115(b) (5); Burger King of Florida, Inc. v. Hoots, 403 F.2d 904 (7th Cir., 1968). Their second argument, however, is equally vital to their case, and is considerably more complex.

It is well established that a geographical expansion by a business covered by a federally-registered mark is protected as against all later-registered (or unregistered) enterprises in the same field. Turner v. HMH Publishing Co., 380 F.2d 224 (5th Cir., 1967); John R. Thompson Co. v. Holloway, 366 F.2d 108 (5th Cir., 1966). Indeed, 15 U.S.C. § 1115(b) gives the registered party the "exclusive right to use" its "mark in commerce" to the exclusion of all conflicting marks. Defendants note, however, that it also explicitly limits this protection to uses of the mark "in connection with the goods or services specified in the affidavit filed upon registration." (Emphasis added.) Perhaps due in part to the broader language of § 1114, necessity has dictated that this restriction be construed to allow the registrant priority over all businesses, whether or not in direct competition, whose adoption of a similar mark (1) was subsequent to his own registration, and (2) created a likelihood of confusion as to the source of the goods and services sold under the marks. Turner, supra. (Those whose adoption without notice preceded the plaintiff's registration have rights to the mark within their geographical area. § 1115(b) (5), supra.) This protection has been consistently extended as a shield for geographical expansion of a registered business, in plain recognition of the fact that

the language of the Federal Trademarks Act, as well as its legislative history, shows an intent to provide nationwide protection for expanding businesses. (John R. Thompson Co. v. Holloway, supra, at 114.)

Defendants argue, however, that regardless of the power of this shield in guiding a registrant's geographical expansion, its protection is lost when he enters a new type of business (as opposed to the same type in a new location). They suggest that a contrary ruling would complete the demise of meaning in the § 1115 restriction quoted above, and would allow opportunists to usurp well-established goodwill by barnstorming an old registration through any lucrative field where it would have seniority over similarly-named enterprises.

Assuming (without deciding) that defendants' arguments are correct, and given that their use of the "Playboy" mark has been continuous since 1967 and 1968, their sole task in prevailing over the infringement claim is to show that their original adoption of the mark violated no registered rights held by HMH. It is a presentation they cannot make.

On the basis of uncontroverted evidence submitted in affidavits, depositions, admissions, and answers to interrogatories, the Court is compelled to conclude that since its inception, defendants' use of "Playboy" has constituted a continuing infringement of the mark developed by HMH under its 1954 and 1964 registrations.

The facts show that in 1953, HMH began publishing Playboy magazine. Since that time it has (directly or through related companies) engaged in a wide variety of other business activities under the same name — including a model agency, a book publishing division, a products sales division, and some television and film production work. The "Playboy Clubs," operating through a controlled license to a related company, are now located in fifteen major cities, and have been widely advertised through radio, magazines, and newspapers. The overall growth and success of HMH and its related businesses has been remarkable, and by the time defendants used "Playboy" on their first theater HMH's enterprises had broached $200...