HMH Pub. Co., Inc. v. Brincat

• Decision Date: 15 August 1974
• Docket Number: No. 72-1728,72-1728
• Parties: HMH PUBLISHING CO., INC., a Delaware corporation, and Playboy Clubs International, Inc., a Delaware corporation, Appellees, v. Victor BRINCAT, Appellant.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 713

504 F.2d 713

183 U.S.P.Q. 141

HMH PUBLISHING CO., INC., a Delaware corporation, and

Playboy Clubs International, Inc., a Delaware

corporation, Appellees, v. Victor BRINCAT, Appellant.

No. 72-1728.

United States Court of Appeals, Ninth Circuit.

Aug. 15, 1974, As Modified on Denial of Rehearing Nov. 20, 1974.

Timothy J. Ward (argued), Burlinagame, Cal., for appellant.

Michael L. Shakman (argued), of Devoe, Shadur, Plotkin, Krupp & Miller, Chicago, Ill., for appellees.

OPINION

Before BROWNING and SNEED, Circuit Judges, and SHARP, ^* District Judge.

SNEED, Circuit Judge.

The present appeal attacks a judgment entered by the United States District Court for the Northern District of California in which it was held that appellant's use of the terms 'Playboy' and 'Bunny' in conjunction with his various businesses constituted trademark infringement and unfair competition. ¹ HMH Publishing Co., Inc. and Playboy Clubs International, Inc., a wholly owned subsidiary (hereinafter referred to collectively as HMH), are Delaware corporations with their offices and principal places of business in Chicago, Illinois. Victor Brincat, an individual, is a resident of the State of California. Jurisdiction of the district court was founded upon 28 U.S.C. 1338 and 1332.

HMH Publishing Co., Inc. is the publisher of Playboy magazine and the owner of federal trademark registrations for the marks 'Playboy' and 'Bunny' as trade and service marks. ² In addition to its publishing business, HMH has, directly or through subsidiary and related companies, engaged in a wide variety of other business activities under the mark 'Playboy.' ³ Playboy Clubs International, Inc., under a controlled license from HMH, franchises others to use the marks of HMH in such areas as the operation of nightclubs, hotels, and resort-hotels. ⁴

Since 1967, appellant has operated five unincorporated businesses in or near San Mateo, California under the name Playboy. ⁵ These businesses have marketed a variety of automotive products and services including dune buggies (four-wheel sports vehicles which are usally constructed from Volkswagen frame and drive components with a fiberglass body), dune buggy bodies and accessories, automobile upholstery, automobile body repairs and service, and automobile towing. towing.

The trial court found that prior to appellant's first use of the term 'Playboy' in 1967, HMH had been publicly associated with automotive products, and especially with sports and pleasure vehicles. In reaching this conclusion, the court evaluated not only evidence of advertising by HMH of its own marks prior to 1967, but also evidence of extensive automotive advertising which Playboy magazine had carried and its publication of numerous articles about automobiles and their related goods. In addition, the court gave weight to the fact that many major manufacturers regarded an association with Playboy as a viable means of marketing their products.

Having found that the mark 'Playboy' had become associated in the public mind with automobiles and automotive products, and having found that appellant adopted the name 'Playboy' with the intent of trading upon HMH's goodwill, ⁶ the court enjoined appellant's use of that name in connection with his various businesses. In so doing, the court concluded that appellant had violated both the provisions of the Lanham Act, 15 U.S.C. 1051 et seq., and the applicable California law, Cal.Bus. and Professions Code 14330. In addition to injunctive relief, the court awarded costs and reasonable attorneys' fees to HMH.

Trademark infringement is a peculiarly complex area of the law. Its hallmarks are doctrinal confusion, conflicting results, and judicial prolixity. The source of this difficulty is that each case involves an effort to achieve three distinct objectives which, to a degree, are in conflict. These are: (1) to protect consumers from being misled as to the enterprise, or enterprises, from which the goods or services emanate or with which they are associated; (2) to prevent an impairment of the value of the enterprise which owns the trademark; and (3) to achieve these ends in a manner consistent with the objectives of free competition. The third objective dictates a degree of restraint in the pursuit of the first two; the second can be pushed beyond the reasonable needs of the first; and each requires for its proper implementation the exercise of judicial intuition supported, to the extent possible, by relevant facts. This case is no different from its kind, and we approach it with a keen awareness of its difficulty and our peril.

I.

HMH's fundamental contention is that appellant's use of the name 'Playboy' is likely to cause confusion on the part of consumers with respect to appellee's 'sponsorship' of the products and/or services offered by appellant to the public. This being so, HMH asserts that there has been a violation of the Lanham Act, and in particular the provisions of Section 32(1), 15 U.S.C. 1114(1). As currently enacted, this section permits the owner of a registered mark to maintain a civil action against any person who, without the consent of the registrant uses:

. . . in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, 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; . . .

15 U.S.C. 1114(1).

Appellee's interpretation of the Lanham Act is correct. Although the Trademark Act of 1905 and, at least in the view of some courts, the 1946 version of the Lanham Act did not afford the registrant protection from sponsorship confusion, the judicial and legislative history of the post-1946 period set forth in the margin clearly indicates that a likelihood of confusion as to sponsorship may be a ground for a valid cause of action under the present Act. ⁷

II.

The issue before us, therefore, is whether appellant's activities created a sufficient probability that there would be confusion as to HMH's sponsorship of his products so that HMH is properly entitled to recover under the Act. Inasmuch as the facts are not in dispute, the issue is an appropriate one for this Court to resolve. See, e.g. HMH Publishing Co., Inc. v. Lambert, 482 F.2d 595, 599 (9th Cir., 1973); Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794, 799 (9th Cir., 1970); Sleeper Lounge Co. v. Bell Manufacturing Co., 253 F.2d 720 (9th Cir. 1958).

We commence by emphasizing that the mere possibility that the public will be confused with respect to HMH's sponsorship of appellant's products is not enough. There must exist a likelihood that such confusion will result. See, e.g. Carter-Wallace, Inc. v. Procter & Gamble Co., supra, 434 F.2d at 804.

Next it is necessary to observe that while the existence of a likelihood of confusion is dependent upon the facts of each particular case, Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 160 (9th Cir., 1963), the courts have selected certain factors as having special relevance to a proper resolution of this issue. These include:

. . . visual, verbal and intellective similarity; the class of goods in question; the marketing channels; the intent of defendant; evidence of actual confusion; and the strength or weakness of the marks in question.

Carter-Wallace, Inc. v. Procter & Gamble Co., supra, 434 F.2d at 800. See also K-S-H Plastics, Inc. v. Carolite, Inc., 408 F.2d 54, 57 (9th Cir.), cert. denied 396 U.S. 825, 90 S.Ct. 69, 24 L.Ed.2d 76 (1969); Paul Sachs Originals Co. v Sachs, 325 F.2d 212, 214 (9th Cir., 1963); Sleeper Lounge Co. v. Bell Manufacturing Co., supra, 253 F.2d at 722-723; G.D.Searle & Co. v. MDX Purity Pharmacies, Inc., 275 F.Supp. 524, 530 (C.D.Cal.1967).

Turning to the last-mentioned of these factors, the strength or weakness of the mark in question, we believe that, contrary to the strong assertions of HMH, the term 'playboy' as applied to HMH's products is neither fanciful nor arbitrary. Compare Polaroid Corp. v. Polaraid, Inc., 319 F.2d 830 (7th Cir., 1963); Sunbeam Lighting Co. v. Sunbeam Corp., 183 F.2d 969 (9th Cir., 1950), cert. denied 340 U.S. 920, 71 S.Ct. 357, 95 L.Ed. 665 (1951); Stork Restaurant v. Sahati, 166 F.2d 348 (9th Cir., 1948). The word 'playboy' was firmly established in the English language long prior to its use by HMH and has historically carried with it strong connotations of wealth, urbanity and sophistication. ⁸ As such, it has a natural attraction for any enterprise which caters to the interests of men; and it is not improbable that this fact influenced HMH's adoption of the term for its trademark. However, the mere registration of the word 'playboy' as a trademark can not entitle the registrant to capture the entire commercial utility of such a widely known concept.

We share the view that a businessman should not be permitted to

. . . pluck a word with favorable connotations for his goods or services out of the general vocabulary and appropriate it to his exclusive use no matter how much effort and money he may expend in the attempt.

Esquire, Inc. v. Esquire Slipper Manufacturing Co., 243 F.2d 540, 543 (1st Cir., 1957).

It is true however, that the expenditure of efforts and money may result in the development of a 'secondary meaning' even though the original mark is weak. 3 Callman, Unfair Competition, Trademarks and Monopolies, 77.1 (3rd ed. 1969). That is, the originally weak mark may come to be associated with the registrant's products to such an extent that the purchasing public generally believes that a product which bears that mark is in some fashion connected with the products of the registrant. Should this occur, the use of such a word or phrase by another can result in a likelihood of confusion. See, e.g., Everest & Jennings, Inc. v. E. & J. Manufacturing Co., 263 F.2d 254 (9th Cir., 1958), cert. denied ...