Eli Lilly and Co. v. Natural Answers, Inc.

• Decision Date: 20 January 2000
• Docket Number: No. IP 99-1600-C H/G.,IP 99-1600-C H/G.
• Citation: 86 F.Supp.2d 834
• Parties: ELI LILLY AND COMPANY, an Indiana corporation, Plaintiff, v. NATURAL ANSWERS, INC., a Florida corporation, and Brian Alexander Feinstein, Defendants.
• Court: U.S. District Court — Southern District of Indiana

86 F.Supp.2d 834

ELI LILLY AND COMPANY, an Indiana corporation, Plaintiff, v. NATURAL ANSWERS, INC., a Florida corporation, and Brian Alexander Feinstein, Defendants.

No. IP 99-1600-C H/G.

United States District Court, S.D. Indiana, Indianapolis Division.

January 20, 2000.

James H. Ham, III, Baker & Daniels, Indianapolis, IN, Jeffrey A. Schwab, Abelman Frayne & Schwab, New York, NY, for Eli Lilly and Co.

James A. Richardson, Locke Reynolds LLP, Indianapolis, IN, R. Lawrence Bonner, Homer Bonner & Delgado, P.A., Miami, FL, for Natural Answers, Inc., Brian Alexander Feinstein.

ENTRY ON PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION

HAMILTON, District Judge.

Plaintiff Eli Lilly & Company ("Lilly") manufactures and sells fluoxetine hydrochloride under the federally registered trademark PROZAC ®. PROZAC ® is a prescription drug used to treat clinical depression and some other psychological conditions. Defendant Natural Answers, Inc. manufactures and sells a blend of St. John's Wort and several other herbs under the name HERBROZAC. Natural Answers has been advertising HERBROZAC over the Internet as "a very potent and synergistic formula, designed to promote Mood Elevation," and as "a powerful, and effective all-natural and herbal formula alternative to [the] prescription drug Prozac."

Lilly has sued Natural Answers and its founder, Brian Alexander Feinstein, under the Lanham Act for federal trademark infringement and for dilution of PROZAC ® as a famous trademark. See 15 U.S.C. § 1125(a) & (c). On December 16, 1999, Lilly moved for a preliminary injunction to prevent Natural Answers from continuing to market its product using both the HERBROZAC name and references to PROZAC ® in its Internet advertising. The court held a hearing on December 28, 1999, and has considered additional post-hearing briefs.

When the court rules on a motion for a preliminary injunction, it makes a preliminary judgment based on an incomplete factual record. Its findings of fact and conclusions of law are subject to revision based on more complete information later in the case. As explained below, however, Lilly has made a powerful case of both trademark infringement and dilution of a famous trademark. Lilly has also established the other elements of a preliminary injunction. The court therefore grants Lilly's motion for a preliminary injunction against further use of the HERBROZAC name and mark and further use of references to PROZAC ® in the source code of the Natural Answers web site. Pursuant to Rules 52 and 65 of the Federal Rules of Civil Procedure, the court now states its findings of fact and conclusions of law.

Findings of Fact

I. Lilly's PROZAC ®

Since 1988, using the trademark PROZAC ®, plaintiff Lilly has sold fluoxetine hydrochloride throughout the United States and in many countries around the world. Lilly has marketed the medicine primarily to treat depression. The medicine has also proven useful in treating bulimia nervosa and obsessive-compulsive disorder.

Lilly owns United States Trademark Registration No. 1357582 for PROZAC ® as used for pharmaceutical products. The registration was issued September 3, 1985, and has become incontestable as a matter of law. See 15 U.S.C. § 1065.

As a prescription drug, PROZAC ® is not freely available to patients who seek to use it to relieve depression or other conditions. A licensed physician must prescribe the medicine, and a licensed pharmacist must fill the prescription for the patient. Lilly's advertising of PROZAC ® has been aimed at physicians and pharmacists, and not directly to potential consumers.

PROZAC ® is the best-selling prescription antidepressant in the United States. Since 1988, doctors have prescribed PROZAC ® more than 240 million times for more than 17 million Americans. PROZAC ® sales in the United States alone have totaled more than $12 billion since 1988.

Over the last eleven years, fluoxetine hydrochloride and the PROZAC ® mark have received an extraordinary amount of attention from the news media. The product has achieved extraordinary fame in American culture. PROZAC ® is the best known brand of a new generation of medications that have been developed and are being developed to treat not only depression but a host of other psychological conditions more effectively than has been possible before. See, e.g., Pl.Ex. 1-3 at 37 (Newsweek cover story entitled "Beyond Prozac," Feb. 7, 1994).

Lilly has submitted a sampling of newspaper and magazine articles and books about PROZAC ® that evidence this fame. In 1993, for example, Penguin Books USA published Peter D. Kramer's book Listening to Prozac, and in 1994, The Berkley Publishing Group published Elizabeth Wurtzel's Prozac Nation: Young and Depressed in America. Both books were national bestsellers. PROZAC ® has been featured twice on the cover of Newsweek and once on the cover of The Saturday Evening Post, among other national magazines.

Major broadcasting networks have also featured PROZAC ® in national stories. For example, in 1991 CBS broadcast a story titled "What About Prozac?" on 60 Minutes. In 1995, ABC broadcast a story called "Beyond Prozac" on Good Morning America. The Oprah Winfrey Show carried a story called "Prozac" in 1994. A health care industry advertising publication called MedAdNews named PROZAC its "brand of the year" for 1993.

As further evidence of the fame of the mark, in the flurry of retrospective looks at the 20th Century, Fortune Magazine identified PROZAC ® as one of the top six products of the century in the category of health and grooming. Pl.Ex. 1-10.¹

Lilly has submitted an article from the Baltimore Sun of September 21, 1993, that sums up the fame PROZAC ® achieved within just a few years of its initial launch as a brand. After referring to the use of PROZAC ® in punch lines in a Woody Allen film and a New Yorker poem, the author wrote:

Prozac entered the popular lexicon almost immediately after its introduction six years ago. It's been on the cover of Newsweek and shared the stage with Phil and Geraldo; it continues to turn up in the monologues of comedians and the cultural references of the ironic. It's a designer label, a buzzword, a brand name familiar to not only the 4.5 million Americans who have taken it, but also those who wonder if they, too, might find a cure for whatever ails them in the little green-and-off-white capsule.

Pl.Ex. 1-6.

As further evidence of PROZAC ®'s fame, searches of computerized databases turned up extraordinary numbers of responses. A search of the Internet for "Prozac" using the Altavista search engine on November 29, 1999, found 63,150 web pages. Pl.Ex. 2-8. A November 29, 1999, search of the Westlaw database ALL-NEWS for the word Prozac and a date after 1997 produced more than 10,000 stories. Pl.Ex. 2-9. The Westlaw database DOW JONES MAJOR NEWSPAPERS covers only 48 major newspapers. A November 29, 1999, search of that database for "Prozac" over the last ten years turned up more than 12,000 references, or an average of more than 250 stories for each newspaper included in the database. Pl. Ex. 2-10.

II. HERBROZAC and its Marketing

Defendant Natural Answers' HERBROZAC is part of a line of products that Natural Answers calls HERBSCRIPTIONS ®. These products are manufactured from a variety of herbs and other natural substances. Natural Answers markets these products over the Internet from a site marked . Natural Answers has not yet arranged for distribution through "brick-and-mortar" retail stores, but it is actively seeking to do so.

The HERBSCRIPTIONS ® line of products includes HERBROZAC, as well as HERBALIUM, VITA-AGRA, CLIMAGRA, HERBOCET ®, ZONK OUT, HerbenolPM, HERBASPRIN ®, and HERBADRYL ®. Pl.Ex. 2-1 (printout of Natural Answers home page on Nov. 29, 1999).

Natural Answers tries to walk a fine line in its business. On one hand, Natural Answers attempts to draw a sharp distinction between its herbal formula dietary supplements and the drugs manufactured by pharmaceutical companies like Lilly. Natural Answer takes care to claim that its products are not "intended to diagnose, treat or cure any disease." See, e.g., Feinstein Aff. ¶¶ 19, 4. This distinction is important for both marketing and legal reasons.

Natural Answers does not want to subject its products to regulation by the Food and Drug Administration. The FDA treats Natural Answers' dietary supplements as "foods" that are not subject to the FDA's drug approval process. This regulatory treatment of the products as "foods," however, requires Natural Answers to make clear in its labeling that its products are not FDA-approved and are "not intended to diagnose, treat, cure, or prevent any disease." 21 U.S.C. §§ 321(ff), 343(r)(6)(C). Nevertheless, Natural Answers wants to market its products as natural alternatives to manufactured pharmaceuticals. Natural Answers markets its products as "dietary supplements" that are "intended to promote the body's natural functions." Feinstein Aff. ¶ 5.

Natural Answers markets all the HERBSCRIPTIONS ® products as alternatives to drugs. The company's web site makes a direct comparison between "herbs" and "drugs" that portrays herbal formulas in an entirely positive light and as alternatives to drugs.

One way in which Natural Answers tries to suggest the benefits of its products is by giving them names that suggest an association with well-known drug brands or families of drugs. As explained below in the discussion of the similarity of the marks in question, the association between PROZAC ® and HERBROZAC is strong and intentional. Natural Answers chose a name similar to PROZAC ® rather than a name similar to other antidepressant drugs because PROZAC ® is the most famous and best-selling antidepressant drug. See Tr. 40, 43-44 (Feinstein cross-examination). Natural Answers has advertised HERBROZAC as "a very potent and synergistic formula, designed to promote Mood Elevation!" Pl.Ex. 2-1. Natural Answers also has advertised HERBROZAC...