Lang v. Retirement Living Pub. Co., Inc.

• Citation: 949 F.2d 576
• Decision Date: 18 November 1991
• Docket Number: D,No. 96,96
• Parties: Doe LANG, Petitioner/Defendant-Appellant, v. RETIREMENT LIVING PUBLISHING CO., INC., Respondent/Plaintiff-Appellee. ocket 91-7336.
• Court: U.S. Court of Appeals — Second Circuit

Page 576

949 F.2d 576

21 U.S.P.Q.2d 1041

Doe LANG, Petitioner/Defendant-Appellant, v. RETIREMENT LIVING PUBLISHING CO., INC., Respondent/Plaintiff-Appellee.

No. 96, Docket 91-7336.

United States Court of Appeals,

Second Circuit.

Argued Aug. 30, 1991.

Decided Nov. 18, 1991.

Richard A. Altman, Brooklyn, N.Y., for petitioner/defendant-appellant.

David Goldberg, New York City, (Richard S. Mandel, Cowan, Liebowitz & Latman, P.C., New York City, Michael Brizel, The Reader's Digest Ass'n, Inc., Pleasantville, N.Y., of counsel), for respondent/plaintiff-appellee.

Before OAKES, Chief Judge, FEINBERG and CARDAMONE, Circuit Judges.

OAKES, Chief Judge:

In this trade name infringement case, under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1988), Doe Lang appeals from an opinion and order of, and a judgment entered pursuant thereto in, the United States District Court for the Southern District of New York, Louis L. Stanton, Judge, granting defendant Retirement Living Publishing Co. Inc.'s (Retirement Living) motion for summary judgment. Because we agree with the district court that Lang failed to raise a genuine issue of fact on the likelihood of confusion, we affirm.

I

This dispute turns on who holds the right to use the words "New Choices" in a trade name as that term is used in the Lanham Act, 15 U.S.C. § 1127 (1988). In 1985, author and educator Doe Lang formed New Choices Press, which to date has published one book entitled The Secret of Charisma: What It Is and How To Get It, and has issued cassettes similarly dealing with the development of charisma. In 1988, Retirement Living (a subsidiary of Reader's Digest Association) purchased 50 Plus, a magazine designed, not surprisingly, for readers over fifty. As part of an effort to revamp the publication, Retirement Living decided to change the magazine's name and ultimately selected New Choices For The Best Years.

Lang runs New Choices Press out of her apartment in New York City. Her apartment is also home to her image consulting firm, Charismedia, of which she is the president. Lang has advertised her charisma-building products and services and has also received considerable media attention. Only a few of the advertisements and articles, however, mention New Choices Press. Despite this advertising and publicity, New Choices Press remains a modest-sized business. Through late 1989, New Choices Press's sales have totaled approximately $85,000. One-half of these sales were made through a distributor. The remainder, direct sales, have consistently amounted to less than $2,000 a year. New Choices Press has never published a magazine, nor does it have any plans to do so. Lang has considered publishing several self-help guides but at present these plans have not crystallized. The name "New Choices Press" appears in small block letters, above a sun and pedestal design, on the spine of the charisma book.

The name of Retirement Living's magazine, New Choices For The Best Years, figures prominently at the top of the cover, with "New Choices" in larger hollow slanted letters on top, and "For The Best Years" in smaller block letters below. The magazine has over 580,000 subscribers. Like its predecessor, the magazine focuses primarily on the interests of readers between the ages of 45 and 65.

Retirement Living selected the name New Choices For The Best Years after considering other similar names and directing its outside trademark counsel to conduct a trademark search. The search did reveal New Choices Press and, in response, the law firm sent an associate to the premises to investigate. The associate determined, of course, that the address was that of an apartment house. The associate also determined that New Choices Press published one book and several tapes, but furnished no product or services entitled "New Choices."

Beginning in late 1988, Lang's office received a number of phone calls from persons trying to reach New Choices For The Best Years, whose number was not yet in the telephone directory. The calls ceased from September 1989 to May 1990 after both the Manhattan Yellow and White Pages listed New Choices For The Best Years in the summer of 1989. In late May 1990, however, the magazine changed its phone number and once more Lang received misdirected calls. Retirement Living claims that this new series of calls resulted from the phone company's failure to give out the correct number, and the remedying of this error caused the misdirected calls to cease. Lang, on the other hand, maintains that the calls persisted at least up to December 1990.

Meanwhile, the first set of phone calls prompted Lang, in May 1989, to bring suit in state court to enjoin Retirement Living from using the name "New Choices", under New York General Business Law, N.Y. Gen.Bus.Law § 133 (McKinney 1988). Retirement Living removed the suit to federal district court, where Lang's motions for preliminary injunctive relief were denied. No. 89 Civ. 3868 (S.D.N.Y. Nov. 6, 1989), aff'd, 898 F.2d 137 (2d Cir.1990) (unpublished summary order). Upon completion of discovery, the district court granted Retirement Living's motion for summary judgment, Lang v. Retirement Living Publishing Co., Inc., 759 F.Supp. 134 (S.D.N.Y.1991), thus giving rise to this appeal.

II

The central issue in trade name infringement cases such as this one is the same as it is in trademark cases, namely, whether there is a likelihood of confusion. ¹ See Restatement (Third) of Unfair Competition § 20 (Tent. Draft No. 2, 1990); see also Accuride Int'l, Inc. v. Accuride Corp., 871 F.2d 1531, 1535 (9th Cir.1989). Whether a trademark owner receives judicial protection depends on "whether there is any likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question." McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1130 (2d Cir.1979) (quoting Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir.1978) (per curiam), cert. denied, 439 U.S. 1116, 99 S.Ct. 1022, 59 L.Ed.2d 75 (1979)). Appellant argues that the resolution of this issue on a motion for summary judgment is inappropriate in general, and especially inappropriate given the factual complexity of this case.

Federal Rules of Civil Procedure 56(c) provides, of course, that the court shall grant summary judgment when the pleadings, evidence obtained through discovery, and affidavits show that there is no genuine issue of material fact, and the moving party is entitled to judgment as a matter of law. As the Supreme Court explained in Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 2509-10, 91 L.Ed.2d 202 (1986), "the mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact." A dispute as to a material fact is "genuine," and hence summary judgment is not appropriate, under this standard, only "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. at 248, 106 S.Ct. at 2510. In determining how a reasonable jury would decide, the court must resolve all ambiguities and draw all inferences against the moving party. Ramseur v. Chase Manhattan Bank, 865 F.2d 460, 465 (2d Cir.1989).

Although appellant does not dispute these general standards, she asserts that they require greater justification for a grant of summary judgment in a trademark case, since the existence of a likelihood of confusion may involve a series of inferences. Our cases, however, show that summary judgment may be appropriate in certain trademark actions. For example, in Universal City Studios, Inc. v. Nintendo Co., Ltd., 746 F.2d 112, 115 (2d Cir.1984), we affirmed the district court's grant of summary judgment against the plaintiff with respect to his trademark infringement claim, explaining that the plaintiff had "failed to raise a question of fact on the issue of the likelihood of consumer confusion." See also Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 876 (2d Cir.1986) (application of undisputed facts to the issue of likelihood of confusion is a legal issue appropriately decided on a motion for summary judgment); Murphy v. Provident Mutual Life Ins. Co., 923 F.2d 923, 930 (2d Cir.1990), cert. denied, --- U.S. ----, 112 S.Ct. 65, 116 L.Ed.2d 40 (1991) (affirming grant of summary judgment for defendant). Thus, our task in this appeal is to determine whether Lang has raised a genuine issue of fact on the issue of the likelihood of confusion. For this, we turn to the eight-factor test first set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961) as supplemented by the Restatement, supra, §§ 20-23. See generally Papercutter, Inc. v. Fay's Drug Co., Inc. 900 F.2d 558, 562 (2d Cir.1990) (relying on the Restatement for guidance in a Lanham Act case).

The Polaroid test looks to the following factors: the strength of the prior owner's mark, the similarity between the two marks, the competitive proximity of the products, the likelihood that the prior user will bridge the gap, actual confusion, the defendant's good faith, the quality of defendant's product, and the sophistication of the buyers. Polaroid at 495. In applying this test, the list of factors "does not exhaust the possibilities," id. (citing Restatement of Torts §§ 729, 730, 731), and "[n]o single Polaroid factor is determinative." Plus Products v. Plus Discount Foods, Inc., 722 F.2d 999, 1004 (2d Cir.1983). Instead, each factor must be considered in the context of the others, and balanced to determine whether a likelihood of confusion exists. Id. Additionally, we note that in reviewing the district court's determinations, its "findings on each of the Polaroid factors are entitled to considerable...