Pfizer Inc. v. Sachs
| Decision Date | 08 September 2009 |
| Docket Number | No. 08 Civ. 8065 (WHP).,08 Civ. 8065 (WHP). |
| Citation | 652 F.Supp.2d 512 |
| Parties | PFIZER INC., Plaintiff, v. Arye SACHS and JetAngel.com, Defendants. |
| Court | U.S. District Court — Southern District of New York |
Paul C. Llewellyn, Esq., Kaye Scholer, LLP, New York, NY, for Plaintiff.
Mr. Arye Sachs, West Babylon, NY, pro se.
Plaintiff Pfizer Inc. ("Pfizer") brings this trademark infringement and dilution action against Defendants Arye Sachs ("Sachs") and JetAngel.com for violations of the Lanham Act, common law trademark infringement, and violations of New York General Business Law. Plaintiff moves for summary judgment and also seeks attorney's fees pursuant to 15 U.S.C. § 1117. For the following reasons, Plaintiffs motion is granted in part and denied in part.
Pfizer is a global pharmaceutical company, which manufactures and sells Viagra, a prescription pharmaceutical used to treat erectile dysfunction. (Plaintiffs Local Rule 56.1 Statement of Undisputed Facts ("Pl. 56.1") ¶¶ 1-2.) Pfizer uses two marks in connection with Viagra: (1) the Viagra mark, which is registered as U.S. Registration No. 2,162,548; and (2) the "Viva Viagra" mark, which is the subject of a pending federal trademark application and is currently identified as Serial No. 77/043,506 (collectively "the Viagra Marks" or "the Marks"). (Pl. 56.1 ¶¶ 4, 19.) The Viagra mark consists of the word "Viagra" depicted in blue, block type. (Pl. 56.1 ¶ 18.) In the Viva Viagra mark, the word "Viagra" is preceded by the word "Viva" written at an angle in cursive type. (Pl. 56.1 ¶ 18.) The Viva Viagra mark has appeared in virtually every advertisement for Viagra since mid-2007. (Pl. 56.1 ¶ 14.)
Pfizer spends millions of dollars advertising Viagra and promoting the drug through sponsorships of Major League Baseball and NASCAR. (Pl. 56.1 ¶¶ 6, 9-11.) To achieve commercial awareness, the Viagra Marks have been exhibited in the mass media, the electronic media, racecars, billboards, and other out-of-home advertising. (Pl. 56.1 ¶¶ 9-11.) Viagra has also attracted considerable international media attention. (Pl. 56.1 ¶ 6.) To date, approximately 35 million men have used Viagra, generating more than $16 billion in worldwide sales. (Pl. 56.1 ¶¶ 20-21.)
Since Viagra's launch in 1998, Pfizer has sent hundreds of cease-and-desist letters and commenced at least 29 lawsuits to prevent unauthorized use of the Viagra Marks. (Pl. 56.1 ¶¶ 26-27.) Pfizer also commenced other proceedings to protect the Viagra Marks from dilution or infringement resulting from unauthorized use by other marks, Internet domain names, or counterfeiters. (Pl. 56.1 ¶¶ 29-31.)
Sachs operates an unincorporated business that maintains the JetAngel.com website. (Pl. 56.1 ¶ 33.) JetAngel.com sells outdoor advertising on decommissioned military equipment such as fighter jets and missiles akin to mobile billboards. (Pl. 56.1 ¶ 32.) Its website describes the benefits of advertising on platforms such as a ballistic missile to "creat[e] the right buzz for your company." Pfizer Inc. v. Sachs, No. 08 Civ. 8065(WHP), 2008 WL 4525418, at *1 (S.D.N.Y. Oct. 8, 2008); (Pl. 56.1 ¶¶ 33-35, 37.) Sachs identifies himself as JetAngel's "Chief Fun Officer." Pfizer, 2008 WL 4525418, at *1.
On September 8, 2008, Sachs towed a trailer carrying a twenty foot decommissioned United States Air Force missile bearing the Viagra brand into Manhattan and parked it in front of Pfizer's world headquarters. (Pl. 56.1 ¶¶ 39, 41.) Not surprisingly, a large piece of military hardware on Forty-Second Street in midtown stirred considerable interest among passersby. Sachs seized that opportunity to distribute informational pamphlets about his business and even left one with Pfizer. (Pl. 56.1 ¶¶ 42-43.) On September 9, 2008, Pfizer received an email from a company identifying itself as AVI Media Group. The email boasted that Defendants would return the following week but that this time the Viagra-branded missile would feature two female models "riding" it and distributing condoms. (Pl. 56.1 ¶ 44; Defendants' Local Rule 56.1 Statement of Undisputed Facts ("Df. 56.1") ¶ 44.) If Defendants intended this to be funny, Pfizer did not get the joke. That same day Pfizer sent Defendants a letter demanding they cease their unauthorized use of the Viagra Marks by September 10, 2008. (Pl. 56.1 ¶ 46.)
When Pfizer did not receive a prompt response, it sent a second cease-and-desist letter the following day. (Pl. 56.1 ¶ 47.) Over the ensuing weekend, Defendants exhibited the Viagra-branded missile at an adult entertainment exposition in New Jersey with a banner promoting its advertising services. (Pl. 56.1 ¶ 49.) On September 14, 2008, Defendants taunted Pfizer with an email announcing their intention to take the Viagra-branded missile on a tour of New York and twelve other major cities. As part of that promotion, Defendants stated that they would distribute condoms bearing images of the candidates for President of the United States. (Pl. 56.1 ¶ 51.) Defendants' email closed with a profane remark directed at Pfizer. (Pl. 56.1 ¶ 52.) On September 17, 2008, Defendants issued a press release describing the twelve city tour, the Viagra-branded missile and advertising opportunities through AVI Media Group. (Pl. 56.1 ¶ 54.)
The following day, Pfizer filed suit and this Court granted a temporary restraining order prohibiting Defendants from using or displaying the Viagra Marks in connection with any goods or services. By Memorandum and Order dated October 8, 2008, this Court preliminarily enjoined Defendants from further use of the Viagra Marks, pending resolution of this action. Pfizer, 2008 WL 4525418, at *5.
Summary judgment is appropriate "if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The burden of demonstrating the absence of any genuine dispute as to a material fact rests with the moving party. Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970). In determining whether there is a genuine issue as to any material fact, "[t]he evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in [its] favor." Liberty Lobby, 477 U.S. at 255, 106 S.Ct. 2505. However, "a party opposing a properly supported motion for summary judgment may not rest upon the mere allegations or denials of his pleading, but . . . must set forth specific facts showing that there is a genuine issue for trial." Liberty Lobby, 477 U.S. at 248, 106 S.Ct. 2505 (quoting Fed.R.Civ.P. 56(e)).
Because Defendants appear in this action pro se, this Court "construe[s their] pleadings and motions liberally." See In re Sims, 534 F.3d 117, 133 (2d Cir.2008).
Pfizer asserts trademark infringement under Section 32 of the Lanham Act, 15 U.S.C. § 1114, and false designation of origin, false endorsement and unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Both claims are governed by the same standard: "plaintiff must demonstrate that it has a valid mark entitled to protection and that the defendant's use of it is likely to cause confusion." Time Inc. v. Petersen Pub. Co., 173 F.3d 113, 117 (2d Cir.1999); Mr. Water Heater Enterprises, Inc. v. 1-800-Hot Water Heater, LLC, 648 F.Supp.2d 576, 583 (S.D.N.Y.2009).
A "mark is distinctive and capable of being protected if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning." Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992) (emphasis omitted). "[R]egistered trademarks are presumed to be distinctive and should be afforded the utmost protection." Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 871 (2d Cir.1986). Similarly, "an unregistered mark is entitled to protection under the Lanham Act if it would qualify for registration as a trademark." Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 381 (2d Cir.2005).
There are four categories of trademarks: (1) generic; (2) descriptive; (3) suggestive; and (4) arbitrary or fanciful. Lois Sportswear, 799 F.2d at 871. Neither party suggests that the Viagra Marks are descriptive or suggestive. A mark that "refers to the genus of which the particular product is a species" is considered generic and is not registrable. Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985): see also Paddington Corp. v. Attiki Imps. & Distribs., Inc., 996 F.2d 577, 583 (2d Cir.1993) (). Marks that are categorized as arbitrary or fanciful, "because their intrinsic nature serves to identify a particular source of a product, are deemed inherently distinctive and are entitled to protection." Two Pesos, 505 U.S. at 768, 112 S.Ct. 2753.
Pfizer owns a valid and incontestable trademark registration for its Viagra mark. Additionally, the Viagra mark is fanciful, because the word "Viagra" was coined specifically for purposes of this trademark and has no meaning outside this context. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 11 n. 12 (2d Cir.1976) (). Accordingly, the Viagra mark is protectable under the Lanham Act. The Viva Viagra mark is arbitrary, because it uses the common Spanish word "viva" in an unfamiliar way to refer to Viagra. See Abercrombie, 537 F.2d at 11 n. 12 (...
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