Playboy Enterprises, Inc. v. Chuckleberry Pub., Inc., 503

• Decision Date: 03 June 1982
• Docket Number: No. 503,D,503
• Citation: 687 F.2d 563
• Parties: PLAYBOY ENTERPRISES, INC., Plaintiff-Appellee, v. CHUCKLEBERRY PUBLISHING, INC., Publishers Distributing Corporation, Arcata Publications Group, Inc., Defendants, Tattilo Editrice Spa, Defendant-Appellant. ocket 81-7527.
• Court: U.S. Court of Appeals — Second Circuit

Page 563

687 F.2d 563

215 U.S.P.Q. 662

PLAYBOY ENTERPRISES, INC., Plaintiff-Appellee, v. CHUCKLEBERRY PUBLISHING, INC., Publishers Distributing

Corporation, Arcata Publications Group, Inc., Defendants,

Tattilo Editrice Spa, Defendant-Appellant.

No. 503, Docket 81-7527.

United States Court of Appeals,

Second Circuit.

Argued Jan. 20, 1982.

Decided June 3, 1982.

Richard H. Waxman, New York City (Goldschmidt, Fredericks & Oshatz, Barry I. Fredericks, New York City, of counsel), for defendant-appellant.

William F. Dudine, Jr., New York City (Darby & Darby, David R. Francescani, Ethan Horwitz, New York City, of counsel), for plaintiff-appellee.

Before FEINBERG, Chief Judge, and LUMBARD and MANSFIELD, Circuit Judges.

LUMBARD, Circuit Judge:

Tattilo Editrice SPA ("Tattilo SPA"), an Italian corporation which, since 1967, has published in Italy a male sex-oriented magazine entitled "Playmen," appeals from an order of the District Court for the Southern District, Sofaer, J., permanently enjoining its use in the United States of the mark "Playmen" in a title or subtitle for a sex-oriented magazine. Plaintiff Playboy Enterprises, Inc. ("Playboy Enterprises"), publisher of PLAYBOY magazine, brought this action in 1979 under §§ 32(1) and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114(1) and 1125(a), to obtain injunctive relief and punitive damages after Tattilo had licensed defendant Chuckleberry Publishing, Inc. ("Chuckleberry") to publish an English language version of PLAYMEN in the United States. In addition to granting permanent injunctive relief, the district court awarded $5,000 in attorney fees but denied any punitive damages. 511 F.Supp. 486 (S.D.N.Y.1981). We affirm because we agree with the district court's finding of a likelihood of confusion between the marks "Playboy" and "Playmen" as titles to similar sex-oriented magazines, and its further finding that use of "Playmen" in a subtitle of defendants' magazine infringes on plaintiff's mark.

I.

The underlying facts are detailed in Judge Sofaer's two opinions, 486 F.Supp. 414 and 511 F.Supp. 486, and need only brief mention here. In 1967, Tattilo SPA began publishing in Italy a male sophisticate magazine entitled "Playmen." Prior to that time, Tattilo SPA published a similar magazine called "Men." Although the magazine carries the English title of "Playmen" it was written entirely in Italian. In July, 1979, Tattilo SPA announced plans to publish an English language version of PLAYMEN in the United States. Chuckleberry, a New York corporation with offices in New York City, contracted with Tattilo SPA for the exclusive worldwide rights to publish the magazine in the English language. Before Chuckleberry printed the first issue, this suit for injunctive relief was brought by Playboy Enterprises against defendants alleging trademark infringement, 15 U.S.C. § 1114(1), false designation of origin, 15 U.S.C. § 1125(a), unfair competition based on infringement of plaintiff's common law trademark rights, and violations of the New York Anti-Dilution Statute, N.Y.Gen.Bus.L. § 368-d (McKinney's 1969). ¹

Plaintiff Playboy Enterprises, a Delaware corporation based in Chicago, Illinois, has published the well-known male entertainment magazine PLAYBOY since 1953. PLAYBOY is now read by over 5.5 million people in the United States alone and annually generates more than $60 million in advertising revenues. The magazine is sold throughout the world in many foreign languages. Playboy Enterprises has owned the registered trademark "Playboy" for use on a monthly magazine since 1954 and subsequently has registered the same trademark for other uses, including on books. In 1958, Playboy Enterprises registered the trademark "Playboy's Playmate of the Month" for its centerfold feature in PLAYBOY magazine and in 1961 registered the trademark "Playmate" for calendars. As part of its lucrative business, Playboy Enterprises has granted the right to use the "Playboy" mark to manufacturers and retailers of numerous products whose sales exceed $82 million.

After commencing this action, Playboy Enterprises obtained a sample copy of the first issue of PLAYMEN that defendants planned to publish. Arguing that distribution of this PLAYMEN magazine would infringe their property rights in the "Playboy" mark, plaintiff moved for a preliminary injunction. A three day hearing was held before Judge Sofaer at which defendants presented only exhibits. Several weeks after the hearing, while the motion was sub judice, the defendants made a settlement offer to change the name of PLAYMEN magazine to ADELINA with the subtitle "America's Edition of Italy's Playmen" in the hopes of settling the litigation. The defendants asked Judge Sofaer to sanction the use of this new name. Judge Sofaer advised the parties that their request presented an entirely new issue which would have to be litigated, and that he was inclined to issue a preliminary injunction against the use of "Playmen" as a title. He did not at that time address the propriety of any alternative name for defendants' magazine. 486 F.Supp. at 419. Thereafter, Chuckleberry published ADELINA with the subtitle containing the name "Playmen." ²

On February 6, 1980, Judge Sofaer granted a preliminary injunction against defendants' use of the title "Playmen" for its magazine. 486 F.Supp. 414 (S.D.N.Y.1980). In his opinion, he found that the title "Playmen" was likely to cause confusion among consumers for several reasons. First, he said, "Playmen" is a very similar mark to "Playboy" which is a demonstrably strong mark entitled to a high degree of protection. Second, PLAYMEN magazine was similar in form and content to PLAYBOY and both magazines aimed to attract the same market of consumers, to wit, heterosexual adult males. Third, the district court opined that the defendants offered no credible explanation why they adopted a name so similar to "Playboy" other than to trade on PLAYBOY's widespread popularity. The district court determined that three types of consumer confusion were likely to occur if the defendants published and sold PLAYMEN. First, product confusion would likely result because the consumer's decision to purchase these magazines is often ill-informed and impulsive, whether at a newsstand or in checking off a subscription form. Second, confusion as to source was likely even among those consumers who could tell the magazines apart. Finally, the district court felt that PLAYMEN would result in an amorphous type of confusion described as "subliminal or conscious association with plaintiff's well-known name." 486 F.Supp. at 428. Evidence of this subliminal association was found by the district court in defendants' exploitive purpose in using the "Playmen" mark and in the testimony of plaintiff's expert Ronald Scott who explained that PLAYMEN because of its name and likeness to PLAYBOY could be circulated successfully to distributors for a fraction of the advertising costs typically required to start a new magazine.

Rather than appeal the order granting the preliminary injunction, the defendants requested an expedited trial. In the meantime, beginning in January 1980, the defendants published their male sophisticate magazine under the mark "Adelina" with the subtitle "America's Edition of Italy's Playmen." After the trial on the merits in October, 1980, plaintiff moved for a permanent injunction against the use of "Playmen" in either the title or subtitle of defendants' magazine in the United States and elsewhere. Plaintiff also requested punitive damages, legal fees and costs.

In an opinion dated April 1, 1981, Judge Sofaer awarded a permanent injunction and explained that the defendant had failed to controvert any of the findings of confusion between the PLAYMEN and PLAYBOY magazines upon which the preliminary injunction was based. He stated that the evidence at trial confirmed his earlier determination that defendants' purpose in using the "Playmen" title was to trade on plaintiff's mark.

Judge Sofaer then addressed the defendants' use of the "Playmen" mark in the subtitle of its magazine ADELINA. He reasoned that the defendants' purpose in continuing to use "Playmen" even though in a subtitle, was to trade on PLAYBOY's popularity. Although the likelihood of confusion as to source was "not substantial" according to the district court, confusion from "subliminal association" had the potential of becoming as great as if the defendants' magazine was entitled "Playmen." The district court therefore enjoined defendants' use of "Playmen" as a title or subtitle for a magazine in the United States and awarded attorney fees in the amount of $5,000 for fees attributable to the adjudication of the subtitle issue.

II.

To warrant an injunction Playboy Enterprises was required to show at trial that the use of the mark "Playmen" title or subtitle of defendants' magazine would likely cause confusion with PLAYBOY magazine within the meaning of §§ 32(1) and 43(a) of the Lanham Act. In reviewing the district court's conclusion that such a likelihood of confusion exists we must determine whether the district court's findings of fact were clearly erroneous, giving due deference to the trial court's opportunity to judge the credibility of witnesses. Fed.R.Civ.P. 52(a). Of course, to the degree that the determination of likelihood of confusion rests upon a visual comparison of the marks and products themselves, the appellate court is in as good a position as the trial judge to decide the issue. See McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126 (2d Cir. 1979). The "clearly erroneous" standard which governs findings of fact turns on whether a reviewing court has "the definite and firm conviction that a mistake has been committed." United States v. United States Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 542, 92 L.Ed. 746 (1948). On this record we hold that the district court's findings as to the strength of plaintiff's mark; the degree of similarity...