Playboy Enterprises, Inc. v. Chuckleberry Pub.

• Decision Date: 06 February 1980
• Docket Number: No. 79 Civ. 3525.,79 Civ. 3525.
• Citation: 486 F. Supp. 414
• Parties: PLAYBOY ENTERPRISES, INC., Plaintiff, v. CHUCKLEBERRY PUBLISHING, INC., Tattilo Editrice Spa, Publishers Distributing Corporation, Arcata Publications Group, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

486 F. Supp. 414

PLAYBOY ENTERPRISES, INC., Plaintiff, v. CHUCKLEBERRY PUBLISHING, INC., Tattilo Editrice Spa, Publishers Distributing Corporation, Arcata Publications Group, Inc., Defendants.

No. 79 Civ. 3525.

United States District Court, S. D. New York.

February 6, 1980.

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Darby & Darby, New York City, for plaintiff; William F. Dudine, Jr., David R. Francescani, George H. Wang, New York City, of counsel.

Kenyon & Kenyon, Goldschmidt, Fredericks, Kurzman & Oshatz, New York City, for defendants Chuckleberry Publishing, Inc. and Publishers' Distributing Corp.; Charles R. Brainard, Martin P. Michael, James Galbraith, Barry I. Fredericks, Lois C. Schlissel, New York City, of counsel.

SOFAER, District Judge:

This is an action for alleged trademark infringement and unfair competition arising out of defendants' proposed publication and distribution in the United States of a magazine entitled "PLAYMEN". The plaintiff, Playboy Enterprises, Inc. ("PEI") publishes the well-known male entertainment magazine, "PLAYBOY". The PLAYBOY mark is registered with the United States Patent Office for a variety of uses, including use for a monthly magazine.¹

Defendants announced their intention in July 1979 to publish in the United States a male entertainment magazine under the trademark PLAYMEN. Defendant Tattilo Editrice SPA, an Italian company, currently publishes an Italian language men's entertainment magazine under that name. Defendant Chuckleberry Publishing, Inc., is a New York corporation, which has been granted the exclusive worldwide rights to publish PLAYMEN magazine in the English language. Publishers Distributing Corporation and Arcata Publications Group, Inc. have been retained by Chuckleberry to distribute and print PLAYMEN.

Plaintiff has obtained through discovery and introduced a mock-up of the first issue of the PLAYMEN magazine defendants propose to print and sell. Plaintiff contends that defendants' threatened distribution of this PLAYMEN magazine will infringe plaintiff's property rights in the PLAYBOY mark, and therefore seeks a preliminary injunction pending the outcome of this litigation. Discovery commenced soon after the complaint was filed, on July 6, 1979, and the motion for preliminary injunction was filed on July 23. On August 23, 24 and 25, a hearing was held on the motion, at which several witnesses testified for plaintiff, but none for defendants. Extensive papers were filed by both sides, before and after the hearing. On September 11, 1979, at the request of the parties, and to avoid economic hardship due to uncertainty, the court advised the parties of a firm inclination to grant the injunction, but left the parties free to proceed without judicial restraint.² At this time, on the basis of the findings and conclusions that follow, the motion for a preliminary injunction is granted.

The standard governing motions for preliminary injunctions in this Circuit was recently restated in Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 206-07 (2d Cir. 1979):

A preliminary injunction is proper where the plaintiff establishes possible irreparable harm and either (1) probable success on the merits or (2) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in the movant's favor.

See Selchow & Richter Co. v. McGraw-Hill Book Co., 580 F.2d 25, 27 (2d Cir. 1978); Triebwasser & Katz v. American Telephone & Telegraph Co., 535 F.2d 1356, 1359 (2d Cir. 1976); Mulligan, Preliminary Injunction in the Second Circuit, 43 Brooklyn L.Rev. 831 (1977). Accordingly, this case will be analyzed with respect to, first, plaintiff's chances of success, which necessarily includes some consideration of whether "serious questions going to the merits are presented", and second, the presence of possible irreparable injury, which necessarily includes some consideration of where the "balance of hardships" tips.

A. Likelihood of Success on the Merits

Whether plaintiff is likely to succeed on the merits depends on "the likelihood that the plaintiff's mark is valid, is worthy of protection, and is being or would be infringed by the defendant." W. E. Bassett Co. v. Revlon, Inc., 354 F.2d 868, 871 (2d Cir. 1966). The PLAYBOY mark has been registered for magazine use for well over five years in compliance with Sections 8 and 15 of the Lanham Act. 15 U.S.C. §§ 1058 & 1065. Its registration constitutes conclusive evidence of trademark validity since defendants have not challenged it on any permissible ground. See 15 U.S.C. § 1115(b); Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366 (7th Cir. 1976), cert. denied, 429 U.S. 830, 97 S.Ct. 91, 50 L.Ed.2d 94 (1976).

Whether, and the extent to which, the PLAYBOY mark is "worthy of protection," and would be infringed by PLAYMEN, depends ultimately on plaintiff's ability to show that defendants' planned use of PLAYMEN would be likely to cause public confusion within the meaning of Sections 32(1) and 43(a) of the Lanham Act. Confusion would occur if consumers were led to mistake PLAYMEN for PLAYBOY, or were led to believe that plaintiff actually produced PLAYMEN or otherwise sponsored or approved the proposed magazine. See Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, supra, 604 F.2d at 204-05. Confusion may also take the more subtle but no less significant form of an association of the alleged infringer's mark with plaintiff's, through which the new product gains unfair economic advantage. The latter form of confusion is particularly important in this case.

In considering whether confusion is likely to result from defendants' proposed use of PLAYMEN, a variety of factors must be considered, including: 1) the strength of plaintiff's mark; 2) the degree of similarity between the two marks; 3) the degree of similarity between the products; 4) the purpose of the defendant in adopting its mark; and 5) evidence of confusion. See, e. g., Menley & James Laboratories v. Approved Pharmacy Corp., 438 F.Supp. 1061 (N.D.N.Y.1977).

1. Strength of the PLAYBOY Mark

The strength of a mark refers to its distinctiveness, "or more precisely, its tendency to identify the goods sold under the mark as emanating from a particular, although possibly anonymous, source." McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1131 (2d Cir. 1979). This is a pivotal inquiry, the determination of which will establish a mark's validity and the degree of its protection. The inquiry is two-staged. First, the mark is analyzed as a word or phrase in the abstract, without regard to its actual public acceptance. Then, the mark is tested for "its `origin-indicating' quality, in the eyes of the purchasing public." Id.

A mark is evaluated for distinctiveness in this Circuit by initially classifying it as (1) generic, and therefore invalid, and not registrable as a trademark; (2) descriptive, and therefore subject to registration only if it has become distinctive of the applicant's goods in commerce—i. e. only if it has acquired secondary meaning; (3) suggestive and (4) arbitrary or fanciful, both of which reflect a sufficient degree of inherent distinctiveness so that the mark is entitled to registration without proof of secondary meaning. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).

PLAYBOY is surely not a generic name, see id. at 11-12; nor is it "descriptive" when used to designate a magazine.³ The proper designation of the mark would appear to be "suggestive," in that the word "playboy", evoking the aspirations, if not the life-style, of certain men, suggests to the imagination the nature of the magazine's content. This type of mark is sufficiently strong that it would be "entitled to registration without proof of secondary meaning, as are fully arbitrary or fanciful terms." McGregor-Doniger, Inc. v. Drizzle, Inc., supra, 599 F.2d at 1131.

As the Second Circuit has explained, although its categories relating to strength are useful for analytical purposes, strength "depends ultimately on a mark's distinctiveness, or its `origin-indicating' quality in the eyes of the purchasing public," id. at 1131, or as District Judge Lasker described it in that case, "from its public history," id. at 1132. Thus, even if PLAYBOY were classified as closer to a "descriptive" than to a "suggestive" mark, the ultimate test of its strength is its actual recognition among the consuming public.

The PLAYBOY mark has acquired great distinctiveness among consumers, and is therefore entitled to a high degree of protection. McGregor-Doniger, Inc. v. Drizzle, Inc., supra, 599 F.2d at 1131-32. PLAYBOY magazine is one of the top eleven magazines in terms of circulation in the United States (about 5.5 million copies per month), enjoying $60,000,000 in annual advertising revenues. During the past fiscal year, plaintiff spent approximately $18,000,000 in promoting PLAYBOY. Gross magazine revenues in the United States and Canada now stand at about $189.3 million per year. In addition, numerous editions of PLAYBOY appear throughout the world, many in the languages of the nations in which they are sold. (PX 17)⁴

Plaintiff's witnesses testified without contravention that PLAYBOY magazine is the crucial component of plaintiff's business empire. The high degree of world-wide public recognition achieved by PLAYBOY has enabled plaintiff to sell numerous other products under the PLAYBOY mark, including books and the Playmate calendar. Sales of these items generate annual revenues in excess of $100 million (PX 34). In addition, manufacturers and retailers of still other products have paid plaintiff for the right to use the PLAYBOY mark; annual retail sales of products sold under the mark now exceed $82 million, and appear to be increasing. Defendants made no effort to controvert plaintiff's assertion that the mark itself is...