Playboy Enterprises v. Chuckleberry Pub., Inc.
| Decision Date | 01 April 1981 |
| Docket Number | No. 79 Civ. 3525.,79 Civ. 3525. |
| Citation | 511 F. Supp. 486 |
| 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 |
Darby & Darby, P.C., William F. Dudine, Jr. and David R. Francescani, New York City, for plaintiff.
Goldschmidt, Fredericks, Kurzman & Oshatz, Barry I. Fredericks and Edward Sussman, New York City, for defendants.
In this litigation, the publisher of Playboy magazine seeks to bar defendants from using the name "Playmen" in the title or subtitle of any male sophisticate magazine. An earlier decision, Playboy Enterprises, Inc. v. Chuckleberry Publishing, Inc., 486 F.Supp. 414 (S.D.N.Y.1980) hereinafter cited as "PEI at (page)", preliminarily enjoined defendants from publishing such a magazine under the Playmen name. Beginning with their January 1980 issue, defendants have published their male sophisticate magazine under the mark "Adelina," with the subtitle "America's Edition of Italy's Playmen." The trial of this action commenced on October 24, 1980. Thereafter, plaintiff moved for a permanent injunction against the use of "Playmen" in the title or subtitle of defendants' magazine. In addition, plaintiff requested that the injunction extend to various foreign nations, and it sought punitive damages, attorney fees, and costs. Defendants opposed these requests. This opinion constitutes the Court's findings of fact and conclusions of law.
The details of the dispute between these parties is set forth in the Court's decision on the motion for preliminary relief, PEI at 418-19, and this opinion assumes familiarity with the earlier decision. In capsule, the relevant background is that, in July 1979, defendants announced that they intended to publish a male sophisticate magazine entitled "Playmen" in the United States.1
Upon learning of defendants' plans, plaintiff (the publisher of Playboy) promptly filed its complaint, accusing defendants of trademark infringement and unfair competition. Lanham Trademark Act §§ 32(1), 43(a), 15 U.S.C. §§ 1114(1), 1125(a); N.Y. General Business Law § 368-d (McKinney 1968). After hearings and extensive briefing, the Court informed the parties on September 11, 1979 that it was inclined to issue a preliminary injunction. The opinion, issued on February 6, 1980, found that plaintiff was likely to prevail, that plaintiff would be irreparably harmed by denial of injunctive relief, and that the balance of hardships tipped decidedly in plaintiff's favor. On February 20, 1980, the Court entered an order preliminarily enjoining defendants from "using the word Playmen, or any other mark, word or name which is confusingly similar to Playboy, as the title of a male entertainment magazine or in advertising, promotion, distribution or sale of a male entertainment magazine or related book, calendar or product."
After the Court had indicated its inclination to grant preliminary relief, defendants decided to change the name of Playmen magazine to "Adelina," with the subtitle "America's Edition of Italy's Playmen." Commencing with the January 1980 issue, Adelina has (with some exceptions) been published on a monthly basis. See Plaintiff's Ex. 66A-66I.
Four questions are before the Court: should the preliminary relief be made permanent; should defendants be enjoined from using the term "Playmen" in the subtitle of a male sophisticate magazine; should the injunction apply to defendants' extraterritorial activities; and should plaintiff be awarded punitive damages, attorney fees, and costs?
The prior opinion held that plaintiff was likely to succeed on its claim that entitling defendants' magazine Playmen infringed upon plaintiff's Playboy trademark. PEI at 419-29. After determining that plaintiff's trademark was valid, the Court examined five factors in reaching that conclusion on the infringement issue: the strength of the Playboy mark; the similarity of the Playboy and Playmen marks; the similarity of the respective products; defendants' purpose in adopting the Playmen mark; and the proof of likely confusion from defendants' use of the Playmen mark. The evidence, both testimonial and documentary, submitted by the parties on the motion for permanent injunction confirms — and in several respects strengthens — the Court's preliminary findings.2
The earlier opinion characterized the term "Playboy" as a suggestive, rather than a generic or descriptive, trademark. The mark had acquired great distinctiveness among consumers, moreover, and was entitled to a high degree of protection. Its value was estimated as in excess of $200 million, and the Court found that Playboy magazine was the crucial component of plaintiff's business empire. PEI at 419-21. Defendants have not contested these findings. On the contrary, one of their expert witnesses, John Hayes, acknowledged that the Playboy mark was "very strong." Transcript at 312.
In its prior opinion, this Court observed that common words — if used in a suggestive manner — are accorded protection against similar marks. The Court found that Playmen was (in terms of appearance and suggestion) as close a mark to Playboy as was possible without outright duplication. The Court noted that plaintiff had diligently defended its mark against competing uses, and rejected defendants' claim that, because other magazines use "Play" as part of their titles, customers are accustomed to distinguishing similar marks and are unlikely to be confused by Playmen. The Court found that the other magazines using "Play" in their titles appealed to different markets than did Playboy, and it held that defendants had failed to prove that those magazines had diluted the strength of the Playboy mark. PEI at 421-24.
Defendants have presented no evidence that contradicts these findings. Their witness Hayes, in fact, recognized that the other magazines with "Play" in their titles are readily distinguishable from Playboy and Playmen, largely because of the different consumer groups to which they appeal. Transcript at 289, 299.
The Court found that Playmen was similar to Playboy in terms of content, format, and appearance, and that the differences between the magazines were superficial. Furthermore, other magazines with similar attributes bore marks quite distinctive from Playboy. PEI at 424-25.
One of defendants' principal arguments in opposition to issuance of a permanent injunction is addressed to this issue. Defendants claim "that there is at present no Playmen magazine and that no decision at all has been made as to the content of such a product"; inquiry into product similarity or likely confusion is therefore "a meaningless exercise." Defendants' Post-trial Memorandum at 3.
This contention is neither supported by the evidence nor sound as a matter of law. It is true that defendants — once apprised of the Court's intention to issue a preliminary injunction — did not publish their magazine as Playmen. The reason for the change of title, however, was not defendants' repentance for their infringing deeds, but rather the impending compulsion of this Court. Defendants have stipulated that, "but for this Court's issuance of the preliminary injunction in this action, defendants would now be publishing and distributing Playmen (U.S.) in this country and throughout the English speaking world." Joint Pre-trial Order ¶ IV(10). Similarly, Adelina Tattilo, president of defendant Tattilo Editrice SPA, testified: "If I didn't have this injunction prohibition to publish under this title nowadays, I would have a publication in America which would be called Playmen, but I have the injunction and, therefore, I made another title." Transcript at 236; see id. at 194-95 (similar statement).
This is not a situation in which a defendant promises not to engage in future acts of infringement; rather, defendants here merely claim that they are unsure as to their future plans. Furthermore, the evidence undermines even this modest assertion; defendants' officers were evasive, and in some instances incredible, with respect to future publication of a Playmen magazine. Tattilo avoided answering whether she had decided to publish a magazine named Playmen if the injunction were dissolved; though she initially stated that there "had been a decision as to the contents" of a future Playmen, she immediately changed her answer. Transcript at 196-97. Tattilo was similarly evasive under cross-examination:
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