Primedia Intertec Corp. v. Technology Marketing
| Decision Date | 06 November 1998 |
| Docket Number | No. CIV. A. 98-2384-KHV.,CIV. A. 98-2384-KHV. |
| Citation | 35 F.Supp.2d 809 |
| Parties | PRIMEDIA INTERTEC CORPORATION, Plaintiff, v. TECHNOLOGY MARKETING CORPORATION, Defendant. |
| Court | U.S. District Court — District of Kansas |
William D. Beil, Rouse, Hendricks, German, May & Shank, Kansas City, MO, Baila H. Celedonia, Cowan, Liebowitz, Latman, P.C., New York, NY, Kirk T. May, Rouse, Hendricks, German, May & Shank, Kansas City, MO, Ronald W. Meister, Cowan, Liebowitz, Latman, P.C., New York, NY, for plaintiff.
Amy E. Bauman, Norman Siegel, Curtis E. Woods, Sonnenschein, Nath & Rosenthal, Kansas City, MO, David S. Klinestiver, A. James Richardson, Shannon Stewart, Locke, Reynolds, Boyd & Weisell, Indianapolis, MO, for defendant.
This matter comes before the Court on plaintiff's Motion For Preliminary Injunction (Doc. # 3) filed August 26, 1998. Plaintiff seeks to enjoin defendant from using "the trademark Internet Telephony or any other mark or title that incorporates the term Telephony." For reasons set forth below, the Court finds that plaintiff's motion must be denied.
Plaintiff produces some 85 trade and business-to-business magazines for various industries. Plaintiff and its predecessors have published Telephony, a print magazine for professionals in the public network telecommunications industry, since 1901. As measured by both advertising pages and advertising revenue, Telephony is plaintiff's most successful magazine, and it is the oldest telecommunications magazine to continuously use the same name. Individuals in the telephone, cellular, wireless and cable fields comprise the predominant market for Telephony, which plaintiff provides free of charge to some 65,000 subscribers. Plaintiff owns United States Registration Number 1,921,912 for the mark Telephony.1
Plaintiff also publishes Global Telephony, a magazine for readers outside of North America. Global Telephony has substantially the same editorial mission as Telephony, but it is tailored for foreign readers. Plaintiff owns United States Registration Number 1,940,519 for the mark Global Telephony.
Plaintiff previously published a magazine called Telephony Outside Plant. Plaintiff owns United States Registration Number 1,939,273 for the mark Telephony Outside Plant. Plaintiff does not intend to re-publish Telephony Outside Plant at this time. Also, plaintiff formerly published Telephony's Buyer's Guide, a stand-alone catalogue of data and services. Plaintiff now publishes this guide as a featured insert in Telephony. Plaintiff publishes a number of supplements to Telephony, all bearing the Telephony mark.
Since July of 1996, plaintiff has produced an Internet version of Telephony. This product, which is known in the trade as a "webzine," is titled "Internet Telephony." Plaintiff's universal resource locator ("URL") for its webzine is ww w.internettelephony.com. The web site describes itself as "[y]our online source for timely, comprehensive technology information about today's telecommunications market." Plaintiff's webzine content is virtually identical to that of Telephony, but the webzine also contains material which is not available in Telephony. The webzine title page shows the word "internet" in lowercase italics before the word "Telephony" in thin capital block lettering with the "o" appearing inside a square, all against a dark background.
Plaintiff has advertised its webzine in Telephony, committing ad space that theoretically could have been sold for about $400,000. Plaintiff uses prominent information boxes and advertisements on the contents page and banner advertisements. In addition, Telephony prominently displays the webzine URL on its cover. As it developed its webzine, plaintiff used Telephony to keep readers informed of progress. Plaintiff also promotes its webzine at exhibitions and through direct mail, media kits and traditional marketing methods.
Readership of plaintiff's webzine has grown considerably since its inception in June of 1996. By July of 1998, the webzine received 19,500 daily "hits" (brief contacts with the site), up from 1,100 hits per day in June of 1996. In August 1998, the webzine received 1,500 daily "sessions" (longer visits to the site), while it received only 75 sessions each day in June of 1996. "Internet Telephony" sells advertising space and serves as an independent profit center for plaintiff. Plaintiff anticipates webzine advertising revenue of $100,000 for 1998, increasing to $400,000 in 1999.
In January 1998, plaintiff applied to register the Internet Telephony mark. This application is currently pending. Plaintiff's application describes the webzine as "providing information in the field of the public network telecommunications industry rendered via computer by means of a global computer network."
Defendant has historically published trade magazines for newly developing industries, and it now publishes several business magazines for professionals in the telemarketing, computer telephony and telecommunications fields. In 1982, defendant began publishing Telemarketing, the first magazine devoted to the emerging field of telemarketing. In the early 1990's, defendant began publishing CTI, a magazine concerning the emerging field of computer telephony. Computer telephony is a term which refers to "the adding of intelligence, computer intelligence, and the power of computer network to telecommunications or telephony."
In March of 1996, defendant recognized that Internet telephony ("IT"), a term which describes the Internet transmission of telephony, fax and video communications, is a growing field within the computer telephony industry. IT allows individuals to speak to one another through computers for the cost of a local phone call, thus avoiding long distance charges. Defendant determined that CTI could not feature all relevant information that it wanted to publish for the IT market, and that no other magazines were exclusively addressing IT. Defendant therefore decided to publish an IT magazine, which it aptly named Internet Telephony. When it made this decision, defendant was unaware that plaintiff had a webzine called "Internet Telephony."2 Around October 23, 1997, defendant learned that plaintiff had a webzine called "Internet Telephony." Defendant decided not to change the name of its magazine, however, and proceeded to publish the first issue of Internet Telephony in February of 1998.
On December 19, 1997, defendant rented portions of the Telephony mailing list, to target individuals that would be interested in subscribing to Internet Telephony. In doing so, defendant identified itself not as Internet Telephony but as CTI. Plaintiff rented defendant the list, not knowing that defendant intended to publish Internet Telephony in February 1998.
The cover of Internet Telephony, as published in hard copy, contains the word "Internet" in red in large block lettering directly above the word "Telephony" in black, thin lettering, all against a bright yellow background. In the upper left-hand corner, it also contains defendant's logo. Internet Telephony also has a web site. Its URL (internettelephonymag.com) is published on the cover and on every page of Internet Telephony. That URL takes individuals directly to defendant's company home page, which offers information regarding all of defendant's magazines and products, not just Internet Telephony. Before adopting int ernettelephonymag.com as a URL, defendant searched other available URLs, including internet-telephony.com.
Defendant provided a media kit to market its new magazine. The kit identified telecommunications professionals, local exchange carriers, wireless companies, personal communications systems companies, Internet service providers, and cable companies as the target audience for Internet Telephony. Many of defendant's subscribers in Kansas fall within these categories.
On September 8, 1998, defendant received a registration on the Supplemental Register for Internet Telephony as a trademark for "magazines in the field of telecommunications applications and technologies associated with global computer information network."
Plaintiff has received two e-mails from confused individuals who believe that plaintiff published Internet Telephony. Defendant has not received any comments or inquiries which suggest confusion between plaintiff's products and those of defendant.
The purpose of a preliminary injunction is "to preserve the status quo pending the outcome of the case." Tri-State Generation and Transmission Ass'n. Inc. v. Shoshone River Power, Inc., 805 F.2d 351, 355 (10th Cir.1986). A preliminary injunction is a drastic and extraordinary remedy, and courts do not grant it as a matter of right. Paul's Beauty College v. United States, 885 F.Supp. 1468, 1471 (D.Kan.1995); 11A Charles Alan Wright, Arthur R. Miller & Mary Kay Kane, Federal Practice and Procedure § 2948, at 128-29 & nn. 3, 6-7 (1995). We must deny injunctive relief if the moving party fails to establish any requisite element, Packerware Corp. v. Corning Consumer Products Co., 895 F.Supp. 1438, 1446 (D.Kan. 1995), and the moving party must establish that it is entitled to injunctive relief by clear and unequivocal proof. Penn v. San Juan Hospital, Inc., 528 F.2d 1181, 1185 (10th Cir.1975); Paul's, 885 F.Supp. at 1471.
In order to obtain a preliminary injunction, plaintiff must establish that (1) it will suffer irreparable injury unless the injunction issues; (2) the threatened injury outweighs whatever damage the proposed injunction may cause defendant; (3) the injunction, if issued, will not be adverse to the public interest; and (4) there is a substantial likelihood that plaintiff will eventually prevail on the merits. Tri-State, 805 F.2d at 355 (citing Lundgrin v. Claytor, 619 F.2d 61, 63 (10th Cir.1980)); Heatron, Inc. v. Shackelford, 898 F.Supp. 1491, 1498...
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