Opinion
01 Civ. 7746 (JGK)
June 22, 2002
OPINION AND ORDER
Plaintiff Ronald B. Brockmeyer brings this action alleging infringement of the registered trademark, "«O»" in violation of §§ 32(1) and 43(a) of the Lanham Act ( 15 U.S.C. § 1114(1) 1125(a)), New York common law regarding unfair competition, and N.Y. Gen. Bus. Law § 368(d). The plaintiff has been using the mark "«O»" in connection with the publication of a magazine featuring sadomasochism and fetish culture. The plaintiff now moves for a preliminary injunction preventing defendants The Hearst Corporation ("Hearst") and Harpo Print LLC ("Harpo") from using the terms "O," "O Magazine," or variations thereof in connection with the publication, distribution, and sale of magazines or other products during the pendency of this action. Hearst has been using these terms in connection with "O The Oprah Magazine," which purportedly covers "360 degrees of a woman's life, guided by the values of Oprah Winfrey."
I
In June, 1994, the plaintiff became the U.S. representative of a magazine (the "Techcom magazine") published by Techcom GmbH, a German company. (Declaration of Dennis H. Cavanaugh, dated Oct. 1, 2000 ("Cavanaugh Decl."), Ex. K ("Brockmeyer Decl.") ¶ 2.) Techcom published Issue 24 of the Techcom Magazine in or around August, 1994. (Cavanaugh Decl., Ex. B.) Like most previous issues of the magazine, it featured a large, centered "« O »" logo on the upper portion of the cover, under the legend "fetish, fashion fantasies" in smaller, capital letters. (Id.)
Techcom subsequently entered bankruptcy proceedings in Germany. (Declaration of Edmund J. Ferdinand, III, dated Nov. 1, 2001 ("Ferdinand Decl."), Ex. B.) On February 7, 1995, Brockmeyer agreed to purchase certain Techcom "identifiers" from the trustee of Techcom's assets. (Id.) The identifiers that were the subject of the transaction included "O," "Nacht der `O'," "Dance `O' Mania," "Vide `O'," "O Fashion," "Fetish, Fashion Fantasies," and others, but the trustee specifically noted that "[i]t [was] not known whether the [i]dentifiers [were] legally protected," and that "there is possibly no right whatsoever to the [i]dentifiers." (Id.) On February 17, 1995, the plaintiff executed an agreement with his parents noting that the plaintiff's parents had loaned the plaintiff a sum of money on June 17, 1993, and stating that "[u]ntil the complete settlement of the liabilities from the loan agreement . . . [the plaintiff] assigns the title to sell the trademarks « O » and LE FER ROUGE to his parents." (Ferdinand Decl., Ex. C ¶ 3.)
Also in February, 1995, Brockmeyer purported to "continue the publication" of the Techcom Magazine by releasing Issue 25. (Brockmeyer Decl. ¶ 3; Reply Decl. of Dennis H. Cavanaugh, dated Nov. 13, 2001 ("Cavanaugh Reply Decl."), Ex. K.) Issue 25 shares the general look of previous issues, although the centered "« O »" logo is somewhat smaller and the legend at the top of the cover was changed to read "the art of fetish, fashion fantasy." (Cavanaugh Reply Decl., Ex. K.) The cover image is of a woman wearing a low-cut dress that appears to be made of rubber or leather. (Id.) Issue 25 includes photography, illustrations, fictional stories, interviews, and reporting largely relating to sadomasochism and "fetish culture." (Ferdinand Decl., Ex. E.)
In August, 1996 (Cavanaugh Reply Decl., Ex. O ("Brockmeyer Reply Decl."), at Ex. G at 1), Brockmeyer published Issue 26 of his magazine, which has a similar cover design to the previous issues, including a large, centered "« O »" mark at the top of the cover, together with the legend "the art of fetish, fashion and fantasy" in capital letters (Ferdinand Decl., Ex. F). With Issue 26, Brockmeyer took over as editor of the magazine (Brockmeyer Decl. ¶ 12), and wrote in an "editor's letter" that his "goal was to build an erotic art magazine, describing the world of fetish, fashion and fantasy, attractive to both sexes. . ." (Ferdinand Decl., Ex. F at 5). The content of the issue is similar to that of Issue 25 in that it consists of a variety of graphical and textual content largely relating to sadomasochism and "fetish culture." (Ferdinand Decl., Ex. F.)
On June 11, 1996, the United States Patent and Trademark Office registered the trademark "« O »" to the plaintiff for "magazines, books and catalogs in the fields of fashion, adult entertainment, adult novelties and videotapes; posters; and calendars . . . ." (Cavanaugh Decl., Ex. A.) Brockmeyer had filed his application for the registration in April, 1995. (Id.) In August, 1996, Brockmeyer entered into an agreement with David May in which Brockmeyer "allow[ed] David May to use the names/trademarks of « O » and R.M. Distribution Ltd., to conduct business for [Brockmeyer] as a manufactures [sic] agent, for a period of 5 years . . . ." (Ferdinand Decl., Ex. I (emphasis in original).) The agreement also provided that May would "be responsible for internet sales publishing, mail order operations, [and] ad sales (except Germany) for all publications released by [Brockmeyer]." (Id.) Brockmeyer and May subsequently found themselves in a dispute over the use of "« O »" and similar marks on the Internet, which resulted in a lawsuit that was ultimately settled by the parties in August, 2001. (Cavanaugh Reply Decl., Ex. B; Cavanaugh Decl., Ex. G.)
Brockmeyer alleges that a planned Issue 27 was ready for printing in February, 1997 (Brockmeyer Reply Decl., Ex. G at 1), and it appears that May prepared a sheet indicating that Issue 27 would in fact be available at that time (Brockmeyer Reply Decl., Ex. H). Brockmeyer alleges that he was unable to release Issue 27 as and when he planned because of difficulties stemming from his dispute with May. (Brockmeyer Reply Decl. ¶¶ 11-12.) Brockmeyer further alleges that he had to "start the company all over again" beginning in March, 1997, and that he began to cooperate with another person on the development of Issue 27 in August, 1998. (Brockmeyer Reply Decl., Ex. H at 2-3.) However, Brockmeyer did not publish another issue of his magazine until June, 2001. (Id. at 4.)
Defendant Hearst and Oprah Winfrey, a well-known media personality, began working together in June, 1999 to develop a magazine (the "Hearst Magazine") "dedicated to improving women's lives." (Declaration of Ellen Levine, dated Oct. 31, 2001 ("Levine Decl."), at ¶¶ 3-4.) The title of the magazine was selected by a creative team after consultation with focus groups. (Id. at ¶¶ 6-7.) In February, 2000, defendant Harpo applied for a trademark registration for the mark "O The Oprah Magazine." (Ferdinand Decl., Ex. S.) "O" is reportedly one of Winfrey's nicknames. (Ferdinand Decl., Ex. Q; Levine Decl. ¶ 5.) On or about April 17, 2000 (Cavanaugh Decl., Ex. I), pursuant to a licensing arrangement with Harpo (Ans. ¶ 5(b)), Hearst published the first issue of the Hearst Magazine, which was dated "May/June 2000" (Declaration of Amy Gross, dated Oct. 31, 2001 ("Gross Decl."), Ex. A). Beginning with its third issue, dated September, 2000, the defendants have published the Hearst Magazine monthly. (Gross Decl., Ex. A Ex. B at 309.) In August, 2001, the Patent and Trademark Office approved Harpo's registration of "O The Oprah Magazine" for publication, after Harpo's application was amended to indicate that it related to "[w]omen's lifestyle magazines" and electronic publications "covering 360 degrees of a woman s life, [g]uided by the values of Oprah Winfrey . . . ." (Ferdinand Decl., Ex. T.)
The defendants have provided the Court with reproductions of seventeen Hearst Magazine covers and one complete issue of that magazine. (Gross Decl., Exs. A B.) Each cover features a colored rectangle in the upper left hand corner, within which there is a large letter O and, below that, the phrase "The Oprah Magazine," in capital letters, on two lines. (Gross Decl., Ex. A.) The letter O and the word "Oprah" are printed in one color or shade, while the remaining words ("The" and "Magazine") are printed in another, less prominent, color or shade. (Id.) Each cover features a photograph of Oprah Winfrey. (Id.) A review of the covers and issue provided reveals that along with celebrity interviews and articles on fashion, beauty, and health, each issue of the Hearst Magazine includes articles devoted to a certain theme, such as success, generosity, trusting oneself, and "stepping out of the box." (Id. Ex. A Ex. B.) The Hearst Magazine's editor states that two articles "about sex" appeared in the first 19 issues of the magazine. (Gross Decl. ¶ 7.) The editor also states that "there is no present plan to change the current layout of the logo or to have someone other than Oprah [Winfrey] appear on the cover." (Gross Decl. ¶ 4.)
On or about May 10, 2000, Brockmeyer wrote to Hearst, stating that he was "the publisher of `O' Magazine and the US trademark holder of `O', Reg. No. 1, 979,482 for magazines, books and catalogues etc." (Brockmeyer Decl., Ex. A.) Brockmeyer demanded that Hearst cease and desist from any further advertisement, promotion or marketing of the Hearst Magazine. (Id.) Brockmeyer provided the defendants' counsel with a copy of Issue 26 of his magazine in September, 2000. (Brockmeyer Decl., Ex. B.) In or around July, 2001, the plaintiff published Issue 27 of his magazine. (Brockmeyer Reply Decl., Ex. G at 4.) On August 20, 2001, the plaintiff filed the Complaint in this action. The plaintiff filed this motion for a preliminary injunction on October 1, 2001.
Thereafter, in approximately November, 2001, the plaintiff published Issue 28 of his magazine. (Cavanaugh Reply Decl., Ex. E.) Issues 27 and 28 of Brockmeyer's magazine are similar to previous issues, with a cover featuring a large, centered "« O »" logo and the legend "the art, the fashion, the fantasy" in capital letters. (Cavanaugh Reply Decl., Exs. C D.) The lettering of the legend is, however, considerably smaller on Issue 28's cover. (Cavanaugh Reply Decl., Ex. D.) In addition, the overall content of Issues 27 and 28 is less sexually explicit than previous issues, although there is still extensive nudity and fetish-oriented content, and graphic material continues to predominate over text. (Cavanaugh Reply Decl., Exs. C D.) Both covers feature scantily clad women dressed in leather. (Id.)
II
The standards that govern the issuance of a preliminary injunction are well established. "[A] party seeking a preliminary injunction must demonstrate (1) the likelihood of irreparable injury in the absence of such an injunction, and (2) either (a) likelihood of success on the merits or (b) sufficiently serious questions going to the merits to make them a fair ground for litigation plus a balance of hardships tipping decidedly toward the party requesting the preliminary relief." Federal Express Corp. v. Federal Espresso, Inc., 201 F.3d 168, 173 (2d Cir. 2000)
III
In a Lanham Act case, the likelihood of irreparable injury is usually presumed if the plaintiff can show a likelihood of success on the merits. See Fun-Damental Too, Ltd. v. Gemmy Indust. Corp., 111 F.3d 993, 999 (2d Cir. 1997); Tough Traveler, Ltd. v. Outbound Prods., 60 F.3d 964, 967 (2d Cir. 1995); Tactica Int'l, Inc. v. Atlantic Horizon Int'l, Inc., 154 F. Supp.2d 586, 604 (S.D.N.Y. 2001). However, "any such presumption of irreparable harm is inoperative if the plaintiff has delayed either in bringing suit or in moving for preliminary injunctive relief," Tough Traveler, 60 F.3d at 968, unless the plaintiff is unaware of the severity of the infringement or the delay is attributable to the plaintiff's good faith efforts to investigate the infringement, Tom Doherty Assocs., Inc. v. Saban Entm't, Inc., 60 F.3d 27, 39 (2d Cir. 1995). See also Tactica, 154 F. Supp.2d at 604; Marcy Playground, Inc. v. Capitol Records, Inc., 6 F. Supp.2d 277, 281 (S.D.N.Y. 1998). Indeed, unwarranted delay "may, standing alone, preclude the granting of preliminary injunctive relief, because the failure to act sooner undercuts the sense of urgency that ordinarily accompanies a motion for preliminary relief and suggests that there is, in fact, no irreparable injury." Tough Traveler, 60 F.3d at 968 (punctuation omitted) (citing Majorica, S.A. v. R.H. Macy Co., 762 F.2d 7, 8 (2d Cir. 1985) (per curiam) and Citibank, N.A. v. Citytrust, 756 F.2d 273, 277 (2d Cir. 1985)); see Tactica, 154 F. Supp.2d 604.
In this case, the plaintiff's delay in filing suit and in seeking injunctive relief is sufficient ground for the denial of his motion for a preliminary injunction. Assuming that the plaintiff discovered the existence of the Hearst Magazine on May 10, 2000 (the same day that he wrote to Hearst), more than fifteen months passed before he filed his Complaint on August 20, 2001. He did not move for a preliminary injunction until October 1, 2001, six weeks later. The plaintiff has not offered any explanation for the delay. The severity of the infringement, if any, was obvious when the plaintiff first became aware of the Hearst Magazine. The record also is devoid of any evidence that the plaintiff spent the time between May 10, 2000 and October 1, 2001 investigating the alleged infringement.
The plaintiff's claim that irreparable injury is likely in the absence of a preliminary injunction is completely undercut by the fact that he waited more than sixteen months, while the defendants were producing issue after issue of their allegedly infringing magazine, to file for such an injunction. See The Media Group, Inc. v. Ontel Prods. Corp., No. CIVA300CV2034, 2001 WL 169776, at *4 (D. Conn. Feb. 14, 2001) (delay of four months in bringing suit and six months in seeking injunction "demonstrates that the harm suffered . . . was not irreparable"); Worldwide Sport Nutritional Supplements, Inc. v. Five Star Brands, Inc., 80 F. Supp.2d 25, 34-35 (N.D.N.Y. 1999) (seven month delay in seeking injunction in trade secret case sufficient to defeat motion for preliminary injunction); Ivy Mar Co., Inc. v. C.R. Seasons Ltd., 907 F. Supp. 547, 551 (E.D.N.Y. 1995) (ten month delay in seeking injunction justified denial of motion); see also Citibank, 756 F.2d at 276-77 (citing nine-month delay in seeking injunction, together with other factors, in reversing grant of preliminary injunction); Majorica, 762 F.2d at 8 (reversing grant of preliminary injunction where plaintiff was aware of alleged infringement for several years prior to motion and approximately seven months passed between commencement of suit and filing of motion).
Because the plaintiff's own actions lead to the conclusion that there is no likelihood of irreparable injury if a preliminary injunction does not issue, the motion for a preliminary injunction is denied.
IV
Even if the plaintiff had promptly filed his motion for a preliminary injunction, it would not be granted because the plaintiff has not demonstrated either a likelihood of success on the merits of his claim or sufficiently serious questions going to the merits of his claim plus a balance of hardships tipping in his favor.
A
Section 32(1) of the Lanham Act provides protection against the use in commerce of a "reproduction, counterfeit, copy, or colorable imitation of a registered mark" and its application to "labels, signs, prints, packages, wrappers, receptacles or advertisements" where "such use is likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1114 (1). Section 43(a) protects both registered and unregistered marks against the use of any word, term, name, symbol or device that "is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . ." 15 U.S.C. § 1125 (a). Thus, "[i]n order to succeed a plaintiff does not have to show necessarily that consumers would believe that the defendant's goods or services are from the same source as those of the plaintiff." Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955, 960 (2d Cir. 1996).
To establish a trademark infringement claim under either of these provisions, a plaintiff must show that it has a valid mark that is entitled to protection and that the defendant's actions are likely to cause confusion with the plaintiff's mark. See The Morningside Group Ltd. v. Morningside Capital Group, L.L.C., 182 F.3d 133, 137 (2d. Cir. 1999); Time, Inc. v. Petersen Publ'g Co., L.L.C., 173 F.3d 113, 117 (2d Cir. 1999); Sports Auth., 89 F.3d at 960; Caché, Inc. v. M.Z. Berger Co., No. 99 Civ. 12320, 2001 WL 38283, at *3 (S.D.N.Y. Jan. 16, 2001).
1
According to Section 7(b) of the Lanham Act, a certificate of registration of a trade or service mark issued by the United States Patent and Trademark Office is "prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate . . . ." 15 U.S.C. § 1057 (b).
A registered mark may be forfeited by abandonment. See Silverman v. CBS Inc., 870 F.2d 40, 46 (2d Cir. 1989). Section 45 of the Lanham Act provides that
[a] mark shall be deemed to be "abandoned" . . . [w]hen its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. `Use' of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.15 U.S.C. § 1127. In determining whether three years of "nonuse" have occurred, thus constituting prima facie evidence of abandonment, "the motive for cessation of use is irrelevant." Stetson v. Howard D. Wolf Assocs., 955 F.2d 847, 851 (2d Cir. 1992) (citing Silverman, 870 F.2d at 47). "Challenging infringing uses" does not constitute use; rather, a mark's proprietor must use the mark in a manner "sufficient to maintain the public's identification of the mark with the proprietor." Stetson, 955 F.2d at 851 (citation and punctuation omitted.) In determining whether a trademark holder's actions constitute use of the mark, "a court must look to the trademark holder's occupation or business." Id. (noting that if singing group ceased touring, making and releasing records, and receiving royalties, that would constitute non-use); see also Columbia Pictures Indus. v. Screen Gems Film Co., Inc., No. 99 Civ. 4401, 2001 WL 1254838, at *6 (S.D.N.Y. Oct. 18, 2001). "Minor activities and worthy motives for non-use do not alter the analysis which requires use of the mark to avoid abandonment." Stetson, 955 F.2d at 851; see also Pilates, Inc. v. Current Concepts, Inc., 120 F. Supp.2d 286, 310 (S.D.N.Y. 2000).
In this case, the plaintiff registered the "« O »" mark for use in magazines and other publications, and in Issue 26, which was published in August, 1996, he explained to readers, "[w]hen I became the publisher of « O » my goal was to build an erotic art magazine . . . with high paper quality and excellent printing at a reasonable price." (Ferdinand Decl., Ex. F at 5.) Issue 26 indicated that "« O » is published quarterly" and that "Issue 27 will appear in September 1996." (Id. at 9.) However, when the defendants first published the Hearst Magazine, in April, 2000, Issue 27 still had not appeared, and nearly four years had passed since the release of Issue 26. (Brockmeyer Reply Decl., Ex. G.) There is no evidence that any magazines or other products bearing the "« O »" mark were sold or distributed by the plaintiff between the fall of 1996 and April, 2000. There is evidence of extensive litigation over the mark, but absent special circumstances, suing to enforce a mark does not constitute use of that mark. See Stetson, 955 F.2d at 851-52.
In an effort to avoid the presumption of abandonment in § 45, the plaintiff states that he "continued to promote [his] magazine on [his] Internet web sites, and continued to plan for and prepare the next issue of [his] magazine" in the interim. (Brockmeyer Decl. ¶ 9.) The plaintiff's planning and preparation, of course, is not obvious to the public, and therefore it cannot maintain the public's identification of the mark with the mark's proprietor. As for the websites, the plaintiff has produced no evidence of the content or readership of those sites, or of any sales, subscriptions, or other commercial benefit generated by them. On the current record, the websites appear to constitute a "minor activity" relative to the plaintiff's stated business objective of publishing a quarterly erotic art magazine on high-quality paper, or even relative to the broader uses ("magazines, books, and catalogs in the fields of fashion, adult entertainment, adult novelties and videotapes; posters; and calendars" (Cavanaugh Decl., Ex. A)) for which the plaintiff received his trademark registration.
A June 15, 2000 letter from the defendants' counsel to the plaintiff (Cavanaugh Decl., Ex. D) mentions that the plaintiff's website displayed the covers of Issues 25 and 26, but offers no further information about the website and, in any event, only reflects the site's content after the expiration of the three-year period provided in § 25, and after the defendants began publishing the Hearst Magazine.
"A proprietor who temporarily suspends use of a mark can rebut the presumption of abandonment by showing reasonable grounds for the suspension and plans to resume use in the reasonably foreseeable future when the conditions requiring suspension abate." Silverman, 870 F.2d at 47; see also Saratoga Vichy Spring Co., Inc. v. Lehman, 625 F.2d 1037, 1044 (2d Cir. 1980) (on summary judgment, "objective facts can satisfactorily explain non-use to the point where an inference of intent to abandon is unwarranted."). On its face, there is nothing about Brockmeyer's litigation with May that would make it reasonable grounds for the suspension of the publication of Brockmeyer's magazine; indeed, Brockmeyer consistently argued that he was the owner of the "« O »" mark in that litigation.
Perhaps, at trial, the plaintiff could present evidence that would overcome a defense of abandonment by proving that in April, 2000, the plaintiff was making sufficient use of the "« O »" mark to avoid the presumption of abandonment in § 45, or that he had an intent to resume use of the "« O »" mark in the reasonably foreseeable future. He has not, thus far, shown that he is likely to be able to do so. Therefore, he has failed to demonstrate a likelihood of success on his claims.
2
If the plaintiff were able to prove that he had not abandoned his registered mark, he would still have to show that "numerous ordinary prudent purchasers are likely to be misled or confused as to the source of the product in question because of the entrance in the marketplace of the defendant's mark," Gruner + Jahr USA Publishing v. Meredith Corp., 991 F.2d 1072, 1077 (2d Cir. 1993); see also Morningside Group, 182 F.3d at 138; Estee Lauder Inc. v. Gap, Inc., 108 F.3d 1503, 1510 (2d Cir. 1997); Sports Auth., 89 F.3d at 960; Arrow Fastener Co., Inc. v. Stanley Works, 59 F.3d 384, 390-91 (2d Cir. 1995), "or that there may be confusion as to [the] plaintiff's sponsorship or endorsement of the junior mark." Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 502 (2d Cir. 1996); see also Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 204-05 (2d Cir. 1979). Proof of actual confusion is not necessary. See Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1227 (2d Cir. 1987). However, proof of actual confusion is probative of a likelihood of confusion. See Morningside Group, 182 F.3d at 141.
The plaintiff alleges that there is a likelihood of both forward confusion and reverse confusion. Forward confusion is the traditional form of confusion in which the junior user uses the mark to sell goods or services based on the misperception that they originate with the senior user. See Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 740 (2d Cir. 1994); Sunenblick v. Harrell, 895 F. Supp. 616, 625 (S.D.N.Y. 1995), aff'd, 101 F.3d 684 (2d Cir. 1996). "Reverse confusion exists when a subsequent user selects a trademark that is likely to cause consumers to believe, erroneously, that the goods marketed by the prior user are produced by the subsequent user." Lang v. Retirement Living Publishing Co., Inc., 949 F.2d 576, 583 (2d Cir. 1991); see also Sterling Drug, 14 F.3d at 741; Trouble v. Wet Seal, Inc., 179 F. Supp.2d 291, 296 (S.D.N.Y. 2001); Trustees of Columbia Univ. v. Columbia/HCA Healtheare Corp., 964 F. Supp. 733, 743 (S.D.N.Y. 1997). Reverse confusion also "recognizes the danger that a junior user's products may tarnish the image of the senior user's products, or that consumers may view the senior user as an unauthorized infringer of the junior user's products, thus injuring the senior user's reputation and impairing its good will." Becoming, Inc. v. Avon Products, Inc., No. 01 Civ. 5863, 2001 WL 930794, at *9 (S.D.N.Y. Aug. 15, 2001) (citations and punctuation omitted) (citing Banff, Ltd. v. Federated Dep't Stores, Inc., 841 F.2d 486, 490 (2d Cir. 1988) and Plus Products v. Plus Discount Foods, Inc., 722 F.2d 999, 1003-04 (2d Cir. 1983)); see W.W.W. Pharm. Co. v. Gillette Co., 984 F.2d 567, 571 (2d Cir. 1993); Sunenblick, 895 F. Supp. at 625-26 (collecting cases)
In Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961), the Court of Appeals for the Second Circuit set forth eight non-exclusive factors that courts are to consider when determining whether a likelihood of confusion exists. Those factors are: 1) the strength of the plaintiff's mark; 2) the similarity of the plaintiff's and the defendants' marks; 3) the competitive proximity of the products; 4) the likelihood that the plaintiff will "bridge the gap" and offer a product like the defendants'; 5) actual confusion between products; 6) good faith on the defendants' part; 7) the quality of the defendants' product; and 8) the sophistication of buyers. See Polaroid, 287 F.2d at 495; see also Estee Lauder, 108 F.3d at 1510; Sports Auth., 89 F.3d at 960-65; Hormel Foods, 73 F.3d at 502-05. The decision as to whether a mark infringes requires a "comprehensive analysis of all the relevant facts and circumstances." Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 968 (2d Cir. 1981). The Court of Appeals for the Second Circuit has instructed that:
[T]he Polaroid factors are not, of course, "exclusive" and should not be applied "mechanically." No single factor is dispositive, and cases may certainly arise where a factor is irrelevant to the facts at hand. But it is incumbent upon the district judge to engage in a deliberate review of each factor, and, if a factor is inapplicable to a case, to explain why. The steady application of Polaroid is critical to the proper development of trademark law, for it is only when the Polaroid factors are applied consistently and clearly over time that the relevant distinctions between different factual configurations can emerge.
Arrow Fastener, 59 F.3d at 400 (citations omitted). When the likelihood of confusion is in doubt, the question will be resolved in favor of the senior user. See Telechron, Inc. v. Telicon Corp., 198 F.2d 903, 909 (3rd Cir. 1952); E.I. DuPont de Nemours Co. v. Yoshida Int'l, Inc., 393 F. Supp. 502, 510 (E.D.N.Y. 1975); Lambert Pharmacal Co. v. Bolton Chem. Corp., 219 F. 325, 326 (S.D.N.Y. 1915) (Hand, J.); see also Caché, 2001 WL 38283 at *5-6
(a)
The "strength" of a mark is a measure of "`its tendency to identify the goods [or services] sold under the mark as emanating from a particular, although possibly anonymous, source.'" Sports Auth., 89 F.3d at 960-61 (alteration in original) (quoting McGregor-Doniger Inc. v. Drizzle, Inc., 599 F.2d 1126, 1131 (2d Cir. 1979)). In gauging a mark's strength, a court must consider the inherent distinctiveness of the mark along with the mark's distinctiveness in the marketplace. See Time, 173 F.3d at 118; W.W.W. Pharm., 984 F.2d at 572.
Four categories of marks indicate increasing inherent distinctiveness: (1) generic; (2) descriptive; (3) suggestive; and (4) arbitrary or fanciful. See Estee Lauder, 108 F.3d at 1508-09; Sports Auth., 89 F.3d at 961. Arbitrary or fanciful are sometimes described as separate categories. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). "A generic term is a common name . . . that describes a kind of product." Gruner + Jahr, 991 F.2d at 1075. A descriptive mark is "one that tells something about a product, its qualities, ingredients or characteristics." Id. at 1076. A suggestive mark suggests the product, though it may take imagination to grasp the nature of the product. Id. An arbitrary mark has an actual dictionary meaning, but that meaning does not describe the product; a fanciful mark is a made-up name. See id. at 1075-76; Jordache Enterprises, Inc. v. Levi Strauss Co., 841 F. Supp. 506, 515 (S.D.N.Y. 1993). Classification of a mark is a question of fact. See Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1039 (2d Cir. 1992); see also Caché, 2001 WL 38283 at *4.
The defendants contend that the "« O »" mark invokes "The Story of O," "a well-known sexually-explicit novel in which a young woman named `O' is introduced to sadomasochism in order to `prove her love' to her lover." (Def. Mem. at 12.) The plaintiff concedes that the mark was originally "slightly" suggestive of "The Story of O" (Pl. Mem. at 9), but claims that he purchased the mark because of "the recogntion of « O » as a fetish fashion magazine and the simplicity and directness of a single letter as a trademark and title for a magazine." (Brockmeyer Decl. ¶ 12). It would take a fair amount of imagination to infer the nature of the magazine from the weak association with between the "« O »" mark and "The Story of O." Because the « O » mark is somewhat suggestive, but is more accurately characterized as arbitrary or fanciful, it is inherently a distinctive mark.
The Court must, however, also consider the distinctiveness of the "« O »" mark in the marketplace. See Oxford Indus., Inc. v. JBJ Fabrics, Inc., No. 84 Civ. 2505, 1988 WL 9959, at *4 (S.D.N.Y. Feb. 2, 1988) ("A mark can be conceptually strong (by being arbitrary or fanciful) and at the same time be commercially weak if the mark lacks significance in the market place for identifying the origin of goods."). Only 1,892 copies of Issue 25, and 15,278 copies of Issue 26, were distributed in the United States. (Brockmeyer Reply Decl., Ex. D.) Total sales amounted to 947 and 9,272 copies, respectively. (Id.) In addition, the plaintiff's magazine had not been published for nearly four years when the defendants released their magazine. There is evidence that, after the Hearst Magazine was launched, the plaintiff released approximately 12,000 copies of Issue 27 and 13,500 copies of Issue 28 of his magazine, but there is no indication of sales of those issues. (Declaration of Edward J. Dietze, dated Nov. 13, 2001 ("Dietze Decl."), Exs. A-C.) The extremely narrow distribution of the plaintif's magazine and the length of time for which the magazine was absent from the marketplace suggests that even though the "« O »" mark is conceptually strong, it is a weak mark overall. See C.L.A.S.S. Promotions, Inc. v. D.S. Magazines, Inc., 753 F.2d 14, 18 (2d Cir. 1985) (suggestive mark weak where magazine had been published for "only" five years, had distributed 150,000 copies in a previous year, and there was no evidence that the mark was associated in the public's mind with the magazine or its publisher).
Because the evidence on this motion indicates that the plaintiff's mark is a weak one, this Polaroid factor weighs against him.
Some opinions suggest that in a reverse confusion case, it is appropriate to consider the strength of the junior user's mark, because the essence of such a claim is that the junior user overpowers the senior user's mark. See AH Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 231 (3d Cir. 2000); Dreamwerks Prod., Inc. v. SKG Studio, 142 F.3d 1127, 1130 n. 5 (9th Cir. 1998); Sunenblink, 895 F. Supp. at 627-28; J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:10 (4th ed.); see also Banff, 841 F.2d at 491-92 (alluding to comparison of senior and junior user's marks in determining strength of senior user's mark); but cf. W.W.W. Pharm., 984 F.2d at 573 (examining strength of senior user's mark in reverse confusion case, without discussing possibility that strength of junior user's mark is relevant)-; ImOn, Inc. v. ImaginOn, Inc., 90 F. Supp.2d 345, 351 (S.D.N.Y. 2000) (same); Columbia, 964 F. Supp. at 744-45 (same).
The parties agree that the defendants' mark is a strong one. Thus, if it were necessary to evaluate the strength of the junior user s mark in this case, the first factor in the Polaroid analysis would weigh in the plaintiff's favor. However, that would not change the Court's ultimate conclusion on likelihood of consumer confusion, once all the factors were considered.
(b)
In considering the degree of similarity between the marks, a court should address "two key questions: (1) whether the similarity between the two marks is likely to cause confusion and (2) what effect the similarity has upon prospective purchasers. In deciding whether the marks are similar as used, [a court does] not look just at the typewritten and aural similarity of the marks, but how they are presented in the marketplace." Sports Auth., 89 F.3d at 962 (citation omitted).The Hearst Magazine and the plaintiff's magazine both feature the letter "O" prominently on their covers, in a similar typeface and size. In addition, both magazines could be referred to verbally as "O Magazine," and the Hearst Magazine uses an "O," without the words "The Oprah Magazine," as a mark at various points in the magazine's contents and promotional materials (Gross Decl., Ex. B; Cavanaugh Reply Decl., Ex. I). However, the plaintiff's publications do not use the letter "O" alone; it is always surrounded with guillemets so that it appears as "« O »" (as it does in the plaintiff's trademark registration). In addition, the "« O »" mark is centered on the cover of the plaintiff's magazine and appears in conjunction with a legend which, although there are some differences between issues, consistently invokes "fashion" and "fantasy." (Cavanaugh Reply Decl., Exs. C, D, K.) In contrast, the defendants place an "O," without guillemets, in the upper left-hand corner of the cover, where it is accompanied by the words "The Oprah Magazine"; and the covers of the Hearst Magazine depict Oprah Winfrey. (Gross Decl., Ex. A.)
The fact that a similar "O" appears at the core of both marks means that there is a similarity between the marks at issue in this case, but the plaintiff's use of guillemets and the differences in cover layouts, photos, and legends tend to differentiate the marks when viewed in context. See C.L.A.S.S., 753 F.2d at 18 (differing layouts, design, legends, and logotype on magazine covers reduce the potential for confusion of the marks). Therefore, this factor weighs in favor of the plaintiff, but only slightly.
(c)
In considering the proximity of the products, a court should "consider whether the two products compete with each other." W.W.W. Pharm., 984 F.2d at 573. The focus of the product proximity inquiry is "the likelihood that customers may be confused as to the [s]ource of the products, rather than as to the products themselves . . . ." McGregor-Doniger, 599 F.2d at 1134; see also Arrow Fastener, 59 F.3d at 396. In examining this factor a court should compare all aspects of the products, including price, style, intended uses, target clientele, typical distribution channels, and others. See Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F. Supp.2d 305, 316 (S.D.N.Y. 2000). Editorial content is a relevant consideration when evaluating the proximity of publications. See C.L.A.S.S., 753 F.2d at 18; Inc. Publ'g Corp. v. Manhattan Magazine, Inc., 616 F. Supp. 370, 385 (S.D.N.Y. 1985), aff'd, 788 F.2d 3 (2nd Cir. 1986).
The publications at issue here differ greatly. The plaintiff's publication costs more than twice as much as the defendants', even without taking subscription discounts into account. The Hearst Magazine targets a mass market, with a circulation of 1.9 million copies eighteen months after its launch (Ferdinand Decl., Ex. X), while the plaintiff's magazine has only a small fraction of that volume. Despite the plaintiff's statements that he "seeks to present fetishism to a mainstream readership" (Ferdinand Decl., Ex. F at 9) and, more recently, that he is focusing the magazine on art and fashion (Brockmeyer Decl. ¶ 10), it does not seem likely that he would be able to prove any congruence between his magazine's audience and that of the Hearst Magazine. In addition, although some retail outlets might carry both magazines, the magazines are unlikely to appear in physical proximity to each other at such outlets. See Sunenblick, 895 F. Supp. at 629 (where record labels had differing content, their products were likely to be sold in separate sections of record stores, making confusion unlikely.) Indeed, the defendants indicate that at the one retail outlet they could find in the New York City metropolitan area that carried the plaintiff's magazine, the plaintiff's magazine was displayed some forty-five feet away from the Hearst Magazine, in a section of the store devoted to adult-oriented publications. (Declaration of Thomas F. Freeman, dated Oct. 31, 2001 ("Freeman Decl."), ¶¶ 4-6.)
Most importantly, the editorial content of the two magazines is completely dissimilar. The Hearst Magazine consists largely of text devoted to different aspects of women's lives, and its "stated mission is to help women lead better lives and achieve a `sense of balance and wholeness' by focusing on the inner-self, rather than a woman's exterior." (Gross Aff. ¶ 5.) The plaintiff's magazine consists largely of erotic and fetishistic imagery, together with some text relating to that imagery. It is virtually impossible to find even a single image or article from the plaintiff's magazine that would not be jarringly out of place in the Hearst Magazine, and vice versa. It is plain that these two products do not compete with each other. The proximity factor weighs strongly in favor of the defendants.
(d)
"Bridging the gap refers to the `senior user's interest in preserving avenues of expansion and entering into related fields.'" Hormel Foods, 73 F.3d at 504 (quoting C.L.A.S.S., 753 F.2d at 18). This factor involves a determination of the likelihood that the plaintiff will enter the defendants' business or of the average customers' perception that the plaintiff would enter the defendants' market. See Sports Auth., 89 F.3d at 963. "In the case of magazines, the senior user must present evidence that it intends to publish a magazine `comparable' to that of the junior user." Inc. Publ'g, 616 F. Supp at 385 (quoting C.L.A.S.S., 753 F.2d at 18).
The plaintiff has not presented evidence that he intends to publish a magazine comparable to the Hearst Magazine. At most, he has presented evidence suggesting that he intends to produce an art and fashion magazine "for a more general audience . . . while not losing the old readership." (Brockmeyer Reply Decl. ¶ 4(b).) An art and fashion magazine designed to appeal to the current readership of the plaintiff's magazine would still be a profoundly different magazine from the women's lifestyle magazine that the defendants publish. The plaintiff has shown no likelihood that he will enter the defendants' business or that an average consumer would think it likely that he could do so. Thus, this factor weighs in favor of the defendants.
(e)
"For purposes of the Lanham Act, actual confusion means `consumer confusion that enables a seller to pass off his goods as the goods of another.'" Sports Auth., 89 F.3d at 963 (quoting W.W.W. Pharm., 984 F.2d at 574 (quotation and citation omitted)). There is no evidence of any actual confusion in this case, and the plaintiff has not shown that he will likely be able to produce such evidence. This factor weighs in favor of the defendants.
(f)
Bad faith is shown by demonstrating that the "defendants adopted [their] mark with the intention of capitalizing on [the] plaintiff's reputation and goodwill and any confusion between his and the senior user's product." Arrow Fastener, 59 F.3d at 397 (quoting Lang, 949 F.2d at 583) (punctuation omitted). The plaintiff avers that the defendants must have been attempting to trade on the plaintiff's reputation and goodwill when they chose the title of their magazine, but there is credible evidence that the defendants chose that title because of its relationship to Oprah Winfrey and because it tested well in focus groups. (Levine Decl. ¶¶ 5-6.) Given the small circulation of the plaintiff's magazine and the fact that the magazine had not been published for years when the focus groups were consulted, it is highly improbable that the focus groups opinions were shaped by any prior exposure to the plaintiff's mark. It is also difficult to conceive of why the defendants would have sought to capitalize on the plaintiff's reputation and goodwill when any reputation or goodwill the plaintiff might have had would have related to a market completely different from the one the defendants were planning to enter. Therefore, this factor favors the defendants.
(g)
The analysis of the quality of the defendants' product "is primarily concerned with whether the senior user's reputation could be jeopardized by virtue of the fact that the junior user's product is of inferior quality." Arrow Fastener, 59 F.3d at 398. In addition, if the plaintiff's goods and the defendants' goods are of comparable quality, that fact may increase the likelihood of confusion. Morningside Group, 182 F.3d at 142. The magazines at issue here are of comparable quality in terms of their paper, printing, and binding. Therefore, the plaintiff's reputation is not harmed by the existence of the defendants' use of an "O" on their publication. However, the similarity in quality between the publications may somewhat increase the likelihood of confusion. Thus, this factor favors the plaintiff only slightly, if at all.
(h)
In considering the sophistication of consumers, a court must evaluate "[t]he general impression of the ordinary purchaser, buying under the normally prevalent conditions of the market and giving the attention such purchasers usually give in buying that class of goods . . . ." McGregor-Doniger, 599 F.2d at 1137 (quoting 3 R. Callman, The Law of Unfair Competition, Trademarks and Monopolies § 81.2, at 577 (3d ed. 1969)); see also Sports Auth., 89 F.3d at 965; W.W.W. Pharm., 984 F.2d at 575. In general, greater sophistication of consumers reduces the likelihood of confusion. See Centaur Communications, 830 F.2d at 1228. Magazines are, for the most part, relatively inexpensive products which may be purchased on impulse. See Playboy Enters., Inc. v. Chuckleberry Publ'g, Inc., 687 F.2d 563, 566 (2d Cir. 1982). The relatively high price of the plaintiff's magazine may mean that purchasers give more thought to purchasing that magazine, and therefore bring a higher level of sophistication to their purchase decision. However, overall, this factor weighs in favor of the plaintiff.
The Polaroid factors must be weighed as a whole and this process is not a "mechanical process." Arrow Fastener, 59 F.3d at 400; see also Sports Auth., 89 F.3d at 965. The vast differences between the plaintiff's magazine and the defendants' magazine, together with the fact that there is no indication that the plaintiff intends to, or is capable of, bridging the gap between the publications, leads to the conclusion that the plaintiff is unlikely to be able to show any likelihood of consumer confusion at the trial of this action. The weak similarity of the marks when viewed in context, the lack of any evidence of actual confusion, and the lack of bad faith on the part of the defendants bolsters this conclusion. None of the other factors significantly weakens it.
3
The plaintiff has made conclusory statements indicating that he will prevail on his other claims for relief. (Pl. Mem. at 19-20.) The plaintiff's conclusory statements do not demonstrate a likelihood of success on those claims. See Tusino v. International Brotherhood of Teamsters, 928 F. Supp. 319, 330 (S.D.N.Y. 1996) ("counsel's conclusory statement is no substitute for argument" when seeking preliminary injunction).
B
In this case, the balance of hardships tips in favor of the defendants. The defendants would incur considerable expense in redesigning their magazine to eliminate the "O" logo and references to it and in marketing any new design and name. They would also lose whatever goodwill they have built up in the current design and name. In addition, any such change ordered by this Court could cause the defendants to skip an issue, and to lose advertising revenue. (Gross Decl. ¶ 13.) In contrast, the plaintiff did not publish his magazine at all for nearly five years and is still not publishing it on a regular schedule. Even if the continued publication of the Hearst Magazine caused some damage to the plaintiff's goodwill, that damage would not be substantial compared to the diminution of goodwill attributable to the plaintiff's own failure to publish his magazine consistently. The sporadic nature of the plaintiff's publication of his magazine and the paucity of its reported sales also suggests that the plaintiff has not devoted significant resources to the publication and marketing of his magazine. The harm, if any, that the plaintiff faces in the absence of an injunction is significantly outweighed by the harm the defendants would face if an injunction were granted.
Conclusion
For the reasons explained above, the plaintiff's motion for a preliminary injunction is denied. The foregoing constitutes the Court's Findings of Fact and Conclusions of Law pursuant to Fed.R.Civ.P. 52 (a) and 65.
SO ORDERED.