Playboy Enterprises, Inc. v. Universal Tel-A-Talk, Inc., et al.
No. Civ. 96-CV-6961, 1998 U.S. Dist. Lexis 8231 (E.D. Penn. June 1, 1998)
Defendants utilized the federally registered trademark "Playboy" in a hypertext link that took users from defendants' website to a site operated by plaintiff Playboy Enterprises Inc. ("Playboy"). Contending that such use constituted trademark counterfeiting in violation of the Lanham Act, Playboy sought to amend its complaint to assert such a claim. Plaintiff sought to add a counterfeiting claim to its existing trademark infringement claims because of the added damages available for counterfeiting, which include treble damages and reasonable attorney's fees. See 15 U.S.C. §1117(b).
To establish a claim for trademark counterfeiting, the plaintiff must show that "(1) defendants infringed a registered trademark in violation of §1114(1)(a), and (2) intentionally used the trademark knowing it was a counterfeit as defined in §1116(d) (1)(B)." However "a claim for trademark counterfeiting lies only against a defendant's counterfeit use of a mark on the same goods or services as are covered by plaintiff's registration of that mark." Stated another way, if defendant uses the mark on goods or services that are not covered by plaintiff's trademark registration, its use does not constitute trademark counterfeiting.
The court denied plaintiff's motion to amend its complaint because it determined that on the facts alleged, plaintiff could not prevail on its trademark counterfeiting claim. This was true, the court held, because defendants' use of the mark "Playboy" was not on goods or services covered by Playboy's federal trademark registration of that mark. Playboy pointed to its registration of the "Playboy" mark for use in a magazine as a registered use infringed by defendants' link. The court disagreed because there was no allegation that Playboy had posted its magazine to the Internet. The court granted Playboy leave to renew its motion.
Left for another day was the question of whether defendants' use of the mark "Playboy" in a link to Playboy's website was likely to cause consumer confusion, or constituted trademark infringement.
The full text of the court's decision can be found on a web site maintained by the United States District Court for the Eastern District of Pennsylvania.