FALL 2010
Course No.: 9200-710 (& 810)-001
Course ID:  85723 & 85725
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Professor Jay Dratler, Jr.
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Playboy Enterprises, Inc. v. Frena

839 F. Supp. 1552,29 U.S.P.Q.2d (BNA) 1827 (M.D. Fla. 1993)


Harvey E. Schlesinger, J.

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Defendant George Frena operates a subscription computer bulletin board service, Techs Warehouse BBS ("BBS"), that distributed unauthorized copies of Plaintiff Playboy Enterprises, Inc.'s ("PEI") copyrighted photographs.  BBS is accessible via telephone modem to customers.  For a fee, or to those who purchase certain products from Defendant Frena, anyone with an appropriately equipped computer can log onto BBS.  Once logged on subscribers may browse though different BBS directories to look at the pictures and customers may also download the high quality computerized copies of the photographs and then store the copied image from Frena's computer onto their home computer.  Many of the images found on BBS include adult subject matter.  One hundred and seventy of the images that were available on BBS were copies of photographs taken from PEI's copyrighted materials.

Defendant Frena admits that these materials were displayed on his BBS, that he never obtained authorization or consent from PEI, and that each of the accused computer graphic files on BBS is substantially similar to copyrighted PEI photographs[.]  Defendant Frena also admits that each of the files in question has been downloaded by one of his customers.

Subscribers can upload material onto the bulletin board so that any other subscriber, by accessing their computer, can see that material.  Defendant Frena states in his Affidavit that he never uploaded any of PEI's photographs onto BBS and that subscribers to BBS uploaded the photographs.  Defendant Frena states that as soon as he was served with a summons and made aware of this matter, he removed the photographs from BBS and has since that time monitored BBS to prevent additional photographs of PEI from being uploaded.

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In addition to the use of PEI's copyrighted photographs on BBS, PEI's registered trademarks, PLAYBOY®) and PLAYMATE®), were used to identify many of the files containing the photographs.   Furthermore, PEI's text was removed from the photographs and Defendant Frena's name, Techs Warehouse BBS, and telephone number were placed on PEI's copyrighted photographs.  This is uncontested.  Therefore, Plaintiff has moved for partial summary judgment on the issues of trademark infringement under 15 U.S.C. 1114 and unfair competition under 15 U.S.C. 1125(a).  

Defendant Frena admits that the registered trademarks PLAYBOY®) and PLAYMATE®) were used in file descriptors for 170 of the images found on BBS and that such file descriptors were displayed to his customers.   Defendant Frena contends that when a subscriber uploads the material onto BBS, the same subscriber provides a description of the uploaded material for the BBS index.  Defendant Frena contends that he himself has never placed the words "Playboy" or "Playmate" onto BBS.  Defendant Frena further alleges that he, innocently and without malice, allowed subscribers to upload whatever they wanted onto BBS.  

The first issue the Court must address is whether the marks PLAYBOY®) and PLAYMATE®) are distinctive enough to deserve protection under the Trademark Act of 1946 (commonly known as the Lanham Act), 15 U.S.C. 1051 et seq., specifically 32(1) of the Lanham Act, 15 U.S.C. 1114(1).  See Freedom Sav. and Loan Ass'n v. Way, 757 F.2d 1176 n.1 (11th Cir.), cert. denied, 474 U.S. 845 (1985) . . .

There are four categories of distinctiveness in which a mark may be classified.  In ascending order they are: (1) generic; (2) descriptive; (3) suggestive; and (4) arbitrary or fanciful. . . .  The categorization of a term as generic, descriptive, suggestive or arbitrary typically resolves the issue of whether a mark is protectable, with generic marks getting the least protection and arbitrary or fanciful marks receiving the highest degree of protection.  

PLAYBOY®) and PLAYMATE®) are suggestive marks since they implicitly refer to their products qualities.  See PEI v. P.K. [*1560] Sorren Export Co. Inc. of Florida, 546 F. Supp. 987, 995 (S.D. Fl. 1982).  They are well known marks and widely associated with PEI's products. These marks have acquired great distinctiveness among consumers, and are therefore entitled to a high degree of protection. . . .

Once the threshold question of whether the mark is distinctive enough to deserve protection is answered affirmatively, the Court must turn to the central inquiry of whether there is a "likelihood of confusion."   See Freedom Sav. and Loan Ass'n, 757 F.2d at 1179 . . . .

The following factors are highly relevant in deciding whether there is a likelihood of confusion: (1) the type of mark at issue; (2) similarity of marks; (3) similarity of product or services; (4) identity of purchasers and similarity of retail outlets; (6) the defendant's intent; and (7) actual confusion.  The Court, however, is not required to specifically mention each of these factors in making its decision.  See Univ. of Georgia Athletic Ass'n v. Laite, 756 F.2d 1535, 1542 (11th Cir. 1985) (analyzing the factors in the context of a claim of unfair competition).  

Rather than simply determining whether a majority of these factors indicate a likelihood of confusion, a court must "evaluate the weight to be accorded the individual factors and then make its ultimate decision."  AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1538 (11th Cir. 1986), cert. denied, 481 U.S. 1041 (1987).  An analysis of fewer than all seven factors may support a finding of likelihood of confusion. . . .  In the Eleventh Circuit, the type of mark and evidence of actual confusion are the most important factors. . . .
    "In analyzing the type of mark, the Court must determine whether the mark is strong or weak in order to determine the level of protection to be extended to the mark.  The more distinctive a plaintiff's service mark, the greater the likelihood that consumers will associate the registered trademark and all similar marks with the registered owner.  The law therefore provides the greatest protection to strong and distinctive service marks; the strength of a mark depends on the extent of third party usage and the relationship between the name and the service or good it describes."
Freedom Sav. and Loan Assoc., 757 F.2d at 1182.

In analyzing the relationship between the name and the service or good it describes, the Court again considers the proper categorization of the mark.  At this stage of the analysis, the goal is to determine the degree of distinctiveness of the mark.  See Ambrit, Inc., 812 F.2d at 1539 n.36.  Suggestive and arbitrary marks are considered to be the most distinctive marks, and, as relatively strong marks, entitled to the strongest protection.  The Court previously categorized the marks involved as suggestive marks which are, therefore, entitled to the strongest protection.  

There is no issue as to the similarity of the marks in the instant case.  Not only are the marks similar, they are exactly the same.  

The greater the similarity between products and services, the greater the likelihood of confusion. . . .   Defendant Frena's product consisted of computer images of nude women.  Of course, this is the core of PEI's business.  Even though Defendant Frena's photographs were available in a different medium than Plaintiff's, the services both parties provided were virtually identical.

A finding that Defendant adopted a mark with the intent of deriving benefit from the reputation of Plaintiff's service or product may alone be enough to justify an inference that there is confusing similarity.  See Ambrit, Inc., 812 F.2d at 1542.  Defendant [*1561] contends that he did not intend to use Plaintiff's mark.   However, a showing of intent or bad faith is unnecessary to establish a violation of 1141(a). . . .  Intent is just one of the factors to consider in evaluating whether the infringing use is likely to cause confusion.

Even though a guilty state of mind is relevant evidence of trademark infringement, an innocent state of mind is irrelevant on the issue of likelihood of confusion since the lack of intent to deceive does nothing to alleviate the confusion precipitated by similarity of trademarks.

"Although evidence of actual confusion is not necessary to a finding of likelihood of confusion, it is nevertheless the best evidence of likelihood of confusion."  John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 978 (11th Cir. 1983) (quoting Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 263 (5th Cir.), cert. denied, 449 U.S. 899 (1980)).  Actual confusion by a few customers is evidence of likelihood of confusion by many customers.  See Freedom Sav. and Loan Ass'n, 757 F.2d at 1185.  Therefore, a plaintiff usually will not have to prove more than a few incidents of actual confusion.

In its Motion for Summary Judgment, Plaintiff has not shown any evidence of actual confusion among consumers.  However, it is not necessary to prove actual confusion on the part of customers.  It is just that if evidence of actual confusion is available, it is so highly probative of likelihood of confusion that it can rarely be ignored.

An examination of the factors mentioned above indicates that Defendant Frena's use of PEI's marks is likely to confuse consumers.  Defendant Frena is not merely using marks similar to those of Plaintiff, Defendant Frena is using the exact marks registered to Plaintiff.

This case involves a suggestive mark entitled to the strongest protection,  Defendant Frena used the identical mark of Plaintiff and the services involved were virtually identical.  Each of these elements tends to show a likelihood of confusion.  It is likely that customers of Defendant Frena would believe that PEI was the source of Defendant Frena's images and that PEI either sponsored, endorsed or approved Defendant Frena's use of PEI's images.

It is well established that "falsely suggesting affiliation with the trademark owner in a manner likely to cause confusion as to source of sponsorship constitutes infringement."  Burger King v. Mason, 710 F.2d 1480, 1492 (11th Cir. 1983), cert. denied, 465 U.S. 1102 (1984). Further, the law is established that falsely suggesting the existence of affiliation with a well-known business by usurping the latter's good-will constitutes both trademark infringement and unfair competition. . . .

The Court finds that Defendant Frena infringed Plaintiff's federally registered trademarks PLAYBOY®) and PLAYMATE®).  More specifically, Defendant Frena infringed United States Trademark registration numbers 600,018 and 721,987.


Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a), provides:
    "(a)(1)  Any person who, or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact which
      "(A) is likely to cause confusion or to cause mistake, or to deceive as to the [*1562] 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, or

      " (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,
    "shall be liable in a civil action by any person who believes that he or she is or is likely to be damages by such act."
15 U.S.C. 1125(a).  This statutory provision provides a federal cause of action for unfair competition.  There are similarities between the analysis required for trademark infringement and for unfair competition.  However, the unfair competition claim is broader.

15 U.S.C. 1125(a) is designed to protect against a broader range of deceptive or unfair trade practices than 15 U.S.C. 1114.  In addition, both sections require the same test to determine whether the particular actions complained of are violative of their terms. . . .  Thus, as a general rule, the same set of facts which support an action for trademark infringement also support an action for unfair competition.  Therefore, it appears that Defendant Frena violated 15 U.S.C. 1125(a).  

Defendant Frena has violated 15 U.S.C. 1125(a) by falsely inferring and describing the origin of PEI's photographs.  Defendant Frena makes it appear that PEI authorized Defendant Frena's product.  Furthermore, the removal of PEI's trademarks from the photographs constitutes "reverse passing off." . . .

PEI's trademarks were obliterated from the photographs, and then Defendant Frena attempted to take credit for Plaintiff's work by placing its own advertisement with its phone number on some of the photographs.  Thus, PEI has been denied the right to public credit for the success and quality of its goods.  Reverse passing off is a violation of 43(a) of the Lanham Act.  See Roho, Inc. v. Marquis, 902 F.2d 356 (5th Cir. 1990); Debs v. Meliopoulos, 1991 U.S. Dist. LEXIS 19864 (N.D. Ga. 1991).

There is no liability for reverse passing off when a defendant modifies a product to such an extent that the defendant converts it into something different in kind from the original product.  Defendant Frena, however, did not convert PEI'S product to such an extent that it could be considered different in kind from PEI's product.

In Roho, the defendant purchased the plaintiff's wheelchair cushions on the open market, removed plaintiff's labels therefrom, and fastened them together to make bed mattresses.  It was held that the two products were commercially distinct, and that therefore defendant was not simply reselling the product of plaintiff.  In the instant case, however, Defendant Frena is simply reselling the product of PEI stripped of its original identity.

Defendant Frena's actions of deleting Plaintiff's text from the photographs, adding his own text to some of the photographs and appropriating PEI's photographs without attribution to the copyright owner violated Section 43(a) of the Lanham Act.  Defendant Frena competed unfairly with Plaintiff, violating 15 U.S.C. 1125(a).

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