Playboy Enters., Inc. v. Universal Tel-A-Talk, Inc., 1998 WL 767440, 1998 US Dist. LEXIS 17282 (E.D. Pa. Nov. 3, 1998) (full-text).
Factual Background Edit
Plaintiff Playboy Enterprises ("PEI") operated an electronic version of its popular adult magazine on the Internet. Defendant operated an adult website at "www.adult-sex.com/playboy" where it offered a subscription service called "Playboy's Private Collection." Defendant's site prominently featured PEI's federally registered marks PLAYBOY and BUNNY, and contained a hyperlink to PEI's website at "playboy.com." Defendant also invited Internet users to send e-mail messages to "email@example.com."
Trial Court Proceedings Edit
PEI sued, alleging trademark infringement, dilution, and counterfeiting. After the court entered a temporary restraining order and then a consent decree preliminarily enjoining defendant's use of PEI's marks, the case was tried to the court.
The court first found a likelihood of confusion resulting from defendant's use of PEI's trademarks. It considered the "playboy.com" hyperlink to plaintiff's website to be evidence of defendant's intent to capitalize on PEI's reputation. The court also found that defendant's use of plaintiff's marks constituted dilution. Finally, the court held that by using PEI's marks in connection with the sale of adult images on its website, defendant's actions constituted counterfeiting under the Lanham Act.
The court awarded PEI statutory damages of $10,000, as well as reasonable attorney’s fees. Defendant was permanently enjoined from using PEI's trademarks "or any colorable facsimile thereof," and from providing a link to PEI's website, "playboy.com." It was also enjoined from using the PLAYBOY mark as a domain name, directory name, or other computer address, and from using the mark on its web page or in any other manner in connection with its services.
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