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LANG v. RETIREMENT LIVING PUB. CO.

March 4, 1991

DOE LANG, PETITIONER,
v.
RETIREMENT LIVING PUBLISHING CO., INC., RESPONDENT. RETIREMENT LIVING PUBLISHING CO., INC., PLAINTIFF, V. DOE LANG, DEFENDANT.



The opinion of the court was delivered by: Stanton, District Judge.

OPINION AND ORDER

This case arises over the use of the words "New Choices" in both the name of a publishing company owned by Doe Lang and a magazine published by Retirement Living Publishing Co., Inc., ("Retirement Living").

In May 1989, Dr. Lang, who owns New Choices Press, sought an injunction pursuant to New York General Business Law section 133 against Retirement Living using the name NEW CHOICES for its magazine, NEW CHOICES FOR THE BEST YEARS. Retirement Living removed that action from the state court to this court, and filed a countersuit under the Lanham Act, 15 U.S.C. § 1051-1128 (1988), for a declaration that it was entitled to use its name. Dr. Lang's motions for a preliminary and permanent injunction and for summary judgment were denied. No. 89 Civ. 3868 (S.D.N.Y. Nov. 6, 1989) (the "Opinion"), aff'd, No. 89-9206 (2d Cir. Feb. 16, 1990) (unpublished summary order).

Discovery is now complete, and Retirement Living moves for summary judgment pursuant to Fed.R.Civ.P. 56.

BACKGROUND

The material facts in this action are not in dispute (although the parties dispute their significance) and they are substantially as they were at the time of the Opinion.

1. New Choices Press

In 1985 Dr. Lang started a publishing company called New Choices Press to publish materials in what can be broadly described as the "self-help" field. Its main asset was Dr. Lang's already-published book The Secret of Charisma: What It Is and How to Get It, in which she explains how to develop charisma.

Dr. Lang had planned to expand New Choices Press to include publications on other subjects. Those plans have not materialized, and since 1985 it has sold Dr. Lang's book and several cassette tapes on charisma. Those products are not aimed at any specific age group, and she does not consider them to compete against magazines.

The Press' sales through late 1989 total approximately $85,000. About half the sales were through Publisher's Group West, and they have steadily declined since the first year Dr. Lang's book was issued, to $4,400 in 1988. Sales made directly by New Choices Press in response to orders it receives have consistently been less than $2,000 a year.

During discovery Dr. Lang produced about 33 advertisements and articles referring to her and her products. Only about 11 of those refer to New Choices Press. Many mention Charismedia, Inc., which is Dr. Lang's other company.

2. Retirement Living's Magazine

In January 1988 Retirement Living, a subsidiary of The Reader's Digest Association, purchased 50 PLUS, a magazine for mature readers. Management decided to change 50 PLUS' name and, after some discussion, tentatively selected NEW CHOICES FOR THE BEST YEARS.

Retirement Living's search for other users of "New Choices" revealed Dr. Lang's company. One of Retirement Living's lawyers visited and telephoned Dr. Lang's business in July 1989 and reported that New Choices Press was one of two businesses located in an apartment owned by Dr. Lang, a teacher of public speaking and effective self-presentation. The lawyer reported that New Choices Press published a book and a tape set, neither of which was entitled NEW CHOICES.

Since Dr. Lang did not publish a magazine and it seemed unlikely that her small business, run from her apartment, had developed sufficient source identification to preempt all uses of the words "New Choices," Retirement Living decided it could use NEW CHOICES FOR THE BEST YEARS. It was advised by counsel that there was no likelihood of confusion between its magazine and New Choices Press.

The magazine NEW CHOICES FOR THE BEST YEARS has over 580,000 subscribers, and it claims hundreds of letters each month from satisfied customers. It aims at mature readers, primarily those between the ages of 45 and 65.

An October 1990 trademark search revealed 168 federal applications*fn* for trademarks of publications using the words CHOICE or CHOICES. It also showed a number of state registrations and common-law uses of the words in publications.

3. Confusion

In late 1988 Dr. Lang's office began to receive telephone calls intended for NEW CHOICES FOR THE BEST YEARS. Ms. Lang contacted the telephone company in an attempt to straighten out ...


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