Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Official citation and/or docket number and footnotes (if any) for this case available with purchase.

Learn more about what you receive with purchase of this case.

PLAYBOY ENTERPRISES v. CHUCKLEBERRY PUBL.

UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK


July 12, 1996

PLAYBOY ENTERPRISES, INC., Plaintiff, against CHUCKLEBERRY PUBLISHING, INC., TATTILO EDITRICE, S.p.A., PUBLISHERS DISTRIBUTING CORPORATION, and ARCATA PUBLICATIONS GROUP, INC., Defendants.

The opinion of the court was delivered by: SCHEINDLIN

OPINION AND ORDER

 SHIRA A. SCHEINDLIN, U.S.D.J.:

 I. Background

 Plaintiff, Playboy Enterprises, Inc. ("PEI"), publishes the well-known male entertainment magazine "Playboy." Defendant, Tattilo Editrice, S.p.A. ("Tattilo"), has published a male sophisticate magazine in Italy under the name "PLAYMEN" since 1967. In 1979, after Tattilo announced plans to publish an English language version of PLAYMEN in the United States, PEI brought suit to enjoin Tattilo's use of the PLAYMEN name in connection with a male sophisticate magazine and related products. As a result, PEI was awarded an injunction ("Injunction") permanently enjoining Tattilo from:

 

 

a. using the word "PLAYMEN" or any word confusingly similar therewith as or in the title, as or in the subtitle, or anywhere else on the cover of a male sophisticate magazine, published, distributed or sold in the United States;

 

b. publishing, printing, distributing or selling in the United States and importing into or exporting from the United States an English language male sophisticate magazine which uses the word "PLAYMEN" or any word confusingly similar therewith as or in the title, as or in the subtitle, or anywhere else on the cover of such magazine; and

 

c. using "PLAYBOY", "PLAYMEN" or any other word confusingly similar with either such word in or as part of any trademark, service mark, brand name, trade name or other business or commercial designation, in connection with the sale, offering for sale or distributing in the United States, importing into or exporting from the United States, English language publications and related products.

 Declaration of David R. Francescani, Attorney for Playboy, dated February 27, 1996 ("Francescani Decl.") Ex. 1.

 Fifteen years later, in January 1996, PEI discovered that Tattilo had created an Internet site featuring the PLAYMEN name (the "PLAYMEN Internet site" or "Internet site") which makes available images of the cover of the Italian magazine, as well as its "Women of the Month" feature and several other sexually explicit photographic images. The Internet site was created by uploading images onto a World Wide Web server located in Italy.

 Tattilo offers two services on its Internet site. "PLAYMEN Lite" is available without a subscription and allows users of the Internet to view moderately explicit images. "PLAYMEN Pro," which offers more explicit images, is available only upon the purchase of a paid subscription. It appears that the main (if not sole) purpose of the PLAYMEN Lite site is to allow prospective subscribers to PLAYMEN Pro to sample the product before purchasing a subscription.

 PEI moved for a finding of contempt against Tattilo. By Opinion and Order dated June 19, 1996 ("Opinion"), I determined that the Internet site violated the Injunction, and thereby found Tattilo in contempt. Tattilo was ordered, within two weeks, to: (1) either shut down its Internet site completely or refrain from accepting any new subscriptions from customers residing in the United States; (2) invalidate the user names and passwords to the Internet site previously purchased by United States customers; (3) refund to its United States customers the remaining unused portions of their subscriptions; (4) remit to PEI all gross profits earned from subscriptions to its PLAYMEN Pro Internet service by customers in the United States; (5) remit to PEI all gross profits earned from the sale of goods and services advertised on its PLAYMEN Internet service to customers in the United States; (6) revise its Internet site to indicate that all subscription requests from potential United States customers will be denied; and (7) remit to PEI its costs and attorneys' fees incurred in making that application. I further ruled that if those conditions were not met within two weeks, Tattilo shall pay to PEI a fine of $ 1,000 per day until it complies fully.

 Defendant now requests that the Court amend its Order in several respects. First, Defendant submits that the Court misconstrued the process by which a user of the Internet site accesses PLAYMEN Lite, resulting in the incorrect determination that the PLAYMEN Lite service violated the Injunction. Defendant argues that the continued availability of PLAYMEN Lite within the United States would not violate the Injunction. Second, Defendant requests that the Order be amended to eliminate the award of attorneys' fees and costs to PEI, as well as Tattilo's gross profits from subscriptions and sales of products to customers residing in the United States. *fn1"

  Plaintiff also moves for an amendment of the judgment. PEI requests that Tattilo be ordered to refrain from "publishing, promoting and selling in the English language PLAYMEN publications and related products."

 II. Standard of Review

 Both parties are seeking reconsideration of the Opinion. A court should grant such motions "only if the moving party presents [factual] matters or controlling decisions the court overlooked that might materially have influenced its earlier decision." Morser v. AT&T Information Systems, 715 F. Supp. 516, 517 (S.D.N.Y. 1989); see also Violette v. Armonk Assocs., L.P., 823 F. Supp. 224, 226 (S.D.N.Y. 1993). Moreover, a motion for reconsideration may not be used to plug gaps in an original argument (see McMahan & Co. v. Donaldson, Lufkin & Jenrette Securities Corp., 727 F. Supp. 833, 833-34 (S.D.N.Y. 1989)) or "to argue in the alternative once a decision has been made" (see United States v. Reyes, 1993 U.S. Dist. LEXIS 307, 91-C R-56S, 1993 WL 8775, at *1 (W.D.N.Y. Jan. 13, 1993)).

 III. Discussion

 A. Whether PLAYMEN Lite Violates the Injunction

 In the Opinion, Defendant was found to have violated Subsection 1(c) of the 1981 Injunction which permanently enjoined Tattilo from:

 

using "PLAYBOY", "PLAYMEN" or any other word confusingly similar with either such word in or as part of any trademark, service mark, brand name, trade name or other business or commercial designation, in connection with the sale, offering for sale or distributing in the United States, importing into or exporting from the United States, English language publications and related products.

 The basis for this holding was the Court's finding that 1) the word PLAYMEN was used as part of a trademark, service mark, brand name, trade name or other business or commercial designation; 2) that such use was made in connection with an English language publication or related product; and 3) that such use was made in connection with a sale or distribution within the United States. The sole issue raised in this request for reconsideration is whether Tattilo has sold or distributed PLAYMEN Lite in the United States.

 1. The Previous Order

 The uploading of pictorial images onto a computer which may be accessed by other users constitutes a "distribution" because

 

Defendant does more than simply provide access to the Internet. It also provides its own services, PLAYMEN Lite and PLAYMEN Pro, and supplies the content for these services. Moreover, . . . , these pictorial images can be downloaded to and stored upon the computers of subscribers to the service. In fact, Defendant actively invites such use: the Internet site allows the user to decide between viewing and downloading the images. Thus this use of Defendant's Internet site constitutes a distribution.

 Opinion at 15.

 This distribution occurred in the United States because of the direct contact between Tattilo and users of the PLAYMEN Internet site. Id. at 16. Specifically, in order to subscribe to the PLAYMEN Pro service, prospective users fax an "order form" to Tattilo, along with a credit card number, and receive back a password and user ID via e-mail.

 Although users of the PLAYMEN Internet site do not "subscribe" to PLAYMEN Lite, Tattilo nonetheless distributes this product in the United States because of the means by which a user accesses PLAYMEN Lite, which is described on the Internet site itself:

 

Before I pay I want to see what you offer:

 

For this reason, you will receive a temporary user name and password by email. With this password you can browse on the xxx pages of the lite version of Playmen. Once you are satisfied, you will have to fill the form and send it [to] us by fax, specifing [sic] all the details of your credit card.

  2. The Instant Motion

 Tattilo now claims that the above passage does not accurately describe the process by which a user accesses PLAYMEN Lite. According to Tattilo, not only is a password not necessary to peruse the PLAYMEN Lite service, but in reality no contact with Tattilo is required for a potential user to access PLAYMEN Lite.

 On July 3, 1996, a hearing was held at which the parties demonstrated the process of accessing the PLAYMEN Internet site. No password or user ID was necessary. Defendant has therefore presented factual matter which was not before the Court that might materially have influenced its earlier decision. *fn2" The question, then, is whether Tattilo's PLAYMEN Lite service still violates the Injunction.

 While the Opinion held that deliberate and intentional contact with the United States was established based on the requirement that prospective customers fax subscription forms to Italy, and that user names and IDs are sent to United States customers from Italy, this is not the only basis for finding that a distribution occurred within the United States. The PLAYMEN Lite service allows (indeed invites) a user to download Tattilo's pictorial images onto his or her home computer. PLAYMEN Lite can thus be viewed as an "advertisement" by which Tattilo distributes its pictorial images throughout the United States. That the local user "pulls" these images from Tattilo's computer in Italy, as opposed to Tattilo "sending" them to this country, is irrelevant. By inviting United States users to download these images, Tattilo is causing and contributing to their distribution within the United States.

 Moreover, the availability of PLAYMEN Lite within the United States violates the Injunction even if the user could not download the images. PLAYMEN Lite is nearly identical to PLAYMEN Pro. Both reveal many of the same images; both allow the user to download these images; both services purport to sell products such as movies and CD-Roms to their users. *fn3" Most notably, as demonstrated at the hearing, the two services utilize many of the same screens and links.

 This implies that PLAYMEN Lite and PLAYMEN Pro are not two separate and distinct services as Defendant has argued, but are actually one Service--the "PLAYMEN Internet Service"--part of which requires a password and part of which does not. In other words, PLAYMEN Lite is nothing more than an "advertisement" or "coming attractions" for the money-making PLAYMEN Pro service. This relationship is further demonstrated by the passage quoted above, which caused confusion as to how a user accesses PLAYMEN Lite. When a PLAYMEN Lite user is considering purchasing a subscription to PLAYMEN Pro, but would like to sample the product first, Tattilo will provide a temporary password that will allow the user to access the pages of PLAYMEN Pro through PLAYMEN Lite.

 As such, PLAYMEN Lite represents a free distribution of Tattilo's product, a product which has been banned in this country since the 1981 Injunction. I decline to hold that Tattilo may maintain some portion of its service but shut down other portions of its Internet site. Because PLAYMEN Lite and PLAYMEN Pro are essentially one entity, they must be treated as such.

 Therefore, the PLAYMEN Lite service violates the Injunction. As ordered in the Opinion, Tattilo must either shut down PLAYMEN Lite completely or prohibit United States users from accessing the site in the future. The simplest method of prohibiting access by United States users is to adopt a method of access similar to the one which I had believed was already in place: require users of the PLAYMEN Lite service to acquire free passwords and user IDs in order to access the site. In this way, users residing in the United States can be filtered out and refused access. *fn4"

 Because this motion raised serious issues, Tattilo may have two weeks from the date of this Order to either shut down PLAYMEN Lite or adopt procedures prohibiting United States users from accessing the site. Of course, this does not affect the time remaining for Tattilo to comply with the earlier Order.

 B. The Award of Attorneys' Fees and Costs

 There is no basis for reconsideration of the decision to impose attorneys' fees and costs upon Tattilo. As previously stated, Tattilo had sufficient cause to doubt the legality of establishing the PLAYMEN Internet site. Defendant cannot avoid this sanction simply because the contempt motion may raise an issue of first impression.

 C. The Award of Tattilo's Gross Profits

 Similarly, there is no basis for reconsideration of the decision to award PEI Tattilo's gross profits from subscriptions and sales of products to United States customers. Consistent with my decision not to reconsider attorney's fees and costs, Defendant cannot avoid this sanction simply because the contempt motion may raise an issue of first impression.

 D. PEI's Request For an Additional Sanction

 PEI has also failed to set forth any ground for reconsideration. As previously stated, this Court has no power to restrict Tattilo from providing its PLAYMEN Internet service outside the United States. There are many English speaking countries throughout the world. This Court has no jurisdiction to control Tattilo's activities in those countries. As a result, PEI's motion for an order prohibiting Tattilo from using English on its Internet site is denied.

 V. Conclusion

 For the foregoing reasons, the motion for reconsideration is denied. Tattilo must shut down the PLAYMEN Lite service in accord with this Opinion.

 SO ORDERED:

 SHIRA A. SCHEINDLIN, U.S.D.J.

 Dated: New York, New York

 July 12, 1996


Buy This Entire Record For $7.95

Official citation and/or docket number and footnotes (if any) for this case available with purchase.

Learn more about what you receive with purchase of this case.