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SPORTS TRAVELER, INC. v. ADVANCE MAGAZINE PUBLRS.

September 30, 1998

SPORTS TRAVELER, INC., Plaintiff, against ADVANCE MAGAZINE PUBLISHERS, INC. d/b/a THE CONDE NAST PUBLICATIONS, Defendant.


The opinion of the court was delivered by: KEENAN

ORDER AND OPINION

 JOHN F. KEENAN, United States District Judge:

 Before the Court is the motion of Defendant Advance Magazine Publishers, Inc. d/b/a/ The Conde Nast Publications ("Conde Nast") for summary judgment pursuant to Fed. R. Civ. P. 56. For the reasons that follow, the Court grants Conde Nast's motion.

 BACKGROUND

 A. Sports Traveler Magazine

 Plaintiff Sports Traveler, Inc. ("Sports Traveler") is a New York corporation organized in May 1995, which had its executive offices in New York City until Sports Traveler ceased operations in late 1996. See Affidavit of Lawrence Rosenthal in Supp. of Mot. for Summ. J. ("Rosenthal Aff."), Exh. 27, at 4; Affidavit of Charlotte Anne Perkins in Opposition to Def's Mot. for Summ. J. ("Perkins Aff."), P 1.

 Sports Traveler is an entrepreneurial publisher of a start-up magazine entitled "Sports Traveler" ("Sports Traveler Magazine"), which is a magazine focused on women's participatory sporting activities, sports-related fitness and fashion, and sports-oriented travel. See Deposition of Charlotte Ann Perkins, Sept. 27, 1996; Feb. 13, 1997; Mar. 31, 1997 ("Perkins Dep."), at 294. The idea for Sports Traveler Magazine was developed in the summer of 1992 by Charlotte Anne "Polly" Perkins, the President, Publishing Director and controlling shareholder of Sports Traveler.

 Sports Traveler did not have the ability or assets to develop the desired large circulation, either by subscription or newsstand sales, without the help of a large publisher. See Perkins Dep., at 103, 250. Therefore, in 1995, Perkins proceeded with the help of an investment partner, Jonathan Betts of Venture Partners, Ltd., to raise funds from private investors to produce and publish Sports Traveler Magazine. In about a year's time, Perkins had raised approximately $ 550,000 in funds. Although this is an extremely limited budget by publishing standards, Perkins published four issues of Sports Traveler Magazine. Id. at 13-14, 17-19.

 The premiere issue, Fall-Winter 1995, of Sports Traveler Magazine was published on September 26, 1995. The three additional issues of Sports Traveler Magazine were: the Spring 1996 edition, published March 5, 1996; the Summer-Fall 1996 edition, published June 11, 1996; and the Fall-Winter 1996 edition published October 15, 1996. Sports Traveler Magazine effectively ceased publication after the fourth issue. Id. at 555.

 1. Sports Traveler Magazine's Trade Dress

 The cover of Sports Traveler Magazine includes the registered trademark "Sports Traveler" depicted with the word "sports" boldly placed across the masthead in lower case helvetica (neue heavy extended) font typeface, and the word "traveler" in smaller, upper case, Caslon 540 font typeface underneath the word "sports." The letters in the logo slightly touch, or blend into, one another, and contrasting colors are used for the two words. The cover features a feminine, sports-oriented model depicted in an active setting. See Affidavit of Courtney Wilson, Esq. ("Wilson Aff."), Exhs. 46-49. These aspects of the cover of Sports Traveler Magazine have been consistent on all issues. Perkins Dep., at 110-111, 352. The last two issues contain the phrase "FOR THE ACTIVE WOMAN" above the "sports" line.

 2. The Performance of Sports Traveler Magazine

 In connection with the launch of Sports Traveler Magazine, Perkins circulated 3,000 copies of a press kit (including a copy of the magazine) to "numerous advertisers, potential advertisers and the media" and another 5,000 copies of each issue were sent to a similar list. Perkins Aff., at P 22. The idea of Sports Traveler Magazine attracted some attention from the media. There have been seventy-eight media references to Sports Traveler Magazine. Of the forty-four media references published before June 26, 1996, thirty were in the media trade press and fourteen were in consumer publications. Of these forty-four, five showed the cover. Overall, out of the seventy-eight total media references to Sports Traveler Magazine, only one of the five media references showing the cover was in a consumer publication.

 Sports Traveler's advertising revenues exceeded one million dollars for the four issues of Sports Traveler Magazine. Perkins Dep., at 189. Advertisers such as Chanel, Ralph Lauren, Nike, BMW, Tag Heuer, and Saab placed ads in Sports Traveler Magazine. See Perkins Dep., at 175, 335.

 Total distribution for all four issues of Sports Traveler Magazine exceeded 600,000 copies. Perkins Aff., PP 12, 15-17, 22. Of these 600,000 copies, 588,291 were sent out for national and direct distribution. Although 600,000 copies of the four issues were printed, not all of these copies were actually displayed. Perkins complained that her national distribution was unsuccessful because of "prematures", the practice of newsstands who received deliveries of her magazine, returning them to the distributor undisplayed. Rosenthal Reply Aff., Exh. 63, at 250-53. In fact, the sell-through total of Sports Traveler Magazine through national distribution was 11% and through direct distribution was 50%, meaning that only 75,697 of the Sports Traveler Magazines put into distribution were purchased. See Perkins Aff., at P 12. In addition, subscriptions to the magazine totaled 14,630. Of these 14,630, 1,485 were a result of subscriptions from insert cards in Sports Traveler Magazine, and 13,145 were from orders placed with CAP Systems, an alternative subscription service. Id. at PP 18-20. As of June 26, 1996, Sports Traveler had sold 60,340 magazines and had at most 1485 subscriptions to Sports Traveler Magazine. *fn1"

 B. Conde Nast's Sports for Women Magazine

 Conde Nast, a New York corporation, is a well known publisher of a broad range of upscale magazines including Self, Glamour, Vanity Fair, Mademoiselle, Vogue, GQ, Allure, Conde Nast Traveler, and Gourmet. Over the last several years, Conde Nast has engaged in a campaign to promote the Conde Nast name among advertisers and consumers. That campaign included advertising, adding the Conde Nast name to the title of certain of the magazines and citing on the cover of at least one magazine that it is from the publisher of other of Conde Nast's magazines. See Rosenthal Aff., Exh. 33, at 17-19; Id. Exh. 37. Conde Nast has rebranded several of its magazines to include the Conde Nast name. Specifically, Conde Nast has renamed Bride's Magazine as Conde Nast Bride's and relaunched House and Garden magazine in 1996 as Conde Nast House and Garden. The cover of Conde Nast Bride's has in its upper right corner "FROM THE PUBLISHERS OF VOGUE GLAMOUR Mademoiselle". Id. Exh. 10; Exh. 33, at 18. Additionally, Conde Nast's travel magazine was named Conde Nast Traveler, and its new women's sports magazine, which is the subject of the instant litigation, is titled Conde Nast's Sports for Women ("Sports for Women").

 1. Conde Nast's Attempts to Create a Women's Sports Magazine

 In 1994 Conde Nast became interested in publishing a woman's sports magazine. Eventually, after certain ideas were scrapped and other negotiations broke down, Conde Nast launched Sports for Women in 1996. In early 1994, Conde Nast considered a magazine directed at women's spectator sports initially referred to as Street & Smith's Sportswoman, College Edition. Id. Exh. 12. Later in 1994, Conde Nast personnel put together a prototype of a woman's sports magazine entitled Sportswoman, but the project was abandoned on May 24, 1994 by Steven T. Florio, currently Conde Nast's President and Chief Executive Officer, who stated that the idea should be reviewed again in "3-5 months." Id. Exh. 33, at 26-27, 78; Wilson Aff., Exh. 27; Udell Aff., at P 6 (stating that the date of this letter was May 24, 1994, not May 24, 1995 as Plaintiff suggests).

 In Spring/Summer 1994, Perkins presented her prototype boards for Sports Traveler Magazine to Sal Schiliro, then President of the Street & Smith division of Conde Nast. A meeting between Perkins and Florio was scheduled for June 10, 1994, but when Perkins arrived for the meeting Florio came out and cancelled the meeting. Florio Dep., at 44-45; Perkins Dep., at 215-216; 335-36.

 On January 5, 1995, Lucy Danziger sent a letter to James Truman, the Editorial Director of Conde Nast, soliciting employment on Conde Nast's rumored women's sports magazine project. Danziger had learned of Conde Nast's project when someone from Conde Nast contacted her husband's photography gallery looking for images of women doing sports. Danziger Dep. at 40. On October 1, 1995, Conde Nast hired Danziger as an independent contractor to develop a prototype for a women's sports magazine. Danziger was not given any guidelines or direction by Conde Nast and, instead, created her own guidelines for the prototype based on the ideas expressed in her January 23, 1995 letter to James Truman. Id. at 47-48. In April 1996, Danziger was hired as a full-time employee of Conde Nast, and named Editor-in-Chief of Sports for Women. Newhouse Dep., at 40-44; Truman Dep., at 19, 25.

 During the Summer of 1994, Danziger had become associated with Perkins. Perkins and Danziger met on multiple occasions to discuss the editorial mission, development and staffing of Sports Traveler Magazine. During this time, Danziger was privy to Perkins' ideas and concepts for the magazine, and reviewed the prototype boards and the original business plan for Sports Traveler Magazine with Perkins. Perkins Dep., at 191-195, 209-210, 326-329. Danziger was very interested in working for Sports Traveler, if Perkins could come up with the right financing. Id. at 206, 326-27. Danziger obtained her position with Conde Nast after her negotiations with Perkins fell through.

 On November 2, 1995, less than six weeks after the first edition of Sports Traveler Magazine debuted on the newsstands, Florio, who had already seen the premiere issue of Sports Traveler Magazine, telephoned Perkins and requested a meeting with her to discuss Conde Nast's interest in acquiring Sports Traveler Magazine and hiring Perkins. Florio Dep., at 11-14, 31-32, 39. Danziger also saw the premiere issue of Sports Traveler Magazine, and sent Perkins a congratulatory note dated October 22, 1995. Danziger Dep., at 34. Danziger subsequently saw the second issue of Sports Traveler Magazine on February 13, 1996 right after she made a design presentation to S.I. Newhouse, an executive at Conde Nast, because "someone" in the company, "possibly James Truman," had the magazine and showed it to her. Id. at 36-37. She also saw the third issue which came out in June, 1996, of Sports Traveler Magazine because "someone" had it in the office. Id. at 38.

 On December 5, 1995, Perkins met with Florio and Newhouse for over an hour in Florio's office at Conde Nast. Perkins Dep., at 168, 172-176, 179. On December 8, 1995, Perkins received a letter by hand from Florio stating that Sports Traveler Magazine did "not fit in" with Conde Nast's "continuing plans" for developing a women's sports magazine.

 On January 4, 1996, a news article appeared announcing that Conde Nast was working on a sports magazine for women with a working title "Jump." In fact, on December 1, 1995, Conde Nast's counsel conducted a trademark search on Jump and on January 29 and 30, 1996, the first "Jump" business plans were completed. See Wilson Aff., Exh. 21. When the name "Jump" proved unworkable, Conde Nast considered the title Conde Nast Sport for Women (with a singular sport) and its counsel, Sabin, Bermant & Gould, obtained a 186 page Trademark Search Report on "sport" in the U.S. and Canada on March 4, 1996. Rosenthal Aff., Exh. 15. After further consideration, on March 15, 1996, Conde Nast Sports for Women (with a plural Sports) was officially designated the title of the new magazine. Id. Exh. 16. The title remains Conde Nast Sports for Women, and there are no plans to change.

 2. The Design of the Sports for Women Cover

 On October 15, 1995, Conde Nast hired Lucy Sisman, head of Sisman Design, an outside design firm, to assist in the development of the prototype for Sports for Women. On February 13, 1996, Danziger and Sisman, made a presentation to S.I. Newhouse and other Conde Nast executives, including Florio and James Truman, of the first prototype for Sports for Women. A physical dummy magazine and some alternative covers with different titles were prepared and presented at the meeting. Sisman Dep., at 72-73. Sisman Design's contract expired on February 15, 1996 and according to Florio, it was not renewed because Conde Nast did not like the work Sisman Design had performed for them. Florio Dep., at 88.

 In April 1996 Conde Nast hired Johan Svensson as Art Director of Sports for Women. Danziger, who did not know Svensson, hired him because of his work as an art director for Harper's Bazaar. Svensson's first task was to redesign the logo for the magazine title. Svensson Dep., at 35-37. Svensson's only direction in redesigning the logo was ...


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