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BROCKMEYER v. HEARST CORP.
March 4, 2003
RONALD B. BROCKMEYER, PLAINTIFF
THE HEARST CORPORATION, ET AL., DEFENDANTS.
The opinion of the court was delivered by: John G. Koeltl, District Judge
This is a trademark infringment action by the plaintiff, Ronald B.
Brockmeyer, alleging that the publishers and distributors of "O The Oprah
Magazine," namely the Hearst Corporation; Harpo Print, LLC; Does 1-50;
and XYZ Corporations 1-50, (collectively "the defendants"), infringed on
the registered trademark held by the plaintiff, "<<O>>", in
violation of Sections 32(1) and 43(a) of the Lanham Act
(15 U.S.C. § 1114 (1) & 1125(a)), New York common law regarding
unfair competition, and the New York anti-dilution statute, N.Y. Gen.
Bus. Law § 360-1. The defendants filed a counterclaim, pursuant to
15 U.S.C. § 1119, seeking a declaratory judgment canceling the
plaintiff's trademark, and seeking reasonable attorney's fees and costs
pursuant to 15 U.S.C. § 1117(a). The defendants have moved for summary
judgment dismissing the plaintiff's Complaint arguing, among other
things, that there is no likelihood of either actual or potential
consumer confusion between the plaintiff's use of the trademark
in association with his <<O>> magazine, focused on erotica and
sadomasochism, and "O The Oprah Magazine" which is focused on the lives
of modern women, as guided by the values of Oprah Winfrey. Consequently,
the defendants argue that there is no basis under which the plaintiff
could recover for infringement.
At the commencement of this action, the plaintiff, who was represented
by counsel, moved for a preliminary injunction to prevent the defendants
from using the terms "O", "O Magazine" or variations thereof in
connection with the publication, distribution, and sale of magazines or
other products during the pendency of this action. By Opinion and Order
dated June 27, 2002 this Court denied the plaintiff's motion for a
preliminary injunction. See Brockmeyer v. Hearst Corp., No. 01 Civ. 7746,
2002 WL 1402320, at *13 (S.D.N.Y. June 27, 2002). After the denial of the
motion for a preliminary injunction, the plaintiff proceeded through
discovery and this motion for summary judgment pro se.
The standard for granting summary judgment is well established. Summary
judgment may not be granted unless "the pleadings, depositions, answers
to interrogatories, and admissions on file, together with affidavits, if
any, show that there is no genuine issue as to any material fact and that
the moving party is entitled to a judgment as a matter of law."
Fed.R.Civ.P. 56(c); see also Celotex Corp. v. Catrett, 427 U.S. 317
(1986); Gallo v. Prudential Residential Servs. Ltd. P'ship., 22 F.3d 1219,
1223 (2d Cir. 1994). "The trial court's task at the summary judgment
motion stage of the litigation is carefully limited to discerning whether
there are genuine issues of material fact to be tried, not to deciding
them. Its duty, in short, is confined at this point to issue-finding; it
does not extend to issue-resolution." Gallo, 22 F.3d at 1224. The moving
party bears the initial burden of "informing the district court of the
basis for its motion" and identifying the matter that "it believes
demonstrate[s] the absence of a genuine issue of material fact."
Celotex, 477 U.S. at 323. The substantive law governing the case will
identify those facts that are material and "only disputes over facts that
might affect the outcome of the suit under the governing law will
properly preclude the entry of summary judgment." Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248 (1986).
In determining whether summary judgment is appropriate, a court must
resolve all ambiguities and draw all reasonable inferences against the
moving party. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
475 U.S. 574 (1986) (citing United States v. Diebold, Inc., 369 U.S. 654,
655 (1962)); see also Gallo, 22 F.3d at 1223. Summary judgment is
improper if there is any evidence in the record from any source from
which a reasonable inference could be drawn in favor of the nonmoving
party. See Chambers v. TRM Copy Ctrs. Corp., 43 F.3d 29, 37 (2d Cir.
1994). If the moving party meets its burden, the burden shifts to the
nonmoving party to come forward with "specific facts showing that there
is a genuine issue for trial." Fed.R.Civ.P. 56(e). The nonmoving party
must produce evidence in the record and "may not rely simply on
conclusory statements or on contentions that the affidavits supporting
the motion are not credible." Ying Jing Gan v. City of New York,
996 F.2d 522, 532 (2d Cir. 1993); see also Scotto v. Almenas, 143 F.3d 105,
114-15 (2d Cir. 1998) (collecting cases).
Where, as here, a pro se litigant is involved, although the same
dismissal apply, a court should give the pro se litigant
special latitude in responding to a summary judgment motion. See McPherson
v. Coombe, 174 F.3d 276, 279 (2d Cir. 1999) (courts "read the pleadings
of a pro se plaintiff liberally and interpret them `to raise the
strongest arguments that they suggest'") (quoting Burgos v. Hopkins,
14 F.3d 787, 790 (2d Cir. 1994)). In particular, the pro se party must be
given express notice of the consequences of failing to respond
appropriately to a motion for summary judgment. See McPherson, 174 F.3d at
281; Vital v. Interfaith Med. Ctr., 168 F.3d 615, 620-21 (2d Cir. 1999);
Champion v. Artuz, 76 F.3d 483, 486 (2d Cir. 1996); Ruotolo v. IRS,
28 F.3d 6, 8 (2d Cir. 1994); Graham v. Lewinski, 848 F.2d 342, 344 (2d
Cir. 1998). Express notice of a failure to respond was provided to the
plaintiff, and the plaintiff did file a timely response to the defendants'
motion for summary judgment.
The defendants have filed a statement of undisputed facts as required
by Local Civil Rule 56.1(a) and the plaintiff responded with a statement
of undisputed material facts; however, the plaintiff's statement fails to
admit or deny any of the facts the defendants set forth as being
undisputed, as required by Local Civil Rule 56.1(b). The plaintiff's
statement merely recounts some of the various procedural history of this
and other related cases, but does not set forth the facts relevant to the
disposition of this motion. The plaintiff's failure to respond or contest
the facts set forth by the defendants in their Rule 56.1 statement as
being undisputed constitutes an admission of those facts, and those facts
are accepted as being undisputed. See Local Civil Rule 56.1(c); Gubitosi
v. Kapica, 154 F.3d 30, 31 n. 1 (2d Cir. 1998) (per curiam); United
States v. All Right, Title and Interest in Real Property and
Appurtenances, 77 F.3d 648, 657-58 (2d Cir. 1996); John Street Leasehold,
LLC v. Capital Mgmt. Res., L.P., 154 F. Supp.2d 527, 534 (S.D.N.Y.
2001), aff'd 283 F.3d 73 (2d Cir. 2002). The plaintiff was specifically
warned by the defendants' Notice that that the failure to submit a
statement in response to the defendants' Rule 56.1 Statement would result
in the material facts in the defendants' Rule 56.1 Statement being deemed
admitted. Nevertheless, given the plaintiff's pro se status, the Court
has carefully reviewed the factual basis for the motion for summary
There is no genuine dispute with respect to the following facts. The
plaintiff, Ronald B. Brockmeyer, a German resident, was from 1988 to 1994
the United States representative of a corporation that published an
adult-oriented, fetish fashion magazine (the "Techcom Magazine"). (Defs.'
Rule 56.1 Stmt. ¶¶ 1, 2.) Techcom Magazine had on its cover a
trademark, an <<O>>, which was a stylized letter "O" in large
type, in the upper center of the cover, flanked by double gradient
signs. (Defs.' Rule 56.1 Stmt. ¶ 3.) The cover also contained the
words "Fashion, Fetish & Fantasy" or "Fetish, Fashion and Fantasy."
(Decl. of Dennis H. Cavanaugh dated October 1, 2001, Exh. B.)
After Techcom magazine's parent company, Techcom Verlags und Vertiebs
GmbH ("Techcom") filed for bankruptcy in February, 1995, the plaintiff
purchased the trademark rights for the <<O>> mark from
Techcom's bankruptcy administrator. (Defs.' Rule 56.1 Stmt. ¶ 5.)
The plaintiff is the record owner of U.S. Federal Trademark Registration
No. 1,979,482 for the mark <<O>> for use in connection with
"magazines, books and catalogs in the fields of fashion, adult
entertainment, adult novelties and videotapes; [and] posters and
calendars." (Defs.' Rule 56.1 Stmt.
¶ 30.) The registration for this
mark was issued on June 11, 1996. (Id.)
In 1995 and 1996, the plaintiff published issues numbered 25 and 26 of
a magazine that featured the <<O>> mark on the cover,
featured prominently in the upper center of the page ("<<O>>
Magazine"). (Defs.' Rule 56.1 Stmt. ¶ 7.) The covers of Issues 25
and 26 also contained the words "The Art of Fetish, Fashion &
Fantasy." (Id.) Issue 25 contained, among other things, photographs of
whip-bearing, naked women engaged in sadomasochistic and lesbian acts, a
report covering the "Europerv 5" fetish convention, and a short fiction
piece whose content contained descriptions of whipping, paddling, and
bondage. (Defs.' Rule 56.1 Stmt. ¶ 9.) No more than 8,290 copies of
this issue were distributed in the United States and Canada, and no more
than 947 copies were actually sold in the United States. Brockmeyer, 2002
WL 1402320, at *9. Similarly, Issue 26 contained photographs depicting
female nudity, sadomasochism, lesbianism, fetish fashion, and also
contained erotic short fiction. (Defs.' Rule 56.1 Stmt. ¶ 10.) No
more than 15,278 copies of Issue 26 were distributed in the United States
and Canada, and no more than 9,272 copies were actually sold in the
United States. Brockmeyer, 2002 WL 1402320, at *9.
Another <<O>> Magazine was not published until June, 2001
when the Euromedia company, under the direction of the plaintiff
published Issue 27 of the magazine, whose cover contained a large version
of the <<O>> mark, along with the words "The Art, The
Fashion, The Fantasy." (Defs.' Rule 56.1 Stmt. ¶¶ 13, 14.) This issue
contained no advertisements and little text, and contained photographs
similar to those found in issues 25 and 26. (Defs.' Rule 56.1 Stmt.
¶ 17.) Issue 28, containing similar content as prior issues, was
published in the Fall of 2001, and its cover used the <<O>>
mark in large type along with the words "The Art, The Fashion, The
Fantasy." (Defs.' Rule 56.1 Stmt. ¶¶ 20, 22.) A total of 12,000
copies of Issue 27 were allegedly distributed in the United States.
Brockmeyer, 2002 WL 1402320, at *9. A total of 13,500 copies of Issue 28
of <<O>> Magazine were allegedly distributed in the United
States. Brockmeyer, 2002 WL 1402320, at *9. Issues 27 and 28 of were
distributed in the United States primarily to bookstores and newsstands.
(Defs.' Rule 56.1 Stmt. ¶¶ 24, 27-28.)
There are a least six other publications distributed in the United
States that bear the letter "O" as a component of a composite mark or as
the first letter of a mark. (Defs.' Rule 56.1 Stmt. ¶ 34.) Two of
these "O" marks have some form of trademark protection in the United
States. (Defs.' Rule 56.1 Stmt. ¶¶ 35-36.)
A defendant, the Hearst Corporation, through another
defendant-subsidiary, publishes the "O The Oprah Magazine," a magazine
created through a collaboration between the defendants and Oprah
Winfrey, an internationally renowned media personality known for her
wholesome image and interest in the improvement of women's lives. (Defs.'
Rule 56.1 Stmt. ¶¶ 37-38, 41-42.) "O" is Oprah Winfrey's nickname,
and the team responsible for the creation of "O The Oprah Magazine"
believed the magazine should incorporate this nickname in its title in
order to capitalize on Ms. Winfrey's name recognition. (Defs.'
Rule 56.1 Stmt. ¶ 43.) The desire to use the "O" in connection with Oprah
Winfrey's magazine was motivated in part by the success of "Oprah's Book
Club" which featured an oversized "O" logo on book jackets connected with
the book club. (Defs.' Rule 56.1 Stmt. ¶ 47.) In order highlight the
connection between "O" and "Oprah Winfrey," the magazine's title, "O The
Oprah Magazine," was placed in the
upper-left hand corner of the
magazine, with the letter "O" and the word "Oprah" in one color and "The"
and "Magazine" in a different color. (Defs.' Rule 56.1 Stmt. ¶ 45.)
Additionally, each issue of the magazine has, on its cover, a picture of
Oprah Winfrey. (Id.)
The election of this cover design, including the title "O The Oprah
Magazine", was announced on January 12, 2000. (Defs.' Rule 56.1 Stmt.
¶ 48.) This cover design, with the prominent "O", the title "The
Oprah Magazine," with different coloring, along with a picture of Oprah
Winfrey has appeared on each issue of "O The Oprah Magazine" that has
been published. (Defs.' Rule 56.1 Stmt. ¶¶ 60-63.) Each issue of "O
The Oprah Magazine" is focused on helping women live better lives, by
focusing on their inner-self rather than on external, physical
attributes; consequently, each issue contains a mission statement and the
magazine is largely text-based and contains little content relating to
sex and never contains erotic photographs. (Defs.' Rule 56.1 Stmt.
On February 11, 2000, the defendant Harpo filed Federal Trademark
Application Serial No. 75/917,137 for the Mark "O THE OPRAH MAGAZINE" and
the mark was ultimately identified for "Women's lifestyle magazines and
newsletters covering 360 degrees of a woman's life, guided by the values
of Oprah Winfrey." (Defs.' Rule 56.1 Stmt. ¶ 49.) The U.S. Patent
and Trademark Office found no likelihood of confusion between the mark "O
THE OPRAH MAGAZINE" and any pending or registered mark, including the
plaintiff's <<O>> mark and issued a Notice of Allowance for
Harpo's Trademark application on March 19, 2002. (Defs.' Rule 56.1 Stmt.
The premier issue of "O The Oprah Magazine" went on sale in April, 2000
and sold approximately 1.5 million copies. (Defs.' Rule 56.1 Stmt.
¶ 50.) Current audited figures reveal that "O The Oprah Magazine" has
a total paid monthly circulation of approximately 2.75 million, with
approximately 1 million sales occurring in retail outlets and 1.75 million
subscription sales to consumers. (Defs.' Rule 56.1 Stmt. ¶ 51.) of
the 1 million monthly sales at retail stores, approximately 58% of those
sales occur at supermarkets or at mass-market retail outlets such as
Wal-Mart, which do not sell adult-oriented publications containing
nudity. (Defs.' Rule 56.1 Stmt. ¶¶ 53-54.)
The defendants have never received any communication from any reader,
advertiser or third party regarding the plaintiff's <<O>>
Magazine, and have no knowledge of any instance of actual confusion.
(Defs.' Rule 56.1 Stmt. ¶ 59.) The only incident of alleged actual
confusion that the plaintiff has presented is a single e-mail in which
the purchaser of a subscription to "O The Oprah Magazine" apparently
contacted Mr. Brockmeyer about a problem with her subscription. There is
no indication that the single e-mail writer ever saw Mr. Brockmeyer's
magazine. (See Brockmeyer letter dated Oct. 17, 2002.)
In October, 2001, at a Tower Records store in suburban New York, Issue
27 of <<O>> Magazine was available in the "adult erotica"
section of the store, near other adult titles, whereas, "O The Oprah
Magazine" was sold some forty-five feet away in a section entitled
"Woman's [sic] General Interest." (Defs.' Rule 56.1 Stmt. ¶ 19.) The
relative cost of the two magazines is also markedly different, with the
cover price of Issue 27 and Issue 28 of <<O>> Magazine at
$12.95, and $9.95, respectively, while an issue of "O The Oprah Magazine"
has a cover price of $3.50. (Defs.' Rule 56.1 Stmt. ¶¶ 16, 21, 52.)
The defendants also commissioned a market research study to determine
whether there was a likelihood of reverse consumer confusion between
<<O>> Magazine and "O The Oprah Magazine." (Defs.'
Rule 56.1 Stmt. ¶ 67.) The survey, was conducted by Dr. Henry Ostberg, a
market researcher of the Admar Group, Inc., in shopping malls across the
United States, and revealed that only 7 out of 255 respondents, or 2.7%,
perceived any connection between the plaintiff's magazine and "O The Oprah
Magazine." (Defs.' Rule 56.1 Stmt. ¶¶ 68-69, 78.) Only 3 people, or
1.2%, of respondents believed that the <<O>> Magazine
produced by the plaintiff was actually produced by any of the defendants
or by Oprah Winfrey. (Defs.' Rule 56.1 Stmt. ¶ 74.) The survey was
conducted under double-blind conditions, where neither the interviewer or
the respondents were aware of ...