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BROCKMEYER v. HEARST CORP.

March 4, 2003

RONALD B. BROCKMEYER, PLAINTIFF
V.
THE HEARST CORPORATION, ET AL., DEFENDANTS.



The opinion of the court was delivered by: John G. Koeltl, District Judge

          OPINION AND ORDER

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.

I.

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 standards for 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.

III.

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 judgment.

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. ¶ 57.)

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. ¶ 66.)

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.)


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