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NYP Holdings v. New York Post Publishing Inc.

United States District Court, S.D. New York

November 17, 2014

NYP HOLDINGS, Plaintiff, -
v.
- NEW YORK POST PUBLISHING INC., STEVEN JUDE HOFFENBERG, et al., Defendants

Page 329

For NYP Holdings, Inc., Plaintiff: Camille Calman, Samuel Bayard, LEAD ATTORNEYS, Davis Wright Tremaine LLP (NYC), New York, NY; Laura R. Handman, LEAD ATTORNEY, Davis, Wright, Tremaine, LLP(DC), Washington, DC.

For New York Post Publishing Inc., Defendant: Todd Alan Zuckerbrod, LEAD ATTORNEY, Todd A. Zuckerbrod, P.A., Boca Raton, FL.

Steven Jude Hoffenberg, Defendant, Pro se, New York, NY.

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DECISION AND ORDER

VICTOR MARRERO, United States District Judge.

Plaintiff NYP Holdings (" NYP Holdings" ), the publisher of the New York Post, brings this action for injunctive relief and damages, alleging that defendants New York Post Publishing Inc., Steven Jude Hoffenberg (" Hoffenberg" ), and Jane Does 1 through 10 (collectively, " Defendants" ), have unlawfully appropriated NYP Holdings's " NEW YORK POST" trademarks (" NEW YORK POST Marks" ). NYP Holdings alleges that Defendants' usage of the NEW YORK POST Marks constitutes: (1) trademark infringement in violation of Section 32(a) of the Lanham Act, 15 U.S.C. § 1114(1)(a); (2) trademark infringement, false designation of origin, and unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) trademark dilution in violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c); (4) trademark cyberpiracy under Section 43(d) of the Lanham Act, 15 U.S.C. § 1125(d) (also known as the Anticybersquatting Consumer Protection Act, or " ACPA" ); (5) common law trademark infringement and unfair competition; and (6) trademark dilution in violation of New York General Business Law § 360-l. (See Compl., Dkt. No. 1, at 19-27.) Among other relief, NYP Holdings seeks to enjoin

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Defendants from infringing the NEW YORK POST Marks, including but not limited to the use of the " NEW YORK POST PUBLISHING INC." trademark and the " NEW YORK POST PUBLISHING INC" domain name. (See Compl. 28-29.)

NYP Holdings filed its Complaint on October 16, 2014, and the Court issued an Order to Show Cause (Dkt. No. 4) on the same day, setting a Show Cause Hearing for October 31, 2014. Defendants were ordered to show cause as to why they should not be preliminarily enjoined, pursuant to Rule 65 of the Federal Rules of Civil Procedure, from, among other activities, using the NEW YORK POST Marks or any trademarks likely to be confusingly similar to, or to dilute, NYP Holdings's trademarks, as well as using the domain name " NEW YORK POST PUBLISHING INC." (Id.) NYP Holdings filed a Memorandum of Law in Support of Order to Show Cause for Preliminary Injunction and Expedited Proceedings (" Pl. Mem." ) on October 17, 2014, and restricted the scope of its preliminary injunction request to its federal trademark infringement and ACPA violations claims. (Id. 9 n.33.)

Hoffenberg, proceeding pro se, then filed two motions (Dkt. Nos. 11,[1] 12[2] on October 21, 2014. NYP Holdings, presumably construing Hoffenberg's first motion (Dkt. No. 11)[3] as a response to the Order to Show Cause, filed a Reply Memorandum (Dkt. No. 15) on October 29.

On October 31, 2014, after hearing arguments from the parties, the Court granted NYP Holdings's request for a preliminary injunction, enjoining Defendants from using the NEW YORK POST Marks in violation of the Lanham Act. The Court then issued an order on November 6, 2014 (" November 6 Order" ), reciting preliminary findings, explaining with greater specificity the restrictions imposed by the preliminary injunction, and prohibiting Defendants from, among other things: (1) " [u]sing the 'New York Post Publishing Inc.' Mark, or any trademark, service mark, or trade dress that is confusingly similar to any of the NEW YORK POST Marks, on or in connection with any goods or service in commerce in a manner that is likely to cause confusion in the minds of the public" ; and (2) " [o]perating a website with the domain name newyorkpostpublishinginc.com, or any other website with a domain name that uses, incorporates, or is confusingly similar to any of the NEW YORK POST Marks." (Dkt. No. 21.) This Decision and Order provides the findings, reasoning, and conclusions that form the basis for the November 6 Order.

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I. FACTUAL BACKGROUND[4]

The New York Post is a daily newspaper, sold in many states throughout the United States, both at newsstands and by subscription. It purports to be the oldest, continuously published daily newspaper in the United States. The New York Post began publishing news on the web in 1996 and has done so continuously since then, using the website www.nypost.com (" NYPost.com" ). NYPost.com is one of the most-read newspaper websites in the United States, with approximately 98 million page views per month, and the website is also accessed by users outside of the United States.

NYP Holdings is the publisher of the New York Post and has owned the newspaper since 1993. NYP Holdings is the owner of a number of United States registered trademarks for its goods and services, including " NEW YORK POST" for daily newspapers, online newspapers, and news delivered to mobile devices, as well as non-fiction books, tee-shirts, and mugs (collectively, the " NEW YORK POST Marks" ), including:

1) NEW YORK POST, U.S. Trademark Reg. No. 1,526,818, dated February 28, 1989, for " Daily newspaper" (Pl. Mem., Gavenchak Decl. (" Gavenchak Decl." ), Ex. A, at 1);
2) NEW YORK POST, U.S. Trademark Reg. No. 2,213,076, dated December 22, 1998, for " Daily newspaper covering a variety of topics" (Gavenchak Decl. Ex. A, at 2);
3) NEW YORK POST, U.S. Trademark Reg. No. 3,639,502, dated June 16, 2009, for " Computer services, namely, providing an online newspaper featuring current local, national and international news and news analysis on a wide variety of topics, photographs, information about a wide variety of topics related to business, sports, gossip, entertainment, celebrities, celebrity life style, travel, fashion and clothing, health, coupons, games, and astrology, accessible via the Internet; publication of a daily electronic newsletter featuring a wide variety of topics related to current local, national and international news, business, sports, gossip, entertainment, travel, fashion, health and local weather, accessible via the Internet" (Gavenchak Decl. Ex. A, at 3);
4) NEW YORK POST, U.S. Trademark Reg. No. 3,652,365, dated July 7, 2009, for " Electronic transmission of newspaper and website content to mobile devices" (Gavenchak Decl. Ex. A, at 4);
5) NEW YORK POST, U.S. Trademark Reg. No. 4,056,288, dated November 15, 2011, for " Downloadable software in the nature of an application for obtaining news, information, commentary, and textual, audio, and visual content of the type found in general interest publications on mobile and stationary consumer electronic

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devices" (Gavenchak Decl. Ex. A, at 5);
6) NEW YORK POST, U.S. Trademark Reg. No. 3,098,182, dated May 30, 2006, for " Printed non-fiction books on a variety of topics" (Gavenchak Decl. Ex. A, at 6);
7) NEW YORK POST, U.S. Trademark Reg. No. 3,199,514, dated January 16, 2007, for " Tee shirts, sweatshirts" (Gavenchak Decl. Ex. A, at 7);
8) NEW YORK POST, U.S. Trademark Reg. No. 3,199,515, dated January 16, 2007, for " Tee shirts, fashion tops, sweatshirts, and underwear" (Gavenchak Decl. Ex. A, at 8);
9) NEW YORK POST, U.S. Trademark Reg. No. 3,357,150, dated December 18, 2 007, for " Mugs made from glass or ceramic" (Gavenchak Decl. Ex. A, at 9); and
10) NEW YORK POST, U.S. Trademark Reg. No. 3,319,743, dated October 23, 2007, for " Mugs made from glass or ceramic" (Gavenchak Decl. Ex. A, at 10).

NYP Holdings asserts that it and its predecessors " have continuously used the NEW YORK POST Marks or predecessor marks in connection with the New York Post's publishing activities since at least 1934." (Compl. 3.)

Additionally, seven of the NEW YORK POST Marks have become " incontestable" under 15 U.S.C. § 1065. These are U.S. Trademark Reg. Nos. 1,526,818, 2,213,076, 3,098,182, 3,199,514, 3,199,515, 3,319,743, 3,357,150, and Section 15 Declarations for these marks filed with the United States Patent and Trademark Office are annexed as Exhibit B to the Gavenchak Declaration.

Defendant Hoffenberg was the New York Post's publisher from January to March 1993. During that time he sought to purchase the New York Post, but was unable to complete the transaction. In 1993, during his brief stint as the publisher of the New York Post, Hoffenberg created a Delaware corporation called " New York Post Publishing Inc." (" the Hoffenberg Corporation" ). The Delaware Secretary of State voided the Hoffenberg Corporation's Certificate of Incorporation under Delaware Corporation Law § 502 in March 1995 because of the Hoffenberg Corporation's failure to file its annual franchise tax report and pay the franchise tax.

In 1997, Hoffenberg was sentenced to 20 years in federal prison for defrauding investors in his company, Tower Investors. Between 1995 and June 2014, the Hoffenberg Corporation did not exist and appears to have been completely inactive. However, on June 12, 2014 -- after his release from prison -- Hoffenberg filed a Certificate of Renewal with the Delaware Secretary of State to bring the Hoffenberg Corporation back into good standing. It appears that the Hoffenberg Corporation never offered any goods or services in commerce until September 2014.

On June 16, 2014, NYP Holdings's in-house counsel received a phone call from someone claiming to be a lawyer representing Hoffenberg. The lawyer communicated to NYP Holdings that Hoffenberg was intending to use the name " New York Publishing Inc.," and advised NYP Holdings that he was authorized to accept service on Hoffenberg's behalf, should NYP Holdings wish to sue Hoffenberg. On June 24, 2014, NYP Holdings's in-house counsel wrote a letter to the lawyer, copying Hoffenberg, informing them that Hoffenberg had no rights to the New York Post's name or trademark and stating that any usage of the name or trademarks

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would infringe NYP Holdings's intellectual property rights. On the same day, NYP Holdings received a response from the attorney stating that he did not represent Hoffenberg. NYP Holdings then sent another copy of the letter to Hoffenberg and spoke to Hoffenberg on the phone on the afternoon of June 24, 2014. NYP Holdings's counsel reiterated its " demand that Hoffenberg cease and desist from any use of the New York Publishing Inc. name." (Compl. 13.) NYP Holdings's counsel then communicated with Hoffenberg by email and phone. Hoffenberg continued to assert his intention to use the name " New York Post Publishing Inc."

On August 25, 2014, Defendants issued a press release titled " Business Man Steven J. Hoffenberg to Once Again Publish the New York Post Publishing Inc." (PI. Mem. 7.) The press release also stated that " [a]lthough [Hoffenberg] has spent a number of years away from the newspaper, his return is a welcomed one by many vital persons involved with NewsCorp." (Id.)

On September 16, 2014, NYP Holdings discovered a website at the address www.newyorkpostpublishinginc.com (" the Hoffenberg Website" ). The Hoffenberg Website features the words " New York Post Publishing Inc" at the top of the home page, with the words " New York Post" in large white block letters over a black background, and the words " Publishing Inc." in smaller, dark purple script letters. The Hoffenberg Website offers news content, with links to various articles within the Website, contains advertisements, and includes a representation of a 1993 New York Post cover with the headline " Hoffenberg Saves the Post." The Hoffenberg Website has a link to a " History of the New York Post," and contains a statement that " All of the assets inclusive of the trademarks and the website, New York Post, which ...


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