United
States District Court, E.D. Pennsylvania.
PLAYBOY ENTERPRISES, INC.
v.
UNIVERSAL
TEL-A-TALK, INC., Adult Discount
Toys, and Stanley Huberman.
No.
CIV. A. 96-6961.
Nov.
3, 1998.
MEMORANDUM
OF DECISION
McGLYNN.
Plaintiff, Playboy Enterprises, Inc.
("PEI") filed this action on October 2, 1996, alleging trademark
infringement and related causes of action under the Lanham Act, 15 U.S.C. § §
1114-1125 and Pennsylvania's anti- dilution law,
54 Pa.C.S.A. §
1124, et. seq. at defendant's web site "adult
sex.com/playboy." The Court entered a temporary restraining order and
later a consent decree enjoining the defendants use of PEI's trademarks.
Thereafter, the complaint was amended to include a counterfeiting claim under 15 U.S.C. § 1116(d).
The matter came on for a final hearing and
bench trial on October 8th and 13th, 1998.
Upon consideration of the evidence and the
briefs and arguments of counsel, the court makes the following
FINDINGS
OF FACT
1. Plaintiff Playboy Enterprises, Inc. (PEI),
is a Delaware corporation having offices at 730 Fifth Avenue, New York, New
York and a principal place of business in Chicago, Illinois.
2. Defendant Universal Tel-A-Talk, Inc. is a
Pennsylvania corporation having a principal place of business in Philadelphia,
Pennsylvania. Defendant Stanley Huberman is the president and sole shareholder.
3. Defendant Adult Discount Toys is a
business entity having a principal place of business in Philadelphia,
Pennsylvania and is owned by defendant Stanley Huberman. [FN1]
FN1. As
noted below, there is no evidentiary basis for holding Adult Discount Toys
liable for the events that are at issue here. Accordingly, Adult Discount Toys
will be dismissed. Hereinafter, the use of the word "defendants"
applies only to Universal Tel-A-Talk and Stanley Huberman.
4. Defendant
Stanley Huberman is a citizen and resident of the Commonwealth of Pennsylvania.
5. Since 1953, PEI has published Playboy magazine. Playboy magazine is read by
approximately 10 million readers each month and is published worldwide in 16
international editions.
6. Playboy magazine is known for its
display of erotic and provocative pictorials of PEI models and adult
entertainment material.
7. PEI and its licensees have sold a wide
variety of merchandise; such as, wearing apparel, cosmetics, sunglasses,
watches and other personal accessories under the trademark PLAYBOY, in
interstate commerce, including the Commonwealth of Pennsylvania.
8. PEI is the owner of a number of U.S.
trademark registrations for the mark PLAYBOY, including the following
registrations: U.S. Reg. No. 600,018 (monthly magazine); U.S. Reg. No.
1,040,491 (sunglasses); U.S. Reg. No. 1,308,905 (watches and clocks); U.S. Reg.
No. 1,328,611 (clothing articles, including ties, t-shirts and visors); U.S.
Reg. No. 1,320,822 (footwear); and U.S. Reg. No. 755,301 (cigarette lighters).
9. Over the years, PEI has sold merchandise
bearing the PLAYBOY trademark. Through its licenses, products bearing the
PLAYBOY trademark are sold throughout the United States and in more than 50
countries around the world. PEI and its licensees have and continue to spend
considerable time and money promoting the
PLAYBOY trademark. As a result of PEI's longstanding use of the PLAYBOY
trademark, the PLAYBOY trademark has become well known and has developed a
secondary meaning, such that the public has come to associate it with PEI.
10. In addition to the PLAYBOY trademark, PEI
also utilizes a Rabbit Head Design trademark (hereafter the "RABBIT HEAD
DESIGN") in connection with Playboy magazine and a wide variety of
goods sold by PEI and/or its licensees. Since 1954, PEI has used the RABBIT
HEAD DESIGN mark in connection with Playboy magazine. The RABBIT HEAD
DESIGN mark traditionally appears in the masthead of Playboy magazine. PEI has also used the
RABBIT HEAD DESIGN in connection with a wide variety of merchandise and
services.
11. PEI also owns a number of U.S. trademark
registrations for the RABBIT HEAD DESIGN mark, including U.S. Reg. No. 643,926
(monthly magazine); U.S. Reg. No. 871,533 (billfolds, pocket secretaries and
card cases); U.S. Reg. No. 1,058,294 (sunglasses); U.S. Reg. No. 759,207 (cuff
links, tie tacks, earrings, necklaces, key chains, bracelets and pins); U.S.
Reg. No. 728,889 (ties and men's and women's shirts); U.S. Reg. No. 1,276,287
(clothing articles, including hats, caps and t-shirts); and U.S. Reg. No.
764,819 (perfume).
12. In addition to the PLAYBOY trademarks and
RABBIT HEAD DESIGN, the mark
"BUNNY" has been registered by PEI with the United States
Patent and Trademark Office.
13. PEI is the
owner of U.S. Trademark Registration No. 810,555 for the mark BUNNY.
14. Over the years, PEI has sold merchandise
bearing the RABBIT HEAD DESIGN mark. Through its licensees, products bearing the
RABBIT HEAD DESIGN mark are sold throughout the United States and in more than
50 countries around the world. Products bearing the RABBIT HEAD DESIGN mark are
available worldwide by mail order catalog and through PLAYBOY specialty
boutiques, department stores, art galleries and museum shops. PEI and its
licensees have spent considerable time and money promoting products bearing the
RABBIT HEAD DESIGN mark nationwide and throughout the world. As a result of
PEI's longstanding use of the RABBIT HEAD DESIGN mark, the RABBIT HEAD DESIGN
mark has become famous and has developed significant goodwill and secondary
meaning, such that the public has come to associate it exclusively with PEI.
15. As a result of PEI's use and promotion of
the RABBIT HEAD DESIGN mark, the mark BUNNY has also become associated with PEI
in connection with adult entertainment services. Indeed, the RABBIT HEAD DESIGN
trademark is commonly referred to by the public as the "Playboy
Bunny."
16. The Internet is an international computer
"super-network" of over 15,000 computer networks which is used by 30
million or more individuals, corporations, organization and educational
institutions worldwide. Users of the Internet can access each others computers,
can communicate directly with each other (by
means of electronic mail or "e-mail"), and can access various types
of data and information. Each Internet user has an address, consisting of one
or more address components, which address is otherwise commonly referred to
within the Internet as a "domain" or "domain name."
17. Domain names serve as an address for
sending and receiving e-mail and for posting information or providing other
services. On the Internet, a domain name serves as the primary identifier of
the source of information, products or services. It is common practice for
companies to form Internet domain names by combining their trade name or one of
their famous trademarks as a prefix and their business category as a suffix.
The suffix ".com" (usually pronounced "dot com") identifies
a service provider as commercial in nature.
18. The domain name is one component of the
"Uniform Resource Locator"
("URL"). The URL may also include root directories and
subdirectories which serve as a guide to the contents of a Web site.
19. In August, 1994, PEI launched
http://www.playboy.com on the Internet on the World Wide Web. The website
currently receives approximately six million "hits" a day. The
trademark http://www.playboy.com offers access to some of PEI's copyrighted
images and other contents from Playboy magazine and other PEI
publications. Http://www.playboy.com has also been registered with the U.S.
Patent and Trademark Office.
20. PEI also operates
http://cyber.playboy.com, a subscription and pay per visit website (the "PLAYBOY CYBER
CLUB") which allows members access to individual PLAYMATE home pages,
video clips from PLAYMATE home pages, video clips from PLAYBOY home video and
PLAYBOY TV and contents of Playboy magazine.
21. Both http://www.playboy.com and
http://cyber.playboy.com are used by PEI to promote subscriptions to its
monthly Playboy magazine, to display erotic
pictorials of PEI models, and to advertise and sell PEI's merchandise and other
services under PEI's trademarks. PEI's websites prominently feature the PEI
trademarks PLAYBOY and RABBIT HEAD DESIGN, as well as photographs, articles of
interest, PEI merchandise, videos and subscription information for Playboy magazine. PEI's Website
contains electronic versions of Playboy magazine in that it displays
the contents of Playboy magazine on-line. An Internet
user is able to view the contents of Playboy magazine by visiting
www.playboy.com or the PLAYBOY CYBER CLUB.
22. Defendant Universal Tel-A-Talk, Inc.
created and is maintaining several Internet World Wide Web sites which may be
accessed throughout the United States, including the Commonwealth of
Pennsylvania.
23. On or about October 2, 1996, PEI learned
that Universal-Tel-A-Talk, Inc. was using PEI's registered trademarks PLAYBOY
and BUNNY in conjunction with their website to advertise on-line a collection
of photographs, which both plaintiff and defendant describe as "hard
core." However, neither side has defined
that term, at least on this record, except as a modifier of the term sexually
explicit photographs.
24. Defendant Universal Tel-A-Talk, Inc.'s
website advertises and offers a subscription service called "Playboy's
Private Collection" (located at http://www.adult-sex.com (hereafter
"Defendant's website") for a charge of $3.95 per month, which
features hard core photographs. The PLAYBOY trademark is prominently featured
in defendants' website. Defendants also used the term "Bunny" on the
navigational bar of the introductory page of the defendants' website. The
navigational bar serves as a table of contents and appears on the bottom of the
introductory screens and web pages. When a user clicks onto one of six
"Bunny" segments of the navigational bar on the introductory page,
the user becomes connected to another level of hard core on-line services
offered by Defendants.
25. A subscriber to defendants'
"Playboys Private Collection" service is greeted by a "home
page" which is the equivalent of the cover and table of contents page of a
magazine in that it displays the name of the site and a menu of information
that is available for review. A subscriber to defendants' Playboy subscription
service, upon assessing the URL "adult- sex.com/playboy/members" is
welcomed by defendants' home page which reads: "Welcome to PLAYBOYS
PRIVATE COLLECTION." Defendants' website http://www.adult- sex.com is an
on-line collection of "hard core" photographs sold under the PLAYBOY and BUNNY trademarks and portrayed as an
extension of PEI's Playboy magazine. Defendants' unlawful
use of the PLAYBOY trademark also appears at least twice on every printed web
page. "Playboys Private Collection" appears on the upper left-hand
corner and the URL "adult-sex.com/playboy/members/pictures" appears
at the upper right-hand corner.
26. Subscribers can "click" onto a
portion of the home page which reads: "Let me see the pictures in Playboys
Private Collection" and obtain a lengthy list of hard core photographs on
a variety of topics which may be viewed on screen, downloaded to disk or
printed.
27. Defendants also provided an electronic
mail address which utilizes the PLAYBOY trademark in the text of defendants'
website. The home page of defendants' service invites subscribers to "Send
E-mail to Playboy @adult- sex.com."
28. Defendant has also "linked"
their adult-sex website to PEI's website at
"Playboy.com." A "link" is a connection of one
website to another.
29. Defendants are not now and never have
been authorized by PEI to use the PLAYBOY trademark or the BUNNY trademark in
connection with any business or service.
30. Defendants consented to the entry of a
Preliminary Injunction on Consent on November 29, 1996.
31. Defendants had 1,363 subscribers to its
adult-sex.com website between July 13.1990
and October 12, 1996.
32. Defendants used the terms PLAYBOYS
PRIVATE COLLECTION and PLAYBOY in connection with the adult-sex.com website for
approximately three (3) months.
33. Defendant Huberman personally made the
decision to use the term PLAYBOY in connection with the adult-sex.com website
and authorized its implementation in the website. Defendant Huberman personally
made the decision to use the term BUNNY in connection with the adult-sex.com
website and authorized its implementation in the website.
34. Defendant Universal Tel-A-Talk was
on-line for only four months-- July 1996 to October 1996.
35. The contents of Plaintiff's website
during this period of time did not display the words "Registered in U.S.,
Patent and Trademark Office" or "Reg.-- U.S. Pat & TM Off"
or the letter R enclosed in a circle.
36. Plaintiff did not prove any actual loss
or injury.
37. Defendant Universal Tel-A-Talk lost money
on the operation of its website.
DISCUSSION
This is a civil action for trademark
infringement, false designation of origin, dilution and trademark
counterfeiting under the Trademark Act of 1946, as amended, 15 U.S.C. § §
1051-1127; trademark infringement and unfair
competition under the Commonwealth of Pennsylvania, and dilution under the
statutory law of Pennsylvania, 54 Pa.C.S.A. §
1124 et seq.
PEI has
alleged infringement of the PLAYBOY trademark under Section 32 of the Lanham
Act (Count I), Section 43(a) of the Lanham Act (Count II) and the common law of
the Commonwealth of Pennsylvania (Count IV). The test for infringement is the
same for each count, namely, whether the alleged infringement creates a
likelihood of confusion. See Scott Paper Co. v. Scott's Liquid Gold, 589 F.2d 1225 (3d Cir.1978).
In order to succeed on the merits, a
plaintiff must establish that: (1) the marks are valid and legally protectible;
(2) the marks are owned by the plaintiff; and (3) the defendants' use of the
marks to identify goods or services is likely to create confusion concerning
the origin of the goods and services." Opticians Ass'n v. Independent Opticians, 920 F.2d 187, 192 (3d Cir.1990).
The trademark PLAYBOY has attained
incontestable status pursuant to 15 U.S.C. §
1065. PEI's ownership of incontestable U.S. Registrations for
the PLAYBOY trademark constitutes prima facie evidence of PEI's ownership of
the PLAYBOY trademark and the validity of the mark. Optician's Ass'n v. Independent Opticians, 920 F.2d at 194.
In determining whether a likelihood of
confusion exists, the court may take into account
(1) the degree of similarity between the owner's mark and the alleged
infringing mark; (2) the strength of owner's mark; (3) the price of the goods and other factors indicative of the care and
attention expected of consumers when making a purchase; (4) the length of time
the defendant has used the mark without evidence of actual confusion arising;
(5) the intent of the defendant in adopting the mark; (6) the evidence of
actual confusion; (7) whether the goods, though not competing, are marketed
through the same channels of trade and advertised through [sic] the same media;
(8) the extent to which the targets of the parties' sales efforts are the same;
(9) the relationship of the goods in the minds of the public because of the similarity
of function; (10) other facts suggesting that the consuming public might expect
the prior owner to manufacture a product in the defendant's market.
Scott Paper Co. v. Scott's Liquid Gold, supra at 1229.
Defendants' use of the words
"Playboy" and "Bunny" in their website and in the identifying
directories of defendants' URL's are identical to PEI's duly registered
trademarks PLAYBOY and BUNNY. PEI's registered trademarks have previously been
adjudicated as very strong. See, Playboy Enterprise, Inc. v. Chuckleberry Pub., Inc., 687 F.2d 563 (2d Cir.1982). Suggestive
marks are entitled to protection without proof of secondary meaning. See
e.g., Dominion Bankshares Corp. v. Devon Holding Co., Inc., 690 F.Supp. 338, 345 (E.D.Pa.1988); American Diabetes Assn. v. National Diabetes Ass'n, 533 F.Supp. 16, 214 U.S.P.Q. 231, 233 (E.D.Pa.1981).
Even if secondary meaning were required, PEI
has established that the PLAYBOY trademark
and the RABBIT HEAD DESIGN trademark for adult entertainment goods and services
have become famous, and have acquired significant secondary meaning, such that
the public has come to associate these trademarks with PEI.
Defendants' intentionally adopted PLAYBOY and
BUNNY trademarks in an effort to capitalize on PEI's established reputation in
the PLAYBOY and RABBIT HEAD DESIGN marks. This is evidenced by defendant's
establishment of a "link" between their website and PEI's actual
PLAYBOY website at "Playboy.com" and their appropriation of the words
"playboy" and "Bunny" to advertise their own on-line
service.
Evidence of actual confusion is not required.
It has long been recognized that because evidence of confusion is notoriously
difficult to obtain, it is not necessary to find a likelihood of confusion. See,
e.g., Coach Leatherware Co. v. Ann Taylor, Inc., 933 F.2d 162 (2d Cir.1991); Lois Sportswear U.S.A., Inc. v. Levi Strauss &
Co., 631 F.Supp. 735, 743 (S.D.N.Y.), aff'd,
799 F.2d 867 (2d Cir.1986); Brockum Co. v. Blaylock, 729 F.Supp. 438, 445 (E.D.Pa.1990) (lack
of evidence of actual confusion is not a bar to injunctive relief). PEI and
defendant market their services through the same channel of trade: the
Internet. The consuming public is likely to believe the PEI is connected with
defendants' hard core.
With respect to the dilution claim, dilution
refers to the lessening of a mark's distinctiveness. Factors to be considered by
the Court are: (1) similarity of the marks;
(2) similarity of the products covered by the marks; (3) sophistication of
customers; (4) predatory intent; (5) renown of senior mark; (6) renown of the
junior mark; (7) the duration and extent of advertising of the mark; (8) the
geographical extent of the trading area in which the mark is used; and (9) the
nature and extent of use of the mark by third parties." 15 U.S.C. §
1125(c)(1); Wawa, Inc. v. Haaf, 40 U.S.P.Q.2d 1629 (E.D.Pa.1996) (citing Mead Data, Inc. v. Toyota Motor Sales, 875 F.2d 1026, 1035 (2d Cir.1989) (Sweet,
J. Concurring)). Applying the foregoing factors, the Court concludes that PEI
has established its dilution claims with respect to the PLAYBOY trademark.
PEI has also alleged that defendants'
activities constitute counterfeiting of PEI's registered trademark PLAYBOY in
violation of 15 U.S.C. §
1116(d). In order to prove counterfeiting, a plaintiff must
establish that the defendant (1) infringed a registered trademark in violation
of 15 U.S.C. §
1114(1)(a). (2) intentionally use the trademark knowing it
was counterfeit or was willfully blind to such use. 15 U.S.C. § §
1116(d), 1117(b); Nintendo of America, Inc. v.
Brown, No. 95-15954, 1996 U.S.App. LEXIS 21373 (9th Cir. Aug. 12, 1996); Babbitt Electronics, Inc. v. Dynascan Corporation, 38 F.3d 1161, 1181 (11th Cir.1994); Interstate Battery System v. Wright, 811 F.Supp. 237, 244-45 (N.D.Tex.1993).
"Counterfeiting is the act of producing
or selling a product with a sham trademark
that is an intentional and calculated reproduction of the genuine
trademark." 3 J. THOMAS McCARTHY, McCARTHY ON TRADEMARKS § 25:10 (3d ed.1997). A "counterfeit
mark" means:
a counterfeit of a mark that is registered on the principal register in
the United States Patent and Trademark Office for such goods or services sold,
offered for sale, or distributed and that is in use, whether or not the person
against whom relief is sought knew such mark was so registered.
15 U.S.C. §
1116(d)(1)(B)(I); see Electronic Laboratory Supply Co. v.
Motorola, Inc., Civ. No. 88-4494, 1989 U.S. Dist. LEXIS 16475, *6 (E.D.Pa.
Sept. 20, 1989).
A "counterfeit" is a "spurious
mark which is identical with, or substantially indistinguishable from, a
registered mark." 15 U.S.C. §
1127; Babbitt Electronics, supra at 1181.
Defendant Huberman contends that he cannot be
held personally liable because he was acting as an officer of defendant
Universal Tel-A-Talk and that it is defendant Universal Tel-A-Talk which
committed the infringing acts complained of by PEI. However, the law is clear
that "[a] corporate officer is individually liable for the torts he
commits and cannot shield himself behind a corporation when he is an actual
participant in the tort." Donsco, Inc. v. Casper Corp., 587 F.2d 602, 606 (3d Cir.1978).
This principle is applicable in cases brought
under the Lanham Act. See, e.g., Donsco, 587 F.2d at 606 (unfair competition); Max Daetwyler Corp. v. Input Graphics, Inc., 541 F.Supp. 115 (E.D.Pa.1982) (false
advertising); Polo Fashions, Inc. v. BDB, Inc., 223 U.S.P.Q. 43, 44 (D.S.C.1983)
(counterfeiting).
The liability of a corporate officer who
actively participates in the infringing acts is "distinct from the
liability resulting from the 'piercing of the corporate veil' as that term is
commonly used." Donsco, 587 F.2d at 606; BDB, Inc., 223 U.S.P.Q. at 44. Moreover, "it is
immaterial whether the officer knows that his acts will result in an
infringement." Polo Fashions, Inc. v. Branded Apparel Merchandising,
Inc., 592 F.Supp. 848, 652-53 (D.Mass.1984).
The defendant Huberman actively participated
in the infringing acts. Although Huberman did not physically type the html code
for the website, he did make the decision to use the mark PLAYBOY and BUNNY and
approved of all work done by Mr. Merkel on the website. In addition, Huberman
approved all requests for subscriptions to the PLAYBOYS PRIVATE COLLECTION
service.
The Lanham Act provides that a prevailing
plaintiff who establishes infringement of its registered trademark is, subject
to the principles of equity, entitled to recover (1) defendant's profits; (2)
plaintiff's actual damages; and (3) costs of the action. 15 U.S.C. §
1117(a); see Ferrero U.S.A., Inc. v. Ozak trading, Inc., 952 F.2d 44, 47 (3d Cir.1991); Automated
Tool & Connector, Co. v. Amphanol Corp.,
Civ. No. 96-3249, 1997 U.S. Dist. LEXIS 22720, *l (D.N.J. Nov. 17, 1997)
(permitting accounting of profits even when defendant is "innocent"
infringer). Here, defendants did not have any profits and plaintiff has failed
to prove actual damages.
Nevertheless, when a violation of 15 U.S.C. §
1116(d) is involved, plaintiff may elect to recover statutory
damages. Statutory damages for counterfeiting are (1) not less than $500 or
more than $100,000 per counterfeit mark per type of goods or services sold; or
(2) if the Court finds that the use of the counterfeit mark was willful, not
more than $1,000,000 per counterfeit mark per type of goods or services sold. 15 U.S.C. §
1117(c).
Defendants' use of PEI's registered trademark
PLAYBOY in connection with the sale and offering for sale of adult
entertainment images on the PLAYBOYS PRIVATE COLLECTION portion of defendant's
adult-sex.com website is a counterfeit use under 15 U.S.C. § §
1116(d) and 1117(c) entitling plaintiff to an award of
statutory damages.
"Trademark policies are designed to '(1)
to protect consumers from being misled as to the enterprise, or enterprises,
from which the goods or services emanate or with which they are associated; (2)
to prevent an impairment of the value of the enterprise which owns the
trademark; and (3) to achieve these ends in a manner consistent with the
objectives of free competition.' " Intel Corp. v. Terabyte International, Inc., 6 F.3d 614, 618 (9th Cir.1993) (quoting Anti-Monopoly, Inc. v. General Mills Fun Group, 611 F.2d 296, 300-01 (9th Cir.1979).
To the extent this discussion contains findings
of fact not specifically mentioned under that heading, they are to be regarded
as though they were.
Accordingly, the Court arrives at the
following
CONCLUSIONS
OF LAW
1. This court has jurisdiction over the
parties and the subject matter of this action. 15 U.S.C. §
1121, 28 U.S.C. §
1331, 28 U.S.C. §
1332 and 28 U.S.C. §
1338.
2. Defendants have infringed on Plaintiff's
PLAYBOY trademark.
3. Defendants have violated the anti-dilution
provision of the Lanham Act, 15 U.S.C. §
1125(c) and Pennsylvania's anti-dilution statute, 54 Pa.C.S. §
1125.
4. Defendants' activities constituted
counterfeiting of plaintiff's registered trademark in violation of 15 U.S.C. §
1116(d).
5. PEI is entitled to judgment against
Universal Tel-A-Talk and Stanley Huberman.
6. Defendant Adult Discount Toys is entitled
to Judgment against plaintiff PEI.
7. PEI is entitled to recover statutory
damages, reasonable counsel fees and costs.
8. PEI is
entitled to an injunction permanently enjoining Universal Tel-A-Talk and
Stanley Huberman from using the PLAYBOY trademark as more specifically spelled
out in a separate order filed herewith.
9. The court awards statutory damages in the
amount of $10,000.
10. Plaintiff is entitled to recover
reasonable attorney's fees.
INJUNCTION
AND NOW, this day of, 1998, in accordance
with the Findings of Fact and Conclusions of Law filed herewith, it is hereby
ORDERED:
1. Defendants, Tel-A-Talk and Stanley
Huberman, their agents, servants, employees, successors, attorneys, and all
those subject to their control are hereby ENJOINED from using the PLAYBOY
trademarks or any colorable facsimile thereof in connection with their
business, products, services or Web site and, from providing a link to
Plaintiff's Web site "Playboy.com."
2. Defendants, their agents, employees,
successors, attorneys and all persons in active concert and participation with
it or them, are hereby ENJOINED from:
(a) using in any manner the PLAYBOY Trademarks or any term or terms
likely to cause confusion therewith as Defendants' domain name, directory, or
other such computer address, as the name of their Web site service, on their
home page, on computer diskettes or in connection with the retrieval of data or
information or on other goods or services, or in connection with the
advertising or promotion thereof so long as such goods or services do not
emanate from or originate with PEI;
(b) using in any manner the PLAYBOY Trademarks in connection with
Defendants' goods or services in such a manner that is likely to create an
erroneous belief that said goods or services are authorized by, sponsored by,
licensed by or are in some way associated with PEI;
(c) disseminating, using or distributing any Web site pages or other
promotional materials whose appearance so resembles the Web site pages used by
PEI as to create a likelihood of confusion, mistake or deception; or
(d) linking Defendants' Web site or services to PEI's Web site at
"Playboy.com";
(e) otherwise engaging in any other acts or conduct which would cause
consumers to erroneously believe that Defendants' goods or services are somehow
sponsored by, authorized by, licensed by, or in any other way associated with
PEI.
3. Defendants, their officers, agents, servants,
employees, attorneys, parent companies, subsidiaries and related companies and
all persons acting for, with, by, through or under them, are ENJOINED from
diluting the distinctive quality of the PLAYBOY Trademarks.
ORDER
AND NOW, this day of NOVEMBER, 1998, it is
hereby
ORDERED that Judgment is entered in favor of
the plaintiff Playboy Enterprises, Inc. and
against the defendants Universal Tel-A-Talk, Inc. and Stanley Huberman in the
amount of $10,000, jointly and severally.
It is further ORDERED that Judgment is
entered in favor of the defendant Adult Discount Toys and against the plaintiff
Playboy Enterprises, Inc.