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Primedia Intertec Corp. v. Technology Marketing Corp.
Citations: 35 F. Supp. 2d 809; 50 U.S.P.Q. 2d (BNA) 1079; 1998 U.S. Dist. LEXIS 20501; 1998 WL 918321Docket: CIV. A. 98-2384-KHV
Court: District Court, D. Kansas; November 6, 1998; Federal District Court
In the case of Primedia Intertec Corporation v. Technology Marketing Corporation, the United States District Court in Kansas addressed a motion for a preliminary injunction filed by Primedia on August 26, 1998. Primedia sought to restrain Technology Marketing from using the trademark "Internet Telephony" or any similar designation containing "Telephony." The court ultimately denied this motion, providing a detailed analysis of the facts surrounding the case. Primedia publishes approximately 85 trade magazines, with "Telephony," in continuous publication since 1901, being its most successful. This magazine targets professionals in the telecommunications industry and is provided free to around 65,000 subscribers. Primedia holds U.S. trademark registrations for "Telephony" (No. 1,921,912), "Global Telephony" (No. 1,940,519), and "Telephony Outside Plant" (No. 1,939,273), though it does not plan to republish the latter at this time. In addition to the print magazine, Primedia developed an online version called "Internet Telephony," which has similar content to the print edition but includes unique materials as well. The webzine was launched in July 1996 and has experienced significant growth in readership. Primedia has actively promoted this webzine through various marketing channels, including advertisements in the print magazine, committing substantial ad space valued at approximately $400,000, and featuring the webzine URL prominently. The court's decision considered these facts but ultimately did not grant Primedia's request for an injunction. By July 1998, the webzine 'Internet Telephony' experienced a significant increase in traffic, receiving 19,500 daily hits, up from 1,100 in June 1996. In August 1998, it recorded 1,500 daily sessions compared to just 75 sessions in June 1996. The plaintiff anticipates $100,000 in advertising revenue for 1998, projected to rise to $400,000 in 1999, with the webzine serving as an independent profit center. An application to register the 'Internet Telephony' mark was filed in January 1998 and is currently pending, describing the webzine as a source of information in public network telecommunications via the internet. The defendant, which has a history of publishing trade magazines for emerging industries, launched its own magazine titled 'Internet Telephony' in February 1998, after determining that existing publications did not adequately cover the growing field of internet telephony. The defendant was unaware of the plaintiff's webzine until October 1997 but chose to keep the name. Before publishing, the defendant rented parts of a mailing list from the Telephony magazine to target potential subscribers, presenting itself as CTI rather than as Internet Telephony. The magazine's cover features the title prominently and includes a URL that directs to the defendant's homepage, which showcases all of its publications. The defendant successfully registered 'Internet Telephony' on the Supplemental Register as a trademark for telecommunications magazines on September 8, 1998. Additionally, the plaintiff has received inquiries from individuals confused about the publication's authorship, mistakenly believing it to be affiliated with them. Defendant has not encountered any confusion between its products and those of the plaintiff. A preliminary injunction aims to maintain the current situation until the case is resolved, but it is considered an extraordinary remedy not granted as a matter of right. The moving party must meet specific requirements to obtain such relief, which include demonstrating irreparable injury, that the injury outweighs potential harm to the defendant, that the injunction aligns with public interest, and a substantial likelihood of success on the merits. Courts are particularly cautious about three types of preliminary injunctions: those that disrupt the status quo, those that are mandatory rather than prohibitory, and those that provide nearly all the relief sought at trial. For these categories, a heavier burden of proof is required. In this case, the requested injunction is disfavored because it would disrupt the existing status quo—defined by the real relationships between the parties rather than legal rights. The defendant has been publishing the contested magazine since February 1998, prior to the plaintiff's lawsuit in August 1998. Enjoining the defendant from publishing the magazine would disturb this status quo. Additionally, the injunction sought would effectively grant the plaintiff most of the relief it is seeking, necessitating the application of the heavier burden of proof. The plaintiff's request to restrict the use of specific terms would compel the defendant to stop publishing or change its magazine's name, fulfilling a significant portion of the plaintiff's claims. Plaintiff aims to prevent defendant from using the name "Internet Telephony" through a preliminary injunction, necessitating a demonstration that the four-factor test favors plaintiff significantly. The claims are based on trademark infringement and unfair competition under the Lanham Act and Kansas common law. To succeed, plaintiff must establish ownership of a valid trademark and the likelihood of consumer confusion due to the similarity of the products. Plaintiff has registered trademarks for "Telephony," "Global Telephony," and "Telephony Outside Plant," and seeks to enjoin defendant from using any mark that includes "Telephony." Additionally, despite defendant's registration on the Supplemental Register for "Internet Telephony," plaintiff contends it has rights to both "Telephony" marks and that defendant's use infringes them. The court must evaluate whether plaintiff can demonstrate a substantial likelihood that either mark is valid and protectable. Marks are categorized as arbitrary, suggestive, descriptive, or generic, with only the first two receiving trademark protection inherently. Descriptive marks require proof of acquired distinctiveness for protection. The determination of the validity of "Internet Telephony" hinges on these classifications and the potential for consumer confusion. The plaintiff must demonstrate that "Internet Telephony" qualifies as a protectable trademark. The defendant references several cases where periodical titles were deemed generic, arguing that most courts categorize magazine titles as descriptive rather than indicative of a particular class. The defendant cites instances such as "PERSONAL FINANCE," "AVIATION," and "TRAVEL," which have been recognized as descriptive titles. Additionally, titles that encompass both a specific topic and a class of publication, like "VIDEO BUYERS GUIDE" and "CONSUMER ELECTRONICS MONTHLY," have been classified as generic. The plaintiff contends that the appropriate generic terms for its product are "webzine," "web magazine," or "publication," asserting that "Internet Telephony" is descriptive, not generic. The plaintiff must also prove that its mark has acquired secondary meaning linking it to a single source, as established in "Beer Nuts I." The plaintiff claims that any secondary meaning associated with "Telephony" has naturally transitioned to "Internet Telephony," but fails to provide supporting case law for this theory. Furthermore, the plaintiff invokes the "family of marks" doctrine, which necessitates showing a collection of marks centered around a common characteristic that could lead to public confusion regarding the defendant's product. This doctrine has been established in cases involving marks like those used by McDonald's and Toys R Us. While the Tenth Circuit has not yet addressed this doctrine, the Federal Circuit defines a trademark family as a group of marks sharing a recognizable common characteristic, leading the public to associate both the individual marks and the commonality with the trademark owner. Establishing a family of marks requires recognition among consumers that the common characteristic signifies a common source of goods. The plaintiff claims a family based on the 'Telephony' name and must demonstrate that this name leads consumers to associate any publication using it with a common origin. The family of marks includes Telephony, Global Telephony, Telephony Outside Plant, and Telephony's Buyer's Guide; however, Telephony Outside Plant is no longer published separately. The defendant introduces evidence of competing magazines using the 'telephony' name, indicating a lack of distinctiveness for the plaintiff's marks. The plaintiff must also prove that "Internet Telephony" has developed its own secondary meaning, distinct from the defendant's publication, prior to the defendant's launch. Several factors are evaluated to determine secondary meaning, including consumer surveys, advertising efforts, unsolicited media coverage, usage duration, and sales volume. The plaintiff invested $400,000 in advertising for its webzine, promoting it extensively in Telephony and at trade shows. While it received some unsolicited media coverage, evidence of consumer feedback is limited. The plaintiff began its webzine in June 1996, while the defendant's magazine started in February 1998. Despite growth in readership, the plaintiff has not demonstrated sufficient circulation or secondary meaning before the defendant's publication began, nor has it shown that the webzine has gained secondary meaning among advertisers, its primary revenue source. Plaintiff projects advertising revenue of over $100,000 in 1998 and $400,000 in 1999 but lacks evidence of revenue for the webzine prior to February 1998. There is no indication that the webzine has acquired secondary meaning among advertisers, and plaintiff has not demonstrated a substantial likelihood that consumers associate the term "Internet Telephony" with its brand. Although plaintiff has made efforts to promote the webzine, evidence of public recognition is weak, with only two instances of media coverage and no consumer testimonials provided. Regarding the likelihood of confusion, even if the mark had gained secondary meaning, plaintiff has not shown a substantial likelihood of success. The Tenth Circuit outlines factors for assessing confusion, including the similarity of marks, intent of the alleged infringer, and the degree of care exercised by consumers. The court examines similarity in terms of sight, sound, and meaning. While both the plaintiff's webzine and the defendant's magazine share the same name, they are visually distinct: the webzine is exclusively online while the magazine is print-based. The logos and appearances of the products differ significantly; the webzine features lowercase italics and a dark background, whereas the magazine has bold colors and a prominent company logo. Thus, the products are distinguishable both visually and in terms of meaning, reducing the likelihood of consumer confusion. Plaintiff claims that the term "Internet Telephony" is ambiguous as used by both parties; however, there is a clear distinction recognized by consumers. Plaintiff refers to the Internet version of its print magazine, Telephony, while defendant uses the term for a print magazine focused on the IT field. Consumers searching for the Internet version of Telephony would not confuse it with defendant's print magazine, suggesting minimal likelihood of confusion. Regarding defendant's intent in adopting its mark, the law infers likelihood of confusion when there is intent to mislead. The court considers whether the defendant intended to benefit from the plaintiff's goodwill. Although defendant was aware of the plaintiff's product, evidence indicates that it did not intentionally infringe on the plaintiff's mark. Defendant chose its magazine's name without prior knowledge of the plaintiff's webzine and did not deliberately select a similar mark. Testimony from defendant's publisher affirmed that there was no intention to compete directly with the plaintiff, and the subject matter of their magazines differed. Plaintiff argues that defendant's acquisition of its mailing list suggests intent to benefit from its goodwill. However, the manner in which defendant identified itself during this process raises questions about intent. Although plaintiff perceives this as an attempt to disguise their true identity, it does not conclusively indicate that defendant aimed to mislead consumers. Additionally, plaintiff asserts that defendant's attempt to reserve the URL internet-telephony.com implies deceptive intent. However, both parties sought URLs similar to their respective magazine names, and defendant's unsuccessful attempt does not constitute evidence of intent to confuse. The content of both websites further fails to suggest any malicious intent on the part of the defendant. Defendant's website functions as a corporate home page, providing information on its products and magazines, while plaintiff's site is a webzine focused on telecommunications articles. The distinction between the two indicates a lack of intent by the defendant to mislead consumers, as they could have created a webzine instead. The differences in their products weaken the inference of intent to misrepresent. Both parties employ similar marketing strategies targeting the same audience of telecommunications professionals and related companies, with evidence suggesting they share a common target market. However, while the plaintiff argues that both parties target the same advertisers, the evidence pertains only to advertisers in the plaintiff's magazine, lacking proof of overlap with the defendant’s advertisers. The plaintiff claims substantial overlap in the subject matter of their offerings, but the defendant’s focus on IT as a subset of telecommunications means the overlap is limited. The plaintiff covers a broad range of telecommunications topics, including IT, but does not exclusively focus on IT issues, leading to only partial overlap in content. Consumers are expected to use the products differently: those seeking comprehensive telecommunications information will look for the plaintiff's webzine, while those interested in IT will seek the defendant's magazine. Even if consumers mistakenly encounter the defendant's website, it is unlikely they would confuse the defendant's print magazine with the plaintiff's webzine, as the defendant does not provide magazine articles online. Additionally, the degree of care exercised by consumers in this field has not been objectively documented. Consumers typically exercise less care when purchasing low-cost items, and in this case, both parties offer their products for free, relying on advertising revenue. The plaintiff argues that advertisers, who frequently change, do not carefully select telecommunications magazines for advertising. However, the only evidence presented for this claim is the opinion of the plaintiff's executive, lacking credible support indicating that advertisers fail to distinguish between the plaintiff's webzine and the defendant's magazine. Actual consumer confusion is considered the best evidence of likelihood of confusion. The plaintiff provides two emails from confused consumers who mistakenly believed the defendant produced the plaintiff's webzine, but fails to show evidence of confusion among consumers searching for its webzine or among advertisers. Notably, the plaintiff anticipates a 400% increase in advertising revenue, which undermines the claim of confusion. While actual confusion should be weighed significantly, the isolated instances provided do not constitute compelling evidence. The strength of the plaintiff's trademark is a critical factor. A strong trademark is rarely used by others, while a weak trademark is commonly utilized. The defendant presents evidence of extensive use of the term "Internet Telephony" in various contexts, indicating a weak mark for the plaintiff. Even if the plaintiff argues that "Telephony" is a strong mark, the prevalence of its use by third parties, including publications, suggests a low likelihood of proving a strong mark. Overall, the Court concludes that the plaintiff has not demonstrated a substantial likelihood of success on its claims, noting similarities in target audience and marketing methods while pointing out the minimal evidence of actual confusion. The substantial differences between the plaintiff's and defendant's products outweigh any similarities. Aside from pronunciation, the products utilize different media, are visually distinct, and are assigned different meanings by the parties involved. Although there is some overlap in subject matter, the topics covered are different. The evidence does not suggest that the defendant intended to benefit from the plaintiff's goodwill, nor has the plaintiff provided objective evidence regarding advertiser care or actual confusion among them. The plaintiff's "Internet Telephony" mark is weak due to extensive third-party use of the term, failing to demonstrate a substantial likelihood of success in proving confusion with the defendant's magazine. The plaintiff seeks an injunction not only against the use of "Internet Telephony" but also against any mark incorporating "Telephony." For such a broad injunction, the plaintiff must show a likelihood of proving confusion between "Internet Telephony" and its "Telephony" mark, which it does not argue. The court cannot find a substantial likelihood of success regarding infringement of the "Telephony" mark, as the names of the magazines are not sufficiently similar, and their visual presentations differ significantly. The plaintiff's "Telephony" magazine covers the entire telecommunications field, while the defendant's "Internet Telephony" is focused specifically on IT topics. Despite marketing to similar audiences, the products serve different purposes, with readers seeking specific information from either magazine. The plaintiff fails to provide objective evidence that advertisers would not exercise sufficient care in distinguishing between the two, nor is there evidence of actual confusion between the magazines. Evidence presented by the plaintiff indicates that some advertisers work with both the plaintiff's and defendant's publications, but there is no proof that this has resulted in confusion among readers or advertisers leading to a shift towards the defendant's magazine. The defendant counters with substantial evidence demonstrating that third parties frequently use the term "telephony," implying that the plaintiff's trademark is weak. The factors considered do not indicate a likelihood of confusion, and the plaintiff is unlikely to sufficiently prove trademark infringement regarding its Telephony mark or Internet Telephony mark. Regarding irreparable harm, the plaintiff claims that the defendant’s actions have caused irreparable injury due to trademark infringement. However, trademark infringement generally causes irreparable harm only if the mark is strong. Since the plaintiff has not shown a strong likelihood of succeeding in its claims, the court cannot presume irreparable injury. The plaintiff’s evidence of harm includes instances of consumer confusion and overlapping advertisers; however, these instances do not demonstrate actual harm to the plaintiff. Confusion examples involve consumers mistakenly reaching the plaintiff's webzine while seeking the defendant's magazine, indicating potential harm to the defendant instead. Furthermore, the plaintiff has not substantiated claims of lost advertisers or decreased advertising revenue due to this overlap, and its projections indicate an increase in revenue and readership. Additionally, the defendant argues that the plaintiff's seven-month delay in filing suit undermines claims of irreparable harm, as such a delay questions the urgency for injunctive relief. The court finds that the plaintiff has not provided convincing evidence that it would suffer irreparable harm without an injunction against the defendant. The balance of hardships analysis concludes that the plaintiff has not demonstrated that the defendant would suffer harm from an injunction, as changing its name is feasible. The plaintiff claims that the defendant's magazine undermines its goodwill, yet evidence shows no loss in advertising or readership for the plaintiff's products. The plaintiff anticipates increased revenue and readership, contradicting claims of harm. The defendant argues that a name change would be disruptive and costly, but lacks supporting evidence. The Court finds that a name change would impose greater disruption on the defendant than any harm the plaintiff has shown it would face. Preserving the status quo is deemed less harmful than enforcing an injunction at this stage. Regarding public interest, the plaintiff contends that trademark protection is essential for consumer awareness; however, the Court has determined there is minimal likelihood of confusion between the products. Thus, it is in the public interest to allow the defendant to continue publication until the trial. The plaintiff has failed to meet the criteria for a preliminary injunction, leading to the denial of the plaintiff's motion for such an injunction. The Court also partially granted the defendant's motion to strike references to survey evidence from the plaintiff's post-hearing brief, allowing the evidence for limited purposes only. The record is unclear on whether the defendant adopted the name "Internet Telephony" prior to or after the plaintiff's introduction of its webzine with the same name in June 1996. The plaintiff does not consistently assert that the defendant infringed on both marks, at times treating them as one, although they are distinct and should be assessed separately. The defendant holds a supplemental registration for its mark but contends that the plaintiff's mark is generic and thus unprotectable, which paradoxically suggests the potential invalidity of its own trademark. The plaintiff raised this argument in its pre-hearing motion but omitted it in the post-hearing brief. Additionally, the plaintiff claims that its survey evidence qualifies under the residual exception to the hearsay rule and as a public record. However, the court finds that the plaintiff has not established a sufficient foundation to meet the criteria for either exception to the hearsay rule.