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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Playboy Enterprises, Inc. v. Universal Tel-A-Talk, Inc., et al

Civ. Action No. 96-6961, 1998 U.S. Dist. Lexis 17282 (E.D. Pa., November 2, 1998)

Defendant Universal Tel-A-Talk, Inc. ("Universal") set up a subscription website which offered users access to "hard core" erotic pictures. In an effort to capitalize on the famous trademarks of plaintiff Playboy Enterprises Inc. ("Playboy"), defendant titled its site "Playboy's Private Collection." This title appeared on every page of defendant Universal's site. In addition, defendant Universal used the term "bunny" in its navigational bar, used the mark "Playboy" in the path of its domain name (, invited users to "send e-mail to Playboy at" and linked its site to one operated by plaintiff Playboy. Defendant had no permission to utilize plaintiff's marks in this fashion.

Playboy brought suit, charging defendant Universal with violation of both the Lanham Act and Pennsylvania's Antidilution statute. After a bench trial, the court rendered judgment for plaintiff, finding that defendant Universal infringed, counterfeited and diluted plaintiff's marks in violation of the Lanham Act. In so holding, the court said that "defendants' intentionally adopted Playboy and Bunny trademarks in an effort to capitalize on [Playboy's] established reputation in the Playboy and Rabbit Head Design marks."

The court also held that defendant Stanley Huberman, the president and sole shareholder of defendant Universal, was individually liable for these infringing activities. Mr. Huberman was found to have made the decision to utilize plaintiff's marks on Universal's site. Said the court:

[T]he 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." (citation omitted). This principle is applicable in cases brought under the Lanham Act.

The court awarded plaintiff statutory damages of $10,000, together with reasonable counsel fees and costs under 15 U.S.C. §1116(d), which sets damages recoverable in a counterfeiting case. These damages were awarded despite the court's conclusion that defendant Universal had made no profit from the operation of its site, Playboy had not shown any loss directly attributable to this conduct, and defendants had consented to the entry of a permanent injunction enjoining further use of the marks after three months of operation of the site.

The full text of the court's decision can be found on a web site maintained by the United States District Court for the Eastern District of Pennsylvania.

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