P.S. I have replaced my real name in these pages with my "Nom De Porn" (Carter Stevens for those of you who haven't been paying attention), not because I'm trying to hide or conceal who I am, but because my real name wouldn't mean anything to most of you. If you really want to know it., you can go into the Federal Court house in NYC and look it up.
UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK
THE HEARST CORPORATION
Plaintiff,
vs.
AMSTERDAM FILMS, INC.; TRICITE MANAGEMENT; (AKA CARTER STEVENS) ; JOHN
DOES; JANE DOES and ABC CORPORATIONS
Defendants.
ANSWERS TO COMPLAINT
AS FILED BY (AKA Carter Stevens) Pro se
Answer 1. AGREED
2. Upon information and belief, Defendant Amsterdam is a corpora-
tion organized and existing under the laws of the State of Penn-
sylvania, having a principal place of business at Lexington
Avenue, P.O. Box 727, Pocono Summit, Pennsylvania 18346.
Answer 2. AGREED
3. Upon information and belief, Defendant TriCite is a corpora-
tion organized and existing under the laws of the State of New
York and doing business as Star Distributors, having a principal
place of business at 2040 Jay Street, Brooklyn, New York 1 1201.
Answer 3. MOOT Tricite is not now nor has it ever been the distributor of Carter Stevens Presents COSMOPOLITAN DOMINATION.
4. Upon information and belief, Defendant /(AKA Stevens) is an individual
doing business under the name Carter Stevens, and is the princi-
pal stockholder in the defendant Amsterdam, having a principal
residence at Lexington Avenue, P.O. Box 727, Pocono Summit,
Pennsylvania 18346.
Answer 4. MOOT. (AKA Carter Stevens) is an individual residing in
and doing business solely within the Commonwealth of Pennsylva-
nia. He has no holdings or residence and does no business within
the jurisdiction of the United States District Court, Southern
District of New York and as such is not subject to the venue of
this court under this action.
Answer 5. MOOT
6. Upon information and belief, Defendants, ABC CORPORATIONS,
through their agents, servants and employees, do business in and
have been present in this District and are here actively and
regularly engage in the distribution or sale of publications
bearing reproductions of the Plaintiffs federally registered
trademarks. The true identities of Defendants, ABC CORPORATIONS,
are not presently known to Plaintiff and Plaintiff will amend
this Complaint to include the name or names of same if and when
they permit themselves to be identified.
Answer 6. MOOT
JURISDICTION AND VENUE
7 This is a civil action for: Trademark Infringement, under
Section 1114 of the Lanham Act; False Designation Of Origin and
Unfair Competition pursuant to Section 43(a) of the Lanham Act,
15 USC 1338 (a); Trademark Tarnishment under Section 1114 of the
Lanham Act, 15 USC 1114; Trademark Dilution under Section 1125(c)
of the Lanham Act; Dilution under New York State General Business
Law Section 368(d); Unfair Competition under New York State
common law, and Violation of the New York Deceptive Practices
Act, New York General Business Law, Section 349 et seq.
Answer 7. AGREED
8. This court has personal jurisdiction over the Defendants
pursuant to NY CPLR Section 302 (a) (2) in that they are doing
business and/or transacting business in this district, and sub-
ject matter jurisdiction under 28 USC 1338 (a), 28 USC 1121 and
28 USC 1331. Venue is proper in this district under 28 USC 1391
(b)and (c).
Answer 8. DENIED. (AKA Carter Stevens) is an individual residing in
and doing business solely within the Commonwealth of Pennsylva-
nia. He has no holdings or residence and does no business within
the venue of the United States District Court, Southern District
of New York and as such is not subject to the venue of this court
under this action. Defendant asks that complaint against him be
dismissed for lack of venue.
FACTS COMMON TO ALL CAUSES OF ACTION
9. Plaintiff, Hearst, is among the largest multinational, multi-
media publishing and entertainment companies in the United States
and in the world. Among other assets, Hearst owns numerous highly
regarded newspapers, some of the world's most recognizable car-
toon characters such as POPEYE and numerous well known magazines
such as Popular Mechanics, Harper's Bazaar and the magazine at
issue in this lawsuit, Cosmopolitan.
Answer 9. MOOT. Size of Plaintiff. and its holdings do not enter
into the issues raised since Defendant did not violate or use
Plaintiff's COSMOPOLITAN trademark. Only the question of Defen-
dant's violation (if any) of Plaintiff's trademark rights by use
of the common adjective cosmopolitan included in Defendant's
publication title is germane. If Defendant did not "use" the
Plaintiff's trademark but only the "generic" English word cosmopo-
litan than the entire question of dilution of the Plaintiff's
trademark and the necessary proofs are moot.
10. Cosmopolitan magazine was first published in 1886 and has
been published continuously in the United States since that time.
As set forth in Exhibit A, of the hundreds of consumer magazines
published in the United States, Cosmopolitan ranks 22nd in the
most recent ranking published in Advertising Age.
Answer to 10. MOOT Defendants' publication "Carter Stevens Presents COSMOPOLITAN DOMI-
NATION" is not on sale in any venue where Plaintiff's publication
might appear so no comparisons of sales figures are relivant.
11. Long viewed as a hip and stylish magazine and a magazine
that focuses on numerous relevant issues, Cosmopolitan has
achieved not only celebrity but prestige amongst its readers,
both men and women. Plaintiff has worked long and hard to achieve
this enviable position for its magazine. A measure of this great
success is the fact that dozens of fashion accessory products
have been licensed by Plaintiff under the COSMOPOLITAN trademark.
Answer to 11. MOOT. Defendants' publication "Carter Stevens Presents COSMOPOLITAN DOMI-
NATION" is not on sale in any venue where Plaintiff's publication
might appear. Defendant does not now or plan to in the future
produce "fashion accessory products " under "Carter Stevens Presents COSMOPOLITAN DOMINA-
TION" title. Thus no dilution of Plaintiff's trademark rights
have occurred, or are even likely to occur from the Defendant's
actions.
12. Sales of Cosmopolitan magazine since 1988 to date in the
United States, have been in excess of 450 million dollars. Adver-
tising revenue during the same time period has been in excess of
750 million dollars. Licensing of the COSMOPOLITAN mark during
the past 5 years has exceeded 75 million dollars and is growing.
Cosmopolitan magazine has also achieved enormous success outside
the United States as well
Answer to 12. MOOT. Sales of Plaintiff's products have no bearing
on legitimacy of their claims. "Carter Stevens Presents COSMOPOLITAN DOMINATION" is not
sold in any venue where Plaintiff's products might appear.
13. The trademark COSMOPOLITAN is one of the most valuable assets
of Hearst. It is presently protected by more than two dozen
federal registrations and an almost equal amount of pending
federal applications expected to issue shortly protecting primary
Hearst's ever widening licensing attention in the COSMOPOLITAN
mark. Many of Hearst's registrations, including that for a maga-
zine, have become incontestable under the Lanham Act. Attached as
Exhibit B is a list of federally registered COSMOPOLITAN trade-
marks and attached as Exhibit C is a list of pending applications
for the COSMOPOLITAN trademark. Attached as Exhibit D is a copy
of Hearst's registration for COSMOPOLITAN in respect of maga-
zines.
Answer to 13. DENIED. Plaintiff's many registrations for the
trademark COSMOPOLITAN have no bearing on the use of the common
adjective cosmopolitan in the defendants' magazine clearly titled
"Carter Stevens Presents COSMOPOLITAN DOMINATION"
from UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT No.
162, 651 -- August Term, 1995 Argued: November 2, 1995 Decided:
November 22, 1995 Docket No. 95-7478, 95-7538
CAR-FRESHNER CORPORATION, v. S.C. JOHNSON & SON, INC.,
It is a fundamental principle marking an outer boundary of the
trademark monopoly that, although trademark rights may be ac-
quired in a word or image with descriptive qualities, the acqui-
sition of such rights will not prevent others from using the word
or image in good faith in its descriptive sense, and not as a
trademark. See Abercrombie & Fitch Co. v. Hunting World, Inc.,
537 F.2d 4, 12-13 (2d Cir. 1976); Sunmark, Inc. v. Ocean Spray
Cranberries, Inc., 64 F.3d 1055, 1058 (7th Cir. 1995); United
States Shoe Corp. v. Brown Group, Inc., 740 F. Supp. 196, 198-99
(S.D.N.Y. 1990); Holzwarth v. Hulse, 14 N.Y.S.2d 181, 181 (Sup.
Ct. 1939); Johnson & Johnson v. Seabury & Johnson, 67 A. 36, 38
(N.J. 1907); Restatement (Third) of Unfair Competition Section(s)
28 (1995); 3A Louis Altman, Callmann on Unfair Competition,
Trademarks and Monopolies 21.24 (4th ed. 1983); Margreth Barrett,
Intellectual Property 760-61 (1995).
The principle is of great importance because it protects the
right of society at large to use words or images in their primary
descriptive sense, as against the claims of a trademark owner to
exclusivity. See U.S. Shoe, 740 F. Supp. at 198-199. This
common-law principle is codified in the Lanham Act, which
provides that fair use is established where "the use of the name,
term, or device charged to be a infringement is a use, otherwise
than as a mark, . . . which is descriptive of and used fairly and
in good faith only to describe the goods or services of . . . [a]
party, or their geographic origin." 15 U.S.C. Section(s)
1115(b)(4).
Regardless whether the protected mark is descriptive, sugges-
tive, arbitrary, or fanciful as used in connection with the
product or service covered by the mark, public's right to use
descriptive words or images in good faith in their ordinary
descriptive sense must prevail over the exclusivity claims of the
trademark owner. See Dowbrands, L.P. v. Helene Curtis, Inc., 863
F.
U.S. CIRCUIT COURT OF APPEALS, EIGHTH CIRCUIT, No. 95-2912 Duluth
News-Tribune, v. Mesabi Publishing Company,
Submitted: March 11, 1996, Filed: June 3, 1996
The use of dominant identical words in common does not mean that
two marks are similar. General Mills, 824 F.2d at 627. Rather
than consider the similarities between the component parts of the
marks, we must evaluate the impression that each mark in its
entirety is likely to have on a purchaser exercising the atten-
tion usually given by purchasers of such products.
14. Over the years, Plaintiff has actively policed its COSMOPOLI-
TAN trademark and has commenced proceedings to bar the infringe-
ment and/or dilution of said mark. Plaintiff also maintains a
regular "watch" service which alerts it to the filing or publica-
tion of any confusingly similar trademarks in the United States
Patent and Trademark Office. When such marks are published for
opposition, Plaintiff vigorously opposes said marks.
Answer to 14. DENIED. Plaintiff's vigorous opposition of misuse
for the trademark COSMOPOLITAN have no bearing on the use of the
adjective cosmopolitan in the defendants' magazine titled
"Carter Stevens Presents COSMOPOLITAN DOMINATION".
In addition, under common usage Plaintiff has itself diluted it's
own trademark by assigning all secondary meanings for the Plain-
tiffs own magazine to the common use title "COSMO" not to the
title full title "COSMOPOLITAN" (Defendant's Exhibit R)
New York State Consolidated Laws General Business ARTICLE 24
TRADEMARKS S 360. Definitions.
(i) A mark shall be deemed to be "abandoned" when either of the
following occurs:
(2) When any course of conduct of the owner, including acts of
omission as well as commission, causes the mark to lose its
significance as a mark.
Thus any secondary meaning has itself been negated by the Plain-
tiffs themselves and the public's use of the term "COSMO" regard-
less of the Plaintiffs other legal actions.
15. Upon information and belief, Defendant TriCite is the dis-
tributor of COSMOPOLITAN DOMINATION in the United States.
Answer 15. DENIED Tricite is not now nor has it ever been a distributor of magazine "Carter Stevens Presents Cosmopolitan Domination".
16. Upon information and belief Defendants Amsterdam/(AKA Stevens) pub-
lish a number of sexually explicit and lewd magazines which cater
largely to the "fetish" community; those whose sexual preferences
include, among other things, bondage, and sadomasochism. Defend-
ants Amsterdam/(AKA Stevens) also publishes a web page on the Internet
called "S&M News" which, among other things contains hypertext
(i.e., connections) to other web sites dealing with a variety of
"kinky " sex. Said web site also advertises the services of
professional dominatrices. The magazine accused of infringement
is advertised on said web page.
Answer to 16. MOOT. Amsterdam/(AKA Stevens) publish Adult oriented mate-
rials including magazines, videos and do maintain the web site
named (www.smnews.com) however the material is not sexually
"explicit" nor "lewd" under current federal statutes, is fully
protected under the First Amendment and has no bearing on the
alleged misuse of the adjective cosmopolitan.
17. Upon information and belief, Defendants Amsterdam/(AKA Stevens),
seeking to capitalize on the favorable associations attached to
Plaintiff's Cosmopolitan magazine, adopted as a trademark for its
new fetish magazine, the trademark COSMOPOLITAN DOMINATION. It
will be seen from Exhibit E hereto (specimens of the mastheads of
both magazines) that Defendants adopted a print font for Cosmopo-
litan Domination which is virtually identical to the print font
for Plaintiffs Cosmopolitan magazine. In furtherance of its
intent to benefit from such an association, Defendants also
adopted a "footer", as shown in Exhibit F. similar in style to
the footer used by Plaintiff.
Answer to 17 DENIED. Defendant has never sought nor seeks any
association (favorable or otherwise) with Plaintiff's product.
The masthead from "Carter Stevens Presents COSMOPOLITAN DOMINATION" as shown in Exhibit E
clearly demonstrates the CARTER STEVENS PRESENTS logo above the
"COSMOPOLITAN DOMINATION" title in letters in excess of 25% of
the title itself.
In point of fact it may be argued that since all magazines
published by the Defendant carry the possessive Carter Stevens
Presents above the title (see Defendants Exhibit L hereto) the
full and proper title of the magazine in question is "Carter
Stevens Presents Cosmopolitan Domination"
The typeface itself while a plain sans serif style is clearly
matted with a drop shadow effect which in no way resembles the
plaintiffs' stark type font. The "style" (or "Trade Dress") of
the presentation of the title is also totally different from that
used on the Plaintiff's publication, as the plaintiffs' publica-
tion routinely has part of their trademark obscured by the cover
model's head (see Plaintiff's exhibit E), while the complete
title of Defendant's publication "Carter Stevens Presents COSMOPOLITAN DOMINATION" was
totally uncovered and easy to read. In either case this stan-
dard and commonly used type face was a one time usage as was
explained in the defendant's letter to the plaintiffs' lawyers
and would have been changed routinely as is the practice on all
Adult publications and for this publication in particular. (see
other covers from Defendants' magazines in Defendant's Exhibit L
hereto) (specimens of mastheads and covers of several of Defen-
dant's magazines including TWO other covers and mastheads from
"Carter Stevens Presents COSMOPOLITAN DOMINATION" itself showing totally different type
styles and designs. )
The footer described by plaintiff above is a standard device used
in many publications including the Plaintiff's and in almost all
of the Defendant's other magazines as well. (see examples as
listed in Defendant's Exhibit M hereto). It is neither unique or
even unusual as it can be found in hundreds of magazines in both
the plaintiffs' venue (newsstands) and the Defendants' venue
(adult book stores). The Defendant's footer in question does not
even resemble (again, different "Trade Dress") that of the Plain-
tiff's as it does not include the date of the issue, only the
title of the publication "COSMOPOLITAN DOMINATION" .
Thus the differences in trade dress of the two publication proves
the use of the generic or literal use of the adjective cosmopoli-
tan rather than an infringement of the Plaintiff's trademark.
18. The sexually explicit and highly offensive content of the
Cosmopolitan Domination magazine is shown by excerpts from the
magazine which are attached hereto as Exhibit G. The content of
said magazine, while speaking for itself, is clearly offensive to
the moral standards of the community.
Answer to 18. DENIED. While the plaintiff and their lawyers may
claim to find any adult material dealing with BDSM "highly offen-
sive" to themselves, their moral standards and personal feelings
are not germane to the use of the adjective cosmopolitan. Nor is
it applicable to the general public at large ("the community").
BDSM has been "explored by over 10 % of the adult Population"
(according to CNN) or even higher according to a poll in the
Plantiff's own magazine Cosmo JUNE 1997
On the front cover it reads Sex Rated Survey. 2000 Men Tell You
How to Flip Their Switches (things you'd *never* suspect).
under the section titled "Doing the Nastiest"
Have you ever tried any of the following sexual activities?
Sex Toys 61% Bondage 36%
Spanking 43% Whipping 9%
Toe Sucking 38% Golden Showers 7%
and the Plaintiff has even accepted ads in their own publication
dealing in this material (Defendant's exhibit O) .
See:
Married to one man, having sex with another. by Susan Crain Bakos
il v216 Cosmopolitan May '94 p.220(4) 73E2483 Abstract
Some women have extramarital affairs, enjoying the sex
without guilt. Several of these women discuss their relationships
and recommend that a woman seeking a lover choose a man who has a
reason for being discreet.
Our Cheating Hearts - is fidelity feasible? by Timothy Dumas il
v221 Cosmopolitan July '96 p176(4)
"Even professionals now admit that infidelity can have a
place in the voyage of self-discovery"
However, the Defendant's distaste for the questionable moral
standards of the Plaintiff's publication also have no relevance
in the use of the adjective cosmopolitan in the Defendant's
publications even if the Plaintiff and their lawyers do not
approve of the content of Defendant's magazines.
In addition the S&M NEWS web sight has been visited by over
278,000 people with no advertising, making it one of the most
popular BDSM sites on the web so clearly the "moral standards" of
the community" that "Carter Stevens Presents COSMOPOLITAN DOMINATION" is marketed to is
not offended.
For the Plaintiff's to claim that Defendant's product is
"clearly offensive to the moral standards of the community." is
hypocritical in the extreme considering the Plaintiff's own publi-
cation carries in the current November 1997 issue an article
(Page 64 Defendant's Exhibit O) titled
Why Erotic Material May Be Healthy for You, (subtitled: Whether
you call it pornography or erotica Christie Hefner says sexually
arousing material is empowering.)
and not one but two ads for similar material (produced by Defen-
dant's direct competition) in their November 1997 issue
(Defendant's Exhibit O)
The Cosmo's classified ads "Buylines",(Page 289) for November
1997, have the following 2 ads:
A LOVER INTO SPANKING, Find your spanking partner through Scene
One, our illustrated quarterly journal of spanking erotica and
personal ads from Shadow Lane a "friendly" competitor of the
Defendant, and a publication much like the one of the Defendant's
other publications Spanks-a-lot.
The other ad is as follows: "THE BEST IN FETISH VIDEOS. Spanking,
bondage, Fem-Dom, Domination & All Male Fetish. Over 170 videos
to choose from." Then lists the address to write to.
The fact that the plaintiff would carry such ads in their own
publication voids their hollow statements of moral outrage at
the content of Defendant's publications and web site.
19. On July 28, 1997, Hearst, through its attorneys, sent a cease
and desist letter to Defendants Amsterdam/(AKA Stevens) (at that time
plaintiff only knew the Defendants as Carter Stevens Presents,
identified within Cosmopolitan Domination as the publisher)
demanding the immediate cessation and usage, among other things,
of the term "Cosmopolitan" in the magazine title, Cosmopolitan
Domination. A copy of that letter is attached as Exhibit H.
Answer to 19 AGREED Amsterdam Films, Inc. D/B/A Carter Stevens
Presents.
20. Defendants Amsterdam/(AKA Stevens), by letter dated July 30, 1997
(received August 12, 1997), refused to discontinue use of the
term "Cosmopolitan" in the title Cosmopolitan Domination, claim-
ing, among other things, free speech. Attached as Exhibit I is a
copy of the letter from Amsterdam/(AKA Stevens).
Answer to 20 DENIED. Exhibit I as submitted by the Plaintiff is
distorted and illegible as to the magazine cover sent to the
Plaintiff to demonstrate the difference in typefaces used in
Defendant's publication. Whether deliberately or simply by mis-
take exhibit has been altered in both impact and meaning by this
situation. Clear and legible copy is submitted as part of Defen-
dant's exhibit L.
21. Since the receipt of Defendants Amsterdam/(AKA Stevens)'s letter,
these Defendants have caused to be listed on the web site of
Amsterdam, vulgar and demeaning characterizations of Hearst and
Hearst's counsel. Attached as Exhibit J is a printout of Defend-
ants' web site listing as described.
Answer TO 21. DENIED. Exhibit J as submitted by the Plaintiff is
abridged, distorted and illegible as to the magazine covers
included on the Defendant's web site to demonstrate the dif-
ference in typefaces used in Defendant's publication. And the
text has been abridged to no longer contain the complete text of
Defendant's first amendment protected article. Whether delib-
erately or simply by mistake exhibit has been altered in both
impact and meaning by this situation. Clear and legible copy is
submitted as Defendant's exhibit P.
The style and content of Defendant's editorial musing in it's
monthly newspaper and reprinted on it's web site as to the nature
of the people behind this lawsuit and their possible motivations
are neither relevant to the suit itself nor subject to this
court's censor under the rights guaranteed any newspaper under
the First amendment.
As stated in FCC v. Pacifica Foundation, 438 U.S. 726 (1978):
"[T]he fact that society may find speech offensive is not a
sufficient reason for suppressing it. Indeed, if it is the
speaker's opinion that gives offense, that consequence is a
reason for according it constitutional protection. [485 U.S. 46,
56] For it is a central tenet of the First Amendment that the
government must remain neutral in the marketplace of ideas." Id.,
at 745-746.
See also Street v. New York, 394 U.S. 576, 592 (1969) ("It is
firmly settled that . . . the public expression of ideas may not
be prohibited merely because the ideas are themselves offensive
to some of their hearers").
The characterizations were neither libelous or even scandalous by
today's adult standards. THE S&M NEWS is aimed toward adults and
we assume any reader to be a reasonably intelligent, thinking
adult. Any reasonable person reading Defendant's editorial should
be able to determine the heavy use of sarcasm and satire. The
language used is not vulgar in the adult context and venue. Such
language would be totally out of place in these proceedings but
are commonplace and hopefully humorous in the context of an adult
BDSM publication.
22. Defendants Amsterdam/(AKA Stevens)'s continued publication, sale and
distribution of Cosmopolitan Domination is a violation of Hear-
st's federally protected trademark rights and is causing irrepar-
able harm to Hearst.
Answer to 22. DENIED. Hearst's use of the word cosmopolitan is
protected only in relation to it's use as a trademark not as an
adjective.
A similar concern for the protection of competition informs the
initial stage of the analysis of a claim of trademark or trade
dress infringement, i.e., determination of whether a mark, pack-
aging or product design qualifies for protection. The Abercrombie
analysis illustrates this underlying concern of the Lanham Act:
Generic terms cannot be protected because, inter alia , competi-
tors need them to describe their products to consumers. Id. at 9
("[T]he user of a generic term . . . cannot deprive competing
manufacturers of the product of the right to call an article by
its name.")... The Abercrombie test, thus, permits courts to
separate those cases in which similar marks are most likely to
mislead consumers from those in which trademark protection would
create a "linguistic monopoly" which would stifle competitors'
efforts to market similar goods to consumers.
In the United States Court of Appeals For the Seventh Circuit
No. 95-3808 DOOR SYSTEMS, INCORPORATED, v.PRO-LINE DOOR SYSTEMS,
INCORPORATED
More precisely, the question of genericness is one of linguistic
usage, and can be approached by a variety of routes. One is the
dictionary. If the term "door systems" appeared in a standard dictionary
in lower case, this would be powerful evidence that the term was
generic, because nouns and other nominatives listed in dictionaries,
save for the occasional proper name, denote kinds rather than specific
entities ("dog," not "Fido").
COUNT I TRADEMARK INFRINGEMENT 28 USC 1114
23. Plaintiff repeats and realleges the allegations set forth in
Paragraphs 1 through 22 as if set forth in their entirety.
Answer to 23. Defendant also repeats and realleges the answers
set forth in Paragraphs 1 through 22 as if set forth in their
entirety.
24. Defendants' use of the mark COSMOPOLITAN DOMINATION is likely
to cause confusion mistake and deception amongst the purchasers
of magazines in that purchasers are likely to believe that said
magazine originate with or are sponsored by or in some other way
connected with Plaintiff. Defendants' use of COSMOPOLITAN DOMINA-
TION constitutes trademark infringement under 15 USC 1114.
Answer to 24. DENIED. No reasonable person is ever likely to
confuse the Defendant's publication for the Plaintiff's.
"...there could be no mistaking one publication for the other."
by Greg B. Smith Daily News Staff Writer, from an article in the
NEW YORK DAILY NEWS October 23, 1997 Page 28, about this action.)
(Defendant's Exhibit N)
The full title of the Defendant's publication is itself different
enough to insure the lack of confusion.
25. Defendants' acts of trademark infringement have been commit-
ted with the intent to cause confusion, mistake and to deceive
the purchasers of magazines as to the origin or sponsorship of
their magazine.
Answer to 25. DENIED All publications produced by CARTER STEVENS
PRESENTS (including "Carter Stevens Presents COSMOPOLITAN DOMINATION") are very clearly
marked with the Defendant's logo (the possessive CARTER STEVENS PRESENTS).
The defendant is very well known in the Adult communi-
ty and its logo is placed prominently on its product to clearly
identify it as such to the target market. It would be in NO WAY
beneficial to the defendant to have its product confused with
Plaintiff's magazine. Thus the marking and style (Trade Dress) of
both magazines are significantly different so as to make confu-
sion, mistake or deception impossible by the reasonable purchas-
er.
U.S. CIRCUIT COURT OF APPEALS, EIGHTH CIRCUIT No. 95-2912
Duluth News-Tribune, v. Mesabi Publishing Company,
Submitted: March 11, 1996 Filed: June 3, 1996
Appeal from the United States District Court for the District of
Minnesota.
Duluth News-Tribune, a division of Northwest Publications, Inc.
filed this trademark infringement action against Mesabi Publish-
ing Company (Mesabi) and Hibbing Tribune Company, Inc., (Hibbing)
under section 43(a) of the Lanham Trademark Act, 15 U.S.C. Sec-
tion(s) 1125(a) (1995) and under Minnesota Stat. Section(s)
325.165 (1995). After considering cross-motions for summary
judgment, the district court*fn1granted judgment in favor of
defendants on all claims. We affirm.
The most significant distinction, however, is the defendants'
placement of a blue banner reading, "Publication of the Mesabi
Daily News, Virginia and Daily Tribune, Hibbing" beneath the
title. Cf. Pignons S.A. de Mecanique v. Polaroid Corp., 657 F.2d
482, 487 (1st Cir. 1981) (otherwise similar marks are not likely
to be confused when used in conjunction with clearly displayed
name of manufacturer). These distinctions appear to be suffi-
cient to notify an ordinary customer that the papers originate
from two different publishers.
26. Plaintiff is without a remedy at law.
Answer to 26 DENIED. As Defendant's conduct is totally lawful,
no remedy at law is required.
COUNT II FALSE DESIGNATION OF ORIGIN 28 USC 1125(a)
27. Plaintiff repeats and realleges the allegations set forth in
Paragraphs 1 through 26 as if set forth in their entirety.
Answer to 27. Defendant also repeats and realleges the answers
set forth in Paragraphs 1 through 26 as if set forth in their
entirety.
28. Defendants have caused magazines to enter into commerce with
the designation COSMOPOLITAN DOMINATION. The use of COSMOPOLITAN
DOMINATION is a false designation of origin which is likely to
cause confusion, to cause mistake and to deceive as affiliation,
connection or association of Defendants with Plaintiff and as to
the origin sponsorship or approval of such magazine by Plaintiff.
Answer to 28. DENIED All publications produced by CARTER STE-
VENS PRESENTS (including "Carter Stevens Presents COSMOPOLITAN DOMINATION") are very
clearly marked with the Defendant's logo. (Defendant's exhibit L
hereto)
On the publication in question the Defendant's logo is prominent-
ly displayed above the "COSMOPOLITAN DOMINATION"
part of the title on the front cover.
Defendant holds that since all its publications appear with
the possessive CARTER STEVENS PRESENTS above the title the full
and correct title of the magazine in question should be "CARTER
STEVENS PRESENTS COSMOPOLITAN DOMINATION".
No reasonable person would ever confuse the defendant's adult
oriented product with that produced by the Plaintiff.
The defendant is very well known in the Adult community and
its logo is placed prominently on its product to clearly identify
it as such to the target market. It would be in NO WAY beneficial
to the Defendant to have its product confused with Plaintiff's
magazine.
29. Defendants' aforesaid activity constitutes a false descrip-
tion or representation of origin or sponsorship of their magazine
in violation of 15 USC 1125(a).
Answer to 29. DENIED All publications produced by CARTER STE-
VENS PRESENTS (including "Carter Stevens Presents COSMOPOLITAN DOMINATION") are very
clearly marked with the Defendant's logo. (Defendant's exhibit L
hereto)
On the publication in question the Defendant's logo is prominent-
ly displayed above the "COSMOPOLITAN DOMINATION" part of the title
on the front cover.
Defendant holds that since all its publications appear with
the possessive CARTER STEVENS PRESENTS above the title the full
and correct title of the magazine in question should be "CARTER
STEVENS PRESENTS COSMOPOLITAN DOMINATION".
No reasonable person would ever confuse the defendant's adult
oriented product with that produced by the Plaintiff.
The defendant is very well known in the Adult community and
its logo is placed prominently on its product to clearly identify
it as such to the target market. It would be in NO WAY beneficial
to the Defendant to have its product confused with Plaintiff's
magazine.
30. Defendants' unlawful conduct will continue to damage Plain-
tiff unless enjoined by this Court. Plaintiff has no adequate
remedy at law.
Answer to 30 DENIED. As Defendant's conduct is totally lawful,
no remedy at law is required.
COUNT III TRADEMARK DISPARAGEMENT 15USC 1114
31. Plaintiff repeats and realleges the allegations set forth in
Paragraphs 1 through 30 as if set forth in their entirety.
Answer to 31. Defendant also repeats and realleges the answers
set forth in Paragraphs 1 through 31 as if set forth in their
entirety.
32. The use of COSMOPOLITAN DOMINATION by Defendants is likely to
cause adverse associations with Plaintiffs Cosmopolitan magazine,
to the detriment and damage of Plaintiff. Said use is in viola-
tion of 15 USC 1114.
Answer to 32 DENIED. No reasonable person would confuse the two
magazines under any circumstances what so ever so no adverse
associations could ever occur.
33. Defendants' unlawful conduct will continue to damage Plain-
tiff unless enjoined by this Court. Plaintiff has no adequate
remedy at law.
Answer to 33 DENIED. As Defendant's conduct is totally lawful,
no remedy at law is required.
COUNT IV TRADEMARK DILUTION 15 USC 1 125(c)
34. Plaintiff repeats and realleges the allegations set forth in
Paragraphs 1 through 33 as if set forth in their entirety.
Answer to 34. Defendant also repeats and realleges the answers
set forth in Paragraphs 1 through 34 as if set forth in their
entirety.
35. Plaintiffs trademark, COSMOPOLITAN is a famous trademark and
qualifies as such under Section 1125(c) of the Lanham Act.
Answer to 35: DENIED Plaintiff has trademark only for the Title
"Cosmopolitan" and not for the use of the word cosmopolitan as an
adjective to describe another product not associated with the
Plaintiff's publication in any way, The Plaintiff's trademark
does not extend to the use of the descriptive word itself. As an
adjective cosmopolitan refers to "belonging to all the world, not
limited to just one part" and "free from local, provincial, or
national ideas, prejudices, or attachments" (Random House College
Dictionary) and thus can not be trademarked.
A similar concern for the protection of competition informs the
initial stage of the analysis of a claim of trademark or trade
dress infringement, i.e., determination of whether a mark, pack-
aging or product design qualifies for protection. The Abercrombie
analysis illustrates this underlying concern of the Lanham Act:
Generic terms cannot be protected because, inter alia , competi-
tors need them to describe their products to consumers. Id. at 9
("[T]he user of a generic term . . . cannot deprive competing
manufacturers of the product of the right to call an article by
its name.")... The Abercrombie test, thus, permits courts to
separate those cases in which similar marks are most likely to
mislead consumers from those in which trademark protection would
create a "linguistic monopoly" which would stifle competitors'
efforts to market similar goods to consumers.
In addition, under common usage Plaintiff has itself diluted it's
own trademark by assigning all secondary meanings for the Plain-
tiffs own magazine to the common use title "COSMO" not to the
title full title "COSMOPOLITAN" (Defendant's Exhibit R)
New York State Consolidated Laws General Business ARTICLE 24
TRADEMARKS S 360. Definitions.
(i) A mark shall be deemed to be "abandoned" when either of the
following occurs:
(2) When any course of conduct of the owner, including acts of
omission as well as commission, causes the mark to lose its
significance as a mark.
Thus any secondary meaning has itself been negated by the Plain-
tiffs themselves and the public's use of the term "COSMO".
36. Defendants' use of COSMOPOLITAN DOMINATION as a trademark is
likely to cause dilution of the distinctive quality of Plaintiffs
COSMOPOLITAN trademark and to tarnish the Plaintiffs COSMOPOLITAN
trademark. Said use by Defendant is in violation of 15 USC
1125(c).
Answer to 36 DENIED Defendant has not used the Plaintiff's
trademark in any way whatsoever. The use of the descriptive
adjective cosmopolitan in the Defendant's publication title will
in no way confuse or mistake the public at large as to the source
of the material so it can not dilute or tarnish the Plaintiff's
product or trademark.
Little or no significant secondary meaning has attached itself to
the Plaintiff's use of the word cosmopolitan due to the Plaintiff's
own choice of an alternative and common law usage of the title
COSMO. Thus Plaintiff itself has removed secondary meaning by
use of the term COSMO for their product. (Defendant's Exhibit R)
Plaintiff has chosen by willful action to transfer all secondary
meaning associated with their magazine to the term COSMO rather
than the full term Cosmopolitan. Thus no dilution of the second-
ary meaning for the term Cosmopolitan can occur since Plaintiff
has already done so by common usage.
37. Defendants' unlawful conduct will continue to damage Plain-
tiff unless enjoined by this Court. Plaintiff has no adequate
remedy at law.
Answer to 37 DENIED. As Defendant's conduct is totally lawful,
no remedy at law is required.
COUNT V
COMMON LAW UNFAIR COMPETITION
38. Plaintiff repeats and realleges the allegations set forth in
Paragraphs I through 37 as if set forth in their entirety.
Answer to 38. Defendant also repeats and realleges the answers
set forth in Paragraphs 1 through 38 as if set forth in their
entirety.
39. By Defendants' unauthorized use of Plaintiff's trademark,
Defendants are guilty of unfair competition in violation of the
New York common law of unfair competition.
Answer to 39. DENIED. Defendant has never used the Plaintiff's
trademark only the generic and descriptive adjective and only
within and part of the Defendant's publication title. Since no
mistake or confusion could result from this fair use of a common
term no violation or unfair competition could result.
40. Defendants' unlawful conduct will continue to damage Plain-
tiff unless enjoined by this Court. Plaintiff has no adequate
remedy at law.
Answer to 40 DENIED. As Defendant's conduct is totally lawful,
no remedy at law is required.
COUNT VI
NEW YORK STATE DILUTION
41. Plaintiffs COSMOPOLITAN trademark is both distinctive and
famous.
Answer to 41. MOOT. Defendant did not use Plaintiff's trademark
only the generic word / descriptive adjective cosmopolitan and
only within and part of the Defendant's publication title.
42. Defendants' use of COSMOPOLITAN DOMINATION is likely to
cause dilution of the distinctive quality of Plaintiffs mark
COSMOPOLITAN and likely to tarnish said mark.
Answer to 41. DENIED. Defendant did not use Plaintiff's trademark
only the generic word / descriptive adjective cosmopolitan and
only within and part of the Defendant's publication title. Said
publication is clearly marked as a product of the Defendant not
the Plaintiff and is not sold in any venue where Plaintiff's pro-
duct might appear. The appearance of both products (trade dress)
is significantly dissimilar so no confusion might occur thus
dilution or tarnishment of Plaintiff's trademark is impossible.
43. Defendants' use of COSMOPOLITAN DOMINATION violates Plain-
tiffs rights under New York General Business Law _368d.
Answer to 43. Defendant's lawful use of it's own title "COSMOPO-
LITAN DOMINATION" in no way violates any of Plaintiffs' rights.
44. Defendants' unlawful conduct is in violation of the New York
State Anti Dilution Statute, General Business Law 368(d) and will
continue to damage Plaintiff unless enjoined by this Court.
Plaintiff has no adequate remedy at law.
Answer to 44 DENIED. As Defendant's conduct is totally lawful,
no remedy at law is required.
COUNT VII VIOLATION OF THE NEW YORK DECEPTIVE PRACTICES ACT (New
York General Business Law _349 et seq.!
45. Plaintiff repeats and realleges the allegations set forth in
Paragraphs I through 44 as if set forth in their entirety.
Answer to 45. Defendant also repeats and realleges the answers
set forth in Paragraphs 1 through 45 as if set forth in their
entirety.
46. By Defendants' unauthorized use of Plaintiffs trademark,
Defendants are guilty of deceptive business practices in viola-
tion of the New York State General Business Law __349 and 350.
Answer to 46. DENIED Defendant has not now nor has it ever used
the Plaintiffs' trademark for any purpose what so ever. Defendant
has only used the common adjective cosmopolitan as part of its
own unique and distinct magazine title.
47. Defendants' unlawful conduct will continue to damage Plain-
tiff unless enjoined by this Court. Plaintiff has no adequate
remedy at law.
Answer to 47 DENIED. As Defendant's conduct is totally lawful,
no remedy at law is required.
Under New York State Consolidated Laws General Business, ARTICLE
24 TRADEMARKS Section 360.
S 360-l. Injury to business reputation; dilution. Likelihood
of injury to business reputation or of dilution of the
distinctive quality of a mark or trade name shall be a
ground for injunctive relief in cases of infringement of a mark
registered or not registered or in cases of unfair competition,
notwithstanding the absence of competition between the par-
ties or the absence of confusion as to the source of goods or
services.
As Defendant's magazine is not sold in any venue that Plaintiff's
product is sold, said magazines can not be said to compete and
since no reasonable person can confuse the source of the goods,
"...there could be no mistaking one publication for the other."
by Greg B. Smith Daily News Staff Writer, from an article in the
NEW YORK DAILY NEWS October 23, 1997 Page 28, about this action.)
(Defendant's Exhibit N)
no injury to the Plaintiff's business could exist.
WHEREFORE, Plaintiff prays judgment that:
(a) A preliminary and permanent injunction issue restraining
Defendants, their agents, servants, employees, successors and
assigns from, the various wrongs alleged above including without
limitation their trademark infringement, false designation of
origin, trademark disparagement, trademark dilution, and acts of
unfair competition alleged herein.
Answer to (a) Defendant prays judgment that no injunction (pre-
liminary or permanent) should be issued as no cause for such
action has been or can be demonstrated by Plaintiff.
(b) Defendants be required to account for and pay over to Plain-
tiff Defendants' profits and any damages suffered by Plaintiff as
a result of Defendants' acts of false designation of origin and
unfair competition, together with interest and costs.
(c) Defendants be ordered to surrender for destruction all pro-
ducts, labels advertisements and other materials which use the
mark COSMOPOLITAN DOMINATION.
(d) Defendants be required to pay Plaintiff the cost of this
action together with reasonable attorneys fees, costs and dis-
bursements.
Answer to (b), (c),(d) et al
Should court rule in favor of Plaintiff, Plaintiff is entitled
under law only to injunctive relief.
Defendant should not be required to pay any compensation to
Plaintiff even if the court should rule in Plaintiff's favor.
Defendant has done everything possible (without even knowing or
trying) that could be done to distinguish it's product from that
of the Plaintiff's. If any violation is found to exist by the
court it was in no way willful and Plaintiff is entitled only to
injunctive relief under law.
15 USC sec. 1125
(2) ... the owner of the famous mark shall be entitled only to
injunctive relief unless the person against whom the injunction
is sought willfully intended to trade on the owner's reputation
or to cause dilution of the famous mark.
(e) Plaintiff be awarded such other and further relief as this
Court deems just and equitable
Answer to (e) As Defendant has shown no trademark violation
exists in its fair use of the common adjective cosmopolitan and
no violation of trade dress could exist as no reasonable person
can confuse the magazines themselves, no false designation of
origin can exist since all Defendant's product is clearly marked
as originating from their company, no acts of unfair competition
can have occurred since defendant's product and Plaintiff's
products are not available in the same venues, Defendant prays
court to deny Plaintiff's pleas on all counts and find in whole
for the Defendant.
Dated: November 10, 1997
Pocono Summit, PA. 19346
(AKA Carter Stevens), Pro se
Lexington Ave. P.O. Box 727
Pocono Summit, PA 18346
[717] 839-2512
Original Complaint Dated: October 16, 1997
New York New York
LIDDY SULLIVAN GALWAY BEGLER & COHEN, P.C.
Attorneys For Plaintiff
Served on MSW. by hand: October 25, 1997
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