October 2009 Issue

Civil Cases

Pfizer Inc. v. Sachs,
2009 WL 2876255 (S.D.N.Y. Sept. 8, 2009)

ABSTRACT
The Southern District of New York granted plaintiff’s motion for summary judgment on its trademark-infringement and dilution claims against defendant advertiser who, without authorization, placed plaintiff’s VIAGRA marks on a decommissioned military missile and towed it to plaintiff’s Manhattan headquarters and to an adult-entertainment exposition to promote his business.  The court rejected defendant’s First Amendment defense, finding that whatever statement defendant was trying to make was not protected because there were alternate ways to make the statement without using plaintiff’s marks and because defendant’s true intent was self-promotion, not communication.  The court also awarded attorney’s fees, finding the case to be exceptional due to defendant’s bad faith in ignoring plaintiff’s demand letters, continued threats of future infringement, failure to obtain counsel, and intent to financially capitalize on plaintiff’s marks.

CASE SUMMARY

FACTS
Plaintiff Pfizer Inc. (“Pfizer”) manufactures and sells the erectile-dysfunction drug Viagra under the registered mark VIAGRA and the pending mark VIVA VIAGRA.  Defendant Sachs is the operator and “chief fun officer” of “JetAngel.com,” which sells outdoor advertising on decommissioned military equipment such as fighter jets and missiles. 

In September 2008, Sachs towed a trailer carrying a twenty-foot decommissioned United States Air Force missile bearing the mark VIVA VIAGRA into Manhattan, parked it in front of Pfizer’s world headquarters, and passed out information about his company.  The next day, defendant emailed Pfizer, boasting that it would return the following week with the missile, only this time the missile would feature models riding the missile and handing out condoms.  Pfizer immediately sent defendant two cease-and-desist letters.

Without responding to Pfizer’s letters, Sachs towed the VIAGRA-branded missile to an adult-entertainment exposition the following weekend and displayed a banner promoting his services.  After the expo, Sachs emailed Pfizer again, this time threatening to tour the missile through New York City and twelve other major cities, passing out condoms with pictures of the presidential candidates along the way.  Subsequently, Sachs issued a press release detailing the tour and his advertising services. 

The following day, Pfizer filed suit seeking preliminary injunctive relief for trademark infringement and dilution by tarnishment.  The court granted Pfizer’s request for a temporary restraining order and, subsequently, for a preliminary injunction enjoining Sachs from further use or display of the Viagra marks in connection with any goods or services.

ANALYSIS
As an initial matter, the court addressed Sachs’s claim that the marks VIAGRA and VIVA VIAGRA had become generic and unprotectable due to their fame.  Sachs supported his argument with an “ad hoc survey” obtained from an advertisement on Craigslist that asked approximately 100 people “what brand name they will use to describe an erectile dysfunction drug.”  The court dispatched the survey as too methodologically flawed to rebut the presumption of validity of Pfizer’s coined and inherently protectable marks.
 
Next, in evaluating Pfizer’s infringement and unfair-competition claims, the court found that every likelihood-of-confusion factor, except the actual confusion factor (which was neutral), favored Pfizer.  The court rejected Sachs’s First Amendment defense that his use of the marks was a protected statement about erectile dysfunction.  Finding that Sachs could have made his “statement” (whatever it was) without the use of Pfizer’s marks, and that the true purpose of the use was self-promotion, the court declined to find First Amendment protection. 

In considering Pfizer’s dilution claims, the court noted Sachs’s concession of the fame of Pfizer’s marks and of their use in commerce.  Turning to the question of tarnishment, and noting that Sachs displayed Pfizer’s marks on a missile at an adult-entertainment exhibition and threatened to do so again with two models riding the missile and passing out condoms, the court found that Sachs was likely to harm Pfizer’s reputation and cause dilution by tarnishment of Pfizer’s marks. 

The court rejected Pfizer’s false-advertising claims, however, because, while Pfizer showed Sachs’s advertising was misleading, it had not shown any actual harm.

Finally, finding the case to be “exceptional,” the court awarded Pfizer its attorney’s fees.  Sachs’s actions in ignoring Pfizer’s cease-and-desist letters, not obtaining the advice of counsel, continuing his infringing activities despite Pfizer’s letters, and using Pfizer’s marks with an obvious intent to financially benefit from their reputation, all supported a finding of sufficient bad faith to make the case exceptional.

CONCLUSION
The First Amendment offers no safe harbor to infringers who use third-party trademarks in a tongue-in-cheek manner solely for self-promotional purposes.