February 04, 2008

Partner Susan J. Kohlmann and Associate Elizabeth Valentina recently won a motion for summary judgment for clients Weider Publications and American Media, Inc. in a trademark infringement lawsuit brought by an online women’s fashion magazine in connection with the client’s now-defunct men’s print magazine that bears the same name.

According to the court’s ruling, Weider Publications, which publishes more than 30 magazines including Living Fit, Men's Fitness and Shape, had developed a magazine with actor Sylvester Stallone aimed at “fit men over 40, with an interest in physical fitness and an active lifestyle.”  SLY Magazine, which was named for its creator and editorial director Mr. Stallone, was published from February 2005 through March 2006. 

The plaintiffs, who have an online “lifestyle” magazine called “SLY Magazine” that targets women living in “metropolitan areas, thirty-five and younger, single with an interest in fashion,” had alleged that Weider Publications had infringed its trademark, “SLY,” in violation of the federal Lanham Act, New York common law and the New York Anti-Dilution Statute.

The first two claims hinged on the issue of the likelihood of customer confusion: specifically, whether consumers would be likely to believe that the client’s print magazine was a publication produced by the plaintiffs. 

In finding for the client, the court found “significant differences between the content and presentation of plaintiff’s online magazine and defendants’ print publication.”  The court found that all factors used to evaluate the case weighed in the defendant’s favors, and concluded “there is no genuine issue of material fact as to the likeliness of customer confusion.” 

The court also dismissed the claim under the New York Anti-Dilution Statute, stating that the association of the plaintiff’s mark with the client’s magazine does not tarnish the plaintiff’s mark.

The decision followed the court’s previous denial of the plaintiff’s application for a temporary restraining order and motion for preliminary injunction. 

Please click here for court's decision.