Dumb bomb

Courthouse News Service picks up on a final ruling in a case that made everyone titter last fall:

A Long Island man infringed on Pfizer’s trademark by towing a 20-foot replica missile with “Viva Viagra” painted on its side through midtown Manhattan, eventually parking it in front of the drugmaker’s 42nd Street headquarters, a federal judge ruled.

After the escapade, Arye Sachs sent Pfizer an email boasting that the missile would return, this time with two models “riding” it and distributing condoms.

Sachs, a 48-year-old former Israeli Army sergeant, pulled the stunt to promote his company Jetangel.com, which sells outdoor advertising on decommissioned military equipment. He distributed pamphlets about his business to onlookers, even leaving one with Pfizer.

Sachs is the company’s owner and self-proclaimed “Chief Fun Officer.”

But if Sachs meant for the stunt to be funny, U.S. District Judge William H. Pauley III said, “Pfizer did not get the joke.”

The drug giant sent two cease-and-desist letters to Sachs, who proceeded to display the Viagra-branded missile at an adult entertainment exposition in New Jersey.

Sachs issued a press release announcing that he would take the Viagra missile on a 12-city tour, where he would distribute condoms bearing images of presidential candidates.

Pfizer slapped him with a lawsuit for trademark infringement, saying the use of Viagra’s slogan on the missile could confuse consumers, who might think it was an ad for the popular impotence drug.

Really?  They might?

Well, I guess they might.  But might they… really?  Here’s a link to the picture (I see no fair use basis to republish it here).  It’s a big goofy old missile, like the size of two station wagons.

Pfizer sells tiny little capsules.

Let’s look at the opinion — go ahead, it’s right here.

First point:   The claim included, as you’d expect, a claim for trademark dilution as well as infringement.  Huge point that the non-legal press has missed, and which makes this decision a lot more understandable — at least in terms of the target reached.  The flight path, however, remains hard to track.

Consider, now, the decision.  A flaccid genericness defense based on defendant’s proffer of an “ad hoc survey” of 100 people conducted via Craig’s List; easily bounced as preposterous, this defense fails because the defendant has not met its burden of proving genercness in this case involving an incontestable registered mark.  Later on other silly defenses, such as the First Amendment defense, go over the side.  But there’s something very wrong with this opinion.

This is a trademark infringement case, so the court first goes through the Polaroid factors,  and the interesting ones are these:

• Competitive proximity and likelihood of bridging the gap

Selling different services or targeting a different market does not disprove a LIKELIHOOD OF CONFUSION, because the concern is not direct diversion of purchasers but indirect harm through loss of goodwill or tarnishment of reputation.
Although Defendants sell advertising services, Pfizer’s international marketing campaigns have made the Viagra Marks widely recognizable.  Therefore, consumers are likely to be confused as to whether Defendants are engaged in marketing services for Plaintiff.

“Engaged in marketing services for Plaintiff?”  Does that mean that they were engaged by plaintiff to provide marketing services — marketing for Viagra?  Well, I see how that’s proof of dilution (actually, there’s no real proof of that here at all — just the judge’s guesswork, as usual in a trademark case), but of “competitive proximity and likelihood of bridging the gap,” a factor to weigh in infringement?  Also, while that statement stands on its own, do you follow the logic implied by the word “therefore” in that sentence?:

Viagra Marks are famous —>  Consumers likely to be confused …

Well, wait, actually.  Forget the non-sequitur — “likely to be confused” doesn’t mean “about who does their marketing.”  It means LIKELIHOOD OF CONFUSION “about whose product that is”!

• Quality of defendant’s product

This factor is primarily concerned with whether the senior user’s reputation could be jeapordized by virtue of the fact that the junior user’s product is of inferior quality.  The concern is not so much with the likelihood of confusion as with the likelihood of harm resulting from any such confusion. . . .

Defendants’ behavior, including advertising in front of adult entertainment establishments . . .  may be inconsistent with the image Pfizer wishes to project.

This is a factor when weighing the LIKELIHOOD OF CONFUSION factors for trademark infringement where the products are utterly unrelated?

Novel.  In fact, this decision seems to use trademark dilution rationales, and out of context quotes from various cases (all citations omitted from the above) to find trademark infringement here.  It’s bad enough when a court does this because it has no other way to get a bad guy, believe me.  But this tack would seem to be utterly unnecessary where there was a dilution claim based on an obviously famous mark, which the court discusses in a throwaway paragraph on the dilution claim at page 15, and a great claim for trademark dilution.

Why?

Let’s not talk about this case.  Why, so often, do judges have to “throw the book” at a defendant who is clearly going to be found liable under the claims that do stand up to legal scrutiny?  Why do the law reporters have to be shoved full of bad law, almost always in Big IP plaintiffs’ favor, that amounts to just plain piling on?   What is accomplished besides distorting the law and making a joke out of precedent?

There very well could be a trademark infringement claim here.  Kaye Scholer, Pfizer’s counsel, which turns out only the best trademark litigators, surely submitted one; certainly it is hard to imagine that the pro se defendant could effectively rebut whatever the boys at 425 Park threw at him.  Why the elements and proofs supporting that claim don’t seem to show up in this opinion is hard to fathom here.  Perhaps there are elements to the record that did not “port over” well to our summary judgment opinion.

But there’s no question that there seem to be a lot of trademark cases where a judge sees a guy do the wrong thing, and do that thing stubbornly, and the court isn’t going to parse out what, under the law, he exactly did and didn’t do.  The judge just drops the hammer.

“Let God sort ’em out,” as they used to say.  The problem is what certain opinions leave behind for those of us left here on earth.

Hat tip to @VBalasubramani.

Originally posted 2009-09-10 19:32:20. Republished by Blog Post Promoter