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Sly Magazine, LLC v. Weider Publications L.L.C.
Civ. 3940 (RCC), 2007 WL 1061906, S.D.N.Y., 04/09/2007
Holding
Defendants could not be held directly or contributorily liable for infringement of the registered trademark from the date they were notified of Plaintiff's mere application for, or call to ownership of, that mark.
Detailed Summary
Plaintiff has an online “lifestyle” magazine called “SLY.” Defendants have numerous print magazines, among them one called “Sly,” named after the actor Sylvester Stallone and targeting men over 40 who are interested in fitness and an active lifestyle. Before plaintiff registered the mark, but after it had applied for it, plaintiff notified defendants of its purported right to the trademark and asked defendants to cease and desist. Defendants continued to publish their magazine and plaintiff filed this action. During the course of the litigation and while an issue of the magazine was still on newsstands, the mark was granted to plaintiff. Plaintiff now seeks to amend the complaint to allege contributory liability based on the acquisition of the trademark, since it cannot allege direct infringement based on retroactive registration. Plaintiff’s argument is that defendants are liable because they knew of plaintiff’s claim of right to the mark when they published their magazine. The court denied the motion because the alleged acts occurred prior to registration and allowing them as the basis for liability would eliminate the distinction between registered and unregistered trademarks.
Service
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