Roughly a year ago, Sachs towed a rocket through Manhattan to promote a business, JetAngel.com, that sells outdoor advertising on decommissioned military equipment such as fighter jets and missiles. It said “viva Viagra” in Pfizer’s font on the side. Passersby were interested; Sachs distributed pamphlets about his business to them and let Pfizer know that Sachs would return the following week, with two female models riding the missile and distributing condoms. Pfizer replied with a C&D, and Sachs then exhibited the missle at an adult entertainment exposition in New Jersey with a banner promoting his services. He then “taunted” Pfizer with an email announcing his intention to take the missile on a 13-city tour to distribute condoms with images of the Presidential candidates, and issued a press release describing same.
Pfizer sued for infringement and dilution. The court granted a TRO and a preliminary injunction; now came the summary judgment motion.
Sachs argued that Viagra had become generic. This, unsurprisingly, was a losing argument, though he did submit what the court described as an “ad hoc ‘survey’” of 100 people, which used no experts and got its surveyors “through an ad on Craigslist.” Not enough to overcome the presumption of validity!
After that, likelihood of confusion was easily found. Very strong mark; virtually indistinguishable use, plus display in front of Pfizer’s HQ. Pfizer has also used mobile ads—Viagra-branded racecars and Mobile Health Units.
The parties’ products/services differ, but “consumers are likely to be confused as to whether Defendants are engaged in marketing services for Plaintiff.”
The court also found bad faith because of (1) awareness of Pfizer’s marks, (2) refusal to comply with multiple C&Ds, and (3) failure to seek or rely on advice of counsel. That’s not always bad faith, but this is an unusual situation.
The useless, ridiculous-in-modern-jurisprudence “quality of defendant’s product” factor that the Second Circuit has never got around to killing actually got a workout here, because defendants’ behavior “including advertising in front of adult entertainment establishments and threatening to distribute condoms with images of presidential candidates may be inconsistent with the image Pfizer wishes to project.” (Citing the Dallas Cowboys Cheerleaders case, no less, making clear that this is a dilution concern and not a confusion concern; see below for more.)
As for consumer sophistication, the marks were indistinguishable, and the missile suggests an erect penis and causes an association with an erection-boosting drug. Thus, even a sophisticated consumer might believe this was part of a Pfizer ad campaign. (Again, see below on tarnishment.)
Sachs offered a First Amendment defense, but likely confusion will trump such a defense. He used Pfizer’s marks to bolster his business, advertising his own services. Even if some statement about erectile dysfunction could be “teased” from this use, the Viagra marks were unnecessary to make the point. (Dallas Cowboys again. Of course there’s plenty of Second Circuit precedent not requiring necessity, but only in more expressive contexts.)
Sachs also lost the dilution by tarnishment, and NY state dilution, claim, because Viagra is famous and “it is well settled that ‘a mark is tarnished when its likeness is placed in the context of sexual activity, obscenity, or illegal activity.’” Displaying the missile at an adult entertainment expo, and planning to have two models “riding” the missile and distributing condoms, would thus be tarnishing.
Comment: um, excuse me? How can Viagra be tarnished by being placed in the context of sexual activity, especially when the court’s just concluded that reasonable consumers wouldn’t be surprised to see this as an official Viagra ad? I know the ads always place it in heterosexual married-monogamy land, but shouldn’t this analysis either explicitly admit that, at least as to Viagra, some sex is tarnishing and some isn’t (which does seem to make the First Amendment issue with dilution law more salient) or otherwise deal with the fact that Viagra is a product designed and advertised to help men have more sex?
Sachs won a tiny technical victory: Pfizer lost its motion for summary judgment on its false advertising/deceptive acts and practices claim under NY law because it couldn’t show any actual injury. Small consolation, though, because the court determined that this was an exceptional case allowing an award of attorneys’ fees, given defendants’ bad faith attempt to capitalize on Pfizer’s goodwill. “At the inception of this action, this Court cautioned Sachs that he faced considerable financial jeopardy, including damages and attorney’s fees, if Pfizer was successful,” but he didn’t heed that admonition.
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