United States District Court, S.D. New York.
No. 97 Civ. 0646(JSM).
Aug. 17, 1998.
Eric Weinstein, New York, NY, for plaintiff.
Jon Muskin, Chicago, IL, for defendant.
 Plaintiff and defendant both use the title AISLE SAY for theater reviews. Plaintiff whose reviews currently appear regularly in "Singles Almanac," a magazine distributed to approximately 40,000 people in the greater New York area, has used the title AISLE SAY for nineteen years. Defendant has published theater reviews on an Internet web cite using the title AISLE SAY since 1995.
The Court is faced with the situation of two good faith users of the same trade name who operate in distinct markets. Plaintiff has never registered AISLE SAY. While the Court accepts plaintiff's testimony that she introduced herself to defendant in 1992 and mentioned AISLE SAY to him, the Court also credits the testimony of defendant that he has no recollection of this event and was not aware of the plaintiff's use of the name at the time he established his web cite. To avoid confusion, defendant has added a disclaimer to his web page stating that it is not connected to the plaintiff's column. Plaintiff did, however, introduce the testimony of two theater professionals who had been confused by the fact that two reviewers were using the name AISLE SAY.
As in all such cases, the parties have placed emphasis on the eight factors set forth by the Second Circuit in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.1995), cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961). The factors are: (1) the strength of the plaintiff's mark; (2) the similarity between the two marks; (3) the proximity of the products in the marketplace; (4) the likelihood that the prior user will bridge the gap between the two products; (5) evidence of actual confusion; (6) defendant's bad faith; (7) the quality of the defendant's product; and (8) the sophistication of the relevant consumer group. Id.
A review of the Polaroid factors does not provide a clear guide to the proper outcome of this dispute:
1. Strength of the mark. A mark's strength is defined as its tendency to identify goods as emanating from a particular source. This is assessed according to two factors: first, the degree to which the mark is inherently distinctive; and second, the degree to which it is distinctive in the marketplace. The inherent distinctiveness of a mark is gauged according to whether it is generic, descriptive, suggestive or fanciful. W.W.W. Pharmaceutical Co. v. Gillette Co., 984 F.2d 567, 572 (2d Cir.1993).
Plaintiff argues that AISLE SAY is a strong mark because it is fanciful, and defendant argues that it is weak because plaintiff's column is known to a relatively small number of persons. While the Court would consider the mark as more suggestive than fanciful, the mark is original enough that plaintiff would have the right to register it and enforce it against a bad faith user. Defendant is correct, however, that plaintiff's use of the mark is not widely known. Still, this factor favors plaintiff.
2. Similarity of the marks. There is no question that the marks are for practical purposes identical, and this factor favors plaintiff.
 3. The competitive proximity of the products. If one considers the product simply as theater reviews, plaintiff and defendant's products are in direct competition. However, it is more appropriate to ask whether plaintiff's reviews compete with defendant's reviews for readers. The answer to that question is no, because plaintiff's reviews appear in print in a specific magazine while defendant publishes his reviews only at his web cite. Thus, this factor favors defendant.
4. The likelihood that plaintiff will bridge the gap. Plaintiff does not contend that she has any plans to distribute her reviews on the Internet. Thus, this factor favors defendant.
5. Actual confusion. While there was evidence showing some confusion involving two theater professionals, there was no evidence that either the magazine readers of plaintiff's reviews or the Internet visitors to the defendant's web cite were confused. Thus, this factor appears neutral at best.
6. The defendant's good faith. The Court is persuaded that defendant acted in complete good faith in adopting the name AISLE SAY for his web cite, and this factor strongly favors defendant.
7. The quality of the defendant's product. While the evidence indicates that the defendant's reviews are highly regarded, this is a subjective matter and one can understand why someone like plaintiff, who takes great pride in her work, would be concerned that someone else's reviews would be attributed to her. Thus, this factor favors plaintiff.
8. The sophistication of the buyers. To the extent that this factor focuses on the likelihood that the purchaser will be so familiar with the relevant market that he or she will not be confused as to the source of the review, it favors plaintiff, since a sophisticated playgoer may still be unsophisticated concerning the difference between reviews on the Internet and reviews in a magazine.
While four of the eight factors favor plaintiff and only three favor defendant, most of the factors favoring plaintiff tilt only slightly in her favor. Moreover, the eight factor test is not exclusive, and is not to be applied mechanically by totting up the number of factors weighing in each party's favor. Paddington Corp. v. Attiki Importers & Distribs., Inc., 996 F.2d 577, 584 (2d Cir.1993)
"The essence of ... unfair competition claims, under both federal and New York law 'is that the use of the infringing term creates the likelihood of consumer confusion.... The essential inquiry is whether an appreciable number of ordinary prudent prospective [customers] are likely to be confused or misled." ' Marshak v. Green, 505 F.Supp. 1054, 1058 (S.D.N.Y.1981) (quotation and citations omitted); see also Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir.1978).
Here, a balancing of the relevant factors suggests that defendant should not be prohibited from using a name that he adopted in good faith, because there is no danger that an appreciable number of consumers will be misled as to the source of the review they are reading.
 Given the fact that there is no real competition between plaintiff's and defendant's reviews and that defendant has added a disclaimer to his web cite, it is unlikely that plaintiff will suffer any real economic disadvantage or damage to her reputation if defendant is permitted to continue to use AISLE SAY to identify his web cite. To enjoin defendant from using the name AISLE SAY would cause him far greater harm.
For the foregoing reasons, the complaint is dismissed. To the extent that defendant's counterclaims may be construed as seeking a declaration that he may continue to use AISLE SAY in connection with his web cite, that relief is granted; but otherwise, the counterclaims are dismissed.