63 F. Supp. 3d 328
S.D.N.Y.2014Background
- NYP Holdings (publisher of the New York Post) owns multiple registered and partly incontestable NEW YORK POST trademarks used continuously in commerce since at least 1934 and across print and online media (nypost.com).
- Steven J. Hoffenberg formed a Delaware corporation named New York Post Publishing Inc. in 1993, let it lapse, reinstated it in June 2014, and began using the name and the domain newyorkpostpublishinginc.com in Sept. 2014 to publish news content and promotional materials.
- NYP Holdings sent cease-and-desist correspondence; Hoffenberg persisted and launched a website that used the NEW YORK POST words, similar trade dress, and statements implying affiliation with the New York Post.
- NYP Holdings filed suit (Oct. 16, 2014) asserting Lanham Act claims (trademark infringement, false designation, dilution, ACPA) and related state/common-law claims and sought a preliminary injunction and expedited proceedings.
- After a hearing, the court granted a preliminary injunction (Nov. 6, 2014) and issued this Decision and Order explaining findings that defendants’ use was likely to cause confusion and constituted cybersquatting, warranting injunction and expedited proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Trademark protectability | NEW YORK POST marks are federally registered and many incontestable; thus protectible | Hoffenberg asserted he "controls" the marks but produced no evidence of priority or continuous use | Court: Marks are protectible; registrations give prima facie validity and defendants did not rebut |
| Trademark infringement (likelihood of confusion) | Defendants’ use (name, domain, site trade dress, content) is highly similar and in same channels, causing likely confusion | Hoffenberg claimed ownership/control but offered no factual support | Court: Polaroid factors weigh heavily for NYP; likelihood of confusion found |
| ACPA (cybersquatting) | Domain was registered after marks were famous/distinctive; defendants acted in bad faith to profit/divert consumers | No meaningful rebuttal to bad-faith allegations or prior bona fide use | Court: Domain confusingly similar; multiple ACPA bad-faith factors satisfied; ACPA claim likely to succeed |
| Irreparable harm / preliminary injunction factors | Confusion and association with Hoffenberg (criminal history) will harm goodwill, irreparable and not remedied by money; balance/public interest favor injunction | Defendants would have to stop using the name and site but offered no legitimate right to marks | Court: Irreparable harm likely; remedies at law inadequate; balance and public interest favor NYP; injunction affirmed |
Key Cases Cited
- Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337 (2d Cir. 1999) (registrations create prima facie evidence of validity and ownership)
- Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961) (likelihood-of-confusion multifactor test)
- Sporty’s Farm L.L.C. v. Sportsman’s Mkt., Inc., 202 F.3d 489 (2d Cir. 2000) (ACPA confusingly similar standard and bad-faith analysis)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (injunctive-relief standard applied to trademark preliminaries per Salinger)
- Salinger v. Colting, 607 F.3d 68 (2d Cir. 2010) (eBay injunctive standard applies; irreparable harm not presumed)
- Arrow Fastener Co. v. Stanley Works, 59 F.3d 384 (2d Cir. 1995) (discussion of Polaroid factors)