810 F.3d 424
6th Cir.2016Background
- The Flynts are siblings in a long-running business dispute over the Hustler enterprise and related trademarks.
- A 2011 permanent injunction barred Jimmy and his entities from using any HUSTLER mark or any mark owned by Larry’s group.
- Jimmy opened Hustler Cincinnati and later a Florence, Kentucky store under FLYNT Sexy Gifts, continuing use of Flynt/related marks.
- The district court found Jimmy’s Florence conduct likely caused consumer confusion with the LARRY FLYNT trademark and modified the injunction accordingly.
- The court’s modification allowed Jimmy to use his own first name and, with a disclaimer, to use the Flynt surname in limited circumstances, while restricting use in advertising adult products.
- The Sixth Circuit affirmed the modification, holding it appropriately tailored to changed circumstances and consistent with trademark law allowing personalized surname usage with safeguards.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the district court could modify the injunction under changed circumstances. | Larry argues modification necessary due to new Florence store use. | Jimmy contends modification standards were misapplied or too broad. | Affirmed; modification proper under changed circumstances. |
| Whether Jimmy’s Florence use of Flynt/Flynt Sexy Gifts violated the injunction and trademark law. | Larry asserts likely confusion and infringement through Florence store. | Jimmy contends no direct violation and proper use of his surname. | Court found likelihood of confusion and upheld tailored modification. |
| Whether permiting use of Jimmy’s name with disclaimers comports with trademark principles for personal names. | Larry seeks protection against confusion tied to surname usage. | Jimmy should be able to use his own name with appropriate safeguards. | Yes; injunction allowed “Jimmy Flynt” usage and required disclaimers where needed. |
Key Cases Cited
- Rufo v. Inmates of Suffolk Cty. Jail, 502 U.S. 367 (1992) (modified injunctions proper where circumstances changed and relief tailored to those changes)
- United States v. United Shoe Machinery Corp., 391 U.S. 244 (1968) (district courts may modify injunctions not achieving principal objects)
- United States v. Swift & Co., 286 U.S. 106 (1932) (grievous-wrong standard; later limited by Rufo and later cases)
- Circuit City Stores, Inc. v. CarMax, Inc., 165 F.3d 1047 (6th Cir. 1999) (principles for protectable personal-name trademarks and scope of injunctions)
- Doeblers’ Pa. Hybrids, Inc. v. Doebler, 442 F.3d 812 (3d Cir. 2006) (family/third-party surname trademark considerations)