A VIAGRA Use That Didn’t Stand Up

Submitted by patentadmin on Thu, 01/21/2010 - 13:06

Some cases simply cry out to be the subject of a blog, but none more so than Pfizer Inc. v. Arye Sachs and JetAngel.com.

For those readers who are not residents of the planet Earth and hence may not be familiar with VIAGRA, we will note that Pfizer is the owner of the mark VIAGRA federally registered in respect of a “prescription pharmaceutical used to treat erectile dysfunction.” Sachs is the owner of JetAngel.com, an unincorporated business that sells outdoor advertising printed on decommissioned military equipment such as fighter jets and missiles which are used as a kind of mobile billboard.

On September 8, 2008, Sachs towed a trailer bearing a twenty-foot long decommissioned Air Force missile bearing the VIAGRA mark into Manhattan and parked it in front of Pfizer’s world headquarters (query – how did he find a parking place in Manhattan?). When the inevitable crowd gathered, he distributed informational pamphlets about his business and, in case they might somehow have failed to notice his missile, left one for Pfizer. The next day, he sent an email message to Pfizer promising that he would return the following week, but that this time the missile would have two female models “riding it” and distributing condoms. Pfizer, apparently failing to see the humor in this, sent the defendants a letter demanding that they immediately cease their unauthorized use of the VIAGRA mark. When they received no response, Pfizer sent a second such letter on the next day.

Undaunted, the defendants exhibited the missile at an “adult entertainment exposition” in New Jersey and sent an email message to Pfizer announcing their intention to take the missile on a tour of New York and twelve other major cities. As part of that promotion, the defendants planned to distribute condoms bearing the images of the candidates for President of the United States. On September 17, they issued a press release describing the planned tour and the advertising opportunities it offered.

The very next day, still not seeing the humor in this, Pfizer filed suit. The Court promptly granted a temporary restraining order and a preliminary injunction barring the defendants from further use of the VIAGRA mark pending resolution of the action.

Pfizer, asserting trademark infringement, false designation of origin, false endorsement, unfair competition, trademark dilution and pendant state-law claims, moved for summary judgment. Sachs, who represented himself pro se, argued that the mark was not entitled to protection because it had become so famous that it had become generic and that enforcement of Pfizer’s rights in the mark would violate his first amendment right of free speech (what kind of pharmaceuticals was he using?).

In support of his “genericness” defense, Sachs proffered an ad hoc “survey” of approximately 100 people. The Court promptly rejected Sachs’ survey, noting that Sachs “did not consult experts in survey science and recruited their surveyors through an ad in Craigslist.”

Not surprisingly, the Court found in favor of Pfizer. Although the Court passed up the opportunity to write an entertaining decision, it did repeatedly refer to several key facts: defendants displayed the mark in front of Pfizer’s headquarters (mentioned twice) in a manner “which undoubtedly could lead to consumer confusion”; defendants neither sought nor relied on the advice of counsel (mentioned twice); and defendants’ behavior, including advertising in front of adult entertainment establishments (mentioned twice) and threatening to distribute condoms with images of presidential candidates (mentioned twice) “may be inconsistent with the image Pfizer wishes to project.”

In closing, the Court, having earlier cautioned Sachs that he “faced considerable financial jeopardy,” awarded reasonable attorney’s fees to Pfizer. Pfizer, showing unexpected charity and compassion, thereafter agreed to a settlement waiving its attorney’s fee award.

THE LESSON TO BE LEARNED: If you’re infringing someone’s famous trademark, don’t rub their noses in it; large corporations rarely have a sense of humor.

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