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United States District Court for the Southern District of New York
November 26, 2003, Decided ; December 2, 2003, Filed
03 Civ. 2292 (JSR)
[**1093] MEMORANDUM ORDER
JED S. RAKOFF, U.S.D.J.
By Order dated November 24, 2003, the Court granted plaintiff Philip Morris USA Incorporated ("Philip Morris") summary judgment in its favor, and concomitant injunctive relief, on its [*2] trade dress infringement claim against defendant Cowboy Cigarette Incorporated ("Cowboy"). This Memorandum Order states the reasons for that ruling and additionally disposes of the remainder of the case.
The pertinent facts, either as undisputed or, where disputed, taken most favorably to defendant (the non-moving party), are as follows:
Philip Morris makes the cigarette brand called Marlboro, whose market share currently exceeds 35% of the United States market for cigarettes. Declaration of Roy Anise, dated September 8, 2003 ("Anise Decl.") at P 27. Cowboy, a company organized on April 11, 2002, makes "Cowboy" cigarettes, a small local brand that did not enter the market until June 19, 2002. Declaration of Irene Hudson, dated September 8, 2003 ("Hudson Decl."), Exh. C (Deposition of Mark Goldberg ("Goldberg. Dep.")) at 10; Affidavit of Mark Goldberg, dated October 22, 2003 ("Goldberg Aff.") at P 7.
Since 1963, the great majority of advertisements for Marlboro cigarettes have prominently featured a cigarette-smoking cowboy integrated into a western motif. Anise Decl. P 19. Although prior to that time other cigarette brands occasionally made use of a western motif, the advertisements [*3] of Marlboro were so saturated with such imagery (Anise Decl. Exh. E-G, J-L, N-O) that they came to be commonly referred to as the "Marlboro Man" and "Marlboro Country." Hudson Decl. Exh. B1, B2
Nonetheless, since their entry into the marketplace in 2002, "Cowboy" cigarettes have been advertised using similar cowboy imagery. Hudson Decl., Exh. E; Anise Decl., Exh. Q. Such imagery also appears on the Cowboy cigarette pack, which is, like the Marlboro cigarette pack, red and white, and prominently features a triangular wedge. See Defendant's Exhibits A & B, presented at oral argument, November 7, 2003.
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2003 U.S. Dist. LEXIS 21582 *; 70 U.S.P.Q.2D (BNA) 1092 **
PHILIP MORRIS USA INC., Plaintiff, -v- COWBOY CIGARETTE INC., Defendant.
Disposition: [*1] Plaintiff's motion for summary judgment on trade dress infringement granted. Injunction granted.
trade dress, Cowboy, cigarettes, advertisements, infringement, factors, secondary meaning, plagiarism, undisputed, consumer, likelihood of confusion, summary judgment, products, motif
Trademark Law, Infringement Actions, Summary Judgment, General Overview, Federal Unfair Competition Law, False Advertising, Business & Corporate Compliance, False Designation of Origin, Elements of False Designation of Origin, Entertainment Industry Falsity & Performance Misattribution, Trade Dress Protection, Causes of Action, Subject Matter of Trademarks, Terms Requiring Secondary Meaning, Burdens of Proof, Elements of Trade Dress Infringement, Functionality Defense, Causes of Action Involving Trademarks, Likelihood of Confusion, Civil Procedure, Entitlement as Matter of Law, Conveyances, Defenses, Similarity of Marks, Appearance, Meaning & Sound, Consumer Confusion