In a December 11 2012 complaint filed in the US District Court for the Central District of California, Western Division, Playboy said it spent millions each year on advertising, promoting, developing and protecting its stable of over 250 federally registered trademarks.
But the Playboy Energy Drink was still illegally marketed and sold in California after the termination of a licensing agreement – with the Playboy marks displayed, Hugh Heffner-powered Playboy said, and was still being promoted via both the Play Beverages (PlayBev) and CirTran websites.
‘Tarnishing the category’ - Playboy roars
PlayBev partner CirTran – which manufactures, markets and distributes the former’s Playboy-licensed products, “continues to act as though PlayBev’s [now defunct] license agreement is still in force,” Playboy complained.
“[The] defendants state…[online]…that PlayBev is the official licensee of Playboy and that PlayBev’s use of the word ‘Playboy’ and the Rabbit Head Design is under license,” the multinational media firm added.
“However, these statements are not true, as the license agreement has expired and Playboy has advised the defendants of this fact.”
Summing up the basis for its action, Playboy claims that the defendants’ actions are “irreparably harming the energy drink category itself”.
“[The] defendants’ actions are tarnishing the category because they continue to represent their use of Playboy marks as authorized by Playboy, when that is not the case,” the company said.
“As long as defendants’ infringement causes confusion, Playboy is hindered in its ability to control the use of its intellectual property in, and to capitalize on, this licensing category.”
Playboy signed a licensing deal with PlayBev in 2006, which gave the latter the limited right to manufacture and sell specific non-alcoholic beverages, including Playboy-branded energy drinks.
According to Playboy's filing PlayBev obtained voluntary bankruptcy in in late April 2011, and – in light of negotiations linked to this process – Playboy ultimately agreed to extend the licensing deal upon the basis of three alternative dates:
(1)September 30 2012 (2) an alternative expiration date if PlayBev managed to obtain a chapter 11 ‘reorganization’ bankruptcy by this date (3) automatic termination with no further action if PlayBev’s ‘proposed reorganized debtor’ did not pay $2m to Playboy by a given date.
All the expiration dates passed and PlayBev did not make the payment, the filing stated, and Playboy said that neither PlayBev nor its partners CirTran and CBC (which derived rights from PlayBev) had the right to use PlayBoy’s marks.
Thus, Playboy seeks to stop the defendants using its marks, or producing, advertising and selling products that employ them, and reimbursement of its court costs.
Under an ‘anti-cybersquatting’ count, Playboy is also striving to stop PlayBev using or operating the domain name www.playboyenergy.com (still active as of January 3), due to trademark similarities.