CHICAGO — A Chicago judge on Friday sided with Playboy Enterprises Inc. and tripled a jury award against a pair of former licensees, Play Beverages LLC and CirTran Beverage Corp., that were alleged to have infringed on its trademark.
Last October, a jury unanimously found that the beverage companies intentionally sold Playboy Energy Drinks under Playboy's trademarks knowing that they were counterfeit. The jury awarded Playboy $5 million in damages for infringement, along with $1.6 million in a breach-of-contract claim.
Friday’s tripling of the jury’s award means that Play Beverages and CirTran are on the hook for $15 million in damages. The judge also awarded to Playboy attorneys' fees and costs of suit.
The enforceable judgment as modified by the court now totals about $19 million, Playboy’s trial counsel said.
The court earlier issued a permanent injunction against the beverage companies and persons associated with them, including their principal, Iehab Hawatmeh, along with their agents and distributors.
The injunction ordered them to immediately stop manufacturing, selling, promoting and advertising Playboy Energy Drinks, as well as any other Playboy products or services.
The legal feud between the companies that were once business partners has been going on for more than five years and has worked its way through bankruptcy court, federal district courts in California and Illinois and the Chicago-area county court.
After several of CirTran’s creditors began an involuntary bankruptcy proceeding against the company in 2011, Playboy told CirTran it was terminating the licensing deal over missed royalty payments.
CirTran’s distributor Play Beverages, in response, filed claims accusing Playboy of interfering with its sales and distribution of the drinks.
The parties agreed to drop litigation to try to negotiate themselves but, in the meantime, the original deal expired and Play Beverages was unable to raise $2 million to keep its business alive.
Later, CirTran and Play Beverages sued Playboy, reasserting breach of contract allegations and claiming the company told them they intended to extend CirTran’s five-year licensing deal and encouraged them to sign contracts with distributors to sell the drink.
CirTran then claimed that Playboy actually had no intention of re-entering into the licensing deal because it was negotiating with other suitors.
Playboy moved its claims on to another venue, federal court in California, asking a judge to enter a preliminary injunction barring the company from selling the products after the license’s expiration.
After the federal court dismissed it for lack of jurisdiction, Playboy refiled its case in Illinois federal court, where a judge there said the dispute should be resolved in state court, where CirTran’s suit was still pending.
Playboy then brought several counterclaims, alleging it was CirTran that breached the contract and accusing the company of infringing on Playboy’s trademark.
In a statement today, Playboy officials said that they plan to collect on the judgment in the long-running case.
“Playboy will continue to strongly enforce its judgment and injunction against Play Beverages/CirTran Beverage to stop Iehab Hawatmeh's companies from engaging in infringing and counterfeiting activities,” Playboy said. “In addition, Playboy will continue to defend its trademarks vigorously throughout the world as Playboy has done in this case.”
