Mr. Smutmeyer should know that, although his risks are somewhat high in pursuing a state dilution claim and/or a federal trademarks (TM) infringement claim against a defendant so well-heeled as The Hearst Corporation (and, indeed Oprah), he may nonetheless be able to extract, a settlement, especially under an infringement claim under 15 US.C. §1114 and an argument that there is "reverse confusion."

Mr. Smutmeyers’s dilution claim under N.Y. state law probably has a minimal chance of success, mainly because it risks looking like frivolity. It is obviously particularly bizarre to stake out a claim (at least in a culture such as ours) that ones pornographic publication is blurred – or worse, tarnished – by a publication guided by the values of Oprah Winfrey.

Thanksfully, under New York law we need only prove likelihood of dilution in order to get the injunctive relief that might provide some leverage for a settlement, but a march through the relevant factors that tend to demonstrate dilution suggests that we might even need to worry about Rule 11. For, even proceeding on the basis of the Nabisco (2nd. Cir.) Court’s wellingness to find likelihood of dilution where "a fish is a fish," we don’t have a situation here where "an `O’ is an `O’." Smutmeyer is using the marks 1O’, and Hearst is using "O The Oprah Magazine." Certainly, the mark as used features a large "O" which catches the sight at first glance, but the marks are not necessarily all that similar.

Neither are the products. Smutmeyer’s publication, as suggested by his legend, features "art, fetish, fashion & fantasies." There is sex and nudity in his publication. Heart’s magazine while containing fashion shoots of partially nude models and sexually themed articles of concern to a mainly female audience, is quite dissimilar. The publications are even typically sold in different places. (45 feet away from each other in the Tower Records store in suburban New York in 2001). None of the retailers of Hearst’s product (e.g. Wal-Mart) wouldn’t even sell Smutmeyer’s.

The sophistication of Smutmeyer’s consumer also probably counts against him. We are unlikely to worry about the consumer of a pornographic publication called "O" being confused by The Oprah Magazine. This way reflect ridiculous cultural bias and an assumption about the sophistication of consumers of "adult" things, but this assumption is a reality we must live with.

Moreover, we can demonstrate no predatory intent on the part of the Hearst Corporation, which appears to have adapted the marks in good faith and based on the remarkable good will associated with Oprah Winfrey, whose nickname is "O".

 Finally, the limited renown of the senior mark (Smutmeyer’s) and the significant renown of the senior mark already both tend to suggest that the Heart publication is unlikely to blur the distinctiveness -- if any -- of Smutmeyer’s mark.

Smutmeyer might have a better claim of infringement of his federal registration, however, making the argument that reverse confusion is likely. In response to this argument, a court might decide to distinguish away Smutmeyer’s use per the Harlem Wizards case. In this scenario, the court would find Smutmeyer’s use in the field of pornographic publications too far afield of Hurt’s publication of a health-and-beauty-related magazine for women. Alternatively, under a Dreamwerks analysis, the court might engage the fact of "mirroing" of a traditional infringement suit and find that the Hurst Corporation’s use damages Smutmeyer’s mark by suggesting that he adopted the mark in bad faith. Such an interpretation among consumers might be particularly likely since Smutmeyer’s use has such "underworldly" attributes and is much less famous already. If Smutmeyer could obtain an injunction on such a Dreamwerks analysis, he may be able to negotiate a nice settlement from Hurst. But, if a court pursues anything like a traditional Polaroid factors analysis in reasonable likelihood of confusion here, most of the factors tend to weigh against Smutmeyer.

Smutmeyer’s mark is not particularly strong (suggestive at best); the marks, as we have seen, are not as similar as we would wish for; the proximity of the products - both in character and in terms of where they are marketed - is not close; the conjectural likelihood that Hurst would bridge the gap into Smutmeyer's realm is almost nonexistent; there is very limited evidence of actual confusion (the e-mails from Oprah subscribers); defendant's bad faith would probably count for Smutmeyer in the reverse confusion analysis; and the quality of defendant's product certainly would count for him. Finally, the sophistication of the Hurst consumer (although not as great as that of the Smutmeyer consumer) is probably high enough to count against Smutmeyer.

Thus, to prevail on a reverse confusion argument, Smutmeyer would really need to rely upon the openmindedness of the court to the possiblity of entertaining a Dreamwerlss - like mirroing analysis. All this suggests to me that the settlement value of his case is not all that high, but he may have a fairly good reverse confusion claim.