Playboy is not just a leading men's magazine; it also has an extensive global licensing program and a strong online presence. Ana Cashman, assistant counsel at Playboy Enterprises, tells Shahnaz Mahmud why this poses increasing enforcement challenges.
How long have you been with Playboy?
It will be five years in July. Before that I was a partner with law firm Seyfarth Shaw. When I graduated from law school in 1993, I wasn't sure what type of law I wanted to practice. I knew I was interested in international law so I enrolled in the LL.M. program at Kings College at the University of London. After I left my Introduction to IP class, something just clicked and I knew this was the field I wanted to practice in, especially knowing the challenges the law would face during those early days of the Internet.
What I really like about this area of law is that is has to develop as the technology does. I often feel as though I am taking on the role of a creative counselor to my clients. Issues with the Internet and domain names inevitably lead to trademark law. In that way, I always have to be creative – because it's always changing. Trademark law never gets boring or stale.
What is your business model?
Playboy is an international multimedia entertainment company. Our Media Group includes our television, digital and publishing divisions and our Global Licensing Group oversees our product licensing business as well as our land-based entertainment facilities. Our product licensing business generates in excess of $700 million in retail sales in more than 130 countries. The PLAYBOY and rabbit head design trademarks are very successful globally and we've experienced tremendous success in Europe and Asia.
The company has 12 in-house attorneys who handle everything from corporate compliance to litigation to overseeing production and distribution deals. Our lawyers are spread out in our Chicago, New York and Los Angeles offices.
As assistant counsel, I oversee five people on our in-house trademark team, which manages both prosecution and enforcement of our trademarks. Playboy has about 7,000 trademarks in over 200 countries (both applications and registrations).
In the last five years, we have revamped and significantly strengthened our global anticounterfeiting program. As one of the world's most recognized brands, we need to ensure we actively enforce our rights in our valuable marks.
What is the history of the brand?
In 1953, Hugh Hefner released the first edition of Playboy magazine. The original title was Stag Party. But, another magazine had trademark rights to STAG and subsequently served Hefner with a cease and desist letter. So, at the last minute, Hefner changed the magazine title to Playboy. This is now one of the most recognizable brands in the world. The rabbit head design is now synonymous with the term "playboy."
What are the greatest strengths and weaknesses of the brand?
I think the fact that the brand is so recognizable is both its greatest strength and weakness. Its identity is helpful in terms of enforcement. But the famous mark is prone to being copied or stolen heavily. The increase in counterfeit goods with the trademark is astounding. And it's difficult to keep on top of everything because of the number of countries we are registered in.
How do you maintain control of the brand as used by licensees?
We have very strict control provisions in our license agreements through which we review products at every step of development. We use an online system to track approvals. We also have strict guidelines on the use of our trademarks. We work closely with our licensees to ensure we are all on the same page regarding the way the PLAYBOY brand is presented.
What other brands do you own?
Playboy's other trademarks include PLAYMATE and PLAYMATE OF THE YEAR. The SPICE trademarks are used for the adult entertainment business.
Do you protect any look-and-feel aspects of the brand?
We protect our Playboy bunny costume, which has been worn by Playmates for over 40 years. We rely on trademark and trade dress protections, depending on the particular laws of the pertinent country. We consider it to be one of our most valuable trademarks because consumers clearly associate it with Playboy.
How many countries do you protect the trademarks in?
Over 200, in such countries as Japan, China, Hong Kong, Vietnam, Korea, Australia, Thailand, Australia, New Zealand, all of South America.
How has the brand changed since you joined?
The product licensing business has grown exponentially, resulting in much more counterfeiting activity. Five years ago, we were doing about $250 million in retail sales globally. Now, we have almost tripled that number.
What's most challenging?
Fighting counterfeits. We use a variety of different experts in our global
anticounterfeiting program including investigators, Customs agents, local enforcement groups and attorneys. This has proven to be very effective. Customs all over the world has been very helpful to us, particularly in the EU and China.
I do feel that we have undertaken a lot of good measures. That is evidenced by the fact that counterfeiting of our brands/products has diminished. The counterfeiters are going to other brands.
HISTORY OF THE PLAYBOY BRAND
Playboy Enterprises, whose corporate headquarters are in Chicago, Illinois, started with Playboy magazine, which was launched in December 1953. It was founded by Hugh Hefner, who is still editor-in-chief.
No date appeared on the first issue. According to the Playboy website, Hefner just had a few dollars in the bank and did not expect a second issue to be printed. His name does not appear in the first issue, either. But it sold 54,175 issues – an extraordinary achievement for a new magazine that did not have much advance publicity. One of the big draws in the first issue was a nude photo of a young Marilyn Monroe that Hefner bought from a local calendar printer. Other features in the issue were a Sherlock Holmes story by Sir Arthur Conan Doyle, an article on the pop singing duo the Dorsey Brothers and an article on desk design for the modern office. Hefner wrote most of the copy himself and drew all of the cartoons.
Today Playboy sells more than 3 million copies monthly just in the United States and 4.5 million worldwide.
But the group consists of much more than just Playboy magazine. Playboy Enterprises operates television networks, distributing globally programs including Playboy TV, Playboy Home Entertainment and Playboy Radio. It also operates Playboy Online and Wireless. Playboy's licensing group capitalizes on its powerful bunny logo. The company touts an extensive lineup of fashion and consumer goods, which includes underwear, legwear, footwear and home furnishings, as well as lifestyle and entertainment products.