Metro Publishing, Ltd., a California Partnership v. San Jose Mercury News, a California Corporation

In this trademark infringement action Metro Publishing (“Metro”), the publisher of the weekly tabloid Metro, a regular feature of which is a column called “Public Eye,” appeals the district court’s denial of its motion for a preliminary injunction to stop San Jose Mercury News (“Mercury News”) from publishing a competing weekly tabloid called “eye.” We reverse and remand.

FACTS AND PROCEDURAL HISTORY

Appellant has published the weekly tabloid Metro, billed as “Santa Clara Valley’s Weekly Newspaper,” since 1984. The paper is distributed free to the public every Thursday in the San Jose metropolitan area, mainly via newspaper racks found in restaurants, night clubs, stores, theaters, and on the street. According to appellant, although Metro carries news and feature stories, “the paper’s focus is entertainment and arts, including restaurant reviews, a dining guide and a detailed list of what’s happening in metropolitan San Jose in areas of film, music, theater, nightlife and special events.” (Appellant’s Opening Br. at 5.)

In 1985, Metro began carrying a column called “Public Eye,” devoted primarily to local political gossip and intrigue. The format of “Public Eye” has varied…