821 F.2d 800 (D.C. Cir. 1987), 86-5495, Reader's Digest Ass'n, Inc. v. Conservative Digest, Inc.

Docket Nº:86-5495, 86-7004.
Citation:821 F.2d 800
Case Date:June 30, 1987
Court:United States Courts of Appeals, Court of Appeals for the District of Columbia Circuit

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821 F.2d 800 (D.C. Cir. 1987)

3 U.S.P.Q.2d 1276



CONSERVATIVE DIGEST, INC., et al., Appellants.




Nos. 86-5495, 86-7004.

United States Court of Appeals, District of Columbia Circuit

June 30, 1987

Argued April 6, 1987.

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Manuel Klausner, Los Angeles, Cal., of the Bar of the Supreme Court of California, pro hac vice by special leave of Court, with whom Glenn J. Sedam, Jr. and Edward S.

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Culbertson, Fairfax, Va., were on the brief, for appellants/cross-appellees.

Arthur J. Levine, with whom Jay L. Witkin, Washington, D.C., was on the brief for appellee/cross-appellant.

Before WALD, Chief Judge, and MIKVA and BORK, Circuit Judges.

Opinion for the Court filed by Circuit Judge MIKVA.

MIKVA, Circuit Judge:

Reader's Digest and Conservative Digest, along with several of its officers, bring cross-appeals from a district court order issued after a short bench trial. In the court below, Reader's Digest sued Conservative Digest, as well as its publisher, executive publisher, and editor-in-chief, for copyright and trade dress infringement. The district court dismissed all claims against the publisher and executive publisher of Conservative Digest and one of the claims against Conservative Digest and its editor-in-chief. The court sustained the remaining claims against Conservative Digest and its editor-in-chief, but ordered a remedy more limited than the remedy Reader's Digest had sought. The court denied all of the parties' requests for attorney's fees. On appeal, Conservative Digest and its editor-in-chief attack the lower court's entry of judgment against them. Reader's Digest challenges the district court's choice of remedy. And all of the parties--Reader's Digest, Conservative Digest, and the three individual defendants--argue that they are entitled to attorney's fees. We deny all of the cross-appellants' claims and affirm the order of the district court. Perhaps our action will end this litigation, which probably should never have started and certainly should long since have ceased.


In August of 1985, William R. Kennedy, Jr. bought and became the publisher of Conservative Digest, a monthly periodical of conservative opinion with a paid circulation of about 16,000. Kennedy named James K. Dye and Scott Stanley, Jr. as executive publisher and editor-in-chief of the magazine, respectively. Stanley decided to revise the magazine's appearance and removed Conservative Digest from the newsstands pending establishment of a new format. About two months later, Stanley and Kennedy unveiled the new format at a reception they hosted at the National Press Club in Washington, D.C. The magazine Stanley and Kennedy exhibited at the reception--the October 1985 issue--bore a front cover that strongly resembled the front cover of Reader's Digest in size, shape, and graphic design. At a press conference held during the reception, Stanley acknowledged the similar appearance of the two magazines. "[I]f [Conservative Digest] looks like Reader's Digest," Stanley said, "I'm sure that Wally [DeWitt Wallace, the founder of Reader's Digest] and Lila [his wife] are somewhere up there saying, 'That's great, kids. Keep it up.' "

The current and worldly managers of Reader's Digest had no such enthusiasm for the look-alike result. They immediately contacted Kennedy, Dye, and Stanley and demanded that those persons cease publication of Conservative Digest in its new format. In response, the officers of Conservative Digest promised to use an entirely different cover design beginning with the magazine's December 1985 issue. The officers also notified Reader's Digest that newsstand sale of Conservative Digest had not yet resumed and promised to mail the November 1985 issue of Conservative Digest, then at the printers, to subscribers in a wrapper stating that "[t]his journal is an independent voice of conservative opinion and is not affiliated with any other magazine." The officers of Conservative Digest immediately took steps to fulfill these promises. Nonetheless, Reader's Digest brought this suit against Conservative Digest, Kennedy, Dye, and Stanley.

The complaint Reader's Digest filed essentially raised three charges against each of the defendants. First, the complaint charged that the defendants had infringed the trade dress of Reader's Digest in violation of section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a) (1983). Second, the complaint

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claimed that the defendants had infringed Reader's Digest's copyright in its cover design. Third, the complaint alleged that the defendants had infringed Reader's Digest copyright in eleven anecdotes that had appeared in the magazine. As relief for the alleged copyright infringements, Reader's Digest sought statutory (as opposed to actual) damages of $50,000. As relief for the alleged trade dress infringement, Reader's Digest sought all of the defendants' profits from the publication and sale of the October 1985 and November 1985 issues of Conservative Digest and a permanent injunction prohibiting the defendants from employing specified aspects of the trade dress of Reader's Digest. In addition, Reader's Digest requested attorney's fees.

The district court conducted a two-day bench trial on the claims and issued an unpublished memorandum and order two weeks later. See Reader's Digest Ass'n v. Conservative Digest, Inc., 642 F.Supp. 144 (D.D.C.1986). The court dismissed all claims against Dye and Kennedy; it also dismissed the claim against Conservative Digest and Stanley based on Reader's Digest's copyright in anecdotes. The court found in favor of Reader's Digest and against Stanley and Kennedy on the claims alleging infringement of trade dress and infringement of a copyright in Reader's Digest's cover design. In the remedial section of its opinion, the court awarded Reader's Digest $500 in statutory damages for the copyright infringement and issued an injunction for the trade dress infringement that prohibited the defendants from making any further use of the two offending covers. The court awarded Reader's Digest its court costs, but denied its request for attorney's fees. The court also denied the prevailing defendants' claims for attorney's fees.

The defendants filed a notice of appeal from the lower court's decision, and Reader's Digest subsequently filed a cross-appeal. On appeal, Conservative Digest and Stanley request this court to reverse the district court's determinations that they infringed the trade dress of Reader's Digest and infringed a copyright in the magazine's cover design. In addition, all of the defendants petition this court for attorney's fees. Reader's Digest, for its part, challenges the remedy that the district court ordered for the trade dress infringement: Reader's Digest renews its request for all of the profits from the October 1985 and November 1985 issues of Conservative Digest and seeks a broader injunction than the lower court granted. Reader's Digest also petitions for attorney's fees.


  1. Trade Dress Infringement

    Section 43(a) of the Lanham Act provides that

    [a]ny person who shall affix, apply, or annex, or use in connection with any goods or services, or any container or containers for goods, a false designation of origin, or any false description or representation...

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