Waldman Pub. Corp. v. Landoll, Inc., 94 Civ. 2022 (CSH).

• Decision Date: 08 April 1994
• Docket Number: No. 94 Civ. 2022 (CSH).,94 Civ. 2022 (CSH).
• Citation: 848 F. Supp. 498
• Parties: WALDMAN PUBLISHING CORP. and Playmore Inc., Publishers, Plaintiffs, v. LANDOLL, INC., Defendants.
• Court: U.S. District Court — Southern District of New York

848 F. Supp. 498

WALDMAN PUBLISHING CORP. and Playmore Inc., Publishers, Plaintiffs, v. LANDOLL, INC., Defendants.

No. 94 Civ. 2022 (CSH).

United States District Court, S.D. New York.

April 8, 1994.

Meltzer, Lippe, Goldstein, Wolf, Schlissel & Sazer, P.C., Mineola, NY, for plaintiffs; Charles Guttman, Loretta M. Gastwirth, Danielle Laibowitz, of counsel.

James and Franklin, New York City, for defendants; Robert L. Epstein, of counsel.

MEMORANDUM OPINION AND ORDER

HAIGHT, District Judge:

Plaintiffs are publishers and distributors of "classic" literary works adapted in shorter form and illustrated for children. Defendant publishes and distributes a competing product.

Plaintiffs assert that defendant's conduct violates section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). They also assert claims for unfair competition under the common law and section 368-d of the New York State General Business Law. Plaintiffs filed their complaint in New York State Supreme Court, New York County. They sought a temporary restraining order and a preliminary injunction. Before the state court could hear the case, defendant removed it to this Court. I granted a restraining order on March 25, 1994 and conducted an evidentiary hearing on the preliminary injunction motion on March 30 and 31 and April 4 and 5. For the reasons which follow, a preliminary injunction will issue.

THE FACTUAL BACKGROUND

Plaintiff Waldman Publishing Co. ("Waldman") publishes children's books. Plaintiff Playmore Inc. ("Playmore") sells and distributes books for Waldman.

Defendant Landoll Inc. ("Landoll") publishes, prints and sells children's books.

Waldman publishes and Playmore sells and distributes a series of books called "Great Illustrated Classics." These are retold and abbreviated versions of literary works printed in hard cover format, 5 5/8 inches by 8 inches, each 240 pages in length, with a color illustration on the cover and black-and-white illustrations opposite each page of text.

Plaintiffs also publish, print and sell soft cover versions of the books in a series called "Illustrated Classic Editions." These books contain the same text and illustrations but are reduced in size, measuring 4½ inches by 5½ inches.

Plaintiffs began selling the soft cover series in 1979 and the hard cover series in 1990. There are 36 titles currently in print in the soft cover series and 35 in the hard cover series, with another eight titles in production.

Plaintiffs sell these products to retail outlets such as K-Mart, Wal-Mart, toy stores, drug stores, and book stores. They have been highly successful. Plaintiffs sell between 4 million and 6 million copies a year, divided equally between hard and soft covers.

Among the titles plaintiffs publish and sell, in each series, are "Oliver Twist," "Robin Hood," "The Mutiny on Board H.M.S. Bounty" (the Bligh account, not that of Nordhoff and Hall), "Black Beauty," "Swiss Family Robinson," and "David Copperfield."

The adaptation of books such as these into versions for children comprising 120 pages of text and 120 illustrations requires a number of steps. Some parts of the narrative are retained; others are discarded. The text is revised to be more comprehensible to children. Decisions must be made as to what the illustrations will show. Waldman contracted with writers to adapt the text and artists to do the illustrations. These individuals are identified at the beginning of the books. Each book also contains a printed notice of copyright on behalf of Playmore and Waldman for the cover, and on behalf of Waldman for the text. However, plaintiffs have not as yet registered the works with the Copyright Office.

In December 1993 Landoll published and offered for sale soft cover illustrated adaptations of these six books in a series called "First Illustrated Classics." In January 1994 Landoll published and offered for sale the same six adaptations in hard cover, in a series called "Illustrated Classics." At a book fair in May 1993 Landoll had displayed prototypes of these series, but the display was limited to the illustrated covers, enfolding blank paper. Plaintiffs' witnesses testified, and I find, that plaintiffs did not become aware of the inner texts and illustrations of defendant's books until February 1994. They filed suit in March. In these circumstances, I reject defendant's suggestion that plaintiffs deliberately delayed the filing of suit in order to maximize defendant's disruption during an important selling season.

Plaintiffs' grievances relate not to the illustrated covers of defendant's books, which plaintiffs acknowledge are sufficiently different from theirs to avoid legal challenge. Rather, plaintiffs focus upon the texts and illustrations accompanying the texts.

Landoll's president Marty Meyers testified, and I find, that Landoll obtained the texts and illustrations for these six adaptations from one Peter Haddock, an English publisher. While on a business trip to London in March 1983, Meyers agreed to purchase the adaptations from Haddock on a "camera ready" basis. That means Haddock sent the texts and the illustrations (cover and internal) to Landoll, which used its own facilities to print them in salable form as finished books. Meyers testified, and I find, that no one at Landoll had any input with respect to the contents of the books. Landoll is obligated to pay Haddock a royalty of one cent per book sold.

Landoll displays its apple-like logo on the outside of its books. Each book identifies a writer by whom the book was "retold" and the illustrator. Landoll includes a printed notice of copyright in its own name. As with plaintiffs, Landoll has not registered its books with the Copyright Office.

Plaintiffs contend that the texts and illustrations of the Landoll books so closely resemble their own that the Landoll books must be regarded as copies of plaintiffs' books. In addition to the common law and state law claims, plaintiffs asserted two Lanham Act violations as bases for preliminary injunctive relief: reverse passing off and infringement of trade dress. In summation following the hearing, plaintiffs' counsel withdrew trade dress infringement as a basis for a preliminary injunction, although plaintiffs have not abandoned the claim. The issue in the Lanham Act context, therefore, is whether plaintiffs have made a sufficient showing of reverse passing off and the other requisite elements to entitle them to an injunction.

Landoll contends that its conduct does not violate the Lanham Act. It also contends that plaintiffs' common law and state law claims are preempted by section 301(a) of the Copyright Act, 17 U.S.C. § 301(a).

DISCUSSION

The Lanham Act Claim

Section 43 of the Lanham Act, 15 U.S.C. § 1125, provides in pertinent part:

(a)(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, of any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which —

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, ...

* * * * * *

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

Section 43(a) of the Lanham Act "created a new statutory tort of false representation of goods in commerce." Its language is "strikingly general"; and, "because the statute is remedial and because its words are so clearly expansive it should, generally speaking, be broadly construed." PPX Enterprises, Inc. v. Audiofidelity, Inc., 746 F.2d 120, 124 (2d Cir.1984). The section "has been employed successfully to combat a wide variety of deceptive commercial practices." PPX Enterprises, Inc. v. Audiofidelity Enterprises, 818 F.2d 266, 270 (2d Cir.1987). "These practices traditionally involve the misappropriation of another's talents." Merchant v. Lymon, 828 F.Supp. 1048, 1059 (S.D.N.Y.1993).

One of the deceptive practices actionable under section 43(a) is that form of false designation of origin known as "reverse palming off" or "reverse passing off." In reverse passing off, the wrongdoer sells plaintiffs products as its own. It contrasts with passing off, where the wrongdoer sells its products as the plaintiffs. A phonograph record album creating the false impression that defendant rather than plaintiff was the principal performer constitutes reverse passing off, actionable under section 43(a). Sims v. Blanchris, 648 F.Supp. 480, 482 (S.D.N.Y. 1986). More pertinent to the case at bar, a book which fails "to attribute authorship to a co-author resulting in only a partially accurate designation of origin constitutes reverse palming off within the ambit of section 43(a)." Rosenfeld v. W.B. Saunders, 728 F.Supp. 236, 243 (S.D.N.Y.), aff'd, 923 F.2d 845 (2d Cir.1990). See also Debs v. Meliopoulos, No. 1:90-939C, 1993 WL 566011 (N.D.Ga. Dec. 18, 1991) (same); Feerick v. Arthur Young & Co., 715 F.Supp. 1234, 1236 (S.D.N.Y.1989) (claim that book contained false attribution of editorial credit cognizable under section 43(a)); Follett v. New American Library, 497 F.Supp. 304 (S.D.N.Y.1980) (false attribution of principal authorship had a tendency to mislead the public and was therefore actionable under the Lanham Act.).

The concept of reverse passing off is of broad dimension, limited only by the ingenuity of wrongdoers seeking to mislead. See, e.g., Williams v. Curtiss-Wright Corp., 691 F.2d 168, 172 (3d Cir.1982) ("A false designation of origin in the form of reverse palming off is prohibited by the Lanham Act"; defendant passed off plaintiffs replacement jet engine parts as its own); Arrow United Industries v. Hugh Richards, Inc., 678 F.2d 410,...