Frederick Warne & Co., Inc. v. Book Sales Inc.

• Decision Date: 19 December 1979
• Docket Number: No. 78 Civ. 2375.,78 Civ. 2375.
• Parties: FREDERICK WARNE & CO., INC., Plaintiff, v. BOOK SALES INC., Defendant.
• Court: U.S. District Court — Southern District of New York

481 F. Supp. 1191

FREDERICK WARNE & CO., INC., Plaintiff, v. BOOK SALES INC., Defendant.

No. 78 Civ. 2375.

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

December 19, 1979.

COPYRIGHT MATERIAL OMITTED

Curtis, Morris & Safford, New York City, for plaintiff by Pasquale A. Razzano, New York City.

Gottlieb, Rackman & Reisman, New York City, for defendant by George Gottlieb, New York City.

OPINION ON MOTIONS FOR SUMMARY JUDGMENT

SOFAER, District Judge.

Frederick Warne & Co., Inc. ("Warne"), brings this trademark infringement action against Book Sales, Inc. ("BSI") under Sections 32(1) and 43(a) of the Lanham Act, 15 U.S.C. § 1114(1) and § 1125(a) respectively, as well as under the New York Anti-Dilution Statute, General Business Law § 368-d. The case is before the court on cross motions for summary judgment filed pursuant to Rule 56 of the Federal Rules of Civil Procedure.

Plaintiff Warne publishes the well-known series of children's books written and illustrated by Beatrix Potter, and sold under the trademark "The Original Peter Rabbit Books." Warne was, in fact, Miss Potter's original publisher, printing the first volume of her series, The Tale of Peter Rabbit, in 1902. Since then, millions of children have been delighted — and some, no doubt, terrified — by the adventures of the naughty rabbit. Subsequent volumes brought to life the antics of Squirrel Nutkin, the mischief of the Two Bad Mice, the mysterious ways of Mrs. Tiggy-Winkle, and tales of Miss Potter's many other endearing characters.

For years, Warne and Miss Potter enjoyed the profits generated by their extraordinarily popular series. Substantial sales continue today. But because seven of the books, in issue here, are no longer — or never were — covered by copyright protection in the United States, several new editions of Miss Potter's works have recently appeared on the market to compete with Warne's editions. Warne concedes that the seven works are in the public domain. Nevertheless, Warne claims exclusive rights in the cover illustrations, and character marks derived from those illustrations, which were originally created by Miss Potter for Warne's editions of the seven books, and which do not appear within the text of the books themselves.¹ In addition, it claims exclusive trademark rights in an illustration appearing within The Tale of Peter Rabbit, referred to as the "sitting rabbit." Three of the covers have been registered under the Lanham Act as book trademarks — the "running rabbit," the "dancing squirrel," and the "reading mouse." Protection for the unregistered marks is claimed on the basis of Section 43(a) of the Act, which permits claimants to prove validity without the benefit of the presumption of validity that registration confers.

Warne has creatively exploited public affection for Miss Potter's characters by using, and licensing the use of, the eight illustrations on a variety of commercial products.² Thanks to its marketing efforts, Warne claims, the characters portrayed in the eight illustrations, "particularly the `running rabbit' have attained a place in the public esteem comparable to Mickey Mouse, Peter Pan, and Raggedy Ann and Andy." (Aff. of Richard Billington, ¶ 16.) The notion that a British cony, however endearing, could gain as important a place in American hearts as Mickey Mouse seems dubious. Both are rodents, it is true, and thus equally entitled to our affections. But Mickey has had the benefit of competing for the American heart and dollar through moving pictures, an insurmountable advantage. Luckily for plaintiff, though, its burden is far less than its papers suggest.

The controversy here concerns defendant's use of the illustrations in which plaintiff claims trademark protection. Since October 1977, defendant has marketed a book entitled "Peter Rabbit and Other Stories" ("the BSI Peter Rabbit book"). It combines the seven Potter stories now in the public domain into a single, large and colorful volume. In its book defendant photographically reproduced the drawings of Miss Potter that appeared in early Warne editions and juxtaposed these illustrations with text from the books in a sequence corresponding to those of the original works. Defendant went beyond reproducing the works as originally published, however. It also produced redrawings of the cover, illustrations from the seven Warne books and a redrawing of the "sitting rabbit" illustration. It placed the cover reproductions at the beginning and end of the stories for which they were originally designed. In addition, it used photographic reproductions from each of the original Warne covers as "corner ornaments" on most of the pages of each of the seven stories; the Tale of Peter Rabbit, for example, has a picture of the "running rabbit" on the lower right-hand corner of every page. Finally, BSI initially used a reproduction of the "sitting rabbit" design on the cover of its book. This design, it should be recalled, appeared within Miss Potter's original books, but has been used by Warne since 1972 as the principal symbol of its licensing enterprise. After publishing its editions with the "sitting rabbit" cover, and after plaintiff instituted this action, BSI switched to a "standing rabbit" design of its own creation.

Warne contends that BSI's use of all eight illustrations constitutes trademark infringement. It seeks injunctive relief as well as damages and an accounting.

Both plaintiff and defendant have moved for summary judgment. When these motions were made, representations by the parties suggested that no disputed facts existed that would require a trial. In particular, defendant seemed willing to concede the validity of plaintiff's claim to trademark protection, in order to test its argument that when copyright protection ended the books could be copied in their entirety. But, after briefs were submitted and argument held, it became clear that defendant is unwilling to concede that the illustrations in issue have acquired trademark significance, identifying Warne's publishing enterprise and not merely the Beatrix Potter works it publishes.

As the Second Circuit has admonished, "disputes between parties as to trade-mark validity and infringement can rarely be determined satisfactorily on a motion for summary judgment." Marcus Breier Sons v. Marvlo Fabrics, 173 F.2d 29 (2d Cir. 1949). Given the difficulty, indeed novelty, of the issues presented, full development of the facts at trial will be particularly important to a proper resolution of this case. That the parties have filed cross motions for summary judgment, arguing simultaneously that there is no genuine issue of material fact, has no bearing on this determination. Rains v. Cascade Industries, 402 F.2d 241, 245 (3d Cir. 1968). Consequently, and for the reasons that follow, summary judgment must be denied to both parties.

I. Plaintiff's Claim to Trademark Protection

To succeed in this action, plaintiff must first establish that it has valid trademark rights in the eight character illustrations as used on its books and other products. Section 45 of the Lanham Act defines a trademark as any "word, name, symbol, or device . . . adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others." 15 U.S.C. § 1127. Although the illustrations here are capable of distinguishing Warne's books from those of others, it cannot be said that they are so arbitrary, unique, and non-descriptive as to constitute "technical trademarks," which are presumed valid as soon as they are affixed to the goods and the goods are sold. Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694 (2d Cir. 1961). Accordingly, plaintiff has the burden of establishing that these illustrations have acquired secondary meaning, defined as "the power of a name or other configuration to symbolize a particular business, product or company." Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 203 n. 5 (2d Cir. 1979), quoting Ideal Toy Corp. v. Kenner Products Division of General Mills Fun Group, Inc., 443 F.Supp. 291, 305 n. 14 (S.D.N.Y.1977).

In the instant case, it would not be enough that the illustrations in question have come to signify Beatrix Potter as author of the books; plaintiff must show that they have come to represent its goodwill and reputation as publisher of those books. Whether or not the illustrations have acquired that kind of secondary meaning is a question of fact, Speed Products Co. v. Tinnerman Products, Inc., 222 F.2d 61 (2d Cir. 1955); Turner v. HMH Publishing Co., 380 F.2d 224 (5th Cir.), cert. denied, 389 U.S. 1006, 88 S.Ct. 566, 19 L.Ed.2d 601 (1967); see generally McCarthy, Trademarks and Unfair Competition § 5:10, which may be proven by either direct or circumstantial evidence. As to those marks registered under the Lanham Act, the registration constitutes prima facie evidence of trademark validity. See Section 33(a), 15 U.S.C. § 1115(a); see generally McCarthy, supra, § 11:16, § 15:12.

In addition, plaintiff must establish that defendant's use of the eight illustrations is trademark infringement. Under Section 32(1) of the Act, a cause of action for infringement of a registered mark exists where a person uses the mark "in connection with the sale . . . or advertising of any goods . . . where such use is likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1114(1). With respect to the unregistered illustrations, plaintiff may succeed under Section 43(a), a broadly worded provision which creates a federal cause of action for false designation of origin or false representation of goods or services. Boston Professional Hockey Association, Inc. v. Dallas Cap & Emblem Manufacturing, Inc., 510 F.2d 1004, 1010 (5th Cir.), cert. denied, 423 U.S. 868, 96 S.Ct. 132, 46 L.Ed.2d 98 (1975); Joshua Meier Co. v. Albany Novelty Manufacturing Co., 236 F.2d 144, 147 (2d Cir. 1956). As a general...