American Greetings Corp. v. Dan-Dee Imports, Inc.
| Decision Date | 02 October 1985 |
| Docket Number | Civ. A. No. 83-4246. |
| Citation | 619 F. Supp. 1204 |
| Parties | AMERICAN GREETINGS CORP. and CPG Products Corp., Plaintiffs, v. DAN-DEE IMPORTS, INC., Daniel Ranzman and Lee Capozzi, Defendants. |
| Court | U.S. District Court — District of New Jersey |
COPYRIGHT MATERIAL OMITTED
COPYRIGHT MATERIAL OMITTED
COPYRIGHT MATERIAL OMITTED
Carol F. Simkin, Cowan, Liebowitz & Latman, P.C., New York City, Ronald Gould, Shanley & Fisher, Morristown, N.J., for plaintiffs.
Jesse Rothstein, Joel Lutzker, Amster, Rothstein & Engelberg, New York City, Robert Alvin Adler, Simon & Allen, Newark, N.J., for defendants.
This matter is before the court on plaintiffs' motion for contempt and/or to amend the November 29, 1983 preliminary injunction of the court. Defendants here cross-move to vacate or narrow such injunction. Plaintiffs contend that defendants' sale of pastel colored stuffed animals with prominent pictorial designs on their stomachs or chests, i.e., "tummy graphics," is likely to cause public confusion by indicating a connection with plaintiffs' line of Care Bear products. Defendants argue that their Goodtime Gang, including the bears originally enjoined, are not likely to be confused with Care Bears and that, if they are, the use of "tummy graphics" is functional and cannot be enjoined. Originally brought on by Order to Show Cause dated August 28, 1984, the instant matter was the subject of 6 days of hearings, commencing on December 17, 1984.
Plaintiff American Greetings Corporation ("American") is an Ohio corporation with its principal place of business in Cleve-land, Ohio. Founded in 1906, American is the largest publicly held greeting card company in the world, manufacturing and distributing greeting cards and related gifts and stationery products. Through its operation unit Those Characters From Cleve-land ("TCFC"), American also licenses and supervises the marketing by third parties of commercial products, such as dolls, bed sheets, housewares and ready-to-wear products which embody or are derived from American's greeting card designs and/or new artwork created for such licensing. From the active licensing of such greeting card characters as Care Bears, Get Along Gang, Strawberry Shortcake and Ziggy, American benefits by deriving royalty income from the sale of products through third-party licensees. The increased popularity of American's characters appearing on licensed products in turn stimulates sales of American's own greeting cards and gift-related products.
American's co-venturer, plaintiff CPG Products Corp. ("CPG"), is a wholly-owned subsidiary of General Mills, Inc. CPG is a Delaware corporation with its principal place of business in Minneapolis, Minnesota. CPG is engaged in the development, manufacture and sale of a wide variety of toys and is one of the leading toy companies in the world. CPG's three operating divisions, Kenner Products, Parker Brothers, and Fundimensions, are assisted by the services of CPG's fourth division and development arm, the Marketing and Design Service Division ("MAD"). MAD has seventeen creative people whose function is to develop new concepts and to design products to fill perceived needs in the toy marketplace. Plaintiffs contend that this development effort coincides with CPG's movement away from the sale of single item products towards a focus on multiple lines of toys which are related through a family of characters.
Prior to the creation and introduction of the Care Bears, the characters involved herein, CPG and American had launched a highly innovative and effective licensing program based on the character Strawberry Shortcake. The success of plaintiffs' Strawberry Shortcake program was well known within the industry.
The Care Bears were conceived in the first months of 1981, as part of the continuing joint effort of American and CPG to arrive at a suitable project to follow Strawberry Shortcake. Plaintiffs' goal was to create and market bears differently than it had ever been done before. Care Bears were designed with such features as jowly head shapes, pastel colors and other distinctive details. The most prominent of these distinctive features is the tummy graphic. According to plaintiffs, the role of the tummy graphic was multi-purpose, including giving each bear an individual personality and as a unifying feature which would distinguish the Care Bears line of products from other plush toys. The Care Bears tummy graphics are permanent and integral to the identity of the Care Bear characters as well as being the critical unifying element of the Care Bear family, and they communicate the emotional or personality message of each of the Care Bears and "inspire youngsters to play in a caring way."
Plaintiffs contend that what makes a Care Bear part of the Care Bear family, most basically, is the presence of the tummy graphic directly on the body of a pastel-colored animal. That plaintiffs intended the individual tummy graphics so affixed not only to identify the animal as a Care Bear, but to connote the particular personality and/or emotion associated with each Care Bear character is conceded by plaintiffs. Plaintiffs claim that Care Bears have the following distinctive elements:
Some of these features standing alone have appeared in the marketplace before. Lines of different pastel-colored stuffed animals, including lines of different pastel-colored stuffed bears are nothing new and had been frequently part of defendant Dan-Dee's product offerings in the past. An inverted triangular "jowly" head is similarly old and has been used by Dan-Dee and others in the past for stuffed bears. Heart-shaped paw pads are old and have been used in the past for stuffed bears. A pear-shaped body is old and has been used in the past by Dan-Dee and others for stuffed bears and animals. A heart-shaped nose is old and has been used by Dan-Dee frequently in the past. A white plush abdominal area is traditional for many stuffed animals and has been used frequently in the past by Dan-Dee. The use of graphics directly on the chest or "tummy" of a stuffed animal, including a stuffed bear are old and have been used by Dan-Dee and others in the past. Indeed, in other litigation plaintiffs themselves have recognized the prior utilization of "tummy" graphics. In Wiley v. American Greetings Corp., 597 F.Supp. 736 (D.Mass.1984), plaintiffs were charged with infringement of Wiley's trademark rights in a red heart applied to the chest of a teddy bear. Plaintiffs successfully moved for summary judgment against Wiley on the grounds, inter alia, that the use of heart graphics on the chest area of a teddy bear was so common that it was impossible for anyone to obtain trademark rights in such graphics. William M. Hart, Esq., of Cowan, Liebowitz and Latman, who represent American and CPG, both in Wiley and in this action, filed an affidavit in Wiley, stating:
Although plaintiff Wiley has, therefore, not in any way used or promoted this heart design as a trademark, it is also apparent that even if it had, no trademark-type rights could be acquired in that design as applied to teddy bears, given the numerous third party uses of heart-shaped designs on the chests of teddy bears discussed below.
The subject of each of the "tummy graphics" used on the Care Bears was consciously selected from traditional symbols which best convey the emotional or personality message of each bear. This fact is emphasized in plaintiff's licensing manual: "Each Care Bear wears a symbol on its tummy which best explains its chosen mission." The graphics on the tummies of the first ten Care Bears and the messages they purportedly convey are listed below:
NAME GRAPHIC MESSAGE
Tenderheart Bear Heart Love and Caring
Funshine Bear Smiling Sun Fun and Laughter
Good Luck Bear Four Leaf Clover Good Luck
Birthday Bear Birthday Cake Happy Birthday
Friend Bear Two Smiling Daisies Friendship
Grumpy Bear Rain Cloud It's OK to be out of
Sorts
Cheer Bear Rainbow Cheer and Hope
Bedtime Bear Crescent Moon and Star Sweet Dreams
Love a Lot Bear Two Hearts Touching Romantic Feelings
Wish Bear Wishing Star Wishes and Hope
The professed function of the Care Bears products is "to help children and adults express their feelings and share them with others" and the role of the tummy "graphics ... to convey the message of simple, human feelings — cheer, happiness, love and tenderness."
Although plaintiffs concede that many of the individual tummy graphics existed in the past, they claim that theirs were selected to facilitate plaintiffs' plan to give each Care Bear a separate personality/emotion which plaintiffs took great pains to convey to the consumer not just through the toys alone, but through plaintiffs' entire marketing plan for the product. This included advertising, television specials, cross-sell booklets, and publishing, all of which served to familiarize the consumer with the Care Bear characters and the fantasy world CARE-A-LOT in which they live. Plaintiffs concede that when the Care Bear graphics were selected, they were the best vehicles to facilitate the conveyance to the public of the individual personalities/emotions of each Care Bear character. However, plaintiffs insist that the key word is "facilitate," and that it was plaintiffs'...
To continue reading
Request your trial
-
Malletier v. Dooney & Bourke, Inc.
...not probative on the issue of likelihood of consumer confusion.") That proposition is illustrated by American Greetings Corp. v. Dan-Dee Imports, Inc., 619 F.Supp. 1204, 1216 (D.N.J. 1985), modified on other grounds, 807 F.2d 1136 (3d Cir.1986), where two surveys allowed the respondents to ......
-
College Sav. Bank v. Florida Prepaid Educ. Exp. Bd.
...the right of the consumer to be told the truth." (3 McCARTHY ON TRADEMARKS § 27.04[1][b] at 27-39); American Greetings Corp. v. Dan-Dee Imports, Inc., 619 F.Supp. 1204, 1218 (D.N.J. 1985) (same); see also Castrol, Inc. v. Pennzoil Co., 987 F.2d 939 (3d Cir.1993) ("Because honesty and fair p......
-
Schwinn Bicycle Co. v. Ross Bicycles, Inc.
...(7th Cir.1986); Hartford House, Ltd. v. Hallmark Cards, Inc., 647 F.Supp. 1533, 1544 (D.Colo.1986); American Greetings Corp. v. Dan-Dee Imports, Inc., 619 F.Supp. 1204, 1223 (D.N.J.1985), aff'd, 807 F.2d 1136 (3d Cir.1986).16 The magistrate's failure to conclude that there was sufficient ev......
-
Hartford House Ltd. v. Hallmark Cards Inc.
...71 (2d Cir.1984); Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema Ltd., 604 F.2d 200 (2d Cir.1979); American Greetings Corp. v. Dan-Dee Imports Inc., 619 F.Supp. 1204 (D.N.J.1985); Harlequin Enterprises Ltd. v. Gulf & Western Corp., 503 F.Supp. 647 (S.D.N.Y. In American Greetings Corp.......