DeCosta v. Viacom Intern., Inc.

• Decision Date: 07 April 1992
• Docket Number: No. 91-2211,91-2211
• Citation: 981 F.2d 602,25 USPQ2d 1187
• Parties: Victor DeCOSTA, Plaintiff, Appellee, v. VIACOM INTERNATIONAL, INC., Defendant, Appellant. . Heard
• Court: U.S. Court of Appeals — First Circuit

Page 602

981 F.2d 602

25 U.S.P.Q.2d 1187

Victor DeCOSTA, Plaintiff, Appellee, v. VIACOM INTERNATIONAL, INC., Defendant, Appellant.

No. 91-2211.

United States Court of Appeals First Circuit.

Heard April 7, 1992.

Decided Dec. 17, 1992.

Robert M. Callagy with whom Satterlee Stephens Burke & Burke and Jan R. Uhrbach, New York City, were on brief, for defendant, appellant.

Richard W. Petrocelli with whom Mark J. Hagopian and Visconti & Petrocelli Ltd., Providence, RI, were on brief, for plaintiff, appellee.

Before BREYER, Chief Judge, COFFIN, Senior Circuit Judge, and CYR, Circuit Judge.

BREYER, Chief Judge.

More than thirty years ago, between 1957 and 1964, CBS provided television stations with a program called "Have Gun--Will Travel." The program starred "Paladin," a fictional cowboy who dressed in black, carried a derringer pistol, and handed out calling cards with a picture of a chess knight. More than forty years ago, in 1947, Victor DeCosta, the plaintiff in this case, began to appear, as a cowboy, at rodeos, hospitals, and charitable events. DeCosta dressed in black, carried a derringer pistol, handed out cards with a picture of a chess knight, and called himself "Paladin." In 1963 DeCosta sued CBS, claiming it had unlawfully copied his idea. Eventually, this court decided that CBS may have copied DeCosta's idea, but, the laws under which DeCosta had sued did not prohibit CBS from doing so. This court held that DeCosta had failed to prove a violation of trademark, or other relevant, laws. Columbia Broadcasting System, Inc. v. DeCosta, 377 F.2d 315 (1st Cir.) [hereinafter DeCosta I ], cert. denied, 389 U.S. 1007, 88 S.Ct. 565, 19 L.Ed.2d 603 (1967); DeCosta v. Columbia Broadcasting System, Inc., 520 F.2d 499 (1st Cir.1975) [hereinafter DeCosta II ], cert. denied, 423 U.S. 1073, 96 S.Ct. 856, 47 L.Ed.2d 83 (1976).

DeCosta has now sued again. He has sued Viacom, a company that CBS created, and to which it assigned re-run rights for the old Paladin programs. He again complains that CBS copied his idea; and he says that Viacom, by broadcasting the old CBS programs, has violated federal and state trademark and unfair competition laws. 15 U.S.C. §§ 1114(1), 1125(a). The district court permitted the suit to proceed. DeCosta v. Viacom Int'l, Inc., 758 F.Supp. 807 (D.R.I.1991). A jury found in DeCosta's favor. And, Viacom appeals. In our view, DeCosta's new suit depends for its success upon relitigating issues that this court already has decided against him. And, for that reason, the doctrine of "collateral estoppel" bars his new claims. We therefore reverse the district court and order judgment for the defendant.

I DeCosta's Basic Legal Problems

When Mr. DeCosta first sued, many years ago, CBS claimed that it had not copied his "Paladin" character. Rather, CBS said, both "Paladin's" found their origin, independently, in the same historical sources. A jury, however, rejected CBS's argument. And, ever since, the courts have proceeded on the assumption that CBS, in fact, did copy Mr. DeCosta. Why, then, has Mr. DeCosta not succeeded in obtaining compensation?

The answer to this question ultimately rests upon the fact that the law does not always consider harmful, or always make unlawful, the copying by one person of the creation of another. Free, uncontrolled copying may, of course, prove harmful. It can discourage the creation of new, valuable ideas, works, or products, by diminishing the creator's monetary reward. It can cause commercial confusion, as a copier tries to take advantage of the good will attached to another's name. Free, uncontrolled copying, however, may also prove beneficial. It can promote the widespread dissemination of new works or ideas. "Education ... proceeds from a kind of mimicry, and 'progress,' if it is not entirely an illusion, depends on generous indulgence of copying." Benjamin Kaplan, An Unhurried View of Copyright 2 (1966). Some creators, say, novelists or dramatists, rightly expect compensation from those who buy or use their creations. Other creators, say, academic scientists, teachers, or certain commercial innovators (e.g., the inventor of the supermarket) expect others to copy, and to use, their ideas free of charge.

The result is a need for balance. Courts and legislators have responded to that need with separate, discrete bodies of intellectual property law, each with its own rules. The laws of patents, copyright, trade secrets, trademarks, unfair competition, and misappropriation balance the conflicting interests in protection and dissemination differently in different contexts through specific rules that determine just who will receive protection, of just what kind, under what circumstances, and for how long. See generally WCVB-TV v. Boston Athletic Ass'n, 926 F.2d 42, 45 (1st Cir.1991).

Mr. DeCosta's original legal problem lay in his inability to bring his case within a particular set of protective rules. Copyright law, for example, might in principle have offered protection for his "Have Gun--Will Travel" calling card, but he had brought that card into the "public domain" by distributing it widely, without giving the kind of specific "copyright" notice that federal copyright law requires. DeCosta I, 377 F.2d at 321. Nor was he able to show the type of "confusion" between products essential to success on his trademark, and most of his other, claims. DeCosta II, 520 F.2d at 513-15.

Mr. DeCosta's present legal problem lies in the fact that he previously sued CBS and lost. The traditional legal doctrine of "collateral estoppel" bars relitigation of any issue that, 1) a party had a "full and fair opportunity to litigate" in an earlier action, and that, 2) was finally decided in that action, 3) against that party, and that, 4) was essential to the earlier judgment. See Restatement (Second) of Judgments §§ 27, 29 (1982). Each of Mr. DeCosta's claims now before us depends, for its success, upon his winning an issue now that he lost before, in his litigation against CBS. In particular we held that he had failed to show a "likelihood" of buyer "confusion" between his "Paladin" character and that of CBS. That issue was "essential" to CBS's victory in the earlier action. Mr. DeCosta had a "full and fair opportunity to litigate" that issue in the earlier litigation. And, Viacom, as CBS's successor, here stands in the shoes of CBS.

Mr. DeCosta's argument on this appeal consists of an attempt to escape the bonds of "collateral estoppel" through a claim that legal and factual changes since 1975 (when we decided DeCosta II ) make the "confusion" issue, in essence, a new one. See Restatement (Second) of Judgments § 27, cmt. c; § 28(2)(b), (4) (collateral estoppel does not bar relitigation of an issue transformed by significant factual or legal changes). After considering Mr. DeCosta's arguments in detail, however, we find no legally significant change.

II Trademark Registration

Trademark law seeks to prevent one seller from using the same "mark" as--or one similar to--that used by another in such a way that he confuses the public about who really produced the goods (or service). Confusion may prevent the buyer from obtaining the goods he really wants. It may also jeopardize the commercial reputation of the senior (first) user, which might be tarnished by association with the junior (subsequent) user. To win a trademark case, a plaintiff must show 1) that he uses, and thereby "owns," a mark, 2) that the defendant is using that same or a similar mark, and 3) that the defendant's use is likely to confuse the public, thereby harming the plaintiff. See, e.g., Dieter v. B & H Indus. of Southwest Florida, 880 F.2d 322, 326 (11th Cir.1989), cert. denied, --- U.S. ----, 111 S.Ct. 369, 112 L.Ed.2d 332 (1990); WCVB-TV, 926 F.2d at 45; Astra Pharmaceutical Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1205, 1209 (1st Cir.1983); Pignons S.A. de Mecanique v. Polaroid Corp., 657 F.2d 482, 486-87 (1st Cir.1981); W.W.W. Pharmaceutical Co. v. Gillette Co., 808 F.Supp. 1013, 23 U.S.P.Q.2d 1609, 1614, 1621 (S.D.N.Y.), reaff'd, amended in other respects, (S.D.N.Y. July 11, 1992); Merritt Forbes & Co. v. Newman Investment Securities, Inc., 604 F.Supp. 943, 956 (S.D.N.Y.1985); but cf. 15 U.S.C. § 1051(b) (creating an exception, not presently relevant, to the use requirement). DeCosta, as we have said, previously failed to show a "likelihood" of public "confusion" between the "mark" (i.e., the "Have Gun--Will Travel" and "Wire Paladin" phrases and the chess knight sign) as he used it, and the same "mark" as used by CBS. DeCosta argues that the legal "confusion" issue in the case before us differs from the issue in his earlier 1975 case because, in 1976, he registered his mark. Columbia Broadcasting System, Inc. v. DeCosta, 192 U.S.P.Q. 453 (T.T.A.B.1976). The fact of registration, he says, changes the legal "burden of proof" rules, making it legally easier for a plaintiff to show "likelihood of confusion." See American Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494 F.2d 3, 10 (5th Cir.1974). That legal change transforms the old legal issue into a new one.

DeCosta is right that a change in relevant "burden of proof" rules can transform a legal issue, permitting relitigation of an issue that "collateral estoppel" otherwise would bar. See Restatement (Second) of Judgments § 28(4). But, we can find no such relevant transformation here. Registration consists of persuading the Trademark Board to issue an appropriate "certificate." 15 U.S.C. §§ 1051, 1057(a). The relevant statute says that the certificate becomes "prima facie evidence" of the mark's "registration," of its "validity," of "the registrant's ownership," and of the "registrant's exclusive right to use the mark ... in connection with the goods or services specified in the certificate." 15 U.S.C. § 1057(b). The statute also says that, in certain circumstances, "registration" makes the "registrant's right to use" the mark "...