DeCosta v. Viacom Intern., Inc., Civ. A. No. 89-0598-T.

• Decision Date: 11 March 1991
• Docket Number: Civ. A. No. 89-0598-T.
• Citation: 758 F. Supp. 807
• Parties: Victor DeCOSTA v. VIACOM INTERNATIONAL, INC.
• Court: U.S. District Court — District of Rhode Island

758 F. Supp. 807

Victor DeCOSTA v. VIACOM INTERNATIONAL, INC.

Civ. A. No. 89-0598-T.

United States District Court, D. Rhode Island.

March 11, 1991.

Mark J. Hagopian, Providence, R.I., for plaintiff.

Jeffrey Schreck, Robert Karmen, Providence, R.I., Robert M. Callagy, Mark A. Fowler, New York City, for defendant.

MEMORANDUM AND ORDER

TORRES, District Judge.

This is an action by Victor DeCosta for infringement of his trademark and/or service mark rights and for unfair competition under both common law and the Lanham Act (15 U.S.C. §§ 1114(1) and 1125(a)). The case is presently before the Court on the motion of Viacom International, Inc. ("Viacom") to dismiss pursuant to Fed.R.Civ.P. 12(b)(6), or, in the alternative, for summary judgment pursuant to Rule 56 on the grounds that the action is barred by the doctrines of res judicata, collateral estoppel and/or laches.

BACKGROUND

DeCosta is a former rodeo performer. During the 1940's, he conceived the idea of a western hero whom he named "Paladin."¹ DeCosta's character had a mustache and wore a black outfit that included a hat affixed with a medallion. He also carried calling cards bearing facsimiles of a chess piece (i.e. a "knight") and the slogan "Have Gun Will Travel, Wire Paladin." The chess piece logo was imprinted on the holster of his six-shooter as well. In addition, Paladin carried an antique derringer concealed under his arm. Since 1947, DeCosta, as Paladin, has continuously appeared at rodeos, horse shows, parades and charitable functions throughout the eastern United States and California where he distributed his cards to spectators.

In June of 1957, Columbia Broadcasting System, Inc. ("CBS") began televising a "western" series entitled "Have Gun Will Travel," starring a character called "Paladin." The television Paladin wore a black costume identical to that worn by DeCosta's character, including the medallion on his hat. CBS's Paladin also carried a calling card bearing the words "Have Gun Will Travel, Wire Paladin." Both the card and his holster were embossed with the same chess piece logo used by DeCosta's character. Furthermore, the pilot episode of the CBS series included a scene in which the television Paladin used a concealed derringer to win a gunfight.

After watching these programs, DeCosta apparently concluded that not all of the television bandits were portrayed in the series. Accordingly, after an unexplained delay of eleven years, he applied to the Patent and Trademark Office (the "PTO") for registration of his mark. At the same time, he sued CBS, one of its subsidiaries that licensed the series and the corporation owning several television stations that broadcast the show. The suit alleged misappropriation of his idea, common law trademark and/or service mark infringement and unfair competition. The PTO deferred action on DeCosta's application pending the outcome of that litigation.

The misappropriation count was severed and tried before a jury and another judge of this Court. CBS presented extensive testimony from writers and network executives responsible for the series who explained the marked similarity between the television Paladin and DeCosta's character as purely coincidental. The jury did not believe that testimony and returned a verdict for DeCosta in the amount of $150,000.00. Judgment was entered on that verdict, and the defendants appealed.

The First Circuit reversed. Columbia Broadcasting Sys. v. DeCosta, 377 F.2d 315, 321 (1st Cir.1967) hereinafter "DeCosta I". Although it shared the jury's skepticism of CBS's story and characterized the defendants as "pirates," the Court found that simply copying another's creation is not, by itself, actionable. The Court recognized that appropriating the value attached to a creation by exploiting its "secondary meaning" may constitute a form of unfair competition (i.e. the tort of "passing off") if it misleads the public into thinking that the resulting product was created by the plaintiff. However, the Court noted that the unfair competition count had not been submitted to the jury.

As to the misappropriation count the Court found it lacking in merit based upon its reading of Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964) and Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 84 S.Ct. 779, 11 L.Ed.2d 669 (1964) hereinafter "Sears-Compco". Specifically, the Court interpreted Sears-Compco to mean that Art. I, § 8, cl. 8 of the United States Constitution, which confers copyright power on Congress, preempts any state efforts to protect writings and other concrete, describable manifestations of intellectual creation within the scope of that power and leaves those creations in the public domain unless they are protected by federal copyright laws. DeCosta I, 377 F.2d at 319. The Court found that DeCosta's creation failed to qualify for protection under the copyright laws as an unpublished work (i.e. one that had not been abandoned to public use by publication) because his creation was completely embodied in the cards that he freely distributed to others. The Court concluded that such distribution constituted publication of DeCosta's work and that by failing to copyright the cards, DeCosta left his creation in the public domain where it could be freely copied. Id. at 321.

On remand, the remaining counts for common law trademark infringement and unfair competition were presented, by agreement, to a Magistrate for determination on cross motions for summary judgment. Relying on the Supreme Court's intervening decision in Goldstein v. California, 412 U.S. 546, 93 S.Ct. 2303, 37 L.Ed.2d 163 (1973), the Magistrate held that those claims were not preempted under Sears-Compco. He went on to find that the defendants had infringed upon DeCosta's marks and had unfairly competed by falsely advertising the marks to be their own. Accordingly, the Magistrate entered judgment requiring the defendants to account for what amounted to $12 million in profits. DeCosta v. Columbia Broadcasting Sys., Civil Action No. 3130 (D.R.I. Apr. 15, 1974).

Once again, CBS appealed, and once again the First Circuit reversed. DeCosta v. Columbia Broadcasting Sys., 520 F.2d 499 (1st Cir.1975) hereinafter "DeCosta II". The Court endorsed the Magistrate's holding that, under Goldstein, the states remain free to "grant to authors the `exclusive Right to their respective Writings'" and to "protect businesses in the use of their trademarks, labels, or distinctive dress in the packaging of goods so as to prevent others, by imitating such markings, from misleading purchasers as to the source of such goods." Id. at 510-11 (quoting Goldstein, 412 U.S. at 560, 93 S.Ct. at 2311; Sears-Compo, 376 U.S. at 232, 84 S.Ct. at 789). The Court acknowledged that it may have erred in holding the misappropriation claim was preempted but expressed unwillingness to reopen the matter saying:

We face a dilemma. Goldstein tells us that we were, in our interpretation of the preemptive reach of the Copyright Clause, over-inclusive. And yet, what we decided in DeCosta I has settled, for this case, the issue of misappropriation.

Id. at 510.

The Court then focused on what it identified as the critical issue underlying the trademark infringement and unfair competition counts, namely, "whether there was a deceiving of the public as the result of defendants' actions" or whether "the defendant's use of a trademark similar to the plaintiff's created a likelihood of confusion." DeCosta II, 520 F.2d at 513 (citation omitted). It found nothing to support a finding that the defendants "passed off" their Paladin or program as the plaintiff's creations. Id. Nor did it find the identical nature of the marks used by plaintiff and defendants sufficient to establish a likelihood of confusion. Id. at 513-15. Therefore, the Court found no basis for liability for common law service mark infringement or unfair competition and accordingly reversed and remanded with instructions to enter judgment for the defendants.

After DeCosta unsuccessfully petitioned the United States Supreme Court for a writ of certiorari, the PTO activated his application for registration of his mark. That application was vigorously opposed by CBS which, in the meantime, had assigned its syndication rights to Viacom, a "spinoff" corporation that licenses local television stations to broadcast reruns of the series. CBS's opposition was based on the claim that registration would adversely affect its agreement with Viacom and cause it economic injury. Despite that opposition, the PTO granted DeCosta's application in 1975.² It referred to CBS's opposition as "a bald-faced argument that CBS, already branded a pirate, should be allowed to make off with additional plunder unhindered by any inconvenience that might result from the recognition of DeCosta's lawful rights." Columbia Broadcasting Sys. v. DeCosta, 192 U.S.P.Q. 453, 456 (P.T.O. Trademark Trial and Appeal Bd. 1976).

The instant complaint charges that, since 1975 Viacom has licensed the "Have Gun Will Travel" series for broadcast throughout the United States with full knowledge of DeCosta's federal registration and without his permission. It contains five counts: Count I alleges federal trademark infringement in violation of 15 U.S.C. § 1114(1); Count II alleges misappropriation and common law trademark infringement; Count III alleges unfair competition in violation of 15 U.S.C. § 1125(a); Count IV alleges common law unfair competition; and Count V alleges negligent or intentional infliction of emotional distress. Viacom characterizes this suit as nothing more than a rehash of matters long since determined and seeks dismissal or summary judgment on the grounds that plaintiff's claims are barred by the doctrines of res judicata and collateral estoppel and that laches precludes DeCosta from maintaining this action.

DISCUSSION

I. The Summary Judgment Standard

Since affidavits have been...