Girls Scouts v. Bantam Doubleday Dell Pub.

• Decision Date: 21 December 1992
• Docket Number: No. 89 Civ. 1194 (LMM).,89 Civ. 1194 (LMM).
• Citation: 808 F. Supp. 1112
• Parties: GIRL SCOUTS OF THE UNITED STATES OF AMERICA and Boy Scouts of America, Plaintiffs, v. The BANTAM DOUBLEDAY DELL PUBLISHING GROUP, INC. d/b/a Dell Publishing and Judy Delton, Defendants.
• Court: U.S. District Court — Southern District of New York

808 F. Supp. 1112

GIRL SCOUTS OF THE UNITED STATES OF AMERICA and Boy Scouts of America, Plaintiffs, v. The BANTAM DOUBLEDAY DELL PUBLISHING GROUP, INC. d/b/a Dell Publishing and Judy Delton, Defendants.

No. 89 Civ. 1194 (LMM).

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

December 21, 1992.

COPYRIGHT MATERIAL OMITTED

Bert A. Collison, Nims, Howes, Collison & Isner, New York City, for plaintiffs.

Richard Dannay, David O. Carson, Schwab Goldberg Price & Dannay, New York City, for defendants.

MEMORANDUM AND ORDER

McKENNA, District Judge.

Plaintiffs Girl Scouts of the United States of America and Boy Scouts of America ("Plaintiffs", "Girl Scouts" or "Boy Scouts") instituted this action on February 17, 1989 against defendants Bantam Doubleday Dell Publishing Group, Inc. and Judy Delton ("Defendants"), the publisher and author of a series of children's books (currently sixteen in number), bearing the title "Pee Wee Scouts" along with various subtitles. Plaintiffs allege that Defendants' use of the words "scout," "scouting," and related terms in the titles and texts of their publications (1) infringe Plaintiffs' registered trademarks and service marks in violation of § 32(1) of the Lanham Act, 15 U.S.C. § 1114 (1988), (2) infringe Plaintiffs' common law trademarks and service marks in violation of the New York State law of unfair competition, (3) falsely represent and designate the origin or sponsorship of such books in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and (4) will injure Plaintiffs' business reputation and tend to dilute the quality of Plaintiffs' trademarks and service marks in violation of Section 368-d of the New York General Business Law (McKinney 1984). Plaintiffs seek injunctive relief and damages. Now before this Court is Defendants' second motion for summary judgment brought pursuant to Federal Rule of Civil Procedure ("Fed. R.Civ.P.") Rule 56 or, in the alternative, for an order certifying an immediate interlocutory appeal under 28 U.S.C. § 1292(b). For the reasons set forth below, Defendants' motion for summary judgment is granted.

After answering the complaint, Defendants moved for summary judgment pursuant to Fed.R.Civ.P. Rule 56. That motion was denied by Judge Patterson in an Opinion and Order dated October 10, 1989. Girl Scouts of the U.S.A. v. Bantam Doubleday Dell Publishing Group, Inc., 1989 WL 122769, 1989 U.S.Dist.LEXIS 12054 (S.D.N.Y.1989). In that first motion, Defendants argued that they were entitled to judgment as a matter of law because Defendants' books are protected by the free speech and free press guarantees of the Constitution's First and Fourteenth Amendments and that these interests outweigh the statutory and common law trademark interests of Plaintiffs under the balancing test applicable when trademark and other commercial interests conflict with the First Amendment. Judge Patterson isolated the critical legal issue as whether the interest in preventing consumer confusion outweighs First Amendment concerns. He denied Defendants' motion, finding that, while the ultimate determination of whether likelihood of confusion exists is a question of law, the factors to be used in making the determination involve factual issues. He concluded that Plaintiffs raised genuine issues of material fact on the issue of likelihood of confusion; based on these factual issues and because no discovery had taken place, he found that it would be premature to engage in an assessment of the factors to be used in weighing consumer confusion and First Amendment concerns. Id. at * 5, 1989 U.S.Dist.LEXIS at * 16- * 17. In an Order dated October 25, 1989, Judge Patterson denied Defendants' motion for reargument or for certification under 28 U.S.C. § 1292(b).

Defendants' second motion for summary judgment, now before this Court, is founded on two changes in circumstances. First, Defendants argue that because discovery has now been completed, additional facts are established and the time is therefore ripe for the Court to decide their summary judgment motion. Moreover, Defendants' current motion expands upon the First Amendment defenses raised in its first summary judgment motion. Specifically, Defendants seek summary judgment on the merits of Plaintiffs' trademark and unfair competition claims as well as on their First Amendment defenses.

BACKGROUND

A. Plaintiffs Boy Scouts and Girl Scouts

Both the Girl Scouts and the Boy Scouts have been prominent organizations in American life since they began their operations early in the century. The principle purpose of both organizations is to supplement the formal education of young girls or boys with a structured environment incorporating social, athletic, outdoors and creative activities.

The Girl Scouts was first incorporated in 1915 and was subsequently incorporated by a special Act of Congress in 1950. 36 U.S.C. §§ 31-39.¹ Approximately 3.3 million girls and young women, as well as 788,000 adult leaders and participants, in over 200,000 troops nationwide, are currently involved with the Girl Scouts. Over 55 million women and girls have been members of the Girl Scouts since its inception. The young women and girls engage in various character-building activities,² participation in which earns them badges in such activities as camping, community services, and selling cookies door-to-door. Members are organized into troops which meet weekly, they recite a pledge, and they wear uniforms for certain activities, sometimes including a scarf worn around the neck. The Girl Scouts are divided into groups by age, beginning with kindergartners who are called Daisy Girl Scouts. As second and third graders, the girls become Brownie Scouts and, in grades four through six, they are Junior Girl Scouts. Young women may continue on to the Cadette Girl Scout level and finally to Senior Girl Scouts and Campus Girl Scouts.

The Girl Scouts have the following registered trademarks or service marks: Girl Scouts, Campus Girl Scouts, Brownie, and Daisy Girl Scouts, Girl Scout Cookies, Scout Cookies, and Cadette Girl Scout.³ (Pl. Pretrial Mem. at 4-9.)

The Boy Scouts was first incorporated in the United States in 1910 and was then incorporated by a Special Act of Congress in 1916. 36 U.S.C. § 21-29.⁴ Current Boy Scout membership totals 4.2 million youths and 1.1 million participating adults in 130,000 organizational units. Approximately 100 million boys and adults have been Boy Scout organization members since its founding in 1910. The Boy Scouts' purpose is to build good character in its young charges.⁵ Boy Scouts also meet weekly, participating in activities commensurate with the organization's purpose, often to earn badges. Important elements of the Boy Scouts organization are the Scout Oath, Scout Motto and Scout Law recited by members and the uniforms worn, including a neckerchief. The age divisions of the Boy Scouts are Tiger Cubs, boys aged six, Cub Scouts, boys in the second through the fifth grades, and, for older boys, Boy Scouts, including Varsity Scouts, Explorer Scouts, Eagle Scouts, Official Scouts, and Sea Scouts.⁶ In addition to their alleged common law trademarks and service marks, the Boy Scouts have secured registrations in the U.S. Patent and Trademark Office for the following: Boy Scouts of America, Cub Scouts, Scouting (a magazine for adult Boy Scout leaders), Scouting/USA, National Scout Jamboree, Varsity Scout, and Eagle Scout Association.⁷ The Boy Scouts, as well as the Girl Scouts, have used the terms "scout" or "scouts" alone or in combination with other words to indicate various indicia and activities of their organizations.

Books, catalogs, and magazines are some of the numerous products marketed by the Boy Scouts in connection with its activities. Examples include: the Official Boy Scout Handbook, the Big Bear Cub Scout Book, and a monthly magazine entitled Boys Life. Boys Life magazine runs a comic strip about a fictional Boy Scout named Pee Wee Harris and his troop.⁸ Plaintiffs do not assert a separate claim with respect to the word or name "pee wee." (See Compl. at ¶¶ 10-11, 13) The Girl Scouts have also marketed printed matter in connection with the organization's activities, consisting primarily of handbooks and catalogs. For many years until the late 1970s, the Girl Scouts published the magazine American Girl.

Both the Boy Scouts and the Girl Scouts go to great lengths to promote their activities through print, radio and television advertisements, often done free of charge and worth many thousands of dollars per year. Unsolicited media coverage and recognition by government officials of the Boy Scouts' and Girl Scouts' many activities contributes, along with advertising, to unprecedented public awareness of Plaintiffs' organizations.

B. Defendants Judy Delton and Dell Publishing

Judy Delton is the author and Dell Publishing is the publisher of a series of illustrated children's books under the series title "Pee Wee Scouts".⁹ On the cover of each book, the author's and illustrator's names and the publisher's name and logo appear prominently, along with the "Pee Wee Scouts" general title and the book's specific title. In addition, in the lower right hand corner of each book is an inset with a drawing of a red scarf held together by a pin bearing the name "Pee Wee Scouts." On the back cover of each book is a cut-out merit badge, presumably associated with the scouting activity described in the book, e.g. camping. Defendants have also published a promotional 11-page "Official Pee Wee Scouts Handbook," which provides the background of the Pee Wee Scouts and includes cut-out badges.

The books are fictional short stories about a co-ed group of first and second graders, all members of Troop 23 of the Pee Wee Scouts. In the course of the books, the children engage in activities such as camping, attending regular weekly meetings, doing good deeds, earning merit badges, celebrating holidays, selling doughnuts,...