Harlequin Enterprises Ltd. v. Gulf & Western Corp.

• Decision Date: 15 September 1980
• Docket Number: No. 80 Civ. 1639.,80 Civ. 1639.
• Citation: 503 F. Supp. 647
• Parties: HARLEQUIN ENTERPRISES LIMITED, Plaintiff, v. GULF & WESTERN CORPORATION, Defendant.
• Court: U.S. District Court — Southern District of New York

503 F. Supp. 647

HARLEQUIN ENTERPRISES LIMITED, Plaintiff, v. GULF & WESTERN CORPORATION, Defendant.

No. 80 Civ. 1639.

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

September 5, 1980.

As Amended September 15, 1980.

Patterson, Belknap, Webb & Tyler, Christine H. Miller, Thomas C. Morrison, W. B. McKeown, New York City, for plaintiff.

Proskauer Rose Goetz & Mendelsohn, by Ronald S. Rauchberg, David M. Rabinowitz, New York City, for defendant.

MEMORANDUM AND ORDER

OWEN, District Judge.

Plaintiff Harlequin Enterprises Limited ("Harlequin") moves for a preliminary injunction enjoining Simon & Schuster, a division of defendant Gulf & Western Corporation, from an alleged infringement of a Harlequin book cover design and format in violation of the Lanham Act, 15 U.S.C. § 1125(a) and the New York unfair competition law. Harlequin is apparently the leading publisher of paperback romance fiction novels, whose six new titles a month are sold through unconventional retail outlets, e. g., drug stores, supermarkets, to untold millions of regular and devoted readers, as well as through Harlequin Book Club memberships to countless others. Although plaintiff sells several different series of romance fiction titles, the instant dispute only concerns the cover design of books retailed under the rubric of the "Harlequin Presents" series. Simon & Schuster, the alleged infringer, is no stranger to the romance fiction series market. From 1966 to 1972 Simon & Schuster served Harlequin as its publisher and exclusive distributor in the United States. Thereafter, Harlequin took over the publishing responsibilities while Simon & Schuster continued to act as the exclusive United States distributor. Finally, in 1979, Harlequin notified Simon & Schuster that its distributorship agreement would be terminated at the end of the year. Simon & Schuster subsequently decided to launch its own "Silhouette Romance" series to compete with plaintiff's product.

The principal ground alleged in support of the preliminary injunction is that the size, color arrangement and format (hereinafter collectively "design" or "format") of the cover of defendant's "Silhouette Romance" series infringes upon the trade dress of plaintiff's "Harlequin Presents" series. After considering the voluminous materials submitted by the parties and having heard extensive oral argument, I conclude that plaintiff has met its burden of demonstrating (a) irreparable harm and (b) both (1) likelihood of success on the merits and (2) a sufficiently serious question going to the merits as to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the party requesting the preliminary relief. Jack Kahn Music v. Baldwin Piano & Organ Co., 604 F.2d 755, 758 (2d Cir. 1979). See also Sonesta International Hotels Corp. v. Wellington Associates, 483 F.2d 247, 250 (2d Cir. 1973).

The Lanham Act creates a federal statutory remedy to unfair competitive practices. It provides protection against the sale of goods by use of

a false designation of origin or any false description or representation, including words or other symbols tending falsely to describe or represent the same ....

15 U.S.C. § 1125(a). Courts have long recognized that recovery under § 43(a) is not restricted to federally registered trademarks, but extends to "words, symbols, collections of colors and designs, or advertising materials or techniques" that the purchasing public has come to associate with a single source. RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058, 1059 (2d Cir. 1979). See also Perfect Fit Industries, Inc. v. Acme Quilting Co., 618 F.2d 950 (2d Cir. 1980); J. T. McCarthy, Trademarks and Unfair Competition § 15.3 (1973). Thus, in order to prevail under § 43(a), plaintiff must demonstrate (1) that its marks have a "secondary meaning" in the marketplace; (2) that the allegedly infringing design or mark is substantially similar to plaintiff's own marks; and (3) that there is a "likelihood of confusion" as to the origin of goods bearing the disputed design or mark. Perfect Fit Industries, Inc. v. Acme Quilting Co., supra; RJR Foods, Inc. v. White Rock Corp., supra; Ives Laboratories, Inc. v. Darby Drug Co., Inc., 601 F.2d 631 (2d Cir. 1979).

1. Secondary Meaning

First, the parties do not dispute the fact that the name "Harlequin Presents" has acquired a "secondary meaning," i. e., that the vast romance novel purchasing public has come to associate its name and colophon¹ with a single source. For those with such association, a "Harlequin Presents" novel will always have a common theme, e. g., the story will have a happy ending with a proposal of marriage, notwithstanding various misunderstandings and obstacles along the way. Equally, the cognoscenti know that there will be no vulgar language, loose living, or any descriptions of explicit sex.

The question is whether the format of the "Harlequin Presents" series cover itself has acquired such a secondary meaning among readers of romance fiction. The format on each volume in the Harlequin series is identical. Each has a glossy white cover of six and three-quarter inches. The Harlequin trademark, a black and white sketch of a Harlequin located in a gold diamond, is centered at the top of the cover. The diamond is flanked by a gold filigree extending from both sides of the mark. The series number appears in the top left corner, and the price of the book is located in the top right corner.

Immediately under the gold filigree and centered near the bottom of the Harlequin mark is the series title, "Harlequin Presents", written in black script. The author's name is printed in large colored letters located just under the series title. A fine gold line separates the author's name from the book's title, which is printed in lower case block letters. Just below the book title on each cover is a circular, colored montage featuring a man and a woman against a background of scenes depicting the story line; this picture is encircled by two gold lines. The gold filigree is repeated at the bottom of the page. All three hundred and seventy-two covers of the books in the "Harlequin Presents" series use this exact format.

Turning to the allegedly infringing "Silhouette Romance" series, each book has a glossy white cover and is six and three-quarters inches in height.² The Silhouette colophon, the black silhouettes of a man and a woman facing each other in profile and framed in a tiny, pale gold oval, is centered near the top of the cover. The title of the series, "Silhouette Romance," appears in black script adjacent to the colophon, one word on either side of it. A pale gold filigree, emanating from a point directly above the center of the colophon, extends across the top of the cover. In the top left corner, immediately below the left end of the filigree and to the left of the word "Silhouette," is the series number of the book. At the corresponding point in the upper right corner is the price, to the right of the word "Romance." The author's name is printed in large, colored letters and centered below the series title and the "Silhouette" colophon. The book title is printed in smaller black letters, immediately below the name of the author. Most of the bottom half of the cover is devoted to an oval-shaped, color drawing of a man and a woman who appear in a scene suggestive of the book's story line. The picture has no frame around it-rather a soft edge that blends into the white background of the cover. Finally, the words, "Silhouette Romance," written five times in pale gold script, form a border around three sides of the cover. The words are printed vertically twice on each side of the page and horizontally once at the bottom. All of the covers in the "Silhouette Romance" series use this format.

The "secondary meaning" requirement is designed to insure that trademark protection is extended only to those designs, symbols and/or combinations of colors that act as identification for a product, i. e., a way for the purchasing public to recognize the quality and reputation associated with a particular publisher's books. Whether a given mark has acquired "secondary meaning" may be determined by such factors as (1) plaintiff's advertising and sales record; (2) consumer recognition survey data; (3) recognition by competitors of consumer identification with product design; (4) defendant's attempt to capitalize on plaintiff's trade dress when introducing its own product; and (5) conscious imitation of plaintiff's trade dress. RJR Foods, Inc. v. White Rock Corp., supra. Such factors are merely a gauge of the extent to which plaintiff's mark has become widely accepted by its customers and its competitors. For the reasons stated hereafter, I conclude that Harlequin's cover design has acquired a secondary meaning among romance fiction readers.

Persuasive evidence of the "secondary meaning" of the Harlequin cover can be found in a study conducted on behalf of the plaintiff by Spencer Bruno Research Associates. Mr. Bruno interviewed five hundred women, all readers of romance fiction in three cities. The interviewees were shown "dummy" copies of as yet unpublished "Harlequin Presents" titles with the Harlequin name and colophon masked. Research results indicate that over fifty percent of the interviewees correctly identified Harlequin as the publisher of the books. See Affidavit of A. Spencer Bruno at 2, Exhibit 2. While the results of any survey research are open to-even invite-challenge by way of competing experts³ and rival studies,⁴ courts have found such studies to be useful tools in assessing "secondary meaning." See RJR Foods, Inc. v. White Rock Corp., supra; Zippo Manufacturing Co. v. Rogers Imports, Inc., 216 F.Supp. 670, 686-87 (S.D. N.Y.1963). Although the Bruno survey is not conclusive evidence of secondary meaning, the results strongly support the plaintiff's claim that its cover format has acquired a "secondary meaning."

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