Kirkland v. National Broadcasting Co., Inc.

• Decision Date: 17 December 1976
• Docket Number: Civ. A. No. 75-572.
• Citation: 425 F. Supp. 1111
• Parties: Isabel Manning Hewson KIRKLAND, Plaintiff, v. NATIONAL BROADCASTING COMPANY, INC., Defendant.
• Court: U.S. District Court — Eastern District of Pennsylvania

425 F. Supp. 1111

Isabel Manning Hewson KIRKLAND, Plaintiff, v. NATIONAL BROADCASTING COMPANY, INC., Defendant.

Civ. A. No. 75-572.

United States District Court, E. D. Pennsylvania.

December 17, 1976.

COPYRIGHT MATERIAL OMITTED

Zachary T. Wobensmith, Philadelphia, Pa., for plaintiff.

Bancroft D. Haviland, Philadelphia, Pa., for defendant.

OPINION

DITTER, District Judge.

The question presented in this case is whether plaintiff has any proprietary rights in a name used by defendant as the title for a TV series. Having concluded that plaintiff abandoned the name, I must grant defendant's motion for summary judgment.

I. Factual and Procedural Background

In 1933, plaintiff originated and authored a story entitled "Land of the Lost," which eventually became a radio program broadcast on various networks from 1943 to 1948.¹ During this period, children who listened to the program formed "Land of the Lost" clubs, but these clubs apparently ceased functioning prior to January, 1954.² Other commercial uses of plaintiff's concept included comic books, a record album, a book entitled "The Land of the Lost," and three cartoons, produced by Paramount Pictures, Inc., following an assignment by plaintiff to Paramount of a portion of her copyright interest.³

The present controversy stems from a children's television program entitled "Land of the Lost," which commenced broadcast on the NBC television network in September, 1974, and which continues to appear each Saturday morning.⁴ The theme of this story involves two teenagers and their father who travel through a "time vortex" into a prehistoric world. In mid-1974, NBC began issuing press releases detailing its plans for the show. Counsel for Mrs. Kirkland contacted RCA, NBC's parent company, and there was later correspondence between Mrs. Kirkland and NBC (Defendant's Exhibits L through P). However, no compromise could be reached and on February 26, 1975, plaintiff commenced this suit, alleging the common law action of unfair competition for use of the title. Following discovery, defendant moved for summary judgment.

In order for a summary judgment motion to be granted, the movant must show two things: (1) there is no genuine issue as to any material fact and (2) he is entitled to judgment as a matter of law. Fed.R.Civ.Proc. 56(c); see generally 6 Moore's Federal Practice § 56.09-56.23 (1974). It is clear that plaintiff may not rely on the conclusory allegations of her complaint when faced with this motion, Gittlemacker v. Prasse, 428 F.2d 1, 6 (3d Cir. 1970); Brown v. Cliff, 341 F.Supp. 177, 179 (E.D.Pa.1972), but must "show by some admissible evidence that there is a genuine issue as to a material fact." Berry Brothers Buick, Inc. v. General Motors Corp., 257 F.Supp. 542, 545 (E.D.Pa.1966), aff'd 377 F.2d 552 (3d Cir. 1967). I find no factually disputed issues which are material and accordingly resolve the instant motion solely on the questions of law.

II. The Claim of Unfair Competition

Although nothing in the Copyright Clause of the Constitution⁵ nor in the new Copyright Act itself⁶ expressly precludes protection for titles under the copyright laws, it has been well-established that a copyright in literary material does not secure any right in the title itself. Duff v. The Kansas City Star Co., 299 F.2d 320, 323 (8th Cir. 1962); Warner Bros. Pictures, Inc. v. Majestic Pictures Corp., 70 F.2d 310 (2d Cir. 1934); Harms, Inc. v. Tops Music Enterprises, Inc. of Cal., 160 F.Supp. 77, 81 (S.D.Cal.1958); 1 Nimmer on Copyright, § 34, p. 140 (1976).⁷ This protection has, in certain limited circumstances, been afforded under the trademark theory, National Lampoon, Inc. v. American Broadcasting Cos., Inc., 376 F.Supp. 733 (S.D.N.Y.), aff'd 497 F.2d 1343 (2d Cir. 1974) (title as trade name); In re Cooper, 254 F.2d 611, 45 CCPA 923 (1938) (title for series of books), but generally, a title will be safeguarded only under a theory of unfair competition. 1 Nimmer, supra at 141; see generally, Netterville and Hirsch, Piracy and Privilege in Literary Titles, 32 S.Cal.L.Rev. 101 (1959).

Unfair competition is an equitable concept, resting on general principles of fairness in business practices. American Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494 F.2d 3, 14 (5th Cir. 1974). The unfair competition concept is to be distinguished from trademark or copyright infringement in that it does not involve the violation of an exclusive right to use a work, mark, or symbol, but rather involves conduct which is contrary to honest industrial and commercial practice. House of Westmore v. Denney, 151 F.2d 261, 265 (3d Cir. 1945); Surgical Supply Service, Inc. v. Adler, 206 F.Supp. 564, 570 (E.D.Pa.1962). Although specific guidelines are wanting, there are at least two essentials which must be established before unfair competition can be found: secondary meaning and likelihood of confusion. I shall consider them separately.

A. Secondary Meaning

First, in order to protect a literary title from appropriation on the ground of unfair competition, the title must have attained a secondary significance or "secondary meaning." Becker v. Loew's, Inc., 133 F.2d 889, 893 (7th Cir.), cert. denied, 319 U.S. 772, 63 S.Ct. 1438, 87 L.Ed. 1720 (1943). "To establish secondary meaning, the article itself must be so clearly identified with its source that its supply from any other source is clearly calculated to deceive the public and lead it to purchase the goods of one for that of another." Zangerle & Peterson Co. v. Venice Furniture Novelty Mfg. Co., 133 F.2d 266, 270 (7th Cir. 1943); Field Enterprises Educational Corp. v. Grosset & Dunlap, Inc., 256 F.Supp. 382, 388 (S.D.N.Y.1966). The plaintiff must show that the primary significance of the title in the minds of the consuming public is not in the title but the producer. Alfred Dunhill, etc. v. Kasser Dist. Prod. Corp., 350 F.Supp. 1341, 1359 (E.D.Pa.1972) aff'd 480 F.2d 917 (3d Cir. 1973). Its existence is usually determined by reference to the following criteria: (1) the length of time the name or title has been used, (2) nature and extent of popularizing and advertising the name and (3) the efforts made in promoting the consciousness of the public in connecting the name or title with a particular product or literary work. Dunhill v. Kasser, supra, 350 F.Supp. at 1359; 3 Callmann, Unfair Competition, Trademarks and Monopolies, § 77.3, p. 349 (3d ed. 1969).

Having considered those factors, I conclude that "Land of the Lost" does not now have a secondary meaning. It is entirely possible that this title did have such significance between 1943 and 1950, but that significance has been lost for one simple reason: by the time this suit was filed, 24 years had elapsed since the last commercial use of the title by Mrs. Kirkland. The name is no longer primarily associated by the public with the plaintiff — not even by that portion of the public which was alive at the time of her radio show. Despite plaintiff's contention that some parents of the children now exposed to the TV show possibly possess subconscious recognition of plaintiff and her radio show, she has failed to introduce any evidence or material fact to sustain such a claim.

B. Likelihood of Confusion

Were I to find that secondary meaning did exist, plaintiff must still clear a second hurdle, i. e., defendant's use of the title has or will result in confusion of the public as to the source of the work. Dunhill v. Kasser, supra, 350 F.Supp. at 1360. It is not necessary that there be actual confusion by the public, but the mere possibility that a consumer may be misled is not enough; there must just be a likelihood of confusion. Surgical Supply Service, Inc. v. Adler, 321 F.2d 536, 539 (3d Cir. 1963).

The Restatement of Torts § 729 lists the following factors as those which courts generally use to determine whether a likelihood of confusion exists:

(a) the degree of similarity between the designation and the trade-mark or trade name in

(i) appearance;

(ii) pronunciation of the words used;

(iii) verbal translation of the pictures or designs involved;

(iv) suggestion;⁸

(b) the intent of the actor in adopting the designation;

(c) the relation in use and manner of marketing between the goods or services marketed by the actor and those marketed by the other;

(d) the degree of care likely to be exercised by purchasers.

These criteria have been adopted by the Third Circuit. Sears, Roebuck & Co. v. Johnson, 219 F.2d 590, 592 (3d Cir. 1955); Robert Bruce, Inc. v. Sears, Roebuck & Co., 343 F.Supp. 1333, 1345 (E.D.Pa.1972). Having reviewed them, I conclude that there is no likelihood of confusion in this case.

First, an analysis of the relative markets utilized by both parties demonstrates that their uses are anything but competing. Of course, competition between the names or titles is not always necessary, but the uses must be more than unrelated, noncompeting and dissimilar. Dunhill v. Kasser, supra, 350 F.Supp. at 1362-63. The uncontestable fact is that plaintiff has not used this title commercially for 25 years,⁹ and the market exposed to her use has changed considerably. Those children who listened to the radio show, participated in clubs, and read the comic books are now at least thirty years of age. They are not likely to be exposed to defendant's television show, since the program is designed to reach children between the ages of six and 13.¹⁰ Moreover, the Nielson Television Index, taken for the period September, 1974 to February, 1975, indicated that less than two percent of the United States population watching an average episode of defendant's show were even alive in 1950,¹¹ the last year of commercial use by the plaintiff and two years after the last year of the radio program. Realistically speaking, it is not very likely that those young children watching the television show are doing so because they equate that show with the comic books and radio show of Mrs. Kirkland. Once again,...