Kusek v. Family Circle, Inc., Civ. A. No. 94-30237 MAP.

• Decision Date: 17 July 1995
• Docket Number: Civ. A. No. 94-30237 MAP.
• Citation: 894 F. Supp. 522
• Parties: Marion KUSEK, Plaintiff, v. The FAMILY CIRCLE, INC., Defendant.
• Court: U.S. District Court — District of Massachusetts

894 F. Supp. 522

Marion KUSEK, Plaintiff, v. The FAMILY CIRCLE, INC., Defendant.

Civ. A. No. 94-30237 MAP.

United States District Court, D. Massachusetts.

July 17, 1995.

COPYRIGHT MATERIAL OMITTED

Marion Kusek, Ludlow, MA, pro se.

Arthur F. Dionne, Philmore H. Colburn, II, Fishman, Dionne & Cantor, Windsor, CT, Adam Liptak, The New York Times Co., New York City, for defendant.

PONSOR, District Judge.

This recommendation is hereby adopted, upon de novo review. Counts I-VI are dismissed. Summary judgment is granted as to Count VII. The clerk will set a date for a case management conference before me on Count VIII.

So Ordered.

REPORT AND RECOMMENDATION REGARDING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT (Docket No. 09) AND DEFENDANT'S MOTION TO DISMISS (Docket No. 25)

NEIMAN, United States Magistrate Judge.

I. INTRODUCTION

Plaintiff Marion Kusek alleged in her complaint that Defendant The Family Circle, Inc. ("Family Circle") infringed her rights to an unregistered trademark — "Speed Cooking." Kusek alleges that the infringement occurred in both the March 1990 and the September 1990 issues of Family Circle magazine published by Defendant. Family Circle denies Plaintiff's claims and filed a motion for summary judgment, asserting that the applicable statute of limitations bars Plaintiff's action as a matter of law.

Subsequent to Family Circle filing its motion, Plaintiff requested permission to amend her complaint (Docket 15). Permission was granted. In response, Family Circle filed a motion to dismiss under Rules 12(b)(6) and (f) of the Federal Rules of Civil Procedure, requesting that the Court dismiss all eight counts of Plaintiff's amended complaint for failure to state a claim upon which relief can be granted. In its motion, Family Circle also requested that the Court strike as redundant Counts Two, Four and Five of Plaintiff's amended complaint.

Both motions have been referred to the Court for a Report and Recommendation pursuant to Rule 3 of the Rules of the United States Magistrates and the United States District Court for the District of Massachusetts. 28 U.S.C.A. § 636(b)(1)(B). For the reasons set forth below, the Court recommends partially granting Family Circle's motion to dismiss and denying Family Circle's motion for summary judgment.

II. FACTUAL AND PROCEDURAL BACKGROUND¹

Marion Kusek, a resident of Ludlow, Massachusetts, had developed and sold cookbooks since 1986 entitled "Cook One Hour— Eat All Week." The cookbooks' covers also contained the phrase "Speed Cooking" with a trademark (™) notation. The trademark was not registered.

On or about June 4, 1988, Plaintiff ordered an advertisement in the "Shopper's Gallery" of Family Circle magazine. Plaintiff also mailed copies of her cookbooks to Family Circle for prior advertisement approval. As indicated, the cookbooks contained the term Speed Cooking on its cover. However, neither the advertisement acknowledgment returned to Plaintiff nor the advertisement itself used the term Speed Cooking.

An employee at Family Circle who took Plaintiff's advertisement connected Plaintiff with the magazine's editorial department, knowing that the department wrote stories about entrepreneurs. The editorial department conducted a telephone interview with Plaintiff about her Speed Cooking system and indicated that a story about her might be considered. Between June of 1988 and February of 1990, Plaintiff sent several revised copies of her cookbook to Family Circle at their request. No story about Plaintiff materialized. However, the March 13, 1990 issue of Family Circle magazine, published on or about February 20, 1990, featured an article on Speed Cooking, both in the magazine and on the cover. The logo in the article incorporated not only the term Speed Cooking, but a picture of a timer and pot holder similar to that used on Plaintiff's cookbooks. No mention was made in the article about Plaintiff or her cooking system.

On or about February 27, 1990, Plaintiff wrote to Jacqueline Leo, Editor-In-Chief of Family Circle, expressing her concern with the use of the Speed Cooking formula. By letter dated April 3, 1990, Ms. Leo wrote to Plaintiff indicating that Family Circle had researched the title Speed Cooking and that the "computer search organization did not reveal" Plaintiff's cookbook. Ms. Leo went on to indicate that Family Circle was always interested in other people's work and asked that Plaintiff send her a copy of the cookbook and tell her how many copies she had sold and through what channels.

An exchange of letters then ensued between Plaintiff and Family Circle and their respective attorneys. Since Plaintiff had retained and been advised by several attorneys, the correspondence varies among them. On July 25, 1990, Ms. Leo wrote to Plaintiff, acknowledged receipt of a sample copy of her cookbook, and repeated her reference to an earlier computer search for any commercial use of the term Speed Cooking. Ms. Leo indicated that Family Circle had "established a large audience already with speed cooking," which theme enabled them to sell "a great many copies" of the magazine. Ms. Leo also indicated that Family Circle had applied for registration of Speed Cooking as a trademark. She suggested that, to alleviate confusion, Plaintiff continue with the title of her book, "Cook One Hour — Eat All Week," while Family Circle would continue using the term Speed Cooking. See Exhibit 7 to Plaintiff's Arguments Opposing Defendant's Motion for Summary Judgment ("Plaintiff's Opposition") (Docket No. 14).

By letter dated August 6, 1990, Plaintiff's counsel ordered Family Circle to cease and desist from its use of the Speed Cooking trademark. Defendant's Memorandum in Support of Its Motion for Summary Judgment, Exhibit 5 ("Defendant's Memorandum") (Docket No. 11). Despite this letter, Speed Cooking was again featured in the September 25, 1990 issue of Family Circle magazine, published on or about September 4, 1990. In a letter dated November 12, 1990, Plaintiff was notified by Susan Sherry, Senior Editor at Family Circle, that the magazine was no longer running profiles on beginning entrepreneurs and wished Plaintiff luck in her future endeavors.

By letter dated July 17, 1992, counsel for Plaintiff wrote to Family Circle claiming trademark infringement and unfair competition in violation of federal trademark law and Massachusetts General Laws Chapter 93A, the state's consumer protection law. Counsel also asserted that Family Circle had fraudulently obtained a trademark to Speed Cooking. Counsel gave Family Circle thirty days within which to answer. Defendant's Memorandum, Exhibit 6. By letter dated August 14, 1992, counsel for Family Circle denied any trademark infringement and claimed that Plaintiff's future use of Speed Cooking as a trademark would infringe on Family Circle's federally registered trademark. Counsel also indicated that Family Circle, for nominal consideration, would grant Plaintiff a license for her use of Speed Cooking as a trademark. Plaintiff's Opposition, Exhibit 6.

On July 2, 1993, attorneys for Family Circle again wrote to Plaintiff. It is unclear whether this was in response to a letter or telephone call. Defendant's counsel indicated that he had reviewed Plaintiff's trademark infringement claim in significant detail and asserted again that Family Circle had not violated Plaintiff's rights in any way. Defendant's counsel asserted, inter alia, that Family Circle had no knowledge of Speed Cooking prior to its March 19, 1990 issue, that Plaintiff had never spoken to anyone in an editorial capacity at Family Circle before the first use of Speed Cooking in the magazine, that no one at Family Circle involved in the decision to use Speed Cooking had any knowledge of Plaintiff's cookbook at that time, that the term Speed Cooking did not appear on the cover of Plaintiff's cookbook in any way that would allow it to acquire public recognition, and that, at the time Family Circle used Speed Cooking, Plaintiff owned no trademark rights in the term.

Further, Defendant's counsel asserted that even if Speed Cooking were to be considered a trademark, Family Circle's innocent use of the term would not support an award of money damages under federal trademark law or Massachusetts state law. Despite all these claims, Counsel indicated that the term Speed Cooking was no longer of interest to Family Circle and, without admitting any liability or the truth of any of Plaintiff's allegations, stated that Family Circle was willing to settle the matter by surrendering its registration and leaving Plaintiff free to make whatever use of the term Speed Cooking she wished. Plaintiff's Opposition, Exhibit 8.

By letter dated August 4, 1993, Plaintiff informed counsel for Family Circle that she rejected his explication of the matter. Defendant's Memorandum, Exhibit 7. Attorneys for Family Circle magazine again denied any trademark infringement or monetary settlement in a letter dated September 24, 1993, and reiterated that Family Circle was willing to surrender its registration of the mark if a settlement could be finalized. Defendant's Memorandum, Exhibit 9. By letter dated November 1, 1993, Plaintiff rejected Family Circle's offer and indicated her intention to file a lawsuit if she did not hear from Family Circle within fourteen days. Defendant's Memorandum, Exhibit 8. The Plaintiff's letter went unanswered.

Plaintiff pursued a petition to cancel Family Circle's Speed Cooking trademark in the United States Patent and Trademark Office, in response to which Family Circle indicated, on June 27, 1994, that it had abandoned its trademark and was filing a request for voluntary cancellation. Plaintiff's Opposition, Exhibits 9 and 16. As a result, Plaintiff's petition to cancel Family Circle's trademark registration was granted on September 27, 1994. Plaintiff's Opposition, Exhibit 17. Plaintiff commenced this action on October 18, 1994.

III. MOTION TO DISMISS

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