LL Bean, Inc. v. Drake Pub., Inc.

• Decision Date: 16 January 1986
• Docket Number: Civ. No. 84-0305 P.
• Citation: 625 F. Supp. 1531
• Parties: L.L. BEAN, INC., Plaintiff, v. DRAKE PUBLISHING, INC., Gloria Leonard, Louis Montesano, Nina Malkin, Linda Francischelli, Kevin Goodman, Kenneth Kimmel, Larry Graver, Arnold Held, Bruce Jacobsen, L.E. Goodman, Richard Crespo, Marty Puntus, Jerry Levine, Susan Ercolano, Yamael Bonheur, and Joy Bonheur, Defendants.
• Court: U.S. District Court — District of Maine

625 F. Supp. 1531

L.L. BEAN, INC., Plaintiff, v. DRAKE PUBLISHING, INC., Gloria Leonard, Louis Montesano, Nina Malkin, Linda Francischelli, Kevin Goodman, Kenneth Kimmel, Larry Graver, Arnold Held, Bruce Jacobsen, L.E. Goodman, Richard Crespo, Marty Puntus, Jerry Levine, Susan Ercolano, Yamael Bonheur, and Joy Bonheur, Defendants.

Civ. No. 84-0305 P.

United States District Court, D. Maine.

January 16, 1986.

George S. Isaacson, Alfred C. Frawley, Brann & Isaacson, Lewiston, Me., David Wolf, Wolf, Greenfield & Sacks, Boston, Mass., for plaintiff.

Elliott L. Epstein, Isaacson, Hark & Epstein, Lewiston, Me., Norman S. Beier, Lawrence E. Abelman, Abelman, Frayne, Rezac & Schwab, New York City, for defendants.

ORDER ON PARTIES' CROSS-MOTIONS FOR SUMMARY JUDGMENT

GENE CARTER, District Judge.

Plaintiff owns the registered trademarks "Bean," "Bean's" and "L.L. Bean" and uses them in its mail order catalog for marketing sporting goods and wearing apparel. Defendants publish High Society, a magazine which describes itself as providing erotic entertainment. At pages 36 and 37 of the October 1984 issue of High Society, there is material identified as "L.L. Beam's Sex Catalog." In this action Plaintiff seeks damages and equitable relief under both federal and state law for alleged trademark dilution, infringement, unfair competition, deceptive trade practices, interference with prospective business advantage, and trade libel. Defendants have moved for summary judgment on all counts, and Plaintiff has filed a cross-motion for summary judgment on all but Count VI. Count VIII, Plaintiff's claim for punitive damages, is not discussed in Defendants' submissions and the resolution of Plaintiff's motion does not necessitate addressing that claim at this time. The Court will address the counts brought under federal law first.

Count II

Count II seeks relief for trademark infringement under section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), which provides that:

(1) Any person who shall, without the consent of the registrant —

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive;

. . . . .

shall be liable in a civil action by the registrant for the remedies hereinafter provided.

Defendants concede, for purposes of this motion, that Plaintiff has registered trademarks in "Bean," "Bean's" and "L.L. Bean." They also concede that "L.L. Beam's" and "Beam's," terms used in their catalog, are colorable imitations of the "Bean's" trademark. Defendants contend, however, that Plaintiff cannot prove the required element of likelihood of confusion. See Pignons, S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 486-87 (1st Cir.1981).

In Pignons the Court of Appeals set forth several factors to be considered in assessing likelihood of confusion: the similarity of the marks; the similarity of the goods; the relationship between the parties' channels of trade; the relationship between the parties' advertising; the classes of prospective purchasers; evidence of actual confusion; the defendant's intent in adopting its mark; and the strength of the plaintiff's mark. Id.

In considering the similarity of the marks, the Court first notes Defendants' concession that their use of L.L. Beam is a colorable imitation of the L.L. Bean trademark. Similarity, however, "is determined on the basis of the total effect of the designation, rather than a comparison of individual features." Id. at 487. Often, similar marks are not as likely to be confused when they are used in conjunction with the clearly displayed name and/or logo of the manufacturer. Defendants suggest that the L.L. Beam mark is used in conjunction with the name High Society and its source is, therefore, not likely to be confused with the real L.L. Bean. The name High Society is displayed prominently on the cover and repeatedly throughout the magazine. The table of contents shows the two in conjunction. The name High Society does not, however, appear on the particular pages on which the sex catalog is found. The total effect of the designation, which bears on the factor of similarity, is unclear and best left for resolution by a trier of fact.

Although the Court of Appeals affirmed the granting of summary judgment in Pignons, it did so because "taking everything in Pignons' favor, still none of the factors relevant to a finding of likelihood of confusion supports Pignon's position." In this case Plaintiff has submitted data generated by a commissioned market survey which could be interpreted as showing that at least 11.5% of those surveyed were in fact confused as to the source of the "L.L. Beam Sex Catalog." Plaintiff has also submitted expert testimony in affidavit form verifying this conclusion of the survey.

Relying on Warner Bros., Inc. v. American Broadcasting Cos., Inc., 720 F.2d 231, 245 (2nd Cir.1983), Defendants argue that the Court shall decide as a matter of law that its allegedly infringing use of the trademark is not confusingly similar and that once such a determination has been made the conclusion should not be altered by survey evidence. The Court cannot agree. Warner Bros. was a copyright case in which similarity or copying was the primary issue. As the Court of Appeals for the First Circuit stated in Pignons, however, "confusion over the nature of the parties' business relationship may be as objectionable for purposes of trademark infringement as is confusion between their goods." Pignons, 657 F.2d at 490. Surveys seem a particularly apt manner of assessing this aspect of a trademark infringement claim.

Defendants also suggest in their reply memorandum that the survey is flawed in its methodology. They argue, for example, that the survey did not necessarily reflect confusion in the minds of any relevant consumers, namely Bean customers or prospective customers. Bean's submissions indicate, however, that their customers fall, in varying percentages, into all economic groups and that over 25% of all households in the United States receive a Christmas mailing from them. It appears to the Court that a shopping mall intercept would have some overlap with Bean's prospective customers since Plaintiff avowedly is trying to expand its market from its already large base. Moreover, with the O'Reilly affidavit, Plaintiff has provided support for the survey's methodology and results. Defendants have not yet presented anything substantive attacking the approval of the study and the Court is unprepared to find the study inadmissible on the basis of Defendants' vague suggestions. Therefore, viewing the evidence in the light most favorable to the nonmoving party, the Court finds that Plaintiff has shown some evidence of actual confusion.

In considering some of the other factors mentioned in Pignons, the Court notes that Plaintiff has submitted affidavit evidence indicating that its trademarks are very strong and valuable. Defendants' intent in imitating the mark appears, from the description of the sex catalog in the magazine's table of contents, to be an intent to parody or satirize. Plaintiff disputes this characterization of Defendants' intent, pointing to certain testimony of Drake's employees. It is not necessary to examine the other factors to see that there exist genuine issues of material fact on the issue of likelihood of confusion, an essential element of any trademark infringement claim. These issues must be resolved at trial. Thus, both parties' motions for summary judgment on Count II must be denied.

Count III

Count III of the Complaint seeks relief under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), which provides:

Any person who shall ... use in connection with any goods or services, or any container or containers for goods, a false designation of origin, or any false description or representation, including words or symbols tending falsely to describe or represent the same, and shall cause such goods or services to enter into commerce, ... shall be liable to a civil action ... by any person who believes that he is or is likely to be damaged by the use of any such false description or representation.

Defendants argue that in the First Circuit two essential elements of a section 43(a) claim are competition between the parties and likelihood of confusion by the alleged infringer's use of the owner's mark. Defendants cite Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366 (1st Cir. 1980), as establishing that the parties must be competitors for plaintiff to state a claim under section 43(a). In Rovira the Court of Appeals stated that section 43(a) "creates a federal law of unfair competition by providing a statutory remedy to a party aggrieved by a competitor's `false designation of origin' of his product even though he does not have a federally registered trademark." Id. at 372.

The Court does not construe the First Circuit's words in Rovira as creating a requirement that the parties be in direct competition. In the more recent case of Purolator, Inc. v. EFRA Distributors, Inc., 687 F.2d 554, 561 (1st Cir.1982), the Court elaborated on the remedy provided by section 43(a):

It is designed to reach, among other things, attempts to appropriate the goodwill associated with a competitor's trademark by means of confusingly similar marking and packaging, which would create the impression that the products of the defendant originated with the plaintiff. Again, a showing that the marks or packaging of defendant's create a likelihood of confusion with the products of the plaintiff will be a key to establishing a claim of false designation of origin.

The protection of goodwill afforded by section 43(a) extends to "any person damaged by the use of any such false description or representation." 15...