McGraw-Hill Book Co. v. Random House, Inc.

• Decision Date: 07 February 1962
• Docket Number: GRAW-HILL
• Citation: 32 Misc.2d 704,225 N.Y.S.2d 646
• Parties: , 132 U.S.P.Q. 530 McBOOK COMPANY, Inc., and Fawcett Publications, Inc., Plaintiffs, v. RANDOM HOUSE, INC., and Dell Publishing Co., Inc., Defendants.
• Court: New York Supreme Court

Page 646

225 N.Y.S.2d 646

32 Misc.2d 704, 132 U.S.P.Q. 530

McGRAW-HILL BOOK COMPANY, Inc., and Fawcett Publications Inc., Plaintiffs, v. RANDOM HOUSE, INC., and Dell Publishing Co., Inc., Defendants.

Supreme Court, Special Term, New York County, Part I.

Feb. 7, 1962.

White & Case, New York City (Chester Bordeau and Charles C. Humpstone, New York City, of counsel), for plaintiff McGraw-Hill Book Co.

DeWitt, Nast & Diskin, New York City (Thomas A. Diskin, William E . Flannery and Robert O. Donnelly, New York City, of counsel), for plaintiff Fawcett Publications, Inc.

Weil, Gotshal & Manges, New York City (Horace S. Manges, Jacob F. Raskin and Marshall C. Berger, New York City, of counsel), for defendant Random House.

ABRAHAM J. GELLINOFF, Justice.

Plaintiffs in this action move for an order pendente lite enjoining the defendants from publishing, selling, distributing and advertising a book entitled 'John F. Kennedy and PT-109'. Plaintiffs contend that the use of that title constitutes unfair competition with them in their sale and distribution of a book entitled 'PT 109 John F. Kennedy in World War II'. 'PT' means 'patrol torpedo' and the combination 'PT 109' is the identifying name of a particular patrol torpedo boat that was used during the war.

Both books deal with substantially the same subject matter--the heroic exploits of President Kennedy during World War II while in command of PT boats in the South Pacific, mainly on PT 109. Both books have received the co-operation of the President in their preparation.

The story of the President's wartime PT boat heroism, particularly on PT 109, has been chronicled many times in books and magazine articles. An article written in 1944 by John Hersey for 'The New Yorker', under the title 'Survival', dealt with the same subject matter.

Plaintiffs' book is written by Robert J. Donovan, Chief of the Washington Bureau of the New York Herald Tribune, and author of Eisenhower: The Inside Story, a best seller in 1956. Defendants' book is written by Richard Tregaskis, former International News Service correspondent in the South Pacific, and author of Guadalcanal Diary, likewise a best seller.

Plaintiff McGraw-Hill Book Company, Inc. (hereinafter called 'McGraw') acquired the exclusive rights to the book written by Robert J. Donovan by an agreement entered into on February 10, 1961. The record does not disclose the tentative or working title for the book designated in that agreement. However, on April 17, 1961, there appeared in the 'Movie Section' of the New York Herald Tribune an item that 'Warner Bros. has acquired motion picture rights to 'PT Boat 109' soon to be published by McGraw Hill Co.'.

On May 5, 1961 McGraw granted the publisher of 'Saturday Evening Post' the serialization rights to the book for $65,000. The working title was 'PT Boat-109'. The Saturday Evening Post published the story in five weekly installments under the title 'PT 109 The Adventure that Made a President', with a note stating: 'The story of President Kennedy's war adventures beginning in this issue is from Robert J. Donovan's book, PT 109; John F. Kennedy in World Was II, published this week by the Mc-Graw Hill Book Company, Inc.'

On May 31, 1961 McGraw gave Warner Bros. Pictures, Inc., an option to purchase the motion picture rights to the book for $150,000. The option was exercised in July, 1961. The working title in the option agreement is 'PT Boat-109'.

On June 7, 1961 McGraw sold to the New York Herald Tribune newspaper serialization rights 'from the book 'PT 109' by' Donovan. These rights have earned in excess of $10,000. The articles in the New York Herald Tribune were titled 'PT-109' with the subheading 'John F. Kennedy in World War II'. A credit line indicated that the serialization-18 articles--was based on the book 'PT 109: John F. Kennedy in World War II'.

McGraw published its book in November, 1961. Book reviews appearing throughout the country refer to the book sometimes under the title 'PT 109' and sometimes under the title 'PT 109: John F. Kennedy in World War II'. One reviewer in the Herald Tribune does not name the title but refers to its subtitle 'John F. Kennedy in World War II'. In the course of his review he states: 'The story of 'PT 109' has been toled before', and 'Although the events involving PT 109 make up the core of the story, the book tells more in accord with its subtitle'. The best seller list of the New York Times referred to the book as 'PT 109. Donovan'.

The first page of the book gives the title as 'PT 109', and that same title appears twice on the inside rear flap of the dust jacket and on the back page of the dust jacket. The book was copyrighted under the title 'PT 109'. McGraw's catalogue for the Fall of 1961 refers to the title as 'PT-109', subtitle 'John F. Kennedy in World War II'.

An article in the New York Journal American of January 25, 1962 is entitled 'Young Actor Tested for PT-109 Role--Peter Fonda as JFK' and makes reference to 'starring role in PT-109 * * * story of how Mr. Kennedy and ten others survived the sinking of their PT boat'.

McGraw insists that the title of its book is 'PT 109 John F. Kennedy in World War II'; that such title is distinctive, and that it has acquired wide acclaim and acceptance both by the general public and the trade. McGraw also claims, however, that the general, popular and public acceptance of the title is 'PT 109'.

Defendant Random House, Inc. (hereinafter called 'Random House'), began negotiations for the publication of a book dealing with President Kennedy's boat heroism during World War II in February, 1961, almost immediately after the President's inauguration. On February 10, 1961, the vice president of Random House wrote to the associate editor of Life Magazine, suggesting a new juvenile book about PT Boat heroes of World War II, including a substantial chapter about President Kennedy. On April 10, 1961 Random House wrote Mr. John Hersey, who had treated the subject in the New Yorker article referred to above, suggesting an expansion of the article into a book for juvenile readers.

Not hearing either from Life Magazine or Mr. Hersey, Random House, in April, 1961, decided to publish such a book for the adult public. However, knowing of McGraw's plans to publish such a book, they decided to publish their own as a juvenile book as part of their series for juvenile readers known as 'Landmark Books'. On May 9, 1961 Random House contracted with Richard Tregaskis to write the book, provisionally entitled 'PT Boat 109 (A Landmark Book) The World War II Exploits of President Kennedy'.

On June 7, 1961 Random House contracted with the defendant Dell Publishing Co. Inc. (hereinafter called 'Dell') for the publication of the book by Dell in paperback, the title of Random House's book being stated in the contract as 'John F. Kennedy and PT Boat-109'. Random House has printed 40,000 copies of its book and 16,000 copies have been distributed.

Plaintiff McGraw-Hill has sold to plaintiff Fawcett Publications, Inc., for $125,000 the right to reprint McGraw's book in paperback under the title 'PT 109 John F. Kennedy in World War II', publication of the paperback edition, however, not to commence until November, 1962.

Plaintiffs claim that the title of the planned publication by defendant Random House simulates the title of plaintiffs' book; that such simulation is likely to confuse the general public and the book publishinig industry; that plaintiff McGraw has invested considerable sums of money in promoting the book to the point where it has become a best seller; that the acts of Random House constitute a deliberate plan and scheme to mislead the trade and the general public, and to pass off their simulated title as the work and property of plaintiff McGraw, and to appropriate for itself the title 'PT 109 John F. Kennedy in World War II'. They therefore sue for an injunction, and claim they are entitled to one pendente lite to avoid diminution and dilution of their property rights.

The defendants deny plaintiffs' accusations. Random House contends that it adopted 'PT-109' as part of its title before it had any knowledge of McGraw's title; that it could not possibly have intended to appropriate plaintiffs' good will created by publication of plaintiffs' book because it had no way of knowing, when it adopted its own title, that plaintiffs' title would be a success or failure; that there is no likelihood of confusion in the trade or among the public as to which book is plaintiffs' best seller and which is defendant's juvenile book; and that Random House has as much right to use the term 'PT 109' as part of the title of its book as have the plaintiffs.

The law does not recognize a monopoly of the English language (William Stevens Ltd. v. Cassell & Co., 29 Times L. R. [Eng .] 272, 30 Rep.Pat.Cas. 199). Words or phrases which have been in common use, which are descriptive or generic, or which constitute the true and generally accepted name by which an article or thing is called, may not be appropriated by anyone to his exclusive use. Words may not therefore be exclusively appropriated as the title of a book. Where, however, a book has attained such popularity that its title has plainly acquired a secondary meaning, i. e., one suggestive of that particular book, equity will, under the rules of unfair competition, prevent the use of the same title, or a colorable imitation thereof, as descriptive of another and competing book (cf. Warner Bros. Pictures v. Majestic Pictures Corp., 2 Cir., 70 F.2d 310).

The plaintiffs did not coin or originate the expression, name or term 'PT 109'. Prior to its use by plaintiffs it was, and is now, utilized as the name of the patrol torpedo boat commanded by President Kennedy during World War II. It has been used in public and private speech, in newspapers, magazines, books, periodicals and on the radio. It has become an expression residing in the public domain and pla...