Teaching Co. Ltd. Partner. v. Unapix Entertainment
| Decision Date | 03 March 2000 |
| Docket Number | No. Civ.A. 99-454-A.,Civ.A. 99-454-A. |
| Citation | 87 F.Supp.2d 567 |
| Parties | The TEACHING COMPANY LIMITED PARTNERSHIP, Plaintiff, v. UNAPIX ENTERTAINMENT, INC., Defendant. |
| Court | U.S. District Court — Eastern District of Virginia |
Laura Jean Oberbroekling, Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, Jennifer Carie Holmes, Slevin & Hart, Washington, DC, for Plaintiff.
Michael Patrick Fortkort, Kenyon & Kenyon, Tina Marie Maiolo, Carr Goodson Lee & Warner, Washington, DC, for Defendant.
This is an action for trademark infringement under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1994). Plaintiff The Teaching Company Limited Partnership ("TTC") filed a three-count Complaint against Defendant Unapix Entertainment, Inc. ("Unapix"), alleging two counts of trademark infringement and one count of unfair competition. The issues presented are: 1) whether TTC has a valid, protectible trademark in the use of "GREAT MINDS of the Western Intellectual Tradition;" and 2) whether Unapix's use of a colorable imitation of the trademark is likely to cause confusion among consumers. For the reasons which follow, the Court holds that the plaintiff TTC has shown by a preponderance of the evidence that it has acquired a trademark in the term "Great Minds" as it relates to its educational audio/video tape products and the defendant Unapix is liable for infringement upon the plaintiff's mark. Pursuant to Federal Rule of Civil Procedure 52(c), the Court renders the following findings of fact and conclusions of law.
This Court heard five days of testimony without a jury. Having considered the testimony and demeanor of the witnesses, and weighed all the evidence, the Court renders the following findings of fact.
The Teaching Company Created a Series of Educational Audio/Video Products Entitled "Great Minds of the Western Intellectual Tradition"
Plaintiff TTC is a producer of educational audio and video tapes, which feature the lectures of leading college professors from major universities. TTC is a limited partnership organized under the laws of Delaware having a principal place of business in Springfield, Virginia. Defendant Unapix produces audiovisual products, including videotapes, audiotapes, and compact discs. Unapix is a Delaware corporation having a principal place of business in New York, New York.
The mark at issue is "Great Minds of the Western Intellectual Tradition" ("GMWIT"), which is the name of a series of audio/video taped lectures by leading college professors discussing renowned philosophers like Aristotle, Plato and other so-called "great thinkers." The GREAT MINDS series was created in 1992 and included fifty-seven lectures approximately forty-five minutes in length. The series was divided into five parts: 1) Ancient Philosophy and Faith: From Athens to Jerusalem; 2) The Age of Faith to the Age of Reason; 3) The Enlightenment and Its Critics; 4) Philosophy in the Epoch of Ideology; and 5) Modernism and the Age of Analysis. Each subpart includes several audio and video tapes, as well as printed material concerning the lectures and bibliographic information. TTC has never attempted to register the title "Great Minds of the Western Intellectual Tradition."
In 1996, TTC released a second edition of the GMWIT series. The 1996 edition added updates and modifications to the original lectures. The number of lectures increased to seventy. In addition to the five parts of the series, TTC also released selections of lectures in separate sets. These separate selections were also marked with GREAT MINDS. In June 2000, TTC plans to release a new edition of GMWIT, including a new video edition.
Since TTC produced GMWIT in 1992, TTC has continually marketed and sold the GMWIT series. Print advertisements and direct mail advertising are used to generate interest in the series and to create sales of the product. TTC has advertised in the following print media: the New York Times Sunday Book Review section, The Economist, Science News, Time, New York Review of Books, Nation, New Republic, The Sciences, Archaeology The Weekly Standard, National Review, Harper's Magazine, World Traveler (Northwest Airlines' in-flight magazine), Biblical Archaeology Review, Foreign Affairs, Chicago Tribune Books, Reason, The Times Literary Supplement, and The Wilson Quarterly. The New York Times Sunday Book Review section has remained one of TTC's most regular advertising outlets for GMWIT.
TTC has spent nearly $700,000 on newspaper and magazine advertising devoted exclusively to the GMWIT series since 1992. Prior to August 1996, TTC spent $300,000 in print advertising solely dedicated to the GMWIT series. TTC has spent over $11 million on direct mail advertising featuring GMWIT along with other products. Over 20 million catalogs offering the GMWIT series have been distributed. Furthermore, TTC has advertised its products on classical radio stations and National Public Radio.
In addition to TTC's advertisements, GMWIT has received gratuitous coverage in newspapers. Morton Kondracke, writing in the New Republic, referred to the GMWIT series as "the widely advertised philosophy lecture tapes produced by the Teaching Company...." Morton Kondracke, Searching, THE NEW REPUBLIC, Dec. 21, 1992, at 43. Articles on TTC and the GMWIT series have also appeared in Forbes, the Chicago Tribune, the Princeton Weekly Bulletin, the New York Times, Mirabella, and Success. For example, an article published in Mirabella in February 1993 recounted the author's experience of watching the GMWIT series in its entirety. The author referred to the GMWIT series as "the big kahuna" of TTC's offerings. Tom Bachtell, Civilization in 10 Easy Tapes, MIRABELLA, Feb. 1993, at 56.
TTC also employs a variety of channels to distribute its audio and video tapes. TTC's print advertising and catalogs provide 800-numbers for customers to directly order the products. Several bookstore chains, including Barnes & Noble and Crown Books, have sold GMWIT. In addition, TTC has also recently created its own Internet site to promote and increase sales of all of its products, including the GMWIT series.
In terms of profits, the GMWIT series has consistently been one of TTC's top selling products, generating revenues between $500,000 and $1.2 million per year. The audio versions of the GMWIT series sell for approximately $150 a set. When available, the video versions sold for $550 a set, or $150 per part. The video version was intermittently offered at the sale price of $350 for the set. Thus, the GMWIT series generates significant revenues for TTC.
TTC's activities and use of the term "Great Minds" must now be contrasted with the activities of the defendant Unapix.
Defendant Unapix is a multimedia company which produces and sells movies, television programs, and home videos. Mr. Timothy Smith helped create Unapix's "Great Minds of ..." video documentary series. Mr. Smith is currently president of Unapix Docere, a division of Defendant. He created the Unapix series when he worked for a company named IVN Communications, Inc. ("IVN") from May 1995 to January 1996. Mr. Smith conceived of a video series of interviews and data documentaries focused on innovations in science and IVN released the series entitled "Discovering Great Minds of Science" in November 1995. The IVN Discovering Great Minds was co-produced in conjunction with Disney Magazine Publishing, Inc. d/b/a Discover Magazine (hereinafter "Disney").1 The concept for "Discovering Great Minds of Science" was developed by Mr. Smith. Mr. Smith intended to develop a series of documentaries on various topics. In February 1996, Mr. Smith left IVN because it lacked the resources to develop the "Discovering Great Minds of ..." video series. Mr. Smith accepted a position with Unapix and began working on the series.
During the planning stage of development, Unapix considered several possible titles for the series, including "Visionaries of ..." and "Master Minds of...." In August 1996, Unapix settled on "Great Minds of...."
In an effort to avoid any potential conflicts with the prior rights holders, Unapix entered into agreements with Disney under which Disney acquired all of IVN's intellectual property rights in the "Discovering Great Minds of Science" series. Disney granted Unapix a license to exploit this series in return for financial consideration. The Unapix/Disney agreements expressly acknowledged Unapix's intention unilaterally to produce other "Great Minds of ..." series independent of "Discovering Great Minds of Science," without any obligation to Disney. The Disney-IVN agreement was executed on July 22, 1996. The Disney-Unapix agreement was dated September 20, 1996. Disney paid $50,000 to IVN, and Unapix paid $50,000 to Disney.
During the course of development of the series, Mr. Smith made a judgment about what to call the series of educational video-tapes. His consideration of a name for the series warrants discussion.
Unapix's "Discovering Great Minds" Series and Consideration of "Great Minds of ..."
To develop the project series, Mr. Smith sought a partner from a major publication or media outlet interested in a joint venture in the promotion and sale of the videos. Unapix selected WGBH as a co-producer and distributor of the series. WGBH was an ideal joint venturer because it is a nationally recognized public televison station with a large following. The promotional plan for the series would involve airing the initial national telecast of the videos on public television with sale of the video offered at the end of each telecast and promotion in public television previews.
Mr. Steve Atlas was the WGBH co-producer of the "Discovering Great Minds of Science" project. On August 14, 1996, when Unapix was...
To continue reading
Request your trial
-
JFJ Toys, Inc. v. Sears Holdings Corp., Civil Action No. PX–14–3527
...2003) (finding the SWEETWATER TAVERN mark sufficiently similar to SWEETWATER BREWING COMPANY mark); Teaching Co. P'ship v. Unapix Entm't, Inc. , 87 F.Supp.2d 567, 581–82 (E.D. Va. 2000) (finding the GREAT MINDS OF MEDICINE mark "extremely similar" to GREAT MINDS OF THE WESTERN INTELLECTUAL ......
-
Intern. Bancorp v. Societe Des Baines De Mer
...See CACI Int'l v. Pentagen Technologies Int'l, 1995 WL 679952, * 3 (4th Cir.1995) (unpublished); Teaching Co. Ltd. Partnership v. Unapix Entertainment, Inc., 87 F.Supp.2d 567, 585 (E.D.Va.2000). Neither of these decisions, however, is Although the better view seems to be that trademark infr......
-
E. W., LLC v. Rahman
...to Plaintiff's federal and common law claims for trademark infringement and unfair competition is two years. See Teaching Co., Ltd. P'ship, 87 F.Supp.2d at 585 (citing Unlimited Screw Prods., Inc. v. Malm, 781 F.Supp. 1121, 1125 (E.D.Va.1991) (stating that claims under the Lanham Act are an......
-
In re Chaires
...interpreted bad faith to mean acts that are malicious, fraudulent, deliberate, and willful. See Teaching Co. Ltd. Partnership v. Unapix Entertainment, Inc., 87 F.Supp.2d 567, 592 (E.D.Va.2000) (citing Scotch Whisky Ass'n v. Majestic Distilling Co., Inc., 958 F.2d 594, 600 (4th Cir.1992)). T......
-
When Inaction Is Bad Faith: The New Implications Of A Failure To Search
...significant evidence bearing on the question of an infringer's bad faith. In The Teaching Co. Ltd. Partnership v. Unapix Ent't, Inc., 87 F. Supp. 2d 567, 590 (E.D. Va. 2000), the district court held that the defendant's failure to conduct a trademark search despite its knowledge of a potent......
-
See no evil, hear no evil: No trademark search? No defense
...significant evidence bearing on the question of an infringer's bad faith." In The Teaching Co. Ltd. Partnership v. Unapix Ent't, Inc., 87 F.Supp. 2d 567, 590 (E.D. Va. 2000), the district court held that the defendant's failure to conduct a trademark search despite its knowledge of a potent......