Time Inc. Magazine v. Globe Communications Corp.
| Decision Date | 09 May 1989 |
| Docket Number | No. 89 Civ. 2336 (RWS).,89 Civ. 2336 (RWS). |
| Citation | 712 F. Supp. 1103 |
| Parties | The TIME INC. MAGAZINE COMPANY, Plaintiff, v. GLOBE COMMUNICATIONS CORPORATION, Defendant. |
| Court | U.S. District Court — Southern District of New York |
Robin Blecker & Daley, New York City, for plaintiff; Albert Robin, of counsel.
Gold, Farrell & Marks, New York City, for defendant; Leonard M. Marks, of counsel.
Plaintiff The Time Inc. Magazine Company ("Time") has moved by an Order to Show Cause for a preliminary injunction pursuant to Rule 65 Fed.R.Civ.P. restraining defendant Globe Communications Corporation ("Globe") from using elements of the plaintiff's People Weekly ("People") cover format, claiming that such use constitutes statutory unfair competition violating Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) and common law unfair competition under New York law. Upon the findings and conclusions set forth below, the motion for a preliminary injunction is granted.
This action was filed on the date that the Order to Show Cause was obtained, April 11, 1989. The motion was considered on affidavits, argued and fully submitted on April 21, 1989. The facts set forth below are uncontested except as noted.
Plaintiff Time is a Delaware corporation with its principal place of business in New York. It is engaged in the publication of magazines, including People, which are offered for sale, sold, and distributed here in New York. The principal readership of People is men and women in their 20s and 30s. Time has published People since 1974 on a weekly basis. Since then the magazine has enjoyed much popularity and broad circulation. Between 1981 and 1988, over 1,130,000,000 copies of the magazine have been sold. Sales revenue for People during the same period exceeded $1,340,000,000.
Time has continuously advertised and promoted People through television commercials, for which Time has spent over $10 million, in each of the past five years, over 7,500,000 direct mail solicitations and promotions conducted by agencies such as Publishers Clearing House and American Family Publishers. More than half of the sales of the magazine sold at $1.79 per copy, occur at newsstands, grocery stores, supermarkets, terminals and bookstores. Over half of these sales occur at grocery stores and supermarkets, where magazines are stacked on racks and portions of the covers are hidden.
Time claims without refutation that many of their purchasers are repeat buyers who are looking for a familiar cover format and take an average of six seconds to decide which magazine they will purchase. Time therefore alleges that their cover format is the single most important selling tool in these advertising and promotional vehicles.
The People cover format has had few changes since its first publication in 1974. The logo has appeared in substantially the same manner, displayed in white Egyptian extra bold condensed type. The logo is also hand-altered so that the letters touch or blend into each other.
Beginning in 1982, all cover billings appeared in helvetica extra bold condensed type. For the past one and a half years, the cover billings have consistently used a combination of typefaces with the main headline in futura extra bold condensed type and with all other cover billings remaining in helvetica extra bold condensed type. In addition, 90% of the covers use a drop shadow on the main headline type.
Since 1987, People has frequently displayed a photograph in the upper right hand corner of the cover, accompanied by a secondary billing set off within a bar or rule, placed to the left of the photograph.
Time maintains that the cover of People plays a critical role in the newsstand sales and that the substantially consistent cover subject and cover format are used to attract readers who rely on the distinctive cover format in selecting the magazine for purchase. Time claims that the distinctiveness of the cover lies in the combination of various elements such as:
According to Time, these elements combine to give People a unique cover format that is universally associated with the magazine and is a means by which it is known to the public and its source of origin identified.
Globe is a New York Corporation with its principal place of business in New York. It publishes over twenty newspapers and magazines, including Celebrity Plus ("Celebrity"), the magazine at issue in this action. Celebrity is a celebrity-oriented magazine containing news and articles about famous persons, supplemented with photographic material. The magazine has also dealt with health-related and self-help issues.
Celebrity's readership is comprised primarily of women between the ages of 39 and 44. The magazine is published on a monthly basis. In the two and one half years that the magazine has been on the market, Globe has invested over $6 million dollars in its development, promotion and marketing. Approximately 250,000 copies are printed per month at $1.95 per copy in most locations.
Globe's first publication of the magazine in January 1987, originally called Celebrity Focus, displayed the name Celebrity Focus in a bold white typeface logo, highlighted by a black dropped shadow. The dropped-shadow effect used on the logo was also employed on the typeface of the cover billings which were vertically displayed alongside the cover photograph. A star design of contrasting color appeared over the "i" in the Celebrity Focus title in lieu of a dot.
After some months, Globe experimented with a new cover format to increase its newsstand sales. Accordingly, in June 1987, the cover format of Celebrity Focus displayed a secondary cover billing along the top portion of the cover page set within a contrasting color rule.
Globe's statistics demonstrated that sales had risen as a result of that effort. Globe continued to experiment with the cover format and, in September 1987, added a secondary photograph to the upper left-hand corner of the cover page relevant to the adjacent secondary billing.
The inset photograph remained on the upper left-hand portion of the cover page for several months, but the dropped-shadow of the Celebrity Focus logo was eliminated. Alternatively, Globe experimented with several color designs for the title and, in the October 1987 issue of Celebrity Focus, employed a black border around the letters of the logo.
The secondary billing set off by a rule of contrasting color remained an element of the Celebrity Focus cover format from June 1987 to February 1988 and, during that period, secondary photographs were frequently displayed and placed either adjacent to or within the contrasting rule appearing along the top portion of the cover page. In addition, a dropped shadow effect was sometimes employed on the typeface of the main cover billings.
In March 1988, the title of the magazine was changed from Celebrity Focus to Celebrity Plus, with a script typeface for the new title logo.
Globe has maintained the Celebrity Plus title to the present, and, until May 1989, employed the script typeface in the logo. For several of the Celebrity Plus issues from April 1988 to April 1989, the letters of the logo have appeared within a border of contrasting color and on several of the issues, those letters are white with a contrasting outline. On a number of issues, there is a second "cover" across the top with a secondary photograph set adjacent to the billing in the upper right-hand corner.
In the final months of 1988 and the first few months of 1989, the Celebrity Plus logo was considerably reduced in size from previous issues and the cover format assumed a more tabloid-like appearance containing numerous photographs and headlines.
For the May 1989 issue, Celebrity altered its cover format to contain the elements listed above which were already a part of People's cover format. Time wrote to Globe to discontinue the new format and with Time's objections in hand, altered the Celebrity logo from "bold egyptienne serif" typeface to "bold folio sans-serif" and used a star in place of a dot over the letter "i" in the word Celebrity. Further, the June cover will incorporate the legend "A Globe Publication" under the logo, accompanied by Globe's pictured trademark of the western hemisphere.
Notwithstanding these alterations, Time asserted that Globe's use of the elements listed above of Celebrity magazine constituted trade dress infringement requiring injunctive relief.
In order to obtain a preliminary injunction, the moving party must establish:
(a) irreparable harm and (b) either a likelihood of success on the merits or sufficiently serious questions going to the merits to make them fair ground for litigation and a balance of hardships tipping decidedly in the movant's favor.
Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 73 (2d Cir.1988); Home Box Office, Inc. v. Showtime/The Movie Channel, Inc., 832 F.2d 1311, 1314 (2d Cir.1987); Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir.1979). Because Time has shown both irreparable harm and a likelihood of success on the merits as to the trade dress infringement of their distinctive cover format, the preliminary injunction will be granted.
According to Time, Globe's cover format of Celebrity constitutes a false designation of the origin of the magazine and a false description and representation that Celebrity is Time's magazine or endorsed or connected in some way with Time, and that Globe with...
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