Woodsmith Pub. Co. v. Meredith Corp.

• Decision Date: 01 June 1990
• Docket Number: No. 89-2286,89-2286
• Parties: WOODSMITH PUBLISHING CO., Appellant, v. MEREDITH CORPORATION, Appellee.
• Court: U.S. Court of Appeals — Eighth Circuit

Page 1244

904 F.2d 1244

15 U.S.P.Q.2d 1053

WOODSMITH PUBLISHING CO., Appellant, v. MEREDITH CORPORATION, Appellee.

No. 89-2286.

United States Court of Appeals,

Eighth Circuit.

Submitted Feb. 13, 1990.

Decided June 1, 1990.

William B. Serangeli, Des Moines, Iowa, for appellant.

Jon O. Nelson, Chicago, Ill., for appellee.

Before WOLLMAN and MAGILL, Circuit Judges, and BOGUE, ^* Senior District Judge.

MAGILL, Circuit Judge.

This case involves a trade dress infringement claim under section 43(a) of the Lanham Trademark Act, 15 U.S.C. Sec. 1125(a) (1946). Both parties published nationally competing bimonthly magazines for the woodworking hobbyist and used advertising mailers to solicit subscriptions. The issue on appeal is whether the trial court ¹ erred in granting defendant's motion for summary judgment upon plaintiff's failure to raise a genuine issue of material fact regarding likelihood of confusion. We affirm.

I.

Woodsmith, a magazine published bimonthly by Woodsmith Publishing Company (Woodsmith), attempts to instruct woodworking hobbyists on complex techniques and skills. Woodsmith was the sole proprietorship of Donald B. Peschke, a former Meredith Corporation (Meredith) employee. Woodsmith included instructions on how to build complex projects in an easy-to-follow manner using step-by-step drawings. Woodsmith's magazine cover layout, with masthead and banner across the cover, standardized type style for article titles, and a large, framed photograph of one of Since 1984, Meredith has published Wood magazine, another bimonthly woodworking magazine. Through market research, Meredith developed Weekend Woodworking Projects (Projects ), a magazine focusing on small-scale, easy-to-do woodworking plans. Meredith planned to publish Projects on alternative months to Wood. In 1987, Meredith decided to market Projects by distributing a subscription solicitation mailer developed by a free lance copywriter. Previously, Woodsmith had hired the same free lance copywriter to create a unique direct mail package, including a subscription solicitation mailer.

the projects in the issue on the cover, was typical. Woodsmith was produced using a two-color photographic process. The magazine was bound by a protective cover, a common protection method. Each issue of Woodsmith was three-hole punched, making it suitable for placement in binders.

Woodsmith solicited subscribers to Woodsmith through use of the Woodsmith mailer. ² In July, September and October 1987, Meredith distributed thousands of Projects mailers. Shortly thereafter, Woodsmith received several inquiries from its subscribers regarding Meredith's Projects. ³ Woodsmith claims to have lost 55,028 potential Woodsmith subscribers during the period from June 1987 through October 1988 due to the distribution of the Projects mailer.

Woodsmith filed suit seeking damages and injunctive relief, alleging trade dress infringement in violation of section 43(a) of the Lanham Trademark Act, 15 U.S.C. Sec. 1125(a) (1946). ⁴ Woodsmith asserted that Meredith's Projects had assumed Woodsmith's trade dress. Woodsmith also alleged that Meredith had engaged in unfair competition by using a subscription solicitation confusingly similar to the Woodsmith mailer, resulting in confusion among potential subscribers regarding the origin of Projects and the Projects mailer. On June 27, 1989, the district court granted Meredith's motion for summary judgment on the ground that, based upon the record and the trial court's visual inspection of the magazines and the mailers, no genuine issue of material fact existed regarding likelihood of confusion, an essential element of a trade dress infringement claim under section

43(a). Woodsmith appeals from the judgment entered upon grant of summary judgment. We affirm.

II.

Woodsmith contends that summary judgment should not have been granted because the trial court was confronted with conflicting evidence of actual confusion and likelihood of confusion, ⁵ resulting from Meredith's publication of Projects and distribution of a direct mail subscription solicitation mailer which allegedly misappropriated the trade dress of Woodsmith and the Woodsmith mailer.

In reviewing a district court's grant of summary judgment, this court applies the same standard as the district court and views the facts in the light most favorable to the nonmovant, giving it the benefit of all reasonable inferences to be drawn from the facts. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986); Lomar Wholesale Grocery, Inc. v. Dieter's Gourmet Foods, Inc., 824 F.2d 582, 585 (8th Cir.1987), cert. denied, 484 U.S. 1010, 108 S.Ct. 707, 98 L.Ed.2d 658 (1988). Summary judgment is proper only "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986); Continental Grain Co. v. Frank Seitzinger Storage, 837 F.2d 836, 838 (8th Cir.1988). A moving party is "entitled to judgment as a matter of law" if the nonmoving party fails to make a sufficient showing of an essential element of a claim with respect to which it has the burden of proof. Id. 477 U.S. at 323, 106 S.Ct. at 2552; Johnson v. Schopf, 669 F.Supp. 291, 295 (D.Minn.1987). However, summary judgment should not be granted if a reasonable jury could return a verdict for the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986).

Summary judgment correctly results from the application of substantive law to facts established beyond reasonable controversy. In unfair competition cases, the dispute between the parties usually "centers on the interpretation to be given to the facts--not the facts themselves or the inferences that can be drawn from the facts." Burton, D., "Summary Judgment in Trademark Cases," 75 Trademarks Rptr. 497, 498-99 (1985). Summary judgment disposition is proper in such an instance.

III.

Section 43(a) creates a federal cause of action for trade dress infringement. The trade dress of a product is the total image of a product, the overall impression created, not the individual features. General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627 (8th Cir.1987). Protectable trade dress carries a three prong burden of proof for Woodsmith's claim: it must be primarily nonfunctional; ⁶ have acquired a secondary meaning (i.e., that the public has come to recognize the trade dress as associated with the plaintiff's product); and imitation of it would create a likelihood of confusion in consumers' minds as to the origin or source of the product. ⁷

Reader's Digest Ass'n, Inc. v. Conservative Digest, Inc., 821 F.2d 800, 803-04 (D.C.Cir.1987); Prufrock, Ltd., Inc. v. Lasater, 781 F.2d 129, 132 (8th Cir.1986); Truck Equip. Servs. Co. v. Fruehauf Corp., 536 F.2d 1210 (8th Cir.), cert. denied, 429 U.S. 861, 97 S.Ct. 164, 50 L.Ed.2d 139 (1976). Every product has a different threshold for confusion of origin. See Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482 (1st Cir.1981).

In Prufrock, this court cautioned that a party cannot be deemed to have a business interest capable of protection in the mere method and style of doing business. Protection of a marketing approach under section 43(a) would be inconsistent with the goals of our free enterprise system. Prufrock, 781 F.2d at 132 (citing Denton v. Mr. Swiss of Missouri, Inc., 564 F.2d 236 (8th Cir.1977)). In the instant case, Woodsmith alleges that Meredith appropriated the trade dress of Woodsmith and the Woodsmith mailer. However, the features of Woodsmith and the Woodsmith mailer that Woodsmith considers unique are functional and in common use in the magazine industry.

Each issue of Projects was three-hole punched. This format facilitated the collection of issues and storage in binders for future reference. Both magazines have twenty-four pages in each issue. Length is merely an indication of an efficient market approach to publication. Projects and Woodsmith are not printed on the same color paper. Two-color photographic processing is a common publication technique because it is less expensive. Because brown is the color of wood, it cannot be monopolized by one woodworking magazine publisher. The protective covers of the two magazines are not identical in appearance and serve the same functional purpose. The computer-enhanced two-color separation process employed by Meredith was commercially available and resulted in a superior product. Meredith's decision to publish bimonthly was economically based. The type styles utilized by Projects and Woodsmith were not unique. Woodsmith's use of easy-to-follow instructions to present material is commonplace in the instructive magazine market. Meredith's assertion that projects were built and tested in the shop amounts to an express warranty and not trade infringement. Inclusion of a materials list and cutting diagrams is standard for how-to publications. Almost all magazines of this type use detailed photographs and illustrations. Blow-ups and exploded views are not unique methods of presenting information. The use of brown three-ring binders does not constitute trade dress. The artwork in Projects (i.e., hard line ink drawings with a sans serif type face in tan shaded boxes) is admittedly employed in Woodsmith as well as other woodworking magazines, and therefore not immediately distinguishable as Woodsmith artwork. Both Projects and Woodsmith exhibited classic magazine cover designs, masthead and banner title across the top and use of a block or framed photograph. The functional format (i.e., columns of text) of a magazine does not constitute protectable trade dress. Many magazines sell back issues making...