Trade Dress Protection:
How to Tell a Book by its Cover
By Attorney Lloyd J. Jassin
What do the COCA-COLA bottle
shape, Campbell's soup label, and dust jacket of Merriam-Webster's
New Collegiate Dictionary have in common? All three are examples
of distinctive product packaging known in trademark-speak as "trade dress."
In this article we discuss:
Products, like people, have personality
-- and a winning personality is a trademark owners most valuable asset.
A key element of a product's personality, or brand image, is its packaging.
Under trademark law, the total commercial image of a product is known by
the term "trade dress." Trade dress refers to the manner in which a product
-- or place of business -- is "dressed up" to go to market. It's what differentiates
one brand of cola from another, or, in the case of Merriam-Webster, Inc.
v. Random House (1994), as illustrated below, one "college" dictionary from
Protection for Book Jackets
In a battle of words that began
in the reference section of your local bookstore and ended up in the U.S.
Court of Appeals for the Second Circuit, two titans of dictionary publishing
duked it out over the use of name WEBSTER'S COLLEGIATE/WEBSTER COLLEGE and
similar bright red dust jackets.
In 1991, Merriam-Webster
("M-W"), the market leader in college dictionaries, sued Random House
("RH") after RH changed the name of its dictionary (from RH College
Dictionary) to Random House Webster's College Dictionary.
In addition, RH adopted a trade dress similar to Merriam-Webster's
Ninth New Collegiate Dictionary. Among the similarities between
the two competing works were:
Bright red dust jackets
The use of the generic
word "Webster's" in combination with the descriptive term
"College" or "Collegiate"
on the cover
The name "Webster's" in
large white vertical letters on the spines.
Concluding RH acted with malice,
a six-person jury awarded M-W over $4 million in damages and granted it
a permanent injunction preventing RH from distributing its dictionary. Downplaying
RH's "bad faith" attempt to capitalize on M-W's trade dress, the Court of
Appeals reversed the decision of the District Court, and vacated the injunction
and damages award.
In finding there was no likelihood of consumer confusion (the test for trade dress infringement),
the appeals court placed special emphasis on the conspicuous use of the
publishers' names and logos (including M-H's own distinctive "bull's eye"
logo) which served to distinguish the two dictionaries. The court also
noted that M-H had not objected to red jacketed college dictionaries published
by other houses. In addition, the court found that the relative sophistication
of dictionary purchasers cut against finding a likelihood of confusion.
The court was unconvinced that dictionary purchasers -- whose motto might
be "We never guess; we look it up" -- could be easily fooled. Further,
the court noted the name "Webster's" featured on the spines was generic
and therefore possessed no commercial magnetism.
While "innocent" intent is
no defense to either trademark or trade dress infringement, "bad faith"
in some jurisdictions may either prove likelihood of confusion or raise
an inference of likelihood of confusion. What is significant about the
Merriam- Webster decision is the court's failure to give "bad faith" much
weight in the standard trade dress infringement analysis.
Moreover, in arriving at
its decision, the appeals court apparently dissected the differences in
trade dress as opposed to considering the total appearance. This is a
departure from traditional trade dress analysis that takes a broad view
of the combination of a product's color or color combinations, texture,
design, graphics, typefaces and marketing techniques.
Dress Is Protectable
Trade dress is governed by the
same set of laws that protects unregistered trademarks. Like a traditional
trademark, trade dress is a form of commercial shorthand that provides a
"source-associating cue" for the unthinking purchaser. However, unlike traditional
trademark law that protects words or logos, trade dress law protects the
total packaging and design of a product.
To be protectable, trade
dress must be inherently distinctive or possess "secondary meaning" (the
public associates the packaging with a single source). Further, the trade
dress must be non-functional.
As a rule, for trade dress
to be protected, it must be instantaneously identifiable in the mind of
the purchaser. This is usually the function of strong sales over a long
period, supported by consistent advertising, promotion and publicity.
Likelihood of Confusion
Protectable trade dress is infringed
when a "likelihood of confusion" exists between defendant's trade dress
and plaintiff's trade dress. The similarity between trade dress is gauged
by the "ordinary buyer" standard. Would "unthinking" buyers believe both
products came from the same source? If the same overall impression leads
the ordinary buyer to that conclusion, infringement probably exists.
Among the factors a court
will weigh to determine likelihood of confusion are:
The strength or distinctiveness
of the trade dress
The intent to copy and
"cash in" on plaintiff's reputation and goodwill
The similarity in products
Evidence of actual confusion
Degree of care exercised
The area, manner and degree
of concurrent use.
What Merriam-Webster shows us
is that trade dress cases are decided on an ad hoc basis. That's
Latin for inconsistent. There are no bright-line rules. Nonetheless, here
are some general guidelines for proper trade dress use:
Look for the Label: The prominent display of a well- known company's name or logo is often
a deciding factor in reducing likelihood of confusion. However, there
is no guarantee that such a "disclaimer" will work if copying goes beyond
common or functional features.
For example, in Simon
& Schuster v. The Putnam Berkley Group, Inc. (DCNY, 1994), a federal
District Court, on facts similar to the dictionary case, halted publication
of books with covers substantially similar to the well-known V.C.
Andrews mass market series. While not all the components of the two
covers were similar, the court found that an ordinary buyer of the
books would be justified in concluding both titles came from the same
publisher. Unlike the dictionary case, Putnam's bad faith played an
important role in the court's decision. Interestingly, the court rejected
Putnam's argument that prominent display of the authors' names negated
Confusing Similarity: Confusing similarity is the test for trademark infringement. Confusion
can be inferred from many things, including defendant's good or bad
faith in adopting plaintiff's mark, the high degree of care used by
purchasers in making their purchasers, proximity of the products, evidence
of actual confusion, etc. However, if a word mark is highly descriptive
(e.g., "Webster's Collegiate"), a court may downplay similarities in
For example, while "Webster's
Collegiate" was deemed a valid -- unregistered -- trademark, the scope
of protection was very limited due the generic/descriptive ("Webster's"
- "Collegiate") nature of the word mark. Similarly, the "distinctive"
red jacket that RH appropriated was a weak source identifier since
red was a common color for college dictionaries. Creativity counts!
Look Before You Leap: Meet with your designer and marketing department when new word marks,
colophons or jacket designs are being created or considered for adoption
and use. Ask your designer where he or she "got" their idea. Before
doing a full trademark search to find out if there are prior users,
do a quick "knockout" search to eliminate obvious conflicts. For publishers
considering new word marks, R.R. Bowker's Literary Marketplace is an excellent in-house source for locating potential problems.
Because a professional
trademark research report needs interpretation, you'll need a trademark
attorney to decode the results. View this as the one-time cost of
insurance. It is always less costly to make changes in a mark -- or
trade dress -- in its early stages of development than later.
The Whole Is Greater
Than the Sum of the Parts: A key point to remember when designing
a trademark or adopting a product configuration that will serve as a
source identifier, is that the overall image, rather than the details
will determine whether there is likelihood of confusion. That is, the
test for infringement is whether an ordinary buyer -- not looking for
the subtle differences -- would believe both products came from the
Be Consistent: A
trademark is a word, design or "combination" of elements that identifies
the source of one company's goods and distinguishes it from others.
When launching a new series (and series titles are good trademark candidates),
or adding titles to an existing series or product line, make certain
you use a consistent format. Don't vary the size, style, color or color
combinations, and graphic elements significantly. If any changes need
to be made in a series' overall look, introduce them gradually. Use
terms consistently. In the world of trademark law, familiarity (helped
by strong sales, publicity and consistent marketing) breeds protectable
trademark rights, not contempt. Like good advertising, a protectable
trademark triggers an immediate psychological association with a particular
source in the purchaser's mind.
unregistered marks -- including distinctive trade dress -- are protected
under the common law of unfair competition and federal trademark statute,
trademark registration offers substantial benefits. A federal trademark
registration offers prima facie evidence of a registrant's exclusive
right to use the mark or trade dress. Registration also shifts the burden
to the second comer to challenge the registration's validity. After
five years, provided certain formalities are followed, a registrant's
rights in the mark becomes incontestable. Most important, a federal
registration is constructive notice of your ownership claim and provides
nationwide priority over subsequent users.
Act in Good Faith: While RH may have "gotten away with it," intentional copying by a second
comer generally raises the inference of likelihood of confusion.
This article represents copyrighted material and may only be reproduced
in whole for personal or classroom use. It may not be edited, altered, or
otherwise modified, except with the express permission of the author. This
article discusses general legal issues of interest and is not designed to
give any specific legal advice pertaining to any specific circumstances.
It is important that professional legal advice be obtained before acting
upon any of the information contained in this article.
LLOYD J. JASSIN is a New York-based publishing and entertainment
attorney in private practice. He is co-author of the bestselling Copyright
Permission and Libel Handbook: A Step- by-Step Guide for Writers, Editors
and Publishers (John Wiley & Sons, Inc.), available at bookstores or
at www.copylaw.com. Mr. Jassin has written extensively on negotiating contracts
in the publishing and entertainment industries, and lectures frequently
on contract and copyright issues affecting creators. He is counsel to the
Publishers Marketing Association and Vice Chair of the Small Press Center.
He may reached at Jassin@copylaw.com or at (212) 354-4442. His offices are
located at 1560 Broadway, Suite 400, New York, NY 10036.
Adapted from the Copyright Permission & Libel Handbook (John Wiley
& Sons), by Lloyd J. Jassin and Steven C. Schechter.
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