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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 another.

 

Trade Dress 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:

  1. Bright red dust jackets

  2. The use of the generic word "Webster's" in combination with the descriptive term

  3. "College" or "Collegiate" on the cover

  4. 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.

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When Trade 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.

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Finding 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:

  1. The strength or distinctiveness of the trade dress

  2. The intent to copy and "cash in" on plaintiff's reputation and goodwill

  3. The similarity in products

  4. Evidence of actual confusion

  5. Degree of care exercised by buyers

  6. The area, manner and degree of concurrent use.

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Protecting Trade Dress

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 confusion.

     

  • 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 trade dress.

    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 same source.

     

  • 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.

     

  • Registration: While 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.

NOTICE: 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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DISCLAIMER: 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.

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Co-author of The Copyright Permission & Libel Handbook (John Wiley & Sons)


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