The opinion of the court was delivered by: DUFFY
Defendants have moved for summary judgment in this action charging them with common law and statutory trademark infringements, common law and statutory unfair competition, trademark dilution, and copyright infringements. Jurisdiction is based upon 28 U.S.C. 1338(a) and (b), 15 U.S.C. 1121 and the doctrine of pendent jurisdiction.
Plaintiff, D.C. Comics, Inc. ("D.C."), publishes and is the successor in interest to copyrights on adventure stories depicting numerous comic strip characters including Batman and Green Arrow. In these adventures, Batman's secret hideout is named the "Batcave."
Plaintiff's claims of trademark infringement, unfair competition and trademark dilution rest solely upon defendants use of "Batcave" to designate their retail bookstore and mail order service. The defendants, Reel Fantasy, Inc., a New York corporation, and its president, Frank C. Verzyl, own and operate a chain of retail bookstores in the metropolitan area, and a related mail order business. Since 1977, both of defendants' enterprises have operated under the service mark Batcave Bookstores. Defendants' main office is located at 120 West 3rd Street, New York, New York, where a Batcave bookstore is maintained. In its complaint, plaintiff seeks a permanent injunction barring defendants' further use of "Batcave" as a service mark, defendants' abandonment of its service mark application and damages.
The law of trademark infringement is "but a part of the law of unfair competition," and thus I will apply the "same test ... in determining each claim." American Footwear Corp. v. General Footwear Co., 609 F.2d 655 (2d Cir. 1979), cert. denied, 445 U.S. 951, 100 S. Ct. 1601, 63 L. Ed. 2d 787 (1980). The crucial issue in actions of this kind is "whether there is any likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused as to the source of the goods in question." Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 966 (2d Cir. 1981); Mushroom Makers, Inc. v. R. G. Barry Corp., 580 F.2d 44, 47 (2d Cir. 1978), cert. denied, 439 U.S. 1116, 99 S. Ct. 1022, 59 L. Ed. 2d 75 (1979).
In the instant situation, where plaintiff is attempting to block defendants' use of the Batcave mark for its comic book store, likelihood of confusion is determined as a function of several variables, including the strength of plaintiff's own mark, the degree of similarity between the two marks and the two designated objects, actual confusion, defendants' good faith, the sophistication of the buyers, and the likelihood that D.C. Comics will "bridge the gap" and enter into the retail bookselling and mail order service business. McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1130 (2d Cir. 1979); Polaroid v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820, 82 S. Ct. 36, 7 L. Ed. 2d 25 (1961).
In addition, since opposed interests are "weighed in scales of conscience and fair dealing," Polaroid v. Polarad Electronics Corp., supra, 287 F.2d at 497-98, another factor in determining whose interests will prevail is "the relative harm which the parties would experience as a result of grant or denial of an injunction." Procter & Gamble Co. v. Johnson & Johnson, Inc., 485 F. Supp. 1185, 1195 (S.D.N.Y.1979), aff'd, 636 F.2d 1203 (2d Cir. 1980).
I. Trademark Infringement
Plaintiff claims that defendants' use of "Batcave" infringes upon two trademark interests: its registered "Batman" trademark and its alleged common law trademark in "Batcave."
There is no doubt that "Batman" is a validly registered "arbitrary or fanciful mark" and thus entitled to protection. McGregor-Doniger, Inc. v. Drizzle, Inc., supra, 599 F.2d at 1132. However, "Batcave" bears no similarity to "Batman" other than a common use of the "Bat" prefix as a descriptive term. Plaintiff does not allege, and this court does not find that the word "Bat" has acquired a secondary meaning which would automatically link any word it modified with the Batman character. Indeed, commonly used words such as "batboy" have no connection to the Batman character.
There is also a wide gap between plaintiff's use of "Batman" as the name of a masked fictional character and defendants' use of "Batcave" as the name of a store. Plaintiff's right to trademark protection in "Batman" cannot be found to extend so far as to prevent defendants from using a dissimilar mark for a dissimilar purpose.
Plaintiff also claims an allegedly valid common law trademark in "Batcave" as a symbol of Batman's hideout. "Batcave" as used by the plaintiff is at most a suggestive mark. However, although the name suggests the use of the cave as Batman's hideout, its name originated as a description of a cave inhabited by bats. Exhibit 2, plaintiff's supporting affidavits. Thus plaintiff must show that the "Batcave" has established a secondary meaning before it can claim ownership of the mark. McGregor-Doniger, Inc. v. Drizzle, Inc., supra. Secondary meaning establishes that the "primary significance of the mark in the minds of the consumers is the identification of the producer, not a description of the product." American Footware Corp. v. General Footware Co., supra, 609 F.2d at 663. Mere findings of a marks' distinctiveness is insufficient to support a finding of secondary meaning if the mark does not identify plaintiff as the source of the goods or service. Id. Plaintiff has presented no evidence that the mark "Batcave" is immediately associable with the producer of Batman.
Even assuming that secondary meaning and a valid common law trademark were established, plaintiff has failed to show that defendants' use of "Batcave" has in fact infringed upon that mark. Defendants' use of the mark in its retail book business bears little if any resemblance to plaintiff's use of the "Batcave" mark as either Batman's hideout or as the name of a column in its comic magazines, or as a dollhouse.
Furthermore, plaintiff has not alleged any instances of actual confusion as to "the source of the goods." An affidavit was presented as evidence that a consumer associated the store, which indeed does sell comic books, with Batman. However, "one can capitalize upon a market or fad created by another provided that it is not accomplished by confusing the public into mistakenly purchasing the product in the belief that the product is the product of the competitor." American Footware Corp. v. General Footware, supra, 609 F.2d at 662. This case deviates from the usual trademark cases involving dissimilar uses in that defendants are using the mark to designate a store, not a product. Defendant is not a competitor of plaintiff but a retailer of plaintiff's products. The issue here is not whether purchasers will buy products correctly believing them to be plaintiff's but whether purchasers will buy the D.C. products believing that plaintiff sponsors defendants' store. There is no evidence substantiating D.C."s allegation that a consumer was likely to believe that the store was in fact an official "Batman" store. Indeed, defendants state, and plaintiff does not deny, that defendants do not specialize in "Batman" paraphernalia; that D.C. Comics is only one of a number of publishers whose magazines and comics defendants sell, and that defendants also sell movie memorabilia and collectibles which have no link at all to Batman.
A potential purchaser is not vulnerable to deception in this case. It appears that the ordinary customers who are interested in the specialty items the defendants sell will recognize that the Batcave Bookstore stocks comic magazines of various publishers and thus realize that no one publisher sponsors defendants' store. Those attracted to the store under the mistaken belief that ...