The opinion of the court was delivered by: PIERRE N. LEVAL
Findings of Fact and Conclusions of Law
PIERRE N. LEVAL, U.S.D.J.
This is a suit for trademark infringement and false designation of origin in violation of Sections 32(1) and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114(1) & 1125(a), as well as unfair competition and unjust enrichment under New York state common law, and trademark dilution under New York General Business law § 368-d. The defendant acknowledges imitating prominent elements of plaintiffs' traditional magazine cover design but contends that it used plaintiffs' design for humorous commentary in a constitutionally protected manner, and that its use did not cause likelihood of confusion or other injury to plaintiffs' mark, so that it is not liable under any of the theories of the complaint.
The parties agreed to submit the issue of liability for final judgment on the basis of a written trial record. The court's findings of fact and conclusions of law are set forth below.
Plaintiff Yankee Publishing Incorporated ("Yankee") has published The Old Farmer's Almanac (the "Almanac") since 1941; the Almanac has been published annually since 1792. The Almanac is a venerable symbol of Americana. It contains folksy material of perennial interest including weather forecasts, astrological predictions, stories of fact and fancy, recipes, tide tables, timetables, and advertisements for homespun products.
Representative articles in the 1991 edition
are "How To Have a Baby," offering practical folk tips on how to conceive,
select the sex of your child,
and ease labor pains;
"Turn Over, Dear, for God's Sake, Turn Over!," everything you always wanted to know about snoring;
"Praise the Lard and Pass the Pie Crust," an ode to the "forgotten shortening";
a guide to "Offbeat Museums,"
a "Gestation and Mating Table"; and pot pie recipes.
As a matter of policy, the Almanac rejects advertising for liquor and tobacco products. It runs ads for "Vitasex" tablets, which are guaranteed to "improve your desire and performance . . . and win the desire of your mate regardless of age, or age differences"); and for "Sex-Alert" tablets, "the supplement that makes any relationship exciting again!" Yankee contends that the contents of the 1991 edition "reflect the traditional homey and folksy values the Almanac has come to represent over the years -- i.e., a slice of Americana."
The Almanac has an annual distribution of approximately five million copies, sold throughout the United States, primarily through newsstands, major bookstore chains, and mail order. Approximately four percent of the 1990 edition was distributed at newsstands in New York State (less than two-tenths of one percent in New York County).
Each year since 1852, the Almanac has featured the same cover design (the "Cover Design"). The Almanac's Cover Design is registered with United States Patent and Trademark Office. It is beyond dispute that the Cover Design is a distinctive, widely recognized mark (or trade dress) that is widely associated with the Almanac.
The Cover Design has a yellow background framed by a red and white border. At the top of the frame is a red ellipse, framed in white, in which the edition is identified in white letters. The Cover Design is constructed around a bucolic motif; each corner of the cover features an agrarian seasonal vignette (farmers plowing the fields in spring, piling up hay in the summer, harvesting apples in the autumn, and milking cows in winter); ears of grain hang from an ornate design framing the seasonal vignettes; and a variety of fruits, produce, grains and flowers are intertwined with the ornate design encircling the bold-faced title in the center of the cover. The title states: THE OLD FARMER'S 1991 ALMANAC BY ROBERT B. THOMAS." On either side of the title are two small portraits in oval frames -- one of Benjamin Franklin, the other of Robert B. Thomas, the Almanac's founder. Running along the left and right side of the cover are sentences running vertically up the page announcing "THE ORIGINAL ROBERT B. THOMAS FARMER'S ALMANAC, PUBLISHED EVERY YEAR SINCE 1792," and "ALSO FEATURING ASTRONOMICAL TABLES, TIDES, HOLIDAYS, ECLIPSES, ETC."
Co-plaintiff International Licensing Management, Inc. ("ILM") is the exclusive merchandise licensing agent for the Almanac's trademark.
Currently, ILM has licensed variations of the trademark and Cover Design to over twenty licensees. ILM's licensees incorporate variations of the Cover Design, together with the Almanac trademark, in their products, or use variations on their packaging and labeling. The licensed products -- including such items as gardening gloves, flower and vegetable seeds, garden hoses, decorative tins, ironing board covers, placemats, and hot breakfast cereals -- are household products that have a natural affinity with the homespun image of the Almanac. The licensees' variations on the Cover Design retain many of its central design features -- such as the mark "The Old Farmer's Almanac" -- and its overall design spirit. Some of the licensees variations on the Cover Design encompass product-specific themes. For example, the seed packets use a flower-oriented adaptation of the Cover Design. Certain licensees use seasonal themes -- including a Christmas theme featuring Santa Claus -- in connection with their products. Three of the licensees of the Almanac are publications: a PAGE-A-DAY TM calendar, a large-print edition, and a "Best Of" book.
Defendant News America Publishing Incorporated ("News America") is the publisher of New York magazine. New York, which has been published continuously since 1968, is a successful, stylish weekly magazine that reports on news, fashions, the arts, theatre and film, elegant merchandise, trends and tastes, concentrating on the City of New York. For the six months ended December 31, 1990, the average paid circulation of New York was approximately 436,110 copies. Over 72% of New York's readership lives in the New York metropolitan area. New York includes such regular features as "HOT LINE - The Tops in Town This Week," a selection of videos, restaurants, music, theater, art, movies, tastings and books of the week; "BEST BETS," which is described as "The best of all possible things to buy, see and do in the best of all possible cities"; the "Intelligencer," a gossip column; and the CUE guide to "movies, theaters, art, music, dance, restaurants, children's events, nightlife, radio and television." New York, which is known for its coverage of the New York cultural scene, publishes reviews of restaurants, movies, television theater, dance, and music. New York publishes advertising for cigarettes and alcoholic beverages, as well as for upscale advertisers like Saks Fifth Avenue, Barneys New York, Bergdorf Goodman, Mercedes Benz, Yves Saint Laurent, Tiffany & Company, Charles Jourdan, Coach, Cole Haan, Absolut Vodka, and Chivas Regal.
New York has a distinctive logo and title consisting of its name in large bold semi-cursive distinctive type across the top one-quarter of the cover.
New York's 1990 Christmas Gift Issue
Robert Best, New York's design director, and Edward Kosner, New York's Editor and president, were responsible for selecting the cover and theme for the 1990 Christmas gift issue. In view of the slowing economy, and the passing of the self-indulgent, free-spending 1980s, they decided to point whimsically to "thrift," as a new social value. As Best explained in an affidavit, the thrift theme was intended to have satiric spin:
Of course, our use of the "thrift" theme was "tongue-in-cheek." Although some of the gifts we included in the [1990 Christmas issue] were inexpensive, none of them were the type of utilitarian, prosaic gifts that are typically associated with the meaning of the word "thrift." The gifts in the [1990 Christmas issue], as with the gifts in all our prior holiday issues, were stylish, sophisticated, attractive, and maybe even frivolous.
The whimsical turn toward thrift as a new social value for its readers was to be communicated through a joking reference to the Old Farmer's Almanac. The Almanac is associated with rusticity, thrift, homespun good sense, homely time-honored adages, practicality, permanence, and rejection of the new-fangled trendy changes -- all values diammetrically opposite to the frivolous, trendy, inconstant, stylish, changeable, urbane glorification of consumption that characterizes the message of New York.
The joke, highlighting these opposites, was developed in the following fashion. The issue's cover was designed as an obvious takeoff on the famous traditional cover design of the Almanac, but with many changes. Among them, the Almanac's title did not appear, and Mr. and Mrs. Santa Claus ("Saint Nicholas") were substituted in the side roundels for Ben Franklin and Almanac founder Robert B. Thomas, while jolly Christmas scenes -- most suggesting extravagance and consumption -- were substituted for the Almanac's dour images of farm work. All this was shown below the familiar name New York, set forth with the usual boldness, in its usual place, large size, and distinctive typeface. (New York's cover and the 1991 Almanac cover are reproduced in the Appendix.)
Within the magazine, the section entitled "The 1990 Christmas Gifts Almanac" begins by focusing on thrift. It opens with a biblical quotation: "It is better to give than to receive." The first eight pages are devoted to lower-cost gifts for "$ 10 and under," "$ 25 and under," "$ 50 and under," and "$ 100 and under." Each of these categories is introduced by a thrift-honoring quotation -- two of them from Ben Franklin (who is celebrated on the cover of the Almanac). The $ 10 page quotes Franklin, "A penny saved is a penny earned." On the $ 25 page, Cicero is quoted: "Men do not realize how great an income thrift is." The $ 50 page quotes Samuel Johnson, "A man who both spends and saves money is the happiest man, because he has both enjoyments." And the $ 100 page returns to Franklin for his virtuous exhortation, "Waste neither time nor money, but make the best use of both." Another page quotes a Scottish proverb, "He that has not silver in his purse should have silk on his tongue."
From there, the "save-spend" dilemma is elaborated by the display of gift suggestions that tend toward the frivolous. Notwithstanding the thrifty message of the first pages, prices thereafter escalate, and the theme of the mottos changes from thrift to extravagance and self-indulgence. One page quotes Oscar Wilde, "My tastes are very simple, I only want the best." Other pages offer: "Cooking is like love. It should be entered into with abandon or not at all." "When the average man says he loves greens, he is speaking of a golf course." "A gold rush is what happens when a line of chorus girls spot a man with a bankroll." Frivolous, expensive gifts and inexpensive, thrifty ones are placed side by side. A $ 15 pail of golf tees sits beside a $ 150 silver golf pillbox. A wooden block globe puzzle of the world and its endangered species ($ 30) sits on a glamorous glass and galvanized steel globe table ($ 975).
Except for its cover and the introductory page of the Christmas gifts feature which repeats the cover, the issue of 252 pages includes no reference to the Almanac. The spine of the issue of New York reads simply "Christmas Gifts," "New York," "December 3, 1990."
Plaintiffs' Cause of Action
The complaint alleges that defendant's very recognizable takeoff on the pictorial elements of the Almanac's well-known traditional cover design violates plaintiffs' trademark rights under federal and state law. The crux of trademark infringement is whether the unauthorized use "is likely to cause confusion, or to cause mistake, or to deceive . . . ." 15 U.S.C. § 1114(1). Liability for trade dress infringement under Section 43(a) of the Lanham Act also hinges on proof of likelihood of confusion. See 15 U.S.C. § 1125(a); Two Pesos, Inc. v. Taco Cabana, Inc., 120 L. Ed. 2d 615, 112 S. Ct 2753, 2758 (1992). Similarly, under New York state unfair competition law the principal inquiry is whether the public is likely to be confused. See Perfect Fit Industries, Inc. v. Acme Quilting Co., 618 F.2d 950, 953 (2d Cir. 1980). Plaintiffs contend that defendant's use of the Cover Design caused likely confusion in the marketplace, as well as dilution of the value of plaintiffs' trademark.
New York defends on two grounds:
First, it contends that its cover reference to the Almanac did not cause trademark confusion in the marketplace. Defendant contends it is obvious that New York's imitation of the elements of the Almanac's cover design is a joke or parody; that magazine consumers who see it would instantly recognize it as a joke; and would not be confused into believing that they were buying the Almanac, that the Almanac and New York Magazine had somehow joined forces, or that New York had become a licensee of the Almanac.
Second, defendant argues that, even if some marketplace confusion occurred, where the confusion arises from artistic expression, parody, comedy, or commentary of a type protected by the First Amendment, courts must balance the interest of free expression against the harm of marketplace confusion. Here, it argues that the constitutionally protected interest far outweighs any minor injury to plaintiffs' trademark rights.
I find for the defendant on both of these theories. The first question -- likelihood of consumer confusion -- is a close one. On first impression, New York's cover is unquestionably similar to plaintiffs' Cover Design and is clearly suggestive of the Almanac. I find, however, that New York made it sufficiently clear that the obvious reference to the Almanac was a joke and that New York made clear its own identity by bold prominent display of its title, so as to dispel any substantial likelihood of real consumer confusion. Furthermore, even if there was some confusion as to source or origin, it was relatively minor and was far outweighed by First Amendment considerations protecting the right of commentary and artistic expression.