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SIMON & SCHUSTER, INC. v. DOVE AUDIO

August 29, 1996

SIMON & SCHUSTER, INC. and WILLIAM J. BENNETT, Plaintiffs, against DOVE AUDIO, INC., Defendant.


The opinion of the court was delivered by: SCHWARTZ

 ALLEN G. SCHWARTZ, DISTRICT JUDGE:

 Plaintiffs Simon & Schuster, Inc. (S & S) and William J. Bennett ("Bennett") bring this action alleging violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), as amended, common law trademark infringement and unfair competition, and violation of the New York state anti-dilution law, § 368-d of the New York General Business Law. This matter is before the Court upon the motion of defendant Dove Audio, Inc. ("Dove") for judgment on the pleadings, pursuant to Federal Rule of Civil Procedure 12(c). For the reasons that follow, defendant's motion is denied.

 BACKGROUND

 Plaintiffs' Complaint alleges the following facts, which, for purposes of ruling on this motion, are accepted as true.

 In November 1993, plaintiff S & S published the hardcover book entitled The Book of Virtues, edited and with commentary by Bennett. Bennett developed the concept for The Book of Virtues series as a result of his extensive reading of ancient stories, fables, morality essays, and philosophical musings, together with his experience in public office, particularly as Secretary of Education under President Reagan. In Bennett's view, these materials provided an ideal means of teaching youth about virtue and morality.

 Beginning in or around 1989, Bennett, individually and later with S & S, selected, compiled and annotated hundreds of these public domain pieces to "aid in the time-honored task of the moral education of the young," as the introduction to the book explains. As originally conceived, the working title for the first book in the series was The Moral Literacy Reader: An American Parent's Guide to Ensure the Education of Character. In early 1993, plaintiffs considered a number of other possible titles, including Virtues Companions, Companions for Character and, the title that was ultimately selected, The Book of Virtues.

 The Book of Virtues has been a phenomenal success. As of August 9, 1995, the date of the Complaint, it had been on The New York Times Bestseller List for 86 consecutive weeks and sold more than 2.2 million hardcover copies. Following publication, Bennett promoted The Book of Virtues on such television programs as C-SPAN and ABC/TV's "Good Morning America" and appeared as a guest on a multitude of radio programs.

 From the outset, Bennett and S & S intended to trade upon the success of The Book of Virtues by developing, publishing, and marketing other publications and products utilizing that name and mark, such as The Children's Book of Virtues, planned for publication in October 1995. Bennett envisioned a series of educational and trade materials to promote the development of "moral literacy." Plaintiffs' plans for The Children's Book of Virtues commenced almost simultaneously with publication of The Book of Virtues. This new title was publicly announced in the S & S catalog, available in April 1995 for fall release. Plaintiffs have expanded into the educational field, publishing a textbook entitled The Book of Virtues for Young People. "The Book of Virtues" mark has also been licensed to PorchLight Entertainment for television use. A public television series entitled Further Adventures from the Book of Virtues is scheduled for broadcast beginning in the Fall of 1996, and Porchlight has announced plans to develop The Book of Virtues into an interactive series, videotape collection and interactive media project aimed at children and families. Plaintiffs have expended or plan to expend over $ 1.3 million to promote print and audio products of The Book of Virtues series through wholesale and consumer trade channels.

 Immediately upon completion of the first The Book of Virtues, plaintiffs began work on two subsequent print books in the series, The Children's Book of Virtues and The Moral Compass, which is to be sold and marketed as a companion book to The Book of Virtues. Plaintiffs have commenced marketing and promoting these two books by capitalizing on the established consumer recognition of The Book of Virtues. In addition to print advertising, S & S will promote the series in a floor display that presents The Children's Book of Virtues, The Book of Virtues, and its companion piece, The Moral Compass.

 Plaintiffs state that the theme and tone set by the mark "The Book of Virtues" has been systematically developed to acquire valuable trademark significance through their continued use of the mark on subsequent materials in the series, which currently includes books, audiobooks, compact discs, textbooks and an upcoming television series.

 The success of The Book of Virtues has been reported in the press. A June 1995 Newsweek article stated that Bennett "hit a gusher" in his The Book of Virtues. On June 8, 1995, the Washington Post referred to the upcoming The Children's Book of Virtues as "Bennett's follow up to his mega-bestseller The Book of Virtues " and noted that sequels and spinoffs of The Book of Virtues had earned Bennett approximately $ 5 million. An article in the January 17, 1994 issue of Publisher's Weekly reported that nearly every bookseller surveyed mentioned The Book of Virtues as one of the most requested books of the season. The Book of Virtues was selected by the political commentary television program The McLaughlin Group as recommended reading by its five panelists, and was featured on a specially produced bookmark, which was distributed to 5,000 booksellers and libraries. The Book of Virtues was also used by Michael Huffington in his 1994 congressional bid. Huffington aired a 30-second commercial in every California market between February 11 and 18, 1994, which focused entirely on The Book of Virtues and its importance and relevance to American society. In addition, several parodies of The Book of Virtues have been published. *fn1"

 Shortly after plaintiffs' publication of an audiobook version of The Book of Virtues, defendant Dove published and sold an audiobook entitled The Children's Audiobook of Virtues, as the first in a new Dove line called "Dove Kids" audiobooks. The subtitle of Dove's book is "A Library of Moral Learning" which, plaintiffs contend, mimics and replicates the subtitle of plaintiffs' The Book of Virtues: "A Treasury of Great Moral Stories". Plaintiffs allege that Dove adopted a new logo for its "Dove Kids" audiobooks, which consists of a child in profile reading a book, and that this logo mimics the elements of the sole cover design on plaintiffs' The Book of Virtues.

 Plaintiffs first learned of Dove's audiobook release in February 1995 through an advertisement in Publisher's Weekly and promptly demanded that Dove cease and desist from this allegedly infringing conduct and change the title of its book. *fn2" Thereafter, plaintiffs learned that Dove planned to publish its own print book entitled The Children's Book of Virtues, the identical title to plaintiffs' forthcoming book. An advertisement for that print book described it as "classic fairy tales, poems and myths to offer moral and inspirational messages." Plaintiffs strenuously objected to publication of Dove's print book.

 Plaintiffs claim that the public is likely to be confused as to the origin or source of Dove's The Children's Audiobook of Virtues and print book The Children's Book of Virtues, mistakenly believing that the Dove publications are part of plaintiffs' The Book of Virtues series, when in truth and in fact they are not. Plaintiffs state that both defendant's and plaintiffs' books are in the same genre, are available in retail outlets throughout the country, are advertised and promoted in the same manner, are sold through the same marketing channels to the same wholesale customers, and appeal to the same readers. Further, plaintiffs' and defendant's publications are sold side by side in the same morality/philosophy sections of bookstores and are in approximately the same price range. Plaintiffs allege that Dove consciously imitated and copied plaintiffs' renowned mark in an attempt to trade upon and capitalize upon plaintiffs' good will, and that Dove's adoption of a logo that is similar to the cover design of plaintiffs' The Book of Virtues is likely to contribute to public confusion between the competing works.

 Plaintiffs assert claims for relief under Section 43(a) of the Lanham Act, common law trademark infringement and unfair competition, and Section 368-d of the New York General Business Law. Following the commencement of this action, Dove consented to being preliminarily enjoined and restrained from the manufacture, publication, advertisement, distribution and sale of any audio and/or print books under the title(s) The Children's Audiobook of Virtues and/or The Children's Book of Virtues, or any other title confusingly similar to plaintiffs' title and alleged trademark "The Book of Virtues", conditioned on plaintiffs' posting a $ 500,000 bond. Defendants, however, deny liability under plaintiffs' claims. Defendants have moved for judgment on the pleadings, pursuant to Federal Rule of Civil Procedure 12(c), on the grounds that (1) plaintiffs' mark is generic and therefore not entitled to protection under the Lanham Act, (2) alternatively, plaintiffs' mark is descriptive and lacks secondary meaning, and (3) the finding of a likelihood of confusion must be, and is not, particularly compelling to outweigh defendant's First ...


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