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SIMON & SCHUSTER, INC. v. DOVE AUDIO

July 11, 1997

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


The opinion of the court was delivered by: SAND

 SAND, J.

 Plaintiffs Simon & Schuster, Inc. ("S&S") and William J. Bennett are the publisher and editor, respectively, of The Book of Virtues and related print and audiobook publications. Defendant Dove Audio, Inc. ("Dove") is the publisher of an audiobook, The Children's Audiobook of Virtues. When this action was filed, Dove also intended to publish a print book, The Children's Book of Virtues. Plaintiffs contend that Dove is liable for violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), common law trademark infringement and unfair competition, and violation of the New York anti-dilution statute, N.Y. Gen. Bus. Law § 368-d. The case is before the Court for findings of fact and conclusions of law after a bench trial.

 PROCEDURAL BACKGROUND

 Plaintiffs commenced this action on August 9, 1995. Pending final adjudication, Dove consented to be enjoined "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 under any other title confusingly similar to plaintiffs' title and alleged trademark 'The Book of Virtues.'" Preliminary Injunction Upon Consent dated August 14, 1995. A condition of Dove's consent was that plaintiffs post a bond of $ 500,000 as surety for the preliminary injunction.

 Dove subsequently moved for judgment on the pleadings, pursuant to Fed.R.Civ.P. 12(c). Dove contended, among other things, that plaintiffs' trademark "The Book of Virtues" is generic and therefore not entitled to trademark protection. Plaintiffs argued in opposition that the "The Book of Virtues" is a suggestive mark. Judge Allen G. Schwartz, to whom this case was then assigned, denied Dove's motion. See Simon & Schuster, Inc. v. Dove Audio, Inc., 936 F. Supp. 156 (S.D.N.Y. 1996) (hereinafter, the "Opinion"). Judge Schwartz held that plaintiffs' mark "does not fall into the generic category." Id. at 161. Judge Schwartz also found that plaintiffs' trademark "does not rise to [the level of a suggestive mark], but rather falls into the category of descriptive marks." Id. at 162.

 Dove subsequently filed a motion for reargument and clarification of the Opinion. Dove inquired whether it would be precluded from introducing evidence of the generic nature of plaintiffs' mark at trial. Judge Schwartz denied Dove's motion for reargument, holding that

 
in its Opinion, the Court rejected defendant's argument that plaintiffs' mark is generic and found that, as a matter of law, "The Book of Virtues" mark is not generic. Accordingly, defendant is precluded from introducing evidence at trial to support its theory that plaintiffs' mark is generic; however, defendant is not precluded from introducing evidence showing that plaintiffs' mark lacks secondary meaning.

 Order dated December 31, 1996, at 1-2. Judge Schwartz noted that, in reaching the earlier decision, "the Court considered certain factual materials submitted to the Court by defendant." Id. at 1 n.1.

 The case was subsequently transferred to the docket of the undersigned for trial. A bench trial commenced on January 27, 1997, and concluded on February 5, 1997. The following constitutes the Court's findings of fact and conclusions of law, pursuant to Fed.R.Civ.P. 52(a).

 I. The Parties

 S&S is a New York corporation engaged in the business of publishing with its principal place of business in New York City. SF 1. Bennett, a citizen and resident of the state of Maryland, is a well-known public figure who has served as Secretary of Education and Director of the Office of National Drug Control Policy. SF 2.

 Dove is a California corporation engaged in the business of publishing with its principal place of business in Hollywood, California, and an office in Williamsville, New York. SF 3.

 II. Plaintiffs' Publications and Adoption of the Mark

 In November 1993, S&S published a hardcover print book entitled "The Book of Virtues" and subtitled "A Treasury of Great Moral Stories." SF 4. The book consists of an introduction by Bennett and ten chapters with headings such as "Self-Discipline," "Courage," "Honesty," and "Faith." Each chapter begins with a two-page commentary written by Bennett and includes a selection of stories, essays, poems, and other literary material, commented upon and edited by Bennett. The book "is intended to aid in the time-honored task of the moral education of the young." William J. Bennett, The Book of Virtues 11 (1993); Bennett Aff. P 10.

 Bennett chose the title "The Book of Virtues" by scribbling long lists of potential titles "until this one evolved. Immediately, I knew it was the right title: it conveyed my message, it stood out, it was distinctive, and it was effective and yet interesting." Bennett Aff. P 14. He also testified that he considers himself "pretty well read" in philosophical literature, and he acknowledged that, before selecting the title, he had either read or was familiar with a number of philosophical tracts that have the word "virtue" in their titles. Tr. 15-18.

 The Book of Virtues proved to be a tremendous commercial success. It reached the number one position on The New York Times best-seller list on January 16, 1994, and remained on that list for a total of 88 weeks. SF 8. The Book of Virtues also appeared on best-seller lists in USA Today and Publisher's Weekly. Martin Aff. P 6. To promote The Book of Virtues, Bennett embarked on a national speaking tour, including numerous national television and radio appearances. SF 12, 27. By February 1994, four months after publication, the book was in its twelfth printing with 547,000 books in print. Overall, S&S has sold nearly 2.2 million hardcover copies since the book's publication. SF 7; JX 42. The book was an alternate selection for "The Book of the Month Club" and was advertised extensively in The New York Times, The Washington Post, The Los Angeles Times, and other national publications. SF 8; Martin Aff. P 24.

 Prior to the publication of The Book of Virtues, Bennett intended to publish a children's book entitled The Children's Book of Virtues, and he discussed that plan with his editor at S&S. SF 17. To date, plaintiffs have sold over 15 book products under the mark "The Book of Virtues" or a closely similar title, including the following hardcover books: The Children's Book of Virtues (published October 1995), an illustrated version of The Book of Virtues designed for very young children; The Moral Compass (published October 1995), a companion volume to The Book of Virtues ; and The Book of Virtues for Young People (published March 1995), an educational reader published by an S&S affiliate for the school and library market. SF 4, 16, 19-22. S&S has also published five audiobooks: The Book of Virtues, Vol. I and The Book of Virtues, Vol. II (published May 1994 and November 1994, respectively); The Children's Book of Virtues (published April 1996); The Moral Compass (published September 1995), and a compact disc entitled The Children's Book of Virtues Audio Treasury (published October 1995). *fn2" SF 14, 18-19.

 The Book of Virtues and its related products have received substantial attention in the press, which has published numerous articles discussing the commercial success of the products as well as their identification with Bennett. Upon its release in November 1993 and in the following year, The Book of Virtues was reviewed in a wide variety of publications. JX 35. On December 20, 1993, Publisher's Weekly reported a retailer as saying "the book we can't get that everyone is screaming for is The Book of Virtues." JX 32. The book was included in the book section of New York magazine's "180 Best Christmas Gifts" in December 1993. SF 9. On March 7, 1994, a full-page essay in Time recounted the book's commercial success and popular appeal and concluded that "the Bennett book ought to be distributed, like an owner's manual, to new parents leaving the hospital." JX 35. On June 13, 1994, Newsweek featured a cover story entitled "The Politics of Virtue: The Crusade Against America's Moral Decline," with caricatures of Bennett, Hillary Clinton, and Peggy Noonan on the cover. The Newsweek article stated that The Book of Virtues "remains hot beyond expectations," referred to Bennett as "a cottage industry of character education," and discussed his plans for a sequel, textbook versions, and a television series. SF 10; Bennett Aff. P 24; JX 103. The Book of Virtues has also played a role in California and national politics. The book was featured in a 30-second campaign commercial which aired in California in 1994 for Representative Michael Huffington, a California Republican then running for the Senate.

 Media attention continued in 1995 and 1996. In July 1995, The New Yorker reported that some of Bennett's friends refer to his "multimillion-dollar industry" as "Bennett, Inc." and that "his writings, and a heavy schedule of speaking engagements . . . have transformed Bennett into a leading voice of the force that is driving American politics right now -- the national hunger for a moral society." JX 37. An article headlined "The Chairman of Virtue, Inc." appeared in the September 16, 1996, issue of Time magazine, which reported the "88-week ride on The New York Times best-seller list" of The Book of Virtues, which "spawned two profitable sequels and a cartoon show . . . on PBS." JX 103. The television series itself has received substantial media coverage. JX 108.

 Plaintiffs' mark "The Book of Virtues" is currently an unregistered trademark, although plaintiffs are attempting to register it with the Patent and Trademark Office ("PTO"). On January 23, 1997, the PTO approved the mark "The Book of Virtues" for publication in the Official Gazette in the categories for print and audio books without requiring proof of secondary meaning, PX 13, Tr. 127-131, a step which indicates that a PTO trademark examiner has deemed the mark to be a suggestive mark. Defendant intends to file an opposition with the PTO's Trademark Trial and Appeal Board. Tr. 131.

 Bennett has received numerous requests to license the mark "The Book of Virtues" for such diverse products as porcelain dolls, television series, motion pictures, public radio, animated videos, multimedia children's series, calendars, and apparel. SF 28. Bennett has granted only a few such requests. See, e.g., SF 13; Bennett Aff. P 36; JX 24. He has licensed the mark to Porchlight Entertainment, Inc. ("Porchlight") for "Adventures From The Book of Virtues," an animated public television series for children which began airing in September 1996. SF 62-64. Videos of the first six episodes are available for sale to the public under that name and mark. SF 64. With Bennett's approval, Porchlight has sublicensed the right to sell t-shirts and certain novelty items associated with the television series, and Porchlight is negotiating with an additional 15 to 20 prospective licensees. See Bennett Aff. P 34, SF 68-70.

 Bennett retains full control and approval rights for the "Adventures From The Book of Virtues" television series and the products licensed by Porchlight. Bennett Aff. P 35. Bennett has exercised similar control over the content of The Children's Book of Virtues and the related calendar. Rosen Aff. P 5. Plaintiffs have actively policed unauthorized uses of the mark "The Book of Virtues." Rayman Aff. P 22; JX 50-52, 97.

 III. Defendant's Publications and Adoption of the Mark

 In the late summer of 1994 *fn3" , Michael Viner, the president of Dove, announced to his staff and the staff of Dove's distributor his plan to publish, in early 1995, an audiobook entitled The Children's Audiobook of Virtues under the "Dove Kids" imprint. SF 34; Gilbert Aff. P 7. Viner was solely responsible for selecting the title for The Children's Audiobook of Virtues. SF 38. Viner also planned to release a companion print book, The Children's Book of Virtues, at or about the same time. Viner Aff. P 10; Gilbert Aff. P 20. Only the audiobook was released as scheduled; distribution and advertising commenced in February 1995. SF 41, 46.

 The audiobook, which is subtitled "A Library of Moral Learning," is a compilation of ten public domain stories, each read by a well-known actor and musically scored. SF 36; JX 63. Each of the stories was previously recorded and included on at least one other audiobook previously published by Dove. SF 37. As of December 31, 1996, Dove had net sales of 7,422 units of The Children's Audiobook of Virtues, for a gross profit of $ 23,105.80. SF 75.

 As to the conceptual origin of the Dove books and their titles, Viner testified that "virtues is a subject with which I had grown up and in which I have always been interested." Viner Aff. P 8. According to Viner, one of his grade school teachers required that he and his classmates keep a notebook called either a "Book of Virtues" or "Virtues" in which they collected stories about good deeds. Id.; Tr. 202-05. On cross-examination, Viner was asked, in essence, to explain why he decided to publish a "Book of Virtues" in the summer of 1994 -- some 45 years after grade school and six months after Bennett's success under the title "The Book of Virtues." Viner claimed to have been concerned with the idea of virtues throughout his lifetime, and that 1994 "was the first appropriate time" for publishing a "Book of Virtues" because it coincided with the beginning of Dove's children line. Tr. 204-05. He claimed that he was not "specifically aware" of Bennett's book The Book of Virtues at the time he decided to publish Dove's audiobook, and, although he "may have seen it in passing," he claimed to have "no recollection of it." Tr. 199. Viner acknowledged that he regularly reviewed best-seller lists, at least as to Dove's titles and sometimes more generally. Tr. 200. Plaintiffs' counsel asked Viner if it was his testimony that he "did not know that William Bennett's book, The Book of Virtues, was number one on virtually every best-seller list in the United States from the first week of January of 1994 for 88 consecutive weeks." Viner responded: "I assure you I absolutely did not know that until this moment. . . . I didn't know the length or the details about being on the best-seller list." Tr. 200-01.

 We find it difficult to accept, as a matter of fact, Viner's testimony as to his extremely limited familiarity with plaintiffs' The Book of Virtues in the summer of 1994 and his explanation for his sudden interest in publishing a "Book of Virtues." We believe that Viner significantly understated his awareness of The Book of Virtues and its extraordinary success based on circumstantial evidence which permits us to draw certain adverse inferences and our observations of his demeanor during trial.

 Both Sandi Gilbert, Dove's sales and marketing director, and Pat Collins, the sales administration director at Penguin USA, Dove's distributor, acknowledged that they were aware of Bennett's book at the time they first learned that Viner intended to publish The Children's Audiobook of Virtues. *fn4" Gilbert Aff. P 27; Tr. 140-41. In light of their testimony and the substantial publicity surrounding the publication of The Book of Virtues, including its prominent position on best-seller lists beginning in January 1994, it is hard to believe that a sophisticated publishing executive like Viner would not have been fully aware of the title, general contents, and commercial success of plaintiffs' book when he was deciding to publish books containing a similar mix of stories and fables with a morality message. In short, Viner's claim that he independently recalled the title and concept of his grade school project and that the timing of Dove's publications in relation to plaintiffs' success under a similar title was simply coincidental is not convincing. *fn5"

 Viner testified that he decided to use "Book of Virtues" in Dove's title because "I thought it was a strong title which was likely to sell well, and because 'audiobook of virtues' clearly describes the content of the work." Viner Aff. P 12. He also testified that because he has been in the publishing business for more than 25 years, he was "aware of the fact that titles are -- in general -- not infringable or protectable," but nonetheless discussed his proposed title with legal counsel and relied on counsel's advice in publishing The Children's Audiobook of Virtues and in planning to publish the companion print book. Id. P 13. Viner claimed that Dove "run[s] every title we publish past one of our attorneys." Tr. 209-10. Viner supplied no details as to the advice concerning The Children's Audiobook of Virtues, and no attorney testified concerning any legal advice given to Viner.

 Plaintiffs first learned of Dove's audiobook and planned print book through an advertisement which appeared in the February 6, 1995, issue of Publisher's Weekly. Rayman Aff. P 10; JX 114. By letter dated February 27, 1995, plaintiffs demanded that Dove cease and desist, asserting that Dove's titles were confusingly similar to plaintiffs' title and constituted unfair competition. Rayman Aff. PP 12; JX 56. The parties' attorneys exchanged letters through the spring and summer of 1995.

 Viner spoke with Seth Gershel, the head of audiobooks at S&S, about Gershel's concern that Dove's planned print book would be confusingly similar to S&S's print book. Viner claimed to have reached an agreement with Gershel on steps Dove would take to avoid potential confusion between Dove's book and S&S's book: (1) the cover of Dove's book would have distinctive coloration, and (2) the "Dove Kids" logo would be moved from its usual place on the book's spine to the title, thereby changing the title so that the work would now be called "The Dove Kids Children's Book of Virtues." Viner testified that he sent a revised cover design to Gershel, and that Gershel responded that S&S's legal department "had reviewed [Dove's] proposed book cover and that they had no problem with it." Id. P 16. Gershel disputed this version of events, testifying that he never reached any agreement with Viner on the proposed cover and title of Dove's book. Tr. 283. Although there is no corroborating documentary evidence supporting the existence of the agreement described by Viner, we find it possible, though unlikely, that Viner actually believed, from his conversations with Gershel, that S&S was satisfied with Dove's proposed changes. In any event, we find that there was in fact no such agreement.

 IV. The Strength of Plaintiffs' Mark

 Dove, on the other hand, introduced evidence -- primarily the expert testimony of Lynda Boose, professor of English at Dartmouth College -- in an effort to demonstrate that the "The Book of Virtues" lacks strength as a source-identifying mark. Boose testified that the word "book" or the phrase "the book of" in book titles is an extremely common literary convention, and that the word "of" in such titles almost always means "about" or "concerning." See Boose Aff. PP 6-13. According to Boose, hundreds, perhaps thousands, of book titles contain the phrase "the book of" where "of" means "about" -- citing examples such as The Book of Mormon, The Book of Dogs, and The Book of Time -- and that "very rarely is a book which includes 'the book of' in its title the singular book about its subject matter, i.e., the book, so that the word 'the' thus constitutes exactly the opposite of its usual meaning," connoting definitiveness. Id. P 12.

 Boose also testified that the phrase "book of virtues" or similar phrases have been used repeatedly as the title of works about virtues "since the earliest days of the recorded word." Id. P 14. According to Boose, the earliest classical use of the phrase was Aristotle's book Of Virtue in the Nicomachean Ethics, the precursor of most philosophical works in the field of "virtue-ethics," and that Xenocrates (the third century head of Plato's school) and Theophrastus (successor to Aristotle) both wrote works with "the already standard, generic title Of Virtues." Id. P 15. Cicero's The Book of Virtues ("De Virtutibus Libri") survives from the first century B.C., and the title Of Virtues was used by Epicurus (in Morals), Epictetus (in Discourses), Marcus Aurelis (in Meditations), and St. Thomas Aquinas (in his thirteenth-century Summa Theologica). Montaigne's Essays includes one entitled "Of Virtue," and similarly titled works appear from Spinoza (in the Ethics), John Locke (in Human Understanding) and Immanuel Kant (in The Metaphysics of Morals). Boose placed many of these works, both in title and content, into what she termed the "advice book" genre. She identified the features of this genre as setting forth the virtues defined by Aristotle, Plato, and other philosophers, and either discussing the virtues individually in laymen's terms or illustrating them with parables. Boose claimed that "plaintiffs' book is merely one more example of this type of book; it compiles non-original parables illustrative of the classical virtues and applies a non-original and time-tested 'book of virtues' title." *fn6" Id. P 20.

 Notably lacking from Boose's testimony and report, however, was the mention of a single book sold to the American consuming public, other than plaintiffs', that has the title "The Book of Virtues" in the modern English language. *fn7" Tr. 172-76. At trial, Boose identified one title in the modern English language, not mentioned in her report, which includes both the words "book" and "virtues" -- The Book of Bad Virtues. Tr. 172. However, that book is a parody published by S&S of Bennett's book and is thus largely irrelevant to the issues presented by this case.

 The Court finds that Boose's expert opinion as to the source-identifying strength of the mark "The Book of Virtues," is entitled to reduced weight for two principal reasons. First, Boose's testimony is premised, at least in part, on her dissection of the mark in order to analyze it. Boose separately analyzed the phrase "The Book of" and the word "Virtues," Tr. 175, 189-90, thus failing to recognize that even if separate components of a mark are generic, the composite may nonetheless be protectable. Also, Boose's conclusion that "the same or closely similar marks have been used . . . over and over again since the earliest days of recorded work" appears to rely on an overly broad definition of "the same or closely similar marks" that includes any title which uses the word "virtue" or any title that uses the word "book" and the word "virtue." Tr. 174-75. As previously noted, however, Boose failed to note one book in the modern English language with the exact title of plaintiffs' book, "The Book of Virtues." Second, Boose's report opines as to how the mark would be viewed by "scholars" and "literary scholars," Boose Aff. P 4, 22, ignoring the fact that the academic book market is not the intended market for plaintiffs' or defendant's products. SF 44, 57. Boose admitted that she has no knowledge of the book-purchasing habits of parents with small children. Tr. 161-62.

 Substantial evidence was presented at trial of news articles and other media references to plaintiffs' The Book of Virtues. E.g., JX 18, 32-41, 46, 103, 105. However, not a single such article or reference refers to a class of books as "books of virtue"; all use the phrase "The Book of Virtues" to refer specifically to Bennett's book and its spin-off products.

 As noted above, Bennett has received numerous requests to license his mark on diverse products, offering advances, fees, and royalties. Although a few small publishers planned to publish their own collections of fables and poems with a morality message under the mark "The Book of Virtues" or a closely similar title, S&S and Bennett's attorney have objected to all such uses of the mark, and no publisher -- except for Dove -- has published under the challenged title. SF 58-60. Accordingly, the Court finds that there are no unchallenged uses of plaintiffs' mark "The Book of Virtues."

 Plaintiffs introduced evidence, largely uncontested by Dove, demonstrating that plaintiffs' various products under the mark "The Book of Virtues" achieved tremendous, rapid success in the marketplace, and that S&S and Bennett have engaged in extensive promotional efforts to promote the products sold under this mark. Bennett also testified that he has received hundreds of letters recounting what his book means to people and their families, how they have used it, and what other kinds of materials they would like to see produced by plaintiffs. *fn8" Bennett Aff. P 23; JX 104.

 Plaintiffs have engaged in substantial advertising and promotional efforts for these products, including advertising in national media, Bennett's appearances on national television and radio programs and at paid lectures throughout the United States, elaborate point-of-purchase displays for retail outlets, and specialized promotional efforts for "niche" markets such as schools and libraries. E.g., Martin Aff. P 25; Dooling Aff. P 4; Dana Aff. P 10; SF 26; JX 10. Plaintiffs have expended over $ 1.1 million promoting and advertising various The Book of Virtues products. SF 29. S&S also promoted the books in its various ...


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