forth our finding that Dove infringed plaintiffs' title "The Book of Virtues" in bad faith in order to capitalize on the goodwill associated with Bennett's best-selling book, and that Dove failed to offer a credible innocent explanation. We believe that Dove's president did not testify forthrightly about his limited familiarity with plaintiffs' title and his intent in trading on its goodwill. We believe an accounting of profits in this case protects the public at large and "promote[s] the secondary effect of deterring public fraud regarding the source . . . of consumer goods." George Basch, 968 F.2d at 1539. Accordingly, Dove will be awarded $ 23,105.80, the stipulated amount of Dove's infringing profits from the sale of The Children's Audiobook of Virtues.
Plaintiffs have also demonstrated an entitlement to the usual costs permitted under the local rules, which shall be taxed by the Clerk of the Court. However, plaintiffs have not demonstrated that they are entitled to recover the costs of conducting their consumer survey, and such costs shall not be recoverable.
Deliberate and willful infringement can render a case "exceptional" and support an award of attorneys' fees. Centaur Communications, 830 F.2d at 1229; Quaker State Oil Ref. Corp. v. Kooltone, Inc., 649 F.2d 94, 95 (2d Cir. 1981) (per curiam); Springs Mills, Inc. v. Ultracashmere House, Ltd., 724 F.2d 352, 357 (2d Cir. 1983). Although we find that Dove willfully infringed plaintiffs' title "The Book of Virtues," we do not believe this case qualifies as "exceptional" in order to justify an award of attorneys' fees. This litigation presented a number of close and contested issues; the outcome was by no means a foregone conclusion. Under these circumstances, we decline to award plaintiffs' their attorneys' fees.
II. State Law Claims
Plaintiffs assert two claims under New York law: (1) common law trademark infringement and unfair competition, and (2) violation of the New York anti-dilution statute, N.Y. Gen. Bus. Law § 368-d.
Under New York law, the standards for a finding of unfair competition based on trademark infringement are substantially similar to those applied under the Lanham Act, except insofar as the state claim may require an additional element of bad faith or intent. See, e.g., Girl Scouts, 808 F. Supp. at 1131; Saratoga Vichy Spring Co. v. Lehman, 625 F.2d 1037, 1044 (2d Cir. 1980). Just as in a Lanham Act claim, plaintiffs must demonstrate the use of their mark in a way likely to confuse consumers as to the source of the products. See Girl Scouts, 808 F. Supp. at 1131. For the reasons set forth above, the Court finds that Dove has engaged in unfair competition in violation of New York law.
To prevail on a Section 368-d dilution claim, "a plaintiff must prove, first, that its trademark either is of truly distinctive quality or has acquired secondary meaning, and, second, that there is a 'likelihood of dilution.'"
Deere & Co. v. MTD Products, Inc., 41 F.3d 39, 42 (2d Cir. 1994) (quoting Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 624 (2d Cir. 1983)). Predatory intent, while not precisely an element of the claim, is a relevant consideration. 41 F.3d at 42, 45-46. Dilution is defined as either the blurring of a trademark's product identification or the tarnishment of the affirmative associations a mark has come to convey. Id. at 42-43. Blurring may occur "where the defendant uses or modifies the plaintiff's trademark to identify the defendant's goods and services, raising the possibility that the mark will lose its ability to serve as a unique identifier of the plaintiff's product." Id. at 43. For the reasons set forth above, we find that plaintiffs' title "The Book of Virtues" has acquired secondary meaning and that there is likelihood of blurring. Dove's titles are so similar to plaintiffs' as to create the likelihood that plaintiffs' mark will lose its status as a unique identifier of plaintiffs' products. Further, we find evidence of predatory intent.
Accordingly, plaintiffs' two state law claims provide further support for their requested relief.
For the reasons set forth above, we find that Dove has infringed plaintiffs' trademark in the title "The Book of Virtues" through its use of the confusingly similar titles "The Children's Audiobook of Virtues" and "The Children's Book of Virtues." Dove's actions violate Section 43(a) of the Lanham Act, constitute common law trademark infringement and unfair competition, and violate the New York anti-dilution statute. Dove will be permanently enjoined from using the above-mentioned titles or any other confusingly similar titles. Plaintiffs shall be awarded $ 23,105.80 (the amount of defendant's infringing profits) and the usual costs permitted under the local rules.
Settle judgment on five days notice.
Dated: New York, New York
July 11, 1997
LEONARD B. SAND, U.S.D.J.