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Kensington Publishing Corp. v. Gutierrez

November 25, 2009



In this trademark infringement action, plaintiff Kensington Publishing Corporation ("Kensington" or "Plaintiff") asserts that the use of the term "Bad Boys" in book titles by defendants New Concepts Publishing, Inc. ("NCPI"), Madris Gutierrez ("Gutierrez"), and Andrea Depasture ("Depasture") (collectively "Defendants") constitutes trademark infringement and unfair competition under federal law in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Plaintiff asserts related claims under New York State common law and the New York anti-dilution statute, N.Y. Gen. Bus. L. 360-l. Plaintiff seeks injunctive relief, an accounting of any profits that have resulted from Defendants' alleged infringement, damages, and attorneys' fees. The Court has jurisdiction of the claims arising under federal law pursuant to 28 U.S.C. §§ 1331 and 1338(a) and of the claims arising under state law pursuant to 28 U.S.C. §§ 1367 and 1338(b). The parties' cross-motions for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure are currently before the Court. The Court has considered thoroughly the parties' submissions. For the following reasons, the cross-motions for summary judgment are denied.


Plaintiff is an independent publisher of hardcover, trade, and mass-market paperback books. (February 13, 2007, Decl. of Laurie Parkin ("Parkin Decl.") ¶ 3.)*fn2 Between August 2002 and November 2006, Plaintiff published twenty-two erotic romance novels with the term "BAD BOYS" in the title (the "BAD BOYS books") through its Brava imprint.*fn3 (Parkin Decl. ¶¶ 4, 6.) The BAD BOYS books share common themes involving romance, sex, and male characters who initially exhibit negative characteristics and who experience some sort of reformation or redemption by the end of the story, and are sold in collections of three or six stories written by one or more of Plaintiff's romance authors.*fn4 (Id. at ¶¶ 4-6 & Ex. A.) The BAD BOYS books were conceived as a series prior to the publication of the first BAD BOYS title in August 2002.*fn5 (Id. at ¶ 4.) Plaintiff's BAD BOYS books are sold in chain bookstores such as Barnes & Noble, Borders, and Waldenbooks; by mass retailers including Target and; and through Kensington's own website, (Id. at ¶ 7.)

Defendant NCPI is also a publisher of romance novels. (Local Civil Rule 56.1 Statement of Uncontested Facts in Support of Pl.'s Mot. for Summ. J. ("Pl.'s Rule 56.1 Statement") ¶ 26.) NCPI was primarily an e-book publisher when it was formed in 1996 or 1998, at which time its electronic copies of books were distributed via the internet.*fn6 (Dep. of NCPI by Madris Depasture ("NCPI Dep."), annexed as Ex. A to February 13, 2007, Decl. of James D. Weinberger ("Weinberger Decl.") at 6:3-21.) Since 2004, NCPI's sales have been split approximately equally between print books and e-books. (NCPI Dep. at 61:4-7.) NCPI is co-owned by Defendants Madris Gutierrez and Andrea Depasture. (Dep. of Andrea DePasture ("Depasture Dep."), annexed as Ex. A to February 13, 2007, Decl. of Eric R. Leibowitz ("Leibowitz Decl.") at 16:24-17:8.) Gutierrez, a/k/a Madris Depasture, is a published author who founded NCPI. (NCPI Dep. at 29:9-30:24.) Depasture, the daughter of Gutierrez, uses the pen name Jaide Fox and is the author of NCPI's title Intergalactic Bad Boys ("IGBB"). (Id. at 90:17- 23.) IGBB was first published in October 2003 solely in an e-book format that was sold online through NCPI's website, by which time Plaintiff had published four BAD BOYS books.*fn7 (Id. at 111:16-22 & Ex. D.) Defendants subsequently published IGBB in December 2004 as a traditional print paperback book that was sold in chain bookstores. (Id. at 111:23-112:6; 199:2-201:9.) IGBB was also marketed and sold as part of an anthology that contained two separate books: IGBB, and a sequel, Intergalactic Pain in the Ass. (Id. at 92:16-2.) The title for the online version of this anthology was Intergalactic Mayhem I & II, whereas the title for the bookstore version was Intergalactic Bad Boys. (Id. at 93:5-96:17.)

By letter dated June 24, 2005, Plaintiff advised Defendants of its BAD BOYS books and its claim of exclusive rights in the mark for romance novels, and demanded that NCIP "immediately cease distributing [IGBB], and any other work that contains the 'Bad Boys' trademark in the title." (Weinberger Decl. Ex. J.) Defendants elected not to comply with the demand letter and this litigation ensued.


A grant of summary judgment is appropriate only if "there are no genuine issues of material fact and the moving party establishes its right to judgment as a matter of law." EMI Catalogue P'ship v. Hill, 228 F.3d 56, 61 (2d Cir. 2000) (citing Fed. R. Civ. P. 56(c)); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). A dispute about a material fact is genuine "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party."

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). When deciding a motion for summary judgment, "all ambiguities must be resolved and all reasonable inferences drawn in favor of the party opposing the motion." See EMI Catalogue P'ship, 228 F.3d at 61 (citing Anderson, 477 U.S. at 255). However, the party opposing summary judgment "must do more than simply show that there is some metaphysical doubt as to the material facts. . . . [T]he nonmoving party must come forward with specific facts showing that there is a genuine issue for trial." Caldarola v. Calabrese, 298 F.3d 156, 160 (2d Cir. 2002) (internal citation and quotations omitted). When considering cross-motions for summary judgment, "the court must evaluate each party's motion on its own merits, taking care in each instance to draw all reasonable inferences against the party whose motion is under consideration." Schwabenbauer v. Bd. of Educ. of Olean, 667 F.2d 305, 314 (2d Cir. 1981).

Federal Trademark Infringement -- Unfair Competition Claim

Plaintiff claims that it has protectable rights in the "BAD BOYS" mark that it has used for its series of romance novels, and asserts that Defendants have violated Section 43(a) of the Lanham Act, which imposes liability for the infringement of an unregistered mark. Section 43(a) provides for the civil liability of:

Any person who, on or in connection with any goods . . . uses in commerce any word, term, name, symbol, or device . . . which . . . is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods . . . ."

15 U.S.C.A. § 1125(a)(1) (West 2006). To prevail on its trademark infringement claim under § 43(a), Plaintiff must demonstrate that (1) BAD BOYS is a valid mark that is entitled to protection, and (2) Defendants' use of its own mark infringes, or is likely to infringe, upon Plaintiff's mark. See Simon & Schuster, Inc. v. Dove Audio, Inc., 970 F. Supp. 279, 292 (S.D.N.Y. 1997). As explained in more detail below, the eligibility of a trademark for Lanham Act protection turns in the first instance on its distinctiveness as classified on a four-step scale and, depending on its level of distinctiveness, whether it has acquired secondary meaning. The secondary meaning inquiry has increased significance in this Circuit in cases, such as this one, in which the marks in question are used in connection with creative or literary works.

Classification of Mark

The distinctiveness of marks is evaluated under Judge Friendly's now classic formulation that "set[s] forth four categories of terms, each one conferring a differing degree of eligibility for trademark protection. 'Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful.'" Simon & Schuster, Inc., 970 F. Supp. at 292 (quoting Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976)). The classification of a mark can be determined on summary judgment ...

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