Summary
In Rosenfeld v. W.B. Saunders, 728 F. Supp. 236 (S.D.N.Y.), aff'd, 923 F.2d 845 (2d Cir. 1990), a case strikingly similar to this one, the plaintiff claimed that the editor of a medical treatise's third edition failed to give proper credit to the author of the treatise's first edition, and had thus engaged in reverse passing off. Denying the claim for injunctive relief, the district court held that the edition's editor had accurately described the author's prior participation in the preface to the new edition, mitigating any possible confusion.
Summary of this case from Cleary v. News Corp.Opinion
No. 88 Civ. 8207 (JMC).
January 9, 1990.
Ben C. Friedman, Baker Friedman, New York City, for plaintiff.
Ira S. Sacks, Fried Frank Harris Shriver Jacobson, New York City, for defendant Saunders.
Eugene F. Farabaugh, Milbank Tweed Hadley McCloy, New York City, for defendant McCarthy.
MEMORANDUM AND ORDER
The plaintiff's motion for a preliminary injunction is denied. Fed.R.Civ.P. 65(a).
BACKGROUND
Plaintiff, Alan Rosenfeld, brings this action in his capacity as the trustee of the John Marquis Converse Testamentary Trusts for the Benefit of Veronica Converse and Sheila Converse [the "Trusts"]. The Trusts are the testamentary heirs of the intangible personal property rights of the late John Marquis Converse, M.D. ["Dr. Converse"]. Defendant W.B. Saunders ["Saunders"], a division of Harcourt Brace Jovanovich, Inc., is a Delaware corporation engaged in business as a book publisher. Defendant Joseph G. McCarthy, M.D. ["Dr. McCarthy"] is the Lawrence D. Bell Professor of Plastic Surgery and Director of the Institute of Reconstructive Plastic Surgery at New York University Medical Center, positions to which Dr. McCarthy succeeded after Dr. Converse's death.
Pursuant to a 1961 contract between Dr. Converse and Saunders, Dr. Converse was the principal author and editor of Reconstructive Plastic Surgery, a five volume treatise published by Saunders in 1964. Dr. Converse selected his student and then employee Dr. McCarthy to serve as assistant editor of the second edition of Reconstructive Plastic Surgery, a seven volume treatise published by Saunders in 1977. Reconstructive Plastic Surgery is a comprehensive reference known as the "Bible" of plastic surgery.
Due to the rapid evolution of plastic surgery, Albert E. Meier, then supervising editor of Saunders for the second edition of Reconstructive Plastic Surgery, wrote to Dr. Converse on November 12, 1980 outlining the many changes necessary to update the work for a third edition. Declaration of Albert E. Meier in Opposition to Plaintiff's Motion for a Preliminary Injunction, at ¶ 8, 89 Civ. 8207 (JMC) (S.D.N Y Dec. 18, 1989) ["Meier Decl."]. In his reply, Dr. Converse acknowledged the need to publish a third edition. Id. at Exh. 4. Dr. Converse also indicated to Meier that Dr. McCarthy should serve as associate editor of the third edition and as the sole editorial successor for any future editions of Reconstructive Plastic Surgery after Dr. Converse's death. Id. In the event of such future editions after Dr. Converse's death, Dr. Converse suggested that Dr. McCarthy shall be the sole recipient of any royalties. Id. Dr. Converse's plans for a third edition were abandoned upon his death on January 31, 1981. It is unclear precisely how much work Dr. Converse had undertaken to update the second edition prior to his death. At a minimum, Dr. Converse began revising certain chapters and received commitments from prospective contributors to the third edition. See id.
Following Dr. Converse's death, Saunders submitted a proposed contract to Dr. McCarthy in July 1981 to serve as editor for the third edition of a work to be entitled Converse's Reconstructive Plastic Surgery. For reasons not made clear by the record, no contract was executed. Soon thereafter, Meier determined that the state of the art of plastic surgery had evolved so dramatically since 1977 that a totally new work was needed, not simply a revised edition of Reconstructive Plastic Surgery. Consequently, Meier sent Dr. McCarthy a formal invitation letter to edit a new multi-volume textbook on plastic surgery written by various contributors. Meier Decl., Exh. 12. On August 14, 1984, Ardmore Medical Books, an imprint of Saunders, and Dr. McCarthy executed a contract pursuant to which Dr. McCarthy agreed to edit and deliver a new work entitled Plastic Surgery. Id. at Exh. 15.
In an effort to procure the necessary authors for Plastic Surgery, Dr. McCarthy sent solicitation letters to potential contributors. Plaintiff contends that the solicitation letters falsely represented that the contributions would appear in the third edition of the Converse work. Defendants contend that the solicitation letters accurately stated that the contributions would appear in a new textbook of plastic surgery edited by Dr. McCarthy reflecting the recent extraordinary progress in the field.
Saunders went to press with the McCarthy work in September 1989 and spent $1,055,000 to print 7,000 copies of the eight volume set. Advertising expenses in the amount of $120,000 were also incurred by Saunders. Approximately 2,300 of the 7,000 sets printed have been shipped to doctors, hospitals, and medical libraries. Approximately 1,250 orders are currently awaiting shipping.
Plaintiff now moves for a preliminary injunction enjoining defendants from publishing, selling, or distributing the McCarthy work. Plaintiff contends that the McCarthy work constitutes reverse palming off under section 43(a) of the Lanham Trademark Act of 1946, 15 U.S.C. § 1125(a) (1988) ["Lanham Act"], and copyright infringement under section 501 of the Copyright Act of 1976, 17 U.S.C. § 501 (1988). Plaintiff also asserts common law claims of breach of contract, misappropriation of the publicity value in the Converse name, unfair competition, and tortious interference with prospective economic advantage.
DISCUSSION
In order to obtain a preliminary injunction, plaintiff must demonstrate "`(a) irreparable harm and (b) either (1) likelihood of success on the merits or (2) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the party requesting the preliminary relief.'" Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 73 (2d Cir. 1988) (quoting Jackson Dairy, Inc. v. H.P. Hood Sons, 596 F.2d 70, 72 (2d Cir. 1979) (per curiam)).
I. Lanham Act
Plaintiff seeks a preliminary injunction on the ground that defendants' distribution of the McCarthy book in commerce with false designations of origin and false descriptions of fact is likely to cause consumer confusion as to the true origin, sponsorship, and authorship of the book in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1988). Defendants contend that plaintiff lacks standing to assert a Lanham Act violation on behalf of the Trusts due to the absence of commercial injury. Defendants further contend that plaintiff has failed to establish the necessary likelihood of consumer confusion to warrant the issuance of injunctive relief.
Section 43(a) of the Lanham Act broadly proscribes the use of false descriptions and false designations of origin in the advertising and sale of goods or services in commerce. See 15 U.S.C. § 1125(a) (1988). The Second Circuit has repeatedly construed section 43(a) as the federal equivalent to the common law cause of action for unfair competition. See, e.g., PPX Enters., Inc. v. Audiofidelity, Inc., 746 F.2d 120, 124 (2d Cir. 1984) [ "PPX Enters. I"]; Gilliam v. American Broadcasting Cos., 538 F.2d 14, 24 (2d Cir. 1976). As such, the Second Circuit has successfully employed section 43(a) to combat a wide variety of deceptive commercial practices, including various forms of misappropriation and unfair competition. See PPX Enters., Inc. v. Audiofidelity Enters., Inc., 818 F.2d 266, 270-71 (2d Cir. 1987) [ "PPX Enters. II"] (citing a broad spectrum of section 43(a) violations).
Section 43(a) of the Lanham Act governs false designations and false descriptions as follows:
Any person who, on or in connection with any goods or service, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination therefor, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which —
(1) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorhsip, or approval of his or her goods, services, or commercial activities by another person, or
(2) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.15 U.S.C. § 1125(a) (1988).
The Lanham Act generally prohibits two types of unfair competition — palming off (or passing off) goods under the name of another and false advertising concerning the goods or services of the advertiser. See Lamothe v. Atlantic Recording Corp., 847 F.2d 1403, 1406 (9th Cir. 1988). Traditional palming off involves the selling of one's goods or services under the name of a more popular competitor. See 1 R. Callmann, Unfair Competition, Trademarks and Monopolies § 2.01, at 2-3 (4th ed. 1981). However, the palming off facet of section 43(a) liability also encompasses merchandising practices or conduct "`economically equivalent' to palming off." Smith v. Montoro, 648 F.2d 602, 605 (9th Cir. 1981). Such practices include a false designation of origin in the form of reverse palming off, which is actionable under section 43(a) of the Lanham Act. See id.; Williams v. Curtiss-Wright Corp., 691 F.2d 168, 172 (3d Cir. 1982); Sims v. Blanchris, Inc., 648 F. Supp. 480, 482 (S.D.N.Y. 1986). Express reverse palming off occurs when "the wrongdoer removes the name or trademark on another party's product and sells that product under a name chosen by the wrongdoer." Smith, 648 F.2d at 605. Implied reverse palming off, in contrast, occurs when "the wrongdoer simply removes or otherwise obliterates the name of the manufacturer or source and sells the product in an unbranded state." Id. While reverse palming off involves the misappropriation of another's talents as in traditional palming off cases, the gravamen of the harm in a reverse palming of case is that "the originator of the misidentified product is involuntarily deprived of the advertising value of its name and of the goodwill that otherwise would stem from public knowledge of the true source of the satisfactory product." Id. at 607. The harm, however, also runs to the ultimate purchaser who is "deprived of knowing the true source of the product and may even be deceived into believing that it comes from a different source." Id.
A. Standing under the Lanham Act
Section 43(a) of the Lanham Act permits a suit to be brought "by any person who believes that he or she is or is likely to be damaged" by the use of any false description or representation concerning the origin or qualities of goods or services in commerce. 15 U.S.C. § 1125(a) (1988). Contrary to a literal reading of the statute, however, section 43(a) does not confer standing on an individual who merely "believes" that he is likely to be damaged. See 1A Callmann, supra, § 5.04, at 35. Rather, section 43(a) demonstrates a congressional intent to give "a broad class of suitors injured or likely to be injured by such wrong the right to relief in the federal courts." L'Aiglon Apparel Co. v. Lana Lobell, Inc., 214 F.2d 649, 651 (3d Cir. 1954) (emphasis added). While section 43(a) is a remedial provision that should be broadly construed to protect persons engaged in commerce from a wide variety of misrepresentations resulting in unfair competition, see CBS Inc. v. Springboard Int'l Records, 429 F. Supp. 563, 566 (S.D.N.Y. 1976), the Second Circuit has restricted standing to purely commercial parties, thereby excluding ordinary consumers, see PPX Enters. I, 746 F.2d at 124-25; Colligan v. Activities Club of New York, Ltd., 442 F.2d 686, 692 (2d Cir.), cert. denied, 404 U.S. 1004, 92 S.Ct. 559, 30 L.Ed.2d 557 (1971). While a plaintiff under section 43(a) need not be a direct or indirect competitor of the alleged wrongdoer, he must at a minimum establish "the potential for a competitive or commercial injury." Berni v. International Gourmet Restaurants of America, Inc., 838 F.2d 642, 648 (2d Cir. 1988). The touchstone analysis governing standing under section 43(a) is whether the commercial party has a "`reasonable interest to be protected against the alleged false advertising.'" Johnson Johnson v. Carter-Wallace, Inc., 631 F.2d 186, 190 (2d Cir. 1980) (quoting 1 R. Callmann, Unfair Competition, Trademarks and Monopolies § 18.2(b), at 625 (3d ed. 1967)); accord PPX Enters., I, 746 F.2d at 125 (citing other circuits relying on Callmann).
In the instant case, plaintiff has commercial interests that may reasonably be affected by a false designation of origin on the McCarthy work. Plaintiff does not contend that the Trusts are in the business of writing medical treatises. However, the 1961 contract between Saunders and Dr. Converse expressly provides that Saunders shall pay Dr. Converse or his heirs a royalty of ten percent for domestic sales of all copies of Reconstructive Plastic Surgery and five percent for foreign sales. See Meier Decl., Exh. 11, at ¶ 8. Thus, as heirs of Dr. Converse, the Trusts earn money every time a copy of Reconstructive Plastic Surgery is sold. Conversely, the Trusts lose potential profit every time a sale is lost to a competitor, such as the McCarthy book. As a result of their royalty interests, the Trusts have a pecuniary stake in the continued sales of Reconstructive Plastic Surgery that makes them a business competitor of defendants. The Second Circuit has expressly recognized that potential lost royalty payments constitute a direct pecuniary interest sufficient to invoke standing under section 43(a). See PPX Enters. I, 746 F.2d at 125.
B. Injunctive Relief under the Lanham Act
To state a claim for injunctive relief in an unfair competition action under section 43(a), a plaintiff need only establish a "`likelihood that an appreciable number of ordinary prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question.'" Charles of the Ritz Group Ltd. v. Quality King Distributors, Inc., 832 F.2d 1317, 1321 (2d Cir. 1987) (emphasis added) (quoting Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir. 1978) (per curiam), cert. denied, 439 U.S. 1116, 99 S.Ct. 1022, 59 L.Ed.2d 75 (1979)); accord 1A Callmann, supra, § 5.04, at 33. It is well settled that such a showing of likelihood of confusion sufficiently establishes both the requisite irreparable harm and likelihood of success on the merits typically required for the issuance of injunctive relief. See, e.g., Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 73 (2d Cir. 1988); Home Box Office, Inc. v. Showtime/The Movie Channel, Inc., 832 F.2d 1311, 1314 (2d Cir. 1987); Standard Poor's Corp. v.
In contrast, in order to establish entitlement to damages for unfair competition under section 43(a), the plaintiff has the burden of proving actual consumer confusion resulting from the false designation of origin. PPX Enters. II, 818 F.2d at 271.