Pocket Books, Inc. v. Meyers , 292 N.Y. 58 ( 1944 )

The plaintiff seeks injunctive relief to restrain alleged unfair competition by the defendants.

Since 1939 the plaintiff has published and sold more than 16,000,000 unabridged reprints of a wide variety of literary works. It ascribes its success to the peculiar styling or format of its reprints, their convenient pocket size, their low purchase price of twenty-five cents per copy, and other features which have met with favor from the buying public. The grievance now asserted by the plaintiff is that the defendants, in alleged disregard of the plaintiff's rights and in an effort to induce the public to purchase reprints published by them in place of those published by the plaintiff, and with intent deceptively to palm off their books upon the purchasing public as and for the plaintiffs books, have published and sold reprints which simulate the plaintiff's books. The plaintiff charges that the defendants' acts amount to unfair competition.

In the circumstances shown by this record does the alleged simulation of which the plaintiff complains constitute actionable wrong by the defendants which warrants injunctive relief?

That question was resolved in favor of the defendants at Special Term where the plaintiff's complaint was dismissed on the merits. At the Appellate Division the judgment was reversed on the law and facts, one justice dissenting, and certain findings of fact and conclusions of law made by Special Term were reversed and new findings made.

The judgment of reversal by the Appellate Division contained the following injunctive provisions: "It is further hereby Ordered and Adjudged that the defendants and their officers, employees and agents be and they hereby are restrained forever from directly or indirectly manufacturing, publishing, handling, distributing, selling or offering or advertising for sale, any books measuring approximately 6 1/2 x 4 5/16 inches, and being so compact in size as to fit into the pocket of a coat or into a woman's pocketbook, which have on the front cover the words `Pocket' or `Pocket Book' or `Pocket Books' alone or in combination with any other word or words, and which combine all or any number of the following elements: Lamination of cover, coloring of edges in reddish or any kindred tinge, printing a bleed border on the back cover in yellow, orange or any kindred tinge, and from publishing or selling any books of approximately such size without prominently displaying on the front cover thereof the words `An Avon Book' or `Avon Book Co.', or `Avon Book', or `Avon'; * * *."

We agree with that portion of the opinion Per Curiam by the Appellate Division (265 App. Div. 17) which expresses the view that the plaintiff can claim no copyright or monopoly with respect to the use of the word "pocket" when used descriptively; nor to the size, coloring, lamination of cover, "bleed" border, or other elements which as a whole constitute the format of its reprints. We are also in accord with the statement that imitation in manufacture of any one of those elements, standing alone, would not afford adequate grounds for injunctive relief. But in stating the basis for the judgment which we now review the opinion continues — "* * * when all, or a number of these elements are so combined by the imitator that the casual intending purchaser is likely to be deceived and led to believe the goods are those of the plaintiff, to plaintiff's damage, it is within the province of equity to interfere." (265 App. Div. 17,18.)

There can be no doubt that even though there may be an absolute right in the defendants to use the several elements employed by the plaintiff to produce its format, the defendants have no right to engage in the deception of passing off their own product for that of the plaintiff. In the present case, however, where we may review the facts found by the Appellate Division (State Const., art. 6, § 7; Civ. Prac. Act, § 605; Harrington v. Harrington,290 N.Y. 126, 130), we think the weight of evidence establishes that the defendants exercised reasonable care to avoid such deception and to inform the public of the source of the twelve reprints they have published and offered for sale. The legend "AVON pocket-size BOOKS", printed in bold black type on a light field, appears in several places on the cover of each reprint published by the defendants. It is displayed on the "back bone" or binding edge of the book, in some instances on the front cover and in each instance on the back cover. It appears also on the title page of each book and repeatedly on pages within the cover which carry advertising matter designed to promote the sale of the defendants' reprints. In addition the defendants have caused to be printed on the back cover of each reprint, immediately above the legend "AVON pocket-size BOOKS", an oval medallion — 1 1/4" x 1" — which portrays a bust of Shakespeare. This medallion, which has been adopted by the defendants, as a hall-mark and has been used by them consistently to identify their product, is readily distinguished from the plaintiff's slightly smaller hall-mark — a bespectacled kangaroo reading a book — which is printed on the cover of its reprints for a like purpose.

In the absence of proof that the plaintiff has acquired the exclusive proprietary right to employ in the design of its format the descriptive word "pocket", the coloring and lamination of the cover, the "bleed" border and the other features, including the low price, which concededly have been factors in the success of plaintiff's reprints, the defendants had the right in the publication and sale of their own reprints to use those elements, provided they adopted means adequately to identify their books and to inform the public that they were the defendants' product. Stated otherwise, by employing in the design of their own format the several features used by the plaintiff — elements which had passed into the domain of things public and which gave to the defendants' reprints an appearance similar to the plaintiff's product — fairness in competition required of the defendants that their reprints convey to the purchasing public information which identified their product and reasonably distinguished it from that of the plaintiff. (Kellogg Co. v. National Biscuit Co.,305 U.S. 111, 118-120; Saxlehner v. Wagner, 216 U.S. 375,380, 381; Flagg Mfg. Co. v. Holway, 178 Mass. 83, 90, 91;Gum, Inc., v. Gumakers of America, Inc., Circuit Court of Appeals, 3rd Circuit, decided June 30, 1943 [N.Y.L.J., 10/18/43].)

We find in the present record preponderant evidence that such identifying information was provided by the defendants by giving reasonable prominence on the cover of their reprints and elsewhere within the books to the legend "AVON pocket-size BOOKS" and to the medallion adopted by the defendants as a hall-mark. Such identifying information, we think, serves adequately to exclude belief by a literate purchaser that the reprints are those of the plaintiff.

In Gotham Music Service, Inc., v. Denton Haskins MusicPub. Co. (259 N.Y. 86) — where the plaintiff was denied the right to restrain the defendant from publishing an old song which the plaintiff had re-popularized after it had become publicijuris — this court said, per POUND, Ch. J. (p. 89), "The demand is for the song and not the publisher." So in the present case — where reprints of standard literary works are the subject of competition in trade — we think the weight of evidence establishes that the demand is for the intrinsic character of the reprints denoted by the title, the text, the popularity of the author's writing, not for the producer.

We hold that the means adopted by the defendants to identify their reprints are adequate to avoid deception as to their source and enable the public to distinguish between the defendants' product and that of the plaintiff. Unfair competition has not been proven.

The judgment of the Appellate Division should be reversed and that of the Special Term affirmed, with costs in this court and in the Appellate Division.