Case Cas e #19:
Waldman Waldm an Publis Publishin hing g Corpora Corporatio tion n and Playm Playmore ore Inc. Inc.,, Publis Publishers hers vs. vs. Landoll, Inc.
Topic: Infringement – Reverse Passing Off acts
Waldman publishes and Playmore sells and distributes a series of books called "reat Illustrated !lassics" These are retold and abbreviated versions of literary #orks printed in hard cover format$ % %&' inches by ' inches$ each ()* pages in length$ #ith a color illustration on the cover and black+and+#hite illustrations opposite each page of te,t Plaintiffs began selling the soft cover series in -./. and the hard cover series in -..* There are 01 titles currently in print in the soft cover series and 0% in the hard cover series$ #ith another eight titles in production Plaintiffs sell these products to retail outlets such as 2+3art$ Wal+3art$ toy stores$ drug stores$ and book stores They have been highly successful Plaintiffs sell bet#een ) million and 1 million copies a year$ divided e4ually bet#een hard and soft covers The adaptation of books such as these into versions for children comprising -(* pages of te,t and -(* illustrations re4uires a number of steps 5ome parts of the narrative are retained6 others are discarded The te,t is revised to be more comprehensible to children 7ecisions must be made as to #hat the illustrations #ill sho# Waldman contracted #ith #riters to adapt the te,t and artists to do the illustrations These individuals are identified at the beginning of the books 8ach book also contains a printed notice of copyright on behalf of Playmore and Waldman for the cover$ and on behalf of Waldman for the te,t 9o#ever$ plaintiffs have not as yet registered the #orks #ith the !opyright Office In 7ecember -..0 andoll published and offered for sale soft cover illustrated adaptations of these si, books in a series called ";irst Illustrated !lassics" In
#itnesses testified that plaintiffs did not become a#are of the inner te,ts and illustrations of defendant>s books until ;ebruary -..) They filed suit in 3arch andoll>s president 3arty 3eyers testified that andoll obtained the te,ts and illustrations for these si, adaptations from one Peter 9addock$ an 8nglish publisher While on a business trip to ondon in 3arch -.'0$ 3eyers agreed to purchase the adaptations from 9addock on a "camera ready" basis That means 9addock sent the te,ts and the illustrations ?cover and internal@ to andoll$ #hich used its o#n facilities to print them in salable form as finished books 3eyers testified that no one at andoll had
any input #ith respect to the contents of the books andoll is obligated to pay 9addock a royalty of one cent per book sold In the case at bar$ the evidence demonstrates the likelihood of plaintiffs> success on their claim that andoll has committed the anham =ct tort of reverse passing off$ basing upon the similarities bet#een the structure$ te,ts and illustrations of the competing adaptations: similarities that are too striking to ascribe to coincidence The arrangements of chapters mirror each other in each pair of books In addition$ the andoll te,ts closely follo# the Waldman te,ts andollAs defense lies in the contention that reverse passing off occurs only "if you take the physical product of another" and "sell it as your o#n" On that theory$ counsel for andoll argued$ ripping the cover off a Waldman book and replacing it #ith a andoll cover #ould constitute reverse passing off "because then you>re taking the actual product6 and$ that one is not allo#ed to do" Issue!s"
Whether andollAs !ontention is correct uling
Bo One of the deceptive practices actionable under section )0?a@ of the anham =ct is that form of false designation of origin kno#n as "reverse palming off" or "reverse passing off" In reverse passing off$ the #rongdoer sells plaintiffs products as its o#n It contrasts #ith passing off$ #here the #rongdoer sells its products as the plaintiffs = phonograph record album creating the false impression that defendant rather than plaintiff #as the principal performer constitutes reverse passing off$ actionable under section )0?a@ That narro# construction is inconsistent #ith the anham =ct>s broad remedial purpose$ and contrary to the #eight of authority$ in thCeD CE5 5upremeD !ourt and else#here$ defining and condemning reverse passing off as a form of false designation of origin The andoll books falsely fail to designate the Waldman books as the origin of the adaptations andoll is selling in its o#n name 5uch conduct is actionable under section )0?a@ andoll is not selling its o#n product under a trademark or trade name or trade dress confusingly similar to that of the plaintiffs andoll has simply misappropriated Waldman>s product and is selling it as its o#n$ #ithout any attribution of credit to the true sources The anham =ct condemns conduct #hich is likely to cause consumers to be confused$ mistaken or deceived as to a product>s origin
