Jonathan Livingston Seagull claims survive summary judgment motion

In Bach v Forever Living Products Inc (2007 US Dist LEXIS 8424 (WD Wash 2007)), the US District Court for the Western District of Washington has denied a motion for summary judgment filed by Forever Living Products (FLP) on trademark and copyright infringement claims filed by Richard Bach, the author of Jonathan Livingston Seagull, and Russell Munson, the photographer whose pictures were contained in the book.

Bach and Munson alleged that FLP, which manufactures and distributes health and beauty products through direct sales and multi-level marketing, used a copyrighted photograph from Jonathan Livingston Seagull as its corporate logo, and has used copyrighted excerpts, story and character from the book in its advertising, promotional and training materials. Bach and Munson also alleged that FLP falsely represented in commerce that its companies, products and services are endorsed by or otherwise affiliated or associated with the name, title and images associated with Jonathan Livingston Seagull.

The evidential record contained many examples of FLP's alleged infringement of Jonathan Livingston Seagull, including:

• a promotional video showing FLP's marketing director stating that FLP's brand is "the Jonathan brand";
  
  
• FLP referring to its seagull logo as 'Jonathan' or 'Jonathan Livingston Seagull';
  
  
• use of an image of a white seagull on a blue background on FLP's promotional and training items;
  
  
• giving special 'Jonathan' bonuses; and
  
  
• calling its distributors 'Jonathans'.

FLP moved for summary judgment on Bach's and Munson's trademark claims, arguing that copyright law provides an adequate remedy and the plaintiffs could not piggyback trademark claims in a copyright case. The court allowed both sets of claims, stating that Bach's and Munson's claims were sound in both trademark and copyright law:

• The plaintiffs' rights in the name, title and trade dress are protected under trademark law because they serve to identify the source of their works and were used by FLP in ways that served to brand FLP's products; and
  
  
• The rights in the character, photograph and text are protected under copyright law as the artists' creative work.

The court also found that Bach and Munson raised a genuine issue of material fact regarding the ownership of the trademarks. FLP argued that Bach assigned all rights in the marks through a literary purchase agreement, which assigned the motion picture rights in the book, and alternatively, that Bach abandoned all rights to any trademarks through naked licensing. The court concluded that although Bach assigned the motion picture rights, the right to use the title Jonathan Livingston Seagull in connection with the motion picture, and related advertising and merchandising rights, Bach retained goodwill in the marks under the agreement. Further, the court found that Bach's right under the licence to control the quality of the motion picture created a genuine issue of material fact as to whether he abandoned the mark.

Bach and Munson also asserted trade dress rights in the book cover design. FLP argued that Bach and Munson and their publisher had abandoned trade dress rights in the book cover, and that the mark had not acquired secondary meaning. The court found, however, that there were genuine issues of material fact as to whether the trade dress rights had been abandoned, and found that the fact that some foreign editions of the book did not have the claimed trade dress on the cover was not fatal to Bach's and Munson's claim of secondary meaning.

FLP also argued that Bach and Munson did not have standing to sue because they did not own the trade dress rights, notwithstanding an assignment from the publisher. Specifically, FLP argued that trademark/trade dress rights cannot be assigned separately from the business with which the mark has been associated. However, the court reasoned that the goodwill associated with the book resided more with the plaintiffs than with the publishers. The court also found that the plaintiffs had standing to sue for trade dress infringement regardless of whether they actually owned the trade dress rights because Section 43(a) of the Lanham Act permits any person who believes they are likely to be damaged to bring a civil action, and that "commercial interest in the misused mark" satisfied the standing requirement.

Finally, as to the issue of likelihood of confusion, the court found that the plaintiffs proffered enough evidence regarding likelihood of confusion to surpass summary judgment.

Susan M Natland and Alina S Morris, Knobbe Martens Olson & Bear LLP, Irvine