CHAPTER 3 - § 3.02

• Jurisdiction: United States

§ 3.02 EXAMPLE CASE 1: TIME, INC. V. GLOBE COMMUNICATIONS CORP. (SDNY 1989)

Time brought a claim to enjoin Globe Communications from using elements of the People magazine cover format.¹¹ At the time of the decision, People magazine was published on a weekly basis (and was actually called People Weekly) and had been in publication since 1974.¹² Time claimed trade dress in the People logo, which appeared in white extra-bold Egyptian font such that the letters touched or blended with each other.¹³ Further, Time also noted that all cover billings were printed on the cover in extra-bold condensed type in the Helvetica font.¹⁴ For most of the issues, a photograph appeared in the upper right-hand corner of the cover, with secondary billing.¹⁵ An exemplary cover of People magazine from 1989 is shown on the next page.

Time had promoted People magazine by spending over $10 million in television commercials and through promotions with Publishers Clearing House and American Family Publishers.¹⁶ As for the marketplace, People magazine was sold at newsstands, grocery stores, supermarkets, terminals, and bookstores, where over half were stacked on racks such that part of their cover was hidden from view.¹⁷ Time claimed that its buyers were repeat buyers looking for the cover format that they were familiar with and making a decision about a magazine within six seconds.¹⁸ Based on this information, Time claimed that the distinctiveness of the cover for People magazine could be attributed to the People logo, including the contrasting color border, the position of a secondary photograph in the cover's upper right-hand corner, and the placement of the secondary billing along the cover's top.¹⁹

Globe, a competitor of Time, published Celebrity magazine on a monthly basis.²⁰ By the time of the lawsuit, Globe had spent over $6 million in advertising.²¹ Celebrity had a bold white logo highlighted by a black shadow.²² A secondary billing was placed on the top portion of the cover, and a secondary photograph in the upper left-hand corner of the cover.²³ For the May 1989 issue, Globe altered Celebrity's cover to match that of People magazine.²⁴ Therefore, Time's claim was that Globe's cover format for Celebrity magazine was a "false designation of the origin" of the magazine under section 43(a) of the Lanham Act because it appeared that Time endorsed Celebrity magazine, or was in some way connected with Celebrity magazine.²⁵

The court defined trade dress as the "total image of the product," which "may include characteristics of size, shape, color or color combinations, texture or graphics."²⁶ Since Time's trade dress in People magazine was unregistered, the court required that it be non-functional and that it have "acquired secondary meaning in the market place by which it is identified with its producer or its source."²⁷

With respect to functionality, the court looked to the Supreme Court decision in Inwood Labs, which stated that "a functional feature is one that is essential to the use or purpose of the article or that affects the cost or quality of the article."²⁸ The court found that certain aspects or features of the People magazine cover were functional because they were "essential to newsstand sales of celebrity personality."²⁹ Therefore, the court found that the secondary billing and cover photograph were functional because they are used to sell the magazine and adjust to placement on a rack such that part of the cover is not seen by customer.³⁰ However, the court found that the cover of People magazine, when viewed in its entirety, was not functional.³¹

With respect to secondary meaning, the court stated that "a product gains secondary meaning if the plaintiff establishes that the purchasing public associates that dress with goods from a single source rather than just the product itself."³² Further, evidence of extensive advertising and sales is a factor for determining secondary meaning and continuous use of the trade dress.³³ Since Time did not use the same format for People magazine in seven issues within a two-year time frame, trade dress protection was not awarded for the features that differed across issues.³⁴ Notably, although these alternative designs were not the majority, the court stated that their presence indicated that secondary meaning may not have been established.³⁵ The elements that differed included the secondary billing and inset photograph, which were not included in the trade dress.³⁶

Shifting to advertising expenditures, the court found that Time's advertising budget of $47,500,000 supported a finding of...