USCA1 Opinion

December 17, 1992

UNITED STATES COURT OF APPEALS
FOR THE FIRST CIRCUIT
____________________
No. 91-2211
VICTOR DeCOSTA,
Plaintiff, Appellee,
v.
VIACOM INTERNATIONAL, INC.,
Defendant, Appellant.
____________________
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF RHODE ISLAND
[Hon. Ernest C. Torres, U.S. District Judge]
___________________
____________________
Before
Breyer, Chief Judge,
___________
Coffin, Senior Circuit Judge,
____________________
and Cyr, Circuit Judge.
_____________
____________________

Robert M. Callagy with whom Satterlee Stephens Burke & Burke

_________________
_________________________________
Jan R. Uhrbach were on brief for appellant.
______________
Richard W. Petrocelli with whom Mark J. Hagopian and Viscont
______________________
_________________
_______
Petrocelli Ltd. were on brief for appellee.
_______________
____________________
____________________

BREYER, Chief Judge.

___________

More than thirty years ago,

between 1957 and 1964, CBS provided television stations with

a program called

"Have Gun

-- Will Travel."

starred "Paladin," a fictional

carried

a derringer

with a picture

beginning in

1947, Victor

this

case,

to

began

handed out

chess knight.

ago,

program

cowboy who dressed in black,

pistol, and

of a

The

appear,

hospitals, and charitable events.

More than forty

DeCosta, the
as

calling cards

cowboy,

years

plaintiff in
at

rodeos,

DeCosta dressed in black,

carried a derringer pistol, handed out

of

a chess knight, and

DeCosta
idea.

sued CBS,

called himself "Paladin."

claiming

Eventually, this

cards with a picture

it had

court

In 1963

unlawfully copied

decided that

CBS may

his
have

copied DeCosta's idea, but, the laws under which DeCosta had
sued did not
that

prohibit CBS from doing

DeCosta had failed to

or other relevant, laws.

so.

This court

held

prove a violation of trademark,

Columbia Broadcasting System, Inc.

__________________________________

v. DeCosta, 377 F.2d 315 (1st Cir.) [hereinafter DeCosta I],

_______
_________
cert. denied, 389
_____________

U.S.

1007 (1967);

DeCosta v.
_______

Broadcasting System, Inc.,

__________________________

520

[hereinafter

cert. denied,
_____________

(1976).

DeCosta II],
___________

F.2d 499

Columbia
________

(1st Cir.
423

U.S.

1975)
1073

DeCosta has now sued again.

company

that CBS created,

rights for
that

the old

CBS copied

and to which

Paladin programs.

his

idea; and

broadcasting the old CBS

state

He has sued Viacom, a

he

it assigned re-run
He

again complains

says that

Viacom,

programs, has violated federal and

trademark and unfair competition laws.

1114(1), 1125(a).
proceed.
(D.R.I.

15 U.S.C.

The district court permitted the suit to

DeCosta v. Viacom Int'l, Inc., 758

_______
___________________
1991).

Viacom appeals.

by

jury found

in

F. Supp. 807

DeCosta's favor.

And,

In our view, DeCosta's new suit depends for

its success upon relitigating issues that this court already

has decided against him.

And, for that reason, the doctrine

of "collateral estoppel" bars his new claims.

reverse

the

district

court

and order

We

therefore

judgment

for

the

defendant.
I
DeCosta's Basic Legal Problems
______________________________
When Mr.
claimed

that it

Rather,

CBS

independently,
however,

DeCosta first sued, many

had

said,

not copied
both

in the

rejected CBS's

courts have proceeded

his "Paladin"

"Paladin's"

same

years ago, CBS

found their

historical sources.

argument.

And,

origin,
A

ever since,

on the assumption that

-33

character.

jury,
the

CBS, in fact,

did

copy Mr.

DeCosta.

Why,

then,

has Mr.

DeCosta

not

succeeded in obtaining compensation?

The answer to this
the fact that the
always

law does not always consider

make unlawful,

creation of

the

another.

copying by

It can

new, valuable ideas, works,

monetary

attached

to

widespread

"Education

. .

It

can

cause

'progress,' if

name.

generous

dissemination

indulgence

of

proceeds from

it is not
of

may, of
of

commercial

tries to take advantage of

another's

the

or products, by diminishing the

Free,

copying, however, may also prove beneficial.

the

person of

discourage the creation

reward.

confusion, as a copier
will

one

harmful, or

Free, uncontrolled copying

course, prove harmful.

creator's

question ultimately rests upon

new
a

uncontrolled
It can promote

works

kind of

Unhurried View of Copyright 2

___________________________

(1966).

Benjamin

or

ideas.

mimicry,

entirely an illusion,
copying."

the good

and

depends on
Kaplan,

Some creators,

An
__
say,

novelists
those

or dramatists,

rightly expect

who buy or use their creations.

academic

scientists,

innovators (e.g.,

teachers,

the inventor of

compensation from

Other creators, say,

or

certain

commercial

the supermarket)

expect

others to copy, and to use, their ideas free of charge.

-44

The
legislators

result

is a

have responded

need for

balance.

to

need

that

discrete bodies of intellectual

own rules.

Courts and

with

separate,

property law, each with its

The laws of patents,

copyright, trade secrets,

trademarks, unfair competition, and misappropriation balance

the

conflicting interests

differently

in

in protection

different contexts
who will

and dissemination

through

specific rules

that

determine just

receive protection,

of just

what

kind, under what circumstances, and for how long.

See
___

generally WCVB-TV v. Boston Athletic Ass'n,

_________ _______
_____________________

926 F.2d 42, 45

(1st Cir. 1991).

Mr. DeCosta's original
inability

to

protective

bring his

rules.

legal problem

lay in

case

within a

particular

Copyright

law, for

example, might

principle have offered protection for his "Have Gun

Travel"

kind

copyright

set of
in

-- Will

calling card, but he had brought that card into the

"public domain"
the

his

of

by distributing
specific

it widely,

"copyright"

law requires.

without giving

notice

DeCosta I, 377 F.2d

__________

that

federal

at 321.

Nor

was he able to show the type of "confusion" between products

essential

to success

other, claims.

on

his trademark,

and

DeCosta II, 520 F.2d at 513-15.

__________

-55

most of

his

Mr.
fact

DeCosta's present

legal problem lies

that he previously sued CBS and lost.

in the

The traditional

legal doctrine of "collateral estoppel" bars relitigation of

any issue that, 1) a party had
to

a "full and fair opportunity

litigate" in an earlier action, and that, 2) was finally

decided
was

in that action, 3) against that party, and that, 4)

essential to

the

earlier judgment.

(Second) of Judgments
_______________________
DeCosta's

claims now

upon his

27,
before us

winning an issue

litigation against CBS.

failed to

issue

now that he lost

and that

CBS's victory

Mr.

its success,
before, in his
he had

buyer "confusion" between

of CBS.

in the

had a "full and fair

in the

Each of

depends, for

show a "likelihood" of

"essential" to

(1982).

Restatement
___________

In particular we held that

his "Paladin" character

DeCosta

29

See
___

That issue

earlier action.

was
Mr.

opportunity to litigate" that

earlier litigation.

And,

Viacom,

as CBS's

successor, here stands in the shoes of CBS.

Mr. DeCosta's argument on
an

attempt to

through

escape

a claim that

the bonds

new one.

27, cmt. c;

of "collateral

legal and factual

(when we decided DeCosta II)

__________
essence, a

this appeal consists of

estoppel"

changes since 1975

make the "confusion" issue, in

See Restatement (Second) of Judgments

___ __________________________________

28(2)(b),

(4) (collateral estoppel does not

-66

bar

relitigation

of an

factual or legal changes).

issue

transformed by

significant

After considering Mr. DeCosta's

arguments in detail, however, we find no legally significant

change.

-77

II
Trademark Registration
______________________
Trademark
using

really produced the goods (or

may also

one seller

from

one similar to -- that used

such a way that he

prevent the buyer

It

to prevent

the same "mark" as -- or

by another in
who

law seeks

confuses the public about

service).

Confusion may

from obtaining the goods he really wants.

jeopardize

the commercial

reputation of

the

senior (first) user, which might be tarnished by association

with the junior (subsequent) user.

To win a trademark case,

a plaintiff must show 1) that he uses, and thereby "owns," a

mark, 2) that the defendant is
mark, and 3) that
the

public,

using that same or a similar

the defendant's use is likely

thereby harming

the

plaintiff.

Dieter v. B & H Indus. of Southwest Florida, 880

______
__________________________________
326 (11th Cir. 1989),
WCVB-TV, 926
_______

cert. denied, 111 S. Ct.

____________

to confuse
See,
___

e.g.,
____

F.2d 322,
369 (1990);

F.2d at 45; Astra Pharmaceutical Prods., Inc.

__________________________________

v. Beckman Instruments, Inc., 718 F.2d 1201, 1205, 1209 (1st

_________________________
Cir. 1983); Pignons S.A. de Mecanique v. Polaroid Corp., 657
_________________________
______________
F.2d 482, 486-87 (1st
v. Gillette Co., 23
____________

Cir. 1981); W.W.W. Pharmaceutical Co.

_________________________
U.S.P.Q.2d 1609, 1614, 1621 (S.D.N.Y.),

reaff'd, amended in other respects, 1992 U.S.

_______ ___________________________
10053

(S.D.N.Y. July

11, 1992);

-88

Dist. LEXIS

Merritt Forbes & Co.

_____________________

v.

Newman Investment Securities, Inc.,

___________________________________
(S.D.N.Y.

1985); but cf.

___ ___

15 U.S.C.

exception, not presently relevant,

DeCosta,

as we

have

604 F. Supp.

said,

943, 956

1051(b) (creating an
to the use requirement).

previously

failed to

show

"likelihood" of public "confusion" between the "mark" (i.e.,

the "Have Gun -- Will Travel" and "Wire Paladin" phrases and
the chess knight sign) as he used it, and the same "mark" as
used by

CBS.

issue in

DeCosta

argues that

the case before us

the legal

"confusion"

differs from the issue

in his

earlier 1975 case because, in 1976,

he registered his mark.

Columbia Broadcasting System, Inc.

__________________________________

v. DeCosta, 192 U.S.P.Q.

_______

453 (T.T.A.B.

1976).

The fact

of registration,

he says,

changes the legal "burden of proof" rules, making it legally

easier for

a plaintiff

to show "likelihood

of confusion."

See American Heritage Life Ins. Co. v. Heritage Life Ins.

___ _________________________________
___________________
Co., 494
___

F.2d 3,

10 (5th Cir.

1974).

That legal

change

transforms the old legal issue into a new one.

DeCosta is right that a change in relevant "burden
of

proof" rules

relitigation

of

can
an

otherwise would bar.

transform a
issue

that

legal issue,
"collateral

permitting
estoppel"

See Restatement (Second) of Judgments

___ _________________________________

28(4).
here.

But,

we can find no such

Registration

consists of

relevant transformation
persuading

the Trademark

-99

Board to issue an
1051,

appropriate "certificate."

1057(a).

certificate

The

becomes "prima

"registration,"

of its

ownership," and of the

the mark

. .

specified

. in

also

"registration"

says

"validity,"

says

that

connection with

that

says

that

of the

"the

the

mark's

registrant's

that,

15

in

U.S.C.

certain

owns)

1065.
makes

services

1057(b).

to

But,
it

The

circumstances,

"registrant's right

registration

he concededly

the goods or

15 U.S.C.

registrant (with a conceded right

mark

of

U.S.C.

"registrant's exclusive right to use

makes the

mark "incontestable."

statute

facie evidence"

in the certificate."

statute

nowhere

relevant

15

use" the

the statute

easier

for

to use a concededly valid

to prove

that

a relevant

buying public may confuse some

other person's mark with his

own.
Nor are

we aware

of any reason

here should significantly affect

why registration

the proof about confusion.

To decide whether buyers are likely significantly to confuse

two

different

similarity,

marks,

2) the

court

will

similarity of

examine

the underlying

1)

their

goods or

services, 3)

the relation

of the "channels"

through which

the

"trade,"

the

the

parties

4)

relation

of

parties'

advertising, 5) the kinds of prospective buyers, 6) evidence

-1010

of actual

confusion, 7)

the mark,

and

8) the

the defendant's reasons

strength

of the

for using

plaintiff's

mark.

Boston Athletic Ass'n v. Sullivan, 867 F.2d 22, 29 (1st Cir.

_____________________
________
1989);
812,

Volkswagen Aktiengesellschaft
_____________________________

v. Wheeler,
_______

814 F.2d

817 (1st Cir. 1987); Astra, 718 F.2d at 1205; Pignons,

_____

_______

657 F.2d at 487; Polaroid Corp. v. Polarad Elecs. Corp., 287

______________
____________________
F.2d

492, 495 (2d Cir.), cert. denied, 368 U.S. 820 (1961).
____________

The

fact of registration, at most, relates to one aspect of

the last mentioned factor, the plaintiff's mark's strength.

The

particular

relation

"strength"

concerns what trademark

meaning."

That

ability to tell
special

refers to

the public that

trademark

product or

function,

service that

Words and
pick

term

of

registration

to

jargon calls "secondary

a

word's, or

the word or sign

namely,

that

comes from a

it

sign's,
serves a

denotes

particular "source."

phrases, in ordinary, non-trademark, use normally

out, or

refer

to, particular

individual items

that

exhibit the characteristics that the word or phrase connotes

(without
phrase

specific reference
"white eagle,"

to

the item's

as ordinarily

used on

source).

The

a particular

occasion, for example, would pick out from a nearby flock of

birds,

the

bird

characteristics.

that

has

white,

and

eagle-like,

The phrase "white eagle" in trademark use,

-1111

however, would
something
beer

denote,

or

refer

to,

something

special,

other than a white eagle, such as, for example, a

-- "White

signify that

Eagle Beer"

--and, in

the item comes from a

the White Eagle Company, a

doing so,

it would

particular source, say,

Milwaukee brewery.

And, insofar

as the public takes the word, or sign, to refer to a product

or service with

a particular source

(indeed, a product

service that, for example, might be neither

an eagle),

the word,

or sign,

Registration relates to
conclude

white, nor like

"secondary meaning."

strength in that

it helps a

court

that a particular mark, in fact, does possess such

"secondary
court

has

or

meaning," which is simply to say that it helps a

conclude that a particular set of words or signs does

indeed act like

Oil Co.
________

a trademark.

v. Thomas,
______

839 F.2d

Dieter, 880 F.2d at 329; Wynn

______
____
1183,

1187, 1190

(6th Cir.

1988); Keds Corp. v. Renee Int'l Corp., 888 F.2d 215, 220-21
__________
_________________
(1st

Cir. 1989); cf. New Kids on the Block v. News America

___ ______________________
____________

Publishing, Inc.,
________________
(describing

the

23 U.S.P.Q.2d 1534, 1535

primary

purpose

of

(9th Cir. 1992)

trademarks

identify the source of goods and services").

as

"to

That

"strength"

registration "relates" (in

does not help DeCosta.

relates

to

this way) to

confusion

and

strength, however,

The "strength" of DeCosta's mark was

-1212

not an

issue before us

in the

earlier cases.

This court

assumed

in its opinions that DeCosta's mark had a secondary

meaning.

It specifically said that his mark is "distinctive

enough so that proof of secondary meaning is not essential,"

and that, "at least among

some people, plaintiff's name and

card

had come to be associated with

F.2d

at 513.

even

assuming a mark

forced

It went on to

it to assume.

him."

DeCosta II, 520

__________

find no relevant "confusion,"

as strong as

registration might have

Thus, the fact of later registration,

insofar as it helps establish that the mark has a "secondary

meaning," adds nothing significantly new.
We concede that, in one

of the cases that DeCosta

cites, the

court said

establish

that "registration is

prima facie (1) the

registrable mark
another's

use of

Heritage, 494 F.2d at 10

________
phrase,

however,

"strength,"

required prior use

(3) which is
the same

in which

or a

holdings

in other courts.

839 F.2d

at 1187, 1190;

similar mark."

refers

case

(2) of a

likely to be confused
______________________

(emphasis added).

likely

sufficient to

simply

the phrase

The
to

American
________
underlined
the

mark's

is consistent

Dieter, 880 F.2d

______
Keds, 888 F.2d
____

with

with

at 329; Wynn,
____

at 220-21.

If it

means more than that, we do not understand the theory behind

it, and

we do not

follow it.

Rather, we

agree with

the

-1313

Seventh

Circuit,

procedural

that,

in

the

advantages conferred

case

before

by registration

us,

"the

are [not]

substantial,

at least

in

issue of

likelihood of

inequity

in

applying

the context

confusion.

of determining

Therefore,

collateral

effect

to

we see
the

375, 379

(7th

Cir.

registration does

1984).

no

[prior]

decision [that likelihood of confusion was not shown]."

Loader Boat Trailers, Inc. v.
___________________________

the

EZ
__

Cox Trailers, Inc., 746 F.2d

__________________
In

sum, the

not warrant relitigating

"new"

fact

of

the "likelihood

of confusion" issue.
III
Reverse Confusion
_________________
DeCosta
not

bind him

next argues that collateral estoppel does

because,

since 1975,

"modification or growth in

there

has occurred

legal principles [that] effect a

significant change" in the law. See Commissioner of Internal

___ ________________________
Revenue
_______

v. Sunnen,
______

333 U.S.

(Second) of Judgments
______________________
rests upon a
would

28(2)(b).

claim that Viacom's

violate this

doctrine.

591, 600

Hence,

"new" law,
the

(Viacom's predecessor)

fact
was

(1948); Restatement
___________

His "new" case, he adds,

present use of

not "old,"
that

lawful

pre-1975, legal

the

behavior

of

CBS

before

1975

tells

us

nothing about Viacom's similar behavior today.

-1414

"Paladin"

DeCosta finds these

"new" legal principles

in an

area of trademark law called "reverse confusion," an area in

which

a plaintiff

claims that

the public

will confusedly

think that the plaintiff's product emanates in some way from

the defendant, rather than the (more ordinary) contrary.

An

imaginary example may help explain the concept.

Suppose
company, which
Later, say,

that Tom,

used

the trademarked

and she used the

on her kitchen-blenders.
must

confusion

case, Tom will

name

Chopper"

name.

sponsors)

the

If

In

an electric kitchen-

a traditional

To win,
trademark

claim that Mary's kitchen-blender

that he, Tom,

authorizing)
they think

either
Mary to

that

kitchen-blender, their

kitchen-blenders

"SupR-Chopper."

1980, Tom sues Mary.

confusedly think

(i.e.,

a knife

same "SupR-Chopper" name

kitchen-blender business,

"sponsoring"

Mary's

In

show "confusion."

customers may
into the

1970, established

in 1975, Mary established

blender company,

Tom

in

may harm

has expanded

directly or
use

he, Tom,

by

the "SupRmakes

(or

dissatisfaction with

the reputation

of Tom's

knives;

or, even if Mary

her customers are

makes a fine

moved to buy Mary's

product, insofar as
product because they

associate Tom with Mary's

product, they thereby permit Mary

to

the work and

take a "free-ride" on

investment that Tom

-1515

made

in

order to

"SupR-Chopper."

develop a

See,
___

positive

image for

the name

e.g., S.C. Johnson & Son, Inc.

____ ___________________________

v.

Johnson, 175 F.2d 176, 180 (2d Cir.), cert. denied, 338 U.S.
_______
____________
860 (1949) (recognizing

trademark owner's legitimate

claim

to protection from "the possibility that the trade practices

of the second user
minds

of his

Rohrlich,
________

may stain the owner's reputation

customers");

167 F.2d

969,

in the

Triangle Publications, Inc. v.

____________________________
972 (2d

Cir. 1948)

(prohibiting

defendant's attempt to profit from "the erroneously supposed

sponsorship of the plaintiff").

The

less

typical,

"reverse

confusion,"

involves somewhat different circumstances.

Tom is

worried that his knife customers

that Mary
(not

makes, or

that

he

confusion," just like

Mary's

In such a case,
will wrongly think

"sponsors" his, Tom's,

makes

Mary's

case

blenders).

kitchen knives
This

"reverse

ordinary confusion, may hurt Tom.

kitchen-blenders

work

badly,

for

example,

If

Tom's

potential customers may decide that Tom's knives come from a

poorly managed company, and

they may hesitate to

buy them.

See, e.g., Plus Products v. Plus Discount Foods, Inc., 722

___ ____ ______________
__________________________
F.2d

999, 1003-04

(2d

Cir. 1983)

concern that

reverse confusion

"reputation

for

high

(recording

might

quality

plaintiff's

lead to

plaintiff's

merchandise"

becoming

-1616

"tarnished

because of

[defendant's] bargain

basement, no-

frills image"); Banff, Ltd. v. Federated Dep't Stores, Inc.,

___________
____________________________
841 F.2d 486, 490 (2d Cir. 1988) (similar).
The problem for DeCosta is that, as illustrated by
this

simplified

particularly
speak

example,

new. The principal

of "ordinary,"

simply

to

"reverse

is

confusion.

"likely

to cause

without dividing confusion into types.

It protects the
cause,

holder from the

without specifying

is nothing

trademark statute does not

or "reverse,"

copying that

confusion"

It refers
confusion,"

15 U.S.C.

1114(1).

harm that confusion

whether that

harm flows

might
from a

copier taking advantage of the holder's "good will," or from

the copier

potentially reducing the value of

by associating the holder with

The

leading case on the

the copier's own "bad" name.

subject, Big O Tire Dealers, Inc.

_________________________

v. Goodyear Tire & Rubber Co., 561 F.2d

____________________________
Cir. 1977),
two years

cert. dismissed, 434 U.S.

_______________

suggest
novel,

1365, 1371

(10th

1052 (1978), decided

after our decision in DeCosta II, made absolutely

__________

clear that a
"reverse

the mark, say

trademark holder

confusion."
that

its holding

principle.

followed the

But, in

The

language of

could base a
doing so, the

represented

jury instruction
1114(1).

-1717

claim on

such

court did not

totally new,
which it

See id. at 1371.

___ ___

or

upheld
And,

Big O reasserted
______

DeCosta

at

invoked

principle set
length

in

International News Services v.

____________________________
215 (1918).

In that case, in

forth

in a

case

that

DeCosta
I,
___________

namely,

Associated Press,
________________

248 U.S.

addition to deciding that the

defendant had unlawfully misappropriated the news product of

the

plaintiff's investigations, the

and "significant .
product

Court found a wrongful

. . false representation" that that news

was derived from defendant's own work.

Justice Holmes'
representation"

concurrence rested
aspect,

which

Id. at 242.
___

entirely on the
he

viewed

as

competition:
The
ordinary
case
[of
unfair
competition]
is
palming
off
the
defendant's product as the plaintiff's,
but the same evil may follow from the
opposite
falsehood -from saying,
whether in words or by implication, that
the
plaintiff's
product
is
the
defendant's, and that . . . is what has
happened here.

"false
unfair

Id. at 247; see

___
___
trademark

also Banff, 841 F.2d at 490 (observing that

____ _____

law's

traditional

ensuring that good will

it,

principle (that
_________

concerned

remains attached to those

are equally implicated

confusion cases).

objectives,

in "reverse"

protects

who earn

and "non-reverse"

DeCosta cannot therefore

trademark law

with

claim that the

against a

buyer's

being led to believe, wrongly and harmfully, that the copier

-1818

is the source

of the holder's

product) was unavailable

to

him or that he was not aware of it in his initial case.

DeCosta's more plausible claim
"reverse

confusion"

expansion since 1975.

suggest

has

itself

undergone

Several dicta in

that a plaintiff,

is that the law of

significant

the Second Circuit

claiming reverse

confusion, can

recover for harm suffered, not because the buying public may

wrongly

believe that

the defendant

plaintiff's product, but simply

believes
See
___

that the

Inc., 693 F.
____

Supp. 71,

Lisa Lighting Co.,

_________________

if

everyone knows

name.

490; Lobo Enters., Inc. v. Tunnel,

___________________
_______
77 (S.D.N.Y. 1988);

712 F. Supp.

PAF S.r.l.
__________

394, 410 (S.D.N.Y.

that Tom

and Tom's

v.

1989);

To return to our

if Tom could win his trademark

nothing whatsoever to do
might still

wrongly

the defendant's

W.W.W. v. Gillette, 23 U.S.P.Q.2d at 1615.

______
________
example, it is as

sponsors the

because the public

plaintiff copied

Banff, 841 F.2d at

_____

makes or

knife

case even

company have

with Mary's kitchen-blenders.

Tom

win because the public might wrongly think that

Mary thought of the "SupR-Chopper" name first and Tom copied

her idea for his

trademark.

that Tom "pirated" the

If the public

wrongly thought

name, they might think less

well of

Tom, who would thereby suffer a harm to his good reputation.

Were this theory

the law,

Tom might win

-1919

a trademark

case

against Mary, even if

Mary used the "SupR-Chopper"

label a product that

to do

name to

nobody thought had anything whatsoever

with kitchen knives, say,

helicopters (called "SupR-

Choppers"), for the public still might wrongly believe Tom a

"pirate."
We

agree with

DeCosta that

one can

find dicta,

more recent than 1975, that seem to offer support for such a
theory.

And, we also

offered

him

agree that such

basis for

availability before 1975.

respect

success,
The fatal

to this "change in

view that

this change is

a theory might have

had

he

known of

its

problem for DeCosta in

the law," however,

not sound law.

lies in our

We find

that it

does not correctly state the law of trademarks.

Our
First,

reasons

to adopt

for

this

this theory

limitation central to the

See
___

particular goods

would undermine

are

several.

an important

law of trademarks, the limitation

of trademark protection to the

on

conclusion

protection of marks as used

________

to identify

their source

or sponsor.

United Drug Co. v. Rectanus Co., 248 U.S. 90, 97 (1918)

_______________
____________

(trademark

rights are

Supreme Court wrote

not "right[s]

many years ago, in

in

gross").

Hanover Milling Co.

___________________

v. Metcalf, 240 U.S. 403, 415 (1916):

_______
[W]here

two

As the

parties independently

are

employing

the

same

mark

in

-2020

separate markets wholly remote the one

from the other, the question of prior
appropriation is legally insignificant,
unless at least it appear that the
second adopter has selected the mark
with
some
design inimical
to the
interests of the first user, such as to
take the benefit of the reputation of
his goods, to forestall the extension of
his trade, or the like.
Thus, at

present the law often

pre-existing

take a

name or mark and use it on a different product

in a different market.
Drizzle, Inc.,
______________
manufacturer

permits a person to

599

See, e.g., McGregor-Doniger, Inc. v.

___ ____ ______________________
F.2d

of expensive

1126 (2d
women's

Cir.

1979)

coats to

(allowing

use trademark

"Drizzle," despite prior registration of "Drizzler" mark for

plaintiff's cheaper

golf jackets);

Shulton, Inc., 454 F.2d

_____________

King Research, Inc.

___________________

66 (2d Cir. 1971) ("Ship

v.

Shape" on

hairspray did not infringe registered "Ship Shape" trademark

for comb and brush

cleaners).

pirate" were an actionable

mark

ever

previously

different the
Mary

used

by

product, place

no small

"SupR-Chopper" on

thought a

harm, no one could safely

another,

of sale,

company anywhere

any product before she

helicopter product, lest

no

use a

matter

or class

the helicopter maker, for example,

certain that

to her

If "falsely being

how

of buyer.

would have to make

had used the

name

attached the name

some of, say,

Tom's knife

customers believe that she, not Tom, had had the idea first.
-2121

The specter of resulting lawsuits, inhibitions on the use of

names,

and a

linguistic

reversal

freedom (in

of

present

presumptions

different fields)

favoring

cautions against

what would seem a fairly radical change in the law.

Second,
specifically

other,

non-trademark

tailored protection

against the

law

offers

most obvious

harms

that

may

Copyright law,
certain

befall

for example,

names and

mentioned the

the

phrases

falsely

labeled

protects the initial

against any

We

have

have obtained

such protection, at least for his calling card.

See DeCosta
___ _______

But, he did not do so.

A common

law

tort, the

disparagement"

(also known

also

protect

users of

copier.

possibility that DeCosta might

I, 377 F.2d at 321.

_

"pirate."

trademark

law against

as "injurious
holder

"commercial

falsehood"), may

against

the

false

implication that he has "pirated" the work of another, where

the defendant intends such harm.
v.

New York Times,

_______________

aff'd,
_____

279

(allowing
copied

747,

relief
"with

disparaging
that,

F.

275 F.

562,

565-66 (S.D.N.Y.

cert. denied, 258

_____________

for

defendant's

permission"

plaintiff's

as defendant

See, e.g., Public Ledger

___ ____ ______________

from

rights, if

knew, plaintiff
-2222

U.S.

assertion
the

(1922)

that it

London

plaintiff
had --

627

1921),

Times

had
as

could prove

and advertised

itself

as

having

guaranteeing it

--

contract with

the

London

Times

exclusive copying rights); Big O, 561 F.2d

______

at 1373-74.
Both
carefully

these

areas

of

crafted conditions

serious

phrases,
harm,

and

in

will likely

copyright law's "fair use"

also
____

Big O,
______

561

F.2d

designed to

of

speech

occur.

where

1373

no

See, e.g.,
___ ____

exemption, 17 U.S.C.
at

contain

for unduly limiting the use

other forms

fact,

however,

and limitations,

prevent their becoming vehicles

of words,

law,

(outlining

107;
the

see
___

special

requirements of "commercial disparagement," namely (1) false

statement,
existence

(2)
of

malice,
these

and

other

(3) special
carefully

tailored

protection also cautions strongly against

trademark

law, a

actionable harm

kind

of overriding

damages).

The

types

of

introducing, into

concept such

of "falsely being thought

as the

a pirate," which

concept could well upset the balance between those interests

favoring

"protection"

dissemination

--

and

those

balance

favoring
carefully

free

use

and

developed

by

legislatures, and slowly by courts, over many years.

Finally, the leading case about trademark "reverse

confusion,"

Big O,
______

disparagement"

supra,
_____

law,

not

suggests

that

traditional

"commercial

"trademark

law,"

-2323

provides proper legal relief for the

thought

a pirate."

court discusses this

context

of

Insofar

as

See id.
___ ___

at 1373-74.

Insofar

as the

latter kind of harm, it does so in the

"commercial
the

harm of "falsely being

court

disparagement"
discusses

type

trademark

of

tort.

"reverse

confusion," it does so in the context of confusion about the

source
court

of the product,
_______

the name.
____

The

of "passing off."

And,

in doing

it says that, otherwise, a large firm could simply take

someone else's
for

source of

does explain why, in its view, trademark law does not

limit recovery to victims

so,

not the

it.

mark and

But, nothing

develop a new
in this

"secondary meaning"

explanation suggests

that

"falsely

being thought

pirate"

automatically

produces

recovery.
For

these

reasons, insofar

as

may

significantly

"reverse

confusion"

(reverse

confusion about

Insofar as we accept

be

thought

"piracy"), we

do not

of

"new"

accept it.

it (reverse confusion involving source

or sponsorship), we do not believe

Hence, we do

the doctrine

it is significantly new.

not believe that there are changes

in the law

here that can overcome the effects of "collateral estoppel."

IV
Factual Changes
_______________
-2424

DeCosta argues that facts have changed since 1975.

Hence,

the

different
"collateral

issue
than

the

of

"confusion

issue

of

estoppel" does

not

now"

is

"confusion
bar its

significantly
then."

And,

litigation.

See

___
Restatement (Second) of Judgments
___________________________________

27, cmt.

c.

In the

earlier cases DeCosta proved that he presented the character

"Paladin"

at

rodeos

appearances.

of either

This

various

court held

programs)

would

DeCosta or

CBS was the

likely

that

believe

"source" of the

personal

"Paladin" in its

"product" (rodeo/personal

television

That

through

CBS presented the character

television programs.
buyers

and

few, if

any,

appearances or
that

either

other's "service."

is to say, few, if any, television viewers were likely

to believe that DeCosta produced the TV programs and few, if

any, rodeo
believe

(or personal

that CBS

appearances.
which

points are

question

After
has

the rodeo,

or other

likely to
personal,

The question is whether the factual changes to

factual issue.

DeCosta

provided

DeCosta now

"confusion"

service) customers were

such that litigation

represents a

of the

significantly different

See id.
___ ___
reviewing
not

the

presented

record,
evidence

different circumstances for two reasons.

-2525

we
of

conclude

that

significantly

First, much of his

evidence

amounts to no more than added efforts to prove the

same "ultimate
Thus,

facts" he

DeCosta found

showing

failed to prove

several people

the first

(and produced

time.
surveys

other people) who think he has something to do with

the CBS television

program.

He provided

persons who referred

to him

witness who

thought DeCosta was

television

said he

program character.

that says he

four letters from

as "Paladin."

He provided

impersonating the

He introduced

is "from the T.V. series."

a newsletter

He testified that

he had met people who thought he was "connected" with the TV

series and was an
his surveys

"impersonator" or an "imposter."

said that about

his picture thought he

that

half of the

individuals shown

was connected with the TV

it was "sponsoring" him.

And, he

One of

series or

produced a "public

relations" expert witness who testified that people would be

"confused."
because,

in context, it

ultimate fact
before.
party

This evidence does not help DeCosta, however,

seems designed

-- "confusion"

-- that

to prove
he

the same

failed to

prove

As the Restatement of Judgments points out, when a

________________________
has litigated

such an

"new evidentiary facts may not

"ultimate fact,"

and failed,

be brought forward to obtain

a different determination of
simply do not

that ultimate fact."

see why this kind of evidence

Id.
___

We

could not have

-2626

been

provided

convincingly

the

first

explains why

Paladin television
the

less

time.

Nothing

those who

in

saw DeCosta

program was current would

"confused"

than

those

the

who

now

record
when the

have been any

see

him

when

"Paladin" is the subject of old television reruns.

Second,
expanded his
example,

evidence of

since 1977.

that time,

he has

He

his having
says,

for

distributed 60,000

cards (having distributed about 300,000 before

15,000

20,000 before
with

activities

that since

more calling
1977);

own

DeCosta provided

more photographs

(having

distributed about

1977); 15,000 bumper stickers,

Paladin

legend.

He

has

made

and 2800 pens

more

personal

appearances at rodeos and ice cream stores, and he

appeared

on

two

television

commercial.

talk

and

A picture of him in

horsebreeders' magazine.
to

shows

in

one

television

costume appeared once in a

And, he has objected several times

others using slogans such as "Have Cup, Will Travel" (by

Dunkin Donuts) and "Have Guns, Will Travel" (by the U.S. Air
Force).
This evidence
same kind
And,

we

basically

of activity in which
do

not

see how

"collateral estoppel"

bar.

it

shows no

more than

the

DeCosta previously engaged.

can

Even

bring

him outside

were he to

the

have provided

-2727

evidence of his own,

television
The

far greater, expansion into,

business, that

litigated

holding of

evidence would
"no

confusion"

do him
in the

say, the
no good.
initial

DeCosta cases amounts to a holding that DeCosta had no legal

right to exclude others from using his mark in the field
television.

Moreover, DeCosta has conceded

of

that CBS/Viacom

has used the "Paladin" mark in that field before, and after,
he brought his initial cases.

Further,

no evidence at all that, since

the record provides

1977, CBS or Viacom has used

the mark in "bad faith," i.e., with an intent or expectation

of causing
mark

confusion or

by the prior user"

"forestalling expansion
(in a different

under the

field) or harming

DeCosta's "reputation or good will." See Restatement (Third)

___ ___________________
of Unfair Competition
______________________

19(a),

cmt. d

& illus.

3 (Tent.

Draft No. 2, 1990); GTE Corp. v. Williams, 904 F.2d 536, 541
_________
________
(10th

Cir.),

assessing
ultimate
to

cert. denied,
____________

whether second

111

S.

user acted

Ct.

557

in bad

(1990)

(in

faith, "[t]he

focus is on whether the second user had the intent

benefit

from the

reputation or

goodwill of

the first

user."); Triumph Hosiery Mills, Inc. v. Triumph Int'l Corp.,

___________________________
___________________
308 F.2d 196, 200
v.

El Chico Cafe,
______________

(similar);

James

(2d Cir. 1962) (similar); El Chico, Inc.

_______________
214
M.

F.2d
Treece,
-2828

721,

726

"Security

(5th
for

Cir.

1954)

Federally

Registered

Mark Owners

Against Subsequent Users,"

39 Geo.
____

Wash. L. Rev. 1008, 1018 (1971) (mere knowledge of the first

_____________
user's
cases

prior use

should not

where "the second user

first

user's

confused");

market

(Sweet,

as bad

[is] in fact

[and]

where

875 F.2d

faith in

remote from the

consumers

cf. Mead Data Central, Inc.

___ _________________________

Sales, U.S.A., Inc.,

____________________

are

not

v. Toyota Motor
_____________

1026, 1037

(2d

Cir. 1989)

J., concurring) (in statutory dilution context, bad

faith "requires a showing

mark hoping
the

be regarded

to benefit

senior mark.").

have relied

that the junior user adopted

commercially from

Indeed,

upon our prior

final judgment as

harm "reputation or good will."

Unfair Competition
__________________
subsequent

user

association with

CBS/Viacom might

their activities did not cause "confusion"

its

reasonably
holding that

or significantly

Cf. Restatement (Third) of

___ ______________________

19, cmt. d ("Good faith reliance by the

on

an

opinion

of

counsel

is

also

relevant.").
All this being so,
concerned,

as far as the present

case is

it is CBS and Viacom who have the prior right to

use

the mark

in television,

reason,

insofar

creates

"confusion," he

See
___

as

not DeCosta.

DeCosta's
_________

United Drug Co. v.

________________

expansion

has no

And,
into

legal basis

Rectanus Co.,
____________

for that
television

for recovery.

248 U.S.

90 (1918)

-2929

(within regional market, defendant first user in that market

had

priority over

region

plaintiff

earlier user

in a

different

who now sought to enter that market); Value House v.

___________

Phillips Mercantile Co., 523

_________________________
(same, where plaintiff

F.2d

424

(10th Cir.

registered its mark after

1975)

defendant

had begun to use its); compare Dawn Donut Co. v. Hart's Food
_______ ______________
___________
Stores, Inc., 267
____________
who registered

F.2d 358, 360

before defendants

(2d Cir. 1959)

(plaintiff

began to use

their mark,

and had

previously operated

abandoned its
also
____

in defendants' market

mark in that market,

and not

retained priority); see

___

Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d

_______________
_________________________

1225, 1231 (3d Cir. 1978)

mark succeeds in first
whether the

("Priority depends not upon which

obtaining secondary meaning but upon

plaintiff can prove

evidence that his mark

add, that there

by a preponderance

of the

possessed secondary meaning [and, we

was a potential likelihood of confusion] at

__

the time the defendant commenced his use of the mark.")

_________________________________________________________
(emphasis added).
Returning to our

example, it

is as

if Tom,

the

kitchen knife maker, sued Mary the

helicopter manufacturer,

and

use of the same name did

a court determined that their

not create confusion.

___
faith,

to use

Suppose that Mary continues, in

the mark

on her
-3030

helicopters, but

good

Tom then

expands into the helicopter

if

business.

At that

point, even

buyers now confuse the source of the two products (Tom's

helicopters and Mary's helicopters), Tom cannot recover from

Mary, for it

is Mary, not

Tom, who

has the legally

prior

right to use the name in that field.

DeCosta reminds
likelihood

of confusion

us

that, since

can turn

on the

findings

as

to

relation

of the

parties' uses, a prior finding of no likelihood of confusion

will not
the

always bar a subsequent action if circumstances of

parties' uses change.

See Sarah Coventry, Inc. v. T.

___ _____________________
__

Sardelli & Sons, Inc., 526

_______________________

F.2d 20,

cert. denied, 426 U.S. 920 (1976).

_____________
is

that his

And, in any
where

evidence does not

of

Cir. 1975),

The problem for DeCosta

show a

significant change.

event, that change would do a plaintiff no good

it consists of his
___

record

23 (1st

litigation

expansion into a

indicates

that

field where the

the

defendant
_________

has

priority in using the mark.

For these
court is
Reversed.
_________

reasons, the

judgment of

the district

-3131