SWYGERT, Senior Circuit Judge.
In this action for copyright infringement and unfair competition defendant and counterplaintiff-appellant Multistate Legal Studies, Inc. appeals from a permanent injunction imposed by the district court against Legal Studies' use of the names PRELIMINARY MULTISTATE BAR EXAMINATION and PMBE to designate its test preparation service and the practice examination administered therein. The district court held that
The facts of this case are undisputed. The plaintiff National Conference of Bar Examiners is a cooperative organization of members of the boards of state bar examiners having supervision over admission to the bars of the various states. The plaintiff Educational Testing Service is a nationally recognized organization engaged in the development and administration of tests and testing programs which are used nationwide by educators and educational administrators. As a joint venture, the plaintiffs are engaged in the preparation and distribution of examinations used by the various state bar admission boards in testing candidates for admission to the bar. The plaintiffs' MULTISTATE BAR EXAMINATION (MBE) is an objective multiple choice test which has been administered to bar applicants twice yearly since 1972 to determine their competency to practice law.
The defendant Multistate Legal Studies, Inc. is a Delaware corporation having its principal place of business in Philadelphia, Pennsylvania and Chicago, Illinois. In 1977 Legal Studies began conducting bar review seminars using study materials that it developed to prepare bar applicants to take the plaintiffs' MULTISTATE BAR EXAMINATION. Upon payment of a fee, bar applicants are enrolled in defendant's course at locations across the country and administered a practice examination patterned after the plaintiffs' MULTISTATE BAR EXAMINATION. The defendant began using the name PRELIMINARY MULTISTATE BAR EXAMINATION in 1978 to denominate the examination that it offered in its review course. The name subsequently became associated with the course as a whole as well as the examination developed by the defendant.
Legal Studies advertises and promotes the name PRELIMINARY MULTISTATE BAR EXAMINATION or PMBE throughout the country in magazine advertising, posters, and fliers circulated among the various law schools. In this advertising Legal Studies has repeatedly used the term "official publication" in reference to its course materials and claimed to have included in the PRELIMINARY MULTISTATE BAR EXAMINATION 120 questions reconstructed from plaintiffs' July 1978 MULTISTATE BAR EXAMINATION.
The plaintiffs filed a two-count complaint on October 26, 1978 in the Northern District of Illinois. In Count I plaintiffs alleged that Legal Studies, in violation of the copyright laws of the United States, infringed their copyright in the MULTISTATE BAR EXAMINATION by copying from one or more editions of their copyrighted July 1977, February 1978, and July 1978 bar examinations. According to the plaintiffs, Legal Studies' illegal copying was indicated by its literature which claimed that the PRELIMINARY MULTISTATE BAR EXAMINATION contained reconstructed questions from the MULTISTATE BAR EXAMINATION. In Count II of the complaint plaintiffs alleged that Legal Studies engaged in unfair competition in violation of the trademark laws of the United States, 15 U.S.C. § 1125(a), and the Uniform Deceptive Trade Practices Act, Ill.Rev.Stat. ch. 121½, § 311-17, by falsely representing in its advertising and promotion that its examination was in some way connected with the plaintiffs or their product through use of the names PRELIMINARY MULTISTATE BAR EXAMINATION or PMBE and through its claim that the PMBE was an "official publication."
Legal Studies answered and counterclaimed in three counts. Subsequently, it
On January 29, 1980 the district court continued Legal Studies' motion for summary judgment on Count III of its counterclaim so that Legal Studies could join the Register of Copyrights as a party defendant. On the plaintiffs' motion the court dismissed Counts I and II of Legal Studies' counterclaim challenging the capacity of the plaintiffs to obtain a copyright and the legal qualification of the MULTISTATE BAR EXAMINATION for copyright protection.
After Legal Studies filed an amended counterclaim joining Barbara Ringer, Register of Copyrights, as a party defendant, the district court issued an order on July 31, 1980 dismissing Count III of Legal Studies' amended counterclaim pursuant to motions to dismiss filed by the plaintiffs and the Register of Copyrights. The district court held that the plaintiffs' copyrights were valid and concluded that section 408(c)(1) was sufficiently broad to accommodate the regulation that was adopted by the Register for secure tests.
Subsequently, on March 30, 1981, plaintiffs obtained leave to file a second amended complaint. This complaint omitted the allegations of copyright infringement and
On July 10, 1981 the district court denied Legal Studies' previously-filed motion for reasonable attorney's fees based upon the plaintiffs' dismissal of Count I of their complaint on the rationale that the complaint was filed in good faith and there was at least an arguable infringement of the plaintiffs' copyright. The plaintiffs said that their reason for dismissing Count I was that the alleged infringement had ceased and there was no evidence that it had occurred since 1979, thus obviating the need for injunctive relief and substantial damages. The district court, in addition, surmised that plaintiffs dismissed Count I because of an earlier ruling that that particular issue was subject to a trial by jury. This appeal followed. Legal Studies challenges the rulings of the district court in plaintiffs' favor on the copyright claim, the unfair competition injunction, as well as the denial of attorney's fees and the taxing of certain items of costs to Legal Studies. We shall address each issue seriatim.
Legal Studies seeks, among other things, a declaration that the Copyright Office regulation which governs the deposit requirements for secure tests — 37 C.F.R. § 202.20(c)(2)(vi) — is inconsistent with the Copyright Act of 1976, or, alternatively, that section 408(c)(1) of the Copyright Act, 17 U.S.C., which empowers the Copyright Office to promulgate the secure test regulation, is unconstitutional. Legal Studies also seeks a cancellation of plaintiffs' copyright registration of the MULTISTATE BAR EXAMINATION obtained in accordance with the challenged regulation.
A preliminary question which arises in connection with the copyright issue is whether a case or controversy continues to exist given the fact that plaintiffs' copyright infringement action was effectively dismissed without prejudice by the district court's allowance of plaintiffs' second amended complaint. As indicative of the continued controversy involved in the copyright claim, Legal Studies argues that it is reasonably apprehensive of civil and criminal liability because it fully intends to use the questions that were found to have infringed plaintiffs' copyright. In support of its position that the controversy survived the dismissal of Count I of the complaint, Legal Studies relies upon Altvater v. Freeman, 319 U.S. 359, 63 S.Ct. 1115, 87 L.Ed. 1450 (1943). There the Supreme Court held that it was error for the Eighth Circuit to declare as "moot" issues raised by the licensees' counterclaim regarding the validity of certain reissue patents following the dismissal of a patent infringement complaint when, in addition to the article involved in the original action, the licensees produced other articles claimed to fall under the reissue patents.
The plaintiffs deny that Altvater has any bearing on the present case. They suggest that Legal Studies' liability would be the same even without valid copyright registration of the MBE to support their position; plaintiffs refer to the language in 17 U.S.C. § 408(a) stating that registration is not a condition of copyright protection. The plaintiffs, however, overlook the provisions of 17 U.S.C. § 411 which in relevant part provides: "No action for infringement of a copyright in any work shall be instituted until registration of the copyright claim has been made in accordance with this title." We believe that Legal Studies has a reasonable apprehension of liability for copyright infringement under the circumstances and that consequently the controversy is not moot. See Tubeco, Inc. v. Crippen Pipe Fabrications, Inc., 402 F.Supp. 838 (E.D.N.Y.1975), aff'd, 538 F.2d 314 (2d Cir. 1976).
Turning to the merits, Legal Studies first contends that the provision of the
Under this exception to the general deposit requirements for unpublished works, the Copyright Office has promulgated the secure test regulation permitting the retention of a "sufficient archival record" in the case of tests. The district court resolved the question of the meaning of "entire deposit" as used in section 704(d) by stating:
Legal Studies does not specifically refute the district court's interpretation except to assert that the court used a "highly strained" interpretation of section 408(c)(1) "to vitiate the clear and unambiguous language of section 704(d)." We agree with the district court's view that the entire deposit may consist of excised copies and find that the "complete copy" requirement of section 408(b)(1) for unpublished works is inapplicable to secure tests and is excepted under section 408(c)(1) from normal deposit requirements.
Legal Studies next argues that plaintiffs' reliance upon section 408(c)(1) as authority for the secure test regulation is wrong because a review of the relevant legislative history indicates that the purpose of the statute was merely to facilitate the registration of copyrightable material which was overly bulky or possessed of unusual physical characteristics. For this proposition Legal Studies relies upon a discussion appearing in H.Rep. No. 94-1476, 94th Cong., 2d Sess. 153 (1976), reprinted at 1976 U.S.Code Cong. & Ad.News at 5769, which considers possible applications of the
From our review of the legislative history of section 408, it appears that the discussion about the purpose and possible applications of the statute is purely illustrative and does not evidence any restriction upon the scope of the power granted to the Register to classify materials for deposit. Although the House Report is silent on the precise subject of the deposit requirements for secure tests, it is evident that the legislation is intended to vest broad authority in the Register of Copyrights to fashion a workable system of registration and deposit of copyrighted works. The introductory sentence of a relevant section of the legislative history instructs: "Consistent with the principle of administrative flexibility underlying all of the deposit and registration provisions, subsection (c) of section 408 also gives the Register latitude in adjusting the type of material deposited to the needs of the registration system." Id. In view of this expressed policy of administrative flexibility over deposit requirements, we do not agree with Legal Studies' suggestion that the purpose of the statute was merely to facilitate the deposit of unwieldy items.
The district judge took a different approach and found that the legislative history has no bearing upon the question of secure tests; he held, nonetheless, that the language of the statute itself was sufficient to support the Register's authority to issue the regulation. The judge reasoned that since a statute cannot be expected to cover every specific situation that may arise in the future, it need go no further than to rely upon the language of section 408(c)(1), citing Consumer Products Safety Comm'n v. G.T.E. Sylvania, Inc., 447 U.S. 102, 100 S.Ct. 2051, 64 L.Ed.2d 766 (1980). In addition, the judge relied upon a "bootstrap" argument that an agency's interpretation of a statute defining its jurisdiction and authority is entitled to considerable weight. See Zenith Radio Corp. v. United States, 437 U.S. 443, 450-51, 98 S.Ct. 2441, 2445, 57 L.Ed.2d 337 (1978). Although we find that the legislative history sheds some light upon the question of the scope of the Register's authority to issue the secure test regulation, we agree with the district judge's determination that authority for the secure test regulation can be found in the clear terms of the statute alone.
Legal Studies also challenges the validity of the secure test regulation upon constitutional grounds. It argues that the regulation serves to conceal the deposited
In support of this argument Legal Studies relies upon the principles expressed in the dissenting opinion in Washingtonian Publishing Co. v. Pearson, 306 U.S. 30, 59 S.Ct. 397, 83 L.Ed. 470 (1939). There the Court rejected the notion that mere delay in making a deposit of copies in the Copyright Office was enough to cause forfeiture of a right to sue for copyright infringement under the former Copyright Act of 1909. The dissenting opinion, on the other hand, argued that the petitioner's failure to comply with the statutory requirement of prompt deposit under the Copyright Act of 1909 was fatal to the perfection of the petitioner's copyright.
Id. at 38-39, 59 S.Ct. at 401-402. Of course, only the majority decision is legal precedent, and the recognition that the deposit and registration requirements under the Act were procedural only and not constitutional prerequisites for a copyright has been carried forward in the current statute by 17 U.S.C. §§ 408(a) and 411(a). Those provisions make clear that registration is not a condition of copyright protection. It follows that deposit regulations do not amount to disclosure requirements; nor as a practical matter can they function as such since a claimant may register any time prior to bringing suit on an infringement claim.
Inconsistently, Legal Studies discounts the applicability of Washingtonian Publishing because the case interpreted the Copyright Act of 1909 which covered only published works and presumably would not bear upon the provisions contained in the present Act for unpublished materials. Accordingly, Legal Studies argues that since all published documents, including the one at issue in Washingtonian Publishing, were documents made available for public inspection through publication, "the decision does not even remotely suggest Constitutional approval of the secret copyright" which characterizes, presumably, the unpublished copyrighted test here at issue. Implicit in Washingtonian Publishing, however, is the assumption that unregistered materials, even though published, would not be available for public inspection. It was on this assumption that the dissent assailed the majority's sanctioning of "secret copyrights," warning that "Congress did not intend to enshroud copyright monopolies in such secrecy." Id. at 48, 59 S.Ct. at 405. As a practical matter, Legal Studies' argument is of no weight; the mere fact that something is published does not guarantee that the work will serve as notice to potential
Legal Studies has not presented any case authority that supports its argument that the purpose of the deposit regulation is to insure disclosure of the copyrighted works.
Section 704(c) requires a facsimile reproduction of all or any part of the material deposited, thus again negating the notion that only complete copies of the deposited material must be preserved. Moreover, as we already noted, under section 408(c) the deposit may consist of identifying materials.
In sum, the statutory scheme of the Copyright Act demonstrates that the deposit provisions are not for the purpose of disclosure. An observation on this subject by Professor Nimmer with respect to published works implicates unpublished works as well:
Nimmer on Copyright, § 7.17[a] (1981). By analogy, in the case of unpublished works, the copyright function is attenuated as previously noted by the fact that the Register of Copyrights under section 704(d) is required to preserve only a facsimile copy of "all or any part" of a section 408 deposit, which may itself consist of only identifying
Following a trial on plaintiffs' claim of unfair competition, the district court determined that plaintiffs had a legally protectable right in the names "MULTISTATE BAR EXAMINATION" and "MBE" and granted injunctive relief. Initially, the court found plaintiffs' trade name is neither generic nor commonly used to describe its bar examination. The court then found the name to be "merely descriptive" of a characteristic or quality of plaintiffs' test; further, because of long and extensive use, the name, has acquired a distinctiveness and a secondary meaning; and, finally, there is a likelihood of confusion between Legal Studies' PRELIMINARY MULTISTATE BAR EXAMINATION and plaintiffs' MULTISTATE BAR EXAMINATION. The court concluded Legal Studies' use of the name for its service constituted unfair competition and a violation of 15 U.S.C. § 1125(a).
The evidence submitted by plaintiffs showed that the MULTISTATE BAR EXAMINATION is a multiple choice test, designed to measure competency to practice law. The name was intended to convey the idea that the test can be used nationally but that it is not a national bar examination. Plaintiffs' MULTISTATE BAR EXAMINATION was first administered in 1972 and has been offered twice each year since then, ordinarily as one part of a state bar examination. Since its inception in 1972 through February 1981, the plaintiffs' examination has been taken by approximately 355,000 bar applicants. As a result, the name MULTISTATE BAR EXAMINATION has become known to virtually all law students. Though impressive, this evidence is irrelevant if under recognized legal criteria plaintiffs' trade name does not qualify for protection.
A generic term is one that refers, or has come to be understood as referring, to the genus of which the particular product is a species. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir.1976). A corollary verbal formulation of the meaning underlying the word "generic" is the phrase "the common descriptive name" as a designation for a product. Neither designation affords trademark protection. This is true even though the name acquires a secondary meaning, that is, the product has become identified with a particular producer. For example, in J. Kohnstam, Ltd. v. Louis Marx & Co., 280 F.2d 437 (Cust. & Pat.App. 1960), the producer claimed that through the advertising of its product over a period of two and one-half years, a secondary meaning became attached to the product. The Court of Customs and Patent Appeals disagreed and held that: "But such a circumstance cannot take the common descriptive name of an article out of the public domain and give the temporary exclusive user of it exclusive rights to it no matter how much money or effort it pours into promoting the sale of the merchandise." (emphasis in text.) 280 F.2d at 440. Indeed, under a provision in the Lanham Act, 15 U.S.C. § 1064, a registered trademark may be cancelled if at any time it "becomes the common descriptive name of an article or substance."
Legal Studies argues that the phrase "MULTISTATE BAR EXAMINATION" is the only means of accurately describing the test prepared for determining the competency of applicants for admission to the bars of several states. In support of their contention that the term is descriptive, Legal Studies points to the testimony of Professor Joe Covington, the Director of Testing for the National Council of Bar Examinations. He testified
Plaintiffs argue that a generic term for the test might be "standard bar examinations" or "multiple choice bar examinations," thereby refuting Legal Studies' contention that there is simply no other way to refer to this particular examination. As a threshold concern, we find the district court erroneously placed the burden of proof on Legal Studies on this issue of whether the mark is or is not generic.
We are of the view that the word "multistate" describes the geographic area over which the test is administered. It informs as to a certain feature of the bar examination — that it is suitable for use in more than one state. Thus, "multistate" is a geographically descriptive word. See, e.g., U.S. Blind Stitch Machine Corp. v. Union Special Machine, 287 F.Supp. 468 (S.D.N.Y.1968) ("U.S." held to be a geographically descriptive term); National Auto Club v. National Auto Club, Inc., 365 F.Supp. 879 (S.D.N.Y.1973), aff'd, 502 F.2d 1162 (2d Cir.1974) ("`National' is a geographic term descriptive in nature since it pertains to a feature of the service such as the purpose or function."). See generally J. Gilson, Trademark Protection and Practice, § 2.07, n. 6 (1979).
Under settled trademark law if the components of a trade name are common descriptive terms, a combination of such terms retains that quality. We note further that plaintiffs also use the initials "MBE" to designate their test is of no consequence. Abbreviations for generic or common descriptive phrases must be treated similarly. F.S. Service, Inc. v. Custom Form Service, Inc., 471 F.2d 671, 674 (7th Cir. 1972).
The phrase "MULTISTATE BAR EXAMINATION" is, in our view, the most appropriate way of describing a test prepared for determining the competency of applicants to the bars of the several states. The phrase accurately describes plaintiffs' examination. The name has a common descriptive quality; it indicates the type of service merchandised and not any particular merchandiser. Thus we hold that plaintiffs' trade name is not protected and that the district court erred in holding to the contrary.
It was not an abuse of discretion for the district judge to deny Legal Studies its attorney's fees and costs in respect to plaintiffs' dismissal of their claim for copyright infringement shortly before trial. The judge gave careful consideration to the issue
The judgment orders are reversed in part and affirmed in part.
H.Rep. No. 94-1476, 94th Cong., 2d Sess. 153 (1976), reprinted at 1976 U.S.Cong. & Ad.News at 5769.
Id. at 561.
Legal Studies believes that Merrell, unlike Washingtonian Publishing is applicable because the 1867 Act under which Merrell was decided extended copyright protection to unpublished works, although Merrell actually involved published material. In any event, under the current regulation, 37 C.F.R. § 220.20, the secure test deposit does make it possible to ascertain the "subject" of the copyright — that a certain examination has been registered — thus satisfying the standard set forth in Merrell.