## Facts

- Victor DeCosta, a Rhode Island mechanic, performed as a self-created Western persona at rodeos and public events.
- His persona used a consistent set of identifiers: an all-black cowboy outfit, a St. Mary’s medal on his hat, a chess-knight symbol on his holster, and calling cards bearing the slogan “Have Gun Will Travel” and the name “Paladin.”
- Columbia Broadcasting System (CBS) produced a nationally broadcast television series titled “Have Gun—Will Travel,” featuring a gunfighter named Paladin, dressed in black, and using a chess-knight symbol and the same slogan.
- DeCosta alleged CBS copied and misappropriated his character identifiers and concept.
- After an earlier appellate reversal of DeCosta’s copyright count for failure to satisfy statutory formalities, the district court tried remaining claims for common-law trademark/service mark infringement and unfair competition on the existing record plus stipulated additions.
- The district court found for DeCosta, concluded CBS’s conduct was willful, ordered injunctive relief, and required an accounting of CBS’s profits from the series.
- CBS appealed from the judgment on the trademark/service mark and unfair-competition counts.

## Issues

1. Whether DeCosta had enforceable common-law trademark or service mark rights in the name, slogan, symbol, costume, or their combination associated with his persona, and whether CBS infringed those rights.
2. Whether CBS’s use of similar identifiers in a television character constituted unfair competition, including passing off or likely confusion as to source or sponsorship.
3. Whether applying trademark or unfair-competition law to protect the claimed character concept would improperly confer copyright-like protection inconsistent with federal copyright policy.

## Decision

- The First Circuit reversed the district court’s judgment and remanded with instructions to enter judgment for CBS.
- The court held DeCosta failed to prove protectable trademark/service mark rights enforceable against CBS’s television production in the manner claimed.
- The court found insufficient evidence of likely confusion or actionable passing off between DeCosta’s local live-appearance services and CBS’s nationally branded television series.
- The court rejected using trademark or unfair-competition doctrine to secure broad, effectively perpetual control over a character concept where copyright protection was unavailable due to noncompliance with statutory requirements.

## Legal Principles

- Trademark/service mark law protects source-identifying designations used in commerce; it does not grant exclusive rights in general ideas, dramatic concepts, or a character “package” untethered to demonstrable source identification in a relevant market.
- Unfair competition under the Lanham Act and parallel common-law theories requires a meaningful likelihood of consumer confusion (including confusion as to sponsorship or affiliation), not merely similarity in expressive content or characters.
- Courts will limit trademark and unfair-competition theories that operate as an end run around federal copyright policy by awarding copyright-type control over expressive works or character concepts.

## Conclusion

The First Circuit concluded that similarities between DeCosta’s persona and CBS’s television character did not establish actionable trademark infringement or unfair competition absent proof of protectable source-identifying rights and likely confusion, and it refused to extend trademark or unfair-competition law to provide copyright-like control over an expressive character concept.


DeCosta v. Columbia Broad. Sys., Inc., 520 F.2d 499 (1st Cir. 1975)