## Facts

- Frederick Warne & Co., Inc. (Warne) has published Beatrix Potter children’s books since 1902 and marketed them as “The Original Peter Rabbit Books.”
- Seven Potter stories at issue were conceded to be in the public domain in the United States.
- Warne claimed trademark rights in specific Potter-created illustrations used as identifiers for Warne’s editions, including cover-character designs that did not appear within the books’ text and an interior “sitting rabbit” illustration.
- Warne held federal trademark registrations for three cover designs: the “running rabbit,” “dancing squirrel,” and “reading mouse.”
- Book Sales, Inc. (BSI) marketed “Peter Rabbit and Other Stories,” a single volume combining the seven public-domain Potter stories, using Potter illustrations that Warne alleged were identical or confusingly similar to Warne’s asserted marks.
- Warne sued for trademark infringement and unfair competition under the Lanham Act and for dilution under New York law; the case was before the court on cross-motions for summary judgment.

## Issues

1. Whether illustrations and character/cover depictions associated with a publisher’s editions of public-domain works can function as protectable trademarks under federal and New York law.
2. Whether BSI’s use of those illustrations on a competing compilation was likely to cause consumer confusion as to source, sponsorship, or authorization under the Lanham Act.
3. Whether enforcing trademark and dilution claims over such illustrations improperly extends copyright-like exclusivity over public-domain material.

## Decision

- The court granted Warne partial summary judgment on its trademark infringement and unfair competition theories as to protectable marks.
- The court held that trademark protection may exist in distinctive, source-identifying illustrations even if the underlying stories are in the public domain.
- The court found that BSI’s use of certain Warne-associated illustration marks was likely to cause confusion and supported liability under the Lanham Act.
- The court also found the record sufficient to support relief under New York’s anti-dilution statute for distinctive marks used in direct competition.

## Legal Principles

- Public-domain status of a literary work does not bar trademark protection for particular graphic elements that function as indicators of source for a publisher’s edition.
- Registered trademarks receive a presumption of validity under Lanham Act § 32(1); unregistered marks may be protected under § 43(a) upon proof of distinctiveness and source-identifying function.
- Trademark law may restrict a competitor’s packaging or presentation when the competitor’s use of similar symbols is likely to confuse consumers about source or sponsorship, even though the competitor may lawfully publish the underlying public-domain content.
- Trademark enforcement is permissible alongside public-domain principles when aimed at preventing confusion or dilution of source-identifying marks rather than excluding others from the public-domain expression itself.
- New York’s anti-dilution statute can apply where a distinctive mark’s association is likely to be blurred or its goodwill appropriated through use on competing goods.

## Conclusion

The court held that Warne could enforce trademark and dilution rights in distinctive Peter Rabbit cover and character illustrations that identified Warne as the source, notwithstanding the public-domain status of the underlying stories, and that BSI’s similar use on a competing compilation created a likelihood of consumer confusion.


Frederick Warne & Co. v. Book Sales, Inc., 481 F. Supp. 1191 (S.D.N.Y. 1979)