## Facts

- Harlequin Enterprises Limited, a Canadian publisher, marketed romance paperbacks in series with uniform size and a consistent cover format.
- The dispute concerned Harlequin’s “Harlequin Presents” series, whose consistent cover design and colophon were used across titles and were relied on by repeat purchasers to identify the series.
- Simon & Schuster, owned by Gulf & Western, had long served as Harlequin’s exclusive U.S. distributor.
- After Harlequin notified Simon & Schuster that it would end the distributorship and self-distribute beginning January 1, 1980, Simon & Schuster decided to publish a competing romance line, “Silhouette Romance.”
- Harlequin alleged the Silhouette Romance cover format was virtually identical to the Harlequin Presents format and likely to mislead consumers in mass-market retail settings.
- In March 1980, before Silhouette Romance books reached the market, Harlequin sued under Lanham Act § 43(a) for trade dress infringement and sought a preliminary injunction.
- The district court granted a preliminary injunction barring use of the challenged Silhouette cover format; Gulf & Western appealed.

## Issues

1. Whether Harlequin showed entitlement to a preliminary injunction under Lanham Act § 43(a) based on protectable trade dress in a uniform series cover format and a likelihood of consumer confusion from Silhouette’s similar covers.
2. Whether Harlequin’s timing in seeking injunctive relief barred preliminary relief under laches or related equitable principles.

## Decision

- The Second Circuit affirmed the preliminary injunction.
- The court agreed that the Harlequin Presents cover format could function as protectable trade dress under § 43(a).
- The court upheld the district court’s finding that the overall similarity of the two cover formats created a likelihood of consumer confusion.
- The court rejected the laches-based challenge, concluding Harlequin’s pre-market filing did not reflect prejudicial delay warranting denial of preliminary relief.
- The court accepted that likely confusion and loss of control over goodwill supported irreparable harm at the preliminary injunction stage and that the balance of hardships favored Harlequin.

## Legal Principles

- Trade dress under Lanham Act § 43(a) may include non-registered, non-word indicia of source, including a consistent product-packaging or series cover format that identifies source to consumers.
- Likelihood of confusion in trade dress cases may be assessed by the overall commercial impression of the packaging or design, not by isolating individual elements.
- A plaintiff seeking a preliminary injunction in a Lanham Act case must show (under the applicable circuit standard) a strong showing on the merits or sufficiently serious merits questions plus a balance of hardships tipping in its favor; likely consumer confusion can support irreparable harm.
- Laches generally requires prejudicial delay; prompt suit before widespread marketing of the challenged design weighs against barring preliminary injunctive relief.

## Conclusion

The Second Circuit held that Harlequin made the showing required for preliminary injunctive relief because its uniform series cover format was protectable trade dress and the defendant’s substantially similar competing format was likely to confuse consumers; Harlequin’s timing in filing suit did not bar equitable relief.


Harlequin Enters. Ltd. v. Gulf & W. Corp., 644 F.2d 946 (2d Cir. 1981)