## Facts

- Simon & Schuster, Inc. published Larry McMurtry’s novel *Lonesome Dove*.
- McMurtry granted Simon & Schuster all rights to print the book and “electronic rights” to use the book for audio recording, while expressly excluding motion-picture, educational-picture, and television rights.
- McMurtry granted the motion-picture and television rights to Motown, which later assigned those rights to Qintex Entertainment, Inc.
- Qintex produced a television miniseries based on *Lonesome Dove* that aired in 1989.
- Qintex granted Dove Books-On-Tape the right to market audiocassettes of the miniseries soundtrack, but did not warrant that it possessed the rights necessary to authorize that audio-only product.
- Simon & Schuster sued, asserting it held the exclusive right to produce and sell audiocassettes based on *Lonesome Dove*.
- The court first entered a temporary restraining order and later a preliminary injunction barring Dove from marketing the challenged audiocassettes.
- The court later granted Simon & Schuster partial summary judgment, concluding Simon & Schuster unambiguously had superior rights to Dove to sell audiocassettes derived from *Lonesome Dove*.
- Separately, Simon & Schuster sought preliminary injunctive relief under the Lanham Act based on Dove’s cassette packaging, which used key visual elements from the book cover: the same typeface, distinctive stylization of the first letters in the title (including differing colors and shapes), and red curlicue/swirled line art around the lettering.
- Simon & Schuster argued these elements functioned as source-identifying trade dress and that Dove’s use was likely to confuse consumers about authorization or affiliation, including as to possible future videocassette products using similar packaging.

## Issues

1. Whether the combination of the *Lonesome Dove* book cover’s typeface, stylized initial-letter treatment, and red curlicue line art could constitute protectable trade dress under § 43(a) of the Lanham Act.
2. Whether Dove’s use of those elements on audiocassette packaging (and potentially on future videocassette packaging) was likely to cause consumer confusion as to source, sponsorship, or authorization, justifying preliminary injunctive relief.
3. Whether the contractual division of rights left Simon & Schuster with superior rights, as against Qintex/Dove, to sell audio-only recordings derived from *Lonesome Dove*.

## Decision

- The court granted partial summary judgment for Simon & Schuster that Simon & Schuster unambiguously had superior rights to Dove to produce and sell audiocassettes derived from *Lonesome Dove*.
- The court granted Simon & Schuster’s motion for a preliminary injunction under the Lanham Act restricting Dove’s use of the book-cover design elements (typeface, distinctive initial letters, and red curlicue designs) on its cassette packaging, and with respect to anticipated similar uses on future videocassette packaging.
- The court determined Simon & Schuster showed a sufficient likelihood of success and a likelihood of consumer confusion to warrant preliminary relief.

## Legal Principles

- Where a rights grant gives a publisher audio-recording rights while expressly excluding motion-picture and television rights, the audio-only rights remain with the publisher and are not automatically transferred with film/TV rights.
- Trade dress under the Lanham Act can protect a combination of nonfunctional visual features—such as typography and ornamental graphics—when the overall look serves to identify a single source.
- A preliminary injunction under the Lanham Act may issue when the plaintiff shows a likelihood of success on the merits and likely consumer confusion; threatened loss of goodwill from confusion supports equitable relief.
- In evaluating confusion, courts consider the similarity of the overall appearance and the marketing context, including whether packaging could lead buyers to believe the product is authorized or affiliated with the rights holder.

## Conclusion

*Simon & Schuster, Inc. v. Qintex Entertainment* held that Simon & Schuster’s contract with McMurtry gave it superior rights to market audio-only recordings derived from *Lonesome Dove* compared to Qintex/Dove’s claimed authority tied to the miniseries, and the court also issued Lanham Act preliminary injunctive relief because Dove’s cassette packaging copied distinctive book-cover design elements in a manner likely to confuse consumers about source or authorization.


Simon & Schuster, Inc. v. Qintex Entertainment, 1990 U.S. Dist. LEXIS 19987 (1990)