
USCA1 Opinion

	




          December 17, 1992                            UNITED STATES COURT OF APPEALS                                FOR THE FIRST CIRCUIT                                 ____________________        No. 91-2211                                   VICTOR DeCOSTA,                                 Plaintiff, Appellee,                                          v.                             VIACOM INTERNATIONAL, INC.,                                Defendant, Appellant.                                 ____________________                     APPEAL FROM THE UNITED STATES DISTRICT COURT                           FOR THE DISTRICT OF RHODE ISLAND                     [Hon. Ernest C. Torres, U.S. District Judge]                                             ___________________                                 ____________________                                        Before                                 Breyer, Chief Judge,                                         ___________                            Coffin, Senior Circuit Judge,                                    ____________________                               and Cyr, Circuit Judge.                                        _____________                                 ____________________            Robert M. Callagy with whom Satterlee  Stephens Burke & Burke  and            _________________           _________________________________        Jan R. Uhrbach were on brief for appellant.        ______________            Richard W.  Petrocelli with whom Mark  J. Hagopian  and Visconti &            ______________________           _________________      __________        Petrocelli Ltd. were on brief for appellee.        _______________                                 ____________________                                 ____________________                       BREYER, Chief Judge.   More than thirty years ago,                               ___________             between 1957 and 1964, CBS provided television stations with             a program called  "Have Gun  -- Will Travel."   The  program             starred "Paladin," a fictional  cowboy who dressed in black,             carried  a derringer  pistol, and  handed out  calling cards             with a picture  of a  chess knight.   More than forty  years             ago,  beginning in  1947, Victor  DeCosta, the  plaintiff in             this  case,  began  to  appear,  as  a  cowboy,  at  rodeos,             hospitals, and charitable events.  DeCosta dressed in black,             carried a derringer pistol, handed out  cards with a picture             of  a chess knight, and  called himself "Paladin."   In 1963             DeCosta  sued CBS,  claiming  it had  unlawfully copied  his             idea.   Eventually, this  court  decided that  CBS may  have             copied DeCosta's idea, but, the laws under which DeCosta had             sued did not  prohibit CBS from doing  so.  This court  held             that  DeCosta had failed to  prove a violation of trademark,             or other relevant, laws.  Columbia Broadcasting System, Inc.                                       __________________________________             v. DeCosta, 377 F.2d 315 (1st Cir.) [hereinafter DeCosta I],                _______                                       _________             cert.  denied, 389  U.S.  1007 (1967);  DeCosta v.  Columbia             _____________                           _______     ________             Broadcasting  System, Inc.,  520  F.2d 499  (1st Cir.  1975)             __________________________             [hereinafter  DeCosta  II],  cert.  denied,  423  U.S.  1073                           ___________    _____________             (1976).                       DeCosta has now sued again.  He has sued Viacom, a             company  that CBS created,  and to which  it assigned re-run             rights for  the old  Paladin programs.   He  again complains             that  CBS copied  his  idea; and  he  says that  Viacom,  by             broadcasting the old CBS  programs, has violated federal and             state  trademark and unfair competition laws.   15 U.S.C.                1114(1), 1125(a).   The district court permitted the suit to             proceed.   DeCosta v. Viacom  Int'l, Inc., 758  F. Supp. 807                        _______    ___________________             (D.R.I.  1991).   A  jury found  in  DeCosta's favor.   And,             Viacom appeals.  In our view, DeCosta's new suit depends for             its success upon relitigating issues that this court already             has decided against him.  And, for that reason, the doctrine             of "collateral estoppel" bars his new claims.  We  therefore             reverse  the  district  court  and order  judgment  for  the             defendant.                                          I                            DeCosta's Basic Legal Problems                            ______________________________                       When Mr.  DeCosta first sued, many  years ago, CBS             claimed  that it  had  not copied  his "Paladin"  character.             Rather,  CBS  said,  both  "Paladin's"  found their  origin,             independently,  in the  same  historical sources.   A  jury,             however,  rejected CBS's  argument.   And,  ever since,  the             courts have proceeded  on the assumption that  CBS, in fact,                                         -3-                                          3             did  copy Mr.  DeCosta.   Why,  then,  has Mr.  DeCosta  not             succeeded in obtaining compensation?                       The answer to this  question ultimately rests upon             the fact that the  law does not always consider  harmful, or             always  make unlawful,  the  copying by  one  person of  the             creation of  another.    Free, uncontrolled copying  may, of             course, prove harmful.   It can  discourage the creation  of             new, valuable ideas, works,  or products, by diminishing the             creator's  monetary  reward.     It  can  cause   commercial             confusion, as a copier  tries to take advantage of  the good             will  attached  to  another's   name.    Free,  uncontrolled             copying, however, may also prove beneficial.  It can promote             the   widespread  dissemination  of   new  works  or  ideas.             "Education  . .  .  proceeds from  a  kind of  mimicry,  and             'progress,' if  it is not  entirely an illusion,  depends on             generous  indulgence  of  copying."    Benjamin  Kaplan,  An                                                                       __             Unhurried View of Copyright 2  (1966).  Some creators,  say,             ___________________________             novelists  or dramatists,  rightly expect  compensation from             those  who buy or use their creations.  Other creators, say,             academic   scientists,   teachers,  or   certain  commercial             innovators (e.g.,  the inventor of  the supermarket)  expect             others to copy, and to use, their ideas free of charge.                                         -4-                                          4                       The  result  is a  need for  balance.   Courts and             legislators  have responded  to  that  need  with  separate,             discrete bodies of intellectual  property law, each with its             own rules.   The laws of patents,  copyright, trade secrets,             trademarks, unfair competition, and misappropriation balance             the  conflicting interests  in protection  and dissemination             differently  in  different contexts  through  specific rules             that  determine just  who will  receive protection,  of just             what  kind, under what circumstances, and for how long.  See                                                                      ___             generally WCVB-TV v. Boston Athletic Ass'n,  926 F.2d 42, 45             _________ _______    _____________________             (1st Cir. 1991).                         Mr. DeCosta's original  legal problem  lay in  his             inability  to  bring his  case  within a  particular  set of             protective  rules.   Copyright  law, for  example, might  in             principle have offered protection for his "Have Gun  -- Will             Travel"  calling card, but he had brought that card into the             "public domain"  by distributing  it widely,  without giving             the  kind  of  specific   "copyright"  notice  that  federal             copyright  law requires.  DeCosta  I, 377 F.2d  at 321.  Nor                                       __________             was he able to show the type of "confusion" between products             essential  to success  on  his trademark,  and  most of  his             other, claims.  DeCosta II, 520 F.2d at 513-15.                             __________                                         -5-                                          5                       Mr.  DeCosta's present  legal problem lies  in the             fact  that he previously sued CBS and lost.  The traditional             legal doctrine of "collateral estoppel" bars relitigation of             any issue that, 1) a party had  a "full and fair opportunity             to  litigate" in an earlier action, and that, 2) was finally             decided  in that action, 3) against that party, and that, 4)             was  essential to  the  earlier judgment.   See  Restatement                                                         ___  ___________             (Second)  of  Judgments     27,  29  (1982).    Each of  Mr.             _______________________             DeCosta's  claims now  before us  depends, for  its success,             upon his  winning an issue  now that he lost  before, in his             litigation against CBS.   In particular we held that  he had             failed to  show a "likelihood" of  buyer "confusion" between             his "Paladin" character  and that  of CBS.   That issue  was             "essential" to  CBS's victory  in the  earlier action.   Mr.             DeCosta  had a "full and fair  opportunity to litigate" that             issue  in the  earlier litigation.   And,  Viacom,  as CBS's             successor, here stands in the shoes of CBS.                        Mr. DeCosta's argument on  this appeal consists of             an  attempt to  escape  the bonds  of "collateral  estoppel"             through  a claim that  legal and factual  changes since 1975             (when we decided DeCosta II)  make the "confusion" issue, in                              __________             essence, a  new one.  See Restatement  (Second) of Judgments                                   ___ __________________________________               27, cmt. c;   28(2)(b),  (4) (collateral estoppel does not                                         -6-                                          6             bar  relitigation  of an  issue  transformed by  significant             factual or legal changes).   After considering Mr. DeCosta's             arguments in detail, however, we find no legally significant             change.                                         -7-                                          7                                          II                                Trademark Registration                                ______________________                       Trademark  law seeks  to prevent  one seller  from             using  the same "mark" as -- or  one similar to -- that used             by another in  such a way that he  confuses the public about             who  really produced the goods (or  service).  Confusion may             prevent the buyer  from obtaining the goods he really wants.             It  may also  jeopardize  the commercial  reputation of  the             senior (first) user, which might be tarnished by association             with the junior (subsequent) user.  To win a trademark case,             a plaintiff must show 1) that he uses, and thereby "owns," a             mark, 2) that the defendant is  using that same or a similar             mark, and 3) that  the defendant's use is likely  to confuse             the  public,  thereby harming  the  plaintiff.   See,  e.g.,                                                              ___   ____             Dieter v. B &  H Indus. of Southwest Florida, 880  F.2d 322,             ______    __________________________________             326 (11th Cir. 1989),  cert. denied, 111 S. Ct.  369 (1990);                                    ____________             WCVB-TV, 926  F.2d at 45; Astra  Pharmaceutical Prods., Inc.             _______                   __________________________________             v. Beckman Instruments, Inc., 718 F.2d 1201, 1205, 1209 (1st                _________________________             Cir. 1983); Pignons S.A. de Mecanique v. Polaroid Corp., 657                         _________________________    ______________             F.2d 482, 486-87 (1st  Cir. 1981); W.W.W. Pharmaceutical Co.                                                _________________________             v. Gillette Co., 23  U.S.P.Q.2d 1609, 1614, 1621 (S.D.N.Y.),                ____________             reaff'd, amended  in other  respects, 1992 U.S.  Dist. LEXIS             _______  ___________________________             10053  (S.D.N.Y. July  11, 1992);  Merritt Forbes  & Co.  v.                                                _____________________                                         -8-                                          8             Newman Investment  Securities, Inc.,  604 F. Supp.  943, 956             ___________________________________             (S.D.N.Y.  1985); but cf.  15 U.S.C.    1051(b) (creating an                               ___ ___             exception, not presently relevant,  to the use requirement).             DeCosta,  as we  have  said,  previously  failed to  show  a             "likelihood" of public "confusion" between the "mark" (i.e.,             the "Have Gun -- Will Travel" and "Wire Paladin" phrases and             the chess knight sign) as he used it, and the same "mark" as             used by  CBS.   DeCosta  argues that  the legal  "confusion"             issue in  the case before us  differs from the issue  in his             earlier 1975 case because, in 1976,  he registered his mark.             Columbia Broadcasting System, Inc.  v. DeCosta, 192 U.S.P.Q.             __________________________________     _______             453 (T.T.A.B.  1976).   The fact  of registration,  he says,             changes the legal "burden of proof" rules, making it legally             easier for  a plaintiff  to show "likelihood  of confusion."             See American  Heritage Life Ins.  Co. v. Heritage  Life Ins.             ___ _________________________________    ___________________             Co., 494  F.2d 3,  10 (5th Cir.  1974).   That legal  change             ___             transforms the old legal issue into a new one.                       DeCosta is right that a change in relevant "burden             of  proof" rules  can  transform a  legal issue,  permitting             relitigation   of  an   issue  that   "collateral  estoppel"             otherwise would bar.   See Restatement (Second) of Judgments                                    ___ _________________________________               28(4).  But,  we can find no such  relevant transformation             here.   Registration  consists of  persuading  the Trademark                                         -9-                                          9             Board to issue an  appropriate "certificate."  15  U.S.C.                1051,  1057(a).     The  relevant  statute   says  that  the             certificate  becomes "prima  facie evidence"  of the  mark's             "registration,"  of its  "validity,"  of  "the  registrant's             ownership," and of the  "registrant's exclusive right to use             the mark  . .  . in  connection with  the goods or  services             specified  in the certificate."   15 U.S.C.    1057(b).  The             statute   also   says   that,   in   certain  circumstances,             "registration"  makes the  "registrant's right  to  use" the             mark "incontestable."  15  U.S.C.   1065.  But,  the statute             nowhere  says  that  registration  makes  it  easier  for  a             registrant (with a conceded right  to use a concededly valid             mark  that  he concededly  owns)  to prove  that  a relevant             buying public may confuse some  other person's mark with his             own.                         Nor are  we aware  of any reason  why registration             here should significantly affect  the proof about confusion.             To decide whether buyers are likely significantly to confuse             two  different   marks,  a  court  will   examine  1)  their             similarity,  2) the  similarity of  the underlying  goods or             services, 3)  the relation  of the "channels"  through which             the  parties  "trade,"  4)  the  relation  of  the  parties'             advertising, 5) the kinds of prospective buyers, 6) evidence                                         -10-                                          10             of actual  confusion, 7)  the defendant's reasons  for using             the mark,  and  8) the  strength  of the  plaintiff's  mark.             Boston Athletic Ass'n v. Sullivan, 867 F.2d 22, 29 (1st Cir.             _____________________    ________             1989);  Volkswagen Aktiengesellschaft  v. Wheeler,  814 F.2d                     _____________________________     _______             812,  817 (1st Cir. 1987); Astra, 718 F.2d at 1205; Pignons,                                        _____                    _______             657 F.2d at 487; Polaroid Corp. v. Polarad Elecs. Corp., 287                              ______________    ____________________             F.2d  492, 495 (2d Cir.), cert. denied, 368 U.S. 820 (1961).                                       ____________             The  fact of registration, at most, relates to one aspect of             the last mentioned factor, the plaintiff's mark's strength.                       The   particular   relation  of   registration  to             "strength"  concerns what trademark  jargon calls "secondary             meaning."   That  term  refers to  a  word's, or  a  sign's,             ability to tell  the public that  the word or sign  serves a             special  trademark  function,  namely,  that  it  denotes  a             product or  service that  comes from a  particular "source."             Words and  phrases, in ordinary, non-trademark, use normally             pick  out, or  refer  to, particular  individual items  that             exhibit the characteristics that the word or phrase connotes             (without  specific reference  to  the item's  source).   The             phrase  "white eagle,"  as ordinarily  used on  a particular             occasion, for example, would pick out from a nearby flock of             birds,  the   bird   that   has   white,   and   eagle-like,             characteristics.  The phrase "white eagle" in trademark use,                                         -11-                                          11             however, would  denote,  or  refer  to,  something  special,             something  other than a white eagle, such as, for example, a             beer  -- "White  Eagle Beer"  --and, in  doing so,  it would             signify that  the item comes from a  particular source, say,             the White Eagle Company, a  Milwaukee brewery.  And, insofar             as the public takes the word, or sign, to refer to a product             or service with  a particular source  (indeed, a product  or             service that, for example, might be neither  white, nor like             an eagle),  the word,  or sign,  has  "secondary meaning."               Registration relates to  strength in that  it helps a  court             conclude  that a particular mark, in fact, does possess such             "secondary  meaning," which is simply to say that it helps a             court  conclude that a particular set of words or signs does             indeed act like  a trademark.  Dieter, 880 F.2d at 329; Wynn                                            ______                   ____             Oil  Co.  v. Thomas,  839 F.2d  1183,  1187, 1190  (6th Cir.             ________     ______             1988); Keds Corp. v. Renee Int'l Corp., 888 F.2d 215, 220-21                    __________    _________________             (1st  Cir. 1989); cf. New Kids on  the Block v. News America                               ___ ______________________    ____________             Publishing, Inc.,  23 U.S.P.Q.2d 1534, 1535  (9th Cir. 1992)             ________________             (describing  the  primary  purpose  of   trademarks  as  "to             identify the source of goods and services").                       That   "strength"   relates   to   confusion   and             registration "relates" (in  this way) to  strength, however,             does not help DeCosta.  The "strength" of DeCosta's mark was                                         -12-                                          12             not an  issue before us  in the  earlier cases.   This court             assumed  in its opinions that DeCosta's mark had a secondary             meaning.  It specifically said that his mark is "distinctive             enough so that proof of secondary meaning is not essential,"             and that, "at least among  some people, plaintiff's name and             card  had come to be associated with  him."  DeCosta II, 520                                                          __________             F.2d  at 513.   It went on to  find no relevant "confusion,"             even  assuming a mark  as strong as  registration might have             forced  it to assume.  Thus, the fact of later registration,             insofar as it helps establish that the mark has a "secondary             meaning," adds nothing significantly new.                       We concede that, in one  of the cases that DeCosta             cites, the  court said  that "registration is  sufficient to             establish  prima facie (1) the  required prior use  (2) of a             registrable mark  (3) which is  likely to  be confused  with                                             ______________________             another's  use of  the same  or a  similar mark."   American                                                                 ________             Heritage, 494 F.2d at 10  (emphasis added).  The  underlined             ________             phrase,  however,   likely  refers  simply  to   the  mark's             "strength,"  in which  case  the phrase  is consistent  with             holdings  in other courts.   Dieter, 880 F.2d  at 329; Wynn,                                          ______                    ____             839 F.2d  at 1187, 1190;  Keds, 888 F.2d  at 220-21.   If it                                       ____             means more than that, we do not understand the theory behind             it, and  we do not  follow it.   Rather, we  agree with  the                                         -13-                                          13             Seventh  Circuit,   that,  in  the  case   before  us,  "the             procedural  advantages conferred  by registration  are [not]             substantial,  at least  in  the context  of determining  the             issue of  likelihood of  confusion.   Therefore,  we see  no             inequity  in  applying  collateral  effect  to  the  [prior]             decision [that likelihood of confusion was not shown]."   EZ                                                                       __             Loader  Boat Trailers, Inc. v.  Cox Trailers, Inc., 746 F.2d             ___________________________     __________________             375, 379  (7th  Cir.  1984).   In  sum, the  "new"  fact  of             registration does  not warrant relitigating  the "likelihood             of confusion" issue.                                         III                                  Reverse Confusion                                  _________________                       DeCosta  next argues that collateral estoppel does             not  bind him  because,  since 1975,  there  has occurred  a             "modification or growth in  legal principles [that] effect a             significant change" in the law. See Commissioner of Internal                                             ___ ________________________             Revenue  v. Sunnen,  333 U.S.  591, 600  (1948); Restatement             _______     ______                               ___________             (Second)  of Judgments   28(2)(b).  His "new" case, he adds,             ______________________             rests upon a  claim that Viacom's  present use of  "Paladin"             would  violate this  "new" law,  not "old,"  pre-1975, legal             doctrine.    Hence,  the  fact  that  the  behavior  of  CBS             (Viacom's predecessor)  was  lawful  before  1975  tells  us             nothing about Viacom's similar behavior today.                                         -14-                                          14                       DeCosta finds these  "new" legal principles  in an             area of trademark law called "reverse confusion," an area in             which  a plaintiff  claims that  the public  will confusedly             think that the plaintiff's product emanates in some way from             the defendant, rather than the (more ordinary) contrary.  An             imaginary example may help explain the concept.                       Suppose  that Tom,  in  1970, established  a knife             company, which  used  the trademarked  name  "SupR-Chopper."             Later, say,  in 1975, Mary established  an electric kitchen-             blender company,  and she used the  same "SupR-Chopper" name             on her kitchen-blenders.  In  1980, Tom sues Mary.   To win,             Tom  must  show "confusion."    In  a traditional  trademark             confusion  case, Tom will  claim that Mary's kitchen-blender             customers may  confusedly think  that he, Tom,  has expanded             into the  kitchen-blender business,  either  directly or  by             "sponsoring"  (i.e.,  authorizing)  Mary to  use  the "SupR-             Chopper"  name.   If  they think  that  he, Tom,  makes  (or             sponsors)  the  kitchen-blender, their  dissatisfaction with             Mary's  kitchen-blenders  may harm  the reputation  of Tom's             knives;  or, even if Mary  makes a fine  product, insofar as             her customers are  moved to buy Mary's  product because they             associate Tom with Mary's  product, they thereby permit Mary             to  take a "free-ride" on  the work and  investment that Tom                                         -15-                                          15             made  in  order to  develop a  positive  image for  the name             "SupR-Chopper."  See,  e.g., S.C.  Johnson  &  Son, Inc.  v.                              ___   ____  ___________________________             Johnson, 175 F.2d 176, 180 (2d Cir.), cert. denied, 338 U.S.             _______                               ____________             860 (1949) (recognizing  trademark owner's legitimate  claim             to protection from "the possibility that the trade practices             of the second user  may stain the owner's reputation  in the             minds  of his  customers");  Triangle Publications,  Inc. v.                                          ____________________________             Rohrlich,  167 F.2d  969,  972 (2d  Cir. 1948)  (prohibiting             ________             defendant's attempt to profit from "the erroneously supposed             sponsorship of the plaintiff").                         The  less  typical,   "reverse  confusion,"   case             involves somewhat different circumstances.   In such a case,             Tom is  worried that his knife customers  will wrongly think             that Mary  makes, or  "sponsors" his, Tom's,  kitchen knives             (not  that  he  makes   Mary's  blenders).    This  "reverse             confusion," just like  ordinary confusion, may hurt Tom.  If             Mary's  kitchen-blenders  work  badly,  for  example,  Tom's             potential customers may decide that Tom's knives come from a             poorly managed company, and  they may hesitate to  buy them.             See, e.g., Plus  Products v. Plus Discount Foods,  Inc., 722             ___  ____  ______________    __________________________             F.2d  999, 1003-04  (2d  Cir. 1983)  (recording  plaintiff's             concern that  reverse confusion  might  lead to  plaintiff's             "reputation   for   high   quality   merchandise"   becoming                                         -16-                                          16             "tarnished  because of  [defendant's] bargain  basement, no-             frills image"); Banff, Ltd. v. Federated Dep't Stores, Inc.,                             ___________    ____________________________             841 F.2d 486, 490 (2d Cir. 1988) (similar).                        The problem for DeCosta is that, as illustrated by             this  simplified  example,  "reverse  confusion"  is nothing             particularly  new. The principal  trademark statute does not             speak  of "ordinary,"  or "reverse,"  confusion.   It refers             simply  to  copying that  is  "likely  to cause  confusion,"             without dividing confusion into types.  15 U.S.C.   1114(1).             It protects the  holder from the  harm that confusion  might             cause,  without specifying  whether that  harm flows  from a             copier taking advantage of the holder's "good will," or from             the copier  potentially reducing the value of  the mark, say             by associating the holder with  the copier's own "bad" name.             The  leading case on the  subject, Big O  Tire Dealers, Inc.                                                _________________________             v. Goodyear Tire  & Rubber  Co., 561 F.2d  1365, 1371  (10th                ____________________________             Cir. 1977),  cert. dismissed, 434 U.S.  1052 (1978), decided                          _______________             two years  after our decision in DeCosta II, made absolutely                                              __________             clear that a  trademark holder  could base a  claim on  such             "reverse  confusion."  But, in  doing so, the  court did not             suggest  that  its holding  represented  a  totally new,  or             novel,  principle.   The  jury instruction  which it  upheld             followed the  language of   1114(1).  See id. at 1371.  And,                                                   ___ ___                                         -17-                                          17             Big  O reasserted  a  principle set  forth  in a  case  that             ______             DeCosta   invoked  at   length   in   DeCosta   I,   namely,                                                   ___________             International News  Services v.  Associated Press,  248 U.S.             ____________________________     ________________             215 (1918).  In that case, in  addition to deciding that the             defendant had unlawfully misappropriated the news product of             the  plaintiff's investigations, the  Court found a wrongful             and "significant .  . . false representation" that that news             product  was derived from defendant's own work.  Id. at 242.                                                              ___             Justice Holmes'  concurrence rested  entirely on the  "false             representation"   aspect,  which   he   viewed   as   unfair             competition:                       The    ordinary    case    [of    unfair                       competition]   is    palming   off   the                       defendant's product  as the plaintiff's,                       but the  same evil  may follow  from the                       opposite   falsehood  --   from  saying,                       whether in words or by implication, that                       the    plaintiff's   product    is   the                       defendant's, and that .  . . is what has                       happened here.             Id. at 247; see  also Banff, 841 F.2d at 490 (observing that             ___         ___  ____ _____             trademark  law's  traditional  objectives,   concerned  with             ensuring that good will  remains attached to those  who earn             it,  are equally implicated  in "reverse"  and "non-reverse"             confusion cases).   DeCosta cannot therefore  claim that the             principle (that  trademark law  protects  against a  buyer's             _________             being led to believe, wrongly and harmfully, that the copier                                         -18-                                          18             is the source  of the holder's  product) was unavailable  to             him or that he was not aware of it in his initial case.                        DeCosta's more plausible claim  is that the law of             "reverse   confusion"   has  itself   undergone  significant             expansion since 1975.   Several dicta in  the Second Circuit             suggest  that a plaintiff,  claiming reverse  confusion, can             recover for harm suffered, not because the buying public may             wrongly  believe that  the defendant  makes or  sponsors the             plaintiff's product, but simply  because the public  wrongly             believes  that the  plaintiff copied  the defendant's  name.             See  Banff, 841 F.2d at  490; Lobo Enters.,  Inc. v. Tunnel,             ___  _____                    ___________________    _______             Inc., 693 F.  Supp. 71,  77 (S.D.N.Y. 1988);  PAF S.r.l.  v.             ____                                          __________             Lisa Lighting Co.,  712 F. Supp.  394, 410 (S.D.N.Y.  1989);             _________________             W.W.W. v. Gillette, 23 U.S.P.Q.2d at 1615.  To return to our             ______    ________             example, it is as  if Tom could win his trademark  case even             if  everyone knows  that Tom  and Tom's  knife  company have             nothing whatsoever to do  with Mary's kitchen-blenders.  Tom             might still  win because the public might wrongly think that             Mary thought of the "SupR-Chopper" name first and Tom copied             her idea for his  trademark.  If the public  wrongly thought             that Tom "pirated" the  name, they might think less  well of             Tom, who would thereby suffer a harm to his good reputation.             Were this theory  the law,  Tom might win  a trademark  case                                         -19-                                          19             against Mary, even if  Mary used the "SupR-Chopper"  name to             label a product that  nobody thought had anything whatsoever             to do  with kitchen knives, say,  helicopters (called "SupR-             Choppers"), for the public still might wrongly believe Tom a             "pirate."                       We  agree with  DeCosta that  one can  find dicta,             more recent than 1975, that seem to offer support for such a             theory.   And, we also  agree that such  a theory might have             offered  him  a  basis for  success,  had  he  known of  its             availability before 1975.  The fatal  problem for DeCosta in             respect  to this "change in  the law," however,  lies in our             view that  this change is  not sound law.   We find  that it             does not correctly state the law of trademarks.                       Our  reasons  for  this  conclusion  are  several.             First,  to adopt  this theory  would undermine  an important             limitation central to the  law of trademarks, the limitation             of trademark protection to the  protection of marks as  used                                                                 ________             on  particular goods  to identify  their source  or sponsor.             See  United Drug Co. v. Rectanus Co., 248 U.S. 90, 97 (1918)             ___  _______________    ____________             (trademark  rights are  not "right[s]  in  gross").   As the             Supreme Court wrote  many years ago, in  Hanover Milling Co.                                                      ___________________             v. Metcalf, 240 U.S. 403, 415 (1916):                _______                       [W]here  two  parties independently  are                       employing  the  same  mark  .  .   .  in                                         -20-                                          20                       separate markets wholly  remote the  one                       from  the other,  the question  of prior                       appropriation is  legally insignificant,                       unless  at  least  it  appear  that  the                       second  adopter  has  selected the  mark                       with   some   design  inimical   to  the                       interests of the first  user, such as to                       take  the benefit  of the  reputation of                       his goods, to forestall the extension of                       his trade, or the like.               Thus, at  present the law often  permits a person to  take a             pre-existing  name or mark and use it on a different product             in a different market.  See, e.g., McGregor-Doniger, Inc. v.                                     ___  ____  ______________________             Drizzle,  Inc.,  599  F.2d  1126 (2d  Cir.  1979)  (allowing             ______________             manufacturer  of expensive  women's  coats to  use trademark             "Drizzle," despite prior registration of "Drizzler" mark for             plaintiff's cheaper  golf jackets);  King Research, Inc.  v.                                                  ___________________             Shulton, Inc., 454 F.2d  66 (2d Cir. 1971) ("Ship  Shape" on             _____________             hairspray did not infringe registered "Ship Shape" trademark             for comb and brush  cleaners).  If "falsely being  thought a             pirate" were an actionable  harm, no one could safely  use a             mark  ever  previously  used   by  another,  no  matter  how             different the  product, place  of sale,  or class  of buyer.             Mary  the helicopter maker, for example,  would have to make             certain that  no small  company anywhere  had used the  name             "SupR-Chopper" on  any product before she  attached the name             to her  helicopter product, lest  some of, say,  Tom's knife             customers believe that she, not Tom, had had the idea first.                                         -21-                                          21             The specter of resulting lawsuits, inhibitions on the use of             names,  and a  reversal  of  present  presumptions  favoring             linguistic  freedom (in  different fields)  cautions against             what would seem a fairly radical change in the law.                       Second,    other,    non-trademark   law    offers             specifically  tailored protection  against the  most obvious             harms  that   may  befall  the   falsely  labeled  "pirate."             Copyright law,  for example,  protects the initial  users of             certain  names and  phrases  against any  copier.   We  have             mentioned the  possibility that DeCosta might  have obtained             such protection, at least for his calling card.  See DeCosta                                                              ___ _______             I, 377 F.2d at 321.  But, he did not do so.               _                       A common  law  tort, the  law against  "commercial             disparagement"  (also known  as "injurious  falsehood"), may             also  protect   a  trademark   holder   against  the   false             implication that he has "pirated" the work of another, where             the defendant intends such harm.   See, e.g., Public  Ledger                                                ___  ____  ______________             v.  New York  Times,  275 F.  562,  565-66 (S.D.N.Y.  1921),                 _______________             aff'd,  279  F.  747,  cert.  denied, 258  U.S.  627  (1922)             _____                  _____________             (allowing  relief  for  defendant's  assertion  that it  had             copied   "with  permission"   from   the  London   Times  as             disparaging  plaintiff's  rights, if  plaintiff  could prove             that,  as defendant  knew, plaintiff  had --  and advertised                                         -22-                                          22             itself  as  having  --  a  contract with  the  London  Times             guaranteeing it  exclusive copying rights); Big  O, 561 F.2d                                                         ______             at 1373-74.                         Both   these  areas   of  law,   however,  contain             carefully  crafted conditions  and limitations,  designed to             prevent their becoming vehicles  for unduly limiting the use             of words,  phrases,  and  other forms  of  speech  where  no             serious  harm,  in  fact,  will likely  occur.    See, e.g.,                                                               ___  ____             copyright law's "fair use"  exemption, 17 U.S.C.   107;  see                                                                      ___             also  Big  O,  561  F.2d  at  1373  (outlining  the  special             ____  ______             requirements of "commercial disparagement," namely (1) false             statement,  (2)  malice,  and  (3) special  damages).    The             existence  of  these  other  carefully  tailored   types  of             protection also cautions strongly against  introducing, into             trademark  law, a  kind  of overriding  concept such  as the             actionable harm  of "falsely being thought  a pirate," which             concept could well upset the balance between those interests             favoring  "protection"  and  those  favoring  free  use  and             dissemination   --  a   balance   carefully   developed   by             legislatures, and slowly by courts, over many years.                       Finally, the leading case about trademark "reverse             confusion,"   Big  O,   supra,  suggests   that  "commercial                           ______    _____             disparagement"   law,   not  traditional   "trademark  law,"                                         -23-                                          23             provides proper legal relief for the  harm of "falsely being             thought  a pirate."   See id.  at 1373-74.   Insofar  as the                                   ___ ___             court discusses this  latter kind of harm, it does so in the             context  of  a  "commercial  disparagement"  type  of  tort.             Insofar   as   the   court   discusses   trademark  "reverse             confusion," it does so in the context of confusion about the             source  of the product,  not the  source of  the name.   The                            _______                           ____             court  does explain why, in its view, trademark law does not             limit recovery to victims  of "passing off."  And,  in doing             so,  it says that, otherwise, a large firm could simply take             someone else's  mark and  develop a new  "secondary meaning"             for  it.   But, nothing  in this  explanation suggests  that             "falsely  being thought  a  pirate"  automatically  produces             recovery.                       For  these  reasons, insofar  as  the doctrine  of             "reverse  confusion"  may  be  thought  significantly  "new"             (reverse  confusion about  "piracy"), we  do not  accept it.             Insofar as we accept  it (reverse confusion involving source             or sponsorship), we do not believe  it is significantly new.             Hence, we do  not believe that there are changes  in the law             here that can overcome the effects of "collateral estoppel."                                          IV                                   Factual Changes                                   _______________                                         -24-                                          24                       DeCosta argues that facts have changed since 1975.             Hence,  the   issue  of  "confusion  now"  is  significantly             different  than  the  issue   of  "confusion  then."    And,             "collateral  estoppel" does  not  bar its  litigation.   See                                                                      ___             Restatement  (Second) of  Judgments    27, cmt.  c.   In the             ___________________________________             earlier cases DeCosta proved that he presented the character             "Paladin"   at   rodeos   and   through   various   personal             appearances.   CBS presented the character  "Paladin" in its             television programs.   This  court held  that  few, if  any,             buyers  of either  "product" (rodeo/personal  appearances or             television  programs)  would  likely  believe   that  either             DeCosta or  CBS was the  "source" of the  other's "service."             That  is to say, few, if any, television viewers were likely             to believe that DeCosta produced the TV programs and few, if             any, rodeo  (or personal  service) customers were  likely to             believe  that CBS  provided  the rodeo,  or other  personal,             appearances.  The question is whether the factual changes to             which  DeCosta now  points are  such that litigation  of the             "confusion"  question  represents a  significantly different             factual issue.  See id.                             ___ ___                       After  reviewing  the  record,  we  conclude  that             DeCosta   has  not   presented  evidence   of  significantly             different circumstances for two reasons.  First, much of his                                         -25-                                          25             evidence  amounts to no more than added efforts to prove the             same "ultimate  facts" he  failed to prove  the first  time.             Thus,  DeCosta found  several people  (and produced  surveys             showing  other people) who think he has something to do with             the CBS television  program.  He provided  four letters from             persons who referred  to him  as "Paladin."   He provided  a             witness who  said he  thought DeCosta was  impersonating the             television  program character.   He introduced  a newsletter             that says he  is "from the T.V. series."   He testified that             he had met people who thought he was "connected" with the TV             series and was an  "impersonator" or an "imposter."   One of             his surveys  said that about  half of the  individuals shown             his picture thought he  was connected with the TV  series or             that  it was "sponsoring" him.   And, he  produced a "public             relations" expert witness who testified that people would be             "confused."    This evidence does not help DeCosta, however,             because,  in context, it  seems designed  to prove  the same             ultimate fact  -- "confusion"  -- that  he  failed to  prove             before.   As the Restatement of Judgments points out, when a                              ________________________             party  has litigated  such an  "ultimate fact,"  and failed,             "new evidentiary facts may not  be brought forward to obtain             a different determination of  that ultimate fact."  Id.   We                                                                 ___             simply do not  see why this kind of evidence  could not have                                         -26-                                          26             been  provided  the  first  time.   Nothing  in  the  record             convincingly  explains why  those who  saw DeCosta  when the             Paladin television  program was current would  have been any             the  less  "confused"  than  those  who  now  see  him  when             "Paladin" is the subject of old television reruns.                         Second,  DeCosta provided  evidence of  his having             expanded his  own  activities  since 1977.    He  says,  for             example,  that since  that time,  he has  distributed 60,000             more calling  cards (having distributed about 300,000 before             1977);  15,000  more photographs  (having  distributed about             20,000 before  1977); 15,000 bumper stickers,  and 2800 pens             with  a  Paladin   legend.    He  has   made  more  personal             appearances at rodeos and ice cream stores, and he  appeared             on  two   television  talk  shows  and   in  one  television             commercial.  A picture of him in  costume appeared once in a             horsebreeders' magazine.  And, he has objected several times             to  others using slogans such as "Have Cup, Will Travel" (by             Dunkin Donuts) and "Have Guns, Will Travel" (by the U.S. Air             Force).                        This evidence  basically  shows no  more than  the             same kind  of activity in which  DeCosta previously engaged.             And,  we  do  not  see how  it  can  bring  him outside  the             "collateral estoppel"  bar.  Even  were he to  have provided                                         -27-                                          27             evidence of his own,  far greater, expansion into,  say, the             television  business, that  evidence would  do him  no good.             The  litigated  holding of  "no  confusion"  in the  initial             DeCosta cases amounts to a holding that DeCosta had no legal             right to exclude others from using his mark in the field  of             television.  Moreover, DeCosta has conceded  that CBS/Viacom             has used the "Paladin" mark in that field before, and after,             he brought his initial cases.  Further,  the record provides             no evidence at all that, since  1977, CBS or Viacom has used             the mark in "bad faith," i.e., with an intent or expectation             of causing  confusion or  "forestalling expansion  under the             mark  by the prior user"  (in a different  field) or harming             DeCosta's "reputation or good will." See Restatement (Third)                                                  ___ ___________________             of  Unfair Competition    19(a),  cmt. d  & illus.  3 (Tent.             ______________________             Draft No. 2, 1990); GTE Corp. v. Williams, 904 F.2d 536, 541                                 _________    ________             (10th  Cir.),  cert. denied,  111  S.  Ct.  557  (1990)  (in                            ____________             assessing  whether second  user acted  in bad  faith, "[t]he             ultimate  focus is on whether the second user had the intent             to  benefit  from the  reputation or  goodwill of  the first             user."); Triumph Hosiery Mills, Inc. v. Triumph Int'l Corp.,                      ___________________________    ___________________             308 F.2d 196, 200  (2d Cir. 1962) (similar); El  Chico, Inc.                                                          _______________             v.  El Chico  Cafe,  214  F.2d  721,  726  (5th  Cir.  1954)                 ______________             (similar);   James  M.   Treece,  "Security   for  Federally                                         -28-                                          28             Registered  Mark Owners  Against Subsequent Users,"  39 Geo.                                                                     ____             Wash. L. Rev. 1008, 1018 (1971) (mere knowledge of the first             _____________             user's  prior use  should not  be regarded  as bad  faith in             cases  where "the second user  [is] in fact  remote from the             first   user's   market  [and]   where  consumers   are  not             confused");  cf. Mead  Data  Central, Inc.  v. Toyota  Motor                          ___ _________________________     _____________             Sales,  U.S.A., Inc.,  875 F.2d  1026, 1037  (2d  Cir. 1989)             ____________________             (Sweet,  J., concurring) (in statutory dilution context, bad             faith "requires a showing  that the junior user adopted  its             mark hoping  to benefit  commercially from  association with             the  senior mark.").   Indeed,  CBS/Viacom might  reasonably             have relied  upon our prior  final judgment as  holding that             their activities did not cause "confusion"  or significantly             harm "reputation or good will."   Cf. Restatement (Third) of                                               ___ ______________________             Unfair Competition   19, cmt. d ("Good faith reliance by the             __________________             subsequent   user  on   an  opinion   of  counsel   is  also             relevant.").                         All this being so,  as far as the present  case is             concerned,  it is CBS and Viacom who have the prior right to             use  the mark  in television,  not DeCosta.   And,  for that             reason,  insofar  as  DeCosta's  expansion  into  television                                   _________             creates  "confusion," he  has no  legal basis  for recovery.             See  United Drug  Co. v.  Rectanus Co.,  248 U.S.  90 (1918)             ___  ________________     ____________                                         -29-                                          29             (within regional market, defendant first user in that market             had  priority over  plaintiff  earlier user  in a  different             region  who now sought to enter that market); Value House v.                                                           ___________             Phillips  Mercantile  Co., 523  F.2d  424  (10th Cir.  1975)             _________________________             (same, where plaintiff  registered its mark after  defendant             had begun to use its); compare Dawn Donut Co. v. Hart's Food                                    _______ ______________    ___________             Stores, Inc., 267  F.2d 358, 360  (2d Cir. 1959)  (plaintiff             ____________             who registered  before defendants  began to use  their mark,             and had  previously operated  in defendants' market  and not             abandoned its  mark in that market,  retained priority); see                                                                      ___             also  Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d             ____  _______________    _________________________             1225, 1231 (3d Cir. 1978)  ("Priority depends not upon which             mark succeeds in first  obtaining secondary meaning but upon             whether the  plaintiff can prove  by a preponderance  of the             evidence that his mark  possessed secondary meaning [and, we             add, that there  was a potential likelihood of confusion] at                                                                       __             the time  the  defendant commenced  his use  of the  mark.")             _________________________________________________________             (emphasis added).                           Returning to our  example, it  is as  if Tom,  the             kitchen knife maker, sued Mary the  helicopter manufacturer,             and  a court determined that their  use of the same name did             not create confusion.  Suppose that Mary continues, in  good             ___             faith,  to use  the mark  on her  helicopters, but  Tom then                                         -30-                                          30             expands into the helicopter  business.  At that  point, even             if  buyers now confuse the source of the two products (Tom's             helicopters and Mary's helicopters), Tom cannot recover from             Mary, for it  is Mary, not  Tom, who  has the legally  prior             right to use the name in that field.                       DeCosta reminds  us  that, since  findings  as  to             likelihood  of confusion  can turn  on the  relation  of the             parties' uses, a prior finding of no likelihood of confusion             will not  always bar a subsequent action if circumstances of             the  parties' uses change.   See Sarah Coventry,  Inc. v. T.                                          ___ _____________________    __             Sardelli  & Sons,  Inc., 526  F.2d 20,  23 (1st  Cir. 1975),             _______________________             cert.  denied, 426 U.S. 920 (1976).  The problem for DeCosta             _____________             is  that his  evidence does not  show a  significant change.             And, in any  event, that change would do a plaintiff no good             where  it consists of his  expansion into a  field where the                                   ___             record  of  litigation  indicates  that  the  defendant  has                                                           _________             priority in using the mark.                         For these  reasons, the  judgment of  the district             court is                       Reversed.                       _________                                         -31-                                          31
