Conde Nast Publications v. Vogue School of Fashion M.

• Decision Date: 28 May 1952
• Citation: 105 F. Supp. 325
• Parties: CONDE NAST PUBLICATIONS, Inc. v. VOGUE SCHOOL OF FASHION MODELLING, Inc. et al.
• Court: U.S. District Court — Southern District of New York

105 F. Supp. 325

CONDE NAST PUBLICATIONS, Inc. v. VOGUE SCHOOL OF FASHION MODELLING, Inc. et al.

United States District Court S. D. New York.

May 28, 1952.

COPYRIGHT MATERIAL OMITTED

De Witt, Van Aken & Nast, New York City (C. Coudert Nast, New York City, of counsel), for plaintiff.

Maurice R. Whitebook, New York City, for defendants.

RYAN, District Judge.

In this suit Conde Nast Publications, Inc., a New York corporation, seeks to enjoin the continued infringement and unfair use of its trade-name Vogue in connection with the operation by the defendants of the "Vogue School of Fashion Modelling, Inc.", also a New York corporation. In seven other counts, it seeks an injunction and money judgment under Sec. 101(b), 17 U.S.C.A., for infringement by defendants of seven separate copyrights owned by plaintiff.

The first count embraces three separate claims: one arising out of the alleged infringement of the registered trademark Vogue; the second, out of the alleged infringement of the common law trademark Vogue; and the third out of the alleged unlawful appropriation by defendants of plaintiff's name and good will. Since the first claim is based on the Lanham Trade-Mark Act of 1946, 15 U.S.C.A. § 1051 et seq., jurisdiction attaches "without regard to the amount in controversy or * * * lack of diversity of the citizenship of the parties." 15 U.S.C.A. § 1121. This jurisdiction extends to the related unfair competition claims, Waterman Co. v. Gordon, 2 Cir., 72 F.2d 272, and as to these we need not determine which law applies since federal and New York law is the same. Dad's Root Beer Co. v. Doc's Beverages, 2 Cir., 1951, 193 F.2d 77.

Plaintiff and its predecessors have been since 1892 continually engaged in the publication of fashion magazines. The name Vogue was first registered in 1893 by one of plaintiff's predecessors — the Fashion Company, as the title of their magazine. It was re-registered in 1908 by the Vogue Company, which succeeded to the business of the Fashion Company. At that time, the Vogue Company also obtained registration of the name Vogue for use on other publications, not here involved. In 1922, the plaintiff corporation was organized and in the following year it acquired by assignment and purchase all the assets and good will of the Vogue Company, including the right to the use of the registered trade name Vogue. Plaintiff subsequently renewed registration of the name Vogue for use on its publications. In 1948, it again registered the name Vogue for this use on the principal register of the Lanham Act.

In 1936, plaintiff combined with the Vogue magazine another of its publications formerly issued under the name Vanity Fair. It then registered an additional trademark for use on this magazine — Vogue, Incorporating Vanity Fair. At present plaintiff's magazine Vogue is published under the name Vogue Incorporating Vanity Fair. As the record now stands plaintiff owns two registered marks — Vogue and Vogue Incorporating Vanity Fair.

Since its first publication in 1892, the Vogue magazine has been devoted to reporting and portraying women's fashions in clothing, cosmetics, jewelry and accessories. Vogue's prestige and high standing as an authority in the field of fashions and fashion publications since 1919 is not disputed. The plaintiff also publishes a British edition and a French edition of Vogue, as well as the Vogue Knitting Book, Vogue Dressmaking Book and Vogue Pattern Book; and another fashion magazine Glamour. It also manufactures and sells Vogue paper dress patterns.

Vogue has become an important medium for the advertising of merchandise of manufacturers and retailers of women's wear. As part of its merchandising service, it supplies these merchants with countercards and tags bearing the phrases "As Seen in Vogue" and "Vogue Says", and "blow-ups" or enlargements of its covers. All of these are used in promoting the sales of their advertisers' products.

Vogue also includes in its issues a list of schools and camps under the title of School and Camp Directory. It maintains the Vogue School Bureau to advise and consult with parents concerning the advertised schools. But, apart from this service, plaintiff has no association with nor is it in any way engaged in the conduct of these schools.

The principal feature of the magazine is the portraying of current and future fashions, largely by the photographs of living models. Plaintiff maintains its own photographic studio where models are photographed under the direction and supervision of the magazine's fashion editors. Although plaintiff does not employ a staff of models, but hires them through modeling agencies, those whose pictures appear regularly in plaintiff's magazine are known to the trade as "Vogue models." However, plaintiff neither trains nor schools them to become models; it has no license to conduct such a school nor does it contemplate obtaining one.

Special emphasis is placed by Vogue on its covers which are chosen for their beauty and timeliness; eighty percent of them are colored photographs of attractive and strikingly attired live models. The covers play a vital part in pointing up the general character of the magazine and in highlighting the particular fashion trend for the season emphasized in each issue. Much money, artistic talent and imagination is devoted to the preparation of these covers to attract reader attention and to promote circulation. There are twenty issues of Vogue a year; each is copyrighted. Copyrights are also secured on each issue of Glamour and its other publications.

Plaintiff has over a period of years exploited the name Vogue and it has become a valuable property right.

Defendant "Vogue School of Fashion Modelling" is a trade school licensed by the New York State Department of Education to conduct courses in fashion and photographic modeling and "self-improvement" (charm) courses. It does not operate a photography studio and has never published a magazine. It maintains with its school and employment or placement service for those who have been its students.

Defendant, Miss Stone, had at one time been a professional fashion model. She and Miss Fannie Brown Moore incorporated the defendant school in November, 1946. Miss Stone has always been its director. They were equal and sole stockholders until July 1948, when with the purchase of Miss Moore's stock, Miss Stone became and has continued as the sole stockholder, president and director of the school.

The defendants to promote and advertise the school print and issue to prospective students and interested applicants a booklet describing the work of the school and its personnel. This literature is mailed out in reply to inquiries and a supply is kept about the school for distribution to the public. The logotype used on defendants' promotional literature and on letterheads and envelopes is identical to that which was used, until recently, by plaintiff on the masthead of Vogue. The name "Vogue" appears in print enlarged far out of proportion to the balance of the corporate name of the school. Below the word "Vogue", the phrase "School of Fashion Modelling" appears in script letters of a considerably smaller size. The metal plaque on the outside of the building where the school is located contains the same type lettering, both as to form and size.

The defendants also used on their booklets, and building signs or cards to indicate the location of the school, the capital letter "V" with the figure of a woman in modern dress carrying a hat box. This was a crude imitation of an old emblem which had originated with "The Vogue Company" and had been registered by plaintiff and its predecessors since January 1912. The plaintiff's emblem was known in the trade as the "V-girl". Although the registration of it was renewed as late as 1951, it has not been used by plaintiff in recent years. Plaintiff's "V-girl" mark shows the capital letter "V" with the figure of a woman dressed in colonial costume in the center of the letter. Although the figure depicted by the defendants is different, the combination of the capital letter "V" and the figure was selected by the defendants with the clear purpose of intimating the plaintiff's emblem.

Throughout the text of the brochures the school is repeatedly referred to as "Vogue", unaccompanied by any further description or qualification; and the school's president is referred to as "Vogue's" President. The summary of Miss Stone's background in the brochure contains the statement that she had been a "member of Vogue Magazine's London staff." This was not the fact; Miss Stone was never in the employ of or associated with plaintiff or its magazines in any capacity whatsoever. The first issue of this brochure numbering 500 copies was prepared by an advertising agency at the personal direction of Miss Stone and from information supplied by her. It was she who knowingly made this false statement. The second printing numbering 2,000 copies contained some new material and some changes in matter and in the photographs of the school faculty, but the false statement concerning Miss Stone was republished until 1948.

The front cover of a new catalog printed in 1948 retained the old format and "Vogue" alone was repeatedly used throughout the text. The misstatement of Miss Stone's association with the magazine was then omitted. However, on the back cover of the catalog were photographic reproductions of several magazine covers; among them, two from plaintiff's copyrighted magazines — the April 15, 1948 issue of Vogue and the May, 1948 issue of Glamour. This was entirely Miss Stone's idea. At first, it had been her intention to use these reproductions on the front cover but she was dissuaded from this by the advertising agency which assisted in its preparation. 5,000 copies were printed of this catalog. A subsequent catalog was printed and again re-printed (10,000 copies in toto) and although the text remained the same in these...