Artype, Incorporated v. Zappulla
| Decision Date | 03 January 1956 |
| Docket Number | Docket 23500.,No. 110,110 |
| Citation | 228 F.2d 695 |
| Parties | ARTYPE, INCORPORATED, Appellant, v. Joseph ZAPPULLA, doing business as Art-Type Service, Appellee. |
| Court | U.S. Court of Appeals — Second Circuit |
I. Irving Silverman, Chicago, Ill., Edmund F. Lamb, New York City, for appellant.
Rosario Ingargiola, Brooklyn, N. Y., for appellee.
Before HAND, FRANK and MEDINA, Circuit Judges.
The complaint in this case was upon two claims for relief: one, for the infringement of Registered Trade-Mark No. 509850; the other, for unfair competition. The trade-mark was the word, "Artype," "when used upon letters, symbols, marks, insignia, and similar matter capable of conveying intelligence, applied by various reproducing processes to transparent self-adhering sheets, adapted to be cut up for application of desired portions of said matter to various advertising." The claim for relief for unfair competition was based on the "plaintiff's common law rights in its trademark and trade name * * * and unfair competition with the plaintiff and agents of the plaintiff." The facts, as developed on the trial and as found in the judge's opinion, were in substance as follows. The plaintiff is a corporation, organized under the laws of the State of Illinois, the defendant is a citizen of New York and the controversy is alleged to involve more than $3,000. Beginning in December, 1944, the plaintiff has made and sold a transparent acetate sheet, containing about 800 different samples of letters of the alphabet, numbers and various symbols in different sizes and types. It attempts to offer virtually all possible forms of words, letters, diagrams and signs that may be used in preparing advertising matter. The buyer cuts from the sheet such letters or symbols as he may wish and makes his copy out of them, pasting them on to a sheet of his own by means of an adhesive on the back of the acetate sheet. When the copy is complete, he photographs it and reproduces it in quantity by any one of a number of well-known methods. The plaintiff has customers in this state and elsewhere; it does business under its trade-mark, "Artype."
The defendant is a small dealer doing business in the city of New York. He owns two typewriting machines of a peculiar kind, called "Vari-Type," that enable him to prepare copy for advertisements in varying designs of type. His customers send to him their copy to be reproduced, and select the type whose design they prefer from among those that the machines provide. Any symbol that these do not have the defendant buys from another company called, "Fototype," a competitor of the plaintiff. The copy so prepared the defendant sells to the customer, who reproduces it in any of the ways that the plaintiff's customers reproduce the copy that they make up out of the acetate sheets. The defendant does his business under the name, "Art-Type"; the plaintiff distributes its goods in the east through a subsidiary, "Trans-Art, Inc." The defendant's use of "Art-Type," has resulted in some confusion: that is, two or three times a week he gets a call from prospective customers of the plaintiff, inquiring whether he sells "Artype." To this he always answers that he does not sell that product; and that, if they want to buy it, they should call "Trans-Art." The plaintiff has asked him to discontinue the use of his mark, but he has refused. Upon the trial he stipulated that the trade-mark was "valid and subsisting * * * and in operation." The judge nevertheless declared the trade-mark invalid, because it was descriptive, and denied any relief on the charge of unfair competition for the same reason.
First, as to the claim for relief, based upon the registered trademark. In view of the defendant's stipulation that the mark was valid, he is in no position to insist upon an affirmance of the judgment that it is not, nor do we think that, in analogy with what the Supreme Court has sometimes said in the case of a patent, we are called upon to pass upon the issue on our own initiative. A trade-mark is indeed often spoken of as a monopoly; but in fact it is only part of the protection of the owner's business from diversion to others by means of deceit. It will be enough if we refuse to enter a judgment based upon the defendant's concession, and reverse the judgment, dismissing the complaint on the first claim without prejudice. This we may do because, as will appear, we hold that the plaintiff is entitled to an injunction on the second claim, determined by the same considerations as would condition any injunction on the first. This disposition of the first claim is, moreover, not a mere matter of form, because the supposed infringement happened in New York, and the law of that state alone is relevant to a decision of the second claim, which is not the case of the first claim, based as it is upon a registered mark.
Coming then to the second claim, the question is whether under the law of New York "Artype" is such a mark as will protect the plaintiff from the defendant's use of "Art-Type" as unfair competition. The answer turns upon whether "Artype" is so exclusively "descriptive" of the plaintiff's acetate sheets that it does not indicate the plaintiff as their source. We think that it is not. A good deal could be said for the opposite conclusion, if the 800 letters and symbols on the sheet had been selected with the purpose of pleasing the taste of the buyers, or of those who might read their advertisements. Perhaps the plaintiff may have chosen some of what it put on the sheets because of such an "artistic" appeal, but that cannot apply to the sheets as wholes, for much, if not most, of their contents was compiled for purely utilitarian reasons. Certainly the record does not show that the sheets can properly be described as "art" sheets. In all actions for unfair competition the controlling consideration is whether the second-comer's name, mark or make-up is close enough to the first-comer's to make it likely that those who deal with the first will understand that the first is the source of goods in fact emanating from the second. Completely "descriptive" marks do not ordinarily indicate the source of the goods, but at times they may come to do so, and when they do, they get that "secondary meaning" which will...
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