Joshua Meier Company v. Albany Novelty Mfg. Co.

• Decision Date: 30 July 1956
• Docket Number: No. 335,Docket 23866.,335
• Citation: 236 F.2d 144
• Parties: JOSHUA MEIER COMPANY, Inc., Plaintiff-Appellant, v. ALBANY NOVELTY MANUFACTURING CO., Defendant-Appellee.
• Court: U.S. Court of Appeals — Second Circuit

236 F.2d 144 (1956)

JOSHUA MEIER COMPANY, Inc., Plaintiff-Appellant, v. ALBANY NOVELTY MANUFACTURING CO., Defendant-Appellee.

No. 335, Docket 23866.

United States Court of Appeals Second Circuit.

Argued April 10, 1956.

Decided July 30, 1956.

Samuel J. Stoll, Jamaica, N. Y., for plaintiff-appellant.

Morton Amster, New York City (Simon Queen, Boston, Mass., of counsel on the brief), for defendant-appellee.

Before CLARK, Chief Judge, and HINCKS and LUMBARD, Circuit Judges.

LUMBARD, Circuit Judge.

The plaintiff and defendant in this action are both engaged in the manufacture and sale of display and photograph albums, transparent sheet holders, card and passport cases, book covers and similar items. The plaintiff is a New York corporation; the defendant is a Massachusetts corporation doing business in New York. The plaintiff complains of the defendant's copying of portions of its copyrighted trade catalog and of its use of various registered and unregistered trademarks. Judge Noonan denied plaintiff's motion for a preliminary injunction and from this order plaintiff appeals.

The plaintiff's complaint set out four causes of action. The first alleged infringement of the plaintiff's copyrighted trade catalog. The plaintiff and defendant sell many items which are substantially the same. In 1951, 1952, and 1953 the plaintiff published catalogs numbered 52, 53, and 54 respectively. Each of these catalogs was registered with the Register of Copyrights and contained the statutory copyright notice. The plaintiff's catalogs consisted primarily of descriptions of the various items it offered for sale together with photographs of some of the items, price lists, catalog numbers, and other information of interest to prospective customers. In December 1954 the defendant published its own "Anco Catalog of Visual Displays" similarly describing the items it offered for sale. The plaintiff alleges that much of the material contained in the defendant's catalog, particularly its descriptions of display albums, card cases and other articles of merchandise, was copied from the plaintiff's catalogs.

For its second cause of action the plaintiff alleged the infringement of two registered trademarks. Since 1937 the plaintiff has used as a trademark "V.P.D." the initial letters of the words "Visible Protects Displays." These letters are prominently featured in plaintiff's catalog, in some instances as part of the words they represent, and in other instances merely in the form of "V.P.D." The trademark "V.P.D." was registered in 1938. In December 1954, the defendant commenced to use the letters "A.V. D." representing "Anco Visual Displays." This mark is prominently featured in the defendant's catalog, but it always appears with the letters arranged vertically and the word "Anco" spelled out horizontally after the initial letter "A." The plaintiff alleges that the defendant's use of "A.V.D." infringes the plaintiff's mark "V.P.D."

The plaintiff has also used since 1950 the name "Spel-Binder" to identify its display albums. "Spel-Binder" was registered as a trademark in 1952. Since December 1954, the defendant has used the name "Speed-Binder" to designate similar articles of merchandise. Plaintiff alleges that "Speed-Binder" infringes "Spel-Binder."

For its third cause of action the plaintiff alleges a false designation of origin in violation of 15 U.S.C.A. § 1125(a). The plaintiff complains under this heading of the defendant's infringement of the two registered trademarks described above and of five unregistered trademarks: "Pigrain" and "Leatherlen" to describe a variety of plastic album covers, "Easel-Aide" to describe supporting brackets for display albums, "Albumettes" to describe pocket-size photograph albums, and "Vis-O-Top" for transparent desk pads. The defendant uses "Pigrain," "Leatherlen," "Easel-Aid," "Album-Ites," and "Vis-O-Top" to describe similar items.

The fourth cause of action alleges that the practices complained of in the first three causes of action also constitute unfair competition under New York law in that these practices are calculated to mislead the purchasing public into the belief that the goods of the defendant are the goods of the plaintiff.

Judge Noonan denied the motion for a preliminary injunction in a brief memorandum in which he found that "There remains at least a doubt as to the plaintiff's ultimate success." In view of this finding he concluded that "since granting the motion would grant the plaintiff a substantial portion of the relief sought, and further since the plaintiff has not established that it would suffer irreparable injury if such relief is not granted at this time, a balancing of the equities in this matter requires the court to deny this motion."

This court's function in reviewing the grant or denial of a preliminary injunction is a limited one. A motion for such relief is directed to the sound discretion of the district judge whose decision will not be reversed unless an abuse of discretion is apparent. American Visuals Corp. v. Holland, 2 Cir., 1955, 219 F.2d 223.

The exhibits and affidavits leave little doubt that the defendant deliberately copied a large part of the plaintiff's catalogs. The similarities are so numerous and substantial as to give rise to a strong inference of copying. In many instances defendant uses exactly the same language in the description of similar items; in other cases the language is the same except for the inversion of certain words or the substitution of one word for another. This crude effort to give the appearance of dissimilarity is itself evidence of copying. It is true that both plaintiff and defendant were describing similar items in simple non-technical words and that substantial similarity in language would not necessarily indicate copying. But the defendant has used in one instance exactly the same stock number to designate one of its products, a lucite "easel-aide." The use of this stock number, "LE-2," is hard to explain on any hypothesis other than copying, especially since neither plaintiff nor defendant designates any of its products "LE-1." The defendant's choice of the number "2" can only be the result of slavish imitation. Moreover, the defendant's affidavits do not even deny copying. Thus Samuel Dantowitz, defendant's president and treasurer says in his affidavit only that he instructed the advertising agent to employ original copy, original photos, and original art work in preparing the catalog. Mr. Dunne, the advertising agent, averred in his affidavit only that he was so instructed and that he "at all times followed the specific instructions from Samuel Dantowitz to prepare a catalog which would be distinctive in style and presentation and which would unquestionably identify the catalog as the catalog of the Albany Novelty Manufacturing Company * * *"

The careful omission from these affidavits of any denial that copying took place strongly suggests that there was copying and provides additional support for the inference which naturally follows from the substantial similarities in the two catalogs.

Since the defendant's affidavits contain nothing to challenge the validity of the plaintiff's copyrights, and since in the affidavits before Judge Noonan there is no denial that the defendant copied, the plaintiff was entitled to a preliminary injunction on the...