308 F.2d 377 (5th Cir. 1962), 19172, Day-Brite Lighting, Inc. v. Sta-Brite Fluorescent Mfg. Co.

Docket Nº:19172.
Citation:308 F.2d 377, 135 U.S.P.Q. 49
Case Date:September 18, 1962
Court:United States Courts of Appeals, Court of Appeals for the Fifth Circuit

Page 377

308 F.2d 377 (5th Cir. 1962)

135 U.S.P.Q. 49




No. 19172.

United States Court of Appeals, Fifth Circuit.

Sept. 18, 1962

          Rehearing Denied Oct 26, 1962.

Page 378

[Copyrighted Material Omitted]

Page 379

Ill., Gravely, Lieder & Woodruff, St. Louis, Mo. (Smathers, Thompson & Dyer, Miami, Fla., of counsel), for appellant.

         Robert H. Givens, Jr., Miami, Fla., for appellee.

         Before RIVES, JONES and GEWIN, Circuit Judges.

         RIVES, Circuit Judge.

         The appellant-plaintiff sued the appellee-defendant 1 for infringement of plaintiff's trademark Day-Brite, and also for unfair competition and for infringement of other trademarks, copyrights and a design patent. The counts based on the design patent were dismissed by the district court and we are not asked to review that ruling. 2 The district court entered judgment for the defendant based upon brief findings of fact as follows:

         'Findings of Fact.

         'The heart of the original action was destroyed when this Court allowed a motion to strike the patent counts. This opinion deals with the balance of the complaint.

         'The plaintiff was incorporated in 1923, and since then had been using the trademark 'Day-Brite' on electrical fixtures and in periodicals advertising the same. It had registered trademarks in addition for such names as 'Cleartex,' 'Para-Louver,' and 'Lumatex,' and various copyrighted periodicals and pages therein.

         'The defendant was incorporated in 1946 under the name Sta-Brite Fluorescent Manufacturing Company, and within a few years thereafter the plaintiff was aware that the defendant was using the name 'Sta-Brite,' except for an investigation to the effect of the use of this name on its name of 'Day-Brite' took no action against the defendant until 1958.

         'The alleged infringements of copyrighted material and trade marks are highly technical and isolated, and probably would never have been the basis of Court action except as they were joined with a patent suit which has been disposed of by this Court, rightly or wrongly.

         'This is likewise true of the claims of unfair competition based on the alleged trademark and copyright infringements.

         'I find on all of the evidence that the claims now in suit are groundless. A careful examination of the evidence, which was chiefly composed of exhibits, discloses this.'

          We are unable to agree with the district court that the heart of this action resided in the patent counts. Instead, we think that each claim must be considered on its own merits.

         Count 1 alleges infringement of copyright Registration No. 73,651, Class K of plaintiff's catalogue sheet 6 of Section 50. A comparison of that catalogue sheet with pages 43 and 44 of defendant's catalogue shows that there was substantial copying of both sides of the sheet. On the front side of both sheets are the following four headings in the same order: 'APPLICATION,' 'INSTALLATION,' 'FINISH,' 'WIRING.' A considerable amount of the wording under each of the headings is verbatim the same. The reverse side of each sheet contains a diagram extending across the width of the page, both very similar, and underneath that six illustrations again in the same order and captioned the same viz: 'FITTING MIRRORS,' 'WASH ROOMS,' 'CHALKBOARDS,' 'COUPON BOOTHS,' 'BANK CAGES,' and 'WALL DISPLAYS.' The wall clock on both illustrations of 'CHALKBOARDS' shows the same time. Both 'WALL DISPLAYS' illustrations contain the slogan, 'BUY U.S. BONDS.'

Page 380

The defendant can hardly in good faith deny that it copied plaintiff's catalogue sheet. Instead, the defendant is the party who becomes highly technical. It insists that plaintiff's catalogue sheet 6 of Section 50 is not properly identified as the work copyrighted. The certificate shows the title of the work copyrighted as 'Sheet 6 of Section 50 of Day-Brite catalogue.' The plaintiff's president identified the sheet as the work copyrighted before it was introduced in evidence. Defendant insists that was not evidence of the work on file in the Copyright Office. It was at least prima facie evidence. The defendant had ample notice of the charge, and if it really claimed...

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