Triangle Publications, Inc. v. Knight-Ridder Newspapers, Inc.

• Decision Date: 10 February 1978
• Docket Number: No. 78-111-Civ-JLK.,78-111-Civ-JLK.
• Parties: TRIANGLE PUBLICATIONS, INC., Plaintiff, v. KNIGHT-RIDDER NEWSPAPERS, INC., a Florida Corporation, Defendant.
• Court: U.S. District Court — Southern District of Florida

445 F. Supp. 875

TRIANGLE PUBLICATIONS, INC., Plaintiff, v. KNIGHT-RIDDER NEWSPAPERS, INC., a Florida Corporation, Defendant.

No. 78-111-Civ-JLK.

United States District Court, S. D. Florida.

February 10, 1978.

Reginald L. Williams, Miami, Fla., for plaintiff.

Talbot D'Alemberte, Miami, Fla., for defendant.

ORDER DENYING PRELIMINARY AND PERMANENT INJUNCTIONS

JAMES LAWRENCE KING, District Judge.

This cause came on for consideration upon the motion of plaintiff for a preliminary injunction. The court, having considered the record and having heard extensive oral argument on this matter, finds and concludes that a preliminary injunction should not issue herein because plaintiff has not demonstrated irreparable injury.

Further, at the hearing on this matter, the court, with the agreement of both parties, announced that once the motion for a preliminary injunction had been determined, this court would proceed to an adjudication of the merits of the permanent injunction. The court does so through the authority granted it under Rule 65 of the Federal Rules of Civil Procedure. Fed.R.Civ.P. 65(a)(2) authorizes this court to consolidate a preliminary injunction hearing with the trial on the merits after commencement of the hearing. Generally speaking, such a consolidation is proper where the parties are not prejudiced by lack of notice. Eli Lilly & Co. v. Generix Drug Sales, Inc., 460 F.2d 1096 (5th Cir. 1972).

Cooper v. Wisdom, 440 F.Supp. 1027 (S.D. Fla.1977) and 11 Wright & Miller, Federal Practice and Procedure: Civil, § 2950.

Both parties agreed at the hearing on this matter that a subsequent hearing would not serve to develop further the facts of this case. The court requested that each party submit a supplemental memorandum of law on the issues delineated at the hearing. Those memoranda have been received and carefully scrutinized. Having done so, the court finds and concludes that the motion for a permanent injunction also should be denied.

1. Factual Background:

This case presents an issue of first impression in this nation.

Defendant, Knight-Ridder Newspapers, publishes the Miami Herald Newspaper. Within the past few months, the defendant developed a new supplement for its Sunday edition—a television book. This "book" contains listings of the programming scheduled for the week that begins the Sunday it is released. In addition, it contains articles related to the television media and several other features, such as a segment which proffers prime time viewing at a glance.

Plaintiff publishes the periodical known as the "TV Guide". This publication, which predates defendant's newspaper supplement by over ten years, provides daily listings of television programming for the week along with articles relating to the television media. It is sold as an independent unit on the newsstand and its price generally is set at thirty cents an issue.

In an effort to advertise this new addition to its Sunday edition, the Herald engaged in a campaign of newspaper and television advertisements over the last few months. The new supplement was formally introduced on November 13, 1977 with a color newspaper advertisement in the Miami Herald. The following week, temporary cards for the exterior of newspaper vending machines, known as "rack cards", were distributed. Neither the newspaper ads nor the rack cards are currently being utilized by the Herald.¹

The Herald used five newspaper ads in its advertising campaign. These ads were published in color in the Herald on November 13, 1977 and November 18, 1977; in black and white in the Broward Times on November 16, 1977; and in black and white in the Keynoter (Marathon, Florida) and the Miami Times on November 17, 1977. The promotional campaign does not contemplate further use of any of these advertisements.²

Second, the rack cards were made of cardboard and their life expectancy, after exposure to the elements, was but a few weeks. Instructions were given by the Herald prior to the institution of this suit to have the rack cards at issue replaced with new cards bearing different promotional messages unrelated to the television supplement. Such a replacement was ordered in the regular course of business.³

Third, two different television commercials, each thirty seconds in length, were utilized in the promotional campaign. The court has viewed each of these commercials. The first, which revolves around the theme of Goldilocks and the Three Bears, emphasizes the comparative sizes of the TV Guide; the Herald supplement; and a magazine of a size larger than the Herald supplement. The conclusion of the ad is that the Herald supplement is the perfect size for human beings. While this commercial does not mention TV Guide by name in its dialogue, a past issue of TV Guide (the issue for the week of October 29-November 7, 1977) is shown briefly in the hands of one of the actors. This "Three Bears" commercial was first shown on November 17, 1977 and it was aired thereafter for several weeks. It since has been displaced and its use is no longer contemplated.

All of the above newspaper advertisements and this first television advertisement are moot for the purpose of the preliminary injunction. They are delineated above for the sole purpose of developing a context within which to understand the issues involved herein and because they are germane to the issuance of a permanent injunction and/or the determination of damages.

However, there was one advertisement in existence at the time that this hearing was held. This commercial featured a monologue of thirty seconds duration. This commercial visually identified the competing product, TV Guide, for a few seconds and urged the viewer to purchase the Sunday Herald television supplement. The thrust of the commercial is that the purchase of TV Guide procures TV Guide for the consumer while the purchase of the Herald supplement inextricably entails the purchase of the Sunday Miami Herald since it accompanies that newspaper without extra cost.⁴ Hence, the theory is that there are more "extras" when one purchases the Sunday Herald television supplement. The TV Guide utilized in this commercial was depicted clearly on the screen, though it was a past issue of that periodical. This commercial was scheduled to run through February 5, 1978 and testimony indicated that it might be utilized several times after that date.⁵ For the purpose of the preliminary injunction, it is the only advertisement in issue at the time of the hearing.

Plaintiff complains that defendant utilized a copyrighted item without plaintiff's permission—the cover of the TV Guide displayed by the actor delivering the monologue. Plaintiff alleges that this use is in contravention of the new copyright act, 17 U.S.C. § 101 et seq., because it constitutes a display by another of a copyrighted item whose display is within the exclusive province of the item's creator. See, 17 U.S.C. § 106.⁶

2. The Preliminary Injunction:

In order to secure a preliminary injunction, plaintiff must demonstrate that it will suffer irreparable injury should the injunction be denied.⁷

Perhaps the single most important prerequisite for the issuance of a preliminary injunction is a demonstration that if it is not granted the applicant is likely to suffer irreparable harm before a decision on the merits can be rendered.

11 Wright & Miller, Federal Practice and Procedure: Civil, § 2948. Plaintiff has not done so here.

The comparative advertising at issue in the complaint was initiated in the form of a newspaper advertisement as early as November of 1977. From November, 1977 to the date on which this suit was filed, January 9, 1978, five newspaper ads in three different newspapers were printed and numerous rack cards advertising the new supplement were displayed. In addition, the first television commercial (i. e. The Three Bears) initially was aired on November 17, 1977 and was shown thereafter for several weeks. Even the second commercial, known as "Extras"—the only alleged infringement at issue on this motion for a preliminary injunction—had been aired several times prior to the institution of this suit.

In these circumstances, this court cannot find that the issuance of a preliminary injunction is required in order to avert irreparable injury. In Poe v. Michael Todd Co., 151 F.Supp. 801 (S.D.N.Y.1957), plaintiff's failure to file a motion for injunctive relief until three months after the alleged infringing motion picture was released was an important factor in the court's decision to deny a preliminary injunction.

The deleterious impact incurred through the airing or printing of advertisements related to the television supplement in the case sub judice undoubtedly would have occurred, in large part, by the time of this hearing. All of the advertisements complained of had run or had begun running prior to the institution of this suit.

Therefore, the motion for a preliminary injunction must fall of its own weight.

3. The Permanent Injunction:

The request for a permanent injunction involves several issues. This court must consider seriatim:

a) whether the cover of a magazine is protected under the umbrella of a copyright granted to the creator of that magazine?

b) whether the display of the copyrighted item was the type of fair use contemplated by the new Copyright Act?

c) whether the Copyright Act is affected by the First Amendment with regard to the activities involved herein?

A. The Cover and the Copyright:

Defendant contends that the copyright registered for TV Guide only pertains to the matters bound between its covers. Defendant relies on the fact that TV Guide's copyright appears on its masthead page and reads, inter alia, that "no material in" TV Guide can be used without permission (emphasis added).

While plaintiff's copyright notice literally is confined to the contents of this periodical, this court does not believe that the cover of TV Guide was meant to be excluded from the...