Official Airline Guides, Inc. v. CHURCHFIELD PUB., INC.

• Decision Date: 23 November 1990
• Docket Number: Civ. No. 87-6015-BE.
• Citation: 756 F. Supp. 1393
• Parties: OFFICIAL AIRLINE GUIDES, INC., Plaintiff, v. CHURCHFIELD PUBLICATIONS, INC., Ashbyweb Limited Company, Inc., dba American Concepts, and Anne-Lise Fleisher, an individual, Defendants.
• Court: U.S. District Court — District of Oregon

756 F. Supp. 1393

OFFICIAL AIRLINE GUIDES, INC., Plaintiff, v. CHURCHFIELD PUBLICATIONS, INC., Ashbyweb Limited Company, Inc., dba American Concepts, and Anne-Lise Fleisher, an individual, Defendants.

Civ. No. 87-6015-BE.

United States District Court, D. Oregon.

November 23, 1990.

COPYRIGHT MATERIAL OMITTED

Richard E. Alexander, Emrich & Dithmar, Chicago, Ill., Peter H. Koehler, Jr., Tonkon, Torp, Galen, Marmaduke & Booth, Portland, Or., for plaintiff.

Dennis E. Stenzel, Chernoff, Vilhauer, McClung & Stenzel, Portland, Or., for defendants.

AMENDED OPINION

REDDEN, Chief Judge.

On September 14, 1990, the court bifurcated Official Airline Guides' claim for trademark infringement from defendants' counterclaim for intentional interference with business relations. Commencing on September 18, 1990, the parties tried the first phase of this action to the court. Defendants' counterclaim will be tried to a jury at a later date. Official Airline Guides, Inc. ("OAG") seeks a permanent injunction, enjoining defendants, Churchfield Publications ("Churchfield"), Ashbyweb Limited Company ("Ashbyweb") and Anne-Lise Fleisher ("Fleisher"), from using the logos "The Travel Planner," "USA Travel Planner" and "The Travel Planner USA" on their travel directory and in their advertising and promotional materials. Pursuant to Rule 52(a) of the Federal Rules of Civil Procedure, the following constitute my findings of facts and conclusions of law.

FACTS

A. OAG Travel Planner

Since 1929, OAG has published travel directories. Currently, OAG publishes and distributes three editions of a travel planner: a North American Edition, a European Edition and a Pacific Asian Edition. Published quarterly, each edition is titled "OAG Travel Planner." The directories contain listings of travel and hospitality services, including information about hotels, motels, ground transportation and airline offices in various cities throughout the United States and abroad. The listings are in alphabetical order by city with direct phone numbers. OAG's directory also contains a section of "800" numbers, usable only in the United States.

OAG primarily distributes its North American Edition¹ in the United States. Evidence established that about one percent of the North American Edition is distributed in Europe or other countries. The primary subscribers to "OAG Travel Planner" are travel agents, corporate travel coordinators and frequent fliers. Envelopes sent to OAG's office by customers and advertisers commonly refer to OAG's publication as "OAG Travel Planner."

To compile the listings, OAG sends forms directly to travel and hospitality establishments. If establishments are already listed in an OAG directory, OAG sends a copy of the establishments' prior listing form and asks for any corrections. OAG inspects and verifies the listings carefully before final publication.

OAG also solicits advertisements for its directories by direct mail. The advertisements are custom designed for travel vendors, airlines and hotels. OAG generally attracts elite organizations, charging rates that are higher than similar publications. OAG receives approximately 65 percent of its revenue from advertising sales and 40 to 45 percent of its revenue from subscribers. Currently, OAG has 70,000 subscribers for its three editions.

On May 31, 1966, OAG obtained federal trademark protection and ownership rights for its mark "OAG Travel Planner," Registration Number 809,293. Registration No. 809,293 disclaimed the words "Travel Planner." On September 1, 1987, OAG obtained a second trademark, Registration Number 1,455,261, without disclaiming the words "Travel Planner." In support of OAG's application, Craig Johnson, who currently is OAG's vice president of Sales and Marketing, filed an affidavit dated March 19, 1987. He asserted that he believed "that portion of the mark consisting of `TRAVEL PLANNER' has become distinctive as applied to applicant's goods as a result of applicant's substantially exclusive and continuous use in interstate commerce for more than ... five years." Plaintiff's Exhibit 251. Currently, a third application for registration of OAG's trademark is pending. Ashbyweb has contested this application claiming that it has a superior right to the name "Travel Planner." The decision on the application depends on the outcome of this action.

B. USA Travel Planner

Since 1983, defendants promoted, sold, distributed, and solicited advertisements for a travel directory similar to OAG's travel planner. Defendants' principals have known of OAG's travel planner for over 20 years.

Ashbyweb is incorporated in the United Kingdom with its principal place of business located in Scotland. Anne-Lise Fleisher is the primary stockholder of Ashbyweb. Churchfield Publications, which was located in Las Vegas, Nevada, is the predecessor of Ashbyweb and was owned by Anne-Lise Fleisher's parents, Bjarne and Margrethe Persson. The Perssons were nominally involved in the publication of Churchfield's directory by arranging for the binding. Anne-Lise Fleisher was a paid consultant to Churchfield, and Ms. Fleisher's husband, Van Fleisher, was an unpaid advisor. At the time Churchfield published its directory, Van Fleisher was employed by Trans World Airlines ("TWA") and was the Director of International Sales in charge of TWA's advertising outside of the United States.

In 1983, Ashbyweb began to distribute in Europe trade and consumer versions of travel directories which were under the names of "The Travel Planner USA," "USA Travel Planner" and "The Travel Planner" (hereinafter referred to as "The Travel Planner"). The directory was distributed in Europe and the Middle East and was not distributed in the United States. Neither the name "Ashbyweb" nor "Churchfield" appeared on their listing form, on the cover letter accompanying the listing forms or on the actual publication.

The Fleishers approached various organizations seeking a sponsor. Van Fleisher testified that he spoke with a representative of OAG in London in regard to sponsoring defendants' publication. That representative was not interested because the defendants desired to list travel services by state and not city. In 1982, Van Fleisher asked TWA to sponsor their travel directory by buying in bulk and distributing it to travel agents in Europe. Van Fleisher informed his superior in the advertising department that his in-laws owned Churchfield but he did not inform TWA's legal department.

TWA negotiated a contract with Churchfield through Anne-Lise Fleisher and agreed to underwrite Churchfield's publication with a budget of one and a half million dollars. In 1983, in the first edition, TWA's name appeared within the title of the publication. In the next edition, the publication was titled "The Travel Planner-USA," and TWA's name was printed on the bottom of the cover and on the spine. Initially, TWA used its stationery to solicit advertisements and mailed the listing forms to various hotels, motels, car rental agencies and other travel related organizations.

Defendants then obtained their listings by sending forms which were headed "The Travel Planner" to various travel and hospitality establishments. The listing forms did not make reference to either TWA or Churchfield publications. Defendants, like OAG, solicited advertisements from hotels, car rental agencies and airline offices. However, defendants also sent forms to a number of entities generally not solicited by OAG, including national parks, recreational vehicle rental agencies, charter bus lines, rail lines and tourist attractions. Defendants occasionally received misdirected listing forms from different publications. Anne-Lise Fleisher, however, did not return the listing forms to the other publications because she thought that the copies were intended for her business.

TWA and Anna-Lise Fleisher designed "The Travel Planner" to accommodate foreigners traveling to the United States. The listings are made by states, not by cities; the phone numbers of the various establishments are either Watts lines or direct lines; and most of the advertisements of United States establishments list Watts line numbers and are written for European travelers. The directory also includes information about travel documents and information about Bed and Breakfast establishments. Defendants included Bed and Breakfast information because Europeans are accustomed to lodging at establishments similar to Bed and Breakfast hotels. Churchfield and TWA designed the publications for overseas travel agents.

Churchfield primarily earned its revenue from selling the directory by bulk and did not attempt to sell individual subscriptions of "The Travel Planner." TWA sold a few subscriptions from the bulk purchase it made. The numbers in circulation varied between 10,000 and 20,000 each year. In 1983 and 1984, approximately 10,000 existed; in 1985, approximately 30,000 existed; in 1986 approximately 20,000 existed; and in 1987, approximately 13,000 existed. Between 1984 and 1986, TWA distributed the copies to travel agents in Europe as a giveaway in order to encourage agents to book their clients on TWA. In 1985, TWA did not renew its contract with Churchfield. The same year, JETWAYS overpurchased directories. In 1986, JETWAYS used 5,000 publications from the previous year which were still on hand.

In 1986, Churchfield, through Bjarne and Margrethe Persson, assigned all of its rights to Ashbyweb with Anne-Lise Fleisher as the primary shareholder. Fleisher contracted with Pan American Airlines ("Pan Am") to sponsor "The Travel Planner" and distributed it to agents in Europe. Pan Am's name appeared on the cover of the 1987-88 directory. The 1987-1988 directory was the last directory published by defendants. Defendants ceased publication pending resolution of this litigation. Defendants intend to resume business when this litigation is resolved. Plaintiff did not urge its affirmative defense of...