President & Tr. of Colby Col. v. Colby Jr. Col. for Women

• Decision Date: 01 June 1973
• Docket Number: Civ. A. No. 73-102.
• Parties: The PRESIDENT AND TRUSTEES OF COLBY COLLEGE, a corporation incorporated under the laws of the State of Maine and having its principal place of business in the State of Maine v. COLBY JUNIOR COLLEGE FOR WOMEN, a corporation incorporated under the laws of the State of New Hampshire and having its principal place of business in the State of New Hampshire.
• Court: U.S. District Court — District of New Hampshire

359 F. Supp. 571

The PRESIDENT AND TRUSTEES OF COLBY COLLEGE, a corporation incorporated under the laws of the State of Maine and having its principal place of business in the State of Maine v. COLBY JUNIOR COLLEGE FOR WOMEN, a corporation incorporated under the laws of the State of New Hampshire and having its principal place of business in the State of New Hampshire.

Civ. A. No. 73-102.

United States District Court, D. New Hampshire.

June 1, 1973.

Lawrence E. Spellman, Sulloway, Hollis, Godfrey & Soden, Concord, N. H., Vincent L. McKusick, Pierce, Atwood, Scribner, Allen & McKusick, Portland, Me., for plaintiff.

F. Graham McSwiney, Hall, Morse, Gallagher & Anderson, Concord, N. H., for defendant.

OPINION

BOWNES, District Judge.

The complaint in this case alleges infringement of a common-law trade name. Plaintiff "Colby College," located in Waterville, Maine, seeks a preliminary and permanent injunction forbidding the defendant, now "Colby Junior College for Women," located in New London, New Hampshire, from changing its name, effective July 1, 1973, to "Colby College-New Hampshire." Jurisdiction is based on diversity of citizenship and the requisite amount in controversy. 28 U.S.C. § 1332(a).

The question now presented is whether a preliminary injunction should issue. This requires a determination of whether the plaintiff will suffer irreparable harm if immediate relief is not granted and an assessment of the probabilities of the plaintiff prevailing on the merits.

Two preliminary matters to be resolved are the choice of law that applies and whether the plaintiff is barred by laches.

The prevailing view subsequent to Erie R. Co. v. Tompkins, 304 U.S. 64, 58 S.Ct. 817, 82 L.Ed. 1188 (1938), has been that state law governs a claim for unfair competition brought in a federal court. The parties have raised the issue of whether the substantive law of Maine or New Hampshire applies. New Hampshire is the forum state and the place where the acts comprising the alleged unfair competition have occurred. I rule that it is the common-law of New Hampshire as modified by Chapters 349 and 350-A¹ of the New Hampshire Revised Statutes Annotated that is to be applied to this case. See Clark v. Clark, 107 N.H. 351, 222 A.2d 205 (1966); Restatement (Second) of Conflict of Laws, Sec. 145, Comment f. However, because of the absence of controlling New Hampshire authority in this field, pertinent federal and other states' case law must be examined.

I specifically find that the plaintiff has not been guilty of laches. See particularly Exhibits 3, 4, and 8, and the letter from Arthur E. Jensen, Executive Secretary of the State of New Hampshire Coordinating Board of Advanced Education and Accreditation, to Robert L. Stark, Secretary of State for the State of New Hampshire, dated December 20, 1972, and contained in Exhibit 1.

A. IRREPARABLE HARM

At the hearing on Friday, May 11, 1973, the plaintiff focused its evidence as to irreparable harm primarily on three areas: (1) prospective students; (2) prospective donors; and (3) the "image," reputation, and goodwill of Colby College. For reasons that are set forth more extensively herein, I find that the plaintiff has not shown that irreparable harm will result from defendant's proposed name change.

I do not think it is probable that students will erroneously apply to or attend defendant's school when they intended to apply to or attend plaintiff's institution. I am not persuaded that a prospective student who desires to go to Colby College in Waterville, Maine, will be misled for long enough to actually enter the defendant institution or even to seriously apply to it. It is an important step in the life of a student when he selects an institution for his education, and it may fairly be assumed that a selection will not be made without some investigation. Certainly a reading of the respective catalogues of each school would disclose to any prospective student that they are distinct and different institutions, not only as to geographical location, but also as to the composition of the student body and faculty, the courses and programs offered, and the degrees granted. Plaintiff's Exhibit 6 and Defendant's Exhibit A. The evidence further shows, with a few exceptions, that the two schools are not competing for prospective students from the same pool of applicants; they offer different educational programs which would normally attract students of dissimilar backgrounds and goals. Defendant's Exhibit H.

Likewise, I do not find it probable that either institution will obtain gifts of money or property actually intended for the other. Persons intending to make a donation to an institution such as these are likely to make some investigation as to the character of the school. It seems highly improbable that any donor of ordinary prudence would not recognize the difference between "Colby College" and "Colby College-New Hampshire." Based on the one mistake that was made in the past, it is clear that if there is an unintentional mailing error by a donor, neither institution would take advantage of it to the detriment of the other. See letter from Robert Strider to Louis Vaccaro dated October 24, 1972, contained in Exhibit 4.

Mr. Turner, Vice-President for Development of Colby College in Waterville, Maine, testified concerning the need for obtaining funds from what he termed "new friends," as well as alumni, and he stated that at many fund-raising affairs, the "new friends" ask if the college is located in New Hampshire or Maine. Since this confusion already exists as far as the "new friends" are concerned, it does not appear that the dropping of the words "Junior College for Women" and the substitution of the words "College-New Hampshire" by the defendant will create any additional confusion. I would also observe that any potential donors need to be sold on more than the location of a school in order to be induced to make gifts. The "new friends" will only become friends in need if they are given substantially more information about the college than its location and the fact that it is different as to curriculum, student body, and faculty than the institution in New London, New Hampshire.

While it is difficult to assess plaintiff's allegation that tarnishment and dilution of its "image," reputation, and goodwill will be caused by defendant's proposed name change, I am not convinced of the probability of such injury. As will be discussed more extensively herein, both plaintiff and defendant have used the word "Colby" as part of their respective trade names for the past ninety-five years. Plaintiff's Exhibits 1 and 2. While there has been some confusion resulting from the use of the word "Colby" by both colleges in the past, I am of the opinion that the use of the new name by the defendant will not add to or increase the confusion. Defendant is not attempting to pass itself off as an institution connected in any way with the plaintiff. This is not the case of a new college adopting the name "Colby" so as to "tread" on plaintiff's academic reputation and goodwill and thereby injure plaintiff's scholastic reputation or impair its patronage. While I can understand and sympathize with the resentment felt by the alumni of Colby College in Waterville, Maine, of being confused with the alumni of the institution in New London, New Hampshire, which has traditionally been a two-year college, this does not rise to the level of irreparable harm.

B. PROBABILITY OF SUCCESS ON THE MERITS

Plaintiff contends that it has acquired an exclusive proprietary interest in the name "Colby College" because of its prior, long and exclusive use of said name and is, therefore, entitled to injunctive relief. This contention fails because both institutions have used the word "Colby" as part of their respective names for nearly a century.

In order for the plaintiff to prevail on the merits relative to its claim of common-law unfair competition, it must prove (1) that the name "Colby College" has achieved secondary meaning associated exclusively with the plaintiff, (2) that there is a likelihood that reasonably prudent members of the public will become confused as a result of defendant's proposed name change, and (3) that injury to the plaintiff will result therefrom. Direct competition between the plaintiff and the defendant is not a prerequisite to relief, Ball v. American Trial Lawyers Association, 14 Cal.App. 3d 289, 92 Cal.Rptr. 228 (1971), and the plaintiff need not prove fraudulent intent on the part of the defendant in order to prevail. Restatement of Torts, Sec. 717(1) (1938).

The trade names of educational institutions are entitled to the same protection afforded the trade name of a corporation operated for profit. See Annot., "Right of Charitable or Religious Association or Corporation to Protection Against Use of Same or Similar Name by Another," 37 A.L.R.3rd 277-327 (1971); Rickard v. Caton College Co., 88 Minn. 242, 92 N.W. 958 (1903); Columbia Grammar School v. Clawson, 120 Misc. 841, 200 N.Y.S. 768 (1923); Trustees of Columbia University in the City of New York v. Axenfeld, 136 Misc. 831, 241 N.Y.S. 4 (1930); and Dubuque German College and Seminary v. St. Joseph's College,...