AM. ASS'N FOR ADV. OF SCIENCE v. Hearst Corp.

• Decision Date: 28 April 1980
• Docket Number: Civ. A. No. 79-3185.
• Citation: 498 F. Supp. 244
• Parties: AMERICAN ASSOCIATION FOR the ADVANCEMENT OF SCIENCE, Plaintiff, v. The HEARST CORPORATION, Defendant.
• Court: U.S. District Court — District of Columbia

498 F. Supp. 244

AMERICAN ASSOCIATION FOR the ADVANCEMENT OF SCIENCE, Plaintiff, v. The HEARST CORPORATION, Defendant.

Civ. A. No. 79-3185.

United States District Court, District of Columbia.

April 28, 1980.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Robert X. Perry, Jr., John D. Lane, J. Carter McKaig, J. Michael Cleary, Washington, D. C., for plaintiff.

Arthur J. Greenbaum, New York City, Arthur J. Levine, Washington, D. C., for defendant.

MEMORANDUM OPINION

JOYCE HENS GREEN, District Judge.

This is an action by the publisher of Science magazine for federal and common law trademark infringement and unfair competition under the Lanham Trademark Act of 1946, 15 U.S.C. §§ 1051 et seq. and the common law of the District of Columbia. Plaintiff, the American Association for the Advancement of Science (AAAS), seeks to permanently enjoin the defendant, The Hearst Corporation (Hearst), from publishing a revised edition of its Science Digest magazine so as to give the word "Science" in the title undue prominence, thereby allegedly infringing AAAS's trademark rights and constituting a false designation of origin. The claim of money damages is not considered here, as the trial has been bifurcated under Fed.R.Civ.P. 42(b) to allow a more speedy resolution of the main issues. Pursuant to Fed.R.Civ.P. 65(a)(2), the trial of the action on the merits was advanced and consolidated with the hearing on AAAS's motion for a preliminary injunction. Hearst has filed a counterclaim in which it seeks to cancel plaintiff's registration of the trademark "Science" under 15 U.S.C. § 1119, arguing that the word is a generic term for a class of magazines and therefore not protectable by trademark. Upon consideration of the testimony and evidence presented at a five-day trial, and applicable law, the Court finds that AAAS's trademark registration of "Science" is valid, and Hearst's practice of publishing Science Digest with the word "Science" given overwhelming prominence is an infringement of AAAS's mark and constitutes unfair competition. Consequently, AAAS is entitled to appropriate injunctive relief.

In 1880, inventor Thomas A. Edison founded a magazine to which he gave the title "Science." It entered, and has remained, in the stream of interstate commerce as a magazine issued weekly concerning the field of science. Alexander Graham Bell subsequently was another famous owner of the magazine. AAAS, a national scientific society incorporated in Massachusetts in 1848 and now having its principal office and place of business in the District of Columbia, adopted the magazine as its official publication in 1900. In 1944, AAAS succeeded to ownership of the magazine.

The trademark "Science" in 1970 was entered on the Principal Register of the United States Patent and Trademark Office in AAAS's name, for a "periodically issued magazine concerning the field of science primarily" with Registration No. 903,034. In 1975, AAAS filed an affidavit, as required by § 8 of the Lanham Act, 15 U.S.C. § 1058, asserting that the mark "Science" was still in continuous use. The registration remains in full force and effect.

AAAS and its predecessors have prominently displayed the trademark on the cover of the magazine every week since its inception 100 years ago. It has used its present logo (i. e., the form of the title), in which "Science" is presented in large capital letters stretching the width of the cover, atop the page, continuously for the past 21 years. (See Appendix A).

The mark "Science" identifies AAAS's magazine and is descriptive of its contents. Many other magazines have been granted valid trademarks that include forms of the word "science." Of those such magazines introduced in evidence, exclusive of defendant's, all present their titles so that none may reasonably be confused with Science.

Science is a sophisticated magazine, which caters to and is highly regarded by the scientific community. Its articles typically are written by scientists who are paid nothing for their contributions but consider it an honor to be accepted for publication. Authors of articles in Science include 145 Nobel Prize winners who have contributed over 400 articles to this magazine. The magazine is very selective about which articles it will print: it accepts less than 25 percent of the approximately 5000 manuscripts submitted each year. A rigorous reviewing and editing process insures a high level of quality and accuracy. Because of the magazine's concern for accuracy, high priority is given to readers' letters that are critical of articles. Science also has an outstanding reputation among journalists, who consider it "prestigious" and a valued source of reliable scientific news. Its reputation for reliability stems in large part from its practice of presenting rounded views, fully recording critical as well as supporting positions.

Befitting its character, the magazine uses color and graphic design conservatively, although it is printed on high quality coated paper and typically wears a cover presenting an attractive, full—color photograph. The advertisements in Science offer laboratory equipment, chemical substances for experiments, and little else.

While the magazine is geared toward the world's scientific elite, Science's appeal is by no means limited to this ethereal group. Science contains a section (in the back of the magazine) devoted to reports and the like; the text here is highly technical and difficult. Toward the front of the magazine, however, are articles and book reviews which tend to be simpler and are readable by college graduates with no particular scientific expertise. While over half of Science's subscribers have Ph.D. degrees, its readership includes students, executives of industrial corporations, and governmental decision makers. Even high school teachers use it as a teaching aid.

The magazine's circulation has exceeded 100,000 copies weekly for the past 16 years and now is greater than 151,000. Some 100 copies are sold weekly at newsstands near various universities and research institutions; the overwhelming majority of copies, however, is sold by subscription. Most of these are sold in combination with membership in AAAS, although non-members also receive subscriptions, including 21,000 libraries representing virtually every college and university in the nation.

The magazine is well known to, and frequently read by many professors; an independent study conducted in 1976 concerning general periodicals, including magazines and newspapers, read by faculty members found Science the fourth most popular, after Time, Newsweek, and the New York Times. Among professors at major universities, the study showed that Science had the third greatest readership, after Time and the New York Times, and before Newsweek, The New Yorker, New York Review of Books, and Saturday Review.

Science is cited in newspaper articles approximately five times a week, and regularly in other publications of general interest. In the twelve month period from May 1978 through April 1979, articles in Science were cited in 1,048 stories in newspapers and other nontechnical publications throughout the country. These stories appeared in 412 newspapers, 23 general interest magazines such as Time and Newsweek, and 53 specialized publications. Very often it is cited in other scientific journals; a study of 3,400 of these found Science the seventh most frequently referenced periodical. Independent studies conducted by the Institute for Scientific Information in Philadelphia showed that Science articles were cited by other scientific journals 47,000 times in 1974 and 59,000 times in 1978. Science ranks ninth in sales among 12,500 microfilmed periodicals distributed by the largest microfilm company in the country. In 1979 Science received over 7,000 requests to republish material from the magazine in books and other magazines. Hundreds of thousands of reprints of Science articles are sold annually.

Each year, AAAS advertises its magazine extensively; from 1976 through 1979 it spent over $1 million for this purpose. In 1979 it sent direct—mail material promoting Science to over 1.2 million persons.

In light of the foregoing, it is without doubt that the name "Science" has come to be extremely well known to scientists, academicians, and others involved with scientific matters as the title of a highly respected, authoritative, and scholarly science magazine. By its frequent citation in newspapers and other periodicals, the name also has become similarly associated among intelligent laymen interested in science. Clearly, AAAS's magazine has established for itself among these groups of people a special meaning in the word "Science."

In 1978, AAAS decided to launch a new publication, a sister magazine to Science that also would concern the field of science, but be directed toward a broader audience. In the new magazine's words, it would "bridge the distance between science and citizen." Promotional material featuring the magazine, then entitled "Science 79," was distributed by AAAS to approximately 277,000 persons in January 1979. The premier issue of the magazine was published in the first week of October 1979, and carried the title "Science 80." Its circulation is now over 375,000.

Science 80 is much more colorful than Science, employs greater use of large photographs and reveals a more ambitious use of graphics. Its articles are not written by scientists as are those in Science, but by professional writers. Science 80's articles are significantly less esoteric than those in its older counterpart: while Science will devote a major article to discussing in depth the constitution of genetically different types of protein collagen, Science 80 will present a sweeping, anecdotal narration of the pitfalls and successes surrounding a "cowboy physicist" through his work in the relatively short history of atomic particle accelerators. The text is printed in larger...