American Broadcasting Co. v. Wahl Co., 264.
| Decision Date | 18 June 1941 |
| Docket Number | No. 264.,264. |
| Citation | 121 F.2d 412 |
| Parties | AMERICAN BROADCASTING CO. v. WAHL CO. et al. |
| Court | U.S. Court of Appeals — Second Circuit |
Buckley & Buckley, of Washington, D. C., and Russell C. Gay, of New York City (Russell C. Gay, of New York City, H. Russell Bishop, of Washington, D. C., and John F. Lang, of New York City, of counsel), for complainant-appellant.
Coudert Brothers, of New York City (Walter R. Barry and Alexis C. Coudert, both of New York City, of counsel), for defendants-appellees.
Before L. HAND, SWAN and AUGUSTUS N. HAND, Circuit Judges.
The amended complaint sets forth the following causes of action against the defendants:
(1) For infringement of complainant's registered copyright of a quiz program used in radio broadcasting entitled "Double or Nothing" by broadcasting a radio program known as "Take It or Leave It."
(2) For infringement of the common-law trade-mark "Take It or Leave It" which the complainant was entitled to use on broadcasts under a license from the owner and had so used. The defendants infringed by broadcasting a program substantially similar and so entitled.
(3) For unfair competition by broadcasting programs substantially similar to complainant's program of "Double or Nothing."
The defendants moved in the District Court to dismiss the amended complaint, whereupon the judge dismissed the first cause of action with leave to file an amended complaint within ten days and the second and third for failure to state any cause of action.
The complainant appeals from the order so far as it dismissed the second and third causes of action. No appeal was taken from the order so far as it dismissed the first cause of action. Since leave to amend was given the order was not final and therefore not appealable. The questions before us are as to the propriety of the disposition of the second and third causes of action.
Second Cause of Action.
The second cause of action for infringement of the trade-mark did not lie. A trade-mark is intended to identify the goods of the owner and to safeguard his good will. The designation if employed by a person other than one whose business it serves to identify would be misleading. Consequently "a right to the use of a trade-mark or trade-name cannot be transferred in gross." Restatement Torts § 755; Falk v. American West Indies Trading Co., 180 N.Y. 445, 73 N.E. 239, 1 L.R.A.,N.S., 704, 105 Am.St.Rep. 778, 2 Ann.Cas. 216; United Drug Co. v. Rectanus Co., 248 U.S. 90, 97, 39 S.Ct. 48, 63 L.Ed. 141. A license of a trade-mark that has never been connected with the business of the licensee is objectionable for the same reason as an assignment of a trade-mark in gross and transfers no rights. Lea v. New Home Sewing Machine Co., C.C.E.D.N.Y., 139 F. 732; Macmahan Pharmacal Co. v. Denver Chemical Mfg. Co., 8 Cir., 113 F. 468, 474; Affiliated Enterprises v. Gantz, 10 Cir., 86 F.2d 597; Seeck & Kade, Inc. v. Pertussin Chemical Co., 235 App.Div. 251, 252, 256 N.Y.S. 567; Schering & Glatz, Inc. v. American Pharm. Co., Inc., 236 App.Div. 315, 317, 258 N.Y.S. 504. We doubt whether there is any right to claim a trade-mark in such a name as "Take It or Leave It" for a quiz broadcast program. It seems to have been a mere descriptive title and not to have been affixed to any goods. Furthermore, as the trade-mark was not registered, the cause of action for infringement was dependent on diversity of citizenship between the complainant and all the defendants, which was here lacking, unless it can be said that the allegations of the second cause of action only set forth another ground for assertion of the right to recover for infringement of copyright. But the doctrine enunciated in Hurn v. Oursler, 289 U.S. 238, 53 S.Ct. 586, 77 L.Ed. 1148, under which the jurisdiction of the District Court might be sustained, does not apply. The suit upon the trade-mark does not set forth merely a new ground for recovering damages in connection with copyright infringement. The mere use of the so-called trade-mark "Take It or Leave It" is no additional ground of copyright infringement, nor is that trade-mark shown to have been in any way connected with the copyrighted...
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