American Photographic Pub. Co. v. Ziff-Davis Pub. Co.
| Decision Date | 07 May 1943 |
| Docket Number | No. 8174.,8174. |
| Citation | 135 F.2d 569 |
| Parties | AMERICAN PHOTOGRAPHIC PUB. CO. v. ZIFF-DAVIS PUB. CO. |
| Court | U.S. Court of Appeals — Seventh Circuit |
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Geo. P. Dike, Cedric W. Porter, Dike, Calver & Porter, Lurie & Alper, and Israel Gorovitz, all of Boston, Mass., for appellant.
Bailey Stanton, S. J. Stanton, Wm. McK. Gleeson, Roy W. Hill, and Stanton & Stanton, all of Chicago, Ill., for appellee.
Before EVANS and KERNER, Circuit Judges, and LINDLEY, District Judge.
Plaintiff, American Photographic Publishing Company, appeals from a decree dismissing, for want of equity, its complaint alleging infringement of its common law trade-mark and unfair competition. Jurisdiction rested on diversity of citizenship and the requisite jurisdictional amount.
The facts are not in dispute. On October 27, 1914, plaintiff, a Massachusetts corporation, purchased from Frank R. Fraprie a magazine entitled "Popular Photography." Thereafter and until May, 1916, plaintiff's magazines, "Popular Photography incorporating The Photographic Times," designed to appeal primarily to the amateur photographer, and "American Photography," designed to appeal to the expert photographer, were published as separate periodicals. At that time plaintiff consolidated both publications into "American Photography," which was aimed to please readers and advertisers of both its predecessors. For six months the magazine carried on its cover the title "American Photography incorporating Popular Photography and The Photographic Times." Thereafter, only the name "American Photography" appeared on the cover. From the date of consolidation, the masthead of plaintiff's magazine has carried the title "American Photography" in large letters, followed by the word "incorporating" and a list of the names of former publications, including Popular Photography in smaller type. This list rose from eight in 1916 to thirteen prior to defendant's first use of the title "Popular Photography."
On January 19, 1937, upon application theretofore made by the defendant, the title "Popular Photography including Amateur Cinematography" was registered by the defendant in the United States Patent Office as Trade Mark No. 342,417. After defendant's magazine entitled "Popular Photography" was published, plaintiff, on April 7, 1937, notified defendant that the name "Popular Photography" belonged to it, that it intended to defend its rights therein, and thereafter plaintiff filed its complaint in the instant case and began cancellation proceedings against the defendant in the United States Patent Office. An Examiner of Interferences found plaintiff had abandoned "Popular Photography" as a title and as a trade-mark, that Popular Photography as used by plaintiff was not a trade-mark and dismissed plaintiff's petition. The Commissioner of Patents affirmed the decision of the Examiner of Interferences, and upon appeal that decision was affirmed, 127 F.2d 308.
Since May, 1937, defendant's magazine "Popular Photography" has appeared monthly. Its size, style, dress, composition and content differ from plaintiff's publication, and the typographical make-up of the titles of the two magazines is different. The title Popular Photography, claimed by plaintiff, did not appear in the advertising manual "Standard Rate and Data Service" at the time defendant adopted it, nor has it appeared there since under plaintiff's name. No subscriptions were lost by plaintiff when defendant's magazine appeared, and plaintiff's newsstand sales increased afterwards. From its very first issue defendant's periodical has had a very much greater circulation than plaintiff's ever had or than its "American Photography" has.
The principal issue presented here is whether plaintiff's carrying the title Popular Photography on the masthead of its publication, "American Photography," was such a trade-mark use as to prevent abandonment of its right to the exclusive use of that title.
Although local law applies to unfair competition and common law trade-mark infringement where federal jurisdiction is based on diversity of citizenship, Pecheur Lozenge Co. v. National Candy Co., 315 U.S. 666, 62 S.Ct. 853, 86 L.Ed. 1103, the applicable local law does not differ from the general common law of trademarks. Accordingly, decisions of federal courts and other jurisdictions are in point as illustrations of the common law.
The term "masthead" is a technical term of the printing trade, referring to the page in a publication which shows the title of the publication, the titles of publications which have been merged or consolidated under the name of the publication, the names of publishers and editors, the place where published, the subscription rates, the date of issue, and the frequency of publication. The relevant part of plaintiff's masthead read as follows:
AMERICAN PHOTOGRAPHY
Plaintiff contends that by keeping Popular Photography on its masthead it retained the exclusive right to use it. The names of the periodicals listed under American Photography do not even purport, however, to represent existing publications. Commercially they are dead, and they are, at most, names of the ancestors of the present magazine. Like epitaphs on the tombstones in the family burial plot, they reflect an honored past; but their present function is merely to describe the history and background of "American Photography."
Although plaintiff contends that its "Popular Photography," which was established in 1912, has not been discontinued and is still being published as a consolidated publication, it is apparent from the masthead in question that only one magazine is now published and that is "American Photography." True, the masthead reads American Photography incorporating Popular Photography along with the twelve other predecessors. But the word "incorporate" means "unite intimately" or "assimilate," Webster's New International Dictionary, 2d Ed., 1942, 1260; and synonyms are "fuse" or "merge." It is clear that the voracious "American Photography" has swallowed the former periodicals, and that ample time has elapsed for the digestive process to occur, so that absorption has resulted. This conclusion is strengthened by the following facts: the title which appears on the cover of plaintiff's publication is American Photography; this title has appeared in "Standard Rate & Data Service" since 1916; readers are asked to mention "American Photography" in corresponding with advertisers; and plaintiff registered American Photography as the title of its magazine in the United States Patent Office in 1938. Hence we believe that the label which has title significance for plaintiff's publication is American Photography.
Although trade-mark rights are property, they are not protected per se; it is only the good will in connection with which the mark is used that is protected. Hanover Star Mill. Co. v. Metcalf, 240 U.S. 403, 412-414, 36 S.Ct. 357, 60 L.Ed. 713. As its name indicates, the function of a trade-mark is to serve as a distinctive mark showing the origin or ownership of the particular article to which it is affixed. Elgin Nat. Watch Co. v. Illinois Watch-Case Co., 179 U.S. 665, 673, 21 S.Ct. 270, 45 L.Ed. 365. Whether a mark identifies an article, then, should be considered in ascertaining whether it should be protected against alleged infringement. Here, plaintiff's use of Popular Photography was not a tag for its article; indeed, the masthead is a perfunctory matter which interests readers little, if at all. The patent office tribunals found that plaintiff's subscribers were not even aware that the notation Popular Photography appeared in the masthead of "American Photography." Because it is not a commercial signature and is very inconspicuous, a masthead use is not the same as use on the cover, on a banner head, news head, or feature head. Since the title in question, Popular Photography, was not used in such a way as to identify the publication "American Photography," its appearance in the masthead was not a trade-mark use, i. e., the mark did not signify the individuality of source, and the authorities cited by plaintiff are distinguishable for the reason that the...
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