Cue Pub. Co. v. Kirshenberg

• Decision Date: 04 March 1960
• Citation: 22 Misc.2d 188,198 N.Y.S.2d 993
• Parties: , 124 U.S.P.Q. 533 CUE PUBLISHING CO., Inc. and Archbold Van Beuren, Plaintiffs, v. Jerold KIRSHENBERG, doing business as Cue Theater Tickets, Defendant.
• Court: New York Supreme Court

Page 993

198 N.Y.S.2d 993

22 Misc.2d 188, 124 U.S.P.Q. 533

CUE PUBLISHING CO., Inc. and Archbold Van Beuren, Plaintiffs, v. Jerold KIRSHENBERG, doing business as Cue Theater Tickets, Defendant.

Supreme Court, Special and Trial Term, New York County, Part VI.

March 4, 1960.

DeWitt, Nast & Diskin, New York City (Charles Nast, New York City, of counsel), for plaintiffs.

Henry Hirsch, New York City (Jacob Goldberg, New York City, of counsel), for defendant.

EDGAR J. NATHAN, Jr., Justice.

In this action for unfair competition, plaintiffs seek to enjoin the defendant from using the word 'Cue' as part of the title of the business conducted by him.

Cue magazine has been published by the plaintiffs continually since 1935. Its success has been noteworthy. Starting with an initial circulation of approximately 1,500, the magazine has steadily increased its circulation over the years to a present average weekly paid circulation in excess of 150,000 and an actual readership far greater. Large sums of money have been expended on advertising and promoting the publication.

Besides providing reviews of current motion pictures and legitimate stage productions, the magazine furnishes lists of restaurants, plays, motion pictures and other forms of diversion and amusement, their cost, and where they may be found. It also issues its 'seal of approval' to those restaurants in the metropolitan New York area which, in the opinion of its editors, would satisfy its reader's culinary tastes. Broadly speaking, Cue is designed to reach those members of the general public who are seeking entertainment.

The defendant is engaged in the ticket brokerage business within the metropolitan New York area. His only place of business is in Manhattan. In 1957, after having acquired a knowledge of the business by working for a large ticket brokerage firm for approximately seven years, he opened his own business under the name 'Cue Theater Tickets'. Because of the similarity of names between the magazine and the ticket brokerage business, the plaintiffs bring this action to enjoin the defendant from the use of the word 'Cue' in his business name, alleging that this may create the impression in the minds of the general public that the two enterprises are related, to the detriment of the plaintiffs.

The title 'Cue' was registered by the plaintiffs in March, 1936 as a trade-mark in the United States Patent Office under the Trade-Mark Act of 1905. That registration was republished in October, 1948 under the Trade-Mark Act of 1946, commonly known as the Lanham Act, 15 U.S.C.A. § 1051 et seq., and renewed in December, 1955. Therefore, plaintiffs might have chosen to pursue their remedies in the Federal District Court for the Southern District of New York. This they have not done.

The pleadings also make it clear that the plaintiffs are not proceeding under section 964 of the New York State Penal Law, or under section 368 of the New York State General Business Law. The court is here faced with a common law action based upon unfair competition.

The definitions of what constitutes unfair competition are legion (1 Nims, Unfair Competition and Trade-Marks, Section 4, 4th Ed., 1947), but simply stated, 'This is nothing but a convenient name for the doctrine that no one should be allowed to sell his goods as those of another * * *' (Denison, J., in Vogue Co. v. Thompson-Hudson Co., 6 Cir., 1924, 300 F. 509, 512. The doctrine is as difficult to apply as it is simple to state, and in the final analysis each case depends upon its particular facts.

The failure of the plaintiffs to seek a trade-mark registration in New York State does not protect the defendant if in fact there is unfair competition (Dell Publishing Co. v. Ultem Publications, 171 Misc. 159, 12 N.Y.S.2d 55). However, before the injunction here sought can issue, it is encumbent upon the plaintiffs to establish that the word 'Cue' has acquired a secondary meaning in and around the metropolitan New York area for those members of the public who concern themselves with the pursuit of entertainment. While, as defense counsel has so ably pointed out, it is extremely difficult for a word in current common usage to acquire a secondary meaning as opposed to a word that has passed out of the language or is a fanciful creation of its user, this is not impossible (see The Conde Nast Publications Inc. v. Vogue School of Fashion Modelling, D.C., 105 F.Supp. 325; Triangle Publications, Inc. v. Hanson, 8 Cir., 163 F.2d 74).

Upon a review of all the evidence, the court finds that the plaintiffs have succeeded in attaching a secondary meaning to the word 'Cue' in and around the metropolitan New York area and that the injunction should issue. It is quite clear that, at the present time at least, there is no direct competition between the parties. However, both operate in the general field of entertainment and our courts have consistently held that it is not essential for parties to be in competition...