Dell Pub. Co. v. Stanley Publications, Inc.

• Decision Date: 19 January 1961
• Citation: 9 N.Y.2d 126,172 N.E.2d 656,211 N.Y.S.2d 393
• Parties: , 172 N.E.2d 656, 128 U.S.P.Q. 493 DELL PUBLISHING COMPANY, Inc., Appellant, v. STANLEY PUBLICATIONS, INC., Respondent.
• Court: New York Court of Appeals Court of Appeals

Page 393

211 N.Y.S.2d 393

9 N.Y.2d 126, 172 N.E.2d 656, 128

U.S.P.Q. 493

DELL PUBLISHING COMPANY, Inc., Appellant, v. STANLEY PUBLICATIONS, INC., Respondent.

Court of Appeals of New York.

Jan. 19, 1961.

Milton Handler, Sidney A. Diamond and Cecelia H. Goetz, New York City, for appellant.

Benjamin E. Winston and Eli D. Schoenfield, New York City, for respondent.

BURKE, Judge.

Appellant (Dell Publishing Company, Inc.), the publisher of a magazine entitled 'MODERN ROMANCES', on this appeal seeks to reinstate an injunction which was set aside by the Appellate Division in an action to restrain respondent (Stanley Publications, Inc.) from using the word 'modern' in respondent's magazine title 'Modern/CONFESSIONS' (hereinafter designated 'Modern/CONFESSIONS'), alleging trade-mark infringement and unfair competition. We find that the denial of the injunction and the dismissal of the complaint was proper.

Appellant has since 1930 published monthly both 'MODERN ROMANCES' and 'MODERN SCREEN'. These two, along with a third magazine currently 'SCREEN STORIES', have been previously offered as a unit to advertisers as the 'Modern Magazines' and later as the Dell Modern Group. The third magazine has never had the word 'modern' in its title. For the past 15 years the combined circulation of these three magazines has been approximately two and one-half million copies a month. 'MODERN ROMANCES' alone has exceeded one million copies a month, and its advertising revenue exceeds $800,000 annually.

'MODERN ROMANCES' was originally registered as a trade-mark in the United States Patent Office in 1932, and re-registered in 1954 under the Trade-Mark Act (Lanham Act) of 1946 (15 U.S.C.A. § 1051 et seq.).

In addition to the above three magazines appellant publishes approximately 18 distinct magazines, 38 comics and 14 pocket-size books a month, as well as 20 children's books each year. With only one or two exceptions each of the covers carries 'in the upper left-hand corner the distinctive and conspicuously placed 'DELL' insignia or symbol, consisting of the letters DELL in a contrastingly colored box'. This symbol was first adopted in 1943 and has since been used continuously in its advertising and letterheads, as well as on its publications, in order to identify them as appellant's property.

Over a period of 21 years since 1937 Dell spent approximately $2,320,000 to advertise and promote the Dell Modern Group, of which $1,140,000 was expended on 'MODERN ROMANCES' alone. In promoting 'MODERN ROMANCES' individually and as a member of the Dell Modern Group, Dell employed radio, television, newspapers, magazines and direct mail advertising. In 1948 a program entitled 'MODERN ROMANCES' was initiated on radio, and later put on television.

Respondent, on the other hand, has since 1952 published various magazines including 'Real Secrets', 'Real War' and 'Real Men'. Early in 1958 respondent's executives decided to publish a companion magazine to Real Secrets, and initially selected the title 'Real Confessions' in order to keep it in the Real Group. However, upon being informed that this title had been previously adopted by another publisher, the title 'Modern/CONFESSIONS' was chosen. It is conceded that '(o)ne or more of the persons at defandant's editorial conference were aware of plaintiff's 'MODERN ROMANCES'. However, it is claimed that 'none saw any possible conflict, since historically the magazine field has had 'close' titles; that is competing titles containing one or more identical or nearly identical words in a composite title. For instance, 'Adventures for Men' and 'Real Adventures' are published by competing publishers, as are 'Movie Life' and 'Movie Mirror'; 'Confidential' and 'Confidential Detective'; 'Man's Conquest' and 'Man's Smashing Stories'; and 'Police Dragnet' and 'Police Gazette,' all of which are distributed by the same national distributor.'

Although additionally conceding that 'Modern/CONFESSIONS' is generally classified in the same field (i. e., romance-confession) as 'MODERN ROMANCES', respondent notes that the U. S. Patent Office records include approximately 61 publications whose registered titles contain the word 'modern', including 'Modern Teen', 'Modern Bride', 'Modern Miss', 'Modern Photography', 'Modern Baby' and 'Modern Man', none of which are published by the appellant or respondent. Moreover, additional evidence of identical common words in competing magazines in the romance-confession field was thus indicated: 'True Story', 'True Romance', 'True Love' and 'True Experience' published respectively since 1919, 1923, 1924 and 1925 by Macfadden Publications, Inc.; 'True Confessions' published since 1922 by Fawcett Publications; 'True Secrets' published by Official Magazine Corp.; 'Real Romances' and 'Real Story' published by Hillman; 'Real Confessions' published by Sterling.

Out of 26 magazine titles in the romance-confession field, 11 use the word 'romance', 5 use 'confessions', 5 use 'story' and 6 use 'experience'.

In choosing the word 'modern' respondent's officers testified that they wanted a descriptive word which would also distinguish this magazine from the multitude of confession magazines.

The majority of the Justices of the Appellate Division found undisputed 'that all so-called 'romance' and 'confession' magazines, which cater primarily to the distaff side, share common characteristics. Most contain in their title a word such as 'romance', 'confession,' 'secrets' or 'experience.' The stories which purport to be true are actually fictional, are told in the first person, and deal with lurid accounts of sins, aberrations, mistakes, illicit loves, and marital infidelities. The covers of such magazines almost invariably feature the photographs or portraits of young and pretty girls as well as 'blurb' lines headlining the stories inside.' (201 N.Y.S.2d 1010.) On the other hand, the Appellate Division quite accurately noted that 'Primarily, the logotype of 'Modern Confessions' in no way resembles that of 'Modern Romances.' Even a cursory examination of the exhibits shows that the two words of plaintiff's title are printed on the cover of plaintiff's magazine in letters of equal size, and on a single line. The words in defendant's title, however, are in italics, and the emphasis is on the word 'confessions.' 'Modern' is in the lower case type, and is located above the word 'Confessions' which extends entirely across the cover.

'Moreover, plaintiff's magazine has the name DELL printed in the upper left-hand corner. Another aspect of difference is the nature of the banner headlines on the respective magazines for the past five months. It is apparent that plaintiff in the form of its cover is seeking to broaden its reader base by appealing not just to the 'confession' market, but to the general women's magazine market with such titles as: 'Complete in this Issue: Chicken Cook Book'; 'There is a Perfect Hairdo For you on page 97'; 'Save $20 on 20 Dinners', etc. On the other hand, defendant's magazine makes no pretense at merchandising anything but so-called 'confessions'; with the upper headlines of its last five issues blazoning such titles as: 'Invitations to Sex?'; 'Why Shouldn't He Wait For Me'; 'Teen Girl on Sin Street'; and 'Afraid to Trust My Heart.'

'Hence one need only pick up copies of the plaintiff's and defendant's magazines to see that their covers, their contents and even the texture of their paper are significantly different. The similarities are only those inherent in the nature of the product.'

Prior to the trial of this action six issues of respondent's magazine were published with an average net paid circulation of 130,000 copies per month, and net advertising revenue of $1,000 for each issue. 'Modern/CONFESSIONS' has a sales price of 25 cents as distinguished from the price of 20 cents for 'MODERN ROMANCES'.

The Appellate Division, finding for the respondent, ordered a reversal of findings of fact contained in the decision and opinion of the Supreme Court. In their view the evidence 'does not warrant a finding of a reasonable tendency to cause confusion'. Defendant's magazine, they said, is clearly 'distinguishable from plaintiff's, and cannot reasonably be mistaken for it.' They found in addition that although the decision of the Supreme Court rested on a finding of unfair competition, and not on trade-mark infringement, it is apparent that a likelihood of confusion would be relevant to both claims; that '(a)s already indicated, the record does not support a conclusion of a reasonable likelihood of confusion'; and that the word 'modern', as used in magazines in the romance-confession field, 'is not a nondescriptive term which had acquired a secondary meaning to be protected by a court of equity.'

The weight of the evidence supports the prevailing opinion of the Appellate Division.

It is fundamental that the substantive law of trade-marks is merely a portion of the broader law of unfair competition (Hemmeter Cigar Co. v. Congress Cigar Co., 6 Cir., 118 F.2d 64); and that it is intended to discourage and restrain one from palming off his good and/or their origin as the goods of another. Triangle Pub. v. Hanson, D.C., 65 F.Supp. 952, affirmed D.C., 163 F.2d 74. While we undoubtedly have jurisdiction over actions involving unfair competition, it is equally fundamental that, although Federal law may govern an action for infringement of a Federally registered trade-mark, we share jurisdiction over such actions with the Federal courts (Brown & Bigelow v. Remembrance Adv. Prods., 279 App.Div. 410, 110 N.Y.S.2d 441, affirmed 304 N.Y. 909, 110 N.E.2d 736).

However, it has been noted that even a casual examination of the decisions will indicate that, aside from the broad and well-established principles, not only is precedent difficult to ascertain, but in many instances the decisions seem incompatible (Telechron, Inc., v. Telicon Corp., D.C., 97 F.Supp. 131, aff...