Family Record Plan, Inc. v. Mitchell

• Decision Date: 22 July 1959
• Citation: 342 P.2d 10,172 Cal.App.2d 235
• Court: California Court of Appeals Court of Appeals
• Parties: , 122 U.S.P.Q. 414 FAMILY RECORD PLAN, INCORPORATED, a corporation, Plaintiff and Respondent, v. Ray M. MITCHELL, International Association of Photographers, a corporation, doing business under the firm name and style of Family Album Plan, International Association of Photographers, a corporation, Doe One, Doe Two, Doe Three Corporation, and Doe Four Company, Defendants. Ray M. Mitchell and International Association of Photographers, a corporation, doing business as Family Album Plan, Appellants. Civ. 23650.

Page 10

342 P.2d 10

172 Cal.App.2d 235, 122 U.S.P.Q. 414

FAMILY RECORD PLAN, INCORPORATED, a corporation, Plaintiff and Respondent, v. Ray M. MITCHELL, International Association of Photographers, a corporation, doing business under the firm name and style of Family Album Plan, International Association of Photographers, a corporation, Doe One, Doe Two, Doe Three Corporation, and Doe Four Company, Defendants Ray M. Mitchell and International Association of Photographers, a corporation, doing business as Family Album Plan, Appellants.

Civ. 23650.

District Court of Appeal, Second District, Division 1, California.

July 22, 1959.

Rehearing Denied Aug. 14, 1959.

Hearing Denied Sept. 16, 1959.

Alvin H. Weissman, Culver City, Richard B. Hoegh, Los Angeles, for appellants.

Harold Easton, John P. McGinley, Loeb & Loeb, Herman F. Selvin, Los Angeles, for respondent.

LILLIE, Justice.

The lower court granted to plaintiff a preliminary injunction prohibiting defendants from the continunance of certain acts claimed to constitute the infringement of a trade name (Bus. & Prof.Code, § 14400) and unfair competition (Civ.Code, § 3369). The parties are each engaged in the same business in this state and in the same general areas elsewhere, namely, selling photograph albums along with photograph certificates which, as part of a package deal, entitle the purchaser periodically to a specified number of photographs, usually of the purchaser's children, taken at studios under contract with the parties. The matter was submitted upon the amended complaint and verified answer (which likewise seeks injunctive relief), various affidavits and counteraffidavits, excerpts from depositions and numerous exhibits. Following the submission, the trial court enjoined defendants from using the name 'Family Album Plan or any name confusingly or substantially similar to the name Family Record Plan,' copying or imitating the advertising material used by plaintiff (particularly a certain advertising brochure described in the order), and representing to the public that defendant Mitchell was the founder and first president of plaintiff corporation.

Defendants have appealed from the order directing the issuance of the temporary injunction. They contend mainly that in advance of the trial on the merits, an insufficient showing was made to justify the implied factual determination and that the court, therefore, abused its discretion in granting the extensive relief prayed for by plaintiff. This court issued a writ of supersedeas as to certain of the foregoing prohibitions during the pendency of this appeal (January 28, 1959).

The factual summary which follows is necessarily governed by settled rules on appeal; thus, in ascertaining whether the facts warrant an order granting a preliminary injunction, it is incumbent upon this court to view such facts most favorably to the plaintiff (Isthmian S. S. Co. v. Nat. Marine Engineers, Beneficial Ass'n, 40 Cal.2d 433, 435, 254 P.2d 578); and in considering an order involving the decision of a question of fact, made on affidavits, all conflicts must be resolved in favor of the prevailing party (Voeltz v. Bakery and Confectionery Workers International Union, 40 Cal.2d 382, 386, 254 P.2d 553), and all reasonable inferences which are to be drawn must be in support of the trial court's order (Hale v. Bohannon, 38 Cal.2d 458, 466, 241 P.2d 4).

In the early part of 1946, plaintiff's predecessor, then known as Photographic Artists' Association, was organized as a partnership. Later that year it incorporated, defendant Mitchell becoming its president as well as a large stockholder, but the next year, in 1947, he severed all connections with the concern. In the early months of 1948, according to the affidavit of one Kirby, who was then one of its executives, plaintiff first commenced the practice of entitling its albums 'Our Family.' In 1952, the business was changed back to a partnership, and in December of 1953 the partners again formed a corporation bearing the present corporate name 'Family Record Plan, Incorporated.' Meantime, and almost immediately following his disassociation from plaintiff's predecessor, Mitchell started a similar business as a sole proprietorship under the firm name and style of International Association of Photographers. In connection therewith he claims to have used the phrase 'Our Family' in 1948 although he later admitted its earliest use was more likely in November 1949; reference was also made by him to the business use of the same phrase in 1951, but the supporting affidavit indicates that it was merely the title of an office record of some sort, namely, 'Verification of Family Album Account.' That year, also, the sole proprietorship was transferred to a corporation of the same name. Early in 1952, as Mitchell avers, the corporation decided upon the name 'Family Treasury Album Plan' to identify its goods and services; that same year dealers were furnished with an advertising folder or brochure (to which reference will later be made) inviting the public to communicate with 'Family Treasure Album' at a designated postoffice box in Hollywood, California.

In or about April of 1954, due to the tendency of employees, dealers and the public to use the shorter title, the trade name 'Family Album Plan' was adopted and has been used by defendants continuously ever since. This was done with knowledge that plaintiff, in 1953, had adopted and was using the name 'Family Record Plan.' The names, defendants admit in their answer, may be confusingly similar. At the hearing below, however, their counsel argued that his clients had previously appropriated the phrase's key word, to wit, 'Family,' asserting 'This is the key word and that is what causes the confusion.' Plaintiff, on the other hand, contended that it was first to use the key word; also, that its corporate name, unlike defendants', had as early as 1954 acquired a secondary meaning necessarily associating its products and services in the minds of a substantial segment of the public which, in turn, has been confused and misled as a result of defendants' activities. Instances of such confusion on the part of customers and prospective customers in nine different states, including California, were testified to by various affiants.

As to the claim of unfair competition (count two), there was documentary evidence of marked similarity between the parties' distinctive advertising material. Here again, defendants maintain that they were first in the field. As previously mentioned, in 1952 they brought out the asserted forerunner of the brochure which they are now enjoined from using; it shows a prominently placed picture of a photograph album with the words 'Our Family' on the cover pictures of growing children from infancy through early school years, a facsimile of a portrait certificate issued by the company, and other items not necessary to list. Mention is made by defendants of plaintiffs' 1954 brochure, said to have been received as an exhibit, which lacks the features found in defendants' 1952 publication. Be that as it may, in 1956 plaintiff commenced distribution of a new borchure which, although much larger in size, is similar in several respects to defendants' first brochure. Therein are likewise depicted a photograph album with the words 'Our Family' (although in different script), a facsimile of a portrait certificate and pictures of growing children, and other items. Later in 1956, possibly by way of retaliation, defendants also brought out a new brochure. As a side-by-side comparison will show, it strikingly parallels plaintiff's brochure in design, format coloring and content. In fact, the baby picture prominently featured therein is an exact duplicate of that used by plaintiff and was secured from the same source; too, Mitchell admitted that this pamphlet was prepared after examination and discussion of plaintiff's publication with his own advertising agency. He now contends that the two brochures 'taken as a whole' are not similar 'though both have their origins in the early 1952 brochure.'

As noted earlier, the chief attack upon the order appealed from is premised on the claim that the case is a close one on its facts and that the power to enjoin should not have been exercised under such circumstances. While there are certain subsidiary contentions, appellants, argue that (1) their prior appropriation of 'Family Album Plan' gave them an unqualified right to use that name; (2) respondent has not shown that its name had acquired a secondary meaning at the time appellants' name was adopted; (3) neither their name nor their advertising methods are confusingly similar with that of respondents'; and (4) comparative injuries and conveniences were not balanced and considered, it being urged in that respect that respondent has engaged in unfair and monopolistic practices.

It is, of course, true that injunction is an extraordinary power and should always be exercised with great caution (Mallon v. City of Long Beach, 164 Cal.App.2d 178, 190, 330 P.2d 423); but it is likewise true that '(w)here there is a substantial conflict in the evidence regarding an issue which may affect the discretion of the court * * * the order made will not on appeal be overthrown merely because there may be considerable or even preponderating evidence which, if believed, would have led to a contrary conclusion' (Miller & Lux v. Madera Canal & Irrigation Co., 155 Cal. 59, 62-63, 99 P. 502, 511, 22 L.R.A.,N.S., 391). To the same effect are Daniels v. Williams, 125 Cal.App.2d 310, 313, 270 P.2d 556, and Watts v. Hollywood Boulevard Travel Service, 81 Cal.App.2d 100, 183 P.2d 353. In the last analysis the trial court must determine which party is the more likely to be injured by the exercise of its discretion (McCoy v. Matich, 128 Cal.App.2d 50, 52, 274 P.2d 714) and it must then be exercised in favor of that party (McCoy v. Matich, supra).

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