Fox-Stanley Photo Products, Inc. v. Otaguro, Civ. A. No. 71-3097.
| Decision Date | 03 April 1972 |
| Docket Number | Civ. A. No. 71-3097. |
| Citation | 339 F. Supp. 1293,174 USPQ 257 |
| Parties | FOX-STANLEY PHOTO PRODUCTS, INC. v. Harry K. OTAGURO and Shiryoku Incorporated. |
| Court | U.S. District Court — District of Massachusetts |
Herbert P. Kenway, Kenway, Jenney & Hildreth, Boston, Mass., for plaintiff.
Harold E. Cole, Boston, Mass., R. Shedrick Meek, Wayland, Mass., for defendants.
This is a civil action in which jurisdiction of this court is invoked on the basis of 15 U.S.C. § 1051 et seq., and on the basis of 28 U.S.C. § 1332. Plaintiff is a corporation organized under the laws of the State of Texas. The individual defendant is a resident of Massachusetts and the corporate defendant is a corporation organized under the laws of the Commonwealth of Massachusetts. Plaintiff seeks preliminary and permanent injunctive relief, a finding that defendants have wilfully infringed its trademarks and its trademark rights, money damages, and miscellaneous other relief.
The matter came before the court for an evidentiary hearing on plaintiff's motion for a preliminary injunction. After hearing, I find and rule as follows.
Plaintiff Fox-Stanley Photo Products, Inc., is a successor to earlier business entities, one of which was The Fox Company. It and its predecessors have been engaged, since approximately 1908, in dealing with photographic supplies of various and sundry kinds, including albums, print and picture frames, film, photographic paper, photographic processing kits, chemicals, cameras, flash attachments, lenses, etc. Many of the products sold by plaintiff are manufactured by other companies and sold with the trade name or trademark of the manufacturer thereon.
Plaintiff's predecessor originated a trademark with the words "The Fox Co." imprinted on a representation of a running or leaping fox. A predecessor of plaintiff originated a trademark for use in connection with photographic prints and enlargements made on glossy paper, said trademark being "Fox-Tone." In 1964, plaintiff originated a service mark for use in connection with the development and process printing of movie and still film, namely, "Fox Pro Color," together with a representation of the head of a fox. In 1965, plaintiff adopted the use of a service mark consisting of the words "Fox Photo" printed on a representation of a fox.
Plaintiff owns United States trademark Registration No. 163,773 for "Fox Tone;" Registration No. 222,662 for "The Fox Co." on a representation of a fox; Registration No. 536,960 for "The Fox Co." on a representation of a fox; and U. S. Service Mark Registration No. 832,719 for "Fox Pro Color" and a representation of the head of a fox. Plaintiff also owns Massachusetts trademark Registration No. 11,189 for a representation of a running fox bearing the words "The Fox Co." Significantly, plaintiff does not own a trademark registration nor a service mark registration under either state or federal law for a trade or service mark consisting of the words "Fox Photo" imprinted on a representation of a fox. Plaintiff never uses the word "Fox" alone in any trade or service mark it owns or claims.
Defendants began the distribution and sale of a magazine, which I would characterize as an art-type photographic magazine, called "FOX," on or about January 30, 1972. The magazine consists of groups of photographs and contains no written material or advertising. The fly-leaf of Vol. 1, No. 1, recites that "FOX" will be published six times a year during the last weeks of the months of January, March, May, July, September and November. It further recites that subscriptions are available at a cost of $30.00 per year and that all rights are reserved under a 1972 copyright by the corporate defendant Shiryoku Incorporated.
The factors to be considered on the question of the issuance or non-issuance of a preliminary injunction are whether or not irreparable harm will be suffered by the party seeking the injunction unless the injunction is granted, possible harm to the respondents if enjoined, and...
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