Information Clearing House v. Find Magazine

• Decision Date: 02 May 1980
• Docket Number: No. 80 Civ. 1505.,80 Civ. 1505.
• Citation: 492 F. Supp. 147
• Parties: INFORMATION CLEARING HOUSE, INC., Plaintiff, v. FIND MAGAZINE and Jack Linder, Defendants.
• Court: U.S. District Court — Southern District of New York

492 F. Supp. 147

INFORMATION CLEARING HOUSE, INC., Plaintiff, v. FIND MAGAZINE and Jack Linder, Defendants.

No. 80 Civ. 1505.

United States District Court, S. D. New York.

May 2, 1980.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Kane, Dalsimer, Kane, Sullivan & Kurucz, New York City, for plaintiff; David H. T. Kane, Siegrun D. Kane, Virginia R. Richard, New York City, of counsel.

Kass, Goodkind, Wechsler & Labaton, New York City, for defendants; Arthur H. Seidel, Roberta L. Jacobs, Seidel, Gonda, Goldhammer & Panitch, P. C., Philadelphia, Pa., of counsel.

OPINION

FINDINGS OF FACT AND CONCLUSIONS OF LAW

EDWARD WEINFELD, District Judge.

Plaintiff, Information Clearing House, Inc. ("Information"), is the owner of the registered trademark "FIND," used in connection with its business of "providing computerized information retrieval services on a subscription basis." It also owns the registered trademark "FINDOUT," used for a "newsletter relating to the furnishing of business information and research in connection therewith." The defendants are the corporate publisher and the chief executive officer of a newly-launched publication, "Find Magazine," of which one issue has been distributed to date with the logotype on the front page as follows:

"find MAGAZINE"¹

Plaintiff commenced this action charging that the defendants' use of "find" constitutes trademark infringement,² unfair competition,³ dilution of plaintiff's mark, and tarnishment of its reputation;⁴ it seeks injunctive relief against defendants' continued use of the word "find" in its magazine title and in promotional and advertising materials. The defendants counterclaimed, seeking cancellation of plaintiff's two trademarks "Find" and "Findout" upon a claim that they are generic words not entitled to trademark protection.⁵ Pursuant to Rule 65(a)(2) and by stipulation of the parties, the hearing on plaintiff's motion for a preliminary injunction was consolidated with the trial on the merits.

After a word-by-word study of the trial transcript, examination of the trial exhibits, the Court's contemporaneous trial notes, which include an appraisal of the witnesses and their demeanor, an evaluation of the pertinent factors, and upon the totality of the testimony and documentary evidence, I find that each litigant, as to its respective claims, has failed to sustain its burden of proof to warrant the requested relief.

Plaintiff's Business

Andrew Garvin, plaintiff's principal, founded Information in 1969; its initial purpose was to provide "customized research services" to retainer clients. These subscribers now number approximately 6,000, comprising almost exclusively corporations and businesses in the New York Metropolitan area. From its inception, plaintiff adopted the name "FIND." By the mid-1970's, Information, in pursuit of its goal of becoming a "total information resource," had expanded its operation into a tripartite enterprise. Plaintiff's essential business remained, as it always had been and continues to be, the provision of "quick information" or "information retrieval" to retainer clients. Most of this information is provided in rapid response to telephoned requests of clients. The information supplied covers a wide spectrum of diverse subjects of a commercial, technical, economic and cultural nature. Plaintiff responds to a customer's request by supplying an oral, telephoned answer, sometimes supplemented with appropriate written documents.

The second largest component of the business is "project research," by which plaintiff provides longer, more detailed, and generally written responses to questions or information requests propounded by clients. This, too, is "customized research" and its scope is defined by the client's needs. Again the range of information sought is wide and diverse — for example, it may include reports on hair conditioners, location of recipes for fish house punch, to monthly updates on the machine tool industries.

The third component of the plaintiff's business, which it refers to as the "publications area," and about which this controversy centers, consists of three disparate elements. These are: (1) a monthly newsletter called "Findout" which for the most part contains information about the various services provided by plaintiff and is distributed free to all of plaintiff's retained clients, to various businesses and institutions throughout the country, and in some instances, sold to others; (2) an annual publication entitled "Findex," sold to fewer than 2,000 customers at a cost of $89.50 per copy, which lists recent publications of a commercial and technological nature, with a brief synopsis of each; and (3) various other "studies" or "reports" on topics selected by the plaintiff itself, appearing in booklet or book form and sold at fixed prices. These studies cover a broad range of subjects, including surveys of the CB radio industry (of which 200 copies have been sold), weight control market, prescription eyeglass market, vitamins, mouth washes, breath sprays, bottled water industry and a "Handbook of Construction Resources & Support Services."

These studies and reports published by the plaintiff range in size from 15 to 1400 pages, and in price from $1.00 to $950. Many of the publications sell for more than $100 apiece, and the vast majority, for more than $25. All deal with narrow topics of interest primarily to small, selected segments of the business community. The availability of these publications is advertised both in plaintiff's newsletter "Findout" and in other promotional pieces. Although the plaintiff has at times sent promotional literature to the homes of selected professionals, whose names were drawn from subscriber lists, there was no evidence that any item purchased from the plaintiff was mailed to a home address. None of the plaintiff's publications is sold at newsstands.

The "publications area" of plaintiff's business has become its second largest program and is steadily increasing in size and importance. During fiscal year 1979 plaintiff grossed approximately $500,000 from the sale of its publications. This represents approximately twenty percent of all revenues generated by Information during that year. Plaintiff anticipates continued growth for Information's publications area; in 1980 it is expected that it will sell more than 2,000 copies of Findex and gross more than $650,000 from the sale of publications.

No evidence was offered to show what portion of these amounts could be attributed to sales of Findex, of Findout, or of the plaintiff's published studies on selected topics. The "overwhelming majority" of the $10 million generated in sales by Information during its ten-year life is attributable to its "custom information" service, and less than ten percent of its sales revenue during that time had been generated by its publications. During this period, the "prime business," comprising the "bulk" of plaintiff's enterprise,⁶ consisted of either telephoned responses or correspondence responses to particular inquiries. The majority of this information was furnished to "the marketing and planning departments of companies and other business organizations." Plaintiff, since 1970, has spent in excess of $1,000,000 for advertising and promotion but no evidence has been presented to show what portion was spent on its essential informational business as compared to its publications. Its only two radio announcements in 1976 were directed to its informational service and no radio advertising has been directed to any publication.

Plaintiff contends that each of its publications, as well as the countless circulars used to advertise its services, contains its registered mark "Find" displayed in a prominent position. The evidence does not support that claim. Although there are a number of instances in which the word "Find" appears alone on a cover page or in the text of one of plaintiff's publications, in the vast majority of instances it appears as part of another word, or coupled with other letters. The most common configurations are the words "Findout" and "Findex," in which plaintiff's mark "Find" is submerged into other, separate words. When "Find" appears in forms other than these two titles, it is almost invariably coupled with the letters "SVP" — thus, "Find/SVP."⁷

Garvin, plaintiff's chief executive officer, was unable to cite a single periodical or publication issued by the plaintiff whose source was not attributed to "Find/SVP," rather than merely to "Find."

The Defendants' Business

It is not disputed that the defendants are the junior users of the mark, and that plaintiff's use of it predates theirs by more than a decade. The premier issue of Find Magazine appeared in March 1980, approximately one month after this lawsuit had commenced and only days before the trial. Those most active in the magazine's publication are the defendant Jack Linder, its publisher, and Ms. Sheila Jacobson, its editor. Each has had substantial experience in the production and sale of English language periodicals directed to segments of the Jewish population. The concept of Find's founders was a magazine of high quality for the Jewish community which would have an editorial mix designed to involve both deeply committed Jews and Jews who had never explored their roots and would include the widest possible variety of topics, including politically controversial matters, personal profiles, fashion closeups, food and local events of interest. Linder concluded that such a magazine would have the best chance of success in the few communities of the United States with a high diversity of Jewish population. He testified and the Court accepts as fact that he and his associates considered more than 500 possible names before fastening upon "Find Magazine." Ultimately, the word "Find" was chosen both because it was monosyllabic and because it suggested the searching, introspective quality that the...