Investor Pub. Co. of Massachusetts v. Dobinson

• Decision Date: 09 July 1897
• Docket Number: 632.
• Court: U.S. District Court — Southern District of California
• Parties: INVESTOR PUB. CO. OF MASSACHUSETTS v. DOBINSON et al.

82 F. 56

INVESTOR PUB. CO. OF MASSACHUSETTS v. DOBINSON et al.

No. 632.

United States Circuit Court, S.D. California.

July 9, 1897

Wells &amp Lee and Works & Lee, for complainant.

Sheldon Borden, for defendant.

WELLBORN District Judge.

This is a suit for an injunction and an accounting. The bill alleges That the plaintiff is a corporation formed and existing under the laws of the state of Massachusetts, and the defendant company a corporation formed and existing under the laws of the state of California; that for more than five years last past plaintiff has published, and still publishes, in the city of Boston, state of Massachusetts, in the city of New York, state of New York, and in the city of Philadelphia state of Pennsylvania, a weekly trade and financial journal named 'United States Investor'; that said paper, under said name, has become widely and favorably known throughout the United States, Canada, the republic of Mexico, England, the continent of Europe, and Australia, and that plaintiff has also become widely and favorably known throughout said territory; 'that defendant the Investor Publishing Company of California, on or about the 14th day of March, 1894, at the city of Los Angeles, state of California, began the publication of a trade and financial journal under the name of 'The Investor,' and the defendant G. A. Dobinson is the editor in chief of said trade and financial journal. And your orator charges that defendants, by adopting the name of 'The Investor' for such paper, and by printing at the head of its editorial column the words 'Published by the Investor Publishing Company, Incorporated,' the same as your orator's corporate name, has thereby diverted the trade belonging to your orator; that this similarity in the names has produced great confusion in plaintiff's business, and is depriving your orator of the benefit of the reputation acquired by the high character and popularity obtained by your orator among investors and advertisers throughout the United States and elsewhere, whereby your orator has been and is greatly damaged. And your orator further says that he fears, and has reason to fear, that said defendant will continue to use the name and style of 'The Investor Publishing Company,' and will continue to publish the said trade and financial journal under the name of 'The Investor,' and thereby cause irreparable injury to your orator's exclusive right to the corporate name 'The Investor Publishing Company,' and to its exclusive right to the name of 'United States Investor'.' The bill prays that defendant may be decreed to account for and pay over the income and profits unlawfully derived from the violation of plaintiff's rights, and also for an injunction from the further use of the names 'The Investor' and 'The Investor Publishing Company,' or any imitation thereof.

The answer denies, for lack of information and belief, the allegations of the bill as to the corporate existence of plaintiff, and as to the publication circulation, and reputation of the journal mentioned in said bill; admits that defendant is a corporation existing under the laws of the state of California, and that on the 14th day of March, 1894, it began the publication of a trade and financial journal, under the name of 'The Investor,' and that defendant Dobinson is the editor in chief of said journal, and has been ever since said date; denies that there has been, through any act of the defendants, any diversion of or confusion in plaintiff's trade or business, or that the plaintiff has been thereby greatly or at all damaged; denies that plaintiff fears, or has any reason to fear, that defendants will continue to use the name and style of the 'Investor Publishing Company' in connection with the publication of its journal. The answer then avers as follows:

'And these defendants further say that the allegation of complainant's bill relating to the use by the defendants of the corporate name of the 'Investor Publishing Company,' and of the name of 'The Investor' for the defendants' said journal, and to the publication by defendants at the head of the editorial column in the said last-mentioned paper of the words 'Published by the Investor Publishing Company, Incorporated,' are, and each of them is, untrue, except as hereinafter expressly set forth and admitted. These defendants further say that at the time of the incorporation of the Investor Publishing Company as aforesaid these defendants were not aware of the existence of the complainant as a corporation, and had no knowledge or notice of the complainant's existence, or of its said newspaper, to wit, 'The United States Investor.' And these defendants say that the name adopted for their said newspaper, to wit, 'The Investor,' is, and ever since its first publication has been, published at the head of the first page of said last-mentioned journal in the following form, to wit:

'THE INVESTOR.

'A Financial Guide to Southern California,

'AND WEEKLY JOURNAL OF FINANCE, INSURANCE, AND TRADE.

'LOS ANGELES, CAL., . . ., 189-.

'And these defendants further say that the said name so published and circulated by it at the head of its said journal in no way resembles the name adopted by complainant, to wit, 'United States Investor,' and that the said title page of defendants journal in no way resembles the title page of complainant's

journal, and is in no way calculated to produce confusion between the two journals. Defendants admit that on the interior page, known as the 'editorial page,' of their said journal, the investor, they commenced the publication of the words, 'Published by the Investor Company, Incorporated,' but they allege and show that such publication was, on April 4, 1894, three weeks after the initial publication of the said journal, changed so as to read as follows: 'Published by the Investor Publishing Company, of Los Angeles,' and that said form of words was continued until December 12, 1894, at which time, in order to avoid any possible conflict with the complainant, these defendants discontinued the publication of the corporate name 'The Investor Publishing Company' in connection with its said journal, and substituted the words, 'G. A. Dobinson, Editor,' and they have ever since continued the publication of their said journal in that form, and without the use of the said corporate name in any manner in connection with the said publication. And these defendants further say that ever since the first publication of their said journal they have published, at the head of the said editorial page, the name, purpose, and place of publication of their said journal, in the following form, to wit:

''THE INVESTOR.

"A Financial Guide to Southern California, and Weekly Journal of Finance, Insurance, and Trade. Published every Thursday at 4-5 Bryson Block, Los Angeles, California. * * * Entered at the post-office at Los Angeles, California, for transmission through the mails as second-class matter.'

'And these defendants further say that they have not at any time infringed the rights of the complainant to the use of the name 'United States Investor,' or in any manner diverted or received any portion of the receipts or profits which the said complainant might or would have received or derived from its said journal; and these defendants further say that they have not, nor has either of them, sought in any manner, directly or indirectly, to interfere with the rights of the complainant, if any it has, or to divert or appropriate any portion of the income or profits of complainant in the publication of its said journal or otherwise, and they deny that they have in any manner copied or imitated the form or style of the complainant's journal, or that the resemblance between the said journals, or between the captions, title pages, or editorial columns, is sufficient or would be likely to deceive or mislead any customer of the respective journals; and they deny that any portion of the complainant's reputation, popularity, receipts, or income have been diverted by these defendants by the publication of their said journal, The Investor, or otherwise, or at all.'

The facts are stipulated in writing by the parties, as follows:

'(1) That the plaintiff in the above-entitled action, to wit, Investor Publishing Company of the State of Massachusetts, was incorporated under the laws of the state of Massachusetts, on or about the 10th day of November, 1891, under the corporate name of 'Investor Publishing Company.' That ever since the 10th day of November, 1891, the said plaintiff, under said corporate name of 'Investor Publishing Company,' has published in the city of Boston, state of Massachusetts, in the city of New York, state of New York, and in the city of Philadelphia, state of Pennsylvania, a weekly trade and financial journal named 'United States Investor.' That a copy of said 'United States Investor' is hereunto attached, showing the form in which said journal has been published during all of said time. That the said paper, under said name, has been widely and generally circulated throughout the United States, Canada, the republic of Mexico, England, the continent of Europe, and Australia, and the said Investor Publishing Company aforesaid has also become widely and favorably known through said territory; and it was at all times published in said paper that it was published by the 'Investor Publishing Company,' plaintiff aforesaid.

'(2) That the defendant the Investor Publishing Company became incorporated under the laws of the state of California on or about the 13th day of February, 1894, under the corporate name of 'The Investor Publishing Company.' That the said defendant the Investor Publishing Company, on the 14th day of March, 1894, at the city of...