Magazine Publishers v. Ziff-Davis Pub. Co.

• Decision Date: 30 January 1945
• Docket Number: No. 190.,190.
• Citation: 147 F.2d 182
• Parties: MAGAZINE PUBLISHERS, Inc., v. ZIFF-DAVIS PUB. CO. et al.
• Court: U.S. Court of Appeals — Second Circuit

147 F.2d 182 (1945)

MAGAZINE PUBLISHERS, Inc., v. ZIFF-DAVIS PUB. CO. et al.

No. 190.

Circuit Court of Appeals, Second Circuit.

January 30, 1945.

Samuel A. Fried, of New York City (Edwin Levisohn and Harry Cohen, both of New York City, of counsel), for plaintiff-appellant.

Hays, St. John, Abramson & Schulman, of New York City (John Schulman, of New York City, Bailey Stanton and S. J. Stanton, both of Chicago, Ill., and William Klein II, of New York City, of counsel), for defendants-appellees.

Before CHASE, CLARK, and FRANK, Circuit Judges.

CHASE, Circuit Judge.

The defendant Ziff-Davis Publishing Company is an Illinois corporation engaged in the publication of magazines, and the defendant American News Company is a distributor of magazines including those published by Ziff-Davis. The plaintiff, which is a New York corporation and publishes magazines, brought suit in the New York Supreme Court against both defendants for an injunction, an accounting and damages, charging trade-mark infringement and unfair competition in the use of a magazine title. Ziff-Davis, which will hereinafter be referred to as the defendant, removed the cause to the District Court for the Southern District of New York because of diversity of citizenship. It answered the complaint, denying the plaintiff's allegations generally and setting up a counterclaim which charged unfair competition and sought an injunction, damages and an accounting. The court held that the plaintiff's trade-mark was invalid and that the defendant had not unfairly competed, but that the plaintiff had done so. It therefore entered an interlocutory decree dismissing the plaintiff's action against both defendants, enjoining it from continuing to compete unfairly with the defendant and referring the cause to a special master for the computation of damages and profits.

Since 1928 the plaintiff has published a monthly magazine called "Flying Aces," and in 1929 it registered this title as a trade-mark. The magazine is one of several periodicals published by the plaintiff under titles all of which include the word "Aces," and until recently it was largely or entirely given over to fictional material of various kinds. During the past two or three years its content has been altered to include considerably more factual material of a non-technical nature in order to give the magazine a wider popular appeal among aviation enthusiasts. By extensive advertising and other promotional activities the plaintiff has built up the circulation of "Flying Aces" to a leading position in that respect among aviation fiction magazines.

Since 1927 the defendant has published a magazine devoted largely to the technical side of aviation. Until July 1940 it was sold under the title of "Popular Aviation," but in the issue of that month the magazine carried an announcement reading as follows: "Starting with the August issue, Popular Aviation will add the name Flying to its masthead. The full name will appear as Flying and Popular Aviation. In subsequent issues the name Popular Aviation gradually will be dropped, leaving Flying as the sole name of this publication." Immediately after the appearance of this announcement the plaintiff's attorney wrote a letter to the defendant protesting against this proposed change on the ground that it would be unfairly competitive and would infringe the plaintiff's trade-mark, but the defendant disregarded this letter and proceeded with the execution of its plan. The August issue of its magazine carried the new title in two lines, "Flying" in relatively small uncolored letters and "Popular Aviation" below somewhat more prominently displayed. In September this arrangement was reversed except for the order of the words, "Flying" being carried now in larger and colored letters and "Popular Aviation" being relegated to a less conspicuous display. In succeeding issues this sort of emphasis upon "Flying" was increased and later the magazine appeared with "Flying" in very prominent form and the expression "Including Industrial Aviation" carried below in very small letters. Beginning with the issue of June 1943, the title was "Flying" without anything else and it has continued in this form until the present time.

Apparently in an effort to combat the visual effects of this alteration in the title of defendant's magazine, the plaintiff in December 1940 changed the appearance of its own magazine. Until this time it had displayed its title in a slanting two-line arrangement of the words "Flying Aces," whereby the letters of "Flying" tapered in size toward the right while the letters of the word "Aces," printed immediately below and toward the right, progressively increased in size. Both words appeared with about equal prominence, as the judge found. But with the December issue the appearance of the title was altered, so that "Aces" was printed in letters about half the size of those in "Flying" and set in a position somewhat lower, this new arrangement having the effect of emphasizing the word "Flying" and subordinating the word "Aces." Several variations were adopted in succeeding issues, but in every instance much greater prominence was given to the word "Flying."

Starting with the issue of December 1943 the plaintiff's magazine appeared with a "kodachrome" illustration on the front cover, something which the defendant had been employing for some time, and in the words of the trial judge this was "an additional feature which contributed to a general appearance approaching that of the defendant's publication." In a trade journal the plaintiff announced at this time that "Flying Aces" had put on a "new face," and during the trial its president testified that the magazine's new appearance, which involved the change in lettering of the title as well as the use of "kodachrome" photographs, had been planned by the plaintiff since March 1940.

The trial judge found that in 1942 and 1943 the circulation of each magazine increased considerably but that in the case of "Flying Aces" the increase during this period was much greater than it had been during previous years. He found also that both magazines have much larger news-stand sales than subscription sales and that for this reason it is particularly important that the two publications should be clearly distinguishable in appearance.

In denying relief to the plaintiff the court found that the term "Flying Aces" was purely descriptive and held that the trade-mark was, therefore, invalid. He found also that neither the word "Flying" nor its use in a magazine title had acquired a secondary meaning associated with the plaintiff's publication and hence that the defendant's use of the title "Flying" would not mislead purchasers into the belief when they bought defendant's magazine that they were obtaining the plaintiff's publication. Consequently he decided that the defendant had not unfairly competed.

Moreover, he found that special prominence given by the plaintiff after December 1940 to the first word in the title of "Flying Aces" and its adoption of "koda-chrome" illustrations on its front cover did have the effect of confusing the two magazines and did lead people to...