Mercury Record Corp. v. Buckingham Record Co.

• Decision Date: 20 December 1963
• Citation: 226 F. Supp. 427
• Parties: MERCURY RECORD CORP., Plaintiff, v. BUCKINGHAM RECORD CO., Inc., Defendant.
• Court: U.S. District Court — Southern District of New York

226 F. Supp. 427

MERCURY RECORD CORP., Plaintiff, v. BUCKINGHAM RECORD CO., Inc., Defendant.

United States District Court S. D. New York.

December 20, 1963.

Paul J. Kern, New York City, Rhoda H. Karpatkin, Miles Lourie, New York City, of counsel, for plaintiff.

Maxwell Okun, New York City, for defendant.

McLEAN, District Judge.

This is an action for unfair competition in the sale of phonograph records. The complaint seeks a permanent injunction and damages. Plaintiff now moves for a preliminary injunction.

There is no real dispute as to the essential facts, which I find to be as follows:

Plaintiff, a Delaware corporation, is engaged in the business of manufacturing and selling phonograph records. On or about August 15, 1963, plaintiff put on the market a long-playing phonograph record of songs sung by a Belgian nun named Soeur Sourire. The record is enclosed in an album which contains in addition to the record itself printed material descriptive of Soeur Sourire. The first song on the record is called "Dominique." Since August 1963 this song has gained a considerable popularity and plaintiff's sales of its record have been substantial. Plaintiff has sold the record for distribution to the retail trade. The retail price of the record album is $4.98 for the stereophonic version, and $3.98 for the Monaural.

The cover of the album is inscribed at the top "Soeur Sourire" and in larger type, "The Singing Nun." Plaintiff's seal appears alongside the title. The cover is decorated with a drawing in black and white of a seated nun playing a guitar. Six girls are listening to her. It is an outdoor scene depicting a tree, several conventionalized flowers and a number of large birds who also appear to be listening.

Also on or about August 15, 1963, plaintiff placed on the market a 45 r.p.m. record of two of the songs contained on the other record, one of which was "Dominique." The selling price of this 45 r.p.m. record is not specified.

When this record was first placed on the market, it was enclosed in a green paper jacket bearing the name Philips in large type. This jacket has no resemblance whatsoever to the cover of the album above referred to. However, on or about October 24, 1963, plaintiff adopted a new jacket for the 45 r.p.m. record which was decorated with a drawing identical to that on the cover of plaintiff's long-playing record album. This cover was labeled at the top, "Dominique" under which appears "Soeur Sourire the Singing Nun." In smaller type at the top appears the legend: "From `The Singing Nun Album' Philips PCC 203 PCC 603."

Since October 24, 1963, some 225,000 copies of the 45 r.p.m. record enclosed in this jacket have been shipped by plaintiff.

Defendant is a New York corporation which also is engaged in the business of manufacturing and selling phonograph records. On or about November 9, 1963, defendant placed on the market a record containing a number of songs, one of which is the song "Dominique." Defendant has since sold it for distribution to the retail trade. The retail price of this record is 99¢.

The record is contained in a jacket which also is decorated with a drawing in black and white depicting a nun playing a guitar outdoors. Four boys and girls are watching her. The nun is also observed by four large birds who look very much like the birds on plaintiff's album cover and a number of conventionalized flowers are dotted about which are substantially similar to the flowers on plaintiff's album. Instead of the single tree on plaintiff's album cover, defendant's jacket depicts a house and several trees.

At the top of defendant's cover appears the word "Dominique" in type identical with that on the jacket of plaintiff's 45 r.p.m. record. Underneath the word "Dominique" appears the legend, "The Singing Nun's Song." The foliage of one of the trees obscures the word "Song" and partially obscures the "'s" on the word "Nun's" so that the casual observer might very well read the legend as "The Singing Nun."

Underneath these legends in small type appears "Le Choeur des Enfents de Montmartre." This is a children's choir which sings the selections contained on the record which include not only "Dominique" but such well-known compositions as the "Marseillaise." None of the songs is sung by Soeur Sourire herself.

No seal appears on the face of the jacket.

Defendant asserts that it is duly licensed by the proprietor of the copyright of the song "Dominique" to manufacture and sell a record of that song. Plaintiff does not dispute this, but the fact is of no importance here. We are concerned in this case not with the song itself, but with the jacket or cover in which the respective records are enclosed.

A comparison of defendant's jacket with the cover of plaintiff's long-playing record album reveals that, although they are not identical, the similarity is very marked. Plaintiff has offered no evidence to show that consumers have actually been confused. Defendant has offered none to show that they have not. Evidence of actual confusion is not necessary. Pastificio Spiga Societa Per Azioni v. De Martini Macaroni Co., Inc., 200 F.2d 325 (2d Cir. 1952).

I find that it is likely that such confusion will exist and that defendant's record will be passed off as that of plaintiff. This is all that is required to sustain a preliminary injunction. My-T Fine Corporation v. Samuels, 69 F.2d 76 (2d Cir. 1934). Cf. Standard Brands, Inc. v. Smidler, 151 F.2d 34 (2d Cir. 1945).

When one compares defendant's...