New West Corp. v. NYM Co. of California, Inc., 76-1109-AAH.
| Decision Date | 23 August 1976 |
| Docket Number | No. 76-1109-AAH.,76-1109-AAH. |
| Citation | 419 F. Supp. 40 |
| Court | U.S. District Court — Central District of California |
| Parties | The NEW WEST CORPORATION, a California Corporation, dba New West, Plaintiff, v. NYM COMPANY OF CALIFORNIA, INC., a California limited partnership, dba New West Magazine, Defendant. NYM COMPANY OF CALIFORNIA, a California limited partnership, dba New West Magazine, Counterclaimant, v. The NEW WEST CORPORATION, a California Corporation, Counterdefendant. |
Jessup & Beecher by Keith D. Beecher, Los Angeles, Cal., for plaintiff.
Lillick, McHose & Charles, Los Angeles, Cal., for defendant.
DEFENDANT AND COUNTERCLAIMANT'S FINDINGS OF FACT AND CONCLUSIONS OF LAW AND ORDER FOR JUDGMENT
There is no genuine issue with regard to the following material facts:
A. Jurisdiction.
1. Plaintiff and counter-defendant The New West Corporation (herein "Plaintiff") is a corporation organized and existing under the laws of the State of California with its principal place of business in Laguna Beach, California.
2. Defendant and counterclaimant NYM Company of California (herein "Defendant") is a limited partnership organized and existing under the laws of the State of California with its principal place of business in Los Angeles, California and doing business under the name New West Magazine. Defendant's general partner is New West Magazine, a corporation organized and existing under the laws of the State of California.
3. This action was commenced on March 26, 1976 when plaintiff filed in the Superior Court of the State of California for the County of Orange (Orange County Superior Court Case No. 243953). Defendant removed the action to the United States District Court for the Central District of California on April 5, 1976. An answer and counterclaim was filed on April 15, 1976.
4. Jurisdiction of this Court for both the principal action and the counterclaim is based on 15 U.S.C. Section 1121 and principals of pendent jurisdiction.
B. Defendant's Actions.
1. On June 5, 1975, defendant adopted the name NEW WEST as the title of a new West Coast magazine which it intended to pattern after its existing NEW YORK Magazine. On June 25, 1975, defendant's trademark counsel confirmed that the trademark and trade name NEW WEST was available for the new magazine.
2. A logo for defendant's NEW WEST MAGAZINE was prepared on or about September 18, 1975 and was adopted by defendant on September 25, 1975.
3. During the period September 1, 1975 through January 20, 1976, defendant proceeded with the activities prerequisite to
launching the new publication. Discussions were held with potential advertisers, distributors and public relations concerns.
4. On December 9, 1975 a dummy issue of defendant's NEW WEST MAGAZINE was shown to the Board of Directors of the parent company of defendant's general partner which authorized the funds required for a direct mailing solicitation to over 400,000 potential subscribers. Other copies of the dummy issue were transported in December 1975 to trademark counsel in Washington, D.C. and to advertising agencies in Connecticut and California.
5. Defendant's dummy issue is a mockup of its eventual magazine. It contains sample advertising and editorial copy and is bound in a four-color cover bearing the NEW WEST logo as it actually appeared in regular issues.
6. Defendant filed a trademark application for the NEW WEST mark on December 23, 1975, which application was opposed by plaintiff in June, 1976.
7. On January 20, 1976, defendant publicly announced by way of a press release that the publishers of New York Magazine intended to publish a West Coast periodical entitled "New West."
8. On January 24, 1976, a 430,000 piece direct mail solicitation using the New West logo on exemplar covers was mailed to metropolitan areas in California.
9. On January 27, 1976, the first subscription orders for defendant's NEW WEST MAGAZINE were received. By February 5, 1976 a total of 13,883 subscriptions had been received.
10. On February 9, 1976, defendant's general partner's parent corporation, NYM Corporation, published its February 23, 1976 issue of NEW YORK MAGAZINE which contained a special NEW WEST supplement prominently displaying the NEW WEST logo containing features of the type eventually carried in NEW WEST MAGAZINE.
11. On February 9, 1976, defendant published 10,000 copies of its inaugural edition which were circulated and sold in various West Coast markets during the ensuing month. Defendant's inaugural edition is substantially similar to defendant's later regular editions. It is identical in size, use of color, features, advertising and style to current issues of NEW WEST MAGAZINE.
12. During the period from December 1, 1975 through April 1, 1976, defendant and counterclaimant spent approximately $1,300,000 to advertise and promote its NEW WEST MAGAZINE.
13. Defendant's NEW WEST MAGAZINE is sold primarily through subscriptions and is distributed primarily through the mails. Defendant presently has in excess of 150,000 subscribers, which subscribers account for 75% of the total sales for each issue of the magazine.
C. Plaintiff's Actions.
1. The promoters of plaintiff corporation met on October 19, 1975 and decided upon the format for a feature news magazine which they intended to publish. They adopted the name NEW WEST for the proposed magazine during the first week of December, 1975 and incorporated under the name "The New West Corporation" on December 15, 1976.
2. Prior to January 26, 1976, plaintiff had not publicly disclosed its intent to publish a magazine entitled NEW WEST.
3. Prior to January 26, 1976 plaintiff had sold no advertising, solicited no subscriptions from the public, contacted no distributors, and conducted no promotion for its proposed NEW WEST MAGAZINE.
4. Prior to January 20, 1976 plaintiff had not prepared a logo for its proposed magazine.
5. The first public announcement that plaintiff intended to publish a magazine with the name New West was made in an article in the Los Angeles Times on January 26, 1976. Said article was initiated by plaintiff's president after he was aware of defendant's intent to publish a NEW WEST MAGAZINE.
6. Prior to February 5, 1976, plaintiff was aware of defendant's extensive promotional campaign and also aware of defendant's announced intent to publish an inaugural edition in late February, 1976.
7. On February 5, 1976, plaintiff corporation printed 500 copies of a "preview edition" bearing the name "New West." Said preview edition is 16 pages total in length including the cover, is entirely black and white, contains no paid advertising, and contains no original feature articles. The original purpose of the preview edition was to show it to potential advertisers.
8. On February 6 and 7, 1976 plaintiff arranged for the delivery of nine copies of its "preview edition" to two Orange County newsstands.
9. Plaintiff's preview edition was originally scheduled to be printed at a later point in time, but publication was accelerated in an attempt to put it on newsstands prior to any magazine published by defendant.
10. Plaintiff published only one "regular" edition of its NEW WEST MAGAZINE in May, 1976 (though it bears a June 1976 cover date). That issue is 60 pages in length excluding its cover, uses color throughout, contains considerable paid advertising, and features several original articles and stories.
11. In June, 1976 plaintiff publicly announced its intent to suspend the publication of further issues. At that date plaintiff had less than 500...
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New West Corp. v. NYM Co. of California, Inc.
...The facts material to a determination of this case are contained in the district court's opinion. New West Corp. v. NYM Co. of California, Inc., 419 F.Supp. 40, 41-43 (C.D.Cal.1976). We need not respond to appellant's contention that there was insufficient evidence to support the district c......