New West Corp. v. NYM Co. of California, Inc.

• Decision Date: 01 May 1979
• Docket Number: No. 76-3234,76-3234
• Citation: 595 F.2d 1194,202 USPQ 643
• Parties: , 5 Media L. Rep. 1053 The NEW WEST CORPORATION, a California Corporation, d/b/a New West, Plaintiff-Appellant, v. NYM COMPANY OF CALIFORNIA, INC., a California Limited Partnership, d/b/a NewWest Magazine, Defendant-Appellee. NYM COMPANY OF CALIFORNIA, a California Limited Partnership, d/b/a New WestMagazine, Counterclaimant, v. The NEW WEST CORPORATION, a California Corporation, Counterdefendant.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 1194

595 F.2d 1194

202 U.S.P.Q. 643, 5 Media L. Rep. 1053

The NEW WEST CORPORATION, a California Corporation, d/b/a

New West, Plaintiff-Appellant, v. NYM COMPANY OF CALIFORNIA, INC., a California Limited

Partnership, d/b/a NewWest Magazine, Defendant-Appellee.

NYM COMPANY OF CALIFORNIA, a California Limited Partnership, d/b/a New WestMagazine, Counterclaimant, v. The NEW WEST CORPORATION, a California Corporation, Counterdefendant.

No. 76-3234.

United States Court of Appeals Ninth Circuit.

May 1, 1979.

Keith D. Beecher, Los Angeles, Cal., for plaintiff-appellant.

Kenneth E. Kulzick, Lawrence W. Dam, Los Angeles, Cal., for defendant-appellee.

Appeal from the United States District Court, Central District of California.

Before KILKENNY and ANDERSON, Circuit Judges, and SOLOMON, District Judge. ^*

KILKENNY, Circuit Judge:

This is an appeal from a judgment in a trade-mark case in favor of appellee NYM Company of California, Inc. (NYM) on cross-motions for summary judgment. After finding that there was no genuine issue of material fact, the district court concluded that NYM had established its ownership rights in the trade name and trade-mark "New West" as the title of its magazine and that appellant, The New West Corporation's (NWC) use of the name "New West" on its magazine was likely to cause public confusion. The court further concluded that NWC's use of the name "New West" as the title of its magazine infringed upon NYM's ownership rights in the "New West" trade name and trade-mark and unfairly competed with NYM in violation of 15 U.S.C. § 1125(a).

Each party alleges a use of its mark in interstate commerce. These allegations are not disputed by the parties and are supported by the record.

FACTS

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 court's findings of fact numbers 6 and 8 (419 F.Supp. at 43). These findings are surplusage and unnecessary to the decision.

We summarize the material facts as follows: On June 5, 1975, appellee 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, appellee's trade-mark counsel, after investigation, confirmed to appellee that the trade-mark and trade name "New West" was available for the new magazine. A logo for appellee's New West magazine was prepared on or about September 18, 1975, and was adopted by appellee on September 25, 1975. During the period September 1, 1975, through January 20, 1976, appellee proceeded with the activities prerequisite to launching the new publication. Discussions were held with potential advertisers, distributors and public relations concerns. On December 9, 1975, a dummy issue of appellee's New West magazine was shown to the board of directors of appellee's promoting company, New York Magazine, 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 trade-mark counsel in Washington, D. C. and to advertising agencies in Connecticut and California. Appellee's dummy issue was a mockup of its eventual magazine. It contained sample advertising and editorial copy and was bound in a four-color cover bearing the New West logo as it actually appeared in regular issues.

Appellee filed a trade-mark application for the "New West" mark on December 23, 1975, which application was later opposed by appellant. On January 20, 1976, appellee 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." On January 24, 1976, a 430,000 piece direct mail solicitation using the "New West" logo on exemplar covers was mailed by appellee to metropolitan areas in California. The first subscription orders for appellee's New West magazine were received on January 27, 1976. By February 5, 1976, a total of 13,883 subscriptions had been received. On February 9, 1976, appellee's promoting corporation, New York Magazine, published its February 23, 1976, issue which contained a special New West supplement prominently displaying the "New West" logo and containing During the period from December 1, 1975, through April 1, 1976, appellee spent approximately $1,300,000.00 to advertise and promote its New West magazine. The magazine is sold primarily through subscriptions and is distributed primarily through the mails. At the time of trial, appellee had in excess of 150,000 subscribers, which subscribers accounted for 75% Of the total sales for each issue of the magazine.

features of the type eventually carried in New West magazine. Appellee, on February 9, 1976, published 10,000 copies of its inaugural edition which were circulated and sold in various West Coast markets during the ensuing month. Appellee's inaugural edition is substantially similar to appellee's later regular editions. It is identical in size, use of color, features, advertising and style to current issues of New West magazine.

The promoters of appellant 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 in California under the name "The New West Corporation" on December 15, 1976. Prior to January 26, 1976, appellant had not publicly disclosed its intent to publish a magazine entitled "New West", nor had appellant prior to that date sold advertising, solicited subscriptions from the public, contacted distributors, or conducted any promotion for its proposed New West magazine. Prior to January 20, 1976, appellant had not even prepared a logo for its proposed magazine.

The first public announcement that appellant 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 appellant's president after he was aware of appellee's intent to publish a "New West" magazine. Appellant knew of appellee's promotional campaign prior to February 5, 1976. On that date, appellant printed 500 copies of a "Preview Edition" bearing the name of "New West." Said preview edition was 16 pages in length, was entirely black and white, contained no paid advertising, and contained no original feature articles. The original purpose of the preview edition was to show it to potential advertisers. The 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 appellee. Appellant 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.

In June, 1976, appellant announced its intent to suspend the publication of further issues. At that date appellant had less than 500 paid subscribers to its New West magazine.

Based upon these undisputed facts, the district court concluded that appellee had established its ownership right in the trade name and trade-mark "New West" as the title of its news magazine. Additionally, the court concluded that appellee had not infringed upon any rights of the appellant, nor had appellee unfairly competed with the appellant.

The court further concluded that the appellant's use and threatened use of the name "New West" as the title of its magazine was likely to cause public confusion with appellee's trade-mark, "New West", and appellee's trade name, "New West Magazine", and that appellant's use of the name "New West" as the title to its magazine infringed upon and misappropriated the ownership rights of the appellee in the "New West" trade-mark and trade name as owned by the appellee. Additionally, the district court concluded, among other things, that the appellant's use of the name "New West" as the title of its magazine unfairly competed with the appellee in violation of 15 U.S.C. § 1125(a). Based upon its findings and conclusions, the district

court entered a partial summary judgment in which it incorporated its conclusions, entered a permanent injunction preventing appellant from using the trade name or trade-mark "New West" or "New West Magazine" and granted appellee's counterclaim against appellant for such an amount of money damages as might be awarded in a subsequent trial, together with costs and reasonable attorney fees as it might later establish at a hearing on that issue.

ISSUES

I. Did the district court err in granting summary judgment to appellee on the ground that the undisputed facts established its ownership of the trade name and trade-mark "New West?"

II. Did the district court err in holding on summary judgment that appellant's use of the trade name and trade-mark "New West" was likely to cause public confusion and, therefore, infringed upon and unfairly competed with appellee's rights in the mark in violation of the Lanham Act?

III. Did the district court err in awarding attorney fees to appellee?

I.

Jurisdiction of the district court was based upon 15 U.S.C. § 1121 and an alleged violation of § 43 of the Lanham Act, 15 U.S.C. § 1125, which provides:

"(a) Any person who shall affix, apply, or annex, or Use in connection with any goods or services, or any container or containers for goods, a false designation of origin, or any false description or representation, including words or other symbols tending falsely to describe or represent the same, and shall cause such goods or services to enter...