Pulitzer Pub. Co. v. Houston Printing Co., 226.

• Decision Date: 31 March 1925
• Docket Number: No. 226.,226.
• Citation: 4 F.2d 924
• Parties: PULITZER PUB. CO. v. HOUSTON PRINTING CO.
• Court: U.S. District Court — Southern District of Texas

4 F.2d 924 (1925)

PULITZER PUB. CO. v. HOUSTON PRINTING CO.

No. 226.

District Court, S. D. Texas, at Houston.

March, 1925.

Huggins, Kayser & Liddell, of Houston, Tex., and John F. Green, of St. Louis, Mo., for complainant.

Baker, Botts, Parker & Garwood, of Houston, Tex., for defendant.

HUTCHESON, District Judge.

This is a bill in equity, brought by the Pulitzer Publishing Company against the Houston Printing Company to enjoin the latter from the use of the words "Post-Dispatch" as the name of a paper published by the defendant at Houston, Tex. The bill was filed on September 15, 1924, and alleges: That complainant is the publisher of a daily and Sunday newspaper known as the "Post-Dispatch," which has been published and circulated under this name since 1878. That on the 1st day of August, 1924, its daily and Sunday editions circulated in every state of the Union and in all of the principal foreign countries of the world, its daily circulation exceeded 220,000 copies, and its Sunday circulation exceeded 350,000 copies. That on August 1, 1924, its Sunday circulation averaged 24,100 in Texas, 2,000 copies in Louisiana, 12,000 copies in Arkansas, and 20,000 copies in Oklahoma. That from 1878 to August 1, 1924, it was the only newspaper in the United States using this name. That, although the words "St. Louis" were sometimes printed on the paper in connection with the words "Post-Dispatch," these words form no part of its trade-name. That on March 15, 1924, complainant filed in the United States Patent Office an application for the registration of "Post-Dispatch" as a trade-mark or trade-name for its newspaper. That thereafter a certificate of registration of such mark was issued to complainant. That on or about August 1, 1924, defendant acquired two newspapers published in Houston, Tex., known as the "Post" and the "Dispatch" respectively, and on said date consolidated these two newspapers into one, and, fraudulently and intending to reap the benefit of the established trademark and good will of complainant, has since said date been publishing said consolidated newspaper under the name of "Houston Post-Dispatch." That, as the result of the unlawful conduct of the defendant, confusion of defendant's paper with complainant's paper has resulted, and the circulation of complainant's newspaper has been and will be greatly interfered with, diminished, and decreased.

Defendant alleges: That prior to the 1st day of August, 1924, it owned and published a newspaper in the city of Houston which was called the "Houston Post." That such newspaper had been continuously published under that name, except for a short period in 1885, since 1883. That immediately prior to August 1, 1924, the defendant acquired the Houston Dispatch, a daily newspaper theretofore published in the city of Houston, and that immediately prior to the consolidation the Houston Post had a daily circulation of 42,000 copies, and the Houston Dispatch an average daily circulation of 18,000 copies. That both papers had established a good will which constituted a valuable asset. That when the papers were consolidated the combined name "Houston Post-Dispatch" was adopted to conserve the good will and assets of both papers, uninfluenced by and without contemplation of the fact that complainant's paper was called the "St. Louis Post-Dispatch." It further asserted: That the words "Post-Dispatch" were publici juris, and could not be appropriated as a valid trade-mark as against the right of the defendant to use the joint names of the two papers which it had consolidated. That there is no competition between and no confusion of the papers of complainant and defendant. That complainant's paper, the "St. Louis Post-Dispatch," and the defendant's paper, the "Houston Post-Dispatch," are by their very designations clearly and sufficiently distinguished.

The case coming on for hearing, the following facts were established:

(1) That Joseph Pulitzer, through whom complainant holds, in the year 1878 acquired control of two daily newspapers in St. Louis, one called the "Post," and the other the "Dispatch." That on December 12, 1917, these two papers were consolidated, and the consolidated paper was thereafter published under the name "St. Louis Post-Dispatch." That its daily and Sunday circulation was as alleged in the bill.

(2) That during the past 20 years complainant has spent approximately $175,000 in advertising and extending the circulation of its newspaper.

(3) That on March 15, 1924, application was made for registration of the name "Post-Dispatch," and the same was registered, not, however, upon an affidavit of exclusive use prior to February 20, 1905.

(4) By the affidavits of five newspaper stand operators that there is constant confusion between the newsdealers and their patrons as to the "Post-Dispatch" of St. Louis and the "Post-Dispatch" of Houston. That the similarity of names makes it necessary for newspaper dealers, when a customer called for a "Post-Dispatch," to ascertain which paper is desired.

(5) None of these affidavits, however, testified to a single lost sale or a single substitution, and no proof was offered as to the diminution of its sales or loss of business.

(6) That defendant established that, when the Houston "Post" and the Houston "Dispatch" were consolidated, both of them had an established good will, and that the directors, on inquiry, finding that the usual method of combining papers was to combine the names of the constituent papers, in order to preserve the good will, adopted the name "Post-Dispatch" for the sole and only purpose of conserving the assets and good will of the papers being consolidated, without any thought of dissimulation or unfair competition with the complainant's paper, or in the hope of acquiring, by the use of the name, any of the good will belonging to complainant.

(7) They also proved that it was almost the universal custom, in consolidating newspapers, to use the two constituent names.

(8) Defendant also offered proof that approximately one out of every 14 daily newspapers in the United States used either the name "Post" or "Dispatch," or a component in which either one of these names appears. That the word "Post" has been used for a newspaper as far back as 1643.

(9) That in 1878, when complainant adopted the name, the words "Post" and "Dispatch" were common names for newspapers in the United States. It also proved that the "Dardanelles Post-Dispatch," published at Dardanelles, Ark., in 1897, has been continuously published since that time, the name resulting from the consolidation of two papers theretofore known as "Post" and "Dispatch." That the "Sykesville Post-Dispatch," of...