Radio Corporation of America v. Decca Records

• Decision Date: 13 May 1943
• Citation: 51 F. Supp. 493
• Parties: RADIO CORPORATION OF AMERICA v. DECCA RECORDS, Inc., et al. SAME v. COLUMBIA RECORDING CORPORATION et al.
• Court: U.S. District Court — Southern District of New York

51 F. Supp. 493

RADIO CORPORATION OF AMERICA v. DECCA RECORDS, Inc., et al.

SAME v. COLUMBIA RECORDING CORPORATION et al.

District Court, S. D. New York.

May 13, 1943.

Rogers, Hoge & Hills, of New York City (Clifton Cooper, of New York City, James H. Rogers, of Chicago, Ill., Daniel Creato, of Camden, N. J., and Leslie D. Taggart, of New York City, of counsel), for plaintiff Radio Corporation of America.

Milton Diamond, of New York City (Jerome H. Adler and Orville N. Greene, both of New York City, of counsel), for defendants Decca Records, Inc., and Decca Distributing Corporation.

Goldmark, Colin & Kaye, of New York City (Willis H. Taylor, Jr., Max Freund, and John T. Farley, all of New York City, of counsel), for defendants Columbia Recording Corporation and Columbia Phonograph Company, Inc.

Olcott, Havens, Wandless & Stitt, of New York City (Neilson Olcott, of New York City, of counsel), for defendant Times Appliance Co., Inc.

WOOLSEY, District Judge.

The causes against the two Decca defendants, the Columbia defendants, and the Times Appliance Company are hereby dismissed, with a grant to the said defendants of all taxable costs, disbursements and allowances.

I. For convenience in discussing these causes, I shall hereinafter refer to the plaintiff as Victor, and the defendants in the two causes as Decca and Columbia respectively.

The two causes, although not consolidated by order, were tried together on stipulation that unless otherwise specified, all evidence was to be considered as taken in both causes.

II. Victor, Columbia and Decca, among other companies, make some records with red labels in their centres, and the only real question posed for me to decide is whether the use of labels of a red color— and this alone—leads to confusion among retail buyers of records and promotes or tends to promote the passing off of Columbia or Decca records in the place of Victor records when the ultimate consumer purchasing is a normal man who can read and is of reasonable native intelligence.

III. In view of Rule 52(a) of the Rules of Civil Procedure, 28 U.S.C.A. following Section 723c, it is now a work of supererogation to write a considered opinion on the facts and the law in a non-jury cause or proceeding, for its place will be taken by formal findings of fact and conclusions of law separately numbered and stated.

In this proceeding, therefore, in spite of the long time that was occupied on the trial, I shall only very briefly refer to such facts as I think will explain my decision, and give a statement of my conclusions of law thereon.

IV. As the late Emory Buckner, Esq., a really great trial lawyer, once truly remarked: "There is no such thing as a democracy of facts."

That was a very wise remark, for, in every trial, there emerge some facts which are the master or control facts, about which the disputed facts will inevitably group themselves, as will iron filings about the ends of a magnet—although the disputed facts usually do not form so orderly a pattern as do the filings.

The approach to a decision through the master facts is the only reasonably safe approach to the solution of the facts developed in a cause. As in golf the proper stance and the proper cadence of one's swing tends, without insuring accuracy, to make a stroke accurate, so an habitual good technique of approach to a decision of the facts in a cause, tends to bring about a correct solution of those facts. But as in golf, the terrain may result in having the ball come to rest in unexpectable places. All that a Judge can be sure of is that he follow a good technique.

The master facts in a cause, in the order of their objectivity, are, I venture to say—

1) Admitted facts,

2) Facts conceded by counsel at the trial, and

3) Facts proved by such a preponderance of credible unchallenged evidence as to establish them beyond a peradventure.

V. The master facts in this cause are—

1) The incorporation and, hence, the residence of the parties.

2) The registration of the trademarks involved—with the validity of which I shall later deal.

3) The use of the centre of disc records from time—in effect, for my purposes— immemorial, to carry the label of the record, which always contains the name and at least some of the trademarks of its maker, the composition recorded on it and the name or names of the recording artist or artists.

4) That about one-third of the spectrum, visible to the normal human eye, is occupied by red or reddish color.

5) That the favored colors used in the record industry for labels on the centre of disc records have always been red, blue and black.

6) That the labels or identifying marks on disc records have always been placed at the centre thereof.

7) That the centre of disc records, as always and at present made, is a functional part of such records needed to ensure that the needle of the phonograph will follow the sound grooves properly, and through ingenious devices, produce the sound which is the third,—or, perhaps, it should be called, the fourth—dimension of the record, and the only raison d'etre thereof.

8) That in every circular disc record— looking from the perimeter in towards the centre—we find, concentrically arranged: First, a narrow rim to the record; second, the ring of sound grooves, which occupy an area, large or small, according to the amount of music to be played on the record; third, an annular space without sound grooves varying in width, according to the area occupied by the sound grooves; fourth, indented on a slightly lower plane the label of the record, giving the composition, the name of the recording artist or artists, and, at least in the case of the three companies here involved, the clearly printed name in large type of each company and some of its other trademarks, if any; and, then, fifth, in the exact centre of each record is the spindle hole through which a spindle passes holding the disc in position on the turntable of the phonograph, as will a little later herein be further mentioned.

9) That the label is pressed, by a formerly patented process, into the substance of the disc when the record is pressed, and so in effect constitutes an inherent part of the record.

I have already mentioned above that the centre of the disc record, whereinto—as records are now made—the label is pressed, is a functional part of the record whereby the record is so held in position by a spindle passing through the central spindle hole of the disc, as to make the needle of the phonograph follow the sound grooves and not damage the record.

VI. The color of the label is not functional qua color, as has been held in respect of matches with two colors, one on the head and one on the tip where they are to be struck. Cf. Diamond Match Co. v. Saginaw Match Co., 6 Cir., 142 F. 727, 729, 730.

It seems to me, however, that it cannot properly be contended that a colored round label, affixed to the circular centre of a circular disc record, is the use of color in the form of a design, as it must be to constitute a trademark. Cf. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U.S. 166, 171, 26 S.Ct. 425, 50 L.Ed. 710. The circular shape of this centre is inescapable. All that has happened is that a functional part of the record has been colored, not that a design has been achieved.

This renders void the plaintiff's trademarks, for color qua color may not be a trademark.

Whether the registered trademark of the words "Red Seal" is merely a descriptive term, and not a fanciful or arbitrary term, I need not, and do not, decide for reasons hereinafter given, although many of the plaintiff's witnesses used the term "Red Seal" and red label interchangeably, and thus quite unintentionally showed that the words "Red Seal" were really descriptive of and not an arbitrary term for a red label in the centre of a disc record.

I do not have to decide this question as to the words "Red Seal" for the trademark of the words "Red Seal" shares, as a trademark, inevitably the fatal infirmities of the color red as a trademark for the reasons involved in the physics of light with which I shall now essay very briefly to deal.

VII. White light, as dispersed into colors by a prism, constitutes the spectrum, and is illustrated by the annexed colored representation thereof.

Apropos of this, several observations should be made, based on evidence of the experts—Professor Hardy, of the Massachusetts Institute of Technology, and Professor Hecht, of Columbia University— called respectively by Victor and Columbia.

These observations are:

First: What color is seen by the normal eye depends on the wave lengths given off by the color in question.

Second: From a macrocosmic viewpoint, the wave lengths of color viewed as light visible to the normal eye occupy a very small band of the whole number of wave lengths recognized by physics. Cf. Color as Light, Exhibit 426, at page 5.

Third: The visible color spectrum wave lengths are measured in millimicrons, cf. page 5 of Exhibit 426, and extend from 400 to 700 millimicrons inclusive:

From circa 610 to 700 of the said wave lengths the color to the normal eye is of red hue, shading from the deepest red until by gradations of color it gradually turns to orange.

Thus circa one-third of the visible spectrum is of a red or reddish color. From the use of any part of this broad color band on labels of disc records, the plaintiff claims the right—to put it in its mildest form—to file a caveat against all other makers of disc records on the pain of their creating, what the plaintiff is pleased to call, "instruments of fraud", challengeable by appropriate Court proceedings.

To me, under the circumstances shown in this cause, this seems to be an egregiously exaggerated claim.

A trademark for a red centre to a record,—secured, as here, ex parte, or for the phrase "Red Seal", also so secured,— is far too broad a zone of potential exclusion of others, whether it be viewed as a...