Surgical Supply Service, Inc. v. Adler

• Decision Date: 28 June 1963
• Docket Number: No. 14130.,14130.
• Citation: 321 F.2d 536
• Parties: SURGICAL SUPPLY SERVICE, INC., Appellee, v. Sol H. ADLER, Individually and Trading as Adler Surgical Supply Company, Appellant.
• Court: U.S. Court of Appeals — Third Circuit

321 F.2d 536 (1963)

SURGICAL SUPPLY SERVICE, INC., Appellee, v. Sol H. ADLER, Individually and Trading as Adler Surgical Supply Company, Appellant.

No. 14130.

United States Court of Appeals Third Circuit.

Argued November 8, 1962.

Decided June 28, 1963.

Rehearing Denied September 17, 1963.

Louis Necho, Philadelphia, Pa. (Sol H. Kitei, Philadelphia, Pa., on the brief), for appellant.

Charles Polis, Philip S. Polis, Philadelphia, Pa., for appellee.

Before GANEY and SMITH, Circuit Judges, and AUGELLI, District Judge.

WILLIAM F. SMITH, Circuit Judge.

This is an action for copyright infringement and unfair competition. The jurisdiction of the District Court was invoked under section 1338 of Title 28 U.S.C. The court below properly held the copyright invalid but found the appellant guilty of unfair competition. The present appeal is from only that portion of the judgment which enjoins the appellant from continuing certain practices held to constitute unfair competition. The adjudication as to the invalidity of the copyright is not challenged.

The parties to this action are admittedly competitors engaged in the distribution and sale of pharmaceuticals, surgical supplies, and various other products employed in the practice of chiropody. The business of each of the parties is conducted principally by mail and directly with chiropodists. The present controversy arose out of the appellant's use of a trade circular allegedly similar to one used by the appellee and its predecessor since 1943 in the solicitation of business. The issues of the controversy must be decided under Pennsylvania law,¹ which is in accord with the federal law.²

The appellee's trade circular consists of a single sheet of paper and is essentially a combination price list and order form of the "check and return" type. The products offered for sale, identified by either their generic or trade names, are listed alphabetically under classified headings. The circular also contains, in appropriate position, references to the sizes and quantities of products available. Positioned in the vicinity of these references are boxes or squares into which the customer may place check marks, thereby indicating the size and quantity of each product desired. At the lower right hand corner of the face of the circular there are appropriate blanks for the insertion of the customer's name and address. The circular has been altered and modified from time to time; however, the basic characteristics of the form have been retained. The general format is similar to that employed in other commercial enterprises in the preparation of price lists, order forms, catalogues, and like material.

The appellant's trade circular, like that of the appellee's consists of a single sheet of paper and is essentially a combination price list and order form. It embodies several features similar to those embodied in the appellee's circular. Many of the products listed therein are the same as those listed in appellee's order form and, in some instances, are catalogued under identical classification headings. There are other features, such as the use of squares and boxes, which are similar. The general format of the appellant's circular is otherwise distinguishable from that of the appellee's circular. The appellant's form, while it consists of a single sheet of paper, is so folded as to give the general appearance of a four-page pamphlet. This pamphlet is a self-mailer; that is, it can be folded in such a manner that it may be mailed to the supplier without the necessity of placing it in a separate envelope. When so folded, the name "Adler Surgical Supply Co." prominently appears as the addressee.

The classification headings common to each of the trade circulars are "Pharmaceuticals," "Ointments," "Surgeons Blades & Handles," "Anesthesia-Syringes," and "X-rays and Accessories." These are common generic terms descriptive of products in the particular categories. The other classification headings employed by each of the parties, although dissimilar, are also cast in generic terms in common use in the surgical supply business. The terms are used in their primary sense and are therefore not susceptible of exclusive appropriation by either party. Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 116, 117, 59 S.Ct. 109, 83 L.Ed. 73 (1938); Zimmerman v. B & C Motel Corporation, 401 Pa. 278, 163 A.2d 884, 886 (1960); Kool Vent Metal Awning Corp. of America v. Price, 368 Pa. 528, 84 A.2d 296, 298 (1951). However, the classification headings employed in the circulars of the respective parties are distinguishable both in general arrangement and in style of print.

The trade circulars are patently dissimilar not only in general appearance but in other important respects. Each is clearly and prominently marked as to source, with the name and address of the supplier.

The appellee's name, "Surgical Supply Service," appears once in distinctive type having an outline face against a solid shadowed background. In the current form the name and address is located between a picture of the appellee's showroom and a sketch of two hands clasped together; above the sketch is the phrase or slogan "Years of Service." A picture, apparently of someone connected with the appellee's business, appears on the reverse side of the circular. The pictorial illustrations were prominently featured in earlier editions of the form. A portion of the appellee's circular is devoted to text, usually in the form of news relating to its business and the practice of chiropody in general.

In the appellant's circular the name "Adler Surgical Supply" is in solid type and appears in three places, once across the top of the first page of the pamphlet and twice on the reverse side of the last page. When folded for mailing to the customer, the said reverse side forms the face on which the name of the appellant, as the addressor, appears in bold type. The face also bears the slogan, in distinctive style, "Compare and Buy!" When folded for return mailing, as hereinabove noted, the name of the appellant, as the addressee, is prominent.

The Trial Court found: (1) that appellant intentionally copied the order form of ...