Time, Inc. v. TIME INC., Civ. No. 15947.

• Court: United States District Courts. 9th Circuit. United States District Court (Southern District of California)
• Writing for the Court: MATHES
• Citation: 123 F. Supp. 446
• Parties: TIME, Inc. v. T.I.M.E. Inc.
• Docket Number: Civ. No. 15947.
• Decision Date: 29 July 1954

123 F. Supp. 446

TIME, Inc.
v.
T.I.M.E. Inc.

Civ. No. 15947.

United States District Court, S. D. California, Central Division.

July 29, 1954.

123 F. Supp. 447

COPYRIGHT MATERIAL OMITTED

123 F. Supp. 448

O'Melveny & Myers, Homer I. Mitchell and Bennett W. Priest, Los Angeles, Cal., and Cravath, Swaine & Moore and Harold R. Medina, Jr., New York City, for plaintiff

Betts, Ely & Loomis, Los Angeles, Cal., and Benson & Howard, Lubbock, Tex., for defendant.

MATHES, District Judge.

In this action "for infringement of a trade-mark registered in the United States Patent Office and for unfair competition" plaintiff, a New York corporation, seeks an injunction restraining defendant, a Delaware corporation, "from using any simulation of the name and mark `Time', and from using the name and mark `Time' without the insertion of periods after each of the letters * * *."

The equity jurisdiction of this court is invoked, Briggs v. United Shoe etc. Co., 1915, 239 U.S. 48, 50, 36 S.Ct. 6, 60 L.Ed. 138; Rees v. Watertown, 1873, 19 Wall. 107, 86 U.S. 107, 122, 22 L.Ed. 72, under the Lanham Trade-Mark Act, 15 U.S. C.A. §§ 1121, 1125, 1126(b) (1-2), (g-i), and under the pendent-jurisdiction statute, 28 U.S.C. § 1338(b); cf. Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 1938, 305 U.S. 315, 324-325, 59 S.Ct. 191, 83 L.Ed. 195, and upon the ground of diversity of citizenship, 28 U.S.C. § 1332; Suttle v. Reich Bros. Const. Co., 1948, 333 U.S. 163, 166, 68 S.Ct. 587, 92 L.Ed. 614; Blake v. McClung, 1898, 172 U.S. 239, 259, 19 S.Ct. 165, 43 L.Ed. 432.

The case was submitted for decision at pre-trial hearing upon the facts as shown by the admissions in the pleadings and by the pre-trial stipulation together with the exhibits incorporated therein.

123 F. Supp. 449

Thus there is no controversy as to the evidentiary facts, albeit there is considerable disagreement as to the inferences to be drawn therefrom in resolving the ultimate-fact issues

The pre-trial stipulation of the parties recites that: "Plaintiff was incorporated under the laws of the State of New York on November 28, 1922. Plaintiff's corporate title is, and always has been, Time, Incorporated * * *. Plaintiff publishes and distributes throughout the United States and in many foreign countries five magazines: Time, Life, Fortune, Architectural Forum, and House & Home. Time is a weekly news magazine published by plaintiff since 1922. Life is a weekly pictorial news magazine published by plaintiff since 1936. Fortune is a monthly magazine devoted to business affairs published by plaintiff since 1930. Architectural Forum is a monthly magazine devoted to the building industry published by plaintiff since 1932. House & Home is a monthly magazine devoted to residential building published by plaintiff since 1952 * * *. Plaintiff owns the controlling interests in two television and radio stations. One is KOB in Albuquerque, New Mexico, acquired by plaintiff in the spring of 1952. The other is KDYL in Salt Lake City, Utah, acquired by plaintiff in the spring of 1953. Plaintiff produces and distributes sound and motion picture films in a series entitled, `The March of Time.' Those films have been widely exhibited in theatres and on television in the United States * * *. Plaintiff has its main office at Time & Life Building, * * * New York City, editorial and advertising offices throughout the United States and in many foreign cities, and printing plants in Los Angeles, Chicago, Philadelphia, Japan, London, and Paris. Since 1922, plaintiff has used the name and trade-mark `Time' in intrastate, interstate, and foreign commerce. That name and mark `Time' has appeared on the cover of, and elsewhere in, plaintiff's magazine Time since 1922. Plaintiff has registered the mark `Time' in the United States Patent Office in connection with certain of its uses, including registration 246,868 for a weekly news magazine, consisting of the word `Time' and the phrase, `The Weekly News Magazine,' * * * registered on September 18, 1928, renewed September 19, 1948, and republished under the Trade-Mark Act of 1946 on July 10, 1951, and registration 565,061 for a weekly news magazine consisting of the word `Time,' * * * registered October 7, 1952. Plaintiff has spent over $100,000,000 in promoting its trade-marks and corporate title. Since 1922, plaintiff has spent over $41,000,000 * * * to promote `Time' magazine, of which $4,506,000 was spent in 1952.

"Defendant `T.I.M.E. Incorporated' is a Delaware corporation created May 5, 1952, licensed to do business in the States of California, Arizona, New Mexico, Texas, and Oklahoma * * *. T.I.M.E. Incorporated is the emerging corporation from the consolidation of two predecessors, to wit, The Intercity Motor Express, Inc., d/b/a T.I.M.E., a Texas corporation, and Southwestern Freight Lines, a California corporation * * *.

"The Intercity Motor Express, Inc. was chartered and began business the 25th day of November, 1945 * * *. On and after November, 1945, The Intercity Motor Express did business as T.I.M.E. as printed and as `time' as spoken. In its advertising to the public on its documents, such as, bills of lading, freight bills, invoices, checks, etc., there appeared a symbol * * * consisting of the initials T.I.M.E. appearing in an oval * * * yellow background. Since January, 1946, The Intercity Motor Express has been listed in the telephone directories in the cities in which it operated as TIME Freight Lines. On and after November, 1945, the semi-trailers of this carrier were painted with the name T.I.M.E., and these trailers * * * traveled throughout the States of New Mexico, Arizona and California and * * * throughout the United States but principally in the Midwest section of the United States * * *.

"The public doing business with The Intercity Motor Express refer to it orally

123 F. Supp. 450

as Time; throughout the trucking and shipping industry The Intercity Motor Express and T.I.M.E. Incorporated are known orally as Time. Soon after The Intercity Motor Express, Inc. commenced operations in November 1945 it adopted the practice of contracting its name into T.I.M.E. and did business as T.I.M.E., that designation appearing on its trucks and in its advertisements in a form of symbol with the initials T.I.M.E. appearing in an oval with a yellow background * * *

"During the period from November 1945 through September 1952 in which The Intercity Motor Express, Inc. and Southwestern Freight Lines did business as aforesaid, no confusion arose as between the operations of those companies and the operations of plaintiff. One month after the incorporation of defendant and in June 1952 plaintiff called to the attention of * * * defendant its objections to the adoption of the corporate name T.I.M.E. Incorporated. At that time representatives of defendant were of the opinion that the inclusion of periods in the name T.I.M.E. would suffice to prevent any confusion and so informed plaintiff * * *. Thereafter, a new symbol was adopted and used by defendant under which it did business as Time, the name appearing in red * * *.

"Commencing in December 1952 plaintiff received between 15 and 20 letters a week and 15 and 20 telephone calls a week from persons and corporations either desiring to ship merchandise by truck or inquiring concerning the arrival of merchandise by truck. Those telephone calls and other communications continue to the present time January 20, 1954, although the volume has been reduced to approximately 5 to 10 telephone calls per week and 5 to 10 letters per week. In all plaintiff has received over 500 misdirected calls and letters * * *.

"Defendant is engaged solely in the business of operating a public freight service * * *. Plaintiff is engaged in the business of publication of magazines, production of motion picture films, television and radio presentations and operation of television stations and is not now, and does not intend, to engage in the business of a public motor carrier for hire, although, in the course of its operations, it owns and operates trucks. There are between 50 and 100 trade-mark registrations in the United States Patent Office which incorporate the word Time, together with, in each instance, some other word or words, as trade-marks, such as `Lux Time', `Coke Time', `Time to Retire' and `More Times on Time'. There are other registrations which incorporate the word Time, together with some other symbol * * *. There are, in addition, registrations * * * of the single word `Time' * * *. There are hundreds of daily newspapers which bear the name `Times', such as The New York Times and Los Angeles Times, and, in addition, a Greenwich, Connecticut paper has been for many years appearing under the name `Greenwich Time'. In telephone directories published by the Bell Telephone System there are listed numerous businesses which incorporate `Time' as a part of a trade name."

The Lanham Trade-Mark Act of July 5, 1946 provides that: "The district * * * courts of the United States shall have original jurisdiction * * * of all actions arising under this Act, without regard to the amount in controversy or to diversity or lack of diversity of the citizenship of the parties." 60 Stat. 427, 15 U.S.C.A. §§ 1051-1127, effective July 5, 1947, § 46(a), 15 U.S.C.A. §§ 1051 note, 1121.

Section 1338(a) of Title 28 of the United States Code, as enacted upon revision, provides that: "The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, copyrights and trade-marks. Such jurisdiction shall be exclusive of the courts of the states in patent and copyright cases." 62 Stat. 931 (1948).

Since the word "`any * * *' means what it says" Kilpatrick v. Texas & Pac. R. Co., 1949, 337 U.S. 75, 77, 69 S.Ct. 953, 93 L.Ed. 1223, and the Congress was explicit

123 F. Supp. 451

that "such jurisdiction shall be exclusive of the courts of the states in patent and...