Time, Inc. v. Viobin Corporation

• Decision Date: 27 August 1941
• Docket Number: No. 188.,188.
• Citation: 40 F. Supp. 249
• Parties: TIME, Inc., v. VIOBIN CORPORATION.
• Court: U.S. District Court — Eastern District of Illinois

40 F. Supp. 249

TIME, Inc., v. VIOBIN CORPORATION.

No. 188.

District Court, E. D. Illinois.

August 27, 1941.

Acton, Acton, Baldwin & Bookwalter, of Danville, Ill., for plaintiff.

Busch & Harrington, of Champaign, Ill., for defendant.

LINDLEY, District Judge.

Plaintiff, publisher of "Life" magazine, seeks to enjoin infringement of its registered trade-marks and unfair trade practices alleged to have been committed by defendant and to be of such character as to create in the minds of the purchasing public a belief that plaintiff is sponsoring defendant's product.

Plaintiff has registered under the federal act the word "Life." It places on the outer cover of the magazine in the upper left-hand corner the name "Life" in white letters on a red background and at the bottom a red stripe. Defendant manufactures a cereal food, which it sells in tin cans marked "Life of Wheat." Originally its label was almost entirely red and white. The word "Life" appears above the words "of wheat," in larger letters, in white, on a red background but in slanting letters rather than in the perpendicular form shown in plaintiff's registrations. Following complaint by plaintiff, defendant modified its label by inserting in place of certain white coloring yellow portions, including a yellow head of wheat. This is the label of which plaintiff now complains.

For many years plaintiff and its predecessor have published the magazine "Life" under the registered trade-marks. It has expended large sums of money in advertising the publication and building up its good will, having now a weekly circulation of 2,750,000 copies. The public generally has come to recognize and know the word "Life" as indicating plaintiff's magazine. Plaintiff claims that, by virtue of these facts, it has acquired the exclusive right to use and protect the word "Life" and that the acts of defendant are such as to induce the public reasonably to believe plaintiff is endorsing or is responsible for defendant's product.

Defendant takes from the wheat grain the germ from which reproduction can be had, removing all the outer part, including bran and the endo sperm. It says entirely reasonably, therefore, that the germ so utilized is the life of the wheat. It so treats the product as to prevent its becoming rancid and in the label accentuates the content of Vitamins G and B. It disclaims any intent to capitalize upon plaintiff's mark or good will and insists that while plaintiff's mark is wholly fanciful, defendant's phrase is true and representative of the actual facts.

Early in the history of the controversy plaintiff wrote to defendant saying that its good will and reputation in connection with the mark and format had been built up by substantial expenditures and efforts; that as a result the public had come to know and identify the mark with its magazine and that defendant should not benefit therefrom. To this defendant replied saying that plaintiff was "absolutely right in its contention" and that defendant had no desire under any circumstances to use or benefit from the good will plaintiff had built up. Plaintiff insists that this was an admission of infringement, but defendant explains its reply by saying that what it meant to admit was that it should not profit from the good will and publicity of plaintiff but that, as the letter itself said, "It should be pointed out, however, that the term `Life of Wheat' is no figure of speech. The germ of the grain is the life of the wheat. The term `Life of Wheat' has been used in various types of advertising to denote, for example, the restoration of the wheat germ (Life of Wheat)." Though defendant's language was somewhat misleading we think defendant's contention as to the sense and intent of the entire letter entirely reasonable. I can not attribute to defendant's letter any quality of admission of wrongdoing or intent.

The claim for infringement of trade-mark arises under the common law. The federal statute provides for registration and protection but does not attempt to define a valid mark. It specifies what marks shall be registered and, in so doing, adheres rather closely to what the common law recognizes as constituting a valid mark. The federal courts, in their determination of what constitutes a good trade-mark, have been guided largely by the limitations of the act. Title 15 U.S.C.A. § 85 provides for registration of trade-marks, barring any mark identical with a registered or known trade-mark owned and in use by another and "appropriated to merchandise of the same descriptive properties" and any mark which so nearly resembles a registered or known trade-mark owned and used by another and "appropriated to merchandise of the same descriptive properties as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers." Section 96 provides that a person shall be liable for damages at the suit of the owner of a registered trade-mark if, without the consent of the owner, he reproduces or copies a registered trade-mark and affixes the same to labels of merchandise "of substantially the same descriptive properties as those set forth in the registration."

In accord with this legislative word from Congress and under the applicable rules of the common law, the courts quite generally refuse to enjoin alleged infringement of a registered trade-mark or to allow damages therefor if the merchandise of the alleged infringer is not of the same descriptive qualities. It is not necessary that the goods to which alleged infringing labels are attached shall be of the same species but they must be of the same class. If they are lacking in similarity of class or descriptive properties, the courts conclude that there is no invasion of plaintiff's rights. Layton Pure Food Co. v. Church & D. Co., 8 Cir., 182 F. 35, 32 L.R.A.,N.S., 274; Simplex Automobile Co. v. Kahnweiler, 162 App.Div. 480, 147 N.Y.S. 617; Certain-Teed Products Corp. v. Philadelphia & S. M. G. Co., 3 Cir., 49 F.2d 114; National Cash Register Co. v. National Paper Products Co., 54 App.D.C. 278, 297 F. 351; Three in One Oil Co. v. Lobl Mfg. Co., 57 App.D.C. 356, 23 F.2d 893; Three in One Oil Co. v. Boston Brass Co., 57 App.D.C. 358, 23 F.2d 895; Pabst Brew. Co. v. Decatur Brew. Co., 7 Cir., 284 F. 110; American Steel Foundries v. Robertson, 269 U.S. 372, 46 S.Ct. 160, 70 L.Ed. 317.

The confusion in the decisions results not so much in various statements of the rule as in its application to the specific facts involved in each cause. Here, the goods are not of the same descriptive qualities. They are not of the same class. One is a magazine; the other, a cereal food. The two possess in common, no identity or similarity of function or of descriptive quality or property; they are not to be found in the same or analogous markets; they occupy fields of industry and commerce far removed from each other. I conclude, therefore, that there is no infringement of the trade-mark.

The plaintiff relies also upon its common law right to complain of unfair competition, of which infringement of trade-marks constitutes only a limited portion. "There is no property in a trade-mark apart from the business or trade in connection with which it is employed. United Drug Co. v. Rectanus Co., 248 U.S. 90, 97, 39 S.Ct. 48, 63 L.Ed. 141; Hanover Milling Co. v. Metcalf, 240 U.S. 403, 413, 414, 36 S.Ct. 357, 360 (60 L.Ed. 713). `The law of trade-marks is but a part of the broader law of unfair competition' (Id.), the general purpose of which is to prevent one person from passing off his goods or his business as the goods or business of another. * * * To some extent the two terms trade-mark and trade-name overlap, but there is a difference, more or less definitely recognized, which is that, generally speaking, the former is applicable to the vendible commodity to which it is affixed, the latter to a business and its good will." American Steel Foundries v. Robertson, Commissioner, 269 U.S. 372, 373, at 380, 46 S.Ct. 160, at 162, 70 L.Ed. 317.

Plaintiff insists that it owns and is entitled to monopolize the trade-name "Life" in connection with a particular format well known to the public. Its contention is that any member of the public who, through plaintiff's extensive expenditure of money, has been trained to associate the name, with its peculiar color arrangement and format, with plaintiff, would, upon seeing defendant's product, employing in its label the name "Life of Wheat," with format and color combination, similar to plaintiff's, conclude that plaintiff was "in some manner sponsoring or approving defendant's product or affiliated in some manner...