Time v. Viobin Corporation

• Decision Date: 15 June 1942
• Docket Number: No. 7921.,7921.
• Citation: 128 F.2d 860
• Parties: TIME, Inc., v. VIOBIN CORPORATION.
• Court: U.S. Court of Appeals — Seventh Circuit

128 F.2d 860 (1942)

TIME, Inc., v. VIOBIN CORPORATION.

No. 7921.

Circuit Court of Appeals, Seventh Circuit.

June 15, 1942.

Harold R. Medina, of New York City, and Carl S. Lloyd, of Chicago, Ill., for appellant.

Louis A. Busch and Earl C. Harrington, both of Champaign, Ill., for appellee.

Before EVANS, MAJOR, and KERNER, Circuit Judges.

MAJOR, Circuit Judge.

This is an appeal from a judgment, entered September 20, 1941, in a suit for trademark infringement and unfair competition. The relief sought was an accounting for profits and damages, and an injunction restraining the defendant from the use of the trademark described in the complaint, or any imitation thereof.

The District Court rendered an opinion in which the facts are so aptly stated that there appears no occasion to repeat them in detail. Time, Inc., v. Viobin Corp., 40 F.Supp. 249. Briefly, plaintiff, a New York Corporation, is engaged in the publication of the weekly picture magazine "Life" and has been so engaged since October, 1936. The magazine features the trademark "Life" in large white block letters against a flame red background. Plaintiff has registered in the United States Patent Office its trademark "Life" as used in this unique and distinctive manner. Defendant, an Illinois corporation, is engaged in the manufacture and distribution of a cereal product under the designation "Life of wheat" and has been so engaged since the early part of 1941. Its cereal product is distributed in tin cans with labels attached thereto bearing the name "Life of wheat," the size of the letters "of wheat" being smaller than those of "Life." The letters of these words are also white block against a red background. In addition to these letters, defendant's label contains a detailed description of its product. Defendant, in response to complaint by the plaintiff, modified its label by changing certain of the white portions to yellow, including a number of heads of wheat which had appeared formerly in white. After the modification, however, the words "Life of wheat" still appeared in white block letters upon a red background.

The lower court decided against infringement of plaintiff's trademark, largely on the ground of the dissimilarity of defendant's product to which the marks were attached. The court cites numerous authorities in support of its conclusion in this respect, including American Steel Foundries v. Robertson, 269 U.S. 372, on page 380, 46 S.Ct. 160, 162, 70 L.Ed. 317, wherein it was said:

"The mere fact that one person has adopted and used a trade-mark on his goods does not prevent the adoption and use of the same trade-mark by others on articles of a different description. There is no property in a trade-mark apart from the business or trade in connection with which it is employed. * * *"

On the matter of unfair competition, the court, after a thorough analysis of many authorities, including most of those relied upon here, also decided contrary to plaintiff's contention. We are convinced, after a careful study of the court's opinion, that the correct conclusion was reached, both as to the charge of infringement and unfair competition.

Under such circumstances, we would adopt the opinion of the lower court except for the fact it appears no consideration was given to the rule in Illinois in reaching its decision. We assume it was not called to the court's attention — in fact, it was not mentioned or discussed in the original briefs filed in this court. The matter was raised by the court on oral argument, and the parties have since filed supplemental briefs, dealing with the Illinois authorities.

We think there can be no question but that plaintiff's charge of unfair competition must be determined by the law of Illinois. This court so decided in Addressograph-Multigraph Corp. v. American Expansion Bolt & Mfg. Co., 7 Cir., 124 F.2d 706, 708. It may be pertinent to note of this case that there was no charge of trademark infringement, but it related sclely to unfair competition. We reiterated our holding in this respect in the recent case of Rytex Co. v. Ryan, 7 Cir., 126 F.2d 952. In this case, as in the instant one, both trademark infringement and unfair competition were in issue. The validity of our holding in these two cases appears to have been approved in the recent decision of the Supreme Court in Pecheur Lozenge Co., Inc., Petitioner, v. National Candy Co., Inc., 62 S.Ct. 853, 86 L.Ed. ___, decided March 30, 1942, wherein the court said:

"* * * The only cause of action that this record could possibly support is for unfair competition and common law `trademark infringement', to which local law applies. * * *"

Plaintiff advances the theory that the two phases of the case — i. e., infringement and unfair competition — are so inextricably bound together that it is not practical to separate them and say that the Federal law is to be applied to infringement, and local law to unfair competition. It is therefore argued that the Federal law must be applied to each. No authority is cited in support of this contention and we do not believe it is sound. In conformity with the authorities cited, we think that unfair competition must be determined by local law.

On the other hand, we are of the opinion that trademark infringement, in view of the Federal Statute providing for registration, presents an exception to the doctrine of Erie R. Co. v. Tompkins, 304 U. S. 64, 58 S.Ct. 817, 82 L.Ed. 1188, 114 A.L.R. 1487, and is to be determined by general Federal law. True, our opinion in this respect is somewhat weakened by the Pecheur Lozenge case, supra. In that case, as appears from the Supreme Court opinion, there was thought to be involved only the infringement of a registered trademark. A decree for plaintiff was reversed by the Circuit Court of Appeals for the Third Circuit, 122 F.2d 318. The Supreme Court said:

"* * * Both courts below having failed to consider or apply local law, we granted certiorari, 314 U.S. 603, 62 S.Ct. 182, 86 L.Ed. ___, in order to determine whether local law or federal law should have been applied in a suit for infringement of a trademark registered under the Trademark Act of 1905, 33 Stat. 724 15 U.S.C.A. § 81 et seq., * * *."

It appears, however, that the court, upon an examination of the record, determined no cause of action was stated for trademark infringement and thus the point on which certiorari was granted was not decided. The court then proceeded to make the statement quoted heretofore and vacated the decree so that the...