Triangle Publications v. Central Pub. Co.

• Decision Date: 26 January 1954
• Docket Number: No. 8897.,8897.
• Citation: 117 F. Supp. 824
• Parties: TRIANGLE PUBLICATIONS, Inc. v. CENTRAL PUB. CO., Inc.
• Court: U.S. District Court — Western District of Missouri

117 F. Supp. 824

TRIANGLE PUBLICATIONS, Inc. v. CENTRAL PUB. CO., Inc.

No. 8897.

United States District Court W. D. Missouri.

January 26, 1954.

Kemp, Koontz, Clagett & Norquist, Kansas City, Mo., Dilworth, Paxson, Kalish & Green, Philadelphia, Pa., for plaintiff.

C. Earl Hovey, Kansas City, Mo., for defendant.

REEVES, Chief Judge.

As usual in cases where immediate relief is sought, the emergent nature of the litigation compels hasty examination of facts and the law and quick (although not altogether unstudied) decisions.

In the beginning, acknowledgment should be made of the frankness and truthful revelations of the parties as to the facts in the case, and the diligence, as well as the learning of counsel on both sides, for their helpful presentation of the authorities upon facts scarely in controversy.

The controversy and resultant litigation involves activities in relation to a comparatively new enterprise — Television. This unusual accomplishment of scientists and artists has given the public the benefit of unprecedented opportunities for information and entertainment. With a modest localized beginning, television has extended and expanded until now it comprehends the entire world. In the trail of its quick and vast expansion new and useful enterprises have sprung up with a mushroomlike growth. This includes the announcements of coming programs and information relating to a new and rapidly expanding enterprise. Television is not area-bound and it is not subject to easy limitation or restriction. The most regulatory and supervisory authorities can do is to force avoidance of local channel conflicts.

This controversy arises from a business that originated early in the development of television and has endeavored to expand (in the wake of television development) a business that, in a way, accompanied the advance of television development, and it then sought to utilize the opportunities attending the development of television in Kansas City and its environs.

The plaintiff and its predecessors or constituents within the last two or three years in most eastern cities began the issuance of magazines designed to serve the public in connection with approaching or coming television displays or programs. As the number of television channels increased in the Midwest, it followed such increases and supplied its service and helpful magazines to the public. And for that purpose it expended large sums of money to promote and advertise its service magazines. By licenses, or franchises, or by its own efforts, it went into sundry communities, including the City of Chicago, and with increasing television channels in Kansas City it began its preparation to enter the Kansas City area. As a preliminary, in the year 1953, it caused its magazines prominently designated as TV Guide to be sold and distributed in the Kansas City area. Toward the end of that year it definitely planned and definitely arranged to open a place of business in Kansas City and to issue and distribute its localized magazine giving to the public advance television programs. In other words, its magazine, which enjoyed a large area circulation with localized television information elsewhere, planned to furnish to Kansas City and its environs helpful information to television viewers. The cover of its magazine displayed in prominent and conspicuous lettering or insignia "TV Guide."

On the other hand, the defendant (incorporated late in 1951) had been issuing in Kansas City a magazine which conspicuously advertised or displayed on its front cover the design or insignia "TV Preview." It furnished to the public locally substantially the same information the plaintiff had furnished elsewhere and which it was planning to supply in the Kansas City area with a cover magazine containing the letters and word "TV Guide."

That the plaintiff in the very nature and course of business would expand and did expand into Kansas City was anticipated by the defendant. Practically concurrently with the early development of plaintiff's business the defendant had contemplated the use of a similar name, that is to say, "TV Guide", for the front cover of its magazine. Its officers were dissuaded by a representative of local advertisers. This was done for the reason that, as it may be inferred from the evidence, both parties depend upon the income from advertising matter and good will of advertising patrons. In anticipation of the expansion of plaintiff into the Kansas City area, in September, 1953, the defendant, through its president, sent to the plaintiff its then-magazine containing on the front cover its identifying mark or insignia "TV Preview." And, on October 10th or 11th, following, the defendant sought a franchise from the plaintiff. This was in recognition of the expanding business of the plaintiff.

The president, or executive officer of the defendant, testified that he knew in October or November that the plaintiff definitely was expanding into the Kansas City area. Apparently he had anticipated this when writing an officer of the plaintiff on September 3, 1953, and sent a copy of the defendant's magazine. The defendant had not been successful in obtaining a franchise or securing a working arrangement with the plaintiff, and on December 2, 1953, he had a conversation with a wholesale distributor of magazines in the Kansas City area, and who was at that time handling plaintiff's publication. Previously to that, namely on November 24, 1953, this distributor had urged the defendant, or had suggested to the defendant, that it obtain a franchise from the plaintiff so that the defendant might handle plaintiff's magazine in the Kansas City area, and later he warned the defendant about the format it proposed to use.

On December 4, 1953, after the plaintiff had leased property and had made its definite arrangement to open offices in Kansas City, defendant issued its magazine containing conspicuously on its front cover the insignia or designation "TV Guide." This was done after it was known that the plaintiff had entered the Kansas City area.

At that time the plaintiff had a circulation throughout the United States and other countries aggregating 2,075,000 net paid. It had paid for promotion purposes within a year a sum of money in excess of $465,000. The plaintiff first placed its magazines (with local information) on the newsstands on January 13, 1954, and within five days over 6,000 copies were sold.

This suit was filed on December 21, 1953, and a preliminary restraining order was issued without notice. Other facts, if they may become material or pertinent, will be stated in the course of this memorandum opinion.

Able counsel for both of the parties, upon the facts as above stated, are in practical agreement as to the law; counsel for plaintiff contending that, under the authorities, a temporary injunction should be issued, while able counsel for the defendant asserts otherwise.

The controversy does not involve an infringement of a trademark. It is not contended that such exists but the contention is that the defendant is unfairly competing with the plaintiff. The sole and only question is whether plaintiff had acquired a secondary meaning in the use of the descriptive words "TV Guide."

1. In the case of Furniture Hospital v. Dorfman, 179 Mo.App. 302, 166 S.W. 861, loc.cit. 863, the Supreme Court of Missouri made the accurate and sound pronouncement:

"But even descriptive terms may by long use become identified in the minds of the public with the business of a particular trader, and in such case it is unfair competition for a subsequent trader to use them in such manner as to pass off his business for that of the other."

This is so for the reason that apparently there is no contention but that the terms or designation of plaintiff's magazine are descriptive terms. (Incidently, it is the writer's view that the original designation of defendant's magazine "TV Preview" was more accurately descriptive than "TV Guide.")

2. The plaintiff relies upon the rule that a trade-name, as in this case, may acquire a secondary meaning. This is a familiar doctrine. A secondary meaning identifies the product with the proprietor in the minds of the public.

In Schwartz v. Television Center, 89 U.S.App.D.C. 30, 189 F.2d 691, 692, the Court of Appeals for the District of Columbia set forth an acceptable rule in a...