Warner Publication v. Popular Publications

• Decision Date: 08 February 1937
• Docket Number: No. 168.,168.
• Citation: 87 F.2d 913
• Parties: WARNER PUBLICATION, Inc., v. POPULAR PUBLICATIONS, Inc.
• Court: U.S. Court of Appeals — Second Circuit

87 F.2d 913 (1937)

WARNER PUBLICATION, Inc., v. POPULAR PUBLICATIONS, Inc.

No. 168.

Circuit Court of Appeals, Second Circuit.

February 8, 1937.

Swiger, King & Chambers, of New York City (Edwin J. Harragan, of New York City, of counsel), for appellant.

Schultz Brothers, of New York City (Joseph Schultz and Henry Edward Schultz, both of New York City, of counsel), for appellee.

Before MANTON, SWAN, and CHASE, Circuit Judges.

SWAN, Circuit Judge.

The plaintiff, publisher of a magazine entitled "Ranch Romances," brought suit for an injunction and accounting against the defendant, publisher of a magazine entitled "Rangeland Romances." Both are within the so-called "pulp" magazine field. The bill of complaint charges, in a first count, infringement of a registered trademark, and, in a second count, unfair competition. Both parties are New York corporations. The bill was filed August 1, 1935, and was answered August 20th with general denials. No motion to obtain an injunction pendente lite was made until March 11, 1936. The motion then made was granted by an order, resettled on June 10, 1936, restraining the defendant from publishing or selling "a magazine or periodical bearing the title `Rangeland Romances' in any form, or bearing any other title which is in simulation or imitation of plaintiff's trade-mark and title `Ranch Romances.'"

The appellant contends that the words "Ranch Romances" do not constitute a valid registered trade-mark because they are descriptive of the nature and contents of the magazine upon which the plaintiff uses them as a title. The contention is well taken. By the terms of the statute, "No mark which consists * * * merely in words or devices which are descriptive of the goods with which they are used, or of the character or quality of such goods * * * shall be registered under the terms of this Act subdivision of this chapter." 33 Stat. 726, 15 U.S.C.A. § 85 (b). The descriptive character of the title "Ranch Romances" is not only indicated by the subtitle "Love Stories Of The Real West," but is expressly stated in affidavits by the editor, who says that the magazine has always been "devoted to romantic stories of the West," and the stories published "have been action stories involving romantic interest set on ranges and ranches of the traditional West." We think the words "Ranch Romances" are no less descriptive than were other magazine titles which have been held invalid trade-marks, namely, "Photoplay Magazine," "College Humor," "Popular Mechanics." Photoplay Pub. Co. v. La Verne Pub. Co. (C.C.A.3) 269 F. 730; Collegiate World Pub. Co. v. Du Pont Pub. Co. (D.C.) 14 F.(2d) 158, affirmed (C.C.A.7) 25 F.(2d) 1018; Fawcett Publications v. Popular Mechanics Co. (C.C.A. 3), 80 F.(2d) 194, 196, dictum. The court below cited in support of its ruling Vogue Co. v. Brentano's (D.C.S.D.N.Y.) 261 F. 420 and New Metropolitan Fiction v. Dell Pub. Co., 57 App.D.C. 244, 19 F.(2d) 718. Both are distinguishable from the case at bar. Even if the title "Vogue" might be thought descriptive of those portions of the magazine devoted to fashions in women's dress, it could not be deemed descriptive of other portions, which dealt with architecture, art, the stage, and home decoration. As Judge Knox' opinion states, the plaintiff's use of the word was "arbitrary and somewhat fanciful" rather than descriptive. The other cited case did not involve the validity of a registered trade-mark composed of descriptive words, but merely whether registration of the title "Modern Marriage" was precluded by the prior registration of a too similar title. In so far as the injunction appealed from rests upon the plaintiff's registered title as a valid trade-mark, it cannot be sustained.

The injunction was also rested upon findings that the title had acquired a secondary meaning denoting the plaintiff's magazine and that the defendant was engaging in unfair competition. Although there was no diversity of citizenship, we think the court had jurisdiction to consider the charge of unfair competition under the doctrine of Hurn v. Oursler, 289 U.S. 238, 53 S.Ct. 586, 77 L.Ed. 1148. Where a substantial federal question is raised by the allegations, jurisdiction is established, whatever the decision on the merits may be, and the court retains jurisdiction to dispose of a nonfederal question inseparably connected with the federal ground of action. Here the two causes of action grow out of the same facts; though the bill of complaint is divided into two causes of action, they are inseparably connected within the doctrine of the Hurn Case. Indeed, the second count realleges every allegation of the first. We cannot accept the appellant's contention that, because pleaded separately instead of being commingled in a single count, jurisdiction of the nonfederal ground must fail on dismissal of...