Dell Publishing Co. v. Stanley Publications, Inc. , 201 N.Y.S.2d 1008 ( 1960 )

McNally, J.

(dissenting). Plaintiff has been awarded judgment restraining defendant from using the word “ Modern ” in conjunction with the word “ Confessions ” in publishing, distributing, selling and offering for sale or advertising’ the magazine entitled ‘1 Modern Confessions ’ ’. The complaint is grounded on infringement of trade-mark and unfair competition.

Plaintiff is engaged in the business of publishing and selling magazines and books throughout the United States and in various. foreign countries. Among the magazines published and sold by plaintiff is the 11 Dell Modern Group ’ ’ consisting of the magazines entitled “Modern Romances”, “Modern Screen” and “ Screen Stories ”. It should be noted in the magazine industry romance and confession literature are synonymous and pertain to fictional romantic stories with the common theme of sin, suffer and repent.

Plaintiff initially published “ Modern Romances ” in October, 1930 and has continued so to do monthly. ‘ ‘ Modern Romances ” was copyrighted in February, 1931. Prior to the trial 340 monthly issues of the magazine had been published. It is distributed throughout the United States, Canada and foreign countries largely through 800 independent wholesalers. A small percentage of each issue is distributed directly to large chain stores. The retail outlets are drugstores, stationery stores, newsstands, supermarkets, terminals and to a minor extent subscribers. The magazine retails at 25 cents per copy.

Since 1943 the monthly circulation of “ Modern Romances ” has been approximately 1,000,000. It has been continuously and extensively advertised through the mediums of radio, television, newspapers, magazines, brochures, posters, mail and otherwise. Between 1937 and 1958 the sum of $1,140,000 was expended in publicizing and advertising the magazine. Since 1930 and until the publication of defendant’s magazine entitled “ Modern Confessions ”, plaintiff’s “ Modern Romances ” was the only magazine incorporating the word “Modern” in its title, which concerned itself largely with the subject of romance or confession literature as here defined.

Since 1940 plaintiff’s policy has been to make the three magazines comprising the “ Dell Modern Group ” available to advertisers as a single unit. Between 1937 and 1958 $2,320,000 was expended to advertise the three magazines comprising the ‘ ‘ Dell Modern Group ’ ’. The annual advertising revenue of the group ranges between $1,500,000 to $2,700,000.

Plaintiff also publishes and distributes without charge in order to stimulate advertising in its modern group of magazines a magazine entitled “ Modern Supermarkets ”, which is published and distributed bimonthly to about 2,500 executives, managers and buyers and which promotes the products of advertisers utilizing the modern group and suggests the various advantages of advertising therein.

Defendant first published its magazine “Modern Confessions ” during January, 1958. Prior thereto it had published about three issues of the magazine entitled “Real Secrets”. After “Modern Confessions ” was published, defendant alternately and bimonthly published .each of the magazines. At the time of the trial apparently “ Real Secrets ” had been dropped but the testimony was that it was defendant’s intention to resume its publication. Both magazines of defendant are of the romance or confession type, like the plaintiff’s “Modern Romances ”.

Plaintiff’s title “Modern Romances” is uniformly printed near the top of the magazine cover. In bold type on a single line both words of the title enjoy equal prominence. Invariably plaintiff’s magazine is imprinted with the name “ Dell ”, which is about one third the size of the lower-case lettering of its title. The title “ Modern Confessions ” of defendant’s magazine also appears near the top of its cover. The word “ Modern ” is on the first line and the word “ Confessions ” on the second line. The type of the word “ Modern ” is a little more than one half the size of the lower-case lettering of the word “ Confessions ”. There is nothing on defendant’s magazine cover to indicate affirmatively that it is not a “ Dell ” publication.

Defendant’s executive editor testified that its purpose in including the word ‘ ‘ Modern ’ ’ in the title of its magazine is to distinguish it “from the bulk of the confession magazines on the newsstands ”. It is undisputed that the existence, widespread circulation and prominence in the romance and confession field of plaintiff’s “ Modern Romances ” was known to the defendant prior to and at the time it selected the title of “ Modern Confessions ” for publication.

On January 28, 1932 plaintiff’s predecessor registered 1 ‘ Modern Romances ’ ’ under the Trade-Mark Act of 1905 in the United States Patent Office under registration number 295391. The said trade-mark was also registered under the Trade-Mark Act of 1946 in the said office on January 19, 1954 under registration number 584902. The last registration was in the category of a principal register and was made in accordance with section 2 of the Lanham Act of July 5, 1946 (U. S. Code, tit. 15, § 1051 et seq.). ¿Subdivision (f) of section 2 of the act provides for registration of a mark which has become distinctive of the' applicant’s goods, although the mark is descriptive and provides that proof of exclusive and continuous use for the preceding five years may be accepted by the Commissioner of Patents as prima facie evidence that the mark has become distinctive.

On this record, assuming the plaintiff’s trade-mark to be descriptive, the evidence is overwhelming that plaintiff *s trademark, as applied to its magazine concerned with the publication of romantic and confession literature of the type contained in the magazines here involved, from the five years next preceding the registration of January 19, 1954, was exclusively and continuously so used by the plaintiff and became distinctive of the plaintiff’s said magazine in that field.

Subdivision (b) of section 7 of the Lanham Act (U. S. Code, tit. 15, § 1057, subd. [fo]) provides that a registration of a trademark upon the principal register is prima facie evidence of validity, ownership and of the registrant’s exclusive right to use it. Moreover, the act provides (U. S. Code, tit. 15, § 1072) that such registration is constructive notice of the registrant’s claim of ownership.

Defendant has failed to overcome the statutory presumption consequent on plaintiff’s registration. (Aluminum Fabricating Co. v. Season-All Window Corp., 259 F. 2d 314, 316; Pastificio Spiga Societa per Azioni v. De Martini Macaroni Co., 200 F. 2d 325.)

Moreover, plaintiff affirmatively has established by the preponderance of evidence, largely uncontradicted, that plaintiff’s magazine ‘ ‘ Modern Romances ’ ’ was the only magazine incorporating the word ‘ ‘ Modern ’ ’ in its title which, for many years prior to defendant’s publication of “ Modern Confessions ”, was directed to that segment of the female population primarily interested in such romance and confession fiction.

It is unnecessary to establish infringement of a trade-mark to establish deception. It is the liability to deception which justifies relief by way of injunction. (Taendsticksfabriks Akticbolagat Vulcan v. Myers, 139 N. Y. 364.) In any event, defendant’s admission that the word “Modern” was selected so as to distinguish its magazine ‘ ‘ from the bulk of the confession magazines ” serves to emphasize the intention to simulate and its similarity to the title of plaintiff’s magazine.

The evidence also establishes unfair competition. The word “ Confessions ” as part of a title of a publication containing romantic and confession stories has been held to be descriptive. (Fawcett Pub. v. Real Confessions, 22 Misc 2d 738, affd. 272 App. Div. 867.) However, the combination of the common words forming the title of “Beal Confessions” was held in Fawcett to be subject to protection from appropriation. And in Dell Pub. Co. v. Ultem Pub. (171 Misc. 159) it was held that the word ‘ ‘ Modern ’ ’ contained in the title ‘ ‘ Modern Movies ’ ’ was unfairly in competition with the plaintiff’s magazine entitled “ Modern Romances ”.

Prior to defendant’s publication of “ Modern Confessions ”, therefore, the decisional law was that the word “ Confessions ” was descriptive and the word ‘ ‘ Modern ’ ’ as applied to plaintiff’s magazine was a fanciful and arbitrary word having a secondary meaning as applied to plaintiff’s magazine. Nevertkeless, defendant, ostensibly for the purpose of distinguishing its publication from others in the romance and confession sphere, seized upon the title “ Modern ” which not only served its said purpose but also served to suggest an origin common with that of the plaintiff’s publication. Under the stated circumstances, defendant’s minimum legal obligation was to affirmatively distinguish its product from the plaintiff’s. (Pocket Books y. Meyers, 292 N. Y. 58; Brown & Bigelow v. Remembrance Advg. Prods., 279 App. Div. 410, 415, affd. 304 N. Y. 909.)

The selection of marks similar to a successful competitor’s is always suspect. (Florence Mfg. Co. v. Dowd & Co., 178 F. 73.) This is patently so when the segment of the public involved does not stop to analyze a product because of the brief interval usually allotted to the purchase of a magazine of the type here involved. Such transactions are to be distinguished from those which involve substantial expenditures and extended preparations as in Eastern Constr. Co. v. Eastern Eng. Co. (246 N. Y. 459, 464).

The secondary meaning of the title of plaintiff’s magazine is unaffected by its use of the “ Dell ” symbol in conjunction therewith. The joint use served to identify plaintiff as the source of the modern group of publications. Thereby the defendant’s utilization of the word ‘ ‘ Modern ’ ’ in this field is likely to mislead the public which may indulge the assumption that defendant’s publication is, in fact, the plaintiff’s and, therefore, accord the defendant’s publication the trade and credit which it might otherwise extend to the plaintiff’s magazine.

Moreover, it is clear that the defendant knowingly and intentionally availed itself of the use of plaintiff’s mark for the purpose of appropriating its property. In such circumstances all other considerations are secondary and the defendant should be enjoined. (Neva-Wet Corp. v. Never Wet Processing Corp., 277 N. Y. 163, 178; Forsythe Co. v. Forsythe Shoe Corp., 234 App. Div. 355, mod. 259 N. Y. 248; Munro v. Tousey, 129 N. Y. 38; Philadelphia Stor. Battery Co. v. Mindlin, 163 Misc. 52, 55.)

The judgment should be affirmed.

Stevens and Bastow, JJ., concur with Valente, J.; Babin, J. P., and McNally, J., dissent and vote to affirm in dissenting opinion by McNally, J.

Judgment reversed on the law and on the facts, and the complaint dismissed, with costs. Settle order.