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American Photographic Pub. Co. v. Ziff-Davis Pub. Co.

May 7, 1943


Appeal from the District Court of the United States for the Northern District of Illinois, Eastern Division; William H. Holly, Judge.

Author: Kerner

Before EVANS and KERNER, Circuit Judges, and LINDLEY, District Judge.

KERNER, Circuit Judge.

Plaintiff, American Photographic Publishing Company, appeals from a decree dismissing, for want of equity, its complaint alleging infringement of its common law trade-mark and unfair competition. Jurisdiction rested on diversity of citizenship and the requisite jurisdictional amount.

The facts are not in dispute. On October 27, 1914, plaintiff, a Massachusetts corporation, purchased from Frank R. Fraprie a magazine entitled "Popular Photography." Thereafter and until May, 1916, plaintiff's magazines, "Popular Photography incorporating The Photographic Times," designed to appeal primarily to the amateur photographer, and "American Photography," designed to appeal to the expert photographer, were published as separate periodicals. At that time plaintiff consolidated both publications into "American Photography," which was aimed to please readers and advertisers of both its predecessors. For six months the magazine carried on its cover the title "American Photography incorporating Popular Photography and The Photographic Times." Thereafter, only the name "American Photography" appeared on the cover. From the date of consolidation, the masthead of plaintiff's magazine has carried the title "American Photography" in large letters, followed by the word "incorporating" and a list of the names of former publications, including Popular Photography in smaller type. This list rose from eight in 1916 to thirteen prior to defendant's first use of the title "Popular Photography."

On January 19, 1937, upon application theretofore made by the defendant, the title "Popular Photography including Amateur Cinematography" was registered by the defendant in the United States Patent Office as Trade Mark No. 342,417. After defendant's magazine entitled "Popular Photography" was published, plaintiff, on April 7, 1937, notified defendant that the name "Popular Photography" belonged to it, that it intended to defend its rights therein, and thereafter plaintiff filed its complaint in the instant case and began cancellation proceedings against the defendant in the United States Patent Office. An Examiner of Interferences found plaintiff had abandoned "Popular Photography" as a title and as a trade-mark, that Popular Photography as used by a plaintiff was not a trade-mark and dismissed plaintiff's petition. The Commissioner of Patents affirmed the decision of the Examiner of Interferences, and upon appeal that decision was affirmed, 127 F.2d 308.

Since May, 1937, defendant's magazine "Popular Photography" has appeared monthly. Its size, style, dress, composition and content differ from plaintiff's publication, and the typographical make-up of the titles of the two magazines is different. The tile Popular Photography, claimed by plaintiff, did not appear in the advertising manual "Standard Rate and Data Service" at the time defendant adopted it, nor has it appeared there since under plaintiff's name. No subscriptions were lost by plaintiff when defendant's magazine appeared, and plaintiff's newsstand sales increased afterwards. From its very first issue defendant's periodical has had a very much greater circulation than plaintiff's ever had or than its "American Photography" has.

The principal issue presented here is whether plaintiff's carrying the title Popular Photography on the masthead of its publication, "American Photography," was such a trade-mark use as to prevent abandonment of its right to the exclusive use of that title.

Although local law applies to unfair competition and common law trade-mark infringement where federal jurisdiction is based on diversity of citizenship, Pecheur Lozenge Co. v. National Candy Co., 315 U.S. 666, 62 S. Ct. 853, 86 L. Ed. 1103, the applicable local law does not differ from the general common law of trademarks. Accordingly, decisions of federal courts and other jurisdictions are in point as illustrations of the common law.

The term "masthead" is a technical term of the printing trade, referring to the page in a publication which shows the title of the publication, the titles of publications which have been merged or consolidated under the name of the publication, the names of publishers and editors, the place where published, the subscription rates, the date of issue, and the frequency of publication. The relevant part of plaintiff's masthead read as follows:





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