Dell Publishing Co. v. Stanley Publications, Inc.

Valente, J. Defendant appeals from a judgment enjoining it from using the word ‘1 Modern ’ ’ in the title of a magazine “Modern Confessions ”, published by defendant in the “ romance ” or “ confession ” field. The judgment is predicated on the conclusion that the defendant’s use of the title “ Modern Confessions ” constitutes unfair competition. Plaintiff is engaged in the publication of magazines, comic books, children’s books and paper-back books, and has published its magazine “ Modern Romances ” since 1930. The title “Modem Romances” was registered in the United States Patent Office and plaintiff claimed that the widespread use and exploitation of the title had given it a secondary meaning identifying it as plaintiff’s magazine. The circulation of “Modern Romances ” has been approximately 1,000,000 copies monthly [114] for the past 15 years, and its advertising revenue currently exceeds $800,000 annually. ‘ ‘ Modern Romances ’ ’ is one of a family of magazines published by plaintiff and, together with 1 ‘ Modern Screen ’ ’ and “ Screen Stories ”, this group has been offered as a unit to advertisers as the 1‘ Dell Modern Group. ’ ’ Each of the covers of these three magazines (and many other magazines published by plaintiff) carries in the upper left-hand corner the distinctive and conspicuously placed “ dell ” insignia or symbol, consisting of the letters dell in a contrastingly colored box. Defendant has published magazines since 1950, including “ Real Men ” and “ Real Secrets ”. Late in 1957, it decided to publish another magazine of the general. type as ‘ ‘ Real Secrets”. When it found the title “Real Confessions” was unavailable, it chose “ Modern Confessions ” instead. In January, 1958, plaintiff objected to defendant’s proposed use of the title “ Modern Confessions ” but defendant rejected the protest and published the first issue of “ Modern Confessions ” under an April, 1958 cover date. Before the commencement of this suit, defendant had published six issues of the magazine with an average net paid circulation of 130,000 copies per month. Special Term found that “romances” and “confessions” are synonymous in magazine publishing, that defendant utilizes the same distribution media and aims at the same market as plaintiff, and that there is a similarity of make-up, of style and of covers in the magazines, all of which tend to cause confusion which may mislead purchasers. It seems undisputed that all so-called “ romance ” and “ confession ” magazines, which cater primarily to the distaff side, share common characteristics. Most contain in their title a word such as “ romance ”, “ confession ”, “ secrets ” or “ experience.” The stories — which purport to be true — are actually fictional, are told in the first person, and deal with lurid accounts of sins, aberrations, mistakes, illicit loves, and marital infidelities. The covers of such magazines almost invariably feature the photographs or portraits of young and pretty girls as well as “ blurb ” lines headlining the stories inside. Commencing then with the uncontroverted fact that the general content of plaintiff’s and defendant’s magazines is substantially similar and aimed at the same consumer market, and ultimately distributed through the same retail outlets, the real question is whether the use of the word “ Modern ” on defendant’s magazine would tend to cause such confusion in the purchaser as to amount to unfair competition. In Munro v. Tousey (129 N. Y. 38, 43) the court said: “A court of equity should [115] proceed in the exercise of its power with a wise and judicial discretion. In cases such as this it should presume that the public makes use of the senses of sight and hearing, and that it is possessed of a sufficient amount of intelligence to note the difference the senses convey. The court ought not to interfere with the freedom of conduct of trade and with general business competition. Its power to restrain should be reserved to prevent fraud and imposture from some real resemblance in the name and appearance of the publications.” The test is whether the resemblances between the two magazines are calculated to produce confusion as to their respective identities. (Eastern Constr. Co. v. Eastern Eng. Corp., 246 N. Y. 459, 464; see, also, Pocket Books v. Meyers, 292 N. Y. 58.) In our view, the evidence does not warrant a finding of a reasonable tendency to cause confusion. Defendant’s magazine is clearly distinguishable from plaintiff’s, and cannot reasonably be mistaken for it. Primarily, the logotype of ‘ ‘ Modern Confessions ” in no way resembles that of “ Modern Romances. ’ ’ Even a cursory examination of the exhibits shows that the two words of plaintiff’s title are printed on the cover of plaintiff’s magazine in letters of equal size, and on a single line. The words in defendant’s title, however, are in italics, and the emphasis is on the word ‘ ‘ confessions. ” “ Modern ” is in lower case type, and is located above the word “ Confessions ” — which extends entirely across the cover. Moreover, plaintiff’s magazine has the name dell printed in the upper left-hand corner. Another aspect of difference is the nature of the banner headlines on the respective magazines for the past five months. It is apparent that plaintiff in the form of its cover is seeking to broaden its reader base by appealing not just to the “ confession” market, but to the general women’s magazine market with such titles as: “ Complete in this Issue: Chicken Cook Book ”; “ There is a Perfect Hairdo For you on page 97 ”; “ Save $20 on 20 Dinners ”, etc. On the other hand, defendant’s magazine makes no pretense at merchandizing anything but so-called £ £ confessions ’ ’; with the upper headlines of its last five issues blazoning such titles as: ££ Invitation to Sex? ”; ££ Why Shouldn’t He Wait For Me ”; ££ Teen Girl on Sin Street ”; and ££ Afraid to Trust My Heart.” Hence one need only pick up copies of the plaintiff’s and defendant’s magazines to see that their covers, their contents and even the texture of their paper are significantly different. The similarities are only those inherent in the nature of the product. There has been no adequate showing of copying or of intent to mislead plaintiff’s customers, or proof of any palming [116] off. The public can readily distinguish the two products. Though similarity in the name “ Modern ” exists, that similarity must be considered with the marked differences in the products noted above, and upon such consideration there is no justification for equitable interference in this field of publications. One more matter deserves mention. Plaintiff contends that its registration of “Modern Romances ” as a trade-mark in the United States Patent Office entitles it to an injunction against defendant’s alleged infringement. It is apparent that the decision of Special Term rested on a finding of unfair competition, and not on trade-mark infringement, although a likelihood of confusion would be relevant as to both claims (see Taendsticksfabriks Akticbolagat Vulcan v. Myers, 139 N. Y. 364, 367; Famous Sea Food House v. Skouras, 272 App. Div. 258, 260-261; Admiral Corp. v. Penco, Inc., 203 F. 2d 517, 520). As already indicated, the record does not support a conclusion of a reasonable likelihood of confusion. And in our view the word “modern” as used in magazines in the romance-confession field, is not a nondescriptive term which had acquired a secondary meaning to be protected by a court of equity. In the absence of proof of imitation and confusion, defendant was free to select the word “ modern ” to be used in conjunction with “ confessions ” for a title, particularly in view of the proof that the word “ modern ” was used by many other publishers. The concurrent use of common words by the leading magazines in the romance-confessions field by various publishers is further support for our conclusion that there was no infringement here, no palming off, and no reasonable likelihood of confusion. Obviously from the nature of the product in this romance-confession field, all competitors have similar names and similar products. Competition should not be stifled to give any one publisher a monopoly. Only unfair competition will be enjoined; and the record here will not support a judgment based on that ground. The judgment should be reversed, and the complaint dismissed, with costs.