UNITED STATES DISTRICT COURT EASTERN DISTRICT OF PENNSYLVANIA
March 31, 1965
TRIANGLE PUBLICATIONS, INC.
STANDARD PLASTIC PRODUCTS, INC.
The opinion of the court was delivered by: DUSEN
Plaintiff in this action, the owner and publisher of a monthly magazine entitled 'SEVENTEEN,' seeks a preliminary injunction restraining the defendant, a manufacturer of plastic products, from the advertising, promotion and sale of luggage and stationery items manufactured by defendant and bearing the name 'MISS SEVENTEEN.' Plaintiff contends that the defendant has wrongfully capitalized upon the goodwill attached to plaintiff's trademark in the use of the name MISS SEVENTEEN on its merchandise and that, unless such unfair competition is preliminarily enjoined, plaintiff will suffer immediate, substantial, and irreparable harm for which it will have no adequate remedy at law.
A temporary restraining order was filed February 15, 1965 (Document 5) on the basis of appropriate affidavits (Documents 3 and 4). The first hearing was held on February 19, 1965 (Document 11). At defendant's request (N.T. 5 and 13), the initial hearings were confined to the jurisdictional issue, which was decided in plaintiff's favor on February 26, 1965 (Document 25).
Hearings on the Motion For A Preliminary Injunction commenced on March 4, 1965 (as soon as the assigned judge had concluded most of the hearings on another pending Motion For A Preliminary Injunction -- Civil Action No. 37372 -- which had been scheduled prior to February 26, 1965) and were concluded on March 10, 1965.
Requests for Findings of Fact and Conclusions of Law and Memoranda of Law (Documents 40 to 45) were filed within the following week.
This is a diversity action. It involves no federal trademark questions, but solely a question of the law of unfair competition. Plaintiff is a corporation organized under the laws of Delaware, with its principal place of business in Philadelphia, Pa. Defendant is a New Jersey corporation and has its principal place of business in that state.
Plaintiff's publication, SEVENTEEN, is a high-quality magazine devoted entirely to the interests of young girls between the ages of 13 and 19,
and covering such subjects as etiquette, travel, fashion and general purchasing guidance. Since the magazine was first published in 1944, it has achieved a position of preeminence among magazines in general and a unique position in the field of teenage magazines. Approximately 1,250,000 copies of SEVENTEEN are sold monthly throughout the United States, Canada and elsewhere at 50c per copy.
Due to the fact that the magazine is passed from girl to girl, statistics show that an average issue of SEVENTEEN is read by almost 50% Of all teenage girls in the United States.
Because advertising is SEVENTEEN's principal source of revenue, plaintiff has spent substantial sums over the past 20 years to establish the reputation of its magazine as an advertising medium for manufacturers, stores and other advertisers who wish to appeal to the female teenage market. Plaintiff currently spends in excess of $ 600,000. annually in the advertisement of its magazine in other major magazines and newspapers.
Advertising in SEVENTEEN currently sells for $ 5,000. to $ 7500. per page per issue.
To make the magazine attractive to advertisers, SEVENTEEN regularly sells to its advertisers promotional material and merchandising aids in the form of signs, tags, counter cards, etc., bearing words such as 'As Seen In SEVENTEEN,' which are used extensively by them to take further advantage of the favorable association of the magazine in the minds of its readers.
At the present time, SEVENTEEN leads all other directly competitive magazines in tie-in linage -- i.e., references to SEVENTEEN by manufacturers and merchants in their advertisement of their merchandise in newspapers and other magazines.
To further assist its advertisers in selling their products, plaintiff also periodically conducts contests, with prizes such as trips abroad.
The word 'seventeen' in a distinctive, lower-case script has been used by the plaintiff as the title of its magazine since it was first published in 1944, in advertisements for the magazine, on the various merchandising and promotional aids sent by plaintiff to advertisers and retailers, and on all items sold directly by plaintiff, such as cookbooks, books of etiquette, hat and shoe boxes, and notebooks.
Defendant contends that, because the word 'seventeen' is a general descriptive word which has been used as a trademark by others for a wide variety of products and as a title for numerous short stories, books, songs, etc., plaintiff is not entitled to assert exclusive rights to the use of the word as a trademark. The undersigned concedes that 'seventeen' is a 'weak' mark. However, in this case it is not necessary to decide how far the rights of the plaintiff in the word 'seventeen,' as such, extend. The particular way in which the defendant has used the word is clearly violative of plaintiff's rights.
The luggage items manufactured by defendant upon which plaintiff bases its claim of unfair competition are inexpensive,
soft, plastic pieces on which 'MISS SEVENTEEN' and sketches of luggage stickers from Hilton Hotels, TWA, Holiday Inn, and National Car Rental have been imprinted. The stationery items of which plaintiff complains are soft plastic stationery accessories, such as scrapbooks, locker vanities, pencil cases, wallets, autograph books, diaries, etc., on which 'MISS SEVENTEEN' and sketches of a teenage model in various settings have been imprinted.
To promote the sale of defendant's MISS SEVENTEEN luggage, defendant is conducting a MISS SEVENTEEN Junior Luggage Contest and offering a trip to Paris as first prize. Defendant has supplied retailers featuring its MISS SEVENTEEN luggage with large counter display cards and small tags to be attached to the individual luggage pieces, all bearing information about the MISS SEVENTEEN Junior Luggage Contest and a photograph of a top teenage fashion model
carrying one of defendant's luggage pieces.
Defendant selected the MISS SEVENTEEN logotype appearing on all defendant's merchandise and promotional material from more than 50 versions of MISS SEVENTEEN script styles prepared for defendant by an art studio.
It is the opinion of this court that the defendant deliberately chose the logotype most closely resembling plaintiff's distinctive, lower-case script to take advantage of the likelihood of confusion of the two reproductions of the word 'seventeen.' In the version adopted by defendant, the word 'miss' is printed in a smaller script, which is entirely different from and less prominent than the word 'seventeen,' which appears in bold type below the word 'miss.' The attention of the viewer is thus directed immediately to the word 'seventeen,' which appears in a lower-case type almost identical to the type used by the plaintiff. The main difference between the type used by plaintiff on its magazine and the type used by the defendant for the word 'seventeen' is the staggered placement of the letters slightly above and below the line in the defendant's script. The letters of defendant's 'seventeen' are also slightly broader and are placed in a directly upright position, whereas the letters of plaintiff's 'seventeen' are on a slight slant. These differences are, however, minor and are discernible only upon close examination. The overall effect of defendant's lettering style is to mislead potential purchasers as to the source and sponsorship of defendant's merchandise and thus permit defendant to capitalize upon the goodwill attached to plaintiff's trademark.
Defendant has called the court's attention to several other products, all of which use the word 'seventeen' as part of their trademarks; however, none of these items offered by defendant on which 'seventeen' appears evidences a printing or lettering technique in any way resembling that employed by plaintiff.
In addition to defendant's copying of the style of type of plaintiff's trademark, defendant has copied directly from the magazine itself. Defendant's advertising manager acknowledged in open court that one of the sketches appearing on defendant's MISS SEVENTEEN diskette had been copied from a photograph of one of plaintiff's models appearing in the August 1964 issue of SEVENTEEN.
Defendant contends that no confusion as to the source and sponsorship of dedefendant's merchandise could possibly exist due to the fact that its MISS SEVENTEEN line is designed exclusively for the toy market -- i.e., children between the ages of six and thirteen. It is claimed that the name MISS SEVENTEEN was selected because it would be attractive to potential purchasers, ages six to thirteen, who like to emulate teenage models and who all look upon seventeen as a glamourous, magical age when they begin to date and become young ladies. Defendant insists that its MISS SEVENTEEN articles would hold no interest whatsoever for the sophisticated and fashion-conscious young ladies to whom plaintiff's magazine is directed.
The court, however, is not persuaded. Apart from the testimony of one of plaintiff's salesmen that defendant's representative stated that it was anxious to get some 'teenage merchandise,'
it is obvious from defendant's promotional material that the MISS SEVENTEEN sales campaign will be directed, if not in whole at least in part, to the teenage market, where the goodwill attached to plaintiff's trademark SEVENTEEN is already established. A public relations release sent by defendant to potential retail outlets states that the MISS SEVENTEEN line will be advertised on popular teen-hop television shows,
which appeal primarily to high school children. Other promotional material states that the MISS SEVENTEEN Junior Fashion Luggage Contest will be open to 'subteen and teeners
(fashionable mothers can help out).'
Defendant also has indicated that it will advertise its merchandise in American Girl, a magazine which is read largely by girls 13 and above.
In addition, the nature of the prizes offered by defendant for the MISS SEVENTEEN contest negates defendant's arguments that the contest is intended to appeal only to children 13 and under.
It is generally well known in the advertising community that plaintiff does not license the use of its trademark, although it has been frequently requested to do so,
and the evidence makes clear that defendant was aware of plaintiff's policy in this regard. The list of possible names for its new line submitted to the defendant by its advertising agency did not include the name 'seventeen' as a possible choice.
In addition, before defendant adopted its MISS SEVENTEEN mark, one of plaintiff's salesmen called on defendant at the request of Panitch, one of defendant's executives. At that meeting, Panitch asked the salesman about the possibility of using SEVENTEEN as a trademark for a new line. Plaintiff's salesman informed Panitch that plaintiff did not permit the use of its name by others and suggested, instead, that defendant advertise in the magazine and then utilize an 'as seen in Seventeen' promotion.
Panitch was later present at the meeting of defendant's executives at which the trademark MISS SEVENTEEN was finally selected.
Thus, with knowledge the plaintiff would object to the use of SEVENTEEN as a trademark, defendant nevertheless went ahead with its plan to manufacture and promote its MISS SEVENTEEN line to the major chain, variety, department and other stores throughout the United States.
The court finds that the promotion and sale of defendant's MISS SEVENTEEN merchandise will detract from and cause damage to the reputation and goodwill attached to plaintiff's publication, in the development of which over the past 20 years plaintiff has spent substantial sums of money. At the present time, SEVENTEEN carries more advertising in the luggage field than any other magazine published and leads all other magazines in the advertising of women's leather accessories. SEVENTEEN is also a leader in the advertising of stationery and paper goods items.
The existence of luggage and stationery products bearing a trademark so closely resembling plaintiff's will obviously impair the value and distinctiveness of plaintiff's magazine as an advertising medium for luggage and stationery manufacturers. Moreover, because plaintiff has refused to license its trademark in the past for products of other manufacturers and stores who advertise in SEVENTEEN, defendant's MISS SEVENTEEN products are likely to create ill-will on the part of advertisers who are misled as to plaintiff's role in the MISS SEVENTEEN promotion.
To the extent that defendant's MISS SEVENTEEN articles are of a quality inferior to merchandise advertised or featured in SEVENTEEN, the sale of such merchandise will tarnish SEVENTEEN'S image in the eye of its readers and advertisers, who have come to expect the endorsement of only quality merchandise from plaintiff's publication.
In very brief summary, the record requires these factual findings, among others stated herein:
A. Defendant was aware that plaintiff would not permit the use of its copyrighted trademark by defendant on products manufactured by it, but nevertheless went ahead and intentionally used the word 'seventeen' in a lower-case script closely resembling plaintiff's trademark.
B. Defendant also copied a photograph appearing in the August 1964 issue of plaintiff's magazine.
C. Plaintiff has spent considerable sums of money over the past twenty years developing the business value of its trademark SEVENTEEN, which business value is entitled to protection against wrongful misappropriation by defendant.
D. Defendant's use of its MISS SEVENTEEN trademark on goods of inferior quality will create the impression among advertisers and consumers that defendant's merchandise is associated in some way with plaintiff's magazine, and will immediately and substantially impair the value of plaintiff's trademark.
Damages and Amount of Bond
After receipt of the letter of 1/29/65 (Exhibit D to Complaint) from plaintiff's attorney, stating that SEVENTEEN may not be used for 'articles intended for teenagers' and we shall have to 'institute suit without further notice' if you do not 'discontinue the use of 'Seventeen' in connection with the name or promotion of your products,' defendant continued its production of the luggage and stationery items which are the subject of this suit (N.T. 697). Defendant has not shown what portion, if any, of the cost item of $ 44,233.17 of finished goods on D-81 was produced on or after 2/1/65 (N.T. 697). Similarly, defendant has not shown what portion of the item of $ 156,087.36 covering sales in January and February 1965 were made on and after February 1, 1965 (N.T. 712). Under these circumstances, the items in defendant's Requests 69a and c will be reduced as follows in computing the amount of the bond:
69a ($ 156,087.36, reduced
as above) $ 75,000.00
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