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Institute for Scientific Information Inc. v. Gordon and Breach

argued: February 25, 1991.

INSTITUTE FOR SCIENTIFIC INFORMATION, INC. APPELLANT
v.
GORDON AND BREACH, SCIENCE PUBLISHERS, INC.; SCIENTIFIC TECHNICAL BOOK SERVICE, LTD.



Appeal from the United States District Court for the Eastern District of Pennsylvania; D.C. Civil No. 89-06730.

Stapleton, Alito, and Seitz, Circuit Judges.

Author: Seitz

Opinion OF THE COURT

SEITZ, Circuit Judge

The Institute For Scientific Information ("plaintiff") filed a complaint alleging, inter alia, violations of the Federal Trademark laws, 15 U.S.C. §§ 1051 et. seq. (1988), by Gordon and Breach, Science Publishers Inc. ("Gordon") and its subsidiary, Scientific Technical Book Service, Ltd. (collectively the "defendants"). After filing their answer, defendants moved for judgment on the pleadings pursuant to Fed. R. Civ. P. 12(c).*fn1 The district court granted defendants' motion, and plaintiff filed this appeal. The district court had jurisdiction over plaintiff's federal trademark claims under 28 U.S.C. § 1338 (1988), and pendent jurisdiction over plaintiff's state claims. This court has jurisdiction pursuant to 28 U.S.C. § 1291 (1988).

I. BACKGROUND

On September 21, 1989, plaintiff filed a complaint alleging federal and common law trademark infringement, false designation of origin, common law unfair competition, unjust enrichment, dilution and breach of agreement. On December 15, defendants filed an answer, and thereafter moved for judgment on the pleadings pursuant to Rule 12(c).

To rule on defendants' Rule 12(c) motion, the district court was required to view the facts presented in the pleadings and the inferences to be drawn therefrom in the light most favorable to plaintiff, the nonmoving party. Society Hill Civic Ass'n v. Harris, 632 F.2d 1045, 1054 (3d Cir. 1980); see also 5A C. Wright & A. Miller, Federal Practice and Procedure, § 1368, at 519 (1990) [hereinafter "5A Federal Practice "]. We turn to the facts as they are alleged in plaintiff's complaint.

Plaintiff is in the business of developing and marketing information retrieval services. These services are used by researchers to locate and obtain relevant information published worldwide in scholarly, scientific and technical journals and books. Plaintiff is the owner of an incontestable trademark, "CURRENT CONTENTS," that was registered in the U.S. Patent and Trademark Office on December 23, 1958, Registration No. 671,569.*fn2 That mark is used by plaintiff in periodicals containing the reproductions of title pages of a large number of current periodicals in a variety of fields. Plaintiff's CURRENT CONTENTS periodicals have substantial sales and have been published continuously since 1957.

Defendants are also in the business of publishing books and journals. Defendants publish a journal entitled "SCAN" which lists the contents of defendants' publications on certain scholarly, scientific and technical subjects. SCAN is in direct competition with plaintiff's CURRENT CONTENTS periodicals.

In early 1985, the subtitle of SCAN described it as "a guide to current contents of journals published by Gordon & Breach." On February 27, 1985, plaintiff's senior vice president of finance and administration sent the president of Gordon a letter requesting defendants to voluntarily cease and desist from using the phrase "current contents" in light of plaintiff's incontestable mark, CURRENT CONTENTS. On September 17, 1985, after several months of negotiations, plaintiff's attorney sent another letter to Gordon confirming an oral agreement (the "agreement") whereby defendants agreed to discontinue all use of the phrase "current contents," and to use the following as the subtitle for SCAN: "A guide to the contents of current issues of journals published by Gordon & Breach." Plaintiff never received a written response to that letter.

From September 1985 to February 1989, Gordon did not use the phrase "current contents" within the subtitle of SCAN. The February 24, 1989 issue of Science, however, contained an advertisement for SCAN which described it as ". . . a free guide to the current contents of books and journals published by Gordon and Breach Science Publishers and Harwood Academic Publishers." Upon learning of this advertisement, plaintiff's senior vice president telephoned Gordon and notified it that plaintiff considered defendants' use of "current contents" a breach of their agreement. Plaintiff's representative was told that the use of "current contents" was due to an oversight by new employees and that defendants would cease to use those words. On March 29, 1989, plaintiff sent a letter to Gordon confirming the details of this telephone conversation. Plaintiff never received a response to the March 29 letter, and defendants continue to use "current contents" in the description of SCAN.

On August 30, 1990, the district court granted defendants' Rule 12(c) motion. Plaintiff filed a timely notice of appeal.

II. DISCUSSION

Initially, we note that "the Rule 12(c) motion is little more than a relic of the common law and code era," 5A Federal Practice at 537, and it "only has utility when all the material allegations of fact are admitted in the pleadings and only questions of law remain." Id. at 510. Granting a Rule 12(c) motion results in a determination on the merits at an early stage in the litigation, and thus this court requires "the movant [to] clearly establish[] that no material issue of fact remains to be resolved and that he is entitled to judgment as a matter of law." Jablonski v. Pan Am. World Airways, Inc., 863 F.2d 289, 290-91 (3d Cir. 1988). (quotation omitted).*fn3

Defendants' Rule 12(c) motion was based on the contention that the words "current contents" were used fairly and in good faith as permitted by the Lanham Act, 15 U.S.C. § 1115(b)(4).*fn4 For the district court to dismiss plaintiff's complaint on that ground, it was required to determine that "no set of facts could be adduced to support the plaintiff's claim for relief." Bryson v. Brand Insulations, Inc., 621 F.2d 556, 559 (3d Cir. 1980) (reviewing judgment on the pleadings granted on Rule 12(b)(6) grounds); see also Rivera-Gomez v. de Castro, 843 F.2d 631, 635 (1st Cir. 1988) (stating that "a court may not grant a plaintiff's Rule 12(c) motion unless it appears beyond doubt that plaintiff can prove no set of facts in support of his claim") (quotation omitted); 5A Federal Practice, § 1368, at 527-28 (stating that plaintiff must "allege facts that, if proved, would permit recovery").

Plaintiff's primary cause of action was for trademark infringement. To dismiss this claim, the district court had to conclude that no set of facts could be adduced to support plaintiff's contention that (1) the CURRENT CONTENTS mark is valid and legally protectable; (2) it owns the CURRENT CONTENTS mark; and (3) defendants' use of the words "current contents" to identify goods or services is likely to create confusion concerning the origin of the goods or services. See Opticians Ass'n v. Independent Opticians, 920 F.2d 187, 192, 17U.S.P.Q.2d (BNA) 1117 (3d Cir. 1990).*fn5

Plaintiff's allegation that it is the owner of an incontestable trademark is sufficient to plead a factual basis for (1) and (2). Therefore, the only issue with respect to the trademark infringement claim is whether plaintiff alleged facts that, if proved, would establish that there was a likelihood of confusion.

The district court did not address the issue of likelihood of confusion. Instead, it turned to whether defendants used the phrase "current contents" fairly and in good faith. Concluding that defendants had made fair use of "current contents," the ...


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