National Picture Theatres, Inc. v. Foundation Film Corp., 266 F. 208

National Picture Theatres, Inc. v. Foundation Film Corp.

266 F. 208 | 2d Cir. | 1920

HOUGH, Circuit Judge

(after stating the facts as above). [1] The propriety of reviewing, and indeed our right to review, the order appealed from, is questioned because, in refusing relief, the court below exercised judicial discretion. Where decision is dependent on controverted facts, it is an extreme case that justifies departure from the rule “that the discretion of the primary court [is not] to be interfered with.” Texas, etc., Co. v. Collier, 195 Fed. at page 66, 115 C. C. A. 83. But here no fact is in doubt; there is before us only a question of law, and law not only guides, but coerces, discretion.

We have held that “whenever it is manifest to the court that, upon tire case made, an injunction will be granted at final hearing, * * * one should be awarded * * * preliminarily, in the absence of facts presenting special equitable considerations to induce the court, in the exercise of judicial discretion, to withhold it” (Allington, etc., Co. v. Booth, 78 Fed. at page 878, 24 C. C. A. 379); and Armat, etc., Co. v. Edison, etc., Co., 125 Fed. 939, 60 C. C. A. 380, well illustrates how the “contradictory character” of affidavits produces a situation wherein the appellate court will vacate preliminary injunction granted, or refuse one on appeal from a denial.

[2] The question at bar is whether when a play has attained such popularity that its name has plainly acquired a secondary signification (i. e. one suggestive of that particular play) equity will, under the rules of unfair competition, prevent the use of the same name, or any colorable imitation thereof, as descriptive of another and competing production. It is to be noted that plaintiff’s asserted right does not rest on copyright, though derived from a copyright owner; therefore it may be admitted that a name as such is not protected by the Copyright Act (Glaser v. St. Elmo Co. [C. C.] 175 Fed. 276, and cases cited), nor by trade-mark registration (Atlas, etc., Co. v. Street, 204 Fed. 398, 122 C. C. A. 568, 47 L. R. A. [N. S.] 1002).

[3] Yet it remains true that the owners of copyright on a book or play own the right to represent on a screen photographs telling the copyrighted story (Kalem Co. v. Harper, 222 U. S. 55, 32 Sup. Ct. 20, 56 L. Ed. 92, Ann. Cas. 1913A, 1285); therefore the assignment to this plaintiff gave a lawful right, which by the investment of capital and labor has been made a business. Where unfair competition is charged “the rights of the parties are to be determined [hy principles] similar to those which are well known to govern trade-marks, although the combination of elements is more complex than in devices which commonly go by that name” (per Holmes, J., New England, etc., Co. v. Marlborough, etc., Co., 168 Mass. 154, 46 N. E. 386, 60 Am. St. Rep. 377).

*211[4] To expand this thought: The plaintiff must have a right in being, an actual property, to protect (Manners v. Triangle, etc., Co., 247 Fed. 301, 159 C. C. A. 395); there must be a real present or prospective competition, that is, an endeavor to get the same trade from the same people at the same time;1 and that endeavor must on the defendant’s part be unfair, that is with a wrongful intent to “gain the advantages of that celebrity” (McLean v. Fleming, 96 U. S. at page 251 [24 L. Ed. 828]), of which plaintiff is the owner; but such intent, though it must be deemed to exist in fact, may be inferred from the inevitable consequences of the act complained of (Samson, etc., Works v. Puritan, etc., Mills, 211 Fed. at page 608, 128 C. C. A. 203, L. R. A. 1915F, 1107, and cases cited; Notaseme, etc., Co. v. Straus, 201 Fed. 99, 119 C. C. A. 134; Miller, etc., Co. v. Behrend, 242 Fed. at page 518, 155 C. C. A. 291.)

[5] All the requisite elements of recovery are here present; plaintiff has a veritable property or business; that the exhibitions of the parties compete, in that they appeal to the same people who at the same time in the same town incline to visit the “movies” is very plain; the necessary consequences of such a colorable imitation of plaintiff’s name as is defendant’s is deception of the public; and, finally, no equity is shown against plaintiff’s prompt demand. Therefore as matter of law plaintiff was entitled to injunction.

The court below rightly gave no weight to the defense based on Byers’ registration of a play, named as is defendant’s. Whatever may be Byers’ rights, unfair competition is a trespass, and no trespasser can justify by setting up the right of one to whom he is a legal stranger.

Order reversed, with costs, and cause remanded, with directions to grant relief.

Thus there could be no competition between an “Ideal’ fountain pen” (Waterman v. Shipman, 130 N. Y. 301, 29 N. E. 111) and. an “Ideal hair brush” (Hughes v. Smith Co., 209 Fed. 37, 126 C. C. A. 179); but it can and did arise between a “Keopelean toilet brush” and a “Sta-Kleen tooth brush” (Florence Co. v. Dowd, 178 Fed. 73, 101 C. C. A. 565).