Victor DeCOSTA, Plaintiff-Appellee, v. COLUMBIA BROADCASTING SYSTEM, INC., et al., Defendants-Appellants.
No. 74-1391.
United States Court of Appeals, First Circuit.
June 24, 1975.
520 F.2d 499
Argued March 5, 1975. Certiorari Denied Jan. 19, 1976. See 96 S.Ct. 856.
Especially considering our view of the merits, we find no abuse of discretion in the district court‘s denial of attorney‘s fees.
Reversed in part; affirmed in part.
See also Cust. & Pat.App., 498 F.2d 1383.
Before COFFIN, Chief Judge, ALDRICH and McENTEE, Circuit Judges.
COFFIN, Chief Judge.
Plaintiff, a dozen years ago, began this suit against the Columbia Broadcasting System, Inc. and allied corporations (CBS) to seek compensation for their unauthorized use of a character concept he had developed, embodying a costume, slogan, name, and symbol. A mechanic living in Cranston, Rhode Island, his avocation had been to don an all black cowboy suit, with a St. Mary‘s medal affixed to his flat crowned black hat, a chess symbol to his holster, and an antique derringer secreted under his arm, and make public appearances at rodeos and other events, meeting innumerable children, and passing out his card, inscribed with a chess set knight, proclaiming “Have Gun Will Travel, Wire Paladin, N. Court St., Cranston, R.I.” We described these events in greater detail when this case was before us on appeal from the first count1 in his complaint, Columbia Broadcasting System, Inc. v. DeCosta, (DeCosta I), 377 F.2d 315 (1967), cert. denied, 389 U.S. 1007, 88 S.Ct. 565, 19 L.Ed.2d 603 (1968). As every well-versed television viewer of the late fifties and early sixties knows, the gestalt conveyed by plaintiff‘s costume and accessories found its way into defendants’ television series, “Have Gun Will Travel“, which enjoyed enormous popularity for over eight years in its initial run, grossing in excess of fourteen million dollars.
The claim below, in the remaining counts two and three of the complaint, asserted a wilful and intentional infringement of plaintiff‘s common law trademark and/or service mark and unfair competition. The plaintiff sought both injunctive and monetary relief, including an accounting for all profits made by defendants in broadcasting “Have Gun Will Travel“. The first count had been tried before a jury. When this court reversed the result obtained in that trial, the case was returned to the district court where the parties entered into a stipulation that counts two and three be determined by the district judge on the basis of the trial transcript, including all exhibits, together with a stipulation of additional testimony. 383 F.Supp. 326, 327.
Subsequent to this stipulation the following order was entered by the district court on October 5, 1973:
“Pursuant to stipulation of the parties on each side and of counsel on each side, the above captioned case is referred, under authority of
28 U.S.C. 636 , to United States Magistrate Jacob Hagopian for hearing and determination to be had on or before November 5, 1973.”
Six months later, on April 15, 1974, a report was filed by the magistrate setting forth his findings of fact and conclusions of law sustaining the plaintiff‘s position. Five days after this report was filed, the defendants objected to the reference for the first time and argued that the parties were without authority to consent to reference and that the decision of the magistrate had been ultra vires. The district court ruled that the consensual reference granted the magistrate the power to “determine” the issues in the case. It therefore held the magistrate‘s exercise of jurisdiction legitimate and restricted its own review to a search for “manifest error” of fact or law. Finding none, it affirmed the magistrate‘s decision and entered judgment thereon. This appeal challenges both the propriety of the reference and the decision on the merits.
I. The Reference.
The defendants’ argument to the district court and to us on appeal may be
The district court‘s analysis began with a holding that a consensual reference to a magistrate was not a reference to a special master within the meaning of
Defendants argue that it is constitutionally impermissible for an Article III judge to abjure decision making responsibilities and that the judge is therefore without power to invest other non-Article III judicial officers or parajudges, such as magistrates, with broad authority. However persuasive such an argument may be where governmental sanction is threatened,4 indicating a strong public interest in the outcome of litigation5 and creating a countervailing ne-
There is old authority for consensual reference for decision after court proceedings have been instituted. In Heckers v. Fowler, 2 Wall. 123, 69 U.S. 123, 17 L.Ed. 759 (1864), the parties agreed to a reference under the terms of which the report of the referee was to “have the same force and effect as a judgment of the court.” Id. at 127. In responding to a challenge to the power of a federal court to authorize such a proceeding, the Court endorsed the holding of an earlier case that “a trial by arbitrators, appointed by the court, with the consent of both parties, was one of the modes of prosecuting a suit to judgment as well established and as fully warranted by law as a trial by jury ....” Id. at 128-129. It also recognized that, assuming the preservation of exceptions to acceptance of the report and a sufficient record, the same scope of appellate review would be available as in the case of appeal from an ordinary trial court judgment. See also Newcomb v. Wood, 97 U.S. 581, 24 L.Ed. 1085 (1878). And, in Kimberly v. Arms, 129 U.S. 512, 9 S.Ct. 355, 32 L.Ed. 764 (1889), the Court said:
antitrust law states a claim in the public interest which Congress intended the courts to resolve). Similarly in Wingo v. Wedding, 418 U.S. 461, 94 S.Ct. 2842, 41 L.Ed.2d 879 (1974), the Supreme Court limited its inquiry as to the propriety of a magistrate holding evidentiary hearings in habeas corpus cases to the question of whether the demonstrated Congressional intent of the Habeas Corpus Act,
“A reference by consent of parties, of an entire case for the determination of all its issues, though not strictly a submission of the controversy to arbitration—a proceeding which is governed by special rules—is a submission of the controversy to a tribunal of the parties’ own selection, to be governed in its conduct by the ordinary rules applicable to the administration of justice in tribunals established by law.” Id. at 524, 9 S.Ct. at 359.9
We would add that we find nothing in La Buy v. Howes Leather Co., 352 U.S. 249, 77 S.Ct. 309, 1 L.Ed.2d 290 (1957) to cast doubt on the propriety of truly consensual reference. The Court in La Buy was concerned with the wholesale resort to references to private masters ordered, despite objection, by district courts attempting to deal with crowded dockets, such references having gained notoriety for their delay and high cost. We see none of these problems in truly consensual references to magistrates.
Both Heckers and Kimberly spoke in terms of arbitration supervised by the Court even though both cases long antedated the present availability of authorization for binding private agreement to arbitrate future disputes. In that era, an agreement to arbitrate a dispute that might arise was not judicially enforceable,10 although an arbitration award, once granted, was treated as the equiva-
lent of adjudication by the courts.11 There was a long history in the field of arbitration of unwillingness on the part of the judiciary to relinquish power to decide cases properly before the courts.12 With the adoption of the
From a constitutional viewpoint, we can see no significant difference between arbitration and consensual reference for decision to magistrates. In both situations the parties have freely and knowingly agreed to waive their access to an Article III judge in the first instance. Or put another way, they have chosen another forum. Indeed, the decision to waive in the case of a consensual reference is more knowledgeable than in the case of an agreement to arbitrate a future dispute because it is made after the issue has crystallized. Both modes of conflict resolution serve the same goals of relieving scarce judicial resources and of accommodating the parties. If it be
Defendants, however, urge that, even if there is no constitutional defect vitiating consensual references to magistrates, such are now proscribed by the Magistrates Act in light of its legislative history. It is true that the legislative history of the Act clearly demonstrates an intent to subject the court‘s power to compel a reference of ordinary cases to the limitations of the Federal Rules (including
The question here is whether the legislative history indicates that the same strictures were to be placed on consensual reference. Very little was said on this subject. Most of the voluminous testimony and written presentations were concerned with the duties which, as of course, could be assigned to magistrates. But what little was said makes it clear that it was assumed as given that consensual references were available. Defendants have not seen fit to acknowledge the relevant legislative history.
In the first place, the draft of the legislation which was to become the Magistrates Act was accompanied, as early as April of 1966, by a Senate subcommittee staff memorandum, quoted by the district court, stating: “The use of magistrates for duties that do not require the employment of an Article III judge, or in cases in which the parties consent to the use of a magistrate, may do much to increase the efficiency of the Federal Courts.” Hearing on S. 3475 before the Subcom. on Improvements in Judicial Machinery of the Senate Comm. on the Judiciary, 89th Cong., 2d Sess., at 14 (1966).
A second indication of Congressional intent stems from the subcommittee‘s concern over the challenge made by then Assistant Attorney General Fred M. Vinson, Jr. to the proposed assignment of magistrates to try minor offenses if the defendant knowingly and intelligently consented.16 The subcommittee then charged its staff to make a study, which resulted in a memorandum addressed to “The Constitutionality of Trial of Minor Offenses by U. S. Magistrates“. Hearings on S. 945 before the Subcom. on Improvements in Judicial Machinery of the Senate Comm. on the Judiciary, 90th Cong., at 246-256 (1967). The memorandum concluded that the proposed minor offense provision of the Magistrates bill was constitutional, drawing on factors supported by three separate lines of authority: (1) the fact that the magistrate would be an officer of the court and subject to its control; (2) the necessity of consent [“If any ‘right’ to trial by a good-behavior tenure judge exists, it is a due process right, which is waivable like other due process rights.“]; and (3) the preservation of a right of appeal to the court. Id. at p. 254.17 In the course of the memorandum, a separate subsection entitled “Consensual reference to special master” noted that “In ordinary practice before the Federal district courts, the parties can also consent to delegation of judicial responsibility to a court officer—a special master.” and quoted from Kimberly v. Arms, supra. Id. at p. 253.18
“(1) A magistrate may be assigned to serve as a special master in an appropriate civil action, under the conditions imposed by pertinent provisions of Federal Rules of Civil Procedure. This latter requirement was added as a clarification in response to comments made by the Committee on the Administration of the Criminal Law of the Judicial Conference. In particular, rule 53(b) provides that a reference to a master shall be the exception and not the rule; that in actions tried by a jury a reference shall be made only when the issues are complicated; and that in actions tried without a jury, save in matters of account, a reference shall be made only upon a showing that exceptional circumstances require it. These conditions, which in essence reflect the rule laid down by the Supreme Court in La Buy v. Howes Leather Company, 352 U.S. 249 [77 S.Ct. 309, 1 L.Ed.2d 290] (1957), protect against any abdication of the decision-making responsibility that is properly that of the district courts.”
Defendants omitted the subsequent sentence, which concluded the paragraph:
“A memorandum entitled ‘Restrictions on the Use of Special Masters,’ prepared by the staff of the Subcommittee on Improvements in Judicial Machinery and published at pages 281-283 of the hearings before that subcommittee on the Federal Magistrates Act, provides an analysis of rules relevant to the assignment of magistrates as masters.”
Recourse to the memorandum referred to reveals a paragraph entitled “General Restrictions“, which ends as follows:
“Furthermore, a reference cannot be made to a master if it would result in an infringement of a party‘s right to trial by judge and/or jury or on any other substantive right. Schwimmer v. United States, 232 F.2d 855 (8th Cir.), cert. denied, 352 U.S. 833, 77 S.Ct. 48, 1 L.Ed.2d 52 (1956). But a party can waive these rights by consenting to a reference. Allen Bradley Co. v. Local 3, IBEW, 51 F.Supp. 36 (S.D.N.Y.), reversed on other grounds, 145 F.2d 215 (2d Cir.), which was reversed, 325 U.S. 797, 65 S.Ct. 1533, 89 L.Ed. 1939 (1943); see Hart v. Williams, 91 U.S.App.D.C. 340, 202 F.2d 190 (1952).” Hearings on S. 945, supra at 282.
We see no contrary references in the legislative history. It therefore seems clear to us that the Congressional intent was to leave untouched the tradition, as Congress understood it, that parties could, without violation of Article III freely consent to refer cases to non-Article III officials for decision. We see no suggestion in the committee reports and no reason of policy which would limit consensual reference to “some exceptional conditions” as required by
That it is constitutionally and statutorily permissible to refer cases,
master‘s report under a compelled reference is advisory only, “it is just as conclusive as the decision of the court when the litigants consent to the reference.” Id. at 253.
rity of the process could be devised. But in the present state of the law we would be reluctant to approve even a clearly worded consensual reference to a magistrate which purports to finally bind the parties to his rulings of law. Until Congress, on reviewing the experience under the Federal Magistrates Act, fashions a review procedure for consensual reference for final (or semi-final) determination of all issues of law and fact, it might be better to rely on the formulation contained in
We need attempt no categoric answer to this issue since the reference in this case was not clear enough by its own terms to support the conclusion that the parties consented to a grant of power to the magistrate greater than that outlined in
We must, therefore, treat the district court‘s failure to review the magistrate‘s decision on the law under
II. The Merits.
We proceed to review the magistrate‘s findings in the light of the pleadings, the evidence, and the law. In DeCosta I we considered only the first cause of action in the complaint—that for misappropriation of “the idea and character“, seeking damages based on defendants’ unjust enrichment. Before us now are plaintiff‘s second and third causes of action, for trademark and/or service mark infringement and for unfair competition. In the second cause of action, plaintiff alleges that the slogan “Have Gun Will Travel“, together with a figure of a knight chess piece and the words “Wire Paladin“, as used in his calling cards, constituted his distinctive common law service mark or marks, which defendants intentionally infringed, appropriating the goodwill created by plaintiff, causing him serious financial damage. In the third cause of action plaintiff alleges that defendants intentionally copied plaintiff‘s service marks and his manner of dress (black outfit, white tie, mustache, etc.), and passed off their television character of Paladin as the original Paladin portrayed by plaintiff, profiting and diluting plaintiff‘s established goodwill, thereby deriving unjust profits. Plaintiff sought injunctive relief, an accounting for all profits, a trebling of “profits lost and damages suffered by plaintiff“, plus a separate item of $2,000,000 damages.
The magistrate‘s well ordered opinion on cross motions or summary judgment
was divided into findings of fact, a discussion of preemption and other threshold legal issues, and conclusions of law. After rehearsing the general factual background described in DeCosta I, 377 F.2d at 316-317, he made the following critical findings: (1) As to secondary meaning—some 21 witnesses knew plaintiff as Paladin, 18 had seen him pass out his cards and plaintiff received cards and letters addressed to him as Paladin; (2) As to confusion—the card and costume marks and dress of plaintiff were identical to those used in defendants’ TV series, with attendant “great likelihood of confusion“; 21 witnesses discerned a similarity between plaintiff and the television Paladin, six first thought the television Paladin was plaintiff; (3) As to plaintiff‘s commercial activity—he “commercially held himself out to be ‘Paladin‘” and used his marks in interstate commerce to advertise his services as an entertainer, and in connection with his appearances at his pony ring where children paid for rides, and appearances at paid admission rodeos.
In his legal discussion the magistrate held that DeCosta I had not precluded recovery on the second and third causes of action; that the Sears-Compco decisions21 had not preempted application of the common law of service marks and unfair competition or of the Lanham Act,
Finally, the magistrate concluded that plaintiff‘s marks were not within the scope of copyright laws; that they had been used in interstate commerce, and had acquired a secondary meaning; and that, although there was no direct competition involved defendants had infringed, had falsely advertised them to be their own, and had therefore unfairly
We note at the outset of our analysis that two allegations of the complaint meet with no response in the findings of the magistrate; in the second cause of action the allegation of financial damage, and in the third cause of action, the allegation of “passing off“. Since plaintiff‘s role-playing as Paladin was uncompensated, we think that any finding of financial damage would have been unsupported. We say the same about “passing off“; there is no evidence that the CBS nationwide television venture ever sought to draw luster from the Cranston paradigm. We recognize that precision of pleading no longer can be an absolute determinant of either liability or remedy. What, if any, effect these gaps between pleading and proof have we leave for later analysis.
Picking our way through the cluster of issues in several related but different fields of the law, we start where we left off, at DeCosta I. We there gave what has since been characterized as an expansive reading to Sears and Compco. See, e. g., Comment, Copyright Pre-emption and Character Values; The Paladin Case as an Extension of Sears and Compco, 66 Mich.L.Rev. 1018 (1967-1968). We held that “if a ‘writing’ is within the scope of the constitutional clause, and Congress has not protected it, whether deliberately or by unexplained omission, it can be freely copied.” 377 F.2d at 319. Since the cards—including the photograph—“were unquestionably ‘writings’ within the meaning of the copyright clause, and arguably were copyrightable under the statute“, id. at 321, we concluded that plaintiff could prevent others from copying them.22
We now know, after Goldstein v. California, 412 U.S. 546, 560, 93 S.Ct. 2303, 2311, 37 L.Ed.2d 163 (1973), that “under the Constitution, the States have not relinquished all power to grant to authors ‘the exclusive Right to their respective Writings.‘” In Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 478-479, 94 S.Ct. 1879, 1885, 40 L.Ed.2d 315 (1974), this holding was summarized: “at least in the case of writings, the States were not prohibited from encouraging and protecting the efforts of those within their borders by appropriate legislation.” Were we to take this literally, we would see no reason to look on Goldstein as relevant to this case; plaintiff relies on a common law service mark as subsumed also by a federal statute,
We face a dilemma. Goldstein tells us that we were, in our interpretation of the preemptive reach of the Copyright Clause, over-inclusive. And yet, what we decided in DeCosta I has settled, for this case, the issue of misappropriation. Had Sears and Compco remained unglossed, we might well rule that DeCosta I had predetermined our decision on the second and third causes of action. For if defendants could not be prohibited from copying the cards, which gave the defendants all that they took from plaintiff and incorporated in their series, would not any sanction, whether based on service mark infringement or unfair competition, denigrate their license? We do not, however, rest on any such implications of DeCosta I, realizing that we do not have a tabula rasa to write upon.
A starting point, of course, is the explicit domain left open in Sears, that a
state or federal. Pre-Goldstein, this supposition had respectable support. See Nimmer, The Law of Copyright, Vol. 1, § 30, p. 137, n. 595.
Our first inquiry is whether plaintiff‘s marks and dress are protectible under either the broad concept of unfair competition or that part of unfair competition dealing with trade and service mark infringement. As to plaintiff‘s dress, this may have had less claim to protection against infringement than his card. For there is no question but that the photograph of plaintiff in full regalia which he widely distributed was copyrightable.
What is not clear is whether plaintiff‘s activities in connection with his marks entitle him to the protection of trade and service mark law. As we said in DeCosta I, 377 F.2d at 316, “[t]his was perhaps one of the purest promotions ever staged, for plaintiff did not seek anything but the entertainment of others.” Plaintiff testified that he never used the name “Paladin“, the slogan or the chess piece for any business use, and
never published any advertisements; that he did not even receive his expenses for appearances at horse shows and rodeos; and that the distribution and mailing of pictures and cards was costly to him. The closest point to commercialism that plaintiff came was in conducting a horse trading business at a ranch, where he stapled some of his cards to some beams near the ceiling of a barn. In 1953, he left that ranch and established a pony ranch, sold rides and, in costume, passed out cards and photographs to children. This business ended in September of 1957, when plaintiff had to move out. Ironically, this was the month when defendant‘s television series commenced. From then through 1964 plaintiff continued to appear in parades, at hospitals, and at other gatherings, but was not, apart from his employment as a mechanic, associated with any business venture.
While the magistrate found that plaintiff “commercially held himself out” to be “Paladin“, and that he used his service marks in interstate commerce to advertise his services, we interpret his holdings not as purely factual ones but as decisions combining both law and fact. That is, the findings could not, on this record, be that plaintiff was engaged in a remunerative business, sparked by the profit motive. Rather, they were findings that plaintiff regularly (on week-ends) held himself out as a personality and entertainer, appearing in various states, and that, even though he incurred expense without receiving income, his activity constituted the rendering of service in interstate commerce. The Lanham Act,
Defendants rely on cases such as Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 36 S.Ct. 357, 60 L.Ed. 713 (1916) and United Drug Co. v. Rectanus Co., 248 U.S. 90, 39 S.Ct. 48, 63 L.Ed. 141 (1918), for support of the proposition that a trade mark is inseparable from the goodwill of a business. Defendants also cite the recent case, Heinemann v. General Motors Corp., 342 F.Supp. 203 (N.D.Ill.1972), aff‘d, 478 F.2d 1405 (7th Cir. 1973). In that case a plaintiff had “modified” an ancient Model A Ford and had named it “The Judge“, after the well known skit in “Laugh In“, a television show. He raced and exhibited his car, occasionally receiving a mileage allowance, radio advertising, and free entry in a race. He intended to open an automobile equipment shop and capitalize on the good will generated by the slogan. After defendant General Motors brought out a new Pontiac called “The Judge“, plaintiff adopted another name. The court rejected plaintiff‘s claims for trade and service mark infringement and unfair competition, holding, citing only Rectanus, supra, that the slogan, to be profitable, must be used in connection with a trade or business at the time of the infringing activity. All plaintiff had was the desire to open a business in the future, together with the hobby of racing and displaying his automobile.
From a policy point of view, the functions served by a trademark (or service mark)—an indication of origin, a guarantee of quality, and a medium of advertisement, 3 Callman, § 66.3, p. 36—suggest association with enterprises selling their goods or services. Callman refers to a service mark as “the mark of a business that only renders service and is not engaged in the manufacture or sale
of goods.” Id. § 68.1, p. 69. And, again, “The service mark must, of course, be used as an identification mark, and it must perform the same functions in the selling and advertising of services that a trademark traditionally performs in respect of goods.” Id. § 68.1, p. 71.25 Our impression, derived from our scrutiny of the cases, the treatises with their myriads of citations, and the periodical literature including the Trade Mark Reporter, is that virtually all the litigation and doctrine center about the pursuit of economic gain.
We say “virtually” because the law of unfair competition now protects “eleemosynary organizations [which] function in commerce and, in form, resemble business enterprises .... The happenstance that they are nonprofit-seeking ventures, and therefore removed, as such, from the rigors of business competition, neither eliminates the element of competition nor disentitles them to protection against the unfair competition of similar organizations.” Callman, Vol. 1, § 1.1, p. 4. See, e. g., The President and Trustees of Colby College v. Colby College-New Hampshire, 508 F.2d 804 (1st Cir. 1975). While the quoted passage speaks only of protection against unfair competition from similar institutions, we have no doubt that a non-profit institution may protect its name against filching by a commercial company. It is not a big step in theory to say that an individual who develops and promotes for entertainment purposes a specialty character associated with a distinctive name, costume, slogan, and other marks, but who never charges a fee, is also entitled to protection under the common law doctrine relating to trademarks and unfair competition. But, if the step were taken, what principle should both guide and limit? If plaintiff is recognized as one who performs services in commerce, what about the hobbyist magician, square dance caller, story teller, amateur actor, singer, barbershop quartet, stand-
economic and pecuniary advantage of a going concern.
Protection at present has the merits of inherent limitations: the existence of a trade, business, or profession where the “good will” to be protected has been subject to the acid test of the willingness of people to pay for goods or services; or, in the case of nonprofit institutions, the voluntary investment in time, effort, and money of many individuals to create and maintain a program of sufficient interest to consumers, members, and sponsors to warrant protection. We hesitate to take the step of offering common law unfair competition protection to eleemosynary individuals. Whether legislatures are better equipped than courts to deal with this problem, we cannot clearly say, but in our posture of doubt would prefer to see expansion of protection come from that source.
Having exposed our misgivings, we do not rely on a holding that the absence of a profit-oriented enterprise disqualifies plaintiff from protection. We shall assume, therefore, that plaintiff‘s marks meet the requirements of common law service marks. We also shall assume that they are distinctive enough so that proof of secondary meaning is not essential. In the alternative, we shall accept the finding of the magistrate, adopted by the district court, that, at least among some people, plaintiff‘s name and card had come to be associated with him.
This brings us to the critical issue: whether there was a deceiving of the public as the result of defendants’ actions. As we have noted, there was not and could not supportably have been a finding that defendants passed off or palmed off their “Paladin” and television program as the creations of plaintiff. Having already decided in DeCosta I that there was no culpable misappropriation, we are left with the issue of confusion, or its likelihood.26 As Callman has said, “It is the gravamen of an action for trademark infringement that the defendant‘s use of a trademark similar to the plaintiffs’ created a likelihood of confusion.” Callman, Vol. 3, § 80, p. 538. He states further that “There is a confusion of goods when an ‘ordinarily prudent purchaser would be liable to purchase one product in the belief that he was purchasing the other,‘” Id. at 541 [footnote omitted]. In resolving this issue there are several guidelines: there need not be a similarity of competing activities, id. at 539, or goods or services of the same description; confusion may consist in misleading as to the identity of goods, or of source, or of a relationship to the originator, id. at 543-546; and “Mere visual or side-by-side comparisons of the trademarks will not alone suffice. Extrinsic facts are highly significant, as, for example the types of goods, the classes of prospective purchasers, the competitive relationship of the parties, third party registrations, the extent of the public‘s awareness of the plaintiff‘s trademark, the manner of trademark use (visual, auditory, or mental), the degree of the defendant‘s necessity to use his mark, and the trend towards expansion in the respective trade or industry as to territory or line of merchandise.”27 Id. at 556.
When we examine the magistrate‘s opinion on this issue, we find only a finding as to the identical nature of the marks used by plaintiff and defendants and the resulting “great likelihood of confusion” therefrom, and another that “At least 6 ... witnesses testified that they had at first thought, on viewing the television program, that Richard Boone was the plaintiff Mr. De-Costa until they learned the contrary from viewing the credits of the show, or otherwise.”28 The paucity of these find-
ings takes on some significance when we note that after remand of the case to the district court in 1968, following our decision in DeCosta I, the plaintiff was given the opportunity to supplement the record in support of his second and third causes of action. The quoted findings are the result.
The magistrate‘s findings being treated as final, they are here subject to the same standard of review as are district court findings under
We recognize that plaintiff has lost something of value to him. The very success of defendants’ series saturated the public consciousness and in time diluted the attractiveness of plaintiff‘s creation, although he continued his appearances longer than defendants’ first run. While he was not injured financially, there can be no doubt that he has felt deprived. As a commentator has observed, “[I]t could be argued that the most appropriate measure of damages would be the emotional harm that he suffered when CBS exploited his character and lured his audience away.” 66 Mich.L.Rev. at 1034. But to give any relief, however tailored, we need a predicate of liability. Absent the ultimate fact of confusion, we cannot find a basis for liability for common law service mark infringement or unfair competition.
Judgment reversed. Remanded with instructions to enter judgment for defendants.
ALDRICH, Senior Judge, (concurring).
I concur in the court‘s opinion, except in the possibilities it leaves open with respect to review of a magistrate‘s rulings of law. The court makes the correct decision, that the magistrate‘s rulings are fully reviewable, but I am, perhaps out of an excess of caution, disturbed that by its reference to arbitrators, and to a phrase in Kimberly v. Arms, 129 U.S. 512, 9 S.Ct. 355, 32 L.Ed. 764, it should even contemplate other possibilities.
As to the first mentioned, it is true that arbitrators are normally free of review, legal as well as factual. I do not believe, however, that the magistrate system was provided by Congress to furnish free arbitration service. If parties are content to work outside the judicial system, well and good, but I cannot think Congress intended to pay for it, even though, in a broad sense, a non-reviewable magistrate would “assist” the courts more than one subject to review. I add that to have such unlimited power would not be good for magistrates themselves, who must normally function in a framework of assistance, not of final decision. Cf. O‘Shea v. United States, 1 Cir., 1974, 491 F.2d 774.
At least non-review would be a recognizable procedure. The intermediate suggestion, that magistrates should, with the consent of the parties, make rulings of law are subject to review for manifest error, only, to me makes no sense whatever. It would be an anomaly in the law. I do not know the standard it suggests, or how one would apply it. In the case of an alleged manifest error of fact, if the evidence supports a finding either way the magistrate‘s choice will be final. How does a magistrate have discretion to choose between two rulings of law? The law is the law. Of course there may be a non-prejudicial error, but that is not what the court is talking about. Secondly, why should a magistrate be given such power? The court‘s recognition of such a possibility seems to me both unworkable and unwarranted.
It is true that in the case of Kimberly v. Arms, 1889, 129 U.S. 512, 9 S.Ct. 355, 32 L.Ed. 764, the Court might be thought of having spoken of such a form of review. I believe, however, that the language should be taken as a whole. At page 524, 9 S.Ct. at page 359 appears the following:
“A reference by consent of parties, of an entire case for the determination of all its issues, though not strictly a submission of the controversy to arbitration—a proceeding which is governed by special rules—is a submission of the controversy to a tribunal of the parties’ own selection, to be governed in its conduct by the ordinary rules applicable to the administration of justice in tribunals established by law. Its findings, like those of an indepen-
dent tribunal, are to be taken as presumptively correct, subject, indeed, to be reviewed, under the reservation contained in the consent and order of the court, when there has been manifest error in the consideration given to the evidence, or in the application of the law, but not otherwise.”
If by this language the Court meant that the errors of law, there by a special master, were less reviewable than what has since been fully understood to be the normal scrutiny applied to masters, and certainly is applied to rulings of Article III judges, I believe it was an inadvertence. If not, it has never been repeated. I see no basis for suggesting that a magistrate should be in such a unique position that he is less reviewable than anyone else in the judicial system, and I regret that my brethren should be willing even to contemplate it.