The complainant, a Delaware corporation, having its principal office in Chicago, publishes a monthly periodical called “Photoplay Magazine.” The defendants publish a periodical called the “Photo-Play Journal.” Both periodicals are devoted to moving pictures and matters connected therewith, and cover practically the same subject. The complainant filed bills against the defendants, charging them with infringing its registered trade-mark, “Photoplay,” and with unfair competition, and prayed that they be restrained from using the word “Photoplay” as the title, or part of the title or name of their periodical, and from publishing and selling any periodical, magazine, or other publication under the name “Photo-Play Journal,” or any name containing as a part thereof the word “Photoplay,” and for such other and further relief as might seem proper. Identically the same questions are involved in both suits, which were tried and argued together, and both may be disposed of in one opinion, because the conclusions of law and fact are the same in both cases.
Complainant alleges that it and its predecessors have owned, printed, and published continuously since June, 1911, the “Photoplay Magazine,” and in June, 1914, complainant had the word “Photoplay” registered as its trade-mark; that since June, 1916, the defendants have been publishing and selling their periodical under the title “Photo-Play Journal,” thus using the distinguishing word, “Photoplay,” of complainant’s title, as a part of their title, so arranged as to copy and colorably imitate the complainant’s trade-mark in such manner as to cause confusion and mistake to purchasers, advertisers, and the public generally.
The defendants deny infringement of complainant’s rights, and aver that the periodicals are entirely unlike in name, shape, size, general appearance, and color scheme, and that no confusion, deception, or danger to complainant’s business or trade can result from the adoption of the word “Photo-Play” as part of the name of their periodical.
[1] Under the pleadings and proofs, the learned trial judge held that the word “Photoplay” is a descriptive term, and not a proper subject-matter of a registered trade-mark. The word was coined in a contest for a “new one-word name for a ‘moving picture show.’ ” The object of the Essanay Film Manufacturing Company in starting the contest was “to select a name which would be descriptive of tlie entertainment given in motion picture theaters.” The company selected three “men of acknowledged authority in moving picture affairs” as judges, to whose decision were submitted more than 2,500 words. They selected the word “Photoplay” as being “more closely descriptive * * * than any other of the long list submitted.” In announcing their decision, the judges stated that they were influenced in their selection “by the necessity of adopting a term which would be easily remembered, descriptive in character, simple, and appropriate.” The judges recognized in the word “Photoplay” a term “more closely descriptive of the entertainment given in motion picture theaters * * * than in any other of the long list submitted.” The fact of its selection called attention to the word, and to-day it is used entirely by some persons in the film and moving picture business,
[2] The complainant bases its charge of unfair competition upon a secondary meaning, which it alleges the word has acquired. 0The word, by early and constant use, it contends, became associated with and came in time to mean and designate its periodical only, and that, in consequence of the adoption of this word as part of the title of defendants’ publication, confusion and deception have resulted. If this contention is true, relief should be granted. The learned trial judge reached this conclusion, for he found that the complainant has the exclusive right to the use of the title adopted for its publication, so far as that .title has come to be associated with and to designate by name its particular publication, and it has the further right to protect the title against any other publication being imposed intentionally or otherwise upon purchásers as complainant’s publication.
[3] But he found that there had not been in the use of the word, “Photoplay,” any purpose or intention on the part of defendants to deceive or palm off their publication for that of the complainant, and that the defendants’ use of the word, “Photo-Play,” had not “been such as there would be any reasonable expectation that any one, knowing of and wishing to buy the publication of the plaintiff, would be led into mistaking one publication for the other.” Whether or not there has been confusion and deception is a question of fact, upon which „the decision of this case depends. Appellate courts, as a rule, accept the facts as found by the trial court. This is a wise rule, for the trial judge sees the witnesses and hears them testify, and so is better qualified to pass upon their credibility and the truth of conflicting testimony from which ultimate facts must be found. When, however, as in the case at bar, the testimony, which was taken by deposition here and there in many parts of the country, is uncontradicted, and' the witnesses were never before the. trial judge, the rule and reason therefor disappear.
[4] In actions of unfair competition, where the goods of one are passed off as those of another, it is not necessary for the complainant to prove that the defendant intended to pass off his goods as those of
[5] A¥hat might fully protect experienced wholesalers and retailers might be wholly inadequate to protect the inexperienced public for whose protection courts are so sensitive and careful. Whatever may be theoretically thought of the difference between the two publications, the proofs, establish, we think beyond doubt, that there was actual and considerable confusion in the public mind. A number of witnesses testified that the defendants’ publication had been passed off on them for that of the complainant’s. This number was not large when compared with the entire circulation of the publication, but it was quite large when the difficulty of securing such testimony is considered. The testimony of these witnesses stands uncontradicted and unimpeached. The only effort the defendants made to impeach it was to show that other persons, mostly experienced in,the trade, at other times and places, had not been confused or deceived.
[0] “Photoplay” is the catchword in the title of the complainant’s publication, under which it became popular and built up a large circulation, and the defendant, knowing this, adopted the catchword of the title and added to it a distinguishing noun, “Journal,” in place of “Magazine,” which in fact does not distinguish. Confusion and deception may readily happen—indeed, may be expected—if the catchword of the defendants’ title is used as descriptive of the next word, which, though different, conveys substantially the same idea, when used in describing a periodical of the same art. Defendants, like complainant, framed the title of their publication of two words. It is the same word, “Photo-Play.” The fact that defendants have separated tlie first part of the word by a hyphen from the latter part, which begins with a capital, does not avoid confusion, for this attempted dis tinction cannot be detected in pronunciation, and may not be seen by purchasers. They substituted the word “Journal” for “Magazine.’* This makes little difference, if any, because the two words convey substantially the same idea, when used in describing a periodical of the same particular art. They have similar definitions and are closely synonymous. To illustrate, Scribner’s Magazine is popularly called “Scribner’s,” though it is entitled “Scribner’s Magazine.” If another Scribner were to come into the field, and issue a periodical of this same character, entitled “Scribner’s Journal,” it is inconceivable that there would not be confusion and deception in the public mind.