Opinion
No. 55/238.
05-28-1924
EVENING JOURNAL ASS'N v. JERSEY PUB. CO. et al.
Robert Carey and Harry Dane, both of Jersey City, for complainant. John J. Fallon, of Hoboken, and Joseph Kafirs, of Newark, for defendant.
Bill by the Evening Journal Association against the Jersey Publishing Company and others. Bill dismissed.
Robert Carey and Harry Dane, both of Jersey City, for complainant.
John J. Fallon, of Hoboken, and Joseph Kafirs, of Newark, for defendant.
BACKES, V. C. This litigation is between owners of two afternoon newspapers published in Jersey City, and the object of the hill is to restrain unfair competition.
The Jersey Journal is an old established, prosperous newspaper, and the Jersey Observer, lately the Hudson Observer and formerly the Hoboken Observer, is of no less standing and success. They have about the same circulation and in the same territory, in Hudson county and New York City, at the tubes, railroad stations, and ferries. The Jersey Journal is popularly known as the "Jersey," so dubbed by the public after the New York Evening Journal came into prominence some years ago. Its title was at that time changed from "Evening Journal" to the "Jersey Journal" to distinguish it from that newspaper. The Jersey Observer is popularly known as the "Observer." The owner of the Jersey Journal objects to the use of the prefix "Jersey" by the Observer, which the latter recently adopted, claiming that "Jersey" is a valuable asset in the publication and circulation of its newspaper, and charging that the sole intent of the owner of the Observer in changing "the name of its newspaper from that of Hudson Observer to Jersey Observer is for the sole purpose of defrauding complainant and the public and with the deliberate intent to mislead, defraud and deceive the public into believing that it was purchasing the newspaper of complainant, instead of the newspaper of the defendant; and for the deliberate and sole purpose of and the putting into execution of a plan, design or scheme to cut and curtail the circulation of the newspaper published by complainant, to defraud and mislead and deceive the public and to induce the public to believe when they ask for the Jersey into buying the newspaper of the defendant instead of the newspaper of complainant and to injure and curtail the circulation of complainant's newspaper."
A geographical name is not the subject of exclusive appropriation, but an established trade of which it is the badge will be protected against unfair competition by the use of the name. Van Horn v. Coogan, 52 N. J. Eq. 380, 28 Atl. 788. If such a name so used as a badge of trade be taken by another with intent to mislead the public to the injury of the complainant, equity will enjoin, even though otherwise he would have the right to use it. International Silver Co. v. William A. Rogers, 67 N. J. Eq. 646, 60 Atl. 187, 110 Am. St. Rep. 506, 3 Ann. Cas. 804; Eureka Fire Hose Co. v. Eureka Rubber Co., 69 N. J. Eq 159, 60 Atl. 561;Cape May Yacht Club v. Cape May Yacht & Country Club, 81 N. J. Eq. 454, 86 Atl. 972. If no fraudulent intent in the adoption of the name appears, equity will relieve if the use of such name by another confuses and misleads the buying public to the injury of the complainant. Diversion of complainant's trade by the use of the name is fraudulent. Wirtz v. Eagle Bottling Co., 50 N. J. Eq. 164, 24 Atl. 658; Johnson v. Seabury, 69 N. J. Eq. 696, 61 Atl. 5; Rubber & Celluloid Harness Trimming Co. v. Rubber-Bound Brush Co. 81 N. J. Eq. 419, 88 Atl. 210, Ann. Cas. 1915B, 365; National Biscuit Co. v. Pacific Coast Biscuit Co., 83 N. J. Eq. 369, 91 Atl. 126. Neither actual confusion nor actual fraudulent intent need be shown where the necessary and probable tendency of the defendant's conduct is to deceive the public and pass off his goods or business as and for that of the complainant. Hilton v. Hilton, 90 N. J. Eq. 564, 107 Atl. 263.
Proof of any express intention to pirate the complainant's trade is, of course, not at hand, and ordinarily is not to be expected. Is intentional fraud inferable from the circumstances? The outstanding facts refute such an inference. To deduce the intention to mislead the public into believing that the defendant's newspaper is the complainant's sheet—for that is, essentially, the accusation—would be to assume that the Observer concedes it is inferior and is outclassed and aims to foresake its individuality and identity and parade as the Journal; in fine, that it admits it is an imitation. Such an attitude on the part of the Observer—quite as popular and influential as the Journal, and as justly proud and jealous of its own good name and reputation—is altogether out of the question. Powerful and successful and well established, its predominant care is, it would seem, to be sustained by its own past achievements and to thrive and extend its activities and influence as the Observer, not as the Journal. The explanation of the defendant for the change of name from the Hudson Observer to the Jersey Observer is in harmony. It sought to raise itself in the eyes of the public, and particularly of its New York and other advertisers, from what might appear to be a burg or provincial organ to one of city or state-wide sphere; i. e. éclat.
The other question is whether because of "Jersey" the Observer is apt to be mistaken by readers for the Jersey Journal; or, in other words, whether the use of the name "Jersey Observer" is clearly to deceive ordinarily cautious purchasers, buying with such care as would usually be exercised in such transactions, leading them to believe that they were buying the Jersey Journal. This is highly improbable except in isolated instances, and then only momentarily or accidentally. The chances are infinitely less than in the case of imitations in merchandise, involving a less cultured and discriminating public. Readers, as a rule, are keen for their accustomed newspaper, and are as intimately familiar with it as men are with their particular brand of cigars, or as ladies with their favorite perfume, and sorely disappointed if it fails them. It is inconceivable that a reader of the Journal could be lured into believing that it was the Observer, and vice versa. A glance at either would be enough. Their make-ups are radically different; their names are prominently displayed and in type that bears no resemblance, and while they are both known to be independent politically, with opposite partisan leanings, the political sentiment of one could hardly be mistaken for the other; and for additional identification the Observer carries its title at the head of each page.
It is not seriously claimed, nor could it be, that the render is deceived, but the Journal complains that its patrons are likely to he led into buying the Observer by the manner of its display at newstands, folded as the Journal is, and alongside of it, with only "Jersey" exposed; and more likely at the rush hours at the tubes, railroad stations, and ferries when the commuter helps himself or, asking for the Jersey, is given the Observer. Fine discrimination is not expected of purchasers, but ordinary caution is, and in such circumstances the fault would lie with the news dealer or the commuter, and may be easily remedied by spreading both papers, or by the most casual inspection, and, no doubt, would be corrected after a once happening and a "kick." Equity affords protection against injurious deception, not mishap, nor where ordinary care would avert confusion.
Another source of complaint is that newsboys, carrying both papers, cry out their ware as of old "Jersey Observer," and so pronounce the full name of the Observer and obscure the Journal. This is unfortunate, but how chargeable to the Observer, if it has the right to use "Jersey"? If the complainant truly interprets the newsboys' call, there is no confusion; and unless it be shown, and it is not, that the Observer's forename was purposely selected to usurp the Journal's nickname in the street, I fail to see how the name can be denied the Observer. Jessel, M. R., said of the complainant in Cowen v. Hutton, 46 L. T. R. (N. S.) 897:
"He has a right to the name by which he sells his paper, but not the name by which people choose to call it."
Moreover, in view of the Journal's previous and admitted notoriety as the "Jersey," it seems a strange assertion that those to whom it is so well known by that cognomen would not recognize it in the newboys' call.
Again, it is claimed that "Jersey" facilitates news dealers and newsboys palming off the Observer for the Journal. A complete answer is that any unscrupulous handler can imposeupon an unsuspecting buyer not only the Observer but any other newspaper as readily. Ordinary care—a squint at the paper—would frustrate it.
That "Jersey Observer" is not an infringement upon "Jersey Journal" is illustrated by the following authorities in litigations over newspaper names; the first mentioned being the name sought to be protected:
"The New Castle Chronicle" and "Sporting Chronicle," Cowan v. Hutton, 46 L. T. R. (N. S.) 897.
"Morning Post" and "Evening Post," Bort-Wick v. Evening Post, 37 Ch. Div. 449.
"Evening Express" and "North Express," Wilcox v. Pearson, 18 Times L. R. 220.
"The Mail" and "The Morning Mail," Walter v. Emmet, 54 L. J. (Ch.) N. S. 1059 (1885).
"National Advocate" and "New York National Advocate," Snowden v. Noah, Hopk. Ch. (N. Y.) 347, 14 Am. Dec. 547.
"The Commercial Advertiser" and "New York Commercial," Commercial Advertiser Association v. Haynes, 26 App. Div. 279, 49 N. Y. Supp. 938.
"Our Young Folks" and "Our Young Folks' Illustrated Paper," Osgood v. Allen, Fed. Cas. No. 10,603.
The bill will be dismissed.