Opposition Brief — Institute for Scientific Information, Inc. v. Gordon & Breach, Science Publishers, Inc.

; Supreme Court, U.S,

rieLae

No. 91-296 SEP 1 8 9l

In THE OFFIGE OF THE CLERK

SUPREME COURT OF THE UNITED STATES

October Term, 1991

INSTITUTE FOR SCIENTIFIC INFORMATION, INC.,

Petitioner,

Vv.

GORDON AND BREACH, SCIENCE PUBLISHERS, INC.

AND SCIENTIFIC TECHNICAL Book SERVICE, LTD..,

Respondents.

ON WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

RESPONSE TO PETITION FOR

WRIT OF CERTIORARI

James J. Rodgers

Counsel of Record

Robert F. Zielinski

Martin Farrell

DILWORTH, PAXSON,

KALISH & KAUFFMAN

2600 The Fidelity Building

Philadelphia, PA 19109

Tel: (215) 875-7000

Attorneys for Respondents

CounterPoint Systems P.O. Box 587 Southeastern, PA 19399-0587 (215) 296-8259

—a

RULE 29.1 STATEMENT

Respondents in these proceedings are Gordon and Breach

Science Publishers, Inc., and Scientific Technical Book Service,

Ltd., which are independent entities and neither of which has a

parent corporation or subsidiaries that are not wholly owned.

KK ee

TABLE OF CONTENTS

Es vececcncveusousesudeosssvsvassosssasconesseresteseoveevens i

EE ici cesiscevenrvavvecnsvssaseseresscoreneasserssceseseoeses ii

ME EE DOMED vcvevevevesessssavesexensenessnsscvosonesssveevets ill

COUNTERSTATEMENT OF THE CASE .....0........::cccsesseeeeees 1

REASONS FOR DENYING THE WRIT .....00... cece ceeeseeeeeees 3

A. The Court of Appeals Correctly Held That A Determi-

nation That An Incontestable Trademark Is Descrip-

tive Is Not An Attack On The Validity Of That Trade-

mark Prohibited By Park ’N Fly. ................cceesseeeseeeeeees 4

B. A Determination That A Trademark Is Descriptive Is

Relevant To A Fair Use Defense To A Charge Of

a cdeahnesssiedaanosinesanwtnees 5

C. The Decision Of The Third Circuit Is Consistent With

This Court’s Prior Decisions And With The Decisions

Of Other All Other Federal Courts. <......................000000- 7

ies cicatdepacesenvsxéisenvsavenesrvoneesveveretionsonepieenes 8

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TABLE OF AUTHORITIES

Cases:

A.J. Canfield Co. v. Vess Beverages, Inc.,

FO Fe BOO CTE Cle BGO cevcecscnsensecensieresscosseess 7

Abercrombie & Fitch Co. v. Hunting World, Inc.,

IE ee ee ls CIT tere eteisactriterccccernisnneienisens 7

Clarke v. Joseph H. Dahlkemper, Inc.,

468 F. Supp. 441 (W.D.Pa. 1979) .......... 6

Cullmann Ventures, Inc. v. Columbian Art Works, Inc.,

717 F. Supp. 96 (S.D.N.Y. 1989) ............scsseseseeree 7

Eli Lilly & Co. v. Revlon, Inc.,

577 F. Supp. 477 (S.D.N.Y. 1983) ................sseceees 6

Engineered Mechanical Services, Inc. v. Applied

Mechanical Technology, Inc.,

584 F. Supp. 1149 (M.D.La. 1984) ..............00..00.. 6

Jablonski v. Pan American World Airways, Inc.,

BGS F Be BOS (Sd CAr. TOG) ovcsevccccceccccccccececcerevesess 7

Munters Corp. v. Matsui America, Inc.,

730 F. Supp. 790 (N.D.IIl. 1989) «0.0.0.0... eee 2

Park ’N Fly v. Dollar Park And Fly, Inc.,

ae SE sachin cnissincxsenscasinicstnseneness 2,4,5,7

Schmid Laboratories v. Youngs Drug Products Corp.,

482 F. Supp. 14 (D.N.J. 1979) ........ cee eeeeeeeeeees 6

Seaboard Seed Co. v. Bemis Co., Inc.,

632 F. Supp. 1133 (N.D.T1l. 1986) ........... ee. 5

Tree Tavern Products, Inc. v. Conagra, Inc.,

640 F. Supp. 1263 (D.Del. 1986) ............... ee. 6

ill

,

Zatarains, Inc. v. Oak Grove Smoke House, Inc.,

698 F.2d 786 (5th Cir. 1983).....................0000 5,6,7

Statutes:

Lanham Act, 15 U.3.C. $1065 ........................-.-.-+-.-.--..---. 3

Lanham Act, 15 U.S.C. §1115(b)(4) 20....c cece cccecccccceceeeeee. 2,5

Rules:

PAINE. BOUIN GND -viscsinsncasnicsduccvesiedetecentevilvcdiidosonsanecen 2

Miscellaneous:

1 J. MCCARTHY TRADEMARKS AND UNFAIR COMPETITION

§11:17 (1984 and 1990 Supp.) «0.0.0.0... 5,7

lv

No. 91-296

In THE

SUPREME COURT OF THE UNITED STATES

October Term, 1991

INSTITUTE FOR SCIENTIFIC INFORMATION, INC.,

Petitioner,

v.

GORDON AND BREACH, SCIENCE PUBLISHERS, INC.

AND SCIENTIFIC TECHNICAL Book SERVICE, LTD.,

Respondents.

ON WRIT OF CERTIORARI 2

TO THE UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

RESPONSE TO PETITION FOR

WRIT OF CERTIORARI

COUNTERSTATEMENT OF THE CASE

Respondent Scientific Technical Book Service, Ltd. (“STBS”)

distributes free of charge a periodical under the title SCAN. App.

A-22.! SCAN has been accurately described on its front cover and

in advertising as “a free guide to the current contents of books and

journals published by Gordon and Breach and Harwood Academic

The facts recited in this section are derived from the findings of fact in the

District Court’s Memorandum Opinion. References designated “App. A-” are to

the appendix to Petitioner's Brief.

1

2

Publishers,” and by other variations of that phrasing. App. A-25.

STBS is the distributor for the journals published by respondent

Gordon and Breach, Science Publishers, Inc. (for ease of reference

both respondents will be referred to collectively as “Gordon and

Breach”).

Petitioner Institute for Scientific Information, Inc. (“ISI”)

has complained that the use of the words “current contents” in the

description of SCAN infringed its registered trademark “CUR-

RENT CONTENTS?” for a publication that similarly lists the

current contents of various scholarly publications. App. A-23.

Respondents moved for judgment on the pleadings pursu-

ant to Rule 12(c) of the Federal Rules of Civil Procedure, arguing

that the use of the words “current contents” as complained ofby ISI

was a noninfringing fair use permitted by §33(b\X4) of the Lanham

Act, 15 U.S.C. §1115(bX4). App. A-23. The District Court found that

the words “current contents” were descriptive both as used as a

trademark by petitioner, App. A-25, and in the description em-

ployed by respondents. App. A-25-26. The District Court found the

“fair use” defense applicable and dismissed the action. App. A-28.

On appeal, the Court of Appeals for the Third Circuit

vacated the ruling of the District Court, holding that petitioner’s

allegations raised material issues of fact as to respondents’ good

faith use of the words. App. A-16-17. Good faith use by the

defendant is one of the three elements of the fair use defense.?

In so doing, however, the Court of Appeals rejected

petitioner’s contention that the District Court had erred in conclud-

ing that petitioner’s mark CURRENT CONTENTS was “clearly

descriptive.” Petitioner argued that the District Court’s conclusion

was precluded by this Court’s decision in Park ’N Fly v. Dollar Park

And Fly, Inc., 469 U.S. 189 (1985), because plaintiffs mark had

become incontestable. However, the Court of Appeals determined

2 “The elements of the fair use defense are: 1) that the defendant used the

word or symbol to merely describe its product; 2) that it did not use the word or

symbol as a trademark; and 3) that it used the word or symbol in question in

good faith.” District Court Opinion at App. A-23-24, quoting, Munters Corp. v.

Matsui America, Inc., 730 F. Supp. 790, 800 (N.D.Il. 1989) (citing 15 U.S.C. §

1115(4Xb)).

3

that the District Court had not been addressing the validity of the

mark on grounds of descriptiveness, but rather had been analyzing

whether the term “current contents” was capable of conveying a

descriptive meaning. App. A-17. Indeed, the District Court had

made this analysis of the terms first as used in connection with

petitioner's publication and then with respect to respondents’

publication in assessing the fair use defense raised by respondents.

App. A-17-18. Petitioner unsuccessfully sought hearing en banc

with respect to this issue. App. A-21.

REASONS FOR DENYING THE WRIT

The decision of the Court of Appeals, holding that it was not

error for the District Court to determine that petitioner’s trade-

mark is descriptive, where the District Court did not address the

validity or incontestability of the mark, does not conflict with

decisions of this Court or of any Court of Appeals, and does not

present any issue for review by this Court.

The questions raised by petitioner present no issues requir-

ing resolution by this Court. Indeed, there is no disagreement

between the parties concerning the applicable principles of law.

Respondents agree with petitioner that once a trademark becomes

incontestable under §15 of the Lanham Act, 15 U.S.C. §1065, the

validity of that trademark may not be attacked, nor a charge of

infringement defended, on the grounds that the mark is merely

descriptive. Respondents also agree with petitioner that the test

for determining the defense of fair use is whether the defendant

uses the mark in a descriptive sense. Finally, respondents agree

that a fair use defense does not require that the plaintiffs trade-

mark be found to be descriptive; however, the descriptiveness of the

mark may be relevant to the assessment of the defense.

Respondents strongly disagree with ISI’s characterization

of the proceedings below. Gordon and Breach defended ISI’s charge

of infringement on the grounds that Gordon and Breach’s use is a

fair use of the words “current contents.” By necessity, this required

an assessment of whether the words bear a descriptive meaning in

the context of the defendants’ use of the words. Neither the

respondents nor the District Court have questioned or attacked the

validity of petitioner's United States trademark registration.

4

Petitioner’s argument misconstrues the decision of the District

Court as challenging the validity of the mark by confusing the

distinction between (1) the determination of whether words are

used in a “descriptive” sense in the context of the fair use defense

and(2)the characterization ofa mark as “descriptive” in the context

of a defense to trademark infringement.

A. The Court of Appeals Correctly Held That

A Determination That An Incontestable

Trademark Is Descriptive Is Not An At-

tack On The Validity Of That Trademark

Prohibited By Park 'N Fly.

The heart of Petitioner's argument is that the Court of

Appeals misconstrued Park ’N Fly by allowing to stand the District

Court’s determination that IS?’'s mark “CURRENT CONTENTS”

is “clearly descriptive” for the reason that such determination

challenges the validity andincontestability of the mark. Petitioner’s

Brief at 7. This argument misstates the law as derived from Park

'N Fly and §15 of the Lanham Act, and mischaracterizes the

decisions of both the Court of Appeals and the Districi Court.

In Park ’N Fly this Court held that the owner ofa registered

mark could rely on the incontestability of that mark offensively to

enjoin infringement by another and that infringement could not be

defended on the grounds that the mark was merely descriptive. 469

US. at 205.

A far different situation is presented in this case. Gordon

and Breach has defended ISIs charge of infringement by asserting

that its use of the common words “current contents” in a descrip-

tive, non-trademark use is a fair use. No question of the validity of

the mark CURRENT CONTENTS has ever been raised. Respon-

dents have not attacked ISI’s mark as descriptive, or ISI’s right to

use its mark, but have only attempted to show that their own use

of the words is in fact a fair use, and thus not infringing. Thus, the

District Court’s descriptiveness determination arose in the context

of determining the nature of the words at issue, “current contents”

and not as an attack on the petitioner’s mark. This does not conflict

with the holding of Park ’N Fly, which precludes a defense to

5

infringement upon a determination that a plaintiffs mark is

descriptive.

B. A Determination That A Trademark Is

Descriptive Is Relevant To A Fair Use

Defense To A Charge Of Infringement.

The fair use defense is found in §33 of the Lanham Act,

which provides, in pertinent part:

(b) To the extent that the right to use the registered mark

has become incontestable under section 15, the registration

shall be conclusive evidence of the validity of the registered

mark and of the registration of the mark, of the registrant’s

ownership of the mark, and of the registrant’s exclusive

right to use the registered mark in commerce. . . subject to

the following defenses or defects:

* * *

(4) That the use of the name, term, or device charged to be

an infringement is a use, otherwise than as a mark... ofa

term or device which is descriptive of and used fairly and in

good faith only todescribe the goods or services of such party.

15 U.S.C. §1115(bX4) (emphasis added).

The fair use defense focuses on the defendant’s descriptive

use of the mark. See 1 J. McCarrHy TRADEMARKS AND UNFAIR

COMPETITION §11:17 (1984 and 1990 Supp.). An essential element

of the defense is that the term or device be capable of conveying a

descriptive meaning. See Park ’N Fly, 469 U.S. at 201 (“The

Lanham Act...permits the non-trademark use of descriptive terms

contained in an incontestable mark.”). Thus, courts have held that

the fair use defense is not a challenge to the incontestability of the

mark. Seaboard Seed Co. v. Bemis Co., Inc.,632 F. Supp. 1133, 1138

(N.D.II. 1986); See Zatarains, Inc. v. Oak Grove Smoke House, Inc.,

698 F.2d 786, 791 (5th Cir. 1983) (“The holder of a protectable

descriptive mark has no legal claim to an exclusive right in the

primary, descriptive meaning of the term.”). Where, as here, the

competing products are similar, it is relevant to determine if the

6

mark is capable of describing the product in assessing whether the

defendant’s use is descriptive. See Zatarains, 698 F.2d at 793-796;

Tree Tavern Products, Inc. v. Conagra, Inc., 640 F. Supp. 1263,

1265-1269 (D.Del. 1986); Engineered Mechanical Services, Inc. v.

Applied Mechanical Technology, Inc., 584 F. Supp. 1149, 1156-

1158 (M.D.La. 1984); Eli Lilly & Co. v. Revion, Inc., 577 F. Supp.

477, 484-486 (S.D.N.Y. 1983); Schmid Laboratories v. Youngs

Drug Products Corp., 482 F. Supp. 14, 21 (D.N.J. 1979); Clarke v.

Joseph H. Dahlkemper, Inc., 468 F. Supp. 441, 442 (W.D.Pa. 1979).

In analyzing fair use, the District Court below first exam-

ined whether the words at issue, “current contents” are descriptive.

App. A-24. The Court had defined the term “descriptive” in the

trademark context and then analyzed both ISIs use of the mark for

its publication and Gordon and Breach’s use of the words in its

description. The court had noted the similarity between the nature

of the publications, App. A-22, and had analyzed the trademark as

used in order to assess the descriptiveness of the terms of the mark.

App. A-25. The District Court found that the complained of use was

a page topped by the word “SCAN” in large letters, with the

following words beneath in much smaller letters: “...a free

guide to the current contents of books and journals pub-

lished by Gordon & Breach Science Publishers and Harwood

Academic Publishers.” This is not a trademark use of the

words “current contents,” it is a description of the nature of

the defendant’s publication, which is the current contents

of the books and journals that they publish. The fact that

the description contains the words “current contents” does

not turn it intoa trademark. The words “current contents”

have a normal dictionary meaning, and defendants use the

words in that sense.

- App. A-25.

The court’s determination that Gordon and Breach used

the words descriptively did not depend on its assessment of ISI’s

trademark as descriptive. As the Court of Appeals noted, the

District Court examined ISI’s mark to determine if the words were

capable of descriptiveness. App. A-17. Because the District Court

7

had been ruling on a motion for judgment on the pleadings, only the

facts as presented in the pleadings could be considered. Jablonski

v. Pan American World Airways, Inc., 863 F.2d 289, 290-291 (3d

Cir. 1988). Thus, in assessing whether the words “current con-

tents” could bear a descriptive meaning, the court was limited to

what was before it, i.e., the uses by the parties.

C. The Decision Of The Third Circuit Is

Consistent With This Court’s Prior Deci-

sions And With The Decisions Of Other All

Other Federal Courts.

Petitioner overstates the holding of Park ’N Fly to the extent

it argues that the preclusion of a defense to infringement based on

the alleged descriptiveness of an incontestable trademark extends

to the fair use defense. Neither this Court nor any other has held

that a court may not analyze the nature of the trademark in issue

in the fair use defense. As this Court stated in Park ’N Fly,

incontestable status under the Lanham Act does not allow a

descriptive mark to take from the public domain, or commercially

monopolize, language that is merely descriptive because the Act

provides several defenses, including the fair use defense, for the

non-trademark, descriptive use of the language. Park ’N Fly, 469

U.S. at 201. Thus, the fact that the trademark in issue is descriptive

is not isolated from consideration, but is relevant to determining

the fair use defense. This has been generally recognized by both

courts and one commentator. See Zatarains, 698 F.2d 786;

Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir.

1976); Cullmann Ventures, Inc. v. Columbian Art Works, Inc., 717

F. Supp. 96, 132 (S.D.N.Y. 1989); 1 McCarthy, §11:17.

Descriptiveness in the context of fair use is different from

that of descriptiveness in the context of a defense to infringement,

where the inquiry focuses on whether the mark in issue is capable

of functioning as a trademark or merely describes the goods. See

Park 'N Fly, 469 U.S. at 194, 195. In the fair use defense, the inquiry

is directed to whether defendant has used the words not as a

trademark and as descriptive of defendant’s goods. See Ad.

Canfield Co. v. Vess Beverages, Inc.-796 F.2d 903, 908 (7th Cir.

1986).

Thus, the District Court did not err in considering the

nature of plaintiffs trademark in the context of the fair use defense,

and the Court of Appeals properly recognized that this was relevant

to whether the terms were capable of functioning descriptively for

respondents’ publication.

CONCLUSION

Because the decision of the Court of Appeals raises no

conflict with a decision of this Court or of another Court of Appeals,

nor does it raise an issue of first impression requiring a decision by

this Court, the Petition for a Writ of Certiorari should be denied.

Respectfully submitted,

GORDON AND BREACH, SCIENCE

PUBLISHERS, INC. AND SCIENTIFIC

TECHNICAL Book SERVICE, LTp.

James J. Rodgers

Counsel of Record

Robert F. Zielinski

Martin Farrell

DILWORTH, PAXsON, KALISH

& KAUFFMAN

2600 The Fidelity Building

Philadelphia, PA 19109

Tel: (215) 875-7000

Attorneys for Respondents