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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Opposition Brief
- **Published:** January 1, 1991
- **Citation:** 502 U.S. 909

## Text

; 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.

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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

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385009_2571%3A2. Public record. Not legal advice.