“These Publishers Put Their Magazine Like a Live Fish into a Boundless Ocean, the Infinitude of ‘Girls’ Interests”

A fun line from a fun dissenting opinion, in Hanson v. Triangle Publications, Inc., 163 F.2d 74 (8th Cir. 1947) (Woodrough, J., dissenting). I excerpt the majority, just for the facts and a very basic sense of the reasoning, and then quote the dissent in full:

The plaintiff, Triangle Publications, Inc., is the publisher of “Seventeen,” a magazine of fashions and other interests for girls of high school age. It began publication of the magazine in August 1944 and had the name “Seventeen” registered in the Patent Office as a trade-mark for “a monthly magazine devoted to the interests of girls.”

The defendants, Hanson and Schwartz, as partners, are manufacturers of dresses for “teen-age” girls, named and labeled “Seventeen for the Junior Teens.” They began to show styles and samples to the trade in November 1944 but did not make deliveries until May 1945….

Infringement and unfair competition are claimed from defendants’ use of the word “Seventeen” in their trade name and label of “Seventeen for the Junior Teens.” The word “Seventeen” is given prominence by defendants over the words “for the Junior Teens” in their insignia. Plaintiff charges that defendants are appropriating its registration and also the acquired secondary meaning of its trade-mark; that the magazine’s relation to the field of teen-age apparel is such that by defendants’ use of the word “Seventeen” the public will be led to believe that defendants’ dresses have been advertised in or otherwise endorsed or sponsored by the magazine; and that defendants are simply trying to get a free ride for their products on the trade-mark and good will of the magazine….

The injunction entered prohibited defendants from using in any manner whatsoever the word “Seventeen,” or the numeral “17,” or any name including the word “Seventeen,” in the manufacture, sale, distribution or advertising of dresses or other wearing apparel for girls….

[A]s a name for a magazine catering to girls from 13 to 18 years of age, we agree with the trial court that “Seventeen” is a fanciful or suggestive term rather than a commercially descriptive one…. It must be conceded that magazines and dresses would not normally be regarded as merchandise of substantially the same descriptive properties. There is, however, the factor to be considered that plaintiff has made its magazine serve also as a commercial blesser and oblique brander of merchandise for identifying the products of its advertisers in the market….

The [injunction] is affirmed.

Woodrough, Circuit Judge (dissenting).

I think the courts should refuse their sanction to the attempt of the publishers of the magazine “Seventeen” to obtain monopoly rights in the word “seventeen” in the field of labels on merchandise for girls. The record makes plain that through the originality and usage of persons other than these publishers, it has come about in the extension of our linguistic implementation that a concept of the world of young women’s interests may be conveyed semantically to up-to-date moderns by merely using the number seventeen. They use the number nowadays to describe all that might formerly have been covered by “sweet sixteen.” The publishers made that use of it as a name descriptive of their magazine “devoted to the interests of girls.”

The thing described being the young women and their interests, is, of course, the most enduring topic on the human tongue. Biologically mankind must be, always has been, and will be concerned about the interests of girls. These publishers did not create any special relation of the human race to the interests of girls or any part of the good will of the race towards girls’ interests. That was infinite before their time. They have neither originated nor produced any material thing. They publish.

As I see it, these publishers put the numeral seventeen as a name on their magazine because it described the thing to which they said in their application for copyright the magazine was intended to be devoted, namely, “the interests of girls.” Their expectation that people would understand the description was justified and the wide understanding of the meaning was demonstrated by the success, up to the time of trial, of the magazine. People knew what the magazine was about because the title was descriptive, and practically every normal human being has some interest in the thing described.

Of course the numeral does not describe mathematically or scientifically. Girls and their interests are utterly beyond any such description. But it accomplishes the description and brings the concept of the description to the consciousness of the observer sufficiently in a way that is much better for business purposes.

Manifestly an expression or verbal label that describes and evokes in the mind “the interests of girls” is also and equally descriptive in the same way of myriads of things within the interest of girls other than magazines. I think that any one who is offering any of such things in the markets ought to be protected by the courts in the right to label them with the descriptive seventeen if he wants to. Seventeen having become long before the magazine’s time a verbal symbol and a description in wide use, should be kept in the public domain and the limit of injunctive protection to these publishers (if they are entitled to any on the proof here) should be to prevent claims direct or indirect that “seventeen” articles of merchandise (i.e., of interest ot girls) had been pictured, advertised or praised in their magazine if in truth they had not.

Nor am I persuaded that there is any secondary meaning to the numeral seventeen used as a description of interests of girls in which there can be a proprietary right. I do not doubt that when used as a label on merchandise for young women it may vaguely suggest some connection with the magazine to some people. Maybe to everyone in the magazine’s employ and some others whose attention has been centered on the magazine. In the same way when the wide and merited fame of the city of Milwaukee is alluded to, it may suggest connection with a certain malt product to some people. Mention of religion may evoke thoughts of Los Angeles in many.

But fame and girls’ interests and religion remain broad, general, infinitely extended human interests. Individuals can identify themselves with such human interests by immersing themselves in and working in relation to them. But to identify such a vastly extensive concept as is involved in “girls’ interests” with an individual is not rational.

It often happens in comparatively narrow fields that names or labels on products in that field come to mean that they are of a certain origin. A particular specific product becomes identified with its origin. But I find no case where a court has ever sanctioned identification of such an infinitude of objects, actions, thoughts, fancies, emotions, and so forth, including infinitely varied fashions in dress, as are included in “girls’ interests” with any person, real or corporate. I am sure that neither religion, democracy, nor “girls’ interests” can rationally be so identified with any individual. The maker of a good plow with his name on it profits when plows in general become more favored and his name gives assurance of a good one. Some of the general increment of the field of plow production may be secured to him.

But I think these publishers put their magazine like a live fish into a boundless ocean, the infinitude of “girls’ interests.” They may rear it to Leviathan size and appetite, but they can acquire no part of the ocean. With the newsprint at their command they can identify themselves, at least in their own minds, with the “girls’ interests” they describe in their title, but I am not persuaded that the boundless entirety of “girls’ interests” or any one of the infinity of component elements except their magazine, can be identified with the publishers, or that they should be accorded any special rights in respect to any element except their magazine. Their talking about girls’ interests can never identify girls’ interests with them, no matter how long or well they talk.