STEVENS, Circuit Judge.
Plaintiff's principal argument is that defendant's president gave false testimony at his deposition and therefore the district court should have ruled against the defendant on the merits even if plaintiff's claims were otherwise defective.
In 1966 plaintiff began to market a product which it describes as "a deodorant spray for feminine hygiene." As the text of its label explains, the spray "is made especially for the external vaginal area." Plaintiff's product was the first of this character to be marketed on a nationwide basis. It selected the initials "FDS" ("feminine deodorant spray") as the name of the product and created an original label. The label was copyrighted and the trademark "FDS" was registered. The product is widely advertised; its sales have steadily and impressively increased.
In 1967 defendant also decided to market a deodorant spray for feminine hygiene. Defendant's president decided to call it "Personal Spray." He employed an artist to design a container "to convey the same image and thought as the FDS can." The artist was given an FDS can so he would have a better idea of how to go about designing the Personal Spray can. He did design such a can, defendant marketed its product and, in due course, this litigation ensued.
A side-by-side comparison of the FDS can and the Personal Spray can reveals substantial differences between the two; they are comparable, however, in that the artwork on both clearly indicates— even without reading the fine print— that the product is intended to be used privately by women rather than by men. The fine print on both labels conveys the same basic image with minor variations.
Plaintiff does not question defendant's right to market a product of this kind or to use a label which will— without requiring the prospective purchaser to scrutinize the fine print—convey a message indicating generally what the product is supposed to accomplish. Plaintiff has no right to a monopoly of labels which convey the same general image and thought as the FDS can.
The district court's findings carefully and thoroughly analyzed the similarities and differences between the two containers. Eliminating the court's detailed discussion, we quote from those findings:
The court concluded that the commercial aspects of plaintiff's label were copyrightable but that the part of the language containing directions for use was purely descriptive and therefore not copyrightable. On the subject of infringement, the court stated:
The court enjoined defendant from using the infringing phrase and awarded damages of $500 pursuant to 17 U.S.C. § 101(b).
Apart from plaintiff's argument that the false deposition testimony of defendant's president required a different result, it is quite clear that the record adequately supports the district court findings and conclusions relating to infringement.
Plaintiff seems to argue that defendant's intent to convey the same general image and thought is sufficient proof of copying, and that the district court erred in engrafting the additional requirements of "access" and "substantial similarity" onto a simple test of whether there was copying. Of course, the "access" requirement is of no particular import in this case, since there is no question that defendant had access to plaintiff's product. And we think a mere attempt to copy plaintiff's conception did not constitute "copying" if the attempt was so unsuccessful that there was either no substantial similarity or merely duplication of concepts in the public domain. Since plaintiff's basic idea for a specialized product was in the public domain, the fact that defendant's label expressed that idea did not constitute infringement.
As far as the trademark infringement and unfair competition is concerned, we agree with plaintiff that the absence of proof of actual confusion is not necessarily fatal to its case; that the side-by-side comparison would not necessarily be controlling if there were
Plaintiff also argues that, in any event, the evidence established a likelihood of "dilution of the distinctive quality of the mark" within the meaning of the Illinois Trademark Statute, Ill. Rev.Stat., Ch. 140, § 22. That statute affords protection against use of a trade name by a non-competitor as well as by competitors. Polaroid Corp. v. Polaraid, Inc., 319 F.2d 830, 836-837 (7th Cir. 1963); Spangler Candy Co. v. Crystal Pure Candy Co., 235 F.Supp. 18, 23 (N. D.Ill.1954), affirmed, 353 F.2d 641 (7th Cir. 1966). Since plaintiff and defendant are competitors, there would be no need to rely on the dilution statute if there were a substantial similarity between the two labels or a "likelihood" of confusion. Conversely, without such similarity or likelihood, there is no greater right to relief under that provision than on traditional infringement grounds. Plaintiff's "dilution" argument is without merit.
In a pretrial deposition Bernard Malits, defendant's president, was asked about his meeting with the artist who designed the Personal Spray container. His version of that meeting differed in three material respects from the account of the meeting given in uncontradicted testimony by two witnesses at the trial. According to their testimony, (1) four people were at the meeting, (2) Malits gave an FDS can to the artist, and (3) requested him to prepare a label that would "convey the same image as" the FDS can.
Malits did not testify at the trial and defendant made no attempt to use his deposition affirmatively. Accordingly, the testimony of the other participants in the meeting was uncontradicted and the district court no doubt accepted it as true, as have we in our analysis of the issues. Plaintiff argues, however, that the district court should have made a finding that Malits gave false testimony; that such a finding would be the equivalent of an admission of guilt, and would raise a presumption that defendant intended to trade on plaintiff's goodwill, and therefore is guilty of infringement and unfair competition.
We think plaintiff misconceives the legal effect of such false testimony. Certainly, it justifies a total discrediting
Plaintiff contends that all four paragraphs of the descriptive language on the back of its label were copyrightable.
The district court correctly stated the applicable law, quoting from Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F.2d 541, 544 (2d Cir. 1959):
The district court continued:
We have agreed with the district court that although the label as a whole—as a pictorial composition—is copyrightable, there is no infringement.
In our judgment, however, the legal tests correctly enunciated by the court below lead to a conclusion that the phrase "most personal sort of deodorant" is not subject to copyright protection.
First, to the extent that the phrase was connected with the artwork by different typography than the rest of the text, it is not protected because, as the quotation from Sara Lee indicates, mere distinctiveness in typographic ornamentation will not ordinarily qualify otherwise noncopyrightable material for copyright protection.
Second, this portion of the text is merely a "short phrase or expression" which hardly qualifies as an "appreciable amount of original text."
Third, and perhaps most important, this phrase is just as descriptive as the rest of the text. The ingenuity and creativity reflected in the development of the product itself does not give appropriate descriptive language, such as "personal sort of deodorant," any separate value as a composition or as an extension of a work of art. We conclude that this ordinary phrase is not subject to copyright protection.
In its counterclaim, defendant alleges that plaintiff's action was brought in bad faith simply to impose the cost and burden of litigation on defendant and thereby to exclude it from the market for feminine hygiene deodorants. There is clearly sufficient merit to plaintiff's case to defeat a cause of action for abuse of process. See Barrett v. Baylor, 457 F.2d 119 (7th Cir. 1972). And as far as the Sherman Act contention is concerned, as the district court noted, defendant's counterclaim fails to allege any specific injury to its business or property by reason of plaintiff's conduct. Moreover, plaintiff's good faith effort to enforce its copyright and trademark is not the kind of exclusionary conduct condemned by § 2 of the Sherman Act. The counterclaim was properly dismissed.
The judgment of the district court finding infringement of a valid copyright with respect to the phrase "most personal sort of deodorant" is reversed; in all other respects the judgment is affirmed.
Plaintiff's Text. Defendant's Text. FDS is the most personal sort of Personal Spray, the deodorant of the deodorant. most personal kind. This spray is used This unique spray is made expressly exclusively for the external vaginal for the external vaginal area. region. FDS protection is dry, refreshing and Personal Spray should be used regularly gentle to delicate tissues. to eliminate any and all odors. Use FDS regularly to remove any fear Personal Spray is refreshingly fresh all of odor. day long.