author: Froessel, J.

text:
    In the Matter of David Ayman et al., Individually and in Behalf of All Others Similarly Situated, Respondents, v. Teachers’ Retirement Board of the City of New York, Appellant. In the Matter of Ellis Johnson et al., on Behalf of Themselves and All Others Similarly Situated, Respondents, v. New York City Teachers’ Retirement Board, Appellant.
    Argued November 29, 1960;
    decided January 19, 1961.

      Charles H. Tenney, Corporation Counsel (Pauline K. Berger and Leo A. Larkin of counsel), for appellant in both proceedings.
    I. The 1934 and 1943 revisions of mortality tables in their application to then existing members retiring in the future are valid under the New York City Teachers’ Retirement Statute and the New York Constitution (art. V, § 7). (Matter of Carroll v. Grumet, 281 App. Div. 35, 305 N. Y. 692; Cashman v. Teachers’ Retirement Bd., 193 Misc. 57, 275 App. Div. 908, 301 N. Y. 501; Hoar v. City of Yonkers, 295 N. Y. 274; Employers’ Liab. Assur. Corp. v. Hayes Constr. Co., 243 N. Y. 261; Employers Liab. Assur. Co. v. Success Uncle Sam Cone Co., 124 Misc. 614; Matter of Smith, 279 N. Y. 479; Matter of Otis v. Board of Higher Educ. of City of N. Y., 199 Misc. 157, 277 App. Div. 1035, 302 N. Y. 740; Matter of Hammond v. Joseph, 271 App. Div. 677, 297 N. Y. 574; Martorano v. Capital Finance Corp., 289 N. Y. 21.) II. The Constitution (art. V, § 7) did not change the terms of the retirement statute or repeal the statutory reservation to the Retirement Board of the right to revise annuity benefit mortality tables as to existing members not yet retired, and did not grant to members of the system any right at the time of retirement to mortality tables, other than the last revised tables in use at such time. (Roddy v. Valentine, 268 N. Y. 228; Matter of Montesani v. Levitt, 9 A D 2d 51; Matter of Dalton v. City of Yonkers, 262 App. Div. 321, 287 N. Y. 592; Rosen v. New York City Teachers’ Retirement Bd., 282 App. Div. 216, 306 N. Y. 625; Matter of Carroll v. Grumet, 281 App. Div. 35, 305 N. Y. 692; Hoar v. City of Yonkers, 295 N. Y. 274; Gorman v. City of New York, 280 App. Div. 39, 304 N. Y. 865, 345 U. S. 962; Matter of Chiurazzo v. Valentine, 181 Misc. 830; Matter of Wolf v. Valentine, 178 Misc. 308; Dunn v. City of New York, 7 N Y 2d 232.) III. The Constitution (art. V, § 7) did not convert “ variable ” factors of the benefit formula into “ fixed ” factors. (Hoar v. City of Yonkers, 295 N. Y. 274; Gorman v. City of New York, 280 App. Div. 39, 304 N. Y. 865, 345 U. S. 962.) IV. The Constitution (art. V, § 7) protected the benefit formula “ stated ” in the statute from diminution by the legislative body but did not prevent the Retirement Board from carrying out its obligation under the existing statute. (Cashman v. Teachers’ Retirement Bd., 193 Misc. 57, 275 App. Div. 908, 301 N. Y. 501; Birnbaum v. New York State Teachers Retirement System, 5 N Y 2d 1; Matter of Day v. Mruk, 307 N. Y. 349; Davison v. Parke, Austin & Lipscomb, 285 N. Y. 500; McNulty v. W. & J. Sloane, 184 Misc. 835.) V. The Constitution (art. V, § 7) did not invalidate the 1934 resolution. (Matter of Day v. Mruk, 307 N. Y. 349.) VI. The Birnbaum decision (5 N Y 2d 1) is inapplicable to the present case. (Wood v. Brady, 150 U. S. 18; Matter of Smathers, 309 N. Y. 487; Crane v. Bennett, 177 N. Y. 106; Colonial City Traction Co. v. Kingston City R. R. Co., 154 N. Y. 493.) VII. The principle established by the Birnbaum decision should be re-examined and overruled. (Sears, Roebuck & Co. v. 9 Ave.-31 St. Corp., 274 N. Y. 388; Matter of Cameron v. Ellis Constr. Co., 252 N. Y. 394; Woods v. Lancet, 303 N. Y. 349; Klein v. Maravelas, 219 N. Y. 383; Thomson v. Board of Educ., 201 N. Y. 457; People ex rel. Schau v. McWilliams, 185 N. Y. 92; Rumsey v. New York & N. E. R. R. Co., 133 N. Y. 79; Dunn v. City of New York, 7 N Y 2d 232.) VIII. Petitioners are estopped by their conduct and barred by laches from asserting the alleged invalidity of the 1934 and 1943 revisions of mortality tables. (Matter of Curtin v. Dorman, 293 N. Y. 505; Harman v. Board of Educ. of City of N. Y., 300 N. Y. 21; Matter of Amsterdam City Hosp. v. Hoffman, 278 App. Div. 292; Matter of Villovic v. Valentine, 250 App. Div. 701, 274 N. Y. 548; People ex rel. Steinson v. Board of Educ., 158 N. Y. 125; Matter of Williams v. Pyrke, 233 App. Div. 345; Matter of Hartmann v. Tremaine, 250 App. Div. 188; Matter of Piani v. Davidson, 240 App. Div. 383; People ex rel. Millard v. Chapin, 104 N. Y. 96.)

      Benjamin M. Zelman for respondents in the first above-entitled proceeding.
    I. The pertinent sections of the Administrative Code relating to the Teachers Retirement System preclude the board from computing annuities based on less favorable mortality tables adopted after teachers enter the system. Such tables may only be applied to persons who enter the system thereafter. II. The constitutional amendment prohibits the reduction of a teacher’s annuity through the adoption of a less favorable mortality table. (Roddy v. Valentine, 268 N. Y. 228; Matter of Day v. Mruk, 307 N. Y. 349; Employers’ Liab. Assur. Corp. v. Hayes Constr. Co., 243 N. Y. 261; Employers Liab. Assur. Co. v. Success Uncle Sam Cone Co., 124 Misc. 614.) III. The court should adhere to the principle established in the Birnbaum case (5 N Y 2d 1.) (Matter of Montesani v. Levitt, 9 A D 2d 51; Dunn v. City of New York, 7 N Y 2d 232.) IV. The defenses are insufficient in law. (Zuckerbrod v. Board of Higher Educ. of City of N. Y., 276 App. Div. 752, 300 N. Y. 765; Matter of Benvenga v. La Guardia, 268 App. Div. 566, 294 N. Y. 830; Matter of Cash v. Bates, 301 N. Y. 258; Matter of Powers v. La Guardia, 292 N. Y. 695; Wakefield v. Board of Educ. of City of N. Y., 274 App. Div. 884, 299 N. Y. 664; Harman v. Board of Educ. of City of N. Y., 275 App. Div. 694, 300 N. Y. 21; Nelson v. Board of Higher Educ. of City of N. Y., 263 App. Div. 144, 288 N. Y. 649.)

      Benjamin Masen and Jules Kolodny for respondents in the second above-entitled proceeding.
    I. The Birnbaum decision (5 N Y 2d 1) is applicable to this proceeding in all respects. (Railroad Companies v. Schutte, 103 U. S. 118; Matter of Fay (Dewey), 291 N. Y. 198; Smith v. Rentz, 131 N. Y. 169; O’Brien v. Union Cent. Life Ins. Co., 207 N. Y. 180; Dunn v. City of New York, 7 A D 2d 711, 7 N Y 2d 232.) II. Petitioners are barred neither by estoppel, nor waiver, nor laches. (Quayle v. City of

      New York, 278 N. Y. 19; Clark v. State of New York, 142 N. Y. 101; Matter of Furgueson v. La Guardia, 257 App. Div. 1048, 281 N. Y. 678; Cox v. Stokes, 156 N. Y. 491; Wilson v. Phelps, 165 Misc. 455; Jenkins v. Hammerschlag, 38 App. Div. 209; Bank of New York v. New Jersey Tit. Guar. & Trust Co., 256 App. Div. 609; Dulberg v. Equitable Life Assur. Soc., 277 N. Y. 17; Matter of Ramsay v. Lantry, 123 App. Div. 71.)

      Louis J. Lefkowits, Attorney-General (Paxton Blair and Milton Kaplan of counsel), amicus curiae.

    I. The decision in Birnbaum v. New York State Teachers Retirement System (5 NY 2d 1) fully supports the order appealed from. (Taylor v. United States Cas. Co., 269 N. Y. 360; Prescott v. Buffalo Fire Appliance Corp., 237 App. Div. 198, 262 N. Y. 475; Matter of Day v. Mruk, 307 N. Y. 349; People ex rel. Joyce v. Brundage, 78 N. Y. 403; Dodge v. Board of Educ., 302 U. S. 74; Indiana ex rel. Anderson v. Brand, 303 U. S. 95; Roddy v. Valentine, 268 N. Y. 228.) II. The Retirement Board’s use of revised mortality tables after July 1, 1940 in computing the annuities of existing members is an impairment of their benefits in contravention of section 7 of article V.

      Victor Levine for New York City Teachers’ Retirement Board, amicus curiae.

    I. The retirement statute should be construed to call for the computation of an annuity by the mortality table in effect when a teacher entered the service. (Matter of Ryan, 291 N. Y. 376; Matter of Lewisohn, 294 N. Y. 596; Matter of Broderick v. City of New York, 295 N. Y. 363.) II. The Constitution prohibits diminution of an annuity by either the Legislature or by any official action. (Trenton v. New Jersey, 262 U. S. 182; City of Utica v. County of Oneida, 187 Misc. 960.) III. The teachers are neither barred by laches nor are they estopped from attacking the propriety by applying revised mortality tables to them.
   Froessel, J.

These are two appeals by the New York City Teachers’ Retirement Board, taken on constitutional grounds, from orders of the Appellate Division, First Department, which unanimously affirmed without opinion orders of Special Term, Supreme Court, New York County, in article 78 proceedings. Petitioners are members of the Teachers Retirement System which is administered by appellant board. They challenge the legality of the board’s method of calculating the annuity portion of the retirement allowance to which they and others similarly situated are or will be entitled. The case of Birnbaum v. New York State Teachers Retirement System (5 N Y 2d 1) is controlling here.

We are in agreement with so much of the holding below as provides that the board may not calculate the retirement annuities due petitioners on the basis of the tables in effect at the time of their retirement. We are not in agreement, however, with so much of the orders appealed from as directs that the board calculate the retirement annuities to which petitioners are, or will be, entitled on the basis of the mortality tables in use at the time they entered the service. Special Term, apparently based on some language in our decision in Birnbaum v. New York State Teachers Retirement System {supra), held— beyond petitioners’ prayer for relief—that the tables in use when petitioners entered the service must be employed.

Changes in mortality tables, subsequent to the time when the Birnbaum petitioners joined the system, but before July 1,1940, were not brought to the attention of this court in that case. Our decision, therefore, did not consider the question of whether, in the event the mortality tables were revised between the date a member entered service and July 1, 1940, the constitutional amendment should be given retroactive effect, and thus nullify as to such a member the changes which had been made. This question must now be considered, since each of the present petitioners commenced service prior to 1931, and the mortality tables were thereafter revised both before and after the effective date of the amendment—once in 1934 and again in 1943.

In Matter of Day v. Mruk (307 N. Y. 349, 354) we noted that, while section 7 of article V was added to the Constitution in 1938, it was specifically provided that it was not to become effective until July 1, 1940. This postponement of 1% years was (307 N. Y., at p. 354) presumably to enable the State and its civil divisions to review their pension systems and to adjust, amend, modify or supplement the provisions of existing systems in the light of the fact that after such effective date such systems were no longer gratuitous, but by virtue of the new amendment became contracts and the members of pension systems thereby acquired vested interests which could not' thereafter be diminished or impaired. Excerpts from the proceedings of the Convention appear to bear out this conclusion.” This view of the situation was quoted with approval in the Birnbaum decision (5 NY 2d 1, 12, supra). If the amendment was intended to have retroactive effect, there would have been no need for the postponement of its effective date (see Matter of Kaufman, 158 Misc. 102, 106). Any changes made during that time could not have affected the rights of existing members, as their rights under such a construction would have been fixed on the day they entered the service.

As was noted in Birnbaum v. New York State Teachers Retirement System (5 N Y 2d 1, 8-9, supra), and Matter of Day v. Mruk (307 N. Y. 349, 354, supra), prior to the effective date of the constitutional amendment members of pension and retirement systems had no vested interest therein until the right to retirement matured. The leading case (Roddy v. Valentine, 268 N. Y. 228, 231) indicated that, whatever the legal nature of the member’s interest was prior to his retirement, there seems to be no doubt that it is subject to change or even to revocation at the will of the Legislature ’ ’. It was this conclusion which the amendment was designed to overcome (Birnbaum v. New York State Teachers Retirement System, 5 N Y 2d 1, 8, supra). Therefore, since a member’s rights could be changed prior to the effective date of the amendment, and a period of time was expressly provided during which any further changes might be made, it seems clear that the amendment was intended to have only prospective, and not retroactive, effect. This view is in accord with the general rule of construction that statutes as well as constitutional provisions are to be construed as prospective only, unless a clear expression of intent to the contrary is found (Matter of Container Co. [Corsi], 298 N. Y. 277, 279; Garzo v. Maid of Mist Steamboat Co., 303 N. Y. 516, 522; People v. Fancher, 50 N. Y. 288, 291). We have examined the other arguments advanced by appellants, many of which were presented in the Birnbaum case (supra), but do not find that they have any merit.

Accordingly, the orders appealed from must be modified so as to provide for the recalculation of petitioners’ retirement annuities on the basis of the actuarial values including tables of mortality in effect immediately prior to July 1,1940, with interest from the date of retirement, and, as so modified, affirmed, without costs.

Chief Judge Desmond and Judges Dye, Fuld, Van Voorhis, Burke and Foster concur.

In each case: Ordered accordingly.


source: Caselaw Access Project

author: Burke, J.

license: Public Domain

text:
    Dell Publishing Company, Inc., Appellant, v. Stanley Publications, Inc., Respondent.
    Argued November 28, 1960;
    decided January 19, 1961.

      Milton Handler, Sidney A. Diamond and Cecelia H. Goetz for appellant.
    I. Plaintiff is entitled to protection of its valuable title “Modern Romances” not only on the basis of a valid trade-mark registration but on the overwhelming and uncontradicted proofs of secondary meaning. (Brown & Bigelow v. Remembrance Adv. Prods., 279 App. Div. 410, 304 N. Y. 909; Oneida Community v. Oneida Game Trap Co., 168 App. Div. 769; Kayser & Co. v. Italian Silk Underwear Co., 160 App. Div. 607; Johnson & Son v. Johnson, 175 F. 2d 176, 338 U. S. 860; Aluminum Fabricating Co. v. Season-All Window Corp., 259 F. 2d 314; Pastificio Spiga Societa Per Azioni v. De Martini Macaroni Co., 200 F. 2d 325; Dell Pub. Co. v. Ultem Pub., 171 Misc. 159; Matter of Playland Corp. v. Playland Center, 1 N Y 2d 300; Sun Valley Mfg. Co. v. Sun Valley Togs, 39 F. Supp. 502.) II. Plaintiff’s valid rights were invaded and it is entitled to relief because defendant’s mark is calculated to cause confusion as to the source of its magazine. (Eastern Constr. Co. v. Eastern Eng. Co., 246 N. Y. 459; Pocket Books v. Meyers, 292 N. Y. 58; Admiral Corp. v. Penco, 203 F. 2d 517; T. A. Vulcan v. Myers, 139 N. Y. 364; Famous Sea Food House v. Skouras, 272 App. Div. 258; Cash v. Steinbook, 220 App. Div. 569, 247 N. Y. 531; Gannert v. Rupert, 127 F. 962; HMH Pub. Co. v. Hale, 156 F. Supp. 594; Hanson v. Triangle Pub., 163 F. 2d 74, 332 U. S. 855; Triangle Pub. v. Rohrlich, 167 F. 2d 969.) III. The Appellate Division failed to apply the proper tests to determine the likelihood of confusion. Side-by-side comparison is improper. (Coca-Cola Co. v. Chero-Cola Co., 273 F. 755; Telechron v. Telicon Corp., 97 F. Supp. 131, 198 F. 2d 903; Old Charter Distillery Co. v. Continental Distilling Corp., 174 F. Supp. 312; Dickinson Co. v. Mellos Peanut Co., 179 F. 2d 265; Lactona v. Lever Bros. Co., 144 F. 2d 891; Hier v. Abrahams, 82 N. Y. 519.) IV. Plaintiff’s use of a “ House Mark ” does not excuse defendant’s infringement. (Hier v. Abrahams, 82 N. Y. 519; General Shoe Corp. v. Rosen, 111 F. 2d 95, 112 F. 2d 561; Denney v. Elizabeth Arden Sales Corp., 263 F. 2d 347.) V. The use of similar titles by others does not excuse defendant’s infringement. (National Lead Co. v. Wolfe, 223 F. 2d 195, 350 U. S. 883.) VI. This is not a case of innocent infringement; defendant deliberately imitated plaintiff’s mark. (Northam Warren Corp. v. Universal Cosmetic Co., 18 F. 2d 774; Searle & Co. v. Pfizer & Co., 265 F. 2d 385, 361 U. S. 819; Philadelphia Stor. Battery Co. v. Mindlin, 163 Misc. 52; Skelly Oil Co. v. Powerine Co., 86 F. 2d 752; Hancock v. American Steel & Wire Co., 203 F. 2d 737.)

      Benjamin E. Winston and Eli D. Schoenfield for respondent.
    I. Plaintiff is not entitled to a monopoly in the use of the word 1 ‘ Modern ” as a magazine title. ‘ ‘ Modern Romances ’ ’ is not a valid trade-mark. (Conde Nast Pub. v. Vogue School of Fashion Modelling, 105 F. Supp. 325; Goodyear Co. v. Goodyear Rubber Co., 128 U. S. 598; Palmer v. Gulf Pub. Co., 79 F. Supp. 731; Collegiate World Pub. Co. v. Du Pont Pub. Co., 14 F. 2d 158, 25 F. 2d 1018; Beacon Mags. v. Popular Pub., 248 App. Div. 204; Warner Pub. v. Popular Pub., 87 F. 2d 913; Hygeia Water Ice Co. v. New York Hygeia Ice Co., 140 N. Y. 94; Eastern Constr. Co. v. Eastern Eng. Co., 246 N. Y. 459.) III. Plaintiff is not entitled to a monopoly in the use of the word “ modern ” in a composite magazine title using the companion word “ confessions,” “ story,” “ love,” “ experience ” or “ secrets.” (Brown & Bigelow v. B B Pen Co., 191 F. 2d 939; Dell Pub. Co. v. Ultem Pub., 171 Misc. 159; Matter of New York State Labor Relations Bd. v. Holland Laundry, 294 N. Y. 480; Town

      Hall v. Franklin, 174 Misc. 17; Cue Pub. Co. v. Kirshenberg, 22 Misc 2d 188.) IV. The Appellate Division correctly found that defendant’s magazine title does not infringe upon or compete unfairly with plaintiff’s title. (Munro v. Tousey, 129 N. Y. 38; Collegiate World Pub. Co. v. Du Pont Pub. Co., 14 F. 2d 158; Warner Pub. v. Popular Pub., 87 F. 2d 913; Fawcett Pub. v. Popular Mechanics Co., 80 F. 2d 194; Social Register Assn. v. Murphy, 128 F. 116; Time, Inc., v. Motor Pub., 131 F. Supp. 846, 227 F. 2d 954; Crowell Pub. Co. v. Italian Monthly Co., 28 F. 2d 613; Pocket Books v. Meyers, 292 N. Y. 58; Q-Tips v. Johnson & Johnson, 206 F. 2d 144, 346 U. S. 867; Neva-Wet Corp. v. Neva-Wet Processing Corp., 277 N. Y. 163; Hebrew Pub. Co. v. Scharfstein, 288 N. Y. 374; National Comics Pub. v. Fawcett Pub., 191 F. 2d 594; Kann v. Diamond Steel Co., 89 F. 706.)
   Burke, J.

Appellant (Dell Publishing Company, Inc.), the publisher of a magazine entitled “ Modern Romances ”, on this appeal seeks to reinstate an injunction which was set aside by the Appellate Division in an action to restrain respondent (Stanley Publications, Inc.) from using the word “ modern ” in respondent’s magazine title qqNFE^SIONS >> (hereinafter designated “ Modern/CoNFESsiONS ”), alleging trade-mark infringement and unfair competition. We find that the denial of the injunction and the dismissal of the complaint was proper.

Appellant has since 1930 published monthly both ‘ Modern Romances ” and “ Modern Screen ”. These two, along with a third magazine, currently “ Screen Stories ”, have been previously offered as a unit to advertisers as the “Modern Magazines ” and later as the Dell Modern Group. The third magazine has never had the word “ modern ” in its title. For the past 15 years the combined circulation of these three magazines has been approximately two and one-half million copies a month. ‘1 Modern Romances ’ ’ alone has exceeded one million copies a month, and its advertising revenue exceeds $800,000 annually.

“Modern Romances” was originally registered as a trade' mark in the United States Patent Office in 1932, and re-registered in 1954 under the Trade-Mark Act (Lanham Act) of 1946 (U. S. Code, tit. 15, § 1051 et seq.).

In addition to the above three magazines appellant publishes approximately 18 distinct magazines, 38 comics and 14 pocket-size books a month, as well as 20 children’s books each year. With only one or two exceptions each of the covers carries 1 ‘ in the upper left-hand corner the distinctive and conspicuously placed dell ’ insignia or symbol, consisting of the letters dell in a contrastingly colored box ”. This symbol was first adopted in 1943 and has since been used continuously in its advertising and letterheads, as well as on its publications, in order to identify them as appellant’s property.

Over a period of 21 years since 1937 Dell spent approximately $2,320,000 to advertise and promote the Dell Modern Group, of which $1,140,000 was expended on £1 Modern Romances ’ ’ alone. In promoting “ Modern Romances ” individually and as a member of the Dell Modern Group, Dell employed radio, television, newspapers, magazines and direct mail advertising. In 1948 a program entitled £ £ Modern Romances ’ ’ was initiated on radio, and later put on television.

Respondent, on the other hand, has since 1952 published various magazines including “Real Secrets ”, “Real War ” and “ Real Men”. Early in 1958 respondent’s executives decided to publish a companion magazine to Real Secrets, and initially selected the title “ Real Confessions ” in order to keep it in the Real Group. However, upon being informed that this title had been previously adopted by another publisher, the title “ Modern/CoNEESSiONS ” was chosen. It is conceded that “ [o]ne or more of the persons at defendant’s editorial conference were aware of plaintiff’s Modern Romances ’ ’. However, it is claimed that11 none saw any possible conflict, since historically the magazine field has had £ close ’ titles; that is competing titles containing one or more identical or nearly identical words in a composite title. For instance, £ Adventures for Men ’ and 1 Real Adventures ’ are published by competing publishers, as are Movie Life ’ and Movie Mirror ’; ' Confidential ’ and £ Confidential Detective ’; £ Man’s Conquest ’ and ' Man’s Smashing Stories ’; and £ Police Dragnet ’ and £ Police Gazette, ’ all of which are distributed by the same national distributor.”

Although additionally conceding that “ Modern/Confessions ” is generally classified in the same field (i.e., romance-confession) as “Modern Romances ”, respondent notes that the U. S. Patent Office records include approximately 61 publications whose registered titles contain the word 6 modern ’ including" Modern Teen ”,££ Modern Bride ”, Modern Miss 5 ‘ ‘ Modern Photography ”, Modern Baby ’5 and £ £ Modem Man ”, none of which are published by the appellant or respondent. Moreover, additional evidence of identical common words in competing magazines in the romance-confession field was thus indicated: “ True Story ”, ££ True Romance ”, ££ True Love ” and ££ True Experience ” published respectively since 1919,1923, 1924 and 1925 by Macfadden Publications, Inc.; £ 6 True Confessions ” published since 1922 by Fawcett Publications; £< True Secrets ” published by Official Magazine O’orp.; ££ Real Romances ” and ££ Real Story ” published by Hillman; £< Real Confessions ’ ’ published by Sterling.

Out of 26 magazine titles in the romance-confession field, 11 use the word “ romance ”, 5 use “ confessions ”, 5 use ££ story ” and 6 use ££ experience ”.

In choosing the word ££ modern” respondent’s officers testified that they wanted a descriptive word which would also distinguish this magazine from the multitude of confession magazines.

The majority of the Justices of the Appellate Division found undisputed £ £ that all so-called £ romanee ’ and confession ’ magazines, which cater primarily to the distaff side, share common characteristics. Most contain in their title a word such as romance ’, confession £ secrets ’ or £ experience. ’ The stories — which purport to be true — are actually fictional, are told in the first person, and deal with lurid accounts of sins, aberrations, mistakes, illicit loves, and marital infidelities. The covers of such magazines almost invariably feature the photographs or portraits of young and pretty girls as well as £ blurb ’ lines headlining the stories inside.” On the other hand, the Appellate Division quite accurately noted that££ Primarily, the logotype of £ Modern Confessions ’ in no way resembles that of 1 Modern Romances. ’ Even a cursory examination of the exhibits shows that the two words of plaintiff’s title are printed on the cover of plaintiff’s magazine in letters of equal size, and on a single line. The words in defendant’s title, however, are in italics, and the emphasis is on the word ' confessions.’ £ Modern ’ is in the lower case type, and is located above the word £ Confessions’—which extends entirely across the cover.

“ Moreover, plaintiff’s magazine has the name dell printed in the upper left-hand corner. Another aspect of difference is the nature of the banner headlines on the respective magazines for the past five months. It is apparent that plaintiff in the form of its cover is seeking to broaden its reader base by appealing not just to the ‘ confession ’ market, but to the general women’s magazine market with such titles as: ‘ Complete in this Issue: Chicken Cook Book ’; There is a Perfect Hairdo For you on page 97 ’; Save $20 on 20 Dinners etc. On the other hand, defendant’s magazine makes no pretense at merchandising anything but so-called ‘ confessions ’; with the upper headlines of its last five issues blazoning such titles as: Invitations to Sex? ’; ‘ Why Shouldn’t He Wait For Me Teen Girl on Sin Street ’; and ‘ Afraid to Trust My Heart. ’

“Hence one need only pick up copies of the plaintiff’s and defendant’s magazines to see that their covers, their contents and even the texture of their paper are significantly different. The similarities are only those inherent in the nature of the product.”

Prior to the trial of this action six issues of respondent’s magazine were published with an average net paid circulation of 130,000 copies per month, and net advertising revenue of $1,000 for each issue. “ Modern/Confessions ” has a sales price of 25 cents as distinguished from the price of 20 cents for “ Modern Romances ”.

The Appellate Division, finding for the respondent, ordered a reversal of findings of fact contained in the decision and opinion of the Supreme Court. In their view the evidence “ does not warrant a finding of a reasonable tendency to cause confusion ”. Defendant’s magazine, they said, is clearly “distinguishable from plaintiff’s, and cannot reasonably be mistaken for it.” They found in addition that although the decision of the Supreme Court rested on a finding of unfair competition, and not on trademark infringement, it is apparent that a likelihood of confusion would be relevant to both claims; that “ [a]s already indicated, the record does not support a conclusion of a reasonable likelihood of confusion and that the word “ modern ”, as used in magazines in the romance-confession field, “ is not a nondescriptive term which had acquired a secondary meaning to be protected by a court of equity.”

The weight of the evidence supports the prevailing opinion of the Appellate Division.

It is fundamental that the substantive law of trade-marks is merely a portion of the broader law of unfair competition (Hemmeter Cigar Co. v. Congress Cigar Co., 118 F. 2d 64); and that it is intended to discourage and restrain one from palming off his goods and/or their origin as the goods of another (Triangle Pub. v. Hanson, 65 F. Supp. 952, affd. 163 F. 2d 74). While we undoubtedly have jurisdiction over actions involving unfair competition, it is equally fundamental that, although Federal law may govern an action for infringement of a Federally registered trade-mark, we share jurisdiction over such actions with the Federal courts (Brown & Bigelow v. Remembrance Adv. Prods., 279 App. Div. 410, affd. 304 N. Y. 909).

However, it has been noted that even a casual examination of the decisions will indicate that, aside from the broad and well-established principles, not only is precedent difficult to ascertain, but in many instances the decisions seem incompatible (Telechron, Inc., v. Telicon Corp., 97 F. Supp. 131, affd. 198 F. 2d 903). Although this type of litigation has been said to present mixed questions of law and fact (Palmer v. Gulf Pub. Co., 79 F. Supp. 731; Fawcett Pub. v. Popular Mechanics Co., 80 F. 2d 194), the emphasis, and rightfully so, we believe, seems to have been placed upon the fact pattern of each situation. (Telechron, Inc., v. Telicon Corp., supra; see, also, Hotel Syracuse v. Motel Syracuse, 309 N. Y. 831; Eastern Constr. Co. v. Eastern Eng. Co., 246 N. Y. 459.) Each case, whether dealing with unfair competition or trade-mark infringement or both, must be decided on its facts, and “ the reported cases are helpful to show the general principles to be applied in reaching a decision ” (Palmer v. Gulf Pub. Co., supra, p. 737).

We proceed, therefore, to these general principles and their application in this particular situation.

The Lanham Act (U. S. Code, tit. 15, §§ 1051-1127) provides that: “A certificate of registration * * * shall be prima facie evidence of the validity of the registration, registrant’s ownership of the mark, and of registrant’s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate” (§ 1057, subd. [b]). However, ‘ the mere registration of a trade-mark does not in itself confer any greater rights than existed at common law without registration. ’ # ** * ‘ registration * * * confers only procedural advantages and does not enlarge the registrant’s substantive rights. ’ ” (Brown & Bigelow v. B B Pen Co., 191 F. 2d 939, 942.) Registration of a descriptive word does not prevent others from using the same word, or from registering a new mark which uses it, if the new mark has additional features (Pure Oil Co. v. The Pep Boys—Manny, Moe & Jack, 128 F. 2d 34). The test, as in unfair competition, is the likelihood of confusion, regardless of evidence of actual confusion. (Famous Sea Food House v. Skouras, 272 App. Div. 258; T. A. Vulcan v. Myers, 139 N. Y. 364, 367; Admiral Corp. v. Penco, Inc., 203 F. 2d 517, 520). Therefore, if the resemblance is calculated to produce confusion as to identity and consequent damage, equity will enjoin the simulation (American Foundries v. Robertson, 269 U. S. 372; Eastern Constr. Co. v. Eastern Eng. Co., 246 N. Y. 459, supra). It is well established, however, that not all similarity will be enjoined. The law does not justify interference on behalf of ignorant or careless persons (Corning Glass Works v. Corning Cut Glass Co., 197 N. Y. 173; Buffalo Typewriter Exch. v. McGarl, 240 N. Y. 113; Wholesale Serv. Supply Corp. v. Wholesale Bldg. Materials Corp., 304 N. Y. 854; Hotel Syracuse v. Motel Syracuse, supra). It must be assumed that the public will use reasonable intelligence and discrimination (Wholesale Serv. Supply Corp. v. Wholesale Bldg. Materials Corp., supra). “A court of equity should proceed in the exercise of its power with a wise and judicial discretion. In cases such as this it should be presumed that the public makes use of the senses of sight and hearing, and that it is possessed of a sufficient amount of intelligence to note the difference the senses convey. The court ought not to interfere with the freedom of conduct of trade and with general business competition. Its power to restrain should be reserved to prevent fraud and imposture from some real resemblance in the name and appearance of the publications.” (Munro v. Tousey, 129 N. Y. 38, 43.)

In our opinion neither the name, sound nor appearance of respondent’s title or magazine is significantly similar so as to cause persons of average intelligence to be confused either as to their origin or identity. As the Appellate Division stated: “ Even a cursory examination ” reveals their distinction. “ The similarities are only those inherent in the nature of the product ”, and their duplication is not a proper subject of restraint. It is not all competition, but only unfair competition, which equity should enjoin (Fawcett Pub. v. Popular Mechanics Co., 80 F. 2d 194, 197, supra). Registration of “Modern Romances ” affords appellant no additional privileges upon this record.

Although the Lanham Act “ put federal trade-mark law upon a new footing ” (Johnson & Son v. Johnson, 175 F. 2d 176, 178, cert. denied 338 U. S. 860), the mere registration of descriptive or suggestive words would not automatically preclude their use by others when the evidence indicates a lack of secondary meaning. Unlike registration under the prior law, which limited validity to names which could meet the requirements of a technical trade-mark (i.e., an arbitrary or fanciful term having no meaning in relation to the goods in question), the Lanham Act now authorizes those common and generic terms which through continuous use have become identified with the origin of the goods. (Brown & Bigelow v. Remembrance Adv. Prods., 279 App. Div. 410, affd. 304 N. Y. 909, supra.) Although subdivision (e) of section 2 of the Lanham Act (U. S. Code, tit. 15, § 1052, subd. [e]) provides that the Patent Office shall refuse registration of a mark which is 11 merely descriptive ’ ’, it further provides that nothing shall prevent the registration of a mark which has “ become distinctive of the applicant’s goods ” (U. S. Code, tit. 15, § 1052, subd. [f]), or as it is commonly phrased — which has acquired a secondary meaning.

Note, however, that while registration is prima facie evidence of validity (U. S. Code, tit. 15, § 1057, subd. [b]), the mark is still open to objection, as descriptive, until the provisions (which concededly have not been complied with) of section 15 (U. S. Code, tit. 15, § 1065; especially subd. [2]) have been met. (Conde Nast Pub. v. Vogue School of Fashion Modelling, 105 F. Supp. 325.) Moreover, even if they had been complied with it would not preclude an objection here since the marks are not identical. The protection of the incontestability clause of the Lanham Act must be with regard to the use by another of both terms, unless one, in and of itself, is naturally identified with the registrant. This would not apply to the word 1 ‘ modern ’ ’ alone. Appellant’s magazine is “ known and called for by its full name ” (Collegiate World Pub. Co. v. Du Pont Pub. Co., 14 F. 2d 158, 160). The word “ modern ” would not in and of itself in view of the numerous publications employing it (see McGraw-Hill Pub. Co. v. American Aviation Assn., 117 F. 2d 293, 296) be distinctive of appellant alone. It certainly is not a coined term, and it is not used in a completely arbitrary manner. While possibly not wholly descriptive, it certainly is at least suggestive of the contents.

Although, as suggestive, it may still be a valid trade-mark, it does not here qualify since it has not become identified, in the minds of the public, with the origin of the goods (Telechron, Inc., v. Telicon Corp., 97 F. Supp. 131, supra). It is not without significance that there are 61 registered publications employing this term in their titles. No one seeking Dell’s “.Modern Romances ” could reasonably be expected to get it by requesting and calling it by the single word “ modern ”. “ [B]oth words of the title are of equal dignity and importance and they always have been used together without distinguishing emphasis.'’’ (Fawcett Pub. v. Popular Mechanics Co., 80 F. 2d 194, 198, supra; publisher of “ Popular Mechanics ” denied injunction to restrain use of word “ mechanics ” in title “ Modern Mechanics ”).

While “confessions” and “ romances ” convey much the same meaning, “ this is necessarily so because both are descriptive of the articles to which they are applied.” (Collegiate World Pub. Co. v. Du Pont Pub. Co., supra, p. 160; title “ College Humor ” and “ College Comics ” not sufficiently similar to warrant relief.) Both their sound and appearance are certainly distinct and their use with the common word “ modern ” does not drastically alter that distinction. Moreover, the manner in which they are employed amplifies the distinction. (See Crowell Pub. Co. v. Italian Monthly Co., 28 F. 2d 613, 614; Time, Inc., v. Motor Pub., 131 F. Supp. 846, 850, mod. 227 F. 2d 954.)

In addition, the reading public of this class of magazine is more concerned with the intrinsic character of the magazines as exemplified by the “blurb” lines on their face (see Gotham Music Serv. v. Denton & Haskins Music Pub. Co., 259 N. Y. 86) than with the publisher (Pocket Books v. Meyers, 292 N. Y. 58, 63). In order to establish a trade-mark it must be shown that “ the primary significance of the term in the minds of the consuming public is not the product but the producer.” (Kellogg Co. v. National Biscuit Co., 305 U. S. 111, 118, 119; italics supplied; Brown & Bigelow v. Remembrance Adv. Prods., 279 App. Div. 410, 413, affd. 304 N. Y. 909, supra.) Here if the public is interested in a Dell romance story, it will certainly have no difficulty in identifying the Dell symbol in the upper left-hand corner of the magazine cover. (See Pocket Books v. Meyers, supra.)

The publishing field, as any other business, is within the ambit of judicial protection (Munro v. Tousey, 129 N. Y. 38, 41, supra). However, it is recognized that ‘ ‘ the names of periodicals present problems not as common where other commercial goods or other intellectual property is concerned.” (2 Mms, Unfair Competition and Trade-Marks [4th ed.], § 279, p. 928.) These names seldom are arbitrary or wholly fanciful and “ [e]ven those that are technical, common law trade-marks often are more or less suggestive.” (2 Nims, Unfair Competition and Trade-Marks [4th ed.], § 279, p. 930.) This problem is compounded, and secondary meaning is difficult to establish, because of the repetitious use of similar titles by competing publishers. For example, in the Collegiate World case (14 F. 2d 158, 160, supra), in denying an injunction against the use of a similar descriptive title (i.e., “ College Humor ” — “ College Comics ”), the court noted that: ‘ ‘ Similarity in names of magazines dealing with the same subject is not unusual, but on the contrary is quite common, such as Popular Science, Popular Mechanics; Outdoor Life, Outdoor Recreation; Field and Stream, Forest and Stream; Boy’s Life, Boy’s Magazine; Ladies Home Journal, People’s Home Journal; Radio Doings, Radio Digest, Radio World, Radio Age, Radio Progress, Radio News, Radio Broadcast; Motor, The Motor, Motor Transport, Motor Record, Motor World, Motor Age, Motor Life; etc.” (See, also, Warner Pub. v. Popular Pub., 87 F. 2d 913, 914 [“ Ranch Romances ”, “ Rangeland Romances ”]; McGraw-Hill Pub. Co. v. American Aviation Assn., 117 F. 2d 293, 296, supra; Palmer v. Gulf Pub. Co., 79 F. Supp. 731, supra.)

Appellant’s final claim that respondent deliberately imitated appellant’s mark is an inference deduced merely from testimony by respondent’s executives that they were aware of the success and reputation of “ Modern Romances ”. Even if the allegation is accurate, it is nonetheless apparent that the final product is not so simulative of appellant’s magazine as to warrant relief by this court.

Accordingly, the judgment should be affirmed, with costs.

Chief Judge Desmond and Judges Dye, Fttld, Froessel, Van Voorhis and Foster concur.

Judgment affirmed.

      . The Federal statute defines trade-mark infringement as the use of "Any * * * colorable imitation of any registered mark in connection with * * * any goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods or services" (U. S. Code, tit. 15, § 1114, subd. [1]; emphasis supplied).

      . “ Between the two extremes represented by the arbitrary or fanciful name, on the one hand which may be a trade-mark, and the word or phrase which is primarily descriptive of the article * * * ‘lies a middle ground wherein terms of mingled qualities are found. It cannot be said that they are primarily descriptive or that they are purely arbitrary or fanciful without any indication of the nature of the goods which they denominate. Such terms, indeed, shed some light upon the characteristics of the goods, but so applied they involve an element of incongruity, and in order to be understood as descriptive, they must be taken in a suggestive or figurative sense through an effort of the imagination on the part of the observer.’ ” (1 Rims, Unfair Competition and Trade-Marks [4th ed.], § 41, p. 168; emphasis supplied.)


author: Fuld, J. Froessel, J. (dissenting).

text:
    The People of the State of New York ex rel. Jacob Goldman, Respondent, v. Wilfred L. Denno, as Warden of Sing Sing Prison, Appellant.
    Argued November 15, 1960;

    decided January 20, 1961.

      Hugh M. Finneran and Anthony F. Marra for appellant.
    Appellant would have been guilty of a felony in New York only if he sold a narcotic. The allegation of a sale in the Federal information was an inoperative and immaterial allegation because it was not a prerequisite for a conviction of the crime charged. Therefore, the People have failed to establish that appellant’s prior conviction would have been felonious if committed in New York. (Torres Martinez v. United States, 220 F. 2d 740; Palmero v. United States, 112 F. 2d 922; Pon Wing Quong v. United States, 111 F. 2d 751; Parmagini v. United States, 42 F. 2d 721; Frank v. United States, 37 F. 2d 77; Walsh v. White, 32 F. 2d 240; People v. Olah, 300 N. Y. 96; People v. Gennaro, 261 App. Div. 533, 287 N. Y. 657; People ex rel. Gold v. Jackson, 5 N Y 2d 243; People v. Love, 305 N. Y. 722; People
      v. Benjamin, 7 A D 2d 410; People ex rel. Knapp v. Jackson, 6 AD 2d 151, 5 NY 2d 707; Matter of Cedar, 240 App. Div. 182, 265 N. Y. 620.)

      Louis J. Lefkowits, Attorney-General (Joseph J. Bose of counsel), for respondent.
    I. The court below erred in ruling, as it did, that the 1938 conviction could not be counted as a valid prior felony conviction because of a suspended sentence, since the record clearly indicates that (1) execution of sentence was not suspended, and (2) the relator went to jail. II. Since this court has ruled that a violation of sections 173 and 174 of title 21 of the United States Code would constitute a felony if committed in New York, the court below was correct in upholding the 1947 Federal conviction. (People v. Olah, 300 N. Y. 96; People v. Gennaro, 261 App. Div. 533, 287 N. Y. 657.)
   Fuld, J.

Convicted in this State in 1953 of attempting to sell narcotics (Penal Law, § 1751), the relator received a sentence of from 15 years to life imprisonment, as a third felony offender, based upon prior Federal drug convictions (Penal Law, § 1941, subd. 2). In this habeas corpus proceeding, brought some years later, he seeks resentence as a first felony offender, claiming that no one of those earlier crimes would have, constituted a felony had it been committed in this State.

To determine whether a crime committed in another jurisdiction would have been a felony if perpetrated here (Penal Law, § 1941), it is necessary to examine the statute on which the foreign conviction was based. If the statute denominates a single act as a crime, as in People v. Olah (300 N. Y. 96), and guilt could be established by proof of an act not a felony in New York, then, the foreign conviction may not be considered a prior felony. If, on the other hand, the statute renders criminal not a single act but several acts, some of which, if committed in New York, would be felonies and some misdemeanors, as was the case in People ex rel. Gold v. Jackson (5 N Y 2d 243) and People ex rel. Knapp v. Jackson (6 A D 2d 151, motion for leave to appeal denied 5 N Y 2d 707), it is necessary to go beyond the statute and examine as well the indictment filed against the defendant in the foreign jurisdiction. If the indictment charges an act or acts which would necessarily be felonies in this State, the resulting conviction will be considered conviction of a felony under section 1941. (See People ex rel. Gold v. Jackson, 5 N Y 2d 243, supra.) But, if the indictment accuses the defendant of acts, some of which would in New York support a felony charge and others only a charge of misdemeanor, the resulting conviction upon such an indictment, whether based on a jury’s verdict or the defendant’s plea of guilt, may not be regarded as one for a felony.

Applying these principles to the case before us, there can be no doubt that the relator’s previous foreign convictions were of crimes which would not have been felonies here.

In New York, it is solely the sale of narcotics — or their possession with intent to sell—that is denominated a felony (Penal Law, § 1751). But not so under the Federal statutes which formed the predicate for the charges against the relator. The applicable provisions of the United States Code (U. S. Code, tit. 21, §§ 173, 174) make it a crime for any one not only to sell but also to receive or conceal or in any manner facilitate the transportation or concealment of narcotic drugs. In 1938, and again in 1947 and 1948, the relator was charged in the very language of the statutes, not only with selling narcotics, but with receiving and concealing them and with facilitating their transportation.

Had the relator been found guilty upon each of these indictments by a jury after trial, there is no doubt that the consequent conviction would not be counted as a felony in New York. And that is equally true of conviction based upon a plea of guilt, for, as we observed in People v. Olah (300 N. Y. 96, 100, supra), such a plea simply avoids the necessity and expense of a trial and a defendant is not to be prejudiced * * * [or] placed in a different or worse position, by entering a guilty plea.”

There is no question or dispute as to these general propositions. The court is in entire agreement that neither the conviction in 1938, entered upon a jury verdict, nor the 1948 conviction, following a plea of guilt, may be treated as a prior felony conviction. The only real issue in the case, and it is this which divides the court, concerns the 1947 conviction and it arises out of the manner in which the clerk of the court 1 ‘ took ’ ’ the relator’s plea in that instance!

The information filed against the relator in 1947, consisting of but a single count, alleged, as already noted, that the relator “ did * * * receive, conceal, sell and facilitate the transportation, concealment and sale of a certain narcotic drug”. Calling the case, the court clerk proceeded to take the plea. After stating that the information £ £ charges you with an unlawful sale ” — a statement which, if taken literally, was a manifestly incorrect description of the information’s contents — the clerk inquired, ££ Do you plead guilty or not guilty? ”, and the relator answered 1 £ Guilty ’ ’. It is on the strength of the fact that in this colloquy the relator pleaded guilty only to £ ‘ selling ’ ’ that the courts below held that he must be stamped a prior felony offender.

This is basically wrong. When a defendant pleads guilty, he pleads to an indictment (or information) or to a count thereof, not to a part of the one or the other and, certainly, not to that portion which the clerk, for some reason or other, happens to mention in describing the indictment. In this case, it is abundantly clear that nothing turned on whether the relator concealed or transported or sold narcotics; the punishment to which he was subject was precisely the same whether he was guilty of all these activities or any one of them. The clerk’s recital that the information ££ charges ” an<£ unlawful sale ” was, therefore, legally irrelevant, either plainly erroneous or else simply a shorthand method of describing the detailed allegations of the information. Accordingly, the relator’s plea must be viewed as a plea not to the act of selling alone, but to the charge of concealing, selling and facilitating the transportation of narcotics. In other words, the ££ crime” of which the relator was convicted was that specified in the statute and described in the information, and not that described by the clerk in taking the plea or in later recording it. Any other result represents a sharp departure from normal and accepted principles of criminal pleading.

Since, then, the relator had been charged in the several Federal indictments with the receipt, possession and concealment of narcotics and with facilitating their transportation and concealment, as well as with their sale, and since he could have been convicted upon each of those indictments, even though he had not been guilty of selling (see Bruno v. United States, 164 F. 2d 693, cert. denied 333 U. S. 832; Velasquez v. United States, 244 F. 2d 416, 420; Torres Martinez v. United States, 220 F. 2d 740, 743; see, also, Gore v. United States, 357 U. S. 386, affg. 244 F. 2d 763), no one of his convictions may serve as a basis for section 1941 treatment. Although the relator has a most unenviable record, the rules stated above, like all other rules, have been laid down for application in cases involving the worst, as well as the best, of men.

The order of the Appellate Division should be reversed and the relator remanded to the County Court of Kings County for resentence as a first felony offender.

Froessel, J. (dissenting).

We agree with the Appellate Division in all respects, and disagree with our associates only as to the 1947 conviction.

It is true that the information filed against defendant in 1947 charged that he ‘ ‘ did ® * * receive, conceal, sell and facilitate the transportation, concealment and sale of a certain narcotic drug ”, in violation of sections 173 and 174 of title 21 of the United States Code. However, although pleaded together in a one-count information, each act pleaded is a separate and distinct crime (Walsh v. White, 32 F. 2d 240; see, also, Albrecht v. United States, 273 U. S. 1, 11).

This case is not controlled by People v. Olah (300 N. Y. 96), The information charges an act—“ selling ”—which is a felony in this State (Penal Law, § 1751). To this act alone defendant pleaded. Hence the resulting conviction must be deemed a felony in New York. Of course, if he had been found guilty after trial of the crimes alleged in the information, or had pleaded guilty to the information, his ensuing conviction would not be counted as a felony in New York. But if he had been convicted after trial of “ selling” only, or if—as here—he pleaded guilty to selling ” only, then the ensuing conviction must be counted as a felony in New York.

In the minutes of sentence annexed to the habeas corpus return is a copy of the information filed by the District Attorney of Kings County following defendant’s conviction there prior to the institution of this habeas corpus proceeding. That information sets forth a number of prior convictions, of which the 1947 conviction was one. As to the 1947 conviction, it is asserted that defendant ‘ ‘ was duly * * * convicted upon his own confession and plea of guilty to the crime of selliw heboijst Defendant acknowledged this conviction, as well as the others. The correctness of this assertion is verified by the judgment and commitment of the United States District Court for the Southern District of New York, which provides:

On the 2d day of April, 1947, came the Attorney for the Government, and the defendant appeared in person and by counsel.

It is adjudged that the defendant has been convicted upon his plea of guilty of the offense of sale of heroin.

“ T. 21 Sec 173-174 U. S. C.”

There is nothing in the record before us to indicate why he thus pleaded. The majority suggest that, when defendant pleaded guilty to the sale of heroin only, it was the result of the clerk’s shorthand method of taking the plea. This is pure speculation. It may just as well be that, after defendant had conferred with counsel assigned by the court, it was agreed with the United States Attorney that he plead to “ selling ” because that accorded with the facts in the case. But we have no right to conjecture either way, and are bound by the record of the United States District Court.

If there is any error in that record, defendant’s remedy for its correction lies with that court (see United States v. Morgan, 346 U. S. 502, 512-513).

Accordingly, the order appealed from should be affirmed.

Chief Judge Desmond and Judges Van Voorhis and Foster concur with Judge Fuld ; Judge Froessel dissents in an opinion in which Judges Dye and Burke concur.

Order reversed and matter remitted to Special Term for further proceedings in accordance with the opinion herein.