Dictionaries and Proprietary Names: The Air-Shuttle Case

DICTIONARIES AND PROPRIETARY NAMES: THE AIR-SHUTTLE CASE Dictionaries and the lexicographers who make them are sometimes called upon to help settle legal disputes involving the ownership of proprietary names of various kinds—service marks, trade marks, and other names that governments allow people to register and own. Jennifer Robinson, in "The Dictionary as Witness" (Dictionaries 4 [1982]: 110-17), has surveyed some of the issues involved and cites decisions in American courts where dictionaries have been introduced as evidence. Now as in the past, linguists and lexicographers who have testified in court know how difficult it often is to make their views intelligible to judges and juries, particularly when the question-and-answer format of the proceeding does not allow them an easy opportunity to expatiate on their views. In 1966, after first being refused by the United States Patent Office, Eastern Air Lines was permitted to register the name and designation Air-Shuttle to describe its passenger service between Boston and New York and between New York and Washington. According to testimony introduced to the case, the company spent more than five million dollars advertising and promoting the service. Yet in December 1980, a competing line, New York Air, introduced a "shuttle" service in the same market and promoted it with the use of the term shuttle. New York Air refused to abandon the use of that term, and Eastern sued on the grounds that New York Air had infringed their proprietary right to the registered service mark Air-Shuttle. After hearing testimony from two distinguished and experienced lexicographers, Allen Walker Read and the late Jess Stein, Judge Milton Pollack ruled that the term shuttle is generic: 53 54Dictionaries and Proprietary Names The above analysis also supports this Court's conclusion that the term "air-shuttle" is generic. This term is merely the compound form of two generic words, associated to give effect to their generic meaning. Thus, air-shuttle is generic just as air travel is generic. This conclusion is particularly certain in the use of the word "shuttle" in combination with "air" as "shuttle" has historically been used in compound form with a word to describe the mode of transportation involved, as in shuttle bus, shuttle train, or space shuttle. . . . The words that New York Air has been using in its advertising and Eastern's service mark are generic. (The complete decision in the case, from which this quotation has been extracted, can be found in 599 Federal Supplement [1983]: 1270-82.) Though he ruled that New York Air could continue to use shuttle to describe its competing service, the Judge found that its advertising was misleading because it suggested that New York Air's service incorporated all features that Eastern had provided for more than twenty years, though it did not in fact do so. Further such misleading advertising, he wrote, would be enjoined. The pages that follow reprint the summaries prepared by the two sides in the case in anticipation of the testimony of Read and Stein. Stein argued on behalf of New York Air that shuttle was generic; Read claimed that Eastern's long history of its Air-Shuttle service had created a specialized meaning for shuttle to which it could claim a proprietary right. Neither Stein nor Read would necessarily agree that these summaries present every nuance of their opinions. They are reprinted here, in part, to illustrate the way in which our legal system often sees linguistic issues—through a glass darkly. Dictionaries and Proprietary Names55 SUMMARY OF TESTIMONY OF JESS STEIN Mr. Stein's background and qualifications are as set forth in the annexed Exhibit A. In the preparation for his testimony, Mr. Stein examined a reliable cross-section of dictionaries, thesauruses, and encyclopedias. These sources—varied in size, intended users, price, recency, and place of origin—provide a good consensus of what "shuttle" and "air shuttle" mean and how they are used. The books relied upon by Mr. Stein are listed in Exhibit B. Mr. Stein also considered other books, textual references in part from actual sources, in part from citation cards at Random House and CL. Barnhart, exhibits in this case, focus group tapes of Mathieu, Gerfen and...