92 F. 605 | U.S. Circuit Court for the District of Western Missouri | 1899
This case lias been submitted on application for a temporary injunction. The bill was drawn with a double aspect: First, to restrain the defendants from using the name “Castoria” in their business of manufacturing and putting on the market the medicine or drug known by such name, on the ground that the complainant has acquired a trade-mark right to said iitime; and, second, that by reason of their imitation of the wrapper, label, and other indicia of complainant’s manner of preparing the bottles containing the medicine for market, the defendants are engaged in unfair competition with the complainant’s business.
It has been expressly ruled by"(he court of appeals of this circuit (opinion by Mr. Justice Brewer), in the case of This Complainant v. Heinsfurter, 28 C. C. A. 581, 84 Fed. 955, that, the patent under
. “It is self-evident that on the expiration of a patent the monopoly created by it ceases to exist, and the right to make the same, formerly covered hy the patent, becomes public property. It is upon this condition that the patent is granted. It follows, as a matter of course, that on the termination of the patent there passes to the public the right to make the machine in the form in which it was constructed during the patent. * * * It equally follows, from the cessation of the monopoly and the falling of the patented device into the domain of things public, that along with the public ownership of the device there must also necessarily pass to the public the generic designation of the thing which has arisen during the monopoly, in consequence of the designation having been acquiesced in by the owner, either tacitly, by accepting- the benefits of the monopoly, or expressly, by having so connected the name with the machine as to lend countenance to the resulting dedication. To say otherwise would be to hold that, although the public had acquired the device covered by the patent, yet the owner of the patent, or the manufacturer of the patented thing, had retained the designated name, which was essentially necessary to vest the public with the full enjoyment of that which had become theirs by the disappearance of the monopoly. In other words, that the pat-entee or manufacturer could take the benefit and advantage of the patent, upon the condition that at its termination the monopoly should cease, and yet, when the end was reached, disregard the public dedication, and practically perpetuate indefinitely an exclusive right. The public having the right, on the expiration of the patent to make the patented article, and to use its generic name to restrict this use, either by preventing its being placed upon the articles when manufactured, or by using it in advertisements or circulars, would be to admit the right, and at the same time destroy it. It follows, then, that the right to use the name in every form passes to the public with the dedication resulting from the expiration of the patent.”
With the evident purpose to avoid, if possible, the effect of this ruling, the bill of complaint ingeniously asserts that Dr. Pitcher, the patentee, and the complainant holding under him through assignments, did not strictly follow the formula of the prescription in the patent, as to one ingredient, and therefore the complainant has acquired, by'long usage, a trade-mark in the word “Oastoria,” and that all other persons ought to be denied its use under any and all circum-. stances and conditions. This is a remarkable position for this complainant now to assume in a court of equity. During the life of the patent, it and its predecessors in right have enjoyed the protection of the patent, warning off all intruders, up to the adjudication against the complainant in the Heinsfurter Case, decided in January, 1898. In that case the complainant alleged that its right to such exclusive use was covered by the Pitcher patent, “numbered 77,758, granted to him for a composition to be employed as a cathartic, or substitution for castor oil,” etc. When the patent was obtained the same formula was upon the-article as now. And, before the trade-mark act was declared unconstitutional, the predecessor of the complainant, in the right by assignment to said patented article, in 1883, made applica- • tion to have the trade-mark of the word “Castoria” registered; and
“When the owner of a trade-mark apifiies for an injunction, to restrain the defendant from injuring his properly by making false representations to the public, it is essential that the plaintiff should, in his trade-mark, or in the business connected with it, be himself not guilty of any false or misleading representations; for, if the plaintiff makes any material false statements in connection with the property he seeks to protect, he loses — and that justly — his right to claim the assistance of a court of equity. * * * Where a symbol or label claimed as a trade-mark is so constructed or worded as to make or contain a distinct assertion which is false, I think no property can be claimed in it or, in other words, the right to the exclusive use of it cannot be maintained.”
Judge Taft, in Krauss v. Jos. R. Peebles’ Sons Co., 58 Fed. 585, applied the same doctrine.
On the hearing of this application for a temporary injunction, it was stated by counsel for complainant that he did not expect or ask the court, as a basis for granting a temporary injunction, to determine whether or not, by reason of the matters alleged in the bill, the complainant was entitled, notwithstanding the ruling in the Ifeinsfurter Case, to assert the existence of the trade-mark right in the name “Castoria”; and therefore the court only presents this matter as it bears upon and affects the other ground of relief stated in the bill. If, as stated in the bill of complaint, and the affidavit of Mr. Fletcher presented in support (hereof on this hearing, the complainant and its predecessors did depart in some material particular-in the composition of Castoria from the original formula or prescription in the specifications of the patent, it does not appear that it ever took any pains to advise the public of such fact; and having during the life of the patent enjoyed its protection, and asserted in its litigation with Heinsfurter up to January, 1898, that it was claiming under the patent, its conduct in changing front, and now asserting a right to be protected for an acquired trade-mark in the name “■Castoria,” for the reason that it has not strictly followed the specifications of the patent, does not commend itself to a court of equity.
It is true that prior to ike institution of this suit the defendants used a wrapper, and at the time of the filing of the bill they were using a second wrapper, more objectionable than the one now in use. Rut as the defendants have satisfied the court that the first two wrappers have been abandoned by them, and will not be reused; an injunction on that ground should not be granted. The question therefore is, does the last one adopted come within the lines of forbidden imitation? It is quite obvious, even to an unscrutinizing eye, that there are radical differences on the face of these competing wrappers. The following is a fair summary of the more distinctive points of difference in the two wrappers: At the top of complainant’s wrap-, per are the words “900 Drops,” with white letters and black background, while at the top of defendants’ wrapper are the words “Pitcher’s Castoria,” — the word “Pitcher’s” in black letters on a white background. The word “Castoria” on complainant’s wrapper is in a crescent shape, with black letters and dark-colored penciled background; the letters varying in size on the complainant’s wrapper from three-eighths to one-half inch. The word “Castoria” on the de
The bill does not allege, nor does it appear from the affidavits filed in support, that any purchaser of defendants’ Castoria has ever been deceived into the belief that he was purchasing that of the complainant, or that the defendants have ever represented to any person that their goods were those of the complainant, or that they were laying any other claim to their product than that they were putting upon the market the original Pitcher’s Castoria. Xo objection can be made to the latter representation made by the defendants by any one not entitled to the exclusive use of that formula, which the complainant does not have. In other words, unless the defendants, in some form
Complaint is made in argument, based upon an affidavit, that the defendants, in one of their circulars inclosed within their wrappers, gave what purports to be an extract from Hall’s Journal of Health commendatory of Castoria, which it claims was not furnished to the defendants, but to the complainant and its predecessors, with the exception that the defendants have interpolated in their circular the words “watermelon seed,” as a part of the composition, so as to make it conform to the formula given on their label. It would be a sufficient answer to this criticism to say that no issue is presented respecting this in the matters complained of in the bill. Aside from this, however, it is expressly stated on the face of this circular that: “To guard against imitations, see that our fac simile signature by the Castoria Medicine Company is on every wrapper. Castoria Medicine Company.” And on the back of this circular appears what are claimed to be commendatory letters from patrons, addressed to the Castoria Medicine Company, Kansas City, Mo. So there is nothing about it to indicate that the goods offered by the defendant company were represented to be of the make of the Centaur Company. Unless the courts, in view of a recognized habit of most of the concerns engaged in exploiting like drugs to present “fake” testimonials, ought to apply the maxim, “Consensus facit legem, communis error facit jus,” we might justly reprehend the act of the defendants for circulating fictitious testimonials; yet the courts have not undertaken to enjoin the practice at the instance of some competing tradesman, except when and where it is made to appear that what the defendant is doing is such an imitation of the complainant’s earmarks as is reasonably calculated to impose upon purchasers, in mistaking the goods of the one for those of the other. To avoid even the appearance of offense in this particular, defendants’ counsel
Objection is made in argument, though not asserted in the bill of complaint, to the fact'that defendants have printed on the face of their wrapper the words: “Children cry for it; physicians recommend it,” etc. These words do not appear on complainant’s wrapper-, or elsewhere about its bottles; but its contention is that this phrase has become catchwords appropriated by it in advertising. It is not claimed that complainant has acquired any trade-mark in these words, or that they are descriptive of its manufacture. Therefore the only possible ground upon which the interference of the court can be invoked against the use of the expression by the defendants on their wrapper must be that it is calculated to impress purchasers of defendants’ Oastoria with the belief that tliev are buying- that of complainant's manufacture. The ca.se of Reddaway v. Hemp-Spinning Co. [18921 2 Q. B. 639, cited by counsel, does not support the contention ihai such words, employed in the manner stated here, should be regarded as descriptive of complainant's manufacture. In (hat ease the plaintiff sold belting for machinery, .which they called “lleddaway Camel-Hair Belting.” The defendant later sold the “Benfham Camel-Hair Belting.” It wa,s held by the court that ihe catchwords are “Camel-Hair Belting,” and therefore the plaintiff was entitled to have their use restrained, because of the liability to pass off defendant’s goods as those of the plaintiff. If the complainant here has any such catchword it is rather that of “Fletcher’s Oastoria.” The statement that “children cry for it, and physicians recommend it,” is rather the expression of a fact in commendation of the virtue of Oastoria as a medicine for children, than descriptive or indicative of that manufactured by the complainant. If children do cry for, or physicians do recommend, defendants’ (historia, there is no law known to this court that would prevent them from advertising the fact to enhance sales, and no law that gives to the complainant the exclusive use of such term of expression.
The defendants employ upon the face of their wrapper, at the bottom thereof, the words “Hew Label,” which impeach, in my judgment, their good faith. For what purpose are these words thus printed? Ho satisfactory explanation is furnished in the affidavit presented by Mr. Marshall. It cannot be said, even plausibly, that these words refer to the fact that, as defendants had used two other wrappers prior to this, they merely sought to let it be known to purchasers that the Oastoria under the new cover is the same heretofore put upon the market by them under the older covers; for the palpable reason that these words, in the same position, appear on both of the antecedent wrappers. A purchaser who had been in the habit of buying Fletcher’s Oastoria, on seeing these words so conspicuously on the defendants’ wrapper, might be deceived thereby into the conclusion that while this wrapper, in its general appear-