*1 Title U.S.C. 1391(c) of resides”. Sec.
prescribes cor- in which that the district poration incorporated to do or licensed re- doing
business or is business “shall corporation garded as residence of such intervenor, purposes.” for venue complaint plaintiff below, in its averred defendant, here, corpo- petitioner is a ration licensed to do business Illinois business the Northern doing within Illinois, bringing
District of thus defend- corporate ant within the defend- class ants whose virtue Sec. is, residence 1391(c), within District of the Northern It seems me that District Illinois. Court could it did not have done other than pro- without doing violence to the clear visions of the Inasmuch two sections. defendant is a the Northern Dis- resident of Illinois, by express trict of virtue provisions 1391(c), plaintiff of Sec.
right, 1400(b), bring under Sec.
suit in that hold District. To otherwise require interpolate
seems to tome that we phrase at the end Sec. “ex- 1391(c) cept patent infringement cases.” To beyond deny
so is our function. I would petition. BRIDDELL, Inc. ALGLOBE D. CHAS. et al. CORP. TRADING No. Docket Appeals Court of Circuit. Second Argued Dec. 21, 1952. Decided Jan.
FRANK, Judge. the knives our examination of
From exhibits, containers, the other *3 least, doubt is, say considerable marked record, there was whether, on plain- appearance in the of creativeness form (made knives the well-known tiff’s containers, or knife) or of hunting of a containers-. putting knives in such such assume, arguendo, we shall unique unquestionably plaintiff’s design was and the Even on that genius. result of more, assumption, that, without we preliminary plaintiff entitled a was not
injunction. reasons follow: Our we place, regard
In the first that the following settled.1 The fact as well of an novel and design strikingly article is pro beautiful, first fact spent large advertising has sums in ducer popular with which has made the article consumers, producer first no give rights imi subsequently others who advantage tate it (taking the con of article, due sumer-popularity- of producer’s advertising) first sell it corA petitively producer the first —unless patent upon (1) based monopoly secondary design mean (2) so-called ing. pro Absent (1) (2), first complaint legal ducer has because efforts, imitators have enriched been enjoyed what is known “free as a compe For the ride.” common favors law tition; competi is of the essence of Fennelly, Lage, & New Eagan, Nager competitors copy tion and undersell the (Charles Seymour City Nager York J. product originator. competi of Stein, counsel), York City, of New tors lose favored common-law do plaintiff-appellee. position because someone merely chooses Blum, Seligson Asher all Maurice V. protection “free riders.” To have call them Blum, City (Mock New York & New competition, originator such must from City, counsel), defendants-ap- York monopoly. possess some sort pellants. Corp. General Time Instrument CHASE, FRANK, Corp., Before CLARK and Time 165 F.2d United States Judges. page 855 where had al Mfg. Co., Cir., 503; Tool Kilborn & Orescent Co. v. Lucien 147 F.2d 299; Bishop Co., Cir., long, Lander, Inc., A. C. Gil Le Inc. v. 247 F. Shemitz, 98; bert Elec General Time Instru Mfg. Co., Corp. Corp., Auto-Lite v. P. & D. ment v. United tric Co. States Time 853-855; 567; Zangerle Lewis v. Ven Bags, Inc., dome & Peterson Co. v. Venice Furniture Nov Mfg. Feinberg-Henry elty Co., Swanson F.2d 266. 3,000,000 spent acquired meaning” most its docks and a “secondary i.e., $2,000,000 knives, the same about advertising of its containers — meas de- from 1939 said: “This purchasers a likelihood that showed sec ures efforts to establish fendants’ would believe that ondary meaning, does not determine its plaintiff’s. came source as same expenditures foe Large (Of success. course, would sufficeto show advertising compel likelihood; proof conclusion instances actual accomplished.” We also court, has been task required.) confusion As this n said: “The unpatented de of an per Hand, said, it “is Judge Learned comp *4 sign not does in itself constitute unfair any an absolute to relief condition whatever 2 etition.” that plaintiff the in such show that the cases appearance come in fact wares patent is obtain To a valid 3 ex Probably particular that to exceedingly person difficult. mean that some —the plains why plaintiff apply did not even for plaintiff individually not be known- may patent. Had statute the permitted the them, public makes and that the cares who and had design copyright aof procuring them, does merely make for one, plaintiff procured conduct defendants’ * * * appearance and structure. deliberately plaintiff’s design in copying always question critical of fact the outset plaintiff have been actionable. is public whether the degree is movedin any copyright. no such there no And to buy the article because its source and design copy thing such aas common-law what the are which it distin- features right. For That is such understandable. guishes that source. plaintiff Unless the copyright, congres not created under question he step can answer take can no legislation, sional the would be free of con forward; provision degree of stitutional life imitation details limiting the of a 4 copyright, perpetual mo would be a is actionable its absence.” And this is nopoly. true, said, we have if defendant 5 “slavishly” de- “down to the last Accordingly, injunction an could be 6 proper only here tail.” if showed [secondary patent meaning] buying public, 2. “Without of the the minds an arti- protection competition pros- it was not unfair cle of when shown merchandise to a merely copy plaintiffs’ purses pective prompt to customer must afiirm- duplicates them”; Mfg. ation, sell Swanson is the ‘That article want because Feinberg-Henry Mfg. Co., Cir., source,’ nega- 2 Co. v. I knew its and not 500, to, inquiry 147 F.2d 503. tive as ‘Who makes that arti- cle?’ In other words must the article Shemitz, 3. A. C. Gilbert Co. v. proclaim source, its identification with its Cir., 98, 99; 2 Neufeld-Furst & simply inquiry stimulate about Jay-Day Frocks, Co. v. 2 it.” 715, 716; Nat Lewis Carole Purses v. Bags, Shemitz, 2 White 5. In A. C. Gilbert v. Frocks, Inc., 98, designs 99, Leanore F.2d F.2d we said that “the are Alfred Bell & Catalda so similar” would have been Arts, infringement plaintiff’s patent Fine if 104. Holding invalid, been valid. we turned Bishop Tool Crescent Co. v. Kilborn & saying competition, of unfair to the claim Co., Cir., 247 F. copy that defendants have “the to Zangerle & Peterson Co. Venice * * * design slavishly long so Novelty Co., Furniture represent goods [do] (per Judge the court said Min- complainant.” those of sold were ton) secondary meaning, : “To establish clearly itself article must be so identi- 6. See Electric Auto-Lite Co. v. P. & D. supply Mfg. Co., its with source that fied 567: clearly nothing source other calculated to “There is unlawful in public purchase unpatented and lead it to deceive of another dealer goods except detail, of one that of another. down to the last in so far acquire secondary meaning resulting similarity To may as the become a experi- (an nothing the affidavit of one Hussey contains record representative) enced good manufacturer’s affidavits and exhibits. We are plaintiff’s tremendous position knives had “a judge as the trial to evaluate consumer-reception” and that defendants evidence.7 We think it does not suffice prod- competitors”) (“new offering con establish the essential likelihood of Standing uct claimed to which which be and source. sumer-confusion plaintiff’s substantially alone, appearance was similar at a copying of deliberate job- price, consequence lower with the plain plaintiff’s product (while omitting withholding not bers name) orders trademark, legend tiff’s only significant For this affidavit served to show prove such likelihood. The knives. merely began actively un prove evidence consists of tending defendants compete plaintiff, sent not at in two all sworn statements found letters with above, likely plaintiff.8 consumers were confused For reasons stated consumer-confusion be confused as to We conclude source.9 there is no evidence of through “Upon easy securing examination, to de- means of his customers it is so *5 your goods quite prod- belief, induced, that that it is inferior termine an their so carrying Cutlery, Hall uct to Carvel and are his.” price, a been much lower the trade have evidence, written 7. We have so held as to continually inquiring why as to Carvel a after trial on the merits. priced has to be above what Hall so much Cir., States, 2 United Lauricella v. eyes to their thing. seems to the identical be 327, 328; Luckenbaeh S. 251; Cir., 250, States, 2 F.2d 157 United “Everyone agreed spoke to whom I that 46; 36, Clark, Cir., 2 Kind v. you action, have taken the correct and 721; 720, Cir., Coastwise, 2 F.2d The 68 you.” their best wishes are with States, 2 F.2d v. United 144 Stokes Stilwell, Cir., 85; letter, Long Island, 82, 2 135 The other from a Norment v. (so York, 132; plaintiff, The New Trans. Co. v. dealer reads F.2d Pfeifer Oil 607; pertinent) 606, Bushey, far as a 2 follows: “I am lit- Ira S. Solomon, copied guys 2 F.2d tle concerned about your Bannister v. 126 who knives, many 740, also Bowles v. Beatrice steak 742. See and have 780; people buy your Creamery 774, they Co., me F.2d tell that 10 146 could Society per 6, Equitable knives at I $10.00 Life Assurance set of could not Irelan, possible, only got this F.2d believe picture a clear v. 123 United 9 factory 464; Land, U.S.App. perti- 462, when the Dollar v. 87 sent me Moore, infringement. 214, 245, 248-249; nent details of the I trust D.C. you gives picture (2d 1951) that this a 52.04. clear Practice ed. § Federal regarding what I would like to do Brid- letters, a of these from distributor 8. One product, and dell like would to know if plaintiff, to the writer’s attend- refers being by tile other knives are still at the “annual show” of a whole- ance people, other if have been re- “They certainly saler, and a adds: have stained, certainly it otherwise will slow given display have nice well-rounded considerably. the sales Briddoll Let Cutlery, prominence Hall hav- to Carvel you me hear from soon.” ing placed stand at it an excellent on Wright, says: affidavit, display-room. 9. in an One “Gen So far the entrance to the size, appearance, shape eral and color of attended and sales show been well displayed fairly good. Up the two brands of knife sots as I this time have been plastic nearly products cases are so iden not seen of the just glance they ap you at first tical that have entered firms whom pear product. only happened suit, to be the same one of Maleo have Sets, obvious difference between the two I was sets Knive the Oxhoad Steak way copied laid side side the Carvel Hall name outfit has amazed at your product. transparent imprinted exactly on the cover of similar It one, showing show, with brand name on the on numerous occasions that c plasti people say, There is a bas-relief hoard to ‘What other cover. various symbol doing Cutlery doorway on the Carvel Hall Hall set of is that Carvel symbol plastic It cover and bas-relief this end of the room. bo down should This oxhead on the other.” is far of the line.’ For an back with the balance placed saying showing your information, that there is it was seven eight customers will Hall likelihood believe stalls down from Carvel Display. and defendants’ Angeles Los Case v. findings, so far judge’s that the trial 115, S.Ct. 84 Co., consumer-confusion, no ade- Lumber 308 U.S. relate to States, 110; 172 U.S. record, that, United there- L.Ed. Keck v. support quate Unit L.Ed. injunction 19 S.Ct. preliminary should fore, the Ark, U.S. Kim course, pre- Wong ed States v. Of we have issued.10 890; Morissette v. L.Ed. may develop in a trial S.Ct. judge the case as it States, S.Ct. on the merits. Reversed. consider have no occasion We Act, 15 U.S.C.A. § whether Lanham CLARK, Judge (dissenting). circuit here. This 1126(h., i) applies appears go on opinion creates Act herewith yet decided whether competi procedure. grounds substance against “unfair both federal new If, as, Corp. rather Appliance it is ruling Cutting tion.” See Room the circumstances Co., remedy 186 F.2d drastic Empire M. Cutting —under assume, only issue arguendo, injunction here —of should we 997.11 even if here, upon testimony apply, more “live” than is the Act we provided di-posed along, go Under our conclusion: should affect cannot adequate directed and Act, speedy hearing consumer-confusion was the likelihood of required theretofore, safeguards test of meanwhile to remains, just quo. & Son For must meaning. S. C. hold statu secondary matter Johnson evidence, And be borne that the what Johnson, 2 in mind enlarge was, unchallenged the Act ever it issue does not stood believe *6 own.judicial com except “unfair for our meaning of here crucial1 the common-law secondary- subject and it give cutlery rise to a notice of of was petition” to so as experienced of con right where the likelihood sufficient to convince meaning It proved. judge. “Unfair not there is cautious trial should sumer-confusion art; and, competition” disregarded searching of when fore while we are are words be words, complete particularly legislature borrows such more for case— previous mean are with the deliberate are deemed retain their when we faced to contrary legislative widely product, in unless there is advertised to ing of expressed depreciated price. clearly in the statute or article at half tention sell a Palmer, however, history. absence, any suggestions of See Hoffman v. for by by mem- made the same manufacturer. of that one were in discussion Act See, e.g., Shemitz, 2 ber of the court. A. C. Gilbert v. is “It to be remembered secondary meaning 1. That of and con defendants opinion design slavishly in copy sumer-confusion. is error to the Gilbert stating represent in the two long illustrative letters as did quoted only signifi complainant.” goods which were are of those were cant evidence consumer-confusion. put important of ad- 10. Plaintiff evidence More was the affidavit of Hus by vertisements, president sey, Hussey Associates, what calls of R. P. “reputable department stores,” forty years repre of defend- for a manufacturers’ product. argues sentative, department customers, Plaintiff ants’ likely buyers, mis- to advertisements these store and others interested But, aside, inquiring all else lead consumers. line wore as to this respon- proof 55-per-cent-cheaper product jobbers was that defendant advertising;' holding placing for and there sible off further or good Hussey reason to believe that those stores ders. Doubtless should be sub jected cross-examination, did not knew defendants’ to but state plaintiff’s. ignored same as from the source ment come should not either opinion. limited as in the Of some im Dad’s Root Beer Bever- 11. In Co. v. Doc’s portance, too, is the affidavit of the ex majority ages, Inc., Cir., pert pointing out in detail the several necessary resemblance, the court not think it to did items of surface inner ap- quality, decide whether the Lanham Act was differences of peting between the com join plicable, and, ground, on that did not knives. safeguards,2 such interim the substitution 1126in Root discussion of U.S.C.A. § upper congression- case) court findings, lower Beer to conclude that the the. objections any possibility policy of distinctive al than there disclosed is other cutlery, skepti represented indeed the strong aspects in the substantive expressed cism secondary meaning as herewith. decision record, notwithstanding force me to conclude that no of confusion” “likelihood
—the requirement governing ever be —will accepted possible strong as showing unless persons actual confusion from the con
fused is made. That that even means
rawest copying will he actionable. And law, that is new cases cited opinion show. LOPINSKY v. DRIVE-UR-SELF HERTZ SYSTEMS, Inc. et al. my I could breth be as certain wish No. Docket ren that a green light “free-riders” is competitive society of the essence Appeals Court of duty that we high have a out this carry Circuit. Second public But, opinions show, policy. my Argued Nov. I am bothered troublesome doubts. 10, 1951. Decided Dec. my Much of modern offends advertising sensibilities; the other hand I cannot develop enthusiasm the manufacturer rely advertising
who would on the of others product, market a poorer lesser price. dilemma, Placed in I would policy
like yield my public views producers those to both closer consum pos thought ers than I. I have to see such *7 sible definitive instruction in the Lanham emphasis
Trade-Mark Act of in its upon against remedies use of trade-marked “likely articles cause con mistake,” fusion or 15 U.S.C.A. or § “any goods use as or services designation origin, false false description representation,” 15 U.S.C.A. broadly 1125(a), even more “effective § protection against competition.” unfair 1126(h, i), g., 1127. U.S.C.A. §§ e. in Dad’s Root Beer my discussions Inc., Cir., Beverages, Doc’s Johnson, Cir., & and C. Son v. S. Johnson 176, certiorari U.S. denied ;860, 527. One 70 S.Ct L.Ed. remedy an exact not need discover (though compare that Act stay appeal, granting pending 3. While the last sections first cited' have' not yet judge single interpretation,, and then this at- received definite a tempted court the’ safeguards. admittedly plaintifii’s’ first two broaden- to set such Wheth- trade;. attempts rights protection! successful, unfair or not the er significant that these are now com- it is pletely repudiated.