194 F.2d 416 | 2d Cir. | 1952
Lead Opinion
From our examination of the knives and containers, and the other exhibits, we think there is, to say the least, considerable doubt whether, on this record, there was marked creativeness in the appearance of plaintiff’s knives (made in the well-known form of a hunting knife) or of the containers, or in putting such knives in such containers-. But we shall assume, arguendo, that the plaintiff’s design was unquestionably unique and the result of genius. Even on that assumption, we think that, without more, plaintiff was not entitled to a preliminary injunction. Our reasons follow:
In the first place, we regard the following as well settled.
In General Time Instrument Corp. v. United States Time Corp., 2 Cir., 165 F.2d 853, at page 855 where plaintiff had sold al
To obtain a valid design patent is exceedingly difficult.
Accordingly, an injunction could be proper here only if plaintiff showed that it had acquired a “secondary meaning” in the design of its knives, or containers — i.e., showed a likelihood that purchasers of defendants’ products would believe that they came from the same source as plaintiff’s. (Of course, it would suffice to show such a likelihood; proof of actual instances of confusion is not required.) As this court, per Judge Learned Hand, has said, it “is an absolute condition to any relief whatever that the plaintiff in such cases show that the appearance of his wares has in fact come to mean that some particular person — the plaintiff may not be individually known-makes them, and that the public cares who does make them, and not merely for their appearance and structure. * * * The critical question of fact at the outset always is whether the public is moved in any degree to buy the article because of its source and what are the features by which it distinguishes that source. Unless the plaintiff can answer this question he can take no step forward; no degree of imitation of details is actionable in its absence.”
We have no occasion to consider whether the Lanham Act, 15 U.S.C.A. § 1126(h., i) applies here. This circuit has not yet decided whether that Act creates a new federal right against “unfair competition.” See Cutting Room Appliance Corp. v. Empire Cutting M. Co., 2 Cir., 186 F.2d 997.
Reversed.
. See, e.g., Orescent Tool Co. v. Kilborn & Bishop Co., 2 Cir., 247 F. 299; A. C. Gilbert v. Shemitz, 2 Cir., 45 F.2d 98; Electric Auto-Lite Co. v. P. & D. Mfg. Co., 2 Cir., 109 F.2d 566, 567; Lewis v. Vendome Bags, Inc., 2 Cir., 108 F.2d 16; Swanson Mfg. Co. v. Feinberg-Henry Mfg. Co., 2 Cir., 147 F.2d 500, 503; Lucien Lelong, Inc. v. Lander, Inc., 2 Cir., 164 F.2d 395, 397; General Time Instrument Corp. v. United States Time Corp., 2 Cir., 165 F.2d 853, 853-855; Zangerle & Peterson Co. v. Venice Furniture Novelty Co., 7 Cir., 133, F.2d 266.
. “Without [secondary meaning] or patent protection it was not unfair competition merely to copy the plaintiffs’ purses and sell duplicates of them”; Swanson Mfg. Co. v. Feinberg-Henry Mfg. Co., 2 Cir., 147 F.2d 500, 503.
. See, e.g., A. C. Gilbert Co. v. Shemitz, 2 Cir., 45 F.2d 98, 99; Neufeld-Furst & Co. v. Jay-Day Frocks, 2 Cir., 112 F.2d 715, 716; Nat Lewis Purses v. Carole Bags, 2 Cir., 83 F.2d 475, 476; White v. Leanore Frocks, Inc., 2 Cir., 120 F.2d 113, 115; Alfred Bell & Co. v. Catalda Fine Arts, 2 Cir., 191 F.2d 99, 104.
. Crescent Tool Co. v. Kilborn & Bishop Co., 2 Cir., 247 F. 299, 300. In Zangerle & Peterson Co. v. Venice Furniture Novelty Co., 7 Cir., 133 F.2d 266, 270, the court said (per Judge Min-ton) : “To establish secondary meaning, the article itself must be so clearly identified with its source that its supply from any other source is clearly calculated to deceive the public and lead it to purchase the goods of one for that of another. * * * To acquire a secondary meaning in the minds of the buying public, an article of merchandise when shown to a prospective customer must prompt the afiirmation, ‘That is the article I want because I knew its source,’ and not the negative inquiry as to, ‘Who makes that article?’ In other words the article must proclaim its identification with its source, and not simply stimulate inquiry about it.”
. In A. C. Gilbert v. Shemitz, 2 Cir., 45 F.2d 98, 99, we said that “the designs are so similar” that there would have been an infringement if the plaintiff’s patent had been valid. Holding it invalid, we turned to the claim of unfair competition, saying that defendants have “the right to copy the * * * design slavishly so long as they [do] not represent that the goods sold were those of the complainant.”
. See Electric Auto-Lite Co. v. P. & D. Mfg. Co., 2 Cir., 109 F.2d 566, 567: “There is nothing unlawful in copying the unpatented products of another dealer down to the last detail, except in so far as the resulting similarity may become a
. We have so held as to written evidence, even after a trial on the merits. See, e.g., Lauricella v. United States, 2 Cir., 185 F.2d 327, 328; Luckenbaeh S. Co. v. United States, 2 Cir., 157 F.2d 250, 251; Kind v. Clark, 2 Cir., 161 F.2d 36, 46; The Coastwise, 2 Cir., 68 F.2d 720, 721; Stokes v. United States, 2 Cir., 144 F.2d 82, 85; Norment v. Stilwell, 2 Cir., 135 F.2d 132; Pfeifer Oil Trans. Co. v. The Ira S. Bushey, 2 Cir., 129 F.2d 606, 607; Bannister v. Solomon, 2 Cir., 126 F.2d 740, 742. See also Bowles v. Beatrice Creamery Co., 10 Cir., 146 F.2d 774, 780; Equitable Life Assurance Society of United States v. Irelan, 9 Cir., 123 F.2d 462, 464; Dollar v. Land, 87 U.S.App. D.C. 214, 184 F.2d 245, 248-249; Moore, Federal Practice (2d ed. 1951) § 52.04.
. One of these letters, from a distributor to plaintiff, refers to the writer’s attendance at the “annual show” of a wholesaler, and adds: “They certainly have a well-rounded display and have given nice prominence to Carvel Hall Cutlery, having placed it on an excellent stand at the entrance to the display-room. So far the show has been well attended and sales have been fairly good. Up to this time I had not seen any of the products of the firms against whom you have just entered suit, but Maleo happened to have one of the Oxhoad Steak Knive Sets, and I was amazed at the way this outfit has copied your product. It is so exactly similar that on numerous occasions at the show, various people were hoard to say, ‘What is that set of Carvel Hall Cutlery doing down this end of the room. It should bo back with the balance of the line.’ For your information, it was placed seven or eight stalls down from the Carvel Hall Display.
“Upon examination, it is so easy to determine that it is quite an inferior product to Carvel Hall Cutlery, and carrying a much lower price, the trade have been continually inquiring as to why Carvel Hall has to be priced so much above what to their eyes seems to be the identical thing.
“Everyone to whom I spoke agreed that you have taken the correct action, and their best wishes are with you.”
The other letter, from a Long Island, New York, dealer to plaintiff, reads (so far as pertinent) as follows: “I am a little concerned about the guys who copied your steak knives, and have had many people tell me that they could buy your knives at $10.00 per set of 6, I could not believe this possible, and only got a clear picture when the factory sent me pertinent details of the infringement. I trust that this gives you a clear picture of what I would like to do regarding Briddell product, and would like to know if tile other knives are still being sold by the other people, or if they have been re-stained, otherwise it will certainly slow the sales of Briddoll considerably. Let me hear from you soon.”
. One Wright, in an affidavit, says: “General appearance, size, shape and color of the two brands of knife sots as displayed in their plastic cases are so nearly identical that at first glance they would appear to be the same product. The only obvious difference between the two sets laid side by side is the Carvel Hall name imprinted on the transparent cover of one, with no brand name showing on the other cover. There is a bas-relief plastic symbol of a doorway on the Carvel Hall cover and a bas-relief plastic symbol of an oxhead on the other.” This is far from saying or showing that there is a likelihood that customers will believe that plaintiff’s and defendants’ products
. Plaintiff put in evidence copies of advertisements, by what plaintiff calls “reputable department stores,” of defendants’ product. Plaintiff argues that these advertisements were likely to mislead consumers. But, all else aside, there is no proof that defendant was responsible for this advertising;' and there is good reason to believe that those stores knew that defendants’ products did not come from the same source as plaintiff’s.
. In Dad’s Root Beer Co. v. Doc’s Beverages, Inc., 2 Cir., 193 F.2d 77, a majority of the court did not think it necessary to decide whether the Lanham Act was applicable, and, on that ground, did not join in the discussion of that Act by one member of the court.
Dissenting Opinion
(dissenting).
The opinion herewith appears to go on grounds of both substance and procedure. If, and as, it is a ruling that the rather drastic remedy — under the circumstances here — of an injunction should issue only upon more “live” testimony than is here, I should be di-posed to go along, provided a speedy hearing was directed and adequate safeguards were required meanwhile to hold the matter in statu quo. For it must be borne in mind that the evidence, whatever it was, stood unchallenged on the issue here crucial
I wish I could be as certain as my brethren that a green light to “free-riders” is of the essence of a competitive society and that we have a duty to carry out this high public policy. But, as my opinions show, I am bothered by troublesome doubts. Much of modern advertising offends my sensibilities; on the other hand I cannot develop enthusiasm for the manufacturer who would rely on the advertising of others to market a poorer product, even at lesser price. Placed in such dilemma, I would like to yield my views of public policy to those closer to both producers and consumers than I. I have thought to see such possible definitive instruction in the Lanham Trade-Mark Act of 1946, in its emphasis upon remedies against use of copies of trade-marked articles “likely to cause confusion or mistake,” 15 U.S.C.A. § 1114, or use as to “any goods or services * * * a false designation of origin, or any false description or representation,” 15 U.S.C.A. § 1125(a), or even more broadly “effective protection against unfair competition.” 15 U.S.C.A. §§ 1126(h, i), 1127.
. That of secondary meaning and consumer-confusion. The opinion is in error in stating that the two illustrative letters which are quoted were the only significant evidence of consumer-confusion. More important was the affidavit of Hussey, president of R. P. Hussey Associates, for forty years a manufacturers’ representative, that customers, department store buyers, and others interested in plaintiff’s line wore inquiring as to this 55-per-cent-cheaper product and jobbers were holding off from placing further orders. Doubtless Hussey should be subjected to cross-examination, but his statement should not be either ignored or limited as in the opinion. Of some importance, too, is the affidavit of the expert pointing out in detail the several items of surface resemblance, but inner differences of quality, between the competing knives.
. In granting a stay pending appeal, first a single judge and then this court attempted to set such safeguards. Whether or not the attempts were successful, it is significant that these are now completely repudiated.
. While the last sections cited' have' not yet received definite interpretation,, the’ first two admittedly broaden- a plaintifii’s’ rights of protection! against unfair trade;.