95 F. 457 | 8th Cir. | 1899
In July, 1891, the Fish Bros. Wagon Company, a corporation, and the appellant in this suit, was manufacturing and selling farm wagons at Racine, in the state of Wisconsin, which it markéd or designated, on the wagons and in its advertisements, by the use of the words “Fish,” “Fish Brothers,” and “Fish Brothers Wagon Company” and by the picture of a fish, with these and other words printed or painted upon it. The business of manufacturing and selling these wagons at Racine had' been built up by Titus G. Fish and his brother, and had been carried on there for many years, until the wagons marked with these names and devices had become well known to the trade. The appellant had succeeded to this business, and to the right to use thqse names and devices, and the Fish brothers had retired from that business. At the same time, in this year 1891, Titus G. Fish, Edwin B. Fish, and Fred C. Fish had formed a partnership under the name of Fish Bros. & Co., and they were selling wagons marked with substantially the same names and devices, which were made at South Superior, in the state of Wisconsin, by the La Belle Wagon Works, a corporation, under a contract which it had made with Fish Bros. & Co. Thereupon, in July of that year, the appellant brought a suit in equity in the circuit court of Douglas county, in the state of Wisconsin, against the La Belle Wagon Works, Titus G. Fish, Edwin B. Fish, and Fred C. Fish, to obtain a decree that it was the sole owner of the right to use the words “Fish Bros.,” “Fish Bros. & Company,” and “Fish Bros. Wagons,” and the device of a fish, with the words “Bros.” or “Brothers” or “Bros. & Co.” printed or stamped thereon, in designating wagons or vehicles. A preliminary injunction was issued against the defendants in that suit, in pursuance of the prayer of the bill. The defendants then answered, claimed the exclusive right to use these words and devices, and applied for an injunction against the appellant, and for an order vacating the injunction against them. The circuit court of Douglas county entered an order denying this application, and the defendants appealed to the supreme court of Wisconsin, which in June, 1892, reversed that order and held that the appellant and the defendants in that case had the right to use the words and devices in controversy to mark the wagons which they respectively made and sold, but that none of the parties to that suit had the exclusive right to use these words and devices, and that the defendants could not lawfully use them in such a way as would be calculated to induce purchasers to buy their wagons as and for the wagons manufactured by the appellant at Racine. Fish Bros. Wagon Co. v. La Belle Wagon Works, 82 Wis. 546, 52 N. W. 595.
The history of the growth of the business of manufacturing these wagons, of the use of the words and devices in controversy, and of the relation of Titus G. Fish and Edwin B. Fish to that business and to the appellant prior to 1891, appears from the statement which precedes the opinion in that case. The story is not material to the decision of this case, and it will not be related here. It is sufficient to say that Titus G. Fish and Edwin B. Fish made no contract with the appellant or its predecessors that they would not use the names
We have stated with this care and particularity the course of the prior litigation over the right to the use of the words and devices in controversy in this suit, because to state fairly the issues involved and the decree rendered in that litigation is to decide this case. The record discloses the fact that the same rights and questions, upon a state of facts not materially different, are involved in this suit that were in issue and were determined by the decision and decree in Wisconsin. It discloses the fact that the complainant is the same as in the suit in Wisconsin, and that the defendant is the assign of Titus G. Fish and Edwin B. Fish, the two defendants in that suit, who were held by the Wisconsin courts to be entitled to use the words and devices in question. The unavoidable result of this state of facts is that the rights of the parties to this suit are determined by the decree in Wisconsin. The appellant was the complainant, and the appellee is a privy of the defendants in that case, and the same claim •or demand is in issue in this suit that was determined in that suit. In an action between the same parties, or those in privity with them, upon the same claim or demand, the prior judgment or decree upon the merits is conclusive of every matter that was or might have been litigated in the earlier suit. Board v. Platt, 49 U. S. App. 216, 223, 25 C. C. A. 87, 91, and 79 Fed. 567, 571; Cromwell v. County of Sac, 94 U. S. 351, 352; Iron Co. v. Eells, 32 U. S. App. 348, 366, 15 C. C. A. 189, 201, and 68 Fed. 24, 35, 36.
The decision and decree in Wisconsin relieve us from a consideration „of the question whether or not (he use by the appellee of the names and devices in controversy tends to confusion in the trade, and to its diversion from the appellant. The decree establishes the right of each of the parties to this suit to use the names and devices to mark its wagons, on the single condition that it -does not so use them as to induce purchasers to buy its product in the mistaken belief that it is the product of its competitor. It must he conceded that the use of the same names and devices by two rival manufacturers makes it difficult to avoid confusion and mistakes in the trade, and to prevent the infringement of one upon the other. The decree in Wisconsin has, however, established that right, and it has imposed the duty of so exercising it that no purchaser will be induced to buy its wagons in the belief that they are those of the appellant, upon the appellee in this suit. The evidence in this case is convincing that