Flagg Manufacturing Co. v. Holway

178 Mass. 83 | Mass. | 1901

Holmes, C. J.

This is a bill brought to restrain the defendant from selling zithers which imitate the plaintiff’s, or with strings arranged and spaced as the plaintiff’s strings are arranged and spaced, and specifically to restrain it from selling a particular form of zither heretofore sold by it and exhibited by the bill. The case was sent to a master, who reported what' is manifest on inspection, when the time of the respective manufactures is known, that the defendant deliberately copied the plaintiff's instrument in all essential and many non-essential details, adding that this was done for a wrongful purpose. The Superior Court made a decree for the plaintiff, in terms almost as broad as the prayers of the bill, and the defendant appealed.

• We are of opinion that the decree was wrong in principle. Both zithers are adapted for the-use of patented sheets of music, but the zithers are not patented. Under such circumstances the defendant, has the same right that the plaintiff has to manufacture instruments in the present form, to imitate the arrangement of the plaintiff’s strings or the shape of the body. In the absence of a patent the freedom of manufacture cannot be cut down under the name of preventing unfair competition. Dover Stamping Co. v. Fellows, 163 Mass. 191. See Singer Manuf. Co. v. June Manuf. Co. 163 U. S. 169. All that can be asked is that precautions shall be taken, so far as are consistent with the defendant’s fundamental right to make and sell what he chooses, to prevent the deception which no doubt he desires to practise.

It is true that a defendant’s freedom of action with regard to some subsidiary matter of ornament or label may be restrained, although a right of the same nature with its freedom to determine the shape of the articles which it sells. But the label or ornament is a relatively small and incidental affair, which would not exist at all, or at least would not exist in that shape but for the intent to deceive; whereas the instrument sold is made as it is, partly at least, because of a supposed or established desire of the public for instruments in that form. The defendant has the right to get the benefit of that desire even if created by the plaintiff. The only thing he has not the right to steal is the good will attaching to the plaintiff’s personality, the benefit of the public’s desire to have goods made by the plaintiff. Probably if there were an absolute conflict between the defendant’s right as we have stated it and the plaintiff’s, the defendant’s would prevail. American Waltham Watch Co. v. United States Watch Co. 173 Mass. 85, 86, 87. But the plaintiff’s right can be protected sufficiently by requiring the defendant’s zithers to be clearly marked so as to indicate unmistakably that they are the defendant’s and not the plaintiff’s goods. This is the relief which the master found to be proper, and we are of opinion that he was right. To go further is to save the plaintiff from a competition from which it has no right to be exempt.

Decree reversed. Decree to be framed overruling the plaintiff’s exceptions to the master’s report and enjoining the defendant from selling or offering for sale zithers like Exhibit A unless clearly marked to show that they are the product of the defendant and not the product of the plaintiff.