219 F. 913 | D. Conn. | 1915
This is a bill in equity by the plaintiff for alleged unfair competition by the defendants. In the bill as originally filed, E. Clinton Carleton was sole defendant. The substantial allegations of the bill are that the plaintiff was engaged in the manufacture and sale of a dust cloth put out in a distinctive package with a distinctive circular, and that the plaintiff was a pioneer in making and so marketing such dust cloth; that this dust cloth was made of' a specially woven cheesecloth under a secret process,, which imparted to it special dust-retaining characteristics, and the material for which was, before being submitted to the secret process to prepare it for a dust cloth, dyed black, and that the dyeing process was adopted by the plaintiff as a means of giving it a distinctive appearance; also that this dyeing has no other purpose than to give the article a distinctive appearance, since this color functionally is ' somewhat disadvantageous, in that the dust collected shows more plainly upon the black-colored cloth than it would upon cloth uncolored.
The bill of complaint also alleges that the plaintiff has expended a large amount of money in building up and developing the trade connected with the sale and manufacture of these articles, and has put this dust cloth upon the market in packages of a certain size and color, which was the scheme for the outer wrapper of the duster as marketed, and that the defendant Carleton, who was a former agent of the plaintiff, was putting out an imitation thereof in an imitative package and with a circular similar to the plaintiff’s, which package was adapted to be used, and was used, by dealers for the purpose of substitution as and for plaintiff’s dust cloth.
The bill of complaint then prayed for an injunction that the defendant be restrained:
“1. From selling or offering for sale dust cloths so colored as to present substantially the same visual appearance as complainant’s dust cloth, and particularly from selling or offering for sale dust cloths dyed black, in imitation of complainant’s dust cloth.
“2. From selling or offering for sale dust cloths so packed or dressed as to be likely to be confused with complainant’s package.”
The bill of complaint has annexed to it a specimen of the plaintiff’s package and of the defendant’s package, marked, respectively, “Complainant’s Exhibit A” and “Complainant’s Exhibit B.”
There was a demurrer to this bill by the defendant Carleton, upon which the court reached the conclusion that the first prayer for relief should be granted, and overruled the demurrer. (C. C.) 185 Fed. 999.
Six days subsequent to. the filing of the opinion overruling the demurrer, the plaintiff and defendant Carleton entered into a stipulation that the overruling of the demurrer should be treated as a final disposition of the cause, and that final judgment might be entered accordingly. Subsequently a motion was made by Carleton to set aside this stipulation, on the ground that the defendant did not dye his dust cloth black, but purchased it in the open market from a -dealer. This motion was granted, for the reason that it was made to appear in the moving papers that the defendant did not dye his
Thereupon, and subsequent to the decision setting aside the stipulation, the plaintiff advertised in its trade circular that it had obtained an injunction against selling or offering for sale dust cloths dyed black.
Thereafter the defendant the Tate Manufacturing Company, which had, with the permission of the court, intervened as a codefendant subsequent to the filing of the second opinion, filed a petition of contempt against the plaintiff and its two managing officers, alleging that this trade circular advertisement did not accurately state the decision as it was finally made, and was therefore in contempt. No action has ever been taken on this petition. Subsequently the court issued ex parte, without any opinion, a temporary restraining order against plaintiff, restraining a violation of the second prayer for relief in this petition.
hater on the plaintiff prepared and published a new circular, in which the page on which it appeared was changed as a whole, although the advertisement itself remained unchanged.
Separate answers were filed by the defendants, which are substantially identical, both of which deny the material averments of the complaint.
As was said by Mr. Justice Holmes, then of the Supreme Judicial Court of Massachusetts, in New England Awl Co. v. Marlborough Awl Co., 168 Mass. 154, 156, 46 N. E. 386, 387 (60 Am. St. Rep. 377):
“Of course, a person cannot claim the monopoly of a color in connection with a particular line of trade, and very likely not in connection with the labels of a certain kind of goods generally. But the most universal element may be appropriated as the specific mark of a plaintiff’s goods, if it is used and claimed only in connection with a sufficiently complex combination of other things.”
The sole question in such cases is: Does the adoption of the collocated features of the plaintiff’s style of dress disclose a differentiation from that previously adopted, and by which the public has come to recognize the plaintiff’s product? De Long Hook & Eye Co. v. Francis Hook & Eye & Fastener Co. (C. C.) 139 Fed. 146, 149.
Indeed, the test of infringement in such cases is the same as is applied in design patents; that is, whether ordinary purchasers would be misled by the similarity between the designs in controversy. Williams v. Brooks, 50 Conn. 278, 279, 47 Am. Rep. 642, citing Gorham Co. v. White, 14 Wall. 511, 20 L. Ed. 731.
In Celluloid Mfg. Co. v. Cellonite Mfg. Co. (C. C.) 32 Fed. 94, 97, Mr. Justice Bradley said;
“Similarity, not identity, is the usual recourse when one party seeks to beuofii himself by the good name of another.”
Tested by these rules, I am satisfied that the Plaintiff’s Exhibit B, annexed to the complaint, is a substantial infringement of Plaintiff’s Exhibit A, and that an injunction should issue against the defendants, restraining them from manufacturing, selling, putting up, or offering for sale the particular form of package which has been referred to in the bill of complaint and put in evidence as Plaintiff’s Exhibit B, or any part thereof, or any other form of package, or any part thereof, which shall, by reason of the collocation of size, shape, colors, lettering, spacing, and ornamentation, present a general appearance as closely resembling Plaintiff’s Exhibit A referred to in the bill, as does the said Plaintiff’s Exhibit B.
The Tate Manufacturing Company has not, under the circumstances, been damaged by the advertisement referred to, which is the subject of the petition for contempt; and although the advertisement and its repetition may have been ill-timed and ill-advised, they did not embarrass, impede, or obstruct the administration of justice. The petition for contempt, therefore, is denied.
Decree accordingly.