Lafean v. Weeks

177 Pa. 412 | Pa. | 1896

Lead Opinion

Opinion by

Mr. Justice Williams,

Monopolies of any sort have never been favorites with the law. They were held at the common law to be against public policy because against common right. The grants, charters, letters patent, or other form of device or assurance, by the sovereign for their creation were declared by the act of parliament of 21 James I. chap. 8, to be “ utterly void and of none effect, and in nowise to be put in use and operation.” Nothing short of the “omnipotence of parliament” is able to exclude a subject from trade in England: Bacon’s Ab. vol. 7, p. 23. Two exceptions to this general rule were given by the early text writers. First, “It seemeth clear that the king may, for a reasonable time, make a good grant to any one of the sole use of any art invented or first brought into the realm by the grantee.” Second, The king may grant to particular persons the sole use of some particular employments, as “ of printing the Holy Scriptures, and law books,” etc. The somewhat curious reason given for the second exception is that an unrestrained liberty to print the books to which it relates might be “ of dangerous consequences to the public.” To these exceptions a third must now be added, viz, the right of a tradesman to the exclusive use of such signs, words or symbols as he may have adopted and used in his business to distinguish articles of his own production from all similar articles produced by other persons. These exceptions do not impair the force of the general rule. Exceptio probat regulam de rebus non exceptis. The rule is unrestricted liberty in the practice of all arts and trades and in the use of the methods by which they are conducted. He who asserts the right to an exclusive privilege in any department of business must bring himself under the protection of some recognized exception to the rule. The plaintiff in this case claims an exclusive privilege under the third exception, viz, the right to the sole use of a certain trade-mark adopted, used, and registered by him; and he alleges that the defendant has adopted and is now using a trade-mark which is an imitation of, and an infringement upon, his own. It becomes important therefore to learn just what the plaintiff’s trade-mark is, and then to determine whether it has been improperly imitated by the defendant. In the bill filed in this case the plaintiff’s trade-mark is fully described, and the precise form in which it is registered in the U. S. Patent Office is given as follows: “ Our trade mark consists of the letters ‘P..C. W.’ These letters have generally been arranged as shown in the accompanying fae-simile, in which they appear as script, printed in a horizontal line upon a background of any suitable color; but other forms of letters may be employed, or they may be differently arranged without materially altering the character of our trade mark, the essential features of which are the letters ‘ P. C. W.’” The business of the plaintiffs was the manufacture of confectionery goods, and particularly of that kind of confectionery known as caramels. The caramels when finished were put in boxes of various sizes and forms, which are manufactured by box makers and sold to the public generally. The plaintiff had no exclusive right to their use. They were what is known as stock boxes. When the boxes were filled the particular kind of caramel they contained wao indicated by printed slips or labels pasted upon them in some suitable position, and another slip or label was placed on each box having the trade-mark “P. C. W.,” which indicated that the caramels were the genuine production of the plaintiff’s factory. These letters were the initials of the name of P. C. Wiest and no one but the owner of the name could rightfully use them without authority from him. The trade-mark of the defendant consisted also of the initials of the founder of the business done by it, W. H. Weeks; and it is described in the answer and in the statement registered in the U. S. Patent Office as consisting of the letters “ W. H. W.” made in script, in white, on a dark ground.

The defendants are engaged in the manufacture of confectionery and state in their answer that their goods include stick candies, toy forms, caramels, plain confections, candied fruits, leaves, nuts, and the like. These when prepared for use are packed in boxes of various sizes and forms, each of which bears a slip or label indicating the variety of confectionery it contains, and another slip or label displaying the trade-mark which affords to the purchaser an assurance that the goods he is about to buy are the genuine product of the defendant’s establishment. As a general proposition the right of W. H. Weeks to the use of his name or initials as a trade-mark is as clear as that of P. C. Wiest to the use of-his name or initials: Hoyt v. Hoyt, 143 Pa. 623. They are not the same. They do not even bear a close resemblance to each other; and the master reached the correct conclusion that there was neither imitation nor infringement shown by the evidence. If the initials had been the same we do not see how the defendant could have been restrained from using his own, although in that case we think there should have been something in the manner of use to distinguish, and enable the public to distinguish, the product of the rival establishments from each other; and it is probable that without it a court of equity would have restrained the second comer. But in a recent case in New York, Higgins v. Higgins Soap Co., 27 L. R. A. 42, it was held that the prior use of one’s name by other persons in the same business does not destroy the right of him whose name it is to use it. The right to use one’s own name seems to have been held to be a personal right as clear in business as in personal correspondence. We have, however, no such question here. The master has recommended, and the court below has issued, an injunction against the defendant restraining him from the use of the letters “ W. H. W.” printed in script, in white, in a horizontal line upon a red background. This decree says to the defendant, “ you have a right to your trade-mark and may lawfully use it ” but, going beyond the claim of the plaintiff as stated in the bill it adds, you must not use the same kind of letters, or mode of arrangement, or colors used by the plaintiff. Now these accessories constitute no part of the plaintiff’s trade-mark. The description filed in the U. S. Patent Office states that the letters are generally used in script, but may be used in any other way.

They are put upon a background of “ any suitable color,” no color whatever being named. If this injunction can be sustained on the ground on which it was put in the court below, there is no style of letter, no mode of arrangement, no color in the solar spectrum, to which the plaintiffs cannot lay equal claim. But as the plaintiffs themselves say in the description from which we have quoted, “ the essential characteristic of our trade-mark is the letters P. C. W.” Those are what indicate the ownership and origin of the goods, and they carry their assurance to the public without regard to their own shape, arrangement or color. A tradesman can have no exclusive, right to mathematical lines, to styles of printing or colors.

The master finds that the defendant has adopted boxes and packages quite like those used by the plaintiff. The same is no doubt true of most of the confectioners in the commonwealth. The boxes and packages are made by box manufacturers to contain an even number of pounds, or fractions of a pound, and are necessarily uniform in size and general appearance. They are made for the trade and are sold to the trade, without discrimination. The plaintiff and the defendant have an equal right to buy from the manufacturers; and they must buy boxes of the sizes and shapes made for, and in use by, confectioners generally. The similarity in size and shape of the boxes does not therefore justify the master in finding that they were selected for an improper or fraudulent purpose; for the size and shape of the boxes are determined by the makers and fixed upon with a view to the accommodation of the largest number of purchasers. The other circumstance to which the master refers as justifying his decree is the use of the same names for varieties of candies that the plaintiff had previously used, and perhaps devised. But one who invents a machine or a new combination, or devises a new article, contributes the result of his skill and his inventive powers to the public if he does not take the necessary steps to secure himself an exclusive right to use and vend his invention.

If he does not do this he must not complain if his neighbor appropriates his invention or device to his own use, and enters into competition with him in its production and sale. The ground on which the courts will interfere in such cases is to protect the inventor from the attempt of his neighbor to sell his own work as and for the work of the inventor. This would be enjoined as a fraud upon both the inventor and the public; but so long as he sells his own work as his own, any man may imitate the unprotected work of any other man as closely as he is able. We think the injunction awarded in this case cannot be sustained upon the findings of the learned master, and should be set aside.

If the defendant is really attempting to sell his own confectionery by representing it to the public as the production of the plaintiff, this, and not an imitation or infringement of the trademark, should be charged in the bill as the ground of relief.

The decree is reversed. No order is made in relation to costs.

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Dissenting Opinion

Mr. Justice Mitchell

dissenting.

This is a perfectly clear case of a fraudulent effort of appellants to get a part of plaintiff’s trade by such imitation of his boxes, labels, lettering, coloring, etc., as will deceive and mislead intending purchasers. It is an effort which equity ought and usually does enjoin without reference to the strict doctrine of trade-marks. For this reason I would affirm the decree.

' We concur in this dissent.

Dean, J.,

Fell, J.