103 F. 87 | U.S. Circuit Court for the Northern District of Illnois | 1900
The issues involved in this case are interesting and important, and, after hearing the oral arguments, which were quite full, and reading the briefs, I have examined such of the testimony as seemed essential to complete understanding of the controverted facts. Regarding the allegations of the bill sufficient for raising either issue presented by the testimony, — infringement of trade-mark rights and unfair competition, — I deem it unnecessary to review the various propositions argued in the briefs, or the testimony at large, and state my conclusions only on the facts and law so far as material for a decree.
1. As to any common-law trade-mark right in the name “Liebig” in connection with “extract of meat or beef”: This collocation came into use under the following circumstances: Baron Liebig was an eminent German chemist, and president of the Royal Academy of Sciences at Munich, and became interested philanthropically in the subj'ect of producing a meat extract from material otherwise wasted, which would greatly benefit mankind. He published in 1847 a formula by which an extract was obtained free from gelatin and fat, and this is substantially the present process of the complainant.
2. As to the trade-marks registered in the United States: The contention relates mainly to the fac simile signature, “J. V. Liebig” (referred to as the “signature in blue”), stamped diagonally across the face of the wrapper. Infringement is alleged in two forms of “Walker” exhibits and one “Lansing” exhibit, but no cause of actionable infringement is clearly established against the defendant. The “Lansing” form was made Íjv employés of the defendant upon a special order given by agents or detectives acting for the complainant, ■and, however competent as evidence tending to show intention or «rate of mind on the part of the defendant, the making, under the circumstances shown, does not constitute infringement of the trademark. The Walker form of signature, shown in the admitted label, ‘■Walker Wrapper No. 2,” is not such an imitation in signature as to constitute infringement per se of the registered trade-mark. If the Walker signature, presented in the bill as “Complainants’ Exhibit Defendant’s Wrapper,” is so manifestly an imitation as to infringe this trade-mark, the evidence, mostly circumstantial, offered to charge the defendants with such making, is deemed insufficient to overcome the testimony on the part of the defendants by which Their participation is positively denied, and Walker and other witnesses testify to their independent production by Walker in New York. I refrain from further comment on the testimony of Walker, as another action is pending which involves his conduct.
3. Of unfair competition: The manufacture of the beef extracts in question is open to all the world, and the manufacture in accordance with the Liebig formula is equally open to the defendants under that name, “subject, however, to the condition that the name must be so used as not to deprive others of their rights, or to deceive the public, and therefore that the name must be accompanied with such indication that the thing manufactured is the work of the one making it, as will unmistakably inform the public of that fact.” Singer Mfg Co. v. June Mfg. Co., 163 U. S. 169, 16 Sup. Ct. 1002, 41 L. Ed. 118. The complainant has possessed in the United States a trade in its products for more than 30 years, and for many years its trade has been of great extent, aided by large expenditures for advertising. The defendant entered the market with an extract which wTas well distinguished in the marking and the color of the package, but subsequently, in the Walker transaction, at least, adopted a dress for the goods which clearly simulated that of the
The question whether an accounting shall be ordered, in the view indicated, and under the circumstances shown (with exclusive agency in Corneille, David & Co.), is left to be determined in connection with the framing of a decree, when the question of costs will also be settled. Let the decree be prepared by counsel for complainant, to be submitted to the other side, and a hearing will be granted at such time for the final form of decree.