115 F. 822 | U.S. Circuit Court for the District of Southern New York | 1902
This suit, in its original form, was commenced against J. T. Walker, trading under the name and style of J. T. Walker & Co., the H. M. Anthony Company, a corporation, Henry
The gist of the amended bill charges that the defendant Walker has sold and continues to sell extract of meat manufactured by Libby, McNeill & Libby, contained in similar jars, labeled and inscribed in substantial resemblance to jars, wrappers, and labels used by complainant in the sale of its extract of meat. Complainant’s wrapper has printed thereon the name of the goods, “Liebig’s Extract of Meat,” name of maker, “Liebig’s Extract of Meat Co., Limited,” and a fac simile trade-mark signature of “J. v. Liebig,” in blue, running diagonally across the printed matter on the wrapper. The jar contains two ounces of meat extract, and is corked and capped with metal capsule, on which appear the words “Liebig’s Extract of Meat Co., Limited, London.” It has printed upon a narrow label wrapped around the upper part of the jar the words, “Examined and Approved by the Director of the Scientific Department and Control. Dr. M. von Pettenkofer and Dr. Carl von Voit Delegate.” The printed matter upon the neck label is in black on white paper, and upon 'the wrapper in red and black. It has printed thereon, in addition to the words already stated, the words, “Extractum carnis Liebig.” The defendant’s jar is of the same size and shape as that of complainant. The rteck label and wrapper is of substantially the same material and appearance. Upon the neck label are printed in black letters the words, “Examined and Approved by the Director of the Scientific Department of the Liebig Fluid Beef Company”; and upon the wrapper are printed the words, in red and black letters, “Liebig’s Extract of Beef, Depots, New York, Chicago, Prepared by Liebig Beef Co. (Extractum carnis Liebig).” And diagonally across the printed matter on the wrapper appears the script signature in blue, “J. T. Walker,” in close imitation of “J. v. Liebig.” The jars, neck label, wrapper,
“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.”
The defendant, therefore, in the sale of his extract of meat, is required to offer his product in such a manner as not to lead an intending purchaser of ordinary intelligence, using ordinary care, into the mistaken belief that he was purchasing an article manufactured' by another.
Defendant stoutly maintains that the determination of the court in Liebig’s Extract of Meat Co. v. Libby, McNeill & Libby, supra, is res adjudicata on all questions involved in this suit. I do not think so. The defendant here was not a defendant in the Illinois case, and the goods as they were offered to the public were of different appearance. The wrapper has printed upon it the words “Liebig Beef Company,” and “Liebig Fluid Beef Company,” and has printed in blue diagonally across it a script signature in close imitation of the fac simile signature of “J. v. Liebig.” This fac simile signature did not appear upon defendant’s wrappers in the Chicago case. Moreover, Judge Seaman held that the evidence in that case showing Libby, McNeill & Libby’s connection with the Walker signature in imitation of the signature of “J. v. Liebig” was insufficient to overcome the testimony on the part of the defendants by which their participation in the use of such a wrapper was denied, and especially as Walker and other witnesses gave testimony that Walker’s production in New York of “Liebig’s Extract of Meat” was independent of defendant Libby, McNeill & Libby. In view of these facts, the Libby Case cannot be held to be res adjudicata. White v. Chase,. 128 Mass. 158. I concur in the opinion, of Judge Seaman that the word “Liebig,” prefixed to “Extract of Meat,” or in connection with the sale of meat, has long since ceased to signify the origin of its manufacture, and has become a generic description of the article sold by complainant under that designation. The language employed by
“So long as Rafitjen and Ms associates and successors in business enjoyed a monopoly of the manufacture of the article, the name not only identified the characteristics of the article, but also denoted the source of manufacture; but when the monopoly ceased, and the article passed into the •domain of public property, the name which had been its generic designation also passed. Their monopoly has eeased to exist in this country, as well as abroad, and the property in the name can no more survive here than it can abroad.”
This view has been sustained by the supreme court decision in this case in review, and which will be considered later.
The question whether complainant has ever had an exclusive right to the designation “Liebig’s Extract of Meat” has also received unusual consideration in the courts-of England. Meat Co. v. Hanbury, 17 Law T. (N. S.) 298; Same v. Anderson, 55 Law T. (N. S.) 206 ; same in house of lords decision in 1885. I deem it, therefore, entirely unnecessary to again review the facts upon which are based those decisions holding adversely to complainant’s claim of the exclusive right to the use of the name “Liebig” in connection with the manufacture and sale of extract of meat. Complainant insists, however, that, as the defendant has given no proof of the truthfulness of the assertion printed upon his label that his goods are manufactured according to the formula of Baron Liebig, complainant is injured, and that this court, in the absence of such proof, should enjoin an apparent deception upon the public; that the United States trademark rights of the complainant are independent of trade-mark rights obtained in .other countries, and, although the words “Liebig’s Extract of Meat” may be generic, still the sale of such meat extract by defendant deceived the public, and is a fraud upon the complainant, if a secondary meaning 'of these words be shown in the United States. To supplement the first proposition advanced, complainant argues that its proof establishes that its extract of meat is manufactured according to the formula of Baron Liebig, and that, in the absence of proof on the part of the defendant that he employs the process of Baron Liebig, this court, in the exercise of its equitable power, should enjoin the use of the words “Liebig’s Extract of Beef” on defendant’s labels. A sufficient answer to this contention is that Baron von Liebig never regarded his formula as a trade secret. The record is replete with proof that the process of manufacturing extract of meat according to his formula was made public many years since. The. public is presumed to be acquainted with the process. As it is no longer a secret process, a purchaser of “Liebig’s Extract of Meat,” using ordinary care in selection of the article purchased, cannot be fraudulently induced to accept a different product. Obviously,. if a purchaser, believing that jars purchased by him contain “Liebig’s Extract of Meat,” should discover that such jars contain some other commodity, and that a fraud has been practiced upon him, he has his remedy for damages at law. It would, however, be extending the power of a court of equity beyond its proper sphere to hold that a rival dealer in a commodity may successfully apply to that court to
The trade-mark of complainant was registered in England, October 25, 1876, and in the United States, June 30, 1885. The contention that a secondary meaning of the words “Liebig’s Extract of Meat” arises in the United States because of independent right conferred by the trade-mark is untenable. The supreme court of the United States, in Holzapfel’s Composition Co. v. Rahtjen’s American Composition Co. (decided Oct. 21, 1901) 22 Sup. Ct. 6, is decisive of this contention. In that cáse the trade-mark “Rahtjen’s Composition, Holzapfel’s Manufacture,” was registered after the defendant company liad commenced the manufacture of paint, and had sent the same to the United States under that description, and as early' as in 1884. The court said:
“The United States registered trade-mark could not, therefore, interfere with the prior, but not exclusive, right of the defendant to the use of these •words.”
The doctrine of the Rahtjen Case would seem to apply to the case at bar, where the generic appellation was known in this country long prior to registration of the trade-mark. In the Rahtjen Case the supreme court further said:
“In the manufacture and sale of the article, of course, no deceit would he tolerated; and the article described as ‘Rahtjen’s Composition’ would, when manufactured by defendant, have to be plainly described as its manufacture.”
It follows, therefore, from the foregoing, that the defendant Walker has the right to designate his product by the, name “Liebig’s Ex
“The complainants are entitled to a decree for the protection of their good will, enjoining the defendants from such simulation of the label and name of the complainants. The injunction will apply to each of the forms of outer wrapper above indicated, but will not extend to jars or pots in use, nor to the neck labels, inner labels, or certificate, as neither of these is deemed objectionable, within the rule and to the extent demanded for such protection.”
The record, which is a voluminous one, clearly shows that the objective purpose of the complainant was to establish an exclusive right to the words “Liebig’s Extract of Meat.” The defendant is a dealer in meat extracts, and purchases his commodity from Libby, McNeill & Libby, who were involved in the Chicago suit, and by whom an accounting was directed by the court. The damages which the complainant claims to have sustained are due to the use of the generic name of the meat extract, as well as to unfair competition. As much difficulty would be experienced in proving any damages, — indeed, it is doubtful whether any damages could be recovered, — no accounting' is directed. Little v. Kellam (C. C.) 100 Fed. 353; Hires Co. v. Consumers’ Co., 41 C. C. A. 71, 100 Fed. 813. By far the greatest amount of money has been expended in taking proof on the main question involved. The charge of unfair competition is merely supplementary. Considerable testimony was taken both abroad and in the United States. English and Continental decisions, writings and lectures by Baron von Liebig and others, are printed in the record. No reason exists why Walker should contribute to the payment of a record which appears not to have been necessary to substantiate a violation of a United States registered trade-mark, or an act of unfair competition. The complainant is awarded costs, but, in computing the same, only such costs and disbursements are allowed, to be taxed by the clerk, as relate to unfair competition by defendant Walker. A decree in accordance with the foregoing opinion may be entered.