247 F. 809 | E.D. Pa. | 1917
The M. B. Fahey Tobacco Company, hereinafter referred to as the Fahey company, a corporation Of Delaware, has brought its bill against Joseph Senior and H. N. Heusner, charging them with trade-mark-violation and unfair competition. It appears from the evidence that the complainant was incorporated August 23, 1910, with power, among other things, to manufacture, sell and deal in cigars and other forms of tobacco. It was organized September 2, 1910, and was duly registered September 10, 1910, in the proper office in Pennsylvania as a foreign corporation doing business in Chester. M. B. Fahey, whose name appears in the title of the complainant, for a number of years and until his death carried on business at No. 705 Edgemont Avenue, in Chester, Pennsylvania, as a wholesale and retail dealer in cigars and other forms of tobacco. He died February 18, 1910, leaving a will whereby he appointed his wife, Rebecca F. Fahey, and his brother Edward H. Fahey, his executrix and executor; and on or about August 11, 1910, they entered into a contract in writing with George B. Ditchfield and Oliver H. Perry for the sale to them of the Stock, good will, and fixtures of the business theretofore carried on by the testator, and certain articles used in connection with that business. After Fahey’s death and until the execution of the above contract the business theretofore conducted by the testator was continued by his personal representatives at the same place. Ditchfield and Perry on the organization of the complainant, which was created for the purpose of continuing the above mentioned business, transferred to it the right and interest' acquired by them from Fahey’s estate under the above mentioned contract of sale.
The defendant Heusner is a manufacturer of cigars in Hanover, Pennsylvania, and has there carried on such manufacture since May, 1895. Fahey from 1881 to 1886 or 1887 was a retail dealer in cigars and other forms of tobacco, and thereafter carried on a wholesale as well as retail business in the same. In the spring of 1899 Heusner was manufacturing or negotiating for the. manufacture of a certain brand of cigars for Fahey, and certain labels were prepared for use on boxes containing that brand so to be furnished by Heusner. These labels contained a cut or printed reproduction of a photograph showing Fahey’s head and shoulders with the words “Fahey’s Special” above and the words “Havana Filler” below the cut. The right as between the complainant and the defendants to the use of these or substantially similar labels in connection with the sale of cigars is the principal bone of contention in this suit.
There has been considerable testimony on the question who designed or selected the labels. This is unimportant; for even if the labels be viewed as trade-marks in contradistinction to mere trade-names or advertisements, the material inquiry is, not who invented the labels, but by whom and by whose authority they were first applied to boxes of cigars. It is the use, and not the invention, of a trade-mark that creates the exclusive right. A trade-mark actually applied for the first time by a manufacturer to articles made and sold by him to a dealer is not necessarily the» property of the former; for if it be applied at the request and by the authority of the latter, to be used in connection with his sales* the former may or may not according to the circumstances of the particular case be treated as the agent of the dealer who through such application of tire trade-mark acquires the exclusive right. If* however, the labels be viewed, not as trade-marks, but mere trade-names or advertisements, the question of unfair competition in trade through their use must be determined, not with reference to any exclusive right in or to the mark—for none exists—
“The ordinary trade-mark has no necessary relation to invention or discovery. * * * It is often the result of accident rather than design, and when under the act of Congress it is sought to establish it by registration, neither originality, invention, discovery, science, nor art is in any way essential to the right conferred by that act. If we should endeavor to classify it under the head of writings of authors, the objections are equally strong. In this, as in regard to inventions, originality is required. And while the word ■writings may be liberally construed, as it has been, to include original designs for engravings, prints, &c., it is only such as are original, and are founded in the creative powers of the mind. The writings which are to be protected are the fruits of mtelleetual labor, embodied in the form of books, prints, engravings, and the like.”
And in Higgins v. Keuffel, 140 U. S. 428, 431, 11 Sup. Ct. 731, 732 (35 L. Ed. 470), the court said with reference to the constitutional grant of power:
“This provision evidently has reference only to such writings and discoveries as are the result of intellectual labor. * * * It does not have any reference to labels which simply designate or describe the articles to which they are attached, and which have no value separated from the articles; and no possible influence upon science or the useful arts. * * * To be entitled to a copyright the article must have by itself some value as a composition, at least to the extent of serving some purpose other than as a mere advertisement or designation of the subject to which it is attached.”
The scroll work on the labels is palpably insufficient to justify their registration under any act of Congress. In Lithographic Co. v. Sarony, 111 U. S. 53, 4 Sup. Ct. 279, 28 L. Ed. 349, the court recognized a vital distinction so far as securing copyright was concerned between a photograph as a mere mechanical reproduction, and a photograph as an original work of art involving originality of thought and conception in its production; the photograph in the former case not being the subject of copyright. In the case in hand the question is not how far a photograph may be the subject of copyright, but whether a mere mechanical copy of a photograph comes within the copyright la-w. This question must be answered in the negative.
"Wo have not overlooked the fact that a brief was filed at the hearing in ibis court on behalf of the railroad company to support the claim of Wolcott that the title of that company was the best. Such a proceeding did not make the railroad compaiiy a party to the suit, or bind it by the decree. Being interested in the question to be decided, the company was anxious to secure a judgment that could not be used as a precedent against its own*818 claims in any litigation that might thereafter arise in respect to Its own property. It is not an uncommon thing in this court to allow briefs to be presented by or on behalf of persons who are not parties to the suit, but who are interested in the questions to be decided, and it has never been supposed that a judgment in such a ease would estop the intervenor in a suit of his own which presented the same questions.”
The Fahey company was not in privity with Baugher & Kohler within the meaning of the rule that a judgment or decree binds parties and privies. Privity “denotes mutual or .successive relationship to the same rights of property” (Litchfield v. Goodnow, supra), and the rule is inapplicable where the person against'whom an estoppel is urged acquired his interest in the subject matter of the suit before its institution. Dull v. Blackman, 169 U. S. 243, 18 Sup. Ct. 333, 42 L. Ed. 733. The doctrine of estoppel by record must, therefore, be held to have no application as against the complainant.
For reasons already expressed in this opinion the complainant is entitled to the enjoyment of the labels as against these defendants; and consequently to an injunction and an accounting. For the same reasons the relief prayed by the defendants in their answer must be denied.
A decree in accordance with this opinion may be prepared and submitted.