M. B. Fahey Tobacco Co. v. Senior, 252 F. 579

M. B. Fahey Tobacco Co. v. Senior

252 F. 579 | 3rd Cir. | 1918

McPHERSON, Circuit Judge.

In this suit, brought by the M. B. Fahey Tobacco Company against Joseph Senior and H. N. Heusner, the company charged unfair competition and the infringement of a trade-mark. The principal question was the ownership of the device; Heusner asserting that he and not the company was the exclusive owner, and on this ground asking in his answer for affirmative relief. On the charge of unfair competition the District Court found in favor of the company, but seems to have held — the opinion leaves us in doubt on this point — that the device in question was not a trade-mark and to have decided for this reason that the company could not recover profits, but was confined to damages. Each party has appealed from the decree, and as the whole dispute has been argued before us we incline to dispose of it at this stage of the controversy, although the account has not yet been taken. The hearing was in open court and the facts are fully stated in Judge Bradford’s opinion. 247 Fed. 809.

The evidence relating to the ownership of the device is conflicting, and we have considered it with attention, but without seeing reason to interfere with the findings below. We accept the conclusion of the learned judge that M. B. Fahey in his lifetime was the owner of the device, and that the company has succeeded to his right. And we also agree (1) that the company was not so far privy to the proceeding in the York county court as to be. bound now by the decree of that tribunal under the rule of res judicata; and (2) that under the facts proved the doctrine of clean hands does not prevent the company from recovering in this action. But, if the opinion below is to be understood as deciding that the device is not a trade-mark, and that the company is therefore confined to the recovery of damages for unfair competition, we cannot agree with that part of the decision.

[1] The distinctive feature of the device is the reproduction of Fahey’s photograph. This is coupled with his name — “Fahey’s” Special [cigar], Havana Filler — and we think the words and the picture, taken together, lack no element of a valid trade-mark. The device is arbitrary, not descriptive or generic, and points unmistakably to a particular individual as the source of the goods, giving not only his name, but his features also, so that no other “Fahey” is likely to be confused with the original of the picture. We do not wish to add another to the elaborate discussions of this general subject with which the reports abound, and shall therefore refer merely to Hopkins on Trade*581Marks (3d Ed.) §§ 64 and 72, and 38 Cyc. 695 et seq., and cases cited. An English decision in point is Rowland v. Mitchell [1897] 1 Ch. Div. 71, 85 Law Times Rep. N. S. 498.

Moreover, in addition to the general rules governing the subject, the act of February 20, 1905, has declared in section 5 that:

“No mark by which the goods of the owner of the mark' may be distinguished from other goods of the same class shall bo refused registration as a trade-mark on account of the nature of such mark unless” the mark falls within either of two described classes. 33 Stat. 725, c. 592 (Comp. St. 1916, § 9490).

The first class is not relevant, and the second class by plain implication allows the registration of an individual’s name if the name be associated with his portrait (a condition that is fulfilled in the present case), merely requiring the individual’s written consent to such use of his portrait, a further requirement that was also fulfilled. No question is now presented under the act, but Congress has plainly declared its will concerning devices like that now involved. Davids Co. v. Davids Mfg. Co., 233 U. S. 461, 34 Sup. Ct. 648, 58 L. Ed. 1046.

[2] Therefore, since the defendants have infringed the plaintiffs trade-mark, profits as well as damages are recoverable, and the decree should be modified accordingly. Hamilton Shoe Co. v. Wolf Bros., 240 U. S. 251, 36 Sup. Ct. 269, 60 L. Ed. 629; Hanover Co. v. Metcalf, 240 U. S. 403, 36 Sup. Ct. 357, 60 L. Ed. 713.

We therefore affirm the decree on the defendants’ appeal and reverse it on the plaintiffs appeal, with instructions to modify it in accordance with this opinion.

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