189 F. 26 | 6th Cir. | 1911
The important facts are these:
Complainant is one of the largest and longest established manufacturers of stoves, ranges, and heaters (both coal burning and wood burning) in the United States. It has been in business since the year 1830. Its factories are now at Albany, N. Y., and Aurora, 111. In the year 1835 it registered the “Acorn” as its trade-mark and has used the same ever since upon its product, unless in the case oí a few cheap stoves. Its product enjoys an excellent popularity, being known to the public generally under the name of the “Acorn.” About the year 1900, with the development of natural gas in the territory hereafter mentioned, several stove manufacturers began making natural-gas ranges and heaters. This natural gas territory included western New York, western Pennsylvania, Ohio, West Virginia, and parts of Indiana, Oklahoma, Kansas, Missouri, and possibly some other territory. In 1903 the complainant began making- natural-gas ranges. It made no natural-gas heaters until 1905. At that time there were upon the market and in use substantially two types of natural-gas heaters of the better class, one having a rounding and the other a tubular drum. In 1904 there was put out by another manufacturer a heater known as the “Reliable.” In 1905 complainant prepared designs for a natural-gas heater called the "Solar Acorn.” The appearance' of complainant’s “Solar Acorn” differs, generally speaking, from that of the “Reliable” only in certain features of ornamentation, the shape, style, base, foot-rail, fire pot, reflector, drum, and top being substantially the same (except as hereafter stated), as well as the broad, general plan of ornamentation. Complainant made the ornamentation at the top of its “Solar Acorn” more elaborate than in the case of the “Reliable,” apparently substiíuted a white for a black finishing rim above the drum, adopted a different design of ornamental pieces on the side of the drum, which were brought well forward, the ornamentation above the reflector being carried a little higher, and the foot rail and base ornamentation made somewhat more elaborate.
We do not intimate that complainant actually used the “Reliable” as a copy, or that it adopted features of ornamentation belonging peculiarly to that heater. The fact and extent of similarity are all that are material here. The “Solar Acorn,” as exhibited in ad ver
The defendant is a general stove manufacturer at Cleveland, Ohio, having been engaged in business under its present name, either as a firm or as a corporation, since 1893. It has apparently a good business standing and does a large business, although we assume less extensive than complainant’s. It has used the name “Champion” as its trade-mark continuously since that organization, except during the first few months. Soon after complainant began such manufacture and delivery to dealers of its “Solar Acorn,” the defendant brought out a natural-gas heater called the “Champion.” In so doing it copied complainant’s cut, except that it removed the acorn device frqm the reflector and base of the stove and put the word “Cham
The late Judge Tavler, who heard this case in the Circuit Court, in the course of his opinion dismissing the bill, said:
“It is perfectly apparent that these are the salient and influencixxg facte in this case: That late in 1905 the complainant brought oxxt this ‘Solar Acorn’ stove in controversy, having previously advertised It hy circulars sent to dealers. They sold it small number in the fall of that year. Some time in the winter of that year defendant took complainant’s stove apart, and, except for the acorn and other marks which indicated the origin, absolutely*30 copied at least the external parts of the stove in every particular, so that, to look at it, it’ was an exact duplicate of the stove made and designed hy complainant, with the descriptive exceptions referred to. At that time it is perfectly obvious that the ‘Solar Acorn’ gas heater had no reputation whatever. It had established no market. It was the expression of the idea of complainant as to the form which that type of gas stove should fake. The defendant appropriated the design. Whatever may be said of the ethics of this act, the effect of this appropriation was not' to. deceive the public, for the public had no knowledge. It was not to affect the good will of the complainant, for the complainant had no good will established in respect to this stove. The defendant simply saw that somebody else had made something which it thought' was good, and which was not protected by trade-mark or patent, and wbicb tbe public bad no general knowledge of and proceeded to make an article like it, taking off from it tbe characteristic designations wbicb complainant used and putting ou its own. Now, who could be deceived by'any sucb operation as that? Certainly not tbe dealers, for they knew from whom they bought tbe stoves; certainly not tbe public, for tbe public did not know tbe stoves. In a word, the gist of the offense of unfair competition, to wit, the selling of the imitating thing as the imitated thing, does not exist in this case at all.”
Judge Tayler was also of opinion that complainant’s right of action was barred by laches, in failing for nearly three years to take action, while defendant was actively building up its own trade.
We do not find it necessary to pass upon the question of complainant’s alleged laches, for in view of the lack of public reputation and popularity of complainant’s heater, and even of any substantial knowledge, on the part of the using and purchasing public, of its existence, we agree with Judge Tayler that the copying by defendant of complainant’s design of ornamentation did not deceive the public, by enabling the defendant to palm off its heater as that made by complainant. The latter has no patent upon either the method of construction or operation of the heater, nor upon its design with respect to ornamentation or otherwise. This action is not for infringement of trade-mark, for no trade-mark is infringed. Nor is it for pirating a trade-name, for complainant’s trade-name is not used. This action is simply and solely for alleged unfair competition in the use of the special features of ornamental dress to which attention has been called.
The rule is well settled that nothing less than conduct tending to pass off one man’s merchandise or business as that of another will constitute unfair competition. In Goodyear Co. v. Goodyear Rubber Co., 128 U. S. 598, 604, 9 Sup. Ct. 166, 168, 32 L. Ed. 535, Justice Field said:
“Tbe case at bar cannot be sustained as one to restrain unfair trade. Relief in sucb eases is granted only where tbe defendant, by bis marks, signs, labels, or in other ways, represents to the public that tbe goods sold by him are those manufactured or produced by tbe plaintiff, thus palming off bis goods for those of a different manufacturer, to tbe injury of the plaintiff. McLean v. Fleming, 96 U. S. 245 [24 L. Ed. 828]; Sawyer v. Horn [C. C.] 4 Hughes, 239 [1 Fed. 24]; Perry v. Trufitt, 6 Beav. 66; Croft v. Day, 7 Beav. 84.”
In Howe Scale Co. v. Wykcoff, Seamans & Benedict, 198 U. S. 118, 140, 25 Sup. Ct. 609, 614, 49 L. Ed. 972, Chief Justice Fuller said;
*31 “The essence of the wrong in unfair competition consists in the sale of the goods of one manufacturer or vendor for those of another, and, if defendant so conducts its business as not to palm off its goods as those of complainant, the action fails.”
In American Washboard Co. v. Saginaw Mfg. Co., 103 Fed. 281, 43 C. C. A. 233, 50 L. R. A. 609, it was held by this court in an opinion by Judge (now Mr. Justice) Day that the fact even that the defendant deceives the public as to his goods by fraudulent means does not give a right of action unless it results in the sale of such goods as those of the complainant.
In Newcomer & Lewis v. Scriven, 168 Fed. 621, 94 C. C. A. 77, in which were involved alleged infringements ’ of trade-marks and trade-name, as well as unfair competition, although it appeared that a certain advertisement was calculated to mislead a customer into believing that the product of defendant was that of complainant, this court, speaking through Judge (now Mr. Justice) Lurton, held that, as it was not shown “that any customer was misled into buying garments as made or sold by the Scriven Company which were made by others,” no right of action in that regard existed.
The rule we have stated is recognized by numerous authorities, but those we have cited are sufficient for the purpose. So far as concerns the ornamental dress of the stove, it is clear that, as complainant had no patent on the design, it had no monopoly thereof, and that any one was free to copy it so long ás he did not attempt thereby to palm off his goods as those of complainant, and took due care to guard against any deception of the public into buying in the belief that it is purchasing complainant’s goods. Fairbanks v. Jacobus, 14 Blatchf. 337, Fed. Cas. No. 4,608; Dover Stamping Co. v. Fellows, 163 Mass. 191, 40 N. E. 105, 28 L. R. A. 448, 47 Am. St. Rep. 448; Flagg Manf’g Co. v. Holloway, 178 Mass. 83, 59 N. E. 667; Heide v. Wallace & Co. (3d Circuit) 135 Fed. 346, 68 C. C. A. 16; Saxlehner v. Wagner, 216 U. S. 375, 30 Sup. Ct. 298. 54 L. Ed. 525. And it results from this principle that the adoption by one manufacturer 'of the characteristic features of another’s product, common to articles of1 that class, does not of itself amount to unfair competition. Globe-Wernicke Co. v. Macey Co. (6th Circuit) 119 Fed. 696, 56 C. C. A. 304; Warren Co. v. American Co. (7th Circuit) 141 Fed. 513, 72 C. C. A. 571; Computing Scale Co. v. Standard, etc., Scale Co. (6th Circuit) 118 Fed. 965, 971, 55 C. C. A. 439.
Complainant insists, however, that the unnecessary imitation by one manufacturer of the nonfunctional parts of the product of a competitor, to the extent that the two articles are substantially identical in appearance to a casual observer, and retail purchasers are thus likely to mistake one for the other, is chargeable with unfair competition, although each feature taken separately may have been open to appropriation, as announced in certain authorities, including three cases decided by the United States Circuit Court of Appeals for the Second Circuit. Enterprise Mfg. Co. v. Landers, 131 Fed. 240, 65 C. C. A. 587; Yale, etc., Mfg. Co. v. Alder, 154 Fed. 37, 83 C. C. A. 149; Rushmore v. Manhattan, etc., Works, 163 Fed. 939,
It is further urged that in trade-mark cases the right to protection does not depend upon any particular period of usage, but that, once adopted in good faith and used, the right thereto will prevail against any subsequent user, although no public reputation or notoriety has been acquired; that the right of protection against infringement of trade-marks and unfair competition respectively rest upon the same basis; and that, therefore, the rule in trade-mark cases, as stated, controls this case.
But, whether or not the rule in trade-mark cases is as stated (a question we are not now required to consider), the case before us'is not a trade-mark or a trade-name case, but one of alleged unfair competition, predicated' upon the simulating of the dress of a competitor’s product. And in such case it is clear that identification in the mind of the purchaser of such distinctive dress, as belonging to the complaining manufacturer, is necessary, and that such identifica-, tion cannot well exist in the absence of knowledge or reputation of such characteristic dress.
In this connection it is urged that complainant’s good will and reputation connected with its general line of goods attached to the heater in question immediately upon its being placed upon the market. But if we have correctly readied the conclusion that complainant’s heater had acquired no appreciable public knowledge or reputation, and the dress of the heater was not identified in the public mind as the complainant’s product, the suggestion loses point.
We have no doubt that sales of complainant’s heater have been materially lessened through defendant’s competition. The effectiveness of this competition, in our judgment, has resulted from the activity with which defendant has pushed its heater, the publicity and extent of defendant’s exhibitions and advertising, the advantage which the defendant has, especially in the large and valuable district of Ohio, in being a local manufacturer; and to complainant’s advance of prices for 1907, before which time the prices of the' two competing heaters were substantially the same. This competition was legitimate.
We do not think that the fact that defendant entered the extreme western territory after complainant’s goods had been introduced there justifies a differentiating of that particular territory from the remaining portions of it or from the territory as a whole.
For the reasons stated, the decree of the Circuit Court should be affirmed,