S. C. Johnson & Son, Inc. v. JohnsonS. C. Johnson & Son, Inc. v. Johnson
- Reporters:
- , ,
- Before:
- Clark
Lead Opinion
The plaintiff’s motion made on May 20, 1948, from whose denial this appeal has been taken, was a sequel to our decision in 19401 and to the steps taken under it. We then declared — as the only relief to which the plaintiff was entitled — that the defendant must add “in immediate juxtaposition” to the words, “Johnson’s Cleaner,” the suffix, “made by Johnson Products Company, Buffalo, N. Y.” We refused to forbid him the use of his name, “Johnson,” as the district judge had done, although we agreed that that use had “caused confusion among the plaintiff’s customers.” The judgment of the District Court was entered on our mandate on April 21, 1941, and the defendant adopted a new label in which the words: “Johnson’s Cleaner,” printed in blue ink at the top, are immediately followed around the bottom by the legend: “Made by Johnson Products Company, Buffalo, N. Y.,” printed in letters of red ink of the same size. The supplemental complaint alleged these facts and added that the original defendant, John W. Johnson, had turned over the business to a firm of five partners consisting of himself and four others, of whom only one was named Johnson. It alleged that this firm was doing business under the old name, “Johnson Products Company”; that the changed label did not conform to the decree; that the defendants’ use of the name, “Johnson’s,” was “likely to and does cause confusion or mistake, and deceive purchasers as to the source of origin of defendants’ product”; and that the only “effective protection that can be given to the public against confusion, mistake and deceit” was to prevent altogether the use by the defendants of the word, “Johnson’s,” as a brand or trade-mark. The plaintiff urges four reasons why it should be allowed to file this supplemental pleading: (1) that the label does not conform to the judgment; (2) that the original injunction did not give the plaintiff adequate relief or protect the public; (3) that the original defendant had taken in the four new partners; and (4) that the Lanham Act2 has since been passed.
We agree that the judge had jurisdiction at any time to entertain a motion to modify the injunction;3 and it is not necessary to decide whether it was necessary as a preliminary for him to ask leave of this court because of our decision on the former appeal. The cause is now before us, and it would be a barren formality to reverse the order, grant leave to the judge to entertain that motion, have him enter a new order, and compel the plaintiff to appeal again. We shall therefore at once proceed to the merits. As to the first point, we hold that the new label exactly conforms to the decree. As to the second, we hold that it was irrelevant under the Act of 1905, 33 Stat. 724, that the suffix has not prevented all mistake and confusion. Upon this we have nothing to add to what we said before, when we very deliberately assumed that the public might still be confused after the prescribed change had been made. As to the third point, we hold that it makes no difference that the original defendant has now associated himself with four partners, three of whom do not bear his name. The business has continued under its original name and whatever rights it has gained since its origin in 1932, have inured to the benefit of
That act did indeed put federal trade-mark law upon a new footing. The Act of 1905 had made the registration of a trade-mark only prima facie evidence of ownership,5 and the question must be regarded as never finally settled whether it created a substantive federal trade-mark law, as distinct from the common-law of the states, or whether, it merely gave jurisdiction to the district courts and certain procedural advantages to the owner.6 The Lanham Act put an end to any doubts upon that score, and to the confused condition in which those doubts involved the whole subject, especially after Erie Railroad Company v. Tompkins‘.7 These were fully discussed by Judge Wyzanski in his opinion in National Fruit Product Co. v. DwinnellWright Co.,8 but they ceased to be important after Congress provided that any infringer should “be liable to a civil action by the registrant for any or all the remedies hereinafter provided”; 9 and that the registration certificate once become “incontestable” after five years,10 should, with certain exceptions not here relevant, be conclusive evidence of the registrants’ exclusive right to use it.11 This conclusion is confirmed, if confirmation is necessary, by the report of the Senate Committee, of which we quote a portion in the margin.12 Nevertheless, although it is no longer open to doubt that the present act created rights uniform throughout the Union, in the interpretation of which we are not limited by local law, it does not follow that, in determining what these are, we are not to be guided by the existing common-law, especially in regard to issues as to which that law was well settled in 1946. In the case at bar the issue is of the meaning of the following language: “any person who shall in commerce (a) use * * * any reproduction * * * of any registered mark,” which “use is likely to cause confusion or mistake or deceive purchasers as to the source or origin” of the goods on which the owner has used it, shall be liable to civil action. The parallel section of the Act of 190513 beginning at its second sentence was practically the same, except that it subjected to civil action only those who should “affix” the registered mark “to merchandise of substantially the same descriptive properties as those set forth in the registration.” Clearly a change, and a most substantial change, was intended, and the question is what that was.
The law of trade-marks, which is in any event only a part of the law of unfair competition, 14 was originally designed to protect the mark’s owner from the diversion of customers who would otherwise have bought of him. By 1905, however, this had been extended by making the mark in some situations cover goods on which the owner had never used it. So far as we have been able to find, the following are the only decisions in which federal
By 1917 the English courts in a number of decisions, not necessary to consider, had meanwhile extended the cover of a mark or of a make-up considerably further than any of the cases we have cited, or than our own intervening decisions, such as Florence Manufacturing Co. v. Dowd,19 and British-American Tobacco Company v. British-American Cigar Stores Co.,20 and they have developed a rationale of the interests to be protected which was more definite than anything in our own books. In Aunt Jemima Mills Co. v. Rigney & Co.,21 we adopted this reasoning in a case where the infringing goods were syrup and the mark was for pancake flour; that has become the leading case in this country for the now well-established extension of the law of unfair competition in such situations.22
Thereafter the question several times arose whether this doctrine was within the terms of the Act of 1905; that is, whether “substantially of the same descriptive properties” referred to the physical character of the goods to which the protection of the mark alone extended, or whether it also covered any of which the owner of the mark might be supposed to be the source. We twice at least strongly intimated that it meant the second, although we recognized that this did some violence to the literal meaning of the words;23 but the weight of authority was the other way, 24 and in 1946 it was at best most uncertain whether the Act of 1905 went beyond the law of unfair competition in 1905. It is quite enough to explain the change of diction in the Lanham Act that Congress wished to do no more than clear up this doubt — if indeed it was not more than a doubt — and make the protection of the new right coextensive with the law of unfair competition as it was in 1946, just as the Act of 1905 had made it coextensive with the law of 1905. Besides, not only is this a sufficient reason for the change, but there is the strongest possible reason for not reading the language literally, because to do so would frequently result in great hardship to others, and give to the first user of a mark a wholly unjustified power to preempt new markets.
The “Aunt Jemima Doctrine,” as we may for brevity call it, needs to be indeed carefully circumscribed. It recognizes two, but only two, interests on which the
Order affirmed.
Notes
2 Cir., 116 F.2d 427.
§§ 1051-1127, Title 15 Ü.S.C.A.
United States v. Swift and Company, 286 U.S. 106, 52 S.Ct. 460, 76 L.Ed. 999; Dagas v. American Surety Co., 300 U.S. 414, 57 S.Ct. 515, 81 L.Ed. 720.
Kidd v. Johnson, 100 U.S. 617, 25 L.Ed. 769.
§ 16, 33 St. at L. 728.
Pecheur Lozenge Co. v. National Candy Corp., Inc., 314 U.S. 603, 62 S. Ct. 182, 86 L.Ed. 485; 315 U.S. 666, 62 S.Ct. 853, 86 L.Ed. 1103.
D.C., 47 F.Supp. 499.
§ 1114, Title
“It would seem as if national legislation along national lines securing to the owners of trade-marks in interstate commerce definite rights should be enacted and should be enacted now.
“There can be no doubt under the recent decisions of the Supreme Court of the constitutionality of a national act giving substantive as distinguished from merely procedural rights in trade-marks in commerce * * * and * * * a sound public policy requires that trademarks should receive nationally the greatest protection that can be given them.” (U.S.Code Congressional Service, 79th Congress, Second Session, 1946, p. 1277.)
§ 16, 33 St.L. at L. 728.
Hanover Star Milling Co. v. Metcalf, 249 U.S. 403, 36 S.Ct. 357, 60 L.Ed. 713.
C.C. 1880,1 F.7Í8a
C.C. 1892, 18 F. 561.
C.C. 1891, 47 F. 712.
C.C. 1895, 71 F. 873.
2 Cir., 178 F. 73.
2 Cir., 211 F. 933, Ann.Cas.1915B, 363.
2 Cir., 247 F. 407, L.R.A.1918C, 1039.
Restatement of Torts, §§ 730, 731.
Yale Electric Corp. v. Robertson, 2 Cir., 26 F.2d 972; L. E. Waterman Co. v. Gordon, 2 Cir., 72 F.2d 272.
Atlas Mfg. Co. v. Street & Smith, 8 Cir., 204 F. 398, 47 L.R.A.,N.S., 1002; Rosenberg Bros. & Co. v. Elliott, 3 Cir., 7 F.2d 962; Beech-nut Packing Co. v. P. Lorillard Co., 3 Cir., 7 F.2d 907, 969; Walgreen Drug Stores v. Oboar-Nester Glass Co., 8 Cir., 113 F.2d 950; Bulova Watch Co. v. Stolzberg, D.C., 69 F.Supp. 543; Triangle Publications, Inc, v. Rohrlich, D.C., 73 F.Supp. 74.
2 Cir., 105 F.2d 908, 910.
gee also Arrow Distilleries v. Globe Brewing Co., 4 Cir., 117 F.2d 347; Durable Toy & Novelty Corp. v. J. Chein Co., 2 Cir., 133 F.2d 853.
Dissenting Opinion
(dissenting).
In its affirmance of the summary dismissal of the plaintiff’s application the court has taken a long step in the interpretation and limitation of the new Lanham Trade Mark Act; in effect it has cut this Act so extensively heralded by sponsoring groups down to a size consistent with the court’s conceptions of public policy. While I regard these conceptions highly, I am troubled by the fact that the Act is rather clearly the expression of contrary views vigorously held by persons and groups who were able to exercise a persuasive influence
It may be that when a court feels a responsibility to curtail the possible scope of undesirable legislation, the best thing it can do is to rest its case straightforwardly on policy grounds without getting involved in the views expressed by the legislative proponents. Even if we concede as much, I still think it extremely desirable to await the full telling of the story, rather than to bar the way summarily at the beginning.2 As it stands, it must be assumed that the new legislation affords no relief, though all the allegations of the plaintiff he accepted in full.3 This is a pretty extensive position and may well be unnecessary; a hearing of the facts might show that the plaintiff had a somewhat exaggerated view of its own grievances. And if they are true as stated, it still is not clear but that some additional remedies, perhaps not as much as are asked for, might he devised which would make a better adjustment of the troublesome situation between these parties.4 Whatever may be the law, we cannot be very happy at a decree which, on the plaintiff’s allegations, has proven completely stultifying in that it takes away with one breath what it appears to grant by way of relief on another. Summary disposition of the case is a repudiation of any attempt to find a real workable remedy for an adjudicated wrong.5
Since I am in very real doubt as to how strict should be the interpretation of the new Act, I shall not try here to advance a definitive interpretation in contrast with that stated in the opinion, but only to suggest the questions which arise in my mind. As is pointed out, the Lanham Act certainly made extensive and far-reaching changes
Even though the policy stated, the hardship to others and the unjustified power given the first user of a mark to pre-empt new markets, is compelling, yet there are countervailing arguments which have appealed to many. This is not a monopoly of a natural product or of an invention, but of a name or mark built up by judicious advertising. The question is insistently
I must also express a word of concern about a point of practice, suggested somewhat indirectly in the opinion, that there may be some need of permission from this court for the filing of the new application by the plaintiff. Under the clear-cut provisions of the Federal Rules there seems to me such a complete absence of place for any such restriction that I regret the judicial doubt thus imported into an otherwise clear situation. Perhaps question has arisen because permission was sought below under Federal Rules of Civil Procedure, rule 15(d), 28 U.S.C.A., and this seemed like seeking to amend a pleading in a case in the appellate court; though even here the functions of the appellate court seem properly limited to the judicial review of the judgment itself. See Markert v. Swift & Co., 2 Cir., 173 F.2d 517. But since the
I would reverse and remand for a hearing of the parties’ evidence.
As in Best & Co. v. Miller, 2 Cir., 167 F.2d 374, 378, and see also California .Apparel Creators v. Wieder of California, 2 Cir., 162 F.2d 803, 900, 901, 174 A.L.R. 481, certiorari denied 332 U.S. 816, 68 S.Ct. 156, 92 L.Ed. 393, and LaTouraine Coffee Co. v. Lorraine Coffee Co., 2 Cir., 157 F.2d 115, 118, 119, certiorari denied Lorraine Coffee Co. v. LaTouraine, 329 U.S. 771, 67 S.Ct. 389, 91 L.Ed. 663.
See L. Hand, J., dissenting in California Apparel Creators v. Wieder of California, supra. Tlie fact that I think this is an inappropriate case for a summary judgment does not, however, signify disapproval of the salutary principle of the rule itself, F. R. 56 — as distinguished from some of the restrictive judicial . glosses put upon it. See my article in 15 Brooklyn L.Rev. 1, 9, also 48 Col.L. Rev. 780; 45 Col.L.Rev. 964 ; 61 Harv. L.Rev. 375; 55 Yale L.J. 810; 34 A.B. A.J. 187.
Thus plaintiff desired to introduce -evidence of an extensive survey showing the widespread acceptance by housewives of plaintiff as the producer of defendants’ product, notwithstanding the operation of the injunction previously entered herein.
The defendants’ label, which is here fully approved, does appear to be quite similar to the plaintiff’s; it would not seem out of the way now to order changes which would tend to compel dissimilarity. Among points which might be considered are the similar yellow background (not directly touched upon in the injunction), the emphasis here permitted the defendants to emphasize a company, “Johnson Products Company,” as is the plaintiff, rather than a collection of individuals, as are the defendants, and the substantial nonreadability of the location, “Buffalo, N. Y.,” by reason of its position in the oval lettering on the right side reading from the bottom up on the label.
Thus, in accepting the finding below of confusion among the plain tiff’s customers caused by the defendant’s use of the name we said: “We should have so found ourselves; and indeed the testimony leaves no doubt that, while he did not actively instigate his employees to mislead customers, the defendant instructed them not to undeceive any who were already misled and to take advantage of their confusion.” 116 F.2d 427, 429.
Thus, see, inter alia, the provisions as to registrable trademarks,
It should be noted, however, that there is strong authority for what is called the “federal” rule or is “popularly known as the Hand Doctrine” from its original impulse in the Second Circuit, cf. Lunsford, op. cit. infra, 35 Va.L.Rev. 214, 217, that relief will be granted as between noncompeting goods if there is confusion as to the source. Thus see, e.g., Standard Brands v. Smidler, 2 Cir., 151 F.2d 34, the analysis by Judge Yankwieh in Sunbeam Corp. v. Sunbeam Lighting Co., D.C.S.D.Cal., 83 E.Supp. 429, of Ninth Circuit cases, including Stork Restaurant v. Sahati, 9 Cir., 166 F.2d 348, the effect given by Judge Wyzanski to the new Massachusetts statute, Stat. 1947, c. 307, in Food Pair Stores v. Food Fair, D.C.Mass., 83 F. Supp. 445, and the extensive collection of cases in the annotation to Lady Esther, Ltd. v. Lady Esther Corset Shoppe, 317 Ill.App. 451, 46 N.E.2d 165, 148 A.L.R. 6, at pages 12, 36-39, 48, 53-92. And this appears to be the view of a great many commentators; thus, in addition to the articles hereinafter cited, see the authoritative statement in 3 Restatement, Torts, §§ 730, 731, 1938. Some commentators speak specifically of the Act as a codification of this rule of law. 2 Wyo.L.Rev. 66; 26 N.C.L.Rev. 424. For the view that the recent trend of cases (prior to the Act) has been to restrict the doctrine, see Zlinkoff, Monopoly Versus Competition; Significant Trends in Patent, Anti-Trust, TradeMark, and Unfair Competition Suits, 53 Yale L.J. 514, 538-541, and Brown, op. cit. infra, 57 Yale L.J. 1165, at 1193. So which view, if either, does the new Act codify?
I have cited some of these references in the cases in note 1 supra. See also the discussion in the February, 1949, issue of Fortune, vol. 39, p. 147. Thus Miss Daphne Robert, author of The New ‘Trade-Mark Manual, stresses the change in wording from the former Act which is here so important and goes on to say flatly of the now Act: “The goods or services need not be identical or even remotely related. If it is shown that purchasers .are likely to be misled by the mark into thinking that the same concern is selling, ■ offering for sale or advertising the goods • or services of both parties, relief will be granted.” Commentary on The Lanham Trade-Mark Act, 15 U.S.C.A. page 265, at page 286, compare Brown, Book Review, 58 Yale L.J. 511, 512. This is the -view she takes in her Manual, pp. 162, .163, and is of course not unusual among trademark lawyers, e.g., Callmann, The “Sunkist” Decision: Trade Marks at the Crossroads, 38 Trade Mark Rep. 304, 308; also references in note 7 supra and in the text infra.
But the court there said “the words ‘the same general class of merchandise’ and ‘goods of substantially the same descriptive properties’ are facts essential to infringement under the 1905 Act, and not under the Lanham Act.” Its actual decision is thus explained: “In any view of this case, the record is wholly devoid of any finding, or substantial evidence to support a finding, of a likelihood of confusion as to the source of origin, as required to constitute infringement under the Lanham Act.” 166 F.2d 971, 973, 975. Hence it is not in point as to the present case in view of the clear finding supra note 5.
Note also the precise provisions of F.R.’ 60(b) that a motion thereunder “does not affect the finality of a judgment or suspend its operation,” thus rounding out the special and separate character of the proceeding, as therein fully described.