159 F. 248 | U.S. Circuit Court for the District of Eastern Wisconsin | 1908
(after stating the facts as above). The record in this case is crude and unsatisfactory, resulting largel)^ from the fact that the defendant was not able to employ an attorney and has undertaken to manage his own case. The result was what might have been expected when one party is represented by shrewd counsel and the other side is without professional guidance or protection. The efforts of defendant to cross-examine were thwarted by technical objections, while the rules of evidence were not scrupulously observed in shaping up the complainants’- proofs. No evidence was offered before the master by the defense. Subsequent to the closing of proofs a stipulation was entered into admitting in evidence all the proofs taken in the interference proceeding.
This case is sui generis. It is not the ordinary case where a trader has, by the use of a uniform brand or symbol, built up a large demand for his product, whose character and genuineness are attested by his trade emblem. On the other hand, this symbol was specially adopted and prepared for use by Mr. Selle in the Milwaukee territory. It was designed by Boak & Co., the representatives of complainants, after Selle had agreed to handle complainants’ product in Milwaukee. It was then sent on to Selle for his approval, and after-wards transmitted to the complainants, who prepared the brands and sent them on to Selle. The two brands intended for the Milwaukee market were called the “Globe” and the “Banner,” and the Globe were to be used on the superior quality of goods. It appears to have been the policy of the complainants to give any broker handling their goods one or two brands under which he was expected to build up a trade. Thus it appears that complainants were using some 12 to 15 other brands in various territories of the United States. The same quality of fish was shipped under various brands. For instance, the “Flag” brand and the “Globe” brand were used indiscriminately. Therefore whatever of value the symbol acquired in the Milwaukee market was directly attributable to the efforts of Selle and the defendant in advertising and selling complainants’ product.
Another distinguishing feature in the case is that the defendant is not charged with imitating or simulating a well-known trade-name for the purpose of pirating an established business. The use of the
The disclaimer by the defendant in April, 1905, upon the adverse decision of the Patent Office, appears to have been made in the utmost good faith. This was evidenced by his willingness to release all claim to the foreign registration. It appears that he signed such a release submitted to him by complainants’ attorney. Furthermore, he ceased absolutely to use the symbol for about 15 months before the bill was filed. Over %r/2 years have now elapsed since the decision of the Patent Office, and there has been no actual or threatened invasion of complainants’ rights. Under such circumstances, it is difficult to see why complainants have not had everything that an injunction could confer. Kane v. Huggins (C. C.) 44 Fed. 287; Brammer v. Jones, 3 Fisher, Pat. Cas. 340, Fed. Cas. No. 1,806; Brennan v. Emery-Bird-Thayer Dry Goods Co. (C. C.) 99 Fed. 971. In Clark Thread Co. v. Clark Co., 55 N. J. Eq. 658, 37 Atl. 599, the court say:
“The principle upon which the injunction goes is that the defendant was a wrongdoer when the bill was filed, and, having been a wrongdoer once, he may be so again,” etc.
It is strenuously urged in argument that, although denying the injunction, equity would retain jurisdiction for the purpose of an accounting. But this contention has been set at rest by the Supreme Court in Root v. Railway Co., 105 U. S. 189, 26 L. Ed. 975, where the court say:
“Our conclusion is that a bill in equity for a naked accounting of profits and damages against an infringer of a patent cannot be sustained,” etc.
If complainants have suffered damage by act of defendant, there is a complete and adequate remedy at law. It is unnecessary to discuss the numerous authorities cited by complainants’ counsel. We have carefully examined them all, and find peculiar circumstances which differentiate them from the case at bar.
It is doubtful whether the proof shows any substantial loss or damage resulting from alleged infringement which would warrant an accounting. It appears that complainants’ herring have been sold since August, 1904, in Milwaukee by Kuehn under the “O. K.” brand, and that their business has been constantly increasing; but I am inclined to rest the case on the proposition that the proofs do not warrant equitable interference by means of injunction.
