et al. f1. Rouss.
(CfrcuU CO'Wrt, S.,D. New York. December 10,1889.)
,The question of the of a patent, is re8 adjudicf(ta, where it bas been adJUdioated by another judge 6f the same circuit, and the parties 1'.0 the two aotioll8 are the same, and the·records substantially identical.
In Equity. Joshua Pusey, for complainants. John J. Jennings, for defendant.
COXE,J. This is an infringement suit, based upon letters patent No. 218,300, granted to Mills and Hershey, August 5, 1879, for an improvementin bliir-crimpers. The patentWf1s declared invalid by Judge SHIPMAN in tbe circuit court for ;the' district of Connecticut. Hershey v. B14kesley, 33 Fed. Rep. 922. That the'parties to that action are, in legal contemplation, the same as the parties to the suit at bar, and that the records in the'two actions are substantially identical, is conceded. The defendant has taken some additional testimony, but the complainant's proofs 'are the same in evetjrespect as those presented in Hershey v ·. Blakesley. I have examined the recOrd and briefs, to discover. a plausible theory :Upon which the twO causes can be distinguished, so as to justify a re-examination of theissues presen,ted. I find none. The court is now asked to pass upon thesaIfie questionwhich, after deliberate and careful coDsiqerati<)ll, has been decided by another judge of the same circuit, upon precisely the same testimony. There is no precedent for such a course. The matter ieres judicata. The bill is dismissed.
December 2, 1889.)
(Circuit Oourt, D. New
P.lTBNT6 'JOlt INVBNTIONS-PRELIMINARY lNJPNCTION-LA.cHEs. ,
On bill for discovery and accounting of sales of J;latented articles by defendan' under an agreement with complainallt, a' prelimlOary' injunction Will not be' granted to restrain defendant from proceeding further under the agreement, where more than three years have elapsed between defendant's first default in making returns and the filing of the bill, and the delay is not explained, and a final decree may be had in less than five months.
In Equity. On bill for discovery, accounting, and injunction. plication for preliminary injunction. Wetmore &; Jenner, for complainant. Philip J. O'Reilly, for defendant.
PHILADELPHIA SOVELTY MANUF'G CO. 11. ROUSS.
WALES, J. The complaihant has brought suit against the defendant for a discovery, to compel him to make returns of sales and payments of royalties, according to the provisions of an agreement of license between them, and to enjoin him from making, using, or selling any of the patented articles mentioned in the said agreement. By this' agreement, dated April 1, 1885, the defendant was to make monthly returns of sales and payment of royalties to the complainant on or before the 10th day of each month, and to perform certain other stipulations as to places of sale, advertising, etc. It is charged that the defendant has not made any returns since January 1, 1886, nor paid any royalties due since November 30, 1885, and that notwithstanding his default in this regard he has continued to sell the patented articles. The bill was filed July 5, 1889, and,pending a final hearing and decree, asks for a provisional injunction of the same tenor, force. and effect as the injunction thereinbefore prayed. An interlocutory decree of this kind is made only whim the complainant, being free from fault, has been vigilanf in asserting his rights, and it is considered to be necessary to protect his property'or business from irreparable loss. More than three years had elapsed between the first default of· the defendant and the filing. of the bill. This long delay. in bringing suit has not been satisfactorily explained or accounted for, and, as a final decree may be obtained in less than five months from now, the complainant will not suffer much additional loss or damage during the intervening period. A preliminary injunction bas been refused where the laches of the com plainant were less serious than they have been in thisC8se. Sperry v. Ribbans, 3 Ban. & A. 260; Spring v. Machine 00., 4 Ban. & A. 427. In Bovill, v. Orate, L. R. 1 Eq. 388, an interlocutory judgment was refused on the ground of delay, be'C8uSe the plaintiff had known of defendant's infringement in August, and did not file his bill until the following July. See, also, High, Inj. § 7. For the reasOn stated the present application must be refused.
PmLADELPmA NOVELTY MANUF'G
C01n'cuit Oourt, S. D. NI?!IJJ York.
Complainant puts up itS hair-crimpers in packages, io a red pasteboard .b<a, OD tbecover 01 which is a WhiW label with a black border, and In the center the laead of a woman, with hair together with the words" Madam Louie, Commonsense Hair· Crimper. " dealt in crimpers packed in a simile manner, in red boxes with whitelab!lls, and·in theceoterof the label is the hea4 of a female,. surl'ounded by the words,' "The Langtry. Elegante8. One gross, No. 1, Black, Hair-Crimpers." Complainant's crimpers were smallerthan defendant's, and· muen. heavier. and the wrappers: were unlike in length, alild io the words printed therecm. Defendant had the prior right to the use 01 the white label aod the centl,'al vigoette. and the labels were dissimilar in form and general appearance. There was DO evidence that anyone was ever misled by any resemblance between t.Iw 'wOo Bela that defElndant did not infringe complaioant'alrade-mark.
.Joshua P1W!Jj, for
COXE"J· This is an actiop fodhe infringement ora trade-mark. The hill aUegesJhat> the complainant is iengaged in manufacturing and selling hair-crinip.erswhich,are pu,t'upin packages of 12, and wrapped with a. tan-colored paper, which is heldin place by a rubber band. Twelve oftheae paekages are placed ina red pasteboard box,on the cover of which:is a white label, with a: black border, "and,as a distinctive tradein the centeJT, the head. of a ,woman, with hair curled, together with the wortls, 'Madam: Louie t Common-Sense Hair-Crimper.'" The tdefense8 that the,complainant is not entitled to'the exclusive . ,use of, the alleged trade-mark; and j 8eCond, that the defendant does not infringe. 'Ehe defendant in ,crimpersfIDanufactured by the Blakesley Nov,elty Company,. which are packed', ina mannersimiTar to the complainin red: boxes, with white labels,: and are sold by .tbsgross. In the 'center, of the label is. the'head,·oft a female surrounded by-the following words: "The: Langtry. ElegantesJ' One gross,: No. 1, Black, Hairi·Orimpers." ;F.oramQre minute:andaoourate description of the two labels, see Manujact¥ring00. v.NooeltyOO.,:(S7 Fed. Rep. 365:. It will be seen .that the only marked similafity..between' the two is found inthe foot that :.both arewhitej'andha;vethB;oeJilftraLvignette; buUhese.features the de;·febclsnthada perfectright!to better 'right, in fact; than the com;p1ll.inanti;,·: Long beforethe,cqmplaiw:mt's predecessors had adopted their \deeign,the predecessor Milhedefenda.Jat's vendor had sOld crimpers packed, pasteboardl)or; bn the;cover of which. was a white la,heLwitqllrblackborder; inthecemerof the label, "the head ora woman ;with,haitC'\1',rled,1Jand over the. head the words, Busi'ms the' diScontinl1ariceofthis labelfor two or three years, hUt, in· a legal· sense;! it :was'" never So far as the distinctive trade-mark is concerned, there is, manifestly, no liability. The defendant had an indispu,table,.nght tQ the white label and the central vignette, and in other respects there is no resemblance between his ltabel and language, ype, an d gener.. al'peara ceo .. '. .' '.. The to· t:b:e,q"Jestion whether any right of the complainant is violated i tt IS :'!.'....1;t ,t. . . ,· m theative Do . .. . n ... ;.b..,ehave been dem .. ab,sence,,9t'IP:MOQ( that ,pUr9h/l.SerS " , me ,a' siWilari J?ers po. one \lnderlltoodJhe dlsbng ms hand to.t?e deIn. addItIOn to ttbfJldilfel'eMles(0f\.thela:belBf before adverted ,to', the crimpers heaviet-,":":'s:b6x of them are smaller than tM weighing over three times as much. The wrappers, 'unlike. The defendantJs wrapper is about two,NltU>ne-:fourth:\inches in length,
Ilnd contains nothing but the printed words of the "Langtry" white label. Thecomplainaht's, on theeontrary" is: neaili}' four inches. dmlength" .,a.nd in addition to the words of the "Madam Louie" white label, there appears the complainant's vignette, directions far,use,and a caution against "spurious imitations." In short, there are marked differences in everyin the color oft?e boxes and wrappers; and these are so pronpunced and unmIstakable as to overshadow two of similarity. The language of Mr; Justice FIELD, in Tobacco Co. 128 U. S. 182, 9 Sup. Ot.Rep. 60, applicable:, jUdgment of the eye upon the is more satisfactory than evidence from any other source as to the possibility of parties being misled soas to take one tobacco for the other; and tbis judgment is against a.ny such possibility. Seeing, in such case, is believing;. existing ditTerences being at once percPh'ed, and remaining on the mind of the observer. There is no that anyone was ever misled by,thealleged resemblance between the two designs." There is no such evidence here. The proof is overwhelmingly to 'the effect that aplIrcbaser rell:llypre,ferring the. "Madam Louie" crimpers, and desirous of procuring them, could. not be deceived by the defendant's partial blindness, an arrested crimpers l unless she were affiicted mental development, or an unusually heedless disposition. not take cognizance of conditions IdO abnormal. In Adams v. Heisel, 31 Fed. Rep. 279, the court, in dealing with faC1;a, quite similar to tPose in hand, observes: ' , . "The complai nants could not obtain a trade-markfor tbeforDl of'the sUcks of chewing gum they might mantifacture, nor by the use of a peculiar fOl"m and decoration of the boxes they fiayuse to hold the sticks of gum, not in the manner in which the gum might he placed in the boxes. These qualities 'and forms are common to the manufacture, and may be made similar without injury to otbers who may use the same forms. * * * The complainants cannot now so broaden and enlarge their trade-mark as to cover the whole with ornainents and forms of Plltting up the gum,and the colors IIsed in such decorations. and'thereby prevent ot.llers .from using. t.bese forms up gums forsll1l1." " , The trend of the law is towards t4epl'oposition that, ,n ordiof peculiar and color nary circumstanceR, tbe adoption of sign, or alone, unaccompanied by any distinguishing symbol, seal, is not sufficient to constitute. a trade-mark·. 25 Fed. Rep. ,127; Fairbanks v.' Jacobus, 14 Blatchf. 337; chine Co. v. GibbCnBF'rame,17 Fed. Rep. 623; jl(oorman v. Hoge,2 Sawy. 78; Faberv. Faber,49 Barb. 358; Davia v. Davf,a, 27 Fed. Rep. 490j F'al!cinburg v. Lucy,.350al. 52; (Jhernwal Co. v. Stearns, 37 Fed. Rep. 360; Browne, Trade·M;arks, §§ 271, 272. The courts will have time .for little else, if they ulldertake to meddle with and regulate the color and size ot the wrapping,'paper and boxes in which a displays his wares. Trade should nqt be hampered by vexatious parently, ldotri,viLtI., , ' , ; ..··. : .... " ' , ' As the distinctive trade-mark of the complamant has not been infringed, and as the public have not been deceived by the defendant's acts, it follows that the bill should be dismissed.
17. BLAKESLlllY NOVELTY
PHILADBLPHIA NOVELTY MANUF'G
(O('I'CUU Oourt, D.
December 10, 1889.)
Complainant places its hair crImpers in a bright red box, having a white labelt with a black border, and on the label the words, "Madame Louie, Common-Sense Hair. Crimpers. Patented August 5,1879, Wforming a column of four lines above the representation of the head and bust of a with curled hair, below which are the words, "Friaeur Renommee. To hide the crimper, in doing up the hair, turn the ends under." Defendant's are placed in a bright red box, of different box is presented to the eye, on which is a shaRe from ooml?lainant'a box,' as whIte label, bearmg the words, "The Langtry Elegantes," in a column of two lines above the representation of the head of a woman with curled hair, at one side of whichare,tb,e,words, "One Gross, "and A1; the other side the words, "No. 1. Black," and l>elow are the wordsr"Hair-Crimpers." The, use of the representation .' of the woman's head by defenaant'spredecessor antedated its use by complain, . ant's predecessor. 'Hela;that there'" 110 infringement of complainant·s trade, ,mark.
For motion for prelim-
J. This is a bill in equity to prevent the alleged infringetl'\ent ora trade-mark, and now been heard upon final proofs. A motion for' preliminary iI\iunction: had been previously heard and de37 Fep'. Rep. 366. The' fi,nding of facts upon that motion was eorrect, except'tllat I was mistakeniI) saying that "the crimpers are ordinarily sold by' the box,.or are shown to the purchaser in the box." They are sold to the consumer by the small package, from an uncovered red box. What is styled in the bill "the distinctive trade-mark," i. e., printed upon the and the' picture of the head of a woiban with hair curled, or, in other w'ords, the label itself, is n<:>t infringed by the, defendant's label, for the reasons stated in my former opinion. The complltinant'l3 label, with its'words, symbols, and distinctive appearance, been simulated, and the defendant's box, with its not being adapted to deceive or mislead the purchaser, is the use or., similar colors of and of boxes to be enjoined as infringing the ,rights of the com plainan t1 The answermust be in the negunless the compll1inant's trade'-:!park properl)as been imitated to 8otn.e extent,' or, unless there isa colorable tesembhin,ce between the two m!arks. eli sO' or the complaii.!antagainst Rouss (39 :/j'ed. Rep. 273) receritly heard in the circuitcoprt for the southern district of New York upori the' same record which was u'sedin this case, and nothing naeo: be added ,to the statement of the la;w by Judge COXE in regard to the tlMhtsof'a; manufacturer' to the exclusive use of a particular color, when symbol has been simulated. The bill should be dismissed.