COLEMANetal.17. }l'LAVELet ltV
(Otrcuit Court, D. Oregon. December 26,1886.)
Where complainants have built up a business as agentsfortne sale of ,eanned &almon, and in such business have been in the habit of usil;1/1: a printed label placed, on the cans, giving their firm name and a'statement that they were the sole agents for such :brand of canneds!l<imon, injunction will lie to restraiJl the false and fraud, ulent use 1>Y defendants of that part 9f a label which represents that complainants are tbe sole agents for defendants' salmon, whether defendants' salmon be of an equal or inferior quality to those 801d by COJJ1plainants.
W. ,FUlton, for .' , Robert L. McKee and George, W. Yocum, for
bill for; ihJuIlction.
DEADY,'J. This suit was commenced on 8, 1886. It is prosecuted by the plaintiffs, William T. Coleman,F. S. Johnson, C. C. Coleman, and Richard Delll.field, citizens of California, to have the defendants, George 1j'laveland'Samuel Elmore, citizens: Sf Oregon, enjoined from using a certain label On salmon packed by thein, or'so much of the' same as repre$erits that the plaintiffs ,are the agents fot' the dispositioll of such article. ' On the filing 'of the billarii order was made requiring the defendants to show cause, 'wlly a provisional injunction. shoUld not issue, and that in the mean ', the defEmdants be The matterwll.s subse411ent1y heard on the bill and' sundry affidavits ' produced by the plaintiffs arid one by' the defendants. .i The materi14 facts appea.r to be as follows: , ', That long prior to the year 1881, and ever sin'ce, the plaintiffs have been, and no\V'are,"engaged;at San FranciscO,: urider thE! firm bame()f Wm. T. Coleman & Co., in the. of selling Colum.oia. river canned salmon, as the agents of It large number of persons 'enga'ged in packing said salmon. That in the conduct of said business the plaintiffs are accustomed to guaranty the. good packing and merchantable quality of' said. salmon to the purchasers thereof, and to have printed on a. laQel' piacedthereQn the said firm name,ofWm. T. Coleman &Co., as the sale agElnts of such brand' of camied salmon. .That during said time the plaintiffs have disposed of Such salmon in all the markets of the woHdj and at great expense to themselves in establishing agencies, advertising, by fair and honorable dealings, have introduced into such markets and established there a demand for tbebrands of salmon represented by thanl. That what is kIiown as the "Columbia riyer spring salmon.": which istaken between April 1st and August 1st of eachyear,is the m6stb demand,and cotrirnandsthe highest price in the markets; and aU iswmon taken after that time on said river, or at any time elsetrhere, is' inferior in quality, and less in demand, and commands less price, than . '. said spring salmon." On August 1, 1881, a corporation, the Union Packing Company, was formed under the of Oregon, to engage in canning and packing
salmon at Astoria, and SQ<iln after entered into a contract with the pllrlntiffs whereby the latter agreed to make advances to the corporation to en1j.ble it to carryon its business, and also became its sole agent for the sale of its fish. That thereafter said corporation, through the agency of the plaintiffs, pad lithographed a parti-colored label, nine and three-quarters inches long and four inches wide, tl) be placed on the cans of salmon put up by it, which contained the following: In the left-hand division, a tree and a salmon,-the latter on a dish, as if prepared for the table; and on three sides of it the words, "Union Packing Co., Astoria; Oregon. Fresh Columbia River Salmon." In the right-hand division, which is only two inches long, the words, "Wm. T.Coleman & Co., Sole Agents; San Francisco, Ca1.,U. S. A.," with directions in the lower ,half thereof for opening and serving; which labels were used by said corporation in its business, until the assignment of its property for the benefit of its creditors,. on July 31,1884; and that in said year,. and. prior to said assignmentjsltid corporation procured 500,000 of said labels to be priuted for its use in said business. In August, 1884,81 compromise and final settlement was had,between the plaintiffs and the company ,contained in a written offer by the latter, dated August 9th, to deliver the former 5,000 cases of salmon,;Lpey repa, it certain drawbacks and premiums, and a written acceptance thereof, by, the plaintiffs. dated August 23d.. The. offer of thepl;l.Cking company contained the following clause: "And said Union PackingCoQlpany,clahn the right to use thelabeJ,atheynow use on all salmon they shall have packed in the year 1884;' . .' '. Oll,])t1cember 2, 1885, the: Qompany and its assignee, by separate deeds, con'Y'eyed certain real property In Astoria, presumably the nery,to,thedefendants,.andon the E!ame day the former made a bill of sale to toom of a lot of. personal property and l1laterial, sllcb pertains to a cannery, including "one hundred thousand salmon lltpela, mo.rie;ol" !JeSs, (used by 'Union Packing Company on salmon .aJlandsingula.rourright. title, and interest ill and to corporation's trademark;box-:brand, in packing salmon." !tis charged ill the bill the defendants, On November 5, ,1886, placed at:least 1,350 cans 0£8alooon, wHh these labels on the· cans, in a warehouse .at Astoria, for export to domestic or foreign ports, as.(}pportunitymight offer;alld; t11at, if the defendant$ are permitted to said fish,·.the reputation and value of the ,brands of salmon by the will be much injured and depreciated in the of the world, and plaintiffs thereby ,greatly and irreparably damaged; . audit is. admitted in the. affidavit of the defendant that 654 cases of salmon have been labeled. by. the defendaats with copies .of. the. label above',desctibed,: and stored for export ,as and it also ad·,'.mitted ,on the argument that the fish taken, t4e river, and not the Columbia.. ':'. J'Thedefendants QQntelld that the Ill-bel, aaa,w4ole, constitutes a ;trade-mark; it1fwhichi theyhave;t4e exclUSiye, proper.ty;,b.ll:t that tbe wqrds on "Ithe righHlandof the :bJ.beldQ not a:q.d, tba,t,i ifijlley
might, not having been recorded as provided by statute, (Gen. I-Jaws Or. 659,) the plaintiffs cannot claim any right to the exclusive use of them. Generally, words in common use may be adopted as trade-marks, if at the time of their adoption they were not employed to designate the same or like articles. The office: of a trade-mark is to indicate with certainty the origin or ownership of the article to which it is affixed. Ghnal OJ. v. Clark, 13 Wall. 322; Browne, Trade-Marks, §§ 39, 144. But the plaintiffs do not and need not claim that the words "Wm. T. Coleman & Co., Sole Agents, San Francisco, Cal., U. S. A.," constitute a trade-mark, or that, abstractly conSidered, they have any exclusive right to the use of them. Their claim is that by means ofthese words, so placed and used, the defendants are guilty of a false and fraudulent representation, to their injury as well as that of the public.. After a careful examination of the subject, and particularly the discussian contained in the interesting work cited by counsel-for defendants, (Browne, Trade-Marks,) I am/satisfied that my impression at the argument is correct. This is not a case of trade-mark at all, but one of a false use ofa label, with intent to injure the plaintiffs as well as the public. No one ever had or could have the right to use so much ,of this label as represents 'that the plaintiffs are thea:gents for the sale of the fish in the can on which it is placed without the plaintiffs' consent. The right of the Union Packing Company to the use of these labels originated in the oontra<lt with the plaintiffs, by which the latter were constituted the sole agent$ -for the fish packed by the former; and when the relation terminated, and the accounts between tbeparties were settled, as appears by the agreement ·of August 9 and 23, 1884, the corporation, in effect, acknowledged that its right to the use of this label ceased, when it stipulated therein for the right to use the same after the cessation of such agency for the pack of that season, which was then probably already labeled. By the sale to them on December 2, 1885, of the labels on hand, the defendants acquired no more right to the· use of them than the corporation had. Doubtless they acquired the right of property in the material, and might make any lawful use of them·. By cutting off the right-hand part relating' to the agency of the plaintiffs, they might use the remaining or descriptive part on cases of Columbia river salmon; but to use even that part of it en Tillamonk salmon would be a fraud on the public as well as all perSons engaged in the packing and sale of the former fish; and, if the left-hand part of this label constitutes the la:wful trade-mark of the Union Packing Company, the defendants, under the sale aforesaid, may have the exclusive right to the use ofit, unless the failure to record it under the Orep;on statute will prevent them. The two parts of this label are distinct and separate. The plaintiffs -make no claim to restrain the use of the descriptivepal't; and the agency part no one has any right to use without their consent. The only purpose the defendants can have in usinp; the plaintiffs' part of this label is to avail themselves of the reputation the plaintiffs have established in the markets of the world, as dealers in canned salmon; and,
, COLEMAN V. FLAVEL.
even if their fish were in all respects equal to those sold by the plaintiffs, still they would, by means of false representations as to the plaintiffs' agency in the matter, so far divert or appropriate the good-will of plaintiffs' business, that has cost them time, money, and good conduct to establish. However, the fact is the defendants' use of this label-at least, the agency part ofit-on the fish in question involves a false and fraudulent representation calculated and intended to deceive the public, and injure the plaintiffs, by palming off on the former, in the name of the latter, an inferior article of salmon for a superior one. The defendants are not only seeking, by this means, to appropriate or trade on the good-will of the plaintiffs' business, but their conduct tends inevitably to injure or destroy such business. The defendant Elmore, in his affidavit, says that since the commencement of this suit he received an order from a merchant in Chicago for 450 cases of this salmon; and adds that the party sending the order knew that it was not the Columbia river salmon. But he does not state that such party was also aware that the plaintiffs were not, in fact, the agents for its sale; that the label was false in this particular, as well as in the origin and character of the fish; and, if the party was truly informed on both these points,does it follow that he would inform the retail dealers and customers, to whom he might dispose of the fish, that it is not what it purports to be, but a spnrious article, with which the plaintiffs have nothing to do? As was said by the chancellor in Coats v. Holbrook, 2 Sandf. Ch. 597, in answer to a like attempt to palliate the immorality of a similar transaction: "The idea is preposterous. * * * Labels, etc., are not forged, Munterfeited, or imitated with any such honest design or expectation." The Jaw of this case, considered as one of an unauthorized and fraudulent use oftbis label, including the representation that the plaintiffs are the sole agents of the fish on which it is placed, is well stated in A880ciation "l. Piza, 24 Fed. Rep. 149. The plaintiff was a brewer in St. Louis. and exported to South -American ports beer in bottles, labeled "St. Louis Lager-Beer," where he had established a profitable trade in that article. The defendant shipped beer from New York to the same ports, labeled in the same way, and there made sales thereof under the impression on the part of the purchasers that it was really the beer of the plaintiff. On motion for an injunction, (Circuit Court, S. D. New York,) the court held that while the plaintiffconld not "have an exclusive property in the words 'St. Louis,' as a trade-mark, or an exclusive right to designate its beer by the name of' St. Louis Lager-Beer,' yet, as its beer has always been made at that city. its use of the designation upon its labels is entirely legitimate; and if the defendant is diverting complainant's trade by any practices designed to mislead its customers, whether these acts consist in simulating its labels, or representing in any other way his products as those ofthe complainant, the latter is entitled to protection. It is un,necessary, for present purposes, to consider whether the complainant has
trade.mark, orcarihave a technicar trade-mark, in the name or, 'St. Louis.' It is sufficient that it was lawful for the complainant to use that name to designate its property; that, by doing so, it- has acqllir.ad a trade which is valuable to it; and that the defendant's acts are fraudulent, and create a dishonest competition, detrimental to the complainant." As to the right of a party to be protected by injunction against an unlawful competition in trade by means of a simulated label, see, also, Bro,vne, Trade.Marks, §§ 93, 95, 96, 538. '. The defendants have. no right to the use' (>f this label, as against the far as it represents them as being the sole agents for their fish; and it, is not only a fraud on the plaintiffs, but a gross imposition on the public, for them to do so. The injury.to the plaintiffs arising from the.conduct of the defendants in this respect is one that.cannot be compensated for in damages, for they cannot be computed,'alld therefore they' have no plain, adequate remedY!1-t law, and are en'titled to relief inequity by injunction. Let an injunction issue restraining the defendants from using the right-hand division ofthe label, or, so m.uch thereof as represehts the plaintiffs as being the agents forthe disposition of the fish contained in the can on which it may be placed. '
Co. v. ;McKEy.
January 6, lllllO.)
At Law. On demurrer to declaration. Sheldon. <to Sheldon, for plaintiff. Jarnea R. Doolittle, for defendant.. GRESHAM, J. The declaration avers that inNovember,1888, 1I. W. Wetherell, a mercbantof Chicago, was indebted to the plaintiff, for goods