FEDERAl, REPORTER, vol. 47.
The importer applied for a review of the decision of said board by the United States circuit court. Curie, Smith & Mackie, for importer. Edward Mitchell, U. S. Atty., and Henry C. Platt, Asst. U. S. Atty., for collector. I,ACOMBE, Circuit Judge.. The decision of the appraisers is reversed, and the article is classified either as" rags," at 10 per cent., or as" waste," at 10 per cent., under paragraphs 481 and 493 of the act of March 3, 1883.
CELLULOID MANUl;"G Co. v. READ.
(Oircuit Court, D. Oonnecticut.
TltADE-MARKS-WHAT WILL BE PllOTECTED.
Tbe wOl"d "Celluloid, "being a new and arbitrary word coincd by plaintiff, and applied to goods of its manufacture, is a valid trade-mark, in tbe use of which plaintiff is en titled to be protectcd, though the term has become so generally known as to have been adopted by the public as the common appellative of the article to which it is applied. . . But the use of the term by defendant as applied to an article of his manufacture, "Celluloid Starch," is not sucb as to induce the public to believe that the starch was connected with plaintiff or a product of its manufacture, and hence it is not an infringement of its trade-mark entitling plaintiff to an injunction. The fact that a method might be devised by which plaintifl"s article, "Celluloid, " could be converted into a substitute for starch, and the possibility that it may in the fu.ture desire to make such an article, and put it on the market, are too remote to entitle it to an injunction against such use of the term by defendant.
SAME-WHAT CONSTITUTES INFRINGEMENT·
In Equity. Rowland Cox, for plaintiff. Henry G. Newton and Henry F. Hall, for defendant.·· SHIPMAN, J. This is a bill in equity for an injunction against the unlawful use of a trade-mark. The plaintiff' was incorporated in 1871, by the name of the "Celluloid ManUfacturing Company," for the manufacture and sale of "celluloid, or solid collodion, and its compounds, and articles made therefrom;" and ever since has existed under said name, has been constantly engaged in said manufacture, and has done an extensive business in producing a great variety of articles of use or ornament which contained, in whole or in part, the substance called "Celluloid." About the year 1870 the Messrs. Hyatt invented and patented a process for the conversion and manufacture of pyroxyline into a solid, to which, after the manufacture had developed and been materially improved, they gave the arbitrary or fanciful name "Celluloid," a name which has ever since been applied to the article, as manufactured 1:.>y the plaintiff, which apparently succeeded to the trade-mark rights
and became the owner of many of the patents of the Hyatts. The substance has had a wide reputation and popularity on account of its beauty and utility, and the great number of uses of varied character to which it can be adapted. It has been extensively used for the outside portion of collars and cuffs, whereby these articles became impervious to water, and retained the smoothness and glossiness of highly starched linen; but celluloid cuffs are easily distinguished from starched linen cuffs. Celluloid has never been used as a starch, or as a substitute for starch, unless the manufacture of collars and cuffs may be deemed to be such, and there was no testimony that the plaintiff looked forward to its use as starch. The learned scientific expert for the plaintiff testified that it seemed to him not only chemically possible, but highly probable, that a method might be devised by which celluloid, as manufactured at present, could be converted into a starch-like body, fit for use as a substitute for starch, and very possibly presenting modified properties which would render it superior to ordinary starch, and more desirable for such use. The plaintiff has manufactured lacquers and varnishes containing pyroxyline, and an ink towhich it gave the name"Celluloid Ink, "which did not contain pyroxyline. The defendant, under the name of the "Celluloid Starch Company," is manufacturing and selling a powdered laundry starch, which he calls" Celluloid Starch I" and which he presents to the public in packages containing labels which call it by that name, and represent that the article is a new one, and possesses valuable properties, and is "the latest practical invention of the times." It is, simply, prepared starch, and has nothing in common with celluloid, as heretofore used and developed, though cellulose and starch in ultimate chemical composition are alike. The complainant alleges in its bill that the complete preservation of the identity of its corporate narne is a matter of very great consequence to it, as affecting the good-will of its business, its custom, its credit in the market, and the reputation of its goods, and that it has an exclusive right to the use of its name, and to the 'use of the designation" Celluloid" as a trade-mark or trade name, and that there can be no lawful use of the word "Celluloid" as a trade-mark except in connection with the sale or use of its products. The bill further alleges that the defendant's use of the word "Celluloid" must cause his article to be recehred by the public as an article made by the plaintiff, or as one co'ntaining its product, and that his use is an injury to the plaintiff, and unlawful, because it has the effect to exclude the plaintiff from the enjoyment of its right to use its trade· mark upon a class of articles, to-wit, starches and coatings of different kinds like those upon collars, other examples of which it 1ilay at any time produce, and prays for an injunction. The first important question in the case has been settled, so far as this court is now concerned, by the decision of Mr. Justice BRADLEY in eelluloidManuf'g Co. v. Cellonite llIanuf'g Co., 32 Fed. Rep. 94. The Cel10nite Company was manufacturing, under the name "Cellonite," the same article which the Celluloid Company had long manufactured, and which the corporation of the Cellonite Company had previously manufactm'ed under the name "Pasbosene." The plaintiff's bill prayed for an injunction against the use of the name "Cellonite," upon the ground
The justice, after quoting with :approbation the conclu'sion of the New YorkcQu,rt of appeals , as .stated Selchow v. Baker, .93 N. Y., 59; said: " . "I think it'perfehtly as matter of law, that the complaiMnt is enti<fled to. the exclusive use of the word 'Celluloid' as it trade-mark." .' . .1hdge 'RAPALW'S dearstate't#eht ofthe conclUSIon, .of the court of ap'peals WliS as f0Uow's:."· , . ' , ., . "Olu:conclus'iOIl where a manufacturer has invellted a new name, conSisting either o(a hew Word or a W\lrd or words in c9niinon use, which he has for the first time to his own manufacture, or to an articl'e manu.factured'byhim; to distinguish it from thOse manufactured and sold 'byothers, and,thename thus adopted ,is not genuine. or descriptive of the article, its qualities, ingredients, but, is arbitrary or fanciful, and is not used n;u:}relyto denqt;egrade or qu,tli,ty, in the It.h,as, known. that It nas been adopted by the publIC as the ordmarj" appellatIOn of the i<
i ; ·
is .such; an., u!nlawful use tpat it should be restrained. 1'<;1:. lt0!3.wer; this question, thc the; :Q\vner's property a trade-il1ark,anq.th,e character of the actwhich,is held toinjuriously affect his property rights, ianc;i to call for the interposition of a court of equity, must be ascer4tined. of a trade-mark and the ex.tent of property in its use have. ofJate, frequently discussedLy the supreme court, and the definitions by Mr. Justice STRONG, in Canal Co. v. CUlrk, 13 Wllll. 311, have been universallyapproved al1ll ' 1'he ju(lge, after saying that "the ,qffice of a tradecilllf.rk jo point the origin or ownersh,i,p of the article to w,hioh His affixed, or,juother words, to givenqtic,e.who 'was the .' " . "Where rights to the exclusive use ofa trade-mark are invaded, it is invariably held that the of theWI'0ng'consists in the f\alfl of the goOds of one vendol' as tbose of another, and that it is only wilen. this false rep'resentation is ditectly or indirectly made that the party. Who appeals , to 'a oourtofequity'cari have relief." .,
CELLULOID MANUF'G CO. ·V. READ.
To the same effect,. Judge BRADLEY said, iIi Celluloid Manuj'g Co. v. Cel· lonite Mamif'g Co., supra: . "The essence of the law of trade-marks is that one man has no right to palm off, as the goods or manufacture of another, those that are not his. This is done by llsiI1g that other's trade--mark, or adopting any other means or device to create the impression that goods exhibited for sale. are the product of that other person's manufacture, when they are not so." This use nmst be of such a character as to induce the belief on the part of the public that the goods which are sold are of the plaintiff's manufacture, and to cause danger that either the plaintiff will be injured or the public will be deceived. The deceit of the public, and the can· sequent injury to it, are as much to be regarded by a court of equity as an injury to a plaintiff's business. It therefore follows that the right of an owner of a trade-mark is not a right to its exclusive use everywhel;e and under all circumstances. He cannot prevent its use when the use is entirely innocent, and represents nothing in regard to the plaintiff's connection with the goods, and does not impose upon the public. Thus it has been said that an iron manufacturer who uses a lion's head as a trade-mark cannot prevent a linen manu facturer from using a lion's head upon his goods. Ainsworth v. Walmesley, 35 Law J. Ch. 352. But it does not follow that because a manufacturer never made a particular class of goods his trade-mark can be impressed by another manufacturer upon that particular class, which is akin to the articles in the manufacture of which the owner of the trade-mark made his reputation and made his mark of value. Thus the Collins Company, a corporation which had, by its charter, a right to manufacture all articles of metal, had, from 1834, a valuable trade-mark which it used upon edge tools, picks and hoes, but did ndt, before 1856, a digging tool, such as the shovels upon which, in 1856, its rival placed the Collins Company's trade-mark. The claim that the defendant could appropriate the Collins Company's well-known trarle-mark upon shovels, and obtain a right thereto, prior to that of said company, upon shovels; was justly regarded as unsound. Collins Co. v. Ames, etc., Corp., 20 Blatchf. 542, 18 Fed. Rep. 561. To the same effect is Manufacturing Co. v. Garner, 54 How. Pl'. 297. It is plain to perceive that, in the extreme case of the lion's head, there would be no injury, while in the shovel case there was a palpable injury by the lawful appropriation of the trade-mark. Between these two extreme cases the circumstances may be very varied, and oftentimes it will be difficult to determine whether the a.ppropriation of another's trade-mark is:an injurio.t1stheft or is a harmless use. An example of this difficulty is found in Eno v. Dunn, L.R. 15 App. Cas; 2.52. Dunn sought to register, as a trade-mark, the words, "Dunn's Fruit Salt BakingPowder." Eno opposed the application, because he had used the designation "Fruit Salt" fora .powder used for producing an effervescing drink. This powder had acquired a high reputation and popularity. There was testimony from four persons that the Eno article had been used, in exceptional cases, asa baking powder. The only question was whether the proposed use of the term "Fruit Salt" would be calculated to deceive the public. The burden of proof is upon the applicant for registration under the En-
glish statute to show that his trade-mark is not calculated to deceive. Three of the five judges thought that the use would have such danger. Their opinion was to the effect that the words "Fruit Salt" "were calculated, and I think designed, to create a confusion in the minds of those persons to whom Mr. Dunn's advertisement was addressed, and to lead the ordil-lary run of such persons to suppose that his baking powder is in some way connected with Mr. Eno's preparation." But'there was unanimity in the idea that the property of Dunn in the words was not such that he could universally restrain their use by other dealers. For example, Lord HERSCHELL, who was in the majority, said: "If it were proposed so to employ them [the words] that no reasonable person could sllppose thac they had reference to the appellant's preparation. such a use would be perfectly unobjectionable. For example, I cannot conceive anyone imagining that a 'fruit salt umbrella' was in any way connected with the article manufactured by Mr. Eno." If, therefore, the use of the word "Celluloid," in connection with starch, was calculated to deceive the public, and induce it to believe that the complainant's article of manufacture was one of the ingredients of the defendant's starch, and to be led to purchase the article" then the prayer of the bill should be granted. In a clear case of intentional or actual deception, there is not much need of testimony as to the possibility that purchasers would be misled. 'l'ouacco Co. v. Hnzcl', 128 U. S. 182, 9 Sup. Ct. Rep. 60. In a doubtful case, testimony is valuable. ' The question is, to a certain extent, one of fact. While, in my opinion, individual purchasers would wonder whether "Celluloid Starch" contained pyroxyline, by reason of the ract that celluloid has been used for so many different purposes, I cannot find, in the absence of affirmative testimony upon the subject, that any portion of purchasers would suppose or believe that thedelendant's starch was connected with celluloid. I do not think that the purchasers of" Ivory Starch" suppose that the starch has any connection with ivory, but consider that the name is a fanciful and attractive one, and symbolizes that the effect of the starch is to give the appearance of ivory. In the same wny the word "Celluloid" was used iriconnection with starch to make an attractive name, and suggest that the starch produced the glossy appearance of celluloid. I therefore find that the distinctive portion of the complainant's corporate llame has been used, agaInst its will, by the defendant, and that its trade-mark has been likewise used; but that it does not affirmatively appear that said name and said trade-mark have been use,d in a way to induce the public to believe 0Jl' create the impression that the starch which bears the name was connected with the complainant, or was the product, in part, of its manufacture. The prospect that the complainant will in the futurt: want to manufacture starch, or some article which has the, use· of and, simulates starch, is too shadowy to base an injunction upon. Prof.Morton thinks that it is highly probable that a method might be devised by which celluloid could be converted into a starch-like body fit for use as a substitute for starch. This statement of probabilities, of the correctness of which I entertain no doubt, is too indefinite to be the foundation of an il'junctioll. The bill is dismissed.
IX RE WONG YUNG QUY.
In re WONG YUNG QUY.
(Circuit Court, D. Cnlifornia.
February 5, 1880.)
HABEAS .CORPUS-JURISDICTION OF FEDERAL COURTS-UNCONSTITUTIONAL STATE STATUTE.
Under Rev. St. U. S. 752, which authorizes judges of the supreme court and of the district and circuit courts to grant writs of habeas corp11.s, and section 753, which provides that the writ shall not extend to a prisoner in jail, unless, among other cases, be is in custody in violation of the constitution, or of a jaw or treaty of the United States, such judges can on hrrbeus corpus inquire into the legality of imprisonmeJlt by judgment of a state court under a state statute alleged to be in violation of the constitution and ofa treaty of the United States.
Application for Writ of Habeas Corpus. Gem'ge E. Bates, J. M. Rothchild, and M. S. Horan, for petitioner. Jo Hamilton, Atty Gen., and Crittenden Thornton, for respondent. Before SAWYER, Circuit Judge. SAWY'Im, J. The petitioner, a subject of the empire of China. having been convicted of a misden1 'anor committed in removing a dead body of one of his countrymen from the place of interment without a permit, contrary to the provisions of "An act to protect public health from infections caused by exhumation and removal of the remains of deceased persons," passed by the legislature of California, April 1, 1878, (St. 1877-78, p. 1050,) was sentenced to pay a fine of $50, and in default of payment to be im prisoned for a period of 25 days. Failing to pay the fine', and having been committed to' prison, he sued out a writ of habeas cOrptu3, and asked to be discharged on the grounl1 that the said act of the legislature of California was passed in violation of the fourteenth amendment of the national constitution and of the Burlingame treaty; and that'it is, therefore, void. Crittenden Thornton, Esq., and the attorney general of California representing the state, appearing as counsel on the part of the respondent, raise a preliminary objection that the court has no jurisdiction, in the case of a party held in custody by virtue of a judgment of a state court, to inquire upon habeas corpus into the validity of the judgment under which he is held, where the judgment is regular in form upon its face. It is insisted that the state court had jurisdiction to determine the validity of the statute; and, having determined it, the determination is conclusive in all other proceedings. except. upon writ of error from a court having appellate jurisdiction to revise the action of the court below. A very able and exhausth;e argument has been filed in support of the objection taken to the jurisdiction, the only question as yet submitted for decision. Section 752 of the Revised Statutes provides that the justices al).l,l.judges of the United States courts, "within their respective jurisdiction!>, l?hall have power to grant writs of habeas corpus for the purpose of an' inquiry into the cause of restraint of liberty." This section is general and unlimited in its terms .. But section 753 limits the cases in \vhich the writ may be issued, and provides, among .other cases, that" the writ of habeas corpus shall iil