PE,;DERAL BEPORrEB, vol. 51.
.OALn1'ORNIA FIG SYRUP CO.
IMPROVED FIG SYRUP
(Ctrcu1.t Court, N. D. California. May 23, 1899.)
Complainant, "Californl. Syrup Co" "manufaotured a syrup from figs, and put it up in p,aokages, havin, as a device thereon a fig, tree, with leaves and fruit, and the w,ord,s' syru,p of Figs,' , as a trade-mark. Respondent, "Improved Fig Syrup Co.," made and put up the same article In a package with the same device and the words" Improved Syrup of Figs " as a trade-mark. Respondent, on remonstrance, chanl(ed'its device to the figure of a woman holding up a fig, with the words "Fig alta trjl,de-mark, aU of which occupied the same place an.d space on the package as oomplainant's device, and was, besides, animitation of complainant's newspaPer advertising device. Held, that complainant was entitled to an injunction.
The fact that plllointift"s trade-mark, "Syrup of being merely dt>scriptive, was deceptive, 88 a designation of ·the compound, dId not affect plaintiff's right to an injl,ln<;tioJ;1; the matter ill controversy belUg, not the right to the exclusive use of the words\ but respondent'llsimulation of complainant's devices and packages with a view to aeceive customers·. An objeotion to the bill on the ground that It was uncertain whether was made of 'the use of the words "Fig Syrup" or "Syrup of Figs" by themselves orin combination with othel' words, devices, eto., could not be: sl,lst!lined j it being enough, for the purposes of a demurrer, that complainant was entitled to relief in respeot of the combined use, which was olearly set forth in the bill. Tlle bill alleged that respondents B. and others were using respondent corporation as a means of infringement, they being themselves substantililly the corporation. HeM, that theM was no misjoinder in making them parties defendant.
In Equity. Suit by the California Fig Syrup Company against the Improved Fig Syrup Company. On demurrer to the bill. Overruled. Olnf!!J, Chickering & ThQmas and Paul Bahwell, for complainant· . John L. Boone, for respondent.
McKENNA, Circuit Judge, (orally.) Thib is a case of infringement of a trade-mark. There is a demurrer to the complaint, and a motion for an injunction. The granting Of the latter is dependent upon the action of the court on the former. The basis of the suit is the effort of the respondentto imitate the trade-mark o(the complainant, and to thereby represent to the public that its goods are those of complainant. If the bill shows this, the complainantis entitled to relief. In McLean v. Fleming, 96 U. S. 245, the court say:
"It is not necessary, in order to give the right to an injunction, that the specific trade-mark should be infringed, but it is sufficient if the court should be satisfied that there was intent on the part of the respondent to palm off his goods as t.he goods of complainant, ,and that he persi:lts, after being reqnested to desist."
Citing Woollam v. Ratcliff, 1 Hem. & M. 259. To the same effect is Pierce v. GuiUnrd, 68 Gal. 68" 8 Pac. Rep. 645. The bill alleges a high reputation of complainant's compound, acquired by its virtues and by extensive and expensive advertising, and also describes complainant's trade-mark, the form and size of the bottle, and package used by it, and illustrates them by exhibits. It also describes the imitations of respondent, and illustrates them by exhibits. The
CALJ]'ORNIA FIG SYRUP CO. fl. IMPROVED FIG SYRUP CO.
exhibits are identical in form, size, and in device. The respondent changed its device, retaining all other resemblances. The complainant is called "California Fig Syrup Company," and its article "Syrup of Figs;" the respondent is called "Improved Fig Syrup Company," and its article "Improved Syrup of Figs." The latter letters are displayed on the package in large type, imitating not only complainant's name, but the style of letters, while the word "Improved" is printed in small type. The respondent changed its device from a I¥'anch of a fig tree, with leaves and fruit,-an exact imitation of complainant's device,-to the figure of a woman holding up temptingly a fig in one hand, and holding under the arm of the other a basket of figs; and instead of "Syrup of Figs" there is substituted "Fig Syrup." The new device, with its accompanying words, occupies exactly the same space and place on the box as complainant's device, and is, besides, an imitation of a device of complainant .used in the newspaper advertisement. It is evident, therefore, to use the language of CLIFFORD in McLean v. Fleming," that thegeneraI appearance of respondents' device is such aA would be likely to mislead one in the ordinary course of-purchasing the goods, and induGebirn. to suppose that he was purchasing the genuine artiCle." ThIEl is sill,lilitude enough, and (on the case as it now stands) there is no doubt of respondent's intention. Its fit,st and almost exact imitation of .compl!J,inant's packages and ·device showed, not the advertisement of a new article with a reputation yet to. make, but the counterfeiting of an old article with a reputation already made; and the change in the device was and is an atteIllpt to preservethe deceit, and yet avoid liability for it, . But respondent urges that the words "Syrup of Figs" are descriptive, and that complainant deceiYes when it uses them to designate its compound. The deceit does not appear on the face of the bill, and it important if they are descriptive. The question is now, not whether complainant has the exclusive right to use the words "Syrup of Figs" or "Fig Syrup," but it is whether respondent has, by use of them and other words, and by the other imitations alleged and exhibited, so far imitated the form of complainant's device and description to represent its goods as its goods, and appropriate its reputation and trade. The gravamen of the action is the simulation of complainant's devices and the deception of purchasers. This is the principle of the best-considered cases, uniting them, notwithstanding their diverse facts. Burton v. Stratton, 12 Fed. Rep. 696; Baking Powder Co. v. Fyje, 45 Fed. Rep. 799; Nerve Food. Co. v. Baumhach, 32 Fed. Rep. 205; Anonyme, etc., Societe v. WeiJwnDistilling Co., 43 Fed. Rep. 417. Respondent also demurs to the bill on the ground that it is uncertain whether it complains o( the use of the words" Fig Syrup" or "Syrup of Figs by themselves, or complains of them in combination with other words, the wrappers, etc. The complainant prays for an injunction against their use disjoined or conjoined with the other words and devices used by rf;'spondents. It is not necessary now to pass upon both claims for relief; it is enough, for the purposes of this demurrer, that complainant is entitled· to the latter claim.
, : FEDERAL' 1REPQR'l'ER,
iJ.IwspondeM also utges,that a misjoiI1der()f alr'not think 'so., The bill 'alleges that the respondents; Bishop et al., ilre<tll3ing :thecorporation but as a1neans of infringemel1t;tliat they are the case of Nerve Food'!Co. v. Bagmbach,BUpra, the Star Bottling, Works, a corpora:tion', was joined with the respondent Batili'lhack, uhder1the same circumstances, the corporation, namely, belonging to hiIll,'Besides, it is doubtful ifthe respondentef'Bishopet lcd., have not,waived this point by not demurring separately., ' The demurrer is overruled.
Fox et al.
ADIlIBAIJO' Jll'RISDIOTION__M;ARJTIl'4B,GoIJ'l'R;\OT. '
By a wrltten ,:,steamboat",. hlreel tor one year, the charterer stIpulating tbat she should be used incatrying and freIght on tlie waters of Pllget 8OJl-ud,the Strai" of Juan de,Fl1Ca, and their tributaries; !t:hat the Charterer ',should ma.n, her, bear all, expenses of" navigation, insurance; and repal1'Si Iteep her bills paid' 80 as to prevent liens from attachmg, pay tbe,ewner aftxed.-ujD,monthltfor ller use, lind, in Cfl86!o.f loss, tbe gross perf!>rmance olllllS part tbe cbarterer a bond, mtb ,sum of, $8,000' ,'to sureties; in'the sum of'I8;OOO. 'Held that,tbough this oontract liifrared in pbraseullual in sbipping traDsaethlJl,siit;wasnevertbe,ology Iln4 form less I/o,maritime contract, IPoIlda suit on the bOIl-d was a matter .of mar,itime jurisdiction," .,'.. ," '" ; , " "', ... ,,,,' ':
In Admiralty. Suitt" personam by Granville O. Haller against Charles L.:Fox, Adolph:Behrens,'iand H. W.Baker on a bond given by chartererto ownerj,conditioned for due performance of a contract for employment pfn/steamboa't 'fcir a speciftedterm. 'fheslireties :fHed exceptions tothelibeldenyinglhejurisdiction of the court; Exceptions ruled.' ' . " Burke, Shepard &- WO<ld8, for libelant: James Harn'iltd'it :Leivis, for HANJwRD;District Judge. On 3, -,,91;'the derendant F0xhired the steambolltMary F. Perley: for a tmn 10f one'year,and with htll: owner, the libelant, executed acon1racthl' writing, whereby they stipulated that said said term be employed in carrying passengers and freight upon the waters of Puget sound, the Stl'aitsof Jua ll de Fucai rand theirtribl1taries; that the chatterer should navigate,'man, ftnd corihol her, and' bear all expenses iilcidelit tonavigating her and' for supplies, insurance, and repa.iTs, and 'keep her bills paid so as to prevent lieus froni attaching, and pay 'Said 'owner fot the use of said steamboat! $180 per mohth, and at the 'end of said term deliver her again :tosald O(l\vner, Of, itl tltlse6fhet loss or destruction, pay him thesum,of$8;OOO'.I'To secure performance oh his' part of the conditions of said contract, said Fox, as l'rincipal'.' with his codefendants as