CITY OF CARl.BBAD tI. KUTNOW.
direct implication require the complainant to haIt on the threshold of a court of equity. The complainant cannot call a misleading statement immaterial when made by it and a similar statement material and vital when made by the defendant. It is asserted that one of the medals displayed on the defendant's label states that it was awarded to Leopold Hoff in Paris in 1830 or 1850, either before he was born or when he was but seven years of age and that the medal is a fraud on its face. An examination with a glass reveals the fact that the National Academy of Manufacturers which gave Leopold the medal was "founded at Paris in 1830." The date when the medal was awarded is not given. If there were no other objection to this kind of attack it is too trivial to be considered. Equity cannot be administered through a microscope. Without discussing the subject further it is thought that the only relief to which complainant is entitled is a decree enjoining the defendant from using the words "Hoff's Malt Extract" on its labels, or advertisements, unless preceded by the name "Leopold."
CITY OF CARLSBAD et aL v. KUTNOW et al. (CircUit Oourt of Appeals, Second Circuit. December 2, 1895.)
TRADE' MARKS AND TRADE-NAMES SALTS."
The city of carlsbad, Bohemia, having long made and sold salts of high medicinal qualities, in crystals and powders, made by evaporating water from the springs owned by that city, under the name of "Carlsbad Sprudel Salts," held, that it was an infringement to sell articles of salts in no way derived from the Carlsbad waters under the name of "Improved Effervescent Carlsbad Powder," it appearing that the city of Carlsbad had not used the name upon any but genuine saits derived from the spring waters, and there being no evidence that it had authorized or a.cquiesced in such use by any other .person. 68 Fed. 794, a1tlrmed. The fact that the city of Carlsbad sells "Carlsbad Sprudel Lozenges," with labels stating that they are "manufactured under the own administration of the city of Carlsbad," and which contain but 10 per cent. of the in· gredients found in Carlsbad water, and 90 per cent. of cane sugar, con· stitutes no fraud or misrepresentation such as would warrant a contention that the city does not come into court with clean hands; for lozenges, by dictionary definition, a.re small cakes of sugar or confection, often medicated. A decision of the high court of chancery in England, granting to defendant, against complainant's opposition, the right to register as a trade-mark the words alleged to be an infringement, and the affidavits upon which such decision was made, are irrelevant and inadmissible in an infringement suit In this country. 68 Fed. 794, affirmed.
SAME-EVIDENCE IN INFRINGEMENT SUITS-GRANT OF TRADE·MARK BY l<'OR' EIGN GOVERNME1\T.
Appeal from the Circuit Court of the United States for the :::louthern District of New York. This was a bill in equity by the city of Carlsbad and others against Hermann Kutnow and others, composing the firm of Kutnow Bros.,
for an .alleged infringement of the trade-mark or trade-name "Carls· bad Sprudel
The appeal 1s from an interlocutory decree of the circuit court, Southern district of New York, enjoining the defendants from using the name "Improved Etfervescent CarlElbad Powder," and the name "Improved Carlsbad," or the nam.e "Carlsbad," to designate the preparation heretofore used and sold by them, and from using said names to designate any preparation, compound, or article substantially the same as the preparation heretofore sold by them, and from using or applying in commerce the name "Carlsbad" with or to any preparation or compouzid not a genuine Carlsbad product, so as to represent. that such preparation or compound is genuine Carlsbad salts or powder, or which is liable to cause said preparation or compound of the defendants to be known in the market as genuine Carlsbad salts or powder.
CITY OF CARLSBAD tI. KUTNOW.
salts have become widely and favorably known throughout the Unit· ed States by and under the generic name and designation of "Carlsbad Sprudel Salts," and the specific terms of "Carlsbad Sprudel Salte (Crystal)" and "Carlsbad Sprudel Salts (Powder Form)." These findings .are sustained by proof, and to none of them have defendants assigned error. The circuit court further found that in short trade phrase and abbreviated and popular form the salts are known here as the "Carlsbad Crystal" and "Carlsbad Powder." There is sufficient proof to sustain such findings, and no substantial conflict of evidence on that point Both crystal and powder are wholly natural compounds, with no artificial admbture. Their chemical ingredients come from the Sprudel Springs, and from nowhere else. Under the older process of evaporation, by which the crystal is produced, some of the soluble COllf;ltituents of the Carlsbad water are apparently not retained, and the product liquifies at about 90° F. The powder contains all the soluble constituents of the water, and is easily kept in any climate. It is prepared by a more elaborate process of evaporation, which includes the introduction of carbonic acid gas, but that gas is not artificially prepared; it is taken from the spring itself. The Carlsbad SprudeI Salts in either form, therefore, is a natural product, and well known as SUCh; and there is no proof in the case that the complainants have used the name Carlsbad upon any but genuine Carlsbad Sprudel SaIts. And we concur with the circuit judge in the finding that there is no evidence in the record that any artificial salts have from similarity or otherwise come to be known by the name of Carlsbad, as is the case with the Epsom salts, a term now generally applied to sulphate of magnesia, whether such sulphate of magnesia comes from EPf;,uill or not. Under these circum!'<tancee the complainant the city of Carlsbad has the right to indicate the origin of these natural salts by its own name, and would be entitled to the aid of a court of equity to prevent anyone from using that name to induce the public to accept as genuine artificial salts not the product of the Carlsbad Spring. The complainants proved the sale by defendants of a preparation designated on the package by the term, "Kutnow's Improved Effervescent Carlsbad Powder." A qualified expert chemist analyz· ed the contents of the package. He also analyzed the contents of a bottle of the genuine Carll1bad powder. The results of such analysis are:
Gen1.line Oarlsbad. Defendants' Package. Sulphate of potassium........... 3.85% , .. Sulphate of sodium, 41.62 Sulphate of sudium.. Carbonate of sodium 3.16 ! , ,.. , .. Bicarbonate of sodium 31.08 : Bicarbonate of sodium C?loride of sodium: 18.19 ; Chloride of sodium .. , , BIcarbonate of I.thIOD..... 0.24 I . . . . . . . . . . · Ro.chelle ::::.::::::::::: ................... " · Free tartaric acid., , Water 1.86' Water
41,.2 15.27 3.7
The witness testified that the two compounds are entirely different i ll tlleh', e,omposition, and that the alkalinity, which it appears is a distinguishing characteristic of all prQduc:ts
of the Gar)sbadSpringS,water and alike,is very much reduced in the defendants' compound; the respective alkalinity of the two being represented, respectively, by 23.3 per cent. and 5.12 per cent. These comparative analyses are criticised by the defendants because the sample of genuine salts used by the witness was Carlsbad powder, and not Carlsbad crystal. The preparation which defendants sell, however, is described as "Kutnow's Improved Effervescent Carlsbad Powder," a phrase which is calculated to suggest that it is Carlsbad powder which has been "improved" and made effervescent by Kutnow; and a comparison of defendants' compound with the genuine powder was, therefore, a fair one. From his analyses the witness was able to' state that defendants' preparation did not contain Carlsbad powder. Carlsbad crystals, however, it will be remembered, lack some of the natural mineral constituents which Carlsbad powder contains. The witness, therefore, on cross-examination, admitted that it was possible that defendants' compound might contain some salts gained by evaporation from natural Carlsbad spring water. He was positive, however, in the assertion that 80 per cent. of the compound was artificial, that it contained no Carlsbad powder, and that in the distinguishing characteristics of alkalinity it was a very different substance from genuine Carlsbad salts of either form. It is, according to the uncontradicted testimony, substantially a Seidlitz powder, with salts added, since the constituents of Seidlitz powder are bicarbonate of soda, Rochelle salts, and tartaric acid in about the proportions indicated in the analysis; and Kutnow's preparation contains 85 per cent. of those constituents, while the genuine Carlsbad salts contain neither R0chelle salts nor tartaric acid. Upon rebuttal, complainants called a medical practitioner of large experience with Carlsbad prodUcts, who testified that the therapeutic effect of a preparation like Kutnow's would be constitutionally different from that of the Carlsbad products. Without this rebuttal testimony, however, complainants had made out a prima facie case when they showed that the preparation which defendants sold was an artificial compound, in which it was doubtful whether any salt obtained from the Carlsbad Springs was present at all, and which contained none of the Carlsbad powder upon which it was advertised to be an improvement. The defendants thereupon proceeded with their defense. S. Kutnow, who makes the preparation which defendants sell, is their brother, but not connected with them in business, except so far as they buy from him the packages of his powder which they sell. He is senior partner in the firm which manufactures the powder in England, and there is no pretense that it contains any genuine Carlsbad powder. It is contended, however, that Carlsbad natural salt, not in the powder form, is used in its preparation to a substantial extent, sufficient to entitle defendants to. claim that it is in fact Carlsbad salt, improved by the introduction of other ingredients. Two opinions were filed by the circuit judge, one upon final hearing (68 Fed. 794), and one upon an application for a rehearing. In the former he says: '
CITY OJ' CARLSBAD 11. KUTNOW.
"If defendants procured genuine Carlsbad waters or salts, and put them up in different forms, or with other ingredients to improve their taste, or vary their effects, these words ["Improved Effervescent Carlsbad Powder"] would be truthful, and they would seem to have a clear right to use them in such preparations."
And in the opinion filed upon rehearing he says that "the case might be opened to admit such evidence," viz. that defendants' powder contains genuine Carlsbad products. The defendants, however; have scrupulously refrained from calling either Kutnow, the manufacturer,. or anyone in his employ having knowledge of the fact, to prove, not the formula, which is a trade secret he may not wish to disclose, but even the single fact that any Carlsbad products at all are· used in the preparation of his powder, and, if so, to what extent. This failure to produce any competent proof on the important point in the case is most suggestive. It is true, defendants are sellers only, not manufacturers; but the manufacturer in London has a common interest with them in the continuance and increase of such sales, and, if his preparation contains sufficient genuine Carlsbad products to justify the use of the name he gives it, it is inconceivable that he would be unwilling to furnish proof of that fact. Upon the whole record it is difficult to escape the conviction that the Kutnow preparation now before the court contains no natural Carlsbad water or salts at all. The defendant Hermann Kutnow testities that he ''believed'' the preparation contained Carlsbad Sprudel Salt in crystals, because he had been so informed by S. Kutnow & Co. This evidence was promptly objected to as incompetent and hearsay, and it is difficult to understand upon what theory defendants' counsel offered it. This witness also testified to the beneficial operation of the Kutnow powder. But, conceding it to be a valuable addition to the pharmacopreia, that fact is immaterial. Complainants object to it, not because of any alleged worthlessness, but because it is represented to be, in part at least, a genuine Carlsbad product. Defendants next put in evidence the record of certain proceedings in. England. Registration of their trade-mark was there applied for by S. Kutnow & Co. It was opposed by the English agents of the city of Carlsbad, was granted by the registrar, an appeal taken to the high court of justice, chancery division, and the action of the registrar sustained by Mr. Justice North. The record consists of the decisions of the registrar and of Mr. Justice North, and of various affidavits made in 1891. Early in the case a stipulation was made by complainants' counsel that he would "admit correct and true copies of any papers that defendants' counsel wishes to introduce with reference to the Kutnow trade-mark litigation in England without requiring the production or proof of the original documents, but without waiving his objection on other grounds to the relevancy and materiality of such papers"; and when the record was offered, complainants' counsel objected to it as irrelevant and immaterial, whereupon it was injected bodily into the case. It covers 80 printed pages. The circuit court has pointed out the ullsatisfactory character of such testimony where the witnesses have been neither
-exatninecJ'nQf cross-examined, an,d correctly holds that "nothing. short of an: express stipulation to that full effect would make testimony taken in one case proof of facts in another!' The English record moreover, was obnoxious to another and fatal objection. The most cursory inspection of it shows that the powder before the l'egistrar and the court in that· proceeding was made by one W 01'licek, a .chemist in Carlsbad, accarding. to' a· formula given him by Kutnow,and contained at least 15 per cent. of genuine Carlsbad SprudelSalt, obtained in Carlsbad by Worlicek from Loebel Schott· lander, the local concessionail'e of the city of Carlsbad. 1'he completedtomp6und, packed in tins, was shipped by the Carlsbad chemist: to .Kutnow in' London, who there repacked it in cartons. When it is remembel'ed that the powder in the' case at bal' is concededly manufactul'ed, not in Carlsbad, but by Kutnow himself in Englandjand that there is not a scintilla ofevidience to show that the formula used is the' same, it is manifest. that the English record is irrelevant and immatel'iaL This court hasl\h'eady repl'ehended the practice which prevails in equity causes of stuffing the l'ecord withirI;elevant testimony. Ecaubertv. Appleton,15; C. C. A. 13, 61 Fed.' 917. Undoubtedly, the circumstances undel' which the evidence in such causes, is, taJ(en-before an examiner who has no power to to producesnch slipshod and unscientiftcrecords as are frequently presented to thecourt;bnt counsel certainly owe it to themselves, their clients, and the court not to conduct the trial Of an equity 'cause as if thernost elementary rules of evidence were i,suspended. ,. It has been suggested that the English record containsstatemehts by the complainant the city of Carlsbad, or its agents;' which were-admissible as "admissions againstinterest." lithis beso"icpunsel ,should have separately'offered each of such· admissions, or: atrmost the particular affidavit or letter in which it is contended thM; they appeared. Moreover, by no stretch of the imagination can it be conceived that the affidavits presented by Kutnowhimself in that proceeding, or the opinions ,of the registrar or of·.Mr. Justice No'rth, contained any "admisstons by the city of-DarIsbad." The appellants' counsel states generally in his brief that "in the depositions of 'the officers of the city of Carlsbad and of the witnesses called' by it in the London proceeding" will be found evidence of "its knowledge of and acquiescence in the use of artificial Carlsbad salts, and!its acquiescence in the use of names for preparations exactly like that of defendants in which 'Carlsbad' forms a part of the name." Unfortunately, the brief con· tains no reference to the folio where this important evidence is to be found. A careful examination has, however, been made of· the entire English record. The only depositions of witnesses called by the city of Carlsbad which it contains are an affidavit of Zerkendorfer, the burgomaster, signed, but apparently not Sworn to, and an examination of the same officer, taken in Carlsbad, November 7, 1891. No admissions of the kind referred to are found therein, the witness stating that as soon as he, the burgomaster, found that Worlicek,wasmaking the compound in question in Carlsbad, and
HOYT 17. J. '1'. LOVETT CO.
shipping it to KutnowinLondon, he compelled Worlicek to discontinue making any further preparations. The entire English record is therefore irrelevant and immaterial, and should be eliminated from the case. Defendants put in evidence as an exhibit a box of powders put up in small packages like Seidlitz powders, and known as "Lipp· man's OarlsbadEffervescing Powders." An analysis of these, made by defendants' expert, showed that they have substantially the same composition asthose sold by the defendants., It is contended that these are made with or consent.of the city of Oarls· bad, and that, therefore, cornplaimibts have acquiesced in the application of the name "Oarlsbad" to a preparation like defendants' own. There is, however, no evidence of any such license or consent. Eisner, an officer of the Eisner & Mendelsohn Company, complainant, testified that he had in his possession a deClination by Lippman, apparently in the form of a letter or circular, that he held a revocable ,from the. <;ityof ()lrlsba(l, but such declaration was never produced, and, if it had been, it is somewhat difficult to see,_ on what ground it could be held competent ,evidenge of the fact that such license had been given him. . A Circular'ac,companying Lippman's powders was put in evidence, but it contains no statement that his 'powders are prepared under any such license. It also appears that the city of Oarlsbad sells "Oarlsbad Sprudel Lozenges," which are stated on the packages containing them to be "manufactured. under..111e own administration; of the dty.of Oarlsbad/, and whicll contain 1,.0 per, cent. of the which are found. in OaJ,'lsbad water arid, 90 per cent of cane. ,sugar., ,We fail to p.n,d in this eircuIJ;lstance any sUch fraud or misrepresentation as would, warrant defendants' contention that the do not come into court With clean hllnds. The Dictionary defines a lozenge to be "a small cake of sugar or confection, often medicated." The OarlsQad SPrlldel Lozenges of the complainants are therefore just what they are represented to be, viz. small cakes of sugar, medicated with genuine Oarlsbad Sprudel Salts, The decree of the circuit court is affirmed. with CORtS. 1:!
HOYT et ai. v. J. T. LOVETT CO. (CIrcuit Court ot Appeals, Third Circuit December 3, 1895.) No. L
TRADE-MARX-PRIORITY OP' ADOPTION.
Complainants, wbo claimed the name "Green Mountain" as a trade-mark tor a variety of grapevine raised and sold by them, had obtained the cuttings from, which the vines were propagated from one P., in 1885, and after some of experimental cultivation began to sell tbe vines, in 1889, under the. pame "Green Mountain." It appeared that P. bad discovered the original wild vine In the Green Mountains, in 1884 or earlier, and in that year sent one ot the vines to one R., in New York, with wbom he bad dlsct1llsed the question of a name for the vine, and had settled upon "Green