CARSON'll. URY.
777
person has acquired an exclusive right of property in the word when affixed to a certain class of goods, because, notwithstanding such registration, the word may not have become a valid trade-mark, either because the necessary steps have not been taken to make it a trade-mark, or because the word itself, for certain reasons, is not susceptible of appropriation for that purpose. Take the word" Bromidia" as an exam· pIe. If it is a generic word,-that is, the name by which an article or compound which anyone may make or sell is generally known, and which must necessarily be used in describing that article,-it clearly cannot be appropriated as a trade-mark, and registration of the word, though allowed, confers no rights. If, as seems highly probable, the word "Bromidia" is used, and is regarded by the public more as a description of the qualities and an ingredient of the article to which it is affixed, as containing bromine, than as indicative of the origin and ownership of the article, it cannot be appropriated as a trade-mark. Bnrton v. Stratton, 12 Fed. Rep. 698, and cases cited; Browne, Trade-Marks, §§ 134, 135. These considerations serve, in my judgment, to show the necessity of averring a state of facts, which, as a matter of law, is sufficient to make the word a valid trade-mark. Without such averments, a criminal offense is not stated with sufficient certainty. It is claimed hy defendants' counsel that the indictments are bad for various other reasons, and among the number, because the trade-mark law of July 8, 1870, was void, congress having no power to pass such a law, as was held in the Trade-lllark Cases, 100 U. S. 82, and becauseatthe time of the enactment of the penal act of August 14, 1876, under which the indictments are drawn, there was nothing upon which that act could operate, and it was therefore nugatory, and remained inoperative, even after the passage of the act of March 3, 1881, supra. It is unnecessary, however, at this time to express any opinion concerning the novel question thus raised, as the indictments must be held bad for the reasons heretofore indicated. Demurrer sustained.
CARSON
v.
DRyet
al. September 2,1889.)
(Circuit Court, E.
n. Missouri, E. n.
The Cigar-Makers' Internatio.nal Union of America, an unincorporated association for mutual benefit, adopted a label purporting to be issued by the union, and to be placed on boxes of cigars made by members of the union. Complainant, who was a manufacturer of cigars, and a member of the union, filed a bill to restrain defendants, who were not members thereof, from making and selling counterfeits of the union labels, with the alleged attempt to defraud complainant and the public. The bill alleged that by the use of the labels complainant was enabled to receive a higher price for his cigars,and that the sale of such counterfeit labels injured his trade. Held, that though there is no trade· mark in such labels, as complainant shows special damage' and that the right to use them is valuable, and as the: adoption-and use of
MISREPRESENTATIONS.
778'
l'EDERAL REPORTER,
vol. 39.
,s1Jc;4labels are in no Way unlawful., and the action of defendffJrfs- is' confesS'edly, fpludulent, in that they sold tpe spurious labels, though ihey may no,t have used them on cigars of their own manufacture, the bill alleges good grounds for equitable relief. "
,In Equity, On demurrer to bill. '£he case made by the bill, and admitted by the demurrer, may be summarized as follows: The "Cigar-Makers' International [email protected] of America" is avoll1ntary, unincorporated association of practical cigarmakers, having many members, and was' formed to promote the mental, moral, and physical welfare of its members, to assist them in obtaining remunerative wages, tOflxtend pecuniary aid to members and their families in case of sickness or death, and generally to maintain a high standard of workmanship. In September, 1880, at a convention held by membel1s of the union, It label was adopted to be placed on cigar boxes, for the purpose of designating cigars made by members of the union. The label is nothing more than a certificate printed on blue paper, and purporting' to have been issued by authority of the union, to the effect that the cigars contained in the box to which it is affixed have been made by first-class workmen, members of the union, and not by "inferior rat-shop, coaly, prison, or tenement-house workmanship." AU members of the "Cigar-:YIakers' International Union of AmeriC'd.," (and the membership is said to exceed 25,000) are allowed to affix the label to cigars made and sold by themselves, provided they do not employ others to n1ake cigars. It is also the practice of the union to furnish the label gratuitously to all cigar manufacturerfil throughout the United States, who employ exclusively members of the union at an agreed schedule of wages. Complainant in this case is a member ()f the union, and for two years past has· been making and selling cigars of his own manufacture in the city of·New York, and in the course of his business has used (as he is entitled to) the union label aforesaid, and built up a profitable trade. The wages received by members of the union are about three dollars higher per thousand cigars than the wages received by other cigar-makers; and cigars bearing the union label are worth in the market three dollars per thousand more than they would be worth without it, be{lanse in public estimation the label is a guaranty that the cigars bearing it have been made by competent workmen, in clean and healthy shops. By the use of the genuine label in question on cigars of his own manufacture the :complainant has made great profits, and the public has also been protected from purchasing inferior cigars. Since the adoption of the union label, and since complainant began to use the same, the defendantshav,e, C<)nspired to cheat and defraud complainant and other as well as the public, by making and selling and members offering for sale counterfeit lubels for: cigar boxes. 1'he label made and sold by defengants is a fac lJ'imile of the union label, and cannot fail to deceive. In furtheranc.e of the scheme to defraud, defendants have adopted a: fictitious name under which they manufacture and sell the counterfeit and they also have their correspondence concerning ,the: same sent to' a false ,address in the city of St. Louis,
CARBON tI. URY.
779
whence it is forwarded to defendants' real place of business. By making and selling such spurious alld counterfeit labels to cigar manufacturers throughout the country, the public is deceived, and a great pecuniary loss is occasioned, which is borne by the complainant and other mem bers of the union who, like him, manufacture and sell cigars, and make use of the genuine union label in the course of their business to enhance the value of their product and increase the demand therefor. Such, in brief, is the case made by the bill. Brilsen, Steele & Knauth and Hough, Overall & Judson, for complainant. Chester H. Krum, for defendants. J
THAYER, J., (after stating the facts as above.) On the facts stated I think that complainant is entitled to equitable relief. It is no doubt true that the union label does not answer to the definition ordinarily given of a technical trade-mark, because it does not indicate with any degree of certainty by what particular person or firm the cigars to which it may be affixed Wf!re manufactured, or serve to distinguish the goods of one cigar manufacturer from the goods of another manufacturer, and because the complainant appears to have no vendible interest in the label, but merely a right to use it on cigars of his own make, so long, and only so long, as he remffins a member of the union. In each of these respects the label lacks the characteristics of a valid trade-mark. The court cannot interfere in this instance, as in ordinary trade-mark cases, on the ground that one person is intentionally or unintentionally appropriating a mark, symbol, design, or word which has become the exclusive property of another when used by him to distinguish goods of a certain class. In short, this is not a trade-mark case. As I view it, it is a bill filed to restrain the defendants from perpetrating a fraud which injures the complainant's business, and occasions him a pecuniary loss. li;ven where no trade-mark was infringed or involved, courts of equity have granted injunctions on more than one occasion against the use upon goods of certain marks, labels, wrappers, etc., when the evident design of such use was to deceive the public by concealing the true origin of the goods, and making it appear that they were the product of some other manufacturer of established reputation, thereby depriving the latter of a portion of the patronage that would otherwise come to him. or injuring the reputation of his goods. Croft v. Day, 7 Beav. 84; McLean v. Fleming, 96 U. S. 245; Wothel'sjJoon v. CWTie, L. R. 5 H. L. 508; Sei.xo v. Provezende, L. R. 1 Ch. 195; Thomson v. Winchestel', 19 Pick. 214; PelTY v. Trnefitt, 6 Beav. 66; Newman v. Alvord, 51 N.Y. 189; Avery V. Meikle, 81 Ky. 73; v. Stratton, 12 Fed. Rep. 696; Chelnical Co. v. Myel',31 Fed. Rep. 453; Browne, Trade-Marks, §§ 43, 44. No valid reason can be assigned why the principle which underlies these decisions does not entitle the complainant to relief. The right of the court to grant relief in the cases cited was predicated on the ground that the conduct of the parties proceeded against, in intentionally marking, labeling, wrapping, or advertising their wares so that they would be mistaken for the goods· of some other manufacturer, was fraUdulent. That, and
:7,80
the fa.ct that the fraud com'pluined of had a natural tendency to ll1JUl'e the busiiless of the person 'whoeemarks, labels, etc., had been simulated, by lessening his sales or injuring the reputation of his goods, was held sufficient to give the person who had thus sustained or was liable to sustain special damage a right to equitable relief. In the case at bar complainant shows that he has a clear right to use the union label, and that the right to use it is a valuable privilege, inaF;lmuch as it enhances the value of the cigars which he manufactures and sells, and increases the demand therefor. It does not appear from the avermentF;l of the bill that the action of the Cigar-Makers' Union, in adopting a label to distinguish cigars made by its members, was or is in any respect unlawful, or opposed to public policy. On the other hand, the action of the defendants is confessedly fraudulent. The demurrer admits that they are engaged in making and selling counterfeit labels purporting to have been issued by the" CigarMakers' International Union of. America." The bill avers that the sale of such counterfeit labels injures the complainant's trade and business, and such would seem to he the necessary and immediate result of such fraudulent acts. In other words, complainant shows that he has sustained such special pecuniary damage as give::; him the right to complain of the fraud. It is true that the bill does not show that the defendants have affixed any of the spurious labels to cigars of their own manufact'ure,. or that they have sold any cigars bearing the counterfeit certificates or labels. But this is not important. From the fact that they have made and sold spurious labels and advertised them for sale the court must presume that defendants intend that they shall be used on cigar boxes by the persons who buy them, and that they manufacture and sell them for that purpose. The conduct of the defendants is equally as culpable as that of the manufacturers of cigars who buy and use the spurious ,labels, and the loss which complainant sustains by the use of the same on, cigar boxes is aR directly attributable to the persons who make and sell the· counterfeit labels, as to the dealers in cigars who buy and use them. In conclusion I will add that my attention was called, on the hearing ,ofthedemnrrer, to a recent decision of the supreme court of Minnesota affecting the llnion label in the case of Protective Union v. Conhaim, 41 N. W. Rep. 943; also to a decision of the court of chancery of New J ersey in the case of Schneider v. William8, 14 Atl. Rep. 812. In both of those cases the bill seems to have been framed upon the theory that the union label was a technical trade-mark, and that as such it was the propert)"of the members of the union in the aggregate, and that anyone or more members of the union, whether they were or were not engaged on their own account in the manufacture and sale of cigars and in the use of the label, might maintain a sun to restrain an unauthorized party from ustng the label. The decision in each case was adverse to such contention. The bills appear to have been filed by persons and by an association who were not engaged in the manufacture and sale of cigars 'on their'own:account. Hence they were not injuriously affected by the
TAFT
STEPflENS LITHOGRAfHING & ENGRAVING CO.
781
fraudulent acts complained of,. or, if they were liable to suffer a pecuniary loss to any extent or at any time in consequence of such acts, the loss to be apprehended was indirect and speculative. It may well be cases had no such property rights conceded that the plaintiffs in involved as would enable them to maintain an action, even on the theoryon which this decision proceeds. The case at bar differs from those cases, however, in the respect before mentioned, that complainant is himself a manufacturer ofcigars, and, according to the averments of the bill, has built up a profitable trade by the use of the union label, which trade has been damaged, and is liable to be further damaged, by the fraudulent acts of the defendants. I think that he is entitled to relief on the facts stated in the amended bill, and accordingly overrule the demurrer.
STEPHENS LITHOGRAPHING
&
ENGRAVING
Co.
(Oircuit Court. E. D. Mi88ouri, E. D. September 16, 1889.) COPYRIGHT LAWS-VIOJ,A'l'ION-PENALTY.
'Vb ere a number of chromos. all bearing tbe word" copyrighted," in viola· tion of Rev. St. U. S. 496H, which provides a penalty for such offense, were struck off eaeh day on several suceeeding days, such chromos being of the same kind. except that each respective issue bore the name of a different firm by way of advertisement, the penalty is recoverable for each issue.
At Law. On motion to strike out part of amended petition. For opinion on demurrer to petition, see 38 Fed. Rep. 28. :For opinion on plea to jurisdiction, see 37 Fed. Rep. 726. W. E. Fisse, for plaintiff. R. A. & Paul Bakewell and W. B. Thompson, for defendant. THAYER, J. At the last term of this court we held in this case that when the word "copyrighted" is impressed on a large number of chromos of the same kind, that have not in fact been copyrighted, and the impression upon each and all is made under the same circumstances, and at or about the same time, so that the act is practically" a single COIltinuous act," only one penalty of $100 is recoverable under section 4963, Rev. St.U. S. We called attention on that occasion to the fact that the statute does not impose a penalty for each imprint of the word" copyrighted" wrongfully made on an engraving, map, or chromo. 38 Fed. Rep. 28. The present motion raises the question whether more than one penalty is recoverable in a case where 2,000 chromos wrongfully bearing the word" copyrighted" were struck off each day for 25 consecutive days, the chrol1los so struck off on the respective days being of the same kind, and differing only in the respect that each day's issue had printed thereon, by way of advertisement, the name ofa firm different from that appear-
