194 F.2d 416 (2nd Cir. 1952), 144, Chas. D. Briddell, Inc. v. Alglobe Trading Corp.

Docket Nº:144, Dockett 22217.
Citation:194 F.2d 416, 92 U.S.P.Q. 100
Case Date:January 21, 1952
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

Page 416

194 F.2d 416 (2nd Cir. 1952)

92 U.S.P.Q. 100




No. 144, Dockett 22217.

United States Court of Appeals, Second Circuit.

January 21, 1952

Argued Dec. 14, 1951.

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Plaintiff's complaint alleged unfair competition and asked a temporary and permanent injunction. After answers had been filed, plaintiff moved for a preliminary injunction on the basis of affidavits and exhibits. Defendants filed counter-affidavits. Without hearing any oral testimony, the trial judge made an order granting a preliminary injunction.

The following facts, found by the trial judge, are undisputed: 'Plaintiff is a Maryland corporation which manufactures cutlery. It owns a registered trademark 'Carvel Hall.' In April, 1947, plaintiff began the manufacture and national distribution of a steak knife, dagger shaped in appearance, with a blade of hollow ground chrome-vanadium, an ivory colored plastic handle and chrome plated bolster and ferrule of the same color and appearance as the blade. Plaintiff encloses service sets of sic of its knives in a transparent ivory colored plastic case. On the cover of this case is stamped the Carvel Hall name and insignia with a legend 'Steak Knives by Briddell.' In the middle of its top is an ivory colored rectangular plastic plaque impressed with the shape of a colonial panelled door.

'The set met immediate success, the sales increasing from 10, 100 in 1947 to 172, 400 in 1950 and the demand has continued far beyond supply which was curtailed by a fire early this year. This success was developed by an extensive and continuous advertising program conducted in trade publications and consumer magazines. Plaintiff's sales promotion program in 1950 involved an outlay of $250, 000 and is continuing at a slightly higher rate this year. As a result of this advertising and sales promotion program plaintiff's trademark 'Carvel Hall' has become well known to both trade and consuming public. * * *

'In June 1951, defendant Alglobe Trading Corporation procured the manufacture under contract and commenced production, and the other defendants joined with it in the national distribution of, sets of steak knives copied in every detail except quality and craftsmanship of the plaintiff's article and made to sell at almost half the plaintiff's price. They were offered for sale in sets of six in plastic containers. * * * ' These containers closely resemble plaintiff's except in these respects: They are of a darker tint; on the top- instead of the colonial door plaque, the name 'carvel Hall' and the legend 'steak Knives by Briddell'- are an ivory-colored circular plastic plaque in the form of a steer's head and a paper label 'Produced and sold exclusively by Oxhead Products, New Yor.' Defendant's knives have the words 'Oxhead Stainless, ' showing on the blade. The copying, by the defendant, Alglobe Trading Corporation, was deliberate. There was no

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evidence that any of the defendants used or imitated the plaintiff's name or trademark.

The trial judge made the following findings which defendants dispute as not supported by the evidence: 'The non-functional characteristics or attributes of the plaintiff's knives are all distinctive including the shape of the knife with its convex back, the shape of the blade and the shape of the bolster. The whole form of makeup of the knife, distinctive as we have found, has become known to the buying public as the manufacture of Carvel Hall or at any rate of an individual manufacturer of knives of high quality and attractive appearance. * * * The (defendants') knives in shape and appearance are exact copies of the plaintiff's knives and so close is the copying of the appearance that even the trade itself, that is, the retailers of cutlery, were deceived by the similarity and attributed the manufacture of the defendant's article to the plaintiff. * * * The prospect of loss and damage to plaintiff is a certainty.'

The order restrained defendants, 'during the pendency of this action or until the further order of this court from manufacturing, assembling, distributing, advertising, exploiting, selling, or offering to sell sets of steak knives and containers, or single steak knives, of the same size, shape, configuration and appearance as plaintiff's steak knives and containers.'

Fennelly, Eagan, Nager & Large, New York City (Charles J. Nager and Seymour Stein, New York City, of counsel), for plaintiff-appellee.

Maurice V. Seligson and Asher Blum, all of New York City (Mock & Blum, New York City, of counsel), for defendants-appellants.

Before CHASE, CLARK and FRANK, Circuit Judges.

FRANK, Circuit Judge.

From our examination of the knives and containers, and the other exhibits, we think there is, to say the least, considerable doubt whether, on this record, there was marked creativeness in the appearance of plaintiff's knives (made in the well-known form of a hunting knife) or of the containers, or in putting such knives in such containers. But we shall assume, arguendo, that the plaintiff's design was unquestionably unique and the result of genius. Even on that assumption, we think that, without more, plaintiff was not entitled to a preliminary injunction. Our reasons follow:

In the first place, we regard the following as well settled. 1 The fact that the design of an article is strikingly novel and beautiful, and the fact that its first producer has spent large sums in advertising which has made the article popular with consumers, give that first producer no rights against others who subsequently imitate it and (taking advantage of the consumer-popularity of the article, due to the first producer's advertising) sell it competitively- unless the first producer has a monopoly based upon (1) a patent on the design or (2) a so-called secondary meaning. Absent (1) and (2), the first producer has no legal complaint because the imitators have been enriched by his efforts, have enjoyed what is known as a 'free ride.' For the common law favors competition; and it is of the essence of competition that competitors copy and undersell the product of an originator. The competitors do not lose their favored common-law position merely because someone chooses to call them 'free riders.' To have protection from such competition, the originator must possess some sort of monopoly.

In General Time Instrument Corp. v. United States Time Corp., 2 Cir., 165 F.2d 853, at page 855 where plaintiff had sold amost

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3, 000, 000 of its clocks and had spent about $2, 000, 000 in advertising the same from 1939 to 1946, we said: 'This measures plaintiff's efforts to establish a secondary meaning, but does not determine its success. * * * Large expenditures for advertising do not compel a conclusion that the task has been accomplished.' We also said: 'The copying of an unpatented design does not in itself constitute unfair competition.' 2

To obtain a valid design patent is exceedingly difficult. 3 Probably that explains why plaintiff did not even apply for a patent. Had the statute permitted the procuring of a design copyright and had plaintiff procured one, defendant's conduct in deliberately copying plaintiff's design would have been actionable. But plaintiff has no such copyright. And there is no such thing as a common-law design copyright. That is understandable. For such a copyright, not created under congressional legislation, would be free of the constitutional provision limiting the life of a copyright, and would be a perpetual monopoly.

Accordingly, an injunction could be proper here only if plaintiff showed that it had acquired a 'secondary meaning' in the design of its knives, or containers- i.e., showed a likelihood that purchasers of defendants' products would believe that they came from the same source as plaintiff's. (Of course, it would suffice to show such a likelihood; proof of actual instances of confusion is not required.) As this court, per Judge Learned Hand, has said, it 'is an absolute condition to any relief whatever that the plaintiff in such cases show that the appearance of his wares has in fact come to mean that some particular person- the plaintiff may not be individually known- makes them, and that the public cares who does make them, and not merely for their appearance and structure. * * * The critical question of fact at the outset always is whether the public is moved in any degree to buy the article because of its source and what are the features by which it distinguishes that source. Unless the plaintiff can answer this question he can take no step forward; no degree of imitation of details is actionable in its absence.' 4 And this is true, we have said, even if the defendant copies 'slavishly' 5 or 'down to the last detail.' 6

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The record contains nothing but affidavits and exhibits. We are in as good a position as the trial judge to evaluate such evidence. 7 We think it does not suffice to establish the essential likelihood of consumer-confusion as to source. Standing alone, deliberate copying of the appearance of plaintiff's product (while...

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