Bayer Co., Inc. v. United Drug Co.

• Decision Date: 14 April 1921
• Parties: BAYER CO., Inc., v. UNITED DRUG CO.
• Court: U.S. District Court — Southern District of New York

272 F. 505

BAYER CO., Inc., v. UNITED DRUG CO.

United States District Court, S.D. New York.

April 14, 1921

[Copyrighted Material Omitted] [Copyrighted Material Omitted]

This was about 17 months before the patent expired, and the wholesale chemists were obliged to sell the tablets under the make-up just mentioned or not to get them at all. When the patent did expire at the end of February, 1917, these chemists differed in their treatment of the trade-mark. Some agreed to respect it as such, while others, of whom the defendant was one, insisted that it had become a descriptive name for the drug, and that the right to use it was free to the public along with its manufacture. This is the issue which this case invites.

Livingston Gifford and C. G. Heylmun, both of New York City, and Edward S. Rogers, of Chicago, Ill., for plaintiff.

Laurence A. Janney, of Chicago, Ill., for defendant.

LEARNED HAND, District Judge (after stating the facts as above).

The issues in this case do not, I think, depend upon the decision in Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169 16 Sup.Ct. 1002, 41 L.Ed. 118, so much as the defendant supposes. That case decided no more than that the existence of a patent during the period when the goods became known to the public might be a controlling element in determining whether the name under which they were sold indicated a single source of origin. Since then courts have several times said that the name of goods protected by patent might in fact indicate not only the kind of goods they were, but as well that they emanated from a single source. President Suspender Co. v. Macwilliam, 238 F. 159, 151 C.C.A. 235; Hughes v. Alfred H. Smith Co., 209 F. 37, 126 C.C.A. 179; Scandinavia Belting Co. v. Asbestos, etc., Co., 257 F. 937, 960, 169 C.C.A. 87; Searchlight Gas Co. v. Prest-o-Lite Co., 215 F. 693, 695, 131 C.C.A. 626.

So here it might be that the name 'Aspirin' in fact had come at once to describe the drug in question and also its origin from a single source. If it did, that would be enough to justify some protection, since the identity of the source need not be known. Birmingham, etc., Co. v. Powell, (1897) App. Cas. 710; Wetherspoon v. Currie, L.R. 5. H.L. 508. Indeed, the whole law of 'secondary meaning' is built upon that presupposition.

The single question, as I view it, in all these cases, is merely one of fact: What do the buyers understand by the word for whose use the parties are contending? If they understand by it only the kind of goods sold, then, I take it, it makes no difference whatever what efforts the plaintiff has made to get them to understand more. He has failed, and he cannot say that, when the defendant uses the word, he is taking away customers who wanted to deal with him, however closely disguised he may be allowed to keep his identity. So here the question is whether the buyers merely understood that the word 'Aspirin' meant this kind of drug, or whether it meant that and more than that; i.e., that it came from the same single, though, if one please anonymous, source from which they had got it before. Prima facie I should say, since the word is coined and means nothing by itself, that the defendant must show that it means only the kind of drug to which it applies. The fact that it was patented until 1917 is indeed a material circumstance, but it is not necessarily controlling.

In deciding that issue I cannot, however, approach the question formally, as the plaintiff wishes; as to say that there was a user before the patent, and therefore the patent could not forfeit this property right, or that there was never any intention to abandon the trade-mark and so it must have continued. No doubt it is convenient for many purposes to treat a trade-mark as property; yet we shall never, I think, keep clear in our ideas on this subject, unless we remember that relief always depends upon the idea that no man shall be allowed to mislead people into supposing that his goods are the plaintiff's, and that there can be no right or remedy until the plaintiff can show that at least presumptively this will result. Hanover Milling Co. v. Metcalf, 240 U.S. 403, 36 Sup.Ct. 357, 60 L.Ed. 709.

In the case at bar the evidence shows that there is a class of buyers to whom the word 'Aspirin' has always signified the plaintiff, more specifically indeed than was necessary for its protection. I refer to manufacturing chemists, to physicians, and probably to retail druggists. From 1899 it flooded the mails with assertions that 'Aspirin' meant its own manufacture. This was done in pamphlets, advertisements in trade papers, on the packages and cartons, and by the gratuitous distribution of samples. True, after 1904 it abandoned the phrase 'acetyl salicylic acid' for 'monoaceticacidester of salicylicacid,' but even that extraordinary collocation of letters was intelligible to these classes of buyers who, except possibly the more ignorant of the retail druggists, were measurably versed in the general jargon of pharmaceutical chemistry. Moreover, the drug continued to be generally known by the more tolerable phrase 'acetyl salicylic acid,' which also adequately described its chemical organization. As to these buyers the plaintiff has therefore, I think, made out a case at least to compel the addition of some distinguishing suffix, even though its monopoly had been more perfect than in fact it was.

The crux of this controversy, however, lies not in the use of the word to these buyers, but to the general consuming public, composed of all sorts of buyers from those somewhat acquainted with pharmaceutical terms to those who knew nothing of them. The only reasonable inference from the evidence is that these did not understand by the word anything more than a kind of drug to which for one reason or another they had become habituated. It is quite clear that while the drug was sold as powder this must have been so. It was dispensed substantially altogether on prescription during this period, and, although physicians appear to have used the terms, 'Aspirin' or 'acetyl salicylic acid' indifferently, it cannot be that such patients as read their prescriptions attributed to 'Aspirin' any other meaning than as an ingredient in a general compound, to which faith and science might impart therapeutic virtue. Nor is there any evidence that such as may have seen both terms identified them as the same drug. I cannot speculate as to how many in fact did so. No packages could possibly have reached the consumer, nor was any advertising addressed to them; their only acquaintance with the word was as the name for a drug in whose curative properties they had got confidence.

In 1904, however, they began to get acquainted with it in a different way, for then all the larger manufacturing chemists began to make tablets, and the trade grew to extraordinary proportions. The consumer, as both sides agree, had long before the autumn of 1915 very largely abandoned consultation with physicians and assumed the right to drug himself as his own prudence and moderation might prescribe. In all cases-- omitting for the moment the infringing product-- the drug was sold in bottles labeled 'Aspirin' with some indication of the name of the tablet maker, but none of the plaintiff. It is probable that by far the greater part of the tablets sold were in dozens or less, and that the bottles so labeled did not generally reach the hands of the consumer, but, even so, a not inconsiderable number of bottles of 100 were sold, and as to the rest they were sold only under the name 'Aspirin.' The consumer did not know and could not possibly know the manufacturer of the drug which he got, or whether one or more chemists made it in the United States. He never heard the name 'acetylsalicylic acid' as applied to it, and without some education could not possibly have kept it in his mind, if he had. So far as any means of information at all were open to him, they indicated that it was made by most large chemists indiscriminately.

This being the situation up to the autumn of 1915, the defendant seems to me to have effectually rebutted any presumption which the coined word might carry. However, the plaintiff argues along with this user large infringing sales of the drug were being made to consumers under the name 'acetyl salicylic acid.' It has indeed proved that it was unable absolutely to protect the monopoly of the patent, and it is clear that large quantities were piratically sold, though, so far as this record shows, with uniform respect for its trade-mark. Further, a good many retail druggists swore, with undoubted truth, that their customers got accustomed to the use of the phrase and could either ask for the drug or get it written out on a slip of paper and present that. I think I must accept the record as showing that this went on to a substantial, though obviously to a wholly indeterminate, extent. However, I need not accept, because I do not believe, that all the piratical drug was sold to the consumer under the name 'acetyl salicylic acid.' This is inherently improbable, and evidence to the contrary was not produced by, and naturally not available to, the plaintiff.

Aside from the fact that there is authority for saying that the inadequacy of the patent wholly to protect the plaintiff is immaterial (Horlick's Food Co. v. Elgin Milkine Co., 120 F. 264, 56 C.C.A. 544), this evidence does not appear to me to help the plaintiff at all. It shows nothing more than that there was a class of buyers who knew a drug going by the name 'acetyl salicylic acid,' which was useful for some purposes, in fact (though this they did not necessarily know), the same as those for which 'Aspirin' was useful. There is no evidence that these buyers knew that this drug was...