Coty, Inc. v. Le Blume Import Co., Inc.

• Decision Date: 08 March 1923
• Parties: COTY, Inc., v. LE BLUME IMPORT CO., Inc. LE BLUME IMPORT CO., Inc., v. COTY et al.
• Court: U.S. District Court — Southern District of New York

292 F. 264

COTY, Inc., v. LE BLUME IMPORT CO., Inc.

LE BLUME IMPORT CO., Inc., v. COTY et al.

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

March 8, 1923

Coty is a French perfumer who has organized a Delaware corporation to conduct his American business. Part of this consists of the sale of a blended scent sold under the name 'L'Origan,' or 'L Origan,' resembling no known flower or natural smell. This trade Coty began in 1909 recently it has grown to enormous proportions, about $3,000,000 in the year 1922. He has a registered trade-mark 'L Origan,' and, has systematically suppressed the use of the word by other perfumers. The Le Blume Company is a New York corporation and proposes to market the scent of another French perfumer, d'Heraud, which has a smell closely like Coty's article. D'Heraud's bottles bear the name 'origan,' but there is no simulation in make-up and the case stands solely on the word.

'Origan' is a word known in English, French, and German, borrowed from the Latin, meaning an aromatic plant or its extract akin to thyme and marjoram. It has been used in France by several perfumers for a scent which is not definitely shown to smell like Coty's, but may be assumed to do so. How far the smell resembles that of true origan is a point of dispute but Coty uses none of the essence of origan in his blend. Other facts are stated in the opinion.

Charles H. Tuttle, Murray C. Bernays, and Emily C. Holt, all of New York City, for Le Blume Import Co.

Charles Neave, Hugo Mock, and Asher Blum, all of New York City, for Coty.

William Hayward, of New York City, for the Collector.

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

When Coty began to import his scent into the United States in 1909, the word 'origan' signified nothing to his American customers except the article itself. Except for d'Heraud's statement in his affidavit that Oriza had in 1901 'shipped a perfume to the United States' under that name, there is no evidence that before 1909 any one had ever used the word in America upon any toilet scent at all. Under that name Coty has by dint of advertising built up an enormous business, from which d'Heraud and others are naturally anxious to profit. It is quite true that 'origan' is an English word, and though apparently it denotes another botanical genus than 'marjoram,' commonly the two are assimilated and with them the 'thyme' of literature and the pharmacopeia. Each refers to an aromatic plant out of which there may be extracted an essential oil, and while there is a sharp dispute in the papers whether this is in fact used or indeed usable as an ingredient of scents, there seems to be little doubt but that it is. But for all that 'origan' is in no sense a word of common speech in English. It has retained currency among pharmacists, but so far as it is not otherwise obsolete, it appears to be found only in works like Sir Richard Burton's Arabian Nights, where the diction is poetic and designedly artificial. I do not believe that my own ignorance of it before this case was exceptional, even among educated persons.

Even if this be not so, the word, so far as it has any meaning whatever, means something altogether different from Coty's scent, the product or the smell. Unfortunately there is a dispute as to just what the real smell is. The Le Blume Company insist that the oils in evidence, which to my nose are like turpentine, do not smell like origan, but they produce nothing on which they will stand as the true smell. It is true that d'Heraud swears that his 'origan' contains the essence and smells like it, but that I cannot accept. If so, then Coty's scent smells of it too, and that without containing a drop. Again, Stanislaus has prepared a compound with 5 per cent. origan-- which I assume to be the genuine oil-- and the rest of some other fragrant essence. The result is pleasing, but it is not put forward as origan. Now the name of a scent when descriptive means, not that the compound contains it as an ingredient, but that it smells like the thing. It would be, for instance, misleading to name a scent, rose, or lilac, because it contained an imperceptible quantity of those essences, if it did not smell like the flowers. It is therefore quite idle to show that d'Heraud puts some origan in his scent and that Coty does not. Neither fact has any bearing whatever on whether the name is true or false as description. A word means what people understand it to say and there is an end of it. Nobody, at least nobody for practical purposes, who buys Coty's scent or may buy d'Heraud's, understands that she is getting the smell of thyme, marjoram, and the origan of Spenser and Sir Richard Burton. Some pharmacists and men of letters might be deceived, but so far as I am aware, these are not given to scents, at least in America. And even though here and there some sensuous precieuse be disappointed, Coty may save his trade for aught of her.

All this in my judgment disposes of two of the Le Blume Company's positions, that Coty's user is descriptive and deceptive. There was no deceit in Coty's use of the word, for it did not and could not deceive those to whom it was addressed. The word was not descriptive, since it was not generic, meaning nothing but that particular scent coming in fact from the only source in America, Coty. Nor is this last conclusion affected by the fact, which I accept, that in France and perhaps also in England, a scent of similar smell has been marketed by several others under the name 'origan.' In those countries the name would be generic and no maker...