Kaeser & Blair v. MERCHANTS'ASS'N

• Decision Date: 07 April 1933
• Docket Number: No. 6142.,6142.
• Citation: 64 F.2d 575
• Parties: KAESER & BLAIR, Inc., v. MERCHANTS' ASS'N, Inc.
• Court: U.S. Court of Appeals — Sixth Circuit

64 F.2d 575 (1933)

KAESER & BLAIR, Inc., v. MERCHANTS' ASS'N, Inc.

No. 6142.

Circuit Court of Appeals, Sixth Circuit.

April 7, 1933.

Murray Seasongood and Robert P. Goldman, both of Cincinnati, Ohio (Paxton & Seasongood and Evans L. DeCamp, all of Cincinnati, Ohio, on the brief), for appellant.

H. A. Toulmin, of Dayton, Ohio (H. A. Toulmin, Jr., and G. R. Murray, both of Dayton, Ohio, on the brief), for appellee.

Before MOORMAN, HICKS, and SIMONS, Circuit Judges.

MOORMAN, Circuit Judge.

The appellant and appellee are each engaged in selling stationery such as letterheads, billheads, and calling cards. Each publishes catalogues containing cuts of suitable designs for use on stationery, and each gives to its customers the free use of these designs. The appellee's catalogues are copyrighted, and this suit was brought for infringement of the copyrights, for infringement of appellee's registered trade-mark, and for unfair trade competition. On the hearing of the case the trial court dismissed the charge of trade-mark infringement, but held that the appellant had been guilty of unfair trade competition and of infringement of the appellee's copyrights. It accordingly enjoined the appellant from committing other acts of unfair competition or from making or causing to be made any portion of the copyrighted publications, ordered the appellant to account for and pay over to the appellee any gains or profits which it had theretofore received as a result of its unfair and illegal practices, and referred the cause to a special master to hear evidence and report to the court his finding with respect thereto. It further decreed that the appellant deliver up to the marshal of the court for destruction all infringing copies of its catalogues, together with all plates, materials, matrices, or other means for making such copies.

The proofs show that the goods of each of the parties are sold on orders by mail from catalogues or on orders given to salesmen who exhibit the catalogues and permit the customer to select the designs he wishes for his stationery. No evidence was offered to show the actual misleading of any of appellee's customers or that appellant had ever attempted to palm off its goods as the goods of the appellee. The covers of the catalogues are dissimilar in color, appearance, design, and make-up. The principal place of business of appellant is Cincinnati, Ohio; the principal places of business of the appellee are Dayton, Ohio, and Chicago, Ill. Appellant's name and place of business appear prominently on the outside of its catalogues, and appellee's name, with its places of business, is given equal prominence on its catalogues.

The finding of unfair competition was based upon exhibits introduced in evidence. This court, therefore, cannot give to the finding the weight that attaches to a finding of fact where the court has heard witnesses in open court, but must draw its own deductions and conclusions from an examination of the exhibits. The Natal (C. C. A.) 14 F.(2d) 382, 384; W. H. Anderson Co. v. Baldwin Law Pub. Co., 27 F.(2d) 82, 86 (6 C. C. A.); Nashua Mfg. Co. v. Berenzweig (C. C. A.) 39 F.(2d) 896, 897. Upon considering and comparing the exhibits, we are unable to conclude that appellant has been guilty of practicing any unfair trade methods. Wirfs v. D. W. Bosley Co. (C. C. A.) 20 F.(2d) 632, 635; Wornova Mfg. Co. v. McCawley & Co. (C. C. A.) 11 F.(2d) 465. The danger of confusion or deception which might otherwise exist seems to us to be entirely eliminated by the method of sale which the parties have adopted. Neither sells over the counter; both sell directly to the consumer on orders by mail or through salesmen; and the appellant's catalogues, as we have seen, are too unlike appellee's in color and appearance to lead to deception as to the origin of the goods. Cf. Oil Conservation Engineering Co. v. Brooks E. Co., 52 F.(2d) 783, 785 (6 C. C. A.); Hazelton Boiler Co. v. Hazelton Tripod Boiler Co., 142 Ill. 494, 508, 30 N. E. 339.

Nor has the appellant been guilty of unfair competition in using appellee's method of doing business. It is not unfair practice to use a method that some one else has devised and found effective. To hold that it is would be to foster monopolies and stifle competition. It is the doing of an act which misleads or is intended to mislead the public as to the origin of the goods that is unfair competition. This was the ground of decision in Meccano v. Wagner (D. C.) 234 F. 912, where the products were sold over the counter,...