American Medicinal Spirits Co. v. United Distillers, 291.

• Decision Date: 11 March 1935
• Docket Number: No. 291.,291.
• Citation: 76 F.2d 124
• Parties: AMERICAN MEDICINAL SPIRITS CO. v. UNITED DISTILLERS, LIMITED, et al.
• Court: U.S. Court of Appeals — Second Circuit

76 F.2d 124 (1935)

AMERICAN MEDICINAL SPIRITS CO. v. UNITED DISTILLERS, LIMITED, et al.

No. 291.

Circuit Court of Appeals, Second Circuit.

March 11, 1935.

Kaufman, Weitzner & Celler, of New York City (Emil Weitzner, Samuel H. Kaufman, and Eugene M. Parter, all of New York City, of counsel), for appellants.

Breed, Abbott & Morgan, of New York City (Hugh S. Williamson and Gerald J. Craugh, both of New York City, of counsel), for appellee.

Before L. HAND, SWAN, and CHASE, Circuit Judges.

L. HAND, Circuit Judge.

This is an appeal from a decree pendente lite enjoining the defendants from using the words, "Bourbon de Luxe," as a name for their whisky. The plaintiff, a subsidiary of the National Distillers Products Company, is the successor of R. W. Wathen & Company, a Kentucky corporation, which was in turn the successor of Louis B. Eppstein, the executor of Milton L. Eppstein, who did business at Fort Worth, Texas. For some time before November 21, 1911 — how long does not appear — Milton Eppstein had sold bourbon whisky under the name, "Bourbon de Luxe," and on that day he registered the label in the Patent Office as a "print" (section 63, title 17, U. S. C. 17 USCA § 63). Thereafter he or his executor continued its use until March 26th, 1926, limiting it to medicinal whisky after the advent of the Eighteenth Amendment. On that day Louis B. Eppstein, as executor, sold the label and good will of the business to Wathen & Company. (As the plaintiff's title is unchallenged, we pass the obvious objection that it does not appear whether the business was sold along with the mark and the good will.) Wathen & Co. continued to sell whisky as "Bourbon de Luxe," until March 20, 1934, when it sold the label and good will to the plaintiff; again the allegations and proof appear to be insufficient, but no point is made of it. The plaintiff also continued the name, so that there has been a continuous user for twenty-three years, though how extensive does not appear, except that thirty thousand cases have been sold since 1927.

One defendant, Leonard Gordon Importation Co., is a New York corporation, which acts as importer for the other, United Distillers, Ltd., a Canadian company, incorporated in British Columbia in 1924. In 1929, this defendant adopted and registered in Canada, "Bourbon de Luxe," as a trademark for its best bourbon whisky. It did not and could not import any of this into the United States until after the repeal of the Eighteenth Amendment, but then it began to do so, putting the bottles in cartons which were Chinese copies of the plaintiff's cartons, both in text and in script. It is unnecessary to elaborate this feature of the case; even the defendants disclaim the right to continue, though they somewhat feebly protest that the bottles may go to the trade unwrapped. The fraud was patent and brazen, as appears from a moment's inspection. The judge enjoined it, as he was obviously bound to do, and the only question is whether he was wrong in going further and including the label as well. As to this the defendants argue that it is purely descriptive, and therefore not susceptible of monopoly. So far they are right; "bourbon" has for long been the name for whisky made for the most part, though not wholly, from corn; "de luxe" has become a naturalized English word; both appear in the Oxford Dictionary. But the...