Baldwin v. Grier Bros Co.

• Decision Date: 07 July 1914
• Docket Number: 26.
• Citation: 215 F. 735
• Parties: BALDWIN et al. v. GRIER BROS. CO.
• Court: U.S. District Court — Western District of Pennsylvania

215 F. 735

BALDWIN et al. v. GRIER BROS. CO.

No. 26.

United States District Court, W.D. Pennsylvania.

July 7, 1914

Wesley G. Carr, of Pittsburgh, Pa. (James Q. Rice, of New York City of counsel), for plaintiffs.

Jos. M Nesbit and Brown & Stewart, all of Pittsburgh, Pa., for defendant.

ORR District Judge.

The plaintiffs by their bill charge the defendant with infringement of reissue patent of the United States, No 13,542, issued to Frederick E. Baldwin for an acetylene gas generating lamp under date of March 11, 1913, and have also charged the defendant with unfair competition in trade in marketing an unfair copy of a portable miner's acetylene lamp known as the 'Baldwin' lamp. The defendant has denied the validity of the patent, upon the ground, as it alleges in the answer, that the said reissue patent and the original patent No. 821,580 were fully anticipated in the prior art, and defendant denies that it has been at all unfair in its competition with the plaintiff in marketing a portable miner's acetylene lamp manufactured by it.

Taking up first the question of unfair competition, the court has reached the conclusion that the facts and law are with the plaintiff. This branch of the case was before the late Judge Young upon a motion for a preliminary injunction, which motion was sustained in an opinion filed by him on January 3 1914. That the conclusions reached by that learned judge were correct appears clearly from the evidence produced at the trial. Some time prior to January 21, 1906, on which date there appeared in the Engineering and Mining Journal a description of the Baldwin lamp, the plaintiff, Frederick E. Baldwin, began to put out a miner's acetylene cap lamp substantially like the lamp of the plaintiffs. At or about that time he entered into business relations with the other plaintiff, whereby the latter acquired the sole right to manufacture the said lamp in consideration of a royalty upon each lamp paid and to be paid to the former. There was difficulty in introducing the lamp to the intended users. Miners were not familiar with acetylene, and had to be taught its uses. Miners supply stores did not carry calcium carbid. The carbid on the market was usually in lumps too large for use in a cap lamp, and in some states mining inspectors would not permit the use of acetylene lamps in the mines. These difficulties, however, appear to have been largely, if not wholly, overcome in mines where safety lamps are not required, and the plaintiffs have sold the Baldwin lamp to the number of 900,000 or thereabouts. The Baldwin lamp was packed in a pasteboard box with an extra carbid container to be substituted for the container on the lamp when the carbid therein would be exhausted, and equipped also with a wire for the purpose of cleaning the small opening of the gas burner, which wire was attached to a flat piece of metal of singular shape with a hole through it which could be hung upon any one of certain metal hooks or braces with which the lamp was equipped and intended to be used for suspending and steadying the lamp against the cap. In the box with the lamp and the extra carbid container and the cleanser was a circular, containing printed instructions to users in four or five different languages. Some time in the early part or in the middle of the year 1913, the defendant began the manufacture and sale of its lamp, called herein the 'Grier' lamp. That lamp was designed to imitate the Baldwin lamp. This conclusion cannot be resisted from a careful consideration of the testimony and of the exhibits. It is similar in design. It was packed in a similar box. It contained the extra carbid container. It contained the cleanser, even with the piece of metal attached thereto, with a hole in it, and it contained an almost verbatim copy of the circular which accompanied the Baldwin lamps. It is a fact that the box containing the Grier lamp has not the same printing upon it the Baldwin box had, and it is true that there appears stamped in the brass which forms part of the top of the Grier lamp the name 'Grier Brothers, Pittsburgh, Pa.,' with a star, yet such stamping is on the same part of the lamp as the stamping of the Baldwin lamp. These variations are not sufficient to relieve the defendant from the charge of unfair competition. The defendant also has attached to the reflector of its lamp a small apparatus called a sparker, which will throw a spark and light the lamp. But this sparker is a removable adjunct to the lamp, and does not give sufficient identity to the defendant's lamp to avoid deception. Defendant says that its lamp is sold, not because of its imitation of the Baldwin lamp, but because of the addition of the sparker. The fact is found to be that the sparker, while it may be a factor in inducing the purchase of the Grier lamp, yet it is not the chief cause. It is the general similarity of the Grier lamp to the Baldwin lamp, in connection with a knowledge of and experience with the Baldwin lamp, prior to the introduction of the Grier lamp, that is the factor in making the sales of the defendant's product. Defendant insists that the reasons for the similarity of appearance are inherent in the nature of the article, or in the necessary, convenient, or mechanical methods and processes of manufacture. I cannot so find the fact to be. The mere facts that a miner's lamp must be light enough to be carried upon the cap of the miner; that it must be short enough to escape the roof of the mine; that brass is a light material and resists the action of the mine waters; that a reflector will more easily fit in against the side of an inverted cone than against some other shape, are not sufficient to destroy the plaintiffs' rights to the fruits of their labor, in the introduction of their lamp.

Defendant offered the record of a suit instituted by the said Baldwin against one Jacob Bleser in the Circuit Court of the United States for the Southern District of Illinois, wherein the question of unfair competition, as well as the validity of patent No. 821,580, were both involved, and in which there was a decision that the defendant Bleser had not been guilty of unfair competition, and defendant offered evidence of the similarity of Bleser's lamp with the lamp of the plaintiffs in the case at bar. This case will be referred to later in the consideration of the question of infringement. As the court regards it, however, it has no bearing upon the question of unfair competition in the case at bar. Even if Bleser was not guilty of unfair competition, and even if his acts were the same as those of the defendant in the case at bar, yet Bleser's release from liability would not afford protection to the defendant here. However, it does not appear that Bleser was guilty of the same acts of which the defendant has been shown to be guilty in this case. The charge of unfair competition in that case, although raised, may not have been sufficiently pressed. In every aspect of the case at bar, after a careful consideration of the evidence and arguments, the court finds as a fact that the defendant has been and is guilty of unfair competition and should be restrained by injunction.

The other questions in the case are not without difficulty. There is nothing new in the use of acetylene gas as an illuminant...