Coty v. Prestonettes, Inc.

• Decision Date: 31 October 1922
• Docket Number: 112.
• Parties: COTY v. PRESTONETTES, Inc.
• Court: U.S. Court of Appeals — Second Circuit

285 F. 501

COTY v. PRESTONETTES, Inc.

No. 112.

United States Court of Appeals, Second Circuit.

October 31, 1922

[Copyrighted Material Omitted]

Mock &amp Blum, of New York City, for appellant.

I Maurice Wormser and Isaac Reiss, both of New York City, for appellee.

Before ROGERS, MANTON, and MAYER, Circuit Judges.

ROGERS Circuit Judge.

This suit is brought for the infringement of trade-marks and a preliminary injunction as prayed for has been denied, although a limited restriction has been placed upon the defendant.

The plaintiff is a citizen of the republic of France and a resident of the city of Paris. Under section 24 of the Judicial Code (Comp. St. Sec. 991), an alien can sue a citizen of the United States in a federal court. He must, however, sue in the district in which the citizen resides. The alienage of the plaintiff of itself gives jurisdiction to a court of the United States as against a citizen. Vidal v. South American Securities Co. (C.C.A.) 276 F. 855, 865. The defendant herein is, however, a citizen of the state of New York, being a corporation organized under the laws of New York and having its principal place of business in the Southern District of New York. And as the amount in controversy herein and the value thereof is alleged in the complaint to be in excess of the sum of $3,000, exclusive of interest and costs, the District Court has jurisdiction on the ground that the suit is one between an alien and a citizen which, as we proceed, will be found to be a fact of importance, as the defendant is alleged to have violated the statutes of the state of New York.

There is an additional ground of jurisdiction, however, inasmuch as it is claimed that the defendant has infringed the trade-mark which the plaintiff has registered under the Trade-Mark Acts of Congress. The District Courts have jurisdiction in such cases.

The plaintiff is, and for a number of years has been, engaged in manufacturing in France perfumes, toilet waters, face and sachet powders, lotions for skin and hair, and other toilet preparations. His office and principal place of business is in Suresnes, which is a suburb of Paris. Previous to and in the year 1909 he alleges that he was engaged in exporting to the United States the before-mentioned toilet preparations, and selling them in this country through a representative. In that year he alleges that he adopted the trade-mark and trade-name L'Origan to designate his various preparations and to identify them to the trade in the United States and elsewhere as being of his manufacture. And in that year and continuously since that time he has exported to and sold in this country, both in interstate and intrastate commerce, his aforesaid preparations, packed in cartons, or bottles or boxes, with labels upon which the said trade-mark L'Origan was prominently placed to identify the goods as being of his manufacture. Large quantities of his preparations are alleged to have been sold in the United States, and a very large and valuable good will was built up in this country in connection with this trade-mark L'Origan as designating to the public the plaintiff's products, which have attained a very high reputation because of his skill and the excellence of the ingredients used. Indeed, since 1905 his preparations have been sold throughout the principal countries of the world, and he has come to be recognized throughout the world as one of the leading manufacturers of perfumes. His business in the United States has steadily increased, and in the year 1920 the sale of his products in this country amounted to more than $1,000,000, and in 1921 they amounted to more than $3,000,000. Prior to the bringing of this suit it is alleged that he has sold more than $7,000,000 worth of his products in the United States.

It is alleged that on October 27, 1920, the plaintiff filed an application in the United States Patent Office to register the trade-mark L'Origan for the preparations before mentioned. And on September 27, 1921, a certificate of registration No. 146,974 was issued and is still in force, and the plaintiff, it is alleged, always has been and now is the sole and exclusive owner thereof.

It is also alleged that from the commencement of his business in 1905 up to the present time the plaintiff has always caused his surname Coty to be prominently affixed to each and every container of his product that has been sold by him so that since 1905 his trade-mark has been Coty, and that, so far as he knows and as he verily believes, he has been the only person to use the name Coty throughout the world as a trade-mark for perfumes and toilet preparations.

And it is alleged that on October 7, 1920, the plaintiff, according to the provisions of the act of March 19, 1920 (41 Stat. 533), filed in the United States Patent Office an application for the registration of the trade-mark Coty for his toilet preparations, and that upon October 4, 1921, such registration was granted, and certificate No. 147,206 was issued to him, and that he has at all times since been the sole owner thereof and all the business and good will connected therewith.

The complaint alleges that, in addition to the great care and skill which plaintiff has exercised in producing the before-mentioned products designated by the trade-mark L'Origan, he always has been and now is very careful in exercising the best of skill in so packing his products and in particular the face powder so that they shall retain their original desirable qualities; that in particular in packing and marketing the face powder, including compacts thereof, which is and for many years has been a well-known toilet article, plaintiff always has been and now is exceedingly careful to pack said compacts tightly sealed in a container free from all metallic ingredients. Such container has always been made of cardboard or metal lined with cardboard.

The complaint also alleges that, notwithstanding the fact that plaintiff has never given any permission to any person whatever to repack his products, the defendant subsequent to September 27, 1921, and previous to the filing of the complaint, has offered for sale and has sold in the Southern District of New York and elsewhere in the United States metal containers containing a compact of face powder; that the compacts so sold by defendant were not manufactured by the plaintiff, but were manufactured by the defendant or caused to be manufactured by it; that the manufacture of such compacts involves not only the use of face powder as an ingredient thereof, but also of certain ingredients to act as binders, and that the manufacture of a proper compact requires skill and attention so as to make the compact of sufficient coherence and at the same time not render it too hard; the label upon the containers used by defendant has in large and prominent type the words 'Coty's L'Origan Face Powder,' and the cover thereof also clearly has the words 'Coty's L'Origan' thereon; that in addition the defendant has bottled and offered for sale and has sold in the Southern District of New York and elsewhere in the United States bottles of perfume upon which said bottles appear the words 'Coty's L'Origan'; that these bottles had not been filled by the plaintiff or with his consent and authority; and that the defendant never has had any right or authority to cause any labels to be made upon which the words 'Coty's L'Origan' appear.

It is alleged that the effect of the sale by defendant of the beforementioned compacts of face powder contained in the said metal containers has been to deceive the trade and public, in that the trade and the public have thought and will think that this is a new package put out by the plaintiff, and because the prominent and distinguishing feature of the said label is the use of plaintiff's name and trade-mark L'Origan; that the trade and public have been deceived into the belief that the compacts sold by defendant as above mentioned were the genuine compacts manufactured by the plaintiff, whereas the contrary is the case; that the effect of the bottling by the said defendant of perfume under the name 'Coty's L'Origan' has been to cause the public to think that this perfume has been bottled and offered for sale by the plaintiff or with his authority, whereby the plaintiff against his will has been made responsible for any lack of care or cleanliness in handling or bottling the perfume; that to bottle perfume requires care and cleanliness so that the volatile ingredients of the perfume will not evaporate, thus injuring its quality; and that the perfume shall be maintained in a perfectly clean and sanitary condition as it is often applied to the skin of the person using it.

It is alleged that the packing of a compact of face powder in a metal container injures the perfume added thereto, and which is the main cause of the sale thereof, in that said perfume contains a number of ingredients which are easily destroyed or altered so that the valuable properties of the perfume are injured. Plaintiff and the trade in general have always refrained from packing high-class toilet powders containing high-class perfume in metal containers, and the result of the acts complained of has been to injure the plaintiff's reputation connected with the said L'Origan face powder and will continue to injure its reputation in the future.

The plaintiff's products have been chiefly known to the trade and public by his trade-mark Coty, which is an uncommon name in the United States, and in the telephone directory of the city of New York there is no other person by that name. The plaintiff complains of the use of the trade-mark Coty and of the trade-mark L'Origan or Coty's L'Origan on the containers or bottles with products placed therein...