Draper v. Skerrett

• Decision Date: 03 March 1902
• Docket Number: 43.
• Citation: 116 F. 206
• Parties: DRAPER v. SKERRETT et al.
• Court: U.S. District Court — Eastern District of Pennsylvania

116 F. 206

DRAPER v. SKERRETT et al.

No. 43.

United States Circuit Court, E.D. Pennsylvania.

March 3, 1902

Edward Brooks, Jr., for plaintiff.

Michael J. Ryan and John W. Jennings, for defendants.

ARCHBALD District Judge. ^[4]

The question of jurisdiction has been raised, and is therefore the first to be disposed of. If this were a suit for the infringement of a registered trade-mark, under the statute (Act March 3, 1881; 21 Stat. 502), the court would have jurisdiction without regard to the amount in controversy (section 7). But as it stands, whatever is required to give jurisdiction must appear. Elgin Nat. Watch Co. v Illinois Watch Case Co., 179 U.S. 665, 21 Sup.Ct. 270 45 L.Ed. 365. It is to be remembered, however, in the present instance, that the plaintiff proceeds for the purpose of protecting his trade-name; and it is the value of that name as measured by the damages to it, not only present, but prospective, which determines the amount in controversy. This the plaintiff avers in the bill to be above the sum of $2,000, and I think the claim is sustained by the evidence. The trade per year taken away by the defendants, if not restrained, would soon exceed that sum, if it does not now do so; and, as already intimated, that is the real guide. The damages to be awarded for the injury already inflicted are merely incident to the general relief prayed for, and do not control the question

It must be admitted that the plaintiff has no right to use the term 'French Tissue' as a trade-mark for the emollient paper which he puts up and puts upon the market. The word 'French' is broadly geographic, indicating its origin, and the word 'Tissue' is descriptive of its texture, and was applied to it in France, from whence it comes, long before it was introduced into this country. Neither singly, therefore, nor in combination, can these words be so employed. Canal Co. v. Clark, 13 Wall. 311, 20 L.Ed. 581; Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U.S. 537, 11 Sup.Ct. 396, 34 L.Ed. 997; Brown Chemical Co. v. Meyer, 139 U.S. 540, 11 Sup.Ct. 625, 35 L.Ed. 247; Elgin Nat. Watch Co. v. Illinois Watch Case Co., 179 U.S. 665, 21 Sup.Ct. 270, 45 L.Ed. 365; Brennan v. Dry Goods Co., 47 C.C.A. 532, 108 F. 624. This is not to deny, however, that even geographical or local names, or those which originally were merely descriptive, may become so associated in an acquired or secondary significance with the goods manufactured or produced by a particular person as to identify and designate them in the general market as his especial production. Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 16 Sup.Ct. 1002, 41 L.Ed. 118; Elgin Nat. Watch Co. v. Illinois Watch Case Co., 179 U.S. 665, 21 Sup.Ct. 270, 45 L.Ed. 365; Pillsbury-Washburn Flour Mills Co. v. Eagle, 30 C.C.A. 386, 86 F. 608, 41 L.R.A. 162; La Republique Francaise v. Saratoga Vichy Springs Co., 46 C.C.A. 418, 107 F. 459; Shaver v. Heller & Merz Co., 48 C.C.A. 48, 108 F. 821; American Waltham Watch Co. v. U.S. Watch Co., 173 Mass. 85, 53 N.E. 141, 43 L.R.A. 826, 73 Am.St.Rep. 263; Wotherspoon v. Currie, L.R. 5 H.L. 508; Montgomery v. Thompson (1891) App. Cas. 217; Reddaway v. Banham (1896) App. Cas. 199. But that is really another matter, and, however cognate, is sustained upon a different principle. It constitutes, not a trade-mark, but a trade-name, and is protected only where it is infringed by what has come to be known as 'unfair competition.' It is upon this that the plaintiff, having no valid trade-mark, is compelled to rely.

It may seem somewhat of a refinement to hold that certain terms are not entitled to protection as a trade-mark, and yet that their use may be restrained to the same extent as if they were, under the claim of a trade-name and the plea of unfair competition. This is evidently in the mind of Mr. Justice Brown in Brown Chemical Co. v. Meyer, 139 U.S. 540, 11 Sup.Ct. 625, 35 L.Ed. 247, where he says:

'But if the words * * * cannot be appropriated as a trade-mark, it is difficult to see upon what theory a person making use of these or similar words can be enjoined.' But it is nevertheless true that even without any strict proprietary interest, as a trade-mark, in the terms employed, a party is entitled to protection against the unfair use of them by another in the effort to take away the trade or custom which he has built up. This is established by a host of cases, which it would be an affectation to attempt to cite, but it is important to note the principle upon which they proceed. To justify a court of equity in interfering, there must be something more than the mere duplication by the one party of the other's trade-name. This is found in the deceptive use of imitative methods of display or other devices by which the public are led into buying the infringer's goods when they intended to buy those of the original producer. The fraud which is thus perpetrated is a legitimate ground for equitable interference, and is the practical basis of it. As said by Mr. Chief Justice Fuller in Elgin Nat. Watch Co. v. Illinois Watch Case Co., 179 U.S. 665, 21 Sup.Ct. 270, 45 L.Ed. 365:

'The essence of the wrong consists in the sale of the goods of one manufacturer or vendor for those of another. ' And again: 'Such circumstances must be made out as will show wrongful intent in fact, or justify that inference from the inevitable consequences of the act complained of.'

So it is said by Lord Herschel in Reddaway v. Banham (1896) App. Cas. 199:

'In a case of this description, the mere proof by the plaintiff that the defendant was using a name, word, or device, which he had adopted to distinguish his goods, would not entitle him to any relief. He could only obtain it by proving further that the defendant was using it under such circumstances and in such manner as to put off his goods as the goods of the plaintiff.'

The rule is forcibly put by Mitchell, J., in Brown v. Seidel, 153 Pa. '4; 25 A. 1064, who, though dissenting from the rest of the court, expresses the true principle:

'Where the imitation is with intent to acquire, wrongfully and in an underhand manner, a portion of another's good will or business, equity will enjoin the attempt, as a fraud, though the imitation be not of a legal trade-mark. And such intent may be gathered from imitation of name, descriptive words used, size or style of package, color or shape or mode of application of label, general appearance, or any circumstances which afford basis for the inference of an intent to copy; and, where such intent is thus indicated, the actual resemblance need not be so close as to deceive any but the most careless buyers. It is enjoined, not as a deception of the public likely to be successful, but as an attempt to defraud the plaintiff. Any rule short of this is a premium on dishonesty, and an invitation to a commercial policy which measures its actions, not by conscience or right, but by ingenuity in dodging the law.'

Judged by these tests, the relief asked for in the present instance should be granted. The facts which justify this conclusion are not in serious dispute. The plaintiff, a druggist of Springfield, Mass., while in Europe in the summer of 1889 was attracted by a thin paper dressing for corns and bunions which he found in use in Paris under the name of 'Papier Fayard.' The paper was prepared according to a registered formula, and was sold in strips or rolls about 12 by 15 inches in size, at 25 cents a roll; but in that shape the preparation spread upon it hardened and cracked after a time, and peeled off, and Mr. Draper conceived the idea of protecting the surface with a waxed covering, cutting it into smaller, flat pieces, and putting them in envelopes ready for use. To the article so made up he gave the name of 'French Tissue.' This he had prominently printed on the face of the envelopes, accompanied by a representation of the Eiffel Tower and certain lettering commending the merits of the preparation, and giving directions for its use, with his own name and address at the foot. he also used a small brown label, with the words 'French Tissue,' also carrying brief printed directions. In the envelope, along with the paper, was a circular or wrapper, on the face of which was printed a catching reference to Paris and the Eiffel Tower, leading up to an encomium of the tissue itself, while on the other side was an advertisement of the plaintiff's other preparations. From that time to this he has put up the paper in this fashion, and has acquired a considerable trade in it. Some time in February, 1896, Mr. Skerrett, one of the defendants,-- a prominent firm in Philadelphia,-- called on Mr. Draper, at Springfield, and solicited an arrangement by which they could handle the...