Electric Auto-Lite Co. v. P. & D. MFG. CO.

• Court: U.S. Court of Appeals — Second Circuit
• Writing for the Court: MANTON, SWAN, and AUGUSTUS N. HAND, Circuit
• Citation: Electric Auto-Lite Co. v. P. & D. MFG. CO., 78 F.2d 700 (2nd Cir. 1935)
• Decision Date: 08 July 1935
• Docket Number: No. 477.,477.
• Parties: ELECTRIC AUTO-LITE CO. v. P. & D. MFG. CO., Inc., et al.

78 F.2d 700 (1935)

ELECTRIC AUTO-LITE CO. v. P. & D. MFG. CO., Inc., et al.

No. 477.

Circuit Court of Appeals, Second Circuit.

July 8, 1935.

Braselton, Whitcomb & Davies and Ward, Crosby & Neal, all of New York City (Edmund B. Whitcomb and H. O. Ernsberger, both of Toledo, Ohio, Joshus Ward, of New York City, and Carl F. Schaffer, of Toledo, Ohio, of counsel), for plaintiff-appellant.

Kenyon & Kenyon, of New York City (Schechter, Lotsch & Sulsberger, Theodore S. Kenyon, John L. Lotsch, and W. Houston Kenyon, Jr., all of New York City, of counsel), for defendants.

Before MANTON, SWAN, and AUGUSTUS N. HAND, Circuit Judges.

MANTON, Circuit Judge.

The plaintiff and defendant both appeal from the decree entered below. Plaintiff appeals from so much as dismissed the bill for noninfringement of five "Igniter Patents." The court found each of these patents valid and owned by the plaintiff. Plaintiff also appeals from that part of the decree dismissing the bill as to the Wollenweber patent, No. 1,669,888, for failure of proof of title; also from a dismissal of the bill in its entirety as against the individual defendants, and the refusal of an accounting. The defendant appeals from that part of the decree enjoining the corporate defendant from conduct held to have been unfair competition; holding it also for infringement of the "AL" trademark and enjoining the use of the mark it uses. The plaintiff has not appealed from that part of the decree holding that defendant did not infringe the registered trade mark "Auto-Lite." Defendant also appeals from that part of the decree dismissing without prejudice, instead of upon the merits, the charges of infringement of the Wollenweber patent.

Plaintiff manufactures and supplies electric ignition systems used in automotive engines, and sells complete igniters, generators, and incidental equipment of various requirements and specifications to its customers. In its business, it also sells repair and replacement parts to car owners through service stations and garages. The defendant and its predecessor have been in business since 1920, and have manufactured and sold to jobbers for distribution, through service stations and garages, to car owners a line of repair and replacement parts. It supplies parts of all kinds and makes of ignition systems, new and old. Defendant's business also consists, in part, of the sale of replacement parts for igniters, generators, and motors manufactured by the plaintiff. It does not make or sell complete igniters, generators, and motors nor the heavy and durable parts thereof. It sells replacements only for parts which wear out and which are detachable, and for which there has been a substantial demand.

The defendant has been enjoined from using the words "to fit Auto-Lite" or any abbreviation thereof in connection with the sale or advertising for sale of electrical equipment or parts thereof, or from representing or stating that parts manufactured and offered for sale, or sold by it, fit devices or apparatus supplied by the plaintiff; from stating or representing that parts manufactured or offered for sale by defendant may be used for or are intended to replace plaintiff's parts; from advertising or in any way using plaintiff's part numbers to identify parts manufactured and sold or offered for sale by the defendant; from using a circle around the letters "P & D" or any other mark deceptively similar to plaintiff's trade-mark "AL" in a circle; from selling parts for repair or replacement of corresponding parts in devices originally manufactured by plaintiff except upon the express condition that a proposed substitution of such defendant's part for such plaintiff's part be made known to the ultimate purchaser or user.

The corporate defendant had been preceded in business by the individual defendants Piffath and Danziger, who later incorporated the business. They have trade-marked their merchandise "P & D." They maintain a factory and warehouses in the United States and Canada and publish a catalogue, distributing annually some 30,000 copies. They advertise extensively in this way and also by means of billboards. Their cartons, packages, and displays are distinctively marked with the "P & D" trade-mark, the corporate name and address, and its own code numbers of the repair parts therein contained. It distinguishes its various parts from each other by distinctive numbers as "AU-1" for a breaker arm. It uses the phrase "to fit Auto-Lite." It has done so continuously since 1926 in its catalogues in selling the repair parts adapted for use in igniters of plaintiff's manufacture. The court below held there was no infringement of the registered trade-mark "Auto-Lite," and the sole question here as to this is whether the use of the name is fraudulent or misleading as to origin. Defendant's use of a circle around its "P & D" initials began a year before any use is shown by the plaintiff of a circle around its "AL" initials. There was no evidence of fraudulent or deceptive conduct by the defendant. On the contrary, it has conducted its business to the plaintiff's knowledge in the manner described for more than ten years. There was no evidence to show any purchaser has been deceived by the use of the circle around the initials "P & D," either in direct dealings with the defendant, or in any purchase from a dealer or garage man; nor is there evidence to show that any particular feature of the shape, color, form, or appearance of the plaintiff's parts is nonfunctional, or that any nonfunctional feature of appearance of plaintiff's parts is relied upon by the public to distinguish their source or origin. Nor is it shown that any car owner or mechanic has been deceived or misled by the defendant's use of the phrase "to fit Auto-Lite" or by its use of plaintiff's code numbers in parentheses after its own code numbers in the defendant's catalogue. Indeed, no car owner or mechanic could reasonably be deceived as to the source or origin of the goods advertised in the catalogue. There was no evidence of palming off the defendant's goods for those of the plaintiff in the sale of its products. There are no questions of trade-mark infringement here involved. The question is whether the defendant's use, in its catalogues and other advertisements, of the phrase "to fit Auto-Lite" and the representation it implied throughout its catalogue that the parts so designated are of the correct size to replace plaintiff's parts in plaintiff's igniter equipment, is unfair or deceptive. There is no deception or unfair competition in copying a part of an unpatented article and selling it as such. Columbian Art Works, Inc., v. Defiance Sales Corp., 45 F.(2d) 342 (C. C. A. 7); Deering Harvester Co. v. Whitman & Barnes Mfg. Co., 91 F. 376 (C. C. A. 6). It is not unfair to use the name of a well-known article and label a repair part if it be used in a fair way and simply to indicate that the part is made to fit the article. Therefore the use of the phrase "to fit Auto-Lite," and reference to the plaintiff's corresponding numbers which describe the parts, was permissible. Columbia Mill Co. v. Alcorn, 150 U. S. 460, 14 S. Ct. 151, 37 L. Ed. 1144; Bender v. Enterprise Mfg. Co., 156 F. 641, 17 L. R. A. (N. S.) 448, 13 Ann. Cas. 649 (C. C. A. 6); Stevens Linen Works v. William & John Don & Co., 127 F. 950 (C. C. A. 2); Magee Furnace Co. v. Le Barron, 127 Mass. 115; Dennison Mfg. Co. v. Scharf Tag, Label & Box Co., 135 F. 625 (C. C. A. 6).

If it be true, as asserted, that as soon as the plaintiff put a part on the market the defendant copied it in every detail and competed with the plaintiff in its sale, the defendant still would not be liable for unfair competition. It always marked the repair parts put out by it with its trade-mark. The evidence discloses that invariably every feature of the plaintiff's parts which are copied by the defendant is functional and necessary to the practical operation of the part. The parts are utilitarian in every detail and do not contain any ornamental features. Under these circumstances, it cannot be said that the defendant indulged in unfair competition by selling parts which look like those of the plaintiff's manufacture. No rule of law forbids a manufacturer from copying the features of the article which are essential to its use. Plaintiff has not shown that there is any feature of the part manufactured by it which is not necessary for the proper operation of such part. Therefore there was no unfair competition in manufacturing copies of such parts. A. C. Gilbert Co. v. Shemitz, 45 F.(2d) 98 (C. C. A. 2); Luminous Unit Co. v. R. Williamson & Co. (D. C.) 241 F. 265; Marvel Co. v. Pearl, 133 F. 160 (C. C. A. 2). The wrong in unfair competition consists of the sale of goods of one manufacture as those of another, but where, as here, the defendant has...