Fish Bros. Wagon Co. v. Fish Bros. Mfg. Co.

• Decision Date: 19 June 1899
• Docket Number: 1,091.
• Citation: 95 F. 457
• Parties: FISH BROS. WAGON CO. v. FISH BROS. MFG. CO.
• Court: U.S. Court of Appeals — Eighth Circuit

95 F. 457

FISH BROS. WAGON CO. v. FISH BROS. MFG. CO.

No. 1,091.

United States Court of Appeals, Eighth Circuit.

June 19, 1899

Charles Quarles, for appellant.

W. J Turner (Charles W. Chase and Halleck W. Seaman, on the brief), for appellee.

Before CALDWELL, SANBORN, and THAYER, Circuit Judges.

SANBORN Circuit Judge.

In July, 1891, the Fish Bros. Wagon Company, a corporation, and the appellant in this suit, was manufacturing and selling farm wagons at Racine, in the state of Wisconsin, which it marked or designated, on the wagons and in its advertisements, by the use of the words 'Fish,' 'Fish Brothers,' and 'Fish Brothers Wagon Company' and by the picture of a fish, with these and other words printed or painted upon it. The business of manufacturing and selling these wagons at Racine had been built up by Titus G. Fish and his brother, and had been carried on there for many years, until the wagons marked with these names and devices had become well known to the trade. The appellant had succeeded to this business, and to the right to use these names and devices, and the Fish brothers had retired from that business. At the same time, in this year 1891, Titus G. Fish, Edwin B. Fish, and Fred C. Fish had formed a partnership under the name of Fish Bros. & Co., and they were selling wagons marked with substantially the same names and devices, which were made at South Superior, in the state of Wisconsin, by the La Belle Wagon Works, a corporation, under a contract which it had made with Fish Bros. & Co. Thereupon, in July of that year, the appellant brought a suit in equity in the circuit court of Douglas county, in the state of Wisconsin, against the La Belle Wagon Works, Titus G. Fish, Edwin B. Fish, and Fred C. Fish, to obtain a decree that it was the sole owner of the right to use the words 'Fish Bros.,' 'Fish Bros. &amp Company,' and 'Fish Bros. Wagons,' and the device of a fish, with the words 'Bros.' or 'Brothers' or 'Bros. & Co.' printed or stamped thereon, in designating wagons or vehicles. A preliminary injunction was issued against the defendants in that suit, in pursuance of the prayer of the bill. The defendants then answered, claimed the exclusive right to use these words and devices, and applied for an injunction against the appellant, and for an order vacating the injunction against them. The circuit court of Douglas county entered an order denying this application, and the defendants appealed to the supreme court of Wisconsin, which in June 1892, reversed that order and held that the appellant and the defendants in that case had the right to use the words and devices in controversy to mark the wagons which they respectively made and sold, but that none of the parties to that suit had the exclusive right to use these words and devices, and that the defendants could not lawfully use them in such a way as would be calculated to induce purchasers to buy their wagons as and for the wagons manufactured by the appellant at Racine. Fish Bros. Wagon Co. v. La Belle Wagon Works, 82 Wis. 546, 52 N.W. 595.

The history of the growth of the business of manufacturing these wagons, of the use of the words and devices in controversy and of the relation of Titus G. Fish and Edwin B. Fish to that business and to the appellant prior to 1891, appears from the statement which precedes the opinion in that case. The story is not material to the decision of this case, and it will not be related here. It is sufficient to say that Titus G. Fish and Edwin B. Fish made no contract with the appellant or its predecessors that they would not use the names or devices in controversy in the business of manufacturing and selling wagons. The Wisconsin case was subsequently transferred to the circuit court of Milwaukee county, and was there tried on its merits. The result was that in 1894 a decree was rendered which fixed the rights of the parties to that suit in accordance with the opinion of the supreme court which we have cited. By that decree the defendants were enjoined from representing that they were manufacturing the genuine Fish wagon, or the genuine Fish Bros. wagon, and from using the words and devices in controversy 'in such a way as will be calculated to induce, or will induce, any person to buy the wagons manufactured by said defendants, or either of them, as and for those manufactured by the plaintiff at Racine, Wisconsin'; but it was expressly adjudged 'that the defendants Titus G. Fish and Edwin B. Fish are at liberty in good faith to apply to the wagons and other vehicles manufactured by them the words 'Fish Bros.' or 'Fish Bros. & Co.,' or the picture of a fish, provided they do it in a way not calculated to induce persons to buy the same as and for these manufactured by the plaintiff at Racine, Wisconsin, or to induce persons to believe that the defendants are, or that the plaintiff is not, the successor to the original business carried on at Racine, Wisconsin.' This decree was rendered in April, 1894, and in December of that year the La Belle Wagon Works made an assignment; but Titus G. Fish continued to superintend the manufacture of wagons under its assignee until October, 1895. In August of that year, Titus G. Fish, Edwin B. Fish, and others, incorporated the appellee, the Fish Bros. Manufacturing Company. This corporation was organized to manufacture and sell farm wagons, pursuant to an agreement between Titus G. Fish, Edwin B. Fish, and William P. Murray, on the one hand, and certain citizens of the city of Clinton, in the state of Iowa, on the other, to the effect that the first parties would remove from South Superior, and set up in a wagon factory at Clinton all the machinery and patterns which they had in use at South Superior, in the state of Wisconsin, and that they would transfer their business of manufacturing wagons to Clinton, Iowa. They performed this agreement. They removed their machinery and patterns to Clinton, and Titus G. Fish and Edwin B. Fish assigned to the Fish Bros. Manufacturing Company all the good will of their business, and the exclusive right to all the trade-marks and trade-names which they had used in their business of manufacturing, buying, and selling wagons. Titus G. Fish became the president, and Edwin B. Fish one of the directors, of the new corporation. As soon as this corporation had equipped its factory, it commenced to manufacture at Clinton, in the state of Iowa, and...