Flagg Mfg. Co. v. Holway

• Citation: 178 Mass. 83,59 N.E. 667
• Parties: FLAGG MFG. CO. v. HOLWAY.
• Decision Date: 28 February 1901
• Court: United States State Supreme Judicial Court of Massachusetts Supreme Court

178 Mass. 83

59 N.E. 667

FLAGG MFG. CO. v. HOLWAY.

Supreme Judicial Court of Massachusetts, Suffolk.

February 28, 1901

COUNSEL

J. E. Maynadier, for plaintiff.

C. H Welch, for defendant.

OPINION

HOLMES C.J.

This is a bill brought to restrain the defendant from selling zithers which imitate the plaintiff's, or with strings arranged and spaced as the plaintiff's strings are arranged and spaced, and specifically to restrain it from selling a particular form of zither heretofore sold by it and exhibited by the bill. The case was sent to a master, who reported what is manifest on inspection, when the time of the respective manufactures is known, that the defendant deliberately copied the plaintiff's instrument in all essential and many non essential details, adding that this was done for a wrongful purpose. The Superior Court made a decree for the plaintiff in terms almost as broad as the prayers of the bill, and the defendant appealed.

We are of opinion that the decree was wrong in principle. Both zithers are adapted for the use of patented sheets of music but the zithers are not patented. Under such circumstances the defendant has the same right that the plaintiff has to manufacture instruments in the present form, to imitate the arrangement of the plaintiff's strings or the shape of the body. In the absence of a patent the freedom of manufacture cannot be cut down under the name of preventing unfair competition. Stamping Co. v. Fellows, 163 Mass. 191, 40 N.E. 105, 28 L. R. A. 448. See Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 16 S.Ct. 1002, 41 L.Ed. 118. All that can be asked is that precautions shall be taken, so far as are consistent with the defendant's fundamental right to make and sell what it chooses, to prevent the deception which no doubt it desires to practice.

It is true that a defendant's freedom of action with regard to some subsidiary matter of ornament or label may be restrained, although a right of the same nature with its freedom to determine the shape of the articles which it sells. But the label or ornament is a relatively small and incidental affair, which would not exist at all, or at least would not exist in that shape but for the intent to deceive whereas the instrument sold is made as it is, partly at least, because of a supposed or established desire of the public for instruments in that form. The defendant has the right to get the benefit of that desire...