Flint v. Oleet Jewelry Manufacturing Co.
| Decision Date | 23 June 1955 |
| Citation | 133 F. Supp. 459 |
| Parties | Maurice B. FLINT and Mary Alice Flint, Co-Partners doing business as the Flint Company, Plaintiffs, v. OLEET JEWELRY MANUFACTURING CO., a partnership composed of Harold K. Oleet, William Oleet, and Irving Oleet, and Gerald Sears, Defendants. |
| Court | U.S. District Court — Southern District of New York |
Cooper, Dunham, Keith & Dearborn, New York City, John N. Cooper, Thomas J. Byrne, Jr., New York City, of counsel, for plaintiffs.
Emanuel Schwartz, New York City, for Oleet defendants.
Irving C. Nachbar, New York City, for defendant Gerald Sears.
In this action, both plaintiffs and defendants have moved for summary judgment under Rule 56 of the Rules of Civil Procedure, 28 U.S.C.A. The plaintiffs have also moved, in the alternative, for a preliminary injunction.
The complaint alleges two causes of action: one for unfair competition and one for copyright infringement. Defendants' answers deny generally the material allegations of the complaint. Depositions have been taken. Both sides rest their respective motions on the pleadings, the depositions, and affidavits submitted in support of the motions.
There appears to be no genuine issue as to the following material facts:
1. The plaintiffs are husband and wife, and are co-partners doing business under the name of "The Flint Company". The defendants Harold K. Oleet, William Oleet, and Irving Oleet do business under the name of "Oleet Jewelry Manufacturing Co." The defendant Gerald Sears is a sales representative of the Oleet Jewelry Manufacturing Co.
2. The Flints, after becoming members of the congregation of the Marble Collegiate Church in New York City, of which Dr. Norman Vincent Peale is Minister, read, in the course of their religious study, the Twentieth Verse of the Seventeenth Chapter of the Gospel according to St. Matthew, which is as follows:
It occurred to them that the carrying of a mustard seed on their person would be a reminder to them of their religious faith.
3. After experimentation, they perfected an article which consisted of a round transparent plastic ball with a mustard seed in the center thereof so that the seed could be clearly seen, and which could be attached to a bracelet, key chain, or necklace. They called their creation a "Mustard Seed Remembrancer".
4. In the early part of 1950, the Flints began to make "Mustard Seed Remembrancers" first for their friends and a short time later for various church groups, and then for sale to department stores and other stores throughout the Country. These "Mustard Seed Remembrancers" were accompanied by a tag or booklet quoting part of the verse from the Bible and pointing up the religious significance. A copy of the tag which has been produced on the motions shows that in addition to the verse from the Bible, the little card or tag has on it the statement:
5. Shortly after the Flints began to merchandise their "Mustard Seed Remembrancers", considerable publicity was afforded to them and to these "Mustard Seed Remembrancers", which included:
(a) In May, 1950, as a result of an order from Walter Hoving, President of Bonwit Teller Company, New York, 1000 of the "Mustard Seed Remembrancers" were presented to guests at a Milestone Dinner given by "Guideposts", which is a publication edited by Dr. Norman Vincent Peale.
(b) In the September, 1950, issue of "Guideposts", which has a distribution to over 175,000 people throughout the United States, there was carried a history and description of the creation and development of the "Mustard Seed Remembrancer".
(c) In the Fall of 1951, the Associated Press distributed an article describing the development of the Flints' "Mustard Seed Remembrancer".
(d) The Flints themselves distributed booklets, literature, and sales circulars to buyers and prospective buyers of the "Mustard Seed Remembrancer".
(e) Dr. Norman Vincent Peale has referred to the "Mustard Seed Remembrancer" in sermons from his pulpit and from time to time over his weekly radio program which he delivers over a nationwide network.
(f) In Dr. Peale's book "The Power of Positive Thinking" published in 1952, and which for a long time has headed the best seller list of books in the United States (it is stated that 1,700,000 copies of the book have been sold throughout the United States), he had an article about the Flints and the "Mustard Seed Remembrancer".
6. The plaintiffs had sold 100,000 "Mustard Seed Remembrancers" up to November, 1951.
7. Defendant Harold K. Oleet and his sales representative Sears first became aware of plaintiffs' "Mustard Seed Remembrancer" when they saw an advertisement of it in the Fall of 1951. Sears thereafter purchased one of them and brought it back to New York and submitted it to Harold K. Oleet. Defendants conceded that they had never seen anything like it previously; that the "Remembrancer" and its accompanying booklet had a purely religious significance, and that without the accompanying booklet, the "Remembrancer" would not have had any significance.
8. The defendants thereupon copied the form and design of plaintiffs' "Mustard Seed Remembrancer" with minor changes, such as using a yellow mustard seed instead of a dark one. The defendants called their object "Your Mustard Seed Charm" and made up a tag similar to that used by the plaintiffs, quoting the same verse from the Bible, and stating:
They then attached their object to a type of bracelet similar to the one that plaintiffs had been using and since December, 1951, have been selling the "Mustard Seed Charm" and issued circulars, literature, and booklets to promote their sales. Certain of that literature states, or indicates, that the Oleets are the creators of the mustard seed jewelry.
9. The defendants, in trade journals and by correspondence, have asserted that Oleet Jewelry Manufacturing Co. was the owner of the trademarks "Mustard Seed", "Mustard Seed Charm" and "Mustard Seed Faith Charm" and have filed applications for trademark registrations thereon, and published a warning notice in the trade journals directed to all of their competitors, including the Flints.
10. The papers submitted on the motion indicate, and there can be no substantial dispute, that there is actual confusion in the minds of the buying public by reason of the foregoing facts; that customers have cancelled orders submitted to the plaintiffs, and that articles made by the defendants have been mistakenly returned to the plaintiffs for replacement. There can be no substantial dispute that the articles are so similar in style, design, format and accompanying tag that such confusion could readily be created.
11. A certificate of registration of copyrights of the tag used by the plaintiffs was applied for in March, 1952, and issued on March 31, 1952. On the date of the first publication of the tag on May 8, 1950, the tags carried a notice of copyright on the back cover thereof which states: "Copyright 1950". It appears that some of the tags or booklets were distributed with the symbol (C) in place of the word "Copyright".
It is conceded that neither the "Mustard Seed Remembrancer" nor the "Mustard Seed Charm" is patented, and that no trademark has been granted with respect to either of them. Therefore, the action is purely based on unfair competition and violation of the copyright on the tag or booklet.
Peculiar and arbitrary features in the form, structure and arrangement of the parts of an article often are devised, in large part, to distinguish it — to give it individuality — particularly where they are not functional, i. e., not necessary to the usefulness of the article. In such a case, imitation of the form and general appearance of the article itself, through copying or imitating such features, may, in and of itself, constitute unfair competition. Nims, Unfair Competition and Trade-Marks, 4th Ed., Vol. 1, p. 370; Restatement of Torts, §§ 741, 742.
The rule of law is well summarized in Nims, op. cit. at p. 378:
Thus the existence of unfair competition may depend in part upon whether there is a secondary meaning attaching to the unique appearance of plaintiffs' product. If such secondary meaning does exist, the actionable harm may result to the plaintiffs either from the likelihood (a) of loss of customers, (b) loss of reputation or (c) of both. In such a case, the loss can result from a customer's belief that the competing article derives from the same source as that of the party complaining, and it does not matter whether customers know just who is the source. Mastercrafters Clock & Radio Co. v. Vacheron Watches, Inc., 2 Cir., 221 F.2d 464.
When there is the possibility of confusion, the intent of the copier...
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