G. & C. Merriam Co. v. Ogilvie

• Decision Date: 17 March 1909
• Docket Number: 800.
• Citation: 170 F. 167
• Parties: G. & C. MERRIAM CO. v. OGILVIE.
• Court: U.S. Court of Appeals — First Circuit

170 F. 167

G. & C. MERRIAM CO. v. OGILVIE.

No. 800.

United States Court of Appeals, First Circuit.

March 17, 1909

William B. Hale (Charles N. Judson, Frank F. Reed, and Edward S Rogers, on the brief), for appellant.

George F. Bean, for appellee.

Before PUTNAM and LOWELL, Circuit Judges, and ALDRICH, District Judge.

PUTNAM Circuit Judge.

This is the same case in which an opinion was passed down by us, and judgment entered, on January 30, 1908. 159 F. 638. A decree was entered in the Circuit Court pursuant to that judgment with which the Merriam Company is dissatisfied as not giving it all the relief which the case demands. The objections are two. The first is that the Circuit Court did not insert in the decree what corresponds to what appears in the judgment in Singer Co. v. June Co., 163 U.S. 169, 204, 16 Sup.Ct. 1002, 41 L.Ed. 118, to the effect that the corporation proceeded against was enjoined from using the word 'Singer' without clearly and unmistakably specifying, in connection therewith, that its machines were made by it, and were not the product of the complainant. We may also refer to the more specific corresponding provision in the judgment in Hall's Safe Co. v. Herring Safe Co., 146 F. 37, 44, 76 C.C.A. 495, 14 L.R.A. (N.S.) 1182, as modified by the Supreme Court in Herring-Hall-Marvin Safe Co. v. Hall's Safe Co., 208 U.S. 554, 560, 28 Sup.Ct. 350, 52 L.Ed. 616. This precise pointing out was not in terms provided for in the judgment of this court. Therefore, it would not be strange that the Circuit Court omitted it unless its attention was expressly called to it; and the record does not show that this was done. On the case being developed here, we conclude that the decree should be amended by directing that the following words be inserted by Ogilvie, and those who may succeed him namely, 'This dictionary is not published by the original publishers of Webster's Dictionary, or by their successors,' and that, of course, these words should clearly and unmistakably appear in the title page of every volume published by the respondent, Ogilvie, or his successors or assigns, of the class to which this litigation relates. It is not for us to go further than this in directing the precise details which may be necessary to make the decree effective in this particular. It is impossible for the appellate court to foresee what changes future emergencies may require; therefore, as usual, whatever may be required further, if anything, for that purpose, must be worked out by the Circuit Court.

The other ground of complaint of the Merriam Company is that the decree entered by the Circuit Court makes no provision for an accounting. We must first observe generally that it is doubtful whether any reference for an account of profits or damages would yield a return which would have a reasonable proportion to the cost thereof. The difficulties involved in ascertaining the profits or damages under the circumstances of this case are almost insoluble. Under some circumstances, it has been held that the profits to be accounted for would be the entire profits of publication; but the Supreme Court has never had occasion to consider a rule so harsh as this, and, following the analogy of the practice established in suits for infringements of patents for inventions, we are led to the conclusion that it would never go to that extent. The rule there is, we think, fairly stated by Mr. Walker in the fourth edition of his work on Patents, at section 719, to the effect that in patent suits the profits recoverable are only such as are due to the infringing parts or features of the thing made and sold, and that the burden rests on the complainant to prove the due proportion allowable therefor. A similar rule seems to have been applied to infringements of patented designs for carpets in Dobson v. Carpet Company, 114 U.S. 439, 445, 5 Sup.Ct. 945, 29 L.Ed. 177, affirmed in Dobson v. Dornan, 118 U.S. 10, 6 Sup.Ct. 946, 30 L.Ed. 63, and in subsequent cases.

The cases where there has been no division of profits, but the whole profits have been allowed, are proper trade-mark cases, in which, the defendant having used a trade-mark proper, the presumption was that the goods would not have been sold without that use. This is what is referred to in Sebastian's Law of Trade-Marks (4th Ed., 1899) 228, 229, and in Browne on Trade-Marks (2d Ed., 1885) 519; and the same rule is applied in the ordinary cases of a trade-mark proper, like Atlantic Milling Co. v. Rowland (C.C.) 27 F. 24, and Benkert v. Feder (C.C.) 34 F. 534; also in several cases stated in Hesseltine's Law of Trade-Marks (1906) 304, 305. The present case, however, does not fully take on that feature. The substantial offense of Ogilvie did not consist in availing himself of a Merriam Company's trade-mark, because both this court and the Circuit Court have expressly found that there was no trade-mark. It consisted in dressing up his publications unlawfully. Therefore, there is no concrete thing which belongs to the Merriam Company the value of which can be substantially determined in this connection. In a case relied on by the Merriam Company (Williams v. Mitchell, 106 F. 168, 172, 45 C.C.A. 265, decided by the Circuit Court of Appeals for the Seventh Circuit in 1901), the court seemed to proceed on the theory that the complainant was entitled to full damages on account of the use by the respondent of the word 'Carrom'; but, in a later case with reference to the same word, the Circuit Court of Appeals for the Second Circuit, in Ludington Co. v. Leonard, 127 F. 155, 157, 62 C.C.A. 269, came to the conclusion that, under the circumstances, to attempt to segregate the profits resulting from the illegitimate use of the word, 'would require an excursion into the realms of conjecture and speculation, without hope of any tangible result.' It certainly is the law that, if the equity court perceives that an inquiry as to damages or profits would result only as stated by the Circuit Court of Appeals for the Second Circuit, or would yield no compensatory profits or damages proportionate to the cost of the investigation, it will not order an accounting for either. Sebastian's Law of Trade-Marks (4th Ed., 1899) 229, and the later work, Kerly on Trade-Marks (2d Ed., 1901) 425. Neither equity nor admiralty will encourage litigation where the result will probably be only nominal. Without undertaking to dispose of the case for these reasons, we are strongly of the impression that a full investigation in reference thereto would require us to refuse the relief now particularly asked for.

There is a more serious difficulty, substantially that which was stated by the learned judge of the Circuit Court, to the effect that, as each party had been found at fault, he was strongly inclined to the opinion that neither was entitled to an accounting. It is true that both parties were not found in fault to the same extent. In the opinion passed down by us on January 30, 1908, it was held that the Circuit Court was correct in enjoining the Merriam Company from...