Gruelle v. Molly-'Es Doll Outfitters

• Decision Date: 23 December 1937
• Docket Number: No. 6243.,6243.
• Citation: 94 F.2d 172
• Parties: GRUELLE v. MOLLY-'ES DOLL OUTFITTERS, Inc., et al.
• Court: U.S. Court of Appeals — Third Circuit

94 F.2d 172 (1938)

GRUELLE v. MOLLY-'ES DOLL OUTFITTERS, Inc., et al.

No. 6243.

Circuit Court of Appeals, Third Circuit.

December 23, 1937.

Howson & Howson and Charles H. Howson, all of Philadelphia, Pa. (Blair, Curtis, Dunne & Hayward and John W. Thompson, all of New York City, of counsel), for appellant.

Harry Langsam, of Philadelphia, Pa. (Peter P. Zion, of Philadelphia, Pa., of counsel), for appellees.

Before BUFFINGTON, DAVIS, and BIGGS, Circuit Judges.

BIGGS, Circuit Judge.

This is an appeal from a decree dismissing the bill of complaint in a suit brought by John B. Gruelle to enjoin trademark infringement and unfair competition upon the part of the appellees, to invalidate a design patent, No. 96,382, issued to the appellee, Mollye Goldman, by the United States Patent Office, and for certain other relief. A hearing was had upon a motion for a preliminary injunction, and thereafter it was stipulated by the parties that the decree entered should be a final decree; the affidavits filed in the proceeding for a preliminary injunction to stand as proved upon final hearing.

The appellant, the plaintiff below, under the name of "Johnny Gruelle," and prior to June 5, 1915, designed and made dolls of a very distinctive type to which he affixed labels bearing the trade-mark "Raggedy Ann." Some of these dolls were sold by Gruelle in interstate commerce after June 5, 1915, and for a short time thereafter. On June 17, 1915, Gruelle applied for and received a registration of trade-mark "Raggedy Ann" for dolls, being No. 107,328, issued by the United States Patent Office, and dated November 23, 1915. This was renewed by the Commissioner of Patents upon July 23, 1935. This trade-mark, the defendant below, Molly-'Es Doll Outfitters, Inc., now seeks to cancel by proceedings in the Patent Office, and restraint of these proceedings is prayed for in the bill of complaint filed by Gruelle. A design patent for a "Raggedy Ann" doll was granted to Gruelle by the Patent Office on September 7, 1915, and expired September 7, 1929. A design patent, No. 47,789, for a male doll, unnamed but substantially similar in appearance to a boy doll made to Gruelle's design and called by him "Raggedy Andy," was procured from the United States Patent Office by Mollye Goldman, being No. 96,382, on application filed May 7, 1935. The appellant seeks a declaration of invalidity of this design patent.

The appellees contend that the name "Raggedy Ann" originated in a poem by James Whitcomb Riley called the "Raggedy Man," the heroine of which was called "Ann," and that Gruelle's grandmother first made a "Raggedy Ann" doll and a neighbor of hers first made a "Raggedy Andy" doll; but it is entirely apparent, and the record supports the appellant's contention, that Gruelle designed the first dolls sold in interstate commerce under the trade-mark "Raggedy Ann," and within a comparatively short time thereafter entered into a manufacturing arrangement with P. F. Volland Company to manufacture "Raggedy Ann" dolls, "Raggedy Andy" dolls, and other dolls of the same family characteristics. The "Raggedy Ann" dolls thus manufactured differed from the doll of Gruelle's design patent in some important particulars and were sold in interstate commerce under the trade-mark "Raggedy Ann" by the Volland Company. The manufacture and sale of the "Raggedy Ann" dolls by the Volland Company continued from 1918 to 1934, and the sales thereof totaled 115,000. Many "Raggedy Andy" dolls were also manufactured and sold and in this period, which lasted sixteen years, Gruelle wrote many books having to do with "Raggedy Ann," "Raggedy Andy," and dolls composing their family and friends. In addition to the foregoing, in collaboration with the late William H. Woodin, Gruelle wrote the words and music of songs about "Raggedy Ann" which were published under the title, "Raggedy Ann's Sunny Songs." Some 15,000 phonograph records were sold of the "Raggedy Ann's Sunny Songs" and nearly 2,000,000 copies of the "Raggedy Ann" and associated books were sold. Gruelle holds copyrights upon approximately one-half of these books. From 1921 or 1922 until the year 1926, Gruelle published, through articles syndicated throughout the United States, cartoons and drawings featuring "Raggedy Ann" and "Raggedy Andy." From June, 1934, until the time of the commencement of this action, Gruelle syndicated further drawings of "Raggedy Ann" in many papers throughout the United States, and in connection with these papers Gruelle registered the words "Raggedy Ann" as a trade-mark under United States Patent Office certificate No. 318,605, dated October 30, 1934. From all of the foregoing it is apparent that Gruelle literally brought to life in the minds of the American public "Raggedy Ann" and her companion, "Raggedy Andy." The learned trial judge stated in his opinion, "I am quite ready to find in the language of one of the affidavits that `Raggedy Ann' was known and loved by millions of children and has attained a place in the public esteem comparable to Mickey Mouse, Spark Plug, Skippy and other like public characters," and in this finding we concur.

In 1934, Volland Company discontinued the manufacture and sale of books and dolls because of the depression. As part of the closing out of this part of its business upon December 18, 1934, Volland Company assigned to Gruelle all right, title, and interest in the trade-marks "Raggedy Ann" and "Raggedy Andy," together with the good will of the business.

In April, 1935, Gruelle granted permission to Exposition Doll & Toy Manufacturing Company to manufacture and sell "Raggedy Ann" dolls under the trademark. At the time of the discontinuance of its business, Volland Company sold the book plates of the "Raggedy Ann" books to M. A. Donahue & Co., of Chicago, which thereupon proceeded to publish some of the "Raggedy Ann" books, with Gruelle's permission.

Mollye Goldman, one of the defendants below, states that in 1935 she was requested by buyers of various department stores to make a good rag doll. She was told by these buyers, according to the allegations of her affidavit, that "there was not a good rag boy doll on the market"; and that the "idea of a `Raggedy Ann' doll came to her because she owned a `Raggedy Ann' doll when she was a child, and the buyers wanted her to make a good rag doll." She proceeded to have the defendant, Molly-'Es Doll Outfitters, Inc., make dolls marked "Raggedy Ann" and "Raggedy Andy" of a design cut very closely to the design of Gruelle's dolls. In at least one instance Mrs. Goldman's dolls were offered for sale in a window display in a New York department store in conjunction with Gruelle's book, "Raggedy Ann Stories." In short there is no doubt that the defendants appropriated to their own use and for their own profit Gruelle's "Raggedy Ann" and "Raggedy Andy" and have attempted and are attempting to appropriate the market built up by Gruelle and those associated with him.

The appellees contend, however, that Gruelle is endeavoring through the suit at bar to establish a purely prohibitive right to the trade-marks "Raggedy Ann" and "Raggedy Andy" as a monopoly, and that he is attempting to make use of the protection of a trade-mark in gross and without relation to an existing business. The learned District Judge found that Gruelle acquired the trade-mark "Raggedy Ann" by the assignment of December 18, 1934, but also found that the appellant abandoned the trade-mark because of nonuser in an existing business. By its own admission, Molly-'Es Doll Outfitters, Inc., commenced the sale of dolls marked "Raggedy Ann" and "Raggedy Andy," deceptively similar in appearance to Gruelle's dolls,...