INSECT-O-LITE COMPANY v. Hagemeyer

• Decision Date: 17 May 1957
• Docket Number: No. 682.,682.
• Parties: INSECT-O-LITE COMPANY, Inc., Plaintiff, v. William C. HAGEMEYER, James C. Noyes, Meredith J. Beirne, Hagemeyer Chemical Co., Inc., Defendants.
• Court: U.S. District Court — Eastern District of Kentucky

151 F. Supp. 829

INSECT-O-LITE COMPANY, Inc., Plaintiff, v. William C. HAGEMEYER, James C. Noyes, Meredith J. Beirne, Hagemeyer Chemical Co., Inc., Defendants.

No. 682.

United States District Court E. D. Kentucky, Covington Division.

May 17, 1957.

J. Warren Kinney, Jr., Cincinnati, Ohio, for plaintiff.

Frank Zugelter, Cincinnati, Ohio, William Ware, William E. Wehrman, Covington, Ky., for defendants.

SWINFORD, District Judge.

This is an action arising under the Trade-Mark Act of 1946, 15 U.S.C.A. § 1114, which gives this court jurisdiction. The matter in controversy also exceeds, exclusive of interest and costs, the sum of three thousand dollars, is between citizens of different states and therefore within the jurisdiction of this court under 28 U.S.C.A. § 1332(a) and § 1391 (a, c).

The plaintiff is an Ohio corporation with its principal office and place of business in Cincinnati, Ohio. It is the owner of U. S. trade-mark registration No. 604,061 for Insect-O-Lite for electrically heated hollow receptacles in which volatilizable insecticidal crystals are placed. The function and purpose of this article is to attract and destroy insects in homes and places of business. It is a relatively small item made of a plastic and composition material to be hung on the wall and attached by cord to an electric light plug. It is in evidence as Plaintiff's Exhibit 10.

The defendants, William C. Hagemeyer and James C. Noyes, are residents of Ft. Mitchell, Kentucky; the defendant, Meredith J. Beirne, is a resident of Ft. Thomas, Kentucky; and the defendant, Hagemeyer Chemical Co., Inc., is a Kentucky corporation with its principal place of business in Erlanger, Kentucky.

The plaintiff alleges that its trademark has been infringed and seeks to permanently enjoin the defendants from manufacturing or selling vapor lamps which so nearly resemble those manufactured and sold by the plaintiff as are likely to lead purchasers to believe that such items are the plaintiff's vapor lamp.

The plaintiff further states that as a consequence of the alleged infringement of its trade-mark the defendants have deliberately and by conspiracy committed unfair trade practices and have been guilty of unfair competition. It asks for damages in addition to a permanent injunction.

The factual situation out of which the injuries that are charged arose is involved and somewhat obscured by an obvious bitterness which exists between the litigants. Throughout the trial of the case the court was conscious continually of an undercurrent of personal animosity. Such a situation does not lend itself to the full and free enlightenment of the trial judge.

The decision of this case rests primarily upon the acts and conduct of one individual, the defendant, Meredith J. Beirne.

In the early part of 1952 the plaintiff introduced to the trade an insect vapor lamp designed to attract and destroy insects. While the idea of insect lamps was not new the plaintiff's lamp which made use of volatilizable insecticidal crystals as a vaporizer was somewhat novel in its combined design and function for which the U. S. Patent Office issued trade-mark registration No. 604,061 for the name Insect-O-Lite.

At the time the plaintiff began to manufacture this lamp the defendants, James C. Noyes and Meredith J. Beirne, began to handle the item as a sales agency. In this way Beirne became familiar with the function of the lamp and had a knowledge of the fact that it was an attractive and saleable article.

In the fall of 1952 Beirne left Noyes and became an employee of the plaintiff for the primary purpose of promoting and selling Insect-O-Lite vapor lamps. Beirne became a competitor of his former associate, Noyes, who was continuing to sell another insect vapor lamp.

In 1952, 1953 and 1954, the plaintiff expended something over $200,000 advertising the lamp under the name Insect-O-Lite. It was widely publicized throughout an extended area of the United States and especially so in the states where the defendant, Beirne, was working.

In September of 1954, the defendant, William C. Hagemeyer, with Noyes and Beirne, formed the defendant corporation, Hagemeyer Chemical Co., Inc. Through Beirne, the process used to make the container for the Insect-O-Lite lamp was acquired by the newly formed company and the plaintiff's Insect-O-Lite to all appearances and functional purposes was copied identically and sold under the name Insect Light.

It should be pointed out at this time that the selling season for insect lamps was in the spring and early summer of the year.

Apparently deliberately planning for the selling season of Insect Light by the Hagemeyer Chemical Co., Inc., the defendant, Beirne, visited the office of Mr. Parnell, president of the Insect-O-Lite Co., Inc., his former employer, in the late winter of 1955. He advised Mr. Parnell that he planned to return to the employ of that company in March for the purpose of selling Insect-O-Lites. This he never did. There is also evidence to the effect that on this visit Beirne obtained information as to the sale price of the plaintiff's vapor lamp for the 1955 season.

With his knowledge of the function of the plaintiff's lamp, his experience as a salesman and his knowledge of the retail outlets for such an item, the defendant, Beirne, by methods of inference, innuendo and deception, induced the trade to substitute the Insect Light of the defendant, Hagemeyer Chemical Co., Inc., for the Insect-O-Lite vapor lamp of the plaintiff. His exploitation of the situation was effective. The sales of the plaintiff decreased 66%.

An observation of the two vapor lamps could not but lead the public to a belief that they were identical. Certain merchants disposed of their stock on hand of Insect-O-Lites and replaced it with Insect Lights, believing that they were dealing with the same company that had sold them Insect-O-Lites. Some of the retailers were informed that the Insect-O-Lite Co., Inc. had gone out of business or that the defendant, Hagemeyer Chemical Co., Inc., was a Kentucky branch of the Insect-O-Lite Co., Inc. Others were advised that the Insect Light was a new model of the Insect-O-Lite and that Insect-O-Lite was no longer being manufactured. These facts and other similar instances which are equally as reprehensible are reflected in the record.

It is recognized that to obtain evidence on issues of this character is difficult. Merchants do not like to become involved in controversies between manufacturers. While the court cannot, of course, assume that there were other witnesses who would testify to similar transactions, it may be reasonably inferred that the defendant, Beirne, at every opportunity created an atmosphere throughout the territory which was unfavorable toward the plaintiff's lamp.

While this is denominated a trade-mark infringement action, it should be pointed out that trade-mark infringement is but a branch of the broader law of unfair competition. West Point Manufacturing Co. v. Detroit Stamping Co., 6 Cir., 222 F.2d 581, certiorari denied 350 U.S. 840, 76 S.Ct. 80, 100 L.Ed. 749; Brown & Bigelow v. B.B Pen Co., 8 Cir., 191 F.2d 939.

The infringement of a trade-mark is a form of unfair competition, and facts, which would support an action for infringement and one for unfair competition, are one and the same. There cannot be trade-mark infringement without the presence of acts, which amount to unfair competition, but there can be unfair competition without the existence of trade-mark infringement. Academy Award Products v. Bulova Watch Co., D. C., 90 F.Supp. 12; American Automobile Ass'n v. Spiegel, 2 Cir., 205 F.2d 771.

I am of the opinion that the plaintiff's trade-mark was not infringed. The adoption by one manufacturer of the features of another's products, common to articles of that class, does not of itself amount to unfair competition. Rathbone, Sard & Co. v. Champion Steel Range Co., 6 Cir., 189 F. 26, 37 L.R.A., N.S., 258; West Point Manufacturing Co. v. Detroit Stamping Co., supra.

There is no legal liability against one who imitates in detail the product of another if it is just as true in its application to the goods of the second adopter as to those of the first. To entitle a name to equitable protection as a trade-mark, the right to its use must be exclusive and not one which others may employ with as much truth as those who use it. Purchasers, though mistaken, are not in such a case deceived by false representations and equity will not enjoin against telling the truth. Canal Company v. Clark, 13 Wall. 311, 80 U.S. 311, 20 L.Ed. 581; Reddy Kilowatt, Inc. v. Mid-Carolina Electric Co-op., 4 Cir., 240 F.2d 282.

Words or other indicia in common use may be used upon labels or in connection with goods if they are descriptive of the uses for which goods are offered for sale. One so acting is not an infringer of a trade-mark or trade-name used by another even though prior in time, but fair competition and honesty require him so to use them as not to imitate those of another. Newport Sand Bank Co. v. Monarch Sand Mining Co., 144 Ky. 7, 137 S.W. 784, 34 L.R.A., N.S., 1040.

The size, shape, color, and descriptive words Insect Light on the defendants' vapor lamp were all functional and with the exception of the color, which might have been different, about the only design that could have been followed to accomplish the purposes intended. There was nothing novel or distinctive, aside from the functional uses, to which either the plaintiff's or the defendants' lamp could lay claim. Numerous other vapor lamps had been in existence. While the term Insect-O-Lite has been subjected to trade-mark, there is nothing so unusual or singular in the phrase that a court of equity should permit it to pre-empt the field to which it seeks to adapt itself. It had been in use for only a few months and could not be said to have become identified in the mind of the purchasing public to such an extent that the name had...