John Wright, Inc. v. Casper Corp.
| Decision Date | 25 June 1976 |
| Docket Number | Civ. A. No. 75-63. |
| Citation | 419 F. Supp. 292 |
| Parties | JOHN WRIGHT, INC., a Pennsylvania Corporation, Plaintiff, v. CASPER CORPORATION, a New York Corporation and Casper Pinsker, Individually and doing business as Casper Imports, Defendants. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
COPYRIGHT MATERIAL OMITTED
COPYRIGHT MATERIAL OMITTED
COPYRIGHT MATERIAL OMITTED
COPYRIGHT MATERIAL OMITTED
COPYRIGHT MATERIAL OMITTED
COPYRIGHT MATERIAL OMITTED
COPYRIGHT MATERIAL OMITTED
COPYRIGHT MATERIAL OMITTED
Manny D. Pokotilow, Caesar, Rivise, Bernstein & Cohen, Philadelphia, Pa., for plaintiff.
Frederick L. Fuges, MacCoy, Evans & Lewis, Philadelphia, Pa., Marie V. Driscoll, Rogers, Hoge & Hills, New York City, for defendants.
The parties to this lawsuit are rivals in the manufacture and sale of mechanical penny banks. Each claims that its products are faithful reproductions of original cast-iron banks—now collectors' items—which were introduced in the United States shortly after the Civil War and remained popular through the early 1900s. John Wright, Inc. is the senior of the two competitors; it seeks injunctive relief and damages for alleged unfair competition and false advertising. At the close of the hearing on plaintiff's Motion for Preliminary Injunction I reserved decision and gave the parties the option to bypass further preliminaries by submitting whatever additional evidence they deemed necessary to complete the record and convert the proceedings to a final hearing on the matter. They chose this course and filed supplemental materials, including exhibits and depositions, for my review. What follows, therefore, is my final decision; plaintiff's Motion for Preliminary Relief will be denied as moot.
1. The plaintiff is a corporation and a citizen of Pennsylvania having its principal place of business at 113 N. Front Street, Wrightsville, Pennsylvania 17368.
2. The defendant Casper Corporation (Casper) is a citizen of New York. Its principal place of business is located at 14 E. 28th Street, New York, New York 10016.
3. Casper does business in the Eastern District of Pennsylvania and elsewhere.
4. The defendant Casper Pinsker is a citizen of Connecticut residing at 18 River Lane, Westport, Connecticut 06880.
5. Casper Pinsker does business as Casper Imports, a corporation which is a citizen of New York, with headquarters at 14 E. 28th Street, New York, New York 10016.
6. Casper Imports does not manufacture, import, advertise, sell, or have anything at all to do with mechanical penny banks.
7. The first patent on a cast-iron mechanical penny bank was issued in 1869. This bank was a modest action toy which used a balance mechanism: The weight of the penny, placed on a strategic spot, caused a small figurine to tip forward into a hatch in the top of the bank, carrying the penny with it. A door then closed over the hatch.
8. Other, more elaborate penny banks followed, using intricate level, spring, and clockwork devices designed to maximize their "action" features. Between 1870 and 1910 approximately 250 different banks were produced, most of which were patented. Some were humorous, by 19th century standards; many celebrated Americana and patriotic or military themes (e. g., Uncle Sam, Teddy Roosevelt and the Bear, Artillery Bank). There was a Tammany Bank featuring Boss Tweed. Penny banks commemorated the Centennial of 1876 and the World's Fair of 1892. Many fanciful penny banks were designed to appeal especially to children (Humpty Dumpty, Punch and Judy, Circus Clown, Trick Pony, and others).
9. All patents on these original penny banks expired long ago.
10. In the 19th century, mechanical penny banks were made either from a disassembled, cast-iron model or, in the case of a wholly-original design, from individual wooden parts. Brass masters, or match plates, were made of each piece. From the match plates the artisans fashioned sand molds into which they poured molten iron. Finally, the cooled, cast-iron pieces were filed, assembled, and painted, all by hand. In the course of each casting process, the sand molds were destroyed, but the brass match plates, from which new sand molds continually were made, lasted for many years.
11. The leading manufacturer of 19th century mechanical penny banks was the J. & E. Stevens Company of Cromwell, Connecticut (Old Stevens Foundry).
12. Another foundry which produced penny banks during this time was the Grey Iron Casting Company of Mt. Joy, Pennsylvania.
13. In 1957 an advertising man named Lee Howard approached The Grolier Society, Inc. (Grolier), a publishing firm in New York, with an idea for a public relations campaign on behalf of Grolier's children's encyclopedia, The Book of Knowledge. Howard proposed to assemble a collection of original mechanical penny banks, under the aegis of The Book of Knowledge; to arrange for production of authentic replicas of these banks; and to persuade lending institutions throughout the country to sponsor and publicize local exhibits of The Book of Knowledge penny bank collection and to offer a limited number of the replicas for sale to the general public.
14. Grolier accepted Howard's proposal. On February 1, 1957, they signed an agreement which provided, among other things, that Grolier would finance the purchase, through Howard, of a number of original antique penny banks; that Howard would supervise and bear the cost of manufacturing replicas of these originals; that on the base of each replica would be an inscription to the effect that, "This coin bank is a reproduction of the original in the collection of The Book of Knowledge"; that Howard would develop public relations materials for use by participating lending institutions; that these materials would stress the fact that the reproductions were of originals in The Book of Knowledge Collection; and that each replica sold to the public would be accompanied by a certificate of authenticity and a leaflet or brochure describing the history of 19th century penny banks and "carrying a short description of the background of The Book of Knowledge."
15. Paragraph 9 of the agreement authorized Howard to use the names "The Grolier Society" and "The Book of Knowledge" in his penny bank advertising materials and gave Grolier the right to review all copy in advance of its publication. It provided further that if Grolier failed to "disapprove any copy in writing within ten (10) days after receipt by it of such copy, then such copy would be deemed approved."
16. The agreement was for three years, with an option to renew.
17. Pursuant to the agreement between himself and Grolier, Howard negotiated the purchase of a total of 31 original 19th century penny banks which came to be known as The Book of Knowledge Collection. All of the original banks in the collection were owned by Grolier, except for a small number which Howard bought with his own money and lent to the collection as permitted by the agreement.
18. Between 1957 and 1959, several hundred lending institutions throughout the country participated in Howard's Book of Knowledge campaign, which he called "The Tradition of American Thrift." Each participating bank received a shipment of eight or nine original banks from The Book of Knowledge Collection which was displayed in its lobby amid wide publicity in all local news media. Participating banks purchased Book of Knowledge reproductions directly from Howard for $10 each and sold them to the general public at cost.
19. To manufacture reproductions of penny banks from The Book of Knowledge Collection, Howard selected the Grey Iron Casting Company of Mt. Joy, Pennsylvania (Grey Iron), because that foundry had made penny banks in the 19th century and had not mechanized its plant since that time. Thus, Grey Iron offered a manufacturing process which in all material respects duplicated that used by foundries in the 19th century to make original penny banks. There was only one substantial difference, designed to enhance the quality of the replica: Grey Iron used aluminum, rather than brass, for the match plates.
20. Grey Iron's match plates were made from original, disassembled banks from The Book of Knowledge Collection. Howard, as Grolier's agent, hand-delivered the original banks to Grey Iron and witnessed the manufacturing process, the first time around, from beginning to end.
21. With respect to the first few Book of Knowledge reproductions made at the Grey Iron foundry, Howard personally delivered a prototype of each replica, together with its original counterpart, to Grolier for a detailed comparison and approval before Grey Iron went into production on any models. Later, Grolier delegated this function to Howard and accepted his assurances on the quality and comparability of the Grey Iron replicas. There is no evidence to suggest that Grolier was anything but fully satisfied with the quality and authenticity of the Grey Iron reproductions from The Book of Knowledge Collection.
22. Pursuant to his contract with Grolier, Howard designed a "certificate of authenticity" signed by the then Editor-in-Chief of The Book of Knowledge, Ellen V. McLoughlin. It is reproduced below:
Copies of the certificate of authenticity were displayed in the lobbies of lending institutions which hosted The Book of Knowledge collection between 1957 and 1959. Each Grey Iron reproduction sold by participating banks was accompanied by a certificate of authenticity and by a brochure designed by Howard (and copyrighted by The Book of Knowledge in 1957), "Some Facts About Antique American Mechanical Coin Banks." The 1957 brochure referred to the certificate of authenticity, but did not feature it prominently.
24. The certificate of authenticity has never been copyrighted.
25. In an exchange of letters dated June 23, 1959 and November 23, 1959, Howard and Grolier entered into an agreement which superseded their contract of ...
To continue reading
Request your trial
-
Holiday Inns, Inc. v. Trump
...449 U.S. 899, 101 S.Ct. 268, 66 L.Ed.2d 129 (1980); Estate of Presley v. Russen, supra, 513 F.Supp. at 1368; John Wright, Inc. v. Casper Corp., 419 F.Supp. 292, 320 (E.D.Pa.1976). Plaintiffs allege that defendant's motivation in choosing to associate his name with his new casino hotel was t......
-
Estate of Presley v. Russen
...F.Supp. 804, 809 (D.N.J.1976). See, e. g., Jenn-Air Corp. v. Penn Ventilator Co., 464 F.2d 48 (3rd Cir. 1972); John Wright, Inc. v. Casper Corp., 419 F.Supp. 292 (E.D.Pa. 1976); Callmann, ? 87.3(b). In any event "laches generally is not a bar to injunctive relief against unfair competition.......
-
Johanna Farms, Inc. v. Citrus Bowl, Inc., 78 C 286.
...$10,000, jurisdiction for the common law claims asserted herein may be predicated on 28 U.S.C. § 1332 (1970). John Wright, Inc. v. Casper Corp., 419 F.Supp. 292, 315 (E.D.Pa.1976). As to the nature of the relief requested herein, initially it is to be noted that the purpose of a preliminary......
-
Castle v. Cohen
...of fault, willfullness or bad faith"), cert. denied, 429 U.S. 1040, 97 S.Ct. 738, 50 L.Ed.2d 751 (1977); John Wright, Inc. v. Caspar Corp., 419 F.Supp. 292, 324 (E.D.Pa.1976) ("The courts of Pennsylvania interpret the defense of unclean hands narrowly and are loathe to bar relief except whe......
-
Reverse Passing Off: Preventing Healthy Competition
...305, 307 (1993). 20. Id. 21. Bauer, supra note 13, at 681-83. 22. 214 F.2d 649 (3d Cir. 1954). 23. Bauer, supra note 13, at 684-85. 24. 419 F. Supp. 292 (E.D. Pa. 25. MCCARTHY ON TRADEMARKS, supra note 3, § 25:6 and 25:8 at 25-10 to 25-12. 26. Id. § 25:6 at 25-10. 27. Id. § 25:8 at 25-12. 2......