Kahn v. W a Gaines & Co.

• Decision Date: 27 April 1908
• Docket Number: 2,700.
• Citation: 161 F. 495
• Parties: KAHN et al. v. W. A. GAINES & CO.
• Court: U.S. Court of Appeals — Eighth Circuit

161 F. 495

KAHN et al. v. W. A. GAINES & CO.

No. 2,700.

United States Court of Appeals, Eighth Circuit.

April 27, 1908

Jacob Klein and Luther Ely Smith (Warwick M. Hough and A. J Freiberg, on the brief), for appellants.

James L. Hopkins (Daniel W. Lindsey, on the brief), for appellee.

Before SANBORN, Circuit Judge, and PHILIPS, District Judge.

PHILIPS District Judge.

The appellee (complainant below), obtained decree in the Circuit Court establishing its asserted claim to the words 'Old Crow' as a trade-mark, enjoining appellants (defendants below) from the use thereof in their business, finding the defendants guilty of unfair competition in business, and ordering an accounting.

The original bill was filed in November, 1904. The bill alleges that the complainant is the sole and exclusive owner of a trade-mark for whisky consisting of the words 'Old Crow,' which words were open to adoption as a trade-mark for whisky in the year 1867, when the complainant's predecessor in business, Gaines, Berry & Co., adopted and commercially applied the said trade-mark for whisky distilled by them, and that it acquired by assignment said trade-mark which has been continuously applied by it and its predecessors in business upon packages containing whisky from the year 1867 to the time of filing the amended bill. The bill further alleges that in 1835 one James Crow became domiciled upon Glenn's creek, Woodford county, Ky., when and where he began the manufacture of whisky of superior quality, which became designated about that time as 'Crow,' or 'Old Crow,' and that he was continuously engaged in the distillation of whisky as 'Crow' or 'Old Crow' to his death in 1855 that at that time a considerable quantity of said whisky remained upon the market and was commercially known and dealt in until the year 1867; that no whisky was produced during said period anywhere to which the word 'Crow,' or 'Old Crow,' was applied as a trade-mark; that in that year a predecessor of complainant, to wit, Gaines, Berry &amp Co., began the production on said Glenn's creek of their whisky, using the same process and material theretofore used by said Crow; that from 1835 to this time the words 'Old Crow' have been applied continuously to whisky produced by the process of Crow, and to no other whisky whatever; that the distillation and production of said whisky has always been on said Glenn's creek, and not elsewhere.

The bill further alleges that Abraham M. Hellman and Moritz Hellman, the defendants, had been guilty of fraudulent acts and unfair competition in selling a spurious compounded liquor as and for the complainant's whisky, to its damage in the sum of $5,000, and prayed for an accounting.

The answer denied specifically the allegations of the bill and alleged the ownership of the word 'Crow,' 'Old Crow,' 'J. W. Crow,' and the celebrated 'Crow Bourbon,' together with a figure of a crow, in connection with their own business upon packages of whisky in their and their predecessor's business, and so continued the use thereof from the year 1863 and prior thereto; alleging that the whisky sold by complainant under the words 'Old Crow' was an unrefined, harmful, and deleterious article, and that the whisky sold by them was a blend largely free from impurities. The replication was general. The defendants filed a cross-bill, claiming the trade-mark in question and asking for an injunction. This need not be considered, as at the hearing the defendants' counsel declined to insist upon any affirmative relief.

The evidence tended to show that a man named James Crow, usually called 'Jim Crow,' and sometimes known as 'Crow,' or 'Old Crow,' began the manufacture of whisky in Woodford county, Ky., about the year 1850. The evidence does not show that he ever owned or operated any distillery in his own right, but worked for persons owning distilleries. He died about 1855. Prior to his death he worked at various distilleries in that neighborhood, to wit, at the Edwards distillery, at Anderson Johnson's distillery, at Jack Johnson's distillery, at Johnson & Yancey's, at Oscar Pepper's distillery, and at Capt. Henry's distillery. Whisky made by him was called 'Crow,' or 'Old Crow,' as stated by one of the witnesses, just as whisky made by Taylor was called 'Old Taylor.' The process employed by Crow was what is known as 'hand-made' whisky; but there was no secrecy about his process, nor did it differ materially from that employed by other distilleries of the same period. He used in the manufacture the grain grown in the neighborhood, which was not different from that grown in the Western states. When he worked at Johnson & Yancey's distillery, it was not known as 'Crow's' whisky, but as 'Johnson & Yancey's.' The old Oscar Pepper's distillery, at which Crow at one time worked, was run by various distillers from 1855 to 1865. This whisky was called 'Old Oscar Pepper,' and was sometimes called 'Old Crow.' The men who worked with him understood the process employed by Crow and used it in other distilleries.

The copartnership firm of Gaines, Berry & Co. began business as distillers in Woodford county, Ky., in 1867 and operated the old Pepper distillery as claimed successor. This concern was later succeeded by W. A. Gaines & Co. a copartnership, which on the 9th day of July, 1882, filed in the Patent Office at Washington, D.C., application for registering the following as a trade-mark:

'Old Crow Distillery, Woodford County, Kentucky. Copper Distilled Whiskey. W. A. Gaines, Distiller.' Accompanying this application was the statement that 'this trade-mark we have used in our business since January, 1870. ' In 1887 W. A. Gaines & Co. incorporated under the same name. In June, 1904, shortly before the institution of this suit, and after controversy had arisen between the complainant and the defendants respecting the use of the name of 'Crow,' or 'Old Crow,' in business, the complainant corporation filed in the Patent Office application to register as a trade-mark the words 'Old Crow.' The sworn statement of the officer of the company accompanying the application asserted that:

'This trade-mark has been continuously used by the said W. A. Gaines & Co. and its predecessors since the year A.D. 1835.'

To say the least of it, these different statements show some juggling with facts and disclose inconsistent positions. The record does not show any written devolution of title or right of trade-mark passing from Gaines, Berry & Co. to W. A. Gaines & Co., and from the latter to the complainant corporation. Be this as it may, no unprejudiced mind can read the evidence in this case without the impression that the conception of a trade-mark in the words 'Crow,' or 'Old Crow,' did not enter the mind of Gaines, Berry & Co. prior to 1870; and they may not, under the issues presented by the pleadings, lay any claim thereto anterior to 1867. It is to be conceded that after 1870 Gaines, Berry & Co. and W. A. Gaines, and their successors, W. A. Gaines & Co., built up a large, successful business in the manufacture of whisky, which has extended throughout the country, and that their whisky, under the designation of 'Old Crow,' attained wide celebrity. The question remains, however, to be answered: Has the complainant maintained by proof the assertion that the defendants, or their predecessors in business, wrongfully invaded its exclusive right to the use of the words 'Crow,' or 'Old Crow,' in business?

The evidence, without contradiction, establishes the following facts: That as early as 1862 the firm of I. & L. M. Hellman composed of Isaac Hellman and Louis M. Hellman, were engaged in the wholesale liquor business on Pine street, in the city of St. Louis, Mo.; that as early as 1862 or 1863, on the whisky barrels employed in their trade, they had a bird with wings spread, in imitation of a crow, burnt into the head of the barrel, and the word 'Crow,' or the words 'Old Crow,' were burnt beneath this figure. This fact is affirmed by the testimony of Mr. Herman A. Haeussler, an attorney at law of St. Louis, whose reputation for intelligence and integrity is such as to entitle it to full credence. The firm of lawyers with which he was connected, whose office was the next door to the business house of the Hellmans, acted as counsel for I. & L. M. Hellman in the conduct of their business. Mr. Haeussler testified that as early as 1862-63, they had a brand of 'Crow Whisky'; that he saw the barrels on the sidewalk ready to ship, with the figure of a crow either on the barrels or on the signs (and he thinks the barrels), with the word 'Crow.' The evidence further shows that as early as 1865 they had signs in frame prepared, displayed in the windows of their storehouse, like Exhibit No. 6, represented by the following cut, large numbers of which were used in connection with...