Liebig's Extract of Meat Co. v. Walker

• Decision Date: 04 April 1902
• Citation: 115 F. 822
• Parties: LIEBIG'S EXTRACT OF MEAT CO., Limited, v. WALKER et al.
• Court: U.S. District Court — Southern District of New York

115 F. 822

LIEBIG'S EXTRACT OF MEAT CO., Limited, v. WALKER et al.

United States Circuit Court, S.D. New York.

April 4, 1902

Hubert A. Banning, for defendant J. T. Walker.

HAZEL District Judge.

This suit, in its original form, was commenced against J. T Walker, trading under the name and style of J. T. Walker &amp Co., the H. M. Anthony Company, a corporation, Henry M. Anthony, and Charles F. Sullivan. Subsequently, pursuant to stipulation between counsel for complainant and counsel for all defendants except J. T. Walker, an order was made by Judge Coxe permitting a discontinuance as to the stipulating defendants. At the hearing a motion was made to amend the bill of complaint by striking out the defendants against whom the suit was discontinued, and charging the defendant Walker with the acts complained of. The defendants are residents of the state of New York, and in the original bill were charged with intent to injure the complainant by fraudulently diverting and securing to themselves the profits and emoluments connected with the sale of complainant's product, known and designated as 'Liebig's Extract of Meat.' It is further alleged in the bill that the manufacture and sale of this article by the defendants were carried out pursuant to a conspiracy with Libby, McNeill &amp Libby, an Illinois corporation, not a party to this suit, to defraud the complainant. It was insisted on the argument that a discontinuance as to some of the defendants required a dismissal of the bill against all defendants on the ground that the interests of the defendants are inseparable. I am quite well satisfied that a decree can be made without affecting the rights of any absent parties. The defendants against whom the suit was discontinued are not indispensable; hence their absence is not fatal. The bill cannot be considered in any sense as a new bill, and the amendment is therefore allowed.

The gist of the amended bill charges that the defendant Walker has sold and continues to sell extract of meat manufactured by Libby, McNeill & Libby, contained in similar jars, labeled and inscribed in substantial resemblance to jars, wrappers, and labels used by complainant in the sale of its extract of meat. Complainant's wrapper has printed thereon the name of the goods, 'Liebig's Extract of Meat,' name of maker, 'Liebig's Extract of Meat Co., Limited,' and a fac simile trade-mark signature of 'J. v. Liebig,' in blue, running diagonally across the printed matter on the wrapper. The jar contains two ounces of meat extract, and is corked and capped with metal capsule, on which appear the words, 'Liebig's Extract of Meat Co., Limited, London. ' It has printed upon a narrow label wrapped around the upper part of the jar the words, 'Examined and Approved by the Director of the Scientific Department and Control. Dr. M. von Pettenkofer and Dr. Carl von Voit Delegate. ' The printed matter upon the neck label is in black on white paper, and upon the wrapper in red and black. It has printed thereon, in addition to the words already stated, the words, 'Extractum carnis Liebig.' The defendant's jar is of the same size and shape as that of complainant. The neck label and wrapper is of substantially the same material and appearance. Upon the neck label are printed in black letters the words, 'Examined and Approved by the Director of the Scientific Department of the Liebig Fluid Beef Company'; and upon the wrapper are printed the words, in red and black letters, 'Liebig's Extract of Beef, Depots, New York, Chicago, Prepared by Liebig Beef Co. (Extractum carnis Liebig).' And diagonally across the printed matter on the wrapper appears the script signature in blue, 'J. T. Walker,' in close imitation of 'J. v. Liebig.' The jars, neck label, wrapper, and the printed matter thereon, used by both parties, quite closely conform. Taking these facts into consideration, together with the similarity of the products of both parties, unfair competition is charged by the complainant. The proofs satisfactorily show that 'Liebig's Fluid Beef Company' was and is a fictitious concern. The wrappers used by the defendant having printed thereon 'Liebig's Fluid Beef Company,' either with or without the signature of 'J. T. Walker' across the face of the printed matter, are clearly imitations of the complainant's wrapper. The signature of the defendant impressed upon the wrapper in blue, whenever used, is imitative of the blue fac simile script signature used by the complainant. The defendant, therefore, must be enjoined from using on his goods a wrapper and neck label having printed thereon the words 'Liebig's Fluid Beef Company,' as shown by the proofs, and which in color and general appearance clearly simulate that of the complainant, and are calculated to deceive the public. The defendant, by using a neck label and wrapper containing words from which it may be inferred that its product is that of complainant's make, manifests its indubitable purpose to deceive the public and palm off the defendant's extract as that manufactured by complainant. A similar suit to the one at bar, brought by complainant against Libby, McNeill & Libby and others, of Chicago, Ill., was tried in the Seventh circuit. The complainant there maintained, as here, that the defendant, by the use of the word 'Liebig' as applied to the use of his product, infringed complainant's common-law trade-mark right in the nomenclature of Liebig, as prefixed to the words 'Extract of Meat.' Liebig's Extract of Meat Co. v. Libby, McNeill & Libby (C.C.) 103 F. 87. This claim was determined adversely to complainant. In the Chicago case, complainant's right or title to the word 'Liebig' was directly involved. A common-law trade-mark right to the name of 'liebig' was insisted on. Judge Seaman, in an exhaustive and well-considered opinion, found that there was no evidence showing devolution of title from the Royal Pharmacy, from which complainant claims title in the use of the name 'Liebig' in connection with 'Extract of Meat'; that the grant of such right by Baron Liebig to the complainant, April 12, 1866, was clearly insufficient to establish such right, in view of prior agreements and use of the name and formula in the manufacture of extract of meat by the Royal Pharmacy. Reference is made by Judge Seaman to English and Continental decisions on the right of complainant to maintain an exclusive trade-mark right in the designation. He held that the designation and its equivalent were common property; that it has many years since become the commercial name of the article, and therefore the defendant in that case had a right to its use. He held the defendant, however, guilty of unfair competition, and enjoined it from simulation of the label and name of complainant. By order subsequently entered, the court directed that 'the defendant, Libby, McNeill & Libby, be perpetually restrained and enjoined from using the work 'Liebig' in association with the word 'Company,' in any form or combination of words, to indicate the maker, distributer, or vender of its extract of meat, and from using such words associated together in any manner whatsoever which could lead purchasers of its extract of meat to believe that it emanated from complainant, and was the complainant's extract of meat, which is always associated with the complainant's corporate title of 'Liebig's Extract of Meat Company, Limited."' The use of the external wrapper marked 'Liebig Fluid Beef Company,' either with or without the signature diagonally across the face of the printed matter thereon in fac simile of the script signature, which would be a colorable imitation of the blue fac simile script signature of the complainant company, was also enjoined, as well as the use of the wrapper for the sale of extract of meat, which would be a colorable imitation of complainant's. Judge Seaman followed the case of Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 16 Sup.Ct. 1002, 41 L.Ed. 118, affirming the rule there stated, and held that, as the manufacture of beef extract in accordance with the Liebig formula is equally open to the defendants under that name, they may so designate the meat extract manufactured by them. His opinion then quotes the following from the Singer Mfg. Co. Case, supra:

'Subject, however, to the condition that the name must be so used as not to deprive others of their rights, or to deceive the public, and therefore that the name must be accompanied with such indication that the thing manufactured is the work of the one making it as will unmistakably inform the public of that fact.'

The defendant, therefore, in the sale of his extract of meat, is required to offer his product in such a manner as not to lead an intending purchaser of ordinary intelligence, using ordinary...