Mark Jacobs v. Joseph Beecham
| Decision Date | 15 May 1911 |
| Docket Number | No. 139,139 |
| Citation | 55 L.Ed. 729,31 S.Ct. 555,221 U.S. 263 |
| Parties | MARK JACOBS, Appt., v. JOSEPH BEECHAM |
| Court | U.S. Supreme Court |
Messrs. George Frederick Hurd, Cornelius W. Wickersham (by special leave), Max J. Kohler, Moses Weill, and Isaac Weill for appellant.
[Argument of Counsel from pages 263-267 intentionally omitted] Messrs. John L. Wilkie and Charles W. Gould for appellee.
[Argument of Counsel from pages 267-270 intentionally omitted] Mr. Justice Holmes delivered the opinion of the court:
This is a bill by the owner of a proprietary or patent medicine, so called, made according to a secret formula, and known as 'Beecham's Pills,' to restrain the defendant from using the same name on pills made by him, and trying to appropriate the plaintiff's good will. The plaintiff had a decree in the circuit court, enjoining the defendant from using the word 'Beecham' in connection with pills prepared or sold by him, which decree was affirmed by the circuit court of appeals. 86 C. C. A. 623, 159 Fed. 129.
The present appeal is based on two or three different grounds. The first of these is that anyone who honestly can discover the formula has a right to use it, to tell the public that he is using it, and for that purpose to employ the only words by which the formula can be identified to the public mind. As to the defendant's having discovered the formula, it is said that if he makes a different or inferior article the burden is on the plaintiff to prove the fact. As to the method adopted by the defendant to advertise his wares, which, apart from other imitations, consists in simply marking them 'Beecham's Pills,' it is said that the proper name cannot constitute a trademark, and has become the generic designation of the thing. The defendant's use of the name is said to be saved from being unfair by the statement underneath that he made the pills.
Corruptio optimi pessima. Sound general propositions thus are turned to the support of a conclusion that manifestly should not be reached. We will follow and answer the argument in the order in which we have stated it. If, in a technical sense, the burden of proof is on the plaintiff to prove that the defendant's pills are not made by his formula, there it at least a prima facie presumption of difference, just as in the case of slander there is a presumption that slanderous words are false. A different rule would prevent the owner of a secret process from protecting it except by giving up his secret. Again, when the defendant has to justify using the plaintiff's tradename, the burden is on him. Finally, as the case presents what is a fraud on its face, it is more likely that the defendant is a modern advertiser than that he has discovered the hidden formula of the plaintiff's success.
As to the defendant's method of advertising, he does not simply say that he has the Beecham formula, as in Saxlehner v. Wagner, 216 U. S. 375, 54 L. ed. 525, 30 Sup. Ct. Rep. 298, but he says that he makes Beecham's pills. The only sense in which 'Beecham's Pills' can be said to have become a designation of the article is that Beecham, so far as appears, is the only man who has made it. But there is nothing generic in the designation. It is in the highest degree individual, and means the producer as much as the producr. It has not left the originator, to travel with the goods, as in Chadwick v. Covell, 151 Mass. 190, 195, 6 L.R.A. 839, 21 Am. St. Rep. 442, 23 N. E. 1068, or come to express character rather than source, as it is admitted sometimes may be the case. Holzapfel's Compositions Co. v. Rahtjen's American Composition Co. 183 U. S. 1, 46 L. ed. 49, 22 Sup. Ct. Rep. 6; Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co. 128 U. S. 598, 32 L. ed. 535, 9 Sup. St. Rep. 166; Thomson v. Winchester, 19 Pick. 214, 216, 31 Am. Dec. 135. To call pills Beecham's pills is to call them the plaintiff's pills. The statement that the defendant makes them does not save the fraud. That is not what the public would notice or is intended to notice, and, if it did, its natural interpretation would be that the defendant had bought the original busness out and was carrying it on. It would be unfair, even if we could assume, as we cannot, that the defendant uses the plaintiff's formula for his pills. McLean v. Fleming, 96 U. S. 245, 252, 24 L. ed. 828, 831; Millington v. Fox, 3 Myl. & C. 338, 352; Gilman v....
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