McIlhenny Co. v. Bulliard, 22.

• Decision Date: 23 July 1928
• Docket Number: No. 22.,22.
• Citation: 33 F.2d 978
• Parties: McILHENNY CO. v. BULLIARD.
• Court: U.S. District Court — Western District of Louisiana

33 F.2d 978 (1928)

McILHENNY CO. v. BULLIARD.

No. 22.

District Court, W. D. Louisiana, Opelousas Division.

July 23, 1928.

Howe, Fenner, Spencer & Cocke, of New Orleans, La., J. S. Clark, of Philadelphia, Pa., and Edw. S. Rogers, of Chicago, Ill., for complainant.

J. M. Grimmet, of Shreveport, La., Emmet Alpha, of New Orleans, La., and Merrick & Schwarz, of New Orleans, La., for respondent.

DAWKINS, J.

The nature and history of this case are disclosed more or less in the opinions handed down in former proceedings, reported in (D. C.) 265 F. 705, and (D. C.) 16 F.(2d) 470, and hence will not be repeated here. The matter is now again before the court on exceptions and objections to the findings and recommendations of the special master, to whom it was referred under the decree of June 7, 1926, to ascertain the amount which should be recovered by complainant as profits and damages flowing from the infringement of complainant's trade-mark.

On March 12, 1927, complainant filed a supplemental bill, charging that since the rendition of the decree of June 7, 1926, respondent had continued to violate the injunction by using the phrase, "Made from tabasco peppers," without accompanying it with the qualifying language set out in that decree, and praying for a further injunction restraining the use of the word "tabasco" for such period as might be necessary to overcome the effect of his conduct. At the same time a motion was filed to punish respondent as for civil contempt for violating the decree of June 7, 1926. By consent, the matter of accounting for the period from the latter date to June 30, 1927, was also referred to the master, evidence was heard and the amount of profits and damages was considered by the master in anticipation of the ruling by the court upon the issue of infringement and violation of the said decree during the latter period.

On April 2, 1928, the master filed his report. The accounting was divided into two parts; the first covering operations of respondent prior to July 1, 1926, and the second from the latter date to June 30, 1927. The amount of profits for the first period was by stipulation fixed at $5,017.50, and for the latter the master found from the evidence that a profit of $6,435.40 had been made, and recommended that plaintiff have judgment for said amount, with legal interest from date of his report. Damages were denied, for the reason that in his opinion the evidence did not support a recovery.

Exceptions were taken by complainant to the refusal of the master to award damages, and by respondent to the awarding of profits for the second period. Respondent also opposed the motion by complainant for a modification of the injunction, so as to deny him the right to use the word "tabasco" in connection with his pepper sauce, for a limited period, to counteract the violation of the decree of June 7, 1926. Complainant also filed a motion or amendment, asking that respondent be denied the right to use the word "Evangeline" in connection with his pepper sauce, and respondent filed a similar motion, praying that the court eliminate from its decree of June 7, 1926, the requirement that, in the use of the phrase "Made from tabasco peppers," the same should be accompanied with distinguishing words, to show that it was not the original pepper sauce manufactured by the complainant for a long period of years.

Additional evidence was taken in open court and the case is now to be considered upon the following propositions, to wit:

(1) Should complainant be awarded damages for the period prior to June 7, 1926?

(2) Was there a violation of the decree of June 7, 1926, and, if so, (a) does the record support the recovery allowed by the master for profits from that date to June 30, 1927; and (b) should it be allowed damages for that period also?

(3) Should the decree of June 7, 1926, be modified, so as (a) to deny respondent the right to use the word "tabasco" altogether, for a limited period; and (b) should he also be required to eliminate the word "Evangeline" in connection with said sauce?

(4) Should the prayer of respondent to modify the decree of June 7, 1926, so as to eliminate the qualifying words required thereby in the use of the phrase "Made from tabasco peppers," be granted?

There is the additional question of whether or not the respondent should be adjudged guilty of contempt, which was submitted along with the exceptions to the master's report and upon the evidence adduced at the hearing before the court.

1. The court has carefully examined the evidence offered in support of the claim for damages, and is constrained to agree with the master that it is insufficient upon which to base a judgment for actual damages or the loss of business. It is true that a number of hotels and railroads are using the sauce of respondent, who formerly were customers of complainant; but there is nothing to show what proportion of the total sales were to these customers, and any attempt to fix the same would be the merest guess. I am aware of the difficulties with which complainant was confronted in view of the fact that respondent, like complainant, sells a considerable portion of his product to jobbers, and it would be necessary to trace the purchases to the consumer through those sources; but such difficulties cannot serve to relieve the necessity for reasonable certainty in discharging the burden of proof resting upon the complainant.

However, the Act No. 49 of the Legislature of Louisiana, for the year 1898, in my opinion, has enlarged or supplemented the common-law right of recovery for actual damages, such as result from the making of sales by the infringer, which the complainant must show he could have made. It provides:

"Sec. 5. Be it further enacted, etc., Every such person, association or union adopting or using a label, trade-mark, term, design, device or form of advertisement as aforesaid, may proceed by suit to enjoin the manufacture, use, display or sale of any counterfeits or imitations thereof, and all courts of competent jurisdiction shall grant injunctions to restrain such manufacture, use, display or sale and may award the complainant in any such suit damages resulting from such manufacture, use, sale or display as may be by the said court deemed just and reasonable, and shall require the defendants to pay to such person, association or union, all profits derived from such wrongful manufacture, use, display or sale; and such court shall also order that all such counterfeits or imitations in the possession or under the control of any defendant in such cause be delivered to an officer of the court, or to the complainant, to be destroyed." (Italics by the writer.)

My view is that the Legislature, realizing the difficulty of proof in such cases, intended to authorize the court in its discretion to determine what should be a proper recovery upon a "just and reasonable" consideration of all the circumstances, without being confined to the exactness and certainty of showing otherwise required in such cases. This appears to be borne out by the decisions of the Louisiana Supreme Court. See Cusimano & Co. v. Olive Oil Importing Co., Ltd., 114 La. 312, 38 So. 200; Coca-Cola Co. v. Vivian Ice, Light & Water Co., 150 La. 445...