Meccano, Limited, v. Wagner

• Decision Date: 12 June 1916
• Docket Number: 23.
• Citation: 234 F. 912
• Parties: MECCANO, Limited, v. WAGNER et al.
• Court: U.S. District Court — Southern District of Ohio

234 F. 912

MECCANO, Limited, v. WAGNER et al.

No. 23.

United States District Court, S.D. Ohio, Western Division.

June 12, 1916

[Copyrighted Material Omitted]

Reeve Lewis and Ralph L. Scott, both of New York City, and Healy Ferris & McAvoy, of Cincinnati, Ohio, for complainant.

H. A Toulmin, of Dayton, Ohio, for defendants.

HOLLISTER District Judge.

Action for unfair competition; infringement of copyright, and infringement of patent. Counterclaim for unfair competition.

In 1899 Frank Hornby, of Liverpool, England, conceived the idea of a mechanical toy composed of thin narrow strips of metal of different lengths perforated with holes equidistant from each other, angle bars, wheels, nuts, and bolts, so designed and constructed that by their use toy models can be built, in appearance resembling mechanical structures, and, in some instances, actually illustrating principles in mechanics applied and embodied in actual mechanical structures in common use in many arts in which the principles of mechanics are applied. Hornby had a mechanical turn of mind, and, as a boy and young man, was accustomed to the use of the simpler tools used by mechanics. He was managing clerk in the office of one Elliott, an importer of American meat and live stock. He had no means, except a small salary, and his family included two boys, for whom he constructed the metal strips and other appurtenances hereinbefore described. Various mechanical structures were built up of these, and Hornby, believing he had found a toy for which there would be a market, obtained a British patent in January, 1901. His want of means and the disinclination of the trade to further his efforts to put the device on the market did not discourage him; but, having interested his employer, he found sufficient means to further develop the toy and to bring it to the attention of the public.

The first constructions were crude and composed of comparatively few parts, but the idea was there, and by the addition from time to time of further parts, it became possible for a bright boy to build up, either on his own initiative or from illustrations in the Manual which accompanied each outfit of parts, an extraordinary number of devices resembling in form and appearance many structural devices known and used in the mechanical arts. There was nothing like it or resembling it on the market, and, after a number of years of effort to create a market by advertising and public demonstrations, a large business has been built up in the United States and elsewhere.

The toy is of great utility, of educational value, is stimulating to the imagination, appeals to a boy's creative faculties, and not only gives entertainment, but is highly instructive.

Prior to 1908, about $40,000 had been expended in the enterprise, including advertising. The toy was first called: 'Mechanics Made Easy,' and 'Adaptable Mechanical Toy.' It was in 1907 called 'Meccano,' by which it is known in the trade. The name was chosen after much consideration, and is a happy choice for a toy in the use of which models of mechanical devices may be built up. In 1908, the business was incorporated under the laws of Great Britain, under the name, 'Meccano, Limited.' It was first attempted in 1908 to interest American dealers, and in 1909 the Embossing Company of Albany, N.Y., became the exclusive agency for the United States and Canada, although prior to that time some English exporting houses had sent some of the outfits to the American market. Sales of Meccano in the United States developed rapidly--1909, $7,000; 1910, $24,000; 1911, $49,000; 1912, $114,000-- and up to the last date, approximately $100,000 had been spent in advertising, demonstrating in department stores, and divers other ways.

Each 'outfit' of Meccano contains certain units, consisting of flat strips of metal, angular strips and plates of design and dimension of previous conception, so as to be adapted to the various kinds of models to be constructed. In these strips, etc., the place and dimension of the holes are also the result of thought, especially so in the early conception and development of the toy. This is also true of the ample fastenings by which units may be held together as well as appropriate wheels and other devices used in building up the models, and all of these were made according to a standard, and are, through the various kinds of outfits complainant sells, interchangeable, so that the parts of one outfit may, when appropriate, be interchanged with other parts; and in all the outfits, parts are interchangeable. The Meccano outfits are numbered from '0' to '6,' inclusive, and the company sells accessories and supplemental outfits numbered '0A' to '5A,' inclusive. In '0,' there are different parts making up that outfit. From these parts a number of models can be made. This outfit has a certain price. In '0A,' there are additional parts, which together are sold at a certain price. When '0A' is added to '0,' they together make outfit 'No. 1.' And so on the system goes, the outfits expanding in parts and units until outfit '6,' together with supplemental parts '5A,' make up and comprise all of the preceding outfits and the additional parts to each outfit, the price becoming greater as the outfits contain more parts, units, etc. The plan upon which these commodities are sold was preconceived and has a definite object. If a boy starts with outfit '0,' and wishes to increase, by additional parts and units, the opportunity for constructing models beyond the capacity of the units and parts in '0,' he purchases the additional units and parts '0A.' He then has an outfit which corresponds to outfit '1.' And so if he first has, say, outfit '3,' it would contain all the parts of '0,' '1,' and '2,' which, of course, would include additional parts '0A,' '1A,' and '2A.' The units in these additional parts and the additional parts themselves may be purchased separately. If a unit has been lost or injured, it may be obtained from dealers who carry Meccano. Such a unit can be used in its appropriate connection and relation in any Meccano outfit. The valuable quality of interchangeability attaches to the various parts. Each set is accompanied by a Manual, in which is depicted models, which may be constructed by the units contained in the outfit which it accompanies, though not intended to limit the possibilities of the units, as the thought and ingenuity of the boy owner may suggest constructions not found in the Manual.

There is no doubt, and experience shows, that the use of an outfit, with its Manual, tends to develop a desire for a more extended opportunity the possession of further units would afford. Hornby created something. What he created has been developed since by him and his associates and by the complainant, which succeeded to their rights. That which was created was the result of study, of experiment, of expense; and, when the result of these were brought to the market and to the attention of consumers, it became a creation of very great value.

It was known by a distinctive trade-name, and gave to the consuming public a toy of a new character which was in its essence a 'model builder' and might well have received that name. Each of the outfits has printed on its cover or casing, 'Manufactured by Meccano, Ltd., Liverpool, Eng. ' The box covers of Meccano outfits are black, the label-- the color red predominating, the word 'Meccano' in large letters being in red, and the legend, 'The World's Mechanical Wonders in Every Home,' being in red-- when pasted on leaves a margin of black.

In each outfit, the parts or units making it up are neatly arranged in the containing box. The label also on the box represents a boy building a model of one kind or another.

There is no doubt that when the defendant Francis A. Wagner, trading as the American Mechanical Toy Company, introduced into the market the commodities of which Meccano, Limited, complain, the trade and a large part of the consuming public were acquainted with complainant's model builder, and the trade and those of the consuming public who had seen Meccano outfits knew it as of British make. The name 'Meccano' itself attracts attention, and particularly when seen in connection with printed representations of models of well-known mechanical constructions; and the name had become identified with a toy model builder, the only one of its kind.

Prior to the date this suit was brought, Wagner and the defendant the Strobel & Wilken Company, of New York and Dayton (Wagner's selling agents), had introduced into the market a model builder, which, except for great care in examination, cannot be distinguished from the complainant's Meccano; and, in connection with the model builder so introduced by defendants, a Manual which could not in my judgment, have ben made in the way they are made, in the language and figures chosen, and in the models displayed, unless the constructor had before him a Manual or Manuals issued by complainant.

The covers of defendants' outfits are black. The predominating color of the label is red, a boy engaged in the construction of a mechanical model is displayed; and on the label is inscribed 'The World's Greatest Mechanical Wonder.' The choice of the name, 'The American Model Builder,' is significant, giving the impression that it is different from the British model builder (the prior and well-known Meccano), when, in fact, it is the same. The idea conveyed by defendants' label is just the same as the idea conveyed by complainant's label. If one had seen an advertisement of a Meccano model builder, or had seen a neighbor's boy building models with Meccano mechanical units, and had gone to a toy store for the purpose of buying such an outfit and had seen there defendan...