Prestonettes v. Coty

• Court: U.S. Supreme Court
• Writing for the Court: HOLMES
• Citation: Prestonettes v. Coty, 264 U.S. 359, 44 S.Ct. 350, 68 L.Ed. 731 (1924)
• Decision Date: 07 April 1924
• Docket Number: No. 197,197
• Parties: PRESTONETTES, Inc., v. COTY

264 U.S. 359

44 S.Ct. 350

68 L.Ed. 731

PRESTONETTES, Inc.,

v COTY.

No. 197.

Argued Feb. 18, and 19, 1924.

Decided April 7, 1924.

Messrs. Charles H. Tuttle and Louis Marshall, both of New York City, and Wm. J. Hughes, of Washington, D. C., for petitioner.

[Argument of Counsel from pages 359-363 intentionally omitted] Messrs. Asher Blum, of New York City, Lindley M. Garrison, of Jersey City N. J., F. D. McKenney, of Washington, D. C., and Hugo Mock, of New York City, for respondent.

[Argument of Counsel from pages 363-365 intentionally omitted] Mr. Justice HOLMES delivered the opinion of the Court.

This is a bill in equity brought by the respondent, Coty, a citizen of France, against Prestonettes, a New York corporation, having its principal place of business in the Southern District of New York. It seeks to restrain alleged unlawful uses of the Plaintiff's registered trade-marks, 'Coty' and 'L'Origan' upon toilet powders and perfumes. The defendant purchases the genuine powder, subjects it to pressure, adds a binder to give it coherence and sells the compact in a metal case. It buys the genuine perfume in bottles and sells it in smaller bottles. We need not mention what labels it used before this suit as the defendant is content to abide by the decree of the District Court. That decree allowed the defendant to put upon the rebottled perfume 'Prestonettes, Inc., not connected with Coty, states that the contents are Coty's [giving the name of the article] independently rebottled in New York.' every word to be in letters of the same size, color, type and general distinctiveness. It allowed the defendant to make compacts from the genuine loose powder of the plaintiff and to sell them with this label on the container, 'Prestonettes, Inc., not connected with Coty, states that the compact of face powder herein was independently compounded by it from Coty's [giving the name] loose powder and its own binder. Loose powder—per cent., Binder—per cent.,' every word to be in letters of the same size, color, type and general distinctiveness. The Circuit Court of Appeals, considering the very delicate and volatile nature of the perfume, its easy deterioration, and the opportunities for adulteration, issued an absolute preliminary injunction against the use of the above marks except on the original packages as marked and sold by the plaintiff, thinking that the defendant could not put upon the plaintiff the burden of keeping a constant watch. 285 Fed. 501, certiorari granted, 260 U. S. 720, 43 Sup. Ct. 250, 67 L. Ed. 480.

The bill does not charge the defendant with adulterating or otherwise deteriorating the plaintiff's product except that it intimates rather than alleges metal containers to be bad, and the Circuit Court of Appeals stated that there were no controverted questions of fact but that the issue was simply one of law. It seemingly assumed that the defendant handled the plaintiff's product without in any way injuring its qualities and made its decree upon that assumption. The decree seems to us to have gone too far.

The defendant of course by virtue of its ownership had a right to compound or change what it bought, to divide either the original or the modified product, and to sell it so divided. The plaintiff could not prevent or complain of its stating the nature of the component parts and the source from which they were derived if it did not use the trade-mark in doing so. For instance, the defendant could state that a certain percentage of its compound was made at a certain place in Paris, however well known as the plaintiff's factory that place might be. If the compound was worse than the constituent, it might be a misfortune to the plaintiff, but the...