Putnam Nail Co. v. Dulaney

• Decision Date: 23 February 1891
• Docket Number: 90
• Citation: 21 A. 391,140 Pa. 205
• Parties: PUTNAM NAIL CO. v. B. F. DULANEY
• Court: Pennsylvania Supreme Court

21 A. 391

140 Pa. 205

PUTNAM NAIL CO. v. B. F. DULANEY

No. 90

Supreme Court of Pennsylvania

February 23, 1891

Argued January 30, 1891

APPEAL BY PLAINTIFF FROM THE COURT OF COMMON PLEAS NO. 3 OF PHILADELPHIA COUNTY.

No. 90 January Term 1891, Sup. Ct.; court below, No. 514 September Term 1889, C.P. No. 3, in Equity.

On October 31, 1889, the Putnam Nail Company filed a bill in equity against B. F. Dulaney, making in substance, as afterwards amended, the following averments:

That the plaintiff was a corporation, organized under the laws of the state of Massachusetts, and had been engaged for many years in the manufacture and sale of horse-shoe nails, and nails of its manufacture had acquired a reputation leading to large sales thereof. About 1874 the plaintiff adopted a method of bronzing a certain kind or quality of the nails made by it, solely for the purpose of distinguishing such nails as of its own manufacture, and to secure a trade-mark by which they might be known and sold in the market; such bronzing not being intended to affect and not affecting the quality or character of the nails on which it was used, but affecting only their external appearance. The bronzing was never known or used in the mechanic arts in connection with horse-shoe nails, or nails of any kind, until adopted and introduced into the trade by the plaintiff, for the sole purpose of distinguishing its goods. Since 1874, the plaintiff had continued to use said trade-mark and all nails of the kind referred to had been so bronzed. They were widely known in the market as "Empire Bronzed" horse-shoe nails, and by certain other names all containing the word "bronze" or "bronzed," and under such names had commanded an extensive reputation and sale throughout the United States, purchasers being guided to a great extent by the trade-mark adopted by the plaintiff and the bronzing of the nails as aforesaid.

That the defendant, intending to deceive purchasers and defraud the public and injure the plaintiff, had been engaged for some time in the sale of horse-shoe nails, not manufactured by the plaintiff, which he had had bronzed and sold as bronzed horse-shoe nails, under the name of "Imperial Bronze," or other names all containing the word "bronze." They were of inferior quality to those bronzed and sold by the plaintiff, and purchasers had been and were deceived and misled into buying the former, in the belief that they were manufactured by the plaintiff. The use of the device of bronzing and of the said trade-mark by the defendant, was an effort to imitate and simulate the plaintiff's trade-mark; was adopted by him solely for that purpose and for no other; in fact, was such an imitation and simulation, and was calculated and intended to deceive and impose upon the public and the plaintiff's customers throughout the country, and had done so; all which was in fraud of the plaintiff's rights and an injury to its business.

The bill prayed for an injunction; for the delivery up, to be canceled and destroyed, of all labels, circulars, etc., in fraud and imitation of the plaintiff's trade-mark, and all blocks, plates and stencils from which the same had been printed; for an account; for damages; and for general relief.

The defendant filed a demurrer to the amended bill, assigning in substance the following reasons: (a) That the bill did not show a case entitling the plaintiff to the relief prayed for or any other relief from a court of equity; (b) that a method of bronzing was not a trade-mark, nor was the "device of bronzing" such a device as that a property right could be acquired therein as a trade-mark; and the words "bronze" and "bronzed," in connection with horse-shoe nails, were mere words of description or color, and as such the plaintiff could acquire no rights of property therein as trade-marks; (c) that the defendant having a right to bronze and sell horse-shoe nails, the court could not draw an inference of fraud from the single fact that he did so, and base a decree thereon.

After argument, a decree was entered, without opinion filed sustaining the demurrer and dismissing the plaintiff's bill; whereupon the plaintiff took this appeal, assigning the decree sustaining the demurrer, for error.

The decree is affirmed, and the appeal dismissed at the costs of the appellant.

Mr Owen Wister and Mr. Francis Rawle (with them Mr. S. G. Fisher), for the appellant:

This constitutes an absolutely clear case for the interposition of a court of equity upon perfectly well-settled principles. Although averments of legal inferences or conclusions are not admitted by a demurrer: Dillon v. Barnard, 21 Wall. 430; yet a specific averment of fraudulent intent, as a fact, is necessarily confessed when the bill is demurred to: Story's Eq. Pl., § 452; Guffing v. Gibb, 2 Black 523; Foote v. Linck, 5 McLean 616.

1. This bill specifically avers that the defendant pirated the plaintiff's business, by making his goods look like the plaintiff's and selling them as such, with the intention of deceiving the public thereby, and that the public were so deceived. The plaintiff admits that it does not have a technical trade-mark, but contends that the jurisdiction in equity does not rest on such an artificial foundation, but on the simple fact of deliberate piracy. We rest upon a principle which has become established in England and the United States by a long line of cases, and can conveniently be stated by quoting the language of the Supreme Court of New York, in Morgan v. Troxell, 89 N.Y. 292 (42 Am. Rep. 294); Cox's Trade-mark Cases, 416: "The law of trade-marks has been gradually expanding so as to meet just such cases. . . . We deem it thus to be well settled, upon authority, that to justify the interference by injunction of a court of equity, it is sufficient that there is a fraudulent intention of palming off the defendant's goods as those of the plaintiff's, and that such intention is to be carried into execution."

2. In support of this principle, we cite the following English cases: Knott v. Morgan, 2 Keen 213; Perry v. Truefitt, 6 Beav. 66; Croft v. Day, 7 Beav. 84; Lee v. Haley, 21 L.T., N.S., 546; L.R. 5 Ch. Div. 155; 39 L.J. Ch. 284; 22 L.T., N.S., 251; Siegert v. Findlater, L.R. 7 Ch. Div. 801; Thorley's Cattle Food Co. v. Massam, 42 L.T., N.S., 851; Lever v. Goodwin, L.R. 36 Ch. Div. 1. In none of these cases does the court say to the plaintiff, "Had you a trade-mark?" It says to the defendant, "You have been passing yourself off for the plaintiff unfairly, and therefore we are going to stop you." It is to be noticed how often the English judges emphasize the fact that exclusive property in a symbol has nothing to do with their decision. It will be found that the courts in this country have been more emphatic if possible, as an examination of the following cases will show: Williams v. Johnson, 2 Bosw. 1, Gillott v. Esterbrook, 48 N.Y. 374 (8 Am. Rep. 553); S.C. 47 Barb. 455; McLean v. Fleming, 96 U.S. 245; Morgan v. Schwachofer, 5 Abb. Pr. 265; Sawyer v. Horne, Cox's Trade-mark Cases, 667; Morgan v. Troxell, 89 N.Y. 292 (42 Am. Rep. 294); Trask Fish Co. v. Wooster, 28 Mo.App. 408; Moxie Nerve Food Co. v. Baumbach, 32 F. 205; Moxie Nerve Food Co. v. Beach, 33 F. 248; see also: Woodward v. Lazar, 21 Cal. 448 (82 Am. Dec. 751); Milner v. Reed, Cox's Trade-mark Cases, 328; Wotherspoon v. Currie, L.R. 5 H.L. 508; Thompson v. Montgomery, L.R. 41 Ch. Div. 35.

3. Laughman's App., 128 Pa. 1, is not against us, as it relates solely to the name of a natural product: Metcalf v. Brand, 86 Ky. 346. Attention is called to the fact that horse-shoe nails are sold by the pound, weighed out to the buyer from the keg by a retailer, and that the coloring of these nails in a novel manner was a reasonable practice and the only sufficient way of distinguishing them. Nails are physically incapable of labeling. We beg attention also to the case of Putnam Nail Co. v. Bennett, 43 F. 800, which was precisely identical with the present case, except in the name of the defendant, and a demurrer to the bill was overruled by Mr. Justice BRADLEY and Mr. Circuit Judge McKENNAN. Equity jurisdiction in all trade-mark cases rests ultimately on the eighth commandment, the principle of which contains and surrounds the two species of cases of which the technical trade-mark is one, and the infringement of a trade reputation is the other. In the former, copying a technical trade-mark is enough; even though it be done innocently or unknowingly, the defendant will be enjoined. In the other line of cases, in which the defendant imitates goods with the intention of pirating, no technical trade-mark is necessary, and to the latter class the case at bar fairly belongs.

Mr. Albert B. Weimer (with him Mr. Frederick M. Leonard), for the appellee:

1. The claim of the plaintiff to a trade-mark in "a method of bronzing" horse-shoe nails, falls within no accepted definition of a trade-mark: Amoskeag Mfg. Co. v. Trainer, 101 U.S. 51; Laughman's App., 128 Pa. 1; Hostetter v. Fries, 17 F. 622; Ex parte Landreth, 31 Off. Gaz. 1441. The court will take judicial notice of the character and use of bronzing, and of the fact that it is commonly applied to iron and steel as a matter of utility, and produces a difference in the kind or quality of the article by giving a high degree of "finish" and protecting against rust: Brown v. Piper, 91 U.S. 37; Luke v. Calhoun Co., 52 Ala. 115; Reed v. Lawrence, 29 F. 915.

2. An element of commercial utility, or an element which enters into the structure of an article, cannot be a trade-mark at common law: Browne on Trade-marks, § 138; Delaware &amp H. Can. Co. v. Clark, 13 Wall. 311; Dausman etc. Tobacco Co. v. Ruffner, 15 Off. Gaz. 559; Lorillard v. Pride, 28 F. 434; Harrington v....