Rochelle Asparagus Co. v. Princeville Canning Co., Civ. A. No. P-2101.

• Decision Date: 06 March 1959
• Docket Number: Civ. A. No. P-2101.
• Citation: 170 F. Supp. 809
• Parties: ROCHELLE ASPARAGUS COMPANY, Plaintiff, v. PRINCEVILLE CANNING COMPANY, Defendant.
• Court: U.S. District Court — Southern District of Illinois

170 F. Supp. 809

ROCHELLE ASPARAGUS COMPANY, Plaintiff, v. PRINCEVILLE CANNING COMPANY, Defendant.

Civ. A. No. P-2101.

United States District Court S. D. Illinois, N. D.

March 6, 1959.

John Gibson Semmes, Washington, D. C., Edwin J. Sommer, Jr., Peoria, Ill., Gerald Fearer, Oregon, Ill., Miller, Thomas, Hickey & Collins, Rockford, Ill., for plaintiff.

Hill, Sherman, Meroni, Gross & Simpson, Chicago, Ill., John R. Schnebly, Miller, Westervelt & Johnson, Peoria, Ill., for defendant.

MERCER, Chief Judge.

This is an action under 28 U.S.C. § 1338(a) for injunctive relief and damages against and for alleged copyright infringement, unfair trade practices and unfair competition.

In summary, the complaint alleges that plaintiff, Rochelle, an Illinois corporation, has developed and owns a copyrighted label, entitled "Rochelle Brand Green Asparagus Spears", which it uses in the marketing of canned whole-spear asparagus. (Copyright Certificate No. KK-10812.) The complaint further alleges that defendant, Princeville Canning Company, commencing with the spring canning season of 1957, infringed plaintiff's said copyright by publishing and placing upon the market cans of asparagus bearing a label entitled "Royal Prince Asparagus Spears", which said label was copied largely from plaintiff's copyright and thereby infringing plaintiff's copyright and engaging in unfair trade practices and competition to plaintiff's injury. The complaint prays, inter alia, that defendant be enjoined from further use of its allegedly infringing label and that plaintiff be awarded damages sustained as a consequence of defendant's use thereof.

In its answer filed March 24, 1958, defendant, inter alia, admitted that it had packed and marketed long spear asparagus bearing its "Royal Prince" label as alleged in the complaint, but denied that its said label was copied in any manner from plaintiff's copyrighted label, that its label had in any manner infringed any of plaintiff's copyright rights and that it had engaged, or is engaging, in any unfair trade practices or unfair competition against plaintiff. Affirmatively, by answer, defendant avers that its label was independently created by it without reference to any label of plaintiff. That said label had been created for defendant by the use of a photograph made by Louis Roesch Co., of San Francisco, of an arrangement of asparagus spears of the type packed in defendant's cans upon which the label is used. It averred further that it is an old and common practice to label food products with a photolithographic, or other process, representation of the contents of the container to which the label is applied and that such was defendant's procedure in the design and preparation of the label of which complaint is made here; and that, in all instances, defendant's label has been clearly marked to show the source of origin of the product offered for sale, to-wit: "Princeville Canning Company, Princeville, Illinois".

The cause was tried, commencing on January 12, 1959. The only issues for decision are (1) whether defendant's label infringes upon plaintiff's copyrighted label, and (2) whether defendant's label is so deceptively similar to plaintiff's label as to constitute unfair trade practices and unfair competition.

A descriptive comparison of plaintiff's label with defendant's label, though not determinative of either the copyright question or the unfair competition question, will serve as a departure point for the statement of certain basic legal principles which apply to decision of those questions.

When the flat labels, disengaged from a can, are considered, it is seen that an impression of similarity is immediately created. The similarity, however, grows out of two over-all features of the two labels, namely, their size and their "allover background" or "all-around vignette" of essentially whole asparagus spears. There the similarity ends. Both labels are brightly colored but differ greatly in the choice of colors used. The top and bottom borders of plaintiff's label are solid black, while the comparable border of defendant's label is wine colored, or reddish-purple. Coloration of the all-over asparagus background differs also. Light green predominates on defendant's label background with shading of light and darker brown. The asparagus forming the background of plaintiff's label is marked by a predominantly blue-green color, with extensive shading of the head of each spear in reddish-brown hues.

In other respects the labels are dissimilar. Plaintiff's label includes one prominent over-all feature for which defendant's label has no corresponding counterpart whatsoever, namely, a simulated white ribbon disposed from left to center and from right to center across the asparagus-spear background, and there joined by a simulated white roseate. The tradename, identification of the product, weight, processing information and identity of plaintiff as the packer are printed upon the simulated ribbon and roseate of plaintiff's libel in dark blue and red lettering, so disposed that printed matter extends to essentially every part of the simulated ribbon and roseate. In the lower left corner of the flat label, printed upon the asparagus spears in black, appears plaintiff's copyright notice.

On defendant's label, the tradename, identity of product and processing information are printed in white, light green and yellow lettering upon the background of a wine colored, or reddish purple, triangular plaque positioned approximately one inch above the bottom and one inch from the left margin of the asparagus background. The weight of the contents of the can is printed in red lettering and centered below the plaque. The identity of the packer is printed in red lettering directly upon the asparagus background, beginning approximately one inch to the right of the reddish-purple plaque. The right one-third, approximately, of defendant's label is devoid of any lettering or feature other than the asparagus background and the top border thereof.

When viewed as placed upon a can, no matter how the can bearing plaintiff's label be turned, a part of the simulated ribbon, and/or roseate, and a part of plaintiff's tradename or other identifying writing is always visible. On the other hand, the can bearing defendant's label might be so disposed that defendant's tradename and all descriptive information would be obscured.

With the exception of the tradenames "Rochelle" and "Royal Prince" upon plaintiff's and defendant's labels, respectively, and the copyright notice on plaintiff's label, every printed legend upon each label is descriptive of either the character or content of the product, or of the origin thereof.

It is readily apparent that plaintiff can assert infringement of its copyright only in the use by defendant of the single feature of the "all-over-background" or "all-around-vignette" of asparagus spears. Plaintiff cannot assert an exclusive right to pack and sell asparagus spears, or to display upon its sales containers pictorial...