Rock Spring Distilling Co v. Gaines Co

• Citation: 38 S.Ct. 327,246 U.S. 312,62 L.Ed. 738
• Decision Date: 18 March 1918
• Docket Number: No. 58,58
• Parties: ROCK SPRING DISTILLING CO. et al. v. W. A. GAINES & CO
• Court: U.S. Supreme Court

246 U.S. 312

38 S.Ct. 327

62 L.Ed. 738

ROCK SPRING DISTILLING CO. et al.

v W. A. GAINES & CO.

No. 58.

Argued Jan. 31 and Feb. 1, 1918.

Decided March 18, 1918.)

This is a bill in equity brought by the Gaines Company against the Rock Spring Company to restrain the latter from using the trade-mark of the former. The trademark is registered and is employed by the Gaines Company to designate a brand of straight rye or straight bourbon whisky manufactured by that company.

The following are the facts of the bill stated narratively:

The Gaines Company is the owner of a whisky distillery in Woodford county, Kentucky, known and named as the Old Crow Distillery. It is the only one in the state that is or ever has been designated by the name of 'Crow' or 'Old Crow.'

Its product has been at all of the times mentioned in the bill straight rye and straight bourbon whisky and to it there has at all times been applied the trade-mark consisting of the words 'Old Crow' by being imprinted or branded on the wooden box containing the whisky and imprinted upon labels affixed to bottles containing the whisky. The trademark is now and for many years past has been used by the company and its predecessors in commerce among the states.

On February 26, 1909, it filed in the Patent Office, in pursuance of the Act of February 20, 1905 (33 Stat. 724 [Comp. St. 1916, § 9485 et seq.]), in due form and under the conditions required, an application for registration of the trade-mark and a certificate of registration for the same was duly issued and for many years past has been used by the company as a trade-mark for its straight rye and straight bourbon whisky.

The Gaines Company, availing itself of certain acts of Congress, began and has ever since maintained the bottling of the 'Old Crow' in bond and it was then and has ever since remained the only 'Old Crow' whisky bottled in bond and has an extensive sale throughout the United States and in foreign countries; and when so bottled in bond it is known as and called 'Old Crow Bottled in Bond,' is so marked, and commands a hish price.

The Rock Spring Company is a corporation, has a distillery in the county of Daviess, Kentucky, and is the owner of a distillery situated therein known as Distillery No. 18, operated by Silas Rosenfield, one of the defendants.

The Rock Spring Company, in fraud of the Gaines Company's rights and in infringement of its trade-mark, made or caused to be made and sold or caused to be sold in Kentucky a certain spurious straight bourbon whisky, not the product of the Gaines Company, and branded the same with the words 'Celebrated Old Crow Whisky Bottled in Bond,' have caused the same to be bottled in bond, have applied to the labels thereon the words 'Old Crow' in script type, and have caused the same to be sold and transported in interstate commerce, and this with the intent to mislead and deceive the public, and are doing so and will continue to do so unless restrained.

An injunction is prayed and an accounting.

Demurrers were filed by the Rock Spring Company and Rosenfield, which were overruled, and they then answered, pleading a prior adjudication based upon the following alleged facts: A suit was brought in the United States Circuit Court for the Eastern Division of the Eastern District of Missouri by W. A. Gaines & Company against Abraham M. Hellman and Moritz Hellman charging infringement of the trade-mark and unfair competition. The bill was subsequently amended making Max Kahn, administrator with will annexed of the estate of Abraham M. Hellman, deceased, a party to the suit. Upon the issues framed a decree was entered in favor of the complainants, an injunction granted and an accounting ordered.

The decree was reversed by the United States Circuit Court of Appeals for the Eighth Circuit with directions to dismiss the bill on the ground that the evidence clearly showed that the predecessors in business of the appellants therein had adopted the words 'Old Crow' as a trade-mark for whisky as early as the year 1863 and the evidence failed to show that the predecessors of the Gaines Company had used the words as a trade-mark prior to the year 1870.

A petition for certiorari to review the decision was denied by the Supreme Court of the United States.

Other proceedings were had in the suit pending its appeal and afterward. The suit, however, was finally dismissed on the merits because of the decision of the Court of Appeals and the action of the Supreme Court of the United States.

Defendants are in privity with the parties recovering under those decisions and decrees and are manufacturing whisky under contracts of agency from them or their successors and neither have nor claim any right except through such contract.

The Hellman Distilling Company filed a petition to be permitted to intervene, which was denied. (C. C.) 179 Fed. 544.

After hearing, a decree was entered sustaining the plea of former adjudication based on the decree of the District Court for the Eastern District of Missouri and accordingly and for that reason the bill of complaint, so far as it sought relief for any infringement of the trade-mark 'Old Crow' in connection with its use on whisky was dismissed. And it was further decreed that the registration of the trade-mark July 20, 1909, could not and did not invalidate or nullify the estoppel.

The decree was reversed by the Circuit Court of Appeals and thereupon this certiorari was applied for and allowed.

Messrs. Luther Ely Smith, of St. Louis, Mo., and William T. Ellis, of Owensboro, Ky., for petitioners.

Messrs. Edmund F. Trabue, of Louisville, Ky., James L. Hopkins, of St. Louis, Mo., and Daniel W. Lindsey, of Frankfort, Ky., for respondent.

Mr. Justice McKENNA, after stating the case as above, delivered the opinion of the Court.

The decree of the District Court for the Eastern District of Missouri, directed by the decision of the United States Circuit Court of Appeals for the Eighth Circuit is pleaded in bar, and whether it is such depends upon the issues that were made or passed upon in those courts.

The bill of complaint in the case alleged that in 1835 one James Crow (he is the James Crow of this suit) invented and formulated a novel process for the production of whisky which he did not patent or seek to patent but kept for his own use until his death in 1855.

During all of the time after 1835 the whisky so produced was known and styled as 'Old Crow' whisky and the designation was adopted and used as a trade-mark.

After the death of Crow one William F. Mitchell, to whom Crow had communicated his secret process, continued the distillation so designated and in 1867 a partnership, styled Gaines, Berry & Co., obtained possession of the distillery wherein the whisky distilled by the indicated process continued to be produced by the same process until the partnership was succeeded by W. A. Gaines & Co., and the latter company succeeded also to all of the partnership assets of the other and continued to produce the whisky until the incorporation of the complainant, when all these assets were acquired by it.

When the name 'Old Crow' was applied by Crow it was a valid trade-mark and since its adoption it has always been applied to the whisky produced by the indicated secret process, and since that time has indicated to the public whisky distilled on Glenn's creek, in Woodford county, Kentucky, and nowhere else.

Complainant caused the same to be registered in the Patent Office under the provisions of the act of Congress so providing. The value of the trade-mark is $500,000 and an integral part of the good will of complainant's business and the whisky is of greater value than any other of...