Rushmore v. Manhattan Screw & Stamping Works

• Decision Date: 27 July 1908
• Docket Number: 264.
• Citation: 163 F. 939
• Parties: RUSHMORE v. MANHATTAN SCREW & STAMPING WORKS.
• Court: U.S. Court of Appeals — Second Circuit

163 F. 939

RUSHMORE v. MANHATTAN SCREW & STAMPING WORKS.

No. 264.

United States Court of Appeals, Second Circuit.

July 27, 1908

Hans v Briesen (Arthur v. Briesen, of counsel), for appellant.

Alfred Wilkinson, for appellee.

Before COXE and NOYES, Circuit Judges, and ADAMS, District Judge.

COXE Circuit Judge (after stating the facts as above).

In December, 1905, the complainant adopted a design for the shell of an automobile lamp and in the following January exhibited it at the exhibition of automobiles at Madison Square Garden, New York. This is the complainant's lamp in controversy. Its exterior is pleasing to the eye and it is unquestionably a high grade lamp, but there is nothing strikingly novel or ornamental about it. In general contour it resembles the search light which has for years been in use upon excursion boats and vessels of war, the principal difference being in the addition, by the complainant, of the so-called 'Flare Front.' The glass front of the lamp being larger in diameter than the body of the lamp except as it flares out near the front to meet and inclose the glass. No patent has been granted to Rushmore either for a combination, for a new article of manufacture or for a design for the shell of the lamp. It is possible that had application been made a design patent might have been granted and sustained. In West Disinfecting Co. v. Frank, 149 F. 423, 79 C.C.A. 359, this court recently held valid a design patent for a somewhat similar structure.

The defendant is manufacturing a lamp which, though differing in several details of construction, unquestionably resembles in external appearance the Rushmore lamp. If a valid design patent had been issued to the complainant we have no doubt that the defendant's lamp would infringe and, believing as we do that the points of difference are unimportant, we will consider the question involved upon the theory that the shells of the two lamps are substantially identical.

The defendant has adopted 'Phoebus' as its trade-mark and its lamp is known to the trade as the Phoebus lamp. All of its lamps have conspicuously displayed on the top thereof a name plate with a black background inscribed 'Phoebus the lamp of Quality, Model 601, Manhattan Screw & Stamping Works, N.Y.' The officers of the defendant deny that they, or any one connected with the defendant, have ever in any way represented their lamps as those of the complainant. There are allegations in the bill, made upon information and belief, that the defendant has palmed off its lamps upon innocent purchasers as the Rushmore lamps, but there is nothing in the affidavits worthy of the name of evidence to establish these allegations. The affidavits, in our judgment also fail to establish an exclusive right to the use of the name 'Flare Front.' The complainant says in his affidavit, 'I am aware that what might be called 'flaring fronts' have been used on other forms of lamps entirely different in appearance from my Exhibit A lamp, for instance the old carriage lamps, but I am positive that I am the first who has ever used these flare fronts on any lamp similar in appearance to my Exhibit A.' Assuming the correctness of this statement we do not think the fact that complainant was the first to put a flaring front on a shell of his design entitles him to a monopoly of these words. We regard them as descriptive merely and are of the opinion that an injunction should not issue at least until proof, more cogent than anything which now appears in the record, is presented, showing that they have acquired a secondary meaning. So far then as the prayer for an injunction is based upon the use of the name 'Flare Front' and the allegation that the defendant has actually deceived purchasers by representing that its lamps were made by the complainant, the most that can be said is that the questions are involved in doubt. This court has uniformly held that an injunction should not issue in a doubtful case. Hall Signal Co. v. Railway Signal Co., 153 F. 907, 82 C.C.A. 653; Cleveland Foundry Co. v. Silver, 134 F. 591, 68 C.C.A. 87; Hildreth v. Norton, decided Feb. 11, 1908 (C.C.A.) 159 F. 428.

As we read the opinion of the judge of the circuit court he finds no actual fraud and no evidence that the defendant is now using the word 'Flare Front.' He says: 'Assuming that at...