Singer Mfg. Co. v. Briley, 14297.

• Decision Date: 04 November 1953
• Docket Number: No. 14297.,14297.
• Citation: 207 F.2d 519
• Parties: SINGER MFG. CO. et al. v. BRILEY et al.
• Court: U.S. Court of Appeals — Fifth Circuit

207 F.2d 519 (1953)

SINGER MFG. CO. et al. v. BRILEY et al.

No. 14297.

United States Court of Appeals Fifth Circuit.

November 4, 1953.

John F. Ryan, New York City, Thomas B. Branch, Jr., James A. Branch, Atlanta, Ga. (Reginald Hicks, New York City, of counsel), for appellants.

James V. Malcolm, Jr., E. L. Tiller, Atlanta, Ga., for appellees.

Before HUTCHESON, Chief Judge, and RUSSELL and RIVES, Circuit Judges.

HUTCHESON, Chief Judge.

Suing for trade mark infringement and unfair competition, appellants, complainants below, sought comprehensive and detailed injunctive relief therefrom. Appellees, defendants below, admitting some of plaintiffs' allegations and denying others, the cause proceeded to trial on the issues joined.

The evidence¹ all in, the district judge found the facts² and the law³ with complainants on their claims both of trade-mark infringement and unfair competition, and gave judgment specifically enjoining defendants as provided for in his conclusions. Defendants did not appeal, but complainants appealing from the judgment, are here insisting that it keeps the promise of the conclusions of law (note 3, supra) to the ear while it breaks it to the hope in this, that, whereas the district judge concluded that "The repaired, renovated, or rebuilt machines must be so plainly and truthfully labeled as to plainly and truthfully convey to the buying public the true character of the machine", the specific terms of the decree chosen and employed by the district judge "to prevent future violations of complainants' rights" are not effective to do so. So insisting, they urge upon us that the decree fails of doing, and requiring the doing of, equity in the respects set out below in note 4.⁴

We are not in any doubt that the appellants were and are entitled to the full and effective relief accorded to them in the conclusion of law that while "the defendants may repair, renovate, and rebuild Singer Sewing Machines and sell them to the public, in so doing the repaired, renovated or rebuilt machines must be so plainly and truthfully labeled as to plainly and truthfully convey to the buying public the true character of the machines".

We are not convinced, however, that for the present the provisions of the decree chosen and employed by the chancellor, in the exercise of his equitable judgment, to make this conclusion effective will not do so. But neither are we certain that they will for all time to come do so. We are, therefore, of the opinion that the decree appealed from should be amended to provide that the decree is kept open for orders at its foot and that complainants shall have the right to apply for modifications of or additions to it, as proposed by them, upon a showing that experience under the decree as entered confirms their view that as entered it does not effectively afford them the relief found and determined by the chancellor to be their right and due.

As so modified, the decree appealed from is affirmed with costs equally divided.

1 This consisted of a lengthy stipulation, many exhibits, physical and documentary, some deposition testimony, and a large amount of oral testimony taken before the judge in open court.

2 Findings of Fact: Complainant, Singer Manufacturing Company, for almost a hundred years has manufactured Singer Sewing Machines and Singer machine parts, and has marketed them under the name "Singer", and for the past twenty years, and longer, has exclusively manufactured sewing machines under the name "Singer". Complainant, Singer Manufacturing Company, through the years has advertised the name and trade-mark "Singer" and the sewing machines manufactured by the Singer Manufacturing Company have been distinctly marked by the name "Singer" and this has come to be, and is, in the mind of the public the name and mark identifying the sewing machines manufactured by complainant, Singer Sewing Machine Company. The defendants are sales agents for several manufacturers of sewing machines, and sell new sewing machines of other manufacturers, but have never had any connection with either of the complainants and have never sold new Singer Sewing Machines.

The defendants in connection with their business have sold used sewing machines of all makes, and have sold used Singer Sewing Machines.

Some of the used Singer Sewing Machines sold by defendants have been rebuilt, renovated, altered or repaired by the defendants in the following respects: Old treadle Singer Sewing Machines were purchased or received in trade for other machines, some of the Singer machines so received being under twenty years of age, many older. Mechanical parts were removed from the head of the machines and the parts so removed were replaced by substituting parts of non-Singer manufacture, the substituted parts being parts such as reverse stitch device which required the making of a hole in the machine head and permanently attaching the device to the inner parts of the machine; dial thread tension control; modern bobbin winder, disk wheels to replace spoke wheels; electric motor attached; the machine placed in a cabinet or portable case of non-Singer manufacture, and modernized in other respects.

The old treadle machines were changed into electrified sewing machines and made to closely resemble Singer machines of more recent manufacture. The machines were repainted and the decalcomania of Singer machines of more recent manufacture applied to the repainted heads.

The defendants advertised in the daily newspapers of Atlanta, Georgia, these changed Singer machines as being for sale, and in some of the advertisements referred to the machines as Singer Sewing machines, and in other advertisements as rebuilt Singer Sewing Machines.

This course of practice might well deceive the buying public in two respects: The public would believe that the machine was of much later manufacture and believe that the machine and its substituted parts to be the genuine product of the Singer Manufacturing Company.

This not only constitutes infringement upon the trade-mark of the complainant, Singer Manufacturing Company, but also constituted an unfair trade practice as respects both complainants.

3 Conclusions of Law: (1) This Court has jurisdiction of the parties and the subject matter of the...