Viavi Co. v. Vimedia Co.

• Decision Date: 03 September 1917
• Docket Number: 4800.
• Citation: 245 F. 289
• Parties: VIAVI CO. v. VIMEDIA CO. et al. [1]
• Court: U.S. Court of Appeals — Eighth Circuit

245 F. 289

VIAVI CO. v. VIMEDIA CO. et al.^[1]

No. 4800.

United States Court of Appeals, Eighth Circuit.

September 3, 1917

Stone Circuit Judge, dissenting.

Frank T. Brown, of Chicago, Ill., and Henry D. Ashley, of Kansas City, Mo. (Charles M. Nissen, of Kansas City, Mo., Arthur L Sprinkle, of Chicago, Ill., and Ashley & Gilbert, of Kansas City, Mo., on the brief), for appellees.

Before CARLAND and STONE, Circuit Judges, and MUNGER, District Judge.

MUNGERDistrict Judge.

This suit was brought to restrain unfair competition in business and to protect what was claimed to be a trade-mark and a trade-name.The appellant and its predecessors in interest for many years have been engaged in making and vending proprietary medicines to which it has applied the name 'Viavi.'It is claimed that the name was registered as a trade-mark in 1891.The medicines are put up in bottles, in cylindrical wooden boxes, and in tin boxes, and these are inclosed in cardboard cartons of ordinary forms.The general method of sale was the procurement of local representatives, who purchased the medicines, and who were given the right of sale in limited territory.These representatives solicited customers among those supposed to be ailing, to whom the medicines were supplied for use.The goods were not sold through the ordinary means of drug and chemical stores.The defendant Fuller, with an associate, became local representatives of appellant at Kansas City, Mo., in 1899, and continued under the name of the Missouri Viavi Company, until 1903, to procure and vend the goods of appellant.In the latter year the defendant Laederich joined Fuller and his associate, and they formed a new company, called the Missouri Viavi Company, to continue the same business in a larger territory.Mr. Fuller retained this connection until 1905, when he withdrew and caused the incorporation of a company known as the Vimedia Company.It obtained the registration of the word 'Vimedia' as a trade-mark in 1906.The Vimedia Company have also been engaged in the manufacture and sale of proprietary medicines of the same general type as those made by the Viavi Company.The word 'Vimedia' has been applied to these medicines.They were put up in containers of the same general style as those of the rival company and were sold by the same general plan of local representatives.

The Viavi Company made and sold medicines it called 'Viavi Capsules,''Viavi Suppositories,''Viavi Cerate,''Viavi Tablets,''Viavi Liquid,''Viavi Laxative,''Viavi Pencils,' and 'Viavi Royal.'The Vimedia Company has made and sold medicines it called 'Vimedia Capsules,''Vimedia Suppositories,''Vimedia Cerate,''Vimedia Tablets,''Vimedia Liquid,''Vimedia Laxative,''Vimedia Pencils,' and 'Vimedia Sovereign.'

In 1911 Laederich became a stockholder and officer in the defendant company and has been engaged in its service ever since.The suit asked the same relief against the persons made defendants as was asked against the Vimedia Company.A large amount of testimony was presented on the hearing of the issues, and the trial court entered a decree in favor of the defendants.Appellant has abandoned its claim of infringement of the trade-mark 'Viavi,' and it concedes that the word 'Vimedia,' standing alone, is not an infringement of the trade-name 'Viavi'; but it asserts that an injunction should have issued against the use of the word 'Vimedia,' in conjunction with the words already stated, as appellations of medicines.The words 'cerate,''capsules,''suppositories,''tablets,''liquid,''laxative,' and 'pencils' are not distinctive of appellant's medicines, nor subject to its exclusive appropriation as trade-names.They are properly descriptive of the goods, are well-known terms of trade, and were in similar use long before appellant began business; and hence the defendant company's use of the words cannot be said to be an imitation of appellant's peculiar terms.They are similar to such words as 'pills,''tonic,''lozenges,' etc.The word 'sovereign' is so distinct in form and suggestion to the word 'royal,' as applied to a medical preparation, that it cannot be called a deceptive imitation.

The remaining questions relate to practices that are said to constitute unfair competition.Both of the companies use books, charts, circulars, and printed forms that have general resemblances as to contents, such as anatomical plates, descriptions of diseases and symptoms, and advice to the sick.The material used is common in the domain of the proprietary medicine business, and, as no copyright is relied upon for special protection, the plaintiff has no monopoly of these forms of expression.Atlas Mfg. Co. v. Street & Smith,204 F. 398, 122 C.C.A. 568, 47 L.R.A. (N.S.) 1002;S. R. Feil Co. v. John E. Robbins. Co.,220 F. 650, 136 C.C.A. 258;John D. Park & Sons Co. v. Hartman,153 F. 24, 82 C.C.A. 158, 12 L.R.A. (N.S.) 135;Black v. Ehrich (C.C.)44 F. 793.

In building up the selling agencies of the Vimedia Company, some who had acted as selling agents for the Viavi Company and some who had purchased goods from it were solicited to become agents and customers of the Vimedia Company.Complaint is made that this constituted a raid upon appellant's business organization beyond the limits of fair competition.The evidence does not show any plan on the part of the defendant company to induce employes of the appellant to break contract relations with it.Inducements and persuasions were offered to those who had dealt with appellant to deal thereafter with the Vimedia Company; but it is legal business rivalry and competition for one to induce customers of one person to become patrons of another by honest persuasion, where no contract relations are threatened, else a new business establishment could rarely gain a foothold.West Virginia Transp. Co. v. Standard Oil Co.,50 W.Va. 611, 40 S.E. 591, 56 L.R.A. 804, 88 Am.St.Rep. 895;Farmers' Loan & Trust Co. v. City of Sioux Falls (C.C.)131 F. 890;Passaic Print Works v. Ely & Walker Dry Goods Co.,105 F. 163, 44 C.C.A. 426, 62 L.R.A. 673;Lough v. Outerbridge,143 N.Y. 271, 38 N.E. 292, 25 L.R.A. 674, 42 Am.St.Rep. 712;Johnson v. Hitchcock, 15 Johns.(N.Y.) 185.

In some instances the local sellers of the Vimedia preparations have represented to prospective purchasers that the articles were the same or as good as Viavi.Apart from the question of the responsibility of the defendant company for these representations lies the fact that appellant has no patent for these medicines.In the absence of such a monopoly as a patent confers, any persons may reproduce the articles, if they can, and may sell them under the representation that they believe th...