William Warner Co v. Eli Lilly Co

• Citation: 265 U.S. 526,44 S.Ct. 615,68 L.Ed. 1161
• Decision Date: 09 June 1924
• Docket Number: No. 32,32
• Parties: WILLIAM R. WARNER & CO. v. ELI LILLY & CO
• Court: United States Supreme Court

265 U.S. 526

44 S.Ct. 615

68 L.Ed. 1161

WILLIAM R. WARNER & CO.

v ELI LILLY & CO.

No. 32.

Argued April 28 and 29, 1924.

Decided June 9, 1924.

Messrs. Geo. W. Wickersham, of New York City, Francis Rawle, of Philadelphia, Pa., and Roger S. Baldwin, of New York City, for petitioner.

Mr. E. W. Bradford, of Washington, D. C., for respondent.

Mr. Justice SUTHERLAND delivered the opinion of the Court.

Respondent is a corporation engaged in the menufacture and sale of pharmaceutical and chemical products. In 1899 it began and has ever since continued to make and sell a liquid preparation of quinine, in combination with other substances, including yerbasanta and chocolate, under the name of Coco-Quinine.

Petitioner also is a pharmaceutical and chemical manufacturer. The Pfeiffer Chemical Company, Searle & Hereth Company, and petitioner are under the same ownership and control. The first named company in 1906 began the manufacture of a liquid preparation which is substantially the same as respondent's preparation and which was put upon the market under the name of Quin-Coco. Two years later the Searle & Hereth Company engaged in the manufacture of the preparation, which ever since has been sold and distributed by petitioner.

This suit was brought in the federal District Court for the Eastern District of Pennsylvania by respondent to enjoin petitioner from continuing to manufacture and sell the preparation if flavored or colored with chocolate, and also from using the name Quin-Coco, on the ground that it was an infringement of the name Coco-Quinine, to the use of which respondent had acquired an exclusive right. The District Court decided against respondent upon both grounds. 268 Fed. 156. On appeal the Court of Appeals ruled with the District Court upon the issue of infringement, but reversed the decree upon that of unfair competition. 275 Fed. 752.

The entire record is here and both questions are open for consideration.

First. We agree with the courts below that the charge of infringement was not sustained. The name 'Coco-Quinine' is descriptive of the ingredients which enter into the preparation. The same is equally true of the name 'Quin-Coco.' A name which is merely descriptive of the ingredients, qualities or characteristics of an article of trade cannot be appropriated as a trade-mark and the exclusive use of it afforded legal protection. The use of a similar name by another to truthfully describe his own product does not constitute a legal or moral wrong, even if its effect be to cause the public to mistake the origin or ownership of the product. Canal Co. v. Clark, 13 Wall. 311, 323, 327, 20 L. Ed. 581; Standard Paint Co. v. Trinidad Asphalt Co., 220 U. S. 446, 453, 31 Sup. Ct. 456, 55 L. Ed. 536; Howe Scale Co. v. Wyck-off, Seamans & Benedict, 198 U. S. 118, 140, 25 Sup. Ct. 609, 49 L. Ed. 972.

Second. The issue of unfair competition, on which the courts below differed, presents a question of more difficulty. The testimony is voluminous, more than 200 witnesses having been examined; but, since the question with which we are now dealing is primarily one of fact, we have found it necessary to examine and consider it. Nothing is to be gained by reviewing the evidence at length, and we shall do no more than summarize the facts upon which we have reached our conclusions.

The use of chocolate as an ingredient has a three-fold effect: It imparts to the preparation a distinctive color and a distinctive flavor, and to some extent, operates as a medium to suspend the quinine and prevent its precipitation. It has no therapeutic value; but it supplies the mixture with a quality of palatability for which there is no equally satisfactory substitute. Respondent, by laboratory experiments, first developed the idea of the addition of chocolate to the preparation for the purpose of giving it a characteristic color and an agreeable flavor. There was at the time no liquid preparation of quinine on the market containing chocolate, though there is evidence that it was sometimes so made up by druggists when called for. There is some evidence that petitioner endeavored by experiments to produce a preparation of the exact color and taste of that produced by respondent, and there is evidence in contradiction. We do not, however, regard it as important to determine upon which side lies the greater weight. Petitioner, in fact, did produce a preparation by the use of chocolate so exactly like that of respondent that they were incapable of being distinguished by ordinary sight or taste. By various trade methods an extensive and valuable market for the sale of respondent's preparation already had been established when the preparation of petitioner was put on the market. It is apparent, from a consideration of the testimony, that the efforts of petitioner to create a market for Quin-Coco were directed not so much to showing the merits of that preparation as they were to demonstrating its practical identity with Coco-Quinine, and, since it was sold at a lower price, inducing the purchasing druggist, in his own interest, to substitute, as far as he could, the former for the latter. In other words, petitioner sought to avail itself of the favorable repute which had been established for respondent's preparation in order to sell its own. Petitioner's salesmen appeared more anxious to convice the druggists with whom they were dealing that Quin-Coco was a good substitute for Coco-Quinine, and was cheaper, than they were to independently demonstrate its merits. The evidence establishes by a fair preponderance that some of petitioner's salesmen suggested that, without danger of detection,...