Winston & Newell Co. v. Piggly Wiggly Northwest

• Decision Date: 21 February 1946
• Docket Number: No. 34123.,34123.
• Citation: 221 Minn. 287,22 N.W.2d 11
• Parties: WINSTON & NEWELL CO. v. PIGGLY WIGGLY NORTHWEST, Inc.
• Court: Minnesota Supreme Court

22 N.W.2d 11

221 Minn. 287

WINSTON & NEWELL CO. v. PIGGLY WIGGLY NORTHWEST, Inc.

No. 34123.

Supreme Court of Minnesota.

February 21, 1946.

Appeal from District Court, St. Louis County; William J. Archer, Judge.

Action by Winston & Newell Company against the Piggly Wiggly Northwest, Inc., for unfair competition by defendant allegedly palming off defendant's coffee as the coffee of plaintiff by means of simulating plaintiff's bags. From a judgment for the plaintiff, the defendant appeals.

Reversed with directions.

Whipple & Atmore and John J. Fee, all of Duluth, for appellant.

Maurice M. Moore (of Paul, Paul & Moore), Leavitt R. Barker, William L. Prosser, and Dorsey, Colman, Barker, Scott & Barber, all of Minneapolis, for respondent.

PETERSON, Justice.

Plaintiff sues to enjoin defendant from using a coffee bag which it claims is a simulation of one long used by it. The complaint alleges that plaintiff is a wholesale grocer and that it roasts and packs coffee known as "Red Rooster" brand, which has acquired an enormously valuable reputation and good will, and that "the purchasing public has associated the style, dress, wording and coloring of plaintiff's coffee bags with plaintiff and as its product." Plaintiff was granted certificates of trade-mark registration by the state of Minnesota registering the words "Red Rooster" both for coffee and as used upon coffee; but the present action is not for infringement of the trademark, but for unfair competition. Its claim is that defendant by the use of its bag is guilty of unfair competition for the reason that thereby defendant misleads the public to buy its coffee as that of plaintiff.

Defendant is a chain-store operator of self-serve retail grocery stores. For about two and one-half years, it bought "Red Rooster" coffee from plaintiff at wholesale, which it resold at retail in its stores. In December 1943, it discontinued handling plaintiff's coffee. A few months thereafter, it commenced to handle a brand known as "Roaster Fresh" coffee, which was specially blended and roasted for it. It denies that the bag it uses is a simulation of plaintiff's bag. The parties made their bags a part of their respective pleadings. Both parties moved for judgment on the pleadings. Bags of each party were produced at the hearing on the motion below and on the argument here. Plaintiff's motion was granted, and defendant's was denied. Defendant appeals.

As was said of the bottles and cartons similarly before the court in Richmond Remedies Co. v. Dr. Miles Medical Co., 8 Cir., 16 F.2d 598, 603, the bags were "physical items, which characterize, qualify, and limit the allegations of the bill [here, the complaint]. They constitute the concrete embodiment of these allegations."

The bags contain one pound of coffee. They are the same in size and shape. The face and the back have a surface about 7½ by 33/8 inches.

Plaintiff's bag is made of a smooth, glazed paper. It is dark red in color. A little above the middle there is a circular disk about 3¾ inches in diameter in gold color having a metallic luster. In the disk in heavy black lettering are the words "Red Rooster Coffee" in three separate lines. The words "Red" and "Rooster" are in capital letters and in print, and the word "Coffee" is in script and curves upward to the right. In the upper left-hand part is a red dot, and at the lower right is a black rectangle containing the figure of a red rooster. Beneath the disk in small black print are the words "A flavor worth crowing about." Extending from the top to the bottom at the right side is a printed band, broken by the circle and rectangle, consisting of two black lines with a white one between them. In the lower left-hand corner of the bag in fine white print are the words "Roasted and Packed by Winston and Newell Company Minneapolis, Minn. One Pound Net Weight Trade Mark Registered." On each side of the bag is a gold band with the words "Red Rooster Coffee" in heavy black print. On one side is an admonition to send for a booklet containing coffee-making directions, and, on the other, one to tell the grocer what method the customer uses to make coffee and that he (the grocer) would then grind "this" coffee correctly.

Defendant's bag is made of paper having fine corrugations running lengthwise. It also is red in color, but not quite so dark as plaintiff's. In the same position as the disk on plaintiff's bag defendant has on its bag a circular disk in fawn color of the same size as that on plaintiff's, but defendant's disk has a notched or indented edge, whereas plaintiff's does not. In defendant's disk in three separate lines are the words "Roaster Fresh Coffee" in heavy black lettering. The words "Roaster" and "Coffee" are in capital letters and in print. The word "Fresh" is between them in script and curves upward to the right. Underneath the disk is a picture of a cup and saucer in white with fawn-color trim filling a space about 2 inches wide by 5/8 of an inch in height. At the top above the disk are the words "Piggly Wiggly" in large capital letters 7/16 of an inch high. An irregular white line emanating from the cup, broken by the disk and the words "Piggly Wiggly," extends to the top. There is no printed band on defendant's bag extending from the top to the bottom as there is on plaintiff's. Underneath the cup and saucer in five lines are the words "Specially Blended and Roasted for Piggly Wiggly Northwest, Inc. Duluth, Minnesota One Pound Net Trade Mark." On each side of the bag defendant has identical bands printed in fawn color in which there is printed in heavy black print the words "Roaster Fresh Coffee." Alongside the band are the words "Tell The Clerk What Method You Use To Make Coffee" and "We Will Then Grind This Coffee Correctly." The words "Piggly Wiggly" at the top of the bag can be plainly read at a distance of 20 feet. Those at the bottom to the effect that the coffee is specially blended and roasted for defendant can be plainly read at a distance of five or six feet.

The parties have pointed to what they claim are resemblances and distinctive differences. Plaintiff claims that defendant's bag is similar to its bag in at least 12 respects, and, in addition, that the colors, if not identical, are similar and so arranged and massed on defendant's bag that a purchaser relying on his memory without the aid of a visual or side-by-side comparison would be likely to believe that defendant's bag is in fact plaintiff's. Defendant points to a like number of differences and asserts, as we think correctly, that it has not copied the color of, or any of the words or symbols on, plaintiff's bag. In addition, it asserts that the words "Piggly Wiggly" at the top of its bag and the words at the bottom thereof, that the coffee is specially blended and roasted for defendant, are so prominent as to apprise intending purchasers that they are buying defendant's coffee, not plaintiff's. We do not deem it necessary, therefore, to follow the parties in their respective claims of resemblances and differences. For reasons to be presently stated, we think that defendant was not guilty of unfair competition for the reason that it had apprised intending purchasers that its bags contained its own brand of coffee.

It is important to consider that plaintiff seeks relief not for infringement of a trademark, but for unfair competition by defendant in palming off its coffee as that of plaintiff by means of simulating defendant's bags so as to mislead prospective purchasers into believing that they are getting plaintiff's coffee, when in fact they are getting defendant's. No one has a monopoly of the color, shape, or size of containers or the lettering on them. A. G. Morse Co. v. Walter M. Lowney Co., D.C., 256 F. 935 (red candy box with yellow design and lettering on it); American Tobacco Co. v. Globe Tobacco Co., C.C., 193 F. 1015 (red tobacco bag with gilt lettering). Nor may a person appropriate them to his exclusive use as a trademark. Hence, plaintiff has no protected rights in the red, gold, black, and white colors or the lettering on its bags, nor in their size or shape. These were public property, which defendant was free to use.

"A person may copy with exactness the unprotected products or articles of another without inflicting legal injury unless he attributes to that which he has made a false origin by claiming it to be the manufacture of another person, in the absence, at least, of such a similarity to some peculiar feature indicating origin as to mislead intending purchasers." (Italics supplied.) 52 Am.Jur., Trademarks, Tradenames, etc. § 114.

We may lay aside plaintiff's tradename in the words "Red Rooster," because these were not infringed by any words used by defendant and because this action is not for infringement, but for unfair competition. In determining whether plaintiff should be granted any relief on the ground of unfair competition, the court should avoid the paradox of holding that a party can have no monopoly in virtue of a trademark in the matters alluded to and at the same time in effect grant him such a monopoly by a decree under the guise of relief from unfair competition. Richmond Remedies Co. v. Dr. Miles Medical Co., 8 Cir., 16 F.2d 598; Trinidad Asphalt Mfg. Co. v. Standard Paint Co., 8 Cir., 163 F. 977, affirmed 220 U.S. 446, 31 S.Ct. 456, 55 L.Ed. 536.

The rules against unfair competition, so far as here involved, make it a wrong for a trader or manufacturer to sell his goods in such a manner as to mislead the buying public into purchasing them in the belief that they are the goods of another. The wrong is based upon the deceit of the seller. The gist of unfair competition is the deceit whereby one's patronage is diverted from him to the wrongdoer by the latter's palming off his goods as those of the former or, as it is sometimes said, by pirating or filching the other's trade. Houston v. Berde, 211 Minn. 528, 2 N.W.2d 9; Direct Service...