Shelley v. Sperry

GOODE, J. (after stating the facts). — The plaintiff has not protected his washing powder by a trademark which the defendant might infringe, and the relief sought is against unfair competition; a legal subject-matter regulated according to the principles on which trade-marks are protected. The theory of plaintiff’s case is that his commodity having become known to the public under the brands of Queen and Red Gross Washing Powder, and as sold in packages of a particular shape and size, acquired a popularity and value which the two supply companies and Sperry have appropriated to themselves by vending the Sperry powder in similar packages and bearing the same labels. The essence of the law of unfair trade is that the maker of or dealer in a given commodity shall not, by any deception, palm it off on the trade as the commodity of some other maker or dealer. If an article has acquired a reputation as meritorious, and is distinguished ' to the public by a certain brand or trade-name, or by the form of package in which it is vended, the vending of another article of like kind under an imitation of the label or package intended to deceive the public into believing it to be the meritorious article, will be restrained by a court of equity at the suit of the owner of or dealer in the latter article. [McLean v. Fleming, 96 U. S. 245-253, and cases cited.] In such cases, the reputation of the commodity is considered part of the good will of , the business of the proprietor or dealer which he is entitled to have protected. [McLean v. Fleming, 96 U. S. l. c. 252.] The point of difficulty in the present case has been to find any good will or other property right of the plaintiff on which the defendants have encroached. [439] So far as appears, plaintiff’s washing powder had never been sold by him in his own name nor nnder any distinctive brand or label which he had appropriated to it, bnt had been pnt on the market exclusively under trade-names belonging to the dealers for whom plaintiff manufactured the powder, namely, the two supply companies. Plaintiff had not designated his product either as Queen or Red Cross Washing Powder or by any other appellation. Neither had he advertised it on the cartons or elsewhere as of his make. That is to say, plaintiff did not own the good will of his powder, but whatever popularity it enjoyed was under the trade-names or trade-marks of the Supply Companies and constituted part of the good wills of those concerns. This state of affairs was brought about by plaintiff’s own conduct in agreeing that the powder might be advertised under the brands of those companies and as manufactured exclusively by them. He might be denied relief on that ground alone. [Manhattan Co. v. Wood, 108 U. S. 218; Allen v. Grosse, 25 Mo. App. 123.] But aside from this point, is Shelley wronged by what defendants are doing? Is any property right of his invaded? If Sperry’s powder was inferior to Shelley’s, which was not proved, an opportunity was open to the companies and Sperry to defraud the public. The Sperry powder could be packed in cartons like those in which plaintiff’s powder had been packed and bearing the same labels; thus inducing the customers of the companies to believe they were getting the identical powder they had previously gotten, whereas they would get another. The case would then be like that of a manufacturer of an article under a given brand, say a certain brand of cigars, who, after his goods have obtained popularity on account of their merit, makes and sells an inferior cigar under the same brand. In such instances the public are deceived and defrauded for a while and until the inferiority of the substituted article is generally known. But the question is, who may [440] interfere to prevent such conduct? Not any citizen surely, but only one who has some particular interest in the matter; that is, whose rights are violated; though the fraud on the public has great influence in favor of restraining the deception. It is true that Shelley is the maker of the powder originally sold in Queen and Red Cross cartons; but he is not known to be and the acts alleged against defendants will not prevent him from making and selling his powder in his own name. And if perchance he has sold it already in his own name and built up a good will for it, this will not be impaired by what Sperry and the companies are doing, because their conduct cannot impair the reputation of powder sold under plaintiff’s name but only of that sold under the Queen and Red Cross brands. The relief plaintiff asks amounts practically to preventing the two companies from buying washing powder to be sold in their cartons and under their labels, from any one but him; and this for the reason that they have built up a good will for the Queen and Red Cross brands of washing powder while using the powder he makes. We cannot interfere to that extent with the right of contract. Suppose the supply companies should put up-, under their labels, a-powder better than plaintiff’s and adapted to increase the good wills of the companies; could they be enjoined by plaintiff from doing so? Obviously not; for to do so would be to control their business at his instance when no right of his was being violated by them. This case goes beyond any other we have seen in the vital fact that plaintiff never appropriated a trade-mark or trade-name to his product, or in any way designated it as his, so as to become entitled to whatever popularity it might acquire. If he had, and the product had obtained good will under the distinctive mark- or name given it, he would be protected. But instead of following that method of business, plaintiff, by authorizing other parties to advertise the powder under their names and as [441] their products, enabled these parties to add thereby to the good wills of their businesses any popularity achieved by the powder. Dealers may use labels or trade-marks to distinguish the goods they handle, and the manufacturers who permit their products to be thus vended have no interest in the brands. [Levy v. Wait, 56 Fed. 1016.] That plaintiff did not originate and had never used the devices he seeks to enjoin the defendants from using, distinguishes his case from the one most relied on as entitling him to relief; namely [Shaver et al. v. Heller & Merz Co., 108 Fed. 821; s. c., 102 Fed. 882]. In that case the Heller & Merz Co., or its predecessor, had invented two kinds of bluing denominated the American Wash Blue and American Ball Blue. Those articles were manufactured by Heller & Merz Co. for the firm of Olmsted & Co. of Cedar Rapids, which firm, as well as other dealers, sold them to the trade; the customers of Olmsted & Co., supposing the firm were the manufacturers of the bluings. Subsequently Shaver and his associates bought out Olmsted & Co. and thereafter put up bluings of their own make instead of the original articles, under said brands. It was to restrain this conduct that the bill was filed by the Heller & Merz Co. and sustained by the court. In the opinion of the United States Circuit Court of Appeals, it was distinctly stated that the brands or trade-names were conceived and applied to their products by the original makers, the predecessors of the Heller & Merz Co., had been notoriously' used by said company for years to distinguish its goods, and that the good will of the commodities as well as the brands or trade-names were the property of the said company. In every other instance in which the trade-name or the right to use a package of a certain style, was protected, it appeared that the complainant had originated and used the name or mode of packing in order to distinguish his goods, and assist them in obtaining a good will. The brands under which the plaintiff’s powder had [442] been advertised and distributed to the trade were the general trade-names of two corporations, which did an extensive business, not - only in washing powder but in various other household articles, all of which were sold under the same brand. The powder was distinguished by these brands; not by the shape of the cartons which is, in the present case, an immaterial circumstance. Plaintiff had never acquired the good will of his powder because he had chosen to remain unknown to the trade as the maker and proprietor of it, and to keep himself in the background, in consideration of the profits derived from his contract with the supply companies authorizing the latter to advertise the powder as of their manufacture. We are of the opinion that no facts have been shown to justify the relief prayed. It is insisted that plaintiff was entitled to judgment against the Red Cross Company because it filed no answer; but as we have held Sperry is violating no' right of plaintiff’s in selling his powder to the two companies in the cartons described, the Red Cross Company cannot be enjoined from receiving his powder without depriving him of custom to which he is entitled. The judgment is affirmed. All concur.