Charles E. Hires Co. v. Consumers' Co.

JKNKINS, Circuit Judge (after stating the facts as above). The court below’ seems to have placed its refusal to extend its injunction to include the bottle used by the defendant upon the notion that one lias the right under all circumstances to use any form of bottle he may desire. It is true that no one has a monopoly of form, nor has he a monopoly of color, of the shape of letters, of geographical names, or of his own name. An action like the present proceeds upon no such ground, hut upon the principle that one may not, by means lawful in themselves when devoted to a lawful end, perpetrate a fraud upon the public, or infringe the rights of another. The doctrine is not novel in this court. We have held that one may not use his own name to 812 work a wrong (Meyer v. Medicine Co., 18 U. S. App. 372, 7 C. C. A. 558, 58 Fed. 884; Pillsbury v. Mills Co., 24 U. S. App. 395, 12 C. C. A. 432, 64 Fed. 841), or a geographical name for like purpose (Mills Co. v. Eagle, 58 U. S. App. 490, 30 C. C. A. 386, 86 Fed. 608, 41 L. E. A. 162). One may not use the color that another has selected as a distinguishing mark of his goods, or use the same arrangement of letters and of marks, when such use is with the design to market his goods as the goods of another, and so to work a fraud. The principle is settled doctrine in this court, and need not be enlarged upon. Here the defendant used a bottle for the different beverages manufactured by him which was distinctive, and wholly unlike the form of bottle used by the complainant in marketing its root beer. The defendant, as to root beer, but not as to its other beverages, substituted for the bottle used one identical with the form of bottle used by the complainant. It is said that this was done so that a bottle might contain two full glasses of the beverage. This excuse is pretentious, merely. The bottle could have been enlarged without change of form. It was said at the bar that this act was a mistake on the part of the defendant. This is a charitable view of the act, but is in fact erroneous. It was not a mistake. The act was deliberate and designed. Its purpose, clearly, was to adopt the form of package previously adopted by the complainant. Otherwise, the defendant, for the purpose declared by it, would have employed like form of bottle for its other beverages, with respect to which the complainant was not a competitor in trade, or would have enlarged the capacity of the bottle without changing its form. The court below found — and its ruling in that regard is not here complained of — that the defendant changed the earmarks upon its packages of root beer so as to approximate in marked similarity the label of the complainant. All this evidences design. And that such was the case finds some support in the fact that the defendant, also manufacturing ginger ale, advertised to dealers “Consumers’ Special or Belfast Formula as Desired Crown Cork,” “Sound Bottom Belfast Style and Belfast Formula.” If this signifies anything, it means that the defendant would furnish ginger ale in the inconveniently shaped bottle used by the Belfast manufacturers for their ginger ale, which has a high reputation, and is known to the 'public by the ungainly shaped bottle which contains it. It is clear that here was deliberate imitation of the complainant’s form of package, and, as the court below found, deliberate imitation of the complainant’s trade-mark and label upon it. The obvious purpose and the manifest result of this piracy were to enable retail dealers to palm off upon the public the goods of the defendant as the goods of the complainant. That wrong could not be prevented by the partial restraint imposed by the court below. It was proven that the complainant’s root beer was principally known to and recognized by consumers from the peculiar form of bottle. It was this distinguishing feature which caught the eye, and abided prominently in the memory. Indeed, the court below declared in its opinion that the changes made by the defendant in its label tended to deceive “when taken in connection with the shape of the bottle,” thus clearly recognizing the fact that the form of the bottle employed was an effective factor in the 813 deception practiced. Any restraint, therefore, that did not include the form of bottle, would be ineffective to stay the wrong. The court belotv, upon holding that the changed label of the defendant infringed the complainant’s right, caused to be submitted for its approval another form of label, which it approved, and authorized the defendant to use upon bottles of the same form as those used by the complainant. We greatly doubt the propriety of such action. When an infringement has been found, it should be restrained. A court of equity does not sit as an arbiter to determine in advance upon other and changed labels which the infringer may adopt to avoid the condemnation of the court. Whether such- changed forms do in fact infringe is matter of fact to be determined by the court in its usual course of procedure upon complaint lodged by the party damnified. The duty of the court below was to determine whether the labels complained of in the bill infringed the complainant’s right. That duty was fully performed when the court had so determined. It is not called upon to decide whether a new label proposed for adoption would infringe. This is especially so here, where the infringement was deliberate and designed. In such case the court ought not to say how near the infringer may lawfully approximate the label of the complainant, but should cast the burden upon the guilty party of deciding for himself how near he may with safety drive to the edge of the precipice, and whether it be not better for him to keep as far from it as possible. It was urged that a preliminary injunction is largely discretionary, and that that discretion should not be controlled by us. The act creating this court provides for appeals from such orders or decrees for the very purpose of reviewing that discretion and correcting error in its exercise. It is true that the restraint interposed was temporary, — not determining the ultimate rights of the parties, but merely regulating their conduct until final hearing. It is also true that a preliminary injunction ought not to issue unless the right be clear, and the infringement be proven. We have spoken to this subject with no uncertain sound. Standard Elevator Co. v. Crane Elevator Co., 9 U. S. App. 556, 6 C. C. A. 100, 56 Fed. 718; American Cereal Co. v. Eli Pettijohn Cereal Co., 48 U. S. App. 188, 22 C. C. A. 236 76 Fed. 372. Our ruling in the case at bar is well within the principle of those decisions; for here 'the right is clear, the infringement proven, and but thinly disguised. It will be impossible to give compensation in damages; for, from the very nature of the case, it will be wholly impracticable to ascertain the extent to which the piracy upon the complainant’s right has been or may be carried, or to what extent the product of the defendant has been or may be. palmed off upon the public as the product of the complainant. Complete relief can only be afforded by restraint of the infringement. Besides, the court below found nothing in the circumstances or situation of the parties to stay its hand. It issued its writ of injunction according to their rights as it determined them. It fell short in its judgment of the extent of those rights. The writ was clearly intended by the court to go to the full extent of the infringement, and was not controlled by other considerations. The defendant is not deprived of the 814 right to market its root beer, but, at its peril, must see to it that its product is not dressed in the clothes of another. We may aptly conclude with the happy suggestion of Judge Lacombe in Grocery Co. v. Sloan (C. C.) 68 Fed. 539, 540, that, “in the period of rest and quiet which will be secured by a temporary injunction, possibly defendants may renew their strength sufficiently to be able to get further away from” — the complainant’s form of bottle — “the next time they try to strictly differentiate their owm goods.” The order or decree is. reversed, and the cause remanded, with directions to the circuit court to issue its writ of injunction pursuant to the prayer, and in the terms of the bill.