Gandy Belting Co. v. Victor-Balata & Textile Belting Co.

DICKINSON, District Judge. Specific findings of facts and conclusions of law, so far as are necessary to the ruling of the case now made, are filed herewith. It is not altogether easy to find a phrase which will accurately present the precise points involved in a decision of this case. The facts themselves may be soon stated, and are not in serious dispute. The general questions involved relate to charges of unfair competition and infringement of a proprietary trade-mark. The plaintiff and defendant each is a manufacturer of canvas belting as a substitute for leather. The methods of manufacture in use by all such makers are, generally speaking, the same. Cotton duck is folded in such manner as to make a strip of the required width and thickness. It is then stitched together longitudinally so as to make a band, whose ends may be fastened together to form a belt. The material is treated with oil, and then painted on the surface sides of the canvas strips. The practical result is that the edges also are colored with the paint. This treatment is functional; acting as a preservative [798] and also increasing the traction by imparting to the belt when in use what is termed increased “hug.” One or more makers paint their belts black. Individual makers paint their different make of belts yellow and blue, but the general practice is to paint them what is called “red.” The color is not a real red, but what may be termed a conventional red. It is red only in the sense in which dealers in leather distinguish it as red leather and black leather. No claim is made that this color is functional. Its use is accounted for by the statement that this “red” paint is as good as any, and is preferred for economical reasons. The real origin of its use and the original motive for its use is doubtless to be found in the fact that as the canvas belting was brought upon the market as a substitute for leather, its introduction was thought to be made easier by giving it something of the general appearance of leather. It is a further common practice among all makers to stencil upon the surface of the belting, at varying intervals of space, something to indicate the special make. The plaintiff used at first a representation of a coil of belting, laid across which was an elongated bale' of cotton. On the coiled edge side of this illustration was stenciled the words “Gandy’s Belting,” and on the surface side the word “Gandy’s” and on the cotton bale the words “American Cotton.” The belting was sold by the foot, and if it happened to be cut in short lengths between these markings, the piece of belt thus cut would contain nothing to show the make. About December 1, 1910, the plaintiff conceived the idea of indicating its make of belt by a distinctive marking, consisting of the giving of a green color to the continuous edge of the belting on one side, which would sharply contrast with the surface color of the belt. The belt would thus show the make, however short, the lengths into which the belting was cut. On January 6, 1911, application was made to the Patent Office to have this designation registered as a trade-mark. Following this, arrangments were made and carried out to have all the belting then in stock in its own plant and in the hands of its agents bear this distinctive marking. By September, 1911, this had been accomplished. The plaintiff then began a vigorous campaign of advertising to associate in the minds of buyers this marking with the plaintiff’s make of belts. It circularized the trade by means of pamphlets which emphasized this color scheme by showing coils of belting, the surface of which appeared as a bright red in striking contrast with the green edge. This was the banner carried by plaintiff’s army of “rooters,” who were also given as their battle cry the “slogan” of “Took for the Green Edge,” with marked and special emphasis on the “green.” The wits in the trade contributed to the success which attended this campaign by personifying this “slogan” and attaching it to the plaintiff’s salesmen. They were spoken of as “green-edge men,” and play upon the words was made in various other forms. « [1] As in the making of this belting in the usual way, the belting is painted, and as this painting involves the edge and colors it, no claim of a property right or trade-mark in a colored edge could successfully be set up for any one maker. In order to present the claims of the plaintiff in their clearest light let us ignore this fact, and assume that the plaintiff could have acquired this right. It might then [799] have made its claim to broadly cover simply a colored edge or an edge colored differently from tlie surface of the belt, or it might have limited its claim to an edge carrying a special color confined to one edge or embracing both edges. It chose to accentuate and emphasize its marking by limiting it to one edge and one color. There is something of an ambiguity in what it did do in one respect. It applied for a trade-mark to consist “of a green line or stripe applied to one edge of the belt.” The accompanying drawing, consistently with this description, shows a border or stripe of color on tlie face of the belting. The coloring of merely the edge, which was in fact all the plaintiff did, scarcely fulfills this description. It is true the application incorporates the statement that “the trade-mark is applied or affixed to the goods preferably by painting the edge of the belting,” but strictly this would be referable to the mode of bringing the trade-mark into visual existence not to an altered description of what it consisted. Waiving the question of the validity of this trade-mark, and conceding it to give a proprietary right to a green color applied to one edge of the belting, the plaintiff complains of the defendant, not in that it has put one green edge on its belting, but in that it has colored both edges “a brilliant black.” This brings the plaintiff up against this dilemma. It must either admit that making the two edges black is not an infringement of a one green-edge trade-mark, or it must claim this trade-mark to cover any colored, or at least black-colored, edges, thus giving it the same protection under its limited trade-mark it would have had under one in its broadest form. A claim that the coloring of both edges of a belt black is an infringement of a trademark which consists of “a green line or stripe,” or, as the drawing shows, a hand or border of green, cannot be sustained unless there is such a resemblance as to be deceptive in fact. A claim of monopoly of right, either at common law or under the trade-mark statutes, in the privilege or practice of making the edges of the belting of any col- or is certainly too broad. [2] This, therefore, leaves in the plaintiff’s bill only the complaint that the defendant has colored the edges of its belting black so as to facilitate the imposition of its make of belt upon intending purchasers as tlie make of the plaintiff. This is the complaint the plaintiff really does make, and resolves the case so far as it depends upon its facts to a case of unfair competition. Generally speaking, the acts which come within the ban of the law under this head consist of things done which are to result in the palming off of the goods of one person for the goods of another. An illustration to express this thought has been suggested which is something like this: One man sets up a wireless apparatus to serve as a receiving station. This he does by manufacturing or securing a certain kind or make of goods for which he expects, or at least hopes, to be able to create a demand. He then sets up other wireless apparatus constituting as many sending stations as possible for the use of his customers, and provides them with a code of calling signals. This he does by advertising and educating intending purchasers among the buying public in every way possible to prefer and ask for his product. After he has done all this and the messages begin to fly thick aiid fast, another sets up a receiving station [800] attuned to receive the messages intended for the first man and intercepts the messages. This the law condemns as unfair competition and. prohibits it. Has the defendant been thus guilty ? Against it is the fact that it is the only competitor in the trade of whom the plaintiff complains. On the other hand, this make of belting had been so marked in Germany, and is the only make which is treated with a solution before painting it. This treatment is functional. An incidental consequence or result is that the solution by capillary attraction is drawn into the material and the edges are stained a dirty black color. To improve the appearance of the belting and to distinguish the defendant’s make both edges are painted a “brilliant black.” Is this done for the purpose and does it have the effect of bringing about any confusion in the two products of manufacture, or aid in diverting to the defendant any trade which of right belongs to the plaintiff ? This we cannot find. The effort of the plaintiff to show that the alleged functional use of the discoloring solution was a pretense by showing that the edge was wholly colored after the paint had been applied to the face of the belting, and not before, as averred by the defendant, failed. Moreover, there is no confusing; resemblance. A short piece of the belting shows something of a resemblance, but it is to be kept in mind that the belting is inspected and usually sold in rolls of some size, and this brings out in bold relief the green edge feature of the plaintiff’s make of belting. It is only in certain lights that the difference would not be marked and striking. Moreover, unless all the plaintiff’s efforts have gone for nought, its customers look for and are guided in their purchases by the green edge. We cannot find, therefore, either a purpose to deceive or a misleading similarity of appearance in fact. The strongest appeal on behalf of the plaintiff for relief lies in the fact that white or red edges would make the difference between the defendant’s and the plaintiff’s goods more marked and the right of the defendant to freedom from interference on the part of the court much more clear. To restrain the defendant from the use of the black edges, however, involves a finding of its guilt, and could not but operate as a disturbing-factor in its dealing with its customers. We cannot lose sight of the probability that the awarding of an injunction would be used (of which indeed there is already evidence) as a weapon of advertising warfare against the defendant which would work an injury to it. As we are constrained to find against the plaintiff the fact of unfair competition and infringement of its trade-mark, the question of the validity of such trade-mark and plaintiff’s proprietary right in the use of the green edge need not be inquired into. ' The bill of the plaintiff is therefore dismissed, with costs to the defendant. Counsel may submit a, form of decree in accordance with this opinion for approval.