u.
DDEBAL RBlPORTEB,
vol; 43.
SomTB :ANONYME DE' LA . DIS'l'ILLERIE DE ". LA LIQUEUR BENEDi:cr.iomE nJi '. ((L'ABBAYE DE FECAMP'tI. WESTERN DISTILLING CO. .' (C4lI'eu1.t Courl,E. D. 'Ml'8ourl, E. D. September 8,1890.)' TIUDE·Muxs""""FALSE, REPRESENTATIONS-INJUNCTION.
, . 'the tba.t .tbemanufacturer of a cordial made to a, recipe obtained from the, Benedictine monks, attaches to the bottles lllbeis and '.;: 'advertisements bearing Latin and French phrases, which translated are, "Genuine Liquor oftlle Bep.edic,yine M(jnks of the Abbey of .Fecanw, "does preclude relief against one who manufactures and puts upon the market a cord.ial .; In such tortn aJld gulse.aato clearly indicate that it is the identioal article sold 1:lY .· I),ot repres6ntationstbat the. monks .. arelltill 'engaged in its manufacture at Fecamp, but tbat itongmated wlth them ",esPfldaU.jrwhllre one of the. ,ad.v:ertiimllDts shows that the ool'dial1s manufactured , by ooI!1Plainant, a . ,
InE:quity. On pill for inj,upction. , Bulkley HubbeUand Frederick N. .Tud801l., for complainflnt. & Schnurmacher, ,for defendant. THAYER,J.This case, upon the evidence, presents the following state facts:' The. complainant is a "French corporation, located· at Fe.. camp,Normandy, in France, and is engaged in the manufacture and sale is a large deof it cordial or liquor called "Benedictine," for which lllsnd:in:the United States, ias'well as in France and in many other foreigll<conritries. The liquor1is:madeof a decoction of,herbs that' grow on the, heights of Normandy and the best cognac, according to 8 secret recipe,· formerly belonging to the order of Benedictine monks, who founded and for several centuries maintained an abbey at Fecamp. Complainant'sdistillery for the manufacture of the cordial iSllocated on lands formerly belonging to the Benedictine monks, too the abbey in question. After the dissolution of the orders alid the sequestration of theirpropel'ty by the first republic fof France,thebook -containingthe recipe for Benedictine, as well as many other recipes., by gift 0( one:of the monks of the abbey Of Fecarnp,· passed into the pOssession of thei maternal grandfhtherof A. La Grand, ,St.;the present directeur general of the complainant company'. , Some time prior to'theiyear 1863 the book, by inheritance, became the property of Mr. Le Grand himself, ancil. in that year he began the manufacture of the liquor or cordial at Fecamp, according to the formula of the monks. The formula has been kept secret in his family, and is known only to Mr. La Grand and his two sons, who are subdirectors of the complainant. Since the year 1866 the liquor has been sold under the name of "Benedictine," and is widely known by that name, and has been put on the market in peculiar shaped bottles, provided with labels, seals, wrappers, ete., ofa distinctive character; the labels, seals, etc., so in use have also been filed and registered in the proper offices as a trade-mark, both in France and in this country. Mr. Le Grand appears to have conducted the business of manufacturing and selling Benedictine at Fecamp until 1876, when a corpora-
SOCIETE ANONYME, ETC., fl. WESTERN :l>lBTILLING
co.
417
tion (the present complainant) was duly organized under the laws of France to continue the manufacture at the same place. To the company so organized Le. Grand assigned the formula for concocting Benedictine, all trade-marks, labels, real estate, and property of every kind used in conllectionwith'the manufacture, receiving in exchange therefor the capital stock of the company, and becoming its director general, which position he still holds. The business in question has in the mean time large porportions, and has become, very' lucrative; the annual profits ranging from 350,000 to 500,000 francs. Shortly before the filing of the bill in this case, the Western Distilling Company began the manufacture and sale of a cordial called "Benedictine," at the city of St. Louis, Mo. For the obvious purpose of promoting the sale of the article, the distilling company caused it to be put up and placed on the market in bottles with labels. seals, and wrappers, all made in exact imitation of those in use by the complainant for putting up Benedictine by it manufactured. Even a lac Bimile of the signature of A. Le Grand, aine, and the initials of his name A. L. under the words"Le Diredteur," bqth of which appear on labels used by the complainant, were appropriated by the distilling company, for use on the same labels on its own bottles. It is unneceSi;;6ty, however, to go into further details. It is sufficient to say that the cordial manufactured by the defendant, and by it termed "Benedictine," was placed on the market in such guise that it could riot be distinguished by careful inspection from the cordial prepared by the complainant, and that it was also put up in such form as to indioate clearly that it was manufactured at Fecamp, France, and not in this country. Under the circumstances, but one conclusion is admissible; and that is that the defendant intended, by putting up its cordia:! iinthe manner described, to deceive the public, and to deprive the complainant ora portion of its patronagaby. representing its own goods to have been manufactured by the oomplainant. In the light of these facts it' iSllot very material whether' complainant has an excLusive property in the word "Benedictine," as applied to its cordial, or has or has not a teohnical trade-mark, entitling it to protection under treaty stipulations, as in any event the law will not permit a person to disguise goods of his OWn production as those ohome other manufacturer, for the purpose of purloining the latter's custom and deceiving the public, although hamay make use of UQ words or symbols except suoh as, standing by themselves, and in an ordinary relation, are common property. McLean v. Fleming, 96 U. S. 254; Avery v. Meikle, 81 Ky. 73; Oroft v. Day, 7 Beav.84; Nwman v. Alvord, 51 N. Y. 192; Wother8poon v. Currie,L. R. 5 H. L. 512; Sawyer v. Horn, 4 Hughes, (U. S.) 239; Oarson v. Ury, 39 Fed. Rep. 779. Yet, this is precisely what the'distilling company seems to have done, and still threatens to do. It could have had no possible motive for repreSenting its goods to be of foreign manufacture,and for adopting the same dress, down to the minutest detail, that complainant's goods' have long worn,unless it was to profit by the reputation of complainant's goods, and enable it to make a sucoessful inroad upon complainant's trade. v.43F.no.6-27
418
{":}
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According to the view which ,the court takes of the CRa.e, the only; question· deserving of serious "consideration, is whether the complain,from obtaining equitable relief by certain represenant tationawhich it makes to the public ,concerning the manufacture of its own liquor;: It is claimed by the defendant that theaocieteby its labels" seals, adveJ.ltisements. ,etc., represents that,the Benedictin,e by it sold is manufactured by Ben'edictine monks; and, if this contention is sustained by the,evidence, it must be conoeded that complainant is without right toequitablei;relief.. Medicine Go.v. Wood, 108 U. S. 220,2 Sup. Ct. Abbott, 61 Md. 286. The contention is based on Rep. 436l s.woerrt the fact that the: Latin, words "Liq1Jhr MonachorumBenedictinorum Abba,tire Piscanen8'ii"appear on a label pasted· around the neck of aU of the 80ciete'S bottles;tbatan:a.rlvertisement in FrenchisalsQ wrapped up with each: bottle,iwitb thefollow.iug'h,eading: "Veritable Benedictine Itiqueur. des Moine8:&medictinadeL'AbbayeDe li'ecamp;" and that the wax seal on the cork of each ,'bottle has impressed thereon the figure of a monk, and that one of the laoels on the ,body of ilia. bottle, bears, the cabalistic letters: "D. O. M." no weight to the euggestionof counsel that the :pictures of complainantls manufactory, distributed by it by way of advertisement, represent them!mufacture to be carried on:inanabbey,,:for the reason no one liable to become a purchaser ,of Benedictine would. be apt to such as the cnt'represents,as mistake a modern distillery or the abode oCa religious order. .1 think it manifest that the language above qUQ.ted Jrom the label and the advertisenient falls short of a representrition that. it is the ,order <if Benedictine monks who are nowen-, gaged at Fecamp in the manufacture and sale of Benedictine, even if the which counsel contend, literal translation ofthe and even if the court disregards the idiomaticnieaning of the particle ".des," which those familiar with. the French language assert should be given to it,when used as in ,the:abov&-nientianedadvertisement.1f the phrase fOIUlld, in; the adv:ertisement bit readasiollows:' "Genuine Benedictine Liquorofthe Benedictine Monks ofthe Abbey of Fecamp,I.' imply. fbat"theliquor was made by , or thatib tha.tdoes belongs to the Benedictine m01?:ks of the abbey of Fecamp, because one of the approvtd-Iand ordinary uses of the preposition "of" is to indicate. o!'igin,anJsdmeiimes'to fudicate,.use, as well as to signify pOSHeasion Qr .ownership. '·Hence, without giving to the words,a persorU'eading label and advertisement in; question might understand . tbe tcfbe. that the article l'e(erredto' is a liquor of the very $l1me kin,d that .was.originally con1poundedl.:bi the Benedie-tine monks Jof abbey of Fecamp, or. tba t it ,WliS lha genuine article $t'somedime or: other used by the monki:r oLtbaLabbey I anddistiri;; for :such :use.:Evidentlyi'the:phrase, "Liquor of the Benedictine Monks i" etOt, is :one! thatll!la)rrbe: interpreted in,several'ways without doo ing;.vio1ence,t;Q:!tlne .ordinary;.uscfm,Janguage;: and lam'of, the opinion: ihatpetYple:of Otxlinliry intelligence iwouldgenerally'i'egard, it lisa.repr&sentation ;that the liquor in question: is compounded Recording to.a· for;". mula invented or heretofore used by the monks of Fecamp,
SOCIETE ANONYME, E'rC.,V.WESTERN"bblTILLING Co.
419
iatherthao'as aireptesenh'tion that the monks of that abbey arestilJ;eninthemanufaeture,and that the article is of their production. This opinion isreinforeedby other representations made by complainant's labels and !tdvertisements. One of the advertisements clearly shows that Benedictine is manufactured at Fecamp, France, by the complainant, and that it is a French corporation with a capital of 2,500,000 francs,S:nd has commercial agencies in various countries. One of the labels' invariably placed on complainant's bottles; as heretofore tioned, has a fac <tim'iie of the signature of" A;Le Grand, aine;" another bears the initials of his fllimeunder the words "LeDirecteur;" 'und a third substance; tlhatt!very bottle of genuille Benedictine put label on the ntni'ket bears III jac<timileofthe signature of "A. Le Grand, aine, lJirecteu1' Ge'lleral." The words" Directeil1' General" certainly do not sugorder, 'but rather thetrianager of a trading 'gest the head ora or manufacturing establishment. In view of these facts it seems evident . that no person of average intelligence, who, with care, consults complainant's labels, advertisements, etc., with a view of ascertaining who is the manufacturer of Benedictine, would be liable to conclude that it was manufactured by a society of monksjand blly. the article on the strength of such belief. ., In su pport of the same defense now under consideration it is further suggested. that Benedictine is not made, according to a recipe of the monks, li:,qrp herbs grown on the fallows of Normandy, and that the rep;; reselitatiori to that effect In complainant's advertisements is false. ,It is no doubt true that the Benedictine put upon the market by defendant is not made according to such recipe, or of such herbs, although its circulars contain ,a representation substantially to that etJect. But there is the representation as applied to the foreign article actually manufactured at Fecamp; on the contrary 1 there is in the record the statement of A. Le Grand, Sr., supported by strong corroborative facts, that the representation is in every respect true; and the court would not be warranted in rejecting his testimony merely because Le Grand refused, on his cross-examination, to publish the formula. FinaIly,it'is urged jhat complainant is guilty of such misrepresentation as precludes equitable relief, because the fact is not disclosed by its labels or wrappers that the business conducted by A. Le Grand, Sr."up to 1876 has since then been conducted by a corporation,-the present complainant., This contention appears to the court to be without merit,. for the following reasons: . One of the advertisements of Benedictine, circulated bytbe complainant, does show, as before noted, that the liquor is manufactured at Fecamp, by a business corporation,-'-the "Societe Anonyme 'de la Diatillerie," etc. And with respect to the labels and wrappers'on the bottles, in use' 'prior to 1876 and since, it may be said that they never did represent Mr.Le Grand, Sr., to 'be the sole party in interest in the manUfacture of Benedictme. The SUbstantial representation conveye& by the labels on this point has always been that LeGrand wasdirecteur or directelir general Qf some concern (whethe.r partnershlpot
420
43.
corpol'ationis not that',lI1aaengaged at Fecampin the manufacture of Benedictine. Furthermore, the change that topk place in business in 1876 was of such character that no ill Benedictine would probably regard it as. of any importance. Mr·. LQ Grand retained the ownerspip -of the bulk of the stock of the company, and became its executive·head or manager. Theliquor was thereafter produced uI.ldljr the supervision of the Jormer and mainly for his profit, at the same place, at the saroe{listillery, anq. according to the same formula. I. fail to discovllrin the last contention.of defendant's counsel any valid ground for refusing equitable relief. 'l'herefore my conclusion upon the whole case: is that defendant should be restrained Dlaking use of complainant's labels,wrappers, circulars, etc., in the manner heretofore done, and that it shoqld be compelled to account for whll.tever profits it has realized from. such unlawful use. It will be so ordered· ./'
. ENOCH MOBGAN'S
SoNs Co.
tl.
WENDOVER
et al.
(Circuit Oourt, :D;New 'JW1'sey. September 23,1890.) TJUJ>E-MAJUt+lNFRINGEMENTo
Complainant had a trade-mark in the word "Sapo1!o, "used to designate a ticularktnd of soap. When persolls called at defendant's store and asked for ,.their salesman, would" .explanation,·. pass out a soap called "Pride (If the Kitchen," on which these. words were plainly marked, and receive the'customllry price. Tne wrapperS' ueed on the two soaps were entirely different, anlUh!! and shape of the cake!! atlJ() (llfrered. lleuHhat, though there was no oJ the woro"SapoliQ" on the soap, and 110 resemblance in the the transaction amounted to all Infringement ofplaintiff'atrade-markt and waula be enjoip.e.d. , , . , ' :
.
..
. ..'
·. On bill Oox, for complainant· fordefendan,ts.
qREEN,J"; . 'i'his is a.,suitin; to restraip the unlawful use of or symbol, "SapoJ-iC).l'The bill, that the corow plainantiatheassignee'Qf t4eorigi1,1ators of the word "Sapolio," a wonl used to dellignate a sCOliripg soap, which has for many years been wiq.ely ltnowp. and recognized by the public as the trade-mark, or t,rade-name of the. cOJUpiainlj.ut; that the complainant has a right to the exclusive use of this word-symbol in every lawful way; and that such exclusive Use has been upheld by the courts, ap.dadmitted by all. The defepdants are charged with selling publicly a scouring or sand soap, under, as, and for Sapolio,:whic/J. isnQt; SapoIio, and is not the manufacture of the complainj;Luts. The Pr9veq. are that, on three or four occasions, certain agents of the: went to the store of the defendants, .. J.,fll!,q.,AtlkeQ. forSapolio. The sale/;!man of the 8<l\t: .. to. tAe a cake' pi $Oap