86 FEDERAL REPORTER. })ILLSBURY-WASHBURN FLOUR MILLS CO., Limited, et al. v. EAGLE. (Circuit Court of Appeals, Seventh Circuit. No. 462. 1. TRADE·)IARK-FRAUDULENT COMPE'fITION-EQUITY JURISDICTION.
Where one person has so dressed out his goods as to deceive the public Into the belief that they are the goods of another person, and so put them upon the market to the manifest injury of that person and of the public, an action at law will lie for the deceit; and, to save a multiplicity of suits, and pl'event Irreparable injury, equity will restrain such unfair and fraudulent competition.
2.
SAME-GEOGRAPHICAl, NAMES.
While a geographieal name Is not the subject of a trade-mark, and anyone may use It, yet where it has been adopted, first, as merely indicating the place of manufacture, and afterwards has become a well-known sign and synonym for superior excellence, persons residing at other places will not be permitted to use It as a brand or .label for similar goods for the purpose of appropriating the good will aM business of another. Where the question is simply one of unfair .competition, It is not essential that there should be any exclusive or proprietary right In the words or labels used, as, irrespective of any question of trade-marks, rival manufacturers have no right, by Imitative devices, to beguile the pUblic into buying their wares under the impression they are buying those of their rivals. RIGHT.
8.
4.
SAME-JOINDER OF PARTIES.
Where one person or corporation is entitled to relief in a case of fraudulent competition In trade, two or more persons or corporations having a common Interest in preventing the fraud may unite to maintain an action in equity. FLOUR MANUFACTURERS,
5.
Certain millers In Minneapolis, Minn., and their predecessors in business have for 30 years made flour by the roller patent process, and used as brands the words "Minneapolis," "Minneapolis, Minn.," "Minneapolis, Minnesota," "Minnesota," "Minnesota Patent." The words "Minnesota" or "Minnesota Patent" mean that the flour Is made under the roller patent process somewhere In Minnesota. The words "Minneapolis," "Minneapolis, Minn.," "Minneapolis, Minnesota," signify to the trade that the flour was made at a Minneapolis· flOUring mill. A dealer in' Chicago, Ill., obtains from mills at Milwaukee, Wis., an Inferior grade of flour, which he labels "Best Minnesota Patent, Minneapolis, Minn.," and advertises as made at Minneapolis, Minn., with the result that the public Is deceived Into buying this flour under the belief that it Is made at Minneapolis, and Is defraUded, and the business of the Minneapolis millers is damaged. Held, that a court of eqUity may grant relief by prohibiting the fraud Rnd preventing damage to the business of the Minneapolis millers. 82 Fed. 816, reversed. SAME.
The fact that one of the mIlls belonging to one of the Minneapolis mIllers is situated 10 miles from the city Is'not important when it is shown that such mill is an integral part of a Minneapolis milling plant, has the same machinery, is run in the same ,manner, grinds the same grade of wheat, and has always been considered as one of the Minneapolis mills. Such objection, if important, should be taken by plea in abatement for the misjoinder of parties, and furnishes no good ground for not granting relief as to otber complainants. ,
'1.
SAME.
Appeal frointhe Circuit Court of the United States for the Northern District of Illinois. Frank F. Reed, for appellants. Edward O. Brown, for appellee.
PILLSBURY-WASHBURN FLOUR MILLS CO. V. EAGLE.
609
Before WOODS and JENKINS, Circuit Judges, and BUNN, District Judge. BUNN, District Judge. This suit is brought by the complainants, who, for many years, have been engaged in the manufacture of flour on a large scale at the city of Minneapolis, Minn., against the defendants, who are engaged as wholesale and retail grocers in the sale of flour at Chicago, Ill., to enjoin the defendants from using as a part of their brand placed upon their barrels and sacks containing flour the words "Minnesota Patent," or "Minneapolis, Minnesota," or "Minneapolis, Minn." The allegations of the complain ants' bill, which are fully sustained by the evidence, are substantially these: The complainants are corporations, all, except one, ovganized under the laws of Minnesota. The Pillsbury-Washburn Flour Mills Company, Limited, is a corporation organized under the laws of Great Britain. These seven corporations separately own and operate, and have for many years, flouring mills situated in Minneapolis, numbering in all at the present time some 22 or 23 mills. The first mill was built in 1859, when the city had a population of less than 6,000 inhabitants. Since then the growth of the milling interest has kept pace with that of the city, so that, while the population of the city in 1896 was about 200,000, the product of the mills was 60,000 barrels per day, or some 13,000,000 barrels per year. The Pillsbury-Washburn Company alone own and operate five mills, with a daily capacity of 25,000 barrels ground, packed, and put up ready for shipment, and with an annual output of about 4,000,000 barrels of flour. These mills all use in their manufacture only the highest grade of hard spring wheat grown in Minnesota and the Dakotas, and for the purpose of storing and handling the wheat own and operate many hundreds of elevators in Minneapolis and other parts of Minnesota and the Dakotas. They early adopted and employed the process of high grinding, and subsequently the roller grinding or Hungarian patent process, which is especially adapted to hard wheat. By this roller patent process, which is· a development and extension of the high grinding process with improved machinery, the wheat is subjected to the operation of successive graduated rollers whereby the external portion, the wheat kernels are disintegrated, removed, and successively carried away, so as to leave the interior or core of the wheat containing the nutritive gluten for disintegration separately and last, the process being to first remove by the action of the rollers the outside hull of the wheat, and then the starchy portions, thus preserving as nearly as possible the gluten for separate grinding. in this way obtaining a wheat flour which is from 40 to 50 per cent. of gluten and the balance starch, and which is known as "Patent" or "Patent Process" flour, and is highly nutritious, and makes a fine white quality of bread,. the flour commanding the highest price in the market. That the different operators and owners have used upon the sacks and barrels containing the flour manufactured at their respective mills various trade-marks and brands of two distinct kinds known as "mill brands" and "customers' brands," the latter being subdivided 86 F.-i39
610
.,'1,,: .\'" 86 FlDDJIlBlAL' REPOltTllRi', 'F-r,'
,
Vrt':
into fpreig.n and dowestic.::· Mill,brandsconJsiatof:names, 'ni:arks, and symbols peculiarly arranged, indicating by assertion or tion the mill, establishment, or combination of mills producing the lloU:l:,contained. in the receptacle exhibitingan'd employ-big such brands. CustomerS' brainds, consist of names, marks, and symbols arranged,and,putofi. the flour receptacles, indicating sometimes by statement and implication and sometimes by associaor retail merchant, selecting and tion, the flour jobber, standing sponsor for the flour in the exhibiting sack or barrel, and frequently simply the place of manufacture, as being "Minneapolis, Minn." ,Nothing resulting,':from use, exploitation, association, or otherwise was, as a rule, used to identify the flour. sold. under these customers' brands as the product of any particular mill or mills; but the place, of manufacture of, the' flour was usually indicated. The flour jobber or wholesale or ,retailmercbant who exploits, introduces, llind owns the bJJand j may, with perfect propriety, and frequently does, secure the flom'for his plirticularbrandfrom different mills operated by different persons. As a matter of fact, however, almostall the brands of flour,:both mill and customers', used and employed at any time upon flour made at any of complainants' mills, have contained land distinctly and prominently exhibited thereon the words·"Minneapolis," "Minneapolis, Minn.," or 'U\finneapolis, Minnesota." Many ,of said brands 'have, also' contained the, words "Minnesota" or "Minnesota in addition and a few brands have omitted the word to the word employed the words "Minnesota" or "Minnesota Patent' I instead: The use of these last-named words, "l\finnesota" or '\Minnesota Patent;" means, and is understood by the trade, und consumers to mean, that the flour: in the receptacle exhibiting themJs made onder the' patent process as above described somewhere in the state ofloMihnesota. The words "Minneapolis," "Minneapolis, Minn.," or "'Minneapolis, Minnesota,':' in flour brands signify universally to jobbers, Wholesale, and retail merchants, flour traders, lU'W>dealers, buyers and consumers that the flour in the receptacIeJ.mprinted therewith was made at a Minneapolis flouring mill, and, ,because of the location, methods, and reputation of Minneapolis, that, the flour is "Minnesota' Patent" flour made at "Minneapolis; Minnesota." 'That thelocation of the said city of Minneapolis upon the Mississippi·dver is highly advantageous anddesirable forflouil'!lUilliug. The states of Minnesota and North and South D.akota produce the highest ,grades and best qua.lities of hard spring willeat iI;l,enormous quantities. and the immens'e acreage therein devoted tothis product is strong assurance that there will at all times be an ample wheat crop for supplying the Minneapolis mills, while the capital invested and population interested and employed in this hard :splling wheat growing industry, and the adaptation of soil and climate to the production of such wheat, insure competition, and the progressive development of the industry, increase in production, and improv:ement in quality. Minneapolis is situate at'the extreme southeast of this hard wheat region, and is a natural outlet of the wheat growll, therein for shipment, either as grain or, flour, tllrough-
611
out the United States, and especially to the manufacturing populations in the Central and Eastern states, where the consumption of hard spring wheat flour is extensive, and to the seaport cities fol' export. Principally because of the grain and flour trade, Minneapo· lis has become both a terminal point for many important railroads which concentrate there from points throughout the hard wheat growing district, and the initial point of many trunk lines terminating at points along the Great Lakes and in the Central, Southern, and Eastern states and seaports. The locality and the fine water power induced the establishment of mills at Minneapolis early in the development of the country northwest thereof, and from 1859 until the present the growth of the flour industry there has been constant and rapid. This industry has always been the leading one of Minneapolis, and through it the place has in 37 years increased in population fro,m less than 6,000 to about 200,000 inhabitants. Over 5,000 men find, work in, and about the flour mills and business, and as many more in connection with buying, selling, storing, and handling grain. Minneapolis has long been styled throughout the United States and also abroad the "Flour City." From the inception of the flour-milling business there in 1859, there has been among and between all the mills located there the keenest competition as to quality and quantity of ,flour made and sold, and early in the history of the milling industry at Minneapolis there was adopted the custom between millers of frequently examining and comparing the methods and machinery employed in the various mills, and of frequently examining and comparing the flour produced. All wheat used at the Minneapolis mills has for years been systematically inspected ,and graded by competent and disinterested persons appointed for that purpose by the state of Minnesota. The machinery in the mills is made almost entirely by two establishments. This comparison of mill products by the mill owners and operators has been made daily for over 12 years. Each day each mill submits to an expert two pounds of its high·grade flour, who examines, tests, and bakes it, and reports the result These methods, and the close proximity of the mills, produce the greatest uniformity and identity in the flour made at the mills. Practically these mills have always been run on the same systems and methods, and with exactly similar machinery and appliances, employing the same grades of hard spring. wheat grown in the same territory, and subjecting it to the same kind of inspection, and, as the necessary consequence, the flour ground at all the mills has been practically of the same classes, kinds, qualities, and reputations. As a result of this method and the continued and extended use of the words "Minne· apolis," "Minneapolis, Minn.," and "Minneapolis, Minnesota," in and the brands, both mill and customers', and in advertisements, circulars, and announcements relating to the flour and brands, there has grown up, and for a long time has existed, and now exists, throughout the United States and in many foreign countries, a great reputation and demand for flour made in Minneapolis, Mi1\n,., and the flour made the mills of complainants is known generally as flour, and also especially as "Min-
612
86
FEDERAL REPORTER;,
neapolis Flour," and is classified and listed upon markets, and is in both the trade among flour dealers, wholesale and retail, and wholesale-:Rnd retail grocers, and by purchasers and consumers, asked for, identified, ,bought, and sold by the style of "Minneapolis Flour" as a particular and superior kind or grade of "Minnesota" or "Minnesota Patent" flour, and thus the words "Minneapolis," "Minneapolis, Minn.," or "Minneapolis, Minnesota," upon or in connection with flour, signify to and are understood by traders, purchasers, consumers, and the public generally to mean that the said flour was made and put up at some one of complainants' mills, and have acquired and do possess this secondary meaning and significance in the trade. The complainants and their predecessors in business in the operation of said mills have sold and do sell in ChIcago large quantities of flour bearing said trade-marks and names, and there known and dealt in both at wholesale and retail as "Minnesota Patent" flour and "Mimleapolis" flour, and by the latter term identified as coming froin some one of complainants' mills. The use of the words "Minnesota," "Minnesota" Patent," "Minneapolis," "Minneapolis, Minn.," and "Minneapolis, Minnesota" upon, in, and in connection with such flour brands, both mill and customers', employed in connection with flour made at complainants' mills, has caused such brands of flour to become known upon the market, and to be listed, tabulated; and classified as that variety of Minnesota patent flour manufactured' at Minneapolis; that iS,flour coming from the complainants' mills is styled in common with all other flour made in the state of Minnesota under the roller process, "Minnesota" and "Minnesota Patent" flour, and also more exclusively "Minneapolis" flour. The term "Minneapolis" alone upol).flour thus means and is understood by the public to mean "Minnesota Patent" flour manufactured and put up at some one of cqmplainants' mills at Minneapolis, in that state. That the defendants are doing a retail alid wholesale grocery business at Nos. 68 and 70 Wabash avenue, Chicago, and as apart of such business deal in andsell rftour at wholesale and retail. That pri?r to 1893 defendants adopted as a trademark for fibur put up and'packed for and sold by them the brand "H. R. Eagle'& Co.'s Best Minnesota Patent, Minneapolis, Minn." That the words "Minnesota Patent, Minneapolis',' Minn." were added because of the reputation of that city and state for superior flour, and that the method employed at the outset was to procure flour at the mills of complail).ants to belacked in sacks or barrels, and stenciled or m.arked with such bran, and then shipped and delivered to defendants at Chicago. That such flour was genuine Minneapolis flour, and properly and truthfully labeled "Minnesota Patent,l\finneapolis, Minn." That a high and uniforin grade of flour was furnished and 'put up under said brand and sold 'by the defendants, and thereby and by reaSon of the reputation of Minnesota patent flour maMat Minneapolis,Minn., soon acquired a reputation and dem.and upon the market. . Thereupon, about 1893, defendants, in order to takeand the advantage of the representation that the flour was Minnesota 'flour' made' at Minneapolis,
PILLSBURY-WASHaURN FLOUR :MILLS CO. V. EAGI.E.
613
Minn., and at the same time to procure inferior flour at a less price, and palm and foist off the same upon the public and purchasers and consumers as genuine "Minnesota patent" flour made at Minneapolis, Minn., ceased to obtain the flour sold under said name and brand at mills in Minneapolis, Minn., and have since procured all, or the greater portion, of the flour put up and sold under said brand and name from various flour mills at Milwaukee, Wis.; first from the mills known as the "Phamix Mill," and then since, and at the present time, from the mills in Milwaukee, Wis., operated by J. B. A. Kern & Sons, and known as the "Eagle Mills." This flour is made from wheat of a different grade, and in an entirely different locality, by flour mills conducted and operated in methods variant fi'om the mills in Minneapolis, and often contains a large percentage of winter wheat, and is in quality, reputation, and value inferior to the genuine "Minnesota Patent, Minneapolis, Minn." flour, and is worth and commands a less price upon the market when truthfully and honestly sold as Milwaukee flour. Nevertheless, the said defendants have made no alteration in the style of their brand used upon Milwaukee flour, but have the same paclred at the Eagle Mills in Milwaukee, Wis., and there branded "H. R. Eagle & Co.'s Best Minnesota Patent, Minneapolis, Minn.," and so shipped and delivered to defendants at Chicago, Ill. Such spurious and falsely branded flour is then, with full knowledge on their part of the fraud, advertised and sold by said defendants as and for genuine "Minnesota Patent, Minneapolis, Minn." flour in sacks and barrels containing and conspicuously exhibiting the words "Minnesota Patent, apolis, Minn.," and with the positive assurance, both in advertisements, circulars, and oral representations, that the flour is made in Minnesota, and at Minneapolis. The consequence of this false branding, advertiseml:lnt, and assertion by the defendants is that inferior flour, manufactured at a locality concealed from, and not desired by, the purChaser, is fraudulently and deliberately palmed off upon the deceived public and purchasers for another and higher priced and more reputable flour, and the public is thereby cheated and defrauded, and complainants are injured by being deprived of a regular, established, and valuable and also by having an inferior flour represented and sold as and for flour made by com plainants, and originating at the city to which complainants, by their joint efforts and methods, have given a valuable reputation for flour, which inflicts direct and irreparable injury upon the reputation of complainants' flour, and injuriously affects the trade therein and the demand therefor. The defendants' dealings in such inferior, spurious flour so branded as genuine "Minnesota Patent, Minneapolis, Minn." flour are extensive, and the sales thereof amount to about 4 car loads, or 500 barrels, of flour a week. It is principally by means of a false statement upon the barrels and sacks, "Minnesota Patent, Minneapolis, Minn.," and the reproduction;of this statement and fac simile of the brand in advertisements, that the belief is induced on the part of buyers that the flol:\r is "Minnesota Patent, Minneapolis, Minn." flour. The milling establishment of J. B. A. Kern & Sons carefully conceals the fact that this flour so branded
614
86 FEDERAL REPORTER.
is ground, packed, and shipped by it under such brand and names, RH. Eagle & Co. also carefully hide the truth, and persistently assert to buyers that the flour is made in Minneapolis, Minn., and result is benefit to J. B. A. Kern & Sons and H.R. Eagle & Co., and injury to the public alldto complainants. . The defendant H. R. Eagle alone appears, and denies that he has any 'knowledge of any such person as Wallace R. Eagle, and the iss,ue tendered by defendant's answer relates to the significationof the terms "Minnesota Patent," "Minneapolis, ?tHnnesota," or ('Minneapolis, Minn.,"as used by the complainants and by him upon their flour sacks and barrels, the defendant denying that these words so used have the meaning ascribed to them by the com· plainants, or that they are understood by traders, purchasers, consumers, and the public generally to mean that the flour is made and put up at the niills of the complaittants, or that the words "J)finnesota" or "Minnesota Patent," used in connection with flour, are understoodby dealers in flour, or purchasers and consumers, or by the public generally, to denote that the flour was ground in the state of Minnesota; and denies that the 'complainants have any exclusive right to the use of the words "Minneapolis," "Minneapolis, Minn.," or "Minneapolis, Minnesota"; but,'; 6n . the contrary, alleges that the word "Minneapolis" is and has been generally used and understood to designate flour manufactured by the patent, or roller, or Hungarian process, from the fact that the use of that process in the manufacture of flour first became generally known in the United States in connection with the city of Minneapolis, having been there flrst introduced. The defendant asks the court to take notice that by the admission of the bill of complaint, one of the complainants, the Pillsbury-Washburn Flour Mills Oompany, Limited, is now using the word "Minneapolis" in connection with the flour manufactured by it elsewhere than at Minneapolis, the flour being sold under such name with the knowledge of all the other complainants, and without objection on the part of any of them; and is justifying such use by the assertion that the flour is made by the same methods, and with ' the same precautions, and under the same tests as are used in the 'mills situated in the said city of Minneapolis. Upon the one principal issue lniade by the answer respecting the proper signification and meaning of the words "Minnesota Patent," Minnesota," and "Minneapolis, Minn.," as used upon sacks and barrels of flour, either alone or in connection with other flour brands aItd' marks, the testimony is conclusive and overwhelming in favor of the complainants. Numerous affidavits, taken in the prin.cipal flour markets of this and other countries, prove beyond any doubt <)1' cavil that these words so tlsed,'signifyto,the dealer, the purchaser, atidthe consumer that the flour is made by the roller or patent process at Minneapolis, in the state of Minnesota, and that it is this fact which has given to the flour so branded its uniform great credit for excellence in the markets of the world,not 'alone in this country, but in South America, Europe, China. .Japan, South Africa, and wherever flour is imported from this, country.
PILLSBURY-WASHBURN FLOUR MILLS 'CO. V. EAGLE.
(}V>
The 'defendant admits all the aUegatitms 'of the bill in regard to fust purchasing his flour of complainants,' and putting it up at Minneapolis, and marking it as "Minnesota Patent, Minneapolis, Minnesota" and putting up anq flour, and· ,afterwards purchasing in seIling under the same brands, but denies that the complainants have a right to invoke the interposition of this court to prevent him from the continued use of such brands; and it only remains to be seen whether the complainants have any such right, and whether this court has any power to grant the relief sought. The principal allegations of the bill being either conceded or proven, the injunction ought to go if the complainants make a case, and the bill' is not demurrable. The application for an injunction was denied by the court below, but it is difficult to see wherein the facts lack anything of making a good case in equity. Upon the evidence the fraud is open and palpable, as is also the damage to the complainants' business and to the public resulting from it. This being the case, are the 4ands of a cotirtqf equity tied by any controlling circumstance or iron, rule which forbids it to grant relief? We think not. Just when it first came into the defendant's mind that the terms "Minnesota Patent" and "Minneapolis, Minnesota" related only to the roller patel1tprocess which might be carried on in any part of the world, and had no reference to the place of manufacture, is not dear from the record; most probably, however, it was after, as he admits, partly by his own business enterprise, and partly by the use of these brands, he had succeeded in building up a prosperous business, and when he had conceived the idea of getting his flour elsewhere, but at the same time continuing the use of the old brands, which had been so successful. But, however this may be" when the defendant failed utterly to make good his defense in regard to the alleged proper meaning of the words used as a part of his brand; there was left small ground for him to stand upon. He was faitlybeaten in his defense by the testimony. After that to still say that the court has no jurisdiction or power to grant relief is to fly in the face of the well-grounded principle running through all the cases that fraud accompanied by damages is actionable at law, and that, where one person has so dressed out his goods as to deceive the public into the belief that they are really the goods of another person, and so put them upon the market, to the manifest injury of that person and of the public, an action at law will lie for the deceit, and, to save a multiplicity of suits, and prevent irreparable injury, equity will restrain such unfair and fraudulent competition. This rule is so well 'established, is so general and elastic in its application, and soconsoIiantto the general principles of equity jurisprudence, that it would be diffieult to frame a case coming fairly within its spirit and meaning in which a court of chancery will not find a way to afford the proper. relief. . This principle is affirmed in many of the leading cases. In the recent English case, quite analogous to this, of Saxlehner v. Apollinaris Co., 13 Times Law Rep. 258, plaintiff was the owner of a spring in Hungary named "Hunyadi Janos." Defendant, once the exclusive agent in England for the sale of the spring water, on
616
B6 FEDERAL REPORTER.
expiration of the contract,began selling water from a spring near Budapest, which was styled "UjHunyadi." The injunction went, and Mr. iTustice Kekewich said: "The plaintIff's case, as thus opene!l; was brought dlstlnctly'wlthln the authority ,of Reddaway v. BaDham [1896]: App. Cas. 199, which, be It observed, was decided by the house of ,Jords some time before writ Issued. It is important to note what that authority really. Is. There Is no novelty In the principle stated, and even the language finds a, counterpart In many older cases, such as Selxo v. Provezende, 1 Ch. App. 192';' but yet the law is so clearly put on a simple and' ;intelligent basis that one· necessarily makes it the starting point In consideration of questions of this class. I have studied the case with this view, and it seems to me the .entire doctrine is summed up in one sentence in the first pMagraph of the lord chancellor's speech moving the judgment of the house, 'NobOdy has any right to represent hIs goods as the goods of somebody else.' Observe that the proposition Is perfectly general. There is no limit as regards name, origin, honesty of manufacture or sale, or otherwise; and, although there are elsewhere to be found IMrned and useful disquisitions on the the law to them, and criticism of facts of the particular case, the application earlier autbOl;itles, there is no departure from what the lord chancellor states to be 'the principle of'law.' It matters not, therefore, how a plaintiff's goods come to acquire It particular value, or how the defendant's' goods have come tQ adopt that value. If, in fact, the defendant is selling his goods as those of the plaintiff, hels doing what the law will not allow, and the plaintiff Is entitled ' to relief agaInst hIm." ,,' J';'
of
I
In Newman v. Alvord, 51 N. Y. 189, also much like to this in principle, the trade-mark used by the plaintiffs was the word "Akron" in designating a cement made by them near the village of Akron, in Erie counfY,state of New York. This word had been used by the plaintiff's and their predecessors in business about 13 years, to designate the origin and quality of their cement. The defendants. who manufacturedcement in Onondaga county, near Syracuse, knowing that the plaintiffs had for years used the word as a trade-mark to designate the origin and place of manufacturing their cement,applied the word to, designate their cement by calling it "Akron Oement." The plaintiffs' barrels were labeled as follows: "Newman's Akron Cement, manufactured at Akron, N. Y. The hydraulic cement known as the 'Akron Water Lime.'" Tlie defendants labeled their barrels: "Alvord's Onondaga Akron Oement or Water Lime, manufactured at Syracuse,' N. Y." ,They placed "Akron" upon their. label for precisely the same reason that the defendant in this case placed the words "Minnesota' Patent, Mimieapolis, Minn." upon his flour sacks and barrels, to increase their sales, and avail themselves of the repu· tation acquired by plaintiffs' cement. The as said by Earle, J., who delivered the opinion of the court of appeals, was calculated to induce ordinary buyers to believe that they were purchasing, either plaintiffs' cement, or cement of the same kind and value.' The sole question to be determined, as stated by the learned justice, was whether the who were the only persons engaged iJ} manu· facturing,and selling the Akron cement which was known and had a reputation in. the market as such,' could be protected in the use of the word "Akron" against the defendants, who used, it to defraud the plaintiffs and deceive the public. And the court thought the plain· tiffs were to the injunction. The principle upon which the relief was granted, as stated in the opinion, is that the defendants shall
PILLSBURY-W ASHBURN FLOUR MILLS CO. V. EAGLE.
617
not be permitted, by the adoption of a trade-mark which is untrue and deceptive, to sell their own goods as the goods of the plaintiffs, thus injuring the plaintiffs and defrauding the public. The plaintiffs, as the court held, had given a reputation to the Akron cement in market. They had always been its principal manufacturers and sellers, and at the time of the commencement of the suit the sole parties who could be injured by the fraudulent use of the trade-mark by the defendants; and hence they were clearly entitled to the protection which they sought. This case, which is quite analogous in principle to the case at bar, has been cited and approved by the supreme court of the United States in Canal Co. v. Clark, 13 Wall. 311, and McLean v. Fleming, 96 U. S. 245. In the former of these cases the distinction between a trade-mark proper as indicating an exclusive right, and the use of a geographical name, as in the case at bar, where no exclusive property can be had, is clearly indicated. In speaking of the case of Newman v. Alvord, after stating the facts of the case, the court say: "It [the defendants' cement] was not in fact Akron cement (for Akron and Syracuse were a long distance from each other), and the purpose of call1ng it such was evidently to induce the public to believe that it was the article made by the plaintiffs. The act of the defendants was, therefore, an attempted fraud, and they were restrained from applying the word 'Akron' to their manufacture. But the case does not rule that any other manufacturer at Akron might not have called his product 'Akron Cement' or 'Akron Water Lime.' On the contrary, it substantially concedes that the plaintiffs, by their prior appropriation of the name of the town in connection with the words 'cement' and 'lime' acquired no exclusive right to use it as against anyone who could use it with truth."
So in the case at bar, the complainants can have no exclusive right to the use of the geographical names of "Minneapolis" or "Minnesota." They are not the subject of a trade-mark proper. Anyone or more of the two hundred thousand inhabitants of Minneapolis may use that word upon their flour. The defendant or any other person from any state may go there, and establish a mill, and brand his flour "Minnesota Patent" and "Minneapolis, Minnesota." The defendant might have continued to buy Minneapolis flour, and branded it "Minneapolis, Minn.," and had all the benefit which these marks would him in the market, because he would be adhering to truth and fair dealing. But when he placed these same brands upon another flour, manufactured in Wisconsin, he departed from the truth, and placed' a lying brand upon his goods, which was intended to deceive, and could not but deceive, the pu,blic, and result in injury to the complainants' business. If the defendant could do this, all other persons could do the same thing, and so the public would be defrauded, and the good will and business of complainants, which has taken 39 years to build up, would be greatly impaired, if not destroyed. If this could be permitted, there would not be much incitement to provide the public with a high grade of flour, such as the complainants have been manufacturing for many years, and which the evidence shows has led the markets of the world, if, by all manufacturers using the same brand, the complainants' flour may be confounded with all lesser grades and kinds made from all sorts and grades of wheat. It must be conceded -that, if the private interests involved are great, the public
&18 interests are,; rio' l(jss so. In the examination; of scores of <lases referred to'in the briefs of coansely we find very little difference in opinion ,on: this subject.: The distinction, both I'n the English and American cases, is between 'those where a geographical; name has been adopted,and olaimedasatrade-mark proper, and those where, as in the case at hal', ,it has been adopted first as merely indicating the place of manufacture, and, afterwards, in course 'of time; has become a weU:knownsign and synonym for superior t'lxcellence. In the latter class of cases, persons, residing at other places will not be permitted to use the geographical name 'so adopted as a brand or label for similar goods for the mere purpose by fraud and false representation of appropriating the good will andibnsiness which long-continued industry and skiW and a generous use of capital Ms rightfully built up. It will be of no avail in such cases, where the facts are admitted or proven, to 'allege a want bf power in a court of equity to 'find a remedy. The court has always exercised this jnrisdiction, and must continue to do so. , In Lee v. Haley, 5 Ch. App.' 155, the plaintiffs bad for a series of years carried on business as coal dealers in Mall, London, underth(j of "The Guinea 00a1 COIIlpanY,",!ludthe,y, i were frequently calle.d the "Pall Mall GtiineaCoal Company." The defendant, ,who had been their manager,finally set up a business in the same streetunder the same style of the "Pall Mall, Guinea Coal Company" jand, whUe it appeared th:),t there were other Guinea coal companies in London, so that the plaintiffs did not have the exclusive right touse the trade-mark "Guinea Coal Company," yet the court beHllthatthey were entitled; as against the defendant, to be protected'in the use of the name. ' Lord Justice Gifford, delivering the opinionof,'the says=: , : j , ' "1 quiteagreeti!at'the plaintiffs have no property in; the, name, the principle upon which the cases on this subject proceoo is, !lpt that there.is prop" etiy in the word,' but that It is a fraud ana person who has established a trade; a given name;"thltt some other person should assume and carries it on tJi.e same name, ,or name wltll a slight alteration" in, such a way as to iR-duCe Q.eal 1"ith hiI\lln the PeUef that they are 4¥ling with the person . wliilhas glveri"lt,'rep\ltation to the,' narqe." ',, .· .' " ;, ' - ; 1.1 '
Of cours6,Ahis case goes further:than it is necessary to carry the rule 1:p. the case at bar; because' the words "PaB Mall Guinea Coal Company" oould be'trllthfully 'used by both parties. They both sold'coal:in:Pall'Mall at a guinea a ton.' But here'the defendant could not trnthfully call his flour "'Mimneapolis,lIiiin."'fiour, and his using these words was a fraud upon complaina:ntsand upon the public. . . ". .. ... ' .In Southorn v', Reynolds, 12' .Law T. (N. S.) 75, 'William' SouthorD establishedia i clay-pipe' factory· at Brosely, Shropshire; and the prodobtained'! a great replite as Brosely Pipes.'" He d1ed;ahd two bl'others--WiUiam :\nd the business at sepai-ate: both using the name "Southol'n Brosely,,'!' distinguishing their' different factories' by prefixing their initials. Thee,pipes :were maM· from a of clay used tne:prtlducts of 'both of tMirfactories were
PILLSBURY-WASHBURN FLOUR HILLS CO. V. EAGLE.
619
known indifferently as "Southorn Brosely Pipes." Defendant, wno had no establishment at Brosely, began to make "Reynolds' Puri· fied Clay Pipes, made by Southorn from Brosely." It appeared that he had employed a former workman in one of the factories at Brosely whose name was Southorn. One of the brothers only brought suit for an injunction to restrain the use of the names "Southorn Brosely." The court held that a clear case of fraud and misrepresentation was made, and granted an injunction. In Manufacturing Co. v. Gato (Fla.) 7 South. 24, the court, in stating the case, said: "The complainant engaged In and commenced the manufacture and selling of cigars at Key West, Florida, In 1875; used exclusively Havana tobac-co at his factory; and he established among purchaliers, dealers, etc., a high reputation for his cigars, lind his cigars still maintain said high reputation; and the climate at Key West is more favorable to the manufacture of Havana cigars than points north of that place; caused to be stamped or branded on his cigar boxes the words 'Key West,' and the words 'Key West,' 'E. H. Gato,' or 'Eduardo H. Gato,' and used the distinctive words 'Bouquet,' 'La Estrella,' and the words 'Key West' and 'E. H. Gato' and 'Eduardo H. Gato,' upon the boxes of his cigars and labels, etc., as trade-marks, and to distinguish his cigars in the market from cigars made and put npon the market by other manufacturers, long before the defendants made use of the said distinctive words upen boxes of cigars, labeled and printed thereon as hereinafter stated and complained of. Defendants, or one or more of them, about the year 1882, commenced to manufacture cigars at Jacksonville, Florida, under the name and style of the firm of 'EI Modelo Cigar Manufacturing Co.' or 'Company,' and made their cigars of seed tobacco, a much inferior quality of tobacco to the Havana tobacco, in the estimation of dealers, and Is In point of fact a greatly inferior tobacco to the Havana tobacco, and well known to all manufacturers. '.rile defendants, well knowing the superiority of .plaintiff's cigars, brand and stamp upon the boxes containing their cigars manufactured at Jacksonville, and print upon the labels, pictures, and paper upon said boxes, tbe words 'Key West' and 'G. H. Gato,' In conspicuous places upon said boxes, and in form and size of letters identical with or similar to the form and size of letters employed and used by complainant upon bis boxes of cigars and labels and pictures thereou."
It was held that, "when a man manufactures his goods at a particular place, and uses the name of that place in combination with other words as a trade-mark to distinguish the origin or ownership of his goods, no other person will be permitted to use the name of the same place, upon goods manufactured by him at another and different place,"-citing Canal Co. v. Clark, 13 Wall. 325; Congress & Empire Spring Co. v. High Rock Congress Spring Co., 45 N. Y. 291; Newman v. Alvord. 51 N. Y. 189; Manufacturing Co. v. Hall, 61 N. Y. 226; Sawyer v. Horn, 1 Fed. 24; Gilman v. Hunnewell, 122 Mass. 139; Robertson v. Berry, 50 Md. 591, 33 Am. Uep. 337, note l. And that, after the complainant, whose factory was located at Key West, had adopted his own name in combination with the words "Key West," "La Estrella," and "Bonquet," and certain brands, lafleIs, and pictures, as his trade-marks, the defendants did not afterwards have the right to .adopt the name G. H. Gato in combination with the words "Estrella," "Bouquet," and "Key West," and certain brands, labels, and pictures, in combination with the name G. H. Gato, as their trade,marks, where the, words .e;oadopted by them so clearly resembled the trade-marks so adopted by the complainant as to enable them to palm off upon and an ordinary pur-
620
86 FEDIlJRAL REPOItTER.
chaser to buy their cigars for those -of the complain'ant, whereby the defendants might be profited, and the complainant might be injured. In City of Carlsbad v. Kutnow,68 Fed. 794, the city of Carlsbad, as proprietor of the Carlsbad springs, had for years evaporated the waters into salts, which were sold as "Carlsbad Sprudel Salz." De· fendants, who were New York druggists, made a similar salt, without the use of the genuine Carlsbad water, and sold it under the name "Improved Effervescent Carlsbad Powder." Judge "Wheeler, in granting the injunction, said: "If any artificial salts have come to be known by the name of 'Carlsbad Salts.' from similarity or otherwise, of course the defendants have the same right to sell such salts by that name that they have to sell anything by the name by which it Is known. But there Is no real evidence to that effect. And if the defendants procured genuine Carlsbad waters or salts, and put them up in different forms, or with other Ingredients, to improve their taste or vary their effects, these words would be truthful, and they would seem to have a clear rIght to use them In such preparations: but the plaintiffs' proof tends to show that the defendants' salts are not, .In SUbstance, genuIne Carlsbad salts, in any form, and the leading defendant :has been a wItness, and has not assumed to state-and, although the proof must be within their reach, none has been produced to show-that their salts come direct, in any form, from the Carlsbad springs. The Impression left by the evidence is that they do not, but are artificial. No proof has been brought showing that the plaintiffs have used the name of 'Carlsbad' upon any but genuine _ Carlsbad Sprudel Salts. As the case stands here, the defendants appear to be using the name 'Carlsbad' upon artificial salts having no connection with that name, and to be using it only because of its connection with the genuine Carlsbad Sprudel Salts. Carlsbad, with Its springs, is far away. 'l'his use of the name in connection with a preparation so similar to this well-known product -of them Is some representation that it is a genuine product of them. Calling the powder 'Improved Carlsbad' is a direct representation that genuine Carlsbad powder has been taken to be Improved upon: and calling It also 'effervescent' is a representation that the improvement is in the effervescence. This Is putting the plaintiffs' mark, to some extent, upon the defendants' salts, and is calculated to lead customers to think they are the salts of the plaintiffs. Suchdeeeption would be actionable at law, and is preventable in eqUity. McLean v. Fleming, 96 U. S. 245; Menendez v. Holt, 128 U. S. 514,9 Sup. Ct. 143; Improved Fig Syrup Co. v. California Fig Syrup Co., 4 C. C. A. 264, 54 Fed. 175: Von Mumm v. Frash, 56 Fed. 830. Allusion has been made to this word being the name of the city, to which ordinarily an exclusive right cannot be acquired: but it Is also the name ot these peculiar springs, and gives the name to -their products."
And on appeal (35 U. S. App. 750. 18 C. C. A. 24, and 71 Fed. 167) the court, in affirming the order, by Judge Lacombe said: "The Carlsbad Sprudel Salts in either form, therefore, is a natural product, and well known as such; and there is no proof in the case that the complainants have used the name 'Carlsbad'upon anything but genuine Carlsbad Sprudel Salts. And we concur with the circuit jUdge in the finding that there Is no evidence in the record that any artificial salts have, from similarity or otherwise, come to be known by the name of 'Carlsbad,' as is the case with the Epsom salts, a term now generally applied to sulphate of magnesia whether such sulphate of magnesia comes from Epsom or not. Under these circumstances the complainant, the city of Carlsbad, has the right to indicate the origin of these natural salts by Its own name, and would be entitled to the aid of a court of equity to prevent anyone from using that name to induce the public to accept as genuine artificill) salts not the product of the Carlsbad springs."
In Kinney 16.Am. Law Reg. (N. S.) 596, plaintiffs manufactured cigarettes, and used'"a label with a field of divergent rays and the word "St. James" and the symbol "1/2." The cigarettes
621
were distinguished on the market as "St. James." Defendants em ployed a label of the same size, differing slightly in color, contain· ing the words "St.James Perique Cigarettes," with the symbol "1/2." It was shown there was a St. James parish in Louisiana, . and St. James perique tobacco was a common article. The symbol "1/2" meant mixed goods, and was so used by the trade. In regard to the right of the plaintiff to the use of the word "St. James" and the figures "1/2," the court said: "It has been urged upon the part of the defendants that geographical names cannot be the subject of a trade-mark; neither can numerals, which only serve to indicate the nature, kind, and quality of an article. It is true that the cases cited by the defendants sustain these propositions, but the later cases hlwe proceeded upon different and more equitable principles in defining the grounds upon which courts of equity interfere in cases of this description. This interference, Instead of being founded upon the theory of protection to the owner's trade-marks, Is now supported mainly to prevent frauds upon the pUblic. If the use of any words. numerals, or symbols is adopted for the purpose of defrauding the public, the courts will interfere, and protect the public from such fraudulent intent, even though the person asking the Intervention of the court may not have the exclusive right to the use of these words, numerals, or symbols. This doctrine is fully supported by the latest English cases of Lea v. Haley, 5 Ch. App. 155; Wotherspoon v. Currie, L. R. 5 H. L. 508; and also in the case of Newman v. Alvord, 51 N. Y. 189."
In Association v. Piza, 24 Fed. 149, complainant, doing business at St. Louis, Mo., had heen accustomed to export beer in bottles with a label bearing the words "St. Louis Lager Beer." It had an established market for this product in South America and Panama. Neither defendant nor any other person in the export trade had been accustomed to use the words "St. LOllis Lager Beer." Defendant shipped beer from New York in competition with complainant. It was shown that at Panama and in South America "St. Louis Lager Beer" was in demand. Defendant's beer was made in New York, and his bottles were so labeled as to represent that the beer was made at St. Louis, and that his firm were the sole agents for the St. Louis lager beer. Defendant insisted that buyers did not discriminate between complainant's article and other beer in the United States, but bought it simply because they supposed St. Louis beer was produced in the United States, as distinguished from German and English beer; but the eourt said: "This m&y be true; but, if It Is, It does not seem to be conclusive against the right of the complainant to the injunction which he seeks. As the goods of the parties go to the same market, it can hardly fail to happen that the complainant will lose sales, and the defendant will get customers, in consequence of defendant's acts. Although the complainant cannot have an exclusive property in the words 'St. Louis' as a trade-mark, or an exclusive right to designate its beer by the name 'St. Louis Lager Beer,' yet, as Its beer has always been made at that city, its use of the designation upon its labels is entirely legitimate; and if the defendant Is diverting complainant's trade by any practices designed to mislead its customers, whether these acts consist In simulating its labels, or l"epresenting In any other way his products as those of complainant, the latter Is entitled to protection. It Is no answer for the defendant, when the complainant asks for protection, to say that it has no exclusive right to designate its product in the manner it has, although this might very properly be asserted by a competitor 'Belling beer made at St. Louis, or Who, by reason of any c1rmight be entitled to represent his product as originating there. .canal Co. v. Clark, 13 Wall. 322. It is unnecessary, for present purposes, to
S6 FEDERAL' REPORTER.
consider: 'Whether the complainant has a valid trade-mark, or can a technical trade.mark,.ln the name 'St. Louis.' It Is suIDclent that W:wa" lawful for the compIa,lnantto use that nameto designate Its property, that by doing so It has acquired a trade which Is valuable to It, and. that the defendant's acts are .fraudulent, and create a dishonest competition; detrimental to the public."
In Lead Co. v. Cary, 25 Fed. 125, complainant, a manufacturer of white lead in St. Louis, stamped upon the upper end or head of its kegs the words "Southern Company, St. Louis." These words encircle the head of the keg, "St. LoQis" forming the lower half of the circle,and "Southern Company" the upper half, inclosing the words, "Warranted Strictly Pure White Lead in Pure Linseed OiL" St. Louis had an established reputation for the manufacture and sale of pure white lead, and complainaIJ,thad maintained for years a large Defendants manufactured trade at that place as a manufacturer. their lead at Chicago, branding it "Southwestern, St. Louis," surroundingthe words "Strictly Pure White Lead"; the wQrds "Southwestern St. Louis" appearing in the same form .as the words "Southern Company,St.·Louis." Defendants also pasted a label on their kegs, stating it was strictly pure. Analysis showed complainant's lead to be pUfe and defendants' to be adulterated. Gresham, C. J. said: "I shall not stop to Inquire whether' the' complainant's claim to trade-mark Is oris not well founded, as I think it Is entitled to an Injunction upon another ground, The defendants so brand the heads, of their kegs as to naturally mislead and, persons purchasing for consumption to suppose they are purchasing complainant's lead, when they are getting an inferior article. The brand used by, the defendimts Is 'so like the complainant's as to induce the public to mistake the one for the other. The defendants sell their goods to retail dealers; and It may be that such dealers are not ceceived, but, they sell to consumers wh,o are or may be deceived. 'rhe complainant Is entitled to relief If the brand used by the defendants sufficiently resembles the complainant's brand to be' mistaken fer It, and the' defendants adopted their brand for the purpose of selling their kegs as the kegs of complainant, or for the purpose of enabling retaiL dealers to do so, and the complainftnt has been Injured by this fraud, or Is likely to be injured by it. The complainant manufactures its genuine white lead at St. Louls, and its reputation is already established as a manufacturer and dealer of this character. The defendants' manufacture their adulterated and greatly inferior lead at Oblcago, and stamp upon their kegs a false brand In imitation of the complainant's brand. Why is this done unless it be in the hope of deceiving the:public and injuring the complainant? Realizing that they could not engage in open, manly competition' with the complainant, the defendants resort to a palpable trick. If this resulted in no injury to the com" plainant, or was likely to result in' no injury to it, the biU would have to be dismissed. But the affidavits show that the defendants' kegs can and have been as the complainant's."
Judge Blodgett, in Lead Co. v. Coit, 39 Fed. 492, made the same . ruling upon the same facts. In A. F. Pike Mfg. Co. v. Chiyeland Stone Co., 35 Fed. 896, it was sought to protect the names "Green Mountain," ''Willoughby Lake," "Lamoille," and otherS as designating scythe stone, which had been by complainant and its predecessors for a number of years. Defen4ants acquirel;l', a quarry ,;i.djacent to complainant's, and branded 'urged, first, that the brands employed theirs in the same way. It by defendants did not infringe. Defendants· used .the ma;wt "Lamoille," "Green Mountain," and others, but in place of "Willoughby Lake" employed" the title ''Willoughby Ridge." It was ruled that
PILLSBURY-WASHBURN nOUR MILLS
co.
V. EAGI"E.
623
the titles employed were infringements.' It was next urged that, th,e brands as applied to scythe stones indicated the quality or grit of the stones. The court said that they did not designate' alone quality, but also indicated ,selection and care in the manufacture, and finally: "It is urged that 'Lamoille' and 'Willoughby Lake' are geographical terms. The defendants quarry stones 200 miles from Lamoille county and Willoughby :!;.ake, and apply the names 'Lamoille' and 'Willoughby Ridge.' Assuming that complainant cannot have a valid trade-mark in these names, which I do 'not that a manufacturer be protected in ,the decide, it seems to be well use of a geographical name as against one who does not carryon business in the district so designated. Blackwell v. Dibrell, 3 Hughes, 160, Fed. Cas. No. 1,47q; Newman v. Alvord, 49 Barb. 588, 51 N. Y. 189."
The same doctrine was upheld in Northcutt v. Turney (Ky.) 41 S. W. 21. The complainantswel;'e the owners of what are called and known as the Upper and Lower Blue Lick springs in Nicholas county, Kentucky, and brought suit to enjoin Northcutt from using the words "Blue Lick" in connection with his advertisement and sale Of water from an artesian well in Oampbell county. The court, in, affirming the right to an injunction, said: "It is substantially alleged and admitted that water from the two springs of appelleesI1ave been for a century known, sold, and used throughout the United States and many foreign cO)lntries as medicinal water,and also that they and those under whom they claim· have, by long use and legal adoption,acqu,ired exclusive right'to the use of the words 'Blue Lick' as their trade-mark. Though Upper and Lower Blue Lick springs are some distance apart, and belong to two distinct .firms, the water from them seems to be composed of the same ingredients, and to possess the same kind and combination of medicinal qualities. And, as the trade-mark 'Blue :LIck Water' has been heretofore appropriately and legally adopted and used by each representative owner without objection of either; they have a common interest in preventing a third party illegally appropriating and using it, and, consequently, have a right to jointly maintain this action. Appellant /States in his answer that he and those who preceded him have 1:)een selling and shipping water .from said artesian well for a period of at least sixteen years; that for about one year of that time the trade-maJ.'k or brand used in the stile of said water was 'The Campbell County' Blue Lick Water,' and' for about fifteen years last past the trade-mark or brand used by him and the former owners and proprietors in sale of said waters has been 'Kentucky ,l3lue Lick W:;tter,' And the two defenses based upon tWs alleged statement'df fact are: First, that appellees, having knowledge thereof, and acquiescin!f1n such:use of the words 'Blue Lick Water' by appellant and his predecessors,'ls ;now estopped to deny their right or, interfere with the exercise of it by second, that the action is barred by the statute of limitation. That acquired e:x:clm;ive right to use as their trade-mark the words 'Blue Lick Water' is not only apparent from the facts stated in their petition; and conceded in the answer of appellant to be true, but has been definitely decided by this cour,t in the case of Water Co. v. Hawkins (Ky.) 26 S. W. 389. Such beiJ;lg. the case, the use and, attempted appropriation of the same words by the predecessor. of appellant, in aqvertising and selling water f],'om the artesian well, was manifestly illegal and. fraudulent,"
Since the case of Mill 00. 'V. Alcorn, 150U. S. 460, 14 Sup. Ot. 151, that the word "Oolumbia" placed upOll flour sacks was decided, could not collstitute a proper,trade-mark word so as to give the person using it an ,exclusive right,' no one would be so hardy as ,to claim that an exclusive right to. the use of a geographical name could be acquired asdatrade-mark proper. Indeed, the doctrine ofJhat ease Wal1 Ilot new.in 1893, but, bas been the leading doctrine on the subject Qoth in tbis.country and England for many years, as is clearly shown
624
86 FEDERAL. REPORTER.
btthe cases already cited. There is no inconsistency between that case and the previous decisions of the state .and federal courts in this country, including the decisions of the United States supreme' court before· cited, to the effect that "wrongs of this description, whereby, through an artifice of any sort, the of- one manufacturer become confused in the public mind with of some other manufacturer, may be redressed in a court of equity." Merriam v. Clothing Co., 47 Fed. 411. ,In the case of;PiIlsbury v. Mills Co., 24 U. S. App.395, 12 C.O. A. 432, and 64 Fed. 841, which, like this, was a case of unfair and fraudulent competition, Jenkins, Circuit Judge, speaking for the court, says: "In the consideration of this ql1estlonwe have not overlooked the case of Mill Co. v. Alcorn. That was the case of a trade-mark pure and simple, In which it was held that one cannot acquire the right to the exclusive use of the word ·Columbia.' ,. ·.· There the proof failed to establish that the brand was ifalculated to p:1lsleador deceive. Here the proof Is overwhelming to the effect that the brand used was designed to mislead, and actually did deceive and misead."
Since the case of Mill Co. v. Alcorn was decided, a question arose in the United States circuit court for the district of New Jersey in Envelope Co. v. Walton, In 1897, and reported in 82 Fed. 469, in referen,ce to the use .of the same word "Columbia" in connection with certain symbolical representations of Columbia by different dealers who had placed it upon their packages of tissue paper. The complainants brought their bill to .restrain the use of the word HColumbia" and the allegorical representation, that they had used it for more than 10 years continuously to distinguish manufacture of a superior quality of tissue paper, and charging the defendants with the use of the same words and representations upon a tissue paper manufactured by them, and in such a manner as to constitute unfair and fraudulent competition. The defendants were allowed, besides answering, to file a cross bill, by which they set up that they had employed the word HColumbia" .and a symbolical or allegorical representation of "Columbia" upon their packages for' a period of 17 years and longer before the, complain. ants had employed them. The court, in deciding the case in favor of the defendants, granting the injunction asked for in the cross bill, says: "There cannot be any question tbat under these circumstances there .is gra've danger that the goods may be mistaken the one for the other. If the question presented were only the one raised by the complainants' bill, I should not hesitate to grant them the relief asked for; but the prior application by the defendants of the word to the same product changes the situation of the parties. It cannot be said that Walton & Co. acquired a techllical trademark In the word 'Columbla,' In view of the decision of Mill Co. v. Alcorn, 150 U. S. 460, 14 Sup. Ct. 151; but that they were the first persons, so far as the recol;ds shows, to apply the word to this article of production, cannot be dis· outed. By such application and. continued use their paper became. known to the trade and the pubHc generally. It acquired a reputation for quality, and the. name 'Was a distinctive mark of excellence. The figure ot '.Columbla' afterwards added by the complainants cannot be regarded as more than a mere amplification of the word 'Col\l1Dbia' previously approprlateli. It conveys,no
PII.LSBURY-WASHBURN FLOUR MILLS CO. V. EAGLE.
625
ther or other idea than the word, and can be regarded ,only as a different way of it. It is apparent that, inasmuch as none of the wrappers in controversy bear the names of the makers, the paclmges must be known and desig· nated and called for by the users as 'Columbia paper,' whether the word 'Colum' bia' be expressed in letters alone, or in a figure typifying 'Columbia.' So it would happen that, whether a purchaser wanted the package of the complain· ants or the defendants, he must ask for Columbia paper. It would be impos· sible for the seller to know which of the manufactured articles was desired, and the public would be rendered lIable to have imposed upon it goods which they did not want. Such a condition must inevitably lead to confusion in the trade, disappointment to the general public, deception of ultimate purchasers, and be productive of unfair competition in trade. Orr v. Johnston, 13 Ch. Div. 434; Sawyer v. Horn, 4 Hughes, 239, 1 Fed. 24. One cannot be permitted to practice deception in the sale of his goods as those of another, 'nor to use the means which contribute to that end.' Perry v. Truefitt, 6 Beav. 66. Irrespective of the question of trade-mark, inasmuch as Walton & Co. appear to have been the first to put up their paper with the distinguishing mark 'Columbia,' and as their goods were the first to become known to purchasers as 'Columbia Paper,' no other person should be permitted to use that name as the sole distingUishing mark of a like article, whether expressed in letters or by figure, and in that manner mislead the general public into buying his goods as those of his competitor. If the word could not be used as a trade-mark, It Is to be treated as a descriptive term, to the benefit of which they are entitled. Wilson v. T. H. Garrett & Co:, 47 U. S. App. 250, 24 C. A. 173, and 78 Fed. 472."
The following are some other of the leading cases which we have examined, and which affirm the same general principle: Reddaway v. Hemp-Spinning Co. [1892] 2 Q. B. 639, 9 Rep. Pat. Cas. 503; Powell v. Brewing Co., 11 Rep. Pat. Cas. 563, 13 Rep. Pat. Cas. 2-35; Paine v. Daniell, 10 R Pat. Cas. 217; Hine v. Last, 7 LawT. 41; Braham v. p. Beachim, 7 Ch. Div. 848; Knott v. Morgan, 2 Kem, 214; Magnolia Metal Co. v. Atlas :\Ietal Co., 14 Rep. Pat. Cas. 389; Society of Accountants v. Corporation of Accountants, 20 Scot. Sess. Cas. (4th Series) 750; Dunnachie v. Young, 10 Scot. Sess. Cas. (4th Series) 874. In this last, case the following remarks of Lord CraighiIl seem peculiarly applicable to the case at bar: .. 'Glenbolg,' as used by the respondents, and without any explanation of the sense in which the word was used, could not but be a description almost certainly leading to a deception. The lord ordinary appears to me to have been Insensible to this consideration. He thinks that because Dunnachle made 'Glenbolg' a part of his trade-mark, the word must be held to be pUblici juris,-misreading· the Case of Seixo, as I think. But Dunnachle was on Glenboig; the clay he used was ,raised and manufactured there; and In putting the name of the place into his trade-mark he was only following the course ordinarily pursUed. The respondents, however, are not on Glenbolg. In taking that word they took It only because It denoted goods known in the market to be of quality; and, If they are to find virtue in It, this will only be because those who at first or second hand are the purchasers of their goods read the word as Indicating that the goods are the product of a manufactory other than Heathfield. The respondents try to justify their assumption of Glenbolg, first, on the ground that their clay Is of the same seam; and, second, that the word 'Glenboig,' as used by them, Is qualified by the word 'Young's,' and so misapprehension, not to say deception, is prevented. The fact assumed in the former of these grounds has, I think, been established, but it Is insufficient as a justification. The least that can be said on the subject is that the word, as used, Is ambiguous. That, In my opinion, would be enough. Why should the respondents use a word that may mlslelld,-that may lead people to buy their goods as the goods of the If all the respondents desired to suggest Is that their bricks are made of the clay of the Glenboig seam raised on Heathfield, a word or words could be introduced by which this could be communicated." 86F.-40
Every cRee, as !often been!!Mjudge\i; mdstrest upoll its.' own 'but tJ,11s ,niany u:oted seem quite indis.Hngilishable .on principle from the,ca,sein. hand. The result of aU the cases-is thatthenquestion mnstcQme down to'one of fair orfral!idulent competition. Thread Co.v. Armitage,.67 Fed. 89r,affirn;ied1(Fed. Merriarilv. Publishing Co., 49 .Fed. 944; Seixo v. Pr.ovezeIide, 1 Ch. Lead 25 flarb. 417; Wotherspoonv.Ourrie, L. R.5 H. L. 508.; Myers.v. Buggy Co., 54 Mich. 215, 19'N.W.961, and 20 N. W.545; Keller v. Goodrich Co. (Ind., Sup.) 19lf. General v"Rehder, 5 Rep. Pat. FisheI:s & WhitstabWv.,Elliott, 4 Law T. Cas. 61; 273; Thompson v.Montgomery, 41 Ch. Div. 35. Tbis last case is very analogous' to the case' at 'bar. The plaintiff had established a brewery at' a place where he had long carried on business, and whence his ale, tinder the denom,ination "Stone Ale," had a Lord Lindley, in reversing the order denying an injunction,said: plalntltf's rights are to pl,"lOlverit: anybody trompasslng off his goods as the goods of the plalntlt'l',. which Is indee? the very substance and kernel of the cases on this subject. California Fig"SyfupCo. v.TaylorDrug Co., Limited, 14 Rep. Pat. Cas. &/;1."
In McAndrew v. Bassett, 4 De Gex,J; & S. 380, the plaintiffs were large manufacturers of licorice; Tbey' styled this licorice "Ana- . tolia." 4,natoliawas the name, .applied to a whole tract of country wheretulicQJ?icelroot is largely grown;, At the time plaintiffs" began to. nse; tlle word there was no other manufacturer of .licorice stamping itwitl} this, word. Sub$equently,in respQnsetoan order caused a,stamp to be prepared for ;Anatplia licorice, conta,iningtlle::word;"Anatolia/"undput It.0n the goods, audafterwards iconttnueP to. US.l:l it.. 'r.be' court' belOW granted. a perpetual injunction restraining the use of the word· "Anatolia"by the defendantso,Il , . I.J;l response to the, argument that the word . , "Anatolia!' ,wasc9J1Pllon t.O all,t4e court l\Iai(l; , I , 'I I
"That argument is mereliYa repetition: at the, fallacy which .J have frequently bad occasion to expose. The ptOIleTty> in the word, farlan purposes cannot eXist, but property in that w.ord, lUl'll.ppliedby way'ot stamp' upon the pa'tt1cular vendible article as'. stick .of Ilcorice,'does e.'tistthe 'moment the article goes: Into the' market·:so sta1ilpeQ, and. there obtained, acceptance 'aod reputation, whereby the stamp gets currency as an indication. of, superior quality, ,or some: oth-er clrcumstance, whIch rendel:lI the article; so 's1ia.mped acceptahle to the. publIc:'" '
trade-mark.npr tp"he,so, usepas, to give the dealer who first adopts It 'an exL conce{led. without ImpalrJng in dus!';l!PJope,l;ty the sIlghtest degree thepl'Oteetion it askll; for,u 1210. O. A. 178.
In YatiEtqrij·i:v..: Ooogan' (N.'J. ,eh.) 2S AtL788,plaintiffandit"s: predecessors had,'at Newark, N. J., for a great many yenrs;manu·· faetured and sold'stovesllnd ranges' under; t1'J'e: style (\i"''Portland I Defendants very; ,1:9 plaUitI!!', to make, ,aQvertIse, and sell "Famous l?ortland Ranges." It was :inl!listed, that there could be no trade-mar'k in the name, and on this point word ''Portland 1' because it was a the) .';- , . '.' : court'sa'id:" ,'". ,, ' " " ' , " . ' , '. , .. "But It Is coqteJ,l..ded lllat a. gepgraphlcal name, like \Portland,'cannot be a, , i'
i ..
'.: j .
'
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was said, In substance, by Lord Langdale, in the case just cited, the question, in cases like this, Is not whether the complainant has a property In the name by which his goods are distinguished in the market; but, on the cuntrary, the pertinent Inquiry is, has the defendant a right to use the name by which the complainant's goods are known, for the purposes of deception, and in order to attract to himself that custom which, without the Improper use of such name, would have flowed to the complainant? And the answer to the inquiry is that the defendant has no slIch right. The supreme court of the United States in Coats v. Thread Co., 149 U. S. 562,566, 13 Sup. Ct. 006, recently said, speaking by Mr. Justice Brown, that there can be no question as to the soundness of the proposition that, Irrespective of the technical question of trade"mark, one trader has no right to dress up his goods in such manner as to deceive an Intending purchaser, and Induce him to believe he is buying the goods of a rival trader. 'Rival manufacturers may lawfUlly compete for the patronage of the public in the price and quality of their goods, in the beauty and tastefulness of their inclosing packages, in the extent of their advertising, and in the employment of agents; but they have no right, by imitative devices, to beguile the pUblic into buying their wares under the impression they are buying those of their rivals.' "
The same rule prevails in the French and German law, and is comprehensively thus laid down in Kohler, Trade-Marks: "Much more important is a second kind of fraudulent competition,-so important that many legislatures especially single it out, and have passed particularly severe rules regulating it. It is one of the most common practices to des: igllilte the products of a place, if these products be of a particularly celebrated character, by the name of their. place of origin. For commerce in cultivated plants this form of designation is a vital question, and in the same way for mineral products, for mineral waters, and so forth; and also for industrial and manufactured goods this designatiQn has an eminent meaning, since the products of certain countries have their peculiar advantages and peculiarities, which come either from the peculiar quality of the raw material of a country, from the customary skill of the workmen, or perhaps from a special method of production long in vogue. The great popularity of such goods in demand, the ready sale which they find, and the profits which their production brings, are temptation enough for many traders to mark their goods also with the name of this locality, entirely foreign to them, in order to realize the advantages which this demand produces. Such practices often inflict the most deplorable damage upon the genuine and reputable products of those places, not only in that they rob them of a good part of the revenue directly, but the greatest damage consists in the depreciation which the indifferent wares, entirely foreign to the nature of the place from which they are said to come, inflict upon the entire locality, which they bring Into bad repute. Before the public notices the deception, it has become disgusted with the inferior goods, and a flourishing branch of industry is ruined at a blow. In glowing colors, and without exaggeration, the terrible effect which such practices have upon industry has been depicted in the report of Lemoinl;! des Mares in the French law of 1824. It states there particularly that several branches of industry 'owe to them the loss of their relations with foreign countries which closed their markets to them from the moment that they saw the most common product arrive under a llilme which heretofore they had been in the habit of respecting and honoring,' Pouillet, p.707. It is just the trade with foreign countries that is most Injured by these practices, because there the deception is far more difficult to detect, lind the foreigner is easiest deceived In his perception of the true nature of the goods."
The cases in which a person has been enjoined from using his own name in .connection with other labels or brands upon his goods proceed upontbe same general ground of deceit and unfair competition in trade, If a person may be restrained from the use of his own name upon his own goods because such use,.in the circumstances, wHL deceive t)le public into purchasing his believing them to be the goods of another, to the injury· of thl;! .public and the good
628
;FEDERAL, REPOaTER.
will and business of such other person, so, also,on the like principle, may he berestrained from using any other proper or geographical name when such use will produce like results. Garrett v. T. H. Garrett & Co., 24 C. C. A. 173, 78 Fed. 473; William Rogers Mfg. Co. v. Rogers & Spurr Mfg. Co., 11 Fed. 495; R. W. Rogers Co. v. William Rogers Mfg. Co., 17 C. C. A. 576, '70 Fed. 1017; Landreth v. Landrdh, 22 Fed. 41; Pillsbury v. MillsCo., 24 U. S. App.395, 12 C. C. A. 432, and 64 Fed. 841; Tarrant v. Hoff,. 22 C. C. A. 644, 76 Fed. 959; Meyer v. Medicine Co., 18 U. S. App. 372, 7 C. C. A. 558, and 58 Fed. 884; Walter Baker & Co.v. Baker, 77 Fed. 181; Brinsmead v. Brinsmead, 101 Law T. 606; Melachrino v. Melachrino, 4 Rep. Pat. Cas. 215; Barlow v. Johnson, 7 Rep. Pat. Cas. 395; Huntley v.. Biscuit Co., 10 Rep. Pat. Cas. 277. It is hardly necessary to cite authority for the doctrine that in cases where the question is simply one of unfair competition in trade it is not essential there should be any exclusive or proprietary right in the words or labels used, in order to maintain the action. Tbis has been decided by the United States supreme.court both before and since the decision of Mill Co. v. Alcorn. See Coats v. Thread Co., 149 U. S. 562, 13 Sup. Ct. 966; Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169, 16 Sup. Ct. 1002. In the former of these cases the doctrine is distinctly and broadly announced that, "irrespective of any question of trade-marks, rival manufacturers have no right, by imitative devices, to beguile the public into. buying their wares under the im· pression that they are buying those of their rivals." In the defendant's brief and argument much reliance is placed upon the fact that one of the mills belonging to the Pillsbury-Washburn Co. is situate outside the city limits of Minneapolis. But, upon examination, this defense, much like the other defenses in the case, vanishes into "unsubstantial air" when viewed in the light of the evidence. The objection, if good at all, would go to shOW a misjoinder of parties; that is to say, that the Pillsbury Flour Mills Company should not have been joined witb the six other corporations, all of whose mills are situate at the Falls of St. Anthony, within the city limits of Minneapolis. It would furnish no good reason for not granting the relief asked for as to the other complainants. The objection, if of any value, should, no doubt, have been taken by plea in abatement for the misjoinder of parties. A plea to the merits is held to be an admission not only of the competency of the plaintiffs to sue, but to sue in the particular action which they bring. Society for Propagation of Gospel v. Town of Pawlet, 4 Pet. 480. But upon the merits there is but little substance to this objection. The evidence shows that this Anoka mill has always been an integraLpart of the great Minneapolis milling plant belonging to the Pillsbury Flour Mills Company; that it has the same machinery, is run by the same proprietors, in the same manner, grinds the same grade of wheat, is subject to the like interchange of flour and tests; that the business of the mill has always been conducted in Minneapolis by the same parties in connection with that of their other mills, and has always been considered and treated as one of the Minneapolis mills. It is situated on a tributary of the Mississippi river, about 10 miles outside the city limits, in a small suburb of the city, oply becau$ethere happened to be a water power
629
at that place. For these reasons, the public has not been deceived, because this, which is one of the smallest mills, has been practically for all purposes a Minneapolis mill, and part and parcel of the Pillsbury flouring plant in t4at city. There is nothing unusual, and it does not seem to be a material circumstance, that large manufacturing concerns carrying on business in a city should have some portion of their works outside the corporate limits; and it hardly requires the citation of authorities to the point that, where this is done, such business will be considered entitled to the same measure of protection as if carried on wholly within the corporate limits. See Kohler, TradeMarks, 291; New York & R. Cement Co. v. Coplay Cement Co., 45 Fed. 212, where it is said that all cement manufacturers in Rosendale and vicinity may rightfully call their ,manufactured article "Rosendale Cement"; Stone Co. v. Wallace, 52 Fed. 43l. As we read the opinion of the court below (see 82 Fed. 816), the injunction was refused not only because the several complainants could have no exclusive interest in the words, the use of which by defendant is complained of, as a trade-mark, but on the further ground that the misuse of these words by the defendant cannot injuriously affect anyone particular complainant, because they do not imply that any one in particular of the complainants manufactured the flour sold by the defendant. We think this ground not tenable. If the complainants were consolidated into one great business concern, this objection would be obviated, because then one corporation would manufacture all the flour made at Minneapolis, as now the several corporations complainant do. But, if such a corporation would be entitled to relief, we take it that anyone or more of the complainant corporations having a common interest in preventing the fraud will also be entitled to maintain the action. In the jud!!Illent of the court it is the com· mon every-day case of several persons having a common interest in the prevention of an irreparable injury together to obtain the desired relief. Though their interests are different in degree, they are of the same quality and kind. Any number of landowners may join together to enjoin the assessment and collection of an illegal tax upon real estate, or one or more may sue on their own behalf, and for the benefit of all others similarly situated. One landowner may own a thousand acres, and another but one. 'l'hat makes no difference so long as their grievance is of the same character, though differing in degree, as affecting different persons. So, if a person attempts to erect a nuisance of any kind upon a block of land in a city where the lots to be affected are owned by different owners, anyone may sue, or one or more may join together in asking for relief by injunction. The same principle is illustrated in the cases of common of pasturage or common of fishery, and the same rule prevails. The test is whether the parties have an interest in common in the subjectmatter of the suit as well as in the question involved; whether, to use the language of Mr. JusticeNelson in Cutting v. Gilbert, 5 BIatchf. 259, 261, Fed. Cas. No. 3,519, approved by the supreme court in Scott v. Donald, 165 U. S. 107, 116, 17 Sup. Ct. 262, "there is a community of interest growing out of the nature and condition of the right in dispute; for, although there may not be any privity between the nu-
630
86 FEDERAL, REPORTER.
"Here' each of the corporations Is not only Incorporated, but each has a distinct patrimoniallnterest in enforcing its conditions of member;:;hip,-an interest Itttaching both· to the corporati9ns as such" but also to its individual members. But, if this be so,-ifa wrong Is dolle,-:-and a title to sue exists where there is only one corporation, does it make any difference that there are here three corporations, and that the injury conslsts'in conduct which Involves a false representation of membership of one or of the three? I do not, I confess, see that this malies a difference in principle-at least assuming that, as here, the three corporations jointly complain. There may be a, difference in degree, -that is to say, there may be a difference in the degree of the injury to each body Fthink that thatisall, and I am not able to hold that that is enough. Each corporation suffers a legal wrong, greater or less, and, that being conceded, the question becomes one merely of title to sue."
merons parties, 'there is a common title out of which the question arises, and which lies at the foundation of the proceeding." In all of these cases, and many more of like kind, anyone may separately, but not jointly with another, maintain an at law, or anyone or any number together, to save multiplicity of suits, and prevent irreparable injury, may maintain a bill in equity to enjoin. The doctrine is too common to require the citation of authorities. In the examination of the cases upon the subject of fraudulent com· petition in trade we have found many like this, where both individuals and corporations having a common interest have united together to maintain the action in equity, only one or two of which we will refer to. In the case of Society of Accountants v. Corporation of Accountants, 20 Scot. Sess. Cas. (4th Series) 750, the Society of Accountants in Edinburgh, the Institute of Accountants and Actuaries in Glasgow, and Society of Accountants in Aberdeen, three several and distinct societiEJs, all incorporated by royal charter, as well as the individual members of each, joined ina suit to prevent the Corporation of Accountants, Limited, and certain of its members, from using the letters "C. A/' (chartered accountants). From the date of the incorporation of complainants these letters had been used. to designate their members, and were so understood by the pUblic. Each of the complain· ant societies consisted of a body of professional men who had associated themselves for the purpose,inter alia, of keeping up a high standard of professional education and efficiency; The court, in granting the interdict, said:
The case upon appeal was unanimously affirmed. The same rule was recognized and adopted in Northcutt v. Turney (Ky.) 41 S. W. 21.·, The the court below is reversed. and the case remanded, with, instructions to the injunction as prayed.
BA.TCHELLER v. THOMSON. (tJti'cult Court, S. NeVI' York. April 15, 1.898.) BY Two Fm»s Ul DIFFERENT. COUNTRiES·. Where a tr!ide-Wl}rk is used; QY ,a. plll)lufacturer In England. and also by a firm in the, United States in whIch he 'is, a partner; and lts use began in both places at about' the same time, and it came to identifying the article manufactured bytlie United States firm by use in '1:t,B business for many