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imposition and fraud will be afforded by the courts, while at the same time it may not be susceptible of registration as a trade-mark under the act of Congress of March 3, 1881 [21 Stat. 502, c. 138, U. S. Comp. St. 1901, p. 3401]."
In the opinion the court said:
"In other words, the manufacturer of particular goods is entitled to the reputation they have acquired, and the public is entitled to the means of distinguishing between those and other goods: and protection is accorded against unfair dealing, whether there be a technical trade-mark or not. The essence of the wrong consists of the sale of the goods of one manufacturer or vendor for those of another. * But where an alleged trademark is not in itself a good trade-mark, yet the use of the word has come to denote the particular manufacturer or vendor, the relief against unfair competition or perfidious dealing will be awarded by requiring the use of the word by another to be confined to its primary sense, by such limitations as will prevent misapprehension on the question of origin. In the latter class of cases such circumstances must be made out as will show wrongful intent in fact, or justify that inference from the inevitable consequences of the act complained of."
Citing Lawrence M. Co. v. Tennessee M. Co., 138 U. S. 537, 549, II Sup. Ct. 396, 34 L. Ed. 997; Coats v. Merrick Thread Co., 149 U. S. 562, 13 Sup. Ct. 966, 37 L. Ed. 847; Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169, 16 Sup. Ct. 1002, 41 L. Ed. 118.
This being true of a mere geographical name-the name of a place where the business is carried on or the goods are made-how much more ought the same principle to apply in the case of the name of the manufacturer or vendor of an article!
It, of course, stands to reason, and is in accord with common sense, that no man can be compelled to forego the use of his own name in carrying on his business. That is not what the courts have done or attempted to do. This is not attempted in this case. But the courts have and will, in a proper case, direct two persons of the same name, or doing business in the same place, to so use their names, or the name of the place, as to prevent the one from intentionally injuring the legitimate and established business of the other, or deceiving the public as to the origin of the goods they are purchasing or using. If the defendant is willing to rely on the merits and reputation of his own goods, he should be willing to label, mark, and advertise them as the goods or manufactures of "J. Eberhard Faber," or "John E. Faber," or "Eberhard Faber" (the name of his house); and there is no necessity, if honest competition is the intention, for using the mere ivitial "E." in connection with the word "Faber." It must always be remembered in this connection that the house of "A. W. Faber" established the lead pencil business not only in Europe, but in the United States, and that Eberhard Faber, the father of the defendant, and brother of Baron von Faber (plaintiff's predecessor), was merely the agent of the house of A. W. Faber, and that until 1895 or 1896 the defendant was merely agent, having the right to make and sell some inferior grade of domestic pencils on his own account. The defendant has no right to the name "Faber," but, as he succeeded his father, it is not improper to allow him the use of the name "Eberhard Faber," although that is not his full name. That is the name of defendant's house, as "A. W. Faber" is the name of complainants' house.
In this connection it may be well to call attention to Allen B. Wrisley Co. v. Iowa Soap Co. (C. C. A.) 122 Fed. 796, and the cases there cited, although the case declares no new principle. In Royal Baking Powder Co. v. Royal (C. C. A. 6th Circuit, March 16, 1903) 122 Fed. 337, we have another decision relating directly to confusion, etc., unfair competition, growing out of the use of the same name, and the power and duty of the court in such cases.
It has been intimated and suggested that the confusion has resulted largely from the acts and conduct of the complainant, or complainant house. If this were true, or such confusion was contributed to by complainant, the court would deny relief. Worden v. California Fig Syrup Co., 187 U. S. 516, 23 Sup. Ct. 161, 47 L. Ed. 282. That is a trade-mark case, but the same principle should apply here. But this court cannot find evidence that the complainant house is at all responsible for the existing conditions, unless it be said that, desiring to avert family litigation, it allowed the defendant too much time, "too much rope," during which he grew bolder and more aggressive, instead of desisting from conduct calculated to confuse and mislead the public,
In R. W. Rogers Co. et al. v. William Rogers Manufacturing Co., 70 Fed. 1017, 17 C. C. A. 576, the headnote is:
"A corporation which, by arrangement with one R. W. R., takes his name, and stamps it upon articles sold by it, with the purpose of inducing the public to think that in purchasing such articles they are purchasing the product of another 'R' Company of established reputation, will be restrained from using such stamp."
In the opinion of Shipman, C. J., he says:
"There cannot be much controversy in regard to the aspect with which the law regards the state of facts disclosed in the affidavits. The fair and honest use of a person's own name in his ordinary and legitimate business, although to the detriment of another, will not be interfered with. A tricky, dishonest, and fraudulent use of a man's own name for the purpose of deceiving the public, and of decoying it to a purchase of goods under a mistake or misapprehension of facts, will be prevented. Every case under this branch of the law of trade-marks turns upon the question of false representation or fraud. In this case Rogers helped to establish a corporation which took his name for the purpose of inducing the public to think that they were buying the well-known Rogers goods, and for the purpose of surreptitiously obtaining the advantage of the good reputation which other manufacturers had given to articles stamped with that name. The use by the defendant corporation of this name is not merely an injury to the complainant, but it is an intentional fraud upon the public. The difference in the result with which a court of equity follows an honest and a dishonest use of one's own name, although each use injured the person who had honestly acquired a use of the name as a trade-name, is shown in the valuable cases of William Rogers Mfg. Co. v. Rogers & Spurr Mfg. Co. [C. C.] 11 Fed. 498, and Same v. Simpson, 54 Conn. 527 [9 Atl. 395], where, as well as in Rogers v. Rogers, 53 Conn. 121, 1 Atl. 807, 5 Atl. 675 [55 Am. Rep. 78], a large number of reported cases upon this portion of the law of trade-marks are collected."
There is nothing in Rogers v. William Rogers Mfg. Co., 70 Fed. 1019, 17 C. C. A. 576, to conflict with the three cases cited. In Wyckoff et al. v. Howe Scale Co. (C. C.) 110 Fed. 520, it was held:
"Plaintiffs acquired from the original manufacturers of Remington typewriters the sole right to use the name 'Remington' as a name for typewriters.
Thereafter descendants of the original manufacturers, also named 'Remington,' became members of a corporation making a typewriter under the name of 'Sholes,' when the name was changed to the 'Remington-Sholes.' Held that, since ultimate purchasers of typewriters might be led to think that the addition of the name 'Sholes' was a new style of the old machine, coming from the same source, such use of the name 'Remington' was an attempt to deceive the public and unwarranted. No special right to use a family name which has become a trade-mark applied to a manufactured article accrues by virtue of the relation which descendants bear to the original manufacturer of the same name, such descendants being entitled to no other than their natural rights to use their own names in the transaction of their own business."
This would seem to dispose of the claim of the defendant that he has inherited the right in any manner to use the name "Faber" as he pleases, when such use interferes with the right of the complainIn Enoch Morgan's Sons Co. v. Whittier-Coburn Co. (C. C.) 118 Fed. 657, held:
"It is within the discretion of the court to enjoin an imitation of another's goods in the matter of form, color, or lettering of packages, when it is proven directly, or by strong inferential evidence, that the imitation was willfully made, or when such imitation, though innocently made, results in damage to the one whose rights are infringed. A manufacturer who so dresses his
goods as to enable retail dealers to sell them to customers as those of a competitor earlier in the market is chargeable with unfair competition, although he is careful himself to sell them as his own."
In Walter Baker Co. v. Baker (C. C.) 77 Fed. 181, it is held:
"A man has a right to use his own name in connection with any business he honestly desires to carry on, but he will not be allowed to use it in such a way as to injure another having the same name; and, to prevent such injury, equity will direct him how he shall use his name to denote his own individuality. The court cannot give great weight to mere denials by defendant of any intent to infringe, but will deduce his intent from his acts. One who enters into competition with another person of the same name, who has an old and established business, is under an obligation to more widely differentiate his goods from those of the latter than is required of third persons having different names."
Meyer v. Mcdicine Co., 58 Fed. 884, 7 C. C. A. 558, and Landreth v. Landreth (C. C.) 22 Fed. 41, and Pillsbury v. Flour Mills, 64 Fed. 841, 12 C. C. A. 432, are instructive cases on the subject of the use of the same name by competitors in trade and in manufacture.
It does not seem necessary to cite further authority in this case. In this country the law preventing unfair competition in trade has been of slow growth, but the doctrine stated in the most recent of the preceding cases appears to be firmly established. This court agrees with the principles there laid down. The complainant in this case is not a resident of this country, while the defendant is. This makes no difference, however. The complainant has the right to carry on business here, and, while conforming to our laws, is entitled to their protection.
The complainant is entitled to a decree enjoining and restrainirg the defendant from using the name "Faber" alone as applied to pencils or rubber stationer's goods, and from using the name "Faber Pencil Company," or "E. Faber Pencil Company," and from making, selling, or causing to be made or sold, or advertising, or caus
ing to be advertised, any lead pencils, erasive rubber, or rubber bands, bearing thereon, or on the labels, wrappers, boxes, or other coverings affixed thereto, or in which the same are contained, either stamp lettering or other marks containing the name "Faber," or "Faber Pencil Co.," or "E. Faber Pencil Co.," or any like or similar designation in which the name "Faber" is used without the prefix "Eberhard," or "John E.," or "J. Eberhard," but the defendant may use the word "Faber" with either of said prefixes, as he may elect. This court at this time, and under the evidence, is of the opinion that injunctive relief to this extent is all that the complainant is entitled to, and all that is necessary. This court is of the opinion that it would not be justified in enjoining or restraining the defendant from using such colored wrappers as he may elect or see fit to use, or from putting up his pencils in such form of packages as he desires to use. See Globe-Wernicke Co. v. Fred Macey Co. (C. C. A.) 119 Fed. 696.
The defendant has no right, in advertisements, to represent himself as the successor to the house of A. W. Faber, or as in any way representing it. He never had any connection with it, except as sole agent. The complainant is entitled to an accounting and to a judgment for such damages as it may show. The court will make some provision as to goods now on hand bearing the name "E. Faber."
The decree may be settled before me on October 6, 1903, at Auburn, N. Y., or at such prior time and other place as may be agreed upon by the parties.
DE PASS et al. v. BIDWELL, Collector.
(Circuit Court, S. D. New York. August 14, 1903.)
1. CUSTOMS DUTIES-IMPORTATIONS FROM PORTO RICO-FORAKER ACT.
Section 5 of the Foraker act, providing a temporary government and revenues for Porto Rico (Act April 12, 1900, c. 191, 31 Stat. 77), which provides that on and after the day of its taking effect all goods, wares, and merchandise previously imported from Porto Rico, for which no entry has been made, or entered without payment of duty, and under bond for warehousing, etc., shall be subject to the duties imposed by the act upon the entry or withdrawal thereof, is constitutional; and goods brought from Porto Rico after its cession, and when there was no duty thereon in force, and voluntarily placed and allowed to remain in a bonded warehouse by the owner until after such act went into effect, became subject to the duty thereby imposed when withdrawn for consumption.
2. CONSTITUTIONAL LAW-Ex POST FACTO LAWS.
The constitutional prohibition against ex post facto laws applies only to criminal or penal statutes.
This action is brought against George R. Bidwell to recover the sum of $2,500.97, with interest on various amounts thereof from the times they were paid, and which sums, it is claimed, were illegally collected by the defendant from the plaintiffs as duties on certain su
12. See Constitutional Law, vol. 10, Cent. Dig. § 551.
gars brought from the island of Porto Rico to the United States, and which sugars were received at the port of New York June 24, 1899. John David Lannon, for plaintiffs.
Henry L. Burnett, U. S. Atty., and Henry C. Platt, Asst. U. S. Atty., for defendant.
RAY, District Judge. The vessel Lilian Woodruff sailed from the port of Areceibo, Porto Rico, June 12, 1899, and arrived at the port of New York, U. S. A., June 24, 1899. She brought as part of her cargo certain sugars consigned to A. S. Lascelles & Co., the plaintiffs. When the vessel arrived at New York, the sugars were put in bonded warehouses; the warehouse's entry being No. 101,121, and the bond No. 54,386. The entry was liquidated November 14, 1899, and duties assessed, it is asserted, under the provisions of the Dingley tariff act (Act July 24, 1897, c. 11, 30 Stat. 151 [U. S. Comp. St. 1901, p. 1626]). June 6, 1900, the entry was reliquidated, and duties were reassessed under the provisions of the Porto Rican act, commonly known as the "Foraker Bill" (Act April 12, 1900, 31 Stat. 77, c. 191). Due protest was made against the imposition of any and all duties. These sugars were withdrawn from time to time, and duties paid thereon as follows: About June 30, 1900, the sum of $332.99; about August 2, 1900, the sum of $2,166.79; about August 8, 1900, the sum of $1.19. George R. Bidwell was collector of the port of New York at all the times mentioned.
The allegations of the complaint, so far as material here, are as follows:
"First. That at all the times hereinafter mentioned the said defendant was the duly appointed and commissioned collector of customs of the United States at the port of New York, in the actual and unrestricted exercise of his functions as such collector, and fully vested with all the powers and authority of his said office.
"Second. That the defendant, being such collector as aforesaid, did, under color of his said office, and through the erroneous exercise of the powers and authority in him vested for the performance of his duties as such collector, unlawfully demand, and by duress of goods collect, from the said plaintiffs, said firm of A. S. Lascelles & Co., as alleged duties upon certain sugars, the product of the island of Porto Rico, consigned to these plaintiffs at the port of New York, and brought thither from the port of Areceibo, in the said island, by the vessel Lilian Woodruff, which said vessel sailed from the said port of Areceibo at or about June 12, 1899, and arrived at the port of New York at or about June 24, 1899 (the said sugars being those mentioned and described in warehouse entry No. 101,121, bond No. 54,386, liquidated November 14, 1899, reliquidated June 6, 1900), the sum of twentyfive hundred dollars and ninety-seven cents ($2,500.97). The said sum was exacted from these plaintiffs in the amounts and at the times following: On or about June 30, 1900, the sum of three hundred thirty-two dollars and ninety-nine cents ($332.99); on or about August 2, 1900, the sum of two thousand one hundred sixty-six dollars and seventy-nine cents ($2,166.79); on or about August 8, 1900, the sum of one dollar and nineteen cents ($1.19)which sum plaintiffs were unlawfully and against their will, and in spite of their formal protest, duly made, and compelled to pay, and did pay, in order to obtain possession of the said sugars, to which they were entitled, but which he, enabled so to do by the power and authority of his said office, had detained, was detaining, and threatened to continue to detain from them, exacting as a condition of the delivery thereof such payment of said alleged duties, whereas the said sugars were not liable to duty, the same not having