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of the plaintiff's instrument. 3. The master erred in not finding that the defendant had no right to make, sell, or offer for sale instruments simulating the plaintiff's instruments as to arrangement and spacing of strings, bridges, and tuning pins, and also as to style of body. 4. The master erred in not finding that the defendant's instruments are simulations of the plaintiff's, and that the defendant has no right to make, sell, or offer for sale such simulations. 5. The master erred in find- . ing that defendant has a right to make, sell, and offer for sale simulations of the plaintiff's instrument on condition that such simulations are clearly and unmistakably marked so as to indicate in some way that they are the product of the defendant and not the product of the plaintiff.

After a hearing upon these exceptions, the Superior Court made the following decree:

"And now this cause came on to be further heard at this sitting upon the coming in of the master's report and exceptions thereto filed by the plaintiff, and was argued by counsel, and thereupon, upon consideration thereof, no exceptions having been taken to any findings of fact made by the master, it is ordered, adjudged, and decreed that the first and second exceptions be overruled, and that the third, fourth, and fifth exceptions to the master's rulings as matter of law be sustained; and that an injunction issue perpetually restraining and enjoining the defendant, his agents and servants, from selling, offering for sale, or disposing of any zither or zithers like the zither made and sold by the plaintiff and known as Regent Zither No. 5 and being Exhibit B of the plaintiff's bill, or in any form calculated or intended to pass off or to enable others to pass off such zither or zithers as and for the zither or zithers of the plaintiff and known as Regent Zither No. 5; and that the plaintiff recover its costs of suit to be taxed by the clerk and that execution issue therefor in common form."

From this decree the defendant appealed to this Court.

C. H. Welch, for the defendant.

J. E. Maynadier, for the plaintiff.

HOLMES, C. J. This is a bill brought to restrain the defendant from selling zithers which imitate the plaintiff's, or with strings arranged and spaced as the plaintiff's strings are arranged and spaced, and specifically to restrain it from selling a particular form of zither heretofore sold by it and exhibited by the bill. The case was sent to a master, who reported what is manifest on inspection, when the time of the respective manufactures is known, that the defendant deliberately copied the plaintiff's instrument in all essential and many non-essentail details, adding that this was done for a wrongful purpose. The Superior Court made a decree for the plaintiff, in terms almost as broad as the prayers of the bill, and the defendant appealed.

We are of opinion that the decree was wrong in principle. Both zithers are adapted for the use of patented sheets of music, but the zithers are not patented. Under such circumstances the defendant has

the same right that the plaintiff has to manufacture instruments in the present form, to imitate the arrangement of the plaintiff's strings or the shape of the body. In the absence of a patent the freedom of manufacture cannot be cut down under the name of preventing unfair competition. Stamping Co. v. Fellows, 163 Mass. 191, 40 N. E. 105, 28 L. R. A. 448. See Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169, 16 Sup. Ct. 1002, 41 L. Ed. 118. All that can be asked is that precautions shall be taken so far as are consistent with the defendant's fundamental right to make and sell what it chooses, to prevent the deception which no doubt it desires to practise.

It is true that a defendant's freedom of action with regard to some subsidiary matter of ornament or label may be restrained, although a right of the same nature with its freedom to determine the shape of the articles which it sells. But the label or ornament is a relatively small and incidental affair, which would not exist at all, or at least would not exist in that shape, but for the intent to deceive; whereas the instrument sold is made as it is, partly at least, because of a supposed or established desire of the public for instruments in that form. The defendant has the right to get the benefit of that desire even if created by the plaintiff. The only thing it has not the right to steal is the good will attaching to the plaintiff's personality, the benefit of the public's desire to have goods made by the plaintiff. Probably if there were an absolute conflict between the defendant's right as we have stated it and that of the plaintiff's, the defendant's would prevail. American Waltham Watch Co. v. United States Watch Co., 173 Mass. 85, 86, 87, 53 N. E. 141, 43 L. R. A. 826. But the plaintiff's right can be protected sufficiently by requiring the defendant's zithers to be clearly marked so as to indicate unmistakably that they are the defendant's and not the plaintiff's goods. This is the relief which the master found to be proper, and we are of opinion that he was right. To go further is to save the plaintiff from a competition from which it has no right to be exempt. Decree reversed.1

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1 [ESSAYS:

Grafton Dulany Cushing, "On Certain Cases Analogous to Trade-Marks." (H. L. R., IV, 321.)

Rowland Cox, "The Prevention of Unfair Competition in Business." (H. L. R., V, 139.)

E. R. Coffin, "Fraud as an Element of Unfair Competition." (H. L. R., XVI, 272.)

NOTES:

"Extent of property right in a trademark" (note). (A. L. Reg. 57, o. s., 251.)

"Unfair competition." (C. L. R., III, 494; V, 63.)

"Trademarks: Nature of the right." (C. L. R., V, 401.)

"Protection of trade names: Development." (C. L. R., VII, 120.)

"Unfair competition: Designation of department of a business." (C. L. R., VII, 221.)

SUB-TOPIC B.

IMITATION OF REGISTERED TRADEMARK (BY
STATUTE)

173. STATUTES AT LARGE OF THE UNITED STATES OF AMERICA. An Act to authorize the Registration of Trademarks used in Commerce with foreign Nations or among the several States or with Indian tribes, and to protect the same. (St. Feb. 20, 1905, c. 592; 33 Stats. 724; supplanting St. July 8, 1870, and St. March 3, 1881.) Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled:

That the owner of a trademark used in commerce with foreign nations or among the several States, or with Indian tribes, provided such owner shall be domiciled within the territory of the United States, or resides in or is located in any foreign country which, by treaty, convention, or law, affords similar privileges to the citizens of the United States, may obtain registration for such trademark, by complying with the following requirements: First, by filing in the Patent Office an application therefor, in writing, addressed to the Commissioner of Patents, signed by the applicant, specifying his name, domicile, location, and citizenship; the class of merchandise and the particular description of goods comprised in such class to which the trademark is appropriated; a description of the trademark itself, and a statement of the mode in which the same is applied

"Basis of action for unfair competition." (H. L. R., II, 19-27; VI, 156; X, 56, 447; XI, 405; XII, 285; XV, 440-445.)

"Deceptive use of words or symbols associated with rival business." (H. L. R., V, 139-145; X, 286-295.)

"Fraudulent imitation of store front." (H. L. R., IX, 363.) "Fraudulent imitation of wares."

XVI, 272-290.)

(H. L. R., IX, 291; X, 282–286, 377;

“Trademarks and unfair trade." (M. L. R., V, 187.)

The following cases illustrate the application of the principle to imitations of well-known products. Pillsbury v. Pillsbury-Washburn Mills Co., 1895, C. C A., 64 Fed. 841, and Pillsbury-Washburn Flour Mills Co. v. Eagle, 1898, C. C. A., 86 Fed. 608 (Minneapolis flour); Fuller v. Huff, C. C. A., 1900, 104 Fed. 141 (Battle Creek health food); Carlsbad v. Kutnow, 1895, 68 Fed. 795 (Carlsbad salts); Bauer v. Société, 1903, C. C. A., 120 Fed. 74; Bauer v. Order of Carthusians, ib. 78; Bauer v. Siegert, ib. 83 (the liqueurs Benedictine and Chartreuse, and the bitters Angostura); Saxlehner v. Eisner & Mendelson Co., 1898, 88 Fed. 61, and 21 Sup. 8 (Hunyadi water); Fairbank v. Bell Mfg. Co., 1896, 77 Fed. 875, 102 Fed. 327 (Gold Dust soap); Potter D. & C. Co. v. Pasfield S. Co., 1900, 102 Fed. 490 (Cuticura soap); La Republique Francaise v. Schultz, 1900, C. C. A., 102 Fed. 153 (Vichy water).

CHAPTERS ON THE JURAL NATURE AND ETHICAL BASIS OF THIS RIGHT: Herbert Spencer, "Justice," c. XIII, The Right of Incorporeal Property, §§ 58-61.

Henry T. Terry, "Some Leading Principles of Anglo-American Law," c. XI, § 357, p. 344, § 402, p. 389.

Thomas E. Holland, "Elements of Jurisprudence," c. XI, par. V, p. 198. John W. Salmond, "Jurisprudence,” § 157.

Sheldon Amos, "A Systematic View of the Science of Jurisprudence," c. X, par. E, p. 161.

and affixed to goods, and the length of time during which the trademark has been used.

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Sec. 2. That the application prescribed in the foregoing section, be accompanied by a written declaration verified by the applicant, .. that no other person, firm, corporation, or association, to the best of the applicant's knowledge and belief, has the right to such use, either in the identical form or in such near resemblance thereto as might be calculated to deceive. . . .

Sec. 5. That no mark by which the goods of the owner of the mark may be distinguished from other goods of the same class shall be refused registration as a trademark on account of the nature of such mark unless such mark — (a) Consists of or comprises immoral or scandalous matter; (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or any simulation thereof, or of any State or municipality, or of any foreign nation: Provided, That trademarks which are identical with a registered or known trademark owned and in use by another, and appropriated to merchandise of the same descriptive properties, or which so nearly resemble a registered or known trademark owned and in use by another, and appropriated to merchandise of the same descriptive properties, as to be likely to cause confusion or mistake in the mind of the public, or to deceive purchasers, shall not be registered: Provided, That no mark which consists merely in the name of an individual, firm, corporation, or association, not written, printed, impressed, or woven in some particular or distinctive manner or in association with a portrait of the individual, or merely in words or devices which are descriptive of the goods with which they are used, or of the character or quality of such goods, or merely a geographical name or term, shall be registered under the terms of this act: Provided further, That no portrait of a living individual may be registered as a trademark, except by the consent of such individual evidenced by an instrument in writing: And provided further, That nothing herein shall prevent the registration of any mark used by the applicant or his predecessors, or by those from whom title to the mark is derived in commerce with foreign nations or among the several States, or with Indian tribes, which was in actual and exclusive use as a trademark of the applicant or his predecessors from whom he derived title for ten years next preceding the passage of this act. . . .

Sec. 12. That a certificate of registration shall remain in force for twenty

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Sec. 16. That the registration of a trademark under the provisions of this act shall be prima facie evidence of ownership. Any person who shall, without the consent of the owner thereof, reproduce, counterfeit, copy, or colorably imitate any such trademark and affix the same to merchandise of substantially the same descriptive properties as those set forth in the registration, or to labels, signs, prints, packages, wrappers, or receptacles intended to be used upon or in connection with the sale of merchandise of substantially the same descriptive properties as those set forth in such registration, and shall use, or shall have used, such reproduction, counterfeit, copy, or colorable imitation in commerce among the several States, or with a foreign nation, or with the Indian tribes, shall be liable to an action for damages therefor at the suit of the owner thereof.

...

Sec. 23. That nothing in this act shall prevent, lessen, impeach, or avoid any remedy at law or in equity which any party aggrieved by any wrongful use of any trademark might have had if the provisions of this act had not been passed. . . . Sec. 28. That it shall be the duty of the registrant to give notice to the public

that a trademark is registered, either by affixing thereon the words "Registered in U. S. Patent Office," or abbreviated thus, "Reg. U. S. Pat. Off." or when, from the character or size of the trademark, or from its manner of attachment to the article to which it is appropriated, this cannot be done, then by affixing a label containing a like notice to the package or receptacle wherein the article or articles are inclosed; and in any suit for infringement by a party failing so to give notice of registration no damages shall be recovered, except on proof that the defendant was duly notified of infringement, and continued the same after such notice.

174. ANNOTATed Code of thE STATE OF IOWA. Cheating by False Pretences. (1897. Tit. 24, ch. 13, §§ 5049, 5050.) Every person, or association or union of working men or others, that has adopted or shall adopt for their protection any label, trademark or form of advertisement may file the same for record in the office of the secretary of state by leaving two copies, counterparts or facsimiles thereof with the secretary of state. . . .

Every person, association or union adopting a label, trademark or form of advertisement, as specified in the preceding section, may proceed by action to enjoin the manufacture, use, display or sale of any counterfeits or imitations thereof.

Labels

175. REVISED LAWS OF THE COMMONWEALTH OF MASSACHUSETTS. and Trademarks. (1902. Ch. 72.) Section 2. When a person uses any peculiar name upon or connected with an article manufactured or sold by him to designate it as an article or a peculiar kind or quality, or as manufactured by him, no other person shall without his consent use the same or any similar name for the purpose of falsely representing an article to have been manufactured by or to be of the same kind or quality as those manufactured or sold by the person rightfully using such name.

Sec. 3. Whoever violates the provisions of the preceding section, and whoever knowingly sells or exposes for sale an article having a name upon or connected with it in violation of the provisions of the preceding section, shall be liable in an action of tort to any party aggrieved thereby for all damages actually incurred.

Sec. 7. Any person may adopt a label, not previously owned or adopted by any other person, and file such label for record, by depositing two copies or fascimiles thereof in the office of the secretary of the Commonwealth. . . .

Sec. 9. The Supreme Judicial Court or the Superior Court shall have jurisdiction in equity to restrain the manufacture, use or sale of counterfeits or imitations of a label, recorded as provided in section seven, shall award damages resulting from such wrongful manufacture, use or sale and shall require the defendant to pay the owner of such label the profits derived from such wrongful manufacture, use or sale.1

1 [Consult the following Report:

Commissioners appointed to revise the Statutes relating to Patents, Trade and other Marks, and Trade and Commercial Names, Report, under U. S. St., June 4, 1898 (U. S. Sen. Doc. 20, 56th Cong., 2d Sess., Washington, 1900).]

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