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 he 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 the plaintiff's the defendant's would prevail. American Waltham Watch Co. v. United States Watch Co. 173 Mass. 85, 86, 87. 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 the 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. Decree to be framed overruling the plaintiff's exceptions to the master's report and enjoining the defendant from selling or offering for sale zithers like Exhibit A unless clearly marked to show that they are the product of the defendant and not the product of the plaintiff.1

NOTE ON "FUNCTIONAL

FUNCTIONAL" AND "NON-FUNCTIONAL

"CASES

The following series of cases in the United States courts in the Second Circuit preceded Shredded Wheat Co. v. Humphrey Cornell Co. They were decided by the Circuit Court of Appeals, unless otherwise indicated.

ENTERPRISE MFG. Co. v. LANDERS, 124 Fed. 923, 131 Fed. 240 (1904). Coffee-mills of characteristic shape, design, color, and ornamentation, were widely sold by the plaintiff for over twenty years. The defendant then made mills reproducing every detail, except that his name was marked instead of the plaintiff's. The sale of this "Chinese copy was enjoined, and of any other mills so resembling the plaintiff's as to be likely to cause misapprehension in the average intelligence.

1 Nims, 280; cf. Holmes, J., New England Awl Co. v. Marlborough Awl Co., 168 Mass. 154 (1897). Imitation of store-fronts, Weinstock v. Marks, 109 Calif. 529 (1895); United Cigar Stores v. United Confectioners, 92 N. J. Eq. 449 (1921). "Right to protection against simulation of physical appearance or arrangement of place of business or vehicle," 17 A. L. R. 784. On simulation of dress of merchandise and of articles, see Nims, chapters ix and x.

LACOMBE, J. "A court of equity will not allow a man to palm off his goods as those of another, whether his misrepresentations are made by word of mouth, or more subtly, by simulating the collocation of details of appearance by which the consuming public has come to recognize the product of his competitor."

MARVEL Co. v. PEARL, 133 Fed. 160 (1904). Injunction refused against the sale of a syringe so closely resembling the plaintiff's that an ordinary purchaser would not distinguish one from the other. The names were almost the same, but both were merely descriptive of the mode of operation. TOWNSEND, J. "In the absence of protection by patent, no person can monopolize or appropriate to the exclusion of others elements of mechanical construction which are essential to the successful practical operation of a manufacture, or which primarily serve to promote its efficiency for the purpose to which it is devoted. Unfair competition is not established by proof of similarity in form, dimensions, or general appearance alone. Where such similarity consists in construction common to or characteristic of the articles in question, and especially where it appears to result from an effort to comply with the physical requirements essential to commercial success and not to be designed to misrepresent the origin of such articles, the doctrine of unfair competition cannot be successfully invoked to abridge the freedom of trade competition."

YALE & TOWNE v. ALDER, 149 Fed. 783, 154 Fed. 37 (1907). The plaintiff's well-known Yale lock was copied in all external details by the defendant, except that his bore "Yap" in place of “Yale,” and his name and address on the shackle in letters of the same small size that the plaintiff used. Many of the features of the plaintiff's lock were not original with him, but he was the first to combine them. The lower court dismissed the bill, on the ground that the boxes in which the locks were sold by the half-dozen to retailers were so different that no retailer could be misled, and purchasers would not be deceived unless the court assumed a dishonest retailer selling to illiterate or inexcusably careless customers. This was reversed, because the Court of Appeals thought purchasers would be readily deceived, and retailers, though not misled, would be under a strong temptation to buy the defendant's locks at a lower price and pass them off to customers wanting the plaintiff's.

RUSHMORE V. MANHATTAN SCREW & STAMPING WORKS, 163 Fed. 939 (1908). COXE, J., reversing the District Court: "We are thus confronted with the naked question of law Can one who manufactures and sells a well-known article of commerce, like an automobile search light inclosed in a shell of graceful but unpatented design, maintain a bill for an injunction, profits and damages against a defendant who sells automobile search lights inclosed in a similar shell, with his name prominently appearing thereon as the maker, and who has never represented that his lamps were made by the complainant? We feel constrained to answer this question in the affirmative upon the authority of Enterprise Co. v. Landers and Yale & Towne v. Alder. . . . We are of the opinion, however, that to answer this question in favor of the complainant carries the doctrine of unfair competition to its utmost limit. If it be pushed

much farther those engaged in trade will be encouraged to run to the courts with trivial complaints over the petty details of business and thus will grow up a judicial paternalism which in time may become intolerable." Noyes, J., dissented. See 18 Yale L. J. 50, 554; 57 U. Pa. L. Rev. 246; E. S. Rogers, 7 Mich. L. Rev. 409. Accord, Lovell-McConnell v. American Ever-Ready, 195 Fed. 931 (1912), automobile horn; Rushmore v. Badger, 198 Fed. 379 (1912), automobile lamp; Steiff v. Bing, 206 Fed. 900 (1913), toy animals.

66

WALKER V. GRUBMAN, 222 Fed. 478 (S. D., N. Y., 1915). The color of Canadian Type Whiskey was held by LEARNED HAND, J., to be a nonfunctional" characteristic which must be changed to avoid substitution for Canadian Club. Accord, Coca-Cola v. Gay-Ola, 211 Fed. 942 (C. C. A., 6th, 1914).

CRESCENT TOOL Co, v. KILBORN & BISHOP Co., 247 Fed. 299 (1917). The plaintiff's widely advertised and sold adjustable wrench was known as the "Crescent " type. Its main structural features were all old in detail. Although no wrench of precisely the same character had been marketed, there had been other adjustable wrenches, some with a similar handle, which had also been used on other tools. The plaintiff's name was plainly printed on the handle. Two years later, the defendant began to sell a direct facsimile, except that the defendant's name was plainly printed instead of the plaintiff's. The boxes were not imitated, or the word "Crescent " used in any way in its sale. A temporary injunction granted below was reversed, for want of proof that the public bought the defendant's wrench as the plaintiff's, and not merely because they had come to like wrenches of this type. LEARNED HAND, J.: The cases of so-called 'non-functional' unfair competition, starting with the 'coffee mill case,' . . . are only instances of the doctrine of 'secondary' meaning. All of them presuppose that the appearance of the article, like its descriptive title in true cases of secondary' meaning, has become associated in the public mind with the first comer as manufacturer or source, and, if a second comer imitates the article exactly, that the public will believe his goods have come from the first, and will buy in part, at least, because of that deception. Therefore, it is apparent that it is an absolute condition to any relief whatever that the plaintiff in such cases show that the appearance of his wares has in fact come to mean that some particular person - the plaintiff may not be individually known - makes them, and that the public cares who does make them, and not merely for their appearance and structure. It will not be enough only to show how pleasing they are, because all the features of beauty or utility which commend them to the public are by hypothesis already in the public domain. The defendant has as much right to copy the non-functional' features of the article as any others, so long as they have not become associated with the plaintiff.

"In such cases neither side has an absolute right, because their mutual rights conflict. Thus the plaintiff has the right not to lose his customers through false representations that those are his wares which in fact are not, but he may not monopolize any design or pattern, however trifling. The defendant, on the other hand, may copy the plaintiff's goods slavishly down to the minutest detail; but he may not represent himself as the

plaintiff in their sale. When the appearance of the goods has in fact come to represent a given person as their source, compromise is essential, exactly as it is with the right to use the common language in cases of secondary' meaning. . . . The court must require such changes in appearance as will effectively distinguish the defendant's wares with the least expense to him; in no event may the plaintiff suppress the defendant's sale altogether. The proper meaning of the phrase 'nonfunctional' is only this: That in such cases the injunction is usually confined to nonessential elements, since these are usually enough to distinguish the goods, and are the least burdensome for the defendant to change. . . . If a case should arise in which no effective distinction was possible without change in functional elements, it would demand consideration."

SHREDDED WHEAT CO. v. HUMPHREY CORNELL CO. UNITED STATES CIRCUIT COURT OF APPEALS, SECOND CIRCUIT, 1918. [250 Federal Reporter, 960.]

Appeal by the defendant from a decree of the District Court for Connecticut. 244 Fed. 508. The jurisdiction depended upon diverse citizenship.

The plaintiff manufactures the familiar article of food, known as "Shredded Wheat Biscuit," by a process described in its basic patent, which has now expired. The wheat berry is reduced to a paste, which is shredded, and then built up by a succession of layers into a strand. This strand is cut at given intervals by knives, thus making the longer edges of the biscuit, which are matted together by the pressure. Baking then raises the top except at the matted longer edges, browns it, and hardens the biscuit; the color depends upon the manipulation of the heat and somewhat varies with the operator. An expired design patent describes the familiar shape of the biscuit, which results from the process just stated. The sales amount to hundreds of millions of biscuits each year. There has been an outlay for advertising of many millions of dollars. One of the most common forms has been pictures of the biscuit, sometimes in color. The biscuits are packed 12 in a cardboard carton bearing the plaintiff's name and Shredded Wheat Biscuit." In sales to the consumer for family use, the carton goes with the biscuits; but a large part of the business consists in sales to hotels, restaurants, lunch rooms, and boarding houses, where the biscuits reach the ultimate consumer upon saucers without any identifying mark. Also for advertising. they are displayed in restaurants and lunch rooms in large glass globes, without any sign of their source. The plaintiff contends that the mere appearance of the biscuit when out of the carton

has acquired a "secondary" meaning. To prove this, the testimony of jobbers, retailers, and consumers is undisputed that the biscuit is associated with the plaintiff, or at least with some single source, in the public mind.

The defendant is a jobber selling the biscuits of the Ross Food Co., organized by former employees of the plaintiff after the expiration of its patents. They conceived the project of manufacturing a biscuit identical in substance and appearance with the plaintiff's. The Ross carton is totally different from the plaintiff's carton, and shows two biscuits, accurate, not only as to its own contents, but necessarily identical with the plaintiff's biscuit. There was evidence of confusion.

The District Court enjoined the defendant from selling any shredded wheat biscuits without distinctly marking upon each that it was made by the defendant and was not the product of the plaintiff, and from using any cartons having a picture of such biscuit without similar marking.

#

Before WARD and HOUGH, Circuit Judges, and LEARNED HAND, District Judge.

able to sell They liked

LEARNED HAND, J. Originally the plaintiff was its biscuits because the public came to like them. their taste; they liked their appearance; they were converted by their supposititious dietetic value. The art of advertising spuriously reinforced a genuine demand by the power of reiterated suggestion. So far, however, the public was buying because it wanted, or had been made to think it wanted, the biscuit which the plaintiff produced, and so far there was no ground for any kind of protection. We have recently considered this question in Crescent Tool Co. v. Kilborn & Bishop Co.,2 and there we held that the right to appeal to the public even in the minutest details of the plaintiff's design was open to all so long as the details had acquired no "secondary" meaning. The evidence shows without contradiction, however, that the long monopoly of the plaintiff has created, as indeed it was bound to create, a state of mind more complex than this; for when one has for a long time bought from a single source some article that one likes, either through conscious reflection or through mere conservative habit, one is apt to impute to its source a part of its putative value. The plaintiff has at least shown that the public has become accustomed to regard its familiar wheat biscuit as emanating, if not from it by name, at least from a single, though anonymous, maker, and the second is as good for these purposes

1 That this single source may be anonymous to the consumer, see Birmingham Vinegar Co. v. Powell, [1897] A. C. 710; Edge v. Nicholls, [1911] A. C. 693; Crescent v. Kilborn, 119, supra.

2 This case and many of those cited are abstracted in the Note on "Functional" and " Non-functional" Cases. Citations of such cases have been omitted from this opinion.