Opinion
07-15-1901
CENTAUR CO. v. LINK et al.
John W. Wescott and Edmund Wetmore, for complainant. Rudolph Rabe, for defendants Charles W. Link and others. Walter H. Bacon, for defendant Cumberland Glass Mfg. Co.
Suit by the Centaur Company against C. W. Link and others to enjoin the manufacture and sale of "Castoria" in bottles similar to those of the complainant. Injunction granted.
John W. Wescott and Edmund Wetmore, for complainant.
Rudolph Rabe, for defendants Charles W. Link and others.
Walter H. Bacon, for defendant Cumberland Glass Mfg. Co.
REED, V. C. For 35 years the complainant has manufactured a remedy known as "Castoria." It has spent more than $100,000 a year in advertising the remedy under the name of "Castoria." Castoria was made, or purported to be made, from a formula of Dr. Pitcher, and was known as "Pitcher's Castoria." Dr. Pitcher had patented the formula for its composition. The patent has expired. The complainant owned the patent, and manufactured Castoria under its protection. Since the expiration of the patent, the defendant the C. W. Link Drug Company, has put upon the market a remedy under the name of "Castoria," in wrapped bottles in appearance and size bearing a resemblance to the wrapped bottles used by the complainant before and since the expiration of the patent. It is to enjoin this conduct of the Link Company that this bill is filed.
It was ruled in the case of Singer Mfg.Co. v June Mfg. Co., 163 U. S. 169, 16 Sup. Ct. 1002, 41 L. Ed. 118, that when the monopoly upon a patented device expired, and its use became public property, then the use of any name which had been employed to designate the device also became public property. The reasons for the adoption of this rule are stated in the opinion in that case, and need not here be restated. It is sufficient to say that this doctrine is entirely established. After an exhaustive examination of the authorities, Mr. Justice White, in the Singer Case, states the English, French, and American doctrine in the following language: "Where, during the life of a monopoly created by a patent, a name, whether it be arbitrary, or be that of the inventor, has become, by his consent, either express or tacit, the identifying and generic name of the thing patented, this name passes to the public with the cessation of the monopoly which the patent created." It was therefore held that the word "Singer," under which name the. Singer Company had manufactured and designated the sewing machine manufactured by them under the protection of several patents, upon the expiration of the patents became public property. Following this case, it was held in the case of Centaur Co. v. Heinsfurter, 28 C. C. A. 581, 84 Fed. 955, that, after the expiration of the patent granted to Dr. Pitcher, the right to manufacture and sell his medicine under the name of "Castoria" became public. The right of any one, other than the owner and manufacturer under the patent, to use the name of "Castoria," is not, however, unfettered. It must be used so as to indicate that the thing which it designates is manufactured by some one other than the original manufacturer. Mr. Justice White states this restriction in his opinion in the Singer Case. He says: "Where another avails himself of this dedication to make the machine and use the generic dedication, he can do so in all forms, with the fullest liberty, by affixing such name to the machines, by referring to it in advertisements, and by other means, subject, however, to the condition that the name must be so used as not to deprive others of their rights or to deceive the public, and therefore that the name must be accompanied with such indications that the thing manufactured is the work of the one making it as will unmistakably inform the public of that fact." The question is whether the defendant, in selling its goods under the name of "Castoria," has conformed to the condition mentioned.
After the expiration of the patents taken out by Dr. Pitcher, a swarm of manufacturers put upon the market goods under the name of "Castoria." The lavish advertisements of the remedy under that name, coupled, possibly, with its remedial merits, opened an extensive market for its sale. For years it had been bought simply as "Castoria." It was made by one firm, and that name upon the bottle was a guaranty to purchasers that they were getting a well-known remedy, made by this one firm, namely, the Centaur Manufacturing Company. A purchaser seeing the name of "Castoria," printed in letters of the same size and color, upon a bottle of the same size and form, with a similar wrapper, would not critically examine, nor be impressed with a slight difference in other respects. The compound of the Link Drug Company is put up in two-counce paneled bottles, so nearly similar in size and appearance with those of complainant as to present no substantial difference. The words "Castoria" are printed in similar and conspicuous type, the only difference being in the first and last letters,—a difference not calculated to attract attention,—and in the fact that the name upon complainant's bottle is slightly curved, and in the defendants' bottle straight; this also being a difference which would not arouse the attention of an unsuspecting purchaser. Upon both is the formula of Dr. Pitcher. Over the complainant's formula are the words, "Receipt of Old Dr. Pitcher," in small type, and over the formula of the Link Drug Company bottles, "Formula of Old Dr. Pitcher," in large letters. The remainder of the printed matter differs in form, and somewhat in substance, and upon defendants' label is the picture of a beehive, with the word "Trade" upon one side of it, and "Mark" upon the other. On the bottom of the complainant's label is the name of Charles H. Fletcher in small letters. Upon the label of the Link Company, in large letters, are the words, "0. W. Link Drug Co." The label of the complainant is made of slightly-tinted white paper, and that of the Link Drug Company of white paper; but, unless placed together, the difference in color is not perceptible.
There are several reported cases in which this complainant has secured an injunction against manufacturers of a remedy put upon the market under the name of "Castoria." In Centaur Co. v. Neathery, 34 C. C. A. 118, 91 Fed. 891, the defendant used bottles and labels which only differed from those of the complainant in the name of the manufacturer. The circuit court of appeals for the Fifth district reversed the order of the circuit court refusing an injunction, and remanded the case, with instruction to grant a preliminary injunction restraining the defendant from selling any preparation in or under any package or label containing any word, or combination of words, calculated to create confusion in the mind of the public with the labels and designs used by the complainant. A similar result was reached by the same court in the case of Centaur Co. v. Hughes Bros. Mfg. Co., 34 C. C. A. 127, 91 Fed. 901, in which case the label employed by the defendant and complainant differed more than in the preceding case, but were generally similar. In Centaur Co. v. Killenberger(C. C.) 87 Fed. 725, Judge Kirkpatrick, of the New Jersey district court, enjoined a defendant from using a label because it had a tendency to deceive and was designed to deceive. In delivering judgment the court remarked: "While it is true that, upon actual comparison of the wrappers side by side, substantial differences will be found, and that no one with knowledge would, after such examination, be deceived, still it will be perceived at once, upon a mere inspection of the packages, that they are so much alike in general comparison that the one is apt to be mistaken for the other, and that a close inspection is necessary to distinguish them." This conclusion of Judge Kirkpatrick was approved in the case of Centaur Co. v. Neathery, supra. An injunction was also decreed by Judge Baker, sitting in the circuit court for the district of Indiana, in the case of Centaur Mfg. Co. v. Robinson (C. C.) 91 Fed. 889. In speaking of the duty of a manufacturer who puts upon the market a well-known remedy, the court remarked: "Where an article that costs but a few cents is offered upon the market, it is a matter of common knowledge that an intended purchaser pays little or no attention to it. He sees the name 'Castoria,' and whether it is the Castoria of the complainant or that of the defendant is a question which does not, by reason of the small value of the purchase, engage his attention. Unless there is some such marked dissimilarity as that, being acquainted with the complainant's form of putting up its Castoria, it would at once arouse his suspicion, the intended purchaser would be readily deceived into making a purchase of an article that he really did not intend to buy."
In the present case, notwithstanding the difference in the printed matter on the labels, I am unable to resist the conclusion that the size and shape of the bottles and the color and form of the label were selected by the defendants for the purpose of leading some purchasers to take their compound under the supposition that they were getting what they had always got, namely, the medicine made by the complainant. A purchaser whose attention had been called to the fact that there was a number of preparations being sold under the name of "Castoria," and that "Fletcher" was the old one, would probably not be deceived by the general appearance of the Link Company bottle and wrapper. As to a purchaser, however, who was not aware of the fact that preparations of other manufacturers were upon the market under the same name, the general appearance of the bottle and wrapper was undoubtedly calculated to lead him to believe that he was getting the old Castoria. I am convinced that few persons, however long they may have used a proprietary medicine, have examined the bottles so carefully as to be able to recall much of the printed matter upon them. Their familiarity with the bottles and wrappers is limited to their size and general appearance, and possibly with the words most strikingly displayed. The use of bottles of the same size and shape, and of labels of the same form and color, and of the word "Castoria" printed in letters substantially the same in size and shape, were calculated to mislead a purchaser into the belief that he was getting the Castoria which had, year after year, been in the market in similar packages. Every one of the numerous packages of other manufacturers put in evidence by the defendants shows a persistent adoption of the size of the bottle and the label of the complainant. All these manufacturers knew, just as the defendants knew, that if the remedy was put up in round bottles, or in bottles distinctively larger or smaller, or if the bottles were so differently wrapped as to at once arrest the attention of the casual purchaser, the sale of the remedy in such packages would at once become substantially reduced. The differences Introduced by the defendants were such as, it was thought, would be sufficient to evade an injunction, while not sufficient to arrest the attention of the majority of the purchasers. In my judgment, it was the duty of the defendants to make it clear to the purchaser that the remedy manufactured by them was not the remedy manufactured by the complainant under the name of "Castoria." This they did not do. There should be an injunction against them.
In addition to the injunction asked for against the manufacturers and vendors, there is also asked a writ against the Cumberland Glass Manufacturing Company for making the bottles for the vendors of the remedy. I do not think, under the evidence, an injunction should go against this company.