CLINTON E. WORDEN & CO. v. CALIFORNIA FIG SYRUP CO.(1903)
[187 U.S. 516, 517] On June 1, 1897, the California Fig Syrup Company, created under the laws of the state of Nevada, and having its principal place of business in San Francisco, California, filed a bill in equity in the circuit court of the United States for the northern district of California, against Clinton E. Worden & Company, a corporation of the state of California, and against J. A. Bright, T. F. Bacon, C. J. Schmelz, and Lucius Little, citizens of the state of California.
The bill alleged that, in the year 1879, one Richard E. Queen invented 'a certain medical preparation or remedy for constipation and to act upon the kidneys, liver, stomach, and bowels, which medical compound is a combination in solution of plants known to be beneficial to the human system, forming an agreeable and effective laxative to cure habitual constipation and many ills, depending upon a weak and inactive condition of the liver, kidneys, stomach, and bowels;' that shortly after the said invention the said Queen sold and transferred all his right, title, and interest in and to said medical compound, and in and to the trade name, trade-marks, and good will of said company to the complainant company, which has ever since been engaged in the manufacture and sale of said medical preparation or remedy; that said medical preparation has always been marked, named, and called by the complainant 'Syrup of Figs,' that name being printed or otherwise marked upon every bottle, and also printed upon the boxes, packages, or wrappers in which the bottles of the preparation were packed for shipment and sale; that the complainant and its said predecessor in interest were the first to pack and dress or mark a liquid laxative preparation in the manner illustrated by exhibits 'A' and 'B' attached to the bill,-that is to say, in an oblong, rectangular box or carton, with statements of the virtues of the preparation printed in different languages upon the bank and sides of the [187 U.S. 516, 518] carton, and on the border within which, at the top, is a represenation of a branch of a fig tree, bearing fruit and leaves, surrounded by the words 'Fig Syrup Company,' or 'California Fig Syrup Company,' and below which appear, in large letters, the words 'Syrup of Figs,' and below these last- named words appears a brief statement of the virtues of this preparation, together with the words 'Manufactured only by the California Fig Syrup Company;' that the complainant has spent more than one million dollars in advertising said preparation, always under the name of 'Syrup of Figs,' or 'Fig Syrup,' throughout the United States and other countries, and that millions of bottles of said preparation have been sold; that, by virtue of the premises, the complainant has acquired the exclusive right to the name, 'Syrup of Figs,' or 'Fig Syrup,' as it is indifferently called by the public, or any colorable imitation of the same, as applied to a liquid laxative medical preparation irrespective of the form of bottle or package in whcih it may be sold to the public; that, by virtue of the premises, the complainant has acquired the exclusive right to the manner and form of packing the same for sale, in connection with the words 'Syrup of Figs' or 'Fig Syrup,' or any colorable imitation of the same, as a part of the business name of a concern making a liquid laxative medical compound.
The bill charges that the defendant, wishing to trade to its own profit and advantage upon the reputation of the complainant's preparation, and desiring to impose a worthless production upon the public, has caused to be made, put up, and sold, and offered for sale, a liquid laxative medical compound, resembling complainant's preparation, under the name 'Syrup of Figs' and 'Fig Syrup,' and marking the boxes and packages containing the same with the name 'Fig Syrup' or 'Syrup of Figs,' and has put the preparation, under said name, in bottles and packages or cartons, so closely in imitation of the complainant's bottles and packages, as to be likely to deceive purchasers, and so as to enable unscrupulous retail dealers to palm off defendant's preparation on the consumers as and for the complainant's preparation; and that purchasers frequently have been deceived and induced to buy the compound prepared [187 U.S. 516, 519] by the defendant: that the complainant has been greatly injured in the business in the manufacture of its liquid laxative preparation 'Syrup of Figs' or 'Fig Syrup,' and believes that it has suffered damage and injury by reason of defendant's acts to the extent of at least $10,000; that this is a continuing wrong, and one which it is impossible to exactly calculate, and one which, if permitted to continue, will work irreparable injury to the complainant.
Wherefore the complainant prayed, in its said bill, for an injunction restraining the defendant and its agents, servants, etc., from manufacturing, selling, or offering for sale, directly or indirectly, any liquid laxative medical preparation, marked with the words 'Syrup of Figs' or 'Fig Syrup,' or marked with any words which may be a colorable imitation of the name of 'Syrup of Figs' or 'Fig Syrup,' and from putting up, selling, or dealing in any liquid laxative medical preparation which shall have a tendency to deceive the public and induce buyers to purchase defendant's preparation, believing the same to be complainant's preparation, and that defendant be perpetually enjoined from using the words 'Fig Syrup Company' as a business name, or from using the words 'Fig Syrup' or 'Syrup of Figs' as part of its business name, in connection with the manufacture and sale of a liquid laxative preparation. The complainant also prayed for an account for damages to complainant and for gains and profits derived by the defendant company, and for such other and further relief as may be agreeable to equity and good conscience.
The defendant company and the other defendants filed a joint and several answer, admitting many of the allegations of the bill, but denying and putting the complainant on proof of those which alleged any intentional or actual appropriation by the defendant company of proprietory or business rights of the complainant. The answer proceeded to make the following allegations:
The cause was put at issue by a replication filed by the complainant company. Pending the trial an application for a preliminary injunction was made, which was allowed upon the ground that the complainant had made such a showing by the [187 U.S. 516, 521] pleadings and affidavits that it was entitled to an injunction against the sales of 'Fig Syrup' by the defendant. 86 Fed. 212.
A large amount of evidence was taken, and, on June 7, 1899, a decree was entered by the circuit court perpetually enjoining the defendant company and the other defendants from making, selling, or offering to sell any liquid laxative medicine or preparation under the name of 'Syrup of Figs' or 'Fig Syrup,' or under any name in colorable imitation of the name 'Syrup of Figs,' and from making, selling, or offering to sell any medical liquid laxative preparation, put up in bottles, boxes, or packages similar in form or arrangement to the bottles or packages used by the complainant in the manufacture and sale of its said liquid laxative preparation, or so closely resembling the same as to be calculated to deceive the public, and from using the name 'Fig Syrup Company,' and from using a name whereof the words 'Fig Syrup' or 'Syrup of Figs Company,' form a part as a business name in connection with the manufacture of a liquid laxative preparation. 95 Fed. 132.
There was an appeal to the circuit court of appeals for the ninth circuit, where the decree of the circuit court was affirmed, Ross, C. J., dissenting. 42 C. C. A. 383, 102 Fed. 334.
The cause was then brought to this court by a writ of certiorari allowed on November 20, 1900
Messrs. John H. Miller and Purcell Rowe for petitioner.
[187 U.S. 516, 523] Messrs. Warren Olney and John G. Carlisle for respondent.
Mr. Justice Shiras delivered the opinion of the court: [187 U.S. 516, 527] The courts below concluded, upon the evidence, that the defendants sold a medical preparation named, marked, and packed, in imitation of the complainant's medicine, for the purpose and with the design and intent of deceiving purchasers and inducing them to buy defendant's preparation instead of the complainant's. We see no reason to dissent from that conclusion, and if there were no other questions in the case, we should be ready to affirm the decree, awarding a perpetual injunction and an account of the profits and gains derived from such unfair and dishonest practices.
Another ground, however, is urged against the complainant's right to invoke the aid of a court of equity, in that the California Fig Syrup Company, the complainant, has so fraudulently represented to the public the nature of its medical preparation that it is not entitled to equitable relief.
Some courts have gone so far as to hold that courts of equity will not interfere by injunction in controversies between rival manufacturers and dealers in so-called quack medicines. Fowle v. Spear, 4 Clark (Pa.) 145, Fed. Cas. No. 4,996; Heath v. Wright, 3 Wall. Jr. 141, Fed. Cas. No. 6,310; Fetridge v. Wells, 4 Abb. Pr. 144.
It may be said, in support of such a view, that most, if not all, the states of this Union have enactments forbidding and making penal the practice of medicine by persons who have not gone through a course of appropriate study, and obtained a license from a board of examiners; and there is similar legislation in respect to pharmacists. And it would seem to be inconsistent, and to tend to defeat such salutary laws, if medical preparations, often and usually containing powerful and poisonous drugs, are permitted to be widely advertised and sold to all who are willing to purchase. Laws might properly be passed limiting and controlling such traffic by restraining retail dealers from selling such medical preparations, except when prescribed by regular medical practitioners.
But we think that, in the absence of such legislation, courts cannot declare dealing in such preparations to be illegal, nor the articles themselves to be not entitled, as property, to the protection of the law. [187 U.S. 516, 528] We find, however, more solidity in the contention, on behalf of the appellants, that when the owner of a trade-mark applies for an injunction to restrain the defendant from injuring his property by making false representations to the public, it is essential that the plaintiff should not in his trade-mark, or in his advertisements and business, be himself guilty of any false or misleading representation; that if the plaintiff makes any material false statement in connection with the property which he seeks to protect, he loses his right to claim the assistance of a court of equity; that where any symbol or label claimed as a trade-mark is so constructed or worded as to make or contain a distinct assertion which is false, no property can be claimed on it, or, in other words, the right to the exclusive use of it cannot be maintained.
Among the cases cited to sustain this contention are the following:
In Connell v. Reed, 128 Mass. 477, 35 Am. Rep. 397, the plaintiff sought to establish the exclusive right to the words 'East Indian,' as applied to his remedy, and the court, through Gray, Ch. J., said:
In Siegert v. Abbott, 61 Md. 276, 48 Am. Rep. 101, where the subject- matter of the trade-mark was 'Angostura Bitters,' which purported to have been prepared by Dr. Siegert, at Angostura, Trinidad, and where it appeared that Dr. Siegert was dead, and had never lived at Angostura, the bill was dismissed, the court saying: 'It is a general rule of law, in cases of this kind, that courts of equity will not interfere by injunction where there is any lack of truth in the plaintiff's case; that is, where there is any misrepresentation in his trade-mark or labels.'
In Alden v. Gross, 25 Mo. App. 123, a trade-mark was claimed in the words 'fruit vinegar,' and the court said: [187 U.S. 516, 529] 'The vinegar thus branded was not manufactured out of fruit, in the plain, ordinary, usual sense of that term, but out of low wines distilled from cereals, and fruit enters into its composition only to a very insignificant extent. . . . It would be a novel application of the rule governing the subject of trade-marks if one who manufactures vinegar out of cereals could appropriate for the article thus manufactured the word 'fruit,' and thereby exclude another from using the word as descriptive of an article which is, in point of fact, manufactured out of fruit. . . . But whether the word 'fruit' in this connection is purely indicative of the character or quality of the article or not, the plaintiff's exclusive claim to it must fail on the further ground that the use of the word, in that connection, is clearly deceptive.'
In Prince Mfg. Co. v. Prince's Metallic Paint Co. 135 N. Y. 24, 17 L. R. A. 129, 31 N. E. 990, an injunction to protect a trade-mark was refused, by reason of a false representation as to the place from which the ore was obtained, and the court of appeals used the following language:
English cases are to the same effect. Thus, in Pidding v. How, 8 Sim. 477, where it appeared that the plaintiff had made a new sort of mixed tea, and sold it under the name of 'Howqua's Mixture,' but, as he had made false statements to the public, as to the teas, of which his mixture was composed, and as to the mode in which they were procured, the court refused to restrain the defendant from selling tea under the same name, and said:
The English case of Leather Cloth Co. v. American Leather Cloth Co. is a leading one on this subject, and in which the nature of false representations that will defeat the right of the owner of a trade-mark to protection in equity was much considered.
A bill, asking for an injunction against defendants, who were charged with using stamps and trade-marks so similar to those of the complainant as to deceive purchasers, was sustained by Vice Chancellor Wood, who granted the injunction prayed for. 1 Hem. & M. 271. On appeal the decree of the vice chancellor was reversed by the lord chancellor, and the complainant's bill was dismissed. 4 De G. J. & S. 136.
The conclusions reached by Lord Chancellor Westbury were that there is a right of property in a trade-mark, name, or symbol in connection with a particular manufacture or vendible commodity, but that where the owner of such a trade-mark applies for an injunction to restrain the defendant from injuring his property by making false representations to the public, it is essential that the plaintiff should not in his trade-mark, or in the business connected with it, be himself guilty of any false or misleading representation. In considering what constitutes a material false representation, the chancellor observed that he could not receive it as a rule, either of morality or equity, that a plaintiff is not answerable for a falsehood, because it may be so gross and palpable as that no one is likely to be deceived by it; that if there be a wilful false statement, he would not stop to inquire whether it be too gross to mislead.
This decision was affirmed by the House of Lords. 11 H. L. Cas. 523. In that tribunal, in the several opinions of the law lords, the views of the lord chancellor as to the effect of false representations were approved, but it was thought that, independently of that question, the plaintiff was not entitled to an [187 U.S. 516, 531] injunction, because the rival or antagonistic trade-mark of the defendants did not sufficiently resemble that of the plaintiff's as to be calculated to deceive the public.
In Fetridge v. Wells, 13 How. Pr. 385, the plaintiff sold a soap under the name of 'Balm of a Thousand Flowers,' and in denying the plaintiff's right to the exclusive use of these words as a trade-mark, Judge Duer said:
In Manhattan Medicine Co. v. Wood, 108 U.S. 218 , 27 L. ed. 706, 2 Sup. Ct. Rep. 436, the case of Fetridge v. Wells was cited with approval, and likewise the English cases of Pidding v. How, 8 Sim. 477, and Leather Cloth Co. v. American Leather Co. 4 De G. J. & S. 137. In Manhattan Medicine Co. v. Wood [187 U.S. 516, 532] the complainant claimed to be the owner of a patent medicine and of a trade-mark to distinguish it. The medicine was manufactured by the complainant in New York; the trade-mark declared that it was manufactured by another person in Massachusetts. The circuit court of the United States for the district of Maine, per Mr. Justice Clifford, held that the complainant, owing to false statements in his trade-mark, was entitled to no relief against a person using the same trade-mark in Maine, and dismissed the bill. On appeal this decree was affirmed, this court saying: 'A court of equity will extend no aid to sustain a claim to a trade-mark of an article which is put forth with a misrepresentation to the public as to the manufacturer of the article, and as to the place where it is manufactured, both of which particulars were originally circumstances to guide the purchaser of the medicine.'
In Clotworthy v. Schepp, 42 Fed. 62, the right to a trade-mark was claimed in the word 'Puddine,' in connection with the words 'Rose' and 'Vanilla,' but Circuit Judge Lacombe refused an injunction, and in his opinion said: 'The complainant himself is engaged in deceiving the very public whom he claims to protect from the deception of others. He calls his preparation 'fruit' puddine. In nine different places on his package this word 'fruit' is repeated as descriptive of the article, and a dish of fruit (pears, grapes, etc.) is most prominently depicted on one face of each packet. His packages plainly suggest that fruit of some kind enters in some shape into his compound. A chemical analysis produced by defendant, the substantial accuracy of which is not disputed, discloses the fact that his 'puddine' is composed exclusively of corn starch, a small amount of saccharine matter, and a flavoring extract, with a little carmine added to give it color. It contains no fruit in any form.'
Krauss v. Jos. R. Peebles' Sons Co. 58 Fed. 585, was a case in which it was shown that the liquor sold as 'Pepper Whisky' was in fact a mixture of Pepper whisky and other whiskies, and an injunction to prevent infringement was refused by Circuit Judge Taft, who, in his opinion, said: 'To bottle such a mixture, and sell it, under the trade label and caution notices above [187 U.S. 516, 533] referred to, is a false representation, and a fraud upon the purchasing public. A court of equity cannot protect property in a trade-mark thus fraudulently used.'
And this doctrine of the English and American cases above referred to has been applied in the Federal circuit courts and circuit courts of appeals in cases in which the California Syrup Company, the complainant in the present case, was a party.
In the circuit court of the United States for the district of Massachusetts, March 6, 1895, the California Fig Syrup Company, the complainant in the present case, filed a bill against Kate Gardner Putnam, and others to restrain the infringement of the plaintiff's trade-mark. The facts of the case were thus stated by Circuit Judge Colt in his opinion, reported in 66 Fed. 750:
Accordingly, the circuit court dismissed the bill with costs. On appeal to the circuit court of appeals for the first circuit the decree of the circuit court was affirmed. [16 C. C. A. 376, 33 U. S. App. 283, 69 Fed. 740.]
In the circuit court of the United States for the eastern district of Michigan, April 1, 1895, the California Fig Syrup Company filed a bill, seeking to restrain Frederick Stearns & Company from infringing complainant's trade-mark. [67 Fed. 1008.] The court declined to grant an injunction, and dismissed the bill with costs, holding that the words 'syrup of figs' or 'fig syrup,' if descriptive of a syrup, one of the characteristic ingredients of which is the juice of the fig, cannot be sustained as a valid trade-mark or trade name, and that, under the facts of the case, the use of the name "Syrup of Figs,' in connection with a descrip- [187 U.S. 516, 535] tion of the preparation as a fruit remedy, nature's pleasant laxative,' applied to a compound, whose active ingredient is senna, and containing but a small proportion of fig juice, which has no considerable laxative properties, is deceptive, and deprives one so using it of any claim to equitable relief.
On appeal to the circuit court of appeals of the sixth circuit the decree of the circuit court was affirmed. 33 L. R. A. 56, 20 C. C. A. 22, 43 U. S. App. 234, 73 Fed. 812. In his opinion Circuit Judge Taft, after stating that the term 'syrup of figs,' if intended to describe the character of the article considered, could not be used as a trade-mark, proceeded to say:
The counsel of the appellee in the present case do not contend that the courts of the second and sixth circuits were wrong in denying the complainant any relief upon the cases as presented in those courts. They do contend that those cases were argued upon a wrong theory by the counsel of the complainant. The language of the brief in this regard is as follows:
We are not much impressed with the force of this attempted distinction. Even if it were true that, at the time the medicine in question was first made and put upon the market, the juice of figs was so largely used as one of the ingredients, as to have warranted the adoption of the name 'Syrup of Figs' as descriptive of the nature of the medicine, that would be no justification [187 U.S. 516, 537] for continuing the use of the term after the manufacturers and vendors of the medicine ceased to use fig juice as a material ingredient. Even if the term was honestly applied in the first instance, as descriptive, it would none the less be deceptive and misleading when, as is shown in the present case, it ceased to be a truthful statement of the nature of the compound. Nor are we disposed to concede that, under the evidence in the present case, the term 'Syrup of Figs' or 'Fig Syrup' was properly used as descriptive of the nature of the medicine when it was first made. Then, as now, the operative laxative element was senna, and the addition of fig juice was, at the best, experimental, and apparently was intended to attract the patronage of the public by holding out the name of the medicine as 'Syrup of Figs.'
However that may be, it is now admitted that the use of figs was found to be deleterious, and their use, as a substantial or material ingredient, was abandoned. The following extracts are taken from the testimony of the inventor of the medicine now made and sold by the California Fig Syrup Company:
On cross-examination this witness further stated that 'we still use figs when we might use some other pleasant substance, because we first started to use figs; and the fig substance, while it is used, is not an essential part of the compound or what I would call an essential part of the compound. That is, not a part of the compound which gives to it its distinctive aromatic and medicinal qualities.'
That the complainant company, years after it had established a popular demand for its product, issued statements in medical journals and newspapers and circulars, that the medical properties of their compound were derived from senna, does not relieve it from the charge of deceit and misrepresentation to the public. Such publications went only to giving information to wholesale dealers. The company by the use of the terms of its so-called trade-mark on its bottles, wrappers, and cartons continued to appeal to the consumers, out of whose credulity came the profits of their business. And, indeed, it was the imitation by the defendants of such false and misleading representations that led to the present suit. [187 U.S. 516, 539] The bill in the present case contains the following allegations:
Upon such allegations and the admissions of the complainant's principal witness, some of which are hereinbefore quoted, and upon the entire evidence in the case, and in the light of the authorities cited by the counsel of the respective parties, our conclusions are that the name 'Syrup of Figs' does not, in fact, properly designate or describe the preparation made and sold by the California Fig Syrup Company, so as to be [187 U.S. 516, 540] susceptible of appropriation as a trade-mark, and that the marks and names, used upon the bottles containing complainant's preparation, and upon the cartons and wrappers containing the bottles, are so plainly deceptive as to deprive the complainant company of a right to a remedy by way of an injunction by a court of equity.
Accordingly, the decree of the Circuit Court of Appeals is reversed; the decree of the Circuit Court is also reversed, and the cause is remanded to that court, with directions to dismiss the bill of complaint.
Mr. Justice McKenna dissented.