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Dist\'iet Judge., ''!he, complainants are, paekell's of salmon at Astoria; rOreg<>h.',: The defoodants are wholesale grocers in the city of New York. Th>e OOntl'oversyrelates to,theose of the word H Epicure" as a tl'ad&omal'k fot>ca.nned salmon. After a careful: investigation, which discomplainants, on the 4th of Aucovered no instance ofsitriilar gust, 1885,registerediha trade·mark in the patent office. The applicationwasfiled July 7, 1885, and, 'stated' that the trade..mark had been used in tlteb rbusinessllirlceJune20j1885.For a few years prior to the latter datethedefen'dll.nts; at intervll.ls and to a limited extent, had used fur canned'tomatoes and canned· peaches. The the word as complainal'ltswere, therefore, the .first to use the word "Epicure" as a trade-mark,for;eannedsailmon. ,The d,efendants were the first to use it as a trade-mark for canned tomatoes and canned peaches. . The simple question, then,is whether the defendants' use of the word 'as applied to tomatoes atld'peaches the complainants-from, selecting it as a trade..mark'Jorsalmon. iTbe complainants hadbuilt;up an extensive business; in .olmnedsalmon, under this name before the defendants asserted their right'to apply.it' to' all canned goods' sold by them, salmon inclUded. ' ;Itis, stated,lihatthe compllllnantshav:e soM about &,500,000 ,packages of ,lIEpicure"saltnon. ,Their business is large and flourishing. 'It is devoted exc1usivelyto salmonipa.cking.ln the summer of1891 the defendant$< sold, one dozen cans of$almon bearing: this brand. ' It is 'asserted tha.t [this 'was, ,done for the purpose of testing the question now presented. The rights of the parties must beasoortainedand'measured by the situation as it existed in 1885 when complainants entered the field. If the deHad they the right at that time, to usethewor'd fendants had then sought to restrain the complainants' use of the word they would, in all probability, have been promptly dismissed from court with the information that their business as dealers in fruit could not be injured by the use of the term "Epicure" in salmon packing. No one who has not permanently parted with his wits could purchase a can of salmon supposing he was getting a can of tomatoes. "Epicure" when
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.',(H:QRGE 'II; SMITH.

831

used,,in 1885, by the def'.t19dantll meant ;fruitjwhen used by the complainants it meant salIIlol):Iqhe of the word could not have peen enjoined in t88l) thErlr right to itshou,ld not be destroyed now. If lawiul then it shol11d be protected now. The word was free to the complainants. They, were engaged in a distinct line of industry. Its use not have harmed the d.efenqants. The complainants" unmolested by the defendants or any one else, and mole.llting noone, during seven years to .valuaple indufiltry,distincuvely their own and diatinguished the over., by their' trli'da,.mark. .'Tpe word. "Epicure" is inseparl\ble from and commeI;lsurl\tewith their bPsiness. !.tis .thebrand which <iesignates the best Ilalmonpacked by thePl. . It is their seal of genuineness, ;their: guaraliltyto,pul'(iliasers that the goods so labeled are ofa superior quality. The advantages of higher p'riQes and larger demand exist becauseoftbe established excellence of the goods. ·'l'bese are ll.dvantages which .belong to Whatever value bas ,8S a brand: for 8almonwas itnparted to it by them. TottansflW the good will thus secured by years of arduous and conscientious to the defendants, or to throw'it open as II poachinggtQund fox: :the general public; WO\lld beqoing the qomplainants gross injustice. It is the complainants knew o£tlledefendants' use of the word "Epicure" prior to 1885, but even if they had known it, it is not easy to see how cOIDplainants'use of the word violated anyprinciple of business morality. , Salmon and tomatoes are both' articles of food it is ,true, .but in other respects .differ as a. hat differs from a . apparel. A hat dealer having built up a flourishing trade in "Sheriqan" hats could not..becompelled to relinquish it at the instance of a shoemaker who, before that, had sold "Sheridan" boots. An oyster packer on the Chesapeake who has established a valuable market for "Columbia" oysters ought not to be despoiled of his profits because an orange grower in California had previously sold "Columbia" oranges. A manufacturer who should call his bicycles "Deerfoot," would .ilardI)' interfere with "Deerfoot" sausages or "Deerfoot" butter. There is little similarity between a salmon and a tomato. In a commercial sense the want of ref:lemblance is marked. The business of a fruit packer does not include salmon; the business of a salmon packer does not include tomatoes and peaches. Salmon is not a species of the genus "fruit" or of the genus "vegetables." The contention that the use of the trade-mark on canned fruit in 1885 pre-empted its use for all time in connection with canned good!! of every variety, in defiance of the rights of intervening users, cannot be maintained. Such a contention would prohibit its use on salmon not only but on milk, lard, petroleum and even gunpowder. In 1890 the defendants commenced using the term "Epicure" as a brand for cigars, but it is clear that they could not have done so if a cigarmaker had so used it continuously since 1885. The reasoning of some of the authorities would indicate that the defendants had a right to use the brand in connection with other fruit and

832

I'EDElUV REPORTER,

vol. 52.

vegetalUes,lanal0gous to tomatoes and'peaches, buttd asseH that they have' use it on.',all cltuued ' goods is carryin,g 'th,e dO,btrine far beyond :an)l reported case.' ' Beer'lrnd nails do not belong to the same class of' merebaudise -beoAuse: both 'are f s61d ,in kegs.',', The fact that the defendants!hll.vesubsequently extended their busiIiessso:as 'to include fish and other like articles of foodid()es'Mt avail them, neither would ,the fact if it'eXisted,that,at the tilDe they adopted! the Word '''Epicure'' they intended in the future to embrace thesearticlos'.' 'Oriemay con<leive a valuablei'dea, which, ideveloped, entitles him tOll. patent and to enjoy: the rewardsof'lin'-inv'entor, but if the idea continues to remain an' !idea and someone else first embodies it, the idealogue will presently discover that'he has' furnished another ilhlstration of the superior value offacts overthe6ries as commercial'commodities. So'Witb'ia trade-mark. It is the party who uses it first as a brand for his goods, arid builds up a business under it, who is 'entitled to protection,llnd' not the one who first thonghtof using it on intensimilar goods:, but did not use it. The law 'tions. , The equities are \Viththe complainants. Their large and flourishing business will be destroyed or jeoparded if the defendants and others are permitted to share the goodwill which has been established for the "Epicure" brand ofsa)rnon.' No injury can befall the de-fendants if they desist in the future as in the past from using the word "Epicure" as applied to salmon. If the defendants" statement of the amount ortheb! sales is correct, there can be no occasion for the services of a master; 'It foHo\Vsthatthe complainants are entitled to a decree ,for an injunction, with

· HATCH V.

FERGUSON."

833

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(mrcuu

Court, D. WasMngton, N. D.' November 18,1899.)
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An indep'endent suit ju equity may be maintain.ed in a federal court between parties of 'diveraeeitizeu&bip ,to vacate a decree: ·state court, and' have a sale of property made pursuant to thatdecree annulled, and complainants',title to the eroperty established, when such decree is alleged to llave been fraudulently obtamed, and hal:! been fvllyexecuted, lliIId when complainants have no remedy by motion in t\le same case because the lan.d has passed into the. handa of third persons, wl1.o claim to be inDocentpurcbaliers, and who must therefore be brought in as new parties. ·AWO'/1)s'l'l1itthv.' QLeason" 9 Sup. Ct. Rep. 237,129 U. S. 86, applied. OowLeyv. Rfl,u,ro(l.fl ,Co., 46 Fed. Rep. 825, distinguished. ,

....EQUITA.BLB RELIBP-.T1l'RISDIOTIQN.

In Equity. Suit by Dexter Hatch ,and others against .E. C. FerguBon and others to· annul a decree of the state court in a partition suit. On demul!fer to bill. Overruled. Ja:mea Hamilton L_, for plaintiffs. F. H. Brownell, Jor defendants. HANFORD, District Judge, (orally.) The complainants,who are minor children '. of Ezra Hatch, deceased, bring this suit by their mother. as their next friend, asking to have a decree of the superior court of Snohomish county, in this state, in a partition suit, vacated. and a sale of property pursuant to that decree annulled, and their claim of title to the, real estate affected by the decree and sale established. The ground alleged is a conspiracy between E. C. Ferguson, who was appointed by their father's will to be their guardian, and the defendant Henry Hewett, Jr;, to'obtain this property from them for,less than its true value, and that those proceedings, by reason of ·collusionbetweenMr. Hewett and Fe11guson, were hurried through' the superior court.without a fair investigationand ascertainment of facts, and contrary to the principles of: equity. In short, the groUlid for the ,proceeding is fraud. They show thaM\le decree which they ask to have vacated has been fully Nothing remains of the case pending in the sUperior court of Snohomish county. Everything that could be done to.completely transfer the title has been done; and since thecompletion.'ofall the proceedings in the Superior court. Mr. Hewett, who was therpurchBser at. the judicial ,sale; has transferred the·. property to. the defendants the Everett Land·Company and Judson La Moure. In support of this demurrer the defendants claim that this court has no jurisdiction, because the case is still in such a condition in the superior court of Snohomish county that the complainants can go there, and, upon establishing the facts alleged in their bill, have the decree and proceedings vacated by an order of that court. If it appeared to me to be the fact that they could be fully restored to all their rights by a simple motion in the superior court of Snohomish county, I should feel inclined to follow my own decision in the case of Cowley v. Railroad Co., 46 Fed. Rep. 325, and sustain this demurrer. In that case I held that v.52F.no.1O-53