SINGER MANUF'G CO.
v.
STANAGE.
279
SINGER MANUF'G
CO. v.
(Circuit Court, E. D. Missouri. March, 1881.) 1. TRADE-MARK-PATENTED ARTICLE-SPECIFIC DESIGNATION.
Where a word indicates a patented machine of peculiar mechanism, such word cannot be protected as a trade-mark upon the expiration of the patent. 2. SAME- u SINGER" MACHINE.
Certain patented sewing machines were known as the" Binger" machines. Held, that the word Cl Singer" was not a trade-mark. and became common property upon the expiration of the patent.
In Equity. Taylor <t Pollard. for plaintiff. Marshall d; Barclay, for defendant.
TREAT, D. J. This is a suit for an alleged violation of plaintiff's trade-mark. It seems that the plaintiff has sued its controversy on both sides of the Atlantic, generally with success. The decisions of 'the foreign eourts have been cited and examined. Whilerefetence is made in many of them to actual or supposed patents,issued and expired, no one of said cases, except that by Judge Drummond, states with directness what should be the turning point in the controversy. The case of the plaintiff against Wilson (3 Appeal Cases, 376) turned more on questions:of practice than on the rules by which the rights of the parties were to be ultimately determined. That case and ()thers in England, and tlw great number of cases in Ameri· can courts, (notably, Manuf'g Go. v. Trainer,101 U. S. 51,) ()ught to make clear the rules controlling this litigatioJl. It would be tedious a.nd unprofitable to review the many author. ities cited. In the case from the English house of lords, (supra,) and in the case (supra) from the United S,tates supreme court, there were differing opinions o.nthemerits. Each of the many cases cited has its distinctive and, while all courts agree that property interests in trade,· marks should be protected, there is a of intereHts should reasoning as to the true basis on which res.t.
280
FEDERAL REPORTER.
It is not necessary for the solution of the rights of parties litigant in this suit to enter upon so wide a field of analysis or discussion. At the opening of the argument this court directed the attention of counsel to what seemed to be a matter of large moment, but as the pleadings and evidence had been prepared in the light of leading English and American cases, the cause progressed at great length, calling for the remark that despite these cases a large amount of irrelevant testimony was presented; or, rather, that while counsel had been diligent in their preparation, not knowing what views this court might entertain, much of the evidence seemed to apply rather to infringements of patents than a violation" of trade-marks. Still, many of the leading cases have taken that course, to what seems to be a confusion of rights. This case furnishes an apt illustration. The plaintiff and its predecessors had, in connection with others, through patents, a monopoly as to certain sewing machines, known as the "Singer" machines. When these patents expired everyone had an equal right to make and vend such machines. If the patentees or their assignees could assert successfully an exclusive right to the name "Singer" as a trade-ma.rk, they would practically extend the patent indefinitely. The peouliar machine which had become known to the publio under that name during the life of the patents was so known as a specified article of manufaoture, and at the expiration of the patent would still be known on the market by that designation, irrespeotive of the name of the speoial manufacturer. No one had an exclusive right to" the use of the generio name. If one wished to acquire a trade-mark in conneotion therewith he oould do so distinotively. The plaintiff accordinglyadopted specific devices, including its own name, whereby its products could be distinguished. The defendant adopted a different devioe, with the name of his manufacturer, "Stewart," and advertised the sale sometimes of the "Stewart" maohines, and sometimes of the "Stewart-Singer" machines, attaohing his name as "late general manager of the Singer Manufacturing Co." It is oontended that, although he and others had an indu-
SINGER MANUF'a CO.
281
bitable right to manufacture and sell the "Singer" machinesthat is, machines known as such in the market;...-.so far as their mechanism is concerned, they had no right to advertise or sell them by their right names, with or without 80 prefix. How is it that the plaintiff corporation acquired a monopoly ofthe name, whereby it could exclude, after the expiration of the patent, all 'others from making or vending the machines under the only name known to the public? A review of the many cases cited leads to the following cpnelusions: First. That when a patented article is known in the Jnarket by any specific designation, whether of the name of the entee orothel'wise, every person, at the expiration of the patent, has a right to manufacture and vend the same under the designation thereof by which it was known to the public. Second. That the original patentee or his assignees have no right to the exclusive use of said designation as a trademark. Their rights were, under the patent, and expired with it. Third. If It corporation or person wished to establish 80 trade-mark or name, indicative of its own special manufacture of such a machine or product, the right must grow up, just as all other rights of the kind are established-by use and acquiescence. Thus, as everyone at the expiration of the patent had a clear right to manufacture and vend what was known as the "Singer" sewing-machine, the plaintiff -could acquire no exclusive right to the name "Singer," but -could by proper trade-mark appropriate to itself nametl or devices indicating its own manufacture of such machines. Fourth. The plaintiff did adopt special names and devices to indicate what it put on the market as its manufacture, viz., "The Singer Manufacturing Company," imprinted on the shield' and arm of the machine, etc. The defendant placed on its shield and arm the words, "The Henry Stewart's Manufacturing Co.," with 'another device. Now, as each -corporation had an equal right to make and vend that class of machines known iIi the market as "Singer" machines, and as the defendant used neither the name nor device of the
282
FEDERLL REPORTER.
plaintiff, there is no violation of the plaintiff's trade-mark or name. While the courts are prompt to protect the property rights of any skilled person in his trade-mark or name, whereby he may have in the market the benefit of his skill and reputation, they must also guard againSt every effort to secure a monopoly not arising therefrom. When a marketable product is publicly known or designated by a generic name, no one should be permitted to shut out all just compe· tition by claiming the exclusive right to use that name. If there is a peculiar excellence, real or supposed, in his facture, he can establish by his trade-mark or name the right to protection against the piracy thereof; but he cannot go further and insist that, independent of his personal skill or mamifaeture, he can cover by his trade-mark or name what· ever inay properly distinguish the common article which everyone has a right to make or vend. Fifth. Inasmuch as the word "Singer" indicates a machine of peculiar mechanism, and every one has a right to make such a machine, the word "Singer" attached to such machines is common property. Sixth. The distinctive names and devices of the plaintiff corporation were not used by the defendant, and no one of ordinary intelligence could suppose that the "Stewart" manufacture was the manufacture of the plaintiff. Each had its distinctive and detailed names and devices, so that there was no probability that the machine made by one would be mistaken for the manufacture of the other. These views dispose of the case; yet it is important to remark that the plaintiff is seeking, after the expiration of one or more patents, to perpetuate a monopoly under the guise of a trade-mark. The propositions involved have undergone so much judicial investigation in transatlantioand cisatlantic courts that a summary disposal of the qcestion may seem inadequate to the exigency of the case; yet eaoh of said cases would show, if properly analyzed, that the general rule is admitted by all. There are many technical objections interposed with respect to evidence offered; yet, giving the objector the largest bene·
EMIGH V. B. &
O. R. CO.
283
fit therefrom, there still remains the clear fact that the plaintiff, even if its assignment covered the name as a trade-mark, (which is very doubtful), is seeking to create a monopoly for the practical extension' of a patent beJond its legal term. The plaintiff has established no such right, nor has the defendant consequently violated any of plaintiff's rights. The bill will, therefore, be dismissed at plaintiff's costs
EMIGH
v. B. & O. R. Co.
STEVENS V. SAME. t)TEVENS,
use of
E:.\IWH, V. SAME.
(Circuit Court, D. Marl/land. 1I1arch 17,1881.) 1. INFTiIKGEMEXT OF PATENT-ExCEPTIONS '1'0 MASTER'S REpORT.
The Stevcns patent for improvement in railroad-car brakes, which expired in 1872, having been held valid, upon reference to a ma.'lter he reported that the advantages derived by the defendant from its use amounted to $30 per car per j'ear, and that finding that during the latter years of the existence of the patent there was an established license fee of $25 per car per year, he assessed the complainant's damages at that rate from the time the license fee was established. Held, that the master's findings, as to both profits and damages, were walranted by the testimony, but that, as it was difficult to compute with exactness the money value of the advantages accruing to the defendant from the use of the patent, and as there was conflict of testimony on that subject, the court would accept the license fee as the hasis of compensation least likely to do injustice, and would decree 8S for profits at that rate, without mterest.
In Equity. Exceptions to Master's Report. Before BOND and MORRIS, JJ. George Harding and Albert II. Walker, for complainants. John H. B. Latrobe and Andrew McCallwn, for defendant. MORRIS, D. J. Thesll are three suits in equity against the Baltimore & Ohio Railroad Company for infringement of the patent, dated the twenty-fifth of November, 1851, granted to Francis A. Stevens for an improvement in railroad-car
