272

FEDERAL REPORTER,

vol. 60.

KERRY et al. v. TOUPIN.

(CIrcuit Court, .D. Massachusetts. Marcb 1, 1894.) No. 3,179. of Canada, Who. are engaged In the manufacture of trademarked articles, andwbo ha,e a place of business in the state of New York, where they make and ship such articles for sale in the United States.' are Within the .international convention of March 20, 1883, for the protection of industrial property; and they may sue in the United States .courts for the infri,llgement of their trade-marks by its citizens.
2. SAME":":W;RAT

TQ-ALIENS.

CompllJJ.nants a medicinal compound under the name Gum;" and for some 20 years or more that of, "Syrup 'of namew.as placed conspicuously on the package in which the compound was sold, and in conn,ection therewith appeared a cut of an Indian against a. background of spruce trees and a waterfall. that the adoptlon'and continiioususe of this 'distinctive name and device entitle complainaIitS to claim it as a trade-mark, and to be protected against its infringement by persons' making similar goods.

UrFRINGEMEN1'.

In E<j.pfty.' .OJ;). final .. lUll by John Kerry and others to restraill the infringement of complainagainst Rercule A. ants' trade.:mark. complainants. ;aeach, f9r cornplainantli!. ,JohnJ. Hogan and William A. Hogan, for defendant. ALDRICH, DlstrictJudge. This caUl!le came on for hearing upon bill, answer, and proofs. " In 1860 Henry R. Gray originated a medicinal preparation, tow4ich he gave .the fanciful name of "Syrup of Red Spruce Gum." The compound composed several ingredients, but the oleo-resin of· the: spruce was the leading medicinal feature. It is nqt necessary to consider the character of the preparation, further than to find that it was an original and artificial composition of several natural products, and a useful remedy in throat and lung trOUbles. The originator proc,eeded at once to manufacture and place such preparation before the public. It was put up in four-sided, oblong bottles, wrapped in blue wrappers, on which appeared, inconspicuous. the trade-name, "Syrup of Red Spruce Gum," and in connection therewith the figure ,of an Indian, with, a background of' spruce· trees and a waterfall. There was proper registration of such name and mark at Ottawa in 1872, and at Washington in 1874. Between. 1860. and 1875, the originator used this name and mark continuously, and expended several thousand dollars in advertising and· establishing the name and a trade. In 1875 he assigned all hiarights to Kerry, Watson & Co., of Montreal, to which the complainants have succeeded. Since 1875 the complainants have used the name, mark, and wrapper continuously, and have expended, as the evidence shows, something like $7,000 annually in advertising. They have a manufactory and place of business in Montreal, and for about 15 years have had a place of business at Rouse's Point, N. Y., where they manufacture and ship to various points in the United States. The complainants' annual

RICHARDSON t1. SHEPARD.

273

output is something like 1,000 gross in Canada, and 500 gross in the United States; and the evidence shows that the preparation has merit, and an established reputation in the markets. The complainants, in this proceeding, do not now rely on the registration for relief, but urge the certificates as evidence of the adoption of the name, mark, and wrapper. Neither do they ask to be protected in a monopoly of their product, but against the use by the defendant of their trade name and mark under circumstanceswhich shall induce the public to buy another preparation, supposing it to be the "Syrup of Red Spruce Gum" placed in t);1e market by the complainants; and to this extent, I think, they are entitled to protection. The complainants, citizens of Canada, having an industrial or commercial establishment in the state of New York, would seem to be within the third and eighth articles of the international convention of March 20, 1883, in which Great Britain joined, for the protection of inqustrial property. As translated, (La Republique Francaise v.Schultz, 57 Fed. 37, 40,) the treaty covers commercial marks, and commercial· names, as well. The complainants' name, "Syrup of Red Spruce Gum," adopted and continued in the manner shown, is a trade-name, and the device embodying the name and the cut, as printed on the blue wrapper, has become a distinctive mark in the trade, as applied to their cough mixture, and as such is entitled to protection. Improved Fig Syrup Co. v. California Fig Syrup Co., 4 C. C. A. 264, 54 Fed. 175, 7 U. S. App. 588. The defendant has adopted It bottle so similar in shape, and a wrapper so similar in color, with a combination of words, including the name, "Syrup of Red Spruce Gum," conspicuously displayed, with a border and cut so like the complainants' in general appearance, as to compel the conclusion that the purpose was to trade on the complainants' reputation, and the notoriety created by a long and continuous use of their distinctive marks and name. That the defendant has changed the wrapper somewhat in detail does not relieve him. He has studiously preserved a catching general appearance, well calculated to deceive the trade, and induce the public to buy his preparation, supposing it to be the preparation known as the "Syrup of Red Spruce Gum" which the complainants and their grantor have continued in the markets for 30 years or more. The complainants are entitled to an injunction in accordance with these views, and to an accounting, and it is so ordered.

RICHARDSON et aI. v. SHEPARD et at (Circuit Court, D. Massachusetts. March 9, 1894.) No. 3,100.
1.

PATENTS FOR INVENTIONS-ANTICIPATION-HoOKS AND EYES,

Letters patent No. 411,857, granted October 1, 1889, to Frank E. De Long, were for an improvement In the ordinary hook for garments, consisting in the addition of a spring tongue placed intermediate between the side bars of the hook, its free end forming a loop coincident

v.60F.no.2-18

2'74
, the

;

FEDERAL"

:v.oh,60.

,of tbe hook, so tbatJt wiUengage the eye, When it in. :place. fleld,tMt this was not anticl);lated by patent NO;'l9G,825, granted October 2;1877, to Joel Jenkins, fora safety'.pin whose' guard has an "obstrUiltion" to pr.event the point of the: piJil" being :w,lthdra from the guard, by accident;, for. such obnO spring, anll Is not diSl'laced by inserting and removing the pIn" as the tongue In De Long's patent is, where the hook engages the eye. ' . . ,
'

hopk;

SAME.

N<>r is De Long's device anticipated ,by English patent No. 8,068, gra.p.ted:In 1839, tQ John.H. Rodgers, fora .hook with a SJ?ling-bowed tongue to the same function as DeLong's; fol' ,tbe Rodgers tongue does not form a loop coincident With the bend of tM hook, and, in operation, ·im free end tends to abrade' the garment, and to become so much displaced as to ,prevent the eye being withdrawntrom the hook at all. '

In EquitY. . oh final Bill by Thomas Q.Richard· son and others,lLgainst Joh:q..allepardf;lnd others. for infringe· ment of complainants' patent. 'Decree for COlllplairutnts. Fish, &; Storoow, Strawbridge & Taylor, and Bradbury ' , ' , Bedell, (or complainants.. Thomas Ewing, Jr., for defendants.

COLT, Circuit Judge.' 'This is, a bill inequity broTtghf for in' frlngement of letters patent :No. October 1, 1889, to Frank E. De "Long, for wrimprovement in hooks or'fastenings for, garments. The,improvement of DeLong the ordinary h()Ok{:onsist$ In the addition of a $pJ;"ing-1)()wed tongue, placed inbetwE!enthe side bars ofthfthoOk, and wbich forms a loop cl)incident.with the bend ?f the .· The specification says:
"Between the tront and tear :portions, ot hook, 'and secured to a part thereof; is a spring tongue, B, ,which occupies part of the space between said' portions, and is bowed'··or· swelled eutwardly so as to approach the frOnt portion. · :",. It will, .be seen that when an eye, loop; or ring is presented to tbe and drawn between the front and rear portions thereof, it bears agai[lst the tongue, and rides over the same, forcfiJ.'g it backward 80 that said eye, etc., or ring is, pern;J1tted to pass to tM:'t)end, D, the tongue then closing or returl1ing to its normal position, and serving to retain the eye, etc.. on the hook; it be1Dg noticed that the tongue prevents ,the return or (Usplacementofthe eye, etc., from the hook."

The single claim of the patent is as follows:
parallel bars, and a tongue having its freelllld forzqlng 'lJ,loopcoincldent with the bend of the hook; said tongue and loop being Intermediate of said side bars, substantially as described."
"k hook comprised of a hook proper and:.afBbank formed of substantially

The only defense urged at the hearing was the invalidity of the patent, in the light of the prior state.:ofthe art. Of the many patents introduced in evidence as antici:pating the De ,Long invention, I deem it necessary to consider only'two,-the English patent No. 8,068, granted to John H. Rodgers, in 1839, and patent No. granted to Joel Jenkins October 2, 1877. The Rodgers hook 'has Ii yielding resilient, humped 'tongue, and to this extent is similar to the De Long structure;, but: the endQt the tongue, in this hook, is not carried around the bend ,of the hook. There are

JUCHA,RDSON tI. SHEPARD.,

27&

two defects in the Rodgers hook: First, the end of the tongue, . when the eye is inserted· in the hook, is pressed down below the plane of the shank of the hook, and, coming in contact with the fabric, tends to abrade it; and, second, in inserting the eye in the hook, the spring tongue may become bent or displaced, in which case the eye, in attempting to unhook it, may pass behind or under the end of the tongue, and so prevent the disengagement of the eye from the hook. This hook was not a commercial success. The Jenkins patent is for a safety pin. The guard, which is integral with the wire of the pin, is composed of a series of convolutions lying close together, and forming a flat surface or bearing. This surface is then bent over, making a recess with two parallel, flat sides, within which the point of the pin is received, and protected by the upper and lower surface of the guard. The specification then declares:
"To prevent the point of the pin from being withdrawn from the guard, a, by accident, a small obstruction, c, Is formed in the under surface of the guard, by bending one or more of the convolutions."

This obstruction offers no obstacle to the free insertion of the pin within the guard, but affords just enough resistance to its being withdrawn therefrom to hinder accidental displacement. The language of the J patent, and an inspection of the pin made in accordance therewith, show that the "small opstruction" in the guard of the pin does not perform the same function, and is in no proper sense the resilient, spring tongue of the De Long hook. It has no appreciable spring movement. It is not depressed when the point of the pin is inserted, and it does not spring back, thereby holding the point of the pin within the recess. The change in structure from Rodgers to De Long may seem slight, and, now .that we see it, simple; but this is no sufficient reason for denying invention or patentability, where a beneficial change, em· bodying a new and better mode of operation, has been produced. It must also be remembered that numerous patents on hooks were taken out between the invention of Rodgers, in 1839, and of De Long, in, 1889, and that it did not occur to anyone engaged in developing this branch of the art to make the change which is found in the De Long device. This circumstance stl'ongly tends to prove that such a modification of the Rodger'S pin would not be obvious to one skilled in the al't, and that, therefore, it called fol' the exel'cise of the inventive faculty. If we add to this the further circumstance that most of these prior efforts were failures, and that none of them met with more than moderate success, and contrast this with the great utility, extensive public use, and marked commercial success of the De Long hook, I think these considerations al'e sufficient to resolve any doubt on the question of patentability in favor of the patentee. Washburn & Moen Manuf'g Co. v. Grinnell Wire Co., 24 Fed. 23; Manufacturing Co. v. Haish, 4 Fed. 900; Reiter v. Jones & Laughlin, 35 Fed. 421; Wilcox v. Bookwalter, 31 Fed. 224; Hitch· cock v. Tremaine, 9 Blatchf. 550, Fed. Cas; No. 6,540; Watson v. Stevens, 2 C. C. A. 500, 51 Fed.. 757; Loom Co. v. Higgins, 105 U. 8. 580.; Consolidated Safety-Valve Co. v. Crosby, etc., Valve Co., 113

JlEDEaAL REPORTER,

vol. 60.

U. S\' '158, 5H!!Jup. Ot. '513; YagOW8JD i v; Packing 00., 141 U. S. 332, 12 Sup. ,et. 71; The Barbed·Wire Patent, 143U.'S.275;12 Sup. Ot.
443, 460. .

Decree tor complainants.

DAVIS ELECTnrCAL WORKS et al. v. EDISON ELEOTRIO LIGHT 00. et.'aI. (Oircuit Oourt ot Appeals, First OJrcult. February 9, 1894.) No.

sa.

PATBKTs-hnniGJIlMENT-REPAm AND RECONSTRUCTION-ELECTRIC LAMPS.

It reconstruction, a.ndnot merely to make a hole in the bulb of an Edison incandescent electric lamp, (pa.tent No. 223,898,) in which the carbon filament has been destroyed by USe, and put in a new filament having its ends Inserted in piatInum sleeves; elOISe the hole by fusing a piece of glaB..,over it, and' then e:thaustthe air; 58 Fed. 878, affirmed.

Appeal from: the Circuit Oourt trict of MassachUSetts. . ,

or

the UnitedStatee for the Dis-

This wl1sa bill in equity'brought by the ]Ddison,Electric Light Com· panY and the Edison General Electric Company to enjQin the Davis Elec· trical Worfts,Leonard L. Davis, and Oharles F. Wlttemore from infringing the Edison incandescent elecj:riclamp patent No. 223,898, issued January 27, 1880. A,prellminary injooction was bel0)'V' ,(58 It'ed. 878,) and defendants appeal to this coUrt, under the 'seventh section. of the judiciary act of Mtirch 3, 1891. The matter complalned of was 'that defendants were engaged in replacing the carbon filament of Edison lamps, after the original filament bad been destroyed by use. This, complainants alleged, was a reconstruction of the lamp, amounting to infringement of the patent;. whlle defendants claimed that it was mere repairing, which they were entitled to perform. The process, as described by the court below, WIU!I 88 follows: "The defendants; 'first break otr the tip of' the glass bulb 01. the lamp, and ream out a hole' about one-half inch in' diameter. The broken filament is then removed. The new filament, having its ends cemented into platinum sleeves, is then inserted into tbe glass chamber, the sleeves being pushed down over the two platinUm leading·in a.nd compressed upon them. A tube of glass, made into the shape ofa tUnnel, is heated, and placed over the hole in the lamp chaxn,ber. This tube is fused into the open end of the bulb, which! brings it into the condition of the or4inary lamp bulb just prior to exbaustion. The air is then exhausted, and the bulb sealed."

John L. S.- Roberts and 'John Lowell, for appellants. F. P. Fish, Richard N. Dyer, and W. K. Richardson, for appellees. Before PUTNAM, Circuit Judj:te, and NELSON and WEBB, District Judges. PUTNAM, Circuit Judge. In this case the circuit court, on the 13th' day of Deeember, 1893, entered an order for a preliminary injunction, and 'tor a writ of injunction to issue accordingly. From that order the defendants below, in accordance with ·the seventh section of the act establishing this oourt,took an appeal, which came on to be heard on the 18th day of January, 1894. It does not appear that a supersedeas was obtainoed or asked Cor. A preliri.linaryquestion was made' at, the bar touching 'the nature