500.

94

FEDERAL REPORTER·

. LA REPUBLIQUE FRANCAISE et aI. v. SCHULTZ. (Circuit Court, S. D. New York. May 23, 1899.)

1.

The name "Vichy," as applied to mineral waters, is a geographical name, used generally by the OWllers .of springs near Vichy, In France, to designate the of origi.n." and Indicate the general characteristics of their waters. It Is not a trade-mark or trade-:Q.ame in a legal sense, and a suit by such owners against a defendant for applying the naDie to artificial watellS can only be maintained on the theory of unfair compet1tion. 1
SAME-UNFAIR COMPETITION-LACHES.

MINERAL

2.

Defelldant's testator began the manufacture of artifieial "Vichy" water In Newrork In 1862, advertising and selling the same under the name of "Schultz'sVichy Water," as his own product. and as made from analyses of the natural spring water. His waters att'lilned a high reputation and a large sale, being considered by many superIor to the natural 'water. There was, .no attempt at deception, and his labels were entirely dissimilar from those under which the natural spring water was sold; Held, that the use of the name "Vichy" In connection with this product did not tend appreciably to confuse the Identity of the natural and artificial products, but, even if it did so, It having been begun in good faith, and eontlnued for 30 years. without objection 011 the' part. of complainants, they could not be heard .to assert the right to an Injunction. 2

This was a suit by' La Repu1:>1ique Francaise and others against Louise SChultz, executrix, for alleged infringement of r:ights in a trade-name. Rowland Cox,. for Antonio Knawth, fordefendapt W ALLAOE, Circuit Judge. Upon the proofs in this case it is clear that tl;ie name "Vichy" is not a trade-mark or trade-name of the complainants in the strict legal sense of the term, but is a geographical name, applied by them as well as various other owners of mineral sprin.gs at or near Vichy, 'in the department of Allier, France, to designate the locality, of origin, and indicate the general characteristics of the waters. The bill can only be maintained upon the theory of unfair competition by the defendants and their testator in applying that name to the artificial mineral water manufactured and sold by them in this country; Canal Co. v. Clark, 13 Wall. 311; :Ylill Co. v. Alcorn, 150U. S. 460, 14 Sup. Ct. 151; Association v. Piza, 23 24 Fed. 149; Newman v. Alvord, 51 N. Y. 189; Wotherspoon v. Currie, L. R. 5 H. L. 508-513. For 50 J'ears or more artificial mineral waters approximating more or less closelJ' in their ingredients and properties to the natural VichJ' water have been prepared and soldbJ' the name of "VichJ''' by manufacturers in Europe: and in this countrJ'. Natural waters lo'se their original :virtues, more, or less, when removed from their sources, while. artificial waters manufactured under pressure of carbonic acid gas remain intact in all their ingredients. Mr. Schultz, the testator
1 As to unfair competition in trade, see note to Scheuer v. Muller, 20 C. C. A. 165, and, supplementary thereto, note to Lare v. Harper, 30 C. C. A. 376. 2 For laches as a defense In suits for infringement oj' patents, copyrights, and trade-marks. see note to Taylor y. SplndieCo., 22 C. C. A. 211.

LA REPUBLIQUE FRANCAISE V. SCHULTZ.

501

of the defendants, began the manufacture of artificial water in Kew York City in 1862, and from that time until the present bill was filed -a period of 30 years-continued to make and sell it in large quantities here, advertising it as "Schultz's Vichy Water." His earliest circular to the trade in the record contains this statement: "The mineral waters will be made with the greatest care, and according to the best analyses known, so that they will not differ from the· natural springs." As was said of him in a quite similar case by Judge Coxe (City of Carlsbad v. Schultz, 78 Fed. 471): "The case is devoid of any element of actual fraud, and the defendant has acted in good faith throughout." His product acquired a high reputation for its purity, was prescribed extensively by physicians, and was considered by many to be preferable for therapeutical purposes to the natural waters. It became popular as a beverage, being kept by druggists generally to be drawn from fountains or syphon bottles, and sold by the glass. The labels uged by Schultz were widely dissimilar from those used with the natural water. It is apparent that he was solicitous to have the water identified with his name as its manufacturer, and that, so far from attempting to palm it off upon the public a8 the natural Vichy water, he sought to commend it as an artificial water having substantially the ingredients and properties of the natural water, but of greater excellence and purity than the water made by his competitors. If any part of the public bought or used his product supposing it to be the natural Vichy water, they must have been very ignorant or very careless persons. Assuming that the use of the name "Vichy" in connection with the artificial water made by Schultz may have tended to divert to some extent sales of the water of the complainants, I do not think it tended appreciably to confuse the identity of the two articles. If it should be assumed, however, that Schultz's use of the name did tend to some extent to confuse the identity of the two articles, the ease pre8ents the question whether, after he 'had used it for nearly :W years, publiely and notoriously, without any interposition on the part of the eomplainants, the latter can be heard to assert the right to an injunetion. It is impossible that the owners of the natural waters should not have known that wherever theY were extensivelv sold artificial waters were being made and sold 'extensively by same name. If the artifieial waters had been made and sold as pur-, porting to be the natural waters, there would be less equity in the defense of laches and acquiescence; but they were not. They werE:' made and sold ttl supply a demand for artificial waters having propPities similar to those of the natural water. It is very late to ask the intervention of equity to suppress a course of whieh originated innoeently, and has been so generally adopted. Equity is indisposed to assist parties who have 8lept upon their rights, and acquiesced in their appropriation by others for a great length of time. 'I'he unexampled delay and acquiescenee in the present case, I think, should defeat the action. Manufacturing Co. v. Williams, 37 U. S. App. 109, 15 C. C. A. 520, and H8 Fed. 489; Lane & Bodley Co. v. LOtke, 150 U. S. 193, 14 Sup. Ct. 78; McLaughlin v. Railway Co., 21 Ff'd. 574. The bill is dismissed, with costs.

502
NATIONAL '."

1,

vdJE}UAND et al.(three CllseS)ii;. ' e i a t ! · ' 1 II 189{l.) ,
uNi>Jim .. STATE

Court of Appeals, First Circl,\lt, April i' Nos.' 22¥-227. I,,'

1.

I'nAcTICE ;-'AOTIONS BTATUTEs. '

.

.

2.

Interrogatc)ties Addressed to tile 0pPQsit!l.party in tile manner and form pres<:rlbed by the M4ll1\llchusetts statl1te (P\lb.. St. ,,c., ,16'7), ,arellot, admissible i'n. actions at law"in the federat courts, since Rev. St; § 861, declares that tile mode ofprbofjn actions at law by bral 'testimony and the exalll.inatlon of, 'wllnesses in open court,exceptas hereinafter prof!.Dd the provisions subsequently IDtlde (Rev. Sf.. §§ 863-870) relate eXclusiVely to. depositjollS de beneesS/:1,' in perpetuam A'lemoriam, or under a dediniiJs potestatem. Rev. St. § 914; adopting state practice, procedure, etc., inactiOns at law tn the federal Coutts, does notapPlY,as congress itself has regUlated the particular matter: bY'eXpress legislation.
SAME.

1\ .

of l:892(27Stat. 7) permitting· the taking ·of depositions .in, the roo$! prescribed by tile:Il1ws of tlW s4\.te,jn Which the, federal courts are was merely intended to simplify the practice O.f taking depositions, and did': tiot ;authorize the taking 'of any deposit!op.s in iilstances not It did not confet Ilnyadditional right. to ,l)btain proofs by ltddressed to the. adverse party in actl"ons ,at law.,'
8.

PATENTs..,-;ExrERTEvIDENCE.

In lill actlon at law an expert In a patent casellay not be permitted to state that the omission Of a conriecting"mechanism would be a "fatal fault" in' a cash regIster.' .It is proper' for tl1e witness, to describe the results off,he omission offhe,conUll<!ting, l,>ut his opinion that it is .a "fatal fault" goes beyond the province of an expert.
" ", .

.'

:

"

4.

SAME..

two mlichinesin question, to statetbata certain pa'rt of defendant's machine' was the equivalent of, or· "exactly the nature of," a 'certain part of plaintiff's .lllRchine.
5.

SAME,-'\PMISSIBTLITY OF EVIDENCE.

It is ptoper for' an expert, after descrlbh':tg to the jury the detatls of the

Where a corporation and Its officers or directors are sued for infringement, and it Is claimed by plaintiff that the corporations are mere devices to protect the individual defendants against the consequences of their infringement, it Is proper to admit the tesUmony of one of the defendants as to .his belief In the. validity of a patent under which. the .defendants claim to make their machines. This evidence is admisSIble as tending to show that defendants are acting in good faith. Under rule 24, par. 3 (31 C. C. A.clxv., 90 Fed. of the circuit court of appeals for the First circuit, an. exceptip.g party mus. not only set out or indicate the specific ruling for wl;lich he contends, and the specific portion of 'the' charge to which he excepts, but must also make proper references>to the pages of the record contai'ning the evidence on which the requests were based, or the evidence establlshing that the charge objected to was erroneous. The court may, however, notice plain errors, though tile exception/>. fail to comply with the above requirement. .
BY CORPORATIONS-LIABII,ITY OF. DIRECTORS.

I"

6.

ApPEAL-FORM OF EXCEPTIONS.

7.

A director of a corporation, who, by l).is vote or otherwise,has speclflcally commanded the subordinate agents of the corporation to engage in the manufacture and sale of an infringing article, is liable individually in an action at law for damages; and it is i.mmatel'ial whether or not he knew that the article manufactured and sold did infringe a patent. Brown, District Judge, dissenting: ' I