FISH BROS. WAGON CO. V. FISH BROS. MFG. CO.

457

stitutional sense, as interpreted and declared by the supreme court of the United States.. It may be said-it may occur to anyone to say-that the transportation of lottery tickets into a territory which was under the absolute control of congress was as much within the mischief intended to be prevented as the transportatioh of such tickets from one state to another; but it is no more true than was the powerful argument presented to the supreme court that it was not intended to prohibit to citizens of the United States, becaUSe they happened to be domiciled in a territory, the protection of the courts of the United States, and it was as easy a matter in the one case as in the other, as suggested by the chief justice, to apply the remedy. If congress desired to prohibit the transportation of lottery tickets into a territory of the United States, it should have said so. We may not enlarge the scope of a criminal statute to declare an offense which congress has not created, because we see that the mischief is the like mischief that congress has sought to prevent in respect to other geographical divisions of the Union. I have come reluctantly to the conclusion that it would be judicial legislation for the court to hold, in view of the decisions of the supreme court, that the word "state," as used in this act, includes the territories of the United States. It follows, therefore, that this complaint presented to the commissioner charges no offense against this petitioner, and that he must be discharged from imprisonment.

FISH BROS. WAGON CO. v. FISH BROS.

CO.

(Circuit Court of Appeals, Eighth Circuit. June 19, 1899.)
No. 1,091.

1.

JUDGMENT AS ADJUDICATION-MATTERS CONCLUDED.

In an action between the same parties, or those in privity with them, upon the same claim or demand, the prior judgment or decree upon the merits Is conclusive of every matter that was or might have been litigated in the earlier suit.

2.

ASSIGNMENT-RIGHT TO USE TRADE NAME OR DEVICE.

A rIght of Individuals to use certain trade names and devices in connection with the manufacture and sale of an article, established 1:)y a judicial decree, is not personal, in such sense that it cannot be sold and assigned to another, in a different locality, in connection with a transfer of the good will of their business. 1

Appeal from the Circuit Court of the United States for the Northern District of Iowa. Charles Quarles, for appellant. W. J. Turner (Charles W. Chase and Halleck W. Seaman, on the brief), for appellee. Before CALDWELL, SANBORN, and THAYER" Circuit Judges.
lAs to right to assign trade-name generally, see note to R. W. Rogera Oo.V. Wm.Rogers MfS. 00.,170. O. A. 579.

, ·9/) FElDERAL. REPORTER:' ,

': SANBORN, Circuit Juoge. In 1891, the Fish Bros. Wagon Company, a corporation, and the appellant in thissnit,was :manufactur:ing and selling farmrwagons"at:Racinej in the state of Wisconsin;: which it 'marked or designated, on 'the wagons aIiddnits advertisements, by the use of the words "Fish," "Fish Brothers," and "Fish Brothers Wagon Company/'and by the picture .of a fish" with these' anclother words printed or painted upon'it. The business of mantifacturingand sell1ng these wagons at Racine had, been built 'G. Fish and his brother, and had been carried on there for' ;ttiany years, until the wagons marked with ,these names and 'hag' become wen known to the 'trade. The appellant had succeeded 'to this busines's,ahd to the.rtght to use, these names and devicesr aDd the Fish brothers had retired from that business. At the Barrie time, iIi this year 1891, Titus G.Fish, Edwin B.Fish, and Fred C. Fish had formed a partnership liIlder the name ofFish Bros. & Co., mid they were selling wagons'marked with substantially the same nallies ianddevices, which were made at South Superior, in the state'Qf Wisconsin, by:the La Belle Wa.gon Works, a corporation, under,' 'lj, contract, which it had made with:Fish Bros. & Co. Thereupon, in' Julyof that year, the appellant brought a suit in equity in the circuit court ,of Douglas county, in the stah!: 6f; Wisconsin, against the La' BelleWagonWorks, 'Titus G., Fish',' :1Ddwiil B. and FredJC>Fisn, to obtain! II decree'thl!'t it was the sole owner of ,the right to use the words "Fish ,BTos./,''''Fisn Bros. "Fish Bros. Wagons," and the device of a fish, with the words "Bros." or "Brothers" or "Bros. & Co." printed or stamped thereon, in designating wagons or vehicles. A preliminary injunction was issued against tM:de£ndants ln' that' suit, in. pnrsuanceof tqe' prayer of the bill. The ,d,e,f,end,l:J.nts then answered, claimed the exc1,usive right to use these liVordl!l' 'and devices;and'appliMfor an injunction against the appellant, and for an order. vac;at,ing the injunction against them. The circuit court of Douglas county, entered an ol'der denying this .ap,plicatioJ;l" i1ll4 '. the a'ppeaIM'to' the · 'conrtof: Wisconsin" in. JUUf:!',.JB92,' reversed ,that order"a,nd,'lield that tbef.appellant, and, the, defendants in that case had,the"right to use the words and devices in controversy to mark ,the wagons which made ilpct ,s9Id,,: but n,-one, ,0t, the to use' wpl'ds,cand 'deVICes, noUaWKl1l1Y,use tj::teIlj. in such a way as would be calculated to inducepmtchasers to buy their wagons as and for the wagons manufactured by the 'Raci'ne:Fish v. La Belle 82 Wis. 52N.W. The history of the growth of the business of DiarrMactufihg these w::tgons, of the use, of the ",ords andde+ices ili'bl}lltroversy, and of relation' of Titus G,' Fi'sh' and EdWin i B. Fish tothaf. business and to the appellant prior to 1891, appears from the statement which precedes the ,opiuitl:ilhl 1:1¥l.t I Cfi!3e. ,The 'story is, ,nm .:Wilt.erial to the decision of this case, and it will not be related here. It is sufficient to say that :Titlls:!G. Fi'shllJud.Edwin B. Fish, made no, contract with the appellant or its predecessors that theywoUlduot use the names

FISII BROS. WAGON CO .. V. FISII BnOS. MFG. CO.

459

or devices in in the business' of manufacturing' and selling wagons. The Wis'consin case was subsequently transferred to the circuit court pf Milwaukee county, and was there tr1ed on its merits. Therflsult that in 18\)4 a decree was rendered which fixed the rights of the· parties to' that suit in accordance with the opinion of the supreme court which we have cited. By that decree the defendanrswere enjoined from representing that they were manufacturing the' genuine Fish wagon, or the genuine Fish Bros. wagon, or the genuine Fish Bros. & Co. wagon, and from using the words and devices in controversy "in such a way as will be calculated to induce, or will induce, any per-son to buy the wagons manufactured by said defendants, or either of them, as and for those manufactured by the plaintiff at Racine; Wisconsin"; but It was expressly "that the defendants Titus G. Fish and Edwin B. Fish are at liberty in good faith to apply to the wagons aild other vehicles manufactured by them the words 'Fish Bros.' or ']'1sh Bros. & Co.,' or the picture of 'a. fish, provided they do it in a way not calculated to induce persons to buy the same as and, for tn,')se manufactured by the plaintiff at Racine, Wisconsin, or to induce persone to bellevethat the defendants are, or that the plaintiff is not, the successor to the original.business carried on at Racine, Wisconsin." This decree was rendered in April, 1894, and in December of that year the La Bene Wagon Works made an assignment; but Titus G. Fish continued to sup rintend the manufacture of wagQns under its assignee until October, 1895. In August of that year, Titus G. Fish, Edwin B. Fish,. and others, incorporated the appellee,. the Fish Bros. Manufacturing Company. This corporation was organized to manufacture and sell farm wagons, pursuant to an agreement between Titus G. Fish, Edwin B. Fish, and William P. on the one hand, and certain citizens of the city of Clinton, in the state of Iowa, on the other, to the effect that the first parties would remove from South Superior, and set up in a wagon factory at Clinton all the machinery and patterns which they had in use at South Superior, in the state of Wisconsin, and that they would transfer their business of manufacturing wagons to Clinton, Iowa. They performed this agreement; They removed their machinery and patterns to Clinton, and Titus G. Fish and Edwin B. Fish assigned to the Fish Bros. Company all the good will of their business, and the exclusive right to all the trade-marks and trade-names which theY had used jn their busjness of manufacturing, buying, and selling wagons. Titus G. Fish became the president, and Edwin B. Fish one of the directors, of the new corporation. As soon as this corporation had equipped its factory, it commenced to manufacture at Clinton, in the state of Iowa, and to sell, farm wagons, which it designated, upon the wagons themselves and in" its advertisements by the names and, devices which were in controversy in the suit Wisconsin. Thereupon the appellant exhibited its 1m against the appellee in the circuit .court of the United States for the Northern district 01' Iowa, and prayed for an injunction against the use by the appellee of the words "Fish Bros.," "Fish Bros. & Co.," ''Fish Bros. Wagons," and of the device consisting of a fish, with the

was

460

95

,FEDERAL REPORTER.

wprds "Bros.," "Bros. & Co.," or Wagons" upon its :wagons 0).: in its advertisements, and against its advertising any of its wagons as the "Genuine Fish Bros. Wagons," or the "Fish Bros. & Co.Wagons." The appellee that it had the right to use these words and devices, under the decision and decree in Wisconsin, and that upon its wagons and in all its advertisements it had caused it to plainly appear that its wagonfl werle not made by the at Racine, Wis., and, that they were made by it, at Glinton, Iowa, SQ that no one could. be deceived into buying them under the mistaken belief that they were made by the appellant. Testimony was taken, l:lnd the case was heard and decided upon its merits. The court held of the parties were fixed by the decree in Wiscollsin, andreJ,ldered a decree in this suit in accord 'with the decree in the,Wiscouslu case. It adjudged, iq terms, that the appellee had acquired by assignment from Titus G. Fish and Edwin B. Fish the right to the use of tb,e words and deyices in question to the extent and in, the same way that the court in Wisconsin that the Fishes had the right to use and that the appellant also had tb,e rightto use them, as thE' successor to the business and good will at Racipe; and it enjoined the appellee from representing tbat it was cpntinuing the business at ,Racine, and from representing that its wagons were the product of the factory at Racine, from claiming or rel?resentirigthat its wagons were the genuine, or that the complainant's were·not the genuine, Fish wagons, and from ul'ling the word "genuine" ill any of its advertisements" or other means used to furth¢rits business and the sale of its wagons. 'l'he opinion of the circuiteourt upon which this decree is founded appears in, 87 Fed. 203. We have stated with tbiscare and particularity the course of the prior the right to the .nse of the words and devices in cop.troversy)n this suit, because to state fairly the issues involved and the decree rendered in that litigation is to decide this case. The record discloses the faet that the same rights and questions, upon a state of facts not materially different, are involved in this suit that were in issue and were determined by the decision and decree in Wisconsin. It discloses the fact that the complainant is the same as in the suit in Wisconsin, and that the defendant is the assign of Titus G. Fish and Ed',Vin B. F'ish, the ,two defendants in that suit, who were held by the Wisconsin' courts to be entitled to use the words and devices in question. The unavoidable result of this state of facts is that the rights of the parties to this suit are determined by the decree in Wisconsin. The appellant was the complainant, and the appellee is a privy of the defenqants in that case, and the smne claim or demand is in issue in this suit that was determined in that suit. In an action between the same parties, or those in privity with them, upon the same claim or demand, the prior judgment or decree upon the merits is conclusive of. matter that was or might have been litigated in tbe earlier suit. , BO,ard v. Platt, 49 U. S. App. 216,223,25 C. C. A. 87, 91, and 79 Fed. 567, 571; Cromwell v. County of Sac, 94, U. So 351, 352; Iron Co. v. Eells, 32 U. S. App. 348, 366, 15 C. C. A. 189, 201, and 68 Fed. 24, 35, 36. ,

FISH BROS. WAGON CO. V. FISH BROS. MFG. CO.

461

The appellant contends that this rule is inapplicable to the case at bar, because the right of Titus G. Fish and Edwin B. Fish to the use of the words and devices in question was a personal right, which they could not assign, and because it was not subject to sale as distinct property, separate from the articles manufactured and the business of manufacturing, so that, as it claims, the appellee acquired no right to their use under its assignment from the Fishes. But this position is untenable, because the evidence is clear, not only that the assignment of the right to use these words and devices contained a conveyance of the good will of the business of the Fishes in -Wisconsin, but also that it was a part of a single transaction by which they transferred to the appellee, at Clinton, Iowa, all the machinery, patterns, business, good will, and the right to the use of the trade-names which they owned and used in the business of manufacturing wagons at South Superior, Wis., and of selling them throughout the country. The assignment was not invalid because it was not accompanied with a transfer of the business and machinery. Nor was there anything so personal and private in the right to use these names and devices that it was incapable of sale and transfer. That right was the property of the Fishes, and this litigation indicates that, in connection with their business of making and selling wagons, it was property of considerable value. Restraints upon alienation are not favored by the law. The modern rule is that one may do what he will with his own, unless prohibited by a positive statute or restrained by mani· fest public policy. The principal value of property inheres in the right to sell it, and all property is presumed to be salable and assignable, unless its sale or assignment is clearly forbidden. Barnes v. Poirier, 27 U. S. App. 500, 501, 12 C. C. A. 9, 10, and 64 Fed. 14, 15. There was no law and no public policy which inhibited the assignment by the Fishes of the right to use the trade names and devices here in question, and their assignment to the appellee vested in it all the rights and privileges which they held under the decree in Wisconsin. Nervine Co. v. Richmond, 159 U. S. 293, 302, 16 Sup. Ct. 30; Kidd v. Johnson, 100 U. S. 617, 620; Chemical Co. v. Meyer, 139 U. S. 540, 11 Sup. Ct. 625; Hoxie v. Chaney, 143 Mass. 592, 595, 10 N. E.
713.

The decision and decree in Wisconsin relieve us from a consideration of the question whether or not the use by the appellee of the names and devices in controversy tends to confusion in the trade, and to its diversion from the appellant. The decree establishes the right of each of the parties to this suit to use the names and deviceg to mark its wagons, on the single condition that it does not so use them as to induce purchasers to buy its product in the mistaken belief that it is the product of its competitor. It must be conceded that the use of the same names and devices by two rival manufacturers makes it difficult to avoid confusion and mistakes in the trade, and to prevent the infringement of one upon the other. 'fhe decree in Wisconsin has, however, established that right, and it has imposed the duty of so exercising it that no purchaser will be induced to buy its wagons in the belief that they are those of the appellant, upon the appellee in this suit. The evidence in this case is convincing that

.FEDERAL REPORTER.

.co;mpetiti<m and that Ule appellee isinclhwd to press,:overthe; )ine, fixffl.:by .,the in consi:q;, bu.t the duty of the court belqw ;w,as fully discharged, and under :that decree the :of its power was reached, when it conrights there established, and enjoined their ,violation. A cllrefjlle:omparison of the two decrees. ill the light of the record in this ease has forced us to thecondusion that nO. decree can be drawn. -Which will accomplish this res1,J.lt more effectually and exactly than that which the court below has rendered., It Il,lust accordingly be affirmoo, with .costs, and it is so ordered.

. WESTINGHOUSE ELECTRIO & MANUFACTURING CO. v.BEACON IjAMP CO. et al. (Circuit Court, D. New Jersey. qJuly 14, 1899.) 1.
PA'.I:'EN,TS-:ANTICIPA1'ION-UNSUCCESSFUL,ExPERIMENTS.

Experirp.ents producing results, and consequently abandoned, cnllnot be held to \,stabllsh. a priO::t;" use which would dose the door to ftirther'lnvention by Which a commercially valuable and useful product can be placed upon the market.'
TI;te utmtyof an invention must be gauged. by the state, of. the art at the time tpe patent was applied for, and it is Immaterial that since then other means have been employed to accompIls!:i the same result at still less cost.

2. SAME....."UTIUTy.

3. SAME'-CARBONS FOR INCANDESCENT LAMPS.

Patent No. 323,372, covering a Vrocess of manufacturing carbon conductOl'S for incandescent lamps by satllrating silk thread or, other animal matte).-or film with a solution of dilute sulphuric acid and sugar, and then heating the saturated material so as to. evaporate the water, and leave the acid in the fiber, and finally carbonizing suitably fOrmed 'strips or filaments thereof, construed, and· held valid and Infringed.

This :was a suit in equity by the Westinghouse Electric & turing Company against the Beacon Lamp Company and others for alleged infringement of a patent for a process of manufacturing carbon conductors for incandes.cent lamps. J. Edgar Bull, for complainant. E. J. Myers, for defendants. KIRKPA'IlUOK, District Judge. The bill in this case sets out that the complainants are the holders of letters patent for an invention relating to a new and useful carbon for incandescent lamps and the proceslil for making the same. It charges the defendants with infringement, not only by the use of the said process, but also by the manufa·cture,and sale of carbons for incandescent lamps substantially such as are made in accordance therewith. The patent referred to in said set out in the record__No.323,372, dated July 28, 1885 -states its opject to be "to pcovide for incandescent electric lamps a flexible carbon: of high specific resistance, which caube cheaply and easilyproduced/' No claim, however, is made for the carbon so to be prOduced,; on the contrary, the ,words of the patent-are: "The is Dot herein' claimed per se, as: it forms the