324
FEDERAL REPORTER.
hemp in any form. That being the case, I do not see how the defendants can be charged or held liable for the infringement of this patent, because, while the patentee, in his specifications, states that fine cut hemp is only occasionally used upon uneven joints or surfaces, yet he makes his claim for the combination of the various ingredients named with fine cut hemp and boiled linseed oil, so that it appears to me the complainant has limited himself to a combination in which cut hemp must be used. The law upon the subject, I think, is very well stated by Mr. Walker,in his work on patents, at section 349: "Omission of one ingredient of a combination covered by any claim of a patent averts any charge of infringement based on that claim. A combination is an entirety. If one of its elements is omitted, the thing claimed disappears. Every part of the combination claimed is conclusively presumed to be mater(al to the combination, and no evidence to Lhe contrary is admissible In any case of alleged infringement. The patentee makes all the parts of a combination material when he claims them in combination, and not separately. " Now, it is not for the court to inquire for the purposes of this case why this complainant saw fit to make cut hemp an essential ingredient of his patent. Hiscement may be just as useful, and for certain purposes may be even more so, with the cut hemp omitted, but he has taken his patent for the <;lombination of these chemical ingredients with cut hemp, and hence must stand or fall by, that combination. Why he so took it, whether because the patent-office insisted upon his taking his claim in that form, or otherwise, the court is not at present advised. It is enough to say he has so limited himself.. The former restraining order is fore set aside, and the motion. for an injunction pendente lite is overruled.
COA'ts
et 01.
'IJ. MERRICK THREAD
Co. et al.
Circuit Oourt, S. D. New York. September
28. 1888.)
TRADE-MARES-PATENTED DESIGN-EXPIRATION OF PATENT.
Plaintiffs sell their six-cord sewing thread on spools of light-colored wood, holding 200 yards each, each spool-head bearing a smaller circular label of a light gold color with a dark center and margin. On the gold ground are the firm name, and the words "Best Six Cord," and on the center are the number of the thread and the figures and letters "200 yds." in light gold color. Since 1873 they have embossed the number on the wood in the space around the label, under a patent granted in 1870 for seven years, and acquired and exclusively used by them since 1873. Defendants have sold their six-cord thread on spools holding 200 yards. and bearing substantially the same label. with their names substituted; the 'figures and letters "200 yds." omitted; a star in the center, and the number at one side, and with similar embossed numbers. Others had used black and gilt labels nearly or quite as early as plaintiffs; and labels on spools of six-cord thread holding 200 yards. with the makers' names in place of plaintiffs' names, were used from 1854 to 1874; and from 1868 to 1878. labels with a like substitution of names, and without the words and figu;es "Best Six Cord" and" 200 yds. " were used on spools of other than six-cord thread. '. Held, that the defendants' label does not amount to a repre-
COATS 11. MERRICK THREAD CO.
325
sentation that the thread Ii that of plaintUfs. and that, after the e:rpirationo f the. patent, the use of the embossed numbers became common to all, au,d plaintiffs were not entitled to relief from any misrepresentation as to the origin of the'thread incidentally resulting from plaintiffs' prior monopoly.
In Equity.
Frederic H. Betta and Benjamin F. Thurston, for plaintiffs. W. O. Witter, for defendants.
On final hearing.
WHEELER, J. After issue joined and proofs taken, the plaintiffs moved to further amend their hill. The motion was denied, with leave to renew it at the hearing. It has been renewed, and is now granted, to make the case symmetrical. The plaintiffs' firm have for a very long time made six-cord sewing thread, and sold it on spools of light-colored wood, holding 200 yards each; and since ahout 1842 have used on each spool-head a circular label, smaller than the head, of light gold colOr around a dark center, having a dark line around near the margin, and the firm name and the words "Best Six Cord" in a circle inside the line on the gold ground, and the number of the thread with the figures and color on the dark ground of the center, letters "200 yds." in light leaving the wood of the spool bare around the label. On April 5, 1870, design letters patent No. 3,949 were granted to Hezekiah Conant for embossing the number of the thread in figures on the wood of spools in spaces around the label, to run seven years, and were acquired by the plaintiffs. Since about 1873 they have used these embossed numbers on their spool-heads in connection with the label. The defendants make six-cord sewing thread, and sell it on spools holding 200 yards each, and since 1878 have used substantially such a label with the name of the Merrick Thread Company substituted for that of the plaintiffs, the figures and letters "200 yds." omitted, a star in place of the number in the ceilter,and the number at one side, in connection with similar embossed numbers on the margin of. the spool-head. The bill is brought, as it stands amended, for relief against such use of these labels and embossed numbers. The plaintiffs have no monopoly of six-cord thread, or of the sale of it in lengths ·of 200 yards on spools. All others have a right to manufacture it, put it up in that form, describe it, and dispose of it. They have an exclusive right to the reputation acquired by their thread, and to have the thread pass current in trade as theirs, and no one has the right to give currency to other thread than theirs as theirs. j[cLean v. Fleming, 96 U. S. 245; Trade-Mark (Ja.ses, 100 U. S. 82. The words "Best Six Cord" are merely descriptive of the quality, and the figures merely denote the size of the thread. These are all the statements that are common to both labels, and these could not be appropriated by the plaintiffs to the exclusion of others for these purposes. Manufacturing Co. v. Trainer, 101 U. S. 51. When the patent expired the use of the embossed numbers for all lawful purposes became free to all. Grantv. Raymond, 6 Pet. 218. These principles are not much controverted, but the plaintiffs insist that their long use of these words and figures, dis-
,
"qf
theseiorms anel:colots; Upon their labels on the central parts ofligh;tic?ld,redwood', hlis' made the mere appear,of, the the labels,. a representatiqn that the thread is of their manufacture; and that their use of the embossed numbers with thelabel has made that com.bination by its mere appearance a still stronger represen\ation, to that effect. Whether the appearance amounts to such a representation is a question of fact to be determined on the evidence. Black and gilt labels appearto have been used by others PI;l spools 'of thread nearly and perhaps quite as early as by the plainSome similar to the plaintiffs',. with the names of the makers of thread in place of the plaintiffs' names, were used to some extent on in lengths of 200 yards on each spool from 1854 to 1874; and. Borne without the wordsandfigures" Best Si* Cord" and" 200 yds.," with,a like substitution of names, were used on spools of 200 yards of sixcqrd and otber thread by predecessors ofthe defendants from 1868 to 1878. The use by these others was less than that by the 'plaintiffs, but was sufficient, to make theirthread with these labels known in the markets. The appearance of the spools would, to some extent, indicate the origin of the thread ,without reading the names of the makers) and as more of it was the would more ollen so represel}t than that it was thread of others; but the rights claimed by these others in the markets were not resisted, and appear to llave become well established. When the defendants entered the markets with their label, it was comparatively as much a reprej)entation.that their thread was the thread of the others as that it was the thread of the plaintiffs; and they appear to have hadas good right there ,with their labels as the others would have to continue there with theirs. 'l'he fact is not found, upon all evidence, that the use of the label on the plain spool-head by the defendants amounts to a representation that the thread came from the plaintiffs. The embossed numbers do not of themselves indicate origin at all; but the long and exclusive use of them by the plaintiffs may have so associated them with their label and thread ,that use of them by the defendants in connection with their label might lead ordinary customers, to some extent, to think that the thread .was frOp.1. the plaintiffs. If so, the use of them in that manner by the defendants amount to a representation so far that the thread of the. defendants was that of plaintiffs. However this may be, but fOI the patent the defendants might with equal right have used the numbers as did. When the patent expired, the use became com· to all, .as if there had never been any patent covering them. The the monopoly during the term of the patent, subject to the consequencEisoofits expiration. The incidental effect upon the plaintiffs: of the numbers. by the defendants is one of these conse· It'does not arise from any wrongful invasion of the plaintiffs: from the rightful exercise of the defendants'rights. The mode of exercising their monopoly, by using the numbers ex· themselves, exposed their trade to what might be inferred from Jhl1t. when. the use should become common. The law does not extend pP,t,fl:f}t ,beyond ,i.ts term to protectthem from such results.
V.ELLSWORTH.
327
v. Jacobus, 14 Blatchf. 337; Filley v. Child; 16 Blatchf. 376; 8ewim.g-Machine Co. v. Frame, 21 Blat'chf;431, 17 Fed. Rep. 623; Gallyv. Co., 30 Fed. Rep. 118. The facts of this case, as they appear from the .proofs, do not bring it within the principles of McLean v. Fleming, 96 U. S. 245; Frese v. Bachoj, 14 Blatchf. 432; Stocking Co. v. Mack, 12 Fed. Rep. 707; Soap 0>. v. Thompson, 25 Fed. Rep. 625; Kinney v. Basch, 16 Amer. Law Reg. (N. S.) 596, and note; and others of the same nature, -relied upon for the plaintiffs. Much and repeated consideration of this ellse discloses no apparent ground upon which the bill canbemaintainEld. Let a decree be entered dismissing the bill of complaint, with costs.
WEBSTER
et al. v.
ELLSWORTH.
«(Jiro'llit Oourt, E. D. Miohigan. February 21, 1888.) OoPYRIGlIT-"ExOLUSIVE RIGHT TO SELL BOOK-CONSTRUCTION. 8
The graDt of an "exclusive right to take orders for and sell" 8 book within. certain territory will not be construed as a covenant that no other.person shall sell the book in competition with the grantee. but only 8S 8 coyenant that this shall not be done with the consent or connivance of the grantor.
At Law. On motion for new trial. ' ' .. This was an action for books sold and delivered. Defendant sef'·up in defense the following state of facts: On October 3, 1884, plaintiff and. defendant entered into a written contract, by which plaintiff agreed "to grant to defendant the exclusive right to take orders for a.ud sell. in '. the territory above mentioned" (the state of Michigan) a certain book called "Huckleberry Finn," and defendant agreed to sell said book: bysu.bscription, and to pay for all books so ordered at a specified price., This book was published by the plaintiffs, and published only by them. Defendant got his prospectuses out in the fall of 1884, and at, onCe engaged canvassers, and set them at work. The book was ready for delivery the latter part of February, 1885, and at that time defendant commenced to deliver it to his subscribers. About this time the book appenred in the book-stores of several cities of Michigan, and was, both· by advertise,. ment and otherwise, offered for sale, and sold at a price much lower than defendant had bound himself to sell them. In consequence of this,de,. fendant's monopoly under the contract was practically destroyed; ,He lost the profits that would have arisen from the sale of the booH;,;aud, also lost the value of his time expended In preparing for the canvass. The book-dealers, who purchased and sold in Michigan, bought at regular supply stores ofthe trade, and had no notice of defendant's claim.. ' There was no evidence tending to show that plaintiffs were privy to the lation of the book, or that they knew it was· being sold in this state to the prejudice of defendnnt's rights under his contract. The court held this to be no defense, and directed a verdict for the plaintiffs.. Defendant moved for a new trial.
