FEDERAL REPOR:L'ER,
vol. 41.
SINGEI!. MANUF'G
Co.
(l.
JUNE MANUF'G
(Oircuit Oourt, N. D. fl/.iwis. December 28, 1889.) L
TJaDB
Tb,atthe patentee, Singer, and his suCCeS801"8, have manufactured sewIng-machines pUblicly known as "Singer Sewing-Machines," and the name" Singer" has come to 1dentify the special kinds of made by them., does not, after the expiration of the patent, giv6 them exclusive right to the use of the term" Singer, " , as applied to sewing-machines.
l'IIAC:iUNES"-USB A.lI'TBB EXPIRATION 011' PATENT.
S. PATENTS lI'OB INVBNTIONB-EXPIRATION-'-RIGHTS OF PATENTEE.
&
'After the expiration of the patent, the 'pUblic'may manufacture machines having .thes,llome form of construction, and even ornamentation, used by the patentee. ; , A trade-mark consisting' of an oval plate attached to the machine, stamped In the c"elJtll,ld w1,th a shuttle and' two crossed, n,eedles, whose threads form an "S," and the edge with the' words "Singer Sewing.Machine Co,," and a,wreath of leaves, is nOt, in the abserlce of a right to the plate itself as a trade-mark, infringed by a, similar with the words "Impl'oved Singer" in the border, and the monq)rram "J. M. \Jo.," in the c,epter.
In Equity. o.Di4:d etc John G.
Bill for infringement trade-mark. and Lawrence Maxwell, Jr., for complainant. for
BLODGETT, J., This isabill in (lquity, charging defendant with an ofqomplainant's trade name and trade-mark, and seeking an bY'Jeal'!9n of the alleged infringement. that in the yeaI' 1850 the firm of The mnteril,ll allegatiOns of the bill 1. M. Co. commenced the manufacture'of sewjng-machines in the citY. of N;ewYork. That in 1863,sll.id 1. M. Singer & Co. transferred ,their lmsiness to the· Singer Manufacturing Company, a corporation under the la'Y!'! of the state of New York, and in organized 1873 the QOI;Jjlpany of the State of New York good-will, and trade-mll.i'ks to the present .plainant,. the Manufacturipg Company of the State of New Jersey . .'l'hat. Jrorp .the commenceDlent of said business of the, firm of 1. M. ,&,09. up to thetime of the filing of this bill, complainant and A,aye manufactureliand sold of many varieties, have from the first marked their ma:with ' tijf} llame "Singe.r, being. the llame of the founder' of have always advertisad;, $nd sold an of their ,'as "Singer have spent large sums of .;U!qpey,in iix)pr()ving andIJerfectipg said machines. and in advertising ,sawe; apqtl1at the so manufacturtld by complainant and {its acquired a world-wide reputation for the excellence w()rl,tmanship and their merit,and have 1?een Universally called ,f1.lld, knowp .bythename;of"Sjqger Sewing-Machines." That the adopand!llPprOPriation of said Illl0l6 was original with said I.M. Singer ,and complainant, have ever 'since used 'the same continuously and exclusively as a designation for the sewing-machines manufactured by them; and that said 1. M.
BINGER MANUF'G CO· .,· .TUNE MANUF'G CO.
209
Singer, the founder of said business, and the principal member of said firm, whose name was thus adopted as a designation for said sewingmachines, remained until the time of his death one of the principal owners of the business of said firm and stockholders in said incorporated companies. 'l'hat one of the most popular of the machines made by complainant and its predecessors for many years past has been the style known as the "New Family Singer," which is especially adapted to family and of which very large numbers have been sold. That this style of complainant's machine has always had a certain peculiar form, shape, Qutline, and ornaJllentation, not essential to the utility of the machine, but possessing a peculiar and distinctive general appearance, which is familiar to the trade and the public, as characteristic of said "New Singer" sewing-machines; and that the same is also true of another ofthe complainant's popular machines, the style knOWllfl,S the "Medium Singer," which .is adapted to heavierw:ork than the "New Family Singer." It is also charged that for many years past complfl,inant has also put upon its machines a trade-mark consisting of an oval brass plate, with the word "Singer" and the letter "S" stamped uponit, which plate, in the said style, knownas.the "New Family Singer" and ',' Medium Singer, "has been uniformly affixed at the side nearest to the operator, on the arm of the machine, near its base. That defendallt, the June Company, in violation of complainant's rights, has for Some time past been engaged in manufacturing sewing-machines and sells as "Singer Sewing-Machines," and as the "Improved Singer Sewing-Machines." and by other colorable imitlltions ofand variations upon oomplainant's said trade name. And for the purpose of further availing itself of complaimant's reputation and .trade name, and of inducing the belief that the machines manufactured and sold. by it are manufactured in fact by complainant, defendant .makes said machine in the exact form and size, and with the same shape, .outline, ornamentation, and general external appea,rance, of complainant's machines, anc;l particularly of complainant's" New Family" and "Medium Singer" ,sewing-machines; That defendant, for the same purpose, also affixes to the machines manufacturcdand sold by it, and in precisely the sarnElposition on said machines, an oval brass plate of precisely the same size and general appearance as the plate used by complainllnt, on which defen,dant stamps the words "Improved Singer," and the letters "S. M..Co.," and the defendant, in imitation of a,notber device used by complainant, .also casts the word "Singer" and the letter" S, " in large size, in the legs of the stands of the machines which it manufactures and sells; and the defendant advertises said machines manufactured and sold .by it by means of cards and prints which are imitations of complainant's cards and prints, and representations of machines of its manufacture. Defendapt, by its answel', denies that it has used. a colorable imitation of complainll,nt's machine for the purpose of inducing the belief that mamade and sold Py the defendant are maIilufactured by complainant, or tl)atit :makes and sells machi.nes in the sa.InElshape, outline, Ornamentation,· and general external appearance as the complainant's ml\.v.41F.no.4-14
exbept rin'so ,far as it is advised it mnyiawfullydo, and 8.versthat by' defendant resemble, 'in size, shape, exteh1lU or.other particulal's,the machinesniade by the , is beca'Ut'le such shape, size,8nd external appearance are publicproperty,'and, nb't in 'any numnet the exclusive property of complainant; That; while defendant's machines bear an oval plate with the words "Impro"ed Singer" thereon, defendant has the right to so mark its' machines; and that said platedoeBrIiot, in its general appearance, configuration, and'design, imitate the trade-mark of the complainant; , and that the monogram on: the said oval plate is not an imitation of complainant's alleged trade-mark. Also;'idenies that it advertises its machines as made by the oomplainant,or seeks to prOduce'theitilpression upon the publicthat'theniachines made by defendant are made by the complainant; ahd, while it admits that it uses the words "Improved -8inger " 'and';!'June Singer" in making and advertis!ng'its 'machines, de"rendant insists'that it hnsthe right to use thewordCCSinger" as de:scriptive,or: panlY' des13ripHve:; of mach'inesmade' hy: iti 'because the machihell and itspredecessors'acqtHre<Hhe name of CISinger,'Sewmg-oMachines," and became known to the public by the name 'of Singer Sewihg-Machines, because they were for a.. long time ma.nufacttired 'by: cciinplaina.ntand its predecessors 'under patents, from which .patentssaid,tnBchines obtained the name' of Singer ma:chines;and' that such patentshave'ld1'lg that sinoethe expiration of said patenfs'th'e def(!nd,anthas the.right to make machines the fonn 'and of machmes made'by the GOmplalllant under 'ita' patents; and '·whichbecame knoWfl'Jtbi the 'public by thenanie ()f the 'iniVentor,Singer. " f ,1:' " , ", ; been take,i upon the" issues made by the bill !and' ans'wer, froni which' it appearS ;that:in1850 ISaBcM.Singer and Edward Clltl'k'fdtffleel a copartnel'sh'i'p Ifor: theputposeofmanilfacturing sewing-mMhihesunder certainpatehtit which had' been gtantedfuithe said"Singera:n'dothers,which Md'heen acqu'ired'by said firm lis asIsignees or licensees; and that the machines ·made by the said firth became at once p'Ublicly known as" Siager Sewing-Ma:cliines" or 'I Sitlgers;" that said to manufaoturesewing-maehin'es ander the said ! patent until Bdme time in 1863,' :when the firth was trans, 'ferred to the SirigerManufacturingCompany of New Yark; a' corporation organized unda'l"il!helawsofthe state of New York; and afterwards/lil 1873;' :the husides8of'said Singer Manufacturing Company of NeW' York :was"transferredtothe:present complainant; a corporation organized and existing under the laws of the state of New Jersey; andtbat the principal "patents under which 'said'machines wet,emanufacturedremainedin force until about 1877 and during all the,tin'1e the property ofthe firm of!. M. 'S1nger&Co., and the Singer ManufaetJuting'Cornpany ofNevt¥ork, and "until after thill38.id,business passed1 10 the presentc6mplaillant;'and the eipil'lltionof said piitel'i-ts, sewingL ll1achines made by thefirrn and its st1Ctlet:lS'ors we:r-a known8iS 1 Sewing-Machines," and the ntlme'or w()rdnc,'Singer" becameuterm:of descdption to identify the 'W here:theCSeW'ing-machines: made
!?pecial of made I. :rtf. -Singer,&: their, that the machines. jntr<;>duced nnd made by and its'successors under said patents had' certain characteristics and pe.culiarities, in which they differed from maqe by other manufacturers; and that the name "Singer" became identified with the description of machines made by said firm and its successors under the patents ,owned or used by them, so that when the word "Singer" was used in connection with a sewing-machine it was understood by the public to mean and refer to a sewing-machine embodying the characteristics, mode of operation, and form of construction of the machines made by. said firm and its successors under the patents which they owned or controlled; that thtfcomplainant and its predecessors made several kindsandsiies of machin,es adapted to dift'erent kinds of work, and all known as "Singer The, pNof also shows that In 1871, complainant's the Singer Manufacturing Company of New York, devised. a trade-tnark, which it affixed to the arm of its machines, on the side nearest the operator, of an oval metal plate, in the center of which was the outline of a shuttle, two needles crossed, and the threads ftomthe as to imitate a capital letter "S;" with the words Sewing-Machine Co.," and a vine or wreath of leaves forming t4El border around the outer edge of the plate" the word "trademark" below the shuttle and needle and device. The proof also shows that-defendant has made and sold sewing-machines having stantially the mechanical features and characteristics of the chines made by complainll.nt and its predecessors under their patents, and in appearance and operation like complainant's " New Family and complainnnt's "Medium Singer." which it has advertised as the" Improved Singer" and "June Singer," all of which were mauufactured by the defendant, the June Manutacturing Compaily;;'thst the machines made by the defendants also have on the arm, in fl'Qrit of the an oval metaIplate, with the words." Improved, in the border, and the monogram, "J. M. Co.," in the centeriJt,ud;that for a short after the defendant commenced ness it sold a few machines. which came to it from its predecessor in business, with an oval metal plate on the arm, with a monogram consisting ofdtne letters "S. M. Co." in the center, and the words, "Improved Singer, Chicago," around the border of the plate; and that the letters uS.M. Co." were an abbreviation of the words "Standard Sewing-Machine Co.;" and that while the defendant, in advertising its machines,hasused the word "Singer," still there were always such words and symbols used with the word "Singer" as to indicate that its machineS W'erenot manufactured by the complainant, but were made by the defendant. · I The contention of complainant is that it is entitled to the exclusive use "Singer" as a trade name, and that the defendant has Do use the word "Singer" in any way, or ill: 'any combination, all descriptive of the machines, ,made by the defend,ant. The raised, by tliisbill are by no m6JUlS new, ones. 8uPstan,t,ially the same
fir.m
212
" FEDERAL REPORTl!:R,
questions were before this court in Manufacturing Co. v. Lartlm, 8 Biss. 151, and were also raised and passed upon in BriUv: Manufacturing Co., 41 Ohio St. 127; Manufacturing Co. v. Stanage, 6. Fed. Rep. 279; Same v. Riley, 11 Fed. Rep. 706; Same v. Loog, 44 Law T; (N. S.) 888; Same v. Kimball, 10 R. 173. In all those cases the present complainant sought to enjoin the use of the word "Singer" by the defendants as. a designation. for sewing-machines made or dealt in by them respectively; and the right thus asserted was denied in all those cases, except that reported in 10 Scot. L. R. In the Larsen Case, Biss. 151, it was said by, Judge "I think there can be nO doubt that the plaintiff cannot claim the exclusive right to the,' Singer Sewing-Machine.' All that it ,can claim is ,of 1ts own peculiar manufacture, with a device in the to make a nature of a, Otherwise, aftel'a patent has expired which has .established of a ail the Howe patent or the Wilson patent, the -patentee might go oil and have the benefit of the patent indefinitely. III III III These patents have all expired ;snd nothing can, tbereforej becla/med under them. Other persons cannot be. pfJlVented from rnannfactllring a ma<;hine like the Singer am\: may be ca)led, to distinguish it from other machines, 'Singl:'r's Sewing-Machine.' .If a has acquired a 'name which desighates a mechanism or ,a peculiar constru'ction, parts of which are protected by patents, other persohs, after -the expiration of the -patents,have the right to construct the machine, and call. it ,by that name, .because tbat only expresses the kind ,and,quality of tl1e maclline."
Sa,' in Brill v.lr.fanufacturVngCa.:, it' is "Descl'iptive as the name of a really distinctive character in their constrUction and principle of operation, when thepatentsprtr teeting them expired. the right to use that name accompanied ,the, right 'to make and sell the macbines. It would be a poor return fo'!" 'the· ,exclusive privilege which the, public giVes fora long peric;>d to the patentee, if, after the expiration of his patent. he. shall be allowed .to Virtually perpetuate hiS monopoly, ina measure, by'pl'eventing all others from using the name which will describe and make known the invention that has become dedicated to the public." .
Much more might be quoted from· the other cases which I have cited, asserting the same general 'prinoiple;, but, while it has been,since thl'l expiration of the patents, the right of any one to make sewing-machinea embodying the form of c.onstruction.andmode of operation of the Singer patents, it does not follow that any person has the right to so mark or indicate upon machines of hisnianufacture any signor lettering to the that it is the J;Ilanufacture ofthecomplainant, .,A,:paragraph from Judge DRUMMOND'S opinion, above referred to, is pertinent upon thill point: . "So that. while I hold tha.t. ,the defendant is not prevented iqga ·Singer Sewing-Machine, "stili' be cannot be permitted to do' any of which wm be to intimate, or to make, anyone believe; that tbemacbine which: he-constructs and sells is manufactured. by the,plain ..
SINGER :MANUF'G 00.". JUNE MANUF'G CO.
213
tiff. Neither has he the right to use any device which may be properly cOnsidered a trade-mark, so as to induce the public to believe that his machine bas been man ufactured by the plaintiff." The rule deducible from these adjudged cases seems clearly to be this: that, if the manufacturer of a patented mRchine adopts a peculiar style or form in which to embody the working mechanism covered by his patents, or any special mode of ornamentation to make the machine attractive and salable, such form of construction and ornamentation, although not strictly essential to the operation of the mechanical device covered by the patents, still becomes a part of the machine as presented to the world on the expiration of the patents. . It goes to the public in the dress and with the features which have been given it by its manufacturer under the patents. It is presumable that an intelligent manufacturer, wishing to secure a large sale for a mechanical device of which he has a monopoly, especially in a machine of the kind under consideration, which has become a part of household furniture, used his best skill and taste as a constructor to make the machine 'cmlVenient·andattractive, so as to give the best possible embodiment dfhis patented mechanical devices; and', as I have already said, this dress, thus given to the machine, becomes a part ofit, and the public, when theyhl1vir the right to use the patent, have the right to use the dress in which the patentee clothed it. Hence any sewing-machine manufactured by another. person, after theexpirl1tion of the patents, upon the principles covered by the Singer patentR, may be a perfect imitation of the rna<lhines which the complainant or its predecessors ·manufactured under their patents. It does not lie in the mouth of the complainantt&object: to the close imitation or similarity which the defendant's machines may bear to those made by the corriplainant. It is the misfortune, perhaps, in a certain sense, of the complainant, if it continues to manufacture Singer sewing-machines of the style originatedb.Y,it, that others may .also mauufactm:e machines which look, as well as operate, so nearly like thpse of complainant as thatit may take a person of experience to tell the difference between them, aside from the name or trade-mark of the manufacturer thereon i but thefactthat this rig1::lt ofothers Ulay embarrass the complainant's business is only a consequence following the right of the public to make andlJ.se, without tribute to the patentee,JD'liCll'ines which have, mechanical principles and forIPs o{ construction be{lome public property. It would be a.dangerous doctrine tbconcede that a patentee, who has invented a machine Which has gone into extensive public use, can, afterthe patents have become public propetty, still prevent the public from having the benefit of the until they devise and adopt some new form of construction from thllt'ad6pted by the manufacturers under the patents, and create a new,J.'eputation for their machine. I;amf therefore, clear that'the claim set lip by complainant to theexelusive lise of the' word" Singer" as a trade hliree;:and to ' the exclusive right to ,the mode of construction, '{J.vpear:, .ance, and ornamentatlOnadopted by' the the patents were in for.ce'fOr its "New Family 'is riM;
FEDJ1JQAL QEPOQTERr'voI.41.;;
well foundediandshbuld' not be so held','asamatter'oflaw, upon the proofs' in this case. " ;",: As to the alleged infrtngemeIft 'of complainant's trade-mark, I can onls: say that defendant's oval plare"wheninspected and examined, is not an imitation of theoomplainant's trade-mark. Complainant has not, 'according to the showing of iU! bill ,and the proofs, acquired any specialdgbt to the oval brass plate affixed upon the side of the sewingmacb.ine!liearestthe operator; but that oval brass plate must bear certain and letterings which make the complll:inant's trade-mark, and which I do not find in tbeoval brass plate used by the defendant. The Qlaim iBthatcomplainant originated this trade-mark, and began the use of it, eady in 1871, which, according to the proof, was while many of the patents owned by oomplainant·and its predecessors remainded in force; and, :while I do not deem it necessary to pass upon the question here, I haveseriOliiS doubts whetb.er a manufacturer making a machine under a patent ,or patents can, while so doing,; apply a trade-mark which shall continue:hisexclusive property after the expiration of the patenU! which gave character to the mechanism; but Ifeel very sure thatif,in so applying, a the plate or escutcheon on which it is impressed or engraved a part of the ornamentation ofthe machine, the plate itself maybe used 'by others, as an ornament of the machine, after the expiration of the patent, even if the later manufacturer has no right to use the symbols of the trade-mark. I do not find, from the proof, that ha.s been guilty ofinfringin/l: the complainant's trademark., 'The bill is therefore dismissed, 10T want of equity, at complainant'llcoSlS. I
SINGER MANUF'G
t7.
SAME 11. LARSEN.
rcircuft
Cowrt, N. D.ltUncriB. December 23, 1889.) , '" '
TJu.DB-YuKs-INl"BmGIlMBNT.,' '. ,
.
A manufacturerbas the to buy old machines of anotherma'ke, and to repair, repaint, and sell them again, without removing the trade-mark put on them by their
InEquity. Bills for infringement of trade-mark. , Offield&;, Towle and L. Maxwell, for eomplainant. ,J.G. EllioU, for defendants. BWDGET'J'j J. These two cases have bElen tried with the preceding llgainst the June Mlinuf!1cturingCompany ,ante" 208, and present the SIlme issues; and the, !3&metestimony 1:18.$, by stipulation, been con· sidered. The Jactsa,re;l!o entirely similar thtlt 1 do not deem it necessary to go into any anqlysis or statemellt of them. In the last-named '.-(,