Opinion
06-16-1913
HILL BREAD CO v. GOODRICH BAKING CO.
Henry M. Wise, of New York City, for complainant Robert H. McCarter, of Newark, Wollman & Wollman, of New York City (A. H. Kohn and B. F. Wollman, both of New York City, of counsel), and John Montieth, of Newark, for defendant.
Application by the Hill Bread Company, for preliminary injunction to restrain the Goodrich Baking Company from using certain marks for its bread. Motion denied.
Henry M. Wise, of New York City, for complainant Robert H. McCarter, of Newark, Wollman & Wollman, of New York City (A. H. Kohn and B. F. Wollman, both of New York City, of counsel), and John Montieth, of Newark, for defendant.
STEVENSON, V. C. I shall dispose of this matter now. It is quite unnecessary to examine the briefs which have been referred to and which no doubt cite the cases.
The law of unfair competition has been quite fully thrashed out in this state as well as in other states, and the principles are now quite well settled.
I cannot find the slighest evidence in this case that the defendant had any intention to defraud. The evidence on that subject, presented by the defendant, is not met by any affidavit from the other side. And it is highly improbable, under the circumstances proved in this case, that the Loveless Company would have originated this particular label in simulation of the complainant's label. The Loveless Company started out to exploit the "Luxury Bread" and made contracts in 29 different places in which this label was to be used. It was to its interest to differentiate Luxury Bread from any other bread of every other local dealer in the various 29 places. Nor is there any evidence that the defendant intentionally selected the label innocently devised by the Loveless Company on account of its similarity to the complainant's label with intent to simulate the bread of the complainant in the Newark market. The indications are quitepositive that both the Loveless Company and the defendant from the start sought to capture the market as far as possible with this "Luxury Bread" and mark it by a distinguishing label. The charge that there was any intention to defraud in the operations of the defendant in this case is without support, and in fact might be said to stand disproved.
In respect to the claim that there is no precise proof that any purchaser in fact has made a mistake, or has been defrauded, that is not essential in an Injunction case where the law of unfair competition is involved, if the two competing articles present such a similarity of appearance that the court can see that confusion, mistake, and fraud are liable to occur, whereby the complainant will be injured and the public deceived. But it is always a very important matter, especially upon a motion for a preliminary injunction, where the complainant has had ample opportunity to inquire whether it appears from the evidence that any person has been in fact mistaken or deceived in purchasing an article manufactured by the defendant when he thought he was purchasing an article manufactured by the complainant. This case is absolutely destitute of any evidence of any such mistake or deception in fact in any actual instance. It is true that dishonest dealers will sometimes hand out anything which they think they can sell to their customers when they cannot supply the particular article called for. The law of unfair competition does not protect purchasers against falsehoods which the tradesmen may tell; the falsehood must be told by the article itself in order to make the law of unfair competition applicable.
The mere fact that boys went into a grocery store, called for Bed Seal bread, and the grocer sold the defendant's bread to them, whether with or without the false representation that it was the bread called for, is very slight evidence on which to base a preliminary injunction in this case, when the purchaser was not deceived, got precisely what he wanted, and no one anywhere was deceived by the transaction. The application for an injunction in this case appears to stand solely upon the claim that the similarity of the defendant's loaf of bread, as presented in the market, to the complainant's loaf of bread must be adjudged by the court to be naturally or necessarily productive of mistake or fraud.
This brings us to what probably in this case, and generally in the majority of cases, is the determining question, and that question arises from an inspection of the two articles, and a consideration of all the conditions of the trade, under which the two articles are put forth. If bread had been sold in Newark, until the complainants started with this mode of preparing their bread for the market without any covering whatever, or if, when sanitary notions began to be regarded, bakers had put their loaves in paper boxes, and no one in Newark had ever seen a loaf of bread tied up in waxed paper with a red label on it, and with a red string tied around it, until the complainant had adopted that mode of putting its goods on the market, and the complainant was in possession of that entire market with this unique method of offering its goods, and thereupon the defendant started out with this package in evidence here, I think, then, a very serious question would arise whether a case for an injunction had not been made out by the complainant apart from all intention to defraud on the part of the defendant, and apart from and without the aid of actual proof of deception or mistake. Perhaps a question would then arise before the court, on an inspection of the two articles, whether the tout ensemble of two articles was not so similar that the court would say that the distinction was not apparent, and that the defendant, to be fair, should adopt some other way of presenting its goods.
That is not the case here. It appears that very large quantities of bread are sold wrapped in white waxed paper with red labels and tied with red string, and that buyers of bread are used to this method of wrapping a loaf of bread for sale; that such is the way in which one may expect to find loaves of bread supplied in groceries. So that we have a buying public in and around Newark, educated in respect to these packages, knowing that bread is sold in this way, and, under those circumstances, the public look naturally more at the detail than they otherwise would, and, when we come to look at the details of these packages, we find they are very dissimilar. The most casual observation discloses marked differences. I do not think I need repeat them; they have been very fully pointed out and discussed by counsel on the argument. The most serious question probably arises over the form of the rosette. It might be said that the rosette of the defendant somewhat resembles the seal of the complainant. Perhaps this point is of more importance in considering the independent claim of the complainant to a trade-mark, for I understood the claim of trade-mark relates to the seal of the complainant, and the claim is that the rosette is a simulation of the seal. But before considering this device as an infringement of a trade-mark, and looking at these two parcels in the light of the principles of the law of unfair competition to which I have referred, I do not see how a purchaser of bread in Newark, knowing how bread is packaged, could confuse these two emblems. The complainant's central figure is what pretty much all the world knows as a seal; perhaps children and women, who buy bread in the grocery stores in Newark, are not presumed to be as familiar with the form of that object as lawyers and law clerks are, and yet theform of a seal in detail is very widely known. The public generally knows what a seal is—a circular piece of paper often with serrated edges. I hardly think any people would be deceived into the supposition that the rosette on the defendant's wrapper is intended to be a seal, or that it can properly be called a seal. I do not think a child would regard the rosette as a seal; a child might call it a bow knot, but I think would more properly call it a rosette; but, as I said, attention being necessarily called more to the details, I do not find there is any one detail in the defendant's wrapper which in connection with all the other circumstances, in connection with all the other features, could deceive the purchaser. Differentiation of course can be made in a variety of ways. You might take two packages which are so similar that a buyer might be deceived and then differentiate by removing some common feature or altering some common feature of the two; you can differentiate by adding to one package what is not found on the other. You have to take the package as a whole; you cannot go into details so as to find that, because there is a simulation of a single detail of one, in a detail of the other, therefore, there is a violation of the complainant's rights, and an injunction must go. In considering details in respect to the law of unfair competition, it must be determined whether the two details, which perhaps resemble each other, in connection with all the other features and in connection with the known customs of the trade, lead to deception and fraud.
With respect to the complainant's independent claim that this is a case of trademark infringement based on the similarity of the rosette to the seal, I think that a mere Inspection of the two devices indicates that this claim is unfounded. The complainant's mark is a seal accurately representing an object which we all know; all persons who know what a seal is recognize the complainant's mark to be a seal. Persons who know what a seal is, I think I can safely say, would never call the device of the defendant a seal.
In dealing with both branches of the case, we have to bear in mind that the defendant, by the undisputed evidence in the case, appears to be amply responsible. This fact, however, is not sufficient, in cases of this character, to stay the hand of the court in issuing an injunction. Damages are often difficult of ascertainment, and, if the other conditions exist under which an injunction might go, the fact that the defendant is responsible in damages would not necessarily prevent the issuing of an injunction. But when a case is presented in which there is no evidence of any intention to defraud on the part of the defendant, but, on the contrary, the proofs are that there was no such intention, and, further, the case is destitute of any evidence of any deception practiced in fact in any case or any damage arising from mistake in any case, then, where the defendant is shown to be pecuniarily responsible, the court should be cautious in issuing a preliminary injunction on the ground that the damages are incapable of exact computation, and therefore the remedy at law is not adequate.
This is a motion merely for a preliminary injunction and nothing more; the only question is whether a case is presented where the complainant, either upon terms of giving a bond, or upon other terms, or without terms, should have the operations of the defendant stayed pending the suit, or whether it should be obliged to await the final decree after proof in the case.
In my judgment this is not a case for preliminary injunction, and therefore the motion will be denied.