Supreme Court, New York Special TermNov 1, 1900
33 Misc. 204 (N.Y. Misc. 1900)
33 Misc. 20468 N.Y.S. 351

November, 1900.

Clifton V. Edwards, for plaintiff.

Frayer, Smith, White Seaman (Albridge C. Smith, of counsel), for defendants.

It is not apparent that the defendants have violated any rights of the plaintiff in putting up their registering banks in trunk-shaped cases.

Conceding the very doubtful proposition of law that the plaintiff could, in this particular instance, acquire such proprietary rights in the mere shape of the casting (Fischer v. Blank, 138 N.Y. 244; Browne Trademarks, 89b, 137; Moorman v. Hoge, 2 Sawy. 78; Harrington v. Libby, 12 Off. Gaz. 188; 26 Am. Eng. Ency. of Law, 311, and cases cited) as would entitle him to an injunction restraining the alleged unfair competition, I fail to find in the testimony facts which justify the plaintiff's exclusive appropriation of the design. The use of the trunk-shaped bank did not originate with the plaintiff, — his own testimony being that the public display of one of those trunks having attracted his attention, he was induced to acquire the agency for their sale. He seeks, by a series of agreements, to establish an exclusive ownership or right to the use of that design. It is conceded that, from 1888 to 1892, he was acting as the sole agent for the patentees and manufacturers, and it is, of course, obvious that, during that time, he could acquire no rights as against his principal. After the termination of the agency, the plaintiff conducted the business under a license. By its terms, this license was not exclusive. Under it, the plaintiff's predecessors in interest were permitted, against a royalty, to manufacture the banks, the casting for which, however, still remained under the control of the original owners. The alleged parol agreement, on the part of the defendant Headley, not to engage further in the manufacture of the registering trunk-shaped bank, is not, to my mind, borne out either by a preponderance of direct testimony or by the probabilities of the case, and without such an agreement the plaintiff necessarily fails on the mere contractual elements of his case. It appears, further, that other trunk-shaped banks have been manufactured concurrently with those made by the plaintiff. That those were not self-registering is not material, in view of the fact that the plaintiff concedes that the right to the mechanism still remains in the patentees or their assignees, and that his sole claim rests in the inclosure of this mechanism in a case of particular shape.

The complaint should be dismissed on the merits, without costs.

Complaint dismissed, without costs.