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MCLEAN v. FLEMING.

October 1, 1877

MCLEAN
v.
FLEMING.



APPEAL from the Circuit Court of the United States for the Eastern District of Missouri. The bill in this case was filed June 1, 1872, by Cochrane Fleming, to restrain the alleged infringement of his trade-mark for liver pills, by James H. McLean. As early as 1834, Dr. Charles McLane, of Morgantown, Va., made and sold liver pills, putting them up in wooden boxes, labelled 'Dr. McLane's Liver Pills.' In June, 1844, Jonathan Kidd, having purchased the exclusive right from him, began, at Pittsburg, Penn., to make and sell them. In 1845, Kidd formed a partnership with John Fleming, under the name of Jonathan Kidd & Co. Kidd died in 1853, and Fleming, the surviving partner, and one Cochrane Fleming, having purchased from Kidd's executors all his interest in the business, entered into partnership, under the name of Fleming Brothers. That firm continued until 1865, when Cochrane retired. John carried on the business in the firm name until his death, in November, 1870, whereupon Cochrane succeeded under his will to all his rights in the business. Up to August, 1847, the pills in question were wrapped in an ordinary printed label. In that year, Kidd & Co. commenced putting them up in wooden boxes, on the cover of each of which were stamped in red wax the words 'McLane's Liver Pill,' and on the wrapper, in a narrow border of scalloped pattern surrounding a panel, with a background of wave-line engraving, was printed in red ink a label bearing the words 'Dr. C. McLane's Celebrated Liver Pills.' In 1855, Fleming Bros. changed the color of the label to black, and made certain other changes, as follows: the groundwork of the engraved wrapper on the top of the box being composed of fine lines, crossing the box diagonally, and at right angles with each other, and bearing the words, in white, 'Dr. C. McLane's Celebrated Liver Pills,' 'Celebrated Liver Pills' being upon a scroll similar to a double ogee in form with a black background. On the wrapper were also in white letters the words, 'Prepared only by Fleming Bros., successors to Jon. Kidd & Co.,' and a fac-simile of their signature and that of C. McLane, in black. This label, which is referred to in the opinion of the court as 'Exhibit F,' was used until October 1871, when another change was made, and the label mentioned in the decree below, and in the opinion of the court as 'Exhibit H,' was adopted. In it the groundwork has shaded curved lines cutting and crossing each other in such a way as to produce the effect of alternate light and shade, crossing the top of the box diagonally in place of the straight lines in 'Exhibit F.' In this label, the words 'successors to Jon. Kidd & Co.' are omitted. In 1849, James H. McLean commenced, at St. Louis, Mo., to manufacture his proprietary medicines, and, in 1851, to manufacture and sell liver pills, under the name of 'Dr. McLean's Universal Pills;' using first a type-printed label in red letters, which he, in 1852, changed to a lithographed red label, called in the decree 'Exhibit L.' This label is printed in ink of a light red color, with the words, 'Dr. McLean's Universal Pills,' in white letters shaded by red lines running parallel with the length of the label. He used this label until 1866, having in 1863 inserted therein the initials (J. H.) of his name. In 1866, he changed his label to that referred to in the decree as 'Exhibit K.' In this label, the lines of the background, which is black, cross the top of the box diagonally and at right angles to each other, with the words 'Dr. J. H. McLean's Universal Pills or Vegetable Liver Pills' thereon, in white letters. The use of this label he continued until May, 1872, when he adopted a new one, in the use of which no infringement of the complainant's label was found. He also used a stamp in red wax on his goods. The court below decreed that the respondent, his agents, employees, and servants, be perpetually enjoined and restrained from using, or causing to be used, the words, 'D'r J. H. McLean's Universal Pills or Vegetable Liver Pills,' or 'D'r McLean's Universal Pills,' or 'D'r J. H. McLean's Universal Pills,' upon any label or wrapper for boxes or other packages of pills, resembling or in imitation of the labels or wrappers or trade-mark of the complainant, described as Exhibit H, whether in style of engraving, printing, or lettering; and from vending or exposing for sale, or causing to be vended or exposed for sale, any article of pills having upon the boxes or other packages thereof any such labels or wrappers so made in imitation of or resemblance to the said labels or wrappers of the complainant; but did not enjoin or restrain him from using them on any other labels or wrappers for pills than those described. It also referred the cause to a master, to take and state an account of the damages resulting to the complainant since Nov. 9, 1870, from the violation of his rights. The master reported the complainant's damages at $7,399.35. The respondent excepted. His exception having been overruled, the report confirmed, and a final decree entered, he appealed to this court.

The opinion of the court was delivered by: Mr. Justice Clifford delivered the opinion of the court.

Mr. Samuel S. Boyd for the appellant.

Mr. M. L. Gray, contra.

Protection for lawful trade-marks may be obtained by individuals, firms, or corporations entitled to the same, if they comply with the requirements prescribed by the act of Congress; and the provision is, that a trade-mark, duly registered as required, shall remain in force thirty years from the date of such registration, subject to an exception not necessary to be noticed. 16 Stat. 210; Rev. Stat., sects. 4937, 4941.

Exclusive ownership of a certain medicinal manufacture, known as 'Dr. C. McLane's Liver-Pills,' and of the trade-mark used in advertising and vending the same, is claimed by the complainant; and the record shows that he, on the first day of June, 1872, filed in the Circuit Court a bill of complaint against the respondent, charging that the respondent had unlawfully infringed the said trade-mark; and he prayed for a decree that the respondent shall render an account of the gains and profits made by the infringement, and for an injunction.

Service was made, and the respondent appeared and filed an answer. Proofs were taken; and, the parties having been heard, the court entered a decretal order in favor of the complainant, and sent the cause to a master, to compute the amount of the gains and profits. Due report was made by the master, to which the respondent excepted; and the court overruled the exception, confirmed the report of the master, and entered a final decree for the complainant, in the sum of $7,399.35.

All matters in that court having been finally determined, the respondent appealed to this court, and assigns errors as follows: 1. That the court erred in finding that the labels L and K, or either of them, infringed Exhibit F, as set forth in the decretal order. 2. That the court erred in finding that the complainant was entitled to any damages, and in ordering the assessment thereof, and in allowing him costs. 3. That the court erred in ordering an account of the sales of Exhibits L and K, prior to the 16th of October, 1871, the date of the first use of Exhibit H by the complainant. 4. That the court erred in overruling the respondent's exception to the master's report.

Medicines of the kind described were first prepared and sold by the physician whose name the pills bear, by putting the same in wooden boxes, labelled with the name of the inventor. For ten years, or more, he used the pills in his practice; but the evidence shows that, on the 19th of June, 1844, he sold the right to use the same to Jonathan Kidd, who, for a year or more, prepared and sold the pills under that agreement, when he formed a partnership with John Fleming, under the style of 'Jonathan Kidd & Co.;' which firm continued to prepare and sell the pills until March 29, 1853, when the senior partner died.

They (the firm) dealt largely in the business; and, as early as 1847, in order to designate the medicine as an article of their own manufacture, and to prevent imposition and fraud, they commenced putting the pills in wooden boxes, of uniform size, shape, and appearance, each box containing twenty-two pills, with the name of the original inventor stamped in red wax upon the cover of each box, around which they placed the red label or wrapper described in the bill of complaint. Beyond doubt, that label, with its devices, and the red seal on the box, constituted the trade-mark by which the firm made known to their customers and the public the genuine pills which they prepared and sold; the firm being at the time the owners of the original recipe, and having the exclusive right to make and vend the pills.

Within a month subsequent to the death of the senior partner of the firm, his executors sold and conveyed all the interest of the decedent in the business to the surviving partner and the complainant, whereby they, under the firm name of 'Fleming Brothers,' acquired not only the title to the recipe and the right to make and vend the pills, but also the right to use the labels and trade-marks used by the former owners. Possessed of the whole interest, they (the firm, Fleming Brothers) prosecuted the business, with some changes in the individual partners, until July 1, 1865, when the present complainant sold out his whole interest to his brother, John Fleming, who, as sole proprietor of what the firm owned, continued the business until the 2d of November, 1870, when he died, leaving a last will and testament.

When that firm acquired the entire interest, they immediately enlarged the business, and in the year 1855 they adopted the dark label, Exhibit F, which is fully and minutely described in the bill of complaint; and the complainant avers that it has since been used in the business, with no other substantial alterations than what are shown in Exhibit H, mentioned in the decretal order.

Both parties agree that the complainant, by the will of his deceased brother, acquired all the rights which the deceased had in the business; and the record shows that he has, since the probate of the will on the 9th of November, 1870, been preparing and vending said pills, and using the labels and trade-marks to designate their genuineness and to commend their value and utility.

Evidence was introduced by the respondent, whose name is James H. McLean, that he commenced in 1849, in St. Louis, to manufacture his own medicines; that in 1851 he began to manufacture and sell liver-pills, under the name of 'Dr. McLean's Universal Pills,' using first a type-printed label in red letters, which was changed, in 1852, to a lithographed red label, called in the decretal order 'Exhibit L,' which was used down to 1866, except that about 1863 he added to his name the initials 'J.H.,' so that the label read, 'Dr. J. H. McLean's Universal Pills;' that in 1866 he changed his label to the one referred to in the decretal order as 'Exhibit K,' which he continued to use until May 21, 1872, when he adopted a new label, the use of which does not infringe the trade-mark of the complainant.

Governed by these facts as stated, the court will examine the first error assigned; which is, that the court erred in finding that the labels L and K infringed complainant's Exhibit H, as set forth in the decretal order. By the order, the respondent, James H. McLean, his agents, employees, and servants, are perpetually enjoined and restrained from using, or causing to be used, the words 'Dr. J. H. McLean's Universal Pills or Vegetable Liver Pills,' or the words 'Dr. McLean's Universal Pills,' upon any label or wrapper for boxes or other packages of pills resembling or in imitation of the labels, wrappers, or trade-mark of the complainant, described in his bill of complaint as 'Exhibit H,' whether in style of engraving, printing, or lettering; and from vending or exposing for sale, or causing to be vended or ...


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