Crescent Tool Co. v. Kilborn & Bishop, No. 265 (2d Cir. 1917)

Crescent Tool Co. v. Kilborn & Bishop Co., 247 F. 299 (1917)

Nov. 13, 1917

United States Court of Appeals for the Second Circuit

No. 265

247 F. 299

LEARNED HAND, District Judge.

[1] The cases of so-called “nonfunctional” unfair competition, starting with the “coffee mill case,” Enterprise Mfg. Co. v. Landers, Frary & Clark, 131 Fed. 240, 65 C. C. A. 587, are only instances of the doctrine of “secondary” meaning. All of them presuppose that the appearance, of the article, like its descriptive title in true cases of “secondary” meaning, has become associated in the public mind with the first comer as manufacturer or source, and, if a second comer imitates the article exactly, that the public will believe his goods have come from the first, and will buy, in part, at least, because of that deception. Therefore it is apparent that it is an absolute condition to any relief whatever that the plaintiff in such cases show that the appearance of his wares has in fact come to mean that some particular person—the plaintiff may not be individually known—makes them, and that the public cares who does make them, and not merely for their appearance and structure. It will not be enough only to show how pleasing they are, because all the features of -beauty or utility which commend them to the public are by hypothesis ■ already in the public domain. The defendant has as much right to copy the “nonfunctional” features of thg article as any others, so long as they have not become associated with the plaintiff as manufacturer or source. The critical question of fact at the outset always is whether the public is moved in any degree to buy the article because of its source and what are the features by which it distinguishes that source. Unless the plaintiff can answer this question he can take no step forward; no degree of imitation of details is actionable in its absence.

[2] In the case at bar it nowhere appears that before 1910, when the defendant began to make its wrenches, the general appearance of the plaintiff’s wrench had come to indicate to the public any one maker as its, source, or that the wrench had been sold in any part be*301cause of its source, as distinct from its utility or neat appearance. It is not enough to show that the wrench became popular under the name “Crescent”; the plaintiff must prove that before 1910 the public had already established the habit of buying it, not solely because they wanted that kind of wrench, but because they also wanted a Crescent, and thought all such wrenches were Crescents.

Upon the trial the plaintiff may, however, be able to establish this, and it'is only fair to indicate broadly the considerations which will then determine the scope of his relief. In such cases neither side has an absolute right, because their mutual rights conflict.' Thus the plaintiff has the right not to lose his customers through false representations that those are his wares which in fact are not, but he may not monopolize any design or pattern, however trifling. The defendant, on the other hand, may copy the plaintiff’s goods slavishly down to the minutest detail; but he may not represent himself as the plaintiff in their sale. When the appearance of the goods has in fact come to represent a given person as their source, and that person is in fact the plaintiff, it is impossible to make these rights absolute; compromise is essential, exactly as it is with the right to use the common language in cases of “secondary” meaning. We can only say that the court must require such changes in appearance as will effectively distinguish the defendant’s wares with the least expense to him; in no event may the plain; tiff suppress the defendant’s sale altogether. The proper meaning of the phrase “nonfunctional,” is only this: That in such cases the injunction is usually confined to nonessential elements, since these are usually enough to distinguish the goods, and are the least burdensome for the defendant to change.1 Whether changes in them are in all conceivable cases the limit of the plaintiff’s right is a matter not before us. If a case should arise in which no effective distinction was possible without change in functional elements, it would demand consideration ; but the District Court may well find an escape here from that predicament. Certainly the precise extent and kind of relief must-in the first instance be a matter for the discretion of that court.

Order reversed, and motion denied.