8 F.(2d) 46 runway openings representing base positions at the intersections of the runway openings, a plurality of radial runner members adaptable to project across said runway and base openings and movable behind and visible through the same, and means for obscuring the runner members at the base openings. "12. A bulletin board, comprising a member representing a field, said member having runway openings and openings representing bases at the intersections of the runway openings, a plurality of radial runner members adaptable to project across and movable behind said runway and base openings so as to be visible through the same, and slides movable over the base openings for obscuring the runner members at the base positions." "21. The combination with a member representing a baseball field, of a movable runner member and means including manually operable shields at the 'bases' over the path of the runner member and manually operable stop devices adjacent to the 'bases,' whereby a runner play may be set before it is executed." "23. The combination with a member representing a baseball field having its diamond portion spaced from the remainder of the field to provide runway and base openings, of radial runner members disposed behind the field member and movable past said openings, a plurality of adjustable stop pins movable into the paths of the runner members, and means for supporting the stop pins. "24. The combination with a member representing a baseball field having its diamond portion spaced from the remainder of the field to provide runway and base openings, of radial runner members disposed behind the field member and movable so as to be visible through said openings, a frame disposed behind and spaced from the field member, and adjustable stop pins mounted on said frame and movable into the paths of the runner members when the latter are moved behind the runway and base openings." It may be well to refer briefly to certain earlier inventions as illustrating the prior art, in order that the plaintiff's contribution to the work of his predecessors may be better understood. The Grozier and Anderson patent No. 427,508, uses slotted base paths, and also representations of base runners in the forms of buttons which are moved around the baseball diamond by means of tapes so arranged as to indicate the players' progress. The means used to work these buttons, however, are so largely at variance with the means adopted by plaintiff as to discourage any thought that they anticipated plaintiff's methods; and, with that element eliminated, there is left but one feature of plaintiff's arrangement, viz. the slotted base paths. The Chapman patent is No. 546,003, and presents a device using an electric motor, together with a number of radial arms having a runner member arranged in the slotted base path. These arms are independently geared to a common shaft, and the plays are indicated by lights turned on and off, and the runner representations are not "obscured," but taken off from the face of the board. In the Mattoni patent, No. 1,044,679, are seen manikins moving in the slotted base path, which manikins are operated by radial arms rotatable about a center and each one equidistant from the preceding and succeeding arm. This one appears to have served little purpose beyond that of furnishing a game for children. The Brylawski patent, No. 1,149,021, omits the slotted base path as utilized in the patent in suit. It has radial arms, and these arms operate little carriages which carry electric lights and run behind a translucent portion of the board. It uses neither shield nor stop, and apparently has never come into use for any purpose. The Baker patent is No. 1,171,830, and in this patent the base runners are represented by targets set at the rear of the board, but visible at the front, and made to move from base to base as desired, by means of cords, chains, or other carrying means on which the targets are detachably mounted. There are also two prior Oscanyan patents, Nos. 1,071,080 and 1,127,498, but the construction and manipulation thereunder is so largely at variance with the features of the patent in suit that the idea of any illustrative application may be dismissed. The earlier of the two employed neither shields nor stops, and a relay system of base runners was used; no one representation availing for any longer journey than that between two bases. So far as the second of the two patents is concerned, it also made no use of radial members as they exist in the present patent, and omitted the employment of shields and stops. In reviewing the various features of the patents above enumerated, it becomes apparent that the plaintiff's contribution to the art was largely in the nature of improve ment, and was in no sense a basic or pioneer patent. The prior art had known the open or slotted base path, the movable runner, the radial arms, and certain means for indicating the putting out of the runner. And, so far as the stops are concerned, they constituted nothing new in the line of discovery, but, as simple arresting devices, had been employed through long periods and in countless ways in other arts. All these features having been evolved before Oscanyan appeared on the scene, and his claims having to do so largely with such features, his possessory right, if such there be, must be found in improvement, or combinations, or both. In his specifications, Oscanyan sets forth that his invention relates to improvements in score or bulletin boards-one object of the invention being to provide means where by the runner members shall be capable of movement independently of each other; such runner members being described as radiating from a shaft projecting rearward from the center of the diamond portion of the board. Inasmuch as radial runner members, in one form or another, had appeared in prior patents, it would seem that Oscanyan's advance over the prior art consisted in his having arranged such members in different vertical planes, thus allowing them to move independently of, and to pass each other, and with no necessity of maintaining equidistant positions. Another feature of the Oscanyan patent consists of the so-called stop pins, the function of which is, under certain established or designed conditions, to arrest the further progress of one of the runner members, and thus put such member out of the running, and, if called for, to allow one or more of the independently movable runner members to pass it. As already suggested, this stop pin is an adaptation and so common an expedient for arresting progress as to bring it more within the scope of mechanical expediency than of invention, except as it plays its part in a combination of elements. Still another feature consists of so-called slides or shields, described as follows: "At each of the bases on the board, slides or shields 37 are located and are operable from the back of the board so that they may be moved to close the base frames and thus obscure a runner member which may be behind a base frame." A general survey of these various features of the patent in suit shows a combination of factors not found in any of the prior patents, and really not approached in any serious way, unless it be in the case of Chapman patent, No. 546,003, and the variation in this patent calls forth the following opinion from defendant's expert witness: "Some of the particular specific elements of the claims are not shown in Chapman, as I just discussed, but, if we are to consider any one reference standing entirely by itself, I would pick on Chapman as being probably the best to show the prior art." And when it is realized that, among other variations, the runner in the Chapman patent is physically removed from the mechanism under conditions which, in the patent in suit, call for obscuration behind a shield or slide, it can readily be seen that there is such a vital difference between the two as to free the Oscanyan patent from any question of anticipation, so far as Chapman is concerned; this being a condition which the more pronouncedly obtains in comparing the Oscanyan patent with any of the other prior patents cited, inasmuch as they concededly have less points of similarity to Oscanyan than has Chapman. In my opinion, a careful reading of the claims in suit, applied to defendant's mechanism, constitutes a description sufficiently accurate to answer all practical requirements, and proves infringement most clearly. Even granting that the contributors to the prior art had together effected most of the movements appearing in the patent in suit, it was Oscanyan who first utilized and gathered into one homogeneous entity the combined efforts of his predecessors, as well as improving upon them, and his act in so doing gives him a standing and possessory right which others may not copy. [1] It certainly cannot avail defendant that it may search through the limits of the prior art, gathering here one element and there another, and, building them into a combination, deny infringement because all the elements can trace their lineage to the prior art, if the use made thereof produces virtually the same combination already obtained by an earlier patentee. "The respondent cannot escape the charge of infringement by alleging or proving that a part of the entire thing is found in one prior patent or printed publication or machine, and another part in another prior exhibit, and still another part in a third one, and from the three or any greater number of such exhibits draw the conclusion that the patentee is not the original and first in 8 F.(2d) 49 ventor of the patented improvement." Bates the court in the quotation just made applies v. Coe, 98 U. S. 31, 25 L. Ed. 68. with still greater force when the question arises, as it does here, after a trial has been had upon the merits, and upon pleadings which put in issue the right of complainant to any relief. In such a case a complainant is entitled to a decree showing what issues have been determined in his favor, and one, also, which will prevent any future invasion of his rights by a defendant." Western Electric Co. v. Capital Co. (C. C.) 86 F. 769. "It is also probably true that by selecting from the various known machines of that character all the elements of the patented machine could be brought together. This, however, on well-settled rules, falls far short of demonstrating that appellee's device contains no patentable qualities." Packard v. Lacing Stud Co., 70 F. 66, 16 C. C. A. 639. [2] Inasmuch as the defendant has, in my opinion, adopted the construction of the patent in suit to all intents and purposes for its own use, that procedure of itself is probative of the fact that defendant considered the device useful, and is therefore estopped from denying its utility at this time. And this estoppel being all-embracing, including the features of shields and stops adopted by defendant, neither may their utility be denied; and, inasmuch as Oscanyan was seemingly the first to make use of the expedients of the stop and shield in their relationship to accurate visualization of the copied movements of a baseball game, the defendant having neither utilized nor referred to them in any way until later, any defense of obviousness must also be eliminated. A careful consideration of defendant's denial of infringement and the various alleged differences in construction has failed to convince me of their merit. Chief among the differences claimed is that with reference to the so-called shields. Plaintiff puts his shields in a slide, and defendant hinges his on one edge, but the object of each is identicalto obscure the base runner. Neither is the difference in the operation of the two sets of stops sufficient to remove the defendant's device beyond the limits of a reasonable reading of plaintiff's claims. [4] I find, therefore, that all of the claims relied upon at the trial are valid, and are infringed by the defendant's bulletin board. An order may be presented for injunction, and reference to a master to take and state [3] The defendant has apparently ceased the account of profits and damages the manufacture and exploitation of the offending machine; but, as I view it, this seeming concession cannot have the effect of defeating the plaintiff's application for an injunction, else a new offense might be undertaken at any time. afta VICK CHEMICAL CO. v. VICK MEDI- No. 93. I. Trade-marks and trade-names and unfair competition 45 "Proper name" in trade has primary and secondary meaning. "In their pleadings and proofs, the de-. (District Court, S. D. Georgia, Albany Division July 21, 1925.) fendants have sought to justify their acts, and have also put in issue the validity of complainant's patent. In the case of Potter v. Crowell, Fed. Cas. No. 11,323, 3 Fish. Pat. Cas. 112, it was held that the discontinuance of an infringement after the commencement of a suit was not of itself sufficient to defeat an application for an injunction pendente lite. "The court is not prepared to say that no occasion for the exercise of its restraining power is shown in this case, when it is apparent that there was such occasion when the suit was commenced; that it has but recently ceased; that it may, if defendants feel disposed, be renewed at any time; and that the complainants claim that they apprehend a continuance of the wrong, A proper name in trade has a primary and secondary meaning, the primary meaning being that the goods came from a person of that name, and the secondary that they came from a particular person of that name, and the registration of a proper name as a trade-mark, unfurnishes a presumption that such name has der Act Feb. 20, 1905, §,5 (Comp. St. § 9490), acquired the secondary meaning. [Ed. Note.-For other definitions, see Words and Phrases, First and Second Series, Name.] 2. Trade-marks and trade-names and unfair competition 73(1)-Second user cannot use proper name in way to deceive purchasers. no in jury can possibly result to defendants, while the allowance of the motion will insure protection to complainants.' What was said by 8 F. (2d)-4 When a proper name has acquired a secondary meaning in trade, as that of a particular person, another of the same name cannot so use the name that the public will be de The name "Vick's" was adopted and registered by complainant, Vick Chemical Company, as a trade-mark for medicinal preparations, and through their sale became quite well known as designating its remedies. Later defendant, Vick Medicine Company, was organized by two persons, Vick and West. Vick had no knowledge of pharmacy, but West had, and was the originator of the remedies which the company made and marketed under the name "Vick's Grippe Remedy" and others in which the name "Vick's" was used. Its labels were not readily distinguishable by the uncritical from those of complainant. Held, that such use of the name was calculated, and probably intended, to deceive purchasers, and constituted an infringement of complainant's trade-mark. 7. Trade-marks and trade-names and unfair competition 93(3)-Affidavits that purchasers have not been misled held of little weight in view of facts. Printed affidavits submitted by the defendant in a suit for infringement of trade-mark and unfair competition, in which affiants state that they have not been deceived by defendant's advertising or labels into thinking that its product was that of complainant, are of little weight where the probability of such deception of ordinary purchasers is apparent. 8. Trade-marks and trade-names and unfair competition 70(1)-Duty of later competitor to clearly distinquish his goods. The field is so large from which a manufacturer may select a name or mark for his product that his selection of one which so nearly approaches that of a successful competitor that the public may fail to distinguish between them is viewed with suspicion by the courts. 9. Trade-marks and trade-names and unfair competition 61, 68- Confusion of origin and not of goods controls on question of infringements and unfair competition. which controls on the question of infringement It is confusion of origin and not of goods or unfair competition, and if there is such relationship or analogy between the goods of complainant and defendant that ordinary retail purchasers are likely to be deceived as to their origin there is infringement and unfair competition. In Equity. Suit by the Vick Chemical. Company against the Vick Medicine Company. Decree for complainant. Pottle & Hofmayer, of Albany, Ga., Harold Hirsch, of Atlanta, Ga., Allen M. Reed and Edward S. Rogers, both of Chicago, Ill., and James F. Hoge, of Greensboro, N. C., for complainant. Lippitt & Burt and Pope & Bennett, all of Albany, Ga., and Alston, Alston, Foster & Moise and E. W. Moise, all of Atlanta, Ga., for defendant. BARRETT, District Judge. This suit arises under the trade-mark laws of the United States. It is further contended that, irrespective of the registration of the trademark, complainant is entitled to the relief sought on the ground of unfair competition. The same principles control, for "the common law of trade-marks is but a part of the broader law of unfair competition" (Hanover Milling Co. v. Metcalf, 240 U. S. 413, 36 S. Ct. 360, 60 L. Ed. 713) with this modification: "While in a case for unfair competition it may be necessary to show intent to deceive the public, in a case for violation of a properly registered trade-mark it is not necessary to show wrongful intent or facts justifying an inference of such intent." Thaddeus Davids Co. v. Davids, 233 U. S. 461, 462 (34 S. Ct. 648, 58 L. Ed. 1046, Ann. Cas. 1915B, 322). Inasmuch as it is clearly established that complainant was and is the owner of a trade-mark, "Vick's," under the act of Congress, no discussion of the general principles of unfair competition dissociated from trade-marks will be indulged. ject, which is intensely interesting and inThere is a wealth of learning on the sub formative. No effort will be made to collate the authorities, because a few long-established principles control. [1] 1. There is a distinction in trade between the primary and secondary meaning of a proper name. The primary meaning is simply that the goods come from a person of that name. The secondary meaning is that the goods come from a particular per 8 F.(2d) 49 son of that name. Herring, etc., Safe Co. v. Hall's Safe Co., 208 U. S. 554, 28 S. Ct. 350, 52 L. Ed. 616; Thaddeus Davids Co. v. Davids, 233 U. S. 461-470, 34 S. Ct. 648, 58 L. Ed. 1046, Ann. Cas. 1915B, 322; Waterman Co. v. Modern Pen Co., 235 U. S. 88, 35 S. Ct. 91, 59 L. Ed. 142. a liniment of this kind, in class 6, Chemicals, Medicines, and Pharmaceutical Preparations." 2. The registration of a proper name as a trade-mark under the fourth proviso of section 5 of the Act of Congress of February 20, 1905 (chapter 592, 33 Stat. 724 [Comp. St. § 9490]), furnishes a presumption that such name has acquired such secondary meaning. Thaddeus Davids Co. v. Davids, 233 U. S. 461–470, 34 S. Ct. 648, 58 L. Ed. 1046, Ann. Cas. 1915B, 322. [2] 3. When a proper name has acquired such secondary meaning another of the same name cannot so use the name as that the public will be deceived into believing that the goods come from the first user. McLean v. Fleming, 96 U. S. 245-251, 24 L. Ed. 828; Hanover Milling Co. v. Metcalf, 240 U. S. 403-412, 36 S. Ct. 357, 60 L. Ed. 713. 4. The newcomer is under the obligation of distinguishing his goods from the goods already covered by the trade-mark. Jacobs v. Beecham, 221 U. S. 263–271, 31 S. Ct. 555, 55 L. Ed. 729. [3] 5. To constitute an infringement of a trade-mark, it is not necessary to use the identical mark, but any colorable imitation is sufficient. Thaddeus Davids Co. v. Davids, 233 U. S. 461-469, 34 S. Ct. 648, 58 L. Ed. 1046, Ann. Cas. 1915B, 322. [4] 6. The fundamental principle is: "Nobody has any right to represent his goods as the goods of somebody else." Lord Halsbury in Reddaway v. Banham, [1896] A. C. 199, quoted in Charles Broadway Rouss, Inc., v. Winchester Co. (C. C. A.) 300 F. 706715. [5] 7. "The question whether or not one is selling or representing his goods as those of another is always a question of fact." Charles Broadway Rouss, Inc., v. Winchester Co., supra. [6] "Vick's" is a trade-mark of complainant, and its efficacy is not dependent upon the form of the writing or printing. The application by the Vick Chemical Company for registration stated that applicant "has adopted for its use the trade-mark shown in the accompanying drawing for a medicinal salve for external use, liver pills, headache tablets, and a liniment for the treatment of spavin, ringbone, curb, sprains, swellings, and lameness in horses, and for man, rheumatism, neuralgia, burns, sore throat, soreness of the chest, bruises, and cuts, or lameness requiring Various medicinal preparations were put upon the market under the name "Vick's," which were generally known as "Vick's Remedies." The "V" was large and prominent in advertising "Vick's Remedies." In the labels was a red isosceles triangle, on the respective sides of which were the words "Vick" "Chemical" "Company." The salve was described indifferently as "Vick's" or "Vick's Salve." "Vick's," when applied to any of such remedies, undoubtedly carried a meaning as to the source of the goods, and from the popularity of at least one of "Vick's Remedies" it must be presumed that the reputation of the manufacturer was of the best. W. P. Vick was, and had been for some years, an automobile tire salesman. He was well known and popular throughout extensive territory. W. L. West. who for some 18 years had been a licensed pharmacist, had put upon the market a grippe remedy called "West's Grippe Remedy." It did not succeed, and he abandoned pharmacy and became an automobile salesman. In some way Vick and West entered into an arrangement by which a corporation known as "Vick Medicine Company" was organized. Vick contributed at first a part, and then all, of his time to its promotion and operation; West contributed his formula for his grippe remedy, and some few thousands of dollars were contributed by others. The business prospered promptly and was pushed vigorously. The chief product was the grippe remedy, now come to be known as "Vick's Grippe Remedy," and two other products have been recently put on the market, known as "Vick's Medicated Skin and Scalp Soap" and "Vick's Kurl-No." With all of these were used in advertising and on the labels the large "V." Such "V" on the labels was red, and to the casual observer was similar to the red triangle used by complainant. The labels of defendant and some of the advertisements carried the statement of manufacture and sale by the Vick Medicine Company, of Albany, Ga. This was not conspicuous, and did not serve to remove from the mind of the uncritical purchaser the impression, otherwise inevitable, that the article was manufactured and sold by complainant. [7] There was submitted by defendant many affidavits in printed form that affiants had not, by advertisements, representations, or otherwise, been led into believing that "Vick's Grippe Remedy" was the same as "Vick's Salve," or that any of the products of |