Worden v. California Fig Syrup Co., 187 U.S. 516 (1903)
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Worden v. California Fig Syrup Company
No. 36
Argued March 18-19, 1902
Decided January 5, 1903
187 U.S. 516
CERTIORARI TO THE CIRCUIT COURT OF
APPEALS FOR THE NINTH CIRCUIT
Syllabus
When the owner of a trademark applies for an injunction to restrain the defendant from injuring his property by making false representations to the public, it is essential that the plaintiff should not in his trademark or in his advertisements and business, be himself guilty of any false or misleading representation, and if he makes any material false statement in connection with the property which he seeks to protect, he loses his right to claim the assistance of a court of equity, and where any symbol or label claimed as a trademark is so constructed or worded as to make or contain a distinct material assertion which is false, no property can be claimed on it, or, in other words, the right to the exclusive use of it cannot be maintained.
On June 1, 1897, the California Fig Syrup Company, created under the laws of the State of Nevada and having its principal place of business in San Francisco, California, filed a bill in equity in the Circuit Court of the United States for the Northern District of California against Clinton E. Worden & Company, a corporation of the State of California, and against J. A. Bright, T. F. Bacon, C.J. Schmelz, and Lucius Little, citizens of the State of California.
The bill alleged that, in the year 1879, one Richard E. Queen invented
a certain medical preparation or remedy for constipation and to act upon the kidneys, liver, stomach, and bowels, which medical compound is a combination in solution of plants known to be beneficial to the human system, forming an agreeable and effective laxative to cure habitual constipation and many ills, depending upon a weak and inactive condition of the liver, kidneys, stomach, and bowels;
that shortly after the said invention, the said Queen sold and transferred all his right, title, and interest in and to said medical compound, and in and to the tradename, trademarks, and goodwill of said company to the complainant company, which has ever since been engaged in the manufacture and sale of said medical preparation or remedy; that said medical preparation has always been marked, named, and called by the complainant "Syrup of Figs," that name being printed or otherwise marked upon every bottle, and also printed upon the boxes, packages, or wrappers in which the bottles of the preparation were packed for shipment and sale; that the complainant and its said predecessor in interest were the first to pack and dress or mark a liquid laxative preparation in the manner illustrated by exhibits "A" and "B" attached to the bill -- that is to say, in an oblong, rectangular box or carton, with statements of the virtues of the preparation printed in different languages upon the bank and sides of the carton, and on the border within which, at the top, is a representation of a branch of a fig tree bearing fruit and leaves, surrounded by the words "Fig Syrup Company," or "California Fig Syrup Company," and below which appear, in large letters, the words "Syrup of Figs," and below these last-named words appears a brief statement of the virtues of this preparation, together with the words "Manufactured only by the California Fig Syrup Company;" that the complainant has spent more than one million dollars in advertising said preparation, always under the name of "Syrup of Figs," or "Fig Syrup," throughout the United States and other countries, and that millions of bottles of said preparation have been sold; that, by virtue of the premises, the complainant has acquired the exclusive right to the name, "Syrup of Figs," or "Fig Syrup," as it is indifferently called by the public, or any colorable imitation of the same, as applied to a liquid laxative medical preparation irrespective of the form of bottle or package in which it may be sold to the public; that, by virtue of the premises, the complainant has acquired the exclusive right to the manner and form of packing the same for sale, in connection with the words "Syrup of Figs" or "Fig Syrup," or any colorable imitation of the same, as a part of the business name of a concern making a liquid laxative medical compound.
The bill charges that the defendant, wishing to trade to its own profit and advantage upon the reputation of the complainant’s preparation and desiring to impose a worthless production upon the public, has caused to be made, put up, and sold, and offered for sale, a liquid laxative medical compound, resembling complainant’s preparation, under the name "Syrup of Figs" and "Fig Syrup," and marking the boxes and packages containing the same with the name "Fig Syrup" or "Syrup of Figs," and has put the preparation, under said name, in bottles and packages or cartons, so closely in imitation of the complainant’s bottles and packages as to be likely to deceive purchasers, and so as to enable unscrupulous retail dealers to palm off defendant’s preparation on the consumers as and for the complainant’s preparation, and that purchasers frequently have been deceived and induced to buy the compound prepared by the defendant: that the complainant has been greatly injured in the business in the manufacture of its liquid laxative preparation "Syrup of Figs" or "Fig Syrup," and believes that it has suffered damage and injury by reason of defendant’s acts to the extent of at least $10,000; that this is a continuing wrong, and one which it is impossible to exactly calculate, and one which, if permitted to continue, will work irreparable injury to the complainant.
Wherefore the complainant prayed, in its said bill, for an injunction restraining the defendant and its agents, servants, etc., from manufacturing, selling, or offering for sale, directly or indirectly, any liquid laxative medical preparation, marked with the words "Syrup of Figs" or "Fig Syrup," or marked with any words which may be a colorable imitation of the name of "Syrup of Figs" or "Fig Syrup," and from putting up, selling, or dealing in any liquid laxative medical preparation which shall have a tendency to deceive the public and induce buyers to purchase defendant’s preparation believing the same to be complainant’s preparation, and that defendant be perpetually enjoined from using the words "Fig Syrup Company" as a business name, or from using the words "Fig Syrup" or "Syrup of Figs" as part of its business name, in connection with the manufacture and sale of a liquid laxative preparation. The complainant also prayed for an account for damages to complainant and for gains and profits derived by the defendant company, and for such other and further relief as may be agreeable to equity and good conscience.
The defendant company and the other defendants filed a joint and several answer admitting many of the allegations of the bill, but denying and putting the complainant on proof of those which alleged any intentional or actual appropriation by the defendant company of proprietary or business rights of the complainant. The answer proceeded to make the following allegations:
And for a separate and further defense, these defendants aver, upon their information and belief, that the preparation made and sold by complainant under the name of "Syrup of Figs" does not and never did contain any syrup of figs or any fig syrup, or any juice of figs or any part or portion or quantity of figs in any form, and that the name "Syrup of Figs" and "Fig Syrup" and the name of the company, "The California Fig Company," and the form and appearance of the labels and the pictures on the labels, and the statements on the labels adopted and used by complainant in connection with its liquid laxative medicine, were all designed, adopted, and used with the deliberate intent and purpose to deceive the public and the user of the medicine, and to perpetrate a fraud upon them by inducing them to believe that the preparation contained figs in some form, and that, by reason thereof, the said medicine derived its laxative properties and also a pleasant and agreeable taste; that the complainant has been successful in perpetrating the said fraud upon the public, and for years last past has perpetrated said fraud by wholesale, and have induced the public generally throughout the world to believe the statements aforesaid concerning the said medicine and its connection with figs, and thereby complainant has made and realized large profits, gains, and advantages from the sale of said medicine, all of which was caused and which accrued and were made by reason of said false, fraudulent, and deceptive statements; that, as a matter of fact, the said so-called "Syrup of Figs" sold by complainant consists of the ordinary and well known laxative called senna as a basis, together with certain aromatic carminatives added for the purpose of giving it a pleasant and agreeable taste, as a cure to the naturally griping effect of senna when taken alone; that in order to sell such a compound, complainant made the false, fraudulent, and fictitious statements hereinabove charged against it, and was enabled to sell the same solely by virtue of said false, fraudulent, and fictitious statements, and said complainant has built up its business and its trade upon the strength of, and by virtue of, the said false, fraudulent, and fictitious statements, for which reason complainant is not entitled to relief in a court of equity.
The cause was put at issue by a replication filed by the complainant company. Pending the trial, an application for a preliminary injunction was made, which was allowed upon the ground that the complainant had made such a showing by the pleadings and affidavits that it was entitled to an injunction against the sales of "Fig Syrup" by the defendant. 86 F. 212.
A large amount of evidence was taken, and, on June 7, 1899, a decree was entered by the circuit court perpetually enjoining the defendant company and the other defendants from making, selling, or offering to sell any liquid laxative medicine or preparation under the name of "Syrup of Figs" or "Fig Syrup," or under any name in colorable imitation of the name "Syrup of Figs," and from making, selling, or offering to sell any medical liquid laxative preparation, put up in bottles, boxes, or packages similar in form or arrangement to the bottles or packages used by the complainant in the manufacture and sale of its said liquid laxative preparation, or so closely resembling the same as to be calculated to deceive the public, and from using the name "Fig Syrup Company," and from using a name whereof the words "Fig Syrup" or "Syrup of Figs Company" form a part as a business name in connection with the manufacture of a liquid laxative preparation. 95 F. 132.
There was an appeal to the Circuit Court of Appeals for the Ninth Circuit, where the decree of the circuit court was affirmed, Ross, C.J., dissenting. 102 F. 334.
The cause was then brought to this Court by a writ of certiorari allowed on November 20, 1900.