JOHN B. STETSON CO. v. STEPHEN L. STETSON CO.No. 263.
128 F.2d 981 (1942)
JOHN B. STETSON CO.
STEPHEN L. STETSON CO., Limited.
STEPHEN L. STETSON CO., Limited.
Circuit Court of Appeals, Second Circuit.
June 23, 1942.
Harper & Matthews, of New York City (Maurice Bower Saul, Allen S. Olmsted, 2d, and Earl G. Harrison, all of Philadelphia, Pa., and Murray F. Johnson, of New York City, of counsel), for appellant. Conboy, Hewitt, O'Brien & Boardman, of New York City (Martin Conboy, David Asch, and Rudolph Taplitz, all of New York City, of counsel), for appellee.
Before SWAN, CLARK, and FRANK, Circuit Judges.
SWAN, Circuit Judge.
This appeal is the final phase of litigation commenced in 1934 with the filing of a suit by John B. Stetson Company charging Stephen L. Stetson Company, Ltd., and another with trade-mark infringement and unfair competition. The trial resulted in an interlocutory decree, D.C.S.D.N.Y.,
The underlying facts of this litigation may be found in the opinions of Judge Woolsey and of this court relating to the interlocutory decree, and will not be here repeated. As appears from those opinions, both courts concluded that the addition of the prefix "Stephen L." to the surname "Stetson" would not suffice to differentiate the defendant's products from the plaintiff's. Accordingly a form of "Notice of Differentiation" was devised by Judge Woolsey, and approved by this court, for the purpose of preventing the confusion which the name "Stephen L. Stetson" had caused, and would continue to cause, if used without explanation. In all respects now material the provisions of the interlocutory decree were carried over into the final decree; they may be found in the footnote.
The defendant argues that it has complied literally with the terms of the decree; all that is required is that the name "be accompanied by" one of the notices of differentiation; the size of the name which is to be so accompanied is not prescribed; and the provision in paragraph IV, that in display advertising the notice must be so placed as to be visible when the name is visible, would have been unnecessary if the decree contemplated any limitation on the use of the name outside the notice of differentiation or on the size of the name. We doubt that the decree, even taken literally, will bear so narrow a construction. Certainly the requirement of paragraph IV that the notice shall be "always visible when the name `Stephen L. Stetson' is visible" cannot reasonably mean that the name may be large enough to be read across a room while the notice is legible at no greater distance than five feet. The five-foot requirement specifies the minimum, not the maximum, size of type for the notice, and in some of the display advertisements we do not find the notice "reasonably legible" even at the minimum distance. Therefore as to display advertising we find a breach of the injunction according to its strict letter. But the issue need not be determined on so narrow a basis. In deciding whether an injunction has been violated it is proper to observe the objects for which the relief was granted and to find a breach of the decree in a violation of the spirit of the injunction, even though its strict letter may not have been disregarded. See High on Injunctions, 4th Ed., Vol. 2, § 1446; California Fruit Growers Exchange v. Sunkist Drinks, Inc., D.C.S.D.N.Y.,
The appellant asks further that the defendant be enjoined from any use of the name Stetson. Such drastic relief was denied on the prior appeal and we are not now disposed to grant it. As an alternative the appellant suggests that the Stetson name should not be permitted to be used except as part of the notice of differentiation. An injunction to this effect we believe to be necessary and proper. Compare L. E. Waterman v. Modern Fountain Pen Co.,
The order is reversed and the cause remanded for further proceedings in accordance with this opinion.
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