Meccano, Ltd. v. Wanamaker , 250 F. 450 ( 1918 )

WARD, Circuit Judge.

[1] The hill in this case charges the defendant, which is a seller only: First, with infringement of United States letters patent No. 1,079,245 for perforated plates to he used in constructing working models in toys; second, for infringement of the manuals of instruction as to making toys out of the perforated plates in connection with angle pieces, wheels, and fastening devices, sold with each outfit copyrighted, one on June 22 and the other on August 14, 1911; third, with unfair competition in connection with the sale of the American Model Builder outfits. Á similar bill was filed in the Western Division of the Southern District of Ohio against the manufacturer of the American Builder outfit and its Eastern sales agents who supplied the present defendant with it. It was so proceeded in that case that the patent was held valid and infringed, the copyrighted manuals infringed, and the defendant guilty of unfair competition. The opinion is reported in (D. C.) 234 Fed. 912. The District Judge, following very naturally the adjudication of the District Court in Ohio, granted a preliminary injunction, and this is an appeal from that order.

Upon appeal to the Circuit Court of Appeals in the Ohio case the decree was reversed so far as it held the patent valid, and affirmed as to copyright infringement and unfair competition. It is reported in 246 Fed. 603, 158 C. C. A. 573.

We concur fully with the opinion of the Circuit Court of Appeals for the Sixth Circuit as to the invalidity of the patent, and fhink it unnecessary to do more than to refer to it on that point.

[2,3] To justify <a preliminary injunction on the other grounds the case ought to be very clear. Wright Co. v. Herring-Curtiss Co., 180 Fed. 110, 103 C. C. A. 31. Upon the question of copyright infringement and unfair competition, we think the case not clear. The District Judge said:

“I do not think the books containing plates or the covers or other ornamentation of the catalogues of the defendant are sufficiently similar to those of the complainant to mislead the public, but the appearance of the plates themselves and the system of construction have been so deliberately taken from the complainant that they are misleading, and come within the decisions of Enterprise Co. v. Landers [C. C.] 131 F. R. 240; Yale & Towne Co. v. Adler, 154 F. R. 37 [83 C. C. A. 149]; Rushmore v. Manhattan Works, 163 F. R. 939 [90 C. C. A. 299, 19 L. R. A. (N. S.) 269]; Prest-O-Lite Co. v. Davis, 215 F. R. 349 [131 C. C. A. 491].”

The complainant cannot obtain a monopoly for all time of perforated plates of the lengths having equidistant holes and intervening spaces which it first used. These are functional features of the units of construction which any one is at liberty to use. Of course it cannot claim a monopoly of constructing the particular models or toys which it has made, as, for example, wheelbarrows, bridges, cranes, Ferris wheels, trucks, etc. ,

Assuming that the public associates plates of this description with the complainant as a source, and that there is likely to be confusion because of similarity of the outfits, it is a question whether it is entitled within the decision of the Supreme Court in Singer Co. v. June, 163 U. S. 169, 16 Sup. Ct. 1002, 41 L. Ed. 118, to more protection than that outfits made by others should be advertised and sold as tire product of the makers under names and in packages which do not simulate the complainant’s. This is true of the outfits which the defendant sells. The name of the complainant’s is “Meccano” and of those sold by the defendant “American Model Builder.” They are advertised as made by the American Mechanical Toy Company, and sold in dissimilar packages. So in the nature of things, the constructing elements and the things constructed being tire same, the plates illustrating them and the instructions contained in the manuals furnished with the two outfits must be more or less alike. All that should b,e required of other makers is to do independent work.

[4] When it comes to the charge of actually painring off, the evidence is insufficient to justify a preliminary injunction. The defendant has of course the right to sell as much as it can of the outfit which gives it the greatest profit, and to press that outfit upon its customers as against the other. The testimony of Patterson, one of the defendant’s employes in Philadelphia, on which the complainant relies, goes no further than this. As to the Koenig sale in Philadelphia in 1912 and the Scott and Dewis incident in New York in 1916, it is to be observed that in each case the purchaser asked for the American Builder models and got them. In the. former case it is said the salesgirl described the American Builder as the new “Meccano” to Koenig, and in the latter the salesgirl by perhaps an error in the sales slip described it as “Meccano.” The American Model was not palmed off on the purchaser as the Meccano in either case.

The order is reversed.