Bernstein v. Danwitz

192 F. 943, 1911 U.S. App. LEXIS 5511

Opinion

WARD, Circuit Judge.

The complainant has by the leave of the court filed a supplemental bill alleging that the defendant is an alien, which is not denied. Therefore the court now has jurisdiction of the cause of action contained in the original complaint, founded on the charge of unfair competition. The defendant's original carton containers, as well as the packages of the single cakes, were obvious imitations of the complainant’s. But the defendant voluntarily consented to alter them in accordance with suggestions made in open court, apparently satisfactory to the complainant, and he honestly carried these changes out at his own expense. Still I think the complainant is entitled to some further relief. The carton containers I suppose, are bought by retailers, who are not at all as likely to be misled into buying the defendant’s goods for the complainant’s as would be the consumers, who buy the small single packages. The defendant must remove the dark rectangular panel above his trade-mark, which so closely resembles the panel over the complainant’s trademark, and print his letter press in some other color than blue. As this will require the defendant to go to further expense in changing the wrappers of his goods, which would have been avoided if the complainant had described the defendant as ari alien in his original bill,.and had.not expressed himself content with the changes first made, it will be a condition of granting the further relief that the complainant shall contribute to the defendant’s expenses. He may at his option reimburse the .defendant for the expense of the changes already made, or for the expense to be incurred in making the further change. If he elect' to pay the expense of the further change, he may,, if he does not insist upon an injunction agajnst both, pay only for the expense of the change on the carton container, or only for the change on the single package.

The motion for a preliminary injunction on these terms is granted.