Lemke v. Dietz

98 N.W. 936, 121 Wis. 102, 1904 Wisc. LEXIS 13

Opinion

■ Wistslow, J.

We shall assume, for the purposes of thú. opinion, that the genuine “Sabine’s World’s Relief No. 2”' possesses all the medicinal virtues attributed to it by the complaint and the labels; that it is an instant cure for pain, as the label assures us; and that upon its introduction, in appropriate doses, into the human system, pain in the stomach, cholera, cholera morbus, colic, cramps, and similar ailments flee away. Such a remedy is surely entitled to the name “World’s Relief,” though why it should be called “World’s Relief No. 2” is difficult to understand. One feels a longing to know what greater feats of healing are accomplished by “World’s Relief No. 1,” when so inestimable a medical blessing is called “No. 2; ” but upon this point the complaint throws no light, and we seem destined to remain in ignorance, unless, indeed, we join those vast throngs which we are bound to believe are hurrying to the drug stores of the-land to purchase the Sabine medicines, and, by the expenditure of a quarter of a dollar, learn what greater miracles in therapeutics are accomplished by the “World’s Relief No. 1.”

As said in the beginning, however, we assume that the medicinal compound which it is claimed has been imitated' and counterfeited possesses substantially the merits claimed for it. Courts have sometimes refused to intervene on behalf of the owners of a proprietary medicine on the ground' of the falsity of the claims made as to its healing quality, but this has always been after trial, when the falsity had beén-proven by sufficient evidence, and not upon demurrer.

The complaint, when fairly and reasonably construed, shows that the plaintiff is the owner of the right to manufacture the medicine and use the tradenames and labels in-question, save, perhaps, for one feature hereafter noticed, and that those rights are valuable rights. We think it also-appears from the complaint that both defendants have placed' in the market imitations of said medicine, with wrappers and labels well calculated to deceive, and which in fact do deceive, the public, and have thereby injured the plaintiff’s-reputation and business. Erom these facts, irrespective entirely of the question of trademark, which we do not decide, we think it clear that a case of unfair competition in business by the imitation of packages and labels is alleged, except for one consideration, now to be stated.

The principle is settled that a substantial lack of truth-in a trademark or trade-label debars it from protection at the hands of a court of equity. There may be no way of stopping-, the deception which the plaintiff is practicing on the public, but a court of equity will not lend its aid to give the plaintiff a monopoly in such deception. This is simply an applica tion of familiar principles, which are nowhere better stated, perhaps, than by Vice Chancellor Shadwell in the old case of Pidding v. How, 8 Simons, 477, thus:

“It is a clear rule laid down by courts of equity not to extend their protection to persons whose case is not founded in truth.”

This rule has been most frequently applied in cases where it has appeared by the evidence that the trademark or label •contains false statements as to the qualities or ingredients of the merchandise. Browne, Trademarks (2d ed.) § 11. The rule, however, is by no means confined to misrepresentations of this description. It extends as well to false statements as to the identity of the manufacturer. Manhattan Medicino Co. v. Wood, 108 U. S. 218, 2 Sup. Ct. 436; Siegert v. Abbott, 61 Md. 276; Pidding v. How, supra; Joseph v. Macowsky, 96 Cal. 518, 31 Pac. 914, 19 L. R. A. 53; Alaska Packers’ Asso. v. Alaska Imp. Co. 60 Fed. 103. This last-named case is instructive on this point. It was a suit in equity for infringement of a trademark. The plaintiff was the assignee of the Aleutian Islands Fishing & Mining Company, which had established a station for canning salmon on the island of Kodiak, Alaska. The complaint alleged that this last-named company had used only the best quality of salmon, and exercised great care and skill in packing, so that it acquired, a very high reputation, and built up a very large business, and used a certain described trademark or brand upon its cans by which said salmon were known, and that said company leased its properties to the plaintiff, and assigned to the plaintiff the good will of the business, its labels, brands, and trademarks, and that the defendant was imitating the said trademark or brand. The label contained the statement that the salmon was packed “by the Aleutian Islands Pishing & Mining Co.,” which was entirely false, and for this reason it was held that the plaintiff was not entitled to relief in 'equity. In that case it was admitted by plaintiff’s counsel, and we think advisedly, that in a case where the reputation and value of an article is due to some peculiar, personal, individual skill or genius of the original manufacturer, an as-signee of the business should state the* fact that he is the-assignee in his labels, and cannot rightfully represent to the public that the article is still made by the original manufacturer ; but he claimed that the principle did not apply to an ordinary article of manufacture, such as canned salmon. The court, however, held that the principle did apply to the-case, because the complaint alleged that the care, skill, and expertness of the original manufacturer had given the salmon its high reputation. A fortiori should the rule apply to a. medicinal compound like the World’s Relief No. 2. It claims for itself great virtues. Naturally, the citizen afflicted' with cholera or doubled up with colic will ask, as he inspects-the bottle on the druggist’s counter: “Who makes it ? What assurance have I that it will do what the label says ?” And turning to the label, he will find there the name of Dr. A. J. Lemke, Milwaukee, Wis. True, the label does not say cate-goidcally that Dr. A. J. Lemke manufactures it, but that is the natural and almost inevitable inference to be drawn from the various labels. This information is quite reassuring to-the sufferer. We all know how we trust the physician’s word in sickness, and, when we find a patent medicine which purports to be prepared by a physician, the inclination to regard it as necessarily superior to a preparation put forth by a layman is well known. The fact is, in a certain degree,, a guaranty that the medicine has some merit. In the present case the complaint alleges that the long experience and great care of Albert J. Lemke had contributed to the reputation of the-medicine, but that Albert J. Lemke died in December, 1893, since which time the plaintiff, as his legatee, has carried on the busines and made the medicine, and has sent it forth on its healing and soothing mission with the false assurance on every bottle that Albert J. Lemke was still. living at Milwaukee and was actively superintending the manufacture, if not preparing it in person. We can but .regard this as a substantial false statement of a very material fact. If it was desired to assure the public that this was the same medicine prepared by Dr. A. J. Lemke, and after his formula, those facts could have been easily stated, and there would have been no deception. Our statute recognizes that proprietary medicines should only be prepared by 'a physician or registered pharmacist, by permitting their sale in sealed packages on which are printed the name of the contents, the directions for using, and the name of the physician or pharmacist by whom prepared, and apparently does not permit the general sale of any proprietary medicines compounded within this state which do not comply with these requirements. See. 1409y, Stats. 1898.

Eor the reasons stated, the demurrer to the complaint should have been sustained.

By*the Court. — Order reversed, and action remanded with directions to sustain the demurrer.