must surely be some fallacy in saying that they have "told the simple truth." . . . I cannot help saying that, if the defendants are entitled to lead purchasers to believe that they are getting the plaintiff's manufacture when they are not, and thus to cheat the plaintiffs of some of their legitimate trade, I should regret to find that the law was powerless to enforce the most elementary principles of commercial morality. I do not think your Lordships are driven to any such conclusion. . . . I rather demur. . . to the view that the defendants in this case were telling the simple truth when they sold their belting as camel hair belting. I think the fallacy lies in overlooking the fact that a word may acquire in a trade a secondary signification differing from its primary one, and that if it is used to persons in the trade who will understand it, and be known and intended to understand it, in its secondary sense, it will none the less be a falsehood that in its primary sense it may be true. A man who uses language which will convey to persons reading or hearing it a particular idea which is false, and who knows and intends this to be the case, is surely not to be absolved from a charge of falsehood because in another sense which will not be conveyed and is not intended to be conveyed it is true. In the present case the jury have found, and in my opinion there was ample evidence to justify it, that the words "camel hair" had in the trade acquired a secondary signification in connection with belting, that they did not convey to persons dealing in belting the idea that it was made of camel's hair, but that it was belting manufactured by the plaintiffs. They have found that the effect of using the words in the manner in which they were used by the defendants would be to lead purchasers to believe that they were obtaining goods manufactured by the plaintiffs, and this both to deceive them and to injure the plaintiffs. On authority as well as on principle, I think the plaintiffs are on these facts entitled to relief.

Lord MACNAGHTEN. In this case, your Lordships, . . . the learned counsel for the respondents maintained that the expression "camel hair belting" used by Banham was the "simple truth." Their proposition was that "where a man is simply telling the truth as to the way in which his goods are made, or as to the materials of which they are composed, he cannot be held liable for mistakes which the public may make." That seems to me to be rather begging the question. Can it be said that the description "camel hair belting" as used by Banham is the simple truth? I will not call it an abuse of language to say so, but certainly it is not altogether a happy expression. The whole merit of that description, its one virtue for Banham's purposes, lies in its duplicity. It means two things. At Banham's works, where it cannot mean Reddaway's belting, it may be construed to mean belting made of camel's hair; abroad, to the German manufacturer, to the Bombay mill-owner, to the up-country native, it must mean Reddaway's belting; it can mean nothing else. I venture to think that a statement which

is literally true, but which is intended to convey a false impression, has something of a faulty ring about it; it is not sterling coin; it has no right to the genuine stamp and impress of truth. I have now dealt with the only peculiarity in the case. For the rest the action is one of a very ordinary type.. In the result, I am of opinion that the appeal must be allowed.

Lord MORRIS. My Lords, I concur in the motion which has been made.

Order appealed from reversed, with costs here and below: Declared that judgment ought to be entered for the plaintiff.

868. SINGER MANUFACTURING COMPANY v. JUNE MANUFACTURING COMPANY

SUPREME COURT OF THE UNITED STATES. 1896

163 U. S. 169, 6 Sup. 1002

THE Singer Manufacturing Company, a corporation organized under the laws of the State of New Jersey, filed its bill in equity in the Circuit Court of the United States for the Northern District of Illinois against the June Manufacturing Company, an Illinois corporation. The bill alleged that the complainant was engaged in the manufacture of sewing machines, and had an exclusive right to the word "Singer" as a trade name and "designation" for such sewing machines; That the defendant, for the purpose of inducing the belief that sewing machines manufactured and sold by it were made by the complainant, was making and selling machines of the exact size, shape, ornamentation and general external appearance as the machines manufactured by complainant; That the defendant was imitating a described trade-mark which the complainant had for many years placed upon its machines: That it was imitating "devices" cast by complainant in the legs of the stands of the machines manufactured and sold by it; and That the defendant advertised the machines, by it made, by means of cuts and prints, imitations of the cuts and prints made by complainant and representations of the machines manufactured by complainant. An accounting for the profits received by defendant was prayed, as also an injunction to restrain the use by defendant in its business of the word "Singer" as a designation of the machines manufactured by it, and to restrain a continuation of its other alleged wrongful practices.

In its answer the defendant denied that it had attempted to avail itself of the complainant's "representation" and trade name, or that in anything done by it, it had sought to induce the belief that the machines manufactured and sold by it were manufactured by the complainant, and alleged that the form, size, shape and appearance of its machine were public property, and not the exclusive property of the complainant. It was averred that the defendant constructed

its machines on the principles of machines which had been protected by letters-patent, held by the Singer Company, by license or otherwise, but which patents had long since expired, and that the name “Singer” was the generic name of such machines. The defendant admitted that it affixed an oval plate to its machines, but claimed that the device placed by it thereon was dissimilar to that used by the complainant, and averred that the words "Improved Singer," stamped on such plate, was the correct name of the machine. It was also averred that while formerly an elaborate monogram was placed on said plate, composed of the letters "S. M. Co.," being the initials of the "Standard Manufacturing Company," (a former corporate name of defendant,) that the monogram now placed upon said plate was "J. M. Co."

It appeared from the evidence that the construction of the Singer sewing machines was commenced in 1850, in the latter part of which year the firm of I. M. Singer & Co. was formed. . . . The use of the patents of Howe and Bachelder was not confined to the Singer machines, but was employed under license by manufacturers of other sewing machines where an automatic feed was employed. Nearly one hundred other patents relating to sewing machine mechanism and attachments to sewing machines were owned or controlled from time to time by the Singer firm or its corporate successors. . . . Whilst it is true that all the patented inventions owned or controlled by the Singer Company were not all used on every type of Singer machine, it is also true that all Singer sewing machines contained some features of some of these inventions which to that extent distinguished them from machines made by others of a similar class. . . . The Bachelder patent expired about 1876, and at once, on the monopoly which it had created coming to an end, the prices of the Singer machines were very materially reduced, and competitors sprang into existence, who began to manufacture machines which they called Singer sewing machines. Controversies arose between the Singer Manufacturing Company and such persons as to the right of the latter to make machines in the form and appearance of those manufactured by the Singer Company, and their right to style such machines Singer machines.

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After hearing there was a decree dismissing the bill for want of equity, the Court below substantially concluding first, that the sewing machine in the form made by the defendant was public property, and therefore no infringement of the rights of the complainant had resulted from its use; second, that the name "Singer" was also public property, and hence no legal injury was caused to the complainant by the use of the name in the manner and form in which it was employed by the defendant; third, that the defendant had not imitated the trade-mark of the complainant.

Mr. Lawrence Maxwell, Jr., and Mr. Charles K. Offield, for appellant. Mr. John G. Elliott and Mr. William Henry Browne, for appellee. Mr. Justice WHITE, after stating the foregoing facts, delivered the

opinion of the Court. . . . All the relief which complainant seeks is necessarily embraced in the following classification: 1st. Unfair competition in business, resulting from the form in which the defendant makes its machines, and also from the employment by it of the word "Singer" in connection with the marks and devices on the machines, and the use of the same name in circulars and advertisements; 2d, the alleged violation of the specific trade-mark of the complainant by the devices found on defendant's machines and by the use of the word Singer." We will examine these contentions.

1st. Unfair competition in business, resulting from the form in which the defendant makes his machines, and also from the use made by him of the word "Singer" in connection with the marks and devices on his machines, and the use of the same in circulars and advertisements. This question subdivides itself into two inquiries: (1) Where the name of a patented machine, whether it be an arbitrary one or the surname of the inventor or manufacturer, has become, during the monopoly flowing from the patent, a generic description of such machine, and at the same time in a secondary and relative sense indicates to the public the source of manufacture, has the manufacturer, on the cessation of the monopoly, the right to prevent the making by another of a like machine in the form in which it was made during the life of the patents, and has he also a right to prevent another from calling such machines, by him made, by the generic name attributed to them during the monopoly, and from placing this name on them, and using it in advertisements, in circulars, and generally for such purposes as his interest may suggest? (2) If no right exist in the original manufacturer to prevent another, under the foregoing circumstances, from making machines of like form and structure and using the name, under the conditions stated, does the one who so makes and uses or sells them enjoy the liberty without any resulting duty whatever, or is it accompanied with the obligation of so exercising the right as not to destroy the property of others, and also in such a manner as not to deceive the public?

(1) It is self-evident that on the expiration of a patent the monopoly created by it ceases to exist, and the right to make the thing formerly covered by the patent becomes public property. It is upon this condition that the patent is granted. It follows, as a matter of course, that on the termination of the patent there passes to the public the right to make the machine in the form in which it was constructed during the patent. We may, therefore, dismiss without further comment the complaint, as to the form in which the defendant made his machines. It equally follows from the cessation of the monopoly and the falling of the patented device into the domain of things public, that along. with the public ownership of the device there must also necessarily pass to the public the generic designation of the thing which has arisen during the monopoly, . . . The public having the right on the expi

ration of the patent to make the patented article and to use its generic name, to restrict this use, either by preventing its being placed upon the articles when manufactured, or by using it in advertisements or circulars, would be to admit the right and at the same time destroy it. It follows, then, that the right to use the name in every form passes to the public with the dedication resulting from the expiration of the patent. . . . (2) But it does not follow, as a consequence of a dedication, that the general power, vested in the public, to make the machine and use the name imports that there is no duty imposed, on the one using it, to adopt such precautions as will protect the property of others and prevent injury to the public interest, if by doing so no substantial restriction is imposed on the right of freedom of use. This principle is elementary and applies to every form of right, and is generally expressed by the aphorism "sic utere tuo ut alienum non laedas." This qualification results from the same principle upon which the dedication rests, that is, a regard for the interest of the public and the rights of individuals. . . . To say that a person who has manufactured machines under a patented monopoly can acquire no good will, by the excellence of his work, or the development of his business, during the patent, would be to seriously ignore rights of private property, and would be against public policy, since it would deprive the one enjoying the patent of all incentive to make a machine of a good quality, because at its termination all the reputation or good will resulting from meritorious work would be subject to appropriation by every one.

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It remains only to apply these legal conclusions to the facts already recapitulated. Of course, from such application all claim of right, on the part of plaintiff in error, to prevent the use of the name "Singer" is dispelled. This leaves only two questions, first, whether that name as used in the circulars and advertisements of the defendant is accompanied with such plain information as to the source of manufacture of the machines by them made as to make these circulars and advertisements lawful; and, second, whether this also is the case with the use of the word "Singer" on the machines which the defendant makes and sells. . . . The proof is clear that there was an entire failure on the part of the defendant to accompany the use of the word "Singer" on the machines made and sold by him, with sufficient notice of their source of manufacture, to prevent them from being bought as machines made by the Singer Manufacturing Company, and thus operate an injury to private rights and a deceit upon the public. Indeed, not only the acts of omission in this regard, but the things actually done, give rise to the overwhelming implication that the failure to point to the origin of manufacture was intentional, and that the system of marking pursued by the defendant had the purpose of enabling the machines to be sold to the general public as machines made by the Singer Company.

2d. There remains only for examination the second proposition, that