HOSTETTER CO. v. VAN VORST

HOSTETTER CO. v. VAN VORST. (Circuit Court, S. D. New York. June 29, 1894.) Trade-Marks — Infringement. Selling an imitation, as such, without any suggestion or arrangement that it be sold again for the genuine article, although with assent to such suggestions from others, does not infringe the right of the manufacturer of the genuine. In Equity. This was a suit by the Hostetter Company against John Van Vorst for infringement of a trade-mark. James Watson and Albert H. Clarke, for plaintiff. Patrick H. Loftus, for defendant. ^ [MAJORITY — WHEELER, District Judge.] WHEELER, District Judge. This suit is brought for the alleged selling, or procuring to be sold, an imitation, produced by the defendant, as the genuine Hostetter’s bitters of the plaintiff. This is denied, and the principal question is whether this allegation is proved. Hostetter v. Fries, 17 Fed. 620, 21 Blatchf. 339; Hostetter Co. v. Brueggeman, etc., Co., 46 Fed. 188. The evidence shows well enough that the defendant sells the imitation as such, and that he would sell it to others, to be by them sold again for the genuine, if they would. It does not show any suggestion from him that it could be, nor any arrangement by him that it should be, so sold, but only his assent to suggestions that it might be. The selling of the imitation, as such, does not infringe upon the right of the plaintiff that it should not be sold as the genuine. The defendant owes no duty of preventing such sales; he is only bound not to make, or at most not to encourage, them. The proofs do not show encouragement, even, of them, and so fall short of sustaining this allegation, and of entitling the plaintiff to relief. The conduct of the defendant, however, so invited this litigation that he ought not, in equity, to have costs. Bill dismissed, without costs.