The opinion of the court was delivered by: MARIS
This is a bill in equity to restrain unfair competition and for an accounting and damages. The defendants have moved to dismiss it upon the ground that it fails to set forth facts sufficient to constitute a cause of action. In considering these motions the facts set forth in the bill must be taken to be true. Briefly stated they are these:
Since the latter part of the nineteenth century plaintiff has been engaged in the manufacture and sale of composite containers consisting of a metal top and bottom and a body of fiber or heavy paper. In their manufacture the body of the container is bent around a mandrel and the two ends of the material thus forming the body meet. Along the line where the two ends of the material thus meet there is inserted a metal strip. This strip is used instead of glue to bind or seal the two ends of the container body together.It is, however, of an entirely distinctive design which serves as an attractive decoration for the finished product and is both ornamental and decorative.
In 1933 plaintiff sold to Frankfort Distilleries, Inc. (hereinafter called "Frankfort"), machines for assembling in its plant at Baltimore the containers manufactured by the plaintiff, and from time to time thereafter sold and shipped to it nonassembled containers which were assembled by Frankfort at its plant. The purpose of this transaction was to enable Frankfort to pack its whisky bottles for sale and distribution to the public in containers manufactured by plaintiff and having plaintiff's distinctively ornamental and decorative metal strip, for the purpose of attracting by their appearance buyers for Frankfort's product and for the added purpose of eliminating the expense and trouble of shipping assembled containers to Baltimore. Whisky and other spirits manufactured by Frankfort at Baltimore are sold throughout the United States.
Thereafter about October, 1935, the Tin Decorating Company of Baltimore (hereinafter called "Tin Decorating"), commenced the manufacture and sale to Frankfort of metal parts for containers including metal strips of the distinctive design and type theretofore exclusively manufactured by plaintiff and used on plaintiff's product and the container parts so sold by Tin Decorating to Frankfort were assembled and used by Frankfort instead of plaintiff's containers for packing Frankfort's products. The manufacture and sale of these container parts by Tin Decorating was specifically and with conscious intent and motive in imitation of the distinctive and ornamental products theretofore manufactured by the plaintiff. Immediately upon learning of said acts of Tin Decorating, plaintiff, on October 12, 1935, wrote it the following letter of protest:
"The Tin Decorating Company of Baltimore
"We are advised that you are making and selling a metal strip the purpose of which is to bind or seal the ends of a formed container body. This strip we are told you are selling to Frankfort Distilleries, Incorporated. "We feel we have the right to assume that you knew this strip to be our own exclusive design, that it is the principal part of a container made exclusively by us, and that this strip is assembled on machines designed by us exclusively.
"The strip referred to has become so thoroughly identified with our product and ourselves throughout the country during thirty-eight years of active business, that any container so made would be believed to be a container made by us. We believe the general law of unfair competition clearly covers this case.
"We would like to believe that an explanation can be made which will change the aspect as we see it, of this whole matter. In that case, we ...