Southern California Fish Co. v. White Star Canning Co.

This is an appeal by defendant from a judgment enjoining it from offering for sale tuna packed in cans similar to those used by plaintiff and encircled with a-label such as that which is being used by defendant. The theory of plaintiff is that defendant is guilty of unfair competition in trade, in that its label is an imitation of plaintiff’s label, calculated to deceive the purchasing public. A comparison of specimens of the cans and labels used hy the parties, and submitted to our inspection, convinces us that there is no such similarity as will sustain a judgment against defendant.

Each party packs in cans and sells to the trade a product designated on the cans as “Tuna Fish.” Each puts up its product in cylindrical tin cans, approximately three and three-eighths inches in diameter and two inches in depth, each can being encircled by a paper wrapper, or label, embellished with various decorative designs, of different colors, imprinted upon a dark blue background. Plaintiff’s product is known to the trade as “Blue Sea Tuna,” and those words, in white bordered with gold, are printed in large type upon its label. Defendant’s product is known as “White Star Tuna Fish,” and those words, in large white letters bordered with gold, are printed on its label. The cans used by both parties, though of the same size and shape, are such as are commonly used in the trade. Plaintiff’s secretary testified that the cans were of the style that the can manufacturers were making, and that he did not know of any tuna company that packed in anything

Except that both labels have substantially the same blue-colored background, the figure of a fish, designated to represent the “tuna,” and truthful, printed descriptions of the contents of the packages, the labels of the two competitors differ in almost every respect.

Though aware that written descriptions of labels and wrappings are almost always unsatisfactory, we shall essay a comparison and description of the two labels, hoping that we shall succeed in showing whatever points of similarity there may he, as well as the dissimilarities. In a general way, the respective labels may be described as follows: At the left end of plaintiff’s label—that is, the left end when it is laid out flat, for, of course, it has neither left nor right nor middle when it encircles the can—are the words “Blue Sea” in gilt letters, and printed in such a manner that the letters, which run into each other, represent a rope with several coils; under this, in large gilt letters, is the word “Tuna”; between the words “Blue Sea” and “Tuna” is a representation of the sea, with a small steamer sailing thereon; to the right of the steamer, in white letters, is the word “Brand.” At the corresponding end of defendant’s label are the words “White Star,” in large bold type, and under them, in similar type, the words “Tuna Fish”; between the words “White Star” and the words “Tuna Fish” is a five-pointed star, in white bordered with gold, and printed therein the words “Chicken of the Sea”; to the left of the star is the word “California,” and to the right the word “Brand.” In the middle of plaintiff’s label—when laid out flat—is a figure which, we are informed by appellant’s counsel, is intended to represent a sea-serpent holding a trident; under this figure of the sea-serpent on plaintiff’s label, printed in dark blue letters and in a space bordered with gilt, are the words “Prepared ready to eat for a delicious salad. Add to this tin of tuna-fish one-quarter cup celery chopped fine, mixed with equal parts salad dressing and cream or condensed milk.” On the corresponding part of defendant’s label is the word “Tuna,” printed in large white letters, edged with gold, and on either side a white five-pointed star, edged with gold, in a gilt circle; under the word “Tuna,” and printed in white,

On both labels all the words, figures, and letters are printed on a dark blue background. A representation of the sea runs across plaintiff’s label, or around the can when the label is pasted upon the container in which the tuna is packed. There is no representation of a sea on defendant’s label. Nor is there on defendant’s label any figure of a sea-serpent holding a trident, nor anything at all like any such figure. On both labels there is the design or figure of a fish—the tuna. The fish figure on plaintiff’s label is not horizontal, but is in. the act of rising from the sea or ocean. The corresponding figure on defendant’s label is in a horizontal position, and is not shown rising or leaping from the water. Indeed, no water is represented on defendant’s label.

[1] That anyone is deceived by the size, shape, and general make-up of the cans, or by the prevailing color scheme of the wrappers or labels, does not help plaintiff’s ease. All these features are old, separately and in combination. As we already have seen, the cans used by both parties are of the style put out by the can manufacturers, and are used by all the tuna-packing companies. Plaintiff’s secretary testified that he did “not know of any tuna-packing company packing in anything except a round can similar •to this in the exhibit. I do not know of- any American packers of fish using any other except the round can with concentric rings on the ends of the can. There are about twelve or fourteen packers of tuna in Southern California using this style of can.” Plaintiff must show deception arising from some feature of its own, not common to the public. (Castle v. Siegfried, 103 Cal. 71 , [ 37 Pac. 210 ]; Canal Co. v. Clarke, 13 Wall. 311 , [ 20 L. Ed. 581 , see, also, Rose’s U. S. Notes]; cited and quoted from in Dunston v. Los Angeles Van etc. Co., 165 Cal. 95 , [ 131 Pac. 115 ]; Continental Tobacco Co. v. Larus etc. Co., 133 Fed. 727 , [ 66 C. C. A. 557 ].) As was said in Coats v. Merrick Thread Co., 149 U. S. 562 , [ 37 L. Ed. 847 , 13 Sup. Ct. Rep. 966 ], the purchaser of thread “is chargeable with knowledge of the fact that any manufacturer of six-cord thread has a right to use a black and gold label, and is bound to examine such label with sufficient care to ascertain the name of the manufacturer.” “He [plaintiff] must make out, not that the defendant’s are like his by reason of those features which are common to them and other people, but he must make out that the defendant’s are like his by reason of something peculiar to him, and by reason of the defendant having adopted some mark, or device, or label, or something of that kind, which distinguishes the plaintiff’s from other goods which have, like his, the features common to the trade. Unless the plaintiff can bring his case up to that, he fails.” (Payton v. Snelling, 17 R. P.

[2] Nor is plaintiff’s case helped by the fact that dark blue, the color of the background, is the predominant color in both labels, though it is apparent that the gravamen of plaintiff’s charge lies in an alleged imitative color scheme. It is the one specific feature emphasized by the plaintiff throughout its case. It is true that sometimes a color, taken in connection with other characteristics, may serve to distinguish one’s goods, and thus be protected by the courts. (Fairbanks Co. v. Bell Mfg. Co., 77 Fed. 869 , [ 23 C. C. A. 554 ]—a case where, however, there was proof of specific instances of deception.) But as a rule a color cannot be monopolized to distinguish a product. There are not more than seven primary colors, and if one of these may be appropriated as a distinguishing characteristic of a label, it would not take long to appropriate the rest. Thus, by appropriating the colors, the packing of tuna could be monopolized by a few vigilant concerns. [3] To allow colors to be appropriated as distinguishing, characteristics would foster monopoly by foreclosing the use by others of any tasty dress; and where the difference between plaintiff’s and defendant’s labels are so marked in other respects that, in the absence of identity of color, there can be no possibility of confusion, a charge of unfair competition falls to the ground. (Pacific Coast etc. Milk Co. v. Frye & Co., 85 Wash. 133 , [ 147 Pac. 865 ]; Diamond Match Co. v. Saginaw Match Co., 142 Fed. 727 , [ 74 C. C. A. 59 ] ; Schlitz Brewing Co. v. Houston Ice & B. Co., 241 Fed. 817 , [ 154 C. C. A. 519 ]; Heinz v. Lutz, 146 Pa. 592 , [ 23 Atl. 314 ] ; Morgan’s Sons Co. v. Troxell, 89 N. Y. 293 , [ 42 Am. Rep. 294 ]. See, also, United States Tobacco Co. v. McGreenery, 144 Fed. 531 .) Moreover, in this case the use of blue labels was common to the trade. Plaintiff’s secretary, called by it as a witness in its behalf, testifying on cross-examination said that in Southern California there are “about six or eight, maybe ten [tuna packing companies] using the blue label.” In Continental Tobacco Co. v. Larus etc. Co., sura, it was held that where tin tags of all colors, including yellow, and of various sizes, had been used for many years by manufac

[4] Passing from the features that are common to the trade—size and shape of cans, color scheme of labels, etc. —we find that, with but one exception, presently to be noted, the label used by defendant is substantially unlike that used by plaintiff. The exception to which we refer is the figure or design of the fish. But the figure of the fish is a symbol that is indicative of the article sold. And the rule is that there can be no exclusive appropriation of a sign or symbol that represents or is descriptive of the article to which it is attached; that there can be no exclusive appropriation of anything which is merely descriptive of the article, or which indicates the ingredients of the package, or the mode of composition.. To give the right of exclusive appropriation, the sign or figure must be some arbitrary form or figure, not suggestive of the nature óf the article to which it is affixed. (Fischer v. Blank, 138 N. Y. 244 , [ 33 N. E. 1040 ]; Heide v. Wallace & Co., 135 Fed. 346 , [ 68 C. C. A. 16 ]; Marvel v. Pearl, 133 Fed. 160 , [ 66 C. C. A. 226 ].) In Heinz v. Lutz, supra, which was an action based upon alleged unfair competition in trade and not for violation of a technical trademark, and which was brought to enjoin a fruit dealer from using on his packages a label whereon certain fruits were pictured, the supreme court of Pennsylvania used this language; “Both labels are colored, but in every feature except the fruit the colors are widely different. The fruit is, of course, highly colored, to make it look as luscious as possible; but no one trader in this article has, or can have, a monopoly of pears, peaches, cherries, plums, strawberries, etc. Any dealer in fruits has the right to put a picture of these fruits upon'his labels, and to make them as attractive as possible, and the fruit in one label is very likely to resemble that in another.” In the instant ease, a comparison of the labels used by plaintiff and defendant shows that the only. features that possibly can give rise to any similarity

Plaintiff claims that a side-by-side comparison of the two labels when laid out flat is not a fair test. It is asserted

Judgment reversed.

Sloane, J., and Thomas, J., concurred.