Fowle v. Park

Seth A. Fowle and Horace S. Fowle, citizens of Massachusetts, filed their bill of complaint against John D. Park, Ambro R. Park, and Godfrey F. Park, citizens of Ohio, in the circuit court of the United States for the Southern district of Ohio, on the 28th day of March, A. D. 1884, alleging that in 1844 one Lewis Williams, of Philadelphia, 'prepared, invented, and compounded a certain medicinal preparation of great and substantial value, for certain complaints and diseases, and assigned and adopted the name therefor of 'Wistar's Balsam of Wild Cherry,' he being then the sole proprieior, and alone having knowledge of the nature and ingredients of said preparation;' that in May, 1844, Williams 'sold, assigned, and transferred, for valuable compensation to him paid, to one Isaac Butts, of the state of New York, said preparation, and a full and true copy of the receipt for preparing the same, under the name of 'Wistar's Balsam of Wild Cherry,' with the sole and exclusive right to manufacture and sell the said medicine under said name or otherwise, in certain enumerated states, counties,' etc.; that in March, 1845, said Isaac Butts, 'for and in consideration of a large sum of money to him paid by Seth W Fowle,' sold, conveyed, and transferred to Fowle, his heirs, assigns, and personal representatives, 'all his right, title, and interest in and to said preparation or medicine, and said receipt, with a true copy thereof, with the sole and exclusive right to manufacture, sell, and cause to be sold, the said medicine in the states, provinces, and counties above named, as included in said transfer by Lewis Williams to the said Isaac Butts;' that at the time of said transfer, and as a condition thereof, and part of the consideration therefor, Fowle agreed 'that neither he nor his personal representatives or assigns would sell, cause to be sold, or establish agencies for, or be concerned in the sale of, said balsam in any part of the United States, except those named in said transfer by Lewis Williams, and that neither he nor they would sell, or cause to be sold, said balsam anywhere for a less sum than seven dollars and 20-100 of a dollar ($7.20) net for each and every dozen sold, or caused to be sold, except to agents for a whole state or territory, in which case such agent should not sell below said rate;' that all the rights thus acquired by Fowle passed to the plaintiffs by purchase and inheritance; that Fowle and plaintiffs, as successors, 'have continued to manufacture from said recipe and sell said balsam under said name from the year 1845, in large quantities, up to the present time, throughout said territory, and not elsewhere, except west of the ridge of the Rocky mountains, as hereinafter stated,' but have not sold below the stipulated price, and have expended great sums in establishing and increasing the business, and built up a a large trade and good-will in connection with the name 'Wistar's Balsam of Wild Cherry,' by which name their manufacture of said medicine has become largely known,-they and the defendants herein being the only manufacturers thereof on the continent, and being the only parties except Lucy A. S. Fowle, widow of said Seth W. Fowle, now having knowledge of the secret of its preparation; that about 1845 Williams disclosed the secret and mode of this preparation to Sanford and Park, and transferred to them a similar right to that given Butts to manufacture and sell said preparation 'in certain parts of the then United States lying west of the territory included as aforesaid in said transfer to Seth W. Fowle,'-they agreeing not to sell on the territory of Butts, and the right so acquired by Sanford and Park subsequently passed to the defendant John D. Park, and the other defendants became interested therein through him; 'that between the years 1849 and 1864, the portion of country between the Rocky mountains and the Pacific having become largely a part of the United States, the said Seth W. Fowle and the said John D. Park both sold small quantities of said Wistar's Balsam of Wild Cherry for some time in said territory in competition;' 'that in 1864 said parties entered into a contract whereby it was agreed that the said Seth W. Fowle should have entire control of such sales in said territory west of the ridge of the Rocky mountains free of all competition on the part of said John D. Park, the latter being paid a valuable consideration therefor by the said Fowle; that this arrangement continued until after the death of the said Fowle, in A. D. 1867, and until on or about 1869, when the same terminated;' that in 1869 John D. Park entered into an agreement with Seth A. Fowle, one of the complainants, and Lucy A. S. Fowle, whereby, in consideration of $5,000, he sold and transferred to them, their legal representatives and assigns, all interest in, or right to, the sale of said medicine west of the Rocky mountains, and also all interest in or right to the good-will of selling said balsam in said territory, and in the trademark on the labels, bottles, wrappers, and packages containing said medicine, and in carrying on the business therein,-said Park covenanting 'for himself, his assigns and representatives, in said agreement, that the said Seth A. and Lucy A. S. Fowle and their assigns should have and enjoy the sole and exclusive right of selling said medicine within said limits,' 'free from any competition or interference by him or any one under him, or by his authority, permission, or aid, either directly or indirectly,' etc.; that in 1872 complainants acquired all the rights of Lucy A. S. Fowle in said contract of 1869 with said John D. Park; that the copartners of said John D. Park, defendants herein, 'derived all their interest in and right to the manufacture and sale of said balsam since the execution of said contract of 1869 from said John D. Park, and with full knowledge and subject thereto;' that the defendants, and each of them, have failed to comply with the contract between Williams and Sanford and Park, in that they have for 10 years last past sold, and caused to be sold, and sold with knowledge or reason to know that the same was to be resold, said balsam in the territory comprised in the transfer to Butts, in large quantities, in competition with complainants' trade, and have sold there and elsewhere at a less price than seven dollars per dozen, and have sold and caused to be sold said balsam in the territory described in the contract of 1869 with John D. Park, and at a lower price than seven dollars; and that complainants had gone to large expense on the faith of that contract, and built up a large and valuable trade throughout the entire Pacific coast, with which defendants are interfering, and injuring and damaging complainants, as well as interfering with their business east of the Allegheny mountains. The bill, waiving an oath, prays for answers, an injunction, and an accounting.

The defendants admit in their answer the invention of the medicinal preparation, and its name, and the sale by Williams to Butts, and by Butts to Seth A. Fowle, and the sale by Williams to Sanford and Park, which the defendants say was made the year before the sale to Fowle; and that John D. Park purchased the rights of Sanford and Park. They call for a production of the agreement in 1864 between Seth W. Fowle and John D. Park; they deny that they have sold any of the balsam in the territory transferred to Butts; they deny the sale of any balsam by them within the territory west of the Rocky mountains named in the contract with John D. Park; and deny that they ever sold the balsam anywhere at less than seven dollars per dozen. They add to their answer averments, by way of cross-bill, in which they state their exclusive right to manufacture and sell the balsam in those parts of the United States lying west of the territory included in the sale from Williams to Butts, as well as those states and counties named in the transfer of Williams to Sanford and Park, and assert that the Fowles, by putting up the medicine in packages containing less than eight liquid ounces, are selling the same for less than one-half of $7.20, and therefore the medicines of Fowle & Son are sought for by dealers selling medicine in defendants' territory, who buy and resell the same to defendants' injury. They pray for answers, an oath not being waived, and that complainants may be enjoined from putting up for sale said medicine in packages of less size than those in use on the 1st day of March, 1845, the date of the contract between Butts and Fowle, and from selling packages of said medicine of whatever quantity at a less price than $7.20 per dozen, and for damages.

Complainants filed a replication to defendants' answer, and an answer under oath to their cross-bill, denying the assertion of the defendants that they had the exclusive right to manufacture and sell in all the territory of the United States lying west of that included in the sale and transfer from Williams to Butts, and averring that defendants had no right to manufacture or sell in any of the territory west of the ridge of the Rocky mountains. They say that no size of package was stipulated for in the contract between Fowle and Butts, and that the object of the stipulation was that the medicine should not be sold at a lower proportional rate than $7.20 for ten ounces, and that they have never sold at any less rate; that they have used a smaller size of bottle, holding only four liquid ounces, but the lowest net price they ever charged for them has been at the rate of nine dollars per dozen bottles of ten ounces; and that no sales thereof have ever been made by them within the territory embraced in the contract bwtween Williams and Sanford and Park, and such sales as have been made were made with full notice to defendants, with description and sample of bottle, and without objection; and they deny all injury to defendants. To this answer replication was duly filed.

The cause having been brought on for hearing, the agreement between Lewis Williams and Benjamin F. Sanford and John D. Park, dated May 1, 1844; the agreement between Williams and Butts, dated May 20, 1844; the agreement between Butts and Fowle, dated March 1, 1845; the agreement between Fowle and Park, dated December 16, 1863; the agreement between John D. Park and Seth A. Fowle and Lucy Ann S. Fowle, dated November 17, 1869; the release of Lucy Ann S. Fowle to Seth A. Fowle, January 1, 1873; as well as various letters of Fowle & Son in 1877 and 1878, to Park & Sons, and a letter from Park & Sons to Fowle & Son, in 1877; sundry invoices, bills, etc.,-were put in evidence, together with the testimony of several witnesses bearing upon the question of sales by or with the knowledge of Park & Sons in the territory claimed by Fowle & Son. The court found 'that the complainants are not entitled to the relief prayed in their said bill of complaint,' and thereupon dismissed complainants' bill at their costs, and the cross-bill of respondents at their costs, from which decree complainants prosecuted this appeal.

A. H. McGuffey and H. A. Morrill, for appellants.

Mr. Chief justice FULLER, after stating the facts as above, delivered the opinion of the court.