The story takes place in the late 19th and early 20th centuries. During that time, R.T. Davis purchased a struggling milling company that produced a ready-made pancake mix with the image of a black woman in an apron and handkerchief on the box.
To market his newly acquired pancake mix, Davis hired Nancy Green, a former slave, to dress and play the part of Aunt Jemima at the 1893 World’s Fair in Chicago. Wearing the now iconic apron and handkerchief, Aunt Jemima served those famous pancakes from her booth at the Colombian Exposition.
Read More for the whole story.
To market his newly acquired pancake mix, Davis hired Nancy Green, a former slave, to dress and play the part of Aunt Jemima at the 1893 World’s Fair in Chicago. Wearing the now iconic apron and handkerchief, Aunt Jemima served those famous pancakes from her booth at the Colombian Exposition.
Read More for the whole story.
Over the following years, the Jemima brand grew quickly in popularity and recognizability. So much so, in fact, that Davis changed the name of his company to the Aunt Jemima Mills Company and other businesses began using the name and image to promote their own products. Now, here is where trade-mark law comes into play.
You see, one of these businesses was Rigney and Company, which was making not a pancake mix, but a syrup. The District Court for the Eastern District of New York, dismissing Aunt Jemima Mills’ case, explained that trade-mark law provided protection when the trade-mark was being used to market a competing product, but not a complimentary product as was the case here with the syrup.
The Court also held that where the Petitioner could not show damages, the fact that consumers were deceived by defendant’s unfair trade practices was not grounds for relief. The Court also held that, even though Rigney and Co. might sell an inferior product which would harm the good reputation of the Aunt Jemima Mills Company, that too was not grounds for relief. The Court was also not concerned that Rigney and Co. was unfairly benefiting from Aunt Jemima’s extensive (and expensive) advertising campaign.
And then came the appeal. And “The Aunt Jemima Doctrine” was born.
The 2nd Circuit Court of Appeals, Judge Learned Hand dissenting, reversed the lower court. The Court held, “To use precisely the same mark, as the defendants have done, is, in our opinion, evidence of intention to make something out of it- either to get the benefit of the complainant’s reputation or of its advertisement or to forestall the extension of its trade. There is no other conceivable reason why they should have appropriated this precise mark. The taking being wrongful, we think the defendants have no equity to protect them against an injunction, … .” Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407, 409 (2nd Cir. 1917). The Court goes on to say, “Obviously the public, or a large part of it, seeing this trade-mark on a syrup, would conclude that it was made by the complainant. … In this way the complainant’s reputation is put in the hands of the defendants. It will enable them to get the benefit of the complainant’s reputation and advertisement. These we think are property rights which should be protected in equity.” Id. at 410.
In other words, Rigney had wrongly appropriated Aunt Jemima’s trade-mark, unjustly benefiting from the time, effort, and expense that Aunt Jemima Mills used to build the brand and reputation, and potentially harming Aunt Jemima Mills by damaging that reputation (good-will) or preventing Aunt Jemima from extending into the syrup market which it might foreseeably want to do. That was enough to justify an injunction preventing Rigney from using the Aunt Jemima trade-mark.
I don’t see, in a quick review of the opinion, anything suggesting that public confusion alone would be grounds for an injunction. It appears that the emphasis here is on protecting the business rather than the consumer.
Via: Mental Floss
Caselaw: In District Court, 234 F. 804 | And on Appeal, 247 F. 407
You see, one of these businesses was Rigney and Company, which was making not a pancake mix, but a syrup. The District Court for the Eastern District of New York, dismissing Aunt Jemima Mills’ case, explained that trade-mark law provided protection when the trade-mark was being used to market a competing product, but not a complimentary product as was the case here with the syrup.
The Court also held that where the Petitioner could not show damages, the fact that consumers were deceived by defendant’s unfair trade practices was not grounds for relief. The Court also held that, even though Rigney and Co. might sell an inferior product which would harm the good reputation of the Aunt Jemima Mills Company, that too was not grounds for relief. The Court was also not concerned that Rigney and Co. was unfairly benefiting from Aunt Jemima’s extensive (and expensive) advertising campaign.
And then came the appeal. And “The Aunt Jemima Doctrine” was born.
The 2nd Circuit Court of Appeals, Judge Learned Hand dissenting, reversed the lower court. The Court held, “To use precisely the same mark, as the defendants have done, is, in our opinion, evidence of intention to make something out of it- either to get the benefit of the complainant’s reputation or of its advertisement or to forestall the extension of its trade. There is no other conceivable reason why they should have appropriated this precise mark. The taking being wrongful, we think the defendants have no equity to protect them against an injunction, … .” Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407, 409 (2nd Cir. 1917). The Court goes on to say, “Obviously the public, or a large part of it, seeing this trade-mark on a syrup, would conclude that it was made by the complainant. … In this way the complainant’s reputation is put in the hands of the defendants. It will enable them to get the benefit of the complainant’s reputation and advertisement. These we think are property rights which should be protected in equity.” Id. at 410.
In other words, Rigney had wrongly appropriated Aunt Jemima’s trade-mark, unjustly benefiting from the time, effort, and expense that Aunt Jemima Mills used to build the brand and reputation, and potentially harming Aunt Jemima Mills by damaging that reputation (good-will) or preventing Aunt Jemima from extending into the syrup market which it might foreseeably want to do. That was enough to justify an injunction preventing Rigney from using the Aunt Jemima trade-mark.
I don’t see, in a quick review of the opinion, anything suggesting that public confusion alone would be grounds for an injunction. It appears that the emphasis here is on protecting the business rather than the consumer.
Via: Mental Floss
Caselaw: In District Court, 234 F. 804 | And on Appeal, 247 F. 407
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