Sears, Roebuck & Company v. Stiffel Company

PETITIONER: Sears, Roebuck & Company
RESPONDENT: Stiffel Company
LOCATION: United States District Court for the Eastern District of Louisiana

DOCKET NO.: 108
DECIDED BY: Warren Court (1962-1965)
LOWER COURT: United States Court of Appeals for the Seventh Circuit

CITATION: 376 US 225 (1964)
ARGUED: Jan 16, 1964
DECIDED: Mar 09, 1964

Facts of the case

Question

Media for Sears, Roebuck & Company v. Stiffel Company

Audio Transcription for Oral Argument - January 16, 1964 (Part 1) in Sears, Roebuck & Company v. Stiffel Company

Audio Transcription for Oral Argument - January 16, 1964 (Part 2) in Sears, Roebuck & Company v. Stiffel Company

Will Freeman:

-- the Court.

Just before recess, I said to this Court that both of the patents below or the patents were held invalid is being within the public domain and yet the Court following the Illinois law or what -- how it interpreted the Illinois law, found that Sears was guilty of unfair competition.

In the sale of pole lamps which were a copy of that which was in the public domain.

There was some evidence of two buyers.

One, a buyer from Marshall Field, one of the large department stores in Chicago and the other is Smithe Company, furniture dealers, likewise a very high grade store, that someone had seen a cut of a similar lamp in the Sears catalog, listed at some $19 plus, whereas they had bought lamps from Sears at some $40 or $39.95.

The same was true with respect to the Smithe situation, except in that case, the complaining customer of Smithe's had seen one of the lamps in a Sears store.

That was the sum and substance of the evidence with respect to similarity and confusion by any customer.

It was ranked hearsay because the buyers were saying what had happened.

One of the buyers from Sear -- from Marshall Field wanted to know how to explain to the customer that there was this difference between a $19 plus product and a $39 plus product.

And we find in the record at page 91 a complete explanation by the vice president of the respondent, a Mr. Philips and I'm just going to read with the Court's permission, the third paragraph of the letter of explanation.

"As you know, it is common practice for many manufacturers to copy expensive designs and sell to retailers at reduced cost by reducing the quality through poorer materials and inferior labor."

Now, the granting of the perpetual monopoly to Mr. Stiffel gives him the opportunity of continuing to maintain his $40 plus price and precludes anybody that wants to buy a product at less money that will -- will serve the same purpose, it may not be finished quite as well.

But on the other hand, I think the public should be given the privilege of determining for themselves whether they want to buy a $20 item or buy a $40 item.

(Inaudible)

Will Freeman:

No.

I'm coming to that, Your Honor.

The injunction states and I'm reading now from page 68 of the record, which is item 3 in the final judgment.

"Defendant and its agents, representatives and employees are hereby enjoined from unfairly competing with plaintiff by selling or attempting to sell pole lamps identical to or confusingly similar to plaintiff's Exhibits 3 and 10."

Now to me, that means that Sears is precluded from selling a copy.

Just in so many words, that's the only thing that can be unfair, if it is legally unfair, and our position is that it is not.

Now --

(Inaudible)

Will Freeman:

It -- yes, it does.

Any pole lamp that's a copy --

(Inaudible)

Will Freeman:

That's a copy, yes.

Now, it's my position that even if Sears put a large tag on it or a neon light sign saying, "This is manufactured by, sold as a product of Sears", so far as the wording of this injunction is concerned, the commandment of this judgment is that we cannot sell a copy.

And anytime under state law that you are precluded from selling a copy, you are then stepping in to the federal patent system because you are giving to the Stiffel Company more than what they could have gotten had their design patent been valid.

(Inaudible)

Byron R. White:

(Inaudible)