DR. PETER H. FAHRNEY & SONS CO. v. RUMINER et al., 153 F. 735

GROSSCUP, Circuit Judge, after stating the facts, delivered the opinion: We are of the opinion that the Master was not in error when he found that the use of the words St. Bernard’s Alpenkrauter was unfair competition; and we concur with him, that unless relief on account of unclean hands or laches is denied, the injunctive relief prayed for ought to have been granted. This reduces this case to the questions, Did appellant come into court with unclean hands ? -And, was he free from laches ? The second of these questions is easily disposed of.

The appellee, Otto Kunath, was appointed April 3rd, 1890, one of the agents for the sale of appellant’s medicines, and continued 'as such until 1895, whereupon, in association with the other appellees, he began the manufacture and sale of the St. Bernard Alpenkrauter; and thereupon, on the 26th of December, 1896, a letter was written to him by appellant, asking a discontinuance of the use of that name, and suggesting that court proceedings would follow unless the request was observed; to which appellees replied January 19th, 1897, that they declined to drop their present form of advertising.

Thereafter nothing was done until March 7th, 1901, when the bill in this case was filed. And this is the laches complained of. McLean v. Fleming, 96 U. S. 245, 24 L. Ed. 828, was a case to restrain the infringement of a trade-mark upon a certain medicine in which it was held that acquiescence of long standing, and inexcusable laches in seeking redress, was no defense against that part of the prayer of the bill that sought to restrain an infringement in the future. And this ruling was expressly reaffirmed in Menendez v. Holt, 128 U. S. 514, 9 Sup. Ct. 143, 32 L. Ed. 526.

Whether the delay shown ' here is a defense against the recovery of any damages for the past is a question that we are not now called upon to decide; for the decree appealed from dismissed the whole bill for want of equity, including the prayer for injunctive relief. Upon the subject of unclean hands, it is our opinion that the conclusion of the Master is not supported by his finding of facts. It is true that the remedy was advertised by appellant as a cure for more diseases, perhaps, than any remedy could possibly cure. But this, in itself, is not unclean hands.

Proprietary medicines, generally, promise more than they do; and for that matter licensed physicians often do the same. And with proprietary medicines, as with physicians, the object often is to give mere temporary help, under the belief of the patient that he is obtaining a cure.

But whether this be an improper use of the public’s confidence, or constitutes a practice against public policy, is a question to be decided by the state, through its legislature, and not by the courts under the equitable doctrine of unclean hands; for so far as this case discloses, proprietary medicines are lawful commerce, and are to be given the freedom of mere trade boasting that ordinary commerce is allowed to enjoy. It is also true that the name Alpenkrauter connects the herb out of which it is made, in the imagination of the purchaser, with the Swiss Alps.

But this is not holding out to the public that the particular root that went into the medicine was grown on the Alps. Indeed the representation in the advertising was that only a part of the herbs were imported, and a part were grown by Quakers in this country. There is therefore, in this particular, no such deception as constitutes unclean hands.

It is true also, that when appellee on cross-examination, seeking probably to find out whether any of the herbs were imported, asked of one of the appellants what were the ingredients of the medicine, that the witness was instructed not to answer; and that when the further questions were put of what particular herb houses or firms the herbs were purchased, the witness was again instructed not to answer ; from which the Master draws the inference that the herbs were not, in fact, imported; otherwise the questions would have been answered.

But all the facts of this case borne in mind, the inference drawn by the Master is not-tenable. True, the witness may have been instructed not to answer, because a truthful answer would have divulged that no part of the herbs were in fact imported, or would have given a clue to the names of witnesses from whom that testimony might have been obtained.

But it is equally obvious that the motive of the refusal to answer might have been an apprehension that if the ingredients were disclosed, or there was disclosed the names of the people from whom the ingredients wqre purchased, the whole value of the medicine as a secret preparation would be destroyed — a danger that the appellant was not willing to incur unless ordered by the court. And though a motion to compel an answer was filed, the hearing of that motion was continued to the final hearing, at which time it was not pressed.

Now it is the right of a witness, apprehensive that some wrong will be done to his personal or property rights, to refuse to answer'to a Master, any-question propounded, and to- stand upon that refusal üntil the question raised has been determined by the court; and when such refusal is followed by the failure of the other party to press the question in court, the legal inference is not that the facts are as the proponent claims them, but rather, the proponent failing to press the motion, that he acquiesces in the right of the witness to refuse to answer — the record thereafter standing as if no such question had been put.

It is true, too, that in their advertising, appellant advised the public not to inquire for the Alpenkrauter at drug stores. But this does not justify, it seems to us, the inference drawn by the Master that it was meant as counsel not to consult a physician, and to ignore the recommendations of a trained pharmacist — the plain motive for the suggestion being, that the Alpenkrauter was not on sale at drug stores, and that to inquire for it would result in no purchase of appellant’s medicine, but/might lead to the inquirer’s being induced to purchase something else.

Surely, so long as proprietary medicines are lawful commerce, precautions of this kind, obviously commercial, are not witliin the doctrine of unclean hands.

That the whole traffic in proprietary medicines may be injurious to the public; that remedies,,the ingredients and formula of which are secret, should be forbidden; that the sick and ailing should be protected against every offer of help except those coming from licensed physicians and pharmacists, are each questions that the public can take up and decide for itself, through the legislative branches of its governments; but that not having been done as yet, by the public will thus expressed, it does not seem to us that the facts in the record before us furnish a reason why the courts should formulate a public policy, or withhold the aid of the law to protect this commerce, as yet lawful, against the unlawful piracy of another.

The decree appealed from will be reversed, with instructions to grant the injunction as prayed for in the bill.