William R. Warner v. Eli Lilly US 1924; 69 (F: P, which has long sold chocolate drink called Coco-Quinine, sought to enjoin Warner’s Quin-Coco drink)
H: (1) P
was unfairly passing off, even though it was the druggists who were
engaging in the deception b/c it contributed or induced the deception (2
chocolate drinks are indistinguishable and D took advantage of
similarity by urging druggists to buy its cheaper drink and “pass it
off” as other’s 2) Party can mimic the function of the product (mere use of chocolate not unfair – chocolate isn’t merely decorative but is functional b/c makes drink more palatable 3) use of a purely descriptive name is okay
(name Quin-Coco isn’t unfair since name merely describes ingredients
and it would be too damaging to prohibit naming products using titles
that refer to ingredients).
Cf. Am. Washboard (early
case = up to deceived consumers – not competitors -- to bring suit
against D falsely advertised its product and P’s remedy was limited to
passing off) (distinguishable from ‘passing off’ b/c consumers could
always buy product from someone else other than P, and so we are less
certain that the P is losing a sale).