Posted On June 12, 2015 by Print This Post

Pathways to Dystopia: Trademarks, Lawsuits and Smith & Wesson by Adam Firestone

When weapons expert ADAM FIRESTONE joins us, you can count on finding useful information for writers as well as discovering lessons in chapters of history that may have slipped your notice. 

A dystopian future offers authors incredible opportunity for plot twists that give entirely new meaning to “star crossed lovers.”  Harry Harrison’s Make Room! Make Room! (upon which the movie Soylent Green was based) is no less meaningful now than Orwell’s 1984, Huxley’s Brave New World or Zamyatin’s We.  All of these novels start with a powerless populace.  The first step to subjugating the people is to disarm them.  Perhaps one of the most insidious gun bans – and one that provides a useful blueprint for a creative and thoughtful writer, was accomplished not by legislation but by through a trademark infringement suit.  As they say, the road to hell is paved with good intentions.  Curious?  Read on. . .

Bans of the importation of foreign made firearms are nothing new, and many are familiar with the bans enacted in 1968, 1986, and 1994.  More recently, firearm parts sets have been banned by executive order.  What most do not realize is that one of the earliest bans was put into effect at the request of one of the stalwarts of the American firearms industry, Smith & Wesson.  Having lost significant revenues to less expensive copies of their products made in Spain, Smith & Wesson engaged in a successful lawsuit to stem the importation and distribution of the Spanish copies.  The case was decided by no less a luminary of American jurisprudence than the Honorable Learned Hand.  How did this come to be?  Well, let’s turn back the clock a bit and take a look. . .

The manufacture of arms and weapons in Spain dates to prehistoric times.  Long before Julius Caesar led his Roman legions onto the Iberian peninsula, the Celto-Iberian blacksmiths were forging the long, wickedly sharp iron blades that the Gauls used to great effect on their enemies.  Later, the Spanish bladesmiths combined their skills with techniques learned from the Moors, and the famed Toledo blade was born.  The Toledo blades were prized martial weapons until relegated to ceremonial roles by the ascendancy of firearms.

The Spanish smiths turned their attention to projectile arms soon after they were invented, producing calivers and dags for both Iberian and Continental armies.  By the seventeenth century the Spanish were turning out the long, slender flintlocks popular with the Scots, and later represented by the Pennsylvania rifles of the next century.  Spanish trade arms were a staple of early colonial trade in North America, but their importation virtually ceased after the Revolutionary War.  Over the years the fact that the manufacture of firearms was one of Spain’s principal industries gradually became lost to the American popular consciousness.

It’s not surprising then, that Americans visiting Latin America in the early years of the twentieth century often returned with tales of automatic pistols and revolvers that were almost identical copies of American firearms.  The guns were of Spanish origin and were indeed exact copies of the American guns.  More importantly, they were perfectly legal copies.  Patent laws in Spain were markedly different from those of other countries.  A foreign inventor or owner of a patent could obtain recognition of the patent under Spanish law by payment of a moderate fee.  However, if a factory was not established to produce the patented articles in Spain within three years of filing, the patent became common property and anyone was free to manufacture under the patents.

Smith & Wesson comparison

Smith & Wesson comparison

With the return of American forces from the First World War, the popularity of owning firearms increased dramatically, and people who had hitherto never owned firearms began to want pistols and revolvers.  As is always the case with a free market, demand created a supply.  Entirely new product lines of revolvers began to appear in American shops.  To the casual observer, they appeared to be the familiar Smith & Wesson and Colt products, and as the price was low, these guns were very popular.  It was not until the guns were examined closely that it became apparent that the names “Smith & Wesson” and “Colt” referred to the cartridges for which the guns were chambered, and not the manufacturers.  The guns carried the markings “Made in Spain” and the names of manufacturers such as Guisasola and Hermanos Orbea.  While the guns were not as nicely finished as the American products, and in some cases were made with sordidly inferior grades of metal, for the most part they were serviceable, if not stellar, performers.

Smith & Wesson failed to immediately realize the degree to which the Spanish copies were cutting into its business.  When this was realized, a legal strategy for coping with the threat had to be devised.  Going after the manufacturers of the guns was out of the question; the Spanish manufacturers were operating in accordance with Spanish law.  It was decided to pursue an action for unfair competition in trade against the importers and distributors.  Three firms were found to be responsible for the majority of the import trade:  Aaron Newmark, doing business as the Paramount Trading Company, E.E. Glick, operating under the name Import Trading Company, and an individual named J.L. Galef.

The legal strategy involved seeking a preliminary injunction that would restrain the defendants from performing the acts complained of, pending determination by the court about the issuance of a permanent injunction.  To this end, a federal suit was brought in the United States District Court for the Southern District of New York.  The case was assigned to Judge Learned Hand, who would later become one of the most famous justices to ever serve on the Federal bench.

On March 27, 1922, the Court’s decision on the matter of the preliminary injunction was handed down.  A reading of the pertinent part of the brief provides useful insight into the court’s methodology.  But the chilling part is the legal relief that was ordered:

“There appears to me not the slightest question that all the infringing revolvers were deliberately made for the purpose of imitating a model of the plaintiff’s.  In the case of Galef and Newmark they correspond in dimension even by gauge, a coincidence wholly impossible in the absence of conscious imitation. In the case of Gluck, the visual similarity is as complete.  Such things do not happen because manufacturers are merely following old patents.

Smith & Wesson Suit Orbea Trademark

Smith & Wesson Suit Orbea Trademark

Little identical features in the two lay the matter beyond doubt, if doubt could remain.  For example, in all the revolvers the manufacturers have added a circle to indicate a center bushing for the firing pin, which does not exist, a conclusive evidence of intention, at least, to cheat  the buyer.  Again, the squaring of the barrel at the frame end is totally unnecessary or useless, despite the defendants’ insistence to the contrary.  The barrel, if continued cylindrical as in the Colt, would not interfere with the ejector pin; and, if it did, there was no need to do more than grind off a segment.  To give it the shape which it actually has was certainly not necessary.  In section it is not circular at all, not even circular with a segment missing.  The stop on the left to hold the chamber when it is swung out of position has been copied in shape literally, and no explanation is suggested for it, as none can be.  The lettering along the top of the barrel, except in the case of Exhibit No. 1 in Newmark’s Case, is either a plain fraud — e.g., in Galef’s revolvers — or merely fatuous nonsense.  That upon the side of the barrel is but little better, and serves no real purpose.  To copy the profile of the front end of the frame was equally unnecessary.  Why combine the Smith & Wesson ejector pin with this profile? Why not combine the Colt profile with the Smith & Wesson pin? Any saving in metal is trifling. . . .

. . . The combination of all these features being, as I have said, an inescapable evidence of purpose to imitate, the only conclusion I can come to is that that purpose was in turn actuated by a desire to sell the Spanish revolver as a Smith & Wesson.  What precautions did the makers take to avoid this result?  They added their names, their trade-marks, their monograms on the escutcheon, and, as the law required, the place of manufacture, Spain.  On these, as is customary, they rely to escape the inference to be drawn from their imitation. All these are either placed in so inconspicuous positions as not to attract the eye, or, as in the case of the escutcheon and the trade-mark, are so little distinguishable from the plaintiffs’ similar marks as to be of very little service, if any whatever.  They will distinguish, when once attention is called to them; but they will not draw attention by themselves.  Indeed, they are so placed as not to draw attention.  The escutcheon may not of itself be an added imitation; that would be hard to say, in view of a similar element in the Colt; but it surely is a delusive guide for distinguishing the counterfeit.  Even in Exhibit No. 1 in Newmark’s Case, while the name is printed legibly enough along the top of the barrel, the legend might not catch the eye.  It is the honest effort of all to mark the goods truly, but it does not seem to me to outweigh the deceptive combination.

The defendants argue that revolvers are expensive articles, and that men buy them only after examination.  That is undoubtedly true in many instances, and it is never the hope of simulators to do more than catch the unwary.  Since I am satisfied that the makers of these revolvers tried to do so, I do not see that I need weigh too nicely the probabilities of their success.  We are accustomed to speak of a deliberate imitation of this sort as a fraud, and indeed the earlier cases thought fraud an essential of the case.  Whatever other legal result fraud may have, at least it relieves the injured party from the need of showing that the imitator was successful.  He may take him at his own belief, and assume that, if he thought some buyers would be careless enough not to notice the distinguishing marks, he was right.

In Gluck’s and Newmark’s Cases the conclusion of a deliberate purpose to pass off is corroborated by actual instances.  True, there is a dispute of fact whether the explanatory letter was in fact sent.  If the injunction depended upon that issue alone, perhaps the plaintiffs could not win; but it is surely not without weight that that very thing should apparently have happened which the simulation of the manufacturers clearly intended to happen.  In Galef’s Case there was no opportunity for such proof; he deals with retailers, and, of course, they know what they are buying.  But the Gorman transaction shows that it is not difficult for others to receive what they do not intend to get, and that Galef may be the first link in a chain of substitution which will prove injurious to the plaintiffs. . . . .

The plaintiffs may take a preliminary injunction against any sale of the revolvers annexed to the moving papers.”

CONCLUSION

Judge Hand’s decision ended the case.  No appeal was taken from it, and a permanent injunction was issued later which restrained the defendants from selling or advertising the imitation Smith & Wesson revolvers.  Based on Judge Hand’s decision the Federal Trade Commission granted a hearing which resulted in the exclusion of twenty-two brands of Spanish revolvers from importation into the United States.  To prevent mistakes, the government prepared and sent to all customs houses large illustrated posters showing the types of revolvers involved.  While the importation of Spanish revolvers into the United States thereafter ceased, the Spanish products enjoyed great popularity in Central and South America where many served as police and military pistols for many years after the decision was rendered.

However, the final result of the case was not the ban on the sale of Spanish handguns, but the removal of an affordable series of firearms from the American market.  The working class was disarmed.  Or, to twist an Orwellian concept, the hope that laid in the proles was crushed.

Authors!  Go forth and create your dystopias!

***

Writers, does Adam’s retelling of this moment in history raise any questions for you?

On Monday, June 15, James Rose will discuss self-publishing.

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Bio: Adam Firestone brings more than 25 years of experience with weapon systems including small arms, artillery, armor, area denial systems and precision guided munitions to Romance University. Additionally, Adam is an accomplished small arms instructor, editor, literary consultant and co-author of a recently published work on the production of rifles in the United States for Allied forces during the First World War.

Adam has been providing general and technical editing services to authors and publishing houses specializing in firearms books since the early 2000s. Additionally, Adam provides literary consulting services to fiction authors including action scene choreography, technical vetting and technical editing. In this line of experience, Adam has had the fortune to work with well known authors including Shannon McKenna and Elizabeth Jennings.

Check out Adam’s blog here: http://adamfirestoneconsultant.blogspot.com/

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Discussion

5 Responses to “Pathways to Dystopia: Trademarks, Lawsuits and Smith & Wesson by Adam Firestone”

  1. Adam – You mentioned that “the Federal Trade Commission granted a hearing which resulted in the exclusion of twenty-two brands of Spanish revolvers from importation into the United States.”

    Was that ban open-ended? That is, is that ban still in effect?

    (Just curious.)

    Posted by Becke Martin Davis | June 12, 2015, 8:52 am
  2. Hi Becke,

    Most, if not all of those brands have long since ceased to be, thus rendering the injunction moot!

    Thanks,

    ACF

    Posted by Adam Firestone | June 12, 2015, 9:02 am
  3. Thanks for another fascinating post, Adam! Enjoy your weekend!

    Posted by Becke Martin Davis | June 12, 2015, 10:46 pm

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