\W UNIVERty* "frjUJNV-SQl^ %13Alf»V ^OFCAI ^OKALIFOflfc y owiw\ y 0Aavaan# .^E-UNIVER% o -otf-LIBRARYQr ■^•LIBRARY*?/ %0JHV3JO^ 3 ^OdlTCHO^ <«IHIN1VP ^lOSANCFlty* %HAIM3\\V ^IIIBRARYO^ ^SfOJITVD-JO^ ^OFCAIIFO/^ ^ \/l 1 ^ ^ofcaiifo% y 0AHvaan^ awe-unive ^10SANCEI^> "^TOSO.^ ^WBAWn-ltf^ ^OFCAIIFO^ 5. ^— '» t J>! ^AavyaiH^ .^E-UMIVERJ/a ^OFCALIFOfc^ ^Aaviai. ^AHwaiH^ v 5tfEUNIVFR%. ^toro-soi^ ^UIBRARYQ^ «$HIBRARY& ^KMIIYMO^ %)JITV>:I0^ *MMJNI ^lOSANGElft* ^HIBRARYfl/ "%bainii-3# %ojnvDJo^ ^OFCALIFOfyj, ^OFCAllF0% ^AHVHan-1^ y 0AHVH8rH^ >■ .^E-UMIVE - ^DNVSOl^ ^UIBRARYQr & 1 \C "£■ ^HIBRARY0/ ^wmitcmo^ ^OJIIVJJO^ ^OF-CALIFOJ!^ ^OFCAIIFO/?^ ^EUNfVEW/A - o # ^tony-soi^ "%]ajnm$ £ 1 tr-* i£ %JITV3J0^ ^lOSAHGElfr^ ^KAUFOifcfc y J0^ ^M-UBRARYO?. ft IN ^ l % *i l < ^ % /Oj I *fll THE LAW OF Unfair Business Competition INCLUDING CHAPTERS ON Trade Secrets and Confidential Business Relations; Unfair Interference with Contracts; Libel and Slander of Articles of Merchan- dise, Trade Names, and Business Credit and Reputation BY HARRY D. NIMS Of New York Bar NEW YORK BAKER, VOORHIS & CO. 1909 Copyright 1909 by Harry D. Nims T * r INTRODUCTION. There is a maxim as old as law, that there can be no right without a remedy, but it is equally true that men are constantly acquiring new rights and new kinds of property almost un- known to the law, and in lawful ways are putting themselves into new positions, in which they soon suffer wrongs which the courts seem powerless to prevent, or to end. It seems, sometimes, as if the progress of the unscrupulous merchant and manufacturer in inventing new schemes for filching away the trade of others unfairly, has been far more rapid than that of the courts in finding ways of protecting the honest business man against such schemes. But whatever has been the activity of these unscrupulous members of the business community in the last decade, during this time very marked progress has been made by the law in developing rules and remedies relating to dishonest and unfair commercial practices. It is but a few years since cases involving applications for relief against unfair dealing were indifferently classed as trade mark cases or injunction cases, or hidden away in di- gests under headings most surprisingly disassociated from ideas conveyed by the term Unfair Competition. Now we find that the phrases " Passing Off," in England, " Concur- rence DeLoyale " in France and " Unfair Competition " in America are recognized legal terms, embracing rules of law applicable to cases of this character. One reason for the growth of the law of unfair competition is probably to be found in the effects of the delay incident to suits at law for damages. Business lost and credit injured by misrepresentation or threats made by malicious or un- scrupulous competitors, injury to brands of goods by the sale of inferior imitations, injury to reputation by fraudulent use of the name of a business house,— such losses cannot be com- pensated for Try damages recovered at the end of a tedious [iii] 7355v '<> iv Introduction. suit at law, occupying perhaps two or three years. Any ade- quate remedy must stop the injurious acts instanter, and this can be afforded only by use of the writ of injunction. The law of unfair competition has developed in part also in response to a general feeling that the honest and fair-deal- ing merchant is entitled to the fruits of his skill and industry, and must be protected against loss caused by fraudulent and unfair methods used by business rivals. It is a recognition by the courts of the duty to be honest and fair in all relations of business life. This is one of the most healthful signs of the times. The gradual judicial development of this doctrine is an embodiment of the principles of sound common sense, business morality, although it involves nice discriminations between what may and what may not be done in honorable business rivalry. Just what acts are to be included in the term competition it is hard to state. Formerly,, business houses made the favor of the customer the principal object of their efforts. Now very often the customer figures little — the struggle being to obtain special privilege, monopoly or special rates, or to injure a competitor by ousting him from some vantage ground he has gained, or by inducing a breach of his contracts. All these acts are a part of the struggle for commercial success. They are acts done in business competition, and some of them are fair and honest methods of business rivalry and some are not. No attempt is here made to deal with all of them. But the fundamental rule that in business rivalry, no unfair or dishonest methods shall be tolerated, applies, on principle, to all of them. Closely akin to the doctrines involved in the cases which are now definitely classed as unfair competition cases, are many undecided questions of large moment, just now. The right of persons, and especially corporations and associations, to compete by trying to eliminate and efface rivals from the race; the right of the multitude, acting in concert to do acts which are unquestionably the right of an individual acting alone to do; the legality of acts (otherwise legal) which are done with the definite intent to unfairly injure another but Introduction. v done merely as a part of the business struggle to succeed and make money; these and many similar problems are yet to be solved in the light of present-day conditions. Courts and legislatures cannot create fairness and honesty. Men must be free to manage their business enterprises in their own way. There must be competition. It is said that the doctrine long upheld by common law, that competition must be free and unrestricted has brought about the very evil of monopoly which the doctrine was aimed to prevent. Never- theless, competition cannot be abolished; and it will be a long time before it ceases to play a very important and bene- ficial part in our civilization if its rules are founded in fairness and honesty. Modern science has transformed into wealth much that in former days was waste. Similarly, modern conditions have given very great importance and value to parts of a business which formerly were considered worthless. And now the question is raised as to whether these new values are prop- erty,— the sort of property which equity protects? If they are, then the jurisdiction of our equity courts seems broader, in this respect, than is usually recognized. President Taft in his inaugural address in 1909, says : " The proposition that business is not a property or pecuniary right which can be protected by equitable injunction is utterly with- out foundation in precedent or reason. The proposition is usually linked with one to make the secondary boycott lawful. Such a proposition is at variance with the American instinct, and will find no support in my judgment when submitted to the American people. The secondary boycott is an instru- ment of tyranny, and ought not to be made legitimate." In the following pages will be found references to the dis- cussion as to the power of equity to protect, not only the tangible parts of a business, but also its intangible rights and properties. The right decision of these questions is of far- reaching importance to the manufacturer and trader today, for unless the writ of injunction is preserved in its present form, both labor, capital and the general business world will lose their most effective bulwark against unfair and dishonest business practices. vi [Introduction. In compiling, arranging and interpreting the authorities in- eluded, the writer has been very greatly aided by the able work of Frederick M e Herrick, Esq., of the New York Bar, and he wishes here to express his obligation to Mr. Herrick in that regard. This volume refers only to the American and English cases and statutes. There are French statutes dealing with various features of unfair competition and many decisions of French courts relating to it. It has been thought wise not to attempt to treat them here, but instead to refer the reader for infor- mation to such works as M. Pouillet's book, " Traite des Marques de Fabrique et de la Concurrence Deloyale," Paris, 1906. HARRY D. NIMS. 32 Nassau Street, New York. April, 1909. CONTENTS. CHAPTER I. What is Unfair Competition ? PAGE. Section 1. Unfair competition is not included in term trade-mark 1 2. Technical trade-marks 3 3. Common law, not trade-mark statutes, the basis of the law of unfair competition 5 4. Difference between law of unfair competition and that of tech- nical trade-marks 7 5. Technical trade-mark is geographic in character, the right to it is limited territorially; not so with rights upheld by law of unfair competition 11 6. Early uses of the term unfair competition 11 7. Growth of doctrine of unfair competition 13 8. Early cases involving unfair competition 14 9. Law of unfair competition does not curtail freedom of honor- able trading 19 10. Property rights in marks which are not technical trade-marks. . 20 11. Exclusive right to a name or mark not necessary to action 23 12. Property right which is acquired in a trade-mark is a limited right 23 13. No distinction between names and marks as regards rights ac- quired by user 24 14. Definitions of unfair competition 25 15. Selling another's goods as one's own 30 16. Grounds of action for unfair competition 30 17. Theory that the court aims to promote honest and fair dealing. . 30 18. Theory that the court aims to protect the purchasing public. ... 31 19. Theory that the court aims to protect not public rights, but rights of individuals 33 20. Attitude of equity courts toward personal wrongs 37 21. What- is infringement? 40 22. Acts contributory to unfair acts 41 CHAPTER II. Intent to Defraud — Must it Be Proved ? Section 23. Question of intent is a plea raised by defense 42 24. Division of cases as regards intent 44 25. Cases holding that intent is immaterial 45 26. Cases holding intent must be proved 51 27. Fraudulent intent may be presumed 54 [vii] viii Contents. PAGE. Section 28. No actual proof of intent necessary for presumption 54 29. Knowledge of plaintiff's rights on part of defendant is un- necessary 55 30. Denial of intent will not avail defendant 59 31. Proof of specific orders to his agents and servants to act fairly will not excuse defendant 61 32. Actual injury to plaintiff by defendant must be imminent 61 33. Unimportant facts not a basis of presumption of intent to de- fraud 62 34. Presumption may arise from similarity of name or get-up 62 35. Presumption of fraud arises from so selling goods that vendees may pass them off fraudulently 66 36. Presumption may be based on manner in which the truth is told. 63 CHAPTER III. What is Similarity ? Section 37. Test of similarity is general impression made, not detailed ex- amination 71 38. Similarity does not mean exact likeness 72 39. Care used by average buyer of the class of article in question must be considered 74 40. Character of the article and the habits and intelligence of the consumer 75 41. Comparison is not the test of similarity 77 42. Imitation of salient features 78 43. Necessary physical requirements of the article must be con- sidered 79 44. Distance between competitors a factor in deciding as to simi- larity 80 45. Deceit of ultimate purchaser, not of middleman, is the important consideration 81 46. Similarity of color, shape, size, etc 82 47. Similarity of names 83 CHAPTER IV. Good-Will. SECTION 48. Definitions of good-will 89 49. Good-will protected by law of Unfair Competition 92 CHAPTER V. Transfers of Trade Xames, Signs, Marks, Etc. SECTION 50. Names not transferable — artists, musicians, etc 95 51. Sale of entire property of a business — Rights of vendor 96 52. Presumption that no one intends to part with right to use his own name 97 Contents. ix PAGE. Section 53. Name may be so sold as to preclude the owners from again using it in the same business 97 54. Sale of business site, effect of on names 100 55. Good faith as to names and marks required of vendors thereof. . 105 56. Transfer of portraits 105 57. Transfers in bankruptcy and in assignments for creditors 107 58. Rights of retiring stockholders and others in corporate names.. 109 59. Soliciting old customers 110 60. Sale of name or business by originator of an article 114 61. Effect of locality on transfers of a business 115 62. Partner's rights in the partnership name on dissolution 116 63. Dissolution by death of a partner 119 64. Transfers by descent and rights of descendants 121 65. Transfer of secret formulae 123 CHAPTEK VI. Family Names 'ok Surnames, as Trade Names. Section 66. Nature of the right in one's own name 125 67. What constitutes passing off by use of surname 125 68. Rulings of equity courts directing use of explanatory words with defendant's name 130 69. Acquired generic or secondary meaning of names 138 70. Surnames which by usage become abstract names of objects. . . . 144 71. Priority in use not resulting in secondary meaning 146 72. Surnames used as abbreviations 148 73. Names made up of surnames with ether words or symbols 150 74. Surnames acquired otherwise than by descent 150 75. Voluntary change of personal nam" 152 76. Rights acquired by him who first uses a surname in business. . . 153 77. Family names as corporate names 155 78. Rights of descendants to the family name as used in business by an ancestor 155 79. Summary 161 CHAPTEK VII. Miscellaneous Business Xames. Section 80. Introductory 163 81. Business names as distinguished from marks, designs, devices, etc. 164 82. Difference between abstract names of objects and business names. 165 83. Secondary or acquired meaning 165 84. Secondary meaning of semi-geographic names such as " Empire State," " Hoosier," etc 170 85. Geographic limits in which secondary meaning becomes known. . 172 86. Existence of secondary meaning a question of fact 174 87. Names.of goods intended for export 175 88. Lord Kay's summary of the law of names 176 89. Names considered as transitory or personal, and as local or fixed. 177 x Contents. PAGE. Section 90. Phrases such as " Formerly with," and " Successor to," etc 181 91. Signs 183 92. Street addresses, etc 186 93. Use of suffix " & Co.," etc 188 94. Names of newspapers and magazines 188 95. Names of plays, books, text-books, etc 193 CIIAPTEE VIII. Corporate Names. Section 96. Effect of a state charter on names of corporations 198 97. Foreign and domestic corporations — rights of, as to name. . . . 200 98. Right to name on dissolution 201 99. Names of charitable corporations 202 100. Names of fraternal societies 204 101. Abbreviations of corporate names 204 102. Affirmative duty to differentiate in choosing corporate names.. 206 103. Priority in time of ine of a name is ground for injunction. . .. 215 104. Use of term " works.'" " company," etc., by a concern not in- corporated ." 216 105. Outgoing stockholders and employees 217 106. False or misleading use of corporate names 221 107. Names of unincorporated societies, clubs, etc 223 108. Similarity of corporate names, what is 224 CHAPTER IX. Geographic or Place Names. Section 109. Rule of priority 227 110. One of several who use a common geographic name may sue on behalf of all 228 111. Association of the name and the locality must be close 231 112. Secondary or acquired meaning 231 113. Universal knowledge of user not required 233 114. Extent of district to which a name applies 233 115. Length of user necessary to acquire secondary meaning 235 116. Place names may acquire abstract meaning 235 117. Secondary meaning acquired in one kind of business is not applicable to others 236 118. Degree of resemblance necessary 236 119. Geographic or place names which indicate origin and source falsely 236 120. Relative location of plants of rivals — Effect on names 239 121. Power of equity to limit use of the name of a locality to those doing business in that locality 241 122. Names of cities 241 123. Effect of moving a plant or business 244 124. Names of natural products 245 Contents. xl PACK. Section 125. Geographic names which indicate a process of manufacture. . . . 247 126. Geographic names may be arbitrarily adopted as trade names. . 252 127. Such use must be fair and truthful 254 128. Geographic names which indicate quality 256 CHAPTER X. Names of Articles of Merchandise. Section 129. Acquired or secondary meaning 261 130. Names descriptive of construction necessary to an article 261 131. Unfamiliar or scientific words used as names of goods 263 132. Artificial or made-up words 264 133. Use of identically the same name, by competitors 265 134. Misuse of made-up names will be enjoined whether registered or not 265 135. Names appearing to the eye as similar 267 136. Names idem sonans 269 137. Foreign words as names of goods 274 138. Abbreviation of names of goods — Nicknames 275 139. Names having double meaning 276 140. Numerals and letters as names of goods 278 141. Numerals and letters used to designate grade of goods 278 142. Numerals indicating source or origin 280 143. Initials as names of goods 281 144. Numerals used to designate series 282 CHAPTER XI. Simulation of Articles Themselves. SECTION 145. Copying of the features essential to construction 285 146. Copying distinguishing features as a whole 286 147. Copying whole article — making a facsimile 287 148. Copying a single feature or part 293 149. Making repair parts for articles manufactured by others 294 150. Copying articles on which patents have expired 298 151. Copying the color of goods 303 CHAPTER XII. Dress or Get-up of Goods, Including Labels. Wrappers, Bottles, Cartons, Etc. SECTION 152. Labels which are not strictly trade-marks are protected 306 153. Degree of similarity calculated to deceive 307 154. Mere "diversity of color not a controlling feature 308 155. Imitation of a single feature such as color, form, etc 309 156. A collocation of features which singly might be copied is unfair. 311 sli Contents. PAGE. Section 157. Resemblance in several features may be fair if these features are common to the trade 313 158. Remarks as to classification of the following cases of simula- tion in dress or general get-up 315 159. Designs, devices and figures 315 160. Signatures and initials 317 161. Reading matter on labels 318 162. Misleading use of a label proper in itself 319 163. Tobacco tags, cigar bands, etc 320 164. Wrappers, cartons, etc 321 165. Copying bottles used by competitor 322 166. Refilling containers that have been once used 323 167. Substitution and selling of inferior goods in dress of goods of a higher grade 327 168. Get-up of wagons, buildings, etc 328 169. Labels 330 170. Labels not registered or copyrighted are protected 331 171. Features of an action as to label 331 172. Kinds of labels 332 173. Classification of label cases 332. I. Simulation of labels in which a name is the principal feature. II. Cases involving labels in which the salient feature is a device or catch word, which is copied or simulated. III. Cases in which there is no salient feature but the whole get-up including the name is unfair. IV. Cases involving a general resemblance and also a likeness in the name used in which relief was denied. V. Cases involving no similarity in name but a resemblance in general appearance amounting to unfair competition. VI. Cases not involving names, in which the general likeness in get-up is not close enough to be unfair. CHAPTER XIII. Inteefekence With a Competitor's Contracts and Business Generally. Section 174. Action at common law based only on injury to one's trade or business 349 175. Malice 354 176. Interference with business generally 358 177. Interference with contracts by third person, enjoined 360 178. Interference with contracts with servants 363 179. Lumley v. Gye and later cases 364 180. Causing breach of contracts for furnishing information 366 181. Causing breach of passengers' contract with transportation companies 367 182. Summary 368 183. What constitutes interference with contract 369 Contents. xiii PAGE. Section 184. Ignorance of the existence of the contract is no defense against an injunction 373 185. Procuring breach of contract not to re-enter business 374 186. Position of the New York courts on this rule 375 187. Conditional contracts — Inducing breach of manufacturer's contracts with retailers 377 188. Inducing breach of contracts for sale of goods made by secret process 379 189. What interference with contractual relations in general is legitimate 384 190. Interference with a competitor's business generally 385 191. Interference with salesman of a competitor 385 192. Interference by false representations to customers 386 193. Interference by bringing a multiplicity of suits 386 CHAPTER XIV. Libel and Slander of Business Names and Reputation, and of Goods ; False Representation, Threat of Prosecution, Etc. Section 194. English procedure statutes as related to injunction 389 195. Did equity have jurisdiction to enjoin libels prior to the Act of 1873? 391 196. Summary 303 197. Importance of this question in the United States 395 198. Difference between trade libel and personal libel 395 199. American cases 398 200. Case of Kidd v. Horry 401 201. Right to restrain issuing of circulars to customers — Case of Emack v. Kane 403 202. Theory that threats of prosecution must be shown to warrant issuance of injunction '. 406 203. Intent to intimidate customers, not to fairly warn them, is a necessary element of this kind of a proceeding to enjoin 408 204. Circulars giving notice of pendency of suit for unfair compe- tion are legal 411 205. Trade libels not libelous per se 411 206. Preliminary injunction should issue, when the plaintiff's right is so clear as to be practically, or is actually (as by de- murrer) conceded 414 207. Statutes as to libels do not oust equity of jurisdiction 416 CHAPTER XV. Trade Secrets and Confidential Relations. Section 208. Effect of publication of a secret 420 209. Conditional sale of goods made by secret formula? 421 210. Injunctions against breach of contract by disclosure of secrets. 422 xiv Contents. PAGE. Section 211. Is a secret a monopoly? 424 212. Disclosure of a secret in court 424 213. Discovery <>f a secret by lawful means 42.1 214. Violation of contract of employment by betrayal of secrets. . . . 427 215. Employees are bound l>y implied contract not to disclose secrets 430 210. Title to secrets discovered by employee as a part of his work. 432 217. Unlawful secrets 43.3 218. Danger of injury to plaintiff by defendant's disclosures must exist . . . 436 219. One who avails himself of a secret fraudulently disclosed may be enjoined and held accountable for profits 436 220. Name of a jobber from whom goods are bought may be a trade secret 437 221. Transfer of secrets 437 222. List of customers is secret property. No one may canvass them except the owner of the list 438 223. Letters may be secrets 440 CHAPTER XVI. Remedies. Section 224. Jurisdiction of courts in unfair competition eases 441 225. Parties . 443 226. Injunctions before any act committed — Bills in nature of quia timet 445 227. Preliminary injunctions . 446 228. Temporary relief, pending trial 448 229. Important and basic facts will not be decided on preliminary hearing 448 230. Injunctions against libel and slander of goods and names 450 231. Injunction directing use of explanatory phrases 450 232. Final relief — Scope of permanent injunctions 451 233. The court does not pass upon measures adopted by the defend- ant to correct his unfair acts 452 234. Decree correcting a confusing use of names and signs 453 235. Injunctions against use of colors, size, form, etc 453 236. Injunctions against use of family names, scope of 454 237. Injunction against the use of the name of an ex-partner or former member of a corporation, or owner of a patent 456 238. Damages and accounting for profits 457 239. Election of remedy by plaintiff 458 240. Damage to reputation of product to be reckoned as well as loss of profits 458 241. Exemplary damages 459 242. Deduction of defendant's expenses from profits 460 243. Destruction and delivery up of offending articles 462 244. Accounting refused where injunction is denied 462 245. Contempt of court by failure to obey injunction 462 Contents. xv CHAPTER XVII. Defenses. pAQE Section 246. The defense that the plaintiff and defendant are not in compe- tition with each other 464 247. The defense that the name, mark, form, shape or other device in question has not been exclusively used by the complainant but is in common use 465 248. The defense that the defendant's article is as good as the plain- tiff's 406 249. The defense that the defendant has no intent to pass off his goods as plaintiff's goods 468 250. The defense that the goods were not marked with any spurious marks or names 468 251. The defense that defendant's marks differ sufficiently from complainant's to be capable of registration as distinct marks. 468 252. The defense that representations objected to by the plaintiff are true 469 253. The defense that the deception is due not to the defendant but to a jobber or retailer, or other purchaser, from the defendant. 470 254. The defense that defendant was only the maker of tiie label or container complained of and was not responsible for its ulti- mate use by him for whom it was made 473 255. The defense that defendant was acting only as agent for another and received none of the profits 473 256. The defense that complainant's title was not properly estab- lished 474 257. The defense that the offense is too trivial for the court to notice 474 258. The defense that plaintiff's goods are worthless or useless. . . . 475 259. The defense that defendant's name is two or more words, while plaintiff's is one, and hence different 475 260. The defense that plaintiff has acted unfairly toward third per- sons not connected with the suit at bar ' 475 261. The defense that plaintiff is an impostor and deluding the public 476 262. The defense that plaintiff is making misrepresentations in his own business 476 263. Misrepresentation usually but not always an affirmative defense. 478 264. The misrepresentation must be as to the subject-matter of the suit 478 265. Misrepresentations discontinued before suit is brought 479 266. Misrepresentations must be intentional and material 480 267. Misrepresentations as to ingredients and the nature and effect of a medical preparation 4S1 268. Misrepresentations must be as to ingredients that are essential. 486 269. Extravagant claims as to efficacy of medicines 487 270. Misrepresentations as to manufacture, place of manufacture, or origin of goods 487 271. Misrepresentation as to maker of goods 490 xvi Contents. PAGE. Section 272. Continuing use of name of predecessor 491 273. Misrepresentation as to unessential details 492 274. .Misrepresentations implying claim of monopoly — Use of term " Patented " 494 275. Misrepresentation by use of term "Copyrighted" or "Regis- tered " 496 276. Misrepresentation by laudatory expressions and exaggerated trade phrases 498 277. Miscellaneous cases of misrepresentation deemed harmless .... 502 278. Claiming falsely to be a corporation 592 279. Use of term " Established in " 503 2S0. Abandonment 503 281. Kinds of laches 505 282. Laches in the sense of mere delay 506 283. First user of mark may revoke license implied from laches. . . . 508 284. No presumption of acquiescence arises from an exclusive right. 509 285. Material delay bars right to an accounting of profits 510 286. Laches may bar right to order for destruction of offending goods 511 287. Laches which bars right to preliminary injunction 511 288. Acquiescence, in the sense of inaction upon which others have a right to reply 512 290. Test by which to determine acquiescence 514 TABLE OF CASES. A - PAGET. Accident Ins. Co., The, Ltd. v. The Accident, Disease and General Ins. Corp., Ltd., 51 L. T. Rep. N. S. 597-1884 215 Actiengesellschaft, V. U. F. v. Amberg, 109 Fed. 151-1901 (C. C. A. 3d Cir) . . 504 Adams, Matter of, 24 Misc. (N. Y.) 293-1898; 53 N. Y. Supp. 606 108 Addington v. Cnllinane, 28 Mo. App. 238-1887 460 Adrianee, Piatt & Co. v. National Harrow Co., 121 Fed. 827-30-1903 (C. C. A. 2d Cir.), 5S C. C. A. 103, 49 L. R. A. 755 409, 410, 415 Aiello v. Montecalfo, 21 R. I. 496-1899 223 Ainsworth v. Walmsley, L. R. 1 Eq. 518-1866 45, 98 Alaska Packers' Assn. v. Alaska Improvement Co., 60 Fed. 103-1904 (C. C. N. D. Cal.) 247, 488 Albright v. Teas, 37 N. J. Eq. 171 432 Alden v. Gross, 25 Mo. App. 123-1887 482 Alexander Bros. v. Morse, 14 R. I. 153-1884 269 Alff & Co. v. Radam, 77 Tex. 530-1890, 14 S. W. 164, 9 L. R. A. 145n. See also 81 Tex. 122-1891, 16 S. W. 990 29 Alger v. Thatcher, 19 Pick. 51 432 Allegretti v. Allegretti Chocolate Cream Co., 177 111. 129-1898, 52 N. E. 487 58, 99, 220 Allegretti Choc. Cream Co. v. Keller. 85 Fed. 643-1808 (C. C. S. D. X. Y.).448, 450 Allegretti Chocolate Cream Co. v. Rubel, 83 111. App. 558-1898 403, 406. Allen v. Flood, App. Cas. 1-1898 350, 352, 353, 354, 355, 357, 362, 376, 379' American Brewing Co. v. St. Louis Brewing Co., 47 Mo. App. 14-1891 469 American Cereal Co. v. Eli Pettijohn Cereal Co., 72 Fed. 903-1896 (C. C. 111. ) ; affirmed 76 Fed. 372 14S American Clay Mfg. Co. of Pa. v. American Clay Mfg. Co. cf N. J., 198 Pa. St. 189-1901, 47 Atl. 936 44, 200 American Grocer Publishing Assn. v. The Grocer Publishing Co., 25 Hun (N. Y.) 398-1881 189, 272 American Law Book Co. v. The Edward Thompson Co., 41 Misc. (N. Y.) 396-1903, 84 N. Y. Supp. 225 359, 375 American Order of Scottish Clans v. Merrill, 151 Mass. 55S, 8 L. R. A. 320-1890, 24 N. E. 918 206 American Solid Leather Button Co. v. Anthony, 15 R. I. 33S-1886, 5 Atl. 626 279 American Tin Plate Co. v. Licking Roller Mill Co., 158 Fed. 690--1902 (C. C. Ky.) 281 American Waltham Watch Co. v. United States Watch Co., 173 Mass. 85- 1899, 53 N". E. 141, 43 L. R. A. 826 56, 227 American Washboard Co. v. Saginaw Mfg. Co., 103 Fed. 281-1900 (C. C. A. 6th Cir.), 50 L. R. A. 609 21, 33, 34, 35 [xvii] xviii Table of Cases. PAGE. American Wine Co. v. Kohlman. 158 Fed. 830-1007 (C. C. Ala.) 206 Amoskeag Mfg. Co. v. Garner, 54 How. Pr. (X. Y.) 207-1870 255, 509 Amoskeag Mfg. Co. v. Spear, 2 Sandf. (N. Y.) 500-1840 14. 307, 507 Angier v. Webber, 14 Alien (Mass.) 211-1807. 92 Am. Dec. 748 105, 111 Angle v. Chicago, etc., Railway. 151 U. S. 1-1893 352, 362, 304 Angle v. Chicago, St. Paul, etc., Ry. Co., 151 U. S. 1-1894, 38 L. ed. 55, 14 Sup. Ct. 240 360, 368, 372 Anglo-Swiss Milk Co. v. Metcalf, 3 R. P. C. 28 270 Anheuser-Busch Brew. Assn. v. Clarke, 20 Fed. 410-1880 (C. C. Md.) 335 Anheuser-Busch Brewing Assn. v. Fred Miller Brewing Co., 87 Fed. 804 (Cir. Ct. E. D. Wis. 1S0S ) 248 Anheuser-Busch Brewing Assn. v. Piza, 24 Fed. 140-51-1885 243 Anonyme v. Western Distilling Co., 40 Fed. 921-1801 (C. C. E. D. Mo.) 401 Apolfinaris Co., Ltd. v. Scherer, 27 Fed. 18-1880 (C. C. S. D. X. Y.) 75, 380 Armington & Sims v. Palmer, 21 R. I. 100-1808. 42 Atl. 308, 43 L. R. A. 95. 107 Armstrong v. Kleinhans, 82 Ky. 303-1S84, 50 Am. Rep. 894 232 Armstrong v. Savannah Soap Works, 53 Fed. 124-1892 (C. C. Ga.) 443 Army and Navy Co-operative Society v. Army, Navy and Civil Service Co- . operative Society of South Africa. Ltd., 19 R. P. C. 574-70-1902 84 Arthur v. Oakes, 03 Fed. 301, 128 Fed. 957-1904 (C. C. Del.) 407 Ashley v. Dixon, 48 N. Y. 430-1872 350, 375 Avery & Sons v. Meikle & Co., 81 Ky. 75-84-1SS3 30, 282, 295 Ayer v. Hall, 3 Brewst. (Pa.) 509-1871 99 B. Baglin, A. L. v. The Cusenier Co., 164 Fed. 25 (C. C. A., 1908) 425 Baglin v. Cusenier Co., 141 Fed. 407-1905 (C. C. A. 2d Cir.) 449 Bailey v. Walford, Q. B. 197-1846, Q. B. 730-1800 400 Baker, Walter, & Co. v. Baker, 77 Fed. 181-1890 132 Baker, Walter, & Co. v. Baker, 87 Fed. 209-1898 133, 451 Baker v. Baker, 115 Fed. 297-1902 (C. C. A. 2d Cir.) 133 Baker, Walter, & Co. v. Sanders, SO Fed. SS9-1S97 (2d Cir.), 20 C. C. A. 220 132, 474 Baker v. Sanders, 97 Fed. 948-1890 ( C. C. E. D. Pa.) 133, 447 Baker, Walter, & Co. v. Slack, 130 Fed. 514-1904 (C. C. A. 7th Cir.) 09, 134 232, 459, 460 Ball v. Best, 135 Fed. 434-1905 (C. C. N. D. 111.) 39, SO, 140, 160, 225 Ball v. Siegel, 110 111. 137-1880, 4 N. E. 067 58, 318 Ball v. Broadway Bazaar, App. Div. (2d Dept.) N. Y. Law Jour., Oct. 29, 1907 233 Baltimore Car Wheel Co. v. Bemis, 20 Fed. 05-1SS0 (C. C. Mass.) 413 Baltimore Life Insurance Co. v. Gleisner, 202 Pa. St. 3S6-88-1902, 51 Atl. 1024 415 Bank of Tomah v. Warren. 94 Wis. 151-1896, 68 X. W. 549 89, 108 Banks v. Gibson, 34 Beav. 566-1865 116 Barber v. Manico, 10 R. P. C. 93-1893 149 Barker's Trade-Mark, Re, 53 L. T. X. S. 24 276 Barnes v. Pierce, 104 Fed. 213-1908 (C. C. X. Y.) 327 Barnett v. Leuchars, 34 L. T. (Ch.) X. S. 495-1805 327, 462 Bates Mfg. Co. v. The Bates Machine Co., 141 Fed. 213-1905 318 Batty v. Hill, 1 Hem. & M. 264 1863 36 Table of Cases. . xix PAGE. Bauer, A., & Co. v. Order of Carthusian Monks, 120 Fed. 78, 56 C. C. A. 480-1903 272, 323 Bauzhaf v. Chase, 150 Cal. 180-1907 292 Bayer v. Baird, 15 B. P. C. G15 281 Beard v. Turner, 13 L. T. N. S. 747-18G6 75, 512 Beattie v. Callanan, 82 App. Div. (X. V.) 7-1903, SI X. V. Supp. 413 359 Beddow v. Beddow, L. B. 9 Oh. Div. S9-1S7S 403 Beecham v. Jacobs, 159 Fed. 129-1908 (C. C. A. 2d Cir.) 494 Beekman v. Marsters, 195 Mass. 205-1907, 80 N. E. S17, 11 L. R. A. N. S. 201 361, 372 Bell v. Locke, S Paige (X. Y.) 75-1840 190, 192 Bender v. Enterprise Mfg. Co., 15G Fed. 641-1907 (C. C. A. 6th Cir.) 294 Benton v. Pratt, 2 Wend. 3S5-1829 352, 362, 370. 371 Bergamini v. Bastian, 35 La. Ann. 60-1883 Ill Berry v. Donovan, 188 Mass. 353-1905, 74 X. E. 603, 5 L. R. A. X. S. 899.. 371 Bewlay & Co., Ltd. v. Hughes, 15 R. P. C. 290-1898 240 Bickmore Gall Cure Co. v. Karns, 134 Fed. S33-1905, 67 C. C. A. 439 67, 339 Bile Bean Mfg. Co. v. Davidson, 22 R. P. C. 553-1905 (Ct. Sess.) 481 Bingham School v. Cray, 122 X. C. 699-1898, 41 L. R. A. 243. 30 S. E. 304. . 160 Birmingham Small Arms Co., Ltd. v. Webb & Co., 24 R. P. C. 27-1906 (Ch. Div. ) 278 Birmingham Vinegar Brewery Co. v. Powell, 66 L. J. Ch. X. S. 7G3-1S97, (1S97) A. C. 710 55, 250 Bissell Chilled Plow Works v. T. M. Bissell Plow Co., 121 Fed. 357-1902 (C. C. Mich.) 510, 511 Bitterman v. Louisville & Nashville R. R. Co., 207 U. S. 205-1907. .359, 362, 367, 36S Bixby v. Dunlap, 56 X T . H. 456-1876, 22 Am. Rep. 475 352, 363 Black v. Ehrich, 44 Fed. 793-1S91 (C. C. S. D. X. Y.) 195 Blackwell v. Crabb, 36 L. J. Ch. X. S. 504-1867 78 Blackwell & Co. v. Dibrell & Co., 3 Hughes 151-1878 (U. S. C. C. Va.) . .241, 505 Blackwell v. Wright, 73 X. C. 310-1875 50 Blackwell's Durham Tobacco Co. v. American Tobacco Co. (X. C), 59 S. E. 123-1907 201 Blakely v. Sousa, 197 Pa. St. 305-1900, 47 Atl. 286 , 95 Blanchard v. Hill, 2 Atk. 484-1742 11 Block v. Standard Distilling & Distributing Co., 95 Fed. 978-1899 (C. C. Ohio ) 503 Blofield v. Payne, 4 B. & Ad. 410-1833 13, 14, 467 Blumenthal v. Bigbie, 30 App. Cas. ( D. C.) 118-1908 182 Board of Trade, etc. v. Christie Grain & Stock Co., 198 U. S. 236-1904, 49 L. ed. 1031, 25 Sup. Ct. 637 367, 421 Board of Trade v. Hadden-Krull Co., 109 Fed. 705-1901 (C. C. Wis.) 366 Board of Trade v. >C. B. Thomson Commission Co., 103 Fed. 902-1900 (C. C. Wis.) 366 Bobbs-Merrill Co. v. Straus, 147 Fed. 15-1906. 210 U. S. 339-1907 (C. C. A. 2d Cir. ) 373, 380-383 Bohn Mfg. Co. v. Hollis, 54 Minn. 223-1892. 55 N. Y. 119. 21 L. R. A.. . .337-385 Bolander v. Peterson, 136 111. 215-1891. 26 X. E. 603, 11 L. R. A. 350.. ..85, 499 Bormard v. Perryman, 3 Ch. 269-1 891 390 Booth, Alfred W., & Bro. v. Burgess (X. J. Eq. 1906) , 65 Atl. 226 359 xx Table of Cases. PAGE. Booth, A., & Co. v. Davis, 127 Fed. 875-1904 (C. C. Mich.) 373 Booth v. Jarrett, 52 How. Pr. 169-1876 (X. Y. C. P. Sp. T.) 103 Borthwick v. Evening Post, 37 C'h. Div. 449-1888, 12 Encyc. of the Laws of England 234, 235 23. 191 Boston Diatite Co. v. Florence Manufacturing Co., 114 Mass. 69-1873. . . .399, 400 Bourlier Brothers v. Macauley, 91 Ky. 135-1891, 15 S. W. 60, 11 L. R. A. 550 359, 306 Bowen v. Hall, L. R. 6 Q. B. Div. 333-1881 362. 365 Boynton v. Shaw Stocking Co., 146 Mass. 219-1888, 15 X. E. 507 412 Boysen v. Thorn, 98 Cal. 578-1893, 33 Pac. 492, 21 L. R. A. 233 359, 364, 365 Bowen v. Hall, L. Pv. 6 Q. B. Div. 333-1881 359, 375 Bradley v. Morton, 33 Conn. 157 444 Braham v. Beachim, 7 Oh. Div. 848-1878 233, 234 Braham v. Bustard, 1 Hem. & M. 447-1863 177 Brandreth v. Lance, >8 Paige (N. Y.) 24-1839: Eden Injunction (3d ed.) 372 39S. 413 Breitenbach, M. J., Co. v. Spangenberg, 131 Fed. 160-1904 (C. C. S. D. X. Y. ) 263 Brooke & Co. v. Commissioners of Inland Revenue, 2 Q. B. 356-1896 89 Brooklyn White Lead Co. v. Masury, 25 Barb. (N. Y.) 416-1857 87, 253 Brown v. Mercer, 37 N. Y. Super. Ct/265-1874 471 Brown v. Seidel, 153 Pa. St. 60-72-1893, 25 Atl. 1064 82 Brown Chemical Co. v. Frederick Stearns & Co., 37 Fed. 360-1889 (C. C. E. D. Mich.) 88 Brown Chemical Co. v. Meyer, 139 U. S. 540-1890, 35 L. ed. 247, 11 Sup. Ot. 625 108, 127, 149, 162 Brown, J. S., Hardward Co. v. Ind. Stove Works, 96 Tex. 453-1903, 73 S. W. 800 364 Buckland v. Rice, 40 Ohio St. 526-1884 ..'.■ 490 Buck's Stove and Range Co. v. Kiechle, 76 Fed. 758-1896 (Cir. Ct. Ind.) ... 293 Burgess v. Burgess, 3 De G. M. & G. 896-1853 127, 128, 130, 176 Burke, Edward & John, Ltd. v. Bishop. 144 Fed. 838-1900 (C. C. A. 2d Cir.). 512 Burnett v. Chetwood, 2 Merivale 441-1720, note 391 Burnett v. Phalon, 3 Keyes (X. Y.) 594-1867 273 Burns, C. O., Co. v. Burns, W. F., Co., 118 Fed. 944-1902 (C. C. S. D. X. Y.) 448, 512 Burrow v. Marceau, 124 App. Div. (X. Y.) 665-1908, 109 X. Y. Supp. 105 152, 210, 444 Burton v. Stratton, 12 Fed. 696-1S82 100 Bury v. Bedford, 4 De G. J. & S. 352-1 864 102 Busch v. Gross, 71 N. J. Eq. 508, 64 Atl. 754-1906 180 Butler v. Freeman. 1 Ambl. 301-1756 38 Butler v. The Mayor of Thomasville. 74 Ga. 570-1 SS5 40 Buzby v. Davis, 150 Fed. 275-1906 (€. C. A. 8th Cir.) 171 C. Cady v. Schultz, 19 R. I. 193-1895. 32 Atl. 915, 29 L. R. A. 524.... 81, 165, 185 Cahn v. Gottschalk, 14 Daly (X. Y.) 542-1888, 2 X. Y. Supp. 13 270, 487 496, 510 California Fig Syrup Co. v. Improved Fig Syrup Co., 51 Fed. 296 444 California Fig Syrup Co. v. Putnam, 66 Fed. 750-1895 (C. C. Mass.) 482 Table of Cases. xxi PAGE. California Fig Syrup Co. v. Stearns & Co., 73 Fed. 812-1896 (C. C. A. 6th Cir.) , 33 L. R. A. 50 482 California Fruit Canners' Assn. v. Myer, 104 Fed. S2 (Cir. Ct. Md. 1899) .. 230 Campbell v. Cooper, 34 N. H. 49 306 Canal Co. v. Clark, 15 Wall. 311-1871, 80 U. S. 311, 20 L. ed. 5S1. . .34, 244, 469 Candee, Swan & Co. v. Deere & Co., 54 111. 439-G1-1S70 296 Cantrell & Cochrane v. Wittemann, 109 Fed. S2-1901 (C. C. S. D. N. Y.) .. 446, 448 Carmel Wine Co. v. Palestine Hebrew Wine Co., 161 Fed. 654-1908 449 Carrington v. Taylor, 11 East 571 350 Cartier v. Carlile, 31 Beav. 292-1862 46, 55 Casey v. Cincinnati Typographical Union, 45 Fed. 135-1891 (C. C. Ohio), 12 L. R. A. 193, note 406 Cash v. Cash, 19 R. P. C. 181-1902, 86 L. T. 211 139, 142, 451, 454 Cash, J. & J., Ltd. v. Cash, 84 L. T. Ch. N. S. 352-1901 454 Castroville Co-op. Creamery Co. v. Coe, 92 Pac. 648 (Cal.) 476 Caswell v. Hazard, 121 X. Y. 484-1890, 24 N. E. 707 148 Cellular Clothing Co., Ltd. v. Maxton & Murray, App. Cas. 326-1899 48, 166 Celluloid Mfg. Co. v. Cellonite Mfg. Co., 32 Fed. 94-1SS7 (C. C. N. Y.) 98, 108, 198 217, 273 Centaur Co. v. Heinsfurter, 84 Fed. 955 303 Centaur Co. v. Killenberger, S7 Fed. 725-1898 (C. C. N. J.) 299, 321 Centaur Co. v. Link, 62 N. J. Eq. 147-1901, 49 Atl. 828 301, 338 Centaur Co. v. Marshall, 97 Fed. 785-1899, 38 C. C. A. 413 62, 447 Central Transportation Co. v. Pullman Palace Car Co., 139 U. S. 24-53-1890, 35 L. ed. 55, 11 Sup. Ct. 47S 424 Chadron Opera House Co. v. Loomer, 71 Neb. 7S5, 99 N. W. 649-1904 181 Chadwick v. Covell, 151 Mass. 190, 23 N. E. 1008, 6 L. R. A. 839, 21 Am. St. Rep. 442 123, 422, 427 Chambers & Marshall v. Baldwin, 91 Ky. 121-1891, 15 S. W. 57, 11 L. R. A. 545 359, 360, 376 Chancellor, etc., University of Oxford v. Y\ ilmore-Andrews Pub. Co., 101 Fed. 443-1900 (C. Ct. S. D. X. Y.) 251 Chappell v. Stewart, 37 L. R. A. 787-1896 38 Chasemore v. Richards, 7 H. L. C. 340-1859 355 Cheavin v. Walker, 5 Ch. Div. S50-1877 ( Ch. App.) 495 Chesterman v. Seeley, 18 Pa. Co. Ct. 631-1890, 5 Pa. Dist. 757 108 Chickering v. Chickering &, Sons, 120 Fed. 69-1903 (C. C. A.) 159, 400 Chipley v. Atkinson, 23 Fla. 206-1887, 1 So. 934 363, 364, 376 Chisisum v. Dewes, 5 Russ. 29 89 Chittenden v. Witbeck, 50 Mich. 401-20^1883, 15 X. W. 526 92 Choynski v. Cohen, 39 Cal. 501-1870 85 Church & Dwight Co. v. Russ, 99 Fed. 276-78-1900 (C. C. Ind.) 11 Church v. Kresner, 26 App. Div. (X. Y.) 349-1 S98, 49 X. Y. Supp. 742 148 Churton v. Douglas, 28 L. J. X. S. Ch. 841-1859 92, 111 Cincinnati U. S. Co. v. Cincinnati Shoe Co, 7 Ohio X. P. 135 451 City of Carlsbad v. Kutnow, 71 Fed. 167-1895 (C. C. A. 2d Cir.), 35 U. S. App. 750, IS C. C. A. 24 11, 235 City of Carlsbad v. Kutnow, OS Fed. 794-1895, affirmed 35 U. S. App. 750- 1S95, 71 Fed. 167 238 City of Carlsbad v. Tibbetts, 51 Fed. 852-56 229 xxii Table of Cases. PAGE. Civil Service Supply Association v. Dean, 13 €h. Div. 512-1879 83 Clark v. Aetna Iron Works, 44 111. App. 510-1892 217 Clark v. Clark, 25 Barb. (N. Y.) 70-1857 333, 450 Clark v. Freeman, 11 Beav. 112-1848 391, 398 Clark Thread Co. v. Armitage, 67 Fed. 896-1895 (C. C. S. D. N. Y.), affirmed and modified 74 Fed. 896 154, 174, 499, 503 Clark Thread Co. v. Armitage, 74 Fed. 936-1896 (C. C. A. 2d Cir.) 493 Clay v. Kline, 149 Fed. 912-1906 (C. C. S. D. N. Y.) 321 Clayton v. Day, 26 Sol. Jour. 43-1881 176 Clement v. Maddick, 5 Jur. N. S. 592-1859 190, 272 Cleveland Foundry Co. v. Silver, 134 Fed. 591 308 Cleveland Stone Co. v. Wallace, 52 Fed. 431-1892 (C. C. Mich.) 499 Clotworthy v. Schepp, 42 Fed. 62-1890 (C. C. S. D. N. Y.) 483, 484 Coal Co. v. Spangler, 54 N. J. Eq. 354, 34 Atl. 932 114 Coats v. Holbrook, 2 Sandf. Ch. 586-1845 246, 326 Coats, J. & P., 'Ltd. v. John Coates Thread Co., 135 Fed. 177-79-1905 212 Coats v. Merrick Thread Co., 149 U. S. 562-1892, at p. 566, 37 L. ed. 847, 13 Sup. Ct. 966 25, 255, 315 Cochrane v. MacNish & Son, App. Cas. 225-1896 177, 266, 496 Coeur D'Alene Mining Co. v. Miners' Union, 51 Fed. 744 407 Coffeen v. Brunton, 5 McLean, 256-1851, Fed. Cas. No. 2947, 4 McLean, 516-1849, Fed. Cas. No. 2946 50, 342 Cohen v. Nagle, 190 Mass. 4-1906, 76 N. E. 276, 2 L. R. A. 964, 190 Mass. 4-1893, 76 N. E. 276 171, 451 Cole, G. W., Co. v. American Cement Co., 130 Fed. 703-1904 (C. C. A. 7th Cir.) 3, 10, 33 Colgate v. Adams, 88 Fed. 899-1898 ( C. C. N. D. 111.) 255 Collard v. Marshall, 1 Ch. 571-1892, 577 393 Collins Company v. Oliver Ames & Sons Corporation, 18 Fed. 561-1882 (C. C. S. D. N. Y.) 25, 175 Colman v. Crump, 70 N. Y. 573-1877 47, 73, 315 Colton v. Thomas, 2 Brewst. (Pa.) 308-1869, 7 Phila. 257 (Com. Pleas, Phila.) 182, 185 Columbia Mill Co. v. Alcorn, 150 U. S. 460-1893, 37 L. ed. 1144, 14 Sup. Ct. 141 208 Commercial Acetylene Co. v. Avery Portable L. Co., 152 Fed. 642-1906 (C. C. Wis.) 387, 406 Commercial Advertiser Assn. v. Haynes, 26 App. Div. (N. Y.) 279-1898, 49 N. Y. Supp. 938 190, 273 Commissioners of Inland Revenue v. Angus & Co., 23 Q. B. D. 579-1889 89 Commonwealth v. Banks, 198 Pa. St. 397-1901, 48 Atl. 277 87 Compania General de Tabacos v. Eehder, 5 R. P. C. 61-1887 (Ch. Div.) 239 Computing Scale Co. v. Standard Computing Scale Co., 118 Fed. 965-1902, 55 C. C. A. 459 272 Condy & Mitchell v. Taylor & Co.. 56 L. T. Rep. 891-1887 (Ch. Div.) 324 Congress and Empire Spring Co. v. High Rock Congress Spring Co., 45 N. Y. 291-1871 246 Connell v. Reed, 123 Mass. 477-1880 482, 489 Conrad v. Uhrig Brewing Co., 8 Mo. App. 277-1880 334, 486 Consolidated Ice Co. v. Hygeia Distilled Water Co., 151 Fed. 10-1907 (C. C. A. 3d Cir.) 457 Table of Cases. xxiii pagf. Continental Ins. Co. v. Continental Fire Assn., 41 C C. A. 326, 101 Fed. 255. 259 Continental Tobacco Co. v. Larus & Brothers Co., 133 Fed. 727-1904 (C. C. A. 4th Cir.) 345 Cook v. Collingridge, Jacob 607-1825 Ill Cook & Bernheimer Co. v. Ross, 73 Fed. 203-1896 (C. C. S. D. N. Y.) . . . .309, 322 Cooke & Cobb Co. v. Miller, 169 N. Y. 475-1902, 62 N. E. 582 296 Cooper & McLeod v. Maclachlan, 19 R. P. C. 27-1901 84 Corliss v. Walker, 64 Fed. 280-1894, 31 L. R. A. 283 38 Cornwall, Re, 12 Pat. Off. Gaz. 312-1877 255 Cottrell v. Babcock Printing Press Mfg. Co., 54 Conn. 122, 6 Atl. 791- 1886 110, 111 Coulson & Sons v. Coulson & Co., 3 Times L. R. 846-1S87 415 County Chemical Co. v. Frankenburg, 21 R. P. C. 722-1904 344, 462, 571 Covell v. Chadwick, 153 Mass. 263-1891, 26 N. E. 856 438 Cra\vshay v. Collins, 15 Ves. 218-1808 119 Crawshay v. Thompson, 4 Man. & Gr. 357-1842 14, 15 Crescent Typewriter Supply Co., Re, 30 App. Cas. (D. C.) 324-1908. 259 Croft v. Day, 7 Beav. 84-1843 14, 16, 126, 150, 176, 183, 187 Croft v. Richardson, 59 How. Pr. 356-1880 401 Cropper v. Cropper, 23 R. P. C. 3S8-1906 443 Crossman v. Griggs, 186 Mass. 275-1904, 71 N. E. 560 102 Crowder v. Tinkler, 19 Ves. Jr. 617-1816 40 Cruttwell v. Lye, 17 Ves. 335-1810 89, 91, 111 Cuervo v. Landauer, 63 Fed. 1003-1894 (C. C. S. D. N. Y.) 60 Cutter v. Gudebrod Bros. Co., 190 N. Y. 252-1907, 83 N. E. 16 461, 462 D. Dadirrian v. Yacubian, 98 Fed. 872-1900 (C. C. A. 1st Cir.) 501 Dale v. Smithson, 121 Abb. Pr. (X. Y.) 237-1861 502 Daly v. Cornwell, 34 App. Div. (N. Y.) 27-1898. 54 N. Y. Supp. 107 375 Davis v. Kendal], 2 R. I. 566-1850 46, 50 Daw v. Enterprise Powder Mfg. Co., 160 Pa. St. 479-1894, 28 Atl. 841 40 Day v. Brownrigg, L. R. 10 Ch. Div. 294-1878 103, 393 Day v. Webster, 23 App. Div. (N. Y.) 601-1897, 49 N. Y. Supp. 314 43, 53 De Bevoise, Charles R., & Co. v. H. & W. Co., 69 N. J. Eq. 114-1905 275 De Libellis Famosis, 5 Coke, 125a 395 De Long v. De Long Hook and Eye Co. 89 Hun, 399-1895, 35 X. Y. Supp. 509 207, 211 De Long Hook and Eye Co. v. Excelsior Hook and Eye and Fastener Co., 139 Fed. 146-1905 (C. C. W. D. X. Y.) ; on appeal, 144 Fed. 682 346 De Manneville v. De Manneville, 10 Ves. Jr. 52-1S04 38 De Youngs v. Jung, 7 Misc. (X. Y.) 56-1894, 27 N. Y. Supp. 370 186 Deering Harvester Co. v. Whitman & Barnes Co., 91 Fed. 376-1S98 298 Deitsch v. George R. Gibson Co., 155 Fed. 383-1907 (C. C. N. Y.), Hough, J.. 505 D., L. & W. R. Co. v. Frank, 110 Fed. 6S9-1901 (C. C. W. D. X. Y.) 368 Deming v. Chapman, 1 1 How. Pr. 382-1854 425 Dennis v. Eckhardt, 3 Grant Caa. (Pa.) 389-1862 40 Dennison Mfg. Co. v.. Scharf Tag, Label and Box Co., 135 Fed. 625-1905 (C. C. A. 6th Cir.) 282 Dennison Mfg. Co. v. Thomas Mfg. Co., 94 Fed. 651-1899 (C. C. Del.) 9, 26 Derringer v. Plato, 29 Gal. 296-1865, 87 Am. Dec. 170 11, 173 xxiv Table of Cases. PAdE. Devlin v. Devlin, 69 X. Y. 212-1877 143 Devlin v. MoLeod, 135 Fed. 164-1904 (C. C. W. D. X. V.) 33ti, 33!) Diamond Match Co. v. Saginaw Match Co., 142 Fed. 727-1900 (C. C. A. (3th Cir. ) 303 Diamond Match Safe Co. v. Safe Harbor Metal Co., ID'.) Fed. 154 448 Dixon v. Holden, L. R. 7 Eq. 488-1869 391, 393, 399, 402, 403 Dixon Crucible Co. v. Guggenheim, 2 Brewst. (Pa.) 321-18(3!) !»8, 248, 489 Dockrell v. Dougall, 80 L. T. Rep. 55(3-18!)!! 417 Doctor Miles Medical Co. v. Jayne Drug Co., 147 Fed. 15-190(3 (C. C. A. 2d Cir.) 383 Doctor Miles Medical Co. v. Piatt, 142 Fed. 000-1U0I3 (€. C. H. D. Ill), 149 Fed. 838-1906 (C. C. Mass.) 383 Dodge Co., F. W. v. Construction Information Co., 183 Mass. 62-1903, 66 X. E. 204. 60 L. R. A. 810 366 Dodge Stationery Co. v. Dodge, 145 Cal. 380-1904, 78 Pac. 879 61, 211 223, 503 Donaldson v. Beckett, 2 Brown's Pari. Cas. 129-1774 ». 391 Donnell v. Herring-Hall-Marvin Safe Co., 208 U. S. 267-1908. .124, 155, 156, 218 Dooling v. Budget Pub. Co., 144 Mass. 258-1887, 10 X. E. 809 411, 413 Doremus v. Hennessy, 176 111. 608-1898. 52 X. E. 924, 43 L. R. A. 797 374 Dougherty v. Van Xostrand, 1 Hoff.-Ch. (X. Y.) 68-1839 119 Drake Medicine Co. v. Glessner, 68 Obio St. 337-1893, 67 X. E. 722, 62 L. R. A. 941 .33, 150 Draper v. Skerrett, 116 Fed. 206-1902 (C. C. E. D. Pa.) 11, 31, 174 Drewry & Son v. Wood, 127 Fed. 887 (C. C. Minn.) 272 Du Bost v. Beresford, 2 Campb. 511-1S10 391 Duke v. Cleaver, 19 Tex. Civ. App. 218-1898, 46 S. W. 1128 170 Dunbar v. Glenn, 42 Wis. 118-1877 246 Dung v. Parker. 52 X. Y. 494-1873 371 Dunlop Pneumatic Tire Co., Ltd. v. Dunlop Motor Co., Ltd., 22 R. P. C. 533-1905 ( Ct. Sess. Scotland) 145, 208 Dunnaohie v. Young, 10 Scot. Sess. Cas. (4th ser.) 874-1883 240 Dunn Co. v. Trix Mfg. Co., 50 App. Div. (X. Y.) 75-1900, 03 X. Y. Supp. 333 72 Duryea v. Manufacturing Co., 79 Fed. 651, 25 C. C. A. 139 . . 155 Dutton & Co., E. P. v. Cupples, 117 App. Div. (X. Y.) 1st Dept. 172-1907, 102 X. Y. Supp. 309 287 E. Eastman Kodak Co. v. Reichenbach et al., 20 X. Y. Supp. 110-1892, 1 Affd. 79 Hun, 183 433 Eastman Photographic Co., Ltd. v. Jobn Griffith's Cycle Corp.. Ltd., 15 R. P. C. 105-1898 ' 265 Eekhart v. Consolidated Milling Co.. 72 111. App. 70-1897 49, 50, 325 Edelsten v. Edelsten, 1 De G. J. & S. 185-1863 13, 467 Edelsten v. Vick, 1 1 Hare, 78-1853 495 Edison v. Thomas A. Edison, Jr., Chemical Co., 128 Fed. 957-1904 (C. C. Del.) 407 Edison Storage Battery Co. v. Edison Automobile Co. of Wasbington, D. C, 67 X. J. Eq. 44-1 904. 56 Atl. 861 445 Edison Mfg. Co. v. Gladstone, X. J. Eq. , 58 Atl. 391-1903 294 Table of Cases. xxv PAGF. Edison v. Mills-Edisonia (X. J. Ch.) 70 Atl. 101-100S 303 Eggers v. Hink, 63 Cal. 445-1883, 49 Am. Rep. 96 75, 186 Eisemdan v. Schiffer, 157 Fed. 473-1907 (C. C. N. Y.) 505 Elgin Butter Co. v. Elgin Creamery Co., 155 111. 127-1895, 40 N. E. 616 58 Elgin Nat. Watch Co. v. Eppenstein, 1 111. C. C. 602-1892 446 Elgin National Watch Co. v. Illinois Watch Case Co., 179 U. S. 665-1900, 21 Supp. Ct. 270, 44 L. ed. 365 43, 52, 442 Elgin Nat. Watch Co. v. Loveland, 132 Fed. 41-1904 (C. C. X. D. Iowa) 252 443, 444, 465 Elliott & Co. v. Hodgson, 19 R. P. C. 518-1902 288 Emack v. Kane, 34 Fed. 46-1888 (C. C. 111.) 403, 405, 415 Emerson v. Badger, 101 Mass. 82-1S69 121, 156 Emperor of Austria v. Day & Kossuth, 3 De G. F. & J. 217-1861 391, 399 England v. Downs, 6 Beav. 269-1842 90, 122 England v. N. Y. Publishing Co., S Daly (N. Y.), 375-1S78 152 Eno v. Dunn & Co., 10 R. P. C. 261-1S93 265 Enterprise Mfg. Co. v. Landers, Frary & Clark, 131 Fed. 240-1904 (C. C. A. 2d Cir.) 61, 79, 262, 286, 292, 445, 451 Epperson, J. W.. & Co. v. Blumenthal, (Ala.) 42 So. 863-1906 4S5 Estes v. Leslie, 27 Fed. 22-1886, 29 Fed. 91-1886 (C. C. S. D. N. Y.) 196, 273 Estes v. Worthington, 22 Fed. 822-1885, 30 Fed. 405, 31 Fed. 154-1887 (C. C. S. D. N. Y.) 196, 444, 511 Eureka Fire Hose Co. v. Eureka Rubber Mfg. Co., 69 N. J. Eq. 159-1905, 60 Atl. 561, modification refused, s. c, 65 Atl. 870-1907 266 Evans v. Von Laer, 32 Fed. 153-1887 327 Evenson v. Spaulding, 150 Fed. 517-1907 (C. C. A. 9th Cir.), 9 L. R. A. N. S. 904, note 3S5 Exchange Telegraph Co., Ltd. v. Central News, 2 Ch. 4S-1897 307, 423 Exchange Telegraph Co., Ltd. v. Gregory & Co., 73 L. T. 120-1895, 1 Q. B. D. 147-1896 366, 367, 423 F. Faber v. Faber, 124 Fed. 603-1903 (C. C. S. D. N. Y.) 53, 55, 62, 451 Fahrney, Dr. Peter H., & Sons Co. v. Ruminer, 153 Fed. 735-1907 (C. C. A. 7th Cir. ) 88, 483, 501, 510 Fairbank, N. K., Co. v. R. W. Bell Mfg. Co., 77 Fed. 869-1896 (C. C. A. 2d Cir.) 59, 62, 74, 343, 454, 471 Fairbank, N. K., & Co. v. Des Moines Scale and Mfg. Co., 96 Fed. 972 447 Fairbanks v. Jacobus, 14 Blatchf, 337 296 Fairbank. N. K., & Co. v. Luckel, King and Cake Soap Co., 102 Fed. 327, 106, Fed. 498-1901 269, 271, 457 Fairbank. N. K., Co. v. Swift & Co., 64 111. App. 477-l»96 264, 470 Fairbank, N. K., Co. v. Windsor, 61 C. C. A. 233-1903, 124 Fed. 200-35 ( C. C. A. 2d Cir. ) 53 Falk v. American West Indies Trading Co., ISO N. Y. 445-1905, 73 N. E. 1123, 1 L. R. .A. X. S. 704, note 104 Falk v. American West Indies Co., 71 App. Div. (N. Y.) 320-1902, 75 N. Y. Supp. 964 153 Farina v. Silverlock, 4 Kay & J. 650-1858 41 Farmers' Loan & Trust Co. v. Farmers' Loan & Trust Co. of Kansas, 1 X. Y. Supp. 44-1SS8, 21 Abb. X. C. 104 160, 201, 205, 225 xxvi Table of Cases. PAGE. Farquhar, A. B. & Co. v. National Harrow Co., 102 Fed. 714-1000 (C. C. A. 3d Cir.), 42 C. C. A. 600, 49 L. R. A. 755 410, 411, 415 Faulder & Co, Ltd. v. O. & G. Rushton, Ltd., 20 R. P. C. 477-1902 107, 109 172, 233, 475 Fay v. Lambourne, 124 App. Div. 245-1908 ( 1st Dept.) 476 Feder v. Benkert, 18 C. C. A. 549, 70 Fed. 613-1895 99, 248, 489 Pels v. Christopher Thomas & Bros., 21 R. P. C. 85-1903 (High Ct. of App.) 169 Felton v. Sellers Co., 4 Brewst. (Pa.) 42-1867 (Sup. Ct. Pa.) 489 Fetridge v. Wells, 4 Abb. Pr. (N. Y.) 144-1857, 13 How. Pr. (N. Y.) 385- 1857 477, 481, 482, 483 Filkins v. Blackmail, 13 Blatehf. (Conn.) 440-1870 109 Filley v. Fassett, 44 Mo. 168-1869 50, 266, 504 Fine Cotton Spinners and Doublers Assn., Ltd. v. Harwood, Cash & Co., Ltd., 2 Ch. 184-1907 143 Fischer v. Blank, 138 N. Y. 244-1893, 33 N. E. 1040 72, 337, 462 Fish Bros. Wagon Co. v. Fish Bros. Mfg. Co., 95 Fed. 457-1899 (C. C. A. 8th Cir.) 102 Fish Bros. Wagon Co. v. La Belle Wagon Works, 82 Wis. 546-1 S92, 52 N. W. 595, 16 L. R. A. 453 99, 114, 147 Fisk, A. G. v. Fisk, Clark & Flagg, 77 App. Div. (N. Y.) 83-1902, 79 N. Y. Supp. 37 ' 120, 121 Flaccus v. Smith, 199 Pa. St. 128-1901, 48 Atl. 894, 54 L. R, A. 640 359 Flagg Mfg. Co. v. Holway, 178 Mass. 83-1901, 59 N. E. 667 289, 296 Flavel v. Harrison, 10 Hare, 467-1853, 19 Eng. L. & Eq. 15 494 Fleckenstein Bros. Co. v. Fleckenstein, 66 N. J. Eq. 252-1904, 57 Atl. 1025. . . 374 Fleischmann v. Schuckmann, 62 How. Pr. 92-1881 253 Fleischmann v. Starkey, 25 Fed. 127-1885 (€. C. R. I.) 82, 310 Fleming v. Newton, 1 H. L. Cas. 363-1848 399 Flint v. Hutchinson Smoke Burner Co., 110 Mo. 492-1892, 19 8. W. 804, 16 L. R. A. 243 40S Ford v. Foster, L. R. 7 Ch. App. 611-1872 479, 514 Forney v. Engineering News Publishing Co., 10 N. Y. Supp. 814-1890 191 Forsythe v. Guzy, N. Y. Supr. Ct., O'Gorman, J., Nov. 26, 1907 270 Fort Pitt Building & Loan Assn., etc. v. Model Plan Building & Loan Assn., 159 Pa. St. 308-1893 199 Foss v. Roby, 195 Mass. 292, 81 N. E. 199-1907 115, 116 Foutz, David E., Co. v. S. A. Foutz Stock Food Co., 163 Fed. 408-1908 (C. C. Md.) 137 Fox, George G., Co. v. Glynn. 191 Mass. 344-1906, 78 N. E. 89, 9 L. R. A. N. S. 1096, note 285, 291 Fox, George G., Co. v. Hathaway, 199 Mass. 99-1908, 85 N. E. 417 291 Fowle v. Park, 131 U. S. 88-1889, 33 L. ed. 67, 9 Sup. Ct. 658. .123, 381, 422, 423 Fralich V. Despar, 165 Pa. St. 24-1894, 30 Atl. 521 429 Francis v. Flinn, 118 U. S. 385-1886, 30 L. ed. 105, 6 Sup. Ct. 1172. 405, 406, 413 Franck v. Frank Chicory Co., 95 Fed. 818-1899 ( C. C. E. D. Wis.) . . 83, 310, 340 Frazer v. Frazer Lubricator Co., 121 111. 147-1880. 13 N. E. 639 98, 108, 110 Frazier v. Dowling, 39 S. W. 45-1897, 18 Ky. L. Rep. 1109 161, 248 French Republic v. Saratoga Vichy Co., 191 U. S. 427-19-03, 48 L. ed. 247, 24 Sup. Ct. 145 232, 514 Frese v. Baohof, 14 Blatehf. 432-5-1878 312 Frost, Geo., Co. v. E. B. Estes & Sons, 156 Fed. 677-1907 (C. C. Mass.) 293 Table of Cases. xxvii PAGF. Fuller v. Huff, 104 Fed. 141-1900 (C. C. A.) , 51 L. R. A. 332 58 Fullwood v. Fullwood, 9 Ch. Div. 170-1878 183, 500 Fulton v. Seller & Co., 4 Brewst. (Pa.) 42 248 Funke v. Dreyfus & Co., 34 La. Ann. 80-1882 493 G. Gage-Downs Co. v. Featherbone Corset Co., 83 Fed. 213-1897 (Head note) ... 256 Gannett v. Ruppert, 127 Fed. 962-1904 (C. C. A. 2d Cir.), revg. 119 Fed. 221. 193 Garrett, W. E., & Sons v. T. H. Garrett & Co., 7S Fed. 472-1896, 24 C. C. A. 173 126, 139, 212 Garst v. Charles, 187 Mass. 144 382 Gartside v. Outram, 3 Jur. N. S. 39-1856 435 Gato v. El Modelo Cigar Mfg. Co., 6 L. R. A. 823-1889 46S Gebbie v. Stitt, 82 Hun (N. Y.), 93-1894. 31 N. Y. Supp. 102 (Gen. T. 4th Dept. ) 245 Gee v. Pritchard, 2 Swanst. 403-1818 38, 391. 399. 400 Geraner Stove Co. v. Art Stove Co., 150 Fed. 141-1907 (C. C. A. 6th Cir.) ... 87 Gessler v. Grieb, 80 Wis. 21-1891, 4S ST. W. 1098 342 Gibblett v. Read, 9 Mod. 459-1743 89, 425 Gilka v. Mihalovitoh, 50 Fed. 427-1892 (C. C. Ohio) 514 Gillis v. Hall, 2 Brewst. (Pa.) 342-1869 98 Gillott v. Ester-brook, 48 N. Y. 374-1872, 47 Barb. (N. Y.) 455-1867 280, 509 Gillott v. Kettle, 3 Duer (N. Y.), 624-1854 280, 374 Ginesi v. Cooper & Co., 14 Oh. Div. 596-1880 91, 111, 112, 113 Giragosian v. Chutjian, 194 Mass. 504-1907, 80 1ST. E. 647-1907 86, 462 Glen Cove Mfg. Co. v. Ludeling, 22 Fed. 823-18S5 (C. C. S. D. N. Y.) 273 Glen & Hall Mfg. Co., The v. C. S. Hall, 61 N. Y. 226-1874 24, 187 Glencoe Land, etc., Co. v. Hudson Brothers, etc., Co., 138 Mo. 439-1896, 40 S. W. 93, 30 L. R. A. 804 359, 366 Glendon Iron Co. v. Uhler, 75 Pa. St. 467-1874 231 Glenny v. Smith, 2 Drew. & Sm. 476-1865 182, 183 Globe-Wernicke Co. v. Brown & Besly, 121 Fed. 90-1902 (C. C. A. 7th Cir.) 28, 286 Globe-Wernicke Co. v. Fred Macey Co., 119 Fed. 696-1902 (C. C. A. 6th Cir.). 285 Gluekman v. Strauch, 99 App. Div. (N. Y.) 361-1904, 91 N". Y. Supp. 223. . . 491 Godillot v. American Grocery Co., 71 Fd. 873-1896 (C. C. N. J.) 277 Goodman v. Bohls, 3 Tex. Civ. App. 183-1893, 22 S. W. 11 53 Goodwin v. Hamilton, 19 Pa. Co. Ct. 652-1897, 6 Pa. Dist. 705 186 Goodwin v. Ivory Soap Co., IS R. P. C. 389-1901 84 Goodyear India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598-1888, 32 L. d. 538, 9 Sup. Ct. 166 144 Goodyear Rubber Co. v. Day, 22 Fed. 44-1884 (C. C. E. D. Mo.) 447 Gorham v. Emery & Co., 92 Fed. 779 ; affd. 104 Fed. 243 437 Gouraud v. Trust, 6 Thomps. & Cook (N. Y.) , 133-1875 159 Gout v. Alepoglu, 6 Beav. 69-1833 175 Gove v. Condon, 40 L. R. A. 382 376 Graham v. Plate, 40 Cal. 593-1871 45S Grand Hotel Co. v. Wilson, 21 R. P. C. 117-1903 246 Grand Lodge of the Ancient Order of United Workmen of the State of Iowa v. Graham, 31 L. R. A. 133-1895, 96 Iowa, 592, 65 N. W. 837 199 Grand Lodge, Knights of Pythias v. Creswill, 128 Ga. 775-1907, 58 S. E. 163. 204 xxviii Table of Cases. PAGE. Grand Rapids School Furniture Co. v. Haney School Furniture Co., 92 Mich. 558-1892, 52 N. W. 1009, 16 L. R. A. 721 407 Greacen v. Bell, 115 Fed. 553-1902 (C. C. X. J.) 109 Green, Re, 8 Pat. Off. Gaz. 729-1875 255 Green v. Button, 2 C., M. & R 707 352, 302 Green v. Folgham, 1 Sim. & St. 398-1823 429, 437 Greene, Tweed & Co. v. Mfrs. Belt Hook Co., 15S Fed. 040-1906 (C. C. 111.) . 303 Gregory v. Duke of Brunswick, 6 M. & G. 953-1844 370 Grierson v. Birmingham Hotel Co., IS R. P. C. 158 474 Grow v. Seligman, 47 Mich. 607-1882, 11 N. W. 404 100 Gruber Almanack Co. v. Swingley, 103 Md. 362, 63 Atl. 6S4-1906 492 Guardian Fire and Life Assur. Co. v. Guardian and Gen. Ins. Co., 50 L. J. Ch. N. S. 253-1880 58 Gunter v. Astor, 4 J. B. Moore, 12-1819 352, 363 H. Hagan & Dodd Co. v. Rigbers, 1 Ga. App. 100, 57 S. E. 970-1907 458 Hainque v. Cyclops Iron Works, 136 Cal. 351-1902, 68 Pac. 1014 11, 24, 174 Hall's Appeal, 60 Pa. St. 458-1869, 100 Am. Dec. 5S4 105, 111 Hall v. Barrows, 9 Jur. N. S. 4S3-1863, 4 De G. J. & S. 150-1863 . .21, 22, 24, 119 Hall v. Stern (C. C.) , 20 Fed. 788 .'. 459 Hall's Safe Co. v. Herring-Hall-Marvin Safe Co., 146 Fed. 37-1906 (C. C. A. 6th Cir.), 208 U. S. 554-1908 444, 455 Hall Signal Co. v. Railway Signal Co., 153 Fed. 907 308 Hallett v. Cumston, 110 Mass. 29-1S72 119 Hammer v. Barnes, 26 How. Pr. 174-1863 420 Hanna v. Andrews, 50 Iowa, 462-1879 Ill Hansen v. Siegel-Cooper Co., 106 Fed. 691-1900 (C. C. S. D. N. Y.) 169, 450 Hardy v. Cutter, 3 U. S. Pat. Gaz. 468-1873, 16 Phila. 182 158 Harper & Bros. v. Lare, 103 Fed. 203-1900 (C. C. A. 3d Cir.) 190 Harper v. Pearson, 3 L. T. N. S. 547-1861 28, 187 Harrison v. Gardner, 2 Mad. 198-1817 118 Harrison v. Taylor, 11 Jur. N. S. 408-1865 510 Hart v. Aldridge, 1 Cowp. (N. Y.) 54-1774 352, 363 Hartnett v. Plumbers, etc., 160 Mass. 229 364 Harvey, G. F., Co. v. National Drug Co., 75 App. Div. (N. Y.) 103-1902, 77 N. Y. Supp. 674 432 Haskins v. Royster, 70 N. C. 001-1874 363, 366 Havana Commercial Co. v. Nichols, 155 Fed. 302-1907 (C. C. S. D. N. Y.) . . 512 Hawker v. Stourfield Park Hotel Co., Wkly. Notes, 51-1900 417 Hazard v. Caswell, 93 N. Y. 259 247 Hazelton Boiler Co. v. Hazelton Tripod Boiler Co., 142 111. 494-1892, 30 N. E. 339 97, 108, 201, 217 Hazelton Boiler Co. v. Hazelton Tripod Boiler Co., 137 111. 231-1891, 28 N. E. 248 198 Heath v. American Book Co., 97 Fed. 533-1899 (C. C. W. Va.) 374 Heaton, In re, L. R. 27 Ch. Div. 570-1884 516 Hegeman v. Hegeman, 8 Daly (N. Y.) , 1-1880 247, 489 Heide v. Wallace & Co., 135 Fed. 346-1905 (C. C. A. 3d fir.) 261 Heinisch's Sons' Co. v. Boker, 86 Fori. 765-1898 (C. C. S. D. N. Y.) 60 Heinz v. Lutz Bros., 146 Pa. St. 592-1891, 23 Atl. 314 82, 345 Table of Oases. xxix PAGE. Hedriks v. Montagu, 50 L. J. Ch. X. S. 456-1881 445, 446 Hennessy v. Brannschweiger & Co., 89 Fed. 664-1898 (C. C. Oal.) 6 Hennessy v. Dompe, 19 R. P. C. 333-1962 311 Hennessy v. Herrmann, 89 Fed. 669-1898 (€. C. N. D. Gal.) 41 Hennessy v. Hogan, (i \Y., W. & A'B. 225 325 Hennessy v. Neary, 19 R. P. C. 36-1901 325 Hennessy v. White, 6 W., W. & A'B. 216-1869 (Victoria) 325 llerring-Hall-Marvin Safe Co. v. Hall's Safe Co., 208 U. S. 554-1908. ... 122, 157 232, 457 Hier v. Abrahams, 82 N. Y. 519-1880 46S Higgins, C. S., Co. v. Higgins Soap Co., 144 N. Y. 462-1895, 18 N. E. 714, 39 X. E. 490, 27 L. R. A. 42 99, 108, 130, 148, 198, 217, 220 Hildreth v." McCaul, 70 App. Div. (X. Y.) 162-1902 (1st Dept.), 74 X. Y. Supp. 1072 117 Hildreth v. McDonald Co.. 104 Mass. 16-1895. 41 N. E. 56 68, 343 Hilreth v. Norton, 159 Fed. 428-1908 (C. C. A.) 308 Hildreth v. Sparks Mfg. Co., U9 Fed. 484-1899 (C. C. S. D. X. Y.) 41 Hill v. Hart Davies, L. R. 21 Ch. Div. 798-1882 393 Hill v. Lockwood. 32 Fed. 389-1887 (C. C. E. D. Wis.) 247 Hillside Chemical Co. v. Munson & Co., 146 Fed. 198-1906 (C. C. Conn.) .... 473 Hilson Co. v. Foster, SO Fed. 896-1897 (€. C. S. D. X. Y.) 22 Hires, Chas. E., Co. v. Consumers' Co., 100 Fed. 809-1900 (C. €. A. 7th Cir.) 322, 452 Hires, Charles E., Co. v. George A. Hires, 182 Pa. St. 346-1897, 37 Atl. 1117 147, 150 Hirst v. Denham, L. R. 14 Eq. Gas. 542-1872 255 Hobbs v. Francais, 19 How. Pr. (X. Y*. ) 567-1860 477, 490 Hogg v. Kirby, 8 Ves. Jr. 215-1803 . 12, 18 Holbrook v. Xesbitt, 163 Mass. 120-1895, 39 X. E. 794 (from head note) 182 Holden, Admr. v. M'Makin, 1 Pars. Sel. Cas. (Pa.) 270-1847 119 Hollenbeck v. Restine. 1 14 Iowa, 358 376 Holloway v. Clent, 20 R. P. C. 525-1903 93 Holloway v. Holloway, 13 Beav. 209-1850 126, 127, 150, 170 Holmes, Booth & Haydens v. Holmes, Booth & Atwood Mfg. Co., 37 Conn. 27S-1870 46, 49, 50, 62, 108, 147, 217, 218, 503 Hookham v. Pottage, L. R. 8 Ch. App. 91-1872 182, 183 Hopkins, In re, 29 App. Gas. (D. C.) 118-1907 259 Hopkins Amusement Co. v. Frohman, 103 111. App. 613-1902 32, 194 Horton Mfg. Co. (X. Y.) v. Horton Mfg. Co. (Ind.), 18 Fed. S16-1883 98 Hostetter v. Adams, 10 Fed. 838-1882 (C. C. S. D. X. Y.) 327 Hostetter Co. v. Becker, 73 Fed. 297-1896 (C. C. S. D. X. Y.) 325 Hostetter Co. v. Brueggeman-Reinert Distilling Co., 46 Fed. 1SS-1891 (C. C. E. D. Mo. ) 326 Hostetter v. Fries, 17 Fed. 620-1883 (G. C. S. D. X. Y.) 145 Hostetter v. Martinoni, 110 Fed. 524-1901 (C. C. X. D. Cal.) 327, 475 Hostetter Co. v. Sommers, 84 Fed. 333-1897 (C. G. S. D. X. Y.) 81, 326 Hovey v. Rubber Tip Pencil Co., 57 X. Y. 119-1874 410 Howard v. Henriques, 3 Sandf. (X. Y.) 725-1S51 28, 179, 272 Howard v. Taylor. 90 Ala. 241-1889, 8 So. 36 89 Howe v. Searing, 6 Bosw. (X. Y.) 354-1860 119 xxx Table of Cases. PAGE. Howe Scale Co. v. Wyckoff, Seamans & Benedict, 198 U. S. 118-1905, 49 L. ed. 972, 25 Sup. U. 609 2G, 150, 197, 108, 209, 210 Howes, S., Co. v. Howes Grain (leaner Co., 24 Misc. (N. Y.) 83-1898, 52 N. V. Supp. 408 122 Howes, S.. Co. v. Howes Grain Cleaner Co., 19 App. Div. (N. Y.) 025-1S97, 40 X. Y. Supp. 105 215, 446 Hoxie v. Chaney, 143 Mass. 592, 10 N. E. 713 95, 98, 111 Hoyt v. Hoyt, 143 Pa. St. 023-1891, 22 Atl. 755, 13 L. R. A. 343 314. 492 Hudson v. Osborne, 39 L. J. Ch. N. S. 79-1869 107 Huggonson 'Case, 2 Atk. 48S-1742 399 Hunt v. N. Y. Cotton Exchange, 205 U. S. 322-1907, 51 L. ed. 821, 7 Sup. Ct. 529 421 Huntley & Palmer v. Reading Biscuit Co., Ltd., 10 R. P. C. 277-1893 242 445, 446 Huwer v. Dannenhoffer, 82 X T . Y. 499-18S0 100 Hygeia Distilled Water Co. v. Consolidated Ice Co., 144 Fed. 139-1906 (C. C. Pa.), 151 Fed. 10-1907 (C. C. A. 3d Cir.) 172, 173 I. Ibbotson v. Peat, 3 H. & C. 644 350 Ide v. Engine Co., 31 Fed. 901 ... : 405 Illinois Cent. R. Co. v. Oaffrey, 128 Fed. 770-1904 (C. C. Mo.) 368 Imperial Mfg. Co. v. Schwartz, 105 111. App. 525-1903 207, 215, 216 Improved Fig Syrup Co. v. California Fig Syrup Co., 4 C. C. A. 264-1893, 54 Fed. 175 239 Inland Rev. Commissioners v. Muller & Co., App. Cas. 217-1901 1901 Insurance Oil Tank Co. v. Scott, 33 La. An«. 946-1881 86. 490 International Cheese Co. v. Phenix Cheese Co., 118 App. Div. (N. Y.) 499- 1907, 103 N. Y. Supp. 302 (3d Dept.) 255 International Committee. Y. W. C. A. v. Y. W. C. A. of Chicago, 194 111. 194-1902, 62 N. E. 551, 56 L. R. A. 888 = 58, 202 International Plasmon, Ltd. v. Plasmonade, Ltd., 23 R. P. C. 543-1905 (Ch. Div.) 271 International Register Co. v. Recording Fare Register Co., 151 Fed. 199-1907 C. C. A. 2d Cir.) 437 International Silver Co. v. Rogers, 07 Atl. 105-1907 144 International Silver Co. v. Rogers Bros. Cutlery Co., 130 Fed. 1019-1905 (€. C. W. D. Mich. 5th Dept. ) 137 International Silver Co. v. Rogers, 67 Atl. (X. J.) 105-1907 135, 146 International Silver Co. v. W. H. Rogers Corp., 66 X. J. Eq. 119-1904, 57 Atl. 1037 136, 208 International Silver Co. v. Simeon L. & George H. Rogers Co., 110 Fed. 955- 1901 (C. C. Conn.) 136 > 448 International Silver Co. v. Win. G. Rogers, 113 Fed. 526-1902; affd., 118 Fed. 133 137 International Silver Co. v. Win. H. Rogers Corp., 67 N. J. Eq. 646-1905, 60 Atl. 187, revg. 66 X. J. Eq. 119, 57 Atl. 1037 137 International Tooth Crown Co. v. Carmichael, 44 Fed. 350 405 International Trust Co. v. International Loan & Trust Co., 153 Mass. 271- 1891, 26 N. E. 693, 10 L. R. A. 753 206 Table of Cases. xxxi PAGE. Investor Publishing Co. of Mass. v. Dobinson, 72 Fed. 603-1896; modified in 82 Fed. 56-1897 (C. C. S. D. Cal.) 58, 108, 193, 194, 204 Iron-Ox Remedy Co., Ltd. v. Co-operative Wholesale Soc., Ltd., 24 R. P. C. 425-1907 ( Oh. Div., Parker, J. ) 272 Isaacson v. Thompson, 41 L. J. Ch. N. S. 101-1871 511 J. Jackson v. Stairfield, 137 Ind. 592 361 James v. James, 13 Eq. 421-1872 427 Jamieson v. Jamieson, 15 R. P. C. 169-1897 143 Jennings v. Johnson, 37 Fed. 364-1888 (C. C. Me.) 248, 340, 489, 491 Jewish Colonization Assn. v. Solomon, 125 Fed. 994-1903 (C. C. N. Y.) . .443, 444 Johnson v. Bauer & Black, 82 Fed. 662-1897 316 Johnson v. Helleley, 2 De G. J. & S. 446-1864 Ill Johnson v. Hitchcock, 3 N. Y. Supp. 680-18S8 (Sup. Ct. Sp. T.) 186 Johnson & Johnson v. Seabury & Johnson, 69 N. J. Eq. 696-706, 61 Atl. 5-1905, X. J. Eq. , 67 Atl. 36-1907 480, 497, 498 Johnston & Co. v. Orr Ewing & Co., L. R. 7 App. Cas. 219-25-1SS2 75 Jones v. Goodrich, 17 111. 380 188 Jones v. Hallworth, 14 R. P. C. 225-1897 313, 462 Jones v. Stanly, 76 N. C. 355-1877 361, 362, 364, 365 Jones & Jester v. Blocker, 43 Ga. 331-1871 363 Julian v. Hoosier Drill Co., 78 Ind. 40S-1S81 171, 504, 507 Jurgens, Andrew, Co. v. Woodbury, 56 Misc. (X. Y.) 404, 106 X. Y. Supp. 571-1907 (Sup. Ct. N. Y. Sp. T.) 98 K. Kann v. Diamond Steel Co., 89 Fed. 700-1898 (C. C. A. 8th Cir.), 32 C. C. A. 324 62 Katbreiner's Malzkaffee Fabrik v. Pastor Kneipp Med. Co., 82 Fed. 321-1897, 27 C. C. A. 351, 53 U. S. App. 425 222, 318 Keeble v. Hickeringill, 11 East, 574 349, 350, 351, 352, 354 Keller v. B. F. Goodrich Co., 117 Ind. 556-188S, 19 N. E. 196 59, 309 Kelley v. Ypsilanti Dress Stay Co., 44 Fed. 23 407 Kennedy v. Press Pub. Co., 41 Hun ( N. Y. ) , 422-1886 413 Kentucky Distillers and Warehouse Co. v. Wathen, 110 Fed. 641-1901 (C. C. Ky. ) 268 Kidd v. Horry, 2S Fed. 773-1886 (C. C. Pa.) 402, 403, 411, 413 Kidd v. Johnson, 100 U. S. 617-1879, 25 L. ed. 769 98, 101, 105, 108 Kiernan v. Manhattan Quotation Telegraph Co., 50 How. Pr. (N. Y.) 194- 1876 41S, 421 King & Co. v. Gillard, 21 R. P. C. 589 314 King & Co., Ltd. v. Gillard & Co., Ltd., 22 R. P. C. 327-1905, affg. 21 R. P. C. 589 ' 345 Kipling v. G. P. Putnam's Sons, 120 Fed. 631, 65 L. R. A. 873 53 Kline v. Eubanks, 109 La. 241-1802, 33 So. 211 359 Klotz v. Hecht, 73 Fed. 822-1896 (C. C. S. D. N. Y.) 340 Knight & Sons v. Crisp & Co., 21 R. P. C. 070-1904 475 Knott v. Morgan, 2 Keen, 213-1836 14, 16, 58 Koebel v. Chicago Landlord's Protective Assn., 210 111. 176-182-1904, 71 N. E. 362 57 xxxii Table of Cases. PAGE. Koehler v. Sanders, 122 N. Y. 65, 4 L. R. A. 576, 25 N. E. 235 259 Kohler Mfg. Co. v. Beeshore, 8 C. C. A. 215, 50 Fed. 572 487 Kostering v. Seattle Brewing & Malting Co., 116 Fed. 620-1902 (C. C. A. 9th Cir.) 76, 339 Krauss v. Jos. R. Peebles' Sons Co., 58 Fed. 585-1S93 (C. C. Ohio) 483, 485 Kronthal Waters, Ltd. v. Becker, 137 Fed. 649-1905 (C. C. E. D. Pa.) 323 Kroppf v. Furst, 94 Fed. 150-1899 ( C. C. N. J. ) 71 L. Labouchere v. Dawson, L. R. 13 Eq. Cas. 322-1872 Ill, 113, 439 La-lance & Grosjean Mfg. Co. v. National Enameling & Stamping Co., 109 Fed. 317-1901 (C. C. S. D. N. Y.) 311 Lamb v. Evans, 3 Ch. 462-1892; affd., 1 Oh. 218-1893, 62 L. J. Ch. 404. .431, 435 Lamb Knit Goods Co. v. Lamb Glove & Mitten Co., 120 Mich. 159-1899, 78 N. W. 1072, 44 L. R. A. 841 58, 219 Lamont, Corliss & Co. v. Hershey, 140 Fed. 703-4-1905 (C. C. N. D. Pa.) . . . 54 Lampert v. Judge & Dolph Drug Co., 119 Mo. App. 093-1900, 100 S. W. 659. 460 Landreth v. Landreth, 22 Fed. 41-1884 (C. C. Wis.) 139, 154 Lane v. Brothers and Sisters of the Evening Star Society, 120 Ga. 355-1904, 47 S. E. 951 20O La Republique Francaise v. Schulta, 102 Fed. 153-1900 (C. C. A. 2d Cir.) ... 509 La Societe Anonyme des Anciens Etablissements, Panhard et Levassor v. Panhard-Levassor Motor Co., 18 R. C. P. 405-1901 215 Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U. S. 537-1890, 34 L. ed. 997, 11 Sup. Ct. 396 44, 52, 53, 230, 255, 279, 288 Lawrence Mfg. Co. v. Lowell Hosiery Mills, 129 Mass. 325-1880 280 Lea v. Deakin, Fed. Cas. 8,154-1879 249 Leahy, Kelly & Leahy v. Glover, 10 R. P. C. 141-1891 475 Leather Cloth Co. v. American Leather. Co., 11 Jur. N. S. 513-1865, 4 De G. J. & S. 137-1863; affd., 11 H. L. Cas. 523-1865. .. .21, 34, 121, 240, 400, 482 489, 495 Lee v. Haley, L. R. 5 Ch. App. €as. 155-1869 58, 84, 148, 182, 268 Legal Aid Society v. Wage Earners' Legal Aid Assn., N. Y. L. J., April 21, 1908, Dowling, J 203 Leggott v. Barrett, 15 Ch. Div. 306-1880 Ill Leidersdorf v. Flint, 50 Wis. 400-1880, 7 N. W. 252 75 Le Massena v. Storm, 62 App. Div. (N. Y.) 150-1901, 70 N. Y. Supp. 882 396 411, 413 LePage Co. v. Russian Cement Co., 2 C. C. A. 555, 51 Fed. 941-1892, 17 L. R. A. 354 108, 275, 295, 472 Lepow v. Kottler, 115 App. Div. (N. Y.) 231-1906, 100 N. Y. Supp. 779 118 Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U. S. 166- 1906, 30 L. ed. 710, 26 Sup. Ct. 425, aff'g 134 Fed. 571-1904, 67 C. C. A. 418 304, 442 Lever v. Goodwin, 36 Ch. Div. 1-1887 471, 473 Levy v. Walker, L. R. 10 Ch. Div. 436-1879 35, 183 Lewis v. Langdon, 7 Simons 421-1835 119 Liebig's Extract of Meat Co. v. Chemists Co-operative Society, 13 R. P. C. 736-38 72 Liebig's Extract of Meat Co., Ltd. v. Libby, McNeill & Libby, 103 Fed. 87-1900 (C. C. N. D. 111.) 145, 341 Table of Cases. xxxiii PAGF. Liebig Extract of Meat Co., Ltd. v. Walker, 115 Fed. 822-1902 144 Life Association of America v. Boogher, 3 Mo. App. 173-1876 400 Liggett & Myer Tobacco Co. v. Hynes, 20 Fed. 883-1S84 (D. C. Ark.) 468 Link v. Architectural Iron Works, 24 111. 551-1860 217 Linoleum Manufacturing Co. v. Nairn, 7 Ch. Div. 834-1S78 176 Lippman v. Martin, 5 Ohio N. P. 120, 8 Ohio Dec. 485-1898 184 Listman Mill Co. v. Wm. Listman Milling Co., 88 Wis. 334-1894, 60 N. W. 261 99, 120 Little v. Gallus et al., 4 App. Div. (N. Y.) 569-74-1896, 38 N. Y. Supp. 487. 431 Little v. Kellam, 100 Fed. 353-1900 (C. C. N. D. N. Y.) 271 London & Northern Bank v. Newnes, 16 Times L. R. 76-1899 417 London Guarantee, etc., Co. v. Horn. 206 111. 493-1906 376 Loog v. Bean, L. R. 26 Ch. Div. 306-1884 402, 403 Lorillard Co. v. Peper, 86 Fed. 956-1898 (C. C. A. 8th Cir.) 72, 161 Lorillard v. Wight, 15 Fed. 383-1883 ( C. C. Md.) 320 Low v. Fels, 35 Fed. 361-1SSS (C. C. E. D. Pa.) 510 Ludington Novelty Co. v. Leonard, 127 Fed. 155-1903 (C. C. A. 2d Cir.) ... 462 Lumley v. Gye, 2 E. & B. 216-1853 352, 360, 361, 362, 364, 366 Lynn, W. R., Shoe Co. v. Auburn-Lynn Shoe Co., 100 Me. 461, 69 Atl. 569-1907 461 M. Mack v. Petter, L. R. 14 Eq. 431-33-1 S72 195 MacMahan Pharmacal Co. v. Denver Chemical Mfg. Co., 113 Fed. 468-74, 51 C. C. A. 302-1901 104 Magee Furnace Co. v. Le Baron, 127 Mass. 115-1879 295 Magnolia Metal Co. v. Tandem Smelting Syndicate, Ltd., 15 R. P. C. 701- 189S 267 Mahler v. Sanche, 223 111. 136-1906, 79 N. E. 9, revg. 121 111. App. 247 423 Manhattan Medicine Co. v. Wood, 108 U. S. 218-1882, 27 L. ed. 706, 2 Sup. Ct. 436 247, 482, 48S, 49f> Manufacturing Co. v. Trainer, 101 U. S. 55, 25 L. ed. 993 279, 446 Mappin & Webb, Ltd. v. Leapman. 22 R. P. C. 398-1905 (Ch. Div.) 93 Marcus Ward v. Ward, 40 N. Y. St. Rep. 792, 15 N. Y. Supp. 913 279 Marks v. Jaffa, 6 Misc. (N. Y.) 290-1893, 26 N. Y. Supp. 908 38 Marlin Fire Arms Co. v. Shields, 171 N. Y. 384-1902, 64 N. E. 163. 59 L. R. A. 310 401, 405, 411. 412 Marsh v. Billings, 7 Cush. 322-1851, 61 Mass. 322-1851 179, 187, 3S5 Marshall v. Pinbham, 52 Wis. 572-1881, 9 N. W. 615 123, 160 Marshall v. Ross, L. R. 8 Eq. 651-1869 496 Martens v. Reilly, 109 Wis. 464-1901, 84 N. W. 840 Martin v. Nutkin, 2 P. Wins. 266-1724 40 Martin v. Wright, 6 Sim. 297-1S33 398 Marvel Co. v. Fuller Co., 125 Fed. 829-1903 (C. C. N. Y.) 285 Marvel Co. v. Pearl, 133 Fed. 160-1904 (C. C. A. 2d Cir.) 79, 262 Marx & H. J. Clothing Co. v. Watson, 168 Mo. 133-1901, 67 S. W. 391, 56 L. R. A. 951 406 Massachusetts & Baltimore Car Wheel Co. v. Bemis, 29 Fed. 95-1886 (C. C. Mass.) '. 402 Massam v. Thorley's Cattle Food Co., 14 Ch. Div. 748-1880 128, 212 Matsell v. Flanagan, 2 Abb. Pr. N. S. (N. Y.) 459-1867 58, 192, 207, 444 xxxiv Table of Cases. PAGK. Manger v. Diek, 53 Hew. Pr. 132-1878 400, 413 Maxwell v. Hogg, L. R. 2 Ch. App. 307-1867 196, 400 May v. Thompson, 20 Oh. Div. 718 91 May v. Wood, 172 Mass. 11-1898, 51 X. E. 191 359 Mayer v. Journeymen Stonecutters' Assn., 47 N. J. Eq. 519-1890, 20 Atl. 492 413 Mayor of Bradford v. Pickles, 64 L. J. Ch. 101-1895 355 McAndrew v. Bassett, 4 De G. J. & S. 380-1864 56, 236 McBride v. O'Neal, 128 Ga. 473-1907, 57 S. E. 789, Miss. Code 1892, § 1068. 364 McCann v. Anthony, 21 Mo. App. 83-1886 47, 57, 344 McCann v. Wolff, 28 Mo. App. 447-1888 359 McCardel v. Peck, 28 How. Pr. (N. Y.) 120-1864 508 McCartney v. Garnhart, 45 Mo. 593-1870 277 McCaw, .Stevenson & Orr, Ltd. v. Lee Bros., 23 R. P. C. 1-1905 (Ch. Div.) . . 505 McFell Electric & Telephone Co. v. McFell Electric Co., 110 111. App. 182- 85-1903 109, 184 McKillopp v. Taylor, 25 X. J. Eq. 139-1874 40 MeLx-an v. Fleming, 96 U. S. 245-1877, 24 L. ed. 828 32, 36, 51, 52, 62, 6S 71, 73, 75, 98, 127, 268 McVey v. Brendel 144 Pa. St. 235 T 1891, 22 Atl. 912, 13 L. R. A. 377 478 .Mead v. Stirling, 62 Conn. 586-1892, 27 Atl. 591, 23 L. R. A. 227 40 Mela.chrino, M., & Co. v. Melachrino Egyptian 'Cigarette Co., 4 R. P. C. 215- 1887 176 Meldrum v. Shubert, 2 111. Cir. Ct. Rep. 293-1904 57 Memphis Keeley Institute v. Leslie E. Keeley Co., 155 Fed. 964-1907 (C. C. A.) 481 Meneely v. Meneely, 62 X. Y. 427-1875 130, 183 Menendez v. Holt, 128 U. S. 514-1888, 32 L. ed. 526, 9 Sup. Ct, 143 92, 120 507, 516 Merchant Banking Co. v. Merchants' Joint Stock Bank, 9 Ch. Div. 560-1878 . . 224 Merchants' Detective Assn. v. Detective Mercantile Agency, 25 111. App. 250-1888 184, 198, 204 Merriam v. Famous Shoe & Clothing Co., 47 Fed. 411-1891 (C. C. E. D. Mo. ) 302 Merriam, G. & C, Co. v. Ogilvie, 159 Fed. 038-1908 (C. €. A. 1st Cir.), modifying 149 Fed. 858 302 Merriam, G. & C, Co. v. Straus. 130 Fed. 477-1904 (C. C. S. D. X. Y.) 195 Merriam v. Texas Sif tings Pub. Co., 49 Fed. 944-1892 (C. C. S. D. X. Y.) 302 Merry v. Hoopes, 111 X. Y. 415-1888, 18 X. E. 714 99, 117, 120 Merryweather v Moore, 2 Ch. 518-1892 429 Messerole v. Tynberg, 4 Abb. Pr. X. S. 410-1868 253 Metcalfe v. Brand, 86 Ky. 331-1887. 5 S. W. 773 256 Metropolitan Xat. Bank v. St. Louis Dispatch Co., 36 Fed. 722-1888 (C. C. Mo.) 89 Metzler v. Wood, 8 Ch. Div. 606-1878 194 Meyer v. Dr. Bull Vegetable Medicine Co.. 58 Fed. 884-1893 (C. C. A. 7th Cir.) 78, 451 Michigan Condensed Milk Co. v. Kennewe.o- Co., 30 App. D. C. 491 504 Miles, Dr., Medical Co. v. Piatt, 142 Fed. 606-1906 420 Table of Cases. xxxv PAGE 1 . Miller, The Mrs. G. B., & Co. Tobacco M'f'y v. Commerce, 45 N. J. L. 18- 1883 43, 51, 270 Millington v. Fox, 3 Myl. & Cr. 388-1838 15, 22, 31. 45, 46, 47, 48, 176 Miskell v. Prokop, 53 Neb. 62S-1S99, 79 N. W. 522 86 Mitchel v. Reynolds, 1 P. Wins. 181; 1 Smith Lead. Cas. Pt. II 508 423 Mitchell v. Henry, 15 Ch. Div. 181-1880 7, 469 Mitchell v. Williams, 106 Fed. 168-1901 (C. C. A. 7th Cir.) 452 Mogul SS. Co. v. McGregor, Gow & Co., L. R. 23 Q. B. 598-1889. .26, 348, 359, 360 Moller v. Lambert, 2 Campb. 548 1S8 Monopol Tobacco Works v. Gensior, 32 Misc. (N. Y.) 87-1900, 66 N. Y. Supp. 155 308 Montgomery v. Thompson, ( 1891 ) A. C. 217, 64 L. T. R. 748 138 Moore v. Ra.wson, 185 Mass. 264-1904 118 Moore, Benjamin, & Co. v. Anwell, 158 Fed. 1908 (€. C. N. Y.) 446 Moorman v. Hoge, 2 Sawy. 78-1871 ( C. C. Cal.) 82 Morgan v. Andrews, 107 Mich. 33 361 Moran v. Dunphy, 177 Mass. 485 361, 364, 376 Morasse v. Brocher, 151 Mass. 567 364 Morgan's, Enoch, Sons Co. v. Edler, Cox's Manual 714-1890 273. Morgan's Sons Co. v. Troxell (rev'g 23 Hun, 632-1S81), 89 N. Y. 292-1882, 42 Am. Rep. 294 75, 312 Morgan's Sons Co. v. Troxell, 23 Hun (N. Y.), 632-1881 76; Morgan's Sons, Enoch, Co. v. Whittier-Coburn Co., 118 Fed. 657-1902 (C. C. N. D. Cal.) 339, 472 Morison v. Moat, 20 L. J. ST. IS. Ch. 513-1851, affirmed on appeal. 21 L. J. X. S. Ch. 248, 9 Hare 241-1851 420, 422, 428, 429 Morrall. Abel, Ltd. v. Hessin & Co., 20 R. P. C. 429-1903 (Ct. App.) 93 Morse v. Hall, 109 Mass. 409 444 Morton v. Morton, 148 Cal. 142-1905. 82 Pac. 664, 1 L. R. A. N. S. 660n 140 Mossier v. Jaeobs, 66 111. App. 571-1896 86, 273, 478 Mouson & Co. v. Boehm, L. R. 26 Ch. Div. 398-1884 504 Moxie Nerve Food Co. v. Baumbach, 32 Fed. 205-1887 (C. C. E. D. Tex.) . . . 339 . Moxie Nerve Food Co. v. Holland, 141 Fed. 202-1905 (C. C. R. I.) 487, 502 Moxie Nerve Food Co. v. Modox Co., 152 Fed. 493-1907 (C. C. R. L), 153 Fed. 487-1907 (C. C. R. I.) 478, 479, 485, 486 Moxley Co. v. Braun & Fitts Co., 93 111. App. 1S3-1900 343, 499 Mueller Mfg. Co. v. McDonald & M on Mfg. Co., 164 Fed. 1001-1909.. 286, 318 Mulkern v. Ward, L. R. 13 Eq. 619-1872 393, 399 Mumm v. Kirk, 40 Fed. 589-1889 (C. C. S. D. N. Y.) 310 Munro v. Tousey, 129 N. Y. 38-1891, 29 N. E. 9, 14 L. R. A. 245n 72, 189 Murray v. Gast Lithographic Co., 8 Misc. (N. Y.) 36-1894, 2S N. Y. Supp. 281 38 Myers v. Kalamazoo Buggy Co., 54 Mich. 215, 10 N. W. 545, 52 Am. Rep. 811 98, 114 Myers v. Theller, 38 Fed. 607-1889 (C. C. S. D. N. Y.) 340 N. Nashville, C. & St. L. Ry. Co. v. McConnell, 82 Fed. 65-1897 (€. C. Tenn.) . . 368 Nathan Manufacturing Co. v. H. A. Rogers Co., N. Y. Law Jour., February 27, 1909 292-301 xxxvi Table of Cases. PAGE. National Folding Box and Paper Co. v. National Folding Box Co., 43 Wkly. Repr. 156 225 National Gum & Mica Co. v. Braendly, 27 App. Div. (N. Y.) 219, 51 N. Y. Supp. 93 430 National Phonograph Co., Ltd. v. Edison Bell, etc., Co., 1 Ch. 335-1908. .361, 378 National Phonograph Co., Ltd. v. Edison-Bell Consol'd Phonograph Co., Ltd., 24 T. L. R. 201-1907 378 National Telegraph News Co. v. Western Union Telegraph Co., 119 Fed. 294- 1902 ( C. C. A. 7th Cir. ) , 60 L. R. A. 805 366 National Starch Mfg. Co. v. Duryea, 101 Fed. 117-1900 (C. C. A. 2d Cir.) . . 155 National Starch Co. v. Koster, 146 Fed. 259 448 Nesne v. Sundet, 101 N. W. 490-1904, 93 Minn. 299 56, 174, 21(5 Neth v. Ohmer, 30 App. D. C. 478-1908 433 Newark Coal Co. v. Spangler, 54 N. J. Eq. 354-1896, 34 Atl. 932 183 Newbro v. Undeland, 69 Neb. 821-1903, 96 N. W. 635 487 Newby v. Oregon Cent. Ry. Co., 1 Deady 609-1869, Fed. Cas. No. 10,144. .50, 58, 199, 204, 217 New England Awl & Needle Co. v. Marlborough Awl & Needle Co., 168 Mass. 154-1897, 46 N. E. 386 56, 66, 82, 311 Newman v. Alvord, 49 Barb. 588-1867 ; affd., 51 N. Y. 189-1872. .. .241, 253, 257 Newman v. Pinto, 4 R. P. C. 508-1887 ( Ct. App.) 489 N. Y. Asb. Mfg. Co. v'. Ambler, etc., Co., 102 Fed. 890 447 N. Y. Asbestos Mfg. Co. v. Ambler Asb. Air-Cell Cov'g Co., 99 Fed. 85 447 N. Y. Cab Co. v. Mooney, 15 W. N. Cases, 152-1884 329 N. Y. C. & H. R. R. Co. v. Reeves, 85 N. Y. Supp 28-1903 368 New York Filter Co. v. Schwarzwalder, 58 Fed. 579 407 New York & Rosendale Cement Co. v. Coplay Cement Co., 44 Fed. 277-1890 (C. C. A.), 10 L. R. A. 833, 45 Fed. 212-1891 52, 22S, 229 Nicholson, J. & W., & Co. v. Buchanan, 19 R. P. C. 321-1900 103, 173, 178 Noel v. Ellis, 89 Fed. 978-1896 (C. C. S. D. Iowa) 270 Nokes v. Mueller, 72 111. App. 431 32S Nolin v. Pearson, 191 Mass. 283-1906 361 Nordenfelt v. The MaximNordenfelt Guns & Ammunition Co. (1894) App. Cas. 535 96 North Cheshire & Manchester Brewery Co., The, Ltd. v. The Manchester Brewery Co., Ltd., App. Cas. 83-1899 49, 212 Northcutt v. Turney, 101 Ky. 314 444, 509 Noice v. Brown, 39 N. J. 569 366 O. Oakes v. Tonsmierre, 4 Woods 547-1 8S3 ( C. C. Ala.) 98 O'Grady v. McDonald, — N. :J. Eq. — , 66 Atl. 175-1907 180 Ohio Baking Co. v. National Biscuit Co., 127 Fed. 116-1904 (C. C. A. 6th Cir.) 335 Omega Oil Co. v. Weschler, 35 Misc. (N. Y.) 441-1901 24 Oppermann v. Waterman, 94 Wis. 583-1896, 69 N. W. 569 339 Original La Tosca Social Club v. La Tosca Social Club, 23 App. D. C. 96-1904 223 Orr, Ewing & Co. v. Johnston & Co., L. R. 13 Ch. Div. 434-18S0 58, 75 Ottoman Cahvey Co. v. Dane, 95 111. 203-1880. 202 Table of Cases. xxxvii P. PAGE. Packham & Co., Ltd. v. Sturgess & Co., 15 R. P. C. 669-1898 342 Paine & Co. v. Daniell & Sons' Breweries, Ltd., 10 R. P. C. 71-1893 266 Palmer v. De Witt, 47 N. Y. 532-1872 419 Palmer v. Harris, 60 Pa. St. 156-1869 30, 489 Paris Medicine Co. v. W. H. Hill Co., 102 Fed. 148-1900 (C. C. A. 6th Cir.) . . 485 486 Park, John D., & Sons Co. v. Hartman, 153 Fed. 24-1907 (C. C. A. 6th Cir.), 12 L. R. A. N. S. 135, note 123, 380, 382, 383, 422, 424 839 Parkland Hills Blue Lick Water Co. v. Hawkins, 95 Ky. 502-1894, 26 S. W. 389 239 Parlett v. Guggenheimer, 67 Md. 542-1887, 10 Atl. 81 337 Parsons Bros. & Co. v. Gillespie & Co., 15 R. P. C. 57-1897 263 Partridge v. Menck, 2 .Sandf. Ch. (N. Y. ) 622-1845 183 Pasley v. Freeman, 3 Term Rep. 51-1789 371 Payton & Co. v. Snelling, Lampard & Co., App. Cas. 308-1901 58, 71 Payton & Co. v. Snelling, Lampard & Co., Ltd., 17 R. P. C. 48-53-1900 314 Peabody v. Norfolk, 98 Mass. 452-1867, 96 Am. Dec. 664 419, 420, 422, 425 Pearce v. Crutchfield, 14 Ves. Jr. 206-1807 38 Pearson v. Pearson, L. R. 27 Ch. Div. 145-1884 Ill, 113 Peck Bros. & Co. v. Peck Bros. Co., 113 Fed. 291-1902 (C. C. A. 7th Cir.), 51 C. C. A. 251, 62 L. R. A. 81 99, 108, 199, 221 Penberthy Injector Co v. Lee, 120 Mich. 174-1899, 78 N. W. 1074. . .218, 220, 456 Penn. R. Co. v. Beekman, 30 Wash. (D. C.) Law Rep. 715-1902 308 Pennsylvania Iron Works Co. v. Henry Voght Machine Co., 29 Ky. L. Rep. 861-1900, 96 S. W. 551, 6 L. R. A. N. S. 1023 412 Pennsylvania Salt Mfg. Co. v. Myers, 79 Fed. 87-1897 (C. C. E. D. Mo.) 321 People v. Sheldon, 139 N. Y. 251 347 People's Gas Co. v. Tyner, 131 Ind. 277-1891, 31 N. E. 59, 16 L. R. A. 443. . 40 Perkins v. Pendleton, 90 Me. 166 376 Perkins Electric Lamp Co. v. Hood, 44 111. App. 449-1892 217 Perry v. Truefitt, 6 Beav. 66-1842 25, 484 Pettes v. American Watchman's Clock Co., 89 App. Div. (N. Y.) 345-1903, 85 N. Y. Supp. 900 216 Pfeiffer v. Wilde, 107 Fed. 456 448 Phalon & Son v. Wright, 5 Phila. 464-1864 485 Philadelphia Novelty Co. v. Blakesley Novelty Co., 37 Fed. 305-1889 (C. C. Conn.) 317 Philadelphia Novelty Mfg. Co. v. Rouss, 40 Fed. 585-1889 (C. C. S. D. N. Y.) 82, 310, 345 Pidding v. How, 8 Sim. 477-H837 482, 484 Pierce v. Franks, 15 L. J. Ch. N. S. 122-1846 188 Pierce v. Guittard, 68 Oal. 68-1885, 8 Pac. 645 268, 276 Pike, A. F., Mfg. Co. v. Cleveland Stone Co., 35 Fed. 896-1888 241 Pillsbury v. Pillsbury-Washburn Flour Mills Co., 64 Fed. 841-1894 (C. C. A. 7th Cir. ) 147, 468 Pillsbury-Washburn Flour Mills Co., Ltd. v. Eagle, 86 Fed. 608-1898, 30 C. C. A. 380, 41 L. R. A. 162, revg. 82 Fed. 816-1'897 229, 237, 252, 257 Pinet, F., et Cie v. Madison Louis Pinet, Ltd., 15 R. P. C. 65-1S97; see also s. c. 14 R. P. C. 933-L897 139, 153 Plant v. Woods, 176 Mass. 492-1900, 57 N. E. 1011, 51 L. R. A. 339 364, 371 xxxviii Table of Cases. PAGE. Plant Seed Co. v. Michel Plant & Seed Co., 37 Mo. App. 313-1889 217, 277 Follard v. Photographic Co., 40 Ch. Div. 345-1889 223, 419 Popham v. Cole, 66 N. Y. 69-1876, 23 Am. Rep. 22 75 Postal Tel. Cable Co. v. Netter, 102 Fed. 691 447 Postum Cereal Co. v. American Health Food Co., 119 Fed. 848-1902 (C. C. A. 7th Cir.), 56 C. C. A. 360 62, 272, 341 Potter v. McPherson, 21 Hun ( X. Y. ) 559-1880 194, 272 Potter Drug & Chemical Corp. v. Pasfield Soap Co., 102 Fed. 490-1900, affd. 273 Powell v. Birmingham Vinegar Brewery Co., 2 Ch. 54-1896, L. R. App. Caa. 710-1S97 32, 143, 170, 176, 334, 470, 515 Pratt's Appeal, 117 Pa. St. 401-1888, 11 Atl. 878 49, 50 Preservaline Mfg. Co. v. Heller Chemical Co., 118 Fed. 103-1902 (C. C. 111.) 495 Prince Albert v. Strange, 1 Hall & T. 1-1849, p. 24 434 Prince Mfg. Co. v. Prince's Metallic Paint Co., 135 N. Y. 24-LS92, 31 N. E. 990, 17 L. R. A. 129 467, 482 Prince's Metallic Paint Co. v. Prince Mfg. Co., 57 Fed. 938-1893 (C. C. A. 3d Cir.) 516 Prince de Wagram v. Marais' 'Cour de Paris, Dec. 2, 1871, Dalloz, 2, 185. . . . 352 Probasco v. Bouyon, 1 Mo. App. 241-1876 98 Proctor & Gamble Co. v. Globe Refining Co., 92 Fed. 357-1899 (C. C. A. 6th Cir.) 331, 341 Prudential Assurance Co. v. Knott, L. R. 10 Ch. App. Cas. 142-1875 38, 393 400, 403 Punch v. Boyd, L. R. Ir. 16 Q. B. D. 476-1885 417 Punnett, Ex parte, 16 Ch. Div. 226-1880 90 Putnam Nail Co. v. Bennett, 43 Fed. 800-1890 52, 255, 288, 289 Putnam Nail Co. v. Dulaney, 140 Pa. St. 205-1891, 21 Atl. 391, 11 L. R. A. 524 288 Q. Quinn v. Leathern, App. Cas. 495-1901 353, 360, 361, 362, 376, 377, 379 R. Radam v. Capital Microbe Destroyer Co., 81 Tex. 122-1S91, 16 S. W. 990. ... 345 Rains & Sons v. White, Haucke & Co., 107 Ky. 114-1899, 52 S. W. 970 337 Randall v. British & American Shoe Co., 19 R. P. C. 393-1902 80 Ransome v. Bentall, 3 L. J. Ch. N. S. 101 280 Rapp v. Over, 3 Brewst. (Pa.) 133-1869 115 Raymond v. Royal Baking Powder Co., 29 C. C. A. (7th Cir.) 245-1898, 85 Fed. 231 505 Raymond v. Russell, 143 Mass. 295-1S87, 9 N. E. 544 397 Raymond v. Yarrington, 73 S. W. S00, 021 L. R. A. 962, 96 Tex. 443-1903, 96 Tex. 400 361, 374 Read Brothers v. Richardson & Co., 45 L. T. N. S. 54-1881 (Ct. App.) .... 75 258, 471 Reddaway v. Banham, App. Cas. 199-1896 25, 166, 169 Reed, Dr. A., Cushion Shoe Co. v. Frew, 15S Fed. 552-1908 (C. C. N. Y.) . . 510 Regent Shoe Mfg. Co. v. Haaker, 75 Nebr. 426, 106 N. W. 595-190-6 4!)1 Regis v. Jaynes & Co., 185 Mass. 45S-1904, 70 N. E. 480 270 Table of Cases. xxxix PAGE. Regis v. Jaynes & Co., 191 Mass. 245 457 Renft v. Reimer, 200 111. 3S6-1902, 05 N. E. 720 114 Revere Rubber Co. v. Consolidated Hoof Pad Co., 139 Fed. 151-1905 (C. C. S. D. N. Y. ) 2G2 R. T. Reynolds Tobacco Co. v. Allen Bros. Tobacco Co., 151 Fed. 819-1907 (C. C. Va.) 321, 474 Rice v. Albee, 164 Mass. 88, 41 N. E. 122 371 Rice v. Manley, 66 N. Y. 82-1876 352, 362, 370, 375 Rice^Stix & Co. v. J. A. Scriven Co, 165 Fed. 639-1908 299 Rich v. N. Y. C. & H. R. R. Co., 87 N. Y. 392-1882 375 Richards v. Williamson 298 Richmond Nervine Co. v. Richmond, 159 U. S. 293-1895, 40 L. ed. 155, 16 Sup. Ct. 30 105, 108 Richter v. Reynolds, 59 Fed. 577-1S93 (C. C. A. 3d Cir.) 11 Rickerby v. Reay, 20 R. P. C. 380-1903 (Ch. Div.) 89, 100 Ripley v. Griffiths. 19 R. P. C. 591-1902 169 Robb v. Green, 2 Q. B. D. 315-1895. And see 2 Q. B. D. 1 439 Roberson v. Rochester Folding Box Co.. 171 N. Y. 538-1902, 64 N. E. 442, 59 L. R. A. 47S 39 Roberts v. McKee, 29 Ga. 161-1859 440 Robertson v. Berry & Co., 50 Md. 591-1878 32, 189 Robinson v. Storm, 103 Term. 40-1899, 52 S. W. 880 158 Robinson v. Texas Pine Lands Assn., 40 S. W. 843-1897 (C. C. A. Tex.) .... 385 Rodgers v. Nowill, 6 Hare, 325-1846, 3 De G. M. & G. 614-1853 127, 514 Rogers, R. W., Co. v. Wm. Rogers Mfg. Co., 17 C. C. A. 576, 70 Fed. 1017- 1895 108, 210, 217 Rogers, Wm. A. v. International Silver Co., 30 App. Ca.s. (D. C.) 97-1908... 7 Rogers, William G., Co. v. International Silver Co., 118 Fed. 133 444 Rogers, William, Mfg. Co. v. Rogers M.fg. Co., 16 Phila. 178 (Com. PI. Phila. 1883) 134, 146 Rollins v. Hinks, L. R. 13 Eq. 355-1872 399 Rose Hill Race Course Company, The, In re, 5 St. Reps. New South Wales, 402-1905 94 Routh v. Webster, 10 Beav. 561-1S47 38, 391, 400 Rowland v. Michell, 14 R. P. C. 37-1896 (reported in Ch. Div. 13 R. P. C. 457 ) 273 Rowley v. Houghton, 2 Brewst. (Pa. ) 303-1868 273 Rowley, J. F., Co. v. Rowley, 154 Fed. 744-1907 (C. C. Pa.), modified 161 Fed. 94 140 Royal Baking Powder Co. v. Davis, 26 Fed. 293-li8S5 (C. €. E. D. Mich.) . . 333 Royal Baking Powder Co. v. Royal, 122 Fed. 337-1903, 58 C. C. A. 499-506. . 131 Roycroft v. Tayntor, 68 Vt. 219 376 Rubel v. Allegretti Chocolate Oream Co., 76 111. App. 581-1898 147 Rugby Portland Cement Co., Ltd. v. Rugby & N. P. C. 'Co., Ltd.. 9 R. P. C. 46-1891 231 Rumford Chemical Works v. Muth, 1 L. R. A. 44-1888, 35 Fed. 524 273 Rushmore v. Manhattan Screw & Stamping Works, 163 Fed. 939-1908 (C. C. A. 2d Cir.) 292 Rushmore v. Saxon, C.*C. A. 2d Cir., Nov., 1908 80, 292, 448 Rushmore, Samuel W. v. Manhattan Screw & Stamping W T orks (C. C. A. July, 1908) 308 xl Table of Cases. PAGE. Russia Cement Co. v. Franenhar, 133 Fed. 518-1904 (C. C. A.) 324 Russia Cement Co. v. Katzenstein, 109 Fed. 314-1901 (C. C. S. D. N. Y.) . . . 324 Russia Cement Co. v. LePage, 147 Mass. 206-1888, 17 X. E. 304.... 97, 147, 158 Rutter & Co. v. Smith, 18 R. P. C. 40-1901 475 S. Salomon v. Hertz, 40 N. J. Eq. 400-1885. 2 Atl. 379 419, 434, 437 Samuel v. Berger, 24 Barb. 163-1856 (X. Y. Sup. Ct.) 97 Samuel Bros & Co. v. Hostetter Co., 55 C. C. A. Ill, 118 Fed. 257 236, 487 Samuels v. Spitzer, 177 Mass. 226-1900, 58 N. E. 693 8(3 Sanders v. Jacob, 20 Mo. App. 96-1885 58 Sanders v. (Jtt, 16 Mo. App. 322-1884 253 Sarrazin v. Irby Cigar & Tobacco Co., Ltd., 35 C. C. A. 496, 93 Fed. 624- 1899, 46 L. R. A. 541n 6, 108 Sartor v. Schaden, 125 Iowa, 61)6-1904, 101 N. W. 511... 3, 11, 37, 41, 174, 266 497, 506 Sawyer Crystal Blue Co. v. Hubbard, 32 Fed. 388-1 8S7 (C. C. Mass.) . . .327, 335 Sawyer v. Kellogg, 7 Fed. 720-1881 (C. C. N. J.) 333 Saxby v. Easterbrook 390 Saxlelmer v. Eisner & M. Co., 147 Fed. 189-1906 (C. C. A. 2d Cir.), affg. 140 Fed. 93S-1905 ( C. C. S. D. X. Y.-) 443, 446 Saxlelmer v. Eisner & Mendelson Co., 88 Fed. 61-1898 (C. C. S. D. N. Y.), 138 Fed. 22-1905 (C. C. A. 2d Cir.), 179 U. S. 19-1900, 44 L. ed. 60, 21 Sup. Ct. 7 ; 460, 461, 503, 509 Saxlehner v. Xielson, 179 U. S. 43-1900, 44 L. ed. 77. 21 Sup. Ct. 16 514 Schenker v. Auerbach, 89 App. Div. (N. Y.) 612 448 Scheuer v. Muller, 74 Fed. 225-1896. 20 C. C. A. 161 6S Schmidt v. Brieg, 100 Cal. 672-1893, 35 Pac. 623. 22 L. R. A. 790 308, 508 Schoenhofen, Peter, Brewing Co. v. Maltine Co., 30 App. Gas. (D. C.) 340- 1908 4 School of Magnetic Healing v. McAnnulty, 187 U. S. 94-1902, 23 Sup. Ct. 33, 47 L. ed. 90 502 Schuster Co. v. Muller, 28 App. Cas. (D. C.) 409-1906 487 Schuyler v. Curtis, 147 N. Y. 434-1895, 42 X. E. 22, 31 L. R. A. 286 38 Schweppes, Ltd. v. Gibbens, 22 R. P. C. 601-1905 345 Scidmore v. Smith, 13 Johns. (X. Y.) 322-1S16 363 Scott v. Bay, 3 Md. 431-1S53 40 Scott v. Thackery, 89 Cal. 258-62 513 Scriven, J. A., Co. v. Chard Co., 140 Fed. 794-1905 (C. C. S. D. X. Y.) 266 Scriven, J. A., Co. v. Morris, 154 Fed. 914-1907; affd., 158 Fed. 1020 304 Scriven v. North, 134 Fed. 366-1904 (C. C. A. 4th Cir.), 67 C. C. A. 348, s. c, modifying 124 Fed. 894-1903 (C. G. Md. ) ... 10, 66, 299, 304, 465, 468, 472 Seabury v. Grosvenor, 14 Blatchf. (U. S. ) 262-1877 480 Seeley v. Fisher, 11 Sim. 581-1841 391, 398, 399 Seixo v. Provezende, L. R. 1 Ch. App. 192-1865 170. 240, 317 Selohow v. Chaffee & Selchow Mfg. Co., 132 Fed. 996-1904 (C. C. S. D. N. Y.) 275 Shaver v. Heller & Merz Co., 108 Fed. 821-1901 (C. C. A. 8th Cir.), 65 L. R. A. 878 26, 36, 106, 479 Shaver v. Shaver, 54 Iowa, 208-1880, 6 X. \V. 188 3, 98 Shaw v. Pilling, 175 Pa. St. 78-L896 293 Table of Cases. xli PAGE. Shaw Stocking Co. v. Mack, 21 Blatchf. 1-1882 (C. C. X. Y.) 281 Shelley v. Westbrooke, Jac. 266-1821 38 Shepard v. Stuart, Am. T. M. Cas. (Price & S. 193, 1 B. Phil. 117) 468 Shepherd v. Wakeman, 1 Sid. 79 352 Shepp v. Jones, 35 Wkly. Notes Cas. (Pa.) 29-1892 287 Sherwood v. Andrews, 5 Am. L. R. N. S. 588-1866 247, 489 Shoemaker v. South Bend Spark Arrester Co., 135 Ind. 471-1S93, 35 N. E. 280, 22 L. R. A. 332 407 Shonk Tin Printing Co. v. Shonk, 138 111. 34-1891, 27 N. E. 529 436 Siegert v. Abbott, 61 Md. 276-1883 482, 489 Siegert v. Eiseman, 157 Fed. 314-1907 (C. C. N. Y.) 462 Seigert v. Findlater, 7 Ch. Div. 801-1878 170 Siegert v. Gandolfi, 149 Fed. 100-1906 (C. C. A. 2d Cir.) 245, 487 Silver Spring Co. v. Woolworth, 16 R. I. 729-1886, 19 Atl. 528 434 Simmonds Medicine Co. v. Mansfield Drug Co., 93 Tenn. 84-1893, 23 S. W. 165 476, 497 Simmons, C. F., Medicine Co. v. Simmons, 81 Fed. 163-1897 (C. C. Ark.) .. 317 340, 438 Singer Machine Manufacturers v. Wilson, L. R. 3 App. Cas. 376-1877. . . .31, 32 46, 48, 468 Singer Mfg. Co. v. Domestic Sewing Machine Co., 49 Ga. 70-1873 398, 413 Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169-1895, 41 L. ed. 116, 16 Sup. Ct. 1002 82, 144, 156, 303 Singer Mfg. Co. v. Loog, L. R. 8 App. Cas. 15-1882, 18 Ch. Div. 395- 1880 13-22, 28, 31, 467, 471 Singleton v. Bolton, 3 Dougl. 293 14 Skinner v. Oakes, 10 Mo. App. 45-1881 101 Slater v. Slater, 175 N. Y. 143-1903, 67 N. E. 224, 61 L. R. A. 796. .119, 120, 121 Smith v. David H. Brand & Co., 67 N. J. Eq. 529-1904, 58 Atl. 1029 117 Smith v. Everett, 27 Beav. 446-1859 119 Smith v. Kernan (Ohio), 5 Law Bui. 145, 8 Ohio Dec. Reprint, 32 419 Smith v. Smith, 3 Atk. 304-1745 38 Smith & Davis Mfg. Co. v. Smith, 89 Fed. 486-1898 (C. C. N. D. 111.) 279 Snow v. Judson, 38 Barb. (N. Y. ) 210-1S62 371, 401 Snowden v. Noah, 1 Hopk. (N. Y.) 348-1825 192 Snyder Mfg. Co. v. Snyder, 54 Ohio St. 86-1896, 43 N. E. 325, 31 L. R. A. 657 99 Social Register Assn. v. Howard, 60 Fed. 270-1894 (C. C. N. J.) 195 Social Register Assn. v. Murphy. 128 Fed. 116-1904 (C. C. R. I.) 195 Smithies v. National Association of Operative Plasterers, 1 K. B., 310-1909. 359 376 Societe Anonyme, etc. v. Western Distilling Co., 43 Fed. 416-1S90 (C. C. E. D. Mo. ) 492 Society of Accountants and Auditors v. Goodway (1907, Ch. Div.) 76 L. J. Ch. 384 173 Soc. of Accts. in Edinb. v. Corp. of Accts., 20 Ct. Sess. Cas. 750 (4th ser.) . . 173 Society of the War of 1812 v. The Society of the War of 1812 in the State of New York, 46 App. Div. (N. Y.) 568-1900, 62 N. Y. Supp. 355. . . 203 Sohier v. Johnson, 111 Mass. 238-1872 120 Solis Cigar Co. v. Pozo, 16 Colo. 3SS-1891, 26 Pac. 556 342, 489, 497 Soltau v. De Held, 21 L. J. Ch. N. S. 153-1851 40 xlii Table of Cases. PAQF.. South Wales Miners' Fed. v. Glamorgan, App. Cas. 239-1905. . .351, 353, 356, 35<9 369, 376 Southern v. How, Poph. 144 12 Southern White Lead Co. v. Cary, 25 Fed. 125-1885 242 Sperry & Co. v. Percival Milling Co., 81 Cal. 252-1889, 22 Pac. 651 270, 337 Sperry & Hutchinson Co. v. L. Weber & Co., 161 Fed. 219-1908 (C. C. 111. ) 385, 475 Sperry & Hutchinson Co. v. Mechanics' Clothing iCo., 153 Fed. 24-1907 (C. C. A. 6th Cir.), 12 L. R. A. N. S. 135, note 383 Spottiswoode v. Clarke, 2 Phil. 154-1846 447 Springhead Spinning Co. v. Riley, L. R. 6 Eq. 551-1868 399 Stachelberg v. Ponce, 23 Fed. 430-1885 247, 486 Standard Oil Co. v. Doyle, 118 Ky. 662-1904, 82 S. W. 271 386 Standard Table Oil Cloth Co. v. Trenton Oil Cloth & Linoleum Co., N. J. Eq. ; 63 Atl. 846-1900 278 Standard Varnish Works v. Fisher, Thorsen & Co., 153 Fed. 928-1907 (C. C. Oreg.) 261 State, The v. McGrath, 75 Mo. 424-1882 217 Stein v. National Life Assn., 105 Ga. 821-1898, 32 S. E. 615, 46 L. R. A. 150 118, 432 Steinfeld v. National Shirt Waist Co., 99 App. Div. (N. Y.) 286-1904, 90 N. Y. Supp. 964 120 Steinway & Sons v. Henshaw, 5 R. P. C. 77-1887 (Ch. Div.) 272 Stephens v. Peel, 16 L. T. N. S. 145-1867 270, 335 Sterling Remedy Co. v. Eureka Chemical & Mfg. Co., 70 Fed. 704-1895 (C. C. W. D. Wis.) 269 Sterling Remedy Company v. Gorey, 110 Fed. 372-1901 (C. C. N. D. Ohio) . . 336 Sterling Remedy Co. v. Spermine Medical Co., 112 Fed. 1000-1901 (C C. A. 7th Cir.), 106 Fed. 414-1901 (C. C. A. 2d Cir.) 83, 273, 310. 452, 453 Sterling Varnish Co. v. 'Macon, 217 Pa. St. 7-1907, 66 Atl. 78 425 Sternberg Mfg. Co. v. Miller & Co., 161 Fed. 318-1908 (C. C. A. 8th Cir.) .. 302 Stewart v. Hook, 118 Ga. 445, 45 S. E. 369, 63 L. R. A. 255 427 Stewart V. Stewart, 91 Fed. 243 (CCA.) 271 Stirling Silk Mfg. Co. v. Sterling Silk Co., 59 N. J. Eq. 394-1900, 46 Atl. 199 87, 447,. 494, 511 Stoddart v. Key, 62 How. Pr. 137-1881 376 Stone v. Grasselli Chemical Co., 65 N. J. Eq. 756-1903, 55 Atl. 736, 63 L. R. A. 344 425, 433 Stonebraker v. Stonebraker, 33 Md. 252-1870 147, 151 Street v. Union Bank, 30 Ch. Div. 156-1885 188 Stuart v. La Salle County, etc., 83 111. 341-185 40 Stuart v. Simpson, 1 Wend. 376-1828 303 Stuart v. F. G. Stewart Co., 91 Fed. 243-1899 (C C A. 7th Cir.) 77 Supreme Lodge, Knights of Pythias v. Improved Order Knights of Pythias, 113 Mich. 133-1897, 71 N. W. 470, 38 L. R. A 204, 658 Swain v. Seamens, 9 Wall. 254-1869, 76 U. S. 254, 19 L. ed. 554 513 Swift & Co. v. Brenner, 125 Fed. 826-1903 (C C S. D. N. Y.) 68 Sykes v. Sykes, 3 B. & C 541-1824 27, 31, 176 Symonds v. Iowa Soap Co., 104 Fed. 548 247 Symonds v. Jones, 82 Me. 302-1890 489 Table of Cases. xliii T - PAGE. Tabor v. Hoffman, 118 N. Y. 30-1 S89, 23 N. E. 12, 16 Am. St. Rep. 740 419 420, 422, 426 Taendsticksfabriks Akticbolagat Vulcan v. Myers, 139 X. Y. 364-1893, 34 N. E. 904 338, 445 Tallcot v. Moore, 6 Hun, 106-1875 74 Tallerman v. Dowsing Radiant Heat Co. ( 1900) , 1 Cli. 1 36 Tarleton v. McGawley, 1 Peake N. P. C. 270 352 Tarrant & Co. v. Johann Hoff, 76 Fed. 959-1S96, 22 C. C. A. 644 131 Tasker v. Stanley, 153 Mass. 148 364 Tavis v. Knapp, 121 Fed. 34; Harrison v. Glucose Co., 116 Fed. 304, 58 L. R. A. 915 422 Taylor Iron & Steel Co. v. Nichols, 70 N. J. Eq. 541-1905, s. c, 65 Am. Rep. 695-1907 365 Taylor v. Carpenter, 2 Sandf. Ch. 676-1845 33 Taylor v. Carpenter, 3 Story, 458-1844 507 Taylor Iron & Steel Co. v. Nichols, 70 N. J. Eq. 541-1905, 61 Atl. 946, 09 Atl. 186-1908 (N. J. Er. & App.) 425, 432 Taylor, E. H., Jr., & Sons Co. v. Taylor, 27 Ky. L. Rep. 625, 85 S. W. 1085 1905 149, 458 Teacher v. Levy, 23 R. P. C. 117-1905 328 Teed v. Elworthy, 14 East, 210, Greenlf. Ev. 278 188 Temperton v. Russell, 1 Q. B. D. 715-1893 302, 369 Thacker Coal & Coke Co. v. Burke, 59 W. Va. 253-1906, 53 S. E. 161, 5 L. R. A. N. S. 1091 359 Thomas v. Williams, L. R. 14 Ch. Div. 864-1880 394, 402, 403, 417 Thompson v. Montgomery, 41 Ch. Div. 35-18S9; affd., App. Cas. 217-1S91, :< Stone Ale " 52, 170, 279 Thorley's Cattle Food Co. v. Massam, L. R. 6 Ch. Div. 582-1877, see on appeal 14 Ch. Div. 763-1880 392, 393, 401, 402, 403 Thorneloe v. Hill, 11 R. P. C. 01-1 S94 (Ch. Div.) 102 Thum & Co. v. Tloczynski, 114 Mich. 149-1 S97, 38 L. R. A. 200, 72 N. W. 140 431 Thynne v. Shove, 45 Ch. Div. 577-1S90 116 Tipping v. Clarke, 2 Hare, 393 434 Tobias v. Harland. 4 Wend. (N. Y.) 537-1830 411, 413 Tode v. Gross, 127 N. Y. 480-1891, 28 N. E. 469, 13 L. R, A. 652, note 435 Toledo, etc., Ry. Co. v. Pennsylvania Co., 54 Fed. 730-IS93 (C. C. Ohio), 19 L. R. A. 387 416 Tolman v. Mulcahy, 119 App. Div. (N. Y.) 42-1907, 103 N. Y. Supp. 936... 429 Trade-mark Cases, 100 U. S. 82, 25 L. ed. 550 52 Trego v. Hunt, 12 T. R. R. 80-1895 (1896), App. Cas. 7 113, 114, 118, 439 Tuchman v. Welch, 42 Fed. 548-1890 40 Turton v. Turton, 42 Ch. Div. 128-1889 56, 126, 128, 183 Tussaud v. Tussaud, 44 Ch. Div. 678-1890 151 U. United States v. Duell, 17 App. Cas. (D. C.) 575-1901 6 United States Frame &_ Picture Co. v. Horowitz, 51 Misc. (N. Y) 101-1906, 100 N. Y. Supp. 705 87 xliv Table of Cases. PAGF. United States Tobacco Co. v. McGreenery, 144 Fed. 531-1006 (C. C. Mass.) ; affd., 144 Fed. 1022 59, 313 Uri v. Hirsch, 123 Fed. 508-1903 (C. C. VV. D. Mo.) 490 U. S. Mercantile Reporting! Co. v. U. S. Mercantile Rep. & Collecting Assn., 21 Abb. N. C. (N. Y.) 113-1888 5S V. Vacuum Oil Co. v. Eagle Oil Co., 122 Fed. 105-1903 (C. C. N. J.) 442 Vacuum Oil Co. v. Eagle Oil Co., 154 Fed. 867; affd., 162 Fed. 671-1908 442 Valentine Meat Juice Co. v. The Valentine Extract Co., Ltd., 83 L. T. N. S. 259-1900, 17 R. P. C. 673 154 Van Auken Co. v. Van Auken Steam Specialty Co., 57 111. App 240-1894 219 Van Camp Packing Co. v. Cruikshanks Bros. Co., 90 Fed. 814-1898 (C. C. A. 3d C ir. ) 447 Vanderbilt v. Mitchell, 67 Atl. 97-1907 (N. J. Ct. App.) 38, 39 Van Hoboken v. Mohns & Kaltenbach, 112 Fed. 52S-1901 (C. C. N. D. Cal.) . 328 Van Horn, Ltd. v. Coogan, 52 N. J. Eq. 380-1894, 28 Atl. 788 254-494 Van Houten v. Hooton Chocolate Co., 130 Fed. 600-1904 (C. C. N. J.) 61, 452 Van Rault v. Schneck, 159 Fed. 248-1908 (C. C. Wis.) 462 Van Stan's Stratena Co., Ltd. v. Van Stan, 209 Pa. St. 564-1904, 58 Atl. 1064 ". 147-158 Vegelahn v. Gunter, 167 Mass. 92 364-376 Viano v. Baecigalupo, 183 Mass. 160-1903, 67 N. E. 641 214 Victor Safe & Lock Co. v. Deright, 147 Fed. 211-1906 (C. C. A. 8th Crr.) .396, 412 Victor Talking Machine Co. v. Armstrong, 132 Fed. 711-1904 (C. C. S. D. N. Y.) 287 Vitascope Co. v. II. S. Phonograph Co., 83 Fed. 30-1897 (C. C. N. J.) 32 Vonderbank v. Sahmitt, 44 La. Ann. 264-1892, 15 L. R. A. 462, 10 So. 616. . . 100 Von Mumm v. Frash, 56 Fed. 830-1893 239 Von Mumm v. Steinmetz, 137 Fed. 168-1905 (C. C. S. D. N. Y.) 512 Vulcan Detinning Co. v. American Can Co., 69 Atl. 1103-1908 (N. J. Eq.) . . 452 Vulcan Detinning Co. v. American Can Co., 67 N. J. Eq. 243-1904, 58 Atl. 290 . 422, 427-438 W. Wagner Typewriter Co. v. F. S. Webster Co., 144 Fed. 405-1906 (C. C. S. D. N. Y.) 205 Wallach v. Wigmore, 87 Fed. 469 444 Walker v. Cronin, 107 Mass. 555-1871 3C1, 362, 362-364 Walker v. Mottram, 19 Ch. Div. 355-1881 Ill Walter v. Ashton, 71 L. J. Ch. 839-1902, 2 Ch. 282-1902, 51 Wkly. Rep. 131. 23 Walter v. Emmot, 54 L. J. Ch. N. S. 1059-1885 189 Wamsutta Mills v. Allen, Cox's Manual 660-1878 (Com. PI. Phila.) 273 Warren, A. D. v. Warren Thread Co., 134 Mass. 247-1883 108 Warren Featherbone Co. v. Landauer, 151 Fed. 130-1903 (C. C. Wis.) . . .406, 410 411-415 Watkins v. Landon, 52 Minn. 389-1893, 54 N. W. 193, 19 L. R. A. 236 426 Wedderburn v. Wedderburn, 22 Beav. 84-1855 119 Weener v. Brayton, 152 Mass. 101, 25 X. E. 46, 8 L. R. A. 640 35 Weingarten v. Charles Bayer & Co., 22 R. P. C. 341 (H. L. 1905) 262 Table of Cases. xlv PAGF. Weinstock, Lubin & Co. v. Marks, 109 Cal. 529-1895, 42 Pac. 142, 30 L. R. A. 182 27, 85, 329, 453 Welch v. Knott, 4 K. & J. 747-1857 48 Wollman & Dwire Tobacco Co. v. Ware Tobacco Works, 46 Fed. 289-1891 (C. C. Minn.) 317 Wells v. Ceylon Perfume Co., 105 Fed. 621-1900 (C. C. S. D. N. Y.) 268 Wells & Richardson Co. v. Abraham, 146 Fed. 190-1906 (C. C. E. D. N. Y.) ; affd., 149 Fed. 40S-1906 (C C. A. 2d Cir.) 381, 382, 383 Westcott Check Co. v. Oneida Nat. Check Co., 122 App. Div. (N. Y.) 260.282, 301 Western Grocer Co. v. Caffarelli, — Tex. — , 108 S. W. 413-190S 87, 501 Weston v. Barnicoat, 175 Mass. 454 364 Westervelt v. National Paper & Supply Co., 154 Ind. 673-1900, 57 N. E. 552. 433 Weyman v. Soderberg, 108 Fed. 63-1901 (C. C. W. D. Wis.) 255 Wheeler v. Johnson, 3 L. R. Ir. 284-1879 239 White v. Merritt, 7 N. Y. 352-1852 371 White v. Trowbridge, 216 Pa. St. 11, 64 Atl. 862 115, 157 Whitehead v. Kiteon, 119 Mass. 484-1876 400 Whitstable Oyster Fishery Co. v. Hayling Fisheries, 18 R. P. C. 434-1901 ... 250 Wier's Appeal, 74 Pa. St. 230-1873 40 Wilcox & Gibbs Sewing Machine Co. v. The Gibbens Frame, 17 Fed. 623-1883 (C. C. S. D. N. Y.) 287, 299 Wilcoxen v. McCray, 38 N. J. Eq. 466-1884 180 Wilkinson v. Griffith Bros. & Co., 8 Rep. Pat. Cas. 370 76 Williams v. Adams, 8 Biss. 452-1S79 (C. C. 111.) 504 Williams v. Brooks, 50 Conn. 278-1882 319, 468 Williams v. Farrand, 88 Mich. 473-1891, 50 N. W. 446, 14 L. R. A. 161 99 Williams v. Wilson, 4 Sandf. Ch. (N. Y.) 379-1846 119 Williamson Corset & Brace Co. v. Western Corset Co., 70 Mo. App. 424-1897. 81 Wilmer v. Thomas, 74 Md. 485-1891, 22 Atl. 403, 13 L. R. A. 380 108 Winsmore v. Greenbank, Willes 577-1745 352, 361 Winsor v. Clyde, 9 Phila. 513-1872 (Ct. Com. PI. Phila.) 172 Wirtz v. Eagle Bottling Co., 50 N. J. Eq. 164-1892, 24 Atl. 658. .50, 71, 74, 306, 330 Witthaus v. Braun. 44 Md. 303-1875 102 Wolf, B. J., & Sons v. New Orleans, etc., Co., 113 La. 388-1904, 37 So. 2, 67 L. R. A. 65 359 Wolfe v. Barnett & Lion, 24 La. Ann. 97-1872 490 Wolfe v. Burke, 56 N. Y. 115-1874. 26, 483 Woodward v. Lazar, 21 Cal. 449-1S63 177 Woollam v. Ratcliff, 1 Hem. & M. 259-1863 51 Woolsey v. Judd, 4 Duer (N. Y.) 379-1855 419 Worcester Brewing Co. v. Rueter & Co., 157 Fed. 217-1907 (C. C. A. 1st •Cir.) 88, 510 Worcester Royal Porcelain Co. v. Locke & Co., 19 R. P. C. 479-1902 249 Worden & Co. v. California Fig Syrup Co., 102 Fed. 334-1900 480 Worden v. California Fig Syrup Co., 187 U. S. 516-1902, 47 L. ed. 282, 23 Sup. Ct. 161 481 Wormser v. Shayne, 111 111. App. 556-1904 491, 493 Wotherspoon v. Currie, t. R. 5 H. L. Cas. 508-1872 52-59, 170, 230, 279 Wren v. Weild, L. R. 4 Q. B. 730-1876 Wright, A. D. v. J. C. Coules, 4 Cal. App. 343-1906 416 xlvi Table of Cases. PAGE. Wrisley Co. v. Iowa Soap Co., 122 Fed. 796-1903 (C. C. A. 8th Cir.) 62 Wurm v. Webster, 21 K. P. C. 373 172 Wyckoff, Seamans & Benedict v. Howe Scale Co., 122 Fed. 348-1903, 58 C. C. A. 510 130, 131 Y. Yale & Towne Mfg. Co. v. Alder, 154 Fed. 37-1907 (C. C. A. 2d Cir.), revg. 149 Fed. 783-1906 287, 292 Yonge v. Ward, 21 L. T. N. S. 480 474 Young v. Macrae, 9 Jur. N. S. 322-1862 176 Yovatt v. Winyard, 1 J. & W. 394-1820 420, 429 UNFAIR BUSINESS COMPETITION. CHAPTER I. What is Unfair Competition? Section 1. Unfair competition is not included in term trade-mark. 2. Technical trade-marks. 3. Common law, not trade mark statutes, the basis of the law of un- fair competition. 4. Difference between law of unfair competition and that of tech- nical trade-marks. 5. Technical mark is geographic in character, the right to it is limited territorially; not so with rights upheld by law of un- fair competition. 6. Early uses of the term unfair competition. 7. Growth of doctrine of unfair competition. 8. Early cases involving unfair competition. 9. Law of unfair competition does not curtail freedom of honor- able trading. 10. Property rights in marks which are not technical trade-marks. 11. Exclusive right to a name or mark not necessary to action. 12. Property right which is acquired in a trade-mark is a limited right. 13. No distinction between names and marks as regards rights acquired by user. 14. Definitions of unfair competition. 15. Selling another's goods as one's own. 16. Grounds of action for unfair competition. 17. Theory that the court aims to promote honest and fair dealing. 18. Theory that the court aims to protect the purchasing public. 19. Theory that the court aims to protect not public rights, but rights of individuals. 20. Attitude of equity courts toward personal wrongs. 21. What is infringement 1 ? 22. Acts contributory to unfair acts. Section 1. Unfair Competition is not Included in Term Trade-mark. — In the digests one usually finds unfair compe- tition cases under the general head of trade-marks. This is 2 Unfair Business Competition. misleading; for the law of trade-marks does not include un- fair competition, but rather the law that governs trade-marks and infringements of them is but a part of the law regulating unfair and dishonest competition and trade. This misconception of the true meaning and scope of the doctrine of unfair competition may cause some to take issue with the writer, on the correctness of including in a book bearing the title of Unfair Competition, some of the classes of cases here included. It is believed, however, that the bar will be called upon more and more frequently to protect traders whose business is threatened with injury or destruc- tion, from many sorts of dishonest or unfair competition beside those arising out of trade-marks and trade names. Referring to the development of Unfair Competition law, W. K. Townsend says: " Not yet fully adopted by all the courts, still to be developed in its application to particular circumstances and conditions, this broad principle of business integrity and common justice is the product and the triumph of the development of the law of trade-marks in the last half century, and the bulwark which makes possible and protects the world-wide business reputations common and growing more common in this new country." 1 Unfair competition is not confined to acts directed against the owners of trade-marks or tradenames, but exists wherever unfair means are used in trade rivalry. Equity looks not at what business the parties before the court are engaged in, but at the honesty or dishonesty of their acts. It is unfair to pass off one's goods as those of another person; it is unfair to imitate a rival 's trade name or label ; but he who seeks to win trade by fair means or foul is not limited to these methods. He may copy and imitate the actual goods made or sold by a competitor,— he may libel or slander these goods, make fraudulent use of a family name, of trade secrets, of corporate names, of signs, of threats of action, — he may construct buildings which are reproductions of peculiar buildings of a rival, thus producing confusion in the minds of purchasers, which enables him to purloin Ms rival's trade, and in a hun- 1 " Two Centuries Growth of American Law," Seribners, 1901. What is ILxfair Competition? 3 dred other unfair ways secure another's trade. All acts done in business competition are either fair or fraudulent, equi- table or inequitable, whether they relate to marks or not; and it is believed that the question of trade-marks will soon be lost sight of in discussing unfair competition, in the problem of securing, through the principles of equity, full protection to every merchant against unfair business methods. To understand the present status of the subject, the defini- tions of what is called a technical trade-mark should be ex- amined. § 2. Technical Trade-marks. — Trade-marks existed many years before the first Registration Act was passed. " The following may be laid down as characteristics of a technical trade-mark : first, it must point distinctively, either by its meaning or by association, to the origin or ownership of the article to which it is affixed ; second, it must be affixed or applied to a commercial article; third, it must be of such a nature that it can be rightfully appropriated by one person, to the exclusion of all others." 2 "A trade-mark is an arbitrary, distinctive name, symbol, or device, to indicate or authenticate the origin of the products to which it is attached." 3 "A trade-mark is a name, sign, symbol, mark, brand, or device of any kind, used to designate the goods manufactured or sold, or the place of business of the manufacturer or dealer in such goods. The exclusive right in a trade-mark is ac- quired by its use, which the law does not require shall be con- tinued for any prescribed time." 4 "A trade-mark is a symbol arbitrarily selected by a manu- facturer or dealer and attached to his wares to indicate that they are his wares. In selecting such a device he must avoid words merely descriptive of the article or its qualities or such as have become so by use in connection with known articles of commerce. * * * "When it has become generally known in the trade that this symbol or word has been taken 2 Paul on Trade-marks, § 22. See A. 7th Cir.) ; Sartor v. Sehaden, 125 Introduction to chapter XII. Iowa 696-700-1904; 101 N. W. 511. * Cole Co. v. American Cement Co., * Shaver v. Shaver, 54 Iowa 208— 130 F. R. 703-1904, at p. 705 (C. C. 1SS0, at p. 2?0; 6 N W. 1SS. 4 Unfair Business Competition. by one dealer or manufacturer to indicate his goods, he ac- quires a title to it for the purpose, and no one can use it even innocently. ' ' (Anonymous.) ' ' A trade-mark is a particular word, sign, symbol, or device which, by exclusive use, becomes recognized as the distinguish- ing mark of the owner's goods," and for the protection of which the aid of equity may be properly invoked. ' ' 5 " The purpose of the trade-mark is to get before the public in a unique and impressive manner, the goods on which the mark is used and to distinguish such goods from all other goods on the market of the same class or description. It serves a two-fold purpose, — to protect the owner from unfair compe- tition, and the public from being deceived." 6 If a word which is publici juris be adopted as the name of a particular brand of goods, by user and association it may come to be the common everyday meaning of that one brand, besides retaining its original meaning. "When a public name is so used it is just as much a trade-mark as the most fanciful made-up word known; and it will be protected, not as a technical mark which is the sole property of one man, but as a mark identifying goods ; and it receives such protection under the law of unfair competition. It will be noticed that none of these definitions of a trade-mark or trade name requires any action on the part of the government, either state or national. Certain of the states, however, have statutes providing for the registration of trade-marks and names; and Congress has provided for the registration of trade-marks by the following Act of May 4, 1906: Sec. 16, " That the registration of a trade-mark under the provisions of this Act shall be prima facie evidence of ownership. Any person who shall, without the consent of the owner thereof, reproduce, counterfeit, copy or colorably imitate any such trade-mark and affix the same to merchandise of substantially the same descrip- tive properties as those set forth in the registration, or to labels, signs, prints, packages, wrappers, or receptacles in- tended to be used upon or in connection with the sale of mer- chandise of substantially the same descriptive properties as 5 High on Injunctions, §1063. v. Maltine Co., 30 App. Cas. (D. C.) * Peter Schoenhofen Brewing Co. 340-3-]908. "What is Unfair Competition? 5 those set forth in such registration, and shall use or shall have used such reproduction, counterfeit, copy or colorable imita- tion in commerce among the several states or with a foreign nation or with the Indian tribes shall be liable to an action for damages therefor at the suit of the owner thereof," etc. The Supreme Court of the United States thus speaks of the relation of trade-marks to legislation: " The right to adopt and use a symbol or device to distinguish the goods or property made or sold by the person whose mark it is, to the exclusion of use by all other persons, has been long recognized by the common law and the chancery courts of England and of this country. * * * It is a property right for the violation of which damages may be recovered in an action at law, and the continued violation of it will be enjoined by a court of equity with compensation for past infringement. This exclusive right was not created by the act of Congress and does not now de- pend upon it for its enforcement. The whole system of trade- mark property and the civil remedies for its protection existed long anterior to that act (viz., Act of July 8, 1870), and have remained in full force since its passage." 7 The term ' ' technical trade-mark ' ' seems to mean that the mark is one that is fanciful to such an extent that it may become the sole property of him who makes it up, just as a tree that one plants on his own ground or a piece of furniture that one makes with his own hand of his own material is his. There is a real difference between such a name and one which is primarily a word publici juris, but is also a trade-mark. The term " technical trade-mark " may therefore be said to refer to common law trade-marks, those marks which were considered trade-marks before the law of unfair competition was generally understood. It does not mean a mark that has been registered. The law governing the right of action given by the above- mentioned statutes is not considered here; attention being confined to cases of unfair trade in competition. § 3. Common Law, not Trade-mark Statutes, the Basis of the Law of .Unfair Competition. — These statutes have T Trade-Mark Cases, 100 U. S. 82-100. G Unfair Business Competition. made no change in the law of trade-marks or in the law relat- ing to unfair competition. " Registration under the statute confers no new rights to the mark claimed or any greater rights than already exist at common law without registration." 8 ' ' The registry of a trade-mark under this law adds nothing to the right of ownership therein (except jurisdiction in the United States Court, of doubtful constitutionality) and takes nothing away from such ownership. ' ' 9 The effect of the Federal act is three-fold: (a) it creates a permanent record of the date of adoption and use of a mark; (b) gives jurisdiction to the Federal courts where all parties are citizens of the same state; 10 (c) enables treaty stipulations to be carried out. 11 Common law rights as to trade-marks remain unaffected, for the statute expressly states: " Nothing in this act shall prevent, lessen, impeach or avoid any remedy at law or in equity, which any party ag- grieved by any wrongful use of any trade-mark might have had, if the provisions of this chapter had not been enacted." 13 The same is true of the English Trade-Marks Act. Speaking of it, Cotton, L. J., says that formerly when a court passed on a trade-mark question, a trade-mark signified a " mark to the use of which the plaintiff had by user entitled himself, and the injunction was obtained where the defendant was marking his goods with a mark so similar to that used by the plaintiffs as to be calculated to pass them off as the goods of the plain- tiffs. Of course, in order to enable the court to arrive at that conclusion, it had to be shown that the plaintiffs had for a period of time been selling their goods with a mark which distin- guished them. For the purpose of seeing whether or not the mark upon their goods did distinguish them, it was of course necessary to see what marks were in common use by the trade as regards that particular class of goods, and then, having ascertained that fact, it had to be considered whether, hav- ing regard to the marks which were in common use, what was 8 28 Am. & Eng. Encye. 435. Co., 89 F. R. 604-189S (C. C. 8 Sarrazin v. W. R. Irby Cigar Co., Cal.). S3 F. R. 624-27-1899 (C. C. A. 5th u U. S. v. Duell, 17 App. Cas. D. Cir.) ; 46 L. R. A. 541n. C. 575-1901. 10 Hennessy v. Brannschweiger & " Act of 1905, § 23. What is Unfair Competition? 7 being done by the defendants was calculated to pass off their goods as the goods of the plaintiffs. How is this altered? It was contended in argument that the Trade-Marks Act has entirely altered the question. I do not say that the effect of the act may not be to give a person an absolute right to the regis- tered trade-mark so as to entitle him to restrain another per- son from selling goods with that mark upon them without reference to the question whether or not the goods are sold un- der such circumstances as to pass them off as the goods of the plaintiffs. I say nothing upon that point, but I say that, in my opinion, the act in no way interferes with the exercise by a court of equity of its old jurisdiction. What the act does, as I understand it, is this: It enables persons to register a trade-mark, and when they register it that is equivalent to evidence of public use of it by them, and during five years the registration is prima facie evidence of their exclusive right to it, and after the five years it is conclusive evidence of such right. ' ' 13 Registration does not in any way conclude any property rights in a mark. All parties interested are free after regis- tration to maintain whatever rights they may have in law or in equity. 14 § 4. Difference Between the Law of Unfair Competition and that of Technical Trade-marks. — The use of a special mark in connection with particular goods or a particular business is a representation that those goods or that business are the goods or business of the person to whom the mark belongs; that they belong to the person with whom the mark has be- come identified. If such representation is false, a case of un- fair competition exists. The law of trade-marks, therefore, is merely a specialized branch of the broader doctrine of unfair competition. Relief in trade-mark cases is afforded upon the express ground that every person is entitled to secure such profits as result from a reputation for superior skill, industry, or enterprise, or, in other words, from his good-will. But, as has just been seen, this is the precise principle upon which relief is afforded in cases of unfair competition. The right of "Mitchell v. Henry, 15 Ch. Div. Silver Co., 30 App. Cas. (D. C.) 181-92-1880. 97-105-190S. 14 Wm. A. Rogers v. International 8 Unfair Business Competition. action in technical trade-mark cases is based upon the ground that an exclusive property right in the mark is claimed and that the mere use of a close imitation of it, by another, ipso facto creates a cause of action, regardless of the effect of such use or imitation. But the courts in the past have frequently lost sight of the broad general principles of unfair competition. and have sought to decide cases of unfair competition pure and simple, " upon principles analogous to trade-marks." The owner of a technical trade-mark claims it as his, regard- less of the effect on others. If some one else uses it or imitates it, the owner claims a right of action because the mark is his and his alone. After the value of the trade-mark in business had been realized, to an extent at least, many attempts were made to give a judicial definition of what constituted a trade-mark, — what, in other words, was such a name, mark, design or letter or other insignia as was capable of being justly and fairly appropriated exclusively by one person as his business mark or name. It was soon realized, however, that the basic prob- lem was not whether a mark could be used by one person exclusively, or whether it could be registered under some statute, but whether fraud was resulting from the use to which it was being put. The result of this new view was the law of unfair competition, which is concerned only with the honesty and fairness of the use to which the mark is put, not with the question as to what is a technical trade-mark. To ascertain who has rights in a name or mark is just as im- portant in an unfair competition case as in a technical trade- mark case, but this ownership does not hinge on whether or not the mark is a technical mark, for there may be various kinds or degrees of ownership in it, although none of them carry with it an exclusive right to use it. Unfair competition does not necessarily involve the vio- lation of any exclusive right to the use of a word, mark, or symbol. It may arise from the use of words, marks, or sym- bols which are free to everybody to use and are not subject to exclusive appropriation by any one. The existence of this right of action depends upon the question of fact, whether what was done in any special case tends to pass off the goods What is Unfair Competition? 9 of one man as being those of another, or tends to deprive any one of his rights. This is the only substantial distinction be- tween cases of unfair competition, or passing off actions as they are called in England, and cases of infringement of trade-marks. Where unfair competition is charged as to a name, the words making up the name may be purely generic or descriptive or may be indicative of general qualities such as style, size, shape, — words which are public property as much as are " the adjec- tives of the language." 15 All rival trades have an absolute right to use such words and names ; but if one of these words, by long association with the goods of one person, has come to mean to the public his goods alone and not such goods in general, then any other person will be prohibited from using them. In the words of Dennison Mfg. Co. v. Thomas Mfg. Co. (supra), such a trader " will not be permitted, with intent to mislead the public, to use such words, marks, or symbols in such a manner, by trade dress or other- wise, as to deceive or be capable of deceiving the public as to the origin, manufacture, or ownership of the articles to which they are applied ; and the latter may be required, when using such words, marks, or symbols, to place on articles of his own production or the packages in which they are usually sold some- thing clearly denoting the origin, manufacture, or ownership of such articles, or negativing any idea that they were produced or sold by the former." The foundation principle is the same, in both trade-mark and unfair competition cases, and that is that no manufacturer or trader should be allowed to dress up his goods in such a style and form, and by the use of such names and marks, or colorable imitations thereof or to mark his goods in a way cal- culated to mislead the public, or to induce purchasers to buy his goods as for the goods of some other trader, who, by the adoption of certain distinctive marks and indicia, and by a course of fair dealing, has made the public familiar with and friendly to his goods under these marks. Both actions rest upon the same principle, which is that no man has a right to K Dennkon Mfg. Co. v. Thomas Mfg. Co., 94 Fed. 651-1899 (C. C. Del.)- 10 Unfair Business Competition. pass off his goods upon the public as and for the goods of an- other. " Inasmuch as the testimony shows unfair competition which entitled them (plaintiffs) to an injunction, it is deemed unnecessary to discuss the distinction which seemed to differ- entiate this case from one of trade-mark, pure and simple, the foundation principle upon which relief is granted being sub- stantially the same and the like remedy invoked. ' ' 16 Again, "An infringement of a trade-mark consists in the use of the genuine upon substituted goods or of an exact copy or reproduction of the genuine, or in the use of an imita- tion in which the difference is colorable only, and the re- semblance avails to mislead so that the goods to which the spurious trade-mark is affixed are likely to be mistaken for the genuine product; and this upon the ground that the trade- mark adopted by one is the exclusive property of its proprietor, and such use of the genuine, or such imitation of it, is an in- vasion of his right of property. Unfair competition is distinguishable from the infringement of a trade-mark in this : that it does not necessarily involve the question of the exclu- sive right of another to the use of the name, symbol, or device. A word may be purely generic or descriptive, and so not capa- ble of becoming an arbitrary trade-mark, and yet there may be an unfair use of such word or symbol which will constitute unfair competition. Thus a proper or geographical name is not the subject of a trade-mark, but may be so used by another, unfairly producing confusion of goods, and so come under the condemnation of unfair trade, and its use will be enjoined. The right to the use of an arbitrary name or device as indicia of origin is protected upon the ground of a legal right to its use by the person appropriating it. ' ' 16a The first case involving a trade-mark or trade-name in which the courts in America granted an injunction was decided in 1844, by Judge Story. This was the " Taylor's Persian Thread " case. This entire body of law relating to trade-marks and unfair trade has developed in the past fifty-five years. " Scriven v. North, 134 Fed. 366- 16a G. W. Cole Co. v. American 80-1904 (C. C. A. 4th Cir.), 67 Cement Co., 130 Fed. 703-1904, at C. C. A. 348. p. 705 (C. C. A. 7th Cir.). What is Unfair Competition" 11 " During this period of growth the courts, at first inclined to develop the law along narrow and technical lines, have come to see more and more clearly the fundamental principles upon which to act in extending this protection of the law to the achievements of business. Now the technical doctrines are less and less employed and one simple just rule is invoked. The law of trade-marks is disappearing in a broader principle which prohibits unfair trade." 17 A similar statement is made in Church & D wight Co. v. Russ. ls " The tendency of the courts at the present time seems to be to restrict the scope of the law applicable to technical trade-marks, and to extend its scope in cases of unfair com- petition." § 5. Technical Mark is Geographic in Character; the Right to it is Limited Territorially; not so with Rights Upheld by Law of Unfair Competition. — Again, a trade-mark, if regis- tered, is of necessity geographical, and the rights under it ex- tend to the full limits of the jurisdiction granting rights to its owner. Not so with a trade name or mark in which no one has rights except by reason of the doctrine of unfair competition. A right of this sort and a right in the secondary use of a word or mark is of value only in the locality where usage and com- mon knowledge render the right valuable. 19 § 6. Early Uses of the Term Unfair Competition. — The law of unfair competition has sometimes been a favored doctrine of the courts, and at other times it has been looked upon as overriding other rules of law which the courts must preserve. Some of the early cases are given below as showing the begin- nings of the doctrine. Lord Hardwicke refused an injunction in the case of Blanchard v. Hill. 20 This was an action to "Vwo Centuries Growth of Amer- 1893 (C. C. A. 3d Cir.) ; City of ican Law," Scribners, 1901, by Carlsbad v. Kutnow, 71 Fed. 167- Faculty of Yale Law School, p. 43G. 1895 (C. C. A. 2d Cir.); Draper v. 18 99 Fed. 276-78-1900 (C. C. Skerrett, 116 Fed. 206-1902 (C. C. Ind.). E. D. Pa.) ; Hainque v. Cyclops Iron 39 Sartor v. Sclia den, 125 Iowa 696- Works, 136 Cal. 351-1902; 68 Pac. 1904; 101 N. W. 511. See also Der- 1014. ringer v. Plate, 29 Cal. 293-1865; I0 2 Atk. 484-1742. Richter v. Reynolds, 59 Fed. 577- 12 Unfair Business Competition. restrain the defendant from using the Mogul stamp on his cards. The plaintiff, in conformity with the charter granted to the Cardmaker's Company by King Charles I, had appro- priated the stamp to himself, and so considered the sole right to be in him. His lordship said: " Every particular trader has some particular mark or stamp; but I do not know any instance of granting an injunction here, to restrain one trader from using the same mark with another ; and I think it would be of mischievous consequence to do it." He then referred to a case cited in Southern v. IIoiv, 21 where an action was brought by a cloth worker against another of the same trade for using the same mark, and judgment was given that the action would lie; but added, " it was not the single act of making use of the mark that was sufficient to maintain the action, but doing it with a fraudulent design, to put off bad cloths by this means, or to draw away customers from the other clothier." Lord Eldon in Hogg v. Kirby, 22 a case decided in 1803, speaks of "fair competition:" and it is doubtful if the term " fair competition " or " unfair competition " had been used prior to that time. The body of law now referred to as the doctrine of unfair competition has been but recently known under that name. This is shown by the fact that Mr. Cox, in his well-known " Manual of Trade-Mark Cases," published in 1892, refers in his index to but eight cases as unfair competition cases, although many of the cases he in- cludes in the volume are now frequently cited as laying down the fundamental rules of that law. It is now certain that it is a part of the general body of law ; and that the doctrines on which it is based will, in the future, be applied more and more widely to prevent unfair and dishonest trading. " The orig- inal foundation of the whole law is this, that when one knowing that goods are not made by a particular trader sells them as and for the goods of that trader, he does that which injures that trader. At first it was put upon the ground that he did so when he sold inferior goods as and for the trader's; but it M Poph. 144. "8 Vesey Jr. 215-1803. What is Unfair Competition 1 ? 13 is established alike at law 2n and in equity, 24 that it is an action- able injury to pass off goods not known to be the plaintiff's as and for the plaintiff's, even though not inferior." 2 . 5 It is, then, in reality the name, unfair competition, that is new, not the theory bearing the name; and relief formerly given, as the courts have so often expressed it, ' ' on principles similar to those of trade-mark cases " was relief based on the principles of unfair competition. Sebastian on Trade-Marks has a chapter on " Cases Analo- gous to those of Trade-Mark," Broome on Trade-Marks one on " Rights Analogous to Those of Trade-Marks." § 7. Growth of Doctrine of Unfair Competition. — Unfair competition is generally said to be of recent origin, but this is not strictly true as is seen from the foregoing cases : For a long time, most cases involving the general principles now forming the law of unfair competition arose over trade-marks and infringements of them. In more recent times these or similar principles have been more and more often invoked in cases of unfair dealing where no trade-mark was at issue. Cases that would now be considered instances of unfair competition were decided, in the past, on principles that were invoked because the case was said to be similar to trade-mark cases, when in reality the general principle was much broader than the trade-mark question, and the facts actually showed a clear case of unfair competition, there being no question of a techni- cal trade-mark of any sort involved. For a time the law of unfair competition seemed to remain undeveloped, but it is now realized that the rules of technical trade-mark law are confined to narrow limits while those of the law of unfair competition are sufficiently basic and elastic to be applied to many questions beside those arising out of trade-marks. The relief the courts now give does not, as formerly, rest on the theory that the plaintiff has property in his mark or name or business, but on the broad general principle that one person shall not by use of any mark, symbol, device or name or in any other way pass off his goods as those of another, 23 Blofield v. Payne, 4 B. & Ad. 410- 2S Singer Mfg. Co. v. Loog, L. R. 1S33. - 8 App. Cas. 15-1882, at p. 29. 24 Edelsten v. Edelsten, 1 De G. J. & S. 185-1S63. 14 Unfair Business Competition. the object of this rule being to protect this right of the plaintiff to the profits of his own business and industry. The case of /Singleton v. Bolton 27 decided in 1783 shows the use of these principles at an early date. § 8. Early Cases Involving Unfair Competition. — Judge Duer in Amoskeag Mfg. Co. v. Spear 2s founds the doctrine of unfair competition on these cases : Blofeld v. Payne, 29 Crawshay v. Thompson™ Knott v. Morgan? 1 Croft v. Day. 32 They are given below : Blofield v. Payne was an action on the case, before a jury, for damages, decided in 1833. Plaintiff made hones, which he sold wrapped in a peculiar envelope, which served, he alleged, to distinguish his hones from other kinds. He acquired a great reputation for the quality of his hones. Defendant used similar wrappers and words on them which denoted they were of the plaintiff's make. Plaintiff recovered 1 farthing damage; and on appeal the. verdict was upheld. The opinion was in substance as follows : The act of the defendants was a fraud against the plaintiff. The defendants used plaintiff's envelope and pretended it was their own; they had no right to do that, and the plaintiff was entitled to recover some dam- ages in consequence. Crawshay v. Thompson.™ The gist of this action is the selling iron made by the defendants as and for iron of the plaintiff 's manufacture ; that the plaintiff having used a certain mark in 27 3 Dougl. 293. of the original inventor, and no evi- " Thomas Singleton, the plaintiff's denee was given of the defendant father, sold a medicine called ' Dr. having sold it as if prepared by the Johnson's Yellow Ointment.' The " plaintiff. The only ground on which plaintiff, after his father's death, con- the action could have been maintained tinued to sell the medicine, marked was that of property in the plaintiff, in the same way. The defendant which was not pretended, there being also sold the medicine, with the same no patent, nor any letters of ad- mark, and for that injury the present ministration, action was brought. * * * Lord " Rule discharged." Mansfield said, that if the defendant 28 2 Sandf. 599-1849. had sold a medicine of his own, under 20 B. & A. 410-1833. the plaintiff's name or mark, that 30 4 Man. & Gr. 357-1842. would be a fraud for which an ac- S1 2 Keen 213-18^6. tion would lie. But here both the 82 7 Beav. 84-1843. plaintiff and defendant use the name " 4 Man. & Gr. 357-1842. What is Unfair Competition? 15 the manufacture of his iron, the defendants knowingly made and sold their iron with a mark, imitating that used by the plaintiff, in order to denote that such iron was manufactured by the plaintiff. The argument in effect amounts to this,— if the defendants sold their iron as and for the plaintiff's, what- ever may have been their motive for so doing, they are liable. The opinion was in part as follows : " There is an early case in illustration of this principle, cited by Doderidge, J., in Southern v. How, to this effect, as stated in Popham, pp. 143-4. 'An action upon the case was brought in the Common Pleas by a clothier, that, whereas he had gained great reputation for his making of his cloth, by reason whereof he had great utterance, to his great benefit and profit; and that he used to set his mark to his cloth; and another perceiving it, used the same mark to his ill-made cloth on purpose to deceive him ; and it was resolved that the action did well lie.' The same case is cited also in Cro. Jac. 471 ; but it is there said that the action was brought by him who bought the cloth ; whereas, in Popham, the action is said to have been brought by the manufacturer, and the gist of the action appears to have been the use of his mark ' on purpose to deceive.' " (id. p. 385.) " Can it be contended that the mere use of a similar mark will give a right of action? I do not know that a man can have an abstract right to use any particular mark; but long user in a trade of a mark may produce a general impression that goods bearing such mark are of a particular manufacture. The notice here, although it was argued that it ought to have determined the case in favor of the plaintiff, cannot alter the legal rights of the parties. Millington v. Fox, 34 which was relied upon, does not establish that doctrine. What is the notice here ? It is to the effect that the defendants were using a mark similar to that used by the plaintiff. But such a notice is not equivalent to knowledge ; as the defendants might dispute the resemblance; or they might admit the resemblance, and yet insist that they had no intention of passing off their goods as the plaintiff's " (id. 3'86). 35 84 3 Myl. & Cr. 3S8vL838. 85 Craicshay v. Thompson, 4 Man. & Gr. 357-1842. 1G Unfair Business Competition. In Knott v. Morgan, 36 the plaintiff ran a conveyance com- pany, which marked their buses " Conveyance Company " and " London Conveyance Company." Defendant began to run over route used by plaintiff a bus on which were painted these same words in similar characters and on the same parts of the omnibuses, and he also imitated the livery of the plaintiff's employees. M. R. " I have not the least doubt that the defendant did intend to induce the public to believe that the omnibus which he painted and appointed, so as to resemble the carriages of the plaintiffs, was, in fact, an omnibus belonging to the plain- tiffs. * * * They had a right to call upon this court to re- strain the defendant from fraudulently using precisely the same words and devices which they have taken for the purpose of distinguishing their property, and thereby depriving them of the fair profits of their business by attracting custom on the false representation that carriages, really the defendant's, belong to, and are under the management of, the plaintiffs." (id. p. 219.) In Croft v. Day, 31 Day's father began in 1801 with one Mar- tin to make blacking. Day, senior, and Martin died and Day's executors, one of whom was the plaintiff, carried on the business, and sought to prevent defendant from making black- ing. The court said in substance, that the accusation made against this defendant is that he is selling goods, under form and symbols of such a nature and character as will induce the public to believe that he is selling the goods which are manufac- tured at the manufactory belonging to the testator in this case. " It has been very correctly said, that the principle, in these cases, is this : That no man has a right to sell his own goods as the goods of another. You may express the same principle in a different form, and say that no man has a right to dress himself in colors, or adopt and bear symbols, to which he has no peculiar or exclusive right, and thereby personate another person for the purpose of inducing the public to suppose, either that he is the other person, or that he is connected with and selling the manufacture of such other person, while he is 86 2 Keen 213-1836. 87 7 Beav. 84-1843. "What is Unfair Competition? 17 really selling his own. It is perfectly manifest, that to do these things is to commit a fraud, and a very gross fraud. # # # rpk e rig^ which any person may have to the pro- tection of this court, does not depend upon any exclusive right which he may be supposed to have to a particular name, or to a particular form of words. His right is to be protected against fraud, and fraud may be practiced against him by means of a name, though the person practicing it may have a perfect right to use that name, provided he does not accompany the use of it with such other circumstances as to effect a fraud upon others. ' ' ** It is perfectly manifest, that two things are required for the accomplishment of a fraud such as is here contem- plated. First, there must be such a general resemblance of the forms, words, symbols, and accompaniments as to mis- lead the public. And, secondly, a sufficient distinctive indi- viduality must be preserved, so as to procure for the person lnmself the benefit of that deception which the general resem- blance is calculated to produce. To have a copy of the thing would not do, for, though it might mislead the public in one respect, it would lead them back to the place where they were to get the genuine article, an imitation of which is improperly sought to be sold. For the accomplishment of such a fraud it is necessary, in the first instance, to mislead the public, and in the next place, to secure a benefit to the party practicing the deception by preserving his own individuality." * * * " My decision does not depend upon any peculiar or exclusive right the plaintiffs have to use the names Day and Martin, but upon the fact of the defendant using these names in con- nection with certain circumstances, and in a manner calcu- lated to mislead the public, and to enable the defendanf to obtain, at the expense of Day's estate, a benefit for himself, to which he is not, in fair and honest dealings, entitled. Such being my opinion, I must grant the injunction restraining the defendant from carrying on that deception. He has a right to carry on the business of a blacking manufacturer honestly and fairly; he has a right to the use of his own name; I will not do anything to debar him from the use of that, or any other name calculated to benefit himself in an honest way; 18 Unfair Business Competition. but I must prevent him from using it in sucli a way as to deceive and defraud the public, and obtain for himself, at the expense of the plaintiffs, an undue and improper advan- tage." (id. p. 88-90.) Judge Duer might also have named the case of Hogg v. Kirby, 38 decided in 1803 by Lord Eldon, which clearly lays down the fundamental rules of the law we now know as the law of unfair competition. Hogg was publisher of the " Won- derful Magazine." A dispute arose as to altering the title of it and Kirby refused to allow his name to be used longer as publisher. Later, plaintiff issued hand bills saying he would thereafter publish the magazine and began to do so. Thereupon Kirby and another began to publish a periodical under a similar title as a " New Series Improved." Plaintiff asked that defendants be enjoined from selling their publica- tion and from printing any future number under the same or a similar title or using the design of plaintiff's magazine and an account. Lord Eldon said: " But the question is, whether he has not published this work, not as his original work, but as the continuation of the work of another person. Then what is the consequence in law and equity? If that question is determined in the affirmative, a court of equity in these cases is not content with an action for damages ; for it is nearly impossible to know the extent of the damage ; and therefore the remedy here, though not compensating the pe- cuniary damage except by an account of the profits, is the best : the remedy by an injunction and account." (p. 223.) " In this case, protesting against the argument, that a man is not at liberty to do anything which can affect the sale of another work of this kind, and that, because the sale is affected, therefore there is an injury (for if there is a fair competition by another original work, really new, be the loss What it may, there is no damage or injury), I shall state the question to be, not whether this work is the same, but, in a question between these parties, whether the defendant has not represented it to be the same ; and whether the injury to the plaintiff is not as great, and the loss accruing ought not to be regarded in equity upon the same principles between them, 38 8 Vesey Jr. 215. What is Unfair Competition? 19 as if it was in fact the same work. Upon the point, whether the work was in fact meant to be represented to the public as the same, I do not say, that is not a question proper for a jury. But I must act upon the inference from the circum- stances ; and it is impossible not to say, till this is better ex- plained, an intention does appear both upon the transaction as to the fifth number and the other circumstances, in some degree upon the appearance of the outside, in a great degree upon the first page, the index, and the promised contents, to state tins as a continuation of the former work, in a new series indeed. I am not here to speculate upon the probable consequences of such conduct; for I have the actual conse- quences, as far as fair reasoning can determine, that out of 2,000 purchasers 1,800 have bought this as part of the old work. The point, where he who carries his work into the world as that of another person, shall not as between them be considered as publishing that work, if the consequences are the same, is new, and therefore fit to be discussed else- where as well as here. I must incur the hazard of occasion- ing finally some injurious consequences to one party or the other " (id. p. 225-6). § 9. Law of Unfair Competition does not Curtail Freedom of Honorable Trading. — All this law of unfair competition might seem to have the effect of limiting the rights enjoyed by all men to trade freely with each other. But the restric- tions imposed by it are not imposed upon traders alone, but equally on all other citizens. The right to trade is not an ab- solute right, but a qualified one. Whether a man be a trader or not he is not justified in damaging another's business or profession by fraudulent methods, by threats, interference, with contract, libel or slander of goods, obstruction, or unfair methods of any sort. It is the policy of the law to encourage fair trade in every way. ' ' We have then to inquire whether mere competition, directed by one man against another, is ever unlawful. It was argued that the plaintiffs have a legal right to carry on their trade, and that to deprive them of that right by any means is a wrong. But the right of the plaintiffs to trade is not an absolute but a qualified right, a right con- 20 Unfair Business Competition. ditioned by the like right in the defendants and all Her Ma- jesty's subjects, and a right therefore to trade subject to com- petition. Now, I know no limits to the right of competition in the defendants — I mean, no limits in law. I am not speaking of morals or good manners. To draw a line between fair and unfair competition, between what is reasonable and unreason- able, passes the power of the Court. Competition exists when two or more persons seek to possess or to enjoy the same thing : it follows that the success of one must be the failure of another, and no principle of law enables us to interfere with or to moderate that success or that failure so long as it is due to mere competition. I say mere competition, for I do not doubt that it is unlawful and actionable for one man to inter- fere with another's trade by fraud or misrepresentation, or by molesting his customers, or those who would be his customers, whether by physical obstruction or moral intimidation." 39 § 10. Property Rights in Marks which are not Technical Trade-marks.— The difference most often noted between technical trade-mark cases and those involving unfair com- petition seems to rest on the fact that, in technical trade-mark cases, the complainant has a distinct property interest in the technical mark, while in cases of unfair competition he is said to have no property interest in that which the defendant has used or imitated to his injury or damage. Neverthe- less, he has defrauded the plaintiff of something, and that something is valuable. A name may be public property, and yet, if someone acquire right to use it exclusively, in a limited field even, that right is valuable. The right of the Saxon vil- lager to use the common as a pasture was a limited right, yet it was property. Where the complainant is adjudged to have a distinct and sole property right to use his mark, the court will enjoin injury to it regardless of the intent of the offender. But where his mark is something that is free to both parties to use, as, for instance, the name of the family to which both belong, and which, therefore, cannot be the complainant's 39 Mogul SS. Co. v. McGregor, Gow & Co., L. R, 23 Q. B. 59S-C25-1SS9. What is Unfair Competition? 21 property exclusively, the court may find the complainant to possess something in connection with that name which it must protect. Many judges have called that something property, while more have denied it to be property. This intangible interest in a mark, used by the maker or vendor of the article to which it is attached, and which is protected by the application of the rules of unfair competition, may perhaps be termed the good-will of the seller in ,such a mark. The courts seem to distinguish this right, whatever it be called, from the property of the owner of a technical trade- mark in that mark, although the good-will in a trade name or mark, not a technical one, would seem to be quite analogous to what is usually termed the good-will in a business which is undoubtedly property. For instance, in the case of American Washboard Co. v. Saginaw Mfg. Co., 40 no trade-mark was in question, and the ground of the injunction issued was the in- vasion of the plaintiff's' property rights. 41 The property rights in a particular business consist in part in its good-will in the marks used on its goods, in its stand or locality, in its name, and all of these things are under the protection of a court of equity. 42 These features were valuable 40 103 F. R. 281-1900 (C. C. A. 6th Cir.); 50 L. R. A. 609. 41 The case opens with the specific statement that no claim "was made by the plaintiff that it possessed a tech- nical trade-mark. " Plaintiff comes into a court of equity in such a case (viz. unfair competition) for the pro- tection of his property rights. The private action is given, not for the benefit of the public, although that may be its incidental effect, but be- cause of the invasion by defendant of that which is the exclusive property of complainants" (id. 284). And again the court said, " The jurisdiction of a court of equity to restrain wrongful use of such trade-marks by persons not entitled thereto, -is founded, not upon the imposition upon the public, but on the wrongful invasion of the right of property therein which has been acquired by others. A remedy is offered only to the owner of the-, right of property in such trade-marks on account of the injury which is, thus done to him" (id. 285). Leather Cloth Cc. v. Am. Leather Cloth Co., 11 H. L. Cas. 523-1863. " The true principle, therefore, would seem to be that the jurisdiction of the court in the protection given trade- marks rests upon property, and that the court interferes by injunction, be- cause that is the only mode by which property of this description can be effectually protected." 43 Hall v. Barrows, 9 Jurist, N. S.. 483-1863; 4 De G. J. & S. 150. 22 Unfair Business Competition. formerly, but now they may sell for many times what all its personal property of other sorts will bring. Their value is frequently the result of the most expensive advertising, and a court of equity protects this zealously from being lost to its owner through unfair methods. " Money invested in advertising is as much a part of a business as if invested in buildings or machinery, and when the goods of a manufac- turer have become popular, not only because of their intrinsic worth, but also by reason 'of the ingenious, attractive, and per- sistent manner in which they have been advertised, the good- will thus created is entitled to protection against unfair com- petition. ' ' 43 Eef erring to the case of Millington v. Fox 44 Lord Chancellor Westbury in Hall v. Barrows, 45 says: " The case * * * is very important as establishing the principle that the jurisdiction of the court in the protection of trade-marks rests upon property, and that fraud in the defendant is not necessary for the exercise of that jurisdiction." Later in this opinion, referring to plaintiff's trade name, he said (p. 157) that " the trade-mark is a valuable property of the partner- ship * * * and may be properly sold with the works, and, therefore, properly included as a distinct subject of value in the valuation to the surviving partner." This statement was made in 1863, when the law now connected with " technical marks " was hardly known. Blackburn says of this case: 46 ''And I think it settled by a series of cases, of which Hall v. Barrows 41 is, I think, the lead- ing one, that both trade-marks and trade names are in a certain sense property, and that the right to use them passes with the good-will of the business to the successors of the firm that originally established them, even though the name of that firm be changed so that they are no longer strictly correct. This was evidently Lord Cottenham's opinion in Millington v. Fox 4 * and I know of no authority against it." A trade name may be either the name of the manufacturer of goods or some name "Hilson Co. v. Foster, 80 F. R. "Singer Mfg. Co. v. Loog, L. R. 896-1897 (C. C. S. D. N. Y.). 8 App. Cas. 15-33-1882. 44 3 Myl. & Cr. 338-1838. " 4 De G. J. & S. 150-1863. 45 4 De G. J. & S. 150-56-1863. " 3 Myl. & Cr. 338-1838. What is Unfair Competition? 23 by which the manufactured goods have become generally known. There is a kind of property in such a name and inter- ference with it will be restrained by the court if there is a prospect of injury to the owner of it. 49 § 11. Exclusive Right to a Name or Mark not Necessary to Action. — In an action for unfair competition it is not necessary that the plaintiff should have an absolute and exclusive right to the distinguishing marks which he alleges the defendant has wrongfully used. The defendant may be properly en- joined in such an action, although undoubtedly entitled to use the name or mark in question, provided that he uses it in such a way as not to injure the complainant. There need be no exclusive right in the complainant. A definite property right may arise in a name or mark, although it is not a technical trade-mark. This right is qualified and not exclusive, but, like the rights in a technical mark, is valuable in a very real sense. It is settled law that the right to use a technical trade-mark is not a privilege attaching only to the person first using it, but an actual property right, capable of being dealt in and of being transferred as property from person to person. 50 This is equally true of names and marks that are not technical trade- marks. A dealer has acquired valuable interests in some name, by long use as a trade name. He may sell such right as he has in that name for value and give good title. If another steals his business by using a similar and confusing name, his damage is none the less real because his mark is not a technical trade-mark. To protect his rights he needs only to prove his ownership of such an interest. § 12. Property Right Which is Acquired in a Trade-mark is a Limited Right. — Where one has a property right in a name, he does not have a general abstract right to or ownership in that name. A soap manufacturer cannot com- plain of one who uses a name which he uses in the soap busi- ness as a name of a brand of iron. 50a The exclusive use of a 49 Citing Borthwick v. Evening 50a But see Walter v. Ashton, 71 L. Post, 37 Ch. Div. 449-1888; 12 J. Ch. 839-1902; Eastman v. Grif- Eneye. of the Laws of England, fiths, 15 R. P. C. 105. 234-5. 60 Paul, Trade-Marks, § 17, and cases there cited. 24 Unfair Business Competition. name to which one is entitled has been held to apply only to nse in his own line of business. 51 § 13. No Distinction Between Names and Marks as Regards Rights Acquired by User.— No distinction can be made between a trade-mark and a trade name as regards the rights acquired in either by usage. Both are held to be of like character and will be protected if violated. 52 The decisions are not clear as to the character of these rights in trade names, labels, signs, places, forms, devices and the like, which are protected by the law of unfair competition. Valuable they certainly are; property, in the commonly ac- cepted meaning of the term, they certainly are, and yet equity courts have refused to protect them where there was no ground for the Court 's jurisdiction unless it be based on this property right. It is believed, however, that in time the great value of these interests will cause all courts to feel warranted in considering them such property as equity is bound to protect. The courts in early days held that rights which they pro- tected as trade-marks were rights acquired only in one way, viz., by user, and this is the way in which all rights and prop- erty now jorotected by the rules of unfair competition are acquired. These rights founded on user were regarded as property and protected as such. 53 61 Hall v. Barrows, 4 De G. J. & S. tiffs and their predecessors in in- 150-1863. The Omega Oil Co. v. terest have acquired property rights Weschler, 53 Misc. (N. Y.) 441. in the use of the word which de- 62 Hainque v. Cyclops Iron Works, f endant is bounc to respect " 136 Cal. 351-1902; 68 Pac. 1014. 53 Glen & Hall Mfg. Co. v. C. S. Plaintiffs, for years, called them- Hall, 61 N. Y. 226-1874. In con- selves " Cyclops Machine Works." sideling the rights of a trader to the Defendants set up near by, calling address " No. 10 South Water Street, themselves " Cyclops Iron Works." Rochester, N. Y.," the New York " Upon general principles of equity, Court of Appeals said : " It would the acts of the defendants here de- follow, from these principles, that if tailed will not be countenanced by a person had established a business the courts. If it be conceded that at a particular place, from which he the word ' Cyclops ' in this particu- had derived, or may derive, profit, lar instance is the trade name of and has attached to that business plaintiffs rather than their trade- a name indicating to the public mark, that fact is not material. By where or in what manner it is car- long continued exclusive user, plain- ried on, he has acquired a property What is Unfair Competition? 25 Long use does not always give rights in a name or mark. Although Ames began in 1856 to use the name " Collins,' ' as a name for his concern, because of the reputation of a rival named " Collins," he will, even in 1886, be enjoined from in the first instance for the express purpose of profiting by continuing such use, because of the fact that he took the name Collins' reputation and without right. 54 § 14. Definitions of Unfair Competition. — The following are various statements of the courts as to what unfair competition is. These citations do not cover the ground fully, for this doctrine of law, as has been said, is not stable; it is continually being applied to new wrongs, continually being invoked to right injuries that arise from new combinations of circumstances which work injury and fraud. The fundamental rule is that one man has no right to palm off his own goods as the goods of a rival trader, and ' ' he cannot, therefore, ' ' in the language of Lord Langdale in Perry v. Truefitt, 55 " be allowed to use names, marks, letters, or other indicia, by which he may induce purchasers to believe that the goods which he is selling are the manufacture of another person." Referring to the above, Lord Herschell, in Reddaway v. Banham, 5G said: " It is, in my opinion, this fundamental rule which governs all cases." " Irrespective of the technical question of trade-mark, the defendants have no right to dress their goods up in such man- ner as to deceive an intending purchaser, and induce him to believe he is buying those of the plaintiffs. Rival manufactur- ers may lawfully compete for the patronage of the public in the quality and price of their goods, in the beauty and taste- fulness of their inclosed packages, in the extent of their ad- vertising, and in the employment of agents, but they have no right, by imitative devices, to beguile the public into buying their wares under the impression they are buying those of their rivals." 5T in the name which will be protected Sons' Corporation, 18 F. R. 561- from invasion by a court of equity, 1882 (Cir. Ct. So. Div. N. Y.). on principles analogous to those 55 6 Beav. 66-73-1842. which are applied in case of the in- M 1896-App. Cas. 199-209. vasion of a trade-mark " (id. p. 231). " Coats v. Merrick Thread Co., 149 "Collins Co. v. Oliver Ames & U. S. 562-1892, at p. 566; 37 L. Ed. 26 Unfair Business Competition. " The essence of a wrong in unfair competition consists in the sale of the goods of one manufacturer or vendor for those of another, and if defendant so conducts its business as not to palm off its goods as those of complainant the action fails." 58 "An act of competition, otherwise unobjectionable, done, not for the purpose of competition but with intent to injure a rival in his trade, is not an act done in an ordinary course of trade, and therefore is actionable if injury ensue." 59 " Everyone has the right to use and enjoy the rays of the sun, but no one may lawfully focus them to burn his neigh- bor's house. * * * Everyone has the right to use pen and paper, but no one may apply them to the purpose of de- frauding his neighbor of his property, or making counterfeit money, or of committing forgery. ' ' 60 " Competition in business is justifiable and desirable; but a business built up by one man by the use of peculiar pack- ages and names, should not be appropriated by another by contrivances which, although not strictly within the' rules of liability, yet are designed to accomplish a purpose equally injurious. Persons thus situated are not regarded with favor by a court of equity. ' ' 61 " If the same evil results are accomplished by the acts prac- ticed by this defendant which would be accomplished by an adoption of plaintiff's name, why should equity smile upon the one practice and frown upon the other? Upon what principle of law can a court of equity say, if you cheat and defraud your competitor in business by taking his name, the court will give relief against you, but if you cheat and defraud him by assuming a disguise of a different character your acts are beyond the law? Equity will not concern itself about the 847; 13 Sup. Ct. 966. See also Den- SS. Co. v. McGregor, Gow & Co., nison Mfg. Co. v. Thomas Mfg. Co., L. R, 23 Q. B. D. 598-609-1889. 94 F. R. 651-1899 (C.C.Del.). "Shaver v. Heller & Merz Co., 58 Howe Scale Co. v. Wijckoff, Sea- 108 F. R. 821-825-1901 (C. C. A. mans & Benedict, 198 U. S. 118- 8th Cir.) ; 65 L. R. A. 878. 140-1905; 49 L. Ed. 972; 25 Sup Ct. 61 Church, J., in Wolfe v. Burke, 56 609. N. Y. 115-122-1874. 59 Lord Esher (dissenting), Mogul What is Unfair Competition? 27 means by which fraud is done. It is the results arising from the means, it is the fraud itself, with which it deals." " The foregoing principles of law do not apply alone to the protec- tion of parties having trade-marks and trade names. They reach away beyond that, and apply to all cases where fraud is practiced by one in securing the trade of a rival dealer; and these ways are as many and as various as the ingenuity of the dishonest schemer can invent. ' ' M " The modes in which goods may be passed off as and for the plaintiff's vary. The most usual is where a particular mark on the goods or on the packages in which they are sold has been used to denote that they are made by a particular firm to such an extent that it is understood in the market to bear that meaning. The law as to those trade-marks is now regulated by statutes, but before there was any legislation on the subject it was well settled that when anyone adopted a mark so closely resembling the trade-mark of the plaintiff that it would be likely to be mistaken for it, and put it on his goods and sold them, knowing that though the persons to whom he sold them were well aware that they were not the plaintiff's make, yet that they were meant to be sold to others who would see only the trade-mark, and were likely to be de- ceived by its resemblance to that of the plaintiff, he might be properly found to have knowingly and fraudulently sold the goods as and for the plaintiff's goods: 63 And, so far, there was no difference between law and equity. But at law it was necessary to prove that an injury had been actually done. In equity it was enough to show that the defendant threatened to do, and would, if not prevented, do that injury. ' ' * # # # a There is another way in which goods not the plaintiff's, may be sold as and for the plaintiff's. A name may be so appropriated by user, as to come to mean the goods of the plaintiff, though it is not, and never was, impressed on the goods or on the packages in which they are contained, so as to be a trade-mark, properly so called, or within the 63 Weinstock, Lubin & Co. v. M Citing Sykes v. Sykes, 3 B. & C. Marks, 109 Cal. 529-40-1895; 42 541-1824. Pae. 142; 30 L. R. A. 182. 28 Unfair Business Competition. recent statutes. "Where it is established that such a trade name bears that meaning, I think the use of that name, or one so nearly resembling it as to be likely to deceive, as applicable to goods not the plaintiff's, may be the means of passing off those goods as and for the plaintiff's, just as much as the use of a trade-mark; and I think the law (so far as not altered by legislation) is the same." 64 " He (competitor in business) must not, by any deceitful or other practice, impose on the public, and he must not by dressing himself in another man's garments, and by assuming another man's name, endeavor to deprive that man of his own individuality and thus despoil him of the gains to which, by his industry and skill, he is fairly entitled." 65 " If a person had established a business at a particular place, from which he has derived, or may derive, profit, and has attached to that business a name indicating to the public where or in what manner it is carried on, he has acquired a property in the name which will be protected from invasion by a court of equity, on principles analogous to those which are applied in case of the invasion of a trade-mark." 66 " Unfair competition consists essentially in the conduct of a trade or business in such a manner that there is an express or implied representation that the goods or business of the one man are the goods or business of another." 67 " The imitation of the index sheets would deceive the ordi- nary purchaser, and the appellee had a purpose that such effect should result. This constitutes unfair competition, not- withstanding that the merchant purchasing from the manufac- turer may not have been deceived." w " Unfair competition may be defined as passing off, or at- tempting to pass off, upon the public the goods or business of one man as being the goods or business of another. ' ' 69 " Notwithstanding plaintiff had no real or legal trade-mark, M Singer Mfg. Co. v. Laog, L. R. fl7 28 Am. & Eng. Eneyc. 345, 2d 8 App. Cas. 15-30-32-1882. es Globe Wernicke Co. v. Brown & "Howard v. Henriques, 3 Sandf. Besly, 121 F. R. 90-1902, at p. 92 (N. Y.) 725-27-1851. (C. C. A. 7th Cir.). "Harper v. Pearson, 3 L. T. N. 69 28 Am. & Eng. Eneyc. 409, 2d S. 547-49-1861. ed. What is Unfair Competition! 29 if the defendant had intentionally simulated the peculiar device or symbol employed by plaintiff on his labels, and such simulation was calculated to deceive ordinarily prudent per- sons, and did deceive such persons, the plaintiff would be entitled to protection against the consequence of such decep- tion, not because of his device or symbol being a trade-mark in the legal sense of that term, but because of the fraud and deception practiced by the defendant upon the plaintiff and the public." 70 " La concurrence deloyale c'est l'acte pratique de mauvaise foi a l'effet de produire une confusion entre les produits de deux fabricants, ou de deux commergants, ou qui, sans pro- duire de confusion, jette le discredit sur un etablissement rival." 71 If another definition of unfair business competition may be attempted, it may be said to be the use in business competi- tion, of rights, property or powers, which may or may not ordinarily be susceptible of exclusive appropriation by one individual, in such a way as to injure another by misrepresen- tation, deceit, dishonesty, or fraud and usually with intent so to do. Unfair competition in the sense in which it is most often used, is a question of representation — representing one person's goods to be those of another and similar false representations. In England the term " Passing Off " is practically confined to this sort of unfair competition. The latter term is not used there. It is held in France that unfair competition may arise with- out confusion between merchandise or business concerns, as where a merchant attributes to himself qualities, titles or rewards which he never actually obtained for himself. 72 This is a meaning of the term which is recognized here, now and then, by the public press, but not by courts. ,0 Alff & Co. v. Radam, 77 Tex. des Marques de Fabrique et de la 530-41-1890; 14 S. W. 164; 9 L. R. Concurrence Deloyale. Paris, 1906, A. 145n; affirmed, 81 Tex 122-1891; § 459. 16 S. W. 990. 72 Pouillet Traite des Marques de 71 Darras, cited by Pouillet Traite Fabrique, etc. Paris, 1906, § 675. 30 Unfair Business Competition. The term is coining to have here a colloquial meaning as a name for all kinds of commercial trickery and fraudulent methods. In the New York Times of September 10, 1908, the following head lines appeared: " Standard Oil Co. denies Trickery — Agents testify * * * that they resorted to no Unfair Competition." § 15. Selling Another's Goods as One's Own. — The ma- jority of unfair competition cases are instances of attempts by the defendant to pass off his goods as those of his rival. There are cases, however, of attempts of defendants to pass off, not their goods as those of the rival, but the rival's goods as their goods and goods of third persons as the goods of the plaintiff. These are just as much cases of unfair competition — passing off cases — as the more common sort. § 16. Grounds of the Action for Unfair Competition. — Fraud is a basis of actions for unfair competition. That has been demonstrated beyond a doubt by many cases. It is not so clear, however, just who it is the Court aims to protect from fraud. An attempt to pass off goods fraudulently is discovered to the Court: is it set in motion by its abhorrence of dishonesty and double dealing or does it feel called upon to protect the interests — his property — of the complainant or does it feel that it is its duty to first preserve the pur- chasing public from deception, or does it act in such a case be- cause of all these reasons'? The following are the principal grounds usually given : First, That the court acts to promote honest and fair dealing; Second, That the aim of the court is to protect the purchasing public ; Third, That the court aims to protect not public rights but the rights of individuals. § 17. Theory that the Court Acts to Promote Honest and Fair Dealing. — Again courts have said that unfair competition rests on the theory that a court is in duty bound to protect and promote honesty and fair dealing. " The ground on which the jurisdiction of equity in such cases is rested, is the promo- tion of honesty and fair dealing, because no one has a right to sell his own goods as the goods of another. ' It is perfectly manifest,' said Lord Langdale, ' that to do this is a fraud and a very gross fraud.' " 73 73 Palmer v. Harris, 60 Pa. St. 156-1869, at p. 159. What is Unfair Competition? 31 § 18. Theory that the Court Aims to Protect the Purchasing Public. — The early English cases assigned fraud on the purchasing public as the ground on which equity would relieve. Fraud on the public to the detriment of the plaintiff was the foundation of the right to damages at common law, according to Lord Blackburn in Singer Manu- facturing Co. v. Loog; 74 and as long ago as 1838, it was de- cided in Millington v. Fox, 75 that intentional deceit was not essential to warrant an equity court in granting an injunction, but that the court will interfere to protect a plaintiff, if ordi- nary or unwary purchasers are likely to be misled to mistake the defendant's goods for the plaintiff's. Nothing can be more emphatic on this point than the judgment in Singer Machine Manufacturers v. Wilson; 7 ' 6 where it was held that in cases of this description, the probability of misleading, not experts or persons who know the real facts, but ordinary or unwary customers, is the mischief to be guarded against. This point was recognized in 1824 in Sykes v. Syhes. 71 In the Singer Manufacturing Co. v. Loog 7S Lord Selborne, commenting on the brass plate at one time used by the defendant in that case, held that persons may be misled and may mistake one class of goods for another, although they do not know the names of the makers of either. " To justify a court of equity in interfering, there must be something more than the mere duplication by the one party of the other's trade name. This is found in the deceptive use of imitative methods of display, or other devices by which the public are led into buying the infringer's goods when they in- tended to buy those of the original producer. The fraud which is thus perpetrated is a legitimate ground for equitable inter- ference, and is the practical basis for it " 79 (id. p. 209). " The grounds on which unfair competition in trade will be enjoined are either that the means used are dishonest, or that, by false representation or imitation of a name or device, there is a tendency to create confusion in the trade, and work 74 L. R, 8 App. Cas. 15-1882. 78 8 App. Cas. IS. 16 3 Myl. & Cr. 338. 79 Draper v. Skerrett, 116 F. R. 76 3 App. Cas. 376-391-2-1877. 206-1907 (C. C. E. D. Pa). "3 B. & C. 541-1S24. 32 Unfair Business Competition. a fraud upon the public, by inducing it to accept a spurious article. Where these grounds are absent, and no trade-mark rights exist, injunction does not lie " (head note). 80 The multitudes of ignorant and unwary should be regarded in considering the interest of traders who may be injured by the mistakes of purchasers. If one adopts a name, which has been appropriated by another, he must use it with such pre- cautions that the reasonable probability of deceit of purchasers will be avoided. 81 As between rival claimants to the right to reproduce a drama or play, while the author and he to whom it was sold were entitled to protection, it was held that the public were entitled to be honestly informed as to who was playing it, that they might not confuse the play in question with a poor imitation. 82 Honest competition relies on the intrinsic merits of the goods. It does not require a false or fraudulent mark. To give to the product of what is claimed to be superior skill, the name, similitude and imitation of an article with which it profess-es to compete is fraud. The public should not be obliged to guard against such methods. 80 Vitascope Co. v. U. S. Phono- graph Co., 83 F. R. 30-1897 (C. C. N. J.). S1 Singer v. Wilson, 3 App. Cas. 376-1877. Powell v. Birmingham Vinegar Brewery Co., (1S96) 2 Ch. 54. Lord Kay : " It was argued that the defendant had nothing to do with the deception of the public. The answer is obvious. Every person who, intending to buy a bottle of the plaintiff' s sauce, gets instead a bottle of the defendants ', is a customer taken from the plaintiff by this de- ceit; and if this is extensively done the damages to the plaintiff's trade would be serious" (p. 83). 82 Hopkins Amusement Co. v. Frohman, 103 111. App. 613-1902. Frohman and Gillette put on the stage a play called " Sherlock Holmes/' Appellant attempted to play a piece called " Sherlock Holmes, Detective." Held, names of publications may be protected by trade-mark (citing Robertson v. Berry, 50 Md. 591- 1878). "Sherlock Holmes," the drama, has not been copyrighted. Its authors and Frohman as their grantee have right to protection on the ground of their property in it (citing McLean v. Fleming, 96 U. S. 245-1877; 24 L. Ed. 828). Froh- man owned exclusive right to produce this play by contract with the author. One seeing advertise- ment of " Sherlock Holmes, Detec- tive " would suppose it the same as Frohman's play. The public are en- titled to protection as well as Froh- man. What is Unfair Competition'? 33 " A disguise is not usually assumed for an honest object. It is a mark more characteristic of deception and fraud. It defeats the very end and object contemplated by legitimate competition — the choice to the public to select between the articles exposed to sale — and operates as a deception and im- position on the dealer. It is to prevent such a course of trans- action and dealing that the interposition of the Court of Chan- cery is asked, and I have no doubt it is within its proper juris- diction to restrain a proceeding of such a character by in- junction." 83 " The doctrine of unfair competition is possibly lodged upon the theory of the protection of the public whose rights are infringed or jeopardized by the confusion of goods pro- duced by unfair methods of trade as well as upon the right of a complainant to enjoy the good-will of a trade built up by his efforts and sought to be taken from him by unfair methods. ' ' ** § 19. Theory that the Court aims to Protect, not Public Rights, but Rights of Individuals. — The theory that it is the duty of the Court to protect the public is not universally held. In many jurisdictions it has been considered that the Court should be concerned with the personal rights of the plaintiff and not those of the general public. The private action is given, not for the benefit of the public, although that may be its incidental effect, but to relieve against the invasion, by the defendant, of the exclusive rights of complainant. " The bill here loses sight of the thoroughly established principle that the private right of action in such cases is not based upon fraud or imposition upon the public, but is maintained solely for the protection of the property rights of complainant." 85 Here is seen the effect of the denial that the interest of the complainant is property. If that interest be considered prop- erty, there is little question as to the right of the Court to act. Chancellor Westbury differentiates, in this connection, cases where the defendant imitates the plaintiff's goods and thus 83 Taj/lor v. Carpenter, 2 Sandf. Cement Co., 130 F. R. 703-705-1904 Ch. 676-1845; Drake Medicine Co. (C. C. A. 7th Cir.). v. Glessner, 68 Ohio St. 337-1903; "American Washboard Co. v. 67 N. E. 722, 62. L. R. A. 94. Saginaw Mfg. Co., 103 F. R. 281- 81 G. W. Cole Co. v. American 1900; 50 L. R. A. 609. 3 34 Unfair Business Competition. causes mistakes on the part of buyers, and those cases where this feature is not present. He says: " It is, indeed, true that, unless the mark used by the defendant be applied by him to the same kind of goods as the goods of the plaintiff, and be in itself such that it might be and is mistaken in the market for the trade-mark of the plaintiff, the Court will not interfere, because there is no invasion of the plaintiff's right; and thus the mistake of buyers in the market, under which they, in fact, take defendant's goods as the goods of the plaintiff — that is to say, imposition on the public — becomes the test of the prop- erty in the trade-mark having been invaded and injured. * * * The true principle, therefore, would seem to be that the jurisdiction of the Court in the protection of given trade- marks rests upon property, and that the Court interferes by injunction, because that is the only mode by which property of this description can be effectually protected. The same things are necessary to constitute a title to relief in equity in the case of the infringement of a right to trade-mark as in the case of the violation of any other right of property." 86 " When one has established a trade or business in which he has used a particular device, symbol, or name so that it has become known in trade as a designation of such person's goods, equity will protect him in the use thereof. Such person has a right to complain when another adopts this symbol or manner of marking his goods so as to mislead the public into purchas- ing the same as and for the goods of the complainant. Plain- tiff comes into a Court of Equity in such case for the pro- tection of his property rights. The private action is given, not for the benefit of the public, although that may be its in- cidental effect, but because of the invasion by defendant of that which is the exclusive property of complainant. In Canal Co. v. Clark, 87 the Court said: ' It is invariably held that the essence of the wrong consists in the sale of the goods of one manufacturer or vendor as those of another.' " 88 ** Leather Cloth Co. v. American 8S American Washboard Co. v. Leather Cloth Co., 4 De G. J. & S. Saginaw Mfg. Co., 50 L. R. A. 609 > 137-41-42; 11 H. L. Cas. 523. 103 F. R. 281-84-1900. "15 Wall. 311-1871; 80 U. S. 311; 20 L. ed. 5S1. What is Unfair Competition? 35 11 The right to restrain anybody from using any name that he likes in the course of any business he chooses to carry on is a right in the nature of a trade-mark, that is to say, a man has a right to say, ' You must not use a name, whether fictitious or real — you must not use a description, whether true or not, which is intended to represent, or calculated to represent, to the world that your business is my business, and so, by a fraudulent misstatement, deprive me of the profits of the busi- ness which would otherwise come to me.' That is the prin- ciple, and the sole principle, on which this Court interferes. The Court interferes solely for the purpose of protecting the owner of a trade or business from a fraudulent invasion of that business by somebody else. It does not interfere to pre- vent the world outside from being misled into anything. ' ' 80 The Supreme Court of the United States considers that the action of unfair competition is based on the ground that the deception by one trader resulting in loss to another of " ad- vantages of celebrity " is against equity. " Equity gives relief in such a case, upon the ground that one man is not allowed to offer his goods for sale, representing them to be 89 Levy v. Walker, L. R. 10 Ch. Div. 436-^7-48-1879. " Imposition on the public occa- sioned by one man selling his goods as the goods of another, cannot be the ground of private action or suit." Chancellor Westburyva Leather Cloth Co. v. American Leather Cloth Co. (4 De G. J. & S. 137-41-1863, 11 H. L. Cas. 523) ; W eerier v. Brayton, 152 Mass. 101, 25 N. E. 46, 8 L. R. A. 640. " The jurisdiction of a court of equity to restrain the wrongful use of such trade-marks by persons not entitled thereto is founded, not upon the imposition upon the public thus practiced, but on the wrongful in- vasion of the right of property therein which has been acquired by others. A remedy- is offered only to the owner of the right of property in such trade-marks on account of the injury which is thus done to him. The wrong done to him consists in misrepresenting the vendible articles sold as being those of the true owner of the trade-mark, and thus to a greater or less extent depriving him of the benefit of the reputation he has given to the articles made or dealt in by him" (id. p. 103). Cited in American Washboard Co. v. Sagi- naw Mfg. Co., 103 F. R. 281-1900; 50 L. R. A. 609. " The rule which protects against unfair competition is primarily for the protection of the party against whom such competition is directed, and only incidentally for the pro- tection of the public." (Paul on Trade-marks, p. 388, § 215.) 36 Unfair Business Competition. the manufacture of another trader in the same commodity. Suppose the latter has obtained celebrity in his manufacture, he is entitled to all the advantages of that celebrity, whether resulting from the greater demand for his goods or from the higher price the public are willing to give for the article, rather than for the goods of the other manufacturer, whose reputation is not so high as a manufacturer. ' ' 90 See also Shaver v. Heller? 1 which holds that suits for unfair competition in trade " are founded upon the damage to the trade of the complainants by the fraudulent passing of the goods of one manufacturer for those of another. * * No proprietary interest in the words, names, or means by which the fraud is perpetrated is requisite to maintain a suit to enjoin it. It is sufficient that the complainant is entitled to the cus- tom, the good-will, of a business and that this good-will is injured or is about to be injured, by the palming off of the goods of another as his. * * There is no practicable way other than by prohibition of the use of the name, by which filching the trade of an article whose sale is solicited and made by its name can be effectually prevented." 92 80 McLean v. Fleming, 96 U. S. 245-251-1877; 24 L. ed. 828. 91 108 F. R. S21-26-27-1901 (0. C. A. 8th Cir.), 65 L. R. A. 87S. 62 See also Batty v. Hill, 1 Hem. & M. 264-1863. A manufacturer ob- tained a gold medal at Exhibition of 1862 for pickles, etc., and sought to restrain a rival from making false statements on his goods that he too had been awarded a gold medal at same exhibition in respect of same class of goods. Held: " It is no part of the duty of the court to enforce the observance of the dictates of morality; and though the old maxim ' rem facias, rem, si possis, recte; si non, quocunque modo rem,' seems to apply in full force to modern times, I can only interfere when some private right is thereby in- fringed " (id. p. 268). As there was no attempt to pass off defendant's goods as those of the plaintiff, in- junction was refused. Followed by Stirling, J., in Tallerman v. Dowsing Radiant Heat Co., (1901), 1 Ch. 1. Avery & Sons v. Meikle & Co., 81 Ky. 73-S4-1SS3. * * * " The object of trade-mark law is to pre- vent one person from selling his goods as those of another, to the in- jury of the latter and of the public. It grew out of the philosophy of the general rule that every man should so use his own property and rights as not to injure the property or rights of another, unless some prior- ity of right or emergency exists to justify a necessarily different man- ner of use." What is Unfair Competition? 37 A reading of the cases cited above shows that two grounds at least for this action have been recognized. (1) Protection of the purchasing public against deception. (2) Protection of the individual's rights in and to whatever " ad- vantages of celebrity " he has acquired in his business. The fact that some definite person has actually been deceived by particular acts of unfair competition complained of in an action, is the very best evidence of the unfairness of the methods of the defendant. AVhile the protection of the gen- eral public is not intrusted to any individual and no person may institute an action of this sort to prevent deception of people generally; nevertheless if the public is being deceived as to some article of commerce as, for instance, identity of a business house, some one is being wronged, and the righting of that wrong will often result in distinct benefit to the general public. Courts will sometimes protect trade names or marks, al- though not registered or properly selected as trade-marks, on the broad ground of enforcing justice and protecting one in the fruits of his toil. " This is bottomed on the principle of com- mon business integrity, and proceeds on the theory that, while the primary and common use of a word or phrase may not be exclusively appropriated, there may be a secondary meaning or construction which will belong to the person who has developed it. In this secondary meaning there may be a property right." 93 § 20. Attitude of Equity Courts Toward Personal Wrongs. — There is an increasing number of decisions by equity courts in which relief has been given against infringement of some personal right. Many of these cases are applications of old principles governing the issuing of the writ of injunction, to aew needs, — new injuries which modern conditions have pro- duced. Many of them are closely analogous to the application of the writ to unfair competition cases. This writ was origi- nally designed to prevent only injuries to property; and the principle has long been established that chancery will inter- vene by injunction only to protect property rights. "Sartor v. Schaden, 125 Iowa 696-1004, at p. 700. SS Unfair Business Competition. ' ' In many cases courts have striven to uphold the equitable jurisdiction upon the ground of some property right, however slender and shadowy, and the tendency of the courts is to afford more adequate protection to personal rights and to that end to lay hold of slight circumstances tending to show a technical property right. ' ' 94 According to these cases, the court of equity may protect a man from an injurious use of his name, not because it is a libel or calculated to do him injury, but because such use of the name will cause injury to his property. Yet these cases are not to be considered as holding that equity will never protect personal rights. It is doing more each year to protect such rights, although steadily declaring its jurisdiction does not go to that length. Equity jurisdiction is alleged to have been derived in part from the prerogative of the King as parens patriae, for the protection of helpless persons who, by reason of that fact, were regarded as wards of Chancery. 95 This included protection from the effects of a breach of contract or of a trust in which these helpless persons were interested ; use of portraits ; 9G preservation of the privacy of letters ; 9T protection of infants from injury by parents, etc. 08 In all cases similar to the above, equity does go to the relief of persons whose personal rights are in danger of violation. The nominal basis of the action is property rights. The actual relief is given to lessen or stop a personal injury. England has done away with this fiction by a statute enlarging the power of its courts of equity to include all cases in which it "Judge Dill in Yanderbilt v. 8 Misc. (N. Y.) 36-1894; 28 N. Y. Mitchell, 67 Atl. (N. J. Ct. of App.) Supp. 281; Marks v. Jaffa, 6 Misc. 97-100-1907 (citing note to Chap- (N. Y.) 290-1893; 26 N. Y. Supp. pell v. Stewart, 37 L. R. A. 787- 908; Schuyler v. Curtis, 147 N. Y. 1896); South v. Webster, 10 Beav. 434-1895; 42 N. E. 22; 31 L. R. A. 561-1847; Prudential Assurance Co. 286. v. Knott, L. R. 10 Ch. App. Cas. 9T Corliss v. Walker, 64 F. R. 230- 142-1875.) 1894, 31 L. R. A. 283; Gee v. 85 Butler v. Freeman, 1 Ambl. 301- Pritchard, 2 Swanst. 403-1818. 1756 ; Smith v. Smith, 3 Atk. 304- 9 ' Shelley v. Westbrooke, Jac. 266- 1745; Pearce v. Crutchfield, 14 Ves. 1821; Be Manneville v. Be Manne- Jr. 206-1807. ville, 10 Ves. Jr. 52-1804. '"Murray V. Gast Lithographic Co., What is Unfair Competition? 39 shall appear to the court to be just or convenient that such order should be made. 93 The New York Court of Appeals has held in Roberson v. Rochester Folding Box Co. 1 that the right of privacy, founded on claim to live without being a subject of publicity, does not exist in law or equity. The case is entitled to litle if any consideration, if its reception by other tribunals is to be a criterion; for it is seldom cited except to be dis- approved. " The jurisdiction of the Court of Chancery in cases of fraud is as broad and far reaching as the forms, the devices, and the ramifications of fraud can extend." 2 The case of Ball v. Best 3 shows not only an unfair use of a family name in trade but also that in this sort of a case the Court of Equity must and does consider the effect of the modern methods of doing business. This case involved the effect of competition by mail orders, 4 but mail order business is only one of the many new features of trade, which tax the learning of the chancellor to protect the ag- grieved party before him, under the rules of equity, in the face of these new conditions. Eegardless of the novelty of the method used, regardless of the seeming impossibility of applying to it any known equitable remedy, the complainant is entitled to the court's aid and protection in his effort to se- cure the fruit of his industry and invention. Exercising this part of its jurisdiction equity has protected various personal rights against injury. The following injunctions of this sort have been granted: Against use of a rifle range until ren- " Act of 1873, 25 sub-sec. 8. order business. Defendant was a '171 N. Y. 538-1902; 64 N. E. son of a former proprietor and 442; 59 L. R. A. 478. opened a store in Chicago under the 2 Judge Dill in Yanderbilt v. name of "A. S. Best & Co.," adver- Mitchell, 67 Atl. 97, at p. 99-1907. tising as " Liliputian Outfitters" See also Weinstock v. Marks, 109 and also " Formerly with Best & Co., Cal. 529; 42 Pac. 142; 30 L. R. A. N. Y." Defendant then started 182, where the relation of equity to to get mail order trade. An in- new kinds of wrongs is discussed. junction was granted restraining de- 3 135 Fed. 434-1905. fendant from using name " Best " * Bail v. Best, 135 Fed. 434-1905. with or without a prefix, and also The plaintiff owned " Best & Co., from using the word " Liliputian," Liliputian Bazaar," in N. Y. The although one house was in New York firm had built up a large mail and one in Chicago. 40 Unfair Business Competition. dered safe. 5 Noise of workshop. R 'in ging of church bell at night. 7 Use of unhealthful jail grounds. 8 Use of gas near dwelling. 9 Blasting near dwelling. 10 Powder Mills. 11 Dis- charge of sewer. 12 In nearly all these cases a question of property value is in- volved, but the principal question is one of personal rights. In those involving disturbance of sleep the element of prop- erty is nearly eliminated. In Tuchman v. Welch 13 the Federal court granted an injunction against persecution by state attor- ney, on account of alleged violation of liquor laws, on ground of protecting defendant's business from interference, and quite as much, his person and liberty from harassing pro- ceedings under the state law. English courts have sustained the jurisdiction of a court of equity to prevent an unwar- ranted use of a man's name, where the probable effect would be to expose him to the risk of future injury and liability. Courts of equity have done much to protect intellectual, moral and emotional life. They have protected reputation, although this relief is usually denied. 14 Also rights of privacy, and injury to feelings. § 21. What is Infringement. — The term "infringement " is usually applied to attempts to imitate some feature of a technical trade-mark. It was in use in this sense before the law of unfair competition was understood. Now, however, it is found equally in unfair competition cases, and may be con- sidered as a term covering all acts violating rights of others, either under the law as to technical trade-marks or that of unfair competition. s McKillopp v. Taylor, 25 N. J. Eq- 10 Scott v. Bay, 3 Md. 431-1853. 139-1874. " Crowder v. Tinkler, 19 Ves. Jr. 'Dennis v. Eckhardt, 3 Grant Cas. 617-1816; Wier's Appeal, 74 Pa. St. (Pa.) 389-1862. 230-1873; Daw v. Enterprise Powder 'Martin v. Nutkin, 2 P. Wins. 266- Mfg. Co., 160 Pa. St. 479-1894; 28 1724; Soltau v. De Held, 21 L. J. Atl. 841. (Ch.) N. S. 153-1851. "Butler v. The Mayor of Thomas- 8 Stuart v. La Salle County, etc., ville, 74 Ga. 570-1885. 83 111. 341-185. " 42 Fed. 548-1890. 'People's Gas Co. v. Tyner, 131 u Mead v. Stirling, 62 Conn. 586- Ind. 277-1891; 31 ST. E. 59; 16 L. R. 1892; 27 Atl. 591; 23 L. R. A. 227. A. 443. What is Unfair Competition 1 ? 41 § 22. Acts Contributory to Unfair Acts — Unfair acts are often rendered possible only through aid of third persons who contribute to the damaging result by the printing or making of labels or other articles, with or without knowledge of the use to which they are to be put by him to whom they are sold. 15 An action for unfair competition lies against one who makes and sells to others who are competitors of plaintiff's, labels and wrappers which closely resemble plaintiff's; which may, and, as alleged, actually have been, used by them to mislead the public ; it need not be alleged that the wrappers have been used for the specific kind of goods sold by plaintiff. 10 Printers have a right to print and sell " stock labels " to whomever they please and cannot be enjoined from so doing. But it cannot be objected, where one claims an exclusive right to the use of a stock label for a particular purpose that to allow this right would amount to a fraud on the printer, as curtailing his right to sell to any buyer. 17 Passing off the goods of a third party may be accomplished in various ways — such as by a retailer giving the goods of A to a customer who asks for the goods of B ; by his use of a show card of B on the goods of A ; by exhibiting some of B 's goods with a quantity of A's. This question of acts contributory to unfair acts is further considered in the chapter on Defenses under the head of the defense that " Deception is not due to defendant's acts, but to the acts of others." (§ 254.) 15 Hennessy v. Herrmann, S9 F. R. them to persons who used them for 669-1898 (Cir. Ct. N. D. Cal.). The goods not made by plaintiff. Held, keeping for sale and selling of labels That defendant should be restrained made in imitation of complainant's, from printing and selling any such with the intention, through their sale, labels, notwithstanding the possibility of putting into the hands of dealers that some might be legitimately used the means of deceiving ultimate pur- to replace labels that had been lost chasers gives a right of action. from plaintiff's bottles. Farina v. Silverlock, 4 Kays J. " Hildreth v. Sparks Mfg. Co., 09 650-1858. Plaintiff used certain F. R. 484-1899 (Cir. Ct. S. D. labels for cologne bottles. Defendant N. Y.). printed copies of these, or labels " Sartor v. Sehaden, 125 Iowa 696- closely resembling^ them and sold 705. CHAPTER II. Intent to Defraud — Must it Be Proved? Section 23. Question of intent is a plea raised by defense. 24. Division of eases as regards intent. 25. Cases holding that intent is immaterial. 26. Cases holding intent must be proved. 27. Fraudulent intent may be presumed. 28. No actual proof of intent necessary for presumption. 29. Knowledge of plaintiff's rights on part of defendant is unnecessary. 30. Denial of intent will not avail defendant. 31. Proof of specific orders to his agents and servants to act fairly will not excuse defendant. 32. Actual injury to plaintiff by defendant must be imminent. 33. Unimportant facts not a basis of presumption of intent to defraud. 34. Presumption may arise from similarity of name or get-up. 35. Presumption of fraud arises from so selling goods that vendees may pass them off fraudulently. 36. Presumption may be based on manner in which the truth is told. John Cutler, Esq., editor of " Reports of Patents-Design and Trade-Mark Cases — (the " R. P. C") in his lectures on " Passing-Off " — London, 1904, says that: "An inten- tion to imitate or copy, and an intention to pass off are two distinct tilings. The former may be legal, but the latter never can " (p. 6). It is the latter sort of intention that we have to do with here, the intent to be unfair, to pass off one's own goods or name as another's — or to pass off A's goods as the goods of B. In reading unfair competition cases, frequent state- ments will be found to the effect that proof of fraudulent intent on the part of the defendant is necessary to the action, but also quite as many and forceful statements that the rule is that no intent need be proved. Some of these statements are considered in this chapter in an attempt to discover the true rule. § 23. Question of Intent is a Plea Raised by Defense.— This question is raised usually as a defense, but it is con- [42] Intent to Defraud — Must it Be Proved? 43 sidered here, rather than under Defenses, because an under- standing of it seems necessary at the outset. This question is not important in technical trade-mark cases. The property right of a person in a technical trade-mark may be infringed unintentionally as well as fraudulently, and the innocent infringement will be restrained irrespective of the question of intention. 1 " In the instance of a lawfully regis- tered trade-mark, the fact of its use by another creates a cause of action. In the instance of the use in bad faith of a sign, not in itself susceptible of being a valid trade-mark, but so employed as to have acquired a secondary meaning, the whole matter lies in pais." 2 See § 175 as to Intent and Malice in actions based on inter- ference with contract. The plea of a defendant that his offense was not intended — that he acted in ignorance of the plaintiff's rights — does not lessen the plaintiff's damages. Here as elsewhere there may be damnum absque injuria. Equity cannot protect against every wrong that is committed. Some injuries must be suffered for which there can be no remedy. In cases involving names that have acquired a secondary meaning, the question of fraud is much simplified, because " when one has caused a particular species of manu- facture to be characterized by certain marks or symbols, and given the article such currency in trade that it is identified with the mark, the law holds him to be possessed of a property in such mark." 3 The possession of this property interest gives complainant rights, which are practically the same as those of the owner of a technical trade-mark, viz. : rights suffi- cient to warrant a court protecting it, regardless of whether or not one injuring it does so with fraudulent intent. The question then is as to the force of the plea, and whether an allegation of such intent on defendant's part is necessary in the plaintiff's bill. i Day v. Webster, 23 App. Div. 665-1900, at p. 677; 44 L. ed. 363; (N. Y.) 601-1897; 49 N. Y. Supp. 21 Sup. Ct. 270. 314. 3 The Mrs. G. B. Miller <& Co. 2 Elgin National Watch Co. v. Tobacco M'f'y v. Commerce, 45 N. Illinois Watch Case Co., 179 U. S. J. L. 18-23-1883. 44 Unfair Business Competition. § 24. Division of Cases as Regards Intent. — The Pennsyl- vania court lias divided cases of unfair competition as regards intent thus: " There are two classes of cases involving ju- dicial interference with the use of names, first, where the intent is to get an unfair and fraudulent share of another's business, and second, where the effect of the defendant 's action, irrespec- tive of his intent, is to produce confusion in the public mind and consequent loss to the complainant." 4 In both cases the courts of equity administer relief without regard to the exist- ence of a technical trade-mark. A division of these cases is suggested by the United States Supreme Court in Lawrence Mfg. Co. v. Tennessee Mfg. Co., 5 where it says: " The deceit- ful misrepresentation or perfidious dealing must be made out, or be clearly inferable from the circumstances." We will turn then to a consideration of the cases, in the effort to discover some principles of guidance as to the neces- sity of proving intent. The extremes are represented on the one hand by those that hold that it is not what the defendant intended, but what he did that a court must consider ; and on the other by those that hold that the action is based on fraud, which must be proven, because there can be no relief against a defendant, who had acted in good faith, although to the in- jury of the plaintiff. There can be no division of the cases by geographical lines, for both here and in England each view is upheld by cases of authority. This chapter deals, not with the cases in which clear proof is brought out of the deceitful intent of the defendant, in doing the acts complained of, but with those cases in which it is set np as a defense that the alleged wrongful acts were done in ignorance of the plaintiff's right; or, if not in ignorance of these rights, without any purpose or intent of injuring him directly or indirectly. Most of the cases of unfair com- petition fall in the latter class; and it is frequently a serious question how much proof must be offered by the plaintiff as to the defendant's motive. What are the requirements of * American Clay Manufacturing 6 138 IT. S. 537-51-1890; 34 L. ed. Co., a Corporation of Pa. v. Same of 997; 11 Sup. Ct. 396. New Jersey, 198 Pa. St. 1S9-1901, at p. 193; 47 Atl. Rep. 936. Lsttent to Defraud — Must it Be Proved ? 45 proof to establish a cause of action, how much knowledge of the defendant's purpose and intent must be shown to give the court grounds on which to grant relief? § 25. Cases Holding that Intent is Immaterial. — One of the earliest cases on this point is Millington v. Fox, decided in England in 1838. It is mentioned because it is frequently cited here and abroad as first laying down the rule that the defendant's intent was not an essential part of the cause of action. 6 About the year 1700, the plaintiff's business was founded by Crowley. In 1782 Millington became a partner. The business had since been carried on by him or his descend- ants under the name of " Crowley, Millington & Company." The steel they made became known as " Crowley's steel" or " Crowley Millington " steel and was distinguished by certain marks on the steel, the principal ones being either " Crowley " or " Crowley Millington," also the letters " I. H., ' ' being the initials of their principal workman. Six years before the filing of the bill, Fox began to mark steel with these said marks of the plaintiffs. He alleged that " Crow- ley " and " Crowley Millington " so far as he knew were merely marks, denoting certain kinds of steel that had been universally used in the steel trade for many years and that he had never heard of the plaintiffs' firm. Cottenham, L. C, considered that there was no fraud in the case and that " Crowley " and " Crowley Millington " were generally used in conversation at least as descriptive of a particular quality of steel, and added " that circumstance, however, does not de- prive the plaintiffs of their right to the exclusive use of those names; and, therefore, I stated that the case is so made out as to entitle the plaintiffs to have the injunction made per- 9 Millington v. Fox, 3 Myl. & Cr. facturer, whether done scienter or 338-1838. See also Ainsworth v. not, is an interference with his busi- Walmsley, L. R. 1 Eq. 518-25-1866. ness which this court will interpose Contention that, while in a trade-mark to prevent, on the ground that the case the scienter need not be proved, defendant is endeavoring to pass off misrepresentation must always be the goods of his own, or somebody shown to be wilful, not sustained, else's manufacture, as the manu- Wood, V. C, says : " The use there- f acture of the plaintiff." fore of the name of another manu- 4G Unfair Business Competition. petual " (id. p. 352). There was considerable evidence given to show that the plaintiffs had known for some time that the name had been used by other dealers among the de- fendants who marked their steel with these names and it seemed to be a fact, regardless of whether the plaintiffs knew it or not, that much steel had been sold by other firms than the plaintiffs, bearing these names. Perpetual injunction granted. In 1870, in Connecticut, the Supreme Court of Errors de- cided Holmes, Booth & Haydens v. Holmes, Booth & Atwoocl Mfg. Co. 7 a proceeding in equity to enjoin the use of a name. The defense was set up, that, in using the name in question, the defendants had no intention of injuring the plaintiffs. The court said: " There are cases which seem to establish the proposition that neither fraud nor actual in- tention to do the injury complained of is essential to the peti- tioner's case." 8 " The ground on which courts of equity afford relief in this class of cases is the injury to the party ag- to believe that the goods of one man or firm are the produc- tion of another. The existence of these consequences does not grieved, and the imposition upon the public by causing them necessarily depend upon the question whether fraud or an evil intent does or does not exist. The quo animo, therefore, would seem to be an immaterial inquiry " (id. p. 295-96). In 1877, the House of Lords in England in Singer Machine Mfg. Co. v. Wilson 9 held squarely that intent was not essential to relief. This case contains a well-considered opinion by Lord Cairns in which he follows Millington v. Fox, and contends that, whatever be the intent of the defendant in passing off his goods as those of the plaintiff, the injury to the plaintiff is the same ; and the action of the court must depend on the right of the plaintiff in the mark used or imitated by the defendant, rather than on the intent of the defendant. The case that was the foundation for this opinion involved the use of a name of an article on which a patent had expired. Lord Cairns said : " I wish to state in the most distinct manner that, in my opinion, 7 37 Conn. 278. Ule, 31 Beav. 292-1802; Davis v. 8 Citing Millington v. Fox, 3 Myl. Kendall, 2 E. I. 566-1850. & Cr. 33S-183S; Cartier v. Car- e 3 App. Cas. 376-91-1877. Intent to Defraud — Must it Be Proved? 47 fraud is not necessary to be averred or proved in order to obtain protection for a trade-mark. The argument that fraud must be proved assumes that the trade-mark of the plaintiffs has been adopted and used by the defendant, but contends that this use of it is to continue without restraint even after the improper use has been pointed out, merely because, in the first instance, it took place ignorantly or inadvertently. This argument appears to me to be founded on a misapprehension. A man may take the trade-mark of another ignorantly, not knowing it was the trade-mark of the other ; or he may take it in the belief, mistaken but sincerely entertained, that in the manner in which he is taking it he is within the law, and doing nothing which the law forbids; or he may take it knowing it is the trade-mark of his neighbor, and intending and desiring to injure his neighbor by so doing. But in all these cases it is the same act that is done, and in all these cases the injury to the plaintiff is just the same. The action of the court must depend upon the right of the plaintiff, and the injury done to that right. What the motive of the defend- ant may be, the court has very imperfect means of knowing. If he was ignorant of the plaintiff's right in the first instance, he is, as soon as he becomes acquainted with them and per- severes in infringing upon them, as culpable as if he had orig- inally known them. I have never known any serious doubt entertained on this subject since the case of Millington v. Fox." 10 In 1877, also, the New York Court of Appeals held that in- tent was not necessary, in a case not a technical trade-mark case. The United States trade-mark statute was not then in a valid form and was not in force. 11 Here, as in other civil actions, the law does not try to pene- trate the secret motives with which the act is done. It contents itself with the conclusion that the party intended the natural and probable consequences of the act. 12 10 3 Myl. & Cr. 338-1838. tent on the part of the wrongdoer. 11 Colman v. Crump, 70 N. Y. 573- It is sufficient that the proprietary 8-1877. In 1860 plaintiffs adopted as right of the party and its actual in- their trade-mark 'a bull's head. fringement is shown." "Neither is it necessary to establish u McCann v. Anthony, 21 Mo. a guilty knowledge or fraudulent in- App. 83-1SS6. 48 Unfair Business Competition. What is in the mind of the defendant, what his motive was, whether he actually intended what he accomplished, is always a hard question and sometimes one that cannot be answered. Lord Cairns rightly says there is no difference between the guilt of him who first acted in ignorance of plaintiff's rights and later, on learning of them, continued his reprehensible con- duct, and he who set out from the start to injure the plaintiff's business. The real question is not of intent so much as it is of rights — the extent of the rights of each party to the name in question. The opinion in Singer Machine Manufacturers v. Wilson Machine Manufacturers,™ cites Welch v. Knott, 1 * where it was said that " the defendant would not be en- titled to use the plaintiffs' bottles in such a manner as, in fact, to mislead the public, although there might be no inten- tion on his part to mislead." This doctrine was again enunci- ated in England, in 1899, in Cellular Clothing Co. v. Maxton & Murray, 15 where the question whether or not fraudulent in- tent was necessary to a good cause of action on the ground of unfair competition, was discussed. The court held, citing Mill- ington v. Fox, that fraudulent intent was not necessary to con- stitute a right to claim protection against the unlawful use of words. " The only observation that I wish to make upon that part of the argument," said the court, " is that it seemed to be assumed that a fraudulent intention is necessary on the part of the person who was using the name in selling goods in such a way as to lead people to believe that they were the goods of another person. That seems to me to be inconsistent with a decision given something like sixty years ago by Lord Cotten- ham in Millington v. Fox, 16 who goes out of his way to say very emphatically that that is not at all necessary in order to constitute a right to claim protection against the unlawful use of words or things — I say things, because it is to be observed . that not only words but things, such as the nature of the wrap- per, the mode in which the goods are made up, and so on, may go to make up a false representation ; but it is not neces- sary to establish fraudulent intent in order to claim the inter- vention of the court. ' ' "3 App. Cas. 376-1877. "(1899) App. Cas. 326. 14 4 K. & J. 747-51-1857. " 3 Myl. & Cr. 338-1838. Intent to Defraud — Must it Be Proved? 49 The English rule is summarized by Mr. Cutler 17 thus : "It is not necessary that the person charged with passing off should be proved to have intended to pass off his goods as those of the plaintiff. The question is, what is the commercial effect of what he is doing? If the effect would be to pass off his goods as those of the plaintiff, then his honesty of purpose or the absence of any intention to deceive is no defense." And Lord Halsbury states it thus : ' ' Where one comes to see where the real question is, it is in a single sentence. Whether the one name is so nearly resembling the name of another as to be calculated to deceive? * * * That is the very question your Lordships have to decide * * * In the result it is per- fectly immaterial to my mind, for the purpose of the decision of this case, whether they were fraudulent or not, * * * it is perfectly immaterial whether they intended it or not." 18 The state courts of the United States are far from uniform on this question. Many follow the rule of the English cases, just considered, while others uphold the stand taken by the United States Supreme Court. Holmes, Booth & Hay dens v. Holmes, Booth £ Ativood Mfg. Co., 19 has been referred to, Pratt's Appeal 20 holds the same as to intent. 17 " Passing Off," by John Cutler, Lond., 1907, pp. 5, 6. 18 North Cheshire, etc., Brewery Co. v. Manchester Brewery Co., (1899) App. Cas. 83-85-87. "37 Conn. 278-1870. 50 117 Pa. St. 401-1888; 11 Atl. 878. The Master found in his report that the defendant did not in- tend to perpetrate an actual fraud in adopting the plaintiff's mark, which had been in use for seventy years; and the lower court said in its opinion : " I have carefully ex- amined the testimony upon this point, and can discover no evidence of fraud or bad faith in the use of the trade-mark," and a perpetual in- junction was granted. On appeal the court says : " If the defendant's 4 print is an imitation of that of tbe plaintiff, if it is calculated to deceive and mislead, the motive of the de- fendant in adopting it is not material so far as the law of the case is con- cerned, however much it might affect it in a moral point of view. The protection which equity extends in such cases is for the benefit of the manufacturer, and to secure to him the fruits of his reputation, skill, and industry. The protection of the pub- lic is another consideration and one that does not usually enter into such cases" (p. 410). Cited in Eckhart v. Consolidated Milling Co., 72 111. App. 70-1897, at p. 72. " The motives of the persons at- tempting the wrongful appropriation are not material. They neither ag- 50 Unfair Business Competition. In Wirtz v. Eagle Bottling Co., 21 the defense was set up that no attempt or intent to imitate plaintiff's labels was made by defendant ; but it was held that this fact constituted no defense. gravate or extenuate the injury caused by such appropriation. The act is an illegal one and must, if necessary, be presumed to have been done with an intent to cause the results which naturally flow from it. Nor will a court of equity refuse to enjoin the wrongful appropriation of a corporate name until the right of the first corporation to the name has been established by the verdict of a jury in an action at law." Newby v. Oregon Central By. Co., Fed. Cas. No. 10,144-1869, at p. 40 ; I Deady 609. This case arose on petition to enjoin the Oregon Cen- tral Railway from using its name. Eckhart v. Consolidated Mill- ing Co., 72 111. App. 70-1897. The names in question were the flour brands " Christian's Superlative," " Pettit, Christian & Company Su- perlative," and " Ceresota." The de- fendants had put up flour in bags of plaintiff bearing these brands. Held, " It is not necessary to show that the defendant acted with fraud- ulent intention" (at p. 72). Citing Pratt's Appeal, 117 Pa. St. 401-1888; II Atl. 878; Holmes, Booth & Hay- den v. Holmes, Booth & Atwood Mfg. Co., 37 Conn. 278-1870; Filley v. Fassett, 44 Mo. 168-1869; Black- well v. Wright, 73 N. C. 310-1S75; Davis v. Kendall, 2 R. I. 566-1850; Coffeen v. Brunton, 5 McLean 256- 1851; Fed. Cas. No. 2,947. In the last mentioned case it is said that " Where the same mark or label is used, which recommends the article to the public by the es- tablished reputation of another who sells a similar article, and the spu- rious article cannot be distinguished from the genuine one, an injunction will be granted, although there is no intentional fraud. And I am in- clined to think that this is a correct view of the principle, for the injury will be neither greater nor less by the knowledge to the party" (p. 1185). "50 N. J. Eq. 164-67-1892; 24 Atl. 658. Wirtz bottled beer and sold it at wholesale. He invented three labels which he put upon his goods. The defendant imitated plaintiff's labels. This case is particularly in- teresting on the question of intent. The defendant was formerly in the employ of the plaintiff. He saw the preparing of the plaintiff's labels and alleged there was no attempt or in- tent on his part to imitate these labels. " The law, in civil cases, does not attempt to penetrate the secret motive which induced the act brought in judgment, but judges of its legal quality solely by the consequences which have actually and necessarily proceeded from it. It is no less a dictate of justice, than of sound reason, that every person must be understood to have intended to do just what is the natural consequence of his act deliberately done." The aggrieved person, in cases of this class, is not required to show inten- tional fraud, but he makes a suffi- cient case to give him a right to pro- tection when he shows that the de- fendant is using his label, or one so nearly like it as to render deception of public and injury to himself Intext to Defraud — Must it Be Proved? 51 " The vital question," said the court, " in cases of this kind is not what did the defendant mean, but what has he done? The legal quality of an act, resulting in injury, must be de- cided, not by the motive with which it was done, but by the consequences which have necessarily resulted from it." The oldest of the foregoing cases are founded, not on special provisions of statute, but on general equitable principles laid down in the rough, in cases that preceded any trade-mark statutes in England or America. These are general prin- ciples and apply to all cases, whether of statutory infringe- ment or of unfair competition as that term is generally understood; and we believe further, that the cases which, long before the statutes, held that intent need not be proven or even presumed to warrant a court in stopping fraud, deceit, and injury, will ultimately be recognized as authority still. § 26. Cases Holding Intent Must be Proved.— In 1877, the Supreme Court of the United States first laid down the rule that intent must be proven to obtain an injunction against un- fair competition. In McLean v. Fleming, 22 Clifford, J., wrote: " Positive proof of fraudulent intent is not required where the proof of infringement is clear, as the liability of the infringer arises from the fact that he is able, through the unwarranted use of the trade-mark, to sell a simulated article as and for the one which is genuine. Nor is it necessary in order to give a right to an injunction that a specific trade-mark should be infringed ; but it is sufficient that the court is satisfied that there was an intent on the part of the respondent to palm off his goods as the goods of the complainant, and that he persists in doing so after being requested to desist " (p. 254. Citing Woollam v. Ratcliff). 2 * This case was decided in 1877, with the Act of 1870 in force. probable, citing Miller Tobacco probable, in tbe sale of tbe goods of Manufactory v. Commerce, 45 N. J. tbe parties, tbat one will be mis- L. 18-18S3. " Neither is he required to taken for the other, enough is shown prove that persons have actually been to make it the duty of the court to deceived, and that his adversary's interfere" (id. pp. 167-8). goods have been purchased under the "96 U. S. 245-54-1877; 24 L. ed. belief that they were' his. If it ap- 828. pears that the resemblance between 2S 1 Hem. & M. 259-1863. the two labels is such that it is 52 UxFAin Business Competition. The opinion opens with a reference to it. But this act was de- clared unconstitutional by the Trade-mark Cases. 24 It was not until 18S1 that a valid act was passed. "What influence the statute had on this decision it is not possible to discover. It is somewhat remarkable that in so important a case as this the court should overlook the cases just referred to which seem to speak so distinctly the other way. It would seem that had these cases been fully considered, some clear evidence of that consideration would appear in the opinion. Following McLean v. Fleming, in 1890 the court decided Lawrence Mfg. Co. v. Tennessee Mfg Co., 27 ' which stands distinctly for the necessity of proving intent. " Undoubtedly an unfair and fraudulent competition against the business of the plaintiff, conducted with the intent on the part of the de- fendant to avail itself of the reputation of the plaintiff to palm off its goods as plaintiff's, would, in a proper case, constitute ground for relief" (p. 549). This statement is founded on Putnam Xail Co. v. Bennett;-* New York & R. Cement Co. v. Coplay Cement Co.; 21 Wotherspoon v. Currie; 2s Thompson v. Montgomery.^ The court then added (p. 551), " but the deceitful representation or perfidious dealing must be made out, or be clearly inferable from the circumstances." In 1900, Elgin National Watch Co. v. Illinois Watch Co. 30 was decided. It held that " if a plaintiff has the absolute right to the use of a particular word or words as a trade-mark, then if an infringement is shown, the wrongful or fraudulent in- tent is presumed, and although allowed to be rebutted in ex- emption of damages, the further violation of the right of prop- erty will nevertheless be restrained. But where an alleged trade-mark is not in itself a good trade-mark yet the use of the word has come to denote the particular manufacturer or vendor, relief against unfair competition or perfidious dealing will be awarded by requiring the use of the word by another M 100 U. S. 82; 25 L. ed. 550. 2S 5 L. R. H. L. Cas. 508-1872. 25 138 U. S. 537-1890; 34 L. ed. M 41 Ch. Div. 35-18S9. 997; 11 Sup. Ct. 396. 30 179 U. S. 665-71; 44 L. ed. 365; 26 43 Fed. S00-1S90. 21 Sup. Ct. 270. 27 44 Fed. 277-1S90; 10 L. R. A. 833. Intent to Defeaud — Must it Be Proved ? 53 to be confined to its primary sense by such limitations as will prevent misapprehension on the question of origin. In the latter class of cases, such circumstances must be made out as will show wrongful intent in fact, or justify that inference from the inevitable consequences of the act complained of." Various state and federal courts have adopted a similar rule on the strength of these cases. 31 31 Day v. Webster, 23 App. Div. (N. Y.) 601-1897; 49 N. Y. Supp. 314. There was no question of tech- nical trade-marks here. Plaintiffs rested upon the introduction of the respective labels. They offered no scintilla of evidence tending other- wise to show that confusion had arisen from the two labels. Court held labels would not confuse and refused to enjoin and that fraud was essence of action for unfair competition. Goodman v. Bohls, 3 Tex. Civ. App. 183-S8-1S93; 22 S. W. 11. "And if you further believe that * * * Goodman placed on the market in said county of El Paso, and sold in said market * * * packages bearing such a resem- blance to said package of the plaintiff as would deceive the pur- chaser using such ordinary care as the purchasers would exercise ordi- narily in purchasing such goods; and if you further believe that defend- ant used such mode and manner of packing said tobacco with the design to sell the same in the said market as the tobacco of the plaintiff and thus secure a sale of his tobacco which except for such resemblance to plaintiff's packages he would not have, then you will find a verdict for the plaintiff. * * * -If the defendant's packages in shape, color, material of packages, size, marks, and devices should so far resemble those of the plaintiff's as would be apt to mis- lead the class of customers generally to whom the same is sold in said market, it is such resemblance as above referred to." This charge up- held on appeal. , N. K. Fairbank Co. v. Windsor, 61 C. C. A. 233-1903; 124 Fed. 200- 35 (C. C. A. 2d Cir.). In unfair com- petition cases " there can be no recov- ery unless the court is satisfied that there has been an intent on the part of defendants to palm off their goods as plaintiffs. In many of these un- fair competition cases the fraudulent intent is inferred from the facts, sometimes against the sworn pro- testations of the infringer that he was trying to differentiate his pack- ages from those of the complainant not to simulate them. But in all cases where there has been a recov- ery, intentional fraud has been found." Faber v. Faber, 124 Fed. 603- 1903 (C. C. S. D. N. Y.). Decision by Ray, district judge. "Actions to restrain unfair competition in trade, it is said, are based essentially upon fraud. That fraud must be proved. It cannot be inferred from unim- portant similarities not calculated to mislead the purchaser. (Kipling v. G. P. Putnam's Sons, 120 Fed. 631; 65 L. R. A. 873)" (at p. 609). The court cites Lawrence Mfg. Co. v. Ten* 54 Unfair Business Competition. § 27. Fraudulent Intent May be Presumed.— Intent is the state of mind in wliich or the purpose with which one does an act. Again, it is " the character which the law imputes to an act, irrespective of the personal intention of the actor. " 32 To prove the state of mind of the defendant when the acts in ques- tion were done, is difficult to say the least — and the question practically narrows itself down in many cases to this : What are the acts on which the law will impute a fraudulent intent to injure a rival 's business ; what are the facts on which the law will found a presumption of intent to defraud? For, although our courts do not admit that an injunction may issue where no intent to do so is shown, they do go far to raise a presumption of such intent in the absence of specific proof . 32a § 28. No Actual Proof of Intent Necessary for Presump- tion j — The law will presume an intent to defraud even when there is an utter lack of proof of personal intent to deceive on the part of the defendant. The legal intent, which the law bases upon a person's acts and then imputes to him personally, may exist regardless of whether he actually intended to do harmful acts or not. If, for instance, one does, innocently, acts which are likely to defraud his rival, and on learning their baleful effect he continues them, the law will not permit him to say his personal intent was to benefit his rival or not to injure him. Relief in actions for nessee Mfg. Co., 138 U. S. 537-1890; of the other, accompanied by such 34 L. ed. 997 ; 11 Sup. Ct. 396. acts and devices as are likely to do Lamont, Corliss & Co. v. Hershey, so, or such duplication in form and 140 Fed. 763-4-1905 (Cir. Ct. N. D. dress of the one by the other as will Pa.). Preliminary injunction denied produce a confusion calculated to where defendant sold chocolate in bring this about, of which the party packages somewhat similar in size, complained against is convicted of shape, color, etc., to complainant's, being willing to have the benefit." the words and decoration on the Paul on Trade-Marks (p. 381): "It wrappers being entirely different. (Equity) will not enjoin the imita- "" To make out a case of unfair and tion of labels, bill heads, and corn- fraudulent competition, — an effort, mercial names of a rival trade un- in other words, to steal the trade less such intentions are fraudulently built up by another, — there must be designed, and have a tendency to oc- ■an actual wrongful intent to deceive casion damage." the public into the belief that the 32 Standard Dictionary, 937. goods of the one party are the goods 32a Pleading intent, 164 Fed. 842. Intent to Defbaud — Must it Be Proved? 55 unfair competition is not dependent upon actual fraudulent intent, where the conduct of defendant would be likely to de- ceive purchasers as to the origin of the goods. "A person is ordinarily held to intend the consequences of his acts, when he understands his acts, and they are deliberate, especially; and, if such acts by a business competitor are calculated to de- ceive the trade, the public, and the user, and to palm off the .goods or manufactures of such person for those of his com- petitor, and such is the actual result, and such person refuses to cease such conduct, the legitimate conclusion is that he in- tended and intends to cheat and defraud not only the com- petitor, but the trade, the general public, and the users and consumers. Such acts, persisted in, constitute fraud." 33 § 29. Knowledge of Plaintiff's Rights on Part of the De- fendant is Unnecessary. — It is not necessary to the deceit of a purchaser, within the meaning of these cases, that he should distinctly recall, wheu buying the goods, the name of the maker of them that he has known in the past. Deceit may occur, al- though the buyer did not recall at all the name of the goods he has bought before or their maker. The injury to the older line of goods is complete, if, in any way, the defendant has con- tinued to substitute his own goods in place of its goods, in the hands of jyiirchasers who would ordinarily, except for the act3 of the defendant, have purchased the older line of goods. It was held in Cartier v. Carlile?* that it will be presumed that, where there has been a colorable imitation of a trade- mark, the person making it intended to imitate the genuine trade-mark, though he knows nothing as to the identity of its owner. This was held to be the fact in the Yorkshire Relish case, 35 where this commodity was made and sold by persons who did not know the true formula. Many persons did not know who were the original makers of the relish. They only knew the name. It was held fraudulent for others to so use the name as to be able to sell their goods to persons who de- sired the true Yorkshire. In such a situation as this, it does not repair the injury suffered by the complainant to show S3 Faber v. Faber, 124 Fed. 603-10- 35 Birmingham Vinegar Brewery 1903. Co. v. Powell, (1897 A. C. 710, 66 34 31 Beav. 292-1862. L. J. (Ch.) N. S. 763-1897. 5G Unfair Business Competition. that the offending article was put upon the market uninten- tionally, nor does the knowledge of that fact give any as- surance that in the future these damaging conditions will be done away with. The law is content with proof of the acts likely to deceive, and does not demand proof as well of the state of mind of the defendant during the period when he com- mitted the alleged unfair acts. A trader adopts a name or brand which he supposes is used by no one except himself. It turns out later that it had been in use by another, prior to his adoption of it, and that his continuing to use it will result in injury to this first user. It has been often held that, in such a situation, the rights are all with the first user, and it is the duty of the one who later adopts the name to distinguish his use of it. 30 To use the words of Judge Holmes in the Waltham case : ' ' The plaintiff merely on the strength of having been first in the field, may put later comers to the trouble of taking such reasonable pre- cautions as are commercially practicable to prevent their law- ful names and advertisements from deceitfully diverting of plaintiff's custom." 37 This being so, if this "later comer " per- sists in using the name or threatens to do so, the court is justi- fied in assuming he does so with fraudulent intent. Such con- tinued action on his part will raise a presumption of fraudulent and deceitful intent or purpose to pass off his business as that of the original user. 38 Fraud is the gravamen of the proceed- 38 American Waltham Watch Co. v. goes. Of course that may be done United States Watch Co., 173 Mass. unintentionally, but where there is 85-1899; 53 N. E. 141; 43 L. R. A. a manifest and natural meaning in 826 ; Neio England Awl & Needle Co. the words used, that the goods are v. Marlborough Awl & Needle Co., the goods of somebody else, and the 168 Mass. 154-1897; 46 N. E. 386; man who uses these terms uses not McAndrew v. Bassett, 4 De G. J. & S. his name only, but somebody else's, 380-1S64. he would be stopped from doing so 37 American Waltham Watch Co. v. as soon as he is aware of the facts United States Watch Co., 173 Mass. which make the prima facie inten- 85-1899; Nesne v. Sundet, 93 Minn. tion and result of which he is doing, 209 ; 101 N. W. 490-1904. passing off his goods as goods of 38 Turton v. Turton, 42 Ch. Div. somebody else. It was formerly said 128-41-2-1S99. " No man must pass that no action could be maintained off his goods as the goods of another. unless a man has done so fraudu- That is the principle upon which it lently and intentionally, but when Intent to Defraud — Must it Be Proved? 57 ing based on unfair competition. This fraud must be shown against the defendant ; but tins does not mean that it must al- ways be proven that the defendant had in his secret mind the distinct intent and purpose to defraud the plaintiff. " The law does not attempt to penetrate the secret motives or intent with which the act is done, but contents itself with the conclusion that the party intended the natural and prob- able consequences of the act." 39 Where the case concerned the two names " Chicago Land- lords' Protective Association " and " Chicago Landlords' Protective Bureau," Koebel v. Chicago Landlord's Pro- tective Association, 40 it was held that " The law undoubt- edly is, that the complainant, the Chicago Landlords' Protective Bureau, had no right to appropriate to it- self the exclusive use of that name to the exclusion of the right of the defendants to use the descriptive words i Landlords' Protective Department,' so long as the use of those words was with a legitimate and honest purpose, but whenever defendants, intentionally or otherwise, took ad- vantage of the similarity of the name adopted by them to the one under which the complainant was incorporated and had been carrying on its business, to mislead the public or, with- out explanation, allowed their clients to be misled into the belief that the business associations were one and the same ; he finds out that the natural con- complainant's use of the name de- struction of what he is doing, when fendants had announced the intention the facts are known, is to represent to use this name; this was, however, his goods to be somebody else's, then not known to complainant; and de- he would be stopped, even though he fendants made no actual use of the had originally done that unintention- name until complainant's first season ally, and innocently." was over. Held, that defendants Meldrum v. Shubert, 2 111. Cir. Ct. should be enjoined from using the Rep. 293-1904. Complainant leased name, and that it was not necessary and had for one season conducted a to support an in junction that it should small theatre, chiefly patronized by be shown that pecuniary loss would residents of the vicinity, under the result to complainant from defend- name of the " Garrick " theatre. De- ant's acts. fendants then leased a large metro- " McCann v. Anthony, 21 Mo. politan theatre, formerly known as App. 83-90-1886. the "Dearborn" theatre, and called " 210 111. 176-1S2-3-1904 ; 71 N. it the " Garrick " theatre. Prior to E. 362. 58 Unfair Business Competition. it violated the lawful rights of the complainant and the plainest principles of equity. Fraud is the gist of actions of this kind. Courts of equity will never enjoin the use of generic or descriptive words in a trade-mark or a business name except upon an allegation and proof of actual fraud resulting from the similarity of the names, tending to lead those dealing with the parties to believe that they are one and the same, even though they use ordinary care to dis- criminate between them. " 41 * * * " We think the true ground upon which the jurisdiction of a court of equity to restrain the defendants, as prayed in this bill, rests, is that the name assumed by the defendants is so similar to that of the complainant as to mislead and confuse the public mind in the city of Chicago as to the identity of the business in which the two parties were engaged." 42 Continuation of the use of a name after the defendant knew of the plaintiff's prior use is sufficient evidence of intent to defraud. 43 If a person at- tempts to restrain a colorable imitation, and he cannot prove that the defendants have tried to steal his trade, he must show beyond all question, that the goods are so gotten up as to be calculated to deceive. 44 Intent to deceive may not render one liable for unfair competition, even if deception actually occurs. Such deception is not proved, if the imitation is in features " See also Ball v. Siegel, 116 111. U. S. Mercantile Rep. & Collecting 137-1886; 4 N. E. 667; Elgin Butter Assn., 21 Abb. N. C. (N. Y.) 115- Co. v. Elgin Creamery Co., 155 111. 1888; Matsell v. Flanagan, 2 Abb. 127-1895; 40 N. E. 616; Allegretti v. Pr. N. S. (N. Y.) 459-1867; Lamb Allegretti Chocolate Cream Co., 177 Knit Goods Co. v. Lamb Glove & 111. 129-1898; 52 N. E. 487; Int. Mitten Co., 120 Mich. 159-1899; 78 Com. Y. W. C. A. v. Y. W. C. A. of N. W. 1072; 44 L. R. A. 841; Sand- Chicago, 194 111. 194-1902; 62 N. E. ers v. Jacob, 20 Mo. App. 96-1885; 551. Newby v. Oregon Central Ry., Deady "Investor Pub. Co. v. Dobinson, (U. S. D. Oreg.) 609-1869. 72 Fed. 603-1896 (C. C. S. D. Cal.) ; "Fuller v. Huff, 104 Fed. 141- Guardian Fire & Life Assur. Co. v. 1900 (C. C. A.); 51 L. R. A. 332; Guardian & Gen. Ins. Co., 50 L. J. Orr v. Johnston, 13 Cb. Div. 434. Cb. N. S. 253-1880; Lee v. Haley, " Pay ton & Co. v. Snelling, Lam- L. R, 5 Cb. App. Cas. 155-1869; pard & Co., (1901) App. Cas. 308 Knott v. Morgan, 2 Keene 213-1836; (House of Lords). U. S. Mercantile Reporting Co. v. Intent to Defkaud — Must it Be Proved? 59 common to the trade, and not in points that are peculiar to the goods of complainant. 45 § 30. Denial of Intent Will Not Avail Defendant.— The denial of intent to injure will not avail a defendant. Under proper circumstances the court will find in his acts evidence of an intent to defraud even in the face of his most explicit denial that he ever intended to pass off his goods as those of the complainant. "And such intent may be, and often is, made out, not from direct testimony, but as a clear inference from all the circumstances, even when defendant protests that his intention was innocent." 46 The respondent in Wotherspoon v. Currie 47 said : " There is no reason in the world why I should take the name, because I manufacture something superior, and at a cheaper price, therefore, why should I take the name of the plaintiffs !" The comment of the Lord Chancellor on this plea was this: " Well, then, one naturally asks, why should he do anything to lead the people to suppose that his name is to be in any way associated with Glenfield, or this inferior article (as he says) with his." The court in Keller v. Goodrich Co., 48 citing this passage, said: " So may we ask here, why should the appellant, doing business in Fort Wayne, Indiana, do anything to associate his name with Akron, in the State of Ohio 1 ? The natural presumption is that he expected to derive benefit from it, and secure buyers from among those who had bought and used the Akron dental rubber. If we may assume, as we justly may, that he intended to mislead, and not in good faith to convey information, we must carry this assumption to its logical consequences, and assert that his act was likely to accomplish what he intended it should." Not only will fraudulent intent be presumed in the face of the defendant's specific disclaimer of such intent, but it will be presumed in the face also of contract provisions, which would tend to show proper motives, when the court is satis- fied that it was not intended by the parties that these pro- 40 United States Tobacco Co. v. Mc- Bell Mfg. Co., 77 Fed. 869-1896, at Greenery, 144 Fed. 531-1906 (C. C. p. 870 (C. C. A. 2d Cir.). Mass.) ; affd. 144 Fed. 1022. 47 L. R. 5 H. L. 508-1872. 48 N. K. Fairbank Co. v. R. W. " 117 Ind. 556-60-1888; 20 N. E. 493. 60 Unfair Business Competition. visions should be carried out. In R. Heinisch's Sons' Co. v. Bolter, 4 ® various contracts were made by parties to the action as to the use of name " Heinisch." It appeared that, while the ostensible objects of the contracts were not carried out, the Heinisch name had been so used as to deceive the public. Held: " In these circumstances, it must be presumed that the defendants contemplated the natural consequences of their acts irrespective of those carefully worded provisions of said contract which apparently were never intended to have any effect." See § 102, note 26. Assuming that up to the time an injunction is asked, the de- fendant has acted with entire good faith, firmly believing that he was causing no injury to the plaintiff and usurping none of his rights, still he will be enjoined. His opinion as to the result to the plaintiff of his act is not the test, and it should be disregarded by the court. If the court believes the necessary consequence of the defendant's action is deceit and this deceit may or does injure the plaintiff, an injunction should issue. The owner of an honest business reputation, or of a valuable brand or name, is entitled to protection as well against persons who injure him innocently as against those who would injure him intentionally. In Cuervo v. Landauer, 50 the defendant bought labels from a dealer in such articles, and did not know that in using them he would interfere with the plaintiff's business. Nevertheless it was held he should be en- joined. " That defendants did not know that the labels, which they bought, as they aver, from a cigar-box maker were in- fringements, is no reason for refusing the relief prayed for. The owner of a trade-mark is entitled to protection against ignorant as well as against malicious infringers." It is well established that the use of a corporate name will be enjoined, which, though adopted with perfect good faith, is calculated to confuse and deceive. Ground for such inter- ference is to be found in the detriment to the complainant which cannot be otherwise remedied or reached; and further, if it is shown that, although innocent of fraudulent intent at the outset, on being apprised of the injury he is inflicting 49 86 Fed. 765-69-1898 (C. C. S. M 63 Fed. 1003-1894 (C. C. S. D. B. N. Y.). N. T.). Intent to Defraud — Must it Be Proved? ' 61 on the plaintiff, the defendant continues to use the offending mark or name, that fact will warrant a very strong presump- tion of deceitful purpose on his part. 51 § 31. Proof of Specific Orders to His Agents and Servants to Act Fairly Will Not Excuse Defendant. — Specific instruc- tions to salesmen to refrain from any statements or represen- tations that would tend to mislead will not prevent this pre- sumption from arising where the facts otherwise justify it. Judge Lacombe has said in Enterprise Mfg. Co. v. Landers, Frary & Clark, 52 ''It is elementary law that, when the simulation of well-known and distinctive fea- tures is so close, the court will assume that the de- fendants intended the result they have accomplished, and will find an intent to appropriate the trade of their competitor, even though, in their instructions to their own selling agents, they may caution against oral misrepresentations as to the manufacture of the goods. There is evidence to show that purchasers have been deceived as to the identity of these mills, but, in the case of a Chinese copy, such as the defendants offer to the public, such proof is hardly needed." 53 § 32. Actual Injury to Plaintiff by Defendant Must be Im- minent. — Although a definite intent and plan on the part of the defendant to pass off his goods as those of the plaintiff and to injure him in his trade be clearly shown, yet if he never provides himself with the actual or probable means of accomplishing such a result there is no basis for a cause of action on the ground of unfair competition, and, in such a case, no presumption of intent to defraud will arise. 54 " Van Houten v. Hooton Cocoa & E2 131 Fed. 240-1904 (C. C. A. 2d Chocolate Co., 130 Fed. 600-3-1904 Cir.). (C. C. N. J.). "While innocent of "Dodge Stationery Co. v. Dodge, artifice in the beginning, the refusal 145 Cal. 380-90-1904; 78 Pac. 879, of the defendants to grant this con- that it is quite unimportant whether cession, and their insistence on the the defendant used the name Dodge continued employment of that which with fraudulent intent or not. If is shown to be objectionable, and can the necessary result was deception, make no material difference to them the fact that it acted with an honest on any honest basis, may warrant a purpose will not aid it. somewhat different conclusion as to M They " never used any means cal- their present intention, which of it- culated to accomplish it, and they self might call for relief." adopted those admirably suited to 62 Unfair Business Competition. " The intention to palm off one's goods as those of another, and the nse of suitable means to effect that intention, are both essential elements of a good cause of action for unfair com- petition. The intention alone, without the actual or probable use of means calculated to convey a false impression to the public mind, and to mislead and deceive the ordinary pur- chaser, furnishes no ground for relief, because an intent to injure, where no injury is or will be inflicted, causes no legal damages." 55 § 33. Unimportant Facts not a Basis of Presumption of Intent to Defraud. — Furthermore, presumption of fraud- ulent intent must be based on facts which are important. ' ' It cannot be inferred from unimportant similarities not calcu- lated to mislead the purchaser." 50 As it is similarity and not identity that the unfair merchant seeks, the apparently unimportant features sometimes become important. He is presumed to know and intend the necessary consequences of his acts, and must usually answer for the probable and or- dinary consequences of them. 57 § 34. Presumption of Fraud May Arise from Similarity of Name or Get Up. — Presumption of fraud may arise from use of similar names. The earlier stand taken by some courts was that no one should be allowed to create a monopoly of the use of his own name, to the use of which others who bear defeat it. Their intention, therefore, A. 1324 ; N. K. Fairbank Co. v. R. W. becomes immaterial." Kann v. Bell Mfg. Co., 77 Fed. 869-1896 (C. C. Diamond Steel Co., 89 Fed. 706- A. 2d Cir.) ; Kann v. Diamond Steel 1898, at p. 712 (C. C. A. 2d Cir.); Co., 89 Fed. 706-1898 (C. C. A. 8th 32 C. C. A. 324; Hopkins Trade- Cir.); 32 C. C. A. 324. Marks, p. 256; Centaur Co. v. 6a Faber v. Faber, 124 Fed. 603- Marshall, 97 Fed. 785-1899 (C. C. 1903, p. 609. A. 8th Cir.); 38 C. C. A. 413; "Every man, acting intelligently, Postum Cereal Co. v. American will be presumed to intend the neces- Health Food Co., 119 Fed. 848-1902 sary consequences of his acts. (C. C. A. 7th Cir.) ; 56 C. C. A. 360. Holmes, Booth & Haijdens v. Holmes, 55 Wrirsley Co. v. Ioica Soap Co., Booth & Atwood Mfg. Co., 37 Conn. 122 Fed. 796-1903 (C. C. A. 8th 278-1870, at p. 296. " The same pre- Cir.) ; McLean v. Fleming, 96 U. S. sumption applies, with less force 245-1877; 24 L. ed. S2S; Kann v. perhaps, to the probable and ordi- Diamond Steel Co., 89 Fed. 706- nary consequences." 1898 (C. C. A. 8th Cir.) ; 32 C. C. Intent to Defraud — Must it Be Proved 1 ? 63 it may be equally entitled. In these cases the fact was over- looked that the honest dealer desires a name which can be associated only with his own particular business house and which cannot by any chance be confused with the name of some other concern. It may usually be presumed that where a person sets up a business under a name similar to one already in use, even though that name be his own, he is not taking that name because it is necessary to take it, nor because using it is essential to his success, but because he hopes by the con- fusion resulting from using it to get for himself some of the trade which belongs to the established concern. To wish to get all of this trade he can is not condemned by the law, but to try to get it by creating in any way the idea in the minds of the public that his concern is not his, but the older house, is rightly condemned, and here is the gravamen of the injury which is the result of his use of the name. Where such a state of facts as this is found, equity does not necessarily wait for definite proof of fraud, but will pre- sume that an intent to create confusion and to defraud was in the defendant's mind when he did the acts complained of. Those who honestly desire distinctive reputations for their own goods, do not strive to so get them up as to be likely to resemble other goods of a like sort. They do not start out by adopting the most individual and particular features of the dress and makeup of a rival's goods. Consequently, when a manufacturer is found doing this, it may safely be presumed he has some object, some definite purpose in mind. When it is further found he has expended large sums in advertising his competitor's distinctive insignia, a similar deduction may be made. Any facts which show that a maker or vendor of goods strives to adopt and advertise on his own goods or in connection with his own goods, distinctive features of the goods of a rival, may be made a basis of a presumption of fraud. Honest rivals do not copy. Men ambitious to succeed on their own merits do not spend money to masquerade as some other person and are particular to avoid anything which promotes a knowledge of a rival's goods. Intent is a subtle thing; it cannot be seen, and can only be identified by acts which are seen and which are prompted 6-i Unfair Business Competition. by it. The statement of a dealer who has copied the get-up of a rival's goods, that he intends to keep his goods as in- dividual as possible and not to injure anyone, falls as value- less, when a court finds, by placing his goods beside those of his competitor, that it is difficult to tell them apart; and it must be presumed he intended to do that which, if they are to believe their eyes, he has actually done. The fact that the designer of the offending mark was an expert, or was a man of intelligence and experience, will be taken into consideration in judging of the effects of the acts done by him. The Circuit Court of Appeals, Second Circuit, has very aptly described the effect of a simulation from which intent will be presumed, in N. K. Fairbank Co. v. R. W. Bell Mfg. Co. 58 " It may fairly be assumed that the individual who designed defend- ant's yellow and black package was an expert, familiar with the trade; that the changes he made in the old package were all in the direction of complainant's package is manifest; that he was intelligent enough to make such changes in order to accomplish a definite object will surely not be disputed; and that such object was the production of a package resembling complainant's is the irresistible inference. Business men of ordinary acuteness, who wish to establish a distinctive reputa- tion for their goods with the general public, who seek to have such goods so arrayed that they will always be unmistakably recognized by the public, certainly do not begin by assimilat- ing the elements of their design to those of some one com- peting manufacturer. When they are found doing this, it must be assumed that, for some reason or other, they prefer to have their goods arrayed, not in a distinctive dress, but in one resembling their competitor's; and, when it appears that such competitor has expended upward of $300,000 in adver- tising his packages, that reason is not hard to find. The actions of defendant's own officers are to our minds strong evidence that, in their opinion as experts, their new black and yellow package was one likely to become confused in the minds of the public with the existing well-known package of complain- ant. Men act from motives, and, unless the new style of pack- age was devised for this very purpose, no motive for its cre- M 77 Fed. SC9-77-1896 (C. C. A. 2d Cir.). Intent to Defraud — Must it Be Proved? 65 ation is shown in the record, or in anywise suggested. That it was the result of a fortuitous aggregation of elements is an hypothesis which cannot for one moment be entertained. It was designed by an intelligent creator, and, so far as we can see, for but a single purpose, and that purpose a species of competition in trade which courts of equity hold to be unfair. We are not left to inferences, however, to determine whether that purpose has been accomplished. In many cases, where simulation is plain, injunctions have been issued without proof of specific instances of deception. Such evidence, however, is always competent, and often illuminative. In the case at bar there is evidence of several instances where purchasers asking for " Gold Dust " have had defendant's soap powder palmed off on them, being deceived by the general appearance of the package. More persuasive, however, is the evidence of re- tail dealers who buy from defendant and sell to the consumer. It is the testimony of experts. One of them, a grocer in Wilkes-Barre, Pa., testifies that defendant's salesman, as an inducement to purchase, called his attention to the similarity of the packages, and the possibility of passing off one for the other. The salesman contradicts this statement, and we give no weight to it; but the grocer further testifies that he per- ceived the resemblance, bought the defendant's soap powder, and has repeatedly passed it off on customers who asked for 11 Gold Dust." Another grocer, who keeps both kinds of powder, testified that he has often substituted one for the other, since there is more money for him in selling the de- fendant's at the same retail price, as it costs 25 per cent, less at wholesale; that, when customers asked for " Gold Dust," he would generally go to the shelves, and hand them defend- ant's soap powder; that some customers were not deceived, but that the packages resemble each other so closely that a dealer can repeatedly, in most cases, substitute one for the other; and that he has known personally of many such cases " (id. p. 877-78). § 35. Presumption of Fraud Arises from so Selling' Goods that Vendees May Pass Them Off Fraudulently.— The same presumptions which arise from so marketing goods as to deceive the person who buys at retail, will arise from 5 66 Unfair Business Competition. facts which show that the defendant's acts made it possible for him who bought the goods to again sell them in such a way as to deceive the ultimate purchaser. 59 That evidence of intent is difficult to get, need not be argued. The court is forced to look to small details of the conduct of the defendant oftentimes to find evidence of his real intent. North imitated underwear made in a special manner by Scriven, — and his salesmen distinguished between " a ' ; Scriven drawer, meaning one made after the pattern of Scriven 's, and " the " Scriven drawer — meaning one made by Scriven himself. This and collateral facts were held a basis for a presumption of fraud by the Circuit Court of Appeals in 1904. 60 M New England Awl & Needle Co. v. Marlborough Awl & Needle Co., 168 Mass. 154-55-1897; 46 N. E. 386. Plaintiff used a bronze colored box, with brown label on top and one side with printed inscriptions, tied with orange string. Defend- ants used box indistinguishable in every way except that instead of the words " Manufactured and warranted by the New England Awl & Needle Company, West Medway, Mass.," it bore the words " Manufactured by the United States Awl & Needle Co., New York." Plaintiff had used their box for twelve years at time of ac- tion and defendant two years. Held by Judge Holmes that defendant contended he " did not intend to de- ceive the public by passing off their goods for the plaintiff's, but this must be taken pretty strictly. They knew that they were putting the power to do so into the retail deal- ers' hands. It can hardly be doubted that they contemplated that the wholesale dealer at whose request they put up their awls in this form, with full knowledge of the plaintiff's prior use, would or might try to de- ceive the public, and whether they did or not is immaterial." "Scriven v. North, 134 Fed. 366- 74-1904; 67 C. C. A. 348. "There is little direct testimony connecting the defendants or their authorized agents with any positive acts. In the nature of things this would be so, for persons about to engage in un- lawful or questionable undertakings are not likely to proclaim their pur- poses on the house-tops; but there is some testimony which tends to show that the defendants directly, through their authorized agent, endeavored to market their goods under the guise of the complainants', and that is the testimony of Anderson, who was the manager of the New York branch for several years prior to January 1, 1902. He says that he kept a sample of the Scriven drawer on the counter in the New York office; that when customers came in and asked for an elastic seam drawer he would sell them defendants' ; if they asked for ' The Scriven drawer,' he would show them defendants' and sell it; and so if they asked for a No. 50. The following questions and answers Intent to Defraud — Must it Be Proved 1 ? 67 A further idea of what a court will consider sufficient evi- dence of intent may be found in Bickmore Gall Cure Co. v. Karns, where the use of a name similar to plaintiff's and other acts of the defendant were held to warrant a presump- tion of fraud. 61 Here it was held also that a court would not illustrates the method : " Then you made a difference between " a " Scriven drawer and " the " Scriven drawer, is that it? A. Yes; when a man asked for a Scriven drawer, I knew that he wanted the side-seam drawer, and I showed him ours. Q. And sold him yours? A. Yes, sir.' And in another answer he says : ' We had a sample of the Scriven drawer on our counter, and I have said that it was made the same as Scriven's drawer, with the exception of the crotch pieces in the seat.' The in- ference seems to be clear that this sample of Scriven's drawers was kept, not for the purpose of show- ing the difference between the two, but to show the absolute identity be- tween them, so that purchasers, mainly jobbers, who bought to sell again, could see that the defendants' were such an imitation of the Scriven drawers that they could easily be sold again as genuine Scriven." ai Bickmore Gall Cure Co. v. Karns, 134 Fed. 833-1905; 67 C. C. A. 439. " The appellant spent a considerable sum in advertising, and had finally succeeded in establishing a profitable trade, when the appellees attempted to appropriate the phraseology which it had long used, and so to reap the benefit of its efforts and expendi- tures. They learned that the law would not permit this to be done, and they made some changes; but they were only * colorable. The "wrongful purpose was neither aban- doned nor hindered. It was only more speciously, but still potently, pursued. In consequence of its long- continued use of the picture of a working horse, in connection with the phrase, ' Be sure to work the horse,' the appellant's remedy had become well known as ' Work the Horse Gall Cure,' before the appellees applied to their remedy the picture of four working horses in connection with the words ' Four Horse Gall Cure,' and the phrase 'Always work the horse while using the cure.' These matters, with some slight and unim- portant variations, prominently ap- pear upon their several packages, circulars, display cards and direc- tions. Their larger boxes, in which the smaller ones are delivered to dealers, are of substantially the same size, and of exactly the same shape, as those of the appellant. Both are yellow or yellowish in color ; and the smaller boxes, in which the respective salves are sold at retail, present like features of correspond- ence. * * * The true question is not whether the boxes, circulars, adver- tisements, and directions of the ap- pellees are, in their details, the same, or nearly the same, as those of the appellant, but whether the general effect produced by those of the ap- pellees is such as would be likely to lead ordinary purchasers to accept their gall cure as being that of the appellant; and our consideration of the evidence, and especially that of 68 Unfair Business Competition. Test its decision on a minute comparison of the detail of labels, boxes and names, but on the general impression that all these features make. § 36. Presumption May be Based on Manner in which the Truth is Told. — (Speaking the truth will sometimes furnish a basis for a presumption of fraud. Causing salesmen to make equivocal or literally true statements to customers in such a way as to confuse them, or creating subtle distinctions between brands of goods, in dealing with purchasers or ask- ing customers which of two brands of goods they wish, when the dealer knows they are aware of the existence of but one, will create such a presumption. Defendant had been enjoined from use of " Baker's Choco- late," etc., without distinguishing between " W. H. Baker's Chocolate " and " Walter Baker's Chocolate." Thereupon he told his clerks to ask customers which chocolate they wanted — ' ' We have two Bakers. Which do you want, W. H. or Walter Baker? " Nine out of ten would answer " which ever is best." Salesmen would then give them W. H. Baker's. The court said: " The purchaser was entitled to that which he demanded, to that which had been approved to his taste by experience or which he had been recommended to purchase. In the market there were no two Baker's products. There the exhibits, has irresistibly led us to it sufficiently shown that,, in at least the conclusion that it is. The com- some of the instances to which it plainant would have been entitled to relates, the object designed was ac- protection against the attempt to de- complished." Hildreth v. McDonald, prive it of its trade or customers 164 Mass. 16-1895; 41 N. E. 56. even if it had not proved that such Plaintiff put up candy in paper and attempt had been successful." Mc- printed word " Velvet " in red let- JLean v. Fleming, 96 U. S. 245-1877; ters on end of papers and in middle. 24 L. ed. 828. " The means devised Defendant used combination of size to that end were well calculated to and shape of candy, which it had a mislead, and it was not essential that right to do. But hi addition it be- any particular person should have gan to print in Roman letters instead been actually misled." Schener v. of script the word " McDonald " in Muller, 74 Fed. 225-1S96 ; 20 C. C. red ink in middle of its wrapper and A. 161; Swift & Co. v. Brenner, 125 not on ends. Held, public were de- Fed. 826-1903 (C. C. S. D. N. Y.). ceived and that the resemblances were "'But we may add without referring to not accidental, the testimony in detail, that we think Intent to Defraud — Must it Be Proved? 69 was but one, and that was the product of Walter Baker & Co., Limited. The courts had enjoined William Henry Baker from using the word " Baker " alone, and had required to be prom- inently placed upon each package the statement that " W. H. Baker is distinct from the old chocolate manufactory of Walter Baker & Company." No such statement or representation by the appellee was directed to be made to the inquirer for " Baker's Chocolate " or " Baker's Cocoa." Instead there is manifested a clear design to mislead and confuse the pro- posing purchaser with the statement that there were two Baker products in the market. The court here says : ' ' We do not mean to say that it is not within the province of the seller to represent to the proposing purchaser that an- other article which he has is superior in excellence to that which is called for, and to induce him by proper argument or statement to purchase the other, but he must not represent such other to be the product which the purchaser called for. ' ' 62 "Baker v. Slack, 130 Fed. 514 (C. C. A.). CHAPTER III. What is Similarity? Section 37. Test of similarity is general impression made, not detailed examination. 38. Similarity does not mean exact likeness. 39. Care used by average buyer of tbe class of article in question must be considered. 40. Character of the article and the habits and intelligence of the consumer. 41. Comparison is not the test of similarity. 42. Imitation of salient features. 43. Necessary physical requirements of the article must be con- sidered. 44. Distance between competitors a factor in deciding as to similarity. 45. Deceit of ultimate purchaser, not of middleman, is the important consideration. 46. Similarity of color, shape, size, etc. 47. Similarity of names. While it is difficult to define Similarity generally, it may be said that if the offending article is calculated to deceive or- dinary purchasers buying with the ordinary care exercised in such transactions, Similarity usually exists. So long as there are many chancellors, so long will their opinions on such a question differ. The New Jersey court of equity has laid down the following rule, but it is qualified by the court in the case in which it is enunciated: " If the counterfeit so closely resembles the genuine as to mislead or- dinary purchasers, buying with the care usually exercised in such transactions, the use of the counterfeit should be pro- hibited. An important part of this rule, as it applies to this case, is that clause of it which directs that, in determining whether the counterfeit so closely resembles the genuine to be likely to deceive the ordinary buyer, the court must take into consideration the degree of care which buyers usually exercise in buying such an article as that which is the subject of the distinguishing mark; for it is a matter of common knowledge [70] What is Similarity? 71 that the ordinary buyer does not, as a general rule, exercise as much caution in buying an article for which he pays a few pennies as ho does in purchasing a more valuable thing. The instances are very rare, I suppose, where a purchaser exer- cises as much care in buying a bottle of beer as he does in buying a bottle of whiskey, a box of cigars, or a hat or a coat." * In Payton $ Co. v. Snelling, Lampard & Co., 2 Lord Mac- naghten said : "I think it very desirable to bear in mind what Lord Cranworth said on one occasion — that no general rule can be laid down as to what is a colorable imitation or not; you must deal with each case as it arises, and have re- gard to the circumstances of the particular case." Similarity is like an equation of which the one known side is some large number, which is composed of many multiples and many combinations of numbers. The equation may be made up in very many ways. So, in a multitude of ways, a similarity of names or marks, within the definition of the word here used, may be created. 3 § 37. Test of Similarity is General Impression Made, Not Detailed Examination. — In deciding as to what is or is not similar, the court should not depend on elaborate description of the points of resemblance or those of difference ; but should decide by the impression created by the name or mark on the ear or eye, thus deciding the question on the same basis as the purchaser who, in ordinary course of trading, is called upon to judge as to the identity of the defendant's name. It should be said here also that the buyer usually has not the chance of trial by side-by-side comparison. Such similar- ity as will deceive is that likeness which renders the average buyer unable to distinguish the defendant's name or mark 1 Wirtz v. Eagle Bottling Co., 50 say that no trader can adopt a trade- N. J. Eq. 164-1S92. mark, so resembling that of another 3 (1901) App. Cas. 30S-10. trader, as that ordinary purchasers, 8 McLean v. Fleming, 96 U. S. buying with ordinai*y caution, are 245-51-1S77; 24 L. ed. 828. "What likely to be misled." Kroppf v. degree of resemblance is necessary to Furst, 94 Fed. 150-1-1899 (C. C. N. constitute an infringement is in- J.); "Similarity which will warrant capable of exact definition, as appli- the interference of the court must be cable to all cases. -All that courts of determined by the circumstances of justice can do, in that regard, is to each case." 72 Unfair Business Competition. from the memory of the plaintiff's name which he carries in his mind, not such as will enable him to know them apart when the two are put side by side before him. Lord Russell, in Liebig's Extract of Meat Co. v. Chemists Co-operative Society, decided by the British Court of Appeal November 20, 1896, 4 held that " one must be guided very largely by the judgment one forms by the use of one's own eyesight. ' ' Fischer v. Blank 5 holds that similarity is such resemblance as "is calculated to deceive, and does, in fact, deceive the or- dinary buyer making his purchases under ordinary conditions which prevail in the conduct of the particular traffic to which the controversy relates. No inflexible rule can be laid down. Each case must be a law unto itself." 6 It has been held, however, that direct comparison of the articles is a test of similarity. " The eye, at a glance, takes in the whole of one exhibit and the whole of another; and the comparison thus made is the surest, and only satisfactory way of satisfying the judgment as to the existence of the alleged deceptive imitation." 7 § 38. Similarity Does Not Mean Exact Likeness. — Sim- ilarity does not mean exact likeness — exact facsimile — a precise copy. If the court decides the likeness is sufficiently near to cause deception of the ordinary purchaser, this is enough. It need not be such an imitation that the two cannot be distinguished except by an expert or upon a critical exami- 4 13 R. P. C. 736-38. See also p. and hearing, and that it is possessed 635 for case below. of a sufficient amount of intelligence " 138 N. Y. 244-52-1893 ; 33 N. E. to note the difference which the 1040. senses convey. The court ought not 8 Cited in Dunn Co. v. Trix Mfg. to interfere with the freedom of con- Co., 50 App. Div. (N. Y.) 75-1900; duct of trade and with general busi- 63 N. Y. Supp. 333; Munro v. ness competition. Its power to re- Tousey, 129 N. Y. 38-43-1891; 29 strain should be reserved to prevent N. E. 9; 14 L. R. A. 245n. "A fraud and imposture from some real court of equity should proceed in the resemblance in the name and appear- exercise of its power with a wise and ance." judicial discretion. In cases such as 7 Lorillard Co. v. Peper, 86 Fed. this, it should presume that the pub- 956-1898, at p. 958 (C. C. A. 8th lie makes use of the senses of sight Cir.). What is Similarity? 73 nation by a person who knows the genuine article well. It is sometimes even sufficient that there are points of resemblance. The Supreme Court of the United States has discussed this question in McLean v. Fleming? as regards infringement, but what is there said applies to the general question of simi- larity in all cases of this sort. " Much must depend, in every case, upon the appearance and special characteristics of the entire device; but it is safe to declare, as a general rule, that exact similitude is not required to constitute an infringement, or to entitle the com- plaining party to protection. If the form, marks, contents, words, or the special arrangement of the same, or the general appearance of the alleged infringer's device, is such as would be likely to mislead one in the ordinary course of purchasing the goods, and induce him to suppose he was purchasing the genuine article, then the similitude is such as entitles the in- jured party to equitable protection " (id. p. 253). * * * " Difficulty frequently arises in determining the question of infringement; but it is clear that exact similarity is not re- quired, as that requirement would always enable the wrong- doer to evade responsibility for his wrongful acts. Colorable imitation, which requires careful inspection to distinguish the spurious trade-mark from the genuine, is sufficient to main- tain the issue ; but a court of equity will not interfere when or- dinary attention by the purchaser of the article would enable him at once to discriminate the one from the other. Where the similarity is sufficient to convey a false impression to the public mind, and is of a character to mislead and deceive the ordinary purchaser, in the exercise of ordinary care and caution in such matters, it is sufficient to give the injured party a right to redress." Here again is seen the great necessity of equity's refraining from laying down exact rules and limits which it will enforce. To be able to do justice in all cases, it must be governed by elastic doctrines. 9 *96 U. S. 245-55-1877; 24 L. ed. the symbol, etc. * * * should be 828. a facsimile, a precise copy, of the 9 Colman v. Crump, 70 N. Y. 573- original trade-mark, or so close an 78-1877. " It is not necessary that imitation that the two cannot be dis- 74 Unfair Business Competition. § 39. Care Used by Average Buyer of the Class of Article in Question Must be Considered. — Similarity such as will deceive the critical, well-posted buyer is not the degree of like- ness necessary to this action. It is the buyer who uses ordi- nary caution in making his purchase, who is buying with the care usually exercised in such transactions, who must be de- ceived by this similarity. He who buys a bottle of ale does not use as much care as he who buys a watch. He who buys a handkerchief does not usually examine the goods offered him as carefully as he who purchases a suit of clothes, 10 The class of persons who will purchase an article must be considered, in deciding as to what constitutes similarity. Names made up of technical words may be entirely distinct to the scholar's eye and ear and yet to an unlearned person they would seem the same. 11 The maker of goods, in choosing a name, is not bound to insure the negligent buyer. . Neither he nor his competitor has a right to the monopoly of the trade of the careless or heedless or of those who have no preference as to which brand of goods they purchase. The law of unfair trade is intended to protect those who are careful — discriminating — in their buying and who have preferences as to what they buy. Yet, as has been said, the buyer must be considered as he exists; and if, in the case of certain kinds of goods, he is known to be heedless that fact should be considered. The method of selling the goods, and the ordinary circum- stances attending their sale must be kept in mind. While the court is not bound to interfere, where ordinary attention will enable the purchasers to discriminate between the trade- marks used on the goods manufactured by different parties, nevertheless, the character of the article, as well as the use to tinguished except by an expert, or to relief." See also Tallcot v. Moore, upon a critical examination by one Hun, 106-1875. familiar with the genuine trade-mark. 10 Wirtz v. Eagle Bottling Co., 50 • * * If the resemblance is calcu- N. J. Eq. 161-1892; 21 Atl. 658; lated to deceive the careless and un- Fairbank Co. v. Bell Mfg. Co., 77 wary and thus injure the sale of the Fed. 869-1896. goods of the proprietor of the trade- " Fairbank Co. v. Bell Mfg. Co., mark, the injured party is entitled 77 Fed. 869-1 S96 (C. C. A. 2d Cir.). What is Similarity? 75 which it is put, the kind of people who are likely to ask for it, and the manner in which it is probable it will be ordered,, must not be lost sight of. 12 § 40. Character of the Article, and the Habits and Intel- ligence of the Consumer. — The true similarity is the like- ness by which the ordinary purchasers, buying with ordinary caution, are likely to be misled. 13 The perceptions of the ex- tremely stupid or extremely brilliant mind are not to be con- sidered. The law presumes that the purchaser whom it must protect en masse, is a man of ordinary intelligence and sense, and it is further presumed that in the buying he will use or- dinary care — no more, no less. Still in considering whether or not one device is similar to another, it is extremely important to know the intellectual capacity of the purchasers who will be called on to distinguish them. This is of least importance in cases involving two labels composed wholly of printed mat- ter, which, of course, means nothing to those who cannot read. On the other hand, two marks composed of a device made of two elephants, for instance, with printed matter, might appear entirely different to one who could read, while, to one who could not read, they might seem exactly alike. Differences in a wrapper for a college man's scarf which might with entire justice be .termed absolutely immaterial might be the means of great loss and injustice if used on calico sold in the South Sea Islands. In Johnston & Co. v. Orr Ewing & Co., 14 plaintiffs had been using a label, the main feature of which was a device of two elephants. Defendant colorably reproduced this label. The plaintiffs' mark was the only mark using the figure of ele- phants known in the Oriental market, where plaintiffs sold their goods; and it became known as the "two elephants." "Popham v. Cole, 66 N. Y. 69- v. HinJc, 63 Cal. 445-1883; 49 Am. 1876; 23 Am. Rep. 22, and cases there Rep. 96; Orr Ewing & Co. v. cited; Morgan's Sons Co. v. Troxell, Johnston & Co., L. R. 13 Ch. Div. 23 Hun, 632-1881 ; reversed in S9 N. 434-1880; Apollinaris Co. v. Y. 292-1882; 42 Am. Rep. 294; Bead Scherer, 27 Fed. 18-1886 (C. C. S. Bros. v. Bichardson, 45 L. T. N. S. D. N. Y.). 54-1881 ; Beard v. Turner, 13 L. T. N. "McLean v. Fleming, 96 V. S. S. 747-1866; LeideTsdorf v. Flint, 50 245-1S77, at p. 251 ; 24 L. ed. 828. Wis. 400-1880; 7 N. W. 252; Eggers U L. R. 7 App. Cas. 219-25-1882. 76 Unfair Business Competition. The main resemblance between the two labels was the fact that on each was the figure 'of two elephants. Held, the label of the defendant might easily mislead the natives. Said the court : " To such persons, or at least to many of them even if they took notice of the differences between the two labels, it might probably appear that these were only differences of ornamentation, posture, and other accessories, leaving the dis- tinctive and characteristic symbol substantially unchanged. " No actual deceit was proved. " But in this case, the plain- tiffs judged it necessary to proceed without waiting till actual deceit was proved, and I think they judged rightly, for as James, L. J., said (13 Ch. Div. 464) ' the very life of a trade- mark depends upon the promptitude with which it is vindi- cated ' " (id. p. 229-30). "A consumer who has been accustomed to purchase an arti- cle in a dress or package which has been familiar to him does not stop to read and examine. Many of the consumers of beer are unable to read, and many are foreigners and unacquainted with the English language. All consumers, whether able to read or not, are in fact guided by the general appearance of the packages or label which is before them." 15 Plaintiffs manufactured French polish in London, and de- veloped a large trade in Bombay, where the goods, from the two red medals on the label, came to be known as " Lai Mohur" or "Lai Chap" (meaning "red medal or stamp"). Defendants then began to sell their polish in Bombay, with labels differing from plaintiffs'; except that they bore two red medals, in much the same position as plaintiffs'. Held, on the evidence, that though defendants' label might not deceive the British public, it tended to deceive the Bombay public. In- junction was granted. The inexpensiveness of the article, and the fact that it is often called for by careless and illiterate persons, or foreign- ers, unfamiliar with English, will be taken into account. The bearing of such facts is aptly expressed by Barrett, J., in Morgan's Sons Co. v. Troxell, 16 as follows: " While there 15 Kostering v. Seattle Brewing & son v. Griffith Bros. & Co., 8 Rep. Malting Co., 116 Fed. 620-1902 (C. Pat. Cas. 370. C. A. 9th Cir.). So also Wilkin- 16 23 Hun (X. Y.) 632-36-1881. What is Similarity? 77 is an almost ostentatious display of variation in matters not likely to attract the attention of the casual purchaser, there is a substantial similarity in the picture to which the eye has be- come accustomed. In this connection, we must not lose sight of the character of the article, the use to which it is put, the kind of people who ask for it, and the manner in which it is ordered. Very broad scene painting will deceive an ig- norant, thoughtless, or credulous domestic, looking for an arti- cle in common and daily use, and of no particular interest to her personally. The same kind of deception would be instantly detected by an intelligent woman of the world, looking for her favorite perfume, soap, or dentifrice, or by a man of luxurious tastes, inquiring for some special brand of champagne." § 41. Comparison is Not the Test of Similarity. — The aver- age purchaser has no chance to compare. The only instances of attempted simulation, which attract his notice, are those in which the differences are so glaring and evident that deceit would be very unlikely. It is this very tendency to careless- ness on the part of buyers that makes unfair competition profit- able and possible commercially. In Stuart v. F. G. Steivart Co., 17 appellant began in 1891 to make and sell " Stuart's Dyspepsia Tablets " and advertised them widely. Appellee knew of complainant and his business when, in 1895, he put on the market " Dr. Stewart's Dyspepsia Tablets " in boxes similar to appellants'. Held, " Comparison is not the test of infringement. The purchaser has not the advantage of com- parison. A specific article comes to be known by certain catch- words easily retained in memory, or by a certain picture which the eye readily recognizes. The purchaser * * * is not bound to study or reflect. He acts upon the moment — he is without the opportunity of comparison. It is only when the difference is so gross that no sensible man acting on the instant would be deceived that it can be said that the purchaser ought not to be protected from imposition. Indeed, some cases have gone to the length of declaring that the purchaser has a right to be careless. * * * However, the imitation need only be slight, if it is attached to what is most salient. Here the purchaser, desiring the remedy of the appellant, to which his attention "91 Fed. 243-45-1899 (C. C. A. 7th Cir.). 78 Unfair Business Competition. had been attracted by the advertisement, or which possibly he had before purchased, knew the remedy as ' Stuart's Dypepsia Tablets,' and that it was in a blue wrapper. The name caught the ear ; the color caught the eye. * * * We think it would require more than the care ordinarily used * * * to expect that * * * a purchaser would deliberate over, or be warned by the addition of the prefix ' Dr. ' " (id. p. 245-46) , 18 § 42. Imitation of Salient Features. — Imitations may be slight and still constitute " similarity," if they attach to salient features. Many articles come to be known by a pe- culiarity they possess, which is usually described by a catch- word. The important question is, What part of the label or name will the buyer look at? What will he see? It is a physical fact that the average person will not, cannot, take in at a casual glance all, or even a large part, of the detail of what he looks at. 19 The question is what part of the names or marks, which are charged with similarity, does the average ordinary buyer see when he looks at them; what feature of a label or container becomes familiar to the average buyer of the article. We do not hear all that is spoken in our hearing, only a part is noticed by us, with sufficient detail for us to re- tain an impression of it which we will recall when we hear it again. Few people would be struck with the difference be- tween the name " Stuart's Dyspepsia Tablets " and " Dr. 'Stewart's Dyspepsia Tablets," and yet one word in four is different in these names. 19 Meyer v. Dr. Bull Vegetable Medi- no chance for accurate comparison. cine Co., 58 Fed. 884-1893 (C. C. A. No rule of measure of fraud, of de- 7th Cir.). Plaintiffs sold "Bull's ceit, or likelihood of confusion be- Cough Syrup," and " Dr. Bull's tween plaintiff and defendant has Cough Syrup." Defendant sold hi been discovered in the books which similar wrappers, " Dr. B. L. Bull's will fit all cases, and it is well that Celebrated Cough Syrup." This this is so, for were there such rules was enjoined. " Bull's Cough to be found, equity would sometimes Syrup " is, in one sense, quite be found to have so bound herself different from " Dr. B. L. Bull's by this same rule as to be unable to Celebrated Cough Syrup," but the render aid in some future case of real use of the latter was enjoined not injustice. because of the likeness between them, "Blackwell v. Crabb, 36 L. J. but to protect the purchaser, who has Ch. N. S. 504-1867. What is Similarity? 7D The average buyer seeks a sign, some special earmark of the brand he has in mind. It may be color — or a design — or a peculiar shape or name. Once his eye sees that or his ear hears it, he is satisfied. He is careless — yes, possibly, but if that is the way the average man buys that sort of goods, he may rightfully demand that the law protect him from deceit when he so purchases. There have been cases which have held that a buyer has a right to be careless, but this is not the general rule. See § 155. § 43. Necessary Physical Requirements of the Article Must be Considered. — Sometimes several articles differing in many ways are made by various manufacturers in the attempt to serve a specific purpose, the physical limitations of which compel all the makers to construct their goods in certain re- spects in a very similar manner. In the absence of patent rights, no one can monopolize the mechanical elements neces- sary to this construction and no one can appropriate ex- clusively to himself a name which is based on a description of these common physical limitations. In other words, all principles of construction and names descriptive of them which are essential to a successful practical operation of a device and serves to promote its efficiency, may not be appropriated. 20 The limitations of the right of one person to imitate an article manufactured by another are shown in Enterprise Mfg. Co. v. Landers, Frary & Clark. 21 There the defendants had not only conformed their goods to complainant's in size and general shape, but also in all minor details every line and curve was reproduced; superfluous metal was put into the driving wheels, giving a very characteristically similar effect. The goods were then dressed with combinations of color and decorations exactly copied or closely simulated as to style of letters and details of ornament, except that on one mill is found the complainant's name and on the other the defendant's. This was held to be "a most aggravated case of unfair trading, and that such reproduction of unnecessary lines and 10 Marvel Co. v. -Pearl, 133 Fed. "131 Fed. 240-1904 (C. C. A. 2d 160-1904 (C. C. A. 2d Cir.). Cir.), at p. 161-62. 80 Unfair Business Competition. curves and simulations of arbitrary designs and striking combinations of color would be restrained by a court of equity when they were so close as to show an intent to appropriate the trade of a competitor." (Quoted from Marvel v. Pearl, supra.) See also Rushmore v. Saxon, C. C. A. 2d Cir., Nov. 1908. § 44. Distance Between Competitors a Factor in Deciding as to Similarity. — It has been stated that, in considering the question of unfair competition, the geographical situation of the person who will buy the goods in question is to be con- sidered. This is true, but not unqualifiedly so. Formerly, it would have been assumed in the absence of most positive proof that a party might carry on his own business under Ms own name in Chicago, notwithstanding the fact that parties had established business under the same name in New York. Ball v. Best 22 held that a Chicago house should be enjoined because both did a mail order business, by reason of which a New York house was confused with it by buyers at points far distant from both Chicago and New York, and an injunction was issued. In Randall v. British & American Shoe Co, 20 it was held, that although plaintiff's shop was five miles from defendant's in London there was unfair competition from similarity of name. The effect of imitation depends very much upon propinquity. In many cases the use of a similar trade-mark, in localities very remote from each other, would not justify an inference that the establishments were those of a common proprietor, "135 Fed. 434-1905 (C. C. N. D. bearing this name. Defendants organ- Ill.), ized the "London American Shoe "19 R. P. C. 393-1902. In Company" and, on objection of the 1897 plaintiffs opened shop in plaintiff, took the name " The British Regent street exclusively for the & American Shoe Company." Plain- sale of American shoes under the tiffs were the first to open shops that name "American Shoe Company." sold only American shoes. They Plaintiffs, a limited company, dealt spent £5,000 in advertising this busi- largely in English shoes. They ness. Defendants' shop was five miles adopted the name "American Shoe from nearest shop of plaintiff. Company " to distinguish that busi- Actual deceit was shown. Held, that ness from their English business. both names used by defendants were They later opened eight other shops calculated to deceive. What is Similarity? 81 and so would not result in damage or support an allegation of fraud, while if they were near each other such an inference would be legitimate and necessary. 24 § 45. Deceit of Ultimate Purchaser, Not of Middleman, is the Important Consideration. — As has been seen, it is not necessary to support an action for unfair competition that the vendor of goods should do the deceiving. It is enough if he put it in the power of anyone else, middleman or retailer, to de- ceive the ultimate purchaser. Hence the degree of identity and imitation which must be considered is not that which would deceive the jobber or immediate purchaser but the consume* of the goods. " In the sharp contest between the individual manufacturer, who strives to acquire and retain the fruits of industry and honesty, and the field of keen rivals, seeking to wrest from him the prize of the public good-will, the in- ventive ingenuity of the infringer has conceived a great va- riety of devices for evading the established rules of fair deal- ing. Among the later of these devices are acts professedly within legal limitations, but manifestly designed to be after- ward so made available by other acts as to deceive the public. In such cases courts of equity, looking beyond the original acts and finding that their ultimate object and effect were to enable and induce the retail seller of a fraudulent imitation to palm it off on an unsuspecting public for the genuine article, and thus to contribute to the infringement upon the rights of the original owner, have not hesitated to apply the remedy. ' ' 24a To entitle plaintiff to relief it is not necessary to prove that any customer of plaintiff has been deceived by anything done by defendant, it being sufficient to show that defendant knowingly put it in the power of retail dealers to deceive their customers. 25 The defendant may have sold the goods to one who has in turn sold the goods to other jobbers. The question is, Were the goods an imitation of those of a rival, when they left defendant's hands? Although all the jobbers knew whose 24 Cady v. Sehultz, 19 R. I. 193- 2B Williamson Corset & Brace Co. 1895; 32 Atl. 915; 29 L. R. A. 524. v. Western Corset Co., 70 Mo. App. "'Hostetter Co. v. Sommers, 84 424-1897. Fed. 333-1897 (C. C. S. D. N. Y.). 6 82 Unfair Business Competition. make of goods they were, yet if the retailer was able, by rea- son of their get-up, to use them fraudulently, the maker may be held liable to one who suffers loss from the retailer's unfair trading. 20 Ambiguity in a name, or the fact that, while similar to that of the plaintiff, it is so different that some people construe it one way and some another, will not prevent injunction from being issued against it. It may still be held similar within this rule. It is not necessarily important that it has been understood differently by different persons. That does not prove dissimilarity. 27 § 46. Similarity of Color, Shape, Size, Etc. — Generally speaking, a trader cannot be entitled, even after long and ex- clusive use, to monopolize a particular color or a particular shape, size, or style for the label or wrapper of a particular class of goods. The trend of the law is strongly toward the proposition that under ordinary circumstances the adoption of packages of peculiar form and color alone, unaccompanied by any distinguishing symbol, sign, or seal, is not sufficient to constitute a trade-mark. 28 This general rule has been applied in a variety of ways. In Fleischmann v. Starkey, 20 for exam- ple, it was held that no exclusive right could be acquired to use a yellow-colored label for packages of yeast. Nor can there be an exclusive right in the nature of a trade-mark, to the use of a barrel of peculiar form and dimensions, irrespective of any marks or devices stamped upon or connected with it. 50 In Brown v. Seidell defendant closely imitated plaintiffs' package in the size, form, wrappings and color, but in the words and arrangement of the labels, the difference was marked. Plaintiffs were held (one judge dissenting) not to be entitled to an injunction. The court quoted the language of Heinz v. Lute, 32 to the effect that lt the offending label must "New England Awl & Needle Co. 29 25 Fed. 127-1 «S85 (C. C. R. L). v. Marlborough Awl & Needle Co., 30 Moorman v. Hoge, 2 Sawy. 78- 168 Mass. 154-1897; 46 N. E. 3cS6. 1871 (C. C. Cal.). 27 Singer Mfg. Co. v. Loog, 8 L. R. 3I 153 Pa. St. 60-72-1893; 25 Atl. App. Cas. 15-18-1882. 1064. 28 Philadelphia Novelty Mfg. Co. v. " 146 Pa. St. 592-1891 ; 23 Atl. Rotiss, 40 Fed. 585-1889 (C. C. E. 314. D. N. Y.). What is Similarity? 83 be such that it is likely to deceive persons of ordinary intelli- gence." And the court doubts whether " the mere resem- blance, accidental or otherwise, in the size and stylo of putting up packages, is of itself sufficient to justify the interference of a court of equity." It does not follow, however, that while the imitation of a particular feature, such as color or shape, would not, if stand- ing alone, be restrained, yet, if there is imitation in several such features producing misleading likeness of general ap- pearance, an injunction will not be issued expressly against the use of a particular feature, such as color, and also gener- ally against the use of all the features in combination. In Ster- ling Remedy Co. v. Spermine Medical Co.? 3 there was a clear and deliberate imitation of the peculiar and unusual shape and color of labels and style of box adopted by the complainant, as well as of letter press and of the name applied to the goods. Held, that there should be an injunction against the form of tablet and shape of box as well as against the use of infringing names. So also in Franck v. Frank Chicory Co., 3i the use of a particular label was specifically prohibited, where there had been imitation in other respects also. The court in such cases is not bound to limit its injunction to the combined use of all the features of imitation. § 47. Similarity of Names. — The cases given in the note below are rulings of various courts on what are and are not similar names. The foregoing rules apply in general, but in the last analysis, local conditions, the peculiar facts of each case and other evidences of fraud in addition to the similarity of the names, are all considered by the court. 35 See § 135. 83 112 Fed. 1000-1901 (C. C. A. street with an entrance also on the 7th Cir.). Strand. In 1877 defendant placed M 95 Fed. 818-1899 (C. C. Wis.), upon Ins shop a sign bearing the M Civil Service Supply Association words " Civil Service Boot Supply " v. Dean, 13 Ch. Div. 512-1879. and in his window a card with the Plaintiffs had a store in Queen Vic- words " Civil Service " in large let- toria street. In 1877 they opened ters. It was admitted on the trial a store at Bedford, a store for boots that the words " Civil Service " were and shoes with an entrance on Tavi- used by many other shops in London, stock street. Defendant was a boot- The court held that it was not shown maker having a shop on Bedford that the shop of defendant had been 84 Unfair Business Competition. represented to any of the witnesses as that of the plaintiffs. That, inas- much as the plaintiffs had never sold boots or shoes until 1877, there could be no impropriety in defendant put- ting up the signs he did. No per- son desiring to get into the Tavistock street shop could have been misled when he went into a shop opening in the Strand. These rules of trade are made for the general public and not for those who are willing to be misled and to believe that when they are going in one street they are go- ing in another. Goodwin v. Ivory Soap Co., 18 R. P. C. 389-92-1901; not trade-mark case. Goodwin be- gan to sell Ivy soap in 1889 and in 1899 began action to restrain de- fendants from selling Ivory soap -in England. It was admitted Ivory soap had been sold in England prior to 1889. Held, the two soaps were put up in an entirely different man- ner, so no mistake could result. The only ground plaintiff has for recov- ery is similarity of name and the consequent liability of resulting de- ception. Held, on appeal, that " Sim- ply because the word ' Ivy ' may have some sort of similar sound to the word ' Ivory,' if you do not pro- nounce the word ' Ivy ' properly, the plaintiff asks the court to assume as the inevitable deduction that what the defendants are doing must be calcu- lated to deceive. It is impossible to my mind to make any such deduc- tion from the facts." Cooper & Mc- Leod v. Maclachlan, 19 R. P. C. 27- 1901. After 1875 plaintiffs used with their firm name the words *' Castle Brewery." They were lo- cated in Edinburgh. In 1872 de- fendants opened a brewery at Govan, which plant they called " Castle Vaults." In 1900 they opened a brewery near Edinburgh which they called " Castle Brewery." The de- fendant had had a " Castle Brewery " at Glasgow since 1888 and had used the name " Castle Beer." No proof of deceit — injunction refused. Up- held on appeal. Lee v. Haley, L. R. 5 Ch. App. Cas. 155-1869. The plaintiffs had, for a series of years, carried on business as coal dealers in Pall Mall, London, under the name of the " Guinea Coal Company." The defendant, who had been their manager, finally set up a business in the same street under the same style of " The Pall Mall Guinea Coal Com- pany," and, while it appeared that there were other Guinea Coal Com- panies in London so that the plain- tiffs did not have the exclusive right to the use of the trade-mark " Guinea Coal Company ;" yet the court held that they were entitled, as against the defendant, to be pro- tected in the use of the name. " But the principle upon which the cases on this subject proceed is, not that there is property in the word, but that it is a fraud on a person who has established a trade, and carries it on under a given name, that some other person should assume the same name, or the same name with a slight alteration, in such a way as to in- duce persons to deal with him hi the belief that they are dealing with the person who has given a reputation to the same" (id. p. 161). This case goes further than it is necessary to carry the ride in the foregoing case, because the words " Pall Mall Guinea Coal Company " could be truthfully used by both parties. Both sold the coal in Pall Mall for a guinea a ton. Army & Navy Co-operative Society What is Similarity? 85 v. Army, Navy & Civil Service Co- operative Society of South Africa, Ld., 19 R. P. C. 574-76-1902. Plain- tiff had been incorporated for thirty years. Held, on hearing for interlocu- tory injunction that the name was cal- culated to deceive. " The plaintiffs have no right to the words 'Army and Navy ' or any combination of those words. Their right lies in this, that they may sue if a defendant is fraud- ulently adopting a name for the pur- pose of pretending that his trade is their trade, and if he be not fraudu- lent at all, still the plaintiffs may sue ' in property,' if he is adopting a name the result of which will be that the defendant will be taking the plaintiffs' property in the sense that persons will go to the defendant to trade with him when they meant to go to the plaintiffs, meaning to trade with them." Choynski v. Cohen, 39 Cal. 501-1870. Plaintiff had for some years conducted a bookstore called the "Antiquarian Book Store." This name was placed on the sign and uniformly used in advertising and in all transactions. He now sought to enjoin defendant from con- ducting a rival store under the name of the "Antiquarian Book & Variety Store." Held, that plaintiff could claim no exclusive right to use the word "Antiquarian " as part of his trade-mark or trade name, and that he was entitled to no relief. Wein- stock, Lubin & Co. v. Marks, 109 Cal. 529-1895; 42 Pac. 142; 30 L. R. A. 182. Plaintiffs in 1874 opened the " Mechanics' Store." Defendant in 1887 opened the " Mechanical Store." "As we view the picture presented by the findings of fact, the question as to what may or may not be the subject of a trade-mark is not the problem to be solved. That these words are of a kind that may be used as a trade name we have no doubt, and having established that fact we are required to pursue the investigation no further. That certain names and designations and names which may not become tech- nical or specific trade-marks may be- come the names of articles or of places of business, and thereby the use thereof receive the protection of the law, cannot be doubted, for the cases everywhere recognize that fact " (id. p. 535-36). * * * "And that the words ' Mechanics' Store ' may be made a trade name, and the user thereof become entitled under the law to protection from pirates preying upon the sea of commercial trade, we have no doubt. We think the. defendant should be restrained from the use of the words ' Mechanical Store.' The court has declared the fact to be, and it is not challenged by the defendant, that these words were used as a designation of his store for the purpose of deceiving the public, and especially plaintiff's customers, and thereby securing the advantages and benefits of the good- will of plaintiff's business. To say that such conduct on the part of the defendant is unfair business com- petition is to state the facts in the mildest terms" (id. p. 537). Bo- lander v. Peterson, 136 111. 215-1891; 26 N. E. 603; 11 L. R. A. 350. Complainant, a dealer in snuffs in Chicago, had for some time desig- nated his store and business as " Svenska Snusmagasinet " ( Swedish Snuff Store) ; his store was adver- tised and well-known among Swedes by that name. Defendant was also a dealer in snuffs on the same street, 86 Unfair Business Competition. not far from complainant, and had been using the sign " C. W. Peterson, Nya Snus Fabrik." He now altered this to " C. W. Peterson, Svenska Snus Magasin," and advertised the store and business as " Fran Snus- rnagasinet." The snuffs were sold under different brands. Held, that complainant was not entitled to re- strain him from so doing. Mossier v. Jacobs, 66 111. App. 571-1896. ■Complainants alleged that they had been engaged in business for fifteen years under the style of " Six Little Tailors," and that the defendant had opened a tailoring establishment un- der the name of " Six Big Tailors." Held, that the name was so similar to ■complainant's trade name that it was calculated to deceive the unwary, and ■ that its use would be enjoined. In- surance Oil Tank Co. v. Scott, 33 La. Ann. 946-1881. Plaintiff had an illuminating oil specially manu- factured for it and described it as u Insurance Oil," claiming it excelled in its combination of safety with other qualities. Defendants after- ward put on the market oil in pack- ages branded " Insurance Oil " in type exactly like that used by plain- tiff. Held, that plaintiff was entitled to the exclusive use of the words "" Insurance Oil." Giragosian v. •Chutjian, 194 Mass. 504-1907; 80 IT. E. 647. Plaintiff in 1900 began ^business under the trade name " Ori- ental Process Rug Renovating Com- pany." About the same time, and before this name had become identi- fied with plaintiff in public reputa- tion, defendant in good faith went Into business under the name " Ori- ental Rug & Carpet Renovating Works." In advertising he generally prefixed the name " Chutjian Broth- ers " to these words. Neither party used any process peculiar to him- self. Held, that the defendant was entitled to use the trade name adopted by him with or without the proper name prefixed in spite of its resem- blance to plaintiff's. But he should not alter the name to " Oriental Car- pet and Rug Renovating Works " so as to appear first in the telephone directory. Samuels v. Spitzer, 177 Mass. 226-1900; 58 N. E. 693. A bill in equity alleged that plaintiff had developed by advertisement and otherwise a large business as a clothier in Rnode Island and south- eastern Massachusetts under the name of the rt Manufacturers' Outlet Company," Mid that the name had been copyrighted or registered as a trade-mark. It further alleged that defendant, fraudulently seeking to mislead the public to his own advan- tage, had established in a neighbor- hood from which a considerable part of plaintiff's trade was drawn a shop for the sale of goods similar to plain- tiff's under the name " Taunton Out- let Company," and was thereby de- ceiving the public and diverting trade from plaintiff. On demurrer the bill was held to state a cause of action for unfair competition. Miskell v. Prokop, 58 Nebr. 628-1899; 79 N. W. 522. Plaintiff had for some years kept a store bearing the sign " Racket Store," and generally known by that name. Defendant then opened a store in the immediate neighborhood under the sign and name " New York Racket Store," the words " New York " being printed in small let- ters. It appeared that the word " Racket " had been quite often used as descriptive of certain kinds of stores before plaintiff's adoption of What is Similarity? 87 the term. The court below having determined that there was, under the circumstances, no such simulation as amounted to unfair competition, held, that its finding would not be dis- turbed on appeal. Brooklyn White Lead Co. v. Masury, 25 Barb. (N. Y.) 416-1857. Plaintiffs had for more than twenty years manu- factured white lead at Brooklyn, stamping the kegs with their corpo- rate name. Defendant subsequently began to manufacture white lead at Brooklyn, and at first marked his kegs " Brooklyn White Lead." Later he began to make zinc paint also, and changed the mark on his goods to " Brooklyn White Lead & Zinc Company." Held, that he should be required to omit the word " Com- pany " from his mark. United States Frame & Picture Co. v. Horowitz, 51 Misc. (N. Y.) 101-1906; 100 N. Y. Supp. 705. Plaintiff, the "United States Frame & Picture Company," was a corporation engaged for some years in business at No. 3 Barclay street. Defendant was the brother of its president, and had himself been an employee and officer of the company until 1905, when he left it and engaged independently in the same line of business at 86 Fulton street under the trade name of " New York Frame & Picture Company." It was held that defendant was enti- tled to use this name, but he was enjoined from using, for advertising, stationery closely resembling plain- tiff's, and from publication of no- tices of removal so worded as to lead the unwary to suppose that the plain- tiff was referred to. Stirling Silk Mfg. Co. v. Sterling Silk Co., 59 N. J. Eq. 394-96-1900; 46 Atl. 199. "The name of 'The Sterling Silk Company ' is so similar to that of * * * 'The Stirling Silk Manufac- turing Company ' that there is dan- ger of confusing complainant's goods with defendants " by retail pur- chasers. Commonwealth v. Banks, 198 Pa. St. 397-1901; 48 Atl. 277. This was a bill in equity by the at- torney-general to enjoin the defend- ant, the proprietor of a purely com- mercial or business school, from us- ing the name " University of Phila- delphia," principally upon the ground that the use of the word " Univer- sity " was misleading and unauthor- ized. It was also urged that the similarity of the name to that of the University of Pennsylvania led to confusion and mistakes, and the court, in granting the injunction, say that therefore the University of Pennsylvania, and persons dealing with it, would be entitled " to pro- tection under the law relating to trade-marks, against the use of a name which is similar in point of territorial designation and misleads the public" (at p. 401). Western Grocer Co. v. Caffarelli, Tex. ; 108 S. W. 413-1908. Plaintiff and its predecessors, wholesale grocers at San Antonio, had for some years used the words " Georgia Coon," as a trade-mark for their molasses and syrups, which came to be known and were popularly desig- nated simply as " Coon Molasses." Held, that defendants were not enti- tled to sell their molasses under the title " New Coon." Germer Stove Co. v. Art Stove Co., 150 Fed. 141- 1907 (C. C. A. 6th Cir.). Com- plainants made and sold stoves called " Radiant Home Stoves," and advertised them extensively as con- taining the " XX Century Fire-Pot," 88 Unfair Business Competition. by which name a patented fire-pot, used also by other manufacturers, had come to be known. Defendant made and sold, under the name " Twentieth Century Laurel," a stove containing a somewhat similar fire- pot, but the stove was plainly marked with defendant's name. Held not to be unfair competition. Wor- cester Brewing Co. v. Rueter & Co., 157 Fed. 217-1907 (C. C. A. 1st Cir.). "Sterling Ale" was held to be not purely descriptive, but to be entitled to protection against a cor- poration formed by one who had been in the employ of the original manufacturer, which put on the market " Worcester Sterling Ale " without clearly pointing out to the public the difference in origin. Brown Chemical Co. v. Frederick Stearns & Co., 37 Fed. 360-1889 (C. C. E. D. Mich.). Plaintiff manufactured " Brown's Iron Bit- ters," while defendant, a Michigan corporation, manufactured a similar preparation called " Iron Tonic Bit- ters." There was a sufficient dif- ferentiation in packages and labels, but in certain cases, at the request of particular dealers, defendant printed at the foot of the label " Brown & Co., New York City," in place of de- fendant's name. There was evidence that at least one dealer had attempted to palm off defendant's package as plaintiff's. Held, that plaintiff was entitled to an injunction against this practice without regard to the honesty of defendant's intentions. Dr. Peter H. Fahrney & Sons Co. v. Ruminer, 153 Fed. 735-1907 (C. C. A. 7th Cir.). Complainant had long advertised and sold a patent medi- cine under the name "Alpenkrauter." Held, that defendant's advertisement of a similar medicine as " St. Ber- nard Alpen Krauter" constituted unfair competition. CHAPTER IV. Good-Will. Section 48. Definitions of good-will. 49. Good-will protected by law of Unfair Competition. Good-will is unquestionably property. In England it is so treated with reference to the stamp duty on instruments deal- ing with good- will. 1 And American courts have held the same. 2 Probably Lord Hardwicke was the first to recognize good- will as a valuable property when he said: " Suppose the house were a house of great trade, he must account for the value of what is called the good- will of it." 2a § 48. Definitions of Good-Will. — Lord Eldon said good- will was a " probability." Vice-Chancellor Wood called it an " advantage." The Michigan court terms it " favor." Judge Story, an " advantage or benefit." Certainly, one of the principal ingredients of good-will is the name of the busi- ness house using it. Injure the name, and its good-will at once loses in value. Destroy its reputation — its name for honor, for promptness, for always dealing in high grade goods, and the good-will is impaired. Lord Eldon said good-will is " nothing more than the probability that the old customers will resort to the old place." 3 He might with equal fitness have added that it is the further probability that old customers will remember favorably the name of the house with which they have dealt so long. Sir John Leach in Chissum v. Deives, 4 defines good-will to be " the advantage attached to the possession of the house." " Good-will," said Lord Langdale, " is the chance or prob- *See Commissioners of Inland lor, 90 Ala. 241-18S9; 8 So. 36; Bevenue v. Angus & Co., 23 Q. B. Bank of Tomah v. Warren, 94 Wis. Div. 579-1889; Brooke & Co. v. 151-1896; 68 N. W. 549. Commissioners of Inland Bevenue, 2a Gibblett v. Bead, 9 Mod. 459- 2 Q. B. 356-1896. 1743. 1 Metropolitan Nat. Bank v. St. * Cruttwell v. Lye, 17 Ves. 335-46- Louis Dispatch Co., 36 Fed. 722- 1810. 1888 (C. C. Mo.)-, Howard v. Tay- 4 5 Russ. 29. [89] 90 Unfair Business Competition. ability that custom will be at a certain place in consequence of the way in which that business has been previously carried on." 5 Various kinds of good-will grow up in connection with various sorts of business : one sort is that belonging to a pub- lic house, a theatre, an office building, an amusement park, a manufacturing works, as the " Crown Works," (see Rickerby v. Reay, infra) and is usually termed local good-will or busi- ness good-will. Contrasted with this, is personal or, as it is often called, professional good-will. This attaches more directly to a person, and is not associated, in the minds of the public or business world, with any particular spot. " It is quite plain that the good- will of a public-house passes with the public-house. In such a case, the good will is the mere habit of the customers resorting to the house. It is not what is called personal good-will." 6 Then, too, there is a good-will which attaches solely to goods, in distinction from that belonging to a person or a place or business house. For instance, few people know the name of the makers, or the place of manufacture of " Castoria," while most persons have heard of the medicine itself. The " Gold Dust Twins," (the name of a brand of cleaning powder) is well-known, but few could say who made it. So numerous are the assumed names used in business, that statutes are passed in various states requiring their registration in public offices and many of these are attached to goods rather than to people or places. Included in good will is the right to use lists of customers. The sale of good-will passes to the purchaser such a list of customers and correspondents of the house. As mere posses- sion of this list, acquired legally, gives to the possessor the right to solicit the trade of such customers, actions regard- ing this sort of good-will often take the form of applications to enjoin one having such a list from using it to the damage of the owner of the good-will. Good-will of professional men and in professional partner- 8 England v. Downs, 6 Beav. 269- 8 Ex p. Punnett, 16 Ch. Div. 226- 1842. 33-1880. Good- Will. 91 ships attaches to person, not to place ; and this is true of part- nerships made by brokers and builders, and partnerships for buying and selling cattle and other goods, where the partners go about from place to place. In such instances credit attaches to persons. It is " in part the chance that sellers will con- sign in a name they know." 7 As showing what professional good-will is and how it is appendant to the person of a doctor, the case of May v. Thompson, 8 which arose on a breach of contract to buy a practice, is in point. Jessel, M. R., said in that case (p. 718) that in a contract for the sale of a doctor's practice, " there is always a stipulation that the selling doctor shall retire from practice either altogether or within a given distance. It is so always and there is also, sometimes, a stipu- lation that he shall not solicit the patients or shall not solicit them for a given time. ' ' One of the earliest cases on good-will was Crutwell v. Lye, 9 decided in 1810, in which Lord Eldon seemed to think that, without actual fraud, no injunction should issue to protect good-will of a concern which had been sold, from possible in- jury from further competition on the part of the vendor; saying that " the good-will which has been the subject of sale, is nothing more than the probability that the old customers will resort to the old place." Jessel, M. R., in Ginesi v. Cooper & Co., 10 questions this rule of Lord Eldon and states what has since come to be the law on this point, thus: " ' Good-will,' I apprehend, must mean every advantage — every possible ad- vantage, if I may so express it, as contrasted with the negative advantage of the late partner, not carrying on the business himself — that has been acquired by the old firm in carrying on its business, whether connected with the premises in which the business was previously carried on, or with the name of the late firm, or with any other matter carrying with it the benefit of the business." The above definition of Lord Eldon was given when he was considering a case of a wagoner who carried goods on a route, and the value of his good-will was solely in the fact that people in the locality knew a wagoner T Bates Partnership, vol. II, § 657. * 17 Ves. 335-46. 9 20 Ch. Div. 718. 10 14 Ch. Div. 596-600-1880. 92 Unfair Business Competition. was accustomed to start at the place where he usually did start and would go there when needing a wagoner. Wood, V. C, in Churton v. Douglas, 11 defines good-will thus: " Good- will, I apprehend, must mean every advantage that has been acquired by the old firm by carrying on its business, every- thing connected with the premises, and the name of the firm, and everything connected with or carrying with it the benefit of the business." 12 Judge Story defines good-will as " the advantage or benefit, which is acquired by an establishment, beyond the mere value of the capital stock, funds, or property employed therein, in consequence of the general public patronage and encourage- ment which it receives from constant or habitual customers, on account of its local position, or common celebrity, or repu- tation for skill or affluence, or punctuality, or from other acci- dental circumstances, or necessities, or even from ancient par- tialities, or prejudices." 13 The Michigan definition is as follows: " The favor which the management of a business has won from the public, and the probability that old customers will continue to give it their patronage." 14 § 49. Good- Will Protected by Law of Unfair Competition. — Good-will is protected by the law of Unfair Competition. One can pass off such good-will as he possesses, as the good- will of another, just as he can pass off his goods as those of another ; for when a trader, whose goods have little reputation, holds himself out to be someone else, whose goods have a favorable reputation, he fraudulently obtains the benefit of a valuable good-will not his own. Hence he does not pass off his goods as another's necessarily, but he holds himself out as possessing a reputation that gives his house and its goods particular standing in the mind of the trade and the public, which standing belongs only to another. It has been rightly termed stealing for one to thus take fraudulent advantage of another's good-will. 11 28 L. J. N. S. Ch. 841-45-1859. " 2 Story Partnership, § 99. " See also Menendez v. Holt, 128 u Chittenden v. Witbeek, 50 Mich. U. S. 514-22-1888; 32 L. ed. 526; 401-20-1883; 15 N. W. 526. 9 Sup. Ct. 143. Good- Will. 93 Colorable purchases of a business of small value to obtain its good-will, for the purpose of using the name, because of its similarity to that of a successful competitor, have been frequently condemned by the courts. Such transactions are deemed fraudulent and the use of the name in question will be enjoined. See also as to this, the section of the chapter on " Family Name " as to " Surnames acquired otherwise than by Descent " (§ 74). 15 15 Abel Morrall Ld. v. Hessin & Co., 20 R. P. C. 429-1903 (Ct. App.). For one hundred years a needle busi- ness had existed under the name of "Abel Morrall." In 1891 plaintiff purchased the good-will of the needle business of Joseph Mogg, and Joseph John Richard Mogg, which dated from 1846. Abel Morrall's or A. Morrall's needles were famous un- der these names or simply as Mor- rall's. Mogg's needles were well known in certain localities. Defend- ant began needle business in 1893 as " T. Hassin & Co.," and in 1900 pur- chased business of Jabez Yardley Morrall, a former employee of a com- pany now owned by plaintiff. He was not successful. Defendant pur- chased his business for £68. W. Mogg & Co. were provision dealers and for £7 sold to defendant " the whole bag of tricks," the receipt given by defendant mentioning good- will, use of name, labels, etc. Held, these purchases were colorable and made with intent to defraud plaintiff, and that the defendant might obtain trade intended for plaintiff. That this was fraud enough to enable the court to inquire into the transaction even where a man's own name had been purchased. Injunction granted against use of J. Y. Morrall or W. Mogg & Co. Holloway v. Clent, 20 R. P. C. 525-27-1903. Application for interlocutory injunction. Plain- tiff had been a pill maker since 1S37, selling Holloway's Pills. In 1897 Clent, for £60, bought out Arthur Holloway, who had an ink, gum, fur- niture and paste business, with his good-will, trade name, etc. No men- tion is made in the agreement as to the pill business or trade possessed by Holloway. Defendant then be- gan to put up and sell " Holloway's Pills." Plaintiff had a registered mai'k. He claimed to have been es- tablished since 1837, the date when plaintiff began business. Defendant also wrapped his boxes and pills in leaflets issued by plaintiff in which plaintiff wrapped his boxes. " It certainly is not open to a person to buy another's business and then to use the name of the vendor of that business, which happens to be the name of a well-known manufacturer of a different article to assist him in the sale and business of that other article." Mappin & Webb Ld. v. Leapman, 22 R. P. C. 398-1905 (Ch. Div.). Plaintiffs were the successors in business of two old Anns, Mappin Brothers and Mappin & Webb. De- fendant sold goods similar to plain- tiffs', but made by one Blyde, who was alleged, without strict proof, to have bought the business in Sheffield of one Theophilus Mappin, trading as Mappin & Sons, and bore tickets 94 Unfair Business Competition. Advertisements stating or suggesting that the one advertis- ing possesses the good- will of one well known in business, when such is not the fact, will be enjoined. Most of the cases in- volving good-will arise upon its transfer in one way or an- other — by sale, by distribution of the property of a decedent, by will, by gift, by assignment, by dissolution of partnership, etc. The various questions raised by the transactions are con- sidered in the next chapter under the head of ' ' Transfer. ' ' Where the principal value of the property of a racecourse company was a privilege granted by a jockey club to carry on races, and it tried to transfer its property to a successor by a deed merely of its land, which deed, to escape stamp tax, was for a consideration of £1 0,000, the value of the land only, when the actual consideration for the entire sale was greater than that, it was held that the good-will merely enhanced the land value; it was not a separate property and the business and good-will were not separable. 16 In England and the United States injury to good-will has not been considered as a part of the law of unfair competition, but it has been so classified in Germany in section 6 and 7 of the law Gesetz Zur Bekampfung des unlauteren Wettbewerbs, passed May 27, 1896. 17 This statute allows restraint of inacu- rate statements in selling goods and allows, too, compensation for injury suffered and a fine for one who intentionally makes misleading statements as to price, etc. with such phrases as " Mappin's A 1 Quality." Defendant's salesmen rep- resented these goods to be the same as plaintiffs'. Held, that plaintiffs were entitled to an injunction. 16 In re The Rosehill Racecourse Co., 5 State Reports, 402-1905. 17 See articles on same, 13 Law- Quarterly Review, 156-1897. CHAPTER V. Transfers of Trade Names, Signs, Marks, Etc. Section 50. Names not transferable — artists, musicians, etc. 51. Sale of entire property of a business. — Rights of vendor. 52. Presumption that no one intends to part with right to use his own name. 53. Name may be so sold as to preclude the owners from again using it in the same business. 54. Sale of business site, effect of on names. 55. Good faith as to names and marks required of vendors thereof. 56. Transfer of portraits. 57. Transfers in bankruptcy and in assignments for creditors. 58. Rights of retiring stockholders and others in corporate names. 59. Soliciting old customers. 60. Sale of name or business by originator of an article. 61. Effect of locality on transfers of a business. 62. Partner's rights in the partnership name on dissolution. 63. Dissolution by death of a partner. 64. Transfers by descent and rights of descendants. 65. Transfer of secret formulae. The law of unfair competition is concerned with transfers of trade names and marks, because many of the cases in which the rule is invoked, arise over conflicting claims of parties whose rights depend upon the construction of the transfer agreement. § 50. Names Not Transferable — Artists, Musicians, Etc. — There are some names that become valuable which have been held not to be transferable. On grounds of public policy the right to use the name of an artist or musician is not capable of being assigned so as to be used, for example, in designating or advertising a band, or a series of concerts, with which the musician in question has no connection. 1 The same is probably true of all professional names, whenever the repute of the name depends on the personality or personal characteristics 1 Blakely v. Sousa, 197 Pa. St. 305- Chaney, 143 Mass. 592; 10 N. E. 713, 1900; 47 Atl. 2S6, citing Eoxie v. and other eases. [95] 96 Unfair Business Competition. of the individual in such a way that if used, except in con- nection with that individual, the public will not be getting what it has a right to expect from the use of the name. § 51. Sale of Entire Property of a Business — Rights of Vendor. — Where an entire business is sold, question often arises as to the rights of the vendor to re-enter the same busi- ness, to solicit the old customers, to set up a stand near the old one, to use the old name in part or in whole, to associate him- self with former partners, to use wrappers, bottles, cartoons, labels and trade names of the old concern, to state his former connection with it, to trade on its credit in any way. If the answer sets up the terms of the sale, the right of the plain- tiff to enjoin the defendant from any of these acts may hinge on their interpretation. "With the simple sale of a business and its attendant good- will there goes no legal or equitable right, according to certain authorities, to prevent the vendor from again entering the same business. He cannot resume business so as to directly take away, or put himself in the way of getting, the business he has sold. Any of the trade which would naturally go to his former place of business or " stand," or any that would be naturally attracted there because of the name or reputation which that business bears, and which his vendee now uses, he may not seek to supply; but unless he has specifically agreed in his contract of sale not to do so, he may, if he chooses, re- enter the same line of business in any manner that does not in any way create the impression that the new business he starts is the old one, or connected with it; or, in other words, in any way which does not involve unfair conduct on his part. The Encyclopedia of the Laws of England, volume 6, page 85, summarizes this rule by saying that the purchaser or acquirer for value of a good-will cannot insist upon the retirement from the trade of the late owner of the business, but, to protect him- self, he must obtain an agreement restraining competition — an agreement which must satisfy the tests laid down in Norden- felt v. The Maxim-Nordenfdt Guns $ Ammunition Co. 2 It is not necessary here to discuss the principles of restraint 2 (1894) App. Cas. 535. Transfers of Trade Names, Signs, Marks, Etc. 97 of trade. This work has to do with these contracts, not in the making, but with the enforcement of them. It assumes that the contracts referred to are valid in that regard. A court of equity will protect a person using a label which states the true source of the goods marked with it, under or- dinary circumstances. For instance, a person may sell to an- other the right to use his name, but this person may not enjoin a third who sells goods actually made by original maker, under that maker's name. To enjoin, in such a case, would be to en- join the sale of a genuine article. 3 § 52. Presumption that no One Intends to Part with Right to Use His Own Name. — Some courts have not gone as far as to recognize the existence and force of tins presumption but most of them consider that so important to a person is the right to freely use his own name as a business name, that there is a presumption against his having parted with such a right except where an express intention so to do is shown. 4 § 53. Name May be so Sold as to Preclude the Owner from Again Using It in the Same Business. — A person may, if he wishes, sell his name once for all and exclude himself entirely from the use of it in such a way as to injure his vendee in #ny unfair way in the enjoyment of his purchase. This is now decided not to be any unjust limitation on a person's right to the use of his own name. 5 8 Samuel v. Berger, 24 Barb. 163- 1856 (N. Y. Sup. Ct.). Plaintiffs were the assignees of Samuel who, by agreement with one Brindle, had acquired the right to use Brindle's name on watches made by Samuel. Defendants sold watches which were, in fact, manufactured by Brindle and were stamped with his name. Held, that plaintiffs were not entitled to an injunction restraining defendants from so doing, the court considering that to grant such an injunction would be to prevent the sale of the genuine article, and thus protect plaintiff in the sale, of a simulated one. 'Hazelton Boiler Co. v. Hazelton Tripod Boiler Co., 142 111. 494-1892 ; 30 N. E. 339. " The right of a man to use his own name in connection with his own business is so fundamental that an intention to entirely divest himself of such a right and transfer it to another will not be readily pre- sumed, but must be clearly shown " (id. p. 508). This statement was made regarding a transfer of all one's " right, title and interest in a business" and it was held this did not pass the right to use the name of the vendor. s Russia Cement Co. v. LeParje, 147 Mass. 206-1888; 17 N. E. 304. In 98 Unfair Business Competition. However, if one uses his name unfairly in re-entering busi- ness, or makes any attempt to reclaim any of the business of the concern he has sold out, he will be enjoined. Merely to make his own name unduly prominent may be unfair. 6 If in the new business the vendor makes use of the identical name he used before or a very similar one he will undoubtedly be en- joined. 7 This is true of a name of a brand of goods or of a business name as much as of a personal name. 8 One member 1880 LePage and Brooks began to make LePage glue, agreeing to use LePage's name. In 1882 they sold their business to plaintiff, including the trade-mark which was not regis- tered. In 1886 LePage drew out and began business for himself in same town with plaintiff. Held, a person may sell his own name as a trade name and preclude himself from further use of it. Defendant enjoined from using " LePage's Improved Liquid " or LePage's " Liquid Glue," and from using LePage's Liquid Glue Co. as name of his company. Citing Horton Mfg. Co. (N. T.) v. Horton Mfg. Co. (Ind.), 18 Fed. 816-1883; McLean v. Fleming, 96 U. S. 245-1877; 24 L. ed. 828; Dixon Crucible Co. v. Gug- genheim, 2 Brewst. (Pa.) 321-1869; Probasco v. Bouyon, 1 Mo. App. 241- 1876; Oakes v. Tonsmierre, 4 Woods 547-1883 (C. C. Ala.); Celluloid Mfg. Co. v. Cellonite Mfg. Co., 32 Fed. 94-1887; Ainsworth v. Walms- ley, L. R. 1 Eq. 518-1866; Shaver v. Shaver, 54 Iowa 20S-1880; 6 N. W. 188; S. Frazer v. Frazer Lubri- cator Co., 121 111. 147-1S86; 13 N. E. 639; Gillis v. Hall, 2 Brewst. (Pa.) 342-1869; Kidd v. Johnson, 100 U. S. 617-1879; 25 L. ed. 769; Hoxie v. Chaney, 143 Mass. 592- 1887; 10 N. E. 713. "Andrew Jurgens Co. v. Woodbury, 56 Misc. (N.Y.)404;106 N. Y. Supp. 571-1907 (Sup. Ct. N. Y. Sp. T.). Defendant, John H. Woodbury, Avith others, in 1901 transferred to the predecessors of the plaintiff all trade- mark and other rights in connection with various preparations, including Woodbury's Facial Soap, which was widely known. He engaged in no competing business until 1906, when he began to sell a soap called " Woodbury's New Skin Soap." There was no simulation of wrapper or package, except that the name " Woodbury " appeared conspicu- ously on each box and cake. Held unfair competition. 7 Probasco v. Bouyon, 1 Mo. App. 241-1876. Oakes, one of the defend- ants, was a former partner of plain- tiff. The firm made candies known as " Oakes' Candies." Oakes sold to plaintiff his interest in the firm, the bill of sale including the exclusive right to make and sell " Oakes' Candy." Afterward he began mak- ing candies for defendant, who ad- vertised and sold them as " Oakes' Candies." Held, that defendants would be restrained from selling candy under that name. 8 Myers v. Kalamazoo Buggy Co., 54 Mich. 215. Myers bought of owners of Kalamazoo Wagon Com- pany all their interest " in the prop- Transfers of Trade Names, Signs, Marks, Etc. 99 of a family may sell out his rights in a business to another erty, assets, money and good-will, and all the other property of every man- ner and nature in and to the firm of the Kalamazoo Wagon Co." His ven- dors then organized the defendant company. Cooley, J., said : " Plaintiff was entitled to be put in possession of what he had bought. The good- will was a substantial part of the purchase, and purposely to take any steps to prevent his receiving the benefit of it was a wrong of the same nature as would have been the retention of some portion of the tan- gible property belonging to the stock of the company. This good-will is to be found in the probability that the old customers of the establish- ment whose dealings with it have been satisfactory to them will con- tinue their custom and commend it to others." Listman Mill Co. v. List- man Milling Co., 88 Wis. 334-1894; 60 N. W. 261. William Listman originated the trade-mark or trade name " Marvel " as applied to flour, and the name was used for some years by a Ann of millers of which he was a member. During this period he registered, in his individual name, a trade-mark of which " Mar- vel " was the distinguishing feature. The business and the use of this mark or name were continued by a corporation formed by Listman, and then by the plaintiff corporation, in which he was largely interested and of which he was general manager. There was no formal assignment of the trade-mark or express agreement regarding it. Listman then severed his connection with plaintiff, organ- ized the defendant company in an- other city, and defendant then be- gan to apply the name " Marvel " to its flour. Held, that plaintiff had acquired the exclusive right to the use of this mark or name. Giacomo Allegretti v. Allegretti Chocolate Cream Co., 177 111. 129-1898. " Trans- fer of the property and effects of a business carries with it the exclusive right to use such trade-marks or trade names that have been used in such business" (id. p. 132). Citing Snyder Mfg. Co. v. Snyder, 54 Ohio. St. 86-1896; 43 N. E. 325; 31 L. R.. A. 657; Williams v. Farrand, 88 Mich. 473-1891; 50 N. W. 446; 14 L. R. A. 161; Fish Bros. Wagon Co.. v. La Belle Wagon Works, 82 Wis. 546-1892; 52 N. W. 595; 16 L. R. A. 453; Merry v. Hoopes, 111 N. Y. 415-1888; 18 N. E. 714; Feder v. Benkert, 18 C. C. A. 519; 70 Fed. 613-1895 ; C. S. Higgins Co. v. Hig~ gins Soap Co., 144 N. Y. 462-1895; 39 N. E. 490; 27 L. R. A. 42; Peck Bros. & Co. v. Peck Bros. Co., 113 Fed. 291-1902; 62 L. R. A. 81; 51 C. C. A. 251. Ayer v. Hall, 3 Brewst. (Pa.) 509-1871. Defendant, R. P. Hall, had sold to plaintiff the right in a preparation called " Hall's Vegetable Sicilian Hair Renewer," in- cluding the right to use the defend- ant's name, and had been enjoined from using the name Hall in con- nection with any similar preparation sold by him. Held, that it was a breach of the injunction for him to sell "R. P. Hall's Improved Prepa- ration for the Hair," even though accompanied by the words " This preparation is entirely different from Hall's Vegetable Sicilian Hair Re- newer, but is compounded by the same inventor, R. P. Hall." 100 Unfair Business Competition. and in a similar way lose the right to use his own name to the injury of the vendee. 9 § 54. Sale of Business Site; Effect of, on Names. — This question is complicated often, because the name which is trans- ferred is attached more or less definitely to some locality, building, or address, which has become really a part of the name and reputation of the business. This is true frequently of hotels, breweries, natural springs, newspapers, and the like. In such cases he who buys the buildings, or acquires the right to occupy them, will have the right to use the name at- taching thereto, in the absence of very explicit contractual ar- rangement. 10 8 " Twin Brothers " Yeast. Where one brother sold out to the plaintiff -the purchaser can enjoin the other from using the name. Burton v. .Stratton, 12 Fed. 696-1882. Where a merchant using name " Little Jake " sold out, agreeing not to use the name, he can be enjoined from using the name. Grow v. Selig- man, 47 Mich. 607-1882; 11 N. W. 404. 10 Vonderbank v. Schmitt, 44 La. Ann. 204-1892; 15 L. R, A. 462; 10 So. 616. Plaintiff owned and ran ■"Hotel Vonderbank " or "Yonder- bank Hotel." Plaintiff later opened ■" Cafe Restaurant Vonderbank " which was a saloon with a few rooms. In 1889 he sold the hotel to one Dormitzer, who assigned to cred- itors, who then conveyed to defend- ant. Held, that the right to use the name of plaintiff must be expressly understood to have passed at the sale or the purchaser may be enjoined from using it. Defendant enjoined. See Browne Trade-Marks (2d ed.), §§ 528-29 on Hotel Names. Huwer v. Dunnenhoffer, 82 N. Y. 499-1880. TDefendants sold real estate where .their business was conducted and certain personal property of the busi- ness. Defendant later set up in an- other place and used same trade name. Held, their trade-mark " Silex " did not pass with place and personal property or must be specifi- cally nominated in sale in order to pass. Rickerby v. Reay, 20 R. P. C. 380-1903 (Ch. Div.). "Reay & Carrick " began to make farm ma- chines at A. in 1875. Carrick died in 1879. The firm then became " Jno. Reay." In 1880 Rickerby. who was in business at Carlisle, sold the machines as agent. Reay died in 1S85. In March, 1886, Rickerby bought the works. In 1898 Isaac Reay, the son of John Reay, began to make farm machinery in the old Reay & Carrick works at A., which Rickerby had just vacated. From the beginning of R. & C.'s business until 1898 a certain machine had been sold by this concern with a de- vice of a crown upon the footplate. The machine was advertised as " The Crown " and this device was con- tinuously used by plaintiff and predecessors up to the date of this action. In 1900 defendant issued cir- cular headed " Crown Combined Transfers of Trade Names, Signs, Marks, Etc. 101 The Missouri Appeal Court has held, iu Skinner v. Oakes, 11 that courts do not go to the length of holding that the name of a man may be segregated from the man himself and from his business in connection with which he has used it, and erected into an ideal and abstract species of property, and be made a subject of traffic and sale in the open market. There is an ex- ception to this in the case of names which are attached to a place of manufacture. Judge Field says, in this connection, that: "It is true, the primary object of a trade-mark is to indicate by its meaning or association, the origin of the article to which it is affixed. As distinct property, separate from the article created by the original producer, or manufacturer, it may not be the subject of sale. But when the trade-mark is affixed to articles manufactured at a particular establishment and acquires a special reputation in connection with the place of manufacture, and that establishment is transferred either by contract or operation of law to others, the right to use the trade-mark may be lawfully transferred with it. Its subse- quent use by the person to whom the establishment is trans- ferred is considered as only indicating that the goods to which it is affixed are manufactured at the same place and are of the same character as those to which the mark was attached by its. original designer." 12 An assignment of trade-marks without any accompanying transfer of the business with which they are connected may be valid, if they are to be used on goods Mowing & Reaping Machine, manu- v. Muller & Co., App. Cas. 217-1901,, factured by Isaac Ray, Aspatria, late that plaintiff had in 1886 bought Reay & Carrick." Others were right to represent himself as carry- headed " Crown Implement Works, ing on the old business, to use the A — " then words " Established crown device, and even if this were 1875 " and device of a crown. A not so, plaintiff's goods had come to writ was issued in the action for in- be known as " Crown " goods. Plain- junction restraining use of the tiff's right did not end with the lease crown. August 16, 1902, defendant of the old shops but plaintiff could issued a very similar advertisement, not prevent the works being called This the court terms " perfectly un- " Crown Works." justifiable from any point of view " u 10 Mo. App. 45-61-18S1. (id. p. 387). Held„citmg Lord Lind- " Kidd v. Johnson, 100 U. S. 617- ley in "Inland Rev. Commissioners 1879, at p. 620; 25 L. ed. 769. 102 Unfair Business Competition. which are made at the same place as before, 13 especially if the marks indicate some connection with that place. Such a trade name attaches generally to the place of manu- facture rather than to the person of the manufacturer. It is transferred, not with the person, but with the business itself. 14 It cannot usually be assigned in gross, apart from the business to which it relates. 15 Where a watch- maker of repute died leaving no business which had the right to use his name and the defendant subse- quently did use it, the court refused to restrain him, hold- ing that the right to the name was not assignable in gross. 16 "Where a name attaches to a place, it may be fraud for a per- son who buys it to use the name in carrying on there the same 13 Witthaus v. Braun, 44 Md. 303- 1875. One Falk, a dealer in tobacco, assigned to complainant, a member of a firm of manufacturers wbo bad been manufacturing for Falk, ac- cording to indications, all his " {Smok- ing Tobacco Brands." Held, that while in general trade-mark rights can be assigned only in connection with the business, this assignment was valid, since the goods to which the brands belonged continued to be manufactured at the same place and by the same concern. u Bury v. Bedford, 4 De G. J. & S. 352-1864. A trade-mark or trade name is generally associated with the place of manufacture rather than with the person of the manu- facturer, and may be transferred with the business to another, unless peculiarly personal in its application. A partnership trade-mark or trade name may be sold with the other partnership assets by the trustees un- der an assignment for the benefit of creditors. 18 Crossman v. Griggs, 1S6 Mass. 275-1904; 71 N. E. 560. 19 Thomeloe v. Hill, 11 R. P. C. 61- 1894 (Ch. Div.). Defendant was, without any right to do so, selling watches marked " John Forrest." Held, however, that plaintiff was not entitled to restrain him from doing so, for the reason that his right to use the name was not established; it was traced by various steps to the actual John Forrest, who died many years before, and the particular de- fect pointed out in plaintiff's title was that the right to use the name was not assignable in gross, without some business or good-will to which it was appurtenant. Fish Bros. Wagon Co. v. Fish Bros. Mfg. Co., 95 Fed. 457-1899 (C. C. A. 8th Cir.) (head-note) : "A right of indi- viduals to use certain trade names and devices in connection with the manu- facture and sale of an article, es- tablished by a judicial decree, is not personal, in such sense that it cannot be sold and assigned to another, in a different locality, in connection with a transfer of the good-will of their business." Transfers of Trade Names, Signs, Marks, Etc. 103 business as that of the former owner. But he may use the name in a different business although the difference be slight, as for instance between gin and Scotch whiskey. 17 A lessee of a theatre will be allowed to use the name as against the lessor even if the theatre is named with the lessor's personal name. 18 This rule goes upon the theory that the value of a trade name or trade-mark rests on its appropriation by one person so that it becomes identified to the trade with the goods or business site or " stand " of that person. Its value "J. & W. Nicholson & Co. v. Buchanan, 19 R. P. C. 321-1900. About 1817 A. & Co. began to carry on tbe " Black Swan Distil- lery." In 1897 successors of A. & Co. assigned to the plaintiffs tbe good-will and trade-mark, and later all the distillery plant was taken from the premises. In April, 1897, defendant, a spirit merchant, bought the property; put up the figure of a black swan, and adveilised that the " Black Swan Distillery " had been rebuilt. His wagons were marked "Black. Swan Distillery." Defend- ant claimed he purchased premises without restriction ; that " Black Swan " was nothing more than the name of the premises. The name " Black Swan " came from the fact that a public house of that name once existed on the spot where the distil- lery stood. It was more often known as "Anderson's Distillery " than as "Black Swan Distillery." Held: "As a general rule the owner of land or buildings of any kind may affix to it any name he pleases. Day v. Brownrigg, L. R. 10 Ch. Div. 291- 1878. But I apprehend the court would interfere if a particular name were affixed with the view of mak- ing a dishonest .reputation which would cause damage to another, as, for example, if it were used for the purpose of representing that a busi^ ness carried on there was the busi- ness of another, or even if, without any dishonest intention, the user were such as actually, or probably, to mis- lead " (id. p. 325). Defendant had a reputation as a dealer in Scotch whiskey. The Black Swan gained a name as a distillery of gin — not whiskey. Defendant does not deal in gin. No evidence was shown of anyone being misled. Action dis> missed. "Booth v. Jarrett, 52 How. 169- 1876 (N. Y. C. P. Sp. T.). Plain- tiff had built and for about four years managed a theatre which be- came well known as " Booth's Theatre." Defendants afterward came into control of the theatre un- der lease in which it was described as " Booth's Theatre," and designated it in the advertisement of their per- formances by the same name, repre- senting themselves as lessees and managers. Plaintiff sought to re- strain them from the use of this name, claiming that the public would be misled into believing that he still acted in and managed the theatre. Held, that defendants were entitled to continue the use of the name. 104 Unfair Business Competition. depends on two things: (1) It is the peculiar sign of that place or person. (2) It becomes a guarantee of the public against deception. If, therefore, it be separated from the merchandise upon which it is used, or the locality with which it has become associated, it loses these characteristics, and so becomes not only valueless, but is a cause of deceit and fraud, instead of a bulwark against deception. Cases involving rights to names of hotels, when a change of ownership or of lease occurs, will be found in the chapter on Business Names (§ 89). " A trade-mark cannot be assigned, or its use licensed, except as incidental to a transfer of the business or property in con- nection with which it has been used. An assignment or license without such a transfer is totally inconsistent with the theory upon which the value of a trade-mark depends and its appro- priation by an individual is permitted. The essential value of a trade-mark is that it identifies to the trade the merchan- dise upon which it appears as of a certain origin, or as the property of a certain person. When its use has been extensive enough to accomplish that purpose, and not till then, it becomes property, and when it so becomes property it is valuable for two purposes: (1) As an attractive sign manual of the owner, facilitating his business by its use; (2) as a guaranty against deception of the public. By familiarity with the trade-mark attached to the owner's merchandise, purchasers are enabled to buy what they desire, and are thereby protected against impo- sition and fraud. Disassociated from merchandise to which it properly appertains, it lacks the essential characteristics which alone give it value, and becomes a false and deceitful designation. It is not by itself such property as may be trans- ferred." 19 18 MacMahan Pharmacol Co. v. hand to hand by assignment separate Denver Chemical Mfg. Co., 113 Fed. from the business of the owner of 468-74; 51 C. C. A. 302-1901 (citing the trade-mark or of the article authorities). Falk v. American West which it may serve to distinguish. Indies Trading Co., 180 N. Y. 445- Generally, it passes only with the 1906 ; 73 N. E. 1123 ; 1 L. R. A. business and good-will of which it is N. S. 704n. A trade-mark is not an inseparable part." a piece of property that passes from Transfers of Trade Names, Signs, Marks, Etc. 105 § 55. Good Faith as to Names and Marks Required of Vendors Thereof. — Where one sells a business and the buyer later removes it to another place, good faith requires that the vendor, should he chance to occupy the old stand, use great care not to do anything which will cause the public to con- fuse his new business with that which he has sold or which will deprive his vendee of any of the benefits of his purchase to which he is rightfully entitled. The same is true where the vendors later occupy stands near their former one, now occu- pied by their vendee. 20 See § 52. § 56. Transfer of Portraits. — Trade-marks and names often are combined with the portrait of some person as well as his name. This fact does not prevent the assignment or trans- fer of the name and portrait. 21 The death of the person whose name or mark is used by a firm does not prevent a transfer to the surviving partners with the right to use the portrait and name, provided the name was a part of the partnership or corporate property and assets ; but unless the right to use the name was distinctively a part of the assets, the surviving part- ners have no such right whatever, and no power to transfer the right to use the same. 22 30 Angler v. Webber, 96 Mass. (14 Allen) 211-1867; 92 Am. Dec. 748. Two of three members of a firm of wagoners sold to the third their in- terest and good-will in the business, with the property used in it, and agreed to do nothing to " impair or injure " such interest and good-will. The retiring partners then purchased stands close to the stand of the pur- chasing partner, engaged in busi- ness on the same route as he, and carried goods for many former cus- tomers of the firm, but did not di- rectly solicit customers. Held to be a violation of the agreement. Hall's Appeal, 60 Pa. St. 458-1869; 100 Am. Dec. 584. Defendant, having sold to plaintiff for a valuable con- sideration, the good-will of an under- taking business, removed to a place nearby on the same street and ad- vertised that he had removed from the old to the new place of business and that he would there continue his former business. Held, that he should be enjoined from thus holding himself out to the public as con- tinuing the business. 21 Richmond Nervine Co. v. Rich- mond, 159 U. S. 293-1895; 40 L. ed. 155; 16 Sup. Ct. 30. 22 Eidd v. Johnson, 100 U. S. 617- 1879; 25 L. ed. 769. S. N. Pike, a distiller, branded his goods " S. N. Pike's Magnolia Whiskey, Cincin- nati, Ohio," and formed a firm to continue the business, one member of which was the defendant, Kidd. In 1868 the firm removed its business to 106 Unfair Business Competition. Where a manufacturer sells goods to a customer who, in turn, sells them under another name, with the consent of the makers; and the second concern sells its business and good- will, and with them transfers also the name used by it in selling the goods, the purchasers will not be allowed to sell goods of another maker under this same name. Were such a use of a name allowed, the original makers would lose trade which had been secured by them in part through the merit of their goods. 23 New York, and the distillery as well as the use of all the brands there used, were transferred by Pike to a firm of which complainants were the successors. Held, that complainants had thus acquired the exclusive right to the use of the words above men- tioned as a trade-mark and were en- titled to enjoin its use by partners acting under a license from Kidd, claiming as survivor of the Pike Firm. 23 Shaver v. Heller & Merz Co., 108 Fed. 821-24^-1901 ; 65 L. R. A. 878 (C. C. A. 8th Cir.). Heller made "American Ball Blue." No one else had used that name. Olmsted & Co. bought of Heller bluing which he sold as "American Wash Blue." Shaver bought out Olmsted and be- gan to sell bluing not made by Heller under the names of "American Ball Blue " and "American Wash Blue," and seriously injured the business of Heller. They contended that as they bought Olmsted's good-will they had a right to sell any bluing they wished under the name of "American Wash Blue," because Olmsted sold bluing made by Heller and not by himself under that name. The court held: "That court (C. C. Iowa, 102 Fed. 882-1900) came to the conclusion that the appellants had no better right to use the name "American Wash Blue " to palm off the goods of other manufacturers as those made by the appellee (Heller) than G. M. Olmsted & Co. had, and that the latter firm stood in such a fiduci- ary relation to the appellee (Heller) that they could not be permitted to take such action. It held that the good-will of the business established under the name ' American Wash Blue ' was the property of the ap- pellee (Heller) and not of Shaver who had bought the good-will of Olmsted, who had sold Heller's Wash Blue. These conclusions are, in our opinion, well founded in fact and in law. The excellence of the article and the introduction which the appellee (Heller) gave it or induced Olmsted & Co. to give it, established the trade in it, and gave that trade its value. Purchasers in the trade and the public came to know, to de- mand, and to buy the appellee's manufacture by this brand. The in- evitable result is that the good-will of this trade became the appellee's property, which neither Olmsted & Co. nor their successors could law- fully lead away from it by fraud or falsehood. One does not lose the good-will of his trade in an article * * * by the fact that the con- sumers know only the name and the excellence of the article, and neither know nor care who makes it." Tkansfeks of Tkade Names, Signs, Marks, Etc. 107 § 57. Transfers in Bankruptcy and in Assignments for Creditors. — The fact that the sale is an involuntary one on the former owner's part, as through bankruptcy, or a receiver- ship, will not change the rule ; and he may in such a sale lose the right to use his own personal or family surname, in so far as necessary to give the purchaser the benefit of what he has bought. Purchasers of good-will and trade names in a bank- ruptcy sale or in a sale by assignees will be protected against injurious use of the name by the bankrupt after his discharge. It may be that the name of the business which has been sold in the bankruptcy is composed in part of his own family name or some name long used by him. Despite this, the buyer from the bankrupts is entitled to be put in control of his purchase and a court will enjoin the bankrupt from resuming the use of the name. This does not mean he may not use his own name or his firm name at all. It does mean he may not use it except in a way to distinguish it clearly from the name used by the purchasers. 24 An assignee for benefit of creditors may not, u Armington & Sims v. Palmer, 21 R. I. 109-1S9S; 42 All. 308; 43 L. R. A. 95. Complainants were part- ners making engines under the name "Anning-ton & Sims." They sold out at auction to Scott who, with other respondents, formed the corporation — Armington and Sims Company. Sims protested in writing against use of the name at the first directors' meeting. Armington was not pres- ent. Respondents claimed Arming- ton & Sims were not in business after corporation was formed, hence could not suffer injury. Held no defense, as the company might resume at any time. Hudson v. Osborne, 39 L. J. N. S. Ch. 79-1809. The "good- will " in a title to a manufactory of certain provisions had been sold by assignees in bankruptcy to the plain- tiffs, who continued to carry on un- der the title of " Osborne House " a business such as that which the de- fendant Osborne, the bankrupt, had formerly conducted under the same name. Osborne, having been dis- charged in the bankrupt proceedings, commenced anew, and used upon his new place of business the words " Osborne House," where he carried on the same kind of manufacturing as before. He put up signs on his buildings and issued circulars calcu- lated to lead the public to believe that he was conducting the old busi- ness. The court said that he had no right to use the words " Osborne House " as holding out, in any man- ner, that he was carrying on business in continuation of or in succession to the business originally conducted by Osborne, the defendant. He might have said that he had been twenty-two years at the " Osborne House," or that one of his partners had been for many years managing there, but he must not appropriate 108 Unfair Business Competition. in disposing of assets, do anything which will prevent the assignor from reaping all benefit which he lawfully may, from his name and reputation. Selling labels bearing the assignor's name has been held to be an unauthorized act on the part of such an assignee. 26 to himself the very words which he selected to designate the business. Wilmer v. Thomas, 74 Md. 485- 1891; 22 Atl. 403; 13 L. R. A. 380. Under an assignment for the benefit of creditors by an insolvent manufac- turing company, and upon a sale by the assignee, after advertising that the mills were to be sold as a go- ing concern, the trade-mark and trade name (in this case the " Druid Mills " ) were held to pass to the purchaser. Peck Bros. & Co. v. Peck Bros. Co., 113 Fed. 291-1902; 51 C. C. A. 251. A trade name passes by sale by the receiver of an insolvent corporation which had oper- ated under that name and buyers could prevent others using it. Kidd v. Johnson, 100 U. S. 617-1879; 25 L. ed. 769; Brown Chemical Co. V. Meyer, 139 U. S. 540-1890; 35 L. ed. 247; 11 Sup. Ct. 65; Richmond Nervine Co. v. Richmond, 159 U. S. 293-1895; 40 L. ed. 155; 16 Sup. Ct. 30; Sarrazin v. Irby Cigar & Tobacco Co., Ltd., 35 C. C. A. 496 ; 93 Fed. 624-1899; 46 L. R. A. 541n; LePage Co. V. Russian Cement Co., 2 C. C. A. 555; 51 Fed. 941-1892; 17 L. R. A. 354; Bank of Tomah v. Warren, 94 Wis. 151-1896; 68 N. W. 549; A. D. Warren v. Warren Thread Co., 134 Mass. 247-1883 ; see Hazelton Boiler Co. v. Hazelton Tri- pod Boiler Co., 142 111. 494-1892; 30 N. E. 339; Frazer v. Frazer Lubri- cator Co., 121 111. 147-1886; 13 N. E. 639; Celluloid Mfg. Co. v. Cel- lonite Mfg. Co., 32 Fed. 94-1887; R. W. Rogers Co. v. Wm. Rogers Mfg. Co., 17 C. C. A. 576; 70 Fed. 1017-1895; Investor Pub. Co. v. Dob- inson, 72 Fed. 603-1896; C. S. Rig- gins v. Higgins Soap Co., 144 N. Y. 462-1895; 18 N. E. 714; Holmes, Booth & Haydens v. Holmes, Booth & Atwood Mfg. Co., 37 Conn. 278- 1870. Chesterman v. Seeley, 18 Pa. Co. Ct, 631-1896; 5 Pa. Dist. 757 (head-note): "In the absence of proof to the contrary, it is presumed that a purchaser of all property of a firm, including good-will, at a receiv- er's sale, acquires as to the name of the firm a right to use the firm name in such manner as to indicate that the purchaser is the successor to the dissolved firm. Such a use of the firm name, although it includes or consists in the name of an individual, is the purchaser's exclusive right, and neither the individual whose name is so used, nor anyone else, can be al- lowed to interfere with it." 28 Matter of Adams, 24 Misc. (N. Y.) 293-1898; 53 N. Y. Supp. 666. The assignee for the benefit of cred- itors of Robert Adams, a manufac- turer, who had been doing business under the name " R. & H. Adams," first sold to one Robert F. Adams, certain goods manufactured by the assignor, and a large number of labels bearing the name above men- tioned. Held, that the assignee should not be authorized to sell the right to use " R. & H. Adams " as Transfers of Trade Names, Signs, Marks, Etc. 109 § 58. Rights of Retiring Stockholders and Others in Corporate Names. — It lias been held that one who has origi- nated a trade-mark or trade name and has joined a company formed to push the brand of goods to which the name is ap- plied, and has allowed it to use the mark, will not be heard later to question the title of the company to the name. This because the name has become a part of the company's prop- erty. 26 Greacen v. Bell 2T is authority for the statement that where a trade-mark or trade name is owned by one who enters into partnership with another for the manufacture of the article to which it applies, the title to the trade-mark does not pass to the partnership except by express agreement; espe- cially where, from the circumstances of the case, it may be inferred that it was not the actual intention of the parties that the trade-mark should be partnership property. Not only is a retiring partner who sells his interest in the business thereafter limited in his use of his own name, if that be a part of the name of the firm, but a stockholder whose name is a part of the name of the corporation may not, by the mere act of selling his stock, at once regain full possession and use of his name which now is also the name of the corporation. His rights to the name are limited, and he may use it only in so far as his use will not interfere with the business of the corporation. This is held, on the ground that he is presumed to have sold his stock in good faith. He must, therefore, re- spect the right and interest of the corporation in its name and good-will. 27a See § 105. a trade name or trade-mark, as this use by a company formed to carry would tend to confusion, and conflict on the business and in which he was not only with the' rights of the pur- largely interested, no objection can chaser of the labels, but also with be made to its title, to the mark or the right of the assignor, upon re- name, because of the lack of a formal suming business, to use his own name transfer thereof to the company, and avail himself of his personal * 115 Fed. 553-1902 (C. C. N. J.), reputation. 27a See also discussion in chapter on 26 Filkins v. Blackman, 13 Blatchf . " Family Names," § 77. McFell (Conn.) 440-1876; Solis Cigar Co. Electric & Telephone Co. v. McFell v. Pazo, 16 Colo. 288-1891; 26 Pac. Electric Co., 110 111. App. 182-85- 556. The inventor of a trade-mark 1903. McFell was an incorporator or trade name having permitted its of the McFell Electric Company in 110 Unfair Business Competition. § 59. Soliciting Old Customers. — In retiring from a firm or corporation the one so retiring does not agree that the busi- ness will continue, even when he agrees not to enter that line of business for a certain period. It may continue, it may go elsewhere. Certainly if he leaves without making an agree- ment about again entering business, there is no reason why it should not follow him, provided (and here is where the law of unfair competition steps in) he does nothing to induce these customers to think that his new business or the goods made by his new concern is the old business, or are the goods made by the old business. In leaving the old house he sells that part of his interest in it which legitimately attaches to the name and the location or stand of that business, as contrasted with those interests which attach to him personally. These he resigns to the old house only by special agreement. He sells only such of the trade as the house can keep its grip on re- gardless of his leaving, provided he does thereafter nothing to fraudulently deprive them of this business. It is urged that if a retiring partner solicits the customers of the house he has left, he is impairing the value of the thing he has sold. That it may be impaired is quite true, but if the law allows him to enter business only in such a way as to divert no business from the older concern, now necessarily his competitor, there is no real competition. Where a partnership dissolution agreement provides that no further business shall be done under the name of the firm, each partner is considered to have reserved the full right to use his own name. 28 If one of the partners buys the 1890. In April, 1900, he sold his in- ness to McWade for a valuable con- terest. May, 1901, he formed the sideration, as he did, he could not McFell Electric and Telephone Com- afterward resume the use even of his pany and began to compete with the own name in carrying on the same old company, with an office in the business during the lifetime of the same building. December, 1900, corporation in such a way as to mis- charter of the old company had ex- lead the public." Citing Frazer v. pired. McFell was one of the signers Frazer Lubricator Co., 121 111. 147- of a petition for a license for a new 1886 ; 13 N. E. 639. company under same name, which 2S Cottrell v. Babcock Printing was granted May, 1901. Held, " that Press Mfg. Co., 54 Conn. 122 ; 6 Atl. when he sold out his stock in the 791-1886. company and his interest in its busi- Transfers of Trade Names, Signs, Marks, Etc. Ill good-will and old stand, and continues the business, he has the right merely to conduct a business at that particular place, with the probability in his favor that customers of the old com- pany will continue to go there. Some jurisdictions allow to an ex-partner all rights of ad- vertising and soliciting of trade except to seek personally the trade of the customers of the former concern. Other courts have said that to refuse personal access to former customers is in a sense restraint of trade, and all such restraint must arise out of personal agreement, and from construction of law. 29 The rule to be gotten from the authorities seems to be that old customers may be solicited personally and in any other legitimate way by a retiring partner, who is not bound by special agreement not to compete with those running the old concern, but in doing so he may not use any method which will create confusion in the mind of the public as to which is Ms own new business and which is the old business. If either partner desires more he must see to it that it is provided for in a special agreement. 30 29 These cases deal with the ques- tion : Cook v. Collingridge, Jacob 607- 1825; Crutwell v. Lye, 17 Ves. 335- 1810 ; Johnson v. Helleley, 2 De G. J. & S. 446-1864; Churton v. Doug- las, 28 L. J. N. S. (Ch.) 841-1859; Ginesi v. Cooper <& Co., 14 Ch. Div. 596-1880; Leggott v. Barrett, 15 Ch. Div. 306-1880, see appeal; Walker v. Mottram, 19 Ch. Div. 355-1881; Labouchere v. Dawson, L. R. 13 Eq. Cas. 322-1872; Pearson v. Pearson, L. R. 27 Ch. Div. 145-1884; Hall's Appeal, 60 Pa. St. 458-1869 ; Angier v. Webber, 14 Allen (Mass.) 211- 1867; Bergamini v. Bastian, 35 La. Ann. 60-1883; Hanna v. Andrews, 50 Iowa 462-1879. 80 Cottrell v. Babeock Printing- Press Mfg. Co., 54 Conn. 122; 6 Atl. 791-1886 (head-note) : "A partner who, upon dissolution of partnership, purchases the good-will secures merely the right to conduct the old business at the old stand, and in the absence in the contract of dis- solution or stipulations to the con- trary, the retiring partner may law- fully establish a similar business, even in the neighborhood, and by ad- vertisement, circular, card, and per- sonal solicitation, invite the public generally, including the customers of the old firm, to come there and pur- chase of him." But he must not so advertise and solicit as to lead to the belief that he is the successor to the old firm, or that the purchaser of the good-will is not carrying on the busi- ness formerly conducted by the old firm. Hoxie v. Chaney, 143 Mass. 592-1887; 10 N. E. 713. Hoxie sold his trade-mark, good-will, etc., in "A. N. Hoxie's Mineral Soap," and then began to manufacture soap and put up his soap in similar wrap- 112 Unfair Business Competition. The extremes to which courts have gone in discussing the rule are very well illustrated by Genesi v. Cooper & Co., 32 where James, L. J., writes as follows: " The command ' Thou shalt not steal! ' is as much a portion of the law of courts of equity as it is of courts of law. The proposition, as I under- stand it, which has been gravely argued before me is this, that a trader who has sold for value his business and good-will to another man is entitled, notwithstanding, to solicit his old cus- tomers to deal with him just as if no sale had ever taken place. In my opinion, the defendants having sold the business, the at- tempt to take it away from the plaintiff in the way I have mentioned, is neither a lawful nor an honest attempt; and I consider that I should not be performing my duty in an ade- quate and proper manner if I hesitated for a moment to state that that was my opinion " (id. p. 598). " The present in- junction asked from me is only to restrain the defendants from soliciting the old customers and from taking away the plain- tiff's business, which, of course, must be right anyhow; but if I had been asked, I certainly should have prevented their dealing with the old customers. Can it be tolerated that men who have sold their business, including the benefit of their connection — here they have sold their trade, business, and ' good-will ; ' — I will come in a moment to what ' good-will ' means — can, immediately after, take away the benefit of that connection so sold. I gave an illustration during the course of the argument, which I will repeat. Suppose a solicitor sells his business, say at five years' purchase, which is by no means uncommon, could he, having offices on the first floor, imme- pers bearing the trade-mark he had trade-marks and good-will. The re- sold. Held, he had the right in ab- tiring partner here was enjoined sence of express stipulation in the from "virtual representation of him- sale, to again enter the same business, self as the successor to the business but he had no right to represent him- of the old firm," and was directed self as successor of the former busi- " not to interfere or compete with ness or as owner of the trade-marks, the business " of the old firm " by and an injunction was granted, re- representing himself, either directly straining him from interfering with or by implication, as the successor of vendee's business by representing the late firm or as doing the same himself as successor of the late firm, business that was done by them." Assets of a partnership include 32 14 Ch. Div. 596-98-99-1880. Transfers of Trade Names, Signs, Marks, Etc. 113 diately afterward go on to the ground floor, paint up his name and receive his clients as usual because they choose to come to him, even if he did not actually ask them to come and transact their business with him 1 ? The answer would be that he was stealing that which he had sold, and any conduct more outrageous or more opposed to morality or law could not well be imagined " 33 (at p. 599). Few cases have gone to the extent here advocated, viz., to forbid not only soliciting but even dealing with former cus- tomers. This would surely seem restraint of trade. On the other hand Labouchere v. Dawson?* holds that one who sells the good-will of a business is not precluded from engaging in a competing business, or from advertising his business, but he cannot directly solicit trade from the customers of the old business ; and in Pearson v. Pearson? 5 James Pearson, the de- fendant, had assigned all his interest in various property de- rived under his father's will, including the business of an earthenware manufacturer, carried on by his father under the name James Pearson, to plaintiff, with an express provision, however, that defendant should be at liberty to carry on a similar business under his own name, while plaintiff was to discontinue using the name James Pearson. Plaintiff sought to enjoin the defendant from soliciting the old customers of the business in which defendant had assigned his interest. " Ginesi v. Cooper & Co., 14 Ch. stone merchants, as " Samuel Cooper Div. 596-1880. Prior to 1887, de- & Company," and solicited business fendants carried on business as stone from the customers of the old firm, merchants under the style of They distributed business cards and " Cooper & Hampson." They are sent their former manager around now called " Samuel Cooper & Com- for orders. This is a motion for an pany." The plaintiff is a stone injunction restraining the defendants merchant of Leeds, who, in 1877, from soliciting orders from their purchased the business of Cooper & former customers. Hampson. The good-will was in- "* L. R. 13 Eq. 322-1872. La- eluded. The day the business bouchere v. Dawson was overruled by changed hands, Cooper & Hampson Pearson v. Pearson, L. R. 27 Ch. Div. sent circulars to their customers an- 145-1884, which in turn was over- nouncing that they had retired from ruled by Trego v. Hunt, (1896) App. business, and that they had trans- Cas. 7, which case followed Labouch- ferred it to the plaintiff. In 1879, ere v. Dawson. defendants recommenced business as ffi L. R. 27 Ch. Div. 115-1884. 114 Unfair Business Competition. Held, that defendant had this right and would have it even in the absence of the express provision above mentioned. The Illinois court states, that the rule as to soliciting old customers is unsettled. It cites Trego v. Hunt? 5 * as authority for the English rule that a vendor of good-will may not can- vass customers and solicit them not to deal with his vendee, and urge them to deal with him, and adopts this rule, citing various authorities. 3511 " We do not think that the de- fendant ought to be allowed, after selling and warranting a good-will to the complainants, to purposely endeavor to pre- vent their receiving the benefit of it, or to attempt to disturb them in its enjoyment. The locality chosen by her was not near enough (600 feet) to have that effect. But to canvass old customers of the firm and endeavor to dissuade them from continuing to deal with complainants was a direct interference with the property sold, with the purpose of destroying it and preventing complainants having the benefit and advantage of it. The attempt to appropriate the telephone number * * * was of the same character. 350 § 60. Sale of Name or Business by Originator of an Article. — One who has originated an article, on selling out the good- will of his business, may still advertise that he originated the article and continue to sell it, in the absence of a stipulation to the contrary. He may also state honestly where he form- erly lived, the experience he has had, the skill he possesses. 39 •6a 35b (1896) App. Cas. 7. but they have no right to represent Meyers v. Kalamazoo Buggy Co., their present business as the same 54 Mich. 215; 20 N. W. 545; 52 Am. which they formerly conducted at Rep. 811 ; Coal Co. v. Spongier, 54 Racine. The circular addressed ' to N. J. Eq. 354, 34 Atl. 932. our old customers and the implement " c Renft v. Reimer, 200 111. 386- trade,' issued by Fish Brothers and 1902 ; 65 N. E. 720. Company, and mentioned in the com- ** Fish Bros. Wagon Co. v. Fish, plaint and the foregoing statement, is, 82 Wis. 546-67-1892; 16 L. R. A. to a limited extent, objectionable on 453 ; 52 N. W. 595. " The defend- this ground ; as for instance, where it ants have the lawful right to honestly speaks of their ' change of location ' and truthfully state where they form- and ' firm name,' ' Fish Brothers,' erly resided, the experience they have ' formerly of Racine, Wisconsin,' and respectively had, and the skill they for the ' first time since 1883 we shall respectively possess in the manufac- be able to furnish our patrons with ture of wagons and other vehicles; the genuine Fish Brothers and Com- Transfers of Trade Names, Signs, Marks, Etc. 115 § 61. Effect of Locality on Transfers of a Business.— It is fraud for a partner who sells to an associate his share of the good-will of a partnership to send notices of his opening a new office in the same locality as the old office, even after a lapse of several years after the sale. 37 It is not unfair for the vendor of a newspaper to set up a new plant and publish another newspaper in the same locality served by his former paper. 38 pany wagon, fully up to our old standard of that date.' But the de- fendant may truthfully and in good faith publish the good qualities and material of the wagons and vehicles manufactured by them, and their su- perior facilities for the manufacture of the same at South Superior. In other words, their advertisements and marks must truthfully and in good faith refer to their own manufac- tures, trade, and business, and not to those of the plaintiff." White v. Trowbridge, 216 Pa. St. 11-1906; 64 Atl. 862. Defendant made choco- late chips, and claimed to be the originator of that particular kind of confectionery, to which he applied the name " Trowbridge's Chocolate Chips." He admitted the plaintiffs to a partnership which, after two years, was dissolved, the defendant selling and assigning to plaintiffs all his rights in, or connected with, the business including the good-will. De- fendant within a few months began in the same city the manufacture of the same sort of confectionery, marking the packages " Chocolate Chips," and placing thereon his name, W. S. Trowbridge. He solicited trade gen- erally and described himself as the " originator of the Chocolate Chips." His goods and packages as to mark- ings, labels, and dress were sufficiently differentiated from plaintiffs'. Held, that defendant was within his rights; that if the intention of the parties had been that the defendant should not engage in a competing business, that should have been expressly stipulated. "Foss v. Roby, 195 Mass. 292; 81 N. E. 199-1907. Defend- ant and plaintiff had formerly practiced dentistry as partners in Boston, many of their patients com- ing from places outside Boston. The partnership was dissolved and de- fendant conveyed to Foss his interest in the business. After three years he began to practice again in Boston,, sent circulars to patients of the old firm soliciting their patronage, refer- ring to his connection with the old firm, and thus attracted many of these former patients. Held, that this was inconsistent with the cove- nant that would be implied from the transfer of his interest in the good- will that he would not practice in the same locality under such conditions as to impair the value of the good- will transferred by him. Defendant enjoined from practicing in Boston; damages of plaintiff to be assessed. 38 Eapp v. Over, 3 Brewst. (Pa.) 133-1869. Defendant, owning a. newspaper called " The Bedford In- quirer," sold it, with all the stock and " good-will " to M., and after- ward began to publish another news- 116 Unfair Business Competition. § 62. Partners' Rights in the Partnership Name, on Dis- solution. — There is no intimation in the cases that a man is not free to use his name after leaving a partnership, in the absence of express stipulation to the contrary; but if he does use it in competition with the old concern, he must not in any way hold himself out as the real owner of the old business. That is the only limitation on his right to his own name, unless there be specific contract provisions as to it in the dissolution articles. 38 If, upon the dissolution of a firm, the partners divided among themselves the tangible assets, nothing being done or said re- garding the use of the firm name, the name is an undivided asset of the partnership, which, upon dissolution, belongs to both partners in common, so that one may not enjoin the use of it by the other. If, however, the whole business and good- will is sold upon the dissolution, the trade name would also pass to the purchaser. 40 A sale by one partner of his entire interest in a dentistry partnership has been held to warrant a court in holding that there was an implied contract that the vendor would not again practice in the locality under such conditions as would impair the value of the good-will sold by him. To begin practice in the same town and send notices to former patients has been held to be an impairment of the value of the good-will. 41 A paper in the same place under the defendant " has the right to use the name of the " Bedford Patriot." name of the assignor for the purpose Held, that the defendant, in the ab- of showing that the business is the sence of any express agreement to business formerly carried on by the the contrary, was at liberty to pub- assignor; and he has the full right to lish such a competing newspaper. use it, subject to this: that he must " Thynne v. Shove, 45 Ch. Div. not exercise that right so as to ex- 577-80-1890. Thynne sold to Shove pose the assignor to any liability by " all the beneficial interest and good- holding him out to be the real owner will of the said Arthur Thynne in of the business. That is the only the said trade or business of a baker limit of the defendant's right to use and pastry cook, so carried on by the plaintiff's name." him as aforesaid." Plaintiff alleged "Banks v. Gibson, 34 Beav. 5G6- that defendant issued cards in plain- 1865. tiff's name intimating to the public "Foss v. Roby, 195 Mass. 292, 81 that plamtiff was still carrying on the N. E. 199-1907; see note 36 supra, business. Held, by Sterling, J., that for statement of this case. Transfers of Trade Names, Signs, Marks, Etc. 117 former partner will not be allowed to make a colorable use of the name of a person who was once associated with him in business, even by nominally going into a new partnership with someone of the same name. The new association must be a bona fide one, or the court will regard it as an unfair attempt to obtain the custom of the former concern. 42 A partner who has retired from a firm which bore his name, or a member of a corporation which bears his name who sells his interest in the corporation totally or nearly so, may not prevent the remaining partners or the corporation from stat- ing that it is continuing the old business or is its successor. 41 * Eildreth v. McCaul, 70 App. Div. (N. Y.) 162-1902 (1st Dept.) ; 74 N. Y. Supp. 1072. Hildretb & Se- gelken had for many years been dealers in honey, beeswax, etc., at 120 and 122 West Broadway. In May, 1901, they moved to another lo- cation, whereupon defendant, who had many years before been for a while a member of the firm, moved into the old place and opened busi- ness under the name " Hildreth-Mc- Caul Company " with " Joseph M. McCaul, Prop." in small letters below. He claimed to have formed a part- nership with one Hildretb, a former member of plaintiff's firm, but there was evidence tending strongly to show that there was no bona fide partner- ship. It also appeared that custom- ers had been deceived by circulars issued by defendant into supposing him to be plaintiff's successor. Held, that the defendant was not entitled to use the name Hildreth as he had been doing, and that he should be en- joined from using it at all until the further order of the court. "Smith v. David H. Brand & Co., 67 N. J. Eq. 529-1904; 58 Atl. 1029. • Complainant, William Smith, had for many years been in -partnership with David H. Brand under the firm name " Brand & Smith." In 1904 the part- nership was dissolved and the defend- ant corporation, " David H. Brand & Co.," was organized by the two part- ners and one John H. Brand. The two partners conveyed to this cor- poration the assets and " good-will " of the firm. Complainant very soon sold his interest in the corporation to the corporation, retaining only one share, and, within a few months, formed with his brother, a partner- ship under the name " William Smith & Brother," to carry on the same business as the defendant. He then sought to enjoin defendant from advertising its business under the name of " Brand & Smith " or as " Successors of Brand & Smith," claiming that this tended to deceive the public. Held, that the defendant had not exceeded its rights. Merry v. Hoopes, 111 N. Y. 415-1888; IS N. E. 714 (head-note): "Where upon the dissolution of a firm, one of the copartners purchases and suc- ceeds to the business, the exclusive right to use trade-marks belonging to the firm passes to the purchaser, al- though no express mention is made of them in the deed of assignment.'* 118 Unfair Business Competition. Where Kottler did business as " H. Kottler & Co." and then took in Lepow and continued to use the same name for the new partnership, it was held that after three or four years 3iad passed and the firm was dissolved, Lepow could not in the absence of special provision prevent Kottler from still using the name H. Kottler & Co.; although it was intimated that Lepow would be enjoined from using the sign " L. Lepow, formerly (in small letters) H. Kottler & Co." See ■§§ 216, 222. It would seem that both these rulings might result in con- fusion and the better decision in cases of this sort would be to limit both parties to such use of the firm name as could not cause confusion as to which partner was carrying on the old business. 4351 Vice-Chancellor Plumer said that " a person not a lawyer would not imagine that when the good-will and trade of a Tetail shop were sold, the vendor might, the next day, set up a .-shop within a few doors and draw off all the customers. The good-will of such a shop, in good faith and honest understand- ing, must mean all the benefit of the trade and not merely a benefit of which the vendor might the next day, deprive the vendee. " 43b As to rights to partnership papers, see § 223. ^Lepow v. Kottler, 115 App. Div. (N. Y.) 231-1906; 100 N. Y. Supp. 779. Defendant Kottler, who had previously been doing business un- der the name of H. Kottler & Co., formed a partnership with plaintiff under the firm name of H. Kottler ■& Co. It was agreed that, upon ■dissolution, the party bidding highest should acquire the share of the other, a, reference to the good-will being stricken out of the draft. Three or four years after, the firm was dis- solved; one of the two adjoining stores was taken by each partner, but no provision was made as to the use of the firm name. Plaintiff then sought to restrain the defendant from using the old firm name, " H. Kot- tler & Co." Held, that the defendant was entitled to use the name. It is intimated, also, that plaintiff was not entitled to use the sign " N. Lepow, formerly H. Kottler & Co.," the word " f ormerly " being in small letters. Stein v. National Life Assn., 105 Ga. 821-1898; 32 S. E. 615; 46 L. R. A. 150. Moore v. Eawson, 185 Mass. 264-1904. Where a manufac- turer of shoes, doing business under the name " D. G. Rawson & Co." en- tered into a partnership agreement with others under which the same business was to be carried on by the new firm at the same place and under the same name, the trade name passed to the firm without being specified. 43b Harrison v. Gardner, 2 Mad. 198-219-1817. This is the doctrine of Trego v. Hunt, 12 T. L. R, SO- 1S95. See note 34, § 59, infra. Transfers of Trade Names, Signs, Marks, Etc. 119 § 63. Dissolution by Death of a Partner. — The former rule was that, on the death of a partner, the right to use a firm name and the title to it pass to the surviving partners. 44 This rule was doubted in Crawshay v. Colli?is, 45 and is not now regarded as law. The name is now held an asset of the com- pany in which the estate of a deceased partner may partici- pate. 40 In a purchase by a surviving partner of the rights of his deceased partner from the estate of that partner, the family and descendants of the deceased may lose the right to use the family name in any way detrimental to the rights of the surviving partner under the terms of the sale. 47 Where, on the death of a partner, all assets are sold at auc- tion, a purchaser of the good-will obtains an unrestricted right to use the firm name, because such name is inseparable from the good-will. 48 In the case of a purchase of the partner- 44 Lewis v. Langdon, 7 Simons 421- 1835. 40 15 Ves. 218-1808. 48 Wedderburn v. Wedderbum, 22 Beav. 84-1855; Smith v. Everett, 27 Beav. 446-1859; Hall v. Barrows, 4 De G. J. & S. 150-1863; Dougherty v. Van Nostrand, 1 Hoff. Ch. (N. Y.) 68-1839; Williams v. Wilson, 4 Sandf. Ch. (N. Y.) 379-1846; Howe v. Searing, 6 Bosw. (N. Y.) 354- 1860; Holden, Admr. v. M'Makin, 1 Pars. Sel. Cas. (Pa.) 270-1847. "Hall v. Barrows, 4 De G. J. & S. 150-1863. Partnership assets in- clude the good-will and the right to use the trade-mark, and, on the pur- chase of all the partnership assets by a surviving partner, from the es- tate of a deceased partner at a valu- ation, the value of the good-will and trade-mark should be included. 48 Slater v. Slater, 175 N. Y. 143- 1903; 67 N. E. 224; 61 L. R. A. 796. Hallett v. Cumston, 110 Mass. 29- 1872. Hallett and Cumston were partners up to 1865, when Hallett sold out to Cumston, giving him right " to use the name of said Hal- lett jointly with his own name, in conducting his said business, but that such use of his name should give the plaintiff no rights or in- terest whatever therein, other than those named" (id. p. 30). Hallett was to continue three years as a salesman and to take one-third of the net profit. In 1870 Cumston died; defendant, the son of Cum- ston, was then notified, as executor of Cumston's will, that plaintiff ter- minated his agreement with Cumston and forbade the use of his (plain- tiff's) name. Next day Cumston's son wrote Hallett that he had com- pleted arrangements with another man called Hallett to join him in con- tinuing his father's business. Held, by agreement with Cumston, senior, Hallett conveyed all interest in the 120 Unfair Business Competition. ship business by one partner, it is held that the ex- clusive right to the use of the firm name passes to the pur- chaser, although no express mention is made of such name in the agreement of dissolution. The purchaser acquires the. good-will of the firm, and this includes, as against the retiring partners, the exclusive right to use the name under which the firm did business. 48 Where the member of the firm dies and his will and the partnership agreement contemplate the continuation of the business under the former name, the firm name cannot be considered as an asset of the estate, subject to sale by the executors of the deceased, but is a part of the property of the firm and often the most important part, and not to be changed or disposed of except as firm property. 50 business and cannot restrain use of trade-mark " Hallett and Cumston." The agreement terminated at Cum- ston's death. Cumston's executors had no right to use Hallett's name without his consent. They had right to use any other person's name. In- junction denied because there was no allegation that defendant used name Hallett with intent to represent it to be the name of the plaintiff and thereby defraud him. 49 Merry v. Hoopes, 111 N. Y. 415- 1888; 18 N. E. 714; Menendez v. Holt, 128 U. S. 514-1888; 32 L. ed. 526; 9 Sup. Ct. 143; Listman Mill Co. v. Wm. Listman Milling Co., 88 Wis. 334-1894; 60 N. W. 261; Slater v. Slat er, 175 N. Y. 143-1903 ; 67 N. E. 224; 61 L. R. A. 796; A. G. Fish v. Fisk, Clark & Flagg, 77 App. Div. (N. Y.) 83-1902; 79 N. Y. Supp. 37. Steinfeld v. National Shirt Waist Co., 99 App. Div. (N. Y.) 286-1904; 90 N. Y. Supp. 964. Plaintiffs were successors to a firm doing business under the name " National Shirt Waist Co.," and were doing business under that name. One Broads had sold all his interest in the earlier firm to a party who, in time, as- signed to plaintiffs; no express men- tion being made, however, of the firm or trade name. Defendant com- pany was then organized under the same name as that used in trade by plaintiffs. Broads had two, and his brother ninety-seven of the hundred shares of the company. It was al- leged that defendant had taken the name for the purpose of misleading the public, that confusion had in fact resulted, with injury to plaintiff's business. Held, that a preliminary injunction should be granted. Where, upon the dissolution of a firm, one partner purchases the business, he is exclusively entitled to the firm name, even though not dishonest in the agreement. 60 Sohier v. Johnson, 111 Mass. 238-1872. Defendant was a member of the firm of E. A. & W. Win- chester at the time of the death of the senior member, William P. Win- chester. It was held, in view of the provision of the articles of partner- ship and of the will of William P. Transfers op Trade Names, Signs, Marks, Etc. 121 § 64. Transfers by Descent and Rights of Descendants.— The good-will and trade names of a business which pass from its owner to some of his descendants, by devolution of law, will be protected in the hands of the descendants if they continue the business. They may use the ancestor's name as a trade name, because in so doing they will be regarded merely as car- rying on the business carried on by him. The point to be con- sidered is whether their use of the name can be reasonably regarded as indicating anything except that they are carrying on the business of the ancestor, or that the goods marked with the name are made at the old factory. 51 Winchester, which contemplated the continuance of a firm under the old name, that the firm name and good- will of the business could not be con- sidered an asset of the estate, sub- ject to sale by the executors and trus- tees, especially after defendant in partnership with others, had for many years carried on the business under the old firm name. Slater v. Slater, 175 N. Y. 143-1903; 67 N. E. 224; 61 L. R. A. 796. A firm name is inseparable from the good-will, and the unrestricted right to use it passes to one who, by the dissolution of the firm, as by the death of one of the partners, purchases the assets of the firm, including the good-will, whether such purchaser be a surviv- ing partner or a stranger. In this case, in an action for an accounting between the executor of the deceased partner of J. & J. Slater against the surviving partner, the entire assets of the firm had been directed to be sold at auction. The question thus arose as to what right to the firm name a purchaser (other than the surviving partner) would acquire. Fisk v. Fish, Clark & Flagg, 11 App. Div. (N. Y.) 83-1902; 79 N. Y. Supp. 37 (1st Sept.). Plaintiffs were administrators of the last sur- viving member of the firm of Fisk, Clark & Flagg. Held, that they were entitled to an injunction against the carrying on of a business similar to that firm's- by defendants under a corporate name the same as that of the firm, since the good-will of the business (though not the name itself) could be disposed of by the repre- sentatives of the last surviving mem- ber, and the purchaser of the good- will would be entitled to hold himself out as the successor to the business of the extinct firm. " Leather Cloth Co. v. American Leather Cloth Co., 11 H. L. Cas. 523- 1865. Emerson v. Badger, 101 Mass. 82-6-1869. Judge Gray: "The original inventor of the razor straps mentioned in the bill, and the owner and designer of the label put upon them by way of trade-mark, was Charles Emerson, Sr., who employed and instructed in his business five of his nephews, of whom Benjamin Badger, the father of this defendant, was the eldest, and the plaintiff was the third. Said Benjamin, in his uncle's lifetime, left his employment, and continued, with his consent and permission, but on his own account, 122 Unfair Business Competition. If the right to use a family name in trade has been trans- ferred to one who derives a right to use the name by descent and wishes to use it in competition with him who has purchased the right to use it, he must accompany his use of it with such explanation of his connection with the name as will prevent fraud, and the explanations " must accompany the use, so as to give the antidote with the bane." 52 Children of a decedent may form a corporation and use his name in the corporate name, and be protected in so doing against former employees of decedent and others who attempt to use his name in a similar business. 53 to manufacture and sell such straps and to use the same label thereon, and was succeeded in his business by his son, the defendant. The uncle died without issue, his nephews were among his heirs at law, arid his busi- ness and trade-mark were not dis- posed of by himself by will or other- wise, nor by his administrator after his decease. The plaintiff, though bearing the same name, is not the original Charles Emerson, and has no greater right than the defendant to hold himself out as such, or to use the label of his uncle. The label used by the defendant does not represent his razor straps to be made by the plaintiff or by any person of the name of Charles Emerson, but states with exact truth the relation of the defendant to the original inventor and owner. The plaintiff, therefore, fails to prove either any infringement of his own rights or any wrongful act of the defendant." England v. Downs, 6 Beav. 269-76-1842. A widow carried on the business of victualler on premises leased from year to year. Before marrying again she assigned all her household goods, stock in trade, brewing utensils, and all her effects — thus excluding her husband — and then married. " Good- will in a case of this sort," Lord Langdale said, " is the chance or probability that custom will be had at a certain place of business in con- sequence of the way in which that business has been previously carried on. * * * I must own my opinion is, that the good-will belonged to the wife, and was a part of the settled property, as annexed and incident to the things which were comprised in the deed, and that whether the particular interest she had in the leasehold premises was distinctly comprised in the deed or not." 02 Herring-Hall-Marvin Safe Co. v. Hall's Safe Co., 208 U. S. 554-59- 1908. " S. Howes Co. v. Howes Grain Cleaner Co., 24 Misc. (N. Y.) 83- 1898; 52 N. Y. Supp. 46S. Upon the death of Simeon Howes, well known as a manufacturer of grain cleaners and similar machinery, his children and legatees formed a corpo- ration under the name of the " S. Howes Company " to continue de- cedent's business; this corporation acquired from the executors the as- sets, trade-marks and good-will of de- cedent's busineess, without any ex- Transfers of Trade Names, Signs, Marks, Etc. 123 § 65. Transfer of Secret Formulae. — As to the law re- lating to transfers of secret formulae and processes, see the chapters on Trade Secrets and Interference with Contract. One who owns such a secret may transfer it under contract providing that it be kept a secret by the person buying it, and may enjoin a breach of such contract. He may sell the same secret to various persons allowing to each the right to sell the article generally or in a prescribed territory. 54 See § 221. press mention of the right to use the name. Former employees of the de- cedent then organized " The Howes Grain Cleaner Company " to engage in the same business. Confusion and mistakes on the part of customers were shown to have resulted. Held, that defendant should be enjoined from using a corporate name of which " Howes " was a part. Mar- shall v. PinkKam, 52 Wis. 572-1881; 9 N. W. 615. Samuel Marshall, hav- ing a recipe for a liniment appar- ently not originated by him or pat- ented, allowed various members of his family to make and sell it, a label being attached containing the words " Old Dr. S. Marshall's Cele- brated Liniment " and other words, and the figure of a horse's head. After his death his widow continued for a time to make and sell the lini- ment, and then sold all her material to the plaintiff, one of Samuel Mar- shall's sons. Held, that plaintiff had no exclusive right to make and sell the liniment, or use the old label and the trade name, but that the other children had s imil ar rights. M Park & Co. v. Hartman, 187 Mass. 144-1905, 72 N. E. 839, 153 Fed. 24; Fowl v. Park, 131 U. S. 88-1889, 9 S. Ct. 658, 33 L. ed. 67; In Chadwick v. Covell, 151 Mass. 190-1890; 23 N. E. 1068; 6 L. R. A. 839. The adminis- tratrix of Dr. Spencer, who had made certain medicines according to secret formula? and under distinctive names, made what is assumed to have been a valid transfer to the plaintiff of the formula? for these medicines with the trade-marks and labels. Afterward an administrator de bonis non assumed to convey to defendant the recipes and trade- marks for these medicines, except such as might have been already granted. Defendant then made and sold the medicines, with labels simi- lar to those used by Dr. Spencer. Held, that he was entitled to do so; that both plaintiff and defendant could use the formula?, as well as the trade names, which were not identi- fied with any particular place of manufacture, so that defendant's use of them did not tend to deceive the public any more than plaintiff's. CHAPTER VI. Family Names or Surnames, as Trade Names. Section 66. Nature of the right in one's own name. 67. What constitutes passing off by use of surname. 68. Rulings of equity courts directing use of explanatory words with defendant's name. 69. Acquired generic or secondary meaning of names. 70. Surnames which by usage become abstract names of objects. 71. Priority in use not resulting in secondary meaning. 72. Surnames used as abbreviations. 73. Names made up of surnames with other words or symbols. 74. Surnames acquired otherwise than by descent. 75. Voluntary change of personal name. 76. Rights acquired by him who first uses a surname in business. 77. Family names as corporate names. 78. Rights of descendents to the family name as used in business by an ancestor. 79. Summary. " Similarity, not identity, is the usual recourse where one party seeks to benefit himself by the good name of another." * The attitude of the courts toward questions arising in trade as to family names will be made clearer by a study of the pro- tection equity is now giving to various other personal rights. The question of personal rights is a far different question now from what it was a century ago. To these changed conditions equity must and does adapt its remedies, often varying its method of relief, while never changing its few rules or curtail- ing its powers by specific limitation or definition. See § 20. A family name or surname may be very valuable quite apart from any known personality, and although it does not desig- nate any specific article, as, for instance, the name " Hall ' : in the safe trade. And this is so as an advertisement, even when divorced from any idea of succession from a predecessor known under that name. This value arises from long associa- tion with superior quality. 2 1 Celluloid Mfg. Co. v. Cellonite a Donnell v. Herring-Hall-Marvin Mfg. Co., 32 Fed. 97-1887. Safe Co., 208 U. S. 267-72-1908. [124] Family Names or Surnames, as Trade Names. 125 § 66. Nature of the Right in One's Own Name. — A man has rights in his family or personal name. Just what is their extent is disputed, but rights he most assuredly has, and these rights are such as usually will be protected by an equity court. The general impression is prevalent that a man's name, like his house, is particularly his own; and an Englishman or Ameri- can is quick to resent any interference with such rights by the courts. The common law has taught them that " every man's house is called his castle. Why? Because it is surrounded by a moat or defended wall ? No. It may be a straw-built hut : the wind may whistle through it, the rain may enter it, but the king cannot." 3 And his name is more dear to him than his house. It is only in recent times that the necessity for protection of one's name has become of special importance. Formerly, libel and slander afforded about the only ways by which one could injure another's name. Now, through the multipli- cation of advertising methods and through the present means of reaching the public ear and catching the public eye, the instruments at the hand of a person disposed to act fraudulently, by which he may injure his competitior's good name and business reputation, are legion. During the last twenty years, the courts have been developing this body of law, which has arisen because of numerous cases in which appli- cation has been made to enjoin such unfair methods of trade : and much of this law has been laid down in cases relating to family or personal names used as trade names. § 67. What Constitutes Passing Off by Use of Surname. — The fundamental principle is that a man has an unqualified right to use his own name as he will. It includes the right to make out of it a trade name for use in his business, which shall be his alone and transferable to his children after him, or which he may sell to another for value. As may be easily imagined, many vexing questions arise as to the rights inherent in and growing out of these names so used. As said above, every man has a right to the use of his own name. That is the first prin- ciple. To this the law of unfair competition has added another. No man may use even his own name in such manner as to in- 8 Stephens Dig. ' Evidence Introd. p. 23. 126 Unfair Business Competition. jure another unfairly or fraudulently in his business. " While it is true that every man has a right to use his name in his own business, it is also true that he has no right to use it for the purpose of stealing the good- will of his neighbor's business, nor to commit a fraud upon his neighbor, nor to trespass upon his neighbor's rights or property; and while it is true that every man has a right to use white paper, it is also true that he has no right to use it for making counterfeit money, nor to commit a forgery. ' ' 4 First then, as to the general propositions. Can a court under any circumstances prevent a person from using his own name? Lord Colton says that it cannot be done, without intent on the part of the person offending to pass off himself as some other person. " In my opinion the court cannot stop a man from carrying on his business in his own name, although it may be the name of a better-known manufacturer, when he does noth- ing at all in any way to try and represent that he is that better-known and successful manufacturer. ' ' 5 This view was held by the Connecticut court as late as 1885. The cases of Croft v. Day? and Holloway v. Holloivay, 7 both limited the rule, the court feeling that its duty to prevent deceit was stronger than the right of the offending party to an unre- strained use of his particular name. In the same breath, the court disclaimed any attempt to abridge the right of the defend- ant and declares its right and duty to prevent him from com- mitting fraud. 8 4 Garrett v. T. H. Garrett & Co., 78 Fed. 472-1896; 24 C. C. A. 173, at p. 478. 6 Turton v. Turton, 42 Ch. Div. 128-1889, at p. 143. ' 7 Beav. 84-1843. 7 13 Beav. 209-1850. "Croft v. Day, 7 Beav. 84-1843. Executors of Day sought to restrain nephew of Day from making blacking under label similar to those used by Day & Martin. "His (plaintiff's) right is to be protected against fraud, and fraud may be practiced against him by means of a name, though the person practicing it may have a perfect right to use that name, provided he does not accompany the use of it with such other circum- stances as to effect a fraud upon others " (id. p. 88). " He has a right to carry on the business of a blacking manufacturer honestly and fairly; he has a right to the use of his own name. I will not do anything to de- bar him from the use of that, or any other name calculated to benefit him- self in an honest way; but I must prevent him from using it in such a way as to deceive and defraud the Family Names or Surnames, as Trade Names. 127 In 1853, Burgess v. Burgess 9 was decided. This case held that every man had a full right to use his own name. Father and grandfather had sold " Burgess's Essence of Anchovies " since before 1800. The son then opened a competing business, and called his goods also " Burgess's Essence of Anchovies." His right so to do was upheld, Lord Justice Bruce saying: "All the Queen's subjects have a right, if they will, to manu- facture and sell pickles and sauces, and not the less that their fathers have done so before them. All the Queen's subjects have a right to sell these articles in their own names, and not the less so that they bear the same name as their fathers. 10 * * * No man can have any right to represent his goods as the goods of another person, but in applications of this kind it must be made out that the defendant is selling his own goods as the goods of another. When a person is selling goods under a particular name, and another person, not having that name, is using it, it may be presumed that he so uses it to represent the goods sold by him as the goods of the persons whose name he uses; but where the defendant sells goods under his own name, and it happens that the plain- tiff has the same name, it does not follow that the defendant is selling his goods as the goods of the plaintiff. It is a ques- public, and obtain for himself, at the expense of the plaintiffs, an undue or improper advantage" (id. p. 90). Cited with approval in Brown Chemi- cal Co. v. Meyer, 139 U. S. 540-1890; 35 L. ed. 247; 11 Sup. Ct. 625. Holloway v. Holloway, 13 Beav. 209- 1850. Thomas Holloway made and sold pills, etc., at 244 Strand as " Hol- loway's Pills and Ointment." Henry Holloway, a brother of the plaintiff, then sold pills at 210 Strand as " H. Holloway's pills and ointment," using boxes similar to those of plaintiff, and copying the latter's labels and wrap- pers. The evidence disclosed an in- tention to profit by this similarity. Held, Henry had no right to deceive the public and make them believe he was selling Thomas' goods. " The defendant's name being Holloway, he had a right to constitute himself ven- dor of Holloway's pills and ointment, and I do not intend to say anything tending to abridge any such right. But he has no right to do so with such additions to his own name as to deceive the public and make them be- lieve that he is selling the plaintiff's pills and ointment" (id. p. 213). Fol- lowed in Brown Chemical Co. v. Meyer, 139 U. S. 540-1890 ; 35 L. ed. 247; 11 Sup. Ct. 625; and McLean v. Fleming, 96 U. S. 245-1877; 24 L. ed. 828. ' 3 De G. M. & G. 896-903. 10 See also Bodgers v. Nowill, 6 Hare 325-1846. 128 Unfair Business Competition. tion of evidence in each case, whether there is false represen- tation or not " (id. p. 904-5). This case has been widely cited and repeatedly distinguished and limited by the courts of both England and this country. For instance, in Massam v. Horley's Cattle Food Co., 11 the court said : " Now Burgess v. Burgess has been very much mis- understood if it has been understood to decide that anybody can always use his own name, as a description of an article, whatever may be the consequence of it, or whatever may be the motive for doing it, or whatever may be the result of it." Lord Turner, in a concurring opinion in the Burgess case itself, laid down important limitations on the right to use one's own name as a trade name. Lord Esher in Turton v. Turton, a case decided in 1889, thought that, in addition to using the same family name that was in use by some one already established in business under that name, one must also do other acts tending to create con- fusion in the mind of the public, in order to be held guilty of unfair competition. 12 11 14 Ch. Div. 748-52-1880. 12 Turton v. Turton, 42 Ch. Div. 128-1889. The names in question were " Thomas Turton & Sons " and " John Turton & Sons." Lord Esher, M. R., held in substance as follows: " Now it is not proved against the defendant, that he did anything in the way of his trade which tended to give any other meaning to the name in which he carried on his business, or which could give any other mean- ing to it, than merely the fact that he did carry on business, and was in partnership with his sons. He had not done anything with the intent or for the purpose of making the use of his simple name look as if his name was the name of the plaintiffs. In some cases, besides using the name, parties have, to use what I think is a happy phrase of my brother Cotton's, ' garnished that use,' that is they have done things besides using the name, in order that the use of that name might look as if it were being used by the old firm " (id. p. 134). "I assume that the names are sufficiently alike to cause blunders in trade; but they are blunders of the people who make the blunders. Has the defendant done anything so far to cause these blunders even though he did not in- tend it, which entitles the court to stop him from doing what he is do- ing? He is simply stating that he is carrying on business with his two sons as partners. I say that is the accurate and exact truth of what he is doing. I will assume for the moment that it is pointed out to him what he is doing, that blunders will occur in the business a.nd that the results which are complained of will happen. Is there anything dishonest, Family Names or Surnames, as Trade Names. 129 The Turton case emphasizes two points, viz., that the defend- ant cannot be held accountable for the stupidity or carelessness of heedless purchasers who deal with the plaintiff or with him ; and that if, in the name the defendant has used, he has stated the exact truth, he is not responsible for injury suffered by the plaintiff. Both these questions are discussed later on under the head of Defenses. This opinion assumes that the contention is made that, if two persons of the same name desire to enter the same busi- ness, one must " discard his own name and take a false one." No one now contends that fair dealing demands this; but it does demand that if these two namesakes are to compete, while neither is forbidden to use their common name, neither must — is there anything wrong morally, in any, even in the strictest sense, in a man using his own name, or stat- ing that he is carrying on business exactly as he is carrying it on? Is there anything wrong in his continu- ing to do so, because people make blunders, and even, if you please, be- cause they make probable blunders'? What is there wrong in what he is doing? Now it is said that the plaintiffs have a trade name and a property in their name. I doubt about property, though they have this right : That no man shall wrong- fully interfere with their name. But they have no right to say that a man may not rightly use his own name. I cannot conceive that the law is such. If the law were such, the law would be most extraordinary and, to my mind, most unjust, to prevent a man's using his own name. And I must say this, that all the arguments which have been used in this case would have been equally applicable if there had been nothing about sons, and if one man were carrying on business as Thomas Turton under the circumstances in which Thomas Tur- 9 ton & Sons were carrying on their business, and another man named John Turton were to come and carry en his business simply in his own name. Therefore the proposition goes to this length : that if one man is in business and has so carried on his business, that his name has be- come a value in the market, another man must not use his own name. If that other man comes and carries on business he must discard his own name and take a false name. The proposition seems to me so monstrous, that the statement of it carries its own refutation. Therefore, upon principle, I should say it is perfectly clear that if all that a man does is to carry on the same business, and to state how he is carrying it on, that statement being the simple truth, and he does nothing more with regard to the respective names, he is doing no wrong. He is doing what he has an absolute right by the law of England to do, and you cannot restrain a man from doing that which he has an absolute right by the law of England to do" (at p. 135-36). 130 Unfair Business Competition. do any act that will create confusion which will result in injury to the other. In 1875, twenty-two years after Burgess v. Burgess, the New York Court of Appeals decided Meneely v. Meneely, 12 which case held, by Andrews, J., " that any person may use in his business his family name, provided he uses it honestly and without artifice or deception, although the business he carries on is the same as the business of another person of the same name previously established, which has become known under that name to the public, and although it may appear that the repetition of that name in connection with the new business of the same kind, may produce confusion and subject the other party to pecuniary injury. The right of a person to use his family name in his business is regarded as a natural right of which he cannot be deprived, by reason simply of priority of use by another of the same name." This doctrine as laid down in Meneely v. Meneely, was cited with approval in C. S. Higgins Co. v. Higgins Soap Co., 14, where the court said : ' ' The right of a man to use his own name in his own business the law protects, even when such use is in- jurious to another who has established a prior business of the same kind and gained a reputation which goes with the name. ' ' § 68. Rulings of Equity Courts Directing Use of Explan- atory Words with Defendants' Name. — The rule as it exists to-day in the conservative jurisdictions is stated by the Circuit Court of Appeals in Wychoff, Seamans & Benedict v. Howe Scale Co., 15 as follows : " No one may be excluded from taking up whatever business he chooses by the circumstance that someone else of the same name has made a reputation in it; nor may he be required to conduct such business under an alias, al- though the conducting of it under his own name may produce a confusion in the public mind as to the identity of goods, which no ' precaution or indication ' of his can effectually prevent. It is through no fault of his that his name happens to be the same as that of some other man, who has already impressed his "62 N. Y. 427-67-1875. 15 122 Fed. 348-51-1903; 58 C. C. "144 N. Y. 462-68-1895; 39 N. E. A. 510. 490; 27 L. R. A. 42. Family Names or Surnames, as Trade Names. 131 personality on some particular industry. All that is required of him is that he shall use reasonable precautions to prevent confusion ; that he shall refrain from any affirmative act which may produce it. Thus doing and thus refraining, he may do business under the name that came to him without his choice, and may call his goods by it, if he pleases." There is, however, something abhorrent to justice and com- mon sense in allowing one who has built up a profitable busi- ness to suffer severe loss of money and trade, because another who happens to enter the business later has been given the' same name as he. Such an idea is opposed to the American and English idea of fair play. The courts have experienced this feeling and have in numerous instances tried to prevent the injury, at the same time trying to uphold the unqualified right of the defendant to the use of his own name, going even, farther than the court went in Wyckoff v. Howe Scale Co. y supra. In recent years it has been common for the courts to dispose of cases where a common family name was being used by defendant to the injury of plaintiff, by allowing the defend- ant to use his name, but only in such ways as would not give occasion for purchasers being deceived into thinking the goods on which it appeared were those of the plaintiff, and thus giv- ing relief to the plaintiff without forbidding anyone to use his own name. In other instances the court has ordered that the defendant use his full name instead of merely his surname, as where two ' ' Hoff s ' ' manufactured malt extract, Leopold, being later in beginning business than Johann, was ordered to prefix his first name to all his labels. 16 18 Tarrant & Co. v. Johann Hoff, Germany, using the words, ' Hoff's 76 Fed. 959-1896 ; 22 C. C. A. 644. Malt Extract ' on its labels and ad- " Complainant acquired the right to vertisements, affixing also a perpen- manuf acture and sell in the United dicular side label, ' Manufactured by States < Johann Hoff's Malt Extract ' Leopold Hoff.' Held, that defendant under labels and trade-marks used in should be enjoined from using the Germany for many years, and which words ' Hoff's Malt Extract,' unless entered into commerce under the preceded by the word ' Leopold,' and name ' Johann Hoff's ' or simply that the perpendicular label was in- 1 Hoff's ' extract. Defendant became sufficient" (head-note). Royal Bak- the selling agent for a malt extract ing Potoder Co. v. Royal, 122 Fed. manufactured by Leopold Hoff in 337-1903; 58 C. C. A. 499-506. "Now 132 Unfair Business Competition. A very good illustration of the present attitude of the courts is found in the cases brought by the Walter Baker Chocolate Co. against various persons by the name of Baker, who have set up in the chocolate business from time to time. The follow- ing summary is taken, in part, from the Trade-Mark Bulletin, for 1905. The business of Walter Baker & Co. was begun in 1780, at Dorchester, Mass. For more than fifty years it had been conducted under its present name. In 1894, William H. Baker, of Winchester, Va., began to market chocolate put up and labeled with the name " W. H. Baker & Co.," so as to cause his goods to be called for, sold and accepted as the goods of " Walter Baker & Co.," whose goods were marked " W. Baker & Co.," thereupon, Walter Baker sued William H. Baker, and his New York agent, Sanders, to enjoin them from using the name " Baker." In the suit against Baker, the Cir- cuit Court in the Western District of Virginia, 17 while refus- ing to enjoin the defendant from using his own name, enjoined him from using the name " Baker " alone or in connection with the designation " & Co." and required him to use it in some distinctive manner. In the suit against Sanders in the southern district of New York, an injunction was granted which specified the manner in which the goods in controversy should be marked, and required the defendant to place upon his packages in prominent type the words, " W. H. Baker is distinct from and has no connection with the old chocolate manufactory of Walter Baker & Com- pany. ' ' ll8 The next suit was brought by Walter Baker & Co. against William P. Baker, of New York, and restrained him from using If defendant did not bear the family of the benefits resulting from the de- name of ' Royal ' there would not be mand for the Royal baking powder the slightest doubt but that his use of made and sold by the complainant " the word 'Royal' in connection with (id. p. 343). The defendant was or- a baking powder made and sold by dered to distinguish his goods from himself would be absolutely pro- those of complainant, and make his hibited, on the ground that the use name inconspicuous, •of so arbitrary and meaningless a 1T Walter Baker & Co. v. Baker, 11 word applied to a baking powder Fed. 181-1896. -could only be with the dishonest in- ,8 Walter Baker & Co. v. Sanders, tent to appropriate to himself some 80 Fed. 889-1897. Family Names or Surnames, as Trade Names. 133 the name " Baker " alone, in the sale of chocolate, or from using it with the initial " W." only, but providing that he might use his name in full, " William P. Baker " or " William Phillips Baker " and might indicate in appropriate language upon the packages of his goods that they were made and pre- pared, or sold by William P. Baker, of New York." 19 In the next series of two cases, William H. Baker, of Win- chester, Va., appeared as complainant. It appeared that one William H. Baker, of Syracuse, N. Y., had now begun to trade upon the reputation of the former infringer, William H. Baker, of Winchester, Va., and was using upon his packages the same form of marking which the court had required the latter dealer to place upon his, to wit, " Wm. H. Baker is distinct from the old chocolate manufactory of Walter Baker & Co.," thereby making it appear that he was the " William H. Baker " who had been enjoined at the suit of Walter Baker & Co. There- upon, William H. Baker, of Winchester, Va., brought suits against William H. Baker, of Syracuse, and also against San- ders, now the agent of the latter, to compel them to desist from the use of this marking. In the suit against Sanders such injunction was granted, and also an injunction requiring the defendant to desist from the use of the name in the form " W. H. Baker," or " Wm. H. Baker," but permitted him to use the full name, " William H. Baker " in connection with the word. " Syracuse " when the same were printed in type of sufficient prominence. 20 In the suit against Baker, of Syracuse, a similar decree was made. 21 In the latest of the series, Walter Baker & Co., as complain- ants, sought to restrain the defendant, Slack, a retail grocer, of Chicago, from advertising the goods of William H. Baker, of Winchester, Va., as " Baker's Chocolate " and " Baker's Cocoa " and from selling them to customers who asked for " Baker's Chocolate " or " Baker's Cocoa." The relief awarded was an injunction to prevent the defend- ant from advertising, selling or causing to be sold any choco- " Walter Baker & Co. v. Baker, 87 " Baker v. Baker, 115 Fed. 297- Fed. 209-1898. 1902 (C. C. A. 2d Cir.). 20 Baker v. Sanders, 97 Fed. 948- 1899 (C. C. E. D. Pa.). 134 Unfair Business Competition. late or cocoa other than that of the complainant as or under the names " Baker's Chocolate " or " Baker's Cocoa," and from using the name " Baker " alone in any way whatever in con- nection with the advertisement or sale of chocolate or cocoa other than that of Walter Baker & Co., or in any way so as to indicate that the goods of the Virginia manufacturer were " Baker's Chocolate " or " Baker's Cocoa." 22 Another good illustration is found in the Rogers cases. The name Rogers has come to be associated in a peculiar way with the manufacture of silver. The business was started in 1872 by Rogers Brothers, who stamped their goods " Win. Rogers Manufacturing Co." and " Wm. Rogers & Son." Various persons who bore the name " Rogers " have, from time to time, set up in the silver business, under the name of " Rogers," only to be curtailed and limited by the courts in the use of the name. In 1883, George Rogers, a lawyer, and others started the " Rogers Manufacturing Co." and sold silver as " 6 Rogers A-l." Held, defendants intended by so using their name to deceive the public. 23 Walter Baker <& Co. v. Slack, 130 Fed. 514-1904 (C. C. A. 7th Cir.). 23 William Rogers Mfg. Co. v. Rog- ers Mfg. Co., 16 Phila. 178 (Com. PL Pbila. 1883). The plaintiff company was incorporated in 1872, and suc- ceeded to a business of manufactur- ing silver plate which had long been carried on by three brothers named Eogers and their successors. Their goods were stamped with the name "Wm. Rogers Mfg. Co." or " Wm. Rogers & Son," and the name Rogers had long been identified with these goods, which were of high reputation. The defendant company was formed in 1883 by George Rogers, a lawyer, George Linsenmayer, a silversmith, and another, and it stamped its goods *' 6 Rogers A-l." The court con- sidered that in adopting its name de- fendant intended to mislead the pub- lic. Defendant was enjoined from using the name " Rogers " on its ware. The court, with reference to the proposition that in general any man may apply his own name to the goods in which he deals, says : " But if the use of the name is intended to gain an advantage over anyone al- ready established, and using it in the same trade, or if, without such intent, the effect is to mislead and deceive buyers, then such use of the name will be prevented by injunction; and while all intendments are made in fa- vor of a person formerly in the trade, when he sets up a new firm, yet the presumptions are against a stranger to the business, when he sets up a rival establishment" (p. 179). Family Names or Surnames, as Trade Names. 135 In 1907, William H. Rogers started in silver business, mark- ing goods ' ' W. H. Rogers, of Plainfield, New Jersey, ' ' and his packages " Not connected with any other Rogers." Court held, this was not sufficient identification. He must mark his goods " Not the original Rogers," " Not connected with the original Rogers. ' ' 24 William H. Rogers, a bicycle maker at Bristol, began to make silver stamped " Wm. H. Rogers." One Hubbard fur- nished all the capital. Held, he was seeking to pass off his goods fraudulently, else he would have used name " Rogers & Hubbard." Defendant was enjoined from use of word " Rogers " associated in any way with word " William " or 24 International Silver Co. v. Rog- ers, N. J. Eq. ; 67 Atl. 105- 1907. Complainant was the successor to the good-will of an extensive busi- ness in silver-plated ware originally established by the Rogers Brothers, by whose surname the goods had long been generally known. Defendant, W. H. Rogers, had been the presi- dent of a rival concern, the William H. Rogers Corporation, which had been enjoined from the use of any name of which " Rogers " was a part. Defendant then set up in business in his own name, stamping his goods " W. H. Rogers, of Plainfield, N. J.," and marking his packages " not con- nected with any other Rogers." Held, that this was not a sufficient differ- entiation, and that defendant should be enjoined from making and selling his goods, unless he should stamp upon them " not the original Rogers " or " not connected with the original Rogers." " The normal presumption that the use of one's name is an honest one may be rebutted by show- ing a fraudulent use of it touching the matter in issue." (Referring to the fact that such fraudulent prior use was here established, the court proceeds : ) " The burden is there- fore on the defendant to show that the use of his name is not in effect a continuation of such prior f raud " (id. p. 106). As to the differentiating effect of the addition to defendant's name of the place of manufacture, the court remarks that the original Rogers' goods had been manufactured in various places and says : " Lo- cality has no sufficiently distinguish- ing force, because locality is not asso- ciated in any way with the mark itself." As to defendants' use of the words " Not connected with any other Rogers " on the wrappers, the court remarks that these words would not reach the retail purchaser, and adds that even if they do they would not suffice. " These words merely tend to add to the confusion. They might well be, and usually would be, em- ployed by an original manufacturer seeking to warn the trade when he finds on the market other goods which may be passed off as his. In employing such words, so misleading and ambiguous, the defendant is clearly guilty of bad faith" (id. p. 107). 13G Unfair Business Competition. abbreviation of it. The corporation was not enjoined from use of word " Rogers" with words " W. Henry, Plainfield, N.J." 25 In 1901, a corporation was formed by Simon L. and George H. Rogers, sons of one of the original Rogers Brothers, but neither of them had active control of the business. They ad- vertised their ware as " The Real Rogers goods," etc. They were enjoined from using the word " Rogers " or " Rogers Bros." or stating their goods were " The Real Rogers goods " or that they were " the only real Rogers Bros." 26 This was on the preliminary hearing. ;5 International Silver Co. v. Wm. H. Rogers (N. J.), 66 N. J. Eq. 119, 57 Atl. 1037-1904. In 1S90 "William H. Rogers, who had been, in the bicycle business, began to make spoons and forks through a company at Bristol, having them stamped " Wm. H. Rogers Co." In this venture he was at first with one Hubbard, who furnished all of the capital. Held, that he was evidently seeking to pass off his goods. Had he not been he would have used the name " Rogers & Hubbard." The name he did use was strikingly like the name of a company then in exist- ence, the " Wm. H. Rogers Manufac- turing Co." He had no skill or repu- tation in the market as a dealer in silver nor any financial responsibility, and yet the B. Company were willing to pay five cents per dozen for knives stamped with his name. This would only have represented the value of the name and reputation of the predecessors of the complainant. He was seeking to pass off his goods as the goods of his competitor. A man is not always debarred from giv- ing his own name to a corporation, where it happens to be the name of the competitor. If he did it for some good reason and in such a way as not to mislead the public his name may be of value to him because it suggests his skill or his financial ability or something else that belongs to him. In this case there was no valid reason why the individual name should have been adopted as a cor- porate name, and further the name was not embodied in the corporate name merely but in its most objec- tionable form with the abbreviation " Wm.," just as in the corporate name. For this the court held that there was not any excuse. The grava- men of the action was not fraud- ulent intent but misrepresentation, the suggestio falsi is to be found in the name stamped on the ware. The W. H. Rogers corporation should be enjoined from advertising its wares under the corporate name or under any name in which the word " Rogers," with the word " William " abbreviated or unabbreviated, is a part, or from selling its wares under that name. 20 International Silver Co. v. Simeon L. & George H. Rogers Co., 110 Fed. 955-1901 (C. C. Conn.). Defendant was a corporation recently organized to make silver-plated ware. Simeon L. and George H. Rogers, after whom Family Names or Surnames, as Trade Names. 137 These eases will show some of the limitations and conditions imposed on the use of names in trade, by those who have an absolute right to use them under ordinary circumstances. These limitations may be called legal regulations of a person's use of his name. While no one will be forbidden by equity to use his name in trade, that court has large power to regulate and limit that use. 26a it was named, were sons of one of the original Rogers brothers, but neither had been engaged in the manufacture of silver-plated ware, though one had been employed in the business at small wages. Neither of the active managers of the defendant corporation was a Rogers. Defend- ant advertised their goods as " The real Rogers goods," and represented Simeon L. and George Rogers as "the only real Rogers Brothers." Held, that defendant should be restrained by preliminary injunction from stamping its goods " Rogers " or " Rogers Bros." either with or without an accompanying emblem, monogram or initials, and from representing its goods to be " The real Rogers goods," and the manufacturers to be " the only real Rogers Bros." The court postponed until a final hearing the de- termination of the question whether or not defendant should be enjoined from the use of its corporate name, as having been adopted solely for the purpose of unfair competition. In- ternational Silver Co. v. Rogers Bros. Cutlery Co., 136 Fed. 1019-1905 (C. C. W. D. Mich. 5th D.). The de- fendant company was formed by two persons of the name of Rogers, and another person, and did not itself manufacture, but bought and sold cutlery. It placed upon the market knives manufactured by the Muske- gon Cutlery Co., and stamped them with the name " RoDgers Bros. Cut- lery Co." (capitalizing the d). Held, that the defendants' use of the name was prima facie fraudulent. Prelim- inary injunction granted. See also International Silver Co. v. Wm. H. Rogers Corp., 67 N. J. Eq. 646-1905, 60 Atl. 187, reversing 66 N. J. eq. 119, 57 Atl. 1037; International Sil- ver Co. v. Rogers, 67 Atl. 105-1907, reversing 63 Atl. 977; International Silver Co. v. Wm. G. Rogers, 113 Fed. 526-1902, affirmed, 118 Fed. 133. 268 David E. Foutz Co. v. S. A. Foutz Stock Food Co., 163 F. 408- 1908 (C. C. Md.). Two brothers, David E. and Solomon A. Foutz, about 1858 sold remedies for cattle, under the firm name S. A. Foutz & Bro. In 1867 Solomon A. sold out to his brother, who continued the business, under the name S. A. Foutz & Bro. until 1903, when the complainant company was organized. The various reme- dies sold by it had long been known by the name Foutz, which was regis- tered as a trade-mark. In 1904 Stanley A. Foutz, son of Solomon, organized the defendant company and began to sell similar remedies under such names as " S. A. Foutz Condition Powders," " S. A. Foutz Liniment," etc. There was no simi- larity in the dress of the packages. Attention was called to defendant's 138 Unfair Business Competition. § 69. Acquired Generic or Secondary Meaning of Names. — Out of this difficulty which the courts have found in pre- serving this right which every man has to use his own name and at the same time preventing injury and fraud arising from the exercise of that right, the doctrine of secondary mean- ing has been evolved. Words which form a part of the common stock of the language may become so thoroughly identified with some one person's business or goods, that it is quite possible that the use of them alone, without any qualifying words or other explanation, by another manufacturer, would deceive buyers into believing that there was but one concern or one brand of goods instead of two. This supposes the extreme condition, and cases involving just these facts are rare. There are cases, however, on record where a name has become so com- pletely identified with a particular business or manufacturing plant as to become synonymous with it. This was the fact with the name " Stone " used as a name of ale, it being also the name of the town. This " Stone Ale " case is perhaps the best known of these cases, and held that the geographical name Stone having been used for upwards of 100 years with the word ale, had come to mean not only ale which happened to be made in the town of Stone, but the particular ale made there by the plaintiff for so many years. 27 Where a personal surname becomes so identified with an object or business or manufacturing plant as to become synony- mous with it, it follows that for any other person to use the name as the name of a rival business — even though he bears the name and his fathers have borne it before him — cannot trade-mark, a pansy. Defendant's goods were not the remedies pre- goods, however, were described as pared by the David E. Foutz Co., the " genuine " ones. Held, that de- successor to S. A. Foutz & Bro., fendant should change its corporate originally established in Baltimore name to " Stanley A. Foutz Stock about 1858. Food Company," and in its labels, advertisements, etc., should not only '. w Montgomery v. Thompson, (1891) give the date and place of incorpo- A. C. 217, 64 L. T. R. 748. For dis- ration, but should state that the for- cussion of rule as to Secondary mulaa followed were those prepared Meaning of Names of Business by Stanley A. Foutz, and that the Houses see §§ 82 to 86; 110 to 117. Family Names or Surnames, as Trade Names. 139 but create confusion. In such a case, only one concern bearing that name can exist in that line of business and not create un- fair competition. Such generic or secondary meaning results from long association with goods of some one person bearing the name in question. When that occurs, other persons who rightfully bear that name can be enjoined from using it as a trade name on similar goods. ' ' Where other persons bearing the same surname have previously used the name in con- nection with their goods, in such manner and for such length of time as to make it a guaranty that the goods bearing the name emanate from them, they will be protected against the use of that name, even by a person bearing the same name, in such form as to constitute a false representation of the origin of the goods." 28 It is quite pos- sible that a trade may be so constituted that some one of its products will become eventually completely identified with one house or one person or one place. This person may have founded the business and developed the product, yet, in oppo- sition to the rights arising out of such a condition, stands the other right of every other person bearing that same name to use it as he will. The English Court of Appeals said in 1902, that " there never has been a case in which an order has been made restraining a man altogether from carrying on in his own name a particular trade. Every decision that has as yet been given has been limited to restraining him from carrying on such trade, so identified with the plaintiff's business, with- out taking the steps, which any honest man ought to wish to take, to prevent his goods being confounded with the plaintiff's goods, whose goods are so much identified with the particular trade. ' ' 29 This statement of the English court is probably true. There are few if any cases of authority which absolutely pro- hibit a man from using his own name, although a person has been definitely prohibited from using an adopted name. 30 28 Landreth v. Landreth, 22 Fed. M Cash v. Cash, 19 R. P. C. 181- 41-1884 (C. C. Wis.); followed in 1902; 86 L. T. 211. Garrett v. T. II. Garrett & Co., 78 30 Pinet et cie v. Maison Louis Fed. 472-1896 ; 24 C. C. A. 173. Pinet, Ltd., 15 R. P. C. 65-1897. 140 Unfair Business Competition. In 1907, the United States Circuit Court, in J. F. Rowley Co. v. Roivlcy? 1 prohibited E. H. Rowley from using name Rowley in any way in the sale of artificial limbs, saying: "As an abstract right, every person has the right to the use of his own name; but when the use of such name is but a cloak to cover an intended fraud upon the right of another, the wrong- doer has himself and not the law to blame for placing a limita- tion upon the right of the use thereof " (citing cases). And further, " In view of the facts of this case, and particularly of the conduct of his respondent, we are very clear that nothing short of a total prohibition of the name Rowley in connection with the manufacture and sale of artificial limbs will grant to the complainant that complete protection and preservation of its property in its trade name and good-will to which it is entitled under the law " (id. p. 746). This decision has been overruled, and on appeal it was held that the defendant could not be enjoined, entirely, from using his own name, but he was directed to accompany his use of the name by proper explanations. 31 * A person has been forbidden to use his surname in a particu- lar business, where he has sold that right to the plaintiff and his use of it in that business after the sale was causing con- fusion. This was done in the case of Ball v. Best. 32 Ball owned Best & Co., of New York, " Liliputian Bazaar," a house selling children's clothing. Defendant having formerly been with Best & Co., of New York, as had his brother, left 31 J. F. Rowley Co. v. Rowley, 154 ness for himself. His business sign, Fed. 744—1907 (C. C. Pa.). Com- under his own name, contained in plainant, The J. F. Rowley Co., had large letters, the words " Rowley for many years made artificial legs Artificial Limbs." He not only de- in Chicago, which had a high repu- scribed his goods as " Rowley Limbs," tation and were known as " Rowley " but made false or misleading repre- legs. Respondent, E. H. Rowley, a sentations, and used fraudulent de- brother of the president of complain- vices to divert trade to himself, ant, had been employed by it for Held, that he should be enjoined some time at Chicago, and was sent from using the word " Rowley " in as its agent to Pittsburg. Respond- any way in the sale of artificial limbs, ent's agency was shortly terminated, 3Ia 161 Fed. 91. whereupon "he set up in same busi- S2 135 Fed. 431-1905 (C. C. 111.). Family Names or Surnames, as Trade Names. lil them and bought S. & Co., of Chicago, and took the name of A. S. Best & Co., associating his brother with him, nominally. On his sign he put " Liliputian Outfitters " and " Formerly with Best Co., New York." " Formerly it would have been assumed, in the absence of most positive proof, that a party might carry on his own business under his own name in Chicago, notwithstanding the fact that parties had established business under the same name in New York, since there could be no presumption that the business interests of the two cities could be so intimate as to extend the good-will of such a busi- ness as that before the court all the way from New York to Chicago. It is not a light thing to restrain a man from the full benefit of his name, nor would a court of equity consider such a course in any case even now, in the absence of fraud or actual damage. It is apparent in tins case that defendant shaped his business and presented the same to the public with the in- tention of getting the benefit of complainant's standing and business prestige. The only basis upon which a contrary con- clusion could be arrived at would be positive evidence to the effect that the two fields of patronage did not conflict. But it is in evidence that complainant is a manufacturer and dealer, and that he does a large mail order business, as does also defendant. It hardly needs saying that the proficiency of the mails at this date is such that every nook and corner of the nation, as well as of Manitoba, is as accessible as were places fifty miles away from New York a few years ago. It cannot be otherwise than that the advertising and canvassing of these two rival concerns pass and repass each other innumerable times in their journeys to the centers of trade as well as to the homes of the people, mute contestants for the favor of supply- ing the wants of each customer. I am clear that under the facts in this case the court must hold that the use of the name, Best & Co., by defendant, even with its present prefix, especi- ally in connection with the word ' Liliputian, ' is a fraud upon complainant's business rights. The action of defendant was deliberate. He both intended to and did trespass upon com- plainant's rights, and took advantage of his good-will and trade. It is not important what definition is placed upon 1 Liliputian.' The name of Best & Co., with the use of that 142 Unfair Business Competition. word, constituted complainant's good-will. That use was ar- bitrary, and stands for complainant's goods. The complain- ant is clearly entitled to the relief prayed for as to the use of the name ' Best & Co.,' with and without prefixes, but only in the line of his business " (id. p. 436). The Cash case 33 is a typical case of this character. The plaintiff and defendant had absolute right to the name Cash as their family name. They were in business in the same town ; they manufactured the same articles, viz., woven names and frillings. The problem in the case was whether it was possible for Joseph Cash, the defendant, to have a shop in Coventry and there sell these articles and not have them known (as the plaintiff's goods had been known for some years) as " Cash's frillings," and " Cash's woven names," and cause unfair loss of trade to the plaintiff. The lower court forbade the defendant to sell these goods under the name of Cash, but the Court of Appeal modified this decision and its injunction was as follows: " This court doth order that the defendant, Joseph Cash, be restrained from selling any frillings or woven names or initials, not manufactured by the plaintiffs, as ' Cash's Frillings ' or ' Cash's Woven Names or Initials ' and from carrying on the business of a manufacturer or seller of frillings, or woven names or initials, under the name of ' Joseph Cash & Co.,' while not in partnership with any other person, or from carrying on any such business either in the name of ' Cash, ' or under any style in which the name ' Cash ' appears, without taking reasonable precautions to clearly distinguish the business carried on, and the frillings and woven names and initials manufactured or sold by the defendant from the busi- ness carried on, and the frillings and woven names manufac- tured by the plaintiff, and from carrying on any such busi- ness under any name or in any manner so as to mislead or deceive the public into the belief that the business of the defendant, or the frillings or woven names or initials manufactured or sold by him are the business of, or the goods manufactured by plaintiff, or that the defendant is carrying on the business formerly carried on at Coventry by Messrs. "Cash v. Cash, 19 R. P. C. 181-1902. Family Names or Surnames, as Trade Names. 143 J. & J. Cash, the vendors, predecessors in business of the plaintiffs. ' ' The defendant was prohibited also from making over his business to a corporation with a name likely to mislead, or from soliciting any of Cash's former customers in any way. Lindley, L. J., in Jamieson v. Jamieson, 34 states that : " The court ought not to restrain a man from carrying on business in his own name simply because there are other people who are doing the same and who will be injured by what he is doing. It would be intolerable if the court were to interfere, and to prevent people from carrying on business in their own name in rivalry to others of the same name. There must be some- thing far more than that, viz., that the person who is carry- ing on the business in his own name is doing it in such a way as to pass off his goods as the goods of somebody else. We must not lose sight for a moment of the real question which we have to try — the question of fact " (id. p. 181), whether he is passing off, or conducting his trade in such a way as to pass off his goods as the goods of somebody else. The same judge said substantially the same thing, though in different language, with reference to different circumstances in Powell v. Birmingham Vinegar Brewery Company. 55 "Again, if a person uses words which simply describe the kind of goods he makes or sells — e. g., leather boots — it would be intolerable to confer upon him the right to prevent other persons from honestly using the same words to describe what they make or sell. Although, however, a person by using his own name, or a merely descriptive word, to denote a particular article, cannot prevent other bona fide traders of the same name from using it, or prevent other bona fide traders making or selling the same sort of goods from using the same descrip- tive words, yet, even in such a case, if the descriptive name is proved to mean the goods of the plaintiff, and if deception is also proved, a person may be restrained from using such name or word without taking such steps as will render mistakes unlikely to occur. 1fSa 14 15 R, P. C. 169-81-1897. ™ Fine Cotton Spinners and 35 (1896) 2 Ch. 54-69; s. e. on ap- Doublers Assn. Ltd. v. Harwood peal, (1897) L. R. A'pp. Cas. 710. Cash & Co. Ltd., 2 Ch. 184-1907. lU Unfair Business Competition. § 70. Surnames which by Usage Become Abstract Names of Objects. — Sometimes family names acquire not only a sec- ondary meaning, but become the primary name of an article which anyone may use. But even then, no one may pass his goods off as those of the original maker of the article by the use of the name. " Where the name is one which has pre- viously thereto come to indicate the source of manufacture of particular devices, the use of such name by another, unac- companied with any precaution or indication, in itself amounts to an artifice calculated to produce the deception alluded to in the foregoing adjudication." 37 Names so used may not be appropriated by any one person any more than one is allowed to approjoriate to himself the name " "Wine Company," or " Cotton Company." They become necessary to all as the only words to name as article of general use; they are general terms. Such a name is " Goodyear Rubber," viz., rubber manufactured or treated by Goodyear 's particular process; or " Liebig's " Meat Extract, or " Hostetter's " Bitters. 68 Plaintiffs made yarns long associated by the public with the word " Cash/' originally a family name, the goods being generally described as " Cash " goods. John Harwood Cash, for- merly employed by plaintiffs, formed the defendant company in order to carry on a competing business. Held, that the use of the name " Cash " as part of the defendant's corporate title would be enjoined. "Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169-1895; 41 L. ed. 118; 16 Sup. Ct. 1002, quoted in International Silver Co. v. Rogers, 67 Atl. 105-1907. 88 Goodyear India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598-1888; 32 L. ed. 538; 9 Sup. Ct. 166. Plaintiff was organized in New York, Nov., 1872; prior to that time defendant existed under laws of Connecticut. For many years defendant had used and was known to trade as " Goodyear's Rubber Manufacturing Co." or " Goodyear Rubber Co." or "The Goodyear's Company." Held, " The name ' Goodyear Rubber Company ' is not one capable of exclusive appropria- tion. ' Goodyear Rubber ' are terms descriptive of well-known classes of goods produced by the process known as Goodyear's invention. Names which are thus descriptive of class and of goods cannot be exclusively appropriated by anyone. The addi- tion of the word ' Company ' only in- dicates that parties have formed an association or partnership to deal in such goods. Thus parties * * * might stj'le themselves Wine Com- pany, Cotton Company or Grain Company. All persons have a right to deal in such articles and to pub- lish the fact to the world." Liebig Extract of Meat Co., Ltd. v. Walker, 115 Fed. 822-1902. Complainant Family Names or Surnames, as Trade Names. 145 A person may be enjoined from using his own name in the naming of a new business, where there already exists a concern in that line of business of which his name is a part. To allow this would be to so allow the use of a name as to create con- fusion, although no bad faith or actual deception is shown. This is especially true where the name of the older concern has acquired a secondary meaning as connected with that con- cern or its goods. 39 made and sold extract of meat, put up in two-ounce jars, with a wrapper and neck label, and capped with a metallic capsule. The label bore the words " Liebig's Extract of Meat," the name of complainant as maker, and the facsimile signature " J. V. Liebig " in blue script, running diag- onally across the printed matter. Defendant offered an extract of meat put up in jars of the same shape and size, with neck label and wrap- per of substantially the same ap- pearance, printed in the same colors and bearing the words " Liebig's Ex- tract of Beef " and the names " Lie- big Fluid Beef Co." and "Liebig Beef Co.," both of which were fic- titious. Diagonally across the wrap- per was the facsimile signature " J. T. Walker " in blue script, resem- bling in appearance the signature on complainant's wrappers, and other portions of the reading matter were similar. Held, that while defendant was at liberty to use the word " Lie- big," prefixed to the words "Extract of Meat," as " Liebig " had become a generic designation of the article, yet defendant was guilty of unfair competition in the dress of his goods, and in using the name " Liebig's Fluid Beef Co." Liebig's Extract of Meat Co. Ltd. v. Libby, Mc- Neill & Libby, 103 Fed. 87-1900 (C. C.N. D. 111.). Complainant had 10 for many years sold this product ex- tensively in the United States, when defendant entered the market with a similar extract distinctively dressed, but subsequently sent out its goods in a package very similar to complain- ants' in color and general appearance, and used on the package, as the name of the maker, the fictitious title of " Liebig Fluid Beef Co." Held, un- fair competition. Hostetter v. Fries, 17 Fed. 620-1883 (C. C. S. D. N. Y.). Complainants manufactured " Dr. J. Hostetter's Stomach Bitters " but the process was not patented. Held, that since it was open to anyone to manu- facture such bitters, and since the only name by which the article was known was " Hostetter's Bitters," defendants were entitled to make and sell similar bitters (or an essence from which they might be prepared) and to call them " Hostetter's Bit- ters " so long as there was no simula- tion in bottles, labels or devices; also that defendants were not liable for the unlawful acts of retailers merely because they supplied them with some of the means employed by them (the retailers). 88 Dunlop Pneumatic Tire Co. Ltd. v. Dunlop Motor Co. Ltd., 22 R. P. C. 533-1905 (Ct. Sessions Scot- land). Complainers from 188S used the name " Dunlop " in connection with their goods such as tires and 146 Unfair Business Competition. § 71. Priority in Use, Not Resulting in Secondary Meaning-. — The right to the use of a family name seems to be more of a question of priority than of the wideness of the reputation it achieves. The fact that one's name is widely known does not give him a basis for claiming protection against its use by another of the same name; but it seems to be a question as to which one of them first put out goods bearing the name — who it is that the world first knew by that name in connection with the particular business in question. A manufacturer cannot, by extensively advertising his name in connection with his goods, acquire a right to prevent another with the same sur- name from selling similar goods under that surname, when such other person has for many years manufactured such goods and put his full name on his labels. 40 " While all intendments are made in favor of a person formerly in the trade when he sets up a new firm, the pre- sumptions are against a stranger to a business when he sets up a rival establishment." 41 There is also a presumption that the use of one's own name is an honest one; but it may be re- butted by showing a prior fraudulent use of the name. 42 And where there has been such prior use, the burden is on the de- fendant to show that the use of his name which is questioned is not, in effect, a continuation of such prior use. The Illinois court has enjoined a nephew from using the family name which both he and his uncle bore, in the same business as that of his various accessories for cycle and noting the complainers' goods, that motor cars, and this name had become defendant's name as a trade name identified with their goods in the was calculated to create confusion, mind of the trade and the public. and that while neither bad faith nor Defendant was incorporated to take actual deception were shown, defend- over the motor branch of the busi- ant should be interdicted from carry- ness of a retail firm composed of ing on business under its corporate Robert and John F. Dunlop, and name above mentioned, known as R. & J. F. Dunlop, which *° American Cereal Co. v. Eli Petti- had from 1898 sold and repaired john Cereal Co., 72 Fed. 903-1S96 cycles and motor cars, but carried on (C. C. 111.), affirmed 76 Fed. 372. substantially the same business as the 41 Wm. Rogers Mfg. Co. v. Rogers firm of R. & J. F. Dunlop. Held, Mfg. Co., 16 Phila. 178-80-1883. that the name " Dunlop " had *' International Silver Co. v. Rogers, acquired a secondary meaning as de- 67 Atl. 105-1907. Family Names or Surnames, as Trade Names. 147 uncle, where the nephew opened a store near the uncle's with similar show windows, and goods packed in similar boxes and bearing similar labels. 43 Again where Hires had built up a prosperous business, the court enjoined another person of same name from entering the same business under the name of Hires. 44 See §§ 76 and 103. 43 Rub el v. Allegretti Chocolate Cream Co., 76 111. App. 581-1898. Complainant, the Allegretti Chocolate Cream Co., was the successor of Ig- nazio Allegretti, who had long made and sold confections widely and favorably known as "Allegretti " Chocolate Cream. He and his two sons were the only persons interested in the complainant corporation. De- fendant Giacomo Allegretti was a nephew of Ignazio and had for sev- eral years been in his or complain- ants' employ, and formed a partner- ship for the making of chocolate creams with B. F. Rubel and I. A. Rubel, hardware merchants, under the Ann name "Allegretti & Co." The firm then opened a store not far from complainants' with very simi- larly arrayed show-windows, and the goods resembled complainants' in ap- pearance, and were put up in similar boxes with similar labels. Held, that defendants were properly enjoined from using the name "Allegretti " or "Allegretti & Co." 44 Charles E. Hires Co. v. George A. Hires, 182 Pa. St. 346-1S97; 37 Atl. 1117. Plaintiff put on the market Hires Root beer and it be- came well known ; defendant later en- tered same business under his own name. " But for the fortuitous identity of family name it is clear that the respondents would not have embarked in this proposed commer- cial venture and the evidence shows their studied purpose was to keep as close to the appearances and name of the plaintiff's article as possible and preserve similarity while yet pre- senting minor differences" (p. 347). Injunction awarded. Van Stan's Stratena Co. Ltd. v. Van Stan, 209 Pa. St. 564-1904; 58 Atl. 1064. De- fendant's father assigned to plaintiff's assignor right to make a ware which he had invented and to use his name. Defendant, who was a son of the in- ventor, after being in employ of plain- tiff, withdrew and sold the ware under his own name, simulating plaintiff's label, etc. Held, defendant had not the right to use his own name as a trade-mark of the goods sold by him. " But assuming he had a technical right to use his own name, he clearly had no right to use it to deceive the public, for such a use would be a fraud upon the clear right of the purchasers of the trade-mark. That he intended to and did deceive * * * is manifest from the evidence "■ (p. 569). Citing Russian Cement Co. v. LePage, 147 Mass. 206-1888; 17 N. E. 304; Fish Bros. Wagon Co. v. La Belle Wagon Works, 82 Wis. 546-1892; 52 N. W. 595; 16 L.. R. A.. 453; Stonebraker v. Stone- braker, 33 Md. 252-1S70; Holmes et al. v. Holmes Mfg. Co., 37 Conn. 27S-1S70. Pillsbunj v. Pilhbury- Washburn Flour Mills Co., 64 Fed. 148 Unfair Business Competition. § 72. Surnames Used as Abbreviations. — A family name often used in an abbreviated form, — " AYannamaker's," " Hires','' Huyler's," " Cameron's;" and being the particu- lar " Huyler's " whose store the people have in mind, when they speak of " Huyler's," is a most valuable asset. When any particular concern has reached such a place in the regard of the public as to be known generally in that familiar way, that concern has a right to protection against a rival which advertises itself simply by use of the family name without qualification. 45 The use of the same proper name in con- 841-1894 (C. C. A. 7th Cir.). Com- plainant-appellee was the successor in business of Chas. A. Pillsbury & Co. and had long been known as a manufacturer of floiu', which was of a superior grade, and was made by a patent process. They had long ap- plied to their packages a brand the principal part of which was inclosed in a circle, and read; " Pillsbury's Best X X X X Minneapolis, Minn." Defendant appellant, L. F. Pillsbury, was a dealer in flour in a small town in Illinois; in 1S93 he began to put up and sell flour, which he bought of various millers, in packages bearing a brand closely resembling complainant's in ap- pearance and in the colors of the letters, the principal part of which, inclosed in a circle, read : L. F. Pills- bury' XXXXXXX, Best Patent, Min- nesota." Held, that this mark was a colorable imitation of complain- ants', intended to mislead the public as to the origin of the goods, and that it did not avail defendant that he was accustomed to explain to dealers that he was not selling com- plainant's flour, but other flour of equal or superior grade. 45 Church v. Kresner, 26 App. Div. (N. Y.) 349-1S98; 49 N. Y. Supp. 742. In 1892, plaintiff entered the retail clothing business, in Brooklyn, as " Cameron's." At that time there was no other establishment in Brook- lyn using that name nor had one of that name been known there before. In 1894, defendant opened a store near the plaintiff's and began, through his agents and employees, to create the impression that his store was " Cameron's," by use of various devices all of which injiu-ed the plain- tiff. In 1895, defendant openly pro- claimed by signs and other devices his place as " Cameron's." Plaintiff alleged that such adoption of the name " Cameron's " as a business name or trade sign and defendant's conduct of the business was for the purpose of deceiving the public into believing that defendant's place of business was in reality that of the plaintiffs. On the authority of Hig- gins Co. v. Higgins Soap Co., 144 N. Y. 462-1895; Lee v. Haley, L. R. 5 Ch. App. 155-1869 ; Devlin v. Dev- lin, 69 N. Y. 212-1877; Caswell v. Hazard, 121 N. Y. 484-1890; 24 N. E. 707, the court held (p. 353) : " If the defendant had been desirous of building up a reputation for himself, if he had not found the name of " Cameron's " to have a value to which Family Names or Surnames, as Trade Names. 149 junction with separate descriptive words which accurately describe the character of the article to which they are applied will not be enjoined. For instance, in Brown Chemical Co. v. Meyer, 46 plaintiff made " Brown's Iron Bitters;" and later defendant began to make " Brown's Iron Tonic," and put the tonic up in containers of different size, color, and appearance and with different labels from that used by plaintiff. In- junction was refused by the United States Supreme Court, which said that the words ' ' Iron Bitters ' ' are descriptive of the article sold. Every man has a right to his own surname for a legitimate purpose, provided he has not assigned or parted with this right to the use of it, the distinction between lawful he had contributed no part and to which he had no right of enjoyment, can we conceive of a reason why he should, after a business experience of some months, take to himself a name which had already been adopted by another in the same kind of business and in his own immediate locality'? There can be but one answer to this question." E. H. Taylor, Jr. & Sons Co. v. Taylor, (Ky.) 85 S. W. 1085- 1905. Plaintiff and its predecessors had long distilled and sold a pure whiskey which had become well known as " Old Taylor " whiskey. Defendant was not a distiller, but a rectifier, and began putting upon the market a blended whiskey at a lower price as " Fine Old Kentucky Tay- lor " whiskey, advertising it as pure whiskey, and describing the sellers as distillers. His bottles did not re- semble plaintiff's nor could his labels be said to resemble plaintiff's, except in the use of the words above men- tioned. Held that, while there was no infringement of trade-mark, there was fraudulent simulation tending to mis- lead those not familiar with the whiskey trade. Morton v. Morton, 148 Cal. 142-1905; '82 Pac. 664; 1 L. R. A. N. S. 660n. Plaintiffs, Wm. R. Morton and others, were ex- pressmen using as a business name " Morton's Special Delivery." They employed many agents, who wore upon their hats a badge bearing con- spicuously the name " Morton " and this badge became familiar to the public as designating plaintiff's agents. Defendant, John Morton, opened a similar business, under the name of " Morton's Transfer Com- pany " and his agents used a badge similar in size, color, and appearance to that of plaintiff's, bearing the word " Morton's " in letters precisely resembling those on plaintiff's badge. Held, that defendant should be en- joined from using a badge with the word " Morton's." Barber v. Manico, 10 R. P. C. 93-1893. De- fendant enjoined from selling in Ireland knives marked " Edward Barber " where plaintiff's knives were known in Ireland as " Barber's knives " and were stamped " Era James Barber, Sheffield," this being a trade-mark of plaintiff's. 40 139 U. S. 540-1890; 35 L. ed. 247; 11 Sup. Ct. 625. 150 Unfair Business Competition. and unlawful use of one's own name being illustrated by Croft v. Day i7 and by Holloivay v. Hollo way. , 48 It will be seen by the foregoing cases that there is a marked difference between the use of a complete name, first name, middle name, if any, and surname, and the use of the surname alone. The likelihood of confusion is much increased in the latter use. xVnd there is little doubt but such use of a name will be enjoined, while the injunction will often be refused where a person uses his full name. See Charles E. Hires v. George A. Hires.™ § 73. Names Made Up of Surnames with Other Words or Symbols. — The mere addition of qualifying words such as " Famous," " Genuine," " Original," etc., will not take a name which otherwise would be similar to the name already in use, out of the rules of unfair competition. 50 § 74. Surnames Acquired Otherwise than by Descent. — A person who bears the same family name as some one who is running a business under the common surname will not be allowed to sell or transfer the right to use the name to a third person who has no interest in it, when the vendor has never 47 7 Beav. 84-1S43. 48 13 Beav. 209-1850. 49 182 Pa. St. 346-1897; 37 Atl. 1117. 60 Drake Medicine Co. v. Glessner, '68 Ohio St. 337-1S93 ; 67 N. E. 722 ; .62 L. R. A. 941. " The plaintiff's al- leged trade-mark identified * * * a ' Croup remedy ' which originated with one Dr. August Drake, a German physician who formerly resided in the State of Iowa, and from whom the plaintiff obtained the formula. In a .sense, therefore, the plaintiff's trade- mark indicates the origin, and is a guarantee of the character and qual- ity of the remedy which was sold with that trade-mark for ten years •before the defendant, Warren W. Drake, who resided daring all of that lime in the same town in which the plaintiff conducted his business, came into the market with his competitive product. Warren W. Drake had the right to make and sell a croup rem- edy different from the plaintiff's compound using his own name; but under the circumstances found by court below he could only do so in such an honest and legitimate manner that the public would not be de- ceived nor his competitor defrauded. For the reasons stated and upon the facts specially found by the circuit court, which are conclusive here, we are satisfied that the plaintiff has such an interest in the words ' Dr. Drake German Croup Remedy ' as a trade-mark that the use of the words ' Dr. Drake's Famous German Croup Remedy ' by the defendants is an infringement thereof " (p. 357). Family Names or Surnames, as Trade Names. 151 carried on the business in which the third person is engaged. The English Chancery Division has held that a person cannot, at will, confer the right on others to use Ins surname. Nor can he hire himself to another and stipulate that the other shall carry on the business in the employee's name, when such a transaction would cause confusion with the business of another. 51 61 Tussaud v. Tussaud, 44 Ch. Div. 678-1S90. Plaintiff carried on a wax works exhibition, which had been founded in 1S02 by Madame Tussaud. The wax works were often spoken of as " Tussaud's." The father of the defendant, Louis Joseph Kenny Tussaud, formerly ran the exhibition for the plaintiff. In 1890 he opened a wax works under the name of " Louis Tussaud, Limited." Circulars stated that he had no connection with the plaintiff. At the time of the suit the defendant had not carried on any exhibition on his own account or modelled any figures for his own use. Stirling, J., held that the word " Tus- saud " was well known and of high reputation in connection with wax works, and visitors who had heard of the plaintiff company's exhibition would likely be misled into going to see the other company's exhibition. The question was whether or not, granting that the defendant company should be restrained, the defendant, himself bearing the name " Tussaud," should be restrained also. " I con- ceive it to be clear that the defendant could not, either for valuable consid- eration or otherwise, confer on an- other person the right to the use of the name of ' Tussaud ' in connec- tion with the business which the de- fendant had never carried on, and hi which the defendant had no interest whatever. Then comes the question, can he confer that right on a per- son or a company toward whom he stands simply in the position of a paid servant? He could no doubt confer the right of saying that the business is under his management, but could he go to the same private individual and say to him, ' I will become your servant as manager and modeller for several years, and you shall carry on the business (which is not to be mine, but yours) under my name ? ' I think not. Would it make any difference that, instead of going to a private individual, he invited the public to become proprietors of a business upon the like terms'? On that question there is, I do not say decision, but some authority " (p. 688). Stonebraker v. Stone- braker, 33 Md. 252-1870. The com- plainant, Henry Stonebraker, had long manufactured various medicines and preparations that were wide!y known as " Stonebraker's " medicines and preparations. Defendants sub- sequently employed Abraham S. Stonebraker, a doctor, and the brother of the complainant, in the manufac- ture of similar preparations which closely resembled those of complain- ant, and were sold as " Dr. Stone- braker's " medicines and preparations. Wrappers and general get-up were imitated in various ways, and circum- stances clearly indicated fraudulent intention. Abraham S. Stonebraker 152 Unfair Business Competition. To transfer to a third person the right to use one's surname when one knows there already exist business names containing that surname, which will be injured by use of his name in the same line of business, is fraud if the vendor knew of the use to be made of the name at the time of the sale. 52 § 75. Voluntary Change of Personal Name. — By comply- ing with the statutory regulations which exist in most states, a person may change his name. If he does this and then uses it in a way to injure the business of another who bears the name the first-mentioned person has adopted, an injunction will lie restraining the use of the adopted name. 53 had, for a short time only, some years before, manufactured some drugs and remedies to which he ap- plied his name. Held, that defend- ants were not entitled so to use the name; injunction granted. 62 Ernest M. Burrow v. Theodore Marceau, 124 A. D. (N. Y.) 665- 1908; 109 N. Y. Supp. 105. Napoleon Sarony was a successful New York photographer prior to November 9, 1S96, when he died. October 7, 1898, Otto Sarony, his executor, sold to plaintiff's assignor Sarony's business with the trade-mark " Sarony " and the good-will of the business. Later this executor agreed with Marceau to use his, Otto Sarony's name, or any part of it. Marceau then organized the Otto Sarony Co., photographers — a New York corporation in which Otto Sarony owned one share of stock — the consideration for his giving the concern the right to use his name. Held, " The object of this transaction is perfectly apparent. It was not an attempt of a man to transact business in his own name or to transfer to another the good-will of an estab- lished business. Otto Sarony did not intend to go into business using his own name. * * * The only ob- ject he (Marceau) could have was thus to secure some of the business of the plaintiff. ' Sarony ' meant nothing except so far as it repre- sented the reputation or skill and artistic merit of the business trans- acted under that name. It was a fraud if the defendant represented that this company was either the suc- cessor of the business and methods established by Napoleon Sarony, or that any member of the Sarony family had any connection with it. It was a fraud upon the plaintiff, in that by the use of the name ; Sarony/ it indicated that the Sarony who had established the business known to the public as Sarony's photographic es- tablishment was connected with it, and it was a fraud for Otto Sarony to make such an agreement with the defendant Marceau when he had transferred the right to use the name of Sarony with the business estab- lished by Napoleon Sarony and had received consideration therefor." See also chapter on Good-Will, for fur- ther discussion of this question. "England v. N. T. Publishing Co., 8 Daly (N. Y.) 375-1878. Henry Carter came from England to the Family Names or Surnames, as Trade Names. 153 Arbitrary adoption of a family name as a business name is not allowable when one does not bear that name and another is using the name in business. The court will presume that such an act is done with fraudulent intent. It is unfair for a dealer to use the name of his manager as a trade name for his business or goods when that name is the name under which a competitor carries on business. The fact that it is the man- ager's name will not excuse such an act. 54 § 76. Rights Acquired by Him who First Uses a Surname in Business. — The first appropriator of his surname as a trade name may adopt the name alone, without any accompany- ing word or symbol by way of prefix or suffix ; and if he does, manufacturers of like goods having the same name may not use it upon their goods, unless they accompany it by such dis- tinguishing devices by way of prefix or suffix, that a buyer, who takes note of both name and other marks, will not be deceived. If consumers who notice nothing but the name United States, took for his name Frank Leslie, but did not do so legally, and published various period- icals known as " Frank Leslie's " and widely circulated. He had caused his son to take the same name of Frank Leslie, and he was christened and married under that name. Subse- quently, influenced by threats and misrepresentations on the part of his father, he assumed the name Henry Leslie, although still known as Frank to his wife and various friends. Afterward he resumed the name of Frank, and the defendant, of which he was one of the incorporators, be- gan to publish a weekly journal en- titled " Frank Leslie, Jr.'s Sporting & Dramatic Times." Neither of his father's publications dealt especially with sporting or dramatic matters. Held no infringement. F. Pinet et Cie. v. Maison Louis Pinet, Ltd., 15 R. P. C. 65-1897; see also s. c. 14 R. P. C. 933-1897. Plaintiffs had a well-established business in boots and shoes, and their goods were known as " Pinet " boots and shoes. The founder of the defendant company had repeatedly changed his name, and finally adopted the name Pinet, and the company formed by him be- gan dealing in boots and shoes, which they advertised as " Pinet's Special Boots and Shoes," though their pros- pectus set forth that they had no con- nection with F. Pinet et Cie., of Paris. Defendants were enjoined from using the name " Pinet " in any way in their business. " Folk v. American West Indies Co., 71 App. Div. (N. Y.) 320-1902; 75 N. Y. Supp. 964. Plaintiff used for twenty years " El Falcon " as the name of a cigar; defendant adopted name " El Falco." Fact that defendant's manager was named G. Lopez y Falco, when he did not swear he was known by that full name, will not permit use of word by defendant. 154 Unfair Business Competition. are deceived and there is loss to either in consequence, it must be borne as the result of the act of taking a family name as a trade name ; but if the first appropriator affixes distinguish- ing figures or words or symbols to his name, the second may not use his name in connection with the same marks, figures, symbols or words, nor with such marks as so resemble those of the first that the similarity and association will probably mislead. This rule does not apply where the defendant, a corporation, chooses its own name and it appears that the name was selected with an intention to defraud. There the corporation is entitled to little consideration, for there is no reason for incorporators to choose a name likely to confuse, while there is reason for an individual wishing to trade under his own name. 55 See § 71. "Landreth v. Landreth, 22 Fed. 41-1884 (C. C. E. D. Wis.). Com- plainants, from 1873, sold peas in bags marked in blue ink, " Guaran- teed to Contain Landreth's Extra Early Peas, Provided the Seal is Un- broken," with the quantity " 1-4 Bus.", and the year. These goods under this label became well known to the trade and the public. In 1883, defendant began selling peas in bags bearing in blue ink, the inscription: " This Bag Contains Landreth's Ex- tra Early Peas. Provided the Seal is Unbroken " with the quantity " 1-4 Bus." and the year. Held, that al- though defendant was entitled to use his own name and pei'haps the phrase " Landreth's Early P^?.s " he was bound to differentiate his label clearly, in arrangement of words and general appearance from com- plainant's. Preliminary injunction granted. Clark Thread Co. v. Armitage, 67 Fed. 896-1895 (C. C. S. D. N. Y.), affirmed and modified 74 Fed. 896. Complainant was a New Jersey corporation created in 1865. Defendant was man- ager of " William Clark Thread Company," which was organized in New Jersey in 1S91, and sold cotton thread as "Clark's N-E-W Spool Cotton." Complainant alleged de- fendant was putting up thread in a way to lead purchasers to believe that they were buying a new brand of the complainant's thread. Defend- ant changed his name to " The Wil- liam Clark Company." " The chief incorporator was William Clark. He was at liberty to avail himself of whatever reputation he had gained as a thread maker while in the employ of the complainant, but it was unlaw- ful for him so to act that the public was deceived as to the true condition of affairs." The use of his name to name a corporation was " of doubt- ful propriety but for complainant's consent " (id. p. 901). The court was of the opinion " Clark's " had ac- quired a secondary meaning relating to thread and granted injunction against use of " Clark " or " Clark's." Valentine Meat Juice Co. v. The Valentine Extract Co., Ltd., 83 L. T. N. S. 259-1900, 17 R. P. C. 673. The Family Names or Surnames, as Trade Names. 155 § 77. Family Names as Corporate Names. — Family names are often used in naming corporations, and when the same family name is used in two corporations confusion and injury usually result. Sometimes this is the result of intent, some- times of accident, but more and more frequently the courts are finding some means of preventing the use of these corpo- rate names in such manner as to cause fraud and deception. A discussion of decisions of this character will be found in the chapter on Corporate Names. § 78. Rights of Descendants to the Family Name as Used in Business by an Ancestor. — The general principle is that confusion of the public and use of signs and advertisements calculated to make the public think one concern is another or its successor, is no sufficient reason for taking from sons " the right to continue the business to which they were bred and to use their own name in doing so. ' ' 56 So strong is plaintiffs were incorporated in Vir- ginia in 1871. Their product had been sold under some name of which the name " Valentine " formed a part. Until 1898 no other preparation con- nected with the name of Valentine was on the market. The defendant was incorporated in London, 1897. It was promoted by Charles R. Valentine. Its product was first sold as " Valen- tine's Valtine Meat Globules," the word Valtine being a shortening of word Valentine. Complainants alleged that defendants used the word '■ Valentine " in such a way as to de- ceive the public into the belief that the goods sold by the defendants were manufactured by the plaintiff. In- junction granted against the use of both " Valentine " and " Valtine." 66 Donnell v. Herring-Hall-Marvin Safe Co., 208 U. S. 267-74-1908. Duryea v. Manufacturing Co., 79 Fed. 651; 25 C. C. A. 139. One Duryea and his brothers were the controlling members of the Glen Cove Manufacturing Company, which for a long time made and sold starch in packages having thereon, in promi- nent letters, " Duryea's Starch." A picture of the manufacturing build- ings, together with the name of the corporation, also appeared on the packages, and the starch and the cor- poration became identified with the name. Thereafter the business was sold to another corporation, which continued the use of the words and pictures with its own name. Duryea, having subsequently withdrawn from the company, furnished capital to his sons, who thereafter procured other starch to be made for them, and sold it as starch " Prepared by Duryea & Co.," etc., without imitation of labels or packages. Held, that this was a proper use by Duryea and his sons of their own name, and could not be enjoined. See also National Starch Mfg. Co. v. Duryea, 101 Fed. 117- 1900 (C. C. A. 2d Cir.). 156 Unfair Business Competition. this right that a nephew who bore his uncle's exact name could not object to its use by another nephew who did not bear the uncle's name and who had equal right to the name otherwise. 57 The individual who first used the name as a trade name may dispose of it as he does of other property — by will ; and if he leave no will, it is dealt with by law as a part of his personal property. His descendants may inherit it. He may give it to one child to the exclusion of all the others or to someone entirely outside of the family, to the exclusion of all its members. In such cases it has been held that no one of the family can use the name to damage or injure the prop- erty of him who has acquired it. A person may dispose of the right to use his name as a trade name in connection with a particular article, in such a way as to prevent his children from using the name in selling that article. The Supreme Court of the United States in Don- nell v. Herring-Hall-Marvin Safe Co., 58 has held that, where a father, Hall by name, did business under a corporate name of which the name Hall was part, and the corporation and the corporate name was sold, the vendee is entitled to an in- junction against sons of said Hall, forbidding use of " any name, mark, or advertisement, indicating that the plaintiff (the son) is the successor of the original company, or that its goods are the product of that company or its successors, or interfering with the good-will brought from it" 49 57 Emerson v. Badger, 101 Mass. 82. corporation controlled by the Hall 68 208 U. S. 267-74-1908. family. The selling corporation was 69 Citing Howe Scale Co. v. WycJc- dissolved, and Edward C. Hall became off, Seamans & Benedict, 198 U. S. the president, and another son of the 118-1904; 49 L. ed. 972; 25 Sup. Ct. founder treasurer of the new com- 609; Singer Mfg. Co. v. June Mfg. pany, under contracts by which their Co., 163 TJ. S. 169-1895; 41 L. ed. services were secured for a certain 118; 16 Sup. Ct. 1002. Donnell v. period. Upon the termination of Herring-Il all-Marvin Safe Co., 208 these contracts the two sons organ- U. S. 267-1908 (Holmes, J.). The ized an Ohio corporation to engage Herring-Hall-Marvin Safe Company in a competing business of making was formed in 1892 to take over an safes. Donnell was the president of old business, founded by Joseph L. an Illinois corporation, the Hall Hall, of making safes, which had be- Safe & Lock Company, which, al- come well known as " Hall's Safes," though Donnell had been the selling the business being transferred bv a agent of the Herring-Hall-Marvin Family Names or Surnames, as Trade Names. 157 In the case of Herring-H all-Marvin Safe Co. v. Hall's Safe €o., G0 a contract of sale specified that along with the plant, patterns, stock of safes, accounts, papers, etc., it was intended to convey all " trade-marks, patent rights, trade rights, good- will, and all its property and assets of every name and na- ture," and agrees that the business " is taken over in all re- spects as a going concern. ' ' The question was as to the rights of sons of the original Hall, who founded the Hall business and the reputation enjoyed by " Hall's Safes." Held, that the " Hall's Safe & Lock Co.," a corporation founded by Hall (the stock of which belonged to his children and estate), achieved what reputation the name Hall enjoyed. The good- will belonged to that company. The sons, by this transfer, did not lose the right to use the name Hall in the safe business, if used with proper explanations accompanying their every use of it. An absolute prohibition against using the name Hall, it was held, would carry trade-marks too far. Therefore, the rights of the two parties have been reconciled by allowing the use, provided that an explanation is attached. The sons might have left the old company and set up for themselves. " They might have competed with it (the old company) ; they might have called attention to the fact that they were the sons of the man who started the business ; they might have claimed their due share, if any, of the merit in making Hall's Safes what they were, 61 but they would have been at the disadvantage that some names and phrases, otherwise truthful and natural Company, now began at the same made by the Herring-Hall-Marvin place and with the old sign, " Hall's Company. It does not appear very Safes," to sell the safes made by specifically just what use of the name the competing Ohio company organ- the court would have deemed admis- ized by the two sons. Held, that sible. The decree below had enjoined these sons and the company formed the marking or advertising of safes, by them had the right to use the name or the carrying on of business, with " Hall " in connection with their or under any name of which the word business and in describing their safes, " Hall " was a part. This decree was subject to the duty not to mislead the reversed. public by the form of any name, eo 208 U. S. 554-1908. sign, mark, or advertisement, into 61 White v. Trowbridge, 216 Pa. St. supposing them to be successors to 11; 64 Atl. 862. the old business, or their safes to be 158 Unfair Business Competition. to use, would convey to the public the notion that they were continuing the business done by the company or that they were in some privity with the established manufacture of safes which the public already knew and liked. To convey such a notion would be fraud and would be stopped. Therefore, such names and phrases could be used only if so explained that they would not deceive " c2 (id. p. 559). It has been held that the 82 Hardy v. Cutter, 3 U. S. Pat. Gaz. 468-1873 (as cited at 16 Phila. 182). Plaintiffs manufactured " Cut- ter's Whiskey," as successors, by purchase, of J. H. Cutter, and branded their barrels " J. H. Cutter — Old Bourbon." Defendant, a son of J. H. Cutter, also manufactured whiskey, marking it " J. F. Cutter, son of the late J. H. Cutter," etc. The marks resembled each other only in the use of the name " Cutter." Held, that defendant was entitled to use his own name in this way; injunc- tion denied. Van Stan's Stratena Co. Ltd. v. Van Stan, 209 Pa. St. 564- 1904; 58 Atl. 1064. Frederick Van Stan had invented a peculiar kind of cement which, for some time prior to 1876, he had manufactured and sold in England as " Van Stan's Stratena Co. Cement." In 1876 he transferred to one, who, in 1878, assigned to plaintiff the sole right to make and sell the cement in the United States, with the use of the name and trade- mark. In 18S9 defendant, Victor F. Van Stan, a son of Frederick Van Stan, came to the United States, was employed for some years by plaintiff, and became familiar with the business and the customers. He left plaintiff's employ and, after an interval, re- turned to Philadelphia, where he be- gan selling an article labeled " Vic- tor F. Van Stan's Cementive " and sometimes advertised as " Van Stan's Improved Cement." His circulars, labels, and wrappers were in various ways misleading. Held, that defend- ant was not entitled thus to use his own name in describing and advertis- ing his cement. Citing Russia Cement Co. v. LePage, 147 Mass. 206 ; 17 N. E. 304, and other cases. Robinson v. Storm, 103 Tenn. 40-1899; 52 S. W. 880. In ]S72 Dr. Mitchell prepared a cathartic formula which he put into the hands of Stever & Robinson, druggists, to perfect so as to make it palatable. Dr. Mitchell claimed no interest in the formula. He pre- scribed it, soon after he invented it, for Captain Storm, a citizen of wide influence, w T ho recommended it so generally that it soon acquired a wide reputation. Stever & Robinson, with his consent, then put it up and sold it as " Storm's Liver Regulator," out of compliment to Captain Storm. In 1873 Robinson bought out Stever and became sole owner of the formula. Captain Storm died, and his child, the defendant, asked Dr. Mitchell to aid him to acquire the formula that he might sell the medicine. The doc- tor declined. He then obtained an- other formula, which he put on the market as " Storm's Liver Regula- tor." Both labels have the catch words " Storm's Liver Regulator;" the bottles are of same general shape, the neck of defendant's bottles being a little longer than those of plain- tiff's. The recommendations on each Family Names or Surnames, as Trade Names. 159 fact that there was no person by the name of Chickering con- nected with the concern making Chickering pianos in Boston, gave no right to other persons who bore the same name, to set up a piano business and hold themselves out as being the only Chickerings making pianos, thus giving the impression that they were the rightful heirs of and successors to the name. 63 Similarly, an injunction has been granted forbidding a son from selling goods under the family surname when the father was using the name in the same business. This was the de- cision in Gouraud v. Trust,** where the defendants were sons of the plaintiff and plaintiff had been long engaged in selling a cosmetic called " T. Felix Gouraud 's Oriental Cream and bottle are not exactly the same, but similar. The cartons vary in color, but not enough to place purchasers on guard. On both cartons and labels the word " Storm's " is very prominent. Complainant's carton bad mortar and pestle, surrounded by black rim and words " Storm's," u Only the best," and " Prepared by Jas. S. Robinson, Apothecary, Mem- phis, Tenn." Defendant's carton had picture of Captain Storm and words u Storm's Liver Regulator," and " Prepared by eminent chemists for A. G. Storm," and " This is not the medicine put up by James S. Robin- son," and in this the word " Robin- son " is prominent. Held, it is suffi- cient that between the two labels there is a simulation " likely to deceive an incautious and ordinary purchaser." Decree forbade use of the words "Storm," "Captain Storm," and " Storm " in connection with words " Liver Regulator," and also the use of the description of how the medi- cine came into use, and Robinson's name on bottles, etc., and also forbade the use of Robinson's formula, etc. 43 Chickering v. Chickering & Sons, 120 Fed. 69-1903 (C. C. A. 7th Cir.). Two men named Chickering set up business in Chicago for manufacture of pianos. Chickering & Sons were in same business in Boston and had been since death of last Chickering connected with said company some years before. Defendants advertised a sketch of Chickering family and their " famous piano," concluding with this statement : " By right of purchase this name will continue to be used on the Boston Piano, but by reason of their kinship and because of their long practical training under the ' Chickering System ' the fact is j)roperly advanced that ' the only piano made by a Chickering ' is now made in Chicago by Chickering Brothers." The expression " The only piano made by a Chickering " was cast into their piano frames and inserted in their catalogues. Held, that injunction was properly granted restraining use of word Chickering on ground of unfair competition. 64 6 Thomps. & Cook (N. Y.) 133- 1875. 1G0 Unfair Business Competition - . Magical Beautifier." Defendants began to make a cosmetic they called " Creme Oriental by Dr. T. F. Gouraud's Sons." If a widow continues a business belonging to the decc. husband, it seems she cannot transfer the exclusive right to use the father's name to one of her sons to the exclusion of others, for all the children had equal rights to the use of the name. 65 The North Carolina courts have held that descendants of one Bingham, who established a " Bingham School " at Me- bane, N. C, can continue the school although another school called " Bingham School " had been established at Asheville; but that both schools could use the name because no confusion could arise as the schools are not in the same locality. 06 Ball v. Best* 7 had distinctly held such doctrine error, and it seems with good reason ; for while no doubt in years past, confusion would be quite unlikely, under modern conditions of easy com- munication and in view of the facilities of publicity offered by 65 Marshall v. Pinkham, 52 Wis. 572-18S1 ; 9 N. W. 615. 66 Bingham School v. Gray, 122 N. C. 699-1898; 41 L. R. A. 243; 30 S. E. 304. The Bingham School was established in 1793 by one Wm. Bingham, and in 1864 was incorpo- rated as The Bingham School. The charter provided : " Nothing herein contained shall prejudice the original and ultimate right of property in the name of said school pertaining to William Bingham as representative of the name and reputation of the school." The charter having expired Robt. Bingham had it again incorpo- rated in 1895. In 1875 Wm. Bing- ham died, left all his property to widow for life, then to children. De- fendants are his widow and children, who are now conducting a school at Mebane, N. C, (site of old school) under name " William Bingham School," and claim it was organized in 1793 and conducted by the Bing- hams since, and they have right to name Bingham School. Held, as de- fendants are widow and children of Wm. Bingham, and are on site of old school, they can use words " Bing- ham School " or " Wm. Bingham School." "That the plaintiff is in- corporated as the ' Bingham School ' does not give it the exclusive right to that name ; another corporation might be created by and operated under the same title, when not in the same lo- cality, in the absence of an intent to injure the first named corporation or to avail itself fraudulently of the other's good name and reputation." Citing Farmers' Loan & Trust Co. v. Farmers' Loan <£■ Trust Co. of Kan- sas, 1 N. Y. Supp. 44-188S; 21 Abb. N. C. 104. " Certainly there could be no confusion between a Bingham School at Asheville and one at Me- bane " (id. p. 707). Injunction denied. 67 135 Fed. 434-1905 (C. C. 111.). Family Names or Surnames, as Trade Names. 161 newspapers and periodicals, one of these schools might easily avail itself of the reputation of the other in the minds of the persons not familiar with local history and conditions. The right of a son to use his father's name and just how this right is curtailed by equity is shown in Frazier v. Dowling.™ Waterfill and Frazier (father of plaintiff) made " Waterfill and Frazier Whiskey." Frazier died. Appellees came into control of his business. Frazier 's son then formed a partnership with J. W. Waterfill, a cousin of his father's partner, to distill whiskey in another county. They marked their whiskey in various ways and finally began to mark it " Waterfill and Frazier, Distillers, etc.," the exact label of the old firm, and were enjoined from using this brand. Held, " that this combination did not represent the name of either of the partners in the new firm. If the sole object in using this combination was to tell the truth it does not do so any more than * * * " G. G. Frazier & Co.," or " J. M. Water- fill & Co.," both of which names this new firm discarded. Here, then, was an evident attempt by descendants to use a right to a father's name and a family name for the purpose of passing themselves off as persons they were not, as owning and carrying on a business they did not own and did not carry on. This question of Rights of Descendants is consid- ered in the chapter on Transfer. § 79. Summary. — Speaking generally, it may be said that the usual rules as to the tests of unfair competition apply to use of family names. The resemblance between two similar labels appeals to the eye ; a family name used as a trade name or part of a trade name appeals to the ear. The general look of a label, the " tout ensemble," as Judge Brewer calls it in Lorillard v. Peper, 09 is what the public remembers. It is the name in common use, the nickname, if you will, not its full name, that becomes the real name — for instance, " Baker Chocolate," not "Walter Baker & Co.'s Chocolate," becomes known to the public by advertising and by the merits of the goods, and purchasers remember that name. For Wm. H. M 39 S. W. 45-1897; 18 Ky. L. " 86 Fed. 956-1898 (at p. 960). Rep. 1109. 11 1G2 Unfair Business Competition. Baker to sell chocolate as " Baker's Chocolate " was to com- mit a fraud on Walter Baker & Co. The name used by the defendant may be almost an exact counterpart of that of the complainant, and yet no unfair competition results. 70 Again there may be many points of difference between them and yet the use of the defendant's name will be unfair. As for in- stance " Dr. Bull's Cough Syrup " was infringed by " Dr. B. L. Bull's Celebrated Cough Syrup." 70 Brown Chemical Co. v. Meyer, 139 U. S. 540-1890; 35 L. ed. 247; 11 Sup. Ct. 625. CHAPTER VII. Miscellaneous Business Names. Section 80. Introductory. 81. Business names as distinguished from marks, designs, devices, etc. 82. Difference between abstract names of objects and business names. 83. Secondary or acquired meaning. 84. Secondary meaning of semi-geographic names such as " Empire State," " Hoosier," etc. 85. Geographic limits in which secondary meaning becomes known. 86. Existence of secondary meaning a question of fact. 87. Names of goods intended for export. 88. Lord Kay's summary of the law of names. 89. Names considered as transitory or personal, and as local or fixed. 90. Phrases such as " Formerly with," and " Successor to," etc. 91. Signs. 92. Street addresses, etc. 93. Use of suffix " & Co.," etc. 94. Names of newspapers and magazines. 95. Names of plays, books, text-books, etc. § 80. Introductory. — The name of a thing and the thing itself are hardly distinguishable. It is seldom that they can be separated. Injure one and the other suffers. Lower the quality of the goods themselves and the name becomes less valuable. Apply the name to some similar but inferior article or to some different article of ill repute, and the value of the name becomes materially less. Trade names frequently are guarded with as zealous care as a name of a family. They may be libeled and slandered, misused and discredited just as personal names are libeled and misused. With the growth of trade, with the increase of transportation facilities, with the multiplication of means of making an article of trade known to the public, and equally with the multiplication of methods of quickly injuring its reputation, the law which governs the protection given to trade names has become more explicit and more fully denned. Underneath all this development, however, lies the same principle — so often [1(13] 1C-4- r.xi'Au; Business Competition. referred to before, that one must not pass off his goods as those of another — must not use his trade name in such a way as to give the impression that it is the trade name of another. § 81. Business Names as Distinguished from Marks, Designs, Devices, Etc. — It is to be remembered that trade names differ from tv