Montegut v. Hickson, Inc.

Shearn, J.: In the case of Burrow v. Marceau (124 App. Div. 665) Mr. Justice Ingraham, writing for a unanimous court, said: “ There is no hard and fast rule by which it can be determined when the court will interfere by injunction to prevent what is practically a fraud upon a person engaged in business by the unfair methods of competition. Each case must depend upon its own facts, but where it is clearly established that an attempt is being made by one person to get the business of another by any means that involves fraud or deceit, a court of equity will protect the honest trader and restrain a dishonest one from carrying out his scheme.” Although the facts in that case are wholly dissimilar from the facts in the case at bar, the principle thus broadly and tersely stated is one which should be decisive of this case. In the opinion of Mr. Justice Davis it is said: “Nor do I think that the deception by means of which the defendant obtained possession of plaintiffs’ models affects the question. ” To my mind, under the principle correctly laid down in the Burrow Case (supra), and under the law of unfair competition as generally understood, the deception employed is the very heart of the matter. It must be conceded that if the defendant obtained possession of plaintiffs’ models by bribing one of plaintiffs’ employees to furnish surreptitiously an opportunity to copy them, the [96] means employed would constitute unfair trade. (Tabor v. Hoffman, 118 N. Y. 31.) While the case supposed involves a violation of the duties growing out of the relation of master and servant, the resort to bribery is not condemned because it causes the servant to violate his duty to his master but because it is an unfair and dishonest trade practice. I agree that the defendant has a legal right to copy and to sell as its own creations the exclusive models designed by the plaintiffs if the models or an inspection of the models are procured by fair means, but I deny the right of the defendant to obtain plaintiffs’ trade by resort to fraud and deception practiced upon the plaintiffs at the instigation and hiring of the defendant. Paraphrasing the opinion of Judge Vann in Tabor v. Hoffman (supra), because an inspection of or possession of plaintiffs’ models may be possible by fair means, it does not justify obtaining the same by unfair means. Here the defendant not only obtained possession of the exclusive artistic creations of the plaintiffs by fraud and deception, but physically removed therefrom the plaintiffs’ trade -mark, exhibited the gowns to its customers and represented them to he its own importation created by persons other than the plaintiffs. The natural and intended result was to divert from the plaintiffs and appropriate by the defendant trade and custom that would otherwise go to the plaintiffs, for if the styles were popular and could only be obtained at the plaintiffs’ establishment the defendant could only obtain the custom of persons seeking these styles by obtaining the models and copying them. For this express purpose, and knowing that plaintiffs would only sell copies of these models to bona fide customers purchasing for personal use, the defendant con'ceived and put into effect its scheme of imposition and fraud upon the plaintiffs by procuring a person to misrepresent herself as a private customer, buying the gowns to wear herself, and thus misled and deceived the plaintiffs into turning over their models to the defendant. We are not concerned with the fraud practiced by the defendant on its own customers except in so far as it tends to brand the entire transaction and trade methods of the defendant as dishonest and fraudulent. While the relief asked for in the complaint is too bread, in my opinion plaintiffs are entitled to a judgment, assuming the [97] allegations in the complaint to be true, enjoining the defendant from exhibiting and selling gowns and capes which are copies of those obtained from the plaintiffs by means of fraud and deception, and, therefore, the order granting plaintiffs’ motion for judgment on the pleadings should be affirmed, with ten dollars costs and disbursements, with leave to defendant to withdraw the demurrer and to answer upon payment of costs in this court and in the court below. Laughlin and Dowling, JJ., concurred; Clarke,P. J., and Davis, J., dissented.