Falkinburg v. Lucy

By the Court, Sanderson, J.: This is an action to recover damages for an alleged invasion of the plaintiffs’ right of property in a-certain trademark, and to restrain the defendants by injunction from further use or imitation. Upon the filing of the complaint an injunction was issued and served, and thereupon the defendants filed their answer and moved to dissolve the injunction upon the complaint 'and the answer, with the exhibits thereto respectively attached. At the hearing the plaintiffs offered to read an affidavit made by one of them in contradiction of certain matters contained in the answer. To this the defendants objected upon the ground that the plaintiffs could not use affidavits in opposition to the motion unless the defendants first used them in support of the motion, which, as was claimed, had not been done. This objection was overruled, the affidavit heard, and the motion to dissolve finally denied. The appeal is from the order refusing to dissolve the injunction. . The grounds of alleged error are two: First—Admitting and considering the plaintiffs’ affidavit as above stated. Second—Befusing to dissolve the injunction. 1. In view of the conclusion which we have reached upon the second point we might pass the first without special notice; but it is asserted on the part of counsel that upon the first point no uniform rule prevails in the lower Courts, and a construction of the statute by this Court is asked, to the end that a uniform practice may be established. By the one hundred and thirteenth section of the Practice Act it is provided that an injunction may be granted, at the time of issuing the summons, upon the complaint; and at any time, afterwards, before judgment, upon affidavits. By the one hundred and eighteenth section it is provided that where an injunction has been granted without notice, the defendant may move to dissolve upon the complaint and affidavits upon which the injunction was issued, or upon the — 59 — affidavit of the defendant, with or without the answer; and, if upon affidavits, the plaintiff may oppose the same by affidavits or other .evidence, but not otherwise. In the code of Hew York this subject is regulated by the one hundred and twentieth section, which fills the place occupied by the one hundred and thirteenth section of our Practice Act, and the one hundred and twenty-fifth and one hundred and twenty-sixth sections, which together cover the ground embraced by the one hundred and eighteenth section of our statute. The one hundred and twenty-fifth and one hundred and twenty-sixth sections of the Hew York code are in all respects the same as the one hundred and eighteenth section of our Practice Act; but the one hundred and twentieth section of the former differs from the one hundred and thirteenth section of the latter; the latter allows an injunction to be granted upon the complaint, as such, while the former does not, but requires an ..affidavit where the injunction is issued at the time of commencing the action, as well as where issued afterward. With this exception there is no difference between the two statutes. Upon the question whether the plaintiff may use affidavits or other evidence in addition to those upon which the injunction has been granted in opposition to a motion to dissolve or modify, where the defendant rests his motion upon a verified answer, unaccompanied by any affidavits or other evidence on his part, there has been much conflict of opinion in the lower Courts of Hew York. So far as we are advised, the question has never been settled by the Court of Appeals. The negative is supported by the following cases: Merrimac Manufacturing Company v. Garner, 2 Abb. 318; 4 E. D. Smith, 387; Blatchford v. New York and New Haven Rail Road Company, 7 Abb. 322; Servoss v. Stannard, 2 Code R. 56; Hartwell v. Kingsley, 2 Code R. 101; 2 Sandf. 674; Benson v. Fash, 1 Code R. 50; Roome v. Webb, 1 Code R. 114; 3 How. 327; Milliken v. Carey, 3 Code R. 250; 5 How. 272. And the affirmative by the following: Krom v. Hogan, 2 Code R. 144; 4 How. 225; Schoonmaker v. Reformed Dutch — 60 — Church, 5 How. 267; Hascall v. Madison University, 1 Code R., N. S., 170; Jaques v. Areson, 4 Abb. 282; Hollins v. Mallard, 10 How. 540; Fowler v. Burns, 7 Bosw. 637. In the case last cited the question was maturely considered, and the conclusion reached that if the defendant moves upon a verified answer the plaintiff may oppose the motion with new and additional affidavits. This diversity of opinion was due, doubtless, as suggested in Fowler v. Burns, to the mistaken notion on the part of some members of the bench and bar, that it was not intended by the code to change the practice, in this respect, which had previously existed in that State. It was settled prior to the code, under the chancery practice of that State, that where the defendant moved upon bill and answer only, the plaintiff could not read affidavits. (1 Johns. Ch. 211; 2 Johns. Ch. 202; 4 Johns. Ch. 26; 1 Paige, 164; 4 Paige, 111.) Familiarity with that practice, doubtless, led to its continuance in many cases under the code. We consider the rule stated in Fowler v. Burns, supra, to be a correct exposition of the statute. The law of the question we hold to be as follows: The plaintiff is entitled to an injunction at the time of issuing the summons upon the complaint alone if it makes a proper case and is verified in the manner stated in the one hundred and thirteenth section; but if he asks for an injunction at any time thereafter he must do so upon affidavits. If the injunction has been granted without notice to the defendant, he may move to dissolve, first, upon the complaint and affidavits, or, in other words, the papers, whatever they may have been, upon which the injunction was granted; or, second, upon the papers upon which it was granted, and affidavits on the part of defendant, with or without the answer. If the defendant rests his motion upon the papers upon which the injunction was granted, the plaintiff can make no further showing, but must stand upon his complaint, or his complaint and affidavits, as the case may be. If, however, the defendant makes a counter showing by affidavit, with or without the answers, — 61 — the plaintiff may meet it with a further showing on his part. It will be observed that the defendant is not allowed to move upon the answer with or without affidavits, but upon affidavits with or without the answer; hence, if he moves upon what he has prepared as his verified answer, he makes it an affidavit in the sense of the statute for all the purposes of his motion, and he cannot deprive the plaintiff of his right to reply, by calling it an answer instead of an affidavit. Under the old chancery practice, as already suggested, the defendant could move upon bill and answer, and if he did so, the plaintiff could make no further showing. This rule made it necessary for the plaintiff to anticipate the defendant’s case and annex to his bill affidavits, more or less numerous, according to circumstances, designed to meet it. This was imposing upon the plaintiff* labor which might prove useless. It was also contrary to the more orderly and logical mode of getting at the case. "We, therefore, consider that it was the intention of the framers of the Hew York code to relieve the plaintiff from the necessity of anticipating the defendant’s case, and to adopt the more orderly and logical practice of requiring the plaintiff, in the first instance, to make a prima, facie case only, and giving him an opportunity to meet the defendant’s case after it has been presented. 2. The plaintiffs’' label commences with a highly colored picture, representing a washing-room, with tubs, baskets, clothes lines, etc. There are two tubs painted yellow, at each of which stands a female of remarkably muscular development, with arms uncovered, and clad in a red dress, which is tucked up at the sides, exposing to view a red petticoat with three black stripes running around it near the lower extremity. Each is apparently actively engaged in washing, and clouds of steam are gracefully rolling up from the tubs and dispersing along the ceiling. In the background is extended across the room a clothes line, upon which are suspended stockings, and other undergarments, which have evidently just been put to use in testing the cleansing properties of the plaintiffs’ washing powder. To the left of the — 62 — washerwomen stands a lady in a yellow bonnet, red dress, green Congress gaiters, and hoops of ample circumference; upon her left arm is suspended a yellow basket; and in her left hand, which is encased in a red glove, is held a red parasol; while the right hand, which is encased in a green glove, is gracefully extended towards the nearest washerwoman in an attitude of earnest entreaty. In the immediate foreground is a yellow and green clothes basket, full of dirty linen, and a yellow and green soap packing box, upon which are printed in small capitals, the words: “Standard Co.’s Soap.” Each washtub is supported by a four-legged stool—some of the legs being yellow, some red, some green, and some all three. The floor of the room, as to color, is in part of a yellowish green, and in part of a greenish red, while the walls are of a grayish blue. This is but an imperfect description of the picture with which the plaintiffs’ label is adorned. The design is good, for it is eminently suggestive of the character of the plaintiffs’ goods. Over the top of this picture are printed, in large capitals, the words “ Standard Soap Company;” at the right the word “Concentrated;” at the left “Erasive,” and at the bottom, in still larger type, the words “Washing Powder”—completing the following legend: “Standard Soap Company Concentrated Erasive Washing Powder.” Hext follows laudatory remarks and directions for use; also, directions for making soft soap by dissolving the washing powder in water; also, a statement as to the different packages in which the powder is put up, concluding with a designation of the place where the powder is manufactured, in the following form and words: MANUFACTURED AT Ho. 207 COMMERCIAL STREET, Bet. Front and Davis—Concrete Building, San Francisco. The label is upon buff paper, and all the printed matter .is ' in black ink. — 63 — The defendants, have two labels, one of which commences with the figure of a parallelogram, made by two red lines, the inner one light and the outer one heavy. Inside are printed the following words, in large type: “Lucy & Hymes’ Excelsior Washing Powder,” followed by the words “Lucy & Hymes,” in script, with the words “none genuine without our signature,” added in type—all in blue ink except the words “washing powder,” which are in red ink. FText follows a copy of the plaintiffs’ label down to the place where the place of manufacture is given, which is as follows: manufactured by LUCY & HYMES; Factory—Beale Street, between Mission and Howard, San Francisco. Office—No. 319 California Street. All below the parallelogram is printed in blue ink, whereas the plaintiffs’ label, as already stated, is printed in black ink. At the foot of the plaintiffs’ label are the words “trade mark secured,” whereas no such words are upon the defendants’ label. The other label of the defendants is substantially the same, except that instead of the matter in type and script, the parallelogram incloses a picture representing an enthusiastic young man, with head uncovered, and hair blown out behind by what one, judging of causes by their effects, might suppose to be a strong breeze. He is dressed in a blouse, tights, and top-boots; in his right hand he bears a banner, upon whose folds, as they flutter in the breeze, appears, in large type, the word “Excelsior.” His left arm is extended upward and pointing toward the summit of a high and precipitous mountain, which towers in front of him, and which, as his bearing indicates, he proposes to climb. The principal colors used in this cut are blue and white. On the right of the picture is printed “Lucy & Hymes’;” on the left — 64 — “Excelsior,” and underneath “Washing Powder”—making the legend “Lucy & Byrnes’ Excelsior Washing Powder,” all in red ink. The signature of the defendants in script, and the words, “Bone genuine without our signature,” inclosed in the parallelogram in the other label, appear in this at the foot of the directions for the use of the compound. From the foregoing it will be seen that the labels are the same in three respects only—the words “Washing Powder,” the directions as to use, and mode of making soft soap, and the color of the paper upon which they are printed. In all other respects they are unlike. /By the common law the manufacturer of goods, or the vendor of goods for whom they have been manufactured, has a right to designate them by some peculiar name, symbol, figure, letter, form, or device whereby they may he known in the market as his, and be distinguished from other like goods manufactured or sold by other persons. The owner of such peculiar marks, provided they are original with him, will be protected in their exclusive use by the Courts; but only so far as such marks serve to designate the true origin or ownership of the goods to which they are attached. He will not be protected in the use of figures or symbols, or combinations of words which serve merely to indicate the name, kind, or quality of the goods to which they are attached, notwithstanding they may be interblended with others which indicate origin and ownership. , (Fetridge v. Wells, 4 Abb. Pr. 144; The Amoskeag Mfg. Co. v. Spear, 2 Sandf. S. C. 599; Stokes v. Landgraff, 17 Barb. 608.) This rule obviously follows from the admitted policy upon which the law in relation to trade marks is founded, which is twofold—to protect purchasers from the fraud and imposition of persons who may seek, by false representations, to dispose of inferior goods of their own manufacture as those of a superior quality and established reputation manufactured or sold by other parties, and to secure to every manufacturer the merited fruits of his own industry and inventive skill, without, howpver, creating a monopoly or interfering with — 65 — the right of every one to manufacture or sell the same kind of goods. The plaintiffs claim their entire label as their trade mark, and ask to be protected in the use of it as a whole; but it is clear that the common law gives no countenance to such a claim. Only so much of their label as serves to indicate that they are the manufacturers or vendors of the washing powder can be considered as constituting the legitimate characteristics of a common law trade mark. Hence, for the purpose of determining whether the conduct of the defendants has been actionable at common law, all that portion of the plaintiffs’ label which relates to the name of the compound in, question, its mode of use, laudation, and soft soap, must ba discarded, as constituting, in a common law sense, no part' of a trade mark. Indeed, it may be doubted whether the picture can be considered as matter of trade mark. In Partridge v. Menck, 2 Sandf. Ch. 622, both labels were embellished with a woodcut of a beehive, yet the preliminary injunction was dissolved. The injunction was also dissolved in the case of the Merrimack Mfg. Co. v. Garner, notwithstanding the words used were inclosed in a floral wreath in both labels. (4 E. D. Smith, C. P. R 391.) We shall, however, treat the picture of the washroom and its occupants as a part of the plaintiffs’ trade mark. It follows that the only parts of the plaintiffs’ label which can, by the common law, bo considered as constituting their trade mark are the picture of the washroom, with its implements and occupants, the legend by which it is surrounded, with the exception of the words “Washing Powder,” and the words designating the place of manufacture. Applying the same erasing process to the defendants’ label and we have left only the words “ Lucy & Hymes’ Excelsior Washing Powder” in type, followed by a repetition of their names in script, and terminating with the words “Hone genuine without our signature;” all inclosed in a parallelogram made by two red lines, and. the words designating the factory — 66 — and address of defendants in the one, and the same in the other, with the picture already noted added. How compare the two, and it is manifest that the charge of piracy or colorable imitation, tested by the common law, -- is without the slightest foundation. The plaintiffs have a highly colored and suggestive-pictorial embellishment; the defendants have none in one, and a very different one in the other label. The plaintiffs call their compound “The Standard Soap Company’s Concentrated Erasive "Washing Powder;” the defendants call theirs “ Lucy & Hymes’ Excelsior Washing Powder.” The plaintiffs state that their compound is MANUFACTURED AT NO. 207 COMMERCIAL STREET, Bet. Front and Davis—Concrete Building, San Francisco. The defendants, that theirs is Manufactured by LUCY & HYMES, Factory—Beale Street, between Mission and Howard, San Francisco. Office—No. 319 California Street; There is not a mark, device, symbol, or word, denoting origin or ownership, common to both. Ho one could mistake the modest parallelogram of the defendants for the highly colored pictorial wash-house of the plaintiffs. Ho one could mistake the defendants’ young man in a blouse and.tights, climbing a mountain with a banner in his hand, for the plaintiffs’ washerwomen in red petticoats, with their arms in a washtub and their heads enveloped in clouds of steam. Ho one could mistake the defendants’ legend— “ Lucy & Hymes’ Excelsior Washing Powder ”—for the plaintiffs’ “Standard Soap Company’s Concentrated Erasive — 67 — Washing Powder,” or at least only such persons as no amount of legislative care could protect from blunders and mistakes. The only matter common to both is the name of the article— “Washing Powder”—in which, as already stated, the plaintiffs can acquire no exclusive property, because it is the name by which compounds of like kind are known in the market, and which every person has an equal right to use. ISTo right of the plaintiffs which has its foundation in the common law has, therefore, in our judgment, been violated or intruded upon by the defendants. The plaintiffs, however, ground their cause of action, in part, if not mainly, upon the statute of this State in relation to trade marks, of which'they have secured the benefit; and claim, that by virtue of the statute, they have rightfully incorporated in their trade mark, as a part of it, matter which denotes the peculiar kind, character and quality of the compound to which it is attached, and may, therefore, claim for it the same measure of protection which the common law accords to matter which denotes origin and ownership. The first section of the statute reads as follows: “When a person * * * uses any peculiar name, letters, marks, devices, figures, or other trade mark or name, cut, stamped, cast or engraved upon, or in any manner attached to, ór connected with any article, or with the covering or wrapping thereof, manufactured or sold by him, to designate it as an article of a peculiar kind, character or quality, or as an article manufactured or sold by him, * * * it shall be unlawful for any other person, without his consent, to use said trade mark or name, or any similar trade mark or name, for the purpose of representing any article to have been manufactured or sold by the person rightfully using such trade mark or name, or to be of the same kind, character or quality as that manufactured or sold by the person rightfully using such trade mark or name.” The second section prescribes how the benefits of the — 68 — statute may be secured. Subsequent sections prescribe remedies and penalties for a violation of the statute, among which are damages and injunctions. It is claimed, on the part of the plaintiffs, that the matter already noted as common to the labels of both parties, indicates the “kind, character and quality” of their compound in the sense of the statute, and is, therefore, protected by it. This common matter reads as follows: “SAVES LABOR AID TIME. “Directions for Washing:—For washing of forty or fifty pieces: “1st. Take two pails of water, and put therein one fourth of this package, or a quarter of a pound of powder. “ 2d. Bring the water to a boiling heat. “ 3d. Pour this boiling water or solution on the clothes and let them soak for half an hour or more, and while they are soaking stir them briskly with a staff or dasher three or four different times. “4th. Wring them out, rubbing the soiled spots slightly. “ 5th. Put them in the boiler, adding two or three teaspoonsful of the powder. “After boiling three minutes, remove them, rinse them well in two waters, blueing the second water. “This powder, used according to the above directions, saves one half the labor, and the clothes will come out beautifully clean and white. “Warranted not to rot or injure the clothes. “ This washing powder also contains all the requisite properties to make a fine soft soap. “ Give it a trial and judge for yourself.” “Directions for Making Soft Soap.—Dissolve the contents of a one pound package in four quarts of boiling water. When thoroughly dissolved, add sufficient water to make two gallons; or, should you desire to make the soap thinner, add water at pleasure. — 69 — “ Put up in one pound packages, twelve and twenty-four in a box; and in ten pound boxes, in bulk. “Ho person will be without this valuable compound after once having given it a trial. “Adapted for hard and salt water. Superior for washing fine goods. “Woolens without shrinking. “ Ho soap is required with these powders.” Then follows the place of manufacture, after which comes the following: “These powders may be used in the place of soap, wherever soap is required, and will be found more convenient and economical for washing woodwork, dish-washing, etc. A little experience in using it will enable a person to judge of the quantity required.” Does the foregoing, or any part thereof, constitute the “peculiar name,” “peculiar letters,” “peculiar marks,” “peculiar device,” or “peculiar figures,” mentioned in the statute? What does the statute mean by a “peculiar name, letter, mark, device and figure ?” We do not understand it to mean the proper and established name by which the compound or goods are known in the market. It must be something new, not before in use—something of the manufacturer’s own invention, or first put to use by him—something peculiar to him, and not common to him and others— not something indicating the actual kind, character, or quality of the compound; as, for instance, the ingredients of which, and the proportions in which, it is compounded, or the various uses to which it may be put, or the effects produced by it, but something extrinsic, not indicative—something intrinsically foreign to the compound itself, and which serves to designate it only because it has been fancifully put to that use, in disregard of all natural relations; as, for example: “Merrimack Prints,” “Clubhouse Gin,” “Old London Gin,” “Genuine Yankee Soap.” Here the names do — 70 — not denote the intrinsic qualities of the article; they .are fanciful names, by which in time the article may become ■ known, and its “kind, character and quality” be designated in the sense of the statute. Without any intrinsic relation to prints, the word “Merrimack” is made, by adoption and use, to designate prints of a certain kind, character and quality, in the sense of the statute. So of “Clubhouse,” “ Old London,” and “ Genuine Yankee.” That the statute was not intended to protect parties in the ■ use of proper and established names, or words, or combinations of words, intrinsically indicative of kind, character, and quality, must be conceded when it is considered that everything must of necessity have a name and be possessed ' of certain qualities which certain words most aptly and properly describe; and that no person can have an exclusive property in such name or words who has not also an exclusive property in the thing itself to which they are applied. The statute vests in the manufacturer or vendor, as the case may be, no exclusive property in the thing manufactured or sold; and if it did, it would be so far void, for the want of power in the Legislature. The plaintiffs having no patent for the manufacture and sale of the compound in question, the defendants have an equal right to manufacture and sell it, and by parity of reason, and of necessity, an equal right to use its proper name and designate its qualities by any apt and proper words, notwithstanding the plaintiffs may be using the same. Such name and such words are not “peculiar,” in the sense of the statute; on the contrary, they are the common property of all persons having occasion to use them. If, as claimed by the plaintiffs, the statute, means that a manufacturer or vendor of goods may describe their intrinsic qualities in words in common use, and, upon filing his label . in the office of the Secretary of State, secure an exclusive right to such or any similar description, the privilege ; attempted to be conferred by it is equivalent to a perpetual copyright, and the monopoly created is more durable than a — 71 — patent right—neither of which has the Legislature the power to grant. • Under such a reading, the miller who manufactures different qualities of flour may describe them in his label as “middling,” “fine” and “superfine,” and thus prevent all other millers from using those words for a like purpose. The compounder of pills may apply to them the term “ anti-bilious,” and thereafter no other compounder of pills can use it. If, as claimed by the plaintiffs, mere directions for use indicate quality, and may, therefore, be the subject, under the statute, of exclusive property, no one but the plaintiffs can manufacture and sell the powder in question, because no one else can be allowed to give the same or similar instructions for its use; yet they have no patent. The vendor of medicines, who first files his label in the office of the Secretary of State, with the usual instructions: “To be taken before eating;” “To be taken before going to bed;” “ To be well shaken before taken,” and so on to the end of the catalogue, may acquire an exclusive right to all the usual instructions which must necessarily accompany medicines, and thereby monopolize the trade. "What may be the precise meaning of the statute, it is not easy to say. If it goes beyond the common law, and embraces within its protection matter which relates to kind, character and quality, we are unable to perceive why it does not trench upon the law of copy and patent rights, and is not, therefore void. It certainly does, if for that purpose it goes beyond fanciful and extrinsic terms, as above stated. Whether such terms, even, so far as they indicate kind, character, or quality only, can be protected, is most doubtful. We are inclined to think that the matter in relation to kind and quality was inadvertently incorporated in the statute, under a mistaken notion of the functions of a trade mark, and that, in that respect, the statute can have no intelligible operation; but it is unnecessary, for the purposes of the present case, to finally determine its meaning; for, as we have already seen, there are no “peculiar names, marks, — 72 — etc.,” denoting kind, character or quality, in the plaintiffs’ ■label, in the sense of the statute, whatever that sense may be, which the defendants have copied or imitated. The. nearest approach to terms denoting kind and quality are the words “ concentrated ” and “ erasive,” neither of which is used by the defendants. The injunction should have been dissolved, and the Court below is directed to enter an order to -that effect.