Meneely v. Meneely

Miller, P. J. The plaintiffs claim that the use of the defendants’ firm name of “Meneely & Kimberly” in conducting their business of bell founding, in the city of Troy, is an infringement upon the plaintiffs’ right to use the name of " Meneely ” as a trade-mark in their business at West Troy, which was established by the father of the plaintiffs and of the defendant, “ Meneely,” and the plaintiffs themselves in the same business, and has become a trade-mark of great, celebrity and value. The law favors the protection to manufacturers of any trade-mark, name or symbol, which distinguishes their goods from others so far as the ownership is concerned, and will interpose its strong arm to restrain those who attempt to appropriate this species of property, by fraud or improper — 549 — practices, to the detriment or injury of others who have acquired a right to the same. In the case at bar, the defendants have not used the firm name of the plaintiffs or any name by which it has been heretofore known or designated, but the name of “ Meneely & Kimberly,” as constituting a copartnership while engaged in the same business as the plaintiffs have for a long period of time carried on. 'The objection is to the employment of the name of “Meneely” in connection with the same business as the plaintiffs, at the place where the defendants are located, which0is the city of Troy, on the opposite side of the Hudson river from where the plaintiffs are situated. Although the complaint alleges that the defendants established a bell foundry with the intention to injure the plaintiffs and deceive the public, the referee does not find any such intent, or that the defendants were guilty of any fraud, dishonesty or deceit. It is true he finds that the defendants expected and intended to derive profit and advantage from the use of the name employed, and that the name of “Meneely” was calculated to and did mislead persons not personally acquainted with the parties or the several localities, and is injurious to the plaintiffs’ business of bell making; but no intentional wrong is attributed to the defendants. As there was no bad intent found as a matter of fact, the use of the name must necessarily have been innocent. Corwin v. Daly, 7 Bosw. 233. The question then arises whether the defendants are liable to be enjoined without having done any wrongful act, and merely because they assumed to use the name of one of them in connection with a business in which the ancestor of that defendant and of the plaintiffs had been engaged, and which by a life of industry and toil, and by skill, he had made profitable, and an invaluable inheritance for his posterity. The right to the enjoyment of a good name, personally or in connection with a business established by the labor and integrity of an ancestor, is an inestimable privilege, which cannot be too highly prized. As a general rule, every individual is entitled to the full benefits and advantages which such a privilege confers, and should not be deprived of the same by the interference of the courts, except in extraordinary cases and for the most cogent of reasons. Hor does there appear to be any justice or equity in allowing some members of a family, whose paternal name and business reputation has been transmitted to them, to enjoy an entire monopoly of its fruits to — 550 — the exclusion of others. The defendant Clinton H. Meneely claimed the right to profit from the name which he inherited and the good reputation which his father had earned in the business of bell founding. He was open and above board in declaring his intention thus to derive advantage, and formed a copartnership and conducted his business with the expectation and belief that profit would accrue to him by reason of the good name and celebrity which had attended his lather’s successful career. I am inclined to think that in this respect he committed no wrong, and that he had a perfect right to use his own name in his own business, even although that name was the same as the one used by the plaintiffs and the business precisely of the same character. It would, it seems to me, be extremely inequitable to allow some members of a family to deprive others of the rights acquired by a common inheritance, and to say that the family name should not be employed by one because it might interfere with others — in other words, to deprive a man of the right to earn a livelihood in the name of his father and in the pursuit of the only business which that father had been engaged in or the son had been instructed to follow. The law does not sanction any such injustice, and so far as I have been able to discover, none of the reported cases go to the extent of holding that a court of equity will interfere to prevent the use of a family name in the pursuit of a lawful business under circumstances similar to those which are presented in the case at bar. In most of the cases, and I am inclined to think there is no exception to this rule, the power of the court has only been interposed where there has been fraud or deceit practiced, or where some false or fraudulent device has been employed to injure and interfere with the business of another and to impose upon the public. A brief reference to some of the leading cases which are relied upon will, I think, sustain this view. In Sykes v. Sykes, 3 B. & C. 541, the action was to restrain the defendant from the use of the words “ Sykes’ Patent ” in the manufacture of powder flasks. The declaration alleged fraud and deceit. The plaintiff had a patent which had been adjudged invalid on account of a defect in the specification ; but the plain tiff afterward continued to use the same mark on his manufactured articles. The defendants imitated his, plaintiff’s stamp, and the goods were sold by retailers as articles manufactured by plaintiff. A verdict for the plaintiff was sustained — 551 — upon the ground that the substance of the declaration was proved, and that the goods were sold for the express purpose of being resold as goods of the plaintiff’s manufacture. The case was not analogous to the one at bar, for it showed the entire appropriation verbatim of a trade-mark, and was decided upon the ground that there was fraud. In Croft v. Day, 7 Beav. 84, the defendant, Day, having obtained the consent of one Martin to use his name, set up the trade of a blacking manufacturer, with labels having a general resemblance to those of the original firm of Day & Martin, whom the plaintiff represented. The defendant was a nephew of Day, one of the members of the old firm, who was deceased, and the Master of the rolls held, that while the defendant had a right to the use of his name, he had no right to use it at the expense of Day’s estate, or in such a way as to deceive and defraud the public, and to obtain for himself, at their expense, an undue and improper advantage. The fraud in this case was quite manifest, not only in using the name of Martin, who was not a member of the firm, arid the imitation of labels of the old firm, but in substituting Holborn Hill for High Holborn, both meaning the same street, as the place of business of Day. In Holloway v. Holloway, 13 Beav. 209, the plaintiff sold a medicine as “ Holloway’s Pills,” and the defendant, his brother, Henry Holloway, commenced selling pills as “ H. Holloway’s Pills,” in boxes similar to the plaintiff’s, with a view of passing off his pills as plaintiff’s. It appeared that the defendant had given the printer copies of plaintiff’s directions, papers, etc., with the design of imitating them, and the decision was placed upon the ground that the defendant intended to deceive the public and make them believe that he was selling the plaintiff’s pills. In Burgess v. Burgess, 17 Eng. Law & Eq. 257, an injunction was refused as to the use of the name of an article, and the doctrine is laid down that where two persons have the same name, it does not follow that because the defendant sells goods under his own name, and the plaintiff has the same name, that he is selling them as the goods of the plaintiff. Without examining particularly all the English cases, I think it may "be said that in none of them is a party restrained from the use of his own name, unless that party is brought within the rule already laid down. See Rodgers v. Norvill, C. B., 5 Man., Gr. & Scott, — 552 — 109; Taylor v. Taylor, 23 Eng. L. & Eq. 281; Perry v. Truefitt, 6 Beav. 66; Schweitzer v. Atkins, 46 Eng. L. J. R. Ch. (37 N. S.) 847. The same remarks will apply to the American cases, and the right. to use the name of a person, although it was the same as another, has been upheld. In Clark v. Clark, 25 Barb. 77, a party was restrained from using the same trade-mark as another, but it was said that two persons of nearly the same name being engaged in the same business, each had the undoubted right to use his own name, and to describe the article which he sells by his well-known name. In Faber v. Faber, 49 Barb. 357, an injunction was dissolved restraining the defendant from using his own name, although it was the same as the plaintiffs, and it was said by Sutherland, J., that “it is easy to see that this circumstance may be an injury to the plaintiff, but the defendant, Faber, has a right to use his own name,” * * * “ and any injury which the plaintiff has suffered, or may suffer, by such use of the defendant Faber’s name merely, must be viewed as an injury without a remedy.” In Howe v. Howe Machine Co., 50 Barb. 236, an injunction was dissolved restraining the defendant from the use of the plaintiff’s name. It was said by one of the judges that the surname could not be used in such a way as to deceive the public, and deprive the plaintiff of the benefit of the notoriety which his machines had gained, and another concurred, upon the ground that there was no fraud upon the plaintiff in the use of the name. In Stonebraker v. Stonebraker, 33 Md. 252, the evidence of an intent to deceive was manifest, and the defendants enjoined from manufacturing or imitating the plaintiff’s medicines, and from counterfeiting his labels, marks, etc., but no restraint was put upon the use of Stonebraker’s name. In Holmes v. Holmes, 37 Conn. 278, there was also a question of fraud- as well as an element of a contract or an estoppel. While there are cases where the appropriation of a trade-mark which misleads the public will demand the granting of an injunction (Amoskeag Manuf. Co. v. Spear, 2 Sandf. 599), I am not prepared to assent to the doctrine that fraud or a wrongful intent is to be presumed from the mere fact of using one’s own name, which is, the same as that of another, or that a person cannot do so where there is even a tendency to injure another or to impose upon the public. The true rule is well stated in Wolfe v. Burke, 7 Lans. 151-156, by Gilbert, J., who remarks: “A man cannot make a trade-mark of — 553 — his name, to the exclusion of a like use of it by another who bears the same name, if the use by the latter is fair and unaccompanied by any contrivance to deceive.” Brown on Trade-marks, at page 143, lays down the following doctrine: “The rule is, that a man cannot turn his name into a trade-mark. Any other rule would lead to the most absurd consequences. There are several dicta the other way; but they must be attributed to a loose habit of speech, or a want of acquaintance with the indispensable requisites of the technical mark.” See, also, pages 246 and 314, and pages 329, 402, 403,' where numerous cases are cited which sustain this position. In the cases cited the degree of similarity and the imitations were far more apparent and distinct than in the case at bar, and it is worthy of observation and especial attention, that here the defendants only employed the surname of one of them, which one alone is of the same character as the plaintiffs’, or bears any similarity to their name or any of the various cognomens, some forty in all, by which they have been designated by their numerous business correspondents. It would be a far-reaching extension of the powers of a court of equity, to grant an injunction which would protect the plaintiffs in the use of all the different names by which they have been in the habit of being addressed by their customers. There is no adjudged case which has protected trade-marks to such an extent, or even struck out the name of a single member of a firm because it was similar to another engaged in the same business. The partnership name here was “Meneely & Kimberly,” and the plaintiffs’ firm name “ E. A. & G. B. Meneely,” and there is no such resemblance as would of itself either tend to deceive the public or indicate a fraudulent purpose. The name of “Meneely” could not have been used with apparently less design to commit a fraud, unless Kimberly’s name was placed ahead of it, which I think was not required. The location of the defendants’ business at Troy was not of itself evidence of an attempt to deceive the public, or an interference with plaintiffs’ rights. It was in a different city and county, across a river, some distance from plaintiffs’ and the center of a manufacturing business of various kinds, where there was a market for this kind of manufactured property and where at least one other bell foundry was in existence. If the defendants had no right to locate at Troy, then it would be difficult to prescribe the limits within which they could establish a business. If distance is to be consid — 554 — ered, then they might be driven not only from the immediate vicinity of the plaintiffs, but beyond the limits where the name of Meneely was known or had acquired a reputation. The referee has found that the catalogue issued by the defendants, in the order in which it treats of bell founding and other matters, is in most if not all respects like the plaintiffs’ catalogue, and the illustrations in most instances resemble but in some instances are strikingly different, and that the language is different. The similarity is certainly not very marked, and not so distinct as to make it appear that there was an intention to appropriate the plaintiffs’ work for the benefit of the defendants. In presenting a subject of this character, and a business of the same nature, it is not difficult to see that there must necessarily be strong resemblances in many points, and hence it is not entirely clear that an infringement has been made upon the plaintiffs’ rights in this respect. That the illustrations of bells are similar is by no means strange, as they are very much alike in most of their leading features, and it is not claimed that the plaintiffs enjoyed an exclusive right to manufacture any of the various kinds of bells of which illustrations are given, as against other persons engaged in the same kind of business. It would be impracticable to illustrate certain kinds of bells which are alike, without marked resemblance. Take, for instance, the great bell of Moscow, which must necessarily be alike in order to present an accurate representation off the same. The same remark will apply to most kinds of church as well as other bells: But the plaintiffs- claim nothing in their complaint on this account. They do not allege any imitation of plaintiffs’ trade-mark by impressing or marking the same upon the defendants’ bells, nor any imitation of the plaintiffs’ catalogues, or ask relief for any such reason. In fact a catalogue or advertisement cannot constitute a trade-mark. Candee v. Deere, 54 Ill. 439. The plaintiffs’ counsel insists that Clinton H. Meneely, by the acceptance of the benefits and acquiescence in the terms of his father’s will, is estopped in equity from appropriating the reputation founded on the good will of his father’s business for his own benefit. There is quite a distinction between appropriating the good will of the business of a deceased father carried on at a particular locality, and enjoying the benefit of his name and reputation as a man of skill and fair dealing in the business in which he was engaged. And there is, in my opinion, nothing in the language — 555 — of the will which confers upon the plaintiffs the exclusive use of the name of Meneely in the business of bell founding, or which precludes the defendant Meneely from engaging in the same kind of business in another locality. It should be a clear and explicit provision, which would preclude a child from the enjoyment of his father’s name and fame, and from earning a livelihood within the limits where such reputation was known and acknowledged. Ho such condition is made in the will by which Clinton H. Meneely surrendered any right which he had by .the acceptance of the bequests made for his benefit, nor is any such intention manifested by the testator. The bequest to Clinton was unconditional and without any restriction upon him. In fact, he was at the time of his father’s decease an infant, and it does not appear that the provision in his behalf was any more than an equal share of the large and valuable property, most of which he had given to the plaintiffs. The intention, therefore, to confine the use of the testator’s name to the plaintiffs is not supported by evidence, and is not to be inferred from the facts and circumstances presented. Even if the testator had a right to confer the exclusive right to the use of his own individual name, it may well be doubted whether his proprietorship extended so far as to prevent his son from the fair and honest employment of his own name in the prosecution of a lawful business in the manufacture of bells. As long as no fraud or deceit was practiced, or false or fraudulent devices resorted to, so as to directly interfere with the plaintiffs’ business, or to deceive and defraud the public, the defendants were justified and cannot be restrained by the interposition of a court of equity. The referee was clearly in error in his conclusion, and the judgment must be reversed and a new trial granted, with costs to abide the event. Judgment reversed. Note.—The following cases also bear upon the question of the right of a person to use his own name in business in fraud and to the injury of another: Wotherspoon v. Carrie, 23 L. T. Rep. 443. An injunction granted by the Vice-Chancellor was dissolved, the court holding that the defendants were entitled to manufacture starch at Greenfield, and doing so, to describe their goods as made there, and themselves of that place; that even if they had chosen that place for their works expressly because the name had become known in the market, and with the intention of introducing that name as part of the description of themselves and their goods, it was open to them to do so, although the plaintiffs had previously established themselves there in the same business, and their goods had acquired a good reputation under the name of “ Greenfield Starch.” See also Candee v. Deere, 54 Ill. 439 ; 5 Am. Rep. 125. In Ainsworth v. Walmsley, 44 L. J. Rep. 252, Vice-Chancellor Wood held that a man’s own name maybe his trade-mark, and upheld the designation, “Ainsworth’s Thread,” — 556 — as such, the plaintiff being an extensive manufacturer of thread, and his goods being well known in the market by that name. Taylor v. Taylor, 23 Eng. Law and Eq. 281. Upon a motion for injunction it appeared that plaintiff’s thread labels were marked “Taylor’s Persian Thread,” and upon the opposite side of the reel or spool the mark was, “ J. & W. Taylor, six cord.” Defendant’s thread labels were on one side “Taylor’s Persian Thread,” on the other, “Sam Taylor.” In some respects the labels were similar, in others unlike. The injunction was granted. Schweitzer v. Atkins, 46 L. J. Rep. (37 N. S.) 847. Plaintiff Schweitzer sold a preparation of cocoa labeled “ Schwitzer’s Cocoatina.” Defendant Atkins, who had been in plaintiff ’s employ, set up business in partnership with a man named Schweitzer and sold a similar preparation of cocoa which they called “Cacaotine,” and labeled “ Otto Schweitzer, Atkins & Co.” There was a general resemblance between the packages put up by plaintiff and defendants. An injunction was granted. Burgess v. Burgess was called a strong decision by the court. Sykes v. Sykes, 3 B. & C. 541. Plaintiff’s father obtained a patent upon a powder flask which was afterward declared invalid. The father and plaintiff manufactured the flasks, marking them “ Sykes’ Patent.” Defendant made flasks, marking them in the same manner, and retailers sold the flasks as plaintiff’s manufacture. A verdict in favor of plaintiff was upheld. Leather Cloth Co. v. American Leather Cloth Co., 11 Jur. Rep. 513¡ It was held by Lord Kingsdown that a trader may mark his own manufacture either by his name or by using any symbol or emblem; and if such symbol or emblem comes by use to be recognized in trade as the mark of the goods of such trader, no other trader has a right to stamp it upon his goods of a similar description. Churton v. Douglass, 1 Johns. (Eng. Ch.) 174. Upon the dissolution of a partnership which had been carried on for a considerable time by John Douglass and others as stuff-merchants, under the style or Arm of “ John Douglass & Company,” John Douglass assigned all his shares, rights and interest in the business and the good will thereof to his late partners and another, who thereupon proceeded to carry on the business under a new style or firm, consisting of their own names, with the addition of the words, “late John Douglass & Co.” Upon bill filed by them, John Douglass was restrained by injunction from resuming or carrying on the business of a stuff-merchant at or in the immediate neighborhood, either alone or in partnership with any other persons whatsoever under the style or firm of “John Douglass & Co.,” or in any other manner holding out that he was carrying on the business of a stuff-merchant in continuation of or in succession to the business carried on by the late firm of John Douglass & Co. In Stonebraker v. Stonebraker, 33 Md.262, the plaintiff was engaged in the manufacture of certain medicines and preparations which became known to the trade as “ Stonebraker’s Medicines,” and “Stonebraker’s Preparations.” The defendants associated with themselves a brother of the plaintiff, whose name was, of course, Stonebraker, and began the manufacture of the samé kind of medicines and preparations, bearing the same name. It was found as a conclusion of fact, that two of the defendants had employed the third for no other reason than that his name was Stonebraker, and because they believed that inasmuch as he bore that name they could deceive the public as to the origin of their goods. The court held that defendant Stonebraker had no right to lend or sell his name to perpetrate an injury upon his brother, and a fraud upon the public. See also article in 9 Alb. Law Jour. 333, upon this subject. — Rep.