McVey v. Brendel

Opinion, Me. Justice Williams : The question presented by this appeal is a new one; at least, it is new in this state. It involves important consequences to employers and employees, and it touches the rights and obligations of workmen in their relation to each other. The facts upon which the question is presented, as found by the learned master, are as follows: The Cigar Makers’ International Union of America is a voluntary, unincorporated association of workmen, organized, as its constitution affirms, “ for promoting the mental, moral, and physical welfare of its members.” It has devised and registered the label which is the subject of this controversy, and claims an exclusive right to control its use. The office of the label is to advise the public that the cigars in the box which bears it were made by members of the union. Every member of the union in the United States and Canada is entitled to have this label upon the cigars made by him. The plaintiffs represent'neither the Cigar Makers’ International Union, the alleged owner of the label, nor Strasser, the officer whose name appears upon it, but a subordinate local organization, known as No. 126, located at Ephrata, Lancaster county, Pa. No 126 — 245 — did not devise or register the label, and does not claim to own it, but asserts the ownership of the international organization, to which it is a tributary and whose jurisdiction it acknowledges. The defendant is a manufacturer whose shop is, as the learned master finds, “a strict union shop” belonging to Union No. 126. His workmen, ten or twelve in number, are members of the union. He, as the owner of a union shop, and his men, by virtue of their membership, are entitled to the use of the label on the cigars made by them. He procured a quantity of imitation or counterfeit labels, because, as he alleges, he was refused the genuine when he applied for them, and avowed his purpose to use them. The plaintiffs then filed a bill, and asked the court to enjoin the defendant against the use of the imitation labels for any purpose whatever. Upon these facts, the master recommended, and the court made the decree asked for. The grounds upon which an injunction will issue to restrain the infringement or appropriation of a trade-mark are well settled. They are, first, the protection of property in a trademark ; and, second, the prevention of fraud by an imitator. In either case, it issues at the suit and for the protection of the owner of the device or trade-mark infringed. The plaintiffs represent Union No. 126, which has no other ownership in or control over the international union’s label than any others of the hundreds or thousands of subordinate unions scattered over the United States and the Canadas. If it can maintain this bill, then each and every subordinate union can do the same thing, although no one of these devised, registered, or claims to own the trade-mark, and may prevent its use by workmen and in shops which, under the general rules of the international body, are entitled to use it. But we are not disposed to impale this case upon what may be thought to be a technical point. On the other hand, we will consider whether the International Cigar Makers’ Union is a trader, whether the label in question is a trade-mark, and whether, upon any ground of equitable relief, the plaintiffs are entitled to consideration in a court of equity. The first question is disposed of by the learned master upon the pleadings. The organization that devised, registered, and owns the label is neither a manufacturer nor dealer, and has no trade in which a trade-mark can be used. — 246 — The second question would seem to go with the first. Trade-marks are provided for by the act of congress of July 8, 1870. Registration is made under it by furnishing a statement, to be recorded in the patent-office, showing the names of the parties applying for the registration, with their residences and places of business; the class of merchandise, and a description of the goods composing the class, by which the trade-mark has been or is intended to be appropriated, together with a description of the trade-mark and fac-similes of it. This provision of the act clearly contemplates an actual business conducted by the person or persons named, the adoption of a trade-mark in that business, and its appropriation to a particular “ class of merchandise ” produced or sold by the parties making the registration. Any device, figure, or inscription which seems to indicate the personal origin of the goods may be adopted as a trade-mark: Laughman’s App., 128 Pa. 19. Such trade-mark will be protected against fraudulent imitation, whether registered or not: Hoyt v. Hoyt, 143 Pa. 623. Registration affords evidence of ownership. Its object is to secure to the maker or dealer the fruits of his skill, industry, and reputation by a positive legislative provision: Pratt’s App., 117 Pa. 411. But the act of congress referred to makes it clear that it is a maker or a dealer only who is entitled to protection, for it declares that the commissioner of patents “ shall not receive and record any proposed trade-mark which is not and cannot become a lawful trade-mark.” Now, if the Cigar Maker’s International Union was a business organization engaged in making cigars for sale, it could adopt and use a trade-mark in its business, and acquire property in it. But it is not a business .organization. It neither makes nor sells cigars, but directs its attention to cigar-makers, and seeks “ to promote the mental, moral, and physical welfare of its members.” These are worthy objects. They deserve and should receive the encouragement and support of all right-minded men. It is obvious, however, that they are personal and social objects, not commercial ones. They do not look towards the production or sale of any class or quality of cigars or tobacco, but towards the personal elevation and comfort of cigar makers. I conclude, therefore, that the Cigar Makers ’ International Union of America is neither a trader, within the meaning of the common law, nor within — 247 — the purview of the act of congress. Not being a trader in any sense, it can have no distinctive trade-mark. Registration, under such circumstances, is not authorized by the act of congress, and if made, confers no title, and gives no standing-ground in a court of law or equity. I come now to inquire whether the adoption of the label for the purposes set forth in the bill gives to the international union any ground for equitable relief. We have seen that this label is not a trade-mark, and that the union is not in a business that enables it to adopt or acquire a trade-mark. Still, it is urged that, as the defendant was about to use an imitation of the label, he should be enjoined, whether the label is a trade-mark or not. But what is this label, and why should it be protected? It purports to be “ issued by the authority of the Cigar Makers’ International Union of America ” to the person who uses it. The name of the workman who made the cigars does not appear upon it, nor the owner or location of the shop at which they are made. It does not point out the personal or the local origin or ownership of the goods on which it is placed. On the other hand, it issues to every one of the hiany thousands of workmen who make up the membership of the union, and it certifies, in the name of the union, that the cigars in the box on which it is placed were made “ by a first-class workman, a member of the Cigar Makers’ International Union.” Who this first-class workman was, where he lived, for whom he worked, the label does not tell. He is indorsed as a “ first-class workman,” because he is “ a member ” of the union. As to all who are not members, the label proceeds to define the position of the organization that issues it by describing their work as “ inferior rat-shop, cooly, prison, or filthy tenement-house workmanship.” The label then proceeds in these words: “ Therefore we recommend these cigars to all smokers throughout the world.” The value of this label is in the recommendation and the reasons given for it. The label is thus seen to be something quite different from a trade-mark in its character, its purpose, and the manner of its use, viz., a device to' distinguish, between union and non-union workmen, and to discriminate against the work of the latter. It says to the public in spirit and in effect: “ Buy the cigars that bear this label, because they were made by a member of this union. Do not buy those — 248 — not bearing it, because they were made by workmen who do not belong to us, Such cigars are the product of ‘inferior rat-shop, cooly, prison, or filthy tenement-house workmanship.’ ” It is the request of a powerful labor organization to “ all smokers throughout the world ” to take sides with it in its contest with those who are outside of its membership, by refusing to buy the work of such persons. It is an attempt to use the public as a means of coercion upon them, compelling them to unite with the union in order to find a market for their goods or their labor. Right here, let us distinguish broadly between an object and the means employed to reach it. Organization is the privilege, perhaps I might say the duty, of labor; and an organization seeking to promote “ the mental, moral, and physical welfare of its members,” by securing fair wages, steady work, and the comforts of home for them, occupies a legitimate field of usefulness, and is capable of doing great good to its members and to the public. The Cigar Makers’ Union is no doubt seeking to do such a work, and accomplishing much’in that direction. What we are now considering is one of the means it employs to increase its membership, and to hurt workmen who do not belong to it. The real question now before us is whether the international organization of workmen shall have the help of a court of equity in making war upon all cigar makers who do not belong to it, and in driving their work out of the market by representing if as coming from inferior rat-shops, from coolies, prisons, or filthy tenement-houses. A “ first-class workman ” is one who does first-class work, whether his name is on the rolls of any given society or not. Filthiness and criminality of character depend on conduct, not on membership of the union. Legitimate competition rests on superiority of workmanship and business methods, not in the use of vulgar epithets and personal denunciation. When the Cigar Makers’ International Union of America stigmatizes those who do not belong to it, and seeks tó induce the public to discriminate against them and their work, by covering them with opprobrious epithets, it is not engaged in “ promoting the mental, moral, and physical welfare of its members,” but in trying to hurt añd * destroy those who do not choose to become members. While the courts would aid the former purpose in all ways within their power, they cannot help the latter. — 249 — We cannot justify the defendant’s conduct. There is no rule of morals or of business upon which he can defend himself in the preparation and use of spurious labels. But it is not every wrong action that a chancellor will enjoin, because the purpose of an injunction is to protect the plaintiff in the exercise and enjoyment of a clear legal right, for an infringement of which the law does not afford an adequate remedy. If, therefore, the right of the plaintiff is doubtful, equity will withhold its aid. The plaintiffs in this case have no trade-mark to protect, and no right to a decree resting on the law relating to trade-marks. What they have is a label which recommends the purchase of cigars made by union men, and warns against the purchase of all others as inferior and unwholesome, because made in rat-shops, or prisons, or by coolies, or tenants of filthy tenement houses. Their right to use such a label may well be doubted, whether the question be treated as one of morals or of law. But the plaintiffs come into a court of equity, and seek to enlist the conscience of a chancellor in their behalf. They must come with clean hands, with a conscionable regard for the rights of others, ready to do equity on their part, and seeking only equity at the hands of the court. They do come in this case with the avowed purpose to do harm to non-union men, to prevent the sale of their work, to cover them with opprobrium; and they ask a court of equity to say that they have a right to do it. We decline to say so. The decree of the court below is reversed, the injunction- dissolved, and the bill dismissed. As we cannot approve the conduct of the defendant, we shall not award him costs, but direct that each party pay the costs it has made, and that the fees of the master be paid in equal parts by the plaintiffs and the defendant.