Messer v. Fadettes

Knowlton, J. Ethel Atwood organized and employed a band of musicians called the “ Fadette Ladies’ Orchestra,” and hired and paid the members of it. She sold to the plaintiff all her “ right, title, and interest in and to the organization known as the 1 Fadette Ladies’ Orchestra,’ . . . together with all rights acquired in and to the establishment, name, and trademark in the words of 1 Fadette Ladies’ Orchestra,’ ” and then ceased to have any connection with the company. The other members of the orchestra were not parties to the contract, and did not agree to continue to play under the direction or management of the plaintiff. At the time when the plaintiff brought this suit no member of the original organization remained with her. The question is whether the plaintiff acquired a right in the trademark or trade name which she can enforce by way of injunction against the defendant corporation, some of the members of which were members of the original organization. It is very clear that this question must be answered in the negative. So'far as Ethel Atwood had any right or ownership in the trade name which designated the organization under her management, it was personal to herself, depending upon her personal reputation and skill, and it was not assignable. The other musicians employed by her could not by her contract of sale be put in the control of any other person, and there was nothing in her relation to them that she could convey. The case is not like those in which there is a sale of fixed property, and a local business to which the name belongs, and whose principal features remain unchanged after the sale. If the use by the plaintiff of the name “ Fadette Ladies’ Orchestra ” would have any influence beneficial to herself upon the public who wished to procure the services of such an organization, it would be only to mislead and defraud them by implying that she and such musicians as she employed were the same persons who had formerly gained a good reputation under this name. It is well settled that the courts will not enforce a claim of this kind which contains a misrepresentation to the public. Hoxie v. Chaney, 143 [143] Mass. 592. Connell v. Reed, 128 Mass. 477. Chadwick v. Covell, 151 Mass. 190, 194. Weener v. Brayton, 152 Mass. 101. Covell v. Chadwick, 153 Mass. 263, 267. Manhattan Medicine Co. v. Wood, 108 U. S. 218. Decree affirmed. Lathrop, J. I am unable to agree to the opinion of the majority of the court. It proceeds upon the ground that the name adopted by Ethel Atwood for the orchestra organized by her was not assignable, for the reason that it was personal to herself, and depended upon her personal reputation and skill. The court below has found that the success of the orchestra “ was due to the ability, skill, and personal supervision of said Atwood.” It follows, then, if the decision of the majority of the court is correct, that if a business is conducted under a trade name, the more the ability, skill, and personal supervision of the owner of the business conduces to its success, the less is the trade name assignable with the business. I think that this is not in accordance with sound principles, or with the authorities. The opinion of the majority appears to be founded upon a view of the law which is sound within certain limitations, namely, that, where the trademark is the name of the proprietor of the business, it cannot be sold apart from the business, on the ground that it means to the public that the personal skill of a particular individual is exercised in the manufacture or selection of the goods upon which it is used. So far as the cases cited in the opinion of the majority seem to me to have any pertinency they are of this class. But this doctrine has no application where the name is sold with the business. Kidd v. Johnson, 100 U. S. 617. Sohier v. Johnson, 111 Mass. 238. Warren v. Warren Thread Co. 134 Mass. 247. Russia Cement Co. v. LePage, 147 Mass. 206. H. A. Williams Manuf. Co. v. Noera, 1.58 Mass. 110. Dant v. Head, 90 Ky. 255. Morgan v. Rogers, 26 Pat. Off. Gaz. 1113. Oakes v. Tonsmierre, 49 Fed. Rep. 447. Carmichel v. Latimer, 11 R. I. 395. Hall v. Barrows, 4 DeG., J. & S. 150. Bury v. Bedford, 4 DeG., J. & S. 352. In Booth v. Jarrett, 52 How. Pr. 169, Edwin Booth mortgaged and leased the theatre built by him in New York, and which, when it was built, he called Booth’s Theatre. He afterwards sought to restrain the lessee from the use of the name, on the [144] ground that the public would be misled into believing that he was still the manager and acted there. But the injunction was refused; and it was held that the name passed by the lease. So the name of a hotel is assignable. Wood v. Sands, Cox’s Manual, No. 467. Names of hotels have also been frequently protected. See cases cited in Cox’s Manual, No. 108, and note. So names of newspapers. Cox’s Manual, No. 10, and note, and No. 174. In the case at bar I see no reason why the plaintiff was not entitled to have the trade name of the orchestra protected. Such a name is clearly, to my mind, assignable. It also seems to me that the defendants, being merely employees of the plaintiff, and of her predecessor in title, could not, by leaving, acquire the right to use the name under which they had before performed, or any name so similar as to deceive the public. It is not a case concerning the right of the majority of an association to the name, for here the name was invented by Atwood, and the defendants were hired by her. The Boston Symphony Orchestra owes its fame to the efforts of its various leaders. If this name is a trade name, it is assignable. Could it be held that members of the orchestra who chose to leave could associate themselves together and perform under this name without being liable to be restrained by injunction ?