Kyle v. Perfection Mattress Co.

TYSON, J. In this cause the appellee filed its bill for an injunction against the appellants to restrain an appropriation by them of its trade-mark and infringe„ment of its good will. The injunction being granted and the bill answered, motion was made to dissolve the former and dismiss the latter. These motions being refused, this appeal is prosecuted to review the rulings of the court in that respect. There is practically no' dispute about the facts or as to the abstract principles of law involved. The difficulty arises out of the application of the principles to the facts admitted. The facts are, in 'short, these: J. 0. Kyle, operating in the name of and for his wife, started the business of manu — 47 — factoring by a peculiar process mattresses in the city of Birmingham, giving to the mattress a peculiar form and dress, which he called and labelled the “Perfection Mattress,” and which he sold in that city and other markets. .Afterwards, one Dixon bought a half interest in the business and it was continued and extended under the name of the Perfection Mattress Company,, J. C. Kyle being the active manager. Some time after this, the parties interested formed the corporation, 'the present appellee, to carry on the same business and paid up their stock subscriptions by a conveyance and transfer of the partnership business which had been previously carried on under the same name. Mrs. Kyle owned a half interest in the capital stock, and her husband was secretary and treasurer,' and continued the active manager. Largely by his efforts, the name and reputation of the “Perfection Mattress” was extended and became known throughout the country, and Avas the basis of a profitable business to the corporation. After this Mrs. Kyle, having disposed' of her stock in the corporation, set up a rival establishment in the same city in the manufacture of mattresses, managed and operated exclusively by her husband. By design or by some unaccountable accident or freak of fancy, the mattress made Avas called “Kyle’s Perfection Mattress,” and assumed the exact shape, form and. peculiar dress of that manufactured by the appellee. The mattress made by appellee had for its cover a ticking of an unusual pattern or design and made by a particular factory. Kyle Avas careful to obtain this same ticking and AAdien a sale of it Avas refused to him by the manufacturer of it he obtained it, through third parties, sliOAving an anxiety to dress the neAV mattress in imitation of the old. The new mattress could not be distinguished in appearance from that made by the appellee, Avhich being singular and peculiar, could only result from design. The new product and the old Avere each labelled, exact copies of Avhich are set out as exhibits to the bill and admitted by the answers. The similarity between the two is such and so remarkable,’ notwithstanding their differences, as to make it reasonably certain that the latter one was a1 designed imita — 48 — tion of appellee’s label, and intended and calculated to induce buyers to purchase the new product as the genuine “Perfection Mattress” marketed by the appellee. It cannot be denied that the appellants, after the sale of their business to the corporation and after the sale •of the stock in that company, had the right to engage in the business of making and vending mattresses in the same city, and, so far as the manufacture was not protected by patents, of the same kind and quality as those made by the appellee. It is under this right, the appellants seek to justify their conduct. — Williams v. Farrand, 88 Mich. 473. But they cannot make this principle cover this case. The appellants themselves,first, and the appellee afterwards, built up, it must be presumed, at the cost of time, trouble and expense, the reputation of a mattress of a particular type as to ■quality, form, style and dress, under the name and label of “Perfection Mattress.” The appellants first, in the sale to the partnership and afterwards to the corporation, and still later, in the sale of the stock in the corporation, are presumed to have received a full consideration for the transfer to the appellee of the exclusive right to this good will and trade-mark. Certainly to deceive the public and take the hard-earned patronage which an artisan or dealer has attached to a particular brand employed to designate the origin and quality of his goods, is a double wrong, in that it is a deception of the public and an injury to the individual. In this -case it is insisted that the. word “Perfection” in the connection in which it was used, is not -and cannot be a trade-mark. The law on this subject is clearly ■stated in the case of Lawrence M. Co. v. Tenn. M. Co., 138 U. S. 537. It is there shown, “that The office of a trade-mark is to point out distinctly the origin or ownership of the article to which it is affixed; -or, in other words, to 'give notice who was the producer. This may, in many cases, be done by a name, a mark or a device well known, but not previously applied to the same article. * * * Hence the trade-mark must either by itself, or by association, point distinctly to the origin or ownership of the article -to which it is applied. The reason for this is that unless it does, neither can — 49 — lie who first adopted, it be injured by any appropriation or imitation of it by others, nor can the public be deceived.’ ” Without quoting more, let us apply this to the facts of this case. What does “Perfection Mattress” mean? Grammatically, it is nonsense, unless we regard “perfection” as a fanciful name to mark the peculiar goods of some person; in this case, of the “Perfection Mattress Company.” The word has the same significance in each of these collocations. In the latter phrase though a general word of the language, it is applied and appropriated to designate a corporation in connection with the Avoids “Mattress Company.” In this connecttion, it would be useless to look in a dictionary for its meaning. In the former phrase, it likewise was a fanciful name given to the mods manufactured by the Kyles and afterAvards by the co-partnership and the corporation. It was clearly so intended, because it could have no other meaning, and by the laAV of association it has now become an established designation with the public of the product of the appellee. — Waterman v. Shipman, 130 N. Y. 301; O’Rourke v. Soap Co., 26 Fed. 576; Ins. Oil T. Co. v. Scott, 33 La. Ann. 946; Royal Baking P. Co. v. Raymond, 70 Fed. 376; Menendez v. Holt, 128 U.S. 514; Bennett v. McKinley, 65 Fed. Rep. 505. By the production of a superior article answering to this original fanciful name, the Avord may acquire a neAV meaning indicative of quality. But this is the natural and desired result of a trade-mark, making it more valuable, and it would be strange that this should make it common property. — Lawrence M. Co. v. Tenn. M. C., supra. .It is reasonably certain that the appellants Avell understood the Aralue of the name “Perfection” as a mere name, in its use in connection with the mattress, as indicating a product Avliich had been manufactured by them originally and afterivards and noAV by their vendees and successors in business, and which had come to indicate a mattress of high esteem and reputation. If it was used awkwardly and ungrammatically in the first instance to express a grade or quality, how Avas it that they fell into the same error in reference to their product? It cannot be seriously doubted from — 50 — the facts that the appellants intended by adopting the name, to delude the public and to secure the patronage which appertained to its use in the .particular con-, nection belonging to the appellee. What other purpose could the appellants have had in using this substantive noun “Perfection’! as an adjective? • The motive is disclosed in- the care taken to give their mattresses the peculiar dress of the appellee’s and in the similarity of their, label in other respects than in the adoption of the name. “Perfection,” to that of the appellee, and in the false recitals of their former connection with the appellee. All these things point to the formed design of-imitation in aid of the adopted name. — McLean v. Fleming, 96 U. S. 245; Colgate v. Adams, 88 Fed. 899; Partridge v. Menck, 47 Am. Dec. 296; Hutchinson v. Blumberg, 51 Fed. 829; Carroll v. Ertheiler, 1 Fed. 688; Humphreys v. Wenz, 14 Fed. 250. It may be said, however, that a careful observer would not be,deceived by the label. That it expressly gives notice that the Kyle Mattress Company was the manufacturer. But why use “Perfection” at all as a name? Was there any necessity arising from the paucity of language which required the use of this name? Or, if the word described the quality, why make the ■same grammatical blunder as that made in describing the mattresses manufactured by the appellee? Copying mistakes dispels all claims to originality. - The differentiation from appeilee’s label found in appellants’ was evidently put in -to found an argument on, in case of suit, while the similitude was-inserted to obtain the public patronage by deception. “This is the u-sual artifice of the unfair trader.”- — Collinsplatt v. Finlayson, 88 Fed. 693. The case of Williams v. Farrand, 88 Mich. 473, contains a .number of cases illustrative of this. It is there said : “No man has a right to sell or advertise his own business or goods as those of another person.” It is also further said, “that an assignment of all of the stock, property and effects of a business, * * * carries with it the exclusive right to use a fictitious name in which such business has been carried on and such trade marks and trade names as have been used in such business.” The authorities cited in this — 51 — case, as well as many in the briefs of counsel, bring the case under consideration within the influence of these' principles. ■ ■ ' ' ■ - • In Myers v. Buggy Co., 54 Mich. 215, the opinion delivered by Judge Cooley, it was held that parties doing business under the name of Kalamazoo Wagon Company, having sold out, could not carry on a rival business under the name of the Kalamazoo Buggy Company. Says he: “The good will was a substantial part of the purchase, and purposely to take any steps to prevent his [the vendee’s] receiving the benefit of it was a wrong of the same nature as would have been the retention of ■some portion of tangible property.” Here then is a right to the exclusive use of the term ‘.‘Perfection Mattress,” both as a trade-mark and under the -sale of the good will of the Perfection Mattress Company. In Lee v. Haley, L. R. 5 C. H. App. 155, the defendant who had been manager’of a firm doing business under the artificial name of “Guinea Coal Company,” set up a rival business at a different stand under the name of “Pall Mall Guinea Coal Company.” His envelopes and business cards resemble the plaintiff’s. v He was held a cheat. . . . In Glenny v. Smith, 2 Drew. & S. 476,, defendant, who had been employed by plaintiffs, printed his sign and'arranged his awnings so as palpably to attract the public, on the idea that they were trading with plaintiffs. He' used his' own name, “from” in small letters, “Thresher and 'Glenny,” plaintiffs’ firm name, in large letters. He had an awning; which when ,let down would cover, his name and expose only the plaintiff’s firm name. The court held that defendant was deceiving the public. The purpose to appropriate what belongs to others is not veiled by calling the new mattress “Kyle’s. Perfection Mattress,” or by asserting that it was the “Improved Perfection Mattress,” or other weak differentiations. When there is a marked similarity in the labels, signs, literature and devices for attracting custom, but little weight is attached to precautionary differences or denials of a purpose to deceiye the public. — Collinsplatt v. Finlayson, supra. — 52 — We are ’Constrained to hold that the lower court committed no error in refusing to dismiss the bill for want of equity or to dissolve the injunction. Affirmed.