Stonebraker v. Stonebraker

Brent, J., delivered the opinion of the Court. These appeals are brought before us upon a record of unusual size, which we have examined with a great deal of care and patience. The proof upon both sides has been very elaborate, and the case rests almost entirely upon questions of fact. As was said by Lord Lasígdale, in the case of Croft vs. Day, “what is proper to be done in cases of this kind must more or loss depend upon the circumstances which attend them.” [268] The bill asks for an injunction to prohibit the appellants from using the trade-marks of the appellee, and for an account. The law of trade-marks, as applicable to this case, may be very briefly stated; While a party has the right to manufacture and sell any article he may please, not protected by letters patent granted to another, he has no right to use the trade-marks or names previously adopted and used by another trader, and induce thereby the public to believe the articles sold are another’s manufacture. Trade-marks are property, and as such the title to them will receive the protection of the Courts. If used by another, rvithout the authority or sanction of the owner, he will be restrained by injunction, and that even where it does not appear there was any fraudulent intent in their use. He will also be held to account for the profits derived from the unauthorized use of such trade-marks. Croft vs. Day, 7 Beav., 89; Farina vs. Silverlock, 39 Eng. L. & Eq., 516; Millington vs. Fox, 3 My. & Cr., 338; Upton on Trade-Marks, 233, 234; Kerr on Injunctions, 489. We are relieved from the necessity of reviewing at length the facts and circumstances of this case, and we omit embodying them here because of the unusual space which would be required to set them out. They are so well considered and stated in the opinion of the Judge below, that we cannot better express our own views than by adopting, as we do, what he has said in reference to them. We are fully satisfied, from all the proof, that the trade-marks and certificates in question belong to Henry Stonebraker, and that they have been improperly, and without authority or excuse, appropriated and used by the appellants, either by themselves or through their contrivance. That there is some difference in those used by the appellants, there is no doubt. But the change is of such a character as to indicate an evident purpose to deceive. Nobody can look at the two — the genuine and the imitation— without being satisfied that the genuine have been so altered, and so craftily used and employed, as to be well calculated to [269] produce, upon the public mind, the impression that the medicines and preparations sold by the appellants are the medicines and preparations of the appellee, Henry Stonebraker. That Samuel Stonebraker and Henry K. Hoffman were both connected with and actively advanced the arrangement effected with Dr. Abraham S. Stonebraker, by which medicines and preparations have been manufactured and sold under the prohibited trade-marks, the weight of evidence abundantly establishes. The other appellants -were, beyond doubt, connected with the sales, and as we have determined that the trade-marks and testimonials in question are those of the appellee, their liability is clear. We need only add, that we fully concur in the conclusions of the Court below, and are of opinion that the appellee, Henry Stonebraker, is entitled to be protected by injunction, and to be compensated by having an account taken. The decree of the Court below is correct in so far as it proceeds to restrain and enjoin the appellants. But that part of it which directs an account, is in some respects erroneous. Samuel Stonebraker and Henry K. Hoffman, by the terms of dissolution of the partnership between themselves and Henry Stonebraker, dated the 10th of December, 1866, reserved the right to sell under these trade-marks the stock on hand or in the hands of agents at the time of dissolution, and for the sales of such stock, no matter by whom made, whether by themselves or their vendees, no account can bo demanded. The other parties, Passano, Abraham S. Stonebraker and the Clotworthys, not being bound by any contract to the contrary, had the right, under the law as we have stated it, to manufacture the medicines or preparations to whatever extent they chose, and no accounting for such, as they manufactured simply, can be required of them. Their liability to account is limited to sales, under the prohibited use of the protected trade-marks, of such articles as were not part of the stock referred to. The decree is undoubtedly erroneous in requiring an account, as by its terms it clearly does, from these par [270] ties, of articles which they have manufactured and not sold, and should more clearly except from all accounting, by any of the parties, for sales of such articles as constituted part of the stock on hand and held by the Stonebrakers and Hoffman at ■the time of the dissolution of that firm. In all other respects the decree is correct; but, for these errors, it must be reversed and the cause remanded, in order that a new decree may be passed by the Circuit Court in conformity with the views expressed in this opinion. As the decree is in the main correct, but for the reasons stated must be reversed, the costs in this Court will be equally divided, one-half to be paid by the appellee, and the other half by the appellants. (Decided 7th July, 1870.) Decree reversed and cause remanded.