Phœnix Manufacturing Co. v. White

WiNslow, C. J. Mrs. White is unquestionably a proper, if not a necessary, party to this action. A substantial part of tbe relief sought consists in determining tbe rights of the plaintiff in the manufacture and sale of a certain machine covered by a patent of which she is, at least, the record owner. A complete settlement of the questions involved in the action could hardly be satisfactorily attained unless she be present as a party. Sec. 2603, Stats. (1898). The facts in the case are very largely undisputed. Upon the disputed propositions we have quite carefully examined the evidence and have found no reason to differ with the conclusions reached by the trial judge, hence the questions to be considered are purely questions of law, and they are four in number, viz.: (1) Was the contract of November, 1896, between the plaintiff and A. F. White superseded by the contract of September, 1899, between the plaintiff and Georgianna M. White f (2) Was the machine covered by the second patent an improvement upon the machine covered by the first patent within the meaning of the two contracts ? (3) Has the plaintiff any rights in White’s third invention? (4) Should White be restrained from using the word “White” as a trademark, or from advertising and selling his third invention under the name “Improved White Swage,” or a similar combination of words which include the word “White” as an essential element ? 1. The first question must be answered in the affirmative. That the title of the patent was placed in the name of Mrs. White without consideration is undisputed. That this was merely a formal transfer and without intention to make any practical difference in the real ownership or power of control — 299 — by Mr. White is hardly open to doubt. All the facts indicate tbis result. Mrs. White signed tbe second contract at request of her husband without knowing its contents. The checks for royalties, though made out in her name, went into the family bank account, against which both drew as they had occasion just as before. The business was done by White just as before. On both sides the apparent change in ownership was evidently considered merely a change in name but not in legal effect. We cannot escape the conclusion that the contract of September, 1899, was to all intents and purposes the contract of Albert E. While so far as the plaintiff is concerned, and hence that it superseded and took the place of the contract of November, 1896. 2. The second question also must receive an affirmative answer. The machine covered by the second patent seems unquestionably to be merely an improvement on the first machine; and it was so denominated by White himself in the specification of the second patent. If there were doubt about this, the evidence shows very persuasively that the parties so treated it for four years, and thus removed all question of doubt as to the matter by their own voluntary acts. Burton v. Douglass, 141 Wis. 110, 123 N. W. 631, and cases cited. 3. The trial court held that whatever rights the plaintiff might have rightly claimed in the third invention under the clause of the contract giving it the exclusive right to manufacture and sell the inventions and improvements on the original White swage “which are or may be invented or added thereto,” it had estopped itself from now claiming any right therein by its conduct in allowing Mr. White to proceed and make patterns and models in its own shop at a considerable cash outlay for materials, workmanship, etc., paid by him to the plaintiff, with the full knowledge and understanding of its rights and of the intention of Mr. White to use those patterns and models in a shop of his own in manufacturing — 300 — swages under the third invention. Here are all the elements of a complete estoppel, and hence the third question must be answered in the negative. 4. The last question is not so much a question of trademark as of fair or unfair competition in trade. It is certain that the plaintiff had at great expense and by efforts extending over a number of years established a market and a reputation for the “White Saw Swage.” It had for years used the names “White Saw Swage,” “New White Swage,” and “Improved White Swage” in its advertising and its catalogues with the express approval of Mr. White, indicated over his own signature in the catalogue issued in 1905. Evidently he was willing and even desirous that the machines manufactured by the plaintiff under the first and second patent should become known to the trade and to the public generally as the “White Swage,” the “New White Swage,” and the “Improved White Swage.” It is unquestionably true that a man’s name is his own property, and he has the right to every honest and fair use of it, just as he has to every honest and fair use of his other property. There may be cases, however, where he may be enjoined from using his own name in certain ways. The principle is very clearly stated in the case of Russia C. Co. v. LePage, 147 Mass. 206, 17 N. E. 304, as follows: “Every one has the absolute right to use his own name honestly in his own business for the purpose of advertising, it, even though he may thereby incidentally interfere with and injure the business of another having the same name. In such case the inconvenience or loss to which those havjng a common right to it are subjected is damnum, absque injuria. But although he may thus use his name, he cannot resort to any artifice or do any act calculated to mislead the public as to the identity of the business firm or establishment, or of the article produced by them, and thus produce injury to the other beyond that which results from the similarity of name.” — 301 — Singer Mfg. Co. v. June Mfg. Co. 163 U. S. 169, 16 Sup. Ct. 1002; Herring-Hall-Marvin S. Co. v. Hall’s S. Co. 208 U. S. 554, 28 Sup. Ct. 350. The name of a person may become so bound up with a particular product that the attaching of the name to a similar and later product would hare the effect of a false representation that it was in fact the original product. The idea is thus expressed, with plentiful citation of authorities, in 38 Oyc. 811: “Where a personal name has become the trade-name for particular goods, another person of the same or a similar name may not use such name as the trade-name for similar goods, or in such a way as to cause his goods to be known and called for in the market by the same name as his rival’s goods are already known to, and called for by, the purchasing public.” Such is the case here. The swages manufactured by the plaintiff have become favorably known to the trade and purchasing public by the name of the “White Swage” or the “Improved White Swage.” Now, while Mr. White may rightfully manufacture and sell his newly invented swage, using his own name, he obviously ought not to be allowed to mislead the public into believing that it is the swage long manufactured by the plaintiff that he is selling. This we understand to be the true meaning of the judgment on this branch of the case. Mr. White may use his own name in his business, either separately or as part of the name of a firm or corporation, and may advertise the fact that he is the inventor of the swage which he is selling. He may also advertise that he makes and sells a saw swage, an improved saw swage, or a new saw swage, for none of these words can be appropriated by any one, — they are public. But he is debarred from advertising or designating his swage by such combinations of words as the “White,” or the “White Saw Swage,” or the “Improved White Saw Swage,” because thereby he is likely to deceive customers, and lead them to suppose that he — 302 — is making and selling tbe product long known to tbe trade, witb White’s knowledge and consent, under those or very similar names. It is suggested that tbe case of Fish Bros. W. Co. v. La Belle W. Works, 82 Wis. 546, 52 N. W. 595, bolds a somewhat different doctrine. In that case tbe defendants were permitted to use their own names and even tbe rebus of a fish, although tbe plaintiffs bad acquired by purchase of their former business tbe right to use those names and tbe .rebus as a trade-mark. Tbe question arose upon an application for a preliminary injunction, not after trial, and there were no facts showing that actual injury bad resulted to tbe plaintiffs. This court held that, tbe defendants could lawfully apply to tbe wagons made by them their names and tbe rebus, provided they did it in a way not calculated to induce persons to buy tbe same as and for those manufactured by tbe plaintiffs. It was further said, “their advertisements and marks must truthfully and in good faith refer to their own manufactures, trade, and business, and not to those of the plaintiffs.” Thus the case recognized the principle that the names must not be used in a way to deceive the purchasing public. In that case, as before stated, there was no proof of actual deception or injury; but in the present case there is not only proof, but a •finding to that effect, and hence we cannot regard anything actually decided in that case as contrary to the principle decided in the present case. In one respect the judgment is too sweeping and must be modified. It adjudges that the plaintiff has the exclusive right to manufacture and sell the saw swages covered by both the first and second patents during the “life of said patents,” and enjoins the defendants from manufacturing or selling the same during such period. The contract which governs the rights of the parties, namely, the second contract, grants the exclusive right “to the full end of the term of said patent, subject to the conditions — 303 — hereinafter named.” The patent there referred to, and the only one then existing, was the first patent, issued August 3, 189J, and expiring in 1914, hence the exclusive right must terminate at that time, and the judgment must be so modified. It must be further modified by adding to the adjudication of the exclusive right during the life of the' first patent a clause providing that such right is subject to termination under the provisions of the fourth subdivision of the second contract. With these modifications the judgment must be affirmed on both appeals. By the Court. — It is so ordered. No costs are allowed to either party, except that the fees of the clerk of this court shall be taxed and paid by the defendants. Siebecker, Kerwin, and TxmliN, JJ., dissent from that part of the decision which affirms the injunction below prohibiting the use by defendant of. his name.