Avery & Sons v. Meikle & Co.

81 Ky. 73, 1883 Ky. LEXIS 33

• Court: Court of Appeals of Kentucky
• Decided: March 27, 1883
• Status: Published

Opinion

CHIEF JUSTICE HARGIS

delivered the opinion of the court.

The appellants brought this action to restrain the infringement of their trade-mark, and to prevent the fraudulent usurpation of their trade reputation by the appellees, and to compel them to account for resulting profits.

The appellants are manufacturers of plows in the city of Louisville.

They brand on the right side of the beam their trademark, which is composed of a Maltese Cross,' with the letters AVERY distributed in its center and arms. Immediately above the cross are the words “trade-mark,” and below it are the words “copyrighted;” to the left of it the words “B. F. Avery’s, patented,” and to its right “Louisville steel, July II, 1871.”

The steel series of their plows are branded on the top and near the rear of the beam “Pony,” “A O,” “B O,” and “C O,” and their cast series at the same point with “ }4,” “1,” “2,” “3,” and “8.” Upon the top of the fore part of the beam of each series were stenciled the cautionary words, “keep all taps screwed up'.”

The appellants’ trade-mark, which they printed and referred to in their catalogues, and described in their advertisements, is composed of the Maltese Cross, with the name AVERY distributed in its arms and center, surrounded by the words “trade-mark” above and “copyrighted ” below it.

The appellees, who are also engaged in the manufacture of plows in the city of Louisville, dismantled plows of appellants’. steel and cast series, and, with great accuracy, copied every important and ordinarily noticeable part of them. They then began the structure of two series of plows, one ’ steel and the other cast, so much like appellants’ that an ordinary person could not tell the one from the other. They also imitated almost to perfection the interchangeable metal points of appellants’ plows.

They branded the steel series “P O,” “A O,” “B O,” “C O.” The “P O” was followed by the word “steel,” and “Louisville” was placed on top of the beam. Their cast series were branded “ ¿4,” “i,” “2,” “3,” “8.”

Upon the top of the front part of the beam of each series were stenciled the cautionary words, “keep all taps screwed up.”

These letters, numerals, and the words of caution, were in the same size and character of type, and placed in precisely the same position on their plows as on those of appellants. The plows were varnished as appellants’ were varnished.

The resemblance of appellees’ plows to those of appellants was complete, the only substantial difference being that the appellees placed on both sides of the beam their trademark, - which consists of an oblong figure and diamond, whose angles project over the lines of the oblong, with the letter “M” in the center of both, and encompassed by the name “Thos. Meikle & Co.” above and “Louisville, Ky.,” below.

The appellees held a consultation before they attempte-d the imitation above described, and after due deliberation and quieting Mr. Meikle’s conscience, in the rough but significant language of one member of the firm, who seems to be its guiding spirit, they determined, come what may, “to take the bull by the horns.” Then the work of dismantling and imitation began. Soon their newly dressed and formed series of cast and steel plows were thrown upon the market, and a business hitherto of thirty plows per day sprang up to nearly one hundred per day.

These increased sales were made, to a considerable extent, to jobbers, whose names were substituted for appellees’ trade-mark and its surroundings, and stenciled on the beams where their trade-mark and name had stood. These jobbers did not pretend to be the originators or manufacturers of the plows, and it appears that many persons have been deceived and unable to distinguish the imitation from appellants’ plows.

In order to make the imitation series, the appellees abandoned their brands “A,” “B,” “C,” “D,” and “F” on their cast,, and the numerals “o,” “I ” “2,” “3,” “4,” “5,” and “6” on their steel plows, which they had been using, and substituted appellants’ brands in their stead, placing the letters on the steel and the numerals on the cast series, so as to correspond precisely with appellants’ mode of using them.

Whether the conduct of the appellees’ amounts to an infringement of appellants’ trade-mark, or an injury to their legal or equitable rights, is the question to be considered.

The object of trade-mark law is to prevent one person from selling his goods as those of another, .to the injury of the latter arid of the public. It grew out of the philosophy of the general rule that every man should so use his own property and rights as not to injure the property or rights of another, unless, some priority of right or emergency exist to justify a necessarily different manner of use.

The intermediate instrument of prevention which the law protects in its office is called a trade-mark, which an owner of goods may adopt and use to indicate their origin or ownership, and to distinguish them from goods of a similar nature belonging to somebody else.

This right of adoption and use is subject to various limitations and qualifications.

A trade-mark is a sign or symbol primarily confined exclusively to the indication of the origin or ownership of the goods to which it may be attached, and it may be composed of any name, device, line, figure, mark, word, letter, numeral, or combination, or arrangement of any or all of these which would serve the sole purpose of a trade-mark, and which no other person can adopt or use with equal truth.

Fancy names, whether invented or arbitrary, the names of places, words, where applied to a new process by the inventor, the name of an article which alone designates its origin or ownersnip, letters and numerals combined in unusual and peculiar forms, or with other parts composing trade-marks, have been held, under the particular circumstances of the various cases, where their exclusive appropriation and use were in question, to be trade-marks or component elements thereof. (See Congress Spring Co. v. High Rock Spring Co., 45 N. Y., 290; Burnett v. Phalon, 3 Keys, 594; Marsh v. Billings, 7 Cushing, 322; Woodward v. Lazar, 21 California, 444; Ford v. Foster, L. R., 7 Ch., 611; Taylor v. Carpenter, 3 Story, 458; Davis v. Kendall, 2 R. I., 566, in which the words “Eureka Shirt,” “ Persian Thread,” “Vegetable Painkiller,” “Congress Spring,” “Cocoaine,” “New Era,” “Revere House,” “What Cheer House,” were held subject to exclusive appropriation as trade-marks.

In the cases of Wotherspoon v. Currie, 5 H. L., 508; McAndrew v. Bassett, 10 Jur., N. S.; Seixo v. Provezende, L. R., 1 Ch.; Newman v. Alvord, 49th Barb., “Glenfield Starch,” “Anatolia Liquorice,” “Seixo Wine,” “Akron Cement,” were protected as trade-marks.

For the word “original” as a trade-mark, see Cocks v. Chandler, L. R., 11 Eq.

Numerals in the cases of Boardman v. the Meridian Britannia Co., 35 Conn., 402; Gillott v. Esterbrook, 47 Barb., 455, were held tobe, in connection with the manufacturer’s name, a lawful trade-mark.

Browne on Trade-marks, section 87, says: “The mark may consist in the name of the manufacturer or the merchant (provided it be written, printed, branded, or stamped in a mode peculiar to itself) in a seal, a letter, a cipher, a monogram, or any other sign or symbol that can serve to distinguish the products of one man from those of another. It may be any symbol or emblem, however unmeaning in itself.”

Terms which designate merely the name, quality, kind, size, number, or elements of an article, or have become its proper appellation, or that merely describe it, or direct the mode of its use, purely generic and geographical terms, and the necessary and common uses in which the English language and Arabic numerals are employed by the people to express their ideas and feelings, and to tell the truth, are common property which all may use, but which none may exclusively appropriate as a trade-mark or acquire as absolute individual property. Many authorities have been examined, and might be here cited, to establish each clause of this general statement of the law, but it is not necessay to do so. It must not be overlooked, hbwever, in these exclusions, that a trade-mark is indirectly the guaranty of the quality of an article to which it is attached, as well as of its origin and ownership, for in all cases the trade-mark, in indicating the origin, by necessary implication represents the quality of the article, which is the true source of its reputation in the market.

There is no abstract right in a trade-mark. It is property only when appropriated and used to indicate the origin or ownership of an article or goods. And its real value consists in the confidence and patronage of the public, secured through its instrumentality in acquainting them with the origin and ownership of an article, which thus gains reputation for its superior qualities. Of this reputation its owner cannot be deprived, without his consent, either by the use of forbidden means or the illegal employment of things otherwise lawful.

When a workman or manufacturer has, by skill, care, and fidelity, manufactured a good article, it becomes of the utmost importance to him that its origin and ownership should be known, and the law points out to him what means and how he may appropriate them to indicate this important fact, and when he adopts and uses them, and his reputation is thereby built up, it is to him the most valuable of property rights. Sound policy, which dictates the protection of the public from imposition, the security of the fruits of labor to the laborer, the encouragement of skillful industry, and, above everything, the inculcation of truth and honor in the conduct of trade and commerce, and the requirement that all the contractual relations of life, natural, abstract, and relative, shall be honestly observed, demands that such a reputation so gained should be free from the. grasp of piracy, and its infringement accorded the safest and best remedy for redress known to the courts of equity. And this is the law of both principle and authority.

Therefore, the lawful adoption and use of a trade-mark is the invocation of the law applicable to it, by the originator or owner of an article, for the protection of his reputation as such.

When this essential state of facts is shown by a complainant, and that his trade-mark has been infringed, and actual, probable, or possible injurious consequences is or 'may be the result of the infringement, he is entitled to relief, which is usually granted by injunction, and an account of profits.

Having premised these general rules of the law of trademark, the field of investigation we shall first explore is, whether the appellants’ trade-mark embraces either the word “.Pony,” the letters “A O,” “B O,” “CO,” or •the numerals “ “ 1,” “2,” “3,” “8,” or the shape and construction of their plows.

We will dispose of the last point first. # The shape and construction of the plows do not form any part of the trademark of the appellants, further than their subjection to the use of the mark to indicate their origin and make is necessary to render the trade-mark property, for, as held in Candee, Swann & Co. v. Deer & Co., 54 Ill., page 461, where no patent is held by the owner of plows, "any one, therefore, has a perfect right to make plows in their exact similitude, even to "the curve of the mould-board,” and "the tip of the handles” — in the minutest, as well as in the most important points — all have a right to manufacture them, no matter where the maker may reside, and has the right to put the name of the place where manufactured, as well as his own name, on such part of the plows as he pleases, taking care, however, so to use the brand as not to deceive the public, so as not to create a belief that the plow is the manufacture of another."

Other cases which express it differently are to the same effect. (Fairbanks v. Jacobus, 14 Blatchford, 339.)

The evidence shows- that, as early as the year 1868, the word "Pony” was adopted and used by Kelley, of Texas, on a small one-horse plow, which he was then engaged in the manufacture of, and that the appellants did not adopt or use it prior to 1871. Hence, they have not the merit of first appropriation, which is necessary to an exclusive right to the word "Pony” even as a trade-mark. . But where the evidence, as in this case, establishes that the word "Pony” is used to indicate quality and size, to-wit, a small steel plow, it cannot, for such use, become a trade-mark. And it does not matter that "Pony” is not in itself the sign of the idea of size or quality; for if it was substituted for the words which would convey such meaning, and used by appellants for that purpose, they could not have acquired, even by prior adoption, an exclusive right to the use of the word "Pony.” (Amoskeag Manufacturing Company v. Spear, Cox T. M. C., 102.)

Many years before the appellants adopted “A O,” “B O, ” “C O, ” it was customary to use letters and combinations of letters to indicate quality, size, and series of plows.

“C O” were in use before appellants used them. But whether they used the combinations of these letters first or not, the evidence shows that they used them to indicate the size and quality of the steel series.

As to the numerals “ “ 1,” “2,” “3,” “8,” they were used by appellants to denote the size and quality of their cast series. This is the evidence, and although the letters and numerals on both series may have come to indicate to the public the origin or ownership of appellants’ plows, as they did not appropriate them by adoption, use, or claim, as a part of their trade-mark, they cannot be treated as a part of it simply because they appear capable of serving the same purpose.

The printed catalogues and advertisements of the appellants do not claim that these letters or numerals form any part of the trade-mark; yet all through them attention is called to the Maltese Cross, and the words in and immediately around it, as their trade-mark. Had “AO,” “BO,” “C O,” and “ ¿4,” “ 1,” “2,” “3,” and “8,” or any of them, formed a part of the appellants’ trade-mark, it is unreasonable and contrary to human experience to suppose that the fact would have been ignored for years, and excluded from their carefully prepared and printed annual catalogues and advertisements.

The cautionary words, “keep all taps screwed up,” are not the subject of a claim to exclusive use, as has been held and well settled in the cases of Falkinburg v. Lucy, Cox T. M. C., 465-6; Gillott v. Esterbrook, Ibid., 350; Gilman, &c., v. Hunnewell, &c., 122 Mass., 149, and because they are words of caution which the appellees may use with equal truth, sincerity, and from a necessity common to the use and handling of plows.

The alphabet, English vocabulary, and Arabic numerals, are to man, in conveying his thoughts, feelings, and the truth, what air, light, and water are to him in the enjoyment of his physical being. Neither can be taken from him. They are the common property of mankind, in which all have an equal share and character of interest. From these fountains whosoever will may drink, but an exclusive right to do so cannot be acquired by any. And the appellants, having drawn from the common fountain the letters and numerals named, cannot claim an.exclusive right to them or their use.

Having disposed of the appellants’ alleged title to the exclusive use of the letters “A O,” “B O,” “C O,” the word “Pony,” and the numerals “ “ I,” “2,” “3,” “8,” we are brought face to face with an exceedingly important question, whose solution will settle the merits of. this controversy. It is, whether courts of equity will afford a remedy against the invasion of and injury to a trade-mark, or the trade reputation of its owner which he has acquired through the trade-mark itself, or its accompanying indicia, which represent only the quality, size, character, description, or caution in the use of the article to which the trademark is attached.

The ground of jurisdiction is one thing, and the evidence or fact of infringement is another.

Courts of equity proceed “on the principle of protecting property alone,” and the promotion of honesty and fair dealing. The protection of the public alone is not sufficient ground for the jurisdiction. However, it is an element which enters, and ought to enter, into every case.

The property really consists in the exclusive right of a manufacturer or owner to sell his products or goods as his own, and in being protected in the exercise of that right by the exclusion of all others from its enjoyment, either by selling theirs for his or causing others to do so.

It is not necessary to a recovery in equity, where the trademark itself, in whole or in part, has been appropriated, to prove fraud or an inferiority of quality of the article of the defendant. This principle is based on the ground that a trade-mark, when in use, is property itself. (Edelston v. Edelston, 1 De G., J. & S., 185.)

But when the infringement of the property-right has been committed by other means than the appropriation of the trade-mark itself,- it is essential, even in equity, to show a fraudulent intent, otherwise there could be no safety in the use of those things which are common to all, and which cannot be exclusively appropriated; as to them, no legal injury can flow from their innocent, ordinary, or proper use.

At law special damage, unless damage is presumed, deceit, or fraudulent intent, must be proven in all cases to warrant a recovery. This is not, as we have stated, universally so in equity, but it is common to both law and equity where the infringement is perpetrated by other modes and means than the use of any part of a trade-mark itself.

The remedy at law is not adequate, in all cases, to the protection of this species of property, commonly known as trade reputation, because no injunction can be had against a continuation of the injury, and nothing but nominal recovery, unless special damages are shown. (Blofeld v, Payne, 4 B. & Ad., 410, King’s Bench.)

The deficiency of the remedy at law has caused the courts of equity to take jurisdiction of this class of cases, and extend protection to this great right of property, in whose exercise the public are deeply interested, and in whose maintenance the commercial honor and trade integrity of the state are profoundly concerned:

The ascertainment and explanation of that jurisdiction will be followed by the discussion of the law of infringement, and the analysis and application thereto of the facts of this-record.

In the rather noted case of the Leather Cloth Co. v. American Leather Cloth Co., House of Lords, reported in Cox T. M. C., on which the appellees rely for the remarkable doctrine that no protection qan be given unless the appellants show they have a technical trade-mark, all or some part of which has been appropriated and u-sed by the appellees to their injury, the lord chancellor reversed the vice chancellor, because the plaintiff’s alleged trade-mark was not a trade-mark, and it contained misrepresentations amounting to a fraud upon the public.

In criticising the views of the lower court, the lord chancellor stated the doctrine to be:

"First. The goods of one may be sold as the goods of another without giving to that other person a right to complain, unless he sustains, or is likely to sustain, from the wrongful act, some pecuniary loss or damage........

‘ ‘ Second. It is not requisite for the exercise of the jurisdiction, there should be fraud or imposition practiced by the defendant at all. ”

The last proposition was laid down with reference to a trade-mark proper, and is undoubtedly the law. The first proposition is equally sound, and is applicable, whether there is a trade-mark shown to have been dismembered or not, if the goods of one have been intentionally and fraudulently sold as the goods of another, and he has sustained damage, or the former threatens to continue his acts, which the court is bound to conclude will result in damage.

This extension of the lord chancellor’s unnecessarily restricted views, is justified by what was said in the house of lords, on appeal in the same case, by Lords Cranworth, Kingsdown, and the lord chancellor himself.

Lord Kingsdown declared it to be the law, and no one disputed it, that the defendants “had no right, directly or indirectly, to represent that the article which they sold as manufactured by Crocketts, or by any person to whom Crocketts had assigned their business or their rights. They had no right to do this either by positive statement or by adopting the trade-mark, . . . or by using a trade-mark so nearly resembling that of plaintiffs as to be calculated to mislead incautious purchasers.” He makes a manifest distinction between making a “positive statement” and the usurping of a trade-mark as a means of infringement.'

Lord Cranworth said, that “ the lord chancellor observes that the ground on which courts of law and courts of equity have interfered in the case of trade-marks has not been well defined, and has not been made to rest on any satisfactory principle.” That he did not think it necessary to go into the question whether the trade-mark, if it could be one, of appellants, as used by them, was entitled to protection, as it was a question of some nicety, for he thought “it clear that there was in this case no infringement.”

The lord chancellor concluded by saying he was satisfied ‘ ‘ that I assigned for my decision in the court below a ground narrower than I might have taken as the basis of that judgment,” and admitted that he did not "enter into the consideration of the voider view of the subject, which has been so forcibly urged by my noble and learned friends,” and concluded that the appellant' had no trade-mark at all; that it was nothing more than an advertisement, which had not been substantially imitated by the appellees.

It results, from these observations, that the grounds of jurisdiction were laid down too narrowly by the lord chancellor, and in a manner not necessary to the decision of the case, and that, so far from that case contracting the jurisdiction of the courts of equity to the narrow limits of an action at law, or within the bounds prescribed by the instruments with which the wrong may be done, it virtually concedes the jurisdiction to protect the complainants had they come with clean hands, and shown that the defendants, either directly or indirectly, by positive statement or adoption of a known or rightfully possessed and used trade-mark, represented the article they sold as manufactured by the complainants, and that they had sustained, or were likely to sustain, damage by reason of the wrongful act.

After repeating the principle that no man has a right to sell his own goods as the goods of another, nor to dress himself in colors and symbols to which he has no exclusive right, and thereby personate another, or represent that he is selling the manufacture of such other, while, in reality, he is selling his own, the Master of the Rolls, in Croft v. Day, Cox T. M. C., 657, said: "The right which any person may have to the protection of this court does not depend upon any exclusive right which he may be supposed to have to a particular name, or to a partiadar form of words. His right is to be protected against fraud, and fraud may be practiced against him by means of a name, though the person practicing it may have a perfect 1'ight to use that name, provided he does not accompany the use of it with such other circumstances as to effect a fraud upon others.

This doctrine was quoted and approved in the case of Stone v. Carian, 13 Mo. L. R., 360; Cox T. M. C., page 116, where the false pretenses of the defendant were made the basis of the relief, and the use of badges, symbols, and similar carriages, all of which might have been properly used, as they were not exclusively the property of the complainant, were held to have been so used, under the circumstances of that case, as to amount to fraud, although it is clear that the name of the hotel, “Irving Hotel” or “Irving House,” was the only thing among the complainant’s signs and symbols that could be treated as exclusively appropriated by him as a trade-mark within the meaning of the law.

So in the .case of Knott v. Morgan, the words “ Conveyance Company” and “London Conveyance Company,” and other words used by complainants, were held to be common property, and therefore not the subject of exclusive right; yet the court said “they have a right to call upon this court to restrain the defendant from fraudulently using precisely the same words a7td devices which they have taken for the purpose of distinguishing their property, and thereby depriving them of the fair profits of their business by attracting custom on the false representation that carriages, really the defendants, belong to “and are under the management of plaintiffs.”

What were those words and devices? They were not trade-marks, justas “AO,” “BO,” “CO,” “Pony,” and “ "i,” “2,” “3,” and “8” are not trade-marks; yet their combination and use, because not to designate the defendant’s omnibuses and business, but to imitate the plaintiff’s, and thereby attract his custom and take his profits, were held to be illegal.

The case of Lemoine v. Ganton, 2 E. D. Smith, 343, was where the complainant had abandoned one trade-mark and adopted another, and a verdict for nominal damages was sustained in his favor against the defendant who had assumed the discarded trade-mark, and thereby sold his calf-skins as the manufacture of the complainant, the court saying, “it makes no difference whether that object was effected by counterfeiting the trade-mark which he uses at present, or one that he formerly used.” in that case, certainly, title to the trade-mark by which the fraud was committed was not shown, and it was not necessary to show it.

The supreme court of the United States used this language in McLean v. Fleming, 96th U. S., 254: “Nor is it necessary, in order to give a right to an injunction, that a specific trade-mark-should .be infringed; but it is sufficient that the court is satisfied that there was an intent on the part of the respondent to palm off his goods as the goods of the complainant, and that he persists in so doing after being requested to desist.”

The court, with approval, cites the case of Woollam v. Ratcliff, 1 Hem. & M., 259, in support of their opinion.

Such is the ruling of the supreme judicial court of Massachusetts in the case of Thompson v. Winchester, 19 Pick., 214.

Thompson invented certain medicines, which he designated “Thompsonian medicines,” and the evidence offered by him to make out his case was to the effect that the defendant had prepared medicines of an inferior quality, and had sold the same as pure Thompsonian medicines, and as and for medicines prepared by plaintiff himself. The court rejected this evidence, and the jury, under instructions in accord with that ruling, found for defendant, but the supreme court reversed the case, and said “that if the defendant made and sold medicines calling them ‘ Thompsonian medicines,’ and sold them, or placed them in the hands of others to sell, as and for medicines made and prepared by the plaintiff, so that persons purchasing the same supposed and believed that they were purchasing the medicines made and prepared by the plaintiff, it was a fraud upon the plaintiff and an injury to his rights, for which the law will presume some damage,” citing Sykes v. Sykes, 3 Barn. & C., 541, which is to the same effect. The words “Thompsonian medicines ” had become their proper appellation, and therefore not subject to exclusive appropriation, and the defendant had the-right to prepare medicines of an inferior quality, and call them by that name; yet he was held responsible for selling his medicines as those of the plaintiff. This case illustrates the rule suggested in -the beginning of this opinion, that at law the plaintiff who has an exclusive right to a trade-mark has no right to recover where the trade-mark alone has been taken, unless special damages be shown, and that, whether he has a trade-mark proper or not, if by fraudulent means and with fraudulent intent the defendant sells his goods as and for those of the plaintiff the law will presume some damage, .and he “will be entitled to recover nominal damage at least, and something more if he can make it appear that he has sustained more than nominal .damages. ” It is plain, from these authorities, that the damage at law does not grow out of the mere adoption of a trade-mark, but it arises from the fact that sales have been made by defendant of his goods as and for the plaintiff’s goods.

This results in damages, either by curtailing the amount of plaintiff’s sales or substituting inferior goods for his, which injures his reputation. For this damage he has his remedy, because it grows out of a legal injury.

In Singleton v. Bolton, 3 Doug., 293, Lord Mansfield said, “that if the defendant had sold a medicine of his own under the plaintiff’s name or mark, that would be a fraud for which an action would lie;” but he non-suited the plaintiff because he and defendant used the name of the original inventor, which had become evidently the proper appellation of the ointment, and because “no evidence was given of the defendant having sold it as if prepared by the plaintiff.

The case of Morgan Sons & Co. v. Troxell is important, because no trade-mark was there dismembered and the parts appropriated for the accomplishment of the fraud; yet the court granted relief, saying: “ We deem it, then, to be well settled that, to justify the interference by injunction of a court of equity, it is sufficient that there is a fraudulent intention of palming off the defendant’s goods as those of the plaintiffs’, and that such intention is being carried into execution.” . . . This case was subsequently reversed because of insufficient proof, the court saying: “What remedy there is for such a wrong, if proved, is not necessary now to inquire.” (89th N. Y., 298.)

In Perry v. Truefitt, 6 Beavan, 66, Lord Langdale said: ‘ I think that the principle on which both the courts of law and equity proceed, in granting relief and protection in cases of this sort, is very well understood. A man is not to sell his own goods under the pretense that they are the goods of another man; he cannot be permitted to practice such a deception, nor to use the means which contribute to that end. ”

In Singer Manufacturing Co. v. Brill, Superior Court, Cincinnati, the judge delivering the opinion said: “It is competent for one engaged in business to protect that business and the reputation he may acquire by more ways than one, and the law will not allow a man, when called to account for an infringement of an adopted means of protection, to defend by answering that the complainant has still other marks or means whereby to protect himself that he has not interfered with. And accordingly it has been held that ‘ it will make no difference that the plaintiff has also a trade-mark which has not been taken by the defendant.’ ” (Braham v. Bustard, 1 Hem. & Miller, 447.)

The supreme court of New York, 1872, in Cook v. Starkweather, C. M. T. M., page 221, held, “that whether the plaintiffs voere or were not entitled to the exclusive ttse of the words ‘Valley Whisky’ or ‘Old Valley Whisky,’ which was not clearly established, the course of conduct adopted by the defendants was intended and calcidated to deceive, and the plaintiffs were therefore entitled to an injunction.”

Kinney v. Basch is analyzed by Cox M. T. M., p. 304, where it is said: “The plaintiff being ai manufacturer of cigarettes, on which he used a label containing a device of sun’s rays, the words ‘St. James,’ and the symbol ‘ j4,’ the defendants sold other cigarettes with the label containing the words ‘St. James Parish Perique Cigarettes’ (of which the words ‘St. James’ were much the more conspicuous) and the symbol ‘ in the same style as the plaintiff’s, but the labels were in other respects different. «.

“Injunction granted to restrain the defendants from using the device of the sun’s rays, and also the symbol ‘ *4,’ and words ‘St. James,’ alleged to be the plaintiff’s trade-marks, 011 the ground that whether the plaintiff had or had not an exclusive right in the marks, the defendants had so acted as to deceive. ’ ’

Van Bunt, J., places the jurisdiction on the ground of fraud upon the public, even at the suit of a plaintiff who has not the exclusive right to the use of the words, numerals, or symbols. While we think fraud upon the public may enter into the ground of jurisdiction, it of itself, in our judgment, is not sufficient unless some proba.ble or possible injury to-the plaintiff is shown. If the plaintiff cannot show that his rights or interests are injured or taken from him, he can have no standing in court, for strictly he represents the public no more than any one else.

The confusion which prevails in the argument against the jurisdiction in this case results from assuming that in all cases the complainant must make out a legal title to an exclusive trade-mark by means of which, or some part of which, the defendant has done the wrong and injury to his rights.

The authorities do not sustain this assumption, but, outlie contrary, are numerous and strong that the wrong consists in one person fraudulently selling his goods as and for those of another, either by the use of the other’s trade-mark or indicia, or by any means whatever, if such fraudulent practices result, or are likely to result, in damage to the complainant.

• In fact, none of the cases at law which we have’examined require the--plaintiff to prove the'existence of a trade-mark strictly and &his title thereto, in order to recover for the fraudulent sale by another of his goods as those of the plaintiff.

There is good reason in support of this principle. Suppose A has earned a great reputation for making and selling, plows which he does not mark at all, but which -are known in the market by their perfection in shape and finish, and B, makes a plow precisely like it in appearance, but not one fourth so valuable intrinsically, could B go about, with impunity, for his own gain, to injure A and deceive the public, selling his plows as and for those of A, by orally misrepresenting them as A’s plows? We are inclined to the view that A would have his action for deceit and fraud which: would, if not checked, finally break down his reputation for making a good article.

This view is not, however, in its full breadth, necessary to the decision of this case, but it illustrates the reason which underlies the well understood jurisdiction of courts of equity which they now exercise in preventing the unjust work of deceit, misrepresentation, and fraud, by intercepting their gains and restraining the use of their chosen weapons.

As the object of the courts of equity is to prevent one man injuring another’s rights by selling his goods as those of the other, why not prevent all fraudulent misrepresentation, whether oral, by signs, symbols, trade-marks, labels, words, or figures, by which that wrong is accomplished ? The injury is the same, no matter how nor by what means it may be done, and the responsibility should attach when that injury is deliberately and fraudulently committed.

This limit must be observed, that if the means used are such as are common to all, or not exclusively appropriated by another, and injury follows which is not the result of design and improper use of those means, no remedy exists. There may be a design in adopting lawful means to absorb another’s trade reputation; yet, if those means are the common property of all, and are used in a lawful manner, and damage ensue, it would be damnum absque injuria.

But where such means are perverted, and so combined and used as to represent the goods of one as the manufacture of another, and for the purpose of selling them as such, there is no room to doubt the power of a court of equity to grant relief.

Care should be taken not to interfere with the freedom of trade, or to foster monopolies on the one hand, nor to refuse relief in a proper case where the cry of monopoly and interference with trade is deceptive, on the other.

The fraud is most frequently accomplished by the illegal use of names, forms, words, and numerals which ordinarily belong to the common stock, and are not the subject of exclusive appropriation. Instead of employing them in their' propel- sphere to designate number, size, elements, quality, description, or give direction or caution, they are selected because of the known innocent purpose they generally serve, and combined so as not only to represent quality or other particles within the scope of their lawfully prescribed functions, but to cause the goods or articles to which they are attached to be purchased by the public as the make or manufacture of another; thus violating that great generic rule which lies at the foundation of all law, that a man must so use his own property as not to 'injure the property of another.

The logic 'of this position would be conclusive, even were it without the support of authority.

Mr. Justice Gray, in Gilman v. Hunnewell, 122 Mass., 150, and the Master of the Rolls in Croft v. Day, 7 Bevan, 84, said that every case of trade-mark, and what is proper to be done in each, depends upon its own circumstances.

These observations of those learned judges belong to the necessity of such cases, for were the rules of law applicable to trade-marks so fixed and invariable as to try all future cases alone by the past, the wary and cunning would, by evasion, soon abrogate their efficiency. This suggestion is aptly sustained by the present case, where each particle simulated is the common fund of all for the attainment of the ends they commonly subserve.

The law says you may use anything which is the common property of all, or that cannot be exclusively appropriated, but you must use it to convey the ideas which it commonly expresses, and of which it is the accepted sign. You must use it to tell the truth, the whole truth, and nothing but the truth.

You cannot, under pretense of exercising a common right of use, and by reason of the fact that the means used represent the quality and size of your goods, so use them that, while they perform this simple and innocent purpose apparently of representing quality and size, caution and description, you cause them to do more — to represent your goods as those of another, and by the seeming fairness which follows the selection of a legal or innocent instrument or means, escape the consequences of an illegal use thereof. • This would be stealing the livery of heaven to serve the devil in.

This would be perverting the privileges >and uses of our language, under the pretense of describing one’s own, to take another’s from him. Can such illegal use be made of written or oral language, because it is no harm to use that language about matters not foreign to its objects ?

Quality, size, description, caution, elements, &c., may be indicated or named by the use of the words, letters, and numerals described above. This is the appellees’ right; but it is not because the words, letters, and figures do that, that he is complained of, for he has the right to use them for those purposes. But the complaint is, that these letters and figures have been used not to do this alone which was rightful, but they have been used for an ulterior purpose. The appellees selected the same letters, the same words, the same numerals, and put them in the same colors, and upon the same places on their plows, as were used by appellants on their plows. For what? To represent quality and size alone! Who could believe it! Why not take type from a different font? Why not take other numerals that would serve the same purpose better ? Why adopt as a number “ i,” “2,” “3,” “8?” Why “A O,” “B O,” “C O, ” “P O?” No answer can be given, except that a man intends the natural consequences of his own act; and the consequences of this act are to take appellants’ trade, built up on his reputation, and transfer it to appellees, by using that reputation to sell appellees’ plows.

This departure from the easy and common way of using those letters and figures, and the adoption of a troublesome, costly, and painfully prepared imitation, both of plows and 'letters, is attempted to be excused on the alleged ground that appellees were making better plows than appellants. This excuse is so transparent a subterfuge to escape the effects of their conduct, that it deserves to be mentioned because of its boldness only, and as an illustration of the intent of appellees.

• Would they take to pieces one of appellants’ plows, then make their’s like it, brand them at the same points and in the same way, paint them alike, make the same interchangeable metal points, abandon their old lettering, and adopt the letters and numerals of appellants, if they were making a -better plow, and thus run the risk of confusion with inferior plows? Who would thus dig a ditch to fall into himself? The eyes of capital, trade, and commerce are too keen not to see and avoid such folly. No man in his senses would commit it, and we cannot believe the appellees did so. If they did not, then the reason assigned by them for this elaborate imitation is false, and we must look for another ■and true reason, which may be easily found, for it lies upon the surface, it is pointed out by the experience of the race. Those letters and figures on the skillful imitations, unless we deny the evidence of our senses, the plows having been xehibited to us, were used to enable appellees to sell their plows as and for those of the appellants, and thereby injure their trade reputation, lessen their sales, and share their profits and customers.

The question must not be confined to what the appellees used, but how and for what purpose they used the indicia ■copied from appellants’ plows.

If so restricted, the case is plain, for what they used they had the right to use, but the manner in which they used these letters and figures constitutes the wrong. They have used lawful things in an illegal way. Instead of using them to designate quality and size merely, which is allowable, they did not content themselves, but, under the pretense of designating quality and size, which the letters and figures really do, they pressed them into another service, by placing them at points and in positions on their plows that corresponded with the manner of their use by appellants. For this reason the appellants’ trade-mark could not perform its legitimate functions ; its power of designating their make of plows was lessened, and to that extent their trade coming to them from their reputation, as evidenced by their trademark, was destroyed, and the way opened for appellees to claim that loss as their gain, thus usurping the trade reputation of appellants by the artful manner of using and combining artificial signs common to all as signifying quality and number generally.

Appellees’ counsel cite the following text in support of their view: “If, through the lawful and proper exercise by one man of his own rights, a damage results to another, even though he might have anticipated the result and avoided it,” it is damnum absque injuria. (Cooley-on Torts, p. 31.)

This is sound law; but if he uses his lawful rights and property in an unlawful or improper manner, then, if damage follow, it is damage with injury where he so uses, his own as intentionally to injure another. This no mart has the right to do, and this is the distinction which appellees’ counsel fail to recognize. It is also said that a bad motive may render a bad. act worse, but it cannot render a lawful act unlawful. This is also true; for if a man with a bad motive exercises his rights in a lawful and proper way, and injury ensues, it is damage without legal injury; but if he, with a bad motive, exercise his rights in an unlawful manner, and injury is thereby done to another, there is damage and a legal injury; for instead of exercising his rights in-order to their legitimate and full enjoyment, which he may do although it injures another, if he so exercises his rights as not only, to enjoy them himself, but to do more, to go beyond, and use them in such a manner as to intentionally and fraudulently injure another man’s rights, it is wrong in principle, condemned by authority, and unsupported by a single analogy fairly and logically applied.

The whole argument of appellees’ counsel is based upon the false assumption that a legal injury cannot be done by the improper use of lawful means, and that the very act in question is legal.

There is a difference between lawful means and the unlawful use of those means.

A bad intent, it is indubitably true, cannot render a legal act worse, but this rule must not be misapplied. A bad intent cannot render legal means or things illegal, nor can it render a legal act' worse, but a bad intent does make an illegal act done by the use of legal things a great deal worse.

This position of the appellees illustrates the difficulty which courts of equity meet in the enforcement of justice in cases of this character.

While the limitation to the exclusive use of the language confines the selfish monopolist to those words, letters, numerals, and symbols which indicate the origin and ownership of his goods, and which no other person can use with like truth, there is also a qualification to the manner in which the residue or common stock may be used. No part of it can be diverted from its ordinary functions, and perverted to the work of piracy.

Though innocent in itself to communicate ideas and represent the product of all labor, its quality, kind, and most minute and general description, they are the most dangerous means with which to misrepresent the goods of one as and for those of another, for it is hard to see the difference, at first blush, between the lawful and unlawful use of that common stock which it is conceded belongs equally to mankind.

Confounding the legality of the means used with the charge alleged in the bill, we are met with the skillful excuse that a bad motive never renders a legal act worse, and .particles which, when properly used for lawful purposes, would be harmless, are piled up, one after another, in such a! disconnected way that obscures the effect of their combined power, until the innocent instruments, having done the work of invading appellants’ trade reputation, are made the defense to their own misuse. But whether ¿rising from the common stock, or that which is exclusively appropriated, the use must not be fraudulently abused, and the rights of others wrongfully taken from them, hence we say that courts of equity have jurisdiction, no matter what the means may be, if perverted from their true objects, by which one manufacturer represents and sells his goods as and for those of another.

The general rule as to what constitutes infringement is attempted to be laid down in various cases, but it will be found that no rule can be formulated that will anticipate and embrace every act of infringement. So each case must depend mainly upon itself for the rule and proof of this essential prerequisite to recovery.

“It is not necessary that the resemblance produced should be such as would mislead an expert, or such as would not be easily detected if the original and the spurious w'ere seen together. It is enough that such similitude exists as would lead an ordinary purchaser to suppose that he wras buying the genuine article and not an imitation.” (129 Mass., 325.)

“Although the mark might not deceive if placed, side by side with the plaintiff’s mark, it was calculated to obtain for the defendant’s goods the same name as that by which the plaintiff’s were known, and to deceive an ordinary purchaser who had not an opportunity of comparing the marks.” (Moses v. Sargood, Ewen & Co., Cox M. T. C., 636.)

“ It is a mistake to suppose that the resemblance must be such as would deceive persons seeing the two trade-marks placed side by side.” (Judge Clifford in Manufacturing Co. v. Trainer, 101 U. S., 64.)

In the case of McAndrew v. Bassett, much importance was attached to the fact that the defendant had laid aside the mark he had previously used, and took up that of the complainant. The lord chancellor said:

“ The fact of its adoption by the defendants is itself pregnant with proof that they regarded it as a thing desirable to be done. They thenceforth use it vn. preference to what they previously used, and the reason is clearly to be collected from the letter which was the occasion of the first introduction to them of the mark, and the occasion of their adopting it.” (10th Jur., N. S., 550; Cox’s T. M. Cases, 673.)

“In every case,” says Vice Chancellor Wood in the Taylor’s Persian Thread Case, “the court must ascertain whether the differences are bona fide, in order to distinguish the one article from the other; whether the resemblances and the differences are such as naturally arise from the necessity of the case; or whether, on the other hand, the differences are simply colorable, and the resemblances are such as are obviously intended to deceive the purchaser of the one article into the belief of its being the manufacture of another person. Resemblance is a circumstance which is of primary importance for the court to consider; because if the court finds, as it does almost invariably find in such cases as this; that there is no reason for the resemblance except for the purpose of misleading, it will infer that the resemblance is adopted for the purpose of misleading.” (Taylor v. Taylor, 2 Eq. Rep., 290; Cox’s M. T. M. Cases, p. 70.)

In Seixo v. Provezende it was said:

“ If a purchaser looking at the article offered to him would naturally be led, from the mark impressed on it, to suppose it to be the production of the rival manufacturer, and would purchase it in that belief, the court considers the use of such a mark to be fraudulent. But I go further. I do not consider the actual physical resemblance of the two marks to be the sole question for consideration. If the goods of a manufacturer have, from the mark or device he has used, become known in the market by a particular name, I think the. adoption by a rival trader of any mark which will cause the goods to bear the same name in the market may be as much a violation of the right of that rival as the actual copy of his device.” (L. R., 1 Chy., 192; Cox’s M. T. M. Cases, p. 146.)

Vice Chancellor Mallins said:

.“The rule of the court is, that a man who has adopted a distinguishing mark has a right to be protected against any other person adopting one sufficiently like it to mislead an unwary public. ’ ’

In the samé case, upon appeal, the Lord Chancellor, in 1872, said:

“Though no one particular mark is exactly imitated, the combination is very similar and likely to deceive. It is true that there is no proof that any one has been deceived or that the plaintiffs have incurred any loss; but where the similarity is obvious, that is not of importance.” (Abbott v. Bakers and Confectioners’ Tea Association, Cox M. T. C., 213.)

In the justly celebrated opinion of Judge Duer, in the Amoskeag Manufacturing Co. v. Spear, he said: “In an •imitation of the original mark upon an article, or goods of the same description, the name of the proprietor may be omitted; another name, that of the imitator himself, may be substituted;'but if the peculiar device is copied, and so copied as to manifest a design of misleading the public, the omission or variation ought to be wholly disregarded. Its object, we may be certain, was not to communicate the truth, but to escape the penalty of falsehood. A fraud is intended, an unlawful gain is meant to be realized, but it is believed or hoped that an injunction may be avoided and a claim.for profits or damages be repelled. The fraud, however, ■ if a court of equity is true to its principles, will be suppressed, and its fruits be intercepted or restored. My conclusions on this branch of the subject are, that an injunction ought to be granted whenever the design of a person who imitates a trade-mark, be his design apparent or proved, is to impose his own goods upon the public as those of the owner of the mark, and the imitation is such that the success of the design is a probable or even possible consequence.” (Amoskeag Manufacturing Co. v. Spear, 2 Sand., S. C., 599; Cox A. T. M. C., p. 95.)

“Even if the wholesale buyer is not misled, but the small retailer or the consumer is, the right of action exists, ” ■was the language used in Dixon Crucible Co. v. Guggenliiem. (See also Clark v. Clark, 25 Barb., and Brooklyn White Lead Co. v. Masury, Ibid.)

In the case of Coates v. Holbrook) Vice Chancellor Sandford said :

“A man is not to sell the goods or manufacture of B under the show of pretense that they are the goods or manufactures of A, who, by superior skill or industry, has established the reputation of his articles in the market. The law will permit no person to practice a deception of that kind, or to use the means which contribute to effect it. fie has no right, and he will not be allowed, to use the names, letters, marks, and other symbols by which he may palm off upon buyers as the manufacture of another the article he is selling, and thereby attract to himself the patronage that, without such deceptive use of such names, etc., would have inured to the benefit of that other person who-first got up or. was alone accustomed .to use such names, marks, letters, or symbols.” (Coates v. Holbrook, 2. Sand. Chy. R., 504; Cox’s T. M. Cases, 221.)

The court said, in Gillott v. Esterbrook:

“The design to defraud by manufacturing and packing pens in all respects similar to the plaintiff’s, excepting only in the use of the name, appears very plainly. I cannot reason so artificially as to disguise this conclusion from myself.”

The language of Lott, senator, in Taylor v. Carpenter, shalL close our quotations on the manner infringements have been made, and the means and acts which have been declared to-be infringements; he said:

“ Honest competition relies only on the intrinsic merits of the article brought into market, and does not require a resort to a false or fraudulent device or token. That certainly cannot deserve the appellation which studiously gives-to the product of pretended superior skill the name and exact resemblance and imitation of the article with which it professes to compete. A disguise is not usually assumed for an honest object. It is a mark more characteristic of deception and fraud. It defeats the very end and object contemplated by legitimate competition, the choice to the public to select between the articles sold, and operates as a deception and imposition on the dealer.” (2 Sand. Chy. Rep., 613.)

What is lacking in authority to reach every case of infringement, may be easily supplied from the never-failing fountain of justice, where principle finds universal application. What are the facts of this case?

The appellees have not used a single letter, figure, or word that belongs to appellant’s trade-mark proper; yet by the exact simulation of the plow in- every perceivable point exposed to an ordinary observer and purchaser, and the use of the same coloring and staining, the same relative position of the letters and figures, as employed and used by the appellants, avoiding the literal' appropriation of any part of their trade-mark, the appellees have obscured their own and appellants’ trade-mark, but at the same time sought to avoid detection and responsibility in doing so, and to cause their plows to be taken for and purchased as those of appellants.

Thus, by skillful combination of legal particles taken one at a time, and in the aggregate, leaving the mere trade-mark untouched, they have so confused its force and effect as to destroy its office and real efficiency to distinguish the appellants’ plows from all others.

First. The appellees laid aside their own letters and numerals which they commonly used to indicate the size, series, and qualities of their plows, and literally took up those of the appellants.

Second. They quit lettering cast and figuring steel plows, and reversed that order and adopted the order of use by-appellants.

Third. They consulted and deliberated before adopting the letters and numerals, or imitating the construction of appellants’ plows.

Fourth. After this deliberation, they so imitated the construction, numerals, and lettering of appellants’ plows that nothing but the reading of their trade-mark and close inspection could distinguish the difference.

Fifth. They made large quantities of plows, leaving off their own trade-mark and name, and substituted therefor the names of jobbers, who were well known in the market to be venders and not makers of plows, making it therefore in their hands impossible, without the aid of expert knowledge, to tell the difference between a Meikle and Avery plow, as they both had the same indicia and were constructed alike, the makers’ name being altogether suppressed.

Sixth. They have employed small salesmen to sell their plows, who place them on the market one half dollar cheaper than the Avery plow, and so advertise them as to be taken for those of the appellants.

The combined force of this evidence is irresistible. It shows an intentional infringement, and not only possible injury, but such facts from which the law presumes some injury at least to be the necessary consequence.

If such infringement as this be not enjoined, and the profits resulting from it returned, then trade-mark law will never accomplish its prime object named in the first sentence of this opinion on that branch of the subject we have discussed.

The trade-mark and trade reputation pirate always undertakes the difficult task of sailing between the Charybdis and Scylla of the law, but he should never be allowed a successful voyage. If, on the one hand, he escapes the rock by not infringing through the instrumentality of the trade-mark itself, he will not, on the other, if courts of equity are true to the principles of their own existence, be allowed a safe passage by the use of any means of deceit or false representation known to the inventive brain of man.

Courts of law and equity have finally become possessed of jurisdiction, through the unfolding process of adjudication, ample to protect a trade-mark which may be used by all to distinguish their goods from others; to prevent the sales of the goods of one as being those of another by means of fraud and misrepresentation in the use of marks, signs, words, numerals, or symbols; to afford redress for such sales of goods which are a misleading imitation of those of another for whose manufacture they may be sold, where the sales are made by the use of the trade-mark of another, or direct or indirect intentional false representations or fraud, from which damage is presumed, and its extent may be proven.

In all cases, however, the conduct or adopted means of the imitator must be such as does or would probably deceive the ordinary mass of purchasers.

In conclusion, we repeat that this law grows out of the common principle of justice that the rights of each should be so used as not unnecessarily to injure those of others whose skill has made their goods valuable which consists in their reputation that finally compensates them for their enterprise, industry, and fidelity.

We are, therefore, of the opinion that the relief prayed, so far as not inconsistent with this opinion, should have been granted. Wherefore, the judgment is reversed, and cause remanded for further proceedings consistent with this opinion.

The thanks of the court are tendered to the able counsel on both sides of this case for the great assistance they have rendered us in our efforts to arrive at a conclusion in strict obedience to authority and principle.