Newman, District Judge.
After much reflection, I am satisfied that a proper determination of the question before the court in this case de- ■ )ends upon the construction to be given the contract of sale from Thedford to Patten and his associates. The evidence does not show that the medicine made by M. A. Thedford & Co., of Rome, is the same as to : ngredients as that made by the Chattanooga Medicine Company, and -.here is such an entire dissimilarity in labels and wrappers used by the former company to those used by thelattér, that it could hardly he held, :.f the ease turned upon that alone, that there.was any infringement of complainant’s rights. The case seems really to turn upon the right of ,he Chattanooga Medicine Company to use the name of “M. A. Thed[951]*951ford & Co.” as they arc now using the same in the manufacture, advertisement, and sale of what is (¡ailed “M. A. Thedford & Co.’s Origina! and Only Genuine Liver Medicine or Black Draught.” Indeed, the main contention of counsel for complainant is that M. A. Thedford is violating his contract in the use of his name in the connection with the medicine which he is preparing and offering for sale. Did Thedford, in his contract with I’atten, bind himself so that he violates his agreement in the use of his own name in connection with what he calls “T. L. 1.?” The language of the contract, so far ns material hero, is as follows:
“I hereby transfer and convey to the said Z. C. I’atten all and every of my rights, title, and interest whatsoever that I have been, and am now, or may hereafter become, possessed of in the right to manufacture, make, advertise, and sell the said ‘Simmons Liver Modicine.’ And I hereby bind myself not to engage in the business of manufacturing or selling the said medicine under any name or style, or to become interested in its manufacture through any other person whatsoever, except I should become the owner of any part or interest sold to Smith, McKnight, or Patten in the manufacture and sale of said modicine under the firm name style of M. A. Thedford & Co. Then nothing in this conveyance shall he construed to interfere with my right in manufacturing and sale of said medicino. It is also agreed and understood that all my right, title, claim, and interest in and to the use of the present trade-mark that I now own and possess, or have previously or may hereafter own and possess, and the firm name and the stylo of M. A. Thedford <fc Co. is hereby transferred to Z. C. Patten, W. G- Smith, and Charles McKnight, for the purpose of manufacturing, advertising, and selling the ‘Simmons Liver Medicine,’ and they have the sole right to use said firm name in any manner they may see proper in the manufacturing, advertising, and soiling the said A. Q. Simmons Liver Medicine, and to sell, lease, or transfer the same to their assigns or successors; and plates, electrotypes, and lithographing stones, and printed matter bearing the signature of M. A. Thedford & Co. are sold and conveyed to said Patton, Smith, and McKnight, for use aforesaid, of manufacturing, selling, &c., said ‘ Simmons Liver Medicine:’ provided, however, that in the use of said signatures and firm name of M. A. Thedford & Co. I am in no way responsible, it being simply to be used as a trade-mark of the business, and, as such, the right to use it is transferred to the said Patten, Smith, and McKnight, and their successors.”
It will be seen from the language used in the contract that the transfer and sale of the right to use the name of M. A. Thedford & Co. was confined to its use in connection, with the manufacturing, advertising, and selling “Simmons’ liver Medicine,” and with that alone. It seems to be perfectly plain from the words used that the parties intended by the contract to restrict the right to the use of the name of M. A. Thedford & Co., so that it should be used in order to hold the present business of Thedford to be in violation of his agreement; that the contract must bo given a much broader signification than the above indicated. I am not prepared to hold, in view of the language of the parties, that Patten and his associates acquired more by this contract than the right to use Thedford’s name in advertising and selling what is known as “Dr. Simmons’ Liver Medicine.” If the construction of this contract goes beyond that indicated, and if the intention of the parties, as derived from the contract, could be that Thedford agreed not to use his own name in the ruanu[952]*952facture and sale of any liver medicine, it would be questionable, at least, if the contract would not be in restraint of trade, and therefore against public policy, and void. It is understood, of course, that the sale of the right to make, advertise, and sell a compound with secret ingredients would be valid, in no way violative of public policy; and that is what I understand that Thedford, by his contract, has done. Justifying in any way the contention of complainant as to the right to use the firm name oi M. A. Thedford & Co., it is necessary to separate the proviso which concludes the quotation which I have made above from the contract from that which precedes it, and this I do not think can fairly be done. Tie language of this proviso is:
. “Provided, however, that in the use of said signature said firm name of M. A: Thedford & Co. I am in no way responsible, but this is simply to be used as a trade-mark of the business, and, as such, the right to use it is tnnsferred to the said Patten, Smith, and McKnight, and their successors.”
Now, the right to use this firm name- in the preceding part of the contract is for the purpose of “manufacturing, advertising, and selling ‘Summons’ Liver Medicine.”’ It can hardly be said by this proviso, wiich was intended to be restrictive in its effect, the parties intended to ei large the right to use the name beyond that which has been before expressed. I think it may safely be said that the court will not, in contracts of this sort, in which a transfer is made of the rights to the use oí a person’s own name in a business enterprise, extend or enlarge the operation of the same beyond its necessary import. In the case of Zoilin & Co. against Dr. A. Q. Simmons’ Liver Medicine Company and others, (said company having succeeded the firm to which M. A. Thedford had made the sale,) to which suit McKnight and Patten were parties defendant, a decree was entered by which the defendants were er joined “from making, selling, or offering for sale any medicine under tie title of ‘Dr. A. Q. Simmons’ Liver Medicine,’ or ‘Dr. Simmons’ L ver Regulator or Medicine,’ and from using the name or word of ‘ Simmons,’ or the fac simile signature of A. Q. Simmons, in any way upon ai y bottles or packages of liver medicine or of medicine made, advertised, and sold for the liver.” After this decree of court it became necessary to abandon the wrappers and the use of Dr. Simmons’ name er tirely. Then it was, or soon thereafter, that the name and wrapper now used by the Chattanooga Medicine Company was adopted.
The claim of the complainant here, so far as its claim is based on the contract, that the decree in the Zeilin suit left them the right to the pieparation itself, and to the name of M. A. Thedford & Co., and to the picture of an old man, which picture, as I understand it, they claim they may use, provided that Dr. Simmons’ name is not anywhere used- - in connection with the picture. The difficulty about complainant’s conté ition is that Thedford transferred the right to use his name in advertising and selling “Dr.
Free access — add to your briefcase to read the full text and ask questions with AI
Newman, District Judge.
After much reflection, I am satisfied that a proper determination of the question before the court in this case de- ■ )ends upon the construction to be given the contract of sale from Thedford to Patten and his associates. The evidence does not show that the medicine made by M. A. Thedford & Co., of Rome, is the same as to : ngredients as that made by the Chattanooga Medicine Company, and -.here is such an entire dissimilarity in labels and wrappers used by the former company to those used by thelattér, that it could hardly he held, :.f the ease turned upon that alone, that there.was any infringement of complainant’s rights. The case seems really to turn upon the right of ,he Chattanooga Medicine Company to use the name of “M. A. Thed[951]*951ford & Co.” as they arc now using the same in the manufacture, advertisement, and sale of what is (¡ailed “M. A. Thedford & Co.’s Origina! and Only Genuine Liver Medicine or Black Draught.” Indeed, the main contention of counsel for complainant is that M. A. Thedford is violating his contract in the use of his name in the connection with the medicine which he is preparing and offering for sale. Did Thedford, in his contract with I’atten, bind himself so that he violates his agreement in the use of his own name in connection with what he calls “T. L. 1.?” The language of the contract, so far ns material hero, is as follows:
“I hereby transfer and convey to the said Z. C. I’atten all and every of my rights, title, and interest whatsoever that I have been, and am now, or may hereafter become, possessed of in the right to manufacture, make, advertise, and sell the said ‘Simmons Liver Modicine.’ And I hereby bind myself not to engage in the business of manufacturing or selling the said medicine under any name or style, or to become interested in its manufacture through any other person whatsoever, except I should become the owner of any part or interest sold to Smith, McKnight, or Patten in the manufacture and sale of said modicine under the firm name style of M. A. Thedford & Co. Then nothing in this conveyance shall he construed to interfere with my right in manufacturing and sale of said medicino. It is also agreed and understood that all my right, title, claim, and interest in and to the use of the present trade-mark that I now own and possess, or have previously or may hereafter own and possess, and the firm name and the stylo of M. A. Thedford <fc Co. is hereby transferred to Z. C. Patten, W. G- Smith, and Charles McKnight, for the purpose of manufacturing, advertising, and selling the ‘Simmons Liver Medicine,’ and they have the sole right to use said firm name in any manner they may see proper in the manufacturing, advertising, and soiling the said A. Q. Simmons Liver Medicine, and to sell, lease, or transfer the same to their assigns or successors; and plates, electrotypes, and lithographing stones, and printed matter bearing the signature of M. A. Thedford & Co. are sold and conveyed to said Patton, Smith, and McKnight, for use aforesaid, of manufacturing, selling, &c., said ‘ Simmons Liver Medicine:’ provided, however, that in the use of said signatures and firm name of M. A. Thedford & Co. I am in no way responsible, it being simply to be used as a trade-mark of the business, and, as such, the right to use it is transferred to the said Patten, Smith, and McKnight, and their successors.”
It will be seen from the language used in the contract that the transfer and sale of the right to use the name of M. A. Thedford & Co. was confined to its use in connection, with the manufacturing, advertising, and selling “Simmons’ liver Medicine,” and with that alone. It seems to be perfectly plain from the words used that the parties intended by the contract to restrict the right to the use of the name of M. A. Thedford & Co., so that it should be used in order to hold the present business of Thedford to be in violation of his agreement; that the contract must bo given a much broader signification than the above indicated. I am not prepared to hold, in view of the language of the parties, that Patten and his associates acquired more by this contract than the right to use Thedford’s name in advertising and selling what is known as “Dr. Simmons’ Liver Medicine.” If the construction of this contract goes beyond that indicated, and if the intention of the parties, as derived from the contract, could be that Thedford agreed not to use his own name in the ruanu[952]*952facture and sale of any liver medicine, it would be questionable, at least, if the contract would not be in restraint of trade, and therefore against public policy, and void. It is understood, of course, that the sale of the right to make, advertise, and sell a compound with secret ingredients would be valid, in no way violative of public policy; and that is what I understand that Thedford, by his contract, has done. Justifying in any way the contention of complainant as to the right to use the firm name oi M. A. Thedford & Co., it is necessary to separate the proviso which concludes the quotation which I have made above from the contract from that which precedes it, and this I do not think can fairly be done. Tie language of this proviso is:
. “Provided, however, that in the use of said signature said firm name of M. A: Thedford & Co. I am in no way responsible, but this is simply to be used as a trade-mark of the business, and, as such, the right to use it is tnnsferred to the said Patten, Smith, and McKnight, and their successors.”
Now, the right to use this firm name- in the preceding part of the contract is for the purpose of “manufacturing, advertising, and selling ‘Summons’ Liver Medicine.”’ It can hardly be said by this proviso, wiich was intended to be restrictive in its effect, the parties intended to ei large the right to use the name beyond that which has been before expressed. I think it may safely be said that the court will not, in contracts of this sort, in which a transfer is made of the rights to the use oí a person’s own name in a business enterprise, extend or enlarge the operation of the same beyond its necessary import. In the case of Zoilin & Co. against Dr. A. Q. Simmons’ Liver Medicine Company and others, (said company having succeeded the firm to which M. A. Thedford had made the sale,) to which suit McKnight and Patten were parties defendant, a decree was entered by which the defendants were er joined “from making, selling, or offering for sale any medicine under tie title of ‘Dr. A. Q. Simmons’ Liver Medicine,’ or ‘Dr. Simmons’ L ver Regulator or Medicine,’ and from using the name or word of ‘ Simmons,’ or the fac simile signature of A. Q. Simmons, in any way upon ai y bottles or packages of liver medicine or of medicine made, advertised, and sold for the liver.” After this decree of court it became necessary to abandon the wrappers and the use of Dr. Simmons’ name er tirely. Then it was, or soon thereafter, that the name and wrapper now used by the Chattanooga Medicine Company was adopted.
The claim of the complainant here, so far as its claim is based on the contract, that the decree in the Zeilin suit left them the right to the pieparation itself, and to the name of M. A. Thedford & Co., and to the picture of an old man, which picture, as I understand it, they claim they may use, provided that Dr. Simmons’ name is not anywhere used- - in connection with the picture. The difficulty about complainant’s conté ition is that Thedford transferred the right to use his name in advertising and selling “Dr. Simmons’ Liver Medicine,” and the complainant is using it to advertise and sell M. A. Thedford’s Liver Medicine, w rich appears to me to be a use of his name not contemplated when the contract was made, or covered by its terms. Much has been said [953]*953in the argument of this case about what is claimed to be the effort of the M. A. Thedford Medicine Company, of Rome, to convey to the public by their wrappers and advertisements, and to impress upon all readers of their literature, the idea that the medicine they are selling is the same as the original Simmons’ Liver Medicine. There is some force in this argument, but since the decree in the Zeilin suit complainant has no right to make what is known as “Dr. Simmons’ Liver Medicine,” and in the face of this decree, by which it is adjudged that, it has no right to the name of Dr. Simmons, this court cannot, at their instance, prevent other persons from using the same. In other words, So far as the name of Dr. Simmons is concerned in connection with liver medicine since the decree alluded to, it is declared that it lias no right and no standing in court to assert the right to use the same.
It is further said that complainant has in its labels resorted to fraudulent devices, and one calculated to deceive the public, in that it holds out to the world that the medicine it is making was discovered by M. A. Thedford, 1810, and that the arrangement of its wrappers is such as to lead the public to believe that the picture of an old man thereon is the picture of M. A. Thedford; and in fact it says that Thedford is comparatively a young man, and that it does not itself, therefore, come into a court of equity with clean hands, and should not be allowed any relief for that reason. Complainant, on the other hand, says that defendants’ conduct, especially in the matter of attempting to advertise and sell under the name of J. H. Thedford & Son, Dr. Simmons’ Liver Medicine, and the conversation to which it testified, shows that M. A. Thedford has been acting in had faith, and seeking to avoid the effect of a contract honestly entered into, and to deprive the others to whom he sold, and their successors, of their distinct rights under the contract. I think it wholly unnecessary to discuss either of these contentions, in view of my opinion as to the construction of the contract, which is really the basis of the whole matter. I conclude therefore:
First. That Thedford only parted with the right to use his name in connection with Dr. Simmons’ Liver Medicine.
Second}!/. By reason of the decree in the Zeilin suit complainant has no right to advertise or sell Dr. Simmons’ Liver Medicine.
Third. That complainant has no right to use Tiled ford’s name in connection with liver medicine otherwise than I have stated; and Thedford may use the same as he is now doing without infringing any of its rights.
Fourth. I have stated that, as to any infringement of trade-mark, considered independently of contract rights, I do not think there is such a similarity as to justify interference by the court with the defendant.
The conclusion is that injunction must be denied.