187 Ill. App. 489 | Ill. App. Ct. | 1914
delivered the opinion of the court.
This is an “unfair competition” case. It is not a “trade-mark” case. “Unfair competition consists in passing off or attempting to pass off upon the public, the goods or business of one person as and for the goods or business of another. * * * The basic principle is that no one has a right to dress up his goods or otherwise represent them in such a manner as to deceive an intending purchaser and induce him to believe he is buying the goods of another. No monopoly is created or fostered by protection against unfair competition, but the court should be careful not to interfere with free and fair competition, and should confine itself to preventing fraud and imposition from some real resemblance in name or dress of goods. Nothing less than conduct tending to pass off one man’s goods or business as that of another will constitute unfair competition.” (38 Cyc. 756.) In a well-known English case, Burgess v. Burgess, 3 De G., M. & G. 896, 904, Lord Justice Turner said: “No man can have any right to represent his goods as the goods of another person, but in applications of this kind it must be made out that the defendant is selling his own goods as the goods of another.” “Descriptive terms and generic names are publici juris and not capable of exclusive appropriation by anyone, but may be used by all the world in an honestly descriptive and non-deceptive manner.” (38 Cyc. 800.) “Geographical terms may be used by all persons for the purpose of truthfully stating the origin of materials used, or the location of a business, subject, however, to the general rules governing unfair competition.” (38 Cyc. 802.) “Publications are property and entitled to protection against unfair competition like any other property.” (38 Cyc. 831.) “Circulars, advertisements, or other announcements calculated to deceive the public and pass off defendant’s goods or business as the goods or business of plaintiff constitute unfair competition and will be enjoined.” (38 Cyc. 846.) Whether or not a defendant has been guilty of unfair competition is always a question of fact. Bach case must depend upon its particular circumstances, and the facts of one case are little or no guide to the determination of another. (38 Cyc. 779; Reddaway v. Banham, 13 R. P. C. 218, 233; 65 L. J. Q. B. 381, 391.)
The interlocutory order of injunction issued by the Superior Court, which is in the exact language as recommended by the master, is a broad one. It enjoins the defendant, Clark J. Herringshaw, his agents, servants, etc., until the further order of the court, (1) “from using or employing in connection with the advertisement, publication, offering for sale or sale of any publication, not being the genuine publication of complainant, the words ‘Chicago Blue Book,’ or ‘Blue Book of Chicago Biography,’ or any like words or names, whether accompanied by other words or not”; and (2) “from using or employing in connection with the advertisement, publication, offering for sale or sale of any publication, not being the genuine publication of complainant, the words ‘Blue Book,’ without clearly distinguishing the same from the publication of complainant so as unmistakably to indicate that the same is the publication of the defendant and not the publication of the complainant”; and (3) “from using any name or names, device, artifice or contrivance which may be calculated to induce the belief that any publication not complainant’s is in fact complainant’s.”
There is attached to the transcript of the record before us a copy of complainant’s book, entitled on the back of the cover “Chicago Blue Book, 1912,” and also a copy of defendant’s book, entitled on the back of the cover “Herringshaw’s City Blue-Book of Biography. Chicago Men of 1913.” Upon examination we find the books to be dissimilar in appearance, size and contents. There is also contained in the transcript of the record a sample copy of the circular, or subscription blank, used by the complainant at and prior to the time of the commencement of the present suit, having at the top the words “The Blue Book” printed in large type; also a copy of the circular, or subscription blank, used by defendant at the time of the commencement of this suit, having at the top the words “ Herringshaw’s City Blue Book,” printed in large type, and immediately underneath the words “of Chicago Biography,” printed in smaller type; also a copy of the circular, or subscription blank, used by defendant at the time the proceedings against defendant for contempt were commenced, having at the top the words “ Herringshaw’s City Blue-Book of Biography,”printed in large type, and immediately underneath the words “Chicago Men of 1914” printed in smaller type. The master, in his report recommending that an injunction issue, found substantially that an unwary person receiving the circular of defendant, first above mentioned, would be misled into thinking that the circular was an advertisement of complainant’s publication, or a request for a subscription to complainant’s book, and in his subsequent report on the petition of complainant to punish defendant for contempt he found to the same effect concerning defendant’s circular last above mentioned. To these findings of fact we cannot agree. We do not think that even an unwary person would be likely to be so misled or deceived. There are many noticeable differences in the circulars, both in form and substance. Furthermore, the affidavits presented by complainant to sustain the point that defendant’s circulars are so similar to the circular of complainant as to deceive the public contain mere expressions of opinion. They do not state facts from which such a conclusion may be reached. The affidavits of J. P. Underwood, Finley Barrell, A. D. White and J. Q. Williams, much relied upon by complainant, show on their face that these parties were not actually deceived, for the reason that each party, upon receiving one of defendant’s circulars immediately communicated with complainant either by letter or telephone. And it was stated to us on oral argument by counsel for complainant that there was no proof in the record to the effect that any person had actually contracted to purchase,'or had purchased, defendant’s book thinking that he was purchasing complainant’s book.
It was alleged in complainant’s bill that the words, contained in the title and advertisements of complainant’s publication, “Chicago Blue Book” and “The Blue Book,” had acquired and possessed a distinct secondary meaning, and to dealers in books and 'users of books were understood to refer exclusively to complainant’s publication. In speaking of this doctrine of secondary meaning it is said (38 Cyc. 769): “Words or names which have a primary meaning of their own, * * * and which are not capable of exclusive appropriation as a trade-mark, may nevertheless'by long use in connection with the goods or business of a particular trader come to be understood by the public as designating the goods or business of that particular trader. Such words have both a primary and secondary meaning. In their primary descriptive sense, they are publici juris, and all the world may use them, but they must be used in such a way as not to falsely convey the. secondary meaning, for this would constitute unfair competition. * * * In all this class of cases where the word, name, or other mark or device is primarily publici juris, the right to relief depends upon the proof. If plaintiff proves that the name or word has been so exclusively identified with his goods or business as to have acquired a secondary meaning, so as to indicate his goods or business and Ms alone, he is entitled to relief against another’s deceptive use of such terms. If he fails in such proof, he is not entitled to relief.”
In view of the affidavit of Thomas W. Herringshaw, and exhibits thereto attached, as to the number of “Blue Books” published in Chicago and elsewhere, and in view of all other facts and circumstances as disclosed by the other affidavits and exhibits before us, we do not think that it was shown .that the words “Chicago Blue Book” or “The Blue Book” had been so exclusively identified with complainant’s publication as to indicate its publication alone, or that it was shown that the defendant was guilty of attempting to pass off upon the public his publication as and for complainant’s publication. We are therefore of the opinion that the Superior Court erred in denying defendant’s motion to dissolve the preliminary injunction.
In the order of March 11, 1914, appealed from, the court, in addition to denying defendant’s motion to dissolve said injunction, adjudged that defendant was guilty of contempt for violating the injunction and that defendant “pay into court for the benefit of the complainant, within 10 days * * * a fine in the sum of $200.” The court erred in imposing a fine upon defendant for the benefit of complainant. Barnes & Co. v. Typographical Union, 232 Ill. 402, 411; Rothschild & Co. v. Steger Piano Co., 256 Ill. 196, 205.
The interlocutory order of March 11, 1914, is reversed.
Reversed.
