114 P. 118 | Mont. | 1911
Lead Opinion
delivered the opinion of the court.
This action was brought to have a determination of the question whether the plaintiff is entitled to the exclusive use of the words “Owl Creek Coal,” as a trade name for the coal mined by the Owl Creek Coal Company and sold by the plaintiff to the public in the city of Helena and vicinity. The Owl Creek Coal Company began to mine coal in the Bighorn Basin, in the state of Wyoming, some time prior to September 1, 1908. About the same time the Kirby Coal Company also began to mine. At that time the plaintiff became the agent of the company, with the exclusive right to sell its product in the states of Montana and Washington. No special effort had theretofore been made to get the product of either company upon the market in these states. The plaintiff provided himself with docks and yards in the cities in Montana, including Helena, and since that time has been advertising and selling the product as “Owl Creek Coal.” It is alleged in the complaint, in substance, that in order to distinguish the product of the company so handled by him from the product of mines other than those belonging to it, the plaintiff adopted the trade name and designation ‘ ‘ Owl
The answer admits that plaintiff has been for more than a year the sole agent of the Owl Creek Coal Company; that for some time prior to the filing of the complaint he, in common with other dealers in the city of Helena and vicinity, have used the name “Owl Creek Coal” as the name of certain of the coal sold by the defendant and other dealers in the same territory, and that defendant is insolvent. It denies all other allegations contained in the complaint. It is then affirmatively averred that the coal in which defendant has dealt as “Owl Creek Coal”
It is not important in this case to inquire into the question whether a person may secure the exclusive right to the use of a trade name, as distinguished from a trademark, by a compliance with the provisions of the Codes (Kevised Codes, secs. 2036, 2040), or whether the plaintiff has complied with them. The case proceeds upon the theory that the defendant has been engaged in an attempt to secure to himself the benefit of the goodwill which the plaintiff has acquired, as the exclusive agent of the Owl Creek Coal Company, for the sale of the coal produced by it. .In other words, the cause of action alleged—and for the purposes of this ease we shall assume that sufficient facts,
Under the issues made by the pleadings, the court necessarily found that at the time the action was brought, the plaintiff, in common with others, including the defendant, were selling coal which is designated as “Owl Creek Coal”; that the coal dealt, in by the plaintiff and defendant under this designation is produced in the Owl creek coal field, in the state of Wyoming; that it has been and .is designated as “Owl Creek Coal” because of" this fact; that defendant’s coal is similar in appearance and quality to that dealt in by the plaintiff; that the designation is; truthful as applied to the coal sold by the defendant; that it. does not point to the ownership of the coal nor to the person who mines it or puts it upon the market; that the defendant has dealt in it as coal mined near Owl creek by the Kirby Coal Company; that the designation is a geographical and com
It cannot be doubted that upon principles analogous to those which apply to technical trademarks, a person may be protected in the exclusive use of his own name or that of a place, building or other designation selected by him and by use of which, in connection with his business, he has acquired for it a valuable goodwill. The theory of the law is that, while all are entitled to the use of any given designation, no one has the right to so use it, even though it is his own name or a name selected for his place of business, as to invade the right of another. Such conduct is a distinct fraud. The goodwill of a business is intangible, being merely the expectation of continued public patronage (Revised Codes, sec. 4566); but nevertheless it is property capable of transfer (Revised Codes, sec. 4567), and the owner is entitled to the same protection in the exclusive enjoyment of it as he is in that of his tangible possessions. One competitor in the same business cannot so dress his goods or advertise them as to take away the trade reputation which another has established by a long course of honesty and fair dealing with the public. To permit this character of wrong would be tantamount to a declaration that for injuries to this species •of property the law furnishes no redress. In Croft v. Day, 7 Beav. 88, it was said: “No man has a right to sell his own : goods as the goods of another. You may express the same principle in a different form and say that no man has a right to dress himself in colors or adopt or bear symbols to which he has no •exclusive or peculiar right, and thereby personate another person for the purpose of inducing the public to suppose either that he is that other person or that he is connected with or selling the manufacture of such other person, while he is really ¡selling his own. * * * He [defendant] has a right to carry ■on the business of a blacking manufacturer honestly and fairly. He has a right to the use of his own name. I will not do anything to debar him from the use of that or any other name
It is not necessary that the designation used by the defendant should be identical with that used by the plaintiff. As was said by Mr. Justice Bradley, in Celluloid Mfg. Co. v. Cellonite Mfg. Co., 32 Fed. 94: “Similarity, not identity, is the usual recourse when one party seeks to benefit himself by the good name of another. What similarity is sufficient to effect the object has to be determined in each ease by its own circumstances. We may say generally, that a similarity which would be likely to deceive or mislead any ordinary unsuspecting customer is obnoxious to the law.”
In Amoskeag Mfg. Co. v. Spear, 2 Sand. (N. T.) 599, Judge Duer stated the principle as follows: “In this ease there is a fraud coupled with damage, and a court of equity in refusing to restrain the wrongdoer by an injunction, would violate the principle upon which a large portion of its jurisdiction is founded, and abjure its most important functions, the suppression of fraud and the prevention of a mischief that otherwise may prove to be irreparable. ’ ’
In Fox Co. v. Glynn, 191 Mass. 344, 114 Am. St. Rep. 619, 78 N. E. 89, 9 L. R. A., n. s., 1096, the court said: “The foundation of the jurisdiction of the courts in these cases is the right of the plaintiff, who asks for relief from the frauds of those who seek to appropriate that which rightfully belongs to him. Such a fraud need not be an active fraud, in any other sense than in the willful refusal to recognize the right of the party, who has acquired a reputation for his goods, to have the benefit of the confidence which he has earned.”
In Coates v. Merrick Thread Co., 149 U. S. 562, 13 Sup. Ct. 966, 37 L. Ed. 847, in speaking of the right of a party to the exclusive use of a designation for goods manufactured by him, the supreme court of the United States said: “There can be no question of the soundness of the plaintiff’s proposition that, irrespective of the technical question of trademark, the
Other cases recognizing the right of protection of the goodwill of a business are the following: Wotherspoon v. Currie, L. R. 5 H. L. 508; Lee v. Haley, L. R. 5 Ch. App. 155; Thompson v. Montgomery, 41 Ch. Div. 35; Weinstock, Lubin & Co. v. Marks, 109 Cal. 529, 50 Am. St. Rep. 57, 42 Pac. 142, 30 L. R. A. 182; Pierce v. Guittard, 68 Cal. 68, 58 Am. Rep. 1, 8 Pac. 645; Glen & Hall Mfg. Co. v. Hall, 61 N. Y. 226, 19 Am. Rep. 278; Elgin Nat. Watch Co. v. Illinois Watch C. Co., 179 U. S. 665, 20 Sup. Ct. 270, 45 L. Ed. 365; Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U. S. 537, 11 Sup. Ct. 396, 34 L. Ed. 997; Howard v. Henrigues, 3 Sand. (N. Y.) 725; American Waltham Watch Co. v. United States Watch Co., 173 Mass. 85, 73 Am. St. Rep. 263, 53 N. E. 141, 43 L. R. A. 826; Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169, 16 Sup. Ct. 1002, 41 L. Ed. 118; International Silver Co. v. Rogers Corp., 66 N. J. Eq. 119, 57 Atl. 1037, 2 Ann. Cas. 407; Boardman v. Meriden Britannia Co., 35 Conn. 402, 95 Am. Dec. 270.
But it does not follow that the courts will protect one in the use of a name which others have an equal right to use, solely because he has chosen it as a designation for the wares in which he deals or the place of his business. It was observed in Fox Co. v. Glynn, supra: “The practical difficulties which arise in such cases come from conflicting rights, where the plaintiff’s right to use his chosen means of designation of his products is not exclusive. One way of designating articles of manufacture as coming from a particular maker is by a trademark. This, to be an effectual protection to one who has adopted and used it, must be something to which the user may have an
In Amoskeag Mfg. Co. v. Spear, supra, it was said: “The owner of an original trademark has an undoubted right to be protected in the exclusive use of all the marks, forms or symbols that were appropriated as designating the true origin or ownership of the article or fabric to which they are affixed; but he has no right to the exclusive use of any words, letters, figures or symbols, which have no relation to the origin or ownership of the goods, but are only meant to indicate their names or quality. He has no right to appropriate a sign or symbol, which, from the nature of the fact which it is used to signify, others may employ with equal truth, and therefore have an equal right to employ, for the same purpose.” After quoting this language with approval, Mr. Justice Strong, in Canal Co. v. Clark, speaking for the court said: “And it is obvious that the same reasons which forbid the exclusive appropriation of generic names or of those merely descriptive of the article manufactured, and which can be employed with truth by other manufacturers,
Again, in Castner v. Coffman, 178 U. S. 168, 20 Sup. Ct. 842, 44 L. Ed. 1021, it was held that the use of the name “Pocahontas Coal” by the selling agents for the owners of coal mined in the Pocahontas coal region did not create an exclusive right to apply that designation to the coal dealt in by them, nor deprive other owners of mines there of the right to use it. The principles declared by the court in Canal Co. v. Clark, supra, have been applied in many other cases (Lawrence Mfg. Co. v. Tennessee Mfg. Co., supra; Goodyear v. Goodyear Rubber Co., 128 U. S. 598, 9 Sup. Ct. 166, 32 L. Ed. 535; Corbin v. Gould, 133 U. S. 308, 10 Sup. Ct. 312, 33 L. Ed. 611; Brown Chemical Co. v. Meyer, 139 U. S. 540, 11 Sup. Ct. 625, 35 L. Ed. 247), and we think they are conclusive of this case.
The court found that the region in which the product of both of the parties in this case is mined is known as the Owl creek coal field; that the product offered for sale by both is truthfully designated as “Owl Creek Coal,” and that, therefore, the designation “Owl Creek” does not point to the origin or ownership, but merely to the place whence the product is brought. It necessarily found that it had not by long association with
The judgment is affirmed.
Affirmed.
Dissenting Opinion
I cannot agree with my colleagues in the disposition made of this case, because I am of opinion that the question of the sufficiency of the evidence to justify a judgment for the defendant should be examined and determined. I think a specification of error to the effect that the court erred in rendering judgment ought to raise the question, in the absence of special findings, of the sufficiency of the evidence to justify the entry of judgment for the defendant. Of course, if there are special findings, a direct attack must be made upon them. In this case the defendant, not having tendered special findings, waived his right to restrict the inquiry in this regard.
