95 Ky. 651 | Ky. Ct. App. | 1894
delivered the orwrioi.' or the court.
In January, 1887, the appellees, E. II., J. S. & Kenner Taylor, formed a partnership under the name of E. H. Taylor, Jr., & Sons, and began the manufacture of whisky at what had theretofore been known as the “ J. S. Taylor Distillery,” in Woodford County, Ky. They at once changed the name of their distillery to the “ Old Taylor” distillery, and before the end of the year had discontinued the use of the name, “J. S. Taylor,” in connection with the distillery or the whisky manufactured there, branding, advertising and selling their product as “ Old Taylor” whisky. They devised a brand which was put on barrels, bottles and other packages and used in their advertisements, circulars, letter-heads, etc., consisting of the words “ Old Taylor Hand-made Sour Mash Whisky, E. H. Taylor, Jr., Distiller, Frankfort, Ky,” arranged in a circle; and underneath this appeared the inscription, “E. IT. Taylor, Jr., & Sons,” in few simile of the handwriting of E. IT. Taylor, Jr. They branded other of their whiskies, later on, “ Old Taylor,” and underneath these words placed the inscription, “E. IT. Taylor, Jr., & Sons,” in the autograph of E. H. Taylor, Jr. They continued without interference to operate the distillery .and transact business as whisky merchants, with office
The appellants asserted the right to use the disputed brands, including Taylor’s autograph, and set up by way of counterclaim that the appellees had themselves wrongfully appropriated the brands, trade-marks, labels, etc., of the appellants, for which they asked damages. They based their claims upon a state of case growing out of E. H. Taylor’s connection with themselves in operating the “0. F. C.” and “Carlisle-” distilleries prior to the formation of the partnership of E. II. Taylor, Jr., & Sons in January, 1887.
Upon hearing, after an elaborate preparation of the case, the chancellor determined the issues of fact and of law adversely to the appellants, and enjoined them from using the words “E. II. Taylor, Jr., Distiller,” and the autograph signature of E. H. Taylor, Jr., upon any whiskies produced at their “ O. F. C.” and “ Carlisle” distilleries since January 1, 1887; ordered an account taken of profits on the whiskies manufactured by the appellant since January, 1887, on which the script autograph had been used, and dismissed their counterclaim.
The controlling questions are, has E. II. Taylor, Jr., so.
In 1868, or 1869, E. H. Taylor, Jr., became the owner of and began to operate a distillery in Franklin County, near Frankfort, to which he gave the name of “ O. F. C.” Distillery, and to the product of which he gave the name of “ O. F. C. "Whisky.” He put upon his packages of whisky, and used upon labels and in advertisements, a brand, in circular form, consisting of the words “ O. F. C. Hand-made Sour Mash Whisky, E. H. Taylor, Jr., Distiller, Frankfort, Ely.”
Taylor continued to operate the distillery in this way until about May, 1877, when he failed, and was forced by his creditors into bankruptcy. In December, 1877, a composition was effected with his creditors at twenty cents on the dollar, and Gregory, Stagg & Co., St. Louis whisky merchants, and lai’ge creditors of Taylor, agreed to furnish the funds necessary to effectuate the composition — an arrangement being made alike profitable to both parties. In pursuance of this arrangement, the O. F. C. distillery property was, by order of the United States District Court, reconveyed to Taylor, who, with his wife, conveyed the property to Geo. T. Stagg. Taylor then
“My trade-mark consists of the letters ‘0. F. C.,’ the same being an arbitrary symbol. This trade-mark has generally been arranged as shown in the accompanying fac simile, to-wit, in connection with the words ‘Hand
At this point in the history of the case we may state our conclusion to be, that the trade-mark thus coming to the ownership of the corporation, E. H. Taylor, Jr., Co., consisted, so far as it was exclusively distinctive in its character,-only of the letters “0. F. C.” The other words were appropriately grouped about these letters to indicate the general character of the whisky and that E. H. Taylor, Jr., was the distiller. We do not suppose these words, “ hand-made ” and.“sour mash,” are such as can properly be claimed and used exclusively as a trademark, and we suppose the name “ E. H. Taylor, Jr.,” was one for which another name was to be “ substituted,” as “ Distiller,” when occasion demanded it, which would be when Taylor ceased to be the distiller of the “ O. F. C.” whisky. But be this at it may, the intention of the parties adopting this trade-mark, as expressed in its repeated registration, is to the effect that the symbolic letters, “ O. F. C.,” alone constituted the trade-mark.
Npon the organization of this corporation Stagg became its president and E. H. Taylor, Jr., its vice-president, the stock being owned and controlled by them, with all distilling operations under Taylor’s management. It
In the operation of these distilleries — the “ O. E. C.” and the “Carlisle” — the distiller was E. II. Taylor, Jr. That it was deemed important to indicate to the trade that he was the distiller is shown by the conduct of all the interested parties. He had been engaged in distilling for more than twenty years, and had given the “ O. E. C.” whisky a reputation equal to any made in Kentucky. Its superior quality was attributed largely to his skill as a distiller, and the intelligent and careful superintendency he gave to the methods of distillation. In one of the E. II. .Taylor Co.’s circulars (and we use it as a sample of many others of the same- import), it is said: “ Mr. Taylor’s long experience in distilling and his intelligent acquaintance, theoretically and practically, with the* arcana of fermentation and distillation, together with his known pride in excelling in the quality of product, are guaranty of that quality.”
In 1880, or 1881, to still further impress on the public
It is not pretended that the corporation purchased from Taylor the right thus to appropriate his personal signature, or that he was compensated therefor by any one in any way, or to any extent. Taylor contends that it was a mere fancy with him, and was intended to show his personal identification with the distillery operations of the company.
That such was the intention seems clear enough, and such was doubtless the effect of the use of the script. The combination of Taylor’s name and the fac simile of his striking signature would easily and necessarily raise
The company continued to operate these three distilleries, and to do so successfully, until in December, 1886, when, in pursuance of a written contract to that effect, Stagg and the E. H. Taylor, Jr!, Co. conveyed to E. H. Taylor, Jr., the J. S. Taylor distillery in Woodford County, in consideration of which Taylor relinquished all interest in and to the effects and business of the company and retired therefrom. Upon obtaining the J. S. Taylor-distillery, Taylor at once associated his sons with himself in business as E. H. Taylor, Jr., & Sons, and, as we have seen, began the manufacture of whisky at the J. S. Taylor distillery. The withdrawal of E. H. Taylor, Jr., from the company left Geo. T. Stagg the sole owner of .the stock' of the company, and the “ O. F. C.” distillery was run by him in the name of the company until July,.1887. From that date until January, 1889, both the Carlisle and the O. F. C. distilleries remained idle, as the Carlisle distillery had remained from the beginning of the year 1887. Tlje “ Geo. T. Stagg Co.” was organized in November, 1887, and thereupon the E. H. Taylor, Jr., Co. surrendered its distilleries, warehouses, dwelling-houses, grain elevators, cattle-pens, and other properties and its goodwill, trade-marks, brands, etc., to the Geo. T. Stagg Co.,
The Qeo. T. Stagg Co., in the same circular, stated to the public, among other things, “ that in methods of manufacture and character of materials used,” they would omit nothing to sustain the reputation of the products of the celebrated O. E. C. and Carlisle whiskies. The company also placed in large letters on its office doors in Louisville, the words “ The Qeo. T. Stagg Company, Distillers of O. F. C. and Carlisle "Whiskies.”
These circumstances, and others we need not stop to discuss, induce us to believe that it was the intention of all the parties, at the time of the withdrawal of Taylor from his business association with Stagg, that the corporation, E. H. Taylor, Jr., Co., was to cease all active business operations. It deliberately advertised itself as going out of business and as having turned over its possessions, good-will, etc., to another. The Qeo. T. Stagg Co. stepped into its place, and so notified the public. It may be true that Stagg, who owned all its stock, found it
It follows, from what we have said, that upon their resumption of business in 1889, the Geo. T. Stagg Co. and Stagg could not lawfully use the autograph signature of E. H. Taylor, Jr., as it might appear in-the corporate name E. H. Taylor, Jr., Co., or otherwise, or. advertise Mm as the distiller of théir O. E. C. or Carlisle whiskies,
Nor do we think the appellants can justly complain of the use by the appellees of the trade-mark, “Old Taylor” whisky. While there is abundant proof that the O. F. O. and Carlisle whiskies were frequently called by dealers-O. F. C. (Taylor) or Taylor’s O. F. C., Taylor Carlisle or Carlisle (Taylor), etc., yet the parties interested and who alone had the right to name their whisky and adopt its trade-mark as a distinguishing feature, did not so call it or brand it “Taylor” or “Old Taylor” whisky, or in anywise associate the name Taylor with it, save in the use of the signatures heretofore discussed ; though at the time the suit was instituted the proof conduces to show that the appellants began to apply to the O. F. C. whisky the name of Taylor whisky. We conclude, therefore, that the chancellor properly enjoined the appellants from advertising E. PI. Taylor, Jr., as the “ Distiller” of their “ O. F. C.” or “ Carlisle ” whiskies, save when such statements were in fact true. The words E. H. Taylor, Jr., constituted no part of their trade-mark and their use was an imposition on the public, save when they could be truthfully used. (Mattingly v. Stone, 12 Ky. Law Rep., 76; Browne on Trade-Marks, secs. 57 and 437.)
That the appellants were also properly enjoined from the use of the fac simile of the autograph signature of E. H. Taylor, Jr., save as to goods made before January, 1887; and this is true, whether used with or without the additional word “ Company.” The effect is the same and was intended to indicate the continued personal connection of Taylor with the O. F. C. and Carlisle whiskies. The autograph can not be used to effectuate such an intention,
The judgment is also to be approved in denying to the appellant the use of the words “ Taylor ” or “ Old Taylor ” as brands for their whiskies, and in confirming such uáe to the appellees, and in dismissing the counterclaim of the appellants.
But the decree directs an accounting of profits, and that, too, from January 1, 1887, when there was no complaint until in 1889. If can hardly be claimed that this is proper even if damages are recoverable at all in this case. There has been no judgment or final order on this branch of the case, but the order of reference to the master indicates the basis for a further judgment. It does not seem to us that the appellees are entitled to an account of profits. The proof does not show any fraudulent intent on the part of the appellants, or those under whom they claim. It is shown that they used no other brands, labels, advertisements, etc., than they had always used or supposed themselves entitled to use, and this they did under color at least of title and conveyance from Taylor. During the whole of the years 1887 and 1888, for a portion of which time at least the appellants manufactured whisky, there was no complaint. In the conclusions reached we have adopted the theory of the appellees, that the use of the name of E. H. Taylor, Jr., and his autograph by the appellants was in the nature of a license or permit, and we do not see that this has been abused or extended unreasonably. Relief in the way of damages is frequently refused by courts of equity, even when the
’ Perceiving no error in the judgment, it is affirmedL