62 How. Pr. 215 | New York Court of Common Pleas | 1881
— The Burtnett case was not like this. There the avowed object of the examination was not to aid the assignee in the administration of his trust save in the way of obtaining testimony to be used in such actions as he might afterwards bring. Chief justice Daly said that such testimony ought to be taken after those actions had been begun, and that the Code of Civil Procedure made ample provision for the examination of parties in pending actions. Here it is not shown that the testimony is sought for use in any action hereafter to be brought. The examination is, as I understand it, to ascertain whether or not certain property, called a trademark, belongs to the assigned estate. That can only be determined by learning the facts which give the trade-mark its value. If, as chief justice Daly said in the Hegeman case, this trade-mark is made valuable simply because the public believe that Dart’s personal skill, experience and peculiar
The sub-rule of rule 73 (Moak's Underhill's Principles of Torts, p. 632,) thus states the law: “ Although a trader may have a property in a trade-mark sufficient to give him a right to exclude all others from using it, if his goods derive their increased value from the personal skill of the adopter of the trade-mark, he will not be allowed to assign it, for that would be a fraud upon the public. But if the increased value of the goods is not dependent upon such personal merits, the trade-mark is assignable.”
In Kidd agt. Johnson (9 Reporter, 729) the United States supreme court held, as has chief justice Daly in several cases, that trade-n'arks affixed to certain articles manufactured at a particular factory, will pass with the factory when it is transferred by contract or by operation of law.
A trade-mark may be, and often is, transferred in invitum by proceedings in bankruptcy.
How the question here is whether or not the trade-mark in question owes its value to the personal skill of Mr. Dart as a manufacturer. If it does it does not pass by assignment, for the public must not be deceived into buying goods which, though bearing his trade-mark, are not the product of his peculiar skill. If, however, it is the machinery, the factory, which has produced superior goods, the trade-mark goes with the machinery. In other words, the trade-mark is inseparable from the particular thing which gives it its value.
It is said that the trade-mark did not pass because it is not subject to levy under an attachment. That is not the test, conceding, for the sake of the argument, that it is not leviable.
I think the examination should proceed. I have indicated the scope of the examination. In settling the order I will explicitly state what shall be the subject and the extent of the examination. I shall not grant nor give leave for an application to any other judge for a stay of proceedings. Both parties may submit forms of an order drawn in conformity with the views above expressed.