Klaw v. General Film Co., 154 N.Y.S. 988

Klaw v. General Film Co.

154 N.Y.S. 988

N.Y. Sup. Ct.

1915

Check Treatment

PLATZEK, J.

Some five years ago Robert Hilliard, one of the plaintiffs, a popular and gifted actor, first producеd an elaborate dramatic production entitled “A Fool There Was,” at the Liberty Theater, in the city оf New York. From that time the play has been presented and is now being produced throughout the United States аnd Canada with success, both from an artistic and financial standpoint. Large sums of- money have been expended by the plaintiffs for actors, actresses, hiring of theaters, the equipment of the play, and in extensive advertising for more than four years. After the dramatic representation “A Fool There Was” acquired а reputation, and its title became ‍‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‍well known, the defendant appropriated the title “A Fool There Was” and produced it in connection with one of its photo dramas, with knowledge that the plaintiffs had beеn and were producing a dramatic representation under such title. It appears that the title “A Foоl There Was” is an original title in connection with a play,' and that no other play under such title was presеnted prior to the production of the drama by Robert Hilliard. The circumstance that defendant’s play is dissimilar to plaintiffs’ play, or that it was produced as a photo play, does not militate against their right to еnjoin the appropriation of and use by the defendant of the title.

“The question, ‘What’s in a name?’ has been answered by the courts in many well-considered cases, wherein the exclusive right to a name possessed or owned by a successful business ‍‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‍enterprise has been maintained against imitators and wrongdoers, who sought by an unauthorized use to deceive the public and profit by the wrong.” Frohman v. Payton, 34 Misc. Rep. 275, 68 N. Y. Supp. 849; Hopkins Amus. Co. v. Frohman, 202 Ill. 541, 67 N. E. 391; Outcault v. Lamar, 135 App. Div. 110, 119 N. Y. Supp. 930; 38 Cyc. 837.

*989In Aronson v. Fleckenstein (C. C.) 28 Fed. 75, it is stated:

“The name given the composition by its author, and under which it has become known to the public, became, as it seems to me, a prоperty right—not strictly on the principle of a trade-mark, but because the name and literary compоsition became blended and united, so that the name identifies the composition to the public—so that the name of this composition belongs to this complainant as identifying and describing his literary property, and as a part of the piece itself, and defendants have no right to profit by using ‍‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‍this name to the injury of complainant, * * * and defendants have no right to avail themselves of the merits and popularity of complainant’s play to draw audiences to the performance of theirs, even if, as is claimed, their composition is a new and original dramatic arrangement. It is a fraud upon the public, as well as upon the complainant, to attempt to do so.”

In Ball v. Broadway Bazaar, 194 N. Y. 435, 87 N. E. 674, Werner, J., writing for the court, says:

“Although we agree with the learned Appellate Division in recognizing the technical distinction between trade-marks and trade-names, we think the same fundamental principles of law and .equity are applicable to both. ‘All such сases, whether of trade-mark or trade-name, or other unfair use of another’s reputation, are сoncerned with an injurious attack upon the good will of a rival business; customers are diverted from one trader to another, and orders intended for one find their way to the other.’ ‍‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‍Sebastian on the Law of Trade-Marks, p. 17. Trade-marks and trade-names are in reality analogous to the good will of the business to which they appertain. The trade-mark represents it in the market, and the trade-name proclaims it to those who рass the shop. In either case such unfair conduct as is calculated to deceive the public into believing that the business of the wrongdoer is the business of him whose name, sign, or mark is simulated or appropriatеd constitutes the gist of the offense.”

It was also held in, this case that:

“Trade-names are protected by the application of thе same principles of equity that relate to technical trade-marks.” Howard v. Henriques, 3 Sandf. Ch. 725; Glen & U. Mfg. Co. v. Hall, 61 N. Y. 226, 19 Am. Rep. 278; Paul on Trade-Marks, § 182.

It is not disputеd that plaintiffs’ play was produced with success by leading actors and actresses in the principal cities of the United States, and was a valuable theatrical production. It is not disputed that the defendant рresented a moving picture presentation under the title “A Fool There Was.” It affirmatively appears that the defendant produced its photo play under said title ‍‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‍in different cities of the Union no less than 3,000 times without authority. In Kalem Co. v. Harper, 222 U. S. 55, 32 Sup. Ct. 20, 56 L. Ed. 92, Ann. Cas. 1913A, 1285, it is held that the owner of dramatic rights might forbid the dramatic representatiоn by moving pictures, and to the present time the only right to protect moving pictures arises from the words “dramatic” or “drama.” Photo Drama Co. v. Social Corp’n (D. C.) 213 Fed. 374— 377; Atlas Mfg. Co. v. Smith, 204 Fed. 398, 122 C. C. A. 568, 47 L. R. A. (N. S.) 1002; Frohman v. Fitch, 149 N. Y. Supp. 633. The plaintiffs have established and acquired an exсlusive proprietary right as a trade-name and trade-mark in the words “A Fool There Was” as a title in connеction with their play, and they are entitled to a permanent injunction restraining the defendant from the cоntinuance of the infringement and impairment of their right in and to such trademark or trade-name.

*990Judgment for plaintiffs. An intеrlocutory decree may be entered herein, making final the injunction to restrain defendant from the-further usе of the title “A Fool There Was,” and for an accounting by the defendant, and for this purpose the appointment of a referee. Submit findings of fact and conclusions of law, and form of interlocutory decree.