75 N.J. Eq. 257 | N.J. | 1909
The opinion of the court was delivered by
We agree with the conclusion rescued by the vice-chancellor upon the facts of the case and have nothing to add to his convincing opinion in that respect. The decree, after adjudging that the defendant refrain from carrying on the lampblack business under the name of L. Martin and Wilckes Company, or any other name in which the name L. Martin appears, unless words are incorporated in and made a part of such corporate name, which shall clearly and unmistakably distinguish the corporate name so adopted by the defendant from the complainant’s corporate name, proceeds to award an injunction forbidding the defendant from carrying on the lampblack business under the name of L. Martin aild Wilckes Company or under any other name in which the name L. Martin appears. The terms of the injunction provided for are, therefore, broader than the restraint adjudged to the complainant, which permits the use of the name L. Martin if the corporate name of tire defendant clearly and unmistakably distinguishes it from the complainant. The decree, however, rests upon the conclusion that the defendant adopted the name L. Martin as a part of their corporate name for the purpose of securing trade which properly belonged to the complainant. This brings the case within the rule of International Silver Co. v. Rogers, 67 N. J. Eq. (1 Robb.) 646, and we think the broad terms of the injunction were warranted. Since the complainant does not appeal from that part of the decree which adjudges a more limited restraint, we see no cause for reversal on this account.
The decree further orders a reference to a master to ascertain the profits diverted from the complainant, which have been made by the defendant from the sales of lampblack in packages, and such other damages, if any, ns the complainant has suffered by reason of the wrongful conduct of the defendant that is enjoined by the decree. It is the portion of the decree which directs tire
There is a class of case's in which a court of equity will ascertain the amount of compensation, but these are cases where the ascertainment is necessary as a condition precedent to the equitable relief which the court of chancery is competent to afford. Illustrations are to be found in cases where equity requires that a landowner should be enjoined from maintaining ejectment against a corporation having the power to condemn lands, but at the same time requires that the injunction should be awarded upon terms that the corporation make compensation. The cases are collected by Vice-Chancellor Pitney in Sparks Manufacturing Co. v. Newton, 57 N. J. Eq. (12 Dick.) 367 (at p. 393); North Hudson Railroad Co. v. Booraem, 28 N. J. Eq. (1 Stew.) 450; New York and Greenwood Lake Railroad Co. v. Stanley's Heirs, 35 N. J. Eq. (8 Stew.) 283. Other cases are cases of compensation on a bill for specific performance, of which Melick v. Cross, 62 N. J. Eq. (17 Dick.) 545, is an instance. Another illustration is Simmons v. Paterson, 60 N. J. Eq. (15 Dick.) 385, where the right to ascertain compensation was contingent upon the consent of the city. In Eggers v. Anderson, 63 N. J. Eq. (18 Dick.) 264, the jurisdiction of equity was sustained in
Coupe v. Royer, 155 U. S. 565 (at p. 582). The ground upon which the complainant is allowed to recover the profits made by the defendant, or the value of the advantage derived by him from the use of the patent, is that the defendant should not be allowed to profit by his own wrong, since it often happens that the advantage to the defendant exceeds the damage suffered by the complainant. The principle which has been applied by the courts in suits for infringement of patent is equally applicable in bills to restrain unfair competition, and has been so applied by the courts.
Lever v. Goodwin, L. R. 36 Ch. Div. 1, which was followed in the later case of Saxlehner v. Apollinaris Company (1897), 1 Ch. 893. In Singer Manufacturing Co. v. June Manufacturing Co., 163 U. S. 169, upon the reversal of the decree, it was ordered that a decree be entered containing a direction for an accounting by the defendant as to any profits which might have been realized by it because of the wrongful acts by its committee. In Ford v. Foster, L. R. 7 Ch. 611, the decree was that an account be taken of the profits made by the defendants. 1 Seton Dec. 236. In Regis v. Jaynes, 77 N. E. Rep. 774, the supreme judicial court of Massachusetts, in a trade-mark case, said that the same rule was applied to cases of unfair competition merely as well as to cases of the infringement of a trade-mark properly so called. A different rule was adopted in Walter Baker Co. v. Slack, 130 Fed. Rep. 514, and in W. R. Lynn Shoe Co. v. Auburn Lynn Shoe Co., by the supreme judicial court of Maine, 62 Atl. Rep. 499. In the case cited from 130 Fed. Rep. the court was influenced by the fact that the profits made by the infringer would not in all cases be compensation to the injured, for the reason that his loss was in part due to a failure to acquire a just and deserved gain and to the injury to the reputation of his product by reason of the substitution of the spurious article. No doubt there may be such elements of damage quite
For these reasons the decree must be reversed, and as the complainant drew the decree in its present form,- and in its answer to the petition of appeal asserts that it is agreeable to equity, we see no reason why the appellant, having been forced to come into this court, should not be entitled to the costs of the appeal. The record should be remitted to the court of chancery with instructions to enter a decree in accordance with this opinion. The complainant is, of course, entitled to costs in the court of chancery.