129 N.Y.S. 310 | N.Y. App. Div. | 1911
Lead Opinion
' The plaintiff, a manufacturer of pianos and other musical instruments, brought this action to procúre a judgment enjoining and restraining the defendants and each of them from making or selling pianos by or under the name of Ludwig, or
The defendants appeal from the whole of said judgment, and the plaintiff appeals from so much as permits defendants to advertise or designate the playing mechanism made by them as the Ludwig Player. At the trial it appeared that in 1889 the defendant John H. Ludwig and one Charles A. Ericsson entered into a partnership under the name of- Ludwig & Go. for the purpose of manufacturing and selling pianos. The business of the firm was very successful and between its formation and April, 1902, several thousand pianos had been manufactured and'sold by it. Such pianos had upon the fallboard the name Ludwig & Co., but were known to the trade as the Ludwig piano. In April, 1902, the plaintiff, a domestic corporation, was formed with a capital stock of $400,000, Ludwig and Ericsson assigning and transferring to it-all the business
The plaintiff contends that the defendants have no right to use the word Ludwig on pianos made by them, since Ludwig parted with such right when he and Ericsson transferred to the corporation the partnership business so far as it related to the sale and manufacture of pianos, together with the good will, trade name, etc. The defendants contend that Ludwig has the right, under the exception contained in the bill of sale, to use the word Ludwig in connection with any automatic piano player and as it is now being used on its pianos.
I am of the opinion the plaintiff’s contention is correct. When Ludwig and Ericsson transferred to the plaintiff the right to make and sell pianos, including the good will of the firm, that carried with it the exclusive right to use the name by which pianos theretofore sold by the firm were generally known, i. <?., Ludwig Piano, or The Ludwig & Company Piano. This fact was recognized by Ludwig himself, because' after the organization of the plaintiff, and while acting as its president, he dropped the words “ & Co.” and put upon the fallboard * the words “Ludwig, New York.” He also recognized the fact that he had no right to use the word Ludwig even upon his •automatic player or at least there Was sufficient doubt in his
“It is well settled,” says Chief Judge Andrews in Higgins Co. v. H. S. Co. (supra), “ that an exclusive right may be acquired in the name in which a business has been carried on, whether the name of a partnership or of an individual, and it Will be protected against infringement by another who assumes it for the purposes of deception, or even when innocently used without right, to the detriment of another, and this right, which is in the nature of a right to a trade mark, may be sold or assigned.” '
There are numerous authorities to .the effect that an individual may be restrained from using bis own name where such name constitutes a trade name and has passed under a sale of good will. ... ■ t
In Russia Cement Co. v. Le Page (supra), Le Page and ■ another formed a partnership under the name of the ¡Russia
But the judgment does not prevent Ludwig using his own name except in such a way as to deprive the plaintiff of something it purchased. He is permitted to use it in advertising the fact that he hás an automatic piano player which is contained in a ■ particular piano, or to designate such playing mechanism as the Ludwig player. • He must not use. the word Ludwig,, or any name of which it forms a part, upon a piano, because the plaintiff has the right to inform the public that it is .the exclusive manufacturer of the Ludwig -piano. This right it purchased from Ludwig and Ericsson, and defendants cannot be permitted to destroy or impair the same in any respect.' ■ . . « •
It follows that the judgment appealed from should be affirmed; with costs to plaintiff and against defendants.
Soott and Dowling, JJ., concurred; Ingraham, P. J., and Miller, J., dissented.
Dissenting Opinion
I concur in the affirmance of this order so far as it enjoins the defendants from selling pianos under the name of Ludwig,
In Russia Cement Co. v. Le Page (147 Mass. 206), the case relied on in the prevailing opinion, the opinion"" concludes as follows: “While the plaintiff has not-sought to prevent the. defendant from manufacturing glue, we add, in order to avoid misunderstanding-, that while the defendant cannot use the words adopted as a trade name for the article manufactured by him, we "do not decide that he may "not. usé the words ‘ Liquid Glue/ or other . appropriate words to describe his product, or to state in that connection that he is himself the manuf acturer of it.” In that case there was no reservation by the assignor as to his right to use his name as in this, case, and in consequence of the character of the article manufactured it was apparent that even the manufacture of liquid glue under the name of LePage would of itself seriously affect the business that was transferred. And this fact may be considered in applying the subsequent decision of the United States Circuit Court in the case of Le Page Co. v. Russia Cement Co. (51 Fed. Rep. 941).
I think, therefore, that the order should be. modified so that the defendants should not be restrained from selling. a piano including, a playing mechanism under the name of the Ludwig
I think, therefore, the interlocutory judgment should- be amended as before indicated and as so amended affirmed, without costs to either party.
Miller, J., concurred.
Judgment affirmed, with costs to plaintiff and against defendants.