Original La Tosca Social Club v. La Tosca Social Club, 23 App. D.C. 96

Original La Tosca Social Club v. La Tosca Social Club

23 App. D.C. 96 | D.C. Cir. | 1904

Mr. Chief Justice Alvey

delivered the opinion of the Court:

The name employed by both the plaintiff and defendant would seem to be purely arbitrary and fanciful. The name “La Tosca” has no application to, and conveys no idea of the nature and objects of, the social clubs formed, that we can perceive. Whether it was adopted from the geological name descriptive of the pampean rock found in South America, and which name, *104though local in its origin, has been given general currency by scientists, or from the grand opera “La Tosca” by Puccini, or some other source, we are not informed; and it is of no very material consequence in this case. Por though the name be entirely fanciful, it may be adopted as a trade name, and, as such, in a proper case, will be protected by a court of equity against infringement Merchants’ Bkg. Co. v. Merchant’s Joint Stock Bank, L. R. 9 Ch. Div. 560, 563, 47 L. J. Ch. N. S. 828, 26 Week. Rep. 847. The principle, however, upon which the courts proceed in restraining the simulation of trade or business names, where the name assumed is of a fanciful or arbitrary character, is not that there is property acquired in the word or name employed, but it is to prevent fraud and deception in the dealing with the party charged with the simulation or infringement of the name used by another in a similar business. The principle is very clearly stated by Giffard, L. L, in the case of Lee v. Haley, L. R. 5 Ch. 155, 39 L. J. Ch. N. S. 284, 22 L. T. N. S. 251, 18 Week. Rep. 242. That was an action to restrain the use by the defendant of the name of “The Guinia Coal Co.,” in his business. In the opinion, the Lord Justice said: “I quite agree that they have no property in the name [‘Guinia Coal Co.’], but the principle upon which the cases on this subject proceed is, not that there is property in the word, but that it is a fraud on a person who has established a trade and carries it on under a given name, that some other person should assume the same name, or the same name with a slight alteration in such a way as to induce persons to deal with him in the belief that they are dealing with the person who has given a imputation to the name.” Upon the same principle it is not infrequent that the use of corporate names has been restrained, where the use tends to mislead or deceive the public to the prejudice of the corporation whose name has been unjustifiably simulated. Holmes, B. & H. v. Holmes, B. & A. Mfg. Co. 37 Conn. 278, 9 Am. Rep. 324; Massam v. Thorley’s Cattle Food Co. L. R. 14 Ch. Div: 748, 42 L. T. N. S. 851, 28 Week. Rep. 966; Chas. S. Higgins Co. v. Higgins Soap Co. *105144 N. Y. 462, 27 L. R. A. 42, 43 Am. St Rep. 769, 39 N. E. 490.

The authorities all concur in holding to the general principle that whether the court will interfere by injunction in this class of cases must depend upon the circumstances of the particular case; the identity or similarity of the names; the identity of the business of the respective parties or corporations; how far the name is a true description of the kind and nature of the business carried on; the extent of the confusion which may be created or justly apprehended, and other circumstances which might justly influence the judgment of the judge in granting or withholding the remedy by injunction. Chas. S. Higgins Co. v. Higgins Soap Co. 144 N. Y. 462, 27 L. R. A. 42, 43 Am. St. Rep. 769, 39 N. E. 490. It, is only in plain cases of wrong and mischief that the court will be disposed to apply the strong remedy by injunction to restrain the use of a name. The business operations of a party or corporation should not be restrained upon mere speculative or possible injury, because of the use of a particular name claimed by another. The injury must be shown to be real, and such as a court of equity, upon principles of justice, will interpose to prevent. This principle is laid down in many cases, and is well illustrated by the case of Merchant Bkg. Co. v. Merchant’s Joint Stock Bank, L. R. 9 Ch. Div. 560, 47 L. J. Ch. N. S. 828, 26 Week. Rep. 847. That was a case of a motion on behalf of the plaintiff, the Merchant Banking Company of London, Limited,' for an injunction to restrain the defendant, the Merchant’s Joint Stock Bank, Limited, from using the name or style of the “Merchant’s Joint Stock Bank, Limited,” or any other style or name so nearly resembling the plaintiff’s name as to be calculated to deceive.

In that case, the Master of the Eolls (Sir George Jessel) said r “What the law did prevent w^as fraud; and it prevented not only actual fraud, that is, fraud intentionally committed, but it also prevented a man from carrying on business in such a way, wdiether he knew it or not, as to represent that his business was the business of another man. And it might happen that the mere using a well-known fancy name would be evidence of an *106intention on the part of the person using it to commit a fraud. One can well understand a certain fancy name being so attached to a business as to indicate that business and that business alone, and that another man using the same fancy name in carrying on a similar business might be convicted of an intention to defraud from that circumstance alone. That might well be, but still after all it is merely a question of evidence.” . And in that caso thé injunction was refused, both upon the ground of want of similarity of name, and the absence of evidence of fraud. Several cases were cited and examined by the Master of the Bolls of applications for injunctions to restrain the use of names, where, injunctions were refused, because it did not appear that injury to the complainant would result by the use of the name by the defendant of which tire complainant claimed the exclusive use. There is no right to the injunction, merely from the similarity of names; there must be injury shown to result therefrom. Colonial Life Assur. Co. v. Home & Colonial Assur. Co. 33 Beav. 548, 33 L. J. Ch. N. S. 741, 10 Jur. N. S. 967, 10 L. T. N. S. 448, 12 Week. Rep. 783.

But in this case, the complainant corporation has failed to show any exclusive right to the name “La Tosca.” That name was adopted and appropriated by the unincorporated association or club .formed several years prior to the incorporation of the complainant club. The three members who seceded or withdrew from that original association, and formed themselves into a corporation, did not by that act acquire any exclusive right to .the use of the name of the prior and still then existing unincorporated club or association. The name of “La Tosca Social Club” remained with the original unincorporated association, and the act of the. three members in forming the plaintiff corporation did not dissolve or extinguish the pre-existing association, as between the remaining members thereof, and the complainant •association. The subsequent formation of the members of the original association into a corporation in no manner destroyed the right to the use of the name of the original association by those who converted that association into a corporation, — such members having the right so to apply and use the name of the

*107original association or club, in the formation of the defendant corporation. The subsequent formation of the defendant corporation certainly did not confer any right upon the complainant to the use of the name of the original association, to the exclusion of the defendant. The case would seem to be fully within the principle of the decision, cited by the appellant, made in the case of the Supreme Lodge, K. of P. v. Improved Order, K. of P. 113 Mich. 133, 38 L. R. A. 658, 71 N. W. 470, and the cases therein referred to by the court. In that case it was said by the court, in speaking of the claim made by the complainant corporation to the exclusive use of the name “Knights of Pythias:” “The sole question is, then, whether defendants shall be enjoined from using the name ‘Improved Order, Knights of Pythias.’ Complainant’s counsel insist that by the act incorporating complainant as ‘Supreme Lodge, Knights of Pythias’ an exclusive right to the name ‘Knights of Pythias’ was acquired. Numerous cases are cited holding that a corporation has an exclusive right to its name. No case, however, is cited holding that incorporation gives an exclusive right to a name already in use, as the name ‘Knights of Pythias’ was, an existing voluntary society. On the contrary, McGlynn v. Post, 21 Abb. N. C. 97, cited by complainant’s counsel, and Black Rabbit Asso. v. Munday, 21 Abb. N. C. 99, hold that in such a case an exclusive right is not acquired.” See, also, upon the general subject, Delaware & H. Canal Co. v. Clark, 13 Wall. 311, 322, 20 L. ed. 581, 583.

There are other grounds upon which the injunction might well be refused, but it is unnecessary to extend this opinion. We must reverse the order appealed from, and remand the cause that the bill may be dismissed; and it is so ordered.

Order reversed and cause remanded.