| N.Y. Sup. Ct. | Jun 26, 1891
The object of this action was the procurement of an injunction restraining the defendant from using the designation, name, of trademark of “Prince’s Metallic Paint.” It was first employed in or about the year 1858, as the name of a paint manufactured from a metallic iron ore discovered by Eobert Prince in land owned by his wife, Antoinette Prince, and situated in Carbon county, in the state of Pennsylvania. She died in 1859, leaving a will by which she nominated her husband and her son David Prince-the executors of her estate, and empowered them to sell her real estate. After her decease the business was continued with ore extracted from the-same property at the mill which had been erected for that object near to, but not upon, the same land, until the decease of Eobert Prince, in 1870. In the mean time Albert B. Bass, a son-in-law of Eobert and Antoinette Prince, had acquired an equal undivided half interest in the land, and also in the business; and on the 21st of January, 1871, "David Prince, for himself, and also-as surviving executor, entered into a co-partnership with Albert B. Bass and Mary M., his wife, to manufacture Prince’s -metallic paint from ore produced from the property owned by them in Carbon county, for the period of five years. This partnership was formed by an agreement in writing, and it contained the recital, “said paint and trade-mark being owned and controlled by the parties of the first and second part.” The business was continued under this agreement until the fall of 1871, when David Prince, individually and as executor, sold out his interest in it to his partner Albert B. Bass. The latter, with his associates, soon afterwards took measures for the formation of a corporation under the name of “Prince’s Metallic Paint Company,” but then not in fact consummated; and in 1875 other proceedings taken l'or the'same purpose were completed, and the corporation was brought into existence. This corporation succeeded to all the rights and interests of Albert E. Bass in the business, and the undivided one-half of the land previously obtained by him; and Abraham G. Prince, another son of Antoinette Prince, entered into the employment of the corporation, but he soon after-wards left it, and with his brother David Prince formed the firm of Prince Bros., who carried on the business of manufacturing and selling metallic paint from similar ore obtained in the same county from lands at or near Bowmansville. Their paint was sold as “Prince Brothers’ Iron Ore Paint;” and the effect of their competition in the business was to bring the Prince Metallic Paint Company into a practical condition of insolvency, and deprive it of the ability to continue business or pay its debts. In the course of the business under the name of “Prince Metallic Paint Company” the original mill used and maintained by Eobert Prince had been abandoned, and devoted to a different business, and other metallic paint property had been obtained, where a larger mill had been erected, at which the business of the company was principally, if not wholly, carried on. But in the purchase of this additional property, as well as in the purchase of the undivided one-half of the original land from which the ore had been first obtained, mortgages had been given, and their non-payment led to their foreclosure, and sales of the property mortgaged. The mortgage on the undivided half of the land from which the ore was first obtained was given by Albert B. Bass to David Prince, as executor, on the 6th of January, 1872, and by the deed on the foreclosure sale of that mortgage the same undivided interest was conveyed to Henry Lovejoy on the 27th of August, 1878. The mortgage upon the premises purchased by the Prince Metallic Paint Company, and upon which its mill had been erected, was given on the 11th day of January, 1878, and that was conveyed by the deed on the foreclosure sale to John Balliott and Charles Meendson. By these foreclosures and.sales the Prince Metallic Paint Company appears to have been de
'While the business and property was in the situation alz-eady described, and on the 27th of April, 1879, the plaintiff was created a corporation for the purpose of mining and znanufactui-ing metallic paint. Five out of the eight incorporators were znembers of the Prince family, including Abraham 0. and David, who were the firm of Prince Bros. The corporation was formed under the laws of the state of Pennsylvania. The premises conveyed by the sheriff on the foreclosure sale made of the property on which the new mill was'eréeted" and maintained, were conveyed by the purchasers, Balliott and Meendson, to Sadie and Lizzie Prince, on the 20th of Deceznber, 1878, and by thezn to Henzy Lovejoy on the 29th of Maz’ch, 1879, and by him, together with the undivided one-half of the land on which the metallic paint ore was first found by Robert Prince, to the plaintiff, on the 10th of May in the same veal\ These deeds, as well as the mortgages, described the lands alone which were incumbered or conveyed respectively by them, except, that the deed executed by David Prince, executor, to Albert B. Bass, did also contain the clause, “together with the buildings and improvements,” and the mortgage made by the Prince Metallic Paint Company to Heidlinger added the word “improvements.” And under them the plaintiff asserted the right to use and attach to its manufacture the label or trade-mark describing that zis “Prince’s Metallic Paint.” It does not become necessary to decide whether under these conveyances alone that right was obtained by the plaintiff, for such also appears to have been the understanding which, as a matter of fa.et, at the time prevailed; ‘for A. R.-Bass & Co. on the 10th of January, 1870, gave an order on Mr. Phair, whom it is to be presumed had some charge of a department of this business, as he was the printer, to deliver to the plaintiff “all trade-marks, and wood-cuts and electrotypes of the trade-marks,— ‘Prince’s Metallic Paint,’ ‘Prince’s Iron Paint,’ and * Eagle Metallic Paint.’” Mz\ Bass is stated at that time to have been the president of the Prince Metallic Paint Company, whose property was obtained by the plaintiff.- Abraham C. Prince testified that he called upon him for the order, and, after obtaining it, added: “And after that we got the cuts; the cuts were delivered to me; I supposed that wys all of them.” And while this witness was contradicted by affidavits he had made in other suits on other subjects, this evidence appears to be entirely reliable, fortified as it is by the order, and in its freedom frozn contradiction. In the same manner the fact was brought into-the case that a sign had been placed by Mr. Bass on the new mill, erected about 14 years before the trial, giving it the name, “Prince’s Metallic Paint Works;” and that has been maintained on the top of the building since that time. In a word, the land- itself was useful and valuable by reason of the fact that it contained this mineral deposit in profitable, as well as accessible, quantities; and the improvements made upon and in its vicinity were adapted aloné to obtaining, grinding, and manufacturing these deposits into metallic paint. They were at all times in that manner used and employed, and the business done consisted in that use, and the sale of the paint; and with that
It was also further proved that under a statute of the state of Pen nsylvan ia, in lieu of proceedings to sequestrate the propeity of corporations, the “personal, mixed, or real property, franchises and rights "of such corporation,” may be levied upon and sold, under-a fieri faoias commanding the sheriff or other officer to make the levy, to satisfy the judgment upon which the writ is issued; and in October, 1879, a writ of fieri faoias was issued against the Prince Metallic Paint Company upon a judgment recovered against it by Charles Meendson, by virtue of which the sheriff levied upon, advertised, and sold this label or trade-mark to the plaintiff in the execution. He immediately after the sale assigned and transferred his right, title, and interest in the trade-mark to A. 0. and Robert Prince, agents. How the plaintiff obtained the title of these assignees, if they really had any, has not been clearly shown, but in an assignment from Lizzie and Sadie.Prince to Henry Lovejoy of the same trade-mark it is recited that it was assigned to them by Meendson on the 23d of November, 1878, which is the same date as the assignment from Meendson to A. C. and Robert Prince; and Lovejoy, on the day on which he received his assignment, made another of this label or trade-mark to the plaintiff. In this manner, or by the co-operation of A. C. and Robert Prince in the organization of the plaintiff, or both, the label or trade-mark was in form certainly transferred to the plaintiff. It is not very important to critically consider through which process the transfer was tnade, nor what right may have been obtained by'Lizzie and Sadie Prince under a like assignment made to them by David Prince, executor, for the objections which have been raised to the title of the plaintiff do not depend upon any defect in the forms resorted to for its transmission, but they are made to the levy and sale
By another statute of the state of Pennsylvania it was requisite that a preceding writ should have been returned wholly or partially unsatisfied, and that the sale of interests of this description should be by an alias writ. But that was substantially complied with by the writ issued on the 19th of December, 1877. It was upon the same judgment, and may now be presumed to have been returned in part, at least, unsatisfied; for without that return the second writ would have been irregular, and that is not to be assumed without some evidence warranting the presumption, and the case has supplied no such evidence. Beyond that, the writ under which the levy and sale took place was an alias writ. That is shown by its command to the sheriff reciting that it is made “again.” It may have been defective in point of brevity, but still its intent was evident, and it was obeyed by the officer. In one respect the writ was defective,—that is in not directing the sheriff to satisfy the judgment by a levy upon and sale of the franchises and rights of the corporation; but it still did, as a matter of fact, include this label or trademark. It was property, and, in the enlarged signification of the term, a chattel, and within the direction of the execution. The omission literally to follow the language of the statute was therefore, at most, no more than an irregularity. The power to sell was provided, and it was to be executed by a writ of fieri facias; and that was done in this instance. There was no such departure in the recital made or the command given as rendered the proceeding void, though it was voidable on motion, and might have been vacated, as that was done for want of a preceding execution in Fox v. Railroad Co., 8 Phila. 639" court="None" date_filed="1870-12-27" href="https://app.midpage.ai/document/fox-v-hempfield-r-8631302?utm_source=webapp" opinion_id="8631302">8 Phila. 639. An irregularity in practice is stated to consist in the want of adherence to some prescribed rule or mode of proceeding, either in omitting to do something that is necessary for the due and orderly conducting of a
The fact that the label or trade-mark has been devoted by the plaintiff to ■metallic paint manufactured at the new mill from ore obtained from the land where it is located, and from leased lands in the same vicinity, and to paint manufactured at another mill from leased lands near it, and without any addition of ore obtained from the 40 acres owned by Antoinette Prince in her life-time, was not considered a ground for dismissing the complaint; neither ■could it be, for the witnesses agreed in the main that the paint produced from these ores was as good in quality and coloras that made wholly or partly from the ore obtained on the tract where it was first found. It is true that this evidence did conflict with statements contained in affidavits made in other liti.gations by Abraham C. Prince; and if the fact stood alone on his testimony these contradictions would lead to its overthrow. But it does not. Adolph Reich, who was sworn for the defendant, testified; “I, think there is no difference at all between the ore from the Prince tract and the others.” Klein, ■also for the defendant, expressed himself very much in the same way, adding: “I say some is darker. It all makes the same paint. I mean that the ore taken from all the mines along that vein, ten or twelve miles, makes the same paint, if it is kept clean, just as good as mine.” The plaintiff’s witness Stroup pronounced the same judgment; and so in effect was the final conclusion of Abraham C. Prince. In' this state of the facts it is quite evident that there was no deception or misrepresentation in labeling the paint manufactured by the plaintiff, “Prince’s Metallic Paint.” The designation was consistent and truthful. It was applied to the same article, manufactured from the same material and by the same process, as that also had been ■done by Mr. Bass himself and the first Prince Metallic Paint Company. The