112 N.Y.S. 1013 | N.Y. App. Div. | 1908
Plaintiff and the corporate ■ defendants are competitors in the business of manufacturing and selling baking powder. The plaintiff, claiming the exclusive right to use the word “ Solar ” as an unregistered trade mark and as a trade name in advertising and selling its baking powder, brings this action to enjoin the defendants from using it, and also bases its demand for injunctive relief on the ground of unfair competition in trade, it being alleged that the defendants have unlawfully agreed to ruin plaintiff’s business, and are now engaged in carrying out their conspiracy, the general nature of which is stated. An accounting for damages alleged to have been caused by the wrongful acts of the defendants in execution of the conspiracy is demanded, and there are also allegations tending to show that the acts of the other defendants, of which complaint is made, were for the benefit of and were instigated by appellant, and it is responsible upon that theory also for their acts.
It is quite probable that plaintiff’s right to in junctive relief hinges on its right to the exclusive use of the word “ Solar ” as a trade mark or trade name. The allegations with respect to the conspiracy and wrongful acts appear to be predicated upon plaintifE’s exclusive right to use this trade mark or name, for defendants are charged
It is contended that since it is admitted by the pleadings that the ' predecessor of defendant, the Independent Baking Powder Company used the word “ Solar ” in some localities on packages of baking powder prior to the use thereof by plaintiff and that subsej quent to use thereof by plaintiff appellant procured its registration in the name of said Independent Company, plaintiff cannot succeed. Plaintiff does not concede that the prior use of this word by the predecessor of the Independent Company was such that it acquired any right to use the same as a trade mark or name. That is one of the issues to be tried.
The learned justice at Special Term evidently was of opinion that the scope of the order was too broad, but declined to modify it
If the plaintiff succeeds the usual course of procedure will be to decree an interlocutory judgment adjudging with respect to injunctive relief and with respect to the liability of the respective defendants to account and directing an accounting. The quantum of damages will only arise, if at all, on an accounting and no examination is now necessary therefor. An examination extending to appellant’s legitimate trade secrets and methods is neither necessary nor material and should not be permitted. The examination should be limited to showing the use of this trade mark or name and the relations between appellant and either or both of the other defendants material to a decision of the question as to appellant’s liability for its own acts and for their or either of their acts. It is urged that the examination will tend to convict appellant of a crime, and that, therefore, the order should not be granted. It is manifest that the officers of appellant may be able to give material testimony on some of the issues which would not be privileged, and in such cases, at least, the witness should be left to assert his privilege when a question calling for an answer which might tend to incriminate is propounded. (Skinner v. Steele, 88 Hun, 311.)
The order provides for the examination of every officer of the appellant at the same time and place. No necessity for this is shown. It is manifest that this would be an unnecessary annoyance and inconvenience to a going business corporation. Of course, if it should become necessary, the officers may all be examined, but that should be from time to time, as the necessity is made to appear and in a manner to avoid unnecessary inconvenience. The moving
The order should, therefore, be modified by limiting the examr ination to the. second vice-president,, secretary and. treasurer as herein indicated, and as thus modified affirmed, without costs and without prejudice to. a renewal of the application for the examination of one or more, of the other officers as. may be found necessary after this examination, and as thus modified affirmed, without costs.
Patterson, P. J., Ingraham, Clarke and Scott,. JJ., concurred.
Order modified as directed in opinion, and as modified affirmed, without costs. Settle order on notice.