107 Mo. App. 507 | Mo. Ct. App. | 1904
The plaintiff and defendant are both business corporations, the former, organized under the statute of this State and the latter under that of the State of Kentucky. The plaintiff in its petition alleged, (1), that it was and is the owner of a special trade-mark for “Old Crow” whiskey, which defendant had infringed and was infringing; and (2), that by the use of the words “Old Crow” upon bottles containing whiskey other than the genuine “Old Crow” whiskey produced by plaintiff which it offered to the trade, defendant thereby carried on such unfair trade and competition as entitled plaintiff to the injunctive process of the court. The defendant’s answer, in addition to á general denial, interposed the defenses of laches and the statute of limitation. There was a trial and decree for plaintiff and defendant appealed.
The first question raised by the appeal is whether or not the plaintiff’s action is barred by the statute of limitations. Section 4272, Revised Statutes, provides that the following actions shall be brought within ten years: (1), an action upon any writing, whether sealed or unsealed, for the payment of money or property; (2) , actions brought on'any covenant of warranty contained in any deed of conveyance of land shall be brought within ten years next after there shall have been a final decision against the title of the covenantor in such deed, and actions on any covenant of seizin contained in any such deed shall be brought within ten years after the cause of such action shall accrue; and (3) , actions for relief, not herein otherwise provided for. And the next succeeding section — 4273—provides that the following actions shall be broug’ht within five years:“....; fourth, an action for taking, detaining or
The defendant hy its answer pleaded that the words, ‘ ‘ Old Crow, ’ ’ and the symbol of a crow have been used by it and its predecessors on labels affixed to whiskey bottled and sold by it for twenty-three years last past without any objection from plaintiff or its predecessors; that it and its predecessors have at all times claimed the right to use said words and symbol upon their labels and that plaintiff knew, or might by the exercise of ordinary diligence have known of the use of said label and symbol by it and its predecessors.
This is a suit in equity for injunctive process to restrain the defendant’s further infringement of the trademark referred to, and to restrain it from carrying on unfair trade and unfair competition, and we are obliged to determine, first, whether the statutory provisions, or any of them, just quoted, are applicable in cases of this kind, and, if so, second, whether or not the evidence adduced is sufficient to support the defendant’s plea of them. The terms employed in the third clause of said section 4272 are quite comprehensive in their scope. In Rogers v. Brown, 61 Mo. 192, it was declared: “In this State, as has been before stated, the statute of limitations applied to all civil actions, and our courts have no more authority to engraft upon the statute exceptions extending the time for bringing suit in cases which were formerly cognizable only in equity, than they have to interpolate exceptions similarly affecting actions at law. ’ ’ But in the much later case of Boyce v.
Wolf v. Barnett, 24 La. Ann. 97, was a suit to enjoin the defendants from using a certain name on their preparations. The Louisiana ■ statute of prescription was pleaded as a defense. In the course of the court’s opinion in the case it was said: “It is urged by defendants that the plaintiff’s claim is prescribed by the prescription of ten years, during which time, prior to the suit, they claim that they have been engaged in the business complained of. The prescription of one year, which is also pleaded, cuts off plaintiff from any claim for damages for any period longer than twelve months prior to citation (Rev. C. C. 3536), hut we do not think there is any force in the plea of ten years, or in the further point 'that the defendants have acquired as to all the world, by uninterrupted possession for ten years, a full and complete title to the trade-mark.’ ” While some of the cases cited in the first paragraph of defendant’s brief, notably that of Blackwell v. McElwee. 100 N. C. 150; Northcutt v. Turney, 101 Ky. 314; Fullwood
McLean v. Fleming, 96 U. S. 245, was a suit for an injunction to restrain the defendant from infringing a specific trade-mark, which- was carried by appeal from the circuit court of the Eastern district of Missouri to the Supreme Court of the United States. It was alleged and proved that the labels had been used by the defendant for twenty years and that the complainant knew the fact during the entire period. In the opinion delivered in the case in the latter court it was said: “Equity courts will not in general refuse an injunction on account of delay in seeking relief where the proof of infringement is clear, even though the delay may be such as to preclude the party from any right to an account for profiits........It sufficiently appears that the respondent has been engaged in preparing and selling, his pills for more than forty years; that during that period, or more than half of it, he has been using labels and trade-marks corresponding more or less to those used by the predecessors of the complainant, some of whom during all or most of that time, kneio what the labels and trade-marks were which were used by the respondent, the evidence to that effect being full and decisive. . . . Evidence of a decisive character is exhibited in the record to show that the complaintmt or his predecessor kneio throughout what description of labels and trade-marks the respondent was using; and it .does not appear that any objection was ever made, except as heretofore stated and explained. Once, the respondent was requested to insert- the initials of his Christian name before his surname, in the label; and it. appears that 'he immediately complied with the request. . . . Oases frequently
In the later case of Menendez v. Holt, 128 U. S. 523, it is said: “Counsel in conclusion earnestly contends that whatever rights appellees may have had were lost by laches; and the desire is intimated that we should reconsider McLean v. Fleming, 96 U. S. 245, so far as it was therein stated that even though a complainant were guilty of such delay in seeking relief upon infringement as to preclude him from obtaining an account of gains and profits, yet, if he were otherwise so entitled, an injunction against future infringement might properly be awarded. We see no reason to modify this general proposition, and we do not find in the facts as disclosed by the record before us anything to justify us in treating this case as an exception.”
When the judgment was rendered in McLean v. Fleming by the circuit court of the United States for the Eastern district of Missouri, the statute of limitations was the same as now.
Cedar Lake Hotel Co. v. Cedar Lake Hydraulic Co., 79 Wis. 297, was where the plaintiff owned a hotel on
While the exclusive right to use a trade-mark is property, there is no abstract property in a trade-mark. It is property only when appropriated and used to indicate the origin or ownership of a commercial article. The trade-mark has no separate, abstract existence but is appurtenant to the goods designated. It does not partake of the character and nature of a patent or copyright. Paul on Trade-marks, sec. 18, and cases there cited. The reasoning of the defendant urged in support of its contention respecting the availability of the statute of limitations as a defense is, we think, more specious than sound. We can not bring our minds to the conclusion that the statute is applicable in cases of this kind.
The defense of the plea of the statute of limitations is interposed by defendant’s answer to the second ground for relief alleged in plaintiff’s petition, namely, that of unfair competition; and as the underlying principles in cases involving trade-marks and unfair competition are the same (Paul on Trade-marks, see. 23),
But suppose we are in error in this and that the statute .of limitations is available as a defense to-plaintiff’s action, then is the defendant’s plea of it supported by the evidence? It is insisted by defendant that because its vice president testified that labels had been used by it and its predecessors for twenty years or more, covering bottles containing whiskey that was not genuine ‘ ‘ Old Crow, ’ ’ that the right to use them had become vested in it in the same manner that the title to real and personal property may become vested in the occupant or holder by adverse possession of it maintained for the time prescribed by the statute of limitations.
The possession of real or personal property which may ripen into a title must he open, notorious, continuous, adverse and under a claim of ownership. “The term ‘adverse possession’ designates a possession in opposition to the true title and real owner, and it implies that it commenced in wrong — by ouster or disseizin — and is maintained against right. The law, on the contrary, presumes that every possession is rightful and consistent with, not in opposition or ‘adverse’ to, title and ownership. A party, therefore, who relies upon ‘adverse possession’ in order to rehut this presumption of possession consistent with the title of the real owner, must prove his possession to be ‘adverse’ to the title set up; that is, he must shoiv the actual knowledge of the real owner that he claims in opposition to, and defiance of his title, or he must show such an occupancy and user, so open and notorious and incon<sistent with as well as injurious to the rights of the true owner, that the law will authorize from such facts the presumption of such knowledge by the true owner. It is not the mere occupancy or possession which must he known to the true owner to prejudice his rights; but
The evidence disclosed that every one handling and selling the product of the plaintiff’s distillery was authorized to use the label containing the words, “Old Crow.” This was encouraged rather than condemned. The use of these labels by defendant was no infringement of the plaintiff’s right unless placed on bottles containing whiskey not the output of the plaintiff’s distillery. When- defendant used such labels on bottles containing any other whiskey, it was an invasion of the plaintiff’s rights. It is true, the vice president of defendant testified, as already stated, that it had been in the habit of placing the “Old Crow” label on “Cabinet” and perhaps other whiskeys, but this was not shown to have been known to anyone else, not even to the defendant’s' employees. This label was not shown to have been so used with the actual knowledge of the plaintiff; or that defendant openly and notoriously claimed the right to use the label on whiskey that was not ‘ ‘ Old Crow, ’ ’ or that such claim of right was brought home to plaintiff. On the contrary, the evidence shows no more than that the only claim of right which defendant openly made was that to place the labels on the product of the plaintiff’s distillery. Most manifestly, if the use of this label by the defendant on any kind of whiskey it chooses to place it is to ripen by the lapse of time into a right as the possession of real property operates to vest title, then, like such possession, the use of such .label in this manner ought to be open and not concealed as seems most clearly to have been the case here.
In Boyce v. Railroad, ante, it was said-: “If defendant’s possession of the land had been open, notorious and under claim of right thereto for ten years prior to the time suit was brought, plaintiff’s action was barred whether he knew the facts or not. Scruggs v. Scruggs, 43 Mo. 142. Actual, continued, visible, notorious and
The principles of these cases apply as well where only one easement is claimed as .where title to land itself is in controversy. Some easements are of such nature and character as they may be enjoyed at the same time by several persons and the owner may also use the surface of the land. In such case,' the nature of the use does not necessarily disclose the identity of the person using the land, nor does it disclose or mean that an exclusive use of the easement is claimed. And so in the present case, as the defendant was authorized to use the “Old Crow” labels on bottles containing the product of plaintiff’s distillery, the plaintiff had the right to indulge the presumption that it limited the use of them in that way and in no other unless actual knowledge of such secret, improper use was brought home to plaintiff, and- of which there was no evidence.
The evidence does not disclose that plaintiff or anyone else, until just before this suit was brought, had any knowledge that the defendant vfas clandestinely placing the “Old Crow” labels on whiskeys other than the product of the former’s distillery; and so it results that in any view that the defense of the statute of limitations pleaded may be held, it was not sustained by the evidence and was for that reason, if for no other, no bar to the plaintiff’s action.
II.
The defendant further contends that the plaintiff can not recover on the theory of an abandonment of the ■trade-mark by the originators thereof and the subsequent adoption by plaintiff and its predecessors for the reason that no such allegations are contained in its petition, for to permit it would be to allow plaintiff to plead one title and recover upon another. It is true that the petition states a great many historical facts relating to
If plaintiff’s evidence shows, as we think it does, that it was the owner of the trade-mark; that it had the exclusive title, that was sufficient, for the plaintiff was not required to prove that it acquired its title in all or in the several ways alleged. • The acquisition of it in either one of these ways, if proved, would be sufficient to meet every requirement of the law. A plaintiff is not required to prove all the facts alleged in his petition, but only enough of them to constitute a cause of action. Morrow v. Surber, 97 Mo. 155; Knox County v. Goggin, 105 Mo. 182; Hartpence v. Rogers, 143 Mo. 623; Stern v. St. Louis, 161 Mo. 146.
in.
The defendant further contends that plaintiff can have no technical trade-mark in the words “Old Crow” because these words were used on similar goods by others prior to their adoption by Gaines, Berry & Company.
It is disclosed by the evidence that one James Crow, a distiller, had a secret formula for the making of whiskey. He was employed in 1833 by Oscar Pepper, the owner and operator of a distillery, for whom he made whiskey according to his formula until 1855. He died a year later. The whiskey made by him was of excellent quality. J3ne Mitchell, who had worked with Crow, and had learned his formula, took Crow’s place and con-
. Edwards, who next operated the Oscar Pepper distillery, as previously stated, designated the whiskey produced by him “Edwards’ Whiskey” and did not apply the words “Old Crow” to it. Prom 1855 to 1867 when Haines, Berry & Company took charge of the Old Oscar Pepper distillery no one used the words “Old Crow” or “Crow” to designate his whiskey: They began in the last-named year (1867) to apply the words “Old Crow” to whiskey of their production and they and their successors down to the present time have continued to do so. It does not clearly appear that Oscar Pepper used the words ‘ ‘ Old Crow ” or “ Crow ’ ’ to designate the whiskey produced by him while Crow was in his employment, but if he did it is certain that he discontinued their use after Crow left his service. It appears that prior to 1867 there were no brands or marks placed by the distillers of Kentucky on barrels containing whiskey by them Severally produced. Before that time whiskey was only known by the name of the. distiller or the owner of it.
There is evidence tending to show that while Crow was in the employment of Oscar Pepper that the latter in introducing his whiskey to the trade referred to it as “Crow whiskey.” This he no doubt did because he knew of the reputation of Crow as a distiller and that such a reference would facilitate the sale of it. Certainly, Oscar Pepper did not intend to adopt it as designation, trade-name or trade-mark for the whiskey produced by him at any time, or, if so, certainly not after Crow’s death in 1856, for during the next ten years he continued to distill whiskey and did not designate it as “Old Crow” or “Crow” whiskey, but named it “Old
If Pepper ever used the words, “Old Crow,” or ‘ ‘ Crow, ’ ’ to designate whiskey of his production he had abandoned them and théir use twelve years before Gaines, Berry & Company went into the possession of the Oscar Pepper distillery; and no one else in the meantime appropriated or adopted these designating words in their application to whiskey. Neither the heirs of Oscar Pepper nor anyone succeeding to the ownership of his distillery have disputed the right of Gaines, Berry & Company and their successors to use these designating words as a trade-mark for their whiskey.
A trade-mark is a mere notice, arbitrary sign or mark put on an artificial product whereby any person interested in the information may be assured as to the ■ origin of the product. Such a mark is a means for rendering more pronounced, distinctive and valuable that species of property known as the “good will” of a business. A manufacturer, for instance, may use a trademark, a word or words arbitrarily selected. In doing so he acquires no property in the word or words as such. His right attaches to the peculiar and added function of such word or words in identification of his product by reason of his use. In so adapting the word or words he takes nothing from, and in ceasing to use he returns nothing to any store of common property. His right to the mark will ordinarily pass as incidental to the good will of his business to his successor, and from the necessity of the case such right becomes extinct when that business becomes extinct. And when the use of a trademark is abandoned or given up with no intent to resume it, this amounts to an offer of it to the public which anyone may accept. And when one abandons a trade-mark and it is subsequently appropriated by another, the lat
The authorities are to the effect that one may adopt as a valid trade-mark words or symbols which have been originated or devised'by another and afterwards abandoned by such other. Paul on Trade-marks, secs. 101, 105; Blackwell v. Dibrell, 3 Hughes 151 (Fed. Cas. No. 1475); Raymond v. Royal Baking Powder Co., 85 Fed. 231; Royal Baking Powder Co. v. Raymond, 70 Fed. 376; O’Rourke v. Central City Soap Co., 26 Fed. 576; Menendez v. Holt, 128 U. S. 514; Burt v. Taylor, 178 Mass. 493. In the light of the authorities just cited we must conclude that if Oscar Pepper ever did use the words “Old Crow” or “Crow” as a trade-mark to designate any whiskey produced at his distillery that there was such a complete disuse of it as to amount to an abandonment and to render it capable of appropriation by Gaines, Berry & Company and their successors. We may add that, we do not think the evidence tends to prove there was such prior use of the words “Old Crow” or “Crow” at the time of the adoption of them in 1867 by Gaines, Berry & Company for their trademark as to render them publici juris and consequently Manufacturing Co. v. Manufacturing Co., 58 Mo. App. 411, and the other like cases cited by defendant, are without application.
IV.
It is the defendant’s further contention that in consequence of the laches of the plaintiff and its predecessors the relief sought by the action should have been denied. In addition to what has already been said in a previous paragraph touching the doctrine of laches, we may observe that in Badger v. Badger, 2 Wall. 94, it was declared that this is a defense peculiar to courts of equity founded on lapse of time and the staleness of the claim when no statute of limitations governs the law. Numerous cases are cited in the defendant’s brief illus
This doctrine in its application to trade-marks has been stated by a very accurate law writer — Paul on Trade-marks, sec. 106 — in this way:
“A trade-mark may be lost completely by laches, or the proprietor may lose simply the right to an account of gains or profits. Where the person who infringes a trade-mark does so with a show of right and justification, inexcusable laches on the part of a proprietor will work a forfeiture of the trade-mark, and disentitle him to any relief whatever; but where the infringer has appropriated the trade-mark without any show of justification, and in fraud of the proprietor’s rights, laches on the part of the proprietor will usually disentitle him to an account of gains and profits, but will not defeat the remedy by injunction.” And the same writer further states — section 107 — that it is clear from what is decided in Saxlehner v. Eisner & Mendelson Co., 179 U. S. 19, that where an infringer has proceeded in good faith and with a show of justification of right laches on the part of the proprietor may result in a complete loss of trade-mark right.
In McIntire v. Pryor, 173 U. S. 38, it was in effect held that the principle of laches has but an imperfect application, and delay even greater than that permitted by the statute of limitations is not fatal to a plaintiff’s claim. The cases analyzed in that opinion make it plain that where actual fraud is shown the court will look with much indulgence upon the circumstances tending to excuse the plaintiff from a prompt assertion of his rights. And in a case of active and continuing fraud it should be satisfied with no evidence of laches that does not amount to proof of assent or acquiescence.
In a Florida case — El Modello Cigar Mfg. Co. v. Gato, 25 Fla. 886, it is said that “the rule in England, in trade-mark cases, is more stringent than in this country, and a lack of diligence there in suing deprives com
In Northcutt v. Turney, 101 Ky. 314, it was held that as plaintiff s'had acquired by long use, sanctioned by the decisions of the courts, the right to use the words “Blue Lick” as a trade-mark for mineral water, that the use and attempted appropriation of the same trademark by defendant in advertising and selling water from an artesian well was illegal and fraudulent, and that no presumption of acquiescence in the wrongful ap - propriation of the trade-mark could arise so as to estop plaintiffs from exercising their right to restrain its use. And the cases generally hold the rule to be that where one party infringes upon the trade-mark of another there is no fixed time in which he must bring his suit to save his rights. There must be such neglect on the part of the complainant as shows an intention to abandon his trade-mark before he can be estopped to have injunctive process. Williams v. Adams, 8 Biss. 452; Prince’s Me
Perhaps the best expression of the rule is that to be found in Menendez v. Holt, 128 U. S. 514, which is to the effect: “Mere delay or acquiescence can not defeat the remedy by injunction in support of the legal right, unless it has been continued so long, and under such circumstances, as to defeat the right itself. . . . Where consent by the owner to the use of his trade-mark by another is to be inferred from his knowledge and silence merely, ‘it lasts no longer than the silence from which it springs. It is, in reality, no more than a revocable license.’ ... So far as the act complained of is completed, acquiescence may defeat the remedy on the principle applicable when action is taken on the strength of encouragement to do it; but so far as the act is in progress, and lies in the future, the right to the intervention of equity is not generally lost by previous delay, in respect to which the elements of an estoppel could rarely arise.”
It appears from the evidence that the plaintiff’s annual production of whiskey is very large and that only a small part of it is bottled by it at its distillery. The plaintiff makes two labels for “Old Crow” whiskey which it furnishes to the purchasers of its product, but most of such purchasers prefer to select their own label so as to become identified with it. In some instances such purchasers and dealers in whiskey produced by plaintiff use.what is commonly known as “stock labels” which can be purchased almost anywhere. The plaintiff has for many years recognized the right of the owner of its product to bottle it and place upon such bottles the trade-words ‘ ‘ Old Crow, ’ ’ with such accessories as may suit the individual fancy of the bottler. This privilege has always been accorded to every dealer in plaintiff’s whiskeys and is not now open to question. The fact ■that a great variety of “Old Crow” stock labels are in general use of the genuine production of the plaintiff’s
It is disclosed by the evidence that while these ‘ ‘ Old Crow” stock labels have been,, in many instances, placed on bottles containing almost every kind of cheap and inferior whiskeys, yet it does not appear that such improper use was brought home to the knowledge of plaintiff. Defendant and its predecessor had the right in common with every other dealer in “Old Crow” whiskey to place on the bottles containing it, the ‘ ‘ Old Crow ’ ’ labels devised and used by him, but neither of them, had the right to use such labels on bottles containing “Old Cabinet” or any other whiskey not the production of plaintiff’s distillery. The evidence discloses that the defendant and its predecessors for a period1 of twenty-five years had been using these “Old Crow” labels on bottles containing whiskeys other-than that produced by plaintiff. The plaintiff and the public had the right to presume that the bottles on which defendant had placed the “Old Crow” labels contained whiskey of plaintiff’s production. There was no substantial evidence that plaintiff knew or by the exercise-of ordinary diligence could have known of the fraudulent use made by the defendant of the “Old Crow” labels, and therefore there can be no acquiescence or assent to such improper nse implied. • It is certain that the discovery by plaintiff that the defendant was using “Old Crow” labels on whiskey not the production of its distillery was not made until a short time before this suit was begun,- and then only by purchasing two bottles of defendant’s whiskey labeled “Old Crow,” and testing it.
For a period of nearly forty years the plaintiff’s “Old Crow” whiskey has had a reputation for excellence in quality as wide as the continent, and this, it must be presumed, was known to defendant. It knew the popularity of “Old Crow” whiskey distilled by-plaintiff. Biles’ Whiskey Price List — a semi-monthly
In looking at the facts disclosed by the evidence in the light of 'the principles announced in the authorities to which we have referred, and we do not think the plaintiff guilty of any such laches or neglect as to estop it from asserting its right to the injunctive process of the court. It is obvious that the circumstances under which the defendant used the “Old Crow” labels on bottles containing whiskeys other than that produced by plaintiff was such an active and continuing fraud as rendered the defense of laches unavailable to it.
Y.
The defendant further insists that the second ground alleged in the petition for the interference of the court by its writ of injunction, that is to say, that the defendant was engaged in unfair trade and competition, is not sustained by the proof. It is unnecessary to entitle plaintiff to an injunction that a specific trademark be infringed. It is sufficient if the court is satisfied that there was an intent on the part of defendant to palm off the “Old Cabinet” whiskey contained in bottles labeled “Old Crow Whiskey. This whiskey is bottled by us and ice are responsible for its purity cmd Fine Quality. E. Whyte é Co.” as the “Old Crow’’ whiskey produced by the plaintiff. As said in Goodyear v. Goodyear, 128 U. S, 598, “relief in such cases is
The authorities cited in the briefs of both the plaintiff and the defendant concurrently announce the principles of the law of unfair trade and competition to be that, where one has established a business in the manufacture and production of goods and which has grown up under a given name or word or mark, whether such name, word or mark constitutes a special trade-name or mark, or not, no other may use such name,' word or mark in such a way that others may be induced to believe that his goods are the product of the manufacturer who gave to it the name, word or mark.
YI.
No good reason has been suggested by the defendant for disturbing the judgment of the court below in respect to the costs.
YII.
The defendant’s final contention is, that the trial court erred in its refusal to make special finding of the facts and conclusions of law thereon. The statute (section 695) doubtless applies to both legal and equitable actions, but while this is so, we do not think the failure to make a special finding in an action of the latter kind constitutes a reversible error, because the supervisory courts are authorized on appeal to try and determine such actions upon the pleadings and evidence de novo. The findings of the trial court, if any, may be entirely disregarded by the former tribunal, and such findings and decree entered therein as seems to it to be meet and proper. The Legislature did not, by the enactment of the statute already referred to, intend to abrogate the well and long-established practice of the appellate courts in supervising the findings of trial courts in equity cases, or to deprive the former of the jurisdiction to determine for themselves the correctness of the findings of the latter. Blount v. Spratt, 113 Mo. 48; McElroy v.
The failure, therefore, of the court in the present case to make special finding of facts was not such an error as requires a reversal of the decree; and especially so since it was, as we think, clearly for the right party and the only one that could have been given in the cause.
Accordingly, our conclusion is that the decree should be affirmed.
