Robertson v. Berry

Miller, J.,

delivered the opinion of the Court.

This appeal is from an order granting an injunction restraining the appellant from publishing and circulating a certain almanac for the year 1879, known as “T. G. Robertson’s Hagerstown Almanack,” with the same emblems, devices, marks, representations, title and back outside pages, style, shape and general appearance as have characterized the publications of the same for previous years, and from printing, publishing and circulating any other almanac in colorable imitation of the almanac of the complainants, known as “J. Gruber’s Hagerstown Town and Country Almanack,” and calculated to deceive and impose *596 upon the public, and to create in their minds the belief that such almanac is really and truly the almanac of the complainants. In determining whether this order shall be affirmed or reversed this Court is confined to the case made by the bill and exhibits, without reference to the averments of the answer which appears in the record. McCann vs. Taylor, 10 Md., 418 .

It is immaterial to the decision of the case, in the view we have taken of it, whether the devices, marks, pictures and words, in the manner in which they are collocated and combined upon the two outside pages of the complainants5 almanac, be regarded as a trade-mark proper or as wrappers or labels, or as the title or the particular external marks which an author or publisher affixes to his work to distinguish it, because the grounds of relief in equity are substantially the same in either case. A publisher or author has either in the title of his work or in the application of his name to the work, or in the particular marks which designate it, a species of property similar to that which a trader has in his trade-mark, and may like a trader claim the protection of a Court of equity against such a use or imitation of the name, marks or designations, as is likely in the opinion of the Court to be a cause of damage to him in respect of that property. Kerr on Injunctions, 478; Browne on the. Law of Trade-Marks, sec. 553. This doctrine, in cases where the facts are sufficient to sustain it, has been held applicable to such periodical publications as newspapers, magazines, and almanacs. Matsell vs. Flannagan, 2 Abb. Pr., 459 ; Hogg vs. Kirby, 8 Ves., 215; Spottiswoode vs. Clark, 10 Jurist, 1043. But here, as in cases of trade-marks proper, the complainants must show a property right in themselves, and a fraudulent or colorable imitation by the defendant, and we shall therefore proceed to consider whether these two essential requisites to relief in equity are made out by the hill and exhibits before us.

*597 1st. And first, assuming the complainants or some of them have established their own right to the symbols, marks and devices, as used on their almanac, has there been such an imitation of them by the defendant on her almanac, as to entitle the former to have the publications by the latter enjoined? Upon the question of resemblance, the authorities all agree that it is impossible to lay down any general rule as to what degree of resemblance is necessary to constitute the fraudulent or colorable imitation. All that can be done is to ascertain in every case as it occurs whether there is such a resemblance as that ordinary purchasers purchasing with ordinary caution are likely to be misled. Kerr on Injunctions, 483; McLean vs. Fleming, 6 Otto, 245 . In the case last cited there is a very complete review of the authorities, and the Court says, that “much must depend in every case upon the appearance and special characteristics of the entire device; but it is safe to declare, as a general rule, that exact similitude is not required to constitute an infringement or to entitle the complaining party to protection. If the form, marks, contents, words, or the special arrangement of the same, or the general appearance of the alleged infringer’s device is such as would be likely to mislead one in the ordinary course of purchasing the goods, and induce him to suppose that he was purchasing the genuine article, then the similitude is such as entitles the injured party to equitable protection, if he takes seasonable measures to assert his rights and to prevent their continued invasion.” In the case of Seixo vs. Provezende, Law, 1 Ch. Appeals, 192, Lord Chancellor Cranworth expresses substantially the same views thus: “what degree of resemblance is necessary from the nature of things, is a matter incapable of definition a priori. All that Courts of justice can do is to say that no trader can adopt a trade-mark so resembling that of a rival as that ordinary purchasers purchasing with ordinary caution are likely to he misled. It *598 would be a mistake, however, to suppose that the resemblance must be such as would deceive persons who should see the two marks placed side by side. The rule so restricted would be of no practical use. If a purchaser looking at the article offered him would naturally be led, from the mark impressed on it, to suppose it to be the, production of a rival manufacturer, and would purchase it in that belief, the Court considers the use of such a mark to be fraudulent.” Among other authorities to the same effect, and as having an important bearing upon the case before us, we refer to Holloway vs. Holloway, 13 Beav., 209; Amoskeag Manufg. Co. vs. Spear, 2 Sandf, 599 ; Swift vs. Day, 4 Robertson’s Sup. Ct., 611; Williams vs. Johnson, 2 Bostworth, 1; Lea vs. Wolff, 15 Abb. Pr., (new series,) 1; Gillott vs. Esterbrook, 47 Barb., 455 ; Burke vs. Cassin, 45 Cal., 467 ; Boardman vs. Meriden Britannia Co., 35 Conn., 402 ; Howard vs. Henriques, 3 Sandf, 725 ; Knott vs. Morgan, 2 Keen, 213 ; Perry vs. Truefitt, 6 Beav., 66 ; Croft vs. Day, 7 Beav., 84; Wotherspoon vs. Currie, 22 Law Times, (new series,) 260; and Canal Co. vs. Clark, 13 Wallace, 322. In the present case we are clearly of opinion, the imitation is such as is well calculated to mislead ordinary persons purchasing with ordinary care. It is unnecessary, even if it were practicable, to present a detailed description in words, showing the resemblance of the first or title pages of these two almanacs, as it appears to the eye. It is plain enough to the eye of the observer, but difficult to be described. There is a difference in the names and in some of the words used, and there are several marks of distinction in the symbols or pictures and the border enclosing them, which a careful inspection soon discloses, but there is exact similitude in the color, size, shape, and, in the different type in which the more and less prominent words and figures are printed, as well as in the paper and binding of each. These make the resemblance at first sight quite sufficient to deceive the “ ordinary run of per *599 sons,” even if the two were lying side hy side on the counter of a hook-store, or in a newspaper stall, while the hack outside pages of each are in every respect identical. This part of the complainants’ case is, in our opinion, clearly made out.

2nd. As to the property right. On this subject the authorities all declare that the right of property in the plaintiff must he clearly shown. Witthaus vs. Mattfeldt & Co., 44 Md., 803. From the averments of the hill, to which we are confined, it appears that about the year 1835, John Gruber, the ancestor of some of the complainants, commenced the publication of an almanac to which he gave the name of “ J. Gruber’s Hagerstown Town and Country Almanack,” and for the purpose of distinguishing it from all other publications of almanacs he adopted and made use of certain devices, emblems, representations, marks and pictures, which he combined and collocated in a manner entirely new and original, and these are the same as those now used on the almanac of the complainants. He continued this publication annually from 1835 to his death in 1858, and hy his skill in the order and arrangement of the calendar, and the variety of the miscellaneous matter inserted therein, he acquired the goodwill of the public and a large circulation for his almanac, and it was a source of profit and revenue to him during his life-time, and the emblems and devices before described became identified with his said publication and were the means hy which it was known and distinguished hy the trade. This, according to the averments of the bill, was the origin of the emblems and devices in which the complainants now cfaim a property right. In our opinion that right does not depend upon the derivation of a legal title from John G-rubér, either through his will, or hy the administration de bonis non c. t. a., taken out long after his death, for the purpose of obtaining title to, and distributing, as assets of his estate, these alleged trade-marlcs *600 and the good-will of this printed publication, and we therefore dismiss from consideration all the averments of the bill on this subject. But it seems to us that the claim and right can be well tested upon another ground. The bill shows that in 1854, Gruber being ‘then aged and infirm and unable to perform -the manual labor for the printing and issuing of the almanac continued its publication through the agency of William Stewart and Thomas G. Robertson, by a letter of license and authority to them which was printed on the second page of each issue. For many years prior to his death and before this agency of Stewart and Robertson, the surviving members of his family had contributed their labor in the publishing and preparation of these almanacs for the market. After his death his widow and executrix continued the annual publication during her life on account of herself and the other surviving members of the family, and did so through the business management of Robertson, notice of which was printed on each number, and during her life it was a source of revenue to her and her family and was their only means of support. The widow died in 1866, and the annual publication was continued by the family also under the business management of Robertson, notice of which was also printed in each number. In 1814, one of the daughters died, after which two other daughters, for the use of themselves and the surviving members of the family of John Gruber, continued the publication and are now by their assignees, (who are also complainants,) printing and publishing this almanac. During all this period from the death of Gruber, nearly twenty years, the publication was continued in his name and two of his daughters sue in this case as co-partners trading under the name and style of “ J. Gruber.”' It was so continued and is now annually published by the complainants in the same style, with the same emblems, pictures and devices, with the same title-pages, distribution and arrange *601 ment of matter which had distinguished it during the life of Gruber. His family hy the manner in which they have conducted the publication have retained the good-will of the public, increased its circulation, and at the present time under their management and that of their assignees and agents its circulation is extensive, and the good-will attendant upon it valuable, and since Gruber’s death it has always been and is now known to the trade and public generally by the same emblems, devices, marks and representations before stated. The sole and exclusive right of Gruber’s family so to publish and sell this almanac was acknowledged and acquiesced in hy all persons, and especially hy Robertson, the husband of the defendant, who was the agent of Gruber and his family, as before stated, and afterwards hy his widow, the defendant; for upon Robertson’s death in 1869, his executors contracted with the members of the Gruber family for its publication for the period of five years, and the latter authorized and permitted the executors to publish it for that time, and they did so up to the year 1875, and during this period Mrs. Robertson and her children received all the revenues and profits arising from its sale, except the sum of $450 per annum which was paid to the family of Gruber as a royalty for the license so to print and publish. After this and during the years 1876, 1877 and 1878, Mrs. Robertson commenced and continued the publication of her almanac, which the hill charges to he a fraudulent imitation of that of the complainants. Without noticing at length many other allegations of the hill, the facts thus stated show that the complainants have acquired a property right in the devices, emblems and title-pages in question by adoption and user. That such right may he so acquired appears to he well established hy authority. Thus in Eddlestonvs. Vick, 18 Jurist, 8, it was held and expressly decided hy the Yice Chancellor, Sir W. Page Wood, that the right of property in certain labels *602 or engraved papers or wrappers in which pins manufactured by the plaintiff were put up, could he acquired by user alone. “If,” says his lordship, “the plaintiff or those under whom he claims, has used this label continuously for a certain space of time, that is enough to enable him to prevent others from using it and making a profit out of the reputation which that label has acquired in the market.” The plaintiff in that case was not the original inventor or proprietor of the labels or engraved papers or wrappers, hut claimed from the assignees in bankruptcy of a former partner of the original proprietor and inventor. He had, however, carried on the business and used the labels for a period of more than eleven years, and by this alone he was held to have acquired a right of property in them. So in Canal Company vs. Clark, 13 Wallace, 322, the Supreme Court say: “Undoubtedly words, or devices may he adopted as trade-marks, which are not original inventions of him who adopts them, and Courts of Equity will protect him against any fraudulent appropriation or imitation of them by others.” In such cases the adoption and use must he under such circumstances of good faith, as to satisfy the Court that the plaintiff is not himself practicing a fraud upon the public. He must explain how he came to such adoption and use, or in other words, he must come into Court with clean hands. It seems to us very clear that such explanation is abundantly given by the bill in this case, and the adoption and user thus made out entitle the complainants to the injunction prayed for. It is scarcely necessary to add, that a Court of Equity interferes in such cases to prevent fraud, and this is the broad ground upon which its jurisdiction rests.

3rd. It was suggested and contended in argument, that the averment that the complainants are credibly informed and verily believe, and therefore charge, that the defendant has printed, published and issued, or caused to he printed, published and issued, within the last few days, an edition *603 of her almanac for the year 1879, in the same fraudulent and colorable imitation of that of the complainants, is not sufficient to justify the granting of the injunction. But without stopping to inquire whether this averment by itself would be sufficient, we find referred to in the bill, and filed as an exhibit with it, a copy or number of tbe defendant’s almanac for the year 1879 exhibiting precisely the same appearance and characteristics as those of the two previous years, and equally resembling that of the complainants.. This is quite sufficient to satisfy the Court upon the point suggested.

(Decided 28th February, 1879.)

The order appealed from will therefore be affirmed; and in so doing we must be understood as intimating no opinion upon any other question than the one directly before us, viz., that the averments of the bill are sufficient to justify the granting of the injunction prayed for.

Order affirmed, and cause remanded.