Grocers' Journal Co. v. Midland Pub. Co.

• Decision Date: 22 October 1907
• Citation: 105 S.W. 310,127 Mo. App. 356
• Parties: GROCERS' JOURNAL CO. v. MIDLAND PUB. CO.
• Court: Missouri Court of Appeals

105 S.W. 310

127 Mo. A. 356

GROCERS' JOURNAL CO. v. MIDLAND PUB. CO.

St. Louis Court of Appeals. Missouri.

October 22, 1907.

Rehearing Denied November 19, 1907.

1. TRADE-MARKS — NAMES OF NEWSPAPERS.

A trade-mark exists in the title of a newspaper.

2. SAME — SALE OF NEWSPAPER — RIGHTS OF BUYER.

The title of a newspaper as a trade-mark passes on a sale and delivery of the newspaper, the name and good-will thereof, the plant, and all things appertaining thereto.

3. SAME — NATURE OF TRADE-MARKS.

There can be no exclusive ownership of words constituting a trade-mark apart from the use thereof to a vendible commodity, and, for one to have a proprietary interest sufficient to support an action protecting the right, the mark must have been affixed to the commodity for a sufficient length of time to have obtained for it a reputation associated with the mark which identifies its manufacture.

4. SAME — UNFAIR COMPETITION.

Irrespective of the proprietary interest in a word constituting a trade-mark, one man has no right to palm off his goods as those of another, and the man who has established a reputation for his goods under a given mark is entitled to be protected in the enjoyment thereof, and the public purchasing a commodity are entitled to be protected against the fraud in the sale of a different article on the market under a mark in the similitude of the genuine.

5. SAME — EQUITABLE RELIEF.

One is not entitled to injunctive relief from unfair competition, where he seeks the relief to enable him to continue to deceive the public by listing the name of a defunct newspaper, and soliciting patronage for it as a going paper.

6. SAME.

The buyer of a newspaper known as the "St. Louis Grocer and General Merchant" placed it in charge of a firm which published it for a time, and then transferred its interest to the buyer, who merged the publication thereof in another paper known as the "Interstate Grocer." The title "St. Louis Grocer and General Merchant" was discontinued. The buyer listed the name as a going newspaper, and obtained patronage in consequence thereof. Held, that equity would not restrain the publication of another newspaper on the ground that its publication in consequence of the similitude of its name to the name "St. Louis Grocer and General Merchant" was unfair competition.

Appeal from St. Louis Circuit Court; Walter B. Douglas, Judge.

Action by the Grocers' Journal Company against the Midland Publishing Company. From a judgment sustaining a demurrer to the bill, plaintiff appeals. Affirmed.

Joseph A. Wright, for appellant. Frank K. Ryan, for respondent.

NORTONI, J.

The suit is in equity, seeking to restrain the defendant from an alleged unfair competition with the plaintiff in the publication of a trade newspaper or journal. The circuit court sustained a demurrer to the plaintiff's bill, and it appeals.

Plaintiff and defendant are each corporations engaged in the business of publishing trade journals to the grocery trade in the city of St. Louis and the territory tributary thereto. The material facts alleged in the bill are: The plaintiff now owns and publishes, and has for a number of years published, its trade paper known as the "Interstate Grocer." About February, 1901, another corporation, the "Grocer Publishing Company" published, in the interest of the grocery trade at St. Louis, a journal styled and known as the "St. Louis Grocer and General Merchant," which paper was also known to the trade as "Grocer and General Merchant," and the same had a large and extensive circulation. On the ___ day of February, 1901, the said Grocer Publishing Company sold to this plaintiff its said paper, the St. Louis Grocer and General Merchant, and the good will thereof, postal franchises, contracts, mailing lists, type, and equipment, etc., and said Grocer Publishing Company agreed that it would no longer publish the St. Louis Grocer and General Merchant, or any other like publication. After plaintiff had thus acquired the said St. Louis Grocer and General Merchant and all things appurtenant thereto, it, the plaintiff, entered into a business arrangement with two of its directors and officers, to wit, George J. Schulte and John A. Lee, for a continuance of the publication of said journal, the St. Louis Grocer and General Merchant, and under this arrangement the publication thereof was continued by said Schulte and Lee, under the firm name of Schulte & Co., for a period of two and one-half years, to July 1, 1903, and during that time it had a large, extensive, and valuable circulation and patronage in advertisements, etc., in St. Louis and throughout the United States. About July 1, 1903, George J. Schulte and John A. Lee transferred to the plaintiff the said business conducted by them as partners under the firm name of Schulte & Co., and also transferred and merged in the plaintiff the said St. Louis Grocer and General Merchant its postal franchises, name, and good will, contracts, mailing lists, and other property of said partnership employed in the publication of said St. Louis Grocer and General Merchant by said Schulte and Lee, and thereupon said St. Louis Grocer and General Merchant merged in and became a part of the plaintiff's trade journal "The Interstate Grocer." Thereupon the publication of the St. Louis Grocer and General Merchant, under that name and title, by virtue of its said merger, suspended publication, and the plaintiff's said journal, the Interstate Grocer, has continued ever since such merger to be published weekly to the grocery trade, as it had been for many years theretofore. By virtue of the purchase and merger of the said St. Louis Grocer and General Merchant and the good will and rights and privileges appurtenant thereto, a great advantage accrued to this plaintiff in the publication of its said paper, the Interstate Grocer, and since said merger plaintiff has received and still continues to receive large quantities of mail matter addressed to the "St. Louis Grocer and General Merchant," and "Grocer and General Merchant," and said St. Louis Grocer and General Merchant is now and has been at all times since said merger listed by plaintiff upon various lists of newspapers and advertising agencies, to the profit and advantage of plaintiff, in securing patronage for its said paper, the Interstate Grocer. About July 1, 1905, the defendant employed one Robert E. Lee, who had for several years theretofore been in the employ of plaintiff as editor of the Interstate Grocer, and on August 26, 1903, commenced the publication of a journal at St. Louis in the interests of the grocery trade, styled "Eli Grocer and General Merchant." Said paper, a weekly publication, is designed to and does reach the same class of subscribers and patrons, and its purpose is to the same end, and it is in all things a competitor of the plaintiff's said journal, the Interstate Grocer. At the time of selecting the name of Eli Grocer and General Merchant for said publication, the defendant's officers well knew of the rights and privileges theretofore acquired and possessed by plaintiff in the St. Louis Grocer and General Merchant and that said name of Eli Grocer and General Merchant was willfully designed and adopted by defendant to embarrass plaintiff, and to cause confusion in the grocery trade and among the subscribers and advertisers of plaintiff's said paper, the Interstate Grocer, and, by deceiving the public, cause to flow to defendant patronage lawfully enjoyed by plaintiff through acquiring the good will, property, and the name of the St. Louis Grocer and General Merchant as aforesaid, and because of the similarity of the name of defendant's publication, the Eli Grocer and General Merchant, with that of the St. Louis Grocer and General Merchant, defendant has deceived the public, introduced confusion, and deprived this plaintiff of a large number of subscribers and advertising patrons and a large volume of legitimate business; that said names, the Eli Grocer and General Merchant and the St. Louis Grocer and General Merchant, are similar, and will continue to confuse and deceive advertisers, subscribers, and readers in the field where the Interstate Grocer and the Eli Grocer and General Merchant are now being circulated, greatly to the injury and damage of the plaintiff, and will continue in the future, as it has in the past, to deprive plaintiff of a large number of its subscribers and a large volume of its advertising patronage, and, unless the defendant be restrained from so doing, it will continue the publication of its said trade paper under the name and style of the Eli Grocer and General Merchant, to the plaintiff's damage, and likewise mislead and impose upon the public as well. Wherefore plaintiff prays that the defendant be restrained and enjoined from a further publication of its said paper, etc. The bill concludes with a prayer for general relief.

1. An attentive reading of the bill discloses that the pleader predicates his cause upon the theory of unfair competition, rather than upon that of infringement of a trade-mark. Notwithstanding this fact, however, learned counsel for defendant argues the suit is one for infringement of trade-mark, and, in support of this argument, insists that the title or name of a publication, such as that mentioned in the bill, is a trade-mark pure and simple, and the demurrer was properly sustained for the reason there can be no proprietary interest in a trade-mark separate and apart from the commodity, the ownership, or manufacture of which it points. There seems to be doubt expressed in a number of cases as to whether or not the name of a periodical or newspaper is a trade-mark, and the right to technical trade-mark in such titles has been affirmed and denied, says Mr. Hopkins, with some show of reason upon each side. However that may be, it seems now settled and the more enlightened opinions on the subject concur on the proposition that the right of...