Boston Shoe Shop v. McBroom Shoe Shop

• Decision Date: 01 June 1916
• Docket Number: 1 Div. 877
• Citation: 196 Ala. 262,72 So. 102
• Parties: BOSTON SHOE SHOP. v. McBROOM SHOE SHOP.
• Court: Alabama Supreme Court

72 So. 102

196 Ala. 262

BOSTON SHOE SHOP. v. McBROOM SHOE SHOP.

1 Div. 877

Supreme Court of Alabama

June 1, 1916

Appeal from Law and Equity Court, Mobile County; Saffold Berney Judge.

Bill of the Boston Shoe Shop, a corporation, against the McBroom Shoe Shop, a corporation, to enjoin the use of trade devices. From a decree sustaining a demurrer and refusing the injunction complainant appeals. Reversed, rendered, and remanded.

The bill and the devices therein alluded to are as follows:

And humbly complaining, your orator represents unto your honor as follows:

First. That for some years prior to the filing of this bill and up to the time of his death a few months ago, one Reuben A. McBroom conducted in Mobile a business known as the "Boston Shoe Shop." That said McBroom died on, to wit the 18th day of December, 1914. That the said "Boston Shoe Shop" was engaged principally in repairing shoes. That for a long time prior to and up to the time of his death the said McBroom had used extensively on his letter heads and in his advertising matter, and in other ways whereby it was brought prominently before the public the following trade-name and design:

Boston Shoe Shop

WE FIX EM QUICK.

Second. That the said Reuben A. McBroom spent considerable money in promulgating the said device or design, and that by its adoption, promulgation, and long user it had become a well known and valuable trade device.

Third. That after the death of the said McBroom, his personal representative, one Inge, who had been duly appointed by the probate court of Mobile county, and who was duly qualified as such personal representative, published in the newspapers of Mobile advertisements to the effect that the said business of McBroom's including the name and good will thereof, would be sold, by sealed bids, and the same was sold in due course.

Fourth. That Leonard H. Metzger and Bertram H. Pake became the purchasers at said sale, and immediately commenced operating the said business, and continued to operate the same, and to use the name and design above described until the rights by them acquired as such purchasers aforesaid were by them assigned and made over to your orator in the early part of February, 1915, or thereabouts, and since that time your orator has continued the operation of the said business and the use of the name thereof, and of the said device or design, and has continued to promulgate and to publish the said device or design in newspapers and otherwise.

Fifth. That the amount paid by Metzger and Pake to the personal representative of the said McBroom for the said business was $6,251.60, which sum greatly exceeded the value of the stock in trade, fixtures, and machinery acquired by reason of the purchase; and your orator says that the said Pake and Metzger acquired the name and good will of the said business, including the sole and exclusive right to use the design hereinabove mentioned, and that your orator has acquired such right from the said Metzger and Pake.

Sixth. That the sole and exclusive right to use the said device or design was a valuable element of the name and good will of the said business, and the opportunity to acquire such right largely induced the payment of a sum greatly in excess of the actual value of the tangible property acquired in manner aforesaid.

Seventh. That the present shareholders of the defendant corporation are respectively the mother and two brothers of the said Reuben A. McBroom, and that they, or some of them, were unsuccessful bidders at the sale of the "Boston Shoe Shop" made by the personal representative of the said Reuben A. McBroom, in the manner hereinbefore described.

Eighth. That since the purchase by Metzger and Pake hereinbefore mentioned, the persons referred to in the seventh paragraph of this bill have organized the defendant company to engage, and it is now engaged, in a business similar to that of the complainant, and that the place of business of the respondents is No. 264 Dauphin street, Mobile, Ala.

Ninth. That the defendant, almost continuously since its organization, has used, and now uses, upon its letter heads, in its advertising matter, upon banners, and signs across and upon the front of its place of business, and in other ways whereby it is brought prominently before the public, the following design or device:

McBroom Shoe Shop

WE FIX 'EM QUICKER

Tenth. That the use by the defendant of the said design as an infringement of the rights of the plaintiffs, and that such use is unfair competition, and that it will probably result in confusion and deception of the public, to the detriment of complainant's business.

Eleventh. That complainant has heretofore requested defendant to cease its infringement upon complainant's rights in the premises, but that the defendant has ignored and disregarded such request, and continues the practices herein complained of.

Wherefore, the premises considered, your orator prays that your honor will take jurisdiction of this its bill of complaint, and that the said McBroom Shoe Shop, Incorporated, may be made a defendant to this bill, and that it may be brought into this court by appropriate process in accordance with the practice of this honorable court, and that it may be required to plead, answer, or demur to this bill within the time fixed by this honorable court.

And your orator further prays that your honor will, upon the hearing of this cause, grant unto your orator the writ of injunction of the state of Alabama, directed to the defendant herein, perpetually restraining it from:

(a) Using in its signs, banners, advertising matter, or in any other manner whereby the same may be brought before the public, any design or device in upright script similar to or identical with the complainant's design or device, hereinbefore described.

(b) Using in its signs, banners, advertising matter, or in any other

manner whereby the same may be brought before the public, a design in script with the stroke or flourish beneath the same.

(c) Using in its signs, banners, advertising matter, or in any other manner whereby the same may be brought before the public, a design in script with the stroke or flourish beneath the same, having a phrase or word or words "cut in" to such stroke or flourish after the manner of complainant's design.

(d) Using in its signs, banners, advertising matter, or in any other manner whereby the same may be brought before the public a design or device containing the phrase "We fix 'em quicker," or any similar phrase or phrases.

(e) Using in its signs, banners, advertising matter, or in any other manner whereby the same may be brought before the public, or from using in any fashion, the phrase, "We fix 'em quicker," or any similar phrase or phrases.

(f) And your orator further prays that your honor will grant unto your orator all such other, further, or different relief as it may be entitled to in the premises, and as to your honor may seem meet and just.

Hanaw & Pillans,

M.V. Hanaw, Solicitors for Complainant.

Footnote: The defendant is required to answer all the allegations in this bill contained from paragraph 1 to paragraph 11, inclusive, but not under oath; answer under oath being hereby expressly waived.

Hanaw & Pillans,

M.V. Hanaw, Solicitors for Complainant.

Hanaw & Pillans and M.V. Hanaw, all of Mobile, for appellant.

Frank S. Stone, of Bay Minette, for appellee.

SOMERVIILLE J.

On the principle that the "good will" of a business is a valuable property right, and that the public who may intend to patronize a particular business; whether it dispenses merchandise or merely labor, ought not to be deceived or misled as to its identity, it is thoroughly settled, by a host of precedents, that courts of equity will grant injunctive relief against those who seek to divert and appropriate by imitative devices, symbols, or practices, the...