Brennan v. Emery-Bird-Thayer Dry-Goods Co.

• Decision Date: 26 February 1900
• Citation: 99 F. 971
• Parties: BRENNAN et al. v. EMERY-BIRD-THAYER DRY-GOODS CO.
• Court: U.S. District Court — Western District of Missouri

99 F. 971

BRENNAN et al. v. EMERY-BIRD-THAYER DRY-GOODS CO.

United States Circuit Court, W.D. Missouri, Western Division.

February 26, 1900

John L Peak, for defendant.

PHILIPS District Judge.

This is a bill of complaint to enjoin the defendant from the use of the complainants' alleged trade-mark, and for an accounting. The words claimed as a trade-mark symbol are 'Steel-Shod,' used in connection with the representation of an anvil, stamped on the shank of shoes manufactured by the complainants since 1891. In considering this case, regard must be had to the fact that the whole allegations of the bill in respect of the alleged infringement are lodged against the Emery-Bird-Thayer Dry-Goods Company, a corporation created under the laws of the state of Missouri. It is, therefore, its acts and conduct which are the subjects of inquiry and determination. The evidence shows that this corporation was organized in November, 1895. The complainants have taken evidence and based much of their argument touching things done by the co-partnership firm of Bullene, Moore, Emery & Co., which existed for several years prior to January, 1895, and the co-partnership firm of Emery, Bird, Thayer & Co., which came into existence perhaps in January, 1895, as the successors of Bullene, Moore, Emery & Co. This last concern went out of existence on the creation of said corporation. As the corporation is a distinct legal entity, in the absence of any averment in the bill and evidence showing a devolution of the right upon or assumption by the corporation of the liabilities and obligations of said co-partnership concerns any act done or liability incurred by such concerns could not bind or affect this defendant. Neither does the bill or proof show any such assumption or liability by this defendant.

It appears that on Robinson had been in the employ of said co-partnership firms as their agent, in charge of their shoe department, in a department store, and that he attended to making all the purchases of shoes for them, and that he had sustained the same relation to the corporation since its organization. The evidence also shows that not all of the persons who composed said co-partnerships are directors or stockholders in the defendant corporation. I do not understand the law to be that any information or knowledge which said Robinson may have acquired in his capacity as agent for said co-partnerships is imputable to the defendant corporation. The foundation of the doctrine that knowledge of the agent is chargeable to the principal rests upon the proposition that such knowledge comes to him while acting within the line of his agency for the given principal; and as it is his duty to advise his principal of facts and information pertaining to his office as agent, the law presumes that he performs this duty, and therefore the further presumption arises that his principal obtains such information. Story, Ag. par. 140; Bank v. Lovitt, 114 Mo. 525, 21 S.W. 825. With the dissolution of the co-partnership, the office of Robinson as its agent ceased. When the corporation was created this legal entity became a distinct existence. Any knowledge or notice which an agent may have received while acting for another party or association, or which any individual member of the corporation may have obtained prior to the constitution of the corporate body, most certainly would not, as matter of law, by implication, be carried over and imputed to the corporation, simply because one or more of the members of a previously existing concern may have become officers or stockholders of the corporation, nor because such agent afterwards became an agent for the corporation. Were the law otherwise, most serious and unjust consequences might be brought upon the corporate body. 'The notice must be given to the agent while the agency exists, and it must refer to business which comes within the scope of his authority. ' Anderson v. Volmer, 83 Mo. 406. See, also, National Waterworks Co. v. City of Kansas City of Kansas City (C.C.) 78 F. 434, 435.

In this view of the law, what are the facts to be dealt with in this case? The last sale of shoes by complainants was to Bullene, Moore, Emery & Co. in June, 1892, more than three years before the defendant came into being; and, in so far as the evidence discloses, it does not appear that, when the defendant had the shoes in question made, after November, 1895, and up to December, 1896, it knew that the complainants were manufacturing and stamping such shoes. It had no notice that the complainants were using or claiming their alleged trade-mark. On the contrary, the testimony on behalf of the defendant shows affirmatively that its agent in charge of the shoe department, when knowledge came to him in 1891 and 1892, assumed and believed that the stamp in question on the bottom of complainant's shoe was not used or claimed as a trade-mark, but was merely descriptive of the quality and character of the shoe. No constructive notice to the defendant is predicable of the fact that complainants had registered such symbol or device as a trade-mark in the patent office. The act of congress of July 8, 1870, providing for the registration of trade-marks, 'is void for want of constitutional authority, inasmuch as it was so framed that its provisions are applicable to all commerce, and cannot be confined to that which is subject to the control of congress. ' Trade-Mark Cases, 100 U.S. 82, 25 L.Ed. 550. And the act of Marcy 3, 1881, applies only to 'trade-marks used in commerce with foreign nations, and with the Indian tribes.'

The shoe marked 'Complainants' Exhibit March 28, 1898,' as the one manufactured by them after the defendant began business, is unlike the shoe bought and sold by the defendant. Complainants' shoe had a plain black sole unquilted, while the defendant's had a steel-quilted sole of wires; and while it is true that the brand on the sole of defendant's shoe, with the words 'Steel Shod' above the anvil, stamped on the shank, is practically the same as that of the complainants, the defendant had stamped beneath the anvil in large letters the initials of the defendant company, 'E., B.T. & Co.,' indicating that it was defendant's manufacture. There was nothing about the symbol on complainants' shoe to indicate that it was used as a trade-mark, or to indicate ownership or the manufacturer of the shoe. Not until December, 1896, did the agent, Robinson, learn that the complainants claimed the words 'Steel Shod' as a trade-mark. Even this information did not come from complainants, but from Rice & Hutchings, of Boston, who manufactured shoes for the defendant. Thenceforth the defendant had not another shoe made with such stamp or symbol.

It is quite clear, from defendant's evidence, that there was never any purpose on its part of infringe upon the complainants' alleged trade-mark, or to palm off its goods as those of complainants' make. This suit was filed in March, 1897, without any previous complaint or notice from complainants to defendant that they made claim to a trade-mark; and the testimony of Mr. Robinson, the agent, and that of Mr. Thayer, defendant's secretary and treasurer the only parties representing the defendant who had anything to do with this matter, is that their best impression is that at the time the house only had on hand a dozen or two of the shoes manufactured for them by Rice & Hutchings; and their best recollection is that before this suit was filed the house had erased entirely from said shoes said words and the impression of an anvil, which erasure is shown by an exhibit in this case. Certainly it should be the equity of the case that under such circumstances, indicating entire absence of any purpose on defendant's part to interfere with complainants' claimed prescriptive right, that any reasonable doubt as to the exact time when this erasing was done should be resolved in the defendant's favor. But suppose it were conceded that this erasure of the alleged trade-mark on the few shoes in stock was near to or at the time this suit was filed; should the court, under the circumstances of this case, decree an injunction? Should the valuable time of this court, pressed, as it is, with multitudinous causes of importance,...