Buono v. Viviano & Bros., Macaroni Manufacturing Co.
| Citation | 198 S.W. 498,197 Mo.App. 618 |
| Parties | AUGUSTINO LO BUONO, ET AL., Respondents, v. VIVIANO & BROS., MACARONI MANUFACTURING CO., Appellants |
| Decision Date | 06 November 1917 |
| Court | Court of Appeal of Missouri (US) |
Appeal from the Circuit Court of the City of St. Louis.--Hon. Glendy B. Arnold, Judge.
AFFIRMED UPON CONDITION OF REMITTITUR.
Geo. W Lubke and Geo. W. Lubke, Jr., for appellant.
(1) Where a case is tried before the court without a jury, it is reversible error for the court to fail or refuse to rule on an objection made by a party to testimony either at the time or afterwards. Asbury v. Hicklin, 181 Mo. 658, 670; Seafield v. Bohne, 169 Mo. 537, 546; Stone v Fry, 191 Mo.App. 607. (2) The name of a place or locality cannot be exclusively appropriated as a trade mark or trade name, because such a term is generic or descriptive and any one who can do so truthfully is entitled to use it. American Wine Co. v. Kohlman, 158 F. 830; Apollo v. Perkins, 207 F. 530; Michigan Savings Bank v Dime Savings Bank, 162 Mich. 297; C. A. Briggs Co. v. National Wafer Co., 215 Mass. 100; Rosenthal v. Blatt, 80 N.J.Eq. 90; Pocono Pines Assembly v. Miller, 229 Pa. St. 33; Kansas Milling Co v. Kansas Flour Miss Co., 89 Kan. 855. Where the article to which a geographical name is applied is the product of the place named, the name cannot even by the user be acquired as a trade name by one person to the exclusion of others who are owners of like products of the same place. Dyer Quarry Company v. Schuylkill Stone Co., 185 F. 557; Esselstyn v. Holmes, 42 Mont. 507; Blackwell v. Wright, 73 N.C. 310. (3) A personal name cannot be exclusively appropriated as a trade mark so as to deprive another person of the same name or a similar name from using his own name in connection with his business or goods. Donnell v. Herring Hall Marvin Safe Co., 208 U.S. 267; Hygeia Distilled Water Co. v. Hygeia Ice Co., 72 Conn. 646; William Rogers Mfg. Co. v. Simpson, 54 Conn. 527; Frazer v. Frazer Lubricator Co., 121 Ill. 147; Russia Cement Co. v. Le Page, 147 Mass. 206; Koehler v. Saunders, 122 N.Y. 65; White v. Trowbridge, 216 Pa. St. 11; Fish Bros. Wagon Co. v. La Belle Wagon Works, 82 Wis. 546. There is no legal relief for the necessary and incidental inconvenience of loss occasioned by such use to others. American Waltham Watch Co. v. U. S. Watch Co., 173 Mass. 85; Meneely v. Meneely, 62 N.Y. 427; Howe Scale Co. v. Wycoff, 198 U.S. 118; Higgins v. Higgins Soap Co., 144 N.Y. 462. Every one has the clear right to use either his own or another's name descriptively that the person named is the maker, proprietor or vendor of the goods or the business. Dr. A. Reed Cushion Shoe Co. v. Frier, 162 F. 88; Edison v. Mills-Edisonia Co., 74 N. . Eq. 560; Baker v. Saunders, 80 F. 887; Duryea v. National Starch Mfg. Co., 79 F. 651; Russia Cement Co. v. Le Page, 147 Mass. 206; International Silver Co. v. Rogers, 71 N.J.Eq. 560. (4) In a suit for alleged unfair competition damages can not be recovered unless it be affirmatively shown that the plaintiff's customers have purchased the defendant's goods, to their deception, believing at the time of making the purchase that the defendant's goods were the goods of the plaintiff. Baker v. Baker, 115 F. 297; Coates v. Merrick Thread Co., 149 U.S. 562; Daviess County D. Co. v. Martinoni, 117 F. 186; Goodyear Co. v. Rubber Co., 128 U.S. 598; Heide v. Wallace, 129 F. 649; Hilson v. Foster, 80 F. 896; Lawrence v. Tennessee Co., 138 U.S. 537; Rowley v. Rowley, 193 F. 390; Walter Baker Co. v. Gray, 192 F. 192. And in equity the measure of damages is the profits made by the defendant from such sales. Baker v. Baker, 115 F. 297; Elgin Natl. Watch Co. v. Illinois Watch Co., 179 U.S. 674; Straus, Etc., v. Notaseme Hosiery Co., 240 U.S. 179; Howe Scale Co. v. Wycoff, 198 U.S. 118; American Washboard Co. v. Saginaw Mfg. Co., 103 F. 281.
Joseph Wheless for respondents.
This is a suit in equity wherein plaintiffs seek injunctive relief against the defendant corporation, together with an accounting and damages, because of certain alleged wrongful acts of defendant charged to constitute unfair competition with plaintiffs in their business. Upon an order to show cause the court issued a temporary restraining order which remained in force until a full hearing was had upon the merits. The latter trial resulted in a decree for plaintiffs, to be hereafter noticed, from which defendant prosecutes the appeal before us.
The petition alleges that plaintiffs Augustino Lo Buono, Antonio Lo Buono and Salvatore Lo Buono, of the city of St. Louis, and Guiseppi Lo Buono, of the town of Termini, Imerese, in Sicily, Italy, are copartners, doing business as August Lo Buono & Co., and engaged in business in the city of St. Louis as importers and wholesale dealers in "Italian produce" such as macaroni, olive oil, etc., and in Termini, Imerese, in the manufacture and exportation of olive oil; that defendant is a corporation with its principal place of business in the city of St. Louis, and there engaged in business of importing and selling Italian Produce, including olive oil.
And it is alleged that plaintiffs have been engaged in the business aforesaid for about fourteen years, have established a large business and a good reputation for their wares, and that the firm is the sole distributor in the United States of their olive oil, which is manufactured at Termini, Imerese, under the supervision of plaintiff Guiseppi Lo Buono, is "of the highest grade superfine olive oil," and the only olive oil produced in Termini which is imported into the city of St. Louis.
The petition further alleges that plaintiffs shipped their olive oil from Italy--"to the shipping address, S. Lo Buono, which was the name of plaintiff's father, who preceded them in the business in St. Louis, as it is also the name of one of the plaintiffs"--in tin cans of a special style, having thereon certain described labels, pictures and devices, with the name of the said place of production, and bearing the name of Guiseppi Lo Buono; which cans were manufactured specially for plaintiffs by a factory in Palermo, Sicily.
And it is alleged that defendant, for some time prior to the institution of the suit, with the intention of unfairly competing with plaintiffs and injuring them in their good name and business, fraudulently arranged with the manufacturer of an inferior grade of olive oil in Trabia, Sicily, to procure and did procure, cans identical with those of plaintiffs with the exception of the name "Guiseppi Lo Buono" appearing upon plaintiffs' cans; that in lieu of said name defendant directed the manufacturer to place upon the cans the name of "S. Lo Buono;" that in fact the manufacturer put defendant's name upon the cans, but upon their arrival in the city of St. Louis defendant fraudulently caused its own name to be painted over and that of S. Lo Buono to be inserted in lieu thereof.
The petition in part is devoted to the alleged fraudulent conduct of defendant in importing inferior olive oil from Trabia and other places in Italy, other than Termini, and selling the same in cans falsely labeled "Termini, Imerese," as the place of production. But these allegations are inconsequential.
And it is averred that defendant sold large quantities of the alleged "misbranded and inferior" oil to plaintiffs' customers, and has large quantities thereof on hand; and that defendant, by its alleged wrongful acts, has caused many of plaintiff's customers to cease dealings with plaintiffs and to deal with defendant, and has thereby seriously injured plaintiffs in their business and reputation and deprived them of profits, etc.
The prayer is that defendant be enjoined "from offering for sale and from selling the cans of olive oil above described bearing the name of S. Lo Buono, and from the sale of the olive oil put up by the defendant and branded as the produce of Termini, Imerese," for an accounting, and for $ 5,000 damages.
The answer admits the corporate existence of defendant but denies generally the other allegations of the petition.
Further answering, the defendant says that in August, 1913, it purchased from the firm of S. Sunseri & Bros., doing business in Sicily and in Pittsburg, Pennsylvania, ninety-five cases of olive oil which was to be produced in the Termini district in Sicily and packed in cans bearing the name of S. Lo Buono; that the name of S. Lo Buono was the name of the grandfather of S. Sunseri & Bros., and during his lifetime was engaged in packing and exporting olive oil and created a certain good will for his merchandise packed under his name; that upon the death of said S. Lo Buono, S. Sunseri & Bros., under the laws of Sicily, became entitled to all his property rights, including the right to use his name; and that upon the sale of said cases of oil by S. Sunseri & Bros. to defendant, the former had the right to label the package with the name of S. Lo Buono, and that plaintiffs "had no exclusive right to use their said name in connection with olive oil packed in tins."
The reply is a general denial of the new matter of the answer.
The evidence shows that for about fifteen years prior to the trial below plaintiffs had been engaged in selling olive oil in the city of St. Louis, produced by plaintiff Guiseppi Lo Buono, at Termini, Imerese, and had established a trade and good will in this business. The firm was not, however, the only distributor in said city of oil produced in Termini Imerese, which, it appears, was reputed to be of excellent quality. Plaintiffs' business in the city of St. Louis was formerly conducted, in whole or in part, by plaintiffs' father, Salvatore Lo Buono, who died in 1906. Their oil was sold in...
To continue reading
Request your trial