Chadwick v. Covell
| Decision Date | 27 February 1890 |
| Citation | 23 N.E. 1068,151 Mass. 190 |
| Parties | CHADWICK v. COVELL. |
| Court | United States State Supreme Judicial Court of Massachusetts Supreme Court |
February 27, 1890
HEADNOTES
E.L Barney, for plaintiff.
E Avery and T.F. Desmond, for defendant.
This is a suit brought for an injunction and damages in respect of the defendant's manufacture and sale of certain medicines under the name of "Dr. Spencer's Queen of Pain," and "Spinal Paste or Salt Rheum Cure," and his use of alleged trade-marks for the same. Issues were framed for the jury on the question whether the plaintiff was the owner of the formulas for the medicines and of the trade-marks used by Dr. Spencer, and the case came on for trial upon them. As the whole case was pending in the superior court, it is hardly to be supposed that it was understood that every question, except those raised by the issues in their narrowest sense, was left for trial at another time. It seems plain, at the least, that the rulings of the judge were made on the footing that the question before him was whether the plaintiff had such an exclusive ownership as she alleged in her bill, and as entitled her to an injunction, and that the judge was right in that understanding. If the issues were construed more narrowly than that, the trial by jury was a waste of time.
The plaintiff's case, on her evidence, is as follows: Dr Spencer, of New Bedford, made and sold these medicines according to certain secret formulas of his own, under the names mentioned. The plaintiff became intimate with him; and after his death Mrs. Spencer, his administratrix, said to the plaintiff that it was the doctor's wish and her wish that the plaintiff should have the formulas of the Queen of Pain and the Spinal Paste, and the trade-marks, and the circulars and labels, and everything that went with the Queen of Pain and the Spinal Paste, and that was her reward for her kindness. These formulas were written on paper. Mrs. Spencer handed them to the plaintiff, and she took them. At that time, the plaintiff took some of the Queen of Pain that was manufactured and on hand. There was not any Spinal Paste made then. She took none of the labels at that time. Three days later, Mrs. Spencer died, and a teamster carried the rest of the medicine to the plaintiff's house. After that, the plaintiff began to manufacture and sell the medicines. The sisters and next of kin of Dr. Spencer, and his administrator de bonis non, subsequently signed papers purporting to ratify the transaction; the administrator using words implying that she had a right, but not necessarily an exclusive right. The administrator also sold the plaintiff two dies used by Spencer for stamping packages of the Spinal Paste. After these transactions, the administrator de bonis non conveyed by deed to the defendant, for $200, Spencer's recipes and trade-marks for these medicines, excepting rights, not specified, theretofore granted by Spencer, Mrs. Spencer, or himself, and, it seems, had sold him moulds for bottles for the Queen of Pain, at a much earlier time. The defendant made and sold the medicines with labels like those used by Dr. Spencer. The judge ruled that the evidence would not support a decree for the plaintiff, directed the jury to answer the questions in the negative, ordered the bill to be dismissed, and reported the case.
So far as the right to manufacture and sell the medicines goes, the plaintiff's case may be disposed of in a few words. Dr. Spencer had no exclusive right to the use of his formulas. His only right was to prevent any one from obtaining or using them through a breach of trust or contract. Any one who came honestly to the knowledge of them could use them without Dr. Spencer's permission, and against his will. Peabody v. Norfolk, 98 Mass. 452, 458; Morison v. Moat, 9 Hare, 241, 263; Williams v. Williams, 3 Mer. 157. The defendant got his knowledge honestly.
Having the right to make and sell the medicines, the defendant had the right to signify to the public that the medicines were made according to the formulas used by Dr. Spencer. The only question is whether the plaintiff has the right to restrain him from using Dr. Spencer's trademarks. The defendant argues that an executor or administrator has no right to give away the estate coming to his hands, and therefore that the plaintiff got no title to any property of Dr. Spencer by Mrs. Spencer's dealings with her, since those dealings were, at most, a mere gift. But there has been no attempt to avoid the transaction on behalf of any one interested. The creditors of the estate have all been paid, and the next of kin assented to the gift. So far as this objection goes, we shall assume that, even if the gift was a breach of duty on the part of Mrs. Spencer, it gave the plaintiff a title, as against third persons, to anything which it was otherwise competent to give her. Myers v. Meinrath, 101 Mass. 366.
We assume for the purposes of our decision, but without expressing an opinion on either question, that what took place between Mrs. Spencer and the plaintiff purported to be a present gift of the trademarks, and that, if the gift of a trade-mark in gross would have been good if by deed, it would be equally good at common law when made by parol. The old rule was that "everything that is not given by delivery of hands must be passed by deed." Hoy, Max. p. 62, c. 33; FAIRFAX, J., in Y.B., 21 Hen. VII., 36, p. 1. 45; Shep.Touch. 229. But the formalities required by the early common law have been broken in upon a good deal, although more in England than in this state. It may be that later forms of property not admitting of delivery, but unknown to the old law, or not then the subject of transfer, are free from the restraints of the ancient rule; just as, at Rome, later forms of property could be conveyed without the comparatively archaic ceremonies of mancipation. It may be that even a parol gift of incorporeal property would be sustained, although delivery is impossible from the nature of the case. But that question we leave undecided. See Browne, Trade-Marks, (2d Ed.) § 361, and note; Low. Tr. Stocks, § 43; 2 Kent, Comm. 439; Grover v. Grover, 24 Pick. 261, 263; Bond v. Bunting, 78 Pa.St. 210, 218.
We also refrain from considering whether the sale of the two dies to the plaintiff would not be sufficient to give her the right to use the marks upon them, (Stevens v. Gladding, 17 How. 447, 452,) and pass to what seems to us the insuperable difficulty in the case.
What is the plaintiff's position when she seeks to prevent the defendant from selling his medicine by the name of "Dr Spencer's Queen of Pain?" She is not Dr. Spencer. She is not the owner of a manufactory once owned by him. She makes the medicine with her own ingredients, tools, plant, and contrivances. She has no exclusive right to make it. The defendant's use of the name does not mislead the public any more than hers does as to the maker, the place of manufacture, or the nature or quality of the goods. Unless, therefore, it should be held that a trade-mark may be erected into a new species of property, capable of lasting as long as the world does, and certain goods are manufactured, and of being transferred for value or by gift from person to person irrespective of good-will, special right to make the goods, place of manufacture, or fraud of any kind upon the...
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