Chickering v. Chickering & Sons

• Citation: 215 F. 490
• Decision Date: 14 April 1914
• Docket Number: 2012.
• Parties: CHICKERING et al. v. CHICKERING & SONS et al.
• Court: United States Courts of Appeals. United States Court of Appeals (7th Circuit)

215 F. 490

CHICKERING et al. v. CHICKERING & SONS et al.

No. 2012.

United States Court of Appeals, Seventh Circuit.

April 14, 1914

[Copyrighted Material Omitted]

Charles S. Holt, of Chicago, Ill., for appellees.

Before BAKER, SEAMAN, and MACK, Circuit Judges.

MACK Circuit Judge.

This court, on January 6, 1903, affirmed the action of the Circuit Court in granting, on July 22, 1902, a temporary injunction to protect the complainant Chickering & Sons, a Massachusetts corporation, against the wrongful use of the name 'Chickering,' in and about the manufacture and sale of pianos by defendants Clifford C. and Fred W. Chickering doing business in Chicago under the firm name of Chickering Brothers. The facts in the case, the relative rights of the parties, and the terms of the injunction are fully stated in the opinion then rendered by Judge Jenkins. Chickering v Chickering & Sons, 120 F. 69, 56 C.C.A. 475. The legal principles there enunciated are confirmed by later decisions both of this and of the Supreme Court.

Thereafter, from time to time, depositions of witnesses were taken. In May, 1911, by supplemental bill, the American Piano Company, a corporation organized to acquire the business of several piano companies, and which, in July, 1908, had succeeded to the entire business of Chickering & Sons, except only the claim and cause of action involved in this suit, was made a co-complainant, and Wallace W. Chickering, who had joined his brothers as a member of the firm of Chickering Brothers in 1907, a codefendant. The supplemental bill set out numerous acts charged to be in violation both of complainants' rights and of the injunctional order of 1902. Thereupon, on January 2, 1912, the court extended the original preliminary injunction so as to bind Wallace W. Chickering and to protect the co-complainant, and in certain respects made it more specific. The case is now again before this court on appeal from the decree, entered after full hearing on April 15, 1913, in the District Court by Judge Kohlsaat, granting a perpetual injunction and referring the cause to a master in chancery for an account of profits.

This decree found that the name 'Chickering,' as applied to pianos, had long before the beginning of these proceedings come to designate the pianos manufactured by the complainants and their predecessors; that they had thereby acquired the exclusive right to manufacture and sell pianos by the designation of 'Chickering pianos'; that the complainant Chickering & Sons is the owner of all rights in that behalf prior to July 12, 1908, and the complainant American Piano Company is such owner, by assignment and succession, since said date; that the defendants had wrongfully marked the pianos manufactured by them 'Chickering Bros,' in lettering similar to that used by the complainants, until the entry of the preliminary injunction; that since that date and pursuant to the injunction, the style of lettering had been changed, the use of a Maltese cross, found to be an imitation of one awarded to and used by complainants, had been discontinued in their advertising and stationery and the words 'Made by Chickering Brothers, Chicago,' had been substituted for 'Chickering Brothers' on the fall board of the piano, until the order of January 2, 1912, had found these changes not to be a sufficient compliance with the original injunction, and had required other changes. The court further found that the defendants had advertised their pianos, and knowingly allowed them to be advertised by dealers under the name of 'Chickering Brothers Pianos' without marks or words to distinguish them from complainants'; that they had issued advertising matter containing references to their relationship to the Jonas Chickering family and to the former employment of Clifford and Fred in the Boston factory; that these statements were calculated to produce confusion of defendants' pianos with complainants'; that immediately after the death of the last male descendant of Jonas Chickering, defendants had marked their pianos, 'The only piano made by a Chickering,' and after the preliminary injunction of 1902 had forbidden this statement, they had substituted the statement, 'The only Chickerings manufacturing pianos'; that defendants' acts have resulted in some actual purchases of defendants' pianos by persons misled into supposing them to be the genuine Chickering pianos, and in extensive confusion and uncertainty in the minds of the public as to the identity and relations between the Chickering piano and defendants' piano.

Thereupon the court perpetually enjoined defendants substantially as follows:

First. From using the word 'Chickering' as the name or part of the name of a piano.

Second. From placing said word 'Chickering' alone or in combination as aforesaid, on any piano not manufactured by the complainants; provided, however, that this order shall not prevent defendants from marking pianos of their manufacture with some other and different name which shall be the same for all pianos made by defendants, and adding thereto the words, 'Made by Chickering Brothers, Chicago,' which words 'Chickering Brothers, Chicago,' shall be of the same size and style; and such letters, relatively to the letters composing the name of the piano as aforesaid, shall not be larger or more conspicuous than the letters composing the words 'Chickering Brothers, Chicago,' as shown on the fac simile next below attached.

(Image Omitted) Third, fourth, and fifth. From using or authorizing the use of the word 'Chickering,' verbally or in writing, to the piano trade or piano purchasing public in reference to a piano other than complainants', without immediately accompanying it with a statement or distinct indication that the piano so referred to is not the original Chickering piano.

Sixth. From representing that there are two kinds of Chickering pianos, of which defendants' is one.

Seventh. (a) From representing that the defendants are members of or related to the Chickering family by whom the business of complainants was founded and carried on, or 'the only Chickerings manufacturing pianos,' or that the defendants' pianos are 'the only pianos made by a Chickering,' or any words of similar tenor or effect.

(b) From representing, without stating or otherwise distinctly indicating that defendants' pianos are not the original Chickering pianos: (1) That they were trained wholly or in part in the Chickering factory of complainants; or (2) that they have inherited or acquired, or have in any manner become possessed of, any portion or degree of the genius, skill, or ability of the founder of complainants' business and his descendants.

Eighth. From all acts calculated to create in the mind of any person of ordinary intelligence the belief or impression that the pianos manufactured by the defendants are Chickering pianos, or to create in the mind of such person confusion, doubt, or uncertainty as to whether defendants' pianos are or are not Chickering pianos.

Ninth. From in any wise attempting to make use of the good will and reputation of the Chickering piano, in putting out, selling, or offering for sale any piano not made by the complainants.

The basis of the appeal is: First, that defendants have not been guilty of unfair trade; second, that complainants did not come into court with clean hands.

First. We deem it unnecessary to review the mass of evidence bearing on defendants' wrongful acts; in our judgment, it fully sustains the findings of fact. While it is urged on behalf of defendants that the specific instances of confusion resulting either from defendants' personal wrongdoing or that of dealers are few in number, extending over a long period of years, it is not controverted that both before and after this suit was begun, defendants' acts were such as to injure complainants in the enjoyment of their rights, and that unless restrained they would continue. Defendants' main reliance, in the matter of infringement, is on the contention that such confusion is only the natural result of the exercise by them of their undoubted legal right to the use of their own name. Whatever confusion to the public and injury to the complainants result from a lawful use by defendants of their own name in open, fair, and legitimate competition must be suffered; defendants, however, are responsible for the abuse of their right, for the unlawful use even of their own name, for any acts of unfair competition.

A surname is not the subject-matter of a technical trade-mark. This is due to the fact that it cannot be a clearly distinguishing mark on goods, inasmuch as any one bearing the name has a right to use it in connection with property of his manufacture. It may, however, by appropriation and actual exclusive use, in course of time come to denote, in the minds of the public, the product of some particular person or factory or business, and thus acquire a secondary signification. Such a secondary signification, when established, is the subject-matter of exclusive right; as Judge Baker said in Hanover Star Milling Co. v. Allen & Wheeler Co., 208 F. 513, 125 C.C.A. 515:

'If a dealer marks his shaving soap by the family name of 'Williams,' or his ale by the name of the village of 'Stone,' or his starch by the name of the hamlet of 'Glenfield,' his application of the name does not create its only meaning; but, if his trade creates a new meaning for the name, then he is entitled to just as full protection in the use of that meaning as if that were the only one. Others may use the common word in its common meaning, but they cannot use it in the particular meaning created by the complainant.'

In this case the proof is undisputed that in the course of the years before this suit was begun,...