Clark Thread Co. v. William Clark Co.

• Decision Date: 20 June 1898
• Citation: 56 N.J.E. 789,40 A. 686
• Parties: CLARK THREAD CO. v. WILLIAM CLARK CO.
• Court: New Jersey Supreme Court

40 A. 686

56 N.J.E. 789

CLARK THREAD CO.

v. WILLIAM CLARK CO.

Court of Errors and Appeals of New Jersey.

June 20, 1898.

(Syllabus by the Court.)

Appeal from court of chancery.

Bill by the Clark Thread Company against the William Clark Company. From the decree rendered (37 Atl. 599), plaintiff appeals. Reversed, with directions.

E. Q. Keasby and H. D. Donnelly, for appellant.

R. V. Lindabury and C. B. Meyer, for respondent.

DIXON, J. The original bill in this cause was filed July 17, 1895, by the Clark Thread Company against the William Clark Company, to restrain the defendant from doing certain acts claimed to be an infringement and invasion of the good will of the complainant as a manufacturer and seller of a spool cotton and thread, and to obtain an account with respect to such acts previously done. As the pleadings were finally molded, a decree rendered June 23, 1896, in the circuit court of the United States for the Southern district of New York, in a cause wherein the Clark Thread Company was complainant and Herbert G. Armitage, an agent of the William Clark Company, was defendant, was set up by both parties as a judicial determination of the scope of the complainant's right to injunction. No other evidence of its right was offered. Under these circumstances, we think the definition of the complainant's right should be expressed, as nearly as may be, in the terms of the federal decree. The chancellor's decree departs from these terms in what may be substantial particulars, and should be so modified as to secure conformity. Of course, this will not prevent the the complainant from showing that acts of the defendant, not disclosed or contemplated in the federal suit, were violative of the right thus defined.

It appears in the case that the Clark Mile-End Spool Cotton Company, as well as the complainant, had the right to call its product "Clark's Thread," and to use the word "Clark" upon its labels, and that this right may have been violated by some of the acts of the defendant which infringed the complainant's right. In this condition of things, it seems to us inequitable to hold the defendant responsible to the complainant for all the profits realized by the defendant from its wrongful conduct. Its responsibility to the complainant should be confined to such profits as were diverted from the complainant, and such damages as the complainant otherwise sustained, leaving the defendant answerable to the Mile-End Company for the profits...