Dodge Bros. v. East

• Decision Date: 20 April 1925
• Citation: 8 F.2d 872
• Parties: DODGE BROS. v. EAST.
• Court: U.S. District Court — Eastern District of New York

8 F.2d 872 (1925)

DODGE BROS. v. EAST.

District Court, E. D. New York.

April 20, 1925.

Putney, Twombly & Putney, of New York City (Louis H. Hall and Lemuel Skidmore, both of New York City, of counsel), for plaintiff.

Robert Jablin, of New York City, (Jacob Broches Aronoff, of New York City, of counsel), for defendant.

INCH, District Judge.

This is a suit in equity for alleged unfair competition. Plaintiff, a manufacturer of automobiles, has sued the defendant, and asks that he be restrained from continuing to employ certain signs in connection with his business premises; from using signs employing white letters on a blue background, in conjunction with the use of the name Dodge; from using the words "Dodge Dealer"; and from using any words or combination of words, colors, or style of lettering which would tend to deceive the public into believing that the defendant is operating a service station or a salesroom under authority from, or with the approval of, the plaintiff. The defendant has duly answered, denying the existence of any facts which would justify the granting of the relief prayed for by plaintiff, and setting up the defense of laches.

The plaintiff made a motion for a temporary injunction, on affidavits, which, in my opinion, was properly denied by Judge Campbell. A decision otherwise would have given plaintiff on mere affidavits all the relief which a trial court could give after the examination and cross-examination of witnesses. Where deception, willful or otherwise, is in issue, the granting of what might be drastic relief usually should wait for a trial.

The question presented here is not free from difficulty. On one hand, the plaintiff's business should be fairly and properly protected. On the other, defendant's business should not be unfairly and unreasonably obstructed or injured. There has been no attempt made to show actual fraud on the part of the defendant, such as the selling of cars under the misrepresentation that they were Dodge cars. The deception claimed, if any, is of a subtle nature. It remains to be seen whether any such deception at all, that a court can recognize, exists.

A brief statement of the business of both parties may be helpful. The plaintiff, Dodge Bros., is a Michigan corporation, doing the business of making and selling automobiles. It does not sell secondhand cars, nor does it, itself, maintain "service stations" or "repair stations."

Since 1914, plaintiff's cars have been sold under the name of "Dodge Bros. Motor Cars." This correct name has been shortened by the public to "Dodge Bros." or "Dodge Cars." According to the testimony, since 1914, over a million and a quarter of these automobiles have been sold by plaintiff, at an average price of $1,000 a car. During this same period close to $12,000,000 has been spent by plaintiff in advertising its motor cars.

The character of this advertising was described by a witness, Mr. Lyons, in charge of the service department of the factory of plaintiff, which is a division of the sales department, of which the advertising department is also a part. This witness stated that the plaintiff had always used, in its bill-board and its other advertising, a uniform style or design. This was the name "Dodge Bros.," in block type, in white letters, on a very deep blue background, the letter "E," in the word "Dodge," having its middle stroke carried out slightly beyond the upper and lower stroke. "We have always used it in that work, poster, board, billboards, and painted boards, and the style or the design of the advertising matter has been uniform all the way through. The two outstanding characteristics, or rather three, are a blue background, very deep blue, and white letters, of what is called the block type, and this advertising has been the same in form from the beginning."

This combination appeared on the various photographs offered by plaintiff. It is this distinct and unique form of advertisement of the name "Dodge" that has been spread far and wide, at great expense, by plaintiff. It is claimed, and is reasonable to suppose, it has become identified, in the general public's mind, with plaintiff's product and business. Thus the public, using "Dodge" cars, to the extent of over a million, can be reasonably assumed to have a good impression of the reliability and substantial character of plaintiff, and would reasonably have the same good opinion as to any subsidiary activity connected with its business into which plaintiff has gone, or into which the general public might reasonably be led to believe it had gone, although the contrary was the fact.

In other words, a situation has been developed by this advertising of plaintiff, all of which costs a great deal of money, where the following statement may be quoted, from the case of Hilson Co. v. Foster (C. C.) 80 F. 896, at page 897: "Money invested in advertising is as much a part of the business as if invested in buildings, or machinery, and a rival in business has no more right to use the one than the other."

But, while we are thus quoting from the above case, it may be well to quote further, where Judge Coxe says: "The action is based upon deception, unfairness, and fraud, and when these are established the court should not hesitate to act. Fraud should be clearly proved; it should not be inferred from remote and trivial similarities. Judicial paternalism should be avoided; there should be no officious meddling by the court with the petty details of trade; but, on the other hand, its process should be promptly used to prevent an honest business from being destroyed or invaded by dishonest means." Hilson Co. v. Foster, supra.

Let us now turn to the defendant and his business. The defendant since 1915 has been, and still is, a duly licensed dealer in used cars. Since 1919, he has specialized in used Dodge cars. In other words, he has devoted himself, exclusively, to building up a good will with numerous customers, who, having bought a new Dodge car, and desirous of selling it, have learned to come to him, or send friends similarly situated, and receive the cash value of their used car. In addition, and as a necessary adjunct, to this secondhand car business, defendant maintains a service station. His main place of business is at 1270 Bedford avenue, Brooklyn, and his service station is at 814 Sterling Place, Brooklyn.

The Bedford avenue place holds 11 cars and is a showroom. The Sterling Place service station is built of fireproof brick, and holds 22 cars.

This business conducted by defendant is quite common. It is useful, legitimate, and, so far as I can see, from this record, has been conducted by him without even a suspicion of any dealing that might be considered a reflection on the integrity of his business. It is defendant's sole business, and, though he may call himself manager, such in fact he is, as well as being the sole proprietor. While his business is modest in capital invested, compared with plaintiff, yet the court should be and is equally as concerned with his rights as with those of plaintiff. On the above general statement of the business carried on by the parties we have to look into their respective rights.

In the first place, the plaintiff corporation does not sell or buy secondhand cars. Its sole business is the selling of new cars. This is far from saying, having in mind the valuable good will, which is an essential part of the business of plaintiff, as well as that of any other concern, that plaintiff's business interests entirely cease upon the sale by it of such new Dodge car, and that from then on it is not in any way substantially concerned with whether or not such purchaser becomes a satisfied buyer. The contrary is true. Every satisfied buyer is a potential buyer of a new car of the same make. In fact, the saturation point of first buyers is nearer reached than the point where another car is bought, perhaps larger and better, and of the same make, because the service rendered by the old car was satisfactory and its maker found reliable.

Again, plaintiff certainly cannot complain that its car is known as a Dodge car as long as it lasts. That is the name given to it at birth, and every one has a right to refer to it, by advertisement or otherwise, by this its true name. Also no court should prevent a person selling a Dodge car or buying one, and the mere fact that some one makes a specialty of doing this does not seem to me to change the situation.

There is no proof offered or claim made here that defendant has ever sold, as a Dodge car, one of some other make. Indeed, plaintiff's counsel in his brief states, at page 46: "The plaintiff asks no restraint whatever on the right of the defendant to deal in used Dodge Bros. cars. It claims no right whatever to interfere or limit him in advertising that he deals in used Dodge Bros. cars. It has no interest whatever as to the amount of business done by him in used Dodge Bros. cars, or other cars. It fully and freely concedes, and has always conceded, that any one may lawfully and properly deal in used cars of any description, including Dodge Bros. used cars. The sole claim that it makes in respect thereto is that a person not conducting his business in co-operation with and under the sanction of the plaintiff shall not falsely represent to the public, either directly or by implication, that he is acting under the plaintiff's sanction, and shall not display the plaintiff's sign mark and `commercial signature' in connection with such business."

In other words, the issue narrows down to the request by the plaintiff that this court restrain the defendant from intentionally or unintentionally deceiving the general public into reasonably believing that the plaintiff corporation is connected in some way with defendant's business; the reason being that the general public, dealing with defendant, might not be satisfied with the treatment it received from defendant, and thus, without ability...