Drive It Yourself Co. v. North

• Decision Date: 29 June 1925
• Docket Number: 47.
• Parties: DRIVE IT YOURSELF CO. v. NORTH ET AL.
• Court: Maryland Court of Appeals

130 A. 57

148 Md. 609

DRIVE IT YOURSELF CO. v. NORTH ET AL.

No. 47.

Court of Appeals of Maryland

June 29, 1925

Appeal from Circuit Court of Baltimore City; George A. Solter Judge.

Bill for injunction by Drive It Yourself Company against James D North and another. From a decree dismissing the bill complainant appeals. Affirmed.

Argued before BOND, C.J., and PATTISON, URNER, ADKINS, OFFUTT, PARKE, and WALSH, JJ.

Ogle Marbury and Harry O. Levin, both of Baltimore, for appellant.

George W. Lindsay, of Baltimore, and Everett C. Wilson, of Kansas City, Mo. (Sauerwein, Lindsay & Donoho, of Baltimore, on the brief), for appellees.

WALSH J.

According to the agreed statement of facts in this case, one Philip Milstone in January, 1923, began the business of hiring automobiles in the city of Baltimore to people who wished to drive the automobiles themselves. In August, 1923, Mr. Milstone, who was the pioneer in this field in Maryland, formed a corporation known as the "Drive It Yourself Company," which corporation continued the same business, with Mr. Milstone as president of the company. From the inception of the business the phrase "drive it yourself" was used to describe and designate it, and large sums of money were spent in advertising it. The business has been continuously carried on at No. 1725 North Charles street, and has proved successful, 45 automobiles being now used by the company, and the number of its customers being more than 5,000.

In 1916, one Warwick Saunders originated in Omaha, Neb., the business of letting automobiles without drivers to people who desired to do their own driving, and used the slogan "drive it yourself" to designate and advertise the business. From this small local beginning Saunders and his associates have gradually developed and expanded the business until it is now in operation in 45 cities in the United States. In the course of this expansion, a simple, efficient, and practical plan of conducting the business, including a system of bookkeeping, method of handling the cars, and form of advertising, was developed, and the whole plan was finally called the "Saunders Drive It Yourself System." This system is owned by the "Saunders Drive It Yourself Company," but the "drive it yourself" business in various cities is managed by local corporations or representatives to whom the system is supplied by the original company. It is also stated that a red and green label containing the words "Saunders Drive It Yourself System" was copyrighted by the original company, and appears on practically all advertising matter used by members of the system throughout the country, including their envelopes, letterheads, contract forms, operating blanks, newspaper notices, etc. Shortly before August 20, 1924, the apellees, who were the defendants below, opened up, as copartners, a business known as the "Saunders Drive It Yourself System" at No. 8 East North avenue in Baltimore city, just a few blocks from the place of business of the appellant, and on the date just mentioned the appellant filed its bill of complaint against the appellees, asking:

That they "be permanently enjoined and restrained from using or imitating the phrase or slogan 'drive it yourself,' either separately or in the window design at present employed by them on or about their place of business, or elsewhere, either on signs or by any device, or on their letterheads, billheads, advertisement stationery, either in full or as part of its name."

The bill of complaint pointed out the use of the phrase "drive it yourself" as part of the complainant's corporate name, set out the establishment by the complainant of this sort of business in Baltimore, and alleged that the use of the phrase by the defendants confused the customers of the complainant, and caused many of them to think that the place of business of the defendants was a part or branch of the complainant's business, but it did not allege any fraud or active deception by the defendants, other than the deception which the complainant alleged arose from the use of the phrase in question, and the proximity of the appellees' place of business to the place of business of the appellant. The defendants' answer denied that their use of this phrase was confusing to the customers of the complainant, and alleged that they had done nothing to deceive those customers, or to cause them to think that there was any connection whatever between the complainant's business and that of the defendants, and the answer then alleged that the business they were starting was simply a further extension of the business established many years before by Warwick Saunders; that they were the Maryland representatives of the Saunders System, and were using the label, advertising matter and other features of that system. A large mass of exhibits showing the label and advertising matter used by the Saunders System in other states was filed in the case, and from these it appeared that the phrase "drive it yourself" has been constantly used by the Saunders System all over the United States, and the agreed statement of facts also shows that the phrase is used by many others engaged in the same business outside of Maryland, and that similar expressions such as "U drive it" have also been used.

The case was submitted to the court below on the bill of complaint, answer, agreed statement of facts, and exhibits, and that court having declined to grant the relief asked, and having dismissed the bill of complaint, the complainant appealed. The appellant contends that it is entitled to an injunction for two reasons: First, to protect its corporate name; and second, on the ground that even if the phrase "drive it yourself" is held to be descriptive, and hence not subject to exclusive appropriation as part of a corporate name, it has nevertheless acquired a secondary meaning in Maryland which refers entirely to the appellant's business, and hence its use by the appellees constitutes unfair competition.

There is no statute in Maryland governing the right of a corporation to the exclusive use of its own name, but such right exists at common law, and it includes the further right to prohibit another from using a name so similar to the corporate name as to be calculated to deceive the public. Afro-American Owls v. Talbot, 123 Md. 465, 91 A. 570.

In the case just cited this court held that an organization known as the "Order of Owls" could not, in the absence of any proof of injury, restrain another corporation from using the name "Afro-American Order of Owls," and it was further held that the rule for determining whether or not the right to the exclusive use of a name had been infringed was:

"That where in the opinion of the court the similarity of names was such as was shown to have deceived the public, or to be liable to deceive the public, the injunction has been granted, and, where this was not the case, the injunction asked has uniformly been refused."

See, also, Creswill v. Knights of Pythias, 225 U.S. 246, 32 S.Ct. 822, 56 L.Ed. 1074; American Clay Mfg. Co. v. American Clay Mfg. Co., 198 Pa. 189, 47 A. 936; Plant Seed Co. v. Michel Plant & Seed Co., 37 Mo.App. 313; 14 C.J. 310, 326.

This general right of a corporation is, however, subject to certain qualifications and exceptions, one of which is that--

"Unless the words have acquired in the mind of the public a secondary meaning as denoting the goods or business of a particular company, a corporation cannot acquire the right to the exclusive use of * * * words merely generic or descriptive of a particular business, class of goods, process, sect, etc., which any one may lawfully use so as to be entitled to enjoin their use by another corporation or association in its name, in the absence of actual fraud or intent to deceive." 14 C.J. 329, 330.

See, also, Goodyear India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 9 S.Ct. 166, 32 L.Ed. 535; Koebel v. Chicago Landlord's Protective Bureau, 210 Ill. 176, 71 N.E. 362, 102 Am. St. Rep. 154; Edison v. Mills-Edisonia, 74 N. J. Eq. 521, 70 A. 191; Michigan Savings Bank v. Dime Savings Bank, 162 Mich. 297, 127 N.W. 364, 139 Am. St. Rep. 558; and a number of cases collected in the note in L. R. A. 1917C, 958.

In view of the rule just quoted, we find it unnecessary to decide whether or not the similarity between the names "Drive It Yourself Company" and "Saunders Drive It Yourself System" is sufficient to justify the court in enjoining the use of the latter as being a deceptive infringement of the former, because in our opinion the phrase "drive it yourself" is description of the business in which the parties to this suit are engaged, and hence under the authorities heretofore cited, it is not the subject of exclusive appropriation. There are innumerable cases in which the courts have been called upon to decide whether or not certain names were descriptive of the business being conducted under them, but, as the decisions in these cases depend upon the particular name and business involved, they furnish at best only a general guide by which future cases can be determined. However, it may prove helpful, and it is certainly of interest, to consider some of these decisions. It is to be noted that the rule prohibiting the exclusive appropriation of descriptive words as part of a corporate name is similar to the rule prohibiting the exclusive use of such words as trade-marks or trade-names, and, as both rules are based on the same principles, we have cited cases indiscriminately from each class. In Motor Accessories Mfg. Co. v. Marshalltown Motor Material Mfg. Co., 167 Iowa, 202, 149 N.W. 184, the first named company was held to have no right to restrain...