Dyment v. Lewis
| Decision Date | 18 November 1909 |
| Citation | 123 N.W. 244,144 Iowa 509 |
| Parties | P. H. DYMENT v. FRANK H. LEWIS, Appellant |
| Court | Iowa Supreme Court |
Appeal from Woodbury District Court.--HON. DAVID MOULD, Judge.
SUIT for permanent injunction resulted in decree as prayed. The defendant appeals.
Affirmed.
P. A Sawyer and Edwin J. Stason, for appellant.
Jepson & Jepson, for appellee.
The plaintiff began business in 1893 under the name and style of the "Robe & Tanning Company" at Leeds, a suburb of Sioux City. He has always conducted his correspondence and kept his bank account in that name and done most of his advertising in that name; but soon after beginning business letters, orders, and consignments began coming to him addressed "Sioux City Robe & Tanning Company," and have continued ever since. Both names appear in the directories and telephone books. He employed both names on his place of business, in his booth at a fair conducted within the city limits, and on a banner had the latter name printed. His business extends over nine or ten states and is transacted by correspondence; raw hides being shipped to him and returned finished, as required. Many of the drafts are drawn in favor of the "Sioux City Robe & Tanning Company," and a larger amount of business comes to him under that name than under the name with the locality omitted. George B. Lewis was an employee of plaintiff up to 1900, when he, with one Peterson, established another tannery nearby under the name of the "Northwestern Robe & Tanning Company," under which name Lewis still operates it. His son, the defendant, attained his majority on August 10, 1908, and five days later filed articles of incorporation for the "Sioux City Robe & Tanning Company." These articles provided for a capital of $ 10,000, of which the incorporator had but $ 1,000, and had made no provision for the disposition of the remainder of the stock. He was aware that plaintiff received consignments and correspondence in that name, and that there had been trouble with his father by whom he had been employed, and the plaintiff, but testified that he had no reason for adopting the name save that for business reasons none other would do as well. On hearing, the court enjoined defendant from engaging in the business of tanning or manufacture of fur robes and hides and the sale of the manufactured product thereof in the name of the "Sioux City Robe & Tanning Company."
I. The circumstances leading up to the plaintiff's use of two trade-names relieve him of any imputation of dishonesty of which he is accused. It was due to no fault of his that his patrons designated as the name of his business the "Sioux City Robe & Tanning Company." He had omitted the locality; but because it was in that enterprising city, those dealing with him made use of its name in connection with that voluntarily adopted by him, and he acquiesced therein. The record is convincing that he had built up a large and lucrative trade in that name, and we are not inclined to interfere with the decision of the district court that another ought not to be permitted to rob him thereof by dressing himself in the same name and thereby deceiving the public to his injury. Appellant concedes that plaintiff would be entitled to protection against the use of the name with "Sioux City" omitted, and then argues that no significance can be given the name of a locality, as it is common property. The distinction between the "Robe & Tanning Company" of Sioux City and the "Sioux City Robe & Tanning Company" is decidedly narrow and somewhat hazy, when examined from the practical viewpoint of the public. The use of these by different concerns would in all probability lead to confusion in the transaction of their business, and this is one of the principal grounds on which equity interferes. Were the names entirely distinct, probably he would be entitled to the protection of but one. They are alike, however, save the use of the name of a locality, except in a secondary sense, can not be appropriated as a trade-name. Its use or omission can not ordinarily be regarded as a marked distinguishing feature. See Samuels v. Spitzer, 177 Mass. 226 (58 N.E. 693). Connection or combination of it with other words of designation usually is essential to warrant the conclusion that its use should be protected. Indeed, it is immaterial by what means a trader's goods or business are identified, whether by personal description or by geographical name in connection with other words, for if it appear that the means adopted perform the function of identification, imitation of the identifying element by a rival trader under such circumstances as to render deception of those who deal with him a probable consequence will be enjoined. In other words, the doctrine of unfair trade amounts to no more than this: One person has no right to sell goods as the goods of another, nor to do other business as the business of another, and on proper showing will be restrained from so doing.
Appellant has cited a large number of decisions to the effect that one is not entitled to protection in the use of a trade-mark which is purely descriptive of his business or of this in connection with the locality where conducted. Whatever may be the law with reference to trade-marks, this is not the unvarying rule applied in cases of unfair competition. The distinction between the law of trade-marks and that of unfair competition is pointed out in Sartor v. Schaden, 125 Iowa 696, 101 N.W. 511, where the latter is said to be bottomed on the principle of common business integrity and to proceed on the theory that:
While a primary and common use of a word or phrase may not be exclusively appropriated, there may be a secondary meaning or construction which will belong to the person who has developed it. In the secondary meaning there may be a property right . . . . Consequently unfair competition is distinguished from trade-mark cases in this: That it does not necessarily involve the question of the exclusive right of another to use the name, symbol, or device. A word may not be capable of becoming an arbitrary trade-mark, and yet there may be an unfair use of the word which will constitute unfair trade. The whole doctrine is based upon the theory of protection to the public whose rights are infringed or jeopardized by confusion of goods produced by unfair methods of trade, as well as upon the right of the complainant to enjoy the good will of a trade built up through his efforts and sought to be taken from him by unfair methods.
One using the ordinary name of a commodity, business, or occupation in connection with the name of a locality will not always be entitled to protection. This necessarily depends on circumstances. See Delaware & Hudson Canal Co. v. Clark, 80 U.S. 311, 13 Wall. 311 (20 L.Ed. 581); Laughman's Appeal, 128 Pa. 1 (18 A. 415, 5 L. R. A. 599). As many as choose can, in good faith, engage in the same business or occupation described by such a name, and annexing the name of the locality does no more than indicate the place where the business is conducted; but when the goods are manufactured or produced at the place designated, if the name of the place is used fraudulently, or if a manufactory has been located with a view of obtaining the advantage of the name to the detriment of the other, it has long been settled that the use of the name will be enjoined. In Siexo v. Provezenda, 1 Law Rep. Ch. 192, the name of a district in Spain had long been used to denote the wines grown on one estate in that district, and it was ruled that the name could not be applied to wines from another estate of the same district, so as to mislead the purchasers. In Wotherspoon v. Currie, 5 L.R.H.L. 508, the plaintiff, who had originally carried on the manufacture of "Glenfield" starch at Glenfield, a little place of some sixty inhabitants, had removed his factory retaining the name. The defendant had purchased a small lot at Glenfield, and carried on the manufacture of starch there, also using the name "Glenfield" to denote his starch; but in view of the fact that the whole scheme was intended to lead people to believe that the defendant's starch was the plaintiff's, an injunction against the use of the name was held proper. So, in Thompson v. Montgomery, 41 Ch. D. 35, the plaintiff below and their predecessors had carried on a brewery in Stone (a town of Staffordshire of about six thousand inhabitants) since 1780, using the name "Stone Ales" to designate their product. The defendant, who had previously sold their product, put up a brewery at Stone, and used the word "Stone" in connection with the liquor of his own manufacture, with a view, in the opinion of the trial judge, to lead the...
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