Edison Storage Battery Co. v. Edison Auto. Co. of Washington, D. C.

• Decision Date: 14 December 1904
• Citation: 56 A. 861,67 N.J.E. 44
• Parties: EDISON STORAGE BATTERY CO. et al. v. EDISON AUTOMOBILE CO. OF WASHINGTON, D. C, et al.
• Court: New Jersey Court of Chancery

56 A. 861

67 N.J.E. 44

EDISON STORAGE BATTERY CO. et al.

v. EDISON AUTOMOBILE CO. OF WASHINGTON, D. C, et al.

Court of Chancery of New Jersey.

Dec. 14, 1904.

Bill by the Edison Storage Battery Company and another against the Edison Automobile Company of Washington, D. C, and others. Decree advised for complainants.

Robert H. McCarter, Atty. Gen., for complainants.

Norman Grey, for defendants.

PITNEY, V. C. Tbe object of this bill is to prevent the defendant corporation, the Edison Automobile Company of Washington, D. C, from continuing to use the word "Edison" either in its corporate name or otherwise in the conduct of its business, and from holding out to the world that the complainant Thomas A. Edison is the inventor of any automobiles manufactured or sold by said corporation, or that the complainant the Edison Storage Battery Company is the manufacturer of automobiles, or any part thereof, manufactured or sold by it, the defendant.

The facts, most of which are undisputed, are as follows: At and prior to about the 1st day of October of the present year, 1903, the complainant Thomas A. Edison had been for many years and was a well-known inventor with a world-wide reputation, and among other things had invented a great number of instruments and machines designed for and connected with the use of electricity. Among other things, he had invented what he claims to be a superior kind of storage battery for the storage of electricity for use in automobiles, and had assigned the same to complainant, the Edison Storage Battery Company, which was one of his numerous companies organized by him for the purpose of manufacturing and dealing in his various inventions; and at the time before mentioned the Edison Storage Battery Company was engaged in the manufacture of storage batteries under Edison's patent, and was selling them in the open market, and also selling them in connection with automobiles, and was also selling automobiles equipped with such batteries. At that time two gentlemen by the name of Joslin, father and son, were engaged in the business of dealing in automobiles in the city of Washington, D. C, under a corporation organized under the laws of New Jersey with the name "The Automobile Company of Washington, D. C." At the same time complainant Thomas A. Edison had established his son, William Leslie Edison, in business in the city of Washington, 1). C, under the name of "The Edison Automobile Station." The establishments of the Joslins, carried on under the name of the Washington Automobile Company and that of young Mr. Edison under the name of the Edison Automobile Station were rivals in business; the latter selling automobiles propelled by electricity stored in the Edison storage batteries. About the 1st of October the Joslins approached young Mr. Edison with a view of consolidating their several establishments and changing the name of their own company to the name of "The Edison Automobile Company of Washington, D. C." Young Mr. Edison and the elder Mr. Joslin have made affidavits on this subject, which affidavits are not entirely in accord. Young Edison swears that the object of the interview was to have the help and co-operation of young Edison in forming and incorporating, under the laws of New Jersey, a company with the name of "The Edison Automobile Company of Washington, D. C," having for its object the conducting of an automobile storage and repair business in Washington and elsewhere in the United States, and that the principal object of Joslin was, as he stated, to get young Edison's consent to the use and insertion of the word "Edison" in the name of the proposed corporation; and he swears that he stated to Mr. Joslin that he could not enter into any agreement for the formation of any corporation or copartnership or other business arrangement in which the name of Edison was to be used without obtaining the full consent of his father. He stated—so he swears—that the use of his father's name was valuable, and that under an arrangement existing between him and his father he could not and would not permit the use of the name as proposed, unless his father expressly consented thereto. Joslin thereupon said that he would call upon the elder Edison, and ask his consent. That subsequently Joslin stated to young Edison that he had seen the elder Edison at his residence in Llewellyn Park, in Essex county, N. J., and had obtained his consent to the proposal; the language being, so young Edison swears: "Yes, I have been to see your father, and I had a very pleasant conversation with him, lasting about an hour or an hour and a half, and your father seemed very much pleased at the prospect of your bettering yourself, and he has given his full consent for you to connect yourself with the corporation I propose to form, provided you keep the business you are now engaged in intact." That he construed the language of Joslin to be that his father had consented to the use of his name, and thereupon he entered into a written agreement with Joslin. a copy of which is annexed to his affidavit, and is not disputed, to the effect that the name of the Automobile Company of Washington (Joslin's company) was to be changed to "The Edison Automobile Company of Washington— the capitalization to be $100,000. The writing provides for the disposition of the stock, and also contains an agreement to cancel an amount of $6,250.75, due to Joslin by his company, and that young Edison was to be the president and manager, with a moderate salary, but a large majority of the stock was to be under the control of Joslin. Acting upon that contract, Joslin immediately employed a corporation company in Camden to organize the proposed corporation, and it was so organized with three persons named as directors, who it appears now had no interest whatever in it, except one W. B. Walcott, as to $1,000, and the control of the whole affair was turned over to the Joslins. Tbe purposes of this corporation as set forth in its certificate, are very broad, viz.: To manufacture, buy, sell, deal in, and deal with and operate automobiles, etc.; to manufacture, buy, sell, construct, deal in, and deal with engines, machinery, apparatus, tools, equipments, and all things in connection therewith, necessary, convenient, and useful in manufacturing, buying, selling, and dealing in and with automobiles and motor vehicles; to manufacture, purchase, own, lease, etc., sell and dispose of, and deal in and with machines, compressors, generators, storage batteries, pumps, etc., for the manufacture, production, generation, distribution, use, supply, and application of electricity, compressed air, oil, gas, or other motive power, etc. As soon as Mr. Thomas A. Edison beard of this organization—that is, on the 12th of October—he caused a letter to be written to that one of the organizers who was stated in the certificate to be the holder of almost all the stock, forbidding him to use the name of "Edison," and he received a reply saying that they were not using the name of Thomas A. Edison; that the name used was that of W. Leslie Edison, and that it was so used at his direction. Shortly afterwards, to wit, on the 10th of October, young Edison filed a bill in the equity side of one of the courts of the District of Columbia against the Edison Automobile Company of Washington and the two Joslins, asking that they be restrained from the further use of the name "Edison," and offering to return to the company, or to the Joslins, certain shares of stock in that company which were issued to him. On the filing of that bill an interim restraint was granted, which was afterwards discharged upon the application of the defendants and upon an answer and affidavits made by them and filed; the grounds upon which the judge discharged it being that the bill was based upon the value of the name "Edison" generally, and the complainant, William L. Edison, could not complain of that, and that Thomas A. Edison was not a party to the suit. Thereupon the bill herein was filed on the 2d of November, and an order to show cause granted thereon.

The affidavit of Mr. Joslin, as I have said, disagrees somewhat with that of young Mr. Edison. Joslin says that at the interview between him and young Edison the proposition was that the separate business of each should be combined, and that it was not for the purpose of getting Leslie Edison to consent to the use of the name "Edison," but was for the purpose of getting Leslie Edison to act as manager and president of the combined business; that he did not inform Leslie Edison that his principal object was to get his consent to the insertion of the name "Edison" in the proposed corporation. (This statement, that the principal object was to get Mr. Edison to combine the business of the two establishments, namely, that of Edison and that of Joslin, and that Edison should be the manager and president of the combined business, is important.) Joslin further swears that young Edisou did not at that time, or at any other time, state to deponent that he could not enter into any agreement for the formation of any copartnership or other business in which the name of "Edison" was to be used without obtaining first the full consent of his father, etc., and denies that young Edison said anything about his inability to use the name of "Edison" in any business; but Joslin swears that Edison told him that he could not combine his business, known as the "Edison Automobile Station," with any business, without the consent of his father, and that he did not believe that his father would consent to such combination, as his father had established the Edison Automobile Station for him (Leslie Edison), and that he suggested that he (Joslin) should see his father, Thomas; that, acting on the suggestion of Leslie Edison, he (Joslin) did see Thomas A. Edison with reference to the combination of the business, but that Thomas A. Edison would not give his consent to such...