Edison v. Edison Polyform Mfg. Co.

• Decision Date: 22 July 1907
• Parties: EDISON v. EDISON POLYFORM MFG. CO.
• Court: New Jersey Court of Chancery

67 A. 392

73 N.J.E. 136

EDISON

v. EDISON POLYFORM MFG. CO.

Court of Chancery of New Jersey.

July 22, 1907.

Bill by Thomas A. Edison against the Edison Polyform Manufacturing Company to restrain defendant from the use of the name "Edison" as a part of its corporate title or in connection with its business or advertisements. Decree for complainant.

Robert H. McCarter and Frank L. Dyer, for complainant. Charles E. Hill and Mr. Meier, for defendant.

STEVENS, V. C. The complainant, who is an inventor of electrical instruments and processes, and enjoys in this regard a world-wide reputation, early in his career compounded a medicinal preparation intended to relieve neuralgic pains by external application. It was first made for the personal use of Mr. Edison and his assistants, and not for sale. In the year 1879 a Mr. Lewis and a Mr. Jacobs went to his laboratory in Menlo Park to examine his inventions. While there Mr. Edison happened to mention the fact that he had been a sufferer from facial neuralgia, and that he had made a preparation which he had called "Polyform" and which he had found to be a good pain killer. Lewis and Jacobs were so impressed with its merits that they asked him to sell it He finally agreed to sell for $5,000. The arrangement was that he would apply for a patent and execute an assignment. The patent does not appear to have been issued, but a written assignment of his right to it and to the preparation was made on September 2, 1879. On November 7, 1879, a company, called the "Menlo Park Manufacturing Company," in which Mr. Edison had no interest, was organized under the laws of Connecticut, and it proceeded to manufacture and sell the preparation. It did so for several years on a small scale, with little or no success, and finally failed. It was succeeded by a corporation, organized on September 3, 1880, under the laws of Maine, called the "Edison Polyform Company." This company, too, met with little success. It was, in turn, succeeded by a New York company, which did nothing. Finally a New Jersey company, the present defendant, was on May 23, 1893, formed by certain gentlemen living in Chicago. This corporation is now carrying on the business of making and selling Polyform in that city. The present suit was commenced October 9, 1903. There has been some delay in prosecuting it, caused, I suppose, by the death of complainant's solicitor. I do not think, however, that as the case stands there is any question of laches. The case must be decided on its merits.

The prayer of the bill is that the defendant company may be restrained from using the name "Edison" as a part of its corporate title or in connection with its business, or in connection with any advertisements circulated or published by it, and from holding out that complainant is the inventor or manufacturer or seller of the preparation sold by defendant What the defendant company is doing is to manufacture and sell a liquid preparation containing apparently all but one of the drugs (viz., morphine) mentioned in Mr. Edison's formula. On each bottle is a label, containing on the one side directions for use, and on the other a picture of Mr. Edison and the following words: "Edison's Polyform. I certify that this preparation is compounded according to the formula devised and used by myself. Thos. A. Edison." Mr. Edison testifies that he has never authorized the use of his picture and that he has never made or authorized this certificate. As to the present defendant, there is absolutely no pretense that he has. As to the predecessors of the defendant, there is evidence that the picture and certificate were used; but it would seem that, when Mr. Edison heard that they were, he objected. He says that he objected to any use whatever of his name or picture. Mr. Grant says, but does not show by competent proof, that he objected only to the representation of machinery around the head. I do not regard the matter as important, because, even if Mr. Edison had given a license to use a picture and certificate to the first vendees—persons whom he knew and in whom he may have reposed confidence—it would not by any means follow that others, unlicensed and whom he did not know, would possess the same privilege. In the original assignment of the formula no authority whatever to use either name or picture was conferred.

The regularity of the assignments to the successive corporations was attacked. They appear to be in some respects defective; but I do not apprehend that it makes any difference, so far as the present bill is concerned, whether the title of the defendant is or is not perfect The decision turns upon quite a different point.

The cases relating to the law of unfair trade have no application. They decide merely that a trader or manufacturer has no right to put off his goods as the goods of his competitor. The defendant does not put off his goods as being of Mr. Edison's manufacture. It asserts that it is itself the maker of them. What it does, however, falsely declare, is that it is Mr. Edison who is certifying that the preparation which the company is making and selling is made according to the Edison formula. It is, by its corporate name, by the certificate, and by the picture, holding out that Mr. Edison is connected with the enterprise and supervising its work. The question is whether Mr. Edison is without standing to complain because he is not a business competitor.

Clark v. Freeman, 11 Beav. 112, and Dockrell v. Douglas, 78 L. T. Rep. 848, may be thought to favor defendant's contention. In the first case Lord Langdale refused an injunction to prevent a druggist from selling a quack medicine which he called "Sir James Clark's Consumption Pills," under the false representation that it was prepared by or under the direction of the eminent physician, Sir James Clark. The decision was that, inasmuch as Sir James was not engaged in the business of selling pills, no injury was done to his property of which a court of equity could take cognizance. Dockrell v. Douglas differs from Clark v. Freeman in the circumstance that the druggist who was selling a drink, which he called "Jellico," under the representation that Dr. Dockrell had recommended it, was in point of fact telling the truth. The complaint was that he was not authorized to use the doctor's name in his advertisements; that the doctor had done nothing more than make the statement advertised in private conversation, without any idea that what he said would be thus utilized. Here, too, an injunction was refused. Whatever view may be taken of the soundness of the conclusion reached by Ridley, J., in Dockrell v. Douglas, it is certain that the decision in Sir James Clark's Case was wrong. In Maxwell v. Hogg, L. R. 2 Ch. 307, Lord Cairns said that it had always appeared to him that it might have been decided in the plaintiff's favor on the ground that he had a property in his own name, and Lord Selborne, in Re Rivere's Trade-Mark, 26 Ch. Div. 48, said that it had seldom been cited, but to be disapproved.

The leading case on the other side of this question is Routh v. Webster, 10 Beav. 561. There the provisional directors of a joint-stock company had, without plaintiff's authority, published a prospectus stating that he was a trustee. Lord Langdale granted an injunction on the ground that the company was representing the plaintiff as responsible in their speculations in a way calculated to involve him in all sorts of liabilities. In Dixon v. Holden, L. R. 7 Eq. 458, Malins, V. C., restrained the publication of a notice stating that plaintiff was a partner in a bankrupt firm. Of this case it was said by Lord Cairns in the subsequent case of Prudential Insurance Company v. Knott. L. R. 10 Ch. App. 142, that, while he did not agree to the reasoning of the Vice Chancellor, he did not mean to say that the decision itself was not capable of being maintained. Somewhat analogous to the last case is that line of cases which holds that, where a business (including the good will) is sold, the vendee may not use the vendor's name in such manner as to expose the vendor to liability. Thynne v. Shove, 45 Ch. Div. 577; Burchell v. Wilde, [1900] 1 Ch. 552.

The latest English case that I have been able to find on the very question here presented is Walter v. Ashton, [1902] 2 Ch. 282. There a dealer advertised a cycle which he called "the Times Cycle." Among other things in his advertisement were statements to the effect that the Times Cycle was the only cycle that could be obtained on the Times (meaning the London Times newspaper) system of payments. There was a manifest attempt to suggest in other ways, without expressly affirming, that the London Times was connected with the venture. An injunction was granted on the authority of Routh v. Webster, supra, on the ground that it appeared that there was a reasonable probability that that newspaper might be exposed to liability—that it might possibly be held responsible if it should not take steps to disconnect its name from the advertisements after they had been brought to its attention. The distinction made was between a liability that was merely shadowy and one that carried with it a...