Grand Lodge of Ancient Order of United Workmen of Iowa v. Graham

• Citation: 65 N.W. 837,96 Iowa 592
• Parties: THE GRAND LODGE OF THE ANCIENT ORDER OF UNITED WORKMEN OF IOWA v. W. R. GRAHAM, et al., Appellants
• Decision Date: 22 January 1896
• Court: United States State Supreme Court of Iowa

65 N.W. 837

96 Iowa 592

THE GRAND LODGE OF THE ANCIENT ORDER OF UNITED WORKMEN OF IOWA v. W. R. GRAHAM, et al., Appellants

Supreme Court of Iowa, Des Moines

January 22, 1896

Appeal from Dubuque District Court.--HON. J. L. HUSTED, Judge.

This is a suit in equity to enjoin the defendants, who are officers of an alleged unincorporated society or voluntary association, from using the name of the "Grand Lodge of the Ancient Order of United Workmen of Iowa" usually written and known as the "G. L. A. O. U. W. of Iowa;" to restrain them from transacting business, and from conducting a life insurance business upon the mutual assessment plan under that name; and for such other relief as may be equitable. The defendants demurred to the petition and the demurrer was sustained. Thereupon the petition was amended, and a demurrer to the petition as amended was overruled. Thereafter defendants filed an answer to the petition, containing three counts and twenty-five divisions or paragraphs, and afterwards filed an amendment consisting of two divisions. Plaintiff moved to strike out certain parts of the answer as amended, and demurred to the remainder. The motion and demurrer were sustained, and defendants electing to stand on their pleadings, a decree was rendered against them as prayed. Defendants appeal.-- Reversed.

Reversed.

C. C. & C. L. Nourse, W. H. Berry, Alphonse Matthews, and J. W Warrington for appellants:

As to the rights of third parties the certificate of the auditor could have no effect.

Where no appeal or writ of error lies from the determination of such tribunal or officer, the judgment is not conclusive upon third persons, and the same may be shown to be illegal or fraudulent whenever brought in question.

Bixby v. Adams County, 49 Iowa 507; Vose v. Morton, 4 Cush. 31, 50 Am. Dec. 750; Leonard v. Bryant, 11 Met. 370; Griswold v. Stewart, 4 Cow. 458; Kaiser v. Lawrence Sav. Bank, 56 Iowa 104, 41 Am Rep. 85; Re National Indemnity Endowment Co., 142 Pa. 450.

Plaintiff's right to maintain this suit must be made to depend upon its exclusive right to the name, for otherwise the plaintiff has no more right to be heard in this court than any other insurance company whose business may be incidentally affected by the operations of the defendant organization.

Beach Inj. section 13; McDonald v. English, 85 Ill. 232; Springer v. Walters, 139 Ill. 419; Slatten v. Des Moines Valley R. Co., 29 Iowa 148, 4 Am Rep. 205.

To entitle the plaintiff to this protection it must affirmatively appear: (1) that plaintiff originated the name, or (2) acquired the exclusive right to the use of the name from some one who might legally transfer such a right; and (3) that the name was such that a special property might be acquired in it by appropriation or purchase.

Ottoman Cahvey Co. v. Dane, 95 Ill. 205; Corbin v. Gould, 133 U.S. 308, 33 L.Ed. 611; Van Beil v. Prescott, 82 N.Y. 630; Amoskeag Mfg. Co. v. Spear, 2 Sandf. 599; Delaware & H. Canal Co. v. Clark, 80 U.S. 13 Wall. 311, 20 L.Ed. 581; Fish Bros. Wagon Co. v. La Belle Wagon Works, 82 Wis. 56, 16 L. R. A. 453; Black Rabbit Asso. v. Munday, 21 Abb. N. C. 99; Nebraska Loan & T. Co. v. Nine, 27 Neb. 507; Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 32 L.Ed. 535; Koehler v. Sanders, 122 N.Y. 65, 9 L. R. A. 576; Leclanche Battery Co. v. Western Electric Co., 23 F. 276.

The name "Iowa" being a geographical name is common property, and cannot be appropriated to trade or business by any one to the exclusion of others.

Columbia Mill Co. v. Alcorn, 150 U.S. 460, 37 L.Ed. 1144; Nebraska Loan & T. Co. v. Nine, supra.

There never was any transfer by the supreme lodge of the order to the plaintiff in the nature of a contract by which plaintiff can claim an exclusive right to the use of the name "Ancient Order of United Workmen."

The sale or transfer of the good will of a business does not entitle the assignee to the exclusive use of the name.

Iowa Seed Co. v. Dorr, 70 Iowa 482, 59 Am. Rep. 446; Vonderbank v. Schmidt, 44 La.Ann. 264, 15 L. R. A. 462.

Our legislature has recognized the fact that such fraternal and benevolent associations are not insurance companies, and can with safety and greater benefit to the public continue their fraternal and benevolent work without the supervision of the state.

Dickinson v. Ancient Order of U. W., 159 Pa. 263; Com. v. Equitable Ben. Asso., 137 Pa. 419; Gorman v. O'Connor, 155 Pa. 239; Northwestern Masonic Aid Asso. v. Jones, 154 Pa. 104; Johnson v. Philadelphia & R. R. Co., 163 Pa. 133; State v. Taylor, 56 N.J.L. 49.

Plaintiff cannot, as against the statute of limitations, indefinitely prolong the time in which he may sue by voluntarily failing to do the things required by law to be done before an action may be brought.

Hintrager v. Traut, 69 Iowa 746; Baker v. Johnson County, 33 Iowa 151; Kirby v. Lake Shore & M. S. R. Co., 120 U.S. 131, 30 L.Ed. 569; Palmer v. Palmer, 36 Mich. 487, 24 Am. Rep. 605.

Even in law actions for damages on account of a continuing nuisance, this court has held that when the act of the defendant was complete before the period of limitation, and the result only was within the statute, even a suit for damages was barred.

Powers v. Council Bluffs, 45 Iowa 652, 24 Am. Rep. 792; Baldwin v. Oskaloosa Gas Light Co., 57 Iowa 51; Williams v. Mills County, 71 Iowa 367.

Reasonable diligence must be used in making application for relief against piracy of a trade-mark, and proceedings should be instituted promptly upon the discovery of the fact.

High, Inj. section 1100; Estes v. Worthington, 22 F. 822; Galliher v. Cadwell, 145 U.S. 369, 36 L.Ed. 738; Harwood v. Chicago & C. Air Line R. Co., 84 U.S. 17 Wall. 78, 21 L.Ed. 558; Twin-Lick Oil Co. v. Marbury, 91 U.S. 587, 23 L.Ed. 328; Brown v. Buena Vista County, 95 U.S. 157, 24 L.Ed. 422; Hayward v. Eliot Nat. Bank, 96 U.S. 611, 24 L.Ed. 856; Holgate v. Eaton, 116 U.S. 33, 29 L.Ed. 538; Davison v. Davis, 125 U.S. 90, 31 L.Ed. 635; Societe Fonceire et Agricole v. Milliken, 135 U.S. 304, 34 L.Ed. 208.

Plaintiff claims that it has been organized only under the statute for the organization of charitable institutions, and yet it is here complaining to a court of equity, that another organization is doing a charitable work. Such a proceeding as this is certainly an anomaly, and finds a precedent only in the ancient case reported by St. Luke, in which one of the apostles complained to the Master that he had found certain persons performing miracles and doing good in His name, and that he forbade them.

Luke ix., 49. See, also, Coffeen v. Brunton, 5 McLean, 256; Filley v. Child, 16 Blatchf. 376.

Longueville & McCarthy and Lyon & Lenehan for appellee:

When plaintiff was incorporated it obtained from the state of Iowa its franchises, the first and most important of which is its name.

The name of a corporation is a part of its franchise and therefore property, and will be protected in equity no matter what its objects or purposes are, as long as they are legal.

Waterman, Corp. section 31, High, Inj. section 1081; Newby v. Oregon Cent. R. Co., 1 Deady, 609; Paulino v. Portuguese Ben. Asso., 18 R. I. , 20 L. R. A. 272; Holmes, B. & H. v. Homes, B. & A. Mfg. Co., 37 Conn. 287, 9 Am. Rep. 324; Pom. Eq. Jur., section 1358; International Trust Co. v. International Loan & T. Co., 153 Mass. 271, 10 L. R. A. 758; United States Mercantile Rep. Co. v. United States Reporting & C. Asso., 21 Abb. N. C. 115; Chas. S. Higgins Co. v. Higgins Soap Co., 144 N.Y. 462, 27 L. R. A. 42.

The natural consequences of the wrongful appropriation of a corporate name must be to injure business and rights of the corporation in some degree by destroying or confusing its identity. The act is an illegal one and must be presumed to have been done with an intent to cause results which naturally flow from it.

Waterman, Corp., section 31; Paulino v. Portuguese Ben. Asso., supra.

Holmes, B. & H. v. Holmes, B. & A. Mfg. Co., supra, fully discusses the question, and denies the right of persons who allow the use of their names in forming the original corporation to use the same in another corporate name, and puts it on the ground of an estoppel.

A corporation may, by injunction, prevent other persons from using its name to the injury of its trade.

Morawetz, Priv. Corp. section 184.

The case is analogous to, if not stronger than that of piracy upon an established trade-mark.

Bell v. Locke, 8 Paige, 75, 34 Am. Dec. 371; Taylor v. Carpenter, 11 Paige, 292, 42 Am. Dec. 114; Partridge v. Menck, 2 Barb. Ch. 102, 47 Am. Dec. 281; Williams, Eq. 402, 403.

A corporate name is regarded as a trade-mark, and as such, it is entitled to the protection of a court of equity.

High, Inj 3d ed., section 1081; Paulino v. Portuguese Ben. Asso., 18 R. I. , 20 L. R. A. 272.

It is one of the duties of the supreme lodge to organize and establish grand lodges, and there can be but one grand lodge in a state.

Supreme Lodge Const., section 25.

Within this power the supreme lodge chartered the plaintiff in 1873 as the Grand Lodge of the Ancient Order of United Workmen of Iowa. That was the only name that it could have under section 26 of the Constitution of the Supreme Lodge. (Abst. 108.) That was the name given to it, and when it gave that name to plaintiff the supreme lodge had exhausted its power in this respect, and had divested itself of all power to organize any other grand lodge in Iowa as long, at least, as plaintiff existed.

District Grand Lodge No. 5, I. O. of B. B. v. Jedidjah Lodge No. 7, I. O. of B. B., 65 Md. 236; Goodman v. Jedidjah Lodge No. 7, I. O. of B. B., 67 Md. 117; State v. Miller, 66 Iowa 26; State v. Nichols, 78 Iowa 747.

The unlawful business of the defendants...