E.H. Taylor, Jr., & Sons Co. v. Taylor

• Decision Date: 17 March 1905
• Parties: E. H. TAYLOR, JR., & SONS CO. v. TAYLOR.
• Court: Kentucky Court of Appeals

85 S.W. 1085

124 Ky. 173

E. H. TAYLOR, JR., & SONS CO. v. TAYLOR.

Court of Appeals of Kentucky.

March 17, 1905

Appeal from Circuit Court, Jefferson County, Chancery Division.

"To be officially reported."

Action for infringement of a trade-mark by the E. H. Taylor, Jr., &amp Sons Company, a corporation, against Marion E. Taylor. From a judgment for defendant, plaintiff appeals. Reversed.

Wm McKee Duncan, Wm. Lindsay, and Hazelrigg & Hazelrigg, for appellant.

Humphrey Hines & Humphrey, for appellee.

HOBSON C.J.

E. H Taylor, Jr., & Sons Company is a corporation formed under the laws of Kentucky, and engaged in the manufacture and sale of whisky in Woodford and Franklin counties, claiming the exclusive use of a certain trade-mark, which is lettered upon the barrels, bottles, and cases containing their whisky, and printed upon their letter heads and their advertisements; their brand being "Old Taylor," coupled with the words, "The Premier Kentucky Whisky," and with the script signature of E. H. Taylor, Jr., & Sons. It filed this suit, charging in its petition that, while it had the exclusive right to use the above trade-mark the defendant, Marion E. Taylor, was, without its consent, in the city of Louisville, using on barrels, bottles, etc., containing a spurious compound of whisky, a trade-mark and brand substantially the same as, and almost identical with, that of the plaintiff; that this he did fraudulently to mislead the public, purchasers and consumers of whisky, into the belief that the whisky so branded by him was the whisky manufactured by the plaintiff; that the defendant advertised himself as a distiller, when he owned no distillery, and was not a distiller of whisky, and was palming off his compound as "Old Taylor" whisky, although he was only a blender of whisky, and was thus infringing upon the plaintiff's trade-mark, which was of value $100,000, and had thus enriched himself to the full amount of $75,000. An injunction was prayed, restraining the defendant from further piracy of its trade-mark, and an account was sought of profits made by the defendant in his infringement of the plaintiff's trade-mark, and also damages in the sum of $100,000 for the simulation of plaintiff's whisky, and the selling of the defendant's whisky for it. The defendant entered a motion that the court require the plaintiff to elect whether it would prosecute the claim on account of profits or the claim for damages. The court sustained the motion, and thereupon the plaintiff elected to sue for an injunction and accounting of profits, and dismissed so much of its petition, without prejudice, as claimed damages; reserving the right to sue therefor in another action if it should so desire. This action of the court was proper, as the plaintiff was not entitled to both an accounting of profits, and damages for the simulation of its whisky. The account of profits could be had in an equitable action, but damages for the simulation of its whisky would properly be had in a common-law action, as in other cases of fraud. There was thus left in the action only the question of an injunction and an accounting of profits if the infringement of the trade-mark was established. The defendant answered, traversing all of the allegations of the petition. On final hearing the court dismissed the petition, and the plaintiff appeals.

The proof shows that on January 1, 1887, a partnership was formed of E. H. Taylor, Jr., & Sons. This firm operated a distillery in Woodford county, manufacturing whisky which was known as "Old Taylor," and was so branded on the barrels, bottles, etc. They advertised it very extensively, and it attained a high reputation as a first-class whisky. The firm made an assignment in the year 1893, and on April 30, 1894, the corporation of E. H. Taylor, Jr., & Sons Company was formed, which has since manufactured "Old Taylor" whisky, and has continued to advertise it extensively and sell it all over the country. It is claimed by the defendant that it is not shown how the corporation ever got the right to use the brand, "Old Taylor," no transfer appearing from the assignee of the firm. But it is shown that the corporation bought the distillery at which the whisky was made, and, as neither the assignee nor any of the creditors of the firm have objected to the use of the brand by the corporation, it must be presumed that the debts of the firm were settled, and that the brand, as the property of the partners, reverted to them, and that they had the right to use it in the name of the corporation which they subsequently formed.

It remains, therefore, to determine what trade-mark the firm had. It appears that the...