Hagan & Dodd Co. v. Rigbers

• Decision Date: 29 January 1907
• Docket Number: 41.
• Citation: 57 S.E. 970,1 Ga.App. 100
• Parties: HAGAN & DODD CO. v. RIGBERS.
• Court: Georgia Court of Appeals

57 S.E. 970

1 Ga.App. 100

HAGAN & DODD CO. v. RIGBERS.

No. 41.

Court of Appeals of Georgia

January 29, 1907

Syllabus by the Court.

One whose property rights in his trade-mark or trade-name have been infringed, and whose business interests have been damaged by fraudulent acts and unfair trade, has an election of remedies. He may sue at law for the damages that he has suffered, or he may proceed in equity for an accounting injunction, etc.

When suit in such case was brought in the city court of Atlanta for damages alone, and no affirmative equitable relief was asked for, the court erred in dismissing the same on the ground that it had "no jurisdiction; the matters complained of being cognizable in equity."

Error from City Court of Atlanta; Reid, Judge.

Action by the Hagan & Dodd Company against M. L. Rigbers. Judgment for defendant, and plaintiff brings error. Reversed.

James E. Warren, for plaintiff in error.

Moore Gordon & Branch, for defendant in error.

HILL C.J. (after stating the case).

1. Unquestionably a court of equity has jurisdiction to give affirmative equitable relief in all cases of the fraudulent use of trade-marks, trade-names, or devices, or any unfair competition in trade, resulting in injury or threatened injury to the property or business of another. In this state such jurisdiction is expressly provided for in Civ. Code 1895, § 4035, in the following language: "Any attempt to encroach upon the business of a trader, or other person, by the use of similar trade-marks, names, or devices, with the intention of deceiving and misleading the public, is a fraud for which equity grants relief." A construction of this section of the Code, in connection with the decisions of the courts on cognate subjects, would extend the application of equitable relief to all cases of unfair competition in trade resulting in damage either to the property or the business of another. There are many cases in England and in this country establishing the correctness of the foregoing propositions; and, indeed, it cannot be doubted that in many such cases courts of law are inadequate to give complete relief, and that courts of equity, by reason of their broader powers, in compelling discovery, accounting, and injunction, can give to the injured party fuller and more ample remedies than a court of law. We have been unable, however, to find any case holding that jurisdiction of such subject-matters is exclusively with a court of equity. On the contrary, we think the principle clearly deducible from all the authorities is that a party who has been injured and damaged by a fraudulent use of his trade-mark, or by any unfair competition in trade, has an election of remedies. He may waive his purely equitable relief, such as accounting, discovery, injunction, etc., and sue at law for the damages that he has suffered as the result of such unlawful and unfair conduct. Browne on Trade-Marks (2d Ed.) § § 451, 506, states that the party whose rights are infringed has his election of remedies: First, an action at law for damages; second, a suit in equity for an injunction, and an account of profits, etc. In Dennison Mfg. Co. v. Thomas Mfg. Co. (C. C.) 94 F. 651, 659, it is declared that "the law of trade-marks is but a part of the law of unfair competition in trade." In Coats v. Thread Co., 149 U.S. 562, 13 S.Ct. 966, 37 L.Ed. 847, the court said: "Irrespective of the technical question of trade-mark, the defendants have no right to dress their goods up in such manner as to deceive an intended purchaser and induce him to believe that he is buying those of the plaintiff." In Reddaway v. Banham, [1896] App. Cas. 199, it was held that one person was not entitled to pass off his goods as those of another, by selling them under a name which was likely to deceive purchasers. In the same case the learned judge said: "I cannot help saying that if the defendants are entitled to lead purchasers to believe that they are getting the plaintiff's manufacturers when they are not, and thus to cheat the plaintiffs of some of their legitimate trade, I should regret to find that the law was powerless to enforce the most elementary principles of commercial morality. The name of a person, or work, forming part of the common stock of language, may become so far associated with the goods of a particular maker that it is capable of proof that the use of them by themselves, without explanation or qualification, by another manufacturer, would deceive the purchaser into the belief that he was getting the goods of A., when he was really getting the goods of B." The "Sapolio" Case, reported in (C. C.) 43 F. 420, 10 L.R.A. 283, was where the salesman of the defendant, when asked by an intending purchaser for "Sapolio," would hand out a different soap, called "Pride of the Kitchen," without explanation, and receive the customary price. It was held that this was "an infringement of the plaintiff's trade-mark," and that such conduct was "an unlawful use of the trade-mark or word symbol, the right of property in which belonged solely to the complainant"; that the act of the salesman in...