Investor Pub Co. of Mass. v. Dobinson

• Decision Date: 24 February 1896
• Docket Number: 632.
• Court: U.S. District Court — Southern District of California
• Parties: INVESTOR PUB. CO. OF MASSACHUSETTS v. DOBINSON et al.

72 F. 603

INVESTOR PUB. CO. OF MASSACHUSETTS v. DOBINSON et al.

No. 632.

United States Circuit Court, S.D. California.

February 24, 1896

Under their demurrer, defendants insist that plaintiff has not, by the use shown in the bill, acquired such a right to the word 'Investor' as precludes, unqualifiedly, the adoption by defendant of a similar name for a like use, but that before defendant's journal could infringe plaintiff's rights, not conceding, however, even then, an infringement, it would have to be so advertised or published as to confuse it with plaintiff's, and that the only allegation in the bill to this effect is by way of recital and not a positive averment, and therefore insufficient. The allegation referred to is the latter part of the following clause: 'And your orator charges, that defendants, by adopting the name of 'The Investor' for such paper and by printing at the head of its editorial column the words 'Published by the Investor Publishing Company Incorporated,'' etc.

In order to correctly pass upon the question of the sufficiency of this allegation, it is necessary, in the outset, to observe and distinguish the respective offices of a general and special demurrer. 'The former will be sufficient (although special causes are usually stated) when the bill is defective in substance. The latter is indispensable when the objection is to the defects of the bill in point of form. ' Story, Eq. Pl. Sec. 455. Accordingly, it has been expressly held that, where an essential fact appears by necessary implication, such a statement of the fact is good as against a general demurrer. Amestoy v. Transit Co., 95 Cal. 314, 30 P. 550. In that case the court says:

'Respondent states the rule to be that only those allegations of the complaint are admitted by the demurrer which are material and which are well pleaded. As a general proposition that is undoubtedly correct, but it must be taken in connection with the other well-established rules of pleading. A complaint which would be obnoxious to a general demurrer would not support a judgment. When the latter question arises, courts have always discriminated between insufficient facts and an insufficient statement of facts; and where the necessary facts are shown by the complaint to exist, although inaccurately or ambiguously stated, or appearing by necessary implication, the judgment will be sustained. Reason requires that this same rule shall be applied in the case of a general demurrer.'

Again, in the text-book above mentioned occurs the following:

'In Baker v. Booker, 6 Price, 381, Baron Wood said: 'A demurrer only admits matters positively alleged in the bill; not every fanciful pretense suggested.' But this proposition must be taken sub modo; for if a fact be not positively asserted, and yet is material, and is stated in terms which may be deemed reasonably certain in their import, the demurrer will admit them. ' Story, Eq. Pl. Sec. 452, note 3.

Defendants contend, however, that here, as in all other cases, the bill should be most strongly construed against the plaintiff. The general proposition involved in this settlement is unquestionably correct, but it is applicable only where the averment in controversy admits of two interpretations, in which case that one least favorable to the pleader is to be adopted. 1 Fost.Fed.Prac. § 106. Such is not the case here. The averment is not susceptible of a double meaning, nor is it obscure. The only objection to it is that it is not direct. This defect, if such it be, is matter of form, and therefore cannot be reached by general demurrer. Whether the allegation would stand, against a special demurrer it is not necessary to determine. All that I now hold is that the allegation is sufficient in the absence of such a demurrer.

Assuming, then, that the bill alleges that the defendant printed, at the head of the editorial column of its journal, 'Published by the Investor Publishing Company, Incorporated,' the case made by the bill is substantially as follows: That plaintiff, an incorporated company, has for a number of years published, in the cities of Boston, New York, and Philadelphia, a trade journal called 'The United States Investor,' and that such journal has become widely and favorably known, throughout the United States and other countries; that, during this period, the defendants, at the city of Los Angeles, Cal., began the publication of a journal called 'The Investor,' and printed at the head of the editorial column of said journal the words 'Published by the Investor Publishing Company, Incorporated'; that these acts of the defendant company have produced great confusion in plaintiff's business, diverted its trade, and deprived it of the benefit of its high character and popularity among investors and advertisers, throughout the United States and elsewhere, and thereby plaintiff has been and is greatly damaged. Do these allegations show such an injury to the plaintiff as a court of equity will redress? is the remaining question to be determined.

That the name of a corporation is an essential part of its being, and that the courts, independent of statutory provision, will protect the corporation in the use of its name, seems to be well settled by the authorities, and the controlling principles in such a case are those applicable to trade-marks. State v. McGrath, 92 Mo. 357, 5 S.W. 29; Farmers' Loan & Trust Co. v. Farmers' Loan & Trust Co. of Kansas (Sup.) 1 N.Y.Supp. 44; Celluloid Manuf'g Co. v. Cellonite Manuf'g Co., 32 F. 94; Newby v. Railway Co., Deady, 609, Fed. Cas. No. 10,144; 4 Cent.Law J.pp. 338, 339; 10 Cent.Law J.pp. 82-84, 104-106, 123-126; William Rogers' Manuf'g Co. v. Rogers & Spurr Manuf'g Co., 11 F. 495.

In the first of these cases, the court, at page 357, 92 Mo., and page 29, 5 S.W., says:

'The name of a corporation is a necessary element of its existence, and, aside from any statute, the right to its exclusive use will be protected upon the same principle that persons are protected in the use of trade-marks. Boone, Corp. Sec. 32; Newby v. Railway Co., Deady, 609, Fed. Cas. No. 10,144; Ex parte Walker, 1 Tenn.Ch. 97; Homes, Booth & Haydens v. Holmes, Booth & Atwood Manuf'g Co., 37 Conn. 291. In the case last cited, the name of the corporation first organized was 'Holmes, Booth & Haydens,' and was made up of the names of the principal shareholders. Two of the shareholders, Holmes and Booth, with other persons, thereafter organized another corporation, by the name of 'Holmes, Booth & Atwood Manufacturing Company.' The similarity of the two names resulted in confusion, and it was found as a fact that dealers in the market were liable to be misled into the belief that the corporations were the same. On these facts, it was held the new corporation should be enjoined from using the name adopted. These cases show the rights that arise from the use of a corporate name.'

In Newby v. Railway Co., supra, the court says:

'The corporate name of a corporation is a trade-mark from the necessity of the thing, and, upon every consideration of private justice and public policy, deserves the same consideration and protection from a court of equity. Under the law, the corporate name is a necessary element of the corporation's existence. Without it a corporation cannot exist. Any act which produces confusion or uncertainty concerning this name is well calculated to injuriously affect the identity and business of a corporation.' In the case next below cited, the court holds, in substance, that while a corporation cannot, for all purposes, acquire an exclusive right to any English word of general meaning, yet it may acquire a proprietary right in a special use to and for which the word has been, by such corporation, appropriated and employed. In that case the court says:

'As to the first point, it is undoubtedly true, as a general rule, that a word merely descriptive of the article to which it is applied cannot be used as a trade-mark. Everybody has a right to use the common appellatives of the language, and to apply them to the things denoted by them. A dealer in flour cannot adopt the word 'flour' as his trade-mark, and prevent others from applying it to their packages of flour.'

And speaking of the word which was there in controversy, namely, 'celluloid,' the court further says:

'As a common appellative, the public has a right to use the word for all purposes of designating the article or product, except one,-- it cannot use it as a trade-mark, or in the way that a trade-mark is used, by applying it to and stamping it upon the articles. The complainant alone can do this, and any other person doing it will infringe the complainant's right. Perhaps the defendant would have a right to advertise that it manufactures celluloid. But this use of the word is very different from using it as a trade-mark stamped upon its goods. It is the latter use which the complainant claims to have an exclusive right in; and if it has such right (which it seems to me it has), then such a use by the defendant of the word 'celluloid' itself, or of any colorable imitation of it, would be an invasion of the complainant's right. * * * The subject is well illustrated by the case of McAndrew v. Bassett, 4 De Gex, J. & S. 380. The plaintiffs produced a new article of liquorice, and stamped the sticks with the word 'Anatolia, in Turkey. The article becoming very popular, the defendants stamped their liquorice sticks with the same word. Being sued for violation of plaintiff's trade-mark a common word, like the name of a country where the article is produced. Lord Chancellor Westbury said: 'The argument is merely the repetition of the fallacy which I have frequently had occasion to expose. Property in the word for all purposes

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