James Donnell v. Safe Company

• Decision Date: 03 February 1908
• Docket Number: HERRING-HALL-MARVIN,No. 106,106
• Citation: 28 S.Ct. 288,52 L.Ed. 481,208 U.S. 267
• Parties: JAMES W. DONNELL, Petitioner, v. SAFE COMPANY and Hall Safe & Lock Company
• Court: U.S. Supreme Court

208 U.S. 267

28 S.Ct. 288

52 L.Ed. 481

JAMES W. DONNELL, Petitioner,

v HERRING-HALL-MARVIN SAFE COMPANY and Hall Safe & Lock Company.

No. 106.

Argued January 14, 15, 1908.

Decided February 3, 1908.

Messrs. George Peck Merrick and S. S. Gregory for petitioner.

[Argument of Counsel from pages 267-268 intentionally omitted] Messrs. Charles H. Aldrich, Lawrence Maxwell, Jr., and Henry S. McAuley for respondents.

[Argument of Counsel from pages 268-270 intentionally omitted] Mr. Justice Holmes delivered the opinion of the court:

This suit was brought in the Supperior court of Cook county, Illinois, by the Hall Safe & Lock Company against the Herring-Hall-Marvin Safe Company, and was removed by the latter to the United States circuit court. The bill sought to enjoin the defendant from representing itself to be the successor of the Hall Safe & Lock Company and otherwise, as need not be stated in detail. The defendant answered, denying the plaintiff's rights and setting up its own. At the same time it filed a cross bill to which it made the petitioner, Donnell, the president of the plaintiff company, a party, and by which it sought to enjoin the plaintiff and Donnell from carrying on the safe business under any name of which the word 'Hall' is a part, or marking or advertising their safes with any such name, ect., unless made by the defendant or its named predecessors in business. The bill was dismissed by the circuit court, no appeal was taken, and it is not in question here. On the cross bill an injunction was issued as prayed and an account of profits ordered. This decree was affirmed by the circuit court of appeals. 74 C. C. A. 361, 143 Fed. 231. Subsequently an injunction was granted by the circuit court of appeals for the sixth circuit, but in much more limited form, after a consideration of the present case. 76 C. C. A. 495, 146 Fed. 37. Later still a certiorari was issued by this court.

The facts are as follows: About sixty years ago Joseph L. Hall started a business of constructing safes, and in time at- tached a reputation to his name. In 1867 he and his partners organized an Ohio corporation by the name of Hall's Safe & Lock Company, which went on with the business. (This was not the plaintiff, which is an Illinois corporation of much later date.) Hall was the president, a part or the whole of the time, until he died, in 1889. He owned the greater part of the stock and his children the rest. In 1892 the Ohio company sold all its property, including trademarks, trade rights, and good will, and its business as a going concern, to parties who conveyed on the same day to the Herring-Hall-Marvin Company. Subsequently this conpany's property was sold to the Herring-Hall-Marvin Safe Company, the party to this suit. In its conveyance the Ohio company agreed to go out of business and get wound up, which it did, with the assent, it may be assumed, of all the stockholders. The stock belonged to the Hall family and connections, and they, of course, ultimately received the consideration of the sale. A part consisted of stock in the new company, which was distributed to them at once, and a part was money paid to the selling company about to be dissolved. By election, and under a contract made on the day of the sale, Edward C. Hall, a son of the founder, became president of the purchasing corporation, the contract reciting that it was made as part of the inducement to the purchase, and he agreeing in it to hold the office until May 2, 1897, to devote all his time to the interests of the corporation, and, so long as it might desire to retain his services as stipulated, not to engage in any competing business east of the Mississippi river. Another son became treasurer under a nearly similar contract, and a son-in-law secretary.

Both sons resigned and left the service of the corporation August 1, 1896, and both were released, in writing, from their obligations under their contract. The next month the sons organized an Ohio corporation, under the name of Hall's Safe Company, which is party to the litigation in the sixth circuit, but is not a party here. The petitioner, Donnell, had been a selling agent of the original company, and afterwards of the company that bought it out, having a place in Chicago, with a large sign, 'Hall's Safes,' on the front. In 1898 he, with others, organized the plaintiff, Hall Safe & Lock Company, the name differing from that of the original corporation only by not using the possessive case....