L. Martin Co. v. L. Martin & Wilckes Co.

Decision Date01 March 1909
Citation75 N.J.E. 257,72 A. 294
PartiesL. MARTIN CO. v. L. MARTIN & WILCKES CO.
CourtNew Jersey Supreme Court

(Syllabus by the Court.)

Appeal from Court of Chancery.

Action by the L. Martin Company against the L. Martin & Wilckes Company. Decree for plaintiff (71 Atl. 409) and defendant appeals. Reversed.

Craig A. Marsh and Frank P. McDermott, for appellant. Robert H. McCarter and Charles L. Carrick, for appellee.

SWAYZE, J. We agree with the conclusion reached by the Vice Chancellor upon the facts of the case, and have nothing to add to his convincing opinion in that respect. The decree, after adjudging that the defendant refrain from carrying on the lampblack business under the name of L. Martin & Wilckes Company, or any other name in which the name "L. Martin" appears, unless words are incorporated in and made a part of such corporate name which shall clearly and unmistakably distinguish the corporate name so adopted by the defendant from the complainant's corporate name, proceeds to award an injunction forbidding the defendant from carrying on the lampblack business under the name of L. Martin & Wilckes Company or under any other name in which the name "L. Martin" appears. The terms of the injunction provided for are therefore broader than the restraint adjudged to the complainant, which permits the use of the name "L. Martin" if the corporate name of the defendant clearly and unmistakably distinguishes it from the complainant. The decree, however, rests upon the conclusion that the defendants adopted the name L. Martin as a part of their corporate name for the purpose of securing trade which properly be longed to the complainant. This brings the case within the rule of International Silver Co. v. Rogers, 67 N. J. Eq. 646, 60 Atl. 187, 110 Am. St. Rep. 506, and we think the broad terms of the injunction were warranted. Since the complainant does not appeal from that part of the decree which adjudges a more limited restraint, we see no cause for reversal on this account.

The decree further orders a reference to a master to ascertain the profits diverted from the complainant which have been made by the defendant from the sales of lampblack in packages, and such other damages, if any, as the complainant has suffered by reason of the wrongful conduct of the defendant that is enjoined by the decree. It is the portion of the decree which directs the master to ascertain these damages that calls for comment. This goes beyond the prayer of the complainant's bill which, in this respect, asks only for an account of sales and profits. The Vice Chancellor ably argued in favor of the proposition that it would be unfortunate to remit the complainant to a court of law to ascertain its damages. We are not prepared to accede to his suggestion that we should so extend the jurisdiction of a court of equity, however desirable it may be that such extension should be brought about, either by legislation, or, if that is impossible in view of our constitutional limitations, by constitutional amendment. The general rule is that unliquidated damages for a tort cannot be recovered in equity. So well settled was this rule in England that an act of Parliament was required to change it. 21 & 22 Vict. C. 27. The rule is stated in 2 Daniel, 1080 (5th Am. Ed.). It is equally well settled in this state. Trotter v. Heckscher, 40 N. J. Eq. 612, 4 Atl. 83; Alpaugh v. Wood, 45 N. J. Eq. 153, 16 Atl. 676; Norton v. Sinkhorn, 63 N. J. Eq. 313, 50 Atl. 506. There is a class of cases in which a court of equity will ascertain the amount of compensation, but these are cases where the ascertainment is necessary as a condition precedent to the equitable relief which the court of chancery is competent to afford. Illustrations are to be found in cases where equity requires that a landowner should be enjoined from maintaining ejectment against a corporation having the power to condemn lands, but at the same time requires that the injunction should be awarded upon terms that the corporation make compensation. The cases are collected by Vice Chancellor Pitney in Sparks Mfg. Co. v. Newton, 57 N. J. Eq. 367, 303, 41 Atl. 385. North Hudson R. R. Co. v. Booraem, 28 N. J. Eq. 450; N. Y. & Greenwood Lake R. R. v. Stanley's Heirs, 35 N. J. Eq. 283. Other cases are cases of compensation on a bill for specific performance, of which Melick v. Cross, 62 N. J. Eq. 545, 51 Atl. 16, is an instance. Another illustration is Simmons v. Paterson, 60 N. J. Eq. 385, 45 Atl. 995, 48 L. R. A. 717, 83 Am. St. Rep. 642, where the right to ascertain compensation was contingent upon the consent of the city. In Egers v. Anderson, 63 N. J. Eq. 264, 49 Atl. 578, 55 L. R. A. 570, the jurisdiction of equity was sustained in a case of fraud, and it was held that the value of goods furnished might be ascertained by a master, but that case comes short of sustaining the jurisdiction to ascertain unliquidated damages for a tort. The difficulty of applying that rule to the present case arises out of the fact that the rule for ascertaining the compensation of the complainant in equity in cases of this kind is not the damages suffered by the complainant, but the profits realized by the defendant. The proper rule in such cases is the rule which has been adopted in cases for infringement of patents. That rule allows the complainant to recover the profits made by the defendant, including in profits the advantage derived by the defendant from the use of the invention. Tilghman v. Proctor, 125 U. S. 136, 8 Sup. Ct. 894, 31 L. Ed. 664, where Mr. Justice Gray said: "The general rule has been sometimes said to be based upon the theory that the infringer is converted into a trustee for the owner of the patent, as regards the profits made by the use of his invention. But, as has been recently declared by this court, upon an elaborate review of the cases in this country and in England, it is more strictly accurate to say that a court of equity, which has acquired upon some equitable ground the jurisdiction of a suit for the infringement of a patent, will not send plaintiff to a court of law to recover damages, but will itself administer full relief by awarding as an equivalent or...

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19 cases
  • Red Devil Tools v. Tip Top Brush Co.
    • United States
    • New Jersey Supreme Court
    • December 18, 1967
    ...support in the cases, some of which speak in terms of so-called trust principles (cf. L. Martin Co. v. L. Martin & Wilckes Co., 75 N.J.Eq. 257, 260, 72 A. 294, 21 L.R.A.,N.S., 526 (E. & A.1909); Adolph Gottscho, Inc. v. American Marking Corp., 26 N.J. 229, 240, 139 A.2d 281, 67 A.L.R.2d 816......
  • Zippertubing Co. v. Teleflex Inc.
    • United States
    • U.S. Court of Appeals — Third Circuit
    • March 22, 1985
    ...with the New Jersey law respecting the analogous business tort of misappropriation of a business name, L. Martin Co. v. L. Martin & Wilckes Co., 75 N.J.Eq. 257, 72 A. 294 (1909), and that of misuse of trade secrets. A. Hollander & Son, Inc. v. Imperial Fur Blending, 2 N.J. 235, 66 A.2d 319 ......
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    • United States
    • New Jersey Superior Court
    • July 26, 1974
    ...Candy Co. v. Ucanco Candy Co., D.C., 3 F.2d 156, 158; L. Martin Co. v. L. Martin & Wilckes Co., 75 N.J.Eq. 39, 71 A. 409; affirmed, 75 N.J.Eq. 257, 72 A. 294. . . . One who adopts a trade-name for use in his business and builds upon it public good will, acquires a property interest in both ......
  • Adolph Gottscho, Inc. v. American Marking Corp.
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    ...involving the wrongful appropriation of trade secrets. See Ellis, supra, § 281 et seq. Cf. L. Martin Co. v. L. Martin & Wilckes Co., 75 N.J.Eq. 257, 260, 72 A. 294, 21 L.R.A.,N.S., 526 (E. & A.1909). In the leading case of Duplate Corporation v. Triplex Safety Glass Co., supra, the Supreme ......
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