Palmer v. Harris
| Citation | 60 Pa. 156 |
| Parties | Palmer <I>versus</I> Harris. |
| Decision Date | 14 January 1869 |
| Court | United States State Supreme Court of Pennsylvania |
Before THOMPSON, C. J., READ, AGNEW and SHARSWOOD, JJ. WILLIAMS, J., at Nisi Prius
Appeal from the decree of the Court of Common Pleas of Philadelphia: In Equity: To January Term 1868, No. 302 Jas. Parsons (with whom was J. C. Bullitt), for appellant.—A trade-mark is a species of property: Bradley v. Norton, 33 Conn. 157, and entitled to protection: Burnett v. Phalon, 9 Tiffany, N. Y. Court of Appeals; Collady v. Baird, 4 Phila. 139. The owner is entitled to an injunction against an imitator; a substantial similarity is sufficient: Bradley v. Norton, supra; Coats v. Holbrook, 2 Sand. Ch. 586, and cases cited; Taylor v. Carpenter, Id. 603, S. C. in error 611; Partridge v. Heuck, Id. 622; Williams v. Johnson, 2 Bosw. 1; Stokes v. Landgraff, 17 Barb. 608; Amoskeag Manufacturing Co. v. Spear, 2 Sand. S. C. 599; Wolfe v. Gouland, 18 How. Pr. Rep. 64; Clark v. Clark, 25 Barb. 76; Brooklyn White Lead Co. v. Masury, Id. 416; Walton v. Crowley, 3 Blatch. C. C. 440.
When the trade-mark constitutes by itself a fraud upon the public, the court will not enjoin an imitator. If it appears that the plaintiff was aware of the falsity of the representation, or made the contract with his eyes open to the defect, he is remediless, for he was not deceived: Adams's Eq. 176 and note; 1 Story's Eq., §§ 191, 202-3; Eden on Injunction 27 and note 1; Broom's Maxims 358.
The assertions on the label are in a foreign language, and are presumed not to be understood; 2 Starkie on Slander 52; Cook on Defamation 14, 87. Taking out the copyright and declaring it on the label neutralized the words on the label: Casey v. Collier, 56 Niles's Register 262 (1839); Keene v. Wheatley, 6 Amer. L. Reg. 45 (1860). The internal revenue stamp states the kind, quantity and district where manufactured: Act of Congress, July 28th 1866; Statutes at Large 328; Boutwell's Manual, §§ 91, 92, p. 51. The assertions were innocent in their effect on the public, and the court will not canvass the motive: Edelsten v. Vick, 11 Hare 78; Dale v. Smithson, 12 Abbott Pr. Rep. 237. It is only when intention is coupled with an act that it comes within the purview of jurisprudence; 2 Austin's Jurisprudence 147; Rex v. Scofield, Cald. 397; Rex v. Higgins, 2 East 5; Lindley's Juris. xxx. 2; Smith v. Bowler, Disney, Rep. 520-26.
Equity lends its aid to make a legal right more effectual: Farina v. Silverlock, 6 De G. M. & G. 214; S. C. 39 E. L. & E. 514. If the title is contested equity suspends its aid until the legal right is established: Pidding v. How, 8 Simons 477; Singleton v. Bolton, 3 Doug. 293; Perry v. Truefitt, 6 Beav. 66. Rodgers v. Nowill, 5 M. G. & Sc. 109.
A case at law by purchaser against proprietor requires false representation, knowledge of its falsity, ignorance of the purchaser, and acting upon it as if true: Sykes v. Sykes, 3 B. & C. 541; S. C. 5 D. & R. 292; Singleton v. Bolton, supra; Crawshay v. Thompson, 4 M. & G. 357; Rodgers v. Nowill, supra; Behn v. Kemble, 7 C. B. N. S. 260; Eden on Injunction, by Waterman, 25, note 1.
There can be no deception until somebody is deceived: 1 Stark. on Ev. 374; Adams's Eq. 176 and note; Story's Eq., §§ 19I, 202-3; Broom's Maxims 358.
When the legal title is established at law, Stewart v. Smithson, 1 Hilt. 119, equity enforces the right: Dale v. Smithson, supra; which is vested, and can be forfeited only on legal ground. It is better fortified than the right to a contract which equity rescinds only when an action of deceit could be maintained at law: Sugden on Property, in H. of L. 597-8-9, 406-8, 64 L. L. 398-9; Sugden on Vendors 180, ch. 5, § 111, pl. 41; 204, ch. 5, § 5, pl. 3; Fry on Specific Performance, ch. xii., p. 191; xiii., 206, L. L.
T. Cuyler, for appellee.—Can a court of equity protect from pirating a trade-mark which is confessedly false? The obscurely-printed statement of the entry of the copyright did not prevent the deception. The unwary and ignorant were deceived and intended to be deceived. The court will not grant an injunction when the plaintiff has made false representations to the public as to the article seeking protection: 3 Dan. Ch. Pract. 1754, 1755; 2 Story's Eq. § 951; Perry v. Truefitt, 6 Beav. 66; Millington v. Fox, 3 M. & A. 338; Clark v. Freeman, 11 Beav. 112; Hogg v. Kirby, 8 Ves. 226; Walcott v. Walker, 7 Id. 1. Equity will not extend protection to those whose case is not founded in truth: Pidding v. How, 8 Sim. 477; Dale v. Smithson, 12 Abbott's Pr. 237.
The opinion of the court was delivered, January 14th 1869, by SHARSWOOD, J.
The plaintiff, according to the statements of his bill, is the manufacturer of a cigar, known as the "Golden Crown," and he has devised a trade-mark, which he uses in its sale. He charges that the defendant, who is a printer by trade, has counterfeited this mark, and sells copies of it to persons engaged in the manufacture and sale of cigars, by whom they are used to his damage. The answer of the defendant admits these allegations; but sets up as a ground for the non-interference of the court, that the articles thus sold by the plaintiff were manufactured in the city of New York, and that the trade-mark in question contains upon it the declaration that they are the product of a "factory of cigars from the best plantations de la Vuelta Abajo, Calle del Agua, Habana." The case having been heard on bill and answer, the bill was dismissed with costs.
The maxim which is generally expressed, "He who comes into equity must come with clean hands," Snell's Principles 33, but sometimes, in stronger language, "He that hath committed iniquity shall not have equity," Francis's Maxims 5, has been often applied to bills to restrain by injunction the counterfeiting of trade-marks. The ground on which the jurisdiction of equity in such cases is rested, is the promotion of honesty and fair dealing, because no one has a right to sell his own goods as the goods of another: Croft v. Day, 7 Beav. 84. "It is perfectly manifest," said Lord Langdale, "that to do this is a fraud, and a very gross fraud." It is plain that there is no class of cases to which the maxim referred to can be more properly applied. The party who attempts to deceive the public by the use of a trade-mark, which contains on its face a falsehood as to the place where his goods are manufactured, in order to have the benefit of the reputation which such goods have acquired in the market, is guilty of the same fraud of which he complains in the defendant. He certainly can have no claim to the extraordinary interposition of a tribunal, constituted to...
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