Rickard v. Caton College Company

• Decision Date: 09 January 1903
• Docket Number: 13,317 - (187)
• Citation: Rickard v. Caton College Company, 92 N.W. 958, 88 Minn. 242 (Minn. 1903)
• Parties: CHARLES T. RICKARD and Another v. CATON COLLEGE COMPANY and Others
• Court: Minnesota Supreme Court

92 N.W. 958

88 Minn. 242

CHARLES T. RICKARD and Another v. CATON COLLEGE COMPANY and Others

Nos. 13,317 - (187)

Supreme Court of Minnesota

January 9, 1903

Appeal by defendants from an order of the district court for Hennepin county, Harrison, J., denying a motion for a new trial.Affirmed.

SYLLABUS

Trade-Name -- Injunction.

Where a private educational institution has been established and designated by a name under which it has acquired a valuable reputation and business standing, an imitation of its established title, calculated to mislead and deceive patrons will be enjoined as unfair business competition, although the name imitated is not the subject of strict property right as a trade-mark.

James A. Peterson and Paul J. Thompson, for appellants.

It is well established by the authorities that words merely descriptive of the character, quality, or composition of an article cannot be monopolized as a trade mark.J. R Watkins Medical Co. v. Sands,83 Minn. 326;Van Beil v. Prescott,82 N.Y. 630;Caswell v. Davis,58 N.Y. 223;Amoskeag Mnfg. Co. v. Trainer,101 U.S. 64;Brown Chemical Co. v. Meyer,139 U.S. 540;Taylor v. Gillies,59 N.Y. 331;Royal v. Sherrell,93 N.Y. 331;Lawrence Mnfg. Co. v. Tennessee Mnfg. Co.,138 U.S. 537.The word "Minnesota's" is used by the defendants in describing this school, while the word "Minnesota" is used by the plaintiffs as a part of the name of their school.This is a geographical name and it is well settled that no one can apply the name of a district or country to a well-known article of commerce and obtain thereby such an exclusive right to the application as to prevent others inhabiting the district or dealing in similar articles coming from the district from truthfully using the same designation.Delaware & H.C. Co. v. Clark,13 Wall. 311;Columbia Mill Co. v. Alcorn,150 U.S. 460;Appeal of Laughman, 128 Pa. St. 1.

Walter N. Carroll and H. V. Mercer, for respondents.

Plaintiffs had acquired a trade name by adoption and user in the combination of words "Minnesota School of Business" before it was applied to a similar institution by any other individual -- a property right which the courts will protect.Black, Law Dict. Titles: "Copyright,""Patent,""Trade-mark,""Trade-name;"Brown, Trade-marks(2d Ed.) §§ 91, 528;American v. Grocer,25 Hun, 398;Symonds v. Greene,28 F. 834;Avery v. Meikle,81 Ky. 73, 112;Merserole v. Tynberg,36 How. Pr. 14;Fleischmann v. Schuckmann,62 How. Pr. 92;Barrows v. Knight,6 R.I. 434;Williams v. Adams,8 Biss. 452;Roberts v. Sheldon,8 Biss. 398;Amoskeag Mnfg. Co. v. Trainer,101 U.S. 64.A geographical name may be a trade-name.Metcalfe v. Brand,86 Ky. 331; see brief in O'Kane v. West End, 72 Ill.App. 297.

Injunction will lie against the defendant for unfair competition if the complaint contains allegations of fraudulent acts and intent on the part of the defendant, regardless of validity or proprietary rights of the trade-mark or trade-name in controversy.21 Enc.Pl. &Pr. 762, and cases cited;Merchants v. Detective,25 Ill.App. 250;O'Kane v. West End, supra;Pierce v. Guittard,68 Cal. 68;Keller v. Goodrich,117 Ind. 556;Van Horn v. Coogan,52 N.J.Eq. 380;Robertson v. Berry,50 Md. 591;Plant v. Michel,23 Mo.App. 579;Avery v. Meikle, supra;McLean v. Fleming,96 U.S. 245, 254;Perry v. Truefitt,6 Beav. 66;Carson v. Ury,39 F. 777;Cleveland Stone Co. v. Wallace,52 F. 431;Walker & Sons v. Mikolas,79 F. 955.A trade-name which cannot be sustained as a trade-name may be protected from unfair competition, even though it has been adjudicated that both parties have the right to use the name, if the business or goods of one competitor is fraudulently represented to be that of another.The principle of unfair competition being that of common honesty -- that none shall deceive the public by selling his goods for those of another.Cincinnati v. Cincinnati, 7 Ohio N.P. 135;Heller & Merz Co. v. Shaver,102 F. 882;Shaver v. Heller & Merz Co.,108 F. 821;Weber Medical Tea Co. v. Krischstein,101 F. 580;Little v. Kellam,100 F. 353;Thomas G. Plant Co. v. May Co.,100 F. 72;Chancellor v. Wilmore-Andrews Pub. Co.,101 F. 443;Williams v. Mitchell,106 F. 168;Sterling Remedy Co. v. Spermine Med. Co.,112 F. 1000;La Republique Francaise v. Saratoga Vichy Springs Co.,107 F. 459;Singer Mnfg. Co. v. Hipple,109 F. 152;Russia Cement Co. v. Katzenstein,109 F. 314;La Lance & Grosjean Mnfg. Co. v. National E. & S. Co.,109 F. 317;Sterling Remedy Co. v. Gorey,110 F. 372;Wyckoff v. Howe Scale Co., 110 F. 500.

OPINION

LOVELY, J.

This is a suit to restrain the use by defendants of a business sign and advertising devices adopted as a trade-name by plaintiffs.

The cause was tried to the court, who made findings of fact, and held as a conclusion of law that plaintiffs were entitled to the relief demanded in the complaint, ordering that a permanent injunction be issued to restrain the defendants from maintaining an obnoxious sign on their building in Minneapolis, and forbidding them to imitate or appropriate the business name previously used by plaintiffs to advertise the commercial college or school operated by them.Thereafter a motion was made to set aside the findings of the court and for a new trial, which was denied.From this order defendants appeal.

The plaintiffs, in 1891, established an institution at Minneapolis for the instruction of those desiring a business education, and adopted therefor as its descriptive name and title the words, "Minnesota School of Business," by which it has ever since been known and designated.The findings of fact, which are justified by the evidence, substantially set forth that under this characterization the plaintiffs, who were partners, acquired a valuable reputation and secured a large patronage for their institution; that the Minnesota School of Business became widely known, and secured an enviable standing as an educator of pupils cultivating business arts and purposing to engage in commercial pursuits.

The defendants, since 1888, have been similarly engaged in giving instruction in business arts, telegraphy, and shorthand in Minneapolis, designating the institution which they maintain as "The Caton College."In 1901 this college was incorporated under that name, and thereafter was conducted practically under the control of its president, Thomas J. Caton, one of the defendants here.In the fall of that year defendants put forth a large number of circulars, at the head of which there were printed in ordinary script type the words, "The Caton College," below which were prominently set forth in much larger and heavier Roman type the words, "Minnesota's School of Business."Underneath, in letters of smaller type, followed the words, "Shorthand, Telegraphy, Typewriting, English and Normal Training."Also among other portions of the advertisement was the following:

"Four of the oldest established business schools of Minneapolis consolidated into one grand business educational institution, and incorporated under the management of the Caton College Company," etc.

It is claimed that this quoted statement was intended to create and convey the false impression that plaintiffs' school was absorbed in the defendants' institution.The defendants also placed upon the building in which their college was conducted a large and prominent sign twenty by forty feet in area, on which were painted in script letters as on the circulars the words "The Caton College," but in still larger and more attractive and prominent form the words "Minnesota's School of Business."

The plaintiffs complain of the use of this sign, and the extensive distribution of the circulars and advertisements somewhat similar in the Minneapolis papers, as an injurious interference with the trade-name and designation which had been previously adopted by themselves.It was alleged in the complaint that the plaintiffs had adopted for its trade-mark or trade name the title "Minnesota School of Business," to which it had acquired vested property rights; but upon the trial plaintiffs rested their claim for an injunction to restrain defendants'...