Stix, Baer & Fuller Dry Goods Co. v. American Piano Co.

• Decision Date: 28 November 1913
• Docket Number: 3953.
• Citation: 211 F. 271
• Parties: STIX, BAER & FULLER DRY GOODS CO. et al. v. AMERICAN PIANO CO. [1]
• Court: U.S. Court of Appeals — Eighth Circuit

211 F. 271

STIX, BAER & FULLER DRY GOODS CO. et al. v. AMERICAN PIANO CO. ^[1]

No. 3953.

United States Court of Appeals, Eighth Circuit.

November 28, 1913

Ernest Knabe, Jr., and William Knabe III were the sons of Ernest Knabe above named, and grandsons of William Knabe, the founder of the business. These two men were taken into the factory in the late 80's, when they were 18 years of age and trained by their father in the business of piano making and the traditions of the family. Ernest Knabe died in 1894. Soon thereafter Ernest, Jr., and William III bought out the interest of the other members of the family in the corporation and became its sole owners and its executive officers, and so continued until the transfer to complainant in 1908. At that time they also became respectively president and vice president of complainant, and continued in that position until they retired from the company in 1911. They then went to Cincinnati, Ohio, organized a corporation under the laws of that state under the name of the Knabe Bros Company, and engaged in the manufacture and sale of pianos.

Soon after the Knabe Bros. Company began business, the appellee filed its bill in the District Court for the Southern District of Ohio, against it and its officers, and prayed for a preliminary injunction restraining them from using the name 'Knabe' either singly or in combination, upon pianos, in advertisements or otherwise, in the piano business. To this bill the defendant filed a cross-bill asking certain relief against the complainant. Upon the hearing the court issued an injunction restraining the Knabe Bros. Company from placing the words 'Knabe Brothers' upon the fall-board or any conspicuous part of any piano manufactured or sold by them, but added the following language: 'But this order shall not prevent Ernest J. Knabe, Jr., and William Knabe III from doing business under their own names or under the name of 'Knabe Bros. Company,' or from stating that the piano of their, or defendant's manufacture, is made by, or under the supervision of Ernest J. Knabe, Jr., and William Knabe III.'

The court further enjoined the complainant in the case from displaying any sign or placard 'containing the statement that the Knabes of the present generation are still making the William Knabe Company piano, or are connected with the American Piano Company, or making any statement from which the inference of such connection may be fairly drawn. Although it may be permitted to state, if it so desire, that a grandson of William Knabe is still connected with the making of the 'Knabe' piano. ' It further enjoined the complainant from 'publishing that Ernest J. Knabe, Jr., or Wm. Knabe III have any connection with the American Piano Company.'

Controversies arose as to the rights of the defendants under this injunction, and upon a subsequent application the court, for the guidance of the parties, made an order requiring defendant to place on the fall-boards of its pianos the following language:

'The Knabe Bros. Company.

'This piano is not an Original 'Knabe' but is made under the supervision of E. J. and Wm. Knabe III, grandsons of the original Wm. Knabe I.'

No appeal has been taken from this order.

The appellant here, the defendant below, Stix, Baer & Fuller Dry Goods Company, conducts a large department store in the City of St. Louis. In 1912, it entered into contract with the Knabe Bros. Company, to sell their pianos, and to make them the leader in that line of trade. In promoting this business it advertised extensively in the papers of St. Louis, and some other trade journals. In December, 1912, the American Piano Company filed the present bill against the above-named appellant, and also against the Knabe Bros. Company and Ernest J. Knabe, Jr., and William Knabe III, setting forth the above facts and charging in particular that the advertisements were calculated to palm off defendant's pianos as complainant's, and also to cause the public to believe that defendants were the successors in business of the Baltimore concerns. Process was served upon the Stix, Baer & Fuller Co. alone, but the Knabe Bros. Company afterwards entered its appearance in the case and participated in its defense. The bill was supplemented by affidavits, and upon this showing complainant moved the trial court for a preliminary injunction. At the hearing counter affidavits were presented on behalf of the defendant. The trial court issued an injunction as prayed in the bill. It is general in its terms, enjoining the defendants 'from making any oral representation or using or permitting to be used in connection with the sale of pianos, in any catalogue, placard, circular, advertisement, or otherwise, descriptive of pianos manufactured by the Knabe Bros. Company, any statement or representation calculated to induce the public to believe that the pianos manufactured by the said defendant, the Knabe Bros. Company, and sold or offered for sale by said the Knabe Bros. Company, or said defendants, Stix, Baer & Fuller Dry Goods Company, are Knabe Pianos. ' The court further found that the advertisements published by the Dry Goods Company were calculated to induce the forbidden belief on the part of the public and enjoined the defendants 'from again or further making, using or issuing the said advertisements in the same or substantially the same form. ' The present appeal is brought to review that order.

Gilbert Bettman, of Cincinnati, Ohio, and William S. Bedal, of St. Louis, Mo. (Edward C. Eliot, of St. Louis, Mo., on the brief), for appellants.

Frederick N. Judson and J. Porter Henry, both of St. Louis, Mo. (John F. Green, of St. Louis, Mo., and Masten & Nichols, of New York City, on the brief), for appellee.

Before HOOK and SMITH, Circuit Judges, and AMIDON, District Judge.

AMIDON District Judge (after stating the facts as above).

This case is closely parallel with the Hall Safe Cases, reported in 208 U.S. 267, 28 Sup.Ct. 288, 52 L.Ed. 481, and 208 U.S. 554, 28 Sup.Ct. 350, 52 L.Ed. 616. There is this distinction: The present case concerns pianos, an article used in the fine art of music, and hence the personal genius of the maker would be a larger element than manufacturing and business organization in producing trade reputation. In the safe business the latter elements would be controlling. Here, as in the Hall Cases, there is nothing in the connection of the individual defendants with the Wm. Knabe & Co. Manufacturing Company or its sale to complainant, which restricts or estops them from using their names in the piano business.

Ernest J. Knabe, Jr., and William Knabe III have a peculiar right to use the name 'Knabe' in their trade. They are not pirates. They have not come into the piano business from some other field for the purpose of stealing a good name. They were bred and trained to the business and have known no other calling throughout their lives. They are the only living descendants of the man who made the Knabe piano famous, who now bear the name Knabe. They were associated with those founders in the production of the piano, and acquired their skill and traditions. They have the right to use their name in trade and state these facts. So said the Supreme Court in the Hall Safe Cases:

'With such explanation the defendants may use the Hall's name, and, if it likes, may say that they are sons of the first Hall, and brought up in their business by him, and otherwise may state the facts.'

It is now settled beyond controversy that a family surname is incapable of exclusive appropriation in trade. The right of every man to use his own name in his business was declared in the law before the modern doctrine of unfair trade competition had arisen. It is part of the law of trade-mark. The subject may therefore be properly approached from that side. If, however, the name has previously become well known in trade, the second comer uses it subject to three important restrictions: (1) He may not affirmatively do anything to cause the public to believe that his article is made by the first manufacturer. (2) He must exercise reasonable care to prevent the public from so believing. (3) He must exercise reasonable care to prevent the public from believing that he is the successor in business of the first manufacturer. This duty to warn, however, must not be pressed so far as to make it impracticable for the second comer to use his name in trade. Otherwise we destroy under the law of unfair trade competition the very right which we have saved under the law of trade-mark.

As to marks upon individual instruments, the inscription prescribed by the court in Ohio granted complainant the full measure of relief to which it is entitled. In fact, the court went further than some courts have been willing to go. L. E Waterman & Co. v. Modern Pen Co., 197 F. 534, 117 C.C.A. 30. This case decides that the word 'original,' in a similar inscription, tended 'to characterize the defendant's product as inferior to that of the complainant, and is unduly prejudicial to it,' and modified the decree of the trial court so as to correct this impression. If the word 'original' in the sentence, 'This piano is not an original Knabe,' means that the instrument is not made by the American Piano Company, or any of its predecessors in business, it does not go beyond the protection to which complainant is entitled. But the word is susceptible of another interpretation. It may mean that defendants' piano does not employ the qualities of the piano which had become famous under the name 'Knabe.' Given that meaning it is highly prejudicial to the defendants' rights, for it must be borne in mind that no part of the Knabe piano is covered by a patent. The defendants have the right to make that instrument, and to...