The State v. Bishop

• Decision Date: 21 May 1895
• Citation: 31 S.W. 9,128 Mo. 373
• Parties: The State v. Bishop, Appellant
• Court: Missouri Supreme Court

31 S.W. 9

128 Mo. 373

The State v. Bishop, Appellant

Supreme Court of Missouri, Second Division

May 21, 1895

Appeal from St. Louis Court of Criminal Correction. -- Hon. J. R Claiborne, Judge.

Reversed and remanded.

Eugene McQuillin for appellant.

(1) The label of the Cigar Makers' International Union of America is not a trade-mark, and is, therefore, not entitled to protection under the laws of Missouri relating to the registration and piracy of trade-marks. McVey v Brendel, 144 Pa. St. 235; Weener v. Brayton, 152 Mass. 101; Schneider v. Williams, 44 N.J.Eq 391; Carson v. Ury, 39 F. 777; Trash Fish Co. v. Wooster, 28 Mo.App. 408; Tobacco Co. v. Tobacco Co., 104 Mo. 53. Because: First. The cigars are not "manufactured or prepared" by the union as an organization. Laws of Mo. 1893, p. 260, sec. 1. a. The union is not a manufacturer or dealer in cigars, or engaged in trade or commerce of any kind; and the right to a trade-mark can not exist as a mere abstact right, independent of and disconnected from, a business. It is not property as distinct from, but only as incident to, the business. Union v. Conhaim, 40 Minn. 243; Mfg. Co. v. Merkel, 1 Mo.App. 305; Skinner v. Oakes, 10 Mo.App. 45. b. There is and can be no trade-mark in labor, either at common law or under the Missouri statute. Second. It does not point out the source and origin of the cigars, the place of manufacture, the name of the manufacturer or dealer, nor the name of the maker. Filley v. Fassett, 44 Mo. 168; Tobacco Co. v. Tobacco Co., 104 Mo. 53. Third. Our statute does not protect labels, etc., as such, but only such names, terms, devices, etc., as may be adjudged to be trade-marks. It is designed to protect "trade-marks" as contradistinguished from mere names, terms, devices and labels. Laws of Mo. 1893, p. 260, sec. 1; Alden v. Gross, 25 Mo.App. 123; Trask Fish Co. v. Wooster, 28 Mo.App. 408; Snodgrass v. Welle, 11 Mo.App. 590. Fourth. The right to use the label in question is not a property right, without which there can be no trade-mark. a. It is a mere personal privilege contingent upon membership in the union. b. Its object is simply to indicate membership in the union; when membership ceases, the personal privilege, the right to use the label, ceases. Union v. Conhaim, 40 Minn. 243; Fifth. There is no exclusive use in the label. Rogers v. Taintor, 97 Mass. 291; Chadwick v. Covell, 151 Mass. 190; Weener v. Brayton, 152 Mass. 101. (2) The act of 1893 is illegal and void and against the public policy of the state of Missouri, productive of oppression, illegal conspiracies, combinations and boycotts. McVey v. Brendel, 144 Pa. St. 235. (3) The act of 1893 is unconstitutional, is class legislation, discriminative against citizens of Missouri, and violative of that clause of section 53, article 4, of the state constitution, which inhibits the legislature from "granting to any corporation, association or individual any special or exclusive right, privilege or immunity." (4) The Cigar Makers' International Union of America, not being composed exclusively of citizens of Missouri, can not, under our laws relating to the registration of trade-marks, acquire any rights in said label as against citizens of Missouri. State v. Hagen, 33 N.W. 223 (Ind.) . (5) The information is insufficient because it fails to aver exclusive ownership of the label in question in the organization known as the Cigar Makers' International Union of America. United States v. Braum, 39 F. 775. (6) The state failed to prove that at the date of the sale defendant sold the box of cigars, containing a counterfeit label, "knowing the same to be imitation or counterfeit," as provided by the express language of the statute. Laws of Mo. 1893, p. 261, sec. 4. (7) The Cigars Makers' International Union of America having no property rights, either individually or collectively, in the cigars made by its members to which its label is affixed, a conviction can not be sustained against one who sells cigars to which a counterfeit label is attached. Laws of Mo. 1893, p. 261, sec. 4.

R. F. Walker, Attorney General, for the state.

(1) The statute makes the unauthorized use of any label which has been registered by the secretary of state a misdemeanor. Laws of Mo. 1893, p. 260. The facts of this case fall within the provisions of the statute. People v. Fisher, 57 Hun, 552; State v. Hagen, 33 N.E. 223; Cohn v. People, 23 L. R. A. 821. A term or a device may be protected as a trade-mark by an express statute. Faulkenburg v. Lucy, 35 Cal. 52; see also, Puerring v. Compton, 6 Ohio, C. C. 483. (2) The statute is neither contrary to public policy nor class legislation. Cohn v. People (Ill.) 23 L. R. A. 821. (3) The cases cited by appellant from Minnesota, Massachusetts and Pennsylvania are rulings made by their courts of last resort in the absence of any statutes making it a penalty to use the label in question without authority, and hence they can have no application to the case at bar. We refer to Cigars Makers v. Conhaim, 40 Minn. 243; McVey v. Brendel, 144 Pa. St. 235; Weener v. Brayton, 152 Mass. 101. (4) It was not necessary, under the statute upon which this prosecution was based, to aver exclusive ownership in the label by the cigar makers' union. Laws, Mo. 1893, p. 260.

OPINION

Burgess, J.

Defendant was convicted and fined $ 100 in the St. Louis court of criminal correction under an information filed against him in said court by the assistant prosecuting attorney, charging him with having sold a box of cigars to one David Kreyling, on June 26, 1894, upon which there was a counterfeit label of the Cigar Makers' International Union of America, contrary to, and in violation of, an act of the general assembly of the state of Missouri, entitled an act to repeal sections 8569, 8570, 8571, 8572, 8573, 8574, 8575, 8576 and 8577 of the Revised Statutes of 1889, entitled "Trade Marks" and to enact eight new sections in lieu thereof (Laws, 1893, p. 260). The case is in this court on defendant's appeal.

Sections 1 and 4 of the act under consideration are as follows:

"Section 1. (Sec. 8569). Any person may adopt a trade-mark -- to be recorded. -- If any mechanic, manufacturer, association or union of workingmen, or other person, shall wish to adopt any particular name, term, design or device as his or their trade-mark, to designate, make known or distinguish any goods, wares or merchandise by him or them manufactured or prepared, he or they may write out a description of such name, term, design or device, describing the same accurately, and sign and acknowledge the same before some officer competent to take the acknowledgment of deeds, and file the same for record in the office of the secretary of state, by leaving two copies, counterparts or facsimiles thereof, with the secretary of state; said secretary shall deliver to such mechanic, manufacturer, association or union of workingmen, or other person, so filing the same, a duly attested certificate of the record of the same, for which he shall receive a fee of one dollar; such certificate shall, in all suits and prosecutions under this act, be sufficient proof of the adoption of such label, trade-mark or form of advertisement, and of the right of such mechanic, manufacturer, association or union of workingmen, or other person, to adopt the same. No label, trade-mark or form of advertisement shall be recorded that in any way resembles or would probably be mistaken for a label or trade-mark already of record."

"Sec. 4. (Sec. 8572). Penalty for keeping or selling goods with false brand. -- Any person, persons, association or union of workingmen, or body corporate or politic, who shall vend or keep for sale any goods, wares, merchandise, compounds or preparations upon which or in connection with which any forged, imitation or counterfeit label, brand, stamp, wrapper, imprint, engraving, bottle or trade-mark shall be placed, affixed or used, and intended to represent the said goods, wares, implements, merchandise, compounds or preparations, as the genuine goods, wares, implements, merchandise, compound or preparation of any other person or persons, association or union of workingmen, or body corporate or politic, knowing the same to be imitation or counterfeit, shall be deemed guilty of a misdemeanor, and, upon conviction thereof, shall be punished by a fine of not less than $ 100 nor more than $ 5,000, or by imprisonment in the county jail not less than one month nor more than twelve months, or both, and shall also be liable in a civil action to the person or persons, association or union of workingmen, or body corporate or politic, whose goods, wares, implements, merchandise, compounds or preparations, is imitated or counterfeited, or whose label, stamp, wrapper, engraving, imprint, bottle, or trade-mark is imitated, forged or counterfeited, placed, affixed or used, for all damages such person or persons, associations or union of workingmen, or body corporate or politic, may or shall sustain, both by virtue of the loss of profits and the damage done to the reputation of the said genuine article, goods, wares, implements, merchandise, compound or preparation, by reason of any of the acts in any section of this chapter mentioned, and may be restrained or enjoined by any court of competent jurisdiction from doing or performing any of the acts herein mentioned."

The only objection to the information is that it does not aver exclusive ownership of the label in question in the cigar maker's union.

Defendant was a dealer in cigars in the city of St. Louis and on the twenty-sixth day of June sold to one David Kreyling a box of cigars upon which there was a counterfeit label of the Cigar Makers' International Union of America, which is as follows, to wit:

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