Viano v. Baccigalupo

• Decision Date: 21 March 1903
• Citation: 183 Mass. 160,67 N.E. 641
• Parties: VIANO et al. v. BACCIGALUPO.
• Court: United States State Supreme Judicial Court of Massachusetts Supreme Court

183 Mass. 160

67 N.E. 641

VIANO et al. v. BACCIGALUPO.

Supreme Judicial Court of Massachusetts, Suffolk.

March 21, 1903

COUNSEL

O. Mitchell, for plaintiffs.

G. J Tufts, for defendant.

OPINION

LORING J.

When the defendant entered upon the business of roasting peanuts he found the plaintiff Viano and one Cavagnaro carrying on the same business, as partners, at 94 Fulton street, under the name of the 'Boston Peanut Roasting Company'; and he found that the plaintiff Viano, either with Cavagnaro or with the plaintiff Roman as a partner, had carried on that business for five years under that name and at the same place. It was under these circumstances that the defendant entering upon the business of roasting peanuts for the first time, hired premises on the same street (Fulton street), and adopted as a business name the identical name used by the plaintiffs, with the sole exception that he inserted the word 'Trade' between 'Boston' and 'Peanut.' The defendant justifies this on the ground that 'Boston,' being a geographical name, is open to the public, and that he had the right to describe his particular business as a 'Peanut Roasting Company.'

The argument is an old one, and is so completely and satisfactorily disposed of by what was said by this court in American Waltham Watch Co. v. United States Watch Co., 173 Mass. 85, 87, 53 N.E. 141, 43 L. R. A. 826, 73 Am. St. Rep. 263, that it is not necessary to go over the ground a second time. In that case Holmes, J., speaking for the court, said: 'It is true that a man cannot appropriate a geographical name, but neither can he a color, or any part of the English language, or even a proper name, to the exclusion of others whose names are like his. Yet a color, in connection with a sufficiently complex combination of other things, may be recognized as saying so circumstantially that the defendant's goods are the plaintiff's as to pass the injunction line. New England Awl & Needle Co. v. Marlborough Awl & Needle Co., 168 Mass. 154, 156, 46 N.E. 386, 60 Am. St. Rep. 377. So, although the plaintiff has no copyright on the dictionary, or any part of it, he can exclude a defendant from a part of the free field of the English language, even from the mere use of generic words, unqualified and unexplained, when they would mislead the plaintiff's customers to another shop. Reddaway v. Banham [1896] A. C. 199. So the name of a person may become so associated with his goods that one of the same name, coming into the business later, will not be allowed to use even his own name without distinguishing his wares. Brinsmead v. Brinsmead, 13 Times L. R. 3; Reddaway v. Banham [1896] A. C. 199, 210. See Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 204, 16 S.Ct. 1002, 41 L.Ed. 118; Allegretti Chocolate Cream Co. v. Keller (C. C.) 85 F. 643. And so, we doubt not, may a geographical name acquire a similar association with a similar effect. Montgomery v. Thompson [1891] A. C. 217.' The smae principle was later stated by the same judge in Flagg Manuf. Co. v. Holway, 178 Mass. 83, 59 N.E. 667, in which it was held that, although the defendant had a right to make zithers in imitation of the plaintiff's, since the plaintiff's were not patented, yet he was not at liberty to palm off his goods for the plaintiff's. After stating that 'the instrument sold is made as it is, partly at least, because of a supposed or established desire of the public for instruments in that form,' the learned judge adds: 'The only thing he has not the right to steal is the good will attaching to the plaintiff's personality--the benefit of the public's desire to have goods made by the plaintiff.' In addition to these cases, and the cases cited in them, see Russia Cement Co. v. Le Page, 167 Mass. 222, 45 N.E. 763; Samuels v. Spitzer, 177 Mass. 226, 58 N.E. 693. In the case at bar the defendant has a right to carry on the business of roasting peanuts for the trade, and to carry it on in Fulton street, in Boston, and to advertise that he is doing so. But he has no right, in making those advertisements, to steal the good will attaching to the plaintiffs' personality--the benefit of the public's desire to have their peanuts roasted by the plaintiffs. There can be no practical difficulty in giving to both the plaintiffs and the defendant their respective rights.

The defendant particularly relies on the case of Aerators Limited, v. Tollitt [1902] 2 Ch. 319. That was a case where the plaintiff, being established as a joint-stock company to sell sparklets, sought to enjoin the defendant from registering a company under the name of Automatic Aerators Patents, Limited, on the ground that such a name so closely resembled the plaintiff's name as to be calculated to deceive, within section 20 of the companies act of 1862. It appeared that 'sparklets' were a small apparatus containing carbonic acid gas, by means of which the contents of bottles are aerated. One of the merits claimed for them was their portability, and their applicability to a small quantity of liquid. The patents which it was proposed should be acquired by the defendant company were for the aeration of liquids contained in tanks or cisterns of large size. It is apparent, therefore, that in Aerators, Limited, v. Tollitt the plaintiff relied on the word 'Aerators' solely and by itself. In that case the business to be carried on by the plaintiff and defendant was not the same, and there was no question of confusion from the defendant having established its place of...