the court ought to have done as has been done in the
federal courts, namely, it should have instructed the
assignee of the name "The Fadettes" how to use that
name in its advertising matter so as not to deceive the
public into a belief that the orchestra was still under the
personal direction of its former manager and director.
To hold that the assignment was void was to put a
premium on dishonesty. The court erred in neglecting
its duty to instruct the assignee how to use the name —
the right to use which he had bought and paid for —
as not to work a fraud upon the public; its power and
duty in this respect have been judicially defined.^
One who has assigned the right to use his name in spe-
cific trade will be enjoined from using his own name in
that trade, in competition with his assignee, for such
competition would be unfair and fraudulent.* Promoters
^ Christy v. Murphy, 12 How. Pr. 77; Cox, 164; Seb. 137.
2 Messer v. The Fadettes, 168 Mass. 140.
3Baker & Co. v. Baker, 77 Fed. Rep. 181; Tarrant c^ Co. v. Hofif,
76 Fed. Rep. 959; s. c, 71 Fed. Rep. 163; Walter Baker & Co. v. Sand-
ers, 80 Fed. Rep. 889-894; City of Carlsbad v. Schultz, 78 Fed. Rep.
469-472. In the last named case Judge Coxe went so far as to desig-n
a label for the defendant's use, which is embodied in fac-simile in
his opinion.
^Meyers v. Kalamazoo Buggy Co., 54 Mich. 215; Thj'nne v. Shove,
110 LAW OF UNFAIR TRADE. [§54
of a corporation whose names have been used as a part
of the corporate name cannot be permitted to use their
names in connection with and as the name of a rival
company. Such conduct will be enjoined because of " the
injury to the party ag^grieved, and the imposition upon
the public, by causing them to believe that the goods of
one man or firm are the production of another."^
The care with which equity protects the names of cor-
porations is well recognized; the reason being found in
the fact that its name is a vital essential of a corpora-
tion. ^
In conclusion, the general rule underlying this class of
cases has been aptly stated as follows: "All these cases
in equity depend upon an appropriation by one person
of the reputation of another, sometimes actually fraudu-
lent, and sometimes only constructively so."^
§ 54. Corporate names. — Upon this subject the courts
are hopelessly confused in their phraseology. There can
be no trade-mark right in a corporate name, for the con-
clusive reason that it is not, as such, applied to the sub-
ject-matter of commerce. In an early case Judge Deady,
of Oregon, said, "The corporate name of a corporation is
a trade-mark from the necessity of the thing,""* and this
very phrase, with other dicta, has been quoted with ap-
L. R. (1890) 45 Ch. D. 577; Wood v. Sands, Seb. 467; Russia Cement
Co. V. Le Page, 147 Mass. 206; Kidd v. Johnson, 100 U. S. 617
Spieker v. Lash, 102 Cal. 38-45; Hoxie v. Chaney, 143 Mass. 592
Skinner v. Oakes, 10 Mo. App. 45; Grow v. Seligman, 47 Mich. 647
Churton v. Douglas, Johns. 174; 28 L. J. Ch. 841; 5 Jur. N. S. 887
33 L. T. 57; 7 W. R. 365. And where the assignor has acquiesced
in the opening of mail addressed to him, by his assignee, he will be
enjoined from receiving and opening such mail addressed to him.
Dr. David Kennedy Corp. v. Kennedy, 55 N. Y. Supp. 917.
1 Holmes, Booth & Haydens v. The Holmes, Booth & Atwood Mfg.
Co., 37 Conn. 278; 9 Am. Rep. 324; Seb. 340.
^Investor Pub. Co. v. Dobinson, 72 Fed. Rep. 603; s. c, 82 Fed.
Rep. 56.
'Lowell, J., in Wm. Rogers Mfg. Co. v. Rogers & Spurr Mfg. Co.,
11 Fed. Rep. 495-499.
''Newby v. Railroad Co., Deady, 609. "The name of a corporation
has been said to be the 'knot of its combination, ' without which it
cannot perform its corporate functions." Wallace, J., in Goodyear
Rubber Co. v. Goodyear's Rubber Mfg. Co., 21 Fed. Rep. 276.
§54] WHAT CONSTITUTES A VALID TRADE-MARK. Ill
proval in a more recent case.^ The author has in a for-
mer section collected the judicial detinitions of trade-
mark, and it is a scientific impossibility to bring Judge
Deady's dictum within the scope of either of those defi-
nitions, or to extend the definitions to include that dic-
tum. Justice Clifford's definition may be referred to as
making the author's position clearer.^ It is entirely erro-
neous to treat a corporate name as being a trade-mark.
This error has arisen from the unfamiliarity of the
courts with the essential requirements of technical trade-
marks, and the fact that equitable relief had to be admin-
istered in cases where the courts had no precedents at
hand except in the trade-mark decisions, which afforded
similar reasoning to support their conclusions.
The reason why equity intervenes to protect corporate
names from imitation is that they are essential parts of
the being of corporations, or, as expressed by the supreme
court of Missouri, its name is a necessary element of the
existence of a corporation.^ The courts, therefore, will
protect a corporation in the use of its name in the absence
of any express statutory enactment.^ The exercise of
this power is an enforcement of the law of unfair compe-
tition as shown in the following language of Bradley, J. :
"Pair competition in business is legitimate, and pro-
motes the public good; but an unfair appropriation of
another's business, by using his name or trade-mark, or
an imitation thereof calculated to deceive the public, or
in any other way, is justly punishable by damages, and
will be enjoined by a court of equity."^ This dictum is
contained in the opinion in the Celluloid case, where the
corporate name happened to be the trade-mark applied
by the corporation to merchandise manufactured and
'Investor Pub. Co. v. Dobinson, 72 Fed. Rep. 603-606.
^McLean v, Fleming, 96 U. S. 245-254.
s State V. McGrath, 92 Mo. 357.
* Farmers' Loan »& Trust Co. v. Farmers' Loan & Trust Co. of
Kansas, 1 N. Y. Supp. 44; William Rogers Mfg. Co. v. Rogers
& Spurr Mfg. Co., 11 Fed. Rep. 495; Celluloid Mfg. Co. v. Cellonite
Mfg. Co., 32 Fed. Rep. 94; Investor Pub. Co. v. Dobinson, 72 Fed.
Rep. 603.
^Celluloid Mfg. Co. v. Cellonite Mfg. Co., 32 Fed. Rep. 94.
112 LAW OF UNFAIR TRADE. [§54
sold by it. It is a self-evident proposition that a generic
word embodied in a corporate name is not entitled to pro-
tection in equity. The rule was thus stated by Mr.
Justice Field, in delivering the opinion of the United
States supreme court in a case where the Goodyear Rub-
ber Co. sought to restrain another corporation from using
the name "Goodyear's Rubber Manufacturing Co." He
said: "The name of 'Goodyear Rubber Company' is
not one capable of exclusive appropriation. 'Goodyear
Rubber' are terms descriptive of well-known classes of
goods produced by the process known as Goodyear's in-
vention. Names which are thus descriptive of a class of
goods cannot be exclusively appropriated by any one.
The addition of the word 'Company' only indicates that
parties have formed an association or partnership to deal
in such goods, either to produce or to sell them. Thus
parties united to produce or sell wine, or to raise cotton
or grain, might style themselves wine company, cotton
company, or grain company; but by such description
they would in no respect impair the equal right of others
engaged in similar business to use similar designations,
for the obvious reason that all persons have a right to
deal in such articles and to publish the fact to the world.
Names of such articles cannot be adopted as trade-
marks, and be thereby appropriated to the exclusive
right of any one, nor will the incorporation of a com-
pany in the name of an article of commerce, without
other specification, create any exclusive right to the use
of the name."^
'Mr. Justice Field, in Goodyear Co. v. Goodyear Rubber Co., 128
U. S. 598-602; reversing S. c, 21 Fed. Rep. 276. Tlius in an action
by one fire insurance company to restrain another from the use of the
word " Continental " in its corporate name, the court said: "The
distinguishing- feature of the names of the two incorporated compa-
nies is the word 'Continental.' It is the use of this word by the
defendant which the complainant seeks to enjoin. It is the conten-
tion of the complainant that, by reason of the long-continued use of
this word by it, and the fact that it has built up a large and lucra-
tive business under this distinguishing name, it has secured a prop-
erty right in said word 'Continental,' in connection with its incor-
porated name, and it is entitled to the exclusive use of the word 'Con-
tinental,' in connection with its insurance business, in the sections of
§54] WHAT CONSTITUTES A VALID TRADE-MARK. ll;;i
A foreigri corporation cannot, by application to a court in
the state in which a new corporation is bein^ organized,
secure an injunction restraining the formation of the new
corporation under the same corporate name as that of the
plaintiff. But in dismissing a bill brought for such a pur-
pose, Judge Gresham said: "I do not say what may be
done if the defendants succeed in creating their corpora-
tion bearing the complainant's name, and a suit shall be
brought by the complainant to prevent individuals claim-
ing to be officers or managers of such corporation from
interfering with the complainant's business."^
In conclusion, there is no practical difference, so far
as equitable rights and remedies are concerned, between
corporate names and the name of a copartnership or an
individual. As said by Mr. Justice Bradley, on circuit,
in dealing with the names of corporations plaintiff and
defendant, "the fact that both are corporate names is of
no consequence in this connection. They are the busi-
ness names by which the parties are known, and are to
be dealt with precisely as if they were the names of pri-
vate firms or partnerships. "-
the country where it is engaged in such business. Upon the showing
made by the complainant, it might be entitled to the relief sought,
were the distinguishing word of its corporate name such a one as
could be exclusively appropriated in the designation or conduct of
a business by a person, firm of corporation. The word 'continental '
is in general and prevalent use, and means pertaining to or charac-
teristic of a continent. As applied to or designating an insurance
company, it would be descriptive of the bounds within which such
company carried on its business. The scope of the business carried
on by many insurance companies is continental in extent. A term
which can be truthfully used by many in the description of a business
or occupation cannot be exclusively appropriated by any one of
them. The word 'continental' is a generic term, and it is not the
policy of the law to permit the exclusive appropriation of words or
terms which are generic; that is, which pertain to a class of related
things, and which are of general application. The right to use
such words should remain vested in the public." Meek, J., in Con-
tinental Ins. Co. V. Continental Fire Ass'n, 96 Fed. Rep. 846-848;
affirmed, 101 Fed. Rep. 255. To the same effect see Goodyear Rub-
ber Co. V. Day, 22 Fed. Rep. 44.
1 Lehigh Valley Coal Co. v. Hamblen, 23 Fed. Rep. 225, 226.
2 Celluloid Mfg. Co. v. Cellonite Mfg. Co., 32 Fed. Rep. 94-97.
8
114 LAW OF UNFAIR TRADE. [§54
A corporation cannot, by securing- a license from or em-
ploying a person bearing the desired proper name, so use
that name as part of its corporate name as to maintain
an unfair competition with an older business employing-
the name.^
1 Garrett v. T. H. Garrett & Co., 78 Fed. Rep. 472.
CHAPTER IV.
TRADE-MARK RIGHTS IN TITLES OF BOOKS
AND PERIODICALS.
§ 56. Trade-mark in title of a book. — Upon this sub-
ject there has been less harmony of opinion tlian would
be expected. It has been said by the court of appeals of
Maryland that "A publisher has either in the title of his
work or in the application of his name to the work, or in
the particular marks which desig"nate it, a species of
property similar to that which a trader has in his trade-
mark. "^
Mr. Browne in his learned treatise on trade-marks says:
"Can printed books be protected by trade-marks? Yes,
as mere merchandise; no, as literary productions."^ This
is true, in so far as it asserts that marks or devices may
be used to distinguish the product of the publisher or
book dealer.'^ He says further: "There seems to be no
sufficient reason why the title of a book may not be
deemed a valid trade-mark,"* and thereby expresses the
error contained in the careless dictum of the Mary-
land court quoted above. The correct view is stated in
clear terms by Mr. Rowland Cox, in his note to Clemens v.
Bedford:^ "It is necessarily true that the name of a book
is, under all circumstances, a descriptive term which
means a particular thing. The book is created and given
a name, and the name is added to the language as a term
of description. If a copyright is taken, the owner of the
copyright enjoys, as long as the privilege continues, the
' Robertson v. Berry, 50 Md. 591; Price & Steuart, 153.
-Browne, Trade-marks, sec. 116.
^Mr. Browne cites six cases in support of this proposition, neither
one of which is applicable. All related to property right in the title
of a periodical publication.
* Browne, Trade-marks, sec. 118.
*14 Fed. Rep. 728; Cox, Manual, 685.
115
116 LAW OF UNFAIR TRADE. [ § 55
exclusive right to the use of the name; and when the
privilege expires, the name, always a descriptive term,
becomes publici juris. If the book is not copyrighted, the
literary matter becomes piiblici juris as soon as it is pub-
lished, and the name of the literary matter goes to the
public as an incident of that which it describes. If there
is language in some of the cases which seems to indicate
that the name of a book can be protected as a trade mark,
reflection will demonstrate that it cannot be made good.
The names of periodicals and newspapers, as distin-
guished from books, are protected as in the nature of
trade-marks; and in many instances the publications in
connection with which the names have been used were
proper subjects of copyright. In some cases they con-
tained, or might have contained, articles in connection
with which the statutory privilege had been acquired.
But the name which has been protected has never been
simply the name of a book, but always that of a con-
stantly changing series. Thus the term 'Old Sleuth
Library' was distinctly arbitrary, and never the name of
a particular book or literary production, and for this
reason it was in an accurate sense a trade-mark, and
must continue to be as long as the publication was con-
tinued. But if the publication of the periodical were dis-
continued for a period of years, the name would cease
to be arbitrary and take its place in literature as indicat-
ing a definite collection of articles, pictures, etc., and as
soon as it acquired that settled meaning, it would, in the
absence of copj^right, become publici juris."
It is now established law that there is no trade-mark
right in the title of a book. Judge Wallace stated the
rule very lucidly when he said: "Neither the author or
proprietor of a literary work has any property in its
name. It is a term of description, which serves to iden-
tify the work; but any other person can with impunity
adopt it, and apply it to any other book, or to any trade
commodity, provided he does not use it as a false token
to induce the public to believe that the thing to which it
is applied is the identical thing which it originally des-
§ 56] BOOK TITLES AS TRADE-MARKS. 117
ignated. If literary property could be protected upon
the theory that the name by which it is christened is
equivalent to a trade-mark, there would be no necessity
for copyri<cht laws."^ This doctrine is fully sustained
by the later cases. -
§66. Trade-mark in title of periodical. — In 1859
Vice-Chancellor Stuart enjoined a defendant who had
beg^un the publication of "The Penny Bell's Life and
Sporting News" from publishing any newspaper under
that name, or any other name in which the words "Bell's
Life "should occur, the application being made by the
proprietors of "Bell's Life in London." In the course
of his opinion the vice-chancellor said: "This is an ap-
plication in support of the right to property."-' Thus
was distinctly recognized the right of trade-mark in the
title of a periodical publication. Long prior to this
time, however, equity had suppressed this species of
piracy between publishers, the first reported case being
that of Hogg v. Kirby, where the complainant was the
proprietor of a magazine called "The Wonderful Maga-
zine" and the defendant's publication bore substantially
the same name with the addition of the words "New
Series, Improved." The injunction was granted by Lord
Eldon.''
In the United States Chancellor Sandford was the first
to recognize this right, in 1825, although he refused
to enjoin the use of the title "The New York National
Advocate" on the application of the proprietor of "The
National Advocate," both being applied to newspapers
1 Black V, Ehrich, 44 Fed. Rep. 793, 794.
"Merriam v. Holloway Pub. Co., 43 P"'ed. Rep. 450 (opinion by Mr.
Justice Miller on circuit); Merriam v. Famous Shoe and Clothing
Co., 47 Fed. Rep. 410 (opinion by Judge Thayer); Merriam v. Texas
Siftings Pub. Co., 49 Fed. Rep. 944 (opinion by Judge Shipman).
•■'Clement v. Maddick, 1 Giff. 98; 5 Jur. N. S. 592; 33 L. T. 117;
Seb. 174.
*Hogg V. Kirby, 8 Ves. 215; Seb. 10. Lord Eldon also restrained
a defendant from the publication of a court calendar which he was
issuing as a continuation of the complainant's work. Longman v.
Winchester, 16 Ves. 269; Seb. 15.
118 LAW OF UNFAIR TRADE. [§56
published in the city of New York, holding the names to
be substantially different; and this notwithstanding the
fact that the defendant had been the editor for the pub-
lisher who had sold "The National Advocate" to the
complainant. The chancellor did not expressly hold the
title of the paper to be a trade-mark, but treated it as
part of the good- will of the printing establishment.^ In-
deed he seems to have treated the subject solely from
the standpoint of unfair competition, ignoring the ques-
tion of technical property right, as did Chancellor Wal-
v^^orth in 1840 in refusing to enjoin the use of the title
"New Era " on the application of complainants who pub-
lished the "Democratic Republican New Era," saying,
inter alia, "There could be very little excuse for the edi-
tor of a new paper who should adopt the precise name
and dress of an old established paper, which would be
likely to interfere with the good-will of the latter by
actually deceiving its patrons."^
In 1867, however, a clear cut opinion of the court of
common pleas of the city of New York recognized the
property right in unmistakable terms. The plaintiffs,
proprietors of the "National Police Gazette," applied
for an injunction to restrain the publication of the
"United States Police Gazette" by the defendants.
Brady, J., said: "The title of a newspaper may be a
purely original one, and the proprietor for that reason
entitled to its exclusive use. He may create a word, or
combination of words, for the particular designation of
his paper, and in that way acquire an exclusive right to
the use of the name employed. He may combine, as the
plaintiffs have, well-known English words in common use.
. . . It also appears that the plaintiffs' paper has been
published weekly under that name for many years, . . .
that its circulation is large and valuable, and that it
was the only police gazette, eo nomine, published in the
United States at the time of the publication of the paper
complained of by them. . . . From these facts it is
iSnowdenv. Noah, Hopkins, Ch. R. 347; Cox, 1; Seb. 41.
2 Bell V. Locke, 8 Paige, 75; Cox, 11; Seb. 65.
§56] BOOK TITLES AS TRADE-MARKS. 119
apparent that the plaintiffs have acquired a right con-
nected with the publication of a newspaper called the
National Police Gazette, which must be preserved against
any fraud attempted to be perpetrated against them."^
Subsequently the superior court of New York City,
per Monell, J., said: "I do not understand that the pro-
tection which the law affords to 'trade-marks,' even as-
suming the name of a newspaper to be a trade-mark,
goes so far as is claimed in this case. The protection
which has been granted to that species of property has
never, I believe, been extended over anything that was
the subject of a patent or a copyright, but is confined
to appropriations of names designating some particular
manufacture or business. There can be no such prop-
erty in a newspaper except, perhaps, in the name or
title of the paper, which is the only continuing portion
of it. The contents of each issue are the composition
or creation of the editor or contributors, are varied each
day, and when given to the public all literary proprietor-
ship in them is lost. And the law of trade-marks, like
the law of copyright, cannot be applied to a work of so
fluctuating and fugitive a character. "^
As late as 1881 Sir George Jessel, master of the rolls,
said: "It does not appear to me that there was any in-
vention in the combination of 'Splendid Misery,' any
more than there would be in the words 'Miserable Sin-
ner,' or anything of that kind. The adoption of the
words as the title of a novel might make a trade-mark."'^
In 1898 the appellate division of the supreme court of
New York said it could not follow the reasoning of coun-
sel "when he contends that the public, by its short
way of referring to the 'Commercial Advertiser,' has
given the plaintiff some kind of an undefined trade-mark
iMatsell V. Flanag-an, 2 Abb. Pr. N. S. 459; Cox, 367; Seb. 270.
2 Stephens v. De Couto, 7 Robertson, 343; 4 Abb. Pr. N. S. 47; Cox,
442; Seb. 295, The learned court cites an opinion holding that a
newspaper or price current cannot be copyrighted because the term
science cannot, with any propriety, be applied to a work of so fluc-
tuating and fugitive a form. Clayton v. Stone, 2 Paine, 382-392.
'Dicks V. Yates, L. R. 18 Ch. D. 76-88.
120 LAW OF UNFAIR TRADE. [§56
in this popular form of speech, — a doctrine which would
equally apply to a 'sobriquet' or diminutive; that its
unauthorized use by the defendant, whether likely to in-
jure the plaintiff or not, should be absolutely enjoined as
an invasion of a strict property right. "^
While, on the other hand, the United States circuit
court for the district of New Jersey had held in 1894
that the words "Social Register," applied by a publisher
to a directory of a certain locality, containing names of
persons resident therein, selected with reference to the
personal and social standing of such persons, "become a
trade-mark, and are entitled to protection as such."^
From our cursory view of the foregoing decisions and
dicta it is plainly manifest that the right to technical
trade-mark in the title of a periodical has been affirmed
and denied with some show of reason upon each side.
The subject has been ably discussed by Mr. Browne, who
concludes that the name so used is a technical trade-
mark.^ In that conclusion we must coincide, and it is
well sustained by the reasoning of Mr. Rowland Cox,
which we have before quoted.* But the fact is patent
that it is still a mooted question, and that the solicitor
attempting to restrain piracy of this kind would better
frame his bill upon unfair competition and not upon
technical trade-mark. The New York supreme court, in
its decision above referred to, says that "the fundamen-
tal doctrine upon which relief in this class of cases is
afforded" is that of "misleading or the tendency to mis-
lead, with consequent injury, actual or probable."^
1 Commercial Advertiser Ass'n v. Haynes, 49 N. Y. Supp. 938-942.
2 Social Reg-ister Ass'n v. Howard, 60 Fed. Rep. 270, 271.
"Browne, Trade-marks (2d ed.), sec. 115. As instances of injunc-
tion restraining use of infringing titles of periodicals, see Edmonds
V. Benbow, Seton (3d ed.), 905; Re Edinburgh Correspondent News-
paper, Ct. of Sess. Cas. 1st ser. I (new ed.), 407 n. ; Cox, Manual,
No. 34.
^Note to Clemens v. Belford, 14 Fed. Rep. 728; Cox, Manual, 684;
ante, % 55.
•■^Commercial Advertiser Ass'n v. Haynes, 49 N. Y. Supp. 938-942; cit-
ing Bradbury v. Beeton, 39 Law J. Ch. 57; Ingram v. Stiff, 5 Jur. N. S.
947; Lee v. Haley, 5 Ch. App. Cas. 155; Clement v. Maddick, 5 Jur.
§56] BOOK TITLES AS TRADE-MARKS. 121
N. S. 592. And see Snowden v. Noah, Hopkins, Ch. 347; Bell v. Locke,