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and embarked in the same business as the plaintiff, in the
same street, tlie Strand, but at a different number from the
place of the plaintiffs. An injunction was granted. See
SykeB V. Sykes, 3 Barn. & Cress., 541 ; Bodgers v. NowiU, 5
Man. Grang. & Scott, 110 ; Dent v. Turpin^ 25 Jurist, 674.
Even in a partnership, the firm name, or a trade mark repre-
senting the firm name, cannot be taken by a retiring partner.
Rail V. Barrows^ 27 Jur., 468 ; S, C, 28 Jur., 65 ; Burry v.
Bedford, 27 Jur., 956 ; S. (7., 28 Jur., 502 ; Charlton v.
Douglass, 5 Jur. N. S., 956 ; S. C, 22 Law Reporter, 172 ;
Lewis V. Langdon, 7 Sim., 421^

5. The case before us differs from those tinder the last
head, in this, that the defendants here, while they confessedly
use two-thirds of our corporate name, cannot claim that it is
in any way tlieir own. Persons dealing with Holmes, Booth
& Atwood, do not deal with or expect to deal with Mr. Holmes
or Mr. Booth ; but with an artificial person, in which those
gentlemen or any others may have an interest to-day and none
to-morrow.

6. It is not necessary, in order to obtain an injunction,
that the name should be exactly copied. It is sufficient if
the resemblance be such as may deceive the unwary. Tlie
law is well stated in Seixo v. Provezende, oiipra : " What de-
gree of resemblance is necessary, from the nature of things
is a matter incapable of definition a priori. All that a court
of justice can do is to say that no trade can adopt a trade
mark so resembling that of a rival that ordinary purchasers
purchasing with ordinary caution are likely to be misled. It
would be a mistake to suppose that the resemblance must be
such as would deceive persons who should see the two marks
placed side by side. The rule, so restricted, would be of no
practical use." And see Walton v. Crowley, 3 Blatchf., 440.



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SEPTEMBER TERM, 1870. 285

Holmes, Booth & Haydens v. Holmes, Booth & Atwood Manf. Co.

7. It is not necessary that we should show any evil intent
or direct malice in the defendants. Millington v. Fox^ 3
Mylne & Craig, 338 ; Cartier v. Carlisle, 31 Beav., 292 ; Davis
V. Kendall, 2 R. Isl., 566 ; Upton on Trade Marks, 204 ; Fil-
Ly V. Fasseity 17 Am. Law Reg., 402 ; 1 Story Eq. Jur.,
§§ 186-189 ; Story v. Norwich ^ Worcester JR. R. Co., 24 Conn.,
94 ; Callender v. Colegrove, 17 Conn., 1 ; Lavette v. Sage, 29
Conn., 577. The court has found that certain mischiefs have
resulted to the plaintiflFs from the conduct of the defendants,
and they will assume that these results were intended.

J. S. Beach and H. B. Harrison, for the respondents.

First, The questions arishig upon this record, though
novel and important, are few and. simple. We may better
appreciate how nan*ow the real issue is, by first considering
and excluding what is not in issue.

1. The question is not whether Richard Roe and John
Doe, commencing business with or without associates, either
under a general partnership, or a special partnership, or under
the joint stock act, have, as against the corporation of Ilohnos,
Booth & Haydens, the right to adopt the individual names of
Israel Holmes, or of John C. Booth, or of either of them, as
any part of their partnership or corporate title. We concede
that if a trading firm or corporation has selected for its title
any words in which, when so selected and used, they can
acquire exclusive property as applied to their business, and
another trading firm or corporation selects those same words
as the name or title under which they propose to engage in
the same business, the inference is irresistible that they are
seeking to appropriate what does not belong to them ; or if
the coincidence is accidental, yet they are in fact appropriat-
ing what does not belong to them, and a court of equity prop-
erly interferes to protect the exclusive rights of the injured
party. We have therefore no controversy with the plaintiffs
upon the proposition of law as embraced in, or as to its appli-
cation as illustrated by, the cases they cite, such as Clement
v. Maddick, 23 Jurist, 502, Howard v. Henriques, 3 Sandf.
Sup. Ct., 726, Davis v. Kendall, 2 R. Isl., 5G6, Lee v. Haley,



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286 NEW HAVEN AND MIDDLESEX.

Holmes, Booth & Haydens v. Holmes, Booth & Atwood Manf. Co.

Law Reps., 5 Ch. App., 161, and others of the same class.
We are at issue with them upon the question whether the
plaintiff corporation did in fact, or could in law or equity,
acquire in the words they selected, as part of their corporate
title, such exclusive rights as to prevent their future use by
any person or firm or corporation in connection with the man-
ufacture of brass.

2. The question is not whether Israel Holmes and John
G. Booth, and those associating with them for business pur-
poses, either under a general or limited partnership, or under
the joint stock act, may fraudulently or under the cover of a
technical and legal right, use those names as part of their
partnership or corporate title for the purpose of appropriating
a value which is in fact extrinsic of those names and belongs
to another trading firm or corporation. If this was the ques-
tion, then another class of authorities cited by the plaintiff
would be applicable. They cite Upton on Trade Marks, 102,
to the proposition, that " tlie simplest case of a trade mark^
fulfilling the condition of the law and thereby enabling him
who adepts it to protection in its exclusive use, is the name
and address of the manufacturer." The qualification con-
tained in the words, " and addressy^^ is important, for no man
can acquire such exclusive rights even in his own name, iso-
lated from any locality, or from some distinguishing sign or
symbol, as to enable him to prevent another legitimate owner
of the same name from entering into fair and open competi-
tion with him. No court has ever yet held that because one
man doing business under his birth-right name, is annoyed or
injured by another person of the same or similar name, con-
ducting a competing business under his birth-right name, the
former could enjoin the latter against a continuance of his
business. Burgess v. Burgess ^ 17 Eng. Law & Eq., 257 ; Fa-
ber V. Faler, 49 Barb., 357 ; Comstock v.. WhUcy 10 Abbott
Pr. R., 264, note ; Croft v. Day, 7 Beav., 90.

Second, The real issue is this : —

Is it unlawful for Israel Holmes and John C. Booth, and
their associates, uniting their capital for conducting the busi-
ness of manufacturing brass, under the joint stock laws of



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SEPTEMBER TERM, 1870. 287

Holmes, Booth & Uaydens v. Holmes, Booth & Atwood Manf. Co.

this state, to avail themselves of the inherent value belonging
to those names in connection with that business, by making
such use thereof in their corporate title as is reasonably re-
quisite to inform the trading community that the skill of Israel
Holmes, and the reputation of John 0. Booth, are involved in
and a part of the business they are conducting ? The plain-
tiffs insist that it is unlawful, because, " by reason of the shni-
larity of the names of the two companies confusion has
resulted in their correspondence, and letters of important and
confidential character, intended for one company, have in
consequence either of mistake in the address on the part of
the writer, or of delivery on the part of the post office, been
received and read by the other; miscarriage of goods has also
to some extent for the same reason occurred, and by reason
of this similarity dealers in the market are likely to be con-
fused and misled into the belief that the two companies are
the same." In reply to this claim, we say,

1. That whatever similarity exists, originates in the use
of the names of Holmes and of Booth. There is no pretense
of similarity between the remaining single word of the plain-
tiffs' corporate title, and the remaining four words of the
defendants' corporate title. Obviously, therefore, the defend-
ants' corporate title was not assumed for the purpose of adopt-
ing a name similar to the plaintiffs' corporate title. The
similarity is the necessary incident of the use of those names,
and the plaintiffs admit that such dissimilarity as they ask
for can be ensured only by expunging those names from the
defendants' corporate title. Again, therefore, it is obvious
that if the defendant corporation have the right to use these
names in any way or form, as part of their corporate title,
the use they now make of them is reasonable and proper for
the legitimate purpose of informing the trading community
that the skill and reputation of Messrs. Holmes and Booth
are involved in the business they are organized to conduct.

2. A trading corporation, by assuming as part of its cor-
porate title the name of an individual who has a valuable
reputation in that branch of business which it is organized to
conduct, docs not so absorb the right of that individual to the



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288 NEW HAVEN AND MIDDLESEX.

Holmes, Booth & Hardens v. Holmes, Booth & Atwood Mnnf. Co.

future use of his name as to acquire the power thereafter to
debar him from deriving any bene6t from his business reputa-
tion through the use of that name in any commercial enter-
prise with which -he may become connected. If "Holmes,
Booth and Haydens" had been, as .their title primd facie indi-
cates, a commercial copartnership, the right of Holmes and
Booth upon their retirement from that firm, to carry on a
similar business in their own "name, or to authorize the use
of their names in any commercial enterprise with which they
might become connected, could not be disputed, whether such
new enterprise assumed the form of a copartnership or of a
corporation. And if the members of " The Holmes, Booth
& Atwood Manufacturing Company" had organized in the
form of a commercial copartnership, instead of in the form
of a joint stock corporation, it must also be conceded that
their legal and equitable right to conduct their business under
that style and name would be beyond controversy, even though
the plaintiffs thereby sustained all the grievances alleged in
their bill. Again, if both these companies had been organized
in the form of commercial partnerships instead of in the form
of joint stock corpoitttions, it would be the undoubted rigljt
of Messrs. Holmes and Booth, or those with whom they had
formed their new association, to enjoin their former copartners
against holding out to the world that they retain the advan-
tages incident to the continued use of those names as pai-t of
their trading title.

3. fiut the plaintiflFs insist that the individual rights of
Holmes and Booth are not involved in this controversy;
that the contest is between two corporations, having no rights
except those conferred by tlie law of their organization ; and
therefore they claim that whatever may be i\\Q individual
rights of Holmes and Booth, this artificial entity (the defend-
ant corporation) has no more right to take any part of their
name, under which to transact business, than has Richard
Roe or Jolm Doe. If the controversy involved any legal
right of either corporation derived from the power which
created it, as to maintain suits in its own name irrespective
of any legal disability of its individual stockholders, this



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SEPTEMBER TERM, 1870. 289



Ilolmes, Booth & Haydens v Holmes, Booth & Atwood Maof. Co.



claim would have great force. But the controversy in this
case has no reference to any rights which either corporation
derived from the law of its organization. It originates in the
attempt of the plaintiff corporation to grasp and hold that
which the creative power never gave them. Under the au-
thority to take any name^ they appropriated a name over which
the law of their creation did not and could not give them ex-
clusive control. Others continued to hold property in those
names. That property is of value. Neither corporation can
make out an exclusive legal right to it, and it is as to their
respective equitable rights to its use, and especially as to the
equitable right of the plaintiflF corporation to its exclusive
use as against the defendant corporation, that we are in cour
troversy.

4. The equitable rights of these two trading associations^
are not so obliterated by the mere form in which they have
respectively associated, as to compel the association with
which Messrs. Holmes and Booth are in fact connected, to
conceal that truth, to the single end that the other association
may enjoy the exclusive right of proclaiming the falsehood
that it retains the benefit of their skill and reputation. The
technical rules of law which in former times were applied to
trading corporations as an individuality, distinct and apai't
from its individual members, have yielded to the pressure of
the frequent inequity of such application. In the language
of Chief Justice Hinman, "joint stock corporations in mod-
ern times are nothing but commercial partnerships, which
have taken the form of corporations for the greater facility
of transacting business, and to prevent the dissolution of the
concern by those numerous events which are so liable to work
a dissolution in a partnership composed of a great number
of individuals." Pratt v. Pfatt, Read ^ Co., 33 Conn., 452.
See also Wood v. Hartford Fire Ins. Co., 13 Conn., 211 ; Sear$
V. HotchkisB, 25 Conn., 178; Marshall v. Baltimore ^ Ohio
B. B. Co., 16 Howard, 327.

5. When the commercial partnership of " Holmes, Booth
& Haydens," assuming for the greater facility of transacting
business tlie form of a joint stock corporation, took their

Vol. xxxvit. — 37



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290 NEW HAVEN AND MIDDLESEX.



Holmes, Booth & Hardens t;. Holmes, Booth & Atwood Manf. Co.



present title, they chose it for the same legitimate purpose
tliat the defendant corporation chose their title, to indicate
that their business had the benefit of the skill and experience
of Mr. Holmes and of Mr. Booth. When trading corporations
elect such names for such purposes, they take them subject to
the individual rights of those to whom the names belong. It
is a legitimate exercise of that right for those individuals to
l)CCome members of another commercial partnership, assum-
ing for like reasons the same form of a joint stock coipora-
tion, and to confer upon it for the mutual advantage of its
members authority to make such reasonable use of tlieir indi-
vidual names as will indicate that their skill and experience
ai-e now in the service of the new company. Tlie old com-
pany by reason of its corporate organization retains the legal
right to the use of its corporate tide, but it is a bare legal
right, and it has no more equitable claim to prevent the new
company from using their corporate title, because its business
may be thereby prejudiced, than it would have for the same
reason to enjoin the owner of land adjacent to theirs from
making a reasonable use of it. The maxim, " Sic tttere txio
nt alienum non laedas^^ in its proper application to both cases,
does not mean that if injury results from a proper and rea-
sonable use of one's own he is forbidden to use it. Tlie ad-
jacent owner may not erect a nuisance upon the land ; but he
may build a house upon it, and excavate for his foundation
wall close up to the dividing line, even though he thereby
endangers his neighbor's wall. So if the plaintiff corporation
liave built tlie superstructure of its business so near the divid-
ing line of ownership of the good will inherent in these
individual names, that it is in any degree annoyed by those
individuals making a reasonable use of that which confessedly
they own, it is no more entitled to seek its remedy by anni-
hilating its competitor, than it would be to protect a weakened
wall by a perpetual injunction against the fee simple owner
of real estate making any use of his land.

Third, The plaintiffs' name involves a false representation,
operating as a fraud upon the public. Equity will not, in any
event, intervene to protect such name. Pidding v. Howe^ 8



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SEPTEMBER TEIRM, 1870. 291



Holmes, Booth & Haydeas v. Holmes, Booth & Atwood Manf. Co.

Sim., 477 ; Perrt/ v. Truefit, 6 Beav., 66 ; Leather Cloth Co,
V. Am, Leather Cloth Co,, 1 Hem. & Mil., 271 ; Lee v. Haley,
Law Reps., 5 Cha. App., 156 ; Palmer v. Harris, 5 Am. Law
Rev., (Oct. 1870,) 108.

Carpenter, J. Jn 1853 the plaintiff corporation was or-
ganized under the joint stock laws of this state, taking the
name of four of its principal corporators or promoters. Two
of these, Israel Holmes and John C. Booth, whose names
appear in the corporate title, by long experience had acquired
considenable skill and reputation in the manufacture of brass,
the business for which the corporation was organized. Thus
organized, the corporation established and carried on a suc-
cessful business, and their corporate name acquired a valuable
reputation in tlie pubHc markets of the country. There were
but five original stockholders. The amount of the capital
stock, and the number of shares owned by each, do not ap-
pear ; but at the time of the organization of the defendant
corporation, February 9th, 1869, the stock consisted of six-
teen thousand shares, distributed among fifty-one stockhold-
ers. Six of the eight coqjorators in the new corporation were
stockholders in the old, and four of them were directors, one
of whom was president until a short time before. The
respondents organized under the corporate title of " The
Holmes, Booth & Atwood Manufacturing Company," for the
purpose of carrying on, and carried on, the same business as
that done by the petitioners.

Their i)lace of business was in the same town, and their
depots in New York and Boston were m the same streets.
The similarity of the names of the two companies resulted
in confusjion of their correspondence, mistakes in (he delivery
of orders, goods, &c., and it is expreiisly found that, "by
reason of this similarity, dealers in the market arc likely to
be confused and misled into the belief that the companies are
the same." Other facts of less importance appear, but the
above embraces all the material facts in the case.

Upon these facts the })etitioners pniy that the respondents
may be restrained from the use of their corporate name, also



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292 NEW HAVEN AND MIDDLESEX.

Holmes, Booth & Haydens v. Holmes, Booth & Atwood Manf. Co.

from using the words "Holmes, Booth," or the words
"Holmes" or "Booth," in the name, title, or style of the
corporation, or any words or titles so expressed as to be in
any degree an imitation of the corporate name of the peti-
tioners.

The petitioners insist that if the respondents are permitted
to continue their business as heretofore, their goods will be
sold in market as the goods of the petitioners. This claim
is not seriously controverted, and we think it is a fair infer-
ence from the facts found. That any name, symbol or device,
adopted by an individual, corporation or business firm, for
the purpose of designating the origin and ownership of goods
manufactured by them, will be protected as a trade-mark is
well settled law. The name of a corporation or partnership,
accomplishing the same object, will be protected upon the
same principle. This is not disputed. Indeed the respond-
ents seem to admit that the petitioners are entitled to the
relief sought, unless they can protect themselves in the use
of their corporate name on one of three several grounds.

1. That the petitioners, having taken their name from some
of their principal stockholders, could acquire no exclusive
right to the use of that name as against another corporation,
subsequently formed, embracing those same stockholders.

2. That there is no actual fraud found, and no purpose or
Intention on the part of the respondents to use their name to
the prejudice of the petitioners.

3. That the petitioners' name is itself a misrepresentation,
and calculated to deceive the trade.

The case will be considered with reference to these objec-
tions.

1. In respect to the names.

The argument of the respondents' counsel upon this point
proves too much. If sound it would establish the proposi-
tion that if the Haydens, or one of them, had imited in form-
ing the I'cspondent corporation, they might have taken the
petitioners' name verbatim^ and the petitioners would have
had no legal ground of complaint. Indeed tliis result is
necessarily involved in the statement of the proposition.



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SEPTEMBER TERM, 1870. 293

Uolmes, Booth & Haydens «. Holmes, Booth & Atwood Manf. Ca

Such a claim, in terms, certainly would not be seriously
made. There can be no distinction in principle between
taking the entire name and so much of it as will mislead
dealers into the belief that the two corporations arc the same.
The mischief in both cases is of precisely the same character,
differing only in degree.

It will be well to observe that the controversy in this case
is between two corporations. Each party owes its existence
to the law. The law authorizes, sanctions, and protects
every act done, and every step taken, in pursuance of law,
either in the process of organization, or in the course of its
business. It is true all the details are not prescribed in ad-
vance. Certain general powers are conferred, which are
applicable alike to all corporations ; such as the power to hold
property, to sue and be sued, and the like. So also of certain
requisites and forms, such as the par value of each share of
stock, the publication of notice, and recording the articles of
association, &c. Other powers and privileges are left in a
measure to the discretion of the parties interested. Among
these are the amount of capital stock, the location, the busi-
ness to be transacted, and the name. When the corporators
have once exercised their power in respect to these matters,
the law declares the capital stock, the location, the business,
and the name, to be as thus determined, until changed in
pursuance of law. In respect to these matters the corpora-
tion is as much the creature of, and subject to, and protected
by, the law, as in the former.

The law having autliorized the selection of a name, and
having declared the name so selected to be the name of the
corporation, we see no reason why the law should not protect
the corporation in the use of that name, upon the same prin-
ciple, and to the same extent, that individuals are protected
in the use of trade-marks. Hence it necessarily follows
that corporations in -the exercise of discretionary powers
conferred by the statute, must so exercise them as not to in-
fringe upon the established legal rights of others.

But it is contended, conceding that if John Doe and Rich-
ard Roe had formed the defendant corporation they would



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294 NEW HAVEN AND MIDDLESEX.

Holmes, Booth & Haydens v. Hpjmes, BooCh & Atwood Manf. Co.

have had no right to use the petitioners' name, that the peti-
tioners, bj incorporating into their name the names of some
of the principal corporators, have forfegbed their right to this
protection, for the reason that tiiej^ coul* not thereby so absorb
the names of Israel Holmes ajp^ohn C. Booth as to prevent
them from imparting the right to use their names to any
other corporation or businessfirm with which' they might be-
come connected. We state the claim in this form because,
as it seems to us, in this form only has it any application to
the present case. We do not wish to be understood as de-
ciding that the respondents may not, in any legitimate way,
indicate to the trade that their business had the benefit of the
experience, skill and reputation of these gentlemen. But the
simple question is, have they^ right to do it by a substantial
use of the petitioners' name ?*'^n answering tliis question
we shall answer that Mr. Holmes and Mr. Booth, in the
first instance, had a perfect right to prohibit the use of their
names by the petitioners. J{ so, presumptively at least,
they assented to such use. Th^ subscribed to the capital
stock with the knowledge, if not upon the condition, tliat tlie
corporation would thus hold out to the world that their skill
and experience were involvcdMn the enterprise. The same
consideration may have influenced others to subscribe to the
stock originally or to purchase stock subsequently. The
value of the stock may have depended upon it. There is in-



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