Taylor v. Carpenter , 11 Paige Ch. 292 ( 1844 )

The Chancellor.

The fact that the complainants are subjects of another government, and that the defendant is a citizen of the United States, as stated in the answer, cannot alter the rights of the- parties, or deprive, the complainants of the favorable interposition of this court if those rights have been violated by the defendant. So far as the subject matter of this suit is concerned, there is no difference between citizens and aliens. And the only question proper to be considered is whether the defendant has the right, as he insists he has, to pirate the trademarks of the complainants with impunity.; and tq palm off upon the community a simulated article, as the genuine Taylor’s Persian Thread manufactured and put up for sale by them.

In the case of Bell v. Locke, (7 Paige's Rep. 75,) I had occasion to examine the question whether an.injunction bill could be sustained for the fraudulent assumption of the name of the complainant’s newspaper, for the-purpose of deceiving the public and supplanting him in the good will of his business. And I then came to the conclusion that this court had jurisdiction to interfere for the protection of the complainant’s rights in such a case. I there referred to the case of Knott v. Morgan, (2 Keen's Rep. 213,) where the present master of the rolls in England granted an injunction to restrain the defendant from running an omnibus having upon it the simulated names and devices which were previously in use by the complainant; which simulation was to induce the public to believe it was the complainant’s omnibus, and to deprive the latter of a part of the good will of his business by this fraudulent device. Since the case of Bell v. Locke was before me, the case of Millington v. Fox, (3 Myl. & Craig's Rep. 338,) has been decided by Lord Cottenham. That decision .fully sustains the claim made by the complainants in the present case. There the complainants for many years had been engaged in the manufacturing of steel, with a particular name or mark thereon indicating the persons by whom it was manufactured. The defendants, without being aware that this was the trade-mark of the complainants or of any individual, commenced the manufacture and sale of steel with the complainants’ marks thereon. And a perpetual injunction was granted against the use of such marks; although the. lord chancellor was satisfied that no fraud was intended. He says that having come to the conclusion that the complainants were entitled to the marks, in question, they had an undoubted right to the assistance of. a court of equity to enforce that title, by a perpetual injunction. 'But as the defendants had • given notice of their intention to. abandon the use of the marks, as soon ap they discovered that they belonged to the complainants, they were not charged with costs. A case is also cited by Lord Henley, in his treatise upon injunctions, where a manufacturer of blacking was restrained from using labels in imitation of those used by the complainant, ip that case. (See also Ransome v. Burtall, 3 Law Jour. 161.)

In the case under consideration, the defendant admits that he has intentionally pirated the complainants’ name as well as their other marks; that he put up the spools of thread manufactured by him, and stamped and marked them with their marks; and that he so colored; stamped and labelled them as to resemble exactly, or as nearly as could be done, the spools used by the complainants. After such an avowal, no one can doubt for a moment that the defendant did this for the fraudulent purpose of inducing the public, or those who were dealing in the article, to believe that it was in fact the thread manufactured and put up by the complainants; with the intention of supplanting them in the good will of their trade and business. And it is wholly immaterial whether the simulated article, manufactured by the defendant, is or is not of equal goodness and value with the real “Taylor’s Persian Thread,” manufactured and put up for sale by the complainants. They are therefore entitled to the relief prayed for in this bill.

The injunction must be made perpetual, and the defendant must pay to the complainants their costs of this suit. If the complainants wish it, they may also have a reference to a master to ascertain and report the amount of their damages; and a decree that the defendant pay the amount of such damages, upon the coming in and confirmation of the master’s report.^(a)

(a) Affirmed upon appeal to the court for the correction of errors, December, 1846. And see the cases on this subject collected in notes to Patridge v. Menck, (2 Barbour's Ch. Rep. 101.)