
    Julius Stern, Respondent, v. The Barrett Chemical Co., Appellant.
    (City Court of New York, General Term,
    July, 1899.)
    1. Libel — Publication of a circular designed to drive away customers.
    An action for libel may be maintained by a dealer in an insecticide against a corporation, dealing in the same article, which published and sent to other dealers a circular, which falsely stated that the corporation had an exclusive right to use certain words as a trademark, that the plaintiff was using them unlawfully, and that the corporation would hold liable, both civilly and criminally, anybody who used an insecticide with the words in question upon it or any imitation thereof.
    2. Same — Trade-mark, “ Roach Sault ”, not exclusive.
    The term “ Roach Sault ” is composed of the two well-known words “roach” and “salt”, indicative of quality and composition; the compound word cannot be made the subject of exclusive property and therefore is not infringed upon by one who employs upon his insecticide, having an entirely different' label, the words “ Warranted Chemical Roach Salt”.
    This is an appeal from a judgment in favor of the plainti if entered upon a verdict and from an order denying a motion for a new trial.
    
      William S. Beaman, for appellant.
    Arthur Furber, for respondent.
   Conlan, J.

The action was brought to recover damages for a Ebel alleged to have been published by the defendant of and concerning the plaintiff in his business of manufacturer and dealer in an insecticide, and the libel complained of was contained in a letter, signed by the defendant, to dealers in such articles, claiming that the plaintiff was unlawfully placing the word “ Eoach Sault ” on his labels and, to be more particular, we give the .following exact quotation from the circular issued and sent out by the defendant to persons who were dealing in the article manufactured by the plaintiff: “ It has recently come to our knowledge that our business word and trade-mark “ Eoach Sault ” is being unlawfully placed upon the labels, etc., of an insecticide, with the preparation and sale of which .article we have no connection whatever. Confident that all honest and fair-minded dealers will sustain us in our position against such robbery of our-property (our trademark word), we nevertheless desire to give everybody notice that we shall hold responsible, both civilly and criminally, all parties who deal in or keep any insecticide which is put up or sold under any name or label which includes our word “ Eoach Sault ” or any imitation of that word. We call attention to the following extracts from the penal code of the State of New York. Very respectfully yours, Barrett Chemical Co., C. H. Higbee, Gen. Manager.” And there was inclosed in said letter, and as a part of the publication thereof, extracts from the Penal Code relating to the alleged offense and the punishment therefor, with a specific and independent line inserted therein in small capitals, as a distinguishing feature thereof, containing the word is guilty of misdemeanor.” It is admitted that some seventeen or eighteen of these circular letters were sent out by the defendant to prominent dealers in the city of Néw York, and it is claimed by the plaintiff that in consequence thereof he was damaged in his business by reason of this false publication.

There is evidence that the persons receiving these circulars or letters, refused further to deal in the article manufactured by the plaintiff and his business was, therefore, necessarily interfered with. A comparison of the labels used by the parties fails to disclose any similarity whatever, either in size, in general make-up, color or other matter prominent thereon, and it does not very clearly appear that any person could he deceived into believing that, by the purchase of the article of the plaintiff covered by his label, he was using or intended to purchase or use the article manufactured by the defendant company. Upon the defendant’s label the most prominent characteristic is the word “ Roach Sault ”, in the use of which it is insisted by the defendant that it was protected under the laws of the United States; upon the top of plaintiff’s label are the words “Warranted Chemical Roach Salt ” employed as indicating a chemical process of manufacturing, and upon the employment of these two terms, the word “Roach Sault” by the defendant, and “Warranted Chemical Roach Salt ” by the plaintiff, seems to hinge all that is material for consideration in this branch of the case as presented for review.

The question, therefore, for us to consider is, had the defendant such an exclusive ownership in the term or word “ Roach Sault ” as would justify the publication complained of ? We are cited by counsel for both parties to a long line of authorities, which, it is insisted, are controlling upon the questions which are presented for our review. It will be noticed that the plaintiff’s labels contained the two words “ Roach Salt ” in conjunction with the other word “ Warranted Chemical ”, while that of the defendant simply employed the word or term, or whatever else it may be called “ Roach Sault ”, the spelling of the one differing from that of the other, and the latter embracing but a single word, while the former was made up of two separate words. The words “ roach ” and “salt ” are well-known words in the English language, and each has a distinct definition and meaning, and we do not see on what authority the plaintiff can he interfered with in their use or employment, nor could the plaintiff prevent their employment by the defendant to designate any article for public or private use. In this connection it is important to consider the language of Chief Justice Folger in Caswell v. Davis, 58 N. Y. 223: “ It is the result of all the decisions, that known words and phrases indicative of quality and composition are the common property of all mankind. They may not be appropriated by one to mark an article of his manufacture, when they may be used truthfully by another to inform the public of the ingredients which make up an article made by him. • Even when the sole purpose of the one who first uses them is to form of them a trade-mark for himself, expressive only of origin with himself, if they do in fact show forth the quality and composition of the article sold by him, he may not be protected in the exclusive use of them.” Language could hardly be stronger than that we have just quoted, and in its light we can scarcely conceive how the employment or use of the phrase, “ Warranted Chemical Roach Salt” in any way infringed upon anything which the defendant has disclosed as being something in which it had or could have acquired exclusive property.

We are thus led irresistibly to the conclusion that the language of the circular or letter issued by the defendant was a libel of the ■plaintiff’s business, and under the charge of the learned trial judge that, if the defendant was not protected by its alleged trade-mark in the word “ Roach Sault ”, a complete recovery could be had in this form of action for all of the consequences which necessarily followed from the defendant’s act.

And under the charge of the trial court to the jury, “ If you determine this to have been a libel you are to judge from the various circumstances-surrounding the case whether the plaintiff would have continued in the sale of this article of his to the various persons in the trade, such as Macy, and others, but for the issuance of this letter by the defendant, and you are to award such damages as in your judgment will compensate the plaintiff, if you believe there was a libel,” we think the whole question was fairly submitted to the jury,' and .that the defendant cannot now be allowed to' complain because of its failure to except thereto. It thus became the province of the jury, with the assent of the defendant, to fix the amount of compensation, and we are not willing to say that the jury have acted unreasonably, or for any reason to the prejudice of the defendant, in assessing the damages at the sum of $1,500.

We are- of opinion, therefore, that the judgment and order appealed from should be affirmed, with costs.

Hascall and Scotchman, JJ., concur.

Judgment and order affirmed, with costs.  