
    Nathan Lepow, Respondent, v. Harry Kottler, Appellant.
    First Department,
    November 5, 1906.
    Partnership — injunction to restrain use of firm name denied.
    The plaintiff L. and the defendant Kottler were partners doing business .under the name of H. Kottler.<& Co. The articles of partnership provided that upon dissolution the partner bidding highest should be entitled to buy the share of the other, but a prior provision of said contract as to the purchase of the good will of the business on dissolution was by agreement stricken out. On dissolution, the plaintiff purchased the interest of the defendant and thereafter sued to restrain the defendant from using the name H. Kottler & Co., he having continued in the same business with another partner. An injunction pendente lite was granted.
    
      Held, that as the agreement was silent as to the good will or use of the firm name, the plaintiff was not entitled to a temporary injunction restraining the defendant from using said name.
    Appeal by the defendant, Harry Kottler, from an order of the Supreme Court, made at the Hew York Special Term and entered in the office of the clerk of the county of Hew York on the 2d day of August, 1906, granting an injunction pendente lite.
    
    
      Henry A. Friedman, Charles L. Hoffman with him on the brief [Steuer & Hoffman, attorneys], for the appellant.
    
      Morris Rothenberg of counsel [Abraham S. Schomer, attorney], for the respondent.
   Clarke, J.:

It appears that prior to the 15th day of June, 1901, the defendant was engaged in the business of the manufacture of shirt waists under the name of IL Kottler & Co., and that on the 15tli day of June, 1901, the defendant and the plaintiff, whose name was then Hathan Lipawsky, his present name having been assumed in April, 1906, formed a copartnership and did business under the said name of H. Kottler & Co. On the 17th day of Hovember, 1902, they entered into a written agreement of partnership which, after reciting that they had theretofore been doing business together as copartners, set forth the terms of their future agreement. As originally drawn, tlie 12th article of said agreement was as follows : “ XII. It is further expressly understood and agreed that in tlie event both said parties shall at the dissolution of tlie co-partnership as aforesaid, desire to buy out and retain the stock and share of the other as well as the good will of the business, it shall be lawful for either of them to do so, and the one paying most for the share of the other shall be entitled to the same and so have it.” Before signing, however, the words “as well as the good will of the business” were stricken, from the' agreement, the defendant averring, and the plaintiff nowhere denying, that the elimination of said phrase from the agreement of partnership was due to the fact that the defendant at that -time refused to sign said agreement unless the' plaintiff would make no claim to the good will, which was the firm name only, as there were no other things to which said name applied, and that the words were stricken out.by mutual consent.

On. the 27th day of June, 1906, the parties entered into a written agreement for dissolution which recited an accounting and the results thereof, and made provisions which apparently covered all of "the tangible assets of the concern but did not in terms in any way allude to the good will of the business or the use of the firm ■ name. The partnership, during its continuance, occupied two stores, Mos. 43 and 45 Mercer street, which were side by side. The agreement provided that the defendant should take over the lease of Mo. 43- and the plaintiff of Mo. 45., and each would take all of the chattels and fixtures in the respective stores. The defendant acquired all the goods, consisting of raw and made-up materials,- and undertook to collect the outstanding accounts and to pay the liabilities, and after the payment thereof to pay to the plaintiff a certain proportion and to himself the balance out of the collections. The terms of said agreement have been carried out. ■ The plaintiff is continuing the business of manufacturer of shirt waists at Mo. 45 Mercer street, and has erected thereon a sign bearing his name and underneath the words, in large letters, “ H. lio t tier & Go.”' with the word, in small letters, formerly.” The defendant has continued. the business of the manufacture of shirt waists at. Mo. 43 Mercer street and has taken in a new partner by the name of Zindler and is continuing the business under the firm name of H. Ilottler & Go., that is, he is using his own name followed by the words “ & Go.,” which express the exact situation, as lie had used it before the partnership with Lepow and during said partnership.

This is an appeal from an order made upon the plaintiff’s application in a suit, brought for that purpose, which enjoins and restrains the defendant from in any manner using the name of IL Bottler & Company or H. Bottler & Co:, or any similar name in the. business of making ladies’ shirt waists at Mo. 43 Mercer street or at any other place within the State of New York, or displaying the said natne or a similar name upon any sign, stationery, checks, bills or notes used in said business or in any other manner whatsoever during the pendency of this action.

The theory upon which the action is brought, of course, must be that the firm name had by its use in the business become a trade mark and part of the good will. But if this should be assumed to be true I do not see that the plaintiff can possibly have any claim to the exclusive use thereof, or rather that he has any right to prevent his late partner using the same. ILe did not purchase the whole business of a going concern, nor is it his own name that he is seeking to protect. The partnership was not dissolved by death so that the firm name, as in the case of Slater v. Slater (175 N. Y. 143), became a part of the firm’s assets, the sale of which was required on the settlement of 1ns affairs, but by a written agreement which, with minute particularity, upon an accounting, disposed of the affairs of the late partnership. Nothing being provided in said agreement in regard to the good will or the firm .name, the plaintiff has thereunder acquired no right to prevent the defendant from the continued use of the name. In Hazard v. Caswell (93 N. Y. 259) Judge Danforth said: There can be no doubt that upon the dissolution of the old firm either partner might continue to use the trade-mark in question, unless he conferred upon the other an exclusive right to do so. * * * Each party might use the devices which constituted the -trade-mark, although neither, except by agreement, could use the name of the other,” and in subsequent litigation between the parties in Caswell v. Hazard (121 N. Y. 484) the court said, in referring to the case in 93 New York (supra), “ it was there held, upon the dissolution of a firm having established trade-marks and a good will, * * * that such assets remained the property of the individual members and could lawfully be employed thereafter by either of such members in the prosecution of his business.” . ■ •

It seems to me upon these papers that by the deliberate exclusion in the original articles of partnership made after a dispute as to the' disposition of the good will in case of dissolution, and by the omission of all reference thereto in the articles of dissolution, that it was the clearly understood agreement that the defendant reserved the use of his own name in connection witli the phrase “ & Co,,” and that the plaintiff is not entitled to an injunction before trial preventing the defendant under such circumstances from using his own name in the conduct of his business, especially when the plaintiff is himself making use of the firm name by the sign “ H. Lepow, formerly H. Kottler- & Co.,” a clear holding out that plaintiff is the successor to the -partnership. ■ This is an attempt in one way to do what plaintiff claims defendant is doing in another. He who seeks equity must do equity.

The order appealed from should lie reversed, with ten dollars costs and disbursements, and motion denied, with ten dollars costs.

O’Brien, P. J., Ingraham, Houghton and Scott, JJ., concurred.

Order reversed, with ten dollars costs and disbursements,' and motion denied, with ten dollars costs.  