
    Phœnix Manufacturing Company, Respondent, vs. White and wife, Appellants. Same, Appellant, vs. Same, Respondents.
    
      March 15
    
    April 23, 1912.
    
    
      Injunction: Contracts: Exclusive right to manufacture patented article: Parties: New contract superseding former one: Husband and wife: “Improvements” on patented machine: Bight to use: Estoppel: Trade-names: Bestraining use of man’s own name: Unfair competition.
    
    
      1. In an action to establish an exclusive right to manufacture and sell certain saw swages patented by defendant, and to enjoin him from manufacturing and selling similar machines in violation of his contract under which plaintiff claims, the defendant’s wife, who is the record owner of the patent, is a proper, if not a necessary, party.
    2. The inventor of a saw swage gave to a corporation, by contract, an exclusive right to manufacture and sell such swage, together with the inventions and improvements on the same which had been or might be invented. Afterwards the patent on the swage was formally transferred to the inventor’s wife, but without consideration and without intention to make any practical difference in the ownership and control thereof by the husband. A new contract, signed by the wife and differing in some respects from the former one, was then made with the corpora-, tion, which in terms declared that it should supersede all other and former contracts respecting such swage. Thereafter the manufacture and sale went on as before, royalties being paid to the wife, with the husband’s knowledge, and deposited to the credit of a bank account in her name, upon which, however, checks were drawn by husband and wife indiscriminately. Held, that the second contract was to all intents and purposes the contract of the inventor, so far as the corporation was concerned, and that it superseded the earlier contract.
    3. A new saw swage invented and patented by the same inventor, but designated in the specification of the patent as an improvement on the former machine and so treated by the parties for a number of years, was an “improvement” covered by the contracts giving the corporation exclusive rights of manufacture and sale.
    
      4. The inventor having invented a third saw swage of similar character hut with some changes, and the corporation having, after some discussion and negotiation, agreed that he might manufacture and sell such new swage himself, and having allowed him thereafter to proceed to make patterns and models in its shop at a considerable cash outlay, paid to it hy him, with full knowledge of his intention to use such patterns and models in a shop of his own in manufacturing the new swage, the corporation was estopped from claiming any right, hy virtue of its contract, to manufacture and sell such third swage.
    5. A man’s name is his own property and he has the right to every honest and fair use of it in his business, but he cannot resort to artifice or use it in such manner as to mislead the public in respect to the identity of another business firm or establishment or the article produced by it, and thus cause injury to such other beyond that which results from the mere similarity of name.
    6. Thus, where a man named White invented a saw swage and granted to plaintiff the exclusive right to manufacture and sell the same and any improvements thereon, and plaintiff had, with his knowledge and consent, put such invention and an improved form thereof upon the market under the names of the “White Swage,” “New White Swage,” and “Improved White Swage,” and had at great expense and by efforts extending over a number of years established a reputation and demand for the article, such inventor was properly enjoined, at the instance of the plaintiff and upon proof of actual injury to its trade by deception of customers, from advertising and selling another swage of his own later invention under such names or any combination thereof, including the name “New Improved White Swage.” Fish Bros. W. Go. v. La Belle W. ~WorTas, 82 Wis. 546, explained and distinguished. Siebeoker, Kerwin, and Tim-lin, JJ., dissent.
    Appeals from a judgment of tbe circuit court for Eau Claire county: James Wiceham, Circuit Judge.
    
      Modified and affirmed.
    
    This is an action in equity to establish and enforce by injunction an exclusive right on the part of the plaintiff to manufacture and sell certain patented saw swages, invented and patented by the defendant Albert E. White, and to enjoin said White from manufacturing or selling any saw swage equipped with, certain specified parts, and from advertising for sale any saw swage under the name “White Saw Swage,” or any similar name. A saw swage is a hand machine used for spreading or broadening the cutting surface of the teeth of rotary, band, or other saws at the point and for a little distance below the point. This is done by placing the machine on the edge of the saw so that the tooth to be swaged comes between two steel dies, one of which is stationary and is called the anvil die, and the other is a movable eccentric die, both of which are set firmly in a circular steel block. By means of a lever the eccentric die is pressed with great force against the cutting surface of the tooth, the back of which rests against the anvil die, and thus the point of the tooth is broadened.
    In November, 1896, the defendant Albert E. White had perfected an improved saw swage and applied for a patent thereon, which patent was actually issued to him August 3, 1897, and numbered 587,539, and is hereafter called the first patent. November 18, 1896, a contract was made between White and the plaintiff by which White granted to the plaintiff
    “the exclusive right to manufacture and sell throughout the United States, its Territories and the Dominion of Canada, the said saw swages, together with the inventions and improvements on same which have been or may be invented, and for which letters patent are now pending or may hereafter be issued to him in the United States and the Dominion of Canada for improvements in saw swages and attachments thereto to the full end and term for which any patent may be issued thereon, subject to the limitations and conditions hereinafter named.”
    By this contract White also agreed as follows:
    “faithfully to devote his services and skill as inventor to perfecting and completing the said invention and improvements and to use his best endeavors to introduce the same for sale and use and to make the same efficient and successful in operation, and to create the best possible demand and market for bis said invention and improvements to tbe end and purpose tbat tbe manufacture and sale thereof may be made as profitable and extensive as be may do by tbe exercise of bis best efforts and skill in tbat bebalf.
    “And tbe said A. E. White further agrees in consideration of this agreement and bis salary hereinafter mentioned as tbe agent of tbe said party of tbe second part, and under its direction as workman and traveling salesman, to sell and introduce tbe saw swages and invention and improvements thereon and also any other articles of manufacture as requested by tbe said party of tbe second part, by tbe exercise of bis best skill and ability as such workman, salesman or agent, and tbat be will faithfully devote bis time, ability and services in and about tbe introduction and perfection of said invention and improvements thereon for tbe best interests of tbe business of said Phoenix Manufacturing Company.JJ
    
    Tbe contract further provided tbat tbe plaintiff should manufacture and sell tbe said patented swages and tbe improvements thereon, and pay a royalty to White of $5 for each swage sold; tbat tbe agreement might be canceled by either party by six months’ written notice at any time; and that White should be employed as traveling agent and salesman by the plaintiff for one year at a salary of $1,000, subject to the right of either party to terminate tbe employment by giving thirty days’ notice to the other.
    Upon the making of this contract the plaintiff entered on the manufacture and sale of the machine, and successfully prosecuted tbe business and made regular payments of royalties to White as agreed. White also went to work under tbe contract, and continued to travel and make sales for tbe plaintiff with no formal renewal of the contract until July 30, 1899, at which time be quit such employment by mutual consent and went to Louisiana, intending to engage in the lumber business there, but abandoned that intention and returned to Eau Claire, and on September 5, 1899, resumed his employment with the plaintiff at an increased salary, and so remained until August 22, 1908, when he finally left. In August, 1899, 
      White assigned Ms interest in the patent to one O. B. Daniels, then president of the plaintiff company, as security for mom eys which it was expected that Daniels would advance to him to he used in the Louisiana business, but as no advancements were ever made, Daniels on September 1, 1899, at White’s request, assigned the patent to the latter’s wife, Georgianna M. White. Both assignments were made without consideration, On September 9, 1899, Georgianna M. White entered into a written contract with the plaintiff with reference to the future manufacture of the swage, which the plaintiff alleges was made at the request of and with the consent of White. White denies that the last named contract was made at his request, or that he had anytMng to do with it except to'carry a message from the plaintiff to his-wife about it. The court, however, found that it was made at White’s request, and it was abundantly proven not only that the contract was made at his request, but that he conducted the negotiations, while his wife simply signed it because the patent stood in her name. This second contract, after reciting the issuance of the patent and its transfer to Georgianna, grants to the plaintiff the exclusive right to mate and sell the swage, “together with the inventions and improvements on the same which are or may be invented or added thereon, and attachments thereof, to the full end of the term of said patent,” subject to the conditions thereafter named. The contract further provided for the same royalty as before, and that the plaintiff would not manufacture or sell any other saw swage while manufacturing the White swage, and that in case it should not sell at least 100 each year, or at its option pay the contract royalty for 100, the said Georgianna might, at her option, terminate the license by six months’ written notice. By the final clause of this agreement it was provided that it should “supersede and take the place of all other or former contracts or agreements made respecting said patented saw swages or improvements.”
    After the making of this contract the manufacture and sale of tiie swage by tbe plaintiff went on as before, and tbe royalties were paid by check to tbe order of Georgianna M. White, witb tbe full knowledge and consent of White. Mrs. White testifies that tbe checks were all deposited to tbe credit of ber account in tbe bank (Mr. White never having kept an account of bis own), and that checks were drawn on that account by herself and ber husband indiscriminately. Mr. White continued in tbe plaintiff’s employment, bis work being enlarged from time to time so as to cover tbe making of plans and specifications for mill outfits and getting orders for tbe same, but be incidentally also sold tbe swages. In tbe fall of 1904, and while still at work for plaintiff, be designed a new swage and applied for a patent thereon, which was finally issued to him April 3, 1906, numbered 816,695, and which will be hereafter called tbe second patent. Tbe specification of this second patent declares that tbe “invention relates to devices for swaging tbe teeth of band, gang, and circular saws, and is designed as an improvement over the swage device shown and described in letters patent of tbe U. S. No. 587,539, issued to me August 3, 1897.” In this second patent tbe dies were not changed, nor their operation, but there was added a frame so that tbe block containing tbe dies was supported on tbe edge of tbe saw, combined witb a slotted semi-circular arch above tbe saw furnished witb stop pins for regulating tbe distance to be traveled by the lever, which was forked so that tbe handle was directly above and in tbe plane of tbe saw, thus insuring a direct pressure instead of a one-sided pressure, as in tbe case of tbe former lever. After tbe perfecting of this second invention, it was manufactured by tbe plaintiff, advertised, and sold by and witb tbe knowledge and consent of tbe defendant White as tbe “New White Saw Swage,” and tbe same royalty was paid to Mrs. White on each of tbe improved swages as on tbe old. White claims that this use was permissive only, and under a verbal agreement witb Mr. O. B. Daniels (now deceased), which contemplated a definite agreement in tbe future, but as Mr. Daniels died before tbe commencement of this action Mr. White was not allowed to give any evidence of sucb an agreement, and no other witness gave any such evidence.
    Tbe court found that tbe two Whites and tbe plaintiff, from October, 1904, until August, 1908, treated tbe swages covered by tbe second patent as merely an improvement on tbe swages covered by tbe first patent and as one of tbe improvements covered by tbe terms of tbe second contract; that relying on this understanding tbe plaintiff spent large sums of money, extensively advertised and catalogued both machines, describing tbe machines made under tbe second patent as “New White Swages” and “Improved White Swages;” that Mr. White himself knew of and wrote tbe introduction to tbe cata-logue, and that tbe plaintiff bad thus built up a trade, and sucb swages bad become generally known to tbe trade throughout tbe United States and Canada as “White Swages,” “New White Swages,” and “Improved White Swages.” It further appears by tbe testimony that in August, 1908, White invented another improved saw swage, and made application for a patent thereon, which application was still pending in tbe United States patent office at tbe time of tbe trial, though a patent bad been granted thereon in Canada, March 1, 1910. In this third machine both dies are set in a different way in tbe block, and tbe eccentric die is of somewhat different shape, tbe slotted arch and pins and forked lever are used, and there are new adjustable spring brackets for supporting tbe frame of tbe machine on tbe saw teeth, also a pivoted guide. With regard to this invention there was some difference of opinion between tbe parties, Mr. Daniels being of opinion that tbe plaintiff was entitled to manufacture it under tbe former contract as an improvement. After some discussion and negotiations it was agreed that White might resign bis employment and himself engage in the manufacture and sale of swages under bis last invention, and White thereupon resigned and devoted his time for a raunber of months to making patterns and-models of the third invention in the plaintiff’s shop, and paid the plaintiff considerable sums for the shop work, etc., the plaintiff knowing that White intended to himself manufacture and sell the new swage from the models so made, but not knowing that he proposed to sell them under the name “New Improved White Swage,” or any name incorporating the word “White” therein. White, in April, 1909, engaged in the manufacture of swages under the third invention, and began to distribute in the United States and Canada cata-logues describing his swages as the “New Improved White Swages,” and used the word “White” as a trade-mark on the machine itself. The catalogue announced that White had severed his connection with the plaintiff, and designed an entirely new line of swages to be marketed and sold under his own name and to be known as the “New Improved White;” that they contained radical changes and improvements, and did not contain any important feature or part of the White swages made and sold by the plaintiff. The trial court found that considerable confusion had been caused by the issuance of this catalogue, that orders from customers for swages that were, intended for the plaintiff were addressed and sent to White, and that the use of the word “White” or the words “New Improved White” by the defendant is likely to deceive the plaintiff’s customers in the purchase of saw swages, and - also tends to confuse purchasers as to which swage is intended, and is in fact injurious to the plaintiff’s trade and business.
    From the foregoing facts the court concluded (1) that the plaintiff acquired and had the exclusive right to manufacture and sell in the United States and Canada the saw swages covered by the first and second patents according to the terms of the second contract aforesaid; (2) that the defendant had the lawful right to manufacture and sell the saw swage invented by him in August, 1908, and that the plaintiff was estopped from claiming any right to manufacture or sell the same; and (3) that tbe use by defendant White, in advertising or describing tbe swages made by bim, of tbe words “White Saw Swages,” “New Improved White Swages,” and tbe word “White” in describing tbe same, or as a trade-mark thereon, tends to deceive plaintiff’s customers and is in violation of plaintiff’s right, and that plaintiff is entitled to an injunction restraining tbe said White therefrom, but not from carrying on tbe business of manufacturing or selling swages in bis own name.
    Judgment was entered substantially according to tbe finding. That part thereof which enjoined tbe defendant White from advertising and selling bis swages under tbe name “White Saw Swage” and other kindred names is as follows:
    “It is further ordered, adjudged and decreed, that tbe defendants and each of them, their agents and servants, in advertising or selling any swage or device designed or intended as a swage of saws be, and they are hereby, perpetually enjoined, restrained and forbidden from using in any manner as a trade-mark or trade-name, or as a name designating any such swage or device, tbe words “White Saw Swage,” “Improved White Saw Swage,” or “New Improved White Saw Swage,” or the word “White” with or without other words of designation; but the defendants and each of them may use his ■or her own name in carrying on or conducting the business of such defendant in the manufacture or sale of any swage which such defendant has a right to manufacture or sell, and may use such name or any portion thereof as the name or as a portion of the name of any firm or corporation with which such defendant may be associated in such business, and if such be the fact, may advertise that the defendant, Albert JÜ. White, is the inventor of the swage so manufactured or sold, provided that said defendants shall not use as such firm or corporation name the words “White Saw Swage,” “Improved White Saw Swage,” or “New Improved White Saw Swage,” nor any of said combination of words either with the word “Company” added or the word “Saw” omitted, and said defendants shall not by any artifice use any other firm or corporate name in such manner as to be an advertisement of swages under the names herein prohibited.”
    
      Tbe defendants appeal from those parts of tbe judgment, enjoining tbem from manufacturing swages under tbe first, two patents and from that part of tbe judgment enjoining, tbem from tbe use of tbe word “White” as a trade-mark or in tbe description of saw swages manufactured and sold by tbem. Tbe plaintiff appeals from that part of tbe judgment which determines that tbe defendant has a right to manufacture and sell saw swages under tbe invention of 1908. Tbe defendant. Georgianna, M. White originally interposed a separate demurrer to tbe complaint, on tbe ground that no cause of action was. stated against, her, and this demurrer having been overruled on tbe ground that she was a proper party to tbe action, she' adopted tbe answer of Albert E. White as her own, and tbe case proceeded at once to trial. She now claims error in overruling her demurrer, in addition to her contentions on the-merits of tbe case.
    rFor tbe plaintiff there was a brief by Bundy & Wilcox, and oral argument by G. T. Bundy.
    
    Upon tbe subject of unfair competition they cited 28 Am. & Eng. Ency. of Law (2d ed.) 408 — 429; Oppermann v. Waterman, 94 Wis. 583, 69 N. W. 569; Lislman M. Go. v. W. Lislmcm M. Go. 88 Wis. 33, 60 N. W. 261; Fish Bros. W. Go. v. La Belle W. Worles, 82 Wis. 564, 52 N. W. 595 ; Howe S. Go. v. Wychoff, 8. & B. 198 U. S. 118, 25 Sup. Ct. 609; Singer Mfg. Go. v. June Mfg. Go. 163 U. S. 169, 11 Sup. Ct. 1002; She-ffield-King M. Go. v. Sheffield M. & B. Go. 105 Minn. 315, 111 N. W. 447. They also contended that plaintiff controlled tbe fundamental invention, hence defendant bad no right to manufacture bis third machine which utilized improvements covered by tbe earlier patents, citing O’Reilly v. Morse, 15 How. 62; Thomson-Houston F. Go. v. Ohio B. Go. 80 Fed. 712.
    For tbe defendants there was a brief by Flanders, Bottum, Fawsett & Bottum, attorneys, and James G. Flanders, of counsel, and oral argument by Mr. Flanders and Mr. O. E. 
      
      Munroe.
    
    They argued, inter alia, that tbe courts will not enforce specific performance of revocable contracts, Ulrey v. Keith, 237 Ill. 284, 86 N. E. 696; Excelsior' W. P. Co. v. Pacific B. Co. 186 U. S. 282, 22 Sup. Ct. 681; Vidor T. M. Co. v. The Fair, 123 Eed. 424; Pomeroy, Spec. Perf. see. 289; Marble Co. v. Bipley, 10 Wall. 339, 359; Bust v. Conrad:, 47 Mieb. 449, 455, 11 N. W. 265; Express Co. v. Bail-road Co. 99 U. S. 191; Park v. M., St. P. & 8. S. M. B. Co. 114 Wis. 347, 353, 89 N. W. 532; Peshtigo L. Co. v. Ellis, 122 Wis. 433, 439, 100 N. W. 834. Tbe contract witb Mrs. White did not cover tbe second invention, but superseded tbe first contract, and without an express contract plaintiff could claim no exclusive right. Hapgood v. Hewitt, 119 U. S. 226, 7 Sup. Ct. 193; Dahell v. Ember W. G. Mfg. Co. 149 U. S. 315, 320, 13 Sup. Ct. 886; American C. L. Co. v. Wilson, 198 Mass. 182, 84 N. E. 133; Johnson F. & E. Co. v. Western F. Co. 178 Fed. 819; Agawam Co. v. Jordtm, 7 Wall. 583; McClwrg v. Kingsland, 1 How. 202; Pressed Steel C. Co. v. Hansen, 137 Eed. 403; Valley I. W. Mfg. Co. v. Qoodñck, 103 Wis. 436, 78 N. W. 1096; Fuller & J. Mfg. Co. v. Bartlett, 68 Wis. 73, 31 N. W. 747. Upon tbe question of estop-pel they cited Gill v. E. S. 160 U. S. 426, 16 Sup. Ct. 322; Lane & B. Co. v. Locke, 150 U. S. 193, 196, 14 Sup. Ct. 78; Timoney u. Buck, 84 Fed. 887; Dickerson v. Colgrove, 100 U. S. 578, 580; Swain v. Seamens, 9 Wall. 254; McLean v. Dow, 42 Wis. 610. As to unfair competition they cited Paul, Trade-marks, §§ 209, 210, 215; Gorham Mfg. Co. v. Emery-Bird-Thayer D. G. Co. 104 Fed. 243; Kann v. Diamond S. Co. 89 Fed. 706; Morgan E. Co. v. Walton, 86 Fed. 605; Burgess v. Burgess, 3 De G., M. & G. 896; Bogers & Bro. v. Bogers, 53 Conn. 121, 155, 1 Atl. 807; Turtin v. Turtin, L. R. 42 Cb. Div. 128, 143; Fish Bros. W. Co. v. La Belle W. Works, 82 Wis. 546, 52 N. W. 595; Bowell v. Bowell, 122 Wis. 1, 99 N. W. 473; Marshall v. Pinkham, 52 Wis. 572, 9 N. W. 615; Dr. A. Deed C. S. Co. v. Frew, 162 Fed. 887; Magee F. Co. v. Le Barron, 127 Mass. 115; P. Lorillard Co. v. Peper, 86 Fed. 956, 960.
   WiNslow, C. J.

Mrs. White is unquestionably a proper, if not a necessary, party to this action. A substantial part of tbe relief sought consists in determining tbe rights of the plaintiff in the manufacture and sale of a certain machine covered by a patent of which she is, at least, the record owner. A complete settlement of the questions involved in the action could hardly be satisfactorily attained unless she be present as a party. Sec. 2603, Stats. (1898).

The facts in the case are very largely undisputed. Upon the disputed propositions we have quite carefully examined the evidence and have found no reason to differ with the conclusions reached by the trial judge, hence the questions to be considered are purely questions of law, and they are four in number, viz.: (1) Was the contract of November, 1896, between the plaintiff and A. F. White superseded by the contract of September, 1899, between the plaintiff and Georgianna M. White f (2) Was the machine covered by the second patent an improvement upon the machine covered by the first patent within the meaning of the two contracts ? (3) Has the plaintiff any rights in White’s third invention? (4) Should White be restrained from using the word “White” as a trademark, or from advertising and selling his third invention under the name “Improved White Swage,” or a similar combination of words which include the word “White” as an essential element ?

1. The first question must be answered in the affirmative. That the title of the patent was placed in the name of Mrs. White without consideration is undisputed. That this was merely a formal transfer and without intention to make any practical difference in the real ownership or power of control by Mr. White is hardly open to doubt. All the facts indicate tbis result. Mrs. White signed tbe second contract at request of her husband without knowing its contents. The checks for royalties, though made out in her name, went into the family bank account, against which both drew as they had occasion just as before. The business was done by White just as before. On both sides the apparent change in ownership was evidently considered merely a change in name but not in legal effect. We cannot escape the conclusion that the contract of September, 1899, was to all intents and purposes the contract of Albert E. While so far as the plaintiff is concerned, and hence that it superseded and took the place of the contract of November, 1896.

2. The second question also must receive an affirmative answer. The machine covered by the second patent seems unquestionably to be merely an improvement on the first machine; and it was so denominated by White himself in the specification of the second patent. If there were doubt about this, the evidence shows very persuasively that the parties so treated it for four years, and thus removed all question of doubt as to the matter by their own voluntary acts. Burton v. Douglass, 141 Wis. 110, 123 N. W. 631, and cases cited.

3. The trial court held that whatever rights the plaintiff might have rightly claimed in the third invention under the clause of the contract giving it the exclusive right to manufacture and sell the inventions and improvements on the original White swage “which are or may be invented or added thereto,” it had estopped itself from now claiming any right therein by its conduct in allowing Mr. White to proceed and make patterns and models in its own shop at a considerable cash outlay for materials, workmanship, etc., paid by him to the plaintiff, with the full knowledge and understanding of its rights and of the intention of Mr. White to use those patterns and models in a shop of his own in manufacturing swages under the third invention. Here are all the elements of a complete estoppel, and hence the third question must be answered in the negative.

4. The last question is not so much a question of trademark as of fair or unfair competition in trade. It is certain that the plaintiff had at great expense and by efforts extending over a number of years established a market and a reputation for the “White Saw Swage.” It had for years used the names “White Saw Swage,” “New White Swage,” and “Improved White Swage” in its advertising and its catalogues with the express approval of Mr. White, indicated over his own signature in the catalogue issued in 1905. Evidently he was willing and even desirous that the machines manufactured by the plaintiff under the first and second patent should become known to the trade and to the public generally as the “White Swage,” the “New White Swage,” and the “Improved White Swage.”

It is unquestionably true that a man’s name is his own property, and he has the right to every honest and fair use of it, just as he has to every honest and fair use of his other property. There may be cases, however, where he may be enjoined from using his own name in certain ways. The principle is very clearly stated in the case of Russia C. Co. v. LePage, 147 Mass. 206, 17 N. E. 304, as follows:

“Every one has the absolute right to use his own name honestly in his own business for the purpose of advertising, it, even though he may thereby incidentally interfere with and injure the business of another having the same name. In such case the inconvenience or loss to which those havjng a common right to it are subjected is damnum, absque injuria. But although he may thus use his name, he cannot resort to any artifice or do any act calculated to mislead the public as to the identity of the business firm or establishment, or of the article produced by them, and thus produce injury to the other beyond that which results from the similarity of name.”

Singer Mfg. Co. v. June Mfg. Co. 163 U. S. 169, 16 Sup. Ct. 1002; Herring-Hall-Marvin S. Co. v. Hall’s S. Co. 208 U. S. 554, 28 Sup. Ct. 350.

The name of a person may become so bound up with a particular product that the attaching of the name to a similar and later product would hare the effect of a false representation that it was in fact the original product. The idea is thus expressed, with plentiful citation of authorities, in 38 Oyc. 811:

“Where a personal name has become the trade-name for particular goods, another person of the same or a similar name may not use such name as the trade-name for similar goods, or in such a way as to cause his goods to be known and called for in the market by the same name as his rival’s goods are already known to, and called for by, the purchasing public.”

Such is the case here. The swages manufactured by the plaintiff have become favorably known to the trade and purchasing public by the name of the “White Swage” or the “Improved White Swage.” Now, while Mr. White may rightfully manufacture and sell his newly invented swage, using his own name, he obviously ought not to be allowed to mislead the public into believing that it is the swage long manufactured by the plaintiff that he is selling.

This we understand to be the true meaning of the judgment on this branch of the case. Mr. White may use his own name in his business, either separately or as part of the name of a firm or corporation, and may advertise the fact that he is the inventor of the swage which he is selling. He may also advertise that he makes and sells a saw swage, an improved saw swage, or a new saw swage, for none of these words can be appropriated by any one, — they are public. But he is debarred from advertising or designating his swage by such combinations of words as the “White,” or the “White Saw Swage,” or the “Improved White Saw Swage,” because thereby he is likely to deceive customers, and lead them to suppose that he is making and selling tbe product long known to tbe trade, witb White’s knowledge and consent, under those or very similar names.

It is suggested that tbe case of Fish Bros. W. Co. v. La Belle W. Works, 82 Wis. 546, 52 N. W. 595, bolds a somewhat different doctrine. In that case tbe defendants were permitted to use their own names and even tbe rebus of a fish, although tbe plaintiffs bad acquired by purchase of their former business tbe right to use those names and tbe .rebus as a trade-mark. Tbe question arose upon an application for a preliminary injunction, not after trial, and there were no facts showing that actual injury bad resulted to tbe plaintiffs. This court held that, tbe defendants could lawfully apply to tbe wagons made by them their names and tbe rebus, provided they did it in a way not calculated to induce persons to buy tbe same as and for those manufactured by tbe plaintiffs. It was further said, “their advertisements and marks must truthfully and in good faith refer to their own manufactures, trade, and business, and not to those of the plaintiffs.” Thus the case recognized the principle that the names must not be used in a way to deceive the purchasing public. In that case, as before stated, there was no proof of actual deception or injury; but in the present case there is not only proof, but a •finding to that effect, and hence we cannot regard anything actually decided in that case as contrary to the principle decided in the present case.

In one respect the judgment is too sweeping and must be modified. It adjudges that the plaintiff has the exclusive right to manufacture and sell the saw swages covered by both the first and second patents during the “life of said patents,” and enjoins the defendants from manufacturing or selling the same during such period.

The contract which governs the rights of the parties, namely, the second contract, grants the exclusive right “to the full end of the term of said patent, subject to the conditions hereinafter named.” The patent there referred to, and the only one then existing, was the first patent, issued August 3, 189J, and expiring in 1914, hence the exclusive right must terminate at that time, and the judgment must be so modified. It must be further modified by adding to the adjudication of the exclusive right during the life of the' first patent a clause providing that such right is subject to termination under the provisions of the fourth subdivision of the second contract.

With these modifications the judgment must be affirmed on both appeals.

By the Court. — It is so ordered. No costs are allowed to either party, except that the fees of the clerk of this court shall be taxed and paid by the defendants.

Siebecker, Kerwin, and TxmliN, JJ., dissent from that part of the decision which affirms the injunction below prohibiting the use by defendant of. his name.  