
    Philetus Stephens, plaintiff, vs. Jose Ferrer DeCouto, defendant.
    1. What right of property there may he in what is commonly denoted the “good will” of a business, is not fully determined; but such property, whatever it is, has never been protected, except where it has been made the subject of some expres’s covenant between the parties. It may be sold by private agreement, and the stipulations of the parties in respect to it will be enforced; but in the absence of any covenant, and upon a purchase at an involuntary sale, the vendee is not subrogated to all the rights of the original owner. Per Monell, J.
    2. Hence, the purchaser of a newspaper establishment, including the subscription list and good will, at a sale thereof by the public administrator, will not acquire such a right of property in the name or title of the newspaper, as will prevent its being afterwards assumed by another person. ■
    3. The protection which the law has afforded to trade-marks has never, it seems, been extended over any thing that was the subject of a patent or a copyright, but is confined to appropriations of names designating some particular manufacture or business.
    4. There can be no such property in a newspaper, except, perhaps, in the ‘ name or title of the paper. The law of trade-marks, like the law of copyright, pannot be applied to a work of so fluctuating and fugitive a character as the contents of a newspaper.
    6. Although a newspaper proprietor may appropriate, and by long use acquire a property in a name, which the courts will protect as a trade-mark, against the assumption of such name hy another proprietor, that is the extent of the rule; and any mere assimilation of the name, unless it is very clearly calculated to deceive the public, will not be unlawful.
    6. An injunction will not be issued, in an action brought by the proprietor of a newspapaper, to restrain another from issuing or publishing a newspaper bearing a similar name to that owned by the plaintiff; where there is no sufficient evidence that the public has been deceived, and the names of the two papers are so dissimilar in signification that no one acquainted with the language in which they are printed could be decoyed into purchasing the one for the other.
    (Before Monell, J, at special term,
    March —, 1868.)
    In this action the plaintiff songht for a judgment restraining the defendant from issuing, editing, printing or publishing a newspaper called El Cronista.
    
    
      It was alleged that about fourteen years since a newspaper was published in the city of Hew York under the name of La Crónica,' by one Manuel DePena, in the Spanish language, which obtained a large circulation and exercised a wide influence in all the principal commercial or maritime cities of Horth and South America. That in April, 1865, DePena. died, being indebted at the time to the plaintiff in the sum of $1000, leaving as assets of his estate the said newspaper and a large amount of material used in its printing. DePena was a native of Spain, and never became a citizen of the United States. Upon his death his widow took possession of the newspaper and assets, and. in July, 1865, formed a partnership with the defendant to continue its publication; and its publication was continued under the same name of La Crónica, in the same form and description of type, until May,, 1866, when a symbol was placed over the title of the paper, and the title printed in a new form and with a new description of type. On the fourth of May, 1867, the title or name of the newspaper was changed from La Crónica to M Cronista. The symbobplaced over the name the previous year was retained, and the name or title printed in new and different type. Under the latter name, and in the latter form, it was being published at the commencement of this action. At different periods of its publication, commencing as far back as 1862,. and ending at the time of the trial in January, 1868, the paper was issued of different sizes and of different type. In April, 1867, the public administrator of the city of Hew York, in virtue of his office, took possession of the printing material and property connected with the paper, and subsequently sold at public auction the right, title, and interest which DePena had in his lifetime, in the newspaper called La Crónica, including the subscrip: tion list, and good will thereof, and in the aforesaid printing material and other property connected therewith; at which sale the plaintiff became the purchaser.
    It was proved that in 1867, prior to the sale, the newspaper called La Crónica was claimed as the joint property of the widow of DePena and the defendant; but upon the change of name in May of that year from La Crónica to M Cronista, the latter paper became the sole property of the defendant, and was thenceforth edited, printed, and published by him, with new type purchased by himself. It was also proved that the symbol placed over the name of the paper, published by the defendant and Mrs. DePena, in May, 1866, was the private symbol, insignia or emblem of the defendant.
    There was no proof that the defendant was in possession of, or was using, any of the printing material or other property alleged to have belonged to DePena.
    The action was tried without a jury.
    
      T. B. Eldridge, for the plaintiff.
    
      H. H. Morange, for the defendant.
   Monell, J.

Eo evidence was given or offered on the trial of this action, proving or tending to prove that any portion of the material used in printing the paper called La Crónica, and claimed to have been purchased by the plaintiff, was in the possession of the defendant at the commencement of the suit. Such property, if it existed, had previously gone into the possession of DePena’s widow, who claimed it under the Spanish law, as the heir-at-law of her husband; or it was being administered by her as administratrix de son tort. In either case she alone could be called to account for it. But there was evidence that the type and material used in printing the paper, the publication of which is sought to be enjoined, was purchased hy and belonged to the defendant. So much, therefore, of the plaintiff’s case as demanded an accounting by the defendant for such property, fails for the want of proof to support it; and the controversy is, accordingly, reduced to the single question of the right to restrain the future publication by the defendant of the paper called El Cronista.

The plaintiff’s claim to the restraint'was founded upon his purchase, at the public administrator’s sale, of the interest of DePena in the newspaper called La Crónica, which the plaintiff claimed embraced, not only the type, cases and presses used in printing, but also the exclusive right to the name and the good will connected therewith; and that, therefore, the publication by the defendant of a newspaper bearing the same name, or of any name, so similar in its appearance to the eye or in its sound to the ear, as was calculated to deceive the public into the belief that they were the same, was an invasion and infringement of his proprietary right in the former paper.

It was not disputed that DePena, at the time of his death, was the sole proprietor of La Crónica ; nor that the plaintiff acquired all the interest of DePena in such publication. And it was conceded that Mrs. DePena and the defendant, under a copartnership agreement, continued the publication of the paper from the period of DePena’s death, until the 4th of May, 1867, without any material change, either in the name or in the typographical or general appearance, or in the size and form of the paper. On that day, however, the publication of La Crónica ceased, and with its cession, the joint interests of Mrs. DePena and the defendant in such publication also ceased. Thereupon, and before the public administrator’s sale, the publication of El Cronista was commenced by the defendant as its editor and sole proprietor.

I need not stop to ascertain what proprietary interest, if any, Mrs. DePena had in the publication of her deceased husband; nor under what right the publication was continued after his death. She at least was in possession, assuming the right to continue the publication for her own emolument and was dispossessed, if at all, by an involuntary sale of her husband’s interest or property in the paper. Whatever right of property there may be in what is commonly denoted the “good will,” is not fully determined, but such property, whatever it is, has never been protected, except where it has been made the subject of some express covenant between the parties. It may be sold by private agreement, and the stipulations of the parties in respect to it will be enforced; but in the absence of any covenant, and upon a purchase at an involuntary sale, the vendee is not subrogated to all the rights of the original owner. This was the view intimated in respect to “ copyrights ” in Stephens v. Cady, (14 How. 528,) and see McCardel v. Peck, (28 How. Pr. 120.) Hence, it would seem to follow, that whatever the plaintiff may have purchased, he did not acquire such a right of property in the name or title of La Crónica as would prevent its being assumed afterwards by another person.

If this case was to be determined solely upon whether the similarity, if it could be established there was any, of the names La Crónica and SI Cronista, could mislead the public into the belief that they were the same, and hence that the latter was a mere simulation of the former, I should have no difficulty in reaching the conclusion, upon the evidence, that no such effect would or could result. An inspection of the several issues which were produced before me, disclosed such marked differences in the size, heading, typographical and general appearance of La Crónica, as published by DePena in his lifetime, and the paper of the same name, issued by his widow and the defendant afterwards, that the issues of the later period, would not, as I believe, be mistaken for or be regarded as a non tin-. nation of the earlier'publication. And, independently of the clear difference'in the signification of the names La Crónica and El Cronista, the one, according to the testimony of a highly educated and very intelligent Spanish witness, meaning'“ the chronicle,” and the other “the chronicler,” the one' “being the thing done, and the other the one that' does it,” there is so manifest a dissimilarity in the "general appearance, both as respects the formation of the words and the character of the type employed in printing, that, as the witness before alluded to said, “ no Spaniard could be mistaken.”

The case, however, in my judgment, is relieved of all difficulty, inasmuch as it clearly appears that upon or prior to the publication of El Cronista the publication of La Crónica had ceased. For, I think, it cannot be successfully claimed that one was merged in or was even a continuation of the other. La Crónica was printed with .the type and upon the presses of the original proprietor, under a copartnership arrangement between Mrs. DePena and the defendant, whereas El Cronista was the sole property of . the defendant, both in the adoption of its name and in the type used in its printing. Unless therefore it can be sustained that the proprietorship of a newspaper is so exclusive and comprehensive that its rights would be invaded by a publication of another newspaper bearing a different, title órname, the defendant’s publication cannot be claimed-to be an infringement of any of the plaintiff’s rights. I do not understand that theprotection which the law affords to “trademarks,” even assuming the name of a newspaper to be a trademark, goes so far as is claimed in this case. The protection" which has been granted .to that species of property has never, I believe, been extended over any thing that was the subj ect of a patent or a copyright, but is confined to appropriations of names designating some particular manufacture or business. There can be no such property'in a newspaper, except, perhaps, in the name or title of the paper, which is the only continuing portion of it. The contents of each issue are the composition or creation of the editor or contributors, aré varied each day, and when given to the public all literary proprietorship in them is lost. And the law of trademarks, like the law of copyright, cannot be applied to a work of so fluctuating and fugitive a character. (Clayton v. Stone, 2 Payne, 392.)

. I do not mean to say that a newspaper proprietor cannot appropriate, and by long use, acquire a property in a name, which the courts will protect against piracy. In this respect the analogy of the rules of trademark would apply, (Dayton v. Wilkes, 17 How. Pr. 510.) And “I have no doubt that the names, so long appropriated and used, of the New , York Herald, or ■ The Sun, would be protectéd as trademarks, against the assumption of those names by another proprietor. But that I understand to be the extent of the rule, and that any mere assimilation of the name, unless it was very clearly calculated to deceive the public, would not be unlawful.

There was not sufficient evidence on the trial that the public had been deceived. The plaintiff’s evidence, and that of his only witness, was of too general a character to establish so important a fact. Besides, it was more than" balanced by the evidence on the part of the defendant before alluded to, that the names of the two papers were so dissimilar in signification, that no one acquainted with the Spanish language could be decoyed into purchasing the one for the other. And the inspection which I have given of the several papers which were made exhibits before me, has confirmed me in the same'belief. Upon the whole case, therefore, l am of opinion that the defendant is entitled to judgment dissolving the injunction, and dismissing the complaint, with costs.  