
    John McLoughlin and Others, Appellants, v. Jane C. Singer and Jasper C. Singer, Respondents.
    
      Injunction — right to restrain unfair competition—the imitation, of an un copy - mghted label — evidence that persons were actually misled,, not required—preliminary injunctions granted, only in 'clear cases.
    
    In an action brought to restrain the defendants therein from using the alleged trade mark or trade name and label of the plaintiffs, it appeared that the plaintiffs, the vendors of a game, prepared a colored label to be used on a box containing the game board, to which they gave the name of “ Game of District Messenger Boy,” and caused a book of instructions to be copyrighted, and thereafter continued to manufacture and sell the game put up in a box, to which the colored label was affixed; that, as the result of advertising, the game “ obtained quite a reputation as one of plaintiffs’ best games ; ” and that subsequently the defendants began the manufacture of a game, known as the “ Messenger Boy,” which they put up in boxes, to which similar labels were attached, the game being inferior to that of the plaintiffs and the sale of it being calculated to greatly injure the reputation of the plaintiffs’ game and result in a decreased sale of it.
    It was not denied that the defendants’ label was an intentional imitation of the plaintiffs’, and, on its face, had a tendency to mislead persons and cause them' to mistake it for the original label on the plaintiffs’ goods.
    
      Held, that the plaintiffs were entitled to an injunction to prevent an infringement of their label, as the defendants’ label was a palpable imitation of that of the plaintiffs and the facts established an unfair competition;
    That it was not necessary that the plaintiffs should show that persons were actually deceived by the defendants’ label;
    That the plaintiffs had a right to adopt a label in the sale of their goods, even though it did not amount, strictly speaking, to a trade .mark, and that the defendants were not entitled to enter into an unfair competition with them in their business by putting up a similar article of unquestioned inferiority and placing it in packages so similar to those of the plaintiffs that the public were liable to be deceived, and thus palm it off on the unwary to the detriment of the plaintiffs’ business.
    McLaughlin, J., dissented.
    The practice is not to grant preliminary injunctions in actions of this kind, except in very clear cases.
    Appeal by the plaintiffs, John McLoughlin and others, from an order of the Supreme Court, made at the New York Special Term and entered in the office of the clerk of the. county of -New York on the 9th day of May, 1898, denying the motion of the plaintiffs for an order restraining the defendants from using the trade mark or trade name and label of the plaintiffs. •
    
      A. Bell Malcomson, for the appellants.
    
      Louis C. Raegener, for the respondents.
   O’Brien, J.:

Upon the motion below it appeared by affidavits that in 1886 the plaintiffs prepared a colored label to be used on a box containing a new. game board introduced by them and to which they gave the name of “ Game of District Messenger Boy.” There was a chart or board of the game and a book of directions, which latter was sent to the Librarian of Congress and duly copyrighted. Since that time the plaintiffs have continued to manufacture and sell the game,, put up in a box upon which the .colored label is affixed, and as the result of advertising, it has obtained quite a reputation as one of plaintiffs’ best games.” The defendant, Jasper H.. Singer, began to make an article, and put it up with- a label on boxes containing it, some time just prior to 1897, when, having made an assignment for the benefit of creditors, the .business was subsequently bought in and conducted by his .wife, the other defendant, Jane 0. Singer, under the superintendence of her husband.

The similarity in the two labels is apparent on the barest inspection, and we do not understand that the fact that they are similar is at all in. dispute. ■ The position taken by the defendants is stated in the affidavit of one of them in the following language : I am advised and believe that plaintiffs might possibly have obtained a copyright upon the design contained upon the box cover, provided the same involved any originality; but the very fact that they did not obtain a copyright for such design is. an abandonment and dedication to the public of such design, and, therefore, I have a perfect right to copy it literally if I see fit so to do.” This position is emphasized by the counsel for the respondents, who insists that “ after the publication of this new game and new design everybody had the right to publish the saíne game and the same picture, unless by so doing he infringed upon plaintiffs’ .trade marks, provided they had any, or the sale by such other person was an unfair competition in trade.” The latter statement, of course, is a modification of the broad proposition that: the defendants had a right to appropriate, not alone the game, but also the label by which it had'been advertised and become known to the public. The concession, however, that unfair competition in trade may be enjoined, we think is sufficient, with the other facts appearing, to justify the court in awarding an injunction.

We have the statement presented by one Kallenbach, who has been familiar with such matters for thirty years, that the game prepared and sold by the defendants under the name of Messenger Boy,” is inferior to the plaintiffs’, and that the sale of such imitation game will greatly injure the reputation of the plaintiffs’ Messenger Boy game and result in decrease of the sale of the plaintiffs’ game. Without discussing the moral standard which the defendants set up, of their right to take advantage of the plaintiffs’ ideas in originating the game and advertising so as to create a demand, or their right to get some advantage from the trade and demand thus created and to .reap a profit from selling an inferior imitated article, we shall confine ourselves, assuming the defendants have such right, to the real ■ point in this case, as to whether upon such sale they can also make use of a similar label to the one employed by the plaintiffs.

Not only do the affidavits show, but there is no denial, that the defendants’ label is an intentional imitation of the plaintiffs’,, and on its face has a tendency to mislead persons to mistake it. for the original label on the plaintiffs’ goods. This imitation or similarity of the two labels is apparent throughout. Thus, from the top to the bottom, whether we take the coloring, rainbow shape, proportion of circle at the top, or the picture of buildings in the background and a messenger boy in front, or the figure and position of the boy, and the arrangement of the border at the base, the two labels are substantially the same; and that they were not exactly the same could only be determined by close inspection. In the right-hand corner, the cards have different< printed matter upon them, but the branch of leaves and flowers is copied down to the very number of flowers, there being" the same number on each. •

It is suggested that the failure to show that persons were actually • deceived is fatal to the plaintiffs’ right to relief by injunction. This contention, however,- is disposed of by the case of Vulcan v. Myers (139 N. Y. 367), wherein it is said : “ No evidence was given or offered to show that any person had actually been deceived by the imitation of the plaintiff’s trade mark, and we think that none was necessary for the .maintenance of the .action; It is the liability to deception which the remedy may be invoked to prevent. It is sufficient if injury to the plaintiff’s business is threatened or imminent to authorize the court, to intervene to prevent its occurrence. The owner is not required to wait until the wrongful use of his trade mark has ■been continued for such a length of time as to cause some substantial pecuniary loss.”

The motion was denied in the'court below, for the reason that it was thought that- the label was merely descriptive of the article sold. .We think that in this the learned court fell into error. It may be that the name'“ District Messenger Boy,” separated from the label, might give some idea of what the.game was about, it appearing when examined that it deals with the career of a messenger boy, but even if this could he held to be descriptive of the game, and we do •not-think it can, what connection has it with the conceded simulation of the coloring, the rainbow half circle at the top, the branch of flowers at the bottom; or the style and shading of the figures and letters, as relating to. the description.of the article ? Certainly the ' figure of the boy running is not descriptive, there being no contention that there is a running boy in the box, or any rainbow or bunch of flowers- therein.

Equally without force is the contention that the plaintiffs are entitled .to no relief because, they have not shown that the label used was theirtrade mark. One has the right to adopt a label in the sale .of goods; and even though it does not amount, strictly speaking,, to a trade mark, this does not permit another to enter into an unfair ■ competition with him in his business by getting up a similar article (here unquestionably inferior) and placing it in packages so alike tliat the public are .liable to. be. deceived, and" thus palming it; off on the unwary to-the'detriment of the originator. We do not think, however, that this subject requires further elaboration,.it being fully covered by the decision of this court in Day v. Webster (23 App. Div. 602), in Which the very question here presented as to' the basis' of the plaintiff’s claim,, and as to the effect of failure to show that others had been deceived, was considered, and the further "question also discussed as to the cases where it is necessary to produce evidence of similarity. It was ¡therein .said: “What they claim) therefore, is, in substance, unfair competition; that is, that the defendants are fraudulently attempting to pass off their goods as the goods of the plaintiffs. The question thus is, have the plaintiffs proved this charge of fraud % In the case of a technical trade mark to which the plaintiff shows a property right, fraud is not the essence of the claim. That property right may be infringed unintentionally as well as fraudulently, and the innocent infringement will be restrained irrespective of the question of intention. Not so, however, where the question is solely one of unfair competition. There, fraud is the essence of the claim. It is true that the similarity of the alleged wrongdoer’s label may be so great that fraud will be inferred from a' mere inspection of the respective labels. Where, howbver, the similarity is not so great as, upon a mere inspection, to warrant the conclusion of fraud, resort may be, and usually is, had to evidence aHunde.”

In the case at bar the similarity between the two labels, as stated, appears upon the barest inspection and is not seriously disputed, the position of the defendants being, as shown, that having a right to manufacture the game because it was dedicated to the public by the plaintiffs when they made it and put it upon the market without having it protected by a trade mark, the defendants have the further right to appropriate the label adopted by the plaintiffs and placed upon the box containing the game when ready for sale.

The practice is not to grant preliminary injunctions except in very clear cases, but the present, we think, clearly falls within the exception, for little could be added upon the trial to the showing made by the plaintiffs as to the palpable imitation of their label, or to the facts showing unfair competition.

We think, therefore, that the order below was wrong and should be reversed, with ten dollars costs and disbursements, and the motion granted, with ten dollars costs to abide event.

Van Brunt, P. J., Barrett and Rumsey, JJ., concurred; McLaughlin, J., dissented.

Barrett, J.:

I agree with Mr. Justice McLaughlin that ordinarily it must be shown in this class of cases — that is, in cases of unfair competition — that the resemblance of the labels is not only calculated to,.but does-in fact deceive.. The.defendants’ 'label here, however, is not merely calculated to — it cannot, fail. to deceive. The resemblance to- the plaintiffs’ label is too Striking to call for proof of actual deception. The defendants’ label is in fact' ostentatiously similar to the plaintiffs’,, and flagrantly fraudulent. Indeed, there is no attempt to defend- it except upon the. ground that the defendants have a legal right to sell this particular game and. to use this particular device^whether such sale and use effect deception or. not. Thus, the bare inspection of these labels, proves the plaintiffs’ case and entities'them to á decree. I, therefore, concur with Mr. Justice O’Brien.

McLaughlin, J. (dissenting):

The plaintiffs’ right to maintain this action'lsjbased on the theory ' that the use of the label by defendants is an unfair and dishonest competition in trade on their part, In other words, the plaintiffs in effect claim that the defendants, by the use of the label, are fraudulently attempting to sell their goods ás the goods of the plaintiffs. To entitle-.the .plaintiffs -.to recover they must riot' only allege in their complaint, but they must prove upon the trial, that the resemblance of the labels is not only calculated to, but that the same does in fact) deceive the ordinary buyer. This is precisely what the Court of Appeals declared in Fischer v. Blank (138 N. Y. 252) was necessary to be established to entitle a' plaintiff to recover in an action of this character. Judge Maynard, in delivering the opinion of the court-in that case, in which all of the judges, concurred,'said “ the true test, we think, is whether the resemblance is such that it-is calculated to deceive, and does in fact deceive the ordinary buyer-making his-purchases under the ordinary conditions- which .prevail in the conduct of the particular traffic to which the controversy relates.” In the case now before us no proof -whatever was pre- - sen ted to' the Special Term that- any one had in fact been deceived by the defendants’ use óf the label, and we have no right in the absence of proof to, infer that.'.they will be. . .

-For this reason the learned justice at Special Term was right in denying the motion.

- Order reversed, with ten' dollars costs and disbursements, and motion granted, with ten dollars costs to abide event.  