Robertson v. Berry

Miller, J., delivered the opinion of the Court. This appeal is from an order granting an injunction restraining the appellant from publishing and circulating a certain almanac for the year 1879, known as “T. G. Robertson’s Hagerstown Almanack,” with the same emblems, devices, marks, representations, title and back outside pages, style, shape and general appearance as have characterized the publications of the same for previous years, and from printing, publishing and circulating any other almanac in colorable imitation of the almanac of the complainants, known as “J. Gruber’s Hagerstown Town and Country Almanack,” and calculated to deceive and impose ⁵⁹⁶ upon the public, and to create in their minds the belief that such almanac is really and truly the almanac of the complainants. In determining whether this order shall be affirmed or reversed this Court is confined to the case made by the bill and exhibits, without reference to the averments of the answer which appears in the record. McCann vs. Taylor, 10 Md., 418 .

It is immaterial to the decision of the case, in the view we have taken of it, whether the devices, marks, pictures and words, in the manner in which they are collocated and combined upon the two outside pages of the complainants5 almanac, be regarded as a trade-mark proper or as wrappers or labels, or as the title or the particular external marks which an author or publisher affixes to his work to distinguish it, because the grounds of relief in equity are substantially the same in either case. A publisher or author has either in the title of his work or in the application of his name to the work, or in the particular marks which designate it, a species of property similar to that which a trader has in his trade-mark, and may like a trader claim the protection of a Court of equity against such a use or imitation of the name, marks or designations, as is likely in the opinion of the Court to be a cause of damage to him in respect of that property. Kerr on Injunctions, 478; Browne on the. Law of Trade-Marks, sec. 553.

This doctrine, in cases where the facts are sufficient to sustain it, has been held applicable to such periodical publications as newspapers, magazines, and almanacs. Matsell vs. Flannagan, 2 Abb. Pr., 459 ; Hogg vs. Kirby, 8 Ves., 215; Spottiswoode vs. Clark, 10 Jurist, 1043. But here, as in cases of trade-marks proper, the complainants must show a property right in themselves, and a fraudulent or colorable imitation by the defendant, and we shall therefore proceed to consider whether these two essential requisites to relief in equity are made out by the hill and exhibits before us. ⁵⁹⁷ 1st.

And first, assuming the complainants or some of them have established their own right to the symbols, marks and devices, as used on their almanac, has there been such an imitation of them by the defendant on her almanac, as to entitle the former to have the publications by the latter enjoined? Upon the question of resemblance, the authorities all agree that it is impossible to lay down any general rule as to what degree of resemblance is necessary to constitute the fraudulent or colorable imitation. All that can be done is to ascertain in every case as it occurs whether there is such a resemblance as that ordinary purchasers purchasing with ordinary caution are likely to be misled. Kerr on Injunctions, 483; McLean vs. Fleming, 6 Otto, 245 .

In the case last cited there is a very complete review of the authorities, and the Court says, that “much must depend in every case upon the appearance and special characteristics of the entire device; but it is safe to declare, as a general rule, that exact similitude is not required to constitute an infringement or to entitle the complaining party to protection. If the form, marks, contents, words, or the special arrangement of the same, or the general appearance of the alleged infringer’s device is such as would be likely to mislead one in the ordinary course of purchasing the goods, and induce him to suppose that he was purchasing the genuine article, then the similitude is such as entitles the injured party to equitable protection, if he takes seasonable measures to assert his rights and to prevent their continued invasion.” In the case of Seixo vs. Provezende, Law, 1 Ch. Appeals, 192, Lord Chancellor Cranworth expresses substantially the same views thus: “what degree of resemblance is necessary from the nature of things, is a matter incapable of definition a priori. All that Courts of justice can do is to say that no trader can adopt a trade-mark so resembling that of a rival as that ordinary purchasers purchasing with ordinary caution are likely to he misled.

It ⁵⁹⁸ would be a mistake, however, to suppose that the resemblance must be such as would deceive persons who should see the two marks placed side by side. The rule so restricted would be of no practical use. If a purchaser looking at the article offered him would naturally be led, from the mark impressed on it, to suppose it to be the, production of a rival manufacturer, and would purchase it in that belief, the Court considers the use of such a mark to be fraudulent.” Among other authorities to the same effect, and as having an important bearing upon the case before us, we refer to Holloway vs. Holloway, 13 Beav., 209; Amoskeag Manufg. Co. vs. Spear, 2 Sandf, 599 ; Swift vs. Day, 4 Robertson’s Sup.

Ct., 611; Williams vs. Johnson, 2 Bostworth, 1; Lea vs. Wolff, 15 Abb. Pr., (new series,) 1; Gillott vs. Esterbrook, 47 Barb., 455 ; Burke vs. Cassin, 45 Cal., 467 ; Boardman vs. Meriden Britannia Co., 35 Conn., 402 ; Howard vs. Henriques, 3 Sandf, 725 ; Knott vs. Morgan, 2 Keen, 213 ; Perry vs. Truefitt, 6 Beav., 66 ; Croft vs. Day, 7 Beav., 84; Wotherspoon vs. Currie, 22 Law Times, (new series,) 260; and Canal Co. vs. Clark, 13 Wallace, 322. In the present case we are clearly of opinion, the imitation is such as is well calculated to mislead ordinary persons purchasing with ordinary care. It is unnecessary, even if it were practicable, to present a detailed description in words, showing the resemblance of the first or title pages of these two almanacs, as it appears to the eye.

It is plain enough to the eye of the observer, but difficult to be described. There is a difference in the names and in some of the words used, and there are several marks of distinction in the symbols or pictures and the border enclosing them, which a careful inspection soon discloses, but there is exact similitude in the color, size, shape, and, in the different type in which the more and less prominent words and figures are printed, as well as in the paper and binding of each. These make the resemblance at first sight quite sufficient to deceive the “ ordinary run of per ⁵⁹⁹ sons,” even if the two were lying side hy side on the counter of a hook-store, or in a newspaper stall, while the hack outside pages of each are in every respect identical. This part of the complainants’ case is, in our opinion, clearly made out. 2nd.

As to the property right. On this subject the authorities all declare that the right of property in the plaintiff must he clearly shown. Witthaus vs. Mattfeldt & Co., 44 Md., 803. From the averments of the hill, to which we are confined, it appears that about the year 1835, John Gruber, the ancestor of some of the complainants, commenced the publication of an almanac to which he gave the name of “ J. Gruber’s Hagerstown Town and Country Almanack,” and for the purpose of distinguishing it from all other publications of almanacs he adopted and made use of certain devices, emblems, representations, marks and pictures, which he combined and collocated in a manner entirely new and original, and these are the same as those now used on the almanac of the complainants.

He continued this publication annually from 1835 to his death in 1858, and