Whitehurst v. Rogers

Bowie, J., delivered the opinion of the Court. The appellant sued the appellee in the Superior Court of Baltimore City, on the 8th of September, 1871, declar ⁵⁰⁹ ing against him originally in two counts, but afterwards, by leave of the Court, adding a third. The first charges that the appellant, being tbe manufacturer of a valuable specific, a preparation which at great expense he advertised and caused to be widely known by the name and trade-mark of “Forrest’s Juniper Tar,” by which it had acquired great reputation, etc., and whereby the appellant had acquired a valuable property in said name and trade mark, etc., the appellee well knowing the same, and disregarding the rights of the appellant at sundry times, between the 4th of February, 1889, and the commencement of the suit, unlawfully infringed said trade-mark, and appropriated said name, and manufactured and sold, under the said name of “Forrest’s Juniper Tar,” and put up in bottles closely resembling those used by the appellant, and calculated and designed to deceive and defraud the public, a fraudulent and spurious article, calculated to bring The Forrest Juniper Tar, sold by appellant, into discredit, prevent the sales of the appellant, and destroy the reputation of the specific, manufactured and sold by the plaintiff, to the great damage and injury of the appellant. The second count charged in substance, that the appellant manufactured and sold divers large quantities of a certain valuable specific, called “Forrest’s Juniper Tar,” which he was accustomed to sell in small oval bottles of a peculiar size and shape, wrapped up and labelled “Forrest’s Juniper Tar,” which had acquired great reputation, whereby the appellant gained great profit, the appellee on the 4th of February, 1869, and on divers other days and times before, etc., did prepare and make, etc,, 25,000 bottles of a compound, in imitation of the specific of the appellant, and did wrap and label the same, with wrappers and labels, bearing the title “Forrest’s Juniper Tar,” in order to denote it as the genuine specific, and sold the same for his own lucre fraudulently, etc. ⁵¹⁰ The third count'charges that the appellant was the proprietor of Forrest’s Juniper Tar, and a certain other specific known as “Forrest’s preparation from the Oil of Tar,” and the appellee, well knowing the same, disregarding the rights of the appellant, on the 4th of February, 1869, and divers other days, etc., did wrongfully, injuriously, etc., prepare, make and sell 25,000 bottles of the last mentioned specific, in fraud of the appellant’s right to prepare and sell the same, and put up and label the same, with the labels, etc., of the first mentioned specific, so as to cause the same to bear the same name, with that prepared and sold by the appellant, whereby he caused great interruption and hindrance to the sale of the first mentioned specific, and great loss and injury to the appellant.

To which several counts, the appellant pleaded, first, a former action brought by the appellant against the appellee, “at-the trial of which the sole question presented for the consideration of the jury was the question as to the right to the use of the said trade-mark, and the verdict and judgment was for the defendant,” which judgment is still in force and of record in said Court. Secondly, the appellee further pleaded, that the appellant was not the owner of the trade-mark mentioned, in the declaration, but that one John M. Forrest was the owner, under whose license and authority the appellee manufactured and sold the said Juniper Tar, under the said trade-mark. On which pleas, issues were joined ; it is said in the appellant’s brief that the general issue was pleaded, but we find no such plea in the record. It would seem from the issues joined, the only questions submitted to the jury were, whether in a former action between the appellant and appellee, the appellant sought to recover damages, for infringing the same trade-mark, in the same manner as complained of in this, and in said action, the appellant’s right to said trade-mark was ⁵¹¹ denied by the appellee, and verdict and judgment were rendered therein for the defendant.

Secondly, that the appellant was not the owner of the trade-mark', the infringement of which was complained of, but the same belonged to one John M. Forrest. Three bills of exception were taken by the appellant at the trial below. The first to the exclusion by the Court of a letter of J. M. Forrest, (designated as the 4th letter) offered by the appellant, but objected to by the appellee. Second.

To the admission by the Court of the testimony of John II. Warner, counsel of the appellee in the former trial, to show what were the issues presented and decided in the former trial. Third. To the refusal of the prayers of Ihe appellant, and- granting of those of the appellee, and theinstiuction of the Court given in place of the appellant’s eighth prayer.

The appellant’s counsel have made no specific objection in their brief, or argument, (as far as recollected) in this Court, to the rulings of the Court, in the first and second bills of exception. As to the first, it is apparent that the letter is only an overture for compromise of the disputes between the writer and the appellant; written some time after the alleged mutual release of all contracts, between the appellant and Forrest; and according to the testimony of Rogers, after he had been induced by that release to enter into relations of business with him. Under these circumstances, the letter, if relevant to the matters in issue, was “res inter alios,” and therefore properly excluded. There can he as little doubt as to the propriety of the decision involved in the second bill of exception.

The general principle as to the mode of establishing the identity of the right, or subject decided in a former ⁵¹² action between the same parties, is thus announced by Greenleaf in his “ Evidence,” section 532, part in., ch. 5. “When a former judgment is shown by way of bar, whether in pleading or in evidence, it is competent for the plaintiff to reply, that it did not relate to the same property, or transaction in controversy in the action, to which it is set up in bar, and the question of identity, thus raised, is to be determined by the jury upon the evidence adduced. And though the declaration in the former suit may be broad enough to include the subject-matter of- the second action, yet if, upon the whole record it remains doubtful whether the satne subject-matter were actually passed upon, it seems, that parol evidence may be received to show .the truth.” This Court has recognized the rule in Garrott vs. Johnson, 11 G. & J., 182 , in this language : '‘Moreover it appears to be a principle of law, well established, that to make a record evidence to conclude any matter, it should appear by the. record, or by other proof, that the matter was in issue and decided in that suit.” Vide, also, Cecil vs. Cecil, 19 Md., 79 . The former action, verdict and judgment between the appellant and appellee are pleaded with an averment, that the plaintiff and defendant named in the record of the. former suit, are the same parties as in this suit, and that the said trade-mark in the declaration in the former suit mentioned, is the same trade-mark mentioned in the declaration of the plaintiff in this suit, and the said plaintiff claims no other or further title or ownership, or .right in the said trade-mark than was claimed by him in the former suit; allegations of identity, which could only be established by parol evidence, and on which issues were joined in the cause. The appellant’s counsel in their brief, have divided the questions raised by the third bill of exceptions, which embraces all the prayers of both parties, and the instruc ⁵¹³ tion given by the Court, into two general heads or classes. 1st.

The question of “res adjudicaba,” which is presented by the first, second and seventh prayers of the appellant, and the first of the appellee. 2nd. The merits of the present case — under which he contends the other prayers of the defendant ought not to have been granted, because they are insufficient, uncertain, and contrary to law; and that the Court below erred in its rulings on the subject-matter of the first exception, and the refusal of the remaining prayers of the appellant. The propositions of the appellant, presented in his first, second and seventh prayers on the subject of “res adjudicaba,” are as follows, substantially: 1st. If the jury shall find “the'question as to the right to the use of the trade-mark of ‘ Forrest’s Medicated Juniper Tar,’ was not the sole question presented for the consideration of the jury, and tried in the former suit, but other questions -were submitted to the jury, the verdict in the former suit is no bar to the plaintiff’s right to recover.” 2nd.

If the jury shall find the third count of the plaintiff's war. in this action, states a distinct cause or ground, of action, not stated in the former suit, the verdict in the former is no bar. 7th If the jury find the wrongful acts charged in the present suit, are charged as being done at a different date. from those in the former, that difference makes the acts charged, different and distinct trespasses, and the verdict in the former suit is no bar. The plea of “res adjudicóla” is founded on the maxim, “that it is the interest of the State, there should be an end to litigation,” and “no man should be twice sued for the same cause.” However numerous the questions involved in a suit, if they were tried and decided, the ⁵¹⁴ renewal of litigation for any one of the same causes, violates these cardinal principles of public policy, as much as if the suit presented but one single issue. Gratia exemfli, a plenary proceeding is instituted in the'Orphans’ Court, impeaching the validity of a will, and issues involving the factum, the sanity of the testator, undue influence, importunity, etc., are sent to a Court of law for trial, all or any of which are found by the -jury “joro or con,” and a decree rendered by the. Orphans’ Court, pursuant to the finding; could it be said, that because several questions, or issues were presented, the verdict and judgment thereon, should not be binding “pro tanto?” So in the case of an action of replevin, where