170. MOSSLER v. JACOBS

APPELLATE COURT OF ILLINOIS. 1896

66 Ill. App. 571

INJUNCTION, to restrain the use of a trade name. Appeal from the Circuit Court of Cook County; the Hon. John Gibbons, Judge, presiding. Heard in this Court at the October Term, 1896. Affirmed. Opinion filed November 5, 1896.

Charlton & Copeland, attorneys for appellants.

L. D. Condee and Louis Boisot, Jr., attorneys for appellees.

The bill of complaint of the appellees alleges that they have been engaged in the tailoring business in the State of New York and advertising the same under the style of "Six Little Tailors," for the last fifteen years, and that during a greater portion of said time they have had branch stores in several of the eastern cities, and that as recently as the month of March of this year they opened a branch store under the same name in the city of Chicago; which name of "Six Little Tailors," they allege, constitutes their trademark and trade name.

They also allege, among other things, that the appellants, some time in the month of February of this year, opened a tailoring establishment at No. 357-359 State Street, under the firm name and style of the "Six Big Tailors," which style of name appellees allege and claim to be an infringement upon the name adopted by them, to wit, "Six Little Tailors."

The appellants, in their answer to the appellees' bill of complaint, among other things, allege that the Court below had no jurisdiction over the subject-matter involved in this litigation, and deny that the appellees had, or could have, any property right or trademark in the words "Six Little Tailors"; they also claim and allege in their said answer that the use of the words "Six Big Tailors" in no manner infringes upon the words "Six Little Tailors"; and insist that they, the appellants, have the right to use the words "Six Big Tailors" as their trade name.

The evidence of complainants shows that in November, 1895, they first took preliminary steps looking toward the establishment of a branch store in Chicago under the style of "Six Little Tailors"; that they advertised in the way of posters, circulars, and newspapers prior to their opening of their store March, 1896, and spent some money in that direction; also shows that prior to that time, and for a period probably of fifteen years, they had two stores in New York City, one in Buffalo, one in Philadelphia, one in Boston, one in Washington, one in Pittsburg, and one in Cleveland, all of which were carried on under the style of "Six Little Tailors"; they also testify that they had copyrighted some ten years ago photographs of the six Jacobs brothers, which were placed on their business cards and other advertising under the title

of "Six Little Tailors"; and that they used the words "Six Little Tailors" in every way they possibly could in the way of advertising; that they had received mail orders from various parts of the United States and Europe, and many from the city of Chicago, for suits of clothes. In the deposition of Mr. Jacobs, many exhibits are made of the style of advertising in newspapers, posters, and also copies of letters , and envelopes received from various portions of the country making inquiries about suits, etc. He also testifies that the firm of "Six Little Tailors" is composed of six Jacobs brothers, who are a little below the medium size in stature, and that therefore the title "Six Little Tailors" is consistent with the makeup of their firm.

On the other hand, the appellant, Benjamin S. Mossler, testifies that appellants opened their place of business as "Six Big Tailors," at 357-359 State Street some time in the month of February, and that there are six brothers in their family, all of whom are above the medium size in stature, and that the two appellants (brothers) had, before the opening of their establishment on State Street as "Six Big Tailors," obtained the consent of the other four brothers to use that name.

There is no proof that any person had been misled or deceived by reason of the similarity of the names used by appellants and appellees.

A decree was entered restraining the defendants, their employees, agents, etc., from using by signs, cards, letterheads, or otherwise, in advertising the business of making and selling clothing, the style and words "Six Big Tailors," or any other words in imitation of complainants' said trade name, or resembling the same.

Mr. Justice WATERMAN delivered the opinion of the Court as follows: This was an action to restrain the use of the words "Six Big Tailors" in such a way as to infringe upon the rights of the complainants under their trade name of "Six Little Tailors."

No person is entitled to represent his goods as being the goods of another man, or articles of his manufacture as having been made by another, and no person is by the law permitted to use any mark or sign, symbol, name, or device or other means whereby he makes a false representation or deceives as to his goods, or the goods of another, or whereby, without himself making a false representation to a buyer who purchases from him, he enables such buyer to tell a lie or to make an untrue representation to some one else who may be a prospective purchaser. Nor is it a defence to an action, the gist of which is a charge of deception, to reply that the words uttered by the defendant were the literal truth; for the truth may be stated in a way likely to and that does deceive. What is required is that a party shall not conduct his business so that by what he says and does he will deceive customers to their injury, or that of a competitor. . . .

While the Court is not bound to interfere where ordinary attention will enable the purchaser to discriminate between the trademark used on the goods manufactured by different parties, nevertheless the char

acter of the article, the use to which it is put and the kind of people who are likely to ask for it, as well as the manner in which it is probable it will be ordered, must not be lost sight of. . . .

We regard the words "Six Big Tailors as so similar to the complainant's trade name of "Six Little Tailors," that it is calculated to deceive the unwary; that confusion is likely to arise therefrom, and thus that it is probable purchasers may be entrapped into buying what they did not intend; that is, goods of appellants, when intending to buy of complainants. We can hardly think, in view of the testimony, that appellants chose the name of "Six Big Tailors," without first considering the publicity which complainant's trade name had acquired, and with the thought that by adoption of a very similar name, they could avail themselves of the reputation of a rival. We are the more inclined to this view, because of the fact that, while the complainant's firm is composed of six tailors, appellants is made up of two only. Appellants appear to have been guilty of unfair competition in business. While it does not appear that thus far any one has been deceived, we do not think that complainants are obliged to wait until injury has actually occurred; it is sufficient that it is probable customers would be deceived and misled. The tendency to abbreviate is such that nearly all firms and corporations are ordinarily spoken of, and their names remembered by a portion only of their true title. Complainant's name is quite likely to be carried in mind as "Six Tailors." The decree of the Circuit Court is affirmed.

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171. SUPREME LODGE KNIGHTS OF PYTHIAS v. IMPROVED ORDER KNIGHTS OF PYTHIAS

SUPREME COURT OF MICHIGAN. 1897

113 Mich. 133, 71 N. W. 470

APPEAL from Circuit Court, Wayne County, in chancery; William L. Carpenter, Judge.

Bill by the Supreme Lodge Knights of Pythias against the Improved Order Knights of Pythias and others. There was a decree dismissing the bill, and complainant appeals. Affirmed.

Philip T. Colgrove and John C. Burns (Philip T. Van Zile, of counsel) for appellant.

Conely & Taylor (Florea & Seidensticker, of counsel), for appellees. MONTGOMERY, J. Complainant filed a bill for an injunction, praying that defendants be restrained from using the ritual and jewels of the order of the Knights of Pythias, and from using the name "Improved Order Knights of Pythias." A careful examination of the authorities cited by counsel, and of the reasons urged by them, has failed to convince us that the learned trial judge erred in dismissing the bill. The opinion

of Judge Carpenter contains so full a review of the case, and its reasoning is so satisfactory, that we adopt it as our own. That opinion is as follows:

CARPENTER, J. "The Knights of Pythias is a secret, unincorporated society, organized in 1864, and has about 500,000 members. Complainant is the Supreme Lodge of the Knights of Pythias, and was incorporated by special Act of Congress in 1894. The Improved Order Knights of Pythias is also a secret, unincorporated society, and had, June 30, 1895, when the last report was made, 1,738 members. It was formed in December, 1894, by former members of the Knights of Pythias. These last-mentioned members left the old order, and formed the new, because a convention of the Supreme Lodge Knights of Pythias, in August, 1894, declared that 'henceforth and forevermore the ritual used in this and all other English-speaking countries shall be printed in the English language only.' Both orders are fraternal and benevolent. They have many resemblances. The important difference between them, as already indicated, is this: The ritual of the improved order may be printed in German, while that of the Knights of Pythias cannot be. Complainant asks an injunction restraining defendants from using the name 'Improved Order Knights of Pythias,' and from using the name 'Knights of Pythias,' or any derivative thereof, and from printing or using any ritual in substance like that used by the Knights of Pythias. There is no proof that the defendants' ritual is so nearly like complainant's as to justify the interference of a court. The sole question is, then, whether defendants shall be enjoined from using the name 'Improved Order Knights of Pythias.' Complainant's counsel insist that by the Act incorporating complainant as 'Supreme Lodge Knights of Pythias' an exclusive right to the name 'Knights of Pythias' was acquired. Numerous cases are cited holding that a corporation has an exclusive right to its name. No case, however, is cited holding that incorporation gives an exclusive right to a name already in use, as the name 'Knights of Pythias' was, by an existing voluntary society. On the contrary, McGlynn v. Post, 21 Abb. N. C. 97, cited by complainant's counsel, and Association v. Munday, 21 Abb. N. C. 99, hold that in such a case an exclusive right is not acquired. Indeed, if complainant, by incorporating, acquired the exclusive right to the name 'Knights of Pythias,' it could at will compel the order of which it is only the head, and all other lodges, subordinate and grand, to cease using the name, 'Knights of Pythias.' It seems clear, therefore, that complainant did not, by becoming a corporation, acquire the exclusive right to the name 'Knights of Pythias,' and that, whatever are its rights, they cannot exceed those of the order of which it is the head. "The question, then, arises, are the rights of the order violated? Nearly all the members who withdrew from the old order and went into the new are Germans, and many of them are unable to read and understand a ritual not printed in German. Prior to the action of

the order which was the occasion of their withdrawal, the order furnished for their use, and they used, rituals printed in German. Defendants therefore withdrew from the society of which they were members, because it changed, not because it continued, its policy. The propriety of the conduct of complainant in forbidding the printing of the ritual in German, the propriety of the conduct of defendants in withdrawing from the order, are questions solely for the consideration of the parties themselves. The Knights of Pythias had a lawful right to declare that its ritual should be printed only in English, and defendants had an equally lawful right to found an order whose ritual might be printed in German. Having formed this order, is it possible that defendants cannot give it an appropriate name, a name which will properly describe it? This new order is formed by the members of the Knights of Pythias who withdrew from the Knights of Pythias because that order changed its policy in a matter which it must be presumed they thought important. This order resembles the Knights of Pythias. Is stands to these members in the place which the Knights of Pythias has vacated. To a certain extent it carries out a policy which the Knights of Pythias formerly carried out and abandoned. Complainant charges that the defendants have seceded from it, and have established a rival and very similar organization. No name could appropriately be adopted, under these circumstances, which did not contain the words 'Knights of Pythias,' because no name could properly describe it, either by reference to its origin, its history, or its purposes, which did not contain those words. Suppose that this new order had received some other name. It would have been none the less, in the minds of complainant, a seceding faction of the Knights of Pythias; it would have been none the less, to the defendants, a substitute for the Knights of Pythias; and it would have been none the less, to the impartial historian, an offshoot of the Knights of Pythias. One excellent test of an appropriate name to select under such circumstances is furnished by the history of schisms in other societies. Nearly all our varieties of churches of the same denomination are the results of secession or withdrawals from the parent church of that name, and it has been the usual course for the new church society to adopt as a permanent part of its name the name of the parent organization. Take one instance: A part of the Methodist Episcopal Church withdrew and established the Protestant Methodist Church. So we have the Order of Foresters of America, formerly the Ancient Order of Foresters of America; the Canadian Order of Foresters; the Independent Order of Foresters, all of which are, as I understand, offshoots of the Ancient Order of Foresters of England. No one has ever questioned the appropriateness of using the parent name as part of the name of a new society formed under these circumstances, so far as I can learn. To my mind, it is clear, therefore, that defendants, in naming their order, not only could, but were almost bound, in order to properly describe it, to make use of the words 'Knights of Pythias.'