J. A. Beecher, for appellant.

Wm. B. Guild, for respondents.

DIXON, J. The bill in this case was filed in February, 1897, by the president of the Union Hat Makers' Association of Newark, for the use and benefit of all the members thereof, to enjoin the defendants from using a counterfeit trademark and label made in imitation of a trademark and label which had been adopted and filed by the said association in accordance with the provisions of the several Acts of the Legislature passed in the years 1889, 1892, and 1895 (3 Gen. St. p. 3678 et seq.). The defendants demurred to the bill, and, the demurrer having been sustained, the complainant appeals.

The Act of 1889 is entitled "An Act to provide for the adoption of labels, trademarks, and forms of advertising by associations or unions of workingmen, and to regulate the same." It provides (section 1) that it shall be lawful for associations and unions of workingmen to adopt, for their protection, labels, trademarks, and forms of advertisement, announcing that goods manufactured by members of such associations or unions are so manufactured; (section 4) that every such association or union adopting a label, trademark, or form of advertisement as aforesaid, shall file the same in the office of the secretary of state, by leaving two copies, counterparts, or facsimiles thereof, with said secretary; and (section 5) that every such association or union adopting, etc., may proceed by suit in the Courts of this State to enjoin the manufacture, use, display, or sale of any counterfeit of their label, trademark, or form of advertisement; and that all Courts having jurisdiction thereof shall grant such an injunction. The demurrants do not deny that the bill presents a case in conformity with this Act, except in this respect: That under the Act the bill should be filed by the association, or all its members, and not by one member alone. In our opinion, the Act empowers the association to proceed by suit, making it for this purpose a quasi corporation, and therefore does not of itself entitle a single member to maintain the action. But this objection is obviated by section 4 of the Act of 1892, if valid, which provides for the bringing of such proceedings in the name of any member duly authorized by the association or union for that purpose. We are therefore brought to the main question raised as to these statutes.

The demurrants contend that the Act of 1889 violates that provision of the Constitution (article 4, § 7, par. 11) which forbids the passage of private, local, or special laws granting to any association, corporation, or individual any exclusive privilege, immunity, or franchise whatever. . . . We think this Act is constitutional.

...

The Act of 1892, with its amendment of 1895, seems not to be exposed to the objection just considered. . . . We therefore conclude that these Acts are valid, so far as they are necessary to sustain the complainant's bill.

We also think that upon general principles the substance of the bill is

sufficient. It alleges: That a company of journeymen hatters, calling themselves "The Union Hat Makers' Association of Newark, New Jersey," have, in common with similar associations formed elsewhere, adopted a certain label or trademark, of which the following is a copy:

That for ten years last past they have used said label or mark to designate and distinguish the hats made by members of the association, by affixing it upon each of those hats, and that for about three years last past the defendants have used a fraudulent imitation of that mark upon the hats made and sold by them, thereby deceiving the public, violating the rights of the members of the association, and depriving them of large profits which they would otherwise have gained. These allegations seem to present a case of inequitable infringement of the association's right of property in its trademark or label. In McAndrew v. Bassett, 4 De Gex, J. & S. 380, Lord Westbury said:

"The essential ingredients for constituting an infringement of that right probably would be found to be no other than these: First, that the mark has been applied by the plaintiffs properly (that is to say, that they have not copied any other person's mark, and that the mark does not involve any false representations); secondly, that the article so marked is actually a vendible article in the market; and, thirdly, that the defendants, knowing that to be so, have imitated the mark for the purpose of passing in the market other articles of a similar description."

These views received the approval of Lord Cairns, sitting in the Court of Appeals in Maxwell v. Hogg, 2 Ch. App. 307-314, and accord with the great weight of authority on this much-litigated subject. The present bill clearly sets out the adoption and proper application of the mark by the association, and its fraudulent imitation for the interdicted purpose by the defendants. It is not so explicit as to the second ingredient mentioned by the Lord Chancellor, but the Court does not need to be told that hats made by a company of journeymen hatters during ten years were actually vendible articles in the market. So much will be inferred.

But the objection urged by the defendants against the bill is that it does not allege, and the Court cannot infer, that the journeymen owned the hats made by them; and it is insisted that ownership of the article to which the trademark is affixed is necessary to the acquisition of a right in the mark. To support this claim, Schneider v. Williams, 44 N. J. Eq. 391, 14 Atl. 812, is cited. Some expressions in the opinion of the able jurist who decided that case certainly give countenance to the present objection, but on consideration I think those expressions will appear to be unwarranted. Thus, in defining the means by which a person will acquire an exclusive right to a trademark, he says: "First, he must select or adopt some mark or sign not in use to distinguish goods of the same class or kind already on the market, belonging to another trader; second, he must apply his mark to some article of traffic; and, third, he must put his article, marked with his mark, on the market."

Now, it is undisputed that this association has complied with the first two of these requirements. Only in respect to the third has it failed. It did not itself put upon the market its own articles marked with the label. But it is doubtful whether the learned judge intended this third requisite to be so strictly read, for he immediately added:

"Mere adoption of a mark or sign, and a public declaration, by advertisement or otherwise, that a person will at a subsequent time put a particular thing on the market, marked or distinguished in a certain way, create no right. Until the thing is actually on the market, marked by the particular mark of the person intending to acquire a title, no property right in the mark arises."

This seems to indicate that it was the actual marketing of the marked article, and not the person by whom it was marketed or owned, on which stress was laid. And why should this specific personal element be deemed important? The public object sought in the protection of trademarks is to bring upon the market a better class of commodities, and the means for attaining that object is by securing to those who are instrumental in supplying the market whatever reputation they gain by their efforts towards that end. The workman by whose handicraft the commodity is made is one of these instruments, just as is his employer who furnishes the raw material and owns and sells the finished product; and if the former is permitted by the owner to place upon the commodity a mark to indicate whose workmanship it is, and thereby commend his workmanship to other employers, this license from the owner should be deemed a right against everybody else. His aptitude in his trade is his property, and, if by a mark he can have it identified as his in the market, he may enhance its salable value, and thus secure the same sort of advantage as his employer, by similar means. No reason exists why this advantage should not be protected by the Courts in the same manner and to the same extent as is the like advantage of the employer. The mere fact that one rather than the other of these persons has placed the product upon the market has no rational bearing upon the matter; for both alike have had the market in view in the efforts they have made, and through those efforts the market is supplied. A different objection of a suit of this nature was sustained in Weener v. Brayton, 152 Mass. 101, 25 N. E. 46, namely, that the label did not indicate by what persons the articles labelled were made, but only indicated that they were made by one of many persons who were not connected with each other in any business. The first clause of this objection would unduly restrict the law of trademarks as everywhere recog nized; for it is established that, whatever be the quality indicated by a trademark, the mark need not point out the particular person from whom that quality is derived. The law has placed no limit upon the number of persons who may unite for business purposes and jointly acquire property in a trademark; and yet it is evident that, if there be many, some of them may have no personal share in producing the article

identified by the mark. The second clause in the objection assumes what does not appear to be true in the case before us. We understand from the bill that the members of the association represented by the complainant are connected together as journeymen hatters; that their skill in this trade, and their mutual assistance in profiting by its practice, form the motive and chief aim of their association. This connection is as clearly one for business purposes as is that of members in a partnership, or of stockholders in a corporation. Although it is a comparatively novel species of relationship, it has become an established one, and therefore calls for the application of those general principles of law and equity which are applied to other species of business associations. According to these principles, we think a workman, or a number of workmen engaged in the same branch of industry and banded together for their mutual profit, in the pursuit of their common vocation, may acquire a right of properly in a trademark designed to distinguish their workmanship from that of other persons, and that a trademark so owned is entitled to the same protection as other trademarks. The decree below should be reversed, and the demurrer overruled.1

179.

(2) Infringement of Registered Right

CHURCH & DWIGHT COMPANY v. RUSS

UNITED STATES CIRCUIT COURT, DISTRICT OF INDIANA. 1900

99 Fed. 276

Dickerson & Brown, for complainant.

Andrew Anderson, for defendants.

BAKER, District Judge. This is a suit to enjoin the infringement of a trademark or trade symbol, and to recover damages for its infringement. It is alleged that the complainant since July 1, 1896, has been engaged in the State of New York in preparing and marketing baking soda and saleratus used for cooking purposes, and prior to that time its predecessor, under the name of Church & Co., had been engaged in the same business at the same place. On July 1, 1896, the complainant

1 [ESSAYS:

W. A. Martin, "Union Labels" (A. L. R., XLII, 511.)

NOTES:

"Generic words as trade-marks." (C. L. R., II, 406, 420.)

"State seal or coat of arms: Use as trademarks." (C. L. R., VI, 122.) "Fancy words." (H. L. R., VIII, 511.)

"Descriptive words." (H. L. R., XII, 349.)

"Marks and names subject of ownership: Descriptive words." (H. L. R., XXI, 361, 373.)]

For the cases showing the distinction between the statutory registration right and the common-law right, in respect to generic or geographical trade. names, see Book III, Title B, Sub-title (III).]

succeeded to the business of the firm of Church & Co., and to all its interest in said business, including any and all trademarks and trade names used by said firm in its business, and to the rights thereunder which had accrued to that firm. Since the year 1874 the complainant and its predecessor have prepared and put upon the market a new and original preparation of soda and saleratus to be used for cooking purposes, and, to indicate the origin and genuineness of the preparation, it and its predecessor have put upon the packages containing the preparation marketed by them, as a trademark and trade symbol, a representation of a bared arm, the hand grasping the handle of a hammer; the arm being shown raised in the position which it would assume when about to strike with the hammer. . . . The above-specified trademark is the exclusive property of the complainant, and it is entitled to its sole and exclusive benefit and use. The complainant and its predecessor have at all times insisted on its trademark, and have notified the public thereof. This trademark has become universally known as the property of the complainant and its predecessor, and has been uniformly respected as such until its infringement by respondents. For the purpose of further informing the public of the complainant's rights in and to said trademark, it caused it to be registered on January 26, 1897, according to the statutes of the United States. This trademark has been used by the complainant and its predecessor for more than twenty years continuously in connection with packages containing soda and saleratus, in commerce with Canada and other foreign countries, and has been very extensively used throughout the United States. The soda and saleratus prepared and sold by it and its predecessor have been of a superior quality, and have been prepared for the market with care, according to their peculiar methods; and the soda and saleratus have met with great favor since they were placed upon the market, and the demand for them has increased from year to year. The exclusive right to this trademark is of great value in its business, and the respondents' infringement of it has caused great and irreparable loss, to an amount exceeding $5,000. The respondents are engaged in manufacturing and selling baking powder used for cooking purposes, the active ingredient of which is soda, prepared and put up in packages having a representation exactly similar to the trademark of the complainant. It is further alleged that the respondents, knowing the high reputation and deserved celebrity of the baking soda and saleratus manufactured and sold by the complainant, have pirated its trademark, with the intent to enlarge their sales of baking powder, and to deceive the public into the belief that the baking powder put up in packages having said trademark is manufactured and sold by the complainant, or with its authority and consent. The complainant has notified the respondents of its right to the exclusive use of said trademark, and has requested them to desist from its use, which they have refused to do, and they insist on their right to use such trademark upon