comic cartoons of the same character during the years from 1907 to 1909, before the Star Company published any of the artist's work, and the characters of "Mutt" and "Jeff" were recognized by the Star Company and described in its contract of August 8, 1910, as component parts of a "series originated by Mr. Fisher."

The distinctive title "Mutt and Jeff" was first applied to the cartoons by the artist when he copyrighted “The Mutt and Jeff Cartoons, by Bud Fisher," and the Star Company never applied the title to any cartoons published and sold by it until December 11, 1914, and even then such title was not used upon its syndicate pictures; and during the entire period, down to and including the publication of January or February, 1915, hereafter referred to, the captions or titles of the cartoons were invariably followed by the words "By Bud Fisher." The only cartoon which is annexed to the moving papers bears the title, "Mutt and Jeff, by Bud Fisher." This is described as "a copy of said comic strip or section bearing plaintiff's trade name, 'Mutt and Jeff,'" which had been "sold by the plaintiff throughout the period mentioned in the complaint, to wit, August 8, 1910, to the present time."

This exhibit does not in any way indicate that it formed any part of a comic section or supplement, and I understand it to be admitted that the use of these cartoons was not limited to any such section, but that they were published on the pages of general news. No date is given of the publication of this exhibit, but an examination of the printing upon the reverse side indicates that it was published shortly prior to February 3, 1915. It is apparent, therefore, that in the present case the question is not so much one of trade-mark infringement as one of unfair competition and the right to acquire a trade-mark in a name previously selected by another as the title to a copyrighted work. In an application for a preliminary injunction it is well settled that unless the right of the plaintiff is clear injunction will not issue.

[2] Under the provisions of the United States statutes relating to trade-marks it is provided (act Mar. 3, 1881, ch. 138, sec. 7, 21 Stat. 503) that registration of a trade-mark is prima facie evidence of ownership. In the case at bar registrations of "Mutt and Jeff" as a trade-mark is in the name of Fisher, and the plaintiff

Page 786.

has not shown such a clear right in itself to the trademark as to overcome this presumption of ownership in Fisher. The requirements necessary to be complied with before the right to a trade-mark can be sustained are stated in Jaeger's Co. v. Le Boutillier (47 Hun, 522), as follows:

In order to entitle a person to claim a proprietary right in any particular devices or marks attached to goods, the article to which these marks or devices has been attached must have been manufactured and produced by the person applying such marks or devices, and thus a reputation established in the market for goods thus manufactured in connection with the particular marks. The marks or devices thus used become a trade-mark, which becomes the property of the person who has originated it and created for it a reputation in connection with his manufactures. * In the case of a trade-mark, it is a mark or device attached by the manufacturer and seller of goods to the merchandise produced by him, in order to distinguish it from a like class of merchandise produced by others; and the right to the exclusive use of such mark accrues, not because he was the originator of the same, but because he has applied it to goods of his manufacture and they have acquired a reputation in connection with such mark.

The reputation acquired for these cartoons was not a reputation established in the market for a comic strip manufactured and produced by the Star Company and to which it had attached the mark or device of "Mutt and Jeff" in order to distinguish it from a like class of merchandise produced by others. It was rather a reputation established in the market for a comic strip containing the grotesque figures of "Mutt and Jeff, by 'Bud' Fisher." The designation of authorship was a part of the trade-mark, if trade-mark there was. The reputation which was established was a reputation which entitled the public, constituting the market, to expect to receive and enjoy the humor of the author and the skill of the artist to which it had become accustomed.

If there were any doubt as to the words "Mutt and Jeff" being inseparably associated in the public mind with the artist rather than with the newspaper, it is entirely dispelled by the letters produced by the Star Company. Under date of April 7, 1915, one of the former subscribers to its syndicated service writes:

*

In regard to "Mutt and Jeff," we have signed a contract with the Wheeler Syndicate for this feature, * as we understand from them that they had made a contract with Fisher for this stuff.

Another subscriber writes, under date of July 23d: Last April I was in your office and talked with you on the comic Mutt and Jeff. At that time I was assured that you were arranging to have this cartoon drawn, and that it would be furnished within a very few weeks. We have heard nothing from you. We notice the announcement of the Wheeler Syndicate

that Bud Fisher will draw Mutt and Jeff.

If you are not going to be in a position to furnish this cartoon, we would at least like to know if there will be any legal complications between you and Mr. Fisher, or between you and the Wheeler Syndicate. We think we are at liberty to purchase this cartoon from them.

Similar letters received by the Wheeler Syndicate refer to the cartoons as Bud Fisher's comics, Bud Fisher cartoons, Bud Fisher service, Bud Fisher stuff, Bud Fisher matter, Fisher's Mutt and Jeff, Fisher's Mutt and Jeff service, Bud Fisher feature, Bud Fisher comic cartoons, Bud Fisher strips, and Bud Fisher comic service. Another writes:

We have been running the Mutt and Jeff features for some years, but learn that Mr. Fisher has made a contract with you for his work in the future.

[3] A trade-mark has been defined to be " one's commercial signature," and in discussing the question as to whether an author could protect his writings by a trademark the court said in Kipling v. G. P. Putnam's Sons (120 Fed. 631, 635, 57 C. C. A. 295, 299, 65 L. R. A. 873):

A trade-mark is a word, symbol, or device by which the wares of the owner are known in trade. Its object is, first, to protect the party using it from competition with inferior articles; and, second, to protect the public from imposition. The trade-mark brands the goods as genuine, just as the signature to a letter stamps it as authentic.

As stated in G. & C. Merriam Co. v. Saalfield (198 Fed. 369, 372, 117 C. C. A. 245, 248):

A trade-mark is a trade-mark because it is indicative of the origin of the goods. The original right to its exclusive use was not based upon any statute, but upon principles of equity; and the right is acquired, not by discovery or invention or registration, but by adoption and use. The entire substantive law of trade-marks (excepting statutory provisions and construction) is a branch of the broader law of unfair competition. The ultimate offense always is that the defendant has passed off his goods as and for those of the complainant.

Applying these principles, I am convinced that the right of the Star Company to a trade-mark in the words "Mutt and Jeff," as applied to a comic section or strip, is so doubtful, and the danger of deceiving the public is

Page 787.

so great, that no preliminary injunction should issue. The temporary injunction is therefore vacated, with $10 costs.

Ordered accordingly.

[155 New York Supplement, pp. 782-787; 91 Miscellaneous Reports, pp. 640-649.]

STAR CO. v. WHEELER SYNDICATE, INC.

(Supreme Court, Special Term, New York County. August 14, 1916.)

1. TRADE-MARKS AND TRADE NAMES-Original User-RIGHTS OF PARTIES.

The exclusive right to a trade-mark does not belong to the one who suggested or invented it, but to him who was the first to appropriate and use it in his business and to give it a name and reputation.

2. TRADE-MARKS AND TRADE NAMES-RIGHT TO EXCLUSIVE USEEMPLOYMENT OF OWNER.

Where cartoonist entered the employ of plaintiff and so continued for a long period, plaintiff, being a newspaper publisher and operator of the syndicate, did not acquire as against the cartoonist, from the mere fact of his employment, the permanent exclusive right to the use of a title to the cartoons, the reputation therefor having been acquired before the cartoonist entered his employ, although plaintiff did have the exclusive right during the term of employment to the use of the name in connection with the cartoons. 3. TRADE-MARKS

TOONS.

AND TRADE NAMES-PROPERTY SUBJECT-CAR

Cartoons used in syndicated comic strips are to be treated as a commodity of barter and sale, the same as tangible goods or merchandise, which may be sold under a distinctive mark or name which the vendor may exclusively use as a trade-mark in their sale.

Action by the Star Company against the Wheeler Syndicate, Incorporated. Decree for defendant.

See, also, 155 N. Y. Supp. 782.

William A. De Ford, of New York City (Bainbridge Colby, David Gerber, and Nathan Burkan, all of New York City, of counsel), for Star Co.

Charles E. Kelley, of New York City, for Wheeler Syndicate, Inc.

GREENBAUM, J. The controversy in this action has narrowed itself to the inquiry whether the plaintiff, the Star Company, has acquired a trade-mark in the words "Mutt and Jeff" as a title to a series of cartoons published in its paper known as the American. The controlling facts upon which the rights of the parties depend are practically undisputed. Harry C. Fisher, known by the nom de plume of "Bud Fisher," was concededly the creator of two grotesque figures which he named "Mutt and Jeff," respectively, and which he utilized in a series of cartoons, each publication being in the form of what in newspaper parlance is called a "comic strip." Each strip consisted of four or more pictures in which the chief characters "Mutt and Jeff" were delineated in various attitudes and situations and were represented as exchanging views on a variety of topics, the words of the dialogue being printed in a balloonshaped scroll emanating from the lips of the speakers. Mr. Fisher began this series of cartoons on November 15, Page 690. 1907, in the San Francisco Chronicle with the character of "Mutt." Commencing on December 11, 1907, he continued the publication of these cartoons in the San Francisco Examiner until April 9, 1909. During this period, and as early as March and April, 1908, which was prior to the time he entered in plaintiff's employ, he introduced the figure "Jeff" in his comic strip, and the cartoons became known to the public as "Mutt and Jeff," although these words had not formally appeared in the headings of the pictures. He started on the Chronicle with a weekly salary of $15, which he shortly after increased to $27.50. When he entered into the employ of the Examiner his salary became $50 a week, subsequently increased to $60 and then to $75. In February, 1909, he made a threeyear contract with the Examiner, which was owned or controlled by William R. Hearst, the virtual owner of the New York American and other newspapers. In May, 1909, he came to New York City and prepared daily cartoons for the American until August, 1910, when a new contract was made with the plaintiff for a term of five years at a salary of $200 a week for the first year, $250 during the second, third, and fourth years, and $300 a week during the fifth year. The contracts of February, 1909, and August, 1910, provided for Fisher's exclusive services at a weekly salary on "publications and news