A MAN AND HIS NAME. III.*

The question how far a patentee is entitled to restrain other manufacturers and the public generally from using his name to describe the article made under the patent stands upon a separate footing, and depends upon the general principle that one trader is not entitled to monopolize words which are properly descriptive of a particular article, or principle of manufacture, or process of construction, and which the public would naturally employ for the purpose of pointing out to what article of commerce, or principle or process they wish to refer.

The general principle is clearly set out in the judgment of Vice-Chancellor Malins in Raggett v. Findlater, 22 W. R. 53, L. R. 17 Eq. 29, the "Nourishing Stout" case, where he said "It is of the highest importance that, on the one hand, every protection should be given to trade-marks when fairly and properly used, and when used within just limits; and, on the other hand, it is of great importance that by the use of a particular word or anything which may be called a trademark, the right should not be unduly extended so as to infringe on the right of traders to call their article by a quality they possess, or to give an undue protection to any man who happens to use a particular word."

And with no less distinctness has the same principle been laid down in America. Thus, in Caswell v. Davis, 58 N. Y. 223, Folger, J., said, in the New York Court of Appeals: "There is no principle more firmly settled in the law of trade-marks than that words or phrases which have been in common use, and which indicate the character, kind, quality, and composition of the thing, may not be appropriated by any one to his exclusive

use.

In the exclusive use of them the law will not protect, nor does it matter that the form of words or phrases adopted also indicates the origin and maker of the article. The combination of words must express only the latter. It is the result of all the decisions that known words and phrases indicative of quality and composition are the common property of all mankind. They may not be appropriated by one to mark an article of his manufacture, when they may be used truthfully by another to inform the public of the ingredients which make up an article made by him." So in Town v. Stetson, 3 Daly, 53, a judge of the New York Court of Common Pleas said that, "no manufacturer can acquire a special property in an ordinary term or expression, the use of which, as an entirety, is essential to the correct and truthful designation of a particular article or compound." So again, in Osgood v. Allen, 1 Holmes, 185, another judge laid down that "a genuine name, or a name merely descriptive of an article of trade, or its qualities or ingredients, can not be adopted as a trade-mark, so as to give a right to the exclusive use of it. The office of a trade-mark is to point distinctively to the origin or ownership of the article to which it is affixed. Marks which only indicate the names

*Continued from ante, p. 27.

or qualities of products can not become the subjects of exclusive use; for, from the nature of the case, any other producer may employ, with equal truth and the same right, the same marks for like products." And many other statements of the law, both by English and American judges, might be cited to the same effect.

It is obvious that the names of patentees are within the rule thus expounded; for every patent is necessarily taken out for some new invention or improvement, though the invention or improvement is frequently, no doubt, of a somewhat shadowy nature, and the patent is universally described by the name of the patentee, as "Bessemer's Patent," "Newton's Patent." The article manufactured in accordance with the patent then acquires a name derived from the name of the patent process, thus, "Steel manufactured according to Bessemer's Patent," or "Bessemer's Method," or, shortly, "Bessemer Steel." The result is that the name "Bessemer," as applied to steel. by no means indicates steel manufactured at the works of the patentee, or under his direction, but indicates that the steel has passed through a certain process of manufacture, at whatever 'establishment it may be, and has so acquired the particular aggregation of qualities which steel so manufactured is known to possess. The name, in fact, is descriptive of quality. And there may, of course, be cases, especially where the manufacture has been kept a secret, in which the name of an inventor of a new manufacture may come to be descriptive of the manufactured article, even though no patent was taken out. Probably no patent was ever granted to the originator of "James' Powders." But in such cases the name is, of course, not so necessarily descriptive as where there is or has been a patent.

When the name of an inventor or patentee has thus become the name of the article, there would clearly be a double injury inflicted on the public, if they were debarred from describing the article by the name which properly belongs to it. For not only would other manufacturers of the same article be unable to convey to the minds of their customers that their goods were the exact equivalent of those which had been made under the patent by the original inventor, but purchasers would be deceived by two or more different names being in use to denote the same article. Lord Hatherley, therefore, in Young v. Macrae, 9 Jur. N. S. 322, gave it as his opinion that where a patentee's name had been usually applied to particular goods manufactured by him, not because they were of his make, but because he, as patentee, could alone make them, after the expiration of the patent any one might use the name; and, further than this, that where a patent was for a means of getting at a new natural product, which had for the first time received a name, any one might use the name, even during the continuance of the patent, if he could invent a new means of getting at the natural product without infringing the patent. The name there in issue was "Paraffin Oil,” but it seems that the same principle would have applied if the oil had been given out to the public by the patentee as "Young's Oil." In Liebig's

Extract of Meat Company v. Hanbury, 17 L. T. N. S. 298, it was held that the name "Liebig's Extract of Meat" had become descriptive, and could be used by any one who was in possession of the recipe. So "Condy's Fluid," in Condy v. Mitchell, 26 W. R. 269. On the other hand, in Wilkie v. McCulloch, 2 S. 413, the Scotch Court of Session granted an interdict to restrain the use of the name "Wilkie" on ploughs, notwithstanding a defense that the name was used to indicate a class of plough, and not the manufacture of the plaintiff. Here there was no patent. In Tucker Manufacturing Company v. Boyington, 9 U. S. Off. Pat. Gaz. 455, it was decided that, on the expiration of Tucker's patent for beds, the right to use the name "Tucker's Spring Bed," and to publish a representation of the bed, had become public and common property. And in In re Richardson, 3 U. S. Off. Pat. Gaz. 120, a registration case, a similar conclusion was arrived at with respect to the name "Richardson's" as applied to a leather-splitting machine.

In the case of In re Consolidated Fruit Jar Company, 14 U. S. Off. Pat. Gaz. 269, registration was refused to the name "Mason" as applied to seven-inch jars made under an existing patent, since, although the inventor, or those claiming through him, had the sole right to make the article and call it by its special name during the existence of the patent, at the expiration of the patent the article would be thrown open to manufacture by independent firms, who would be entitled to apply the appropriate name to the jars they made. See, however, Ex parte Consolidated Fruit Jar Company, 16 U. S. Off. Pat. Gaz. 679, in which an opposite conclusion was arrived at.

On looking into the point, it certainly appears to be reasonable in every way that the mere fact of a name having been exclusively used by a patentee during the continuance of his patent, should not be sufficient of itself to give him an exclusive right in the name as long as he keeps up the manufacture; for, as was well pointed out by Mr. Justice Fry, in Linoleum Manufacturing Company v. Nairn, 26 W. R. 463, L. R. 7 Ch. D. 834, where the word "Linoleum" was in issue. "until some other person is making the same article, and is at liberty to call it by the same name, there can be no right acquired by the exclusive use of a name, as showing that the manufacture of one person is indicated by it, and not the manufacture of another." If after the expiration of the patent the patentee were to continue to use the name, and no one else were to adopt it, a different state of circumstances would arise. But apart from some such independent user, "protection," to cite the present Master of the Rolls in Cheavin v. Walker, L. R. 5 Ch. D. 850, “only extends to the time allowed by the statute for the patent, and if the court were afterwards to protect the use of the word as a trade-mark, it would be in fact extending the time for protection given by the statute. It is, therefore, impossible to allow a man who has once had the protection of a patent, to obtain a further protection by using the name of his patent as a trade-mark." The name

there held by the Court of Appeal to have become publici juris was "Cheavin's" water filter, and Lord Justice James added: "It is impossible to allow a man to prolong his monopoly by trying to turn a description of the article into a trade-mark. Whatever is mere description is open to all the world." In very much the same language he had already said, speaking of the "Wheeler & Wilson" sewing machines, Wheeler & Wilson Manufacturing Company v. Shakespeare, 39 L. J. Ch. 36, while vice-chancellor: "A man can not prolong his monopoly by saying, 'I have got a trade-mark in the name of a thing which was the subject of the patent.'

It is, of course, possible that, though the name is applied to a certain description of articles made under a certain patent, it may also be applied to other articles of the same description, but made on a different principle or by a different process, which has formed the subject of one or more other separate patents of the same patentee. This is, of course, a question of evidence in each case, and it is for the court or jury to decide on the facts whether one principle or one set of characteristics sufficiently runs through all the differing articles which pass by the same name, for the name to be susceptible of common use as describing that particular principle or set of characteristics. If the verdict is in the affirmative, then the name will be open to the use of all persons whose manufactures embody the principle or set of characteristics in question; if otherwise, the application of the name to a widely differing variety of objects can hardly have any other result than to ascribe to the goods a common manufacturing origin, in which case the name is the property of the manufacturer. This was the question at issue in the "Singer" sewing machine cases, in which a great variety of sewing machines had been patented under the same name, very dissimilar in external appearance, and less similar in construction to one another, as the evidence showed, than the various types were to different other makes of machines. When the case of Singer Manufacturing Company v. Kimball, 11 Macph. 267, came before the Scotch Court of Session, a decision was given for the plaintiffs on the ground above indicated. In Singer Manufacturing Company v. Wilson, 24 W. R. 1023, L. R. 2 Ch. D. 434, the Master of the Rolls and Court of Appeal did not decide this point, coming to a decision adverse to the plaintiffs upon a previous point. The House of Lords, however, (26 W. R. 664, L. R. App. Cas. 376), reversed the decision on this point, and sent the case back to be tried out in the court below. This particular case went no farther, owing to the pecuniary collapse of the defendants; but in Singer Manufacturing Company v. Loog, another action begun by the plaintiffs for the purpose of obtaining a decision on the undetermined point, Vice-Chancellor Bacon (July 24, 1879) came to a conclusion favorable to the plaintiffs, as the Court of Session had already done.

When the name of an inventor has become a good trade-mark-that is to say, when it has come

to be recognized as indicative of the manufacturer, by exclusive user, either after the expiration of the patent, or when no patent has been taken out for the invention -the name partakes of the nature of other trade-marks in this respect also, that it is capable of protection by persons to whom it has come during the lifetime or after the death of the inventor. In James v. James, 20 W. R. 434, L. R. 13 Eq. 421, Lord Romilly was of a different opinion, considering that when a person had discovered a valuable invention and had not patented it, anyone who had discovered the ingredients might sell those ingredients, and might use the name of the person who had discovered them, after his death, but not in his lifetime; and he held that the name of an unpatented invention, "Lieutenant James' Horse Blister," had become common to the public on the death of Lieutenant James, though it had previously been private property. Very recently, however, in Massam v. Thorley's Cattle Food Company, supra, this view met with disapprobation in the Court of Appeal. Vice-Chancellor Malins had there considered himself bound, by James v. James, to hold that the name "Thorley's Cattle Food" had become publici juris on the death of Thorley, but the lords justices were of opinion that the name of the unpatented and secret invention, not having been of common right during Thorley's lifetime, had not become so on his death, but had passed to his executors, and they restrained the use of the name by a company formed by another Thorley, a brother of the deceased inventor.

CONVERSION OF BUILDINGS BY OWNER OF REALTY.

DOLLIVER v. ELA.

Supreme Judicial Court of Missachusetts, November Term, 1879.

Where the defendant, the owner of real estate, agreed with B that the latter might erect buildings upon said estate, and that they were not to be the property of the defendant, but that B should have the right to remove them at any time, and B thereafter sold said buildings to C, by bill of sale not recorded, and the defendant, at B's request and without notice of said sale to C, subsequently sold said estate to an innocent purchaser without notice of C's title, it was held that the defendant was liable to C, in an action of tort in the nature of trover, for the value of the buildings.

Action of tort in the nature of trover, tried by the court without a jury. The court found no conversion proved as to any of the items, except as to a building, and two small outbuildings connected therewith, used as a brewery for beer, which the plaintiff claimed was, as against the defendant, to be treated as personal property.

It appeared that the buildings were erected by one Ashworth, upon land of the defendant, in such a manner as to become a part of the realty. If not disannexed by contract in the eye of the law, and that they were never physically severed

Ash

from the realty up to the date of the writ. At the time of their erection, which was in the spring of 1868, the said Ashworth was in possession of the land under the following circumstances. worth had been previously a tenant of defendant under a written lease, and had erected a brewery which had been destroyed by fire. On the 17th of February, 1868, the said lease was canceled by mutual consent, and a warranty deed was made and signe by the defendant, conveying the premises for a price agreed to said Ashworth, and at the same time Ash worth executed a mortgage back to defendant to secure a part of the purchase money.

The mortgage deed was delivered to the defendant, but the warranty deed was not delivered; but the defendant gave Ashworth, as a part of the same transaction, a written agreement, by which he agreed to deliver said deed upon receiving that portion of the purchase money not covered by the mortgage. Said money was never paid, nor said deed delivered. Ashworth continued to occupy the premises under an agreement to pay defendant, quarterly, a sum equal to the quarterly interest upon the purchase money. The court found, that prior to the erection of the buildings in question it was understood and agreed, but not in writing, between defendant and Ashworth, that they were not to be the property of the defendant, but that he, Ashworth. should have the right to remove them at any time.

While Ashworth was in possession of the premises as aforesaid, on Otober 3, 1868, he conveyed the said buildings, by a bill of sale in common form and under seal, to the plaintiff's intestate for a valuable consideration, and she took possession. April 7th, 1869, the defendant, at the request of Ashworth, conveyed the said land, by warranty deed in common form, to one King; and thereupon, and as a part of the same transaction, said agreement for a deed from defendant to Ashworth was given up, and Ashworth gave to the defendant a release of said land, with all "the privileges and appurtenances thereto belonging." The court did not find that at the time of said deed to King the defendant knew of said conveyance from Ashworth to plaintiff's intestate. The said deed to King made no mention of the buildings, but described the land by metes and bounds, and the habendum clause contained the usual phrase, with all the privileges and appurtenances thereto belonging." The defendant never had actual possession of the premises from February, 17th, 1868, down to October, 1872, when he entered to foreclose a mortgage of the estate given by King to him.

The defendant asked the court to rule: First, that no title to said buildings, while annexed to the realty, could pass to plaintiff's intestate, as against the defendant, by said bill of sale. Second, that this action of trover would not lie against the defendant upon the evidence, even though the plaintiff's intestate had the right of removal. Third, that there was no evidence which would authorize a finding that defendant couverted said buildings. But the court refused so

to rule, but held, as matter of law, that as against defendant, the title to said buildings did pass to plaintiff's intestate by the bill of sale aforesaid; that this form of action would lie upon the facts; and that said deed from defendant to King operated as a conversion of said buildings, enabling King, a purchaser without notice, to hold the same as against the plaint iff's intestate, as a part of the realty. At the request of the defendant, the case was reported for the consideration of the Supreme Judicial Court. J. C. Sanborn and W. S. Knox, for plaintiff; E. T. Burley, for defendants.

MORTON, J., delivered the opinion of the court: It has been decided by this court in several cases that if a man puts a house, or other buildings. upon land of another, under an agreenfent with the owner of the land that he may remove it, the building remains his personal property. He may lose his right to it, if the land is sold to an innocent purchaser without notice of the agreement. He can not set up his title against such innocent purchaser whom he has misled by permitting the building to be attached to and apparently a part of the realty bought by him. But as against the original owner of the land, and all persons taking under him with notice, the building never becomes a part of the realty, but remains personal property, and he, or a purchaser from him, may maintain replevin or trover to recover it or its value, even while it remains upon the land and apparently a part of the realty. Hunt v. Bay State Iron Co., 97 Mass. 279; Curtis v. Riddle, 7 Allen, 185; Hinckley v. Baxter, 13 Allen, 139; Brooks v. Prescott, 114 Mass. 392; Hartwell v. Kelly, 117 Mass. 235.

In the case at bar it is found as a fact, that Ashworth put the buildings in controversy upon the land of defendant under an agreement, "that they were not to be the property of defendant, but that he, Ashworth, should have the right to remove them at any time." By virtue of this agreement, they never became a part of the defendant's rea estate, but remained the personal property of Ashworth. He had the right to sell them to the plaintiff's intestate, and she can maintain this action of tort in the nature of trover against the defendant, if he converted them to his own use.

The question whether, upon the facts proved, the defendant was guilty of a conversion, is not free from difficulty. To understand it, it is necessary to refer to the facts which show the relations between the parties. The defendant had agreed te give Ashworth a deed of the land upon his paying a part of the price, and giving a mortgage for the balance. Ashworth was thus the equitable and beneficial owner of the land, and he was in the occupation of it under an agreement to pay the defendant a sum equal to the interest upon the price. While thus in possession, he sold the buildings by a bill of sale not recorded to the plaintiff's intestate. Afterwards Ashworth requested the defendant to convey the land to one King, which the defendant did by a warranty deed in the common form, which made no mention of the buildings. At the same time the defendant's

agreement to convey to Ashworth was given np, aud Ashworth gave to the defendant a release of the land with all the privileges and appurtenances thereto belonging." At the time of this transaction the defendant did not know of the sale to the plaintiff's intestate. But he knew that, by virtue of the agreement he had made, the buildings remained personal property, and he is presumed in law to have known that the effect of the sale of his land to King would be to give him a title to the buildings, and thus deprive the owner of all right to them. His sale to King was the exercise of dominion over the property inconsistent with the right of the plaintiff's intestate, who was the owner. It is similar to the common case, where a man innocently sells and appropriates to his own use the property of another, in ignorance of the ownership. Such an appropriation, though made without any intent to wrong the owner, is in law a conversion.

We are, therefore, of opinion, that the rulings at the trial in the Superior Court were correct.

ACCIDENT-WHEN RAILROAD NOT LIABLE FOR.

HALLIHAN v. HANNIBAL, ETC. R. Co.

Supreme Court of Missouri, March 22, 1880.

H, a car repairer of another railroad passing over defendant's track was requested by a car repairer of the latter to look at a car standing on defendant's track, and while attempting to comply with the request was killed by a freight train switched in the usual way and not coming very fast, striking the car which was being examined and driving it over him. There was nothing in the evidence to show that defendant was aware of the perilous position in which H had placed himself, or that if aware the injury could have been prevented. Held, that defendant was not liable.

SHERWOOD, C. J., delivered the opinion of the

court:

Action for damages for injuries resulting in death of plaintiff's husband. Plaintiff had judgment for $5,000.

The yards of defendant where the accident occurred are about ten acres in extent, and covered with a net-work of tracks where the switching of cars and the making up of trains was going on almost continuously during the busy season. It seems to be the customary manner of switch'ng cars in the yards of defendant for the engine to take the cars up towards the bridge, then kick them off, when they are cut off by yardsmen to run on the different tracks wherever wanted; and ears can not be coupled at all without the cars switched have acquired a sufficient momentum to strike the cars to which they are to be coupled with a considerable degree of force: enough to move the cars with which they come in contact a distance of several feet.

Harris, a car repairer of defendants, was at the

time of the accident at the south end of a car recently repaired, and engaged in inspecting it. That car stood on a track running ear the freight depot, and close to the platform of that depot, which track was used by defendant for transferring freight from defendant's road to others; there cars would be placed which had to be unloaded into or loaded from the cars of other roads. This track was entirely distinct and apart from the repair track. South of and below the car being inspected on the samẻ track, and distant nearly a car's length was a string of fifteen or twenty cars, and to the north or in the direction of the bridge there stood one car, though not, it seems, on the same track. There was a switch 100 yards north of the car Harris was examining, the track there inclining to the south from the switch. About 175 feet from the freight depot stood a tool house some ten by twelve feet in size, six or seven feet from the track where that, after running south from the switch, bore off to the west before reaching the tool house. There was evidence that this house would, in all probability, obstruct the view of the cars coming down the track, but that a man standing on the freight depot platform could see a car coming down on the track if he looked.

While Harris was engaged in the work of inspection, and either under the south end of the car or else standing on the track at the south end of the car, Hallihan, who was a car repairer of the M. R. etc. R. Co., had been so for several years, and thoroughly conversant with the customs of defendant's yard in respect to defendant's method of distributing cars by means of running switches, being accustomed to being about the yards every day, came along on the freight depot platform, and while there or else near Harris, the latter spoke to him to look how certain repairing had been done on the car being inspected. Hallihan, it seems, complied or attempted to comply with the request made him, when a freight car, switched in the usual way and not coming down very fast, drove the car Harris was examining, a distance of seven or eight feet, ran against Harris and over Hallihan, resulting in the death of the latter. The position that Hallihan occupied at the time of the fatal occurrence, it is impossible to determine. Harris says: "I had no time to look to see what deceased was doing, the accident was so sudden; I should judge that if he had time after I spoke to him, he was stooping down looking at the car when the accident happened." "I don't know whether Hallihan was stooping down on the track looking a the car." "The accident happened so quick after I spoke to him, that I don't know what was done; it was almost the instant I spoke that the accident happened; there was no time for looking after the words were spoken." This witness also states that he looked immediately after the cars came together, and saw no brakeman on the car or near there; that it was not impossible for a brakeman standing on the car coming down, when within four cars' length or 128 feet, to see Harris and Hallihan behind the car, though there was "great improbability of it." There was positive testimo

ny of several other witnesses that there was a brakeman on the car which caused the injury.

The foregoing was the substance of the testimony, and upon that we are called upon to say whether the court below erred in its refusal to give, at the instance of the defendant, an instruction in the nature of a demurrer to the evidence. We think such an instruction should have been given, and these are our reasons therefor: There is nothing in the evidence adduced at the trial to show that defendant was aware of the perilous position in which Hallihan had placed himself, or that even if thus aware, the injury complained of could have been prevented; for the testimony of Harris conspicuously shows that the negligent act of Hallihan, and the act of defendant causing his death, were to all practical intents and purposes, simultaneous and concurrent acts. Harris calls to Hallihan, the latter responds or attempts to respond to the call, and immediately the car being examined is struck. So quickly does the one event succeed the others, that Harris will not undertake to say what the position of Hallihan was when receiving the injury. If Harris, in the immediate presence of, and in contiguity to, Hallihan, was not able to discover his position, would it not be altogether unreasonable to demand that a brakeman, if on the incoming cars, should be required to do more, and for failing to do this, to demand that the company be held liable? Liability is never created except by the non-performance of duty, but it was not a failure to perform a duty because the defendant failed to anticipate that Hallihan would prove a trespasser on its track.

The defendant company had as much right to a free and unobstructed use of that track and of its yards, and as little cause to suspect or anticipate an interference with those rights, as has the honest farmer for similar unfavorable anticipations when, driving his team afield within his own lawful inclosure, and on the soil of his own homestead. The case is even stronger in behalf of the company in consequence of the peril attendant on, and incident to, coming in contact with the dangerous character of the machinery which the prosecution of its business compels it to employ. A person would perhaps be guilty of but slight negligence while attempting to cross or temporarily to obstruct the roadway of a slow-moving farm wagon, while he would be justly held guilty of the extreme of rashness, should he attempt to cross or to temporarily obstruct the roadway of a moving car. These remarks, applicable in all instances where a railroad company is engaged in distributing cars and making up trains in its own private yards, where it owes no special duty to the general public, as is the case of streets, public crossings and the like, apply with unwonted force in the present instance; for not only was Hallihan not engaged in the exercise of a legal right, but he incurred a special risk by venturing upon the transfer track of defendant, and undertaking to examine a car there, when it must be presumed from the facts in evidence, that he was familiar with the peril his rash act invited. That track