Cottrell v. Babcock Printing Press Manf. Co.

66; Croft v. Day, 7 id., 84; Harper v. Pearson, 3 L. T., (N. S.,) 547; Witt v. Corcoran, L. R., 2 Ch. Div., 69; Hookham v. Pottage, L. R., 8 Cha. App., 91; Levy v. Walker, L. R., 10 Ch. Div., 436; Churton v. Douglas, Johnson, (Eng.,) 174; Scott v. Scott, 16 L. T., (N. S.,) 143; Stevens v. Paine, 18 id., 600; Mogford v. Courtenay, 45 id., 303; Millington v. Fox, 3 Myl. & Cr., 338; Clark v. Clark, 25 Barb., 76; Dale v. Smithson, 12 Abb. Pr. R., 237; Smith v. Cooper, 5 Abb. N. C., 274; Colton v. Thomas, 2 Brewst., (Pa.,) 308; Avery v. Mickle, 18 W. Jur., 292; Glen & Hall Manf. Co. v. Hall, 61 N. York, 234. The inspection of the card itself in connection with the finding of facts, divested of any conclusions, will show that it was likely to mislead, and might be interpreted by different people in different ways, all to the disadvantage and injury of the plaintiffs. It might be understood to mean that the old firm of Cottrell & Babcock had been dissolved and was without successors; or that the defendant was the only successor of the old firm; or that the only person now engaged in that business, and who was a partner in the old firm, is Nathan Babcock. There should be a decree enjoining the defendants from using the name of Cottrell & Babcock, and from soliciting trade from the customers of the late firm of that name, and for an account as prayed in the complaint.

J. Halsey and S. Lucas, for the appellees, contended that the court below had found as a fact that the card issued by the defendants "was not intended nor adapted to deceive "; that this was a question of fact the finding upon which could not be reviewed in this court, (Dudley v. Deming, 34 Conn., 174; Goodsell v. Sullivan, 40 id., 83; Spurr v. Coffing, 44 id., 147; Rogers & Bro. v. Rogers, 53 id., 147;) that the defendants did the plaintiffs no legal wrong in soliciting the custom of the old customers of the firm, if they practiced no deceit by falsely assuming the name and credit of the old firm, (Thompson v. Winchester, 19 Pick., 214;) that the sale of the good-will of the business to Cottrell could not prevent Babcock from engaging at

Cottrell v. Babcock Printing Press Manf. Co.

once in a similar business unless it was specially so provided in the contract of sale, which was not the case, (Browne on Trade Marks, §§ 523, 524, 526; Cox's Trade Mark Cases, Nos. 13, 17, 25, 406; Schackle v. Baker, 14 Ves., 468; Bassett v. Percival, 5 Allen, 347;) that courts will be specially cautious not to impose unnecessary restraints upon competition in trade, (Browne on Trade Marks, § 401;) and that the only restraint Babcock was under after selling the business to Cottrell was, that he would not be permitted to hold himself out to the world as carrying on the business of the old firm or that his presses were the presses manufactured by the plaintiffs, (Churton v. Douglas, Johnson, (Eng.), 174; Holmes, Booth & Haydens v. Holmes, Booth & Atwood Manf. Co., 37 Conn., 294; Morgan v. Schuyler, 79 N. York, 490; Hegeman v. Hegeman, 8 Daly, 1; Carmichel v. Latimer, 11 R. Isl., 395; Bergamini v. Bastian, 35 Louis. Ann., 60; Notes in 35 Am. Reps., 546, 550, and 48 id., 232.)

PARDEE, J. (after stating the facts). The plaintiffs' appeal presents the following reasons of appeal:

1. That the court erred in ruling that the plaintiffs upon these facts had not "acquired a valuable trade name and good-will in the business so advertised and conducted, which it was the duty of a court of equity to protect."

2. That the court erred in refusing to rule that the plaintiffs were the lawful and sole successors of the late firm of Cottrell & Babcock, and that the defendant had no right so to advertise or conduct its business as to induce the public to believe that it, or any of its officers, represented or were the successors of said firm.

3. That the court having found as a fact that "the card gives prominence to the name of Cottrell & Babcock," that "the words 'of the late firm of' were printed in much smaller type than any other words printed on said card," and "that said card was distributed among many of the old customers of the old firm of Cottrell & Babcock," erred in ruling that said card "was not adapted to mislead any person who had it."

Cottrell v. Babcock Printing Press Manf. Co.

4. That the court having found as a fact that said Nathan Babcock, after the conveyance aforesaid, personally and by letter, and that the defendants by their circulars, cards and advertisements, did solicit the patronage of customers of the old firm to the new firm, erred in ruling "that such an attempt to divert their custom was not an unlawful interference with the plaintiffs' rights."

Of course in the use of similar names, signs, advertisements, labels and cards, there is a wide field for efforts to mislead the public. There is the slight resemblance which would deceive only the most careless and the almost perfect reproduction which would deceive all save the most careful person of a thousand. And it must always remain a question of fact, as to whether the resemblance rises to the degree which constitutes it an injurious deception. Under our practice in this case the Superior Court inspected the card, saw the style and size of type, noted what is said and what is left unsaid, and heard evidence as to confusion of names, as to the misleading of possible customers and as to all other matters, and from the whole deduced and conclusively determined the resulting fact that no person would be led by the card to believe that the printing presses therein mentioned are manufactured by the plaintiffs, or that they have ceased to manufacture, or that the Babcock Printing Press Manufacturing Company had upon their cessation from the manufacture taken up and continued the business which they had dropped. By that finding this court is bound, and it answers the first three reasons for appeal.

In the contract terminating the partnership relation which had existed between Cottrell and Babcock, it is provided that no business shall thereafter be carried on in the name of that firm; thus reserving to each the full right to the use of his name. Cottrell did not require Babcock to agree, and the latter did not agree, to abstain from the manufacture of printing presses. By purchasing the goodwill merely, Cottrell secured the right to conduct the old business at the old stand, with the probability in his favor

Cottrell v. Babcock Printing Press Manf. Co.

that old customers would continue to go there. If he desired more he should have secured it by positive agreement; the matter of good-will was in his mind; presumptively he obtained all that he desired. At any rate the express contract is the measure of his right; and since that conveys a good will in terms but says no more, the court will not upon inference deny to the vendor the possibility of successful competition by all lawful means with the vendee in the same business. No restraint upon trade may rest upon inference. Therefore, in the absence of any express stipulation to the contrary, Babcock might lawfully establish a similar business at the next door, and by advertisement, circular, card, and personal solicitation, invite all the world, including the old customers of Cottrell & Babcock, to come there and purchase of him; being very careful always, when addressing individuals or the public, either through the eye or the ear, not to lead any one to believe that the presses which he offered for sale were manufactured by the plaintiffs, or that he was the successor to the business of Cottrell & Babcock, or that Cottrell was not carrying on the business formerly conducted by that firm. That he may do this by advertisements and general circulars courts are substantially agreed, we think. But some have drawn. the line here and barred personal solicitation. They permit the vendor of a good-will to establish a like business at the next door, and, by the potential instrumentalities of the newspaper and general circulars, ask the old customers. to buy at the new place, and withhold from him only the instrumentality of highest power, namely, personal solicitation. To deny him the use of the newspaper and general circulars is to make successful business impossible, and therefore is to impose an absolute restraint upon the right to trade. This the courts could not do except upon express agreement. But possibly the old customers might not see these; and in some cases the courts have undertaken to preserve this possibility for the advantage of the vendor and found a legal principle upon it. Other courts have been of the opinion that no legal principle can be

Cottrell v. Babcock Printing Press Manf. Co.

made to rest upon this distinction; that to deny the vendor personal access to old customers even, would put him at such disadvantage in competition as to endanger his success; that they ought not upon inference to bar him from trade either totally or partially; and that all restraint of that nature must come from his positive agreement. And such we think is the present tendency of the law.

The plaintiffs cite Burrows v. Foster, 32 Beavan, 18; Labouchere v. Dawson, 13 L. R., Eq. Cas., 332; Quinn v. Cooper, 14 Ch. D., 596; and Leggott v. Barrett, 43 Law Times, N. S., 641. The Court of Appeal, in Pearson v. Pearson, 27 L. R., Ch. D., 145, commented upon the last three of these cases in 1884. In that case Theophilus Pearson, as trustee of a will, carried on a business which had been carried on by the testator under the name of James Pearson. By an agreement made to compromise a suit, James Pearson, a son of the testator, and a beneficiary under his will, agreed to sell to Theophilus Pearson all his interest in the business, and in the property on which it was carried on; and it was provided that nothing in the agreement should prevent James Pearson from carrying on the like business where he should think fit and under the name of James Pearson. Theophilus Pearson brought an action to enforce this agreement and to restrain James Pearson from soliciting the customers of the old firm. An injunction was accordingly granted by KAY, J., on the authority of Labouchere v. Dawson, Law Reps., 13 Eq. Cas., 322, and the cases in which it had been followed. It was held by BAGGALLAY and COTTON, L. Js. (LINDLEY, L. J., dissenting,) that Labouchere v. Dawson was wrongly decided and ought to be overruled, and that even apart from the proviso in the agreement, the plaintiff was not entitled to the injunction which he had obtained. The judges remarked substantially as follows:

BAGGALLAY, L. J., said :—"In this case the defendant agreed to sell to the plaintiff his interest in a business, which agreement was carried into effect by an order of the 27th of March, 1884, in another action. In the present