a corporation of New Jersey authorized to do business in Pennsylvania. Both were engaged in the same line of trade at Pittsburg, and the result was a confusion in correspondence and in the drawing and honoring of checks and drafts; and the defendants were enjoined. There are two classes of cases,' says Mitchell, J., 'involving judicial interference with the use of names: First, where the intent is to get an unfair and fraudulent share of another's business; and, second, where the effect of defendant's action, irrespective of his intent, is to produce confusion in the public mind, and consequent loss to the complainant. In both cases the courts of equity administer equitable relief.'"'61

§ 148. Hotel, restaurant and theatre names and rights created thereby.-As we have seen elsewhere, as a general rule, the name of a place of business will be protected as against competitors who adopt misleading signs or other advertising matter in order to divert to themselves the business established by the one first adopting the name. It is apparent that there is this distinction between the names of hotels and the names of other places of business; as to other commercial enterprises there may be unfair competition between places of business located in different cities or sections, and doing a mail-order business, or transacting business generally by mail, while as to hotels, no such unfair competition can arise because there can be no confusion created by two hotels in different cities, having the same name. The names of hotels, moreover, stand in a class by themselves because of the complex character of the business involved. In one of the early opinions, Campbell, J., in a case involving the name "Irving House," drew, this distinction in the following words: "We think that the principle of the rule is the same, to whatever subject it may be applied, and that a party will be protected in the use of a name, which he has appropriated, and by his skill made valuable, whether the same is upon articles of per

61-Archbald, J., in Van Houten v. Hooton Cocoa & Chocolate Co., 130 Fed. Rep. 600, 603. That a decree is proper which provides that all mail doubtfully addressed

shall be received by one party and opened in the presence of a representative of the other party, see J. I. Case Works v. J. I. Case Co. 162 Wis. 185; 155 N. W. Rep. 128.

sonal property which he may manufacture, or applied to an hotel where he has built up a prosperous business.

To make the application, if one man has, by close attention to the comfort of his guests, and by superior energy, made his hotel desirable for the traveler, and caused its name to become popular throughout the land, another man ought not to be permitted to assume the same name in the same town, and thus deprive him who first appropriated the name of some portion of the fruits of that goodwill which honestly belongs to him alone." 61a Under this doctrine, the hotel names "Columbia," 62 "McCardel

House,' 63 "Osborn "What Cheer,'

1966

"Woods Hotel," "Metuchen Inn," and "Hotel Dominion," have been recognized and protected in equity.

To have two hotels of the same name in the same town "under rival management would lead to great confusion and inconvenience to the public, whose rights are to be considered." 69a

The owners of hotels have further been protected by injunction against the unauthorized use of the name of the hotel by persons running carriages and other conveyances for the transportation of travelers. Thus the proprietor of the Irving Hotel was granted an injunction against the use of the name of the hotel by the defendant upon his coaches, and upon badges. worn by his employes. In granting the injunction, Cantel, J., said, "The question is, whether the defendants have com

61a-Howard v. Henriques, 3 Sandf. 725; and see the language of Van Fleet, V. C., in Wilcoxen v. McCray, 38 N. J. Eq. 467, 468. "That a hotel proprietor may acquire a right in the name of his hotel I deem to be entirely settled by precedent, and indisputable in reason." Pitney, V. C., in Busch v. Gross, 71 N. J. Eq. 805, 64 Atl. Rep. 754. 62-Whitfield v. Loveless, 64 Off. Gaz. 442.

63-McCardel v. Peck, 28 How. Pr. 120.

64-Hudson v. Osborne, 21 L. T. N. S. 386.

65-Vonderbank v. Schmidt, 44 La. Ann. 264.

66-Woodward v. Lazar, 21 Cal. 449; Gamble v. Stephenson, 10 Mo. App. 581.

67-Woods v. Sands, Fed. Case No. 17,963.

68-Busch v. Gross, 71 N. J. Eq. 805; 64 Atl. Rep. 754.

69-O'Grady v. McDonald, 72 N. J. Eq. 805; 66 Atl. Rep. 175.

69a-Freeland v. Burdick, 200 Mo. App. 226, 204 S. W. Rep. 1123.

mitted a fraud. I can not doubt that their intention was to mislead, and to induce travelers to believe that they were servants of the proprietor of the Irving Hotel." 70 A similar rule was made in favor of the lessee of the "Revere House" under practically the same circumstances."

More recently, the Supreme Court of New York granted an injuncton to restrain the use of the name of the "Holland House" as a trademark for cigars. At the time that the cigars so marked were placed upon the market, there was no hotel of the name open for business in the city of New York. The plaintiffs were the proprietors of a building in the course of construction, which was to be used for hotel purposes, however, and that building was well-known throughout the city of New York as the "Holland House." The injunction was granted upon the ground that the defendant intended to falsely represent to the public that the cigars were in some way connected with the hotel known as the "Holland House."' 72 Where both parties used the words "Opera House," "contemporaneously and without any definite intention to enjoy such use exclusively," both places of amusement being in the same locality, a suit for injunction was dismissed.73

The use of the same name by the owner of another class of building (for example, the later use of a name as that of a hotel which had been adopted for an apartment house) will not be enjoined in the absence of proof of damage."4

Competing cab companies.-The keen competition of competing taxicab operating companies has led to imitation of vehicles and other unfair acts whose range is indicated by the scope of the following injunction. "First from using the trademark device of plaintiff or any imitation or simulation thereof; second, from using upon automobiles operated by defendant for

70-Stone v. Carlan, Cox, Case No. 104.

71-Marsh v. Billings, 7 Cush.

322.

72-Kingsley v. Jacoby, 20 N. Y. Supp. 44.

73-Chadron Opera House Co. v. Loomer, 71 Nebr. 785; 99 N. W. Rep. 649.

74-Astor V. West 82d Str. Realty Co., 152 N. Y. S. 631; 167 App. Div. 273.

hire the finish, design, color, appearance, style, or dress of plaintiff's taxicabs or any imitation or simulation thereof; and, third, from using any scheme, plan, device, pretense, shift, or contrivance of any kind or nature, causing or tending to cause defendant's taxicabs to be mistaken or substituted for plaintiff's taxicabs or taxicab service.

74a

The decree was amply sustained by the facts and on authority of similar cases.

74b

§ 149. Artistic productions as subjects of unfair competition.-Has the artist who creates a distinctive character in a picture any right to its protection aside from the copyright laws, assuming that the picture is not used as a trademark? Outcalt, a designer of comic pictures, exploited the character of "Buster Brown," in various pictures. He sold the pictures to a newspaper, by which they were copyrighted. Upon his application to enjoin that paper from publishing comic sections embracing pictures of "Buster Brown" in scenes and situations other than those in which Outcalt had depicted him, Judge Lacombe dismissed the motion as based upon a theory both novel and unsound.75

The author of the "Mutt and Jeff" series of cartoons had better success, a decree squarely based upon the trade-right of the cartoonist to develop his characters in new situations being sustained by the New York Court of Appeals.758

But where a charge of unfair competition is based upon the reproduction by the defendant of works of art which the complainant might have, but has not, copyrighted, a very different question is presented. The sale of the uncopyrighted. work by the plaintiff is a dedication to the public, and the

74a-Yellow Cab Co. v. Becker, 145 Minn. 345, 176 N. W. Rep. 345. 74b-New York Cab Co. V. Mooney, 15 Abb. N. C. (N. Y.) 152, 159; Yellow Cab Co. v. Cook's Taxicab & Transfer Co., 142 Minn. 120, 171 N. W. Rep. 269.

75-Outcalt v. New York Herald, 146 Fed. Rep. 205. Compare New York Herald Co. v. Ottawa Citizens' Co., 41 Canada Sup. Ct. 229, denying trademark registration to "Buster Brown."

75a--Fisher v. Star Co., N. Y. 132 N. E. Rep 133.

76

defendant or any other may copy the work by any process without being guilty of unfair competition. Of course the use of plaintiff's tradename on such copies will be enjoined.76a Different quality of composer's work at various dates.-The right of a successful composer to enjoin the new publication of one of her early and unsuccessful songs, advertised as "now ready," to present it to the public as a new song, has been the subject of discussion by Mr. Justice Eve, who refused the relief sought.76b

§ 150. The rights in patentable but unpatented articles. -Following the consideration of the question of unfair competition as applied to uncopyrighted works of art, it would seem equally obvious that, as to those features which are patentable, the right to patentable but unpatented machines, manufactures and designs would by two years' public use (see section 4886 R. S. U. S.; section 4933 R. S. U. S. as to designs) pass to the public, and that the doctrines of unfair competition could not be invoked to impair the public right therein. Thus, in the case of a new style of printing type, in denying equitable relief, Judge Putnam said: "The type in question has no characteristics in particular, except that of utility; and, if the bill could be sustained, the plaintiff would obtain a perpetual patent for a useful article, running indefinitely, without any assistance from the patent office of the United States. On putting the question in this form, it is so clearly met by the law that it needs no discussion." "7

So where plaintiff has an application for patent pending the defendant (until patent issues) has a clear right to make the article which is the subject of the application; but he has no right to copy every detail of form, shape and appearance of that article, and copy the plaintiff's advertising matter with its cuts and illustrations.78

One who attempts to keep his discovery a secret, while vending a product made under the process of his discovery,

76-Bamforth v. Douglas Post Card & Mach. Co., 158 Fed. Rep. 355, 357.

76a-White Studio, Inc., v. Dryfoos, 221 N. Y. 46, 116 N. E. Rep. 796.

77-Keystone Type Foundry v. Portland Pub. Co., 180 Fed. Rep. 301, 303; affirmed in Keystone Type Foundry v. Portland Pub. Co., 186 Fed. Rep. 690; 108 C. C. A. 508. 78-Stewart v. Hudson, 222 Fed.

76b-Harris v. Warren & Phillips, Rep. 584. 35 R. P. C. 217.