over a term of years, filing application for patent only when the secrecy of his invention appears to be in jeopardy, may have his patent held void upon the ground of abandonment.79

§ 151. "The right to imitate." This expression has been employed by Mr. Justice Holmes, in referring to the manufacture of "Artificial" Hunyadi water. It is an apt and comprehensive phrase, as pointing out the fact that the thing used by the plaintiff to distinguish his goods is a thing of common right, incapable of exclusive appropriation, and hence the defendant has, in a limited sense, "the right to imitate." The language of Mr. Justice Holmes is as follows: "If there is any well-founded doubt as to the right to use a personal tradename with proper guards against deception to signify what one is imitating, where one has the right to imitate, there can be none that one is at liberty to refer to a geographical expression to signify the source of one's model." 80 But the "right to imitate" must be exercised with great caution, and evidence that actual deception has resulted from the attempted exercise of that so-called right by the defendant will incline a court of equity very strongly against the defendant; for example, the sale of a whisky made in the United States under the name "Canadian Type" in competition with "Canadian Club." 81

8152. Use of machine manufacturer's name in sale of repair parts. The question of the right of a dealer in repair parts for machinery to describe those parts by the name of the machine in whose repair they are used, gives rise to the adjustment of the dealer's right to truthfully describe his repair parts, and the manufacturer's right to be protected against a misrepresentation that the parts are of his manufacture. The dealer in repair parts for Ford automobiles who advertised such parts prefixed with the word "Ford" was enjoined upon the doctrine that "While the defendant has a right to

79-Macbeth-Evans Glass Co. v. General Electric Co., 231 Fed. Rep. 183; affirmed, 246 Fed. Rep. 695, C. C. A. 6; approved, Woodbridge v. United States, 263 U. S. 50.

80-Saxlehner v. Wagner, 216 U. S. 375, 381; 54 L. Ed. 525; affirming Saxlehner v. Wagner, 85 C. C. A. 321; 157 Fed. Rep. 745.

81-Hiram Walker & Sons V. Grubman, 224 Fed. Rep. 725.

inform the public that he is manufacturing articles suitable for use on Ford machines, he should not be permitted to advertise them as Ford articles, but should be required to describe them in such a way as to indicate that they are not manufactured by the complainant." 82

§ 153. Solicitation of customers by former employe.-It is still an open question whether one who has, as a salesman or otherwise, had the entree to customers, may on entering a competing employment solicit the trade of those customers. On principle, to prevent a salesman from continuing to sell goods to the same trade, but for another employer, would be to impose a burden on him which equity should not recognize or seek to impose. The Georgia court has well said, in such a case, "We are of the opinion, however, that he (the defendant) can not be restrained from selling his commodities, for himself or for any employer, in any part of the city, or to any person, so long as he does not use any property belonging to the complainant, or copies thereof that were surreptitiously made. So far we think ourselves well within equity jurisdiction, on general principles.

183

The protection, by injunction, against the use of lists of customers of a former employer, has been granted in a number of cases, the injunction being made so broad as to restrain the employe and later employer from calling upon the customers named in such lists or soliciting their patronage, under circumstances aptly described as follows: "It follows that defendant tea company and its officers and agents will be restrained from obtaining the benefit of plaintiff's list of customers by hiring drivers away from the plaintiff for the purpose of having them canvass and solicit trade from the plaintiff's customers formerly served by them. That this was done in the case of Wahl and other drivers admits of no doubt. "The defendant tea company undoubtedly has the right to solicit the trade of plaintiff's customers, and to obtain a list thereof by using opportunities for observation open to all. Plaintiff has no vested property rights in the trade of such

82 Brown, J., in Ford Motor Co. v. Wilson, 223 Fed. Rep. 808. Compare 134, ante.

83-Fish, J., in Stein v. National Life Association, 105 Ga. 821 (1899).

customers. The vice of defendant's position is that it obtained the lists or copies thereof by hiring the drivers and made the lists of value to itself by sending the drivers to transfer, if possible, the trade from their former employer to their new employer. In other words, although the end might be lawful, the means adopted were unlawful. This is a case not of malicious interference with contracts where equity refuses to interfere unless the services are of a unique and special character, but of unfair competition. The conduct of defendants amounts to an unlawful obtaining and use of a trade list. And in most of the cases in which such relief has been granted it has been based upon the theft or surreptitious copying of the customer's list of the former employer, rather than upon any theory that, in the absence of such a physical thing as the stolen or copied list, there should be any denial of the employe's right to solicit the trade of the same customers for another employer; 85 but there are other cases having no such refinement to support them, in which the driver-salesmen of laundries or bakeries, in the absense of any written or printed list, have been enjoined from soliciting their former trade,se and these cases seem to the writer to be wholly vicious and opposed to public policy. They give to the first employer the power to deprive the employe of the right to earn a livelihood among the people to whom he is known, so that a contract of simple employment is, by judicial construction, converted into a covenant not to reengage in business on a particular route or with particular people. There is no consideration for such a covenant, and it is thought that the liberty of the customer, as well as the employe, is unwarrantably abridged by such decisions.

It must be conceded that the courts have gone a long way in curbing the activities of former employes. Not only has the employe been enjoined from soliciting the trade of his

84-Pound, J., in Witkop & Holmes Co. v. Great Atlantic & Pacific Tea Co., 124 N. Y. Supp., 956 (Sup. Ct., 1910).

85-Stevens & Co. v. Stiles, 29 R. I. 399.

86-Empire Steam Laundry Co. v. Lozier, 165 Calif. 95; 130 Pac Rep. 1180; Smith v. Kernan, 8 Ohio Dec., reprint 32; Boosing v. Dorman, 133 N. Y. S. 910; 148 App. Div. 824.

former customers, but from selling to customers who, unsolicited, sought to buy goods from him.87

In following this line of procedure it has been several times held that the employe not only can not solicit the customers whose names were originally given him by the earlier employer, but that he could not solicit the trade of such customers as he had procured for the former employer by his own efforts.$8

In all of the cases referred to, there was no question of business secrecy, and all proceeded upon the theory that there was an abuse of confidence when the salesman tried to profit by the trading acquaintance made in the course of his former employment. Logically, it is quite immaterial whether the solicitor was employed by a bakery, a laundry, or an insurance company; and amidst the flood of false reasoning attending this subject it is refreshing to find the Georgia court making this clear statement: "The relation of Stein to the association was not a confidential one in the sense that he, by reason of it, acquired a knowledge of any business secrets. That knowledge of the policyholders which would be useful to him, in the event of his representing as agent another company, was not confided to him by the association, if derived from it at all. Persons may have taken out policies in the association on account of personal friendship for Stein or confidence in his integrity, and there is no reason why he should not be allowed to solicit their business for another company which he represents, his agency for the association having been terminated." 89

In a New York case the injunction sought against an insurance solicitor was denied in an opinion which states: "The uncontradicted evidence tends to show, and the custom is so universal that the court may take judicial notice,

that the business of a fire insurance agent, at least in the smaller cities and towns, is to represent contemporaneously several insurance companies, and consists in soliciting per

87-Loven v. People, 158 Ills.

159.

88-Witkop & Holmes Co. V. Boyce, 61 N. Y. Misc. 126; Empire Steam Laundry Co. V. Lozier,

165 Calif. 95; 130 Pac. Rep. 1180 (based on Calif. Civ. Code, § 1985).

89-Fish, J., in Stein v. National Life Association, 105 Ga. 821 (1899).

sons to permit the agent to place insurance for them, or in being solicited by those desirous of being insured, for the same purpose. Only in rare cases do those who seek insurance express preference for any one fire insurance company over another, or request that their insurance be placed in any particular company. The proof in this case tends to show that, for the three and one-half years Shipman was the agent of the plaintiff and other companies, he was rarely, if ever, requested to place insurance with any particular company, and exercised his own judgment in determining with which of the insurance companies he represented he would place the insurance. The policyholder was free to renew with any company he might see fit or not to renew his policy at all. Shipman procured the insurance for the plaintiff in the first place from customers or patrons of his own. It is entirely lawful for the defendant, so long as he does not use for that purpose the information gathered exclusively from the plaintiff's property, to solicit these customers and patrons in behalf of any insurance company he may see fit, the plaintiff or any other, so long as he does not abridge the enjoyment by the plaintiff of his beneficial interest in existing contracts of insurance by inducing improper cancellations." 90

It is the writer's conclusion that the more offensive decisions touching upon the question under consideration are due to the confusion of law with ethics, which is over-prevalent in modern judicial decisions as well as in modern legislation. In reaching the conclusion to grant the injunction the rights of the employe have been wiped out, in some instances, by treating his knowledge of the former employer's customers as "confidential knowledge," though no trade secret is involved, and the names and addresses of the customers could be lawfully ascertained by anyone who might see fit to follow the salesman in his daily or weekly canvass. One opinion of this type reads as follows:

"The obligation of an employe not to divulge or use confidential knowledge gained in the course of his employment to the prejudice of his employer is the foundation of 90-Hooker, J., in National Fire Insurance Co. v. Sullard, 97 N. Y. App. Div. 233.