They have never refused to do so when the facts show that the failure to exercise equitable jurisdiction would permit unfair competition in trade or in any matter pertaining to a property right.1 The principle which interdicts unfair competition in trade will protect a publisher who has imparted to his books peculiar characteristics which enable the public to distinguish them from books published by others and containing the same literary matter against the copying of the characteristics though the copyright on the literary matter has expired. (Merriam Co. v. Straus, 136 Fed. Rep. 477; Merriam Co. v. Saalfield Pub. Co., 238 Fed. Rep. 1.) Even in the case of a patented article like the Singer sewing machine where on the expiration of the patent the right to use the name of the patentee passes to the public, it is unlawful to so design a machine and place the name thereon as to deceive the public into believing that the machine made by a new company was actually made by the old Singer Manufacturing Company. (Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169.) In McLean v. Fleming (96 U. S. 245, 251) it was held that no trader can adopt a trade mark so resembling that of another trader as that ordinary purchasers buying with ordinary caution are likely to be misled. . . It appears from the findings of fact that the grotesque figures in respondent's cartoons, as well as the names "Mutt" and "Jeff " applied to them have in consequence of the way in which they have been exploited by the respondent and the appearance and assumed characters of the imaginary figures have been maintained, acquired a meaning apart from their primary meaning, which is known as a secondary meaning. The secondary meaning that is applicable to the figures and the names is that respondent originated them and that his genius pervades all that they appear to do or say. It also appears from the findings of fact that the respondent is the owner of the property right existing in the characters represented in such figures and names. They are of his creation. They were published and became well known as distinct characters before the contract was made with the appellant. Property rights in literary and other property, the product of the brain as between employer and employee, are determined by what was contemplated by the contract of employment. (Root v. Borst, 142 N. Y. 62.) While the contract with appellant contemplated that the respondent should draw cartoons in the form of comic strips in which he would use the figures known as "Mutt" and "Jeff" and the names connected therewith as he had done prior to such contract, it did not purport to sell to appellant his property rights then 1 Chase, J., stated International News Service v. Associated Press, supra ; Bell v. Locke, 8 Paige 75, enjoining the simulation of the name and dress of a newspaper; Estes v. Williams, 21 Fed. 189, protecting the name, "Chatterbox," for a series of juvenile books. existing or which might be acquired thereafter. The contract with appellant expired on August 8, 1915. The common-law right of property that the plaintiff had in particular cartoons was lost when they were severally published. (Caliga v. Inter Ocean Newspaper Co., 215 U. S. 182.) The respondent does not claim to the contrary. If the copyrights were to be considered, it would appear that the respondent was the first to copyright one of his cartoons containing the well-known figure of "Mutt" and in which the name "Mutt" was applied to the figure. He also copyrighted the book in which the cartoons were designated as "The Mutt and Jeff Cartoons. By Bud Fisher." . . . The name "Bud Fisher" was used by the respondent in connection with his work as a cartoonist. As we have already stated, it is unnecessary to discuss the question of the rights of the public or of appellant to reproduce the particular cartoons that have been published because the plaintiff's claim in this action rests upon other facts and principles as stated herein. The figures and names have been so connected with the respondent as their originator or author, that the use by another of new cartoons exploiting the characters "Mutt and Jeff" would be unfair to the public and to the plaintiff. No person should be permitted to pass off as his own the thoughts and works of another. If appellant's employees can so imitate the work of the respondent that the admirers of "Mutt and Jeff" will purchase the papers containing the imitations of the respondent's work, it may result in the public tiring of the "Mutt and Jeff" cartoons by reason of inferior imitations or otherwise, and in any case in financial damage to the respondent and an unfair appropriation of his skill and the celebrity acquired by him in originating, producing and maintaining the characters and figures so as to continue the demand for further cartoons in which they appear. The only purpose that another than respondent can have in using the figures or names of "Mutt " and " Jeff " is to appropriate the financial value that such figures and names have acquired by reason of the skill of the respondent. The appellant urges that the courts have decided adversely to the claim of the respondent in a litigation which related to the use of the name "Buster Brown" as a title of a comic section of a newspaper.2 1 The Patent Office had denied the application of the defendant to cancel Fisher's registration of "Mutt and Jeff" as a trade-mark. 2 Chase, J., discussed N. Y. Herald Co. v. Star Co., 146 Fed. 204; same v. Outcalt, 146 Fed. 205; same v. Ottawa Citizens Co., 41 Can. Sup. Ct. 229. The Canadian court held that a title to the comic section of a newspaper could not be registered as a trade-mark. The Herald was not selling "a kind of paper or of paper colored in any particular way or covered with a peculiar kind of ink or set form or figures. It is the nonsense that is produced by the brain of the man writing for the diversion of the idle that in truth is sold." The judgment should be affirmed, with costs. All concur except CRANE, J., who dissents on the ground that plaintiff seeks to maintain rights which can only be had under the copyright law. The copyright law does not apply and the plaintiff has no rights thereunder. This action in my judgment is in effect a substitute for the rights which the plaintiff might have had under the copyright law. Judgment affirmed.1 1 Cf. Glyn v. Western Feature Film Co., L. R. [1916] 1 Ch. 261. See 7 Corn. L. Q. 66; 20 Mich. L. Rev. 240; 19 A. L. R. 953, 962. The Federal Trade Commission and Unfair Competition: W. Notz, "New Phases of Unf. Comp. and Measures for its Suppression - National and International," 30 Yale L. J. 384 (1921); 10 Cal. L. Rev. 229; 20 Mich. L. Rev. 122; 20 Colum. L. Rev. 328, 806; 21 ib. 721; 18 A. L. R. 549. The following cases of injury to business present interesting problems: White v. Mellin, [1895] A. C. 154. Correro v. Wright, 93 Miss. 306 (1908); 57 U. Pa. L. Rev. 251. wa's land. Do claims there casona Lord at low! dented. CHAPTER II THE BASES OF SPECIFIC RELIEF 1 SECTION I THE ESTABLISHMENT OF THE TORT HART v. LEONARD. COURT OF ERRORS AND APPEALS, NEW JERSEY, 1886. [42 New Jersey Equity Reports, 416.] DIXON, J. The bill in this case avers that the complainant is the owner of a wood and pasture lot containing three and thirtyseven hundredths acres of land, and that he and his predecessors in title have, by adverse user for over twenty years, acquired a right of way across the lands of the defendant from a certain public road to said lot; that the defendant now obstructs said way; and the bill therefore prays a decree that the complainant is entitled to the way, and a mandatory injunction, commanding the defendant to remove the obstruction, and allow the complainant to pass through at his pleasure. The answer denies the complainant's right. The complainant's testimony tends to show user for over twenty years. The defendant's testimony tends to show that the user was not adverse, but was by his express permission, as an act of neighborly accommodation. The Vice-Chancellor advised a decree and injunction, according to the prayer of the bill. Hence this appeal. From the foregoing statement it appears that the claim set up is to a purely legal interest in lands, resting upon a purely legal basis. Before attempting to determine the validity of the claim, it is proper to consider whether the question presented comes within the cognizance of a court of equity. No doubt many cases arise in which courts of equity may, by decree and injunction, protect and enforce legal rights in real estate. So far as they are exemplified in our chancery practice, these cases can, I think, be classified under 'the following heads: 1. Cases where the legal right has been established in a suit at law, and the bill in equity is filed to ascertain the extent of the right 1 The topic of jurisdiction to enjoin foreign torts logically belongs here, but is omitted because it is only a part of the broader topic of the territorial effects of equitable jurisdiction generally. and enforce or protect it in a manner not attainable by legal procedure.1 2. Cases where the legal right is admitted, and the object of the bill is the same as in the class just mentioned. 3. Cases where the legal right, though formally disputed, is yet clear, on facts which are not denied and legal rules which are well settled, and the object of the bill is as before stated. 4. Cases where one attempts to appropriate the land of another, under color of statutory authority, without complying with the legal conditions precedent. 5. Cases where the object of the bill is to stay waste. 6. Cases where the object of the bill is to prevent an injury which will be destructive of the inheritance, or which equity deems irreparable, i.e., one for which the damages that may be recovered according to legal rules do not afford adequate compensation. 7. Cases where the object of the bill is to protect one's dwelling from injuries which render its occupancy insecure or uncomfortable. 8. Cases where the right to be protected or enforced grows out of the expressed or implied terms of a contract, so that the court can entertain jurisdiction by virtue of its power to compel specific performance. 9. Cases where the object of the bill is to prevent a multiplicity of suits, otherwise rendered necessary by the fact that many persons are interested in the controversy. Outside of these classes there is no jurisdiction in a court of equity over the invasion of mere private legal rights in land. The appropriate remedy is by suit at law. The case in hand does not come within any of these classes. It bears no trace of resemblance to any except those of the third or those of the sixth class. But the third class does not include it, because the evidence shows a substantial dispute over the fact of adverse user, which the defendant is entitled to have settled by the verdict of a jury; and the sixth class does not cover it, because the temporary obstruction of a way to a small wood and pasture lot can be fully paid for by the damages recoverable according to legal rules. The decree below should be reversed, and the bill should be dismissed. Decree unanimously reversed.2 1 The authorities for the various classes named are all New Jersey cases, and have been omitted. 2 In Renwick v. Hay, 90 N. J. Eq. 110, Lane, V.C., said: I do not conceive that there may not be cases, cognizable in equity, which do not fall strictly within any of the nine classes mentioned by Justice Dixon." On the principle of exclusion in legal reasoning, see 34 Harv. L. Rev. 391. |