Munro v. Smith — 18 N.Y. St. Rep. 278

Majority

p. 278

George Munro, Pl’ff, v. Orlando G. Smith and Others, Def’ts.

(Supreme Court, Special Term, New York County,

Filed October 10, 1888.)

Headnote

Trade mark—Injunction—When improper use op a name may be enjoined.

One H. wrote certain books under the rum de plume of “Old Sleuth," which were published by plaintiff and entitled “ Old Sleuth.” Afterward plaintiff published a series of books under the title of “Old Sleuth” series, the volumes of which had on the cover a figure purporting to represent “Old Sleuth.” Held, that while anyone paving authority to publish a book by H. would have the right to designate that book as “ by the author of Old Sleuth/" that plaintiff had a right to an in june tian against the use of the name of “ Old Sleuth,” and of the representative device on the cover of the books when they were so used as to mislead the public into a belief that the volume bearing them was a part of the “ Old Sleuth " series published by plaintiff.

Roger Foster, for pl’ff; G. H. Adams and A. L. Sessions, for def’ts.

The word “ Sleuth ” in ordinary language has a defined meaning, which, in the dictionary, is given as “ The track of man or beast as known by the scent.”

It appears that Mr. Halsey used this word in combina

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tian with the word “Old” as his pseudonym in his first stories, which were published by the plaintiff under the title of “Old Sleuth,” and they were accompanied by the figure of a man purporting to represent “ Old Sleuth.” ;

Subsequently the plaintiff, in connection with other publications, applied the name “ Old Sleuth ” to a series of stories. The defendants here have published three books produced upon the trial written by Mr. Halsey, and which on their face state that they were so written by the author of “ Old Sleuth,” and are also accompanied by the figure resembling the one originally placed upon the series pub-r lished by the plaintiff.

Whatever rights the plaintiff derived from the publication of the “Old Sleuth” library, it would seem equally clear that Mr. Halsey, who adopted that title of “Old Sleuth ” as his nom deplume, had the right subsequently to use the same as a writer of books. I do not see, therefore, how a person having the right to publish a story written by Mr. Halsey would not have the right to say that they were written by the author of Old Sleuth,” or by “ Old Sleuth.”

The plaintiff, however, by the establishment of a series known as the Old Sleuth series, and the invention of the figure of an old countryman, intended to represent a detective in disguise, acquired the right to designate his library or series of publications by that title and device, and to that right he is entitled to protection, and therefore while as to stories written by the author of “ Old Sleuth ” the description cannot be enjoined, but the manner or mode in which the name is used can be enjoined.

An inspection of the device used by the defendant to' designate his stories, clearly shows that the intent of the defendant in adopting the style and device that he has adopted, was to induce the purchasers to believe that the publications were part of the series published by the plaintiff.

“ The manner of using the name is all that would be enjoined, not the simple use of it, for every man has the absolute right to use his own name in his own business, even though he may thereby interfere with or injure the business of another person bearing the same name, provided he does not resort to any artifice or contrivance for the purpose of producing the impression that the establishments are identical, or do anything calculated to mislead.” Meneely v. Meneely, 62 N. Y., 431 .

“ It is not necessary that the same figure or device used or printed and sold for use should be a fac simile or precise copy of the original trade-mark, or so close an imitation that the two cannot be distinguished, except by an expert or upon a careful examination by one familiar with the gen

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uine trade-mark. If the false is only colorably different from the true; if the resemblance is such as to deceive a purchaser of ordinary caution, or if it is calculated to deceive the careless or unwary, and thus injure the sale of the goods of the proprietor of the; trade-mark, the injured - party is entitled to relief.” Colman v. Crump, 70 N. Y., 578 .

The form of the title page on the defendant’s books is plainly an imitation of the device invented by the plaintiff for the designation of his series, and could have been adopted only for the purpose of inducing purchasers to believe that they were a continuation of the plaintiffs series, and is such as to deceive a purchaser of ordinary caution^ and thus injure the business of the plaintiff by inducing the public, who purchase the books, to believe £hat they were purchasing the books of the plaintiff.

Judgment is ordered for plaintiff. Findings and judgment to be settled on notice.