Edison Storage Battery Co. v. Edison Automobile Co. 67 Eq.

in the form of a letter addressed by Joslin to him) was presented to him for signature.

Now, under all these facts, and others that appear in the affidavits, it is quite palpable that the whole object of the manœuvre on the part of the Joslins was to get the name of Edison in their corporation, and they now, by their counsel, claim the right to use that name by virtue of the consent of young Edison.

Under these facts it is simply incredible, and approaches the absurd, to suppose that those gentlemen were anxious to get the name of William L. Edison in their business for the sake of his business capacity and influence. Of the latter, palpably, he had little or none. Palpably, it was the name of Edison, and the value attached to it by reason of the world-wide reputation of the elder Edison, that they were seeking. And the question is whether they can succeed.

I ought to say, before considering that question, that criticism was made by counsel for the defendants upon the circumstance that the complainants did not set out in their bill the fact that the injunction granted by the Washington judge had been already dissolved, and he argues that there was suppression and want of frankness in the case put forward by complainants. I do not understand that the complainant had any other object in inserting in his bill the fact that his son had brought the suit in the District of Columbia except to show that he had, as far as practicable for him so to do, revoked his authority to the Joslins for the use of the name "Edison" in incorporating their company. As was well said by the judge in Washington, in his opinion, Thomas A. Edison was no party to that suit; he could derive no benefit from it and he could receive no harm from it.

The complainants' case does not rest upon and is not affected one way or another by the result of the Washington suit. Moreover, it must be observed that the rule of frankness which the defendants' counsel invokes is one which applies peculiarly to a case where the complainant, upon ex parte affidavits, procures an injunction or interim restraint without notice to the defendant. No interim restraint was granted herein, nor, indeed, was

1 Robbins. Edison Storage Battery Co. v. Edison Automobile Co.

it asked for, before notice to the defendants. The defendants have had full opportunity to come in and state their case and supply any omissions in the original presentation thereof by complainants. The matter omitted was not something within the personal knowledge of the complainants, but a public record.

1 spend so much time on this point because I do not wish even to appear to undervalue the importance of the rule invoked by counsel.

Then, further, it is said that the affidavits show that the defendant corporation had no intention of manufacturing any storage batteries, or anything else manufactured by the complainant corporation. But the complete answer to that is that they have the power, by their charter, so to do, and if they are permitted to proceed with their corporation under its present name they will have the prestige of the elder Mr. Edison's name for all they do and all that they sell.

The only question in the case is whether, having induced the young man to enter into the contract in question, they can make use of that circumstance to use, in effect, the father's name.

It is further urged that complainant should not file his bill or obtain any restraint because it does not yet appear that any wrong has been done, or that there is danger that it will be done in the near future, to the injury of the complainant. But the complete answer to this is that in order to protect his rights to the use of his name the complainant must act promptly and before the rights of any innocent third parties who may have purchased stock in the defendants' corporation may become involved.

In this particular class of cases, involving the right to use a name, prompt action is always required.

The defendants place themselves on their right to use the name "Edison" under the grant of the son, but under the circumstances of this particular case I think it sufficiently clear, under the authorities, that he (the son) did not have the right to make such grant.

It is impossible to imagine that the defendants were not fully aware of such lack of right, both in fact and in law. Joslin knew

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67 Eq.

that the father had set up the son in business in Washington, and that he was unwilling that he should consolidate that business with any other business. That, I think, implied that he should not use the name "Edison."

Then the young man swears that he so told Joslin. This, indeed, is denied by Joslin, but the probabilities are all in favor of its truth.

Then, as before remarked, it approaches the absurd to suppose that the Joslins wished to use the name "Edison" on account of any connection with the son or of prestige connected with the name of William Leslie Edison. They were, as I have said, seeking the use of the name "Edison" on account of the great prestige attaching to the father's name with regard to all matters involving the use of electricity.

It is common knowledge that automobiles especially, and even street cars, are driven by electricity stored and accumulated in what are known as storage batteries. Hence the selling of automobiles, driven by electricity, by a company having the word "Edison" as a part of its name, would be an assurance of more or less strength that the batteries so used were made by the elder Mr. Edison, or under his patents.

Now as to the law applicable to these facts.

The deliberate adoption by one corporation of a name, already adopted and used by another corporation, or incorporating in its name the name of an individual, seems to me to stand on a weaker ground of right than the imitation of a mere trade mark. It seems to me to be a more serious infringement of private rights.

In England, one quite efficient remedy for this wrong is to move the officer who by law controls the registration of corporations by certificate to change the name. A provision for that remedy is not usually found in the statutes of the several states of the union providing for the formation of corporations.

In our statute of 1896 is found this clause, under the head "The Name of the Corporation:" "No name shall be assumed already in use by another existing corporation of this state, or so nearly similar thereto as to lead to uncertainty or confusion."

1 Robbins. Edison Storage Battery Co. v. Edison Automobile Co.

Then there is a provision in section 27 for a change in the name, but I know of no provision for compelling a change by any direct application therefor by other parties. But the power of this court to enjoin the use of a name is beyond all dispute. It was exercised in this state in the case, heard before me ex parte, of Glucose Sugar Refining Co. v. American Glucose Sugar Refining Co., 22 N. J. L. J. 147 (1899). And the right was asserted very distinctly in the case of Stirling Silk Manufacturing Co. v. Stirling Silk Co., heard by Vice-Chancellor Emery, and reported in 59 N. J. Eq. (14 Dick.) 394. There the case for preliminary injunction rested mainly on the question of trade mark, and the injunction was refused. The learned vicechancellor's views on the similarity of names are found on p. 396 et seq.

Other cases selected from numerous instructive authorities cited by counsel for complainants herein are Massam v. Thorley Cattle Food Co., L. R. 14 Ch. Div. 748 (1880); Holmes, Booth & Haydens v. Holmes, Booth & Atwood Manufacturing Co., 37 Conn. 278 (1870) (where will be found an exhaustive collection of the authorities up to that date); Celluloid Manufacturing Co. v. Cellonite Manufacturing Co., 32 Fed. Rep. 94 (1887), per Bradley, J.; Rogers Manufacturing Co. v. Rogers & Spurr Manufacturing Co., 11 Fed. Rep. 495, per Lowell, Circuit Judge.

One of the headnotes to that case is significant: "Anyone has a right to use his own name in business, but he may be restrained from its use if he uses it in such a way as to appropriate the good will of a business already established by others of that name. [This is the important thing.] Nor can he by the use of his own name appropriate the reputation of another by fraud, either constructive or actual."

I think that language peculiarly applicable here.

Another case is Le Page Co. v. Russia Cement Co., 51 Fed. Rep. 942, in the circuit court of appeals, in 1892, before Judges Gray, Colt and Putnam.

That was a writ of error to the circuit court on a judgment rendered on a verdict. The right of the plaintiff to recover was established unanimously, but the judgment was reversed on ac

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67 Eq.

count of the admission of improper evidence in the matter of damages.

Another valuable case is that of Clark Thread Co. v. Armitage, 67 Fed. Rep. 896; S. C. on appeal, 74 Fed. Rep. 936. There the defendant established in Rhode Island a thread manufacturing company under the corporate name of the William Clark Company, by authority of a Mr. William Clark, who was formerly connected with the old and great and well-established Clark Thread Company, of Newark, and the court declared, in explicit language, that but for the consent given by William Clark number one, the principal officer and manager of the old company, the defendant would have been enjoined in the use of their name.

An instructive case, also, is Massam v. Thorley Cattle Food Co., supra. There one Thorley had bought a receipt for a particular kind of food for cattle and had made it for many years and had acquired therefor a great reputation. After his death, his executors and trustees under his will carried on the business. Subsequently some persons fell in with a younger brother of the deceased and induced him, in substance, to lend them his name in the manufacture of the same article "Thorley's Food for Cattle" the secret of which he had learned many years previously while working for his brother. The defendants organized under the name of the Thorley Cattle Food Company, and the surviving brother signed the memorandum for one share of one shilling. The English court of appeal (1880) held that the whole transaction was a transparent fraud and granted an injunction.

Another instructive case is Armington v. Palmer, in the supreme court of Rhode Island, and reported in 42 Atl. Rep. 308.

These and many other cases hold that there is no sanctity in the name being used by a corporation either directly created by special charter or organized under general laws. If organized under a special charter, it is usually chosen by the petitioners therefor. If organized under a general law, it is chosen by the organizers. In either case they adopt it at their peril.

The only question that remains is whether an injunction