Hennessy v. Wheeler.

putting a drop of honey into every bottle, was ineffectual to justify the natural inference from these representations. The wrapper also contained a representation that the article would cure a great number of specified cutaneous disorders; insure a new growth of hair and preserve its natural color; and preserve the teeth. Admitting that the article might be a good soap, the court refused to protect it on account of these false representations, observing that "the privilege of deceiving the public, even for their own benefit, is not a legitimate subject of commerce."

The same doctrine was held in Hobbs v. Francais, 19 How. 567, in regard to a cosmetic entitled "Meen Fun," and falsely professing on the plaintiff's labels to be a "celebrated Chinese skin powder," and to be manufactured at “24 Mark Lane, London," by "Fabian & Co.," and "patronized by Her Majesty the Queen;" and that the plaintiff is simply "sole agent " of the London manufacturer, whereas the article was made in New York by the plaintiff, who was the sole proprietor. The court said there was a manifest intention to deceive and mislead the public," and refused an injunction against the defendant's use of the name and similar labels.

In Pidding v. How, 8 Sim. 477, the plaintiff, in his labels and advertisements, falsely intimated that a tea which he advertised and sold under the name of “Howqua's Mixture," was mixed by Howqua, in Canton, and was purchased from him and imported into this country by the plaintiff, in the packages in which it was sold; that the tea which gave it its peculiar flavor was very rare and high-priced even in China, and was grown in only one province of that country, named Kyiang Nan, and could not be procured in England at any price. An injunction against the use of similar labels and advertisements in the same business by defendant was denied.

In Palmer v. Harris, 60 Penn. St. 156, the plaintiff sold cigars, really made by himself in New York, in boxes with labels in Spanish, announcing that the cigars were made in Havana. An injunction was refused him, in spite of the fact that the label was in Spanish, and that the boxes were stamped with a government domestic revenue stamp, which was different from the stamp for foreign goods. The court say "it is not necessary that any one person has been actually deceived or defrauded; it is enough that it is a misrepresentation, calculated to have that effect on the unwary and unsuspicious."

Lee v. Haley, 5 L. R. Ch. App. 155, was a case of rival coal companies, and imitation of name and sigus. The defendant averred that the plaintiff falsely stated in his prospectuses that he sold "Wallsend coal," and also averred that he habitually sold short weight. The proof did not bear out these averments, but the court remark: "If the plaintiffs had been systematically and knowingly carrying on a fraudulent trade, and delivering short weight, it is beyond all question that this court would not interfere to protect them."

In Wolfe v. Burke, 56 N. Y. 115, the plaintiff sold Holland gin under the name of Aromatic Scheidam Schnapps," with labels describing it as a medicine, specific for certain specified diseases, and as "an invigorating tonic and medicinal beverage," but nowhere disclosing that it was gin. It was said, although not necessary to the decision (which went on the ground that the word schnapps" is not entitled to protection as a trade-mark), that such conduct would prevent the interference of a court of equity for the plaintiff. Walcotv. Walker, 7 Ves. 1, an injunction was denied by Lord Chancellor ELDON for the protection of a book alleged by the defendant to be libelous, although he admitted that he had republished it without authority.

Hogy v. Kirby, 8 Ves. 215, was an application to dissolve an injunction re

Hennessy v. Wheeler.

straining defendant from publishing a magazine as a continuation of the plaintiff's magazine, which latter was published with a fictitious name on its title page as author, and falsely professed to be published by defendant. The Lord Chancellor said he had "considerable difficulty as to the false colors under which the original publication appears; though this is very usual. I cannot represent it to my mind otherwise than as something excessively like a fraud on the public;" but he left that "as an ingredient in the action for damages."

The foregoing are the cases cited in the opinion in the principal case. In addition, the defendants' counsel cited the following:

Southey v. Sherwood, 2 Meriv. 434, a motion for an injunction against publishing the poem "Wat. Tayler." The court said that it would not interfere to protect a publication not innocent, but expressly declined to pass on the nature of the work, and refused the injunction on another ground.

Morgan v. McAdam, 36 L. J. Ch. 228; here the court refused protection to the plaintiff for the designation "Patent Plumbago Crucibles," the article never having been patented, and it made no difference that the plaintiff believed that the article, which he brought from America, had been patented there. Leather Cloth Company v. America Leather Cloth Company, 11 Jur. (N. S.) 513, in the House of Lords; the doctrine of "clean hands" was re-iterated, in respect to a false announcement on a stamp on leather cloth made by plaintiff, that it was Crocketts & Co.'s tanned leather cloth," and "patented," although the right to manufacture it had been purchased of Crocketts & Co. Lord CRANWORTH said, "So, in the case of bottles or casks of wine, stamped as being the growth of a celebrated vineyard, cheese marked as the produce of a famous dairy, or hops stamped as coming from a well-known hop garden in Kent or Surrey; no protection would be given to the sellers of such goods; if they were not really the produce of the places from which they purported to come."

Taylor v. Gdies, 5 Daly, 285; the plaintiff asked to have defendant enjoined from the use of the words "Gold Medal" on saleratus; but this was refused on the ground that it was not properly a trade-mark, and also implied that a medal had been awarded to the manufacturer for the article, whereas none had ever been so awarded. This was in spite of the fact that the plaintiff stated on his labels, in fine type, that the saleratus had been so denominated because of its superior excellence. This case was affirmed in 50 N. Y. Rep., on the ground that the words did not constitute a trade-mark.

Consolidated Fruit Jar Co. v. Dorflinger, 1 W. Dig. 427, a Pennsylvania case; held, that a trade-mark falsely representing that an article was patented is invalid.

Estcourt v. Estcourt Hop Essence Co., L. R., 10 Ch. App. 276; here costs were refused on the dismissal of the bill, because defendant was engagea in deceivIng the public. The Lord Chancellor says, "It is not the province of this court to protect speculations of this kind."

Fowle v. Speur, 1 M. L. Rep. (N. S.) 130, was an early American case, in the United States Circuit Court of Pennsylvania. The action was to protect "Wistar's Balsam Wild Cherry," and the protection was refused on the ground that it was a quack medicine, announced in advertisements to cure ''an incongruous group of diseases." The court said: " For aught that appears, it may be innocent enough; but though valuable' as it is sworn to be, to the party who compounds and sells it, it is readily conceivable that to him who buys and takes it, it may be far otherwise."

VOL. XXV-25

Hennessy v. Wheeler.

The cases cited by plaintiff's counsel in the principal case are as follows: Marshall v. Ross, L. R.,8 Eq. 651; held that the use of the word “patent” on a label, is not such a nisrepresentation as deprives the owner of his right against infringement, where the goods have by long usage acquired that designation. This was a case of “patent thread." The court instance as an example the express "patent leather boots," and say "it has become a word of art."

Hall v. Barrows, 4 De G., J. & S. 150; held the like doctrine in regard to the name of the first maker of an article. This was said of a brand on iron. The court say: "A name, though originally the name of the first maker, may in time become a mere trade-mark or sign of quality, and cease to denote or to be current as indicating that any particular person is the maker. In many cases a name once affixed to a manufactured article continues to be used for generations after the death of the individual who first affixed it. In such cases the name is accepted in the market either as a brand of quality, or it becomes the denomination of the commodity itself, and is no longer a representation that the article is the manufacture of any particular person."

Ford v. Foster, L. R..7 Ch. App. 611; the plaintiff whose trade-mark was "Ford's Eureka Shirt," had falsely represented in invoices and a few advertisements, that he was patentee" of the article; held, that this would not prevent his maintaining an action at law, and that being so, he was entitled to an injunction in chancery. This seems to be put on the ground that the misrepresentation is not in the trade-mark itself, but merely "collateral."

Dixon Crucible Co. v. Guggenheim, Cox's Am. T. M. Cas. 559, the doctrin of Hall v. Barrows was applied to announcements of "Joseph Dixon & Co." as the manufacturers of the article in question, Joseph D. being dead, the manufacture being carried on by a corporation, and the name having been used by his family in the business. This case contains a very elaborate review of trade-mark cases.

Curtis v. Bryan, 2 Daly, 312; held, that mere false or exaggerated statements in advertisements of a manufacture, tending to recommend its use to he public, will not deprive the owner of a right to protection against infringement. This was the case of "Mrs. Winslow's Soothing Syrup." The advertisements held out the idea that Mrs. Winslow, "an experienced nurse and female physician," was still living to recommend the article, whereas she was dead and never was a physician. It appeared, however, she prepared the recipe and acted in certain cases as a physician. The court also said it did not lie in the defendant's mouth to object that the plaintiff's preparation was deleterious, but this was obiter, for it was in proof that it was a safe preparation.

Dale v. Smithson, 12 Abb. 237; the plaintiff, Thomas Nelson Dale, labeled his flax "Thomas Nelson & Co.," a fictitious appellation. Held, that as this was not done with fraudulent intent and did not deceive anybody, it did not prejudice the plaintiff's standing.

Stewart v. Smithson, 1 Hilt. 119; the trade-marks "H. & M.'s patent thread. Barnsley," and "G. & W.'s celebrated patent thread, Berwick," were protected, although the thread was not patented, or made by the persons or at the places designated. "The mere fact that names used on a trade-mark are fictitious would not authorize the use of it by strangers." It was conceded that if it had appeared that the designated firms really existed, and had not authorized the plaintiff to use their names, on the “maxim potior est conditio defendentis, the courts might relieve them from any disturbance by the plaintiffs." In the case of Perry v. Truefitt, 6 Beav. 66, not cited above, the article in question was "Medicated Mexican Balm," falsely represented on cards as

Vrooman v. Turner.

highly concentrated extract from vegetable balsamic productions of that interesting but little known country, Mexico," together with sundry other rose-colored and doubtful statements. The court said: "This is not a favorable case for a person to come into a court of equity, in aid of a legal right, which, however, I do not deny he may have;" and remitted him to the law courts. See Browne on Trade-Marks, chap. 10.

The doctrine of Curtis v. Bryan was also applied in Smith v. Woodruff, 48 Barb. 438. This was the case of a perfume called "Sweet Opoponax of Mexico." The court held that the doctrine of "clean hands" was applicable only in cases of "flagrant imposition," like quack compounds, or worthless articles not injurious, etc., and remark: "But the suggestion comes with a poor grace from one who has, by the imitation, been guilty of the same fraud or imposition upon the public." This however must not be understood as throwing any doubt upon the doctrine of "clean hands," for the court concedes it to be well established. In this case there was a failure of proof to establish fraud on the plaintiff's part, and so the above was probably unnecessary.

VROOMAN V. TURNER.

(69 N. Y. 280.)

One who assumes mortgage-When liable for deficiency.

The defendant took a deed of lands, assuming, as part of the consideration, the payment of a mortgage to which they were subject; her title was derived through several mesne conveyances, in none of which the grantee assumed payment of the mortgage. Held, that she was not liable on a deficiency on foreclosure sale.

A

CTION to foreclose a mortgage. The mortgage was executed by the defendant Evans, then the owner. He conveyed to one Mitchell, and the title finally came to the defendant Turner, through several mesne conveyances, in none of which the grantee assumed to pay the mortgage. The deed to Turner was subject to the mortgage, which she consented to pay as part of the consideration. Judgment for any deficiency that might arise on the sale was rendered against the defendant Turner personally, upon the report of a referee, and this being affirmed at General Term of the Supreme Court, she appealed.

Edward T. Bartlett, for defendant Turner.

N. H. Clement, for plaintiff.

1

Vrooman v. Turner.

ALLEN, J. The precise question presented by the appeal in this action has been twice before the courts of this State, and received the same solution in each. It first arose in King v. Whitely, 10 Paige, 465, decided in 1843. There the grantor of an equity of redemption in mortgaged premises, neither legally nor equitably interested in the payment of the bond and mortgage, except so far as the same were a charge upon his interest in the lands, conveyed the lands subject to the mortgage, and the conveyance recited that the grantees therein assumed the mortgage, and were to pay off the same as a part of the consideration of such conveyance, and it was held that as the grantor in that conveyance was not personally liable to the holder of the mortgage to pay the same, the grantees were not liable to the holder of such mortgage for the deficiency upon a foreclosure and sale of the mortgaged premises. It was conceded by the chancellor that if the grantor had been personally liable to the holder of the mortgage for the payment of the mortgage debt, the holder of such mortgage would have been entitled in equity to the benefit of the agreement recited in such conveyance, to pay off the mortgage and to a decree over against the grantees for the deficiency. This would have been in accordance with a well-established rule in equity, which gives to the creditor the right of subrogation to and the benefit of any security held by a surety for the re-enforcement of the principal debt, and in the case supposed, and by force of the agreement recited in the conveyance, the grantee would have become the principal debtor, and the grantor would be a quasi surety for the payment of the mortgage debt. Halsey v. Reed, 9 Paige, 446; Curtis v. Tyler, id. 432; Burr v. Beers, 24 N. Y. 178.

King v. Whitely was followed, and the same rule applied by an undivided court in Trotter v. Hughes, 12 N. Y. 74, and the same case was cited with approval in Garnsey v. Rogers, 47 N. Y. 233; s. c., 7 Am. Rep. 440. The clause in the conveyance in Trotter v. Hughes was not in terms precisely like that in King v. Whitely, or in the grant under consideration. The undertaking by the grantees to pay the mortgage debt as recited was not in express terms, or as explicit as in the other conveyances. But the recital was, I think, sufficient to justify the inference of a promise to pay the debt, and so it must have been regarded by the court. The case was not distinguished by the court in any of its circumstances from King v. Whitely, but was supposed to be on all fours with and governed by it.