taining cigars made by plaintiffs and all other members of the union. 3. The said label affixed to cigar boxes is intended as a guarantee that the cigars therein contained were made by members of the union at fair wages, and are of a superior quality, and therefore command a higher price than similar articles without the label; and the label is a source of great profit to plaintiffs and other members of the union. 7. That the plaintiffs as officers of an unincorporated association have no right to file and maintain a bill in equity in their own name as officers against any person, still less can they do so against the manufacturers in his shop who are all members of said union and against whom their bill of complaint is indirectly aimed. The matters complained of in the bill are matters in respect to which the complainants are not enti tled to any relief from a Court of Equity, and defendant prayed that he may have the benefit of this defence in the same manner as if he had demurred to the bill. The Court, having dissolved the preliminary injunction, referred the case to E. D. North, Esq., as Examiner and Master. 4. The defendant is about to infringe the exclusive right of plaintiffs and other members of said union to the use of said label, by using a counterfeit imitation of it on boxes containing cigars not manufactured by members of the union and selling them as union-made cigars, and in order to defraud the plaintiffs and other mem- The Master filed a report finding the facts to bers of the union and deceive the public, he be as set forth in the opinion of the Supreme causes plates to be made for printing counterfeit Court, infra, and further finding that complainlabels, and has printed large numbers of counter-ants' label was as follows:feit labels, which he is about to use on cigars not manufactured by union members, for the purpose of misleading the public and injuring the rights of plaintiffs and other members of the union. Issued by Authority of the Cigarmakers' International STAMP. 5. If defendant is allowed to use said imitaThis Certifies that Cigars contained in this box have LOCAL tion of the union label and trade-mark, irreparable been made by First-Class Workman, a member of the Cigarmakers' International Union of America, an ordamage and injury will be done to plaintiffs andganization opposed to inferior rat-shop, Cooly, Prison, or Filthy Tenement House Workmanship. other members, for which they will have no ade-[SEAL] Therefore we recommend these Cigars to all quate legal remedy. smokers throughout the world. All infringements upon this Label will be punished according to law. A. STRASSER, President, C. M. I. U. 6. Prayer for a preliminary injunction to restrain the defendant from using said counterfeit labels and from selling or disposing of the same except for destruction. A preliminary injunction having issued, the defendant filed an answer, wherein he admitted the statements set forth in the first, second, and third paragraphs of the bill, and denied those set forth in the fourth and fifth paragraphs, and alleged 6. That his shop is a strictly union shop, in which only union members are employed; that he was entitled to as many union labels as he required for cigars made by the members of his shop; that he never violated any of the conditions for use of union labels; that he demanded union labels, and the officers refused to furnish them; that therefore he purchased a number of labels printed by Charles Yeager, not with the intention of misleading and deceiving the public or injuring the right of any person, not with the intention of using them on cigars made by persons who are not members of the union, but with the intention of using them on cigars manufactured by members of the union; that he neither manufactures nor sells any other cigars than such as are made by members of the union, and that by using said labels as he has done only on cigars manufactured by members of the union, he has done and shall do no irreparable or any other damage and injury to the complainants or any other person. He also found that the label used by defendant was an exact copy. 'The Master's conclusions of law were as follows: 1. That the plaintiffs are entitled to bring this action on behalf of themselves and the other members of the Cigar-Makers' International Union of America, on whose behalf it is brought. 2. That all the members of the said union, including the plaintiffs herein, have a common valuable pecuniary interest, right, or property in the union labels in question, or in the use thereof, or in both combined, which is entitled to protection in a Court of Equity. 3. That the act complained of is contrary to read and the more consideration we gave the question, the more we were led to abandon our first convictions and yield our judgment to the views expressed by the learned Master in his report. "The chief objection made on the argument before the Court was, that no authority is shown in law for asking the injunction-relief in equity. The three first exceptions are taken to the Master's finding of facts. Obviously in equity, as in the common law Courts, neither the Master nor the jury by their verdict are the sole judges of the facts. Their jurisdiction is but concurrent, not exclusive, for the Court in either jurisdiction may intervene and determine what facts are proven and what not. If there is a want of evidence the Court should assume the duty and set aside the finding, but when the evidence is not clear or could be interpreted in different ways by a man of sound judgment, then the finding or findings of the Master or the verdict of the jury must be assumed to have been found rightly and must be permitted to stand. We will leave them as found by the Master. The leading facts here are not in controversy. The law as relates to trade-marks as developed in the bill is, in Pennsylvania, we think, an unsettled question. Our Supreme Court have not, so far as we can discover, expressed its judgment on the question arising in this proceeding, namely, that the plaintiffs as officers of an unincorporated association have no right to file or maintain a bill in equity in their own names as officers against any person,' and therefore we do not intend to discuss it at length here. The Master has not in our opinion ignored or evaded the law seemingly governing this case, but his views are fortified, it seems to us, by well-settled authorities, and which we think will command respect. It would be no very difficult task to fill more than one page with points in the law of trademarks upon which directly conflicting decisions may be found among the reports. That being the case, and no authority of our highest Court to guide us, we accept the law of the Master's report and will confirm it. This conclusion renders further consideration of the merits of the Master's report, or of objections or exceptions to it, unimportant. The exceptions filed are all dismissed, and the report of Master is confirmed." The Court thereupon entered a decree that, "the defendant be restrained from using the labels described in plaintiffs' bill, and from pasting them on boxes of cigars to be sold by him as and for cigars manufactured by the plaintiffs, and that he also be restrained from selling or disposing of said labels or the plates from which they were made in any way but by their destruction." Whereupon the defendant took this appeal, assigning as error the dismissal of his exceptions to the Master's report; that the Court erred in not dismissing plaintiffs' bill, and in entering the above decree. N. Franklin Hall and David G. Eshleman, for appellant. There are two elements necessary to constitute a trade-mark that will be protected by law: (1) A manufacturer or trader, after having selected and adopted some peculiar mark, must apply it to some article of traffic manufactured by him or for him. (2) He must put his article, marked with his particular mark, on the market. Lawrence Mfg. Co. v. Tenn. Mfg. Co., 31 Fed. Rep. Laughman's Appeal, 128 Pa. 19. D. & H. Canal Co. v. Clark, 13 Wall. 311. A trade-mark is the exclusive right to use some name or symbol, as applied to a particular manufacture or vendible commodity, by the owner. Lord WESTBURY in Hall v. Barrows, 4 DeG. J. & S. 150, 158. CLIFFORD, J., in Mfg. Co. v. Trainer, 101 U. s. 51, 59. HOLT, J., in Metcalf v. Brand, 86 Ky. 331, 343. Burke v. Casson, 45 Cal. 467. High on Injunctions, 1063. A right to a trade-mark can be acquired only by him who puts merchandise or a valuable commodity marked or distinguished by his particular mark, on the market. Lord WESTBURY in Leather Cloth Co. v. American Lord KINGSDOWN in Leather Cloth Co. v. Ameri- Sir W. PAGE WOOD in Ainsworth v. Wormsley, L. Lord CAIRNS in Maxwell v. Hogg, L. R. 2 Ch. Herst v. Denham, L. R. 14 Eq. 542, 549. Kerr on Injunctions, 475. Until the thing is actually on the market, marked by the person intending to acquire title, no property in the mark arises. Lawson v. Bank of London, 18 C. B. 84. The jurisdiction of Courts of Chancery in the protection of trade-marks rests upon property, and fraud in the defendant is not necessary for the exercise of that jurisdiction. Hall v. Barrows, 4 DeG. J. & S. 150. Bispham's Equity (4th ed.), p. 509, § 456. The jurisdiction of a Court of Equity to give relief against the violation of a trade-mark rests, not upon the ground that the defendant is committing a fraud on the public, but entirely on the ground that the defendant is violating a property | the public that the cigars in the box which bears right of the plaintiff. Schneider v. Williams, 44 N. J. Eq. 391. Cigar-Makers' Union v. Conhain, 41 N. W. Rep. (Minn.) 913. Werner v. Brayton, 25 N. E. Rep. (Mass.) 46. The merits of the case were not passed upon in Strasser v. Moonelis, 108 N. Y. 611. Hall v. Barrows, 4 DeG. J. & S. 150. Smith v. Swormstedt, 16 How. 288. High on Injunctions, § 748. Equity Rules, § 22. it were made by members of the Union. Every member of the Union in the United States and Canada is entitled to have this label upon the cigars made by him. The plaintiffs represent neither the Cigar-Makers' International Union, the alleged owner of the label, nor Strasser, the officer, whose name appears upon it, but a subordinate local organization known as No. 126, located at Ephrata, Lancaster County, Pa. No. 126 did not devise or register the label, and does not claim to own it, but asserts the ownership of the International organization, to which it is a tributary, and whose jurisdiction it acknowledges. The defendant is a manufacturer, whose shop is, as the learned Master finds, "A strict Union shop," belonging to Union No. 126. His workmen, ten or twelve in number, are members of the union. He, as the owner of a union shop, and his men, by virtue of their membership, are entitled to the use of the label on the cigars made by them. He procured a quantity of imitation There are rights analogous to trade-marks or counterfeit labels, because, as he alleges, he which are protected at law. Browne on Trade-Marks, § 521. Mfg. Co. v. Trainer, 101 U. S. 53. was refused the genuine when he applied for them, and avowed his purpose to use them. The plaintiff's then filed a bill, and asked the Court to Congress, etc., Spring Co. v. High Rock, etc., Co., enjoin the defendant against the use of the imita 52 Barb. 526. Heinz v. Brueckmann, 134 Pa. 495. Carson v. Ury, 39 Fed. Rep. 777. Ownership of goods made is not essential to a trade-mark. Re Sykes, 43 L. T. N. S. 626. Sebastian on Trade Marks (3d ed.), 4. Dixon Crucible Co. v. Guggenheim, 7 Phila. 408. in— Strasser v. Moonelis, 11 Cent. Rep. 461, tion labels for any purpose whatever. Upon these facts the Master recommended and the Court made the decree asked for. The grounds upon which an injunction will issue to restrain the infringement or appropriation of a trade-mark are well settled. They are, first, the protection of property in a trade-mark; and, second, the prevention of fraud by an imitator. In either case, it issues at the suit and for the protection of the owner of the device or trademark infringed. The plaintiffs represent Union No. 126, which has no other ownership in, or control over, the International Union's label, than any others of the hundreds or thousands of subordinate unions scattered over the United States and the Canadas. If it can maintain this bill, then each and every subordinate union can do October 5, 1891. WILLIAMS, J. The ques- the same thing, although no one of these detion presented by this appeal is a new one; at vised, registered, or claims to own the tradeleast, it is new in this State. It involves im- mark; and may prevent its use by workmen and portant consequences to employers and em-in shops which, under the general rules of the ployés, and it touches the rights and obligations International body, are entitled to use it. of workmen in their relation to each other. The But we are not disposed to inpale this case facts upon which the question is presented, as upon what may be thought to be a technical found by the learned Master, are as follows: The point. On the other hand, we will consider Cigar-Makers' International Union of America is whether the International Cigar-Makers' Union a voluntary, unincorporated association of work- is a trader, whether the label in question is a men, organized, as its Constitution affirms, "For trade-mark, and whether upon any ground of promoting the mental, moral, and physical wel-equitable relief the plaintiffs are entitled to confare of its members." It has devised and regis-sideration in a Court of Equity. tered the label which is the subject of this controversy, and claims an exclusive right to control its use. The office of the label is to advise The first question is disposed of by the learned Master upon the pleadings. The organization that devised, registered, and owns the label is neither a manufacturer nor dealer, and has no trade in which a trade-mark can be used. I come now to inquire whether the adoption of the label, for the purposes set forth in the bill, The second question would seem to go with the gives to the International Union any ground for first. Trade-marks are provided for by the Act equitable relief? We have seen that this label is of Congress of July 8, 1870. Registration is not a trade-mark, and that the Union is not in a made under it by furnishing a statement to be business that enables it to adopt or acquire a recorded in the patent office, showing "the trade-mark. Still, it is urged that, as the denames of the parties applying for the registration, fendant was about to use an imitation of the label, with their residences and places of business; the he should be enjoined whether the label is a tradeclass of merchandise, and a description of the mark or not. But what is this label? And why goods composing the class, by which the trade- should it be protected? It purports to be "issued mark has been, or is intended to be, appropriated; by the authority of the Cigar-Makers' Intertogether with a description of the trade-mark and national Union of America" to the person who fac similes of it." This provision of the Act uses it. The name of the workman who made clearly contemplates an actual business conducted the cigars does not appear upon it, nor the owner by the person or persons named, the adoption of or location of the shop at which they are made. a trade-mark in that business, and its appropri- It does not point out the personal or the local ation to a particular "class of merchandise" origin or ownership of the goods on which it is produced or sold by the parties making the regis- placed. On the other hand, it issues to every tration. Any device, figure, or inscription which one of the many thousands of workmen who make seems to indicate the personal origin of the goods up the membership of the union, and it certifies, may be adopted as a trade-mark: Laughman's in the name of the union, that the cigars in the Appeal, 128 Pa. 19. Such trade-mark will be box on which it is placed, were made "by a protected against fraudulent imitation whether first-class workman, a member of the Cigarregistered or not: Hoyt & Co. v. Hoyt & Co. Makers' International Union." Who this firstdecided at the present term. Registration affords class workman was, where he lived, for whom he evidence of ownership. Its object is to secure worked, the label does not tell. He is indorsed to the maker or dealer the fruits of his skill, as a "first-class workman," because he is "a industry, and reputation, by a positive legis- member" of the union. As to all who are not lative provision: Pratt's Appeal, 117 Pa., 411. members, the label proceeds to define the position But the Act of Congress referred to makes of the organization that issues it by describing it clear that it is a maker or a dealer only their work as "inferior, rat-shop, cooly, prison, who is entitled to protection, for it declares that or filthy tenement-house workmanship.” the commissioner of patents "shall not receive label then proceeds in these words, "Therefore, and record any proposed trade-mark, which is we recommend these cigars to all smokers throughnot and cannot become a lawful trade-mark.” out the world." The value of this label is in the Now, if the Cigar-Makers' International Union recommendation and the reasons given for it. was a business organization engaged in making The label is thus seen to be something quite cigars for sale, it could adopt and use a trade- different from a trade-mark in its character, its mark in its business and acquire property in it. purpose and the manner of its use, viz: a device But it is not a business organization. It neither to distinguish between union and non-union makes nor sells cigars, but directs its attention to workmen, and to discriminate against the work cigar-makers, and seeks "to promote the mental, of the latter. It says to the public in spirit and moral, and physical welfare of its members." in effect, "Buy the cigars that bear this label, These are worthy objects. They deserve and because they were made by a member of this should receive the encouragement and support of union. Do not buy those not bearing it, because all right-minded men. It is obvious, however, they were made by workmen who do not belong that they are personal and social objects, not to us. Such cigars are the product of inferior, commercial ones. They do not look toward the rat-shop, cooly, prison, or filthy tenement-house production or sale of any class or quality of cigars workmanship." It is the request of a powerful or tobacco, but toward the personal elevation labor organization to "all smokers throughout and comfort of cigar-makers. I conclude, there- the world," to take sides with it in its contest fore, that the Cigar-Makers' International Union with those who are outside of its membership by of America is neither a trader within the meaning refusing to buy the work of such persons. of the common law nor within the purview of the an attempt to use the public as a means of coercion Act of Congress. Not being a trader in any upon them, compelling them to unite with the sense, it can have no distinctive trade-mark.union in order to find a market for their goods or Registration under such circumstances is not their labor. Right here let us distinguish broadly authorized by the Act of Congress, and if made between an object and the means employed to confers no title, and gives no standing-ground in reach it. Organization is the privilege, perhaps I a Court of law or equity. The It is ready to do equity on their part, and seeking only equity at the hands of the Court. They do come in this case with the avowed purpose to do harm to non-union men; to prevent the sale of their work, to cover them with opprobrium, and they ask a Court of Equity to say that they have a right to do it. We decline to say so. As might say the duty, of labor; and an organization with a conscionable regard for the rights of others, seeking to promote "the mental, moral, and physical welfare of its members," by securing fair wages, steady work, and the comforts of home for them, occupies a legitimate field of usefulness, and is capable of doing great good to its members and to the public. The Cigar-Makers' Union is, no doubt, seeking to do such a work and accomplishing much in that direction. What we are now considering is one of the means it employs to increase its membership and to hurt workmen who do not belong to it. The real question now before us is whether the international organization of workmen shall have the help of a Court of Equity in making war upon all cigar-makers who do not belong to it, and in driving their work out of the market by representing it as coming from "inferior rat-shops, from coolies, prisoners, or filthy Jan. '91, 282. tenement-houses." A "first-class workman" is one who does first-class work, whether his name is on the rolls of any given society or not. Filth The decree of the Court below is reversed, the injunction dissolved, and the bill dismissed. we cannot approve the conduct of the defendant, we shall not award him costs, but direct that each party pay the costs it has made, and that the fees of the Master be paid in equal parts by the plaintiffs and the defendant. Dodd v. Smith. C. K. Z. May 22, 1891. iness and criminality of character depend on Equity-Injunction-Trade-marks-Indicia of trade-ownership-Infringement of. conduct, not on membership of the union. Legitimate competition rests on superiority of workPlaintiffs, a firm of publishers, filed a bill in equity manship and business methods, not in the use of averring that they owned the copyright of the works vulgar epithets and personal denunciation. When of a certain author and published the same in two edithe Cigar-Makers' International Union of Am-tions, one on thin paper with paper cover and sold erica stigmatizes those who do not belong to it, for 50 cents a copy, the other on more substantial and seeks to induce the public to discriminate paper, finely finished with cloth cover and sold for against them and their work by covering them $1.50 a copy; that defendants had purchased a large consignment of the cheaper edition, and with intent with opprobrious epithets, it is not engaged in to defraud plaintiffs rebound the same in cloth bearing "promoting the mental, moral, and physical wel- a stamped design so like the design on plaintiffs' more fare of its members," but in trying to hurt and costly edition as to deceive purchasers; that defenddestroy those who do not choose to become memants offered the same for sale as "the paper E. P. Roe bers. While the Courts would aid the former book bound in cloth, which is an exact copy of the genuine $1.50 edition" for from 40 to 45 cents each, purpose in all ways within their power, they depending on the quantity purchased; that defendcannot help the latter. We cannot justify the ants' customers retailed the same for 60 cents a copy, defendant's conduct. There is no rule of morals whereby plaintiffs' sales of their costly edition were or of business upon which he can defend himself decreased; that defendants' cloth covers were cheap and flimsy, and that plaintiffs' reputation was likely in the preparation and use of spurious labels. to be seriously injured by the sale of such books by But it is not every wrong action that a Chancellor defendants. The bill prayed a special injunction rewill enjoin, because the purpose of an injunction straining such sales by defendants. Affidavits in supis to protect the plaintiff in the exercise and enjoy-port of the prayer for the injunction made by plaintiffs ment of a clear legal right, for an infringement of Court entered a decree refusing the special injunction : and their employés were filed. After argument, the which the law does not afford an adequate remedy. Held, not to be error. If, therefore, the right of the plaintiff is doubtful, MITCHELL, J., dissented. equity will withhold its aid. The plaintiffs in this case have no trade-mark to protect and no right Appeal of Frank H. Dodd, Edward S. Mead, to a decree resting on the law relating to trade- Bleecker Van Wagenen, and Robert H. Dodd, marks. What they have is a label which recom-trading as Dodd, Mead & Co., plaintiffs, from the mends the purchase of cigars made by union men, and warns against the purchase of all others as inferior and unwholesome, because made in "rat-shops, or prisons, or by coolies, or tenants of filthy tenement-houses." Their right to use such a label may well be doubted, whether the question be treated as one of morals or of law. But the plaintiffs come into a Court of Equity and seek to enlist the conscience of a Chancellor in their behalf. They must come with clean hands, decree of the Common Pleas No. 3, of Philadelphia County, refusing a special injunction prayed by them in a bill in equity wherein Henry J. Smith and Frank E. Wright, trading as H. J. Smith & Co., were defendants. The plaintiffs' bill averred :— 1. That they comprise the firm of Dodd, Mead & Co., and that they are engaged in the occupation of publishers, booksellers, and importers of books in New York City. |