Harry C. Fisher, Respondent,
Star Company, Appellant.

Court of Appeals of New York
Argued May 5, 1921
Decided July 14, 1921

231 NY 414
CITE TITLE AS: Fisher v Star Co.



This action is brought to enjoin the appellant from what the respondent asserts is unfair competition in making and publishing cartoons. The question on this appeal is whether the courts should use the equitable jurisdiction given to them to restrain a person or corporation from using in a cartoon, or in cartoons prepared for publication and sale as a business, certain grotesque figures, being imaginary and fictitious characters and the names applied to them, when such figures and names were originated and have been applied and used by a person in connection with his work as a cartoonist until they have become well known and have as such figures or characters with their names, a definite place among cartoonists and the admirers of cartoons, and with the public at large, and as such are of substantial value. The plaintiff does not assert his right to injunctive relief by virtue of the copyright law, the enforcement of which is confined to the Federal courts. (U. S. Compiled Statutes 1918, secs. 9555, 9556.) He does not assert his claim by virtue of the Federal Trade Mark Law (Act of February 20, 1905) or the statutes relating to trade [*427] marks in this state (See Laws of 1909, chapters 9, 25, 36 and 88; Penal Law, secs. 2350 to 2357) or in other states.

The statute creating the Federal Trade Commission (Act of September 26, 1914) and giving it authority to prevent unfair methods of competition does not apply to unfair methods between individuals. The unfair methods contemplated by the act are such as affect the public generally. (Federal Trade Commission v. Gratz, 258 Fed. Rep. 314.) To sustain his claim the respondent relies entirely upon the authority of the courts in equity to prevent what is known as unfair competition.

A person who uses an unregistered name or mark can prevent others using the same so as to deceive the public into thinking that the business carried on by such persons and the goods sold by them are his. (27 Halsbury's Laws of England, 744.) Such conduct as is calculated to deceive the public into believing that the business of the wrongdoer is the business of him whose name, sign or mark is simulated or appropriated can be restrained in equity. (Ball v. Broadway Bazaar, 194 N. Y. 429; Westcott Chuck Co. v. Oneida National Chuck Co., 199 N. Y. 247; Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169; Fox Co. v. Glynn, 191 Mass. 344.)

The courts are not confined in the exercise of their equitable powers to preventing unfair competition among the manufacturers of and dealers in goods. The controlling question in all cases where the equitable power of the courts is invoked is, whether the acts complained of are fair or unfair. The determination of this appeal depends first and primarily upon the facts. (Higgins Co. v. Higgins Soap Co., 144 N. Y. 462; Howe Scale Co. v. Wyckoff, Seamans, etc., 198 U. S. 118; Kroppf v. Furst, 94 Fed. Rep. 150.) The inquiry is, whether the use of the names "Mutt" and "Jeff" and the grotesque figures to which the names are applied by the appellant would be unfair to the respondent. A statement of the [*428] facts found at the Special Term has been given preceding this opinion, at unusual length, because it will obviate the necessity of stating many of them in the opinion, and also because the true basis of the decision herein cannot be fully understood without a complete knowedge of the facts on which it depends. (Baker & Co. v. Sanders, 80 Fed. Rep. 889, 891.) The facts as found were unanimously affirmed at the Appellate Division (Fisher v. Star Company, 188 App. Div. 964), and are conclusive upon this court. (Constitution, art. 6, section 9?? Porter v. Municipal Gas Co., 220 N. Y. 152.)

The rules stated as to competition in business apply to the publication of books under a particular name. Such a name is the subject of property and a colorable imitation of the name adopted by one publisher, by another engaged in publishing similar books by which the public may be easily misled into supposing that it was the literary article they desired to obtain, is an act of deception which injures the publisher who first adopted the name and which he may call upon a court of equity to redress. (Munro v. Tousey, 129 N. Y. 38.)

Trade marks may consist of pictures, symbols of a peculiar form, or fashion of label, or they may consist simply of a word or words. (Hier v. Abrahams, 82 N. Y. 519.) Any civil right not unlawful in itself nor against public policy, that has acquired a pecuniary value, becomes a property right that is entitled to protection as such. The courts have frequently exercised this right. 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.

In International News Service v. The Associated Press (248 U. S. 215) the Associated Press sought to enjoin the International News Company from appropriating for commercial use matter taken from bulletins or early editions of Associated Press publications as constituting unfair [*429] competition in trade. It was not claimed that the news articles were protected by copyright. The court say: "We need spend no time, however, upon the general question of property in news matter at common law, or the application of the copyright act, since it seems to us the case must turn upon the question of unfair competition in business. * * * In order to sustain the jurisdiction of equity over the controversy, we need not affirm any general and absolute property in the news as such. The rule that a court of equity concerns itself only in the protection of property rights treats any civil right of a pecuniary nature as a property right; and the right to acquire property by honest labor or the conduct of a lawful business is as much entitled to protection as the right to guard property already acquired. It is this right that furnishes the basis of the jurisdiction in the ordinary case of unfair competition." (pp. 234, 236.) The appropriation of the news gathered by the Associated Press was enjoined.

Justice Holmes in a concurring opinion says: "Property depends upon exclusion by law from interference, and a person is not excluded from using any combination of words merely because some one has used it before, even if it took labor and genius to make it. If a given person is to be prohibited from making the use of words that his neighbors are free to make, some other ground must be found. One such ground is vaguely expressed in the phrase 'unfair trade.' This means that the words are repeated by a competitor in business in such a way as to convey a misrepresentation that materially injures the person who first used them, by appropriating credit of some kind which the first user has earned. The ordinary case is a representation by device, appearance, or other indirection that the defendant's goods come from the plaintiff. But the only reason why it is actionable to make such representation is that it tends to give the defendant an advantage in his competition with the [*430] plaintiff and that it is thought undesirable that an advantage should be gained in that way. Apart from that the defendant may use such unpatented devices and uncopyrighted combinations of words as he likes. The ordinary case, I say, is palming off the defendant's product as the plaintiff's, but the same evil may follow from the opposite falsehood,—from saying, whether in words, or by implication, that the plaintiff's product is the defendant's, and that, it seems to me, is what has happened here." (p. 246.)

In Bell v. Locke (8 Paige, 75) the plaintiff sought to restrain the defendant from assuming the name of the plaintiff's newspaper for the fraudulent purpose of imposing upon the public and supplanting him in the good will of his paper. It was held that by simulating the name and dress of his newspaper with the intent to cause it to be understood and believed by the community that the defendant's newspaper was the same as the complainant's and thereby to injure the circulation of the latter, the plaintiff would be entitled to an injunction for although the business of publishing newspapers ought, in a free country, to be always open to the most unlimited competition, fraud and deception certainly are not essential to the most perfect freedom of the press. There is indeed no patent right in the names. There can be very little excuse for the editor of a newspaper who shall adopt the precise name and address of an old established paper which would be likely to interfere with the good will of the latter by actually deceiving its patrons.

In Estes v. Williams (21 Fed. Rep. 189) it appears that a person in London, England, published a series of juvenile books of uniform appearance and in a style of peculiar attractiveness and called them "Chatterbox" until they became widely known and quite popular by that name in that country and this. He assigned the exclusive right to use and protect that name in this country to the plaintiff. The defendants commenced the [*431] publication of a series of books and called them by that name and made them so similar in appearance and style as to lead purchasers to think that they are the same. Held, that the plaintiff was entitled to equitable relief.

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. The court in discussing the question say: "Equity gives relief in such a case, upon the ground that one man is not allowed to offer his goods for sale, representing them to be the manufacture of another trader in the same commodity. Suppose the latter has obtained celebrity in his manufacture, he is entitled to all the advantages of that celebrity, whether resulting from the greater demand for his goods or from the higher price the public are willing to give for the article, rather than for the goods of the other manufacturer, whose reputation is not so high as a manufacturer."

It appears from the findings of fact that the grotesque [*432] 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 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 [*433] as "The Mutt and Jeff Cartoons. By Bud Fisher." (See decision December 22, 1916, by examiner of interferences denying an application of the Star Company to cancel the registration by Fisher of the words "Mutt and Jeff" as a trade mark, March 9, 1915. Official Gazette of the United States Patent Office, vol. 236, No. 1, page 283.) 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 [*434] 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. A cartoonist had made pictures for a comic section of the New York Herald in which "Buster Brown" was the principal figure. A similar comic section was printed by a newspaper published by the appellant, and the New York Herald Company brought an action against the appellant, the decision in which is reported in 146 Federal Reporter, 204. From the opinion in that case it appears that the suit was solely to restrain an infringement of a trade mark and the court say: "No question as to copyright or as to unfair competition is presented." It was found that the Herald Company was the first to use the name, title and trade mark of "Buster Brown" as a heading to a comic section of its newspaper and that it had shown title to the trade mark.

In the case of Outcalt v. New York Herald (146 Fed. Rep. 205) the court held that so far as the question of the use of the title "Buster Brown" was concerned it had been disposed of by the decision in the case of New York Herald Company v. Star Company. The facts in the instant case differentiate it from the Outcalt case in every other respect.

In an action brought by the New York Herald Company against Ottawa Citizens Company of Canada, it was held (41 Canada Supreme Court, 229) that the term "Buster Brown" or "Buster Brown and Tige" used as the title to a comic section of a newspaper cannot be registered as a trade mark. In the opinion written for a majority of the court it is said: "The production which the appellant sells is not 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. It may be that kind of brain product that the copyright might [*435] amongst other things be extended to or that copyright might cover * * *. I am quite sure it never was intended those sections should apply to such a thing."

The New York Herald cases mentioned do not materially affect the question in this case.

The judgment should be affirmed, with costs.

Opinion prepared by CHASE, J., who died before decision of the case.

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.