Gruber Almanack Co. v. Swingley , 103 Md. 362 ( 1906 )

On the 9th of September, 1905, the appellants, co-partners, trading as the Gruber Almanack Company, filed a bill in the Circuit Court for Washington County, for an injunction to restrain and prohibit the appellee from publishing, circulating or selling an almanack designated as "J. and C. Gruber's Hagerstown Town and Country Almanack for the year 1906," and also from publishing or circulating, or causing to be published or circulated "any other almanack in colorable imitation of the appellant's almanack and calculated to deceive and impose upon the public and to create in their minds the belief that such almanack is really and truly the appellant's almanack." Upon the bill and exhibits, a preliminary injunction was granted and a demurrer to the bill was subsequently interposed by the appellee. The demurrer was sustained by the Court below, and the injunction as granted was dissolved. And from orders of Court sustaining the demurrer and dissolving the injunction, this appeal has been taken.

The allegations of the bill and the relief sought are based upon the statement that the appellee is publishing and selling an almanac in fraudulent imitation of the appellant's almanack.

The ground of the demurrer being that the plaintiffs have not stated in their bill such a case as entitled them to any relief in equity, it will be necessary for us to consider the principal allegations of the bill upon which the relief is asked.

The bill alleges that one John Gruber, the ancestor of all the plaintiffs (except Wilfred H. McCardell), began in or about the year 1835, to print and publish a certain publication to which he gave the name of "J. Gruber's Hagers-Town Town and Country Almanack," and that for the purpose of distinguishing this almanack from other publications he adopted and made use of certain devices, emblems, representations, marks, and pictures which he combined in a manner entirely new and original, and that these devices, emblems, marks and pictures are the same as those shown on the front outside cover and the back outside cover of the plaintiff's almanac; that they were the means by which the plaintiff's almanac was known and distinguished by the trade and acquired its good will, and that this almanac has been published by Gruber and his family from the year 1835 to the present time.

The bill also charges that a copyright of each and every edition of the almanack has been entered in the name of "J. Gruber" for the use and benefit of the members of the family and that in every issue and publication the name of "J. Gruber" has been used in the same manner as by Gruber himself, in his lifetime, that the name "J. Gruber," in connection with the emblems, devices, pictures, etc., are of great value in the publication of the almanack, and are their sole and exclusive property.

The bill then avers that the defendant with a view and intent to deceive and mislead the public and to likewise injure and defraud them, is engaged in publishing and selling an almanack for the year 1906, in the manner and form, size and style substantially like and uniform with the one published by them; that the fraudulent simulation is so substantial an imitation and so similar to the appellant's almanack as to impose upon the public and to induce them to purchase the false and spurious one for the appellant's almanack to their damage and injury.

It will thus appear from the foregoing recitals, as set out in the bill, that the question presented by the appellee's demurrer is whether the appellants have made out a case for equitable relief by a writ of injunction.

The bill charges and the demurrer admits, that the appellee is engaged in publishing and selling an almanack in imitation of the one published by the appellants, and it is conceded by the appellee in his brief that in the case of Robertson v. Berry,50 Md. 591, this Court held upon a consideration of the history of the appellants' almanack that the complainants had acquired a property right, in the devices, emblems and title pages in question by adoption and user.

But it is insisted upon the part of the appellee, that the appellants are not entitled to the relief sought for the following alleged erroneous statements to be found upon the title page, and among the contents of the almanack.

1st. At the top of the title page appear the words "Entered according to the Act of Congress, in the year 1905, by J. Gruber in the office of the Librarian of Congress at Washington."

2. The title of the almanack, "J. Gruber's Hagerstown Almanack."

3. Near the bottom of title page appear the words. "Hagerstown, Md. Printed by John Gruber."

4. At the top of the second page appears a notice, signed "John Gruber" dated Hagerstown, July, 1874, authorizing the Gruber Almanack Company to publish the almanack.

5. At the bottom of the third page appear the words.

Hagerstown, Maryland. Printed and sold by John Gruber, South Potomac street.

Now conceding to the appellee's contention all the force that can be claimed for it, we do not think, it can defeat the right of the appellants to relief in this case.

Manifestly, the alleged errors in representation were not such as to deceive the public and are therefore entirely immaterial.

In Canal Company v. Clarke, 13 Wall. 302, the Supreme Court held, that words or devices may be adopted as trade-marks which are not original inventions of him who adopts them and Courts of equity will protect him against any fraudulent appropriation or imitation of them by others. And in the case of Robertson v.Berry Co., 50 Md. 602, decided in February, 1879, it was said by this Court in passing upon the questions, practically here at issue, that in such cases the adoption and use must be under such circumstances of good faith as to satisfy the Court that the plaintiff is not himself practicing a fraud upon the public. He must explain how he came to such adoption and use or in other words, he must come into Court with clean hands. And in dealing with a similar bill, this Court said: "It seems to us to be clear that such explanation is abundantly given by the bill in this case, and the adoption and user thus made out entitle the complainants to the injunction prayed for."

The cases cited and relied upon by the appellee rest upon an entirely different rule of law and are clearly distinguishable from this. In the case of Seigert v. Abbott, 61 Md. 287, this Court distinctly said, "this decision is not intended to depart from any of the principles established in Robertson v. Berry Co., 50 Md. 591."

As in our opinion, the case of Robertson v. Berry, supra, is decisive of this, it becomes unnecessary to discuss the remaining question raised on the record. For the reasons given, the orders of Court below will be reversed, the injunction will be re-instated, and cause remanded with costs.

Orders reversed, the injunction reinstated and cause remandedwith costs.

(Decided April 6th, 1906.)