Howe v. Howe Machine Co. , 1867 N.Y. App. Div. LEXIS 215 ( 1867 )

Sutherland, J.

That Elias Howe, Jr. in 1846, obtained a patent for a certain combination of mechanism called a sewing machine ; that his brother, the plaintiff, commenced manufacturing sewing machines as early as 1854, and continued to manufacture them at least up to the time of the arrangement between him and Elias Howe, Jr. in 1862 ; and that the plaintiff, in their manufacture, used the combination of mechanism patented by Elias Howe, Jr. as his licensee, are undisputed facts. Elias Howe, Jr. did not license the plaintiff to make sewing machines, but he licensed him to use his patented right or combination, in the manufacture of sewing machines. There is nothing in the case to show that the plaintiff manufactured the machines as agent for Elias Howe, Jr. The fact that he was his licensee, and that he could not have manufactured the machines without his license, does not tend to show the agency.

Probably the first machines manufactured by the plaintiff were made exclusively under the patent of his brother, but as early as 1857, and subsequently, certain improvements or inventions of the plaintiff and Taylor, were incorporated into the machines.

The uncontradicted history of the claimed trade-mark is, that before 1857, the plaintiff placed on the machines the letters and word “ A. B. Howe that in 1857, Taylor, the plaintiff’s mechanic, suggested the substitution of “ Howe ’’ for “ A. B. Howe ” which suggestion was adopted by the plaintiff, and subsequently every machine manufactured by the plaintiff, had the word “ Howe ” on a conspicuous place on it. I infer from the papers, that the word “ Howe ” was in raised metallic leters on the arm of every machine manufactured by the plaintiff after the adoption of Taylor’s suggestion in 1857.

The conclusion from the pleadings and affidavits is irresistible that the word “ Howe ” was thus used to denote the plaintiff as the manufacturer, and not to denote Elias Howe, Jr. as the inventor.

It is obvious that the fact that the plaintiff was the licensee of Elias Howe, Jr. ; that the plaintiff could not have manufactured his machines without using the patented combination of his brother and therefore could not have manufactured them'without his brother’s license, did not, and could not, interfere with, or impair his right to adopt and appropriate a trade-mark to mark or distinguish the machines manufactured by Mm from those manufactured by other licensees of his brother.

Elias Howe, Jr. granted to the plaintiff, to Singer & Co., to G-rover & Baker, to Wheeler & Wilson, &c., &c. the right to' use his patented right or combination, in the manufacture of sewing machines. It is obvious that the circumstance that these licensees did use and had to use his patented right or combination, as his licensees, in manufacturing their machines, cannot have the remotest bearing on the question of the right of either of these licensees to adopt and appropriate a trade-mark, even as against Elias Howe, Jr. as a manufacturer of sewing macMnes.

It is equally clear that the plaintiff could adopt and appropriate the word “ Howe ” as a trade-mark as against Elias Howe, Jr. (Sykes v. Sykes, 3 Barn. & Cress. 541. Croft v. Day, 7 Beav. 89, 90.) The plaintiff had a right to adopt and appropriate his surname as a trade-mark, and , it cannot be said, that Elias Howe, Jr. though his surname was the same, had a right to use his own surname in such a way as to deceive the public, and deprive the plaintiff of the benefit of the notoriety and market which his machines had gained. (See the conclusion of the opinion of the Master of the Rolls, in Croft v. Day, supra.)

The words “ The Howe Machine ” are descriptive of the trade-mark “ Howe ” or “ Howe N. Y.” used on the plaintiff’s machines.

So far the plaintiff’s case is clear, in my opinion, and his right clear ; but I cannot, say that the question as to what, the arrangement was between him and his brother in 1862,v (probably June,) is entirely free from doubt.

The plaintiff’s.version of it is, if I understand his affidavit, (and his affidavit on this point is not as clear as it might have been,) that the arrangement was made for the purpose of evading the payment of the full " combination ” dues on royalties. He admits that Taylor subsequently, nominally or formally, manufactured the machines for Elias Howe, Jr. and received his pay from him ; but the plaintiff says that when he took the machines, he refunded these -moneys to Elias Howe, Jr. and that,' in fact, the arrangement thus covered up was that the machines should continue to be made solely for the plaintiff, and, in fact, continued to be made solely for the plaintiff, under the arrangement, for sometime.

This version of the arrangement is confirmed by Taylor, and, to some extent, by others.

I have no doubt that Elias Howe, Jr.’s affidavit was designedly drawn so as to leave the imp'ression that his version of the arrangement was, that he was to buy the patterns with trade-mark on them of Taylor, and that he (Elias Howe, Jr.) was thereafter to manufacture the machines, with the plaintiff’s trade-mark on them, for export, on his own account, and for sale to the plaintiff and others; and yet a careful analysis of the affidavit makes me hesitate to say, that it is inconsistent with the plaintiff’s version of the arrangement, that, under it, the machines were to he manufactured for the plaintiff solely, and the trade-mark to be used for his benefit solely.

[New York General Term, November 4, 1867.

, The trial of the case will probably sift the truth out on this point; and considering that the trial, in the regular course of things, ought to take place soon ; that there is no doubt of the defendants’ ability to respond to any damages the plaintiff may recover; that the application for an injunction was fully argued and carefully examined by the court below; that one of the grounds on which it was denied was, that the arrangement in 1862 vested in Elias Howe, Jr. the right to use the trade-mark, and' to transfer that right to the defendants ; and that the granting the injunction was, in a great measure, a matter of discretion, I am of the opinion that the order appealed from, denying it, should be affirmed, with costs.

Clerks, J. concurred.

Leonard, P. J.

There is no fraud upon the plaintiff in the • use, by the . defendants, of the name of Howe,” in designating a machine manufactured by them, which Elias Howe, Jr. had invented, and from whom the defendants derive their right to use the name.

I concur in the conclusion of Judge Sutherland,

Leonard, Clerke and Sutherland, Justices.]