text:
      (Superior Court of Cook County. In Chancery.)

    Marette H. Curtis vs. Eugene P. Palmer.
    (1903.)
    1. Partnership—Compensation op Partners. Each! partner is under obligation to devote his skill and effort to the promotion of the business of the firm. In the absence of special agreement, one partner is not entitled to any special compensation for services'in prosecuting the partnership business, even though such partner has greater industry or ability than his co-partners.
    2. Same—Surviving! Partners. The same rule applies as to the services of a surviving partner as between him and the representatives of a deceased partner.
    3. Same—Extraordinary Services. Where a surviving partner renders unusual or extraordinary services in preserving the partnership estate, or where the surviving partner devotes his whole time to the business and carries it on successfully, he is entitled to charge a reasonable sum for his services.
    Bill for partition and accounting. Heard before Judge Jesse Holdom on exceptions of defendant to master’s report.
    For statement of facts see opinion.

      John 8. Stevens, for complainant.

      McGordic & Sheriff, for defendant.
   Holdom, J.:

This cause is before the court on the exceptions of defendant to the master’s report, embracing but one contention—that of compensation to defendant for collecting the rents of the property in question at the rate of five per cent on the amount of such collections.

In the year 1882 one Hotchkin and the defendant, Palmer, were partners, carrying on the business of dealers in cloaks, etc., and from the partnership moneys bought a leasehold estate for twenty years in the premises number 147 State street in the city of Chicago. In the year 1890 the partnership was dissolved and in 1896 Hotchkin died.

Palmer during the administration of Hotchkin’s estate, paid one-half of the income to his administrator hut did not inventory the same as partnership property. After the settlement of the estate of Hotchkin, Palmer continued to collect the rents, and disputes having arisen between himself and complainant, who, as an heir, acquired one-third of the interest of Hotchkin, she filed the bill herein for partition of the leasehold estate and for an accounting from Palmer. Since the filing of the bill the leasehold estate has ended by expiration of the term of the demise. The only matter now remaining for adjudication is the accounting, and the master has found that $2,166.56 is due complainant, which sum has by order of court been paid into the hands of the clerk of the court awaiting the determination of the court as to whom the same shall be paid. Palmer claims out of the fund the sum of $1,064.36.

The leasehold estate was a chattel real. After the dissolution of the firm of Hotchkin & Palmer they were tenants in common. They had, long prior to Hotchkin’s death, ceased doing business, and the partnership had been formally dissolved. But treating the leasehold estate as partnership assets, upon the settlement of Hotchkin’s estate his heirs and Palmer became tenants in common—although whichever contention is technically correct, the rights and duties of the parties are the same.

It is admitted that to the end of the administration of Hotchkin’s estate Palmer kept charge and control of the leasehold premises, collected the income and paid the lawful charges in its maintenance, all without compensation or the making of any claim therefor. It is urged that Palmer rendered valuable service to the Hotchldn heirs, because, forsooth, he did not, as he might, sell the leasehold during the period of administration, which being a time of financial depression, the heirs would have been deprived of a large amount of money, as no adequate price could then have been obtained for it. Granted. What would be the result to Palmer? He must sell the whole, his own interest included, and he could not purchase at his own sale. He would suffer equally in such a sacrifice. It was for their joint interest to obtain the best financial results from the property. A loss meant a loss to each and all alike, and a profit an equal benefit. There is no pretense of any express agreement to compensate Palmer for his services by any of the parties in interest as heirs of Hotch-' kin. A new tenant was procured after Hotchkin’s death and a real estate brokerage firm paid a commission of $500, which was borne equally by Palmer and the Hotchkin heirs. It is said that Palmer by his efforts saved the expense of attaching new fire escapes to the building; that he had the water taxes rebated; that he kept down the real estate tax upon the fee, etc.; and while undoubtedly all of this may be true, yet there was no more skill or labor required in working for the financial gain of his old partner’s heirs than for his own.

This is not a case of unusual or extraordinary service rendered by a surviving partner to preserve the partnership estate or in carrying on a business successfully where the surviving partner devotes his whole time to it. In such a case compensation should be paid to such surviving partner and in the stating of the account he should be permitted to charge a reasonable sum for his services, as part of and a just expense for such extraordinary service. Such is the condition found in Maynard v. Richards, 166 Ill. 466. The service rendered by Palmer was the ordinary service in caring for the leasehold property in which he had a one-half interest until it determined by efflux of time. He took the burden upon himself voluntarily; he asked no heir’s co-operation, neither did he request the assistance of the administrator of Hotchkin’s estate during its administration. Upon the death of his partner he had the largest individual interest to protect, and it was only natural that, being familiar with the management and knowing its needs, and being personally acquainted with all the tenants, that he should continue in its charge and care.

In Maynard v. Richards, supra, Richards virtually created the fund in controversy, upward of $100,000, by his work, energy and ability, extending over a period of six years, and it was out of the fund thus created by his own independent exertion, and after defeat in the lifetime of his partner, that he was awarded compensation for such extraordinary and successful service.

In Zell’s Appeal, 126 Pa. St. 329, Zill, thirteen years after his partner’s death, discovered an old partnership claim which the court said “was not merely doubtful, but had no real foundation in either law or equity. ’ ’ Zill prosecuted the claim with energy for four years and succeeded in settling it for $50,000, and for such remarkable energy and extraordinary service he was, as he ought to have been, allowed compensa•tion in an accounting with the heirs of his deceased partner.

The foregoing cases exemplify what the law regards as extraordinary service entitling the surviving partner to an allowance therefor out of the fund recovered.

The services of Palmer in no sense come within the exception to the general rule which inhibits a partner “charging the firm or his copartners for his services in attending to the copartnership business unless there is a special agreement among the partners entitling him to do so. In the absence of such an agreement the law will not imply one from the greater industry or greater ability of any one partner. Brownell v. Steere, 128 Ill. 209. The reason of the rule, is that each partner is under obligations to devote his skill and efforts to the promotion of the common benefit of the firm. Lewis v. Moffett, 11 Ill. 392. The same rule applies as to the services of a surviving partner as between himself and the representative of a deceased partner. Maynard v. Richards, supra.

Counsel for defendant, Palmer, contend that the leasehold estate was partnership property. Conceding such contention to be correct the foregoing authorities are in point and conclusive against Palmer’s claim.

The exceptions of Palmer to the master’s report will be and are overruled, and a decree will be entered directing the clerk -of this court to pay the sum of $2,166.36 heretofore deposited with him by order of court to complainant or her solicitor upon demand.


source: Caselaw Access Project

author: Tuley, J.

license: Public Domain

text:
      (Circuit Court of Cook County. In Chancery.)

    Sigmund Oppenheimer, et al. vs. George Jacob Sayer.
    (July 18, 1890.)
    1. Contracts—Restraint oe Trade. Covenants in restraint of trade generally are void, because contrary to public policy, but where the restraint is only partial, and the restriction is reasonable, such contracts are legal and will be enforced.
    2. Same—Contracts Embracing Entire State. The doctrine of the common law that contracts which embrace the entire kingdom or state are void, has been modified by the later decisions.
    3. Consideration—Adequacy oe. At law a consideration of even one dollar is sufficient to support a contract. The court cannot inquire into its adequacy.
    4. Same—Courts oe Equity. A contract good at law is good in equity. A court of equity will inquire into the adequacy of the consideration only when the contract is sought to be specifically enforced, and the inquiry of the court then is, whether a court of equity will lend its aid to enforce the contract.
    5. Employment Contract—Reasonableness oe Covenant. An agreement by an employe not to engage in a particular business for three years after the termination of his employment is not unreasonable.
    6. Same—Rules Applicable. On an application for an injunction to restrain an employe from violating a contract not to engage in a particular business for three years after the termination of his employment, the decisions governing courts of equity as to decreeing specific performance of contracts should control.
    7. Speoieio Pereormance—When Not Granted. If there are any circumstances which render the enforcement of a contract unfair, harsh, oppressive or inequitable, specific performance will not be granted.
    8. Same. Where an inexperienced employe was induced to sign a contract upon the representations that a fellow employe had signed a similar contract, which statement was false, and where the contract is unfair in that the complainants do not bind themselves to give employment to the defendant except from week to week, and do not bind themselves to teach him the business, or the secrets of such business, the court will not restrain a breach of such contract by injunction. In order to have such contracts enforced they must not be unilateral or one sided. They must be fair and not harsh or oppressive.
    9. Same—Covenants Not to Engage in Business. The fact that all other business pursuits are open to an employe who has agreed not to engage in a particular business does not affect the reasonableness of the covenant. This is a good answer at. law, but it is an unconscionable one in equity.
    Bill for injunction to restrain an employe from breaking' Ms contract not to engage in business. Bill filed January 19, 1889. Heard before Judge Murray F. Tuley. Case No, 70,972.
    Statement of facts.
    The bill alleged that the complainants were a partnership doing business in Chicago and New York; that they were engaged in the business of manufacturing and selling sausage-casings and supplies of various kinds and descriptions, commonly used by butchers and others engaged in the business of buying, selling and manufacturing meats and meat products; that needing the services of salesmen to carry on their business they employed the defendant at his request, to act as salesman in their business at a stipulated salary, such hiring to continue as long as it was mutually satisfactory to the parties thereto, and that complainants agreed to instruct him in the said business and impart to him the names of their customers and other trade secrets. That they entered into a written contract with said defendant as follows:
    “This agreement; made this eighth day of March, 1884, at Chicago, Illinois, by and between S. Oppenheimer and Company,- a firm doing business in the City of Chicago, Cook County, Illinois, also in the City of New York, State and County of New York, parties of the first part, and George Jacob Sayer, party of the second part, Witnesseth:
    “Whereas, The parties of the first part are engaged in the business of manufacturing and dealing in sausage casings and butchers’ supplies in which said business are certain trade secrets of great importance to the parties of the first part.
    “And whereas, said parties of the first part have employed in said business,said-party of the second part and while so employed may instruct him in said business, and impart to him such trade secrets,
    “Now, in consideration of said employment and of one dollar to him in hand paid, the receipt whereof is hereby acknowledged, and of various other good and valuable considerations to him thereunto moving said party of the second part covenants and agrees to and with said parties of the first part and their legal representatives that he will never disclose or make known directly or indirectly to any person or persons any information or trade secrets concerning or in any wise relating to the business of the said parties of the first part and so acquired or learned by him as said employe or agent.
    “Said party of the second part further covenants and agrees that within the following named countries, to-wit: the States of Connecticut, Georgia, Louisiana, Maryland, Massachusetts, New Jersey, New York, Pennsylvania, Rhode Island, South Carolina, Illinois, Indiana, Michigan, Ohio, Wisconsin, Iowa, Minnesota, Tennessee, and the Province of Ontario in the Dominion of Canada, said party of the second part will not for himself nor for any other person or persons, directly or indirectly, engage in the business now carried on by said parties of the first part for the period of three years from the date of the termination of said employment.
    “(Signed) Geo. J. Sayer.”
    That at the time said contract was entered into the said defendant was a minor but upon the discovery of that fact by the complainant the said defendant signed a confirmatory agreement upon the attaining of his majority.
    That in December, 1888, the said defendant left his employment of his own free will, and such hiring thereupon terminated ; that thereupon said defendant entered into a partnership with one Nicholas Wolf in the city of Chicago for the purpose of selling and dealing in sausage casings and butchers’ supplies, and thereafter did engage in such business in violation of his agreement, and attempted to deal with the customers of complainants in the states of Illinois and Wisconsin.
    That while in the employ of complainants said defendant traveled as salesman in the states of Illinois, Michigan, Minnesota and other states, and complainants believe that defendant will attempt to engage in business in said states and sell to the customers of complainants, and that said defendant has acquired a knowledge of the customers of complainants which information he could not have acquired except in the employ of complainants, and that such knowledge constitutes trade secrets in the business of complainants.
    That the damages which complainants will suffer by reason of defendant’s breach of his contract are difficult and almost impossible of ascertainment, and complainants will suffer irreparable injury; that defendant has no property and is not worth more than $2,000.00.
    The prayer of the bill was that the defendant be restrained “from engaging either on his own account, or as salesman or clerk or other agent for another, or in any way, directly or indirectly in the business of buying and selling sausage casings or butchers’ supplies in the states of Illinois, Wisconsin, Michigan, Ohio, Missouri, and Minnesota or either of them, or with any firm or corporation doing business or to do business in the same line of trade, business or manufacture in the said states or any of them until the 24th day of September, 1891.”
    A preliminary writ was issued in accordance with prayer of the bill. The defendant answered, proofs were taken and the case was heard, on final hearing. The defenses interposed were that, first, that the contract was procured by fraud, and second, that it was contrary to public policy and therefore void.
    The answer which was sworn to set up the following: “This defendant says that he was bom on the 23rd of April, 1864; that at the time of the signing of said contract, he was a minor, but the fact of the minority was not spoken of at the time of the signing of said contract.
    “This defendant further answering, says that on or about the 10th day of April, 1886, after having been in the employment of said firm continuously, he signed a certain document, called in said bill a confirmatory and supplemental contract,. ¡but whether said contract is in the words and figures as stated in said bill of complaint, this defendant is not advised, ¡except as stated therein, because this defendant' was not furnished with any copy of said contract.
    “This defendant avers that the circumstances surrounding •the execution of said supplementary contract are.as follows: Said Oscar Aberle accidentally became aware of the fact, "through conversation between this defendant and said Aberle, that this defendant was a minor at the time when he signed the first document set forth in said bill of complaint. He thereupon immediately insisted to this defendant that it was •necessary that this defendant sign another contract with said firm, by reason of said minority, to which proposition this defendant objected, and he was thereupon informed by said Aberle that such was the rule of the house, and that this defendant must sign the contract, and he gave this defendant to understand, and defendant so believed from such conversation, that unless he would sign such contract he would lose '•his position as an employe of said firm. This defendant was then ready to go out on the road and attend to his usual business, but by reason of the refusal of this defendant to sign said contract, he was kept around the office of said firm, doing nothing, and during said time he was constantly being persuaded by said Freund and said Aberle to sign said contract. 'This defendant, during said conversation was informed by said Aberle that all other employes in the firm had signed ■such contracts, whereupon this defendant asked said Aberle and Freund whether one Nicholas Wolf, who was then and always had been a friend of said defendant, and upon whose advice and judgment this defendant was in the habit of relying, had signed a like contract, to which question said Aberle and Freund replied that he had. Said Nicholas Wolf was then absent from the city of Chicago and could not be consulted by this defendant as to the advisability of signing such contract, and this defendant did not consult any one experienced in such matters, whether to sign such a contract, and this defendant in order to continue in said employment, and -implicitly relying on the facts stated to him that other employes of said firm, and particularly said Nicholas Wolf had signed a like contract, this defendant was induced by said Aberle and Freund to sign said contract, but he was then informed by said Aberle at the time of said signing, and before he consented finally to sign the same, that it was only a matter of form, that it would amount to nothing, inasmuch as said firm could not stop this defendant from going elsewhere, and he then referred to the fact that one John B. Rucker, formerly a traveling salesman of said firm, was then with an opposition firm in spite of a like contract signed by said Rucker with said firm. In view of these explanations and representations, and relying upon them, this defendant signed said contract and continued in the employ of said firm till the last few weeks of December, 1888, when said employment was terminated.
    " This defendant further answering says that at the time of the signing of said second contract, the first contract was not read by this defendant, nor was it read to him by said complainants, or by any of them, nor did this defendant have in mind the particular provisions of said first contract signed by him in 1884, and this defendant while at that time inexperienced in business affairs, had his anxiety quieted by said complaihants by the statement that said signing was a mere matter of form and amounted to nothing anyhow, and that such impression was upon the mind of this defendant when he went into partnership with said Nicholas Wolf, as hereinafter more fully stated. ’ ’
    The allegations of the answer on the subject of public policy were as follows:
    “This defendant further says that the business of buying and selling butchers’ supplies and sausage casings is not controlled by said firm of S. Oppenheimer & Co., but is an extensive business participated in by over ten firms in the city of Chicago, controlling the same territory which is controlled by said S. Oppenheimer & Co.; that a large number of persons are in the business of selling butchers’ supplies and sausage casings, such as the various packers of the city of Chicago, located at the stock yards, in the town of Lake; that there is a large competition in said trade at the present time, and has been for several years past, and said competition is increasing by the location of various houses engaged in the same line in various western cities, and when this defendant engaged in said business in copartnership with said Nicholas Wolf, he was willing to take his chances in said competition with new and old houses and do the best he could under all circumstances for the purpose of supporting his family.
    “This defendant further answering says that he has no other business except the business herein described, out of which he could make a pleasant living, and that he is in danger of losing his livelihood, and perhaps the benefit of his partnership agreement with said Nicholas Wolf, if said temporary injunction be continued.
    “This defendant further insists that there was no consideration for such contracts, or either of them; that even if there was such a consideration, said consideration was inadequate, inequitable, and illegal, and therefore void in law and equity.
    “This defendant further says, that during his entire employment with said firm he was at no time engaged in the manufacture of sausage casings; that at the beginning he was engaged principally in the sale of sausage casings; that thereafter, in addition, at the request of said firm, he sold butchers’ supplies, which latter term comprises butchers* tools, fixtures, engines and boilers, water motors, refrigerators, tanking outfits, safes and everything which may be used in slaughter-houses and butcher shops; that such butchers’ supplies, in more or less quantity, are also kept in every hardware store in this country, and are commodities handled in other branches of business; that sausage casings are also handled in large quantities for the purpose of sale, by packing establishments engaged in the killing of domestic animals.
    “* * * That this defendant insists that the provisions of said agreement, set forth in said bill of complaint, áre too indefinite and too broad, even if otherwise legal, to receive the countenance of a court of equity; and this defendant insists that it is his right to be' relieved from said inequitable and illegal contract, and that he he relieved from the injunction issued by this honorable court. * ® * ”

      Trussing <& Hutchins, solicitors for complainant

      Moses (& Pam, solicitors for defendant.
   Tuley, J.

The complainants, doing business in New York and Chicago, selling sausage casings, butchers’ supplies, meat and meat products, in 1884 employed the defendant, then about twenty years of age, as a traveling salesman, at a salary of seven dollars per week and one per cent, upon all sales made by him; and a few days after procured from the defendant a written agreement, in substance, that in consideration of such employment and of one dollar and other good and sufficient considerations, not to make known any information or trade secrets relative to the business of complainants, and that neither in Illinois and eighteen other named states, nor in the province of Ontario, Canada, would he, directly or indirectly, engage in the said business for the period of three years from the termination of his employment.

In 1886, complainants having discovered that the defendant was a minor when he signed the agreement, obtained anew agreement or contract confirming that made in 1884.

In December, 1888, defendant left the employment of complainants and soon thereafter entered into a partnership with one Wolf in the city of Chicago and commenced the business-of dealing in sausage casings and butchers’ supplies.

Thereupon, on the 19th of January, 1889, this bill was filed] to restrain the defendant from parrying on such business ini -Illinois, Wisconsin, Michigan, Ohio and Minnesota, being the-states in which defendant had done business as a traveling-salesman for complainants.

It appears to be admitted that the first contract is not binding on defendant by reason of his being a minor at the time of its execution, imless the confirmatory agreement is binding upon him.

Defendant alleges fraud of complainant in obtaining the execution of the confirmatory agreement of 1886.

Much evidence was taken which is conflicting and irreconcilable. While there is some evidence tending to show misrepresentations made to defendant to induce him to sign the agreement, there was none which in my opinion was of so material a character, or which was so controlling in inducing defendant-to sign the confirmatory agreement as to make the contract void for fraud. It is contended that the evidence shows that at least one hundred and one dollars was paid defendant as an additional consideration for Ms signing the last agreement.

I find from the evidence that the defendant signed the same under a threat of discharge and received no consideration other than a continuation of his weekly employment and probably the one dollar mentioned in the agreement.

The defendant contends that the contract is in restraint of trade and therefore contrary to public policy and void. Covenants in restraint of trade generally are void because contrary to public policy, but where the restraint is only par-dial, the consideration for the agreement is a good consideration, and the restriction is reasonable, such contracts are legal and can be enforced.

The doctrine of the common law that contracts in restraint of trade which embrace the entire kingdom or state are void, has been much modified by the later decisions of the courts.

Justice Bradley in Oregon Steam Navigation Company v. Winsor, 20 Wallace, 64, 67, well claims that “This country is substantially one country, especially in all matters of trade and business, and it is manifest that cases may arise in which it would involve too narrow a view of the subject to condemn as invalid a contract not to carry on a particular business within a particular state,” and that “Cases must be judged according to their circumstances, and can only be rightly judged when the reason and grounds of the rule are carefully considered. ’’

In the modern method of doing business, by means of traveling salesmen, a business ceases to be local or confined to any one state, but the whole territory traversed by the traveling salesman becomes the territorial limits of the business. A covenant not to do business within such limits may not be any more against public policy than, formerly, a covenant not to do business in a certain town or city.

The methods of modem convenience in the transaction of business have done away with the reason of the rale founded upon territorial limitations.

In the Diamond Match Case, 106 N. Y. 473, the covenant included all the United States except one. It was held valid. Beal v. Chase, 31 Mich. 491, is also a very strong case upon this point.

It is contended that the consideration, which was only an •agreement to employ the defendant by the week at cértain wages and the one dollar mentioned in the contract, was inadequate and therefore the contract is void.

At law the consideration—even that of one dollar—is a valuable consideration and sufficient to support a contract—■ sufficient to support this as well as any other contract. If the parties considered the employment and the one dollar a reasonable and adequate consideration, it is not for the court to say that it was unreasonable or inadequate. To hold otherwise it appears to me would be to make the contract rest upon the business capacity and intelligence of the court as compared with that of the complaining party. It is an old saying that the law does not attempt to give any man brains or business sense.

A contract good at law should be good in equity. The only time a court of equity will inquire into the adequacy or sufficiency of the consideration is when the contract is sought to be specifically enforced, directly or indirectly, and the inquiry of the court then is not as to the validity of the contract, but whether the court of equity will lend its aid to enforce it.

The restriction as to the length of time (three years) for which defendant bound himself not to engage in the business, is not unreasonable. I do not understand defendant’s counsel as contending that it is.

The only remaining question is, should a court of equity give its aid towards the enforcement of this contract f It appears to me that the decisions governing courts of equity as to decreeing the specific performance of contracts should control this case. The application of complainant to this court is that this court decree that the defendant specifically perform his contract by decreeing a perpetual injunction against his breaking it. In other words,—that he abstain from going into and doing the business which 'by the contract he agreed he would abstain from for three years. It is the only specific performance of the contract by the defendant which this court could decree.

There are no trade secrets in this business to be divulged, and it is only by the competition of the defendant in business that complainants can be injured.

Pomeroy, in his work on the Specific Performance of Contracts says:

“It may be laid down as a general proposition that if there-is any circumstance or fact connected with the preliminary negotiation * * * with the relations of the parties or conduct of the plaintiff which renders the enforcement unfair, harsh or inequitable upon the defendant, such specific-performance will be refused; and to produce such a result there need have been no intentional dishonesty or unfairness,, although in a great majority of instances the design to overreach or obtain an undue advantage exists.” * * *
“The concealment, suppression or neglect to disclose any fact during the negotiation which, if known, could have reasonably affected the result, although not amounting to such-fraudulent concealment as would furnish ground for a rescission, will induce the court to withhold its equitable remedy.” (Pomeroy, secs. 183, 184.)

In this case I found that in order to induce defendant to sign the contract, one of the complainants did represent to him that Nic Wolf, a fellow-employee, a friend of defendant and upon whom he was known to rely for counsel and advice, had signed a similar contract. This was false, and while not such a misrepresentation as would be material and enable the defendant to have a rescission of the contract, this court, which abhors deceit and false representations, whether material or not, can not look favorably upon an application for the enforcement of a contract obtained by such means.

“Not only,” says Pomeroy, “must the agreement be fair and reasonable in its terms and its surrounding circumstances; it is a well settled doctrine that its specific execution must not be oppressive.”

That—-“every unfair contract is unconscionable and hard.”

‘‘ The oppression and hardship, therefore, -which fall within the scope of the doctrine may result from the unequal, unconscionable provisions of the contract itself.”

In this case the defendant, a boy of twenty, uneducated and ignorant to an extent that he could with difficulty read writing, applied for work to complainants, who employed him by the week at $7 per week, and one per cent, commission upon sales. He is asked to sign this contract,, and without reading it, does so, or if he did read it, was scarcely capable of comprehending its meaning. Under this contract complainants do not bind themselves to give him employment beyond week to week, do not bind themselves to teach him the business or the secrets, if any, of such business, but exact from him a mortgage upon his liberty of action and practically upon his means of livelihood, for three years. If he should continue in the employment long enough to learn the business, he is made to agree in effect that for an employment for one week he will not pursue a certain line of business for a term of three years after his discharge; It is true he affirmed this contract two years or more thereafter, when of full age, but he did it under a threat of discharge and upon a false representation that his friend, upon whose judgment he relied, had signed a similar one. The consideration for the confirmatory agreement was the continuation of the same weekly employment, and one additional dollar. Is it fair, is it a reasonable contract as between men of large business and contract experience, educated and intelligent men, and á boy of twenty or twenty-two, ignorant, uneducated, seeking wages unon which to live? Is it fair that such men should exact from such employe a covenant by which he surrenders for three years his “business freedom” as to following the business which may have required years to learn ?

It is said, however, that all other business pursuits and trades were open to him. That is a good answer at law, but is an unconscionable one in equity.

I do not want it to be understood that no contracts of this nature will be enforced in equity. But in order to have them enforced it must appear that they are not practically unilateral, or all on one side. The employer must agree to do something, must give an adequate consideration; the contract must be fair, not harsh or oppressive, in order to obtain an injunction which will restrain a party’s business freedom and which will operate more or less in restraint of trade.

It is alleged that the defendant is insolvent, and that in a suit at law the damages are not capable of ascertainment. The circumstances may give a court of equity jurisdiction to enforce contracts of this nature which are fair and reasonable, not one sided in their covenants, obtained in a fair, not oppressive manner, and not founded upon deceit or misrepresentations. But this is not such a contract, and the fact that the remedy is not adequate does not make it the duty of this court to enforce contracts which do not possess these qualifications, and the enforcement of which would be against equity and good conscience.

The complainants must seek their remedy at law, and the injunction herein granted must be dissolved and the bill dismissed for want of equity without prejudice to the complainant’s legal remedy.

Defendant moved the court for leave to file suggestion of damages.

NOTE.

A.

Injunction to Prevent Breach of Contract for Personal Services and to Restrain Employes from Soliciting Customers, Disclosing Trade Secrets, etc. Validity of Contracts, etc.

Injunction will not lie to restrain an employe from, working for a rival concern in violation of his contract unless his services are unique and extraordinary. Kessler v. Chappelle, 77 N. Y. S. 285 (wine salesman); Stone Cleaning & Pointing Union v. Russell, 77 N. Y. S. 1049 (stone cleaning and pointing workman); Jewelry Co. v. O’Brien, 70 Mo. App. 432 (jewelry salesman); Lithographic Co. v. Crane, 12 N. Y. S. 834 (skilled lithographer); Johnston Co. v. Hunt, 21 N. Y. S. 314, 66 Hun, 504 (advertising solicitor). Rogers v. Rogers, 58 Conn. 356, 20 Atl. 467, 18 Am. St. Rep. 278 (cutlery salesman, agent and manager); Burnley v. Ryle, 91 Ga. 701, 17 S. E. 986 (insurance solicitor). See also vol. 4 Pomeroy, Equity Jurisp., 3rd ed., sec. 1343; Pomeroy, Specific Performance, 2nd ed., sec. 24.

In Universal Talking-Machine Co. v. English, 69 N. Y. S. 813, 34 Misc. 342, it was held that equity would not enjoin an employe having special knowledge or skill, unless it was affirmatively shown that such skill cannot be supplied by others.

Injtinction will lie where the services are unique and extraordinary. Lumley v. Wagner, 1 DeGex, MacN. & Gordon, 604 (singer); Hoyt v. Fuller, 19 N. Y. S. 962 (danseuse); Duff v. Russell, 14 N. Y. S. 134, 16 N. Y. S. 958, 133 N. Y. 678, 31 N. E. 1 (actress); Daly v. Smith, 38 N. Y. Super. Ct. 158, 49 How. Pr. 150 (actress). This decision contains a full review of the authorities. McCaull v. Braham, 16 Fed. 37 (actress). See note to above case on pp. 42-49. Metropolitan Exhibition Co. v. Ward, 9 N. Y. S. 779 (ball-player); Pratt v. Montegriffo, 10 N. Y. S. 903 (singer); Carter v. Ferguson, 5.3 Hun, 569, 12 N. Y. S. 580 (actor); Canary v. Russell, 30 N. Y. S. 122, 9 Misc. 558 (actress); Fredricks v. Mayer, 13 How. Pr. 566 (actor); Philadelphia Ball Club v. Hallman, 47 Leg. Int. 130, 8 Pa. Co. Ct. 57 (ball-player); American Association Ball Club of Kansas City v. Pickett, 8 Pa. Co. Ct. 232 (ball-player); Montague v. Flockton, L. R. 16 Eq. 189 (actor); Cort v. Lassard, 18 Ore. 221, 22 Pac. 1054, 17 Am. St. Rep. 1054, 6 L. R. A. 653 (acrobat); Metropolitan Exh. Co. v. Ewing, 42 Fed. 198, 7 L. R. A. 381 (ball-player); Philadelphia Ball Club Limited v. Lajoie, 202 Pa. 210, 51 Atl. 973, 90 Am. St. Rep. 627, 54 Cent. L. J. 446, 58 L. R. A. 227 (ball-player); Grimston v. Cunningham, L. R. (1894) 1 Q. B. D. 125 (actor).

In the cases of The Columbus Baseball Club v. Reiley, 25 Week. L. B. 385, s. c. 11 Ohio Dec. 272; American Baseball & Athletic Exhibition Co. v. Harper, 54 Cent. L. J. 449, and Harrisburg Baseball Club v. Athletic Association, 8 Pa. Co. Ct. 337, injunctions were denied in the case of baseball-players on the ground that the services were not unique and extraordinary. See also H. W. Gossard Co. v. Crosby, 109 N. W. 483 (Iowa).

In Philadelphia Ball Club Limited v. Lajoie, supra, it was held that to authorize an injunction, it is not necessary that the employe’s services be of such a character that it is impossible to replace them; it is sufficient if they are of such a unique character, and display such a special knowledge, skill and ability as to render them of peculiar value to the employer and difficult of substitution.

In H. W. Gossard Co. v. Crosby (Iowa, Oct. 1906), 109 N. W. 483, the authorities are reviewed at length and it is held that in the absence of an express covenant not to work for another in a contract for personal services, equity will not aid the enforcement of such contract by restraining the employe from working for others. It is also held that even where there is an express covenant not tp work for others, injunction will not be granted, except where the services are special, unique, unusual and extraordinary, or of an intellectual character which render such services of peculiar value. In that case the defendant was employed to sell a front lace corset and to give lectures pertaining to physical culture. The services were alleged to be unique, requiring a cultured salswoman of strong individuality, with good address and ability as a lecturer, which requirements the employe was alleged to possess. It was held that such services were not unique and extraordinary.

In Brooklyn Base Ball Club v. McGuire, 116 Fed. 782 (C. C. E. D. of Pa.), an injunction was denied in the case of a ball-player, for the reason that the contract contained a provision that the same might be terminated upon ten days’ notice.

•In Welty v. Jacobs, 171 Ill. 624, it was held that the manager of a theatrical company could not enjoin the proprietor of a theater from refusing to furnish his theater, stage hands, etc., nor from letting the theater to another company, as such a contract cannot be affirmatively specifically enforced.

In Robertson v. Montgomery Baseball Ass’n, 141 Ala. 348, 37 So. 388, it was held that a bill would not lie to restrain defendants from seeking an injunction to restrain complainants from playing baseball. See vol. 60 Cent. L. J. 93.

See also upon the subject in general note in. vol. 90 Am. St. Rep. 646 and in vol. 54 Cent. L. J. 451.

As to whether an injunction will lie in the absence of an express covenant see H. W. Gossard v. Crosby (Iowa 1906), 109 N. W. 483, where the authorities are reviewed. See also Butler v. Galletti, 21 How. Pr. 465; Welty v. Jacobs, 171 Ill. 624; Whitwood Chemical Co. v. Hardman, L. R. (1891) 2 Ch. Div. 416.

In Hahn v. Concordia Society, 42 Md. 460, an injunction was denied where the employment contract provided for stipulated damages in case of a breach by the employe.

B.

Solicitation of Customers and Disclosure of Trade Secrets. In Cahill v. Madison, 94 Ill. App. 216, it was held that equity would interfere by injunction to restrain an employe- from attempting to take away or solicit the customers of his employer in violation of his contract.

In Hoops Tea Co. v. Dorsey, 99 Ill. App. 181, it was held that injunction would lie to restrain a solicitor and salesman from soliciting the customers of his employer in violation of his contract.

But in India Tea Co. v. Peterson, 108 Ill. App. 16, it was held, in a similar case, that an injunction would not be granted where the contract was otherwise unfair and unconscionable, or harsh and oppressive.

•In Timm, v. Tioczynski, 114 Mich. 149, 72 N. W. 140, it was held that one who is given employment by a manufacturer whose processes of manufacture, methods, and machinery, are kept secret from the public, upon the agreement that he will not use the information imparted to him, in the course of his employment, for his own benefit, or communicate it to strangers, will be enjoined from breaking his agreement. The case contains a thorough review of the decisions.

And in Salomon v. Hertz, 40 N. J. Eq. 400, it was held that an injunction would lie to restrain an employe from diigulging certain processes of manufacture, in violation of his agreement with his employer. The injunction was denied in so far as it was sought to prevent the employe from making known where or from whom the employer buys his materials, or to whom he sells his goods, or the prices at which he buys or sells, in violation of his agreement. Such an agreement will be construed as limited to the term of service.

In Harrison v. Glucose Co., 116 Fed. 304 (C. C. A., 7th Cir.), it was held that an employe would be restrained from violating a covenant not to divulge trade secrets, etc. A large number of decisions are referred to in the decision of the court.

C.

Validity of Contracts not to Enter into Similar Employment.

The rule (Point A, supra) that injunction will not lie to restrain an employe from working for a rival concern, unless his services are unique and extraordinary, apparently has no application, where the employe covenants that he will not engage in a similar business or in the service of a competitor for a reasonable period of time after the termination of his employment. Such a covenant is valid and will be enforced.

In Carter v. Alling, 43 Fed. 208 (C. C. N. D. of Ill.), it was held that a contract between a manufacturing corporation, whose business extends throughout the United States and Canada, and one of its traveling salesmen, who had been in its employ for several years, whereby he agrees not to enter the service of any business competitor of the corporation, for three years, after leaving its service, is valid, and an injunction was awarded. A large number of cases, both American and English, are reviewed.

But in Ehrman v. Bartholomew, L. R. (1898) 1 Ch. Div. 671, a traveler for the plaintiffs, a firm of wine merchants, agreed to devote the whole of his attention and time to the business of the plaintiffs, and not directly or indirectly to engage or employ himself in any other business with any other person than the plaintiffs for a term of ten years. The traveler having left the plaintiffs’ employ and entered that of another firm, the plaintiffs moved for an injunction to restrain Ijim from engaging in any other business, and from acting as a traveler for any other firm of wine merchants, during the term of ten years. Held, that the negative stipulations in the contract were unreasonable and ought not to be enforced, and that the application must therefore be refused.

It was held also that the plaintiffs might enforce those provisions of the contracts relating to the solicitation of plaintiffs’ customers, or the supplying of such customers with goods, etc., and that in this respect the contract was severable.

And in Sternberg v. O’Brien, 48 N. J. Eq. 370, 22 Atl. 348, it is held that an agreement not to enter a particular employment is valid where the contract is restricted to a particular business, but otherwise it is bad. And where it is not alleged that the defendant occupied a position of special confidence, or acquired knowledge of the complainant’s business secrets and methods, which he may use so as to benefit a rival, and where the length of time the defendant remained in the complainant’s employ is so short that he could not have acquired the slightest influence over the complainant’s customers, the injunction will be denied.

It was also held that where an employe agrees that he will not enter the employ of any rival of his employer “in any capacity,” this will be construed to mean in any capacity in the particular business carried on by the employer.

And in Harrison v. Glucose Co., 116 Fed. 304 (C. C. A., 7th Cir.), it was held that a covenant by an employe not to engage in the same business during the term' of his employment, within a radius of 1,500 miles from the city of Chicago, was not in restraint of trade, and would be enforced by injunction.

But in Harding v. Glucose Co., 182 Ill. 551, a similar contract between vendor and vendee was declared void.

In Underwood v. Barker, 1 Ch. Div. (1899) 300, it was held that a contract in which the defendant entered into a covenant that he would not, for the space of one year after leaving his employment, carry on the same business as his employer, or enter into the service of any person, in the same line of business, in either the United Kingdom, France, Belgium, Holland, or in the Dominion of Canada, was a valid and enforceable contract, and not in restraint of trade, and that the breach of such contract would be restrained by injunction.


author: Horton, J.:

text:
      (Circuit Court of Cook County. In Chancery.)'

    The Werner Company vs. W. B. Conkey Company, et al.
    (December 8, 1893.)
    Business Plans and Systems — Injunction Against Use of. The complainants commenced issuing in serial parts a portfolio of sights and scenes of the world. These parts were issued and distributed under contract by certain newspapers in exchange for coupons clipped from such newspapers. This plan was originated by the complainants and proved to be a great success. The defendants thereafter issued a similar book and adopted substantially the same plan in doing its business. The parts were not copyrighted and the original pictures were purchased in the open market. Held, there being no copyright, trade-mark or trade name involved, that a court of equity would not grant relief, as there can be no proprietary rights merely in a plan of doing business.
    Motion to dissolve injunction. Heard before Judge Oliver H. Horton.
    Injunction dissolved.
    For statement of facts see opinion.

      Partridge & Partridge, A. M. Pence and Newman & Northrup, for complainant.

      Morm, Kraus & Mayer, for defendant.
   Horton, J.:

In this case of the Werner Company v. W. B. Conkey Company, et al.—motion to dissolve injunction—counsel will of" course bear in mind that there is a very large record, that elaborate arguments continuing for several days were concluded last night, and that therefore the court has had no time to prepare a written opinion. Like most oral opinions it will probably be too lengthy. I think, however, I can express my views.

September 15th, 1893, the complainant commenced issuing in serial parts under the title “John L. Stoddard’s Portfolio of Photographs of Famous Cities, Scenes and Paintings,” the book owned by the defendant entitled “Glimpses of the World, or photographs prepared under the supervision of John L. Stoddard.” The book has, including the blanks, some 550 pages, and about 265 cuts, and is to be issued in sixteen parts.

October 28th, 1893, the defendant commenced issuing in serial parts under the title “Sights and Scenes of the World, a series of magnificent photographic views, embracing the world of nature and art,” the book which it then owned entitled “Sights and Scenes of the World,” which embraced some 700 pages, including the blanks, and some 345 cuts, and is to be issued in twenty parts.

This bill was filed November 27th. The mode of doing business adopted by complainant was to negotiate a contract with publishers of newspapers to furnish these serial parts and to furnish cuts and the matter for various advertisements in the newspapers. The “parts” are sold on what is known as the coupon system, by the newspapers. That is, a .certain number of coupons cut out of a newspaper will entitle the holder of those coupons, by paying four two-cent stamps, to one of these parts. The complainant claims to have originated this “plan” of .doing business. The defendant pursued substantially the same plan in doing its business. The plan has proved to be a great success. The sales by both parties are such as impress the court as being almost, incredible. Some six or seven millions of these parts have been sold by the two parties up to the time of the filing of the bill; and the defendant sold inside of four weeks between three and four million copies on contracts. I do not understand they are all delivered yet. This shows that the scheme or plan or device—this mode of doing business—whatever you see fit to call it—has been a great success. Complainant commenced about six weeks before the defendant did. Originally both of the books were copyrighted. There is no copyright upon the parts as such, as I understand it. It is, however, conceded in this case, that there is no copyright involved on either side, that there is no trade mark involved on either side, and no trade name involved.

The complainant claims protection in a court of equity of a property right consisting of good-will, plan of doing business, mode of advertising, selling a book in parts on the coupon system through the newspapers, etc., making up what it calls its whole “plan for doing business.” The similarity which it is claimed the defendant adopted aside from the-general plan of doing business, and as furnished me by one-of the counsel for complainant, is: 1, the color of the covers 2, the number and size of the pictures; 3, the style of the pictures; 4, the number of pictures in each part; 5, style of descriptive matter; 6, quality of paper; 7, size of the sheets; 8, mode of advertising (A, full page; B, three columns; C, two columns); 9, by the payment of postage stamps; 10, issuing the same in series.

The complainant did not, and I think does not, claim to-have originated the plan of procuring and printing in halftones, etc., photographs of the sizes here used, nor of printing on both sides of the paper, nor of the descriptive . words printed beneath the picture; nor is it claimed that the photographs from which these half-tone pictures are made were-taken by, or at the expense, or under the immediate direction of complainant. The originals were purchased in the open market. It is evident from the book which has been offered in evidence here—entitled " Scenes From Every Land, over 500' Photographic Views”—that none of these features which I have just mentioned are new—strictly so. The cuts in that book are printed on both sides of the paper, are similar in size, have similar descriptive matter, etc. Sehepp’s boob, which has also been offered in evidence, is in many respects very similar. It has a different size page or cut, but in many respects it is very similar.

In so far as complainant’s claim is not based upon original plans or matter it cannot receive the protection of a court of' equity. And if it be true, as argued by one or more of the counsel, that both of these parties are “pirates,” using the word in a legal sense, no relief can be granted. The court cannot interfere at the instance of one imitator for the sole benefit of another. Defendant has nowhere used the same-imprint complainant has used. ' The imprints upon the complainant’s works are upon the book, “Photo Publishing Company,” and upon the parts, “Published weekly by Educational Publishing Company, Chicago.” The imprint on defendant’s book is “George W. Ogilvie & Company, Publishers, 334 Dearborn Street, Chicago, Illinois,” and upon its parts, “W. B. Conkey, Publishers, Chicago.” Nowhere is the imprint of complainant upon any of the books or productions of defendant. There is no evidence or indication upon the complainant’s book or parts that it has any interest whatever in either the Photo Publishing Company or the Educational Publishing Company. There may be something in some of the “ads” about that, but I have not discovered it; nor is there any evidence as to whether the Educational Publishing Company or the Photo Publishing Company is incorporated, ■or is a firm. There is a statement in the bill, or it was stated in argument, I am unable at this moment to say which, that these are simply imprints that the complainant has put upon its publications.

There is no evidence in the case that any one has been actually deceived. That defendant adopted the plan and similarity of parts, similarity of advertisements and general plan of doing business, etc., can hardly be doubted. If defendant had a legal right so to do this injunction must be dissolved. This court cannot deal with moral rights, or obligations, or duties, nor can it deal with business morals or business ethics or business courtesies.

There can be no proprietary rights in a “plan of doing business” separate and distinct from any other matter. There cannot be any proprietary rights in simply a mode of doing business.

It is practically conceded on the part of complainant that its right to maintain this bill does not rest, and could not be maintained upon any one point of imitation. The right it . claims lies in the fact that the defendant hás adopted its plan as a whole by imitating the parts, so called, and the advertisement and the coupon plan, etc. I do not recall a ease in the books in which an injunction has been sustained where there was neither a trade mark nor a trade name (in either the name of the producer or the article produced, or place of production) ; where there was no evidence of any actual damage to complainant, or that any one has been deceived or defrauded by the alleged piracy. Without quoting it I will refer to 2 High on Injunctions, 3d ed., sec. 1086, as defining this principle substantially as I understand it to be in the books. A large number of authorities have been cited, and what little I can do in reviewing these authorities must be from memory, substantially so. Cases in 2 Abbott’s Practice, N. S., 459 (Matsell v. Flanagan), Enoch Morgan’s Sons Co. v. Schwachofer, 5 Abbott’s New Cases, 265, and Enoch Morgan’s Sons Co. v. Troxell, 89 N. Y. 292, are what are called the “Sapolio cases.” In the one case the word “Saphia” was adopted in place of the word “Sapolio.” These words resemble each other much more to the eye than they do to the ear. In the court below an injunction was sustained. One of these cases went to the supreme court of appeals of New York and was reversed. The same language substantially was used by the court in both of the Nisi Prins cases. The interference there was alleged to be in the size and form of package, that they were both wrapped in tin foil, that they both had an ultra-marine blue band around them with gold letters printed thereon, etc. They were substantially the same except the words “Sapolio” and “Saphia.” But it appears in those cases that the manufacturers, Enoch Morgan’s Sons, had been long using and had established this trade mark or trade name “Sapolio.”

The case of McLean v. Fleming, 96 U. S. 245, is in regard to the manufacture or rather the mode of putting up ‘‘dressing” as it is called by some of the books—Dr. McLean's pills. There the court held that there was a great similarity in the red seal on top of the boxes, same size and kind of boxes, and same band around the boxes, the name being similar, etc., and held that these constituted a trade mark which had been pirated. The cases of Estes v. Williams, 21 Fed. 189, and Estes v. Worthington, 31 Fed. 156, were what are known as the “Chatterbox cases.” Some years ago I had occasion to know about those eases and was employed in connection with bills filed in this district against parties for pirating that work, or pirating by productions called “Chatterbox.” Those cases, I think, if I recollect them correctly, turn almost entirely upon the word “Chatterbox” as a trade mark, as applied to juvenile productions. I have not read them for years. I think that is so—as a trade name or trade mark. In the Fairbank’s Scales case that is reported in 14 Blatchford, 337 (Fairbanks v. Jacobus, Fed. Cas. No. 4,608), there was a very marked similarity, absolute reproduction, or substantially so. Yet the court held that it was not an infringement. There is the case of Broham.v. Bustard, 1 Hemming & Miller, 447, which is known as the “Excelsior White Soft Soap case.” There the infringement or piracy was enjoined upon the basis that “Excelsior” was a trade mark or trade name; that the owner had established a right to it and could not be interfered with, and that the' defendant had pirated that name. Substantially the same is the “Birthday Text book” case, Mack v. Petter, L. R. 14 Eq. 431, 41 Law Journal Rep. Chancery 781.

Reference has been made to the Elgin Watch case which is reported in the Legal News of December 24th, 1892, page 142 (Elgin Nat. Watch Co. v. Eppenstein). I have some familiarity with that case. That opinion does not refer to all of the. facts of course. A number of watch cases were produced having the mark “Elgin Watch Case” on them, and a large number of affidavits showing where dealers and purchasers had been actually deceived.

There are two cases in the supreme court in this state, the first being Candee & Co. v. Deere & Co., 54 Ill. 439. That is what is known as the “Moline Plow ease.” Without attempting to review that case except from memory, the complainant claimed, I think, a trade mark or trade name in the words “Moline Plow.” Something like that. I may not be technically accurate, but plaintiffs there had not always used that name on the plows which they had sent out, and the court held substantially that a mere declaration that they claimed it as a trade mark or name was not sufficient. That is one feature of that case. The court also defined a trade mark, what it is, etc. I will not attempt to review these details, gentlemen. You are too familiar with them. The 116 Ill. 137, is the case of Ball v. Siegel. The difference there was in the name of the proprietor preceding the words “Health Preserving Corset,” the one being “Ball’s Health Preserving Corset,” and the other “Schilling’s Health Preserving Corset,” if I remember correctly. There it was held that it was not a piracy, they not being sufficiently similar. These are all the cases that it seems to me necessary to refer to. I refer to them for one thing, to show that in every instance a trade mark or trade name was the point in the case, and to show also that there must be such a similarity as to amount to actual deceit or evidence that there has been actual fraud upon the public.

This is a very peculiar business. Neither of the parties sell directly to what we may call the consumers. There is no evidence that any proprietor of any newspaper has been deceived. No one claims that. The contracts which have been-produced show that they specifically describe what the parties are buying, or what they are contracting to buy. These parts are not laid before a purchaser as books ordinarily are in a store where he might be deceived in picking up one for the other. They are not presented to the customer in that way at all. They are sold by a coupon system. Those coupons and the advertisements in regard to them do not in any way show this similarity that is urged here of color of cover, and' all these various details. It is difficult to see how the public can be mislead or deceived as to a thing they never see so far-as that deception might be based upon observation. They buy simply from the coupons, and they get what the coupons advertise are to be furnished. The main, or perhaps I should say the prominent thing in the complainant’s “ads” and title-page is the word “Stoddard,” or the name “John L. Stoddard.” Take the cover and title page of complainant’s book, and the name “John L. Stoddard” is only inferior in prominence and size to the words, “Glimpses of the World.” The-printed cover of the complainant’s parts, the first words on it,. except some of the smaller words as to the series, etc., are “John L. Stoddard’s Portfolio of Photographs.” On the inside of the back cover, substantially the most prominent letters are John L. Stoddard. His lectures and his ability are there •described. Not only that but the first cut in the book is Stoddard’s portrait, keeping the idea of “Stoddard” before the public. And it was undoubtedly a very taking thing, a very taking idea to keep it prominent. It is, perhaps, the most prominent thing in its “ads.”

Take the first full page “ad.” It commences, “A Trip Around the World with .John L. Stoddard.” That is kept prominént. There is a cut of him upon that full page “ad,” on a pedestal of honor I think, or something of that kind, and “Stoddard” is kept forward all the way through. It strikes me as a very sagacious mode of advertising, very shrewd. The defendants, however, do not use that cut, nor the name “Stoddard” anywhere in any of their advertisements I think except the one that was charged to have been published by and with the cognizance or approval of the defendant in the Minneapolis Journal. The evidence here shows that the moment that was brought to its attention, the defendant repudiated it by wire and ordered it stopped and by letter notified the publishers that they must not use any such advertisement This would negative the idea of an intention in that way to pirate this name.

There are some of the smaller features, perhaps, that I need not call attention to. The colors are undoubtedly substantially similar; whether it was intended to simulate or not, it has been done. But the title page of the parts is so very different that it does not seem to me that any book buyer would be deceived if he was looking at them. The defendant’s “parts” have a large telescope which is a prominent thing on the cover, with parties looking through it, or purporting to do so. In the advertisements the defendant undoubtedly uses the same sizes with new matter in each issue of the paper. But it did one thing that the complainant did not. It issued what it calls a “Supplement,” which is one of the full pages of one of the parts printed on both sides, showing the size and kind of cut, etc., at the top of which is printed in the one now before me, “Sights and Scenes of the World. Supplement to the Detroit Journal, Detroit, Michigan, November 18th, 1893.” All of them which have been shown to me are the same except the name of the paper and the date. That is a thing that is not adopted by the complainant.

In this kind of business neither of these parties can have any competitor in the same city or town under their mode of contracting. Now if this injunction is sustained, then no newspaper can issue or sell a similar publication in parts in any city or town where the complainant has made a contract. In other words, the complainant has a monopoly of the whole business. The plan of doing business, if subjected to the proprietary right and sustained as such, is a monopoly. It seems to me that complainant’s claim may be called a “trade right” as well as any other name that I think of. It is new, but I am not prepared to say but that such a right might, under certain circumstances, be sustained by a court of equity. I do not, however, see how it can be sustained in this case.

A trade mark is defined by our supreme court in the 54th Illinois in the case of Candee v. Deere, and I will only read the syllabus now (54 Ill. 439). “A trade mark is the name, symbol, figure, letter, or device adopted and used by a manufacturer or merchant in order to designate the goods he manufactures, or sells, and distinguish them from those manufactured or sold by another, to the” end that they may be known in the market as his, and thus enable him to secure such profits as result from a reputation for superior skill, industry and enterprise. It must be so clear and well defined as to give notice to others. It must be attached to the manufactured article,” etc.

Now a “trade right” must have some of the defining features, some of the rights or merits that underlie a trade mark or a trade name. In either case it must be adopted and used.

The plan of doing business being eliminated, there is nothing left to support this case that can be a matter of copyright or trade right. I see no cause but to conclude, as I have somewhat reluctantly, that this injunction must he dissolved.


author: Tuley, J.:

text:
      (Circuit Court of Cook County.)

    People ex rel. McCarroll, et al. vs. Henry J. Mohr, et al.
    (June 16, 1902.)
    1. Mandamus Not Granted to Compel Public Officers to Enforce the Laws. Certain residents of the village of Harlem presented a petition for a writ of mandamus, alleging that gambling, betting and gaming were going on within the limits of the village of Harlem, and particularly at the race track in that village, in violation of the laws of the state of Illinois and of the village ordinance of Harlem, and that the chief of police, the president of the village and the village board of trustees, though often notified Of the aforesaid violations of the laws and ordinances, refused to enforce said laws and ordinances, and suppress gambling, betting and gaming within the village limits; a peremptory writ of mandamus was prayed for against the president of the village of Harlem, the trustees and the chief of police “commanding them and each of them that they perform their respective and co-operative duties of their respective public village offices of the said village of Harlem and take such action and institute such proceedings as are necessary to enforce the police laws and ordinances of the said village of Harlem, and the laws of the state of Illinois against gambling, betting and gaming within the limits of the said village of Harlem.” Held, that mandamus was not the proper remedy, and that a writ of mandamus could not be issued for , such a purpose, because for the court to undertake to exercise the power of controlling matters of this nature would be to ignore the other powers of the government, the executive and the legislative, and to usurp and put into the court’s own hand all the powers given to all the officers.of government. It would be practically to substitute the court for all other officers and would result in judicial tyranny.
    2. Mandamus Will Not Issue to Compel Public Officials to do Their Duty Generally. Mandamus is not issued to command a public official generally to do his duty and to comply with the law of the land. His duty is fixed by the statute; the statute commands and it is his duty to obey the commands of the statute. Mandamus can only issue to command the performance or the doing of a specific act, not that the officer shall perform all his duties, or perform all the acts required by his office, but that he shall perform some specified act.
    3. Power and Duty cf Judge. It was never intended that a judge in a court of law should be the governing power. His duty is to construe the law, and administer it.
    Petition for a writ of mandamus. Circuit court of Cook county, Gen. No. 228,408. Heard upon demurrer to the petition.

      D. S. Wentworth, attorney for petitioner.

      Frank Little and Moran, Mayer é Meyer, for respondents.
   Tuley, J.:

It must be conceded that a petition for mandamus of the scope, breadth and general purpose of the one now presented is an anomaly in the jurisprudence of this city. No case has been cited where a like writ was ever asked for, and no precedent furnished where a writ so broad in its scope or anything near it was ever granted, the decision, then, must be in regard to the petition now before the court, upon the general principles governing courts and governing the issuing of a writ of mandamus; it cannot be placed, as stated, upon precedents or any decisions directly in point.

Certain residents of the village of Harlem, property owners and voters, some half dozen in number, present this petition, the substance of which is that gambling, betting and gaming are going on within the limits of the village of Harlem, and, particularly, at and about the race track in that village, and that the criminal laws of the state and the ordinances of the village are being openly and publicly violated; that these petitioners, or some other persons, I believe these petitioners, notified the chief of police of the village of Harlem, also the president of the village and village board of trustees, that open and public gambling has existed during an entire day at the Harlem race track within the limits of the city of Harlem, county of Cook and state of Illinois, contrary to, and in open defiance of, both the laws and ordinances of the aforesaid village of Harlem, and of the laws of the state of Illinois.

“Therefore, to this notorious breach and utter disregard of the aforesaid laws and ordinances within and in the vicinity of the said Harlem race tracks and also to your neglect of duty in regard to the enforcement of the said laws and ordinances against gambling, within the limits of the said village of Harlem, your attention is hereby called.”

The petition prays for what? “That a peremptory writ of mandamus issue” against certain persons. The bare reading of the prayer of the petition will not only show that it is unprecedented in its prayer, but that it goes to an extent, as far as the exercise of judicial power is concerned, hardly dreamed of by any one. “Tour petitioners pray that a peremptory writ of mandamus issue against Henry J. Mohr, president of the village of Harlem,” against the trustees (naming them), against the captain of police, “commanding them and each of them that they perform their respective and co-operative duties of their respective public village offices of the said village of Harlem and take such action and institute such proceedings as are necessary to enforce the police, laws and ordinances of the said village of Harlem, and the laws of the state of Illinois against gambling, betting and gaming within the limits of the said village of Harlem.”

What it asks for is already commanded by the law of the land, and their village ordinances.

I am not aware that mandamus ever was issued to command a public official generally to do his duty and to comply with the law of the land. His duty is fixed by the. statute; the statute commands and it is his duty to obey the commands of the statute.

The law regulating the writ of mandamtis is clear that it can only issue to command the performance or the doing of a specific act, not that the officer shall perform all his duties, or perform all the acts required by his office, but that he shall perform some specified act.

Suppose I issue this general order or mandamics that they perform their respective and their co-operative duties, or that they take such action as is necessary to enforce the police laws and ordinances against gambling. Suppose the complaint should be made after I issued that mandamus that it had been violated, for instance, that they did not co-operate to enforce the law against gambling; that the statute independent of their general duty as officials, specifically commands them to co-operate. How would I find that they had violated the mandamus of the court by failure to co-operate? Am I to exercise my judgment as to what each official should have done in the particular case by way of co-operating with the others ? One official, for instance, heard that there was gambling in such a place. If he failed to go and report that to the chief of police, traveling probably miles to make the report that he had heard such a thing, would I punish him for having failed to co-operate ?

The prayer is indefinite, the duly commanded is too general and too indefinite to be made the basis of an order of a court.

I am asked, too, to command them to institute such proceedings as are necessary to enforce the police laws and ordinances, the statutes of the state and the village ordinances; to institute such proceedings as are necessary. That does not command any specific act; it does not charge that they have neglected any specific act. Now, what would be a violation of that duty ? If they failed to make a complaint when they should make it, or suppose that a police officer is brought up for contempt on the ground that he failed to arrest a man when he should have arrested him for gambling; affidavit is made by one of these complainants that he saw two men betting on the race track, and that he asked a policeman, who was standing by, to arrest those men, and that the policemen are engaged in protecting these gamblers. In such a case the reply of that policeman will simply be, if he is cited to this court for contempt, “I did not see him betting. I told the man to go and make his complaint and get out a warrant.”

Is the court to determine in such a case that the policeman is in contempt of this court ?

A man is charged with violating the village ordinance; the police are charged with seeing that violation. Does that call for the court to enforce that village ordinance by way of contempt proceedings ? To issue a general mandamus of this kind would be simply to substitute the court for the president of the board of trustees, for the village board, in the exercise of its legislative power. The court would be required to substitute itself for the legislative power of the chief of police; they would all be represented, dominated and controlled by the judge who sat upon the bench.

It was never intended that a judge in a court of law should be the governing power. His duty is to construe the law, and administer it.

But here it is charged that these officials do not perform their duties and should be required to show why they do not; why they do not enforce the laws against gambling and the ordinances against gambling.

No specific case was cited. It is not at all analogous to the cases cited by counsel for this petitioner, for instance, the ease where the question was as to the validity of a special election, or as to the power of the court, rather, to enforce the giving of notice of a special election to be held by a corporation. There it was held in the general language of the court here that where an officer failed to do his duty, the court would make him do it. There is a case where a number of interests were involved, and a plain case, a specific duty omitted by the president or secretary to give notice of a special election affecting the stockholders’ interests. It is that kind of special case that the writ of mandamus is intended to protect.

Other cases are cited, one from Missouri, one in this state (People v. Mayor of Bloomington, 63 Ill. 207), commanding the removing of a fence from a highway, but none of them justify the issuing of a broad mandamus compelling an officer simply to do his duty.

If the court is to go into that kind of business, the court then would subordinate to the judicial power and render unnecessary all executive, police and administrative officials, and constitute the judge and his bailiff the “whole thing.”

■ If the principle of this petition is to be maintained, I could be called upon by any citizen upon proof that he had informed the mayor of the city that a certain house was used as an assignation house or house of prostitution, and that the police had failed to suppress it, I could be called upon by any citizen to give the aid of the court, its judicial power, to suppress it. I might be engaged the year around in suppressing such institutions. I might be called upon to close up saloons that violated the midnight ordinance, those that violated the Sunday laws, and my entire time would be taken up in substituting contempt of court for complaint, warrant, indictment, and trial by jury.

To issue the writ asked for and to attempt to enforce it would be, in the language of one of the cases cited, bruturn fulmen, it would bring the court into contempt for its utter failure and inability to enforce its own orders.

If I should issue a general order of this kind and then bring the president up for contempt, because he refused to revoke a license, his answer could well be that he did not believe the statement .that was made to him that they had violated the conditions of their license; that he had no knowledge that they had done so. Or he might answer, and answer possibly under his oath,—because it is a question of doubt, whether he had the legal power to revoke a license on the unsworn statement of a citizen that the conditions of the license had been broken.

He might also reply that the revocation of the license is in the discretion of the president of the board and the town board, and that they did not consider it best to do so—it being in their discretion.

The remedy is utterly impracticable. It is very much like issuing an injunction against the violation of a criminal statute. If yon can issue one against the violation of a specific statute, as has been done, why not issue an omnibus injunction against the violation of any criminal statute or any penal ■ordinance, and let the judge enforce the criminal laws by punishing by contempt ?

It is a much more speedy way, it is argued. True, it is more speedy, but when a judge undertakes to enforce the ■criminal law by the process of contempt, he invades individual rights, he interferes with the grand jury, with indictment, with the right of a party to be heard, and to have a trial by jury to determine his guilt or innocence.

This argument of the quicker remedy may be all right for effectiveness, but when we come to consider that when individual rights are invaded or personal property rights, there is practically an end to our free institutions.

If one of these complainants was carrying on a business which his neighbors, or some of them thought created a nuisance and this neighbor should apply to a court of law and ask for a mandamus, that he should not be allowed to carry on this business, or an injunction that he should not carry it on, and he would go into court, the reply would be, “If I am violating a criminal statute or if I am violating an ordinance, complain against me in the proper manner, as having violated the law, and let me answer. I am entitled to the right of trial by jury to see whether I am guilty or not guilty. I object to having my rights passed upon by a judge without a jury. ’ ’ He would think that his individual rights were infringed upon and that the judge who should undertake to stop his business, possibly tear down his establishment, without giving him all the rights allowed to him by law as to his person and property, with regard to trial by jury, was doing a thing-that was not justified by the law of the land.

We have a statute here in this state which provides that every officer holding any public office, whether state, county or municipal, who shall be guilty of any palpable omission of duty may be punished by fine not exceeding $10,000, and may be removed from his office of trust or employment.

If these parties have taken the position as alleged in this-petition and show that they are blind to violations of the law and stubbornly refuse to perform their duties, then it is the-duty of the citizens of the town of Harlem to make their complaint before the grand jury, and have them indicted for malfeasance in office. A few indictments or convictions of that kind would do a very great deal of good in this community.

It is a remedy provided by the statute; it is a remedy which preserves individual rights to these officers, their right. to a trial by jury, and it is a remedy which does not depend upon the whim or the caprice or the judgment of a single-person in the shape of a judge.

The only other remedy I know of is a remedy which citizens too often neglect, and that is electing honest men to office who will perform the duties of their office.

It is neither the duty of a court of law to punish the infraction of criminal laws, nor to elect men to office who will perform their duty. I know of no other remedy than the ones which I have suggested.

For the court to undertake to exercise the power of controlling matters of this nature would be to ignore the other powers of the government, the executive and the legislative, and to usurp, put into the court’s own hand all the powers given to all the officers of the government. It would be practically to substitute the court for all other officers, and would result in judicial tyranny. The demurrer must be sustained.

NOTES.

Mandamus to compel public officers to enforce the Sunday laws. The above case was relied upon by the defendants in their briefs, and the conclusions followed by the Illinois supreme court in the case of People ex rel. Bartlett v. Dunne, Mayor of Chicago, 219 Ill. 346 (Feb. 7, 1906), where it was held that mandamus will not lie against the mayor of a city to compel him to close tippling houses on Sunday or to enforce observance of the liquor laws generally by-forfeiture of licenses, etc., since it is not within the sphere and jurisdiction of a court to assume, ordinary governmental functions.

In State ex rel. v. Brewer, 39 Wash. 65, 80 Pac. 1001 (May 16, 1905), it was held that mandamus will not lie to compel the sheriff and the marshal to enforce a state Sunday closing law against saloons.

In State ex rel. Clark v. Murphy, 2 Ohio Circuit Decisions, 190, it was held that mandamus would not be issued to compel the superintendent of police to enforce state laws prohibiting saloons from selling liquors on Sunday.

In People v. Listman, 82 N. Y. Supp. 263, an application was denied for a writ of mandamus against the commissioner of public safety of the city of Syracuse, commanding him to enforce Sunday laws.

Similar principles are announced in Mitchell v. Boardman, 79 Me. 469; Alger v. Seaver, 138 Mass. 331. In this connection see also: State of Ohio ex rel. v. Police Board, 19 Wkly. Law Bull. 341 (Ohio); Goodell v. Woodbury, 71 N. H. 378, 52 Atl. 855; State of Oregon v. Livingston, Mayor of Portland, Ore., 67 L. R. A. 166; State of Nebraska ex rel. v. Cummings, 17 Neb. 311, 22 N. W. 545.