holding that an individual has a "right to prevent the unauthorized, commercial appropriation of his name or likeness"Summary of this case from Dorsey v. Black Pearl Books, Inc.
Robert H. McCarter and Frank L. Dyer, for complainant. Charles E. Hill and Mr. Meier, for defendant.
Bill by Thomas A. Edison against the Edison Polyform Manufacturing Company to restrain defendant from the use of the name "Edison" as a part of its corporate title or in connection with its business or advertisements. Decree for complainant.
Robert H. McCarter and Frank L. Dyer, for complainant. Charles E. Hill and Mr. Meier, for defendant.
STEVENS, V. C. The complainant, who is an inventor of electrical instruments and processes, and enjoys in this regard a world-wide reputation, early in his career compounded a medicinal preparation intended to relieve neuralgic pains by external application. It was first made for the personal use of Mr. Edison and his assistants, and not for sale. In the year 1879 a Mr. Lewis and a Mr. Jacobs went to his laboratory in Menlo Park to examine his inventions. While there Mr. Edison happened to mention the fact that he had been a sufferer from facial neuralgia, and that he had made a preparation which he had called "Polyform" and which he had found to be a good pain killer. Lewis and Jacobs were so impressed with its merits that they asked him to sell it He finally agreed to sell for $5,000. The arrangement was that he would apply for a patent and execute an assignment. The patent does not appear to have been issued, but a written assignment of his right to it and to the preparation was made on September 2, 1879. On November 7, 1879, a company, called the "Menlo Park Manufacturing Company," in which Mr. Edison had no interest, was organized under the laws of Connecticut, and it proceeded to manufacture and sell the preparation. It did so for several years on a small scale, with little or no success, and finally failed. It was succeeded by a corporation, organized on September 3, 1880, under the laws of Maine, called the "Edison Polyform Company." This company, too, met with little success. It was, in turn, succeeded by a New York company, which did nothing. Finally a New Jersey company, the present defendant, was on May 23, 1893, formed by certain gentlemen living in Chicago. This corporation is now carrying on the business of making and selling Polyform in that city. The present suit was commenced October 9, 1903. There has been some delay in prosecuting it, caused, I suppose, by the death of complainant's solicitor. I do not think, however, that as the case stands there is any question of laches. The case must be decided on its merits.
The prayer of the bill is that the defendant company may be restrained from using the name "Edison" as a part of its corporate title or in connection with its business, or in connection with any advertisements circulated or published by it, and from holding out that complainant is the inventor or manufacturer or seller of the preparation sold by defendant What the defendant company is doing is to manufacture and sell a liquid preparation containing apparently all but one of the drugs (viz., morphine) mentioned in Mr. Edison's formula. On each bottle is a label, containing on the one side directions for use, and on the other a picture of Mr. Edison and the following words: "Edison's Polyform. I certify that this preparation is compounded according to the formula devised and used by myself. Thos. A. Edison." Mr. Edison testifies that he has never authorized the use of his picture and that he has never made or authorized this certificate.As to the present defendant, there is absolutely no pretense that he has. As to the predecessors of the defendant, there is evidence that the picture and certificate were used; but it would seem that, when Mr. Edison heard that they were, he objected. He says that he objected to any use whatever of his name or picture. Mr. Grant says, but does not show by competent proof, that he objected only to the representation of machinery around the head. I do not regard the matter as important, because, even if Mr. Edison had given a license to use a picture and certificate to the first vendees—persons whom he knew and in whom he may have reposed confidence—it would not by any means follow that others, unlicensed and whom he did not know, would possess the same privilege. In the original assignment of the formula no authority whatever to use either name or picture was conferred.
The regularity of the assignments to the successive corporations was attacked. They appear to be in some respects defective; but I do not apprehend that it makes any difference, so far as the present bill is concerned, whether the title of the defendant is or is not perfect The decision turns upon quite a different point.
The cases relating to the law of unfair trade have no application. They decide merely that a trader or manufacturer has no right to put off his goods as the goods of his competitor. The defendant does not put off his goods as being of Mr. Edison's manufacture. It asserts that it is itself the maker of them. What it does, however, falsely declare, is that it is Mr. Edison who is certifying that the preparation which the company is making and selling is made according to the Edison formula. It is, by its corporate name, by the certificate, and by the picture, holding out that Mr. Edison is connected with the enterprise and supervising its work. The question is whether Mr. Edison is without standing to complain because he is not a business competitor.
Clark v. Freeman, 11 Beav. 112, and Dockrell v. Douglas, 78 L. T. Rep. 848, may be thought to favor defendant's contention. In the first case Lord Langdale refused an injunction to prevent a druggist from selling a quack medicine which he called "Sir James Clark's Consumption Pills," under the false representation that it was prepared by or under the direction of the eminent physician, Sir James Clark. The decision was that, inasmuch as Sir James was not engaged in the business of selling pills, no injury was done to his property of which a court of equity could take cognizance. Dockrell v. Douglas differs from Clark v. Freeman in the circumstance that the druggist who was selling a drink, which he called "Jellico," under the representation that Dr. Dockrell had recommended it, was in point of fact telling the truth. The complaint was that he was not authorized to use the doctor's name in his advertisements; that the doctor had done nothing more than make the statement advertised in private conversation, without any idea that what he said would be thus utilized. Here, too, an injunction was refused. Whatever view may be taken of the soundness of the conclusion reached by Ridley, J., in Dockrell v. Douglas, it is certain that the decision in Sir James Clark's Case was wrong. In Maxwell v. Hogg, L. R. 2 Ch. 307, Lord Cairns said that it had always appeared to him that it might have been decided in the plaintiff's favor on the ground that he had a property in his own name, and Lord Selborne, in Re Rivere's Trade-Mark, 26 Ch. Div. 48, said that it had seldom been cited, but to be disapproved.
The leading case on the other side of this question is Routh v. Webster, 10 Beav. 561. There the provisional directors of a joint-stock company had, without plaintiff's authority, published a prospectus stating that he was a trustee. Lord Langdale granted an injunction on the ground that the company was representing the plaintiff as responsible in their speculations in a way calculated to involve him in all sorts of liabilities. In Dixon v. Holden, L. R. 7 Eq. 458, Malins, V. C., restrained the publication of a notice stating that plaintiff was a partner in a bankrupt firm. Of this case it was said by Lord Cairns in the subsequent case of Prudential Insurance Company v. Knott. L. R. 10 Ch. App. 142, that, while he did not agree to the reasoning of the Vice Chancellor, he did not mean to say that the decision itself was not capable of being maintained. Somewhat analogous to the last case is that line of cases which holds that, where a business (including the good will) is sold, the vendee may not use the vendor's name in such manner as to expose the vendor to liability. Thynne v. Shove, 45 Ch. Div. 577; Burchell v. Wilde,  1 Ch. 552.
The latest English case that I have been able to find on the very question here presented is Walter v. Ashton,  2 Ch. 282. There a dealer advertised a cycle which he called "the Times Cycle." Among other things in his advertisement were statements to the effect that the Times Cycle was the only cycle that could be obtained on the Times (meaning the London Times newspaper) system of payments. There was a manifest attempt to suggest in other ways, without expressly affirming, that the London Times was connected with the venture. An injunction was granted on the authority of Routh v. Webster, supra, on the ground that it appeared that there was a reasonable probability that that newspaper might be exposed to liability—that it might possibly be held responsible if it should not take steps to disconnect its name from the advertisements after they had been brought to its attention. The distinction made was between a liabilitythat was merely shadowy and one that carried with it a reasonable probability of litigation or pecuniary loss.
Passing such cases as Prince Albert v. Strange, 1 McN. & G. 25, 2 De G. & S. 652, Pollard v. Photographic Co., 40 Ch. Div. 345, and Dentacura Company v. N. J. State Dental Co., 57 N. J. Eq. 593, 41 Atl. 672, 58 N. J. Eq. 582, 43 Atl. 1098, which were decided upon the ground of implied contract or breach of confidence—grounds wanting in the present case—I come to the American cases on the subject. They are comparatively few in number. Two of them (Schuyler v. Curtis, 147 N. Y. 434, 42 N. E. 22, 31 L. R. A. 286, 49 Am. St. Rep. 671, and Atkinson v. Doherty, 121 Mich. 372, 80 N. W. 285, 46 L. R. A. 219, 80 Am. St. Rep. 507) are plainly inapplicable. Aside from the dicta, in the latter, the point really decided in both was that a man's reputation does not, on his death, descend or pass like an asset in such manner that the widow or a relative can sue to protect it from defamation.
In Roberson v. Rochester Folding Box Co., 171 N. Y. 538, 64 N. E. 442, 59 L. R. A. 478, 89 Am. St. Rep. 828, however, the suit was brought on behalf of a living person, a young lady under age, to restrain a flour company from putting her likeness upon prints advertising its flour. The allegation admitted by the demurrer was that the company was printing, selling, and circulating 25,000 of these likenesses, with the result of humiliating her and of causing mental distress and physical sickness. A bare majority of the Court of Appeals overruled the decision of the Appellate Division, and held that no cause of action was set forth in the complaint. This case resembles the case in hand, in that the defendant is here seeking to make an unauthorized use of Mr. Edison's likeness. It differs from it in the fact that no attempt was made to induce the public to believe that the person depicted was recommending the flour. This case cannot be sustained on principle, and has been disapproved by the Supreme Court of Georgia in Pavesich v. New England Life Insurance Company, 122 Ga. 190, 50 S. E. 68, 69 L. R. A. 101, 106 Am. St. Rep. 104, and by our own Court of Appeals in Vanderbilt v. Mitchell (not yet officially reported) 67 Atl. 97, 103. If a man's name be his own property, as no less an authority than the United States Supreme Court says it is (Brown Chemical Co. v. Meyer, 139 U. S. 542, 11 Sup. Ct. 625, 35 L. Ed. 247) it is difficult to understand why the peculiar cast of one's features is not also one's property, and why its pecuniary value, if it has one, does not belong to its owner, rather than to the person seeking to make an unauthorized use of it. If the mere exhibition of one's face to one's friends and to others on the public streets be a publication for all purposes, then that line of cases of which Pollard v. Photographic Company is an example was wrongly decided, for there could be no implied contract or confidence to keep that private which was al ready public property.
That the subject is attended with difficulty and that the line between what the court will restrain and what it will not restrain is hard to draw with absolute precision, is undoubted. This is well illustrated by the case of libel. If you call a business man a thief, or a physician a quack, in a printed publication, you undoubtedly do that which tends, and very directly tends, to diminish his earnings; and yet all the authorities, up to this time at least, agree that, because libel is a crime and is actionable at law, equity will not interfere. Prudential Insurance Company v. Knott, L. R. 10 Ch. 142, is an illustration. There the defendant had published a pamphlet in which he charged the plaintiff company with reckless management and with being in a state of insolvency. On bill filed alleging the representation to be untrue, and further alleging that the company was in fact prosperous and solvent, and that the continued publication of the pamphlet would damage the company's business and diminish its profits, an injunction was refused by the Vice Chancellor, and by the Lords Justices on appeal. The decision was put upon the ground that the pamphlet, if its statements were untrue, was libelous and actionable at law; and yet Lord Cairns said, in giving judgment, that there were publications which a court of equity would restrain, and that such publications would be restrained none the less because they happened also to be libelous. He expressly dissented, however, from Vice Chancellor Malins' view that reputation was property, and that it might, on that ground, be protected by injunction. It would seem that the right of the citizen to have his publication passed on by a jury is, to some extent at least, responsible for the rule. Liberty of speech and of the press are guarantied by the Constitution, and the question of their abuse is committed to that body.
There must be limits to the so-called right of privacy. It is certain that a man in public life may not claim the same immunity from publicity that a private citizen may. Corless v. Walker Co., 64 Fed. 280, 31 L. R. A. 283. And as far as my researches have extended I do not find that it has yet been decided that injury to property in some form is not an essential element to relief. It may, at times, have been a matter of doubt whether what was called "property" was really such, and whether the injury thereto, actual or apprehended, was not so "shadowy" as to be incapable of judicial cognizance; but still the criterion was always injury to property or to property rights. It is to be noted, however, that the insignificance of the right from a pecuniary standpoint does not always bar relief. Thus the report of an association of dentists (N. J. State Dental Soc. v. Dentacura Co., 57 N. J. Eq. 594, 41 Atl.672), the exhibition of one's photograph (Pollard v. Photographic Co., 40 Ch. Div. 345), and the publication of a private letter, which, as a literary production may be worthless (Folsom v. Marsh, 2 Story, 100, Fed. Cas. No. 4,901; Boosev v. Jeffreys, 6 Exch. 583), are accorded the same protection as the lectures of a professor (Abernethy v. Hutchinson, 3 L. T. Ch. 209), the catalogue of a prince's etchings (Prince Albert v. Strange, 1 McN. & G. 25), and the currency of a foreign state (Emperor of Austria v. Day, 3 De G. & J. 217). I think that under the above authorities the complainant in the present case is clearly entitled to an injunction to restrain the unauthorized use of his name, his picture, and his certificate. The possibility of injury because of their use without apparent objection on Mr. Edison's part is quite as great as it would have been in the Times Case had Mr. Walter stood by and allowed the advertisement of the bicycle with what seemed to be a Times indorsement.
I regard the case of Vanderbilt v. Mitchell, just decided by the court of Appeals, as conclusive. That court, as I have said, condemned Robertson v. Rochester Folding Box Co., and cited with approval Routh v. Webster and Walter v. Ashton. It appeared in Vanderbilt v. Mitchell that complainant's wife, having had born to her, two years after her marriage, a son who was not complainant's son, falsely stated to the attending physician that the complainant was the father of the child. This statement was credited by the physician, who inserted it in his birth certificate, sent by him to the bureau of vital statistics, where it was recorded. The record, by the terms of our statute, is prima facie evidence of the facts therein stated. The complainant prayed that this fraudulent record might be canceled, and that an injunction might issue restraining both mother and child from claiming thereunder the status, name, or property of a child lawfully begotten by complainant. The defense set up was that complainant did not show that any of his property rights had been affected, and such was the decision of Garrison, V. C; but on appeal it was held that the complainant was entitled to relief. It was pointed out by Dill, J., that, inasmuch as the statute made the recorded certificate prima facie evidence of the facts stated in it, it could be used as evidence in a suit brought against the complainant for necessaries furnished to the child. This of itself, brought the case well within the ruling in Routh v. Webster, supra. It was a false statement, which exposed the complainant to the risk of pecuniary liability; but the court went further. It appeared that the complainant was a beneficiary of a vested remainder in land under a trust which was being executed according to the laws of New York. Under the laws of that state a man cannot devise more than half of his estate to charity where he leaves (inter alios) a child. His right to make an absolute devise of his property was thus threatened, and the Impairment of this right was held to give him a standing in a court of equity to attack the certificate. Judge Dill, in concluding his illuminating opinion, said that the question whether the bill might not have been rested on the ground of an interference with personal, as contradistinguished from property, rights, was not decided, for the reason that the case "presented the property feature to an extent sufficient to satisfy even the rule adopted by the court below."
The Court of Appeals has thus emphatically declared that the term "property right" is not to be taken in any narrow sense, and that the tendency of equity in cases of this description should be to extend, rather than to restrict, the jurisdiction. Judge Dill says: "From time immemorial it has been the rule not to grant equitable relief where a party praying for it had an adequate remedy at law; but modern ideas of what are adequate remedies are changing and expanding, and it is gradually coming to be understood that a system of law which will not prevent the doing of a wrong, but only affords redress after the wrong is committed, is not a complete system, and is inadequate to the present needs of society." It is difficult to imagine a case in which preventive relief would be more appropriate than the present. In a perfectly unauthorized way a certificate falsely purporting to be made by Mr. Edison, and also false in fact, because the preparation is not compounded with all the ingredients of the formula, is put by a company bearing Edison's name upon every bottle of Polyform which it sells. That there may be no mistake as to who is intended, the certificate is accompanied with a likeness.
I think an injunction should be granted restraining the defendant company from holding out, either in the name of the company, or by certificate, or by pictorial representation, that Mr. Edison has any connection with or part in the complainant's business. I cannot divorce the company's name from the other parts of the representation. It is, as the evidence stands, part of the fraudulent contrivance. The abstract question whether a company can innocently use, as a part of its title, the name of a distinguished living character, is not before me for decision, and no opinion is expressed about it.