BOICE et al.
STEVENSON et al
Appeal from Superior Court, Santa Cruz County; C. C. Faires, Judge.
Modified, and affirmed as modified.
Knapp, Boyle, Bilby & Thompson, of Tucson, for appellants.
Clifford R. McFall, of Tucson, and Fennemore, Craig, Allen & Bledsoe, of Phoenix, for appellees.
Stanford, Chief Justice. LaPrade and Udall, JJ., concur.
Stanford, Chief Justice.
[66 Ariz. 309] The appellees herein were the plaintiffs in the trial court and the appellants were the defendants, and for convenience we shall herein style them as such. Plaintiffs brought their action asking among other things that defendants be enjoined and restrained from using the name "Motor Supply of Nogales." The Motor Supply Company first opened business as a corporation in Phoenix in 1910. In 1913 plaintiffs H. [66 Ariz. 310] L. Stevenson, and Sylvia A. Craig, both being residents of Phoenix, Arizona, opened a partnership business in Tucson known as Motor Supply Company and conducted, expanded, and advertised their said business throughout the southern counties of Pima, Graham, Cochise and the County of Santa Cruz (the said counties being in the State of Arizona), and built up a valuable good will under the name of Motor Supply Company, and acquired and retained many hundreds of customers within and without the State of Arizona, many of whom are located in the County of Santa Cruz and in the City of Nogales, Nogales being located in and being the county seat of Santa Cruz County, Arizona.
Sylvia A. Craig died on June 8, 1938, and thereafter Robert A. Craig, her husband, succeeded to her interest in the business and the business was continued under the firm name of Motor Supply Company, a partnership. January 1, 1940, Robert A. Craig sold his one-half interest to plaintiff H. L. Stevenson. At this time H. L. Stevenson and Naomi Stevenson were husband and wife and as co-partners have conducted said business as Motor Supply Company within the territory described and with branch stores in Cochise and Graham counties in Arizona, having an agent to travel the area heretofore described. H. L. Stevenson testified that he had been connected with the Motor Supply Company since 1911; that the Motor Supply Company was opened in Phoenix in 1910, and is a corporation, and when the business was opened in 1913 the respective parties of the Motor Supply Company located at Tucson were the owners of the controlling stock of the corporation, and the name applied to the Tucson business was with the consent of the corporation; that H. L. Stevenson owned at the time of trial three-fourths of the Motor Supply Company corporation. Since July, 1945, plaintiffs have operated a branch store at Nogales, Arizona, under the name of Motor Supply Company. Before that time they sold their supplies by a traveling salesman.
Since 1934, defendant Charles G. Boice has been engaged in the automobile accessory business in the City of Nogales, Santa Cruz County, Arizona, located on the border of Mexico, and was a regular customer of plaintiffs, and knew that plaintiffs were serving a trade in Nogales and its County of Santa Cruz and northern Mexico. But in 1944, Boice extended his business and opened in a new location in Nogales under the name of Motor Supply of Nogales. Defendant J. H. Barbee was the manager and thereafter became a partner.
Defendants moved to dismiss the complaint filed by plaintiffs in the trial court upon the ground that "motor supply" were descriptive words in which the plaintiffs could not claim exclusive rights.
"The defendants filed an answer denying that plaintiffs had 'invented' the name 'motor
supply', and in substance denying generally [66 Ariz. 311] the allegations of the complaint, with the exception of such matters as were not in issue.
"A trial of the issues was had before the court sitting without a jury, and the court, on July 8, 1946, rendered an opinion that the plaintiffs were entitled to the exclusive use of the term 'Motor Supply' and entered its judgment on July 13, 1946, commanding the defendants to perpetually discontinue the use of the name 'Motor Supply of Nogales,' or any name containing the words 'motor supply'."
Defendants submit but two assignments of error and one proposition of law as follows:
"Assignments of Error
"1. The Court erred in overruling plaintiff's Motion to strike the Amended Complaint for the reason that the Amended Complaint claimed that plaintiffs had established a right to the exclusive use of the term 'Motor Supply'. There is no jurisdiction in law or in equity for a court to wholly enjoin the use of such terms since words commonly descriptive of a product or of a business cannot be exclusively appropriated by anyone.
"2. The Court erred in entering a judgment awarding to the plaintiffs the exclusive use of the words 'Motor Supply' inasmuch as the evidence showed that the term was properly and commonly descriptive of the business done by the defendants and, therefore, the Court was without jurisdiction to enter any judgment awarding the exclusive use of such terms to the plaintiff."
"Proposition of Law
"A court of equity is wholly without jurisdiction to entertain a complaint or to enter a decree praying for or awarding to a merchant the exclusive use of terms which are in common use in the English language, and which are properly and correctly descriptive of the business done by all persons in a field competitive to plaintiffs' business."
To arrive at the point in issue, as claimed by appellants, they quote from the original leading case of Reddaway v. Banham, 1896 A.C. 199-222, 25 English Ruling Cases 193. The facts of that case in brief are that appellant had for many years manufactured a machine belting called "camel hair belting," and had established a trade over a period of twenty years in the selling of the belting in England, its colonies, and in foreign countries, The belting consisted of camel hair. A rival manufacturer began to manufacture and sell in the same field a belting designated as "camel hair belting." In the original trial in England, judgment was given to the appellant and an injunction was granted restraining defendants from the use of the words "camel hair." The English Court of Appeal reversed the trial court and the House of Lords on appeal reversed the English Court of Appeal. We now quote from various members of the House of Lords:
[66 Ariz. 312] Lord Herschell: "What right, it was asked, can an individual have to restrain another from using a common English word because he has chosen to employ it as his trademark? I answer he has no such right; but he has a right to insist that it shall not be used without explanation or qualification, if such a use would be an instrument of fraud. It is not proposed, in the present case to prohibit the use of the words 'Camel Hair' altogether. In the case just referred to, the counsel for the plaintiff at the conclusion of the judgment, asked whether the substance of their Lordships' judgment was not that the defendants were not to use the name Thorley in connection with their cattle food. James, L. J., replied, 'We cannot prohibit them using the name if they use it in a way not calculated to mislead the public'. I say the same about the use of the words 'camel hair' in the present case."
Lord Macnaghten: "I am of the opinion that there is no such thing as a monopoly, or a property in the nature of a copyright, or in the nature of a patent, in the use of any name. Whatever name is used to designate goods, anybody may use that name to designate goods, always subject to this, that he must not, as I said, make directly, or through the medium of another person, ...