#### Ernest M. Burrow, Appellant, *v.*Theodore Marceau, Respondent. Impleaded with Otto Sarony Company, Photographers, Defendant.

First Department,

March 6, 1908.

Trade mark —successive assignments of trade name by executor — unfair competition — use of trade name enjoined.

One Otto Sarony, being executor of Napoleon Sarony, who, prior to his death had conducted a widely known photographic establishment under the trade mark “Sarony,” sold said business together with the trade mark and good will, the same passing to the plaintiff by mesne assignments. Thereafter said executor, in consideration of a promise by the defendant Marceau to issue to him one *666share of stock of a'corporation to be "organized by the defendant, covenanted to allow him to bestow upon such corporation all or any part of his said name “ Sarony ” and thereupon the corporation was organized" under the name “ Otto Sarony Company, Photographers,”'and engaged'in the business of making photographic portraits in the immediate vicinity-.of the place where the plaintiff’s business was conducted.

In an action to enjoin the defendant and' the corporation organized by him from using the name “Sarony,” the complaint in addition to the facts aforesaid alleged that the. use of said name was unlawful and calculated to deceive the public, etc. On demurrer to the complaint,

*Held,*that a cause of action based upon unfair competition in business was stated;

That as the defendant Marceau had organized the corporation and owned substantially all of its capital stock and was actually carrying on the business as president, he was properly joined with the corporation as a party defendant.

Appeal by the plaintiff, Ernest M. Burrow, from an interlocutory judgment of ■ the Supreme Court in favor of the defendant Marceau, entered in -the office of the clerk of the county of Mew York on the 25th day of October, 1907, upon the decision of the court,, rendered after a ,trial at the Mew York Special Term, sustain-' ing the said defendant’s demurrer to the complaint.

*Morlce Allen,*for the appellant.

*Maurice Goodman,*for the respondent.

Ingraham, J.:

The complaint alleges that one Mapoleon Sarony prior to the 9th. of Movember, 1896, was engaged in the-business under the trade name of “ Sarony ” of taking, making and vending photographic portraits for compensation, and that his work became widely and most favorably, known in the community and enjoyed the highest artistic reputation; that in consequence thereof the said Sarony had established an extensive and highly profitable' patronage and business from the public at large of very great commercial value, and the trade name “ Sarony ” had become known fai;. and wide as the symbol of photographic portraiture by said Mapoleon Sarony, and was widely and" extensively advertised ; that on the 9th day of Movember, 1896, the said Sarony died ; that his last will and testament was admitted to probate by the surrogate and letters testamentary were issued to his executor, Otto Sarony; that the said Otto Sarony, *667as executor of the last will and testament of Napoleon Sarony, on or about the 7th day of October, 1898, for a valuable consideration, sold to one John F. Burrow this photographic business established by the said Napoleon Sarony, together with the trade mark “ Sarony ” and the good will of said photographic business, and that said John F. Burrow duly filed the certificate required by law* to enable him to lawfully transact said business under said trade name of “ Sarony,” and thereafter he continued said business under that name until he assigned his right to the plaintiff, who, since the assignment thereof, has duly continued the same business under the same name; that subsequently, Otto Sarony, the executor of Napoleon Sarony, and who as executor-had transferred this trade mark and business and the fight to use the name *“*Sarony ” to the plaintiff’s assignor, entered into an agreement with the defendant Marceau, who was then engaged in the business of taking, making and vending photographic portraits in the city of New York, whereby said Otto Sarony, in consideration of the promise by the said- Marcean to issue to him one share of stock of a corporation to be organized by said Marceau for the carrying on- of the business of photographic portraiture for his own benefit, covenanted to allow the defendant Marceau to bestow upon such corporation all or any part of his said name “ Sarony,” and that thereupon the said Marcean organized the defendant corporation, the “ Otto Sarony Company, Photographers,” under the laws of the State of New York, and issued to said Otto Sarony said one share of stock of the corporation, and to himself, the said Theodore Marceau, all or substantially all of the balance of stock of the said corporation; that-subsequently the defendant Marceau caused the defendant corporation to engage in the business of taking and making photographic portraits in the immediate vicinity of the plaintiff’s business under the name of “ Otto Sarony Company, Photographers; ” that such use by the defendant corporation of the word “ Sarony ” in connection with the title and business of: the said defendant corporation is unlawful and calculated to deceive the public and especially persons desiring photographic portraiture, and actually has misled and does and will, if persisted in, continue to mislead the public and large numbers of *668persons to patronize the defendant company in the belief that they are patronizing the successor to the business of Napoleon Sarony. And the rélief demanded is that the defendant be enjoined and ' restrained from in any way making use of the word “ Sarony,” and • taking, making or vending photographic portraits under any name with the word “ Sarony ” therein included, and from carrying on or doing any photographic business under the name “ Sarony.”

1 think this complaint sets forth a good cause of action, based as' it is upon unfair competition in business. There can be no question, under these facts alleged, but that Napoleon Sarony when lie died had established a business to which there was^a good will attached, which included the use of the name *“*Sarony,” and which became an asset of his estate. His executor, Otto Sarony, transferred that to the plaintiff’s assignor, and the estate received, it must be assumed, the value of the use of the name “ Sarony ” as a trade mark. The plaintiff, therefore, acquired the property right to use the name *“*Sarony ” as a part of his business. It was a right attached to his business which he had purchased, and lie is entitled to be protected in the enjoyment of that property as against any one using'the name “ Sarony ” without authority. The defendant Marceau then procured from the executor of' Napoleon Sarony an agreement, authorizing him to use the name “ Sarony ” in the business of making photographs. The object of this transaction is perfectly apparent. It was not an attempt of a man to transact business in his own name, or to transfer to another the good will of an ' established business. Otto Sarony did not intend to go into business using his own name, and defendant Marceau was in the photographic business. Marceau, not satisfied with doing business under ' his own name,/wished to conduct it under the name of “ Sarony,” and the only object lie could have was thus to secure some Of the business of the plaintiff. The executor of Napoleon Sarony, having-got all he could from the plaintiff’s assignor for the use of the name, seemed to have no objection to selling again to another the same right, which' would necessarily seriously impair or tend to destroy what he had sold as executor to the plaintiff’s assignor; and the desire of the defendant Marceau to acquire the right to use the name could only be for the purpose of getting away from the plaintiff or his assignor the benefit which had accrued to them by reason *669of the purchase of the right to use the name of “ Sarony ” as takér or maker of photographic portraits. “ Sarony ” meant nothing except so far as'it represented the reputation or skill and artistic merit of the business transacted under that name. It was a fraud if the defendant represented that this company was either the successor of the business and methods established by Napoleon Sarony, or that any member of the Sarony family had any connection with it. It was a fraud upon the plaintiff, in that by the use of the name *“*Sarony ” it indicated that the Sarony who had established the business known to the public as Sarony’s photographic establishment was connected with it; and it was a fraud for Otto Sarony to make such an agreement with the defendant Marceau when, he had transferred the right to use the name of Sarony with the business established by Napoleon Sarony and had received consideration therefor. As I understand if, there is no hard and fast rule by which it can be determined when the court will interfere by injunction to prevent what is practically a fraud upon a person engaged in business by the unfair methods of competition. Each case must depend upon its own facts, but where it is clearly established that an attempt is being made by one person to get the business of another by any means that involves fraud or deceit, a court of equity will protect the honest trader and restrain a dishonest one from carrying out his scheme. I think the defendant Marceau is a proper party defendant. Ele made the contract with Otto Sarony. He organized the company and received substantially all its capital stock, and now as president of the company he is actually carrying on the business. It is proper to enjoin him from acting under the agreement that he obtained from Otto Sarony, as well as the company which is also acting under that contract.

I think, therefore, the judgment should be reversed, with costs, the demurrer overruled, with costs, with leave to the defendant to withdraw the demurrer and to answer.

Patterson, P. J., McLaughlin, Clarke and Scott, JJ., ' concurred.

Judgment reversed, with costs, and demurrer overruled, with costs, with leave to defendant to withdraw demurrer and to answer on payment of costs.

*

 See Penal Code, § 363b, added by Laws of I960, chap. 216.— [Rep,