#### Laughman’s Appeal.

Where the supreme court reversed the court below, on the ground that a geographical term, as applied to coal, cannot be adopted as a trade-mark, that court will not grant a re-argument, or modify their decree because the master and the court below found as a fact that, in the use of the term by the defendants, there was the intention to deprive complainants of that which, by the expenditure of money, time and labor, had become a valuable property, and to cause the public to believe that the coal sold by the defendants was the coal mined by the complainants.

The decree imposing the costs in the court below upon the appellees will not be modified, in such case, so as to impose them upon the appellants.

Nov. 2, 1889.

Petition of appellees for re-argument or for a modification of decree, in No. 87, Jan. T., 1889, Laughman & Co. *v.*Piper & Co., reversing C. P. No. 3, Phila. Co.

The petition of W. H. Piper & Co., appellees, represented that the decree of the court below ordered :

“ 1. An injunction forbidding D. Laughman & Co. advertising and selling, or offering to sell, coal under the name of ‘ Sonman Coal.’

“ 2. That D. Laughman & Co. pay the costs.

*654“Your petitioners accept the ruling of this court as settling the law to be that ‘ Sonman ’ is a word which cannot be adopted by any one mining coal on the Sonman property, to the exclusion of other persons likewise mining on the property;, but it is with great deference submitted that, in considering that question, the court overlooked two facts which, if regarded, would, in our- opinion, have produced a different result:

“ 1. That the workings of the mine of D. Laughman&Co. are not on the Sonman tract; and

“ 2. That the master found that D. Laughman & Co. used the word ‘ Sonman ’ fraudulently, in order ‘ to cause the public to believe that the coal sold by the defendants was the coal mined by the complainants.’

“ The master expressly finds that ‘the actual workings of defendants are not upon the Sonman tract, but the chutes and some of their buildings are upon the same.’

“ As we understand the opinion of this court, portions of which are hereinafter quoted, it limits the right to the use of the word ‘ Sonman ’ to those mining on the Sonman tract.

“ The representation of appellants that their coal is Sonman is false, as they do not mine from the Sonman tract; and that they should be enjoined from so representing is shown by the language of the following cases which is quoted in the opinion in this case, namely: Clark *v.*Wallace, 13 Wal. 327 (the Lackawanna Case); Newman *v.*Alvord, 49 Barb. 588 (the Akron Cement Case); Glen-don Iron Co. *v.*Uhler, 75 Pa, 467.

“ It seems evident from the following quotations that the court overlooked the fact that appellants’ workings are not on the Sonman tract.

“ The court says :

“ ‘ We do not say that a geographical name may not, in some cases or under some circumstances, be applied as a trade name; but we do say that when the article to which it is applied is the product of the place named, the term cannot be used as 'a trade name by one to the exclusion of other owners of like products of *the same place.*This is the doctrine of all the cases.’

“ And this language is used in conclusion:

“ ‘ But “ Sonman ” is not the name of a private estate in this sense. It is the name of a large boundary of land containing a number of separate private estates owned by a number of different persons, all of whom are engaged in the same business of mining and shipping coal, and we hold that no one of these can assume and adopt, as a trade name, the name by which the place is generally known in the geography of the country *to the exclusion of others!*

“ The full finding of the master on the 2d point is as follows :

“ ‘ In conclusion, from a careful consideration of the whole testimony, it is impossible for the master to arrive at any other conclusion than, in the use of the word “ Sonman ” by the defendants, *655there was the intention to deprive the complainants of that which, by the expenditure of money, time, and labor, had become a valuable property, and to cause the public to believe that the coal sold by the defendants was the coal mined by the complainants.’

“ The master has found D. Laughman & Co. guilty of fraud in calling their coal ‘ Sonman coal.’

“ The master’s report was approved by the court below, and the president judge of the court below informs me that their action in entering a decree for complainants was based, in a great measure, upon this finding of the master; that the defendants used ‘ Sonman ’ to cause the public to believe that the coal sold by the defendants was the coal mined by the complainants.

“ As we understand the rule, when the master has found a fact which has been approved by the court below, this court will not set aside the finding of the master unless upon clear evidence of plain mistake: Sproull’s Ap., 71 Pa, 137; Burton’s Ap.,93 Pa. 214, 220.

“ A court of equity will protect the use of even a geographical name where it is made use of by another to perpetrate a fraud on the person first using it.

“ In Brooklyn White Lead Co. *v.*Masury, 25 Barb. 416, plaintiffs had for many years stamped their goods with the name of their company. Defendant had for many years stamped his goods ‘ Brooklyn White Lead, ’ but had begun to stamp them ‘ Brooklyn White Lead and Zinc Co.,’ and a suit was brought to restrain him. The court held that both had the right to use the word ‘ Brooklyn,’ but defendants were restrained from using the word ‘Company.’

“ In Boulois *v.*Peake, L. R. 13 Ch. Div. 513, note, plaintiff called his place ‘ The Carriage Bazaar.’ Defendant, in the same street, had called his place ‘ The Carriage Repository,’ but changed it to ‘ The New Carriage Bazaar.’ Suit was brought, and defendant claimed that ‘ bazaar ’ was a word in common use, and could not be exclusively claimed by plaintiff. But the vice-chancellor said that the principle in these cases was not that the plaintiff had any property in the particular title, but that he had a right to prevent others from personating his business by using any such description as would lead customers to suppose they were trading with the plaintiff. The defendant has failed to satisfy the court that he had any other motive in what he has done than that of seeking to gain an unfair advantage over the plaintiff. Why did he change the title of ‘ Carriage Repository ’ to ‘Carriage Bazaar?’

“ If the court refer to the circular of Meeker, Pledstrom & Co., in the appendix of appellee’s paper-book, and recall the fact that the appellants adopted the word ‘ Sonman ’ after they had been in business five years, the language of the court in this case will appear peculiarly applicable.

“ Hudson *v.*Osborne, 39 L. J., Chap. 79, and Fullwood *v.*Fullwood, Weekly Notes for 1873, England, announce the same doctrine.

*656Nov. 4, 1889.

“ The conduct of appellants is, therefore, clearly open to reprobation. Their action has not been honorable, and is such as would justify the court in imposing costs on them.

“ The costs in equity are ‘ in the sound discretion of the chancellor. They do not necessarily fall upon the losing party, as they do at law:’ Sharswood, J., in O’Hara *v.*Stack, 90 Pa. 492.

“In Jones *v.*Wadsworth, 11 Phila. 240, Allison, J., states the law on the subject thus: ‘The particular circumstances of the case and the conduct of the parties will be taken into account in awarding costs. Upon the principle that giving costs is regarded as a testimonial of good conduct, withholding such testimony from a party who has been guilty of any misconduct. Daniell’s Ch. Pr. 1537. This principle is applied to those who are shown to be particeps criminis, where there is improper concealment of fraud, and, even in the absence of fraud, where the conduct of the party has not been strictly honorable.’

“ The order of this court was : ‘ The decree of the court is reversed, and the bill is dismissed at the cost of the appellees.’ This order imposes the entire costs on the appellees, notwithstanding the unreversed finding that appellants have acted fraudulently.

“ Your petitioners, therefore, respectfully pray that the order of this court be modified, in this:

“ I. That the decree of the court below be affirmed on the two grounds mentioned in this petition.

“ II. Or, that the appellants be ordered to pay the costs in the court below.

“ III. Or, that the court order a re-argument on the two grounds mentioned in this petition.”

The answer of D. Laughman & Co. represented: •

“ That there is absolutely no evidence in this cause of any dishonorable conduct on the part of D. Laughman & Co. They never sold their coal as that of Wm. H. Piper & Co., as charged in petition, nor is there one word of evidence on the subject.

“ That the appellants’ collieries and openings are all upon the Sonman tract, besides fifty acres of coal surrounding these collieries.

“ But this point is not raised or alluded to by the bill. Piad the bill been so framed, it would have been dismissed, for appellees’ colliery, ‘ Sonman No. 2,’ from which by far the greater portion of his coal is mined, is about three miles beyond the extreme limit of the Sonman tract, hence the greater portion of appellees’ coal is not ‘ Sonman coal ’ at all.

“ Under these circumstances, the present effort to put costs upon appellants, because some of their workings have extended beyond the boundaries of the Sonman tract, seems hardly in good faith to this court.”

*Rudolph M.*Schick, for motion *; Joseph J.*Knox, contra.

Per Curiam,

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Re-argument refused.