Burnham v. Acton.

for each offense. And generally the act provides that whoever shall violate any of the provisions of the act, or any order of the board, or any by-law or ordinance thereof, or shall obstruct or interfere with any person in the execution of any order of the board, or any order of the board of police, or willfully omit to obey any such order, shall be guilty of a misdemeanor, and be liable to be indicted and punished for such offense.

The general scope and purpose of the act is to protect the public life and health, and a very large portion of the powers conferred upon the board to carry out the objects of the law are of a mixed magisterial and police character; and although limited in their functions to a fractional part of the State, affect all persons who offend its provisions, or are brought within its purview. The board of health is comprised in part of the police commissioners, which commissioners, in their capacity of police officials, are directed to co-operate with and assist in enforcing obedience to the orders and ordinances of the board of health, and to cause the arrest of all offenders.

In these large and general powers, which are so liberally and properly given to the board of health, all the people of the State are interested, to the extent at least, that all the people are affected more or less by the sanitary condition of this vast and populous city. So all the people of the State are amenable to the provisions of the law, and may be subjected to its penalties.

In determining that the act under consideration is a penal statute, whose penalties reach all persons, whether inhabitants of the metropolitan district or otherwise, I have disposed of the only objection to its validity; and it follows, under the competency of the legislature to deprive this court of any of its jurisdiction, that the motion for a temporary injunction cannot be sustained.

The suggestion that this was a motion for a permanent or perpetual, and not for a temporary injunction, and, therefore, not within the letter of the statute, has no force. All injunctions are temporary which are pendente lite. Permanent injunctions can be obtained only by a judg

Caswell v. Davis.

ment of the court after a trial of the action (1 Barb. Ch. R., 613; Code, §§ 219-221).

The motion must be denied, with $10 costs.

CASWELL against DAVIS.

New York Common Pleas; Special Term, Dec., 1867. INJUNCTION.-RIGHT TO TRADEMARK.

A person who forms a new composition, and invents a new word to characterize it, is entitled to be protected in the exclusive use of such word as his trademark; and an injunction will issue to restrain others from employing it to designate a similar article.

The fact that the word thus claimed as a trade-mark, is compounded of two or more words whose meaning was previously well known, will not necessarily defeat the right to an injunction, if the compound word is new. The plaintiff invented a new medicine, and formed the compound word "Ferro-Phosphorated," to designate it; such combined word being new.— Held, that he was entitled to the exclusive use of this compound word, and to an injunction to restrain a rival dealer from using that word to designate a similar medicine.

Motion to dissolve an injunction.

The action was brought by Philip Caswell and others, to restrain defendant from infringing the plaintiffs' trademark. A preliminary injunction was granted, which defendant now moved to disssolve.

J. D. Billings, for the motion.

Paris G. Clark, opposed.

VAN VORST, J.-The claim of the plaintiffs in this action is, that the name affixed by them to the medicine which was first compounded by them in 1861, "Ferro-Phospho

Caswell v. Davis.

rated Elixir of Calisaya Bark," is the subject of a trademark, and that it is their property by priority of adoption, and cannot be appropriated by any other persons, to any article similar to the one manufactured by them.

The plaintiffs do not seek to enjoin the defendant from manufacturing, and selling his compound, or any other mixture composed of any elements, but they insist that he shall not sell it with a label bearing upon it, the name "Ferro-Phosphorated Elixir of Calisaya Bark."

The medicine which the plaintiffs claim to be so useful, and healthful in its application, as a remedial agent, and to be a source of great profit to them, was first prepared in their establishment with their own materials by themselves, and their clerk, Coffin, under their directions. The name by which it is designated was composed and applied to it first by them. Whatever Coffin did in the matter, whatever inventive skill he exhibited or experiments he performed in this preparation were under their advisement, as a clerk in their employment, and for the benefit of his principals.

The recipe for the composition, and the compound itself, were the property of the plaintiffs, as was the name invented and applied; if the name adopted can be the subject of property.

There was some evidence tending to show that similar preparations in some of the essential elements, had been made and were in use before the plaintiffs experimented on or produced their article, but it is not established that any mixture composed of all the ingredients used by plaintiffs, or having a name in all respects similar to that adopted and applied by plaintiffs, was in use or known to the public before the plaintiffs introduced their medicine.

The Elixir of Calisaya or Peruvian Bark was in use, and perhaps in solution with iron in some form. But this case shows that this composition, with its particular and specific substances, was first introduced by the plaintiffs under its peculiar name "Ferro-Phosphorated Elixir of Calisaya Bark," and that they first applied the specific words

Caswell v. Davis.

"Ferro - Phosphorated" in composition, to any medicine.

The question presented is, is this name, as combined and arranged by plaintiffs, the subject of a trade mark, and can they be protected in its exclusive use?

The case of Wolfe v. Goulard (18 How. Pr., 64), is a leading one on this particular branch of the law of trademarks.

Mr. Justice INGRAHAM, who delivered the opinion in that case, says "that when a person forms a new word to designate an article made by him, which has never been used before, he may obtain such a right to that name as to entitle him to the sole use of it, as against others who attempt to use it for a similar article. But such an exclusive right can never be successfully claimed of words in common use previously, as applicable to similar articles."

In the case of Burnett v. Phalon (9 Bosw., 192), Mr. Justice PIERREPONT says: "No one can appropriate a word in general use as his trademark, and restrain others from using that word." In considering the case before the court in the light of those authorities, two facts are to be regarded:

The article compounded by plaintiff as a whole was original with them. In the condition it was presented to the public, it was new-as it was a recent composition, it would, of necessity, require a characteristic name, if its elements were to be indicated in its appellation. Compounded of substances known principally to chemistry, which science has a nomenclature peculiar to itself, the words to distinguish it would be in a language familiar to chemists, and that limited class of persons who deal in drugs and chemicals.

It is true that the meaning of the words singly, which mark the compound in question, is known to a large class of persons other than those designated; but as far as the word "Ferro-Phosphorated" is concerned, it cannot be said that it is in common or general use, or that it is even understood by the great number of persons

Caswell v. Davis.

who take the remedy on the advice of a physician, as indicating the true nature and character of the mixture, unless the general advice and direction of the physician. may suggest it.

Such persons may, and doubtless do in most cases, understand that the medicine ordered contains Peruvian bark and iron; but as they read the label on the bottle, they do not learn from it what the article really is, although its elements are generally indicated by the words used.

They are not like words in general or common use, in any true sense, which carry to the mind of all classes, instantly the eye lights on them, the true character of the contents of the package upon which they are placed. All understand what the words "Tobacco," "Gin," "Brandy," "Cotton Yarn," mean; but the words "FerroPhosphorated Elixir of Calisaya Bark," would in general, be unintelligible to most persons.

I am not certain that the distinction I have taken in respect to the particular words in this case, provided the words be strictly and in chemical language correct, removes it from the principles so well considered and clearly established in the case of Wolf v. Goulard, or Burnet v. Phalon.

But the views above expressed, it appears to me, apply with great force to the words "Ferro-Phosphorated." There is nothing to show that this compound word was ever used before it was so applied by plaintiffs, to indicate any preparation-and I have been referred to no book in any language in which it can be found. I have resorted to several chemical works and medical dictionaries, and find no such compound word. "Ferrum," of which "Ferro" is a form, is a common word in the Latin; and "Phosphorated" is recognized by Webster as an English word. But I am of the opinion that no such word as "Ferro" and "Phosphorated," in combination, is to be found in any language, except the forming of it by plaintiffs has had the effect to introduce it; and if so, plaintiffs are entitled to the credit and use of it. The combined word, I am sat