Supreme Court of Canada
New York Herald Co. v. Ottawa Citizen Co., (1908) 41 S.C.R. 229
Date: 1909-02-12
The New York Herald Company (Plaintiffs) Appellants;
and
The Ottawa Citizen Company (Defendants) Respondents.
and
In Re Petition New York Herald
and
In Re Petition Canada Newspaper Syndicate.
1908: November 18, 19; 1909: February 12.
Present: Sir Charles Fitzpatrick C.J. and Davies, Idington, Maclennan and Duff JJ.
ON APPEAL FROM THE EXCHEQUER COURT OF CANADA.
Trade mark—"Buster Brown"—Validity of registration.
The term "Buster Brown" or "Buster Brown and Tige" for use as the title to a comic section of a newspaper cannot be registered as a trade mark.
The judgment appealed from (12 Ex. C.R. 1) was affirmed, Davies and Duff JJ. dissenting;
APPEAL from the judgment of the Exchequer Court of Canada dismissing the plaintiffs' action and petition and allowing the petition of the Canada Newspaper Syndicate.
The only question for decision on this appeal was whether or not the registration by the plaintiffs of the terms "Bustër Brown" and "Buster Brown and Tige" as trade marks, the object being to use them as titles to a comic section of their newspaper entitled
[Page 230]
them to the exclusive use of such terms for that purpose and enabled them to prevent the respondents from issuing a comic section with the same titles. The Exchequer Court judge did not decide the question whether or not these terms could be registered, but dismissed the action on the ground that as the plaintiffs had issued these sections so entitled for several years without seeking for protection, they had become public property which any person could use. He also granted the petition of the Canada Newspaper Syndicate to have the said terms expunged from the registry of trade marks and refused that of the plaintiffs who asked to have also expunged the same or similar terms registered by the syndicate.
R. V. Sinclair K.C. and D. H. McLean for the appellants.
Ewart K.C. for the respondents
R. V. Sinclair K.C. and D. H. McLean for the appellants. The appellants acquired a property in the term "Buster Brown" by invention and user, and having registered it as a trade mark can protect their title in the courts.
The title of a newspaper can be registered as a trade mark. Borthwick v. Evening Post. And in the name of a periodical. Gannert v. Rupert.
The comic sections of the New York Herald are vendible and have commercial value. Canada Pub. Co. v. Gage; Carey, v. Goss.
The appellant's trade mark has been upheld by the United States courts. New York Herald Co. v. The Star Co..
Ewart K.C. for the respondents referred to Rose v. McLean Publishing Co., and The Joseph Dixon
[Page 231]
Crucible Co. v. Guggenheim, in support of his contention that the appellant could not acquire property; in such a term as "Buster Brown."
The Chief Justice.—I concur in the opinion of Mr. Justice Idington.
Davies J. (dissenting).—I concur in the judgment of Mr. Justice Duff.
Idington J.—The appellant, in business in New York, published for some years an illustrated comic section of a newspaper of which the feature is the continued story of "Buster Brown," or "Buster Brown and Tige."
The originator of the idea would seem to have been some other publisher who had dropped the continuation of his publication before it was taken up in this copied and slightly modified form.
The appellant used weekly issues for its own newspapers periodically as the story developed and sold thousands of copies to other newspaper publishers to issue as sections of their newspapers.
In these latter cases the heading would be made to conform to the purposes of the respective publishers of these other newspapers by making the section wear the name and appear as part of such other newspaper.
The respondent was one of these other publishers for a time, but, being able to get some one else to continue the story, with inventions or imaginary ideas or want of ideas, independently in any case of what the appellant continued to publish, began and continued for some time the publication, as a section of its newspaper,
[Page 232]
of these new and independent relations of "Buster Brown's" doings and his name and supposed figure.
The appellant's managers conceived the happy thought of making trade marks of the name "Buster Brown" and "Buster Brown and Tige," and registering them under the provisions of "The Trade Mark and Design Act," and, having managed to get them registered, proceeded to the Exchequer Court to have justice done in the premises.
They failed. I will not say justice failed, but the suit failed.
Having got leave, because of the important issues raised, it appealed here.
The case of trade marks and their recognition by law as property preceded legislation requiring or facilitating their registration.
Our Canadian legislation in that regard preceded that in England by some fifteen years.
An Act, 23 Vict. ch. 27, of the old Province of Canada, which related to trade marks, was punitive in its character, and, next year, repealed by 24 Vict. ch. 21, of the same province, which provided for registration of trade marks as therein defined.
That definition has been in substance, and almost in the same words, adhered to throughout the many changes that have taken place, first, in extending the law to the whole Dominion, and, next, in modifying and extending the means for registration and the effect thereof, as well as providing for the registration and protection of industrial designs.
The decision of this appeal must turn upon the meaning of the definition given by section 5 of the Act, as it now stands in chapter 71, section 5, of the
[Page 233]
Revised Statutes of Canada (1906), which is as follows:—
5. All marks, names, labels, brands, packages or other business devices, which are adopted for use by any person in his trade, business, occupation or calling, for the purpose of distinguishing any manufacture, product or article of any description manufactured, produced, compounded, packed or offered for sale by him, applied in any manner whatever either to such manufacture, product or article, or to any package, parcel, case, box, or other vessel or receptacle of any description whatsoever containing the same, shall, for the purposes of this Act, be considered and known as trade marks.
I do not think the alleged trade marks in question here fall within this definition of what may be registered as trade marks. It does not appear to me either that either of them is or ever was intended as a device to distinguish anything "manufactured, produced, compounded, packed or offered for sale" as described in this section. The plain, ordinary meaning of the words does not warrant putting such an interpretation on them.
The word "produced" is the only one in the definition that can at all be said to be capable of such extended meaning as is sought to be placed upon the section and that would be a straining of meaning of the word when we have regard to the setting in which Ave find it.
Moreover, when we look at the general scope and purpose of the Act, it seems quite impossible to suppose it was ever intended to protect property in a distinguishing mark such as this when applied to the kind of goods appellant vends when, as it claims, labelled therewith.
The production which the appellant sells is not a kind of paper, or of paper coloured in any particular way or covered with a peculiar kind of ink or set forms or figures. It is the nonsense that is produced
[Page 234]
by the brain of the man writing for the diversion of the idle that in truth is sold.
It may be that kind of brain product that copy- right might amongst other things be extended to or that copyright might cover.
I am not, however, going to wander into the field of whether or not a trade mark can exist in such a name or names, or in the name of or title given any literary production of any kind, for I am quite sure it never was intended this section should apply to such a thing.
If it did, all that would be needed for a publisher of copyrighted, works, when the copyright was about to expire, in order practically to add twenty-five years to the term of copyright, would be to register the title and defy any one to use it, though then at liberty to sell the thing itself without a title.
I think the distinction between copyright and trade mark registration was intended by the legislature to be, and that it must be, observed in applying this Act.
Our statutes and the English Acts are so different that, except for the fundamental purpose of determining whether any device used may, in its manner of use, be, or not be a subject of such property as exists in law in a trade mark, the English cases are not very helpful.
To appreciate "the essentials necessary to constitute a trade mark," required by sub-section (e) of section 11 of our Act, many of these cases may be valuable:
But, whilst these essentials are necessary conditions to registration, I do not agree that the converse is true and that the Act extends to everything that
[Page 235]
might by any semblance seem to have such qualities as a trade mark.
When the cases in England turn as this does on the meaning of the Act providing for registration, the result may mislead unless this difference be observed.
I observe in the case of Carey v. Goss the title to the name of a periodical was registered as a trade mark and the question tried out as to the infringement of registration and treated as if quite regular and, indeed, necessary to maintain the action.
No question seems to have been raised in regard to the point of whether or not it was properly registered.
Here, however, the right is expressly challenged on the ground I proceed upon.
I see also that the right to the exclusive use of the name of a periodical was tried in the case of Rose v. McLean Publishing Co., without any reference to the Act in question or of registration. Possibly there had been registration and that fact was known to the parties.
But, seeing that the Act requires in cases where its protection can be invoked that there must be registration, and so much arguable material in that connection passed unnoticed, I would have expected to find reference to the matter unless all concerned had taken the view that I have, and that such a right of property as title to a publication did not fall within the Act.
The rights of the parties were decided on other grounds entirely.
I think the appeal must be dismissed with costs.
Maclennan J.—I agree in the opinion stated by Mr. Justice Idington.
[Page 236]
Duff J. (dissenting).—In this case the facts have been fully stated in the judgment of the learned trial judge and it will be unnecessary to restate them.
Two questions arise; 1st. Can a combination of words be lawfully made a trade mark as applied to a series of comic sections of newspapers periodically published? 2ndly. Assuming that question to be answered in the affirmative, could the particular combination of words which the appellants have registered as their trade mark lawfully be registered as such? The first of these questions depends upon the construction of section 5 of the "Trade Mark and Designs Act," and with great respect to those who take, a contrary view I really can have no doubt that such a part of a newspaper is a "product" "produced" by the publisher of the newspaper and therefore within the very words of the section. There is nothing in the statute or in the subject matter with which the statute deals seeming to require us to give to these words any signification less narrow than they import in their ordinary use; and we should not, of course, be justified in restricting their operation on any vague surmise respecting the policy of the Act. The argument addressed to us indeed was to the effect that the title of a periodical publication is in its nature incapable of becoming the subject of a trade mark right properly so called. That is a contention which I think is opposed to a stream of judicial opinion commencing at least as early as the year 1858 and embracing the views of judges of great experience in the subject and of very weighty authority. In Clement v. Maddick, Vice-Chancellor Stuart gave relief in an application to restrain the infringement of a trade mark alleged to exist in
[Page 237]
respect of the title of a newspaper known as "Bell's Life in London." The applicant's right was in that: case treated as a right resting on trade mark pure and simple.
This is an application in support of the right to property. * * * Lord Cottenham in the case of Millington v. Fox has declared that where a trade mark has been innocently and even unconsciously made use of to the injury of another the owner of the trade mark is entitled to the protection of this court.
These are the words with which the Vice-Chancellor opens his judgment at page 100. In Dicks v. Yates, at pages 663, 664, Sir George Jessel M.R, repeatedly during the course of the argument intimated the view that the title of such a publication might become a trade mark and in his judgment there is this passage:
The adoption of the words as the title of a novel is not new. But even that would not make invention. It might make a trade mark, and entitle the owner of the novel to say: "You cannot sell another novel under that exact title, without any difference, so that the public will believe they are buying my novel when they are actually buying yours." That is trade mark, and that is intelligible. That would apply to newspapers and to serials in general.
In The Licensed Victuallers Newspaper Co. v. Bingham Bowen L.J. puts the name of the newspaper touching its capacity to be made the subject of property as trade mark in the same category as a word stamped upon a stick of licorice. I do not think it is the most satisfactory way of dealing with the opinions cited to say simply, of Sir George Jessel for instance, that while he used the words attributed to him he meant to say something else. Neither do I think we ought to exert ourselves to discover some ground for restricting the ordinary meaning of the words
[Page 238]
used by the legislature in order to exclude from the operation of the Act that which at common law seems very clearly, I think, to have been the subject of property as trade mark. The American decisions are almost if not quite uniformly to the same effect.
It is argued, however, that the object to which the appellants seek to apply the combination of words in question, being only a part (sometimes indeed not even an integral or separate part, but a mere section of a page) of the newspaper itself, is for that reason outside the provisions of section 5. A comic section of a newspaper may, it seems, be printed on one or more sheets separated or joined together or only upon part of a sheet; but I really do not see that this circumstance makes it any the less a product or a thing produced by the publisher. If it could be contended that the term "comic section of newspaper" is not descriptive of anything having characteristic marks by which it can be distinguished from other parts of the newspaper, then the force of this objection would be apparent. But I do not think there is any ground for supposing that there can be any real difficulty in applying the description with sufficient certainty for all practical purposes.
It is a satisfactory confirmation of one's view to find that this very combination of words applied to this very thing has been held by an able and experienced American judge, Lacombe J., to be the subject matter of trade mark; New York Herald Co. v. Starr Co.; his judgment being affirmed on appeal by the Circuit Court of Appeals.
Touching the second question, the principal points made by the respondents are:
[Page 239]
(1). That since the appellants were, before registering the combination of words in question as trade marks, selling their newspaper, including the comic sections to which these words were applied, in Canada without the protection of copyright, and inasmuch as in the absence of any such protection it would be open to anybody to reprint the newspaper or the comic section including its title, the public thereby acquired the right to the use of the title itself on the principle accessorium sequitur principale; and
(2). That the terms "Buster Brown" and "Buster Brown and Tige" represent imaginary beings that have become a part of the common stock of ideas of English-speaking North America and that the terms have passed into the language as representing these beings as "Don Quixote" and "Pickwick" represent imaginary personages; the appellants having no exclusive right to describe these beings and their adventures can have no exclusive right to the names. The first of these points is that upon which the learned trial judge has proceeded; while I should differ upon any question of the kind raised by this appeal, with great hesitation, from the view of the learned trial judge, there seems to me to be some fallacy in the argument that assuming the public may reproduce the whole of one of the respondents' comic sections including its title without infringing any legal right, it follows from this that it may produce its own comic section under the distinctive title used by the respondents to designate theirs.
I have, moreover, already given my reasons for thinking that the title of a periodical publication may validly be made the subject of trade mark rights. The considerations indicated apply as well to a copyrighted publication as to a publication not protected by copyright;
[Page 240]
and in at least one of the cases mentioned there seems to be no ground for supposing that any such protection existed. It is manifestly not consistent with this view to hold that the failure to obtain such protection in respect of the numbers of a periodical publication would disentitle the proprietor of a publication to assert a right of property in its title as founded on trade mark.
In the view I take of the statute I think, too, that the second of these objections cannot be allowed to prevail. The registration of a trade mark is something more than primà facie evidence that the proprietor has a title to the exclusive use of it. Section 13, subsection 2, reads as follows:
Thereafter (that is to say after the registration of the trade mark) such proprietor shall have the exclusive right to use the trade mark to designate articles manufactured or sold by him.
The effect of the statute, I think, is that if the trade mark, so called, falls within the definition given by section 5 and the conditions of section 13 have been complied with, the registration alone confers upon the proprietor the exclusive right to the use of it. The right of action given by section 19 seems to be a right vested in any proprietor of a registered trade mark and a right which may be asserted against anybody who uses any such trade mark without the consent of the proprietor.
Section 11 of the statute provides for a number of cases in which the minister may refuse to register a trade mark; and sub-section (a) of that section would appear to be broad enough to embrace the very objections now under consideration. That sub-section gives the minister power to refuse to register if he is not satisfied that the applicant is undoubtedly entitled to the exclusive use of such trade mark. That does
[Page 241]
not mean, I think, that the minister may refuse registration on the ground that the thing which the applicant proposes to register as his trade mark is something in which he has not acquired a property as a trade mark at common law; but that the minister may refuse registration if it is a case in his opinion in which the applicant has not made out a fair title to have conferred upon him the legal right to the exclusive use of the thing by the registration of it as a trade mark under the Act.
Assuming, however, that the question which the minister is to consider is whether such a legal right is already vested in the applicant at the time of the application, still the statute appears to have confided to him, subject to any reference under section 12 of the Act, the determination of this question; and where a statute has committed to a specified authority the determination of a particular class of questions it would be repugnant to establish principles to hold that the decision of the statutory authority acting within the scope of its duty is, in the absence of fraud or manifest error of law, open to review in a collateral proceeding. No such case is made here. The objection under discussion involves a question of fact which, supposing the respondents to be right in their legal contention, we must assume the minister has decided against them. "The Exchequer Court Act" itself, section 23, seems to provide means by which in a proper case steps may be taken to cancel the registration of a trade mark. Whether in this case grounds exist for such cancellation does not arise on this appeal.
These considerations seem sufficient also to dispose of the contention that the respondents in using the words in question merely as a descriptive heading of a part of a newspaper containing an account of the
[Page 242]
adventures of the imaginary beings denoted by the words, have done nothing amounting to an infringement of the appellants' rights. If the appellants have a valid trade mark in these words as applied to comic sections of newspapers then the use of the words as so applied would seem to be actionable at the suit of the appellants under the plain reading of section 19.
A large part of the argument for the respondents at Bar proceeded upon the principles assumed to have been established at common law concerning what are or are not essential characteristics of a trade mark. In reaching the conclusions above indicated, I have proceeded entirely on a construction of the statute; it appears to me that in construing such a statute there is some danger of being misled if one allow one's mind to be too freely influenced by what the common law may have determined to be the essential characteristics of a trade mark.
Re Canadian Newspaper Syndicate.
I think the petitioners have no status to attack the appellants' trade mark. At the time of registration it is not alleged that the petitioners were using the combination of words registered by the appellants. I cannot see on the facts that they have any interest in the question of the validity of the registration other than that of the members of the public generally unless such an interest is acquired by the simple act of attempting to use it themselves. I do not think they can thus acquire such an interest. If on behalf of the whole public the trade mark is to be attacked there is a well understood procedure for that.
[Page 243]
Appeal dismissed with costs.
Solicitor for the appellant: Donald Hector McLean.
Solicitors for the respondents: Ewart, Osler, Burbidge & Maclaren.
Email this Content