Cigar-Makers' Protective Union v. Conhaim

Mitchell, J.,

(dissenting.) While I assent to the general rules of law regarding the rights of property in trade-marks and labels as laid down in the opinion of the court, yet it seems to me that they are not correctly applied to the facts of this case. It appears from the complaint that the Cigar-Makers’ Union is an association of *248practical cigar-makers; that, by reason- of the experience and care of the members in the manufacture of cigars, “union-made cigars” have acquired a high reputation, and have become favorably and widely known in the market as a valuable and reliable cigar, and for that reason command an extensive sale, which is a source of great profit to the members of the union. It is undoubtedly true that a right of property in either a trade-mark or a label cannot be acquired by mere selection. It must also have been applied to some vendible commodity. But I cannot see why, even under this rule, an association whose members are engaged in the same trade, although not itself engaged as an association in the business of manufacturing, may not adopt a label or other device for the use and benefit of its members who are thus engaged, to be applied to articles produced by them to distinguish them from those produced by others, so that they may have the benefit of the superior reputation of their products in the market, resulting from their superior skill and care in manufacturing such articles. Neither do I see why the application of such symbol by the members to the articles made by themselves is not a sufficient application of it, within the rule suggested; or, when thus applied, why it does not sufficiently indicate, within another rule laid down in the opinion, the origin of the article. It shows that it was made by a member of the union, although not the particular member by whom made. To my mind, this is the controlling question in this ease; for, if the association can thus adopt a label or symbol for the use of its members in this way, it would seem necessarily to follow that such use must be limited to members; and the fact'that these members are not connected together in business is unimportant. The whole system of labor or trades unions is comparatively modern, and perhaps no case can be found in the books involving a similar state of facts. But it is one of the chief excellencies of the common law that its principles are capable of application to new conditions as they arise, and I think that it but needs a correct application of old principles to the new state of facts to protect the membership of this union in the benefits of their superior skill and experience as cigar-makers, against the unfair competition of one who fraudulently imitates or counterfeits the label adopted to distinguish their work*249manship from that of others. The adoption of this label by .the union may be a mere device for boycotting those who employ non-union labor, but we cannot assume this, as against the allegations of the complaint, which must be here taken as true.

Yanderburgh, J. I concur in the opinion of Justice Mitchell.