(dissenting).
I am unable to agree with the extraordinary opinion of the majority. As I read it and observed how completely it disposed of the plaintiff’s demands, I was unprepared for the conclusion of the opinion which not only upheld the injunction granted by the District Court but granted relief not given by that court or requested by the plaintiff.
The District Court enjoined the use of the name “Horlick” by the defendant unless some other word or words were associated with it and printed on the packages in letters one-half the size of the word “Horlick.” The plaintiff demanded below and argued here that the name associated with “Horlick” should be of the same size type as the word “Horlick.” This demand of the plaintiff is granted by the majority opinion, which also supplies the name to be used with “Horlick,” to wit, “Charles.”
The majority opinion did not stop there but, going further, imposed limitations upon the defendant which the plaintiff had not even requested. The defendant recited at the bottom of his packages in small type, “MANUFACTURED BY HORLICK OF HORLICKSVILLE RACINE, WISCONSIN.” In the same position on the plaintiff’s packages was printed, “MANUFACTURED BY HORLICK’S MALTED MILK CORPORATION, RACINE, WIS., U. S. A.” Across this printing was a large facsimile signature in red ink, “Horlick’s.” By the majority opinion the defendant is required to substitute on the bottom of his packages in lieu of the words above quoted the following: “Manufactured by Charles Horlick, Horlicksville, Racine, Wisconsin,” this to appear in letters one-half the size of the printing used in the words “Charles Horlick” on the face of the packages. These are the impositions placed by the majority upon the defendant, although he had committed no wrongful act. He did nothing which he did not have an unquestioned legal right to do.
The plaintiff sued for infringement of its trade-mark. The majority opinion denies such infringement, since the products were not of the same descriptive properties. The plaintiff also sued for unfair competition. The majority opinion states that the defendant had a right to use his own family name in marketing the dog food which he manufactured, so long as he engaged in no deceptive or fraudulent practices. In treating the unfair competition phase of the case, the majority opinion holds that since the products were not in competition the secondary meaning attached to the plaintiff’s name had no application. The majority says that the “products * * * appeal to entirely different markets”; that there is “no confusion in products”; that “a man may use his own name reasonably and honestly for a legitimate purpose in his own business”; that the “defendant did not deliberately intend to steal anything in the case at bar. He made use of his own name in good faith, thinking the ways in which he used it were honest and fair. There was no deception or misrepresentation here.” Indeed, it was the plaintiff who seemed to be the performer of sharp practices and the pirate in the piece. As the majority says, “the interest plaintiff asks us to protect is very largely speculative, contingent, and future, because plaintiff is not in the business of making dog food and there is no showing that it ever will be. Thus plaintiff is trying to preempt the name Horlick in many of its possible permutations and combinations in a market which it may never choose to exploit.” There was no similarity in the packages. They were no more alike than a dog is like a cow.
Thus, the majority absolves the innocent defendant from all wrongdoing but nontheless imposes certain duties upon him in order to lessen any confusion which might arise in the public’s mind over who manufactures dog food and who manufactures malted milk. As if that made any differ*38ence. If there is any likelihood of such confusion, it grows out of the situation and not out of any wrongful conduct on the part of the defendant. The defendant is as blameless as the plaintiff. Why should the defendant be required to assume the entire burden of clearing up confusion which no wrongful conduct of his created? The only thing the defendant has done is to use his own name in marketing a non-competitive product, without fraud or deception. Surely courts of equity should not undertake the task of enjoining mere confusion, unconnected with any wrongful act.
In Brown Chemical Company v. Meyer, 139 U.S. 540, 544, 11 S.Ct. 625, 627, 35 L.Ed. 247, the court said:
“A man’s name is his own property, and he has the same right to its use and enjoyment as he has to that of any other species of property. If such use be a reasonable, honest, and fair exercise of such right, he is no more liable for the incidental damage he may do a rival in trade than he would be for injury to his neighbor’s property by the smoke issuing from his chimney, or the fall of his neighbor’s house by reason of necessary excavations upon his own land. These and similar instances are cases of damnum absque injuria.”
In Howe Scale Co. v. Wyckoff, Seamans & Benedict, 198 U.S. 118, 140, 25 S.Ct. 609, 614, 49 L.Ed. 972, speaking of the right of one to use his own name, the court said: “Having the right to that use, courts will not interfere where the only confusion, if any, results from a similarity of the names, and not from the manner of the use. The essence of the wrong in unfair competition consists in the sale of goods of one manufacturer or vendor for those of another; and if defendant so conducts its business as not to palm off its goods as those of complainant, the action fails.”
In Canal Company v. Clark, 13 Wall. 311, 327, 20 L.Ed. 581, the Court said: “Purchasers may be mistaken, but they are not deceived by false representations, and equity will not enjoin against telling the truth.”
In the light of these clear expressions of the Supreme Court, I cannot see how the plaintiff was entitled to any relief, let alone the additional relief which the majority opinion gives it. I would affirm the District Court, since the defendant filed no cross-appeal.