would be in the words 'Miserable Sinner,' or anything of that kind. The adoption of the words as the title of a novel might make a trademark.''16 In 1898 the Appellate Division of the Supreme Court of New York said it could not follow the reasoning of counsel "when he contends that the public, by its short way of referring to the Commercial Advertiser,' has given the plaintiff some kind of an undefined trademark in this popular form of speech,a doctrine which would equally apply to a 'sobriquet' or diminutive; that its unauthorized use by the defendant, whether likely to injure the plaintiff or not, should be absolutely enjoined as an invasion of a strict property right." 17 While on the other hand, the United States Circuit Court for the District of New Jersey had held in 1894 that the words "Social Register," applied by a publisher to a directory of a certain locality, containing names of persons resident therein, selected with reference to the personal and social standing of such persons, "become a trademark. and are entitled to protection as such." 18 From our cursory view of the foregoing decisions and dicta it is plainly manifest that the right to technical trademark in the title of a periodical has been affirmed and denied with some show of reason upon each side. The subject has been ably discussed by Mr. Browne, who concludes that the name. so used is a technical trademark.19 In that conclusion we must coincide, and it is well sustained by the reasoning of Mr. Rowland Cox, which we have before quoted.20 But the fact is patent that it is still a mooted question, and that the solicitor attempting to restrain piracy of this kind would better frame his bill upon unfair competition and not upon technical 16-Dicks v. Yates, L. R. 18 Ch. D. 76-88. 17-Commercial Advertiser Ass'n v. Haynes, 49 N. Y. Supp. 938-942. To the same effect see Powell v. Valentine, 106 Kan. 645, 189 Pac. Rep. 163. V. 18-Social Register Ass'n Howard, 60 Fed. Rep. 270, 271. The same ruling was made in Social Register Ass'n v. Murphy, 128 Fed. Rep. 116. 19-Browne, Trademarks (2d Ed.), § 115. As instances of injunction restraining use of infringing titles of periodicals, see Edmonds v. Benbow, Seton (3d Ed.), 905; In re Edinburgh Corrospondent Newspaper, Ct. of Sess. Cas. 1st. ser. I (new ed.), 407 n; Cox, Manual, No. 34. 20-Note to Clemens v. Belford, 14 Fed. Rep. 728; Cox, Manual, 684; ante, $ 85. trademark.20a The New York Supreme Court, in its decision above referred to, says that "the fundamental doctrine upon which relief in this class of cases is afforded" is that of "misleading or the tendency to mislead, with consequent injury, actual or probable." 21 In a decision of the United States Circuit Court of Appeals for the Second Circuit, rendered since the foregoing was written, it is distinctly held that the name of a periodical is a technical common-law trademark.22 In harmony with this doctrine it has been held that the words "Buster Brown" at the head of a single page of a comic section of a newspaper constitute a valid trademark.2 23 § 87. Play titles as trademarks.-The principles stated by Judge Wallace in the language which we have heretofore quoted in reference to book titles as trademarks, "If literary property could be protected upon the theory that the name by which it is christened is equivalent to a trademark, there would be no necessity for copyright laws," applies with equal cogency to the name by which a play is designated. But there is this distinction between the titles of plays and the titles of books; the former are comprehensive of something more than the mere title of the literary composition which is produced as a play, while the latter are strictly limited to the literary 20a-The word "Vogue" has been held to be a valid trademark for a fashion magazine, over the defense that it was descriptive. Vogue Co. v. Brentano's, 261 Fed. Rep. 420. But a contrary view led to the publisher of the trade publication "Photoplay" being denied injunctive relief, in view of the fact that the word "photoplay” had come to designate the art to which the publication related. Photoplay Pub. Co. v. La Verne Pub. Co., 261 Fed. Rep. 428. 21-Commercial Advertiser Ass'n v. Haynes, 49 N. Y. Supp. 938-942; citing Bradbury v. Beeton, 39 Law J. Ch. 57; Ingram v. Stiff, 5 Jur. N. S. 947; Lee v. Haley, 5 Ch. App. Cas. 155; Clement v. Maddick, 5 Jur. N. S. 592. And to the same effect, see Snowden v. Noah, Hopkins, Ch. 347; Bell v. Locke, 8 Paige, 75; Tallcot v. Moore, 6 Hun, 106; Stephens v. DeConto, 4 Abb. Pr. N. S. 47; Matsell v. Flanagan, 2 Abb. Pr. N. S. 459; Publishing Co. v. Dobinson, 82 Fed. Rep. 56; Richardson & Boynton Co. v. Richardson & Morgan Co., 8 N. Y. Supp. 53; Farmers' Loan & Trust Co. v. Farmers' Loan & Trust Co., 1 N. Y. Supp. 44; Borthwick v. Evening Post, L. R. 37 Ch. D. 449; Estes v. Leslie (2), 29 Fed. Rep. 91; Estes v. Leslie (1), 27 Fed. Rep. 22; Estes v. Worthington, 31 Fed. Rep. 154. 22-Gannett v. Rupert, 62 C. C. A. 594; 127 Fed. Rep. 962; reversing s. c., 119 Fed. Rep. 221; to the same effect, see S. T. Taylor Co. v. Nast, 154 N. Y. Supp. 982. 23-New York Herald Co. v. Star Co., 146 Fed. Rep. 204; affirmed, 146 Fed. Rep. 1023; 76 C. C. A. 678 production itself. Practically, in all of the cases involving play titles with which the courts of this country have had to do, there was some scheme of production involved which represented the business enterprise of the manager, as well as the presentation of the ideas of the author. The ideas of the author again are not entirely embodied in language which reaches the audience in word sung or spoken. The "business" of the play is sometimes never reduced to writing, and in the majority of cases the production of the brain of a third person, the skilled stage manager, is of the very essence of the play, and is at times the determining factor which makes the play a success. So, in its last analysis, the name of a play is the medium which signifies to the patrons of the theatre three things: the literary production of the playright, the artistic aid of the stage manager, and the moneyed investment as well as the skill in cast selection of the manager. And these three things disregard the accompanying investiture of costumes, scenery, and incidental music which represent the efforts of the musician, the landscape painter, the costumer, and the skilled selector of furniture and other accessories. A play title then stands for a kind of personal property which is strictly sui generis, the distinguishing mark by which the production is identified to the public before and after the first performance. It is manifest that a play title also carries with it a specific and unique form of goodwill to which all of the things which we have enumerated help to contribute. The extent to which courts of equity will protect a play from piracy, aside from any question of copyright, is not yet fully determined. The cases are few in number, but are sufficient to establish the general principle that the broad doctrine of unfair competition in trade which we have considered in this book may be invoked wherever deception of the public and injury to the complainant will probably result from a refusal of the injunction. This fact is more important because of the difficulty attendant upon making out a case of copyright infringement where the subject matter involved is a dramatic composition. In a case in which "L'Aiglon" was the play involved, and in an opinion in which he refers to that name as being a trademark for the plaintiff's organization, Judge McAdam has said: "The question, What's in a name' has been answered by the courts in many well-considered cases, wherein the exclusive right to a name possessed or owned by a successful business enterprise has been maintained against imitators and wrongdoers who sought, by an unauthorized use, to deceive the public and profit by the wrong. While courts have in some instances refused injunctive relief to protect the use of the title where plays were dissimilar, and the appropriation a mere coincidence (Frohman v. Miller, 8 Misc. Rep. 379, 29 N. Y. Supp. 1109), they have uniformly enjoined such use where deception of the public and injury to the plaintiff were likely to follow a refusal to grant equitable aid (Shook v. Wood, 32 Leg. Int. 264; Hier v. Abrahams, 82 N. Y. 519)." 24 In a later case the Supreme Court of Illinois affirmed a decree of injunction in a case where the plaintiff was the producer of the play "Sherlock Holmes" and the defendant subsequently produced a play entitled "Sherlock Holmes, Detective." In affirming the decree of injunction, the supreme court based the plaintiff's right to equitable relief upon the ground that the names of the respective plays were so similar that the public "would be deceived to believe that the drama of the appellant company was that which the appellee had been producing." The court expressly declined to decide whether or not the plaintiff had a trademark right or property in the words "Sherlock Holmes,' basing the relief upon the general rule as to unfair competition, Judge Boggs remarking that "Equity provides a remedy to prevent such unfair and fraudulent competition among business rivals in any and all lines of legitimate trade and business. 125 Where the play is a dramatization of a book, whose copyright has expired, its title is not an infringement of the title of another (copyrighted) play based upon the book.26 § 88. Infringement of book titles and play titles by motion picture titles. The manufacturers of motion picture films have 24-Frohman v. Payton, 68 N. Y. Supp. 849. 25-Hopkins Amusement Co. v. Frohman, 202 Ill. 541; 67 N. E. Rep. 391; affirming s. c., 103 III. 26-Glaser v. St. Elmo Co., 175 Fed. Rep. 276. used many titles of pre-existing copyrighted books and plays as the titles of their films. In the absence of copyright questions, the similarity of title alone can give no cause of action, unless the title has acquired a secondary signification as meaning that particular play.26a The "Nick Carter' case was based upon the name "Nick Carter" registered "for a weekly periodical devoted to fiction." The defendant made a film entitled "Nick Carter the Great American Detective Solving the $100,000 Jewel Mystery," the plot of the film play not being an infringement of any of the hundreds of "Nick Carter" stories published by the plaintiff. A preliminary injunction was appealed from, the appeal resulting in a dismissal of the bill.27 The underlying doctrine is that "if literary property could be protected upon the theory that the name by which it is christened is equivalent to a trademark, there would be no necessity for copyright law." 28 In an English case the suit was brought by the authors and owners of the copyright of a play, "Sealed Orders," to restrain the defendants from using and advertising a film play under that title. The case coming on before Mr. Justice Eve, the court was so clearly against the plaintiffs that the case was settled by a consent decree under which the defendants agreed to change the title of the film to "Orders Under Seal." The learned judge asked two questions during the hearing which are clearly suggestive that British law is in harmony with our decisions. "Could not any one paint a picture and call it 'Sealed Orders?' A person might write a book now and call it 'Seale:1 Orders,' and is not what the defendants want to show merely a pictorial book?" 29 26a-National Picture Theatres v. Foundation Film Corp., 266 Fed. Rep. 209, C. C. A. 2. The requisites of the suit are outlined in this opinion. 27-Atlas Mfg. Co. v. Street & Smith, 122 C. C. A. 568; 204 Fed. Rep. 398; appeal to supreme court dismissed in Street & Smith v. Atlas Mfg. Co., 231 U. S. 348; 58 L. Ed. 262; International Film Service Co. v. Associated Producers, Inc., 273 Fed. Rep. 585. 28-Black v. Ehrich, 44 Fed. Rep. 794. 29-Raleigh V. Kinematograph Trading Co., 31 R. P. C. 143, 145. The drama title, "A Fool There Was," was protected against photo- |