Opinion
No. 42-505.
10-07-1918
HILTON v. HILTON.
Pitney, Hardin & Skinner, of Newark (Edward O. Stanley, Jr., and Alfred F. Skinner, both of Newark), for complainant. Selick J. Mindes and Robert H. McCarter, both of Newark, for defendant.
(Syllabus by Editorial Staff.)
See, also, 102 Atl. 16; 104 Atl. 375.
Pitney, Hardin & Skinner, of Newark (Edward O. Stanley, Jr., and Alfred F. Skinner, both of Newark), for complainant.
Selick J. Mindes and Robert H. McCarter, both of Newark, for defendant.
LANE, V. C. (orally). The final injunctive order came to the knowledge of defendant on or about the 29th day of July, 1918. His counsel had had notice of it prior to that time, and there had been several conferences following the handing down of the opinion of the Court of Errors and Appeals on June 17, 1918 (104 Atl. 375), with a view to ascertaining a method by which the decree of the court which would be entered on that opinion could be complied with. The injunction forbids defendant from using the name "Hilton," or "Hilton's," alone or in such manner as to lead or induce the public to believe that the goods sold and manufactured by him are manufactured and sold by complainant, and that the business conducted by defendant is the same as or part of the business conducted by complainant, and— "from using any emblem or device resembling the trade emblem of complainant in any way in his business, and from conducting his business so as to deceive the public and induce it to believe that the goods manufactured or sold by defendant were manufactured or sold by complainant, and that the business conducted by defendant is the same as or a part of the business conducted by complainant."
The original decree followed a long heading, at the conclusion of which it had been adjudged by this court (102 Atl. 16), which judgment was affirmed by the Court of Errors and Appeals, that the method in which the defendant was then using the name "Hilton," or "Hilton's," was such as to bring it within the bar of the injunction. It was the duty of defendant, therefore, immediately upon being served with the injunctive order, to stop the use of the names, labels, and symbols in the manner in which he was using them. His continuance in the use of them after service of the injunction for any length of time was a contempt of this court if bona fide he had desired to change his practice, so as to operate his business in a manner which would be in accordance with the decree of the court, and desired a reasonable opportunity to make the change, his right was to have applied to this court for a stay of the injunctive order, and no doubt, if this court had been satisfied that he was acting bona fide, it would have granted the stay, and might have gone further and advised him, or modified the decree to such an extent as to indicate, more clearly than did the final decree, just exactly what he might do or might not do. He did not do this. For a considerable length of time he continued his business in the manner which had been denounced by both this court and the Court of Errors and Appeals. His excuse that he gave orders immediately for a change, and that because of labor conditions it was not possible for him to have the words "J. Hilton, Prop.," put on the signs within a short space of time; that he had not yet substituted new labels, but has still continued the use of the old labels because of labor shortage, cannot be accepted for a disobedience of an order of this court. No excuse will be accepted, except a physical impossibility to comply with the order of the court. There was no physical impossibility in this case. The defendant might have, and he was obliged to, if necessary to complywith the order of the court, closed his entire business.
What punishment may be meted out to him for his disobedience of the order of the court will, of course, depend to a large extent upon his knowledge of the law, upon his knowledge of the situation, and upon the question as to whether he was acting under advice of counsel or not. But, as I said in the case of In re Bowers, 104 Atl. 196, advice of counsel or ignorance of the law is no excuse for the commission of a contempt so far as the adjudication itself goes. The defendant, therefore, will be adjudged guilty of a contempt of court. The adjudication may rest entirely upon the actions which were committed after the service of the injunction and before the placing of the words "J. Hilton, Prop.," on the signs. Whether the contempt was continued down to the present time is another question. I am not, I think, disposed to determine this finally to-day, but I will express the views that I now have.
I recognize that a layman is put, by an injunctive order such as has been made in this ease, in a very unfortunate position. He is directed to refrain from doing something which may tend to deceive the public. Now, whether a thing tends to deceive the public or not is a matter of fact and inference. Acting bona fide, he may do certain things which he does not believe tend to deceive the public, and yet the court may differ with him, and because the court differs with him, although he had acted in a manner which he had thought proper, he may be guilty of contempt. I endeavored to avoid such an effect in the original decree, because I could not conceive, at the time that that decree was made, that the word "Hilton," or "Hilton's," could be used in such a manner as that the public would not be deceived, that is, in such a manner in a competitive business, and I therefore enjoined defendant from using the name "Hilton," or "Hilton's," in any manner whatever in the competitive business. I suppose I should have (it might have made some difference in the Court of Errors and Appeals) reserved to the defendant the right to apply to this court to use the name in a certain specified manner, in which event the court might then have permitted him to have used the name in a manner which the court would then find in advance would not tend to deceive or defraud the public. The Court of Errors and Appeals took a different view from me, and must have assumed that the name "Hilton," or "Hilton's" might possibly be used in some manner or other in such a way as not to deceive the public in a competitive business. It has put the burden in the first instance upon the defendant to experiment, and make himself liable, if his experiment does not work out.
As I presently view it, I think the addition of the word "J. Hilton" to the sign and the change in the label which has beenk made is not a sufficient change in the method of operating the business to relieve it of the criticism I made of it in the original case. It seems to me, as was said by the Court of Errors and Appeals in the case of Roger v. International Silver Co. or International Silver Co. v. Rogers, in 72 N.J.Eq. 933, at page 938, 67 Atl. 105, 129 Am. St Rep. 722, in reference to the use of the name "Rogers," that the addition of the words "J. Hilton," far from tending to remove the confusion, may tend to increase it. The public does not know generally who the proprietor of the Hilton Company is. J. Hilton may be the proprietor of both the Hilton Company and Hilton's, so far as the general public are concerned. There is nothing to indicate to the public mind that the Hilton business, which is owned by J. Hilton, is not that of the original Hilton Company. In the Rogers Case, Rogers was forced to stamp upon his goods and put upon his signs a statement that the business was not connected in any wise with the original Rogers; in other words, I think upon the defendant was put the burden of indicating to the public that his business was not the business—not only not the business of another competitor, known as the Hilton Company, but not the business of another competitor, known as the Hilton Company, which was the Hilton Company prior to his entering the field. I do not think that if the defendant should add to his sign "Not Connected with the Hilton Company," it would save the situation.
I express no opinion at this time upon the question as to whether the use of the word "J. Hilton & Co." will be permitted, because, for one reason, I cannot conceive, unless both sides agree, that I have any authority to pass upon such a question at this time. The way the decree is now left by the Court of Errors and Appeals, the only authority now left to this court is to determine whether or not a contempt has been committed. If the defendant desires to make a record, I suppose he can apply to this court for permission to modify this decree in some way, and to permit him to use the word "Hilton" in a certain manner to be prescribed by the court. Whether that can be done after the decree of the Court of Errors and Appeals I do not now determine.
Vice Chancellor Howell, in the case I referred to during the argument, reported as Rubber & Celluloid Harness Trimming Co. v. Rubber-Bound Brush Co., 81 N.J.Eq. 419, 88 Atl. 210, affirmed by the Court of Errors and Appeals 81 N.J.Eq. 519, 88 Atl. 210, held that in cases such as this, in order to warrant the court in issuing an injunction, it is not necessary there be proof of actual confusion. I reiterated that in, the Hilton Case originally, and the Court of Errors and Appeals did not see fit to dissent from it or overrule it. I think that no greater proof is necessary in an application to punish for contempt than is necessary to secure an injunction in the first instance. Consideringthe entire case, the facts and circumstances surrounding it, and whatever proof actually there is in the case, I am bound to conclude that the use of the word "Hilton's," in the manner that it is now being used, with the addition of the word "J. Hilton, Prop.," leads to confusion, and that it is bound to.
I will, as above indicated, adjudge the respondent guilty of a contempt of this court, and will not at this moment irrevocably pass upon the question as to the present practice, nor as to whether I think the use of the term "J. Hilton & Co." would be proper. The matter is not now squarely presented to me. Between the present and the time when I shall definitely decide upon the question of the present practice, the further continuance of the use of the word "Hilton's," with the "J. Hilton, Prop.," will not be considered as an additional contempt of court. I will hear counsel as to what punishment ought to be imposed.
If, as a means of purging himself of his contempt, the respondent offers to change his practice in such a manner as will appear to me to be in accordance with the injunction, it may be that I will permit him to purge himself.
On Motion for Allowance of Counsel Fees as Costs.
Upon proceedings instituted by complainant, respondent was adjudged guilty of a contempt for his failure to obey an injunction requiring him to desist from using the name "Hilton's," etc., in such manner as to deceive the public and injure the business of complainant. Upon respondent making substantial changes in his method of conducting business the court concluded not to impose any punishment, other than to compel him to pay costs.
Application is now made to include in the costs an allowance for counsel fees. In O'Rourke v. Cleveland, 49 N.J.Eq. 577, 25 Atl. 367, 31 Am. St. Rep. 719, the Court of Errors and Appeals held that this court could not impose a counsel fee upon a party held in contempt as a punishment it rested its determination upon the absence in this state of legislative authority to award counsel fees in such cases indicating that the power to award a counsel fee is purely statutory. Subsequent to the determination of that case (1892), section 91 of an act concerning the Court of Chancery (1 Comp. St. of N. J. p. 445), was amended to read as follows:
"In any cause, matter or proceeding in the Court of Chancery the chancellor may make such allowances by way of counsel fee to the party or parties obtaining the order or decree as shall seem to him to be reasonable and proper, and shall direct which of the parties shall pay such allowances." P. L. 1910, p. 427.
Considering this legislation, as contrasted with the legislation as it previously existed, it seems to me to be clear that the clear intent was to vest the Chancellor with jurisdiction to allow counsel fees in every proceeding of every kind and description that might be brought in the Court of Chancery. In the Matter of Frankish, 86 N.J.Eq. 280, 98 Atl. 395, the present Chancellor held that the act applied to proceedings in lunacy. The Court of Errors and Appeals, in the O'Rourke Case, expressly determined that the award of costs at the discretion of the court is the settled practice in courts of equity in contempt proceedings, and I can see no reason why there may not be included in the costs by virtue of section 91 a reasonable counsel fee. The statute with respect to the allowance of costs in existence at the time of the determination in the O'Rourke Case was, as indicated in the opinion of the Court of Errors and Appeals, essentially different from the statute as it now exists.
In the instant case the proceedings to punish for contempt were not only to vindicate the dignity of the court, but also to secure the private rights of the complainant. I conclude, therefore, that counsel fees may be allowed against a respondent adjudged guilty of a contempt, and included in the costs. Whether they should be allowed or not is a matter of discretion.
I conclude in this case that they ought to be. The method in which the respondent conducted his business had been condemned by both this court and the Court of Errors and Appeals. For some tune after service upon the respondent of the decree as modified by the Court of Errors and Appeals he continued to conduct his business in the condemned manner. His excuse was that by reason of labor shortage, etc., he could not change his signs and labels. It was, of course, his duty to instantly comply with the order of the court, even if it necessitated closing his business. His remedy was to apply to this court for a stay of the operation of the injunctive decree. Because of the substantial change which he has now made, and the fact that he acted in a mistaken idea as to his rights or as to his duty, it has induced me, without expressing an opinion as to whether the present method conforms to the decree, not to impose any punishment other than as above indicated, but I can see no good reason why the complainant, forced to come into this court to assert his legal rights under a decree of this court, should be obliged to bear the entire expense of the proceeding.
Counsel for complainant ask for an allowance of $300. I think the amount asked for is modest, and it will be allowed.