BROTHERHOOD OF PAINTERS v. UNITED HOME IND. UNION

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Docket Number

No. 27832.

Attorney(S)

C.E.B. Cutler, for plaintiff in error. W.C. Alley, for defendant in error.

Judges

BAYLESS, V. C. J.

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Smart Summary

Factual and Procedural Background

The Brotherhood of Painters, Decorators, and Paperhangers of America, Local No. 443, sued the United Home Industrial Union of Okmulgee in the District Court of Okmulgee County for injunctive relief. The Brotherhood alleged that the defendant imitated its union label and represented that the defendant’s members belonged to the plaintiff union, thereby deceiving the public. The defendant denied those allegations, asserted its status as a labor union, and filed a cross-petition alleging unfair and illegal restraint and competition by the plaintiff. [1]

After both parties presented evidence, the trial court denied relief to both sides. The plaintiff alone appealed. [2]

Legal Issues Presented

Whether the defendant’s union label was sufficiently similar to the plaintiff’s label that an ordinarily prudent person would probably be confused and deceived. [3]
Whether the trial court’s findings and judgment were against the clear weight of the evidence. [4][5]
Whether the defendant’s label registration, organization date, and admission of comparison evidence required reversal. [6][7]

Arguments of the Parties

Plaintiff’s Arguments

The defendant illegally imitated the plaintiff’s union label and competed unfairly by representing that its members were members of the plaintiff union. [1]
The plaintiff’s pleadings, evidence, and briefing implied that it was the exclusive union entitled to identify union workers and authorize use of a union label. [8]
The plaintiff challenged the regularity and timing of the defendant’s label registration and argued that allegedly incompetent evidence had been admitted. [6][7]

Defendant’s Arguments

The defendant denied misrepresentation and unfair competition, asserted its corporate existence as a labor union, and sought injunctive relief against the plaintiff’s alleged unlawful conduct. [1]

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Coalgate Abstract Co. v. Coal County Abstract Co., 180 Okla. 8, 67 P.2d 37	The relevant unfair-competition inquiry is whether similarity would probably confuse and deceive an ordinarily prudent person.	The court used this standard to define the remaining factual issue. [3]
American Automobile Ass'n v. American Automobile Owners' Ass'n, 216 Cal. 125, 13 P.2d 707, 83 A. L. R. 699	Common geometric designs cannot be exclusively appropriated, and similarity must be determined by comparing the competing designs as a whole, including both differences and resemblances.	The court applied the comparison rule and found obvious differences between the labels. [9][10][11][12]
O K Bus Baggage Co. v. O K Transfer Storage Co., 63 Okla. 311, 165 P. 136	Unfair competition may be enjoined when additional features and practices show an intent to mislead the public and divert business.	The court distinguished that case because the present record contained no comparable misrepresentation or unfair competitive conduct. [13][14][15]
Richmond Remedies Co. v. Dr. Miles Medical Co., 16 F.2d 598	Physical comparison is relevant to determining resemblance and difference.	The case was cited within the comparison principle adopted by the court. [11]
Postum Cereal Co. v. American, etc., Co., 119 F. 848	Physical comparison is relevant to determining resemblance and difference.	The case was cited as support for examining the competing labels as a whole. [11]
Viavi Co. v. Vimedia Co., 245 F. 289	Physical comparison is relevant to determining resemblance and difference.	The case was cited within the court’s statement of the approved comparison test. [11]
Southern California Fish Co. v. White Star Canning Co., 45 Cal.App. 426, 187 P. 981	Similarity must be assessed through comparison of the competing features.	The case was cited as part of the authority supporting whole-label comparison. [11]
P. Lorillard Co. v. Peper, 86 F. 956	Minor similarities do not establish deception when the labels are essentially different and distinguishable at a glance.	The court relied on this reasoning in concluding that obvious differences would not deceive an ordinarily intelligent observer. [16][17]
Acme Screen Co. v. Pebbles, 159 Okla. 116, 14 P.2d 366	The absence of misrepresentation and other unfair competitive conduct distinguishes a case from one involving actionable unfair competition.	The court cited the case in distinguishing the present dispute from O K Bus Baggage Co. [15]

Court's Reasoning and Analysis

The court agreed with the trial court that the record contained no proof of misrepresentation or deceit by the defendant. Consequently, the central issue was whether the defendant’s label was so similar to the plaintiff’s that an ordinarily prudent person would probably be confused and deceived. [3]

The plaintiff could not challenge the defendant’s label registration, organization date, or recordation under the statutes it invoked, and the comparison evidence did not prejudice the plaintiff. [6][7]

The court rejected the plaintiff’s asserted exclusive right to operate as the only union or to prevent another union from identifying its members as union workers. It also held that common geometric designs, such as diamonds, squares, triangles, circles, or combinations of them, cannot be exclusively appropriated. [8][18][9]

Protection arises only when a competitor adopts not merely a general outline but also lettering, marks, coloring, and other distinguishing features in a manner intended to confuse the public. [13]

The proper test was physical comparison of the labels as a whole, considering both points of resemblance and points of difference. Applying that test, the court found the differences obvious and concluded that ordinary observers would not mistake one label for the other. [10][11][12]

The court further observed that persons seeking union painters noticed that the defendant’s cards and labels were not those of the plaintiff and made additional inquiries. The defendant’s label, viewed from a reasonable distance, would not deceive anyone who observed it. [19][20]

Unlike cases involving additional misleading practices, the record showed no misrepresentation by the defendant or its members and no other acts designed to unfairly compete with the plaintiff. [15]

Holding and Implications

The judgment was affirmed. The trial court properly denied injunctive relief to the plaintiff, and the defendant’s label was not shown to create probable confusion or deception. [2][3][20][21]

The direct effect was that neither party received the requested injunction. The opinion discusses no broader implications beyond applying the stated unfair-competition and label-comparison principles to this dispute. [22][21]

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BROTHERHOOD OF PAINTERS, DECORATORS, AND PAPERHANGERS OF AMERICA, LOCAL NO. 443, v. UNITED HOME INDUSTRIAL UNION OF OKMULGEE.

(Syllabus.)

1. Trade-Marks and Trade-Names and Unfair Competition — Right to Enjoin Use of Union Label on Ground of Imitation — Necessary Showing of Similarity.

Under the law of unfair competition, in order to enjoin the use of a union label on the ground of imitation, there must be such similarity to the union label formerly used that the ordinary person, exercising ordinary intelligence and observation, will certainly or probably be deceived. Mere possibility of deception or confusion is not sufficient.

2. Same — Both Points of Resemblance and Points of Difference in Labels to Be Considered.

Whether the union label of a union unfairly imitates and resembles the union label theretofore adopted and extensively used by another union is to be determined by comparison, and there must be an inspection of the points of resemblance and difference as a whole, and not merely the points of resemblance.

BAYLESS, V. C. J.

Brotherhood of Painters, Decorators, and Paperhangers of America, Local Union No. 443, located at Okmulgee, Okla., brought an action in the district court of Okmulgee county, against United Home Industrial Union of Okmulgee, a corporation, for injunctive relief. The basis for the action was the charge that the union label adopted by the defendant illegally imitated the union label long since adopted and used by the plaintiff, and a charge that defendant illegally competed with plaintiff by representing that members of the defendant union were members of plaintiff union, and by these means deceived the public. The defendant filed an answer denying these charges and a cross-petition setting up its corporate existence as a labor union, and making charges of unfair and illegal acts of restraint and competition on the part of the plaintiff, and seeking injunctive relief therefrom.

At the trial of the cause both sides introduced evidence. The trial judge denied plaintiff relief, and likewise denied defendant relief on its cross-petition. The plaintiff alone appeals.

The trial court found, and we agree, that there was no proof of misrepresentation and deceit on the part of the defendant, as alleged by the plaintiff. This leaves only one question of fact: Is the union label used by the defendant so similar to that used by the plaintiff that an ordinarily prudent person, exercising ordinary intelligence and observation, will certainly or probably be confused and thereby deceived? Coalgate Abstract Co. v. Coal County Abstract Co., 180 Okla. 8, 67 P.2d 37.

The first two propositions argued by plaintiff relate to the regularity of the defendant's registration of its label, and the late date at which it was organized and put itself on record. These are not matters which concern the plaintiff. Plaintiff could not prevent, and indeed cannot complain of, these acts on the part of the defendant under the statutes cited and relied upon by the plaintiff. This aspect of the case will be discussed under proposition 4.

Proposition 3 relates to the admission of alleged incompetent evidence. This evidence involved a comparison of the union label, painted by defendant, with a label of the plaintiff of a different size and intended for certain limited uses other than for painting. We do not see any prejudice in this. While like ought to be compared to like, the trial judge undoubtedly was astute enough not to be confused thereby.

Proposition 4 reads:

"Are the findings, decision and judgment of the court, after considering the whole record, against the clear weight of the evidence?"

There is strongly implied in plaintiff's pleadings, evidence, and argument in the briefs that it is the sole union and that it virtually amounts to an invasion of its rights for the defendant to assert that it is a union or for its members to hold out to the public that they were union workers and authorized to paint a label or other signal to indicate that the work had been done by a union worker.

The assumption of this pretended exclusive right must be rejected.

Not only this, but the plaintiff cannot appropriate to its exclusive use any general design or symbol composed of common geometrical designs or combinations thereof. 26 R. C. L. 880. No one may acquire the exclusive right to the use of an outline such as a diamond, square, triangle, circle, or combination thereof. American Automobile Ass'n v. American Automobile Owners' Ass'n, 216 Cal. 125, 13 P.2d 707, 83 A. L. R. 699.

It is only when the alleged unfair competitor not only adopts the general outline, but also the lettering, marks, coloring, and other distinguishing features, and so uses these to confuse the identity of his business with that of another and thereby misleads the public, that the law acts. O K Bus Baggage Co. v. O K Transfer Storage Co., 63 Okla. 311, 165 P. 136. In that case it was said:

"The plaintiff's petition seeks protection for plaintiff in its business on the ground that the letters 'O K' constitute a trade-name, and that the defendant has been guilty of an infringement thereof; and also upon the ground that defendant has been guilty of unfair competition.

"It may be conceded that under the evidence plaintiff is not entitled to the exclusive use of the letters 'O K' as a trade-mark within the law of that subject, and that it has no proprietary interest in the use thereof in connection with its business.

"There would still remain the question as to whether defendant under the findings of the court should be restrained from continuing that kind of competition which is denominated as unfair and condemned by the courts."

The court then held upon consideration of the entire record, that the defendant therein had not only taken the designation "O K." but had adopted so many other practices as to evince an intent to mislead the public and divert business from the plaintiff by the confusion thus created.

In the present case the union label adopted by plaintiff is:

It is shown that the painter members of such union paint a label on jobs they have finished, which consists of the general outline above shown with the formula "union made No. 443" extending across the length thereof. The painter fills in the number of the local union to which he belongs.

In this case the defendant union has adopted as its label the following:

It seems that the members paint this symbol upon jobs finished by them.

No significance seems to be given to the colors used.

The rule with respect to the test to be applied is that of comparison. In American Automobile Ass'n v. American Automobile Owners' Ass'n, supra, it is said:

"Of course, the only rule by which resemblances or differences can be detected is by physical comparison. Placing the objects of disputed similarity side by side is the method adopted by all courts, that not only the size, shape, and forms may be brought into juxtaposition, but also that the color effect will be brought into the picture. There can be no other fair method of arriving at the truth. This is the approved test and the only way by which similitudes and differences may be compared. Whether one emblem resembles another is to be determined by an inspection of the points of difference and resemblance, as a whole, and not merely of points of resemblance. Richmond Remedies Co. v. Dr. Miles Medical Co. (C. C. A.) 16 F.2d 598; Postum Cereal Co. v. American, etc., Co. (C. C. A.) 119 F. 848: Viavi Co. v. Vimedia Co. (C. C. A.) 245 F. 289; Southern California Fish Co. v. White Star Canning Co., 45 Cal.App. 426, 187 P. 981. When so examined, the emblems of the contending competitors differ in so many conspicuous and essential features — in name, coloring, number, and formation of letters, symbol — that it does not seem possible the one should be mistaken for the other by persons of ordinary intelligence, exerising ordinary care in the concerns of business. The form of the diamond is not absolutely identical. Of course, that is not susceptible of exclusive appropriation. But even should mistakes infrequently occur, the error would be with the person who fails to use his powers of perception in distinguishing differences where they actually exist. The similarity between numerous types of automobiles themselves is more striking than is the similarity between the emblems in the present case."

Much that is said therein applies here. It seems to us that the observation: "But even should mistakes infrequently occur, the error would be with the person who fails to use his powers of perception in distinguishing differences where they actually exist" is pertinent. In the case we have before us it would not require any great perception to notice the obvious differences.

Should any persons fall into such error, we would feel much as the C. C. A. 8th Circuit felt as it was considering the similarities and differences of labels in the case of P. Lorillard Co. v. Peper, 86 F. 956, when it said:

"The difference is such that the eye will take it in at a moment's glance. Summing it all up, while there are certain minor points of resemblance which have been forcibly urged upon our attention * * * yet, looking at the two packages with their labels, — taking the tout ensemble, — it appears to us clear that they are so essentially different that no one of ordinary intelligence, * * * would be misled. * * * We cannot surrender our own judgment in this matter because others may be of a different opinion. * * *"

It may be noticed in closing that those desiring to avail themselves of the services of a union painter, and who inquired of defendant's members if they were union men, immediately noticed that their card and the label thereon was not that of plaintiff union. They commented upon it and made other pertinent inquiry.

The union label painted by defendant upon the sign (a photograph of which is in evidence) would not deceive anyone who observed it within a reasonable distance.

There is no evidence in the record to show misrepresentation on the part of the defendant or its members, nor is there any evidence of any other acts on the part of the defendant or its members designed to unfairly compete with the plaintiff. Therein lies the difference between this case and that of O K Bus Bag. Co. v. O K Trans. Stor. Co., 63 Okla. 311, 165 P. 136, this difference being the same as that pointed out in Acme Screen Co. v. Pebbles, 159 Okla. 116, 14 P.2d 366.

The judgment is affirmed.

OSBORN, C. J., and RILEY, CORN, GIBSON, HURST, and DAVISON, JJ., concur. WELCH and PHELPS, JJ., absent.