Opinion
January 18, 1949. —
April 12, 1949.
APPEAL from a judgment of the circuit court for Milwaukee county: CHARLES L. AARONS Circuit Judge. Affirmed.
For the appellant there was a brief by Shea Hoyt of Milwaukee, and oral argument by Edmund B. Shea.
Herbert Mount of Milwaukee, for the respondent Jack Bundy, and Bruce B.F. Randolph of Milwaukee, for the respondent Midwest Broadcasting Company.
Action commenced February 24, 1948, by the Journal Company, a corporation, plaintiff, against Jack Bundy and Midwest Broadcasting Company, a corporation, defendants, to restrain the defendants from using the name "Heinie" or the expression "The Band of a Million Airs" in any radio broadcast emanating from any broadcasting station located in or about the city of Milwaukee, together with damages for any prior use of said name or names. Judgment was entered July 14, 1948, restraining the defendants from using the slogan "The Band of a Million Airs;" otherwise the relief prayed for in the complaint was denied. Plaintiff appeals from that part of the judgment denying the relief prayed for.
The plaintiff is a Wisconsin corporation engaged in publishing a newspaper and in operating radio-broadcasting stations in Milwaukee and elsewhere, among them station WTMJ at Milwaukee. The defendant Midwest Broadcasting Company is a Wisconsin corporation operating radio-broadcasting station WMAW at Milwaukee. The defendant Jack Bundy's real name is Frank Henry Hackbarth. He adopted the name of "Jack Bundy" without legal action many years ago when he was an actor in vaudeville. He is quite generally known as and called "Jack" but he is also frequently called "Heinie" and has been so called since his youth.
Prior to March, 1932, Bundy had conducted a radio broadcasting program over station WJBK in Detroit under the name "Heinie and His Hinky Dinks." This program included music and dialogue, and was of a type commonly referred to as a musical-variety show. In March, 1932, Bundy suggested to the plaintiff that he could produce and present a German-band type of program over WTMJ and plaintiff employed Bundy and placed him in charge of such a program. The contract of employment was an oral one. The program was changed from time to time and several titles were used during the first few months, including "Heinie's German Band," "Heinie and His Old Timers," and "Heinie and His Boys." In July, 1932, the title of the program was changed to "Heinie and His Grenadiers." The program continued under that name until January 29, 1944, when Bundy terminated his connection with the plaintiff, and went to New York. During a great part of the time the phrase "Band of a Million Friends" was employed as a slogan in connection with the program.
On August 20, 1932, plaintiff and Bundy entered into a written agreement known as a management contract, under which the plaintiff undertook the exclusive management and control of the personal public appearances of Bundy and the band. This was a printed form of agreement, but the following clause was inserted by typewriter and pen:
"(k) Artist agrees not to use the name of `Heinie' and/or `Grenadiers' from any other Milwaukee radio station at any time during or after the expiration of this contract, nor from any station within one hundred miles of Milwaukee for a period of sixty days after leaving the employ of station, said restriction, however, not to apply the use of name or names in network programs."
The contract of August 20, 1932, was terminated in 1935 or 1936 because of objection by the musicians' union and thereafter the public appearances of Bundy and the band were contracted for by Mr. Bundy.
Until the beginning of World War II the dialogue part of the program of "Heinie and His Grenadiers" contained much of a German flavor — that is, use of German accent, German idioms, and the like. Because of the war this was gradually eliminated and by the time Bundy left the plaintiff all of the dialogue on the program was in normal English. After Bundy left, the plaintiff changed the name of the program from "Heinie and His Grenadiers" to "The Grenadiers" and placed another person in charge of the program as master of ceremonies. The plaintiff has not used the name "Heinie" in its program since that time, and has no present plans of any definite character for the use of that name although it has considered from time to time the possibility of resuming it if a master of ceremonies could be found who might fit the part.
Bundy returned to Milwaukee in the fall of 1947, and contracted with the defendant Midwest Broadcasting Company to produce and broadcast a show over station WMAW at Milwaukee. The program has been given the title "The Jack Bundy Show" with Bundy as master of ceremonies. The general style and type of show is that of a musical-variety show with music and dialogue. Prior to calling said program "The lack Bundy Show" the defendants advertised the same as "Heinie and His Band — the Band of a Million Airs," but defendants have refrained from using such name and title over the air pending the outcome of this case.
The trial court concluded its findings with the following:
"27. In the course of many years — both prior to and since the the when Bundy began his work on the plaintiff's broadcasting stations — the name `Heinie' has become identified with Bundy as a familiar appellation exemplifying a friendly and likeable personality. It is a name with which he attained his greatest popularity as an entertainer on a radio-broadcast program. It is reasonably probable that he would be seriously handicapped in his professional work referred to in the 7th finding herein and would suffer irreparable loss if he were deprived of the right to use the name `Heinie' in connection with radio-program broadcasts of the kind here involved.
"28. The proposed use of the name `Heinie' in the title of the defendants' present program and to identify the defendant Bundy by such name during said program would not cause or tend to cause confusion of identity in the minds of Milwaukee radio listeners between said program and the program broadcast by the plaintiff and known as `The Grenadiers,' and is not a simulation of the names and expressions associated with plaintiff's program known as `The Grenadiers.'
"29. The proposed use of the slogan `Band of a Million Airs' in the title of the defendants' program or to designate the band featured in the defendants' program currently known as `The Jack Bundy Show' would tend to cause confusion in the minds of Milwaukee radio listeners because of the similarity between that slogan and the slogan `Band of a Million Friends' employed by the plaintiff as indicated in the 19th finding herein.
"30. On November 20, 1947, the plaintiff notified the defendant Midwest (in effect) that the latter's contemplated use of the name `Heinie' would constitute a violation of Bundy's agreement with the plaintiff limiting Bundy's right to use such name (15th finding herein) and requesting that said defendant refrain from any action in that regard that would violate the rights of the plaintiff. (Exhibit 10.)
"31. The evidence fails to establish that there is a probability that any irreparable loss to the plaintiff may result in the event of the use of the name `Heinie' in programs to be broadcast over the defendant Midwest's radio station WMAW.
"32. The evidence fails to establish that enforcement of restraint as to defendant Bundy's use of the name `Heinie' contained in said agreement (Exhibit 3) is reasonably necessary for the protection of the plaintiff's business or rights."
Clause (k) in the contract of August 20, 1932, is an agreement in restraint of trade. Cases have arisen out of many such agreements in Wisconsin. Laubenheimer v. Mann, 17 Wis. 559; Cottington v. Swan, 128 Wis. 321, 107 N.W. 336; My Laundry Co. v. Schmeling, 129 Wis. 597, 109 N.W. 540; Kradwell v. Thiesen, 131 Wis. 97, 111 N.W. 233; Madson v. Johnson, 164 Wis. 612, 160 N.W. 1085; Durbrow Commission Co. v. Donner, 201 Wis. 175, 229 N.W. 635; Wisconsin Ice Coal Co. v. Lueth, 213 Wis. 42, 250 N.W. 819.
The law has become well established through its application in the above and other cases. The difficulty always arises in the application of the law to the facts in each case. The following quotations from Milwaukee Linen Supply Co. v. Ring, 210 Wis. 467, 470, 471, 473, 246 N.W. 567, state the rules to be applied:
"The contract in suit is one in restraint of trade which is tersely defined as one whose `performance would limit competition in any business or restrict a promisor in the exercise of a gainful occupation.' Such a contract `is illegal if the restraint is unreasonable,' and such a contract `is unreasonable . . . if . . . it (a) is greater than is required for the protection the person for whose benefit the restraint is imposed, or (b) imposes undue hardship upon the person restricted.' Restatement of the Law of Contracts, secs. 513, 514, 515. It will be observed that the findings of the learned trial judge designated above as (17) and (18) find as facts that the contract in suit is unreasonable as violating (a) above, and in effect for violating (b). Finding (17) appears to us to be amply supported by the evidence as does (18) when other evidentiary facts found are considered in connection with it.
". . . But a contract in restraint of trade may be valid as applied to one set of circumstances, and invalid as applied to another set.
". . . The question always resolves itself into `what is a reasonable restraint with reference to the particular case.' Id p. 32. `Any restraint is unreasonable' which is more extensive `than the interests of the party with whom the contract is made can possibly require.' Id. p. 34. There is greater scope of restraint in contracts between vendor and vendee than between employer and employee. In the latter class cases there is `small scope for the restraint of the right to labor and trade and a correspondingly small freedom of contract.' In such cases `in order that the court may uphold and enforce a restriction, . . . the court must find that the facts alleged disclose a restriction on the employee reasonably necessary for the fair protection of the employer's business or rights, and not unreasonably restricting the rights of the employee, due regard being had to the interests of the public and the circumstances and conditions under which the contract is to be performed."'
The trial court in its memorandum decision, in its findings of fact and conclusions of law, and in the judgment clearly indicated that it was familiar with the law. Its findings of fact are supported by the evidence. They cannot be disturbed unless they are against the great weight and clear preponderance of the evidence. Depies-Heus Oil Co. v. Sielaff, 246 Wis. 36, 16 N.W.2d 386; Will of West, 246 Wis. 199, 16 N.W.2d 806; Angers v. Sabatinelli, 246 Wis. 374, 17 N.W.2d 282, 18 N.W.2d 705; Kearney v. Massman Construction Co. 247 Wis. 56, 18 N.W.2d 481.
The defendants claim upon the appeal that the court abused its discretion in refusing to award costs to each of the defendants. We find that the court was within its discretion in awarding costs as it did.
Both appellant and respondents submitted briefs containing more than fifty pages. Each attached a request that in case it should prevail it be permitted to tax costs for printing the same. Each stated that the long briefs were necessary due to the amount of factual information and the length of the record. The respondents will be allowed full costs for printing their brief.
By the Court. — Judgment affirmed.
When the contract containing the restriction involved in this case was entered into by plaintiff and defendant the latter was already in plaintiff's employ. As I read it the writing containing the restriction was not a contract of employment nor did it have anything to do with defendant's employment as a broadcast artist. It simply dealt with the booking services to be furnished by plaintiff and with restrictions and regulations of personal appearances by defendant and his band. It is generally held that a covenant the character involved here in order to be sustainable must be incidental to a lawful contract. Durbrow Commission Co. v. Donner, 201 Wis. 175, 229 N.W. 635. It is ordinarily contained in a contract providing for the sale of a business, professional practice, or property, or in a contract of employment. John D. Park Sons Co. v. Hartman (6th Cir.). 153 Fed. 24, 12 L.R.A. (N.S.) 135; Norfolk Motor Exchange, Inc., v. Grubb, 152 Va. 471, 147 S.E. 214, 63 A.L.R. 310. If the restrictive covenant has no reasonable relation to the subject matter of the contract which supports it, it cannot be said to be ancillary or incidental to the contract and constitutes an unreasonable restriction in view of the consideration which supports it. The restriction must be necessary in order to protect the rights which the contract of which it is a part secures to the covenantee. Samuel Stores, Inc., v. Abrams, 94 Conn. 248, 108 A. 541, 9 A.L.R. 1450.
It appears to me that in this case the restrictive covenant is not necessary to protect plaintiff's rights under a mere booking contract and that the restrictive agreement cannot be considered properly incidental to such a contract. It follows that the restraint imposed by the clause is an unreasonable one and that the trial court properly so held.
I am authorized to state that Mr. Chief Justice ROSENBERRY and Mr. Justice HUGHES concur in this opinion.