History

Evyan of New York City. Beginning in the mid 1930s, the Austrian Baron Walter Langer von Langendorff and his British born wife, Evelyn Diane Westall, known as Lady Evyan (a contraction of "Evelyn Diane") challenged the French perfume industry with the launch of the Evyan perfume line in New York.

The Baron, also known as Dr. Walter Langer, was a very well-educated chemist, who was very deeply in love with his wife, and subsequently named their fragrance house after her, in addition to it becoming a holding company comprised of Dr. Walter Langer Co, Westall, Westfall, Estall, Felice Co and Hartnell.

The Langers were looking to create a perfume for American women with no pretentious connections to France. The couple made every effort to have every part of the fragrance, as well as the packaging made in America. The Evyan perfume company viewed fragrance as art and employed only the finest of ingredients to be used.

Evyan also traded under the early name of the Evelyn Westall Company of New York. 

Overhamm v. Westall, 271 A.D.2d 492 (1946)

Dec. 13, 1946 · New York Supreme Court, Appellate Division

271 A.D.2d 492

Wolf J. Overhamm, Trading under the Name of Parfums Hartnell Distributors, Appellant-Respondent,

v.

Evelyn Westall, Individually and Doing Business under the Name of Evelyn Westall Company, et al., Respondents-Appellants

OPINION. Author: Peck, J.

Plaintiff is a wholesale distributor of perfumes, defendant Westall is a packager of perfume and defendant Danger is a manufacturing chemist. Defendants are also husband and wife.

On February 15, 1943, defendant Westall made a contract with Nanty, Inc., (represented by a Mr. Rendigs, its president and owner, [trademarked name of firm Nanty, Inc in 1943.]) whereby she acquired from Nanty the right to use the name "Hartnell”, the dressmaker of the Queen of England, in connection with the sale of perfume in America for eight years. The agreement provided for payments to Nanty on a royalty basis. The contract also required defendant Westall to appoint a distributor for products bearing the trade name “ Hartnell ” and an addendum to the contract granted to the distributor the right to cure any default of Westall under the contract. On the same day, defendant Westall and plaintiff Overhamm entered into a contract by which plaintiff Overhamm became the exclusive distributor for the same territory and time of all perfumes manufactured under the designation “ Hartnell ” and bearing trade-marks connected with such products, agreeing to purchase his requirements from defendant Westall at a cost related to the retail price. This agreement contained a covenant on the part of defendant Westall that she would not attempt to sell to any other person any of these products. Plaintiff Overhamm agreed to use his best efforts to promote the salé of said products at his own expense, committing himself to certain minimum sales. The contract was negotiated between plaintiff Overhamm and defendant Langer, who was to manufacture the perfumes to be sold by Westall under the contract and, while Langer was not a party to the contract, it provided that he would make the deliveries required if Westall failed to do so.

The perfumes handled under the contract were made in accordance with formulae developed and owned by defendant Langer. The perfumes were sold under three trade-marks registered by defendant Westall — “ White Shoulders ”, “ Menace ” and “ Gray Diversion ”. Through plaintiff Overhamm's efforts a large business was built in these perfumes and for a period of more than two years, up to June, 1945, all went well between the three parties and they all shared in the prosperity of the business.  

Sometime in 1944, however, defendants Westall & Langer had demanded additional compensation for supplying perfume to plaintiff Overhamm and the parties agreed that plaintiff would pay to defendant Westall, in addition to the scheduled payments, a sum amounting to 6% of sales. Defendants Westall & Langer claim that this additional payment was for extraordinary services rendered by defendant Langer in meeting plaintiff’s greatly increased requirements. Plaintiff Overhamm claims that the arrangement was merely a guise for an unlawful price increase. But the payments were made and as a result, on June 15, 1945, Nanty made demand upon Westall for royalties on these additional payments. Westall rejected the demand in a letter dated June 20, 1945, and added: “In view of your attitude and your interpretation, we also wish to consider the present contract as void and ended.” Defendants had advised plaintiff Overhamm of the dispute with Nanty and of their intention to reject Nanty’s demand but had not intimated any intention of canceling the contract. The first notice plaintiff Overhamm received of that possibility was the advice of a fait accompli on June 21, 1945, when defendant Westall sent plaintiff Overhamm a copy of her letter to Nanty and stated: :"This is to inform you that at the present moment there is no contract with Hartnell. In view of Mr. Rendigs’ attitude, we will have to suspend further shipments until the situation is clarified.” On the same day Nanty wrote to defendant Westall acceding to a termination of the contract.

This left plaintiff Overhamm in a most precarious position. He could not fill orders on hand for perfume and his entire business was in jeopardy. Confronted with the emergency, plaintiff Overhamm went directly to Rendigs, who was leaving for England the following day, and offered to make the royalty payment which Nanty had required. The offer was refused on the ground that the contract had terminated. Plaintiff Overhamm succeeded on the spur of the moment, however, in making a contract directly with Nanty, by which the right to distribute “Hartnell” perfumes in America was given to plaintiff Overhamm.

Plaintiff Overhamm thereupon advised defendants Westall & Langer that he had succeeded in making an agreement with Nanty and tried to make an arrangement with defendants Westall & Langer for the continuation of his perfume supply. Plaintiff Overhamm did not show defendants Westall & Langer a copy of his contract with Nanty or tell them the terms thereof, a point to which defendants Westall & Langer attach importance, and the defendants Westall & Langer refused to make further shipments or any arrangement with plaintiff Overhamm.

Plaintiff Overhamm then found a new supplier of perfume which he proceeded to market under the name “Hartnell” with new scent names. Defendants Westall & Langer in turn found a new distributor for their perfumes which they continued to market under the names “White Shoulders, "“Menace” and “Gay Diversion”.

Plaintiff Overhamm claims that the marketing by defendants Westall & Langer of perfumes under these trade-marks is a breach of the negative covenant in the agreement between Westall and plaintiff Overhamm and will cause confusion in the trade and irreparable damage to plaintiff Overhamm. The complaint in two causes of action seeks an injunction against defendants Westall & Langer marketing perfumes under the names “White Shoulders”, “Menace” and “Gay Diversion”, except through plaintiff Overhamm, and damages for the alleged breach of contract. Defendant Westall counterclaims for the balance of an account owed by plaintiff Overhamm for past purchases, to which plaintiff Overhamm interposes the defense that certain prices charged were a violation of the Office of Price Administration law.

The question raised by defendants Westall & Langer's appeal is whether the second cause of action and counterclaim were tried. The court wrote an opinion finding for the defendants Westall & Langer on both the first and second causes of action and on the counterclaim.- The court withdrew this opinion and handed down a revised opinion in which it found for the defendants Westall & Langer on the first cause of action alone, leaving the second cause of action and counterclaim undetermined on the ground that they had not been tried. We find that the second cause of action and counterclaim were not tried and, therefore, affirm the judgment in those respects, except that we think the counterclaim should be heard by the court without the intervention of a referee and that the plaintiff Overhamm should not be required to post a bond to secure any judgment which may be recovered on, the counterclaim.

The court found for the defendants Westall & Langer on the first cause of action on the ground that plaintiff Overhamm had deliberately destroyed the contract under which he seeks relief by making a new contract directly with Nanty. We reach a different conclusion. If the contract was destroyed, it was by defendants Westall & Langer's breach before the plaintiff Overhamm made his contract with Nanty. We think we are required, however, to look beyond the contract and regard the over-all equities. While there has been sharp practice on the part of both parties and we might decline equitable relief on the ground that plaintiff Overhamm's hands are not altogether clean, we are persuaded to regard the relative merits of the parties ’ positions and the relative prejudice to which they will be put by the granting or denying of an injunction. In this view, while we do not condone plaintiff Overhamm's action in making a contract directly with Nanty without advice to defendants Westall & Langer of his intention, we are impressed with the fact that plaintiff Overhamm was confronted with an emergency and driven to prompt action of self-preservation by the precipitous action of defendants Westall & Langer, in callous disregard of plaintiff Overhamm's rights and interests, canceling the underlying contract with Nanty. Not only did plaintiff Overhamm have a right under that contract to remedy any default of defendants Westall & Langer thereunder and to maintain the contract in force, but elementary good faith required defendants Westall & Langerto act with regard for plaintiff Overhamm's interest in the contract. Defendants Westall & Langer's action was a clear breach of contract and plaintiff Overhamm is entitled to his remedies both legal and equitable unless he has forfeited them by his own action.

Special Term has held that he did forfeit his rights, suggesting that instead of pursuing the course of making a new contract with Nanty he should have elected to treat the contract between Nanty and defendant Westall as a continuing obligation insofar as his rights were concerned. True, he might have done this (we know not with what legal success) but at the risk of wrecking his business and incurring huge losses. While believing that he should have proceeded with more frankness in relation to the defendants Westall & Langer, we cannot be unmindful of the fact that defendants Westall & Langer had shown him so little consideration and that he was required by Mr. Rendigs’ impending departure for London to take hasty action.

What weighs with us most heavily, however, is that the business in perfumes under the names “White Shoulders," “Menace” and “Gay Diversion” was built up by plaintiff Overhamm. Although defendants Westall & Langer owned the trade-marks, the public association of the scent names was with the name “ Hartnell ”, and they became trade-marks “ connected ” with Hartnell products, as to which plaintiff Overhamm had exclusive distributor’s rights under his contract with defendant Westall, and the value of the names lay entirely in a public acceptance derived from plaintiff Overhamm's efforts and expenditures. Defendants Westall & Langer's present marketing of perfumes under these names is bound to be confusing, a substantial interference with plaintiff Overhamm's business and an unfair appropriation of name value attributable to plaintiff Overhamm's efforts. It is not unfair to defendants Westall & Langer to disallow their use of trade-marks, the value of which stems from plaintiff Overhamm's efforts and an association with the name “ Hartnell ”, as to which defendants Westall & Langer surrendered all rights. It is unfair for plaintiff Overhamm, who has the sole right under all the contracts involved to distribute perfumes marketed under the designation “ Hartnell ” and bearing trade-marks connected with such products, to be subjected to the competition of defendants Westall & Langer's use of scent names whose public acceptance lies entirely in their connection with the name “Hartnell” and plaintiff Overhamm's exploitation of both the “Hartnell” and scent names.

As to defendants Westall & Langer's argument that the contract between plaintiff Overhamm and Westall ended for all purposes and plaintiff Overhamm can no longer assert any claim under the negative covenant, and plaintiff Overhamm’s argument that the contract obligations remain, we do not think it necessary to decide to what extent, if any, the contract survived. It remained performable at least to the extent of defendants Westall & Langer's supplying plaintiff Overhamm with perfume which he could and wanted to buy from defendants Westall & Langer and market under the trademarks in question. If terminated, it was by defendants Westall & Langer's act and breach. The contract, the prosecution of the contract by the parties for two years and defendants Westall & Langer's breach created rights and equities we must realistically appraise. While they have their inception in the contract, they do not end in the contrast.

We believe that the equities of the ease so far preponderate in plaintiff Overhamm’s favor that the defendants Westall & Langer should be enjoined from marketing perfumes under the names “White Shoulders,” “Menace” and “Gay Diversion”, except through plaintiff Overhamm, and that the judgment should be modified by granting the injunction and by striking the reference of the counterclaim to a referee and the requirement that plaintiff Overhamm post a bond, and otherwise should be affirmed.

Does, Cohn, and Callahan, JJ., concur; Martin, P. J., dissents and votes to affirm insofar as the judgment dismisses the first cause of action, votes for dismissal of the second cause of action and concurs in the disposition with reference to the counterclaim.

Judgment modified by granting the injunction as indicated in opinion and by striking the reference of the counterclaim to a referee and the requirement that the plaintiff Overhamm post a bond, and otherwise affirmed, with costs to the plaintiff Overhamm. Settle order on motion. 

The company also used the name Estall and launched a fragrance in 1948.

Elizabeth Arden organization acquired Chesebrough's former Parfums International, Evyan and Erno Laszlo in 1988, adding Faberge in 1989.

ELIZABETH ARDEN, INC. (formerly French Fragrances, Inc.) acquired Elizabeth Arden skin care, cosmetics, and fragrances brands, the Elizabeth Taylor fragrances brands and the White Shoulders fragrance brand in 2001.