14

FEDERAL REPORTER.

attending to the various small and constantly arising details in such business. In 124 of those cases costs were collected amounting to the large amount demanded in this action. But these cases must be looked at distributively, and not collectively, to determine the reasonable compensation of the solicitor. The amount is charged in gross to the Celluloid Company for services in the whole 164 cases, and is equivalent to $36.64 for each case. The sum collected, including the two cash payments of $250 each, and deducting the amount of expenditures, is equal to $30.08 for services in each suit. The total charged, above the costs collected, would be $9.84 for each case; and, if the taxable costs collected be aRsumed to be charged only in the 124 cases in which costs were recovered, they would then stand as contingent fees in prevailing defenses of $39.83 per case, giving the solicitor for each case, where his client was successful, $49.67, and in the unsuccessful cases but $9.84; and the whole, with the exception of less than $2 per case, drawn from the purse of the adverse party. Whl1tever may be taken ss the rule for distributing these costs, or the charge made, the compensation claimed cannot be considered unreasonable or excessive, and the plaintiff cannot recover anything in this action. This conclusion obviates the need of considering the right of the plaintiff to maintain this action. Judgment for defendant.

OENTRAL TRUST Co. and another 'D. WABASH, ST. L. & P. By. 00. and others. (CITY OF ST. CHARLES, Intervenor.)1
(Circuit (Jourl, E. D. Missouri. March 25,1886.)
1.

TAXATION-ASSESSMENT OF RAILWAY PROPERTY-SECTION

1, ART. 10, CONST. Mo. The provisions of the act of the general assembly of Missouri, of July 80, 1877, and of the Revised Statutes of Missouri of 1879, (sections 6865-6900,) giving the state board of equalization exclusive power to assess railroad prop· erty, are not contrary to the provisions of section 1, art. 10, of the constitution of Missouri. Neither are said statutory provisions in conflict with that provision of the charter of the city of St. Charles which authorizes said city to levy and collect taxes "upon all real and personal estate, taxable by the laws of the state, " within its limits. . Under said statutes the state board of equalization has authority to decide that railway bridges within the city limits of St. Charles shall be assessed and taxed as part of the road-bed and superstructure.

2. SAME.

P.

SAME.

JReported by Benj. F. Rex, Esq., oftha St. Louis bar.

(''ENTRAL TReST

co.

V. WABASH, ST. I,. & P. RY.

co.

15

4.

LAWS-CONFLICT BETWEEN, AND CITY CHARTERS.

Semble, that where a city charter granted by an act of the general assembly of the state of Missouri conflicts with a law subsequently passed, as to assesflment of property for taxation, the charter must be held to be superseded to the extent of any confiict that may exist.

In Equity. Exceptions to master's report. This suit is to recover certain taxes, amounting to $11,000, alleged to have been assessed and levied bS the City of St. Charles, Missouri, under authority of its charter, upon the St. Charles bridge, for the years 1878 to 1884, inclusive. The facts are substantially as follows: The St. Charles Bridge Company, a joint-stock corporation, organized under the general laws of Missouri, constructed the bridge in question in the year 1871. It was intended to be used as a railway bridge, and has never been used for anything else. It spans the Missouri river at St. Charles, and 2,308 feet of the bridge and its approaches are within the corporate limits of that city. The bridge forms a connecting link and component part of the line of railway now owned by the Wabash, st. Louis & Pacific Railway Company, extending from the city of St. Louis to Kansas City, in the state of Missouri. July 8, 1878, the St. Louis, Kansas City & Northern Railway Company, which had used said bridge ever since its completion under a lease, as a part of its railway, pUl:chased the bridge, and continued to use it as before until it was succeeded in 1879 by the St. Louis, Kansas City & Northern Railway Company, which has used it as a part of its line of railway ever since. Prior to July 30, 1877, taxes were paid upon said bridge to the city 'of St. Charles, levied by the mayor and councilmen, under its charter and ordinances. On July 30, 1877, the general assembly passed an act giving the state board of equftlization exclusive power to assess railroad property, and since then the St. Charles bridge has been returned by its owners to that board as part of the road-bed and track of the St. Louis, Kansas City & Northern Railway, and its successor in title, the Wabash, St. Louis & Pacific Railway, for the years 1878 to 1884, inclusive: and the board has annually assessed the property as a part of the track of said rail way companies for all the years above named, except the year 1884, for which the assessment had not been made at the time the intervenor's petition was filed. The city,'s part of eaid general tax upon said property for said years has been paid over to the respective treasurers of said city. The assessor of the city of St. Charles has, however, during all of said years, assessed that part of the St. Charles bridge located within the city limits separate from the railroad track upon it. It is not claimed that he had any authority for so doing except the provisions of the city charter and ordinances. The question is as to how far the rights of the city under its charter have been affected by the acts of the general assembly.

16

FEDERAL REPORTER.

The city of St. Charles was incorporated as a municipal corpora· tion by the general assembly of the state by an act approved March 10, 1864, which act, and the several acts amendatory thereof, were rednced into one act by an act of the general assembly approved March 1, 1869. Said last-named act provided that (article 6, §§ 1, 2) "the mayor and councilmen shall have power, by ordinance, to levy and collect a general tax upon all real and personal estate taxable by the laws of the state 'within the city, not exceeding one per cent. upon the assessed value thereof," and, in addition thereto, "to levy a tax not exceeding one-half of one per cent. upon all taxable property within the city, to provide for a sinking fund." The mayor and aldermen of the city passed an ordinanoe, approved November 1, 1877, which provided (section 1) that"For the snpport of the city government, the payment of the city debts, and improvement of the city, a tax shall be levied upon the following objects owned or employed within the city: Fi1'St. Lands and lots, including the houses and all improvements thereon, whether completed or not. Second. Leasehold interests in houses, lands, or lots, for a term of ten years or more, as lands. * * *" "Sec. 4. 'fhat a general tax of one-half of one per cent. of the assessed value thereof shall be levied and collected on all property subject to taxation by the laws of the city, real, personal, and mixed. "Sec. 5. That a special sinking-fund tax of one-half of one per cent. shall be levied and collected on all property SUbject to taxation under the laws of the city." "Sec. 21. That real estate shall be assessed at the assessment which commenced on the first day of Augnst, 1876, and shall only be required to be assessed every two years thereafter." "Sec. 69. That this ordinance is intended to be in compliance with, and in conformity to, the act of the general assem bly of the state of Missouri entitled 'An act concerning the assessment and collection of the revenue,' and all the sections, and parts of sections, of the said act, so far as applicable, are hereby incorporated into, and made a part of, this ordinance, and the same shall be recognized and considered as controlling authority by the city collector, as far as practicable." The mayor and aldermen of the city of St. Charles, on July 31, 1880, passed an ordinance entitled" An ordinance to amend ·An ordinance in relation to revenue, ,,, approved November 1,1877, repealing all ordinanoes and parts of ordinances in conflict therewith, providing (section 3) that "there shall be annually levied and collected on all property in the city, real, personal, and mixed, subjeot to taxation, a tax of fifty centR on the hundred dollars of valuation, for general purposes, and a sinking-fund tax in addition thereto for the payment of interest on the bonded indebtedness of the city," etc. The first section of this ordinance was as follows: "For the support of the city of St. Charles, the payment of the oity debts, and interest thereon, and for the improvement of the city, a tax shall be levied annually upon all the property within the city, real and perBonal, taxable as hereinafter provided;" and by an ordinance of May 28, 1881, this section was amended so as to read: "For the support

CENTRAL TRUST CO. V. WABASH, ST. L. & P. RY. CO.

17

of the city of St. Charles, the payment of the city debt and interest thereon, and for the improvement of the city, a tax shall be levied annually upon all the property within the city, real and personal, taxable by the laws of the state of Missouri." In the year 1871 the general assembly inaugurated a general system for valuation, and the act above referred to, giving the state board of equalization power to assess railroad property, was passed in 1877. The act of 1877 has been incorporated in the Revised Statutes of Missouri of 187!J, which (sections 6865-6900) prescribe the manner in which taxes shall be levied on all property in the state owned, hired, or leased by any railroad company, for state, county, or other municipal or local purposes; require all railroad companiefil to furnish annually a sworn statement to the state auditor, giving in detail the length of the road, of double or side tracks, with depots, water-tanks, and turn-tables, and the length, of such road, double or side tracks in each county, ml.micipal township, incorporated city, town, or village through or in which it is located in this state; · · lit and at the same time to fumish to the- clerk of the county aourt of each and every county in the state in which said road may be located a duplicate statement of its property in such county; shall examine the statement so made, and determine the' 'correctness as to description of property and valuation thereof, and forward aceitificate of their action to the state auditor; and provide how any ascertained errors in the statementI' may be corrected; direct that the state auditor shall lay before the state board of a,ssessment and equalization the returns made to him by the railroad companies and county clerks; constitute the governor, secretary of state, state auditor, state treasurer, lind attorney general of the srate the board of assessment and equalization; authorize such board to assess, adjust, and equalize the property of tbe railroad companies of the state included in such returns, with power to increase or reduce the. aggregate valuations made by the railroad companies or the county courts in their respective returns. and to assess, adjust, and equalize any other property belonging to any railroad company in the state of the character above stated, as to which no returns have been made, but which may be otherwise known to them; and shall apportion the aggregate value of all such property to each county, municipal township, city, or incorporated town according to the ratio which the number of miles of such road completed in such county, municipal township, city, or incorporated town shall bear to the whole length of the road in the state. The master, Mr. E. T. ALLEN, from whose able and exhaustive report this statement has been to a great extent copied, found and reported that "if any conflict exists between the provisions of the laws of the state regarding valuation of railroad property for taxation and the charter of the city of St. Charles, the charter must be held to be Buperseded to the extent of any such conflict, (State v. Severance, 55 v.27F.no.1-2

1.8

FEDERAL

REPORTER.

Mo. 378;)" but that the authority given by the charter of the city of St. Charles to its mayor and councilmen to levy and collect taxes "upon all real and personal estate taxable by the laws of the state within the city," is not taken away by the statutory provisions as to its valuation; that the legislation in reference to the assessment of railroad property is not contrary to the provision of section 1, art. 10, of the Missouri constitution of 1875; and that "the question whether or not the St. Charles bridge property should be included as a part of the road-bed and superstructure of the railway owning it, or assessed and taxed as a separate property, was one exclusively within the province of the state board of equalization to determinej" "and that inasmuch as that board has passed upon that question, for the years named, adversely to the contention of the city of St. Charles. the city of St. Charles is bound by that determination." Dyer, Lee et Ellis and F. W. Hinman, for intervenor. H. S. PrieBt and George S. Grover, for receiver. TREAT, J., (orally.) In the intervening petition of the city of St. Charles in the Wabash CaBe I have gone over the subject, and the exceptions to the master's report will be overruled. If I talked an hour I c.ould add,nothing to the exhaustive and analytical opinion given by the master in this case. He has gone through the whole subject in connection with the constitution and laws in great detail, and very accurately and correctly. The court, not only adopts his report in that matter, but his analysis and reasoning in regard to the case. The exceptions are overruled, and report confirmed.

ApOLLINARIS Co., Limited, v.

t)dHERER.

(Oirc,uit Oourt, S. lJ. New YO'/"k. March 16,1886.)
'rRADE-MARK-INFRINGEM:ENT-CONTRACT FOR EXCLUSIVE RIGHT TO SELL "HUNYADI' JANOS" WATER -- PURCHASE FROM PARTIES TO WHOM OWNER RIGHTFULLY BOLD-RESELLING. The owner of a spring of mineral water in Hungary entered into a contract with complainant him the exclusive right to export and sell the water under'its name of' Hunyadi Janos. "which he had adopted as a trade-mark, in Great Britain and America. Defendant applied to the owner to purchase the bottled water, but was refused, and purchased it from those to whom it had been sold in Germany, and sold it in the United States in bottles with the saUle label as that used by complainant. except that defendant's bottles, like all those sold by the owner, were stamped witli the words, "CAUTION. This bottle is not intended for export, and if exported for sale in * * * America * * * the pUblic is cautioned against purchasing it," while complainant's bottles were stam\led "Bole exporters." Held, that complainant was not entitled to an injunctIOn to restrain defendant from selling the water.

Roscoe Conkling and lIenry Melville, for complainant. Wayne MacVeagh and Emile Beneville, for defendant.

In Equity.

APOLLINARIS CO. V. SCHERER. 'WALLACE,

19

J. The complainant has applied for an injunction pen-

dente lite to restrain the defendant from importing into the United

States or selling here any water under the name or designation "Hunyadi Janos," or offering to sell any water in bottles with that name upon them, or with labels like those adopted and used by the complainant to designate and distinguish the water from other mineral waters. 'l'he defendant is importing and selling bere the water of a certain mineral spring of Hungary owned by one Andreas Saxlehner. The waters are known as "Hunyadi Janos," the spring having been christened by that name by Saxlehner, and the name as applied to the water having been adopted by him as a trade-mark. Prior to the time of the acts complained of Saxlehner transferred to the complainant the sole right to export the waters from Hungary to Great Britain and America, and to sell them in these countries and to use tbe trade·mark. For the more effectual protection of their respective rights Saxlehner and the complainant adopted labels to be affixed to tbe bottles of water to be sold by each bearing the name "Hunyadi Janos" and other distinguishing devices. The labels used by Saxlehner contained the following printed notice:
"CAUTION. This bottle is not intended for export, and if exported for sale in Great Britain, her colonies, America, or other transmarine places, the public is cautioned against purchasing it. ANDREAS SAXLEHNER."

The labels used by the complainant contained in the place of this notice the following:
"Sole exporters. The Apollinaris Company, Limited, London."

Thereafter all water sold by Saxlehner to purchasers in Germany and other parts of continental Europe was sold in bottles with the label which had been adopted for him, and all the water sold by the complainant in Great Britain and the United States was sold in bottles with the label adopted for its use. The complainant established an agency for the sale of the water in this country, but, as it now asserts, is unable to maintain its own prices for the article because the defendant purchases the water in Germany from persons to whom it bas been sold by Saxlehner, imports it, and sells it here at lower prices. It is shown that the defendant purchases the water in bottles under the label adopted by Saxlehner containiFlg the cautionary notice, and that he does this after having applied to Saxlehner to sell him the water and been refused and informed by Saxlehner of the complainant's rights. The bill of complaint proceeds in part upon the theory that the defendant is infringing the complainant's trade-mark in the name and label applied to the water, but all the averments in this behalf may be disregarded as irrelevant to the real question in the case. No doubt is entertained that the name when applied to the water is a valid trade-mark, and that the complainant should be protected against the unauthorized use of the trade-mark by another.. The ,complain-

20

FEDERAL REPORTER.

ant would be entitled to this protection entirely irrespective of tile registration of its trade-mark in the patent-office. The same observations apply to the use of the label. The complainant has a common· law right to the name arid the label as a trade-mark by which its mineral waters are identified; and as the necessary diversity of citizenship exists between the parties to confer jurisdiction upon this court, the only effect of registration is to afford and perpetuate the evidence of the complainant's title. But the defendant is selling the genuine water, and therefore the trade-mark is not infringed. There is no exclusive right to the use of a name or symbol or emblematic device except to denote the authenticity of the article with which it has become identifLed by association. The name has no office except to vouch for the genuineness of the thing which it distinguishes from all counterfeits; and until it is sought to be used as a false token to denote that the product or commodity to which it is applied is the product or commodity which it properly authenticates, the law of trade-mark cannot be invoked. 'fhe real question in the case is whether the defendant is unlawfully interfering with any exclusive right of the complainant to control the sale of the water in the territory ceded to the complainant for that purpose by Saxlehner. It is manifest that the acts of the defendant tend to deprive the complainant of the substantial advantages which it expected to obtain from the privilege transferred to it by Saxlehner. It can no longer maintain its own prices forthe mineral water, or hold out the inducements it formerly could to the agents it has selected to introduce the article to the patronage of the public,and build up a trade. 'It can no longer protect itself as efficiently ll.gainst the chances of a spurious artide being palmed off upon the public as its own. It is therefore measura:bly deprived by the acts of the defendant of the profits and benefits which it contemplated when it purchased from Saxlehner the exclusive right of importing the water into this country and selling it here. If the complainant eould a.cquire an exclusive right to sell the water here the case would be plain. If it could not, it still remains to consider whethel· the defendant has violated any dllty which the law recognizes in his relations to the transaction. 'fhere would seem to be no doubt that the agreement between Saxlehner and the complainant was a valid one. He had the right to dispose of his property in the product of his spring as he saw fit, and it is not apparent how the transfer of a part of his exclusive right to vend the water, by which a territorial division in its enjoyment was created, can be deemed obnoxious to any principle of public policy as tending to create a monopoly or an unlawful restraint of trade. If Saxlehner were now endeavoring to compete with the complainant in the sale of the water in the ceded territory, his conduct would furnish a ground for equitable jurisdiction and the remedy of an injunction because of the inadequacy of a remedy at law. Bisp. Eq. 463. It is equally clear that if the defendant were co-

APOLLINARIS CO. 'V. SCHERER.

21

operating with Saxlehner collusively to violate the complainant's right to the exclusive sale of the water he also would be restrained. In such a case the foundation of equitable redress would be the breach of covenant on the part of Saxlebner, and the defendant when acting in aid would be identified with Saxlehner and amenable to the remedy as though he were Saxlehner himself. But it is important to bear in mind that the case would be one for equitable cognizance, and the remedy of an injunction merely upon the ground that the complainant's damages arising from the breach of cQvenant could not be reparably redressed at law. It was not possible by any contract or grant between Saxlehner and the complainant to create a territorial title to the products of the spring; no such title is known to the law of personal property. No analogy can be drawn from the law of patents for inventions, because the title to this species of property is purely statutory; and it is by force of arbitrary law alone that the title in the incorporeal property can be subdivided into territorial parts. The decisions which have been relied on in argument as sustaining the right of the owner of a patent to prevent a sale or use of the patented thing outside of the territorial limits for which a license has been granted, although the license authorized a sale and the sale was made within the territorial limits ·of the license, have therefore no application to the present case. The rights of the complainant rest purely in covenant. If Saxlehner himself should sell the water here the purchaser would acquire title to the article with all the rights of a proprietor to use it or to do with it as he might see fit. Suppose the purchaser should be fully aware at the time of buying that Saxlehner had covenanted with the complainant that the latter alone should have the privilege of selling the water here, could it be seriously questioned that the purchaser would nevertheless acquire a perfect title? Although the defendant was fully aware when he bought the water which he has imported from those to whom Saxlehner had sold it of the terms of the agreement between Saxlehner and the complainant, that circumstance does not help the <:omplainant's clj-se. There was no breach of covenant on the part of Saxlehner; on the contrary, he did all that was in his power to carry out the agreement between himself and the complainant. The defendant did not expressly or impliedly assume not to sell the water within the territory ceded to the complainant; on the contrary, he repudiated any recognition of such an obligation. The insuperable difficulty in the way of the complainant is that any purchaser of the water, wherever he purchases it, acquires a valid title to treat it as his own property. Upon first impression it would seem that the defendant cannot be justified in a course of conduct which is calculated if not deliberately prompted by the design to deprive the complainant of the benefit of its contract with Saxlehner, and that there must be some principle ·of equity which can be invoked to prevent him from doing that which

22

FEDERAL REPORTER.

Saxlehner himself would not be permitted to do. The interposition of a court of equity is frequently invoked and always successfully to restrain unlawful competition in trade. All practices between rivals in business which tend to engender unfair competition are odious and will be suppressed by injunction. Croft v. Day, 7 Beav. 84; Harper v. Pearson, 3 Law T. (N. S.) 547; Stevens v. Paine, 18 Law T. (N. S.) 600; Glenny v. Smith, 11 Jur. (N. S.) 964; Mack v. Petter, 41 Law J.Ch. 781; Burgessv.Burgess, 3 De Gex, M. & G. 896; Glen d: H. Manufg 00. v. Hall, 61 N. Y.226; Goodyear Rubber 00. v. Goodyear's Manuj'g 00., 21 Fed. Rep. 276; Genin v. Chadsey, 2 Brewst. 380; Avery v. Meikle, 17 West. Jur. 292; Bell v. Locke, 8 Paige, 75. But the adjudications which illustrate the principle rest upon the ground that a merchant or trader is entitled to protection only against dishonest or perfidious l'ivalryin his business. He will be protected against the fraudulent or deceitful simulations by a competitor of tokens which tend to confuse the identity or business of the one with the other, and against the false representation of facts which tend to mislead the public and divert custom from the one to the other. Anything short of this, however, is lawful competition. Accordi.ngly the courts will not attempt. to prevent the sending of circulars or advertisements by one to the customers of a competitor in business although designed to alienate patronage, if they contain no deceitful or misleading statements. The Jaw does not deal with motives which are not accompanied by a wrongful overt act. If the defendant is legally justified in buying where he can and selling as he chooses, it is not material whether he is actuated by a desire to annoy the oomplainant or to promote his own pecuniary interests. The complainant is without remedy and the motion for an injunction be denied.

ESTES

and others v.

LESLIE·

and others.

(C'trcuit Court, 8. D. NWJ York. April 8,1886.)
TRADE NAME-CHATTERBox-INFRINGEMENT.

The use of the word "Chatterbox," in connection with the same method of selection and illustration of stories, form of binding, and vignette, by defendants, l.eld, an infringement of complainants' right in the name.

In Equity.

John L. S. Roberts, for orators. Oharles E. Rushmore, for defendants.
WHEELER, J. This case is similar to Estes v. Williams, 21 Fed. Rep. 189, in respect to the right of the orators to the exclusive use