22, 1873, it is difficult to perceive any patentable merit in them. In the machines then in use for similar purposes are to be found like mechanical appliallces, somewhat different in rorm, but adapted to perform exactly the same functions. Under these circumstances, the inventive thoughtfulness of the patentee ought to be manifest; and, certainly, his conception ought not to be within the scope of mere mechanical suggestiveness or skill. Upon the ground alone that the claims referred to do not de::icribe a: patentable iqvention, irrespective of the othedeatures of the machine described in the patent, this suit cannot be sustained, and it is therefore unnecessary to consider the question of infringement. The bill is dismissed, with costs.
Low lit al· .". FELS. 1
(Cireuit Court, E. D. PennlJ1flvania. Apri120. 1888.)
One who in good faith uses a label in ignorance of the fact that is another's trade-mark will be restrained by injunction from further using the same; but if the <'wner of the trade·markhas'liad knowledge of such use of it, 'and through indifference or ne:gligence bas taken no steps· to protect . his rights, he is not entitled toan account of sales or damages. ,
In ,Equity. Bill for infringement of On bill, answer, and proofs. " ,. Alfred Low,and Robert Haydon, of London, England, trading as :aw, Son & Haydon, filed a bill against Joseph Fels, trading as Fels &'00., averring that they and their predecessors were, and had been for a time, manufacturers of soaps and perfumery,especially of a certain soap known as" Brown Windsor Soap," distinguished and recognized by certain well-known marks. stamps, and labels, the property of compHlinants; that Said soap had attained ll great reputation by reason, of its ,superipr and was e.xtensively purchased and uscd by thereby yielding large profits to complainants; that the said mlt1ks, stampS'. and labels, having been employed for a long time past, hadbecomeestablished in the public mind asjndicating that the goods bearing tbem the respondent had been for som'e were the product of time past engaged in manufactUring and venMng a· cOU1pound to. resemble the said "Brown Wind&or, Soap," being colored, marked. stamped, and labeled in imitation of complainants' goods; that such manufacture had been beguil by respondent long after complainants' soap had acquired its, great reputation ; that by reason of the imitation aforesaid, respondent had deceived and enabled others to deceiye the community, thus selling large quantities of his own products, and inflicting a corresponding injury upon the complainants. The biHthen demanded answers' to certain interrogatories embodying the facts.
Reported by C. Berkeley Taylor, Esq;; of the Philadelphia bar.
andpray;ed restraini:Qgthe further and sale by re&pomientof soap. U1;J.rked, staIllped, and labeled in imitation an account of ,the proceeds of the aoap so manufactured alld sold bYthfilrespondent in violation of the rights of complainap.ta. . .The· respondept .pleaded that," soaps like those alleged in the said to be imitatioDSQf the soap as made and sold by the ,complainants, ll;Ild the marks, and devices on the to be in of the labels oUhe complainants, and the packag4'lSalleged to be .imitations of complainants' packages in size, sl:lape, color, etc;, havebellll. and! sold in open market in many parts of the United States, particularly in;the district of Pennsylvania, with the knowledge of the complainants and the parties whose business they allege to have succeeded to, for a period of more than twenty-one years continuously last past." The case was referred to an examiner, who reported the testimony taken. It appeared therefrom that the goods of compliiinants!had never had an extensive sale in the United that ()ftheIll had been manufactured and sold by many persons, with the undoubted knowledge of complainants; and that it had been generally understood that the name and labels were one who might desire to , Fred'k.lf·.:$nr:ick8 aIia ·. D·. Maxwell, for complainantsthat the lapse of not bar their right to an injunction. Taylor v. Carpenter; 3 Story, 46S';Gillottv. Estf!1brook, 48 N. Y. 374; Wolfe v. Barnett, 24 L!t. Ann. 97; Lazenby v. White, 41 Law J. Ch. 354; Mq,nufactllTingCo:v.Spear, 2 Sandf. 59\J;Brown,Trade-Marks, (2d Ed.) § 681. Not only are complainants entitled to an injunction, but to an accounting.. Moet 578; V. Rdelsten, 1 De Gex, J. &; S. Ul5; Millv. 0. 338; Morg;anv. T"oxell, 57 How. 121; Holt v. S69. . ; ,Geo. P. .BuTzberger, for respondent""",!Admitted,t!lat an. injunction 01,1ghili ,to issue, and, before any costs had been to the pleadipgs,had a decree to be enwred by but denied that there ",a.s allY liabillty to an account. .. Relief ot this kin\i is constantly refused, 'even when the' right of the party to an rnjuriction as in case of acquiescence'or want of fraudulent ·intent.";Mb'Lean·v.Fleming. 96 U. S. 245. Iri'BaT1'ison v. Taylor,ll Jur. (N i S; )408, a decree was refused when the delay had been only one year. In ,B.aTd v. Law,T. (::N. 8.)747, two years. In Estcourtv. Essence Co., . :L,·.. R·...,1.0 ·.. ev,e.n ye.ars '.. The.rule .. to la.c. thiSCQu.n.try., 00. v. (iarner, 4 Amer. Law T.;Rep. (N. S.) 176. Therecan tio I'D account of accruing before the respondent became aware of ,complainants' prior ownership.. Edelsten v. Edelsten, 1 De Gex, ''-.& 199; 'Moet v; ' Oouston; 'SS' Beav. 578.. See, also, Kittle·v. Hall, -29 Fed. Rep. 511; Holt v.MenendiJ2!, 23 Fed. Rep. 869; Sugar Co. v. Sugar Co., Costs8Ccruing the filing of the bill should not lie ilnposed., Couston, s,!-£pTa,' 8 Mylne &; C. 838, 858.' "
,; . ".; I,:
notentiUed to an account. For years prior to' the date of suit they had notice that their trade-mark was comJ;llon pydel1-lel"s in soaps in this country, and
.:!, ; 1 i
, ' !" ,:
CO. ". MORSE.
did n<,thing to prevent it until.abOl:\tthe tim&of filing> this hill. The respondent's acts cOIuplainedoHall within the interval specified. Furthermore, such use had been practiced by all the princit>al' dealers in soaps here. for nearly 20 years prior. to the date of suit; and the, com'" plainants, dealing in the markets ofthis country, as they were\ahould be presumed to have knowledge of this fact. If they had not, it was becauseofindifference to their interests, orlackbf There i$; no evidence .of fraud on the respondent's part. He did not e\1enknow of the complainants' existence, or of the existence of the rights they set up. To hold him liable to account for his past sales, and damages to· thE" complainants, in view of such laches, would, be unjust. He 000cedes the complainants? right to an injunction, and an injunction will therefore be·granted.
W ASBINGTON INs. Co. ,.
Di8triet (Jowrt, No D. NtIW York.
June 27, 1888.)
JUDGMENT-RES ADJUDIOATA-ADHIRALTY-IN REM AND IN PERSONAM.
Where the insurers of a cargo 'of grain which was destroyed have pall) 'the loss'",nd become subrogated to the rights of the insured, and· obtained a decree in,.em in the United States circuitc\onrt charging the boat with liability for the loss.such decision is conclusive of a libel in per8onam,in the diatrietcourt whereby the insurers seek to charge the owners of the boat with liability as common carriers. .
In Admiralty. , . This is a libel in personam by Washington Insu1'llnce Company against Henry Morse, Alanson Morse, and Charles E. Wager, as common carriers. Edward D. McCarthy, for libelants. Clinton, (J/ark <t Ingram and Spencer Clinton, for respondents Mo:rse. Hyland <t Zabriskie, for respondent Wager.
COXE, J. In May, 1883, the libelants insured a cargo of grain owned by Plankinton & Co., which. the respondents agreed l!8fely to transport from Buffalo to New York on board the. canal-boat Worden, propelled by the steam Sydney. The cargo having been lost in transitu the libelants paid the loss to Armour,Plankinton & Co" the insured parties, and, being subrogated to their rights, bring this personam against the respondents 8.8 common The libelants have· heretofore obtained a decree in rem against the boats. The. facts fullyaPr pear in The Sydney, 27 Fed. Rep. 119, 23 Fed. Rep. 88, and I1U1I.£ran. 00. v. post, 364. It is thought that the decision of the circuit court is conclusive .of this action. 'l!he Syd'M!J' 27 Fed. Rep. 1,19. . SOme 4as been taken, but the facts are c4anged. In
of one of the briers submitted by respondents,"the theory of the libel in rem against the Sydney and the libel in personam at bar is the same." There is no way fairly to distinguish the two cases. In the light ofthis controlling authority the situation is a simple one. Armour, Plankinton & Co. t as owners, had a cause of action against the respondents as common carriers. Armour, ,Plankinton & Co. were alone insured as owner,s of the cargo. By paying them the libelants were subrogated to all their rights., Morse & Co., as carriers and advancers, were also insured, but it was for a520 only, the extent of their actual pecuniary interest in the cargo. " ' The considerations now urged by the respondents may properly be presented to the ,circuit court on appeal, but it is thought that this court cannot with propriety consider them. It follows that the libelants are entitled to a decree for the amount agreed upon at the trial, with costs.
PROVIDENCE WASHINGTON INS.
(District Court. N. D. New York.
February 28, 1888.)
ADHIlU.LTY-F'ROCEJi1OINGS IN REM AND.IN PERSONAM.
An action inaCimiralty in rem is not a bar to an action in peraonam, growing out of the same facts, and,the respondent in the action in peraonam is not en· titled toa stay of the proceedin,l\'s pending an appeal in the action in 'rem.
In Admiralty. Libel in personam. Edward D. McCarthy, for libelants. Hyland Zabriskie, for respondent Wager. Olinton Clark, for respondents Morse.
COXE, This is a motion, in an action in personam, by the respondent Charlys E. Wager, for a stay pending an appeal to the impreme court, taken 'in an action in rem, growing out of the same facts. The Sidney, (Di;;t. Ct. ,) 23 Fed. Rep. 88; The Sidney, (Cir. Ct. ,) 27 Fed. Rep. 119. It is entirely clear that the suit in rem is not a bar to the present action. Iii. view ofthe authorities it is, at least, doubtful whether the respondent is right in his theory that the libelants can, in the action in rem, by motion andamendment,obtain a decree in personam. But even if this can be dOrie, it in nowiSe 'preven ts them from proeeedhlg in a separate action if . they elect so to do'. The weight of authority seems to sustain the proposition'that the :remedy against the vessel and, the remedy against the ownercannot,iIl Circrimstances like the present, be united or enforced ini:the, same action; certainly no case has been cited, or found by the cottrt, which dieputeB the right ofa libelant to pursue'them separately. TheJessie Williamson, J1'., 108U, S. 305,2 Sup. Ct.-Rep. 669; The Sabine, 101U.8.'384; The Zodiac; 5 Fed. Rep. 220; Insurance 00. v. Alexandre, 16 Fed. Rep. 279, and cases citedj'Hule v. lnsurance 00., 2 Story; 176j NeweUv. NClrton, 3 Wall. 257; Admiralty' Rule 15.