DICKERSON 11. MATHESON.
infringement of the second and third claims of his patent, to make disclaimer of the other claims. Manufacturing Co. v. Sprague, 123 U. S. 249, 8 Sup. Ct. Rep. 122; Telaphcme Co. v. Spencer, 8 Fed. Rep. 512; Walk. Pat. § 197. The plaintiff, having waived his to an account, is entitled to a decree for an injunction against the infringement of the second and third claims ofthe patent, with costs, and it is so ordered.
DICKERSON '11. MATHESON
(Circuit Court, B. D. New York. April 18, 1899.)
SALE-PATlINTED ARTICLE-NoTICE OF RESTRICTION-TRADB CUSTOMS.
A f1.ri:n in Germany having the right; under European and American patents, to sella patented coloring matter in Europe and the United States, was in the habit of selling with restrictions against exportation to the United States. A Londov. firm, which knew, in a general way, of this restriction, sent an order to the London agents of the German firm for a quantity of the goods" strong for export." Held, that it could not be presumed that these words conveyed nptice of an intention to export to the United States, in the absence of proof that such was their trade meaning in London. .
PRINCIPAL AND AGENT-NOTICE TO AGENT.
On receiving notice of tbe arrival of the goods in London, the purchasers made out a check for the price, and gave it to tbeir clerk, who, in the usual coUrse of business, exchanged it for the invoice sent by a messenger of the seller's London .!$ent.This invoice contained a notice of tbe prohibition against exporting to the united States, but the attention of the firm was not called thereto until a day or two later. Held, that notice to the clerk was notice to the firm, and, having BOo cepted the goods with notice, the firm was bound by tbe restriction. The owner of patents granted in Europe and the United States, who sells the patented article in Europe with a prohibition against importation into the United States, may treat as an infringer one Who sells that article in this country. Dicit,. erson v. Matheson, 47 Fed. Rep. 319, affirmed. .
PATENTS FOR INVENTIONS-SALE WITH RESTRICTIONS-INFRINGEMENT.
The parties to a cause stipulated that, in order to save the delay and expense of a commission to England, the cause shOUld be tried as if certain evidence therein set out had been given. Afterwards, however, it became necessary to send a commission, and certain testimony was taken thereunder, but nothing was done to have the stipulation expunged. HeW, that, even if the commission was inconsistent with the stipulation, the stipulated evidence would not be disregarded on the motion of one party first made at the final hearing without notice to his adversary. I. FOIlEIGN LAws-How PROVED. Foreign laws must be proved as facts in the courts of this country, and mere citations to English statutes and authorities cannot be accepted as showing the English law. '
PRAOTICE-STIPULATED EVIDENCE-SUBSEQUENT TESTIMONY.
In Equity. Suit by Edward N. Dickerson against William J. MatheBon and James N. Steele for infringement of a patent. Decree for complainant. Statement by CoXE, District Judge: On the 3d of November, 1885, Carl Duisberg, a German, obtajned United States letters patent No. 329,632 for an in co.loring matter, known as "Benzo-Purpurine." On the 21st of December, 1885, Duisberg assigned the patent to the Bayer Company, of Ger-
many, of a Gertnan patent .for th? saQ1e invention. Qnthe. 8th of Maroh; 1888, the BaYer Company assIgned the patent, including the right to recover for past infringements, to: the complainant. The transaction ont of which this controversy arose occurred in .1887. A,t time another German corp\>ration, known as the" Berlin Company;", hadthe right,as'licensee of the Bayer Company, tosellrbepittented coldr in EUl.'ope and in this couritry u'nder the European and United States patents. Greeff & Co. were the London agents of the Berlin Company. On the 4th of November, 1887, Domeier & Co., of Londop, gave an order to Greeff & Co. for one ton of benza-purpurine. This order contained the words "strong for export." On the arrived in London and Greeff & 15th of November the Co. notified Domeier & Co. of the fact, stating that it would be sent on in the course of· the day,.and tequestedDomeier & Co. to have check ready for payment. A check was accordingly filled out by an employe, signed by Mi'. Domeier, and handed by him to a clerk, who subsequently delivered it to Greeft' & Co.'s messenger in exchange for the invoice in the course of business. The invoice contained the following: "NOTIQE. The importatlon. into the United States of North America of our patented 8ubstantive cotton dye-stuffs, congo, benzo-purpurine, etc·· is prohibited... The attention of Mr. Domeier was not called to this, notice until a day or soafter'",ards. " The goods were marked with 11 label on which was the following notice:, "The importation into the United States of North America is forbidden." This label was not seen by Mr. Domeier, and did not cOme to his· knowledge until atter he had paid for the goods. The defendant M;atheson,in describing the marks on the packages after their arrival in this country, does not mention the notice of prohibition on the label, the inference being that it was not thereat that time. On the of 10 days after the purchase by Domeier & Co., Barnes & Co"the defendants' London agents, shipped the goods to the defendants. Theexll.ct date of the sale to Barnes & Co. does not they wrote the defendants as appear, although lows: "Benzo,purpuririe,' we have received the ton and shall forward same by steamer on Thursday." It is frequently stated in brief that Dpmejer & Co,. were not aware of the notice on.the invoice uno. tUafter the property had passed out of their hands. lam unable to find the proof of this. Domeier does not so testify and the affidavit attached to Mitchell's testimony as to what he heard Domeier say, certainly, is riot evidence. Domeier & Co. knew, generally, at the time they ordered the go6ds of the agents of the Berlin Company that benzopurpurine was sold under restrictions against importation into this country. Barnes & Co. also knew this; and Domeier & Co.'s instructions frofuBarnes'& Co.\v.ete ilOt to buy unless they cotdd do so without restrictions> The 13erlin Company beliBved' that the goods were to be uEled in England.' thi' the 16th of January, 1890, counsel for the respective parties elit/ited into'a stipulation' which begins as follows:
DICKERSON fl. MATHEsoN.
"In order to save the dlllay and expense of a commission to Enp;land it is hereby stipulated * * · that on the final hearing it shall be taken as though the following testimony has been given."
Then follows a statement of some of the facts and circumstances out of which the controversy arose. Subsequently, on the 27th of May, 1891, it became necessary to send a commission to England to take testimony regar(iing the sale to Domeier & Co. The defendants now insist that because of the commission the stipulation became inoperative and should be absolutely disregarded by the court. A witness named !'.Iitchell, who was a member of the firm of Barnes & Co., was examined in London under the commission referred to. His examination was directed almost whoUy to what he had heard Mr. Domeier say regarding the transaction. The testimony was duly objected to. E. N. Dicke:r8on, for complainant. Hen.ry P. Well8, for deJendants.
CoXE, District Jud!!e. The court cannot now disregard the stipulation of January 16, 1890. Assnming that the commission afterwards issued was inconsistent with the terms of the agreement, it was clearly the duty of defendants' counsel to move to have the stipulated evidence expunged. The complainant could then have proved in other ways most, if not aii, of the facts agreed upon. It would be manifestly unfair to permit a party to come down to final hearing and then without previous notice strike from t:)e record proof upon which his adversary has, in good faith, relied to establish his side of the controversy. Howevr,r, after having read the record with care I do not recall an instance where a material fact of the stipulation has been proved untrue. In so far as the testimony of Mitchell relates to what he heard Domeier and others say it is clearly hearsay and cannot be considered. Upon the merits the only question is one of inlringement. The defendants admit having sold the patented coloring matter in this country, but they allege that they had a right to do this, having purchased it in open market without rel"trictions, the title coming from those who were licensed to sell it under the patents. It is argued that the bargain was originally made without restrictions and that the Berlin Company could not alter its terms by It notice upon the invoice. This contention is based upon the theory that the statement "strong for export" in the order of Domeier & Co. was notice to the vendor that the goods were to be sent to the United States. There is no foundation for such un assumption. If, when a London merchant, dealing with a Berlin merehar.t, uses the term quoted he means that the goods are to be exported to the United States that fact should have been proved. It cannot be inferred. Again, it is said, that Domeier & Co. were not bound by the notice of restriction, because Mr. Domeier did not see it till one or two days after the sale Was consummate,l, and that Domeier & Co. were not bound by the act of their clerk in accepting the invoice containing a notice printed in a foreign language. If such propositions are to receive the sanction of the courts it will be well-nigh impossible to carryon the bus-
A person cannot avoid responsibility by closing his eyes an;dears and delegating his business to others. If Domeier & Co. would have been bound by the notice of restriction had Domeier personally received the invoicein exchange for the check the firm is equally bound by the action of their clerk. Tpe clerk stood in the place and stead of Domeier & Co. and represented them in that transaction. He stood for the firm precisely as a cashier represents a bank, or a purser a ship. H;e,.wa8 acting entirely within the scope of his authority. His acts were the acts of Domeier & Co. Story, Ag. § 135. The entire invoice was in ,the German language, but no objection to receiving it was made onthat account., Indeed, the presumption is that the invoice was perfectly understood when it is remembered that a large part of the correspondence with Domeier & Co. was carried on in that language. If the copy of the invoice printed in the record is correct, the notice was conspicuously placed and was one which Domeier would have seen and understood at a glance. The firm cannot escape responsibility by provipg that QIlemember di4 not know of the notice until a day or so after",ards. is nothing in the want of knowledge by Domeier incompatible with)egal knowledge by the firm, through its duly-authorized of the contents of a paper which was their voucher agent o,r for the goods. . , In Steers v. StearTIrShip 00., 57 N. Y .. 1, the court, at page 5. says: "That the plaintiff herself never read the contract is of no moment. The arrangement was made by her agent, who must be presumed to have acquainted himself with the terms of the engagement which the defendant assenteel to," In Belgerv. Dinsmore, 51N. Y. 166, it was said, at page 170: "The presumption of law is that a party]eceiving an instrument, in the transaction of any business, is acqllaintedwith its cOntents." In Kirkland v. Dinsmore, 62 N. Y. 171, it was held that,"A par.ty cannot escape from the terms of a contract in the absence of fraud or imposition. ,because he negligently omitted to read it; and when the other party has a right to infet· his consent he will be precluded from denying it to the other's injury." It is argued that the baving taken place in London, is to be governed by English)aw, and certain English authorities and statutes are referred to. But there is no adequate proof of what the law of :a;ngland is. The rule is well established that foreign laws, written or unwritten, must be proved as facts in the courts pfthis country. Pierce v,Indseth, 106 U. S. 546,1 Sup. Ct. Rep. 418; Ennis v. Smith, 14 How. 400,426. It must, then l be held that the order of Domeier & Co. upon Greeff & Qo. .of November 4th did not operate as a completed sale; that the expression" ct strong for export" was not notice to the Berlin company, or its agents, that the goods were intended for the United States, and that the Berlin compapy h,ad the right to insert the prohibition clause; that Domeier having received and retained the invoice containing this accepted the goods su bject to this restriction. The simple question, therefore, is this; Whether the owner of patents,
UNTERMEYER f1. FREUND.,
granted in Europe a.nd the United States, who sells the patented article in Europe with restrictions against importation into the United States, can treat as an infringer one who uses or sells that article in this country. This question is reB judicata in this court. On the motion for a preliminary injunction it -was held that" the right of the complainant to treat the defendants as infringers hinges upon the question of fact whether Domeier paid or sent his check for the benzo-purpurine * * * before he received the invoice whic·h gave notice that the patented article was sold on condition that it was not to be used or sold in the United States." Dickerson v. Matheson, 47 Fed. Rep. 319. In other words, it was decided that the restriction would follow the goods to this 00untry if the original sale was made subject to the restriction, and that the sale was so made if the goods were paid Jor after or at the time the notice on the invoice was received. To the same effect, by implication, is the case of Holiday v. MattheBon,24 Fed. Rep. 185. If the defendants were bona fide purchasers led inadvertently into the attitude of infringers thu court might, perhaps, be more zealous to protect them, but the impression cannot be avoided that they do not occupy such a position. The complainant is entitled to a decree.
court, S. D. New
York. , April 18, 1899.)
DESIGN PATENTS-INFRINGEMENT-CO)lSTITUTIONAL LAW.
Act Congo Feb. 4, 1887, creating a iiability of $250 against the infringer of a design patent, was a valid exercise of the authority granted by Const. U. S. art. 1, i 1, to secure to inventors for a limited time the exclusive use of their inventions. As the act declared that "hereafter, during the term of letters patent for a design, it shall be unlawful," etc., its proVisions applied to existing, as well as to future, suits for infringement.
SAME-CONSTRUCTION OF STATUTE.
SAME-MEASURE OF DAMAGES.
As the act declares that the infringer shall also be liable for any excess of profits over the arising from the sale "of the article or articles" to which the has been applied, the courts cannot restrict the recovery merely to the profits arISing from the inorease of value imparted by the design.
In Equity. Suit by Henry Untermeyer against Max Freund et al. for infringement of a patent. Heard on exceptions to the master's report. Overruled. This action was. begun December 30, 1886, for the infringement of letters patent No. 15,121, granted to complainant July 1, 1884, for a .design for a watch-case. A decision sustaining the patent was filed .January 15, 1889. 37 Fed. Rep. 342. An interlocutory decree adjudging that the complainant recover damages and profits" together with any penalty incurred, "and referring it to a master to take the account, was entered Janllary 24, 1889. On the 6th of May, 1891, the master :filed his report in which he found damages, and, ,no profits