Ot1PPL'ES ; 1; ;!
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(District COurt, E. D. Missouri, E. D. November 28, 1891.)
AtI,.aW. '.· Action by A. Hotchkiss, for bJmself and to the use of the ,United the Samuel Cupples Wooden-Ware Compan;yto'recover penmties under Rev. St. § 4901, for marking certain unpatented articles with the word ''Patented,'' for the purpose of deceiving thepublie. Wm. Eccles, for plaintiff. Goo. A. Madill, for defendant. J:udge. As you are aware, this is a suit his own .behalf and in behalf of the to reco.rell, penalties. inlposed by the. laws of the for unpawnted article with the word "Pa!entep." inteJ;1.t ,Fo deceiv(l, The motIve that msplI'ed congress to enact such a' law was faJdy stated to you by J'vIr. Eccles, in opening the case, and nothing further need be said by me upon that subject. The complaint in this case charges that defendant marked the words "Patented, September 28, 1880," on 1,420 rope reels manufactured between July 1, 1885, and April 5, 1890. But as the case stands at the conclusion of the trial, the evidence will not waITant you in finding that more than 400 rope reels were so marked in this district between the dates ,the
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UN1Jl an action,'\U;)d.el.' St. § to 'recover petullties for marking un". ....ttee."*.t tec:ed. OO!1sider cases in which th,.e. m king. .. ll$ 'cr.,O):1 \1vithin five years . .. ' .· ... theOOmmencement of the ,suit, districtfu whi(lli. it Is brought. 2. ' ·.. '!,!a'Qr.lender . tiU/lWe for the. pepal.ty , the m.a.·r.ldp:g.'.must have been ... . · the public, .andltl ,dewrmiuing the exof Jury aJt1:l;ough the articles :were (&afaet uooateJlWd.· they were clll1med to have been manufactured :UJl.QaI' acertain;,patft1ilt) tin<1, that the qUestion were covered bY,moh patentwllll i9llle 1upon which, persons skUle<f llithe patent law micbt"reasonably entel1Wn dl1ferentoplnions. The.ta:ct that defendant ill4Jv.:,b!lve becOliHi conv1JlceQ., some ijIne after the markiDgwlll;I done, that the: aJrt;lcles were not by the patellt, wouI<l Jiotrender it liable. 3.. 'OF Cl>1U>ORATIONB-INTENT OF OFFICEM. ' , .· ,A. may beheld liable under this section when the wrongful 'actll"itfe''Proven to h'a;ve' been committed by some officer Qr agent thereof tlng within the sco . . . of b1s authority, knowing that the articles were .... ..pe ",. ·, lWtWnted, and with ttttfmt to deceive the public. .. I ,)., " 4. OFFENSE. ,. ' rrlifJlllarking of a uumber of separate articles with intent to deceive the PUbIf,Q . W.i,es no.t.,consti.tut.eseparate o.ffenseS.When it is all done on the same ...,. da;y at the same t1Jne, so that the marking Is practiClll.lj' a continuous 'atlCi. in euch case but one offense Is committed, and one penalty is recoverable., ., . .. . . '.'
HOTCHKISS '!1. SAMUEL CUPPLES WOOPEN-WARE CO.
mentioned. The' answer admits that 200 rope reels were marked with the words in question during the month of August, 1885, and that 200 were so marked in March, 1887, these being the reels made by the Whitman Agricultural Company, here in St. Louis. is no evidence before you that any other reels were So marked at the city of St. Louis,' or within this judicial district, within five years .before this suit was begun; hence the questions that you have to determine are these: First. Were the rope reels manufactured by the Whitman Agric)lltural Compa.ny in August,. ;1.885, and 1887, unpatented articles? Second. If unpatented,did the defend· ant cause the words "Patented, September 28, 1880," to be marked thereon for the purpose of deceiving the public? As to the first of these questions; the cO'Urt has determined to instruct you as a matter of law that the rope reels in question were not covered by the Le Roy patent of date September 28, 1880, or by his subsequent patent; but in doing so it is proper that I should say for your information, in view of the character of the and the nature of the testimony, that the patent taken out by Mr. Le Roy, dated September 28, 1880, contains four claims. The patentee points out four different mechanical combinations, each of which he claims to be patentable, and aJl of which the patent office eventuaJly allowed. Now, if the reels made by the Whitman Agricultural Company embodied any ooe of the four combinations described in the specification and covered by the claims, then the defendant had an undoubted right to mark the reels "Patented, September 28, 1880." although they were not so constructed as to embody all of the patentable combinations. To entitle it to brand ille reels ''Patented, September 28, 1880," it was not essential to construct the reels so as to contain all of the mechanical combinations covered by the patent. It is very clear that the reels as made the secdid not contain the combination covered either by the ond, or the third claims of the Le Roy patent of date September 28, 1880; and the court is of the opinion, and so instructs you, that they do not contain the combination covered by the fourth claim, and for that reason the reels must be regarded as unpatented articles, so far as the Le Roy patents are concerned. And in this connection I will add that the Le Roy patents are the only patents in evidence under which it is claimed that the reels are or were patented articles. Now, while I express the opinion last stated, that the reels were not covered in any respect by the Le Roy patents, yet it is fair to say that this is a matter which is not entirely free from doubt and difficulty. Different persons skilled in the patent law might reasonably entertain different opinions as to whether the combination covered by the fourth claim of the Le Roy patent is embodied in these reels. The question is one, I think, that fairly admits of controversy among persons skilled in the construction and application of the patent laws. and it is proper for you to take that fact into consideration in a case of this character, when you come to determine whether the defendant was actuated by a fraudulent purpose in marking the reels patented. I will make no further com-
ments concerning the patentability of the reels, but will instruct you· to regard them as in fact unpatented articles. Ail ,I have aJready instructed you that the evidence only shows the marking of, 4:00 reels in this district, and as I' have also charged you,' i8$ a matter of law,that they were not co"ered by Le Roy's patents, .or either of them, it follows that the main question which you "Will have to consider and determine is whether the defendant marked. ,the reels as it did for the purpose of the public, as the, plaintiff alleges. That is the vital question in this case, as counsel 001 both sides practically concede. The offense does not consiSt·, merely in marking an nnpatented article "Patented," or in selling an unpatented article that has been marked "Patented." The mere sale of an article so marJl:ed is not an offense. The offense, under the statute,consists in marking an unpatented article "Patented," and in doing so with an intent, entertained at the time, of deceiving the, public. Hence, if the marking' complained of was done by the defendant, not with intent to deceive the public, but in good faith, on the supposition that the reel, or some part thereof, was patented, no offense was committed, and the defendant is not liable on any0f. 'the connts. On the other hand, if it caused the reels· to be marlied "Patented, September 28, 1880," at a' time when· iiteither lQiew,believed, or supposed that as constructed they were not covered' by' the Le Roy patents; or'either of them, and were in fact then you Mvetheright to infer ,that; the defenda»t's purpose in so marking them was to deceive ithe pdblic, and in that event an offense was committed, and the defen8.alnt is 'liable for th'elpenalty imposed' by the statute. I," ·In -OODsideringthe question of intent,' your inquiry must be .dire6ted'to the tiJne when the marking was done; that is to say, to themonth,of :AUgust, 1885, 'and the month of 'March, 1887. If at thOl3edates, wh:en theNlels are said to have been made, and the marking ·thereon1 is said' to 'have been done, the defendant, its officers ,and agentil, .supposed the reels to be covered by the Le ROy'patent, then it is not liable in this action,' although you may be' of the1opinion' that the: defendant or its agents, or some of the:rn, at a subsequent date. came to a different conclusion. In other words,tQ:;render'the defe:l!dant liable for the penalty sued for; it must appear that defendant, entertained the purpose of deceiVing the public when the marking was done, or when it was caused to be done. ' Now, as you know, the defendant in this case is a corporatioD.,! not a private individual, and, being a corporation, it can .only be held liable for such wrongful and unlaWful acts as are complajned of in this suit when they are proven to have been committed. by some officer or agent of the corporation, while acting for the corporation, ·and within the scope of his authority as such officer or agent. And you will have to determine, among other things, whether the wrongfulaets in this instance alleged to have been committed by the defendant company were done or committed by an agent or 0fficer in itse:rnploy, for whose acts in such matters the corporation was and is respolllSible. Bearing on this question, the
HOTCHKISS V. SAMUEL CUPFLES WOODEN-WARE CO.
court gives you the following directions: If you believe that Mr. A. W.Benedict was in charge of defendant's purchasing department in the years 1885 and 1887, and that it was a part of his duty, as the head or chief of that department, to give orders for the manufacture of rope reels, and to direct after what models or samples they should be made, and what brands or marks should be stenciled thereon, and that it was also his duty to give orders on the defendant's cashier to pay for such reels as were manufactured pursuant to his direction; and if you further find that, while so acting as the head of the purchasing department, Mr. Benedict caused or procured the reels made in August, 1885, and March. 1887, to be made and marked with the words now complained of,then the acts of said Benedict in that behalf are the acts of the defendant, and the knowledge possessed by said Benedict as to whether the reels were patented, and the purpose by him entertained in causing them to be marked with the words complained of, are to be regarded by you as the knowledge and purpose of the uefendant for all of the purposes of this case. With reference to the burden of proof, I instruct you that the burden rests upon the plaintiff. To warrant a verdict in favor of the plaintiff on any particular count in the complaint, it must be made to appear by a clear preponderance of evidence that on or about the date alleged in such cou.nt, some agent or officer of the defendant company, acting at the time for the company, and within the BCOpe of his authority, as I have heretofore explained, caused the wards ''Patented, September 28, 1880," to be marked upon an unpatented rope reel within this judicial district of the state of Missonri, and did so ,fori;he purpose of deceiving the public. You have notbing to do with reels that were manufactured and marked, as the evidence shows, in the state Qf Ohio, outside of the limits of this judicial district. And I will also say that you have nothing to do with such reels as may have been manufactured and marked prior to the 1st day of July, 1885. You can find a verdict in plaintiff's favor on some counts, and against him on other counts, according as the proof may be; that is to say, you are not bound to render the same verdict on all of the counts of the complaint. As before stated, there are 1,420 counts in all, and, as there is no evidence that more than 400 reels were marked in this district within the five· 'years preceding the commencement of the suit, you must, in any event, return a verdict for the defendant on at least 1,020 counts contained in the complaint. In conclusion I will say that, where several unpatented articles are falsely marked ''Patented,'' and the marking or branding is all done on the same day and at the same time, so that the act of marking is practically a single, continuous act, but one offense is committed under this statute, and only a single penalty is recoverable, although more than one article may have been marked. Therefore, if you believe t.hat the rope manufactured by the Whitman Agricultural Company were branded in lots of some 25 or t.') at a time. as some witnesses have testified, then you will regarol the branding of such a lot of 25 or 50 reels, all at one time,
mthe' 'ttili,l1lletmdescribed, :as ooMtituting but" ii' si:ngleoffense, for penalti! of', $100 can be" reCovered. Taft v. 06.,38 Fed. RePi 39 judges of 1!he'weightof of .the credibmty of· iUl of the who have testified in· your preseniJe,ana:if in: the case satisfies youtMt any of the witnesses 'hal"e "k1\owingly 'testified·. falsely as to' any material. fact iIl.' oontffiveJ>Sy, .you are at -to reject the: entire testimony of any Bucb:iwitliess or witnesses; :a:tJ:d, inasmuch. as you. have to determiD.e itlle purpose which actuated ;1lhe defendant's agents .in branding rope ree1S with the 'september 28, 1880," itwn1'bl3,olll"duty, in determining that issue; to"cbnsider all the facts 'Md., circumstances in evidetice, and to drltW such inferences as and proper. The caseiis left with you, you ha"ringiheardall thetestimopy, to be dealt with tts you see fit in view·of. the evidence and in view of the law as I have explained and declared it. '
, THlJ} QUEENSUORE. MYEBSet &1; v. THE·QUEENSMORlll.
(Circuit Court of Appea.!$, Fourth C1rcu1t. February 7, 1893.)
Aoonttjlctfor of cattle gtllIl"lbltled the pa.yment of freight by the wqether or not. the cattle w&J,"e"!ost in any manner whatsoever," and aJsoproV1ded that the freight should Qe payable on the .arrival of tlJ.e l$hip at Liverpool; Held, that tlle nttter provision did not relieve thesblppers from liabUity on their absOlute guaranty, though the cattle 'were lost through fire and subsequent wreck of the vessel, whioh failed to ·reaAA Jtsport of destlnatlon. Snch liabilitY, was not a1l:ected by anyquestlon 88 to whether the ,bIll ot ladingproVidiiJ.g, "Freight payable, ship lost or not lost," was or was not In harmon.v With the shipping contract
Appeal from the Di$trlct Court of the United State!! for the District of Maryland. In Admiralty. Libel to recover freight-Decree for .libelants. 51 Fed. Rep. 250. Respondents a.ppeal. Affirmed. '.l'homa.s W. Hall, for appellants. Arthur Geor,ge Brown' and Frederick Brune, for, Before GOFF, Circuit Judge, and HUGHES and SIMONTON, District Judges. ' HUGHES, District Judge. This suit relates to a shipment of 517 cattle from BaltiD10re for Liverpool, in October, 1889, on the British steamship Queensmore. The' shipment was made under the provisions of a general contract entered into July 12, 1889, between Myers & Houseman, cattle shippers of Baltimore, and the
agents of the JOlplston Line of ocean of which ,the QUeeDSIQ.Qre was one. 4ln0ng,the'provisions of thiS general COJ;ltract is the following clause: ' .
"The freight is payable uPQnsaid cattle at the rate of eighty shillings British sterling per head on the number shipped at Baltimore.·whether delivered alive or not delivered at all, arid, is payable in Liverpool on the arrival of the steamships." '
According to the custom of merchants the general contract was signed, only by the shippers, Myers & Houseman, and the bills of ingdeliyered under it (}nly by Patterson, Ramsay & Co., agents of the ship. The contract of. July contemplates the delivery of such bills of lading. There were two pareels of cattle, and two bills of lading identical in terms. Another'provisioRofthe general contract of. ,Japywoa that the ship should be, f'free from all responsibility for mortality or accident of any kind to the cattle, or any of the}lli and if any of them die, 01' are thrown overboard or are washed overboard, or are lost in any manner whatsoever, the freight is nevertheless to be paid, and is hereby guarantied to be paid, by the nothing being said in this'clause limiting the liability of the shippers to payment only upon the arrival of the ship in Liverpool. A clause in the bill of lading signed by agents of the ship is similar to the foregoing, except that it relates to the loss of the ship. It provides that "freight is payable, ship lost or not, upon the number of 81nimals embarked, without regard to and irrespective of the number landed i and the shippers hereby guaranty payment of such freight if not paid by consignees." The steamer sailed from Baltimore on the 27th of October, 1889, with a large quantity of compressed cotton and other general merchandise on board, and with nearly a thousand cattle on the decks, the 517 shipped by Myers & Houseman being included. A few days after the ship got out to sea, fire was discovered in the cotton. It is not charged that this accident or any subsequent misfo.rtune that befell the ship was due to negligence of those in charge of her. Every effort was made to extinguish the fire, to protect and preserve the' cattle, and save the ship, but in vain. The cattle were suffocated or necessarily thrown overboard, only eight or ten in the bow being saved. Five days after the fire had been in progress, and after the ship, in consequence of the burning of her ma.chinery, had become unmana.geable, the ship herself was lost, and became a total wreck, from having struck arock on the southwest coast of Ireland. The libelants claim the freight as due on the cattle, under the terms of the general contract and on the bill of lading, making them due, "ship lost or not lost." Action for the freight was brought in the district court of the United States for Maryland, sitting in admiralty, by which a decree was rendered in favor of the libelants, for $10,172.43, the amount claimed. This appeal is from that decree. No other question was raised in the court below, or is presented here, but the simple one whether the clause which has been quoted from the general contract of July, 1889, providing that the freight should be "payable in Liverpool on the arrival" of the ship there, releases the ship:"
FEDERAL 'REPORTER, vol.
virtually admitted to exISt, but fo'l.' this langdage III the there wae no other clause in theresp?ndents' con· tract making< 'llie on the itlTi'va1' 'ilie ship at Liverpool, there might'besome difficulW in holding respondents liable under it. By that contract the freight was nottD:adefpayable at Baltiinore by the shipperis, but was made payable at Liverpool by the and the shippers gave an absolute 'guaranty that it should be paid, the guaranty being limited by no eonditi611 of anival at the porto! destination. In this suit it is not tb.e consignees in, LiverpQOlthat are sued, under their obli· gationas such, for it may be easily conceived that :they are under no o,!>ligation in respect to cattle that never "arrived 'at Liverpool" or into tbeir custody; but it is the shippers 'who are sued on their guarS,ntyiof the guaranty absolute and unlimited in its terms, >.that the freight should be paid whether the cattle should die, or be thrown overboard or washed overboard, or lost in any manner whatever. That guaranty. of the shippers is absolute and unlimited,'jn its terInS,and cannot be construed to depend upon a'clause to payment in Liverpool by consignees, who would, as .merchalits, li)(!J· bound to pay only when the cattle should·' come into their hands. This latter clause. contemplates the arrival of the ship, and, 1Jhe obligation of the consignees inthat contingency. The preceding clause contemplates. the loss of the cattle at sea, and the obligation of the shippers in that contingency. It is. the gUarantying clause that we are called :upon to dool with, and not the other. We think the shippers are liable on their guaranty for the freight. It is useless to discuss the effect of the clause in the bill of lading pro'Viding that ('freight is payable, ship lost or not lost, upon the nuinber of animals embarked.'" As already shown,. the general contract signed by,the shippers fixestheir'liability, without reference to the loss of tb;eship; .and this liability cannot be affected by the question whet1ler the clause, ((ship losh or not lost," in the .bill of lading, was or·wlUl not in harmony with the general contract of July, and binding. The decree below is affirined.
END 01' VOLtrMJIl fill.