CUERVO v. LANDAUER et al. (Circuit <;Jourt, S. D. New York. September 7, 1894.) 1.
TRADE-MARK-INJUNCTION AGAINST INFRINGEMEN'r-INNoCENT INFRINGER.
Injunction will not be refused because defendants bought boxes with infringing labels on them without knowing of the infringement. Injunction will not be refused because defendants have made no sales. where it appears that they bought for the purpose of selling, and would have done so but for complainant's suit. Injunction will not be refused because complainant was not the original designer or owner of the trade-mark, but succeeded to the 'rights of a firm which owned it.
SAME-ORIGIN OF COMPLAINANT'S OWNERSHIP.
This-was a suit by G. Garcia Ouervo against Julius Landauer others to enjoin the infringement of a trade-mark in certain cigarbox labels. Heard on motion for preliminary injunction. Jones & Govin, for complainant. Weed, Henry & :Meyers, for defendants. LACOMBE, Circuit Judge. Thisis an application to enjoin violation of complainant's trade-mark in certain labels for cigar boxes. That the alleged infringing labels are imitations of is self-evident upon inspection. In fact, so close is the resemblance that, the absence of any .affid.avit by designer of the labefs found III defendants' posseSSIOn, It may faIrly be aSJSumed that were intentionally devised to simulate the complainant's labels, and thus confuse the identity of the goodS' sold under their That defendants did not know that the labels, which they bought, as they aver, from a cigar-box maker, were infringements, is nO reason for refusing the relief prayed for. The owner of a mark is entitled to protection against ignorant as as malicious infringers. Nor is 'the fact that no actnal sale is shown material. It is manifest on the papers that defendants bought the boxes thus labeled to sell with their cigars, and that, but for coItlplainant's appeal to the courts, they would have offered them for sale. Nor is there any force in the defendants' contention th:!l.t complainant is not the original designer and owner of the trademark. The cases cited, viz. Stachelberg v. Ponce, 23 Fed. 430 ; Medicine 00. v. Wood, 108 U. S. 218, 2 Sup. Ot. 436,-do not applty. In the case at bar, complainant, at the time of the adoption of trade-mark, was the manager of the business, and continued in that position until 1872, when he became a partner in the firm, and c()ptinued as such partner with the original Manuel Garcia until when the latter retired from business, leaving complainant as sole proprietor thereof. Why these circumstances should deprive him the protection of the courts when the trade-mark, which is a paM; of the assets of the business to which he succeeded, is it is difficult to perceive. See Fulton v. Sellers, 4 Brewst. 42. :Preliminary injunction is continued until trial. .
BIRTWELL v. SALTONSTALL. Collector. (Circuit Court, D. MassachusettS.
CuSTOMS DUTIES-ExCESSIVE EXACTIONS-TIME OF MAKING PROTEST.
September 28, 1894.)
Rev. St. § 3011, provides that "any person who shall have made payp:!.ent under protest," in p-rder to obtain possession of goods, may maintain an llCtion 1;0 recover back any excess .paid, "but no recovery shall be allowed · .. · unless a protest and appeal sball bave been taken as provided in section 2931.'" Held, that the reference to the latter section time as ,..we.11 ,as the form.of the protest, and hence that it need ... ffiade before or at the time of the payment of the duties. but is' good if made within 10 days thereafter.
This .was an action by Joseph Birtwell against Leverett Saltonof the port of Boston, to recover duties paid under protest. . There was originally a judgment for plaintiff (39 Fed. 383), but this was reversed, on defendant's appeal, by the supreme court (150 U. S. 417, 14 Sup. Ot.169), and a new trial ordered. A new trial having been accordingly had, the opinion below was filed. JOliliab P.Tucker, for plaintiff. Hoar, U. S. Atty., and Wm. G. Thompson, Asst. U. S. AttY., for defendant. ' OOL'J,1, Oircuit Judge. The position taken by the United States a.ttorney: ,in behalf of the defendant is that where an importer, in .to . obtain possession .of his merchandise, pays the duties under 3011, Rev. St., he must, at or before the time of such a and that a prote$t made within .10 days.ll,'fter the ascertaithnent and liquidation of duties. under section insufficient, because too late in point of time; and that, therefofe,.s.uch protest, although complying with the prO'Visions of cannot be admitted in evidence as a legal protest in a suit brpught by the importer against the collector to recover ba.ck the excess of duties. '.It be remembered at the outset that the whole subject of the right of action by an importer to recover duties illegally exacted oy a collector, which includes, of course, the question of protest, now purely statutory. This has been so decided by the supreme U. S. 238, 3 Sup. Ot. 184, and Porter court in flrnson v. Murphy, y. Beard,l,24 U. S. 429, 8 SUPf Ot. 554. r.rhe old common-law right of actio'll recognized and applied in Elliott v. Swartwout, 10 Pet. 137, anq which rests upon the impJ,ied prornise of the collector to refund .w)lich be had as of the government, but which the law did not authoriZe him foexact, has.been superseded by based excluS'ively oua statutory liability. Mr. Justice ¥attheW/il,speaking for in Arnl;lon v. Murphy, says,:
"i',li'rRIu t.bis review of jUdicial history of the subject, It.ia; l(pparept that the cQmwoo-1aw action recognized as. lJ.ppropriate by the' decision in ElUott v. 1Q Pet., 137. has been converted into an action based entirely Ol1 i . ' l'I.ifferentprihclp'le,-that of 'a statutory liabUity. instead of an implied promise,-whlcb. if not originated by the act