PAIRPOINT MANUF'G CO. 'V. ELDRIDGE CO.
been given, and for the consideration already alluded to is entitled to maintain, a monopoly in the disposition or use of the patented arti· cle or device. This I understand to be the rule announced by the circuit court of appeals for the Second circuit in the case of Edison Electric Light 00. v. Sawyer-Man Electric 00., 3 O. O. A. 605, 53 Fed. 592. It has also been announced in circuit courts in the following cases: Strait v. Harrow 00., 51 Fed. 819; Soda-Fountain 00. v. Green, 69 Fed. 333. The defendants again resist this application on the ground that the complainant has not complied with the foreign corporation law of the state of Missouri, by filing a copy of its charter, etc., with the secretary of state, before bringing this suit; and that, therefore, in accordance with the provisions of that law, it cannot maintain this action. It is sufficient to say, with regard to this contention, that whatever construction may be given to this law by the state courts In respect to suits coming within their exclusive jurisdiction, it cannot be made applicable to suits instituted in the federal courts without denying the jurisdiction conferred by congress upon such courts. Accordingly, this ground of opposition to the injunction cannot be sustained. It results from the foregoing views, that the complainant's motion for a preliminary injunction should be sustained. By reason, however, of the fact that this application is heard on ex parte affidavits, and as the facts may appear differently when made subject to the scrutiny of cross-examination on final hearing, I think the complainant ought to be required to give a bond in the usual form, with satisfactory sureties, to secure the defendants from loss or damage in the event of a final dissolution of the injunction. This bond will be fixed in the sum of '10,000. Counsel may prepare the form of restraining order and bond, and submit them to the court.
T. ELDRIDGE CO. January I, ltID6.)
(Circuit Court, D. Connecticut. No. 775.
DESIGN PATENTS--INF'RINGEMENT-NoTICE OF PATENT.
The owner ot a design patent, who tails to mark "Patented" the articles sold by him, until atter the design is copied by another, has the duty of alleging and the burden of proving that the latter was notified of the infringement, and continued the infringement thereafter. Dunlap v. Schofield, 14 Sup. Ct. 576, 152 U. S. 244, followed; Falk T. Engraving Co., 48 Fed. 262, distinguished.
SAME-EvIDENCE OF N OTJCE.
Testimony of a member of an association which controlled the price of certain manufactured articles, and of which complainant was aiso a member, that in visiting defendant's factory he noticed that an infringing article was being made there, and told defendant of complainant's patent, whereupon defendant said he knew the article was patented, held Insufficient to show notice of the infringement, where the action of the witness was neither authorized nor ratified by complainant, and the conversation was lienied by defendant.
was l1'sliit by the Oompany against theE1ldridge Company for injunction, and to recover the statutory penalty for infringement of a design patent, Edward, S. Beach, for complainant ' Hugh O'Flaherty, for defendant. TOWNSEND, District Judge. This suit was argued at final hearing, upon bill, answer, replication; and proofs. The bill alleges infringement of patent No., 20,714, granted May 12, 1891, to MaxlJremer, assignor to complainant, for a design for a casket handle ear, and claimf3 tIle statutory penalty and treble damages. The denie8 patentable novelty; ,alleges that the ears manuc factured bycomplainanfwere not staJIlped or marked "Patented"; that defendant, when' it infringed, had no notice or knowledge oftheexisteJ;lce of said patent duripg the time of its manufacture and sale of the infringiIlg .ears, and that upon receiving notice it forthwith sWpped sucn ,manufacture and sale, imd offered to settle for all' profits, and complainant's damages by reason thereof; and that said offer was refused. It is unnecessary to consider the question of patentable novelty. The evidence in regard to knowledge issp.bstantially as follows: The complainl1,nt, 10 months. ,after the of the patent, sold the Manufacturing, Company, three packages of goods Noue of, said ears were contaiuiug. certain of the' patented stamped "Patellted," and there was po,mark on the packages in which they were shippgdto indicate that, t}lecontents pate ented. , 'Said. Bristol OOrnP/:lny delivered' one ,9f said to the defendant. co.rporatjon, amopg other'llimilarhandles, in order that defendant 'might a, casket handle of said desigIlfor said Bristol, Company.' The' defendant 'manufactured and sold 5i dozen of said ears. It commenced said manufacture about February 23, 1893, and stopped manufacturing, and made its last shipment ... on ,'Mfl:f 12, tiJ,lle. it heard that complllmaht company cIalmed a patent for saId' deSIgn. On thei defendant that it owned May 25, 189Q,;:'tllr the patent in suit, warned it cease infringement forthwith, and demanded that it account and settle for all infringing ears made or sold by it. The defendant denied previous knowledge' oftM patent;ttgI'eed that it would not thereafter manufactureor sell any infringihg, ears; and offered ,to show its books to cO:mplainant, and 'to settle for past ipfringement. This offer was not accepted, and suit, was· brought for damages and penalty as afore-
Complainant claims that "the burden of proof' of want of eilge must be on the defendant, and be unequivocally sustain,ed b,ythe defense," and in support of this claim cites Falk v. Engraving Co., 48 Fed. 262, But that case does not support any such claim in circumstances, like those here presented. There the court found that whether a. copyrighted photograph was without the statutory notice when it came into the possession of the infringing defendant was doubtful, but that it did not appear that it was
MANUF'G CO. V. ELDRIDGE CO
without such notice when it left complainant's possession, and held that the defendant, in order to relieve himself from liability, must show this fact: In the case at bar, defendant has proved by the testimony of several witnesses, and by complainant's admission, that it did not stamp its ears "Patented" until after the sale of the ear which defendant copied, and that, when said ear left the complainant's factory, it was not stamped with the statutory notice. , The complainant has not alleged that its ears were in fact marked "Patented," and the evidence shows that they were not so marked, at the date of said sale to the Bristol Company. But complainant further relies upon the claim that the defendant "was duly notified of the infringeIDent." If said patent is valid, this is the single point in the case. The only pertinent evidence in support of said claim is that of one Linus H. Williams, a member of an association or syndicate of which complainant is also a member, which controls prices of casket hardware among its members. Williams testified as follows:
"I was in Hartford in March, 1S93, and went into Cook & Whitmore's, and there met, Mr. Eldridge, and, he invited me down to his factor,y. In showing me through the works, I saw this handleln question in the process of manufacture. I said to Mr. Eldridge that th,at was a handle patented by the Pairpoint Manufacturing Company, and be would get into trouble, as Mr. Allen had told me that they would prosecute anyone that manUfactured it. He made some remark about his knowing that it was a patented handle, and there the matter dropped. Int. 9. On what day in March, 181:13, was this conversation? Ans. March 27, 181:18. Int. 10. Am I correcUn understanding that Mr. Eldridge" told you on that day that he knew that the ear In question was patented? Ans. He said, when I told him that, that he knew it was."
This conversation is denied, by defendant. The witness is interested. He volunteered the information in a letter to complainant, and came voluntarily from Ohio to testify. The alleged statement was mere indefinite hearsay, reported to one of' the o'fficers of the defendant corpor.ation by a third party: It was neither authorized nor ratified by complainant. Manifestly, ,this since evidence is insufficient. I understand the law to be Dunlap v. Schofield, 152 U. S. 244, 14 Sup. Ct. 576, that iJ;lsuch a case the complainant :is bound to prove, as a condition precedent to his right to recovery; "that the defendant was notified of the infringement and continued after such notice" (Rev. 131. § 4900), and that, if the articles "are not duly marked; the statute expressly puts upon him, (the plaintiff) the burden of proving the notice to the infringers, before he can charge them in damages. By the elementary principles of pleading, therefore, the duty ,of alleging and the burden of proving either of these facts is upon the plaintiff." Furthermore, this is a suit for a penalty provided for applying a patented design, "or any colorable imitation thereof, to any article of manufacture for the purpose of sale," or for selling such article, "knowing that the same has been so applied." This language is suggestive of an element of willfulness in such appropriation, and as is said in Dunlap v. Schofield, supra, "The reasons for holding the patentee to allege and prove either such
knowledge or notice to the public or to the defendant, from whioh such knowledge must necessarily be inferred, are even stronger, in a suit for such a penalty, than in a suit to recover ordinary damages." It is clear, therefore, that at most complainant could only ask for an injunction against further infringement. In view of the laches of complainant, and its failure to show any willful infringement, and further, as defendant, not being originally a wrongdoer, voluntarily desisted as soon as duly notified, I do not think there is any present occasion for the issuance of an injunction. Let a decree be entered dismissing the bill, with costs.
JAMES et at v. BROPHY. (Circuit Court of Appeals, First Circuit. October 25, 1895.)
CHARTER PARTy-WHAT CONSTITUTES.
Sellers of a cargo of lumber chartered a vessel to take the lumber to Africa, where it was to be delivered, and had drawn up an Instrument purporting to be a charter party between the shipowners and the purchaser of the lumber, "Which was signed by the respective agents of these parties, and which stated the rate of freight to be $16.50 per thousand feet. On the same day the sellers of the cargo signed a document stating that they had that day chartered the same vessel toE., who was the agent, of its owners, and In this paper they agreed, "In consideration of E. making a charter party with" the purchaser's agent "at $16.50 per thousand feet," to pay said E. "the difference between amount of freight collected by vessel at Africa and $5,000, amount of charter," and there was a further recital, "All other conditions to be according to C. P., dated" the same day, between the purchaser'S agent "and E., agent of vessel," Both Instruments were written on letter heads of E. that the latter Instrument was a charter which, by reference to the other instrument, embodied and adopted all the terms and conditions contained thereIn, saving the matter of freight..
Though the Instrument was not signed In behalf of the ship or her owners, It having been delivered to and accepted by them, and the ship having entered on its performance, 'it "Was binding upon both parties. A vessel may be chartered by parol.
When, In the charter party, Sundays only are excepted from running days, the charterers are not exempt from demurrage for holidays and days on Which laborers will not work.
When a cargo is to be delivered within teach of the ship's tackles, the charterers are not exempted from demurrage by a breakdown of one of the lighters.
Appeal from the District Court of the United States for the District of Massachusetts. Libel by L. S. Brophy against Charles L. James arid others. There was a decree for libelant, and defendants appeal. Modified. Charles T. Russell, for appellants. Frederic Dodge, for appellee. Before COLT and PUTNAM, Circuit Judges, and WEBB, District Judge.