SA WYER V. KELLOGG.
to recover its value by suit against the persons making the false and fraudulent entry. They chose the former proceeding; but, in the mean time, the owners of the steamer, without knowledge of any offence; committed' or premeditated, earned the freight which was agreed to be paid for its transportation, and ought not now to be refused its payment from the proceeds of the sale of the forfeited property. Let an order be entered directing the clerk to pay to the petitioners the Bum of $1,305.61 out of the proceeds in the registry.
(Circuit Court, D. New Jer8ey. November 19,1881.)
K., who was engaged largely in the business of packing blues, on his own account and for others in the trade, put up the blues covered by the infringing trade-mark for the firm of B. & Co., who sold them, paying K. for the work and labor of packing them. K. was adjudged an infringer, an injunction issued against him, and the decree directed an accounting. On motion to strike from the decree the clauses directing an accounting, held, that the complainant was entitled to an accounting to enable him to ascertain what profits were made by K. by his work and labor, and what damages resulted therefrom.
In trade-mark cases the ordinary rule is that a decree for an infringement and an injunction carries costs; and this rule applies, though no demand was made before suit that the defendant should cease to use the infringing trademark.
On Motion to Amend Decree. George Putnam Smith, for the motion. Rowland Cox, contra. NIXON, D. J. This is a motion to strike from the decree entered in the above case the clauses which direct an accounting and the payment of costs. 1. As to the accounting. The counsel for the defendant rests his application to strike out on two grounds: First, becanse the proofs show that the defendant is not the person liable to account to the complainant. The evidence is that the defendant was largely engaged in packing blues on his own account and for others in the trade; that all the blues covered by the infringing trade-mark were put up by him for the firm of James S. Barron & Co., dealers in wooden ware, rope, and cordage in New York, who placed the same upon the market; that he made no sales to anyone of the articles thus packed,
but received pay from his employers solely for the work and labor of packing. !. The bill of complaint prays for an injunction, and for profits and damages. Having been adjudged an infringer of the trademark of the complainant, an injunction has been issued against him. Underi,the above stata of facts, should he be compelled to account for profits and damages? We have no d9ubtabout the propriety of the reference or of the liability of the if it can be shown on the'accounting that profits were made by his work and labor, or that damages resulted to the-complainant therefrom. If he did nO,t sell, the profits on the sales are not chargeable to him; but if any profits came to him for preparing the article for those who did sell, they belong to the complainant, and the object of the accounting is to ascertain that fact. And if the defendant has damaged the complainant by the unlawful use of his trade-mark, the nature and ex tentqf the damage is a proper subject of inquiry. Second, becauso the 'complainant has forfeited his right to an account by laches in bringing his suit. In England the rule is stringent in trade-mark cases that lack of diligence in suing deprives the complainant in equity of the tight either to an injunction or an account. Our courts are more liberal in this respect. A long lapse of time will not deprive the owner ofa trade-mark of an injunction against an infringer, but a reasonable diligence is required of a complainant in asserting his rights, if ,he, would hold a wrong-doer to an account for profits and damages. This rule, however, applies only to those cases where there has been an acquiescence after a knowledge of the infringement is brought home to the complainant. Such is not the present case. Although the defendant began the packing of bluing in the packages complained of early in the year 1878, there is no evidence that the complainant knew it until a short time before the suit was brought. 2. As to the matter of costs. We find nothing in this case to take it out of the ordinary rule that a decree for an infringement and an injunction carries costs. The only reason suggested by the counsel for the defendant was that no demand was made before suit that the defendant should cease to use the label. We have never understood that in such cases a demand was necessary, nor that an infringer, who stoutly contests the suit to the end, should be relieved from the payment of the costs which have been incurred in consequence of his wrong-doing and his litigation. The motion to strike out is overruled, but, under the circnmstances, without costs, on the motion, to the complainants.
HILLER V. FOREE.
WORLEY V. FOREE
(Circuit Court. D. Kentucky.
1. LETTERS PATENT-PRIOR DISCOVERY AND USE.
Prior discovery and successful use .of the patented process is a. complete defence to a suit for infringement brought by the patentee. .
The invention of a process for finishing and marking tubacco plugs. claimed by Miller & Worley in reissued letters patent No. 8,060, dated January 29,1878, was anticipated by Ed. F. Smith.
Geo. Harding, Stem J; Peck. and Beattie J; Winchester, fOl' plaintiffs. S. S. Boyd, for defendants. BAXTER, C. J. Complainants sue for an alleged infringement of reissued letters patent No. 8,060, issued to them on the twenty-ninth of January. 1878.
The invention claimed consists of a process for finishing and marking bacco plugs with an ineffaceable identifying impression by one and the same pressure, by means of compress plates, with draws in relief, whereby the tobacco takes fl. permanent set, with the impression in it, and in a finished. state; the tobacco having been previously prepared by a forming pressure in the molds. The patent contains two claims: First, the described process of marking plug tobacco, which consists in impressing letters or other marks directly into the side of the plug during the process of manufacture, and by the pressure employed. in making the plug, substantially as described; 86COOO, a tobacco plug marked with an impression, substantially as described.
The defendants. among other defences, allege that Miller & Wor. ley. the parties named in the original patent as the first and original discoverers of the patented process. are not the original discoverers thereof. and aver that said process was understood and applied by' the several parties named in the answer before its discovery and use by Miller & Worley. The case, as it was then presented, was heard by me more than a year ago. when a decree was entered sustaining the first claim of the patent, adjudging defendants guilty of infringe. ment, granting an injunction, and ordering an account of profits, etc. But before the account was taken I granted a rehearing to enable defendants to put in additional and newly-discovered evidence to sustain this defence of prior discovery and use of the process secured by complainants' patent. Further evidence was accordingly adduced by both parties bearing on this issue, the most important of which is found in the depositions of Ed. F. Smith and Robert E. Lee. The object of these depositions is to show that the patented process had been discovered, matured, and successfully used by Smith