I'BENCR
v. FOLEY. and another. December 27; 1880.
SOl
BASSETT
v.
MALONE
(Circuit Court, S. D. New York. blJUNCTION-WHEN NOT DISSOLVED.
"
Where defendant is using the Infringing machine for purposes in respect to which the plaintiff has an exclusive right under his patent, an injunction will not be dissolved on motion founded on the non-joinder of a party.
J. B. Staples, for plaintiff. R. B. Dawson, for Mal(jlne. BLATCHFORD, C. J. I see no ground, on the merits of the case" for dissolving the injunction. It is not clear that on the terms of the . contract between Loft and, the plli.intiff the. suit is n9t. weU in the name of the plaintiff alone. But at all events, by the terms of that contract, the plain,tiff has a right to. qse Loft's J;laple, in. conjunction with his own, in bringing suits, and. it is not neoessary to obtain Loft's consent or signature for each suit. .The plaintiff mlty join Loft with himself as co-plaintiff, and may amend his bill to that effect. This had better be 'done, and an order to ;that entered. It sufficiently appe,ars that Malone is using the infriJ;l'ging machine for purposes in respect to which the, plaintiff has an exclusive Tight under the patent. ,The motion to dissolve the injunction is denied.
FRENCH
FOLEY.
(District Court, 8. D. New York. 1. PENAL STATUTES-CONSTRUCTION-PENALTIES.
April 4, 1882)
A penalty is not to be imposed for acts not within the fair meaning and construction of the language of the penal statute as it stands; its scope is not to be enlarged by the addition of other words which would be essential in order to warrant the extended construction claimed for it. 2. SAME-PENALTY FOR PATENT MARKING-REv. ST. §4901. Subdivision 2 of section 4901 of the Revised Statutes, which imposesa penalty of $100 for affixing the. word "patent," etc., to any patented article, with intent to imitate or counterfeit the mark or device of "the patentee," 'means the mark or device of the patentee of the patented article on which the 'words are so stamped, The language and fair construction of this subdivision do not.inelude the case of a patented article stamped with the mark of a person who bas '
v.1l,no.8-51
no patent embracing or affecting the article stamped, but only a patent for a different article, and no penalty can be recovered ttJerefor: the remedy of the person whose mark is improperly used muSt be: sought independent of this section. The statute cannot be extended by inserting, in effect, after the words "the patentee;," tba additional wordst'()f t)le same or any other similar article." S. S..um-A.CTION FOR THE PENALTy-PROVINCE OF JURY.
In an action for a penalty for affixing,- ,without autb.ority, the patentee's' mark upon astylographic pen, it appearing ,that the pen was stamped with the mark of two different patents, obtained, by differ.ent patentees, and there being evidence .tendingto show t}lat thl.l 9,efimdanthad authority for affixing the the mark of one of them, but not of the other, held, that it was·necessarily a question for the jury to determine whether t11e pen marked, ,invo,lved" in its construction any part of the claim set out in 'the patent of patentee: and, if not, that the defendant was not Hable,to a penalty undersilb.J- ,wvision2'of"this aectionn :Uridi, ali the pen upon which the mark in of the I>8te/l:ts, no penalty could pe recovered uJ'der S, as tha,t ,is llmited to the stlj.niping of unpatented articles. The ",ei-dict of ajliry, involving or" intent," upon circumstantial f, ii 'and conlli9iing, eVidence;;sl1ooldnot b e d i s t u r b e d . . . i j
, Mbt:1onfora new. tria.l' lifter verdict in an action for So penalty for coutl:terfeitirig pl'aititiff's' patent mark. 'George, O. Holt, for' plaintiff.' :l' Am68 Brodnax, for' defendant. ' - 'BRoWN,D. J'. ' This action was 'brought' to recover the sum of $'4,500,pemilties, under section' 4901' of'the Revised Statutes, for affixin'gon45 stylographic pens th'e stamp, '''Pat. Mar. 21, '76, 12, '79," without the consent of the patenMes of the patents of those dates. The plaintiffit.v'ets that the Mackinnon Pen Company was the owner of the first of said patents, and was the exclusive licensee of the second, which had been issued to Charles H. Downes. The answer denies that the defendant affixed such marks to the pens as alleged, or caused them to be manufactured with intent to imitate or counterfeit any mark or device of the patentee's patents. On a trial before a jury the two patents were introduced in evi· dence; the earlier one known as the Mackinnon patent, and the later one known as the Downes patent. .The pens in question were alT manufactured by Clarke, a manufacturer employed by the Mackinl,'l.on Pen COmplmy to manufac'ture in,their behalf. Downes had executed to the Mackinnon company the exclusive right to sell his pen, and had authorized Clarke to manufacture them, for which he was paid a dollar' a dozen. Clarke had 'manufactured more than the willing .to receive arid pay for, and all the Mackinnon pens so manufaotured had been stamped by him, by the authority of both patentees, upon So narrow band near the top of the pen, with
the words" Pat. Mar. 21,'16, Aug. 12, '79," in type so fine as not to be distinguishable by ordinary eye-sight, without the aid of il. magnifying glass. Clarke thereupon entered into negotiations with the defendant, Foley, for the' sale to him of' some of t4ese pens, which Foley purchased, with this mark of both patents already stamped upon them, and he subsequently ordered a further supply. The defendant testified that he never, ordered this stamp to be put upon any of the pens, and cared nothing about it; and (narke, the manUJacturer, also testified that the defendant never requested the stanip to be placed upon them; that many of the pens were thus stamped 'before the sale to Foley, and he was uncertain whether all the which he sold to Foley which had this stamp upon them were not also thus stamped before the negotiations for the sale of any were made. , The second subdivision of section 4901, upon which'the plaintiff relied, imposes a penalty of $100'for each offence upon everypetson in any manner, marks upon or affixes to any sitch patentedartt. cle the word 'patent' or 'patentee,' or the word' letters-patent,' or any word of like import, with intent to imitil.te or counterfeit mark or device oftke patentee, without having the license of such patentee, or his assigns or legal representatives." The offence for which the penalty is here imposed, consists in affixing upon "any such patented article the words 'patent,''' etc., "with intent toim,ita'te or counterfeit the mark or device of the patentee." This means the mark of the patentee of the article patented. The court accordingly ruled throughout the trial that to entitle plain'tiff to recover it must appear that the offending pen was made npon either the Mackinnon or the Downes patent, or upon both of them,and that Foley caused or procured the stamp in question to be affixed thereon without the consent of the patentees of those patents. patDownes testified to his assent to the stamp so far as respected ent. It became important, therefore, to ascertain whether the Offending pen involved any part of the claim covered by the prior patent. This was denied by the defendant, but asserted by the plaintiff. The court permitted the defendant to introduce testimony tending to show that this pen did not involve the Mackinnon patent, but that it was made upon the Downes patent exclusively; and, with the view of determining this question, the testimony of various witnesses was given, and the claims set forth in each patent were submitted' and
804
FEDERAL REPORTER.
argued to the jury. The plaintiff exoepted to the admission of this testimony, and moved for a new trial upon this and other grounds. In support of this exception the plaintiff oontends that the words "such patented article," in the second subdivision of section 4901, above quoted, mean an al'ticle of the general description with that patented, and that the article upon which a patentee's mark is affixed without his license, in order to subject a person to the statutory pen. alty, need not be an article within or covered by such patentee's patonly some article similar to it in appearance or resembling it. I cannot thus read this subdivision; and Ithink its, language is incapable, by any fair, constructiqn, of such an extension of meaning. The words "with intent to imitate or counterfeit the mark or devioe of the patentee" can only refer to the ,patentee of the article patented by such patentee. Hence it follows that if, upon a patented article, a stamp is put, not of the patentee of that article, but of some other who never patented the article so stamped, and never it as his, suoh a case is not within this subdivision. It is a case omitted, so far as these penalties are concerned; ,and the remedy the person whose name or mark is thus improperly used is confined to such as exists. independent of this section. The plaintiff oontends that this subdivision should 1:Ie read as though after the words "the patentee", there were inserted the words ",of the same or any other similar artiole;" as tbJlS-amended this subdivision would impose a penalty upon anyone who "affixes to any such patented article the word' patent, ' etc., with intent to imitate or ,counterfeit the mark, or device, of the patente,e" of the same or any other similar article. ':\.'his would .be a very manifest enlargement of the ordinary and plain meaning and interpretation of this subdivision, and would violate, in my judgement, the rule which has been' invariably applied to the construction of penal statutes. ,This statute is a highly penal one. In this case, the sum of $4,500 for affixing the stamp in question upon articles whose is ret'ail price is less than $100. In U. 8. v. Wiltberger, 5 Wheat. 76, it is said by Marshall, C. J., (page 95,) that"The rule that penal laws are to be construed sti:ictly, is perhaps not much less old than construction itself. It is founded on the tenderness of the law for the rights of iIidividuals, and on the' plain principle that the power of punishUlentis vested in this legislative, not in the judicial, department. · ... ·
. ;FRENCH V. FOLEY.
805
The maxim is not to be so applied as to narrow the words of the statute to the exclusion of cases which those words in their ordinary acceptation, or in that sense in which the legislature has obviously used them, would comprehend. The intention of the legislature is to be collected from the words they employ. Where there is 'no ambiguity in the words, there is no room fOl: constrnction."
In U. S. v. Morris, 14 Pet. 464, Taney, C. J., says, p. 475 : .. In expounding a penal statute the court certainly will not extend it beyond the plain meaning of its words; for it has been IOllg and well settled that such statutes must be construed strictly. Yet.theevident intention of the legislature oUl!'ht not to be defeated by a forced and overstrict construction."
In U. S. v. Hwrtwell, 6 Wall, 385, Swayne, J., in commenting on this rule, says, (p. 396:) .. The rule of strict construction is not violated by permitting the words of the statute to have their full meaning, or the more extended of two meanings, as the wider popular, instead of the more narrow technical one; but the words should be taken in such a sense, bent neither one way nor the other, as will best manifest the legislative intent."
I know of no rule in the construction of oriminal or penal statutes, or of any instance, going further in support of what may be supposed .to be ,the general intent of the legislature, than that indicated in the language of Swayne, J., above quoted. In all cases the language used must be at least capable of the extended construotion claimed for it, without the addition of other words which are absolutely essential in order to warran t the extended meaning. The language of subdivision 2 of seotion 4901 cannot by, itself be thus rea'd.. There is no uncertainty or ambiguity in its terms, nor any differences of meaning dependent upon a technioal or popular oonstruction of the words used in it. "The patentee" referred to can be none other than the patentee of "such patented artiale;" so that not only its plain and natural meaning, but the necessary meaning of the language of the statute, is restricted to the article claimed in the patent of the patentee whose mark is counterfeited. U. S. v. Taylor, 3 FED. REP. 563, 565; Lewis v. Hitchcock, 10 FED. REP. 4, 5. So far, therefore, as related to affixing the stamp of the Mackinnon patent, it was competent to the defendant to show that the pens in question did not involve the use of anything claimed by that patent. It is also urged that the court erred in declining to submit to the jury whether Foley was not liable under the third subdivision of section 4901. That subdivision refers solely to the word "patent," or
806 any word importing that an article is patented, being affixed to llany 'Uinpatented article." 'Butthe pen in question was without dispute a patented article. The testimony upon both sides showed tha.t it was covered by either the Mackinnon patent or the Downes patent, or by both. It would have been manifest error in the court to submit to the jury any question under this subdivision w'hich had no warrant in any testimony in the case. It was also urged that the court erred in admitting the testimony showing that Clarke was, at one time, an, officer of the Mackinnon Pen Company. But one of the important questions in the case was whether Foley affixed the mark complained of upon the pen, or caused it t,o be so affixed, and, if so, his intent in doing so. There was no proof that Foley affixed this stamp by any direct act of his own, and it was uncontradicted that it was affixed by Clarke,the manufacturer of the pen. Any evidence, therefore, showing the relation of Clarke to the Mackinnon Company in connection with the manufacture of these pens could not be properly excluded. Any testimony on this subject had a necessary bearing on the question as to whose act the affixing oftha stamp was, and the intent with which it was done. If affixed before the negotiations between Clarke and Foley, its bearing upon the intent of Foley was manifest. If the effect or bearing of this testimony needed qualification, it was competent to the plaintiff to ask suitable instructions for that purpose j but there are no exceptions to the charge to the jury in this respect. Upon the merits of the controversy, as to whether these pens were purchased by Foley as already manufactured and stamped by Clarke previously, or whether ordered by Foley and thereafter manufactured by Clarke on his order; and, if the latter, whether in so ordering them there was any express or implied request that Clarke should affix the stamp in question, so that the affixing became, under such circumstances, the act of Foley,-the case was left with the jury upon all the evidence under instructions to which no exception has been taken. Cases of this kind, in which the intent is a material fact to be deter· mined upon evidence more or less conflicting, and under circumstances calculated to arouse more or less suspicion of the want of good faith, are peculiarly cases in which the court, upon established principles, is not warranted in interfering with the verdict of a jury. It cannot be said that there was no evidence, by itself considered, sufficient to acquit the defendant.' So far as the direct testimony of the defendant and Clarke would go, the evidence was in the defendant's favor.
UNITED ,STATES V. GRISWOLD.
807
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lJNITEP STATES ."" " !.
GmsWOLD. , I
;.,;.\; .
(Di3frict (Jourt,D; Orbgon. February 24,·1880.) 1. ARREs'r mCIVIL A9'.floNS-RIGHT TO .DISOHARGE.
In the absence of any'statute directly authorl1hg the discharge of' a ant in arrest who is not:chargedin execution within a certain time after judg" ment, the court ,may, assume that his discharge contemplated by law, and should be granted, unless the plaintiff, within a reasonable time, should charge him in execution. . , 2. SAME-RULE OF CoMMON LAW.
Where it appearS that the rule of the common law is that if plailltiff obtained judgment against" a defendant prisoner," alld did" not charge such defendant so remaining in prison in execution of the judgment within two terms next after obtaining surh judgment," reckoning the term wherein judg., ment was obtained as one, the defendant may obtain his discharie" it will be assumed that this rule applies to the case, and supplies the omission in thll statute of the state. .
Addison O. Gibbs, for plaintiff. William W. Paige and George H. Durham, for defendant. DEADY, D. J. On May 27, 1877, the United States, by B. F. Dowell, commenced an action against the defendant, under sections 3490-94 of the Revised Statutes, for certain penalties and damages on account of the violation of section 5438, in knowingly making, presenting, and obtaining payment from the treasury of the United States, in January, 1874, of certain false claims, commonly called the Jesse Robinson claims, and purporting to be for expenses incurred by C. S. Drew, quartennaster of the Oregon militia, in fitting out and maintaining the Jesse Walker expedition to protect the immigrants on the southern Oregon immigrant trail, between the Humboldt river and the southern boundary 01 the state, between August 3 and November 6, 1854.
