534

REPORTER;

The oertificate of the corisulto tlie depositions fully meets the requirements Qf this act to entitle the dep0sitions' to be. received by the commissioner as evidence of It has been held by all tribunals which ,have passed upon this act 0[1882 that "similal'l purposes" refers ro th,ew,Qrds "for all the purposes of such hearing," that is, to proof of criminality. : See In re McPhun, 30 Fed. Rep. 57; lnre Hems, 32 Fed. Rep. 583;,In reHinrich, 5 Blatchf. 414, 425; and others. The other objections to th,e proceedings are technical. According to the record, the prisoner, when shown the note, admitted>that he made it,:and,gotthe money on it from the Merchants' Bank in Chatham. I find, no ,error in the proceedings before the commissioner, and an order will, be. entered dismissing the writ of habeas corpus, and remanding the prisoner.

FEDER

"(Oircuit OO'U'f't,

et. at·. '

March 26,' 1888.)

. .

" .

N; 'D.

OaliJo'rnia.

TRADE·MARXfil-.-!NFRINGElIEN'r-MEASU>RIt, OF DAMAGES.

Thl"C1-wneris ,entltledto recover,pfthe Infrin.ger o,fa trade-mark profits arising from 'the sale of, thespurlohs' goods, with the trade-mark Impressed , upon' thenk ]fe is not 'limited to the difference between the price for which the spu,riouB, !to?ds would selIl\Tithout, and the the same goods witp.. the trade-mark Impressed upon them.
;'It

(Syllabus b1l.

!

OO'U'f't.)

"

.8uitfor Infringement of Trade-Mark. M. A. >Wlieat<m;, for complainant. Mastick, B,elcherOc Mastick. for defendants· SAWYER, J... This is a for the infringementofa trade-mark "C. Benkert & :80n,n used by' the plaintiff, doing business under that name, as the successor in interestofa Philadelphia firmo! which he was an original ,metnber,engaged in' the manuJiwture and sale of boots and shoes, upon which the trade-tnark,was stamped. There is no doubt in ' my mind, ,as to the right Mihe plaintiff as an original owner in part, and successo.r in interest to the business to this trade-mark acquired by many years nse,{morfl than a third of a century,)and :so generally known as to have almost become a part of the public history of the country. And I have as little that defendants knowingly and willfully infringed, the words I'C. F. Benkert &80n, Phila,',\' and "C. F. Benkert & Son, "on, at least 250 dozell pairs of boots and, shoes sold by them. The boots nndshoes so soldvvere not, manufactured by defendants, but purchased from other manufacturers,s.t the East, and then sold by them with the simulated trade-mark of plaintiff' stamped upon the soles and on the inside of the boot-top. Such sale is admitted by the defendants in their answer and in the' testimony of defendant· Feder. ' Hdoes not appear whether they wefe so stamped before or a·fler purchase hy defendsold with the trade-mark stamped upon them. ants, but they

.'

,,:BENKERT V. FEDER.

535

The defendants insist that the measure of damages or profits should be :limited to the difference in price for which the goods would sell with the trade-mark upon them and the price for which the same goods would sell without it. I am unable to adopt any such rule. It would be exceedingly indefinite, and equivalent to giving no damages or profits at all. How would it be possible for anyone to say pow much less a pair of -boots or shoes would sell without, than with the trade-mark upon it? There would be no definite measure of compenElation for the injury. One who deliberately and knowingly uses another's trade-mark commits a ,palpable and unmitigated fraud, for which there is no possible excuse. He seeks to avail himself of the good reputation of another's goods, and puts his own goods,-usually, if not always, of an inferior quality,-upon the market, thereby not only fl'auduliJUtly cutting off the market from the party' who has by years of labor, and at great expense, established a reputation for his wares, but in addition to this injury destroys or injures largely that reputation which is the foundation of the owner's business, by selling inferior goods under his trade-mark, thereby leading the world to believe that the inferior goods are his. To adopt, as the measure of --compensation for such injuries the difference between the price for which -the spurious goods would sell without the trade-mark and for which they will sell with \thnprintedthereon ,would be a mockery 'of justice. In my judgment the infringe:rshould at least account for the entire profits made upon the goods wrongfully sold with the trade-mark impressed thereon. ' And this is the rule established, after mature consideration, in -Graham v. Plate, 40 Cal. 598; Sawyer v. Kellogg, 9 Fed. Rep. 601. There may also be damages beyond the mere profits resulting to the owner oithe :trade-mark infringed,:whichhe may recover. See, also, Cod,TradeMarks, §§ 237,246. I 'do not think there is any-just analogy with re-spectto profits and damages between thE'! infringement of a trade-mark and a patent for an improvement in a machine. A machine' may en1brace inventions forhaIt' a dozen improvements, for each of which there is en patent held by different individuals. One machirie might infringe them -all. In such case, each would beentitled to recover the profits attributable to his oWn inventioll, and not the profits made upon the machine as ,an entirety. There is no analogy to such a case on the infringement of ;8 trade-mark. The infringer fraudulently attaching another man's prop,erty to his own occasions only a confusion of property with a view of -taking advantage of that other's property. The trade-mark sells the whole article, however iMerior or injurious in that particular, and prevents the sale of the owner's goods of equal amount. At least that is the 'fraudulentpuipose, 'and the natural tendency, whether always acc(\m,plished or not; arid the injured party should have at least the whole profit resulting from the wrongful, act, and such I understand and hold the rule ,to be. The damage may ,be much more arising from destroying the re,putation of the owner's goods. Let there bea decree for the complainant, in pursuance of the prayer ·of the bill. Let reference be made to the master to ascertain and report .the amount,of profits and damages.

536

.l!'EDERAL REPORTER.

,TOMKINSON

v.

WILLETS MANUF'G CO.

(,O';rcuit Oourt, 8. D. HelD

PATENTS FOa

March 26, t888.)

INFRINGEMENT-MEASURE.

In an action for an Infringement of a patent on a peculiar square-shaped dish, the measure of damages is not the 'gains derived by defendant from theuse, manufacture. and sale of the infringing dishes, but is only the differencebetween the protitsfairly attributable to plaintiff's design which defendant would have derived from the adoption of plaintiff's peculiar variety of squareshaped dish,and those which he would have derived from the sale of other non-infringing square shaped dishes.

, In Equity. On exceptions to master's report. Bill by A. S. Tomkinson against the Willets Manufacturing Company, for the infringement of a patent. Judgment for plaintiff, and the case n.ow comes up on defendant's exception to master's report assessing the amount,of damages. Frank v. Briesen, (or complainant, cited: Dobson v. Oa1'Pet Co., 114U. S. 440, 5Sup. Ct. Rep. 945; Dobson v. Dorman, 118 U. S. 10,(j Sup. Ct. Rep. 946; Bates v. Railroad Co., 32 Fed. Rep. 628; Hammar;he1·v.Witson, Id.1!:J6; Pipel' v. Brown, 3 O. G. 97; Woosterv. Thornton, 26 Fed. '274; Munson v.New Y01'k, 21 Blatchf. 342,16 Fed. Rep. 560; Nicholson v. Elizabeth, 6 O.G: 764; Emm'son v. Simm, 3 O. G. 293; Illinois v. TU1'rill, 12 O. G.709; Know v.' Silver, 14 O. G. 897; Mevs v. Conover, 11 O. G. 1111; Go. v. Van Antwelp, 2 Ban. & A. 252; Allen v. lJlunt, 1 BJatchf.486. Philo Chase, for defendant,cited: Dobson v. Ca1pet Co .· 114 U. S. 439,5 Sup. Ct. Rep. 945; Dobsonv. Dorman, 118 U. 8.J0, 6 Sup. Ct" Rl'p. 946; SChillingm' v. G1J,nther, 15 Blatchf. 310; Ga1'1'etson v. Cla1'k" Id. 70; Scott v. Evans, 11 Fed. Rep. 726; Root v. Lamb, 7 Fed. Rep. 222. ,
LACOMBE, J. This is suit in equity for infringement, founded upon, design patent No. 13,295, granted to John Slater, assignor to & Walker, September 12, 1882, for a design for a vegetable dish. Upon final hearing before Judge qOXE, it appeared that in a precisely similarsuit in the district of New Jersey between the same parties for infringement of this. patent, the defendant appeared by its president, and conto a decree; whereupon, before the commencement of the present suit, judgment was entered,. sustaining the patent. Passing upon the effect of such adjudication, Judge COXE says: '''fhat decree waspleadec;l a,nd proved in this action. It is valid and binding upon the rights of the parties, and as to all the questions determined by it is re.Yjudicata. Unfortunately, perhaps; for the dcfendllllt, the court is not now permitted to'considl'r the defenses, which, by the defenl1ant's own action, are thns eliminated from the case. The qrfeRtion of infrillgement is alone 0pl'n to investigation. * * * I am constrained to say that the defendant infringes." Tomkinson v.Manufacturi1l,U,Co., 23 Fed. Rep. 895·. It was referred to a master to take account of the gains and profits, and assess the damages. The master has duly reported that the con:i--