MORSS
v.
UNION FOIUlCO.
471
in regard to tl\e'deffllJdant'sskirt-form, that the plaintiff's expanding device was. absolntely necessary to give it any sale, and that it would have had no great sale orcomrt1etclal value without it. On the contrary. I find that it would have undoLibtedly had a very considerable sale if .it had no expanding devic.es whatever at the hip of the skirt."
The same d'ifferenceor distinction was made in regard to. the damages in the actions at law and in regard to the sales after April 1888. No damages or profits were given upon the 7,636 complete formswhkh the defendants sold. Ten of the complainant's 13 exceptions relate to this portion of the report and it is contended that the defendants. should be required to pay all the profits which they made upon the full figures, or should pay upon the forms at least a sum based upon the amount which they made upon the skirt-forms. This contention is upon the ground that the invention of the second claim constituted the chief part and value of the full forms. While it is manifest from an examination of the careful and conservative report of the master that he had no doubt of the fact of a great loss of sales to the complainant from these competing forms, and a consequent damage by the infringement, yet that he could not find a basis for the ascertainment of a specific amount of damages arising from the use of the patented invention. My examination of the proofs leads me to the conclusion that, while I do not place quite so much value as he did upon the preference which agents exhibited for the papier maqhe bust, and think that without the expanding devicel!! at the hip of the skirt it would not have been so formidable a rival to the .complainant's full form as it was, yet I perceive that there is necessarily a haziness about that part of the case, which makes it difficult to reach exact and definite results in figures as to the amount of damages or profits resulting from the use of the invention as described in the second claim. Two other exceptions make the point that as damages the master should, in addition to the profits which the complainant would have made upon the number of skirt-forms which he was deprived from selling by the defendants' sales, have allowed the profits made by the defendants upon the number of skirt-forms sold by them in excess thereof. The master and committee followed the rules in the computation of damages which are laid down in Seymour v. Me Cormi{;k, 16 How. 480; Philp v. Nock, 17 Wall. 460; Buerk v. Jmhacuser, 14 Blatchf. 19, and which are commented upon in Root v. Railway Co., 105 U. 8.189, and allowed only proved damages, and I think that he followed the established rule. The remaining ninth exception, in regard to th.e sufficiency of the means of ascertaining the number of wooden post and iron post forms, respectively, which the complainant would have sold but for the infringement, is immaterial, in view of the alternative finding of the master, which will be hereafter considered. The 21 exceptions of the. defendants cover the entire case which is stated in the. r.eport. The important ones may be divided into three classes. The first contention is that the patented form is but an improvement in the art over pre-existing forms, and that, therefore, the entire
472
FEDERAL REPORTER,
vol. 39.
amount of profit which the defendants made cannot be the proper rule of profits. They insist that solid skirt-forms existed and had a prominent place, and that ,the Everett form, although to a certain extent an adjustable form, was yet practically a solid form, and had a large sale. The first exception is to the finding of the master, that it does not appear that solid skirts of the general form of the defendants' have or ever did have any considerable sale or great market value. Solid entire forms or "dummies"for the exhibition of wearing apparel have long existed, but the patented article was the first dress-form which was adjustable to all sizes, without change of shape. The Everett form was a primitive affair, which had a pretEH1Se of adjustability. It was enlarged by pulling away a movable half section from a stationary half section, thus broadening the figure from side to side, while keeping it unaltered from front to rear. The shape was radically ehanged. The solid entire form has still its place in the shops, and is also made to order, in imitation of the figure of the person whois to use it, but it is not justly a subject of comparison with the patented article, which had a new and distinct character of its own, viz., expansion or adjustment, by the described means, of a skeleton frame, radially, in all directions fr0111 a common center, and had its own place as an aid in the manufacture of' ladies' wearing apparel. In consequence of its appearance in the market, the Everett form disappeared. The Everett sales of 11,500 in 1883 diminished, until during the'year ending in August, 1887,1,000 were saM, and in the next year, when its rnanufacturer introduced a new form designed to improve upon its defects, the sales were about 100. The defendants, secondly, in view of the sales of the Everett form, ob. ject to the report, because it is found that the complainant's expanding device of the second claim gave to the defendants' skirt-form its value as a marketable article, and sold it, and was necessary to give it any sale. can be no doubt. The second claim Of the truth of this finding contained the entire new skirt-form, which was the skeleton frame radio ally adjusted in all directions from a common center by the described means; and the defendants' wire structure contained the whole of the second claim and of the complainant's frame, and little else, except better and more expensive workmanship, and a better and more expensive equivalent device for operating the expanding mechanism. The defend· ants' device was the complainant's plus better workmanship and a better selection of equivalent devices to operate the braces. The third class of exceptions is as to the rule by which profits are to be estimated, and to the finding of law that if the defendants' device added to the profits which they made any essential part of them, they should have proved the amount of' such added profit. The compillinant relies upon the rule in Elizabeth v. Pavement Co., 97 U. S. 126, in the case of an entire profit derived from the construction of the patented de. vice as an entirety, that if any distinct profit waS realized from the addition of another improvement, the burden is upon the infringer to show it. The defendants rely upon the rule in Garretson v. Clark, 111 U. S. 120, 4 Sup. Ct. Rep. 291, that when the patent is for an improvement,
MORSS V. UNION FORM CO.
473
and not for an entirely new contrivance, the burden is upon the patentee to apportion the profits between the patented feature and the unpatented features. As has been before said, the complainant's skirt-form was new and distinct from either the "dummy" form or the Everett form. Its entire character consisted ii} its method of radial expansion without change of shape. The defendants' skirt-form has been described. The principle of the Pavement Co. Case seems to be the one which is ble. If not, it is properly found, as required in Garretson v. Clad;, that the patented device of the second claim gave to the infringing skirt its value as a marketable article. . The defendants also except to the refusal of the master to open the accounting, after it was closed, to receive further evidence that an expanding device not included in the plaintiff's patent was open and free to be used, and accomplished the same results, and also refused to recei ve in evidence letters patent to one of the defendants, dated October 29, 1887. The litigation had been in existence both in this district and in the district of Massachusetts. The accounting commenced May 9, 1888, and the testimony seems to have been completed Kovember 29, 1888. During this litigation, it is manifest, from the circumstances which surround the case, that all the testimony of importance had been found and presented. All the exceptions are overruled. The master found, in each action, the number of skirt-forms which the complainant had been prevented from selling by the defendants' sales. The complainant's forms were made either with a wooden post or with an iron post. Upon the former he made a profit of 87 cents, and upon the latter of $1.14 per form. The defendants made iron post forms only. Their prices were somewhat larger than the complainant's prices for iron post forms, and their profits upon the largest part of their sales were either 60 cents or 60i cents per form. Five-ninths of the complainant's sales of skirt-forms were iron post forms, and timrninths were wooden post forms. The master finds in the equity case that it is a "fair inference from the facts that complainant's loss of sales of 8,263 plaintiff's skirt-forms which he has suffered by the sales of defendants'various infringing skirt-forms would have been supplied by the complainant in the same proportion, and that, if the court is of the opinion that the master is entitled to find such fact from such proof, then the master, in that alternative, finds that five-ninths of the sales of said 8,263 dress forms would have bf)en iron post forms, and the complainant's damages by loss of sales of each of said forms would have been $1.14 in such case upon five-ninths (4,591) of said forms, instead of 87 cents, a difference of 27 cents each." The same facts are found with reference to the damages in the actions at law. I am of opinion that the proof authorizes such fact to be found except in regard to the 620 "baby drapers" which were sold. Upan such com putation the damages in No. 316 will be $600.72, and in No. 336 will be $435.49. The damages in No. 538 will be $8,352.36, being an increase of $1,146.15; and the excess of damages above profits will bE' $2,931.34. The complainant has filed a motion lor an increase of damages under
vol.· 39.
the t\\'o secWms of the Revised Statutes relating thereto, upon trie general grounds that the ·infringementwas willful, and counterfeited the appearance of the complainant's form, and was accompanied with conduct which indicated a willful and malicious determination to injure the complainant. . A decree in the Ufford suit in the district of Massachusetts, in which the Knapps were the real defendants, was entered February 23, 1888. They continued to manufacture in this district until March 30, 1888, when they were enjoined by decree of thie court. They then commenced to sell the forms B, C, and baby drapers, which were not in the Massachusetts case, and continued such sale until January, 1889, although the Domestic Sewing-Machine Company, at the sui t of the plaintiff, in which suit the Knapps were the real defendants, was enjoined, on August 25, lS88, in Massachusetts, against selling Band C. The accounting in the equity suit was until February 25, 1889. The defendants pertinaciously pushed their goods upon the customers of the complainants, and endeavored to deprive them of their former trade, but I do not consider that the statute in regard to increased damages intended to punish this pushing, forceful method of business, and I do not find that, with the exception of the interval between February 23, 1888, and March 30,1888, and between August 25, 1888, and January, 1889, the infringenient was a willful or wanton violation of the complainants' exclusive rights. During that time they were acting willfully, and the damages should be increased 011 that account $260.
LAMB
et al. v.
GnAND RAPIDS
ScnooL
FURNITURE
Co.
(Gil'CUi!
Court. IV: D. ,l:fic1d[jrm, 8. D
August 20, 1889.)
1.
CATALGGUE.
Complainants published and copyrighted a book pf engravings illustrating certain unpatented articles manufactured by them. Defendant manufactured similar articles from designs taken from complainants' illustrations, and published a pook of engravings illllstratil1!\" its manufactures, in which several pictures were very like t!lose in complainants' book. Held not an infringe· ment of complaiuants' copyright. . ' SAME-PRI%DITNATlY IN.JUNCTWK.
2.
Complainants' book of engravings was published with a price-list of the articles described in it as an ad \'ertisement of those articles. Held, that it was a matter of so much doubt whether the engravings were intrinsically valuable as works of art that a preliminary injunction should be denied.
In Equity. On motion for preliminary injunction. Ftedm'ick T. Sibley, (Jame8 H. Brew8ter, of counsel,) for complainants. Taygart, Wokott &- Gnn8on, for defendant. SEVERENS, J. The complainants, who are manufacturers of church furniture at New York, prepared and published a book of engravings,