but it is embodied in the answer and exceptions should be taken to the answer in case of insufficiency in the notice.5 § 1173. Jury may be empaneled in equity to try issues of fact. Said courts [i. e., the circuit courts of the United States] when sitting in equity for the trial of patent causes, may impanel a jury of not less than five and not more than twelve persons, subject to such general rules in the premises as may, from time to time, be made by the Supreme Court, and submit to them such questions of fact arising in such cause as such circuit court shall deem expedient; and the verdict of such jury shall be treated and proceeded upon in the same manner and with the same effect as in the case of issues sent from chancery to a court of law and returned with such findings. § 2 of act Feb. 16, 1875, c. 77, 18 Stat. 316, U. S. Comp. Stat. 1901, p. 526. The trial of issues of fact arising in an equity suit by a jury upon the law side of the circuit court, and the circumstances when it will be ordered, and the merely advisory character of the verdict, have already been considered. The Supreme Court has never made any rule prescribing the procedure under this section. It will be observed that it contemplates the empaneling of a jury in the court sitting as a court of equity and not a reference to the law side. § 1174. Suit for infringement where specification of patent too broad. Whenever, through inadvertence, accident, or mistake, and without any wilful default or intent to defraud or mislead the public, a patentee has, in his specification, claimed to be the original and first inventor or discoverer of any material or substantial part of the thing patented, of which he was not the original and first inventor or discoverer, every such patentee, his executors, administrators, and assigns, whether of the whole or any sectional interest in the patent, may maintain a suit at law or in equity, for the infringement of any part thereof, which was bona fide his own, if it is a material and substantial part of the thing patented, and definitely distinguishable from the parts claimed without right, nowithstanding the specifications may embrace more than that of which the patentee was the first inventor or discoverer. But in 5Graham v. Mason, 4 Cliff. 88 Fed. Cas. No. 5,671. See Atlantic Wks. v. Brady, 107 U. S. 192, 27 L. ed. 438, 2 Sup. Ct. Rep. 225; Parks v. Booth, every case in which a judgment or decree shall be rendered for the plaintiff no costs shall be recovered unless the proper disclaimer has been entered at the Patent Office before the commencemnt of the suit. But no patentee shall be entitled to the benefits of this section if he has unreasonably neglected or delayed to enter a disclaimer. R. S. § 4922, U. S. Comp. Stat. 1901, p. 3396. This provision was originally enacted in 1870.8 An act of 1837 contained a similar section.9 Disclaimer may be filed after commencement of suit as well as before;10 but the right to costs is lost by delay until after suit.11 The power of disclaimer is beneficial and ought not to be denied except where it is resorted to for a fraudulent or deceptive purpose.12 A reissued patent is within the meaning of this section. 13 If filed after suit brought, the court should see that defendant is not injuriously surprised and may impose such terms as justice requires.14 But where the suit does not involve any of the claims of the patent which were too broad and should have been disclaimed, plaintiff's right to costs is not lost by failure to disclaim until after suit brought or failure to disclaim at all;15 nor, it seems, is it lost where he merely abandons enlarged claims of a reissue without filing disclaimer.16 After hearing and decision on the merits in equity disclaimer cannot be filed,17 except upon petition for rehearing; though the court may then permit a disclaimer in support of previous disclaimer filed by the nominal plaintiff.18 It is an unreasonable delay to wait until the expiration of patent before filing disclaimer.1 Inference of unreasonable delay is repelled by the fact of the granting of patent and decision by a lower court sustaining it.2 Plaintiff need not disclaim, in such a case, until decision by the Supreme Court.3 8 Act July 8, 1870, c. 230, § 60, 16 C. A. 250; American B. T. Co. v. Stat. 207. Spencer, 8 Fed. 509. 9Act Mar. 3, 1837, § 9, 5 Stat. 193. 10Smith v. Nichols, 21 Wall. 117, 22 L. ed. 566. 11 Sessions v. Romadka, 145 U. S. 40, 36 L. ed. 609, 12 Sup. Ct. Rep. 799; Myers v. Frame, 8 Blatchf. 446, Fed. Cas. No. 9,991. 12 Sessions v. Romadka, 145 U. S. 40, 36 L. ed. 609, 12 Sup. Ct. Rep. 799. 13Gage v. Herring, 107 U. S. 640, 27 L. ed. 604. 2 Sup. Ct. Rep. 819. 14Smith v. Nichols, 21 Wall. 117, 22 L. ed. 566. 16 Mundy v. Lidgerwood M. Co. 20 Fed. 191. 17 See Roemer v. Bernheim, 132 U. S. 106, 33 L. ed. 277, 10 Sup. Ct. Rep. 12, imposing costs as condition of permitting it. 18 Myers v. Frame, 8 Blatchf. 446, Fed. Cas. No. 9,991. 1 Vacuum Oil Co. v. Buffalo, etc. Co. 23 Fed. 891. 2 Seymour v. McCormick, 19 How. 106, 15 L. ed. 557. 30'Reilly v. Morse, 15 How. 62, 120, 121, 14 L. ed. 601: Seymour v. MeCormick, 19 How. 106, 15 L. ed. 557; Gage v. Herring. 107 U. S. 646, 647, 27 L. ed. 604, 2 Sup. Ct. Rep. 819. 15 Elastic F. Co. v. Smith, 100 U. S. 110, 25 L. ed. 547; Gamewell Co. v. Municipal Co. 77 Fed. 490, 23 C. § 1175. Recovery by owner of design patent for infringement thereof. Any person violating the provisions, or either of them, of this section [forbidding unauthorized use of a patented design] shall be liable in the amount of two hundred and fifty dollars; and in case the total profit made by him from the manufacture or sale, as aforesaid, of the article or articles to which the design, or colorable imitation thereof, has been applied, exceeds the sum of two hundred and fifty dollars, he shall be further liable for the excess of such profit over and above the sum of two hundred and fifty dollars. And the full amount of such liability may be recovered by the owner of the letters patent, to his own use, in any circuit court of the United States having jurisdiction of the parties, either by action at law or upon a bill in equity for an injunction to restrain such infringement. Part of § 1, act Feb. 4, 1887, c. 105, 24 Stat. 387, U. S. Comp. Stat. 1901, p. 3398. The liability imposed by the above section has been held in the nature of a statutory penalty, and not a profit liquidated; and hence not recoverable from an infringer ignorant of the patent and in the absence of patent mark.6 But one penalty is recoverable under this section for one sale, though there were three design patents infringed. It will be observed that this statute makes the profits on the article or articles to which the design is applied, recoverable, and not merely such profits are attributable to the design.9 $1176. remedy by existing law not impaired, but owner not to recover twice. Nothing in this act contained [forbidding the unauthorized use of a patented design]11 shall prevent, lessen, impeach, or avoid any remedy at law or in equity which any owner of letters patent for a design, aggrieved by the infringement of the same, might have had if this act had not been passed; but such owner shall not twice recover the profit made from the infringement. § 2 of act Feb. 4, 1887, c. 105, 24 Stat. 387, U. S. Comp. Stat. 1901, p. 3398. 6 Monroe v. Anderson, 58 Fed. 398. 7 C. C. A. 272. See Schofield v. Dunlop, 42 Fed. 323; Pirkl v. Sinith, 42 Fed. 410. 7Gimbel v. Hogg. 97 Fed. 791, 38 C. C. A. 419. $Untermeyer v. Freund, 58 Fed. 205, 7 C. C. A. 183. Formerly the rule of recovery was so restricted. Dobson v. Hartford C. Co. 114 U. S. 444, 29 L. ed. 177, 5 Sup. Ct. Rep. 945. 11See also ante, § 1175. § 1177. Federal cognizance of trademark infringement cases, how restricted. Nothing in this act shall be construed as unfavorably affecting a claim to a trademark after the term of registration shall have expired; nor to give cognizance to any court of the United States in an, action or suit between citizens of the same State, unless the trademark in controversy is used on goods intended to be transported to a foreign country, or in lawful commercial intercourse with an Indian tribe. § 11 of act March 3, 1881, c. 138, 21 Stat. 504, U. S. Comp. Stat. 1901, p. 3404. [a]- The Federal jurisdiction and Federal trademark legislation. Previous to the above act of 1881, Congress had embodied a series of provisions respecting the legislation of trademarks and their protection when registered, in the patent act of 1870.12 Those provisions constituted the first Federal legislation upon the subject and were carried forward into the Revised Statutes, $§ 4937-4947. The Supreme Court declared this legislation, and a supplementary act of 1876 prescribing penalties, etc,13 to be The act of 1881 beyond powers delegated to Congress and hence void.14 followed. The objection to the earlier act is sought to be obviated by confining the provisions of the law of 1881 to commerce over which Congress has been given power to legislate; but the Supreme Court has not as yet passed upon its validity.15 The right of property in a trademark is a commonlaw right. It is not of Federal origin, nor dependent upon the validity of the Federal law nor upon registration thereunder. 16 State courts have jurisdiction in such cases;17 and the Federal courts may adjudicate trademark cases where diverse citizenship exists, just as in the case of other rights of a non-Federal character.18 If diverse citizenship exists it is not necessary to show registration and use conforming to the Federal statute.19 If that ground of jurisdiction does not exist the jurisdiction must be supported under the act of 1881 by a showing of valid registration, 20 and use Hennessy v. BraunFed. 667. 12See act July 8, 1870. §§ 77-84, 46 Fed. 627; 16 Stat. 198. schweiger, 89 17Smail v. Sanders, 118 Ind. 105, 20 N. E. 297; Handy v. Commander, 49 La. Ann. 1128, 22 South, 235; Gessler v. Grieb, 80 Wis. 27, 27 Am. St. Rep. 24, 48 N. W. 1100. 13 Act Aug. 14. 1876, 19 Stat. 141. 14Trade Mark Cases, 100 U. S. 82. 25 L. ed. 550. 15See Elgin N. W. Co. v. Illinois W. C. Co. 179 U. S. 677. 678, 45 L. ed. 382, 21 Sup. Ct. Rep. 270, holding that as valid registration of "Elgin" as trademark could not be made under the act, the court was not required to determine the act's validity. 16Trademark Cases, 100 U. S. 82, 25 L. ed. 550; Harris Co. v. Stucky, 237; 18 LaCroix v. May, 15 Fed. Hennessy v. Hermann, 89 Fed. 668: 19 Hennessy v. Braunschweiger, 89 Fed. 668. 20 Elgin Wks. v. Illinois W. Co. 179 U. S. 665, 45 L. ed. 380, 21 Sup. Ct. Rep. 270. in foreign commerce, or commerce with an Indian tribe. It results that the law of 1881 serves, if valid, to give jurisdiction to the Federal courts in certain cases of which they would not otherwise have jurisdiction, and for certain infringements; and is of some service in creating a permanent record of trademarks, but is otherwise of but little value.5 § 1178. Remedies for infringement of trademarks. Registration of a trademark shall be prima facie evidence of ownership. Any person who shall reproduce, counterfeit, copy or colorably imitate any trademark registered under this act and affix the same to merchandise of substantially the same descriptive property as those described in the registration, shall be liable to an action on the case for damages for the wrongful use of said trademark, at the suit of the owner thereof; and the party aggrieved shall also have his remedy according to the course of equity to enjoin the wrongful use of such trademark used in foreign commerce or commerce with Indian tribes, as aforesaid, and to recover compensation therefor in any court having jurisdiction over the person guilty of such wrongful act; and courts of the United States shall have original and appellate jurisdiction in such cases without regard to the amount in controversy. § 7 of act March 3, 1881, c. 138, 21 Stat. 503, U. S. Comp. Stat. 1901. p. 3403. The course of Federal trademark legislation and the Federal jurisdiction therunder are considered in a note to the preceding section.9 The remedies by action on the case and by equity suit for injunction are analogous to the remedies furnished in patent infringement cases.10 § 1179. when action not maintainable. No action or suit shall be maintained under the provisions of this act in any case when the trademark is used in any unlawful business, or upon any article injurious in itself, or which mark has been used with the design of deceiving the public in the purchase of merchandise, or under any certificate of registry fraudulently obtained. § 8 of act Mar. 3, 1881, c. 138, 21 Stat. 504, U. S. Comp. Stat. 1901, 3403. 1Luyties v. Hollender, 21 Fed. 281; Sarrazin v. Irby Co. 93 Fed. 627, 35 C. C. A. 499, 46 L.R.A. 541: Schumacher v. Schwencke, 26 Fed. 818: Prince M. Co. v. Prince M. Co. 53 Fed. 493: p. Hennessy v. Braunschweiger, 89 Fed. 668. 5 Hennessy v. Braunschweiger, 89 Fed. 668. 9 Ante. $1177. |