408 upon other grounds. Subsequently the question was squarely presented to Mr. Justice Brewer, sitting as circuit judge, who said in substance: "While the Act of 1870 was a nullity, it must be assumed as a matter of fact that in framing the Act of 1876 the penalties imposed were with reference to the terms of the Statute of 1870. Again, when the Act of 1981 was passed, if congress had intended that penalty should be imposed for a trespass upon the rights conferred by that statute, or if it had intended that the Act of 1876 should be revivified and operate upon the Act of 1881, it was very easy to say so. Its silence in this respect is cogent evidence that it did not understand or intend that the penal statute should be considered a part of present and valid law. And that assumption is strengthened by the fact that it had before it for consideration this passage from the opinion of the supreme court (quoted above) in which it is broadly stated that the Act of 1876 had fallen with the Act of 1870. Whatever may be true as to the full meaning of that decision, or as to the general power of congress to impose penalties for trespasses upon rights having no existence, it had before it the general affirmance by the court that the law of 1876 had fallen, and it must be assumed that if it meant that it should stand and be vivified, or that any penalties should be imposed for violations of the law of 1881, it would have so stated. These considerations convince me very strongly that the Act of 1876 has, as the supreme court said, fallen with the Act of 1870, and it is as much a dead letter as the Act of 1870, and was not vivified or given operative force by the Act of 1881." 5 $179. Criminal liability at common law. of a trademark is not guilty of forgery. division of the prehended under some Probably it will always be found to fall within the limits of the acts defining the offense of obtaining money under false pretenses. But under the English decisions it is not a for 4-United States v. Braun, 39 Fed. Rep. 775-777. 5-United States v. Koch, 40 Fed. Rep. 250-252. 6-White v. Wagar, 185 Ill. 195202. He may be, where the coun The counterfeiter His offense is comvarious fraud acts. terfeit mark contains a guaranty, 409 CRIMINAL PROSECUTION-FEDERAL AND STATE. [§ 180 gery, even where the trademark counterfeited consists of a signature. In the United States, however, prosecutions have been very seldom resorted to. The prosecutor in actions sounding in false pretenses should, of course, be the customer who has been defrauded, and as a rule he is little inclined to prosecute. § 180. The penal statutes of the several states.-The more important statutes relating to trademark protection are set out in the appendix. It will be noticed, upon examining them, that legislation has largely been for the protection of labor organizations and of particular industries; thus, states having no general registration act, have provisions for the registration and protection of timber marks, or of the packages, such as bottles, or syphons, used by the manufacturers of carbonated waters, or the milk cans of the dairy industry. In the statutes, which have been reproduced in the appendix, are to be found admirable examples of every form of trademark legislation which the necessities of commerce have thus far created. An adequate registration act in each of the states which now has no general statutory provision upon that subject, and greater uniformity of legislation between the states, are greatly to be desired. In the annotations of these cases, it will be noticed that there have been comparatively few reported cases of criminal prosecution under them. The heavy burden of proof imposed upon the state in these cases has served as a deterrent to such prosecution. Thus the Illinois court held that proof that two persons, strangers to the defendant, had told him the mark on the goods he was selling was counterfeit, was not necessarily sufficient to prove his guilty knowledge.9 This difficulty has been remedied in Massachusetts by the enactment of a provision requiring a defendant charged with the selling of goods bearing a spurious mark to show that he bought them innocently. It is undoubtedly proper legislation to impose this requirement upon the defendant. In England, proof of fraudulent intent is not required in a prosecution under Merchandise Marks Act of 1887.10 8-Regina v. Closs, D. & B. 460; 7 Cox, 494; Regina v. Smith, 8 Cox, 37; Regina v. Dundas, 6 Cox, 380; Regina v. Gray, Seb. 183; Regina v. Sutter, 10 Cox, 577. 9-Vogt v. People, 59 Ill. App. 684. 10-Wood v. Burgess, L. R. 24 Q. B. D. 162. For further rulings see statutes of the several states, in the appendix. CHAPTER XII. ACTIONS AT LAW. $181. The form of action.-"The only redress for a trademark infringement was at first by an action in a common law court for damages for deceit. An action at law for damages is prescribed by the Act of 1905, as a proper legal remedy for infringements of trademarks. It is against the policy of the law that the owner of a valid trademark should lose by reason of its infringement. To prevent such a result, the action at law is well adapted, because it measures the plaintiff's recovery by the plaintiff's loss. But it is also against the policy of the law that an infringer should gain by reason of his infringement. By sec. 7 of the Act of 1881 the action of trespass on the case was specified as the appropriate action at law for trademark infringement. The history of this form of action has been succinctly described by English jurists. Lord Blackburn said: "The original foundation of the whole law is this: that when one knowing that goods are not made by a particular trader sells them as and for the goods of that trader, he does that which injures that trader. At first it was put upon the ground that he did so when he sold inferior goods as and for the trader's; but it is established (alike at law and in equity) that it is an actionable injury to pass off goods known not to be the plaintiff's as and for the plaintiff's, even though not inferior." 5 The development of the action on the case, and the manner in which it became adapted to the exigencies of trademark issues, are thus admirably stated by Mellish, L. J.: "In my opinion all actions of this nature must be founded upon false representations. Originally, I apprehend, the right to bring an action in 1-Gaynor, J., in Clinton Metallic Paint Co. v. New York Metallic Paint Co., 50 N. Y. Supp. 437. 2-Act of February 20, 1905, § 16. 3-Blofield v. Payne, 4 B. & Ad. 410. 4-Edelsten v. Edelsten, 1 DeG. J. & S. 185. 5-Singer Mfg. Co. v. Loog, L. R. 8 A. C. 15-29. respect of the improper use of a trademark arose out of the common law right to bring an action for a false representation, which, of course, must be a false representation made fraudulently. It differed from an ordinary action for false representation in this respect: that an action for false representation is generally brought by the person to whom the false representation is made; but in the case of the improper use of a trademark, the common law courts noticed that the false representation which is made by putting another man's trademark, or the tradename of another manufacturer, on the goods which the wrong-doer sells, is calculated to do an injury, not only to the person to whom the false or fraudulent representation is made, but to the manufacturer whose trademark is imitated; and, therefore, the common law courts held that such a manufacturer had a right of action for the improper use of his trademark. Then the common law courts extended that doctrine one step further; first, if I recollect rightly, in the case of Sykes v. Sykes There it was held that although the representation was perfectly true as between the original vendor and the original purchaser, in this sense, that the original purchaser knew perfectly well who was the real manufacturer of the goods and therefore was not deceived into believing that he had bought goods manufactured by another person, yet if the trademark was put on the goods for the purpose of enabling that purchaser, when he came to resell the goods, to deceive any one of the public into thinking that he was purchasing the goods of the manufacturer to whom the trademark properly belonged, then that was equally a deception, a selling of goods with a false representation, which would give the original user of the trademark a right of action. That was the common law right."7 The trademark owner whose rights are infringed has his election between proceeding at law or in equity.8 §182. The declaration. The proper parts of a declaration in an action at law are, in their order, as follows: 1. The title of the court. 2. The title of the term. 3. The name. 6-3 B. & Cr. 541. 7-Singer Mfg. Co. v. Wilson, L. 2 Ch. D. 434-453. 8-Ilagan & Dodd Co. v. Rigbers, 1 Ga. App. 100; 57 S. E. Rep. 970. 4. The commencement. 5. The statement of the right of action. 6. The conclusion. The correct title of the United States District Court established in the Northern District of California is "The District Court of the United States for the Northern District of California," and the titles of the various other district courts are the same, except as to the name of the district, to which should be added the name of the division of the district, where the judicial districts are subdivided. The term in which the declaration should be entitled is the term to which the defendant is summoned. 10 It is unnecessary to entitle a declaration in the name of the case in which it is filed; the style of the case may be indorsed upon the back of the declaration as a matter of convenience.11 The venue should be laid in the district where the declaration is filed, regardless of the district or districts wherein the infringement was committed.12 The commencement sets forth the names of the parties and the capacity in which they respectively sue or are sued, if it is other than a natural capacity.13 A corporation can not be or become a citizen of a state, 14 and therefore an averment of its citizenship is improper. When a corporation is a party the corporate name should be set forth, followed by the averment that the said corporation "is a corporation created under the laws of the state of -, and having its principal place of business at 15 The courts of the United States having a limited jurisdiction, the jurisdictional facts must be expressly pleaded in the declara9-Revised Statutes, § 608. 10-Chitty, Pleading (15th Am. ed.), p. 263. 11-The title or caption is no part of the pleading. Jackson v. Ashton, 8 Pet. 148; 8 L. Ed. 898. But cf. Jones v. Andrews, 10 Wall. 327; 19 L. Ed. 935. 12-Peyton v. Desmond, 63 C. C. A. 654; 129 Fed. Rep. 4. 13-Boston El. Ry. Co. v. Grace & Hyde Co., 50 C. C. A. 239; 112 Fed. Rep. 279. 14-Paul v. Virginia, 8 Wall. 168; 19 L. Ed. 357; Ducat v. Chicago, 10 Wall. 410; 19 L. Ed. 972. 15-Shiras, Equity Practice (2d ed.), § 34. Citing Lafayette Ins. Co. v. French, 18 How. 404; 15 L. Ed. 451; Railroad Co. v. Harris, 12 Wall. 65; 20 L. Ed. 354; Ex parte Schollenberger, 96 U. S. 369; 24 L Ed. 853; Pennsylvania Co. v. Railroad Co., 118 U. S. 290; 30 L. Ed. 83; Goodlet v. Railroad, 122 U. S. 391; 30 L. Ed. 1230. |