15a The tion. Diverse citizenship, if it exists, must be shown. fact that the plaintiff has but recently removed from the state of defendant's residence and citizenship is not material if he can satisfy the court that he removed with the intention of becoming a citizen of the state of his new domicile.1 If the trademark involved is registered under the Act of Feb. 20, 1905 that fact must be pleaded, because, first, it establishes a prima facie right to use of the mark, and second, confers jurisdiction upon the federal court regardless of the amount in controversy.16 If the action is between citizens of the same state, even though involving a registered trademark, the declaration must aver that the plaintiff uses the trademark and the defendant the infringing mark upon goods intended for commerce with foreign nations or with Indian tribes or in interstate commerce.17 If the action is based upon a common-law trademark, the declaration must set forth the amount in controversy, which is not the amount sought to be recovered, but the value of the trademark, and that value must be not less than three thousand dollars. 13 Fraud is essential to recovery at law. Lord Westbury said, "Proof of fraud on the part of the defendant is of the essence of the action." 19 Furthermore, at law it is necessary to show, and plead, that an injury has actually been done by the defendant's act of infringement.20 The averment of infringement should set forth, then, in what the infringement consisted, and that it was done wilfully and with fraudulent intent on the part of the defendant. The statement of the right of action should describe the trademark in exact and appropriate terms, and where possible the real and simulated remarks should be reproduced in facsimile. 15a-Garrett v. Mallard, 238 Fed. Rep. 335, 337, C. C. A. 4. 16-Act of March 3, 1881, § 7; Act of 1905, §§ 16, 17. Symonds v. Greene, 28 Fed. Rep. 834; Glotin v. Oswald, 65 Fed. Rep. 151; Hennessy v. Herrmann, 89 Fed. Rep. 669; In re Keasbey & Mattison Co., 160 U. S. 221-227; 40 L. Ed. 402. 17-Luyties v. Hollender (1), 22 Blatchf. 413; Schumacher V. Schwenke (1), 26 Fed. Rep. 818; Ryder V. Holt, 128 U. S. 525; 32 L. Ed. 529; Gravely v. Gravely, 42 Fed. Rep. 265; Prince's Metallic Paint Co. v. Prince Mfg. Co., 53 Fed. Rep. 493. 18-Symonds v. Greene, 28 Fed. Rep. 834. 19-Edelsten v. Edelsten, 1 DeG. J. & S. 185; to the same effect, Hargraves v. Smith, Seb. 338; Lawson v. Bank of London, 18 C. B. 84; 25 L. J. C. P. 188; 2 Jur. N. S. 716; 27 L. T. 134; 4 W. R. 481; Seb. 140; Rodgers v. Nowill, 6 Hare, 325; 5 C. B. 109; 17 L. J. C. P. 52; 11 Jur. 1039; 10 L. T. 88; Seb. 82; Crawshay v. Thompson, 4 Man. & G. 357; Scott, N. R. 562; 11 L. J. C. P. 301; Seb. 72. 5 20 Singer Mfg. Co. v. Loog (3), L. R. 8 App. Cas. 15-30. The conclusion of the declaration should pray for the actual damage sustained by the plaintiff and for punitive damages if the facts justify. Some adjudications in the past have held that there can be no recovery of punitive damages,21 but such a conclusion is at variance with the fundamental principles of the law of torts. The more wholesome and better reasoned doctrine is to the contrary.22 In sec. 16 the Act of 1905 provides in relation to actions at law for damages for the infringement of a registered mark, that "whenever in any such action a verdict is rendered for the plaintiff, the court may enter judgment therein for any sum above the amount found by the verdict as the actual damages, not exceeding three times the amount of such verdict, together with the costs." In a declaration based upon the infringement of a mark registered under the act, the conclusion should pray for the actual damages stated to have been sustained by the plaintiff, together with such additional amount, not exceeding in all three times the amount of such actual damages, as the court may see fit to adjudge, together with the costs. The conclusion ends with the formal allegation of bringing suit. It is necessary at common law in drafting the declaration to directly allege that the injury has been committed by continuation from one given time to another or that it was committed on divers days and times. Thus, one pleader alleged in his declaration as follows: "Since the 1st day of November, 1888, knowingly, willfully, and fraudulently offered for sale, and is now selling, glue in packages." Upon the trial, in the Federal Circuit Court for the District of Massachusetts, the complainant was permitted to introduce proof of sales by the defendant of infringing goods between November 1, 1888, and November 30, 1889, amounting to $56,318.24. The circuit court of appeals of the fourth circuit set aside a judgment of $8,000, entered upon. the verdict of a jury, saying, by Putnam, J., "There is no continuando with reference to the matter of selling; so that, according to the common law, the plaintiff could properly prove only one 21-Taylor v. Carpenter (2), 2 Wood. & M. 1; Cox, 32; 9 L. T. 514; Seb. 83. 22-Warner v. Roehr, Fed. Case No. 17189A; Day v. Woodworth, 13 How. 363; 14 L. Ed. 181; Browne, Trademarks (2d Ed.), §§ 519, 520. actual sale as an independent basis of damages. The defendant insisted at all necessary points on the enforcement of the rule, and exceptions were carefully taken and allowed; so that this court, however much it may regret it, is compelled to meet this issue. There is no doubt that at common law the position of the defendant would be correct on this point, and the Massachusetts statutes relating to pleading have not changed this rule." 23 $183. Defenses.-The defenses to actions for trademark infringement may be divided into two classes. The first class embraces those defenses which attack the plaintiff's right to sue. It may be that the owner of a trademark who sues for infringement has conveyed the right to use the mark to an exclusive licensee for a term of years. In such a case no injunction can issue unless the licensee joins in the action.24 It may be advisable to set up laches or acquiescence, or that there are facts to justify a plea that whatever rights the complainant once had he has lost by abandonment; which matters have been discussed in a preceding chapter. In an exceptional case the complainant's recovery may be precluded by an estoppel,25 which should, of course, be pleaded. The complainant's mark may have become invalid because its assignment to him from its former owner has not been sufficiently advertised, and the mark as used tends to mislead the public into a belief that the former owner is still the producer of the goods. 26 The complainant's label may contain misrepresentations of fact,27 or his alleged trademark may be a word that, once distinctive, has become publici juris.28 It is a good defense to the action at law to show either of these matters. The fact that the complainant's trademark is registered does not deprive the public of the right to use a similar mark which was common to the trade before the registration. Thus, where "La Normandi," was registered as a mark for cigars, but "La Normanda" was already in common use for a like purpose, 23-Le Page Co. v. Russia Cement Co., 2 C. C. A. 555; 51 Fed. Rep. 941-949; 17 L. R. A. 354. 24-Wallach v. Wigmore, 87 Fed. Rep. 469. 25-Lavergne v. Hooper, Ind. L. R. 8 Mad. 149. 26-Alaska Packers' Assn. V. Alaska Imp. Co., 60 Fed. Rep. 103; 27-Piso Co. v. Voight, 4 Ohio N. P. 347; Krauss v. Jos. R. Peebles' Sons Co., 58 Fed. Rep. 585; Moxie Nerve Food Co. v. Modox Co., 152 Fed. Rep. 493. 28-Siegert v. Abbott (4), 25 N. Y. Supp. 590; 72 Hun, 243. injunction to restrain the use of the latter was denied.29 In fact the registration of a trademark does not prevent its being attacked as a word publici juris, or as being itself a colorable imitation of another trademark.30 The English decisions upon this point are in harmony with those of the courts of the United States.31 The defendant may plead a license from the owner of the mark. This, of course, presumes that the license was lawful, and that the licensee has not so used the mark as to perpetrate a fraud upon the public.32 Where two or more persons have an equal right in the use of the mark the defendant may plead a license from either of them.33 The second class of defenses that may be interposed are those that deny the infringement-either denying that any infringement has been perpetrated by the defendant, or, if the infringing mark has been handled or dealt with by the defendant, denying that guilty knowledge which the complainant must prove to sustain his suit at law. In the foregoing portion of this section we have noted the defenses which, if sustained by the proof, will relieve the defendant from liability at law. The action at law is much easier of defense than that in equity, and in another section, after we have considered the action in equity, will be found enumerated a number of defenses which have proved effective in equity, many of which would doubtless be adequate at law.33a 29-Stachelberg v. Ponce, 23 Fed. Rep. 430; Price & Steuart, 967; 128 U. S. 686; 32 L. Ed. 569. 30-Moorman v. Hoge, Fed. Case No. 9783; 2 Sawyer, 78; Decker v. Decker, 52 How. Pr. 218; Glen Cove Mfg. Co. v. Ludeling, 22 Fed. Rep. 823; Cox, Manual, 695; 23 Blatchf. 46; Schumacher v. Schwenke (2), 36 Off. Gaz. 457. 31-In re Palmer, L. R. 21 Ch. D. 47; Bodega Co., (Ltd.) v. Owens, 23 L. R. Ir. 371; Wolfe v. Lang, 13 Vict. L. R. 752; Wolfe v. Alsop (2), 12 Vict. L. R. (E.), 421; Lewis v. Klapproth, 11 Vict. L. R. (E.), 214. 32-The goods to which a licensee applies the mark must be equal Law in quality to the goods to which 33-Marshall V. Pinkham, 52 Wis. 572; Price & Steuart, 497. 33a-As to actions at law in the federal courts the Act March 3, 1915, 38 Stat. L. 956, provides "that in all actions at law equitable defenses may be interposed." § 184. Damages. The courts of the United States have signally failed to agree upon any fixed rule as to the measure of damages in actions at law for the infringement of trademarks. To the student of the decisions the only apparent cause for this fact lies in two practical reasons. The first, that the remedy offered by equity is more complete. The second is that much of the trademark piracy, of this country at least, is conducted by insolvents, who offer no inducement to the vigilant prosecution which should be visited upon them. In 1846, in the United States Circuit Court for the District of Massachusetts, Woodbury, J., said: "In a case like this (an action of trespass on the case for trademark infringement), if in any, no reason exists for giving greater damages than have actually been sustained or what have been called compensatory. There is nothing peculiarly atrocious in the conduct of the defendant to be punished by damages, and in no other way, as a public example, considering the blamable usages which exist on this subject.'' 34 In a Missouri case, the St. Louis Court of Appeals, by Lewis, P. J., held that it was error in the trial court to instruct the jury that they might find exemplary damages if from the evidence they believed that the acts of the defendant were willful or malicious. The reasoning of the court is that "If the plaintiffs had demanded an accounting of the profits made by the defendants, on the equitable ground that those profits were made by the use of the plaintiff's property, the instructions might have been substantially applicable." 35 An eminent text-writer thus states the rule: "The jury are to give actual damages which the plaintiff has sustained-not vindictive or speculative damages, but such as his proof has shown to their satisfaction he has actually sustained by the infringement. 36 34-Taylor v. Carpenter (2), 2 Wood. & M. 1; Cox, 32; Fed. Case No. 13785. The passage quoted is a mere dictum, uttered in the course of an opinion upon a motion for a new trial where a jury had been directed that they might find punitive damages. The verdict was not disturbed. 35-Addington v. Cullinane, 28 Mo. App. 238-241; followed in Lam pert v. Judge & Dolph Drug Co., 119 Mo. App. 693; 100 S. W. Rep. 659; reversed in Lampert v. Judge & Dolph Drug Co., 238 Mo. 409; 141 S. W. Rep. 1095. 36-Sutherland, Damages, (2d ed.), vol. III, § 1202; citing Ransom v. Mayor, 1 Fisher, 252; Parker v. Hulme, 1 Fisher, 44; Addington v. Cullinane, 28 Mo. App. 238. |