unless threatened or apprehended repetition makes preventive relief proper and necessary. The remedy for past injuries of that nature is understood to be wholly at law."79 To make the defendant liable the plaintiff has to prove three things, first that the claim (that defendant has an exclusive right to the trademark) was a false one; secondly that it was actuated by malice; and thirdly that special damage followed as a reasonable consequence. 79a § 24. Are trademark rights monopolistic in character?-In some jurisdictions there has been a tendency to regard trademark rights as offensive monopolies, and to that fact may be accredited the line of decisions which have construed technical trademark rights very narrowly.80 79-Wheeler, J., in Palmer v. Travers, 20 Fed. Rep. 501. To the same effect, see Francis v. Flinn, 118 U. S. 385; 30 L. Ed. 165; Montgomery Ward & Co. v. South Dakota, etc., Ass'n, 150 Fed. Rep. 413; Everett Piano Co. v. Maus, 200 Fed. Rep. 718; 119 C. C. A. 162; Victor Safe & Lock Co. v. Deright, 77 C. C. A. 437; 147 Fed. Rep. 211; Marlin Fire Arms Co. v. Shields, 171 N. Y. 384; Baltimore Life Ins. Co. v. Gleisner, 202 Pa. 386; Whitehead v. Kiston, 119 Mass. 484. 79a-Greers Ld. v. Pearman & Corder Ld., 39 R. P. C. 406, 410. 80-"Monopolies of any sort have never been favorites with the law. They were held by the common law to be against public policy, because against common right. The grants, charters, letters patent or other form of device or assurance by the sovereign for their creation were declared by the act of Parliament of 21 Jac. I, c. 3, to be 'utterly void and of none effect, and in no wise to be put in use and operation.' Nothing short of the 'omnipotence of parliament' is able to exclude a subject from trade in England. 7 Bac. Abr. p. 23. Two exceptions to this general rule were given by the early text writers: First. It seemeth clear that the king may, for a reasonable time, make a good grant to any one of the sole use of any art invented or first brought into the realm by the grantee.' Second. The king may grant to particular persons the sole use of some particular employments, as 'of printing the Holy Scriptures and law books,' etc. The somewhat curious reason given for the second exception is that an unrestrained liberty to print the books to which it relates might be 'of dangerous consequences to the public.' To these exceptions a third must now be added, viz., the right of a tradesman to the exclusive use of such signs, words or symbols as he may have adopted and used in his business to distinguish articles of his own production from all similar articles produced by other persons. These exceptions do not impair the force of the general rule, 'Exceptio probat regulam de rebus non exceptis.' The rule is unrestricted liberty in the practice of all arts and trades, and in the use of the methods by which they are conducted. He who asserts the right to an exclusive privilege in any department of business must bring himself under the protection of some recognized exception to the rule. The plaintiffs in this case claim an exclusive privilege under the third exception, viz., the right to the sole use of a certain trademark adopted, used, and registered by them; and they allege that the defendants have adopted This tendency is erroneous. When the Statute of Monopolies, 21 Jac. I, c. 3, was enacted, in 1623, trademarks had never been legally recognized.81 The statute, therefore, could have no possible reference to trademark rights. The later decisions. which refer to trademarks as being monopolistic in character have been based upon a misconception of what constitutes a trademark. Resulting as it does from the mere effort of the producer or handler of an article to identify his goods to the purchaser, it is merely a medium of authentication, and while the owner's title to it is necessarily exclusive, it is in no sense. a monopoly. The effort of an infringer to invade that right is not a laudable attempt to break a monopoly, but an offense against society, and it has been likened by the courts to the criminal offenses of forgery and counterfeiting. Thus, Judge Rives said, "That any imitation of a trademark, calculated to deceive the unwary customer, differs from absolute forgery, not in the nature, but rather in the extent of the injury."82 The Supreme Court of Missouri has said that "If by fraudulent means, other parties are permitted to counterfeit and forge and simulate these trademarks the community is imposed on and cheated." 83 The distinction has been emphasized by a Scottish court in the following language: "Monopoly is not the thing for which the one party struggles and which the other resists. On the contrary, fair trading is all for the protection of which the law is invoked; and the public, as well as the manufacturer or merchant, are concerned that infringement of trademarks and trade designations should be prevented. For there is a double wrong: the public are or may be deceived, and the trader whose trademark or trade designation is infringed is or may be injured." 84 Of course there is no element of monopoly involved in the law of unfair competition.84a and are now using a trademark which is an imitation of, and an infringement upon, their own. It becomes important, therefore, to learn just what the plaintiffs' trademark is, and then to determine whether it has been improperly imitated by the defendants." Williams, J., in P. C. Weist Co. v. Weeks, 177 Pa. 412; 35 Atl. Rep. 693. 81-Except in Southern v. How, 2 Popham, 144. See ante, § 5. 84-Lord Craighill, in Dunnachie v. Young & Sons, Ct. Sess. Cas. 4th Ser. X 874. 84a-Unit Const. Co. v. Huskey Mfg. Co., 241 Fed. Rep. 129. § 25. Title. The general rule has been stated by Mr. Justice Clifford to be that "trademarks are an entirety, and are incapable of exclusive use at different places by more than one independent proprietor." 85 But this rule is subject to exceptions; or, rather, the word "exclusive," as used by Mr. Justice Clifford, must not be construed to mean that there can not be joint and several ownership of a trademark. Mr. Justice Bradley has said at circuit that, "In holding that it is necessary to the validity of a trademark or tradename that the claimant must be entitled to an exclusive right to it, or property in it, we do not mean to say that it may not belong to more than one person, to be enjoyed jointly or severally. Co-partners, upon dissolution of a partnership, may stipulate that each of them may use the trademarks of the firm, and there may be many other cases of joint and several ownership; but such co-owners will together be entitled to the exclusive use of the trademark, and perhaps each of them will be entitled to such exclusive use as to all other persons except their associates in ownership." 86 Judge Swan has said that a trademark "may be the subject of ownership by two or more, without impairing the claim of its owners to redress for its unlawful use by others." 87 As indicated in the last opinion, general and several ownership arises frequently upon the dissolution of partnership, where the assets are divided or the trademark is not sold with the other assets, even in the absence of a special agreement.88 Joint and several ownership may also be created by consent.89 It may also be created by assignment.90 And a contract for the purpose of establishing and defining the respective trademark rights of the parties to it, and providing for the addition of other matter to the trademark, in order to prevent confusion between the goods of the parties, has been sustained upon grounds of public policy.91 85-Manhattan Med. Co. v. Wood, Fed. Case 9026. 86-New York & R. Cement Co. v. Coplay Cement Co., 45 Fed. Rep. 212. 87-Cleveland Stone Co. v. Wallace, 52 Fed. Rep. 431-439. 88-Taylor v. Bothin, Fed. Case No. 13,780; Young v. Jones, Fed. 89-Emerson ▼. Badger, 101 Mass. 82; Pratt's App. 117 Pa. 401. 90-Fish Bros. Wagon Co. v. LaBelle Wagon Works, 82 Wis. 546. 91-Waukesha H. M. Springs Co. v. Hygeia S. D. Water Co., 11 C. C. A. 277, 63 Fed. Rep. 438. § 25. Licenses.-The extent to which licenses for the use of trademarks may be granted, has not yet been definitely settled, although the courts have repeatedly recognized their existence and enforced them.91a Thus, relief by injunction was granted by the United States Circuit Court in Texas, notwithstanding the defense that the complainant had granted a license to another to use the trademark within the state of Texas; Judge Sabin remarking. "The fee to the trademark still remains in the complainant, and any injury to it will justify injunetion." 92 And in a more recent case, Judge Hazel construed a conveyance of "the absolute and exclusive use" of certain trademarks in and to certain states, reserving the right to the personal use of the mark by the person executing the conveyance, to be sufficient to entitle the grantee in the conveyance to maintain suit against an infringer.93 It is to be regretted, that in the case last referred to, the court did not go fully into the question whether exclusive contemporaneous rights to the same trademark may exist in different parts of the same country. The latter question is wholly undetermined, and is probably the most important question concerning the tenure of trademark rights, which has not yet been adjudicated. In a recent case, Judge Dallas has treated the question of licensing the use of a trademark exactly as if it were a license under a patent, wholly on the authority of the well established line of decisions in patent cases, that where there is an exclusive licensee of the right to use a trademark, he is a necessary party to a bill for its infringement. In this case, however. the mark was used upon a patented article during the life of the patent, and the license granted covered both the patent and the trademark rights.94 Where the defense is interposed to an action for infringement, that the defendant has had a license for its use, that defense is met by showing that the licensing agreement has been revoked, and defendant has been notified by the plaintiff that the license has been terminated.95 91a-The right of the maker of "Fruit of the Loom" cotton piece goods to grant licenses to shirt makers to make and sell "Fruit of the Loom" shirts made of plaintiff's piece goods, has been assumed in a suit in which the licensor suing alone enjoined the sale of spurious "Fruit of the Loom" shirts. B. B. & R. Knight Co. v. W. L. Milner & Co., 283 Fed. Rep. 816. 92-Moxie Nerve Food Co. v. Baumbach, 32 Fed. Rep. 205-210. 93-Griggs, Cooper & Co. v. Erie Preserving Co., 131 Fed. Rep. 359, 362. 94-Wallach v. Wigmore, 87 Fed. Rep. 469. 95-Martha Washington Creamery Buttered Flour Co. of the United States v. Martien, 44 Fed. Rep. In an action for the recovery of license fees, the defendant is estopped to deny the validity of the mark.96 But a mere failure on the part of the licensee to pay royalty does not entitle the licensor to treat such licensee as an infringer and enjoin the use of the trademark.95a § 27. Trademarks as subjects of taxation.-Good will being a proper subject of taxation,97 and trademarks being incident to the good will of the business in which they are employed, the latter as well are subject to taxation.98 In New York the action of the state comptroller in including the value of a trademark of a foreign corporation in estimating the value of its capital stock employed within the state of New York may be reviewed on certiorari.99 473; Nelson v. J. H. Winchell & Co., 203 Mass. 75; 89 N. E. Rep. 180, 186. 95a-Buffalo Rubber Mfg. Co. v. Batavia Rubber Co., 153 N. Y. Supp. 779; Macwilliam v. President Suspender Co. (C. A. D. C.), 242 Off. Gaz. 255. 96-Hilsen v. Libbey, 44 N. Y. Supr. Ct. 12. 97-See § 102, and cases cited. 98--State ex rel. Spencerian Pen Co. v. Kelsey, 105 App. Div. 132. 99-State ex rel. Spencerian Pen Co. v. Kelsey, 105 App. Div. 132. In Kentucky trademarks are held not taxable, because good will "has never been considered property for the purposes of taxation." Barker, J., in Com. v. K. D. & W. Co., 116 S. W. Rep. 76. |