Imágenes de páginas
PDF
EPUB
[merged small][merged small][ocr errors][merged small]

Usually by Action on the Case, or Injunction. - State Legislation. — Indictment, when. Court of Equity will not interfere unless Legal Title Clear. Defendant Liable, although acting without Guilty Knowledge. - Discovery. - Costs.

§ 451. The Remedies against Piracy are usually by an action on the case for an injury done to a trader in respect to his trade-mark, being a personal injury to be compensated by damages; or else by injunction. The law remedy is sometimes sought under the common law, and sometimes under statutes. Many of the States of the Union have legislated more or less upon the subject, and some of them have passed stringent penal laws in regard thereto. The first Federal legislation in the matter is to be found in the trade-mark sections of the patent and copyright enactment of July 8, 1870; and the remedies therein prescribed are purely of a civil nature, being, indeed, a reaffirmance of the provisions of the pre-existing rules of common law and equity, and novel only in allowing an action for injuries resulting from false or fraudulent representations in the registry of a trade-mark.

§ 452. Sometimes a remedy may be found by criminal indictment, either at common law or by the statutes of States. There are two heads of crime under which it might be expected that the fraudulent imitation of a trade-mark would be indictable, — as a forgery, or as the obtaining of money under false pretences. The former of these methods was adopted in the

case of Reg. v. J. Smith, in England. The imitation in this case consisted of a printed label, which was an exact imitation of the labels attached by the prosecutor, George Borwick, to packets of his powder, called "Borwick's Baking Powder," with this exception, that the signature, "George Borwick," was omitted in the counterfeit. It was contended, on the part of the prosecution, that the term forgery might be defined as the alteration or making of a false document with intent to defraud; and cases were cited in which the fraudulent imitation of a printed document, such as a diploma of the College of Surgeons, the good-conduct certificate of the master of a ship, and of a clergyman, as to the character of a schoolmaster, had been held to be forgeries. It was, however, unanimously held by the bench that the conviction was not sustainable; that the issuing of the wrapper or label, without the powder which it enclosed, would be no offence; and that, in the printing of the wrappers, there was no forgery committed by the printer. Bramwell, B., there said: "Forgery supposes the possibility of a genuine document, and that the false document is not so good as the genuine document, and that the one is not so efficacious for all purposes as the other," that, in the case before him, "one of the documents is as good as the other, the one asserts what the other does, the one is as true as the other; but one gets improperly used." Mr. Lloyd, in his work on trade-marks, says that he has not been able to find any case in the Reports, in which an indictment for obtaining money under false pretences has been sustained in the case of a fraudulent use of a trade-mark, although he had been referred to the cases of Reg. v. Gray & Gosling, in which the prisoners were sentenced to twelve months' hard labor for the fraudulent use of the Messrs. Allsop's labels; and to another case of Reg. v. S. Jones, where a sentence of three years' penal servitude was inflicted. He says that it is clear, however, that the principle is applicable; and, in the

1 Dearsley & Bell, 566; 8 Cox, Crim. Cases, 32.

case first cited, Willes, J., says: "In cases like the present the remedy is well known: the prosecutor may, if he pleases, file a bill in equity to restrain the defendant from using the wrapper; or he may bring an action at law for damages; or he may indict him for obtaining money for false pretences." This opinion of Mr. Justice Willes was assented to, with more or less positiveness, by the other judges; and it seems strange, says Mr. Lloyd, that this form of indictment should not have come into use by manufacturers for the purpose of protecting their trade-marks. It may, however, be accounted for on the ground that an action at law for damages, if successful, gives a more ample compensation for the violation of their rights.

§ 453. Forgery at common law is defined to be "the fraudulent making or alteration of a writing to the prejudice of another man's right," or as a false making, a making malo animo, of any written instrument for the purpose of fraud or deceit. In the case of Reg. v. J. Smith, above cited, Pollock, C. B., in giving judgment, said, speaking of the labels: "They are merely wrappers, and, in their present shape, I doubt whether they are any thing like a document or instrument which is the subject of forgery at common law. To say that they belong to that class of instruments, seems to me to be confounding things together as alike which are essentially different. It might as well be said, that if one tradesman used brown paper for his wrappers, and another tradesman had his brown paper wrappers made in the same way, he could be accused of forging the brown paper." So in Reg. v. Closs,1 it was decided that the painting an artist's name in the corner of a picture, in order to pass it off as an original picture by that artist, is not a forgery. Cockburn, C. J., in giving judgment, said: "We are all of opinion that there was no forgery. A forgery must be of some document or writing; and this was merely in the nature of a mark put upon the painting with a view of identifying it, and was no more than if the painter put any 17 Cox, Crim. Cases, 494.

99

other arbitrary mark as a recognition of the picture being his." In the course of the argument of this case it was stated by the counsel that "no case had gone the length of holding that to stamp the name of Manton on a gun would be forgery;" upon which Crompton, J., said: "That would be forgery of a trade-mark, and not of a name;" and Cockburn, C. J., said: "Stamping a name on a gun would not be a writing; it would be the imitation of a mark, not of a signature." Whether the common law embraced such cases or not, the subject, in England, is made clear; and the following offences are made misdemeanors by section 2 of the Merchandise Marks Act of 1862: 1. The forging or counterfeiting any trade-mark with intent to defraud. 2. The applying a genuine, or a forged trade-mark, with intent to defraud, to any thing not being the manufacture, &c., of any person denoted or intended to be denoted by such trade-mark, or not being the manufacture, &c., of the person whose trade-mark shall be forged. 3. The applying any genuine or forged trade-mark, with intent to defraud, to any thing not being the particular or peculiar description of manufacture, &c., denoted or intended to be denoted by such trade-mark; for instance, if a man has two trade-marks, one for a particular description of goods of a superior quality, and another for a different description of goods of an inferior quality, the applying the trademark for the goods of superior quality to the goods of inferior quality, will be a misdemeanor, if done "with intent to defraud," such intent being an essential ingredient in all such offences.

§ 454. Some of the States of this Union have passed statutes, declaring it to be a misdemeanor punishable by fine and imprisonment to forge or counterfeit, or cause to be forged or counterfeited, any representation, likeness, similitude, copy, or imitation of the private stamp, wrapper, or label affixed by any mechanic or manufacturer to his goods, wares, or merchandise, or in the sale thereof, with intent to deceive or

defraud the purchaser or manufacturer of any goods, wares, or merchandise whatever. For our present purpose, it is hardly worth while to discuss these comprehensive enactments, which are not confined to technical trade-marks, but embrace wrappers, stamps, and labels. It may, however, be well worth while to have recourse to local statutes when other means are inapplicable, as when, although the technical symbol is not imitated, mischief is done by the ingenious simulation of a label or a wrapper, in color, size, shape, &c. In such cases, of course, a Federal court is not the proper forum; for such court possesses no power except such as both the Constitution and the Acts of Congress concur in conferring upon them.1

§ 455. The criminal law of some of the countries of Europe, especially France, is severe upon fraudulent imitators of trademarks. In the Tribunal Corr. of Rheims, in 1863 (Clicquot v. Roudeau et als.2), these facts appeared: In 1863, the London journals contained an advertisement of wines of the house of la veuve Clicquot, of Rheims, at advantageous prices, at the Victoria Dock. Suspicions were aroused. The boxes and the casks were found to bear counterfeit marks. The Court of Queen's Bench ordered the seizure of the wines. It transpired that an association, composed of Cazin, a wine merchant, of Roudeau, his principal agent, and three Englishmen, were operating together, and selling wines under the counterfeited marks of Moët, d'Epernay, and Veuve Clicquot. All were deemed guilty in France (although the acts were consummated in England), and severely punished. So, also, in the Court of Paris, in 1867 (Heidsieck v. Souris, Dresel, et als.), Souris, a commission-merchant, and Dresel, of Rheims, in September, 1866, formed a conspiracy with Theodore and George Bayaud, merchants at New York, to imitate and usurp the trade-mark of Charles Heidsieck, manu

I U. S. v. Hudson & Goodwin, 7 Cranch, 32.
2 Annales de la Prop., tome x. p. 101.

3 Ibid., tome xiv. p. 95.

« AnteriorContinuar »