enjoyment of his right by injunction, provided he has had exclu

6

sive possession of some duration. (g) If the right be doubtful, and the patent be recent, the courts of equity will not interfere by injunction until the patentee has first established the validity of his patent in a court at law. (h) The courts having cognizance

(g) Washburn v. Gould, 3 Story, C. C. 122. (h) Sullivan v. Redfield, 1 Paine, 441.

Hill v. Thompson, 3 Meriv. 622. Livingston v. Van Ingen, 9 Johns. 507, 585. Washburn v. Gould, 3 Story, C. C. 122. The measure of damages is, in each case, a matter of fact for the discretion of the jury under the circumstances; and the better opinion is, that it is not the legal operation of the verdict, in a case of piracy for making and using a patented machine, (whatever measure of damages may be given,) to transfer to the defendant the future right to the use of the machine. A verdict and judgment against a trespasser, for using the machine for one period, is no bar to a like action for the use in another and subsequent period. Whittemore v. Cutter, 1 Gallison, 478. Earle v. Sawyer, 4 Mason, 12-14. The law of patents in France is founded on decrees of the Constituent Assembly of December 31st, 1790, and January 7th and May 25th, 1791; and it assures to inventors of discoveries in the arts, for a certain period, the exclusive right to make and sell their discoveries; and it makes no distinction between Frenchmen and foreigners, or between residents and non-residents. The French law admits of three distinct kinds of patents, viz. Patents for inventions, patents for improvements, and patents for importations of foreign inventions unknown in France. Perpigna on the French Law of Patents, pp. 23, 36, 47, 84. A decree of Napoleon, of the 13th of August, 1810, placed patents for importations on the same footing with patents for inventions; but that law is not now in force, and therefore patents for imported inventions cannot extend beyond the term fixed for the expiration of the privilege in the foreign country. Ibid. pp. 84, 85. The patent may be taken out for five, ten, or fifteen years, at the option of the patentee, under the charge of a tax proportioned to the time; and whoever first imports a foreign discovery or improvement is entitled to the privilege of an inventor. The patentee must exhibit a true and accurate specification of the principles, plans, and models of his discovery or importation. If he obtains a patent for the same object in a foreign country, he forfeits his French patent. The French jurisprudence on this point is very fully considered by A. C. Renouard, in his Traité des Brevets d'Invention, de Perfectionnement et d'Importation, Paris, 1825. The conditions necessary to the validity of a French patent, says M. Perpigna, are, 1. The invention must be lawful. 2. It must be new. 3. The inventor, improver, or importer must disclose at once, in the specification, his whole secret. 4. Whatever improvements he makes, he must declare them, and obtain additional patents for them. 5. After having taken a patent in France, the

granted to a patentee does not extend to a foreign vessel entering an American port; and the use of a patented improvement in the construction, fitting out, or equipment of such vessel, while temporarily there for the purpose of commerce, is not an infringement of the rights of an American patentee, provided the improvement was placed upon her in a foreign port, and is authorized by the laws of the country to which she belongs. Brown v. Duchesne, 19 How. U. S. 183.

• Woodworth v. Stone, 3 Story, C. C. 749.

Injunctions were allowed without actions at law, in Newall v. Wilson, 19 E. L. & Eq. 156; Goodyear v. Day, 2 Wallace, Jr. 283.

of the subject may award to the amount of treble the actual damages found by the jury, for making, using, or selling the thing

patentee must not take a patent for the same thing in a foreign country. 6. He must put his invention into practice within two years. See the French law and practice of patents for inventions, improvements, and importations, by M. Perpigna, p. 62. The same questions concerning the priority of invention and the requisite proofs, have disturbed the French tribunals, which have so long been agitated in ours. (Répertoire de Jurisprudence, tit. Brevet d'Invention. Questions de Droit.) The law as to patents for new inventions and discoveries, in the dominions of the Emperor of Austria, rests upon an imperial decree of December 6th, 1820. By that decree, foreigners, residents, and non-residents may obtain patents on the same terms as the native subjects. The objects of the patents are new discoveries; but those are considered as new which, although known in other countries, are not, at the time of the application, in practical use in the Austrian dominions, nor specifically described in any printed work. The patents may be taken out for fifteen years; and the application for them must describe, accurately and minutely, the invention, discovery, or improvement, and be accompanied with models, if the nature of the case requires them. The patentee must put his invention into practice within one year from the date of the patent, or he forfeits it. See the substance of the Austrian decree, inserted in the Appendix to Mr. Phillips's Treatise on Patents. In the same appendix is also given the patent law of the Netherlands, made in 1817. It is very analogous, in its chief provisions, to the Act of Congress of 1836. It allows patents, not exceeding fifteen years, to the persons who have made any invention or essential improvement (not already used in the kingdom by another person, or described in any work printed or published) in any branch of arts or manufactures, and also to those who shall first introduce or practice in the kingdom any invention or improvement made in foreign countries. Patents for foreign inventions or improvements, and under foreign patent, may be granted for the unexpired term; but the thing must be manufactured in the kingdom. A subsequent patent in a foreign country vacates the patent; and the thing patented must be put in practice within two years. The Spanish patent law is founded on a decree of the king and cortes, of October 14th, 1820. It grants a monopoly of any art or manufacture to the inventor, for ten years; to him who improves it, for six years; and to him who imports it, for five years. The law is well drawn and guarded, and is annexed to the treatise of M. Renouard.

The valuable work of Mr. Phillips, of Boston, on The Law of Patents for Inventions, is an elaborate production, and contains a critical examination of all the English and American cases applicable to the subject; and they are well digested. He has likewise incorporated in his treatise much interesting information on the French law of patents, drawn from the excellent treatise of M. Renouard; so that the work gives us an enlarged and accurate survey of the English and French, as well as American law of patents.

It may be here observed, that although a merchant or trader has no patent-right relative to the disposition of his goods and manufactured articles, yet the law will throw a protection over the particular marks or signs he may habitually affix to his goods, to distinguish them from similar articles belonging to others; and if another person fraudulently uses those marks and signs, with intent to injure him in his trade, he will be entitled to a special action on the case at law for damages, and to a much more prompt and effectual remedy in equity, by injunction to restrain such a fraudulent invasion of his private right. By statute of New York, of May 14, 1845, and of New

secured to another by patent; and all cases arising under the patent laws are made originally cognizable, as well in equity as at

Jersey, 1847, to counterfeit or forge any private stamp or label, with fraudulent intent, is made penal. Popham, 144, where Doderidge J., stated a case of a successful action in 22 Eliz., against a clothier, by another clothier, who used his marks to ill-made cloth. Sykes v. Sykes, 3 Barn. & Cress. 541. Blofeld v. Payne, 4 B. & Adol. 410. Knott v. Morgan, 2 Keen, 213. Motley v. Downman, 3 M. & Cr. 1. Taylor v. Carpenter, 11 Paige, 292. S. C. 2 Wood. & M. 1. Coates v. Holbrook, before Ass. V. Ch. Sandford, 3 N. Y. Legal Observer, 404. 2 Sand. (N. Y.) Ch. 586. Taylor v. Carpenter, Ibid. 603.8

• The following principles seem to be established by the recent decisions on this subject: 1. As to the right to trade-marks.

Every manufacturer, and every merchant for whom goods are manufactured, has the right to distinguish the goods he manufactures or sells by a peculiar mark or device, which no other person may assume. See cases cited above, and Amoskeag Manufacturing Co. v. Spear, 2 Sandf. Law, 599, 605; Clark v. Clark, 25 Barb. (N. Y.) 76. Barrows v. Knight, 6 R. I. 434. Fetridge v. Merchant, 4 Abb. Pr. R. 156. And the principle is not confined to articles of trade merely. Thus, a hotel-keeper has such a right to the name of his hotel that he may restrain its adoption by another house, under circumstances where deception might thus be effected to his prejudice. Howard v. Henriques, 3 Sandf. (N. Y.) 725. But it has been held that where the name or trade-mark is itself adopted as part of a scheme for the deception of the public, a court of equity will not lend itself to the scheme by exerting its extraordinary powers in the first instance, and before the right is ascertained at law, to protect the party in perpetrating his intended fraud. Fetridge v. Wells, 4 Abb. Pr. R. 144. Piddings v. How, 8 Sim. 477. Perry v. Truefit, 6 Beavan, 66. But see Stewart v. Smithson, 1 Hilton, 119, and Holloway v. Holloway, 13 Beavan, 209.

Aliens may assert this right in our courts equally with citizens. Coates v. Holbrook, Sandf. Ch. 586. Taylor v. Carpenter, Ibid. 603. S. C. 3 Story, C. C. 458. S. C. 2 Wood. & Min. 1. 11 Paige, 292.

The right to trade-marks may be sold, so as to give the vendee an absolute property in the Samuel v. Berger, 24 Barb. (N. Y.) 163.

same.

2. What is a violation of this right?

Though the owner of the trade-mark is to be protected in the use of marks designating the origin or ownership of his articles, he has no right to the exclusive use of marks which have no relation to the origin or ownership, but only indicate their name or quality. Amoskeag Man. Co. v. Spear, 2 Sandf. (N. Y.) 606. Burgess v. Burgess, 17 E. L. & Eq. 257. Stokes v. Landgraff, 17 Barb. (N. Y.) 608.

A colorable imitation will be restrained; and an imitation is colorable which requires a careful inspection to distinguish its marks from those imitated. Partridge v. Menck, 2 Sandf. Ch. 622. S. C. 3 Denio, 610. S. C. 2 Barb. Ch. 101. Clark v. Clark, 25 Barb. (N. Y.) 76. Brooklyn White Lead Co. v. Masury, 25 Barb. (N.Y.) 416. Farina v. Silverlock, 39 E. L. & Eq. 514. Williams v. Johnson, 2 Bosw. (N. Y.) 1.

If the violation be doubtful, the plaintiff must establish his right by an action at law before equity will grant an injunction. Cases, supra. And Spottiswoode v. Clarke, 2 Sandf. Ch. 628. 10 Lond. Jur. 1043. Merrimack Manufacturing Co. v. Garner, 3 E. D. Smith (N. Y.) 387. Acquiescence in the violation will prevent an injunction. Rodgers v. Nowill, 17 E. L. & Eq. 83, 145.

3. Liability of those infringing the right.

An injunction is granted if the violation be clear. Where a seller transferred the trademark of the plaintiff from a superior to an inferior article of the plaintiff's manufacture,

law, in the Circuit Court of the United States, and in the district courts having the jurisdiction of circuit courts, with the right to a writ of error or appeal, as in other cases, to the Supreme Court · of the United States. (i) 9

* (2.) As to copyrights of authors. (a)

*373

The authors of books, maps, charts, and musical compositions, and the inventors and designers of prints, cuts, and engravings, being citizens of the United States, or residents therein, (b) are entitled to the exclusive right of printing, reprinting,

(i) Act of Congress, July 4, 1836, ch. 357, secs. 14, 17.

(a) Since the last edition of this work, George Ticknor Curtis, Esq, already favorably known to the profession by his work on Merchant Seamen, has published an essay "on the law of copyright in books, dramatical and musical compositions, letters, and other manuscript engravings and sculpture, as enacted and administered in England and America." It is an admirable work, and worthy of the attentive perusal of the professional reader.

(b) A bill was introduced into the Senate of the United States, in February, 1837, by Mr. Clay, extending the privilege of the Act to the non-resident subjects of Great Britain and France in respect to future publications. It was stated that as American authors could be protected abroad in their productions, under the copyright laws of those two kingdoms, such an extension of the privilege was called for on a principle of reciprocity as well as of justice. The bill, we regret to say, did not pass into a law. Mr. Lieber, in a letter to Mr. Preston on international copyright, (1840,) has urged the justice

which usually bore a different mark, an injunction was granted on the ground of fraud against the plaintiff and the public. Gillott v. Kettle, 3 Duer, 624. See Farina v. Silverlock, 39 E. L. & Eq. 514. An action at law lies for damages, which are measured by the loss of sales to the owner, and injury done to the reputation of his business or merchandise. Taylor v. Carpenter, 2 Wood. & M. 1, 20, 21. It would seem that to entitle the plaintiff to damages for past sales, the defendant must have intended to deceive, or have known he was using plaintiff's marks. Rodgers v. Nowill, 5 Man., Gran. & S. 109. Taylor v. Carpenter, 11 Paige, 292.

It is no excuse that one using the trade-marks of another informs his dealers of the imitation, for succeeding sellers may not make similar disclosures. Coates v. Holbrook, 2 Sandf. Ch. 586. Clark v. Clark, 25 Barb. (N. Y.) 76.

By a statute of New York, passed April 1, 1850, ch. 123, the forging of trade-marks, with intent to deceive or defraud the purchaser or manufacturer, is made a misdemeanor; and the vending of goods, with forged stamps, scienter, without disclosing the fact to the purchaser, is likewise made penal.

See an elaborate article on this subject in the Western Law Journal, vol. vi. p. 337, taken from Hunt's Merchants' Magazine.

A public conveyance has a similar good will attached to it, and may be distinguished by a device or sign, which will be protected. Stone v. Carlow, N. York Superior Ct. Law Reporter, Nov. 1850, p. 360. Knott v. Morgan, 2 Keen, 213.

• The right of recourse by appeal or writ of error to the Supreme Court exists without regard to the amount in controversy. U. S. Laws, 1861. Feb. 18, ch. 37.

publishing, and vending them, for the term of twenty-eight years from the time of recording the title thereof; and if the author, inventor, or designer, or any of them, where the work was

*

by more than one person, United States, or resident

*374 originally composed and made be living, and a citizen of the therein, at the end of the term, or being dead, shall have left a widow, or child, or children, either or all of them living, she or they are entitled to the same exclusive right for the further term of fourteen years, on complying with the terms prescribed by the Act of Congress. Those terms are, that the author or proprietor, before publication, deposit a printed copy of the title of the book, map, chart, musical composition, print, cut, or engraving, in the clerk's office in the district in which he resides, and which copy is to be recorded; and that he cause to be inserted on the titlepage, or the page next following, of each and every edition of the book, and cause to be impressed on the face of the map, chart, musical composition, print, cut, or engraving, or upon the title or frontispiece of a volume of the same, the following words: "Entered, according to the Act of Congress, in the year by A. B., in the clerk's office of the District Court of (as the case may be.) He is then, within three months after publishing the book or other work as aforesaid, to cause to be delivered a copy of the same to the clerk of the said district court, who is once in every year to transmit a certified list of all such records of copyright, and the several books or other works deposited as aforesaid, to the secretary of state, to be preserved in his office. The violation of the copyright thus duly secured is guarded against by adequate penalties and forfeitures.

On the renewal of the copyright, the title of the work must be

of such a law with his usual ability and force. In Bentley v. Foster, 10 Sim. 329, the vice-chancellor of England held, that an alien, resident abroad, who composes a work abroad and publishes it first in England, was entitled to the protec tion of copyright. By the statute of 7 and 8 Vict. ch. 69, the queen in council may grant a copyright in any book, print, or works of art, which at the time of such order shall be first published in any foreign country, to the authors, &c., and their representatives and assigns, for a term not exceeding that of the author's copyright therein in England.

The earliest instance of a protected copyright for printing books was granted by the senate of Venice in 1469; and as early as 1486, a censorship of the press, or restraint on the sale of printed books, was introduced in Germany. Hallam's Introduction to the Literature of Europe, vol. i. 344, 348.