to enable him to enforce a forfeiture; for equity does not favor forfeitures. But if he relinquish all claim to a penalty or forfeiture, he may entitle himself to a discovery in aid of an action at law for the recovery of damages.1 § 471. Parties innocently bought and sold as genuine an article which was in fact spurious. They were restrained from selling it with the plaintiff's trade-mark; but were not ordered to account for profits, nor compelled to pay the plaintiff's costs. The Master of the Rolls said, substantially, that the right to an injunction usually carries with it the right to costs; but if a plaintiff asks for costs, and for something more than he is entitled to, he will lose the costs he might otherwise have received.2 § 472. A common carrier, entirely innocent of fraudulent intent, but having certain falsely-marked goods in his possession for the purpose of transportation, may be enjoined; but the fact of good faith is ground for refusing costs. This was the ruling in Upmann v. Elkan,3 in 1871, by Lord Chancellor Hatherly, affirming a decree of the Master of the Rolls. A firm of forwarding agents in London received from correspondents abroad a number of boxes of cigars, being counterfeit brands, to be delivered to several persons in England. On application by the makers whose brand had been imitated, the agents gave information against the consignors, and offered to either send back the cigars, or to remove the brand. The Lord Chancellor said: "It has been urged that the plaintiffs were not entitled to an injunction against the defendants, who had been guilty of no offence, being merely carriers receiving goods which, though fraudulently marked, were not for their own use, nor to be sold for them for their own benefit, but were merely received for the purpose of transmitting them to the persons to whom they were consigned. I cannot conceive a doctrine 1 See authorities cited in 2 Abb. U. S. Cts. Practice, p. 92. 2 Moet v. Couston, 10 L. T. R. (N.S.) 395. 3 L. R. 7 Chanc. Appeals, 130; also, Amer. ed. of Eng. Reports (Moaks), 1872, p. 474. more dangerous or mischievous, or more fatal to the authority of the court with respect to trade-marks. If that argument prevailed, persons being abroad, as was the case in this instance, and inclined to commit frauds upon an English trademark, could easily do so by sending their different consignments together to the possession of the defendants (who appear to be reputable agents and warehousemen), thereby committing an injury in a manner most convenient to themselves, and very mischievous to the person entitled to the benefit of the trademark." § 473. In such a case, the agent may be compelled by a court of equity to disclose the names of places to which goods bearing false marks had been transmitted by him, and all other information that is within his knowledge or may be gathered from his books tending to redress the grievance of the plaintiff, except the names of customers and the prices of the goods.1 1 Carver v. Pinto Leite, L. R. 7 Chanc. 90. CHAPTER X. DEFENCES. - The Complainant must come with "Clean Hands.". Want of Truth. Quack Medicines not protected. — What Courts regard as Falsehoods. — Mere Exaggeration in Advertisement does not disentitle to Relief. - Nor Fictitious Name of Manufacturer, in Absence of Fraud. - No Defence that Spurious Article is Equal to Genuine. — Laches of Complainant. What not deemed Laches. § 474. THE most important of the grounds of defence to a bill for infringement is the well-established rule of equity, that the protection of the court will not be extended to a person whose case is not founded in truth. That appears to have been first made use of as a ground of defence to a bill for an injunction to restrain the alleged violation of a right to use a trade-mark in Hogg v. Kirby.1 The objection there taken was that the complainant, claiming the protection of the court for the title-page of his magazine, which professed to be "by William Granger, Esq.," was in fact guilty of an imposition on the public, it being shown that the name of the alleged author was fictitious. The excuse offered was that it was a custom of the trade; but Lord Eldon states in his judgment that he felt considerable difficulty on the question, and that this custom, though it might be very usual, appeared to him very much like a fraud on the public. His lordship, however, deciding the cause upon other grounds, left this question as an ingredient in an action for damages. In Partridge v. Menck, the complainant claimed the exclusive right to impose upon the public 2 1 How. App. Cases, 158. 1 8 Ves. 215. matches made by himself as those manufactured by one Golsh; and although the court decided the cause upon the ground of dissimilarity of the labels, a strong opinion was expressed against his right to recover, on the ground of his attempted deception. So, also, in Samuel v. Berger, where the plaintiffs asked the court to aid them in passing off upon the public watches made by them, as those made by another person, from whom they had purchased authority to use his name. § 475. The manufacturer of a quack medicine is not entitled to invoke the intervention of a court of equity; for it is not the office of chancery to intervene, by its summary process, in controversies connected with the title to such a matter: non nostrum tantas componere ;" and an injunction will be refused against the vendor of a patent medicine at the suit of his brother quack, who complained that his label and envelope of certificates had been imitated, for the special action of chancery cannot be involved in a controversy which has so little merit to commend it on either side. § 476. The court said, in Smith v. Woodruff, that the justice and morality of this defence were not very high in that instance, yet the rule must be followed if the case were brought within its application: that it is a defence that ought to be suggested by the court in some cases, and probably would be in all cases where the imposition is flagrant. For instance, where a quack compounds noxious and dangerous drugs, hurtful to the human constitution, and advertises them as a safe and sure remedy for disease; or where some charlatan avails himself of the prejudice, superstition, or ignorance of some portion of the public, to palm off a worthless article, even when not injurious, the case falls beneath the dignity of a court of justice to lend its aid for the redress of such a party, who has been interfered with by the imitations of another quack or charlatan. 113 How. Pr. R. 342, and 4 Abb. Pr. R. 88. 2 Fowle v. Spear, 7 Penn. L. J. 176; Heath v. Wright, 3 Wall. Jr. 141. § 477. The case of The Leather Co. v. The American Leather Co.,1 in the House of Lords, in 1865, furnishes instruction upon more than one point, and it is well worthy of the expenditure of time in its perusal in regard to the question of truth in representations. § 478. The appellants and the respondents were rival jointstock companies, engaged in the manufacture of leather cloth. The plaintiffs are an English company, formed in 1857, with limited liability, for the purpose of making and selling an article called leather cloth. They bought the business of an American company, which was formed for the purpose of carrying on this manufacture in New Jersey in the United States, and at West Ham, in the county of Essex, in England. The name of the company was 66 The Crockett International Leather Cloth Company." The original inventors and manufacturers of this article, called leather cloth, were a firm of "Crockett & Co." in the United States, who, upon the formation of the International Company, ceased to carry on a separate business, and became shareholders in that company, but have resumed business, and are manufacturers of leather cloth in the United States. The International Company by its agents obtained, in the month of January, 1856, an English patent for tanning the leather cloth, and having done so, they devised an elaborate label, to be attached to the goods manufactured by them, which, being in a circular form, had its circumference formed by the words "Crockett International Leather Cloth Company, Newark," with the initials "N. J., U. S. A.," meaning New Jersey, United States of America, and also the words "West Ham, Essex, England." These words and letters formed the periphery or outer rim of the label. Within the circle, at the top, is the word "Excelsior," below which is an eagle with expanded wings, and beneath the eagle are printed these words, "Crockett & Co.'s Tanned Leather Cloth, Patented Jan. 24, 1856, J. R. & C. P. 1 11 Jur. (N.s.) 513. |
