ant's profits, and such proof becomes clearly admissible; but, even then, the recovery is what the jury shall find to be the plaintiff's loss, not because the defendant realized profits, but because, under all the circumstances, the jury infer, as a fact, but for the interference, the plaintiff would have realized those profits. It may be said, with some plausibility, that the plaintiff's damages may sometimes be greater than the profits which the defendants have made, but ought never to be considered less; and that the defendants having illegally infringed, should always be held to the presumption that the plaintiff would have made as much as they have realized, and should not be permitted to retain any of the fruits of their illegal conduct, by showing that the plaintiff could not have manufactured or used the invention so profitably." This reasoning is lucid and satisfactory, so far as applicable to a patent case, but should not be strictly applied to a trade-mark infringement.

§ 514. A patentee is presumed to have employed genius, or talent, at least, and to have expended time and money upon his invention; and in consideration thereof he is allowed, for a limited time, a monopoly of the thing invented. No one else in the country which grants the patent has a right to vend or use the article. All profits from its sale or use belong to the patentee or his assigns. The trade in it is absolutely his during the lifetime of the patent. Not so the traffic in merchandise to which a trade-mark may be attached; for a thousand persons may have a perfect right to manufacture and sell the same class of goods, and of the same quality and value, and yet but one person have a right to impress those goods with a certain peculiar symbol. It may be that the infringer has facilities for selling a hundred times as much as he whose mark is imitated. Would the small dealer be entitled to receive as damages a hundred times as much profit as he could possibly have made? Reason forbids it. Courts would regard such a rule in a trade-mark case as extravagant and mischievous.

§ 515. Trade-mark and patent cases, therefore, cannot be

controlled by the same inflexible rule of measurement of damages for infringement. We are unembarrassed in a patent case where the patentee has adopted a patent-fee as one mode of remuneration, and in the fee has fixed his own measure of the value of the use of the machine for the entire term, or until that particular machine is worn out, and the computation is readily made;1 for if the patentee has an established price in the market for his patent-right, or what is called a patentfee, that sum with the interest constitutes the measure of damages.2 In one case, the plaintiff insisted that he was entitled to recover for the infringement the full amount which he would himself have made on the articles sold, had he manufactured and sold them himself, upon his own established terms. He gave evidence showing the price at which he sold, and the profits realized upon sales at those prices; and the court adopted those profits as the measure of damages, and gave him the benefit of the rule, so far as the damages could be ascertained from the testimony.3 But notwithstanding this will not be applicable to all cases of trade-mark infringements, we can understand perfectly well how the analogy may be of assistance. Let us take an example:

§ 516. The plaintiff has the exclusive right to vend by a fanciful designation a certain article, the secret of the manufacture of which he possesses. It is well-settled as matter of law, that he has no exclusive right of property in the compound itself, it not being patented; consequently, if any one by fair means discover the secret of manufacture, he may go into competition with the inventor himself, in obtaining the patronage of the public in the sales of the very article. we set out with the fact that the plaintiff has the exclusive title in the name of the article, the said name being an arbi

1 Spaulding v. Page, 4 Fisher, 641.

2 Sickles v. Borden, 3 Blatch. 536.

But

3 Spaulding v. Tucker, 4 Fish. 633, as cited by the court in Spaulding v. Page, supra.

4 Davis v. Kendall, 2 R. I. 566.

trary symbol, and possessing all the essentials of a lawful trade-mark. The public know the article by that name, and would not buy it under any other. If the defendant sell the identical compound, a knowledge of the ingredients of which he may have obtained by chemical analysis, he may do so without hindrance, provided he do not sell it under the name given to it by the plaintiff; but if he do so sell it, he is guilty of infringement of the mark. The number of articles sold by the defendant being ascertained, we have a means of measuring the damages, by applying the rule in patent cases. The presumption must be that the plaintiff would have made all the sales, had it not been for the alleged conduct of the defendant.

§ 517. The courts of equity seem to indicate a rule for measuring damages, by their practice of ordering the defendant to keep an account of sales of merchandise bearing the simulated mark, to the end that they may be paid as indemnity to the complainant. But that this is an exceedingly fallacious guide in actions at law must be manifest, for many circumstances may conspire to cause injury from the improper use of the mark, and many of such circumstances must be taken into consideration, in assessing damages. Unfair competition may cause a loss of reputation and good-will, and depreciation of the class of goods sold by the parties. Sawyer, J., in Carter v. Baker,1 told the jury that they might take into consideration that fact that the plaintiffs, by the infringement, may have sold their articles at a higher price than the defendants had received; and yet, he said, that only those damages which directly and immediately flow from the wrongful act can be considered, and that remote consequential damages must be discarded.

§ 518. No wrong-doer can be allowed to apportion or qualify his own wrong. As a loss has actually happened whilst his wrongful act was in operation and force, and which is attribu

1 4 Fisher, 404.

table to his wrongful act, he cannot set up as an answer to the action the bare possibility of a loss, if his wrongful act had not been done.1 The disposition of the courts, in such case, is to make the wrong-doer liable for injurious consequences flowing from the illegal acts, although they be very remote.

§ 519. Exemplary Damages. In the case of Day v. Woodworth, in the Supreme Court of the United States,2 Mr. Justice Grier, in delivering the opinion of the court, said: "It is a well-established principle of the common law that in actions of trespass, and all actions in the case for torts, a jury may inflict what are called exemplary, punitory, or vindictive damages upon a defendant, having in view the enormity of his offence, rather than the measure of compensation to the plaintiff. . . . By the common, as well as by statute law, men are often punished for aggravated conduct or lawless acts by means of a civil action, and the damages inflicted by way of penalty or punishment given to the party injured. . . . And the damages assessed in the circumstances, showing the degree of moral turpitude or atrocity of defendant's conduct, may properly be termed exemplary or vindictive, rather than compensatory."

§ 520. Thus, one who shall counterfeit a term implying deliberation and intent, as contradistinguished from a casual imitation will be held to a more grave responsibility than another who unwittingly may have copied a rival's mark.

1 Tindal, C. J., Davis v. Garrett, 6 Bing. Rep. 716 (19 Eng. C. L. R. 212). 2 13 How. 363.

CHAPTER XII.

RIGHTS ANALOGOUS TO THOSE OF TRADE-MARKS.

Classification. Good-will of Trade. -Name of Firm, Business, &c. - Signs. -Firm-name on Dissolution of Partnership. - Representations on Shopfronts. Use of Word “Original," or Equivalent Expression. - Use of Firmname after Dissolution of Partnership. - Labels and Wrappers. - Author or Publisher's Right to Name of Publication. - Names on Omnibus-coach. — Secret Process. Breach of Faith.

§ 521. THERE are two species of property which are protected by courts, on principles analogous to those on which rest the decisions in cases of trade-marks proper. These are, the good-will of a trade, so far as it is contained in the style or title of a partnership, or the name of a trader, or the description of his place of business, or peculiar manufacture or product, and labels and wrappers of goods; and property in a name or distinguishing style, as connected with a literary publication, or a work of art. There is another class of cases, too, which must not be entirely omitted from consideration, — those in which the interference of a court has been grounded on the general doctrine of the prevention of damage arising from a breach of trust, or confidence. By this method of classification, many cases may be considered under one general head.

§ 522. Good-will. — The authorities in general describe the good-will of a trade as "a probability that the old customers will resort to the old place."1 Judge Story 2 says that it may be described to be the advantage or benefit which is acquired by

1 Howe v. Searing, 10 Abb. Pr. R. 264; 6 Bos. 354, and 19 How. Pr. R. 14. 2 Partnership, § 99.