Calderwood v. Mansfield, 26195-G.

• Decision Date: 22 April 1947
• Docket Number: No. 26195-G.,26195-G.
• Citation: 71 F. Supp. 480
• Parties: CALDERWOOD v. MANSFIELD et al.
• Court: U.S. District Court — Northern District of California

71 F. Supp. 480

CALDERWOOD v. MANSFIELD et al.

No. 26195-G.

District Court, N. D. California, S. D.

April 22, 1947.

Hancock, Rothert & Low and Harlow P. Rothert, all of San Francisco, Cal., for plaintiff.

Boyken, Mohler & Beckley, A. W. Boyken, W. Bruce Beckley, and Edgar C. Levey, all of San Francisco, Cal., for defendants.

GOODMAN, District Judge.

This is a qui tam action to recover the penalties prescribed by R. S. 4901, 35 U.S. C.A. § 50. By the statute, which is derived from the Act of July 8, 1870, 16 Stat. 203, penalties are imposed upon any person "who, in any manner, marks upon or affixes to any unpatented article the word `patent,' * * * for the purpose of deceiving the public" and one-half of the penalties imposed may be awarded to the informer who successfully prosecutes an action for the recovery thereof.

The nature of this action is penal. Although it may be brought by an informer or on behalf of the United States, injury to private interest is not pertinent. Newgold v. American Electrical Novelty & Mfg. Co., D. C., 108 F. 341. See Winner v. United States, 7 Cir., 33 F.2d 507, to the effect that the violation of 35 U.S.C.A. § 50 is an offense against the United States.

Plaintiff, a stenographer employed in the office of the attorneys for plaintiff, filed the complaint herein, admittedly at the instance of and for the benefit of a competitor of defendants.¹ The complaint charged defendants with causing certain metal watch wrist bands to be marked "Des. Pat. 139596" despite the fact that such wrist bands were not covered by the said patent. However, it is not disputed that such defendants as owners or licensees of the patent were lawfully entitled to make proper use of the patent as a marking. Recovery of the prescribed penalty of $100 for each offense was sought.

At the trial the evidence presented by plaintiff disclosed that many thousands of a certain type of watch wrist band manufactured by certain of the defendants were marked as alleged. Design Patent #139596 with its included drawings and specifications was introduced in evidence as well as samples of the wrist bands manufactured by defendants. Comparison of the patent design with the manufactured bands discloses some differences. Defendants' competitor, the real party plaintiff, manufactured a similar type of wrist band for which patent application was pending. At the close of plaintiff's case, defendants moved to dismiss for insufficiency of the evidence. The realities of the case, as developed by the testimony, disclose a competitor controversy between the real party plaintiff and defendants. But it is a controversy determinable in orthodox patent litigation or within the area of unfair competition.

The validity of the design patent is not in issue, nor is our equity jurisdiction invoked to restrain alleged infringement or for damages for infringement.

Assuming the differences between the patent design and the manufactured wrist band to be substantial,² such differences cannot give rise to a cause of action under 35 U.S.C.A. § 50, unless they prove to be in furtherance of a "purpose of deceiving the public."

While the informer statute, under which this cause is prosecuted, is included in the part of the code, entitled "Patents," as already pointed out, it is penal. As in the case of other informer statutes, rewards are offered as a matter of public policy to accomplish outlawing of fraudulent and illegal acts to the public detriment.³

True, it does appear that the defendants and the real party plaintiff are vis-a-vis as to the validity of their respective claims of...