Felt v. Ronson Art Metal Works, Civ. No. 3971.

• Decision Date: 29 August 1952
• Docket Number: Civ. No. 3971.
• Citation: 107 F. Supp. 84
• Parties: FELT, for USE of UNITED STATES v. RONSON ART METAL WORKS, Inc. et al.
• Court: U.S. District Court — District of Minnesota

107 F. Supp. 84

FELT, for USE of UNITED STATES v. RONSON ART METAL WORKS, Inc. et al.

Civ. No. 3971.

United States District Court D. Minnesota, Fourth Division.

August 29, 1952.

Oppenheimer, Hodgson, Brown, Baer & Wolff, St. Paul, Minn., of counsel; and Edmund C. Rogers, St. Louis, Mo., for plaintiff.

Paul, Moore & Dugger, and Robert P. White, Minneapolis, Minn., for defendants.

JOYCE, District Judge.

Defendants, Ronson Art Metal Works (hereinafter referred to as RAMW) and Ronson Service of Minnesota (hereinafter referred to as RSM), move this court under Rule 12 of the Federal Rules of Civil Procedure, 28 U.S.C.A., for an order dismissing the above action on a number of grounds. Plaintiff brings this qui tam action to recover a minimum penalty of $100 under the provisions of Section 4901 Revised Statutes, the pertinent portion of which provides that any person:

"* * * Who, in any manner, marks upon or affixes to any unpatented article the word `patent,' or any word importing that the same is patented, for the purpose of deceiving the public, shall be liable, for every such offense, to a penalty of not less than $100, with costs; one-half of said penalty to the person who shall sue for the same, and the other to the use of the United States, to be recovered by suit in any district court of the United States within whose jurisdiction such offense may have been committed." 35 U.S.C.A. § 50.

The articles upon which it is alleged the false markings were placed are the "Viking" and the "Vanguard" models of cigarette lighters manufactured by RAMW. The allegations of the complaint pertinent to this phase of the motion state on information and belief that RSM as the agent, instrumentality or adjunct of RAMW sells pyrophoric cigarette lighters using compressed liquefied petroleum fuel, and in addition thereto converts cigarette lighters manufactured by RAMW into lighters using cartridges for filling said lighters with compressed liquefied petroleum fuel, and that the lighter so converted or sold by RSM are conspicuously marked:

"Ronson, Newark, N. J. U. S. A. U.S. Patents Re. 19,023, 2,481,195 Other U.S. and Foreign Pats. Pdg."

for the purpose of deceiving the public, when in fact it knows or should have known that said lighters do not come within the scope of those patents. For the purposes of this motion only it shall be assumed that the lighters do not come within the scope of said patents. Counsel for plaintiff admits that the sale alone of such lighters by RSM would not constitute a violation of the above statute, but contends that the process of "conversion" alleged by the complaint constitutes the prohibited "affixing in any manner" of the false patent markings. The complaint's allegations with reference to the operations of RSM are meager and little more than conclusions, and in this respect it must be noted that no affidavits have been submitted by plaintiff who appears content to rely upon the complaint and the allegations of fact contained in the affidavits in support of the motion. Insofar as determining whether there exists any genuine issue of material fact, where plaintiff fails to introduce any facts dispelling the conclusion required by the facts adduced in support of the motion, the rule to be followed is that which is succinctly stated in 3 Barron & Holtzoff, Federal Practice and Procedure, page 88:

"The rationale of these cases seems to be that the moving party has the burden of showing that there is no genuine issue as to a material fact and that he is entitled to judgment as a matter of law, but that when he has made a prima facie showing to this effect the opposing party cannot defeat a motion for summary judgment and require a trial by the bare contention that an issue of fact exists. He must show that evidence is available which would justify a trial of the issue."

The first question raised by the instant motion, and as to this phase counsel request that the motion be regarded as one for summary judgment, is as to the jurisdiction of this court. Counsel for defendants earnestly urge that this court is without jurisdiction of the subject matter since it conclusively appears from the affidavits in support of the motion that the offense was not committed within the jurisdiction of this court. The language of the statute clearly requires that the action be brought in the district court within whose jurisdiction such offense may have been committed. See Pentlarge v. Kirby, D.C., 19 F. 501; Winnee v. Snow, D.C., 19 F. 507; Hitchkiss v. Samuel Cupples Wooden-ware Co., D.C., 53 F. 1018. The offense or the act which is made penal is the act of stamping or affixing in any manner the word "patent" on an unpatented article with an intent to deceive the public. Pentlarge v. Kirby, supra. Since the section is penal and not compensatory in nature, it must be strictly construed. Schwebel v. Bothe, D.C., 40 F. 478; Fear v. Horner Sales Corp., D.C., 10 F.R.D. 25; London v. Everett H. Dunbar Corp., 1 Cir., 179 F. 506.

It appears without dispute that RAMW is a New Jersey corporation, engaged there in the manufacture and sale of cigarette lighters and that it is not engaged in or authorized to do business in Minnesota...