Franklin Brass Foundry Co. v. Shapiro & Aronson, Inc.

• Decision Date: 21 December 1921
• Docket Number: 2715.
• Citation: 278 F. 435
• Parties: FRANKLIN BRASS FOUNDRY CO. et al. v. SHAPIRO & ARONSON, Inc.
• Court: U.S. Court of Appeals — Third Circuit

278 F. 435

FRANKLIN BRASS FOUNDRY CO. et al. v. SHAPIRO & ARONSON, Inc.

No. 2715.

United States Court of Appeals, Third Circuit.

December 21, 1921

Hector T. Fenton, of Philadelphia, Pa., for appellants.

Dodson & Roe, of New York City (E. Hayward Fairbanks and J. Bonsall Taylor, both of Philadelphia, Pa., of counsel), for appellee.

Before WOOLLEY and DAVIS, Circuit Judges, and MORRIS, District Judge.

MORRIS District Judge.

Shapiro & Aronson, Inc., by its bill of complaint filed January 26 1920, charges the defendants, Franklin Brass Foundry Company a corporation, and A. Slotko, with infringement of complainant's letters patent No. 5,296 for a design for a lighting fixture arm, and prays an injunction and an accounting. The joint and several answer of the defendants alleges, in part, that the plaintiff made and sold quantities of the arm without fixing thereon notice of the patent, as required by R.S. Sec. 4900 (Comp. St. Sec. 9446), and without, in the alternative, giving to the defendants, prior to the filing of the bill, any legally sufficient actual notice of the infringement. The court below found the patent valid and infringed, and 'that the defendants were given actual notice of the patent and their infringement in 1919 and continued to sell after said notice. ' A decree was entered, granting an injunction and directing an accounting of profits from February 4, 1919, the date of the patent, and an accounting of damages 'since defendants received notice of the patent. ' The defendants here challenge the findings of notice and subsequent infringement, and the decree in so far as it directs an accounting.

R.S Sec. 4900, made it the duty of the complainant herein to give sufficient notice to the public of its patent by fixing upon the arm the word 'Patented,' together with the day and year the patent was granted, and directs that--

'In any suit for infringement, by the party failing so to mark, no damages shall be recovered by the plaintiff, except on proof that the defendant was duly notified of the infringement, and continued, after such notice, to make, use, or vend the article so patented.'

The marking fixed upon the patented arm by the complainant specified the month and year, but not the day, the patent was granted. The complainant does not contend that such marking meets the requirements of the statute. The court below held it insufficient, and we concur in that view. Hawley v. Bagley, Fed. Cas. No. 6,248.

The evidence upon which rests the findings that the defendants were given actual notice of the patent, and that after such notice they continued to infringe, consists only of the testimony of the defendant Slotko, called, as under cross-examination, by the complainant. His testimony as to notice is very meager. It is in substance that a man called upon him and told him that the arm being sold by him (Slotko) was an infringement of a patent. It does not appear from the evidence that the man gave his name, stated for whom he was acting, or indicated, either by its number, or the day and year it was granted, or by the name of the patentee, or by the character or subject-matter of the patent, what patent Slotko was charged with infringing. The statement made by the stranger to Slotko was, according to the latter's testimony, in our opinion no more than a mere accusation. If the actual notice given to Slotko was more complete than is shown by his testimony, the burden of so proving rested upon the complainant. This burden it did not meet. Actual notice must be actually proved, and cannot be assumed as a legal inference from any facts which amount not to actual proof of the fact, and we think that a defendant is not 'duly notified,' within the meaning of the statute, unless the facts with which he is supplied would, if fixed upon the patented article, constitute 'sufficient notice.' N.Y. Pharmical Ass'n v. Tilden (C.C.) 14 F. 740.

Nor do we find proof that the Foundry Company, the remaining defendant and the manufacturer of the arms sold by Slotko, was better notified than the latter. Here, again, the only evidence is the testimony of Slotko. It is limited to the statement that, after the stranger called upon him, he wrote to the Foundry Company. The letter was not introduced in evidence, nor were its contents otherwise proved. It may not be presumed that the information therein contained went beyond that given by the stranger to Slotko. Consequently the evidence, as we understand it, fails to show that prior to the filing of the bill of complaint either form of notice prescribed by the statute was given to either defendant. Manifestly, then, there is no opportunity to find that, prior to the filing of the bill, either defendant continued after notice to make, use, or vend the patented article.

How do these findings affect the decree for an accounting? Under the express provisions of R.S. Sec. 4900, the absence of notice, constructive or actual, to the defendants prevents recovery by the complainant of 'damages' from either defendant for any act done by the latter-- at least prior to the filing of the bill of complaint. If, however, the word 'damages,' as used in that section of the Revised Statutes, does not include 'profits,' the plaintiff is entitled to a decree directing an accounting of 'profits' from February 4, 1919, the date of the patent; but if 'damages,' as there used, does include 'profits,' then it is plain that recovery of 'profits' is likewise prohibited for any act done by either defendant-- at least prior to the filing of the bill. Hence it becomes necessary to determine whether the word 'damages,' as used in R.S. Sec. 4900, includes or excludes profits. The decisions of the District Courts upon this point undoubtedly show much contrariety in their views, thereby shrouding the question in some doubt. To remove the question from its present uncertainty, so far as that may be done by the deliberate judgment of this court, and to reach a satisfactory judgment, it will be necessary to review the course of legislation and judicial decisions, so far as it bears upon the matter, from the beginning, first observing, however, that the provisions of R.S. Sec. 4900, denying damages to a complainant under the conditions there specified, had their origin in section 13 of the Patent Act of March 2, 1861 (12 Stat. 246), that courts of equity were at the time of the passage of that act without jurisdiction to award to a complainant in a patent suit damages in addition to profits, and that the right of a complainant to recover in a court of equity damages in addition to profits, now provided for in R.S. Sec. 4921 (Comp. St. Sec. 9467), was first conferred by section 55 of the Consolidated Patent Act of 1870 (16 Stat. 198 (Comp. St. Sec. 9467)).

The history of the jurisdiction in equity of the federal courts over patent suits was reviewed in Root v. Railway Co., 105 U.S. 189, 26 L.Ed. 975. Jurisdiction of cases arising under any law of the United States granting or confirming to inventors the exclusive right to their inventions was first expressly conferred by Congress upon the Circuit Courts of the United States in equity by the Act of February 15, 1819 (3 Stat. 481, c. 19). Theretofore Congress had passed three statutes in execution of the power granted to it by the Constitution to promote the progress of science and useful arts. Each of those acts dealt only with actions at law. The first, passed April 10, 1790 (1 Stat. 109), made the infringer of a patent liable to forfeit and pay to the patentee such damages as should be assessed by a jury, and, moreover, to forfeit to the person aggrieved the infringing thing. The second, or Act of February 21, 1793 (1 Stat. 318), fixed the damages the infringer should forfeit and pay at a sum equal to three times the price for which the patentee had usually sold or licensed the use of the invention. The third, enacted April 17, 1800 (2 Stat. 37), again changed the rule, and required the infringer to pay to the patentee 'a sum equal to three times the actual damage sustained by such patentee.'

Mr. Justice Livingston, in the year 1811, sitting at circuit, in Livingston v. Van Ingen, 1 Paine, 45, Fed. Cas. No. 8,420, held that, Congress having confined the remedy for a breach of patent rights to an action at law, a Circuit Court of the United States sitting as a court of equity could not entertain cognizance of a bill to restrain the infringement of a patent, where both parties were citizens of the same state, and dismissed the bill. Congress supplied that defect of jurisdiction by the Act of February 15, 1819 (3 Stat. 481), which provided:

'That the Circuit Courts of the United States shall have original cognizance, as well in equity as at law, of all actions, suits, controversies, and cases, arising under any law of the United States, granting or confirming to authors or inventors the exclusive right to their respective writings, inventions, and discoveries; and upon any bill in equity, filed by any party aggrieved in any such cases, shall have authority to grant injunctions, according to the course and principles of courts of equity, to prevent the violation of the rights of any authors or inventors, secured to them by any laws of the United States, on such terms and conditions as the said courts may deem fit and reasonable.'

In 1825 Mr. Justice Thompson had occasion to consider, in Sullivan v. Redfield, 1 Paine, 441, Fed. Cas. No. 13,597, the nature of equity jurisdiction in patent suits and the effect of the act of 1819. He said:

'The equity jurisdiction exercised by the court over patents for inventions is merely in aid of the common law, and in order to give more complete effect to the provisions of the statute under which the patent is granted.'

...