Newgold v. American Electrical Novelty & Mfg. Co.

• Decision Date: 17 April 1901
• Citation: 108 F. 341
• Parties: NEWGOLD v. AMERICAN ELECTRICAL NOVELTY & MFG. CO.
• Court: U.S. District Court — Southern District of New York

108 F. 341

NEWGOLD v. AMERICAN ELECTRICAL NOVELTY & MFG. CO.

United States District Court, S.D. New York.

April 17, 1901

Clifford E. Dunn, for plaintiff.

Ewing Whitman & Ewing, for defendant.

BROWN District Judge.

In the above qui tam action, which is brought under section 4901 of the United States Revised Statutes for the recovery of $40,000 for the alleged false marking of 400 articles as patented, a motion is made that the defendant be compelled to produce its books and papers before trial for examination by the plaintiff, for the purpose of showing the number of penalties alleged to have been incurred.

The right to the production or discovery of these papers is based upon section 724 of the United States Revised Statutes, which provides as follows:

'Sec 724. In the trial of actions at law, the courts of the United States may, on motion and due notice thereof require the parties to produce books or writings in their possession or power, which contain evidence pertinent to the issue, in cases and under circumstances where they might be compelled to produce the same by the ordinary rules of proceeding in chancery.'

In the case of Bloede Co. of Baltimore City v. Joseph Bancroft & Sons Co. (C.C.) 98 F. 175, it was held that the provisions of the above section, together with other provisions of the state statute, would authorize an order for the production of books and papers before the trial, as well as at the trial itself.

Without considering the other objections that have been raised to the relief sought, it is sufficient to point out that the last clause of the section above quoted, as well as the provisions of section 860 of the United States Revised Statutes forbids the granting of this motion. The language of section 4901 expressly describes the recovery in actions like the present as the recovery of a 'penalty.' For every such offense it is declared 'the defendant shall be liable to a penalty of not less than $100; 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,' etc.

In the case of French v. Foley (D.C.) 11 F. 801, 804, this statute was described as being 'a highly penal one,' and the rules applicable to penal statutes were considered to be applicable to section 4901. I do not see how it can be otherwise construed; and upon this view of the statute, a motion like the present cannot prevail. In the case of Counselman v. Hitchcock, 142 U.S. 547, 563, 12 Sup.Ct. 198, 35 L.Ed. 1114, it is said: 'It is an ancient principle of the law of evidence, that a witness shall not be compelled, in any proceeding, to make disclosures or to give testimony which will tend to criminate him or subject him to fines, penalties or forfeitures:'

-- And numerous cases are there cited to that effect. See, also, In re Feldstein (D.C.) 103 F. 269. The provision of section 724 above quoted, expressly limits its application to cases and circumstances where the party 'might be compelled to produce the books and papers by the ordinary rules of proceeding in chancery. ' But no such production as here sought would be required by the ordinary rules of proceeding in chancery for use in an action for penalties like the present. 'It is a universal rule in equity,' says Story, J., 'never to enforce either a penalty or a forfeiture; and a bill of discovery will not lie in a case which involves a penalty or a forfeiture.' 2 Story, Eq.Jur. 1319, 1494, 1509; Story, Eq.Pl. 575; 1 Greenl.Ev. 4512; Fost. Fed. Prac. 84, p. 140; Stewart v. Drasha, 4 McLean, 563, Fed.Cas.No. 13,424; Atwill v. Ferrett, 2 Blatchf. 39, 44, 45, Fed.Cas.No. 640; Johnson v. Donaldson, 18 Blatchf. 287, 288, 3 F. 22; U.S. v. White (C.C.) 17 F. 561, 565.

Section 860 of the United States Revised Statutes, moreover, provides that no 'discovery or evidence obtained from a party or witness by means of a judicial proceeding in this or any foreign country shall be given in evidence, or in any manner used against him * * * in any court of the United States in any criminal proceeding or for the enforcement of any penalty or forfeiture. ' See, also, the case of Boyd v. U.S., 116 U.S. 616, 6 Sup.Ct. 524, 29 L.Ed. 746, where the general subject is considered in its broadest relations, and even an express provision of an act of congress for the discovery of books and papers was held to be unconstitutional and void.

In the case of Johnson...