Sternberg Mfg. Co. v. Miller, Du Brul & Peters Mfg. Co.

• Decision Date: 08 May 1909
• Docket Number: 2,816.
• Citation: 170 F. 298
• Parties: STERNBERG MFG. CO. v. MILLER, DU BRUL & PETERS MFG. CO.
• Court: U.S. Court of Appeals — Eighth Circuit

170 F. 298

STERNBERG MFG. CO. v. MILLER, DU BRUL & PETERS MFG. CO.

No. 2,816.

United States Court of Appeals, Eighth Circuit.

May 8, 1909

W. J Roberts and Louis Block, for plaintiff in error.

William C. Howell (Hervey S. Knight, on the brief), for defendant in error.

Before SANBORN and ADAMS, Circuit Judges, and RINER, District Judge.

ADAMS Circuit Judge.

This was an action to recover damages for the publication of an alleged libelous article. The plaintiff, the Miller, Du Brul & Peters Manufacturing Company, a competitor of the defendant in the business of manufacturing and selling cigar molds claimed in its amended and substituted complaint, upon which the cause went to trial, that the defendant published of and concerning plaintiff's business and its method of conducting it two certain defamatory articles, which formed the occasion for two separate counts in the complaint. The verdict and judgment in favor of plaintiff being general only one of these articles will be specifically considered. It is as follows:

'Please Hang Up.

'Important Notice.

'Please Read.

'A recent threatening circular sent out to the cigar makers of the country by the Miller, Du Brul & Peters Manufacturing Company is a remarkable document. A valid patent secures an inventor a monopoly for seventeen years.

For that time a valid patent is better than a trust because it is lawful. The gentlemen composing said company claim in their circular that beginning thirty years ago they have taken out 149 patents, but they don't state how many of the 149 are now alive. A patent issued 30 years ago has been dead for 13 years. We made the same style of molds ten years ago that we are making to-day. Why do they resort to lawsuits at this late day? The answer is easy. Simply because their patents are no longer a protection. Congress gives an inventor a monopoly for seventeen years. But only in return for his promise to let the public have free use of his invention at the end of that time. Another trust. The Miller, Du Brul & Peters Manufacturing Company has no live valid patent to-day, and it does not want to keep its promise made to the people through Congress over 17 years ago. It has no lawful monopoly, and so it is now hungry to be a trust. After a 'live and let live' career of thirty years, it now proposes to kill off competition by using the courts as a club. It wants to use injunctions and in this way gain the power of a trust. The cigar makers know the class of people who resort to injunctions. The trust will push the price away up and force you to pay it. No injunction will be issued against us. We have made the best cigar mold on the market for years, have infringed no patent, and won't be bluffed out of business. We are in business to stay, and will fight any suit brought against us. And we will protect all users of our molds. We have employed the best talent to protect us and to save the public from the forming of this trust, and we propose to see that Messrs. Miller, Du Brul & Peters keep the promise they made to the people at the time their patents were granted. To our customers we say: Stand pat. Don't worry. Send all threatening notices you receive, to us, and we will put them to good use. The Sternberg Mfg. Co., 1702-1712 W. Locust St., Davenport, Iowa, U.S.A.'

The defendant in its answer admits the publication of the article, but avers that it was published to counteract the effect of two certain articles published by plaintiff, representing itself to be the sole owner of all patents for making cigar molds known as the 'vertical top,' alleging that it had brought a line of suits against all manufacturers of that particular mold and warning all persons against infringement. The two articles so alleged to have been published by plaintiff contained much laudation and puffing of the value of its patents and of its manufactured product, strong assertion of exclusive right to manufacture the vertical top mold, and a precautionary warning of danger to all who should attempt to infringe its rights. The foregoing facts are pleaded by defendant in a double aspect: First, as a justification of the publication complained of by plaintiff; and, second, by way of mitigation of damages.

No question of law is preserved for our consideration concerning the effect of the articles published by plaintiff in mitigation of damages, and we refrain from further reference to that aspect of the defense. The present writ of error challenges the judgment for several reasons which will be soon considered, but chiefly because of the contention that the article published by defendant was not libelous per se, and because there was no allegation or proof of special damages such as would have been necessary if it were not so libelous. The trial court charged the jury in part as follows:

'Defendant was wrong when it said that Du Brul Company had no live, valid patents, because Du Brul Company had live, valid patents relating to the manufacture of cigars.'

To this an exception was duly saved by defendant. The court also told the jury in effect that if plaintiff had theretofore published articles offensive to the defendant, while the latter had the right to issue circulars fairly refuting the offensive matter, it did not have the right by way of counteracting the effect of the offensive articles to libel the plaintiff; that if plaintiff libeled the defendant, the defendant's remedy was an action at law, rather than a libelous retort.

To this last feature the defendant also saved due exception. These two were the only exceptions to the charge, and they, in our opinion, were not well taken. The charge first...