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EEPORTS 


OF 


CASES  ARGUED  AND  DETERMINED 


DV  TBE 


€xxmt  €mxt  jaf  %  Stnitei  States 


FOB  THE  SECOND  CIRCUIT. 


BT   SAMUEL  BLATCHFORD, 

AM  AMOOUTB  lUSnOB  Or  Xm  IDFBniS  CODBT  OF  TBI  VSOMD  8TAT1 


VOLUME  XX. 


NEW  YORK: 
BAKER,  VOORHIS  <fe  CO.,  PUBLISHERS, 

6S    NASSAU    STREET. 
1883. 


Catered,  accordiog  to  Act  of  Congress,  in  the  year  one  thousand  eight  hundred  and  elghtj4hree, 

Bt    SAMUEL    BLATCHFORD, 
In  the  Office  of  the  Librarian  of  Gongresa,  at  Washington. 


LIBRARY  OF  THE 

LrU'~  ^T/UyrORB,  JR.,  UlWMUITf 

Uc,  tdPARTHIE/IT. 


I 

1 


Bakbx  ft  GoDWiir,  Pkimtbks, 
N«.  ff  Ftok  Row,  N«w  Twk. 


JUDGES 

OF  THE  CIROUIT  COURTS  OF  THE  UNITED  STATES 

WITHIN  THE  SECOND  CmOUIT, 

DXTBING    THE    TIME    OF    THSBE    BEPOBTB. 


WARD  HUNT,  Assooiate  Jubtioe  of  the  Supbeme  Cottbt 
OF  THE  United  States.* 

SAMUEL   BLATOHFORD,    Associate    Justice    op   the 

SUPBEME    COUBT    OF    THE    UnTTED    StATES.* 

SAMUEL  BLATOHFORD,  Cibcuit  Judge  of  the  Second 

Judicial  CiBouiT.t 
WllJJAM  J.  WALLACE,  CiBcuir  Judge  of  the  Second 

Judicial  dECurr.f 

DISTRICT  JUDGES. 

ADDISON  BROWN,  Soutbebn  Disteiot  of  New  Yobk. 

WILLIAM  J.  WALLACE,  Nobthebn  Distbict  of  New 
Toek.:|: 

ALFRED  C.  COXE,  Nobthebn  Distbict  op  New  Yobk4 

CHARLES   L.  BENEDICT,  Eastebn  Distbict  of  New 
Yobk. 

HOYT  H.  WHEELER,  Vebmont. 

NATHANIEL  SHIPMAN,  Connecticut. 

*  The  Honorable  Wabd  Hurt  redgned  the  office  of  Associate  Jastioe  of  the 
Supreme  Court  of  the  United  States,  and  the  Honorable  Samuxl  Blatohfosd 
was  appointed  in  his  place  March  27th,  1882,  and  took  the  oath  of  office  April 
8d,  1882. 

f  The  Honorable  Samuel  Blatchtobd  resigned  the  office  of  C^cnit  Judge  of 
the  Second  Judicial  Circuit,  and  the  Honorable  Wiluam  J.  Wallace  was  ap- 
pointed in  his  place  April  6th,  1882,  and  took  the  oath  of  office  April  26th,  1882. 

X  The  Honorable  William  J.  Wallack  resigned  the  office  of  Judge  of  the 
IKstrict  Court  of  the  United  States  for  the  Northern  District  of  New  York, 
and  the  Honorable  Altrxd  C.  Cozs  was  appointed  in  his  place  May  4th,  1882, 
and  took  iba  oath  of  office  May  16th,  1882. 


«^^  The  foUowmg  corrections  should  le  made  in  this 
Volume : 

Page  378,  line  28  of  syllabus,  for  "same  "  read  "  some," 
**     467,    «     6"        "  *'    « Ucense"  read  "lease  of  a  machine.  •• 

"    499,    "    18"        "  "    "destructive"  read  "distinctiTe'' 


CASES 

REPORTED  IN  THIS  VOLUME. 


AdamB(Hoetetterv.) 826 

V,  Howard 88 

Albany    City   National    Bank   v. 

Maber 841 

Allen  (JaoobflCRQ  v.) , .  526 

American  Grape  Sugar  Co.  (New 

York  Grape  Sugar  Co.  v.j,. . .  886 
Anaonia  Brass  A  Copper  Co.  ( W  est- 

ern  Electric  Mfg.  Co.  v.) 170 

Armstrong  v.  Mntual  life  los.  Co.  498 

Arthur  (Whiter.) 287 

Ayerill  Chemical  Paint  Co.  v.  Na- 
tional MixedPaint  Co 42 


B 


Bailey  (Brooks  v.) 86 

Baltaer  (BischoffBbeim  v.) 229 

Barker  tr.  ShootflL 178 

«.  Stowe 186 

Bartow  (Uoited  States  v.). 849,  861 

Benedict  v.  Williams 276 

Bernard  v.  Heimann 21 

Bischoffsheim  v.  Baltzer 229 

Boston  Beef  Packing  Co.  v.  Stevens  448 

Bonton  (Searls  v.). 426,  628 

Brainard  v.  Gramme 680 

Brett  V.  Qnintard 820 

Brooks  V.  Bailey. 86 

Brace  «.  Harder 866 

Buerk  «.  Imhaenser. 274 


c 


Campbell  «.  Kavanangh 266 

If.  Mayor,    Ac,  of  New 

York  67 

Canada  Central  R.  R.  Co.(Phelp8  v.)  460 
Carrier  «.  Town  of  Shawangaiok. .  307 


Central    Vermont    Railroad    Co. 

(Dwightv.) 200 

L   Z i (Gris- 

woldv.) 212 

Chittenden  v.  Tbannhanser. 69 

ClaitiD  V,  McDermott 622 

Coast  Wrecking  Co.  v.  Pheniz  In- 
surance Co 667 

Cobam  «.  Schroeder 892 

Goes  V.  Collins  Co 221 

Collins  Co.  (Goes  V.) 221 

V.  Oliver  Ames  A  Sons 

Corporation 642 

Colwell  Lead  Co.  (Shaw  v.)    417 

Compagnie  G^n4rale  Transatlanti- 
qne  (People  of  the  State  of 

New  York  v.) 296 

Contioental  Life    losorance    Co. 

(Hale».) 616 

Continental  Railway  A  Trost  Co. 

(Wertheinv.) 608 

Co-operative  Foundry  Co.  (Perry 

V.) 498,606 

Cortes  Co.  v.  TbaDnbauaer 69 

Cramer  v.  Mack 479 

Gramme  (Brainard  v.) 680 

Crandal  (Loercher  v.) 106 

tr.  Watters 97 

(Wattersr.) 118 

Cross  V.  McEinnon, 896 

D 

Davies  v,  Lathrop 897 

Davis  (Simpson  v.) 418 

Dodge  ».  Schell 617 

Dohan  (Lorillard  v.) 68 

Donnelley  v.  Ivers 881 

Dubois  (McCloskey  v.) 7 

Dunham  Hosiery  Co.  (Holmes  v.).  128 
Dwigbt  «.  Central  Vermont  Rail- 
road Co 200 

».  Smith 210 


VI 


CASES  REPORTED. 


E 
Esselborn  {In  re) 1 

F 

Fisher  t.  Meyer 278,  512 

Flagg  V,  MaDhattaD  Railwajr  Ck). . .  142 
Fountain  «.  Town  of  Angelica. ...  448 
Fraiee  V.  Moffitt 267 

G 

Galloway  (Tyler  v,) 446 

Gardner  v.  Herz 638 

Geer  ( Ransom  vJ\ 586 

Goodvear's  India  Rnbber  GloFe 

Mfif.  Co.  (Meyer  v.) 91 

Griswold  v.  Central  Vermont  Rail- 
road Co 212 

Gonther  v.  Liverpool,  Ac,  Ins.  Co. 

862,  890 


Hale  V.  Continental  Life  Insaranoe 

Co 616 

Harris  V.  Hess 268 

Hartv.  Lovell 816 

Hartford  Spring  A  Axle  Co.  (lyes 

AMillerv.) 888 

Hayes  v.  Seton 484 

Heimann  (Bernard  V.) 21 

Herdsman  v.  Lewif 266 

Herz  (Gardner  v.). 688 

Hess  (Harris  V.) 268 

Hoe  V.  Eahler 4S0 

Hoffman  (New  York    Bang  and 

Bnsbing  Co.  v.). 8 

Holmes  v.  Dunham  Hosiery  Co. . .  128 

V.  Plainville  M%.  Co 128 

Hoetetter  v.  Adams 826 

Howard  (Adams  V.) 88 

I 

Imhaenser  (Bnerk  v.) 274 

In  re  Esselborn. 1 

Supenrisors  of  Election 18 

Ivors  (Donnelley  ».) 881 

lyes  A  Miller  v,  Hartford  Spring 
A  AxleCo 888 

J 

Jaokman  (McKay  «.) 466 


Jacobson  v.  Allen 625 

JenninfirB  v.  Ribbe « 868 

Jones  (United  States  v.) 286 

K 

Kahler  (Hoe  V.) 480 

Eavanangh  (Campbell  v.) 266 

Kent  (Miller  «.) 1 50ft 

Kibbe  (Jennings  v.) 868 

L 

Lamar  (McCay  vA 474 

Landers  (StroDrioee  v,), 78 

Lathrop  ^Davies  «!) 897 

I^hman  (McKay  v.) 466 

Leip8ic(The) 288 

Lewis  (Herdsman  v.) 266 

Lindsay  «.  Stein 870 

Liverpool,  Ac,  Ins.  Co.  (Gnnther 

•.) 862,890 

Loercher  v.  Crandal 106 

Lorillard  «.  Dohan 68 

Lovell  (Hart  ».) 816 

(Schneider  v.) 811 

M 

McCall  V.  Town  of  Hancock 844 

McCny  v.  Lamar 474 

McCloskey  v.  Dubois 7 

McDermott  (Claflin  v.) 622 

McKay  v.  Jackman 466 

V.  Lehman 466- 

V.  Scott  Sole  Sewing  Ma- 
chine Co 46& 

Mack  (Cramer  v.) 479 

McKinnon  (Cross  v.) 895 

Maher     (Albany     City    National 

Bank  v.) 841 

Mallury  M%.  Co.  v.  Marks 82 

Maltme  (United  States  v.) 187 

Manhattan  Kailway  Co.  (Flagg  v.)  142 

Marder  ( Bruce  v  ) 866 

Marks  (Mallory  Mfg.  Co.  v.) 82 

Matthews  v.  Puffer 288 

V.  Spangenberg 482 

Maxheimer  (Meyer  v.) 16 

V.  Meyer 17 

Mayor,  <fcc.,  of  New  York  (Camp- 
bell vj 67 

Mellen  v.  Town  of  Lansing 278 

Merriam  (Searls  v.) 268 

Meyer  (Fij»her  v.) 278,  612 

(Maxheimer  V.) 17 

V.  Goodyear's  India  Rubber 

Glove  Mfg.  Co 91 


CASES  REPOBTED. 


Vll 


Mejer  v.  Mszbeimer 16 

Miller  v.Eeot 608 

Haffitt  (Frazee  v.) 267 

Hanson  v.  The  Mayor 858 

Matnal  Life  Ins.  Co.  (Armstrong  v.)  498 


N 


Narrasransett  (The). 87 

national  Mixed  Paint  Co.  (Ayerill 
Chemical  Taint  Co.  v.) 42 

Stock  Yard  Co.  (Robin- 
son o). 618 

Nellis  (Yao  Deosen  v.), 45 

New  HaypD  Steam  Mill  Co.  v.  Se- 
cnritv  Ins.  Co 192 

New  York  A  Baltimore  Coffee  Pol- 
ishing Co.  V.  New  York  Cof- 
fee Polishing  Co 174 

— -^—  Bong  and  Bushing  Co. 
V.  Hoffman 8 

Central    and    Hudson 

RiTer   RaiLoad  Co.    (Robin- 
son r.) 888 

CoflFee    Polishing   Co. 

(New  York  A  Baltimore  Coffee 
Poliehing  Co.  v.). 174 

Grape    Sogar    Co.    v. 

American  Qrape  Sugar  6o. . .  886 


o 


Oliyer  Ames  A  Sons  Corporation 

(Collins  Co.  ».) 642 


People  of  the  State  of  New  York 
V,  Compagnie  G^n^ralo  Trans- 

atlantique 296 

Perry  r.  Co-operatiye  Foundry  Co. 

498,  606 

Phelps  (United  States  V.) 129 

V.  Canada  Central  R.  R.  Co.  450 

Phentz  Insurance  Co.  (Coast  Wreck- 
ing Co.  v.) 667 

Philips  ( I lobinson  Tobacco  Co.  tf.) .  669 
PlaioyUle  Mfg.  Co.  (Holmes  v. ).. . .  128 

Plimpton  V.  Wiiislow 82 

ProTit fence  and  Stonington  Steam- 
ship Co.  V.  Virginia  Fire  and 

Marine  Ins.  Co 405 

Puffer  (Matthews  v.) 288 

Q 

<)iditUrd  (Brett  •.). 820 


B 


Ransom  v.  Geer 686 

Reissner  (Sharp  v.) 10 

Richardson  (Steyens  v.) 68 

Robinson  o.  National  Stock  Yard 

Co 618 

r.  New  York  Central  and 

Hudson  Riyer  Railroad  Co . . .  888 

Tobacco  Co.  ».  Philips..  669 

Rose  V,  Stephens  A  Condit  Trans- 
portation Co 411,  466 


s 


Schell  (Dodge  v.) 617 

Schiie  (Yueneling  v.) 462 

Schneiaer  v.  Loyell 811 

Schroeder  (Coburn  v.) 892 

Scott  Sole  Sewing  Machine  Co. 

(McKay  ».) 466 

Searls  «.  Ronton 426,  628 

V.  Merriam 268 

Sears  (Sieam  Stone  Cutter  Co.  v.).     28 
Security  Ins.    Co.    (New    Hay  en 

Steam  Mill  Co.  v.) 192 

Seton  (Hayes  v.) 484 

Shttrp  V.  Reissner 10 

Shaw  V.  Colwell  Lead  Co 417 

Sho>  te  (Barker  v.) 178 

Simpson  v.  Dayis 418 

Smith  (Dwiirht  ».) 210 

V,    Standard  Laundry  Ma- 
chinery Co 860 

Spancenberg  (Matthews  v.) 482 

Standard  Laundry  Madiinery  Co. 

(Smith©.) 860 

Steam  Stone  Cutter  Co.  v.  Sears. . .     28 

Stein  (Lindsay  v.\ 870 

Stephens  A  Condit  Transportation 

Co.  (Rosev.) 411,466 

Steyens  (Bo&ton  Beef  Packing  Co. 

V.) 448 

V.  Richardson 68 

Stowe  (Barker  v.). 186 

Strobridge  v.  Landers. 78 

Superyiaors  of  Election  (In  re),,,     18 


Tallmadge  (Traders'  Bank  of  Chi- 

ca^o  V.) 89 

Thannhauser  (Chittenden  v.) 69 

(Cortes  Co.  v.) 69 

The  Leipsic 288 

Mayor  (Munson  v.) 868 

—  NaiTagausett 87 


•  •  • 

VIU 


CASES  BEPOBTED. 


Town  of  Angelica  (Fountain  v  ). . .  448 

Hancock  (McCall  V.) 844 

•^ Laosing  (Mellen  V.) 278 

Shawaoffonk  (Carrier  v.).  807 

Traders'  Bank  of  Chicago  v,  Tall- 

madee 89 

Tyler  i>.  Galloway 445 


u 


United  States  v.  Bartow 849,  861 

—  V,  Jones ; . .  286 

V.  Malone 187 

— : V.  Phelps 129 


Van  Densen  v.  Nellis 46 

Yermoot   Centrfd    Bailroad     Co. 
Webbv.) 218 


Ylrg^ia  Fire  and  Marine  Ins.  Co. 
(Providenoe  and  Stonington 
Steamship  Co.  v.) 405 

w 

Watters  (Crandal  v.) 97 

«.  Crandal 118 

Webb  V.  Vermont  and  Central  Bail- 
road  Co 218 

Werthein  v.  Continental  Bailway 

A  Tmst  COj, 60a 

Western  Electric  Mfg.  Co.  v.  Anso- 

nia  Brass  A  Copper  Co 170 

White  V.  Arthur 287 

WUliams  (Benedict  i>.) 276 

Winslow  (Plimpton  v.).  82 


Tuengling  v.  Schile 462 


APPENDIX. 


I.  Bulee 671 


CASES 


CITED  IN  THIS  VOLUME. 


JStzia  life  Ids.  Co.  v,  France 496 

Alien  V,  Brown 846 

Amee  v.  Colorado  R.  R.  Co 481 

Andrews  v.  Carman. 20,  71 

V.  Smith 206 

AngeU  V.  ADgell 176 

Areoz  v.  Weir 626 

Attorney-General  v. Romford  Chem- 
ical, Works 176 

B 

Babbitt  ».  Clark 41 

Bailey  v.  Le  Roy 12 

Baker  v.  Taylor 888 

Bank  of  United  States  v.  Halstead.    28 

If.  Moss. ...  139 

Barker  v.  Shoots 186 

»,  Stowe 178,186 

Barney  «.  Baltimore  City 846,  449 

».  Latham 66 

BartOD  V.  Barbour 404 

Bates  V.  Delayan 62 

Beers  v.  Han^htoD 27 

Black  ».  Black 12 

Blake  v.  McEim 66 

Blandy  v.  Griffith 877 

Boucicanlt  v.  Fox 462 

Bradford  v.  Williams 686 

Bridges  v,  Sheldon 84 

Briggs  V.  Penniman 627 

Bristol  V.  Sanford 627 

Brooks  v.  Cook. 409 

V.  Farwell 84 

Brown  v.  Clarke 208 

tr.  Piper 178 

.  V.  State  of  Maryland 804 

Buchanan  «.  Alexander 409 

Buck  V.  Colbath 208 

Vol,  XX.— B 


Bnrdett  V.  Estey 48& 

Burgess  v.  Converse 269 

Burleigh  Rock  Drill  Co.  v.Lobdell,  888 
Burr  V,  Duryee 820,  821,  472 


c 


Cagwin  v.  Town  of  Hancock.  .844,  845 

Cammack  v.  Lewis 498 

Cary«.  Curtis 248 

Chandler  v.  Worcester  Ins.  Co. . . .  867 

Chase «'.  Sanborn 888 

Citizen's  Ins.  Co.  v.  McLaughlin. .  869 

Clarke  v.  Matthewson 61 

Clintsman  v.  Northrop 80a 

Cobbett  V.  Woodward 464 

Cochrane  v.  Deener 471 

Colby  V.  Coates 409 

Collar  Co.  v.  Van  Deusen 9,  472 

Collender  v.  Griffith 465 

Colman  v.  Crump 882 

Coloma  V.  Eaves 810 

Colston  V.  Gardner. 26 

Columbia  Book  Co.  v.  De  Golyer. .  409 

Converse  v.  Burgess 270 

Coming  V.  Burden 471 

Cotton  Tie  Supply  Co.r.  McCready.      6 

Crandal  v.  Watters 116 

Cromwell  v.  County  of  Sac 191 

Cummings  v.  NatL  Bank 848 

Curtis  V.  Leavitt 627 


D 


Davis  t,  Bruns 628 

De  Florez  v.  Raynolds. 66 

Dennis  v.  Eddy 891 

Doe  V.  Johnston 62 

Dowell  V,  Griswold 891 

Draper  ».  Wattles 71,  72 


GASES  CITED. 


Dnnean  v.  Gegan 610 

Dunlap  V.  Stetson 62 

DoDn  V.  darke 61,  62 


E 


Edwards  v.  Coombe 687 

Egbert  v.  Lippmann 71 

Ehrel  v.  Pierce 456 

Elizabeth  v.  Payement  Co 71 

Elwood  V.  The  Western  Union  Tel. 

Co 840 

Emerick  v.  Coakley 497 

Emerson  v.  Hogg 20 

Erskine  v.  Van  Arsdale 250 

Erwin  V.  Lowry 216 

Jb  parte  iSchoUenberger 614 


F 


Fairfield  v.  County  of  Gallatin. ...  846 

Fish  V.  Dodge 444 

Eisk  0.  Union  Pacific  R.  R.  Co. . . .     67 

Flanders  v.  InsnraDce  Co 614 

Foote  V.  Town  of  Hanoock. . .  .844,  846 

Forrest  v.  Eeeler 41, 481 

Franckljn  v.  Coihoon 26 

Freeman  v.  Howe 61,  208 

French  v.  Wineor 29 

Frese  v.  Bachof 882 


G 


Gardner  v.  Herz 689 

Gayler  v.  Wilder 429 

Gibbons  V.  Ogden    808 

Gill  V.  Wells 820.  821 

Godfrey  v.  Eames. 877 

Goldoey  o.  Lonling 687 

Gordon  «.  Gilfoil 206 

Gorham  Co.  tr.  White 868,  864 

Gould  V.  Town  of  Sterling. 847 

Grace  v.  Newman. '. .  .466,  462 

Greene  v.  Bishop 466 

Green  v.  Lessee  of  Neal 846 

Gomee  v.  County  of  Brunswick.. .  481 


H 


Hflgan  V.  Lucas 207 

Hailes  v.  Van  Wormer 601 

Harris  v.  Dennie 409 

Hartell  o.  Tilghman 860,  862 

Batch  V.  Dorr 622 

Hawea  v.  Oakland 448 


Hecks  V.  Bums 628 

Henderson  v.  The  Mayor 800 

HoL'g  V.  Emerson 20 

Hotel  Co.  t».  Wade 208 

House  V.  Metcalf 446 

Howes  V.  McNeaL 877 

Hoyt  V.  Thompson's  Exr. 166 

Humboldt  v.  Long 8 iO 

Hussey  v.  Bradley 891 

Hyde  v.  Stone 207,  21 7 


In  re  Golby. 687 

Hatton 687 

Reiman 687 

Irvine  v.  Lowry 614 


Jacobs  tf.  Latour 621 

James  «. Campbell.  .446,  470,  628,  630 

Johnson  v.  Donaldson 466 

Jollie  V.  Jaques 886 

Juneau  Bank  V.  McSpedan 84 


Eflmm  V.  Stark 62 

Eeene  v,  Wheatley 462 

Kflleber  v.  Dorliiig 71 

Eelsey  v.  Pennsylvania  R.  R.  Co..  614 

Kitchen  v.  Strawbridge    614 

Knapp  V  Railroad  Co. 404 

Enowlton  v.  Congress  A  Empire 

Spring  Co 481 

Kosbkonnng  tr.  Burton 497 

Kriealer  v.  Morton 269 


Latham  «.  Chafee 206 

Lazarus  v.  Commonwealth  Ins.  Co.  497 

Le  Roy  v.  Tatham 8 

Little  «.  Gfiuld  466,  462 

L-igan  V.  Patrick 61^  62 

Lorillard  v.  McDowell 64 

V.  Ridj^eway. 64 

Lu wenstein  v.  Giidewell 62 


M 


McCarthy  «.  Lavascheu 626 

McCollongh  V.  Moss. 166 


CASES  CITED. 


XI 


If cHonald  «.  Smalley 846 

M cEImnyle  v.  Cohen   624 

MachiDe  Co.  v.  Morphy 6 

McKay  v.  Dibert 469 

McLean  v.  Fleming: 882 

McMicken  «.  Webb 86 

MalleU  9.  Dexter 217 

Maoro  v.  Almeida 26 

Mfe.Co.  9.  Ladd 17 

MarFh  v.  Fulton  Couoty 287 

Mathez  9.  Neidl? 627 

Memphis  v.  Dean. 204 

Mercantile  Trust  Co.  v.  Lamoille 

ValleyR.  R.  Co 206 

Meyer  v.  Pritchard 91,  92 

MUler  «.  Brass  Co.,  446,  470,  488,  628, 

680 

Milligan  v.  Milledge IS 

Mitchell  V.  Henry 882 

Mofiatt  V.  Van  Mullinii^en 636 

Morit*'jo  V.  Owen 60 

Morgan's  Sons  Co.  v.  Trozell 832 

Morris  V.  Lowell  M%.  Co 389 

Mowry».  Whitney 177 

Mullen  V.  St.  John 412 

Mutual  Protection  Ins.  Co.  v.  Ham- 
ilton     497 

Hyers  «.  Callaghan 886 


N 


National  Bank  v.  Kimball 848 

IT.  Mechanic's    Nat 

Bank 391 

Kew  York  Life  Ins.  Co.  v.  Flack. .  497 
N*nes  V.  Hojpe  Mutual  Life  Lis.Co.  6 1 6 

Norcross  v.  Thorns 444 

Horth  «.  Kershaw 388 


o 


O'Reilly  V.  Morse 447, 472 

Osborne  v.  Brooklyn  City  R.  R.  Go.  846 
Osgood  V.  Allen 886 


Page  V.  BumstiDe 496 

V.  TowDwnd 469 

Paisre  «.  Banks 462 

Palmer  e.  Warren  Ins.  Co 199 

Paret  t>.  Ticknor 637 

Parkinson  v.  Loselle 384 

Parton  v.  Praog 462 

Payne  V.  Hook 217 

Peck  r.  Crane 25 

Penn.  Co.  *.  Boy 889 


Pickering  v.  McCullough. : 601 

Pomeroy  v.  Manhattan  Life  Ins. Co.  497 
Pond  V.  Vermont  Valley  R.  R.  Co.  208 
Powder  Co.  ».  Powder  Works.  ...    44 

Pulliam  V.  Osborne 208 

Pullman  v.  B.  <lk  O.  R.  R.  Co 889 


E 


Railroad  Co.  v.  Harris 614 

— ^— -  — -  V.  Husen 806 

Railway  Co.  v.  Sayles 6 

Reckendorfer  v.  Faber 601 

Reed  «.  Consequa 62 

Regina  V.  Bidwell 862 

Rez  V.  Sainsbury 862 

Rhode  Island  v,  Massachusetts.  .12,  18 

Rice  V.  Houston 404 

Richardson  v.  Miller 464 

Roemer  v.  Simon  429 

Rollo  V.  i^ndes  Ins.  Co. 409 

Rosenbach  v.  Drey  fuss 467,  464 


s 


Sanders  «.  Loi^n 889 

Sawyer  t>.  Gill 62 

V,  Horn 882 

Styles  V,  Northwestern  Ins.  Co. . .  611 

Schillineer  v.  Qunther 447 

Schuessfer  v.  Daris 116 

Scott  V.  ainton,  Ac,  R.  R.  Co 481 

V.  London  <fc  St.  Eatherine 

DocksCo 413 

Segee  v.  Thomas 62 

Shelby  v.  Bacon 216 

Sheldon  v.  Houghton 462 

Shelton  v,  Austin 186 

V.  The  Collector 186 

Silsby  V.  Foote 191 

Singer  v.  Braunsdorf 877 

66  Terra  Coita  Vases 466 

Smith  V,  Goodyear  Dental   Vul- 
canite Co. .  .877,  379,  892 

V.  Lawrence 636 

V,  Lusher 636 

».  N.  y.  A  H.  R.  R.  Co 839 

V.  Town  of  Ootaiio 192 

Snow  V.  (Columbian  Ins.  Co. 199 

Spalding  v.  Rosa 619 

Starin  v.  Town  of  Genoa. 347 

Sieam  Gauge  A  Lautern  Co.  v.  Mil- 
ler.  888 

Stone  Cutter  Co.  ».  Wind- 
sor Mfg.  Co 488 

^teegman  v.  Maxwell. 270 

Stei<;er  v.  Bonn 84 

Stephani's  Case 289 


xu 


GASES  CITED. 


Stokes  V.  SaltonBtall 889 

Strobridge  v.  Liodsay 79 

StroYo  V.  Schwedler 884 

Stuart  V.  Palmer 848 

Suydam  v.  Broadnax 216 

Swain  Turbioe  <b  Mfg.  Co. «.  Ladd  684 

Swanston  v.  Morton 269 

Swords  V,  Edgar 446 


Tarbell «.  GrigKS 628 

Taylor  ».  rarryJ 208 

».  Mixter 80 

Teague  v.  Hubbard 686 

Terry  v.  Little 627 

Tba'cb  V.  Metropole  Ins.  Co 498 

The  Bank  v.  Labitut 189 

Eleanora 90 

Emily  B.  Souder 296 

Jubilee 294 

Passenger  Cases 800,  3(>6 

People  V.  Morgan 286 

Princess  Alice 294 

Reward 294 

Strathnaver. : .  294 

Tilgbman  r.  Proctor 70,  471 

Tillson  V.  United  States 248 

Todd  V.  Flight. 446 

Town  of  Venice  v.  Mardock..  .844,  846 
Township  of  Elmwood  v.  Marcy . .  846 

Pine  Grove  v.Talcott,  846 

Transportati'^n  Co.  «.  Downer. ...  412 

Triston  v.  Hardey 496 

Tyler  ».  Welch 446 


u 


Union  Bank  v.  Jolly 217" 

Sugar  Re&iery  r.  Mathies- 

son 84 

United  States  Stamping  Co.ir.King.     66- 

V.  Sherman '. . .  289 

V.Smith 141 


w 

Wallace  v.  Holmes ^ 

Walnut  V.  Wade 810 

Ward  V,  Chamberlain 26 

V.  Seabry 62- 

Warner  v.  Pennsylvania  B.  R.  Co.  209 

V.  Spooner 686 

Wason  V,  Colburn 496 

Watson  V.  Jones 206 

Wayraan  v.  Southard 28,  81 

Weeks  v.  Love 627 

Wehl  V.  Wald 67 

Wheaton  v.  Peters 888 

Wilkinson  v.  Yale 628 

Wiliams  v.  Johnson 882 

Wilmot  V,  Mudge 468 

Wilson  V,  San(dord 860,  362 

Winchester  v,  Hackley 496 

Wincock  v.  Turpin. 626 

Wiswall  v.  Sampson 208 

Wolfe  V.  Howe 619 

Wood  V.  Abbott 464 

Wouster  v.  Clark 488 


CASES 

ARGUED  AND  DETERMINED 


nr  THB 


€ixmt  ^mxts  at  t\t  Mmiti 

WITHIN  THE  SECOND  CIRCTJIT. 


In  the  Mattes  of  Geobge  Esselbobn,  on  TTAnicAfl  Cobpub. 

A  person  was,  on  an  examination  on  a  criminal  complaint,  committed  by  a  Com- 
miflsioner  to  await  the  action  of  the  grand  jnry.  On  a  habeat  eorpua  and  a 
certiorari,  the  Court  allowed  the  accoaed  to  depart  without  giying  any  recog- 
nisance, subject  to  the  issuing  of  a  new  warrant  of  arrest,  il  ordered  by  the  Coort. 
After  the  lapse  of  five  months,  the  Court  was  asked  by  the  accused  to  determine 
whether  the  CTidence  before  the  Commissioner  was  sufficient  to  warrant  his 
commitment.  Meantime  a  grand  jury  had  met  and  been  discharged,  without 
indicting  the  accused,  and  no  information  had  been  filed  against  him.  He 
was  not  in  actual  or  constructive  custody :  Hdd,  that  the  Court  would  not 
determine  the  said  question,  and  that,  if  desired,  an  order  would  be  entered 
discharging  the  accused,  because  no  indictment  or  information  had  been  filed 
against  him. 

(Before  Blatobfobi),  J.,  Southern  District  of  New  York,  September  20th,  1881.) 

Blatchfobd,  J,  In  this  case,  a  writ  of  luibeaa  oorpuSj  re- 
turnable before  this  Court  forthwith,  was  issued  on  the  5th 
of  April,  1881,  to  the  marshal  of  the  TJuited  States  for  this 
District,  to  produce  the  body  of  George  Esselbom,  with  the 
cause  of  bis  imprisonment.  At  the  same  time  a  writ  of  cer- 
Uorari^  returnable  before  this  Court  forthwith,  was  issued  to 
a  United  States  Commissioner  to  certify  tlie  canse  of  the  de- 
tention of  said  Esselbom.  The  Commissioner  certified  the 
prooeedingB  before  him,  consisting  of  a  complaint,  alleging  a 
Vol.  XX.— 1 


2  SOUTBtERN  DISTRICT  OF  9KW  YORK, 


Jk  IV  Creocge  Eoadborn,  on  HabeM  Cofpv. 


criminal  offence,  and  the  teetunony  taken  on  the  examination 
on  the  snrrender  of  the  defendant  on  the  compUint.  The 
retom  of  the  marRhal  to  the  writ  showed  that  a  warrant  of 
arrest  on  the  comphunt  was  issaed  by  the  Commisfiioner  to  the 
marshal;  that  the  defendant  appeared  before  the  Ck>mmis- 
sioner,  and  an  examination  was  had,  and  the  defendant  was 
held  to  await  the  action  of  the  grand  jnry ;  that,  for  the  pur- 
pose of  enabling  a  writ  of  habeas  corpus  and  a  writ  of  cer- 
tiarari  to  lie,  the  Commissioner  ordered  that  the  defendant  be 
discharged  on  his  own  recognizance ;  that  the  defendant  re- 
fused to  give  snch  recognizance ;  and  that  the  Commissioner 
then  committed  the  defendant  to  the  custody  of  the  marshal 
in  default  of  his  having  given  snch  recc^nizance.  The  case 
came  before  the  Court  on  the  forgoing  papers,  and,  on  the 
5ih  of  April,  1881,  the  Court  made  an  order  ^^  that  the  de- 
fendant may  depart  without  giving  any  recognizance,  subject 
to  the  issuing  of  a  new  warrant  of  arrest,  if  ordered  by  this 
Court."  Nothing  has  since  been  done  in  the  matter,  and  the 
counsel  who  appeared  for  the  defendant,  now,  in  September, 
1881,  asks  the  Court  to  pass  on  the  question  as  to  whether 
the  evidence  before  the  Commissioner  constituted  probable 
cause  for  holding  the  defendant  to  await  the  action  of  the 
grand  jury,  and  to  hold  that  it  did  not,  and  to  dischai^  the 
defendant.  The  District  Attorney  states,  that,  since  the  said 
order  of  April  5th,  1881,  was  made,  a  grand  juiy  has  met  and 
been  dischaiged  without  indicting  the  defendant ;  that  no  in- 
formation has  been  filed  against  him  ;  that  he  is  not  in  actual 
or  constructive  custody ;  that  there  is  nothing  to  discharge 
him  from ;  and  that  it  would  be  a  waste  of  time  to  pursue 
the  habeas  corpus  proceedings  any  further. 

Under  §  752  of  the  Bevised  Statutes,  the  writ  of  habeas 
corpus  is  granted  ^'  for  the  purpose  of  an  inquiry  into  the 
cause  of  restraint  of  liberty."  There  is  not  now  in  this  case 
any  such  restraint  of  liberty,  or  any  such  state  of  facts  as 
requires  that  this  Court  should  pass  on  the  question  as  to 
whether  the  defendant  ought  originally  to  have  been  held  or 
committed  to  await  the  action  of  the  grand  jury,  even  if  it 


SEPTEMBER,   1881. 


The  New  York  Bang  and  Bushing  Company  v.  Hoffman. 


would  at  any  time  have  passed  on  that  question.  The  de- 
fendant was  held  and  committed  only  to  await  the  action  of 
the  grand  jury,  and,  as  no  indictment  or  information  has  been 
filed  against  him,  he  is  entitled  to  be  discharged  on  that 
ground,  and  an  order  to  that  effect  and  for  that  cause  may 
be  entered,  if  desired. 

Sutherland  Tenney^  {Assistcmt  District  Attorney^  for  the 
United  States. 

Roger  M.  Shemum^  for  the  defendant. 


The  New  Yoek  Bung  and  Bushing  Company 
Jaoob  Hofeman.     In  Equify. 

Re-lflsaed  letten  patent  No  8,488,  granted  Noyember  12th,  1878,  to  William 
C.  McKean,  Gkorge  H.  JadkBon,  and  Jefferaon  Brown,  Jr.,  for  an  "  improre- 
ment  in  bushings  for  faucet  holes,"  the  original  patent,  No.  141,478,  haying 
been  granted  to  Samuel  R.  Thompson,  August  6th,  1878,  are  for  an  inyention 
not  described  in  the  original,  the  original  being  for  a  particular  form  of 
wooden  bushing,  encased  in  an  iron  one,  and  the  re-issue  being  for  any  form 
of  wooden  bushing  in  an  iron  one. 

The  original  patent  was  not  yoid  for  want  of  noyelty. 

The  defendant  was  held  to  haye  infringed,  because  he  furnished  wooden  bungs 
in  iron  casings,  with  a  hole  nearly  through  the  bung,  and  intended  to  become 
the  compound  bushing  of  the  re-issue,  by  the  driying  in  of  the  remaining 
wood  by  the  purdiaser,  by  inserting  a  yent  tube  in  tapping  the  barrel 

(Before  Whrleb,  J.,  Southern  District  of  New  Yoric,  September  29th,  1881.) 

Wheeleb,  J.  This  suit  is  bronght  upon  letters  patent 
No.  141,473,  dated  Angnst  5th,  1873,  issued  to  Samuel  B. 
Thompson,   for  an  ^^improvement  in  bushings  for  faucet 


SOUTHERN  DISTRICT  OF  NEW  YORK, 


The  New  York  Buog  and  BoshiDg  Company  tr.  Hoffiaum. 

holes,"  and  re-issued,  November  12th,  1878,  in  No.  8,483,  to 
William  G.  McKean,  Geoige  H.  Jackson  and  JeflEeraon 
Brown,  Jr.,  assignees,  and  now  owned  by  the  plaintifL  The 
principal  defences  set  up  are,  that  the  original  patent  was  void 
for  want  of  novelty ;  that  the  re-issne  is  for  an  invention  dif- 
ferent from  that  described  in  the  original ;  and  that  the  de- 
fendant, in  what  he  does,  does  not  infringe. 

The  only  anticipations  necessary  to  be  noticed  are  the 
English  patent  to  William  Rowland  Taylor,  dated  Angost 
6th,  1864,  and  sealed  February  3d,  1866,  for,  among  other 
things,  the  employment  in  beer  barrels  of  peg  holes  smallest 
in  the  middle  of  the  stave,  and  conical  both  ontward  and  in- 
ward ;  the  patent  of  the  United  States  to  John  Ruegg,  assign- 
or to  J.  G.  Mai-riott,  No.  70,024,  dated  October  22d,  1867, 
for  a  wooden  bung  screwed  into  an  iron  casing  or  bushing, 
having  screw  threads  on  both  its  outer  and  inner  circumfer- 
ence, and  screwed  into  the  stave  of  beer  barrels ;  the  patent 
No.  111,352,  dated  January  31st,  1871,  issued  to  Josiah 
KJrby,  for  wooden  bungs,  with  a  hole  in  the  middle  for  a  vent 
tube,  iilled  with  a  plug,  both  bung  and  plug  being  made  with 
the  grain  of  the  wood  running  horizontally ;  and  the  patent 
No.  123,789,  dated  February  20th,  1872,  to  Otto  Netzow  and 
John  F.  Heck,  for  an  elastic  bushing  for  faucets,  tapering 
towards  the  interior  of  the  barrel,  both  on  its  outer  and  inner 
circumferences,  with  a  shoulder  on  the  inside  at  the  inner  end, 
to  bear  against  the  inner  end  of  the  faucet. 

The  original  patent  of  Thompson  was  for  a  wooden  bush- 
ing having  the  hole  for  the  faucet  smallest  in  the  middle  and 
conical  both  outward  and  inward,  screwed  into  another  bush- 
ing or  casing  made  of  iron,  with  screw  threads,  to  be  screwed 
into  the  barrel.  The  claims  were  for  the  bushing,  constructed 
and  arranged  as  described,  and  for  the  combination  of  the 
bushing  and  casing,  constructed  and  arranged  as  described, 
for  the  purposes  specified.  The  specification  of  the  re-issue 
states,  that  ^'the  invention  consists,  broadly,  in  a  device 
composed  of  a  rigid  sleeve  or  casing,  to  be  inserted  within 
the  faucet  hole,  and  provided  with  a  yielding  lining : "  and 


SEPTEMBER,  1881. 


The  New  Tork  Bang  and  Bnsbing  Company  v.  Hoffinan. 


the  claims  are  for  a  compound  baahing  for  faucet  holes  of 
barrels,  consistiDg  of  a  rigid  sleeve  or  casing,  and  a  yielding 
lining,  as  set  forth,  and  the  combination  of  a  casing  and  a  lin- 
ing having  a  double  beveled  internal  formation,  as  shown  and 
described,  and  for  the  purpose  set  forth. 

The  defendant  sells  beer  in  casks  having  iron  casings 
screwed  into  the  staves,  for  the  bung,  like  that  in  the 
Rnegg  patent,  and  like  that  for  the  wooden  bushing  in  the 
plaintifPs  patent,  with  bungs  having  a  hole  nearly  but  not 
quite  through  them,  in  the  centre,  filled  with  a  plug  to  be 
driven  in  by  a  vent  tube,  carrying  with  it  the  solid  portion  of 
the  bung  opposite,  when  the  barrels  are  tapped,  like  the  bungs 
described  in  patent  No.  148,747,  dated  March  17th,  1874,  and 
re-issued  in  No.  5,987,  dated  June  30th,  1874,  to  Rafael  Pent- 
large,  for  an  improvement  in  bungs  for  casks.  When  these 
bungs  are  so  tapped  by  the  insertion  of  the  vent  tube,  the 
remaining  portion  of  the  bung,  with  the  iron  casing  about  it, 
forms  a  compound  bushing  of  wood  within  iron,  for  the  vent 
tube,  similar  to  that  described  in  the  plaintiff's  re-issued  pat- 
ent for  faucets,  and  the  defendant  sells  the  beer  in  casks  pro- 
vided with  such  bungs  and  casings,  intending  and  expecting 
that  the  bungs  will  be  so  tapped  with  vent  tubes,  and  used  until 
the  beer  is  withdrawn,  and  that  then  the  barrels  will  be  re- 
turned to  be  refilled  and  supplied  with  new  bungs,  and  the 
process  repeated. 

It  is  true,  as  has  been  argued  for  the  defendant,  that  the 
double-conical  hole  for  the  faucet  is  shown  in  the  double-coni- 
cal peg  hole  in  the  patent  of  Taylor,  and  the  rigid  casing  for 
the  wooden  bushing  in  the  iron  casing  for  the  wooden  bung, 
in  the  patent  of  Euegg,  the  simple  wooden  bushing  of  the  re- 
issue in  the  yielding  bushing  of  the  patent  of  Netzow  and 
Heck,  and  the  wooden  bushing  of  a  vent  tube  driven  through 
a  bung  in  the  patent  of  Kirby;  but  still,  as  argued  for  the 
plaintiff,  no  one  of  these  showj  all  the  elements  of  this  in- 
vention, as  shown  in  either  the  original  patent  or  the  re-issue. 
None  of  them  had  a  yielding  bushing,  like  one  made  of 
wood,  in  an  iron  outer  bushing  or  casing,  forming  a  com- 


6  SOUTHERN  DISTRICT  OF  NEW  YORK, 

The  New  York  Bung  and  Boshing  Company  v.  Hoffinan. 

pound  bashing,  yielding  to  the  fancet  or  yent  tnbe,  and  rigid 
and  supporting  to  the  barrel  as  the  plaintiffs  bushing  and  cas- 
ing is.  It  is  also  true,  as  has  also  been  argued  for  the  de- 
fendant, that  the  defendant  does  not  himself  make,  or  use,  or 
vend  to  others  to  be  used,  the  whole  patented  invention  of 
the  plaintiff,  so  but  that,  if  the  whole  stopped  where  he 
stops,  there  would  be  no  infringement.  But  it  does  not 
stop  there ;  he  furnished  the  means  which  afterwards  became, 
and  intended  they  should  become,  the  compound  bushing  de- 
scribed in  the  re-issued  patent,  and  in  that  manner  directly 
procured  the  infringement  to  be  done,  if  any  was  done,  by 
those  tapping  the  bungs  to  draw  the  beer,  and  he  is  himself  lia^ 
ble,  if  any  one  is,  for  that  infringement.  (  WaUaoe  v.  HolmeSy 
9  Blatchf.  C.  C.  JS.,  65 ;  Cotton  Tie  SfwppVy  Co.  v.  McCreadyj 
17  Id.y  291.)  So,  the  original  patent  was  valid,  and  the  re- 
issued patent  is  infringed,  and  the  turning  question  in  the 
case  is,  whether  the  original  patent  will  support  the  re-issue. 

The  original  patent  described  a  wooden  bushing  inside  an 
iron  one,  or  a  yielding  one  inside  a  rigid  one,  and,  if  the  de- 
scription had  been  general,  as  this  statement  is,  it  would  have 
covered  what  the  re-issue  describes  and  claims  broadly.  Such, 
however,  is  not  the  case.  The  original  describes  the  double 
conical  form  of  wooden  or  yielding  bushing  only,  and  this 
form  is  described  to  be  of  the  very  essence  of  that  part  of 
the  invention,  and  of  the  combination  of  which  the  wooden 
bushing  was  an  important  part.  Thompson  was  not  the  orig- 
inal inventor  of  bushings,  nor  of  wooden  bushings,  nor  of 
iron  bushings,  for  which  any  patent  has  been  granted,  under- 
lying all  others  of  either  class,  so  as  to  give  a  monopoly  of 
them :  he  is  subsequent  to  Taylor,  Ruegg,  and  Eirby,  and 
could  only  have  a  patent  for  what  was  distinguishable  from 
their  inventions,  and  his  patent  could  be  valid  only  for  that. 
{Railway  Co.  v.  Sayles^  97  U.  8.^  554.)  The  form  of  the 
wooden  bushing  was  an  important  part  of  what  so  distinguished 
it,  and,  when  form  is  of  the  substance  of  an  invention,  it  is 
not  to  be  disregarded.  {Machine  Co.  v.  Murphy,  97  U.  S., 
120.)    Thompson  invented  a  particular  form  of  wooden  bush- 


SEPTEMBER,  1881. 


McCloskey  v.  Dubois. 


ing,  encased  in  an  iron  one,  and  took  a  patent  for  that, 
dsBcribing  no  other.  The  re-issne  is  for  any  form  of  wooden 
bushing  in  an  iron  one.  That  is  for  an  invention  not  de- 
scribed in  the  original.  If  he  had  discovered,  as  he  now  has, 
that  other  forms  were  usefnl,  he  might,  doubtless,  have  had  a 
patent  covering  them,  or,  if  he  had  described  them  in  his  pat- 
ent, had  a  valid  re-issne  covering  them,  bnt  he  did  not  do 
either. 

Let  there  be  a  decree  dismissing  the  bill,  with  costs. 


Wyllye  Sodges,  for  the  plaintiff. 
Preston  StevensoUy  for  the  defendant. 


John  MoClobkey 
Fbedebiok  N.  Dubois  and  othebs.    In  Equity. 

The  decision  (19  Blatehf.  C.  C.  R,  20ff)  that  letters  patent  No.  220,767,  granted 
to  John  McCloekey,  October  2 1st,  1879,  for  an  improrement  in  soft  metal 
traps,  are  void,  for  want  of  inyention,  confirmed. 

A  motion  to  open  the  case  for  new  eyidence  was  denied,  the  new  eyidence 
being  designed  to  show  only  the  improyed  quality  of  the  metal  in  the  traps 
of  the  patent,  and  snch  result  being  due  to  the  process  of  manufacture. 

(Before  Wbxileb,  J.,  Southern  District  of  New  York,  September  29th,  1881.) 

Wheelsb,  J.  This  cause  has  been  heard,  since  a  decretal 
order  for  dismissing  the  bill  of  complaint,  (19  Blatehf.  C.  C* 
R.,  205,)  and  before  decree  signed,  npon  a  motion  of  the 
plaintiff  to  re-open  the  case,  for  the  introduction  of  new  evi- 
dence as  to  the  novelty  and  utility  of  the  patented  trap.  It 
is  plain  that  the  motion  should  not  be  granted  unless  the  new 
evidence  would  vary  the  case  and  probably  lead  to  a  different 


8  SOUTHERN  DISTRICT  OF  NEW  YORK, 

McCloakey  v.  Dnbois. 

result.  The  patent  is  Bimply  for  a  die-drawn  seamless  saft 
metal  plumber's  trap,  made  by  forcing  the  metal  through 
dies  at  varying  velocities  on  opposite  sides.  It  describes 
nothing  to  distingnish  these  traps  from  others,  except  the 
mode  of  manufacture  and  longitudinal  striations  appearing 
upon  them  which  are  merely  the  result  of  the  manufacture, 
and  have  nothing  to  do  with  the  quality  or  operation  of  the 
traps.  The  patent  assumed  that  soft  metal  traps  were  before 
known  and  in  use,  and,  besides,  that  fact  was  a  matter  of  com- 
mon knowledge,  of  which  the  Court  took  judicial  notice. 
There  was  no  evidence  as  to  the  quality  and  characteristics 
of  the  die-drawn  traps,  as  compared  with  the  cast  traps  before 
most  in  use.  The  new  evidence  would  tend  to  show  that 
their  walls  have  greater  solidity  and  more  perfect  uniformity, 
and  that  they  are  more  elastic,  and  that  the  quality  of  the 
metal  is  changed  and  improved  by  the  process  of  drawing, 
and  that  they  have  largely  superseded  all  others  in  use.  All 
these  differences  are  due  to  the  process  of  manufacture,  in 
forcing  the  metal  through  dies,  all  of  which  effects  were  be- 
fore well  known.  They  are  the  same  as  the  differences  be- 
tween cast  and  drawn  lead  pipe  as  was  shown  in  Le  Roy  v. 
Taiham^  (14  How.^  156.)  There,  the  testimony  was  that  the 
drawn  lead  pipe  ^^  was  superior  in  quality  and  strength,  ca- 
pable of  resisting  much  greater  pressure,  and  more  free  from 
defects  than  any  pipe  before  made ;  that,  in  aU  the  modes  of 
making  lead  pipe  previously  known  and  in  use,  it  could  be 
made  only  in  short  pieces,  but  that  by  this  improved  mode  it 
could  be  made  of  any  required  length  and  also  of  any  required 
size;  and  that  the  introduction  of  lead  pipe  made  in  the 
mode  described  had  superseded  the  use  of  that  made  by  any 
of  the  modes  before  in  use,  and  that  it  was  also  furnished  at 
a  less  price."  Still  the  Court  said,  through  Mr.  Justice  Mo- 
Lean  :  '^  A  patent  for  leaden  pipes  would  not  be  good,  as  it 
would  be  for  an  effect,  and  would,  consequently,  prohibit  all 
other  persons  from  using  the  same  article,  however  manufac- 
tured. Leaden  pipes  are  the  same,  the  metal  being  in  no  re- 
spect different.    Any  difference  in  form  and  strength  must 


SEPTEMBER,  1881.  9 


McCloskey  v.  DnboiB. 


arise  from  the  mode  of  mannfactaring  the  pipes.  The  new 
property  in  the  metal  claimed  to  have  been  discovered  by  the 
patentees  belongs  to  the  process  of  mannfactnre  and  not  to 
the  thing  made."  And,  in  CcUar  Company  y.  Van  Devseny 
(28  WaU.y  630,)  Mr.  Justice  Clifford  said:  "Articles  of 
mannfactnre  may  be  new  in  the  commercial  sense  when  they 
are  not  in  the  sense  of  the  patent  law.  New  articles  of  com- 
merce are  not  patentable  as  new  mannfactnres,  unless  it  ap- 
pears, in  the  given  case,  that  the  production  of  the  new  arti- 
cle involved  the  exercise  of  invention  or  discovery  beyond 
what  was  necessary  to  constmct  the  apparatus  for  its  manu- 
factnre  or  production." 

The  plaintiff  did  not  discover  that  soft  metal  could  be 
wrought  through  dies,  nor  that  the  quality  of  wrought  soft 
metal  is  generally  superior  to  that  which  is  merely  cast,  and 
does  not  pretend  that  he  did ;  and  his  patent  is  not  for  any 
such  diBcovery,  nor  for  the  application  of  it.    He  constructed 
a  machine  by  which  crooked  pipe  could  be  made  of  soft  metal 
the  same  as  straight  pipe  had  before  been  made;  and  the 
crooked  pipe  could  be  cut  off  so  as  to  constitute  traps.    His 
patent  is  for  the  traps  made  in  that  way,  for  the  effect  merely 
of  that  machine.    He  has  not  the  discovery  of  any  principle, 
even  such  as  Tatham  had,  in  the  working  of  soft  metal,  to 
support  his  patent,  as  the  minority  of  the  Court,  in  Le  Roy 
V.  Tatham^  thought  Tatham  had  to  support  his  patent.    This 
newly  offered  evidence  of  the  differences  in  quality  between 
the  drawn  traps  and  cast  traps  shows  merely  the  differences 
between  drawn  pipe  and  cast  pipe,  or  wrought  lead  and  cast 
lead,  and  could  not  affect  the  decision  of  the  case  at  all,  in 
the  view  taken  of  it  by  the  Court.    If  this  construction  of 
the  patent  and  view  of  the  case  are  wrong,  they  can  be  cor- 
rected by  appeal. 

The  motion  most  be  denied. 

James  A.  Whitneyy  for  the  plaintiff. 

Peter  Vwn  Antwerp  and  Rodney  Mason^  for  the  defend- 
ants. 


10  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Sharp  V,  ReiBBner. 


Jambs  L.  Sharp 

vs. 
Chribtopher  Bbissner  and  others.    In  Equtit. 

The  defeadant  in  a  suit  in  equity  for  the  infringement  of  letters  patent,  without 
answering  the  bill,  filed  a  plea  merely  denying  inMngemenl  The  plaintiff 
moved  that  the  plea  be  stricken  from  the  files  as  improper  or  else  be  ordered 
to  stand  as  an  answer.  In  answer  to  the  motion,  the  defendant  showed,  by 
affidavit,  that  he  had  other  defences  which  he  wished  to  raise  by  answer,  es- 
pecially prior  patents  anticipating  the  plaintififs  patent,  and,  also,  limiting  its 
scope  so  as  to  render  infringement  impossible,  and  that  to  take  evidence  in 
regard  thereto  would  be  expensive  to  both  parties :  Sdd,  that  the  plea  must 
be  stricken  from  the  files,  with  leave  to  the  defendant  to  answer. 

(Before  Blatohfobd,  J.,  Southern  District  of  New  York,  October  6th,  1881.) 

Blatohford,  J.  The  bill  in  this  case  is  brought  for  the 
infringement  of  a  patent.  The  bill  alleges  that  the  defend- 
ants, without  the  license  of  the  plaintiff,  and  in  violation  of 
his  rights,  and  in  infringement  of  the  patent,  did  ^^  make,  con- 
struct, use  and  vend  to  others  to  be  used  the  said  invention, 
and  did  make,  construct,  use  and  vend  to  others  to  be  used 
hjdro-carbon  stoves,  made  according  to,  and  employing  and 
containing,  said  invention,"  and  ^'  have  made  and  sold,  and 
caused  to  be  made  and  sold,  large  quantities  of  said  hydro- 
carbon stoves."  Two  of  the  defendants  have  put  in  a  plea  to 
the  bill,  which  sets  forth  "  that  neither  they,  nor  either  of 
them,  have,  since  the  issuing  of  the  letters  patent  set  forth  in 
said  bill,  ever  made,  constructed,  used  or  vended  to  others  to 
be  used  the  invention  described  in  said  letters  patent  *  *  * 
or  made,  constructed,  used  or  vended  to  others  to  be  used 
hydro-carbon  stoves,  made  according  to,  and  employing  and 
containing,  said  invention."  The  plea  also  denies  that  the  de- 
fendants, "  or  either  of  them,  have  ever  infringed  upon  or 
violated  any  exclusive  right  secured  by  said  letters  patent,  in 


OCTOBER,  1881.  11 


Sharp  V,  ReissDer. 


asj  manner  whatever."  There  is  nothing  else  in  the  plea 
and  there  is  no  answer  to  the  bill  or  to  any  part  of  it.  The 
plaintiff  moves  that  the  plea  be  stricken  from  the  files  as  im- 
proper, or  else  be  ordered  to  stand  as  an  answer.  The  de- 
fendants show,  bj  affidavits,  that  they  are  advised  and  believe 
that  the  stoves  they  have  made  were  not  infringements  of 
the  patent  sued  on ;  that,  by  the  advice  of  their  counsel,  and 
for  the  purpose  of  avoiding  expense  to  both  parties,  the  sim- 
ple defence  of  non-infringement  was  interposed  in  the  form 
of  a  plea;  that  the  defendants  have  other  defences  which 
they  wish  to  embody  in  an  answer,  should  it  be  necessary  for 
them  to  answer,  the  most  important  of  which  defences  are 
prior  patents  anticipating  the  plaintiff's  patent,  and,  also, 
limiting  its  scope  so  as  to  render  infringement  impossible,  and 
prior  knowledge  on  the  part  of  various  individuals ;  and  that, 
to  take  evidence  in  regard  to  all  such  prior  patents  and  prior 
knowledge,  would  be  very  expensive  to  both  parties. 

The  defendants  contend  that  the  plea  is  a  proper  one ; 
that  it  was  not  necessary  for  the  plea  to  be  supported  by  an 
answer,  even  under  the  old  equity  practice ;  that,  under  the 
Equity  Rules  prescribed  by  the  Supreme  Court  of  the  United 
States,  no  plea  is  to  be  accompanied  by  an  answer,  except 
where  fraud  or  combination  is  alleged  in  the  bill ;  and  that, 
even  if  the  plea  be  defective  in  form  or  substance,  or  if  it 
should  have  been  supported  by  an  answer,  the  plaintiff  has 
mistaken  his  remedy. 

"No  authority  is  cited  where  a  plea  like  the  present  one 
has  been  put  in  or  allowed,  in  a  suit  for  the  infringement  of 
a  patent.  By  Equity  Rule  34,  if  a  plea  is  overruled,  either 
on  an  issue  of  law  or  an  issue  of  fact,  in  regard  to  it,  the  de- 
fendant has  an  absolute  right  to  put  in  an  answer  to  the  bill, 
or  to  so  much  thereof  as  is  covered  by  the  plea.  By  Equity 
Rule  39,  a  defendant  has  a  right,  in  all  cases,  to  insist  by  an- 
swer, upon  all  matters  of  defence,  (not  being  matters  of  abate- 
ment, or  to  the  character  of  the  parties,  or  matters  of  form,) 
in  bar  of  or  to  the  merits  of  the  bill,  of  which  he  may  be  en- 
titled to  avail  himself  by  a  plea  in  bar.    If  the  present  plea 


12  SOUTHERN   DISTRICT  OF  NEW  YORK, 


Sharp  V.  Reiasner. 


Bhonld  be  tried  on  the  fact  of  infringement  and  the  issne  be 
f onnd  for  the  plaintiff,  and  the  plea  be  thus  overmled,  it 
would  seem  difficnlt,  nnder  the  above  ftules,  to  exclude  the 
defendant  from  contesting  again,  nnder  an  answer,  the  qnefi- 
tion  of  infringement,  espedallj  as,  nnder  the  issues  raised  by 
an  answer,  and  nnder  the  light  thrown  on  the  subject  by  the 
proofs  on  the  issue  on  the  plea,  and  under  new  proofs  on  the 
issues  on  the  answer,  the  question  of  infringement  might  be 
presented  in  a  very  different  light  from  that  in  which  it  was 
presented  on  the  trial  of  the  issue  on  the  plea,  and  in  one 
much  more  favorable  to  the  defendants.  Indeed,  the  defend- 
ants' affidavit  on  this  motion  states  that  they  will  desire^  by 
answer,  to  put  in  prior  patents,  to  limit  the  scope  of  the 
plaintiff's  patents,  so  as  to  render  infringement  impossible. 
It  is  difficult  to  see  how  they  are  to  be  prevented  from  doing 
this  by  answer,  after  the  overruling  of  their  plea.  The  ques- 
tion of  the  infringement  of  a  patent  depends  very  much  on 
the  construction  of  its  claims,  and  that  depends  very  much 
on  prior  patents  on  the  same  subject.  If  such  prior  patents 
are  to  be  put  in  they  ought  to  be  set  up  in  an  answer,  and  be 
put  in  once  for  all,  and  the  issue  of  infringement  ought  to  be 
tried  but  once,  and  under  an  answer,  and  ncft  under  a  plea. 
The  defendants  think  they  will  succeed  on  the  question  of 
infringement.  But  the  plaintiff  thinks  otherwise.  If  the  de- 
fendants succeed,  expense  will  have  been  saved  by  having  no 
other  issue  but  that  on  the  plea.  But,  if  the  plaintiff  succeeds 
on  the  plea,  he  must,  to  realize  his  success,  go  through  a 
second  litigation  on  the  same  question ;  and  no  expense  will 
have  been  saved.  The  one  resxdt  is  now  to  be  contemplated 
quite  as  much  as  the  other.  Within  the  principles  laid  down 
in  Rhode  Island  v.  MctssachicsettSy  (14  Peters j  210,)  it  would 
be  unjust  to  the  plaintiff  to  permit  the  issue  of  infringement 
to  be  determined  on  the  plea.  Besides  this,  none  of  the  ad- 
judged cases  sanction,  in  a  suit  like  this,  a  plea  merely  of  non- 
infringement, under  rules  of  practice  such  as  those  which 
govern  this  case.  On  the  contrary,  the  authorities  condemn 
such  a  plea.    {Bailey  v.  Ze  Roy^  2  Edw.  Ch.  jB.,  614 ;  Black 


OCTOBER,  1881.  13 


In  r$  the  Appointment  of  Snperyieore  of  Election. 

V-  Blacky  16  Oeorgiaf  445 ;  MiUigan  v.  MiUedge^  3  Cranoh^ 

aso.) 

It  is  onlj  when  a  plea  is  unexceptionable  in  its  form  and 
character,  that  it  is  to  be  set  down  for  argument  or  to  be  re- 
plied to.  {Shode  hlcmd  v.  MasaachvsettSj  14  Fetera^  210, 
257.)  The  motion  to  strike  this  plea  from  the  files,  as  im- 
proper, is  a  correct  motion,  and  must  be  granted,  with  leave 
to  the  defendants  to  answer  in  30  days,  on  payment  of  costs. 

Brieaen  A  BettSy  for  the  plaintiff. 

W.  H.  L.  Lee^  for  the  defendants. 


In  the  Mattes  of  the  Appointment  of  SiTFEByisoss  of 

Elechon. 

The  ConTt  being  required,  by  §  2,012  of  the  Reyised  Statutes,  to  appoint,  in 
eacb  electioa  district,  two  supervisors  of  election  "  of  different  political  par- 
tiee,"  and  there  being  a  dispate  as  to  who  should  be  appointed  from  the 
Democratic  party  in  the  city  of  New  York,  the  Court  selected  persons  recom- 
mended by  "  The  New  York  County  Democracy." 

(Before  Blatghiobd,  J.,  Southern  District  of  New  York,  October  6th,  1881.) 

< 

BuiTOHFORD,  J.  The  requirement  of  §  2,012  of  the  Be- 
Tised  Statutes  is,  that  the  two  supervisors  of  election,  in  each 
dectioD  district,  ^^  shall  be  of  different  political  parties."  By 
§  2,026,  the  chief  supervisor  of  elections  is  required  to  re- 
ceive the  applications  of  all  parties  for  appointment  as  super- 
vifiors  of  election,  and  to  present  such  applications  to  the 
judge,  and  fumish  information  to  him  in  respect  to  the  ap- 
pointment bj  the  Court  of  such  supervisors  of  election.  A 
question  has  now  arisen  as  to  who  shall  be  appointed  super- 
visors from  the  Democratic  party,  in  the  city  of  New  York, 


14  SOUTHERN  DISTRICT  OP  NEW  YORK, 

/n  re  the  Appointment  of  Snperyisors  of  Election. 

at  the  coining  election,  in  two  Oongressional  Districts.  Ap- 
plications are  made  by  persons  belonging  to  an  organization 
called  "The  New  York  County  Democracy,"  and  also  by 
persons  belonging  to  an  organization  called  "  The  Democratic 
Organization  of  the  city  and  county  of  New  York."  The 
former  organization  has  come  into  existence  since  the  last 
Democratic  State  Convention  was  held.  Delegates  repre- 
senting "  The  Democratic  organization  of  the  city  and  county 
of  New  York  "  were  recognized  and  admitted  to  seats  at  the 
last  Democratic  State  Convention,  and  were  the  only  dele- 
gates recognized  by  that  Convention  as  representing  the 
Democratic  party  in  the  city  and  county  of  New  York. 
Whenever  a  question  has  arisen  heretofore  in  respect  to  what 
political  organization  shoxdd  be  recognized  by  the  Court,  in 
appointing  supervisors,  as  entitled  to  be  considered  as  the 
regular  representative  organization  of  the  political  party, 
the  practice  has  been  to  recognize  that  one  which  was  recog- 
nized by  the  last  State  Convention  of  the  party.  It  has  been 
thought  wise  to  recognize  some  one  organization  as  entitled  to 
represent  the  political  party,  and  to  ask  that  members  of  its 
organization,  recommended  by  it,  and  those  only,  provided 
they  were  fit  and  proper  persons,  and  met  the  requirements 
of  the  statute,  should  be  appointed  the  supervisors  from  such 
political  party ;  and  no  rule  more  likely  to  effect  a  just  re- 
sult, and  to  meet  with  general  acquiescence,  could  be  sug- 
gested, than  the  one  above  referred  to.  But,  like  every  gen- 
eral rule,  it  must  be  modified  by  a  change  of  circumstances. 
If  such  general  rule  were  to  be  applied  to  the  present  case, 
without  reference  to  any  circumstances  which  have  trans- 
pired since  the  last  Democratic  State  Convention  was  held, 
the  organization  called  "  The  Democratic  organization  of  the 
city  and  county  of  New  York"  would  be  recognized  as  the 
regular  representative  oi^nization  of  the  Democratic  party 
in  the  city  and  county  of  New  York.  But  it  has  been  made 
clearly  to  appear  to  the  Court,  that,  since  the  last  Democratic 
State  Convention  was  held,  such  proceedings  have  been  duly 
and  regularly  had  by  proper  and  authorized  representatives 


OCTOBER,  1881.  15 


Meyer  v,  Mazheimer. 


of  "  The  Democratic  organization  of  the  city  and  county  of 
New  York/'  that,  although  that  organization  may  still  for- 
mally exist,  the  new  organization  called  "The  New  York 
Comity  Democracy  "  must  be  regarded  as  representing  it  and 
its  members,  and  as  the  only  organization  now  recommend- 
ing persons  to  be  appointed  as  supervisors  from  the  Dem- 
ocratic party,  which  onght  to  be  recognized  by  the  Court  as 
the  regular  representative  organization  of  the  Democratic 
party  in  the  city  and  county  of  New  York.  Therefore,  the 
persons  recommended  by  the  organization  called  "  The  New 
York  County  Democracy ''  will,  if  fit  and  proper  persons, 
and  meeting  the  requirements  of  the  statute,  be  appointed 
by  the  Court  as  supervisors  from  the  Democratic  party. 

WiUiam  C,  Whitneyy  for  the    New  York  County  De- 
mocracy. 

Cha/rles  W.  Brooke,  for  the  Democratic  organization  of 
the  dty  and  county  of  New  York. 


John  D.  Meter  and  Chaelbs  M.  Nbubaueb 
John  Maxheimxs.    In  Equity. 

Re-iaeaed  letters  patent  No.  8,694,  granted  to  John  D.  Meyer  and  Charles  M. 
Neabaner,  Febmary  26th,  1879,  for  an  improyement  in  wire  cages,  the  orig- 
inal patent,  No.  189,874,  haying  been  granted  to  Michael  Grebner,  June  10th, 
1878,  are  inyaUd,  being  for  a  different  inyention  from  the  original 

The  re-issue  was,  apparently,  expanded  beyond  the  original,  to  cover  the  inter- 
yening  inyentions  of  others. 

(Before  Wbmmleb,  J.,  Sonthem  District  of  New  York,  October  6th,  1881.) 


16  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Meyer  v.  Maxheimer. 

Wheeler,  J.  This  suit  is  brought  upon  letters  patent 
No.  139,784,  granted  to  Michael  Grebner,  Jnne  10th,  1873,  and 
re-issned  to  the  plaintiffs,  February  25th,  1879,  in  No.  8,594, 
for  an  improvement  in  wire  cages.  Among  the  defences  set 
up  is  one  that  the  re-issne  is  for  a  different  invention  from 
that  in  the  original  patent.  The  original  patent  was  for  a 
cage  having  the  horizontal  bands  provided  with  slots  through 
which  loops  formed  outwardly  on  the  upright  wires  were 
placed  and  held  by  a  locking  bar  extending  around  the  cage 
ontside  the  band  and  through  the  loops,  making  a  firm  and 
durable  connection  between  the  bands  and  wires.  After  that, 
and  before  the  re-issue,  cages  were  invented  and  brought  into 
use  having  their  horizontal  bands  made  tubular,  of  sheet  metal, 
vnth  holes  above  and  below,  through  which  the  upright  wires 
were  placed,  having  bends,  like  loops,  extending  outwardly 
vdthin  the  hollow  bands,  to  form  a  connection  between  the 
wires  and  bands.  The  re-issue  is  for  a  cage  having  horizontal 
bands  of  sheet  metal,  or  other  suitable  material,  provided  with 
holes  that  engage  with  the  vertical  filling  wires,  which  have 
loops  or  crimps  that  fit  the  holes  and  effectually  prevent  the 
vertical  displacement  of  the  horizontal  band  ;  and  a  locking- 
bar,  like  that  in  the  original,  to  prevent  either  of  the  filling 
wires  from  being  pressed  in  so  as  to  disengage  its  crimps  from 
the  cVoss,  or  horizontal,  band.  The  first  claim  is  for  the  com- 
bination, in  a  cage,  of  filling  wires  provided  with  loops  or 
crimps  and  cross-bands  provided  with  boles  adapted  to  engage 
with  the  loops  or  crimps. 

There  is  nothing  in  the  original  patent  about  the  engage- 
ment of  the  loops  with  the  slots  otherwise  than  by  being  held 
together  by  the  locking-bar.  The  loops  shown  in  the  draw- 
ings are  not  shaped  to,  of  themselves,  hold  the  cross-band  in 
place.  The  connection  between  the  bands  and  the  wires  de- 
pended wholly  upon  the  locking-bar.  The  combination  men- 
tioned in  the  first  claim  of  the  re-issue  would  not  be  an  open^ 
tive  combination  at  all,  with  the  parts  made  only  as  described 
in  the  original.  The  invention  sought  to  be  covered  by  the 
re-issue  is  of  a  cage  held  in  shape  by  the  fitting  of  crimpa  in 


OCTOBER,  1881.  17 


Mazheimer  v.  Meyer. 


the  wires  to  holes  in  the  cross-bandB,  while  that  in  the  original 
16  of  a  cage  held  in  shape  by  the  locking  of  loops  on  the 
wires  throngh  slots  in  the  cross-bands.  These  inventions  are 
eesentiallj  different.  The  re-issue  was,  apparently,  expanded 
beyond  the  original  to  cover  the  intervening  inventions  of 
others.  The  language  of  the  Supreme  Conrt  in  Mfg.  Co.  v. 
Ladd^  (102  TJ.  /&,  408,)  seems  peculiarly  applicable  to  this 
case.  It  is  said  there,  that  the  statute  was  never  intended  to 
aDow  a  patent  to  be  enlarged  except  in  a  clear  case  of  mis- 
take, and  that  there  is  no  safe  or  jnst  rule  but  that  which  confines 
a  re-issned  patent  to  the  same  invention  which  was  described 
or  indicated  in  the  original.  This  re-issue  seeks  to  enlarge 
the  invention  as  well  as  the  patent,  and  is  not  supported  by 
the  original. 

Let  there  be  a  decree  that  the  re-issned  patent  is  invalid, 
and  that  the  bill  of  complaint  be  dismissed,  with  costs. 


JoK^  Van  Santvoordy  for  the  plaintiffs. 
Arthur  V.  Briesen^  for  the  defendant. 


John  Maxheoceb 
John  D.  Meter  and  Chasles  M.  Nbubaubr.    In  EQuirr. 

Letten  patent  No.  162,400,  granted  to  John  Maxheimer,  April  20th,  1876,  and 
letters  patent  No.  218,768,  granted  to  him  Aagust  19th,  1879,  each  for  im- 
provemeDta  in  bird  caf^es,  are  yalid. 

The  first  patent  underlies  all  constmctioDS  of  cages  where  the  horizontal  hands 
are  held  in  place  solely  by  shoulders  formed  on  the  upright  wires. 

An  accidental  and  incidental  eifect,  not  obserred,  if  it  existed,  held  not  to  show 
prior  inrention. 

An  improyement,  the  use  of  which  inyolres  the  use  of  a  patented  inyention,  in- 
fringes it,  eyen  though  the  improrement  be  patented. 

(Before  Whskuoi,  J.,  Southern  District  of  New  Tork,  October  6tii,  1881.) 
Vol.  XX.— 2 


18  SOUTHERN  DISTRICrr  OF  NEW  YORK, 

Maxheimer  v.  Meyer. 

Wheeler,  J.  Tbifi  suit  rests  upon  two  patents  granted 
to  the  orator  for  improyements  in  bird  cages,  the  first  num- 
bered 162,400,  dated  April  20th,  1875,  for  a  cage  in  which 
the  horizontal  bands  are  solid  wires  with  holes  through  which 
the  upright  wires  are  placed  and  which  are  held  in  place 
on  the  upright  wires  by  short  bends  in  the  latter,  forming 
shoxdders  above  and  below  the  horizontal  wires,  without  solder 
or  other  fastening ;  the  second,  numbered  218,758,  dated  Au- 
gust 19th,  1879,  after  an  interference  between  him  and  Michael 
Grebner,  who  prosecuted  it  at  the  instance  and  expense  of  the 
defendants,  is  for  a  cage  in  which  the  ^horizontal  bands  are 
hollow  wires,  through  which  the  vertical  wires  pass,  with  short 
bends  in  them,  within  the  hollow  of  the  horizontal  wire, 
which  is  flattened  so  as  to  lock  them  together.  The  defend- 
ants deny  the  novelty  of  the  second  patent  and  infringement 
of  either.  The  plaintiff  insists  that  they  are  concluded  as  to 
the  novelty  of  the  second  patent  by  the  decision  in  his  favor 
against  them  in  the  interference  proceedings.  The  defend- 
ants make  and  sell  cages  having  vertical  wires  with  bends  in 
the  hollow  of  horizontal  bands  locked  by  flattening  the  latter, 
like  the  plaintiffs,  except  that  the  bends  extend  in  the  direc- 
tion of  the  axis  of  the  bands,  instead  of  radiaUy,  whereby  the 
band  can  be  flattened  more  perfectly.  It  does  not  appear, 
from  any  of  the  evidence,  that  any  cages  had  ever  been  con- 
structed before  the  plaintiff's  invention  described  in  his  first 
patent,  in  which  the  upright  wires  and  cross-band  had  been 
held  together  by  their  own  conformation,  without  the  aid  of 
solder  or  some  contrivance  to  tie  or  lock  them  together  That 
invention  and  patent,  therefore,  underlie  all  constructions  of 
cages  whereby  the  horizontal  bands  are  held  in  place  solely  by 
shoulders  formed  on  the  upright  wires.  The  plaintiff's  second 
patent  is  for  an  improvement  upon  his  first  by  bringing  the 
bends  within  a  hollow  cross-band  and  making  the  connection 
more  firm  by  fiattening  the  cross-band  and  bringing  the 
shoulders  formed  by  the  holes  through  it  more  closely  to  the 
shoulders  on  the  vertical  wires.  The  cross-bands  are  held  in 
place  solely  by  the  shoulders  on  the  upright  wires  in  both,  the 


OCTOBER.   1881.  19 


Mazheimer  t'.  Meyer. 


improvement  in  the  latter  consisting  merely  in  the  better 
mode  of  bringing  the  shoulders  to  bear.  In  the  defendants' 
cage  the  cross-bands  are  held  in  place  solely  by  these  means, 
and  the  shoulders  are  brought  to  bear  by  the  plaintiff's  im- 
proved method.  They,  therefore,  infringe  both  patents,  if  the 
second  is  valid.  The  only  near  approach  to  the  plaintiff's  in- 
vention sought  to  be  patented  in  this  patent,  and  the  only  one 
to  which  special  reference  is  deemed  to  be  necessary,  prior 
thereto,  is  in  some  cages  made  by  John  L.  Fisher,  inventor 
and  assignor  in  letters  patent  No.  167,325,  dated  August  31st, 
1875,  for  an  impro\^ment  in  bird  cages,  in  1876,  at  Buffalo. 
This  patent  is  for  a  cage  with  a  hollow  cross-band  like  the 
plaintiff's,  with  short  bends  on  the  upright  wires,  within  the 
hollow  of  the  cross-band,  but  held  in  place  by  a  wire  key  in- 
serted within  the  bends  and  through  the  wire,  and  locking  the 
upright  wires  to  the  cross-band.  This  is  not  the  plaintiff's 
invention,  which  does  away  with  all  contrivances  for  fastening 
except  the  shape  of '  the  cross-band  and  upright  wires.  The 
evidence  shows  clearly  that  Fisher  made  some  cages,  before 
flie  plaintiff's  invention,  without  this  wire  key.  Those  so 
made,  without  other  fitting  than  the  insertion  of  the  upright 
wires  with  their  bends  through  the  holes  in  the  cross-band, 
would  not  have  a  firm  attachment  of  the  cross-band  to  the 
wires.  It  is  said  in  behalf  of  the  plaintiff,  that  none  of  these 
had  all  the  cross-bands  without  the  key,  but  this  is  not  mate- 
rial, for,  one  cross-band  and  its  connections  with  the  wires 
would  show  the  invention  as  well  as  more.  The  evidence 
tends  to  show,  that,  in  shaping  some  of  those  cages,  the  cross- 
bands  out  of  which  the  key  had  been  left  were  flattened  and  a 
firm  connection  thereby  made  between  them  and  the  upright 
wires.  That,  if  done,  would  show  the  construction  of  the 
plaintiff's  second  patent.  Bat,  it  is  doubtful  whether  that  was 
done.  If  done,  it  was  not  for  the  purpose  of  making  a  better 
connection  between  the  bands  and  wires,  nor  known  then  to 
have  that  effect,  but  was  accidental,  and  incidental  to  the  pro- 
cess of  shaping  Hie  cages.  Neither  does  this  effect  appear  to 
have  been  observed  before  the  date  of  the  plaintiff's  invention. 


20  SOUTHERN  DISTRICT  OF  NEW  YORK, 


Maxheimer  v.  Meyer. 


if  it  existed.  This  wonld  not  show  that  Fisher  or  those  who 
saw  his  work  invented,  or  had  prior  knowledge  of,  this  thing 
patented  bj  the  plaintifE,  before  he  invented  it.  (Bev.  Stat. 
U.  S.J  sec.  4920 ;  Andreios  v.  Carmarij  13  Blatchf.  C.  C.  jB., 
307.)  These  conclusions  make  it  unnecessary  to  consider  the 
effect  of  the  decision  in  the  interference  proceedings,  even  as 
to  the  invention  of  Grebner  set  up  in  his  application,  which 
set  on  foot  those  proceedings.  The  defendants'  mode  of 
placing  the  bends  in  the  upright  wires  lengthwise  in  the  hol- 
low of  the  cross-band  may  be  an  improvement  upon  the 
plaintiffs  mode,  but,  if  it  is,  in  employing  that  improvement 
they  make  use  of  the  plaintifE's  patented  invention  without 
right,  although  that  improvement  is  patented. 

The  plaintiff's  second  patent  also  contains  a  claim  for  a 
feed  cap  in  connection  with  the  vertical  wires  of  the  cage,  and 
it  is  insisted  for  the  defendants  that  this  invention  is  indepen- 
dent of  the  other  and  that  the  patent  for  both  is,  therefore, 
void.  But,  these  inventions  are  connected  together  by 
being  appropriate  for  use  in  the  same  cage  for  the  common 
purpose  of  making  a  bird  cage,  and,  under  these  circumstances, 
the  joinder  of  both  in  one  patent  does  not  render  the  patent 
void.  {Emerson  v.  Hogg^  2  Blatchf.  C.  C.  -S.,  1 ;  Hogg  v. 
Emerson^  6  How.^  437.) 

Let  a  decree  be  entered  for  an  injunction  and  an  account, 
according  to  the  prayer  of  the  bill,  with  costs. 

Arthv/r  V.  Brieeen^  for  the  plaintiff. 

John  Van  Samimoordj  for  the  defendants. 


OCTOBER,   1881.  21 


Benuurd  v.  HeimaniL 


Henby  O.  Bebnabd  and  Bobebt  Oray 
Julius  Heihann  and  othebs.    In  Equity. 

Letters  patent  g^ranted  to  Robert  Gray,  September  9th,  1879,  for  an  "  improye- 

meot  in  head-eoTeringa,*  are  yalld. 
The  myention  defined  and  dietingoished  firom  prior  inyentione. 

(Before  Blatohfobi>,  J.,  Southern  Diatrict  of  New  York,  October  '/th,  1881.) 

Blatohfobd,  J.  This  suit  is  brought  on  letters  patent 
granted  to  Robert  Gray,  September  9th,  1879,  for  an  "  im- 
provennent  in  head  coverings."  The  specification,  which  is 
accompanied  by,  and  refers  to,  a  drawing  which  represents  a 
sectional  side  view  of  a  hat  embodying  the  invention,  says : 
"  This  invention  relates  to  the  manufacture  of  hats,  bonnets 
or  other  head-coverings,  with  a  top  layer  of  flock.  Hats  of 
this  description  have  been  made  by  applying  the  flock  to  a 
bnckram  support,  but  have  invariably  been  stifle,  owing  to  the 
fact  that,  in  order  to  give  the  article  the  required  body  or 
strength,  it  was  necessary  to  use  a  heavy  or  thick  piece  of 
buckram.  One  objection  to  this  hat  is  the  stiffness  referred 
to,  it  being  desirable  in  some  cases  to  furnish  a  soft  hat,  and 
another  the  visibility  of  the  buckram  tending  to  defeat  the 
object  of  the  flock  layer,  which  is  to  produce  a  felt-like 
article.  My  invention  is  a  head-covering,  consisting  of  a  sup- 
port of  buckram  or  the  like,  a  top  layer  of  flock,  and  a  canton 
flannel  or  other  similar  lining,  whereby  the  article  is  rendered 
capable  of  taking  a  soft  finish,  while  both  surfaces  thereof 
have  the  appearance  or  semblance  of  felt — one  of  plain  felt 
and  the  other  of  napped  felt.  In  the  drawing  the  letter  A 
designates  the  support,  B  the  fiock  layer,  and  C  the  canton 
flannel  or  other  similar  lining.  In  carrying  out  my  inven- 
tion I  first  cement  the  lining  C  to  a  piece  of  buckram  or  other 


22  SOUTHEEK  DISTRICT  OF  NEW  YORK, 

Bernard  v.  Heimann. 

like  fabric,  by  a  suitable  adhesive  substance,  with  the  nap  of 
the  lining  exposed,  and  then  press  the  two  together,  in  any 
usual  or  suitable  manner,  to  the  desired  shape.  In  lieu  of 
canton  flannel  the  fabric  known  as  *  glove  lining  *  may  be  used. 
I  now  apply  to  the  buckram  a  layer  of  cotton,  woolen  or  other 
flock,  this  process  consisting  in  coating  the  buckram  with  an 
adhesive  substance  and  strewing  the  flock  thereon  in  finely 
powdered  form.  The  article  is  then  in  a  state  for  trimming. 
The  buckram  A  suppoHs  both  the  flock  layer  B  and  the 
lining  C,  and,  being  reinforced  by  the  lining,  a  light  or  thin 
piece  of  such  material  may  be  used,  rendering  the  article 
pliable  or  soft,  substantially  like  soft  felt.  The  appearance 
of  the  article,  moreover,  is  felt-like,  inasmuch  as  the  lining 
has  the  semblance  of  napped  felt  and  the  flock  layer  that  of 
plain  felt."  The  claim  is  as  follows :  "  A  head  covering  con- 
sisting of  a  support  of  buckram  or  the  like,  a  top  layer  of 
flock,  and  a  canton  flannel  or  other  similar  lining,  substanti- 
ally as  and  for  the  purpose  described." 

The  only  defence  is  want  of  novelty.  It  is  plain  that  the 
hat  of  the  patent  must  be  a  hat  made  by  pressing  the  materials 
into  the  shape  of  a  hat,  and  not  made  the  top  in  one  piece, 
the  side  crown  in  another  and  the  brim  in  another,  and  then 
these  joined.  There  must  also  be  (I)  a  layer  of  flock  on  a 
support  of  buckram  or  the  like ;  (2)  a  support  of  buckram  or 
the  like  next  the  flock,  with  a  coating  of  adhesive  substance 
on  the  buckram,  on  which  the  flock  is  strewn ;  (3)  a  canton 
flannel  or  other  similar  lining  on  the  face  of  the  buckram  to 
which  the  flock  is  not  applied,  with  the  napped  face  of  the 
canton  flannel  exposed  and  not  next  to  the  buckram. 

The  Kendall  turban,  defendants'  exhibit  Ko.  3,  has  no 
side  crown  or  brim.  Irrespective  of  this,  it  is  not  satisfac- 
torily established  that  that  article  had  in  it  any  stockinet 
support,  or  any  thing  but  canton  flannel  with  flock  applied 
directly  to  the  unnapped  face  of  the  canton  flannel. 

Bracher's  frame,  No.  6,  if  made  with  the  unnapped  face  of 
the  canton  flannel  exposed,  had  only  flock  enough  put  on  the 
buckram  to  take  an  impression  of  straw  braid,  and  was  made 


OCTOBER,   1881.  23 


The  Steam  Stooe  Cutter  Company  v,  Sean. 


not  for  use  in  that  condition  as  a  hat,  but  solely  to  be  stamped 
as  an  imitation  of  a  straw  hat.  The  flock  was  put  on  only  as 
a  pnlp  on  which  to  emboss,  and  the  flock,  by  the  embossing, 
lost  its  identity  and  parted  with  all  resemblance  to  felt. 

The  Morse  hat,  No.  13,  is  a  flocked  bnckram  hat,  with  a 
strip  of  canton  flannel  put  in  separately  as  a  brim. 

Hats  such  as  the  Novelty  Company  hats  of  1876,  made  of 
canton  flannel,  muslin  and  flock,  with  the  napped  face  of  the 
canton  flannel  not  exposed,  were  not  the  Gray  hat.  It  is 
plain  that  cementing  the  nap  to  the  bnckram  tended  to  de- 
stroy the  pliability  or  softness  aimed  at  by  Gray,  by  reason  of 
the  absorption  of  the  nap  by  the  cement,  and  that  there  conld 
be  no  appearance  of  napped  felt. 

The  ca£e  is  one  where  there  was  sufficient  invention  to 
support  the  patent,  and  there  mast  be  a  decree  for  the  plaint- 
iffs, with  costs. 

S.  J,  Gordotij  for  the  plaintiffs. 

J.  H.  Ooodman^  for  the  defendants. 


The  Steam  Stone  Cuttee  Company 
Thomas  Seaes.    In  Equity. 

Rule  XI  of  the  Circuit  Court  for  the  District  of  Vermont,  providing  that  "  the 
creation,  continuance  and  termination  of  liens  and  rights  created  by  attach- 
ment of  property,  or  the  arrest  of  a  defendant,  shall  be  governed  by  the  laws 
of  this  State,"  covers  the  issuing  and  serving  of  a  writ  of  sequestration  in  a 
suit  in  equity  in  the  Circuit  Court,  after  an  interlocutory  decree  for  the  plaint- 
iff, in  a  suit  in  equity  for  the  infringement  of  letters  patent,  for  an  account  of 
profits,  under  which  writ  real  estate  of  the  defendant  in  the  writ  is  attached, 


24  VERMONT, 


The  Steam  Stone  Cutter  Company  v.  Sears. 


to  be  held  aa  security  for  a  final  recoTery,  and  the  Circuit  Court  had  power 

to  make  such  Rule,  applying  to  suits  in  equity. 
Service  of  such  writ  by  a  return  of  attachment  on  a  copy  of  it  lodged  in  the 

town  clerk's  office  where  the  town  records  are  kept,  without  possession,  is 

sufficient  to  create  a  lien  on  the  real  estate. 
The  writ  \b,  in  effect,  strictly  an  attachment  to  create  a  lien. 

(Before  WHsniB,  J.,  Vermont,  October  11th,  1881.) 

Wheeler,  J.  The  orator,  as  owner  of  a  patent,  brought 
a  bill  in  this  Coort  against  the  Windsor  Maniifacturing  Com- 
pany for  infringement,  and  obtained  a  decree  establishing  the 
title  to  and  validity  of  the  patent,  the  fact  of  infringement, 
and  for  an  account  of  profits.  After  this  decree,  on  applica- 
tion of  the  orator,  a  writ  of  sequestration,  in  the  nature  of  an 
attachment,  to  create  a  lien  for  satisfying  the  decree,  was 
issued  and  served  by  attaching  the  real  estate  of  that  defend- 
ant, in  accordance  with  statutes  o/  the  State  of  long  standing, 
which  enable  the  Courts  of  Chancery  of  the  State  to  issue 
such  process  and  create  such  liens.  After  this  attachment 
that  defendant  conveyed  to  this  defendant,  who  had  full 
knowledge  of  the  attachment,  a  portion  of  the  estate  so 
attached.  The  orator  obtained  a  final  decree  for  the  payment 
of  money  in  the  original  cause,  took  out  execution  thereon, 
and  caused  it  to  be  levied  upon  that  estate,  and  caused  the 
estate  to  be  set  out  to  the  orator  in  satisfaction  of  so  much  of 
the  execution  as  it  would  apply  to,  at  its  appraised  value, 
agreeably  to  the  statutes  of  the  State  in  relation  to  levy  of 
execution  upon  real  estate.  The  defendant  refused  to  recog- 
nize the  validity  of  the  attachment  and  levy,  and  claimed  to 
hold  the  land  against  them.  This  bill  is  brought  to  confirm 
and  enforce  the  orator's  attachment  and  levy  and  to  obtain 
possession  of  the  estate,  and  the  cause  has  been  heard  upon 
bill  and  answers.  Ko  question  is  made  about  the  propriety 
or  regularity  of  the  writ  of  attachment  issued  in  this  case,  if 
there  was  authority  to  issue  such  a  writ  at  all ;  nor  about  the 
regularity  of  the  attachment  upon  the  writ,  or  the  levy  of  the 
execution  and  setting  out  the  estate  by  the  marshal  according 
to  the  laws  of  the  StAte,  if  the  attachment  could  effectually  be 


OCTOBER,   1881.  25 


The  Steam  Stone  Gutter  Company  v.  Sears. 


80  made,  or  the  estate  be  so  levied  upon,  in  any  case  in  equity. 
The  only  questions  made  are  as  to  whether  the  Court  has 
the  power  to  issue  such  writs,  and  whether  the  service  of  such 
a  writ  in  that  manner  creates  a  lien  that  will  hold  until 
decree.  It  has  been  the  practice  of  the  Court  for  about 
thirty  years  to  issue  such  writs,  upon  cause  shown,  in  this 
manner,  some  of  which  have  been  served  by  attaching  real 
estate  in  this  manner,  but  doubts  have  arisen  latterly  in 
respect  to  the  legality  of  this  course.  In  no  case  has  the 
question  arisen,  so  far  as  is  known,  except  upon  the  applica- 
tion for  the  writ,  and  not  then  so  as  to  involve  appearance  for 
the  opposite  party  or  argument.  It  is  presented  now  for  the 
first  time  for  debate,  and  has  been  argued  with  thoroughness 
and  ability  upon  each  side. 

An  attempt  has  been  made  to  rest  these  proceedings  upon 
the  general  authority,  usage  and  practice  of  Courts  of  Chan- 
cery. That  such  Courts  have  issued  writs  of  sequestration, 
from  the  earliest  times,  is  abundantly  shown.  {Hinders  Chan.y 
127 ;  Colston  v.  Gardner^  2  Ch.  Ca.,  44 ;  JFrancJdyn  v.  Coir 
haun^  3  Sioanst.j  276 ;  Peck  v.  Crane,  25  Vt.y  146.)  But  these 
writs  were  always  issued  in  the  nature  of  distresses  to  compel 
appearance,  or  performance  of  some  decree  or  order,  and  not 
for  the  purpose  of  creating  a  mere  lien  upon  property,  to  be 
held  for  the  satisfaction  of  a  money  decree.  These  proceed- 
ings must  be  maintained,  if  at  all,  by  the  force  of  the  statutes 
of  the  United  States,  the  rules  and  practice  of  the  Courts  in 
pursuance  thereof,  and  the  laws  of  the  State  adopted  thereby ; 
although  the  practice  of  Courts  of  Chancery,  botih  ancient  and 
modem,  is  to  be  looked  into  for  the  purpose  of  understand- 
ing and  applying  these  statutes  and  rules. 

The  statutes  of  the  CTnited  States  make  a  distinction  be- 
tween common  law  causes  and  equity  and  admiralty  causes,  as 
to  provision  for  process  and  forms  and  modes  of  procedure. 
For  the  former  the  practice,  proceedings,  and  remedies,  by 
attachment  and  execution,  of  the  Courts  of  the  States,  are 
adopted.  {Bev.  Stats.  XT.  S.,  sees.  914,  915,  916.)  For  the 
latter  it  is  merely  provided,  that  "  the  forms  of  mesne  pro- 


26  VERMONT. 


The  Steam  Stone  Catter  Company  v.  Sean. 


cess,  and  the  forms  and  modes  of  proceeding  in  suits  of 
equity  and  of  admiralty  and  maritime  jurisdiction,  in  the  Cir- 
cuit and  District  Courts,  shall  be  according  to  the  principles, 
rules  and  usages  which  belong  to  Courts  of  equity  and  of  admi- 
ralty respectively,  except  when  it  is  otherwise  provided  by  stat- 
ute or  by  rules  of  Court  made  in  pursuance  thereof ;  but  the  same 
shall  be  subject  to  alteration  and  addition  by  the  said  Courts 
respectively,  and  to  regulation  by  the  Supreme  Court,  by  rules 
prescribed,  from  time  to  time,  to  any  Circuit  or  District 
Court,  not  inconsistent  with  the  laws  of  the  United  States," 
{Hev.  Stats.,  sec.  913;)  and  that  the  Circuit  and  District 
Courts  shall  have  power  to  issue  all  writs  necessary  for  the  exer- 
cise of  their  respective  jurisdictions  and  agreeable  to  the  usages 
and  principles  of  law.  {Sec.  716.)  There  are  no  provisions 
in  the  statutes  for  execution  upon  decrees  in  equity  or  admi- 
ralty causes ;  and  none  for  liens  thereby,  except  that  it  is  pro- 
vided, that  "  judgments  and  decrees  rendered  in  a  Circuit  or 
District  Court,  within  any  State,  shall  cease  to  be  liens  on  real 
estate  or  chattels  real  in  the  same  manner  and  at  like  periods 
as  judgments  and  decrees  of  the  Courts  of  such  State  cease, 
by  law,  to  be  liens  thereon."  {Sec.  967.)  Still,  decrees  in  equity 
and  in  admiralty  in  the  Circuit  and  District  Courts  become 
liens  upon  the  lands  of  defendants  therein,  in  States  where 
like  decrees  of  the  State  Courts  become  such  liens,  the  same 
as  the  decrees  of  the  State  Courts  do.  (  Farrf  v.  Chamber- 
lain,  1  Blacky  430.)  And  suits  in  personam  in  admiralty 
may  be  commenced  by  attachment  of  the  property  of  the 
libellee,  to  be  held  to  answer  the  demand.  {Manro  v.  Almeida, 
10  Wheat,  473.)  These  remedies  rest  upon  the  principles 
and  usages  which  belong  to  such  Courts,  and  the  rules  of  the 
Courts  respectively,  and  not  upon  any  express  provision  of 
the  statutes.  And,  in  giving  construction  to  the  statute  pre- 
scribing those  principles  and  usages,  as  guides  of  procedure, 
reference  is  to  be  had  to  the  practice  of  those  Courts  in  this 
country,  as  grafted  upon  the  English  practice.  This  was  ex- 
pressly laid  down  as  to  admiralty  proceedings,  in  Manro  v. 
Almeida.    The  form  of  the  writ  of  execution  in  equity  cases, 


OCTOBER,  1881.  27 


The  Steam  Stone  Cutter  Company  v.  Sears. 


apoQ  decrees  for  the  payment  of  money,  has  been  provided 
by  the  Supreme  Court,  in  Equity  Rule  8,  and  no  other  pro- 
'Fision  is  made  in  those  Sules  in  regard  to  such  executions. 
All  the  rest  is  left  to  the  Circuit  and  District  Courts.     This 
Court  provided,  by  Enle  XI,  that  "the  creation,  contin- 
uance and  termination  of  liens  and  rights  created  by  attach- 
ment of  property,  or  the  arrest  of  a  defendant,  shall  be  gov- 
erned by  the  laws  of  this  State."     This  State  has,  and  has  had 
almost  from  its  organization  as  a  State,  the  English  equity 
system,  with  its  jurisdiction  vested  in  Courts  of  Chancery,  and 
those  Courts  have  had  the  power  from  nearly  as  early  a 
period  to  issue  writs  of  attachment  like  the  one  in  question, 
having  the  force  and  effect  claimed  in  behalf  of  this  one. 
Such  writs  were  within  the  principles  and  usages  belonging 
to  those  Courts.     Such  a  writ  of  attachment  was  as  well  set- 
tled in  the  jurisprudence  of  the  State  as  belonging  to  the 
Courts  of  equity  as  attachments  upon  mesne  process  were  set- 
tled to  belong  to  the  Courts  of  common  law.    The  Rules  of 
this  Court  are  not  divided  into  Eules  in  equity  and  Rules  at 
law  at  all,  but  are  all  together  in  one  body  and  left  to  operate 
on  the  law  side  or  equity  side  of  the  Court  as  they  may  be 
applicable.     The  laws  of  the  State  adopted  by  this  Rule  are 
as  applicable  to  equity  cases  as  they  are  to  common  law  cases, 
and,  not  being  restricted  by  the  Rule  to  either,  must  have 
been  intended  for  both.     This  Rule  covers  the  issuing  and 
force  of  this  writ.    The  power  to  make  such  a  Rule  in  cases 
where  the  Supreme  Court  has  not  acted  is  as  well  conferred 
as  the  powec  of  that  Court  to  make  Rules  for  the  Circuit  and 
District  Courts  is.    The  language  conferring  it  is  as  explicit 
and  comes  from  the  same  authority.    In  Beers  v.  Haughton^ 
(9  Pet.^  329,)  Mr.  Justice  Story  said :  "  State  laws  cannot 
control  the  exercise  of  the  powers  of  the  National  Govern- 
ment, or  in  any  manner  limit  or  affect  the  operation  of  the 
process  or  proceedings  in  the  National  Courts.     The  whole 
efficacy  of  such  laws,  in  the  Courts  of  the  United  States,  de- 
pends upon  the  enactments  of  Congress.    So  far  as  they  are 
adopted  by  Congress  they  are  obligatory.    Beyond  this  they 


28  VERMONT, 


The  Steam  Stone  Cutter  Company  v.  Sears. 


have  no  controlling  influence.  Congress  may  adopt  sach 
State  laws  directly  by  a  substantive  enactment,  or  they  may 
confide  the  authority  to  adopt  them  to  the  Courts  of  the 
United  States."  "  The  constitutional  validity  and  extent  of 
the  power  thus  given  to  the  Courts  of  the  United  States  to 
make  alterations  and  additions  in  the  process  as  weU  as  in  the 
modes  of  proceeding  in  suits  was  fully  considered  by  this 
Court  in  the  cases  of  Wayma/n  v.  Southard^  (10  TTA^o^.,  1,) 
and  the  Bank  of  the  United  States  v.  SaUtead,  (10  Wheats 
51.")  "  The  result  of  this  doctrine,  as  practically  expounded 
or  applied  in  the  case  of  Bank  of  the  United.  States  v. 
Salsteady  is,  that  the  Courts  may,  by  their  Kules,  not  only 
alter  the  forms  but  the  effect  and  operation  of  the  process, 
whether  mesne  or  final,  and  the  modes  of  proceeding  under 
it."  In  Bank  of  the  United  States  v.  Halstead^  it  was  held, 
that  the  law  of  the  United  States  authorizing  the  Courts  of 
the  United  States  to  alter  their  processes,  authorized  them  to 
so  alter  them  as  to  make  lands  subject  to  execution  which 
were  not  so  subject  under  State  laws.  The  objection  was 
made  there,  as  it  had  been  in  Wayman  v.  Southard^  that  Con- 
gress could  not  delegate  such  powers  to  the  Courts,  because 
they  were  legislative  powers.  In  Wayman  v.  Southard^ 
Chief  Justice  Marshall  said,  as  to  this  objection:  "If  Con- 
gress cannot  invest  the  Courts  with  the  power  of  altering  the 
modes  of  proceeding  of  their  own  oflScers  in  the  service  of  ex- 
ecutions issued  on  their  own  judgments,  how  will  gentlemen 
defend  a  delegation  of  the  same  power  to  the  State  legisla- 
tures ?  The  State  assemblies  do  not  constitute  a  legislative 
body  for  the  Union.  They  possess  no  portion  of  that  legisla- 
tive power  which  the  Constitution  vests  in  Congress,  and  can- 
not receive  it  by  delegation."  In  Bank  of  the  United  States  v. 
Halsteady  Mr.  Justice  Thompson  said :  "  If  the  alterations  are 
limited  to  mere  form,  without  varying  the  effect  and  opera- 
tion of  the  process,  it  would  be  useless.  The  power  here 
given,  in  order  to  answer  the  object  in  view,  cannot  be  re- 
stricted to  form,  as  contradistinguished  from  substance,  but 
must  be  understood  as  vesting  in  the  Courts  authority  so  to 


OCTOBER,  1881.  29 


The  Steam  Stone  Cotter  Company  v.  Sears. 


frame,  mould,  and  shape  the  process  as  to  adapt  it  to  the  pur- 
pose intended.  The  general  policy  of  aU  the  laws  on  this  sub- 
ject is  very  apparent.  It  was  intended  to  adopt  and  conform 
to  the  State  process  and  proceedings,  as  the  general  rule,  but 
under  such  guards  and  checks  as  might  be  necessary  to  insure 
the  due  exercise  of  the  powers  of  the  Courts  of  the  United 
States."  "  It  is  said,  however,  that  this  is  the  exercise  of  leg- 
islative power,  which  could  not  be  delegated  by  Congress  to 
the  Courts  of  justice.  Sut  this  objection  caunot  be  sustained. 
There  is  no  doubt  that  Congress  might  have  legislated  more 
specifically  on  the  subject  and  declared  what  property  should 
be  subject  to  executions  from  the  Courts  of  the  United  States. 
But  it  does  not  follow  that  because  Congress  might  have  done 
this,  they  necessarily  must  do  it  and  cannot  commit  the  power 
to  the  Courts  of  justice." 

These  authorities  well  establish  the  validity  of  the  Rule  of 
this  Court  regulating  attachments.  It  is  strenuously  con- 
tended, in  behalf  of  the  defendant,  that,  if  this  writ  was  valid, 
its  service,  which  was  by  copy  of  the  writ  and  return  of  at- 
tachment upon  it  lodged  in  the  town  clerk's  office  where  the 
land  records  are  kept,  without  possession,  was  not,  and  that  it 
did  not  create  any  lien  upon  the  land.  If  this  was  strictly  a 
sequestration,  this  point  would  be  well  taken,  but  it  is  not,  al- 
though it  is  called  so  to  some  extent.  A  sequestration  is 
intended  to  accomplish  its  object  by  the  actual  taking  of 
goodti  and  chattels,  or  the  rents  and  profits  of  lands,  and  with- 
holding them  until  the  distress  brings  compliance  with  what 
is  then  required,  and  it  creates  no  lien  in  favor  of  future 
judgments  or  decrees,  while  an  attachment  creates  such  a  lien 
and  nothing  more.  This  is,  in  effect,  strictly  an  attachment 
to  create  a  lien,  and  is  so  understood  in  the  laws  of  the  State 
adopted  by  the  Eule.  {French  v,  Winsor,  36  Vt.,  412.)  The 
creation  of  the  lien  provided  for  by  the  Rule  includes  as  well 
the  mode  of  service  as  the  issuing  of  the  writ,  and  adopts  the 
State  law  for  both  pui*po8es.  Besides,  if  the  writ  was  valid 
and  there  was  no  law  or  Rule  providing  any  mode  of  service, 
the  return  upon  the  process,  of  an  attachment  of  land,  would 


30  VERMONT, 


The  Steam  Stone  Gutter  Company  v.  Sean. 


be  sutBcient  without  any  taking  possession,  or  entry  upon  the 
land,  by  the  officer.  {Taylor  v.  Mixter,  11  Pich.^  341.)  And 
this  argument  would  prove  too  much,  for,  if  the  Rules  of 
Court  did  not  provide  for  the  service  of  executions  in  equity 
cases,  there  would  be  no  provision  at  all  for  that  purpose,  nor, 
in  fact,  for  issuing  executions  in  such  cases.  Executions  are 
satisfied  by  levy  on  land  only  by  appraisal  and  setting  out  the 
land  to  the  creditor  under  the  State  laws,  which  make  specific 
provision  for  that  purpose,  in  this  State,  and,  if  that  mode 
was  not  adopted  by  the  Rules  of  the  Courts  in  equity,  and 
the  statutes  of  the  United  States  in  common  law,  cases,  there 
would  be  no  way  to  levy  executions  issuing  out  of  the  United 
States  Courts  upon  lands  writhin  this  State.  Still,  if  this  land 
had  not  been  conveyed,  and  the  record  title  had  stood  in  the 
execution  debtor,  it  probably  would  not  be  contended  but  that, 
upon  a  decree  for  the  payment  of  money,  an  execution  could 
be  taken  out  and  satisfied  by  levy  upon  the  land,  as  was  done. 
It  was  said  in  argument,  that  such  a  Rule  could  no  more  be 
made  here  than  it  could  where  attachments  upon  mesne  pro- 
cess are  not  known,  which  may  be  true,  but  the  effect  of  it 
and  of  all  such  Rules  in  either  place  is  limited  to  the  contin- 
uance of  liens  by  decrees  in  the  State  Courts,  by  the  statute 
before  mentioned.  {Rev.  Stat.  U.  /S.,  sec.  967.)  The  effect 
of  the  whole  is  to  keep  the  liens  in  proceedings  in  the  United 
States  Courts  within  the  same  bounds  as  in  those  of  the  State 
Courts,  according  to  the  policy  of  the  laws  of  the  United 
States,  as  stated  by  Mr.  Justice  Thompson,  in  BamJc  of  United 
States  V.  Halsteady  as  before  quoted.  These  proceedings  are 
according  to  the  principles,  practice  and  usages  of  Courts  of 
equity,  as  they  obtain  within  the  State,  and  as  the  same  have 
been  recognized  by  this  Court  by  granting  such  writs  for 
many  years,  some  of  which  have  been  served  in  the  same 
manner  as  this.  That  practice  is  entitled  to  great  weight,  on 
account  of  the  learning  and  character  of  the  Judges  adopt- 
ing it,  and  on  account  of  its  effect  in  showing  the  cases  to 
which  the  Rules  were  understood  to  apply.  Chief  Justice 
Marshall,  in  speaking  of  the  legality  of  an  arrest  by  the  mar- 


OCTOBER,  1881.  31 


The  Steam  Stone  Cutter  Company  v.  Sears. 

Bhal  in  ConDecticnt,  and  commitment  to  jail  without  a  mitti- 
musy  as  required  by  the  laws  of  the  State,  said :  "  The  uni- 
form course  of  that  Court  from  its  first  establishment,  dispens- 
ing with  this  mittimusj  may  be  considered  as  the  alteration 
in  this  particular  which  the  Court  was  authorized  by  law  to 
make."  {Wayman  v.  Southard^  10  Wheat.^  1.)  These  au- 
thorities and  considerations  lead  to  the  conclusion  that  this 
lien  was  valid,  and  that  the  levy  transferred  the  title  to  this 
land  to  the  orator.  This  conclusion  is  reached  with  less  re- 
luctance, because  the  defendant  knew  of  this  attachment  and 
purchased  at  a  time  when,  so  far  as  appears,  all  supposed  it  to 
be  valid,  and  when  he  could  protect  himself  against  it  by  any 
provision  he  might  require.  The  doubts  which  afterwards 
arose  were  shared  in  by  the  Court,  and  the  issuing  such  writs 
has  since  been  avoided  where  the  service  of  them  might  ex- 
pose the  marshal  to  suit  for  taking  property,  or  the  refusal  by 
him  to  take  property  on  them  to  prosecution  for  neglecting 
to  serve  them,  until  the  question  of  their  validity  should  arise, 
so  that  it  could  directly  be  argued  and  determined.  This  ar- 
gument and  examination  has  removed  these  doubts. 

Let  there  be  a  decree  establishing  the  validity  of  the  at- 
tachment and  levy,  according  to  the  prayer  of  the  bill,  with 
costs. 

Prout  cfe  Walker^  for  the  plaintiff.  . 

jE  J.  Phel/p%  and  WUliarn  Batchelder,  for  the  defendant. 


32  SOUTHERN  DISTRICT    OF  NEW  YORK, 

The  Mallory  Manafactnring  Company  v.  Marks. 


The  Malloby  Manxtfaotubing  Company 
Edwaed  Mabeb  and  OTHERS.    In  Eqitity. 

Letters  patent  No.  74,892,  granted  Febniary  lltb,  1868,  to  Oeorge  MaUory, 
for  an  "  improyement  in  hats,"  are  yalid. 

The  claim  of  said  patent,  namely,  "  The  combination  of  the  brim  of  a  hat  with  a 
drooping  hoop,  so  that  the  brim  is  caused  to  droop  at  the  front  and  the  rear, 
and  to  rise  at  the  sides,  substantially  as  set  forth,"  construed. 

The  question  of  novelty  examined. 

(Before  Blatohfoed,  J.,  Southern  District  of  NewYork,  October  19th,  1881.) 

Blatchfoed,  J.  This  suit  is  brought  on  letters  patent 
No.  74,392,  granted  February  11th,  1868,  to  George  Mallory, 
for  an  "improvement  in  hats."  The  specification  says: 
"  Figure  1  represents  a  side  view  of  a  hat  constructed  accord- 
ing to  my  invention.  Fig.  2  represents  a  perspective  view  of 
one  of  the  springs  of  the  same.  Fig.  3  represents  a  top 
view  of  the  hat.  Fig.  4  represents  an  edge  view  of  one  of 
the  springs  of  the  same ;  and  fig.  5  represents  a  cross  section 
of  the  hoop  enlarged.  The  object  of  my  invention  is  to  im- 
prove hats  made  from  flexible  fabrics,  such  as  cloth ;  and  the 
invention  consists  of  the  combination  of  the  brim  of  the  hat 
with  a  drooping  spring  hoop,  by  which  I  mean  a  spring  hoop 
bent  or  twisted  in  such  manner  as  to  impart  a  droop  to  the 
front  and  rear  of  the  brim  and  an  elevation  to  the  sides 
thereof.  The  hat  represented  in  the  accompanying  drawings 
embodies  my  invention  when  the  hoop  is  formed  of  concavo- 
convex  wire,  the  brim  being  strained  and  shaped  by  a  spring- 
hoop,  which  is  both  concavo-convex  and  twisted,  so  as  to 
give  the  required  droop  at  the  front  and  rear.  The  hoop  is 
best  formed  out  of  steel  wire,  which,  by  passing  between 
rollers  in  a  manner  well  know  to  metal  workers,  is  formed 
rounding  on  one  side  and  hollowing  on  the  other,  so  that  its 


OCTOBER,   1881.  83 


The  Mallory  Manufactiiring  Company  v.  Marks. 


transverse  section  is  such  as  is  represented  at  fig.  5.  A  piece 
of  tliis  concavo-convex  wire,  of  the  proper  length  to  form 
the  hoop,  is  cnt  off  and  is  bent  in  the  following  manner :  Two 
vises  are  secured  to  a  bench,  at  a  distance  apart  a  little  less 
than  the  length  of  the  piece  of  wire,  so  that  it  can  be  strained 
between  them,  its  ends  being  griped  simultaneoasly  in  both. 
A  forked  support  is  also  fixed  upon  the  bench,  midway  be- 
tween the  vises,  and  the  fork  or  slit  in  this  support  is  made 
just  laige  enough  to  receive  the  wire  edgewise.  The  piece 
of  wire  is  strained  between  the  vises  and  in  the  fork.  Then 
a  forked  instrument  is  applied  to  it  midway  between  the 
central  support  and  one  of  the  vises,  and  the  wire  is  parti- 
ally twisted  by  means  of  this  forked  instrument  until  the 
required  bend  is  obtained.  The  instrument  is  then  applied 
in  like  manner  to  the  wire  at  the  other  side  of  the  central 
support,  and  the  partial  twisting  there  is  made  equal  to  that 
imparted  to  the  portion  of  the  wire  first  twisted.  The  piece 
is  then  removed  from  the  vises,  and  a  sheet-brass  clasp,  cs, 
similar  to  those  used  for  skirt  hoops,  is  applied  to  one  of  its 
ends.  The  piece  is  then  inserted  in  a  tubular  socket  or  case, 
iTij  formed  in  the  rim  of  the  hat,  through  an  opening  left  for 
the  purpose,  and  its  ends  are  secured  together  by  the  brass 
dasp ;  or  the  hoop  may  first  be  formed  by  uniting  the  ends 
of  the  piece  by  the  clasp,  and  then  it  may  be  sewed  into  a 
tubular  socket  in  the  rim  of  the  hat.  When  the  ends  of  the 
hoop  are  united,  it  will  be  found  that  the  hoop  has  the  form, 
edgewise,  shown  at  figs.  2  and  4,  and,  when  it  is  in  the  hat, 
the  brim  is  compelled,  by  the  form  of  the  spring,  to  droop  at 
the  front,  b,  and  rear,  Cj  as  shown  at  fig.  1,  and  to  rise  at  the 
sides,  d.  I  generally  apply  two  hoops  to  the  brim  of  the  hat 
body,  placing  one  at  about  half  of  the  breadth  of  the  brim 
from  the  crown,  as  shown  at  n  /  and,  in  forming  the  hoops 
and  applying  them  to  the  hat  brim,  I  take  care  to  make  them 
sufficiently  large,  and  to  so  apply  them,  as  to  strain  or  stretch 
the  brim  by  distension.  My  invention  may  be  used  by  form- 
ing the  hoop  of  straight  untwisted  concavo-convex  wire; 
also,  by  using  flat  wire  for  the  hoop,  and  twisting  it  as  above 
Vol,  XX.— 8 


34  SOUTHERN  DISTRICT  OF  NEW  YORK, 

The  Mallory  MannfioctiiriDg  Company  v.  Marks. 

deBoribed.  The  hat  poseesses  the  advantage  resulting  from 
the  light  weight  of  a  concavo-convex  hoop,  as  well  as  the 
stylish  droop  resulting  from  the  twist  of  the  hoop ;  and  be- 
sides, the  rounded  exterior  of  such  a  hoop  tends  to  prevent 
the  material  bearing  npon  it  from  wearing  away,  as  it  has  no 
sharp  comer  to  cut  the  cloth."  The  claim  is  as  follows: 
**The  combination  of  the  brim  of  a  hat  with  a  drooping 
hoop,  so  that  the  brim  is  cansed  to  droop  at  the  front  and  the 
rear,  and  to  rise  at  the  sides,  substantially  as  set  forth." 

It  is  proper  to  determine,  in  the  first  place,  the  constmo- 
tion  of  the  patent.  It  does  not  claim  broadly  a  hat-brim 
which  droops  at  the  front  and  rear  and  rises  at  the  sides.  It 
claims  the  combination  of  the  brim  of  a  hat  with  a  droop- 
ing hoop,  substantially  as  set  forth,  which  combination  pro- 
duces the  effect  specified.  The  specification  states  what  is 
meant  by  '^  a  drooping  hoop "  in  the  claim.  It  means  '^  a 
drooping  spring  hoop,"  that  is  "a  spring  hoop  bent  or 
twisted  in  such  manner  as  to  impart  a  droop  to  the  front  and 
rear  of  the  brim  and  an  elevation  to  the  sides  thereof."  A 
droop  at  the  front  and  rear  of  the  brim,  and  an  elevation  at 
the  sides  thereof,  was  not  new  nor  claimed  as  new.  The 
means  of  producing  such  droop  and  elevation  were  claimed. 
The  hoop  must  be  a  spring  hoop.  It  must  be  a  hoop  having 
a  spring  action.  It  must  both  strain  and  shape  the  brim.  The 
specification  calls  the  hoop  a  spring,  and  says  that  it  is  the 
form  of  the  spring,  when  it  is  in  place  in  the  brim,  that 
causes  the  brim  to  droop  at  the  front  and  rear  and  rise  at  the 
sides.  The  hoop  is  required  to  be  so  large,  that  is,  so  large 
circumferentially,  and  so  applied,  as  to  strain  or  stretch  the 
brim  by  distension,  as  well  as  to  shape  it.  The  specification 
also  shows  that  when  it  says  that  the  hoop  is  ''bent  or 
twisted,"  it  uses  the  word  ''bent"  as  synonymous  with  the 
word  "  twisted."  The  hoop  is  so  bent  by  twisting  its  material. 
The  text  says  that  the  material  is  bent  by  twisting  it  in  the 
manner  described,  and  that  it  is  twisted  until  the  required 
bend  is  obtained.  The  remark,  in  the  specification,  that  the 
"  invention  may  be  used  by  forming  the  hoop  of  straight  un- 


OCTOBER,  1881.  35 


The  Mallor  J  MaDufactaring  Company  v.  Marks. 


twisted  Goncavo-conyex  wire  "  ranst  be  rejected  as  not  affect- 
ing the  proper  constmctioD  of  the  claim,  and  the  hoop  of  the 
cLdm  must  be  a  spring  hoop  twisted  substantially  in  the  man- 
ner described  in  the  patent.  This  construction  is  necessary 
to  sustain  the  claim,  in  view  of  the  state  of  the  art,  as  shown. 
In  addition,  the  brim  of  the  hat  must  be  made  from  a  flex- 
ible fabric. 

The  answer  denies  infringement.  The  defendants,  while 
admitting  that  their  hat,  Marks,  No.  1,  shows  a  spring  hoop 
with  a  droop  at  the  front  and  rear  and  an  elevation  at  the 
sides,  combined  with  a  brim  of  flexible  material,  contend  that 
it  is  not  shown  that  the  droop  was  imparted  to  the  wire  of 
the  hoop  by  twisting  it  in  the  manner  described  in  the  patent. 
This  is  not  so.  The  plaintiff's  expert,  Mr.  Renwick,  says  that 
the  second  device  entering  into  the  combination  of  the  claim 
of  the  patent  is  '^  a  hoop  made  of  a  resilient  material,  such  as 
steel  wire,  and  bent  or  twisted  so  as  to  droop  at  the  parts 
which  correspond  with  the  front  and  rear  of  the  brim  of  the 
hat,  and  to  rise  at  the  parts  which  correspond  with  the  sides 
of  the  brim."  He  then  says  that  the  hoop  in  Marks,  No.  1, 
^*  is  a  drooping  spring  hoop,  apparently  identical,  in  its  con- 
struction and  in  its  characteristics,  with  the  drooping  spring 
hoop  which  constitutes  the  second  device  of  the  said  plaint- 
iff's patent."  This  is  prima  facie  sufficient.  There  is  no 
evidence  in  contradiction  of  it  On  the  contrary,  the  cross- 
examination  of  said  expert  seems  to  proceed  on  the  vie^f  that 
the  wire  in  Marks,  No.  1,  is  twisted.  If  this  were  not  so,  it 
was  easy  for  the  defendants  to  have  shown  it. 

lliere  was  sufficient  invention  to  support  the  patent.  The 
existence  of  straight  untwisted  wires  before  in  brims  made 
of  a  flexible  fabric  does  not  anticipate  the  patent.  It  re- 
quired experiment  and  invention  to  pass  from  them  to  the 
arrangement  of  the  patent,  although  it  was  known  before 
that  the  giving  a  permanent  twisting  to  a  resilient  wire 
would  permanently  alter  its  longitudinal  set.  The  Adams  and 
Slicer  patent  of  December  24th,  1861,  covered  the  giving 
such  an  excess  in  the  length  of  a  reed,  vrire,  or  other  non- 


36  socTHEKT  DiarmcT  of  sew  tork. 

1U10I7  Jloiifrctariiv  Goavaay  «.  MartaL 


extensible  flexible  artide,  over  thmt  of  the  outer  edge  of  the 
brim  of  a  hat  so  formed  of  an  extensible  material,  that  when 
said  xeed  or  wire  shonM  be  inserted  and  forced  into  a  case  on 
said  ooter  edge,  it  woold  give  not  only  firmness  to  the  brim  but 
also  a  rising  cnrvatiire  ther^o,  of  any  desirable  confignration. 
This  was  an  attempt  towards  the  resolt  aimed  at  in  the 
plaintiff's  patent  Bnt  the  means  were  different  The  means 
of  the  plaintiff's  patent  were  not  obTioos.  They  were  moch 
superior  to  those  of  the  Adams  and  Slioer  patent,  as  is  shown 
by  the  great  success  which  the  Mallory  brim  at  once  met 
with.  With  all  the  knowledge  which  skiUed  men  had  as  to 
the  twisting  and  set  of  resilient  wire,  they  groped  abont, 
trying  aU  methods  but  the  one  which  was  the  needed  one  to 
secure  the  desirable  result  Yet,  in  this  case,  as  in  all  other 
cases  like  it,  it  is  said  that  the  means  were  so  obvioas  as  not 
to  amount  to  invention. 

The  English  patent  to  John  Avery,  No.  1,822,  of  1856, 
only  speaks  of  using  a  steel  or  other  metal  spring  to  give 
form  and  flexibility  to  a  bonnet  or  bonnet  foundation.  There 
is  no  su^estion  of  twisting  the  wire. 

The  English  provisional  specification  of  John  Taylor  and 
others,  of  Mareh  23d,  1860,  No.  751,  speaks  only  of  giving  a 
final  shape,  set  or  finish  to  a  hat  brim  by  a  frame  made  to  the 
required  shape,  either  of  metal,  wood,  composition,  or  any 
suitable  metal  or  material.  It  has  nothing  to  do  with  the 
Mallory  invention. 

The  French  patent  to  Langenhagen  and  Hepp,  of  October 
4th,  1862,  No.  56,002,  speaks  only  of  giving  strength  and 
stability  to  the  edge  of  a  braided  hat,  by  folding  the  edge 
and  sewing  into  the  fold  a  rush,  a  brass  wire  or  a  sprig  of 
whalebone.     This  is  of  no  importance. 

The  patent  to  William  H.  Mallory,  of  September  8th, 
1863,  No.  39,822,  shows  only  flat  steel  hoops  or  springs  in- 
serted at  right  angles  to  the  brim  of  the  hat,  in  hems  or  tucks 
formed  in  the  brim. 

The  other  patents  put  in  evidence  by  the  defendants  were 


OCTOBER,   1881.  87 


The  Mallory  Manufactaring  Company  v.  Marka 


granted  after  the  invention  of  Mallory  was  made.  That  was 
in  July  or  Angost,  1863. 

The  defendants  daim  to  have  shown  that  the  Mallory  in- 
vention was  made  by  Carl  Fischer,  in  1865,  in  New  York, 
wlien  he  was  working  for  Small  and  Stieglitz,  and  that  Fischer 
then  twisted  wires  in  the  manner  described  in  the  plaintiff's 
patent,  and  placed  them  in  the  brims  of  hats  to  the  number 
of  seventy  or  seventy-five  dozen,  and  that  snch  hats  were 
sold.  On  all  the  evidence  in  regard  to  this  invention  by 
Fischer,  it  mnst  be  held  that  it  has  not  been  satisfactorily 
established. 

The  defendants  also  set  np  a  prior  invention  by  Philip 
Lasky,  in  1861  or  1862,  and  one  by  John  H.  A.  Kissen,  at  the 
end  of  1861  or  the  beginning  of  1862.  On  the  whole  evi- 
dence these  are  not  made  out. 

The  foregoing  views  apply  also  to  the  snits  against  Isidor 
and  Hein,  David  Fox  and  others,  John  S.  Bancroft  and 
others,  and  Patrick  Corbet.  They  also  apply,  except  as  to  in- 
fringement, to  the  suit  against  Marcus  Marks  and  Abraham 
Marks,  in  which  iDfringement  is  admitted  by  the  answer. 

In  the  case  against  Marcus  Marks  and  Abraham  Marks,  the 
answer  sets  up  an  agreement  made  by  the  plaintiff  with  the 
defendants,  on  or  about  April  1st,  1878,  whereby  the  plaintiff 
licensed  the  defendants  to  make  and  sell  hats  under  the 
patent.    The  evidence  fails  to  establish  such  agreement. 

There  must  be  decrees  for  the  plaintiff  in  all  the  suits, 
with  costs. 

Eugene  TreadweU^  for  the  plaintiff. 

Bette^  AUerbury  <&  Betts^  for  the  defendants. 


88  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Adams  v.  Howard. 


J.  MoGbeoob  Adams  and  Bobbbt  £.  Dibtz 

vs. 
John  W.  Howard  and  David  R.  Mobse.    In  Equttt. 

A  defendant  in  a  suit  in  equity  for  the  infringement  of  letters  patent  cannot  de- 
mur to  tbe  whole  bill  and  also  answer  the  whole  bill,  especially  where  the 
answer  sets  up  everything  that  is  in  the  demurrer,  and  he  will,  on  motion,  be 
compelled  to  elect  between  his  demurrer  and  his  answer. 

(Before  Blatohtoed,  J.,  Southern  District  of  New  York,  October  24th,  1881.) 

Blatohfobd,  J.  The  defendant  Morse  has  demurred  to 
the  whole  bill  and  has  put  in  an  answer  to  the  whole  bill.  The 
suit  is  one  for  the  infringement  of  a  patent.  The  grounds  of 
demurrer  set  forth  in  the  demurrer  are  all  of  them  also  set 
forth  in  the  answer.  They  relate  solely  to  the  title  set  forth 
in  the  bill  to  the  patent,  and  to  the  allegations  in  the  bill 
respecting  infringement.  A  replication  to  the  answer  has 
been  filed.  The  plaintiffs  now  move  for  an  order  either  that 
the  defendant  elect  between  his  demurrer  and  his  answer,  or 
that  the  demurrer  be  set  down  for  argument.  By  Bule  33 
in  Equity  a  defendant  may  demur  to  the  whole  bill,  and  may 
demur  to  a  part  of  the  bill  and  answer  as  to  the  residue.  But 
there  is  nothing  that  allows  him  to  demur  to  the  whole  bill 
and  at  the  same  time  to  answer  the  whole  bill,  especially 
where  the  answer  sets  up  every  thing  that  is  in  the  demurrer. 
Putting  in  such  an  answer  is  a  waiver  of  such  a  demurrer. 
The  defendant  must  elect  between  his  demurrer  and  his 
answer ;  and,  to  guard  against  misunderstanding,  if  he  should 
elect  his  demurrer,  and  it  should  be  overruled  on  argument, 
he  would  be  held,  probably,  to  have  waived  what,  ordinarily 
and  otherwise,  would  be,  under  Eule  34,  his  right. to  answer. 

The  defendant  moves  to  dismiss  the  bill.  The  ground  of 
the  motion  is  not  specified  in  the  notice  of  motion.    From 


OCTOBER,  1881.  89 


The  Traders'  Bank  of  Chicago  v.  Tallmadge. 


the  affidavit  made  in  support  of  the  motion,  one  ground 
would  seem  to  be  that  the  plaintiffs  did  not,  under  Kule  38, 
set  down  the  demurrer  for  argument  within  the  time  re- 
quired, and  that  they  did  not  take  any  testimony  within  three 
months  after  the  replication  was  filed.  I  think  the  plaintifEs 
sufficiently  excuse  the  omissions.  The  demurrer  ought  to  be 
disposed  of  before  any  testimony  is  taken.  The  motion  is 
denied. 


^.  £.  Betta^  for  the  plaintiffs. 
J.  A.  Whitney^  iot  the  defendants. 


Ths  Tbadebs'  Baihs:  of  Chicago 
JosiAH  Tallmadgb  ksd  Edward  Cabteb. 

This  case  was  remanded  to  the  State  Conrt  because  the  petition  for  removal 

was  not  filed  before  or  at  the  term  at  which  it  could  be  first  tried. 
This  Court  is  to  pass  on  such  question  even  though  the  8tate  Conrt  passed  on  it. 

(Before  Blatohfokd,  J.,  Southern  District  of  New  York,  October  26th,  1881.) 

Blatohfobd,  J.  This  is  a  suit  at  law  commenced  in  a 
Conrt  of  the  State  and  removed  into  this  Court  by  the 
plaintiff.  Each  defendant  answered  separately  in  the  State 
Court.  The  case  was  duly  noticed  for  trial  by  the  plaintiff 
and  by  each  of  the  defendants  for  a  term  of  the  State  Court 
to  be  held  on  the  first  Monday  of  May,  1881,  which  was  May 
2d.  All  the  notices  of  trial  were  served  on  or  before  April 
18th.  On  April  18th,  the  State  Court,  on  the  application  of 
one  of  the  defendants,  made  an  order  that  the  plaintiff  file 


40  SOUTHERN  DISTRICT  OF  NEW  YORK, 

The  Traders'  Bank  of  Chicago  v.  Tallmadge. 

Becnrity  for  costs  within  10  days  from  the  service  of  the  order, 
or  show  cause  to  the  contrary  on  April  29th,  and  that  in  the 
meantime,  or,  if  secarity  should  be  filed,  then  until  such  secur- 
ity  should  justify,  if  excepted  to,  the  plaintiff's  proceedings 
should  be  stayed.  This  stay  continued  till  May  14th,  when 
it  ended.  On  the  7th  of  May  each  defendant  gave  notice  of 
a  motion  for  May  16th  for  a  commission  to  take  testimony  in 
Missouri,  and  for  a  stay  of  the  trial  of  the  action  till  the 
return  of  the  commission.  On  the  1st  of  September,  the 
plaintiff  filed  a  petition  for  the  removal  of  the  suit  into  this 
Court.  The  order  of  removal  was  made  by  the  State  Court 
on  that  day.  It  states  that  the  petition  was  filed  ^^  before  the 
term  at  which  said  cause  could  be  first  tried  and  before  the 
trial  thereof,  to  wit,  on  the  1st  day  of  September,  1881."  The 
petition  bears  date  August  24th,  and  was  verified  August 
25th.  It  states  that  issue  was  joined  on  or  about  April  15th, 
1881,  ^'  that  the  said  suit  is  not  yet  ready  for  trial,  and  that 
the  same  could  not  be  tried  at  the  last  term  of  the  Court, 
nor  can  it  be  tried  at  the  present  term,  and  no  trial  has  been 
had."  The  order  of  removal  was  made  without  any  prior 
notice  to  the  attorneys  for  the  defendants.  There  was  a  trial 
term  of  the  State  Court  which  commenced  the  first  Monday 
of  May.  The  plaintiff,  on  the  15th  of  April,  placed  the  cause 
on  the  calendar  of  the  Court  for  that  term.  There  is  nothing 
to  show  how  long  that  term  continued.  The  motions  for 
commissions  were  adjourned  from  time  to  time  till  Septem- 
ber 5th.  A  trial  term  of  the  State  Court  was  held  in  the 
month  of  June,  1881.  It  does  not  appear  that  the  case  was 
noticed  for  trial  for  that  term  by  either  party.  That  term 
commenced  June  6th  and  ended  prior  to  September  1st. 
The  defendants  move  to  remand  the  suit. 

It  is  plain  that  the  suit  was  not  removed  in  time.  There 
was  nothing  to  interfere  with  its  being  triable,  legally,  at  the 
June  term.  The  notice  of  motion  for  a  commission  and  a 
stay  was  not  a  stay.  The  plaintiff  was  bound  to  remove  the 
suit  at  least  before  the  end  of  the  June  term,  if  he  was  to  re- 


OCTOBER,  1881.  41 


The  Traders'  Bank  of  Chicago  v.  Tallmadge. 


move  it  at  all.  {Farre^  v.  Keder^  17  Blatchf.  C.  C.  H.y 
522.) 

The  plaintiff  contends  that  the  question  of  time  cannot  be 
eonfiidered  in  this  Court,  because  the  State  Court  passed  upon 
it  in  its  order.  It  is  true  that  the  State  Court  adjudicated 
upon  it,  but  it  did  so  ex^arte  and  without  a  hearing  of  the 
defendants.  The  Act  of  March  8d,  1875,  (18  U.  S.  Stat,  at 
Large^  470,  §  5,)  provides  that  if,  in  any  suit  removed  to  this 
Oonrt,  it  shall  appear  to  its  satisfaction,  at  any  time  after  the 
suit  is  removed,  that  it  "  does  not  really  and  substantially 
involve  a  dispute  or  controversy  properly  within  the  jurisdic- 
tion" of  this  Court,  this  Court  shall  proceed  no  further 
therein  but  shall  remand  it  to  the  Court  from  which  it  was 
removed.  This  provision  has  recently  been  construed  by  the 
Supreme  Court,  in  Babbitt  v.  Clark,  (18  OttOj  606,  610.)  It 
is  there  said  by  the  Court  that  a  decision  by  the  Circuit 
Court  that  the  necessary  steps  were  not  taken  to  remove  the 
ease  is  a  decision  of  the  question  of  its  jurisdiction ;  and  that 
the  question  of  whether  a  removal  was  made  in  time  is  a 
question  of  jurisdiction.  In  that  view  it  is  for  this  Court  to 
determine  its  jurisdiction,  however  that  question  may  pre- 
viously have  been  decided  by  the  State  Court. 

The  motion  to  remand  is  granted. 


Strang  dk  Gadwaladei\  for  the  plaintiff. 
James  0.  Foley ^  for  the  defendants. 


43  SOUTHERN  DISTRICT  OF  5EW  YORK, 

TIm  ATcrin  Gfacoikal  Punt  Co.  «.  TIm  KatkMial  Mixed  Paint  Ca 


Thb  Aybull  Chxmicai.  Paiht  Gompaht 

VS. 

Thx  National  MixsD  Paint  CoxpAHT  AHD  OTHERS.  IhEquitt. 

Be-lmied  letten  patenft  No.  7,081.  granted  April  4lfa,  1876,  to  Damon  R.  At- 
eriD,  for  an  improTemcDt  in  paints,  tiie  original  patent,  No.  66,773,  having 
been  granted  July  16tli,  1867,  for  an  improred  paint  compound,  are  inraUd. 

Hie  original  was  for  a  paint  composed  of  certain  qieoified  ingredients,  two  of 
which  were  emnlsating  agents^  notliing  being  said  aboot  any  Teasel  to  contain 
the  painl  The  re4aBne  is  for  a  paint  of  the  same  ingredients,  other  than  the 
specified  emnlsating  agents,  with  any  wnnlwating  agents,  and  packed  in  tight 
Teasels. 

The  reisBoe  was  granted  on  proof  that,  before  the  original  a^lication,  the  in- 
Tentor  had  pat  np  his  paints  in  tight  Tessek:  Meld,  that  §  4,916  of  the  Re- 
Tised  Statutes  did  not  aothorize  this  to  be  done. 

(Before  WHsnca,  J.,  Southern  District  of  New  7ork,  October  29th»  1881.) 

Wheeleb,  J.  This  suit  is  founded  npon  re-issued  letters 
patent  No.  7,031,  dated  April  4:tli,  1876,  granted  to  Damon 
B.  Averill,  assignor,  for  an  improyement  in  paints.  The 
daim  is  for  ^^A  mixed  liquid  painty  composed  of  oxide  of  zinc 
or  other  pigments,  oil,  turpentine  or  benzine,  water,  and  one 
or  more  emnlsating  agents,  put  up  in  tight  vessels  or  cans." 
The  original  patent  was  No.  66,773,  dated  July  16th,  1867, 
for  an  improved  paint  compound,  particularly  described  bj 
ingredients  and  quantities  like  that  in  the  re-issue,  but  with 
lime-water  and  silicate  of  soda,  which  were  emnlsating  agents, 
but  not  stated  to  be  such,  specified  as  parts  of  the  combination 
and  compound.  The  claim  was  for  '^A  paint  composed  of 
the  iugredients  herein  named,  and  prepared  and  compounded 
substantially  in  the  manner  specified."  There  was  no  allusion 
in  the  patent  to  anything  to  contain  the  paint.  Liquid  mixed 
paints  produced  by  the  use  of  emnlsating  agents  were  known 
and  used  before  Averill's  discovery,  and  paints  had  been  con- 
tained in  cans  and  other  tight  vessels  before  that  time,  but  no 


OCrrOBBB,  1881.  43 


Hie  ATerill  Chemioal  Paint  Go.  v.  The  National  Mixed  Paint  Go. 

paint  had  been  made  by  the  use  of  his  precise  combinations 
and  ingredients  before.  On  the  application  for  a  re-issue  the 
patentee  made  proof  that,  prior  to  his  application  for  the  orig- 
inal patent,  he  had  put  ap  his  paint  in  cans  and  other  tight 
packages  and  noticed  its  advantages  for  being  pnt  np  in  that 
way,  which  appears  to  have  been  satisfactory  to  the  Commis- 
sioner that  this  mode  of  packing  was  a  part  of  the  original  in- 
vention, and,  upon  that  proof,  the  re-issae  appears  to  have 
been  granted.  The  defendants  do  not  ase  the  combination  or 
compound  described  in  the  original  patent.  The  principal 
defences  are,  that  the  re-issue  is  not  supported  by  the  original 
and  is,  therefore,  void ;  that  the  patentee  was  not  the  original 
and  first  inventor  of  the  invention  described  in  the  re-issue ; 
and  that,  if  the  re-issue  can  be  upheld  at  all,  the  defendants 
do  not  infringe  any  part  for  which  it  is  valid.  The  original 
patent  was  valid  enough,  apparently,  for  the  particular  kind 
of  paint  described  in  it.  The  re-issue,  if  it  is  for  that  kind  of 
paint  only,  packed  in  tight  vessels,  may  be  valid,  for  it  would 
merely  narrow  the  scope  of  the  claim  upon  the  same  inveU" 
tion,  from  that  kind  of  paint  everywhere  to  that  kind  of  paint 
only  when  so  packed.  But  the  re-issue  is  not  limited  to  that 
particular  kind  of  paint ;  it  extends  to  all  forms  made  from  the 
same  ingredients,  other  than  the  emulsating  agents  specified,  by 
the  use  of  any  emulsating  agents.  This  expands  the  original  pat- 
ent, not  only  beyond  the  scope  of  the  claim  upon  the  invention 
described,  but  beyond  the  scope  of  that  invention.  The  whole 
invention  there  described  was  of  a  particular  kind  of  liquid 
mixed  paint ;  the  invention  described  in  the  re-issue  is  of  all 
kindsof  liquid  mixed  paint  packed  in  tight  vessels.  The  inven- 
tion of  packing  in  vessels  is  not  at  all  described  or  even  alluded 
to  in  the  original  patent.  So,  the  question  is  presented,  whether 
the  Commissioner  of  Patents  is  authorized  to  grant  a  re-issue 
of  a  patent  for  an  invention  in  addition  to  that  shown  in  the 
original,  upon  proof,  in  the  absence  of  any  drawing  or  model 
showing  the  invention  in  the  original,  that  the  addition  was 
really  a  part  of  the  same  invention  sought  to  be  patented  in 
the  original.     This  question  does  not  now  seem  to  be  open. 


44  SOUTHERN  DISTRICT  OP  NEW  YORK, 

The  Ayerill  Chemical  Paint  Co.  v.  The  National  Mixed  Paint  Co. 

In  Powder  Oompany  v.  Powder  WorJcSy  (98  U.  S.y  126,)  the 
patents  were  for  compositionB  or  articles  of  mannfactnre  like 
that  here.  That  part  of  Section  53  of  the  Act  of  Jnly  Sth, 
1870,  (16  U.  S.  Stat,  at  Large^  206,)  which  is  now  section 
4,916  of  the  Reyised  Statutes,  authorizing  amendment  of  pat- 
ents upon  proof,  in  the  absence  of  any  drawing  or  model,  was 
relied  upon  and  came  under  consideration.  It  was  there  held, 
that  this  clause  did  not  authorize  the  Commissioner  to  grant 
a  re-issue  for  a  different  invention,  or  to  determine  that  one 
invention  was  the  same  as  another  or  different  one,  or  that 
two  inventions  essentially  distinct  constituted  but  one.  The 
question  was  left  open  as  to  whether  that  clause  related  to  all 
patents  or  only  to  patents  for  machines,  but  no  i'oom  was  left 
for  adding  to  the  invention  by  proof.  Under  that  decision 
this  re-issue  cannot  stand.  If  it  could  stand,  the  only  inven- 
tion covered  by  it,  of  which  Averill  was  the  first  discoverer, 
would  be  packing  this  paint  in  tight  vessels.  Such  vessels  im- 
part no  quality  to  the  paint.  They  are  no  more  useful  to  this 
kind  of  paint  than  to  others,  in  proportion  to  the  amount 
used.  The  paint,  on  account  of  its  own  valuable  qualities,  has 
found  its  way  into  extensive  use  through  the  ordinary  vehi- 
cles for  paints,  and  AveriU  has,  doabtless,  contributed  largely 
to  its  success,  but  it  has  been  done  by  business  enterprise 
rather  than  patentable  invention.  What  he  is  really  the  first 
inventor  of  the  defendants  have  not  taken. 

Let  there  be  a  decree  dismissing  the  bill  of  complaint,  with 
costs. 

John  B.  Bennett  and  Oeorge  Harding^  for  the  plaintiff. 

Edmund  WetmorSy  for  the  defendants. 


OCTOBER,  1881.  45 


Van  Deiuen  «.  Nellia 


JusTUB  Van  Dbubbn  and  othebs 
Jacob  H.  Nblus.    In  £qt7itt. 

The  first  eUdm  of  re-iasaed  letters  patent  No.  8,962,  granted  to  John  E.  Hether- 
isgton,  Norember  11th,  1879,  for  an  "  improYement  in  artificial  honey-oomb 
fonndationB,"  the  original  patent  haying  been  granted  to  him  Oetober  lot, 
1878,  namely,  "As  a  new  article  of  maoafacture,  an  artificial  honey-comb 
fomidation  produced  firom  a  cake  of  wax  haying  on  each  side  a  series  of  hex- 
agonal depressions  with  flat  bottoms,  said  bottoms  forming  a  continaoiis 
aheet,  from  each  side  of  which  rise  the  ribs  which  form  the  borders  of  the 
hexagonal  depressions,  sabstantiaUy  as  shown  and  described,''  claims  nothing 
which  was  patentable,  in  yiew  of  what  existed  before. 

(Before  Blatohiord,  J.,  Northern  District  of  New  York,  October  29tb,  1881.) 

Blatchfobd,  J.  This  suit  is  founded  on  re-issued  letters 
patent  Ko.  8,962,  granted  to  John  E.  Hetherington,  Novem- 
ber 11th,  1879,  for  an  "improvement  in  artificial  honey-comb 
foundations,"  the  original  patent  having  been  granted  to  him, 
as  inventor,  October  1st,  1878.  The  following  is  the  specifica- 
tion of  the  re-issue,  including  what  is  inside  and  what  is  outside 
of  brackets,  omitting  what  is  in  italics :  "  Figure  1  [represents] 
is  a  front  view.  Fig.  2 'is  a  transverse  [vertical]  section  in 
the  plane  x^  x^  Fig.  1,  on  an  enlarged  scale.  Similar  letters  in- 
dicate corresponding  parts.  This  invention  consists  in  [a 
honey-comb  foundation  produced  from  a  cake  of  wax  having 
on  each  side  a  series  of  hexagonal  depressions  with  flat  bot- 
toms, said  bottoms  forming  a  continuous  sheet,  from  each  side 
of  which  rise  the  ribs  which  form  the  borders  of  the  hexago- 
nal depressions,  whereby,  the  cost  of  such  honey-comb  founda- 
tions is  reduced  and  the  durability  of  the  article  is  increased ; 
also,]  in  the  combination  with  an  artificial  honey-comb  foun- 
dation [produced  from  wax]  of  wires  [or  other  strands]  which 
pass  through  the  foundation  and  prevent  it  from  sagging  and 


46  NORTHERN  DISTRJCT  OF  NEW  YORK, 

Van  Densen  v.  Nellia. 

Btretching,  and  also  etrengthen  it,  thereby  making  it  less  liable 
to  breakage  while  being  handled ;  [further,]  The  invention 
also  consists  in  the  combination  with  a  honey-comb  foundation 
[produced  from  wax]  of  one  or  more  supporting  wires  or 
strands,  extending  across  the  [foundation]  cake  at  suitable 
points  to  prevent  sagging  when  in  the  hive  and  breakage  in 
handling.  As  is  well  known,  artificial  honey-comb  founda- 
tions [are  produced  from]  consist  of  sheets  or  cakes  of  wax, 
which  are  pressed  between  rollers  or  dies,  whereby  the  sheets 
receive  a  series  of  hexagonal  depressions,  presenting  the  ap- 
pearance of  a  honey-comb  in  section.  These  cakes  or  founda- 
tions are  placed  in  the  bee-hives,  and  by  this  arrangement  the 
bees  are  caused  to  build  their  cells  regularly.  [In  all  the  arti- 
ficial honey>comb  foundations  of  this  class  known  to  me,  the 
bottoms  of  the  hexagonal  depressions  have  been  made  in  the 
form  of  an  inverted  pyramid,  and,  in  order  to  produce  this  shape, 
a  considerable  depth  of  wax  is  required,  and,  furthermore,  the 
operation  of  forming  such  foundations  requires  great  care. 
My  foundation  is  made  of  a  cake,  A,  of  wax  with  a  series  of 
hexagonal  depressions,  a,  the  bottoms,  &,  of  which  are  flat,  and^ 
in  fact,  form  a  continuous  flat  sheet,  (see  Fig.  2,)  from  each 
side  of  which  rise  the  ribs,  (?,  c^  forming  the  sides  of  the  hex- 
agons. In  order  to  give  additional  strength  to  the  flat  bottom 
of  each  depression,  the  ribs,  <?,  on  one  side  of  the  cake.  A,  are 
so  placed  that  they  unite  in  the  centre  of  one  of  the  depres- 
sions on  the  opposite  side,  and  vice  versa^  as  indicated  by 
dotted  lines  in  Fig.  1  of  the  drawings.  By  this  arrangement 
I  am  enabled  to  produce  artificial  honey-comb  foundations 
with  great  economy  of  wax,  since  the  weight  of  one  of  my 
flat-bottomed  foundations  is  less  than  one-half  of  that  of  one 
of  the  old  foundations  with  pyramidal  bottoms  covering  the 
same ;  and,  furthermore,  my  flat-bottomed  foundations  can  be 
formed  much  easier  than  those  with  pyramidal  bottoms,  so 
that  in  their  production  a  considerable  saving  of  time  and 
labor  is  effected  in  addition  to  the  saving  in  stock.  In  order 
to  increase  the  strength  of  the  artificial  honey-comb  foundar 
tion  produced  from  wax,  I  apply  to  the  same  a  series  of  wires, 


OCTOBER,  1881.  47 


Van  Deasen  v,  NelliB. 


dy  dJ]  It  has  been  fownd^  however^  that  these  foundations 
stretch  or  sag  when  they  are  put  into  the  hive^  by  which  drfect 
their  utility  is  greatly  impaired.  Another  objection  is  that 
these  cakes  are  very  frail^  and  conseqvsnUy  they  a/re  easily 
broken  or  cradced  while  being  handled.  Jieferring  to  the 
drawings,  the  letter  a  designates  the  depression  in  ths  cake  of 
waxj  and  b  are  the  elevated  rims  or  ridges  separating  these  de- 
pressions from  each  other.  The  letters,  d,  d,  indicate  a  series 
qf  wires  which  pafis  through  the  foandation.  These  wires 
may  be  inserted  into  the  sheets  of  wax  before  thej  are  pressed 
between  the  roller?  or  [the]  dies ;  or  they  may  be  inserted 
during  the  process  of  mannf  actnre,  in  any  suitable  manner,  the 
characteristic  feature  or  principle  of  [my]  the  invention  being 
that  the  wires  or  strands  of  inelastic  material  are  embedded  in 
the  cake  or  [foundation,]  comby  or  traverse  the  same  on 
either  or  both  sides.  These  wires  pass  through  or  are  inserted 
into  the  foundation  at  a  distance  of  about  seven-eighths  of  an 
inch  apart.  Of  course,  I  do  not  limit  myself  to  that  precise 
distance ;  but  I  have  found  that  the  best  result  is  obtained  if 
the  wires  are  thus  placed.  By  this  arrangement  I  strengthen 
the  honey-comb  foundation,  making  it  less  liable  to  injury 
while  being  handled,  and  also  prevent  it  from  sagging  or 
stretching,  [to  which  foundations  of  this  class  are  subjected, 
partictdarly  in  hot  weather.]  Of  course,  I  do  not  limit  my- 
self to  wires  to  produce  this  result,  since  threads  or  strands  of 
any  inelastic  or  non-expanding  material  may  be  used  as  well. 
[I  do  not  claim  as  my  invention  an  artificial  honey-comb 
foundation  produced  from  a  cake  of  wax  having  on  each  side 
hexagonal  depressions  with  pyramidal  bottoms,  such  being  old 
and  well-known.]  What  1  claim  as  new  and  desire  to  secure 
by  letters  patent  is — 1.  [As  a  new  article  of  manufacture,  an 
artificial  honey-comb  foundation  produced  from  a  cake  of  wax 
having  on  each  side  a  series  of  hexagonal  depressions  with  flat 
bottoms,  said  bottoms  forming  a  continuous  sheet,  from  each 
side  of  which  rise  the  ribs  which  form  the  borders  of  the  hex- 
agonal depressions,  substantially  as  shown  and  described.  2.] 
The  combination,  with  a  honey-comb  foundation  [produced 


4:8  NORTHERN  DISTRICT  OF  NEW  YORK, 


Van  Deusen  v.  Nellu. 


from  wax,]  Of  wires  [or  strands,]  embedded  in  and  passing 
through  the  foundation,  to  increase  its  strength  and  durabil- 
ity, substantially  as  set  forth.  [3]  2.  The  combination,  with 
a  honey-comb  foundation  [made  of  wax,]  of  one  or  more  sup- 
porting wires  extending  across  the  [foundation]  caJcej  where- 
by the  sagging  of  the  [foundation]  cake  is  obviated  when  in 
the  hive  and  the  liability  to  breakage  in  handling  is  pre- 
vented/' Beading  in  the  foregoing  what  is  outside  of  brack- 
ets, including  what  is  in  italics,  and  omitting  what  is  inside  of 
brackets,  we  have  the  text  of  the  specification  of  the  original 
patent. 

The  specification  of  the  original  patent  does  not  claim  a 
honey-comb  foundation  having  hexagonal  depressions  with  flat 
bottoms,  either  made  of  wax  wholly  or  in  part,  or  made  of 
some  other  substance.  The  embedded  wires  are  made  a  nec- 
essary feature  of  the  first  claim  of  the  original,  and  the  sup- 
porting wires  are  made  a  necessary  feature  of  the  second  claim 
of  the  original.  The  first  claim  of  the  original  is  converted 
into  the  second  claim  of  the  re-issue,  and  the  second  claim  of 
the  original  is  converted  into  the  third  claim  of  the  re-issue, 
with  the  limitation,  in  the  second  claim  of  the  re-issue,  that 
the  foundation  is  to  be  produced  from  wax,  and  with  the  lim- 
itation, in  the  third  claim  of  the  re-issue,  that  the  foundation 
is  to  be  made  of  wax.  The  text  of  the  original  specification 
does  not  make  any  allusion  to  the  fact  that  the  hexagonal  de- 
pressions have  flat  bottoms.  But  flgure  2  of  the  drawings  in 
the  original  shows  that  the  bottoms  are  flat,  and  the  specimen 
flled  in  the  Patent  Office  with  the  application  for  the  original 
patent  showed  it.  So,  also,  the  text  of  the  original  specifica- 
tion did  not  allude  to  the  fact  that  the  ribs  on  one  side  of  the 
cake  are  so  placed  that  they  unite  in  the  centre  of  one  of  the 
depressions  on  the  opposite  side,  and  vice  versa.  But  that  was 
shown  in  figure  2  of  the  drawings  of  the  original  and  in  the 
said  specimen. 

It  is  shown  that  the  defendant  has  infringed  the  first 
claim  of  the  re-issue.  The  main  defence  is  that  there  is  noth- 
ing in  such  first  claim,  in  view  of  what  existed  before,  which 


OCTTOBEB,  1881.  49 


Van  DenseD  v,  Nellis. 


*wa8  patentable.  It  is  admitted  that  an  artificial  honey-comb 
ionndation,  produced  from  a  cake  of  wax  having  on  each  Bide 
41  series  of  hexagonal  depressions  with  pyramidal  bottoms,  the 
<sake  forming  a  continuons  sheet,  from  each  side  of  which 
rose  the  ribs  forming  the  borders  of  the  hexagonal  depres- 
^ons,  existed  before.  But  it  is  claimed  that  the  foundation 
with  flat  bottom  depressions  requires  less  wax,  and  is  thus 
•cheaper,  besides  requiring  the  consumer  to  eat  a  less  quantity 
of  artificial  comb.  It  is  said  that  where  the  depressions  hare 
pyramidal  bottoms,  or  lozenge-shaped  bottoms,  the  base  and 
the  side  walls  are  so  thick  that  the  beeS|  in  building  up  the 
'Cells,  do  not  thin  the  wax  sufficiently,  whereas  where  the  bot- 
toms are  flat  the  base  is  thin  and  the  side  walls  are  thin  and 
<ean  be  high  and  sharp,  so  that  the  bees  utilize  the  excess  of 
wax  in  constructing  the  comb,  and  thus  time  and  labor  and 
material  are  saved. 

The  patent  granted  to  Samuel  Wagner,  No.  32,258,  May 
7th,  1861,  for  "  artificial  honey-comb,"  is  introduced  by  the 
•defendant.     The  specification  says :  ''  My  new  manufacture 
consists  in  a  substitute  for  the  central  division  or  foundation 
of  the  comb  built  by  bees,  either  with  or  without  the  whole 
or  any  portion  of  the  walls  forming  the  hexiigonal  cells  pro- 
jecting from  the  division,  which  substitute  is  artificially  and 
suitably  formed  upon  both  sides  or  faces  and  of  any  suitable 
material  which  is  susceptible  of  receiving  the  desired  and  nec- 
essary configuration.    *    *    *    Figs.  1  and  2  of  the  drawings 
represent  my  new  manufacture  in  plan,  the  black  lines  show- 
ing tlie  salient  angles  on  the  obverse  side,  from  which  spring 
its  walls,  which  form  hexagonal  cells.    The  red  lines  show 
similar  angles  on  the  reverse  side,  and  the  red  and  black  lines 
illnstrate  the  relative  disposition  of  the  cells."    Figs.  1  and  2 
show  that  the  ribs  on  one  side  are  so  placed  that  they  unite 
in  the  centre  of  one  of  the  depressions  on  the  opposite  side, 
and  vice  versa.     "  Fig.  1  represents  comb  foundation  suitable 
for  the  foundation  of  drone  comb,  while  Fig.  2  represents  that 
suitable  for  worker  comb."    The  hexagons  in  the  comb  in 
Fig.  1  are  of  larger  size  than  those  in  the  comb  in  Fig.  2.    The 
Vol. 


60  NORTHERN  DISTRICT  OP  NEW  YORK, 

Van  Densen  v,  Nellia. 


specification  then  goes  on  to  describe  apparatus  for  making' 
the  foundation :  '^  Figs.  3a  and  3b  are  elevations  of  one  of  the 
hexagonal  solids,  which,  when  used  as  herein  specified,  will 
produce  the  comb  foundation  shown  in  Fig.  1  and  in  section 
on  an  enlarged  scale  in  Fig.  4.  A  mold  is  prepared,  similarly 
to  those  used  in  the  production  of  printers'  type,  in  whic^ 
solids  are  cast  which  will  accurately  fill  the  interior  of  a  new- 
ly  formed  cell  of  a  natural  comb  of  the  kind  of  which  it  is  de- 
sired to  form  the  central  division.  Numbers  of  type  or  solids^ 
being  produced  they  are  locked  together  in  a  form  like  print- 
ers' type,  and  fac-similes  of  the  assemblage  are  produced  by 
either  of  the  well-known  processes  of  stereotyping  or  electro- 
typing.  Two  of  these  stereotypes  or  electrotypes  are  made 
to  act,  by  means  of  a  press  or  otherwise,  upon  the  opposite 
sides  or  faces  of  an  interposed  sheet  of  suitable  material,  which 
action  gives  the  sheet  the  configuration  desired.  It  is  best  to- 
obtain  in  this  division  or  foundation  sheet  a  uniform  degree 
of  tenuity,  which  can  only  be  done  by  closely  imitating  the 
natural  waxen  comb,  which  is  effected  by  so  placing  the  die& 
that  the  apices  formed  at  the  juncture  of  the  three  rhomboidal 
facets  of  each  hexagon  shall  be  exactly  opposite  the  juncture 
of  the  sides  of  three  facets  of  adjacent  hexagons  forming  the 
reverse  side.  The  angles  of  the  rhomboidal  facets  should  be 
as  nearly  as  possible  109^  and  71®,  and  the  dies  should  not  be 
permitted  to  approach  each  other  so  nearly  as  to  reduce  the 
thickness  of  the  interposed  material  much  less  than  the  one- 
hundredth  part  of  an  inch.  Should  it  be  deemed  desirable  to 
form  the  hexagonal  walls  of  the  ceUs,  or  any  portion  of  them^ 
the  type  or  solids  should  be  formed  as  seen  in  Figs.  3a,  8b, 
with  a  band  or  projection  around  them  of  about  the  one 
two-hundredth  part  of  an  inch  in  thickness,  and  some  taper 
may  be  given  to  the  type  from  the  band  toward  the  rhom- 
boidal facets.  *  *  *  Amongst  the  many  materials  which 
may  be  used  may  be  mentioned  compounds  of  which  wax 
forms  a  part,  rubber  and  gutta  percha,  and  compounds  of 
which  they  or  either  of  them  are  components,  papier  mach^, 
&c.,  &c.    Thin  sheets  of  metal,  reduced  to  the  tenuity  of 


OCTOBEB,  1881.  51 


Yao  Deosen  v.  NelliB. 


foils,  may  be  used,  though  T  prefer  good  noD-condnctors  of 
heat,  improved  by  being  rendered  waterproof,  if  not  bo.  Very 
many  materials  and  compounds  not  mentioned  may  be  used,  but 
it  is  unnecessary  herein  to  attempt  to  specify  them,  as  my  inven- 
tion is  not  confined  to  and  is  independent  of  any  particular  mate- 
riaL  It  may  be  mentioned  that  with  some  materials  heat,  as 
well  as  pressure,  may  be  used  in  shaping  the  artificial  comb 
foundation.  Many  variations  may  be  made  in  my  invention, 
which,  though  not  improvements  upon  it,  embody  its  essence. 
For  example,  the  relative  arrangement  of  the  impressing  dies 
may  be  varied,  so  as  to  produce  a  different  arrangement  of 
cells  on  the  obverse  and  reverse  sides  of  the  comb  foundation 
from  that  shown  in  the  drawings,  in  which  case  the  thickness 
of  the  division  plate  would  ha^e  to  be  increased,  provided  the 
pyramidal  depressions  made  by  the  three  rhomboidal  facets 
terminating  each  hexagon  were  retained.  Such  depressions 
might  be  dispensed  with  and  the  foundation  sheet  might  be 
impressed  so  as  to  leave  slightly  projecting  ridges  of  the  ma- 
terial from  which  the  sides  of  the  cells  can  be  extended  on 
each  side  of  the  sheet.  But  I  do  not  recommend  any  depar- 
ture from  the  closest  imitation  possible  of  the  natural  central 
sheet  of  the  comb  as  formed  by  bees.  To  render  the  artificial 
oomb  foundation  acceptable  to  the  bees,  it  is  not  requisite  that 
any  portion  of  the  sides  of  the  cells  should  be  formed  thereon, 
as  the  salient  angles  on  either  side,  formed  at  the  edges  of  the 
described  depressions,  are  a  sufficient  guide  to  the  bees,  and 
from  them  they  will  commence  the  waxen  sides  of  their  hex- 
agonal cells.  By  the  employment  of  my  invention  in  bee 
hives,  perfect  regularity  of  combs  and  their  kind  is  insured, 
and  the  production  of  drones  prevented  to  any  extent  desired. 
I  propose  to  take  honey  from  store  combs  built  upon  my  arti- 
ficial foundations,  by  removing  the  full  combs  from  the  hives, 
and  by  slicing  off  the  natural  waxen  superstructure.  The  arti- 
ficial central  portion  of  the  comb  being  then  replaced  in  the 
hive,  will  be  again  built  upon  by  the  bees,  saving  to  them  al- 
ways the  elaboration  of  wax  and  the  time  required  for  the 
construction  of  this  part  of  the  comb,  which  consumes  more 


62  NORTHERN  DISTRICTT  OF  NEW  YORK, 

Van  Deosen  v.  NeOu. 

time  in  its  natural  constraction  than  any  other  parts  of  the 
comb  of  equal  weight,  because  fewer  laborers  can  be  engaged 
npon  it  at  one  time  than  on  other  portions."  The  claim  of 
Wagner's  patent  is  this :  ^'As  a  new  article  of  manufacture, 
artificial  substitute  for  the  central  division  of  comb  built  by 
bees,  which  presents  to  them,  on  both  sides  thereof,  guides  for 
the  construction  or  continuation  of  the  sides  of  the  comb  cells, 
whether  the  same  is  constructed  with  or  without  the  whole  or 
any  portion  of  the  sides  of  the  cells." 

It  is  objected  to  the  Wagner  patent  that  it  does  not  speak 
distinctly  of  a  foundation  made  whoDy  of  wax.  It  does  not 
exclude  such  a  fouudation,  and  such  a  foundation  is  within 
the  general  terms  of  the  materials  spoken  of  in  it.  It  names 
compounds  of  which  wax  forms  a  part.  Foundations  wholly 
of  wax,  and  otherwise  answering  Wagner's  description^  ex- 
isted before  Hetherington's  invention.  Wagner  distinctly 
says  that  the  pyramidal  depressions  may  be  dispensed  with, 
and  the  foundation  sheet,  which  is,  necessarily,  a  flat  sheet, 
be  impressed  so  as  to  leave  slightly  projecting  ridges  of  the 
material.  It  is  true  that  he  says  he  does  not  recommend  any 
departure  from  the  closest  imitation  possible  of  the  natural 
central  sheet  of  the  comb  as  formed  by  bees.  Some  persons 
may  prefer  pyramidal  bottoms.  Some  may  prefer  flat  bot- 
toms. Wagner  shows  the  use  of  either,  as  a  mechanical  struc- 
ture. Hetherington,  for  certain  reasons,  preferred  flat  bot- 
toms. Others  think  that  such  reasons  for  using  flat  bottoms 
are  overborne  by  other  reasons  for  using  pyramidal  bot- 
toms. With  the  Wagner  patent  and  with  foundation  made 
wholly  of  wax  with  pyramidal  depressions,  there  was  no  in- 
vention in  the  first  claim  of  the  plaintiffs  re-issue.  It  was  a 
mere  selection  of  a  form  of  foundation  which  Wagner  de- 
scribed, besid€B  showing  how  to  make  it.  The  use  of  wax 
alone  in  such  form,  after  wax  alone  had  been  used  for  the 
foundation  with  pyramidal  depressions,  did  not  make  the 
foundation  of  that  form  made  wholly  of  wax  a  new  manu- 
facture, or  a  new  invention,  in  the  sense  of  the  patent  law. 

This  is  an  action  at  law,  which  has  been  tried  before  the 


OCTOBER,   1881.  53 


Sterens  v.  Richardson. 


Court  without  a  jury.  On  the  facts,  I  find  generally  for  the 
defendant  and  direct  that  judgment  be  entered  for  him,  with 
costs. 


John  Van  Santvoord,  for  the  plaintiffs. 
Horace  E.  Smithy  for  the  defendant. 


Mabibtta  B.  Stevens 

Oeobob  F.  Biohabdson,  Charles  G.  Stevens,  John  L. 
Melcher,  and  Mask  M.  Stanfibld.    In  Equift. 

8.,  a  citixen  of  New  York,  brought  a  smt  in  the  State  Court  against  R.  and  C, 
citlxens  of  Massachusetts,  and  J.  and  M.,  citizens  of  New  York.  R.  and  C.  re- 
moTed  tlie  suit  into  this  Court.  There  being  a  separate  oontroyersy  between 
8.,  on  one  side,  and  R.  and  C,  on  the  other,  to  which  J.  and  M.  were  not 
necessary  parties,  and  which  could  be  fully  determined  as  between  the  parties 
to  it  without  the  presence  of  J.  or  M. :  Hdd,  that  the  suit  was  removable  un* 
der  §  2  of  the  Act  of  March  8d,  1875,  (18  U,  8.  Siai.  at  Large,  470.) 

Ho  prior  notice  to  the  adverse  party  of  the  presentation  of  a  petition  for  removal 
is  necessary. 

A  bond  on  removal  is  not  required  by  §  8  of  said  Act  to  be  executed  by  the  pe- 
titioner for  removal,  if  it  be  executed  by  sufficient  surety. 

A  party  does  not,  by  voluntarily  appearing  in  a  suit  in  a  State  Court,  waive 
bis  right  of  removal 

A  motion  that  the  plaintiff  replead  in  this  Court  denied. 

(Before  Blatohford,  J.,  Southern  District  of  New  York,  October  Slst,  1881.) 

Bi^TCHFORD,  J.  This  suit  was  brought  in  the  Sapreme 
Goart  of  New  York  and  has  been  removed  into  this  Court 
by  the  defendants  Richardson  and  Stevens,  as  citizens  of 
Massachusetts,  the  other  defendants  being  citizens  of   New 


64  SOUTHERN  DISTRICT  OF  NEW  YORK, 


Sterens  v.  Ricfaardson* 


York.  The  plaintiff  is  a  citizen  of  New  York,  and  moves  to 
remand  the  canse.  The  removal,  if  made,  must  be  made 
nnder  §  2  of  the  Act  of  March  3d,  1876,  (18  TJ.  S.  Stat  ai 
Zarg€j  470.)  The  only  pleading  pnt  in  in  the  State  Court, 
before  the  removal,  was  the  complaint.  The  controversies 
set  ont  therein  are  not  varied  by  the  petition  for  removal  or 
by  any  thing  now  before  this  Court.  Stevens  and  Richardson 
are  trustees  for  the  plaintiff  under  the  will  of  Faran  Stevens. 
Stevens  and  Melcher  and  the  plaintiff  are  executors  of  said 
will.  Stanfield  is  lessee  of  an  apartment  house  in  New  York, 
which  is  part  of  the  trust  property,  under  a  lease  thereof 
made  to  him  by  Stevens  and  Eichardson,  as  such  trustees,  by 
the  terms  of  which  the  rent  he  is  to  pay  is  to  be  paid  by  him 
to  them.  The  complaint  alleges  that  a  valid  agreement  exists 
between  thd  plaintiff  and  said  trustees,  that  said  rent  should 
and  shall  be  paid  directly  by  Stanfield  to  the  plaintiff,  at  New 
York,  that  they  insist  on  having  Stanfield  pay  it  to  them,  and 
that  he  refuses  to  pay  it  to  her.  In  addition  to  alleging  a 
violation  of  said  agreement  by  said  trustees,  the  complaint 
alleges  that  the  trustees  have  wrongfully  retained  from  the 
rent  paid  to  them  moneys  claimed  to  have  been  paid  by  them 
for  expenses  of  suits  brought  by  them  against  Stanfield  to 
compel  him  to  pay  the  rent  to  them,  and  moneys  for  commis- 
sions, and  have  refused  to  pay  over  to  the  plaintiff  the 
whole  amount  of  moneys  so  received  from  Stanfield,  and 
have  wholly  failed  in  the  performance  of  their  duties  as  trus- 
tees, and  reside  in  Massachusetts,  and  have  no  property  in  the 
State  of  New  York,  and  are  of  but  little  pecuniary  responsi- 
bility, and  the  plaintiff  has  suffered  great  loss,  and  been  put 
to  great  expense,  in  her  efforts  to  protect  herself  against  the 
wrongful  acts  of  said  trustees.  There  is  other  property  besides 
said  apartment  house  held  by  said  trustees  under  said  trust 
Founded  on  the  above  allegations  the  complaint  prays  (l)that 
the  trustees  be  enjoined  from  collecting  from  Stuifield  the 
rent  of  the  apartment  house,  and  from  receiving  and  dispos- 
ing of  any  moneys  as  trustees  of  the  plaintiff,  and  from  doing 
any  act  as  such  trustees;  (2)  that  they  be  required  to  ae- 


ocrroBER,  1881.  55 


Stevens  v.  Bichardson. 


<«0TiDt  as  BQcb  trustees ;  (3)  that  they  be  removed  as  sach 
trastees ;  (4)  that  some  other  and  competent  person  or  per- 
«)D8  be  appointed  trustee  or  trustees  in  their  place ;  (5)  that 
they  pay  to  the  plaintiff  such  damages  as  she  has  sustained 
by  their  wrongful  acts.  Certainly,  in  the  matters  which  are 
the  subject  of  those  five  prayers  there  are  controversies  which 
•are  wholly  between  the  plaintiff  on  the  one  side  and  the 
trosteefi  on  the  other  side.  Stanfield  is  not  an  indispensable 
party  to  any  of  said  controversies,  although  he  may  be  a  pro- 
per party  to  the  suit,  by  reason  of  his  being  lessee  of  the 
4kpartment  house.  Melcher,  as  executor,  has  no  concern  with 
nftny  of  said  controversies. 

But  there  are  other  matters  in  the  complaint.  The  trust 
for  the  benefit  of  the  plaintiff  is  one  for  her  life,  for  the  sum 
•of  $1,000,000.  It  has  not  been  completed  by  the  executors. 
It  was  for  the  executors,  under  the  will,  to  put  into  the  handa 
of  the  trustees  property  to  that  amount.  That  has  been 
done  only  in  part.  The  complaint  prays  that  the  executors 
may  complete  the  trust  fund  by  conveying  real  estate  to  the 
trustees,  and  that  they  pay  to  the  plaintiff  what  may  be  due 
to  her  for  interest  on  the  trust  fund,  and  that  they  pay  to  her 
-or  for  her  benefit,  out  of  the  estate,  other  moneys  which  she 
claims,  and  that  they  do  not  charge  against  her  certain  moneys 
which  the  estate  has  paid,  and  that  they  be  restrained  from 
paying  to  certain  trustees  of  certain  residuary  trusts  created 
by  said  wfll  any  moneys  now  in,  or  which  may  hereafter  come 
into,  their  hands,  as  such  executors.  It  also  prays  that  the 
rent  of  said  apartment  house  under  the  lease  to  Stanfield  be 
paid  to  the  plaintiff.  There  is  nothing  in  any  of  these  allega- 
tions which  makes  Melcher,  as  executor,  a  necessary  party  to 
4uiy  of  the  said  controversies  between  the  plaintiff  and  her 
trustees.  Those  controversies,  as  embodied  in  the  said  five 
prayers  in  respect  to  the  trustees,  can  be  fully  determined  as 
between  the  parties  actually  interested  in  them  without  the 
presence  of  either  Melcher  or  Stanfield  as  a  party.  If  the  suit 
had  sought  no  relief  but  what  is  embodied  in  said  five  prayers, 
neither  Melcher  nor  Stanfield  would  have  been  a  necessary 


66  SOUTHERN  DISTRICT  OF  NEW  YORK, 

SteveDB  V.  RiehardBon. 

or  an  indispensable  party  to  those  issues.  The  controversies^ 
involved  in  those  five  prayers  do  not  cease  to  be  controversies 
wholly  between  the  plaintiff  on  the  one  side  and  the  trusteea- 
on  the  other  becanse  the  plaintiff  has  chosen  to  embody  in 
her  complaint  distinct  controversies  between  herself  and  the 
executors,  or  a  controversy  between  herself  and  Stanfield* 
Whether  there  is  or  is  not  such  a  connection  between  the 
various  transactions  set  out  in  the  complaint  as  to  make  all  of 
the  defendants  proper  parties  to  the  suit  and  to  every  con« 
troversy  embraced  in  it,  at  least  in  such  a  sense  as  to  protect 
the  complaint  against  a  demurrer  for  multifariousness  or  mis- 
joinder, is  a  question  not  affecting  the  matter  of  removaL 
If  there  was  any  fault  in  pleading,  in  that  respect,  it  was  the 
plaintiff's.  On  the  question  of  removal  she  must  abide  by^ 
the  case  made  by  her  complaint.  The  question  of  multifari- 
ousness or  misjoinder  comes  up  after  the  question  of  removal 
is  settled.  The  latter  question  must  be  settled  now  upon  the 
complaint.  If  hereafter,  under  any  different  phase  of  the 
case,  it  should  appear  that  the  cause  does  not  really  or  sub- 
stantially involve  a  dispute  or  controversy  within  the  juris- 
diction of  this  Court,  it  will  be  the  duty  of  the  Court,  imder 
§  6  of  the  Act  of  1875,  to  remand  it  to  the  State  Court.  The- 
case  is  one  directly  within  the  decision  in  Barney  v.  Latham^ 
(13  Otto^  205,)  and  it  must  be  held  that  the  case  was  one  for 
a  removal  of  the  whole  of  the  suit  by  the  trustees,  eveit* 
though  Melcher  or  Stanfield  or  both  of  them  may  have  been 
proper  parties  to  the  suit.  There  is  nothing  in  the  case  of 
Blake  v.  McEim^  (13  Otto^  336,)  which  in  any  manner  quali- 
fies anything  decided  in  Barney  v.  Latham.  In  that  case 
there  was  a  single  controversy  between  the  plaintiff,  a  citizen' 
of  Massachusetts,  and  three  executors,  two  of  whom  were 
citizens  of  Massachusetts  and  one  of  whom  was  a  citizen  of 
New  York,  the  suit  being  one  to  recover  the  amount  of  a. 
bond  executed  by  the  testator  of  the  defendants.  The  Court 
held  that  the  case  was  not  removable  under  either  of  the  twa 
clauses  of  §  2  of  the  Act  of  1875,  on  the  ground  that  all  of 
the  executors  were  indispensable  parties  to  the  suit,  and  that 


OCTOBER,   1881.  6T 


SteTens  v.  Richardaon. 


two  of  them  were  citizenB  of  the  same  State  with  the  plaintiff^ 
and  that  the  suit  embraced  only  one  indivisible  controversy. 

The  State  Court  made  an  order  accepting  the  petition  for 
removal  and  the  bond  filed,  and  ordering  the  removal  of 
the  snit  into  this  Coart.  This  order  was  made  without  prior 
notice  to  the  attorney  for  the  plaintiff,  and  the  plaintiff  con- 
tends that  the  proceedings  for  removal  were,  therefore,  irreg* 
nlar.  The  Act  of  1875  does  not  require  any  notice.  The 
filing  of  the  petition  and  bond  makes  it  the  duty  of  the  State 
Court  to  accept  them  and  to  proceed  no  further  in  the  suit.  In 
the  present  case  the  petition  and  the  bond  were  filed  on  the 
2Tth  of  July,  1881,  and  the  Court  on  that  day  accepted  them, 
without  requiring  any  previous  notice.  As  was  said  by  thia 
Court  in  WeM  v.  Wold,  (17  Blatchf.  0.  C.  R.,  346 :)  ''  If,  as. 
matter  of  discretion,  a  State  Court  can  or  does  require  notice 
in  any  case  of  removal,  such  notice  was  dispensed  with  in  thi» 
case  by  the  State  Court ;  and,  the  matter  being  one  of  prac- 
tice, it  is  for  the  State  Court  to  regulate  its  own  practice,  and 
this  Court  will  not  review  such  a  question."  It  has  alwaya 
been  held,  in  this  Conrt,  that  oo  notice  was  necessary.  {Fish 
V.  Union  Pacific  R.  R.  Co.,  8  BULchf.  C.  C.  R.,  243, 247.) 

The  bond  for  removal  is  not  executed  by  Stevens  and 
Kichardson,  nor  does  it  name  them  as  obligors.  It  is  executed 
by  two  other  persons,  who  are  named  in  it  as  obligors.  It 
recites  that  Stevens  and  Kichardson  have  petitioned  for  the- 
removal  of  the  suit,  and  is  conditioned  that  they  shall  do* 
what  the  statute  requires.  The  obligors  are  not  otherwise* 
called  in  the  bond  sureties  for  Stevens  and  Kichardson.  The 
plaintiff  contends,  that,  as  §  3  of  the  Act  of  1875  says  that  the 
petitioner  for  removal  is  to  "  make  and  file "  the  bond,  the 
bond  is  void  and  the  removal  invalid.  This  objection  is  not 
tenable.  The  statute  is  satisfied,  as  to  the  bond,  if  a  bond 
with  suflScient  surety  is  filed.  The  petitioner  for  removal 
makes  the  bond,  in  the  sense  of  the  statute,  if  he  offers  it  to> 
the  Court  as  the  bond  required.  By  §  639  of  the  Eevised 
Statutes  he  was  required  to  offer  good  and  sufficient  surety. 
The  Act  of  1875  means  no  more.     Aside  from  this,  a  new 


-68  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Steyens  «.  RiohardBoii. 

bond,  mnning  in  the  name  of  and  executed  by  Steyens  an& 
BicbardBon  aa  principals,  and  the  former  sureties  as  sureties, 
was  filed  in  the  State  Court  on  the  28th  of  September,  1881, 
that  Court  having  made  an  order,  on  the  22d  of  September, 
that  it  be  filed  there  nunc  pro  tunCy  as  of  July  27th.  A  copy 
was  filed  in  this  Court  October  1st.  The  first  day  of  tiie 
next  term  of  this  Court  after  July  27th  was  October  17th. 
The  notice  of  motion  to  remand  was  not  served  till  October 
8d.  Nothing  to  afEect  the  status  of  the  suit  was  done  in  the 
State  Court  from  July  27th  to  October  1st.  The  objection 
SB  to  the  bond  is  overruled. 

It  is  also  objected,  that  Stevens  and  Bichardson  voluntarily 
appeared  in  the  State  Court  without  the  summons  being 
served  upon  either  of  them ;  that,  therefore,  they  were  not 
in  Court  and  no  action  was  pending  as  to  them ;  that  their 
Toluntary  appearance  was  a  submission  to  the  jurisdiction  of 
the  Court,  and  a  waiver  of  their  right  of  removal;  and  that 
they  also  waived  such  right  by  obtaining  in  the  State  Court 
an  extension  of  their  time  to  answer,  and  by  giving  notice  of 
A  motion  in  said  Court  to  dissolve  a  temporary  injunction 
which  that  Court  had  granted  restraining  them  from  collect- 
ing any  rent  from  Stanfield,  and  from  doing  other  acts  as 
trustees.  There  is  no  force  in  these  objections.  A  plaintiff, 
who  brings  his  suit  voluntarily,  has  a  right  to  remove  the 
cause  under  the  same  statute.  The  trustees  were  called  on  to 
appear  and  defend  their  trust,  by  the  bringing  of  the  suit  and 
the  issuing  of  the  injunction,  and  they  lost  no  right  of  re- 
moval by  saving  to  the  plaintiff  the  trouble,  expense  and 
delay  of  bringing  them  in  compulsorily  or  by  doing  what 
they  did.  « 

The  defendants  move  that  the  plaintiff  replead  in  this 
Oourt.  It  is  not  so  entirely  clear  that  there  are  causes  of  ac- 
tion at  law  set  forth  in  the  complaint  which  are  so  separate 
and  distinct  from  the  equitable  causes  of  action  set  forth  as 
to  make  it  proper  now,  on  this  motion,  to  compel  the  plaintiff 
to  divide  the  suit  into  a  suit  or  suits  at  law  and  a  suit  or  suits 
in  equity.    If  this  is  to  be  done  at  all  it  should  be  done  only 


NOVEMBSR,  1881.  59 


The  Cortes  Compmy  v.  Thamihaiifler.     Chittenden  v.  The  Suae. 

38  the  result  of  pleading.  The  sione  remark  applies  to  anj 
questions  of  multif arionsness  or  misjoinder  of  causes  of  action 
or  of  parties. 

I  see  no  sufficient  ground  in  the  papers  for  requiring  the 
plaintiff  at  present  to  give  additional  injunction  security  to 
the  trustees ;  and,  although  the  notice  of  motion  includes  the 
giving  further  security  to  the  executors,  there  is  nothing  in 
the  moving  affidavits  on  that  subject. 

John  Berry ^  for  the  plaintiff. 

Jd^n  JS.  Burrilly  for  the  defendants. 


The  Cobtbs  Company 

vs. 

SioMUND  M.  Thannhausesk  and  Augxtst  Thaknhauseb.    In 

EQUiry. 

LUOIITS   E.    CnnTENDEN  AND  OTHEBS 

V8. 

The  Same.    In  Equity. 

Th%  plfcintiffii  in  theee  Boits,  haying  been  sned  at  law  by  the  defendants  in  these 
ndts,  and  haying  equitable  defences  to  the  suits  at  law,  which  ^coold  not  be 
•▼ailed  of  therein,  bnt  which,  if  established,  would  warrant  a  perpetual  stay 
of  the  suits  at  law,  moved,  in  these  suits,  for  an  order  that  the  service  of  sub- 
poenas to  appear  and  answer  therein  upon  the  attorueys  for  the  plainti£b  in 
the  suits  at  law  be  deemed  sufficient  and  proper  service  upon  said  plaintiffs 
as  defendants  in  these  suits,  they  being  either  foreigners  or  citisens  of  Cali- 
fornia, and  residents  of  California:  Ildd,  that  the  motion  must  be  granted, 
and  that  a  copy  of  the  subpoena  ought  also  to  be  served  on  the  parties  per- 
sonally, if  they  could  be  found,  wherever  they  might  be. 

floeh  a  suit  is  not  an  original  suit  and  the  subpcBna  in  it  is  not  original  procaas, 


60  SOUTHERN  DISTRICT  OF  NEW  YORK, 

The  Cortes  Company  v.  Tbannhaiiser.    Chittenden  v.  The  Same. 

within  g  1  of  the  Act  of  March  3d,  1876,  (18  U,  &  8tai,  at  Lar^e,  470,)  and 
Rule  18,  in  Equity,  does  not  apply  to  each  a  sobpoena. 

(Before  Blatohvou>,  J.,  Sonthern  District  of  New  York,  November  2d,  1881.) 

Blatohford,  J.  The  defendants  in  these  snits  have 
brought  two  snits  at  law  in  this  Conrt  against  the  Cortea 
Company  and  one  snit  at  law  in  this  Conrt  against  Lncins  E. 
Chittenden  and  others,  to  recover  sums  of  money  alleged  to 
be  due.  The  above  are  suits  in  equity.  The  first  of  them 
is  brought  to  restrain  the  prosecution  of  all  three  of  the  suits 
at  law,  and  the  second  to  restrain  the  prosecution  of  the  suit 
at  law  against  Chittenden  and  others.  Properly  interpreted 
there  is  no  prayer  in  either  of  the  two  bills  for  any  relief  ex- 
cept injunctions  to  stay  the  prosecution  of  the  suits  at  law. 
The  ground  stated  for  such  relief  is,  that  there  is,  on  the  facts 
alleged  in  the  bills,  and  which  are  alleged  in  the  same  terms 
in  both  bills,  an  equitable  defence  to  all  of  the  suits  at  law^ 
which,  if  established  as  alleged,  would  warrant  a  perpetual 
stay  of  the  suits,  but  that  such  defence  cannot  be  availed 
of  in  the  suits  at  law,  by  reason  of  the  distinction  main- 
tained, in  the  jurisprudence  of  the  Qnited  States,  between  pro- 
ceedings at  law  and  proceedings  in  equity,  as  shown  by  the 
ruling  in  Montejo  v.  Owen^  (14  Blatchf,  C.  C.  -S.,  324,)  and 
in  the  cases  there  cited. 

The  plaintiffs,  on  filing  the  bills  and  on  notice  to  the  attor- 
neys for  the  plaintiffs  in  the  suits  at  law,  now  move  for  an 
order  that  service  of  the  subpoenas  to  appear  and  answer  in 
these  suits,  or  such  other  notices  as  the  Court  shall  adjudge 
proper,  with  a  view  to  enable  the  Court  to  proceed  with  these 
suits,  upon  said  attorneys,  be  deemed  suflScient  and  proper 
service  upon  the  said  plaintiffs  as  defendants  in  these  suits, 
they  being  either  foreigners  or  citizens  of  California,  and 
residents  of  San  Francisco,  in  California. 

It  is  a  well  settled  principle,  that  a  bill  filed  on  the  equity 
side  of  a  Court  to  restrain  or  regulate  a  judgment  or  a  suit  at 
law  in  the  same  Court,  is  not  an  original  suit,  but  ancillary 
and  dependent,  and  supplementary  merely  to  the  original 


NOVEMBEB,   1881.  61 


The  Cortes  Compaiiy  «.  TbaDnhanser.    Chittenden  v.  The  Same. 

^ J.     ,       m  -"■ I  

suit;  and  that  ench  a  bill  can  be  maintained  in  a  Federal 
Court  without  reference  to  the  citizenship  or  the  reeidence  of 
the  parties.  {Logon  v.  Patrick^  6  Oranch^  288 ;  Dunn  v. 
Clarke^  8  Peters^  1 ;  Clarke  v.  Mathewson^  12  Id.^  164 ; 
Freetnan  ▼•  Howe^  24  Howa/rd^  460,  460.)  On  this  principle, 
the  eqnity  suit  not  being  an  original  suit,  the  process  or  no- 
tice issued  on  its  being  brought,  to  advise  the  plaintiff  in  the 
suit  at  law  that  it  has  been  brought,  is  not  regarded  as 
original  process,  or  as  an  original  proceeding.  Such  plaintiff 
is  in  Court,  voluntarily,  for  the  purpose  of  prosecuting  his 
suit  at  law  and  obtaining  a  judgment,  and  thereby  makes 
himself  subject  to  any  control  the  Court  may  find  it  equitable 
to  exercise  over  his  suit  at  law  and  over  the  matters  involved 
in  it,  to  the  extent  of  perpetually  staying  its  prosecution,  if, 
on  equitable  considerations,  that  ought  to  be  done.  All  that 
is  requisite  is,  that  the  plaintiff  in  the  suit  at  law  should  have 
notice  from  the  Court  of  the  institution  of  the  proceeding  in 
equity.  If  he  will  not  defend  against  it,  after  receiving  such 
notice,  he  will  have  to  submit  to  the  stay  of  his  suit  at  law, 
if,  after  an  ex-paris  hearing,  the  Court  shall  deem  such  stay 
proper.  He  is  in  Court  for  the  purposes  of  the  action  of  the 
Court  on  the  subject-matter  of  the  proceeding  in  equity,  by 
having  become  the  plaintiff  in  the  suit  at  law.  He  is  repre- 
sented, for  the  purpose  of  giving  notice  to  him  of  the  insti- 
tution of  such  proceedings,  by  his  chosen  attorney  in  the  suit 
at  law.  This  is  a  necessity.  His  residence  may  be  unknown, 
or,  if  known,  remote.  His  attorney  is  presumed  to  know 
how  and  where  to  communicate  with  him.  Therefore,  it  is 
proper  to  give  such  notice  to  the  attorney,  and  it  is  the  duty 
of  the  attorney  to  bring  such  notice  to  the  attention  of  his 
dient.  If  he  does  not,  or,  until  he  does,  it  is  proper  that  the 
client  should  submit  to  any  stay  the  Court  may  direct  of 
further  proceedings  in  the  suit  at  law,  reasonable  time  being 
given  for  the  communication  of  such  notice  to  the  client, 
that  he  may  discontinue  the  suit  at  law,  or  defend  the  suit  in 
eqnity,  or  put  the  matter  into  the  hands  of  other  counsel,  or 
have  a  fair  opportunity  to  take  such  other  course  as  shall  be 


62  SOUTHERN  DISTRICT  OF  KEW  YORK, 

The  Cortes  Company  v.  Thannfaaiiser.    Chittendesi «.  The  Same. 


deemed  advisable.  It  may  be  proper  to  cause  an  additional 
and  direct  notice  to  be  served  on  the  plaintiff  in  the  snit  at 
law  personally,  if  that  is  feasible. 

It  is  provided,  by  §  1  of  the  Act  of  March  8d,  1876,  (18 
U.  S.  Stat  at  Large^  ^70,)  that  no  civil  suit  shall  be  brought 
before  a  Circuit  Court  or  a  District  Court  "  against  any  per- 
son, by  any  original  process  or  proceeding,  in  any  other  Dis- 
trict than  that  whereof  he  is  an  inhabitant,  or  in  which  he 
shall  be  found  at  the  time  of  serving  such  process,  or  com- 
mencing such  proceeding,"  except  as  provided  in  §  8  of  the 
same  Act,  which  provides  for  bringing  in  absent  defendants 
in  suits  to  enforce  or  remove  liens  on  property  within  the 
District.  Substantially  the  same  provision  as  to  '^original 
process  "  was  contained  in  §  11  of  the  Act  of  September  24tb, 
1789,  (1  U.  S,  Stat  at  La/rge^  79,)  and  was  re-enacted  in  §  789 
of  the  Revised  Statutes.  A  subpoena  or  notice  issued  on  the 
filing  of  such  a  bill  as  those  in  the  present  suits  has  never 
been  regarded,  in  the  Courts  of  the  United  States,  as  an  origi- 
nal process  or  proceeding,  and  has  been  allowed  to  be  served 
on  the  attorney  for  the  plaintiff  in  the  suit  at  law,  and  even 
to  be  served  on  such  plaintiff  out  of  the  District.  {Logam,  v* 
Patrick^  6  Cram^h^  288 ;  Reed  v.  Consequay  4  Wash.  C.  C.  R,^ 
174 ;  Ward  v.  Sedbry^  4  Id.^  426 ;  Dunlap  v.  Stetaouj  4  Masoriy 
349,  360 ;  Dunn  v.  Clarke^  8  Peters^  1,  3 ;  Bates  v.  Delaman^ 
6  Paige^  299 ;  Doe  v.  Johnston^  2  McLeam.^  323,  825 ;  Sawyer 
V.  Gill,  3  Woodb.  <&  J/.,  97 ;  Segee  v.  T/iomaSj  3  Blatchf.  C. 
C.  R.y  11,  15;  Kamm  v.  Starh^  1  Sawyer,  &4t7y  660;  Zovh 
enstein  v.  OUdeweU^  6  Dillon^  325.) 

It  is  further  objected,  that  the  Supreme  Court,  by  Rule  13, 
in  Equity,  has  provided  that  "the  service  of  all  subpoenas 
shall  be  by  a  delivery  of  a  copy  thereof,  by  the  oflBcer  serving 
the  same,  to  the  defendant  personally,  or  by  leaving  a  copy 
thereof  at  the  dwelling-house  or  usual  place  of  abode  of  each 
defendant,  with  some  adult  person  who  is  a  member  or  resi- 
dent in  the  family."  The  practical  construction  of  this  Rule 
has  always  been  not  to  extend  it  to  subpoenas  on  bills  such  as 
those  in  the  present  cases.     The  practice  before  referred  to 


NOYEMBEB,  1861.  68 


P.  Lorillard  ^  Ck>.  «.  Dofaan,  Curoll  <fr  Co. 


has  existed  while  Eule  13  lias  been  in  force  and  has  never 
been  nndenstood  to  be  affected  by  that  Rale. 

An  order  for  Babetituted  aervice  on  the  attorneys  will  be 
made,  and,  in  addition,  it  will  be  ordered  that  a  copy  of  the 
subpoena  be  served  on  the  parties  personally,  if  they  can  be 
found,  wherever  they  may  be. 

L.  E,  Chittenden,  for  the  plaintiffs. 

S.  3.  Clarke  and  J.  W.  Zilienthal,  for  the  defendants. 


P.  LOBILLASD  &  Co. 

DoHAN,  Cabboll  &  Co.     Is  Equtty. 

Re-iBBoed  letters  patent  No.  7,862,  graDted,  October  24th,  1876,  to  Charles  Sied- 
ler,  for  an  improyement  in  ping  tobacco,  the  original  patent,  No.  168,604, 
haying  been  granted  to  him  January  12th,  1875,  are  yalid. 

The  inyention  coyered  by  the  re-issne,  defined. 

The  date  of  on  inyention  patented  in  Great  Britain  is  the  date  when  the  specifi- 
cation was  filed  in  the  Great  Seal  Patent  Office. 

The  qiieation  of  the  novelty  of  the  inyention,  considered. 

(Before  Whxilxb,  J.,  Sonthem  District  of  New  York,  November  2d,  1881.) 

Wheelsb,  J.  This  cause  depends  upon  re-issued  letters 
patent  No.  7,362,  dated  October  24th,  1876,  granted  to 
Charles  Siedler,  upon  the  surrender  of  original  letters  patent, 
No.  158,604,  dated  January  12th,  1875,  for  an  improvement 
in  plug  tobacco.  Their  validity  is  contested  upon  the  grounds 
of  want  of  patentable  invention,  want  of  novelty,  and  want  of 
support  of  the  re-issue  by  the  original.  They  have  been  be- 
fore the  United  States  (^cuit  Court  for  the  Eastern  District 


64  SOUTHERN  DISTEICr  OF  NEW  YORK, 


P.  LorillArd  A  Co.  v.  Dohan,  Cwroll  A  Co. 


of  Pennsylvania,  in  LoriUard  v.  McDoToell,  (11  Of.  Oaz.y  640,) 
where  it  was  held,  on  a  motion  for  a  preliminary  injanction, 
by  McKennan,  J.,  that  the  re-issue  was  supported  by  the 
original,  and  was  not  void  either  for  want  of  invention  or 
novelty ;  and  in  LoriUard  v,  Sidgeway^  (16  Off.  Oaz,^  1^»^1>) 
where  it  was  held,  on  final  hearing,  in  view  of  the  defences 
there  interposed,  by  the  same  Judge,  that  there  was  a  lack  of 
patentable  invention  and  nbvelty.  The  question  as  to  the  re- 
issae  was  the  same  there  that  it  is  here ;  the  decision  upon  it 
in  the  former  case  was  not  disturbed  by  the  change  of  opinion 
in  the  latter,  and  that  decision  is  a  sufficient  authority  for 
holding  the  same  way  here ;  and,  besides,  the  reasoning  upon 
which  that  conclusion  was  reached  is  fully  concurred  in.  The 
fiame  respect  would  be  paid  to  the  decision  in  the  later  case 
upon  the  other  questions,  if  it  had  been  made  upon  the  same 
evidence,  and  it  has  not  been  claimed  or  urged  in  argument 
but  what  that  case  should  be  followed  unless  this  case  is  sub- 
stantiaHy  different.  The  invention  is  of  a  mode  of  marking 
and  identifying  each  separate  plug  of  tobacco  as  being  of  a 
particular  quality,  origin  or  manufacture,  by  tin  labels,  or 
tags,  having  the  desii'ed  inscription  upon  them,  and  prongs 
extending  backwards  from  their  edges,  pressed  into  the  plugs, 
in  the  last  processes  of  manufacture,  with  their  faces  even 
with  the  surface  of  the  plugs,  where  they  would  be  held  by 
the  prongs  and  the  sarrouuding  tobacco.  Among  the  things 
in  evidence  in  that  case,  as  anticipations,  were  English  letters 
patent  No.  1,516,  dated  April  30th,  1874,  granted  to  Gibson, 
Kennedy,  and  Prior,  for  an  improvement  in  the  manufacture 
of  tobacco,  and  apparatus  employed  therein,  the  specifications 
of  which  were  filed  in  the  Great  Seal  Patent  Office  October 
27th,  1874,  which  was  before  Siedler  was  then  shown  to 
have  made  his  invention,  and  in  those  specifications  was  de- 
scribed, as  placed  in  each  plug  of  tobacco,  in  the  process  of 
finishing,  at  the  surface,  ^^  a  thin  metal  plate  bearing  the  man- 
ufacturer's name,  abode,  trade-mark  or  mark  of  quality." 
Now,  Siedler's  invention  is  shown  to  have  been  prior  to  the 
filing  of  that  specification.    This  removes  that  patent  from 


NOYEBCBEB,  1881.  65 


P.  LoriUard  A  Go.  v.  Dohan,  GarroU  A  Co. 


among  the  anticipatioiis  to  be  considered.    {De  Flarez  y. 
jSaynolds,  17  Blatchf.  G.  O.  B.,  436.)    This  point  is  not 
disputed  in  behalf  of  tiie  defendants.    The  use  of  these  plates 
or  discs  was  tEe  most  like  Siedler's  method  of  anything  shown 
in  that  case.     In  view  of  that  use  it  was  well  said,  that  it  was 
^  diflScnlt  to  see  how  the  mere  attachment  of  prongs  to  a  flat 
disc,  which  had  been  used  before,  would  involye  a  patentable 
exercise  of  inyentiveness."    That  use  being  removed,  the 
question  is  now  materially  changed  and  is  to  be  decided  upon 
the  case  as  now  presented.    {United  States  Stamping  Com- 
pany V.  Kinffy  17  JSlatchf.  G.  G.  JR.^  55.)    The  anticipations 
now  to  be  considered  are  screws,  nails,  coins,  and  other  similar 
things,  pressed  into  the  surface  of  the  plugs  at  these  stages  of 
manufacture,  to  identify  some  particular  plugs  to  the  manu- 
facturers themselves,  and  not  to  go  into  the  market  with  the 
plugs,  to  be  observed  by  tradesmen  or  consumers ;  and  initial 
letters  and  trade  names  impressed  into  some  plugs  of  lots 
placed  in  the  molds  at  the  same  time,  by  metallic  letters  placed 
loosely  among  the  plugs,  within  the  molds,  or  attached  to  the 
inner  surface  of  the  molds  and  intended  to  mark  those  plugs 
for  consumers ;  and  there  were  tin  labels,  almost  exactly  like 
Siedler's,  in  use  upon  the  corks  of  bottles.     The  coins  and 
things  of  that  sort  would  not  accomplish  the  whole  object 
sought  by  Siedler's  invention ;  they  would  identify  particular 
plugs  through  the  processes  of  manufacture,  and  that  is  all 
they  were  used  for,  but  would  be  of  no  use  between  manufac- 
turers and  customers  or  consumers.    The  letters  were  not 
labels,  and  could  not  be  made  to  answer  the  place  of  labels  on 
that  substance.    From  the  nature  of  the  tobacco  the  letters 
must  be  large,  to  be  legible ;  too  large  to  have  enough  to  an- 
swer the  purpose  of  a  label  put  upon  the  surface  of  single 
plugs ;  and  they  could  not,  by  the  means  used,  be  put  upon 
but  few  of  the  plugs  as  they  were  subjected  in  a  body  to  the 
final  pressures.    The  tin  labels  from  corks  could  not  be  placed 
upon  the  finished  plugs  tastefully  and  securely,  because  the 
hard  pressed  surface  of  the  plugs  would  not  receive  and  hold 
them.    The  object  desired  was  to  mark  each  plug  so  that  the 
Vol.  XX.- 


66  SOUTHERN   DISTRICT  OF  NEW  YORK. 

P.  Lorillard  A  Co.  v.  Dohan,  Carroll  A  Co. 

maunf actnrer  or  packer  would  be  known  by  the  mark  on  each 
plug  throughout,  until  it  should* reach  the  conenmer,  and  to- 
do  this  by  such  means  that  products  of  one  could  not  be  placed 
under  the  marks  of  another,  and  so  as  to  leave  the  plugs  sym- 
metrical, and  tasteful  to  those  who  will  use  them.  A  label  or 
tag  was  to  be  sought  which  would  not  be  large  enough  to 
cover  much  of  the  surface,  of  such  material  that  letters  of  a 
size  small  enough  so  a  sufficient  number  could  be  used  might 
be  put  npon  it,  which  could  be  fastened  permanently  enough 
to  remain  until  the  plugs  reached  the  consumer,  and  which 
would  be  removable  then  and  would  not  injuriously  affect  the 
quality  of  the  tobacco.  Siedler  accomplished  this  by  the  tin 
label,  which  could  be  lettered,  having  prongs,  put  into  each 
plug  in  the  last  stages  of  manufacture  and  pressed  into  them^ 
so  that  the  shape  of  the  plug  would  be  preserved,  the  label 
could  not  be  removed  without  disfiguring  the  plug,  therefore, 
one  could  not  be  exchanged  for  another,  and  it  could  be  re- 
moved by  the  consumer  when  that  part  of  the  plug  should  be 
reached,  and  which  would  not  affect  the  quality  of  the  tobacco 
at  all.  This  could  not  be  wrought  out  from  the  means  at 
hand  before,  without  thought  and  contrivance  enough  to  war- 
rant the  decision  of  the  Patent  Office  that  they  constituted  in- 
vention. No  one  had  done  this  before  him.  Therefore,  as. 
the  ease  now  stands,  the  patent  must  be  adjudged  to  be 
valid.  With  the  re-issue  valid  there  is  no  question  about  in- 
fringement. 

Let  there  be  a  decree  for  an  injunction  and  an  account,  ac- 
cording to  the  prayer  of  the  bill,  with  costs. 

Lvoingstan  Gifford^  for  the  plaintiffs. 

Samuel  S.  JBoydy  for  the  defendants. 


NOVEMBEE,  1881.  67 


Campbell  v.  The  Mayor,  dtc,  of  the  City  of  New  York. 


Chbistopheb  C.  Campbell 

vs. 

The  Matob,  &o.,  of  the  Citt  of  New  York.    In  Equxtt. 

Letters  patent  No.  42»920,  granted  May  24tb,  1864,  to  James  Ejoibbs,  for  an 
iEDprorement  in  steam  fire-engine  pomps,  are  yaUd. 

The  inTeniion  defined. 

The  question  of  its  norelty  examined. 

Certain  uses  of  the  inyention  held  to  hare  been  experimental. 

Under  §g  7  and  15  of  the  Act  of  July  4th,  1886,  (6  U.  S.  8tal  ai  Large,  119, 
128,)  and  §  7  of  the  Act  of  March  8d,  1889,  (Id,  854,)  a  sale  or  use  of  an  in- 
yention more  than  two  years  before  the  application  for  the  patent,  mast  in 
order  to  defeat  the  patent,  haye  been  a  public  sale  or  use  with  the  consent  or 
allowance  of  the  inyentor. 

(Before  WmEEUOt,  J.,  Southern  District  of  New  York,  Noyember  9th,  1881.) 

Wheeleb,  J.  The  plaintiff  has  title  to  letters  patent  No. 
42,920,  dated  May  24th,  1864,  and  issued  to  James  Knibbs, 
assignor,  for  an  improvement  in  steam  fire-engine  pnmps, 
whereby  such  an  engine,  having  constant  power  for  discharg- 
ing several  streams  of  water  through  lines  of  hose  of  various 
lengths,  may  be  made  to  throw  fewer  streams,  or  the  same 
number  through  longer  lines,  when  the  resistance  to  discharge 
would  be  greater,  without  varying  the  power,  or  causing  un- 
due strain  upon  the  working  parts  or  hose,  by  means  of  a 
passage  from  the  discharge  to  the  suction  side  of  the  pump, 
r^ulated  by  a  valve,  for  the  removal  of  the  surplus  water  on 
the  discharge  side  caused  by  the  restriction  upon  the  dis- 
charge. This  suit  is  brought  for  an  infringement  of  this  pat- 
ent, which  is  not  denied,  if  the  patent  is  valid.  The  validity 
of  the  patent  is  questioned  upon  the  ground  that  Enibbs  was 
not  the  first  inventor  of  this  improvement ;  that  the  same  had 
been  patented  abroad,  prior  to  his  invention ;  and  that  the 
same  had  been  in  public  use  and  on  sale  in  this  country  for 
more  than  two  years  prior  to  his  application. 


68  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Campbell  v.  The  Mayor,  Ac,  of  the  City  of  New  York. 

The  anticipations  relied  upon  are  steam  fire-engines  which 
were  made  by  the  Amoskeag  Manufacturing  Co.,  of  Manches- 
ter, N.  H. ;   the  steam  fire-engine  Philadelphia,  which  was 
made  by  Beanej,  Neafie  &  Co.,  of  Philadelphia ;  and  the  pat- 
ent of  R.  A.  Wilder,  No.  27,662,  dated  March  27th,  1860. 
The  foreign  patents  are  the  English  one  of  Joseph  Bramah, 
No.  1,948,  dated  April  18tb,  1793,  and  the  French  one  to 
Benoit  Duportail,  No.  19,532,  dated  June  12th,  1857.    The 
facts  as  to  the  existence,  knowledge  of,  and  use  of  the  devices 
in  these  fire-engines  are  to  be  found  from  a  comparatively 
large  mass  of  evidence,  consisting  of  documents,  drawings, 
pictures,  and  the  somewhat  conflicting  testimony  of  numerous 
witnesses  as  to  various  facts  and  circumstances.    Upon  the 
whole,  after  much  examination  and  consideration,  it  satisfac- 
torily and  beyond  any  fair  doubt  appears,  that,  prior  to  the 
invention  of  Enibbs,  the  Amoskeag  Manufacturing  Co.  made 
and  put  into  rotary  steam  fire-engines  manufactured  by  them 
a  passage  for  water  leading  from  the  suction  to  the  discharge 
sides  of  the  engines,  which  could  be  opened  and  closed  by  a 
valve,  for  the  purpose  of  having  water  carried  through  it,  and 
past  the  pumping  apparatus,  and  discharged  through  the  hose 
by  hydrant  pressure,  when  the  pumps  were  not  operating, 
which  was  used  at  places  where  there  was  hydrant  pressure  for 
that  purpose ;  and  that  Reaney,  Neafie  &  Co.  made  and  put 
into  steam  piston  fire-engines  tubes  leading  from  the  suction 
and  discharge  parts  of  the  engine  towards  each  other  until 
they  met,  and  in  one  tube  from  the  place  of  meeting  to  the 
boiler,  which  could  be  opened  and  closed  by  valves,  one  in 
each  branch,  for  the  purpose  of  taking  water  from  either  the 
suction  or  discharge  side  into  the  boiler,  the  two  branches 
leading  from  the  suction  and  discharge  sides  constituting  a 
passage  controlled  by  two  valves  through  which  water  could 
be  taken  from  the  discharge  to  the  suction  side,  to  relieve 
pressure  on  the  discharge  side ;  but  it  does  not  appear,  by  that 
measure  of  clear  proof,  beyond  any  fair  or  reasonable  doubt, 
which  is  necessary  to  defeat  a  patent,  that  either  of  these  de- 
vices was  ever,  before  that  time,  used  for  the  purpose  of  pass- 


NOVEMBER,   1881.  69 


Campbell  v.  The  Mayor,  Ac.  of  the  City  of  New  York. 

ing  water  from  the  discharge  to  the  suction  side  of  the  en- 
.ginee,  to  relieve  undue  pressure  on  the  discharge  side,  caused 
bj  reducing  the  number  of  discharge  openings  or  increasing 
the  difficulties  of  discharge  by  lengthening  the  hose ;  nor  that 
the  utility  of  these  passageways  for  that  purpose  was  before 
that  time  known  ;  neither  does  it  at  all  appear  that  Knibbs  de- 
rived any  aid  from  either  of  these  devices.  The  counsel  for 
the  defendant,  after  insisting  strenuously  that  these  passages 
were  in  fact  used  for  the  purposes  of  Knibbs'  invention,  like- 
wise insist,  that,  in  view  of  the  existence  only  of  these  things, 
if  that  only  should  be  found,  Knibbs  only  put  an  old  device 
to  a  new  use,  which  would  not  be  patentable.  This  presents 
the  question,  on  this  part  of  the  case,  whether  such  prior  knowl- 
edge and  use  of  a  like  device  as  is  found  to  have  been  had 
will  defeat  the  patent.  Knibbs'  invention  was  not  to  be  used 
under  all  circumstances  of  the  use  of  the  engine.  It  was  for 
use  only  in  combination  with  the  constant  power  for  a  larger 
discharge  and  a  restricted  discharge.  The  second  claim  of 
the  patent,  and  the  only  one  in  controversy,  is  for  the  con- 
necting passage  and  valve  for  the  purposes  described  and  set 
forth,  the  principal  of  which  purposes  was  the  use  in  that  com- 
bination.  The  statutes  providing  for  defences  to  suits  upon 
patents  require  defendants  to  set  forth  the  names  and  resi- 
dences of  persons  having  prior  knowledge  of  the  thing  pat- 
ented, and  where  and  by  whom  it  had  been  used.  {liev,  Stat. 
U.  S.J  sec.  4,920.)  The  proof  must,  of  course,  correspond 
with  and  support  these  allegations.  The  proofs  in  this  case 
do  not  support  the  allegations  that  the  persons  knowing  of 
and  using  the  Amoskeag  engines  and  the  engine  Philadelphia, 
as  these  persons  are  found  to  have  known  and  used  them, 
knew  of  and  used  Knibbs'  invention.  Those  connected  with 
the  Amoskeag  engines  used  the  passage  to  avoid  the  pump, 
and  those  connected  with  the  Philadelphia  used  only  a  part 
of  it  at  a  time,  and  then  in  connection  only  with  contrivances 
for  feeding  the  boiler,  and  neither  of  them  used  it  in  connec- 
tion and  combination  with  the  working  pump  and  over- 
pressed  hose  at  all ;  and  they  respectively  had  knowledge  co- 


70  SOUTHERN  DISTRICT  OF  NEW  TORE, 

Campbell  v.  The  Mayor,  Ac,  of  the  CStj  of  New  Tork. 

extensive  with  the  use  they  made.  They  had  brought  to- 
gether all  the  parts  necessary  to  accomplish  the  result  he  ac- 
complished, but  did  not  know  how  to  use  them.  This  is  not 
the  known  use  required  to  defeat  a  patent.  {Tilffhman  v. 
Proctor,  102  U.  aS,  707.) 

Wilder's  patent  is  for  a  two-way  valve  in  combination 
with  apparatus  for  feeding  a  steam  boiler  with  water,  by 
which  surplus  water  is  returned  to  the  tank.  The  combina- 
'  tion  with  which  it  is  made  to  work  is  entirely  different  from 
that  in  which  this  passage  and  valve  is  placed,  and  the  work- 
ing parts  are  not  the  same.  The  same  may  be  said  of  the  pat* 
ents  of  Bramah  and  Duportail.  Both  were  before  steam  fire- 
engines,  with  the  necessities  of  their  great  and  constant  mo- 
tive power,  were  known. 

The  facts  in  regard  to  use  and  sale  of  the  invention  prior 
to  the  application  appear  from  the  evidence  to  be,  that  Knibbs 
was  the  engineer  of  a  steam  fire-engine  in  use  in  the  city  of 
Troy  for  the  protection  of  property  there  against  fire,  and,  in 
the  latter  part  of  April,  1860,  applied  his  invention  in  the  form 
of  a  pipe  leading  from  the  discbarge  to  the  suction  sides  of 
the  engine,  with  a  globe  valve  between.  The  invention  was 
tried  and  operated  satisfactorily,  except  that  he  thought  that 
the  passage  was  rather  small.  This  engine,  which  was  called 
the  Arba  Beade,  was  continued  in  use,  with  the  invention 
upon  it,  Knibbs  continuing  to  be  the  engineer.  In  January, 
1862,  the  city  of  Troy  procured  another  steam  fire-engine  of 
substantially  the  same  pattern,  to  which,  at  the  request  of 
Enibbs,  his  invention  was  applied  in  the  form  of  an  opening 
through  the  partition  between  the  discharge  and  suction  sides 
of  the  pump,  with  a  valve  working  to  a  seat  at  the  opening, 
through  which  the  excess  of  water  could  be  made  to  pass. 
This  engine,  which  was  called  the  J.  C.  Osgood,  was  put  to 
use  for  the  city  and  the  invention  operated  satisfactorily  to 
Knibbs,  as  well  as  to  others  concerned.  The  tube  to  the  Arba 
Beade  was  made  larger  in  February,  1863,  and  worked  more 
satisfactorily  to  all.  Knibbs  thought  of  applying  for  a  patent, 
consulted  a  solicitor  of  patents  about  it,  and  made  application 


N0VEB4BER,  1881.  71 


Campbell  v.  The  Mayor,  Ac,  of  the  City  of  New  York. 

for  the  one  that  was  granted,  May  13th,  1864,  without  at  any 
time  intending  to  abandon  his  invention  to  the  public.    In 
1861,  and  consequently  more  than  two  years  before  the  appli- 
^cation,  the  Amoskeag  Manufacturing  Go.  made  other  steam 
fire-engines  containing  this  invention,  which  were  sold  and 
went  into  use,  and  from  that  time  until  after  the  application 
«uch  engines  were  occasionally  made  and  sold  by  that  com- 
pany«  and,  perhaps,  by  other  manufacturers,  and  went  into  the 
customary  use.     This  was  done  without  the  consent  and  allow- 
ance of  Knibbs.    It  is  contended  that  these  uses  and  sales,  either 
those  with  or  those  without  the  consent  and  allowance  of 
KnibbS)  will  defeat  the  patent.    This  invention,  like  that  in  JSltz- 
'dbeth  V.  Pame7nent  Co.^  (97  U.  S.,  126,)  could  not  well  be  experi- 
mented with  and  tested  in  private.    Its  object  was  connected 
with  purposes  in  their  nature  public,  and  its  practice  was  nec- 
essarily somewhat  of  the  same  nature.    The  invention  was 
not  essentially  varied  by  the  trials  and  use  made  and  was  pat- 
ented according  to  its  features  as  first  applied.    Still,  it  was 
not  dear  to  the  inventor  that  no  changes  or  modifications 
would  be  necessary,  and  necessary  to  be  specified  in  the  appli- 
<cation  for  a  patent,  in  order  to  obtain  the  full  benefit  of  one. 
In  this  view,  the  use  by  him  as  engineer,  and  by  the  city  of 
Troy  at  his  request,  is  deemed  to  have  been  experimental  and 
4JIowable,  within  the  rule  laid  down  in  the  case  cited.     Still, 
if  consent  and  allowance  of  the  inventor  are  not  necessary  to 
defeat  a  patent,  the  other  sales  and  use  were  sufiScient  to  ac- 
Ksomplish  that  result.     It  has  frequently  been  said,  but  in  cases 
where  the  point  was  not  directly  raised,  that  such  consent  and 
^lowance  was  not  necessary.    {JSghert  v.  Lippman^  15  Blatchf. 
a  a  R.,  295  ;  Kdleher  v.  Darling,  4  Clifford,  424.)    And 
there  are  cases  the  other  way.    {Anda*ew8  v.  Carman,  13 
BlaUAf.  C  C.  R.,  307 ;  Draper  v.  Wattles,  16  Off.  Oaz.,  629.) 
In  view  of  these  differences  of  opinion  or  statement,  it  may 
be  weU  to  recur  to  the  statutes.    In  section  7  of  the  Act  of 
July  4th,  1836,  (5  U,  S.  Stat,  at  Large,  119,)  it  is  provided 
ithat  the  Commissioner  shall  make  or  cause  to  be  made  an  ex- 
amination of  the  alleged  invention  or  discovery,  and,  if  it 


72  SOUTHERN  DISTRICJT   OF  NEW  YORK, 

Campbell  v.  The  Mayor,  Ac,  of  the  City  of  New  York. 

shall  not  appear,  among  other  things,  that  it  had  been  in  pub- 
lic use  or  on  sale,  with  the  applicant's  consent  or  allowance, 
prior  to  the  application,  and  if  the  Commissioner  shall  deem  it 
to  be  snfBciently  nseful  and  important,  it  shall  be  his  duty  to 
issne  a  patent  for  it.  In  section  15  of  the  same  Act  it  is  pro- 
vided, that  a  defendant,  in  a  suit  for  infringement,  may  set 
up,  among  other  things,  in  defence,  that  the  invention  had 
been  in  public  use  or  on  sale  with  the  consent  and  allowance 
of  the  patentee  before  his  application  for  a  patent.  These  are 
the  only  provisions  for  preventing  the  issue  of  a  patent,  or  a 
recovery  for  the  infringement  of  one,  on  account  of  the  in- 
vention being  in  public  use  or  on  sale,  except  some  provisions 
as  to  the  effect  of  foreign  patents,  not  material  to  this  question, 
which  were  in  force  when  this  patent  was  granted.  The  7th 
section  of  the  Act  of  March  3d,  1839,  (5  U.  S.  Stat,  at  Largty 
354,)  does  not  provide  for  preventing  the  issue  of  a  patent  on 
this  account,  and  does  not  enlarge  in  any  direction,  but  is  re- 
strictive of,  this  defence.  It  saves  to  manufacturers  and 
purchasers  before  the  application  for  a  patent  the  right  ta 
specific  machines,  manufactures,  or  compositions  of  matter^ 
and  provides  that  no  patent  shall  be  held  invalid  by  reason  of 
the  sales,  purchases  or  use,  except  on  proof  of  abandonment, 
or  that  the  purchase,  sale  or  use  has  been  for  more  than  two- 
years  prior  to  the  application.  No  purchase,  sale  or  use  after 
thej  invention  would  prevent  or  invalidate  a  patent  but  for 
these  provisions  of  the  Act  of  1836,  and  it  is  against  those 
provisions  that  the  effect  of  the  making,  use,  and  sales  of  these 
specific  articles  is  saved  by  the  Act  of  1839.  The  use  saved 
against  is  the  public  use  mentioned  in  the  Act  of  1836,  a& 
seems  to  have  always  been  understood,  although  it  is  not  men- 
tioned as  public,  in  the  Act  of  1839 ;  and  the  being  in  use  and 
on  sale  saved  against  are  the  public  use  and  sale  with  the  con- 
sent or  allowance  of  the  inventor,  mentioned  in  the  Act  of 
1836.    {Draper  v.  WatOes,  16  Off.  Oaz.,  629.) 

Upon  these  considerations  there  must  be  a  decree  for  the 
plaintiff.     The  patent  has  expired,  and,  therefore,  no  injuno- 


KOYEMBER,   1881.  7S 


Strobridge  v.  Landen,  Frary  A  Clark. 


tion  will  be  granted,  unless  farther  moved  for  upon  some 
special  grotmds. 

Let  a  decree  be  entered  adjudging  that  the  patent  is  yalid^ 
and  that  the  defendant  has  infringed,  and  for  an  account,  ac- 
cording to  the  prayer  of  the  bill,  with  costs. 

Georffe  H.  WiUiamSy  for  the  plaintiff. 

Frederic  H.  Belts  and  C.  WyUys  JSetts,  for  the  defendant. 


TUBNEB  StBOBBIDOS 
V8. 

LAjn>EB8,  l^^ABY  &  Clabk.    In  Equitt. 

Re-iflsoed  letters  patent  No.  7,588,  g;ranted  to  Tomer  Strobridge,  March  27th,. 
1877,  for  an  improvement  in  coflfee-miUs,  (the  original  patent,  No.  159,467, 
haying  been  granted  to  him  February  2d,  1876,  and  re-issned  to  him  as  No. 
7,174,  June  18th,  1876,)  are  yalid. 

The  first  claim  of  said  re-isene,  namely,  "A  coffee  or  similar  mill,  haying  a  de- 
tachable hopper  and  grinding  shell,  formed  in  a  single  piece,  and  snspended 
within  the  box  by  the  npper  part  of  the  hopper,  or  a  flange  thereon,  sob* 
stantially  as  and  for  the  pnrpose  specified,"  is  infringed  by  a  mill  constracted 
in  aooordance  with  the  description  and  drawings  of  letters  patent  No.  204,866^ 
granted  to  Bodolphns  L.  Webb,  June  lltb,  1878. 

The  re-iflsoe  is  not  for  a  different  inyention  from  the  ori^al,  and  does  not  con- 
tain new  matter. 

The  qneetions  of  noyelty  and  patentability  considered. 

Hie  deyioes  contained  in  the  first  claim  held  to  be  a  combination  and  not  mere- 
ly an  aggregation  of  parts. 

(Before  Blatghtobd,  J.,  Connecticut,  Noyember  10th,  1881.) 

Blatohfobd,  J.  This  suit  is  brought  on  re-issued  letters 
patent  No.  7,583,  granted  to  the  plaintiff  March  27th,  1877, 
the  original  patent,  No.  159,467,  having  been  granted  to  him. 


74  CONNECTICUT, 


Strobridge  v.  Landers,  Frary  A  Clark. 


as  inventor,  February  2d,  1875,  and  re-issued  to  him,  No. 
7,174,  June  13th,  1876.    The  drawings  of  the  original  and 
of  No.  7,583  are  the  same.    The  following  is  the  specifica- 
tion of  No.  7,583,  reading  what  is  outside  of  brackets  and 
what  is  inside  of  brackets,  omitting  what  is  in  italics :  ''  Fig- 
ure 1  is  a  vertical  section  of  a  coffee  mill  embodying  my 
invention.    Fig.  2  is  an  under  view  of  the  cover,  and  fig.  3  is 
a  perspective  view  of  the  hopper.    Like  letters  refer  to  like 
parts,  wherever  they  occur.     My  invention  relates  to  the 
construction  of  cofiee  [and]  or  spice  [mills  in  such  manner 
that  the  hopper  is  inclosed  in  the  box,  and  may  be  closed  in 
turn  by  a  sliding  gate  or  cover,  whereby  a  compact  and  neat 
mill  is  obtained.]  grinders;  and  it  consists  in  suspending 
the  hopper  hy  means  of  the  top  of  the  hox^  and  securing  it  in 
position  hy  means  of  screws^  which  pass  through  the  cover 
<imd  through  lugs  or  a  projecting  fia/nge  upon  the  hopper^ 
whereby  a  covered  hopper  is  obtained  a/nd  the  construction 
and  attachment  of  the  devices  simplified;  alsoj  in  providing 
the  covered  hopper  with  a  sliding  or  m/yoable  gate^  centered 
with  the  shafik  of  the  grinding  nut  and  sliding  upon  the 
periphery  or  fiange  of  the  hopper,  whereby  hinges^  springs  or 
catches  are  dispensed  with,  and  the  gate  slides  a^side,  leaving 
a/n  unobstructed  opening  for  the  admissicm  of  the  article  to  be 
gravmdy  and  also  in  providing  the  hopper  with  projections  or 
points  which  bite  into  the  cover  of  t/ie  box  and  prevent  the 
slipping  or  turning  of  the  hopper,  in  connection  with  a  cover 
projecting  so  as  to  rest  upon  the  top  of  the  box,  and  bind  upon 
ike  upper  edge  of  the  hopper.    *    *    *    a  indicates  the  box, 
with  its  drawer,  B,  of  any  suitable  construction.     The  top, 
C,  of  the  box  is  cut  away,  [so  that]  for  the  admission  of  the 
hopper  [may  be  suspended  therein]  which  1  introduce  from 
above,  suspending  it  by  means  of  a  projecting  fiange  or  lugs 
on  the  [hopper.]  hopper,  and  to  [To]  facilitate  the  suspension 
of  the  hopper,  I  preferably  bevel  the  opening  in  top  C  to 
correspond  with  the  curve  of  the  hopper,  as  shown  at  [c]  c, 
which  [This]  also  wiU  diminish  the  liability  of  the  splitting 
of  the  wood  when  the  screws  which  secure  the  cover  are  [in- 


NOTEMBER,  1681.  76 


Strobridge  v.  Landers,  Frary  A  CSlark. 


trodaced.]  introduced,  {when  a  cover  is  used  and  secured,  as 
^hovon.)  D  represents  the  hopper  or  grinding  shell,  produced 
with  a  flange  or  lugs,  d,  by  which  it  is  suspended  [in]  upon 
the  top  C  of  the  box  [A.  The  hopper  is  fastened  down,  and 
also  prevented  from  turning,  by  the  screws  ^.]  A^  and 
through  which  pass  the  screws  g,  which  hold  the  hopper  dcwn^ 
and  prevent  it  from  turning.  The  hopper  has  the  usual 
grinding  face,  d%  and  a  series  of  projections  or  points,  e, 
which  I  provide  for  the  purpose  of  taking  hold  upon  the 
beveled  edge  c  of  the  top  C,  to  assist  in  preventing  any  move- 
ment of  the  hopper.  These  points,  if  sufficiently  numerous, 
will  of  themselves  prevent  a  change  of  position  of  the  [hop- 
per, so  that  screws  may  be  omitted.  This  will  be  found  the 
cheapest  and  most  convenient  way  of  suspending  the]  hopper. 
E  is  the  cover,  having  a  central  opening  for  the  passage  of 
the  shank  of  the  grinding  nut,  and  a  sunken  or  recessed  rim 
for  the  accommodation  of  the  lugs  d,  or  the  flange  of  the 
hopper,  so  that  the  lower  edge  of  the  cover  rests  evenly  upon 
the  top  C,  and  at  the  same  time  binds  upon  the  hopper.  This 
cover,  E,  is  provided  with  a  sliding  gate  or  door,  F,  which  is 
pierced,  as  at  f  for  the  passage  of,  or  made  to  rest  against, 
the  shank  of  the  grinding  nut,  upon  which  it  turns  or  bears, 
said  gate  F  resting,  by  its  lower  edge,  upon  the  upper  edge 
of  the  hopper,  and  sliding  or  moving  within  or  without  the 
cover  E,  so  as  to  be  out  of  the  way  when  the  opening  in  the 
cover  is  unclosed.  O  represents  the  grinding  nut,  having  a 
tapering  shank,  H,  which  passes  through  the  cover,  project- 
ing portion  of  gate  F,  and  the  crank,  and  is  secured  above  by 
the  usual  tightening  nut,  I.  The  devices  are  put  together  as 
follows :  The  cover  and  gate  are  placed  upon  the  hopper,  the 
shank  of  the  grinding  nut  passed  through  the  hopper,  cover 
and  crank,  and  secured  by  the  tightening  nut,  the  lugs  or 
screw  openings  in  the  flange  of  the  hopper  are  made  to  regis- 
ter with  those  in  the  cover,  after  which  the  operative  parts 
are  dropped  into  the  opening  in  the  top  of  the  box,  and 
secured  by  a  single  set  of  screws  which  pass  through  the 
cover  and  lugs  or  flange  of  the  hopper.      The  projecting 


76  CONNECTICUT, 


Strobridge  v.  Landers,  Vrtaj  A  Clark. 


points  on  the  outside  of  the  hopper  will  bite  into  the  top  of 
the  box,  and,  as  the  cover  binds  npon  the  upper  edge  of  the 
hopper,  these  wiU,  of  themselves,  if  sufficiently  numerous,  be 
sufficient  to  prevent  any  movement  of  the  hopper,  so  that,  if 
desired,  the  screws  need  not  pass  through  the  flange  of  the 
hopper.  The  hopper  may  be  suspended  as  shown,  and  the 
cover  replaced  by  a  bridge,  to  support  the  shank  of  the  grind- 
ing nut.  The  grinding  sheU  or  hopper  and  the  cover  may  be 
secured  by  a  separate  set  of  screws.  The  lower  part  of  the 
grinding  shell  may  be  formed  with  lugs  or  projections,  to 
guide  or  steady  the  grinding  nut.  Among  the  advantages  of 
my  invention  are  the  simplicity  of  construction,  and  the 
readiness  with  which  the  several  parts  and  the  box  may  be 
adjusted  or  set  up,  whereby  time  and  labor  are  saved  and  a 
serviceable  article  produced."  Heading  in  the  foregoing 
what  is  outside  of  brackets,  indudiug  what  is  in  italics,  and 
omitting  what  is  inside  of  brackets,  gives  the  text  of  the 
original  specification.  There  are  eight  claims  in  Ko.  7,583. 
Only  claim  one  is  involved  in  this  suit.  It  is  as  follows :  "1. 
A  coffee  or  similar  mill,  having  a  detachable  hopper  and 
grinding  shell,  formed  in  a  single  piece,  and  suspended 
within  the  box  by  the  upper  part  of  the  hopper,  or  a  flange 
thereon,  substantially  as  and  for  the  purpose  specified."  The 
original  patent  had  four  claims,  as  follows :  "  1.  The  hopper 
and  grinding  shell  D,  provided  with  points  or  projections  e 
on  its  outer  surface,  in  combination  with  cover  E,  projecting 
so  as  to  rest  upon  the  top  of  the  box,  and  bind  upon  the  up- 
per edge  of  the  hopper,  substantially  as  and  for  the  purpose 
specified.  2.  In  coffee  or  spice  mills,  the  combination  of  box 
A,  having  a  top  C,  with  the  hopper  D,  suspended  within  the 
box  by  means  of  lugs  or  projections, 'which  rest  upon  or  take 
into  top  C,  and  a  cover,  substantially  as  specified.  3.  The 
combination  of  the  hopper  and  grinding  shell  D,  grinding  nut 
G,  having  shank  H  and  cover  E,  having  a  sliding  gate  or 
door  F,  substantially  as  and  for  the  purpose  specified.  4.  The 
combination  of  cover  E  and  grinding  shell  or  hopper  D,  the 
latter  provided  with  lugs  or  a  flange,  so  that  the  two  parts 


NOVEBfBER,  1881.  77 


Strobridge  v.  Landers,  Frary  A  Clark. 


may  be  aecared  to  the  box  by  a  single  set  of  screws,  substan- 
tially as  specified." 

So  far  as  can  be  discerned  in  the  drawings  of  the  original 
and  the  re-issne,  the  hopper  and  the  grinding  shell  are  repre- 
sented as  in  a  single  piece  without  any  indication  of  ever 
having  been  in  two  pieces.  It  is  not  stated  in  the  re-issue 
that  they  are  cast  in  one  piece.  The  text  says  that  D  is  the 
hopper  or  grinding  shell,  and  that  it  has  the  usual  grinding 
faoe  d.  That  grinding  face  is  shown,  in  the  drawings,  as  ex- 
tending down  from  the  lower  part  of  the  hopper  part  proper, 
and  as  having  the  grinding  nut  revolving  within  it.  The  grind- 
ing face  is  the  inner  face  of  the  grinding  shell.  There  is 
nothing  else  on  the  point  till  we  come  to  claim  one,  where  it 
is  said  that  the  '^  hopper  and  grinding  shell"  are  ^^ formed  in 
a  single  piece." 

The  elements  which  appear  to  be  necessary,  in  claim  one, 
are:  (1.)  A  mill  in  the  form  of  a  box ;  (2.)  a  hopper  and 
grinding  shell  formed  in  a  single  piece;  (3.)  the  combined 
hopper  and  grinding  shell  detachable;  (4.)  such  hopper  and 
grinding  shell  suspended  in  the  box  by  the  upper  part  of  the 
hopper,  or  a  flange  thereon ;  (5.)  an  arrangement  of  these 
features  substantially  as  and  for  the  purpose  specified. 

The  defendant's  structure  which  is  claimed  to  infringe 
claim  one  of  the  re-issue,  is  constructed  in  accordance  with  the 
description  and  drawings  of  a  patent  granted  to  Bodolphus  L. 
Webb,  No.  204,865,  June  11th,  1878,  so  far  bjb  anything  in- 
volved in  this  case  is  concerned.  That  patent  shows  a  box 
mill,  with  a  cast  metal  top  projecting,  as  a  lateral  flange, 
horizontally  from  the  top  edge  of  the  hopper,  on  all  four 
sides,  and  extending  outwardly  beyond  the  tops  of  the  sides. 
The  top  is  of  one  piece  with  the  hopper  proper,  and  the  lat- 
ter is  of  one  piece  with  the  grinding  shell,  as  shown  in  the 
drawings ;  and  this  is  the  construction  in  the  article  put  in 
evidence  as  infringing.  The  hopper  and  grinding  shell  are 
sunk  in  the  box,  so  that  there  are  covers  which,  when  closed, 
rest  on  the  upper  face  of  the  metal  top.  The  patent  states 
that  the  grinding  shell  may  be  cast  as  a  part  of  the  hopper, 


78  CONNECTICUT, 


Strobridge  v.  Landers,  Frary  A  Clark. 


or  may  be  attached  thereto.  The  patent  claims  merely  an 
arrangement  for  adjusting  the  grinding  nnt  up  and  down,  so 
as  to  make  it  ran  nearer  to  or  farther  from  the  grinding  shell, 
and  thus  vary  the  quality  of  the  grinding.  This  arrange- 
ment does  not  appear  to  be  embodied  in  the  mills  produced 
and  put  in  evidence  as  specimens  of  those  made  by  the  de- 
fendant. 

The  defendant's  article  is  a  mill  in  the  form  of  a  box.  It 
has  a  hopper  and  a  grinding  shell  formed  in  a  single  piece, 
they  being  cast  in  one  piece.  The  combined  hopper  and 
grinding  shell  and  top  are  detachable  from  the  box  by  un- 
screwing screws  which  go  through  the  sides  of  the  box  into 
lugs  depending  on  the  inside  of  the  box  from  the  under  side 
of  the  top.  The  hopper  and  the  grinding  shell,  through  their 
connection  with  the  metal  top,  are  suspended  in  the  box. 
Every  point  of  advantage  resulting  from  the  combination  of 
the  features  in  claim  one  of  No.  7,583,  exists  in  the  defend- 
ant's article. 

Some  question  is  made  as  to  what  is  meant  by  the  word 
^'  detachable  "  in  claim  one.  It  is  not  used  in  the  descriptive 
part  of  the  specification.  But  screws  are  shown  and  de- 
scribed which  go  through  the  lugs  or  flange  on  the  hopper 
and  into  the  wood  of  the  box  on  top  and  thus  fasten  the  hop- 
per to  the  box.  Of  course,  these  are  wood-screws,  and  re- 
movable at  will ;  and  so  the  hopper  and  shell  are  detachable. 
The  defendant's  hopper  and  shell  and  top  are  detachable  in 
the  same  way,  being  attached  in  the  same  way.  The  defend- 
ant urges  that  its  structure  does  not  infringe  because  the 
hopper  is  not  detachable  from  the  top  of  the  box.  All  that 
the  defendant  has  done  is  to  enlarge  the  size  of  the  flange  on 
the  hopper.  The  sides  of  the  box  support  the  top  of  the  box. 
When  the  flange  is  smaller  than  the  top,  it  hangs  in  the  top. 
"When  it  is  so  large  as  to  itself  form  a  top  and  overlap  the 
sides,  the  sides  support  the  whole,  that  is,  the  flange  top,  the 
hopper  and  the  grinding  shell.  The  change  is  merely  formal, 
and  does  not  avoid  infringement.  The  flange  on  the  hopper 
may  be  gradually  enlarged  and  the  top  of  the  box  be  gradu- 


NOVEMBER,  1881.  7^ 


Strobridge  v.  Landers,  Frary  A  Clark. 


ally  cnt  away,  until  the  wood  of  the  top  is  all  gone,  and  the 
flange  replaces  it,  without  in  any  manner  affecting  the  princi- 
ple of  the  Strobridge  invention  embodied  in  claim  one.  Thia 
is  all  that  the  defendant  has  done. 

The  answer  sets  np  that  the  re-issne  is  not  for  the  same 
invention  aa  that  described  in  the  original,  and  that  the  re-issne 
oontaina  new  matter  not  found,  suggested  or  described  in  the 
original.  This  objection  is  not  tenable.  The  statement  in 
the  re-issne  of  that  to  which  the  invention  relates  is  true,  and 
is  found,  in  substance,  in  the  original.  There  is  no  statement 
in  the  re-iasue  of  what  the  invention  consists  in.  The  state- 
ment in  the  original  as  to  what  the  invention  consists  in  is 
omitted  in  the  re-issue.  It  was  narrower  than  the  real  inven- 
tion. The  drawings  of  the  re-issne  and  the  original  are  the 
same.  There  is  no  new  matter  introduced  into  the  re-issue. 
The  re-issae  truly  describes  the  article  and  its  parts.  To  say 
that  the  hopper  is  suspended  in  the  box,  when  the  original 
says  that  it  is  suspended  from  the  top  of  the  box,  is  not 
new  matter,  within  the  meaning  of  §  4,916  of  the  Bevised 
Statutes. 

The  answer  also  sets  up,  that,  in  view  of  the  previous  state 
of  the  art,  as  shown  in  various  patents  set  forth  in  the  answer, 
the  re-is8ue  Bhows  no  novelty  and  discloses  no  patentable  sub- 
ject of  invention,  and  that  the  re-issue  is  invalid  for  want  of 
patentable  quality. 

This  re-issued  patent  was  adjudicated  upon  in  the  suit  of 
Strobridge  v.  Lindsay^  (2  Fed.  Rep.^  692,)  in,  the  Circuit 
Court  for  the  Western  District  of  Pennsylvania,  by  Judge 
Acheson.  The  defendants'  mill  in  that  case  was  of  the  same 
oonstmction  as  the  mill  of  the  defendant  in  this  case.  The 
defences  there  insisted  on  were  non-infringement  and  want 
of  patentable  invention.  The  mill  was  held  to  infringe  claim 
one  of  the  issue.  The  question  of  the  extenaion  of  the  flange 
on  the  hopper  was  fully  considered.  Everything  that  is  intro- 
duced into  this  case  by  the  defendant,  on  the  questions  of 
novelty  and  patentability,  was  in  the  Lindsay  case,  except  a 
mill  called  "  Domestic  Coffee  Mill."    In  this,  the  hopper  is 


80  CONNECTICUT, 


airobridge  v.  Lmden,  Fnry  A  dark. 


elevated  and  not  sunk  in  the  box.  There  is  a  cast  metal 
cover,  covering  the  box  and  forming  its  top.  The  hopper  is 
not  of  one  piece  vidth  the  cover,  bat  rests  on  it  and  is  secured 
to  it  by  rivets.  The  grinding  shell  is  loose,  and  has  a  flange 
at  its  npper  edge,  and  is  dropped  into  a  depression  surround- 
ing the  central  hole  in  the  cover,  and  has  the  hopper  above 
it.  Lugs  on  it,  fitting  into  corresponding  recesses  in  the 
cover,  prevent  it  from  turning.  The  grinding  shell  is  sup- 
ported against  lateral  strain  or  displacement  by  the  cover. 
This  structure  has  not  a  hopper  suspended  in  the  box,  nor  a 
^nding  sheU  and  hopper  formed  in  a  single  piece,  and  neither 
meets  claim  one  nor  shovrs  the  defendant's  arrangement. 

The  question  of  novelty  and  patentability  was  fully  con- 
sidered by  Judge  Acheson,  especially  in  regard  to  the  French 
mill,  and  the  Elevated  Hopper  mill.  Box  coffee  mills  existed, 
euch  as  the  Elevated  Hopper  mill,  the  Livingston  and  Adams' 
mill  and  the  Brown  mill,  in  which  the  hopper  and  the  grind- 
ing shell  were  formed  in  one  and  the  same  piece ;  and  box 
eoffee  mills  existed,  such  as  the  French  mill,  the  Krutz  mill, 
and  the  Clark  mill,  in  which  the  hopper  was  suspended  in  the 
box ;  and,  in  the  Domestic  Coffee  mill,  the  metal  top  which 
carried  the  hopper  and  the  grinding  shell  was  attached  to  the 
box  by  wood  screws.  But  no  coffee  mill  existed,  combining 
all  the  features  embodied  in  claim  one  of  No.  7,583.  It  was, 
however,  urged,  in  the  Lindsay  suit,  that  it  did  not,  in  view 
of  the  prior  structures,  require  invention  to  pass  to  a  struc- 
ture with  the  combined  features  of  claim  one  of  No.  7,583. 
Judge  Acheson  held  that  it  did.  The  entire  record  in  the 
Lindsay  suit  is  in  evidence  in  this  suit.  There  is  nothing 
new  in  this  suit  as  to  the  matters  considered  and  passed  upon 
in  the  other  suit,  in  regard  to  patentability  and  novelty, 
and  the  Domestic  Coffee  mill  presents  no  features  in  regard 
to  forming  the  hopper  and  grinding  shell  in  a  single  piece, 
and  in  regard  to  a  hopper  suspended  in  the  box,  which  were 
not  presented  by  structures  among  those  which  were  before 
Judge  Acheson.  Under  these  circumstances,  it  would  be 
proper,  as  it  is  usual,  to  follow  the  former  decision  on  final 


NOVEMBER,  1881.  81 


Strobridge  v.  Landers,  Frary  A  Clark. 


heariDg,  in  another  Gircnit  Conrt.  But,  irreBpective  of  this, 
I  entirely  concur  in  the  views  of  Judge  Acheson. 

It  is  strongly  urged  that  claim  one  of  No.  7,583  cannot 
be  sustained,  because  the  old  devices  aggregated  in  it  do  not 
by  their  combination  produce  a  novel  result  which  is  the  fruit 
of  the  combination.  It  is  a  sufficient  answer  to  this  view  to 
say,  that  a  hopper  and  grinding  shell  formed  in  a  single  piece 
and  suspended  in  the  box  by  the  upper  part  of  the  hopper  or 
a  flange  therein  did  not  exist  before,  combined  in  a  mill.  The 
evidence  shows  that  the  suspension  in  the  box  requires,  in  or- 
der to  dispense  with  the  yoke  or  bridge  which  is  below  the 
grinding  shell  in  the  French  mill,  that  the  grinding  shell  and 
the  hopper  should  be  formed  in  a  single  piece,  because,  when 
the  hopper  is  sunken,  the  grinding  shell  no  longer  has  the 
lateral  support  of  the  box  cover.  Hence,  the  combination  of 
those  features  do  produce  a  novel  result  as  the  fruit  of  the 
combination.  If  that  combination  had  existed  before,  the 
question  whether  adding  to  that  the  feature  of  detachabiUty 
made  another  patentable  combination  might  arise.  But  it 
does  not  arise  now. 

The  defendant,  down  to  1877,  was  not  making  a  mill  with 
a  sunken  hopper.  In  that  year,  Webb,  who  was  in  its  em- 
ploy, having  before  him  the  French  mill  and  a  mill  made  by 
the  Charles  Parker  Company,  in  accordance  with  the  Stro- 
bridge patent,  entered  into  the  manufacture  of  the  infringing 
mill.  It  desired  to  make  a  mill  with  a  sunken  hopper,  which 
should  be  a  cheaper  mill  than  the  French  mill.  It  substanti- 
ally copied  the  Charles  Parker  mill,  merely  extending  the 
flange  pf  the  hopper.  It  formed  the  hopper  and  the  grinding 
shell  in  one  piece,  and  got  rid  of  the  lower  supporting  yoke 
of  the  Frendi  mill.  In  the  Strobridge  mill,  the  only  lateral 
support  of  the  grinding  shell  is  the  hopper.  Therefore, 
there  must  be  a  strong,  unyielding  union  between  the  grind- 
ing shell  and  the  hopper.  Where  the  hopper  is  elevated,  the 
grinding  shell  is  sustained  laterally  against  the  strain  of  grind- 
ing by  the  top  of  the  box.  The  advantages  thus  resulting 
from  Strobridge's  arrangement  have  been  availed  of  by  the 
Vol.  XX.— 6 


82  SOUTHERN  DISTRICT  OF  NEW  YORK, 


Plhnpton  V.  Wioslow. 


defendant  by  the  use  of  what  is  covered  by  claim  one  of  No. 
7,588. 

There  mnst  be  a  decree  for  the  plaintiff,  for  an  account  of 
profits  and  damages,  and  a  perpetual  injunction,  with  costs. 

BaketoeU  <&  Kerr^  for  the  plaintiff. 

B.  F.  ITiurstan  and.  C.  E.  Mitchell^  for  the  defendant 


Jakes  L.  Plimfton 
Samuel  "Winslow.    In  Equitt. 

Hie  defendant  held  to  have  been  protected,  in  this  case,  while  attending  the 
examination  of  witnesses  for  the  plaintiff,  in  New  York,  in  an  equity  sidt 
pending  in  Massachosetts,  brought  against  him  by  the  plaintiff,  from  the  ser- 
vice  on  liim  in  New  York  of  a  sabpoena  to  appear  and  answer  in  this  suit. 

(Before  BLATonioaD,  J.,  Southern  District  of  New  York,  November  12th,  1881.) 

Blatohfoed,  J.  A  suit  in  equity  brought  by  the  plaintiff 
in  this  suit  against  the  defendant  in  this  suit,  for  the  infringe- 
ment of  letters  patent,  is  pending  in  the  Circuit  Court  for  the 
District  of  Massachusetts.  Prior  to  November  2d,  1881,  it 
had  been  verbally  agreed  between  Mr.  Roberts,  the  counsel 
for  the  defendant,  and  Mr.  Clark,  the  counsel  for  the  plaint- 
iff, in  the  suit  in  Massachusetts,  that  the  defendant  might 
have  testimony  on  his  behalf  taken  in  the  city  of  New  York, 
for  use  in  that  suit,  before  Mr.  Thompson,  as  a  special  exam- 
iner, and  Mr.  Clark  verbally  agreed  to  attend  before  Mr. 
Thompson  at  any  time,  on  telegraphic  notice,  for  the  purpose. 
Such  notice  was  given  that  the  plaintiff,  together  with  the  de- 
fendant and  Mr.  Roberts,  attended  in  New  York,  before  Mr. 


NOVEMBER,  1881.  83 


PUmpton  V.  Window. 


Thompson,  on  November  2d.  Mr.  Clark  was  not  present  on 
that  day.  Witnesses  were  examined  on  that  day  on  behalf  of 
the  defendant,  before  Mr.  Thompson,  by  Mr.  Eoberts,  as  coun- 
sel for  the  defendant,  with  the  acquiescence  of  the  plaintiff, 
who  was  present  dnring  the  examination,  and  it  was  agreed 
between  the  plaintiff  and  Mr.  Koberts  that  Mr.  Clark  should 
have  the  right  to  afterwards  cross-examine  the  said  witnesses 
and  enter  objections  to  all  questions  in  the  direct  testimony, 
and  the  examination  was  adjourned  to  Kovember  3d.  On 
that  day  Mr.  Clark  appeared  and  cross-examined  the  said  wit- 
nesses, and  also,  in  conjunction  with  Mr.  Roberts,  signed  a 
atipnlation  in  writing,  dated  November  2d,  and  entitled  in  the 
Massachusetts  suit,  stipulating  and  agreeing  that  Mr.  Thomp- 
son might  be  appointed  as  special  examiner,  by  the  Court  in 
Massachusetts,  to  take  the  testimony  for  the  defendant,  in  the 
«uit,  in  New  York,  under  the  67th  Rule  in  Equity,  as 
amended.  After  the  adjournment  on  the  2d  of  November, 
and  on  that  day,  the  defendant  was  served  personally,  in  the 
street,  in  New  York,  after  he  had  left  the  building  where  the 
examiner's  office  was,  and  a  few  steps  therefrom,  vidth  a  sub- 
poena to  appear  and  answer  in  this  suit,  and  with  a  copy  of 
the  bill  and  other  papers  in  this  suit  and  notice  of  a  motion 
to  be  made  for  an  injunction  herein.  The  bill  in  this  suit  was 
ffled  November  2d,  and  is  a  bOl  for  the  infringement  of  the 
flame  letters  patent.  The  defendant  now  moves  to  set  aside 
the  service  of  the  subpoena  and  the  other  papers,  on  the 
ground  that  the  privilege  of  the  defendant  was  violated. 

•It  is  very  clear  that  the  motion  must  be  gi-anted.  The 
defendant  attended  as  a  party  before  the  examiner.  The  reg- 
ularity of  the  examination  was  recognized  by  the  attendance 
of  the  plaintiff,  by  the  arrangement  he  then  and  there  made 
for  future  cross-examination  by  Mr.  Clark,  and  by  the  ante- 
dated written  stipulation  which  Mr.  Clark  signed  the  next 
day.  The  examination  was  thus  made  a  regular  proceeding 
in  the  suit  in  Massachusetts.  The  defendant  had  a  right  to 
attend  upon  it  in  person,  whether  he  was  to  be  himself  exam- 
ined as  a  vidtness  before  Mr.  Thompson  or  not,  and  he  had  a 


84  SOUTHERN  DISTRICT  OF   NEW  YORK, 

Plimpton  V.  Winslow. 

right  to  be  protected,  while  attending  upon,  it  from  the  service 
of  the  papers  which  were  served  in  this  suit.  He  attended  in 
good  faith,  the  examination  was  pending  and  unfinished,  and 
he  was  served  during  the  interval  of  an  adjournment.  The 
privilege  violated  was  a  privilege  of  the  Massachusetts  Court, 
and  one  to  be  liberally  construed,  for  the  due  administration 
of  justice.  (Junecm  Bomk  v.  McSpedaUj  5  BisaeU^  64; 
Brooks  Y.  Fa/njoell^  2  MoCrary^  220;  Bridges  v.  Shddoriy 
18  Blatohf.  C.  a  R,,  507,  515.) 

The  only  objections  urged  against  the  motion  are  technical 
ones — ^that  the  written  stipulation  was  not  signed  till  after  the 
service  was  made ;  that  there  was  no  order  as  to  the  examina* 
tion  entered  in  the  Massachusetts  Court ;  that  no  formal  writ- 
ten notice  of  the  intended  examination  was  served ;  that  the 
sitting  before  the  examiner  was,  therefore,  unauthorized; 
and  that  the  written  stipulation  cannot  have  an  effect  as  of  a 
date  earlier  than  November  3d.  If  these  objections  were  al- 
lowed to  have  force,  the  plaintiff  would  only  be  placed  in  the 
position  of  having,  by  the  prior  verbal  arrangements  made^ 
sanctioned  by  the  subsequent  action  of  himself  and  his  counsel 
thereunder,  decoyed  the  defendant  to  visit  New  York,  by  de- 
ceptive inducements,  and  thus  the  case  would  be  brought 
within  the  principle  laid  down  in  Union  Sugar  Refinery  v. 
Mathiesson,  (2  Clifford^  804,)  and  in  Steiger  v.  Bonny  (4  Fed. 
Rep.j  17.)  The  plaintiff  and  his  counsel,  by  what  they  said 
and  did,  represented  to  the  defendant  that  the  proceeding 
before  Mr.  Thompson  was  regular  and  orderly  and  authorized^ 
and  induced  him  to  rely  on  that  view.  He  had  a  right,  ad  a 
party  to  the  Massachusetts  suit,  to  attend  a  regular  examina- 
tion of  witnesses  in  that  suit,  in  New  York,  and  to  be  pro* 
tected,  while  so  attending,  from  the  service  of  the  papers  in 
this  suit.  The  plaintiff  is  estopped  from  raising  the  objec- 
tions as  to  regularity. 

The  motion  is  granted. 

K  N.  Elliot,  for  the  plaintiff. 

Wetmorey  Jenner  cfe  Thompson^  for  the  defendant. 


KOYEMBER,   1881.  85 


Brooks  V.  Bailey. 


Chables  J.  Sbooks 
Edwin  C.  Bailey.    In  Equitt. 

To  ft  bill  in  equity  brought  in  the  Circnit  Court  for  the  District  of  Vermont, 
ftlle^Dg  that  the  plaintiff  was  a  citizen  of  Maseachosetts  and  the  defendant  a 
citixen  of  Vermont,  the  defendant  pleaded  that  he  was  a  citizen  of  New 
Hampshire ;  Hdd,  that  the  plea  was  bad. 

The  Act  of  March  3d,  1876,  (18  IT.  &  Stat,  at  Large,  470,  §  1,)  extends  the 
jarisdiction  to  snits  between  citizens  of  different  States,  without  requiring 
either  party  to  be  a  dtizen  of  the  State  where  the  salt  is  brought. 

(Before  Whbklkb,  J.,  Vermont,  November  28th,  1881.) 

Wheeleb,  J.  This  is  a  bill  in  equity  in  which  the  orator 
sets  himself  np  as  of  Boston,  in  the  State  of  Massachusetts, 
and  a  citizen  of  that  State,  and  the  defendant  as  of  Stowe,  in 
the  State  of  Yermont,  and  a  citizen  of  that  State.  The  de- 
fendant has  pleaded,  that,  at  the  time  of  the  bringing  of  the 
bill  he  was,  and  now  is,  a  citizen  of  the  State  of  New  Hamp- 
shire, and  that  neither  he  nor  the  orator  then  was,  or  now  is, 
a  citizen  of  the  State  of  Vermont ;  and  this  plea  has  been 
argued.  £j  the  provisions  of  the  Constitution  the  judicial 
power  of  the  United  States  was  made  to  extend  to  controver- 
Bies  between'  citizens  of  different  States.  {Art.  111^  sec.  2.) 
By  §  11  of  the  Judiciary  Act  of.  September  24th,  1789,  (1  U. 
&  Stat,  at  Large^  78,)  Congress  conferred  upon  the  Circuit 
Courts  jurisdiction  of  all  suits  of  a  civil  nature,  at  common 
law  or  in  equity,  of  the  required  amount,  between  a  citizen  of 
the  State  where  the  snit  is  brought  and  a  citizen  of  another 
State.  {Rev.  Stat^  §  629.)  At  the  same  time  it  was  provided 
that  no  civil  suit  should  be  brought  therein,  against  an  inhab- 
itant of  the  United  States,  by  original  process,  in  any  other 
district  than  that  whereof  he  should  be  an  inhabitant,  or 
wherein  he  should  be  found,  at  the  time  of  serving  the  writ. 


86  VERMONT, 


BrookB  V.  Bailej. 


{Bev.  Stat.j  §  739.)  These  provisions  oontinned  in  force  nntil 
the  Act  of  March  3d,  1875,  (18  U.  S.  Stat,  at  Large,  470.)  The 
former  was  the  law  which  conferred  jurisdiction  in  this  clasa 
of  cases;  the  latter  was  a  limitation  upon  the  place  where 
snits  might  be  brought,  for  the  ease  of  defendants.  Both 
were  operative  in  determining  where  the  place  might  be* 
{McMickm  v.  WM,  11  P^.,  25.)  The  Act  of  March  3d, 
1875,  extended  the  jurisdiction  to  all  suits  of  a  civil  nature  at 
common  law  or  in  equity,  of  the  required  amount,  in  which 
there  should  be  a  controversy  between  citizens  of  different 
States,  without  limiting  it  to  depend  at  all  upon  citizenship  of 
either  party  in  the  State  where  the  suit  shoald  be  brought^ 
but  retained  the  limitation  upon  the  bringing  of  suits  in  other 
Districts  than  that  whereof  the  defendant  should  be  an  inhab- 
itant or  in  which  he  should  be  found.  It  has  been  argued 
that,  because  this  limitation  is  in  sabstantially  the  same  lan- 
guage in  the  Act  of  1875  that  it  was  in  the  Act  of  1789,  it 
must  receive  substantially  the  same  construction  that  it  had 
always  borne.  This  would  be  correct  if  it  was  to  be  applied 
to  the  same  jurisdiction  otherwise  conferred,  but  it  is  not. 
This  provision  in  the  Act  of  1789  was  only  to  be  applied  in 
determining  in  which  District  of  the  two  States,  between 
whose  citizens  jurisdiction  of  suits  was  given,  the  suit  must 
be  brought.  In  the  Act  of  1875  it  is  to  be  applied  in  de- 
termining in  which  District  of  all  the  States,  between  the  dt* 
izens  of  any  two  of  which  jurisdiction  of  suits  is  given,  the 
suit  must  be  brought.  Under  the  latter  Act,  this  Court,  in 
common  with  other  Circuit  Courts,  has  jurisdiction  of  all 
suits,  of  the  required  amount,  between  citizens  of  different 
States,  among  all  the  States,  while  under  the  former  it  had 
jurisdiction  only  of  suits  between  citizens  of  this  State  and 
those  of  some  other  of  all  the  States.  The  suit  could  be 
brought  only  in  the  District  where  the  defendant  resided  or 
was  found,  under  either.  That  this  defendant  was  found  in 
this  District  when  the  process  was  served  is  not  denied,  and, 
therefore,  the  right  to  bring  the  suit  in  this  District  is  not 
denied. 


DECEMBER,  1881.  87 


The  Narragmnsett 


The  plea  is  overruled,  and  the  defendant  must  answer  over 
by  the  January  rule-day. 

EZeazar  JS.  Hard,  for  the  plaintiff. 

George  WUkins  and  Hen/ry  BaUard,  for  the  defendant. 


The  Nabsagansett. 

A  tehooner  and  a  itoamer  coffided.  The  sohooner^s  side  lights  were  hnrning, 
hut  not  properly,  and  were  not  seen  from  the  steamer,  though  those  on  her 
ware  ngilant  The  steamer  did  aU  that  it  was  incombent  on  her  to  do,  when 
she  diaooyered  the  schooner's  light.  The  schooner  did  not  exhibit  aoy  lighted 
torch,  although  she  saw  the  approach  of  the  steamer :  Hdd,  that  the  schooner 
was  iriionj  in  fiinlt. 

(Before  Blatcbfokd,  J.,  Connecticnt,  December  2d,  1881.) 

This  was  a  libel  in  rem.  filed  in  the  District  Court.  After 
a  decree  for  the  claimant,  the  libellants  appealed  to  this 
Court. 

Samuel  Z.  Warner^  for  the  libellants. 

Thomas  M,  Miller^  for  the  claimant. 

Blatohford,  J.  A  consideration  of  the  proofs  in  this 
case,  as  well  the  additional  proofs  taken  in  this  Court  as  those 
found  in  the  apostles,  leads  me  to  the  same  conclusion  arrived 
at  by  the  District  Court,  that  no  fault  is  shown  on  the  part  of 
the  Narragansett,  and  that  the  libel  must  be  dismissed. 

The  District  Judge  found  that  the  schooner's  green  and 
red  side  lights  were  properly  set,  that  is,  set  in  their  proper 
places,and  properly  screened,  the  green  on  the  starboard  side  and 
the  red  on  the  port  side,  and  that  they  were  burning.  He  did 
not  find  that  they  were  burning  properly.     On  the  contrary, 


88  CONNECTICUT, 


The  NarragaDBeit. 


he  finds  that  the  master  and  the  lookout  of  the  steamboat 
were  on  the  watch  for  lights,  and  were  careful  and  yigilant, 
and  were  in  the  exercise  of  dne  diligence,  and  yet  did  not  see 
any  light  on  the  schooner  till  close  upon  her ;  that,  if  the 
lights  on  the  schooner  had  been  visible,  those  persons  could 
have  seen  them ;  and  that  the  lights  were  not  capable  of  being 
seen.  He  also  finds  that  there  was  nothing  in  the  condition 
of  the  atmosphere  to  prevent  the  steamer  from  seeing  the 
schooner's  lights.  I  concur  in  those  conclusions.  The  stat- 
ute {Hev.  Stat,  U.  S.^  §  4,233,  HtUes  3  and  8)  requires  not 
only  that  sail-vessels  under  way  shall  carry  a  green  light  on 
the  starboard  side  and  a  red  light  on  the  port  side,  but  that 
those  lights  shall  be  '^  of  such  a  character  as  to  be  visible  on  a 
dark  night,  with  a  clear  atmosphere,  at  a  distance  of  at  least 
two  miles."  It  is  very  plain  that  the  schooner's  lights  did  not 
meet  such  requirement.  They  may  have  been  burning  and 
visible  to  those  on  the  schooner's  deck.  Sut,  for  some  cause, 
not  at  all  connected  with  the  vigilance  or  watchfulness  of 
those  on  board  of  the  steamboat,  the  schooner's  lights  were 
not  seen  by  them.  The  District  Judge  said,  that,  without  un- 
dertaking to  find  aflBrmatively  why  the  lights  were  not  visi- 
ble, he  found  simply  that  the  steamboat  was  in  the  exercise 
of  due  diligence,  and  that  the  lights  were  not  capable  of  being 
seen ;  and  that,  for  that  fact,  he  relied  much  on  the  appear- 
ance and  manner  of  the  master  of  the  steamboat,  which  im- 
pressed him  favorably,  and  that  the  master  was  for  several 
hours  continuously  before  the  collision  in  the  pilot  house,  in  at- 
tendance upon  his  duty,  and  that  it  was  his  business  and  duty 
to  look  out  for  lights,  and  that  there  was  no  inducement  to  be 
negligent  but  every  motive  to  be  careful.  These  considera- 
tions lead  me  to  a  concurrence  with  the  District  Judge.  The 
master  of  the  steamboat  was  using  a  glass  all  the  time  to 
search  for  lights.  The  glass  of  the  schooner's  green  lantern 
was  broken  in  the  collision.  Tlie  master  of  the  steamboat 
found  a  bit  of  it  and  says  that  he  considered  it  badly  smoked 
up,  that  it  was  damp  and  greasy,  and  that,  if  all  of  the  lan- 
tern was  in  that  condition,  it  was  not  fit  to  emit  light.     The 


DECEMBER,   1881.  89 


The  Narragansett 


green  light  -wbb  the  one  which  the  steamboat  would  have  seen 
if  the   schooner  was  on  the  course  claimed  by  the  schooner. 
Eerofiene  "was  burned  in  the  schooner's  lights.    No  light  from 
her  was  visible  to  the  two  persons  in  the  pilot  house  of  the 
steamboat,  or  to  the  bow  watchman  of  the  steamboat,  until  the 
steamboat  was    close  upon  the  schooner,  and  then  what  ap- 
peared to  be  a  dim,  colorless  light  od  the  schooner  was  seen 
by  those  on.  the  steamboat.    The  h'ght  not  being  seen  to  be 
green  or  red  was  taken  to  be  a  binnacle  light  in  the  cabin  of  a 
vessel  going   the  same  way  with  the  steamboat.    The  bow 
watchman  of   the  steamboat  says  that  a  kerosene  lamp  will 
naturally  get   blurred  on  the  top ;  that,  while  a  smoked  green 
lantern  wonld  seem  green  near  at  hand,  it  might  seem  with- 
out color  far  off ;  and  that  to  a  man  looking  at  its  smoked 
part  it  might  seem  colorless,  while  to  a  man  looking  upward 
to  it  it   w^onld  seem  green.    All  this  may  explain  why  the 
schooner'B  lights  were  not  seen,  though  it  is  not  necessary  the 
steamboat  should  do  so.     The  libel  alleges  that  the  schooner 
was   "  duly  lighted,"  that  her  green  and  red  lights  were 
"  brightly  burning,"  that  she  "  had  all  proper,  sufficient  and 
lawful  lights  set  and  burning,  as  aforesaid."    The  burden  is 
on  her  to  show  this,  and  she  has  not  done  so. 

The  steamboat,  on  discovering  the  schooner,  did  all  that  it 
was  incumbent  on  her  to  do.  On  the  view  she  had  of  the 
light  she  had  a  right  to  think  it  was  on  a  vessel  going  the 
same  way.  She  slowed  and  ported  so  as  to  go  by  on  what 
she  reasonably  believed  to  be  the  starboard  hand  of  the 
schooner.  Kale  21  in  §  4,233  provides  that  every  steam  ves- 
sel, when  approaching  another  vessel,  so  as  to  involve  risk  of 
collision,  shall  slacken  her  speed,  or,  if  necessary,  stop  and  re- 
verse. She  did  slacken  her  speed,  and  it  did  not  then  appear 
to  be  necessary  to  stop  or  to  reverse.  Afterwards,  as  soon  as 
danger  of  collision  appeared  from  the  sudden  coming  of  the 
sails  of  the  schooner  into  view  from  the  light  thrown  on  them 
by  the  head  light  of  the  steamboat,  the  latter  stopped  and 
backed,  and  backed  strong,  and  her  wheel  was  put  hard-a-port. 
She  could  do  no  otherwise  and  no  more. 


90  CONNECTICUT, 


The  NarragaDsett. 


There  is  another  point  in  this  case.     It  is  provided  bj 
§  4,234  of  the  Revised  Statutes, that  every  sail  vessel,  shall,"  on 
the  approach  of  any  steam  vessel  during  the  night-time,  show 
a  lighted  torch  upon  that  point  or  quarter  to  which  such  steam 
vessel  shall  be  approaching."    The  schooner  saw  the  approach 
of  the  steamboat  from  a  long  distance  and  failed  to  show  the 
lighted  torch.    This  neglect  is  set  up  in  the  answer.    There 
was  a  torch  in  the  cabin  of  the  schooner,  ready  for  nse,  and 
easily  accessible.    The  mate  of  the  schooner,  who  was  at  the 
wheel,  did  not  know  that  there  was  a  torch  on  board.    The 
master  did.    He  states  that  he  never  saw  a  torch  used.    It  is 
quite  clear  that  the  torch  could  have  been  got  out  and  lighted 
and  used  in  time  to  have  prevented  the  collision.    A  mis- 
taken idea  seems  to  have  been  entertained  by  the  master  and 
the  mate  that  a  lighted  torch  was  to  be  used  only  when  a 
steam  vessel  was  approaching  from  behind.    This  steamboat 
was  not  approaching  from  behind,  if  the  testimony  of  those 
on  the  schooner  is  to  be  believed.    But  the  statute  has  no  such 
meaning.    The  lighted  torch  is  to  be  exhibited  to  the  ap- 
proaching steam  vessel  from  whatever  direction  she  is  comings 
and  is  to  be  shown  on  the  point  or  quarter  to  which  she  ia 
approaching.     It  was  clearly  a  fault  in  the  schooner,  con- 
tributing to  the  collision,  that  she  did  not  exhibit  a  toreb 
light.    {The  Eleanora,  17  Blatohf.  C.  C.  R.,  88.)    The  steam- 
boat had  a  right  to  rely  on  the  exhibition  of  a  torch  light,  if 
the  schooner  was  in  such  a  position  that  the  steamboat  was  ap- 
proaching her,  and  the  absence  of  the  torch  light  has  an  im- 
portant effect  in  determining  that  the  steamboat  was  not  neg- 
ligent and  observed  due  caution. 

The  libel  is  dismissed,  with  $121  25  costs  of  the  District 
Court,  as  taxed,  and  costs  to  the  claimant  in  this  Court. 


DEGEMBBR,  1881.  91 


Mejer  v.  Goodyear's  India  Rubber  Glove  Manafactoring  Co. 


Chbistophbs  Meyeb  and  Mabt  a.   Evans,  Adminis- 

T&ATSIX,  &0. 
VS. 

Ooodteab's  India  Eubbeb  Olovb  Manitfaotubino  Cohpant* 

Re-iasned  letters  patent  granted  to  Gbristopber  Meyer  and  Mary  A.  Eyana,  ad> 
miniatratriz,  Ac,  Noyember  17th,  1874,  for  an  "  improyement  in  iodia  mbber 
flhoes,"  the  original  patent  haying  been  granted  to  Christopher  Meyer  and 
John  Eyans,  as  inyentora,  Febroary  21st,  1871,  and  re-isaned  to  them  July 
16tb,  1872,  do  not  contain  new  matter,  the  part  of  the  invention  not  em- 
braced in  the  original  specification,  and  included  in  the  re-isane,  haying  been 
ahown  in  the  model  originally  deposited  in  the  Patent  Office. 

Tbe  re-iBsne  has  no  pateotable  novelty,  in  view  of  letters  patent  granted  to 
EKaa C.Hyatt  and  Christopher  Meyer,  January  17th,  1864:  and  the  same 
qoeatloii  waa  decided  in  Meyer  v.  PrUehard,  (12  Blotch/.  C,  C,  R.,  101.) 

(Before  Shipiian,  J.,  Connecticnt,  December  5th,  1881.) 

SuiPMAN,  J.  This  is  a  bill  in  equity  to  restrain  the 
alleged  infringement  of  re-issued  letters  patent,  granted  to 
the  plaintiffs  on  November  17tb,  1874,  for  an  "  improvement 
in  india  rubber  shoes."  The  original  patent  was  granted  to 
Christopher  Meyer  and  John  Evans,  as  inventors,  on  Febru- 
ary 21st,  1871,  and  was  re-issued  to  the  same  persons  on  July 
16th,  1872.    Infringement  is  not  denied. 

The  invention  was  brought  into  existence  by  the  fact  that^ 
in  1869  and  1870,  "  four-holed  "  india  rubber  ladies'  shoes,  or 
shoes  having  four  slits  upon  the  top  of  the  upper,  and  made 
to  imitate  a  lady's  sandal  with  interstices  in  the  upper,  were 
in  great  demand,  and  could  not  be  made  rapidly  enough  at 
the  factory  of  Mr.  Meyer.  The  edges  of  these  slits  or  holes 
were  turned  over  by  hand  and  were  then  cemented.  The 
idea  of  the  inventors  was,  instead  of  cutting  the  uppers  from 
a  plain  sheet  of  rubber,  and  then  cementing  the  ribs  upon  a 
plain  surface,  to  cut  the  uppers  from  a  sheet  which,  having 


92  CONNECTICUT. 


Meyer  v.  Goodyear's  India  Rabber  Glove  Manufactoring  Co. 

been  formed  when  in  a  plastic  state,  between  an  engraved 
roller  and  a  plain  roller,  shonld  be  thickened  np  into  cords  or 
ribs  at  the  desired  places  on  its  surface.  The  claim  in  the 
patent  w^  for  "  one  or  more  transverse  ribs,  in  rabber  shoes 
or  sandals,  formed  by  thickening  the  substance  itself  in  the 
lines  or  directions  thereof  while  in  the  sheets,  by  means  of 
rolling  dies,  as  and  for  the  purpose  described."  Before  the 
Invention,  the  edges  of  the  mouth  of  the  shoe  were  strength- 
ened and  made  to  present  a  finished  appearance,  by  bein^ 
turned  over  by  hand  and  cemented.  Sometimes,  cords  or 
strips  of  rubber  were  placed  by  hand  upon  the  edge,  and  were 
cemented.  As  a  part  of  the  invention,  but  not  included  in 
the  original  specification,  daim,  or  drawings,  the  inventors 
ribbed  the  edge  of  the  mouth  of  the  shoe  with  a  rib  formed 
in  the  manner  which  has  been  described.  The  first  re-issue 
was  obtained  for  the  purpose  of  including  this  rib  within  the 
patent.  The  claim  was  as  follows:  ^'As  a  new  article  of 
manufacture,  india  rubber  shoes,  with  strengthening  or  other 
ribs  homogeneous  with  the  substance  of  the  body,  formed  by 
thickening  up  the  said  substance  in  the  forming  of  the  sheet, 
substantially  as  specified."  The  validity  of  the  first  re-issue 
was  then  tested,  in  this  Circuit,  in  the  case  of  Meyer  v. 
Pritchard^  which  was  tried  before  Judge  Blatchford,  (12 
Blatchf.  G.  C.  li.,  101.)  The  Court  held  that  there  was  no 
patentable  novelty  in  the  invention,  in  view  of  the  patent 
granted  to  Elias  C.  Hyatt  and  Christopher  Meyer,  January 
17th,  1854.  The  first  and  third  claims  of  this  patent  were  as 
follows:  "Ist.  Producing  a  shoe  sole,  or  other  analogous 
manufacture,  in  india  rubber,  or  gutta  percha,  in  one  piece, 
having  variety  of  thickness  in  its  different  parts,  by  the  use  of 
rollers,  whose  surfaces  present  the  reverse  of  the  forms  to  be 
produced,  at  a  single  operation,  substantially  as  herein  de- 
scribed." "3d.  We  also  claim  such  soleing  or  analogous 
manufacture  in  continuous  sheets,  at  one  operation,  by  rolling, 
as  described."  The  present  re-issue  was  thereupon  granted, 
in  which  the  claim  is  limited  to  the  rib  around  the  mouth  of 
the  shoe  and  is  in  these  words :  "  As  a  new  article  of  mann- 


DECEMBER,  1881.  93 


Meyer  v.  Goodyear's  India  Rubber  GIoto  Manufacturing  Co. 

factnre,  india  rubber  shoes  having  a  strengthening  rib  around 
the  top  or  mouth  of  the  shoe,  (whether  with  or  \yithout  simi- 
lar ribs  or  other  parts  of  the  shoe,)  formed  not  by  turning 
over  the  edge  or  lapping  one  piece  upon  another,  but  thick- 
ened up  from,  and  homogeneous  with,  and  forming  a  part 
or  portion  of,  the  body  of  the  upper,  substantially  as  spec- 
ified." 

Divers  defences  are  set  up  in  the  answer;  the  two  which 
are  relied  upon  are  the  invalidity  of  the  re-issue,  because  it  is 
for  a  different  invention  from  that  described  in  the  original 
patent ;  and  lack  of  patentable  novelty,  in  view  of  the  Hyatt 
and  Meyer  patent  of  1854. 

It  is  substantially  admitted  by  the  plaintiffs  that  the  in- 
vention of  the  second  re-issue  was  not  suggested  or  indicated 
in  the  original  patent  or  drawings,  but  it  is  claimed  that  the 
invention  Tvas  shown  in  the  model  which  was  originally  de- 
posited in  the  Patent  Office,  and  that  this  fact  was  conclu- 
sively found  by  the  Commissioner  of  Patents  when  the  first 
re-issue  was  granted.    These  positions,  both  of  fact  and  law, 
are  strenuously  denied  by  the  defendant.    There  are  two 
models  in  the  Patent  Office,  purporting  to  be  the  models  be- 
longing to  this  patent.    One  merely  shows  the  ornamental 
buckle  or  rosette  represented  in  drawing  No.  3,  and  does  not 
contain  the  invention  of  the  re-issue.    The  other  does  not 
contain  the  invention  in  any  particular,  but  is  a  shoe  in  which 
the  cords  upon  the  vamp  and  around  the  mouth  were  placed 
by  hand  between  the  lining  and  the  rubber,  in  accordance 
with  the  system  described  in  a  rejected  application  of  John 
Evans,  one  of  the  patentees.    The  Evans  and  the  Meyer  and 
Evans'  applications  were  filed  on  the  same  day.    The  theory 
of  the  plaintiffs  is,  that  the  two  shoes  have  been  misplaced, 
and  that  the  Meyer  and  Evans'  shoe  was,  by  mistake,  placed 
with  the  models  of  the  rejected  applications,  and  was  destroyed 
in  the  fire  of  1877.    The  defendant  claims  to  have  proved 
that  the  models  are  the  same  that  were  originally  deposited  by 
the  applicants. 

Without  recapitulating  the  testimony  upon  this  question, 


94  CONNECTICUT, 


Meyer  v.  Ooodyear's  India  Bobber  Glove  MaDofactnrisg  Co. 

my  conclnfiions  are:  1st.  The  rib  around  the  month  of  the 
shoe  was  not  indicated  in  the  original  drawings,  or  in  the 
original  specification,  as  a  part  of  the  invention,  because 
neither  the  patentees  nor  their    solicitor  had  at  that  time 
any  idea  of  including  this  rib  in  the  patent.     In  view  of  the 
file  wrapper  and  contents  of  the  original  patent,  it  is  not 
credible  that  Mr.  Meyer,  who  was,  in  1871,  a  manufacturer 
well  acquainted  with  the  questions  arising  in  patent  litigation, 
should  have  directed  his  solicitor  to  include  the  cord  around 
the  mouth,  or  that  his  solicitor,  who  had  been  an  assistant  ex- 
aminer in  the  Patent  Office,  should  have  supposed  that  he 
was  including  that  part  of  the  invention.    The  conversations 
of  which  they  speak  undoubtedly  took  place,  but  at  a  later 
period ;  and  the  witnesses  are  mistaken  in  the  matter  of  dates. 
2d.  I  find,  from  the  testimony  of  Olmstead  and  Orairy,  that, 
before  the  application  for  a  patent,  a  new  engraved  roll  was 
made,  upon  which  a  light  cord  was  engraved  around  the  shoe 
mouth.  I  further  find,  that^  by  means  of  this  roll,  a  few  shoes 
were  made,  as  an  experiment  and  not  for  sale.     One  of  these 
shoes  must  have  been  taken  to  the  solicitor.    3d.  Either  this 
shoe,  or  one  made  upon  this  roll,  was  sent  to  the  Patent 
Office,  or  no  model  was  sent.     The  presumption  is,  that  a 
model  was  sent,  and  this  presumption  is  strengthened  by  the 
fact  of  the  first  re-issue.    Notwithstanding  the  opinion  of 
Mr.  Parkinson,  I  think  that  this  presumption,  coupled  with 
the  positive  evidence  in  its  support,  has  not  been  overcome. 
If  a  model  was  sent,  it  must  have  been  a  shoe  with  a  machine 
made  rib  around  its  mouth,  because  a  shoe  showing  the  ma- 
chine made  ribs  upon  the  upper  must  necessarily  have  had 
the  machine  made  ribs  upon  the  mouth.    Inasmuch  as  the 
part  of  the  invention  of  the  patentees  which  was  not  em- 
braced in  the  original  specification,  and  is  now  included  in 
the  re-issue,  was  shown  in  the  model,  the  reissue  is  not  invalid 
upon  the  ground  that  it  contains  "  new  matter." 

The  next  position  of  the  defendant  is,  that  the  patent  has 
no  patentable  novelty,  in  view  of  the  Hyatt  and  Meyer 
patent,  and  that  this  precise  question  was  decided  by  Judge 


DECEMBER,   1881.  95 


Meyer  v.  Goodyear's  India  Rubber  Gloye  ManitfieustariBg  Co. 

Blatchford  in  the  Pritchard  case,  and  is,  therefore,  now  the 
law  of  this  Circait.    The  plaintiffs  contend  that  the  decision 
was  upon  a  patent  claiming  india  rubber  shoes^  with  strength- 
ening CT  other  ribs,  homogeneous  with  the  surface  of  the 
body,  <fec.,  while  the  claim  of  this  re-issue  is  limited  to  india 
rubber  shoes  having  a  strengthening  rib  around  the  mouth  of 
the  shoe,  and  is  for  a  shoe  having  a  rib  formed  in  the  old 
way,  but  in  a  location  where,  by  reason  of  its  location,  a  new 
and  improved  article  of  manufacture  is  obtained.    It,  there- 
fore,  becomes  important  to  ascertain  the  scope  of  Judge 
Blatdbf ord's  decision.    He  says,  after  quoting  the  specification 
of  the  first  re-issue :  '^  The  invention  set  forth  in  this  specifi- 
cation,  as  shown  by  the  description  and  the  .claim,  is  to 
thicken  up  the  plastic  india  rubber,  in  desired  places,  in  the 
sheet,  as  the  sheet  is  being  formed  between  two  rolls,  by 
means  of  grooves  and  ribs  on  one  of  the  rolls,  the  other  roll 
being  plain,  so  as  to  leave  the  sheet  thicker  where  the  india 
rubber  has  entered  the  grooves  than  it  is  in  the  other  parts  of 
it,  and  thus  make  a  sheet  which  is  a  flat  plane  on  one  side, 
and  has  raised  ribs  or  projections  on  the  other  side.    The  ap- 
plication of  this  idea,  developed  in  the  specification,  is,  to  make 
these  ribs  or  projections  on  that  part  of  the  sheet  which  is  to 
be  used  to  form  the  upper  part  of  the  shoe — ^that  part  which 
covers  the  top  of  the  foot,  and  that  part  which  surrounds  the 
opening  through  which  the  foot  enters  the  shoe.    The  advan- 
tage set  forth  is,  that  the  ribs  or  projections  thus  made  are 
of  one  substance  with  the  rest  of  the  material,  and  in  homo- 
geneous connection  with  it,  and,  therefore,  better  and  more 
cheaply,  uniformly  and  perfectly  made  than  when  made  by 
pasting  on  strips  by  hand  to  form  the  ribs  or  projections. 
The  patented  invention  is  really  complete  when  the  sheet  is 
made  by  the  means  described,  ready  to  be  made  up  into  a 
shoe,  and  to  be  vulcanized.    The  process  of  making  the  sheet 
into  the*  shoe  and  vulcanizing  the  shoe  is  no  different  from 
the  process  used  to  make  a  sheet  into  a  shoe  and  vulcanize  the 
shoe  when  the  ribs  or  projections  are  formed  by  pasting  strips 
on  the  sheet  by  hand.''    The  head  note,  which  correctly  states 


96  CONNECTICUT, 


Meyer  v.  Goodyear's  India  Rubber  Glove  Manufactaring  Co. 

the  resnlt  to  which  the  Court  came,  is  in  the  following  lan- 
guage :  ^^  A  sheet  made  according  to  the  patent  to  Meyer  and 
Evans  is  made  strictly  in  accordance  with  the  directions  of  the 
earlier  patent,  without  any  addition.  The  sheet  of  the  earlier 
patent  was  used  to  cut  therefrom  the  sole  of  an  india  rubber 
shoe,  the  sheet  and  the  sole  having  a  variety  of  thickness  in 
different  parts,  and  being  formed  in  one  piece,  at  a  single  op- 
eration, by  the  use  of  rollers,  one  of  which  had  a  surface  the 
reverse  of  the  form  to  be  produced.  The  sheet  of  the  later 
patent  is  used  to  cut  therefrom  the  upper  part  of  an  india 
rubber  shoe,  such  sheet  and  such  upper  part  having  a  variety 
of  thickness  in  different  parts,  and  being  formed  in  the  man- 
ner above  described.  The  two  manufactures  are  analogous, 
the  sole,  in  the  one  case,  and  the  upper  part,  in  the  other, 
being  cut  and  made  from  the  sheet  in  the  same  manner ;  and 
the  shoe  with  the  upper  part  so  thickened  up  is  not  a  new 
article  of  manufacture,  in  view  of  the  prior  shoe  with  the  sole 
so  thickened  up."  It  is  evident,  from  the  tenor  of  the  opin- 
ion, that  the  Court  did  not  dwell  upon  the  fact  that  the  claim 
was  a  general  one,  for  ribs  wherever  situated,  whether  for 
ornament  or  for  utility,  but  examined  the  alleged  invention  as 
it  was  presented  in  the  specification  and  in  the  product  of 
the  factory,  i. «.,  ribs  upon  the  part  of  the  upper  which  covers 
the  top  of  the  foot,  and  the  part  which  surrounds  the  mouth 
of  the  shoe,  and  possessing  peculiar  advantages,  which  made 
the  shoe  a  better  and  stronger  and  cheaper  article  than  when 
the  ribs  were  cemented  by  hand.  The  Court  was  of  opinion 
that  the  new  shoe  was  a  double  use  of  the  old  invention,  and 
virtually  decided  the  point  in  this  case.  The  differences  be- 
tween the  second  and  the  first  re-issues  are  modifications  of 
statement  which  emphasize  the  advantages  of  a  rib  around 
the  mouth,  bnt  do  not  draw  the  invention  out  of  the  reach  of 
the  adverse  criticism  of  Judge  Blatchford.  The  claim  limits 
the  invention  to  one  locality,  but,  in  that  locality,  and  with 
the  benefits  of  the  rib  to  the  shoe  at  that  point,  patentability 
was  denied  in  the  decision  of  the  present  Circuit  Judge. 
Argument  against  the  propriety  of  holding  that  the  claim  of 


DECEMBER,  1881.  97 


Crandiil  v.  Wattera. 


the  present  re-lBsne  was  not  patentable,  bj  reason  of  the  earlier 
patent,  is  argument  against  the  propriety  of    the   decision 
which  was  made  in  the  Pritchard  case. 
The  bill  is  dismissed. 

S.  D.  Lcm  and  Benjamin  F.  Thwrston^  for  the  plaintiffs. 

Frederic    H.    Betta  and  George  Harding^  for  the  de- 
fendant. 


GbOBGB  L.   CBAl!a)AL 

John  Wattebs  Ain>  Sobebt  Lobboheb.    In  Egurrr. 

Re-issaed  letters  patent,  No.  6,794,  granted  to  Charles  H.  Dayie,  Mareh  7Ui, 
1876,  for  an  "  improyement  in  box  loops  for  carriage  tops,"  the  original  pat- 
ent, Na  96,004,  haying  been  granted  to  him  September  21st,  1869,  are  yalid. 

The  inyention  claimed  in  the  re-issue  is  a  box  loop  made  of  metal  so  thin  that 
the  loop  can  be  sfcraok  np  from  it  in  a  single  piece,  and  then  bent  into  shape, 
with  Ingt  projecting  from  the  loop  towards  the  surface  to  which  the  loop  is 
to  be  affixed,  so  that  the  loop  can  be  affixed  by  passing  the  logs  through  the 
material  and  clenching  them  down  tight  on  the  other  side  by  bending  them 
at  light  angles,  no  riyets  or  screws  being  used. 

All  the  said  characteristics  are  found  in  the  original  patent,  and  the  case  was  a 
proper  one  for  a  re-issna 

The  claim  of  the  re-issue  does  not  depart  from  the  inyention  shown  in  the 
originaL 

No  article  like  that  of  the  patent,  capable  of  being  taken  and  used  for  the  pur- 
poses for  which  the  patented  article  can  be  used,  without  adaptation  and 
alteration,  requiring  inyention,  existed  before. 

Prior  inyentions  distinguished. 

(Before  Blatohpobd,  J.,  Southern  District  of  New  York,  December  18th,  1881.) 

BiATOHFOBD,  J.  Thls  soit  is  bronght  on  re-isBued  letters 
patent.  No.  6,974,  granted  to  Charles  H.  Davis,  March  7th, 
1876,  for  an  "  improvement  for  box  loops  for  carriage  tops,"  the 
original  patent,  No.  95,004,  having  been  granted  to  him  Septem- 
ber  2l8t,  1869.  The  specification  of  the  re-issue  is  as  follows, 
Vol.  XX.— 7 


98  SOUTHERN  DISTRICT  OF   NEW  YORK, 

Crandal  v.  Watters. 

reading  what  is  ontside  of  brackets  and  what  is  inside  of 
brackets,  omitting  what  is  in  italics :  ''^Figwre  lis  a  perspec- 
tive view  of  the  loop  with  straps  amd  huckles  complete^  attached 
to  apiece  of  leather  or  section  of  a  carriage  top^  B.  Figv/re 
2  is  a  perspective  view  of  the  loop  ready  for  use.  Figure  8  is 
a  plate  or  cap  used  on  t/ie  back  or  inside  of  the  top  B^  for 
securing  the  loop  A.  Figure  ^is  a  cross  sectional  view  of' 
the  whole  complete.  Similar  letters  of  reference  indicate  cor- 
responding  parts.  My  invention  has  for  its  object  [an  im- 
provement in]  to  improve  the  construction  of  box  loops  for 
carriage  [tops,]  trimmings,  [&c.]  and  it  [It]  consists  in  form- 
ing the  loops  [in]  from  one  piece  of  metal,  either  cast  or 
struck  up*  [into  form  from  a  single  piece  of  plate  or  sheet 
metal,]  with  a  series  of  [spurs  or]  lugs  [projecting  from  the] 
upon  its  lower  edges  or  comers  next  the  si^face  to  which  they 
are  to  be  affixed^  which  [spurs  or  lugs]  Vugs  or  spurs  [pass] 
are  passed  through  openings  formed  in  the  carriage  top  [or 
curtain]  and  [are  clinched  down  tight  upon  it,  and  I  intro- 
duce] thorough  openings  in  a  metal  stiffening  plate  [on  the 
opposite  side]  placed  upon  the  under  surface  of  the  leather. 
[leather,  as  a  stiffening  plate,  through  which  the  spurs  pasa 
before  thej  are  clinched,  as  a  further  security  in  the  fasten- 
^gi  hy  which  form  and  construction  I  securely  affix  the  box 
loop  to  the  curtain,  &c.,]  The  lugs  are  then  bent  down  or 
clinched  upon  the  metal  plate^  thereby  securely  fastening  the 
box  loop  in  place  without  the  employment  of  rivets  or  screws. 
Box  loops,  as  usually  constructed,  are  made  of  leather,  and 
either  sewed  or  riveted  in  [place.]  place^  and  [They]  are  liable 
to  be  bent  out  of  shape  and  torn  from  [their  fastenings ;]  the 
ri/oets.  [and  this]  This  method  [mode  of  construction  and 
application]  is  [slow  and]  expensive,  requiring  the  labor  of 
skilled  workmen,  while,  by  my  improvement,  the  box  [loop 
can  be]  is  easily  applied  [by  any  one]  and  [is]  not  liable  to 
get  out  of  order.  In  the  accompanying  drawings  [which 
form  a  part  of  this  description.  Figure  1  is  a  perspective  view 
of  the  loop,  either  cast  or  struck  up  from  thin  metal,  affixed 
in  place  with  buckles  complete.    Fig.  2  is  a  perspective  view 


DECEMBER,  1881.  99 


Crandal  v.  Waiters. 


of  the  loop  detached.    Fig.  8  is  the  stiffening  plate  C]  A  is  a 
metal  loop,  either  cast  or  struck  up  from  [thin]  sheet  metal, 
preferably  the  latter.  Patter,  which]  When  formed  of  eheet 
metal  the  Uanke  are  cut  out  by  suitable  dies,  [with]  leaving 
epurs  or  lugsy  [lugs  or  spurs  formed  at]  H  H  upon  [the]  two 
[sides]  opposite  edges.     [The  loop  is  then]  They  are  bent  into 
the  form  [and  stamped  or  embossed,  as  in  Figs.  1,  2,  or  other- 
wise, which  completes  the  manufacture  of  the  loop,  which  is 
then  ready  to  be  aflSxed  in  its  place  B,  Fig.  1.     To  apply  this 
loop  to  a  carriage  top,  or  elsewhere,  the  spurs  or  lugs  H  H  H 
are  thrust  through  holes  or  slits  made  therefor  in  the  leather, 
and  the  ends  are  bent  and  clinched  down  upon  the  other  side. 
BucUes  may  be  affixed  to  their  place  on  B,  a^  in  Fig.  1,  in 
any  convenient  way,  and  the  loop  put  over  them  and  affixed 
to  B.    As  an  additional  security,  plates,  C,  (see  Fig.  3,)  are 
employed  on  the  opposite  side  of  the  curtain,  to  stiffen  and 
support  the  fastenings  or  spurs  H,  which  are  clinched  doMm 
on  them  after  passing  through  openings  therein  for  the  pur- 
pose.] shovm  in  Fig.  2,  to  produce  the  loop.    D  is  a  strap  or 
gtrapSy  each  end  pasm^g  a/round  and  through  the  buckle  Ey 
and  securedy  in  any  proper  man/nery  to  the  piece  B  of  the 
carriage  top.    The  piece  B  is  provided  with  a  series  of  holes 
upon  ecush  side  of  the  strap  D,  corresponding  in  number  and 
position  to  the  spurs  S  upon  the  loop.     The  loop  is  applied 
to  the  piece  B  by  passing  the  spurs  through  these  holesy  as 
shown  in  the  dra/mngy  and  through  holes  X  X formed  in  the 
metal  plate  Cy  laid  against  the  inner  surface  of  the  piece  B. 
The  higs  are  then  bent  down  or  clinched  upon  the  surface  of 
this  platCy  thereby  firmly  securing  the  loop  in  place  without 
the  aid  qfrivetsP    Heading  in  the  foregoing  what  is  outside 
of  brackets,  including  what  is  in  italics,  and  omitting  what  is 
inside  of  brackets,  we  have  the  specification  of  the  original 
patent.    The  claim  of  the  re-issue  is  as  follows :  ''  The  box 
loop  A,  formed  out  of  thin  plate  metal,  as  described,  with  the 
lugs  or  spurs  H  projecting  therefrom,  to  affix  it  to  a  carriage 
top,  either  with  or  without  the  plate  C,  substantially  as  and 
for  the  purposes  specified."    The  claim  of  the  original  patent 


100  SOUTHERN  DISTRICT  OF  NEW  YORK, 


CraDdal  v.  Wattera. 


was  this :  "  The  box  loop  A,  when  formed  as  described,  with 
the  lugs  or  spurs  H  upon  its  edges,  and  applied  to  a  carriage 
top,  by  passing  said  lags  throngh  the  same,  and  through  the 
metal  plate  C,  and  then  bending  them  down  npon  the  sarface 
of  said  plate,  substantially  as  described,  for  the  purpose 
specified." 

It  is  apparent  that  the  article  specified  in  the  claim  of  the 
re-issue  is  to  be  (1)  a  box  loop ;  (2)  made  of  metal ;  (3)  the 
metal  so  thin  that  the  article  can,  if  desired,  be  struck  up 
from  it ;  (4)  the  metal  of  the  loop  to  be  a  single  piece,  bent 
into  shape ;  (5)  the  lugs  to  project  from  the  loop  towards  the 
surface  of  the  material  to  which  the  loop  is  to  be  affixed ; 
(6)  the  loop  to  be  capable  of  being  affixed  by  passing  the  lugs 
through  the  material  and  clinching  them  down  tight  upon 
the  other  side,  the  clinching  being  dope  by  bending  them  at 
right  angles,  and  no  rivets  or  screws  being  employed.  These 
characteristics  are  all  found  in  the  specification  of  the  re-issue 
in  connection  with  its  claim.  They  are  all  found  in  the 
apecitication  of  the  original  patent  The  drawings  of  the 
two  patents  are  the  same.  The  model  filed  with  the  applica- 
tion for  the  original  patent  shows  all  the  foregoing  character- 
istics. The  claim  of  the  original  patent  was  so  framed  as  to 
fieem  to  require  that  the  loop  should  be  actually  applied  to  a 
carriage  top,  in  order  to  infringe.  It  also  required  that  the 
metal  plate  C  should  be  used  in  such  application.  Makers  of 
loops  were  not  makers  of  carriages,  and  it  was  obvious  that 
the  invention  was  really  of  the  loop  ready  to  be  affixed,  and 
that  the  inventor  was  entitled  to  have  a  claim  which  would 
reach  the  maker  of  the  loop.  Besides,  even  if  the  claim  of 
the  original  would  have  extended  to  the  maker  of  the  loop,  it 
might  have  been  questioned  whether  it  would  reach  him  when 
he  made  a  loop  without  the  plate  C ;  and  it  was  plain  that 
that  was  only  a  stifieuing  or  strengthening  plate,  an  adjunct, 
making  the  article  better,  perhaps,  but  yet  not  of  the  essence 
of  the  invention.  The  case  was,  therefore,  one  for  a  re-issue. 
It  is  objected  that  the  specification  of  the  original  patent 
says  that  the  series  of  lugs  is  on  the  lower  edges  of  the  loop, 


DECEMBER,  1881.  101 


Crandal  v.  Watters. 


that  is,  projecting  from  the  lower  edges  of  the  long  parallel 
sides  of  the  loop  and  in  the  same  plane  with  such  sides.  The 
drawings  and  model  show  such  a  constmction.  The  re-issne 
says  that  the  Ings  project  from  the  edges  or  comers  next  the 
Bar&ce  to  which  they  are  to  be  affixed.  The  plaintiff's  loop 
has  an  open  bottom,  the  metal  being  only  on  the  top  and  the 
sides.  The  defendants  make  one  form  of  loop  with  a  closed 
bottom,  anid  with  Ings  punched  out  of  the  bottom  at  three 
aides  of  the  lug,  and  bent  down  at  the  fourth  side,  ready  for 
use,  and  standing  at  right  angles  to  the  sides  of  the  loop  and 
in  the  same  plane  with  each  other.  To  maintain  non-in- 
fringement, and  yet  enable  themselves  to  appropriate  the  real 
invention,  they  contend  that  the  claim  of  the  re-issue  is  a 
departure  from  the  invention  shown  in  the  original,  (1)  in 
making  it  necessary  only  that  the  lugs  should  project  from 
the  loop,  without  limiting  them  to  being  arranged  as  in  the 
drawings,  on  the  lower  edges  of  the  sides ;  (2)  in  making  it 
necessary  only  that  the  lugs  should  be  used  to  affix  the  loop, 
without  its  being  necessary  to  use  them  by  putting  them 
through  the  carriage  top ;  (8)  in  making  it  optional  to  use  the 
plate  0.  It  is  clearly  a  mere  formal  alteration,  and  within 
the  invention,  to  put  on  the  closed  bottom  and  make  the  lugs 
project  from  it,  instead -of  making  them  project  from  the 
edges  of  the  sides.  The  closed  bottom  or  fourth  side  is  a 
useless  expenditure  of  labor  and  material,  so  far  as  the  real 
invention  and  the  employment  of  it  are  concerned.  The 
defendants'  lugs  project  in  a  manner  entirely  equivalent ;  and, 
if  the  claim  of  the  re-issue  had  said,  as  did  the  claim  of  the 
original,  that  the  loop  had  lugs  on  its  edges,  it  would  have 
been  proper  to  say  that,  for  all  practical  purposes,  the  defend- 
ants' lugs  were  upon  the  edges,  the  variation  being  immaterial. 
The  claim  of  the  re-issue  is  not  capable  of  the  construction 
that  the  lugs  are  to  be  used  without  putting  them  through 
the  carriage  top.  It  was  no  departure  and  no  new  matter  to 
make  the  use  of  the,  plate  C  optional.  To  say  that  the  lugs 
of  the  patent  project  from  the  edges  or  comers  next  the  sur- 
face to  which  they  are  to  be  affixed  is  just  as  accurate  a 


102  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Crandal  v.  Wattara. 

description  of  them  as  to  saj  that  they  are  upon  tiie  lower 
edges  of  the  loop.  It  is  from  the  edges  next  the  surface  to 
which  the  Ings  are  to  be  affixed  that  the  lugs  project.  There 
is  no  statement  in  the  re-issue  that  the  lugs  are  not  to  project 
from  the  edges,  and  calling  the  edges  comers  does  not  alter 
their  location.  It  is  plain  that  the  forms  of  loop  shown  in 
"  complainant's  exhibit  2  "  and  in  "  complainant's  exhibit  3  " 
infringe  the  claim  of  the  re-issue,  and  that  the  re-issue  is  not 
open  to  the  objection  that  it  is  not  warranted  bj  the  original 
patent. 

The  remaining  question  is  that  of  novelty.  Various  old 
devices  are  introduced,  wherein  sheet  metal  prongs  or  lugs 
projecting  through  a  material  such  as  leather  or  paper,  and 
clinched  by  bending  them,  held  and  secured  the  metal  or 
other  article  to  which  they  were  attached  on  the  other  side  of 
the  material.  This  idea  was  old,  and  was  embodied  and  used 
by  Davis.  But  no  article  like  the  plaintiff's,  capable  of  being 
taken  and  used  for  the  purposes  for  which  the  plaintifiPs  can 
be  used,  without  alteration  and  adaptation,  requiring  inven- 
tion, existed  before.  Almost  all  inventions,  at  this  day,  that 
become  the  subjects  of  patents,  are  the  embodiment  and 
adaptation  of  mechanical  appliances  that  are  old.  In  that 
consists  the  invention.  When  the  thing  appears,  it  is  new 
and  useful.  No  one  saw  it  before,  no  one  produced  it  before, 
it  supplies  a  need,  it  is  at  once  adopted,  all  in  the  trade  desire 
to  make  and  use  it,  yet  it  is  said  to  have  been  perfectly 
obvious,  and  not  to  have  been  patentable.  Where  an  article 
exists  in  a  given  form  and  applied  to  a  given  use,  and  is  taken 
in  substantially  the  same  form  and  applied  to  an  analogous 
use,  so  as  to  make  a  case  of  merely  double  use,  there  is  no 
invention.  But  it  is  very  rarely  that  a  thing  of  that  kind 
secures  a  patent. 

A  patent  to  Joseph  E.  Ball,  No.  20,246,  granted  May  18th, 
1868,  for  a  mode  of  attaching  the  traces  of  harness  for  horses 
to  the  draught  plates  or  straps,  is  adduced.  Ball's  apparatus 
could  never  be  used  as  a  loop  for  a  carriage  top.  The  metal 
was  not  so  thin  that  it  could  be  practically  struck  up  from  a 


DECEMBER,   1881.  103 


Crandal  v.  Waiters. 


Bingle  piece  and  be  bent  into  shape.  The  lugs  conld  not  be 
practieailj  clinched  by  bending  them,  bnt  were  secured  as 
rivets,  by  a  process  entirely  inapplicable  to  the  use  of  a  loop 
on  a  carriage  top. 

A  patent  granted  to  Sobert  Meyer,  No.  61,628,  January 
20th,  1867,  for  a  buckle  fastening,  is  relied  on.  That  does 
not  show  lugs  clinched  by  bending,  but  shows  only  pins 
secured  by  riveting.  For  some  purposes,  in  considering 
questions  arising  on  letters  patent,  bent  lugs  and  riveted  pins 
may  be  the  equivalents  of  each  other,  but  in  considering  the 
question  of  the  novelty  of  the  plaintiff's  loop,  riveted  pins 
are  not  the  equivalents  of  the  bent  lugs.  The  Meyer  device 
could  not  be  used  in  place  of  the  Davis  device  without  adap- 
tation requiring  invention. 

The  defendants  also  introduce  a  patent  granted  to  Charles 
H.  Littlefield,  No.  67,322,  July  30th,  1867,  for  an  improve- 
ment in  breast-plates  for  harnesses.  It  is  a  piece  of  metal 
bent  into  a  loop  at  one  end  to  hold  a  buckle,  and  to  allow  the 
tongue  of  the  buckle  to  pass  through  a  slot  made  in  such 
bent  end,  and  having  wings  or  projecting  pieces  turned  over 
so  as  to  overlap  a  harness  strap.  This  could  not  be  used  as  a 
substitute  for  the  plaintiff's  loop  without  invention.  It  is 
easy  after  the  desired  thing  is  obtained  to  see  how  an  old 
thing  could  have  been  adapted  or  altered. 

The  Ball,  the  Meyer,  and  the  Littlefield  patents  were  all 
of  them  considered  by  the  Patent  Office,  in  granting  the  orig- 
inal Davis  patent,  and  the  Ball  patent  was  again  considered  by 
it  in  granting  the  re-issue,  as  appears  by  the  record. 

The  defendants  also  adduce  English  patent  No.  1,204, 
dated  May  13th,  1859,  to  William  S.  Thomson,  for  "improve- 
ments in  the  manufacture  of  hooped  skirts."  Their  expert, 
with  the  Davis  device  and  the  Thomson  device  before  him, 
has  cut  away  parts  of  the  former  and  claims  to  have  converted 
it  into  the  latter.  It  may  not  be  difficult  for  ingenuity,  with 
both  articles  in  view,  and  with  the  problem  given  to  convert 
the  later  one  into  the  earlier  one,  to  do  so.  But,  the  inventor 
of  the  earlier  one  had  only  that  one  and  did  not  produce  the 


104  SOUTHERN  DISTRICT  OP  NEW  YORK, 

Crandal «.  Watten. 

later  one.  There  is  nothing  in  the  Thomson  device  to  sug- 
gest the  Davis  box  loop.  It  required  adaptation  and  inven- 
tion to  convert  it  into  the  box  loop.  An  exact  reproduc- 
tion, in  a  model,  of  figure  8  of  the  drawings  of  the  Thomson 
patent  shows  that  there  is  no  identity  between  it  and  the 
Davis  structure. 

The  French  patent  to  Fransson,  No.  25,417,  granted  No- 
vember 15th,  1855,  for  a  clinched  fastening  for  gloves,  may 
also  be  dismissed.  It  contains  several  features  which  are 
availed  of  in  the  Davis  loop,  yet  to  pass  from  it  to  that  re- 
quired adaptation  beyond  that  existing  in  a  mere  double  use. 

It  is  not  necessary  to  allude  to  the  numerous  other  old 
patents  introduced  by  the  defendants.  The  foregoing  remarks 
apply  to  all  of  them,  and  also  to  the  alleged  prior  structures 
respecting  which  oral  testimony  is  given.  Attention  is 
directed  by  the  defendants  to  an  exhibit  of  theirs  marked 
"  Bolt  guide  and  catch,^'  alleged  to  represent  a  prior  struc- 
ture. The  exhibit  is  not  claimed  to  be  a  structure  which  was 
actually  made  before  Davis'  invention,  but  only  to  represent 
one.  It  is  a  bolt  guide  consisting  of  a  metal  plate,  with  two 
three-sided  metal  loops  on  it,  each  loop  open  at  its  two  ends^ 
which  open  ends  are  lengthwise  of  the  plate,  this  plate  bein^ 
intended  to  be  placed  on  one  article,  and  of  another  metal 
plate,  with  one  three-sided  metal  loop  on  it,  open  at  its  two 
ends,  which  open  ends  are  lengthwise  of  the  plate,  this  plate 
being  intended  to  be  placed  on  an  adjoining  article.  Each 
loop  has  on  it,  projecting  downward  from  the  lower  edge  of 
each  vertical  side  of  it,  a  spur  or  lug,  integral  with  it,  and 
passing  through  a  slit  in  the  metal  plate,  and  bent  over  and 
clinched  down  on  the  opposite  side  of  the  plate.  The  exhibit 
in  question  is  introduced  by  a  witness  who  states  that  it  is 
^^  a  guide  for  a  sliding  bolt  and  a  catch  into  which  the  bolt 
would  slide  when  the  article  is  put  in  use,"  and  that  he  has 
known  articles  similar  to  it  to  have  been  in  public  use  and  on 
sale  in  the  United  States  for  nine  and  a  half  years  before 
January  15th,  1881.  This  would  carry  it  back  to  July  15tb, 
1871.     The  application  for  the  original  Davis  patent  was  filed 


DECEMBER,  1881.  105 


Crandal  v.  Wattera. 


April  22d,  1868.  Moreover,  the  attention  of  the  witness  was 
not  directed  to  the  feature  of  the  bending  over  of  the  Ings  to 
clinch  them,  as  dieftinct  from  riveting  them.  It  does  not  ap- 
pear that  the  metal  nsed  prior  to  Davis'  invention  in  making 
any  snch  bolt  guide  and  catch  was  so  thin  that  the  article 
could  be  or  was  struck  up  from  a  single  piece  of  metaL 
Another  witness  states  that  to  his  knowledge  bolt  guides  were 
made  on  the  plan  of  said  exhibit,  but  larger,  nearly  twenty 
years  before  January,  1881,  the  loops  being  fastened  to  the 
bottom  plate  twenty  years  ago  the  same  as  in  the  exhibit, 
clinched  to  the  back  of  the  plate.  On  cross-examination,  he 
says  that  they  were  made  of  heavier  metal,  some  of  them. 
He  then  testifies :  ^^  Cross-Q.  10.  Were  not  the  ends  of  the 
hasp  or  staple  headed  down  on  the  plate  by  a  blow  of  the 
hammer,  as  in  riveting,  instead  of  being  bent  over  or  clinched, 
as  in  defendant's  exhibit  '  Bolt  guide  and  catch  t '  A.  As 
a  general  thing,  they  were  made  in  that  way,  riveted  with  a 
hammer  to  form  a  clinch  ;  they  were  not  riveted  to  f oiin  a 
head  like  a  boiler  rivet,  but  were  bent  over  like  the  exhibit." 
Again,  he  says  that  they  were,  mostly  made  for  heavier  pur- 
poses than  the  exhibit.  The  defendants'  expert  says  that  the 
exhibit  could  be  attached  to  a  carriage  curtain.  The  plaintiff, 
in  his  testimony  as  a  witness,  gives  evidence  throwing  doubt 
on  the  view  that  the  lugs  in  any  bolt  guide  were  not  headed 
down  by  riveting.  On  the  whole  evidence  it  must  be  held 
that  the  prior  existence  of  the  bolt  guide  made  of  metal 
so  thin  that  the  article  could  be  struck  up  from  a  single 
piece  of  it,  and  with  lugs  clinched  by  bending  and  not  rivet-  • 
ing,  is  not  satisfactorily  shown.  Besides  all  this,  it  is  plain 
that  the  bolt  guide  never  did  and  never  would  suggest  Davis' 
box  loop. 

There  must  be  a  decree  for  the  plaintiff  for  an  account  of 
profits  and  damages  and  a  perpetual  injunction,  with  costs. 

JVeri  Pine  and  Charles  M.  Stone^  for  the  plaintiff. 


A.  V.  JSrissenj  for  the  defendants. 


106  NORTHERN  DISTRICT  OF  NEW  YORK, 

Loercher  v.  CrandaL 


BOBEBT  LOESOHBB  AND  JoHN   WaTTEBS 

VS. 

Geobge  L.  Obandal.    In  Equity. 

Re-issaed  letters  patent,  No.  7»1 29,  granted  to  Charles  Schaeasler,  May  S8d,  1876, 
for  an  "  improvement  in  buckle  fastenings,"  the  original  patent,  No.  61,626, 
haying  been  granted  to  Robert  Meyer,  as  inventor,  January  29th,  1867,  are 
yalid,  and  are  infringed  by  a  buckle  fastening  made  in  accordance  with  the 
description  contained  in  letters  patent  No.  206,298,  granted  to  George  L 
Crandal,  July  28d,  1878. 

The  patented  device  and  the  infringing  device  explained. 

An  agreement  by  a  person  not  to  infringe  a  patent  in  the  future,  in  considera- 
tion of  a  release  for  past  infringement,  does  not  authorize  a  recovery  there- 
after for  such  past  infringement,  in  case  of  future  infringement. 

(Before  Blatobfobd,  J.,  Northern  District  of  New  York,  December  18th,  1881.) 

Blatohfobd,  J.  This  siiit  is  brought  on  re-issaed  letters 
patent,  No.  7,129,  granted  to  Charles  Schnessler,  May  23d, 
1876,  for  an  *^  improvement  in  buckle  fastenings,"  the  orig- 
inal patent,  JSTo.  61,628,  having  been  granted  to  Robert  Meyer, 
as  inventor,  January  29th,  1867,  for  seventeen  years  from 
January  19th,  1867.  The  specifications  of  the  re-issue  and 
of  the  original  are  so  variant  from  each  other  in  language, 
that  it  is  impossible  to  follow  the  one  in  the  other.  They  are 
as  follows : 

Sb-issue.  Obioinal. 

"  Figure  1  is  a  plan  view  of  "  The  nature  of    my  in- 

my  improved  fastening,  show-  vention   consists  in  the  em- 

ing  it  applied  to  the  back  cur-  j)loyment    of     two    metallic 

tain  and  back  stay  of  a  car-  cases,  one  of  which  acts  as  a 

riage.     Fig.  2  is  a  longitudi-  covering  for  the  end  of  the 

nal  central  section    thereof,  strap  which  passes  into  the 

Fig.   3  is  an   inverted  plan  buckle,  and  is  provided  with 

view  of  the  shell  or  case  to  pins,  which  pass  through  the 


DECEMBER,   1881. 


107 


Loercher  v,  Crandal. 


which  the  strap  is  secured. 
Fig.  4  an  inverted  plan  view 
of  the  shell  or  case  to  which 
the  bncUe  is  secared.  Simi- 
lar letters  of  reference  indi- 
cate corresponding  parts  in 
all  the  figures.  This  inven- 
tion consists  in  the  employ- 
ment, in  connection  with  a 
strap  and  buckle,  of  two  hol- 
low cases  or  shells,  to  which 
said  strap  and  buckle  are  re- 
spectivdy  secured.  That  one 
of  the  two  cases  to  which  the 
bndde  is  secured  has  a  bot- 
tom plate,  to  which  the  buc- 
kle IB  attached  by  a  joint.  In 
the  drawing,  the  letters  A 
and  B  represent  two  pieces  of 
fabric,  or  pieces  of  the  back 
stay  and  back  curtain  of  a 
carriage,  to  which  my  inven- 
tion is  applied.  C  is  the  strap, 
and  D  the  buckle,  by  which 
strap  and  buckle  the  pieces 
A  and  B  are  to  be  held  to- 
gether. E  is  a  case  or  shell, 
made  of  sheet  metal  or  other 
suitable  material,  in  form  of 
an  elongated  inverted  cup, 
open  at  one  end  and  at  the 
bottom.  This  case  or  shell 
is  provided  with  downwardly 
projecting  pins,  a,  &,  which, 
when  they  are  passed  through 
the  fabric  or  piece  A,  serve 
to  &8ten  the  case  or  shell  in 


leather  or  straps  to  which 
it  is  fastened,  and  through 
two  perforated  plates,  to  one 
of  which  the  buckle  is  at- 
tached by  a  joint,  the  other 
being  used  as  a  plate  to  hold 
the  several  parts  together, 
when  the  ends  of  the  pins  are 
riveted  to  it;  the  other  case 
being  provided  with  pins, 
which  pass  through  the  leath- 
er and  strap  to  which  it  is 
fastened,  and  through  one 
metallic  plate,  upon  which 
the  ends  of  the  pins  are  riv- 
eted. *  *  *  I  construct 
my  buckle  fastening  of  the 
usual  description,  such  as  iron, 
copper  or  brass;  but  sheet- 
iron  or  tin-plate,  I  think, 
would  be  the  cheapest  and 
best.  In  said  drawings,  figure 
1  represents  a  plan  view  of 
the  fastening,  with  the  strap 
and  buckle  in  place.  It  is 
represented  in  the  position  it 
would  occupy  if  attached  to 
the  back  curtain  and  back 
stay  of  a  carriage.  Fig.  2  is 
a  back  view  of  the  case  that 
connects  the  strap  and  holds 
it  in  place.  Fig.  8  represents 
a  back  view  of  the  case  to 
which  the  buckle  is  attached. 
Fig.  4  is  a  vertical  section 
through  the  centre  of  fig.  1. 
The  same  letters  in  the  sev- 


108 


NORTHERN  DISTRICT  OF  NEW  YORK, 


Loercher  v.  Crandal. 


place  on  said  fabric.  One 
end  of  the  strap  0  is  inserted 
in  the  shell  E,  and  secured 
thereto  by  means  of  the  pins 
a,  if  in  the  manner  clearly 
shown  in  the  drawing.  F  is 
another  case  or  shell,  also 
made  of  sheet  metal  or  other 
goitable  material,  but  provid- 
ed at  the  bottom  with  a  plate, 
dy  which  forms  part  of  said 
case  or  shell  F.  At  the  open 
end  of  the  case  or  shell  F, 
the  bnckle  D  is  attached  by  a 
joint  to  the  plate  D,  as  shown. 
By  means  of  downwardly  pro- 
jecting pins,  e^  e^  with  which 
the  case  or  shell  F  is  provid- 
ed, the  same  is  fastened  to 
the  fabric  or  piece  B,  in  line 
with  the  case  or  shell  E,  as 
shown,  so  that  the  strap  0 
can  be  readily  buckled,  and 
its  loose  end  then  confined  in 
the  case  F,  as  clearly  shown 
in  fig.  2.  If  desired,  the  out- 
er end  of  the  case  F  may 
also  be  left  open,  so  that  the 
strap  may  be  passed  through, 
when  buckled.  The  cases  or 
shells  E  and  F  may  be  made 
of  suitable  sizes,  and  stamped 
in  dies  of  any  ornamental 
shape  or  form  desired,  and  can 
be  used  on  all  kinds  of  straps 
and  buckles.  In  place  of  the 
pins    hereinabove    specified. 


erai  drawings  represent  simi- 
lar parts  in  each.  A  and  B 
represent  either  two  straps  or 
a  piece  of  the  back  stay  and 
back  curtain  of  a  carriage.  O 
is  the  case  which  fastens  and 
holds  the  straps  E  firmly  to  the 
piece  A  by  means  of  the  pins 
F,  G,  and  plate  M,  as  shown 
in  the  section  fig.  4.  D  rep- 
resents the  case  to  which  the 
buckle  is  attached,  and  into 
which  the  end  of  the  strap  £ 
is  slipped  after  being  buck- 
led. E  is  the  buckle.  H,  H^ 
I  and  J,  in  fig.  8,  are  the  pins, 
which  fasten  it  to  the  piece 
B  by  means  of  plate  N,  as 
shown  in  section  in  fig.  4,  to 
which  the  ends  of  said  pins 
are  riveted  when  it  is  desired 
to  fasten  them  in  place.  R  is 
a  plate  to  which  the  buckle  is 
jointed.  The  case  0  is  also 
riveted  in  the  same  way  to 
the  plate  M,  which  holds  them 
more  firmly  in  place  than  by 
the  old  and  tedious  way  of  sew- 
ing ;  and,  at  the  isame  time,  it 
is  a  plain  and  more  pleasing 
ornament  to  the  carriage.  If 
desired,  the  end  of  the  case  D 
may  be  left  open,  so  that  the 
strap  may  be  passed  tlirough, 
when  buckled.  They  may  be 
made  of  various  sizes,  from 
the  half  inch  size  up  to  two 


DECEMBER,  1881. 


109 


Loercher  v.  CrandaL 


equivalent  fastening  means 
may  be  provided.  I  claim  as 
my  invention — 


inches,  and  stamped  in  dies 
of  any  ornamental  shape  or 
form  desired.  They  may  also 
be  osed  on  straps  of  any  kind 
as  well  as  for  harness  or  car- 
riage trimmings.  I  do  not 
claim  the  case  D  alone,  but 
what  I  do  claim  is— 

1.  The  combination  there- 
with of  the  pins  H,  H,  I,  J, 
or  the  equivalent  thereof,  and 
the  plates  B  and  N,  as  herein 
snbstantiaUy  described. 


2.  The  case  C,  the  pins  F, 
6,  and  plate  M,  for  fastening 
the  end  of  the  strap  in  place, 
as  described." 


1.  The  case  or  shell  E, 
made  with  an  open  bottom, 
and  provided  with  the  pins 
a,  h,  adapted  to  pass  throngh 
the  strap  and  firmly  hold  it 
in  place,  sabstantially  as  and 
for  the  purpose  herein  shown 
and  described. 

3.  The  case  or  shell  F, 
made  with  the  bottom  plate 
d^  and  combined  with  the 
buckle  D,  which  is  attached 
to  said  plate,  substantially  as 
specified. 

3.  The  case  or  shell  F, 
made  with  the  bottom  plate  dj 
and  with  the  projecting  pins 
e^  Bj  substantially  as  herein 
shown  and  described. 

4.  The  combination  of  the 
case  E  and  strap  0  with  the 
case  F  and  buckle  D,  sub- 
stantially as  herein  shown  and 
described." 

The  plaintiffs  claim  that  the  defendant  has  infringed 
claims  2,  3,  and  4  of  the  re-issue.  Prior  to  June  17th,  1878, 
the  defendant  made  and  sold  articles  like  exhibit  No.  1. 
Since  that  date,  he  has  not  made  or  sold  any  of  them.  By 
and  under  the  agreement  of  that  date  he  settled  and  paid  for 


110  NORTHERN  DISTRICT  OF  NEW  YORK, 

Loercher  v.  Gnmdal. 

all  those  articles.  Although,  by  that  agreement,  he  agreed 
not  to  make  any  buckle  loops  infringing  upon  said  re-issne, 
and  althoogh  that  engagement,  in  conjunction  with  his  con- 
tract to  pay  royalty  for  the  articles  before  made,  formed  the 
consideration  for  his  release  from  liability  for  the  making  and 
selling  of  those  articles,  yet  the  release  was  an  absolute  re- 
lease in  prcBsenti^  and,  even  though  he  may  subsequentlj 
have  infringed,  the  release  must  stand  till  formally  set  aside^ 
and  operates  to  exclude  from  this  suit  all  further  account- 
ability for  articles  like  Exhibit  No.  1,  such  release  being  set 
up  in  the  answer. 

The  defendant  admits  the  making  and  selling,  after  Au- 
gust let,  1878,  of  articles  like  Exhibit  No.  2.  The  sale  of 
articles  like  Exhibit  No.  4  is  also  proved.  Neither  No.  2  nor 
No.  4  are  covered  by  the  release.  The  sale  of  Articles  like 
Exhibit  No.  8  since  the  release  is  not  proved.  No.  2  and  No. 
4  being  the  only  structures  involved,  the  only  claims  of  the 
re-issue  which  need  be  considered  are  claims  2  and  3. 

Claim  2  requires  that  there  shall  be  a  case  or  shell  like 
the  case  or  shell  F ;  that  it  shall  have  a  bottom  plate  like  the 
bottom  plate  d;  that  such  case  or  shell,  having  such  bottom 
plate,  shall  be  combined  with  a  buckle  like  the  buckle  D ; 
and  that  such  buckle  shall  be  attached  to  such  plate.  The 
projecting  pins  for  attaching  the  case  or  shell  to  a  fabric  do 
not  appear  to  be  an  element  in  claim  2.  The  specification 
describes  the  case  or  shell  F  as  hollow,  as  made  of  sheet  metal 
or  other  suitable  material,  and  as  provided  at  the  bottom  with 
a  plate,  d,  which  forms  a  part  of  the  case  or  shell.  One  end 
of  the  case  or  shell  is  open  and  the  buckle  D  is  attached  to 
the  bottom  plate  at  that  end  by  a  joint  so  as  to  project  out- 
wardly. The  other  end  of  the  case  or  shell  is  either  open  or 
closed.  The  case  or  shell  is  provided  with  downwardly  pro- 
jecting pins,  which  start  from  the  bottom  plate  Mid  pass 
through  the  fabric  to  which  tlie  shell  or  case  is  to  be  attached 
and  serve  to  attach  the  shell  or  case  to  the  fabric.  Equivalent 
fastening  means  may  be  used  in  place  of  the  downwardly 


DECEMBER,  1881.  Ill 


Loercfaer  «.  Crandal. 


projecting  pins.  Claim  3  combines  the  case  or  shell  F,  the 
bottom  plate  and  the  pins,  omitting  the  buckle. 

No.  2  has  a  hollow  case  or  shell,  like  F,  made  of  sheet 
metal,  and  provided  at  the  bottom  with  a  plate,  which  forms 
a  part  of  the  case  or  shell.  One  end  of  the  case  is  open  and 
the  other  is  dosed.  There  is  a  buckle  at  the  open  end,  bnt  it 
is  not  attached  to  the  bottom  plate  by  a  joint.  It  is  attached 
by  a  joint  to  a  short  piece  of  flat  sheet  metal,  so  as  to  project 
outwardly.  This  short  piece,  carrying  the  buckle,  is  of  two 
thicknesses,  the  metal  being  bent  to  form  the  joint  for  the 
buckle,  and  is  beneath  and  close  up  against  the  lower  surface 
of  the  bottom  plate.  In  order  to  secure  it  to  the  bottom 
plate,  there  is  a  third  flat  piece  of  metal,  lying  longitudinally 
underneath,  which  has  at  its  extreme  end  farthest  from  the 
buckle  an  integral  upwardly  projecting  pin  or  fln  which  enters 
a  hole  in  the  bottom  plate,  and  is  intended  to  be  bent  over 
and  down  and  clinched  inside  the  shell  against  the  upper  su> 
face  of  the  bottom  plate.  The  other  end  of  such  third  longi- 
tudinal piece  has  at  its  extreme  end  nearest  the  buckle  two 
intend  upwardly  pvojecting  pins  or  fins,  lying  in  line  side  by 
Bide  one  each  side  of  the  centre  of  its  width  and  extending 
each  from  near  such  centre  to  the  outer  edge,  each  of  which 
enters  and  passes  through  a  separate  liole  for  it  through  each 
of  the  two  thicknesses  of  the  short  piece  which  carries  the 
buckle,  (the  two  holes  for  each  pin  or  fin  being  coincident,) 
and  then  enters  a  separate  hole  for  it  in  the  bottom  plate, 
and  is  intended  to  be  bent  over  and  down  and  clinched  inside 
the  shell  against  the  upper  surface  of  the  bottom  plate.  Thus, 
when  the  pins  or  fins  are  in  place  and  clinched  the  buckle  is 
held  firmly  and  the  structure  becomes  a  unit. 

No.  4  has  a  hollow  jase  or  shell,  made  of  sheet  metal  and 
provided  at  the  bottom  with  a  plate,  which  forms  a  part  of  the 
case  or  shell.  Both  ends  of  the  case  are  open.  There  is  a 
backle  at  each  end,  not  attached  to  the  bottom  plate  by  a 
joint  A  buckle  is  attached  by  a  joint  to  each  end  of  a 
separate  longitudinal  plate,  which  is  longer  than  the  bottom 
plate.    Each  buckle  projects  outwardly.     Such  separate  plate 


112  NORTHERN  DISTRICT  OF  NEW  YORK, 

Loercher  v,  CrandaL 

is  for  a  distance  at  each  end  of  it  of  two  thicknesses,  the  metal 
being  bent  to  form  the  joint  for  the  bnckle,  and  is  beneath 
and  close  up  against  the  lower  surface  of  the  bottom  plate. 
In  order  to  secure  it  to  the  bottom  plate,  there  is  a  third  flat 
piece  of  metal,  lying  longitudinally  underneath,  and  some- 
what shorter  in  length  than  either  such  separate  plate  or  the 
bottom  plate,  which  has  at  each  extreme  end  of  it  two  integ- 
ral upwardly  projecting  pins  or  fins,  lying  in  line  side  by  side 
one  on  each  side  of  the  centre  of  its  width,  and  extending 
each  to  the  outer  edge,  each  of  which  enters  and  passes 
through  a  separate  hole  for  it  through  each  of  the  two  thick- 
nesses of  such  separate  plate  which  carries  the  two  buckles, 
(the  two  holes  for  each  pin  or  fin  being  coincident,)  and  then 
enters  a  separate  hole  for  it  in  the  bottom  plate  and  is  in- 
tended to  be  bent  over  and  down  and  clinched  inside  the  shell 
against  the  upper  surface  of  the  bottom  plate,  there  thus 
being  four  of  such  pins  or  fins.  So,  when  the  pins  or  fins  are 
in  place  and  clinched  the  buckles  are  held  firmly  and  the 
structure  becomes  a  unit. 

It  is  manifest  that  there  is  inyolved  ixi  claims  2  and  8  of 
the  re-issued  patent,  the  idea  of  a  hollow  case,  with  a  top,  two 
longitudinal  side  plates  and  a  bottom  plate,  all  forming  a 
unit  and  a  case,  the  case  having  such  bottom  plate  being,  in 
claim  2,  combined  with  a  buckle  attached  to  the  bottom 
plate,  and  having,  in  claim  8,  the  downwardly  projecting 
pins.  The  buckle  is  secured  to  the  case,  and  it  is  so  secured 
by  being  attached  to  the  bottom  plate.  The  strength  of  the 
structure,  as  a  whole,  composed  of  top,  sides  and  bottom 
plate  united  in  one,  is  availed  of  to  hold  firmly  the  buckle, 
through  the  attachment  of  the  buckle  to  the  bottom  plate. 
The  combination,  in  claim  2,  of  the  \»se  of  which  the  bot- 
tom plate  forms  a  part  with  the  buckle,  is  effected  by  attach- 
ing or  jointing  the  buckle  directly  to  the  end  of  the  bottom 
plate.  A  pull  on  the  buckle  cannot  result  in  displacing  any- 
thing, if  the  buckle  does  not  break,  without  displacing  the 
structure  as  a  whole.  In  claim  8,  the  case  of  which  the  bot- 
tom plate,  forms  a  part  has  the  downwardly  projecting  pins, 


DECEMBER,  1681.  118 


Loercher  v.  Crandal. 


and,  when,  by  means  of  them,  the  stmctnre  is  fastened  to  a 
fabric,  no  pnll  on  the  pins  against  the  structure  can  displace 
any  part  of  it  without  displacing  the  whole  of  it.  In  both 
claims,  the  fact  that  the  bottom  plate  forms  an  integral  part 
of  the  case  is  a  leading  feature. 

In  the  light  of  the  foregoing  suggestions,  an  examination 
of  No.  3  and  Ko.  4  shows  a  hollow  case,  with  a  top,  two 
longitudinal  side  plates  and  a  bottom  plate,  all  forming  a  unit 
and  a  case.  The  case  having  such  bottom  plate  is  combined 
with  a  buckle.  The  buckle  has,  for  all  practical  purposes, 
the  same  relation  to  the  bottom  plate  as  if  it  were  attached 
to  it.  The  combination  of  the  case  with  the  buckle  is  ef* 
f  ected  by  means  of  the  plate  carrying  the  buckle  end  of  the 
lower  flat  piece  of  metal,  and  the  pins  or  iins  on  the  latter. 
The  plate  which  carries  the  buckle,  being  an  additional  sep- 
arate plate,  must  be  fastened  in  some  way  to  the  bottom  plate 
of  the  case.  The  severance  makes  the  reunion  necessary, 
and  promotes  no  useful  result.  It  is  a  mere  mechanical 
change,  within  the  scope  of  the  principle  of  the  Meyer  struc- 
ture. When  the  parts  are  put  together,  and  the  pins  or  fins 
are  clinched,  the  case  or  shell  made  with  the  bottom  plate  is 
combined  with  the  buckle,  and' the  buckle  is  as  much  attached 
to  the  plate,  for  all  the  practical  purposes  of  the  structure,  as 
is  the  bnckle  in  the  Meyer  structure.  The  strength  of  the 
case,  as  a  whole,  composed  of  top,  sides  and  bottom  plate 
nnited  in  one,  is  availed  of  to  hold  flrmly  the  buckle,  through 
sacb  combination  of  the  case  with  the  buckle.  A  pnll  on 
the  bnckle  cannot  resist  in  displacing  anything,  if  the  bnckle 
does  not  break,  without  displacing  the  structure  as  a  whole. 
When  the  pins  or  fins  are  clinched,  the  case  of  which  the  bot- 
tom plate  forms  a  part  is  provided  with  downwardly  pro- 
jecting pins,  which  start  from  the  bottom  plate,  and,  after 
passing  through  the  bnckle  plate,  pass  through  the  fabric  to 
which  the  shell  or  case  is  to  be  attached,  and  serve  to  attach 
the  shell  or  case  to  the  fabric.  The  fact  that  the  pins  are  in- 
tegral with  a  longitudinal  piece  of  metal  on  the  other  side  of 
the  fabric,  makes  no  difference.  They  are  the  projecting 
Vol.  XX.— 8 


114  NORTHERN  DISTRICT  OF  NEW  YORK, 

Loercher  «.  CrandaL 

pins  of  Meyer,  in  that,  when  clinched,  they  project  from  the 
bottom  plate  towards  and  through  the  fabric,  and  fasten  the 
combined  case  and  buckle  to  the  fabric.  When  the  structure 
is  fastened  to  a  fabric  no  pull  on  the  pins  against  the  struc- 
ture can  displace  any  part  of  it  without  displacing  the  whole 
of  it.  The  same  results  follow  as  in  the  Meyer  structure, 
from  the  fact  that  the  bottom  plate  forms  an  integral  part  of 
the  case. 

The  defendant  has  a  patent,  granted  to  him  July  23d, 
1878,  No.  206,298,  under  which  he  claims  the  right  to  make 
No.  2  and  No.  4.  They  are  described  in  that  patent.  That 
patent  claims  (1)  the  third  flat  piece  of  metal,  with  its  integ- 
ral pins  or  fins,  in  combination  with  the  separate  buckle  plate 
having  holes  in  it  corresponding  with  the  pins  or  fins,  for  the 
purposes  of  securing  the  buckle  in  proper  relation  to  the  case ; 
(2)  the  combination  with  the  third  flat  piece  of  metal,  having 
its  integral  pins  or  fins,  of  the  separate  buckle  plate  and  the 
case  with  its  bottom  plate,  both  of  the  latter  having  holes  in 
them  coincident  with  said  pins  or  fins,  when  secured  to  a  cur- 
tain by  means  of  such  interior  clinching  of  the  pins  or  fins. 
It  may  be  that  these  claims  may  be  sustainable  for  their  spec- 
ialties, notwithstanding  prior  structures.  But  still  No.  2 
and  No.  4  embrace  points  of  construction  which  are  the 
equivalents  of  the  points  of  constraction  claimed  in  claims 
2  and  3  of  re-issue  No.  7,129.  Beyond  that,  what  is 
patented  by  No.  206,298,  is  only  an  improvement,  still 
involving  the  principle  of  what  is  claimed  in  said  claims  2 
and  3.  On  the  question  of  infringement,  features  of  con- 
struction  may  well  be  and  are  often  equivalents  of  prior 
patented  features,  because  involving  their  construction  and 
mode  of  operation,  though  going  further  and  containing  their 
own  patentable  features,  and  for  that  very  reason,  when  the 
question  of  the  novelty  and  patentability  of  such  further  fea- 
tures comes  up,  the  prior  existence  of  such  prior  patented 
features  does  not  make  them  the  equivalents  of  the  further 
features  so  subseqaently  patented,  in  such  sense  as  to  antici- 
pate the  latter.    An  iUustration  of  this  is  found  in  the  case 


DECEMBER,   1881.  115 


Loercher  v.  CraodaL 


of  Crandal  v.  Watters,  {omte^  p.  97,)  a  suit  brought  on  the 
Davis  patent,  decided  herewith. 

The  validity  of  the  re-issned  patent  is  attacked.  The 
drawings  of  the  original  and  the  re-issae  are  structnrallj  the 
eame,  although  the  lettering  is  changed  and  figures  2,  3  and  4t 
are  differently  numbered  in  the  two.  Criticism  is  made  on 
the  facts  that  the  original  speaks  of  ^'  metallic  "  cases,  and  the 
re-issue  of  '^  hollow  "  cases ;  that  the  original  speaks  only  of 
metallic  materials  while  the  re-issue  speaks  of  ^^  sheet  metal 
or  other  snitable  material ; ''  that,  in  the  original,  the  pins  are 
said  to  be  riveted  to  the  lower  plate  K,  after  they  have  passed 
through  the  curtain  and  through  the  plate  N,  so  as  to  fasten 
the  buckle  plate  E  to  the  curtain,  and  claim  one  of  the  orig- 
inal is  for  the  combination  of  the  case  and  the  pins,  or  their 
equivalent,  and  the  plates  E  and  N,  while  in  the  re-issue  the 
plate  N  is  not  lettered  in  the  drawings  and  is  not  mentioned 
in  the  text  or  in  the  claims,  and  the  statement  in  the  re-issue 
ia,  that  the  case  is  provided  with  downwardly  projecting  pins, 
which,  when  they  are  passed  through  the  fabric,  serve  to 
fasten  the  case  in  place  on  the  fabric.  Assuming  that  Meyer 
was  the  first  to  make  a  case  with  a  bottom  plate  forming  part 
of  it,  combined  with  a  buckle  attached  and  jointed  to  said 
plate,  and  furnished  with  pins  capable  of  attadiing  the  struc- 
ture as  a  whole  to  a  curtain,  it  is  immaterial  whether  the 
plate  N  is  used  or  not,  or  whether  the  pins  are  clinched  on 
that  plate  or  on  the  curtain,  or  whether  the  pins  are  of  such 
large  dimensions  that  they  have  to  be  clinched  by  hammering 
their  ends,  or  of  such  small  dimensions  that  they  can  be 
clinched  by  bending  them  over  even  with  the  fingers,  so  long 
as  the  pins  project  downward  from  the  bottom  plate  of  the 
case  and  go  through  the  fabric  and  are  clinched  on  the  other 
side  of  it.  This  re-issue  No.  7,129,  was  before  Judge  Wal- 
lace, in  this  Court,  in  the  case  of  Schuessler  v.  D(wiSy  (13  Off'. 
Oaz,y  1,011.)  He  there  says :  '^  The  description,  as  well  as 
the  drawings  and  model  accompanying  the  original  patent, 
clearly  point  out  the  invention  claimed  in  the  re-issue.  The 
improvement  consists  in  a  compact  device  embodying  a  loop, 


116  NORTHERN   DISTRICT  OF  NEW  YORK, 

Loercher  •.  Crandal. 

bottom  plate  and  buckle,  to  be  attached  to  a  strap  by  rivets 
or  an  equivalent  fastening.  In  my  view,  the  valuable  feature 
of  the  improvement  does  not  consist  in  the  method  by  which 
the  case  is  fastened  to  the  strap,  but  in  the  case  itself,  as 
forming  a  loop  and  buckle  combined,  and  its  adaptability  to 
being  fastened  by  various  methods  to  the  strap.  In  the  orig- 
inal patent,  the  claim  did  not  cover  the  combination  of  the 
buckle  vdth  the  case,  or,  speaking  more  accurately,  with  the 
bottom  plate  of  the  shell  of  the  case,  but  was  limited  to  a 
combination  of  the  pins  or  rivets  with  the  case.  It  was  the 
object  and  the  proper  o£Sce  of  the  re-issue  to  correct  this 
omission,  so  as  to  protect  the  patentee  to  the  full  extent  of 
his  invention."  Hie  defendant's  structure  in  that  case  was 
not  the  same  as  the  defendant's  structure  in  this  case,  but 
consisted  of  a  metallic  case  with  fins  or  lugs  integral  with  it, 
and  projecting  down  from  it,  and  of  a  plate  underneath, 
with  a  buckle  jointed  to  each  end  of  it  and  projecting  beyond 
the  end  of  the  case,  the  fins  passing  through  slits  in  the  plate 
and  then  through  the  curtain,  and  being  clinched  by  bending 
them  over  on  the  other  face  of  the  curtain.  Such  a  structare 
was  held  to  infringe  claim  two  of  the  re-issue.  I  do  not 
think  the  re-issue  is  open  to  objection  so  far  as  any  question 
affecting  the  defendant's  structures  No.  2  and  No.  4  is  con- 
cerned. 

On  the  question  of  novelty,  several  prior  patents  are  set 
up  in  the  answer.  Only  one  of  them  is  introduced,  No. 
49,809,  to  Cyrus  W.  Saladee,  August  8th,  1865.  In  that 
there  are  two  modifications.  In  one  the  buckle  is  not  con- 
nected to  the  plate.  In  the  other  the  connection  between 
the  buckle  and  the  plate  is  rigid  and  without  a  joint.  In  the 
Meyer  structure  the  buckle  is  attached  to  the  plate  by  a 
joint. 

Five  other  prior  patents  were  introduced  by  the  defend- 
ant. None  of  them  are  set  up  in  the  answer.  They  are  as 
follows:  No.  26,013,  to  Lucius  0.  Chase,  November  8th, 
1859;  No.  89,217,  to  Frank  Douglas,  July  14th,  1868;  No. 
44,564,  to  George  Purple,  October  4th,  1864 ;  No.  47,574,  to 


DECEMBER,   1881.  117 


Loereher  v.  Crandal. 


Cyros  W.  Saladee,  May  2d,  1865 ;  and  No.  47,765,  to  Eben- 
ezer  Brown,  May  16th,  1865.  In  Chase,  the  bnckle  frame  is 
rigidly  secured,  and  not  jointed.  In  Douglas,  the  buckle 
frame  is  not  connected  with  the  loop  by  the  bottom  plate. 
In  Purple,  the  buckle  frame,  carrying  the  tongue,  is  not 
jointed,  but  the  tongue  has  a  rigid  fastening.  In  Saladee  of 
May,  1865,  the  Meyer  structure  is  not  found,  nor  is  it  found 
in  Brown.  Besides  the  features  above  mentioned  as  to 
Chase,  Douglas  and  Purple,  the  structures  in  them  would  not 
suggest  the  structure  of  Meyer. 

As  to  the  parol  testimony,  in  regard  to  prior  structures, 
by  Moore,  and  Davis,  and  the  defendant,  it  must  be  held  that, 
in  view  of  the  construction  given  to  claims  2  and  8  of  re- 
issue No.  7,129,  and  of  what  the  invention  of  Meyer  has 
been  defined  to  be,  nothing  is  shown  making  out  a  satisfac- 
tory anticipation  of  said  claims. 

I  think  the  suit  is  properly  maintainable  in  the  names  of 
the  plaintiffs,  as  surviving  members  of  the  firm  composed  of 
themselves  and  Schuessler,  and  that  a  decree  should  be  en- 
tered for  the  plaintiffs  as  to  claims  2  and  3,  for  an  account 
and  a  perpetual  injunction,  with  costs. 

A.   V.  Briesenj  for  the  plaintiffs. 

Neri  Pine  and  C*  M.  StonCy  for  the  defendant. 


118  NORTHERN  DISTRICT  OP  NEW  YORK, 

Watters  v.  Onuddal. 


John  Wattebb  and  Bobest  Loeeohes,  Suryivobs  of  thebc- 

BELYES  AND   ChABLES   SoHUEBBLEB,  AS   COPABTNBBS  UNDER 
THE  NAME  OF  ThE  MeTAL   8TAMPINa  COMFANY 

Geobge  L.  Ceandal.    In  Equity. 

Re-iasned  letters  patent,  No.  8,829,  granted  to  Robert  Loercber,  July  29th, 
1879,  for  an  "improvement  in  harneas  baddes,"  the  original  patent,  No. 
47,574,  ha?ing  been  granted  to  Cyrus  W.  Saladee,  as  inventor,  May  2d,  1866, 
are  not  infnoged  by  a  buckle  constructed  in  accordance  with  the  description 
contained  in  letters  patent  No.  296,298,  granted  to  George  L.  Crandal,  July 
23d,  1878. 

Claim  4  of  the  said  re-issue  must  be  so  limited,  in  view  of  the  patent  granted 
to  Frank  Douglas,  July  14th,  1868,  that  the  defendant's  buckle  does  not  fall 
within  it. 

(Before  Blatobford,  J.,  Northern  District  of  New  York,  December  18th,  1881.) 

Blatohford,  J.  This  Buit  ib  brought  on  re-lBsned  letters 
patent  No.  8,829,  granted  to  Eobert  Loercher,  July  29th, 
1879,  for  an  ^'  improvement  in  hamesB  buckles,"  the  original 
patent,  No.  47,574,  having  been  granted  to  Cyrns  W.  Saladee, 
as  inventor.  May  2d,  1 865.  The  Bpecification  of  the  re-isane, 
including  what  Ib  inside  of  brackets  and  what  is  ontside  of 
brackets,  omitting  what  is  in  italics,  is  as  follows :  ^^  Figaro 
1  is  a  plan  [view,  and]  view.  Figure  2  i«  a  section,  [of  my 
improved  buckle  for  harness,  &c.]  the  red  lines  showing  the 
strap  to  which  the  hucMe  is  secured.  I  call  my  improved 
httckle  a  '  snapitLcJcUj  for  it  is'self-actvng^  and  lacks  the  or- 
dinary ^  long-ton ffue,^  My  invention  is  more  pa/rticularly 
applicable  to  the  plate  and  rivet  bucJd-e  described  in  tny  op- 
plicaMon  '  J.,'  and  consists  in  pivoting  the  buckle  [to  the 
projecting  end  of  a  metallic  plate  carrying  a  loop,  in  combi- 
nation with  fastening  pins ;  also,  in  a  peculiar  construction  of 
buckle,  as  hereinafter  more  f ally  described.]   in  a  groove  in 


DECEMBER,   1881.  119 


Watten  •.  Cnndal. 


the  tonguej  iprpart  that  resembles  the  common  tongue^  so  that 
a  spring  shall  make  the  front  end  of  the  tongue  snap  under 
the  front  ha/r  of  the  huoJde^  which  is  provided  with  a  short 
stud  which  passes  through  the  strap  to  be  held,  and  takes  in  a 
corresponding  hole  in  the  tongue.  In  the  drawings,  A  is  the 
metallic  buckle  plate,  provided  with  rivets,  a.  by  which  it  is 
eecared  to  the  upper  surface  of  the  strap.  B  is  the  metallic 
loop  for  confining  the  loose  end  of  the  [other  strap,]  strap. 
[which  loop  is  rigid  on  the  plate  A.]  The  plate  A,  rivets  a 
and  loop  B  are  similar  to  the  plate^  rivets  and  loop  described 
in  my  application  ^  A!  E  is  the  tongue  and  is  the  [The] 
front  end  or  continuation  of  [the]  plate  A.  [A]  It  is  pro- 
vided with  a  grooved  recess  e  in  its  under  side  ahout  one  inch 
from  the  end^  and  in  which  the  back  bar  of  the  buckle  is 
pivoted.  G  is  the  buckle,  its  back  bar,  (?,  being  provided 
with  a  short  lever,  a?,  and  turning  in  the  groove,  e.  The 
under  side  of  the  front  bar  of  the  buckle  is  provided  with  a 
short  stud,  %  which  takes  into  a  corresponding  indentation, «;, 
in  the  upper  side  of  the  [plate  A.]  tongue  E.  I  is  a  flat  steel 
spring,  the  front  end  of  which  is  secured  by  a  rivet  to  the 
front  end  of  [plate  A,]  tongue  E^  the  rear  end  of  said  spring 
pressing  [against  the]  down  up  lever  x  of  the  back  bar  of  the 
buckle,  so  as  to  keep  it  in  the  groove  ^,  and  at  the  same  time 
force  the  front  ends  of  the  [plate  A,  which  is]  tongae 
[shaped,]  and  [the]  buckle  together,  so  as  to  make  the  stud  i 
take  into  the  hole  v.  If  preferred,  the  stud  i  may  be  put 
upon  the  tongue  [or  plate  A]  instead  of  upon  the  buckle,  and 
may  take  into  a  corresponding  hole  in  the  front  bar  of  the 
buckle.  In  using  my  improved  [buckle,]  '  snapiucJde^  the 
strap  to  be  held  is  placed  between  the  front  bar  of  the  buckle 
and  the  tongue,  and  drawn  as  tightly  as  desired,  the  spring 
forcing  the  front  bar  down  upon  the  strap,  so  that  the  stud 
shall  take  into  each  hole  of  the  strap  as  it  arrives.  The  front 
tide  of  stud  %  should  be  rounded  off  somewhat,  so  as  to  allow 
the  strap  to  slip  over  it  when  being  tightened.  There  is  a 
peculiar  advantage  possessed  by  this  buckle.  It  is  not  neces- 
sary to  slacken  the  strap  in  order  to  unbuckle  it,  as  is  the  case 


120  NORTHERN  DISTRICT   OP  NEW  YORK, 

Watten  v.  Crandal. 

with  other  buckles.  I  have  only  to  lift  up  the  front  bar  of 
the  buckle  about  an  eighth  of  an  inch,  in  order  to  lift  the 
stud  i  out  of  the  hole  in  the  strap,  which  thus  frees  the  strap. 
The  importance  of  this  advantage  is  self  evident."  Beading* 
in  the  foregoing  what  is  outside  of  brackets,  including  what 
is  in  italics,  and  omitting  what  is  inside  of  brackets,  gives  the 
specification  of  the  original  patent.  The  claims  of  the  re- 
issue are  as  follows :  ^^  1.  The  buckle  O,  in  combination  with 
the  plate  A,  having  the  tongue-extension,  all  substantially  aa 
shown  and  described.  2.  The  buckle  frame  pivoted  to  the 
tongue-extension  portion  of  plate  A,  all  substantially  as  set 
forth.  8.  The  buckle  frame  G,  provided  with  stud  »,  in  com- 
bination with  the  buckle  tongue  A,  having  an  indentation  for 
the  reception  of  said  stud,  substantially  as  specified.  4.  The 
plate  A,  provided  with  the  loop  and  with  fastening  pins,  in 
combination  with  the  buckle  frame,  which  is  pivoted  to  said 
plate,  substantially  as  set  forth."  The  claims  of  the  original 
patent  were  these :  ^^  1.  Constructing  a  buckle  so  as  to  be 
unbuckled  without  slackening  the  strap,  in  the  manner  de- 
scribed. 2.  The  buckle  G,  in  combination  with  the  tongue 
E.  8.  Pivoting  the  buckle  to  the  tongue  in  the  manner  de- 
scribed. 4.  Forming  the  tongue  £,  as  a  continuation  of  plate 
A,  in  the  manner  described.  5.  The  stud  ^,  or  its  equivalent, 
operating  as  described,  in  combination  with  the  indentation 

Only  claim  4  of  the  reissue  is  alleged  to  have  been  in- 
fringed. The  infringing  structures  are  complainants'  Exhibit 
No.  8  and  defendant's  Exhibit  No.  4.  The  former  is  con- 
structed in  accordance  with  the  description  contained  in  let- 
ters patent  No.  206,298,  granted  to  the  defendant,  July  28d, 
1878.  It  has  a  hollow  case  or  shell,  made  of  sheet  metal,  and 
provided  at  the  bottom  with  a  plate,  which  forms  a  part  of 
the  case  or  shell.  Both  ends  of  the  case  are  open.  There  is 
a  buckle  at  each  end  attached  by  a  joint  to  a  short  piece  of 
flat  sheet  metal,  so  as  to  project  outwardly.  Each  of  these 
two  short  pieces  is  of  two  thicknesses,  the  metal  being  bent 
to  form  the  joint  for  the  buckle,  and  is  beneath  and  close  up 


DECEMBER,  1881.  121 


Watters  v.  CnndaL 


against  the  lower  surface  of  the  bottom  plate.  In  order  to 
Becnre  each  short  piece  to  the  bottom  plate  there  is  a  fourth 
flat  piece  of  metal,  lying  longitadinallj  underneath,  and 
somewhat  shorter  in  length  than  the  bottom  plate,  which  has 
at  each  extreme  length  of  it  two  integral  upwardly  project- 
ing pins  or  fins  lying  in  line,  side  by  side,  one  on  each  side  of 
the  centre  of  its  width,  and  extending  each  to  the  outer 
edge,  each  of  which  enters  and  passes  through  a  separate  hole 
for  it  through  each  of  the  two  thicknesses  of  the  short  piece 
which  carries  the  buckle  (the  two  holes  for  each  pin  or  fin 
being  coincident,)  and  then  enters  a  separate  hole  for  it  in  the 
bottom  plate,  and  is  intended  to  be  bent  over  and  down,  and 
dinched  inside  the  shell  against  the  upper  surface  of  the  bot* 
torn  plate,  there  thus  being  four  of  such  pins  or  fins,  two  for 
each  short  buckle  piece.  There  is  in  the  bottom  plate,  for 
each  pin  or  fin,  another  hole,  so  placed  that  when  the  pin  or 
fin  is  bent  over,  its  end  may  go  through  such  hole  and  so 
leave  a  smoother  clinch  inside  the  shell.  When  the  pins  or 
fins  are  in  place  and  clinched,  the  buckles  are  held  firmly  and 
the  stmctnre  becomes  a  unit.  Defendant's  Exhibit  No.  4 
differs  from  complainants'  Exhibit  No.  8  only  in  two  re- 
spects. There  is  in  it,  instead  of  the  two  buckle  plates,  a 
continuous  plate  of  a  single  thickness,  carrying  a  buckle  at  each 
end  of  it,  the  metal  at  each  end  being  bent  into  tip^o  thick- 
nesses, and  there  are  no  extra  holes  in  the  bottom  plate  to  re- 
ceive the  ends  of  the  pins  or  fins  after  they  are  clinched.  In 
all  other  respects  the  two  structures  are  alike. 

The  structure  of  the  Saladee  device  is  such  that  the  piv- 
oting of  the  buckle  in  the  groove  is  effected  by  pivoting  in 
ths  groove  the  back  bar  of  the  buckle,  the  back  bar  having  on 
it  a  short  lever,  and  the  rear  end  of  the  spring  pressing 
against  the  lever  so  as  to  keep  the  back  bar  snugly  in  the 
groove,  and  prevents  its  escaping  therefrom  while  it  turns  in 
it.  This  method  of  pivoting  the  buckle  to  the  tongue  is 
made  a  peculiar  feature  in  the  original  patent,  and  is  specially 
covered  by  the  3d  claim  of  that  patent.  But  for  the  action 
of  the  spring  on  the  lever  of  the  back  bar  of  the  buckle, 


122  NORTHERN  DISTRICT  OF  NEW  YORK, 

Wattera  «.  CrandaL 

there  would  be  no  pivoting  of  the  back  bar  in  the  groove 
and  no  pivoting  of  the  buckle  to  the  tongue.  Take  away  the 
spring  and  the  whole  structure  would  be  inoperative,  for,  not 
only  would  such  pivoting  disappear,  but  the  stud  would  not 
take  into  its  hole.  Nothing  different  results  from  the  lan- 
guage of  the  re-issue.  The  structure  is  not  and  cannot  be 
altered.  The  meaning  of  the  language  of  claim  4  of  the  re- 
issue, in  saying  that  the  combination  is  ^^  with  the  buckle 
frame,  which  is  pivoted  to  said  plate,  substantially  as  set 
forth,"  is,  that  the  buckle  frame  is  pivoted  to  the  plate  by 
means  of  the  spring,  or  what  is,  in  law  and  in  fact,  a  mechan- 
ical equivalent  for  the  spring.  In  view  of  the  patent  granted 
to  Frank  Douglas,  July  14th,  1863,  the  pivoting  of  the  buckle 
in  the  defendant's  structures  cannot  be  regarded  as  being  ef- 
fected by  the  same  means  or  equivalent  means  as  in  the  Sal- 
adee  structure.  In  Douglas,  there  are  a  plate,  a  loop  on  the 
plate,  fastening  pins  on  the  plate,  and  a  buckle  frame  which 
is  pivoted  to  the  plate.  In  combination,  all  the  features  are 
found  in  Douglas  which  are  found  in  Saladee.  Kot  that  the 
Douglas  structure  anticipates  claim  4  of  the  Saladee  re-issue, 
properly  construed.  But  it  limits  its  construction,  so  that  the 
defendant's  structures  do  not  fall  within  it.  The  pivoting  in 
the  Douglas  structure  is  effected  by  having  the  leather  strap 
confine  the  bar  in  the  groove.  It  is  true  that  it  requires  the 
metal  and  the  leather  combined  together  to  make  the  pivot- 
ing in  Douglas,  and  that,  in  the  Saladee  structure  and  the  de- 
fendant's structures,  there  is  pivoting  by  the  metal  alone  with- 
out the  leather,  but  this  is  of  no  importance  in  principle.  No 
one  of  the  three  structures  is  of  any  use  except  as  applied  to 
articles  of  leather.  Moreover,  the  Saladee  structure  is  a 
buckle  for  harness  solely,  and  it  cannot  be  converted  into  the 
defendant's  structures  without  destroying  its  peculiar  ar- 
rangement of  pivoting. 

The  bill  must  be  dismissed,  with  costs. 

A.  V.  Brieaen^  for  the  plaintiffs. 

O.  W.  Hey  and  C.  H,  DueUy  for  the  defendant. 


DECEMBER,   1881.  123 


Holmes  v.  The  PlaiDTille  MaDnfactnring  Company. 


Geobgb  H.  Holmes  and  Fbaite  L.  Httnobbfobd 

vs. 

m 

The  Plaintille  Manufactusikg  Company.     In  Equitt. 

The  Same 
vs. 

The  Dunham  Hosiebt  Company.    In  Equity. 

BeJanod  letters  patent  granted  to  Gkorge  H.  Holmes,  Jnne  26th,  1878,  for  an 
improrement  in  take-nps  for  looms,  the  original  patent  haying  heen  granted 
August  10th,  1869,  are  not  infringed  by  the  nse  in  knitting  machines  of  the 
take-np  rollers  described  in  letters  patent  granted  to  Ira  Tompkins  and  Al- 
bert Tompkins,  May  16th,  1876. 

The  original  patent  did  not  indicate  or  suggest  that  the  inyention  could  be 
arranged  so  as  to  be  an  adjunct  to  a  knitting  machine.  The  inyentors  of  the 
Tompkins  device  altered  the  Holmes  device  and  adapted  it  to  a  knitting  ma- 
chine. Then  the  Holmes  patent  was  re-issued  so  as  to  cover  machines  for 
knitting  as  well  as  machines  for  weaving.  Therefore,  the  re-issue  is  bad, 
unless  the  loom  of  the  re-issoe  is  construed  to  be  the  loom  of  the  original 
patent. 

(Beibrs  SmncAV,  J.,  Connecticut,  December  16th,  1881.) 

Shipman,  J.  These  two  cases  are  each  founded  upon  re- 
issued letters  patent  to  Oeorge  H.  Holmes,  dated  June  2Sth, 
1878,  for  an  improvement  in  "  take-ups "  for  looms.  The 
original  patent  was  granted  Angnst  10th,  1869.  The  plaint- 
iffs are  the  owners  of  the  patent.  The  defences  are  the  inva- 
lidity of  the  re-issae  because  it  contains  ^'  new  matter,"  and 
non-infringement,  if  the  patent  is  construed  by  the  Court  to 
be  restricted  to  the  invention  as  originally  claimed. 

The  original  patent  was  for  an  improved  "  take-up  "  in 
looms  for  weaving  cloth.  A  "  take-up"  is  a  device  for  taking 
up  or  rolling  the  completed  fabric  upon  an  intermittingly 


124  CONNECTICUT, 


Holmes  v.  The  PlaiDTille  MAonfactiiriiig  Company. 


moving  roller  or  cloth  beam.  The  improvement  consisted  in 
the  arrangement  of  mechanism  for  regulating  the  tension  of 
the  cloth.  The  patented  mechanism  is  described  as  follows : 
A  ratchet  wheel  is  so  connected  with  the  cloth  beam  that  a 
movement  of  the  wheel  necessitates  a  revolution  of  the  beam. 
This  revolution  imparts  tension  to  the  fabric.  Mounted  on 
the  axis  of  this  wheel,  there  is  an  oscillating  pawl  carrier 
upon  which  is  pivoted  a  pawl  which  engages  with  the  teeth 
of  the  ratchet  wheel.  Motion  is  imparted  to  the  pawl  and 
its  carrier  by  means  of  a  rod,  one  end  of  which  is  secured  to 
the  pawl  carrier ;  the  other  end  rests  loosely  in  a  sliding  col- 
lar. Motion  is  imparted  to  the  collar  by  the  crank  which 
turns  the  "lay,"  or  "  the  wooden  frame  beam  which  forces  up 
the  weft."  The  intermediate  mechanism  between  the  crank 
and  the  collar  is  the  leg  of  the  lay  and  a  pitman.  "  Upon  the 
rod  and  surrounding  it  there  is  a  spiral  spring,  one  end  of 
which  bears  against  the  reciprocating  sliding  collar  and  the 
other  end  of  which  bears  against  an  adjustable  collar  on  the 
rod,  which  collar  is  termed  a  ^  stop  nut,'  in  the  patent.  This 
collar  or  stop  nut  can  be  adjusted  longitudinally  on  the  rod, 
so  as  to  compress  the  spring  more  or  less  and  increase  or 
diminish  its  tension,  as  may  be  desired."  The  operation  of 
the  mechanism  is  thus  described  in  the  specification  of  the  re- 
issue :  "  It  is  obvious,  that,  when  a  reciprocating  motion  is 
given  to  the  sliding  collar  m,  the  degree  of  compression  of  the 
spring,  and  the  consequent  extent  of  motion  of  the  pawl 
and  the  ratchet  wheel,  will  depend  upon  the  resistance  or 
tension  of  the  fabric.  Thus,  if  the  cloth  is  slack,  the  spring 
will  be  but  slightly  (if  at  all)  afiPected  by  the  movement  of 
the  sliding  collar  m,  the  strength  of  the  spring  being  suffi- 
cient to  move  the  pawl  and  revolve  the  ratchet  wheel  and 
take  up  the  fabric,  in  which  case  the  collar  m  will  move  with 
the  rod  L,  and  not  slide  on  it ;  but,  when  there  ia  sufficient 
tension  on  the  cloth  to  overcome  the  power  of  the  spring,  the 
collar  will  slide  on  the  rod  and  expend  its  blow  or  pressure  in 
compressing  the  spring,  and  will  not  throw  the  pawl  or  move 
the  ratchet."    In  the  language  of  the  plaintifb'  expert,  ^*  the 


DECEMBER,  1S81.  125 


Holmes  v.  The  PlainTille  Mura&ctnring  Company. 


ooUar  redprocatee  positively  over  a  given  distance,  while  the 
movement  of  tlie  rod,  the  pawl  carrier,  the  ratchet  wheel, 
and  the  doth  beam,  will  varj  from  time  to  time,  according 
to  the  tension  of  the  fabric  and  the  resistance  which  is  offered 
thereby  to  the  motion  of  the  beam  which  takes  np  the  fabric." 
The  original  claim  was  in  these  words :  ^^  The  slotted  lever 
J,  pawl  hy  ratchet  wheel  I,  gear  wheel  G,  the  rod  L,  spring 
0,  nut  J?,  and  arm  m^  the  ^ay'  B,  and  cloth  beam  F,  of 
the  loom,  when  arranged,  with  reference  to  each  other,  sub- 
stantially as  herein  shown  and  described,  for  the  purpose 
specified." 

On  May  16th,  1876,  letters  patent  were  granted  to  Ira 
Tompkins  and  Albert  Tompkins,  for  improved  take-np  roll- 
ers for  knitting  machines,  and  thereafter  the  plaintiffs'  re-issue 
was  granted.  The  re-issue  was  designed  to  extend  the  patent 
to  machines  for  knitting  as  weU  as  for  weaving.  The  claims 
are  as  follows :  '^  1.  In  a  take-up  device  for  looms,  the  combi- 
nation of  the  ratchet  wheel  I,  through  which  motion  is  im- 
parted to  the  beam  which  takes  up  the  fabric,  the  oscillating 
pawl-carrier  J,  provided  with  the  pawl  A,  the  rod  L,  spring  O, 
8top-nat^,  and  reciprocating  sliding  collar  r/i,  and  operating 
mechanism,  whereby  the  positive  reciprocating  motion  im- 
parted to  the  sliding  collar  is  made  to  turn  the  ratchet  wheel 
a  greater  or  less  distance,  according  to  the  tension  of  the 
fabric,  sabetantially  as  described.  2.  In  a  take-up  device 
for  looms,  the  combination  of  the  stop-nut  p^  the  rod  L, 
spring  O,  sliding  collar  m,  the  crank  M,  and  suitable  inter- 
mediate mechanism,  substantially  aa  described,  whereby  the 
rotary  motion  of  the  crank  is  transformed  into  the  compen- 
satory reciprocating  motion  of  the  rod  L,  for  the  purpose  set 
forth." 

A  knitting  machine  has  nothing  in  common  with  a  loom 
for  weaving,  except  that  each  has  a  roller  upon  which  the 
completed  fabric  is  rolled,  and  a  take-up.  The  office  of  the 
take-ap,  in  each  machine,  is  to  regulate  the  tension  of  the 
cloth.  In  a  loom,  it  is  necessary  that  the  warp  should  be  kept 
taut  between  the  yam  beam  and  the  cloth  beam.    A  knitting 


126  (X)NNECnCUT, 


Holmes  v.  The  PlainTille  Mannfaotnring  Company. 


machiiie  prodaces  a  fabric  made  by  a  Baccession  of  loops,  and, 
as  the  necessities  of  the  manufacture  do  not  require  that  the 
yam  or  threads  should  be  kept  tightly  drawn,  a  smaller  ex- 
penditure of  force  is  necessary  than  in  a  loom  take-up.  The 
defendants'  machines  are  rotary,  the  take-up  rollers  and  the 
frame  which  holds  the  take-up  revolve  with  the  machines, 
and  power  is  communicated  to  the  crank  gearing,  which  actu- 
ates the  take-up  mechanism,  by  the  revolution  of  the  frame 
upon  its  spindle.  The  take-up  mechanism  proper  of  the 
Holmes  and  the  Tompkins  devices  are  the  same ;  the  difier- 
ences  are  in  the  mechanism  by  which  power  is  communicated. 
The  crank  of  the  Tompkins  device  ^'directly  actuates  the 
take-up  machinery,  instead  of  actuating  the  lay  of  the  loom 
to  move  the  take-up  mechanism." 

The  plaintiffs'  case  is  founded  upon  the  position  that  the 
Holmes  invention  was  not  a  take-up  for  weaving  looms  only, 
but  was  a  take-up  device  for  any  looms  which  require  a  take- 
up,  and  that  the  original  patent,  by  the  introduction  of  the 
'^  lay  "  of  a  loom,  as  one  element  of  the  combination,  unduly 
limited  the  invention.  The  plaintiffs  also  insist,  that,  while 
the  word  ^'  loom,"  as  defined  in  the  dictionaries,  or  when  used 
technically,  does  not  include  a  knitting  machine,  yet,  as 
used  in  the  shops  and  in  the  Patent  Office,  it  does  include 
such  machine,  but  that  this  is  immaterial,  for,  whoever  uses 
the  loom  take-up,  and  employs  the  same  combination,  in  a 
knitting  machine,  to  take  up  the  fabric,  is  an  infringer,  aud 
that  the  crank  rod  of  the  defendants'  device,  by  which  power 
is  communicated  to  the  pawl  lever,  is  the  obvious  mechanical 
equivalent  of  the  lay  and  pitman  of  the  Holmes  device. 

In  my  opinion,  the  case  turns  upon  the  question — what  was 
the  invention  which  was  disclosed,  either  clearly  or  faintly,  in 
the  original  patent  ?  It  is  true,  that  the  actual  invention  of 
Holmes  could  have  been  applied  to  knitting  machines,  and,  if 
the  patentee  had  known  the  extent  of  his  invention,  he  could 
properly  have  made  a  broader  daim,  which  would  have  been 
valid ;  but  the  point  is,  whether  it  does  not  appear  from  the 
patent,  that  .the  invention  which  was  the  subject  of  the  ap- 


DECEMBER,   1881.  127 


Holmes  0.  The  PUuDyiUe  ManafactoriDg  Company. 


plication  waa  one  applicable  only  to  the  weaving  of  cloth, 
and,  therefore,  whether  a  broad  re-isBue  is  not  faulty,  in  that 
it  contains  an  invention  which  was  neither  suggested  nor  ap- 
plied for  in  the  original  application,  but  which  is  sach  an  ad- 
dition to  the  invention,  as  originally  claimed,  as  to  be  prop- 
erly the  subject  of  a  new  patent.  Starting  with  the  fact  that 
whatever  may  be  either  the  commercial  or  technical  meaning 
of  the  word  "loom,"  the  meaning  of  "loom  for  weaving 
doth "  is  very  obvious,  and  with  the  additional  fact  that  a 
knitting  machine  is  a  structure  of  altogether  different  charac- 
ter from  a  weaving  loom,  except  thai  each  machine  produces 
doth  and  Ikeeds  a  take-up,  did  the  original  patent  indicate, 
suggest,  or  hint  that  the  invention  was  anything  but  an  ad- 
junct to  looms  for  weaving  ?  The  originsd  application  was 
strictly  confined  to  such  machines,  and  for  a  manifest  reason. 
In  doth  weaving,  whenever  a  thread  of  filling  is  passed 
through  the  threads  of  warp,  the  lay  is  thrown  forward  and 
beats  the  thread  of  filling  against  the  edge  of  the  newly 
woven  doth.  The  old  take-ups  made  are  of  the  constantly 
recurring  forward  motion  of  the  lay  to  turn  the  doth  beam 
and  to  keep  the  yam  taut,  for,  in  a  loom  take-up,  the  move- 
ment of  the  lay  is  the  natural  source  of  motion  for  the  take- 
np  mechanism.  The  inventor  wanted  to  improve  the  existing 
devices  so  that  a  better  device,  or  an  improved  result,  could 
be  had  by  the  use  of  the  same  motive  power.  He  was  direct- 
ing his  attention  solely  to  take-ups  in  looms,  and  not  to  take- 
nps  in  other  and  different  pieces  of  mechanism,  and  his  pat- 
ent expressed  plainly  the  subject  of  his  thought  and  the  re- 
salt  of  his  labor.  That  the  invention  could  be  applied  to 
other  machines  was  a  discovery  made  after  the  date  of  the 
patent. 

The  original  patent  was  open  to  objection,  because  it 
might  be  claimed  that  the  patentee  had  included,  in  the 
combination,  the  "lay  "  as  a  lay,  and  not  as  a  means  of  trans- 
mitting power,  and,  therefore,  if  the  crank  should  be  applied 
to  any  other  lever  than  the  woof-beater,  there  would  not  be 
an  infringement.    This  mistake  was  apparent  on  the  face  of 


128  OONNECnCUT. 


Hdmefl  v.  The  PlainTille  Manulikctiiruig  Ck>mpany. 


the  specification,  and  justifies  a  re-issue,  but  that  the  inven- 
tion was  improperly  restricted,  by  limiting  it  to  looms  for 
weaving,  was  not  thus  apparent.  Neither  the  specification 
taken  alone,  nor  as  construed  by  the  state  of  the  art  in  regard 
to  the  subject  of  the  original  patent,  revealed  that  the  inven- 
tion was  broader  than  the  patent.  That  came  to  light  after 
the  state  of  the  art  on  both  looms  and  knitting  machines  had 
been  shown.  I  am  of  opinion  that  the  loom  of  the  re-issue 
is  the  loom  for  weaving  cloth  of  the  original  patent. 

The  inventors  of  the  device  which  is  used  by  the  defend- 
ants apparently  adapted  the  Holmes  take-up  to  the  needs  of 
a  knitting  machine,  but  not  without  alteration.  They  did  not 
simply  apply  the  old  method  to  the  new  one  without  change. 
The  new  machine  has  no  lay,  and  does  not  require  the  inter- 
vention of  a  lever  between  the  crank  and  the  pawl  carrier. 
A  loom  take-up  must  work  with  power  to  keep  the  fabric  taut 
A  knitting  machine  desires  that  the  fabric  shall  not  be 
straitied  by  over  tension,  and,  therefore,  demands  only  the 
exercise  of  gentle  force  in  the  take-up  mechanism.  All  that 
is  required  is  that  motion  should  be  communicated  from  the 
crank  directly  to  the  pawl  carrier.  In  view  of  the  different 
character  and  needs  of  the  two  machines,  motion  is  not 
transmitted,  in  these  two  devices,  by  the  same  or  equivalent 
means. 

The  bill  is  dismissed. 


Charles  E.  Mitchell^  for  the  plaintifb. 
E%ek  Cotoerij  for  the  defendants. 


NOYEMBER,   1879.  129 


The  United  States  v.  Phelps. 


Thk  Ubtted  States,   Flaintiffs  in  sbboe 
FsAirx  Phslpb  and  Howabd  Phelps,  Defendants  in  ebbob. 

Under  g§  2,937  nnd  2,928  of  the  Reyised  Statates,  there  can  be  an  appraise- 
ment for  an  abatement  of  duties,  on  aoconnt  of  damage  to  goods  sustained 
daring  the  voyage  of  importation,  after  the  goods  haye  been  entered  at  the 
Custom  House  and  the  estimated  amount  of  duties  thereon  haye  been  paid.* 

(Before  Blatghfokd,  J.,  Southern  District  of  New  Yorlc,  NoTember  18th,  1879.) 

Blatohfobd,  J.  This  is  a  writ  of  error  to  the  District 
Court.  The  following  facts  appear  bj  the  bill  of  exceptions : 
The  defendants  in  error,  (who  were  the  defendants  below  and 
win  be  called  the  defendants,)  on  the  7th  of  August,  1876, 
imported  into  the  port  of  New  York  from  a  foreign  port, 
3,825  boxes  of  lemons.  The  value  of  said  lemons  in  the 
foreign  market,  when  and  where  thej  were  purchased,  was 
74,521,Thr  francs,  equal  to  $14,383.  The  duties  thereupon, 
at  the  rate  of  20  per  centum  ad  valorem^  amounted  to 
$2,876  60,  on  which  sum  the  plaintiff  gave  a  credit  of 
$2,013  60,  the  amount  admitted  by  the  complaint  to  have 
been  paid,  claiming  to  recover  the  balance,  $868,  as  duties. 
The  defendants,  in  like  manner,  imported,  on  the  ISth  of 
August,  1876,  2,930  boxes  of  lemons,  of  the  foreign  value, 
when  shipped,  of  49,861i^  francs,  equal  to  $9,623.  The 
duties  thereon,  at  the  rate  of  20  ^«r  centum  ad  valorem,^  were 
$1,921  60,  on  which  sum  the  plaintiffs  gave  a  credit  of  $1,636, 
the  amount  admitted  by  the  complaint  to  have  been  paid, 
claiming  to  recover  the  balance,  $288  60,  as  duties.    After 

*This  caae  was  not  reported  in  its  re^nbir  orv'ler,  bat,  as  the  deci.^ion  was  all 
firmed  by  the  Supreme  Court,  and  the  opinion  of  that  Conrt,  in  107  U.  S.,  re- 
fers to  the  opinion  of  thSa  Court,  it  hat  been  thought  proper  to  publiah  the  lat- 
ter io  this  Tolome. 

Vol.  XX.— 9 


180  SOUTHERN  DISTRICT  OF  NEW  YORK, 

The  United  States  v.  Phelpe. 

the  plaintifiB  had  proved  the  foregoing  facts,  the  defendantft^ 
offered  to  prove  that  they  made  entry  at  the  custom  honse  in 
New  York  of  the  first  above  mentioned  importation  of 
lemons  at  the  fall  invoice  price  on  the  7th  of  Aagnst^  1876^ 
and  then  paid  to  the  plaintiffs  $2,876  60,  as  the  estimated 
amount  of  duty  on  said  importation,  if  in  sound  condition, 
and  afterwards,  and  on  the  14th  of  August,  1876,  applied  for 
an  allowance  for  damage  to  the  same  on  the  voyage  of  im- 
portation ;  that,  thereafter,  an  examination  and  appraisement 
of  the  damage  were  made,  and  thereupon  an  allowance  was 
made  for  said  damage ;  that  the  amount  of  said  damage  al- 
lowance was  $4,815  ;  that  the  duties  thereon,  at  20  per  cent^y 
amounted  to  $863 ;  that,  in  accordance  therewith,  the  said  entry 
was  liquidated  on  the  8d  of  October,  1876 ;  and  that^  on  the 
14th  of  October,  1876,  the  plaintiffs  refunded  and  paid  to  the 
defendants  the  sum  of  $868.  To  this  evidence  the  counsel 
for  the  plaintiffs  objected,  on  the  ground  that  the  damage  al- 
lowance should  have  been  applied  for,  and  the  damage  ascer- 
tained, before  the  entry  of  the  goods ;  that,  as  the  applica- 
tion was  not  made,  nor  the  amount  of  damage  ascertained, 
until  after  the  entry,  the  proceedings  therefor  were  irregular 
and  without  warrant  of  law ;  and  that  the  defendants  could 
acquire  no  benefit  or  advantage  from  any  allowance  made  in 
pursuance  thereof.  The  Court  overruled  the  objection  and 
admitted  the  evidence,  and  to  such  ruling  and  admission,  the 
plaintiffs'  counsel  excepted. 

As  to  the  importation  of  August  15th,  1876,  the  defend- 
ants offered  to  prove  that  an  entry  was  made  of  the  goods  at 
their  full  invoice  price  on  that  day,  and  the  sum  of  $1,924  60 
was  paid  to  the  plaintiffs  as  the  estimated  amount  of  duty  on 
said  importation,  if  in  sound  condition ;  that  an  application 
for  damage  allowance  was  made  August  22d,  1876 ;  that  an 
examination  and  appraisement  were  thereupon  made,  and  an  al- 
lowance for  damage  was  thereupon  made  to  the  amount  of 
$1,448,  on  which  the  duties  amounted  to  $288  60 ;  that  the 
entry  was  liquidated  on  the  29th  of  September,  1876;  and 
that,  on  the  11th  of  October,  1876,  the  plaintiffs  refunded  and 


NOVEMBER,  1879.  181 


The  Unitod  Statet  v.  Phelpa. 


paid  to  the  defendants  the  said  sum  of  $288  60.  To  this  ey- 
idenoethe  counsel  for  the  plaintiffs  objected  on  the  same 
ground  as  before.  The  Conrt  oyerroled  the  objection  and 
admitted  the  eyidence,  and  to  snch  ruling  and  admission  the 
plaintifis'  counsel  excepted. 

The  defendants  then  rested.  The  counsel  for  the  plaint- 
iffia  thereupon  requested  the  Court  to  charge  the  jury,  diat,  as 
the  goods  had  been  entered  at  the  full  inyoice  prices  in  the  first 
instance,  and  the  application  for  allowance,  the  examination 
and  the  appraisement  were  not  made,  nor  the  damage  ascer- 
tained, nor  the  damage  allowance  made,  until  after  the  entries 
of  the  goods^  the  damage  allowance  was  unwarranted  bj  law, 
and  the  jury  could  not  giye  the  defendants  any  abatement  of 
duties  on  account  of  such  damage  allowance.  The  Court  re- 
fused so  to  charge  and  the  counsel  for  the  plaintiffs  excepted 
to  such  refusal.  The  jury  rendered  a  yerdict  for  the  defendants. 

It  is  presented  as  a  question  for  decision,  whether  there 
can  be  an  appraisement  for  an  abatement  of  duties,  on  ac- 
count of  damage  to  goods  sustained  during  the  yoyage  of 
importation,  after  the  goods  haye  been  entered  at  the  custom 
house  and  the  estimated  amount  of  duties  thereon  has  been 
paid. 

Section  2,927  of  the  Beyised  Statutes  proyides  as  follows : 
''  In  respect  to  articles  that  have  been  damaged  during  the 
yoyage,  whether  subject  to  a  duty  ad  valorem^  or  chargeable 
with  a  specific  duty,  either  by  number,  weight  or  measure, 
&e  appraisers  shall  ascertain  and  certify  to  what  rate  or  per- 
centage the  merchandise  is  damaged,  and  the  rate  of  percent- 
age of  damage  so  ascertained  and  certified  shall  be  deducted 
from  the  original  amount  subject  to  a  duty  ad  valorem,^  or 
from  the  actual  or  original  number,  weight  or  measure  on 
which  specific  duties  would  haye  been  computed.  No  allow- 
anoe,  howeyer,  for  the  damage  on  any  merchandise  that  has 
been  entered,  and  on  which  the  duties  haye  been  paid  or  se- 
cured to  be  paid,  and  for  which  a  permit  has  been  granted  to 
the  owner  or  consignee  thereof,  and  which  may,  on  examin- 
ing the  same,  proye  to  be  damaged,  shall  be  made,  unless 


132  SOUTHERN  DISTRICT  OF  NEW  YORK, 

The  United  States  v.  Phelps. 

proof  to  ascertain  said  damage  shall  be  lodged  in  the  cuBtoin 
honse  of  the  port  where  snch  merchandise  has  been  landed, 
within  ten  days  after  the  landing  of  such  merchandise." 
This  is  a  re-enactment  of  like  provisions  in  §  52  of  the  Act  of 
March  2d,  1799,  (I  U.S.  Stat,  at  Large,  666.) 

Section  2,928  of  the  Revised  Statutes  provides  as  follows : 
'^Before  any  merchandise  which  shall  be  taken  from  any 
wreck  shall  be  admitted  to  an  entry,  the  same  shall  be  ap- 
praised ;  and  the  same  proceedings  shall  be  ordered  and  execnted 
in  all  cases  where  a  redaction  of  duties  shall  be  claimed  on  ac- 
count of  damage  which  any  merchandise  shall  have  sustained 
in  the  course  of  the  voyage;  and  in  all  cases  where  the 
owner,  importer,  consignee  or  agent  shall  be  dissatisfied  with 
such  appraisement,  he  shall  be  entitled  to  the  privileges  of  ap- 
peal, as  provided  for  in  this  Title."  This  section  is  taken 
from  section  21  of  the  Act  of  March  1st,  1823,  (3  O.  S.  SiaL 
at  Large,  736,)  which  section  21  was  in  these  words :  "  Before 
any  goods,  wares,  or  merchandise  which  may  be  taken  from 
any  wreck  shall  be  admitted  to  an  entry,  the  same  shall  be 
appraised  in  the  manner  prescribed  in  the  sixteenth  section  of 
this  Act,  and  the  same  proceedings  shall  be  ordered  and  exe- 
cuted in  all  cases  where  a  reduction  of  duties  shall  be  claimed 
on  account  of  damage  which  any  goods,  wares,  or  merchandise 
shall  have  sustained  in  the  course  of  the  voyage ;  and  in  all 
cases  where  the  owner,  importer,  consignee  or  agent  shall  be 
dissatisfied  with  such  appraisement,  he  shall  be  entitled  to  the 
privileges  provided  in  the  eighteenth  section  of  this  Act." 
The  words  **  in  the  manner  prescribed  in  the  sixteenth  sec- 
tion of  this  Act,"  found  in  said  section  21,  are  not  reproduced 
in  section  2,928  of  the  Sevised  Statutes.  The  manner  pre- 
scribed in  the  sixteenth  section  of  the  Act  of  March  Ist, 
1823,  (3  V.  S.  Stat,  at  Large,  735,)  is  by  appraisers  to  be  ap- 
pointed in  a  manner  designated  in  that  section.  By  the  5:;d 
section  of  the  Act  of  1799,  it  was  provided  that,  in  the  case  of 
goods  which  had  received  damage  during  the  voyage,  the  ap- 
praisement to  ascertain  such  damage  should  be  made  by  two 
merchant  appraisers,  one  to  be  appointed  by  the  collector, 


NOVEMBER,  1879.  138 


The  Uoited  Stotes  v.  Phelps. 


and  the  other  by  the  importer.  By  the  15th  Bection  of  the 
Act  of  April  20th,  1818,  (8  U.  S.  Stat  at  Large^  437,)  it  was 
provided  as  follows :  "  Before  any  goods,  wares  or  merchan- 
dise which  may  be  taken  from  any  wreck  shall  be  admitted 
to  entry,  the  same  shall  be  appraised  in  the  manner  pre- 
scribed by  the  ninth  section  of  this  Act ;  and  the  same  pro- 
ceedings shall  also  be  had  where  a  reduction  of  dnties  shall  be 
claimed  on  account  of  damage  which  any  goods,  wares  or 
merchandise  imported  into  the  United  States  shall  have  sus- 
tained in  the  course  of  the  voyage."  The  9th  section  of  that 
Act  provided  for  the  appointment  by  the  President  and  Sen- 
ate, in  each  one  of  six  designated  ports,  of  two  appraisers, 
who,  with  a  merchant  appraiser,  to  be  chosen  by  the  importer, 
were  to  make  appraisements  in  such  six  ports,  and  in  other 
ports  appraisements  were  to  be  made  by  two  merchant  ap- 
praisers to  be  selected  by  the  collector,  and  one  merchant  ap- 
praiser to  be  chosen  by  the  importer.  This  act  of  1818  was 
to  continue  in  force  for  two  years.  By  the  Act  of  April 
18th,  1820,  it  was  continued  in  force  till  March  4th,  1828,  (8 
27.  8.  Stat,  at  Large^  568.)  Then  came  the  Act  of  March 
Ist,  1823,  before  referred  to.  The  16th  section  of  that  Act 
provides  for  the  appointment,  by  the  President  and  Senate, 
in  each  one  of  seven  designated  ports,  of  two  appraisers,  who 
were  to  make  appraisements  in  such  seven  ports,  and  in  other 
ports  appraisements  were  to  be  made  by  two  merchant  ap- 
praisers to  be  appointed  by  the  collector. 

A  change  was  made  by  the  Act  of  1818,  and  continued  by 
tiie  Acts  of  1820  and  1828,  in  the  mode  of  appointing  ap- 
praisers who  were  to  appraise  in  the  case  of  damaged  goods. 
By  the  Act  of  1799,  there  were  to  be  two  appraisers,  one  ap- 
pointed by  the  collector  and  the  other  by  the  importer.  By 
the  Act  of  1818  there  were  to  be  in  certain  ports  two  stand- 
ing appraisers  appointed  by  the  United  States,  and  one  ap- 
praiser selected  in  each  case  by  the  importer,  and  in  other 
ports  two  appraisers  selected  in  each  case  by  the  collector,  and 
one  appraiser  selected  in  each  case  by  the  importer.  This 
was  continued  by  the  Act  of  1820.     By  the  Act  of  1828  there 


184  SOUTHERN  DISTRICT  OP  NEW  YORK, 

The  XJuited  States  «.  Fhelpa. 


were  to  be  in  certain  ports  two  standing  appraisers  appointed 
by  the  United  States,  and  in  other  ports  two  appraisers  ap- 
pointed in  each  case  by  the  collector.  The  change  made  bj 
the  Act  of  1818  from  the  Act  of  1799,  in  the  mode  of  select- 
ing the  appraisers,  was  a  marked  and  a  material  one,  as  it 
gave  to  the  United  States  the  selection  of  two  appraisers,  and 
to  the  importer  the  selection  of  one,  instead  of  giving  to  the 
United  States  the  selection  of  one,  and  to  the  importer  the 
selection  of  one.  Hence,  when  the  15th  section  of  the  Act 
of  1818  said  that  *^  the  same  proceedings  shall  also  be  had," 
on  a  daim  to  a  redaction  of  duties  on  acconnt  of  damage,  the 
reference  would  seem  to  have  been  to  an  appraisement  ^'  in 
the  manner  prescribed  "  by  the  ninth  section  of  that  Act, 
without  any  prescription  that  it  should  be  either  before  or  af- 
ter the  entry  of  the  goods.  The  appraisement  is  a  proceed- 
ing. By  the  52d  section  of  the  Act  of  1799,  appraisement  to 
ascertain  damage  was  to  be  made  by  appraisers  appointed  in 
a  manner  prescribed  by  that  section.  By  the  15th  and  9th 
sections  of  the  Act  of  1818,  such  appraisement  was  to  be 
made  by  appraisers  appointed  in  a  different  manner.  The 
requirement  of  the  15th  section  of  the  Act  of  1818,  that 
goods  taken  from  a  wreck  shall  not  be  entered  until  they 
have  been  appraised,  is  clear  and  explicit.  Prior  to  that  Act 
goods  taken  from  a  wreck  could  have  been  entered  as  other 
imported  goods,  before  appraisement,  and  were  within  the 
provisions  of  law  as  to  goods  damaged  during  the  voyage. 
Beasons  can  very  well  be  suggested  why  a  change  was  made 
in  regard  to  wrecked  goods,  coming  into  the  country  in  an  ir- 
regular way,  and  not  by  the  discharge  of  them  at  a  landing 
wharf,  directly  out  of  the  vessel  which  brought  them,  such 
change  requiring  them  to  be  appraised  before  entry.  But  no 
satisfactory  reasons  can  be  assigned  for  a  like  change  in  regard 
to  damaged  goods  landed  in  the  regular  way,  and  it  ought  to 
appear  very  clearly  from  the  language  of  the  statute,  that  a 
change  was  intended  in  regard  to  such  goods.  The  system 
prescribed  by  the  Act  of  1799,  and  continued  in  force,  in  re- 
gard to  the  landing  of  goods  regularly  imported,  was  that 


NOVEMBER,  1879.  185 


The  Unitdd  Stales  «.  Phelpe. 


they  should  first  be  entered  and  the  duties  on  them  be  paid  or 
secured,  and  then  a  permit  be  obtained  for  their  landing,  and 
se?ere  penalties  were  imposed  for  landing  goods  without  a 
permit.  {Act  of  March  2d,  1799,  §§  49,  60,  1  U.  S.  Stat,  at 
Zarge,  664,  665.)  It  is  impossible  for  an  importer  to  ascer- 
tain, until  he  sees  his  goods,  after  they  have  been  landed  in 
ponnance  of  a  permit  following  an  entry,  whether  thej  have 
been  damaged  or  not.  Hence,  the  52d  section  of  the  Act  of 
1799  clearly  provides  for  the  entry,  the  payment  of  duties, 
the  permit,  and  the  landing,  in  the  above  order,  and  then  for 
the  allowance  for  damage.  It  ought  to  require  explicit  lan- 
guage to  make  a  change  in  this  order  of  proceeding.  It  was 
veiy  proper  to  require  that  proof  of  damage  should  be  lodged 
within  ten  days  after  the  landing.  But,  to  require  appraise- 
ment before  entry  or  landing,  in  the  case  of  goods  regularly 
imported,  would  be  to  prescribe  a  system  impossible  of  prac- 
tical execution.  These  views  apply  to  the  provisions  of  the 
21st  section  of  the  Act  of  1823.  The  natural  meaning  of  the 
words  of  that  section,  which  provide  that  ^^  the  same  proceed- 
ings shall  be  ordered  and  executed  in  all  cases  where  a  reduc- 
tion of  duties  shall  be  claimed  on  account  of  damage  which 
any  goods,  wares  or  merchandise  shall  have  sustained  in  the 
course  of  the  voyage,"  is  the  same  as  the  natural  meaning  of 
the  words  in  the  15th  section  of  the  Act  of  1818,  which  pro- 
vide that  *^  the  same  proceedings  shall  also  be  had  where  a  re- 
duction of  duties  shall  be  claimed  on  account  of  damage 
which  any  goods,  wares  or  merchandise  imported  into  the 
United  States  shall  have  sustained  in  the  course  of  the  voy- 
age," and  that  is,  that  the  appraisement  proceedings  shall  be 
condacted  in  the  manner  before  prescribed  in  the  Acts  re- 
q>ectively,  and  not  that  goods  regularly  imported  and  bonded, 
and  not  *^  taken  from  any  wreck,"  shall  be  appraised  before 
entry. 

In  the  case  of  Shdtan  v.  Avstin^  (1  Cliff ord^  888,)  af- 
firmed by  the  Supreme  Court,  as  SheUon  v.  The  C6Uectoi\  (5 
WaUace^  118,)  the  52d  section  of  the  Act  of  1799  had  not 
been  complied  with,  in  that  proof  to  ascertain  the  damage 


136  SOUTHERN  DISTRICT  OF  NEW  YORK, 

The  United  States  9.  Phelps. 


had  not  been  lodged  within  the  ten  days  preBcribed  by  that 
Bection.  The  goods  were  not  taken  from  a  wreck,  bnt  they 
were  entered  before  they  were  appraised.  Mr.  Jastice  Clif- 
ford, in  the  Circnit  Coort,  held  that  they  must  pay  dnties  on 
their  sound  value,  as  entered,  because,  under  the  21st  section 
of  the  Act  of  1823,  they  were  required  to  be  appraised  before 
entry,  in  order  to  warrant  an  allowance  for  damage  on  the 
voyage.  In  the  Supreme  Court  no  counsel  appeared  for  the 
plaintiff  in  error.  The  Court  held  that  there  could  be  no  al- 
lowance for  damage  under  the  Act  of  1799,  because  proof 
had  not  been  lodged  within  the  ten  days  after  landing ;  and 
that  there  could  be  none  under  the  Act  of  1823,  because 
there  had  been  an  entry  before  appraisal.  The  first  ground 
was  an  adequate  one  for  the  affirmance  of  the  judgment,  and 
the  United  States  alone  were  represented  on  the  ai^ument. 
In  the  present  case  the  record  shows  that  the  requirement  aa 
to  the  ten  days  was  complied  with. 

By  section  5,595  of  the  Bevised  Statutes,  those  statutes 
are  declared  to  embrace  the  statutes  of  the  United  States, 
general  and  permanent  in  their  nature,  in  force  on  the  1st  of 
December,  1873.  It  follows  that  the  provisions  of  the  Be- 
vised Statutes  are  to  be  construed  as  the  enactments  in  force 
on  the  1st  of  December,  1873,  would  have  been  construed. 
Sections  2,927  and  2,928  of  the  Bevised  Statutes  are  both  of 
them  enacted  as  having  been  in  force  on  the  1st  of  December, 
1873.  The  regulations  of  the  Treasury  Department  in  re- 
gard to  claims  for  damage  allowance,  in  force  and  acted  on 
since  the  Bevised  Statutes  were  enacted,  clearly  recognize  the 
practice  and  the  propriety  of  entering  goods,  and  then  claim- 
ing a  damage  allowance  on  them,  and  proceeding  to  an  ap- 
praisement. Such  was  the  practice  in  the  present  case,  acted 
on  by  the  collector,  even  to  the  paying  back  of  the  deposited 
duties  on  the  amount  of  the  damage. 

It  is  contended  for  the  United  States,  that,  under  the  2l8t 
section  of  the  Act  of  1823,  goods  damaged  in  the  course  of 
the  voyage,  though  not  taken  from  a  wreck,  must  be  ap- 
praised before  entry,  in  order  to  warrant  an  allowance  for 


DECEMBER,  1881.  137 


The  United  States  v.  Malone. 


damage ;  and  that  as,  in  this  case,  the  entry  was  made  before 
appraisal,  no  allowance  for  damage  was  lawfal.  The  District 
Gonrt  took  a  different  view.  The  practice  of  the  Treasury 
Department  and  of  the  collector  has  evidently  been  contrary 
to  what  18  now  contended  for  by  the  United  States,  notwith- 
standing the  decision  of  the  Sapreme  Conrt  in  ShdUm  v*  The 
Collector.  This  practice,  it  is  fair  to  assnme,  has  obtained 
because  the  Treasury  Department  did  not  regard  that  decision 
as  disposing  of  the  question  finally.  It  is  important  that  the 
question  should  be  speedily  decided  by  the  Supreme  Court, 
both  in  the  interest  of  the  Government  and  of  importers ;  and, 
in  view  of  all  the  facts  of  the  case,  I  think  the  most  proper 
disposition  of  it  is,  to  affirm  the  judgment  of  the  Court  below, 
and  thus  enable  the  United  States  to  obtain  speedily  a  recon- 
sideration of  the  question  by  the  Supreme  Court,  instead  of 
sending  the  case  back  for  a  new  trial  in  the  District  Court, 
with  a  long  delay  before  it  can  reach  the  Supreme  Court. 
The  jadgment  is  affirmed. 

C,  P.  L.  Buder^  Jr.^  {Aseistant  Distrid  Attorney^  for 
the  plaintiffii  in  error. 

Cha/rUe  M.  DaCoeta^  for  the  defendants  in  error. 


The  United  States 
DoKiNiOK  Malone  and  Peteb  A.  Malone. 

An  in^ctment,  under  §  9,266  of  the  Revised  Statutes,  charged,  in  one  oonnt. 
the  imlawfal  uae  of  a  still,  for  the  purpose  of  distilling  spirits,  on  premises 
where  ale  was  made,  and,  in  another  count,  snbstantiaUy  a  like  offence.  The 
defendant  was  found  guilty  on  one  count,  and  not  on  the  other,  and  was  sen- 
tenced to  be  imprisoned  and  fined.    At  a  subsequent  term  he  mored  to  ya- 


188  SOUTHERN  DISTRICT  OF  NEW  YORK, 

The  IJxiited-StateB  «.  Malone. 

cate  the  jadgment,  on  the  ground  that  the  Bame  offonee  wm  charged  in  the 
two  counts,  and  that  the  yerdiot  on  the  first  count  wss  made  Yoid  by  that  on 
the  second ;    Held,  that  the  motion  must  be  denied,  because, 

(1.)  Under  the  Rules  of  the  Court  the  motion  wss  too  late ; 

(2.)  The  term  at  which  the  judgment  was  entered  haying  eipired,  the 
Court  had  no  power  to  yaoate  it ; 

(8.)  The  question  raised  wss  adjudicated  by  the  passing  of  sentence ; 

(4.)  The  offenoes  charged  in  the  two  counts  were  two  different  ofienoes. 
Knowledge  is  not  made,  by  g  8,266,  an  ingredient  in  the  offence, -and,  there- 
fore, it  need  not  be  ayerred  in  the  indictment. 

(before  Blatohpobd,  Bbnbdiot  and  Bbowk,  JJT.,  Southern  District  of  New  York, 
December  20th,  1881.) 

Bbnedictt,  J.  The  defendants  were  jointly  indicted,  and 
tried  together  at  the  March  term,  1881.  The  indictment  con- 
tained three  counts,  framed  nnder  §  8,266  of  the  Bevised 
Statutes.  The  first  count  charged,  in  substance,  that  the  de- 
fendants, on  the  5th  day  of  May,  a.  d.,  1879,  unlawfully  did 
use  a  still  for  the  purpose  of  distilling  spirits,  on  premises 
where  ale  was  manufactured,  to  wit,  on  the  premises  number 
613  West  62d  street,  in  the  city  of  New  York. 

The  second  count  charged,  in  substance,  that  the  defend- 
ants unlawfully  and  knowingly  did  use,  and  did  aid  and  assist 
in  using,  a  still  for  the  purpose  of  distilling  spirits,  on  the 
premises  number  513  West  52d  street,  on  which  said  prem- 
ises, fermented  liquor,  to  wit,  ale,  was  manufactured  and  pro- 
duced. 

The  third  count  charged,  in  substance,  that  the  defendants 
unlawfully  and  knowingly  did  use  a  boiler  for  the  purpose  of 
distilling  spirits  on  premises  where  ale  was  produced,  that  is 
to  say,  on  the  premises  number  513  West  52d  street,  in  the 
city  of  New  York. 

The  verdict  of  the  jury  upon  the  first  count  was  not  guilty 
as  to  Peter  A.  Malone,  and  guilty  as  to  Dominick  Malone. 
On  the  second  and  third  counts  the  verdict  was  not  guilty  aa 
to  both  the  defendants.  Thereupon,  Peter  A.  Malone  was 
discharged,  and  afterwards,  and  at  the  May  term,  on  motion 
of  the  District  Attorney,  Dominick  Malone  was  sentenced  to 
be  imprisoned  for  a  period  of  16  months,  and  to  pay  a  fine  of 


DECEMBER,   1881.  189 


The  United  States  v,  Malone. 


$1,000.  Now,  at  the  Ootober  term  of  the  Court,  application 
IB  made  in  behalf  of  the  prisoner  to  vacate  the  judgment  and 
commitment.  This  application  is  based  on  the  proposition 
that  tfie  offence  charged  in  the  first  count  of  the  indictment 
is  the  same  offence  charged  in  the  second  count,  and  that  the 
acquittal  on  the  second  count  must  prevail  and  makes  void 
the  verdict  upon  the  first  count.  To  this  there  are  several 
answers. 

First.  The  objection,  if  valid,  comes  too  late.  By  the 
Bules  of  this  Court,  when  a  conviction  is  had,  sentence  is  de- 
ferred to  the  next  term  of  the  Court  for  the  purpose  of  af- 
fording opportunity  to  move  meanwhile  in  arrest  of  judgment 
or  for  a  new  trial,  and  the  Bules  prescribe  that  notice  of  such 
a  motion  must  be  filed  within  three  days  after  the  conviction, 
and  the  minutes  of  the  trial,  as  settled  by  the  Judge  who  tried 
the  case,  be  filed  before  the  first  day  of  such  subsequent  term. 

In  thifi  case  the  prisoner  was  sentenced  at  the  term  subse- 
quent to  the  conviction,  in  the  absence  of  any  motion  for  a  new 
trial,  or  in  arrest  of  the  judgment,  in  pursuance  of  the  Bules, 
and  he  cannot  now,  at  this  late  day,  after  judgment,  and 
when  his  term  of  imprisonment  has  partly  expired,  upon 
a  motion  like  the  present,  urge  an  objection  which,  if  valid 
and  taken  in  the  manner  prescribed  by  the  Bules,  would 
have  arrested  the  judgment.  By  omitting  to  comply  with 
the  Bules,  the  prisoner  must  be  deemed  to  have  waived  the 
right  to  raise  in  this  Court  any  question  proper  to  be  raised 
in  the  manner  required  by  the  Bules. 

Second,  The  judgment  sought  to  be  vacated  was  rendered 
at  the  May  term  of  this  Court,  and  this  application  is  made  at 
the  October  term  thereafter.  The  term  at  which  the  judg- 
ment was  entered  having  expired,  no  power  remains  in  the 
Court  to  vacate  the  judgment.  {The  Bank  v.  LdHtut^  1 
WoodSj  11 ;  Bank  of  United  States  v.  Moes^  6  How.^  31.) 

Third.  The  question  now  presented  in  regard  to  the  ef- 
fect of  the  verdict  rendered  upon  the  second  count  was 
necessarily  involved  in  the  question  of  sentence,  and,  when 
the  prisoner  was  sentenced,  it  was  necessarily  adjudged  by  the 


140  SOUTHERN  DISTRICT  OF  KEW  YORK, 

The  Uoited  SUtes  «.  Malone. 

Conrt  that  the  verdict  upon  the  second  count  did  not  make 
void  the  verdict  on  the  first  count.  That  determination  can- 
not now  be  brought  in  review  by  an  application  like  the  pres- 
ent, made  after  fiual  judgment. 

It  is  said,  however,  that  the  judgment  is  void,  because 
there  is  no  conviction,  the  defendant  having  been  acquitted 
on  the  second  count.  But,  how  can  the  judgment  be  held 
void,  when  the  Court  had  jurisdiction  of  the  person  and  of 
the  subject-matter,  and  the  record  shows  a  valid  indictment, 
a  verdict  of  guilty  upon  one  of  its  counts,  and  a  sentence  such 
as  the  law  permits  for  the  offence  charged  in  such  count?  If 
there  was  error,  as,  manifestly,  there  was  not,  in  the  deter- 
mination made  at  the  trial  in  regard  to  the  effect  of  the  verdict 
of  acquittal  upon  the  second  count,  such  error  would  not  make 
void  the  sentence  pronounced  upon  the  verdict  of  guilty  which 
the  record  shows  to  have  been  rendered  on  the  first  counL 

Moreover,  the  contention  in  behalf  of  the  prisoner,  that 
error  was  committed  at  the  trial  in  construing  the  verdict  to 
be  a  verdict  of  guilty,  rests  upon  the  assumption  that  the  offence 
charged  in  the  second  count  is  the  same  offence  charged  in 
the  first  count.     The  assumption  is  without  foundation. 

It  is  possible  for  a  person  to  commit  two  similar  crimes 
on  the  same  day,  and  to  be  indicted  and  punished  therefor  ; 
and  two  crimes  are  committed  when  two  different  stills  are 
used  at  different  times  on  the  same  day,  on  premises  where 
ale  is  manufactured.  It  is  not  to  be  denied  that  two  such 
crimes  may  be  charged  in  one  indictment,  in  different  counts, 
nor  that  in  such  case  each  separate  count  of  the  indictment, 
in  judgment  of  law,  charges  a  separate  and  distinct  offence. 
Each  count  in  an  indictment  is,  in  fact  and  theory,  a  separate 
indictment.  Different  counts  are  allowable  only  on  the  pre- 
sumption that  they  are  different  offences,  and  every  count  sa 
imports  on  the  face  of  the  record.  {Heard  on  Orim.  Pleads- 
ing^  235,  236.  See,  also,  Rev,  Stat^  §  1,024.)  Accordingly, 
this  record  shows  the  prisoner  charged,  in  two  separate  counts, 
with  having  used  two  different  stills  at  different  times,  on  the 
day  and  at  the  place  described ;  and  there  is  no  room  to  con- 


DECEMBER,  1881.  141 


The  United  States  v.  Malooe. 


tend  that,  because  the  jary  convicted  the  prisoner  on  one 
count,  and  acquitted  him  as  to  the  other,  they  found  him 
guilty  and  likewise  not  guilty  of  the  same  offence. 

It  has  been  said,  by  way  of  argument,  we  suppose,  for  the 
record  discloses  no  such  thing,  that  at  the  trial  evidence  as  to 
only  one  offence  was  giyen.  If  such  be  the  fact,  we  fail  to 
see  how  the  conclusion  follows  that  the  prisoner  was  improp- 
erly adjudged  to  have  been  convicted  of  one  offence.  The 
evidence  having  proved  the  ase  by  the  prisoner  of  one  still, 
and  no  more,  on  the  day  and  at  the  place  described,  what  was 
there  for  the  jury  to  do  but  to  render  the  verdict  they  did, 
namely,  guilty  of  using  one  still  and  not  guilty  of  using  an- 
other? On  sach  an  indictment  and  upon  such  evidence,  the 
verdict  must  necessarily  be,  gnilty  on  one  count  and  not  guilty 
on  the  other.  Plainly  enough,  therefore,  the  verdict  in  this 
case  amounts  to  a  conviction  on  the  first  count  of  the  indict- 
ment, and  no  error  was  committed  when  it  was  so  held  at  the 
time  of  passing  sentence. 

In  addition  to  the  point  already  considered,  we  find  upon 
the  brief  a  second  point,  not  pressed  at  the  argument,  that  the 
first  count  of  the  indictment  charges  no  offence,  because  it 
omits  to  aver  knowledge.  It  appears,  from  what  has  already 
been  said  in  regard  to  the  first  point,  that  an  objection  like 
this  cannot  be  considered  upon  the  present  application.  But, 
the  point,  if  open  for  consideration,  could  not  prevail,  for  the 
reason  that  knowledge  is  not  made  by  the  statute  to  be  an  in<- 
gredient  in  the  offence.  When  a  statute  prohibits  generally 
and  makes  no  reference  to  intention,  an  averment  of  knowl- 
edge is  unnecessary.  ( United  States  v.  Smithy  2  Maaorij  143, 
160;  1  Stark.  Cnm.  Fly  182, 183.)  Here  the  statute  prohib- 
its; the  use  of  a  still  for  the  purpose  of  distilling.  This  in- 
dictment charges  an  act  such  as  is  described  in  the  statute, 
done  for  the  purposes  specified  in  the  statute,  and,  conse- 
quently, charges  the  offence  created  by  the  statute. 

Sutherland  Tennet/j  {AsHstant  District  Attorney^  for  the 
United  States. 


Roger  M.  Sherman j  for  the  defendant. 


142  SOUTHERN  DISTRICT  OF  NEW  YORK, 

¥\Mgg  9.  The  MftnhBtton  Railway  Company. 


Gboboe  a.  Flagg  and  others 

vs. 

The  Manhattan  Bailwat  Coxpant,  The  Metropolitan 
Elevated  Eailwat  CoHPAirr,  and  The  New  Tosk 
Elevated  Bailroad  Coupajstt.     In  Equity. 

The  hiBtof7  giyen  of  the  leaaes  of  May  20th,  1879,  made  by  the  MetropoUtaa 
Company  and  the  New  York  Company  to  the  Manhattan  Company,  and  of 
the  ''  tripartite  agreement  *  of  that  date  between  the  three  companiea,  and  of 
the  litigation  respecting  said  leasee  and  said  agreement,  and  of  the  agree- 
ments of  October  22d,  1881,  between 'the  three  oompanies»  modifying  the  ssid 
leases  and  the  said  '*  tripartite  agreement" 

The  agreements  of  October  82d,  1881,  do  not  impair  any  Tested  rights  of  the 
stockholders  of  the  Metropolitan  Company. 

There  was  no  contract  between  the  Manhattan  Company  and  the  indiTidnai 
stockholders  of  the  Metropolitan  Company,  or  between  the  latter  company 
and  its  stockholders,  that  they  should  haye  a  diyidend  of  10  per  eeni,  per 
OMiMm  on  their  stock. 

The  directors  of  a  corporation  hare  a  general  power  to  make  and  modify  its 
contracts,  and  its  stockholders  cannot  control  that  power,  nor  was  it  neces- 
sary to  the  yalidity  of  the  agreements  of  October  2Sd,  1881,  that  they  shonld 
haye  been  approyed  by  any  one  or  more  stockholders. 

The  Act  of  April  28d,  1889,  {Law*  of  New  York,  1889,  c^.  218,  p.  196,)  au- 
thorised the  making  of  the  said  leases  and  agreements. 

The  new  sgreements  were  made  in  good  faith  and  with  a  &ir  exercise  of  the 
judgment  and  discretion  of  the  directors  of  the  Metropolitan  Company. 

(Before  Blatohvoed,  J.,  Southern  District  of  New  York,  December  21st^  1881.) 

Blatohford,  J.  This  suit  is  brought  by  three  perBons  as 
individoals  and  two  persoDS  as  copartners,  who  claim  to  be 
owners  of  shares  of  the  capital  stock  of  the  Metropolitan  £1> 
evated  Railway  Company,  155,  10, 150  and  75  in  number,  of 
the  par  valae  of  $100  each,  there  being  65,000  shares  in  alL 
The  three  companies  defendants  are  railroad  corporations, 
organized  under  the  laws  of  the  State  of  New  York,  and  will 
be  called  the  Manhattan,  the  Metropolitan  and  the  New  York. 


DEGEMBEB,  1S81.  148 


Flagg  V.  The  Manhattan  Railway  Company. 


The  first  company  had  no  linefi  of  railway.  The  second  and 
third  had  elevated  railways  in  the  city  of  New  York.  On 
the  SOth  of  May,  1879,  the  three  companies  entered  into  a 
written  agreement,  known  as  the  '^tripartite"  agreement. 
It  recites  that  the  agreement  is  made  ''  for  the  parpose  of 
avoiding  the  danger  of  crossing  elevated  railway  tracks  upon 
the  same  level,  and  otherwise  secnring  to  the  people  of  New 
York  the  advantages  of  safer  and  more  rapid  transit  through 
the  action  of  one  directing  body."  It  provides  for  the  execu- 
tion of  the  leases  hereinafter  mentioned,  and  contains  other 
provisions  which  it  is  not  important  at  this  point  to  notice. 
On  the  same  day,  the  Metropolitan  and  the  Manhattan  ex- 
ecuted an  agreement  of  lease  in  writing.  It  recites  that  the 
Metropolitan  is  authorized  to  construct  and  operate  a  line  of 
elevated  railway  in  the  dty  of  New  York,  a  portion  of  which, 
specifying  it,  is  completed  and  in  operation  by  it,  and  is  en- 
gaged in  constructing  other  parts ;  that  the  New  York  is  the 
owner  of  and  engaged  in  operating  certain'  lines  of  elevated 
railway  in  said  city,  over  routes  heretofore  established  by 
law  for  it,  *'  which  railways  and  routes  at  various  places  unite 
with  the  railways  and  routes"  of  the  Metropolitan  '^and 
cross  and  connect  and  unite  therewith  at  the  same  level ; " 
that  **'  the  development  of  the  business  of  passenger  traffic  on 
elevated  railways  in  said  city  has  made  it  necessary  for  each 
of  said  companies  to  run  trains  in  such  manner,  and  with  such 
speed  and  frequency,  that  the  crossing  of  the  trains  of  one 
company  over  and  upon  the  tracks  of  the  other  company, 
and  the  running  of  die  trains  of  both  companies  upon  the 
portions  of  tra^  and  route  jointly  owned  or  used  by  them,  is 
deemed  impracticable  except  at  the  risk  of  inconvenience  and 
delay  to  the  public  and  danger  to  human  life ; "  that,  *'  after 
protracted  efforts  to  devise  plans  for  operating  all  said  lines  so 
as  to  afford  to  the  public  perfect  fullness  of  accommodation 
and  safety,  it  is  the  opinion  of  both  companies,  that  such 
management  cannot  be  assured  while  the  trains  of  the  two 
companies  are  run  under  the  control  of  differing  managing 
officers,  or  otherwise  than  by  placing  the  lines  of  both  com- 


144  SOUTHERN  DISTRICT  OP  NEW  YORK, 

Flagg  «.  The  Manhattan  Railway  Company. 

panies  nnder  one  sole  control,  with  power  to  change  from 
time  to  time  the  termini  of  rentes,  to  regulate  and  limit   the 
passage  of  trains  from  the  tracks  of  one  company  upon  the 
tracks  of  the  other  at  the  connecting  and  crossing  points,  and 
to  do  such  other  things  and  make  such  other  changes,  from 
time  to  time,  in  the  entire  management  of  traffic  upon  the 
lines  of  both  railways,  as  experience  may  show  to  be  neces- 
sary or  desirable ; "  that  the  Manhattan  ^'  is  by  law  authorized 
to  construct  and  operate  elevated  railroads  in  the  city  of  New 
York,  whether  owned  or  leased  by  it,  and  is  willing  and  de- 
sirous to  accept,"  and  the  Metropolitan  and  the  Kew  York 
^^  have  agreed  to  execute  and  deliver  to  it,  leases  of  all  their 
respective  railways  and  properties,  as  described  in  this  instru- 
ment, and  in  a  similar  instrument  of  even  date  herewith,  to 
be  executed  by  the  New  York,*'  "  as  lessor  to  the  Manhattan," 
'^  upon  all  and  singular  the  terms,  agreements  and  conditions 
herein  and  therein  mentioned  and  set  forth  ; "  that  the  Met- 
ropolitan ^^has  heretofore  executed  to   the  Central   Trust 
Company  of  New  York  its  first  mortgage,  bearing  date  July 
10,  1878,"  "securing  the  bonds  therein  provided  for,  the  total 
amount  thereof  now  issued  and  agreed  to  be  issued  being " 
$8,500,000  of  principal ;  that  the  Metropolitan  '^  may  be  here- 
after required  "  by  the  Manhattan  "  to  issue  further  amounts 
of  the  said  bonds  secured  by  the  said  mortgage  in  excess  of 
said "  $8,500,000,  "  for  the  purpose  of    constructing  and 
equipping  extensions  of  the  line  of  the  Metropolitan,"  "  pay- 
ment of  all  which  bonds,  principal  and  interest,  is  to  be  as- 
sumed by  the  Manhattan ;  "  and  that  the  Metropolitan  ^'  has 
issued  and  agreed  to  issue  its  capital  stock,  to  the  amount,  at 
its  par  value,"  of  $6,500,000,  upon  which  stock  the  Man« 
hattan  "has  agreed  to  guarantee  the  payment  of  a  div- 
idend of    ten  per  cent,  per  annwrn^  as    hereinafter    pro- 
vided."   Then,   by  the    agreement,  the  Metropolitan,  "in 
consideration  of  the  rents,  covenants  and  agreements  here- 
inafter mentioned,  reserved  and  contained,  on  the  part  of 
the  Manhattan,"  "  to  be  paid,  kept  and  performed,"  leases 
to  the  Manhattan  "all  and  singular  the  railroad  or  rail- 


DECEBfBER,  1881.  145 


Flagg  V.  The  ManhatUn  Railway  Compaoy. 


way,  now  owned,  operated  or  constmcted  by  it  in  the  city  of 
New  York,  as  above  described,  and  all  and  singular  the  nn- 
finished  portions  thereof  now  under  constraction,  together 
with  all  its  franchises,  rights  and  privileges  relating  thereto, 
<^r  to  the  constraction  and  operation  of  its  entire  railway  as 
authorized,  subject  to  the  said  mortgage  and  to  the  terms 
and  conditions  under  which  said  franchises  are  held  by  the 
<x>mpany,  with  all  and  singular  the  right,  title,  estate  and 
interest  which  the  Metropolitan   Company  has  in  any  real 
estate  in  the  city  of  New  York  heretofore  acquired  by  it,  or 
which  it  may  hereafter  acquire  under  contracts  already  made 
therefor,  being  aU  and  singular  the  entire  property  and  estate 
of  said  Metropolitan  Company,  except  such  of  its  franchises, 
rights  and  privileges  as  are  or  may  be  necessary  to  preserve 
its  corporate  existence  or  organization,  and  its  interest  in  the 
covenants  and  conditions  of  this  indenture."    The  lease  is 
for  999  years  from  November  1st,  1875,  or  so  long  as  the 
Manhattan  ^^  shall  continue  to  exist  as  a  corporation  and  be 
capable  of  exercising  all  the  functions  herein  stipulated  on 
its  behalf,"  the  Manhattan  paying  to  the  Metropolitan  the 
yearly  rent  of  $10,000,  payable  semi-annually  on  the  ist  days 
of  January  and  July,  the  first  payment  of  $5,000  to  be  made 
July  Ist,  1879,  '^  and  keeping  and  performing  all  and  singular 
tibe  covenants  and  agreements  hereinafter  set  forth  to  be  by 
the  Manhattan"  ^^kept  and  performed."      The  Manhattan 
assumes  and  agrees  to  pay,  as  they  respectively  become  due, 
the  principal  and  interest  of  the  said  recited  first  mortgage 
bonds  of  the  Metropolitan,  and  keep  it  harmless  from  all 
claims  against  it  arising  from  all  or  any  of  said  bonds.    Then 
follows  this  article:  ^'Article  Second.  The  Manhattan  Com- 
pany guarantees  to  the  Metropolitan  Company  an  annual 
dividend  of  ten  per  cent,  on  the  capital  stock  of  the  Metro- 
politan Company,  to  the  amount  of  six  millions  five  hundred 
thousand  dollars;  that  is  to  say,  the  Manhattan  Company 
will,  each  and  every  year  during  the  term  hereby  granted,  be- 
gianiog  with  the  first  day  of  October,  eighteen  hundred  and 
seventy-nine,  pay  to  the  Metropolitan  Company  six  hundred 
Vol.  XX.— 10 


146  SOUTHERN  DISTRICT  OP  NEW  TORE. 

Flagg  V.  The  Manhattan  Railway  Company. 

and  fifty  thousand  dollars,  free  of  all  taxes,  in  eqaal  quarterly 
payments  of  one  hundred  and  sixty-two  thousand  five  hun-» 
dred  dollars  each,  on  the  first  days  of  January,  April,  July^ 
and  October  in  each  year,  the  first  of  such  payments  to  be 
made  on  the  first  day  of  January,  eighteen  hundred  and 
eighty ;  and  the  Manhattan  Company  will,  from  to  time,  exe- 
cute in  proper  form  a  guaranty  to  the  at|Ove  efi^ect,  printed 
or  engraved  upon  the  certificates  of  stock  of  the  MetropolitaD 
Company,  and,  as  such  stock  certificates  are  surrendered  for 
cancellation  and  re-issue,  will,  from  time  to  time,  at  the  re- 
quest of  the  holder,  renew  such  guaranty  upon  all  re-issued 
certificates."  It  is  then  provided  that  the  portions  of  the 
railway  of  the  Metropolitan  which  were  completed  on  the 
31st  of  January,  1879,  shall  be  deemed  to  have  been  operated 
from  the  close  of  business  hours  on  that  day  by  the  Manhat- 
tan, and  all  such  operation  from  and  after  that  time  shall  be 
for  the  account  of  the  Manhattan ;  that  the  Manhattan  shall 
run  the  railways,  and  keep  them  in  repair  and  working  order 
and  supplied  with  rolling  stock  and  equipment ;  that,  *^  in  ad- 
dition to  the  rental  herein  above  provided,"  it  shall  pay  all 
taxes,  assessments,  duties,  imposts,  dues  and  charges  which 
shall  become  payable  by  the  Metropolitan  or  be  imposed  on 
the  leased  property  or  its  business,  earnings  or  income ;  that 
the  Manhattan  will  save  harmless  the  Metropolitan  against 
all  expenses  of  operating  the  railways,  and  all  claims  and  suits 
for  injuries  to  persons  and  property,  or  for  causing  the  death 
of  any  person,  or  for  any  other  thing  in  the  operation  or 
management  of  the  leased  property,  or  for  any  breach  of  con- 
tract by  the  Manhattan  in  carrying  on  the  business,  and  will 
defend  all  suits  and  claims  brought  against  the  Metropolitan 
in  respect  of  any  matter  arising  out  of  the  management  or 
operation  of  said  railways  since  January  31st,  1879 ;  and  that, 
in  case  the  Manhattan  shall  at  any  time  fail  to  pay  in  full  said 
cash  rental  '^or  the  guaranteed  dividend  aforesaid,  as  the  same 
shall  become  payable,  or  fail  or  omit  to  keep  and  perform  the 
covenants  and  agreements  herein  contained,  or  any  of  them, 
and  continue  in  default  in  respect  to  the  performance  of  such 


DECEMBER,   1881.  147 


Flagg  V.  The  Manhattan  Railway  Company. 


covenant  or  agreement  or  payments  for  the  period  of  ninety 
daj6,"  the  Metropolitan  may  enter  on  the  leased  railways  and 
premises  and  thenceforth  hold,  possess  and  enjoy  them  as  of 
its  former  estate,  and,  npon  such  entry,  the  interest  of  the 
Manhattan  therein  shall  cease.  The  Manhattan  then  agrees 
with  the  Metropolitan  that  it  will  execute,  acknowledge  and 
deliver  ^'  any  and  all  instruments  for  the  more  effectually  as- 
Buring  unto  the  Metropolitan  "  "  the  payment  of  the  cash 
rental  and  dividends  hereinbefore  reserved  or  agreed  to  be 
paid."  On  the  same  20th  of  May,  1879,  an  agreement  of 
lease  in  writing  was  executed  by  the  Manhattan  and  the  New 
York,  in  like  terms,  in  all  respects,  mutatis  mutandis^  with 
the  one  between  the  Manhattan  and  the  Metropolitan. 

Under  these  agreements  of  lease  the  Manhattan  proceeded 
to  operate  the  railways  of  the  other  two  companies.  On  the 
2d  of  July,  1881,  The  People  of  the  State  of  New  York 
brought  a  suit,  in  the  Supreme  Court  of  New  York,  against 
the  Manhattan,  the  complaint  in  which  sets  forth  the  fact  of 
said  leases  and  the  operation  of  the  roads  under  them  by  the 
Manhattan ;  that  by  their  terms  it  agreed  to  pay  oatstanding 
obligations  of  the  other  two  companies,  amounting  to  very 
large  sums,  and,  under  them,  is  now  liable  for  the  payment 
of  bonds  of  said  companies,  amounting  in  tl)e  aggregate  to 
about  $21,000,000,  and  the  interest  thereupon,  and  for  the 
payment  of  all  taxes  on  said  roads,  and  to  pay  to  said  com- 
panies certain  additional  fixed  charges  created  by  said  leases, 
and  which  aggregate  more  than  $1,300,000  per  annum  ;  that 
the  Manhattan  is,  and  for  a  long  time  has  been,  operating  said 
railroads  at  a  great  loss,  which  loss,  for  the  year  ending  Sep- 
tember 30th,  1880,  was,  according  to  its  estimates,  about 
$500,000 ;  that  the  continued  operation  of  said  road  by  it  will 
result  in  further  loss  to  it;  that  it  owes,  and  for  a  long  time 
past  has  owed,  a  sum  exceeding  $900,000  dollars  for  taxes 
unpaid,  a  large  part  of  which  has  been  due  for  more  than  one 
year ;  that  it  has  no  assets  with  which  to  meet  its  existing 
indebtedness  and  the  requirements  of  said  leases,  except  the 
receipts  which  accrue  to  it,  from  time  to  time,  from  said  roads, 


148  SOUTBERN  DISTRICT  OF  NEW   YORK, 

Flaggy  V.  The  Manhattan  Railway  Company. 

which  fall  short  of  its  annually  accruing  obligations  to  the 
amount  of  at  least  $1,000,000  per  annum;  and  that,  on  or 
about  April  25th,  1881,  it  addressed  a  communication  in 
writing  to  the  mayor,  comptroller  and  corporation  counsel 
of  the  city  of  New  York,  whereby  it  declared  itself  to  be 
unable  to  defray  its  obligations,  especially  its  indebtedness  for 
taxes,  and,  in  substance,  declared  itself  insolvent,  and  showed 
it  had  been  so  for  more  than  a  year.  The  complaint  prayed 
a  dissolution  of  the  incorporation  of  the  Manhattan  and  a  for- 
feiture of  its  corporate  rights,  privileges  and  franchises,  and 
the  appointment  of  a  receiver  of  its  property,  and  of  a  tem- 
porary receiver.  On  the  12th  of  July,  1881,  the  Manhattan 
answered  the  complaint,  denying  its  insolvency,  admitting 
that,  during  the  year  ending  September  30th,  1880,  the  said 
roads  were  operated  by  it  at  a  loss,  and  that,  on  or  about  the 
25th  of  April,  1881,  it  addressed  a  communication  to  the 
mayor,  comptroller  and  corporation  counsel  of  the  city  of 
New  York,  and  denying  the  other  material  allegations  of  the 
complaint.  On  the  13th  of  July,  1881,  the  Supreme  Court, 
by  Mr.  Justice  Westbrook,  after  a  hearing  of  both  parties, 
appointed  John  F.  Dillon  and  Amos  L.  Hopkins  to  be  tem- 
porary receivers  of  the  Manhattan.  On  the  23d  of  July, 
1881,  the  New  York  presented  to  the  Supreme  Court  a  peti- 
tion in  said  suit,  praying  that  the  Manhattan  and  the  receivers 
be  directed  to  deliver  over  to  the  New  York  its  railways  and 
other  property.  The  petition  alleges  that  the  Manhattan  owes 
the  New  York,  for  gross  rental,  dividend  rental  and  interest  on 
mortgage  bonds,  |465,000,  and  has  not  paid  the  taxes  assessed 
on  the  New  York  for  1879  and  1880 ;  that  the  New  York  owes 
no  debts  except  its  first  mortgage  bonds  to  the  amount  of 
$8,500,000,  and  claims  for  damages  and  taxes,  which  the  Man- 
hattan is  bound  to  ])ay,  and  has  a  considerable  cash  surplus  in 
hand ;  that  the  Metropolitan  owes  first  mortgage  bonds  to  the 
amount  of  $10,818,000,  and  second  mortgage  bonds  to  the 
amount  of  $2,000,000 ;  that  the  net  earnings  of  the  railways  of 
the  New  York  for  the  last  two  years  have  been  more  than 
enough  to  pay  the  interest  on  its  bonds  and  dividends  of  at 


DECEMBER,   1881.  149 


Flagg  V.  The  Manhattan  Railway  Company. 


leafit  10  per  cent,  to  its  shareh oldens,  but  the  net  earnings  of 
the  railways  of  the  Metropolitan  have  been  barely  enough  to 
pay  the  interest  on  its  bonds ;  that  the  dividend  rental  paid 
to  the  Metropob'tan  for  the  six  months  prior  to  July,  1881, 
has  been  paid  out  of  the  earnings  of  the  New  York ;  that  the 
indebtedness  of  the  Manhattan  to  the  New  York  is  increasing 
every  day,  and  the  railways  of  the  New  York  and  the  Metro- 
politan are  now  run  at  the  expense  and  risk  of  the  New  York ; 
that  the  structures  and  rolling  stock  of  the  New  York  and  the 
Metropolitan  have  not  been  kept  up  to  the  standard  required 
by  the  tripartite  agreement  and  the  leases,  and  the  falling  off  in 
this  respect  has  been  greater  on  the  New  York  railways  than 
on  the  Metropolitan;  that  the  Manhattan  has  kept  up  the 
stractores  and  rolling  stock  of  the  Metropolitan  better  than  it 
has  kept  up  those  of  the  New  York;  that  a  considerable 
number  of  the  engines  of  the  New  York  have  been  sold  by 
the  Manhattan,  which  has  neither  replaced  the  same  nor  paid 
the  proceeds  to  the  New  York ;  and  that  the  New  York,  if 
it  got  back  its  railways  in  their  present  condition,  would  have 
to  pay  a  large  sum  to  replace  its  rolling  stock  and  structures 
in  the  state  in  which  the  Manhattan  took  them.  This  peti- 
tion was  brought  to  a  hearing  before  Mr.  Justice  Westbrook 
on  the  14th  of  September.  No  decision  on  it  being  made,  the 
New  York,  on  the  30th  of  September,  presented  a  supple- 
mental petition,  praying  the  same  relief,  and  setting  forth 
that  since  the  default  of  the  Manhattan  in  not  paying  to  the 
New  York  the  various  sums  of  money  which  were  due  on 
July  2d,  ninety  days  have  elapsed,  the  last  day  of  the  ninety 
being  September  29th ;  that  none  of  said  moneys  have  been 
paid  except  $50,000,  paid  before  the  former  petition  was 
brought ;  that  on  the  29th  of  September  the  New  York  de- 
manded of  the  Manhattan  and  of  its  receivers  payment  of 
said  sums,  but  they  were  not  paid ;  that,  by  reason  thereof,  a 
forfeiture  of  said  leasehold  estate  has  accrued  to  the  ^ew 
York ;  and  that  it  is  entitled  to  the  possession  thereof.  This 
supplemental  petition  was  brought  before  the  Court  on  the 
8d  of  October,  and,  after  hearing  the  plaintiffs  in  the  suit 


160  SOUTHERN  DISTRICT  OF  NEW  YORK, 


Flagg  V.  The  Manhattan  Railway  Compaoy. 


and  the  receivers  and  the  New  York,  the  Metropolitan  and 
the  Manhattan,  an  order  wae  made  giving  leave  to  the  Man- 
hattan and  the  Metropolitan  to  answer  on  or  before  October 
5th,  and  directing  that  the  supplemental  petition  be  con- 
sidered as  part  of  the  original  petition.  On  the  8th  of  Octo- 
ber, 1S81,  the  receivers  pnt  in  an  answer  to  the  petition  of 
the  New  York,  and  the  Manhattan  pnt  in  an  answer  to  it 
similar  to  the  answer  of  the  receivers.  The  answer  sets  up 
that,  on  or  aboul  August  31st,  18S1,  one  Watson  brought  a 
snit,  in  this  Court,  by  leave  of  the  said  Supreme  Court,  in 
behalf  of  himself  and  all  other  stockholders  of  the  Manhattan, 
against  the  New  York  and  the  Metropolitan  and  the  receivers, 
bj  filing  a  bill  of  complaint  and  serving  process  on  the  de- 
fendants, the  same  being  wliat  is  known  as  a  stockholder's  suit, 
and,  in  substance  and  effect,  a  suit  by  the  Manhattan  against 
the  New  York  and  the  Metropolitan,  to  have  judicially  deter- 
mined whether  the  New  York  and  also  the  Metropolitan  are 
not  indebted  to  the  Manhattan  each  in  the  sum  of  |6,500,000, 
the  bill  alleging  an  indebtedness  of  the  New  York  to  the 
Manhattan  of  $6,500,000,  and  seeking  to  enforce  such  lia- 
bility, and  praying  an  acconnting  of  the  operations  of  the 
lease  from  the  New  York,  and  that  the  New  York  be  decreed 
to  pay  to  the  Manhattan  or  to  the  receivers  such  sum  as  may 
be  found  due ;  that  the  legal  rights  and  equities  of  the  New 
York  and  the  Manhattan  are  necessarily  involved  in  said  suit, 
and  the  Supreme  Court  ought  to  leave  the  rights  of'  the  par- 
ties to  be  determined  therein  on  issnes  regularly  made  and 
tried  on  proof ;  that  the  Supreme  Court  should  not,  as  a  Court 
of  equity,  enforce  the  forfeiture  asked,  but  leave  the  New 
York,  by  ejectment  or  other  remedy  at  law,  to  recover  pos- 
session of  the  property ;  that  there  are  $13,000,000  of  Man- 
hattan stock  outstanding  in  the  hands  of  numerous  and 
scattered  holders ;  that  the  effect  of  granting  an  order  of  for- 
feiture will  be  to  destroy  the  value  of  such  stock,  beyond 
repair;  that  on  the  last  day  of  September  an  injunction  order 
was  in  force,  granted  by  Mr.  J  nstice  Westbrook  in  said  suit, 
restraining  the  Manhattan  and  its  officers  from  interfering  in 


DECEMBER,  1881.  151 


Flagg  V,  The  Manhattan  Railway  Company. 


any  way  in  the  business  of  the  Manhattan  ;  that  the  three  com- 
panies are,  and  were  on  the  30th  of  September,  by  an  injunction 
issaed  in  a  suit  in  this  Court,  each  of  them  enjoined  from 
paying  any  taxes  imposed  on  the  capital  stock  and  personal 
property  of  any  one  of  them,  by  the  city  of  New  York,  for 
the  year  1880 ;  that  the  New  York,  in  a  suit  brought  by  it, 
in  July,  1881,  against  the  Manhattan  and  the  Metropolitan, 
obtained  an  injunction  order  restraining  the  Manhattan  from 
parting  with  any  moneys  then  in  the  possession  or  under  the 
control  of  the  Manhattan,  which  had  been  or  might  be  received 
by  it  from  traflSc  on  any  of  the  railways  of  the  New  York, 
except  as  required  strictly  for  the  operation  of  the  railways  of 
the  New  York  leased  to  the  Manhattan,  which  injunction  was 
in  force  on  the  last  day  of  September ;  that  tl\e  Manhattan 
is  not  in  default  for  not  paying  taxes  assessed  on  the  New  York 
for  the  years  1879  and  1880 ;  that,  as  to  the  remainder  of  the 
taxes  assessed  on  the  New  York,  the  Manhattan,  because  the 
taxes  were  excessive,  unequal  and  illegal,  determined,  with 
the  concurrent  consent  of  the  New  York  and  the  Metropoli- 
tan, that  payment  of  them  should  be  refused,  and  proceedings 
be  taken  to  review  such  unlawful  taxation,  and  such  proceed- 
ings were  taken  and  are  pending,  in  the  name  and  at  the 
request  of  the  New  York,  to  contest  the  legality  of  said  taxes 
and  the  obligation  of  the  Manhattan  to  pay  them ;  that  the 
alleged  default  of  the  Manhattan  in  not  paying  the  taxes 
asBCBsed  upon  the  New  York  in  the  years  1879  and  1880  was 
in  accordance  with  the  express  instructions  of  the  New  York 
to  that  effect,  and  the  action  of  the  Manhattan  in  relation 
thereto  was  essential  to  the  protection  of  the  rights  of.  the 
companies  parties  to  the  tripartite  agreement,  and  of  the 
atockholders  of  each  of  said  companies ;  and  that,  on  or  about 
the  1st  of  October,  1881,  the  New  York  and  the  Metropolitan 
demanded  of  the  receivers  the  payment  of  rent  alleged  to  be 
due  to  them  respectively  from  the  Manhattan  under  said 


Mr.  Justice  Westbrook  rendered  a  decision  on  the  petition 
of  the  New  York,  at  a  date  stated  in  the  bill  in  this  suit  to 


162  SOUTHERN  DISTRICT  OP  NEW  YORK, 

Flagg  «.  The  Manhattan  Railway  Company. 

have  been  on  or  about  the  14th  of  October,  1881.  The  de- 
cision refers  to  the  fact  that  in  the  tripartite  agreement  the 
Manhattan  agrees  to  issue  and  deliver  to  the  New  York  and 
the  Metropolitan  its  two  bonds,  each  for  $6,500,000,  payable 
on  demand,  one  to  a  trustee  for  the  stockholders  of  the  New 
York,  and  the  other  to  a  trustee  for  the  stockholders  of  the 
Metropolitan,  with  authority  to  the  trustees  respectively  to 
use  the  same,  if  they  see  fit,  in  payment  for  the  stock  of  the 
Manhattan  at  par ;  and  that  the  said  bonds  were  executed  and 
exchanged  for  stock  in  the  Manhattan,  so  that  the  New  York 
and  the  Metropolitan,  or  their  stockholders,  became  the  ownera 
of  the  entire  capital  stock  of  the  Manhattan,  then  amounting 
to  $13,000,000.  Mr.  Justice  Westbrook  held  that  the  mere 
appointment  of  the  receivers  did  not  terminate  the  lease,  nor 
did  the  insolvency  of  the  Manhattan,  if  it  were  insolvent ;  that 
the  Court  had  no  power  to  settle  the  questions  involved  sum* 
manly,  or  otherwise  than  in  an  action  regularly  instituted  by 
the  New  York  to  recover  the  property ;  that  the  failure  to 
pay  the  taxes  did  not  forfeit  the  lease,  because  the  New  York 
had  approved  the  non-payment,  and  because  there  was  a  prop- 
er question  as  to  the  lawfulness  of  the  taxes  not  paid ;  and 
that  the  testimony  as  to  a  breach  of  the  lease  by  not  keeping 
the  road  of  the  New  York  in  repair,  was  conflicting.  As  to 
the  default  for  90  days  in  paying  rent,  the  judge  remarked, 
that  the  New  York  had  obtained  the  said  injunction  against 
the  Manhattan,  and  could  not  enforce  a  forfeiture  arising  from 
the  non-payment  of  money,  when  it  had  itself  enjoined  the 
Manhattan  from  using  the  principal  part  of  its  revenue  for 
any  such  purpose.  The  Judge  then  proceeds  to  say  ;  "  Waiv- 
ing, however,  this  point,  there  is  another  of  great  importance, 
also  made  by  said  answers  of  the  Manhattan  Company  and 
the  receivers,  which  will  now  be  stated.  It  will  be  remem- 
bered that  the  capital  stock  of  the  Manhattan  Company  is 
$13,000,000.  This  entire  stock  was  transferred  and  given  to 
the  New  York  Company  and  the  Metropolitan  Company,  in 
professed  payment  of  the  leases  made  to  the  Manhattan  Com- 
pany, $6,500,000  to  each.     It  is  true  this  was  not  directly 


DECEMBER,   1881.  158 


Flagg  V.  The  Manhattan  Railway  Company. 


done,  for  the  form  was  the  execatiou  of  two  bonds  bj  the 
Manhattan  CJompanj,  of  $6,500,000  each,  the  one  to  a  trustee 
for  the  benefit  of  the  New  York  Company,  and  the  other  to  a 
tnifitee  for  the  benefit  of  the  Metropolitan,  which  bonds  were 
exchangeable  for  the  stock  of  the  Manhattan  Company  at  par, 
md  Bach  exchange  was  immediately  made.  The  directors  of 
the  Manhattan  Company  were  persons  who  were  directors  of 
the  other  two  companies.  By  the  terms  of  the  lease  the 
Manhattan  Company  was  to  pay  the  bonded  debt  of  the  other 
companies,  with  the  interest,  and  also  an  annual  dividend  of 
ten  per  cent,  on  the  capital  stock  of  the  lessor  companies,  in 
quarter  yearly  payments.  The  plain  effect  of  this  transaction 
is  manifest.  The  lessor  companies,  being  the  owners  of  the 
stock  of  the  lessee  company,  and  their  directors  being  its  di- 
rectors, the  individaals  owning  the  stock  of  the  former  reaUy 
agreed  with  themselves  to  pay  themsdves  a  large  and  liberal 
rental  for  the  nse  by  themselves  of  their  own  property. 
This  was  the  real  transaction ;  bnt,  as  individuals  were  con- 
cealed nnder  the  cloak  of  corporations,  the  apparent  transac- 
tion, which  alone  the  general  public  would  be  apt  to  see,  was 
a  leasing  from  two  independent  corporate  bodies  to  a  third 
equally  independent.  Such  leasing,  however,  was  at  a  rental 
which,  if  the  estimates  of  the  earning  capacity  of  the  leased 
roads,  submitted  upon  this  motion  by  the  petitioner,  to  prove 
the  bankruptcy  of  the  tenant  company,  are  accurate,  it  was 
impossible  for  such  company  to  pay.  The  individuals  who 
had  thus  extracted  the  life  from  the  lessee  company,  by  the 
provisions  for  the  payment  to  themselves  of  liberal  dividends^ 
and  the  absorption  of  its  entire  stock,  proceeded  to  divide,  and 
did  divide,  such  stock  among  themselves,  and  then  disposed  of 
it  to  the  general  public,  thus  shifting  the  burden  of  paying 
rent  from  themselves  to  others,  and  actually  receiving  from 
Bucb  strangers  to  the  original  transaction,  large  sums  for  the 
privilege  of  assuming  burdens  they  could  not  discharge,  and 
which  could  only  result  in  the  restoration  to  them  of  the  prop- 
erty leased,  and  the  absolute  loss  by  the  buyers  of  Manhattan 
atock  of  their  whole  purcliase  price.    To  recover  payment  for 


154  SOUTHERN  DISTRICT  OF  NEW  TORK. 

Flagg  V.  The  Manhattan  Railway  Company. 


this  stock  from  the  two  lessor  compaDies,  an  action  is  now  pend- 
ing in  the  United  States  Circuit  Court  for  the  Southern  Dis- 
trict of  New  York,  brought  by  John  C.  Watson,  a  stockhold- 
er of  the  Manhattan  Company,  to  which  suit,  by  permission 
of  this  Court,  the  receivers  appointed  in  this  action  are  par- 
ties. The  existence  of  this  action,  and  the  grave  question 
which  it  presents,  are  urged,  both  by  the  Manhattan  Coih- 
pany  and  the  receivers,  as  reasons  why,  in  advance  of  the  de- 
termination thereof,  this  Court  should  not  surrender  the 
property  it  holds  by  its  receivers.  It  would,  perhaps,  be  im- 
proper to  express  an  opinion  upon  the  merits  of  this  action, 
further  than  to  say  that  it  presents  reasonable  grounds  for  ju- 
dicial inquiry.  As  a  rule,  stock  purchased  of  a  corporation 
must  be  paid  for  either  in  cash  or  its  equivalent ;  and,  if  not 
so  paid  for,  the  money  which  it  represents  can  be  recovered. 
The  answer  of  the  petitioning  company  is,  of  course,  that  the 
stock  was  paid  for  by  the  lease  which  it  gave.  Whether, 
however,  this  was  a  honafide  exchange  of  a  substantial  thing, 
which  the  law  can  treat  and  regard  as  a  payment  for  the  stock 
transferred,  or  the  contrary,  is  the  point  which  that  suit  pre- 
sents. Leaving  out  of  view  the  very  grave  question  of  the 
power  of  the  lessor  companies  to  lease  its  roads,  and  of  the 
lessee  company  to  accept  them — which  is  not  considered,  be- 
cause not  presented  nor  argued,  but  which  leases,  if  illegal 
because  ultra  vireSy  would  leave  the  stock  of  the  Manhattan 
Company  entirely  unpaid  for — is  it  not  most  apparent  that  the 
innocent  holders  and  purchasers  of  stock  of  the  Manhattan  Com- 
pany have  grave  questions  to  submit  to  the  Court,  both  as 
against  the  lessor  companies,  and  also  their  stockholders,  who 
placed  the  Manhattan  stock  upon  the  market  to  their  great  in- 
jury ?  It  is  enough  for  present  purposes,  without  passing  di- 
rectly upon  the  merits  of  the  Watson  suit,  to  say  that  that  which 
is  unjust  is  unlawful,  and  for  every  unlavrf  ul  act  done  to  anoth- 
er to  his  injury  the  law  affords  a  remedy.  Whether  any  of  the 
apparently  bald  facts  which  have  been  mentioned  can  be  ex- 
plained so  as  to  give  them  a  diiferent  color,  is  a  question  for  the 
trial.    As  they  appear  upon  this  motion  to  me,  it  is  plain  that 


DECEMBER,  1881.  155 


Flagg  V.  The  Manhattan  Railway  Company. 


they  should  not  be  ignored,  and  the  property  asked  for  surren- 
dered npon  the  ground  of  the  non-payment  of  obligations,  in- 
curred by  the  lease,  when,  perhaps,  atrial  of  the  action  pending 
may  determine  that  the  Manhattan  Company  is  not  a  debtor  to, 
but  a  creditor  of,  the  petitioner."  After  thus  reaching  a  con- 
clusion, on  the  merits,  adverse  to  the  relief  sought,  the  Judge 
held,  that,  as  the  application  was  one  addressed  to  the  discre- 
tion of  the  Court,  and  as  it  involved  grave  and  difficult  ques- 
tions of  law  and  fact,  it  ought  to  be  disposed  of  by  an  action 
and  not  by  a  motion.  He  added  :  ^'  To  the  general  objection 
of  deciding  such  grave  questions  as  this  application  involves 
so  summarily,  is  added  one  growing  out  of  the  tripartite 
agreement  hereinbefore  detailed.  A  sort  of  quasi-partner- 
ship  was  thereby  formed  between  the  three  contracting  par- 
ties. The  Metropolitan  Company  joins  its  objections  to  those 
of  the  Manhattan  Company,  and  protests  against  the  granting 
of  the  petition,  and  claims  the  right  to  be  heard  by  a  formal 
suit  upon  the  issues  which  have  been  presented.  Their  re- 
quest is  reasonable,  and  the  relief  asked  for  must  be  denied 
upon  the  ground  of  discretion  also,  without  prejudice,  how- 
ever, t'O  the  right  of  petitioner  to  bring  an  action  against  the 
receivers,  leave  to  do  which  will  be  granted."  The  portions 
of  the  tripartite  agreement  thus  referred  to  as  forming  a  sort 
of  quasi-partnership  are,  a  provision  providing  for  building 
certain  parts  of  the  railway  -structures  at  the  joint  expense  of 
the  New  York  and  the  Metropolitan,  and  a  provision  (Article 
14)  that  whenever,  in  any  fiscal  year,  the  Manhattan  shall 
elect  to  declare  a  dividend  of  more  than  ten  per  cent,  on  its 
capital  stock,  the  Manhattan  shall  pay  to  the  New  York  and 
the  Metropolitan  a  sum  sufficient  to  enable  them  to  pay  as 
large  a  dividend  in  excess  of  ten  per  cenL^  on  the  stock  of  the 
New  York  and  the  Metropolitan,  as  shall  be  declared  on  the 
stock  of  the  Manhattan,  in  connection  with  the  other  provis- 
ions of  that  agreement. 

Such  was  the  condition  of  the  litigation  between  or  af- 
fecting the  three  companies,  so  far  as  it  is  material  to  refer  to 
it^  when,  on  the  22d  of  October,  1881,  the  agreement  in  writ- 


166  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Flagg  V.  The  MAnhattan  Railway  Company. 

ing  was  made  between  them,  out  of  which  the  present  Boit 
arises.  It  sets  forth,  as  part  of  it,  copies  of  the  tripartite 
agreement  and  of  the  two  leases.  It  then  recites  that  poesea- 
sion  of  the  railways  and  property  leased  was  delivered  to  the 
Manhattan  and  it  continued  in  the  possession  and  operatioD 
thereof  until  July  14th,  1881,  when  possession  thereof  was 
delivered  to  said  receivers,  who  are  still  in  possession  thereof, 
operating  them ;  that  '^  it  has  been  found  impracticable  to 
carry  out  the  various  terms  and  conditions  imposed  by  said 
agreement  and  leases  on  the  Manhattan  ; "  that  the  interests 
of  each  of  the  parties,  as  well  as  the  interest  of  the  pablic, 
still  require  that  the  lines  of  railway  shall  continue  to  be 
operated  xmder  a  single  management ;  and  that  the  pardea, 
^^  for  the  purpose  of  settling  sAl  the  matters  and  difierenoes 
between  them,  and  for  continuing  the  operation  of  said  prop- 
erties and  railways  by  a  single  management,"  have  agreed  to 
modify  the  said  agreement  and  leases  as  hereinafter  set  forth. 
It  then  provides  as  follows  :  (1.)  The  Manhattan  shall  con- 
tinue to  possess  and  operate  the  properties  and  railways  for 
the  period  and  on  the  terms  agreed  in  the  leases,  except  as 
^'  herein  "  modified  or  changed,  such  possession  to  commence 
as  soon  as  the  properties  can  be  obtained  from  the  receivers. 
(2.)  The  Manhattan,  from  moneys  received  by  it  on  acquiring 
possession  of  the  properties,  and  all  moneys  thereafter  ac- 
quired by  it  from  the  operation  of  them,  after  the  payment 
of  operating  expenses  and  of  all  lawful  taxes  and  assessments 
against  either  of  the  parties  or  its  property,  and  before  paying 
the  suras  mentioned  in  clause  3,  shall  pay  1.  To  the  New 
York,  all  sums  of  money  due  and  owing  to  it  under  the  terms 
of  the  lease  from  it,  on  the  1st  of  July,  1881.  2.  To  the 
Metropolitan,  in  the  same  manner,  and  out  of  said  moneys 
the  interest  due  on  its  bonds,  as  provided  in  the  lease  from  it, 
from  the  1st  of  January,  1881.  (3.)  After  making  the  pay- 
ments provided  for  by  clause  2,  all  moneys  received  by  the 
Manhattan  from  the  operation  of  the  properties  shall  be  used 
by  the  Manhattan  1.  For  the  payment  of  operating  expenses 
and  maintenance  of  structures  and  equipment.    2.  For  the 


DECEMBER,  1881.  157 


Flagg  V.  The  Manhattan  Railway  Company. 


paymeDt  of  all  taxes  and  aesessments  lawfully  imposed  upon 
either  of  the  parties,  or  its  properties,  or  the  income  there- 
from. 3.  For  the  payment  of  the  interest  on  the  bonds  of 
tlie  27ew  York  and  the  Metropolitan.  4.  For  the  payment  to 
each  of  them  of  the  rental  of  $10,000  per  annnm,  as  set  forth 
in  the  leases.  5.  The  Manhattan  shall  pay  to  the  TSew  York 
annually,  dnring  the  continnance'  of  the  leases,  a  sum  of 
money  eqnal  to  6  per  cent,  per  cmnum  on  the  amonnt  of  the 
present  capital  stock,  to  wit,  $6,500,000,  of  the  New  York, 
in  equal  quarterly  payments  of  $97,500,  on  the  first  days  of 
January,  April,  July  and  October,  the  first  to  be  made  Jan- 
uary 1st,  1882.  (i.  The  Manhattan  shall  pay  to  the  Met- 
ropolitan annually,  during  the  continuance  of  the  leases,  a 
sum  of  money  equal  to  6  per  cent,  per  annum  on  the  amount 
of  the  capital  stock  of  the  Metropolitan,  in  equal  quarter 
yearly  payments,  on  the  first  days  of  January,  April,  July 
and  October,  the  first  to  be  made  January  1st,  1882.  7.  The 
several  payments  enumerated  in  the  foregoing  6  subdivisions 
of  clause  3  shall  be  made,  and  shall  have  preference  over  one 
another,  in  the  order  so  enumerated,  and  all  moneys  received 
by  the  Manhattan  from  the  operation  of  the  properties,  after 
making  said  payments,  shall  be  the  property  of  the  Manhat- 
tan, and  shall  be  retained  by  it  for  its  own  use  and  benefit, 
subject  to  the  covenants  ^'  herein  "  contained,  and  to  the  un- 
modified covenants  of  the  leases.  8.  The  sums  provided  to 
be  paid  by  subdivisions  5  and  6  of  clause  3  shall  only  be  pay- 
able out  of  the  moneys  received  by  the  Manhattan  from  the 
operation  of  the  properties  prior  to  the  dates  respectively  at 
which  said  payments  by  the  terms  of  the  agreement  become 
dua  (4.)  Tiie  provisions  of  the  tripartite  agreement  and  the 
leases  are  modified  so  as  to  conform  to  '^  the  provisions  of  this 
agreement,"  and  the  New  York  and  the  Metropolitan  release 
the  Manhattan  from  all  agreements  to  pay  to  the  New  York 
and  the  Metropolitan,  or  either  of  them,  ^^  the  sum  or  sums  of 
money  as  is  particularly  provided  in  "  Article  14  of  the  tri- 
partite agreement,  and  Article  2  of  the  leases.  There  is,  also, 
a  clause  whereby  each  of  the  parties  releases  the  others,  and 


168  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Flagg  V.  The  Manhattan  Railway  Oompaoy. 


each  of  them,  ^'  of  and  from  all  and  all  manner  of  action  and 
actions,  cause  and  causes  of  action,  suits,  debts,  dues,  sums  of 
money,  claims  and  demands  whatever,  whether  in  law  or  in 
eqnity,  against  either  of  the  other  parties  hereto,  except  such 
as  are  embraced  in  and  created  by  the  terms  of  said  agree- 
ment and  leases,  as  modified,  and  the  terms  and  provisions  of 
this  agreement."  By  a  supplemental  agreement  of  the  same 
date,  executed  by  the  three  parties,  it  was  further  agreed,  that 
the  Manhattan  will  pay  to  the  New  York  all  snms  due  and 
owing  to  it  under  its  lease  to  the  Manhattan,  np  to  and  in- 
cluding October  1st,  1881,  and  that  the  Manhattan  will  pay 
to  the  New  York  the  snm  of  6  per  cent,  on  its  present  capital 
stock,  ^^  in  the  manner  and  at  the  times  stated  in  the  foregoing 
agreement,  and  the  payment  thereof  shall  be  cumulative,  not- 
withstanding any  provision  in  the  eighth  subdivision  of  the 
third  clause  thereof." 

The  bill  in  this  suit  is  brought  by  the  plaintiffs  in  their  own 
behalf,  and  in  behalf  of  all  others,  shareholders  in  the  Metro- 
politan, similarly  situated  with  the  plaintiffs,  who  may  come 
in  and  contribute  to  the  expenses  of  the  action  and  consent  to 
be  bound  by  the  decree  herein.  It  alleges,  that,  immediately 
after  the  execution  of  the  tripartite  agreement  and  the  leases, 
and  the  delivery  of  its  road  to  the  Manhattan,  the  Metropol- 
itan, in  order  to  secure  to  its  shareholders  the  benefit  of  Arti- 
cle 2  of  the  lease,  and  in  order  to  enhance  the  value  of  the 
shares  of  said  stock,  caused  to  be  printed  on  the  stock  certifi- 
cates of  the  Metropolitan  the  following  memorandum :  '^  The 
Manhattan  Eailway  Company,  for  value  received,  has  agreed 
to  pay  to  the  Metropolitan  Elevated  Railway  Company  an 
amount  equal  to  ten  per  cent  per  amium  on  the  capital  stock 
of  the  latter  company,  that  is  to  say,  on  six  and  one-half  mil- 
lions of  dollars,  payable  quarterly,  commencing  January  1st, 
1880;"  that  the  capital  stock  of  the  Metropolitan  then  was, 
and  still  is,  $6,500,000,  divided  into  65,000  shares  of  the  par 
value  of  $100  each;  that  all  the  certificates  of  said  shares 
issued  by  the  company  after  the  execution  and  delivery  of 
the  tripartite  agreement  and  leases,  were  issued  with  said 


DECEMBER,   1S81.  159 


Flagg  tr.  The  Manhattan  Railway  Company. 


memorandnm  printed  thereon;  that  the  said  shares  were 
largely  dealt  in  in  the  city  of  New  York,  and  were  bought  and 
Bold  as  the  stock  npon  which  an  annnal  dividend  of  10  per 
eerU.  was  granted  by  the  Manhattan,  and  as,  upon  the  sale  and 
transfer,  from  time  to  time,  of  shares  of  said  stock,  certificates 
were  surrendered  for  cancellation  and  re-issue,  the  Metropol* 
itan  issued  new  certificates  containing  the  same  memorandum^ 
and  no  shares  were  dealt  in,  after  January,  1880,  which  did 
not  contain  said  memorandum ;  that,  during  the  year  1880, 
the  Manhattan  paid  to  the  Metropolitan  quarterly,  and  the 
holders  of  shares  of  the  Metropolitan  received,  the  said  divi- 
dends '^  so  guaranteed,"  and  said  dividends  were  also  paid  in 
January  and  April,  1881,  but  thereafter  the  Manhattan  made 
default  in  the  payment  of  the  dividend  due  July  1st,  1881, 
and  has  hitherto  continued  in  default ;  and  that  each  of  the 
plaintiffs  purchased  his  stock  as  stock  upon  which  a  dividend 
of  ten  per  cent,  was  guaranteed  by  the  Manhattan,  and  with 
knowledge  of  the  general  provisions  of  the  tripartite  agree- 
ment and  the  leases,  and  the  certificates  issued  to  the  plaint- 
iffs by  the  Metropolitan  have  each  of  them  on  it  the  said 
memorandum.  The  bill  recites  the  appointment  of  the  re- 
ceivers, and  alleges  that,  on  or  about  the  25th  of  October,  1881, 
by  order  of  the  Court,  the  property  was  surrendered  by  the 
receivers  to  the  Manhattan,  and  the  receivership  was  vacated. 
It  sets  forth  the  fact  of  the  application  of  the  New  York  for 
the  restoration  of  its  property  and  of  its  denial,  and  the  mak- 
ing of  the  agreement  of  October  22d.  It  alleges  that  the  suit 
brought  on  behalf  of  The  People  was  not  ended  until  about 
November  17th ;  that  there  has  been  no  material  change  in 
the  alleged  insolvent  condition  of  the  Manhattan  which  made 
the  receivership  proper,  other  than  such  as  may  result  from 
the  execution  of  the  agreement  of  October  ^2d ;  that,  during 
the  receivership,  negotiations  were  entered  upon  between  some 
of  the  oflicers  of  tbe  three  companies,  looking  to  a  modifica- 
tion of  the  terms  of  the  tripartite  agreement  and  the  leases ; 
and  that,  during  the  pendency  of  said  negotiations,  it  was  given 
out,  and  the  plaintiffs  expected,  that  the  terms  of  any  arrange- 


160  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Flagg  V.  The  Manhattan  Railway  Company. 

ment  which  should  be  concurred  in  by  the  officers  negotiating 
on  behalf  of  the  Beveral  companies  would  be  submitted  to  the 
shareholders  for  approval,  but  the  plaintiffs  have  never  been 
consulted  in  respect  to  said  proposed  agreement,  and  have 
never  consented  thereto,  and  have  only  been  able  to  ascertain 
the  terms  of  the  same  with  considerable  difficulty.  The  bill 
further  alleges,  that,  by  the  agreement  of  October  22d  the 
officers  of  the  Metropolitan  have  undertaken  to  subordinate 
the  rights  and  the  position  of  the  Metropolitan  to  the  New 
York,  especially  by  releasing  all  claims  to  the  dividends  ac- 
cruing July  1st  and  October  1st,  amounting  to  $325,000, 
whereas  the  same  amount  due  to  the  New  York  is  to  be  paid, 
and,  in  reference  to  future  dividends,  by  waiving  altogether 
the  guaranty  of  the  Manhattan,  and  making  the  dividends 
payable  to  the  Metropolitan  payable  only  after  the  dividends 
to  the  New  York  shall  have  been  first  paid,  and  out  of  any 
surplus  earnings  that  may  be  left ;  that,  by  the  supplemental 
agreement  of  the  same  date,  the  rights  and  position  of  the 
Metropolitan  were  further  subordinated  to  the  New  York,  in 
that  the  dividends  agreed  to  be  paid  to  the  New  York  were 
to  be  cumulative,  while  those  due  to  the  Metropolitan  could 
never  be  paid  out  of  any  earnings,  however  large,  received 
after  the  date  of  the  accruing  of  the  dividend ;  that  the  officers 
of  the  Metropolitan  who  have  actively  labored  to  consummate 
said  arrangement^  have  betrayed  its  true  interests,  and  the 
rights  and  interests  of  its  shareholders,  influenced  thereto  by 
corrupt  motives  and  by  personal  interests  hostile  to  their  posi- 
tion and  duties  as  its  directors ;  that,  at  an  election  of  direct^ 
ors  held  in  July,  1881,  Bussell  Sage  and  Jay  Gould  became, 
for  the  first  time,  directors  of  the  Metropolitan ;  that  the  Man- 
hattan, being  shortly  thereafter,  and  on  or  about  July  13th, 
placed  in  the  hands  of  receivers,  its  shares  became  very  much 
depressed  in  value,  and  in  August  following  sold  as  low  as 
$16  per  share ;  that  thereupon  said  Gould,  being  a  director  of 
the  Metropolitan,  began  purchasing  shares  in  the  Manhattan, 
and,  on  October  8th,  had  standing  in  his  own  name,  on  the  books 
of  the  Manhattan,  20,000  shares;  that  1,000  shares  then  stood 


DECEMBER,  1881. 


161 


Flagg  V.  The  Mmhalstaii  Railway  Company. 


in  the  name  of  his  son  George  J.  Gould,  1,100  shares  in  the 
name  of  W.  E.  Connor,  and  12,400  shares  in  the  name  of  W.  E. 
Connor  &  C!o.,  who  have  heretofore  acted  as  the  brokers  of  said 
Oonld  in  the  purchase  and  sale  of  stocks,  and  in  which  firm 
said  Gould  is  a  partner ;  that  said  14,500  shares  belong  to,  or 
are  held  in  the  interest  of,  said  Gould ;  that,  when  said  agree- 
ment was  made,  he  had  invested  in  the  stock  of  the  Manhat- 
tan over  $500,000 ;  that  said  Sage,  a  director  and  the  presi- 
dent of  the  Metropolitan,  is  largely  interested  in  the  stock  of 
the  Manhattan,  though  his  name  appears  on  its  stock  reg- 
ister as  the  holder  of  only  100  shares ;  that  said  Gould  is,  in 
his  own  name,  the  largest  holder  of  stock  in  the  Manhattan, 
substantially  all  of  which  he  has  acquired  since  he  became  a 
director  of  the  Metropolitan ;  that  he,  together  with  said  Sage, 
took  an  active  and  the  principal  part  in  the  negotiations  which 
led  to  the  agreement  of  October  22d ;  that  the  negotiations 
on  the  part  of  the  New  York  were  conducted  by  its  president^ 
Gyrus  W.  Field ;  thnt,  though  he  holds,  as  appears  by  the 
stock  register  of  the  Manhattan,  only  100  shares  of  its  stock, 
he  has  become  largely  interested  in  the  Manhattan,  and  began 
to  purchase  shares  of  it  as  soon  as  it  seemed  probable  said 
agreement  would  be  executed,  and  in  view  of  its  being  carried 
into  effect ;  that  said  Sage,  who,  as  president  of  the  Metro- 
politan, executed  said  agreements  of  October  22d,  and  said 
Gould,  who  actively  influenced  their  execution,  were,  from 
their  fiduciary  position,  disqualified  from  executing  the  same 
without  the  consent  of  the  shareholders  of  the  company  they 
represented ;  and  that  the  same  were  executed  corruptly,  for 
the  personal  ends  of  the  signers  of  the  same.    The  bill  further 
alleges,  that  the  Metropolitan,  oti  or  about  November  1st,  1879, 
executed  a  mortgage  on  its  line  and  property,  second  and 
subordinate  to  the  mortgage  referred  to  in  the  tripartite  agree- 
ment, for  the  purpose  of  raising  funds  to  complete  and  im- 
prove the  unfinished  lines,  as  provided  in  said  agreement,  such 
second  mortgage  being  made  to  secure  $4,600,000  of  bonds; 
that  only  $2,000,000  thereof  had  been  issued  and  negotiated 
at  the  time  of  said  receivership ;  that  now  the  Metropolitan 
Vol.  XX.— -11 


162  SOUTHERN  DISTRICT   OF  NEW  YORK, 

flagg  V.  The  Manhattan  Railway  Company. 

has  proposed  to  issue,  the  residue  of  the  bonds  provided  for  in 
said  second  mortgage,  and  to  deliver  them  for  negotiation  to 
the  Manhattan,  and  allow  it  to  exercise  and  nse  the  proceeds 
of  the  bonds.    It  also  alleges  that  the  Metropolitan,  being  now 
in  the  control  of  the  directors  who  concurred  in  the  execution 
of  the  modified  agreement,  is  shaping  its  action  so  as  to  com- 
pel dissentient  shareholders  to  acquiesce  in  the  terms  of  said 
agreement,  it  having  stamped  as  cancelled   the    guaranly 
printed  on  its  stock  certificates,  and,  upon  a  transfer  of  anj 
certificate  containing  the  guaranty,  refusing  to  issue  to  the 
transferee  a  similar  certificate,  or  any  other  than  a  certificate 
with  the  guaranty  cancelled ;  that,  in  aid  of  this  scheme,  they, 
immediately  after  the  execution  of  said  agreement,  closed  the 
transfer  books  of  the  company ;  and  that  the  acts  and  doings 
of  the  company,  under  the  management  of  its  present  direct- 
ors, are  in  hostility  to  the  true  interests  of  the  shareholders, 
and  planned  in  order,  through  the  operation  of  the  market  and 
the  customs  of  the  Stock  Exchange,  to  deprive  dissentient 
shareholders  of  their  just  and  equitable  rights.    The  prayer 
of  the  bill  is  (1)  for  a  decree  that  the  two  agreements  dated 
October  22d  are  null  and  void  and  inoperative  as  against  the 
plaintiffs :  (2)  that  the  Manhattan  be  perpetually  enjoined 
from  performing  the  same,  so  far  as  they  change,  or  undertake 
to  change,  the  terms  of  the  tripartite  agreement  and  the  leases ; 

(3)  that  the  Metropolitan  be  enjoined,  until  the  further  order 
of  the  Court,  from  delivering  any  of  its  money  or  property  to 
the  Manhattan,  or  from  issuing  to  it  any  of  its  mortgage  bonds 
for  negotiation,  or  from  allowing  it  to  receive  the  proceeds  of 
any  such  bonds,  or  from  changing  the  form  of  the  stock  cer- 
tificates of  the  Metropolitan,  in  respect  to  the  matters  printed 
thereon,  or  doing  any  other  acts  which,  in  respect  to  the  deal- 
ings in  said  shares,  or  the  terms  of  the  certificates,  or  their 
registration,  shall  modify,  impair  or  embarrass  any  holders  of 
the  certificates  having  the  said  memorandum  printed  thereon ; 

(4)  that  the  Manhattan  be  enjoined  from  paying  or  transfer- 
ring to  the  New  York  any  moneys  or  choses  in  action  under 
the  agreement  of  October  22d,  and  from  performing  any  part 


DECEMBER,  1881.  168 


Flagg  V.  The  Manhattan  Rulway  Company. 


of  the  agreemeDts  of  that  date,  so  far  as  they  change,  or  nn- 
dertake  to  change,  the  terms  of  the  tripartite  agreement  and 
the  leases. 

The  bill  is  not  signed  or  verified  by  any  of  the  plaintiffs. 
It  is  signed  by  the  plaintiffs'  solicitors,  and  the  affidavit  of 
one  of  them  is  appended  to  it,  to  the  effect  that  he  has  read 
the  bill,  that  the  facts  therein  stated  are  true  to  the  best  of 
his  knowledge  and  belief,  that  the  ownership  by  the  plaintiffs 
of  the  shares  of  stock,  as  alleged,  has  been  stated  by  them  in 
petitions  signed  for  the  purpose  of  being  admitted  to  the 
benefit  of  the  suit  of  Gillett  against  the  same  defendants,  and 
that  the  reason  why  sach  verification  is  not  made  by  the 
plaintifb  is  their  absence  from  the  State.  Those  petitions 
are  not  brought  before  this  Court. 

The  two  agreements  of  October  22d  are  signed  by  the 
New  York  by  said  Field,  as  president ;  by  the  Metropolitan 
by  said  Sage,  as  president ;  and  by  the  Manhattan  by  B.  M. 
Gallaway,  as  president. 

The  plaintiffs  now  move  for  a  preliminary  injonction  to 
the  purport  prayed  in  the  bill.  The  motion  is  supported  and 
opposed  by  affidavits.  The  facts  hereinbefore  set  forth  are 
free  from  dispute.  The  bill  is  brought  by  the  plaintiffs  in  their 
own  behalf,  and  in  behalf  of  all  others,  shareholders  in  the 
Metropolitan,  similarly  situated  with  the  plaintiffs,  who  may 
come  in  and  contribute  to  the  expenses  of  this  suit  and  con- 
sent to  be  bound  by  the  decree  herein.  A  holder  of  50  shares 
of  the  stock,  bought  in  February,  1881,  makes  oath  that  he 
bought  them  with  a  knowledge  of,  and  in  reliance  on,  the 
guarantee  of  the  Manhattan,  and  knowing  that  he  had  an  in- 
terest in  the  earnings  of  the  Manhattan  after  the  payment  of 
the  guarantee  to  the  leased  lines  and  dividends  on  the  Man- 
hattan stock.  A  holder  of  148  shares  of  the  stock  bought  in 
1880,  makes  oath  that  the  inducement  to  him  to  purchase  it 
was  the  said  guarantee  and  the  positions  of  equality  of  the 
New  York  and  the  Metropolitan ;  and  that  the  action  of  the 
directors  of  the  Metropolitan,  in  reducing  the  dividend  on 
said  stock,  was  without  his  consent  and  is  a  great  damage  to 


16i  SOUTHERN   DISTRICT  OF  NEW  YORK, 

Flagg  V.  The  Mftnhattan  Railway  Company. 

him,  and  is  illegal  and  void.  These  affidavits  may  be  re- 
garded, perhaps,  as  supplying  the  defect  in  the  verification 
of  the  bill. 

1.  The  principal  ground  urged  in  support  of  the  motion 
is,  that  the  agreements  of  October  22d  impair  vested  rights 
of  the  stockholders  of  the  Metropolitan ;  that  each  stockholder 
has  for  himself  such  vested  rights ;  and  that  those  rights  can- 
not be  impaired  as  to  him  without  his  consent.     It  is  urged, 
that,  after  the  Metropolitan  lease  was  executed,  there  was  no 
property  left  to  it  upon  which  anything  in  the  nature  of  a 
dividend-paying  stock  could  be  based,  except  the  revenue  to 
be  derived  from  the  terms  of  the  lease ;  that  the  value  of  the 
capital  stock    consisted  wholly  in  such  revenae;    that  the 
$162,500  to  be  paid  quarterly  to  the  Metropolitan  was  the 
only  profit  which  investors  in  the  stock  could  hope  to  realize 
from  their  investment ;  that  the  stock  is  stock  of  a  special 
character,  entitled  to  an  agreed  portion  of  a  rental  to  be  paid 
by  the  Manhattan ;  that  the  agreement  of  the  Manhattan  ia 
truly  expressed  in  the  memorandum  on  the  certificates;  that, 
by  the  whole  transaction,  the  Metropolitan  agrees  to  distrib- 
ute such  portion  of  the  rental,  as  a  dividend,  among  its  stock- 
holders ;  that  the  Metropolitan,  therefore,  cannot  surrender 
the  guaranty  of  the  Manhattan ;  that  such  guaranty  mast  be 
regarded  as  a  promise  to  the  Metropolitan  for  the  benefit  of 
its  stockholders ;  and  that  they  are  entitled  to  prevent  the 
Metropolitan  from  diverting  the  fund  or  impairing  the  con- 
tract out  of  which  the  right  to  it  comes. 

It  is  undoubtedly  true  that  the  object  of  the  provisions  of 
the  lease  in  regard  to  the  tenper  cent,  per  annum  on  $6,500,000, 
to  be  paid  by  the  Manhattan  to  the  Metropolitan,  was  to 
enable  the  stockholders  of  the  Metropolitan  to  have,  if  possi- 
ble, during  the  continuance  of  the  lease,  a  quarterly  dividend 
of  2iper  cent,  on  their  stock.  But  I  fail  to  see  any  contract 
to  that  efiTect  between  the  Manhattan  and  the  individual 
stockholders  of  the  Metropolitan,  or  between  such  stockhold- 
ers and  the  Metropolitan.  The  language  of  Article  2  of  the 
lease  is,  that  the  Manhattan  guarantees  to  the  Metropolitan 


DEGEMBEB,   1881.  165 


Flagg  IF.  The  Manhattan  Railway  Company. 


ftn  annua]  dividend  of  10  per  cent  on  the  capital  stock  of  the 
Metropolitan  to  the  amount  of  $6,600,000,  "  that  is  to  say." 
The  gnaranty  is  to  the  Metropolitan,  not  to  its  stockholders 
severally.  The  Article  then  goes  on  to  interpret  the  gaaranty, 
and  to  show  what  it  is,  and  at  what  times  payments  under  it 
are  to  be  made.  It  says,  ^^  that  is  to  say,"  the  Manhattan  will, 
each  and  every  year  during  the  term,  beginning  with  October 
1st,  1879,  pay  to  the  Metropolitan  $650,000,  free  of  all  taxes, 
in  equal  quarterly  payments  of  $162,500  each,  on  the  first 
days  of  January,  April,  July,  and  October,  in  each  year,  the 
first  to  be  made  January  1st,  1880.  There  is  no  agreement 
either  by  the  Manhattan  or  by  the  Metropolitan  that  these 
rams  shall  be  paid  to  the  stockholders  of  the  Metropolitan. 
Then  there  is  the  further  provision  that  the  Manhattan  will, 
from  time  to  time,  execute  in  proper  form  a  guaranty  ^^  to  the 
above  effect,"  printed  or  engraved  on  the  certificates  of  stock 
of  the  Metropolitan,  and,  as  such  stock  certificates  are  sur- 
rendered for  cancellation  and  re-issue,  will,  from  time  to 
time,  at  the  request  of  the  holder,  "  renew  such  gud^anty  " 
upon  all  re-issued  certificates.  This  was  never  done.  The 
Manhattan  never  executed  anything  on  the  certificates.  The 
Metropolitan  issued  the  certificates  with  an  unexecuted  mem- 
orandum, which  does  not  contain  the  word  '^  guaranty,"  and 
contains  no  contract  or  agreement  or  guaranty  of  any  kind, 
but  only  a  statement  that  the  Manhattan  '^  has  agreed  to  pay 
to  the  Metropolitan "  an  amount  equal  to  10  per  cent,  per 
annum  on  the  capital  stock  of  the  Metropolitan,  that  is  to  say, 
on  $6,500,000,  payable  quarterly,  commencing  January  1st, 
1880.  This  was  the  interpretation  put  at  the  time  on  the 
agreement  of  the  Manhattan,  by  the  Metropolitan,  and  ac- 
cepted by  each  stockholder  of  the  Metropolitan  when  he  took 
his  certificate.  If  any  stockholder  was  entitled,  on  request  to 
the  Manhattan,  to  a  gnaranty  of  any  kind  executed  by  it  on 
his  certificate  of  stock,  he  waived  bis  right  to  it.  But,  if  he 
had  asked  for  and  received  it,  it  would  have  been  '^  a  guaranty 
to  the  above  effect,"  being  a  repetition  of  the  agreement  to 
make  the  quarterly  payments  to  the  Metropolitan,  that  is,  an 


166  SOUTHERN  DISTRICT  OF  NEW  YORK. 

FUgg  V.  The  Manhattan  Railway  Company. 

agreement  to  do  what  the  memorandnm  states  that  the  Man- 
hattan had  agreed  to  do.    This  wonld  not  have  been   anj  * 
more  of  a  contract  between  the  Manhattan  and  the  stock- 
holder, or  between  the  Metropolitan  and  the  Btockholder, 
than  now  exists. 

2.  The  case,  therefore,  is  not  one  of  anj  vested  right  in 
the  stockholders  of  the  Metropolitan  to  the  ten  per  cent  pay- 
ments, but  it  depends  on  the  general  power  of  the  directors 
of  a  corporation  to  make  and  modify  its  contracts.  That 
power  is  well  established  in  this  Stata  {Hoyt  v.  Thompwrt!^ 
Ext.,  19  iT.  Z.,  207,  216.)  Nor  can  the  stockholders  control 
that  power.  (MoCuUough  v.  JUoss,  6  Denio,  566,  675.)  No 
statute  or  anthoritj  is  referred  to  which  makes  it  necessary  to 
the  validity  of  the  agreements  of  October  22d  that  they 
should  have  been  approved  by  any  one  or  more  stockholders. 

8.  The  leases  and  the  tripartite  agreement  and  the  agree- 
ments of  October  22d  were  made  under  the  authority  of  the 
Act  of  April  23d,  1889,  {Zaios  of  New  York,  1839,  cAop. 
218,  pf  195,)  which  provides,  that ''  it  shall  be  lawful  hereafter 
for  any  railroad  corporation  to  contract  with  any  other  rail- 
road corporation  for  the  use  of  their  respective  roads,  and 
thereafter  to  use  the  same  in  such  manner  as  may  be  pre- 
scribed in  such  contract."  There  is  nothing  to  impeach  the 
validity  of  that  statute.  The  instruments  referred  to  are 
contracts  by  the  Manhattan  and  the  other  two  companies  for 
the  use  by  the  former  of  the  roads  of  th&  latter,  on  terms  sat- 
isfactory to  each  of  the  latter,  as  determined  by  the  votes  of 
their  Boards  of  Directors. 

4.  It  is  urged  that  the  question  should  be  considered  as  if 
the  Metropolitan,  on  the  failure  of  the  Manhattan  to  fulfil  its 
covenants  in  the  lease,  had  re-entered,  and,  as  if  the  question 
were  as  to  a  new  lease  with  terms  sach  as  now  obtain  in  the 
lease  as  modified.  In  this  view  the  new  lease  is  objected  to 
as  uli/ra  vireSj  because  it  appropriates  the  revenues  of  the  Met- 
ropolitan, as  a  part  of  the  general  funds  of  the  Manhattan,  to 
pay  preferred  dividends  to  the  New  York.  The  contention 
is,  that  the  Manhattan  is  to  receive  ail  the  earnings  of  the 


DECEMBER,   1881.  167 


Flagg  V.  The  ManhatUn  Railway  Company. 


lines  of  the  Metropolitan,  and,  after  paying  expenses,  taxes, 
*  interest,  &c.,  is  to  pay,  first,  a  dividend  of  6  per  cent,  on  the 
stock  of  the  New  York;  and  that,  as  the  earnings  of  the 
Metropolitan  are  not  to  be  kept  separate,  no  such  arrange- 
ment can  be  made  without  the  consent  of  the  stockholders  of 
the  Metropolitan.     The  question  is  not  one  of  power,  bnt  of 
good  faith.     If,  in  good  faith,  the  discretion  and  jadgment  of 
the  directors  of  the  Metropolitan  were  fairly  exercised,  under 
the  circunifitancee  in  which  the  affairs  of  the  corporation  were 
at  the  time,  in  view  of  all  its  embarrassments,  and  of  the 
condition  of  the  Manhattan,  and  of  the  litigations  existing 
and  threatened,  and  of  the  claims  made  against  the  Metro- 
politan and  its  stockholders,  by  the  Manhattan  and  the  stock- 
holders of  the  Manhattan,  and  of  the  relative  conditions  of 
the  two  properties,  and  of  the  past  and  probable  prospective 
earnings  of  the  roads  of  the  New  York  and  the  Metropolitan, 
no  Court  will  undertake  to  interfere  with  the  exercise  of  such 
discretion  and  jndgment,  even  though,  on  the  same  facts,  it 
might  have  arrived  or  may  arrive  at  a  different  conclusion, 
and  even  though  the  stockholders  of  the  Metropolitan  might 
have  arrived  at  a  different  conclusion.    In  this  view  the  re- 
marks cited  from  the  decision  of  Judge  Westbrook  become 
of  great  importance.    His  views  in  regard  to  the  claim  of  the 
Manhattan  for  the  $13,000,000  were  calculated  to  have  great 
weight,  and  it  is  shown  they  did  have  great  weight,  in  regard 
to  some  of  the  terms  of  a  new  arrangement.    The  Manhattan 
had  made  two  defaults  in  paying  the  dividend  rentals,  it  had 
been  put  into  the  hands  of  receivers,  it  was  alleged  to  be  in- 
solvent, and  it  was  asserting  the  claims  for  the  $13,000^000. 
It  waa  perfectly  clear  that  the  interests  of  the  public  de- 
manded that  the  two  elevated  roads  should  be  nnder  one  man< 
agement,  and  the  interests  of  the  public  were  the  interests  of 
the  two  lessor  companies.     The  state  of  things  was  such  that 
the  common  manager  must  be  the  Manhattan.    Therefore, 
its  obligations  to  the  other  two  companies  must  be  modified, 
because  they  were  too  onerous  to  be  fulfilled.     The  only  ques- 
tion was  as  to  the  new  obligations.    The  evidence  satisfac- 


168  SOUTHERN  DISTRICT  OF  NEW  YORK, 


Flagg  V.  The  Manhattan  Railway  Company. 


torily  shows  that  the  roads  of  the  Metropolitan  were  not 
earning  enough  net  money,  over  expenses,  repairs  and  taxes^ 
to  pay  the  interest  on  its  mortgage  bonds,  and  that  the  New 
York  was  earning  at  least  six  per  cent  net,  and  enoagh  more 
to  make  reasonable  the  preferences  given  to  it  over  the  Met- 
ropolitan in  the  new  arrangement.  By  that  arrangement  the 
claims  of  the  Manhattan  for  the  $13,000,000  are  released. 
Bat,  whatever  conclnsion  a  judicial  tribunal  would  come  to 
now,  on  proofs,  as  to  whether  the  new  arrangement  was  a  wise 
and  proper  one  for  the  Metropolitan  to  make,  it  is  sufficient 
to  say,  that,  on  the  evidence  now  presented  as  to  what  was 
before  the  directors  of  the  Metropolit&n,  and  as  to  their 
action,  they  had  a  right  to  think,  in  good  faith,  that  they 
were  doing  what  was  most  judicious  for  their  stockholders^ 
and  they  did  what  they  did  in  good  faith. 

5.  It  is  contended  that  a  fictitious  necessity  was  created^ 
and  that  the  stockholders  of  the  Manhattan  would  have  come 
forward  to  extricate  it  from  its  difficulties.  I  see  no  evidence 
of  this.  The  directors  of  the  Metropolitan  had  this  question 
before  them,  necessarily,  and  passed  upon  it,  and  acted  in 
view  of  it. 

6.  It  is  alleged,  in  the  bill,  that  Messrs.  Sage  and  Oould, 
while  acting  as  directors  of  the  Metropolitan  to  make  the. 
new  arrangement  on  its  behalf,  were  large  holders  of  the 
stock  of  the  Manhattan  company,  and  that  Mr.  Field  was  at 
the  time  a  large  shareholder  in  the  Manhattan.  The  directors 
of  the  Metropolitan  who  voted  to  approve  the  agreement  of 
October  22d,  were  Messrs.  Sage,  Gould,  Connor,  Sloan,  Dil- 
lon, Navarro,  Stout,  Dodge  and  Porter.  Mr.  Garrison  was 
absent.  Mr.  Kneeland  voted  in  the  negative.  Leaving  out 
Messrs.  Sage,  Gould  and  Connor,  6  of  the  10  present  voted 
in  favor  of  the  agreement.  As  to  the  supplemental  agree- 
ment, there  were  10  directors  present,  Mr.  Sloan  being  absent. 
Mr.  Stout  did  not  vote.  Of  the  9  voting,  Messrs.  Sage, 
Gould,  Dillon,  Navarro,  Connor,  Dodge,  Porter  and  Garrison 
voted  to  approve  the  supplemental  agreement,  and  Mr.  Knee- 
land  voted  in  the  negative.    Leaving  out  Messrs.  Sage,  Gould 


DECEMBER,  1881.  169 


flagg  V.  The  Manhattan  Railway  Company. 


and  Connor,  5  of  the  9  voting  voted  to  approve  the  supple- 
mental agreement.  There  were  11  directors  in  all.  Nothing 
ia  alleged  in  impeachment  of  the  positions  of  Messrs.  Sloan^ 
Dillon,  Navarro,  Garrison,  Stout,  Dodge  or  Porter.  There- 
fore, whatever  may  be  shown  as  to  the  positions  of  Messrs. 
Oonld,  Sage  and  Connor,  the  legal  aspect  of  the  transaction 
is  not  affected. 

Mr.  Gould  was  elected  a  director  of  the  Metropolitan  on 
Julj  9th,  1881.  He  states  that  at  the  time  of  making  the 
settlement  of  October  22d,  he  had  an  interest  of  2,500  sharea 
in  the  Metropolitan,  and  of  5,000  shares  in  the  New  York,  his 
cash  investment  for  the  two  being  $710,354  21,  while  hia 
actual  cash  investment  in  the  Manhattan  was  $599,031  25. 

Mr.  Sage  states  that  at  the  time  of  the  agreements  of  Oc- 
tober 22d,  he  held  about  1,200  shares  of  stock  in  the  Metro- 
poHtan.  He  was  appointed  president  of  the  Metropolitan  in 
Jalj,  1881.  He  sajs  that  at  that  time  he  had  about  800 
ahares  of  Manhattan  stock,  but  within  a  few  days  thereafter 
"  was  short "  of  Manhattan  stock,  and  from  that  time  until 
after  the  agreement  of  October  22d  bought  no  stock  of  the 
Manhattan  nor  became  interested  in  any,  except  for  the  pur- 
pose of  fulfilling  previous  contracts ;  and  that  his  pecuniary 
interest,  if  he  ^^  had  any,  during  all  that  period,  was  to  raise 
the  price  of  Metropolitan  stock  and  depress  the  price  of  Man- 
hattan stock.'' 

Mr.  Field  states  that  he  sold  out  all  his  Manhattan  stock, 
except  13  shares,  in  November,  1879,  and  sold  those  in  March, 
1880 ;  and  that  he  '^  never  bought  or  became  interested  again 
in  Manhattan  stock  until  October,  1881,"  after  he  ^'  became 
convinced  that  a  compromise  would  be  made."  But  he  sus- 
tained no  fiduciary  relation  to  the  stockholders  of  the  Met- 
ropolitan. 

7.  The  concurrent  testimony  is  that  the  Manhattan  is  now 
entirely  solvent,  made  so,  it  is  true,  by  the  new  arrangement, 
but  still  solvent.  It  is  out  of  the  hands  of  the  receivers. 
The  tripartite  agreement  and  the  leases,  except  as  modified, 
are  in  force,  and  are  in  force  as  modified.    The  mortgage 


170  CONNECnCUT, 


The  Western  Electric  Manitf.  Go.  v.  The  Aneonia  Brass  and  Copper  Co. 

bonds  the  issuing  of  which  is  sought  to  be  restrained  are  to  be 
issued,  it  appears,  under  the  tripartite  agreement  and  the 
leases,  and  pursuant  to  resolutions  passed  before  the  agree- 
ment of  October  22d,  and  their  proceeds  are  to  be  used  in 
perfecting  the  structure  and  equipment  of  the  Metropolitan, 
4ind  in  securing  the  safety  of  those  who  travel  on  the  road. 

The  motion  for  an  injunction  is  denied. 

The  bill  in  the  Gillett  suit  is  verified  by  the  plaintiff 
therein.  The  motion  for  an  injunction  in  that  suit  is  denied 
and  the  restraining  order  is  vacated. 


S,  P.  Nash^  for  the  plaintiff. 
27.  2>.  Fidd^  for  the  defendants. 


The  Western  £LEcrrBio  MANXTFAcruBmo  Oompakt 
The  Ansonia  Bbass  and  Ooppeb  Company.    In  Equttt. 

The  two  re-isaned  letters  patent,  Nos.  6,954  and  6,955,  fptmted  Febroary  S9th« 
1876,  to  the  Western  Electric  BCannfactnring  Company,  as  assignee  of  Joeepk 
Olmsted,  each  for  an  "  improYement  in  insulating  telegraph  wires,"  being  re- 
issues, in  two  divisions,  (one  for  the  process  and  the  other  for  the  product,) 
of  a  patent  granted  to  said  Olmsted  July  2Srd,  1872,  are  Toid  for  want  of 
novelty. 

The  patented  invention  consisted  in  filling  the  pores  of  the  covering  of  the  wire 
with  parafBne  or  wax  and  then  compressiDg  it  and  forcing  the  paraffins  or 
wax  into  the  pores,  and  was  anticipated  by  a  prior  process  of  oomprewiny 
bitumen  into  the  pores  of  the  covering  of  wire. 

(Before  Sbipmak,  J.,  Connecticut,  December  21st,  1881.) 

Shipman,  J.     This  is  a  bill  in  equity,  foanded  npon  the 
alleged  infringement  of  two  re-issaed  letters  patent,  granted 


DECEMBER,  1881.  171 


The  Western  Electric  Mennf.  Co.  v.  The  AubodIa  Braes  and  Copper  Co. 

to  the  plaintiffs, as  assignee  of  Joseph  Olmsted,  each  for  an  '^  im- 
provement in  insulating  telegraphic  wires,"  and  dated  February 
89th,  1876,  and  respectiyelj  numbered  6,954  and  6,955,  and 
being  re-issues,  in  two  divisions,  (one  for  the  process  and  the 
other  for  the  product,)  of  a  patent  granted  to  said  Ohnsted  on 
July  23d,  1872.  The  specifications  of  each  re-issue  are  the 
same,  and  accurately  describe  the  patented  improvement  upon 
the  method  which  was  then  commonly  used  for  insulating 
office  wire.  The  entire  descriptive  part  of  the  two  specifica- 
tions is  in  these  words :  "  The  method  of  insulating  now  in 
use  consists  in  braiding  over  the  wire  a  fibrous  covering,  after 
which  it  is  dipped  in  wax,  for  the  purpose  of  filling  and  closing 
its  pores,  and,  after  a  subsequent  scraping,  to  remove  the  sur- 
plus wax,  it  is  ready  for  use.  This  method  is,  however,  ob- 
jectionable, inasmuch  as  it  leaves  the  covering  in  a  very  rough 
and  soft  condition,  and  fails  to  secure  perfect  insulation.  In 
my  improved  method,  after  the  wire  has  received  its  coating, 
I  dip  it  in  paraffine  or  wax,  after  which,  instead  of  scraping 
off  the  surplus  coating,  I  pass  the  whole  through  a  suitable 
machine,  which  compresses  the  covering,  and  forces  the  par- 
affine or  wax  into  the  pores,  and  secures  perfect  insulation. 
By  so  compressing  the  covering,  the  paraffine  or  wax  is  forced 
into  the  pores,  and  the  surface  becomes  and  appears  polished. 
Wire  insulated  in  this  manner  is  entirely  impervious  to  the 
atmosphere,  of  greater  durability,  and  less  cumbersome  than 
any  heretofore  made."  The  claim  of  the  process  patent  is  for 
"  the  method  of  insulating  telegraph  wire,  by  first  filling  the 
pores  of  the  covering,  and  subsequently  compressing  this  cover- 
ing,and  thereby  polishing  its  surface, substantially  as  described." 
The  claim  of  the  patent  for  the  product  is  for  '^  an  insulated 
telegraph  wire,  the  covering  of  which  has  its  pores  filled  and  its 
surface  polished,  substantially  as  described."  The  defect  in 
the  article  coated  with  uncompressed  paraffine  was  a  leakage 
of  electricity,  which  was  probably  owing  to  the  shrinkage  of 
the  paraffine  in  the  interstices  of  the  fibrous  covering  while 
the  melted  paraffibae  was  cooling.     The  paraffine,  which  was 


172  coinyECTicuT, 


The  Western  Electric  Manaf.  Co.  if.  The  Aosonla  Braae  aod  Copper  Co. 

compressed  while  in  a  plastic  state,  was  thereby  forced  into 
the  interstices  of  the  fibres,  and  the  defect  was  obviated. 

The  defendants  make  and  sell  telegraph  wire,  which  thejr 
say,  in  their  answer,  is  "  covered  by  braiding  over  the  wire  a 
fibrous  covering,  after  which  it  is  dipped  in  a  preparation^ 
for  the  purpose  of  filling  and  closing  the  pores ;  after  which 
the  same  is  sand-papered  and  rubbed  and  passes  through  re- 
volving dies,  for  the  purpose  of  scraping  off  the  surplus  ma^ 
terial  and  consolidating  and  smoothening  the  surface  of  said 
remaining  covering.^'  They  further  admit  that  both  paraffine 
and  wax  are  component  parts  of  the  material  which  is  used  for 
insulating  their  wire. 

I  shall  spend  no  time  upon  the  question  of  infringement^ 
which,  I  think,  was  clearly  shown.  The  utility  of  the  plaint- 
iff's article  was  also  proved. 

The  important  question  in  the  case  is  in  regard  to  the  pat- 
entability of  the  improvement,  which  consisted  in  compressing 
the  plastic  paraffine,  by  suitable  machinery,  after  the  fibrous 
covering  and  the  paraffine  had  been  applied.  The  mechanism 
for  compressing  was  so  well  known  that  a  description  was  un- 
necessary. The  invention  consisted  in  the  discovery  that  com- 
pression of  the  plastic  paraffine  into  the  pores  of  the  fibrouB 
covering,  by  any  well-known  mechanical  appliances,  would  be 
advantageous.  It  did  not  consist  in  the  discovery  that  cover- 
ing with  paraffine  or  wax  would  be  desirable,  for,  wire  covered 
with  braided  fibrous  covering  and  dipped  in  wax  was  in  com- 
mon use,  but  the  invention  simply  related  to  the  substitution, 
in  place  of  a  mere  scraping  off  of  the  rough  dots  of  wax,  of 
a  pressing  operation,  for  forcing  the  insulating  material  into 
more  intimate  contact  with  the  fibrous  material ;  and,  so  far  as 
the  product  is  concerned,  the  invention  related  to  a  wire  in- 
sulated and  polished  upon  its  surface,  by  means  of  compression 
of  the  waxed  covering,  as  distinguished  from  the  insulation 
and  surface  which  was  the  result  of  non-compression  of  the 
same  covering. 

Dundonald's  British  patent  of  1851,  Ko.  13,698,  dedarea 
that  he  employed  ^'  bituminous  material  to  cover,  and  thus  in- 


DECEMBER,   1881.  173 


The  Western  Electric  Manuf.  Ck>.  v.  The  AnsoniA  Brass  and  Copper  Co. 

snlate,  the  cond  acting  wires  of    electric  telegraphs  which 
are  intended  to  be  placed  undergronnd."    He  farther  says : 
'*  The  incasement  of  this  wire  with  bitamen  may  also  be 
effected  by  covering  it  with  a  filamentons  material,  which 
has  been  previonsly  saturated  with  melted  bitnmen,  and  then 
passing  the  wire  so  covered  through  a  heated  die  or  orifice,  so 
as  to  melt  or  soften  the  bitumen  upon  the  filamentous  ma- 
terial, and  press  the  whole  of  this  coating  against  the  wire,  in 
such  a  way  as  to  cause  it  to  form  one  compact  continuous  cov- 
ering of  the  wire,  and  thus  insure  its  insulation."    The  same 
general  process  of  compression  is  found  in  Baudouin's  British 
patent,  No.  933,  of  1857,  for  electric  conductors.    The  speci- 
ilcation  says :  '^  The  wire  is  passed  through  a  bath  of  hot  bitu- 
men, and  has  the  superfinous  matter  removed  by  passing 
through  suitable  dies  or  parts,  to  scrape  and  smooth  its  sur-* 
face,  and  render  it  of  uniform  thickness.    The  first  and  sec- 
ond ribbons,"  (which  are  strips  of  material  to  be  wound  on 
the  wire,) ''  are  also  passed  through  bituminous  or  other  suitable 
matter,  to  render  them  more  impervious  to  electricity.    The 
eoated  and  lapped  wire  is  passed  through  suitable  dies,  to 
remove   superfluous  matter,  to   smooth    down    the  lapping 
of  the  ribbons,  and  to  compress  and  cause  their  proper  adhe- 
sion."   It  thus  appears,  that  the  process  of  compression  had 
been  used,  for  some  years  before  the  date  of  Olmsted's  pat- 
ent, in  the  manufacture  of  electric  telegraph  wire  previously 
covered  with  cloth,  and  then  coated  with  bitumen  or  fatty 
siibetances,  and,  having  been  so  used,  there  is  no  longer  pat- 
entability in  compressing  the  parafSne  covering  of  a  wire 
coated  with  fibrous  material.     The  patented  process  ^^  was 
simply  the  application  by  the  patentee  of  an  old  process  to  a 
new  subject,  without  any  exercise  of  the  inventive  faculty,  and 
without  the  development  of  any  idea  which  can  be  deemed 
new  or  original  in  the  sense  of  the  patent  law."    {Brown  v. 
Piper^  91  U.  5.,  37.)    The  patentee  took  the  process  of  Dun- 
donald  and  of  Baudouin,  which  they  had  applied  to  bitumen, 
and  applied  it  to  the  wax  covering  which  was  in  common  use 
and  had  been  found  to  be  superior,  for  certain  classes  of  wire, 


174  EASTERN  DISTRICT  OF  mSW  YORK, 

The  N.  T.  and  Baltimore  Coffee  Polishing  Co.  v.  The  N.  Y.  Coffiae  Polishing  Co. 

to  any  insulated  coyering  which  had  been  previously  used  or 
guggeeted.  The  old  process  was  applied  to  the  new  nse  with- 
out substantial  alteration 'or  change.  The  process  patent  not 
stating  a  patentable  invention,  the  product  patent  is  in  no 
better  condition. 

The  bill  is  dismissed. 

William  W.  Baldwin  and  George  P.  Barton^  for  the 
plaintiff. 

WiUiam  B.  WoosteTy  for  the  defendant. 


The  New  York  aih)  Baltimosb  Ooffeb  PoLisHma  CoMPAinr 

vs. 

The  New  York  Coffee  PoLisHmo  Company,  Lditfed. 

In  EQTJTrr. 

A  bill  in  equity  will  lie,  under  §  666  of  the  Revised  Statates,  to  obtain  a  direo- 
tion  that  the  testimony  of  a  witness  be  taken  m  perpetwan  r^  menwrimii, 
where  the  plaintiff  allege  that  he  is  using  a  process  to  the  nse  of  which  the 
defendant  claims  an  ezclnsiTe  right  nnder  a  patent,  that  the  patent  is  Tf^d 
for  want  of  novelty,  that,  in  case  the  defendant  sues  the  plaintiff  for  infringe- 
ment of  sud  patent,  the  plaintiff  relies,  for  his  defence,  on  the  testimony  of 
the  witness,  that  the  witness  had  made  public  use,  in  the  United  States,  of  the 
said  process,  for  upwards  of  12  years  before  said  patent  was  issued,  that 
said  witness  is  upwards  of  90  years  of  age,  that  the  defendant  does  not  sue 
the  plaintiff  for  infringement,  and  that  the  plaintiff  cannot  bring  his  rights 
to  a  judicial  determination. 

(Before  Bxnxdiot,  J.,  Eastern  District  of  New  York,  December  27th,  18S1.) 

Benedict,  J.  This  case  comes  before  the  Court  npon  a 
demnrrer  to  the  bill.  The  bill  is  filed  to  obtain  at  the  hands 
of  this  Court  a  direction  that  the  testimony  of  a  witness 
named  William  li^ewell  may  be  taken  in  perpettKtm  rei  me- 
moriam.    The  provision  of  statute  under  which  the  bill  is 


DECEMBER,   1881.  175 


Tbe  N.  Y.  and  Baltimore  Coffee  PoliBhing  Co.  v.  The  N.  T.  Coffee  Polishing  Co. 

filed  is  found  in  §  866  of  the  Beyised  Statutes,  where  it  is 
proyided,  that  '^  any  Circuit  Coart,  apon  application  to  it  as 
a  Conrt  of  Equity,  may,  according  to  the  usages  of  Chancery^ 
direct  depositions  to  be  taken  in  perpeiuam  rei  memoriam^  if 
they  relate  to  any  matters  that  may  be  cognizable  in  any 
Court  of  the  United  States.'^  The  allegations  of  the  bill 
which  are  material  on  the  present  occasion  are  these — that  the 
complainant  has  been  and  still  is  using,  in  the  city  of  !N^ew 
York,  a  certain  process,  to  the  use  of  which  the  defendant 
claims  the  exclusiye  right  under  letters  patent  of  the  United 
States ;  that  such  letters  patent  are  yoid  for  want  of  noyelty ; 
that,  in  case  suit  shall  be  brought  by  the  defendant  against 
the  plaintiff,  for  infringement  of  the  said  patent,  the  plaintiff 
relies,  for  its  defence,  upon  the  testimony  of  William  JSTeweJl ; 
that  said  Newell  had  himself  made  public  use,  in  the  United 
States,  of  the  said  process,  for  upwards  of  twelye  years  before 
the  said  patent  was  issued ;  that  said  JSTeweU  is  upwards  of  90 
years  of  age;  that  the  defendant  has  neglected,  and  still 
n^lects,  to  bring  a  suit  against  the  plaintiff  for  its  infringe- 
ment of  said  patent ;  and  that  the  plaintiff  is  unable  to  bring 
its  rights  to  a  judicial  determination. 

In  support  of  the  demurrer  to  this  bill  it  is  first  contended 
that  the  proceeding  is  yain,  because  the  deposition,  if  taken, 
will  neyer  be  admissible  in  eyidence  in  the  suit  which  the 
complainants  fear.  This  position  is  supposed  to  be  sustained 
by  the  proyision  in  §  867  of  the  Beyised  Statutes,  that  "  any 
Court  of  the  United  States  may,  in  its  discretion,  admit  in 
eyidence,  in  any  cause  before  it,  any  deposition  taken  in  per- 
petuam  rei  memoriam^  which  would  be  admissible  in  a  Court 
of  the  State  wherein  such  cause  is  pending,  according  to  the 
laws  thereof."  But  the  effect  of  the  proyision  last  quoted  is 
misunderstood  by  the  defendant.  The  proyision  is  intended 
to  permit  the  Courts  of  the  United  States  to  admit  in  eyi- 
dence testimony  perpetuateo  according  to  the  laws  of  the 
State,  and  in  no  wise  relates  to  testimony  perpetuated  by 
direction  of  a  Circuit  Conrt  of  the  United  States,  in  pursuance 
of  the  statute  of  the  United  States  under  which  this  bill  is 


176  BA.STERN  DISTRICT  OF  NEW  YORK, 

The  N.  Y.  and  Baltimore  Coffee  Polishing  Co.  «.  The  N.  Y.  Cofifee  Polishing  Oa 

filed.  Testimony  so  perpetuated  is  admissible  in  evidence  in 
accordance  with  the  usages  and  practice  of  Courts  of  the 
United  States,  and  by  virtue  of  §  866,  but  not  by  virtue  of 
§  867.  The  object  of  the  bill  is,  therefore,  legitimate,  and 
the  proceeding  not  vain. 

The  next  ground  taken  in  support  of  the  demurrer  is,  that 
the  bill  does  not  show  a  necessity  for  perpetuating  the  testi- 
mony of  the  witness  in  order  to  preserve  the  plaintiff's  rights, 
inasmuch  as,  upon  the  facts  stated  in  the  bill,  it  would  be  the 
duty  of  the  Attorney  General,  upon  the  application  of  the 
plaintiff,'  to  institate  a  proceeding,  in  the  name  of  the  United 
States,  to  annul  the  defendant's  patent,  in  which  proceeding 
the  testimony  of  the  witness  J^ewell  could  be  taken  with  like 
benefit  to  the  plaintiff  as  if  taken  by  direction  of  this  Court, 
in  'this  proceeding,  or  in  a  suit  brought  by  the  defendant 
against  the  plaintiff. 

It  may  be  admitted  that,  in  cases  of  this  description,  the 
rule  is  not  to  sustain  the  bill  if  it  be  possible  that  the  matter 
can,  by  the  party  who  files  the  bill,  be  made  the  subject  of 
immediate  judicial  investigation,  {AngeU  v.  Angellj  1  SimoM 
<k  Stuart^  89 ;)  but  no  opportunity  to  have  such  a  judicial 
determination  appears  open  to  the  plaintiff  in  this  case. 

Clearly,  the  proceeding  by  the  Attorney  General,  supposed 
by  the  defendant  to  be  possible,  is  not  sndi  an  opportunity  to 
bring  the  matter  to  a  judicial  determination  as  the  rule  re- 
quires* If  it  be  assumed  that  the  Attorney  General  hag 
power  to  institute  a  proceeding  in  the  name  of  the  United 
States,  to  annul  the  defendant's  patent  for  want  of  novelty— 
as  to  which  see  Attorney  Oeneral  v.  Bumford  Chemical 
Works  (9  Off.  Oaz.,  1062)— still  it  rests  with  the  Attorney 
General,  or  the  United  States  Attorney,  and  not  with  the 
plaintiff,  to  say  whether  such  a  proceeding  shall  be  instituted, 
and,  if  so,  where,  and,  when  instituted,  whether  the  testimony 
of  the  witness  Mewell  shall  form  part  of  the  testimony  in 
such  proceeding.  The  plaintiff  is  without  power  to  compel 
the  institution  of  such  a  proceeding,  and  it  cannot  be  known 
that  such  a  proceeding  will  ever  be  instituted. 


DECEMBER,  1881.  177 


The  K.  Y.  and  Baltimore  Coffee  PolishiDg  Co.  v.  The  N.  Y.  Coffee  Polishing  Co. 

It  is  said  that  the  presumption  is  that  a  public  officer  will 
do  his  duty,  but  such  presumption  does  not  warrant  the  con- 
clusion that  the  Attorney  General,  or  the  United  States  Attor- 
ney, will,  as  of  course,  institute  a  proceeding  to  annul  the 
defendant's  patent,  upon  the  plaintiff's  application  and  asser- 
tion that  the  patent  is  void  for  want  of  novelty.  There  is  no 
absolute  duty  imposed  upon  the  Attorney  General  or  any 
United  States  Attorney,  either  by  the  common  law  or  by 
any  statute,  to  institute  a  proceeding  to  annul  a  patent  issued 
for  an  invention,  when  applied  to  by  any  party  asserting  its 
invalidity  for  want  of  novelty. 

Besides,  the  right  which  the  plaintiff  asserts  in  this  bill  is 
the  right  to  have  the  validity  of  the  defendant's  patent 
adjudicated  upon  a  consideration  of  the  testimony  of  the 
witness  Newell,  in  regard  to  the  fact  asserted  by  the  bill  to 
be  within  the  knowledge  of  that  witness,  and,  if  the  plaint- 
iff's application  to  the  Attorney  General  for  a  proceeding  to 
annul  the  defendant's  patent  would  create  a  duty  on  the  part 
of  the  Attorney  General  to  institute  such  a  proceeding,  no 
duty  to  call  Newell  as  a  witness  would  arise.  Such  a  pro- 
ceeding would  be  wholly  within  the  control  of  the  Attorney 
Genera]  {Mowry  v.  Whitney ^  14  WaU,^  441 ;)  and  the  most 
that  can  be  said  is,  that  it  is  possible  that  the  plaintiff's  right 
to  the  testimony  of  the  witness  could  be  preserved  by  a  pro- 
ceeding taken  in  the  name  of  the  United  States,  assuming, 
but  not  deciding,  that  the  power  to  institute  such  a  proceed- 
ing exists.  Such  a  possibility  affords  no  reason  for  refusing 
to  entertain  the  bill  under  consideration. 

There  must  be  judgment  for  the  plaintiff  upon  the  de- 
murrer, with  leave  to  answer  on  payment  of  costs. 

Richards  dk  HeaMj  for  the  plaintiff". 

Goodrich^  Deady  dk  Piatt,  for  the  defendant. 


Vol.  XX.— 13 


178  KOBTHEBN  DISTRICT  OF  NEW  YORK, 

I 

Barker  «.  Shoots. 


* 

William  0.  Babkbb  V9.  Jambs  D.  Shootb.    In  Equtit. 

Re-lBsaed  letters  patent,  No.  6,581,  granted  to  William  0.  Barker,  July  6th, 

1876,  for  an  "  improyement  in  buckets  for  cbain-piimps.''  are  valid. 
A  contrary  decision  as  to  the  yalidity  of  the  patent  arrlyed  at  from  that  reached 

in  Barker  y.  Stowe,  (15  Blat<^f,  C.  C.  R,  49.) 
The  claims  of  said  re-issne  are  infringed  by  backets  for  chain-pmnps  oonstracted 

according  to  the  description  contuned  in  letters  patent  -No.  168,684,  granted 

January  6th,  1875,  to  James  D.  Shoots. 

(Before  Blatchford,  J.,  Northern  District  of  New  York,  January  4th,  1881) 

Blatohford,  J.  This  suit  is  brought  on  re-issaed  letters 
patent,  No.  6,531,  granted  to  the  plaintiff,  July  6th,  1875,  for 
an  ^'  improvement  in  bnckets  for  chain-pnmps,''  the  original 
letters  patent  having  been  issued  to  the  plaintiff  Jane  20th, 
1871,  and  having  been  re-issned  to  him,  May  19th,  1874.  It 
is  the  same  patent  which  was  passed  upon  by  this  Court  in 
Barker  v.  Stowe,  (15  Blatchf.  G.  G.  B.,  49.)  The  specifica- 
tion is  set  forth  in  the  report  of  that  case.  The  defendant  in 
that  case,  Deloraine  F.  Stowe,  had  made  and  sold  buckets  for 
chain-pumps  described  in  letters  patent  granted  to  him  Feb- 
ruary 23d,  1875,  for  an  ^^  improvement  in  buckets  for  chain- 
pumps."  It  was  held  that  he  had  infringed  claims  1  and  2  of 
No.  6,531 ;  but  the  bill  was  dismissed  on  the  ground  that  both 
of  those  claims  were  anticipated  by  pump-buckets  constructed 
by  one  Orin  O.  Witherell  prior  to  the  plaintiff's  invention. 

In  respect  to  claim  1,  Witherell,  on  his  examination  as  a 
witness  in  that  suit,  introduced  an  Exhibit,  A,  as  representing 
a  form  of  bucket  which  he  made  and  sold  for  5  months,  in 
the  year  1866.  It  was  said  of  that  Exhibit,  in  the  decision  in 
that  suit:  ''It  has  a  thin  india  rubber  disc  placed  loosely 
above  a  metal  disc,  and  the  edge  of  the  rubber  disc  forms  a 
flange,  which  extends  downwards  and  embraces  part  of  the 
depth  of  the  metal  disc.  The  rubber  disc  has  a  hole  in  the 
centre,  through  which  a  metal  eye,  fastened  to  the  upper  part 
of  the  metal  disc,  passes.    He  testifies,  that  the  settling  down 


JANUARY,  1882.  179 


Barker  v.  Sboota. 


of  the  chain,  when  the  pamping  was  stopped,  allowed  the 
water  above  to  escape  through  the  hole  in  the  centre  of  the 
robber  disc.  *  *  *  Witherell  testifies  that  he  put  the 
buckets,  like  Exhibit  A,  particularly  into  worn  pump-tubes, 
which  had  only  the  metal  plate  buckets ;  that,  between  April 
and  August,  1866,  he  put  buckets  like  Exhibit  A  into  be- 
tween 50  and  100  wells,  mostly  in  the  southeastern  part  of 
New  Hampshire ;  that  he  saw  one  of  such  pumps  in  success- 
ful operation  with  them,  as  late  as  1869 ;  that  he  never  used 
less  than  three  of  such  buckets  for  a  well,  and  seldom  more  of 
them ;  that  he  never  knew  any  of  them  to  freeze ;  that  the 
back  motion  of  the  chain,  after  pumping  was  stopped,  was 
sufficient,  even  when  a  ratchet  was  used,  to  open  a  central 
space  between  the  rubber  and  the  metal  plate,  the  rubber  ad- 
hering to  the  sides  of  the  pump-tube,  and  allowing  the  water 
to  escape  down  through  the  centre ;  that  he  used  the  buckets 
like  Exhibit  A  for  the  purpose  of  fitting  closely  in  the  tube, 
Bo  as  to  cause  suction;  and  that  he  generally  succeeded  in 
establishing  a  suction,  unless  the  tube  was  too  much  worn  or 
defective.  There  is  no  testimony  in  contradiction  of  this,  or 
throwing  doubt  upon  the  truth  of  the  facts  testified  to  by 
Witherell,  or  showing  that  buckets  like  Exhibit  A  would  not 
operate  as  he  testifies.  Exhibit  A  shows  an  elastic  bucket  for 
a  chain-pxmip,  adapted  to  fit  and  work  in  the  bore  of  a  pump- 
tube,  to  raise  water  by  suction,  and  provided  with  a  suitable 
orifice  or  outlet  through  which  the  water  remaining  in  the 
pump-tube,  above  the  bucket,  can  escape  down  to  the  source 
of  supply.  *  *  *  It  appears  to  have  been  a  successful, 
practical,  working  apparatus.  If  it  was  an  elastic  suction- 
bucket,  with  a  drip,  it  is  of  no  consequence  whether  With- 
erell devised  it  primarily  with  a  view  to  the  drip,  or  not. 
Nor  is  it  of  any  consequence  that  the  hole  for  the  link  served 
also  as  a  drip-hole.  If  it  allowed  the  water  to  escape,  it  would 
do  so  as  effectually  as  the  extra  passage  in  the  plaintiff's 
bucket.  It  may  be,  perhaps,  that  the  plaintiff  is  entitled  to 
some  claim  in  respect  to  a  drip-orifice  in  an  elastic  suction- 
bucket,  but,  in  view  of  the  Witherell  Exhibit  A,  the  first 
daim  of  the  plaintiff's  patent  is  too  broad  and  is  invalid." 


180  NORTHERK  DISTRICT  OF  NEW  YORK, 

Barker  v.  Shoota. 

In  respect  to  claim  2,  Witherell  introdaced,  in  that  case, 
another  form  of  bucket  made  by  him,  Exhibit  B.  It  was 
said  of  that  Exhibit,  in  the  decision  in  that  suit:  '^He  testi- 
fies that  he  made  and  sold  buckets  like  Exhibit  B,  after  he 
made  them  like  Exhibit  A,  and  from  the  fall  of  1866  until 
the  fall  of  1873.  Exhibit  B  has  a  rubber  disc  compressed 
between  two  metal  plates  by  a  screw  and  a  nut.  By  lubricat- 
ing with  oil  the  iron  washer  on  the  lower  face  of  the  disc, 
the  lower  part  of  the  disc  was  caused  to  expand  more 
than  the  upper  part,  so  as  to  give  to  the  lower  part  a  bearing 
edge,  with  the  part  above  it  receding  from  it  inwards.  Ex- 
hibit B  shows  such  construction.  He  says  that  he  never  used 
less  than  three  of  Exhibit  B  for  a  set,  and  seldom  more ;  that 
his  practice  was  to  have  the  bucket  fit  as  closely  as  possible, 
and  not  have  the  pump  work  too  hard ;  that  the  object  of  the 
bevelled  edge  was  to  have  the  rubber  slide  easily  over  any 
roughness  in  the  tube ;  that  the  bucket  operated  both  by  lift- 
ing and  suction ;  that,  when  the  bucket  fitted  closely,  it  re- 
sisted the  downward  run  of  the  chain ;  that  he  set  them  close 
enough,  by  expansion,  to  draw  the  water  up  readily,  and  yet 
leave  room  for  the  water  to  pass  back  on  the  inside  of  the 
tube ;  that  the  water  in  the  tube,  with  Exhibit  B,  never  froze, 
when  the  bucket  was  properly  adjusted ;  that  he  made  a  con- 
siderable number  with  the  bearing  edge  like  Exhibit  B ;  and 
that  he  used  that  form  in  tubes  that  were  too  lai^e  to  be  fiUed 
by  expanding  the  disc  equally  from  both  of  its  faces.  This  Ex- 
hibit B  is  a  solid  elastic  bucket,  having  an  elastic-bearing  edge, 
and  its  upper  portion  convex  from  said  edge,  whereby  the  bucket 
will  readily  yield  to  any  irregularities  in  the  pump-tube,  and 
admit  of  its  being  easily  drawn  up,  while,  at  the  same  time,  it 
will  resist  moving  downward.  It  answers  exactly  the  second 
claim  of  the  plaintiff's  patent.  A  provision  for  the  escape  of 
the  water  is  no  part  of  the  second  claim,  and  the  elastic-bear- 
ing edge  is  no  part  of  the  first  claim.  Although  Exhibit  A 
has  no  elastic-bearing  edge  it  anticipates  the  first  claim ;  and 
although  Exhibit  B  has  no  water  escape,  it  anticipates  the 
second  claim." 


JANUARY,  1882.  181 


Barker  v.  Shoots. 


The  answer  in  the  present  case  denies  infringement  and 
sets  up  that  the  buckets  for  chain-pumps  which  the  defend- 
ant kas  made,  nsed  and  sold  are  secured  to  him  by  letters  pat- 
ent granted  to  him,  Ko.  158,534,  dated  January  5th,  1875. 
It  also  sets  up  want  of  novelty  and  alleges  various  anticipa- 
tions. One  of  them  is  that  of  Witherell.  It  also  alleges  that 
the  re-issue  sued  on  contain  matters  of  substance  not  embraced 
in  the  original  patent. 

In  the  8towe  case  it  was  alleged  that  matter  was  found  in 
the  re-issue  which  was  not  in  the  original  patent  of  1871,  but 
the  Court  said :  '^  The  drawings  are  identical,  and  there  is 
nothing  either  in  the  specification  or  the  claims  of  the  r^ 
issue  which  is  not  justified  by  what  is  found  in  the  de- 
scription or  drawings  of  the  oi*iginal  patent."  Nothing  is 
shown  to  change  this  view,  and  the  original  patent  is  not  put 
in  evidence  in  this  suit. 

The  structure  presented  by  the  plaintiff  as  the  infringement 
is  known  as  "  LoveU  Exhibit  1."  The  same  structure  is  rep- 
resented by  "  Defendant's  Exhibit  1."  It  has  no  drip-notch. 
It  is  constructed  in  accordance  with  the  description  in  No. 
158,534.  It  consists  of  a  ringed  bolt  or  eye  bolt,  which  passes 
through  an  upper  metal  plate,  the  extension  beyond  such 
plate  having  a  male  screw-thread  cut  on  it,  and  passing 
through  an  india  rubber  disc  and  into  a  female  screw-thread 
cut  in  another  and  lower  metal  plate,  to  which  a  loop  or  eye 
or  ring  is  aflSxed.  The  two  parts  are  centred  when  screwed 
together.  Each  of  the  two  plates  is  convex  on  its  inner  face, 
towards  the  rubber  disc,  and  the  disc  is  slightly  concave  on 
each  of  its  opposite  upper  and  lower  faces.  The  disc  can  be 
expanded  circumferentially  in  an  outward  direction,  by  screw- 
ing up  the  lower  plate.  The  disc  is  solid.  The  lower  part  of 
its  circumference,  for  a  distance  of  perhaps  an  eighth  of  an 
inch  upwards  from  the  lower  edge,  is  bevelled  outwards  very 
slightly,  and  then  its  outer  face  slopes  upward  and  inward  at 
an  angle  of  some  508  to  608,  with  its  base  to  its  upper  concave 
face,  such  slope  being,  in  superficial  upward  length,  about  half 
an  inch.  The  claim  of  No.  158,534  is  to  a  combination  of  all 
the  parts  making  up  the  structure. 


182  NORTHERN  DISTRICT  OF  NEW  YORK, 

Barker  v.  Shoots. 

Claims  1  and  2  of  No.  6,531,  are  those  which  are  al- 
leged to  have  been  infringed.  They  are  as  follows :  '^  1.  An 
elastic  bucket  for  chain-pnmps,  adapted  to  fit  and  work  iA  the 
bore  of  a  pnmp-tnbe,  to  raise  the  water  by  snction,  provided 
with  a  suitable  orifice  or  outlet  through  which  the  water  re- 
maining in  the  pump-tube  above  the  bucket  is  allowed  to 
escape  down  to  the  source  of  supply,  substantially  as  and  for 
the  purpose  set  forth.  2.  A  solid  elastic  bucket,  having  an 
elastic-bearing  edge,  and  its  upper  portion  convex  or  con- 
tracted from  said  edge,  whereby  the  bucket  will  readily  yield 
to  any  irregularities  in  the  pump-tube,  and  admit  of  its  being 
easily  drawn  up,  while  at  the  same  time  it  will  resist  moving 
downwards,  substantially  as  and  for  the  purpose  specified." 

On  the  question  of  infringement  the  defendant  testifies 
that  his  bucket  raises  water  ^^  by  lifting  and  not  by  suction 
particularly ; "  that  it  works  on  the  same  principle  as  the  old 
metallic  bucket ;  that  he  always  makes  his  buckets  ^^  to  fit 
loosely  in  the  tube  ; "  that  a  H  inch  bucket  of  his  can  be  ex- 
panded, by  compressing  the  rubber  between  the  plates,  so  as 
to  fit  a  1^  inch  tubing ;  and  that,  after  pumping,  with  his 
bucket,  the  water  runs  back  down  the  tube  to  the  source  of 
supply  through  the  space  around  the  bucket,  because  that  fits 
loosely  in  the  tubing  and  is  smaller  than  the  bore.  It  is  con- 
tended for  the  defendant,  that  his  bucket  is  not  a  solid  elastic 
bucket,  within  the  meaning  of  No.  6,531 ;  that  it  does  not 
assume  the  shape  of  a  cone ;  and  that  it  will  operate  equally 
well  with  either  surface  upward.  The  evidence  is  entirely 
satisfactory  that  the  defendant's  bucket  infringes  claim  2  of 
No.  6,531.  It  is  a  solid  elastic  bucket,  and  has  an  elastic- 
bearing  edge,  and  has  its  upper  portion  convex  or  contracted 
from  said  edge,  and  thereby  the  bucket  will  readily  yield  to 
any  irregularities  in  the  pump-tube,  and  it  can  be  easily  drawn 
up  while  at  the  same  time  it  will  resist  moving  downward. 
The  specification  and  claim  of  No.  158,534  show  that  the 
bucket  is  intended  for  use  with  the  smaller  surface  of  the 
rubber  disc  uppermost.  The  witness  Biker  shows  that  this 
is  so.    It  also  appears  that  the  defendant's  buckets  sent  out 


JANUARY,   18«2.  183 


Barker  v.  Shoota. 


by  him  to  be  put  in  were  pat  in  so  as  to  fit  tightly  in  the  tube 
and  draw  water  by  suction,  and  were  pnt  in  with  the  smaller 
end  of  the  rubber  disc  uppermost,  and  had  drip-notches  cut 
in  them  when  set.  If  they  fit  tight  and  draw  water  by  suc- 
tion, the  drip  notch  is  a  necessity,  if  there  is  danger  of  freeze 
ing.  It  must,  therefore,  be  held  that  infringement  of  claim  1 
also  is  shown. 

The  evidence  of  Witherell  is  not  produced  in  this  suit.  In 
regard  to  Witherell's  testimony  in  the  former  suit  against 
8towe,  respecting  structures  anticipating  claim  1  of  No.  6,531, 
it  was  said  in  the  decision  in  that  suit,  that  there«was  in  that 
suit  no  testimony  contradicting  Witherell,  or  throwing  doubt 
on  the  truth  of  the  facts  testified  to  by  him,  or  showing  that 
a  bucket  like  Exhibit  A  in  that  suit  would  not  operate  as 
Witherell  testified  it  would.  In  the  present  suit,  five  wit- 
nesses have  been  examined  on  the  part  of  the  defendant, 
namely  Waite,  Bostwick,  Smith,  Wardwell  and  Reed,  to 
show  want  of  novelty  in  claims  1  and  2.  The  answer  does 
not  set  up  prior  knowledge  or  use  by  any  of  them.  But  it  is 
doubtful  whether  the  record  contains  any  objection  on  that 
ground  to  the  testimony  of  any  of  them.  Their  evidence 
will,  therefore,  be  considered. 

The  most  that  the  evidence  shows  is  the  use,  not  in  new. 
pump-tubes,  but  in  worn  pump-tubes,  of  a  fiat,  thin  cylin- 
drical disc  of  rubber,  slipped  over  the  loop  of  the  chain  and 
lying  fiat  on  the  metal  button,  to  compensate  for  the  wear 
which  had  taken  place  in  the  tube  by  the  rubbing  of  the  metal 
button.  The  rubber  discs  were  not  used  in  a  new  cylindrical 
bore  but  only  in  bores  which  had  become  of  oval  or  irregular 
shape,  and  which  were  worn  more  irregularly  for  a  distance 
at  the  top  and  the  bottom  of  their  length  than  at  the  middle 
thereof.  These  discs  were  not  the  elastic  bucket  of  claim  1 
of  No.  6,531,  fitting  so  as  to  operate  by  suction.  The  cylin- 
drical rubber  disc  could  not  fit  any  bore  that  was  not  cylin- 
drical and  could  not  operate  by  suction  in  a  bore  that  was  not 
cylindrical.  It  was  as  much  of  a  lifting  button  as  the  metal 
button,  and  it  could  not  operate  by  suction  in  the  non-cylin- 


184  NORTHERN  DISTRICT  OP  NEW  YORK, 

Barker  v.  Shoots. 

drical  bore  any  more  than  the  non-fitting  metal  button  conld 
in  a  bore  either  cylindrical  or  non-cylindrical.  Of  conrse,  if 
these  rubber  discs  did  not  fit  the  bore  they  did  not  have  the  drip- 
notch  of  claim  1  of  the  plaintiff.  The  evidence  in  the  present 
case  as  to  the  prior  structures  is  very  different  from  that  in 
the  former  case  against  8towe.  It  now  appears  clearly  that, 
in  a  wooden  pump-tube,  originally  cylindrical,  but  worn  by 
the  use  of  cylindrical  metal  buttons  on  a  chain,  a.  cylindrical 
rubber  disc  will  not  operate  by  suction,  and  the  water  will  es- 
cape back  around  the  edge  of  the  disc,  because  the  wear  is  not 
uniformly  annular,  and  if  the  rubber  disc  be  cut  non-cylindri- 
cal, but  oval,  to  suit  an  oval  wear,  it  will,  in  going,  up  and 
down,  cross  the  oval  and  become  jammed. 

The  thin  flat  discs  referred  to  are  not  the  solid  elastic 
bucket,'  with  an  elastic-bearing  edge,  and  its  upper  portion 
convex  or  contracted  from  said  edge,  required  by  claim  3  of 
No.  6,531.  Defendant's  Exhibit  No.  Sis  the  only  approach 
towards  such  a  structure,  but  it  was  used  only  experimentally. 

The  patent  No.  19,173,  granted  to  Marvin,  January  19th, 
1858,  on  the  invention  of  Horton,  does  not  show  what  is 
found  in  claims  1  and  2  of  No.  6,531,  and  in  the  defendant's 
bucket.  It  has  only  leather  and  not  india  rubber  or  other 
similarly  clastic  material.  This  patent  was  not  mentioned  in 
the  answer,  and  its  introduction  in  evidence  was  objected  to 
on  that  ground. 

It  is  stated  in  the  defendant's  brief  that  the  Witherell 
Exhibits  in  the  former  case  against  Stowe  are,  by  stipulation, 
made  evidence  in  this  case.  I  find  no  such  stipulation.  The 
only  stipulation  I  find  in  the  record,  on  the  subject,  is  one  that 
the  certified  copies  of  United  States  letters  patent  made  ex- 
hibits and  filed  in  the  former  case  against  Stowe  be  used  for 
this  case.  Moreover,  plaintiff's  exhibit  13  was  offered  in  evi- 
dence by  the  plaintiff  as  a  rubber  disc  of  Witherell,  (and  it 
appears  to  be  like  what  is  above  described  to  be  Exhibit  A  of 
Witherell  in  the  former  case  against  Stowe),  and  its  introduc- 
tion was  objected  to  by  the  defendant  on  the  ground  that  at 
the  stage  of  the  case  at  which  it  was  offered  it  was  not  rebut- 


JANUARY,   1882.  185 


Barker  v.  Stowe. 


ting  evidence.  This  objection  was  valid.  The  defendant 
then  went  on  to  give  notice  that  he  would  produce  and  read 
at  the  hearing  the  evidence  of  Witherell  taken  in  the  former 
Boit  against  Stowe,  and  the  exhibits.  To  this  the  plaintiff 
entered  an  objection,  on  the  ground  that  the  matter  was  irrel- 
evant and  conld  not,  under  any  circumstances,  form  any  part 
of  the  record  in  this  suit.  This  objection  was  valid.  More- 
over, the  said  evidence  of  Witherell  has  not  been  produced 
by  either  party ;  and  so  Exhibit  !N'o.  13  has  no  place  in  this 
case,,  as  evidence  of  a  prior  structure. 

It  is  proper  to  say  that,  on  objections  taken  by  the  defend- 
ant and  appearing  on  the  record,  and  insisted  on  him  at  the 
bearing,  I  have  rejected  the  following  parts  of  the  testimony 
for  the  plaintiff:  the  question  at  page  12,  folio  17,  '^Q.  Has 
not,"  &C.,  and  the  answer;  Exhibit  10  of  plaintiff;  Exhibit 
11  of  plaintiff;  and  the  evidence  as  to  the  contents  of  a 
license  from  the  plaintiff  to  the  defendant  and  one  Colwell. 

There  nnust  be  the  usual  decree  for  the  plaintiff. 


Oecrge  E.  Buckley^  for  the  plaintiff. 
WoUer  Z.  Dailey^  for  the  defendant. 


William  C.  Barker 
DsLORAiNB  F.  Stowe.    Tn  Equitt. 

E  toed  8.,  in  this  Court,  in  equity,  for  the  infringement  of  a  patent.  Oo  an 
inne  as  to  novelty  the  Court  decided  in  fayor  of  S.,  and  held  that  the  bill 
niiiat  be  dismiflsed.  Afterwards  B.  sued  S.  again,  in  this  Court,  in  equity,  for 
the  infringement  of  the  same  patent.  S.,  in  liis  answer,  set  up,  as  an  estoppel, 
the  former  suit.  No  decree  had  in  fact  been  entered  in  it.  Proofs  were  taken 
in  the  second  suit,  in  which  it  was  assumed  by  both  parties  that  there  had 


186  NOBTHERN  DISTRICT  OF  NEW  YORK, 

Barker  •.  Stowe. 

been  a  decree  in  the  first  suit.  At  the  hearing  of  the  second  suit  B.  objected 
that  there  had  been  no  decree  in  the  first  suit  The  Conrt^  on  the  motioii  of 
8.,  then  signed  and  entered  a  decree  in  the  first  snit»  and  allowed  it  to  he  pot 
in  eridence  on  the  part  of  S.,  in  the  second  suit,  and  held  that  it  was  a  bar  to 
the  second  suit. 

(Before  Blatghvokd,  J.,  Northern  District  of  New  York,  January  4th,  1882.) 

Blatohfobd,  J.  This  suit  is  brought  on  the  same  re- 
issoed  letters  patent,  No.  6,531,  inyolved  in  Barker  v.  Shoc^ 
{cmte^p.  178,)  decided  herewith.  The  defendant  in  this  suit  is 
the  same  person  who  was  defendant  in  the  suit  of  Barker  y. 
Stowe,  (15  Blatckf.  C.  0.  H.,  49,)  brought  on  the  same  patent 
By  stipulation  the  testimony  in  the  suit  against  Shoots  and 
in  this  suit  was  taken  simultaneously,  and  it  is  all  of  it  en- 
titled in  both  cases,  and  it  is  stipulated  that  the  evidence  in 
one  case  '^  shall  be  good  for  both.''  The  decision  in  the  case 
against  Shoots  disposes  of  all  questions  in  this  case  except  that 
of  infringement  and  a  question  as  to  the  former  suit  against 
Stowe. 

The  answer  sets  up  that  the  defendant's  buckets  are 
secured  to  him  by  letters  patent  granted  to  him.  No.  160,125, 
dated  February  23d,  1875.  The  defendant's  bucket  in  the 
present  case,  "  Lovell  Exhibit  No.  2,"  is  precisely  like  the  one 
described  in  the  decision  in  the  former  suit  against  him  as 
the  one  alleged  there  to  infringe.  It  is  clearly  an  infrin^ 
ment  of  claims  1  and  2  of  No.  6,531. 

The  answer  sets  up  that  in  1876  the  plaintiff  filed  a  bill  in 
this  Court  setting  up  the  same  matters  and  cause  of  action  as 
are  contained  in  this  bill ;  that  the  defendant  appeared,  on 
process,  and  answered  the  bill,  setting  up  the  same  matters 
previously  set  up  in  this  answer ;  that  a  replication  was  pat 
in  ;  that  evidence  was  thereafter  taken  in  said  suit ;  that  the 
cause  was  heard  on  the  merits,  on  pleadings  and  proofs,  at 
the  June  Term,  1878;  that,  in  July,  1878,  the  Court  made  a 
decision,  determining  that  the  said  patent,  No.  6,531,  was 
void  for  want  of  novelty  and  that  the  bill  be  dismissed,  with 
costs ;  that  the  defendant  refers  to  said  bill,  answer,  replica- 
tion, decision,  decree  and  judgment  record  in  said  former 


JANUARY,  1882.  187 


Barker  •.  Stowe. 


snit ;  that  said  Court  had  jurisdiction  of  said  cause,  the  par- 
ties thereto  and  the  snbject-matter  thereof ;  that  said  judg- 
ment and  decree  are  valid  and  remain  in  force ;  that  the  right 
of  the  plaintifP  to  the  relief  songht  in  that  cause  was  duly 
passed  npon  and  adjudicated ;  and  that  the  plaintiff  is  estopped 
by  said  former  judgment  and  decree  from  asserting  the  same 
in  this  canse.  This  answer  was  verified  March  27th,  1880. 
The  record  of  the  defendant's  testimony,  nnder  date  of  Novem- 
ber 24th,  1880,  contains  an  entry  that  the  defendant  offers  in 
evidence  a  certified  copy  of  a  decree  in  said  snit  against  him, 
and  also  the  opinion  of  the  Court  in  said  suit,  marked  defend- 
ant's Exhibit  5 ;  and  that  the  plaintiff  objected  to  the  same  as 
immaterial,  and  because  the  proofs  on  which  the  decision  and 
opinion  were  based  were  not  introduced.  The  same  record, 
under  date  of  February  19th,  1881,  states  that  it  is  agreed 
between  the  resi)ective  attorneys  "  that  all  documentary  evi- 
dence heretofore  offered  in  evidence,  that  is  properly  certified 
to,  shall  be  admitted  in  evidence  without  objection."  The 
record  of  the  plaintifiTs  testimony,  under  date  of  March  22d, 
1881,  contains  an  entry  that  the  defendant's  counsel  gives 
notice  that  he  will  read  and  produce  on  the  hearing  of  this 
case  the  judgment  roll,  decision  and  decree  in  the  said  former 
suit  against  the  defendant,  and  also  the  evidence  of  Orin  O. 
Witherell,  taken  in  said  suit,  filed  with  the  clerk,  and  also  all 
of  the  exhibits  used  on  said  trial;  and  that  the  plaintiff's 
counsel  objected  for  the  reasons  before  stated  under  date  of 
November  24th,  1880,  and  because  the  matter  is  irrelevant. 
This  cause  was  brought  to  a  hearing  at  the  June  Term,  1881. 
It  then  appeared  that  nothing  had  been  produced  and  marked 
defendant's  Exhibit  5,  and  that  no  decree  had  ever  been  signed 
or  entered  in  the  former  suit.  The  present  suit  was  begun  in 
November,  1879.  The  bill  does  not  refer  to  the  former  suit. 
It  alleges  infringement  in  the  past  generally.  When  it  was 
filed  there  had  been  no  decree  entered  in  the  former  suit. 
The  proof  of  infringement  made  in  this  case  is  of  an  infringe- 
ment on  October  6th,  1879.  The  plaintiff,  in  giving  testimony 
as  a  witness  in  this  case,  on  the  11th  of  June,  1880,  testifies 


188  NORTHEBN  DISTRICT  OF  NEW  YORK, 

,    ,  w 

Barker  v.  Stowe. 

that  he  heretofore  brought  a  siiit  in  this  Coart  against  this 
defendant,  and  that  the  case  was  dismissed  on  the  evidence  of 
O.  O.  Witherell.  This  evidence,  when  given,  was  duly  ob- 
jected to  by  the  defendant's  connsel,  on  the  ground*  that  the 
fact  must  be  proved  by  the  record,  and  that  the  decision 
in  the  case  could  not  be  proved  by  parol,  accompanied  by 
the  statement  that  the  defendant's  counsel  offers  to  produce 
the  decision,  and  followed  by  the  statement  that  the  counsel 
for  the  plaintiff  will  produce  "the  original  of  said  records  on 
which  said  bill  was  dismissed."  !N'othing  of  that  kind  was 
done  by  either  party. 

This  case,  though  argued  orally  at  the  June  Term,  1881, 
awaited  the  submission  of  printed  briefs  by  the  respective 
counsel.  The  plaintiff's  brief  was  submitted  to  the  defend- 
ant's counsel  in  July,  1881.  It  took  the  ground  that  no  de- 
cree had  ever  been  entered  in  the  former  suit;  that  there 
was  no  judgment  or  decree  therein  against  the  plaintiff  when 
he  commenced  this  suit,  and  none  since ;  that  no  part  of  the 
record  in  the  former  suit  had  been  put  in  evidence,  nor  had  a 
copy  of  the  decision  rendered  in  the  former  suit  been  pro- 
duced in  this  suit ;  that  the  defendant  must,  therefore,  be  re- 
garded as  having  abandoned  the  matter ;  and  that,  in  the 
absence  of  a  decree  and  a  judgment,  the  former  suit  could  be 
no  bar.  Thereupon  the  defendant  gave  notice  to  the  plaintiff 
of  an  application  to  the  Court  to  sign  and  enter  a  decree  in 
the  former  suit.  The  decision  in  the  former  suit,  as  found  in  15 
Blatchf.  C.  (7.  -ff.j  49,  was  filed  in  the  clerk's  office  July  1 1th, 
1878.  The  said  application  was  made  on  an  affidavit  made  by 
the  defendant's  solicitor  in  that  suit,  the  same  person  who  is  the 
defendant's  solicitor  and  counsel  in  this  suit,  setting  forth  that 
he  was  not  familiar  with  the  practice  in  such  a  case ;  that,  after 
such  decision  had  been  filed,  he  supposed,  and  was  so  informed 
by  Mr.  Wright,  an  experienced  practitioner  in  this  Court  that 
the  clerk  would  enter  the  final  decree  on  the  filing  of  the  de- 
cision and  entering  the  order  dismissing  the  bill,  and  that  the 
costs  could  be  taxed  at  any  time  and  inserted  in  the  judg- 
ment ;  that  he  supposed  the  decree  had  been  entered  when 


JANUARY,   1882.  189 


Barker  v.  Stowe. 


this  suit  was  brought ;  that,  on  the  3d  of  Aiignst,  after  receiv- 
ing the  plaiDtifTs  brief,  he  went  to  the  clerk's  office  at  Utica, 
and  learned  that  no  formal  final  decree  had  been  entered ; 
and  that  he  then  prepared  a  decree  to  be  signed.  The  said 
application  was  made  and  was  opposed  by  the  plaintiff.  The 
Judge  who  decided  the  former  case  granted  the  application 
and  signed  a  decree.  It  sets  forth  that  the  canse  was  heard 
on  the  pleadings  and  proofs  at  the  Jnne  Term,  1878 ;  that 
the  decision  of  the  Coart  was  made  and  filed  July  11th,  1878, 
'^  whereby  it  was  decided  that  the  claim  in  the  re-issued  let- 
ters patent  No.  6,531,  granted  to  the  plaintiff,  had  ,been  antic- 
ipated, and  that  the  bill  of  complaint  herein  be  dismissed, 
with  costs ;  ^'  and  it  then  orders,  adjudges,  and  decrees  "  that 
the  bill  of  complaint  be  and  the  same  is  hereby  dismissed,  and 
that  said  defendant  recover  from  the  plaintiff  the  costs  of  this 
action,  when  taxed  and  adjusted  by  the  clerk  of  this  Court, 
and  that  defendant  have  execution  thei*efor."  This  decree 
was  entered  and  enrolled  August  27th,  1881,  the  roll  consist- 
ing of  the  bill,  answer,  replication  and  decree.  Meantime, 
the  defendant's  counsel  had  submitted  his  printed  brief  in  this 
case,  asking  in  it  that  a  decision  in  this  case  be  withheld  until 
the  decree  in  the  former  suit  could  be  perfected  and  become 
a  part  of  the  evidence  in  this  case.  The  plaintiff's  brief  in 
reply  was  put  in,  and  suggested  that  the  defendant  had  stated 
that  he  should  not  get  a  copy  of  the  record  in  the  former 
suit  to  file  as  an  exhibit,  because  he  had  spent  as  much  money 
as  lie  was  going  to  spend  in  the  matter.  A  certified  copy  of  the 
enrolled  decree  was  sent  to  me,  but  I  informed  the  defendant's 
soUcitor  that  he  must  apply,  on  notice  to  the  plaintiff,  for  leave 
to  have  it  considered  as  evidence.  The  decision  of  the  case 
was  delayed  to  allow  such  application  to  be  made.  It  was 
made  at  the  October  Term,  1881,  on  notice,  and  was  opposed 
by  the  plaintiff.  The  form  of  it  was  a  motion  for  an  order 
opening  the  case,  and  for  leave  to  put  in  in  this  suit  the  cer- 
tified copy  of  the  judgment  record  and  decree  in  the  former 
suit.  The  costs  had  been  taxed  at  $202  35.  The  defendant, 
in  an  affidavit  for  the  motion,  denied  that  he  ever  stated  that 


190  NORTHERN  DISTRICT  OF  NEW  YORK, 

Barker  v.  Stowe. 

he  would  not  incur  the  expense  of  procoring  a  copy  of  the 
decree  in  the  former  suit,  and  that  he  believed,  nntil  informed 
to  the  contrary  by  his  attorney,  that  the  decree  had  been  in 
fact  entered,  and  wonid  be  a  bar  to  this  sait,  and  that  he  was 
at  all  times  wiUing  to  incur  the  expense  of  entering  the  same 
and  procnring  a  certified  copy  of  it  as  evidence  in  this  cause. 
The  motion  was  also  based  on  the  said  aflSdavit  of  the  defend- 
ant's solicitor,  used  on  the  motion  to  have  the  decree  signed. 
Many  affidavits  on  both  sides  have,  since  the  October  Term, 
been  furnished  to  me,  directed  to  the  question  as  to  whether 
the  defendant  had  said  that  he  would  spend  no  more  money 
in  defending  the  suit,  leaving  the  common  defence  to  be  car- 
ried on  by  the  defendant  in  the  Shoots  case,  and  as  to  whether 
he  had  intentionally  refrained  from  having  the  decree  in  the 
former  suit  entered.  It  seems  strange  that  the  decree 
was  not  entered.  Yet,  the  answer  of  the  defendant,  sworn  to 
by  him  in  March,  1880,  and  signed  by  his  solicitor,  not  only 
speaks  of  a  decision  in  the  former  case  dismissing  the  bill 
therein,  but  refers  to  the  decree  and  judgment  record  therein 
as  having  been  made,  and  as  existing,  and  as  being  an  estop- 
pel in  this  snit.  In  view  of  this  the  plaintiff  went  on  to  take 
proofs  in  this  snit ;  and,  in  the  plaintiff's  opening  proofs,  in 
June,  1880,  the  former  suit  was  mentioned  by  him,  as  a  witr 
ness,  as  a  suit  which  had  been  dismissed,  and  his  counsel  then 
and  there  gave  notice  on  the  record  that  he  would  produce 
the  original  of  the  records  on  which  the  bill  in  that  suit  had 
been  dismissed.  Afterwards,  when,  in  the  defendant's  proofs, 
the  entry  was  made  that  a  certified  copy  of  a  decree  in  the 
former  suit,  and  of  the  opinion  of  the  Jndge  therein,  marked 
defendant's  Exhibit  5,  was  offered  in  evidence  by  the  defend- 
ant, (thongh  no  such  papers  were  then  produced  or  marked,) 
the  plaintiff  did  not  object  to  the  making  of  the  entry  be- 
cause nothing  was  produced,  and  did  not  allege  that  there  was 
no  decree,  but  objected  because  the  proofs  were  not  offered 
upon  which  the  decision  had  been  based.  Afterwards,  when, 
in  the  plaintiff's  proofs,  the  defendant  gave  notice  that  he 
would  read  and  produce  on  the  hearing  the  judgment  roll, 


JANTJARY,  1882.  191 


Barker  v.  Stowe. 


decision  and  decree  in  the  former  soit,  the  plaintiff  objected 
on  varions  groands,  bnt  did  not  Btate  that  there  was  no  Boch 
decree.  It  seems,  therefore,  entirely  reasonable  that  the  case 
sboold  be  opened  so  far  as  to  allow  the  certified  copy  of  the 
enioUed  decree  in  the  former  suit  to  be  put  in  eridence  by 
the  defendant,  and  become  a  part  of  the  proofs  herein.  The 
plaintiff's  counsel  suggests  that  there  was  no  decree  against 
the  plaintiff  in  the  former  suit,  when  this  suit  was  brought, 
and  that  the  decision  filed  amounted  to  nothing.  In  SUshy  y. 
Footey  (20  Howardj  290,  295,)  the  Supreme  Court  held  that 
the  prononncing  of  a  decision  by  a  Circuit  Court,  and  its  en- 
tiy  in  the  minutes,  where  the  judgment  or  decree  is  a  simple 
one,  "  such  as  an  affirmance  or  reversal  and  the  like,"  consti- 
tutes a  decree  from  which  an  appeal  may  be  taken  to  that 
Court.  Here,  the  decision  in  the  former  suit  was  a  dismissal 
of  the  bill.  The  decree  signed  in  the  former  suit  states  that 
that  was  the  decision,  and  that  it  was  made  and  filed  July 
nth,  1878. 

The  decree  in  the  former  suit  must  be  regarded  as  having 
the  date  of  July  11th,  1878 ;  and  the  question  is,  as  to 
whether  it  is  a  har  to  this  suit.  It  is  properly  set  up  in  the 
answer.  The  suit  was  between  the  same  parties,  and  founded 
on  infringement  of  the  same  patent.  The  bill  in  the  former 
suit  asks  for  profits  and  damages  from  the  date  of  the  re-is- 
sue, and  for  treble  damages,  and  for  a  perpetual  injunction. 
The  biU  in  the  present  suit  makes  the  same  allegations  and 
asks  the  same  relief.  The  issne  of  the  inability  of  the  plaint- 
iff to  recover  in  the  suit  because  the  invention  claimed  had 
been  anticipated,  was  tendered  by  the  answer  in  the  former 
suit,  and  was  found  in  favor  of  the  defendant,  as  appears  by 
the  decree.  That  issue  cannot  be  again  tried  between  the 
parties.  If,  in  the  former  suit,  that  issue  had  been  found  in 
favor  of  the  plaintiff,  it  could  not  have  been  again  tried  in 
this  suit ;  and  in  this  suit  nothing  would  have  been  open  but  * 
the  question  of  infringement,  if  the  bucket  claimed  to  in- 
fringe were  different  from  the  infringing  bucket  in  the  for- 
mer suit.    Within  the  principles  laid  down  in  OrofmoeU  v. 


192  CONNECnOUT. 


The  New  Haven  Steam  Mill  Company  v.  The  Secnrity  Insaranoe  Comptny. 

County  of  SaCj  (4  Otto,  351,)  and  applied  by  this  Court  in 
Smithy.  Town  cf  Ontario,  (18  Blatckf.  C.  C.  JR.,  454,)  it 
must  be  held  that  this  suit  is  barred  by  the  decree  in  the  for- 
mer suit. 

A  decree  will  be  entered  granting  the  defendant's  motion 
and  dismissing  the  biQ,  with  costs. 


George  E.  BucHey,  for  the  plaintifi. 
Walter  L,  Dailey,  for  the  defendant. 


The  Kew  Haven  Steam  Mnx  Company 
The  SEcuBnr  Insubanob  Company. 

A  Talned  marine  policy  of  insurance  inaored  a  reesel  for  one  year.  In  the 
printed  part  of  the  policy  there  was  a  warranty  by  the  assured  not  to  ose  cer- 
tain specified  ports  and  places,  and  certain  waters,  and,  amoog  them,  th« 
West  India  Islands  daring  certain  months,  and  ports  and  places  in  TeiiB, 
except  Galyeston,  and  foreign  ports  and  places  in  the  Gulf  of  Mexico  and  any 
of  the  West  ludia  salt  islands,  and  not  to  load  more  than  her  registered  ton- 
nage with  heavy  cargo  or  grain  on  any  one  passage.  On  the  margin  of  the 
face  of  the  policy,  written  at  a  right  angle  to  the  printed  lines,  were  thsaa 
words:  "To  be  employed  in  the  Coasting  Trode,  on  the  United  States 
Atlantic  Coast,"  in  one  line.  Underneath  that  line,  and  in  one  line  parallel 
with  it,  were  these  written  words:  "Permitted  to  carry  Grain  andhesTy 
cargoes,  oyer  tonnage  on  coastwise  voyages,  and  to  use  Gulf  Ports  not  wsfit 
of  New  Orleans."  The  yessel  was  wrecked  by  running  on  shore  at  a  place 
west  of  New  Orleans,  while  on  a  voyage  from  Maine  to  a  port  in  the  Gulf  of 
Mexico  west  of  New  Orleans:  Hdd, 

(1.)  That  the  use  of  Gulf  ports  in  the  United  States  not  west  of  New  Orleans  wis 

•      not  forbidden  by  the  printed  clauses,  and  the  use  of  them  was  not  allowed  by 

the  written  words, "  the  Coasting  Trade,  on  the  United  States  Atlantic  Ooaet; ' 

(2.)  That  the  policy  permitted  the  employment  of  the  yessel  in  the  ooastiiig 
trade  on  the  United  States  Atlantic  Coast  proper,  excluding  the  Gq](  but 
with  the  added  permission,  that  she  might  use  ports  in  the  Gulf  not  west  of 


JANUARY,   1882.  193 


Tbe  New  Hayen  Steam  Mill  Company  v.  The  Seeority  Inanrance  Company. 

New  Orleans,  and  might  enter  the  Gnlf  for  the  purpose  of  proceeding  to  snch 
ports,  with  a  view  to  use  them ; 
(8.)  That  the  loss  was  not  covered  by  the  policy. 

(Before  Blatcotobd,  J.,  Connecticnt^  January  6th,  1882.) 

Blatohfosd,  J.    This  is  a  libel  in  Admiralty,  filed  in  the 
District  Coort,  to  recover  $3,000,  the  sum  insured  by  a  valued 
marine  policy  of  insurance  issued  by  the  respondent  to  the 
libellant,  insuring  the  schooner  Tannhanser,  for  one  year 
from  January  28th,  1880.    The  policy  is  a  printed  form,  filled 
up  with  writing  and  containing  additional  written  clauses. 
It  contains  the  following  clauses  wholly  in  print :  ^'  Warranted 
by  the  assured  not  to  use  ports  on  the  Continent  of  Europe 
north  of  Hamburg,  nor  the  Mediterranean  east  of  the  Ionian 
Islands,  during  the  period  insured ;  nor  ports  on  the  Conti- 
nent of  Europe  north  of  Antwerp,  between  1st  November 
and  1st  March;  nor  ports  in  the  British  Korth  American 
Provinces,  except  between  the  15th  day  of  May  and  15th  day 
of  August ;  also  warranted  not  to  use  the  West  India  Islands 
during  the  months  of  August  and  September ;  also  warranted 
not  to  use  ports  and  places  in  Texas,  except  Galveston,  nor 
foreign  ports  and  places  in  the  Gulf  of  Mexico,  nor  places  on 
or  over  Ocracoke  Bar;   nor  any  of  the  West  India  Salt 
Islands ;  nor  ports  or  places  on  the  West  Coast  of  America 
north  of  Benicia,  nor  to  use  the  Min  Kiver,  nor  Torres 
Straits,  during  the  period  insured."    ^'  Also  warranted  not  to 
load  more  than  her  registered  tonnage  with  lead,  marble,  coal, 
slate,  copper  ore,  salt,  stone,  bricks,  grain  or  iron,  either  or 
aQ,  on  any  one  passage."    On  the  margin  of  the  face  of  the 
policy,  written  at  a  right  angle  to  the  printed  lines,  are  these 
words:   "To  be  employed  in  the  Coasting  Trade,  on  the 
United  States  Atlantic  Coast,"  in  one  line.    Underneath  that 
hne,  and  in  one  line  parallel  with  it,  are  these  written  words : 
"  Permitted  to  carry  Grain  and  heavy  cargoes,  over  tonnage 
on  coastwise  voyages,  and  to  use  Gulf  Ports  not  west  of  New 
Orleans."    The  libel  claims  for  a  total  loss  of  the  vessel  by 
the  perils  of  the  seas  while  on  a  coastwise  voyage  within  the 
Vol.  XX.— -18 


194  CONNECTICUT, 


The  New  Haven  Steam  Mill  Company  «.  The  Secnritj  Insorance  Company. 

policy.  The  answer  denies  that  the  voyage  was  within  the 
policy,  and  avers  that  at  the  time  of  the  loss  the  vessel  was 
not  on  a  voyage  within  the  terms  of  the  policy,  bat  was  by 
the  voluntary  act  of  her  master  and  owners  on  a  voyage  to  a 
port  in  the  Gulf  of  Mexico  west  of  New  Orleans,  to  wit,  the 
port  of  Morgan  City,  State  of  Louisiana,  and  not  upon  any 
voyage  protected  by  the  terms  of  the  policy,  and  at  the  time 
of  her  destruction  was  upon  that  part  of  her  voyage  to  Mor- 
gan City  which  was  west  of  the  port  of  New  Orleans,  and  so 
known  to  her  master,  and  she  stranded  on  the  shore  of  the 
Gulf  of  Mexico,  west  of  the  port  of  New  Orleans,  because 
her  master  mistook,  in  taking  his  course  to  the  port  of  Mor- 
gan City,  the  light  on  Timbalier  Island  for  the  Ship  Shoal 
Light,  both  of  which  lights  were  west  of  the  port  of  New 
Orleans.  The  proof  in  the  case  consists  entirely  of  the  follow- 
ing written  stipulation,  entitled  in  the  suit,  and  signed  by  the 
proctors  for  the  respective  parties,  while  the  suit  was  pend- 
ing in  the  District  Court,  and  of  the  documents  referred  to  in 
the  stipulation:  ^'We  hereby  mutually  stipulate  and  agree 
that  the  following  are  the  facts  applicable  to  the  issues  pre- 
sented by  the  pleadings  in  the  above  entitled  cause,  and  con- 
sent that  this  stipulation  and  the  statement  of  facts  forming 
part  thereof  shall  be  entered  and  filed  as  the  finding  of  the 
Court  as  .to  the  facts  in  said  caase.  On  the  fourth  of  Feb- 
ruary, A.  D.  1880,  the  Security  Insurance  Company,  acting 
within  the  scope  of  its  corporate  capacity,  executed  and  de- 
livered to  the  New  Haven  Steam  Saw  Mill  Company,  the  val- 
ued policy  of  insurance  for  $3,000  upon  said  Saw  Mill  Com- 
pany's interest  in  the  schooner  Tannhauser,  a  copy  of  which 
policy  is  annexed  to  the  libel  in  said  cause,  and  marked  Ex- 
hibit A,  and  said  policy  is  itself  referred  to  and  made  part  of 
this  agreement  and  finding,  a  verbatim  copy  of  which  is  ap 
pended  and  marked  A.  On  the  eleventh  of  June,  ISSO,  the 
said  schooner  Tannhauser,  while  on  a  voyage  from  the  port  of 
Bockland,  in  the  State  of  Maine,  to  Morgan  City,  known  on 
the  United  States'  coast  survey  map  of  1870  as  Brashear,  in 
the  State  of  Louisiana,  went  ashore,  and  was  wrecked,  on  a 


JANUARY,   1882.  195 


Tbe  New  HaTen  Steam  Mill  Company  v.  The  Seonrity  InaoraDce  Company. 

reef  in  the  Gulf  of  Mexico,  west  of  the  port  of  New  Orleans, 
aod  was  totally  destroyed  by  the  perils  of  the  seas.  That  the 
statement  set  forth  in  the  proofs  of  loss  filed  with  said  Insur- 
ance Company,  and  being  the  marine  protest  of  the  master 
and  crew  of  said  vessel,  are  true  so  far  as  any  issue  in  this 
cause  is  concerned,  and  said  protest  and  the  statement  there- 
in contained  are  hereby  made  part  and  parcel  of  this  stipula- 
tion and  finding,  and  annexed  hereto,  marked  Exhibit  B.  It 
is  hereby  mutually  agreed  that  maps  or  charts  may  be  referred 
to  for  the  purpose  of  defining  and  determining  the  location 
of  the  spot  where  said  vessel  was  lost,  and  of  any  place  or 
locality  referred  to  in  said  policy  or  proof  of  loss.  That 
proper  proofs  of  loss  were  filed  with  the  Insurance  Company 
in  due  season,  and  that  the  libellant  is  entitled  to  recover  upon 
said  policy  the  amount  insured  thereby,  (less  the  note  of  $301, 
given  for  the  premium  on  said  policy,)  with  interest  from  the 
day  of  unless  the  law  is  so  that  upon  the  facts  set 

forth  in  this  finding,  said  libellant  is  not  entitled  to  recover, 
in  which  case  judgment  is  to  be  entered  for  said  respondent." 
The  protest  states  that  the  vessel  left  Eockland  on  May  17th, 
with  a  cargo  of  ice,  bound  for  the  port  of  Morgan  City,  Louis- 
iana; that,  for  two  days  before  June  11th,  they  had  not  been 
able  to  take  an  observation,  on  account  of  cloudy  and  hazy 
weather;  that,  during  the  evening  of  the  11th,  they  sighted  a 
light  which  they  took  for  Ship  Shoal  Light,  and  kept  on  their 
coarse  accordingly,  but  at  10.30  o'clock  p.m.  the  vessel  suddenly 
took  the  ground ;  that  they  immediately  let  go  an  anchor,  but 
the  vessel  soon  began  to  leak,  and  the  ice  to  melt  from  contact 
with  the  Gnlf  water,  and  in  a  short  time  she  had  fiUed  and 
rolled  over,  so  that  pumping  was  useless ;  that  the  next  day 
they  discovered  that  the  light  they  saw  the  evening  before 
was  not  Ship  Shoal  Light  but  the  light  on  Timbalier  Island, 
and  that  the  vessel  was  ashore  on  a  reef  about  two  miles  from 
Tine  Island,  and  about  fifteen  miles  from  Timbalier  Island ; 
and  that  the  vessel  is  a  total  loss. 

The  District  Court  dismissed  the  libel.    It  appears  from 
the  decision  of  that  Court,  that  the  libellant  there  contended 


196  CONNECTICUT, 


The  New  Haren  Steam  Mill  Company  v.  The  Security  Insaranee  Company. 

that  '^  the  coasting  trade  on  the  United  States'  Atlantic  Coast'' 
meant  t^ade  from  Maine  to  Texas ;  that  the  written  permission 
to  nse  ports  in  the  Gulf  of  Mexico  not  west  of  Kew  Orleans^ 
meant,  in  view  of  the  printed  restriction  against  nsing  foreign 
ports  in  that  Gnlf,  a  permission  to  nse  foreign  ports  in  that 
Gulf  not  west  of  New  Orleans ;  that,  if  the  vessel  was  pro- 
hibited from  using  any  Gulf  ports  west  of  New  Orleans,  she 
was  not  using  any  such  port  at  the  time  of  the  disaster ;  and 
that  an  intent  to  use  a  prohibited  port  did  not  avoid  the  policy. 
The  Court  held  that  the  meaning  of  the  two  written  clauses 
in  the  policy  was  that  the  vessel  was  to  be  employed  on  the 
United  States'  Atlantic  Coast,  which  was  the  coast  of  the  At- 
lantic Ocean  and  not  the  coast  of  the  Gulf  of  Mexico,  but 
that,  if  necessity  or  occasion  required,  she  was  to  be  permitted 
to  go  into  the  Gulf  of  Mexico  and  use  the  ports  not  west  of 
New  Orleans,  but  not  that  her  coasting  trade  was  to  be  there- 
by extended  throagh  the  Gulf;  and  that,  when  she  was  en- 
gaged in  transporting  a  cargo  from  Maine  to  Morgan  City,  she 
was  not  in  the  Atlantic  coasting  trade  but  upon  a  voyage  out- 
side of  the  terms  of  the  contract.  The  view  of  the  Court  was, 
that  if  the  coasting  trade  was  to  be  through  the  Gulf,  the  per- 
mission to  use  ports  in  the  Gulf  was  unnecessary ;  that  if  the 
coasting  trade  upon  the  United  States'  Atlantic  Coast  neces- 
sarily implied  voyages  through  the  Gulf,  a  permit  to  use  any 
Gulf  ports  not  west  of  New  Orleans  was  unnecessary,  as  those 
United  States'  Gulf  ports  had  not  been  excluded  in  the  printed 
part  of  the  policy ;  that  the  fact  that  the  vessel  was  to  be  a 
coaster  on  the  United  States'  Atlantic  Coast,  coupled  with  a 
permit  to  use  certain  ports  in  the  Gulf,  indicated  that  without 
the  permit  the  vessel  could  not  go  into  the  Gulf ;  and  that 
the  permit  apparently  enlarged  the  previous  limitation,  espe- 
cially as  domestic  ports  not  west  of  New  Orleans  had  never 
been  excluded. 

The  case  for  the  libellant  is  argued  in  this  Court  upon 
grounds  apparently  not  urged  in  the  Court  below.  There  are 
in  the  printed  clauses  of  the  policy  many  warranties,  above 
cited,  by  the  assured,  not  to  use  (1)  certain  ports  and  places ; 


JANUARY,   1882.  197 


The  New  Hayen  Steam  Mill  Company  «.  The  Security  InsiiraDce  Company. 


(2)  certain  waters.  There  are  also  printed  warranties,  above 
cited,  by  it,  against  loading  more  than  the  registered  tonnage 
of  the  vessel  with  heavy  cargoes,  inclading  grain.  The 
printed  form  is  a  blank  for  a  purely  time  policy,  under  which 
the  vessel  would  have  a  right  to  go  anywhere  except  as  pro- 
hibited by  the  warranties  not  to  use  the  ports,  places  and 
waters  specified  as  forbidden.  Then,  on  the  margin,  are  the 
two  written  lines,  which  control.  The  first  line  relates  to 
voyages.  It  purports  to  specify  voyages.  It  is  enabling  and 
permissive.  It  declares  that  the  vessel  '^  is  to  be  employed  in 
the  coasting  trade  on  the  United  States'  Atlantic  Coast."  It 
is  an  affirmative  statement  of  voyages.  It  means  that  the  ves- 
sel is  to  be  employed  in  those  voyages  only.  Both  parties  so 
declare.  This,  in  connection  with  the  time  clause,  one  year, 
makes  the  policy  a  mixed  policy,  specifying  both  time  and 
voyages. .  Then  follows  the  second  written  line.  It  is  a  per- 
mission. It  begins  with  the  word  ''Permitted."  That  word 
qualifies  the  entire  line.  Katurally,  we  should  expect  to  find 
in  such  permission  something  permitted  which  was  not  per- 
mitted by  the  preceding  printed  and  written  clauses,  whether 
something  merely  not  before  permitted  or  something  before 
actually  prohibited*  Accordingly,  the  first  thing  permitted  is 
a  permission  ''  to  carry  grain  and  heavy  cargoes,  over  tonnage  on 
coastwise  voyages."  This  had  before  been  prohibited  in  the 
clause  above  cited  from  the  printed  clauses.  Then  follows,  in 
the  same  sentence,  under  the  word  ''  Permitted  "  and  after  a 
comma,  the  words  ''  and  to  use  Gulf  Ports  not  west  of  New 
Orleans."  The  word  ''  and  "  is  a  copulative.  It  makes  of  the 
second  branch  of  the  sentence  a  permission,  and  that  branch  is 
to  be  read  as  if  the  "  permitted  "  were  inserted  between  "  and  " 
and  ''to."  The  use  of  Gulf  ports  in  the  United  States  not 
west  of  New  Orleans  had  not  been  prohibited  by  the  printed 
clauses.  But  then  came  in  the  first  written  line  declaring 
affirmatively  what  the  voyages  shall  be.  As  the  use  of  Gulf  ports 
in  the  United  States  not  west  of  New  Orleans  was  not  forbid- 
den by  the  printed  clauses,  the  special  permission,  in  the  sec- 
ond written  line,  to  use  them,  was  wholly  useless,  if  the  use 


198  CONKECnCDT, 


The  New  Hayen  Stewn  Mtll  Oompeiiy  v.  The  Security  InsnraDce  Company. 

of  tbem  was  allowed  bj  the  words  in  the  first  written  line, 
^^  the  coasting  trade  on  the  United  States'  Atlantic  C!oast.'^ 
These  last  words  mnst  be  constmed  as  not  including  voTages 
to  Gulf  ports  not  west  of  New  Orleans,  in  order  to  make  the 
two  sentences  symmetrical. 

For  the  purpose  of  supporting  the  view  that  '^  the  coast- 
ing trade  on  the  United  States'  Atlantic  Coast"  includes 
coasting  trade  in  the  Gulf  up  to  the  line  of  Mexico,  and  that 
the  vessel  was  on  a  voyage  in  such  trade,  the  advocate  for  the 
libellant  contends,  in  this  Ck>urt,  that  the  words  '^  and  to  use 
Gulf  Ports  not  west  of  New  Orleans  "  are  to  be  read  as  if 
they  were  '*  and  not  to  use  Gulf  Ports  west  of  New  Orleans,*' 
so  as  to  make  of  it  a  warranty  not  to  use  ports  west  of  JSew 
Orleans,  and  a  warranty  not  broken,  because  no  such  port  was 
used,  while  the  voyage  was  a  lawful  one  because  in  a  per- 
mitted coasting  trade.  This  is  ingenious  but  not  sound. 
"  Permitted  not  to  use  "  is  not  a  form  of  expression  that  any 
person  of  intelligence  would  use.  There  are  two  permissions 
in  the  sentence.  One  is  to  carry  something ;  the  other  is  to  use 
something.  The  right  to  carry  the  thing  so  permitted  was 
prohibited  but  for  the  permission.  The  right  to  use  the  thing 
so  permitted  was  not  within  .the  coasting  trade  allowed, 
but  for  the  permission.  Both  of  the  written  lines,  in  regard 
to  voyages,  refer  to  the  subject-matter  of  the  insurance.  If 
the  vessel,  when  lost,  was  not  employed  in  the  coasting  trade 
on  the  United  States'  Atlantic  Coast,  and  was  not  availing 
herself  of  the  permission  to  use  a  Gulf  port  not  west  of  New 
Orleans,  the  risk  was  not  covered  by  the  policy. 

The  voyage  clauses  must  be  held  to  mean  that  the  vessel 
was  to  be  employed  in  the  coasting  trade  on  the  United  States' 
Atlantic  Coast  proper,  excluding  the  Gulf,  but  with  the  added 
permission,  that  she  might  use  ports  in  the  Gulf  not  west  of 
New  Orleans,  and  might  enter  the  Gulf  for  the  purpose  of 
proceeding  to  such  ports,  with  a  view  to  use  them.  A  voy- 
age in  the  Gulf  west  of  New  Orleans,  with  a  view  to  pro- 
ceed to  and  to  use  a  United  States'  Gulf  port  west  of  New 
Orleans,  and  a  loss  west  of  New  Orleans,  on  such  voyage. 


JANUARY,  1882.  199 


The  New  Hayen  Steam  Mill  Company  v.  The  Security  Insarance  Company. 


was  not  a  risk  within  the  permitted  voyages  of  the  pol- 
icy. There  was  no  way,  under  the  policy,  by  which  the  vessel 
could  enter  the  Gulf,  consistently  with  the  first  written  line, 
except  by  the  permission  in  the  second  written  line,  and  that 
permiasion  gave  her  no  right  to  be  west  of  New  Orleans  on  a 
voyage  to  Morgan  City.  There  is  a  clear  intention  mani- 
fested and  expressed  by  the  words  of  the  policy,  of  not  insur- 
ing against  the  perils  of  a  coasting  trade  on  the  Gulf  Coast 
west  of  New  Orleans,  or  against  the  perils  of  trying  to  enter 
a  United  States'  Gulf  port  west  of  New  Orleans. 

The  case  of  Snow  v.  Columbian  Ins.  Co,j  (48  iT.  Y.j  624,) 
was  the  case  of  a  purely  time  policy,  not  prescribing  any  voy- 
ages or  trade,  and  having  warranties  against  using  certain 
ports,  places  and  waters.  One  of  them  was  a  warranty  not  to 
use  ports  in  the  British  North  American  Provinces  except  be- 
tween certain  days.  The  vessel,  at  a  time  not  between  those 
days,  sailed  for  a  port  in  a  British  North  American  Province 
and  was  lost  on  the  coast  of  that  Province  about  50  miles  from 
that  port,  at  a  time  not  between  those  days.  It  was  held  that 
the  insurer  was  liable,  as  there  had  been  no  use  of  the  forbid- 
den port.  The  decision  was  put  on  the  ground  that  the  ves- 
sel had  a  right  to  be  in  the  waters  where  she  was.  In  the 
present  case,  on  a  proper  construction  of  the  policy,  the  ves- 
sel was  sailing  in  forbidden  waters. 

The  case  of  Palmer  v.  Warren  Ins.  Co,y  (1  Story^  360,) 
was  the  case  of  an  exception  or  exclusion  of  what  would  other- 
wise have  been  included  in  the  general  terms  of  the  policy. 
It  differed  from  the  present  case.  Moreover,  the  policy  was 
purely  a  time  policy,  with  no  designation  of  prescribed  or  per- 
mitted voyages  or  trade. 

The  libel  is  dismissed,  with  the  costs  of  the  respondent  in 
the  District  Court,  taxed  at  $20,  and  costs  to  the  respondent 
in  this  Court. 

H.  Stoddard^  L.  H,  Bristol  and  C.  H,  IngersoUy  for  the 
libellant. 

J,  W.  AUmffy  for  the  respondent. 


200  VERMONT, 


Dwight  V.  The  Ceotral  YermoDt  Bailroad  Company. 


Jonathan  Dwight  and  othebs 

The  Central  Yebmont  Railroad  Company  and  otheb&. 

In  Equitt. 

A  plea  to  a  bill  in  eqnity,  that  there  are  divers  and  sundry  persons  whose 
names  are  known  to  and  ascertainable  by  the  plaintifis  and  not  by  the  defend- 
ant, not  setting  forth  any  names,  and  not  accompanied  by  an  answer,  bat  ac- 
companied by  a  demurrer  for  want  of  parties,  is  not  a  good  plea* 

Stockholders  in  a  railroad  company  filed  a  bill  against  the  directors  of  that 
company,  alleging  a  refusal  of  the  directors  to  take  legal  measures  to  protect 
their  rights,  and  against  the  party  in  possession  of  the  road  of  that  company, 
and  the  lessee  of  it,  and  persons  claiming  liens  on  it,  to  recoTer  poasesnon  of 
the  road  for  said  company.  To  this  bill  a  plea  was  filed  alleging  that  the 
company  had  brought  a  like  suit  in  a  Court  of  the  State  and  had  disoontiniied 
it,  through  its  directors,  by  preconcert  with  the  plaintiffif,  that  this  smt  might 
be  brought  to  evade  the  proper  Jurisdiction  of  the  State  Court,  and  denying 
any  breach  of  trust  by  the  directors :  Beld,  that  the  plea  was  bad. 

Another  plea  was  filed  to  the  bill,  alleging  tbat  the  plaintiils  did  not,  before 
bringing  the  biU,  in  good  faith  request  the  directors  to  take  legal  measorss 
to  protect  their  rights,  but  by  arrangement  between  the  plaintiffii  and  the  di- 
rectors a  simulated  request  aod  refusal  were  made,  and  this  suit  was  brought 
by  the  company  in  the  name  of  the  plaintlfiiB,  and  denying  that  there  had 
been  any  such  refusal  by  the  directors  as  amounted  to  a  breach  of  trust : 
Held,  that  the  plea  was  bad. 

Another  plea  was  filed  to  the  bill,  alleging  that  security  holders  of  the  same 
class  as  those  made  defendants  had  brought  proceedings  in  behalf  of  them- 
selves and  all  others  like  security  holders,  against  the  company,  in  a  Court  of 
the  State,  to  enforce  their  security  on  the  road,  in  which  a  decision  favorable 
to  the  validity  of  their  lien  hnd  been  made,  and  which  were  pending,  and  set- 
ting forth  the  proceedings:  Held,  that  the  plea  was  bad. 

Another  plea  was  filed  to  the  bill,  by  the  party  in  possession  of  the  road,  alleg- 
ing that  it  was  in  possession  as  a  receiver  of  a  Court  of  the  State  and  setting 
forth  the  proceeding^  on  which  its  possession  took  place :  Sdd,  that  the  plea 
must  be  overruled,  and  the  case  proceed  to  proofs. 

(Before  Whiblvb,  J.,  Yermont,  January  14th,  1882.) 

Wheeler,  J.     The  orators,  as  stockholders  to  a  large 
amount  in  the  Vermont  and  Canada  Bailroad  Company,  and 


JANUARY,  1888.  201 


Dwigbt  V.  The  Central  Vermont  Rftilroad  Company. 

citizenB  of  New  York,  Kew  Hampshire,  and  Bhode  Island, 
bring  this  bill  in  behalf  of  themselves  and  all  other  stock- 
holders having  like  interests  with  them,  not  citizens  of  Yer- 
mont,  Massachusetts,  or  Maine,  against  the  directors  of  that 
corporation,  citizens  of  Massachusetts  and  Pennsylvania, 
ailing  that  they  refuse  to  take  legal  measures  to  protect 
the  rights  of  the  orators,  and  against  the  Central  Yermont 
KaUroad  Company  in  possession,  and  the  Yermont  Central 
Bailroad  Company  lessee  of,  and  the  other  defendants  security 
holders  claiming  liens  upon,  the  Yermont  and  Canada  Bail- 
road,  all  citizens  of  Yermont,  Massachusetts,  and  Maine,  to 
recover  the  possession  of  that  road  for  the  Yermont  and  Can- 
ada Bailroad  Company. 

The  Central  Yermont  Bailroad  Company  pleads  that  it  is 
in  possession  as  a  receiver  of  the  Court  of  Chancery  of 
Franklin  County  and  of  the  State  of  Yermont,  and  the  pro- 
ceedings upon  which  its  possession  took  place  are  set  forth. 

John  Gregory  Smith  pleads  that  security  holders  of  the 
same  class  as  those  made  defendants  have  brought  proceed- 
ings in  behalf  of  themselves  and  all  other  like  security  hold- 
ers, against  the  Yermont  and  Canada  Bailroad  Company,  in 
the  same  Court  of  Chancery,  to  establish  and  enfoi*ce  their 
security  upon  this  road,  in  which  a  decision  favorable  to  the 
validity  of  their  lien  has  been  made  by  the  Supreme  Court 
of  the  State,  and  which  are  now  pending  in  the  Court  of 
Chancery,  to  ascertain  the  amounts  of,  and  facts  concerning, 
the  different  classes  of  securities ;  and  these  proceedings  are 
set  forth. 

Worthington  C.  Smith  pleads  that  the  Yermont  and 
Canada  Bailroad  Company  brought  a  suit  like  this,  and  for 
the  same  relief,  in  the  same  Court  of  Chancery,  and,  through 
its  directors,  by  pre-concert  with  the  orators,  discontinued  the 
same,  that  this  suit  might  be  brought  to  evade  the  proper 
jurisdiction  of  the  State  Court,  and  confer  a  seeming  but  un- 
real jurisdiction  upon  this  Court,  in  pursuance  of  which  this 
Boit  was  brought ;  and  denying  that  the  directors  have  vio- 


202  VERMONT, 


Dwight  V.  The  Central  Vermont  Railroftd  Company. 

lated  their  duty,  committed  any  breach  of  trust,  or  done 
otherwise  than  as  requested  by  the  orators. 

Jed  P.  Clark  pleads  that  the  orators  did  not,  before  bring- 
ing this  bill,  in  good  faith,  request  the  directors  to  take  legal 
measures  to  protect  their  rights,  but  that,  by  the  planning, 
suggestion  and  request  of  the  directors,  and  concert  and 
arrangement  made  between  them  and  the  orators,  for  the 
sake  of  escaping  from  the  jurisdiction  of  the  State  Court,  to 
which  the  jurisdiction  of  right  belonged,  and  to  confer  upon 
this  Court  a  seeming  jurisdiction,  not  real  or  of  right,  a  simu- 
lated and  unreal  pretence  of  request  and  refusal  were  made, 
and  that  this  suit  is  prosecuted  by  the  Vermont  and  Canada 
Hail  road  Company  in  the  name  of  the  orators,  for  the  common 
benefit  of  them  all,  and  denying  that  there  has  been  any  such 
refusal  by  the  directors  as  amounts,  in  legal  effect,  to  a  breach 
of  trust. 

The  Vermont  Central  Railroad  Company  sets  out,  by 
plea,  that  there  were,  when  this  bill  was  brought,  and  are 
now,  divers  and  sundry  stockholders  of  the  Vermont  and 
Canada  Railroad  Company,  citizens  of  Vermont,  Massachn- 
setts,  and  Maine,  whose  names  are  known  to  and  ascertainable 
by  the  orators  and  not  by  the  defendant,  and  demurs  to  the 
bill  for  want  of  the  necessary  parties. 

None  of  these  pleas  is  supported  by  answer.  All  of  them 
and  the  demurrer  have  been  argued.  They  may  properly  be 
considered  in  the  inverse  order  of  their  statement. 

The  last  one,  that  of  the  Vermont  Central  Railroad  Com- 
pany, is  not  in  the  proper  form  and  sufficient,  even  if  the  fact 
that  there  were  stockholders  citizens  of  Vermont,  Massachu- 
setts, or  Maine,  and  not  invited  to  take  part  in  the  prosecntion 
of  the  suit,  would  defeat  it.  In  such  cases  the  defendant 
should,  at  law,  give  the  plaintiff  a  better  writ,  by  setting  out 
the  name  and  identifying  the  party  whose  existence  is  alleged 
to  create  a  fatal  non-joinder,  so  that  the  plaintiff  may  traverse 
the  allegation  and  form  a  definite  issue  to  be  tried,  or  diBCOD- 
tinue  and  bring  a  new  suit,  joining  the  proper  parties,  upon 
the  information  given.     The  rules  of  pleading  are  the  same 


JANTJARY,   1882.  203 


Dwight  V.  The  Central  Vermont  Railroad  Company. 

in  equity  as  at  law,  unless  the  reasons  of  them  are  varied  hj 
the  different  methods  of  procedure..  There  is  no  reason, 
growing  out  of  the  proceedings  in  equity,  for  varying  this 
rale.  The  orators  have  the  right  to  have  the  names  of  the 
stockholders,  if  there  are  any,  in  those  States,  whose  exist- 
ence would  defeat  the  suit,  set  forth,  so  that  they  could 
traverse  the  existence  of  the  persons  or  the  fact  of  their 
being  stockholders.  They  could  not  do  that  upon  these  alle- 
gations. There  is  no  person  named  whom  they  may  say  is 
not  a  stockholder,  or  about  whom  they  may  say  there  is  no 
such  person.  A  traverse  of  the  plea  in  its  terms  would  put 
in  issue  what  the  orators  know  that  the  defendants  do  not 
know  about  the  stockholders  in  those  States.  It  would  be 
quite  singular  if  a  suit  should  be  abated,  at  the  instance  of 
defendants,  on  account  of  the  supposed  existence  of  persons 
whom  they  cannot  name  or  identify.  The  want  of  such  per- 
Bons  as  parties  is  not  likely  to  harm  them.  (Hotel  Company 
V.  Wade,  9T  U.  S.y  13.) 

The  pleas  of  Clark  and  Worthington  C.  Smith  are  to  the 
flame  effect,  and  so  nearly  alike  that  they  may  well  be  con- 
sidered together.  They  have  been  spoken  of  in  argument  as 
pleas  to  the  jurisdiction  of  the  Court,  or  to  the  ability  of  the 
orators  to  bring  suit,  or  as  pleas  in  abatement  otherwise ;  but, 
correctly  speaking,  they  are  not  either.  The  orators  and  de- 
fendants are  alleged  in  the  bill  to  be  citizens  of  different 
States.  This  fact  gives  the  Court  jurisdiction  of  the  contro- 
versy between  them,  and  enables  the  orators  to  bring  the  suit, 
and  to  maintain  it  if  they  can  establish  their  case.  The  re- 
fusal of  the  directors  is  a  pai*t  of  their  ease,  which  they  must 
establish,  and  not  a  fact  on  which  the  jurisdiction  of  the 
Court,  or  their  ability  to  sue,  at  all  depends.  If  they  can  es- 
tablish the  fact  of  refusal,  together  with  the  other  facts  nec- 
essary to  make  out  a  case  for  the  relief  asked,  then  they  have 
a  case  on  which  they  can  rest ;  otherwise,  not.  They  have 
the  right  to  a  full  answer  and  discovery  from  the  defendants 
as  to  their  whole  case,  this  part  as  well  as  the  rest,  unless 
there  is  some  outside  fact  which  would  show  that  they  have 


204  VERMONT, 


Dwight  V.  The  Central  Yermont  Railroad  Compaoy. 


no  right  to  maintaiii  the  suit  at  all ;  or  some  single  fact  on 
which  the  whole  case  depends'is  objected  to  by  plea,  and  full 
answer  and  diBCovery  is  made  to  that  part  of  the  case.    Pore 
and  proper  pleas  in  equity  were  such  as  set  up  some  fact  out- 
side of  the  bill,  which  would  show  that  the  b^  should  not  be 
answered  at  alL      These  pleas  required  no  answer  to  sup- 
port them,  for  they  would  not  be  included  in  that  which 
the  party  was  called  upon  to  answer.      Anomalous  pleas, 
denying  a  single  part  of  the  case  made  by  the  bill,  on  which 
the  whole  case  depended,  came  to  be  allowed,  for  conveni- 
ence, to  save  trying  the  whole  case  when  the  failure  of  that 
part  would  be  fatal ;  and  for  safety  against  enforced  discovery 
in  a  suit  by  those  not  in  any  manner  entitled  to  the  discovery; 
but,  as  the  ground  of  the  plea  would  be  included  in  what  the 
defendant  was  called  upon  to  answer,  he  could  not  avoid  the 
right  to  have  at  least  that  part  answered,  by  merely  pleading 
to  it     He  must  answer  that,  although  the  plea  raising  the 
objection  and  the  answer  supporting  it  might  show  that  no 
answer  to  the  rest  of  the  case  ought  to  be  required.    If  this 
plea  should  be  allowed,  the  orators  would  be  deprived  of  the 
discovery  on  oath  to  which  they  are  entitled,  as  to  this  part  of 
the  case,  as  evidence  upon  the  traverse  of  the  plea,  if  they 
should  traverse  it,  as  they  would  have  a  right  to.    This  would 
be  contrary  to  sound  principles  and  to  authority.    {Story^s  Eq. 
PZ.,  §  672,  et  seq.)    These  views  are  not  contrary  to  the  deci- 
sion in  Memphis  v.  Deatiy  (8  WaU.y  64,)  cited  and  much  relied 
upon  in  behalf  of  the  defendants.   There  there  was  an  answer 
by  the  party  pleading,  as  well  as  the  plea,  denying  refusal  of 
the  directors  to  prosecute,  and  the  cause  appears  to  have  been 
decided,  in  both  Courts,  in  chief,  and  not  upon  the  plea  alone. 
The  plea  of  John  Gregory  Smith  depends  solely  upon  the 
eflfect  of  the  pendency  of  the  suit  in  the  State  Court  of  Chan- 
cery, in  favor  of  himself  and  other  security  holders,  of  which 
James  K.  Langdon  is  the  foremost  plaintiff  in  the  title  to  the 
suit,  against  the  Yermont  and  Canada  Kailro^d  Company, 
through  whose  rights  the  orators  here  make  claim.    Doubts 
have  been  entertained  by  this  Court  and  some  others  as  to 


JANUARY,   1882.  205 


Dwigfat  V.  The  Central  Vermont  Railroad  Company. 

whether  the  pendency  of  a  snit  in  a  State  or  Federal  Court 
in  the  same  District  might  not  be  snccessf  ully  pleaded  to  the 
farther  prosecution  of  a  like  snit  in  the  other  Court,  and  this 
Court  inclined  to  the  opinion  that  it  could  be.  (JHercantile 
Trust  Company  v.  Lamoille  Valley  Railroad  Company^  16 
Blaichf,  C.  a  B.y  324 ;  Andrews  v.  Sniith,  19  Id.,  100.) 
But  it  now  seems  to  be  well  settled  that  it  cannot  be.  {Oor- 
don  V.  CfUfoU,  99  U.  S.,  168 ;  iMham,  v.  Ghafee,  7  Fed. 
Bep.y  520.)  If  this  were  not  so,  it  has  always  been  held, 
that,  in  order  to  have  the  mere  pendency  of  one  suit  defeat 
another,  the  suits  must  be  between  the  same  parties,  or  their 
reptesentatiyes,  upon  the  same  facts  and  for  the  same  relief. 
( Watson  v.  Jones^  13  Wall.,  679.)  A  very  slight  examination 
and  comparison  of  the  two  cases  will  show  that  they  are  not 
brought  upon  the  same  facts  nor  for  the  same  relief.  The 
plea  is  pleaded  to  the  whole  bill.  According  to  both  bills 
the  Central  Vermont  Bailroad  Company  is  in  possession  of 
the  road.  In  that  case  it  is  an  orator,  as  a  security  holder, 
seeking  to  hold  the  road  as  security  for  its  pay.  This  partic- 
ular defendant  is  a  defendant  there,  admitting  the  right  of 
the  Central  Yermont  Railroad  Company.  That  is  essentially 
a  bill  of  foreclosure  by  security  holders  in  possession.  The 
decree  would  ordinarily  be  that  those  interested  must  pay  or 
be  foredoeed  of  all  right  to  redeem.  The  decree  could  go  no 
further  than  to  cut  off  their  right  if  they  should  not  redeem. 
If  they  should  redeem,  the  possession  would  remain  to  be 
maintained  by  any  other  right  which  the  possessor  might 
have  or  claim  to  have,  so  far  as  it  would  prevail.  Another 
Buit  would  be  necessary  to  determine  the  rights  of  the  Ver- 
mont and  Canada  Railroad  Company  and  its  stockholders,  as 
to  everything  but  the  foreclosure.  In  this  suit  the  right  to 
the  road  is  attempted  to  be  maintained  outside  of  the  right 
to  redeem.  If  this  plea  should  prevail  there  would  be  no  suit 
left  in  which  that  right  could  be  tried. 

The  plea  of  the  Central  Vermont  Railroad  Company 
raises  the  most  important  questions  of  any  of  these  pleas,  and 
has  received  such  careful  consideration  as  its  importance  has 


206  VERMONT, 


Dwight  V.  The  Central  YermoDt  Railroad  CompaDy. 

seemed  to  demand.  The  bill  alleges  that  this  defendant  is  in 
possession  of  the  road  without  right  and  against  the  right  of 
the  Yermon't  and  Canada  Railroad  Company  and  of  the 
orators.  This  plea  asserts  that  it  was  placed  in  possession  hj 
the  Court  of  Chancery  of  Franklin  County,  to  run,  operate 
and  manage  the  road  under  the  decrees  and  orders  theretofore 
made,  and  under  the  direction  of  the  Court,  so  long  as  it 
should  continue  to  act  as  such  receiver  and  manager,  and 
denies  that  it  is  in  possession  without  right  and  thatit  ought 
to  be  compelled  to  surrender  its  possession  to  the  Vermont 
and  Canada  Eailroad  Company,  and  prays  judgment  whether 
it  ought  to  answer  further.  The  proceedings  upon  which  it 
was  placed  in  possession  show  that  certain  persons  were  in 
regular  course  made  receivers  of  this  road,  with  other  railroad 
property,  to  operate  the  roads,  and  out  of  the  income  to  pay 
the  rent  to  the  Vermont  and  Canada  Railroad  Company; 
that,  pursuant  to  an  agreement  between  the  parties,  according 
to  its  terms  embodied  in  a  decree,  the  then  receivers  continued 
to  operate  the  roads  according  to  the  provisions  of  the  agree- 
ment and  decree,  by  which  they  were  to  operate  them  and 
apply  the  income  to  the  payment  of  the  rent,  then  to  the  pay- 
ment of  the  first  mortgage  bonds  of  the  Vermont  Central 
Railroad,  then  to  the  second  mortgage  bonds  of  the  Vermont 
Central  Railroad,  and  then  to  pay  it  to  the  Vermont  Central 
Railroad  Company ;  and  that,  upon  the  joint  petition  of  those 
receivers  and  their  saccessors  and  the  Central  Vermont  Bail- 
road  Company,  a  decree  was  made,  by  which  the  Central 
Vermont  Railroad  Company  was  placed  in  possession  in  their 
stead.  The  orators  claim  that  the  prior  possessors  had  lost 
their  right  to  this  road  through  their  non-payment  of  rent, 
and  that  the  transfer  to  the  Central  Vermont  Railroad  Com- 
pany was  merely  a  transfer  by  one  to  the  other,  although 
sanctioned  by  the  Court,  and  that  the  transferee  took  no 
greater  or  different  rights  than  the  transferrers  had.  The 
defendants  claim  that  the  transfer  was  ordered  by  the  Court, 
that  the  rights  of  the  Central  Vermont  Railroad  Company 
under  the  transfer  cannot  be  inquired  into  anywhere  except 


JAITOART,  1882.  207 


Dwight  V.  The  Central  Yermont  Railroad  Company. 

m  that  Court,  and  that  they  are  valid  everywhere  else  against 
all  claimants.  The  right  of  the  orators,  denied  by  the  plea,  is 
the  same  which  they  set  up  and  seek  to  enforce  by  their  bill, 
and  which  they  claim  to  have  tried  and  determined  upon  the 
answer  of  the  defendants,  in  the  usual  course.  As  stated 
before,  the  parties  are  citizens  of  different  States,  and  this  is 
a  suit  in  which  there  is  a  controversy  between  them,  and 
which  those  bringing  it  have  the  right  to  have  determined  in 
this  Court,  unless  there  is  some  unnsnal  reason  for  turning 
them  ont  of  Court.  As  said  by  Mr.  Justice  Campbell,  in 
Hyde  v.  Stone^  (20  How.,  170 :)  "  But  the  courts  of  the  United 
States  are  bound  to  proceed  to  judgment,  and  to  afford  redress 
to  suitors  before  them,  in  every  case  to  which  their  jurisdic- 
tion extends.  They  cannot  abdicate  their  authority  or  duty 
in  any  case  in  favor  of  another  jurisdiction."  This  is  not  a 
mere  matter  of  abatement ;  it  goes  to  the  right,  and  none  the  less 
because  the  right  of  the  defendant  may  rest  upon  an  order  of 
the  Court.  The  order  of  Court,  whatever  its  effect  is,  may  be 
discharged  before  any  decision  is  reached  and,  if  it  should  be, 
the  rights  of  the  parties  otherwise  would  still  remain  to  be 
determined.  If  it  should  not  be,  but  should  remain  in  force, 
whatever  right  it  should  give  to  any  party,  or  whatever  im- 
munity from  interference  it  should  afford,  could  be  maintained 
and  upheld.  If  that  should  be  the  defendant's  title,  and  it 
should  be  found  to  be  good,  it  would  prevail.  There  would 
be  no  conflict  between  Courts,  for  all  rights  acquired  through 
the  State  Court,  and  all  protection  furnished  by  the  author- 
ity of  that  Court,  would  be  respected.  There  is  no  sound 
reason  apparent  why  these  rights  may  not  stand  for  trial  ac- 
cording to  the  usual  course,  the  same  as  rights  acquired  by 
contract,  or  in  any  other  mode.  On  principle,  this  seems  to 
be  the  proper  course.  And  there  is  not  any  case  shown  by 
counsel,  or  which  has  been  seen  by  the  Court,  among  the 
many  wherein  rights  acquired  under  legal  proceedings  have 
come  up  for  adjudication,  in  which  the  decision  has  been 
made  otherwise  than  in  chief.  In  Hagan  v.  Lucas^  (10  Pet.y 
400,)  where  the  title  of  a  sheriff  to  property  seized  by  him 


208  YERMONT, 


Dwigfat  V.  The  Centnl  Yennoni  Railroad  Company. 

and  receipted,  was  upheld  against  a  marshal  of  the  United 
States  who  seized  it  subsequently,  the  trial  was  upon  the 
merits  of  these  respective  rights.  So,  in  Brawn  y.  Clarkiy 
(4  ffow.j  4,)  and  in  PtUli^am  v.  Otbomej  (17  ]Iow.y  471.)  And 
in  Taylor  v.  Carryly  (20  How.^  683,)  where  the  question  was 
as  to  the  right  of  a  State  seizure  as  against  proceedings  in 
Admiralty,  the  trial  was  not  upon  any  plea  denying  the  right 
to  interfere,  but  was  upon  the  title  acquired  through  the  pro- 
ceedings. In  Freema/a  y.  Howe^  (24  Haw.^  ^60,)  the  right  of 
a  mortgagee  to  personal  property  taken  by  the  marshal  on  pro- 
cess against  the  mortgagor  was  tried  on  replevin,  in  chief. 
So,  similar  rights  were  tried  in  an  action  of  trespass,  in  Buck 
V.  Cclbath,  (3  WaU.,  334.)  And,  in  Wiswall  v.  Sampson, 
(14  How.^  52,)  the  right  acquired  by  the  levy  of  a  marshal 
upon  property  in  possession  of  a  receiver  was  tried  upon 
ejectment,  on  the  merits.  In  Pond  v.  Vermont  VaUey  Rail- 
road Company^  (12  BUUchf.  C.  C.  B.y  292,)  the  question  of 
this  same  receivership  was  raised,  but  not  until  after  the  de- 
cision reported,  and  upon  the  hearing  before  Circuit  Judge 
Johnson,  on  answers  and  proofs,  and  it  was  disposed  of  as  not 
affecting  the  rights  of  the  parties  to  the  property  involved, 
nor  the  jurisdiction  of  the  Court  over  the  case. 

Attention  has  been  particularly  called  to  the  provisions  of 
section  5  of  the  Act  of  March  3d,  1875,  to  determine  the 
jurisdiction  of  the  Circuit  Courts,  &c.,  (18  ZT".  S.  Stat,  at 
Large,  ^72,)  enacting,  ^^  that  if,  in  any  suit  commenced  in  a 
Circuit  Court,  or  removed  from  a  State  Court  to  a  Circuit 
Court  of  the  United  States,  it  shall  appear  to  the  satisfaction 
of  said  (Tircoit  Court,  at  any  time  after  such  suit  has  been 
brought  or  removed  thereto,  that  such  suit  does  not  really 
and  substantially  involve  a  dispute  or  controversy  properly 
within  the  jurisdiction  of  said  Circuit  Court,  or  that  the 
parties  to  said  suit  have  been  improperly  or  collusively  made 
or  joined,  either  as  plaintiffs  or  defendants,  for  the  purpose 
of  creating  a  case  cognizable  or  removable  under  this  Act, 
the  said  Circuit  Court  shall  proceed  no  further  therein,  but 
shall  dismiss  the  suit  or  remand  it  to  the  Court  from  which  it 


JAiniARY,  1882.  309 


Dwight  V.  The  Central  Yennont  Railroad  Company. 

was  removed,  as  justice  may  require,  and  shall  make  such  or- 
der as  to  costs  as  shall  be  just."  Speaking  of  this  section,  John- 
son, J.,  in  Warner  v.  The  Pennsylvania  Railroad  Compa/ny^ 
<13  Blatdhf.  C.  C.  jS.y  231,)  said :  "  All  that  is  necessary  to 
bring  the  case  really  and  substantially  within  the  jurisdiction 
is,  that  it  involves  a  controversy  of  the  character,  either  as  to 
the  subject-matter  or  the  parties,  specified  in  either  the  section 
which  defines  the  jurisdiction  by  original  suit,  or  that  which 
authorizes  removal  and  the  acquisition  of  jurisdiction  in  that 
manner.^'  As  before  stated  and  shown,  the  parties  to  this 
suit  are  citizens  of  different  States  and  the  suit  is  one  of 
which  this  Court  has  jurisdiction  for  that  reason,  if  the  ora- 
tors can  make  out  the  case  presented  by  their  bill,  including 
the  refusal  of  the  directors  to  prosecute,  as  a  part  of  their  case ; 
if  they  cannot,  they  have  no  case.  That  part  of  their  case,  as 
also  before  shown^  has  not  been  denied  in  the  necessary  man- 
ner, by  answer,  to  be  efiective  to  defeat  the  case  upon  that 
point,  and  there  is  no  evidence  before  the  Court,  upon  that 
or  any  other  point,  to  make  it  appear  at  all  that  parties  have 
been  either  improperly  or  coUusively  made  or  joined  for  the 
purpose  of  creating  a  case  within  the  jurisdiction.  There  is 
nothing  before  the  Court  now  on  which  the  Court  is  author- 
ized  to  act  under  the  provisions  of  that  section. 

The  pleas  and  demurrer  are  overruled,  the  defendants  to 
answer  over  by  the  first  day  of  next  term. 

£  t/i  Phelps  and  Prout  ds  WdOcsTy  for  the  plaintiffs. 


B.  F.  Fifidd^  for  the  defendants. 


Vol.  XX.— U 


210  VERMONT, 


Dwight  V.  Smith. 


JoNATHAir  DwiaHT  AND  OTHERS 

J.  Gregory  Smith  and  others.    In  Equity. 

In  this  case  a  demurrer  to  a  bill  in  equity  was  Bostained  because  the  bin  did 
not  show  definitely  and  distinctly  a  right  in  the  plaintiflb  to  equitable  relief 
against  the  defendants. 

(Before  Wekklxr,  J.,  Vermont,  January  14th,  1882.) 

Wheeler,  J.  This  cause  hais  been  heard  upon  a  demar- 
rer  to  the  bill  of  complaint  for  want  of  equitj  in  favor  of  the 
orators,  generally ;  and  for  want  of  sufficient  definiteness  in 
stating  the  grounds  for  the  relief  claimed.  The  bill  alone  is 
to  be  looked  at  in  determining  the  questions  so  raised.  Ac- 
cording to  the  bill,  the  orators  are  now  the  holders  of  the  first 
mortgage  bonds  to  a  large  amount,  but  when  thej  became 
such  holders  is  not  shown ;  some  of  the  defendants  are 
trustees  in  that  mortgage,  others  are  the  representatiyes  of  a 
trustee  deceased ;  another  defendant  is  the  Central  Yermont 
Railroad  Company  alleged  to  be  in  possession  of  the  mort- 
gaged property,  others  are  directors  in  the  latter  corporation ; 
the  trustees  have  both  neglected  and  violated  their  duty  to 
the  first  mortgage  bondholders  while  in  possession  of  the 
mortgaged  property,  in  not  accounting  to  them  for  moneys 
received .  by  them  as  trustees  for  them,  and  in  delivering  the 
property  to  the  Central  Vermont  Bailroad  Company  against 
their  rights  and  expressed  wishes ;  and  the  Central  Vermont 
Eailroad  Company  has  received  the  income  of  the  mortgaged 
property  and  not  accounted  for  it,  and  its  directors  made 
defendants  have  participated  in  that  act. 

If  the  trustees  received  income  from  the  mortgaged  prop- 
erty, belonging  to  the  bondholders  and  to  be  distributed  to 
lem,  the  money  would  belong  and  be  to  be  distributed  to 


JAITOAKY,  1882.  211 


Dwight  V.  Smith. 


the  persons  who  were  at  that  time  bondholders,  and  the  right 
to  it  would  not  pass  to  persons  subsequently  acquiring  the 
bonds,  unless  they  expressly  acquired  the  right  to  it  also. 
The  claims  of  the  bondholders  against  the  trustees  would  not 
be  upon  the  bonds  themselves,  like  the  claims  against  the 
obligors  in  the  bonds,  although  they  would  be  on  account  of 
the  bonds,  but  would  be  claims  against  the  trustees  personally 
for  the  moneys  received  to  the  use  of  the  bondholders,  and 
these  claims  would  not  be  assignable  at  law,  although  they 
might  be  in  equity.  In  a  suit  or  proceeding  upon  the  bonds 
thenaselyes  the  production  of  the  bonds  and  coupons,  or  the 
allegation  of  their  ownership,  might  import  that  the  holder 
had  held  them  at  the  time  of  the  accruing  of  the  interest  in- 
cidental to  the  debt,  and  entitle  him  to  recover  for  the  whole ; 
but  not  so  as  to  a  claim  not  upon  the  bonds,  but  for  money 
received  to  the  use  of  the  bondholders.  The  production  of 
the  bonds  would  not  make  out  a  cause  of  action  or  claim  for 
relief  on  account  of  that  money.  More  would  have  to  be 
shown,  and  enough  more  to  make  out  a  cause  of  action  or 
ground  for  relief,  and  that  would  include  showing  a  right  to 
the  money  at  the  time  it  was  received.  The  orators  fall  short 
of  showing  such  right. 

And,  if  the  orators  had  been  holders  of  the  bonds  ever  af- 
ter they  were  issued,  and  had  so  shown  in  their  bill,  it  would 
be  incumbent  on  them  to  show  that  their  trustees,  or  those 
holding  the  property  in  place  of  the  trustees,  did  receive 
money  belonging  to  them,  or  did  so  conduct  themselves  with 
the  property  as  to  make  themselves  accountable  for  money  as 
if  they  had  received  it.  The  bill  does  not  allege  that  the 
trustees  received  any  money  belonging  to  the  bondholders 
prior  to  their  appointment  as  receivers ;  nor  that,  while  they 
were  in  fact  receivers,  they  received  anything  more  than 
enough  to  pay  the  Vermont  and  Canada  rent,  which  was  to 
he  first  paid ;  nor  that  they  ceased  to  be  receivers  in  fact  un- 
til the  making  of  the  compromise  agreement ;  nor  then  other- 
wise than  by  the  force  of  that  agreement.  That  agreement 
i8  annexed  to  the  bill  and  made  a  part  of  it.     The  bill  does 


212  VERMOHT. 


Oris  wold  v.  The  Central  Yermont  Railroad  Company. 

—  -  • — ~ ~- — • — ^ ■ I  ■    ■ I 

not  show  that  the  orators  are  not  bound  and  willing  to  stand 
upon  that  agreement.  If  thej  are,  then,  as  to  them,  the  in- 
come raised  afterwards  was  to  be  distributed  according  to 
that  agreement.  Some  of  that  income  was  to  go  to  the  Yer- 
mont and  Canada  Railroad  Company  for  rent ;  how  much 
does  not  appear.  A  gross  amount  of  income  for  a  term  of 
years  is  stated,  but  whether  that  amount  was  greater  than  the 
amount  of  rent  to  be  lii'st  paid  is  not  shown  or  stated.  The 
same  would  be  true  if  the  compromise  agreement  was  not 
binding  upon  them ;  the  amount  to  be  paid  before  anything 
would  remain  to  apply  on  these  bonds  would  not  appear,  and, 
consequently,  whether  anything  would  be  left  to  go  to  the 
bond-holders  would  not  in  either  case  appear.  The  bill  should 
show  definitely  and  distinctly  not  merely  a  right  in  somebody 
to  equitable  relief,  but  a  right  in  the  oratora  to  equitable  re- 
lief against  the  defendants* 
The  demurrer  is  sustained. 

Francis  A.  Brooks  and  WUliam  G.  Shawy  for  the  pkdni- 
ifb. 

Benjamin  F,  Fifield  and  Daniel  Roberts^  for  the  defend- 
ants. 


JoHK  N.  A.  Gbiswold  and  othxbs 

vs. 

The  Cbntbal  YEK&fONT  Railroad  Company  and  others. 

In  Equity. 

J.  and  otben,  citiiens  of  New  York,  and  cxecnton  in  that  State  of  G.,  late  a 
citicen  of  New  York,  filed  this  bill  to  enforce  liens  on  rolling  stock,  and  eam- 
iogs  of  rolling  stock,  of  two  railroads,  pledged  by  some  of  the  defendanU 
while  in  possession  of  those  roads,  and  a  corporation,  their  successors  in  pos- 
session, by  consent  of  parties  and  order  of  a  Conrt  of  the  State  of  Yermont 
thereupon,  for  the  security  of  several  series  of  equipment  loans,  in  which  ths 


JANUARY,  1882.  218 


Qriswold  «.  The  Central  Vermont  Railroad  Cknnpany. 

plaintifb,  aa  executors,  inrested.  Some  of  the  defendants  demurred  on  the 
groond  that  owners  of  the  different  series  of  the  bonds  had  no  common  in- 
terest in  the  seenrities;  that  the  bonds  were  not  referred  to  as  a  part  of  the 
bill,  nor  made  a  part  of,  nor  attached  to,  the  bill;  that  the  doings  of  the 
managers  in  possession  prior  to  the  possession  of  the  corporation  could  not 
properly  be  joined  with  its  doings;  and  tliat,  on  the  face  of  the  bill,  it  appeared 
that  the  Gonrt  had  not  jurisdiction.  The  corporation  pleaded  the  proceedings 
of  the  State  Ck>urt  in  bar  of  jurisdiction,  part  of  which  was  a  provision,  in  a 
decree  in  that  Court,  that  that  Court  might  be  applied  to  for  the  realiration 
of  the  seeurities  held  by  the  plaintiib:  BlUd,  that  the  demurrer  and  the  plea 
must  be  oTermled. 

The  plaintiffs,  although  executors  in  New  York,  could  sue  in  Vermont,  their 
rights  nerer  haying  accrued  to  their  testator. 

The  said  proTision  for  relief  in  said  decree  of  the  State  Court  did  not  exclude 
all  other  remedies. 

Hit  fact  that  property  is  being  administered  upon  in  State  proceedings  does 
not  preront  citixens  of  other  States  from'  proceeding  in  the  Federal  Courts  to 
establish  their  claims  and  obtain  relief 

(BeCDre  Wbeslbr,  J.,  Vermont,  January  14th,  1882.) 

Wheeler,  J.  The  orators  are  citizens  of  New  York,  and 
executors  in  that  State  of  George  Griswold,  late  a  citizen  of 
that  State,  and  bring  this  bill  to  enforce  liens  upon  rolling 
stock,  and  earnings  of  rolling  stock,  of  the  Yermont  Central 
and  Yermont  and  Canada  Railroads,  pledged  by  some  of  the 
defendants  while  in  possession  of  those  roads,  and  the  Cen- 
tral Yermont  Railroad  Company,  their  successors  in  posses- 
rion,  by  consent  of  parties,  and  order  of  the  Court  of  Chan- 
cery of  the  State  of  Yermont  thereupon,  for  the  security  of 
several  series  of  equipment  loans,  in  which  the  orators,  as  ex- 
ecutors, invested. 

Some  of  the  defendants  have  demurred,  assigning,  for 
cause,  that  owners  of  the  different  series  of  bonds  have  no 
common  interest  in  the  securities ;  that  the  bonds  are  not  re- 
ferred to  as  a  part  of  the  bill,  nor  made  a  part  of,  nor  attached 
to,  the  biU ;  that  the  doings  of  the  managers  in  possession 
prior  to  the  possession  of  the  Central  Yermont  Railroad  Com- 
pany cannot  properly  be  joined  with  the  doings  of  that  com- 
pany ;  and  that,  on  the  face  of  the  bill,  it  appears  that  this 
Court  has  not  jurisdiction.  The  Central  Yermont  Railroad 
Company  has  pleaded  the  proceedings  of  the  State  Court  of 


214  VERMONT, 


Griswold  «.  The  Central  Yermont  Railroid  Ck>mpany. 

Chancery  in  bar  to  the  jurisdiction  of  this  Conrt,  from  which 
it  appears,  that  some  of  these  defendants,  with  other  p^ersons, 
were  made  receivers  of  these  roads  in  a  cause  pending  be- 
tween the  Yermont  and  Canada  Bailroad  Company,  and  the 
Vermont  Central  Bailroad  Company  and  its  security  holders ; 
that,  while  so  in  possession,  an  agreement  was  made  between 
the  parties,  and  embodied  in  a  decree  of  the  Court,  under 
which  those  in  possession  and  their  successors  were  continued 
in  possessioD,  and  by  one  of  the  provisions  of  which  the  cause 
in  which  the  proceedings  had  been  taken  was  kept  in  Court, 
with  liberty  to  any  party  to  apply  to  the  Court  for  further 
orders,  as  they  might  be  advised ;  that,  in  the  proceedings  au- 
thorizing these  loans,  and  as  a  part  of  the  decrees  under 
which  they  were  issued,  it  was  provided,  that,  in  case  the 
trustees  should  fail  to  pay  the  notes  or  interest,  the  holders 
might  apply  to  that  Court  for  the  realization  of  their  securi- 
ties, or  for  a  summary  order  for  the  payment  of  the  amount 
due,  out  of  any  property  in  the  hands  of  the  trustees,  and  that 
a  copy  of  this  part  of  the  decrees  was  printed  upon,  and  made 
a  part  of,  the  notes.  The  cause  has  now  been  heard  upon 
these  causes  of  demurrer  and  this  plea. 

The  causes  of  demurrer  do  not  require  any  eactended  no- 
tice. The  claims  are  asserted  in  favor  of  parties  having  like 
claims  upon  common  property  against  parties  in  possession  of 
that  property,  to  enforce  a  common  trust.  The  Central  Ver- 
mont Bailroad  Company  succeeded  to  the  duties  of  its  pre- 
decessors in  respect  to  the  property,  and  still  the  predecessors 
were  not  discharged ;  therefore,  all  are  connected,  and  all  are 
properly  joined.  If  the  bonds  or  notes  are  sufficiently  set 
forth  to  show  their  terms  and  effect,  that  is  enough,  without 
reciting  them,  further  referring  to  them,  or  attaching  copies 
of  them ;  and  it  is  not  pretended  but  that  they  are  so  set 
forth.  The  question  as  to  the  jurisdiction  of  this  Court  ia  in- 
volved and  included  in  that  made  by  the  plea,  except  as  to  a 
question  made  whether  the  orators,  being  executors  in  the 
State  of  New  York,  can  sue  out  of  that  State.  This  does  not 
involve  any  question  as  to  whether  they  so  succeed  to  the 


JANUARY,   1882.  215 


Gii^wold  «.  The  Central  Yermont  Railroad  Company. 

rights  of  their  testator  out  of  the  State  where  they  are  execQ- 
tors,  that  they  can  represent  him  and  recover  upon  his  rights 
elsewhere ;  these  rights  never  accrued  to  him  at  alL  Thej 
aocmed  to  the  orators  themselves,  and  accrued  to  them  in  the 
same  capacity,  and,  for  aught  that  appears,  in  the  same  place, 
in  which  they  are  attempting  to  enforce  the  rights.  Letters 
of  executorship  or  administration  extend  only  to  the  goods  or 
estate  which  were  of  the  testator  or  intestate  at  the  time  of 
decease,  and  would  not  include  these  securities,  if  taken  out 
in  Yermont,  as  against  the  rights  of  the  orators. 

As  to  the  other  question  of  jurisdiction,  as  the  parties  are 
citizens  of  different  States,  the  amount  in  dispute  is  large 
enough,  and  this  Court  has,  and  is  bound  to  take,  jurisdiction, 
when  a  proper  case  is  brought,  unless  there  is  something  in 
the  nature  of  the  case  or  situation  of  the  pro'perty  that  ex- 
dudes  the  jurisdiction.  It  is  argued,  for  the  defendants,  that 
those  contracting  the  debts  were  still  the  receivers  of  the 
Court;  that  they  contracted  the  debts  as  such ;  that  all  the 
property  from  which  the  debts  were  to  be  paid  was  in  their 
possession  as  receivers ;  that  no  other  Court  could  reach  the 
property  to  afford  relief  for  non-payment,  and  that  the  pro- 
yiflion  for  relief,  in  the  order  authorizing  the  loans  and  made 
a  part  of  the  notes,  excludes  all  other  remedies.  The  juris- 
diction of  Courts  is  given  by  the  law,  and  not  by  the  parties, 
and  can  neither  be  conferred  nor  taken  away  by  their  mere 
consent  or  agreement.  If  the  conditions  prescribed  by  the  law 
for  jurisdiction  exist,  the  jurisdiction  exists.  The  conditions 
prescribed  for  giving  this  Court  jurisdiction  of  the  parties  ex- 
ists, and  jurisdiction  of  the  case  must  follow,  unless  the  sub- 
ject is  out  of  reach.  Neither  by  the  terms  of  the  securities, 
as  set  forth  in  the  bill,  or  as  shown  in  the  plea,  nor  by  the 
conditions  of  the  proceedings,  was  anything  to  be  done  by  the 
Ooort  before  the  defendants  could  carry  out  their  obligation 
to  set  apart  the  earnings  of  the  rolling  stock  as  agreed  and 
tpply  them  to  the  satisfaction  of  these  notes.  They  were  at 
liberty  to  do  it,  and,  so  far  as  appears,  were  bound  to  do  it. 
If  there  was  a  failure,  the  holders  of  the  notes  would  have  a 


216  VERMONT, 


Qriswold  r.  The  Central  Vermont  Railroad  Company. 

right  to  apply  to  the  Conrts  of  the  land  for  relief,  and  they 
would  not  be  deprived  of  the  right  to  apply  to  any  one  Court 
because  they  had  the  right  to  apply  to  another.    Those  which 
were  provided  were  provided  for  the  purpose  of  giving  the 
right  to  apply  to  them.    There  is  nothing  to  prevent  apply- 
ing to  this  Court,  unless  it  may  be  that,  as  is  argued,  the  prop- 
erty is  in  the  course  of  administration  of  the  State  Court.    It 
is,  however,  well  settled,  that  the  fact  that  property  is  being 
administered  upon  in  State  proceedings  does  not  prevent  citi-  - 
zens  of  other  States  from  proceeding  in  the  Circuit  Courts  of 
the  United  States  to  establish  their  claims  and  obtain  relief^ 
if  entitled  to  it.    (Suydam  v.  Broadnax,  14  Pet.^  67 ;  Ermn 
V.  Lowry^  7  Baw.y  172.)    In  Shelby  v.  Bacon,  (10  Baio.,  66,) 
the  assets  of  an  insolvent  corporation  were  being  administered, 
under  the  laws  of  Pennsylvania,  by  assignees  accountable  to 
the  State  Court  of  Common  Fleas.    The  assignees  refused  to 
allow  the  claim  of  the  plaintiff,  and  he  brought  suit  in  the 
United  States  Circuit  Court,  to  which  the  assignees  pleaded 
the  pendency  of  the  State  proceedings.    After  noticing  some 
defects  in  the  plea,  Mr.  Justice  McLean,  in  delivering  the 
opinion  of  the  Court,  said :    ^'  But,  if  the  plea  had  been  per- 
fect in  this  respect,  it  would  not  follow  that  the  complainant 
could  not  invoke  the  jurisdiction  of  the  Circuit  Court.    He, 
being  a  non-resident,  has  his  option  to  bring  his  suit  in  that 
Court,  unless  he  has  submitted,  or  is  made  a  party,  in  some 
form,  to   the  special  jurisdiction  of  the  Court  of  Common 
Pleas.    It  appears  from  the  bill,  that  the  assignees  have  re- 
fused to  allow  the  claim  of  the  plaintiff,  or  any  part  of  it. 
To  establish  this  claim  as  against  the  assignees,  the  complain- 
ant has  a  right  to  sue  in  the  Circuit  Court,  which  was  estab- 
lished chiefly  for  the  benefit  of  non-residents.    JNTot  that  the 
claim   should  thus  be  established  by  any  novel  principle  of 
law  or  equity,  but  that  his  rights  might  be  investigated  free 
from  any  supposed  local  prejudice  or  unconstitutional  legist 
lation.     On  the  most  liberal  construction  favorable  to  the  ex- 
ercise of  the  special  jurisdiction,  the  rights  of  the  plaintiff 
in  this  respect  could  not,  against  his  consent,  be  drawn  into 


JANUARY,   1882.  217 


Giiswold  V.  The  Central  Yennont  Railroad  Company. 


it."  In  MaOett  v.  Dexter,  (1  Curtii  C.  a  B,,  178,)  sometimes 
relied  upon  to  avoid  the  jurisdiction  of  the  Circuit  Court,  ju- 
rifidiction  was  entertained  in  favor  of  a  non-resident,  to  re- 
opCT  accounts  of  administrators  settled  in  the  Probate  Court 
of  Rhode  Island,  on  the  ground  of  fraud,  although  it  was  re- 
fused as  to  accounts  then  actually  in  process  of  settlement  in 
the  State  Court.  (  Union  Bank  v.  Jolly y  18  How.,  603 ;  Hyde 
V.  Stone,  20  Hoio.,  170 ;  Payne  v.  Hook,  7  WdU.,  425.) 

According  to  the  allegations  of  the  bill,  a  particular  fund 
iras  to  be  set  apart  for  the  payment  of  the  orators'  notes,  which 
was  not  set  apart,  or,  if  set  apart,  has  not  been  applied  to  that 
purpose.  The  orators  have  the  right  to  apply  to  the  Federal 
Courts,  on  account  of  their  citizenship,  to  have  their  claims 
investigated.  The  merits  of  their  claims  are  not  yet  before 
the  Court,  and  cannot  be  until  answer  and  proofs  are  made. 
The  only  question  now  is,  whether  the  case  shall  proceed  to 
answer  and  proofs.  Nothing  is  seen  adequate  to  deprive  the 
orators  of  their  right  to  resort  to  the  Federal  Courts,  in  com- 
mon with  all  citizens  of  one  State  having  or  claiming  to  have 
cause  of  action  against  citizens  of  another  State,  to  have  their 
causes  tried. 

The  demurrer  and  plea  are  overruled,  defendants  to  answer 
over  by  the  first  day  of  next  term. 

Prout  dk  WalkeTy  for  the  plaintiffs. 

B.  F.  Fifield  and  Z.  P.  Poland,  for  the  defendants. 


318  VERMONT, 


Webb  V.  The  Yermont  CoDtral  Rftilroad  OomiNuiy. 


William  H.  Wsbb  and  othbks 

■ 

vs. 

The  Yebmokt  Central  Railroad  Company  and  othebb. 

In  Equity. 

Hie  bin  in  ibis  OMe  was  rastained,  on  demurrer,  as  a  bill  by  second  mortgagee 

bondholders  of  a  railroad  company,  against  the  mortgagor  and  a  trustee  io 

the  mortgage,  to  foreclose  the  mortgage. 
It  is  a  sofficient  reason  for  the  bondholders  to  proceed  in  their  own  names  and 

behalf,  making  the  trustees  defendants,  that  the  trustees  bare  aoqnired  ad- 

Terse  interests,  and  stand  in  a  hostile  position,  so  that  they  cannot  maintaia 

the  plaintifis'  rights  without  attacking  their  own. 
A  demurrer  to  the  bill  by  the  trustees  of  a  prior  mortgage  and  by  parties  in 

possession  under  them  was  sustained,  because  the  bill  was  not  framed  as  t 

bill  to  redeem  the  prior  mortgage. 

(Before  Whxxlsb,  J.,  Vermont,  January  14tb,  1882.) 

Whebleb,  J.  The  defendants,  the  Yermont  Central  Bail- 
road  Company,  the  Central  Yermont  Bailroad  Company,  John 
Gregory  Smith,  Worthington  C.  Smith,  and  James  R  Lang- 
don  demar  to  the  bill,  and  the  cause  has  been  heard  npon  the 
demurrer.  The  orators  are  second  mortgage  bondholders  of 
the  Yermont  Central  Railroad ;  the  defendant  John  Gregoiy 
Smith  is  a  trustee  in  the  first  mortgage ;  Worthington  C. 
Smith  is  a  trustee  in  the  second  mortgage ;  and  both  of  them 
and  the  defendant  Langdon  are  officers  in  the  Central  Yer- 
mont Railroad  Company,  which  is  in  possession  received  from 
the  trustees  of  the  first  mortgage. 

One  cause  of  demurrer  assigned  is,  that  the  bill  does  not 
show  sufficient  reason  for  the  bondholders  to  proceed  in  their 
own  names  and  behalf.  But  the  bill  does  show  that  the  truB- 
tees  have  acquired  adverse  interests  and  stand  in  a  hostile  po- 
sition,  so  that  they  cannot  maintain  the  orators'  rights  with- 
out attacking  their  own.  They  could  not  be  orators  against 
themselves ;   and  this  is  a  sufficient  reason  for  making  them 


JANUARY,  1882.  219 


Webb  V.  The  Yermont  Central  Railroad  Company. 


defendants,  where  the  orators'  interests  were  in  soit,  atfd 
with  them  as  defendants  there  woald  be  no  one  to  prosecute 
the  orators'  claims  bnt  the  orators  themselves.  The  bond- 
holders are  the  real  owners  of  the  mortgage  interest,  and  the 
trustees  haYe  bnt  a  dry  legal  title,  and,  when  they  hold  that  ti- 
tle in  opposition  to  the  bondholders,  the  latter  haYC  good 
ground  for  proceeding  in  their  own  behalf,  to'  protect  snch 
rights  as  they  have,  and  the  proper  position  of  the  trnstees  in 
the  proceedings  is  with  the  defendants.  This  canse  of  demur- 
rer cannot  prevaiL 

Another  ground  is  a  want  of  equity  in  the  case  made  by 
the  bill  generally.  While  being  considered  on  this  question, 
the  bill  cannot  be  aided  by  what  is  stated  elsewhere,  or  by 
what  is  known  in  some  other  way,  but  must  stand  alone  for 
examination,  with  all  its  allegations  taken  for  this  purpose  to 
be  tme.  It  states  the  prior  mortgage  as  a  valid  incumbrance 
prior  to  the  second  mortgage,  and  that  the  trustees  of  the 
first  mortgage  were  rightfully  in  possession  by  virtue  of  that 
mortgage,  and  that  they  procured  their  possession  to  pass  to 
the  Central  Yermont  Railroad  Company.  The  orators'  rights 
are  subordinate  to  the  first  mortgage,  and  to  those  of  the  first 
mortgage  trustees,  and  all  holding  under  them.  As  against 
such  they  have  no  right  but  to  redeem,  and  this  bill  is  not 
adapted  to  that  purpose ;  it  has  not  the  proper  allegations, 
offers  of  payment,  nor  parties.  The  bill  states  proceedings  of 
Court  by  which  the  Central  Vermont  was  placed  in  posses- 
sion, but  alleges  that  they  were  all  Yoid  as  to  the  orators,  and 
aUeges  that  they  were  had  at  the  instance  of  the  trustees  in 
the  first  mortgage,  and  that  the  Central  Vermont  claims  to 
hold  possession  by  the  force  of  the  proceedings.  This  does 
not  show  the  Central  Vermont  to  be  in  possession  as  a  mere 
wrong-doer,  subject  to  the  rights  of  any  owner,  with  none  of 
its  own.  It  would  not  lose  the  rights  it  had  by  claiming  to 
hold  under  those  it  had  not.  If  the  proceedings  were  void 
they  conferred  no  right ;  but  those  who  made  use  of  them  to 
transfer  possession  would,  by  the  act,  pass  such  possession  as 
they  had  to  pass,  and  the  possession  taken  would  be  good  as 


220  VERMONT, 


Webb  V.  The  Vermont  Central  Railroad  Company. 


theirB,  because  they  gave  it,  although  there  was  nothing  else 
to  uphold  it.  Thus,  the  possession  of  the  Central  Yermont 
appears  to  be  the  same  as  that  of  the  first  mortgage  trustees, 
and  such  tliat  the  second  mortgage  bondholders  cannot,  upon 
the  allegations  of  this  bill,  disturb  it,  without  redeeming  the 
first  mortgage.  They  cannot  foreclose  their  mortgage  against 
either,  because  both  stand  upon  a  mortgage  which  is  prior  to 
theirs. 

The  bill  states  a  transaction  by  which  an  agreement,  and  a 
decree  upon  it,  were  made,  providing  for  payment  of  rent, 
then  of  the  first  mortgage,  and  then  of  the  second  mortgage, 
by  those  in  posses8ion,and  that  the  Central  Yermont  is 
under  that  duty,  but  does  not  state  that  anything  has  be^ 
received  to  apply  upon  the  second  mortgage,  and  does  not 
pray  for  any  account ;  so,  there  is  no  ground  for  relief  in 
that  direction.  It  states  that  the  first  mortgage  has  been  en- 
larged against  the  rights  of  the  second  mortgage  bondholders, 
and  that  the  trustees  and  the  Central  Yermont  hold  securities 
which  they  claim  to  be  a  prior  lien  to  the  second  mortgage, 
and  which  are  not ;  but,  as  the  orators  do  not  seek  to  redeem 
such  prior  incumbrances  as  they  have  which  are  valid,  there 
is  no  relief  to  be  afforded  by  determining  the  validity  of  any, 
and  no  ground  for  making  such  a  determination.  The  bill 
shows  a  right  to  foreclose  the  mortgage  against  the  mort- 
gagor, and  to  have  the  trustee  a  defendant  for  that  purpose, 
and  shows  no  other  ground  for  relief. 

The  demurrer  of  the  Central  Yermont  Eailroad  Company, 
and  John  Gregory  Smith  and  James  R.  Langdon  is  sustained, 
and  that  of  the  Yermont  Central  Bailroad  Company  and 
Worthington  C.  Smith  is  overruled. 

William  O.  Shaw  and  Francis  A,  Brooks^  for  the  plaint- 
iffs. 

Benjamin  F,  Fifidd  and  Daniel  Roberts^  for  the  defend- 
ants. 


JANUARY,   1882.  221 


Coes  «.  The  CollixiB  Oompanj. 


IjObinq  Coes 

vs. 

The  Collins  Company.    In  Equity. 

Claim  1  of  re-iaaued  letters  patent  No.  8,488,  granted  to  Loring  Goee,  June  Isfc, 
1869,  for  an  "  improvement  in  wrench,"  the  original  patent.  No.  40,590,  having 
beeo  granted  to  Thomas  H.  Dodge,  as  assignee  of  George  C.  Taft,  the  inven- 
tor, November  10th,  1868,  for  an  "  improvement  in  wrenclies,"  namely,  *'  An 
improved  Coes  wrench,  so  constructed  that  the  thrust  or  back  strain  of  the 
roaette  screw,  when  the  wrenoh  is  used,  shall  be  borne  by  the  shank,  instead 
of  the  handle  of  the  wrench,  substantiaUy  as  described,"  is  not  infringed  by 
a  wrench  made  in  accordance  with  the  description  in  letters  patent  No. 
60,864,  granted  to  Jordan  and  Smith,  October  10th,  1866,  for  an  "improved 
wrench." 

The  claim  is  not  a  claim  to  so  constructing  a  Goes  wrench  of  1841,  that  the 
back  thrust  shall  be  borne  by  the  shank  ultimately,  through  the  plate  and 
the  handle  and  the  end  nut,  nor  is  it  a  claim  to  having  the  shank  bear  the 
thmst  at  some  point  before  the  handle  is  reached,  without  reference  to  the 
mechanical  means,  but  it  is  a  claim  to  the  means  shown  **  substantially  as  de- 
scribed," and  it  is  not  infringed  by  a  wrench  in  which  the  plate  is  not  re- 
lieved. 

(Before  Blatohiord,  J.,  Connecticut,  January  16ih,  1882.) 

Blatohfobd,  J.  This  suit  is  brought  on  ro-issned  letters 
patent  No.  3,483,  granted  to  Loring  Coes,  the  plaintiff,  June 
Ist,  1869,  for  an  "  improvement  in  wrench,"  the  original  pat- 
ent, No.  40,590,  having  been  granted  to  Thomas  fl.  Dodge,  as 
ttsignee  of  George  C.  Taft,  the  inventor,  November  10th.  1863, 
for  an  "  improvement  in  wrenches."  The  specification  of  the 
re-ifisne  is  signed  by  Loring  Coes,  and  is  as  follows,  including 
vhat  is  inside  of  brackets,  and  what  is  outside  of  brackets,  omit- 
ing  what  is  in  italics :  "  Figure  1  represents  a  perspective  view 
of  [a  *  Coes  wrench,'  having  the  said  Taf  t's  improvements  applied 
thereto,]  my  iinprovement^  and  Figure  2  represents  [sections  of 
detached  parts  of  the  wrench  shown  in  Fig.  1.]  a  detdched  view 
of  the '  rosette '  andpa/rU  therevyUh  oonneoted.  Similar  letters  of 


222  coiSTNEcrncuT, 


Goes  V.  The  CcllinB  Company. 


reference  indicate  like  parts  in  the  drawings.  ♦  ♦  *  [The 
nature  of  the  said  Taft's  invention  relates  to  a  mode  of  con- 
structing the  Coes  wrench  patented  April  16, 1841,  in  snch  a 
manner  that  the  handle  shall  be  relieved  from  the  back  thmst 
or  strain  of  the  rosette  screw,  when  the  wrench  is  used.  In 
mj  said  wrench,  the  rosette  presses  against  the  ferrule,  and 
the  ferrule,  in  turn,  against  the  front  end  of  the  handle, 
whereby  the  handle  was  often  split  and  broken.  In  the  draw- 
ings] A  is  the  shank  of  [the]  my  wrench ;  B,  the  stationary 
jaw ;  and  B'  the  sliding  jaw,  through  the  part  B"  of  which 
the  operating  screw  C  works.  D  is  the  rosette,  formed  in 
one  piece,  as  shown^  with  the  screw  O,  [as  shown,]  and  jonr- 
nailed,  at  a,  to  [the]  ferrule  E.  Parallel  grooves,  rf,  rf,  rf,  [in 
this  instance,]  are  cut  in  the  shank  A,  [at  right  angles  to  the 
line  of  motion  of  the  movable  jaw  B"]  in  which  [grooves]  pro- 
jections, tf,  a,  €,  of  the  rosette  turn.  The  projections  «,  a,  a,  are 
made  parallel  to  each  other,  and  are  bevelled  on  one  side,  as 
shown,  to  lessen  the  friction  of  the  rosette  [in]  upon  turning. 
The  operation  is  as  follows :  To  adapt  the  opening  between 
the  jaws  to  the  size  of  the  object  to  be  clasped  thereby,  the 
operator  turns  the  rosette  to  the  right  or  left,  as  the  size  of 
the  object  [may  require,]  wUl  indicate^  which  will  turn  the 
screw  in  the  part  B"  of  the  sliding  jaw  B',  [thereby  increasing 
or  diminishing,  as  the  case  may  be,]  andj  as  to  the  way  tumedj 
will  increase  or  diminish  the  distance  between  the  jaws,  as 
required.  The  [advantage]  advantages  of  having  a  rosette 
of  this  [improvement]  form  is  that  it  sicstains  the  pressure 
which  [would  otherwise]  ofhenoise  would  come  [upon]  on  the 
[handle  is  transferred  to  the  shank  of  the  wrench,  thus  obviat- 
ing one,  and  really  the  only  serious,  objection  to  the  said  Coes 
wrench.']  ferrtde  E^  which  presfiWf*e  is  often  so  great  as  to  hreah 
it  offy  or  displace  it^  thus  rendering  the  whole  wrench  useless. 
Having  thtis  described  my  improved  wreru)h^  I  am  aware  that 
the  [rosettes]  rosette  of  screw  wrenches  [have]  has  heretofore 
been  constructed  with  [screw  threads]  a  screw  thready  and 
[such  devices  are  not  claimed,]  /  do  not  claim  such  device^ 
but  what  [is  claimed  as  the  invention  of  the  said  George  C. 


JAKUAKT,   1882.  238 


€066  V.  The  Collins  Compftny. 


Taft,and  desired  to  have  secured]  I  daim  and  desire  to  secure 
by  letters  patent  is : "  Heading  in  the  foregoing  what  is  out- 
side of  brackets,  including  what  is  in  italics,  and  omittiug 
what  is  inside  of  brackets,  gives  the  text  of  the  specification 
of  the  original  patent.  There  are  3  claims  in  the  re-issue,  aa 
follows :  "  1.  An  improved  Goes  wrench,  so  constructed  that 
the  thrust  or  back  strain  of  the  rosette  screw,  when  the 
wrench  is  used,  shall  be  borne  by  the  shank,  instead  of  the 
handle  of  the  wrench,  substantially  as  described.  2.  A  notch 
formed  at  right  angles  to  the  line  of  motion  of  the  movable 
jaw,  in  the  shank  of  a  Goes  wrench,  for  relieving  the  handle 
from  the  back  strain  of  the  rosette  screw,  substantially  as  de- 
scribed. 3.  The  combination  of  two  or  more  parallel  grooves, 
(f,  in  the  shank  A,  with  two  or  more  corresponding  projec- 
tions, tf,  on  the  rosette  D,  the  same  not  being  spiral,  but  run- 
ning at  right  angles  to  the  line  of  motion  of  the  jaw,  sub- 
stantially as  described."  There  was  only  one  claim  in  the 
original  patent,  as  follows :  ^'  The  combination  of  the  parallel 
grooves  dy  dy  dy  in  the  shank  A,  vnth  the  corresponding  pro- 
jections ej  «,«,  on  the  rosette  D,  the  same  not  being  spiral,  but 
ranning  at  right  angles  to  the  line  of  motion  of  the  jaw,  thus 
relieving  the  ferrule  from  all  strain,  while  retaining  the 
rosette  in  the  same  relative  position  as  respects  the  handle  of 
the  wrench,  substantially  as  and  for  the  purposes  set  forth.'' 

The  defendant's  wrench  which  is  alleged  to  infringe  claim 
1  of  the  re-issue  is  made  in  accordance  with  the  description  in 
letters  patent  No.  50,364,  granted  to  Jordan  and  Smith,  Oc- 
tober 10th,  1865,  for  an  "  improved  wrench." 

The  plaintiflPs  wrench  and  the  defendant's  wrench  both  of 
them  contain  improvements  engrafted  upon  the  form  of 
wrench  shown  in  letters  patent  No.  2,054,  granted  to  Loring 
Goes,  the  plaintiff,  April  16th,  1841,  for  an  "  improvement  in 
the  method  of  constructing  screw  wrenches,"  and  re-issued  to 
him,  No.  139,  June  26th,  1819,  for  an  "improvement  in  screw 
wrenches."  The  main  feature  of  the  Goes  wrench  of  1841 
was  the  moving  of  the  adjustable  jaw  by  a  screw  placed  at 
the  side  of,  and  parallel  with,  the  main  bar  which  carried  the 


284  OONHBCTICDT, 


Guee  V.  The  Collins  Company. 


permanent  jaw  at  one  end  of  it  and  the  handle  at  the  other 
end,  the  screw  taking  into  an  attachment  to  the  adjastaUe 
jaw,  and  working  that  jaw  to  and  fro  withont  itself  moving 
otherwise  than  by  rotation,  and  having  on  its  end  farthest 
from  the  fixed  jaw  a  rosette  or  milled  head,  which  never 
approached  to  or  receded  from  the  fixed  jaw,  and  could  there- 
fore be  rotated,  so  as  to  rotate  the  screw,  by  the  thumb  of  the 
hand  which  held  the  wrench,  becanse  the  rosette  always  re- 
tained the  same  position  relatively  tc^  the  handle  of  the 
wrench.  A  wooden  handle  was  slipped  over  the  handle  end 
of  the  main  bar,  and  a  screw  nnt  on  that  end,  bearing  against 
the  adjacent  end  of  the  wooden  handle,  held  the  other  end  of 
the  wooden  handle  against  a  ferrule,  and  that  against  an  iron 
plate,  and  that  against  a  shoulder  on  the  main  bar.  The  iron 
plate  projected  out  on  the  same  side  with  the  rosette  and 
next  that  face  of  it  farthest  from  the  fixed  jaw.  The  plate 
earried  the  revolving  end  of  the  screw,  the  baring  point  pro- 
jecting beyond  the  face  of  the  rosette,  such  revolving  end, 
rosette  and  screw  being  practically  one  piece  and  revolving 
together.  In  order  to  prevent  the  screw  and  the  rosette  from 
being  carried  bodily  towards  the  fixed  jaw  by  the  sliding  of 
the  adjustable  jaw  on  the  main  bar,  a  notch  as  long  as  the 
width  of  the  periphery  of  the  rosette  was  cut  in  or  out  of  the 
substance  of  the  main  bar  opposite  the  place  intended  for  the 
permanent  position  of  the  rosette,  and  the  periphery  of  the 
rosette  turned  within  the  notch,  so  that  the  edge  of  the  rosette 
face  nearest  to  the  fixed  jaw  would  catch  against  the  edge  of 
the  notch,  the  angle  of  the  notch  being  towards  the  fixed  jaw. 
But,  while  this  Coes  wrench  of  1841  had  advantages  it  bad 
difficulties.  There  was  a  pressure  against  the  plate  by  the 
rosette  face  farthest  from  the  fiied  jaw  and  by  the  end  of  the 
screw  in  its  bearing,  and  thus  the  back  strain  or  thrust  from 
the  bite  of  the  jaws  was  communicated  through  the  adjust- 
able jaw,  its  attachment,  the  screw  and  the  plate,  to  the  i&t- 
rule  and  so  to  the  wooden  handle,  before  it  reached  the  main 
bar  through  the  screw  nut  at  the  handle  end.  The  plate  and 
the  ferrule  were  often  broken  or  bent  and  pushed  oat  of 


JANTJARY,   1882.  225 


Co68  V.  The  Collins  CompaDj. 


place  and  the  wooden  handle  was  split  or  crashed.  It  became 
desirable,  therefore,  to  devise  a  way  of  taking  off  this  back 
thrust  before  it  coold  reach  the  plate  or  the  ferrule  and  thns 
the  wooden  handle,  and  of  bringing  it  against  the  resisting 
strength  of  the  n^ain  bar  itself  between  the  plate  and  the 
fixed  jaw.  Taft  did  this  by  his  invention  of  1863.  He  took 
the  Goes  wrench  of  1841,  with  its  main  bar,  fixed  jaw,  adjust- 
able jaw,  attachment  thereto,  screw,  bearing,  plate,  ferrule, 
wooden  handle,  screw  nut  and  extension  of  main  bar,  all  as 
they  were,  and,  in  place  of  one  rosette,  he  put  in  three  paral- 
lel rosettes,  with  narrower  peripheries,  revolving,  at  right  an- 
gles to  the  line  of  motion  of  the  adjustable  jaw,  in  three  par- 
allel grooves  in  the  adjacent  face  of  the  main  bar,  each  groove 
bearing  against  both  faces  of  its  rosette,  so  as  not  only  to  pre- 
vent the  rosette  and  the  screw  from  being  carried  bodily  to- 
wards the  fixed  jaw,  but  to  cause  the  back  thrust  to  be  re- 
ceived by  the  side  of  the  groove  farthest  from  the  fixed  jaw, 
instead  of,  as  before,  by  the  plate.  The  grooves  being  cut  in 
the  main  bar,  the  back  thrust  was  intercepted  by  them,  and 
the  plate  and  the  ferrule,  and  thus  the  wooden  handle,  were 
relieved  from  all  liability  to  injury  from  the  back  thrust, 
while  the  rosette  was  retained  in  the  same  relative  position  to 
the  handle  which  it  had  in  the  Coes  wrench  of  1841.  In  the 
original  patent  of  1863  the  plate  and  the  ferrule  together  are 
called  the  ferrule  E,  and  it  is  stated  that  by  the  new  arrange- 
ment the  pressure  which  would  otherwise  come  on  the  fer- 
rule is  taken  off  from  it,  such  pressure  being  ^*  often  so  great 
as  to  break  it  off,  or  displace  it,  thus  rendering  the  whole 
wrench  useless."  The  daim  in  that  patent  states  that  the  ar- 
rangement relieves  the  ferrule  from  all  strain,  while  the 
rosette  is  retained  in  the  same  relative  position  as  respects  the 
handle  of  the  wrench.  The  re-issue  states  that  the  nature  of 
the  invention  relates  to  a  mode  of  constructing  the  Coes 
wrench  patented  in  1841  in  such  a  manner  that  the  handle 
shall  be  relieved  from  the  back  thrust  of  the  screw,  the  arrange- 
ment of  the  wrench  of  1841  being  that  the  rosette  pressed 
against  the  ferrule,  (the  ferrule,  £,  being  the  plate  and  the 
Vol.  XX.— 15 


826  OONNBCnCUT, 


Goes  9.  The  Ck>lliik8  Ck>mpttn7. 


f emde  together,)  and  the  ferrule  against  the  front  end  of  ihe 
handle,  whereby  the  handle  was  often  split  and  broken.  It  is 
not  said,  in  the  re-issne,  that  the  rosette  continues  to  mamtain 
always  the  same  position  rdatively  to  the  handle,  bat  that  is 
necessarily  implied  in  speaking  of  the  wrench  improved  npon 
as  the  Coes  wrench  patented  in  1841,  and  is  a  necessary  result 
of  what  is  described  in  the  text  and  shown  in  the  drawings. 
The  re-issue  also  states  that  the  advantage  of  the  improve- 
ment is  that  the  pressure,  which  would  otherwise  come  upon 
the  handle,  is  transferred  to  the  shank  of  the  wrench. 

In  the  monkey  wrenches  used  before  the  Goes  patent  of 
1841,  a  screw  nut  on  the  body  of  the  main  bar  moved  the 
movable  jaw,  a  screw  being  cut  on  the  body  of  the  main  bar, 
as  shown  in  figure  2  of  the  Coes  patent  of  1841.  In  that 
form  the  direct  linear  or  columnar  strength  of  the  main  bar 
was  availed  of  to  resist  the  back  thrust.  When  the  Goes  im- 
provement of  1841  was  introduced  that  advantage  was  thrown 
away.  The  improvement  of  Taft  in  1863  was  an  effort  to  re- 
store that  advantage  and  yet  retain  the  Coes  improvement  of 
1841. 

In  the  defendant's  wrench  the  Coes  wrench  of  1841  is 
taken,  with  its  main  bar,  fixed  jaw,  adjustable  jaw,  attach- 
ment thereto,  screw,  rosette,  beiuing  and  plate.  But  under- 
neath the  plate  a  screw  nut  is  put  on  the  extension  of  the 
main  bar,  a  screw  thread  being  cut  in  the  extension,  and  this 
screw  nut  is  screwed  up  tightly  against  the  bottom  of  the 
plate,  so  that  the  back  thrust  comes  against  the  extension  at 
the  screw  thread.  The  wooden  handle  is  slipped  over  the 
end  of  the  extension  and  is  held  up  against  the  bottom  of  the 
said  screw  nut  by  a  screw  nut  at  the  extreme  end  of  the  ex- 
tension below  the  handle.  The  rosette  is  the  same  as  the 
Coes  rosette  of  1841  and  always  maintains  the  same  position 
relatively  to  the  handle. 

The  first  daim  of  the  re-issue,  which  is  the  only  claim  al- 
leged to  have  been  infringed,  is  a  daim  to  ^^  an  improved 
Coes  wrench,  so  constructed  that  the  thrust  or  back  strain  of 
the  rosette  screw,  when  the  wrench  is  used^  shall  be  borne  by 


JANUARY,  1882.  227 


Goes  V.  The  CoUinB  Ck>mpaii7. 


the  shank,  instead  of  the  handle  of  the  wrench,  substantially 
as  described."  Mr.  Waters,  an  expert  for  the  plaintiff,  testi- 
fies that  the  defendant's  wrench  is,  in  his  judgment,  the  same 
in  its  construction  and  mode  of  operation  as  the  wrench  de- 
scribed in  the  re-issue  and  referred  to  in  the  first  claim,  be- 
cause the  essential  novelty  of  the  wrench  described  in  the  re- 
issue consists  in  a  mode  of  construction  to  relieve  the  Coes 
wrench  of  the  difScnlty  described  in  the  re-issue ;  that  this  is 
done  in  the  re-issue  by  bringing  the  back  thrust  to  bear 
against  projections  on  the  main  bar,  running  across  it,  against 
which  the  rosettes  on  the  screw  act ;  that  in  the  defendant's 
wrench  the  end  throst  is  taken  on  the  plate,  and  then,  through 
the  screw  nut,  comes  on  the  shank  by  means  of  the  threads 
inside  of  the  screw  nut  and  the  threads  on  the  shank,  which 
bear  against  the  former  threads ;  and  that  this  is  only  an 
equivalent  for  the  projections  on  the  main  bar,  in  the  re-issue, 
against  which  the  rosettes  bear.  Another  of  the  plaintiff's 
experts,  Mr.  E.  S.  Benwick,  states  that  the  two  wrenches 
obtain  by  substantially  the  same  means  the  result  of  sustain- 
ing the  strain  of  the  movable  jaw  and  of  the  rosette  screw 
by  the  shank  or  bar  of  the  wrench,  in  this,  that  in  the  de- 
fendant's wrench  the  rosette  and  the  screw  are  combined  with 
the  rectangular  part  of  the  shank,  or  its  equivalent,  by  a 
notch  which  limits  the  movement  of  the  rosette  and  screw  in 
both  directions,  without  the  intervention  of  the  handle,  the 
notdi  having  its  upper  shoulder  formed  by  a  portion  of  the 
rectangular  shank  itself,  and  its  lower  shoulder  formed  by 
the  upper  surface  of  the  plate,  which  plate  is  rigidly  secured 
to  the  shank;  and  that  holding  the  lower  shoulder  of  the 
notch  to  the  shank  by  the  screw  nut  in  the  defendant's  wrench 
is  a  well  known  substitute  for  the  Taft  method  of  holding 
the  lower  shoulders  of  the  grooves  to  the  shank  by  the  sub- 
stance of  the  material  of  which  they  are  composed. 

It  is  entirely  clear,  as  is  testified  to  by  Mr.  H.  B.  Benwick, 
the  defendant's  expert,  that  if,  in  the  Coes  wrench  of  1841, 
the  back  thrust  of  the  screw  reaches  the  plate  it  is  trans- 
mitted through  it  and  the  wooden  handle  and  the  nut  at  the 


228  CONNECTICUT, 


Coes  V.  The  Collins  Company. 


end  of  the  shank,  which  is  an  extension  of  the  main  bar,  to 
the  shank,  so  that  it  is  borne  by  the  shank.  It  comes  back 
thus  to  the  column  formed  of  the  main  bar  and  shank,  as  one 
piece.  If  the  plate  bends  or  the  ferrule  is  displaced  or  the 
wooden  handle  is  broken,  those  are  incidents  of  the  pressure, 
and  those  incidents  happen  only  because  the  thrust  is  being 
resisted  by  the  shank.  Taft  brought  the  pressure  back  to 
the  main  bar  by  taking  it  ofi  by  the  grooves  and  rosettes,  be- 
fore reaching  the  plate,  thus  relieving  not  only  the  wooden 
handle  and  the  end  nut  but  also  the  plate.  He  did  this  by 
right  angled  grooves  and  rosettes,  interposed  before  reaching 
the  plate.  If  the  first  claim  of  the  re-issue  claims  any  more 
than  this,  it  cannot  be  maintained.  As  a  claim  to  so  con- 
structing a  Coes  wrench  of  1841,  that  the  back  thrust  shall  be 
borne  by  the  shank  ultimately,  through  the  plate  and  the 
handle  and  the  end  nut,  it  would  cover  the  Coes  wrench  of 
1841.  As  a  claim  to  having  the  shank  bear  the  thrust  at 
some  point  before  the  handle  is  reached,  without  reference  to 
the  mechanical  means,  it  is  invalid.  It  must  be  regarded  as 
a  claim  to  the  means  shown  ^'  substantially  as  described." 
As  such  it  is  not  infringed.  Taft  left  the  plate  and  the 
handle  and  the  end  nut  outside  of  the  course  of  the  back 
thrust.  The  defendant's  wrench  does  not  leave  the  plate 
outside  of  such  course.  In  it  the  thrust  acts  fully  on  the 
plate  and  a  screw  nut  is  interposed  between  the  handle  and 
the  plate,  having  on  it  and  on  the  shank  the  usual  spiral 
threads.  The  two  inventions  are  inventions  in  different  di- 
rections, though  both  have  a  common  ultimate  object  and  de- 
sign. The  wooden  handle  is  relieved  in  both.  But  that  is 
not  sufficient  to  make  out  infringement.  The  plate  is  re- 
lieved by  Taft,  and  not  by  the  defendant. 

Claim  one  of  the  Taft  re-issue  must  be  read  as  a  claim  to 
an  improved  Coes  wrench,  constructed  substantially  as  de- 
scribed. What  is  said  in  it  about  the  bearing  of  the  thrust 
by  the  shank  instead  of  the  handle  is  merely  a  statement  of  a 
result  which  the  construction  will  effect,  and  is  not  a  state- 
ment of  means  or  mechanism.    It  is  a  daim  to  means,  to  the 


JANUARY,  1882.  229 


Bischofbheim  tr.  Baltzer. 


mechanism  described  which  effects  the  result  stated.    The 
means  employed  by  the  defendant  are  different  and  are  not  a 
mechanical  equivalent  for  the  means  in  the  re-issue. 
The  bill  is  dismissed,  with  costs. 


George  Z.  Roberts^  for  the  plaintiff. 
William  E,  Svmonds^  for  the  defendant. 


Henby  Louis  Bisohoffsheih 
Herman  R.  Baltzer  and  William  G.  Taaks.    In  Equity. 

The  modes  of  taking  tettimony  in  equity  cases  explained. 

The  proyiaion  of  Rule  68,  in  Equity,  for  taking  testimony  in  an  equity  case, 

after  it  is  at  issue,  by  depositiou,  according  to  the  Acta  of  Congress,  is  still 

in  force. 
Where  testimony  in  a  foreign  country  can  be  taken  orally,  it  ought  not,  except 

for  special  reasons,  to  be  taken  otherwise. 
The  plaintiff  in  an  equity  suit  having  applied  for  an  order  for  a  commission  to 

examine  himself  on  written  interrogatories  to  be  annexed  to  the  commission, 

on  an  affidavit  showing  that  he  expected  to  prove  by  himself  the  material 

averments  in  the  bill,  or  many  of  them,  the  Court  allowed  the  defendant  to 

cross^xamine  him  orally. 

(Before  Blatohfobd,  J.,  Southern  District  of  New  York,  January  16th,  1882.) 

Blatchfobd,  J.  This  is  a  suit  in  equity.  Issue  was  joined 
by  the  filing  of  a  replication  to  the  answer,  December  Ist, 
1879.  On  the  5th  of  February,  1881,  the  plaintiffs  solicitors, 
not  haying  before  taken  any  testimony,  served  a  notice  in 
writing  on  the  defendants'  solicitors,  that  the  plaintiff  "  de- 
sires the  evidence  to  be  adduced  in  this  cause  to  be  taken 
orally,"  and  that  witnesses  would  be  examined  in  the  city  of 
New  York,  on  February  11th.    Two  witnesses  for  the  plaint- 


230  SOUTHERN   DISTRICT  OF  NEW  YORK, 

Bischoflbkeim  «.  Baltser. 

iff  were  examined  orally  under  this  notice,  the  last  one  in 
June,  1881.  The  time  to  take  testimony  has  been  extended 
and  has  not  expired^.  In  May,  1881,  the  defendants'  solic- 
itors having  been  previously  informed  by  the  plaintifPs  solic- 
itors that  the  latter  intended  to  have  a  commission  issued  to 
take  in  London,  England,  the  deposition  of  the  plaintiff,  who 
resides  in  London,  gave  notice  in  writing  to  the  plaintiff's  so- 
licitors that  the  defendants'  solicitors  desired  to  cross-examine 
the  plaintiff  orally,  and  requested  them  to  have  the  commis- 
sion executed  during  the  ensuing  July  or  September,  when 
one  of  the  defendants'  solicitors  would  be  in  London  and  at- 
tend to  the  matter.  To  this  notice  no  reply  was  ever  re- 
ceived. One  of  the  witnesses  so  examined  in  New  York  was 
the  confidential  manager  of  the  plaintiff's  business,  residing 
in  London,  and  it  appears  that  the  plaintiff  has  there  legal 
advisers  who  have  been  consulted  concerning  the  matters  in 
issue  herein. 

The  plaintiff  now  applies  for  an  order  for  a  commission 
to  examine  himself  on  written  interrogatories  to  be  annexed 
to  the  commission,  on  an  aflSdavit  showing  that  he  expects  to 
prove  by  himself  the  material  averments  in  the  bill  or  many 
of  them.  The  defendants  ask  that  if  a  commission  to  exam- 
ine the  plaintiff  on  written  interrogatories  be  issued,  the  de- 
fendants have  leave  to  cross-examine  the  plaintiff  orally  them- 
selves. 

By  Kule  67  in  Equity,  as  in  force  prior  to  the  December 
Term,  1861,  testimony  in  suits  in  equity  might  be  taken  by 
commission,  on  written  interrogatories  and  cross-interrogatories, 
but  by  agreement  it  might  be  taken  by  oral  interrogatories, 
under  a  commission.  This  applied  even  to  testimony  to  be 
taken  where  a  subpoena  from  the  Court  could  reach  the  wit- 
ness. By  Kule  68,  testimony  might  also  be  taken  in  the 
cause,  after  it  was  at  issue,  by  deposition,  according  to  the 
Acts  of  Congress.  Under  Rule  69,  publication  of  the  testi- 
mony taken  under  such  commissions  might  be  ordered  im- 
mediately upon  the  return  of  the  commissions.  The  idea 
was  that  it  was  not  known  to  the  parties  what  the  witnesses 


JANUARY,  188a.  281 


Biflohoffiiheim  v.  Baltcer. 


had  testified  to,  the  commisfiion  being  executed  withoat  the 
preeeDce  of  either  party  or  solicitor.  Formerly,  the  general 
mode  in  England  of  examining  witnesses  in  equity  was  by 
interrogatories  .in  writing  exhibited  by  the  party.  {DanidPs 
Ch.  Pr.,  ch.  22,  §  9.)  At  the  December  Term,  1861,  (1 
Blacky  6,)  a  new  practice  was  introduced,  by  a  Rule  made  by 
the  Supreme  Court  The  clause  in  Bule  67  relating  to  taking 
testimony  by  agreement  on  oral  interrogatories  was  repealed, 
and  the  Rule  was  amended  by  adding  to  it  provisions  making 
oval  examination  the  rule,  if  either  party  desires  it,  and  ex- 
amination by  written  interrogatories  the  exception.  Under 
Rule  67  as  amended,  if  neither  party  gives  notice  to  the  other 
that  he  desires  the  evidence  to  be  taken  orally,  then  the  testi- 
mony may  be  taken  by  commission,  as  formerly,  even  where 
the  witnesses  are  within  the  reach  of  the  subpoena  of  the 
Court.  But  if  either  party  gives  notice  to  the  other  that  he 
desires  the  evidence  to  be  taken  orally,  then  ^^  all  the  wit- 
nesses to  be  examined  shall  be  examined  before  one  of  the 
examiners  of  the  Court,  or  before  an  examiner  to  be  specially 
appointed  by  the  Court,"  the  examination  to  take  place  on 
notice,  in  the  presence  of  the  parties  and  by  counsel,  and 
the  witnesses  to  be  cross-examined  and  re-examined,  as  nearly 
as  may  be  in  the  mode  used  in  common  law  Courts.  At  the 
elose  of  the  added  provisions  is  this  :  ^^  Testimony  may  be 
taken  by  commission  in  the  usual  way  by  written  interroga- 
tories and  cross-interrogatories,  on  motion  to  the  Court  in  Term 
time,  or  to  a  judge  in  vacation,  for  special  reasons,  satisfac- 
tory to  the  Court  or  judge."  This  refers  to  the  former  way, 
to  the  way  for  which  the  new  way  was  substituted,  in  case 
either  party  should  give  notice  of  his  desire  for  an  oral  tak- 
ing ;  and  the  notice  so  given  was  thus  made  subject  to  the 
power  of  the  Court,  for  special  reasons,  to  annul  the  usual 
effect  of  the  notice.  This  last  provision  about  taking  testi- 
mony by  commission  in  the  usual  way  has  no  reference  to 
issuing  a  dedimua  potestaiem^  under  §  866  of  the  Revised 
Statutes,  formerly  §  80  of  the  Act  of  September  24th,  1789, 


282  SOUTHERN  DISTRICT  OF  NEW  YORK, 

^ ^ *  

BiBchoffsheim  v.  Baltser. 

(1  TJ.  S.  Stat,  at  Large^  90.)  It  refers  to  the  usual  way  be- 
fore practised  in  eqnitj  cases. 

Depositions  may  be  taken  nnder  a  dedimtis  potestatenij 
nnder  §  866,  ^^  according  to  common  usage,"  now  as  at  any  time 
hitherto,  in  a  suit  in  equity.  The  words  ^'  common  usage," 
in  regard  to  a  suit  in  equity,  refer  to  the  practice  in  Courts 
of  equity.  Under  this  practice,  it  was  usual  to  examine  wit- 
nesses abroad  by  written  interrogatories  and  cross-interroga- 
tories. 

The  provision  of  Kule  68,  for  taking  testimony  in  an 
equity  case,  after  it  is  at  issue,  by  deposition,  according  to  the 
Acts  of  Oongress,  is  still  in  force.  Under.  §§  863  and  1,750  of 
the  Bevised  Statutes,  depositions  de  bene  esse  in  dvil  causes 
may  be  taken  in  a  foreign  country  by  any  secretary  of  lega- 
tion or  consular  officer.  The  mode  of  taking  such  depod- 
tions  under  §§  863,  864  and  865  is  by  oral  questions  put  at 
the  time,  if  desired,  and  not  necessarily  by  written  interroga- 
tories given  to  the  officer  before  commencing  the  taking.  It 
is  the  same  mode  provided  for  by  the  amendment  to  Role  67. 
As,  after  either  party  has  given  notice  to  the  other  that  he 
desires  the  evidence  to  be  adduced  in  the  cause  to  be  taken 
orally,  the  testimony  is  not,  except  for  special  reasons,  to  be 
taken  otherwise,  so,  by  analogy,  where  testimony  in  a  foreign 
country  can  be  taken  orally,  it  ought  not,  except  for  special 
reasons,  to  be  taken  otherwise.  What  would  in  any  given 
case  be  sufficient  special  reasons  must  be  left  to  be  decided  in 
each  case.  In  the  present  case,  the  defendants  are,  I  think, 
entitled  to  cross-examine  the  plaintiff  orally.  There  is  no 
reason  why  his  direct  examination  should  not  be  taken  on 
written  interrogatories,  if  desired. 

J.  H.  Choate^  for  the  plaintiff. 

C.  M.  Da  Costa,  for  the  defendants. 


JANUARY,   1882.  '  238 


Matthews  v.  Paffer. 


John  Matthews 
vs. 
Alyin  D.  Puffer  and  othebs.    In  Equity. 

P.,  in  a  mat  in  eqaily  against  him  for  the  infringement  of  a  patent^  moyed  to 
set  aside  the  senrice  of  the  sabposna  on  him,  on  the  ground  that  the  service 
was  made  upon  him  while  he  was  attending  the  examination  of  witnesses  in 
Kew  York  on  an  interference  depen^ng  between  him  and  the  plaintiff  before 
the  United  States'  Patent  Office.  His  moying  affidayits  did  not  show  where 
he  resided  or  carried  on  business.  The  motion  was  denied.  P.  afterwards 
renewed  the  motion  on  papers  showing  that  at  the  time  of  the  service  he  was 
a  dtixen  and  resident  of  Maasachusetts :  Held,  that  the  defendant  had 
wsived  the  objection  to  the  service,  as  made  while  he  was  protected  by  a 
privilege,  by  not  showing,  on  the  first  motion,  where  he  resided. 

(Beimre  Blatohfokd,  J.,  Southern  Diatriot  of  New  York,  January  18th,  1882.) 

Blatohfobd,  J.  The  defendant,  Alvin  D.  Puffer,  hereto- 
fore made  a  motion  to  this  Court  founded  on  affidavits,  to 
set  aside  the  service  made  on  him  of  the  subpoena  to  appear 
and  answer  herein.  The  suit  is  one  for  the  infringement  of 
letters  patent.  The  motion  was  opposed  and  denied  by  an 
order  made  December  30th,  1881.  The  reasons  set  out  in 
the  motion  papers,  as  grounds  for  the  motion,  were,  that  the 
service  was  made  upon  the  said  defendant  while  he  was  at- 
tending the  examination  of  witnesses  in  the  office  of  the 
counsel  for  the  plaintiff  herein,  in  the  city  of  New  York,  in 
a  caDse  of  interference  then  depending  between  him  and  the 
plaintiff  before  the  United  States'  Patent  Office,  and  when  he 
was  lawfully  attending  at  said  office  '^  in  his  right  as  a  party 
to  said  interference  cause."  The  moving  affidavits  did  not 
show  where  the  defendant  resided,  or  where  he  carried  on 
business,  but  merely  that  he  "  went  to  New  York  "  to  attend 
such  examination,  not  stating  from  what  place  he  went.  The 
motion  was  made  upon  the  bill  as  a  part  of  the  moving  papers. 
The  bill  speaks  of  the  defendants  as  ^'  doing  business  "  at  Boston 


384  SOUTHERN  DISTRICT    OF  NEW  YORK, 

Matthews  v.  Poifer. 

and  "New  York,  and  as  being  citizens  of  the  United  States. 
In  opposition  to  the  motion,  it  was  shown  by  affidavits  on 
the  part  of  the  plaintifi,  that  the  defendant  served  had  a 
place  of  business  in  the  city  of  New  York  and  one  also  in 
Boston.  In  regard  to  him  the  plaintiff  said,  in  an  affidavit: 
"  His  place  of  residence  in  New  York  is  not  known  to  me 
and  I  have  been  unable  to  ascertain  it."  The  defendant, 
after  hearing  the  affidavits  in  opposition  to  the  motion,  chose 
to  submit  it  for  decision,  and  did  not  ask  leave  to  withdraw 
it  and  renew  it  on  further  papers  or  to  put  in  further  papers. 
The  Court,  in  denying  the  motion,  said  :  ^^  It  does  not  any- 
where appear  that  A.  D.  Puffer  is  a  citizen  of  Massachusetts, 
or  resides  in  Massachusetts,  or  is  not  a  citizen  of  New  York, 
or  does  not  reside  in  New  York.  The  bill  alleges  that  be 
does  business  at  New  York,  and  is  a  citizen  of  the  United 
States.  It  is  shown  that  he  has  a  place  of  business  in  New 
York  city.    The  motion  is  denied." 

The  defendant  now,  without  leave,  renews  the  motion,  on 
papers  showing  that  at  the  time  of  the  service  he  was  a  cit- 
izen and  a  resident  of  the  State  of  Massachusetts.  This  was 
a  fact  which  the  defendant  was  called  upon  to  show,  on  the 
first  motion.  It  is  not  a  newly-discovered  fact  It  was  in- 
volved in  and  pertinent  to  the  first  motion.  It  was  called  to 
the  attention  of  the  defendant  by  the  opposing  papers  and 
yet  the  judgment  of  the  Oourt  was  invoked  on  the  case. 
The  Oourt  had  jarisdiction  of  the  subject-matter  of  the  snit. 
The  service  of  the  subpoena  was  made  on  the  defendant  pe^ 
fionaUy  in  this  district.  The  objection  to  the  service,  as  made 
while  the  defendant  was  protected  by  a  privilege,  was  one 
which  the  defendant  could  waive,  and  one  which  he  might 
waive  by  not  making  it  when  he  ought  to  make  it,  or  by 
not  making  it  in  a  proper  way,  as  well  as  by  not  making  it  at 
all.  It  is  one  of  those  irregularities  which  must  be  promptlj 
availed  of.  In  the  present  case  it  must  be  held  that  the  de- 
fendant lost  his  right  to  show  that  he  was  a  citizen  and  resi- 


JANIJABT,  1882.  235 


The  XTmted  States  v.  Jones. 


dent  of  HaasachusettB,  and  the  motion  to  set  aside  the  serr- 
ioe  of  the  snbpcena  is  denied. 

A.  V.  Brie^eny  for  the  plaintiff. 
E.  C.  Weth^  for  the  defendants. 


The  UinTED  States  vs.  William  Jonbs. 

« 

Sridflooethst  tbe  sMosed  devised  a  scheme  to  put  counterfeit  money  in  cireola- 
tioDy  by  sending  throngh  the  maU,  to  one  B.,  a  letter  calcolated  to  induce  B. 
to  porohase  oowiterfeit  money  at  a  low  price,  fer  the  purpose  of  putting  it  off 
as  good,  snd  that,  in  order  to  carry  said  scheme  into  effect,  he  placed  in  a 
post  office  a  letter  addressed  to  B.,  for  the  purpose  of  inducing  R  to  pnr- 
ehsss  eonntarfeit  money  at  a  low  price,  in  order  that  he  might  put  it  off  as 
good  money,  for  its  face  Yalne,  is  sufficient  to  establish  an  offence  under 
§  5,480  of  the  Berised  Statutes,  although  no  eyidence  is  given  to  show  an 
intention  in  the  accused  to  defraud  B.,  or  any  other  particular  person. 

The  flovpMt  ddicd,  in  such  offence,  is  the  mailing  of  the  letter  in  execution  of  the 
nnlawM  scheme. 

On  tbe  trial,  the  Court  refused  to  permit  the  jury  to  inspect  a  copy  of  the  letter 
proved  to  have  been  mailed,  which  copy  the  accused  made  in  the  presence  of 
the  jury:    Hdd,  no  error. 

Hts  Court  also  refused  to  permit  an  expert  in  handwriting  to  say  whether  the 
originsl  letter  put  in  evidence  by  tbe  Govermneot^  and  the  copy  of  it  made 
by  the  accused  in  the  presence  of  the  jury,  were  in  the  same  handwriting : 
AU^  no  error. 

(Before  Blavohvobd,  Bsrbdxot  and  Baowv,  JJ.,  January  2Sd,  1882.) 

fiiNiEDicr,  J.  The  accnsed  was  tried  upon  an  information 
fnimed  under  §  5,480  of  the  Revised  Statutes.  Having  been 
eonvieted,  he  now  moves  for  a  new  trial.  One  ground  of  the 
Application  is,  that  the  evidence  failed  to  make  out  an  ofienoe 
BQch  as  is  described  in  §  5,480.  The  evidence  was,  and  the 
JQiy,  under  the  charge,  must  have  found,  tliat  the  accused  de- 
rised  a  scheme  to  put  counterfeit  money  in  circulation,  by 
aending  through  the  mail,  to  one  Bates,  a  letter  calculated  to 


236  SOUTHERN  DISTRICT  OF  NEW  YORK, 

The  United  States  v,  Jones. 

induce  Bates  to  purchase  counterfeit  money  at  a  low  price, 
for  the  purpose  of  putting  it  off  as  good.  The  evidence  fur- 
ther showed,  and  the  jury  found,  that  the  accused,  in  order  to 
carry  his  said  scheme  into  effect,  did  place  in  the  post  office, 
at  New  York  city,  a  letter  such  as  is  described  in  the  infor- 
mation, for  the  purpose  of  inducing  Bates  to  purchase  counter- 
feit money  at  a  low  price,  in  order  that  he  might  put  it  off 
as  good  money,  for  its  face  value.  This  evidence  was  suffi- 
cient to  make  out  an  offence  such  as  is  created  by  the  statute 
under  which  this  information  was  framed,  notwithstanding 
the  absence  of  any  evidence  to  show  an  intention  on  the  part 
of  the  accused  to  defraud  Bates  qr  any  other  particular  per- 
son. The  scheme  to  defraud,  described  in  the  information, 
may  be  a  scheme  to  defraud  any  person  upon  whom  the  bad 
money  might  be  passed,  and  it  is  within  the  scope  of  the  stat- 
ute, aJthough  no  particular  person  had  been  selected  as  the 
subject  of  its  operation.  Any  scheme  the  necessary  result  of 
which  would  be  the  defrauding  of  somebody  is  a  scheme  to 
defraud,  within  the  meaning  of  §  5,480 ;  and  a  scheme  to  put 
counterfeit  money  in  circulation  is  such  a  scheme.  We  are, 
therefore,  of  the  opinion,  that  the  offence  charged  was  proved 
by  the  evidence. 

Another  point  taken  is,  that  there  was  no  evidence  of  the 
oorpita  delicti^  except  the  defendant's  admission.  But,  the 
gist  of  the  offence  consists  in  the  abuse  of  the  mail.  The 
corpses  delicti  was  the  mailing  of  the  letter  in  execution  of 
the  unlawful  scheme.  There  was  direct  evidence  of  the  mail- 
ing of  the  letter  by  some  one,  and  the  letter  itself  showed  its 
unlawful  character.  This  much  being  shown,  it  was,  cer- 
tainly, competent  to  prove  that  the  defendant  was  the  sender 
of  the  letter,  by  his  admission  to  that  effect. 

Another  point  made  is,  that  error  was  committed,  at  the 
trial,  by  the  refusal  to  permit  the  jury  to  inspect  a  copy  of 
the  letter  proved  to  have  been  mailed,  which  copy  the  ac- 
cused made  in  the  presence  of  the  jury.  In  this  there  was 
no  error.  It  is  not  allowable,  upon  an  issue  as  to  hand- 
writing, to  put  in  evidence  papers,-  otherwise  irrelevant. 


JANUARY,   1882.  237 


While  If.  Arthur. 


merely  for  the  puqx>Be  of  enabling  the  jnry  to  institnte  a  com- 
parison of  the  writing.  The  statute  of  the  State  of  Kew 
York  permitting  a  comparison  of  writings,  for  the  purpose  of 
determining  handwriting,  has  no  effect  upon  criminal  proceed- 
ings in  the  Courts  of  the  United  States.  In  those  Courts,  the 
extent  of  the  rule  is  to  permit  the  jury  to  compare  writings 
lawfully  in  evidence  for  some  other  purpose.  It  has  never 
been  permitted  to  introduce  writings  for  the  mere  purpose  of 
enabling  the  jury  to  institute  a  comparison  of  writings.  To 
permit  the  practice  here  sought  to  be  established  would  be  to 
permit  the  defendant  to  make  evidence  for  himself. 

The  last  point  made  is,  that  error  was  committed  in  refus- 
ing to  permit  an  expert  in  handwriting  to  say  whether  the 
original  letter  put  in  evidence  by  the  Government,  and  the 
copy  of  it  made  by  the  accused  in  the  presence  of  the  jury, 
were  in  the  same  handwriting.  Here  was  no  error.  It  was 
not  shown  that  the  expert  knew  the  defendant's  handwriting, 
and  whether  the  two  letters  were  in  the  same  handwriting 
was  immaterial,  except  upon  the  assumption  that,  because  the 
copy  of  the  letter  was  made  by  the  defendant,  it  was  in  his 
usual  handwriting,  an  assumption  by  no  means  justifiable  by 
the  circumstances  under  which  the  copy  was  made. 

The  motion  is,  accordingly,  denied. 

William  P.  Fiero^  {Assistant  District  Attorney y)  for  the 
United  States. 


Charles  S.  Spencer j  for  the  defendant. 


Jambs  F.  WHrrs  akd  othebs  vs,  Chestsb  A.  Abthub. 

On  the  Ist  of  March,  1881,  a  jadgment  was  docketed  in  this  Court,  in  favor  of 
the  plaintiffii,  and  against  the  defendant,  for  a  sum  of  money,  in  a  suit  against 
a  late  collector  of  the  port  of  New  York,  to  recover  back  money  paid  to  him 
ISor  costoma  duties,  and  by  him  paid  into  the  Treasury,  in  the  performance  of 
his  official  duty.    Prior  to  that,  and  at  the  trial  of  the  action,  the  Oeort,  on- 


288  SOUTHKRN  DISTRICT  OP  NEW  YORK. 

White  If.  Arthur. 

der  §  989  of  the  Rerieed  Statates,  made  a  certificate  of  probable  caoee.  Tlie 
QoTemment  paid  to  the  plaintifb  the  amount  of  the  judgment,  but  refined  to 
pay  any  interest  on  sach  amonnt.  The  United  States'  attorney  then  implied 
to  the  Gonrt  to  require  the  plaintiflb  to  execute  a  fnU  satisfiution  piece  of  the 
judgment,  or  to  make  an  order  that  foil  satisfisctlon  of  the  judgment  be  entered 
on  the  records  of  the  Court :  Meld,  that  the  judgment  was  satisfied  and  thtt 
the  clerk  must  make  all  proper  entries  to^that  effect  in  the  records  of  the 
Court 

The  question  of  the  payment  of  interest  by  the  United  States  oonmdered,  end 
the  legislation  and  practice  on  the  subject  reriewed. 

Whatever  may  haye  been  the  practice  under  the  permanent  impropriation  in  the 
Reyised  Statutes,  and  under  statutes  prior  to  the  appropriation  bill  of  1878, 
it  is  clearly  expressed  in  the  appropriation  bills  of  1878, 1879, 1880  and  1881, 
that,  where  there  are  Judgments  against  collectors  of  customs  for  duties  paid 
under  protest,  interest  accruing  after  judgment,  on  the  amount  of  the  judg- 
ment, or  on  the  duties  improperly  paid,  is  not  to  be  paid  by  the  Oorenimeot^ 
either  from  the  permanent  appropriation  or  from  the  special  appropriationa. 

Where  there  has  been  a  certificate  of  probable  cause,  under  §  989,  there  csn  be 
no  execution  against  the  collector,  and  he  is  not  liable,  under  the  judgment, 
for  interest  on  it. 

(Before  Blatohtobd,  J.,  Southern  District  of  New  York,  January  25th,  1881) 

Blatohfobd,  J.  This  ifi  a  snit  against  a  late  collector  of 
the  port  of  New  York,  to  recover  back  money  paid  to  him  for 
cnstomB  duties,  and  by  him  paid  into  the  Treasory  in  the  per- 
formance of  his  official  duty.  On  the  Ist  of  March,  1881,  a 
judgment  in  this  suit  was  docketed  in  this  Court  in  favor  of 
the  plaintiffs  and  against  the  defendant,  for  $2,295.90.  Prior 
to  that,  and  at  the  trial  of  the  action,  this  Court,  under  §  989 
of  the  Revised  Statutes,  made  a  certificate  of  probable  cause. 
It  is  provided  as  follows  by  §  989 :  "  When  a  recovery  is  had 
in  any  suit  or  proceeding  against  a  collector  or  other  officer  of 
the  revenue,  for  any  act  done  by  him,  or  for  the  recovery  of 
any  money  exacted  by  or  paid  to  him  and  by  him  paid  into 
the  Treasury,  in  the  performance  of  his  official  duty,  and  the 
Court  certifies  that  there  was  probable  cause  for  the  act  done 
by  the  collector  or  other  officer,  or  that  he  acted  under  the 
directions  of  the  Secretary  of  the  Treasury,  or  other  proper 
officer  of  the  Government,  no  execution  shall  issue  against 
such  collector  or  other  officer,  but  the  amount  so  reeovered 


JANUARY,  1882.  239 


White  V.  Arthur. 


fihall,  npon  final  judgment,  be  provided  for  and  paid  oat  of 
the  proper  appropriation  from  the  Treasury." 

On  the  16tli  of  March,  1881,  the  Commissioner  of  Onstoms 
addressed  a  circular  to  the  First  Auditor  of  the  Treasury,  stat- 
ing that,  in  view  of  the  decision  of  the  Supreme  Court  in 
United  States  v.  Skermcm^  (8  Otto^  565,)  and  of  the  decision 
of  the  First  Comptroller  of  the  Treasury  in  Steph<m^9  Gam^ 
(96  Tnt,  Rev.  Record^  318,)  notlung  would  thereafter  be  al- 
lowed or  paid  by  the  United  States  on  judgments  against  cus- 
toms officers,  under  §  989,  beyond  the  amount  recovered  on 
final  judgment,  excluding  interest  on  the  amount  of  the  judg- 
ment. The  decision  in  Urdted  States  v.  Shermcm  was  made 
at  the  October  Term,  1878,  and  that  in  Stephani^e  Case  in  Au- 
gast,  1880. 

Under  instructions  from  the  Commissioner  of  Customs, 
dated  March  24th,  1881,  the  collector  of  the  port  of  New 
Fork  paid  to  the  plainti£b  $2,295.91,  the  amount  of  the  judg- 
ment, which  was  paid  and  received  without  prejudice  to  the 
claim  of  the  plaintiffs  for  interest  on  the  judgment  from 
March  1st,  1881.  The  plaintiffs  have  never  executed  any  sat- 
isfaction piece  of  the  judgment,  because  the  Commissioner  of 
Customs  directed  the  collector  not  to  require  one,  in  order  to 
enable  the  plaintiffs  to  procure  a  judicial  determination  of  the 
legality  of  the  said  decision  of  the  Commissioner  of  Customs, 
of  March  16tli,  1881. 

The  plaintiffs  have  not  applied  to  the  Supreme  Court  for 
a  mandamus  to  compel  the  Secretary  of  the  Treasury  or  other 
officer  to  pay  the  interest  in  question,  but  the  United  States' 
attorney  now  applies  to  this  Court,  on  the  foregoing  facts,  to 
i^uire  the  plaintiffs  to  execute  and  deliver  a  full  and  com- 
plete satisfaction  piece  of  the  judgment,  or  to  make  an  order 
that  full  and  complete  satisfaction  of  the  judgment  be  entered 
<m  the  records  of  the  Court, 

Although  the  Commissioner  of  Customs  directed  the  col- 
lector not  to  require  a  satisfaction  piece,  it  must  be  assumed 
that  the  present  application  is  made  with  the  consent  of  the 
Treasury  Department,  and  that,  although  it  is  in  form  an  ap- 


34:0  SOUTHERN  DISTRICT  OF  NEW  YORK, 

White  V,  Arthur. 

plication  by  the  defendant,  it  is  also  an  application  by  the 
Goyernmeut,  for  the  parpose  of  obtaining  a  judicial  decision 
as  to  the  liability  of  the  Government  to  pay  the  interest.  It 
is  so  treated  by  both  parties.  The  United  States'  attorney  re- 
lies wholly  on  the  views  taken  in  the  decision  in  Stephanfs 
Case,  If  the  Government  is  liable  for  the  interest,  the  plaint- 
iffs ought  not  to  be  required  to  now  enter  satisfaction.  But 
the  further  question  arises,  whether  the  plaintiffs  are  now 
bound  to  enter  satisfaction  even  though  the  Government  may 
not  be  liable  for  the  interest. 

(1.)  The  question  of  the  liability  of  the  Government  to 
pay  the  interest  will  be  first  considered.  The  case  of  Steph- 
ani  was  a  judgment  against  a  collector  of  internal  revenue  to 
recover  back  taxes  illegally  exacted.  It  arose  under  §989. 
There  was  a  certificate  of  probable  cause,  and  the  question 
was  whether  interest  should  be  paid  from  the  date  of  that  cer- 
tificate. In  his  decision  the  First  Comptroller  says  that  the 
practice  theretofore,  in  his  office,  had  been  ^^  to  allow  interest 
on  judgments  from  the  date  of  the  certificate  of  probable 
cause  to  the  time  of  filing  the  judgment  in  the  Treasury  De- 
partment for  payment."  He  holds  that  the  expression  "  the 
amount  so  recovered,'*  in  §  989,  "  as  applied  to  the  Govern- 
ment, includes  only  the  sum  of  the  judgment  and  costs;'' 
that  the  Government  is  not  liable  to  pay  interest  by  force  of 
§966,  which  provides  that  interest  shall  be  allowed  on  aU 
judgments  recovered  in  civil  causes  in  a  Circuit  Court,  be- 
cause the  Government  is  not  named  nor  intended  by  clear 
inference ;  that  the  doctrine  that  interest  is  an  incident  of  the 
judgment,  and  so  follows  the  principal,  has  no  application  to 
judgments  against  the  Government,  or  to  judgments  which 
the  Government  has,  by  force  of  a  statute,  assumed  to  pay ; 
that  it  is  specially  provided  in  some  cases  that  the  Grovem- 
ment  shall  pay  interest  on  judgments  or  on  debts,  as  in  §  1,090 
and  in  the  Act  of  March  3d,  1875,  (18  U.  8.  Stat,  at  large, 
481,)  such  provision  being  necessary  "  because  at  common  law 
interest  would  not  be  paid ; "  and  that,  under  §  3,220,  authorit 
ing  the  repayment  to  internal  revenue  collectors  of  moneys 


JANUARY,  1882.  241 


White  V.  Arthur. 


recovered  against  them  in  a  Conrt  for  taxes  collected  by  them, 
and  of  damages  and  costs  recovered  against  them  in  a  snit 
brought  against  them  by  reason  of  anything  done  in  the  dne 
performance  of  official  dnty,  the  practice  had  been  to  allow 
interest  on  snch  judgments  from  the  time  of  rendition  nntil 
paid,  but  that  could  "  no  longer  be  permitted." 

It  is  contended  for  the  plaintiffs,  that  the  measure  of  the 
responsibility  of  the  Government  is  the  liability  of  the  de- 
fendant. There  can  be  no  doubt  that  the  liability  of  the 
defendant  to  the  plaintiff,  under  the  judgment,  under  §  966  of 
the  Revised  Statutes,  is  not  only  for  the  amount  of  the  judg- 
ment but  for  interest  on  it,  unless  that  liability  is  barred  by 
other  statutes.  It  is  provided  as  follows  by  §  966 :  "  Interest 
shall  be  allowed  on  all  judgments  in  civil  causes,  recovered  in 
a  Circuit  or  District  Court,  and  may  be  levied  by  the  marshal 
nnder  process  of  execution  issued  thereon,  in  all  cases  where, 
by  the  law  of  the  State  in  which  such  Court  is  held,  interest 
may  be  levied,  under  process  of  execution,  on  judgments  recov- 
ered in  the  Courts  of  such  State ;  and  it  shall  be  calculated 
from  the  date  of  the  judgment,  at  such  rate  as  is  allowed  by 
kw  on  judgments  recovered  in  the  Courts  of  such  State." 
Bat  the  question  is  whether  the  Government  has  assumed  to 
its  full  extent,  by  §  989,  the  liability  of  the  defendant.  It  is 
very  dear  that  it  has  not,  even  without  reference  to  §  966,  be- 
cause, by  §  989,  not  only  is  it  necessary  that  there  shall  have 
been  a  recovery  against  the  collector,  but  there  must  be  a  cer- 
tificate of  probable  cause,  before  the  liability  of  the  Govern- 
ment begins.  This  is  what  was  decided  in  United  States  v. 
Sherman^  a  case  to  which  the  provisions  of  §  12  of  the  Act  of 
March  3d,  1863,  (12  U.  8.  Stat,  at  Large,  741,)  now  §  989  of 
the  Revised  Statutes,  were  applied  by  §  8  of  the  Act  of  July 
28th,  1866,  (14  Id.,  329.)  In  that  case  there  was  a  judgment, 
in  June,  1869,  against  an  agent  of  the  Treasury  Department 
There  was  no  certificate  of  probable  cause  made  till  June, 
1874,  and  then  it  was  obtained  by  the  plaintiff'  in  the  judg- 
ment and  not  by  the  defendant.  The  Treasury  Department 
then  paid  to  the  plaintiff  in  the  judgment  the  amount  of  it, 
Vol.  XX.— 16 


242  SOUTHERN  DISTRICT  OP  NEW  YORK, 

White  V.  Arthur. 

with  interest  from  the  date  of  the  certificate  of  probable  cause. 
The  plaintiff  then  applied  to  the  Supreme  Court  for  a  man- 
damns  to  compel  the  payment  of  the  interest  from  the  date 
of  the  judgment  to  the  date  of  the  certificate.  The  applica- 
tion was  denied.  The  Court  held  that  no  claim  against  the 
Government  arose  under  §  12  of  the  Act  of  1863,  as  applied 
to  that  case,  until  the  certificate  was  made,  and  that  the  Gov- 
ernment was  not  liable  for  the  interest  which  accrued  on  the 
judgment  prior  to  the  making  of  the  certificate. 

In  the  present  case  the  certificate  was  made  before  the 
judgment  was  entered,  but  still  the  question  remains  whether 
the  Government  is  liable  for  interest  on  the  judgment  from 
its  date,  if  a  certificate  of  probable  cause  was  made  prior  to 
or  at  the  time  of  the  date  of  the  judgment.  This  point  waa 
not  decided  in  United  States  v.  Sherman. 

It  is  well  settled  that  the  liability  of  the  Government  for 
the  interest  claimed  in  this  case  must  be  created  by  some  stat- 
ute. There  is  no  contract  by  the  Government  or  any  of  its 
authorized  agents  to  pay  interest.  There  is  no  judgment 
against  the  CTnited  States.  There  is  no  suit  against  the  Cnited 
States.  There  is  no  liability  of  the  United  States  tOl  after  a 
recovery  against  the  collector  and  a  certificate  of  probable 
cause.  So,  the  question  arises  as  to  the  construction  of  §  989. 
"  As  a  general  rule,  the  Government  does  not  pay  interest. 
The  exceptions  to  this  rule  are  found  only  in  cases  where  the 
demands  are  made  under  special  contracts  or  special  laws,  ex- 
pressly providing  for  the  payment  of  interest.  An  obligation 
to  pay  it  is  not  to  be  implied  against  the  Government,  as  it  is 
against  a  private  party,  from  the  mere  fact  that  the  principal 
was  detained  from  the  creditor  after  the  right  to  receive  it 
had  accrued."  (9  Opinions  of  Attornet/a-Oeneraly  59.)  The 
principle  that  interest  is  not  recoverable  against  the  Govern- 
ment if  it  unreasonably  delays  payment  of  its  debts,  as  it 
would  be  against  a  citizen,  and  the  further  principle  that  in- 
terest is  not  to  be  allowed  on  claims  presented  to  the  Depart- 
ments, unless  it  is  specially  provided  for,  are  recognized  by 


JANUARY,  1882.  248 


White  V.  Arthur. 


the  Supreme  Court  in  TiUaon  v.  UfiUed  States^  (10  OttOy  43, 

47.) 

The  plaintiffs  contend,  however,  that  the  interest  on  the 
judgment  in  this  case  is  expressly  provided  for  by  statute.  A 
review  of  the  history  of  legislation  and  .adjudication  in  respect 
to  suits  against  collectors  to  recover  back  customs  duties  ille- 
gally exacted  will  aid  in  a  decision  as  to  the  meaning  of  the 
present  statutory  provisions ;  and  legislation  in  regard  to  pay- 
ing interest  on  other  claims  and  on  judgments  for  them  may 
also  be  referred  to. 

Prior  to  the  enactment  of  §  2  of  the  Act  of  March  8d, 
1839,  (5  U.  8.  Stat,  at  Large^  348,)  the  moneys  paid  to  a  col- 
lector of  customs  for  unascertained  duties  or  for  duties  paid 
under  protest  against  the  rate  or  amount  of  duties  charged, 
were  retained  by  the  collector.  That  Act  required  such  mon- 
eys to  be  paid  into  the  Treasury,  and  made  it  the  duty  of  the 
Treasury  Department  to  refund  overpayments,  made  under 
protest,  out  of  any  money  in  the  Treasury  not  otherwise  ap- 
propriated. In  1845,  it  was  decided  by  the  Supreme  Court,  in 
Gary  v.  Cwrtisy  (3  Howard,  236,)  that  the  effect  of  §  2  of  that 
Act  was  to  take  away  the  right  to  bring  an  action  against  the 
collector,  for  moneys  illegally  exacted  by  him  as  and  for  du- 
ties, and  paid  to  him  under  protest,  where  he  had  paid  them 
into  the  Treasury  before  suit  brought.  This  decision  was 
followed  by  the  Act  of  February  26th,  1845,  (5  U.  S.  Stat  at 
Large^  727,)  which  provided  that  nothing  in  §  2  of  the  Act  of 
1839  should  be  construed  to  take  away  the  right  of  any  person 
paying  money  as  and  for  duties,  under  protest,  to  a  collector, 
in  order  to  obtain  goods  imported  by  him,  the  duties  not  be- 
ing authorized  by  law,  to  maintain  an  action  at  law  against 
the  collector  to  try  the  legality  and  validity  of  the  demand 
and  payment  of  duties,  and  to  have  a  trial  by  jury  touching 
the  same ;  or  to  authorize  the  Secretary  of  the  Treasury  to  re- 
fund any  duties  paid  under  protest.  This  legislation  restored 
the  right  to  sue  the  collector.  Of  course,  a  judgment  against 
him  could  be  enforced  by  execution  against  him,  and,  under 
§8  of  the  Act  of  August  8th,  1842,  (5  U.S.  Stat,  at  Large^ 


244  SOUTHERN  DISTRICT  OP  NEW  YORK. 


White  V.  Arthur. 


518,)  now  §  966  of  the  Kevised  Statutes,  interest  on  snch  judg- 
ment from  its  date  could  be  collected  by  execution  against 
him. 

On  the  8th  of  August,  1846,  an  Act  was  passed,  (9  U.  8. 
Stat,  at  Large^  84  and  675,)  providing  for  the  payment  by  the 
Secretary  of  the  Treasury  to  six  difEerent  parties  named,  of 
any  excess  of  duties  paid  by  them  to  the  collector  of  the  port 
of  New  York,  upon  the  importation  of  certain  specified  goods, 
beyond  what  the  same  were  legally  chargeable  with,  and  in 
four  of  the  six  cases  interest  on  the  excess  is  specified  as  to  be 
paid,  the  direction  as  to  three  of  the  four  being  that  it  is  to  be 
interest  from  the  time  of  the  payment  to  the  collector.    By 
§  2  of  that  Act  the  Secretary  is  authorized,  out  of  any  monej 
in  the  Treasury  not  otherwise  appropriated,  "  to  refund  to  the 
several  persons  entitled  thereto  such  sums  of  money  as  have 
been  illegally  exacted  by  collectors  of  the  customs  under  the 
sanction  of  the  Treasury  Department,  for  duties  on  imported 
merchandise,"  since  March  3d,  1833,  ^^  provided,  that,  before 
any  such  refunding,  the  Secretary  shall  be  satisfied,  by  deds- 
ions  of  the  Courts  of  the  United  States  upon  the  principle  in- 
volved, that  such  duties  were  illegally  exacted,  and  provided, 
also,  that  sach  decisions  of  the  Courts  shall  have  been  adopted 
or  acquiesced  in  by  the  Treasury  Department  as  its  rule  of 
construction.^    In  this  §  2  nothing  is  said  about  paying  the 
amounts  of  judgments,  or  about  paying  interest  on  judgments, 
or  about  paying  interest  on  sums  illegally  exacted,  but  it  is 
the  sums  illegally  exacted  which  are  to  be  refunded,  and  the 
refunding  is  made  to  depend  on  the  adoption  of,  or  acquies- 
cence in,  the  decision  of  the  Court  by  the  Treasury  Depart- 
ment.    There  is  nothing  in  this  §  2  to  indicate  that  it  was 
limited  to  cases  of  duties  paid  under  protest,  while  under  the 
Act  of  February  26th,  1845,  suits  could  be  brought  against  a 
collector  only  where  duties  had  been  paid  under  protest.    On 
the  10th  of  August,  1846,  an  Act  was  passed,  (9  U.  S.  Stat  at 
Zargey  677,)  directing  the  refunding  to  a  party  named  of  "  the 
balance  remaining  unpaid,  and  interest  thereon,"  of  a  judg- 
ment recovered  by  him  in  this  Court,  against  a  collector  of  tbi» 


JANUARY,   1882.  245 


White  V.  Arthur. 


port,  for  the  recovery  of  duties  illegally  exacted,  "  a  part  of 
which  judgment  has  been  heretofore  paid."  This  general  and 
special  legislation  indicates  an  intention  in  Congress  to  speci- 
fy interest  when  it  is  to  be  paid.  Like  instances  of  refunding 
to  parties  named  duties  illegally  or  erroneously  collected  on 
imports,  but  without  mentioning  interest,  are  found  in  Acts 
passed  June  28th,  1848,  and  March  3d,  1849,  (9  U,  S.  Stat,  at 
large,  720,  780.) 

The  Act  of  March  3d,  1857,  §  5,  (11  rd.,  196,)  provided  for 
an  appeal  to  the  Secretary  of  the  Treasury,  after  protest,  from 
the  decision  of  a  collector  as  to  the  liability  of  imported  goods 
to,  or  their  exemption  from,  duty,  and  made  the  decision  on 
such  appeal  final,  unless  suit  should  be  brought  within  30 
days  after  such  decision. 

By  the  Act  of  April  11th,  1860,  (12  Id.,  837,)  provision  is 
made  for  the  repayment,  with  interest  at  6  per  cent  per  an- 
num from  the  date  of  exaction,  of  certain  duties  illegally  ex- 
acted, as  tonnage  and  light  duties,  while  by  the  Act  of  March 
2d,  1861,  (7S.,  690,)  provision  is  made  for  the  repayment  of  a 
certain  amount  erroneously  paid  as  duties,  nothing  being  said 
about  interest.  Like  provisions,  with  no  mention  of  interest, 
are  made  by  the  Acts  of  May  1st,  1862,  and  February  18th, 
1863,  (Id.,  903,  917.) 

By  the  Act  of  March  3d,  1863,  §  31,  {Id.,  729,)  the  Com- 
missioner of  Internal  Bevenue,  subject  to  the  regulations  of 
the  Secretary  of  the  Treasury,  was  authorized  "  to  remit,  re- 
fund and  pay  back  all  duties  erroneously  or  illegally  assessed 
or  collected,  and  all  judgments  or  sums  of  money  recovered 
in  any  Court  against  any  collector  or  deputy  collector,  for  any 
duties  or  licenses  paid  under  protest."  That  provision  re- 
ferred solely  to  internal  revenue  and  is  superseded  by  later 
provisions  of  law. 

By  §  12  of  the  Act  of  March  3d,  1863,  (M,  741,)  the 
provision  was  enacted  which  is  now  found  in  §  989  of  the  Re- 
vised Statutes,  as  before  quoted.  By  §  13  of  the  same  Act  it 
was  made  the  duty  of  the  District  Attorney  of  the  District 
within  which  any  suit  should  be  brought  against  a  collector 


246  SOUTHERN  DISTRICT  OF  NEW  YORK. 

White  V.  Arthur. 

or  Other  officer  of  the  revenue,  for  any  act  done  by  him,  or 
for  the  recovery  of  any  money  exacted  by  or  paid  to  him, 
which  should  have  been  paid  into  the  Treasury  of  the  United 
States,  to  appear  on  behalf  of  such  officer,  unless  otherwise 
instructed  by  the  Secretary  of  the  Treasury,  and  to  make  a 
report  in  regard  to  such  suits  annually  to  the  Solicitor  of  the 
Treasury,  and  it  was  directed  that  the  same  should  be  re- 
ported annually  to  Congress,  '^  with  a  statement  of  all  moneys 
received  by  the  Solicitor  and  by  each  District  Attorney" 
under  the  Act.  Most  of  these  provisions  of  §  13  are  now  in 
§§  771  and  773  of  the  Kevised  Statutes.  By  said  §  12  it  was 
also  provided,  that  when,  in  any  such  suit,  any  district  or 
other  attorney  should  be  directed  to  appear  on  behalf  of  such 
officer  by  any  proper  officer  of  the  Government,  such  attorney 
should  be  allowed  such  compensation  for  his  services  therein 
as  should  be  certified  by  the  Court  to  be  reasonable  and  prop- 
er, and  approved  by  the  Secretary  of  the  Treasury.  This 
provision  is  now  in  §  827  of  the  Revised  Statutes. 

By  §  7  of  the  Act  of  March  3d,  1863,  (12  U.  S.  Stat,  at 
Lwge,  766,)  now  §§  1,089  to  1,093  of  the  Revised  Statutes, 
interest  on  judgments  rendered  by  the  Court  of  Claims  is  not 
to  be  paid  unless  the  United  States  have  appealed,  and  then 
interest  at  the  rate  of  hper  cent,  per  annum  is  to  be  paid  from 
the  time  a  certified  copy  of  the  judgment  is  presented  to  the 
Secretary  of  the  Treasury  for  payment. 

By  §  14  of  the  Act  of  June  30th,  1864,  (13  U.  S.  Stat,  at 
Large^  215,)  an  appeal  to  the  Secretary  of  the  Treasury  from 
the  decision  of  the  collector  of  customs  as  to  the  rate  and 
amount  of  duties,  costs  and  charges  on  imported  goods  was 
provided  for,  after  protest,  with  the  requirement  that  a  suit 
to  recover  back  the  duties  should  be  brought  within  ninety 
days  after  the  decision.  This  is  now  §  2,931  of  the  Revised 
Statutes.  By  §  16  of  the  same  Act  it  was  provided  as  fol- 
lows ;  "  Whenever  it  shall  be  shown  to  the  satisfaction  of  the 
Secretary  of  the  Treasury  that,  in  any  case  of  unascertained 
duties,  or  duties  or  other  moneys  paid  under  protest  and  ap- 
peal, as  hereinbefore  provided,  more  money  has  been  paid  to 


JANUARY,  1882.  247 


White  tr.  Arthur. 


the  collector,  or  person  acting  as  such,  than  the  law  requires 
should  have  been  paid,  it  shall  be  the  duty  of  the  Secretary 
of  the  Treasury  to  draw  his  warrant  upon  the  Treasurer  in 
favor  of  the  person  or  persons  entitled  to  the  over-payment, 
directing  the  said  Treasurer  to  refund  the  same'  out  of  any 
money  in  the  Treasury  not  otherwise  appropriated,"  Noth- 
ing was  said  about  interest.  The  provision  is  now  §  3,012^  of 
the  Kevised  Statutes.  A  provision  in  regard  to  the  paying 
back  by  the  Commissioner  of  Internal  Revenue,  on  appeal  to 
him,  of  internal  revenue  duties  erroneously  or  illegally  as- 
sessed or  collected,  was  enacted  by  §  44  of  the  Act  of  June 
30th,  1864,  {Id.j  239,)  which  provided  for  repaying  "  to  col- 
lectors or  deputy  collectors  the  full  amount  of  such  sums  of 
money  as  shall  or  may  be  recovered  against  them  or  any  of 
them,  in  any  Court,  for  any  internal  duties  or  licenses  collected 
by  them,  with  the  costs  and  expenses  of  snit,  and  all  damages 
and  costs  recovered  against  assessors,  assistant  assessors,  col- 
lectors, deputy  collectors,  and  inspectors,  in  any  suit  which 
shall  be  brought  against  them,  or  any  of  them,  by  reason  of 
anything  that  shall  or  may  be  done  in  the  due  performance 
of  their  official  duties."  This  enactment  is  now  found  in 
§  3,220  of  the  Revised  Statutes. 

By  §7  of  the  Act  of  July  28th,  1866,  (14  Id.,  328,)  the 
Secretary  of  the  Treasury  was  authorized  to  refund  duties 
overpaid,  although  the  provisions  of  said  §  14  of  the  Act  of 
June  30th,  1864,  had  not  been  complied  with,  on  being  satis- 
fied that  such  non-compliance  was  owing  to  circumstances 
beyond  the  control  of  the  importer. 

By  §  3,689  of  the  Revised  Statutes,  passed  June  22d,  1874, 
permanent  annual  appropriations  were  made,  out  of  any  mon- 
eys in  the  Treasury  not  otherwise  appropriated,  of  such  sums 
as  might  be  necessary  for  refunding  duties  erroneoasly  or 
illegally  assessed  or  collected  under  the  internal  revenue  laws, 
and  the  excess  of  deposits  for  unascertained  customs  duties  or 
customs  duties  paid  under  protest. 

On  the  3d  of  March,  1875,  (18  U.  S.  Stat  at  Large,  469,) 
an  important  Act  was  passed.    It  provided  as  follows :    "  No 


248  SOUTHERN  DISTRICT  OF  NEW  YORK, 

White  if.  ArUrnr. 

moDeys  collected  as  duties  on  imports,  in  accordance  with  any 
decision,  ruling,  or  direction  previously  made  or  given  by  the 
Secretary  of  the  Treasnry,  shall,  except  as  hereinafter  provided, 
be  refunded  or  repaid,  nnless  iu  accordance  with  the  judg- 
ment of  a  Circnit  or  District  Court  of  the  dnited  States  giv- 
ing construction  to  the  law,  and  from  which  the  Attorney 
General  shall  certify  that  no  appeal  or  writ  of  error  will  be 
taken  by  the  United  States,  or  unless  in  pursuance  of  a  special 
appropriation  for  the  particular  refund  or  repayment  to  be 
made:  Provided^  That  whenever  the  Secretary  shall  be  of 
opinion  that  such  duties  have  been  assessed  and  collected 
under  an  erroneous  view  of  the  facts  in  the  case,  he  may 
authorize  a  re-examination  and  re-liquidation  in  such  case, 
and  make  such  refund  in  accordance  with  existing  laws  as  the 
facts  so  ascertained  shall,  in  his  opinion,  justify ;  but  no  such 
re-liquidation  shall  be  allowed  unless  protest  and  appeal  shall 
have  been  made  as  required  by  law."  This  does  not  require 
a  judgment  in  the  particular  case,  but  only  a  judgment  con- 
struing the  law,  which  might  be  had  in  another  case.  It  does 
not  refer  to  the  payment  of  a  judgment  but  to  the  refunding 
of  moneys  collected. 

By  the  Act  of  February  15th,  1876,  (19  U.  S.  Stat,  at 
Large,  3,)  provision  was  made  for  the  payment,  under  judg- 
ments rendered  by  the  Court  of  Commissioners  of  Alabama 
claims,  of  said  judgments  with  interest  on  the  principal  at  4 
per  cent,  per  annum,  from  the  date  of  loss  until  notice  should 
be  given  for  payment. 

In  §  3  of  the  appropriation  bill  passed  June  14th,  1878, 
(20  U.  S.  Stat  at  Zarge,  128,)  is  the  following  provision: 
"  For  repayment  to  importers  the  excess  of  deposits  for  unas- 
certained duties,  or  duties  or  other  moneys  paid  under  pro- 
test, including  interest  and  costs  in  judgment  cases,  two  hun- 
dred and  fifty  thousand  dollars :  Provided,  that  no  portion  of 
this  appropriation  shall  be  expended  for  the  payment  of 
claims  known  as  the  ^  charges  and  commissions  cases.' "  In 
§  1  of  the  appropriation  bill  passed  March  3d,  1879,  (Id.,  884,) 
is  the  following  provision  :  "  To  enable  the  Secretary  of  the 


JANUARY,  1882.  249 


White  V.  Arthur. 


TreaBurj,  in  his  discretion,  to  refnnd  excess  of  duties  and  to 
pay  costs  in  suits  and  proceedings  in  charges  and  commissions 
cases,  in   which  judgments  may  hereafter  be  obtained,  or 
which  may  be  compromised  by  said  Secretary,  fifteen  thou- 
sand dollars."     In  §  1  of  another  appropriation  bill  passed 
March  8d,  1879,  {Id.,  414,)  is  this  provision :  "  The  unex- 
pended balance  of  the  appropriation  of  two  hundred  and  fifty 
thousand  dollars,  made  by  the  Act  of  June  fourteenth,  eigh- 
teen hundred  and  seventy-eight,  for  the  repayment  to  im- 
porters of  the  excess  of  deposits  for  unascertained  duties,  or 
duties  or  other  moneys  paid  under  protest,  including  interest 
and  costs  in  judgment  cases,  is  hereby  continued  and  made 
available  for  the  payment  of  all  claims  to  which  the  appro- 
priation is  applicable,  which  are  not  payable  from  the  perma- 
nent annual  appropriation  provided  for  in  section  thirty-six 
hundred  and  eighty-nine  of  the  Revised  Statutes ;  Provided, 
That  the  claims   known  as  the  ^charges  and  commissions 
cases' shall  not  be  paid  without  further  legislation."      The 
permanent  annual  appropriation  did  not  include  ^^  interest 
#  and  costs  in  judgment  cases."    Hence,  probably,  the  necessity 
of  a  special  appropriation.    The  question  is — what  do  the 
words  '^interest  and  costs  in  judgment  cases"  mean?      Do 
they  include  interest  after  judgment,  either  on  the  judgment 
or  on  the  excess  of  duties?    In  regard  to  judgments  in 
"  charges  and  commissions  cases,"  only  excess  of  duties  and 
costs  were  provided  for,  nothing  being  said  about  interest. 
In  §  1  of  the  appropriation  bill  passed  June  16th,  1880, 
(21  Id.,  242,)  is  the  following  provision :  "  For  the  repayment 
to  importers  the  excess  of  deposits  for  unascertained  duties, 
or  duties  or  other  moneys  paid  under  protest,  including  inter- 
est and  costs  in  judgment  cases,  three  hundred  thousand  dol- 
lars, which  sum  is  hereby  made  available  for  the  payment  of 
an  claims  to  which  the  appropriation  is  applicable,  which  are 
not  payable  from  the  permanent  annual  appropriation  pro- 
vided for  in  section  thirty-six  hundred  and  eighty-nine.  Be- 
vised  Statutes ;  Provided,  That  no  portion  of  this  appropria- 
tion shall  be  expended  for  the  payment  of  claims  known  as 


250  SOUTHERN  DISTRICT  OP  NEW  YORK, 


White  V,  Arthur. 


*^  charges  and  commiBsions  cases.' "  In  the  same  section  is  the 
following :  "  To  enable  the  Secretary  of  the  Treasury,  in  his 
discretion,  to  pay  judgments  in  charges  and  commissions' 
cases,  obtained  since  January,  eighteen  handred  and  seventy- 
nine,  and  which  may  be  hereafter  obtained,  or  to  settle  any 
of  said  cases,  in  his  discretion,  by  compromise,  seventy-fiye 
thonsand  dollars,  or  so  much  thereof  as  may  be  necessary." 
Here  the  provision  is  to  pay  judgments,  but  nothing  is  said 
about  interest  on  judgments.  In  §  1  of  the  appropriation  bill 
passed  March  8d,  1881,  {Id.y  418,)  is  a  provision  in  the  same 
words  as  the  one  first  above  cited  from  the  Act  of  June  16th, 
1880. 

It  may  be  admitted  that  such  a  suit  as  the  present  is  a 
private  suit  until  there  is  a  certificate  of  probable  cause. 
Then  the  United  States  come  in  and  assume,  by  statute,  a 
certain  liability.  The  question  is  as  to  what  liability.  The 
plaintiffs  contend  that  the  United  States  assume  all  the  liabil- 
ity which  would  be  that  of  the  defendant  if  the  United  States 
assumed  no  liability.  The  case  of  Erakine  v.  Van  Arsdale^ 
(15  WaUacey  75,)  cited  by  the  plaintiffs,  was  a  suit  to  recover4 
back  an  internal  revenue  tax,  illegally  collected.  The  Court 
had  instructed  the  jury  that  they  might,  in  their  verdict,  add 
interest  to  the  tax'  paid.  This  was  held  by  the  Supreme 
Court  to  be  correct.  The  only  decision  is  that  interest  might 
be  added  from  the  time  of  the  illegal  exaction  to  the  verdict. 
ISothing  is  decided  as  to  interest  on  the  judgment,  when  the 
Government  comes  to  pay  it.  The  interest  put  into  the  ver- 
dict is  put  in  before  there  is  any  certificate  of  probable  cause, 
and,  if  there  is  none,  the  Government  assumes  no  part  of  the 
liability  of  the  defendant. 

The  allowance  of  interest  as  damages,  on  a  writ  of  error, 
under  §  1,010  of  the  Revised  Statutes,  and  under  Rule  23  of 
the  Supreme  Court,  and  the  form  of  the  mandate  in  affirming, 
with  interest,  a  judgment  where  the  collector  is  the  plaintiff 
in  error,  cannot  affect  the  question  here.  These  things  all  of 
them  belong  solely  to  the  putting  the  judgment  in  shape  as 
one  in  a  private  suit. 


JANUARY,   1882.  261 


White  «.  Arthnr. 


Nor  does  the  language  'Mnelading  interest  and  costs  in 
judgment  cases  "  mean  interest  on  judgments.  It  is  entirely 
satisfied  by  confining  it  to  the  interest  included  in  the  amount 
of  the  judgment  and  the  costs  forming  part  of  that  amount. 
The  "  amount  so  recovered,"  referred  to  in  §  989,  being  more 
than  the  amount  exacted  and  paid,  because  including  in  addi- 
tion  interest  and  costs,  was  probably  regarded  as  needing  ex- 
planation to  make  it  dear  that  it  was  not  merely  the  amount 
exacted  that  was  to  be  refunded,  but  also  the  interest  and  costs 
forming  part  of  the  recovery,  that  is,  of  the  judgment.  The 
mention  of  '^  costs  "  is  indicative  of  the  meaning  of  ^^  interest." 
There  are  no  costs  after  judgment ;  and,  as  ^'  costs  "  are  costs 
before  judgment,  so  ^'  interest,"  in  the  same  connection,  is  in- 
terest before  judgment. 

The  legislation  before  recited  shows  that  Congress  has 
sometimes  provided  for  interest  on  judgments  and  sometimes 
for  interest  on  excessive  duties  and  has  sometimes  omitted  the 
mention  of  interest.  The  result  of  this  review  is,  that  what- 
ever may  have  been  the  practice  under  the  permanent  appro- 
priation in  the  Bevised  Statutes,  and  under  statutes  prior  to 
the  appropriation  bill  of  1878,  it  is  clearly  expressed  in  the 
appropriation  bills  of  1878,  1879, 1880  and  1881,  that,  where 
there  are  judgments  against  collectors  of  customs  for  duties 
paid  under  protest,  interest  accruing  after  judgment,  on  the 
amount  of  the  judgment  or  on  the  duties  improperly  paid,  is 
not  to  be  paid  by  the  Government,  either  from  the  permanent 
appropriation  or  from  the  special  appropriations.  Hence,  all 
has  been  paid  by  the  Government  in  this  case  which  it  is 
obliged  to  pay. 

(2.)  Under  §  989,  as  there  has  been  a  certificate  of  probable 
cause  in  this  case,  there  can  be  no  execution  against  the  col- 
lector. There  cannot  be  an  execution  against  him  for  the 
interest  from  March  1st,  1881,  on  the  view  that,  under  §  966, 
interest  is  due  on  the  judgment  as  one  against  the  collector 
personally,  and  that  §  989  only  means  that  there  is  to  be  no 
execution  against  him  for  what  the  Government  pays.  He  is 
required  to  pay  the  money  into  the  Treasury.    He  does  so. 


262  SOUTHERN  DISTRICT  OF  NEW  YORK, 

White  V.  Arthur. 

The  District  Attorney  is  required  to  defend  the  suit  and  is 
paid  by  the  Government  for  doing  so.  The  suit  is  one  which 
can  be  brought  only  because  Congress  allows  it  to  be  brought. 
Congress  could  prevent  its  being  brought.  It  did  so  by  the 
Act  of  1839,  as  was  held  in  Gary  v.  Curtis,  Then  it  restored 
the  right  by  the  Act  of  1845.  But  the  suit  is  one  only  ^'to 
try  the  legality  and  validity  of  the  demand  and  payment  of 
duties,"  as  the  Act  of  1842  says.  When  the  collector  has  paid 
the  money  into  the  Treasury,  and  there  is  a  certificate  of 
probable  cause,  it  is  clearly  the  intention  of  §  989,  that  the 
collector  shall  not  be  liable,  under  the  judgment,  for  interest 
on  it,  if  the  Government  is  not  liable  under  that  section  for 
interest  on  it.  The  object  of  the  suit  and  the  judgment  is 
solely  to  ptit  the  claim  into  an  adjudicated  shape.  What  is  to 
be  paid  on  it  either  by  the  collector  or  the  Government  is  a 
matter  to  be  determined  by  Congress.  It  follows  that  the 
defendant  is  not  liable  to  pay  the  interest  in  question. 

As  everything  has  been  paid  on  the  judgment  which  is 
legally  payable  on  it,  under  existing  laws,  the  judgment  is 
satisfied,  and  an  order  will  be  entered  to  that  effect  and  di- 
recting that  the  derk  enter  in  the  records  of  the  Court  all 
proper  entries  to  show  that  the  judgment  is  satisfied. 

Ha/rfley  <6  Coleman^  for  the  plaintiffs. 

Stewart  Z.  Woodford^  {DUtrict  Aitamey^  for  the  defend- 
ant. 


JAJSTTARY,  1882.  263 


Harris  v.  Hess. 


Gbobgb  W.  Habbis  and  James  B.  Lbonabd 


V8. 


Henbt  Hbss  and  Jonas  Hbbs. 

H.,  on  behalf  of  G.,  sold  to  a  national  bank  a  promissory  note,  not  due,  and  re- 
odyed  from  the  bank  the  purchase  price,  and  deliyered  the  note  to  the  bank. 
H.  gaye  to  G.  a  cheque  for  the  proceeds,  less  $8  77  commission.  Before  the 
cheqne  was  paid,  the  siad  bank  learned  that  when  the  note  was  sold  its 
maker  had  suspended  payment,  and  notified  H.  of  the  fact  and  tendered  back 
the  note  and  demanded  back  the  purchase  money.  H.  then  stopped  payment 
of  the  cheque,  and  G.  brought  this  suit  against  H.,  on  the  cheque,  to  recoyer 
its  amount  The  said  bank  claimed  from  H.  the  entire  proceeds.  H.,  then, 
on  notice  to  said  bank  and  to  the  attorney  for  G.,  applied  to  this  Court  to 
Bobstitute  said  bank  in  place  of  H.,  as  defendant  in  this  suit,  and  to  discharge 
H.  from  liability  to  either  G.  or  said  bank,  concerning  the  claim  sued  on,  on 
H.  paying  the  money  into  Court.  The  application  was  granted,  as  being  a 
practice  proyided  for  in  a  suit  at  law,  by  g  820  of  the  New  York  Code  of  Ciyil 
Procedure,  and  adopted  by§  914  of  the  Reyised  Statutes,  and  H.  was  ordered 
to  pay  into  Court  the  entire  proceeds. 

The  said  bank  haying,  after  notice  of  said  application  was  senred  on  it,  sued  H. 
in  a  Court  of  the  State  of  New  York,  to  recoyer  the  money  so  paid  by  it  to 
H.:  ffddf  that  the  bringing  of  such  suit  did  not  affect  the  jurisdiction  of  this 
Court  to  g^rant  the  application. 

(Before  Blatcbfobd;  J.,  Southern  District  of  New  York,  January  2'7th,  1882.) 

« 

Blatohfobd,  J.  The  defendants,  on  behalf  of  the  plaint- 
ifis,  sold  to  the  Hanover  National  Bank  a  promissory  note, 
not  overdue,  and  received  from  that  bank  the  purchase  price, 
and  delivered  the  note  to  the  bank.  The  defendants  gave  to 
the  plaintiffs  a  cheque  on.  a  bank  for  the  proceeds  of  the 
note,  less  {3  77  commission.  Before  the  cheque  was  pre- 
sented to  the  bank  or  paid,  the  Hanover  Bank  having  ascer- 
tained that,  when  the  note  was  sold,  the  makers  of  it,  a  firm 
in  New  Orleans,  had  suspended  payment,  notified  the  de- 


254  SOUTHERN  DISTRICT  OF  KEW  YORK, 


HarriB  v.  HesB. 


fendants  of  the  fact  and  tendered  the  note  back  to  them  and 
demanded  back  the  purchase  money.  Thereupon  the  defend- 
ants stopped  the  payment  of  the  cheque.  The  plaintifb, 
citizens  of  Pennsylvania,  then  brought  this  suit  in  this  Court 
against  the  defendants,  citizens  of  New  York.  The  Hanover 
National  Bank  appears  by  the  papers  to  be  a  corporation  doing 
business  in  the  city  of  New  Tork,  and  having  its  place  of  busi- 
ness in  that  city,  and  to  be  a  banking  association  created  by 
and  under  the  laws  of  the  United  States.  It  is,  therefore, 
to  be  regarded  as  a  citizen  of  New  York.  This  suit  is  a  snit 
on  the  cheque  which  the  defendants  gave  to  the  plaintifb, 
and  the  amount  sought  to  be  recovered  is  $1,486  41,  with  in- 
terest from  November  29th,  1881.  The  amount  of  the  claim 
of  the  Hanover  Bank  against  the  defendants  is  $1,490  18, 
with  interest  from  November  80th,  1881.  This  suit  was 
commenced  December  19th,  1881. 

It  is  provided  by  §  820  of  the  New  York  Code  of  Civil 
Procedure,  that  a  defendant  against  whom  an  action  to  re- 
cover upon  a  contract  is  pending  may,  at  any  time  before 
answer,  upon  proof,  by  aflSdavit,  that  a  person,  not  a  party  to 
the  action,  makes  a  demand  against  him  for  the  same  debt, 
without  collusion  with  him,  apply  to  the  Court,  upon  notice 
to  that  person  and  the  adverse  party,  for  an  order  to  substi- 
tute that  person  in  his  place,  and  to  discharge  him  from  lia- 
bility to  either,  on  his  paying  into  Court  the  amount  of  the 
debt ;  and  that  the  Court  may,  in  its  discretion,  make  such  an 
order.  This  is  a  proceeding  in  a  suit  at  law  to  substitute  one 
defendant  for  another.  It  is  a  proceeding  adopted  by  §  9U 
of  the  Eevised  Statutes.  The  defendants,  before  answer, 
served  on  the  Hanover  I^ank  and  on  the  attorney  for  the 
plaintiffs,  on  the  10th  of  January,  1882,  the  proper  papers 
with  notice  of  an  application  to  be  made  to  this  Court,  on  the 
13th  of  January,  to  substitute  the  Hanover  Bank  in  the  plaoe 
of  the  defendants  and  to  discharge  the  defendants  from  liar 
bility  to  either  the  plaintiffs  or  the  Hanover  Bank  concerning 
tlie  claim  or  debt  mentioned  in  the  complaint  herein,  on  the 


JANUARY,   1882.  255 


Harris  v,  Hess. 


defendants'  paying  into  this  Conrt  $1,486  41.  The  appli- 
cation was  adjourned  bj  consent  from  January  13tb  to  Jan- 
uary 20th,  and  was  made  on  the  latter  day.  On  January  19th 
or  20th,  the  Hanover  Bank  commenced  a  suit  against  the  de- 
fendants, in  a  Court  of  this  State,  to  recover  the  said  $1,490 18, 
with  interest  from  November  30th,  1881.  The  defendants 
are  willing  to  pay  into  Court  $1,490  18,  with  interest  from 
November  29th,  1881.  Both  the  plaintiffs  and  the  Hanover 
Bank  oppose  the  application. 

The  defendants  have  money  which  they  received  from  the 
Hanover  Bank.  It  is  claimed  by  each  of  the  two  parties.  It 
is  claimed  directly  by  the  Hanover  Bank,  as  thQ  money  which 
it  paid  to  the  defendants ;  and,  although  the  suit  in  this 
Court  is  brought  on  the  cheque,  yet  it  is  reaUy  a  sait  to  re- 
cover the  money  which  the  Hanover  Bank  paid  to  the  defend- 
ants, as  being  the  money  of  the  plaintiffs.  The  plaintiffs  can 
be  in  no  better  position,  as  regards  the  real  transaction,  than 
if  no  cheque  had  been  given.  The  cheque  was  given  under 
a  mistake  of  fact.  The  rights  of  the  plaintiffs  as  against  the 
money  and  the  defendants,  and  as  against  the  claim  of  the  Han- 
over Bank  to  the  money,  are  no  different  now  from  what  they 
would  be  in  a  suit  by  the  Hanover  Bank  against  the  plaint- 
iffs to  recover  back  from  them  money  paid  by  the  plaintiffs 
to  them  directly,  as  the  purchase  price  of  the  note.  Whether 
the  plaintiffs  or  the  Hanover  Bank  have  the  better  right  to 
the  money  is  a  question  not  to  be  settled  on  this  application. 
The  defendants  are  not  questioning  the  title  of  the  plaintiffs 
to  the  note,  and  as  to  the  money  the  defendants  are  mere 
stakeholders. 

The  case  is  clearly  one  within  the  State  statute.  The  ap- 
plication has  relation  back  to  the  time  when  notice  of  making 
it  was  served,  and  the  bringing  of  the  suit  in  the  State  Court 
snbseqnently  by  the  Hanover  Bank  cannot  affect  the  jurisdic- 
tion of  this  Court  to  grant  the  application.  It  is  granted 
and  the  order  to  be  made  will  be  made  nunc  pro  tunc  as  of 
the  day  for  which  the  application  was  first  noticed.      The 


25(y  northern  district  of  new  yore, 

Campbell «.  EaTanangh. 

amoant  to  be  deposited  in  Court  will  be  $1,490  18,  with  inte^ 
est  from  NoTember  29th,  1881. 

James  S.  Steamsy  for  the  plaintifis. 

Lauterbaeh  d:  Spingarnj  for  the  defendants. 

Moorej  Low  <k  Sanfardy  for  the  Hanover  Bank. 


George  Campbell  and  John  Clute 

vs. 
Luke  Kayanauoh.    In  EQunr. 

The  claims  of  re-iaaued  letters  patent  No.  8,891,  granted  to  George  Campbell 
and  John  Clute,  September  8d,  1878,  for  an  "  improyement  in  bnrrs  for  knit- 
ting-machines,"  the  original  patent.  No.  48,636,  haying  been  granted  to  W. 
H.  Carr  and  M.  P.  Akin,  July  26th,  1864,  for  an  *'  improyement  in  knitting- 
machine  bnrrs,"  on  the  inyention  of  said  Carr,  considered,  in  yiew  of  tiie 
specification  and  claims  of  the  original  patent 

A  hub,  composed  of  two  slotted  rings,  secnred  together,  with  an  outwardly 
narrowed  annular  space  between  the  inner  ends  of  the  rings^  is  not  daimedui 
the  re-iasne,  either  by  itself  or  in  combination  with  the  rings,  bat  sach  a  hob 
was  claimed  in  clum  2  of  the  original,  and  was  claimed  in  combination  with 
the  rings,  in  claim  8  of  the  orig^al,  and  was  made  a  prominent  featore  of  in- 
yention in  the  orig^naL  The  original  showing  that  the  ioyentor  had  no  idea 
of  using  hub  rings  not  slotted,  or  of  an  interior  annular  space  in  a  hob  not 
formed  of  two  slotted  rings,  claims  2  and  3  of  the  re-issue  must  be  constraed 
as  referring  to  no  hub  other  than  one  formed  of  two  slotted  rings,  and  to  no 
annular  space  except  one  between  two  slutted  hub  rings. 

The  patent  is  not  infringed  by  making  and  selling  rings  like  the  ring  of  the 
patent,  if  they  are  not  sold  to  be  used  in  a  burr  like  that  of  the  patent,  there 
being  no  claim  in  the  patent  to  a  ring  other  than  a  ring  to  be  used  in  a  hol- 
low slotted  hub. 

(Before  Blatohfoud,  J.,  Northern  District  of  New  York,  January  28th,  1881) 


JANUARY,  1882.  257 


Campbell  ».  Earanangli. 


Blatch]x>bd^  J.  This  suit  is  brought  on  re-issued  letters 
patent  No.  8,391,  granted  to  the  plaintiffs,  September  3d, 
1878,  for  an  "  improvement  in  burrs  for  knitting-machines," 
the  original  patent,  No.  43,636,  having  been  granted  to  W. 
H.  Carr  and  M.  P.  Akin,  July  26th,  1864,  for  an  "  improve- 
ment in  knitting-machine  burrs,"  on  the  invention  of  said 
Carr.  The  specification  of  the  re-issue  is  not  signed  by  Carr 
but  is  signed  by  Campbell  and  Clute.  It  is  as  follows,  in- 
dnding  what  is  inside  of  brackets  and  what  is  outside 
of  brackets,  omitting  what  is  in  italics:  '^Figure  1  is  an 
end  view  [.]  Fig.  2  [is]  a  side  view  with  part  of  the 
blades  removed  [.]  amd  Fig.  3  [is]  a  section  [as  indicated 
by]  (A  or  about  the  [lines]  line  z  z  ivL  Fig.  1  [.]  of  a 
hdttinff^mck:hine  hwrr  emhodyvng  my  invention  ;  and  Fig.  4 
]£  a  side  view  of  one  of  the  [wings  or]  blades  [.]  and  Figs.  5 
and  6  [are]  perspective  views  of  the  two  parts  of  the  slotted 
hub  which  holds  the  blades,  and  Fig.  7  [is]  a  side  view  of  the 
[screw-bush]  part  by  which  the  two  parts  of  the  slotted  hub 
are  secured  together  [.]  in  that  hurry  like  [Like  letters  of 
reference  indicate  like]  parts  [in  the  several]  being  marked 
hy  the  same  letters  in  aU  the  figuree.  [  figures  of  the  draw- 
ings.] Before  this  invention,  burrs  for  knitting-machines 
had  been  made  with  removable  wings  or  blades^  clamped  in  a 
dotted  hub  in  such  manner  that  the  blades^  when  broken  or 
toom  outj  could  be  readily  removed  and  replaced  by  new  oneSj 
upon  simply  loosening  or  removing  the  devices  by  which  the 
Uades  were  clamped  in  the  slotted  hvb^  examples  of  such 
hniUing^rrs  being  shown  in  the  specifications  and  drawings 
iff  English  patent  No.  10,724,  granted  in  the  year  1845,  and 
United  States  Letters  Patent  No,  35,565,  dated  June  lOM, 
1862.  Bui^  in  such  knitting^urrs^  the  rem,ovable  blades 
vjere  secured  in  a  slotted  hvh  by  rings  or  disks  clamped 
against  the  lateral  edges  of  the  blades^  outside  of  the  slotted  pa/rt 
of  the  hub  J  at  its  ends  ;  so  that  that  part  of  the  body  of  the  burr 
which  held  the  blades  had  a  considerably  greater  thickness 
than  the  slotted  part  of  the  hvh  in  which  the  blades  were  in- 
sertedy  which  greater  tiiickness  rendered  the  burr  much  more 
Vol.  XX.— 17 


258  NORTHERN  DISTRICT  OP  NEW  YORK, 

Campbell  v.  Eayaiuuigh. 

btUky  and  far  less  convenient  to  use  in  some  kinds  of  knit' 
ting^maohines  than  the  common  hniUing-bv/tr  having  Hades 
of  like  width  soldered  fast  in  a  simple  slotted  hub.    [This 
inyention  consists  in  the  peculiar  constraction  of  the  remoT- 
able  wings  or  blades  of  knitting-machine  burrs,  and  also  in 
the  combination  of  snch  wings  or  blades  with  the  hub  and 
bush,  whereby  a  more  complete  and  efficient  knitting-ma- 
chine burr  is  produced  than  heretofore,  and  in  which  the 
necessity  for  clamping  the  removable  blades  at  their  extreme 
ends,  as  has  heretofore  been  done,  is  avoided.    *    *    *    ] 
JTow  one  part  of  my  invention  consists  in  making  the  inner 
ends  of  removable  wings  or  blades^  A^  of  knitting-nuuAine 
bv/rrs^  each  with  a  dovetail  or  flaring  projection^  ^tfiQ*  ^  <^ 
two  shoulders^  c^  c,  one  on  each  side  of  the  said  flaring  pro- 
jectiony  in  such  manner  that  blades  thus  formed  can  be  fimdy 
secu/red  in  a  hollow  slotted  hub  of  suitable  construction,  hy 
means  of  devices  located  within  or  inside  of  the  hub^  instead 
of  at  the  outer  ends  or  on  the  outside  thereof    Another  pa/rt 
of  my  invention  consists  in  making  a  slotted  [The]  hub  [is 
constructed]  for  a  knitting-machine  burr  of  two  separable 
rings,  D,  D',  [see  Figs.  5  and  6,  which  are  provided  with  cen- 
tral holes  to  receive  the  screw-bush]  having  eqtud  series  of 
slotSy  6,  Cy  in  and  around  them^  amd  held  together  end  to  end 
by  a  central  screw  bolt  F,  or  its  equivalent,  and  [with  obliqne 
slots,  «,  «,  Figs.  5  and  6,  and  have]  ha^mig  the  unsloUed  inside 
parts  of  their  inner  ends,  g,  g^  made  hollowing  or  inclined 
outward  toward  each  other,  [substantially  as  shown  in  Figs. 
3,  5,  and  6]  so  as  to  form  thereby  an  outwardly-narrowed 
annular  space,  A,  [see]  Fig.  3,  between  the  two  hub  rings  [.] 
in  such  manner  that  a  series  of  separate  knitting-hurr  blada 
of  suitalle  size  a/nd  shape  can  be  freely  inserted  and  flrmly 
clamped  within  and  by  the  said  united  hub  rings  themsdves, 
without  the  aid  of  any  other  device  or  devices.     [The  hub 
ring  D'  is  provided  with  a  screw-thread,  substantially  as  shown 
in  Fig.  5.     The  central  screw-bush  F,  or  its  equivalent,  is 
constructed,  substantially  as  shown  in  Figs.  3  and  7,  of  a 
diameter  to  fit  the  central  hole  in  ring  D,  and  is  provided 


JANUARY,  1882.  269 


Campbell  «.  KaTammgh. 


with  a  central  hole,  see  Fig.  3,  to  receive  the  arbor  or  stnd 
upon  which  the  burr  revolves.     This  bush  is  provided  upon 
one  end  with  a  collar  of  somewhat  louger  diameter  than  the 
central  hole  in   ring  D,  (see  Figs.  3  and  7,)  and  upon  the 
other  end  with  a  screw-thread  which  fits  and    screws  into 
the  screw  in  the  central  hole  of  ring  D\     The  blade  or 
wing  A,  (see  Fig.  4,)  is  constructed   from  sheet  metal  of 
proper  thickness  in  the  ordinary  way,  and  is  provided  with 
and  has  attached  to  its  inner  edge  the  dovetail  or  flaring  pro- 
jection hj  wider  at  its  inner  extreme  end  than  at  the  point 
where  it  is  joined  to  the  blade  or  wing.    The  ring  D  is  placed 
npon  the  screw-bush  F  close  to  the  collar,  (see  Fig.  3,)  and 
the  ring  D'  is  screwed  upon  the  screw  of  the  bush  F  a  proper 
distance.    The  rings  are  adjusted  so  that  the  slots  e,  e^  ex 
actlj  correspond  with  each  other  when  on  the  bush  F.    A 
series  of  wings  or  blades^  A,  are  placed  in  proper  position 
successively  in  the  slots  e,  e^  with  the  dovetails  or  flaring 
projections  h  extending  into  the  outwardly-narrowed  annular 
recess  A,  formed  by  and  between  the  ends  g^  g  of  the  hub- 
rings  D  D\  (see  Figs.  3,  5  and  6,)  and  the  screw-bush  F  is 
then  firmly  screwed  into  the  ring  J)\    This  action  of  the 
acrews  closes  together  endwise  the  two  hub  rings  D  D']    And 
wnjother partqf  my  invention  corisista  in  the  arrangement  of  a 
series  qfhniUing-burr  bladeSj  Aj  each  having  on  its  inner  end 
a  dovetail  or  flaring  projection^  ij  and  shotUders^  c,  c,  on  both 
ndee  thereof j  in  cornbination  with  a  knitting-burr  hub  com- 
poeed  of  two  rings,  D,  D\  having  equal  series  of  slots,  e,  e,  in 
and  around  them,  amd  held  together  end  to  end  by  a  central 
screu)  bolt  F,  or  its  equivalent,  with  the  inside  unslottedpart, 
g,  g,  of  their  inner  ends  inclined  outward  toward  each  other 
in  such  manner  [as  to  cause  their]  that  the  said  inclined  inner 
ends  g,  g,  [to]  (f  the  hvh  rings  clamp  against  the  inclined 
edges,  i,  i,  of  the  flaring  projections  [or  dovetails  on]  b  c/the 
blades  [or  wings]  and  [thus]  thereby  draw  and  hold  [them 
into  place]  the  blades  into  and  with  their  [edges]  shoulders, 
c,  c,  [tightly  pressed]   tight    against    the    bottoms  of  the 
[oblique]  slots  e,  e  in  the  hub-rings  [.] ;  and  thus  produce 


260  NORTHERN  DISTRICT  OP  NEW  YORK, 

Campbell  v.  EATanangfa. 

[From  this  it  will  be  seen  that]  a  cheap  and  durable  knitting- 
barr  [is  produced,]  from  which  any  or  all  of  its  blades  can  be 
readily  removed  and  replaced  by  others,  [by]  ttpon  simply 
[unscrewing  the  screw-bush  F,  thereby]  loosening  the  hnb 
rings  [and]  in  which  the  blades  are  clamped  [.]  in  a  dotted 
hvhj  not  only  by  means  of  devices  located  inside  of  the  hub^ 
tut  hy  means  of  the  inner  ends  of  the  two  united  hub-ringi 
that  constitute  the  dotted  huh  itsdf  [This]  And  sueh  a 
knitting-burr  is  thinner  and  lighter,  and  generally  more 
readily  applied  to  knitting-machines  of  close  and  compact 
eonstrnction  than  a  knitting-burr  having  projected  blades  of 
Jike  width  clamped  in  a  slotted  hub  by  means  of  devices  ap- 
plied to  the  [ends]  edges  of  the  blades  at  the  outer  ends  or  on 
the  outside  of  the  slotted  hub.'^  Reading  in  the  foregoing 
what  is  outside  of  brackets,  including  what  is  in  italics,  and 
omitting  what  is  inside  of  brackets,  gives  the  text  of  the 
original  specification. 

The  claims  of  the  re-issue  are  as  follows :  ^'  1.  A  knitting- 
burr  blade.  A,  having  on  its  inner  edge  a  dovetail  or  flaring 
projection,  &,  and  shoulders  c^  o,  substantially  as  herein  de- 
scribed. 2.  A  series  of  knitting-burr  blades  or  wings  having 
a  dovetail  or  flaring  projection  on  the  inner  edge  of  each,  in 
combination  with  a  hub  having  oblique  slots  and  an  outwardly- 
narrowed  annular  space  wherein  the  dovetails  or  flaring  pro- 
jections of  the  blades  are  secured.  8.  The  combination  of  a 
series  of  wings  or  blades  having  a  dovetail  or  flaring  projec- 
tion on  the  inner  edge  of  each,  a  hub  having  oblique  slots  and 
an  outwardly-narrowed  annular  space,  and  a  central  hollow 
screw  bush  or  its  equivalent,  all  operating  together,  as  de- 
scribed, so  as  to  clamp  within  the  outwardly-narrowed  annu- 
lar space  the  edges  of  the  dovetails  or  flaring  projections,  sub- 
stantially as  described." 

The  claims  of  the  original  patent  were  as  follows :  '^  1. 
A  knitting-burr  blade,  A,  having  on  its  inner  end  a  dovetail 
or  flaring  projection,  ft,  and  lateral  shoulders,  c,  c,  substantially 
as  herein  described.  2.  A  knitting-burr  hub  composed  of 
two  rings,  D,  D\  slotted  and  secured  together  end  to  end,  and 


JANUARY,   1882.  261 


Campbell  v.  Kayanangh. 


having  an  outwardly-narrowed  annnlar  space,  A,  formed  by 
and  between  the  inner  ends  of  the  said  united  hub  rings, 
substantially  as  herein  described.  3.  The  combination  of  a 
series  of  wings  or  blades,  A,  each  having  a  dovetail  or  flaring 
projection,  bj  and  shoulders,  e,  Cj  on  its  inner  end,  with  a  hub 
composed  of  two  rings,  D,  D',  slotted  and  clamped  together 
end  to  end,  and  having  an  outwardly-narrowed  annular  recess, 
hy  formed  by  and  between  the  inner  ends  of  the  said  united 
hub-rings,  substantially  as  herein  described." 

It  cannot  fail  of  observation,  that  the  hub,  composed  of 
two  slotted  rings,  secured  together,  with  an  outwardly-nar- 
rowed annular  space  between  the  inner  ends  of  the  rings,  is 
Dot  claimed  in  the  re-issue  either  by  itself  or  in  combination 
with  the  wings.  Such  a  hub  is  claimed  in  claim  2  of  the 
original.  Such  a  hub  in  combination  with  the  wings  is 
daimed  in  claim  8  of  the  original.  Such  a  hub  is  made 
a  prominent  feature  of  invention  in  the  original,  so  that 
the  wings  may  be  clamped  between  and  by  the  rings  without 
other  device.  In  claims  2  and  8  of  the  re-issue  the  effort 
seems  to  be  to  reduce  the  hub  to  a  hub  not  necessarily  of  two 
Blotted  rings,  and  to  a  hub  having  an  outwardly-narrowed  an- 
nular space  somewhere  but  not  between  the  inner  ends  of  two 
dotted  hub  rings.  It  is  clear  from  the  description  and  draw- 
ings of  the  original  patent  that  Carr  had  no  idea  of  an  annu- 
lar space  anywhere  except  between  the  two  slotted  hub-rings, 
a  hoUow  interior  annular  space  in  a  hub  formed  of  two  slotted 
rings.  The  description  in  the  re-issue  speaks  only  of  '^an 
outwardly-narrowed  annnlar  space,  A,  between  the  two  hub- 
rings,"  which  are  both  of  them  slotted  rings.  Therefore,  the 
^hub"  in  claims  2  and  3  of  the  re-issue  must  be  construed  to 
be  only  a  hub  formed  of  two  slotted  rings,  and  the  '^  out- 
wardly-narrowed annular  space  "  in  those  claims  must  be  con- 
strued to  be  only  such  a  space  when  it  is  a  hollow  space  be- 
tween two  slotted  hub-rings.  The  original  specification 
points  out  that  the  old  way  of  securing  removable  rings  in  a 
dotted  hub  was  to  press  discs  against  their  edges  outside  of 


262  NORTHERN  DISTRICT  OP  NEW  YORK, 


Campbell  v.  EayaiiAOgh. 


the  end  of  the  Blotted  part,  and  that  Oarr's  idea  was  to  put 
the  pressing  device,  and,  of  course,  the  part  to  be  pressed,  in- 
side of  the  hub.  He  did  this  by  a  hoUow  hub,  made  of  two 
separable  rings,  |;iaying  an  outwardlj-narrowed  annular  space 
between  them,  and  put  into  this  space  a  correspondingly 
shaped  dovetail  attached  to  the  wing  in  the  slot,  and  made 
the  rings  press  against  the  inclined  edges  of  the  dovetail,  and 
so  hold  it  tightly  against  the  bottom  of  the  slot.  Under  the 
above  construction  the  defendant  does  not  infringe  claims  2 
and  8  of  the  re-issue. 

In  the  defendant's  burr  No.  7,  the  hub  is  in  one  piece  and 
not  in  two.  There  is  no  hollow  space  between  two  rings. 
The  wings  No.  6  have  a  projection  downward  at  one  end, 
which  projection  is  bevelled  on  its  inner  edge.  That  edge 
comes  against  a  shoulder  on  one  face  of  the  hub,  and  a  disc  out- 
side next  that  face  presses  against  the  edges  of  the  wings.  Tbis 
disc  is  no  part  of  the  hub.  It  is  not  slotted.  It  is  pressed  up 
by  a  screw  bolt  and  holds  the  wings  in  place.  It  does  so  in 
substantially  the  same  manner  referred  to  as  old  in  the  origi- 
nal specification. 

The  wings  No.  6  are  no  infringement  of  claim  1.  They 
have  but  one  shoulder  and  could  not  be  used  in  the  Garr 
burr. 

The  wings  No.  5,  made  and  sold  by  the  defendant,  thongh 
like  Carr's  wing,  were  not  sold  to  be  used  in  a  burr  made  like 
Oarr's.  Carr's  burr,  it  is  shown,  went  out  of  use,  and  was  super- 
seded by  forms  not  covered  by  the  patent.  The  burrs  in  which 
such  wings  were  to  be  used  were  not  covered  by  the  patent,  be- 
cause they  did  not  have  a  hub  of  two  slotted  rings.  The  wing 
per  se  is  useless,  and  it  was  not  sold  to  be  used,  nor  was  it  used, 
in  any  infringing  structure.  Hence,  the  patent  was  not  infringed 
by  making  or  selling  it.  Claim  1  must  be  limited  to  a  wing  to 
be  used  in  a  hollow  slotted  hub.  Otherwise,  it  is  not  a  claim 
to  any  mechanism  or  to  any  patentable  structure,  but  only  to  a 
piece  of  metal  of  a  certain  shape,  incapable  of  use  till  incor- 
porated in  another  structure.    The  article  is  not  Carr's  knit- 


JAirUARY,  1882.  263 


Searls  «.  Merri&m. 


ting-burr  blade,  unless  it  is  to  be  used  in  the  manner  pointed 
oat  in  the  patent. 

The  bill  must  be  dismissed,  with  costs. 

E.  S.  Jenneyy  for  the  plaintiffs. 

K  Catoenj  for  the  defendant. 


Anson  Seabls 
John  O.  Mtbrtctam  and  Pebby  D.  Bandall.    In  Equtit. 

The  dafans  of  letters  patent  No.  221,482,  granted  to  Aneon  Searls,  as  assignee 
of  John  M.  Underwood,  the  inventor,  Noyember  lltb,  1879,  for  an  "  improve- 
ment  in  wliip  sockets,"  namely,  "  1.  The  combination  with  a  whip  socket 
having  an  annular  recess  in  it,  of  a  flexible  elastic  ring,  which  may  be  held  in 
sach  recess  by  its  own  elastic  force,  and  which  is  provided  on  its  inner  edge 
with  non-contiguous  projections,  separated  so  that  they  cannot  be  pressed  into 
contact  with  one  another  by  the  insertion  of  the  whip  stock  into  the  ring. 
2.  The  ring  composed  of  a  body  with  such  projections." —  are  invalid,  for 
want  of  invention. 

A  ring  with  inward  non-contiguous  projections  existed  before,  though  not  used 
with  the  annular  recess,  and  the  annular  recess  existed  before,  used  with  a 
plain  ring. 

(Before  Blatohpobd,  J.,  Southern  District  of  New  York,  January  80th,  1882.) 

Blat€H70bd,  J.  This  sait  is  brought  on  letters  patent 
No.  S21,482,  granted  to  the  plaintiff,  as  assignee  of  John  M. 
Underwood,  the  inventor,  November  11th,  1879,  for  an  "  im- 
provement in  whip  sodcets."  The  whip  socket  is  formed  of 
a  hollow  cylinder,  the  npper  open  end  of  which  is  provided 
with  a  flexible  elastic  ring  of  india  rubber  or  analogous  ma- 
terial, for  the  purpose  of  holding  the  whip  stock  upright  by 


264  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Searls  «.  Merriam. 

the  pressure  between  it  and  the  interior  of  the  ring.  The 
ring  fits  in  a  recess  or  annular  groove  in  the  upper  open  end  of 
the  socket,  so  as  to  be  retained  therein  by  its  own  elastic  expan- 
sive force.  The  inner  edge  of  the  ring  is  corrugated,  or  pro- 
vided with  projections  formed  on  and  extending  from  the 
inner  edge  of  the  body  of  the  ring,  inwards  towards  its  cen- 
tre. These  projections  are  entirely  separated  from  each  other, 
with  spaces  between  them,  so  that  they  will  not  be  pressed 
into  contact  with  one  another,  by  the  insertion  of  the  butt  of 
the  whip  stock  in  the  socket.  The  ejrtreme  inner  faces  of  the 
projections  form  a  circle  and  support  the  stock  by  pressng 
against  it,  while  they  yield  to  permit  it  to  be  pushed  in  or 
drawn  out,  and  the  ring,  thoogh  disturbed  in  place  by  those 
movements,  will  readjust  itself  in  the  recess  when  the  stock  is 
removed,  because  it  is  held  therein  by  its  elastic  force  alone. 
The  patent  has  two  claims :  ''  1.  The  combination  with  a  whip 
socket  having  an  annular  recess  in  it,  of  a  flexible  elastic  ring, 
which  may  be  held  in  such  recess  by  its  own  elastic  force,  and 
which  is  provided  on  its  inner  edge  with  non-contiguous  pro- 
jections, separated  so  that  they  cannot  be  pressed  into  contact 
with  one  another  by  the  insertion  of  the  whip  stock  into  the  ring. 
2.  The  ring  composed  of  a  body  with  such  projections." 

The  specification  sets  forth  that  ^^  a  simple  rubber  ring, 
without  projections,  had  been  used,  held  in  an  annular  recess 
in  the  mouth  of  the  socket,  the  interior  of  the  ring  bein^ 
made  small  enough  to  grasp  the  whip  stock,  and  such  a  ring 
has  been  held  in  place  in  the  recess  in  the  socket  by  its  own 
expansive  force ; "  also,  that  radial  slits  have  been  cut  in  the 
inner  edge  of  the  ring  without  removing  any  of  the  rubber. 
The  point  of  the  new  arrangement  is  stated  to  be,  that  'Hhe 
separated  projections,  while  they  are  rigid  enough  to  hold  the 
whip  upright  and  prevent  it  from  wabbling,  will  yet  so  easily 
give  way  to  the  pressure  of  the  stock  as  to  allow  the  stock  to 
be  readily  inserted  and  removed." 

It  is  obvious  that  a  plain  ring,  or  a  ring  with  radial  slits, 
has  the  same  action  in  combination  with  an  annular  recess,  in 
which  it  is  held  by  its  elastic  force  alone,  so  far-as  regards  its 


JANUARY,  1882.  265 


Searlfl  «.  Herriam. 


readjostment  in  the  recess  when  disturbed,  that  a  ring  with 
inward  non-contignons  projections  has.  The  co-action  be- 
tween the  recess  and  the  part  of  the  ring  in  it,  when  the  part 
of  the  ring  out  of  it  and  next  the  stock  is  disturbed,  is  the 
flame  in  all  three  cases.  Therefore,  if  the  ring  with  inward 
non-contiguous  projections  existed  before,  even  though  with- 
out the  annular  recess,  there  was  no  patentable  invention  in 
using  such  ring  with  the  old  annular  recess,  with  which  the 
pUdn  ring  had  been  used. 

The  date  of  the  Underwood  invention  was  May,  1878. 
The  rubber  disc,  defendants'  exhibit  C,  with  non-contiguous 
projections,  existed  in  1878.  The  number  of  projections  and 
the  namber  and  size  of  the  openings  between  the  projections 
depended  then,  and  depends  now,  on  the  thickness  of  the  rub- 
ber. That  fact  was  then  known.  It  was  also  then  known 
that  the  capacity  of  the  rubber  to  exert  the  expansive  force 
necessary  to  maintain  its  place  in  the  annular  recess  depended 
on  its  substance  and  thickness.  In  view  of  the  use  in  an  an- 
nular recess  of  a  plain  ring  of  sufficient  substance  and  thick- 
ness to  maintain  its  place  in  the  annular  recess,  the  fact  that 
defendants'  exhibit  C  was  not  used  in  an  annular  recess,  but 
was  clamped  between  the  end  of  the  socket  and  a  cap,  is  not 
sufficient  to  make  it  a  patentable  invention  to  use  in  an  an- 
nular recess  a  rubber  thicker  than  defendants'  exhibit  C,  with 
the  same  character  of  non-contiguous  projections.  The  action 
of  the  inner  part  of  the  ring  against  the  stock,  so  far  as  the 
non-contiguous  projections  are  concerned,  is  the  same  whether 
the  outer  part  of  the  ring  is  held  in  an  annular  recess,  or  is 
damped  between  the  end  of  the  socket  and  a  cap.  It  is  quite 
apparent,  as  is  stated  by  the  expert  for  the  plaintiff,  that  the 
number,  or  size,  or  shape  of  the  openings  between  the  projec- 
tions does  not  constitute  a  substantial  difference^  so  long  as 
they  are  of  sufficient  size  and  of  a  proper  shape  to  permit  the 
stock  to  pass  through  the  ring  without  forcing  the  edges  of 
the  projections  in  contact  with  each  other,  and  the  smaller 
portions  of  the  projections  are  extended  towards  the  centre. 
These  conditions  are  found  in  defendants'  exhibit  C.    When 


366  Ei^  STERN  DISTEICT  OF  NEW  YORE, 

HerdanuMi  v.  Lewis. 

the  idea  is  once  Buggested,  as  in  that  exhibit,  to  have  opeDings 
of  that  character,  it  is  but  ordinary  knowledge  to  yarj  their 
number  and  size  according  to  the  thickness  of  the  material 

Neither  claim  of  the  patent  can  be  sustained,  and  the  bill 
is  dismissed,  with  costs. 

J.  P.  Mtohj  for  the  plaintiff. 

ilT.  Davenportj  for  the  defendants. 


Sabah  E.  Herdsman  and  others 

vs. 
Hugh  Lewis  and  othebs.    In  Eqihtt. 

A  motion  for  a  trial  before  a  jury,  la  an  equity  suit,  on  feigned  issaee,  of  certain 
questions  of  fact  raised  by  the  pleadings,  was  denied,  no  teetimony  baTing  as 
yet  been  taken,  and  it  appearing  that  the  testimony  would  be,  for  the  wod 
part,  in  writing. 

(Before  Bxnsdiot,  J.,  Eastern  District  of  New  York,  January  SOth,  1881) 

m 

Benedict,  J.  This  is  a  motion  in  an  equity  cause,  for  the 
trial  before  a  jnrj,  npon  feigned  issues,  of  certain  qnestioiiB 
of  fact  raised  by  the  pleadings.  It  appears  by  the  papers  that 
no  testimony  whatever  has  yet  been  taken  in  the  cause,  and 
that  the  decision  may  tnm  npon  the  question  of  fact  whether 
certain  instruments  described  in  the  bill,  and  against  which 
the  plaintiffs  seek  relief,  were  procured  by  fraud  and  dnresB. 
While  it  is  not  doubted  that  a  Court  of  the  United  States 
sitting  in  equity  may,  in  a  proper  case,  direct  questions  of  fact 
arising  in  an  equity  cause  to  be  passed  on  by  a  jury,  neither 
party  has  an  absolute  right  to  such  a  trial.  Whether  a  jury 
trial  be,  in  any  case,  necessary  or  desirable,  depends  upon  the 
facts  of  the  case.    In  this  case,  I  see  no  necessity,  at  this  time, 


FEBRUARY,  1882.  267 


Fraxee  «.  Moffitt. 


for  such  a  proceeding.  Feigned  issnes  are  awarded,  it  is  said, 
^'in  order  to  relieve  and  ease  the  conscience  of  the  Court," 
but  here  the  necessity  of  such  relief  does  not  as  yet  appear. 
The  surmise,  that  the  testimony,  when  taken  before  an  exam- 
iner, will  prove  conflicting  and  uncertain,  affords  no  founda- 
tion for  present  action  by  the  Court. 

Another  of  the  reasons  assigned  for  granting  feigned 
iBBoes,  viz.,  because  ^^  the  Court  is  so  sensible  of  the  deficiency 
of  trial  by  written  evidence,"  also  fails  in  this  case,  for,  it  is 
quite  apparent,  that,  in  a  jury  trial,  the  testimony  would  be, 
for  the  most  part,  in  writing,  owing  to  the  circumstance  that 
the  transaction  in  question  occurred  in  Texas. 

For  these  reasons,  the  motion  to  award  feigned  issues  in 
the  case  at  this  time  is  denied. 


H.  P.  Herdnumj  for  the  plaintiffs. 
Charles  M.  Da  Costa,  for  the  defendants. 


Jonathan  A.  Fbazeb  and  Wee^liam  Y.  Frazbs 

vs. 

Stbphen  MoFFirr. 

H«7  b  not  a  manafftctared  article,  under  §  2,616  of  the  RoTifled  Statutes,  and 
00  Bobject  to  a  duty  of  20  per  mrUum  ad  valorem^  bnt  is  a  raw  or  nnmanu- 
fiMtnred  article,  under  that  section,  and  so  is  subject  to  a  datj  of  10  ptr 
eentum  advahrem. 

The  protest  in  this  case  was  "against  any  greater  rate  of  duties  •  «  « 
than  at  the  rate  of  ten  per  emium  ad  valorem,  for  the  reason  and  on  the 
grounds  that  no  higher  rate  than  ten/Mr  centum  can  lawfully  or  properly  be 
charged  on  hay  imported."  The  collector  had  liquidated  the  daties  at 
20  per  ceni.,  under  §  2,616:  Held,  that  the  protest  was  sufficient,  under 
8  2,981. 

(Before  BLATCHrou),  J.,  Northern  District  of  New  York,  February  l8t»  1882.) 


268  NORTHERN  DISTRICT  OF  NEW  YORK, 

Frazee  v.  Moffltt 

Blatohfoed,  J.  This  is  a  suit  against  the  collector  of 
customs  at  Rouse's  Point,  to  recover  back  daties  paid  on  hay 
in  bales,  imported  from  Canada  into  the  United  States.  There 
is  no  duty  on  hay  by  name,  but  §  2,516  of  the  Revised  Statutes 
provides  as  follows :  ^^  There  shall  be  ^evied,  collected  and 
paid  on  the  importation  of  all  raw  or  unmanufactured  articles, 
not  herein  enumerated  or  provided  for,  a  duty  of  ten  per  cenr 
turn  ad  valorem;  and  on  all  articles  manufactured  in  whole 
or  in  part,  not  herein  enumerated  or  provided  for,  a  duty  of 
twenty  j7^  centum  ad  valorem?^  Hay  is  not  otherwise  enu- 
merated or  provided  for.  The  collector  imposed  a  duty  of 
^(Sperowd.  on  the  hay,  as  a  manufactured  article.  The  plaint- 
iffs protested  and  appealed  to  the  Secretary  of  the  Treasury. 
The  ground  of  the  appeal  was  that  the  duty  should  have  been 
only  10  per  cent  because,  under  §  2,516,  hay  was  a  raw  or 
unmanufactured  article.  The  decision  of  the  collector  was 
affirmed.  This  suit  was  then  brought.  At  the  trial  the 
plaintiffs  had  a  verdict  for  $1,976  86,  and  the  defendant  now 
moves  for  a  new  trial  on  a  bill  of  exceptions  setting  forth  all 
the  testimony  taken  on  the  trial. 

1.  There  is  an  exception  by  the  defendant  as  to  the  suffi- 
ciency of  the  protest.  The  protest  was  ^*  against  any  greater 
rate  of  duties  being  charged  upon  hay  shipped  to  or  by  us 
from  Canada  to  the  United  States,  entered  with  you  or  at  the 
customs  office  at  Rouse's  Point,  than  at  the  rate  of  ten  per 
centum  ad  valoremy  for  the  reason  and  on  the  grounds  that 
no  higher  rate  than  ten  per  centn/m  can  lawfully  or  properly 
be  charged  on  hay  imported  under  the  laws  of  the  United 
States  concerning  duties  on  imports."  There  was  also  a 
notice  that  an  appeal  would  be  taken  in  case  of  an  adverse 
decision.  A  proper  protest,  as  well  as  an  appeal,  are  pre- 
requisites to  the  right  to  sue.  (§  3,011  Rev.  Staty  as  amended 
hy  the  Act  of  February  27th,  1877,  20  U.  S.  Stat,  at  large, 
247.)  The  protest  must  set  forth  "  distinctly  and  specifical- 
ly "  the  grounds  of  objection  to  the  decision  of  the  collector 
as  to  the  rate  and  amount  of  duties.  (§  2,931  Hev.  Stat.)  This 
provision  was  made  by  the  Act  of  June  30th,  1864,  §  14,  (13 


FEBRUARY,  1882,  269 


Frazee  v.  Moffitt. 


TJ.  S,  Stat,  at  Loflrge^  214,)  and  is  sabstantiallj  the  same  as 
that  in  the  Act  of  February  26th,  1846,  (5  /rf.,  727,)  which 
required  the  protest  to  set  forth  "  distinctly  and  specifically  " 
the  grounds  of  objection  to  the  payment  of  the  duties. 

It  is  contended  ffr  the  defendant  that  the  protest  in  this 
case  does  not  comply  with  the  statute,  in  that,  although  it 
objects  to  paying  more  than  10  per  oent.^  it  states  no  ground 
except  that  no  more  than  10  per  cent,  ought  to  be  paid ;  and 
that  it  states  only  a  conclusion  of  law,  and  leaves  the  defend- 
ant to  find  out  as  best  he  can  why  it  is  the  law.  But,  the 
protest  was  made  in  view  of  a  liquidation  of  duties  at  20  per 
cent.,,  which  is  the  " greater  rate  of  duties"  referred  to  in  the 
protest.  The  liquidation  at  20  per  cent,  was  under  §  2,516. 
No  other  provision  of  law  than  that  section  could  possibly 
apply  to  hay.  With  §  2,616  and  the  protest  before  him,  the 
collector  could  not  fail  to  understand  from  the  protest,  that 
the  rate  of  ten  per  cefit.  claimed  in  it  to  be  the  proper  duty 
was  the  rata  of  ten  per  cent,  named  in  §  2,616. 

A  mere  protest  against  the  payment  of  the  duty  exacted  is 
not  a  compliance  with  the  statute.  This  protest  is  not  a  mere 
protest  against  the  duty  charged.  It  is  a  protest  against  that, 
with  the  further  statement  that  only  10  per  cent,  should  have 
been  charged  on  hay.  Hay  not  being  enumerated  or  provided 
for  anywhere,  if  not  in  §2,516,  and  the  20^^  cerU.  and  the 
10  per  cent,  being  put  in  contrast  both  in  the  protest  and  in 
§  2,516,  and  the  collector  having  acted  under  §  2,616,  in  impos- 
ing the  20  per  cent.,  the  language  of  the  protest  fairly  re- 
ferred the  collector  to  the  10  per  cent,  clause  of  §  2,516.  A 
protest  is  a  commercial  document,  usually  made  in  the  hurry 
of  business,  entitled  to  a  liberal  interpretation,  and  not  re- 
quiring technical  precision,  while  at  the  same  time  it  must 
show  fairly  that  the  objection  afterwards  made  at  the  trial  was 
in  the  mind  of  the  party  and  was  brought  to  the  knowledge 
of  the  collector,  so  as  to  secure  to  the  Government  the  prac- 
tical advantage  which  the  statute  was  designed  to  secure. 
{Swansion  v.  Morton,  1  Curtis^  C.  C.  B.,  294 ;  Krieder  v. 
Morton,  Id.,  413 ;  Burgees  v.  Converse,  2  Id.^  216.) 


270  NORTHERN  DISTRICT  OP  NEW  YORK, 

Frasee  v,  Moffitt 

The  oase  oiSteegman  v.  Maoowell,  (3  Blatohf.  O.  C.  B.j  365,) 
is  nearer  like  the  present  case  than  any  one  I  have  been  able  to 
find.  The  plaintifis  imported  articles  known  in  commerce  as 
*^  thread  laces/'  composed  of  linen  and  cotton.  The  collector 
exacted  25  per  cent,  dnt j  on  them,  as  *'  cotton  laces  "  under 
schednle  D  of  the  Act  of  July  30th,  1846,  (9  U.  8.  Stat,  at 
La/rge^  46.)  "  Thread  laces "  was  named  in  Schedule  E,  which 
was  a  20^^  cent.  Schedule.  The  protest  was  against  the  pay- 
ment of  the  25^^r  c^n^.,  and  claimed  that  the  ^^  thread  laces  " 
were  liable  to  a  duty  of  only  20  per  cent.  The  Ciourt  held 
that  the  protest  was  a  notice  to  the  collector,  adequately  dis- 
tinct and  specific,  of  the  grounds  of  objection  to  the  payment 
demanded  and  satisfied  the  provisions  of  the  statute.  The 
protest  did  not  say  that  the  ground  was  that  the  article  was 
provided  for  by  name  as  ''  thread  laces,"  in  Schedule  £ ;  but 
it  named  the  20  per  cent,  and  protested  against  the  25  ^r  cenJt. 
Schedule  E  immediately  followed  Schednle  D,  in  the  same  Act. 
In  the  present  case  the  protest  names  the  10  per  cent,  and 
protests  against  the  20.  The  only  suggestion  against  it  is  that 
it  does  not  say  that  hay  is  not  an  article  manufactured  in 
whole  or  in  part  and  that  it  is  a  raw  or  unmanufactured  arti- 
cle. But  these  provisions  are  in  the  same  section.  In  the 
case  above  cited  it  was  expressly  held  that  the  statute  was 
complied  with,  although  the  protest  did  not  designate  the 
particular  Schedule  and  name  under  which  the  importation 
should  be  ranked. 

The  principle  of  the  foregoing  views  is  sanctioned  by  the 
Supreme  Court  in  Gonveree  v.  BurgeeSy  (18  Howard^  *13,) 
where  it  is  said,  in  regard  to  the  protest  Act  of  1845 :  "We 
are  not,  therefore,  disposed  to  exact  any  nice  precision,  nor  to 
apply  any  strict  rule  of  construction  upon  the  notices  re- 
quired under  this  statute.  It  is  sufiScient  if  the  importer  in- 
dicates distinctly  and  definitely  the  source  of  his  complaint 
and  his  design  to  make  it  the  foundation  for  a  claim  against 
th^  Government."  The  protest  in  this  case  must  be  held  to 
have  been  sufficient. 

2.  At  the  dose  of  the  evidence  the  defendant  asked  the 


FEBRUARY,  1882.  271 


Fraiee  v.  Moffitt 


Court  to  direct  a  verdict  for  the  defendant,  on  the  ground  that 
the  undisputed  evidence  showed  that  hay  was  a  manufactured 
article  and  bj  the  law  subject  to  a  duty  of  20  j>er  cent,  ad 
valorem.  The  motion  was  denied  and  the  defendant  excepted, 
and  the  case  was  submitted  to  the  jury,  which  found  for  the 
plaintifEs.  The  defendant  contends  that  a  verdict  for  the  de- 
fendant should  have  been  directed. 

The  hay  was  pressed  in  bales  ready  for  market,  and  not 
chopped  up  fine.  It  was  mostly  Timothy  hay  used  for  horse 
feed.  The  usual  process  in  regard  to  the  hay  is  to  cut  the 
grass  and  scatter  it  by  a  tedder  to  enable  it  to  dry,  and  then 
rake  it  up  and  put  it  into  cocks,  and  let  the  cocks  remain  in 
the  field  over  night,  and  the  next  day  open  out  the  cocks  to 
dry  and  then  put  it  in  the  bam  that  day.  While  in  the  cocks 
the  hay  sweats.  After  it  is  put  in  the  bam,  it  must  remain 
there  a  month  before  it  is  dry  enough  to  be  pressed  and 
baled.  The  grass  must  be  cut  while  green  to  make  good  hay. 
If  left  to  dry  uncut  it  becomes  worthless.  When  the  grass  is 
cut  green  it  contains  starch  and  gluten.  After  it  is  cut  the 
heat  of  the  sun  and  the  oxygen  in  the  air  convert  the  starch 
into  sugar  before  the  hay  becomes  dry. 

The  defendant  contends  that,  on  this  evidence,  hay  is  a 
manufactured  article,  under  g  2,516 ;  that  hay  is  a  new  article 
transformed  from  grass,  as  much  as  sugar  is  from  the  cane 
juice  or  the  maple  sap,  or  as  salt  is  from  the  saline  brine ;  that 
the  heat  of  the  sun  and  the  air  and  human  skill  and  labor 
manufacture  the  grass  into  hay ;  and  that  the  verdict  for  the 
plaintiffs  was  not  only  without  evidence  but  against  the  evi- 
dence. 

I  am  of  opinion  that  nothing  that  was  done  or  occurred  to 
the  grass  which  became  this  hay  caused  it  to  be  other  than  a 
raw  orimmanufactured  article,  or  to  be  an  article  manufactured 
in  whole  or  in  part,  under  §  2,516 ;  that  the  jury  were  justified 
in  finding  the  verdict  they  did ;  that  the  direction  to  find  a 
verdict  for  the  defendant  would  have  been  erroneous ;  that  a 
verdict  for  the  defendant  would  have  been  erroneous;  and 


372  NORTHBRN  DISTRICT  OF  NBW  YORK, 

Fraxee  v,  Moffitt 

that  it  would  have  been  proper  to  direct  a  verdict  for  the 
plaintiffs. 

If  hay  is  a  raw  article  it  is  liable  to  only  10  per  cent  duty. 
Many  articles  are  properly  called  raw  which  have  undergone 
some  manipolation.  Cotton  is  picked  from  the  bolls,  and 
cleaned  by  ginning,  and  baled.  Yet  it  is  raw  cotton  in  the 
bale.  Wheat  is  cut,  and  the  grains  are  threshed  out,  and  then 
subjected  to  a  cleaning  machine,  and  then  bagged.  Yet  it  is 
raw  wheat  in  the  bag.  So  with  other  grains.  The  cotton  and 
the  grains  undergo  such  change  and  preparation  as  exposure 
to  light,  and  natural  or  artificial  heat,  and  air,  and  the  manip- 
ulation they  receive,  produce  or  allow,  be  it  more  or  less. 
Yet  neither  the  cotton  nor  the  grains  would  be  said  to  be 
manufactured.  Salt  and  sugar  are  new  articles.  Cotton  and 
grains  are  the  same  articles  they  were  when  on  the  plant  with 
its  roots  in  the  earth.  So  hay  is  the  same  article  it  was  when 
it  was  stalks  of  grass  with  roots  in  the  earth.  It  is  dried,  to 
be  sure.  But  the  drying  and  any  conversion  of  starch  into 
sugar  are  mere  incidents  of  the  necessary  cutting  to  enable  it 
to  be  stored  for  food  in  latitudes  where  grass  cannot  be  found 
all  the  year  round.  Where  it  can  be  so  found  no  hay  is 
stored.  Dried  apples  would  not  be  called  a  manufactured 
article,  though  the  apple  is  peeled  and  cored  and  sliced  and 
dried  by  exposure  to  the  san  and  manipulation.  The  sub- 
stance  of  dried  apples  is  still  apples.  The  substance  of  dried 
grass  or  hay  is  still  grass.  Change  of  name  and  manipulation 
do  not  necessarily  constitute  manufacture,  within  the  meaning 
of  §  2,516.  Eadi  case  must  be  decided  according  to  its  own 
circumstances.  The  verdict  of  the  jury  in  this  case  was  a 
correct  one,  under  the  foregoing  views,  and  the  motion  for  a 
new  trial  is  denied. 

KeUy  <k  MaoRde^  for  the  plaintiffs. 

Martin  L  Townsendj  {District  Attorney^  for  the  de- 
fendant. 


FEBRUARY,  188S.  273 

Fisher  v.  Meyer. 


MOBTON  C.  F18HEB 
VS, 

MoBirz  Meteb  and  othbbs. 

In  tbb  case,  after  a  yerdiot  agaiDrt  two  of  the  defendanta  for  flSlfOOO,  they  1^ 
plied  for  a  stay  of  proceedings  during  the  time  aUowed  for  maUng  a  case,  and 
till  farther  order.  The  applicants  being  in  aotiye  bnsinesfl,  the  Court  granted 
the  application  on  their  giving  a  bond,  with  two  satisfisctory  surges,  in  the 
snm  of  $200,000,  conditioned  for  the  payment  to  the  plaintiff  of  any  judgment 
which  might  be  rendered  against  them  in  this  suit,  or  for  the  satisfaction  of 
the  judgment. 

(Before  BamuK,  J.,  Southern  District  of  New  York,  February  Ist,  188S.) 

Shipman,  J.  The  motion  of  the  defendants  Meyer  and 
Adler  for  a  stay  of  proceedings  during  the  time  allowed  for 
making  a  case,  and  till  further  order,  is  not  opposed  by  the 
plaintiff,  but  he  insists  that  it  should  be  granted  upon  terms, 
i.  ^.,  inasmuch  as  the  plaintiff  has  now  no  security,  that  secu- 
rity should  be  given  for  the  payment  of  the  judgment,  if  one 
is  rendered. 

The  verdict  amounts  to  a  very  large  sum,  viz.,  about  $181,000. 
The  defendants  are  probably  now  of  ample  means  to  pay  all 
their  liabilities,  but  they  are  in  active  busmess,  and  whether 
they  will  be  able  to  pay  their  debts  at  the  expiration  of  some 
months,  in  case  judgment  is  entered  against  them,  depends 
upon  contingencies  which  cannot  now  be  ascertained  and 
made  certain.  They  are  now  able  to  give  security  and  no 
serious  hardship  will  be  imposed  thereby.  If  no  security  is 
given,  a  large  claim  is  placed  at  some  hazard.  In  the  case  of 
so  large  a  verdict  against  parties  who  are  subject  to  the  vicis- 
situdes of  business,  I  think  that  the  plaintiff  is  entitled  to 
security. 

The  motion  of  the  defendants  for  a  stay  is  granted,  pro- 
vided they  shall  give  bond,  with  two  sureties,  to  the  satisfac- 
VoL.  XX.— 18 


274  SOUTHERN  DISTRICT  OF  NEW  YORK, 


Biierk  v.  Imhaeoser. 


tion  of  the  Court,  in  the  som  of  two  hundred  thousand  dol- 
lars, conditioned  for  the  payment  to  the  plaintiff  of  any  judg- 
ment which  may  be  rendered  against  them  in  this  suit,  or  for 
the  satisfaction  of  said  judgment. 

In  case  a  writ  of  error  shall  be  taken  to  the  Supreme 
Court,  this  bond  can  be  vacated,  and  the  bond  required  by 
section  1,000,  upon  writs  of  error,  will  be  given. 

Luther  a.  Marshy  for  the  plaintiff! 

Joseph  J?.  ChoaU  and  Francis  N.  Bcmgs^  for  the  d&- 
fendants« 


Jacob  E.  Buebk 

vs, 

William  Imhaeusbb  and  Charles  Keinath.    In  Equitt. 

A  creditor'B  bill  on  a  money  decree  alleg^  that  the  defendant  had  or  had  had 
property,  without  specifying  any  In  particular.  It  prayed  a  diaooreryof 
property.  It  contained  interrogatories  making  more  specific  inquiries,  and 
required  the  defendants  to  answer  such  interrogatories  as  by  the  note  there- 
wider  written  they  should  be  required  to  answer,  but  there  was  no  note  there* 
uider  written.  The  answer  denied  generally  that  the  defendant  had  any 
property,  or  that  any  was  held  in  trust  for  him,  or  that  he  had  conyeyed  away 
any  since  the  decree,  or  before,  in  view  of  it,  to  defeat  it.  On  exoeptiona  for 
insufficiency,  the  answer  was  held  sufficient. 

(Before  WHXKLEBy  J.,  Southern  District  of  New  York,  February  2d,  1882.) 

W  HEELER,  J.  This  canse  has  now  been  heard  on  excep- 
tions to  the  answer  for  insufficiency.  The  bill  states  the 
recovery  of  judgments  by  decree  against  the  defendants  for 
the  payment  of  money  ;  that  execution  cannot  be  satisfied  for 
want  of  property  to  be  found ;  and  that  the  defendants  have 
or  have  had  property,  without  specifying  any  in  particular. 


FEBRUARY,   1882.  275 


Buerk  «.  Imhaenser. 


It  prays  a  discovery  of  their  property  in  hand  or  held  in  trust 
for  them.  The  interrogatories  make  more  specific  inquiries. 
The  answer  denies  generally  that  the  defendant  answering  has 
any  property  in  his  bands,  or  that  any  is  held  in  trust  for 
him,  or  that  he  has  conveyed  away  any  since  the  decree,  at 
aU,  or  before,  in  view  of  it,  to  defeat  it.  The  Rules  in  Equity 
require  defendants  to  answer  only  such  interrogatories  as  they 
are  specifically  required  by  note  to  answer.  This  bill,  accord- 
ingly, required  the  defendants  to  answer  such  interrogatories 
as  by  the  note  thereunder  written  they  should  be  required  to 
answer.  There  is  no  note  thereunder  written ;  therefore, 
there  were  no  interrogatories  to  be  specifically  answered. 
They  were  only  required  to  answer  the  stating  part  of  the 
bill.  This  the  defendant  answering  has  done  as  specifically 
as  he  is  by  the  bill  charged.  No  ground  is  known  for  making 
a  defendant  give  a  particular  account  of  all  the  property  he 
has  ever  had,  or  deny  specifically  having  had  particular  prop- 
erty, upon  such  general  charge  as  to  having  had  property 
before,  which  cannot  be  found  now  to  satisfy  judgments.  At 
least  the  particular  property  sought  to  be  reached  should  be 
pointed  out  before  anything  more  than  a  general  answer 
should  be  compelled. 

The  exceptions  are  overruled. 


WiUiam  0.  Hauff^  for  the  plaintiff. 
Arthur  V.  Briesen^  for  the  defendant. 


276  SOUTHERN   DISTRICT  OP  NEW  YORK, 

Benedict  v.  WilliAnu. 


Ebastus  D.  Benedict 

vs. 

Ephradc  Williams  and  Frank  E.  Rernoohan.    In  EQumr. 

W.  contracted  with  K.,  that  K.  ahonld  oondact  a  litigation  on  behalf  of  W.,  as 
oooneel,  and  recelye  ^  of  the  ayalle  thereof  for  so  doing.  K.  contracted 
with  M.  and  H.,  that  they  ahoald  assist  K.  in  the  litigation,  and  share  equally 
with  him  in  the  ^.  The  litigation  was  oondocted  by  them  with  the  knowledge 
of  W.  antil  he  receiyed  a  som  as  its  ayails.  M.  assigned  his  share  of  the 
ayails  to  B.  B.  sued  W.  and  K.  in  a  State  Coart  of  New  York  to  recoyer 
such  share.  The  suit  was  remoyed  into  this  Court.  B.  filed  a  bill  in  eqnity 
in  this  Court  setting  up  the  aboye  £scts.  It  was  demurred  to  on  the  grounds 
(1)  that  there  was  no  privity  of  contract  between  W.  and  M.,  or  between 
W.  and  B. ;  (2)  that  W.  was  only  liable  to  K. ;  and  (8)  that  the  remedy  of  B. 
was  at  law :     Held,  that  the  demurrer  must  be  oyerruled. 

The  distinctions  between  legal  and  equitable  procedure  being,  abolished  in  the 
State  Courts  of  New  York,  and  the  right  of  B.  being  a  purely  equitable 
right,  he  can,  in  this  Court,  proceed  in  equity. 

(Before  Whselki,  J.,  Southern  District  of  New  York,  February  2d,  1882.) 

Wheeler,  J.  This  cause  has  been  heard  on  demurrer  to 
the  bill.  It  was  commeDced  in  the  State  Court  and  retnoYed 
to  this  Court.  The  bill  shows  that  the  defendant  WUliams, 
a  citizen  of  Connecticut,  made  a  contract  with  the  defendant 
Kemochan,  a  citizen  of  Massachusetts,  by  the  terms  of  which 
the  latter  was  to  conduct  litigation  in  behalf  of  the  former 
against  the  Kansas  Pacific  Railway  Company,  as  counsel,  and 
to  receive  one-fourth  part  of  the  avails  thereof  for  so  doing; 
that,  by  a  contract  between  Eemochan  and  Edwin  R.  Meade 
and  Henry  E.  Knox,  the  two  latter  were  to  assist  in  the  con- 
duct of  the  litigation,  and  to  share  equally  with  the  former 
in  the  one-fourth  part  of  the  avails ;  that  the  litigation  was 
conducted  by  them  with  the  knowledge  of  Williams,  and 
proceeded  until  the  sum  of  twenty-seven  thousand  five  hun- 
dred dollars  was  received  from  it,  as  the  avails  of  it,  by  him ; 


FEBRUARY,  1882.  277 


Benedict  v.  WUliams. 


tliat  Meade  sold  ai:d  assigned  his  share  of  these  avails  to  the 
orator,  a  citizen  of  New  York;  that  Enox  has  been  fully 
settled  with ;  and  that  Meade's  share  has  not  been  paid  over. 

The  principal  grounds  of  demurrer  assigned  are  that  there 
was  no  privity  of  contract  between  either  Williams  and 
Meade,  or  Williams  and  the  orator ;  that  Williams  is  only 
liable  to  Eemochan,  who  may  be  liable  over  to  Meade  or  to 
the  orator ;  and  that  the  orator's  remedy,  if  he  has  any,  is  at 
law.  The  want  of  privity  relied  upon,  however,  is  not  mar 
terial.  It  may  be  that  Williams  had  only  to  pay  Eemochan, 
as  he  agreed  to,  bat,  if  so,  he  bas  not  paid  to  Eemochan 
Meade's  share.  That  share,  if  payable  to  Kemochan,  was 
payable  to  him  for  Meade,  and  Meade  would  have  the  right  to 
proceed  for  it  against  both ;  against  Eemochan  as  his  trustee, 
and  against  Williams  as  a  debtor  to  his  trustee  for  him.  This 
right  he  could  sell  and  assign,  as  the  bill  alleges  he  did  sell 
and  assign  it  to  the  orator ;  and,  when  it  was  so  sold  and  as- 
signed to  the  orator,  he  became  vested  with  the  right,  also,  in 
some  manner  to  enforce  it. 

It  is  understood  that  the  distinctions  between  legal  and 
equitable  procedure  are  done  away  with  in  the  State  Ciourts 
from  which  the  case  was  removed ;  and  that  there  the  remedy 
is  to  be  sought  by  the  real  owner  of  a  cause  of  action,  in  his 
own  name.  In  this  Court  these  distinctions  are  kept  up,  al- 
though the  proceedings  at  law  conform  to  those  in  the  Courts 
of  the  State.  At  common  law,  a  mere  chose  in  action  was 
not  assignable  at  all,  although  it  was  assignable  in  equity ; 
and,  hence,  an  assignee  of  a  chose  in  action  could  not  main- 
tain an  action  at  law  upon  it  in  his  own  name,  but  could  in 
the  name  of  the  assignor,  for  his  own  benefit ;  or  he  could 
proceed  in  equity  to  recover  it,  and,  if  he  did,  he  must  pro- 
ceed in  his  own  name.  The  orator  took  the  only  mode  that 
was  open  to  him  in  the  State  Court.  Had  the  proceedings,  re- 
mained there  his  rights  would  have  been  wrought  out  by  the 
appropriate  methods  there  provided.  But,  when  the  pro- 
ceedings were  removed  into  this  Court  they  were  neither  re- 
moved from  a  Court  of  law,  or  the  law  side  of  a  Court,  to 


278  NORTHERN  DISTRICT  OF  NEW  YORK, 

Mellen  v.  The  Town  of  Tjaneiiig. 

the  law  side  of  this  Court ;  nor  from  a  Court  of  equity,  or 
from  the  equity  side  of  a  Court,  to  the  equity  side  of  this 
Court ;  but  they  were  removed  from  that  Court  as  it  was, 
where  remedies  are  administered  without  this  distinction,  to 
this  Court,  where  the  distinction  is  observed ;  and  the  re- 
moval was  necessarily  to  that  side  of  this  Court  where  the 
appropriate  relief,  if  due,  could  be  obtained.  The  orator  is 
merely  the  assignee  of  a  chose  in  action,  which  accrued  to 
Meade,  or  to  Kernochan  for  Meade  ;  the  proceedings  are  in 
his  own  name ;  and  he  can  go  forward  with  such  proceed- 
ings only  on  the  equity  side  of  the  Court.  His  right  is  a 
purely  equitable  one,  and  strictly  cognizable  in  his  own  name 
in  a  Court  of  equity  only,  or  only  where  equitable  remedies 
are  administered ;  and  the  remedy  is  none  the  less  equitable 
because  it  might  not  be  so  classed  in  the  State  Court. 

The  demurrers  are  overruled,  with  leave  to  the  defendants 
to  answer  over  within  thirty  days,  on  payment  of  costs  of 
demurrer. 

William  A.  Beach j  for  the  plaintiff. 

Edward  M.  Shepao'dj  for  the  defendants. 


Habvey  Mellen 
The  Town  of  Lansing. 

By  §  1  of  the  Act  of  the  Legislature  of  New  York,  passed  April  6tb,  1871, 
(Lami  of  New  York,  1871,  vol,  I,  ehap.  298,  p.  686,)  the  New  Tork  and 
Oswego  Midland  Railroad  Company  was  authorised  to  extend  and  consimot 
its  road  from  the  city  of  Anbnrn,  or  from  any  point  on  said  road  easterly 
or  southerly  from  said  city,  "  upon  snch  route  end  location  and  through  such 
counties  as  the  Board  of  Directors  of  said  company  shall  deem  most  feasible 


FEBRUARY,   1882.  279 


Mellen  v.  The  Town  of  Lansing. 


and  fayorable  for  the  constraction  of  said  railroad,  to  any  point  on  Lake 
Erie  or  the  Niagara  river."  It  was  also  provided,  that  any  town  **  in  any 
county  through  or  near  which  said  railroad  or  its  branches  may  be  located  " 
might  aid  the  constmction  of  the  sold  rulroad  and  its  branches  and  exten- 
sions, by  the  issue  and  sale  of  its  bonds,  which  were  to  be  issued  and  executed 
by  commissioners  to  be  appointed  by  the  county  judge  of  the  county  in 
which  the  town  was  situated.  In  November,  1871,  the  Board  of  Directors  of 
the  company  passed  a  resolution  determining  "  that  the  construction  and  ex- 
tension of  the  said  railroad  westerly  commence  at  and  from  the  village  of 
Cortland  in  the  said  county  of  Cortland,  and  thence  to  Lake  Erie  or  the 
Niagara  river."  In  October,  1871,  commissioners  were  appointed  for  the 
town  of  Lansing,  in  Tompkins  county,  by  the  county  judge  of  that  county. 
In  December,  1871,  maps  were  filed  in  the  office  of  the  clerk  of  that  county, 
locating  parts  of  the  "  Auburn  branch  *  of  the  road  through  the  town  of 
Lansing,  and  the  road  was  made  through  that  town  to  and  through  the  ad- 
joining town  in  another  county,  and  on,  for  26  miles  in  all,  to  a  point  in  a 
farming  community,  unconnected  with  any  other  road,  and  began  to  run  in 
the  fall  of  1872.  In  January,  1872,  and  afterwards,  bonds  of  the  town  of 
Laufdng  were  issued  to  the  company,  to  the  amount  of  $76,000,  and  it  re- 
ceived in  exchange  a  certificate  for  760  shares,  ot  $100  each,  of  the  stock  of  the 
company :  Beidf  that  the  "  western  extension  **  had  nothing  to  do  with  the 
Auburn  branch ;  that  the  resolution  of  the  company  was  insufficient  to  au- 
thorize the  issuing  of  any  bonds  by  said  town ;  that  the  said  maps  did  not 
locate  any  part  of  the  "  western  extension ; "  that  there  was  no  power  in  any 
town  to  issue  any  bonds  until  all  the  counties  through  which  the  road  was 
to  pass  had  been  designated  by  the  directors ;  and  that  the  absence  of  such 
location  was  fatal  to  the  bonds  even  in  the  hands  of  a  bona  fide  holder  of 
them,  although  the  town  had  paid  same  coupons  on  the  bonds  and  had  re- 
tained the  certificate  of  stock. 

(Before  Blatchfobd,  J.,  Northern  District  of  New  Tork,  February  8d,  1882.) 

Blatohfobd,  J.  This  suit  is  brought  on  conpons  cut  from 
bonds  purporting  to  have  been  issued  bj  the  town  of  Lansing, 
in  Tompkins  county,  New  York,  and  bearing  date  December 
1st,  1871.  The  coupons  sued  on  are  47  in  number,  falling 
due  September  1st,  1879,  cut  from  47  bonds,  the  princi- 
pal of  which  bonds  amounts  to  $38,000,  the  coupons  amount- 
ing to  $1,330.  It  was  tried  once  before  this  Court  and  a 
jury,  and  the  plaintiff  had  a  verdict,  under  the  direction  of 
the  Court,  for  $1,457  69,  being  the  amount  of  the  coupons 
and  interest  thereon.  The  defendant  moved  for  a  new  trial, 
on  a  bill  of  exceptions,  containing  exceptions  taken  at  the 


280  NORTHERN  DISTRICT  OF  NEW  YORK, 

H ellen  v.  Tbe  Town  of  Lanring. 


triaL  The  Coart,  in  Aagnat,  1881,  granted  a  new  triaL 
(19  Blatchf.  C.  C.  R.,  512.)  The  new  trial  has  been  had 
before  the  Court  without  a  jury. 

The  first  question  is  as  to  the  statute  authority  for  the 
issuing  of  the  bonds  by  the  town.  By  §  1  of  the  Act  of 
April  5th,  1871,  i^Laws  of  New  Tork^  1871,  vol.  1,  chap.  298, 
p.  586,)  it  is  provided  as  follows  :  "  The  New  York  and  Os- 
wego Midland  Sailroad  Company  are  hereby  authorized  and 
empowered  to  extend  and  construct  their  railroad  from  the 
city  of  Auburn,  or  from  any  point  on  said  road  easterly  or 
southerly  from  said  city,  upon  such  route  and  location  and 
through  such  counties  as  the  board  of  directors  of  said  com- 
pany shall  deem  most  feasible  and  favorable  for  the  construc- 
tion of  said  railroad,  to  any  point  on  Lake  Erie  or  the  Ni- 
agara river,"  Then  follow  provisions  for  constructing 
other  branches.  Then  follows  this :  '^  and  any  town,  village 
or  city  in  any  county,  through  or  near  which  said  railroad  or 
its  branches  may  be  located,  except  such  counties,  towns  and 
cities  as  are  excepted  from  the  provisions  of  the  general  bond- 
ing law,  may  aid  or  facilitate  the  construction  of  the  said  New 
York  and  Oswego  Midland  Bailroad  and  its  branches  and  ex- 
tensions, by  the  issue  and  sale  of  its  bonds  in  the  manner 
provided  for  "  in  the  said  Act  of  1866  and  the  Acts  "  amend- 
atory of  and  supplementary  thereto."  The  Act  of  1866, 
referred  to,  is  the  Act  of  April  5th,  1866,  {Laws  of  Ifew 
Tork^  1866,  vol.  1,  chap.  398,  p.  874.)  It  provides  for  the 
appointment  by  the  county  judge  of  the  county  in  which  the 
town  is  situated,  of  not  more  than  three  commissioners  to 
carry  into  effect  the  purposes  of  the  Act.  The  commission- 
ers are  to  execute  the  bonds  under  their  hands  and  seals,  and 
to  issue  them.  When  issued  lawfully  they  become  the  obli- 
gations of  the  town.  All  the  statutes  then  speak  of  them  as 
bonds  issued  by  the  town. 

The  bonds  in  the  present  case  state  on  their  face  that  they 
are  obligations  of  the  town,  and  that  they  are  issued  under 
the  provisions  of  the  said  Act  of  1866,  and  the  several  Acts 
amendatory  thereof  and  supplementary  thereto,  especially  the 


FEBRUARY.   1882.  281 


MeUen  v.  Tbe  Town  of  Lansing. 


said  Act  of  1871.  The  bonds  purport  to  be  attested  by  the 
hands  and  seals  of  three  persons  who  style  themselves  therein 
''  duly  appointed  commissioners  of  the  said  to.wn  of  Lan- 
sing ; "  and  the  bonds  state  that  they  have  caused  each  of  the 
annexed  coupons  to  be  signed  by  one  of  their  number. 

The  board  of  directors  of  the  company,  on  the  16th  of 
November,  1871,  passed  the  following  resolution  :  "  Whereas, 
the  New  York  and  Oswego  Midland  Railroad  Company  had 
for  its  original  object  the  construction  of  a  railway  from  the 
city  of  New  York  to  the  city  of  Oswego ;  and,  whereas,  since 
the  organization  of  said  railroad  company,  it  has  become  de- 
sirable to  extend  their  said  railroad  to  Lake  Erie  or  the 
Niagara  river ;  and,  whereas,  the  Legislature  of  the  State  of 
New  York  did,  by  chapter  298  of  the  laws  of  1871,  authorize 
and  empower  the  said  New  York  and  Oswego  Midland  Bail- 
road  Company  to  build  and  extend  their  said  railroad  from 
the  city  of  Auburn,  or  from  any  point  easterly  or  southerly 
of  said  city,  to  any  point  on  Lake  Erie  or  the  Niagara  river ; 
and,  whereas,  the  said  railroad  company  and  its  board  of 
directors  have  decided  to  begin  such  extension  and  construc- 
tion of  said  railroad  westerly  at  and  from  the  village  of 
Cortland,  in  the  county  of  Cortland,  and  westerly  to  Lake 
Erie  or  the  Niagara  river :  Therefore,  be  it  resolved,  that 
the  board  of  directors  of  said  railroad  company  hereby  deter- 
mine that  the  construction  and  extension  of  the  said  railroad 
westerly  commence  at  and  from  the  village  of  Cortland, 
in  the  said .  county  of  Cortland,  and  thence  to  Lake 
Erie  or  the  Niagara  river."  On  the  same  16th  of  Novem- 
ber, 1871,  the  board  of  directors  of  said  company  passed 
the  following  resolution :  "  Resolved,  that  the  said  New 
York  and  Oswego  Midland  Railroad  Company,  for  the  pur- 
pose of  obtaining  money  and  materials  necessary  to  extend 
their  said  railroad  from  the  village  of  Cortland  to  Lake  Erie 
or  the  Niagara  river^  hereby  authorizes  and  directs  its  presi- 
dent and  treasurer  to  borrow  money  to  an  amount  not  exceed- 
ing twenty-five  thousand  dollars  per  mile  in  length  of  the  track 
of  the  said  railroad,  so  as  aforesaid  to  be  extended  and  con- 
structed, and,  to  secure  the  repayment  thereof,  to  issue  its  first 


282  NORTHERN  DISTRICT  OF  NEW  YORK, 


MelleD  V.  The  Town  of  Laaaing. 


mortgage  bonds,  to  be  made  payable  in  gold  coin  of  the  United 
States,  and  to  be  of  such  denomination,  and  after  such  manner 
and  form,  and  to  such  trustees,  as  the  said  president  may  de- 
termine upon  and  deem  best  for  the  interests,  of  the  said 
company.*' 

On  the  2l8t  of  October,  1871,  the  county  judge  of 
Tompkins  county  signed  a  paper  appointing  as  commissioners 
of  said  town,  to  carry  into  effect  the  purpKwes  of  the  said  Act 
of  1866  and  the  Acts  amendatory  thereof,  ^^  in  accordance 
with  the  provisions  of  the  said  Acts,"  the  three  persons  who 
afterwards  executed  the  bonds  as  commissioners.  The  com- 
missioners took  the  oath  of  ofSce  as  such  on  the  1st  of 
November,  1871. 

Some  20  years  prior  to  the  year  1872,  a  road  bed  16  miles 
long,  called  the  *^  Mnrdock  Line,"  intended  for  a  railroad,  had 
been  graded.  That  road  bed  ran  from  a  place  called  Osmun's, 
in  the  town  of  Lansing,  northward,  to  the  north  line  of  Lan- 
sing, which  is  the  south  line  of  the  county  of  Cayuga,  and  of 
the  town  of  Genoa  in  that  county,  and  then  northward 
through  Genoa  and  the  town  of  Venice  into  the  town  of 
Scipio,  all  in  Cayuga  county.  The  grading  of  that  road  bed 
had  become  grassed  over  and  the  culverts  were  decayed. 
Some  part  of  it  was  ready  for  ties  and  ballasting.  On  the  1st 
of  January,  1871,  the  executive  committee  of  the  railroad 
company  purchased  the  Murdock  line,  with  its  franchises, 
right  of  way  and  road  bed.  During  the  summer  and  fall  of 
1871  surveys  were  made  by  the  company  for  a  line  of  road  to 
run  from  Freeville,  in  the  town  of  Bryden,  Tompkins  county, 
the  town  next  south  of  Lansing,  to  the  south  end  of  the 
Murdock  line  at  Osmun's  in  the  town  of  Lansing,  a  distance 
of  10  miles.  As  a  result  of  this  acquisition  and  of  these 
surveys  the  bonding  proceedings  were  commenced  and  the 
resolutions  of  November  16th,  1871,  were  passed. 

On  the  13th  of  December,  1871,  there  was  filed  in  the  of- 
fice of  the  clerk  of  the  county  of  Tompkins  a  map, 
called  "Map  No.  1,"  containing  this  inscription:  "Map 
and  Profile  of  a  part  of  the  Auburn  branch  of  the  New  York 


FEBRUARY,  1882.  283 


Mellen  v.  The  Town  of  Lansing. 


and  Oswego  Midland  Eailroad,  as  located  in  and  through  a 
part  of  the  county  of  Tompkins,  New  York."  This  location 
covers  10  miles  in  length  from  Freeville  to  the  Murdock  line 
at  Osmun's.  On  the  22d  of  December,  1871,  there  was  filed 
in  the  same  oflBce  a  map,  called  "  Map  No.  2,"  containing  the 
same  inscription  as  "  Map  No.  1."  This  location  is  continu- 
ous with  the  preceding,  and  covers  the  Murdock  line  from 
Osmun's  to  the  north  line  of  the  town  of  Lansing,  that  being 
the  north  line  of  Tompkins  county,  and  the  south  line 
of  Cayuga  county.  On  the  23d  of  December,  1871, 
there  was  filed  in  the  office  of  the  clerk  of  the  county 
of  Cayuga  a  map,  called  "Map  1."  containing  this 
inscription :  "  Map  and  Profile  of  a  part  of  the  Auburn 
branch  of  the  New  York  and  Oswego  Midland  Railroad,  as 
located  in  and  through  a  part  of  the  county  of  Cayuga,  New 
York."  This  location  is  continuous  with  the  preceding,  and 
covers  the  Murdock  line  from  the  south  line  of  Genoa, 
through  Genoa  and  Venice,  to  the  south  line  of  Scipio.  On 
the  30th  of  May,  1872,  there  was  filed  in  the  last  named  of- 
fice a  map,  called  "Map  2,"  containing  the  same  inscrip- 
tion as  "Map  1."  This  location  is  continuous  with  the 
preceding,  and  covers  the  Murdock  line  from  the  south  line 
of  Scipio  to  the  Merrifield  road  in  Scipio,  which  was  the 
north  end  of  the  Murdock  line.  The  grading  and  making 
of  the  road  from  Freeville  north  through  the  town  of  Lansing 
was  begun  in  December,  1871.  There  was  a  railroad  already 
built  and  running  from  Cortland  to  Freeville  west  from 
Cortland,  which  belonged  to  the  Utica,  Ithaca  and  Elmira 
Railroad  Company.  Under  some  arrangement  between  that 
company  and  the  Midland  Company,  the  latter  began,  in  the 
fall  of  1872,  to  run  its  own  cars  from  Cortland  to  Freeville, 
and  so  on  to  Scipio,  its  own  road  from  Freeville  to  Scipio,  26 
miles,  having  been  completed  to  the  north  end  of  the  Mur- 
dock line.  The  terminus,  in  Scipio  was  11  miles  from  Au- 
burn, in  a  farming  community,  and  has  never  connected  there 
with  any  other  railroad.  In  resuscitating  the  Murdock  line, 
the  Midland  Company  put  ties  and  ballast  and  rails  on  the 
whole  length  of  it,  and  built  some  culverts  and  some  bridges. 


284  NORTHERN  DISTRICT  OF  NEW  YORK, 

Mellon  V.  Tho  Town  of  Landing. 

The  commissionerB  isBued  the  bonds  of  the  town  and  de- 
livered them  to  Charles  P.  Wood,  the  assifltant  treasurer  of 
the  Midland  Company.  None  of  the  bonds  were  issued  be- 
fore January  31st,  1872.  On  that  day  $16,000  were  issued. 
Afterwards  $60,000  were  issued.  In  exchange  for  them  the 
commissioners  received  a  certificate  for  750  shares  of  the  stock 
of  the  Midland  Company,  of  $100  each,  in  the  name  of  the 
town. 

On  the  29th  of  January,  1873,  the  following  proceedings 
took  place  at  a  meeting  of  the  board  of  directors  of  the  Mid- 
land Company :  '^  The  president  presented  the  contract  made 
by  the  executive  committee  with  Charles  P.  Wood,  of  Au- 
burn, dated  January  1st,  1871,  for  the  road  bed  and  franchises 
known  as  the  ^  Murdock  Line.'  On  being  read  and  discussed, 
Mr.  Merchant  offered  the  following:  Resolved,  that  the 
contract  made  by  D.  C.  Littlejohn,  J.  W.  Merchant,  John  R. 
Clarke,  Cheney  Ames  and  William  Foster,  as  the  executive 
committee,  and  Charles  P.  Wood,  of  Auburn,  for  the  purchase 
of  the  franchises,  right  of  way  and  road  bed  known  as  the 
^  Murdock  Line,'  be  and  the  same  hereby  is  approved,  ratified 
and  confirmed.  Resolved,  that  the  action  of  the  president  in 
locating  and  constructing  the  western  extension  of  this  com- 
pany's road  over  and  upon  tlie  said  '  Murdock  Line '  be  and  the 
same  is  hereby  approved.  Unanimously  adopted."  The  per- 
sons named  were  all  or  a  majority  of  the  executive  committee. 

The  commissioners  were  appointed  before  the  company 
passed  the  resolutions  of  ^November  16th,  1871,  and  before 
any  part  of  the  western  extension  was  located.  It  is  con- 
tended for  the  defendant  that  there  was  no  power  to  institute 
the  bonding  proceedings  before  the  company  had  so  located 
the  whole  of  the  branch  road  that  it  would  pass  through  the 
county  of  Tompkins,  or,  at  least,  that  there  was  no  power  to 
issue  any  bonds  before  such  location ;  and  that  there  was  no 
such  location  before  the  bonds  in  this  case  were  issued. 

Under  the  Act  of  1871  the  company  is  authorized  to  make 
its  extension  or  branch  to  any  point  on  Lake  Erie  or  the  Ni- 
agara river,  either  from  Auburn  or  from  some  point  on  its 


FEBRUARY,  1882.  285 


Mellen  v.  The  Town  of  Lansiiig. 


road  easterly  or  southerly  from  Auburn,  "  upon  such  route 
and  location  and  through  such  counties  as  the  board  of 
directors  of  said  company  shall  deem  most  feasible  and  favor- 
able for  the  construction  of  said  railroad."  The  eastern 
starting  point  must  be  fixed  by  the  company,  and  so  must  the 
route  and  location,  and  the  counties  through  which  said  ex- 
tension or  branch  is  to  pass,  and  the  western  terminus.  No 
county  is  named.  No  town  is  named.  Any  town  in  any 
county  through  or  near  which  the  railroad  or  its  branch  may 
be  located,  except  as  defined,  may  issue  and  sell  its  bonds  in 
aid,  in  the  manner  provided  for  in  the  prior  Acts  referred  to. 
By  §  3  of  the  Act  of  May  15th,  1867,  {Laws  of  N^ 
York,  1867,  cha^.  917,  p.  2,291,)  as  amended  by  §  4  of  the 
Act  of  March  Slst,  1869,  (/rf.,  1869,  c?Mbp.  84,  p.  142,)  the 
company  was  authorized  ^^  to  construct  a  branch  railroad  from 
the  line  of  the  said  railroad  at  any  point  in  the  counties 
of  Chenango  or  Madison,  through  the  counties  of 
Ohenango,  Madison,  Onondaga,  Cortland,  Cayuga,  to  the 
city  of  Auburn,  in  the  county  of  Cayuga,  whenever,  in  the 
judgment  of  the  directors,  the  same  shall  be  for  the  interest 
of  said  corporation."  Then  the  same  power  is  given  to  the 
towns  along  the  line  of  the  said  branch  road,  or  interested  in 
the  construction  thereof,  ^^  in  any  county  through  which  said 
railroad  shall  run,"  to  subscribe  stock  and  issue  bonds  in  aid, 
as  is  given  by  the  said  Acts  of  1866  and  1867.  The  branch 
so  mentioned  in  the  Acts  of  1867  and  1869  is  a  branch  to 
Auburn.  It  is  not  to  pass  through  Tompkins  county.  No 
location  of  it  could  give  any  power  to  the  town  of  Lansing  to 
issue  any  bonds.  The  western  extension,  provided  for  by  the 
Act  of  1871,  might,  under  that  .Act,  have  been  ordered  by 
the  company  to  start  from  Auburn,  as  its  eastern  terminus, 
and  thus  have  been  a  continuation  of  the  said  branch  to  Au- 
burn. As  it  was,  the  western  extension  was  ordered  by  the 
company,  by  the  resolution  of  November  16th,  1871,  to  begin 
at  the  village  of  Cortland.  That  extension  had  nothing  to  do 
with  the  branch  to  Auburn,  or  the  Auburn  branch.  The  said 
resolution  is,  in  terms,  confined  to  the  extension  authorized 
by  the  Act  of  1871. 


280  NORTHERN  DISTRICT   OF  NEW  YORK, 

Mellen  v.  The  Towd  of  Jjuuang. 

The  resolotion  merely  fixed  the  eastern  point.  It  fixed 
no  route,  no  location,  no  counties  through  which  the  branch 
should  pass,  no  western  terminus.  It  was  no  location  of  the 
branch  through  the  county  of  Tompkins.  It  was  wholly  in- 
sufiicient,  therefore,  to  authorize  the  issuing  of  any  bonds  by 
the  town  of  Lansing. 

The  said  maps  are  relied  on  as  being  a  location  before 
the  bonds  were  issued.  But  each  of  them  purports  on  its 
face  to  be  a  location  of  a  part  of  ''  the  Auburn  branch,"  that 
is,  the  branch  to  Auburn,  which  was  not  to  go  through  Tomp- 
kins county.  No  one  of  the  maps  purports  to  be  a  location 
of  any  part  of  the  western  extension. 

Moreover,  there  is  an  inherent  defect,  in  the  fact  that  the 
company  never,  by  any  action  of  its  directors,  or  otherwise, 
designated  all  the  counties  through  which  the  road  was  to 
pass.    Under  the  Act  of  1871,  the  whole  extension  or  branch 
must  be  located  before  the  bonds  of  any  town  can  be  issued. 
It  is  not  enough  that  a  location  be  made  through  a  particular 
county.     So  that  even  though  the  maps  filed  could  be  re- 
garded as  a  location  of  so  much  of  the  western  extension  as 
was  to  pass  through  Tompkins  county,  there  would  be  no 
authority  for  issuing  the  bonds  until  the  whole  extension  or 
branch  should  be  located.    The  board  of  directors  must,  in 
some  way,  adopt  an  entire  route  as  feasible  knd  favorable 
before  the  town  bonds  can  be  issued.     This  seems  to  have 
been  the  view  of  the  Court  of  Appeals  of  New  York,  in  The 
People  V.  Morgan^  (55  If.   J".,  587.)    The  absence  of  such 
location,  under  the  Act  of  1871,  is  as  fatal  to  the  bonds,  even 
in  the  hands  of  a  bona  fide  holder,  as  if  there  were  no  stat- 
ute.   As  was  said  in  the  decision  in  this  case  granting  a  new 
trial :     ^^  It  required  special  legislative  authority  to  enable  the 
town  to  issue  bonds  in  aid  of  the  railroad.    Even  without 
what  is  on  the  face  of  these  bonds,  every  person  taking  them 
or  their  coupons  is  referred  to  the  source  of  authority  to  issue 
them,  in  some  statute.    A  bona  fide  purchaser  of  them  is 
thus  referred  equally  with  every  other  taker.     There  may  be 
no  informality,  or  irregularity,  or  fraud,  or  excess  of  author- 


FEBRUARY,  1882.  287 


Mellen  v.  The  Town  of  Lansing. 


itj  in  an  authorized  agent,  capable  of  operating  to  the  preju- 
dice of  a  bona  fide  holder,  but  there  must  be  some  statute 
providing  for  the  constitution  of  authorized  agents.  Every 
one  is  bound  to  enquire  and  take  notice  as  to  whether  there  is 
in  fact  such  a  statute.  If  there  is  not,  there  is  a  total  want 
of  jurisdiction  and  authority  in  county  judge  and  in  commis- 
sioners."   {Marsh  v.  Fulton  County^  10  TToZZ.,  676.) 

The  action  of  the  company  by  its  resolution  of  January 
29th,  1873,  in  approving  the  purchase  of  the  Murdock  line, 
and  what  is  called  .'^  the  action  of  the  president  in  locating 
and  constructing  the  western  extension  of  this  company's 
road  over  and  upon  the  said  Murdock  Line,"  can  have  no 
effect.  There  is  nothing  to  show  that  the  western  extension 
was  ever  located  over  and  upon  the  Murdock  line,  and  such  a 
location  was  not  the  required  location  of  the  whole  branch. 

The  commissioners  paid  all  of  the  first  coupons  on  the 
bonds  and  nearly  all  of  the  second  and  third,  receiving  the 
money  to  do  so  from  the  supervisor  or  the  collector  of  the 
town.  The  commissioners  also  received  and  have  retained  the 
certificate  of  stock.  While  these  acts  may  be  a  ratification  of 
steps  in  regard  to  which  merely  irregularity  is  claimed,  they 
cannot  avail  to  prevent  the  town  from  setting  up  a  total  want 
of  power  to  issue  the  bonds. 

The  case  is  in  a  worse  predicament  for  the  plaintiff  than 
when  it  was  before  this  Court  previously.  Then  it  was  sup- 
posed that  the  Murdock  line  and  its  extension  to  Freeville 
might  be  a  part  of  a  western  extension  beginning  at  Auburn, 
afi  authorized  by  the  Act  of  1871.  But  the  present  proof  shows 
that  this  is  not  so. 

There  must  be  a  judgment  for  the  defendant,  with  costs, 
and  a  like  judgment  in  the  Thomas  suit. 


Jame8  JR.  Cox,  for  the  plaintiff. 
Harlow  Z.  Comstock^  for  the  defendant. 


288  SOUTHERN  DISTRICT  OF  KEW  YORK, 


The  Leipeic. 


The  Lbipsio. 

Id  tbiB  case  *  Beirioe  rendered  by  one  steamer  to  another  steamer,  in  towing  her 
into  port,  after  she  had  broken  her  steam  maohinery  at  sea,  was  held  to  be  a 
salyage  service. 

Notwithstanding  a  written  agreement  made  at  sea  between  the  masters  of  the 
two  steamers,  that  the  disabled  steamer  should  pay  £3,CX)0  for  the  serrioe,  but 
which  agreement  contained  the  words  "bat  leaye  it  to  the  Court  to  prore 
the  said  agreement,"  this  Court  awarded  as  a  salvage  compensation,  on  a 
quanltan  meruit,  $5,600,  giving  to  the  owners  of  the  towing  steamer  $4,126, 
to  her  master  $160,  and  dividing  the  remaining  $1,226  aniong  her  master, 
officers,  and  crew  in  proportion  to  their  respectiye  wages  although  the  own- 
ers of  the  towing  steamer  had  sued  on  the  agreement  alone,  and  not  for  sal- 
vage for  owners,  master  and  crew. 

The  District  Court  had  awarded  $8,760,  of  which  the  owners  of  the  towing 
steamer  were  to  have  $2,250,  her  master  $160,  and  her  master,  officers  and 
crew  $1,860,  and,  as  both  parties  appealed  to  this  Court,  this  Court  awarded 
to  the  libellants  costs  in  the  District  Court,  because  the  claimant  had  made  no 
tender,  and  awarded  no  costs  in  this  Court  to  either  party. 

(Before  Blatchtobo,  J.,  Southern  District  of  New  York,  February  7th,  1882.) 

This  was  a  libel  in  r^m,  filed  in  the  District  Court.  After 
a  decree  for  the  libellants  bj  that  Court,  both  parties  appealed 
to  this  Court.  This  Court  found  the  following  facts :  "  The 
screw  steamship  Leipsic,  of  about  2,000  tons  burthen,  one  of 
the  regular  line  of  steamers  of  the  North  German  Llojd, 
plying  between  Bremerhaven  and  Baltimore,  left  the  latter 
port,  bound  for  the  former,  at  2  p;  m.  on  the  4:th  of  Septem- 
ber, 1879,  with  a  general  cargo  and  twelve  steerage  passen- 
gers. She  passed  Cape  Henry  on  the  5th  at  4.45  a.  m.  and 
proceeded  to  sea.  On  the  6th,  while  the  weather  was  fine, 
the  wind  northerly,  and  the  ship  running  at  about  10  knots, 
that  portion  of  her  propeller  shaft  known  as  her  '^  first  trans- 
mission shaft"  broke.  This  accident  deprived  her  of  the 
power  of  propulsion  by  steam.  She  was  then  in  the  Gulf 
Stream,  in  latitude  37''  58'  north,  and  longitude  68**  43'  west, 
and  about  320  miles  from  Sandy  Hook.     Her  sails  were  all 


FEBRUARY,  1882.  289 


The  Leipsio. 


fiet  and  she  was  immediatelj  hove  to,  in  order  to  disconnect 
her  screw-shaft  from  the  remainder  of  the  shafting  between 
the  screw-shaft  and  the  point  of  the  fracture,  so  that  the 
ecrew-shaf t  could  revolve  freely  when  the  ship  was  in  motion. 
This  was  done  by  dropping  down  that  portion  of  the  shaft 
between  the  fracture  and  the  screw-shaft.     Then,  when  the 
vessel  was  in  motion,  the  screw-shaft  revolved  freely  in  its 
bearings.    The  ship  was  then  put  under  sail  .on  a  west-north- 
west course,  intending  to  reach  the  nearest  port  on  the  Atlan- 
tic coast  of  the  United  States.    She  was  in  all  respects,  ex- 
cept as  to  the  injury  to  her  machinery,  staunch  and  s  trong, 
well  manned,  equipped    and  provisioned.     She  continued 
under  sail  till  the  13th,  when  the  libellants'  ship  took  her  in 
tow.   The  Leipsic  made  about  25  miles  from  2  p.  m.  on  the  6th 
to  noon  on  the  7th.    The  next  24:  hours  she  made  about  10 
miles,  the  next  24  hours  41  miles,  the  next  24  hours  38  miles, 
the  next  24  hours  52  miles,  the  next  24  hours  50  miles, 
bringing  her  down  to  noon  of  the  12th.     From  that  time  to 
noon  on  the  13th  it  was  nearly  calm,  and  the  current  carried 
her  20  miles  northeasterly.   On  the  9th,  at  1.30  p.  m.,  she  was 
passed  by  an  English  steamer,  which  made  an  offer  of  assist- 
ance, but  it  was  declined  by  the  captain  of  the  Leipsic,  on  the 
ground  that  he  did  not  need  assistance.    During  the  days  the 
Leipsic  was  under  sail  she  sighted  several  steamers,  but  she 
made  no  signals  for  assistance.    On  the  12th,  her  captain,  the 
wind  having  died  away,  had  decided  that  it  was  necessary  for 
him  to  reach  a  port  quicker  than  he  could  do  so  under  sail ;  that 
his  only  means  of  so  doing  was  to  be  towed  in  by  a  steamer ; 
and  that  the  saving  of  time  thereby  was  an  advantage  to  the 
ship  and  her  owners  from  a  business  point  of  view.     For  that 
purpose,  when  he  went  below  on  the  night  of  the  12th,  he 
ordered  rocket  signals  to  be  thrown  up  whenever  a  steamer 
should  pass.    One  did  pass  at  a  distance  of  5  or  6  miles,  but 
failed  to  heave  to  or  answer  the  signals.    About  noon  of  the 
12th,  the  Leipsic  had  spoken  a  barque  bound  for  the  Dela- 
ware Breakwater,  and  asked  her  to  report  the  steamer  as  being 
there  with  a  broken  shaft.    About  8  or  9  o^clock  on  the 
Vol.  XX.— 19 


290  SOUTHERN  DISTRICT   OF  NEW  YORK, 

The  LeipsiC. 

morning  of  the  13th,  the  steamer  Gresham,  bound  from  New- 
port, England,  to  Baltimore,  Maryland,  in  ballast,  overtook 
the  barque  which  had  been  previously  spoken  by  the  Leipsic, 
and  was  informed  by  the  barque  that  there  was  a  steamer  to 
the  eastward  with  a  broken  shaft,  giving  her  supposed  lati- 
tude and  longitude.     The  Gresham  was  immediately  put 
about  and  proceeded  in  the  direction  indicated,  which  was 
nearly  opposite  to  her  former  course.    At  about  noon  on  the 
13th,  the  Gresham,  having  proceeded  40  miles  from  the  point 
where  she  was  spoken  by  the  barque,  appeared  in  sight,  and 
the  Leipsic  signalled  her  that  she  had  a  broken  shaft.     The 
Gresham  came  up  to  her,  and,  when  within  hailing  distance, 
her  captain  asked  the  Leipsic  if  she  wanted  a  tow,  and  the 
reply  was  that  she  did.   The  captain  of  the  Gresham  then  went 
on  board  of  the  Leipsic  and  the  latter  showed  the  former  the 
position  of  the  ship  on  the  chart,  39°  28'  north  latitude,  and 
71**  25'  west  longitude.     The  reckoning  of  both  ships  agreed. 
Measurements  were  made  on  the  chart,  and  Sandy  Hook  was 
found  to  be  distant  125  miles  and  to  be  the  nearest  port. 
The  captain  of  the  Gresham  was  then  asked  what  he  would 
tow  the  Leipsic  to  Sandy  Hook  for.   The  two  captains  diflPer  as 
to  the  price  that  was  named,  one  testifying  that  it  was  £6,000 
and  the  other  that  it  was  £4,000.     The  captain  of  the  Leipsic 
told  the  captain  of  the  Gresham  that  if  he  did  not  come  down 
any  further,  the  ship  was  in  very  good  sailing  order,  he  had 
all  his  square  sails  set,  and  that  he  could  help  himself  in  any 
weather  with  his  ship  under  sail.     During  the  n^otiation 
another  steamer  hove  in  sight,  about  5  miles  off,  and  within 
signalling  distance,  but  she  was  not  signalled,  and  night  was 
coming  on,  and  the  captain  of  the  Gresham  insisted  that  he 
was  first  on  the  ground.    The  captain  of  the  Leipsic  said  to 
the  captain  of  the  Gresham  that  there  was  a  steamer  near  by 
which  could  give  him  equal  assistance.     Finally  an  arrange- 
ment was  concluded  as  set  forth  in  the  following  paper,  signed 
by  both  captains,  on  board  of  the  Leipsic :  "  Lat.  39°  30'  N., 
Long.  71^  25'  W.,  Sept.  13th,  1879.    It  is  this  day  agreed 
between  Captain  F.  Pfeiffer,  of  the  S.  S.  Leipzig,  and  Captain 


FEBRUART,  1882.  291 


The  Leipalc. 


Gibb,  of  the  S.  S.  GreBham,  to  tow  the  said  steamer  Leipzig 
to  Sandy  Hook  for  the  sum  of    three  thousand  pounds, 
(£3,000,)  but  leave  it  to  the  Court  to  prove  the  said  agree- 
ment."   The  words,  "  but  leave  it  to  the  Court  to  prove  the 
said  agreement"  were  added    before    the    agreement  was 
signed.     The  master  of  the  Leipsic  refused  to  make  the  agree- 
ment except  upon  that  condition,  because  he  thought  the  sum 
named  too  high.    He  is  a  German,  but  he  spoke  English,  and 
the  conversation  was  in  English.    The  master  of  the  Leipsic 
asked  to  be  towed  to  New  York,  saying  that  he  would  make 
his  repairs  there.     The  master  of  the  Gresham  told  him  it 
would  be  out  of  his  course,  but  that  the  Delaware  Break- 
water was  in  his  way,  but  he  would  take  him  there  or  to  Sandy 
Hook  as  he  pleased,  and  the  latter  place  was  agreed  on.    The 
weather  was  good  and  the  sea  was  smooth.    The  wind  was 
very  light.     The  Gresham  took  the  Leipsic  in  tow  by  two 
hawsers,  furnished  by  the  latter.     They  got  under  way  soon 
after  the  agreement  was  signed,  in  the  afternoon  of  the  13th, 
and  passed  Sandy  Hook  about  3  o'clock  in  the  afternoon  of 
the  14th,  and  proceeded  about  6  miles  up  the  Bay,  where  the 
hawsers  of  the  Leipsic  were  transferred  to  a  tug,  which  towed 
her  to  Hoboken.    The  Gresham  waited  in  the  Lower  Bay  of 
New  York  a  short  time,  for  some  trifling  repairs  to  her  ma- 
chinery, (such  repairs,  however,  having  no  connection  with 
the  service  rendered  to  the  Leipsic,)  and  then  proceeded  to 
Baltimore.    She  arrived  at  the  mouth  of  Chesapeake  Bay  at 
9  A.  H.  on  the  16th.     She  had  calculated  to  arrive  there  on 
the  morning  of  the  14th.     She  was  a  freighting  steamer,  of 
1,092  tons  net  measurement.    She  was  under  charter  to  pro- 
ceed to  Baltimore,  and  there  tak^  on  board  a  cargo  of  grain 
for  a  port  of  delivery  in  Great  Britain  or  Ireland,  or  on  the 
continent,  between  Bordeaux  and  Hamburg,  both  inclusive,  but 
excluding  Bouen,  according  to  orders  to  be  given  on  signing 
bills  of  lading.     By  the  charter  she  was  required  to  be  at 
Baltimore  not  later  than  the  25th  of  September.    The  freight 
earned  by  her  on  her  outward  voyage  from  Baltimore  was 
about  $13,750.    The  agreed  value  of  the  Leipsic  is  $90,000 


292  80UTHEBN  DISTRICT  OP  NEW  YORK, 

The  Leipsic. 

and  that  of  her  cargo  $160,945.    The  amount  of  her  freight 
on  that  voyage  was  $13,757  37.    The  value  of  the  Qresham 
is  $90,000.    The  Leipsic  was  expected  to  make  a  round  trip 
.  at  that  season  every  6  weeks.     By  keeping  her  turn  on  her 
return  trip  she  would  presumably  carry  some  250  steerage 
passengers  in  addition  to  her  cargo.     The  Leipsic  at  the  time 
had  6  months'  provisions  on  board.     The  captain  of  the  Leip- 
sic had  commanded  3  steamers  of  the  North  Oerman  Lloyd, 
and  up  to  the  time  of  the  trial  in  the  District  Court  remained 
in  its  employ.    He  was  an  experienced  master.    The  service 
was  rendered  without  accident.     It  was  not  attended  with 
any  special  difficulty  or  danger.  The  weather  was  at  first  fair, 
and  soon  after  they  started  the  wind  became  fresher,  and  both 
vessels  set  all  sail,  and  then  they  made  for  a  time  about  7 
knots.  The  following  night  it  became  rainy  and  squally,  and, 
the  wind  getting  around  to  the  southwest,  they  proceeded 
under  steam  alone.    The  Gresham  sustained  no  damage  to 
her  machinery  in  consequence  of  the  towage,  and  suffered  no 
loss  of  employment  by  reason  of  the  delay.    The  Leipsic  paid 
$150  to  the  tug  which  towed  her  from  the  place  where  the 
Gresham  left  her  to  her  dock  in  Hoboken.    This  was  on 
Sunday  and  there  was  no  other  tug  there." 

Lorenzo  UUoj  for  the  libellants. 

William  D.  Shipman^  for  the  claimant. 

Blatohvobd,  J.  The  District  Court  awarded  $3,750  to 
the  owners,  master  and  crew  of  the  Gresham,  of  which  %  was 
to  go  to  the  owners  of  the  Gresham,  and  Vb  to  her  master  and 
crew,  the  master  to  have  %)  of  the  Vs,  and  the  officers  and 
crew,  including  the  master,  to  have  the  remainder,  in  propor- 
tion to  the  rates  of  their  respective  wages.  This  gave  to  the 
owners,  $2,250;  master,  $150;  master,  officers  and  crew, 
$1,860.  The  libel  was  filed  by  the  owners  alone,  on  the 
agreement,  and  not  as  in  a  cause  of  salvage,  for  owners,  mas- 
ter^ and  crew.    The  Court  ordered  the  $1,500  to  remain  in 


FEBRUARY,  1882.  298 


The  Leipdc. 


the  registry  to  await  an  application  for  it  by  the  master,  offi- 
cers and  crew.  The  libellants  have  appealed  to  this  Court 
because  the  District  Court  set  aside  the  contract  a*hd  did  not 
allow  the  £3,000.  The  claimant  has  appealed  on  the  ground 
that  too  much  was  allowed. 

The  District  Court  held  that  the  agreement  was  made  sub- 
ject to  the  approval  of  the  Court  '^  as  to  the  amount  therein 
named,  £3,000,  as  the  amount  to  be  paid  for  the  towage  serv- 
ice ; "  that  the  amount  suggested  by  the  agreement  was  very 
greatly  in  excess  of  the  amount  which  the  Court  would  award 
for  the  same  service ;  and  that^  under  the  circumstances,  the 
service  was  a  salvage  service. 

It  is  contended  for  the  libeUants,  that  what  the  parties  agreed 
to  leave  to  the  Court  was,  not  to  approve  the  sum  of  £3,000, 
but  to  approve  the  agreement,  that  is,  to  inquire  into  the  cir- 
cumstances under  which  the  agreement  was  made ;  and  that 
otherwise  their  position  in  Court  would  be  as  if  no  agreement 
were  made.  There  was  no  disagreement  between  the  parties 
as  to  what  service  was  to  be  rendered  or  as  to  the  place  to 
which  the  Leipsic  was  to  be  towed.  The  Gresham  was  to 
tow  the  Leipsic,  and  was  to  tow  her  to  Sandy  Hook.  The 
only  dispute  was  as  to  the  compensation.  The  captain  of  the 
Gresham  wanted  more  than  £3,000.  The  captain  of  the  Leip- 
sic insisted  on  less  than  £4,000.  The  captain  of  the  Gresham 
came  down  to  £3,000.  The  captain  of  the  Leipsic  refused  to 
make  the  agreement  unless  the  added  words  should  be  added, 
because  he  thought  £3,000  too  high.  Under  these  circum- 
stances the  words  '^ prove  the  said  agreement"  can  mean 
nothing  except  "  approve  the  said  agreement  for  £3,000,  as 
to  its  amount."  That  being  so,  the  Court  is  at  liberty  to  in- 
quire whether  the  £3,000  is  a  sum  which  would  be  awarded 
if  there  were  no  agreement. 

On  the  facts  of  this  case,  I  think  this  was  a  salvage  serv- 
ice. Unable  to  use  her  steam  machinery,  it  not  appearing 
that  it  could  be  repaired  at  sea,  having  rejected  offered  assist- 
ance from  a  steamer,  neglecting  to  signal  passing  steamers, 
keeping  this  up  until  the  12th,  ordering  rocket  signals  to 


294  SOUTHERN  DISTRICT  OF  NEW  YORK, 

The  Leipsic. 

steamers  that  night,  hailing  the  barqne,  on  the  12th,  to  report 
her  with  a  broken  shaft,  the  Leipsic  induced  the  Gresham  to  . 
go  back  40'miles  to  find  her.  She  was  drifting  northeasterly 
in  the  current  of  the  Oalf  Stream,  which  was  a  direction  in 
which  she  did  not  want  to  go.  She  was  under  sail  for  7  days. 
In  6  days  she  had  sailed  but  216  miles.  She  was  still  125 
miles  from  Sandy  Hook  and  approaching  the  coast,  near  the 
equinoctial  season.  Within  the  rule  laid  down  in  The  Prin- 
cees  Alicej  (3  W.  Bob.,  138,)  there  was  here,  certainly,  some- 
thing more  than  employment  to  expedite  a  voyage,  something 
more  than  accelerating  the  progress  of  the  Leipsic.  She  was 
to  be  taken  to  a  port  to  which  she  was  not  destined,  to  repair 
her  disabled  machinery.  In  The  Bewardy  (1  IF.  Iiob.j  174,) 
it  was  said :  '^  Mere  towage  service  is  confined  to  vessels  that 
have  received  no  injury  or  damage,"  and  "  mere  towage  re- 
ward is  payable  in  those  cases  only  where  the  vessel  receiving 
the  service  is  in  the  same  condition  she  would  ordinarily  be 
in  without  having  encountered  any  damage  or  accident." 
The  law,  as  laid  down  in  The  Princeee  Alicej  was  approved 
by  the  Privy  Council  in  Tfie  Strathnwoer,  {L.  jff.,  1  Appeal 
CaeeSy  58.)  The  cases  of  The  Reward  and  Tfie  Princess 
Alice  were  cases  of  assistance  by  steamtugs  to  sailing  vessels. 
In  The  JvibUee,  (42  Law  Times  JRep,^  N.  S.y  594,)  a  steamer 
which  carried  fore  and  aft  sails  only,  and  was  not  rigged  for 
proceeding  under  sail  alone,  had  broken  the  main  shaft  of  her 
propeller.  She  put  up  signals  of  distress,  and  was  towed  by 
another  steamer  40  miles  into  a  port  to  which  she  was  not 
bound.  It  was  urged  that  she  was  making  fair  progress 
towards  a  safe  port  by  means  of  her  sails,  under  no  circum- 
stances of  danger.  The  question  arose  directly  whether  the  serv- 
ice was  salvage  or  towage,  because  the  towed  steamer  had  paid 
to  the  other  a  sum  for  the  service,  and  the  crew  of  the  towing 
steamer  put  in  a  claim  for  a  share  in  the  money,  as  salvage  to  be 
distributed.  The  owners  desired  to  retain  the  whole,  as  tow- 
age money  only.  Sir  Robert  Phillimore  held  that  the  case  was 
one  of  salvage  and  not  of  towage  only,  and  gave  to  the  crew  a 
share  of  the  money.    Citing  the  case  of  The  Princess  Alice, 


FEBRUARY,   1882.  295 


The  Leipeic. 


he  said :  "I  think,  in  this  case,  the  eircamstances  show  that 
something  more  was  required  than  expedition,  and  something 
more  than  mere  acceleration  of  progress.  Here  was  a  vessel 
lying  with  her  mainshaft  broken.  The  great  difficaltj  of  a 
screw  steamer  is  invariably  when  her  shaft  is  broken.  In 
this  case  she  put  np  two  flags  for  assistance.  I  am  satisfied 
that  the  principle  is  laid  down  in  many  cases  that  under  these 
circumstances  flags  are  put  up  on  the  ship  for  the  purpose  of 
obtaining  salvage  service.  The  service,  therefore,  in  this  case 
was  one  of  a  salvage  character."  In  the  present  case  the 
Leipsic  did  what  was  equivalent  to  putting  up  flags  for  assist- 
ance or  signals  of  distress,  by  sending  by  the  barque  the  mes- 
sage she  did,  and  by  ordering  rocket  signals  to  steamers  on 
the  night  of  the  12th,  and  by  her  signal  to  the  Gresham  when 
the  latter  came  in  sight.  The  present  case  is  not  at  all  like  that 
of  The  Emily  B.  Souder,  (15  Blotch,  C.  C.  i?.,  185.)  In  that 
case  it  was  held  that  there  was  mere  expedition  by  towage, 
in  order  to  deliver  passengers  sooner  at  the  port  to  which  the 
towed  and  the  towing  steamer  were  both  of  them  bound ;  and 
the  master  of  the  towing  steamer  neither  did  nor  said  anything 
at  the  time  to  indicate  that  he  regarded  the  case  as  one  of  salv- 
age. In  the  present  case,  asking  even  £3,000  for  towing  a 
distance  of  125  miles  was  a  clear  indication  of  a  claim  to  a 
salvage  service. 

The  case  is  one  of  a  quantum  meruit  for  salvage.  The 
value  of  the  Leipsic,  cargo  and  freight  was  over  $264,000. 
The  value  oi  the  Gresham  was  $90,000.  In  regard  to  the 
Leipsic,  there  are  these  facts :  she  had  lost  the  use  of  her 
steam-power ;  with  the  sails  she  had,  and  such  winds  as  she 
had  had,  she  wotdd,  at  her  prior  rate  of  sailing,  have  been  be- 
tween 3  and  4  days  in  reaching  Sandy  Hook;  she  was  in  the 
Gulf  Stream,  drifting  northeasterly  when  it  was  calm ;  she 
was  in  good  condition  except  as  to  her  steam-power ;  she  had 
tried  sailing  and  had  determined  to  abandon  it  and  was  seek- 
ing assistance  from  steamers ;  delay  had  become  serious ;  and 
her  captain  took  the  services  of  the  Gresham  though  he  knew 
it  would  be  under  a  claim  for  £3,000,  rather  than  let  the  Gre- 


296  SOUTHERN  DISTRICT  OP  NEW  YORK, 


The  People  of  the  State  of  N.  T.  «.  The  Gompagnie  G^n^rale  TraneatlMitiqae. 

Bham  go  and  trost  to  the  other  steamer  in  sight,  or  to  some 
other  resource.  In  regard  to  the  Gresham,  she  put  back  40 
miles,  and  went  oat  of  her  way,  to  a  port  to  which  she  was 
not  bound ;  she  was  delayed  in  all  48  honrs ;  she  had  a  charter 
to  begin  at  Baltimore  the  25th,  which  she  might  have  lost ; 
and  the  service  was,  in  fact,  not  difficnlt  or  dangerous. 

I  think  the  £8,000  is  entirely  too  much.  At  the  same 
time  I  think  the  $8,750  is  not  enough.  I  award  the  sum  of 
$5,500.  Of  this  the  Gresham  is  to  have  %  or  $4,125.  This 
is  peculiarly  a  case  where  her  owners  ought  to  have  a  large 
share.  Of  the  remaining  $1,375,  the  master  of  the  Gresham 
is  to  have  $150,  and  the  rest  is  to  be  divided  among  her  master, 
officers  and  crew,  in  proportion  to  the  rates  of  their  respective 
wages. 

The  District  Court  awarded  costs  in  that  Court  to  the 
libellants,  as  the  claimant  had  made  no  tender.  This  was  cor- 
rect. As  both  parties  have  appealed,  and  each  has  had  partial 
success,  no  costs  in  this  Court  are  allowed  to  either  party. 


The  Peoplb  op  thb  State  op  New  York 
The  Comfagnib  Gekebale  Tbansatlantiqits. 

The  Act  of  the  Legislature  of  New  Tork,  passed  May  81st,  1881,  {Law  of  New 
York,  1881,  chaqi),  432,  jd.  590,)  imposiDg  a  duty  of  |1  for  each  alien  passeDger 
arriving  at  the  port  of  New  York  from  a  foreign  port,  and  appropriating  the 
money  to  "  the  ezecutioo  of  the  inspection  laws  of  the  State  of  New  York  "  by 
the  Commissioners  of  Emigration,  is  in  conflict  with  the  ezclnsiye  power  of 
Congress,  under  the  Constitution  of  the  United  States,  to  regulate  commerce. 

The  "  inspection  laws  "  referred  to  are  the  proyielons  of  the  Act  of  the  Legisla- 
ture of  New  York,  passed  May  28th,  -1881,  {Law  of  New  York,  1881,  chap. 
427, />.  585,)  for  inspecting  the  persons  and  effects  of  all  persons  arriying  by 
Teasel  at  the  port  of  New  York  from  a  foreign  country. 

The  Act  of  May  Slst,  1881,  is  not  yalid  as  a  statute  laying  an  impost,  or  a  dnty 
on  imports,  for  executing  inspection  laws,  imder  Article  1,  section  10,  of  the 


FEBRUARY,   1882.  297 


Hie  People  of  the  State  of  N.  Y.  v.  The  CompagDie  G^n^rale  TranBatlantique. 

Constitiition  of  the  United  States,  becanBe  the  Act  of  May  28th,  1881,  ia  not 
an  iDspecUoD  law. 

What  are  "  inspection  laws,*'  defined. 

Although,  by  section  10,  of  Article  1,  of  the  Ck>nstitntion  of  the  United  States, 
State  inspection  laws  are  made  subject  to  the  revision  and  control  of  Con- 
gress, this  Court  has  authority  to  decide  whether  a  particular  law  is  an  inspec- 
tion law  or  not. 

(Before  Blatohvobd,  J.,  Southern  District  of  New  York,  February  9ih,  1882.) 

Blatohfoed,  J.  This  suit  was  commenced  in  the  Court 
of  Common  Pleas  for  the  city  and  county  of  New  York,  and 
was  removed  into  this  Court.  The  complaint  was  put  in  in 
the  State  Court.  It  alleges  that  the  defendant  is  and  was,  at 
the  times  thereinafter  mentioned,  a  corporation,  formed  under 
the  laws  of  France,  and  owner  of  the  vessels  thereinafter 
named  ;  that  the  defendant,  by  vessels  from  a  foreign  port, 
brought  to  the  port  of  New  York  alien  passengers,  for  whom 
a  tax  has  not  heretofore  been  paid,  by  the  vessels,  on  the  dates, 
from  the  ports  and  to  the  number  stated  in  the  complaint, 
being  in  June,  July  and  August,  1881,  by  9  vessels,  on  16 
voyages,  all  from  Havre  or  Marseilles,  the  number  of  alien 
passengers  being,  in  all,  6,214 ;  that  the  master,  owner,  agent 
and  consignees  of  such  vessel  each  and  a]l  failed  and  neg^ 
lected  to  pay  or  cause  to  be  paid  to  the  chamberlain  of  the 
city  of  New  York,  within  24  hours  after  the  arrival  of  each  of 
said  vessels  at  the  port  of  New  York,  or  at  any  time,  the  sum  of 
$1  for  each  and  every  of  said  passeugers  so  brought  as  aforesaid, 
nor  has  any  part  thereof  been  paid ;  and  that  there  is  due  to 
the  plaintiffs  from  the  defendant,  by  reason  of  the  premises, 
the  sum  of  $7,767  50,  debt  and  penalty,  and  interest  thereon 
from  the  day  after  the  entry  of  each  vessel  at  the  port  of 
New  York,  for  the  tax  and  penalty  imposed  by  law  respect- 
ively, for  which  sum,  with  interest,  the  plaintiffs  demand 
judgment,  with  costs.  The  defendant  has  put  in,  in  this 
Court,  a  demurrer  to  the  complaint,  which  states,  as  the 
ground  of  demurrer,  that  it  appears  upon  the  face  of  the  com- 
plaint that  it  does  not  state  facts  sufficient  to  constitute  a 
cause  of  action.    The  parties,  by  their  attorneys,  have  stipu- 


298  SOUTHERN  DISTRICT  OF  NEW  YORK. 

The  People  of  the  State  of  N.  T.  v.  The  Gompagnie  G^o6rale  Traoaatlanttqne. 

lated  in  writing  that  this  action  ^'  is  brought  and  prosecuted 
under  and  pursuant  to  an  Act  of  the  Legislature  of  the  State 
of  New  York,  passed  May  3l6t,  1881,  and  known  as  chapter 
432  of  the  laws  of  1881 ; "  and  that  the  demurrer  is  based 
upon  the  claim  that  the  said  Act  '^  is  repugnant  to  various 
provisions  of  the  Constitution  of  the  United  States,  (particu- 
larlj  Article  1,  section  8,  and  subdivision  2  of  section  10,)  and 
also  to  the  Revised  Statutes  of  the  United  States,  and  also  to 
the  provisions  of  the  Treaties  now  existing  between  the 
United  States  and  France  and  other  countries."  The  stipula- 
tion states  that  its  intent  is  ^^  to  remove  any  question  as  to  the 
right  of  the  defendant  to  present  and  urge  all  such  questions 
with  the  same  force  and  effect  as  if  the  demurrer  assigned 
various  causes,  separately  setting  up  each  and  every  objection 
that  may  be  based  upon  the  Constitution  of  the  United  States 
or  of  the  State  of  New  York,  or  upon  any  existing  treaties 
with  foreign  powers,  or  upon  any  alleged  want  of  power  on 
the  part  of  the  State  to  enact  such  a  statute  as  that  now 
sought  to  be  enforced,  or  of  the  plaintiffs  to  bring  and  main- 
tain this  action." 

The  Act  of  May  31st,  1881,  {Laws  of  New  York,  1881, 
cha^p.  482,  p.  590,)  is  as  follows :  "  §  1.  There  shall  be  levied 
and  collected  a  duty  of  one  dollar  for  each  and  every  alien 
passenger  who  shall  come  by  vessel  from  a  foreign  port  to  the 
port  of  New  York,  for  whom  a  tax  has  not  heretofore 
been  paid,  the  same  to  be  paid  to  the  chamberlain  of  the  city 
of  New  York,  by  the  master,  owner,  agent  or  consignee  of 
every  such  vessel,  within  twenty-four  hours  after  the  entry 
thereof  into  the  port  of  New  York.  §  2.  It  shall  be  the  duty 
of  the  master  or  acting  master  of  every  such  vessel,  within 
twenty-four  hours  after  its  arrival  at  the  port  of  New  York, 
to  report  under  oath,  to  the  mayor  of  the  city  of  New  York, 
the  names,  ages,  sex,  place  of  birth  and  citizenship  of  each 
and  every  passenger  on  such  vessel,  and  in  default  of  such  re- 
port every  passenger  shall  be  presumed  to  be  an  alien  arriving 
at  the  port  of  New  York  for  the  first  time.  And  in  default 
of  every  payment  to  the  chamberlain  of  the  city  of  New 


FEBRUARY,   1882.  299 


The  People  of  the  State  of  N.  T.  v.  The  Compagnie  G^n^rale  Tranaatlantique. 

York,  there  shall  be  levied  and  collected  of  the  master,  owner, 
agent  or  consignee  of  every  such  vessel,  a  penalty  of  twenty- 
five  cents  for  each  and  every  alien  passenger,  in  addition  to 
the  dnty  heretofore  imposed.  §  8.  It  shall  be  the  duty  of  the 
chamberlain  of  the  city  of  New  York  to  pay  over,  from  time 
to  time,  to  the  commissioners  of  emigration,  all  snch  sums  of 
money  as  may  be  necessary  for  the  execution  of  the  inspec- 
tion laws  of  the  State  of  New  York  with  the  execution  of 
which  the  commissioners  of  emigration  now  are  or  may  here- 
after be  charged  by  law,  and  to  take  the  vouchers  of  the 
commissioners  of  emigration  for  all  such  payments.  And  it 
shall  be  the  duty  of  the  said  chamberlain  to  pay  over  annu- 
ally, on  the  first  of  January  in  each  year,  to  the  Treasury  of 
the  United  States,  the  net  produce  of  all  the  duties  collected 
and  received  by  him  under  this  Act,  after  the  payments  to 
the  commissioners  of  emigration  aforesaid,  and  take  the  receipt 
of  the  Secretary  of  the  Treasury  therefor.  §  4.  The  com- 
missioners of  emigration  shall  institute  suits  in  the  name  of 
the  people  of  the  State  of  New  York,  for  the  collection  of 
all  moneys  due,  or  which  may  grow  due,  under  this  Act,  the 
same  to  be  paid,  when  collected,  to  the  chamberlain  of  the 
city  of  New  York,  to  be  applied  by  him  pursuant  to  the  terms 
of  this  Act.  §  5.  Section  one  shdl  not  apply  to  any  passen- 
ger whose  passage  ticket  was  actually  issued  and  paid  for 
prior  to  the  time  this  Act  takes  effect,  but  every  ticket  shall 
be  presumed  to  have  been  issued  after  this  Act  takes  effect, 
in  the  absence  of  evidence  showing  the  contrary.  §  6.  This 
Act  shall  take  effect  immediately." 

Three  days  prior  to  the  passage  of  the  said  Act,  and  on 
the  28th  of  May,  1881,  {Laws  of  New  York,  1881,  chap.  427, 
p.  585,)  an  Act  was  passed  as  follows :  ^'  §  1.  The  commis- 
sioners of  emigration  are  hereby  empowered  and  directed  to 
inspect  the  persons  and  effects  of  all  persons  arriving  by 
vessel  at  the  port  of  New  York  from  any  foreign  country,  as 
far  as  may  be  necessary  to  ascertain  who,  among  them,  are 
habitual  criminals  or  pauper  lunatics,  idiots  or  imbeciles,  or 
deaf,  dumb,  blind,  infirm  or  orphan  persons,  without  means 


300  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Th^  People  of  the  State  of  N.  T.  v.  The  Compagnlo  G^D^nle  TransatUmtiqae. 

or  capacity  to  support  themBelves,  and  subject  to  become  a 
public  charge,  and  whether  their  persons  or  effects  are  affected 
with  any  infectious  or  contagious  disease,  and  whether  their 
effects  contain  any  criminal  implements  or  contrivances. 
§  2.  On  discovering  any  such  objectionable  persons  or  effects, 
the  said  the  commissioners  of  emigration  and  its  inspectors  are 
further  empowered  to  take  such  persons  into  their  care  or 
custody,  and  to  detain  or  destroy  such  effects,  if  necessary 
for  the  public  welfare,  and  keep  such  persons  under  proper 
treatment,  and  provide  for  their  transportation  and  support 
as  long  as  they  may  be  a  necessary  public  charge.  The  com- 
missioners of  emigration  shall,  in  case  of  habitual  criminals, 
and  may,  in  other  cases  where  necessary  to  prevent  such  per- 
sons from  continuing  a  public  charge,  retransport  such  person 
or  persons  to  the  foreign  port  from  which  they  came.  §  3.  The 
commissioners  of  emigration  are  further  empowered  to  board 
any  incoming  vessel  from  foreign  ports  arriving  at  the  port 
of  New  York,  by  its  agents  and  inspectors,  who  shall  have 
such  powers  as  may  be  necessary  to  the  effectual  execution  of 
this  Act,  and  any  person  who  shall  resist  them  in  the  execu- 
tion of  their  lawful  function  shall  be  guilty  of  a  misdemeanor 
and  may  be  arrested  by  the  officer  resisted,  and,  upon  con- 
viction, may  be  sentenced  to  a  term  not  exceeding  six  months 
in  the  penitentiary,  or  to  pay  a  fine  of  one  hundred  dollars, 
or  both.    §  4.  This  Act  shall  take  effect  immediately." 

These  provisions  were  enacted  with  an  endeavor  to  avoid 
the  grounds  on  which  former  legislation  had  been  held  void  bs 
repugnant  to  the  Constitution  of  the  United  States.  The 
provisions  of  part  1,  chapter  14,  title  4  of  the  Bevised  Stat- 
utes of  New  York,  which  authorized  the  recovery  from  the 
master  of  every  vessel  arriving  in  the  port  of  New  York 
from  a  foreign  port,  of  a  sum  of  money  for  each  passenger, 
and  appropriated  the  money  to  the  use  of  the  marine  hos- 
pital, were  held  void  in  2'he  Passenger  OaseSj  (7  Sbw.j  283,) 
in  January,  1849.  After  that  various  amendments  of  the  law 
were  made,  which  came  before  the  Supreme  Court  in  Sen- 
derson  v.  The  Mayor^  (  2  OUo^  259,)  in  1875,  and  were  held 


FEBRUARY,   1882.  301 

The  People  of  the  State  of  K.  T.  v.  The  Compagnie  O^D^rale  TraDsatlantiqae. 

void.    This  legifilation  required  a  bond  for  each  passenger 
landed  by  a  vessel  from  a  foreign  port,  to  indemnify  the  com- 
missioners of  emigration  and  every  municipality  in  the  State 
against  any  expense  for  the  relief  or  support  of  the  passen- 
ger for  4  years,  but  the  owner  or  consignee  of  the  vessel 
could  commute  for  the  bond,  and  be  released  from  giving  it, 
by  paying  $1  50  for  each  passenger,  within  24  hours  after 
Ifinding  him.    If  the  bond  was  not  given  nor  the  sum  paid 
within  the  24  hours,  a  penalty  of  $500  for  each  passenger  was 
incurred,  which  was  made  a  lien  on  the  vessel,  collectible  by 
attachment  at  the  suit  of  the  commissioners  of  emigration. 
The  statute  applied  to  every^  passenger,  and  not  merely  to 
every  alien  passenger.    It  applied  to  every  passenger  by  a 
vessel  from  a  foreign  port,  landed  at  the  port  of  New  York. 
The  Court  held  that  the  statute  amounted  to  a  requirement  of 
the  payment  of  the  $1  50 ;  that  it  was,  in  its  purpose  and 
effect,  a  law  imposing  a  tax  on  the  owner  of  the  vessel  for  the 
privilege  of  landing  in  New  York  passengers  transported  from 
foreign  countries ;  that,  in  taxing  every  passenger,  it  taxed  a 
citizen  of  France,  landing  from  an  English  vessel,  for  the 
support  of  English  paupers  landing  at  the  same  time  from 
the  same  vessel ;  that  a  law  prescribing  the  terms  on  which  ves- 
sels shall  engage  in  transporting  passengers  from  European  ports 
to  ports  of  the  Cnited  States  is  a  regulation  of  commerce  with 
foreign  nations ;  that  Congress  alone  could  regulate  such  com- 
merce ;  and  that  a  State  could  not,  under  any  power  supposed 
to  belong  to  it,  and  called  police  power,  enact  such  legislation 
as  that  then  under  consideration.    The  Court  expressly  re- 
served the  question  as  to  how  far,  in  the  absence  of  legislation 
by  Congress,  a  State  could,  by  appropriate  legislation,  protect 
itself  against  actual  paupers,  vagrants,  criminals  and  diseased 
persons,  arriving  in  its  territory  from  foreign  coantries.     A 
portion  of  the  legislation  of  New  York  then  under  considera- 
tion concerned  persons  who  should,  on  inspection,  be  found  to 
belong  to  those  classes,  but  the  Court  acted  on  and  held  void 
that  part  of  the  statute  which  applied  to  all  passengers  alike, 
and  that  part  alone. 


802  SOUTHERN  DISTRICT  OF  NEW  YORK, 

The  People  of  the  State  of  N.  T.  v.  The  Compagnie  G^D^rale  Tranaatlaotiqiie. 

The  Act  of  May  Slst,  1881,  differs  from  the  prior  statute 
only  in  levying  a  duty  of  $1  for  each  alien  passenger  instead 
of  $1  50  for  each  passenger ;  and  it  may,  perhaps,  be  limited 
to  an  alien  who  arrives  for  the  first  time.  But  it  applies  to  snch 
aliens  who  come  bs  travellers  for  pleasure,  and  have  means, 
and  intend  to  go  back,  and  to  such  aliens  who  come  intending 
to  remain,  and  have  means,  as  well  as  to  such  aliens  who  are  of 
the  classes  mentioned  in  §  1  of  the  Act  of  May  28th,  1881.  It 
compels  the  owner  of  the  vessel  to  pay  $1  for  each  of  the  aUen 
passengers  embraced  in  it,  for  the  privilege  of  landing  him. 
The  tax  is  expressly  imposed  for  having  the  passenger  come 
by  the  vessel  from  a  foreign  port  to  the  port  of  New  York. 
The  new  statute  is  as  liable  to  the  objections  stated  by  the 
Court  in  the  Henderson  case  as  was  the  statute  in  that  case. 

But  it  is  contended  that  the  provisions  of  §  3  of  the  Act 
of  May  Slst,  1881,  make  the  statute  valid,  as  one  laying  an 
impost  or  a  duty  on  imports  for  executing  its  inspection  laws, 
under  this  provision  of  Article  1,  section  10,  of  the  Constitu- 
tion of  the  United  States:  '^No  State  shall,  without  the 
consent  of  Congress,  lay  any  imposts  or  duties  on  imports 
or  exports,  except  what  may  be  absolutely  necessary  for 
executing  its  inspection  laws;  and  the  net  produce  of  all 
duties  and  imposts  laid  by  any  State  on  imports  or  ex- 
ports, shall  be  for  the  use  of  the  Treasury  of  the  United 
States ;  and  all  such  laws  shall  be  subject  to  the  revision  and 
control  of  the  Congress."  The  Act  of  May  28th,  1881,  is  the 
only  so  called  inspection  law  of  the  State  of  New  York  cited 
as  one  with  the  execution  of  which  the  commissioners  of 
emigration  are  charged  by  law.  The  money  received  from 
the  $1  tax  for  each  alien  passenger  arriving  for  the  first  time 
is  to  be  expended,  as  far  as  necessary,  in  executing  the  Act  of 
May  28th. 

The  question  arises,  therefore,  whether  the  Act  of  May 
28th  is  an  inspection  law,  within  the  meaning  of  Article  1^ 
section  10.  Inspection  laws  were  known  when  the  Constitu- 
tion was  framed  in  1787,  and  what  were  inspection  laws  was 
well  understood.    They  had  reference  solely  to  merchandise. 


FEBRUARY,  1882.  303 


The  People  of  the  State  of  N.  T.  v.  The  Compagnie  G^n6rale  Transatlantiqiie. 

Their  object  was  to  improve  the  quality  of  articles  and  fit 
them  for  exportation  or  domestic  nse.  {Gibbons  v.  Ogden,  9 
Wheaty  1  and  203 ;  1  JETenfs  Comm.j  439 ;  Story  on  the  Con- 
stitution, ^1,017.)  In  No.  44  of  The  Federalist,  Article  1, 
section  10,  of  the  Constitution,  is  commented  on,  and  it  is 
said  that  the  manner  in  which  the  restraint  on  the  power  of 
the  States  over  imports  and  exports  is  there  qualified,  that  is, 
in  regard  to  inspection  laws,  "  seems  well  calculated  at  once 
to  secure  to  the  States  a  reasonable  discretion  in  providing 
for  the  conveniency  of  their  imports  and  exports,  and  to  the 
United  States  a  reasonable  check  against  the  abuse  of  discre- 
tion." In  Burrill's  Law  Dictionary,  "  inspection  "  is  defined 
thus :  ^'  Ofiicial  view  or  examination  of  commodities  or  man- 
ufactures, to  ascertain  their  quality,  under  some  statute  requir- 
ing it.''  In  Bouvier's  Law  Dictionaiy,  this  is  the  definition : 
"  The  examination  of  certain  articles  made  by  law  subject  to 
such  examination,  so  that  they  may  be  declared  fit  for  com- 
merce." In  Clintsman  v.  Northrop^  (8  Cowen,  45,)  the 
inspection  laws  of  New  York  are  said  "  to  be  laws  to  protect  the 
community,  so  far  as  they  apply  to  domestic  sales,  from 
frauds  and  impositions,  and,  in  relation  to  articles  designed 
for  exportation,  to  preserve  the  character  and  reputation  of 
the  State  in  foreign  markets."  By  the  Constitution  of  New 
York  of  1846,  {Article  6,  section  8,)  all  offices  for  "  inspecting 

■ 

any  merchandise,  produce,  manufacture  or  commodity  what- 
ever "  were  abolished. 

As  the  term  '*  inspection  laws,"  in  the  section  under  con- 
sideration, refers  only  to  laws  for  inspecting  articles  of  mer- 
chandise, this  shows  that  the  terms  "imports"  and  "exports" 
in  the  same  section  refer  only  to  articles  of  merchandise. 
Persons  are  not  imports  or  exports  or  articles  to  be  inspected, 
under  the  section.  To  pass  a  statute  directing  persons  to  be 
inspected,  to  ascertain  their  condition  as  to  character,  or  pecu- 
niary means,  or  physical  characteristics,  and  then  another 
statute  calling  the  first  one  an  inspection  law,  does  not  make 
it  an  inspection  law.  It  was  not,  and  is  not,  and  can  never  be 
an  inspection  law,  in  the  sense  of  the  Constitution.    Nor  can 


804  SOUTHERN  DISTRICrr  OF  NEW  YORK. 


The  People  of  the  State  of  N.  T.  «.  The  Gompagoie  G^n^rale  TnuiwtUntiqae. 

passengers  arriying  in  the  United  States  be  imports  or  ex- 
ports, in  the  sense  of  the  Constitution.  In  Brawn  v.  The 
State  of  JUarylandy  (12  Wheaton^  419,  437,)  the  section  re- 
ferred to  was  under  consideration,  and  it  was  said  by  the 
Court :  '^  What,  then,  is  the  meaning  of  the  words  ^  imposts 
or  duties  on  imports  or  exports '  ?  An  impost,  or  duty  on 
imports,  is  a  custom  or  a  tax  levied  on  articles  brought  into  a 
country,  and  is  most  usually  secured  before  the  importer  is 
allowed  to  exercise  his  rights  of  ownership  over  them,  because 
evasions  of  the  law  can  be  prevented  more  certainly  by  exe- 
cuting it  while  the  articles  are  in  its  custody.  It  would  not, 
however,  be  less  an  impost  or  duty  on  the  articles,  if  it  were 
to  be  levied  on  them  after  they  were  landed.  The  policy  and 
consequent  practice  of  levying  or  securing  the  duty  before  or 
on  entering  the  port  does  not  limit  the  power  to  that  state  of 
things,  nor,  consequently,  the  prohibition,  unless  the  true 
meaning  of  the  clause  so  confines  it.  What,  then,  are  ^  im- 
ports '  ?  The  lexicons  inform  us  they  are  '  things  imported.' 
If  we  appeal  to  usage  for  the  meaning  of  the  word,  we  shall 
receive  the  same  answer.  They  are  the  articles  themselves 
which  are  brought  into  the  country.  '  A  duty  on  imports,' 
then,  is  not  merely  a  duty  on  the  act  of  importation,  but  is  a 
duty  on  the  thing  imported.  It  is  not,  ta^en  in  its  literal 
sense,  confined  to  a  duty  levied  while  the  article  is  entering 
the  country,  but  extends  to  a  duty  levied  after  it  has  entered 
the  country.  The  succeeding  words  of  the  sentence,  which 
limit  the  prohibition,  show  the  extent  in  which  it  was  under- 
stood. The  limitation  is,  ^except  what  may  be  absolutely 
necessary  for  executing  its  inspection  laws.'  Now,  the  inspec- 
tion laws,  so  far  as  they  act  upon  articles  for  exportation,  are 
generally  executed  on  land,  before  the  article  is  put  on  board 
the  vessel ;  so  far  as  they  act  upon  importations,  they  are 
generally  execnted  upon  articles  which  are  landed.  The  tax 
or  duty  of  inspection,  then,  is  a  tax  which  is  frequently,  if 
not  always,  paid  for  service  performed  on  land,  while  the 
article  is  in  the  bosom  of  the  country.  Yet  this  tax  is  an 
exception  to  the  prohibition  on  the  States  to  lay  duties  on 


FEBRUARY,   1882.  805 


The  People  of  the  State  of  N.  Y.  v.  The  Compagnie  Geii6rale  Transatlantique. 

imports  or  exports.  The  exception  was  made  because  the  tax 
would  otherwise  have  been  within  the  prohibition."  These 
observations  are  persuasive  to  show  that  persons  are  not  im- 
ports or  exports^  or  the  subjects  of  inspection  laws,  within 
section  10  of  Article  1.  The  word  "  imports  "  and  the  word 
^'  exports  "  must  have  equal  extent  and  scope.  The  former 
can  have  no  greater  than  the  latter.  The  suggestion  that 
persons  departing  from  the  United  States  by  vessel  could 
properly  be  said  to  be  exported,  or  to  be  exports,  under  any 
circumstances,  even  when  re-transported  by  public  authority, 
is  not  one  which  commends  itself  to  the  general  understand- 
ing. If  not  exports  they  cannot  be  imports.  The  fact  that 
the  importation  of  persons  is  referred  to  in  section  9  of 
Article  1  has  no  effect  to  include  persons  within  the  word 
^^  imports,"  where  that  word  is  used.  The  clause  referred  to 
prevents  Congress  from  prohibiting,  prior  to  1808,  "the 
emigration  or  importation  of  such  persons"  as  any  of  the 
States  then  existing  should  think  proper  to  admit.  So  far  as 
this  section  referred  to  the  involuntary  arrival  of  persons  it 
had  reference  to  persons  brought  in  to  become  slaves  and 
articles  of  merchandise. 

There  is  nothing  authoritative  in  The  Paaaenger  Oasesy  (7 
Sow.y  283,)  or  in  any  other  decision  of  the  Supreme  Court, 
which  conflicts  with  the  foregoing  views.  The  new  statute  of 
New  York  being  void  under  the  decision  in  the  Henderson 
ease,  no  authority  upholding  it  as  a  law  laying  a  duty  on  im- 
ports, to  execute  an  inspection  law,  can  be  derived  from  sec- 
tion 10  of  Article  1.  In  Hailroad  Co.  v.  Huaen^  (5  Otto^ 
465,  472,)  the  principle  of  the  Henderson  case  was  affirmed 
and  applied,  as  a  principle  which  forbids  a  State  from  burden- 
ing foreign  commerce  under  the  cover  of  exercising  its  police 
powers.  It  is  such  a  burden  to  tax  aU  alien  passengers  arriv- 
ing by  vessel  for  the  first  time ;  and  the  fact  of  examining  or 
inspecting  the  persons  of  such  passengers  to  see  if  they  are 
good  or  bad,  poor  or  rich,  sane  or  lunatic,  diseased  or  well,  does 
not  make  the  tax  a  tax  to  execute  an  inspection  law.  Under 
this  guise,  any  law  which  required  examination  of  any  person 
Vol.  XX.— 20 


S06  SOUTHERJI  DIflTBICr  OF  HEW  TORE, 

TlM  PMple  of  tlM  State  of  9.  T.  v.  TIm  Gonp^nB  G^aCnfe 


or  thing,  and  which  naed  the  word  ^  inflpection,"  conld  be 
thereby  made  an  inspection  law,  and  the  restraint  of  the  Con- 
stitntion  oonld  be  frittered  awaj,  so  long  as  the  duties  laid 
did  not  exceed  what  was  neeessaiy  to  execote  the  particnlar 
law. 

Bnt  there  is,  moreorer,  on  the  face  of  the  Act  of  Hay 
28th,  sufficient  evidence  that  it  cannot  be  r^;arded  as  an  in- 
spection law.  The  Acts  of  May  28th  and  Hay  31st  cannot 
either  of  them  derive  any  greater  force  from  the  fact  that 
they  are  two  Acts  than  the  enactments  in  the  two  wonld  have 
if  they  were  all  in  one  and  the  same  Act.  The  Act  of  May 
28th  goes  beyond  the  inspection  and  the  ascertainment  of  the 
facts  prescribed,  and  anthorizes  the  commissioners  to  take  the 
objectionable  persons  into  their  care  or  custody  and  provide 
for  the  transportation  and  support  of  such  persons  ^^  so  long  as 
they  may  be  a  necessary  public  charge."  Some  of  the  objec- 
tionable persons  are  defined  to  be  '^  infirm  or  orphan  persons, 
without  means  or  capacity  to  support  themselves,  and  subject 
to  become  a  public  charge."  This  is  an  eleemosynary  system 
for  supporting  paupers,  it  may  be  for  their  lives.  Able- 
bodied  aliens  arriving  here  for  the  first  time,  with  means,  in 
health,  not  among  the  classes  called  ^^  objectionable "  in  the 
Act,  are  to  have  a  tax  of  $1  laid  for  each  of  them,  to  support 
such  system.  This  is  not  an  inspection  law.  It  is  a  direct 
interference  with  the  exclusive  power  of  Congress  to  regulate 
commerce  with  foreign  nations. 

It  is  urged  for  the  plaintifis,  that,  inasmuch  as  section  10  of 
Article  1  declares  that  the  State  inspection  law  shall  be  sub- 
ject to  the  revision  and  control  of  Congress  this  Court  has  no 
jurisdiction  to  revise  or  control  the  action  of  the  State  in 
enacting  or  administering  the  law.  If  the  law  is  an  inspection 
law,  it  is,  as  such,  subject  to  the  revision  and  control  of  Con- 
gress. But  this  fact  cannot  deprive  the  Court  of  its  power  of 
adjudging,  in  a  proper  suit,  whether  the  law  is  an  inspection 
law  at  all,  or  whether  it  is  a  law  of  another  character. 

It  results  from  the  foregoing  considerations,  that  the  de- 


FEBRUARY,   1882.  307 


Carrier  v  The  Town  of  Sh&wangonk. 


murrer  is  BOBtained  and  jadgment  is  ordered  for  the  defend- 
ant, with  costs. 

Z&uns  Samders  and  Oeorge  If.  Scmders^  for  the  plamtifis* 
Frederic  R.  Ccnidertj  for  the  defendant. 


John  Carrtkb 

vs. 

The  Town  op  Shawanqunk. 

An  Act  authoruing  the  commiflBionerB  of  a  town  to  borrow  money  and  issae  itt 
bonds  provided  that  the  power  conferred  by  the  statute  shonld  only  be  exer- 
cised on  the  condition  that  the  consent  should  first  be  obtained,  in  writing,  of 
tax-payers  appearing  on  the  last  assessment  roll,  representing  a  majority  of 
the  taxable  property  of  the  town,  proof  of  which  should  be  by  the  acknowl- 
edgment or  proof  thereof  filed  in  the  town  and  county  clerk's  offices  and  an- 
nexed to  a  copy  of  the  assessment  roll  The  bonds  of  the  town  were  issued, 
payable  to  bearer,  and  re<dting  that  they  were  issued  in  pursuance  of  the 
Act.  The  plaintiff  sued  the  town  on  some  of  the  bonds,  and  at  the  trial  proved 
that  he  obtained  the  bonds  firom  a  bank,  and  that  its  attorney,  before  the  bank 
purchased  them,  examined  a  certified  copy  of  the  consent  and  assessment  roll 
and  ascertained  therefrom  that  a  majority  of  the  persons  on  the  roll  had  con- 
sented, and  that  the  bank  then  bought  the  bonds  and  paid  value  for  them, 
without  notice  of  any  defence.  The  defendant  then  offered  in  evidence  a 
certified  copy  of  the  consent  roll  of  the  town,  and  a  certified  copy  of  the  as- 
sessment roll,  to  show  that  the  consent  of  a  m^ority  in  value  of  the  tax-payers 
was  not  obtained.    The  Court  excluded  the  evidence :  HOd,  no  error. 

(Before  Shipmak,  J.,  Southern  District  of  New  York,  February  »th.  1882.) 

Shifman,  J.  This  is  an  action  at  law,  to  recover  the 
amount  due  upon  sundry  bonds  for  $2,400,  issued  by  the 
town  of  Shawangunk  and  payable  to  bearer.  The  bonds  re- 
cited that  they  were  issued  in  pursuance  of  the  Act  which  is 


308  SOUTHERN  DISTRICT  OF  NEW  YORK. 

Carrier  v.  The  Town  of  Shawanfirnnk. 

hereafter  mentioned  and  by  duly  appointed  commisBioners. 
The  second  section  of  chapter  880  of  the  Session  laws  of  New 
York,  of  1866,  {p.  2,074,)  provided,  that  it  should  be  lawful  for 
the  commissioners  (appointed  by  the  county  judge  npon  the 
application  of  twelve  freeholders,  residents  of  the  town,)  to 
borrow,  on  the  faith  and  credit  of  the  town,  such  sum  of  money 
as  the  tax-paying  inhabitants  of  the  town  should  fix  npon  by 
their  assent  in  writing,  not  exceeding  a  specified  percentage 
of  the  assessed  valuation  of  the  property  of  the  town  for  the 
year  1866,  "provided,  however,  that  the  powers  and  authority 
conferred  by  this  section  shall  only  be  exercised  npon  the 
condition  that  the  consent  shall  first  be  obtained  in  writing  of 
such  number  of  the  tax-payers  of  such  town,  their  heirs  or 
legal  representatives,  appearing  upon  the  last  assessment  roll 
for  the  year  1865,  as  shall  represent  a  majority  of  the  taxable 
property  of  such  town,  proof  of  which  shall  be  by  the  ac- 
knowledgment or  proof  thereof,  as  required  for  deeds  of  real 
estate,  filed  in  the  town  and  county  clerk's  office  of  the  re- 
spective counties,  and  annexed  to  a  copy  of  the  assessment 
roll  of  the  town  for  1865." 

For  the  purpose  of  showing  that  the  plaintiff,  whether  a 
purchaser  for  value  or  not,  had  the  title  and  rights  of  a  hofia 
fide  holder,  because  he  was  the  successor  of  the  Dime  Savings 
Bank,  which  was  a  purchaser  for  value,  before  maturity,  and 
without  notice  of  any  claim  of  non-liability  on  the  part  of  the 
town,  the  plaintiff  proved,  by  the  attorney  of  the  bank,  that, 
before  the  purchase  and  before  maturity,  he  investigated 
whether  the  consent  of  the  town  to  the  issue  of  the  bonds 
had  been  obtained,  as  prescribed  by  the  Act.  Before  the 
examination,  he  had  never  heard  of  any  claim  on  the  part  of 
the  town,  or  its  officers,  that  the  bonds  were  invalid.  He  ex- 
amined a  certified  copy  of  the  consent  and  assessment  rolls  of 
the  town,  and  ascertained  that  the  majority  of  the  persons 
upon  the  assessment  list  had  signed  the  petition  or  consent  to 
the  bonding  of  the  town,  and  that  the  consents  represented  a 
majority  of  the  property  of  the  town,  and  that  these  facts 
had  been  certified  to  by  the  proper  officers.    The  witness  tes* 


FEBRUARY,   1882.  809 


Carrier  v.  The  Towq  of  Shawaoipuik. 


tified :  ^^  I  carefully  added  up  and  reviewed  the  additions  al* 
ready  added  up,  proved  the  figoreS)  and  found  them  correct. 
I  counted  the  names  for  myself ,  and  I  read  the  certificate.  It 
was  the  county  clerk's  of  Ulster  county.  ♦  ♦  ♦  I  ascer- 
tained that  aU  the  names  on  the  consent  roll  were  on  the 
assessment  roll  and  checked  them  o£^  and  added  up  the 
amount  of  the  property."  The  result  of  the  investigation 
was  reported  to  the  Bank,  which  thereupon  bought  a  large 
amount  of  the  bonds  for  ninety  jp^  cent,  of  their  par  value. 
The  certified  copy  was  delivered  to  the  Bank,  and  was  there- 
after mislaid  and  lost. 

It  was  not  claimed  by  the  defendant  that  the  Bank  had 
any  actual  notice  of  any  alleged  invalidity  of  the  bonds,  but 
the  defendant,  after  the  plaintiff  had  rested,  offered  a  certi- 
fied copy  of  the  consent  roll  of  the  town,  in  pursuance  of 
which  the  bonds  were  authorized  to  be  issued,  together  with 
a  certified  copy  of  the  assessment  roll  of  the  town  for  the  year 
1866,  to  show  that  the  consent  of  the  majority  in  value  of  the 
tax-payers  was  not  obtained,  and  insisted  "  that  the  Bank  must 
stand  or  fall  by  the  roll  as  it  in  fact  was,  not  by  any  mistaken 
interpretation  of  it  by  its  attorney ;  and  that  it  was  not  a  haria 
fde  holder,  without  notice,  because  it  had  undertaken  to  in- 
vestigate the  matter,  and  did  not  rely  on  the  face  of  the  secu- 
rity." The  Court  excluded  the  evidence,  to  which  ruling  the 
defendant  excepted,  and,  a  verdict  having  been  subsequentiy 
directed  for  the  plaintiff,  the  defendant  filed  a  bill  of  excep- 
tions and  a  motion  for  a  new  trial.  The  question  in  regard 
to  the  exclusion  of  the  certified  copies  of  the  consent  and  as- 
sessment rolls  for  the  purpose  for  which  they  were  offered, 
was  the  only  one  which  was  argued  by  the  defendant. 

It  will  be  observed,  that  these  rolls  were  not  offered,  either 
upon  cross-examiDation  of  the  attorney  or  as  independent  ev- 
idence, to  show  that  he  had  actual  notice  of  any  defect  in  the 
number  of  consents,  or  that  he  would  have  had  notice  if  he 
had  exercised  reasonable  diligence,  but  they  were  offered 
upon  the  alleged  ground  that,  inasmuch  as  the  Bank's  attor- 
ney had  examined  certified  copies,  it,  therefore,  could  not  be 


810  SOUTHBBN  DISTRICT  OP  NEW  YORK, 


Carrier  v.  The  Town  of  Shawangnnk. 


a  honafde  purchaser,  if  a  comparison  of  the  consent  roll  with 
-the  assessment  roll  would  show  that  the  consent  of  a  majority  in 
yalue  had  not  been  obtained,  although  diligent  scrutiny,  at  the 
time  of  the  purchase,  did  not  disclose  this  alleged  fact.  The 
defendant's  proposition  was,  that  the  purchaser,  before  matu- 
rity, of  municipal  bonds  payable  to  bearer,  is  not  a  Jxma  fide 
holder,  if  he  undertakes  to  investigate  the  validity  of  the 
bonds  which  he  proposes  to  buy,  and  investigation  would 
have  revealed  to  him  a  defect,  although  it  was  not  disclosed 
by  diligent  examination,  and  that  such  purchaser  is  charged 
with  notice  of  all  that  a  complex  record  might  show,  although 
it  is  not  claimed  that  he  had  notice  of  any  defect  in  the  bonds, 
and  it  is  clear  that  diligent  scrutiny  of  the  copies  of  the  pub- 
lic records  which  were  furnished  to  him  did  not  disclose  any 
suggestion  of  such  defect.  No  such  artificial  rule  in  regard 
to  notice  has  been  established.  It  is  true,  that  purchasers  of 
municipal  bonds  are  charged  with  notice  of  the  laws  of  the 
State  which  authorized  the  issue,  and  of  a  want  of  power  in 
the  municipality  or  its  officers  to  execute  or  issue  the  bonds. 
In  this  case,  it  is  fairly  to  be  gathered  from  the  statute,  that 
the  commissioners  were  invested  with  power  to  dedde 
whether  the  proper  number  of  tax-payers  had  consented,  and 
whether,  therefore,  the  condition  precedent  had  been  com- 
plied with,  and  their  recitals  in  the  bonds,  when  held  by  a 
hanafide  purchaser,  are  conclnsive.  {Coloma  v.  Mivei,  92  27. 
/S:,484 ;  SumMdt  v.  Zangy  92  O.  S.,  642 ;  Walnut  v.  Wade,  108 
U.  &,  683.)  Knowledge,  by  the  purchaser  of  municipal  bonds 
before  maturity,  of  their  invalidity,  when  there  are  no  marks 
of  infirmity  on  the  face  of  the  instrument,  and  there  is  no 
want  of  power  in  the  municipality  or  its  officers  to  execute 
and  issue  the  bonds,  is  a  question  of  fact.  It  being  admitted 
that  the  purchaser  before  maturity,  for  value,  had  no  actual 
notice  or  suspicion  of  any  defect,  and  the  bonds,  in  substance, 
reciting  compliance  with  the  condition  precedent  which  was 
required  by  tihie  statute,  the  arbitrary  rule  claimed  by  the  de- 
fendant, which  declares  that  he  did  have  constructive  notice 
of  a  defect,  does  not  exist. 


FEBRUARTi  1882.  811 


Schneider  v.  Lovell. 


The  motion  for  a  new  trial  is  denied,  and  the  stay  of  pro- 
ceedings is  vacated. 

Charles  C.  Leeds   and    ChaHee  H.   Wir^field,  for   the 
plaintiffs. 

D.  If.  De  WiU,  for  the  defendant. 


Benkstt  B.  Sohnbideb 


vs. 
Fbakk  H.  Lotbll  and  Obyille  D.  Loybll.    In  Equtiy. 

Be-iasaed  letters  patent  No.  7,511,  granted  to  Bennett  B.  Schneider,  February 
18th,  1877,  for  an  "  improvement  in  shade-koldere  for  lampa,"  the  original 
patent,  No.  182,978,  baring  been  granted  to  Carl  Yotti,  as  inventor,  October 
8d,  1876,  do  not  describe  the  shape  or  sice  of  the  parts,  or  the  proportion  of 
the  parts  of  the  shade,  or  the  principle  which  is  to  govern  the  constmction  of 
the  shade  as  to  siie  and  proportions,  and  there  is  no  infringement  of  the  patent 
by  a  shade  which  is  not  of  the  form  and  dimensions  and  siae  and  height  and 
proportions  of  the  shade  shown  in  the  drawings  of  the  patent 

(Before  BLAtcBroan,  J.,  Sonthem  District  of  New  York,  February  10th,  1882.) 

Blatohvobd,  J.  This  suit  is  brought  on  re-issued  letters 
patent  No.  7j511,  granted  to  the  plaintiff,  February  13th, 
1877,  for  an  ^'  improvement  in  shade-holders  for  lamps,"  the 
original  patent.  No.  182,973,  having  been  granted  to  Oarl 
Votti,  as  inventor,  October  3d,  1876.  The  specification  of 
the  re-issue  says :  '^  My  invention  relates  to  lamps,  and  it  con- 
sists in  a  transparent  shade-holder,  or  holder  of  a  material 
allowing  the  passage  of  light,  and  shade  or  globe  so  arranged 
that  an  ordinary  lamp  burner  can  be  used  without  a  chimney^ 
as  will  be  hereinafter  more  fully  set  forth.  In  the  annexed 
drawing,  figure  1  is  a  vertical  section  of  my  invention.  Fig. 
2  is  a  plan  view  of  the  shade-holder.      A  represents  an  ordi- 


812  SOUTHEBir  DISTRICT  OF  NEW  YORK, 

Schneider  «.  LoTell. 

nary  lamp  burner,  proyided  with  a  drcnmferential  flange,  a, 
for  the  support  of  the  cone  ft,  and  which,  ordinarily,  also 
serves  to  support  the  chimney  or  cylinder.  This  flange  is 
provided  with  soitable  perforations,  through  which  air  is  ad- 
mitted both  inside  and  outside  of  the  cone.  Instead  of  using 
the  flange  a  for  the  support  of  the  ordinary  chimney,  I  place 
on  the  same  my  shade-holder,  B,  which  is  made  of  glass  or 
other  suitable  transparent  material,  or  material  that  will  allow 
of  the  passage  of  lights  and  which  is  provided  with  a  tubular 
extension  or  socket,  c,  that  fits  over  the  cone  },  leaving  an  air 
space  between  its  inner  surface  and  the  outer  surface  of  said 
cone.  From  said  socket  extends  a  broad  disk -shaped  flange, 
dy  which  is  provided  with  a  rim,  «,  and  which  serves  to  sup- 
port and  retain  the  shade,  C.  The  flange,  dj  is  perfectly 
dosed,  so  that  no  air  will  pass  to  the  flame  except  what  is  ad- 
mitted through  the  perforations  in  the  burner  flange,  a,  and 
by  these  means  I  am  enabled  to  produce  a  bright  flame  with- 
out the  use  of  an  ordinary  chimney  or  cylinder.  The  advan- 
tages of  this  arrangement  will  be  apparent,  since  it  allows  of 
keeping  the  burner  clean  and  of  trimming  the  wick  without 
difficulty,  and  the  annoyance  of  broken  chimneys  is  avoided. 
It  will  be  seen,  that  with  the  shade-holder  and  shade  arranged 
as  shown  and  described,  the  ordinary  burner  ¥rill  perform  the 
required  functions  without  the  use  of  a  chimney.  I  am 
wdl  aware  that  transparent  shade-holders  are  of  themselves 
not  new ;  hence,  I  do  not  claim  such,  broadly,  as  being  my  in- 
vention." The  claims  of  the  re-issue  are  as  follows :  ^^  1.  In 
a  lamp  having  a  burner,  the  combination  of  a  shade-holder 
made  of  material  that  will  admit  of  the  passage  of  light,  and 
a  shade  or  globe,  arranged  and  constructed  substantially  as 
described,  whereby  the  burner  performs  the  required  func- 
tions without  the  use  of  a  chimney,  as  set  forth.  2.  The 
shade-holder,  B,  constructed  of  material  that  will  admit  of 
the  passage  of  light,  and  provided  with  a  downwardly  extend- 
ing socket,  Cj  and  disk-shaped  flange,  (2,  with  rim,  e,  in  com- 
bination with  a  globe  or  shade,  0,  and  burner.  A,  of  a  lamp^ 
as  and  for  the  purposes  herein  set  forth.    3.  The  combination. 


FEBRUAET,   1882.  818 


Schneider  v.  LoTell. 


in  a  lamp,  of  the  burner,  A,  having  perforated  flange,  a,  and 
cone,  bj  the  Bhade-holder,  B,  with  central  socket,  c,  and  a 
fihade  or  globe,  0,  snbstantiallj  as  and  for  the  purposes  herein 
set  forth.'' 

One  of  the  defences  set  up  in  the  answer  is,  that  in  the 
specification  of  the  re-issue  there  is  not  given,  as  required  by 
the  statute,  a  description  of  the  invention,  and  of  the  procesa 
of  making,  constructing,  and  using  it,  in  such  full,  dear  and 
exact  terms  as  to  enable  any  person  skilled  in  the  art  or  sci- 
once  to  which  it  appertains,  to  make,  construct,  and  use  the 
same,  nor  is  there  explained  in  or  by  said  specification  the 
principle  of  the  alleged  invention,  and  the  best  mode  in  which 
said  Yotti  has  contemplated  applying  that  principle,  so  as  to 
distinguish  it  from  other  inventions,  and  that,  therefore,  the 
patent  is  void. 

In  the  specification  nothing  is  said  as  to  the  shape  or  size 
of  the  parts,  or  proportion  of  the  parts,  of  the  shade,  0. 
Nothing  is  said  about  it  except  to  call  it  a  globe  or  shade,  and 
to  designate  it  as  0,  by  a  letter  of  reference  to  the  drawings. 
Nothing  is  said  as  to  the  diameter  of  the  contraction  at  the 
narrowest  part  of  it  near  its  top,  as  compared  with  the  diame- 
ter of  the  socket  o  of  the  shade-holder :  and  nothing  as  to  its 
height  or  as  to  the  degree  of  flare  of  the  shade-holder.  These 
things  are  shown  by  the  evidence  to  be  material  in  construct- 
ing an  arrangement  of  the  kind  which  will  give  as  good  a 
light  as  with  the  use  of  a  chimney.  The  object  of  the  ar- 
rangement is  stated  in  the  specification  to  be  to  use  an  ordi- 
nary burner  without  a  chimney,  and  to  dispense  with  the  or- 
dinary chimney.  This  can  only  mean  that  as  good  a  light  is 
to  be  produced  without  as  with  a  chimney.  The  meaning  of 
the  words  ^^  a  bright  flame,"  in  their  context,  is,  as  bright  a 
flame  as  the  chimney  will  produce.  The  meaning  of  the  ex- 
pression, that  "the  ordinary  burner  will  perform  the  required 
functions  without  the  use  of  a  chimney,"  is,  that  the  ordinary 
burner  will  give  as  much  light  without  the  use  of  a  chimney. 
This  is  to  be  done  by  having  "the  shade-holder  and  shade  ar- 
ranged as  shown  and  described,"  yet  the  features  of  construe- 


314  SOUTHERN  DISTRICT  OF  NEW  TORK, 

Schneider  v.  LoTelL 

tion,  and  shape,  and  size,  and  proportions  of  the  shade,  are 
not  set  forth.  So,  too,  in  claim  1,  ^^  a  shade  or  globe  arranged 
and  oonstmcted  snbstantiallj  as  described,"  is  spoken  of,  yet 
nothing  is  described  as  to  the  construction  of  the  shade.  It 
is  tme  that,  by  looking  at  0  in  the  drawings,  a  shade  of  a  cer- 
tain form  is  shown.  But  the  drawings  are  not  said  to  be  on 
a  scale.  Looking  at  the  drawings  and  making  a  shade  from 
them  gives  but  one  form  of  shade,  at  most,  and  there  is  no 
statement  of  the  principle  which  is  to  govern  the  construction 
of  the  shade  as  to  size  and  proportions.  It  is  shown  that  a 
shade  made,  as  nearly  as  can  be  ascertained,  of  the  form  and 
proportions  shown  in  the  drawings  will  cause  the  burner  to 
give  light  to  some  degree,  but  by  no  means  to  the  same  de- 
gree as  the  ordinary  chimney  will  with  the  same  burner.  It 
is  not  the  shade  of  the  drawings  that  has  been  made  and 
sold  by  the  plaintiff  under  the  patent,  nor  have  the  defend- 
ants made  or  sold  the  shade  of  the  drawings.  To  reach  the 
shades  of  either  the  plaintiff  or  the  defendants  required  ex- 
periment, adaptation,  and  invention  beyond  anything  shown 
in  the  drawings.  Construing  the  patent  as  covering  a  shade 
of  the  form,  and  dimensions,  and  size,  and  height,  and  pro- 
portions shown  in  the  drawings,  no  such  shade  has  been  made 
or  sold  by  the  defendants,  and  so  there  has  been  no  infringe- 
ment. This  is  the  most  favorable  view  which  can  be  taken 
of  the  patent. 

The  bill  is  dismissed,  with  costs. 

Oifford  dk  Oifardj  for  the  plaintiff. 
J.  P,  Fitch^  for  the  defendants. 


FEBRUABY,   1882.  815 


Hart  V.  Thsyer. 


WiLUAM  H.  Habt,  Jb. 

VS. 

HiBAM  H.  Thayeb.    In  Equity. 

Ba-iMied  letten  pfttent,  No.  7,009,  granted  to  William  H.  Hart,  Jr.,  October 
9th,  1877,  for  ao  "  improTement  in  neck-tieB,''  the  original  patent,  No.  169,921, 
haring  been  granted  to  him  Febroary  Idtb,  1876,  are  not  infringed  by  a  pin 
emstmcted  according  to  the  description  in  letters  patent  No.  206,078, 
granted  to  Albert  M  Smith  and  Hiram  H.  Thayer,  April  28d,  1878. 

If  the  Te>ifl0iie  olums  more  than  the  original,  so  as  to  coTer  the  defendant's  pin, 
it  coyers  new  matter,  not  found  in  the  original,  and  is  for  an  invention  not 
shown  in  the  original. 

(BdDre  Blatohvobd,  J.,  Southern  District  of  New  York,  February  18th,  1882.) 

Blatohfobd,  J.  This  suit  is  brought  on  re-issned  letters 
patent.  No.  7,909,  granted  to  the  plaintifi  October  9th,  1877, 
for  an  ^^  improvement  in  neck-ties,"  the  original  patent,  No. 
159,921,  having  been  granted  to  him  February  16th,  1875. 
The  specification  of  the  re-issne  is  as  follows,  reading  what  is 
outside  of  brackets  and  what  is  inside  of  brackets,  omitting 
what  is  in  italics :  "  Figure  1  is  a  face  view  of  tiie  device 
embodying  my  invention.  Fig.  2  is  a  side  view  thereof, 
partly  in  section.  Fig.  8  is  a  side  view,  enlaiged,  of  a  detached 
part.  Similar  letters  of  reference  indicate  correspond- 
ing parts  in  the  several  figures.  In  the  class  of  neck- 
ties wherein  the  front  bow,  which  is  made  long  and  lies  on 
the  chest,  is  held  in  position  by  a  band  which  passes  around 
the  neck,  it  is  necessary  to  secure  said  band  in  some  manner, 
to  prevent  displacement  of  the  tie.  For  this  purpose  pins 
have  been  sewed  to  the  shields  or  supporting  plates  of  the 
ties  and  the  neck  bands  engaged  therewith ;  but  this  is  objec- 
tioDable,  since  the  pin  soon  loosens  and  is  lost.  Again,  the 
cost  of  thus  attaching  the  pin  is  a  matter  of  considerable 
moment.    My  invention  is  designed  to  remedy  these  defects ; 


316  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Hart  V.  Thayer. 

and  consists  in  securing  the  pins  to  the  shidds  by  metallic 
fastenings,  whereby  the  pins  are  firmly  retained  in  place, 
longer  service  is  rendered  thereby,  and  there  is  a  cheapness 
in  the  product.  Referring  to  the  drawings,  A  represents  a 
shield  or  snpporting-plate  for  a  neck-tie,  which  consists  of  a 
long  bow  or  knot,  ^,  constituting  the  front  portion,  and  a 
band,  ft,  which  passes  aronnd  the  neck,  the  two  parts  being 
shown  in  dotted  lines.  To  the  bottom  portion  of  the  shield 
or  plate  I  secure  a  pin,  B,  which  projects  downwardly,  so  that 
the  band  h  may  be  attached  thereto,  in  order  that  the  band 
will  not  disengage  from  the  neck  and  release  the  tie.  I  secure 
the  pin  to  the  shield  by  metallic  rivets,  [or  projections,]  0, 
which  readily  clinch  on  the  shields  and  firmly  connect  the  two 
parts.  These  rivets  [or  projections  are  attached  to  the  pin  in 
any  suitable  manner,  and  they  may  be  parts  of  the  pin  itself ; 
or  they  may  be  separate  pieces  of  metal  fastened  to  it.  Thus 
they]  may  be  passed  through  the  fiattened  body  of  the  pin 
and  the  shield  and  headed,  or  [they  may  be]  punched  out  of 
the  said  [body.]  body^  [The  metallic  rivet  or  projection  is 
passed  through  the  shield,]  and  [is]  bent  over  [and]  or  clinched 
[upon  the  opposite  side.]  on  the  shield.  It  will  be  seen  that 
the  connection  of  the  pin  and  shield  is  firm  and  [durable.] 
durable.  [Whereas]  /  overcome  loosening  of  the  pvn  due  to 
outUng  of  the  threads,  [formerly]  which  heretoforey  in  use, 
[passing]  ha/oe  been  passed  through  openings  in  the  pin, 
[were  cut  by  their  edges,  or  rotted  away  from  corrosion  of  the 
pin  through]  or  rottkng  of  said  thread  consequent  to  perspira- 
tion, [and  the  pin  was  soon  lost  or  loosened.]  corroding  the 
pin.  Again,  as  the  work  can  be  performed  by  machinery, 
instead  of  stitching  or  sewing  by  hand,  labor  is  materially  re- 
duced, whereby  there  is  [a]  great  saving  in  the  [cost  of  pro- 
duction.] product.  [I  do  not  claim  any  particular  method  of 
attaching  the  metal  fastenings  to  the  pin,  since  any  of  the 
well-known  methods  of  attaching  metals  together  may  be 
employed,  either  cohesion  by  welding  or  soldering,  or  forming 
both  pin  and  fastenings  out  of  one  piece  of  metal,  or 
adhesion  and  pressure  by  making  one  metal  inclose   the 


FEBBtJABT,  1882.  817 


Hart  ft.  Thayer. 


other.]"  Reading  in  the  foregoing  what  is  outside  of  brackets, 
including  what  is  in  italics,  and  omitting  what  is  inside  of 
brackets,  gives  the  text  of  the  original  specification.  The 
claims  of  the  re-issue  are  as  follows :  ^^  1.  The  pin  B  and  neck- 
tie shield  A,  in  combination  with  the  metallic  fastening  0, 
substantially  as  and  for  the  purpose  set  forth.  2.  The  pin  B, 
formed  wil^  the  fastening  0,  in  combination  with  the  neck- 
tie shield  A,  sabstantiallj  as  and  for  the  purpose  set  forth. 
3.  A  metallic  fastening  or  metallic  fastenings,  0,  attached  to 
and  projecting  from  the  pin  B,  substantially  as  and  for  the 
purpose  set  forth."  The  original  patent  had  only  two  claims. 
The  first  was  the  same  as  claim  1  of  the  re-issue.  The  second 
was  the  same  as  claim  2  of  the  re-issue,  with  the  words 
"  punched  out "  inserted  between  "  the  "  and  "  fastening." 

It  is  claimed  that  the  defendant  has  infringed  claim  2  of 
the  re-issue  by  making  and  selling  neek-tie  shields  with  pins 
such  as  are  described  in  letters  patent  No.  206,673,  granted  to 
Albert  M.  Smith  and  Hiram  H.  Thayer,  April  23d,  1878.  The 
pin  is  of  metal,  pointed  at  one  end.  In  its  length  are  two  bends, 
which  are  nearly  at  right  angles  to  the  length  of  the  body. 
One  bend  is  farther  from  the  ]>oint  than  the  other  bend  is 
from  the  opposite  end.  Each  bend  is  made  by  two  right 
angled  defiections  of  the  body  of  the  pin.  From  the  bend 
near  the  end  farthest  from  the  point,  the  body  of  the  pin 
proceeds  on  in  a  line  not  continuous  with  the  line  of  the  pin 
the  other  side  of  said  bend,  but  parallel  therewith.  The  other 
bend  is  so  made  as  to  bring  back  the  line  of  the  pin  between 
said  bend  and  the  point  to  the  line  of  the  pin  the  other  side 
of  the  first-named  bend.  The  shape  of  the  pin,  with  the  two 
bends,  is  this:    =^  — ^^=*^   The  pin  is  attached 

to  the  shield  by  passing  it  through  two  holes  in  the  shield, 
one  hole  at  each  bend,  so  that  the  two  ends  of  the  pin  are  on 
one  side  of  the  shield  and  the  middle  part  or  body  is  on  the 
other  side  of  it.  The  bends  are  abrupt  or  short,  and  form 
shoulders,  which  bear  in  the  holes  and  keep  the  pin  from 
moying  or  slipping  back  and  forth.  The  pin,  af t^  it  is  in  the 


818  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Htfi  V.  Thayer. 

shield,  is  flattened,  especially  at  the  anpointed  end,  so  that  it 
will  lie  more  closely  and  finnly  to  the  shield  and  not  project 
from  its  surface.  The  pin  is  pat  into  the  shield  and  iastmed 
by  springing  its  ends  together  snfliciently  to  put  them  through 
the  holes  made  for  them  in  the  shield,  and  then  springing  the 
pin  back  again.  The  claim  of  the  patentee  is  to  the  combina- 
tion of  the  shield  with  the  pin  constmcted  and  arranged  to 
operate  substantially  as  and  for  the  purpose  thus  set  forth. 

The  original  patent,  No.  159,921,  speaks  of  only  two  ways 
of  forming  the  fastenings  of  the  pin.  One  is  to  have  metallic 
rivets  passing  through  the  body  of  the  pin  and  headed.  The 
other  is  to  have  the  rivets  punched  out  of  the  body  of  the 
pin  and  bent  over  or  clinched  on  the  shidd.  The  firat  daim 
of  that  patent  is  for  the  combination  of  three  things — ^the 
shield,  the  pin  and  the  separate  rivet  fastening.  The  second 
claim  is  for  a  combination  of  the  shield  and  the  pin  having 
rivets  punched  out  of  its  body.  But,  with  either  form  of 
fastening,  the  entire  pin,  when  in  place^  is  on  one  side  of  the 
shield,  and  the  bent  over  or  clinched  or  headed  ends  of  the 
fastenings  are  on  the  other  side  of  the  shield.  The  body  of  the 
pin  is  straight  and  continuous,  aside  from  the  supplementary 
fastenings.  In  the  defendant's  pin  the  body  is  not  straight 
and  there  are  no  supplementary  fastenings.  The  body  of  the 
pin,  by  being  bent,  fastens  itself.  Manifestly,  the  effort  in  the 
specification  of  the  re-issue  is  to  enlarge  the  scope  of  the  pat- 
ent beyond  what  is  warranted  by  the  original  The  re-issue 
says  that  the  projections  may  be ''  parts  of  the  pin  itself." 
No  way  is  shown  in  the  original  of  making  the  projections 
parts  of  the  pin  itself  except  by  puncturing  them  out  of  its 
body.  That  means  partly  detaching  part  of  the  body  and 
letting  it  form  a  pin  or  projection,  to  be  bent  down  and 
clinched  on  the  other  side  of  the  shield.  The  defendant's 
bends  are  parts  of  the  pin  itself,  but  they  are  not  projections 
from  the  body,  as  in  the  plaintiff's  pin,  but  are  projections  cf 
the  whole  body,  in  its  devious  path.  The  second  claim  of  the 
re-ifisue,  if  construed  to  mean  anything  more  than  the  second 
daim  of  the  original,  so  as  to  cover  the  defendant's  pin,  covers 


FEBRITABr,  1882.  319 


Hart  V.  Thayer. 


new  matter  not  found  in  the  original,  and  is  for  an  invention 
not  shown  in  the  original  That  defence  is  set  np  in  the  answer. 
The  only  pin  with  a  fastening  f  ormiDg  part  of  its  body,  described 
or  shown  in  the  original,  is  a  pin  with  a  fastening  punched  out 
of  its  body.  A  pin  formed  with  a  fastening  which  is  part  of 
the  pin  itself  is  a  form  of  description  ingeuionsly  devised 
to  cover  a  punched-out  fastening,  and  also  such  bent  fas- 
tenings as  those  in  the  defendant's  pin.  But  the  claim 
cannot  be  construed  to  cover  any  fastening  but  a  punched- 
out  fastening  or  one  that  is  its  equivalent.  The  defend- 
ant's bent  fastenings  are  not  equivalents.  They  are  an 
invention  in  a  new  directiou,  not  based  on  the  plaintifiPs 
idea.  As  against  the  plaintiff's  pin  the  defendant's  is  pat- 
entable and  not  an  infringement  of  claim  2  of  the  plaintifiPs 
re-issue.  The  radical  difference  between  the  two  pins  is  that 
the  principle  of  fastening  is  different  in  the  two,  the  defend- 
ant's pin  dispeusing  with  all  fastenings  that  are  separate  from 
the  pin  itself  or  that  are  partly  detached  parts  of  the  body,  as 
fastening  devices,  separate  from  the  whole  body.  As  an  inci- 
dent of  the  difference  in  structure,  and  illustrating  it,  no  two 
portions  of  the  defendant's  pin  on  opposite  sides  of  the  shield 
are  directly  opposite  to  each  other.  The  parts  do  not  form 
the  jaws  of  a  clamp,  as  in  the  plaintiff's.  The  shield  is  held 
by  virtue  of  the  strength  of  the  cross  section  of  the  pin  and 
not  by  the  clamping  action  of  two  directly  opposite  parts. 
Tlxe  bill  is  dismissed,  with  costs. 

F.  H.  Betta  and  J.  Van  Santvaord,  for  the  plaintiff. 
J,  P.  FUchy  for  the  defendant. 


820  CONNECTICUT, 


Brett  V.  Qoiotard. 


Lizzie  Bb^tt  and  anotheb,  Adminibtbatobs  of  Hsnbt 

A.  Wells 

vs. 

Waltsb  0.  QuiNTABD,  Adhinibtbatob  OF  Elbbidoe  Brown. 

Claim  6  of  re-iasDed  letters  patent  No.  2,942,  grranted  May  19th,  1868,  to  Elin 
Wella,  administratrix  of  Henry  A.  Wells,  for  "  improyements  in  machinery 
for  makiog  hat  bodies  of  for,"  is  not  infringed  by  the  Gill  machine. 

Under  the  deddons  in  regard  to  this  patent,  in  Burr  t.  Duryee,  (1  WaH,  681,) 
and  in  6W  T.  WOU,  (22  Wall,  1,)  the  WeUs  machine  and  the  Gill  machine 
contain  two  radically  different  rehicles  for  the  transmissien  of  for. 

(Before  Shipmav,  J.,  Connectioiit,  Febraary  18th,  1882.) 

Shipman  J.  This  is  a  bill  in  oqaity,  originally  in  favor  of 
Eliza  Wells,  as  administratrix  of  the  estate  of  Henry  A« 
Wells,  to  restrain  Elbridge  Brown  from  the  infringement,  by 
the  nse  of  the  *^  Gill  machine,"  of  re-issued  letters  patent  of 
May  19th,  1868,  No.  2,94:2,  for  <^  improvements  in  machinery 
for  making  hat  bodies  of  fur,"  commonly  known  as  the  ^^  hat- 
body  patent."  Since  the  commencement  of  the  snit,  the 
plaintiff  and  defendant  have  both  died.  The  present  plaintiffs 
are  the  administratrix  and  the  administrator  of  the  estate  of 
Henry  A.  Wells.  The  defendant  is  the  administrator  of  the 
estate  of  Elbridge  Brown. 

Under  the  decree,  as  directed  to  be  modified,  and  the 
pleadings  in  the  case,  as  directed  to  be  amended,  the  hearing 
was  confined  to  the  question  of  the  infringement  by  the  de- 
fendant's intestate  of  the  fifth  and  sixth  claims  of  re-issue  No. 
2,942.  I  assume  that  the  plaintiffs  proved  the  user  of  the 
Gill  machine  by  the  defendant's  intestate. 

The  state  of  the  art  relating  to  the  manufacture  of  hat 
bodies  of  fur,  the  characteristics  of  the  Wells  invention,  the 
original  Wells  patent  and  its  re-issues,  the  first  four  claims 
of  the  last  re-issue,  the  mode  of  construction  of  his  machine, 


FEBRUARY,  1862.  321 


Brett  V.  Quintard. 


and  the  general  appearance  and  the  different  parts  of  the  Oill 
machine  are  described  either  in  Burr  v.  JDuryee,  (1  W€Ul.j 
581,)  or  in  GiU  v.  Wells,  (22  Wall.,  1.) 

The  manufacture  of  hat  bodies  bj  the  deposition  of  fur 
thrown  from  a  picker  upon  an  exhausted  revolving  cone  was 
old  at  the  date  of  the  Wells  invention.  It  is  said  in  Btitt  v. 
Duryee,  that  "the  aim  and  object  of  both  Wells  and  Boyden 
was  to  construct  an  automatic  machine  which  would  distrib- 
ute the  fur  on  the  cones  so  that  the  bat  might  be  thicker  in 
certain  portions  than  on  others.  This  was  the  defect  of  for- 
mer machines,  which  each  proposed  to  remedy.  *  ♦  *  The 
great  and  peculiar  characteristic  of  the  Wells  invention  is  a 
tunnel  or  chamber,  constructed  as  described.  Instead  of  the 
picker,  he  used  a  rotating  brush  to  distribute  the  fur  from  the 
feed  aprons  and  throw  it  forward  into  the  chamber  which 
conducted  it  to  the  cones.  The  hinged  hood  and  flap  were 
devices  to  distribute  the  material  in  unequal  quantities,  to 
accomplish  the  object  of  making  the  bat  thicker  in  one  part 
than  another."  The  chamber  or  tunnel  is,  as  is  said  by  the 
patentee  in  his  original  patent,  "  gradually  changed  in  form 
towards  the  outlet,  where  it  assumes  a  shape  nearly  corre- 
sponding to  a  vertical  section  passing  through  the  axis  of  the 
cone,  but  narrower,  for  the  purpose  of  concentrating  and 
directing  the  fur  thrown  by  the  brush  on  to  the  cone."  The 
cone  is  in  front  of  the  delivery  aperture  of  the  chamber. 

The  fifth  and  sixth  claims  of  reissue  No.  2,942  are  as 
follows :  "  5.  The  combination  of  the  feed-apron,  on  which 
the  fur  fibres  can  be  placed  in  separate  batches,  each  in 
quantity  sufficient  to  make  one  hat-body,  the  rotating  brush  or 
picker,  substantially  as  described,  the  rotating  pervious  cone, 
provided  with  an  exhausting  mechanism,  and  the  devices  for 
guiding  the  fur  fibres,  substantially  as  described,  the  com^ 
bination  having  the  mode  of  operation  specified,  and  for  the 
purpose  set  forth.  6.  In  combination  with  the  pervious  cone, 
provided  with  an  exhausting  mechanism,  substantially  as  de^ 
scribed,  the  covering  cloth  wet  with  hot  water,  substantially 
as  and  for  the  purpose  specified." 
Vol.  XX.— 21 


822  CONNECTICUT, 


Brett  V.  Qnintard. 


The  fifth  claim  was  for  the  combinatioii  of  the  feed-aproD, 
rotating  brush  or  picker,  rotating  pervions  cone  provided 
with  an  exhausting  mechanism,  and  the  trunk  or  tunnel  with 
its  hinged  hood  and  flap,  made  substantially  as  described.  It 
implies  that  the  sides  of  the  trunk  are  to  be  united  at  their 
edges,  and  that  the  trunk  is  a  unit,  and  not  a  collection  of 
separate  devices ;  but  the  mere  fact  that  the  sides  were  taken 
apart  would  not  defeat  the  charge  of  infringement.  .The  en- 
graving on  page  11  of  the  22d  of  Wallace  shows  the  Gill 
machine,  except  that  the  deflectors,  which,  it  is  said,  regulate 
the  deposit  of  fur  upon  the  band  of  the  hat,  are  not  shown. 
These  deflectors  consist  of  blocks  of  wood  fastened  to  the 
interior  wall  of  the  Gill  case  near  the  bottom,  the  upper  end 
of  the  blocks  being  inwardly  and  downwardly  inclined,  and 
forming,  in  the  language  of  the  plaintiffs'  expert,  ^^  an  annu- 
lar deflector  which  surrounds  the  cone  at  a  prescribed  distance 
from  its  base." 

In  considering  the  question  of  infringement  of  the  flfth 
claim,  first,  upon  the  theory  that  the  different  guiding  de- 
vices of  the  Gill  machine  are  the  four  sides  of  the  Wells 
trunk,  when  taken  apart,  it  cannot  be  denied  that  the  various 
parts  of  the  Gill  mechanism  perform  the  o£Sce  of  guiding 
the  fur  into  the  case  to  a  point  or  points  where  it  can  be  in- 
fluenced by  the  exhaust  mechanism,  and  that  the  deflectors  of 
the  Gill  machine  perform  the  office  of  concentrating  the  fur 
upon  the  different  parts  of  the  cone  where  it  is  desired  that 
the  thicker  portions  of  the  bat  shall  be  formed ;  and  it  may, 
also,  be  conceded,  that  the  extensible  plate  of  the  Gill  ma- 
chine, which  receives  the  fur  from  the  rotating  brush,  performs 
the  office  of  the  top  plate  of  the  Wells  trunk,  with  its  hood, 
and  in  substantially  the  same  way. 

The  plaintiffs  insist  that  the  annular  ledges  near  the  bot- 
tom of  the  Gill  case  are  the  equivalent  of  the  hinged  flap 
upon  the  end  of  the  bottom  plate  of  the  Wells  machine.  This 
similarity  relates  only  to  the  end  of  the  bottom  plate.  It  is 
not  claimed  that  the  Gill  machine  has  that  portion  of  the 


FEBRUARY,  1882.  323 


Brett  V,  Qaintard. 


bottom  plate  of  the  Wells  machine  which  is  between  the 
picker  and  the  hinged  flap. 

It  is  next  claimed  that  the  side  guides  of  the  two  machines 
are  the  same.  The  side  pieces  of  the  Wells  tmnk  converge, 
as  they  approach  the  cone,  both  horizontally  and  vertically, 
and  guide  the  fur  in  a  direction  towards  the  side  of  the  cone ; 
and  it  is  admitted  that  this  convergence  may  be  essential  in 
the  form  in  which  the  Wells  machine  is  organized,  as  shown 
in  the  patent ;  but  it  is  claimed  that  the  side  guides  of  the 
Gill  machine  are  connected  with  the  top  of  the  case,  and  that 
the  case,  with  its  converging  walls,  forms  a  continuation  of 
these  guides  down  to  the  annular  deflector  inside  of  the  case ; 
and  that  the  "  Gill  case ''  is,  in  one  respect,  a  "  tunnel,"  which 
confines  the  fur-bearing  current  and  prevents  the  lateral  es- 
cape of  the  fur  from  the  influence  of  the  exhaust  current, 
and,  in  that  respect,  performs,  as  to  the  vertical  downward 
current  of  fur,  the  function  which  the  side  guides  in  the 
Wells  machine  perform  as  to  the  horizontal  current  of  fur  in 
that  machine. 

The  decisions  of  the  Supreme  Court  in  regard  to  the  Wells 
invention  and  re-issue  restrict  the  invention,  as  secured  by  the 
patent,  within  narrow  limits,  as  compared  with  those  which 
were  placed  upon  the  patent  at  the  earlier  trials.  Bearing  in 
mind  the  limitations  which  were  put  upon  the  re-issue  by  the 
Supreme  Oourt,  and  that  the  characteristic  of  the  invention 
is  the  trunk,  with  its  hood  and  flap,  constructed  substantially 
as  shown  in  the  drawings,  I  am  of  opinion  that  the  attempt  to 
make  the  side  boards  of  the  Gill  trough  and  the  walls  of  the 
Gill  case  to  be  substantially  the  same  thing  with  the  side 
pieces  of  the  Wells  trunk,  cannot  be  successful.  In  view  of 
these  limitations,  the  aid  of  fancy  is  now  required  to  convert 
the  annular  ledges  upon  the  lower  part  of  the  Gill  case  into 
the  hinged  flap  of  the  Wells  trunk.  This  equivalence  cannot 
be  found  except  upon  the  view  which  is  stated  by  the  plaint- 
iffs' expert  to  be  the  one  which  he  entertains,  and  which  is, 
that  the  end  of  the  lower  plate  in  the  Wells  machine  "  is  pre- 
sent in  any  machine  where  there  is  a  guide  so  related  to  the 


824  CONNECTICUT, 


Brett  V.  Qnintard. 


cone  and  to  the  devices  bj  which  the  fur-bearing  currents  are 
set  in  motion  that  it  governs  the  quantity  of  fur  supplied  to 
the  lower  part  of  the  side  of  the  cone,  and  acts  in  conjunction 
with  a  non-fur-bearing  current  which  is  admitted  to  the  per- 
forations at  the  base  of  the  cone." 

Neither  are  the  trough  and  the  walls  of  the  hopper  and 
the  ledges  at  the  bottom  of  the  wall,  taken  together,  the  equiv- 
alent of  the  trunk  of  the  Wells  patent.  It  is  true,  that  each 
structure  accomplishes  the  same  result  of  conveying  fur  to  the 
cone,  so  as  to  make  a  graduated  hat  body ;  but  the  two  con- 
duits are  not  constructed  in  the  same  way.  The  plan  of 
operation  in  these  two  sets  of  devices  is  not  the  same.  In 
the  WoUs  machine,  all  the  sides  of  the  trunk  co-operate  with 
each  other  to  confine  the  fur-bearing  current,  to  guide  it  in  a 
horizontal  direction  towards  the  vertical  section  of  the  cone, 
and  to  deliver  it  in  a  shape  which  conforms  to  that  of  such 
section.  In  the  Gill  machine,  the  bottom  plate  and  the  side 
guides  guide  the  stream  of  fur  to  the  upper  part  of  a  case  or 
hopper  of  large  dimensions,  as  compared  with  the  cone,  and 
then,  the  course  of  the  fur  being  changed  by  the  powerfol 
exhaust  current,  it  falls  upon  all  sides  of  the  cone  which  is 
placed  at  the  bottom  of  the  hopper.  There  is  a  guiding  and 
directing  operation  by  the  plates  and  deflectors  of  each  ma- 
chine, but  the  Wells  machine  gaides  directly  to  the  cone, 
while  in  the  Gill  machine  the  current  of  fur  is  conveyed  in  a 
trough,  open  at  the  top,  to  the  upper  part  of  a  hopper,  and, 
thence,  restrained  and  deflected  by  the  converging  walls  of 
the  hopper,  it  is  drawn  to  the  cone  by  the  exhaust.  These 
differences  are  not  merely  formal,  but  make  two  radically 
different  vehicles  for  the  transmission  of  fur,  and  the  reason 
for  this  dissimilarity  of  construction  is  because  the  respective 
methods  by  which  the  fur  is  driven  to  the  cone  are  not  alike* 
In  each  machine,  the  blast  and  exhaust  currents  co-operate.  It 
is  impossible  for  me  to  say,  in  view  of  the  history  of  the  liti- 
gation in  regard  to  these  two  machines,  that  the  blast  current 
in  the  Gill  machine  does  not  aid  the  exhaust  current  in  direct- 
ing the  fibres  to  the  cone.     But,  I  am  of  opinion,  that,  after 


FEBRUARY,   1882.  825 


Brett  V.  QniDtarcL 


the  fur  is  blown  into  the  hopper,  the  influence  of  the  exhanst 
enrrent,  in  directing  the  fur  to  the  cone,  is  the  predominant 
inflaence,  and  this  difference  in  the  mode  of  operation  of  the 
two  machines  compels  a  difference  of  construction. 

Upon  the  question  of  the  infringement  of  the  sixth  claim, 
there  was  naturally  a  disagreement  between  counsel  upon  the 
question  whether  the  case  was  to  be  entirely  retried.  The 
counsel  for  the  plaintiffs,  supposing  that  the  user,  and  the  man- 
ner of  user,  of  the  wet  cloth  by  the  defendant's  intestate 
had  been  sufficiently  prored  before  Judge  Woodruff,  made 
no  formal  proof  of  the  manner  in  which  the  bat  was  taken 
from  the  cone,  but  simply  introduced  expert  testimony 
that  such  use  was  an  infringement.  I  shall  assume  that  the 
method  of  removing  the  bat  from  the  cone  which  is  described 
by  Professor  Trowbridge,  the  defendant's  expert,  on  page  7 
of  the  printed  testimony,  was  the  method  pursued  by  the 
defendant's  intestate.  If  so,  there  was  infringement  of  the 
sixth  claim.  If  the  defendalit  asserts  that  this  was  not  the 
method  which  was  practiced,  he  will  be  at  liberty,  upon  veri- 
fied petition,  to  open  the  case  and  introduce  proofs  to  that 
effect. 

Let  there  be  a  decree  for  the  plaintiffs,  for  an  accounting 
in  respect  to  the  sixth  claim. 

jE  iT.  Diokersanj  for  the  plaintiffs. 

John  jET.  Perry  and  Senry  T.  Blake^  for  the  defendant. 


826  SOUTHERN   DISTRICT  OP  NEW  YORK, 

Hostetter  v.  Adams. 


Dayid  Hobtetter  and  George  W.  Smith 
Samuel  R.  Adamb  and  others.    In  Equity. 

A  label  on  a  bottle  upheld  as  a  trade-mark,  in  connection  with  the  size,  color, 
shape  and  material  of  the  bottle,  and  held  to  have  been  infringed. 

The  general  effect  to  the  eye  of  an  ordinary  person  aoqaainted  with  the  plaint- 
ifib'  bottle  and  label,  and  never  having  seen  the  defendants'  label,  and  not  ex- 
pecting to  see  it,  was,  on  seeing  the  defendants',  to  be  misled  into  thinking  it 
was  what  he  had  known  as  the  plaintifb*. 

The  differences  which  he  would  see  on  having  his  attention  called  to  them  were 
not  of  such  a  character  as  to  overcome  the  resemblances  to  the  eye  of  a  per- 
son expecting  to  see  only  the  plaintiffs'  bottle  and  label  and  having  no  knowl- 
edge of  another. 

(Before  Blatohtou),  J.,  Southern  District  of  New  York,  February  18th,  1882.) 

Blatohford,  J.  The  bill  alleges  that  the  plaintiffs  are, 
and  for  27  years  or  more  have  been,  partners,  doing  business 
as  Hostetter  &  Smith,  and  during  that  time  engaged  in 
making  and  selling  a  medicine  known  as  ^^  Hostetter's  Cele- 
brated Stomach  Bitters  '' ;  that  they  have  the  sole  ownership 
of  the  good  will,  labels  or  trade-marks  of  said  bitters ;  that 
said  bitters  have  acquired  a  reputation  as  a  safe  and  valuable 
medicine ;  that,  in  order  to  designate  said  bitters  as  of  their  own 
compounding,  and  as  genuine,  and  to  prevent  fraud  by  having 
spurious  bitters  sold  as  and  for  the  genuine,  they  from  the  b^in- 
ning  devised  certain  labels,  tokens  or  trade-marks,  and  a  cer- 
tain manner  of  putting  up  said  bitters,  placing  them  upon  the 
market  in  a  style  different  from  that  in  use  by  manufacturers 
or  dealers  in  like  articles,  and  that  they  have  adhered  to  said 
style  up  to  the  present  time ;  that  said  bitters  are  placed  by 
them  in  square  bottles,  of  uniform  size,  known  as  No.  6,  con- 
taining about  one  and  a-half  pints,  and  having  blown  therein 
the  name  '^  Dr.  J.  Hostetter's  Stomach  Bitters,"  and  upon 


FEBRUARY,   1882.  32T 


Hofltetter  v.  Adams. 


these  bottles  they  cause  to  be  pasted  labels  or  trade-marks,  and 
the  bottles  then  have  revenne  stamps  put  on  them,  and  are 
packed  in  sqnare  boxes,  each  box  containing  a  dozen  bottles, 
and  so  boxed  are  sold  to  dealers;  that  the  defendants  are 
making  and  selling  a  spurious  and  inferior  article  of  bitters, 
prepared  in  imitation  of  and  intended  to  be  sold  as  and  for  the 
genuine  Hostetter's  Celebrated  Stomach  Bitters  of  the  plaint- 
iff' own  manufacture,  and  calculated  to  deceive  the  public  and 
consumers,  and  to  enable  the  defendants  to  reap  the  profits  of  the 
reputation  of  the  genuine  bitters,  and  to  injure  the  reputation 
and  sale  of  them ;  that,  with  like  intent,  the  defendants  have 
printed  a  false  label  or  trade-mark,  in  imitation  of,  and  closely 
resembling,  one  of  the  plaintiffs'  labels,  said  false  label  being 
well  calculated  to  mislead  and  deceive  customers  and  con- 
sumers of  the  genuine  bitters ;  and  that  the  defendants  use 
the  bottles  of  the  plaintiffs,  from  which  the  genuine  bitters 
have  been  used,  and  pack  them  in  the  same  manner,  in  cases 
of  the  same  shape,  one  dozen  bottles  in  each  case,  in  which 
manner  they  are  sold.  The  bill  prays  for  an  injunction  re- 
straining the  defendants  from  using  said  spurious  label  and 
for  other  proper  relief.  The  case  has  been  heard  on  pleadings 
and  proofs. 

The  plaintiffs'  bottle  is  of  dark  glass,  and  has  a  four-sided 
body,  the  sides  being  of  equal  size  and  the  faces  rectangular. 
On  one  side  is  an  engraved  label  with  a  white  body.  This 
label  is  substantially  as  long  and  as  wide  as  the  face  of  the 
bottle.  Kear  the  top,  in  four  lines,  in  black,  are  the  words, 
^*  Hostetter's  Celebrated  Stomach  Bitters,"  one  word  in  each 
line.  The  third  and  fourth  lines  have  letters  of  the  same  size 
and  character,  larger  than  the  letters  in  the  first  and  second 
lines.  The  letters  in  the  first  line  are  larger  than  those  in  the 
second  line,  and  of  a  different  character  from  them  and  from 
those  in  the  third  and  fourth  lines.  The  letters  in  the  first 
line  and  those  in  the  fourth  line  each  of  them  form  a  curve, 
the  convexity  of  which  is  upward.  The  second  and  the  third 
lines  are  horizontal.  The  letters  in  the  first,  third  and  fourth 
lines  are  shaded.    Underneath  the  fourth  line  is  a  horse  without 


328  SOUTHERN   DISTRICT  OF  NEW  YORE, 

Hostetter  v,  Adama. 

hamees,  yaulting  in  the  air,  towards  the  left,  with  his  hind 
feet  on  the  ground  and  his  fore  feet  in  the  air,  mounted  on 
his  bare-back  by  a  naked  man,  with  a  helmet  on,  and  a  flying 
robe  over  his  right  arm,  and  in  his  two  hands  a  spear  witli 
which  he  is  striking  at  a  dragon  below  him,  on  his  left  The 
open  mouth  of  the  dragon  is  near  the  left  knee  of  the  rider 
and  the  point  of  the  spear  is  just  above  that  knee.  The  body 
of  the  dragon  passes  under  the  horse  and  his  tail  comes  around 
the  right  hind  leg  of  the  horse  and  nearly  reaches  the  body 
again.  In  a  fore  paw  of  the  dragon  near  the  end  of  his  tail 
appears  to  be  a  piece  broken  off  from  the  head  of  the  spear. 
The  horse  has  a  flying  mane  and  a  sweeping  taiL  The  horse, 
man  and  dragon  are  dark  on  a  white  ground.  Below  them  is 
a  shield  commencing  at  a  little  below  the  middle  of  the  length 
of  the  label.  The  shield  has  a  dark  ground.  On  it  are  letters 
printed  in  white.  There  are  16  lines  of  letters.  Lines  L,  2, 
4,  7,  8,  9, 10,  12, 13, 14  and  15  are  the  same  size  of  type. 
The  reading  of  the  16  lines,  divided  into  lines,  is  this :  1  ^^  The 
best  evidence  of  the  merit  of  an  article  is  "  2  ^*  the  disposition  to 
produce  counterfeits  "  3  *'^  and  we  regard  it  as ''  4  ^^  the  strongest 
testimony  to  the  value  of  "  6  "  Hostetter's  "  6  "  Celebrated 
Stomach  Bitters"  7  ^^  that  attempts  of  that  description  have  " 
8  "been  frequent.  A  due  consideration  of  9  "  the  public 
welfare  has  induced  us  to  "  10  ^'  obtain  a  fine  engraving  of 
which  "  11  "  this  is  a  fac  simile  "  12  '^  and  to  append  our  note 
of"  18  "  hand  which  cannot  be  "  14  "  counterfeited  without" 
15  "  the  perpetration  "  16  "  of  a  felony."  The  word  "  and  " 
and  the  word  ^'  as  "  in  line  3  are  smaller  than  the  other  letters. 
The  words  ^'  we  regard  it "  in  line  3,  and  also  lines  5, 6, 11  and 
16,  are  on  a  black  ground,  darker  than  the  rest  of  the  ground, 
aud  the  letters  are  somewhat  larger  than  the  rest.  All  the 
letters  in  the  shield  are  capitals.  The  line  of  the  top  of  the 
shield  consists  of  two  curves  of  equal  length  starting  from  an 
apex  in  the  middle  of  the  width  and  concave  upwards,  and 
having  a  imiform  sweep,  and  alike,  and  rising  each  to  a  point 
as  high  as  the  starting  point,  and  each  then  falling  off  by  a  short 
concave  upwards  curve  to  a  point.    Then  the  two  sides  of  the 


FEBRUARY,   1882.  329 


Hostetter  v.  Adams. 


shield  sweep  around  downward  by  equal  enrves  to  the  centre 
of  the  width  of  the  label  and  the  lower  point  of  the  Bhield, 
completing  the  outline  of  the  shield.  The  space  on  each  side 
between  the  outer  edge  of  the  shield  and  a  border  around  the 
label  and  a  horizontal  line  running  across  at  the  lower  point 
of  the  shield  is  filled  in  with  engraved  work,  of  waving  ir- 
regular figures.  Underneath  the  shield,  in  a  parallelogram,  is 
a  promissory  note  for  one  cent,  payable  to  bearer,  on  demand, 
signed  ^^  Hostetter  &  Smith.''  In  the  middle  of  the  width  of 
the  upper  part  of  the  note  is  a  small  circle,  having  in  it  the 
head  and  bust  of  an  aged  man  with  a  long  white  beard. 
There  is  a  border  around  the  whole  label. 

The  defendants'  bottle  is  of  the  same  size,  color,  shape  and 
material  as  the  plaintiffs',  and  many  of  the  defendants'  bottles 
are  old  bottles  of  the  plaintififs'  with  the  name  ^'  Hostetter " 
blown  in  the  glass.  The  side  which  has  that  name  on  it  is 
covered  by  the  defendants'  label.  The  defendants  buy  such 
old  bottles  when  empty,  which  the  plaintiffs  have  sold  in  the 
market  with  bitters  in.  On  one  side  is  an  engraved  label  with 
a  white  body.  This  label  is  substantially  as  long  and  as  wide 
as  the  face  of  the  bottle,  and  is  of  the  same  size  as  the 
plaintiffs'  label.  Near  the  top,  in  four  lines,  in  black,  are  the 
words  "Clayton  &  Russell's  Celebrated  Stomach  Bitters," 
one  word  in  each  line.  The  third  and  fourth  lines  have  letters 
of  the  same  size  and  character,  larger  than  the  letters  in  the 
first  and  second  lines.  The  letters  in  the  first  line  are  larger 
than  those  in  the  second  line,  and  of  a  different  character  from 
them  and  from  those  in  the  third  and  fourth  lines.  The  let- 
ters in  the  first  line  and  those  in  the  fourth  line  each  of  them 
form  a  curve,  the  convexity  of  which  is  upward.  The  second 
and  third  lines  are  horizontal.  The  letters  in  the  first,  third 
and  fourth  lines  are  shaded.  The  appearance  presented  by 
those  four  lines  as  to  the  size  and  character  and  shading  of 
the  letters  in  the  corresponding  lines,  and  as  to  ornamentation 
in  flourishes  and  dashes,  is  identical  with  the  appearance  pre- 
sented by  the  corresponding  four  lines  in  the  plaintiffs'  label 
as  to  the  same  particulars,  except  the  difference  resulting  from 


830  SOUTHERN  DISTRICT  OP  NEW  YORK, 

Hofftetter  v.  Adams. 

stibBtituting  the  words  *•  Clayton  &  Russell's  "  for  the  word 
"  Hostetter's."  Underneath  the  fourth  line  is  a  horse,  with 
harness  and  caparison  and  saddle  upon  him,  vaulting  in  the  air, 
towards  the  right,  with  his  hind  feet  on  the  ground  and  his 
fore  feet  in  the  air,  mounted  by  a  man  with  clothing  on  his 
trunk  and  feet,  and  a  helmet  with  wings  on  his  head,  and  in 
his  right  hand  a  spear  with  which  he  is  striking  at  a  scorpion 
on  the  ground  in  front  of  him.  The  horse  has  a  sweeping 
tail.  The  horse,  man  and  scorpion  are  dark  on  a  white  ground. 
They  and  the  four  lines  above  them  occupy  respectively  the 
same  space  up  and  down  as  the  corresponding  parts  in  the 
plaintiffs'  label.  Below  them,  commencing  at  the  same  point 
as  in  the  plaintiff's,  is  a  shield,  which  has  a  dark  ground,  with 
letters  printed  on  it  in  white.  There  are  15  lines.  The  lines 
are  all  the  same  size  of  type,  and  the  size  of  type  in  line  1  in 
the  plaintiffs'.  The  reading  of  the  15  lines,  divided  into 
lines,  is  this :  1  "  The  bitters  of  Clayton  &  Russell  will  be  " 
2  "  found  a  highly  aromatic  liquid  and  en- "  3  *'  tirely  free 
from  injurious  substances."  4  ^'  One  wineglassful  taken  three 
times  "  6  "  a  day  before  meals  will  be  a  swift "  6  "  and  certain 
cure  for  dyspepsia  a"  7  "mild  and  safe  invigorant  for 
delica--'  8  "te  females  a  good  tonic  preparation"  9  "for 
ordinary  family  purposes,  a  "  10  "  powerful  recuperant  after 
the  "  11  "  frame  has  been  reduced  by  "  12  "  sickness  an  ex- 
cellent app-"  13  "etizer  and  an  agreeable"  14  "and 
wholesome  "  15  "  stimulant."  All  the  letters  in  the  shield  are 
capitals.  The  line  of  the  top  of  the  shield  is  made  up  of 
four  curves  and  corresponds  in  all  respects  with  the  line  of 
the  top  of  the  shield  in  the  plaintiffs'.  The  shield  is  the  same 
size  and  shape  as  the  plaintiffs'  and  has  a  corresponding  space 
on  each  side,  filled  in  with  engraved  work,  waving  in  charac- 
ter, though  larger  in  detail  than  in  the  plainti&'.  The  lower 
point  of  the  shield  comes  down  to  the  same  point  as  in  the 
plaintiffs'.  Underneath  the  shield,  in  a  parallelogram,  are  the 
words  :  "  Venders  do  not  require  a  T«iquor  Dealer's  License, 
being  a  Medicinal  Compound."  There  is  a  border  around  the 
whole  label,  of  about  the  same  width  as  in  the  plaintiffs', 


FEBRUARY,   1882.  381 


HoBtetter  v.  Adame. 


though  of  a  different  character.  There  is  a  narrow  space  of 
white  in  the  defendants'  all  aronnd  the  lower  parallelogram, 
and  the  side  lines  of  white  are  carried  np  on  each  side  to  the 
top  of  the  shield,  and  then  continue  down  aronnd  the  outer 
edges  of  the  shield,  differing  in  these  respects  from  the 
plaintiffs'.  The  words  beginning  with  "  One  wineglassful " 
to  the  end  at  *'  stimulant "  are  found  in  a  label  of  gold  letters 
printed  on  a  bronzed  ground,  which  is  on  another  face  of  the 
plaintiffs'  bottle. 

It  is  shown  that  there  are  no  such  persons  as  Clayton  & 
Bussell ;  and  that  the  defendants'  label  was  prepared  from 
the  plaintiffs',  by  intentionally  making  the  parts  in  it  which 
are  like  corresponding  parts  in  the  plaintiffs'  to  be  so  like.  It 
is  plain  that  it  is  a  copy  from  the  plaintiffs'  by  design.  Varia- 
tions are  made  of  such  a  character  as  to  be  capable  of  discern- 
ment and  description.  But  the  general  effect  to  the  eye  of  an 
ordinary  person  acquainted  with  the  plaintiffs'  bottle  and  label, 
and  never  having  seen  the  defendants'  label  and  not  expect- 
ing to  see  it,  must  be,  on  seeing  the  defendants',  to  be  misled 
into  thinking  it  is  what  he  has  known  as  the  plaintiffs'.  The 
size,  color  and  shape  of  the  bottle,  the  four  lines  of  letters 
at  the  top  of  the  label  being  as  to  the  three  lower  ones 
identical  and  as  to  the  upper  one  differing  only  in  the  name, 
the  general  effect  of  the  horse  and  his  rider,  the  size  and  shape 
and  color  of  the  shield,  the  white  letters  in  it  and  their  size 
and  arrangement  in  lines  contracting  in  length  towards  the 
lower  point  of  the  shield,  the  whole  in  black  on  a  white 
ground,  an(}  the  border,  give  an  aflirmative  resemblance  calcu- 
lated to  deceive  an  ordinary  observer  and  purchaser,  having 
no  cause  to  use  more  than  ordinary  caution,  and  make  him  be- 
lieve he  has  before  him  something  which  he  has  before  seen 
on  the  plaintiffs'  bottle  and  expects  to  find  on  the  bottle  he 
is  looking  at.  The  differences  which  he  would  see  on  having 
his  attention  called  to  them  are  not  of  such  a  character  as  to 
overcome  the  resemblances  to  the  eye  of  a  person  expecting 
to  see  only  the  plaintiffs'  bottle  and  label  and  having  no 


832  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Hostetter  v,  Adams. 

knowledge  of  another.  The  testimony  to  the  above  effect  is 
of  great  strength. 

The  plaintiffs  have  no  exclnsive  right  to  make  the  bitters. 
Their  trade-mark  is  not  in  the  words  ^^  Celebrated  Stomach 
Bitters,"  nor  have  they  any  exdnsive  right  to  a  bottle  of  the 
size,  shape  and  color  of  the  one  which  they  nse.  Bnt  the  en- 
tire style  of  their  bottle  and  label,  of  which  those  words  form 
a  part,  is,  in  connection  with  the  other  particulars  above  men- 
tioned in  which  the  defendants'  bottle  and  label  are  like  theirs, 
the  mark  of  their  trade.  (  Williams  v.  Johnson  ^  2  Bosworthy 
1 ;  McLean  v.  Fleming^  6  Otto^  246 ;  Frese  v.  Bachofj  14 
Blatchf.  0.  C.  jff.,  482 ;  Colman  v.  Crvmp,  70  N.  T.,  673 ; 
Morgan^ s  Sons  Co.  v.  TroxeU^  23  JTun,  632,  and  Goafs  Man- 
ualy  Case  674 ;  Sawyer  v.  Horny  Id.y  Case  667 ;  Mitchdl  v. 
Benryy  15  Ch.  Div.,  181.) 

The  evidence  as  to  transactions  after  the  filing  of  the  bill 
is  admissible.  It  comes  in  not  to  show  infringement  but  to 
characterize  the  practical  use  of  the  subject-matter  of  the  suit 
The  objection  as  to  the  recalling  of  witnesses  is  overruled. 

The  plaintiffs  are  entitled  to  an  injunction  and  to  a  refer- 
ence to  a  master  to  take  an  account  of  profits  and  to  the  costs 
of  the  suit. 

A.  H.  Clarke^  W.  W.  Goodrich  and  ./.  Watsonj  for  the 
plaintiffs. 

W.  S.  Amoux  and  A.  Duicher^  for  the  defendants. 


FEBRUABT,  1882.  833 


Ires  <fc  Miller  v.  The  Hartford  Spring  and  Axle  Co. 


Ives  &  Milleb 

vs. 

This  Habtfobd  SpBiNa  akd  Axle  Oompant.    In  Equttt. 

Be488Qed  letters  patent^  No.  8,179,  granted  liay  20th,  1B19,  to  lyes  A  Miller,  aa 
aaaignees  of  Welcome  C.  Tucker,  for  an  improrement  in  wagon  haba,  the 
original  patent  having  been  granted  September  10th,  1867,  and  letters  patent 
granted  te  Willis  E.  Miller,  Febmary  12th,  1878,  for  an  improyement  in  car- 
riage axles,  are  not  infringed  by  carriage  axles  made  under  letters  patent 
granted  to  Ellsworth  D.  Ires,  June  10th,  1879,  and  NoTember  2d,  1880. 

Unless  the  general  language  of  said  re-issue  is  construed  in  accordance  with  the 
sUte  of  the  art  and  with  the  limitations  of  the  original  patent  in  regard  to  the 
form  of  the  flanges,  the  re-issue  is  broader  than  the  inyention,  and  includes 
deyices  different  from  those  which  were  intended  to  be  the  subject  of  the 
original  patent 

(Before  Sbcpman,  J.,  Connecticut,  February  18th,  1882.) 

Shipman,  J.  This  is  a  bill  in  equity  to  restrain  the  defend- 
ant from  the  alleged  infringement  of  re-issaed  letters  patent, 
No.  8,179,  issued  May  20th,  1879,  to  the  plaintijSs,  as  assignees 
of  Welcome  0.  Tucker,  for  an  improvement  in  wagon  hubs, 
and  also  from  the  infringement  of  letters  patent  granted  to 
Willis  E.  Miller,  February  12th,  1878,  for  an  improvement  in 
carriage  axles.  The  original  Tucker  patent  was  issued  on 
September  10th,  1867.  The  defendant  is  manufacturing  car- 
riage axles  under  letters  patent  granted  to  Ellsworth  D.  Ives 
on  June  10th,  1879,  and  on  November  2d,  1880. 

The  invention  of  Tucker,  as  secured  by  his  original  pat- 
ent, related  to  an  improvement  in  wagon  hubs  made  of  iron 
or  other  suitable  metal.  It  consisted,  in  the  language  of  the 
specification,  "  in  connecting  the  hub  with  the  axle  by  cup 
flanges,  and  securing  the  hub  on  the  axle  with  a  cup-flanged  nut, 
in  such  manner  that  the  bearing  of  the  axle  shall  be  entirely 
closed  at  both  ends,  to  retain  the  oil  and  exclude  dust  and 
dirt."    The  improvement  also  included  ^^  an  arrangement  of 


334  CONNECTICUT, 


Ives  A  MUler  v.  The  Hartford  Spring  and  Axle  Co. 


adjustable  collars  for  secaring  the  wheel  to  the  hub  by  a  firm 
attachment."  The  conBtmction  of  the  flanges  upon  the  hnb 
and  axle  is  described  with  sufficient  accaracj  in  the  second 
claim  of  the  re-issue,  which  is  hereafter  quoted.  The  claims 
were  as  follows :  ^^  1.  The  cup  flanges  c  c,  on  the  back  and 
front  ends  of  the  wagon  hub  B,  upon  which  are  fitted  the  cor- 
responding fianges  a  on  the  axle  A,  and  n  on  the  nut  d,  as 
herein  shown  and  described.  2.  In  combination  with  the 
above  I  claim  the  stationary  collar  m  and  the  adjustable  col- 
lar mf  on  the  hub  B,  combined  and  arranged  as  and  for  the 
purpose  specified."  The  fianges  and  the  collars  were  dis- 
tinct improvements.  It  was  feared  that  the  language  of  the 
first  claim  limited  the  cup  flanges  to  those  on  the  hub  B,  and 
thus  improperly  limited  the  invention  to  a  combination  of 
flanges  and  collars.  A  re-issue  was  obtained,  in  which  the 
claims  were  as  follows :  ^^  1.  The  axle-arm,  on  which  the 
wheel  takes  its  bearing,  with  the  shoulder  at  its  inner  end, 
and  the  flange  projecting  forward  from  the  shoulder  parallel 
with  and  concentric  to  the  arm,  all  made  as  a  part  of  the  axle, 
combined  with  the  box  fitting  said  arm  and  constructed  to 
enter  beneath  said  fiange,  and  with  a  concentric  recess  corre- 
sponding to  and  so  as  to  inclose  said  fiange  at  the  shoulder  of  the 
axle-arm,  substantially  as  described.  2.  The  combination  of. 
the  box  constructed  with  a  cup-shaped  fiange  at  the  outer  and 
inner  ends,  the  axle  with  a  cup-shaped  fiange  at  the  shoulder, 
and  so  as  to  be  inclosed  by  the  cup-shaped  fiange  on  the  box, 
the  nut  constructed  with  a  cup-shaped  fiange,  the  correspond- 
ing cup-shaped  fiange  on  the  box,  inclosing  the  fiange  of  the 
nut,  a  stationary  collar,  m,  and  adjustable  collar,  m,  and  so  as 
to  inclose  the  wood  centre  of  the  wheel,  substantially  as  de- 
scribed."   Infringement  of  the  first  claim  only  is  alleged. 

It  will  be  perceived,  that,  in  the  claims  of  the  re-issue,  the 
word  "  box  "  is  substituted  for  the  word  "  hub  "  in  the  claims  of 
the  original  patent.  Axle-boxes  are  '^  bushings  for  hubs.  Their 
duty  is  to  take  the  wear  incident  to  revolving  on  the  spindle 
of  the  axle."  {Knighfs  Mechcmical  Dictionary,)  The 
original  specification  described  an  iron  bub.    The  plaintiffs 


FEBRUARY,   1882.  885 


Ives  A  Miller  o.  The  Hartford  Spring  and  Axle  Go. 

now  desire  to  avail  themselves  of  the  distinction  between  hub 
and  box,  and  to  claim  that  the  Tucker  inveution  consisted,  in 
part,  in  a  peculiar  construction  of  box,  as  distinguished  from 
the  same  construction  in  a  wooden  hub  inclosing  a  straight 
iron  tube  or  box.  In  my  opinion,  the  re-issue  does  not  make 
a  box,  as  distinguished  from  a  hub,  a  characteristic  feature  of 
the  invention. 

In  the  next  place,  the  flanges  at  the  outer  end  of  the  hub 
disappear  from  the  first  claim  of  the  re-issue.  It  is  said  by 
the  plaintiffs  that  the  application  of  the  flanges  to  both  ends 
of  the  hub  is  a  mere  duplication  of  the  invention,  and  that 
this  mode  of  construction,  while  practicable  when  applied  to 
a  hub  which  had  adjustable  collars,  could  not  be  used  in  con- 
nection with  the  ordinary  methods  of  fastening  the  wheel  to 
the  hub.  I  assume  that  this  change  does  not  introduce  the 
device  of  new  matter  into  the  re-issue. 

It  will  be  perceived,  from  this  statement,  that  the  inven- 
tion, as  secured  by  the  original  patent,  was  a  narrow  one.  An 
examination  into  the  state  of  the  art  shows  that  the  actual  in- 
vention was  also  a  very  narrow  one,  and  that,  unless  the  gen- 
eral language  of  the  re-issue  is  construed  in  accordance  with 
the  state  of  the  art  and  with  the  limitations  of  the  original 
patent  in  regard  to  the  form  of  the  flanges,  the  re-issue  will 
be  broader  than  the  invention,  and  will  include  devices  quite 
different  from  those  which  were  intended  to  be  the  subject  of 
the  original  patent. 

Interfitting  or  intermeshing  flanges  and  recesses  upon  an 
axle  and  hub  were  uot  only  old,  but  the  flanges  and  recesses  of 
Tucker  were  old  at  the  date  of  his  invention.  They  are 
found  in  the  patent  to  R.  W.  McClelland,  of  October  12th, 
1858;  but,  in  his  axle,  the  wheel  bears  wholly  upon  the 
flanges  at  each  end  of  the  hub,  whereas,  in  the  Tucker  axle, 
*'  the  box  flts  the  axle-arm  throughout  its  entire  length." 

In  the  patent  to  John  W.  Crannell,  of  July  15th,  1862, 
the  flanges  and  recesses  are  the  same  as  in  the  Tucker  patent. 
The  differences  in  construction  are  that  the  recess,  which  in 
the  Tucker  device  is  at  the  end  of  the  so-called  "  box,"  is,  in 


886  CONNECTICUT, 


lyes  A  Miller  v.  The  Hartford  Spring  and  Axle  Co. 


the  Crannell  axle,  on  the  end  of  the  wooden  hub  ontside  of 
the  iron  lining,  and  the  flanged  collar  is  not  an  integral  part 
of  the  axle,  bnt  is  secared  to  it.  In  the  Tucker  re-issne,  the 
latter  difference  is  pointed  ont  in  the  clause,  (referring  to  the 
arm,  shoulder  and  flange,)  ^^  all  made  as  a  part  of  the  axle." 

The  inyention  of  Tucker,  so  far  as  it  relates  to  the  flanges, 
consisted  in  putting  the  cup-shaped  recess  of  Crannell  upon 
an  iron  hub  or  box,  instead  of  upon  a  wooden  hub,  and  in 
making  the  axle  arm  and  its  flange  in  one  piece  instead  of  in 
separate  pieces.  The  character  and  extent  of  the  invention 
is  dearly  shown  in  the  following  extract  from  the  decision  of 
the  Acting  Commissioner  of  Patents  upon  the  plaintiffs'  appeal 
from  the  Board  of  Examiners'  rejection  of  the  application  for 
a  re-issue,  ^^Applicant's  claims  are  as  follows:  I^zrgt.  The 
combination  of  the  axle-arm  on  which  the  wheel  takes  its 
bearing,  shoulder  at  the  inner  end  of  said  arm,  a  flange  pro- 
jecting forward  from  the  shoulder,  parallel  with  and  concen- 
tric to  the  axle,  a  box  fitting  said  arm  and  extending  beneath 
said  flange  at  the  shoulder,  and  a  concentric  recess  in  the  box 
to  receive  said  flange,  formed  by  a  concentric  flange  extend- 
ing from  the  rear  end  of  the  box,  over,  and  so  as  to  inclose, 
said  flange,  at  the  shoulder  of  the  axle-arm,  substantially  as 
described.  *  *  ♦  One  of  the  references,  the  patent  of 
John  W.  Crannell,  of  July  15th,  1862,  for  an  improved  axle, 
shows  and  describes  a  structure  so  nearly  like  applicant's  in 
form  and  operation,  as  covered  by  his  first  and  second  claims, 
that  the  differences  can  be  described  by  the  mention  alone  of 
the  superiority  of  applicant's  device  in  the  matter  of  mechani- 
cal construction.  As  the  Board  of  £xaminers-in-Chief  in 
their  decision  remark,  ^  Crannell's '  patent  is  much  the  closer 
anticipation,  having  the  same  configuration  of  flanges  for  the 
same  precautionary  purpose.  Applicant's  device  is,  however, 
mechanically  superior  as  a  whole,  in  that  his  hub,  axle, 
shoulder  and  nut,  with  their  entering  flanges,  are  all  made  of 
similar  material,  admitting  of  machine  fitting,  and  thus  ena- 
bling the  present  application  to  dispense  with  the  packing 
which  Crannell,  with  his  fitting  of  wood  upon  iron,  is  obliged 
to  resort  to.    If  these  superior  mechanical  qualities  constitute 


FEBRUARY,   1882.  337 


Ivea  A  Miller  v.  The  Hartford  Spring  aod  Axle  Co. 

a  patentable  invention,  it  cannot  receive  protection  by  the 
present  first  and  second  claims,  which  do  not  rest  upon  those 
qualities,  bnt  cover  a  structure  not  only  like  CranneU's  but 
which,  in  terms,  also  include  the  patent  of  McClelland,  No. 
21,766,  of  October  12th,  1858."  The  first  claim  of  the  re- 
issue was  thereupon  substituted  for  the  rejected  first  claim, 
and  the  application  was  granted. 

The  plaintiffs'  re-issue  rests  upon  the  superior  mechanical 
method  in  which  the  patentee  constructed  CranneU's  hub,  axle 
and  shoulder,  with  their  fianges  and  recesses.  It  is  limited  to 
the  cup-shaped  flanges  and  recesses  of  the  original  patent,  and 
cannot  be  enlarged  to  take  in  any  shape  of  concentric  flange 
on  the  shoulder,  and  a  correspondingly  shaped  concentric  re- 
cess in  the  hub,  to  inclose  the  flange,  although  the  device  has 
all  the  other  requisites  described  in  the  first  claim. 

The  defendant's  device  has  a  conical  or  concave  recess  in 
the  shoulder  or  collar  on  the  axle  and  a  corresponding  convex 
or  conical  projection  on  the  box  or  hub.  Its  flanges  and  re- 
cesses are  not  cup-shaped.  The  Crannell  intermeshing 
flanges  contain  four  angles.  The  defendant's  device  contains 
but  two,  and  is  a  simpler  piece  of  mechanism. 

The  Miller  patent  is  for  an  improvement  on  the  Tucker 
axle.  The  claim  is  for  ^^  the  combination  of  an  axle-arm  the 
collar  of  which  is  constructed  with  a  flange  projecting  forward 
parallel  with  the  axis,  and  a  box'  constructed  with  a  groove 
corresponding  to  said  flange,  and  so  as  to  extend  over  the  said 
collar,  with  an  annular  recess  between  the  said  collar  and  the 
box,  substantially  as  described."  The  defendant  has  a  groove 
between  the  collar  and  the  box.  If  the  Miller  claim  is  to  be 
construed  as  the  addition  of  the  annular  recess  to  the  Tucker 
device  there  is  no  infringement.  If  the  claim  is  for  the  de- 
vice as  broadly  as  it  is  described,  the  invention  was  antici- 
pated by  the  McClelland  axle. 

Let  the  bill  be  dismissed. 


John  Kimberly  Beach^  for  the  plaintiffs. 
William  E.  Simonda^  for  the  defendant. 


Vol.  XX.— 22 


888  NORTHERN  DISTRICT  OF  NEW  YORK, 

Robinson  v.  The  New  York  Central  and  Hudson  Riyer  Ridlroad  Company. 


Thomas  Eobinson 


vs. 


The  New  Yobk  Central  and  Hudson  Eiveb  Railroad 

Company. 

R.,  a  passenger  on  a  railroad  car,  was  iDJored  by  the  explosion  of  the  boUer  of 
the  locomotlTe  used  to  pnsh  the  train,  and  saed  the  railroad  company  for 
negligence.  At  the  trial  he  rested  by  proving  the  explosion.  The  em- 
ployees of  the  defendant  testified  to  dne  care  in  managing  the  boiler  at  the 
time  of  the  explosion,  that  the  boiler  bad  recently  been  repaired  and  tested 
and  found  safe,  and  that  the  explosion  resulted  from  a  hidden  flaw  in  the  iron 
of  the  boiler,  which  could  not  be  seen.  The  jury  were  instructed  that  they 
might  infer  negligence,  upon  the  theory  that  the  explosion  would  not  haye 
taken  place  unless  the  boiler  had  been  in  a  defective  condition,  or  unless  there 
had  been  some  omiasiob  or  mismanagement  on  the  part  of  those  in  charge  of 
it  at  the  time :  Held,  no  error. 

The  jury  were  also  instructed,  that  it  was  incumbent  on  the  defendant,  as 
a  passenger  carrier,  to  see  to  it,  by  every  test  recognized  as  necessary  by  ex- 
perts, that  the  boiler  was  in  a  safe  condition,  but  that  it  was  not  liable  for  a 
defect  which  could  not  be  discovered  by  such  tests :  Held,  no  error. 

As  the  testimony  to  rebut  the  presumption  of  negligence  proceeded  from  per- 
sons who  would  be  guilty  of  a  criminal  fault  unless  they  vindicated  them- 
selves from  such  presumption,  a  question  of  credibility  was  presented  for  the 
jury,  and  they  might  disregard  such  testimony. 

(Before  Wallaob,  J.,  Northern  District  of  New  York,  February  ISth,  1882.) 

"Wallace,  J.  The  plaintiff,  while  upon  one  of  the  defend- 
ant's cars,  as  a  passenger,  in  June,  1878,  was  injured  by  the 
explosion  of  the  boiler  of  the  defendant's  locomotive,  which 
was  being  used  to  push  the  train  out  of  the  yard,  and 
brought  this  action  on  the  ground  of  negligence,  to  recover 
for  his  injuries.  Upon  the  issue  of  negligence  the  plaintiff 
rested  his  case  by  proving  the  explosion.  The  defendant  pro- 
duced its  employees,  who  testified  to  the  exercise  of  due  care 
in  the  management  of  the  boiler  at  the  time  of  the  explosion, 
and  who  also  testified  that  the  boiler  had  been  recently  over- 


FEBRUARY,   1882.  339 


Robinson  v.  The  New  York  Central  and  Hndson  River  Railroad  Company. 

hauled,  repaired  and  tested  and  fonnd  safe,  and  that  the  ex- 
plosion resulted  from  a  hidden  flaw  in  the  iron  of  the  boiler, 
which  could  not  be  seen. 

The  jury  were  instructed,  that  they  might  infer  negli- 
gence, upon  the  theory  that  the  explosion  would  not  have 
taken  place  unless  the  boiler  had  been  in  a  defective  condi- 
tion, or  unless  there  had  been  some  omission  or  mismanage- 
ment on  the  part  of  those  in  charge  of  it  at  the  time.  They 
were  also  instructed,  that  it  Was  incumbent  upon  the  defend- 
ant, as  a  passenger  carrier,  to  see  to  it  by  every  test  recognized 
as  necessary  by  experts,  that  the  boiler  was  in  a  safe  condition, 
but  that  the  defendant  was  not  liable  for  a  defect  which  could 
not  be  discovered  by  such  tests. 

The  first  instruction  is  not  criticised.  It  is  elementary, 
that,  in  actions  for  negligence,  if  the  plaintiff  proves  he  has 
been  injured  by  an  act  of  the  defendant,  of  such  a  nature 
that,  in  similar  cases,  where  due  care  .has  been  taken,  no 
injury  is  known  to  ensue,  he  raises  a  presumption  against  the 
defendant  which  the  latter  must  rebut. 

The  other  instructions  were  strictly  correct.  The  jury 
were  not  told  that  the  defendant  was  required  to  adopt  every 
test  known  to  experts  to  ascertain  the  safe  condition  of  the 
boiler.  If  this  instruction  had  been  given,  according  to  some 
of  the  authorities,  it  would  not  have  been  erroneous.  It  has 
been  frequently  declared  that  the  carrier  of  passengers  con- 
tracts for  their  safety  as  far  as  human  care  and  foresight  can 
go,  {Siokea  v.  SaUonstaU^  13  Peters,  181 ;  Penn.  Co.  v.  Ray, 
102  U.  S.,  451,)  and  must  adopt  all  the  precautions  which 
have  been  practically  tested  and  are  known  to  be  of  value, 
and  employ  all  the  skill  which  is  possessed  by  men  whose  serv- 
ices it  is  practicable  for  the  carrier  to  secure.  {Smith  v.  iV. 
T.  d:  S.  R.  R.  Co.,  19  If.  T.,  127.)  But  the  instruction  was, 
that  the  defendant  was  not  exculpated  if  the  defect  could 
have  been  discovered  by  the  application  of  all  tests  recog^ 
nized  by  experts  as  necessary.  It  surely  would  not  express 
the  true  extent  of  the  carrier's  liability  to  say  that  the  carrier 
is  exonerated  if  the  defect  could  not  be  discovered  by  the  ap- 


340  NORTHERN  DISTRICT    OP  NEW  YORK, 

Robinson  v.  The  New  York  Central  and  Hndson  River  Railroad  Company. 

plication  of  some  of  the  tests  which  experts  recof^ize  as  nec- 
essary. If  there  was  any  test  recognized  as  necessary  which 
was  not  applied,  the  carrier  failed  to  comply  with  its  obliga- 
tion. Of  course,  it  was  not  the  suggestion  of  the  instmction 
that  it  is  the  duty  of  the  carrier  to  adopt  all  such  speculative 
and  theoretical  precautions  as  might  be  thought  necessary  by 
experts;  and  the  instructions  are  not  impugned  upon  this 
ground.  The  precautions  referred  to  were  those  recognized 
as  necessary  by  men  of  practical  experience  in  the  testing  of 
steam  boilers. 

The  more  doubtful  question  presented  by  the  motion  for 
a  new  trial  is,  whether  the  jury  were  justified  in  disregard- 
ing the  evidence  given  by  the  defendant  to  overthrow  the 
presumption  established  by  the  fact  of  the  explosion.  It  is, 
doubtless,  the  general  rule,  that,  where  unimpeached  witnesses 
testify  distinctly  and  positively  to  facts  which  are  uncontra- 
dicted, their  testimony  suflSces  to  overcome  a  mere  presump- 
tion. But  when,  as  here,  the  testimony  proceeds  from  per- 
sons who  would  be  guilty  of  a  criminal  fault  unless  they 
vindicated  themselves  from  the  presumption  arising  from  the 
transaction,  a  question  of  credibility  is  presented  for  the 
jury.  {Elwood  v.  The  Western  (Jnion  Tel.  Co.^  45  N.  JT., 
649.)  The  Court  might  not  feel  concluded  by  this  considera- 
tion on  a  motion  for  a  new  trial,  but  it  would  not  feel  at 
liberty  to  set  aside  the  verdict  unless  so  clearly  convinced  that 
the  witnesses  were  entitled  to  full  credit,  as  to  be  satisfied  that 
the  jury  were  controlled  by  their  prejudices  rather  than  by 
their  impartial  judgment.  This  is  not  such  a  case.  Although 
the  witnesses  who  tested  the  boiler  claimed  to  have  made  an 
adequate  and  thorough  test,  when  it  appeared  that  this  con- 
sisted simply  in  firing  up  the  engine,  when  the  repairs  on  the 
boiler  were  made,  until  the  gauge  indicated  the  steam  pressure 
attained  in  ordinary  use,  a  fair  inference  arose  adverse  to  the 
theory  of  a  very  careful  experiment. 

The  motion  for  a  new  trial  is  denied. 

Amasa  J,  Parker  and  Ed/win  Cauntrymany  for  the  plaintiff. 
Matthew  Hale^  for  the  defendant. 


FEBRUARY,  1882.  341 


The  Albany  City  National  Bank  v.  Maher. 


The  Albany  City  National  Bank 

"William  J.   Maher,  Beceiysb  of  Taxes  of  the  City  of 

Albany.     In  Equity. 

The  Act  of  the  Legislature  of  New  York,  {Chap.  211,  Laws  of  1881,  p.  882,) 
purporting  to  validate  certain  assessmentB  on  shareholders  in  National  and 
State  banks  in  the  city  of  Albany,  is  void,  because  it  denies  the  shareholders 
a  right  to  be  heard,  and  makes  a  legialatiye  assessment  of  a  tax  upon  them 
withont  apportionment  or  equality,  as  between  them  and  the  general  class 
out  of  which  they  are  selected,  or  as  between  themselyes. 

No  tender  of  any  sum  for  a  tax  is  necessary  in'  the  case  of  a  void  assessment. 

The  shareholders  having  a  right  to  sue  the  bank  if  it  pays  the  tax  or  withholds 
their  dividends,  the  bank  can  sue  to  enjoin  the  collection  of  the  tax. 

(Before  Wallaok,  J.,  Northern  District  of  Now  York,  February  18th,  1882.) 

Wallace,  J.  It  was  decided  upon  the  motion  for  a 
preliminary  injunction  herein,  (19  Blatohf,  C.  C,  H.,  175,) 
that  the  assessment  against  the  shareholders  of  the  com- 
plainant was  void  becanse  the  assessors  did  not  comply  with 
the  provisions  of  the  statute  intended  to  afford  taxpayers  an 
opportunity  for  the  examination  and  correction  of  their 
assessments,  which  were  a  condition  precedent  to  the  legality 
of  the  assessments.  Since  that  decision  an  Act  of  the  Legis- 
lature has  been  passed  designed  to  cure  the  invalidity  of  the 
assessment  and  that  Act  is  now  relied  upon  as  a  defence  to 
the  action.  {Chap.  271,  Laws  of  1881,  p,  382.)  That  Act 
declares,  that  the  amounts  of  all  assessments  attempted  to  be 
levied,  and  taxes  imposed,  upon  the  shareholders  in  National 
and  State  Banks  in  the  city  of  Albany,  during  the  year  1880, 
as  the  same  now  appear  of  record  in  the  assessment  roll  of 
the  sixth  ward  in  said  city,  and  now  in  the  hands  of  the 
receiver  of  taxes  therein,  are  hereby  assessed  and  levied  upon 
such  shareholders  whose  names  now  appear  in  said  assessment 


342  NORTHERN  DISTRICT  OF  NEW  YORK, 

The  Albany  City  Natioiuil  Bank  v.  Maher. 

roll  as  assessed  upon  their  bank  shares.  It  further  declares, 
that  the  time  limited  for  any  party  aggrieved  to  procure  a 
writ  of  certiorari  to  review  such  assessment  upon  the  ground 
that  it  is  unequal,  in  that  the  assessment  has  been  made  at  a 
higher  proportionate  valuation  than  other  property  on  the 
same  roll  by  the  same  officers,  and  that  the  petitioner  is  or 
will  be  injured  by  such  alleged  unequal  assessment,  pursuant 
to  chapter  269  of  the  Laws  of  1880,  shall  not  be  deemed  to 
have  expired  until  fifteen  days  after  the  Act  becomes  a  law. 

With  great  reluctance  this  Act  must  be  declared  in  excess 
of  the  legislative  power.  The  almost  unlimited  power  of  the 
Legislature  over  taxation  has  always  been  acknowledged  by  the 
Courts,  but  this  Act  is  an  unprecedented  exercise  of  that 
power.  It  will  not  be  contended  that  the  Legislature  can 
sanction  retroactively  such  proceedings  in  the  assessment  of 
a  tax  as  it  could  not  have  sanctioned  in  advance.  This 
assessment  was  void  because  the  persons  subjected  to  it  were 
deprived  of  notice  and  thereby  lost  the  opportunity  to  be 
relieved,  in  whole  or  in  part  from  the  payment  of  the  tax. 
The  curative  Act  perpetuates  the  vice  which  was  originally 
fatal  to  the  assessment.  It  denies  to  the  shareholders  the 
right  to  be  heard.  It  does  indeed  permit  a  review  by  certich 
ra/ri^  but  the  shareholders  are  limited  to  a  review  upon  the 
single  ground  that  the  assessment  is  at  a  higher  proportionate 
valuation  than  other  property  on  the  same  roll  by  the  same 
officers.  They  are  not  allowed  to  challenge  the  assessment 
upon  the  ground  of  overvaluation  generally,  or  to  show  that 
they  should  have  been  allowed  deductions  which  the  laws  of 
the  State  allow  to  other  taxpayers,  or  to  show  that  they  were 
not  in  fact  the  owners  of  the  property  for  which  they  were 
assessed.  It  is,  in  effect,  a  legislative  assessment  of  a  tax 
upon  a  body  of  individuals  selected  out  of  a  general  class, 
without  apportionment  or  equality  as  between  them  and  the 
general  class,  or  as  between  themselves,  and  without  giving 
them  any  opportunity  to  be  heard.  The  Legislature  cannot 
impose  the  whole  burden  of  the  State,  or  of  a  single  taxing 
district,  upon  a  portion  of  the  property  owners  of  the  district. 


FEBRUARY,   1882.  343 


The  Albany  City  National  Bank  v.  Maher. 


^'  It  is  of  the  very  essence  of  taxation  that  it  be  levied  with 
equality  and  uniformity  and,  to  this  end,  that  there  should 
be  some  system  of  apportionment."  {Cool&f^a  C(mst.  LimitOr 
iiona^  496.)  This  assessment  derives  no  support  from  the 
fact  that  the  tax  was  ori^nally  levied  upon  all  other  property 
holders  by  a  system  of  apportionment  which  secared  uniform- 
ity and  equality,  because  these  shareholders  were  excluded 
from  the  benefits  of  that  system  and  are  still  excluded.  They 
are  singled  out  and  each  assessed  an  arbitrary  sum,  upon  the 
assumption  that  each  is  taxable  for  a  given  amount  of  prop  - 
erty  and  that  such  sum  represents  his  share  of  the  common 
bijrden,  while  they  are  denied  the  right  given  to  all  others, 
of  obtaining  the  deductions  and  corrections  allowed  by  the 
general  system  of  assessment.  As  is  said  in  SttM/rt  v.  Palm- 
er^ (74  N.  Y.y  183,)  "  it  matters  not,  upon  the  question  of  the 
constitutionality  of  such  a  law,  that  the  assessment  has  in  fact 
been  fairly  apportioned.  The  constitutional  validity  of  the 
law  is  to  be  tested,  not  by  what  has  been  done  under  it,  but 
by  what  may,  by  its  authority,  be  done."  {Early  J.^p.  188.) 
It  may  be  that  the  tax  assessed  against  the  shareholders  of 
complainant  is  no  more  onerous  than  they  were  required  to 
bear,  but  this  fact  does  not  affect  the  question  of  legislative 
power  and  cannot  give  validity  to  the  Act. 

Entertaining  these  views,  it  is  unnecessary  to  discuss  the 
other  objections  which  have  been  urged  to  the  original  assess- 
ment and  to  the  invalidity  of  the  curative  Act. 

As  the  original  assessment  was  void  and  has  not  been 
validated,  there  was  no  necessity  for  a  tender,  on  the  part  of 
the  shareholders,  of  such  sum  as  might  be  equitably  due  on 
account  of  their  taxes.  The  cases  in  which  a  tender  has  been 
required  were  those  where  there  was  an  excessive,  as  distin- 
guished from  a  void,  assessment.  (National  Bank  v.  Kimr 
baU,  103  U.  S.f  732;  Oummings  v.  JfaU.  Bank,  101  U.  S.j 
153.) 

It  is  urged  as  a  reason  for  denying  the  relief  claimed,  that 
the  proofs  fail  to  show  that  the  shareholders  of  complainant 
have  any  intention  to  institute  suits  against  the  complainant 


344  NORTHERN  DISTRICT  OF  NEW  YORK, 


McCall  V.  The  Town  of  Hancock. 


if  it  pays  the  tax  or  withholds  their  dividends*  It  suffices, 
however,  that  they  have  the  right  to  sue  the  bank.  The 
complainant  is  placed  in  a  position  where  it  is  subjected  to 
the  contingency  of  a  multiplicity  of  suits  by  the  several 
shareholders,  on  the  one  hand,  if  it  recognizes  the  validity 
of  the  tax  and  withholds  the  dividends,  and  by  the  city 
authorities,  on  the  other  hand,  if  it  refuses  to  do  so. 

A  decree  is  ordered  restraining  the  defendant  from  all 
proceedings  to  enforce  the  tax  as  against  the  complainant. 

Amaaa  J.  Parker^  for  the  plaintiff. 

Rufvs  W,  Peckkam^  for  the  defendant. 


John  B.  McCall  vs.  The  Town  of  Hanoook. 

The  plaiDtiif  purchased  coapons  from  muoicipal  bonds,  at  the  suggestion  of 
those  who  formerly  owned  them,  with  a  view  to  collecting  them  in  tills  Gottrt, 
when  it  was  supposed  a  recoyery  could  not  be  obtained  apon  them  in  the 
State  Courts.  The  former  owners  guaranteed  the  collection  of  the  coupons. 
The  plaintiff  was  protected  from  costs  if  he  was  defeated,  and  he  was  not  to 
pay  for  the  coupons  until  two  years  and  a  half  alter  the  time  of  the  purchase : 
Htld,  that  he  could  maintain  a  suit  against  the  town  on  the  coupons,  being 
the  owner  of  them,  and  that  his  intent  in  acquiring  them  was  immaterial. 

This  Court  held,  in  FooU  t.  Tbtm  of  Hanoock,  (16  Blatekf  C.  C.  R,  843,)  that  a 
hcnafide  holder  of  coupons  from  bonds  issued  by  the  town  of  Hancock  could 
recover  on  them  notwithstanding  the  irregularities  which  took  place  in  the 
issuing  of  the  bonds.  Afterwards,  the  Court  of  Appeals  of  New  York,  in 
Cafftoin  y.  Town  of  Hancock,  (84  N.  Y.,  632,)  decided  to  the  contrary :  Held^ 
that  that  decision  of  the  State  Court  not  haying  been  made  at  the  time  the 
bonds  were  issued,  and  before  tiie  rights  of  purchasers  had  arisen,  this  Court 
was  not  bound  to  follow  it. 

The  case  of  Town  of  Venice  y.  Murdoch,  (92  U,  8,,  494,)  is  controlling  upon 
this  Court  in  reference  to  the  bonds  of  the  town  of  Hancock,  those  bonds  hay- 


FEBRUARY,    1882.  345 


McCall  V.  The  Town  of  Hancock. 


ing  been  iasaed  tinder  a  stotnte  which  authorized  the  commissioners  of  the 
town  to  issue  the  bonds  only  on  the  assent  of  a  majority  of  the  tazables,  and 
which  declared  that  the  fact  that  such  majority  had  been  obtained  should  be 
"  prored  "  by  the  affidavit  of  one  of  the  assessors  of  the  town. 
The  plaintiff  is  entitled  to  judgment  although  he  failed  to  show  that  the  requi- 
site number  of  taxables  had  assented  to  the  issuing  of  the  bonds. 

(Before  Wallacx,  J.,  Northern  District  of  New  Tork,  February  18th,  1882.) 

Wallace,  J.  The  evidence  shows,  what  so  frequently 
appears  in  actions  upon  coupons  and  municipal  bonds,  that  the 
plaintiff  purchased  the  coupons  at  the  suggestion  of  those 
who  formerly  owned  them,  with  a  view  to  collecting  them  in 
this  Court,  when  it  was  supposed  a  recovery  could  not  be  ob- 
tained upon  them  in  the  State  Courts.  By  the  terms  of  the 
purchase,  the  former  owners  guajranty  the  collection  of  the 
coupons.  The  plaintiff  is  protected  from  costs  if  he  is  de- 
feated, and  it  may  be  conjectured,  from  the  fact  that  he  is  not 
to  pay  for  the  coupons  until  two  years  and  a  half  after  the 
time  of  purchase,  that  it  was  intended  by  the  parties  he  should 
not  pay  for  them  at  all,  if,  in  the  meantime,  the  suit  which 
he  should  bring  should  be  decided  adversely  to  him.  Never- 
theless, under  the  repeated  decisions  of  this  Court,  as  the 
plaintiff  is  the  owner  of  the  coupons,  he  can  maintain  this  ac- 
tion, and  his  intent  in  acquiring  them  is  immaterial.  {McJJon- 
aid  V.  Smdlley^  1  PeterSy  620 ;  Ba/mey  v.  Baltimore  City^  6 
TToM.,  ?80 ;  Oalorns  v.  BrooUyn  City  R.  R.  Co.,  5  Blatchf. 
C.  C.  R.^  366.)  He  is  the  real  party  in  interest  and  that  suf- 
fices.    {AUen  V.  Brown,  44  N.  Y,,  228.) 

It  has  heretofore  been  held  by  this  Court,  that  a  honafde 
holder  of  these  coupons  is  entitled  to  recover  thereon  not- 
withstanding the  irregularities  which  took  place  in  the  issuing 
of  the  bonds.  (Foote  v.  Town  of  Hancock^  15  Blatchf.  C.  C. 
R.y  343.)  .  Since  that  decision  the  Court  of  Appeals  has  de- 
cided to  the  contrary,  {Cagwin  v.  Tovyn  of  Hancock,  84  N. 
Y.,  532,)  and  it  is  now  insisted  that  this  Court  should  yield 
to  that  decision  and  follow  it,  as  the  construction  of  a  State 
statute  by  the  highest  Court  of  the  State,  if  that  decision 
had  been  pronounced  at  the  time  the  bonds  were  issued  from 


346  NORTHERN  DISTRICT  OF  NEW  YORK, 

McGall  V.  The  Town  of  Hancock. 

wliich  these  coupoiiB  were  cut,  and  before  the  rights  of  pur- 
chasers had  arisen,  the  duty  of  this  Oonrt  would  be  plain. 
It  would  follow  the  decision,  although  not  convinced  by  the 
reasoning  upon  which  it  was  predicated.  But  research  of 
counsel  has  failed  to  find  a  case  in  which  the  Supreme  Court 
has  adjudged  municipal  bonds  issued  under  a  State  statute  to 
be  invalid  in  the  hands  of  honafde  holders,  simply  because 
the  highest  Court  of  the  State  has  so  determined  after  the 
rights  of  such  holders  had  intervened.  Sometimes  that  tri- 
bunal has  placed  itself  upon  the  ground  that  such  questions 
relate  to  commercial  securities  and  belong  to  the  domain  of 
general  jurisprudence,  in  which  the  Court  will  follow  its  own 
convictions,  as  in  TcfWMihvp  of  Pine  Grove  v.  TalcoUj  (19 
Waa.y  666,)  and  Tinon  of  Venice  v.  Mwdook,  (92  U.  S.,  494,) 
and  in  other  cases  on  the  ground  that  prior  adjudications  of 
the  State  Courts  upon  similar  statutes  were  in  conflict  with 
the  later  decisions. 

Whether  these  adjudications  are  a  departure  from  the 
doctrine  established  by  the  earlier  decisions  of  that  Court,  of 
which  Chreen,  v.  Leeeee  of  NeaL^  (6  Peters^  291,)  is  an  illustra- 
tion, is  not  for  this  Court  to  inquire,  because  its  duty  is  plain, 
to  conform  its  judgments  to  the  views  of  its  superior  tribunal, 
as  they  are  now  entertained  by  that  body.  It  has,  indeed, 
been  repeatedly  said  by  the  Supreme  Court,  in  actions  upon 
such  bonds,  that,  where  there  has  been  a  fixed  and  settled  con- 
struction by  the  State  Courts,  it  would  be  unseemly  to  depart 
from  that  construction ;  but  this  was  said  in  cases  where  such 
construction  had  been  settled  before  the  bonds  were  issued. 
(See  Tovmahvp  ofEI/mwood  v.  Ma/rcy^  92  TJ.  S.j  289.)  On  the 
other  hand,  as  in  Fairfidd  v.  Comity  of  QaUa^^  (100  U.  51, 
47,)  the  Court  has  not  hesitated  to  reverse  its  own  rulings  ad- 
verse to  the  validity  of  such  bonds,  in  order  to  follow  later 
decisions  of  the  State  Court  sustaining  their  validity. 

The  case  of  Toion  of  Venice  v.  Murdoch^  (92  U.  5.,  494,) 
must  be  accepted  as  controlling  upon  this  Court  in  the  dispo- 
sition of  the  present  case,  both  because  it  is  one  of  the  most 
recent  expositions  of  the  views  of  the  Supreme  Court  upon 


FEBRUARY,   1882.  .%7 


McCall  v.  The  Town  of  Hancock. 


the  general  questions  involved,  and  because  it  is  a  precedent 
directly  in  point.  There,  the  validity  of  the  bonds,  issued 
under  a  statute  of  this  State  very  similar  to  the  statute  under 
which  the  bonds  in  suit  were  issued,  was  the  question  under 
consideration.  That  statute  authorized  the  supervisor  of  the 
town  and  the  railroad  commissioners  to  borrow  money  and 
execute  bonds  for  the  town,  in  aid  of  a  railroad  company.  It 
provided,  however,  that  they  should  have  «io  power  to  do  so 
until  the  written  assent  of  two-thirds  of  the  taxables  of  the 
town  should  have  been  obtained  and  filed  in  the  clerk's  office 
of  the  county,  together  with  the  affidavit  of  such  supervisor 
or  commissioners,  or  any  two  of  them,  to  the  effect,  that  the 
persons  assenting  comprised  two-thirds  of  the  taxables.  As- 
sents were  filed,  together  with  the  requisite  affidavits,  and  the 
bonds  were  issued,  but  it  was  not  shown,  upon  the  trial,  that 
two-thirds  of  the  taxables  had,  in  fact,  assented.  Notwith- 
standing the  decision  of  the  Court  of  Appeals  of  this  State, 
that,  under  this  statute,  the  ontM  was  on  the  bondholder  to 
show,  in  a  suit  against  the  town,  that  two-thirds  of  the  tax- 
ables had  assented,  (JStarm  v.  Tovm  of  Oenoa,  23  iT.  y.,439,) 
and  notwithstanding  the  decision  of  the  same  Court  upon  a 
very  similar  statute,  in  Oould  v.  Town  of  Sterling^  (23  If.  Y., 
456,)  the  Supreme  Court  held  that  the  Act  constituted  the 
supervisor  and  commissioners  a  tribunal  to  determine  whether 
the  requisite  assents  had  been  obtained,  and  that  their  decision, 
as  evinced  by  making  the  affidavits  and  issning  the  bonds,  was 
conclusive  in  favor  of  a  bona  fide  holder. 

The  bonds  in  the  present  case  were  issued  under  a  statute 
which  anthorized  commissioners  appointed  for  the  town  to 
borrow  money  and  execute  bonds  for  the  town  in  aid  of  the 
railroad  company.  The  Act  provides  that  the  authority  of 
the  commissioners  shall  only  be  exercised  upon  the  condition 
that  the  assent  shall  be  obtained,  of  a  majority  of  the  taxables, 
and  declares  that  the  fact  that  such  majority  has  been  ob- 
tained shall  be  ^^  proved  "  by  the  affidavit  of  one  of  the  asses- 
sors of  the  town.  The  Act  makes  it  the  duty  of  the  assessors 
to  make  such  affidavit  when  the  requisite  assents  shall  have 


348  NORTHERN  DISTKICT  OF  NEW   YORK, 


McCall  V.  The  Town  of  Hancock. 


been  obtained.  If  there  is  any  material  difference  between 
this  Act  and  the  one  considered  in  Town  of  Venice  y. 
Murdoch^  it  is  that  here  the  statute  declares  the  fact  of  the 
consents  having  been  obtained  ^* proved"  by  the  affidavit, 
while  in  the  other  snch  effect  could  only  arise  by  implication 
— ^a  difference  which  it  might  be  supposed  would  materially 
fortify  the  position  of  the  purchasers  of  the  present  bonds. 

Since  these  bpnds  were  issued  the  Court  of  Appeals  has 
decided,  {Cagwim,  v.  Town  of  Hcmcock,  vbi  aupra^  notwith- 
standing the  declaration  of  the  Act  that  the  fact  that  the  req- 
uisite assents  have  been  obtained  shall  be  proved  by  the  affi- 
davit, that  it  is  still  incumbent  on  the  purchaser  to  ascertain 
whether  the  fact  thus  proved  is  true  or  not.  In  Town  of 
Venice  v.  Mwrdock^  the  Supreme  Court  held  that  he  was  not 
required  to  look  behind  the  recital  in  the  bond.  This  Court 
cannot  follow  the  Court  of  Appeals  without  obviously  ignor- 
ing the  plain  and  conclusive  adjudication  of  the  Supreme 
Court  upon  the  same  question  in  Town  of  Venice  v.  Mur- 
dock. 

It  must,  therefore,  be  determined  that  the  plaintiff  is  en- 
titled to  judgment,  although  he  failed  to  show  that  the  requi- 
site number  of  taxables  had  assented  to  the  issuing  of  the 
bonds. 


Edwa/rd  B.  Thomas^  for  the  plaintiff. 
William  Gleasouj  for  the  defendant. 


FEBRUARY.  1882.  349 


The  Unitod  States  v.  Bartow. 


The  United  States  v8,  Alexander  Bartow. 

Where  a  motion  to  quash  an  indictment  is  made  after  plea,  and  so  mnch  time 
has  elapsed  sinoe  the  date  of  the  alleged  offence  that  it  is  too  late  to  frame  a 
new  indictment,  the  motion  must  fail  unless  the  indictment  discloses  defects 
that  woald  he  clearly  fatal  after  yerdict. 

It  is  made  an  ofience,  hy  §  6,209  of  the  Revised  Statutes,  for  a  cashier  of  a  na- 
tional bank  to  make  any  false  entry  in  any  report  or  statement  of  the  associ- 
ation, with  intent  to  defraud  the  association,  or  to  deoeiTe  any  officer  of  the 
association  or  any  agent  appointed  to  examine  the  affairs  of  any  such 
association ;  and  an  indictment  under  that  section  is  bad  which  arers  only 
an  intent  to  deceire  the  Comptroller  of  the  Currency. 

An  indictment  under  that  section  charged  the  making  a  false  report  of  the 
conditioo  of  the  bank,  and  had  in  it  the  words,  "  whereby,  by  means  of  a 
false  entry  therein  by  him  made."  It  not  being  clear  that  that  language 
would  be  held  insufficient  to  support  a  conviction  for  making  a  false  entry  in 
the  report,  the  question  was  left  to  be  raised  on  a  motion  in  arrest  of  judg- 
ment, and  a  motion  to  quash  was  denied. 

(Before  Bknediot,  J.,  Southern  District  of  New  York,  February  18th,  1882.) 

Benedict,  J.  This  is  a  motion  to  quash  an  indictment 
framed  nnder  §  5,209  of  the  Sevised  Statutes,  by  which  stat- 
ute it  is  made  an  offence  for  any  cashier  of  a  national  bank  to 
make  any  false  entry  in  any  report  or  statement  of  the  associ- 
ation, with  intent  to  defrand  the  association,  or  to  deceive 
any  officer  of  the  association  or  any  agent  appointed  to  exam- 
ine the  affairs  of  any  snch  association. 

.  The  indictment  is  corionsly  framed,  and,  under  other  cir- 
cumstances, I  should  have  little  hesitation  in  directing  it  to  be 
quashed.  But,  the  lapse  of  time  since  the  date  of  the  alleged 
offence  is  such  that  it  is  now  too  late  to  frame  a  new  indict- 
ment. The  defendant  has  long  since  pleaded  to  the  indict- 
ment as  it  stands,  and  the  motion  to  quash  at  this  time  was 
permitted  only  as  a  matter  of  favor,  to  enable  the  defendant 
to  point  oat,  if  he  could,  defects  that  would  necessarily  be 
fatal  on  a  motion  in  arrest  of  judgment.  The  present  motion 
must,  therefore,  fail,  unless  the  indictment  discloses  defects 
that  would  clearly  be  fatal  after  verdict.   Such  a  defect  plainly 


360  SOUTHERN  DISTRICT  OF  NEW  YORK, 

The  United  States  v.  Bartow. 

appears  in  the  first,  second  and  third  connts,  where  the  only 
intent  charged  is  an  intent  to  deceive  John  J.  Knox,  the 
Comptroller  of  the  Oarrency.  The  intent  made  by  the  stat- 
ute an  ingredient  of  the  offence  is  an  intent  to  defraud  the 
association,  or  to  deceive  any  officer  of  the  association  or  any 
agent  appointed  to  examine  the  affairs  of  any  such  association. 
The  Comptroller  of  the  Currency  is  not  an  agent  appointed 
to  examine  the  affairs  of  a  national  banking  association^ 
within  the  meaning  of  this  statute.  The  first,  second  and 
third  counts  of  the  indictment  are,  therefore,  bad. 

The  other  counts  are  differently  framed  in  regard  to  the 
intent.  They  are  alike  in  form,  and  the  only  obje<5tion  taken 
to  them  is,  that  the  substance  of  the  charge  in  each  is  the 
making  a  false  report  of  the  condition  of  the  bank,  whereas 
the  offence  created  by  the  statute  consists  in  making  a  false 
entry  in  a  report.  Upon  this  ground  it  is  contended  that  no 
offence  is  charged  in  either  of  these  counts.  But,  while  the 
wording  of  the  indictment  doubtless  affords  some  ground  for 
such  a  contention,  it  is  not  certain  that  the  language  employed 
would  be  held  insufficient  to  support  a  conviction  for  making 
a  false  entry  in  the  report.  There  are  the  words  "  whereby, 
by  means  of  a  false  entry  therein  by  him  made."  This  lan- 
guage might  be  held  to  constitute  an  imperfect  averment 
tliat  the  defendant  made  a  false  entry  in  the  report  described, 
and,  therefore,  sufficient  to  support  a  finding  that  the  defend- 
ant made  a  false  entry  in  the  report,  within  the  meaning  of 
the  statute.  Any  doubt  existing  upon  such  a  question,  when 
raised  as  in  this  case,  should  be  left  to  be  solved  upon  the 
motion  in  arrest  of  judgment. 

The  motion  to  quash  is,  therefore,  denied. 

WiUiam  P.  Fiero^  (AssistmU  District  Attorney,)  for  the 
United  States. 

Winohe^fer  BHttonj  for  the  defendant. 


FEBRUARY,   1S82.  351 


The  United  States  v.  Bartow. 


The  CTNiTEa)  States  vs.  Alexander  Bartow. 

A  motion  to  quasb  an  indictment,  made  after  plea,  cannot  prevail  unless  the  in- 
sufficiency of  the  indictment  is  so  palpable  that  no  judgment  can  be  rendered 
after  conyiction. 

A  report  of  the  condition  of  a  national  bank,  made  by  its  cashier  to  the  Comp- 
troller of  the  OorreDcy,  and  verified  by  his  oath,  is  a  declaration,  within 
§  6,892  of  the  Revised  Statutes. 

An  indictment  under  that  section  charged  the  taking  of  a  fiilse  oath  to  a  report 
to  the  Comptroller  of  the  Currency,  but  did  not  specifically  aver  that  the 
report  was  made  on  the  requirement  of  the  Comptroller,  or  according  to  a 
form  prescribed  by  him,  but  averred  that  the  report  was  made  to  the  Comp- 
troller, "  and  verified  as  aforesaid,  as  by  law  required."  It  not  being  clear 
that  such  averment  was  not  sufficient,  after  verdict,  to  warrant  judgment  on 
the  conviction,  a  motion  to  quash  the  indictment  was  denied. 

(Before  Bbnkdiot,  J.,  Southern  District  of  New  York,  February  18th,  1882.) 

Benedict,  J.  This  case  comes  before  the  court  upon  a 
motion  to  quash  made  after  plea.  It  cannot,  therefore,  pre- 
vail unless  the  insufficiency  of  the  indictment  is  so  palpable 
as  to  satisfy  the  mind  that  no  judgment  can  be  rendered  in 
case  of  conviction. 

The  offence  sought  to  be  charged  is  the  pfience  created  by 
§  5,392  of  the  Revised  Statutes.  The  act  charged  is  the  veri- 
fication of  a  report  of  the  condition  of  the  National  Bank  of 
Fishkill,  by  the  accused,  as  cashier  of  such  association.  The 
method  of  framing  the  indictment  is  far  from  satisfactory. 
Still  I  think  it  not  impossible  to  consider  the  language  em- 
ployed sufficient,  after  verdict,  to  sustain  a  finding  that  the 
accused  took  an  oath  that  a  report  of  the  condition  of  the 
National  Bank  of  Fishkill  subscribed  by  him  is  true,  and  wil- 
fully and  contrary  to  his  oath  stated,  in  such  report,  material 
matter  which  he  did  not  believe  to  be  true.  Such  a  report  is, 
\n  my  judgment,  a  declaration,  within  the  meaning  of  §  5,392. 

The  laws  of  the  United  States  (§  5,211  Bev.  Stat.^)  require 
every  National  Bank  to  make  to  the  Comptroller  of  the  Cur- 
rency not  less  than  five  reports  during  each  year,  according  to 


352  SOUTHERN  DISTRICT  OF  NEW  YORK, 

The  United  SUtes  v.  Bartow. 

the  form  which  may  be  prescribed  by  him,  verified  by  the 
oath  or  affirmation  of  the  president  or  cashier  of  the  associa- 
tion. In  this  indictment  there  is  no  specific  averment  that 
the  report  in  question  was  made  in  pursuance  of  a  request  or 
requirement  of  the  Comptroller,  or  according  to  a  form  pre- 
scribed by  the  Comptroller ;  nor  is  there  any  averment  that 
the  Comptroller  ever  requested  a  report  from  the  Ifational 
Bank  of  Fishkill.  Because  of  this  omission  it  is  said  that  no 
offence  is  charged,  inasmuch  as  the  ofi^ence  created  by  §  5,392 
can  only  be  committed  in  a  case  in  which  a  law  of  the  United 
States  authorizes  an  oath  to  be  administered.  But,  the  act 
charged  is  the  taking  of  the  oath.  The  circumstances  under 
which  the  oath  was  taken  are  introduced  to  show  that  the  oath 
was  authorized  by  law.  Matter  showing  that  the  report  which 
the  accused  verified  by  his  oath  was  made  in  pursuance  of  a 
request  from  the  Comptroller  of  the  Currency,  and  in  accord- 
ance with  a  form  prescribed  by  him,  would  be,  therefore, 
matter  of  inducement,  and  inducement  does  not,  in  general^ 
require  exact  certainty.  This  indictment  contains  the  aver- 
ment that  the  report  in  question  was  "  made  to  the  Comptrol- 
ler of  the  Currency  and  verified  as  aforesaid,  as  by  law  re- 
quired." I  am  not  prepared  to  say  that  authority  cannot  be 
found  for  holding  such  an  averment  in  regard  to  such  matter 
sufficient,  after  verdict,  to  warrant  judgment  on  the  convic- 
tion. (See  Bex  v.  Sainabury^  4  T.  H,,  451 ;  Heffma  v.  Bid- 
well,  1  Den.  C.  C,  222.) 

The  motion  to  quash  is,  accordingly,  denied. 

WHMam  P.  Fiero,  {Assistant  Disi/rict  Attorney,)  for  the 
United  States. 

Winchester  Britton,  for  the  defendant. 


FEBRUARY,  1882.  353 


JeonUigs  V.  Eibbe. 


Abrajiah  G.  JBNKmas  and  another 

vs. 

m 

Henrt  E.  Kibbb  and  others.    In  EQurrr. 

In  thie  salt,  brought  for  the  iDfringeinant  of  two  letters  patent  for  designs,  one 
for  a  "lace  pmrling  **  and  the  other  for  a  *' fringed  lace  fobric,**  the  plaintiff 
introduced  in  evidence  the  patents  and  a  "nnbia"  sold  by  the  defendants, 
but  examined  no  witness  ais  to  identity  of  design.  The  defendants  introdnced 
no  testimony.  In  view  of  the  decision  in  Oarham  Co.  ▼.  White,  (14  Wallaet, 
611,)  and  of  the  simple  character  of  the  designs  of  the  patents,  and  of  the  absence 
of  any  testimony  on  the  part  of  the  defendants,  the  Oonrt  compared  the  nnbla 
with  the  patents,  as  to  design,  and  determined  the  question  of  identity  fi*om 
snch  comparison. 

^Before  Blatohfobd,  J.,  Southern  District  of  New  York,  February  2(yth,  1882.) 

Blatchford,  J«  This  suit  is  brought  on  two  letters  patent 
for  designs.  One  is  No.  10,388,  granted  to  Abraham  G.  Jen- 
nings, for  14  years,  on  January  1st,  1878,  for  a  "  design  for 
lace  purling."  The  other  is  No.  10,448,  granted  to  Warren 
P.  Jennings,  for  7  years,  on  February  12th,  1878,  for  a  "  de- 
sign for  a  fringed  lace  fabric."  The  specification  of  No. 
10,388  says :  "  Figure  1  represents  a  photographic  illustration 
of  my  new  lace  purling.  Fig.  2  is  a  photographic  illustration 
of  the  same  design,  made  of  coarser  thread.  This  invention 
relates  to  a  new  design  for  a  lace  fabric,  and  consists  in  pro- 
viding the  pillars  thereof  with  more  or  less  irregular  laterally- 
projecting  loops,  thereby  imparting  to  the  entire  fabric  a 
puckered,  wavy,  purl-like  appearance,  which  is  indicated  in 
the  photograph.  The  loops  on  the  pillars  are  placed  close  to- 
gether, to  increase  the  eflEect."  The  claim  is  this:  "The 
design  for  a  lace  purling  the  pillars  whereof  are  provided  with 
irregular  laterally-projecting  loops,  substantially  as  shown." 
The  specification  of  No.  10,448  says:  "The  accompanying 
photograph  illustrates  a  face  view  of  my  new  design.  This 
invention  relates  to  a  new  looped  fringe,  applied  in  series  to 
Vol.  XX.— 38 


354  SOCTHEBN  DISTRICT  OF  HEW  YORK, 

Jomiiigs  V.  Kibbe. 

laoe  fabrics.  A  represents  the  lace  fabric,  of  osnal  kind. 
B  B  are  the  disconnected  fringes  applied  thereto.  Eadi 
fringe,  B,  is  formed  with  loops  at  both  sides  of  a  central  stem 
or  rib,  along  its  entire  extent,  as  shown,  thus  piodacing  a 
peculiar  fall  and  yet  loose  effect.  The  fringes  are  arranged 
in  series  of  rows,  and  suspended  from  the  lace  fabric?'  The 
chum  is  this :  ^'  The  design  for  a  lace  fabric,  provided  with 
disconnected  doable  looped  fringes,  B,  having  loops  at  both 
sides  of  a  central  stem  or  rib,  substantially  as  diown." 

The  answer  denies  infringement  and  sets  up  various  de- 
fences  to  both  patents.  In  taking  proofs  for  final  hearing, 
the  counsel  for  the  defendants  being  present,  the  plaintifEs 
put  in  evidence  the  two  patents,  and  assignments  to  the 
plaintiflb)  and  a  ^'  nubia."  The  counsel  for  the  defendants 
admitted,  on  the  record  of  proofs,  that  the  said  nubia  waa 
purdiased  from  the  defendants'  firm  prior  to  the  commence- 
ment of  this  salt.  The  plaintiffs  then  rested  their  case.  The 
defendants  took  no  testimony.  The  plaintiffs  bring  the  case 
now  to  final  hearing  on  the  foregoing  evidence,  without  in- 
troducing any  witness  to  show  the  identity  of  design  between 
what  is  found  in  said  nubia  and  in  the  plaintiffs'  patents. 
The  defendants  contend  that  it  is  not  sufficient  for  the  plaint* 
iffs  to  show  merely  the  sale  of  the  nubia  by  the  defendants, 
and  to  leave  the  Court  to  inspect  the  nubia  and  compare  it 
with  the  patents,  but  that  the  plaintiffs  must  produce  a  wit- 
ness  to  testify  to  identity  of  design. 

In  Oorham  Co.  v.  WhUe^  (14  WaUace^  511,)  the  Supreme 
Court  considered  directly  the  question  of  identity  in  regard 
to  a  patent  for  a  design.  It  held  that  the  true  test  of  identity 
of  design  is  sameness  of  appearance,  in  other  words,  sameness 
of  effect  upon  the  eye ;  that  it  is  not  necessary  that  the  ap- 
pearance should  be  the  same  to  the  eye  of  an  expert ;  and  that 
the  test  is  the  eye  of  an  ordinary  observer,  the  eyes  of  men 
generally,  of  observers  of  ordinary  acuteness,  bringing  to  the 
examination  of  the  article  upon  which  the  design  has  been 
placed  that  degree  of  observation  which  men  of  ordinary  in- 
telligence give.  The  Court  compared,  in  that  case,  the  de- 
sign of  the  patent  with  the  designs  on  the  defendants'  articles. 


FEBRUABY,   1882.  856 


Bnioe  V.  Harder. 


and  arrived  at  the  conclusion,  from  sach  comparison,  that  the 
designs  of  the  defendant  were,  in  their  effect  as  a  whole,  not- 
withstanding v^ances,  substantially  the  same  as  the  design  of 
the  patent,  and  infringements.  In  addition  to  this  there  was 
the  testimony  of  witnesses  on  both  sides  on  the  question,  and 
the  Court  was  of  opinion,  also,  that  the  testimony  proved  the 
infringements. 

In  view  of  the  proper  test  of  identity,  as  above  given,  and 
of  the  simple  character  of  the  designs  in  the  present  case,  and 
of  the  absence  of  any  testimony  on  the  part  of  the  defend- 
ants, I  am  of  opinion  that  the  absence  of  testimony  as  to  iden- 
tity does  not  make  it  improper  for  the  Court,  in  this  case,  to 
compare  the  defendants'  nubia  with  the  patents,  as  to  design, 
and  determine  the  question  of  identity  from  such  comparison. 
It  is  not  intended  to  imply  that  the  practice  can  be  extended 
to  any  other  patent  than  one  for  a  design,  or  that  it  ought  to 
be  extended  to  all  patents  for  designs. 

On  such  comparison  it  is  found  that  the  defendants'  nubia 
infringes  both  of  the  patents,  and  a  decree  in  the  usual  form, 
in  favor  of  the  plaintiff,  with  costs,  wiU  be  entered. 


A.  V.  JBriesen,  for  the  plaintiffs. 
J.  R.  BenneUj  for  the  defendants. 


David  W.  Bbucb 
John  Mabdbb  and  othbbs.    In  Egmrr. 

Letters  patent  No.  189,865,  granted  to  David  W.  Brace,  May  27th,  1878,  for  an 

improvement  in  printing  types,  are  valid. 
The  invention  defined,  and  held  to  be  patentable. 
The  claim  oonstrned  by  the  langoage  of  the  spedfioation. 

(Before  WaxiUA,  J.,  Soathern  District  of  New  York,  Febraary  2Sd,  1888.) 


356  SOUTHERN  DISTRICT  OF  NBW  YORK, 


Bmce  V.  Harder. 


Whebleb,  J.  This  snit  is  brought  upon  letters  patent 
No.  139,365,  dated  May  27th,  1873,  granted  to  the  orator  for 
an  improvement  in  printing  types.  The  improvement  con- 
sists in  having  types  for  figures  cast  two-thirds  the  width  of 
the  body,  which  is  the  height  of  the  type,  and  with  corre- 
spondingly larger  faces,  whereby  the  type  can  be  more  readily 
set,  beeause  they  can  be  justified,  as  printers  say,  by  two  of 
the  ordinary  three-in-em  spaces,  and  because  the  print  is  much 
more  legible.  The  defences  are  want  of  patentability  of  in- 
vention, and  want  of  novelty.  The  claim  in  controversy,  of 
the  patent,  is  for :  ^^  Figures  and  fractions  in  printing  type, 
cast  upon  a  block  equal  to  two-thirds  the  width  of  the  body 
of  the  *  em '  or  standard  type." 

If  this  claim  was  to  stand  upon  its  own  terms  merely,  it 
would  cover  only  the  size  of  the  body  of  the  type  on  which 
figures  are  cast,  and  not  the  size  of  the  figures  themselves,  as 
cast  upon  the  body,  and  the  patent,  as  involved  here,  would 
have  to  be  considered  in  that  view.  But  the  specification  sets 
forth  the  old  method  of  casting  type  for  figures,  and  the  in- 
distinctness, on  account  of  smallness  of  the  figures,  as  one 
of  the  disadvantages  of  that  method,  and  then  proceeds: 
^'  To  obviate  this  indistinctness,  I  construct  the  figures  broader, 
by  casting  them  two-thirds  of  the  width  of  the  body,"  &c., 
and  refers  to  the  accompanying  drawings,  which  show  large- 
faced  figures  contrasted  with  small  ones,  as  a  part  of  the  im- 
provement. The  claim  is  to  be  read  in  connection  with  the 
specification,  as  if  there  was  added  to  it  the  phrase — as 
specified,  or  as  set  forth.  Read  in  that  light  the  claim  is  for 
the  broader  figures,  as  well  as  for  the  broader  body  of  the 
type. 

The  daim  of  lack  of  patentability  rests  upon  the  argu- 
ment that  there  can  be  no  invention  in  merely  increasing  the 
size  of  the  types  for  figures  or  the  width  of  the  body  of  the 
type,  and  none  in  doing  both.  At  first,  it  would  seem  that 
this  argument  was  well  founded,  as  to  the  scope  of  the  patent, 
and  sound.  But  a  closer  examination  of  the  subject  shows 
that  the  patent  involves  more  than  either  of  these  things,  or 


FEBRUARY,  1882.  857 


Brace  v.  Murder. 


the  combination  of  both.  The  invention  is  not  merely  of  an 
increase  of  the  size  of  type  for  figures.  Figures  in  printing 
are  to  be  used  in  the  same  body  of  type  with  letters,  and  the 
whole  are  to  be  justified,  in  the  language  of  printers ;  in  other 
words,  spaced  so  as  to  fill  out  the  lines.  By  the  old  method 
figures  were  cast  on  types  one-half  the  width  of  the  body  of  the 
line,  whatever  the  size  of  the  type  might  be ;  and  an  increase 
of  the  size  of  the  figures  made  necessary  an  increase  of  the 
size  of  the  whole.  The  orator  invented  a  method  of  increas- 
ing the  size  of  the  figures  without  increasing  the  size  of  the 
type  of  the  letters  and  the  body  of  the  line ;  and  a  method 
of  conveniently  justifying  the  types  for  figures,  by  making 
the  width  of  the  body  of  the  type  exactly  two-thirds  of  the 
width  of  the  body  of  the  line,  so  that  they  could  be  justified 
by  two  of  the  ordinary  three-in-em  spaces,  whatever  the  size 
of  the  type  of  the  body  of  the  line  might  be.  This  involved 
finding  a  new  rule  of  proportion  between  the  sizes  of  letters 
and  the  sizes  of  figures,  and  one  that  not  only  would  give 
more  legible  figures,  but  such  as  would  be  more  legible  with- 
out increasing  the  size  of  tlie  letters  with  which  they  should 
be  printed,  and  such  size  of  body  of  .type  on  which  to  cast 
the  figures  that  the  type  could  be  used  conveniently,  and 
economically  of  space.  This  required  more  than  mere  me- 
chanical skill ;  it  made  necessary  the  creative  genius  of  the 
inventor.  The  testimony  of  practical  and  largely  experienced 
printers,  taken  in  the  case,  shows  that  his  method  was  not 
known  before  his  invention,  that  it  has  been  of  great  utility 
and  gone  largely  into  use  since.  This  shows  that  he  discov- 
ered and  put  to  use  what  others  skilled  in  the  art  had  oyer- 
looked  ;  that  it  was  very  desirable,  when  known,  and  would, 
very  probably,  have  been  found  out  before,  if  ordinary  skill 
in  that  art  could  have  discovered  it.  On  the  whole,  the  pre- 
sumption of  patentability  arising  from  the  grant  of  the  patent 
is  not  only  not  overthrown  but  is  well  sustained. 

The  evidence  as  to  prior  knowledge  and  use  establishes, 
fairly  enough,  that  types  for  figures  were  cast  with  the  body 
of  the  type  two-thirds  the  width  of  the  body  of  the  line, 


868  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Munson  v.  The  Mayor.  Ac,  of  the  City  of  New  York. 

before  this  inyention ;  and,  if  that  was  all  of  the  invention, 
or  if  the  claim  was  to  be  constmed  according  to  its  own 
terms,  without  resort  to  the  specification,  so  that  no  more 
would  be  patented,  the  want  of  real  novelty  might  be  made 
ont.  Bat,  as  before  attempted  to  be  shown,  the  invention  in- 
volves the  increase  of  the  size  of  figures  in  proportion  to  the 
size  of  letters,  in  connection  with  this  size  of  the  body  of  the 
type,  and  the  whole  of  that  does  not  appear  with  the  requisite 
clearness  to  have  been  known  or  nsed  before. 

Let  there  be  a  decree  that  the  patent  is  valid,  that  the  de- 
fendants infringe,  and  for  an  injunction  and  an  account,  ao- 
cording  to  the  prayer  of  the  bill,  with  costs. 

Benjamin  F,  Lee^  iot  the  plaintifi; 

H.  F.  PtMzj  for  the  defendants. 


Francis  Mitnson 

vs. 

The  Mayor,  &o,,  of  the  City  of  New  York.    In  EQunr. 

An  interlocatory  decree  for  the  plaintiff  haying  been  made  in  this  salt,  (18 
Blotch/.  C.  C,  R,,  287,)  after  a  final  hearing  on  proofs,  application  was  now 
made,  on  affidayits,  to  open  the  decree  and  admit  a  new  defence  of  pablic  nee 
of  the  patented  article,  purchased  from  the  inventor,  for  more  than  two  yean 
prior  to  the  application  for  the  patent  Bat  the  witnees  to  the  nse  had  made 
conflicting  affidayits,  and  the  Identical  article  osed  was  not  produced,  and  the 
inventor  testified  that  the  article  purchased  from  him  was  not  the  completed 
invention.     For  these  reasons  the  application  was  denied. 

(Before  Wheblr,  J.,  Southern  District  of  New  York,  February  82d,  1888.) 

Wheeler,  J.  This  cause  has  now  been  heard  upon  the 
motion  of  the  defendant  to  re-open  the  interlocutoiy  decree 
for  an  injunction  and  account,  heretofore  made  therein,  (18 


FEBRUARY,   1882.  859 

Mnotcm  «.  The  Mayor,  Ac,  of  the  Ciiy  of  New  York. 


RUstchf.  G,  C.  JS.y  287,)  and  to  admit  a  new  defence  of  public 
VBB  of  the  patented  bond  and  coupon  registers  in  contro- 
yersy,  by  the  Chicago,  Burlington  and  Quincj  Bailroad  Com- 
pany, for  the  period  of  more  than  two  years  prior  to  the 
application  for  a  patent,  which  were  purchased  of  the  patentee 
himself.  The  application  is  founded  upon  an  aflEidayit  of 
Amos  T.  Hall,  in  which  he  testifies  to  such  prior  use  while 
he  was  treasurer  of  that  corporation,  and  affidavits  of  counsel 
showing  due  diligence  in  discovering  this  defence.  This 
defence  would  be  meritorious  if  it  could  haye  been  seasonably 
interposed  and  clearly  made  out,  according  to  the  require- 
ments of  the  law  for  defeating  a  patent.  This  affidavit,  as 
made,  having  full  effect  given  to  all  its  statements,  would 
make  out  such  defence.  But,  since  making  this  affidavit,  the 
same  witness  has  made  another,  at  the  request  of  the  plaintiff, 
so  modifying  the  former  as  to  make  it  doubtful,  upon  his  own 
statements  taken  altogether,  whether  it  was  in  fact  the  pat- 
ented register  which  he  used  for  that  corporation  during  that 
time.  All  the  registers  which  he  did  use  were  consumed  by 
the  Chicago  fire,  so  that  proof  of  what  they  actually  were 
would  necessarily  depend  wholly  upon  oral  testimony.  In 
addition  to  this,  the  plaintiff  makes  affidavit  that  what  was 
used  was  not  the  patented  invention  as  perfected,  but  was  a 
different  register,  which  he  made  before  completing  the  in- 
vention patented.  This  would  make  this  defence  altogether 
too  doubtful  in  fact  to  defeat  the  patent,  if  it  was  all  in,  upon 
this  proof,  for  consideration,  upon  hearing  in  chief ;  and  would 
fall  far  short  of  warranting  re-opening  the  case,  if  all  other 
requisites  for  that  course  were  complied  with.  It  is  argued 
for  the  defendant,  however,  that  the  case  should,  in  justice, 
be  opened,  to  give  opportunity  to  investigate  this  defence  and 
procure  other  witnesses  if  to  be  found,  and  to  subject  these 
to  examination  and  cross-examination,  to  develop  the  facts 
pertaining  \o  it  more  fully.  This  would  be  very  proper  in 
preparing  for  a  hearing  in  chief  while  the  case  was  open  for 
that  purpose.  That  time,  however,  has  passed.  It  is  for  the 
interest  of  all  that  litigation  should  in  due  course  cease,  and 


860  SOUTHERN   DISTRICT  OF  NEW  YORK, 

Smilli  9.  The  Standard  Laundry  Madiinery  Company. 


that  experiments  in  making  proofs  should  cease.  After  par- 
ties have  had  a  full  opportanity  to  ascertain,  take  and  present 
all  their  proofs,  and  they  haye  been  taken,  presented,  consid* 
ered,  and  their  weight  determined,  there  is  no  jnst  gronnd 
for  opening  the  case  to  afford  opportunity  to  explore  for 
further  proofs.  In  applications  for  a  new  trial  on  newly  dis- 
covered evidence,  the  evidence  offered  should,  of  itself,  be 
such  as  to  make  it  probable  that  its  introduction  would  change- 
the  result.  The  authorities  are  full  to  this  extent,  at  leasts 
The  motion  must  be  denied. 

Hoyal  S.  Oranej  for  the  plaintiff. 

Frederic  H.  BettSy  for  the  defendant. 


Mart  J.  Sioth 

The  Standard  Laundry  Maouinbst  Companv  and  others.. 

In  Equity. 

S.  granted  an  exdnaiye  lioenae,  in  writing,  to  a  company,  t«  make  and  aeU  a 
patented  article  during  tlie  term  of  a  patent,  returns  of  sales  to  be  made 
monthly,  and  license  fees  paid  monthly,  S.  to  haye  a  right  to  terminate  the 
lioense  by  a  written  notice  to  the  company,  on  the  faUure  to  make  retoms 
and  payments  for  8  consecntiye  months.  S.  dnly  serred  notice  of  the  termi- 
nation of  the  license,  but  the  company  continued  to  use  the  patented  inyen- 
tion,  and  S.  brought  this  suit  for  infiingement.  The  parties  were  citixens  of 
the  same  State.  In  A.'s  answer,  the  company  alleged  that  the  contract  was  not 
lawfhUy  terminated,  and,  also,  that  it  had  not  sold  any  of  the  patented  arti- 
cles, and  was  not  making  and  selling  them :  Htldt  that  this  Ck>urt  had  juris- 
diction of  the  suit 

The  case  distinguished  from  WUton  y.  Semd/ord,  (10  JBoio.,  99,)  and  Harldly,, 
TOghman,  (99  U.  8.,  647.) 

(Before  WonLn,  J.,  Southern  District  of  New  York,  February  22d,  1882.) 


FEBRUARY,  1882.  861 


Smith  9.  The  Standard  Laundry  Hachioery  Company. 

Wheeler,  J.  There  are  two  of  these  eases,  brought  npon 
numerons  patents  described  in  the  respective  bills  of  com- 
plaint, and  they  have  been  heard  together  npon  the  bills,, 
answers,  replications,  and  plaintifPs  proofs.  The  plaintiff,  by 
written  agreement,  dated  July  1st,  1874,  granted  an  ezdnsive 
license  to  the  Standard  Lanndry  Machinery  Company,  alone 
and  singly,  to  mannfactare  and  sell  lanndry  machinery  embody- 
ing the  improvements  patented,  to  the  end  of  the  terms  of 
the  patents,  the  company  to  make  return  to  the  plaintiff  of 
all  sales  made  dnring  each  month,  on  the  first  of  the  following 
month,  and  to  pay,  as  a  license  fee,  on  or  before  the  tenth  of 
the  following  month,  a  sum  eqaal  to  eight  per  cent,  of  the 
gross  sales  of  power  machinery,  and  four  per  cent,  of  the 
gross  sales  of  hand  machinery,  so  sold.  There  was  a  clause  in 
the  agreement  providing  that  the  plaintiff  might  terminate 
the  license  by  serving  a  written  notice  upon  the  company,  on 
failure  to  make  the  returns  and  payments  for  three  consecu- 
tive months.  May  13th,  1879,  the  plaintiff  served  notice  of 
termination  of  the  license.  The  defendants  continued  to  use 
the  patented  inventions,  and  the  plaintiff  brought  these  suits 
for  infringements  after  the  notice.  The  parties  are  citizens 
of  the  same  State,  so  that  this  Court  has  no  jurisdiction  except 
under  the  patent  laws.  The  defendants  insist  that  those  laws 
give  no  jurisdiction  to  decide  npon  the  construction  or  con- 
tinuance of  the  agreement  for  a  license,  and  that  the  question 
of  infringement  depends  wholly  upon  the  agreement,  and  rest 
the  case  here  wholly  upon  this  question  of  jurisdiction.  The 
contract  of  license  itself  provides  a  mode  for  its  own  termi- 
nation ;  and  the  plaintiff's  case  shows  that  it  was  terminated 
in  that  mode.  The  defendants  do  not  rest  their  cases  upon 
the  question  whether  the  contract  was  terminated  or  not,  but,, 
while  they  insist  that  it  was  not  lawfully  terminated,  answer, 
"  that  they  have  not  sold  any  machines  embodying  the  inven- 
tion for  which  the  complainant  has  obtained  letters  patent,  as 
alleged  in  the  complaint,  and  that  defendants  are  not  now 
manufacturing  and  selling  the  said  machines."  This  raises  a 
question  of  infringement,  arising  solely  under  the  patent  laws 


362  EASTERN  DISTRICT  OF  NEW  YORK, 

Gnnther  «.  The  Lirerpool  and  London  and  Globe  Insonuioe  OomiMny. 

of  the  United  States,  of  which  the  CTnited  States  Oonrts  alone 
have  jurisdiction,  without  reference  to  citizenship.  The  de- 
cision of  the  question  of  the  termination  of  the  license  might 
obviate  this  question  of  infringement,  and  it  might  not ;  or, 
rather,  it  might  furnish  a  mode  of  determining  whether  there 
was  any  infringement,  and  it  might  leaye  that  question  to  be 
•determined  otherwise.  If  the  license  was  not  ended,  the  acts 
charged,  if  done,  would  not  constitute  an  infringement ;  if 
«nded,  the  question  would  remain,  whether  the  acts  were  done. 
The  question  of  infringement  would  always  be  in  the  case, 
until  decision.  This  is  different  from  WiUon  y.  Sanc^ordj 
(10  ffow.y  99,)  and  Bariell  v.  TUghmauj  (99  U.  A,  547,)  re- 
lied npon  by  defendants.  In  each  of  those  cases,  as  treated 
by  the  Court,  there  was  but  one  question  made  between  the 
parties  to  be  decided  at  all,  and  that  was  a  question  of  contract. 
Neither  of  those  cases  seems  to  control  this,  and  this  does  seem 
to  involve  a  controversy  of  which  this  Conrt  has  jnrisdio- 
tion. 

Let  there  be  a  decree  for  an  injunction  and  an  account,  ac- 
-cording  to  the  prayer  of  the  bill,  with  costs. 

H.  Q.  AtwaieVy  for  the  plaintiff. 

J.  Palmer,  for  the  defendants. 


Charles  Godfret  Gitnthkb 

vs. 
The  Ltvbrpool  and  London  and  Globe  Insurance  Company. 

A  policy  of  fire  insurance  on  a  hotel,  owned  by  ihe  plaintiff,  proyided  that  it 
shonld  be  void  if  the  premiseB  shoold  be  used  so  as  to  increase  the  risk,  with- 
in the  control  of  the  assured,  without  the  assent  of  the  insurer,  or  if  the  as- 
sured  should  keep  gasoline  or  benzine  without  written  permission  in  the  pol- 


FEBRUARY,  1882.  363 


Gnnther  v.  The  LiTerpool  and  London  and  Olobe  Inraranoe  Company. 

icy,  and  that  neither  bennne  nor  gaaoline  should  be  stored,  used,  kept  or 
allowed  on  the  premises,  temporarily  or  permanently,  for  sale  or  otherwise, 
noless  with  written  permission  endorsed  on  the  policy,  "  excepting  the  use 
of  refined  coal,  kerosene  or  other  oarbon  oU,  for  lights,  if  the  same  is  drawn 
and  the  lamps  filled  by  daylight;  **  otherwise,  the  policy  to  be  yoid.  There 
was  written  in  the  policy:  "Priril^ge  to  use  gasoline  gas,  gasometer,  blower 
and  generator  being  underground,  about  60  feet  from  main  building,  in 
▼ault,  no  heat  employed  in  process;"  and  "privilege  to  keep  not  exceeding 
5  barrels  kerosene  oil  on  said  premises."  There  was  an  oil  room  in  the  base- 
ment of  the  hotel,  in  which  materials  for  lighting  were  kept  The  hotel  was 
run  by  the  wife  of  W.,  W.  being  her  agent  in  its  management.  It  was  de- 
stroyed by  a  fire  which  took  in  the  oil  room  between  sundown  and  dark,  from 
a  light  carried  in  there  by  senrants,  by  direction  of  W.,  for  the  purpose  of 
drawing  oil  sent  for  from  a  neighboring  hotel.  The  answer  set  up,  as  de- 
fences, that  the  conditions  of  the  policy  were  broken,  by  keeping  or  allowing 
benzine  on  the  premises,  and  thereby  increasing  the  risk,  without  consent  or 
permisrioD,  but  did  not  otherwise  set  out  any  breach  by  drawing  oil  after 
daylight,  or  by  other  light.  On  the  trial  the  defendant  gave  evidenoe  to 
show  that  W.  had  procured  benzine  and  put  it  in  the  oil  room  for  use  in 
Ughting  the  premises,  and  that  this  was  the  same  as  gasoline,  and  was  what 
was  sent  for  from  the  other  hotel,  and  was  being  drawn  and  took  fire  from  the 
fight,  and  caused  the  loss,  and  that  its  presence  increased  the  risk.  The  evi- 
dence also  went  to  show  that  W.  procured  the  benzine  to  use  at  a  picnic  and 
not  for  the  purposes  of  the  hotel  The  plaintiif  gare  evidence  to  show  that 
no  benzine  was  brought  there,  and  that,  if  there  was,  it  was  without  the  au- 
thority or  knowledge  of  the  plaintifF,  and  that  kerosene  was  what  was  being 
drawn  when  the  fire  took.  There  was  evidence  that,  in  the  use  of  gasoline 
gas,  in  apparatus  such  as  is  described  in  the  permission,  it  is  usual  to  store 
gasoline  in  the  generator.  The  Ck>urt  charged  the  jury  that,  if  the  benzine 
was  there  and  was  procured  and  placed  there  by  W.  in  the  course  of  his  bus- 
iness of  managing  the  hotel  for  his  wife,  to  whom  the  plaintiff  had  committed 
the  use  of  the  premises,  and  storing  it  in  the  oil  room  would  not  be  within 
what  would  be  understood  and  expected  to  be  done  in  the  exercise  of  the 
privilege  granted  to  use  gasoline,  the  plaintiff  could  not  recover ;  but  that,  if 
the  benrine  was  not  there,  or  was  placed  there  by  W.  without  the  plaintiff's 
knowledge,  for  some  outside  purpose,  not  connected  with  the  management  of 
the  hotel,  nor  within  his  authority  as  agent  of  his  wife  for  that  purpose,  or  if  ■ 
it  was  to  be  understood  and  expected,  from  the  permission,  that  the  gasoline 
or  benrine  might  be  stored  in  the  oil  room,  in  the  usual  place  for  storing  such 
things,  and  it  was  so  stored  there,  the  plaintiff  could  recover:  ffdd,  no 
error. 
The  defendant  requested  the  Court  to  direct  a  verdict  for  the  defendant  on  the 
ground  that  drawing  the  oil  after  daylight  was  gone,  by  artificial  light, 
avoided  the  policy,  and  to  charge  the  jury  that  the  plaintiff  was  not  entitled 
to  recover  if  benzine  was  there  and  increased  the  risk.  The  Court  refused  to 
comply  with  such  requests:  Held,  no  error. 

(Before  Wbxklsb,  J.,  Eastern  District  of  New  Tork,  February  28d,  1882.) 


3d4  EASTERN  DISTRICT  OP  HEW  YORK, 

Gnntber  «.  The  LiTerpool  aod  London  and  Qlobe  loinnuiee  Oompasy. 

Whebleb,  J.  This  action  is  brought  upon  two  policies 
of  iDBurance  coyering  the  plaintiff's  hotel,  stable  and  bathing 
honses.  The  policies  contained  clauses  providing  that,  if  the 
premises  should  '^be  occupied  or  used  so  as  to  increase  the 
risk,  by  any  means  whatever  within  the  control  of  the  assured, 
without  the  assent "  of  the  company,  or,  if  the  assured  should 
"  keep  *  *  *  gasoline,  benzine  *  *  *  without  writ- 
ten permission  in  the  policies,"  then,  in  every  such  case,  the 
policies  should  be  void,  and  that  *  *  benzine  *  *  gas- 
oline *  *  were  "  not  to  be  stored,  used,  kept  or  allowed 
on  the  above  premises,  temporarily  or  permanently,  for  sale 
or  otherwise,  unless  with  written  permission  endorsed  on  this 
policy,  excepting  the  use  of  refined  coal,  kerosene  or  other 
carbon  oil,  for  lights,  if  the  same  is  drawn  and  the  lamps 
filled  by  daylight;  otherwise,  this  policy  shall  be  null  and 
void."  There  was  written  in  the  policy :  "  Privilege  to  use 
gasoline  gas,  gasometer,  blower  and  generator  being  under- 
ground, about  60  feet  from  main  building,  in  vault,  no  heat 
employed  in  process;"  and  ^'privilege  to  keep  not  exceeding 
5  barrels  kerosene  oil  on  said  premises."  Gasoline  gas  appar- 
atus, as  described  in  the  permission,  was  in  use  when  that  per- 
mission was  given,  and  that  use  was  whoUy  discontinued,  and 
the  permission  to  keep  kerosene  oil  was  given.  There  was 
an  oil  room  in  the  basement  of  the  hotel,  in  which  materials 
for  lighting  were  kept.  The  hotel  was  run  by  a  Mrs.  Walker, 
and  Mr.  Walker,  her  husband,  was  her  agent  in  its  manage- 
ment. The  property  insured  was  destroyed  by  fire,  which 
took  in  the  oil  room,  between  sundown  and  dark,  from  a  light 
carried  in  there  by  servants,  by  direction  of  Walker,  for  the 
purpose  of  drawing  oil,  sent  for  from  a  neighboring  hotel. 

The  answer  set  out  the  conditions  in  the  policy  mentioned, 
and  averred,  as  defences,  that  these  conditions  were  broken, 
by  keeping  or  allowing  benzine  on  the  premises,  and  thereby 
increasing  the  risk,  without  consent  or  permission,  among 
other  things,  but  did  not  otherwise  set  out  any  breach  by 
drawing  oil  after  daylight,  or  by  other  light. 

On  the  trial,  the  evidence  of  the  defendant  tended  to 


FEBRUARY,  1882.  366 


GuDtber  v.  The  laTerpool  and  London  and  Globe  Insurance  Company. 


show,  that  the  day  before  the  fire  a  half  barrel  of  benzine  was 
procured  by  Walker  to  be  brought  and  put  into  the  oil  room, 
for  use  in  lighting  the  premises,  and  that  this  was  the  same  as 
gasoline,  and  was  what  was  sent  for  from  the  other  hotel,  and 
was  being  drawn  and  took  fire  from  the  light,  and  caused  the 
loss ;  and  that  its  presence  greatly  increased  the  risk.  The 
evidence  also  tended  to  show  that  Walker  procured  the  ben- 
zine for  use  at  a  picnic  in  an  adjoining  grove  the  next  day, 
and  not  for  the  purposes  of  the  hoteL  The  plaintifiPs  evidence 
tended  to  show  that  no  benzine  was  brought  there  at  all,  and 
that,  if  there  was,  it  was  without  the  authority  or  knowledge 
of  the  plaintiff;  and  that  kerosene  was  what  was  being  drawn 
when  the  fire  took.  A  witness  for  the  defendant  stated  that, 
in  the  use  of  gasoline  gas,  in  apparatus  such  as  is  described  in 
the  permission,  it  is  usual  to  store  the  gasoline  in  the  gasome- 
ter, probably  intending  to  say  generator;  and  this  was  the 
only  evidence  upon  the  subject,  other  than  that  arising  from 
the  nature  and  necessities  of  the  use. 

The  defendant  requested  the  Court  to  direct  a  verdict  for 
the  defendant,  on  the  ground  that  drawing  the  oil  after  day- 
light was  gone,  by  artificial  light,  avoided  the  policy ;  and  to 
charge  the  jury  that  the  plaintiff  was  not  entitled  to  recover 
if  benzine  was  there  and  increased  the  risk.  The  Court,  not 
complying  with  these  requests,  charged  the  jury  that,  if  the 
benzine  was  there,  and  was  procured  and  placed  there  by 
Walker  in  the  course  of  his  business  of  managing  the  hotel 
for  his  wife,  to  whom  the  plaintiff  had  committed  the  use  of 
the  premises,  and  storing  it  there  in  the  oil  room  would  not 
be  within  what  would  be  understood  and  expected  to  be  done, 
in  the  exercise  of  the  privilege  to  use  gasoline  granted,  the 
plaintiff  would  not  be  entitled  to  recover;  but  that,  if  the 
benzine  was  not  there,  or  was  placed  there  by  Walker  without 
the  plaintiff's  knowledge,  for  some  outside  purpose,  not  con- 
nected .with  the  management  of  the  hotel,  nor  within  his  aur 
thority  as  agent  of  his  wife  for  that  purpose,  or  if  it  was  to 
be  understood  and  expected,  from  the  permission  that  the 
gasoline  or  benzine  might  be  stored  in  the  oil  room,  in  the 


366  EASTERN  DISTRICT  OF  NEW  YORK. 

Qunther  v.  The  Liverpool  and  London  and  Globe  Inenrance  Company. 

usual  place  for  Btoring  such  things,  and  it  was  so  stored  there, 
the  phiintiff  would  be  entitled  to  recover.  The  defendant 
excepted  to  each  of  these  rulings,  and,  after  verdict,  and  be> 
fore  judgment,  moved  for  a  new  trial  on  account  of  them, 
and  the  cause  has  now  been  heard  upon  this  motion. 

Defences  on  account  of  breaches  of  conditions  in  such  pol- 
icies should,  according  to  the  general  principles  of  pleading  at 
law,  be  specially  pleaded  and  set  forth.  (  Wood  on  .Fire  Ina^y. 
sees.  194,  496.)  This  was  the  rule  at  common  law,  as  to  con- 
ditions of  penal  bonds.  And  this  mode  of  pleading  seems  ta 
be  especiallj  requisite  in  proceedings  under  the  Code,  such  aa 
those  in  this  case  are.  It  is  said,  in  argument,  that  the  gen- 
eral allegation  that  the  conditions  were  broken,  in  connection 
with  the  setting  forth  of  the  conditions,  was  a  sufficient  com- 
pliance with  the  requirement ;  and  that  the  introduction  of 
the  evidence  without  objection  was  a  sufficient  waiver  of  it. 
The  first  of  these  propositions  would  seem  to  be  more  sound 
if  the  pleader  had  stopped  when  he  had  set  out  the  conditiona 
and  stated  generally  their  breach;  but  he  did  not  do  this. 
After  stating  the  conditions  and  that  they  were  broken,  he 
went  on  and  specified  the  particulars  in  which  they  were 
broken,  leaving  out  drawing  oil  by  other  than  daylight.  Thjs 
would  be  misleading  if  that  breach  was  to  be  relied  upon.  As 
it  was,  the  Court  got  no  idea  at  all  that  such  breach  was  to  be 
relied  upon  until  the  request  to  direct  a  verdict  on  account  of 
it  was  made.  The  evidence  in  respect  to  it  did  go  in  without 
objection,  and,  had  there  been  no  other  ground  for  its  admis- 
sion, that  fact  would  be  deemed  a  waiver  of  any  more  full 
pleading  on  this  ground ;  butthere  were  other  grounds.  The 
plaintiff  was  required  to  prove  the  loss,  and  this  involved 
proving  the  circumstances  of  the  fire ;  and  the  proof  on  this 
subject  went  in  as  a  part  of  those  circumstances.  There  was 
no  opportunity  for  the  plaintiff  to  object  on  the  ground  that 
it  was  proving  this  defence  not  pleaded,  and  the  failure  to 
object  on  that  ground  could  be  no  waiver  of  it. 

The  request  to  charge  as  to  increase  of  risk  by  the  presence 
of  benzine  became  immaterial  in  view  of  the  charge  upon 


FEBRUARY,   1882.  86T 


Gonther  v.  The  liyerpool  and  London  and  Globe  Insoranoe  Company. 

other  points ;  or,  rather,  if  the  charge  was  correct  otherwise, 
it  was  more  favorable  than  the  request  on  this  subject.  The 
charge,  as  given,  made  the  mere  presence  of  the  benzine  a  de- 
fence, unless  it  was  there  within  the  permission,  or  by  the  act 
of  a  gitMsi  trespasser.  A  charge  according  to  this  request 
would  only  have  made  its  presence,  if  it  increased  the  risk,  a 
defence  with  the  same  qualifications.  This  part  of  the  charge, 
where  it  differs  from  this  request,  could  have  done  no  wrong 
to  the  defendant. 

As  the  jury  were,  by  the  charge,  left  to  find  a  verdict  for 
the  plaintiff  if  they  should  find  either  that  Walker  put  the 
benzine  into  the  oil  room  on  his  own  account  outside  of  the 
carrying  on  of  the  hotel,  or  that  having  it  there  was  within 
the  permission,  the  verdict  rests  upon  the  soundness  of  both 
of  these  propositions. 

The  act  of  Walker  would  not  avoid  the  policy  unless  it 
can  be  said  to  have  been  in  some  way  done  under  or  by  aa- 
thority  from  the  plaintiff ;  and  then  only  unless  it  was  such 
an  act  as,  if  done  by  the  plaintiff,  would  avoid  the  policy. 
Mere  imprudence  or  negligence  of  either  would  not  have  that 
effect.  (  Wood  on  Fvre  Ins..  sec.  101.)  So,  the  mere  having 
the  benzine  there  and  drawing  it  by  artificial  light,  without  a 
prohibitory  clanse  in  the  policy,  would  not,  unless  done  with 
such  recklessness  as  to  show  an  intent  to  destroy  or  to  wil- 
fully expose  to  destruction,  of  which  there  was  no  evidence. 
{CTumdler  v.  Worceste?*  Ins.  Co.j  3  Cush.^  328.)  They  would 
not,  unless  these  things  would  avoid  the  policy,  because,  by  its 
terms,  it  was  agreed  that  they  should  avoid  it.  The  conditions 
relied  upon  commence  by  providing,  that,  if  the  risk  should 
be  increased  by  any  means  withiu  the  control  of  the  assured, 
and  continue  by  providing  that,  if  the  assured  shall  keep  so 
and  so,  the  policy  shall  be  void,  showing  that  the  acts  stipu- 
lated against  are  the  acts  of  the  assured.  In  the  last  clause, 
those  words  are  not  inserted,  but,  as  the  language  is  that  of 
the  company,  and  in  these  cases  is  to  be  taken  most  strongly 
against  it,  and  in  favor  of  the  assured,  they  may  well  be  con- 
sidered as  carried  forward  by  intention  into  the  other  clause. 


368  EASTERN  DISTRICT  OF  NEW  YORK, 

Ganther  v.  Th«  LlTerpool  and  London  and  Globe  Inanrance  CompaDy. 

{  Wood  on  Fire  Ins.,  sec.  57.)  It  is  hardly  to  be  supposed  that 
the  keeping  of  benzine,  mentioned  in  one  clause,  was  under- 
stood to  be  any  different  keeping  from  that  mentioned  in  a 
previous  clause.  In  this  view,  the  act  of  Walker  entirely 
outside  of  the  authority  of  the  plaintiff,  and  of  any  occupation 
of  the  premises  under  the  plaintiff,  could  not,  in  any  sense,  be 
justly  said  to  be  done  by  the  assured.  Beyond  this,  if  the  last 
clause  was  to  stand  by  itself,  on  its  own  language,  there  would 
remain  the  question  whether  such  an  act  as  the  jury  may  have 
found  Walker's  to  be  was  not  an  act  insured  against.  No 
one  would  probably  contend  but  that  it  would  have  been  if 
done  by  a  stranger  and  trespasser ;  and  probably  no  one  would 
<x>ntend  but  that  the  act  would  have  been  insured  against  if 
Walker  had  wilfully  fired  the  property ;  nor  but  that  it  would 
if  he  had  brought  the  benzine  there  as  a  means  to  fire  it  with. 
These  acts  would  have  been  so  because,  although  he  was  there 
and  doing  some  things  xmder  authority  derived  from  or  under 
the  plaintiff,  they  would  be  done  in  violation  of  authority,  and 
against  his  right.  They  would  have  caused  a  loss  that  he  was 
not  responsible  for,  and  against  which  he  was  insured.  Walk- 
er's authority  there  was  included  in  running  the  hotel,  and 
when  he  got  outside  of  that  he  was  outside  of  what  the  plaint- 
iff was  responsible  for,  and  what  he  did  outside  of  that  was 
wrongful  as  to  the  plaintiff  and  included  in  that  against  which 
the  phintiff  was  insured,  and  not  in  that  which  he  agreed  with 
the  defendant  to  prevent. 

The  privilege  to  use  gasoline  gas  was  without  limitation  or 
restriction,  except  as  to  location  of  the  apparatus  and  the  em- 
ployment of  heat  in  the  process.  The  defendant  argues  for  a 
construction  of  it  the  same  in  effect  as  if  it  was  a  privilege  to 
use  gasoline  only  in  the  apparatus  mentioned ;  but  that  is  not 
the  language.  The  privilege  is  to  use  that  gas,  and  the  location 
of  the  apparatus  for  making  it  only  is  fixed.  The  gas  could 
not  be  made  without  gasoline  or  benzine,  and  the  privilege  to 
make  it  would  necessarily  include  the  presence  of  the  things 
of  which  it  must  be  made,  and  these  things  must  be  brought 
to  the  premises  somehow,  and  kept  somewhere  for  use  as 


FEBRUABT,  1882.  869 


Gimther  v.  The  Liyerpool  and  London  and  Globe  Iflsoranoe  Company. 

looted,  and,  therefore,  it  would  include  the  necessary  bring- 
ing and  storing.  The  privilege  was  broader  than  the  literal 
import  of  the  words,  bat  how  much  broader  could  not  be  de- 
termined as  a  matter  of  law.  The  question  was  one  of  fact,  to 
be  determined  upon  the  circumstances  and  necessities  of  the 
case.  The  defendant's  eyidence  went  to  show  that  the  appa- 
ratus was  the  place  in  which  the  material  should  be  stored. 
This  was  proper  evidence,  and  the  propriety  of  it  showed  that 
there  was  a  question  of  fact  on  which  it  might  have  weight, 
and  this  qaestion  could  only  be  as  to  whether  the  material 
should  be  stored  in  the  apparatus  or  elsewhere ;  and,  also,  that 
there  was  something  in  the  case  which  might  be  weighed  on 
the  other  side  of  the  question,  and  which  this  testimony  was 
to  meet.  If  the  material  was  to  be  stored  elsewhere,  the 
proper  place  where  would  also  involve  a  question  of  fact  to 
be  determined  by  the  jury.  And,  if  it  was  within  the  privi- 
l^e  to  store  it  elsewhere,  then  the  defendant  took  the  risk  of 
the  premises,  when  it  might  be  so  stored,  with  it  there.  This 
risk  would  be  no  greater  or  different,  whether  it  was  stored 
there  for  ase  in  the  apparatus,  or  for  use  in  some  other  mode 
on  the  premises,  or  not  to  be  used  on  the  premises  at  all. 
Other  use  on  the  premises  might  be  prohibited,  but,  if  the 
prohibited  use  was  not  made,  the  keeping  for  such  use  would 
not  vitiate  the  policy,  if  the  keeping  it  was  not  prohibited. 
This  case,  in  this  aspect,  is  like  Citizen*s  Insurance  Co.  v.  Mb- 
Zatighlinj  (53  Penn.^  485,)  where  the  policy  granted  the  privi- 
lege of  keeping  not  more  than  five  barrels  of  benzole  in  a 
«mall  shed  entirely  detached  from  all  the  other  buildings,  sit- 
uated on  the  rear  end  of  the  lot,  about  one  hundred  feet  from 
the  main  building,  and  nowhere  else  on  said  premises.  The 
buildings  insured  were  a  patent  leather  manufactory ;  benzole 
was  used  in  the  manufacture,  and  a  workman  carried  a  bucket 
containing  three  or  four  gallons  of  it  into  the  middle  of  a  room 
in  the  factory,  and  set  it  down  there,  and  turned  away  from 
it,  and  it  took  fire  from  an  unknown  cause,  and  communicated 
the  fire  to  the  building,  which  was  consumed,  and  this  was  the 
loss  in  controversy.  The  jury  found  that  this  was  one  of  the 
Vol.  XX.— 24 


370  BOUTHERir  DISTRICT  OF  HEW  YORK, 

liodMy  9.  Stein* 

risks  covered  by  tbe  policy,  and  the  insured  recovered  for  the 
loss.  In  the  case  under  consideration  there  seemed  to  be  no* 
way  bnt*  to  submit  the  question  as  to  the  extent  of  the  risk 
taken  by  this  clause,  and  whether  it  covered  the  benzine  in  the 
oil  room,  to  the  jury,  as  was  done. 

The  motion  for  a  new  trial  is  overruled,  and  judgment  for 
the  plaintiff  on  the  verdict  is  ordered. 

Oeorge  H.  Forsterj  for  the  plaintiff. 

WiUiam  Allen  BuUer^  for  the  defendant. 


John  P.  Lendsat  va,  I^ewis  Stein.    In  EQCimr. 

Letton  patent.  No.  202,786,  granted  to  John  P.  Tindaay,  April  28d,  1878,  for 
an  "  improTeoi«Dt  in  aleere  Buppoiien,*  are  Talid. 

The  patented  supporter  coneiete  of  two  of  the  daeps  patented  to  Lindaay  fay 
patent  No.  166,429,  November  8d,  1874,  one  at  each  end  of  a  connection 
either  elastic  or  non-elaatic.  Bnt  the  case  is  not  one  of  a  mere  double  nse  of 
the  dasp. 

lindsay  applied  for  a  patent  for  the  supporter  in  October,  1874.  The  appfi- 
cation  was  rejected  in  NoTcmber,  1874,  and  again  in  January,  1876,  and 
nothing  more  was  done  upon  it.  In  April,  1878,  a  new  application  was  filed, 
on  which  the  patent  was  granted:  Hdd,  that,  under  §  4,894  of  the  Reyised 
Statutes,  the  first  application  was  abandoned,  because  not  prosecuted  within 
two  years  after  its  rejection,  but  the  inyentlon  was  not  thereby  abandoned,, 
and  a  second  application  could  be  made. 

The  patent  would  be  inyalid  if  the  invenUon  covered  by  it  were  in  public  use 
or  on  sale  in  this  country  for  more  than  two  years  before  the  second  appli- 
cation. 

The  features  of  Lindsay's  inyention  pointed  out,  on  the  question  of  novelty. 

The  question  of  the  infringement  of  the  patent  considered. 

(Before  Blatchfobd,  J.,  Southern  District  of  New  Tork,  February  24th,  1882.) 

Blatohfosd,  J.     This  suit  is  bronght  on  letters  patent  No. 
202,785,  granted  to  the  plaintiff,  April  23d,  1878,  for  an 


FEBRUARY,   1882.  871 


Lindsay  v.  Stein. 


^*  improvement  in  sleeve  supporters."  Some  time  in  1873  the 
plaintiff  invented  a  clasp.  He  applied  for  a  patent  for  it  on 
the  Slst  of  Angast,  1874,  and  obtained  a  patent  for  it,  Ko. 
166,429,  November  8d,  1874.  The  specification  of  that  pat- 
ent speaks  of  the  clasp  as  one  ''  for  stocking  supporters  or 
various  other  articles  of  wearing  apparel."  The  clasp  is  com- 
posed of  two  jawed  levers,  pivoted  together,  and  a  spring 
arranged  between  them.  The  tail  of  each  jaw  lever  is  made 
concavo-convex  in  transverse  section,  the  lower  lever  with  its 
jaw  being  extended  within  the  upper  lever  and  its  jaw.  At 
the  place  of  connection  of  the  two  levers  the  lower  one  is 
punched  inward  on  its  flanks,  so  as  to  form  two  concavo-con- 
vex teats  or  projections.  The  spring  is  shaped  or  made  of 
wire,  and  has  an  eye  which  is  slipped  upon  the  two  teats,  after 
which  the  upper  jaw  lever  is  arranged  with  respect  to  the 
spring  and  the  lower  jaw  lever  in  proper  position,  and  then 
is  punched  inward  on  its  flanks,  so  as  to  enter  the  two  teats, 
and  thus  the  two  levers  are  connected  and  pivoted  together. 
The  levers  cover  and  protect  the  spring,  and,  as  the  specifica- 
tion says,  prevent  it  ^^  from  being  caught  in  the  stocking  or 
clothing  "  and  from  moving  laterally  or  getting  out  of  place. 
The  specification  says  that  each  of  the  jaws  may  be  notched 
or  provided  with  teeth  in  its  opposite  edges,  and  that,  by  hav- 
ing the  jaw  of  the  lower  lever  close  into  the  concavity  of  the 
jaw  of  the  upper  lever,  a  much  better  hold  of  the  "  material 
or  stocking "  will  be  secured  than  when  the  jaws  abut  to- 
gether at  their  edges.  The  tail  of  the  upper  lever  has  a 
slotted  head,  which  is  projected  from  the  tail  in  such  manner 
that  its  flanks,  in  case  the  clasp  is  pressed  '^  against  tlie  leg  of 
the  wearer,"  may  bring  up  against  it, "  in  a  manner  to  prevent" 
the  tail  of  the  lower  jaw  from  being  accidentally  moved  in- 
ward so  as  to  open  the  jaws  sufficiently  to  cause  them  to  let 
go  their  hold  "  on  the  stocking ; "  and  "  the  slotted  head  is 
also  to  enable  the  clasp  to  be  attached  to  a  strap  of  a  stocking 
supporter."  The  claim  of  No.  156,429  is  this :  "  The  clasp 
composed  of  the  levers  provided  with  the  operative  spring, 
pivoted  together  by  means  of  the  indentations,  as  described, 


872  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Lindsay  tr.  Stein. 

and  made  with  concaycK^onvex  jaws  and  taik,  and  with  the 
one  jaw  to  close  within  the  concavity  of  the  other,  all  sab^ 
Btantially  as  specified." 

In  January  or  February,  1874,  the  plaintiff  invented  the 
sleeve  supporter  afterwards  patented  by  No.  202,735.     It 
consisted  of  two  of  the  clasps  described  in  Ko.  156,429,  one 
being  at  each  end  of  a  connection  either  elastic  or  non-elastic. 
!No.  202,735  describes  the  supporter  as  one  '^  for  the  sleeves 
of  shirts  and  other  garments."    It  is  applied  to  the  sleeve  in 
a  direction  longitudinal  with  the  arm,  '^  thereby  avoiding  the 
compression  and  consequent  interference  with  the  free  circu- 
lation of  the  blood  incident  to  that  class  of  supporters  which 
partially  or  entirely  encircle  the  arm."    One  clasp  grasps  a 
fold  of  the  lower  part  of  the  sleeve  to  be  supported,  while  the 
other  clasp  grasps  a  fold  of  the  upper  or  supporting  portion  of 
the  sleeve,  the  lower  portion  of  the  sleeve  being  drawn  up  to 
the  desired  distance  before  attaching  the  second  clasp,  the  in- 
termediate portion  between  the  two  clasps  being  drawn  up 
into  folds  by  that  operation.     The  specification  disclaims  ^^  a 
garment  supporter  consisting  of.  an  elastic  strap  and  two 
tongued  plates  attached  to  its  ends,  the  tongues  being  made 
to  enter  holes  in  the  garments,  and  being  afterward  clinched 
down   thereon."    It  also  says:     "My  improved  supporter 
simply  grasps  the  sleeve,  and  does  not  go  into  or  through  it, 
and,  consequently,  in  detaching  the  supporter  therefrom,  it 
does  not  require  to  be  pulled  lengthwise,  and  thereby  cause 
undue  strain,  which  tends  to  tear  the  sleeve.     Nor  does  my 
supporter  require  cuts  or  holes  to  be  made  in  the  sleeve  to  re- 
ceive it,  as  is  usually  the  case  with  garment  supporters. '^     The 
claims  of  No.  202,735  are  two,  as  follows :     "  1.    The  im- 
proved method  of  supporting  or  shortening  the  sleeves  of 
shirts  and  other  garments  without  compression,  to  avoid  in- 
terference with  the  free  circulation  of  the  blood  of  the  wearer 
incidental  to  the  use  of   encircling  bands,  by  means  of  a 
holder,  consisting,  essentially,  of  a  short  piece  of  elastic  or 
non-elastic  webbing,  provided  at  each  end  with  an  automatic 
clasping  device  applied  to  the  sleeve  in  the  direction  of  its 


FEBRUARY,  1882.  878 


lindsay  v.  Stein. 


length,  subBtantiallj  as  described  and  shown.  2.  As  a  new  ar- 
ticle of  manufacture,  a  sleeve  supporter  consisting  of  the 
strip  B,  provided  at  its  ends  with  the  clamping  jaws  A  A,  all 
combined  and  adapted  for  nse  substantially  as  described." 
The  plaintiff,  after  making  one  of  these  supporters  in  January 
or  February,  1874,  showed  it  to  other  persons  and  illustrated 
its  use  at  that  time,  and  used  it  himself  satisfactorily  in  March 
or  April,  1874.  He  made  a  second  supporter  of  the  same  struct- 
ure in  September,  1874,  as  a  model  for  an  application  for  a  pat- 
ent. His  application  was  filed  in  the  Patent  Office,  complete, 
October  28th,  1874.  The  specification  was  sworn  to  October 
20th,  1874.  The  drawings  were  substantially  the  same  as 
those  in  Ko.  202,735,  and  the  description  was  to  the  same 
effect.  The  claim  was  substantially  like  claim  2  of  No. 
302,735.  The  spring  closes  the  jaws  and  they  are  opened 
by  pushing  the  tails  of  the  jaws  towards  each  other  against 
the  action  of  the  spring,  the  tail  of  the  lower  jaw  projecting 
downward.  This  application  was  rejected  November  9th,  1874, 
on  the  ground  that  it  did  not  involve  invention,  in  view  of 
No.  156,429,  and  of  a  patent  to  Langford  and  one  to  Boughton. 
On  December  26th,  1874,  amendments  were  filed.  One,  to 
obviate  the  Boaghton  patent,  disclaimed  a  supporter  consist- 
ing of  an  elastic  strap  and  two  hooked  plates  fixed  to  its  ends, 
t£e  hooks  ^'  being  to  enter  a  garment."  Another  disclaimed 
either  of  the  clasps  separate  from  the  strap.  The  amend- 
ments were  considered,  and,  on  January  2d,  1875,  the  appli* 
cation  was  again  rejected,  in  view  of  the  same  references. 
Nothing  more  was  done  till  April,  1878.  On  the  9th  of 
April,  1878,  a  new  application  was  filed,  complete,  with  a 
new  petition,  oath,  specification,  drawing  and  model,  and  a 
new  fee.  The  oath  was  made  April  5th,  1878.  On  the  11th 
of  April,  1878,  the  application  was  rejected  as  being  '^  found 
to  be  lacking  in  patentable  novelty,  in  view  of  the  state  of  the 
art,"  because  the  clasp  was  old,  as  seen  in  No.  156,429,  and 
because  ^^  suspending  straps,  composed  of  an  elastic  band,  with 
a  clasp,  buckle  or  other  adjusting  device  on  each  end,  is  also 
old,  and,  therefore,  in  the  present  instance,  the  alleged  inven- 


374  SOUTHERN  DISTRICT  OF  NEW   YORK, 

LlDdiay  v.  Stein. 

tion  is  but  the  mere  Bubstitution  of  one  old  clasp  in  the  pkce 
of  another  upon  the  ends  of  the  strap,  and  is  not  deemed  an 
invention."  Keference  was  made,  in  the  letter  of  rejection,  to 
patent  No.  88,984,  to  Bobbins,  and  to  patents  to  Oibbons, 
Church  and  Eames,  and  Philbrook.  On  the  11th  of  April, 
1878,  after  said  rejection,  amendments  were  made,  making  the 
specification  and  claims  exactly  as  they  are  in  Ko.  202,735. 
The  application  was  rejected  again  on  the  13th  of  April,  1878, 
on  the  same  references  and  on  a  patent  to  Sanford,  but  on  the 
same  day  the  patent  was  ordered  to  be  issued. 

It  is  contended,  for  the  defendant,  that  No.  156,429  con- 
tains everything  that  is  found  in  No.  202,735  ;  that  there  was 
no  invention  involved  in  passing  from  the  clasp  to  the  struct- 
ure with  one  of  the  clasps  at  each  end  of  it ;  and  that  the  case 
is  one  of  mere  duplication  or  double  use,  or,  at  least,  of  merely 
a  new  application  of  the  clasp.  It  is  quite  apparent,  from 
the  evidence,  that  the  clasp  was  applicable,  and  was  ap- 
plied, for  use,  by  being  attached  to  one  end  of  a  piece  of 
elastic  and  then  fastened  to  a  stocking  to  hold  it  up,  the 
other  end  of  the  elastic  being  fastened  by  a  button  or  other 
device  to  another  garment  above.  Large  numbers  of  the 
clasps  were  made  and  sold  and  used  in  that  way.  The  plaintiff, 
almost  simultaneously  with  his  invention  of  the  clasp,  capable 
of  such  separate  use,  invented  the  supporter  consisting  of  the 
two  clasps  and  the  connecting  strip.  The  latter  invention  was 
completed  before  he  applied  for  the  patent  for  the  former. 
In  that  application  he  might  have  covered  the  supporter  and 
also  claimed  the  clasp  separately,  and  one  patent  might  have 
embraced  both.  The  supporter  is  not  merely  a  new  applica- 
tion of  the  clasp.  It  is  something  more.  As  a  structure,  the 
two  clasps  with  the  uniting  strip  will  do  what  one  clasp,  or 
one  clasp  with  an  attached  webbing,  cannot  do.  It  is  an  ar- 
ticle complete  in  itself,  capable  of  use  at  any  place  without 
any  appliance  except  what  it  contains,  and  of  being  moved 
from  one  place  to  another,  without  any  previous  special  prep- 
aration of  the  garment  to  receive  it.  It  involves  invention, 
beyond  what  the  clasp  alone  indicated. 


FEBRUARY.   1882.  876 


Lindsay  v,  Steio. 


The  specification  of  No.  202,735  is  criticised,  as  being  ob- 
sscnre  and  as  not  pointing  out  what  invention  is  claimed.  The 
first  claim  is  properly  to  be  constraed  as  a  claim  to  using  the 
structure  described,  consisting  of  material  with  the  clasp  de- 
scribed, or  its  substantial  equivalent,  at  each  end,  when  such 
vstmctnre  is  applied  to  the  sleeve  in  the  direction  of  its  length. 
There  is  no  valid  objection  to  this  claim.  The  article  can  be 
used  otherwise  than  lengthwise  of  the  sleeve.  The  second 
claim  is  for  the  article,  irrespective  of  the  manner  in  which  it 
is  used.  The  first  claim  may  be  unnecessary  and  there  may 
be  little  practical  difierence  between  the  two  claims.  But  the 
claims  sufficiently  point  out  the  inventions  and  they  are  pat- 
entable. 

By  §  12  of  the  Act  of  March  2d,  1861,  (12  0.  S.  Stat  at 
Large^  248,)  it  was  enacted  as  follows :  '^  All  applications  for 
patents  shall  be  completed  and  prepared  for  examination  with- 
in two  years  after  the  filing  of  the  petition,  and,  in  default 
thereof,  they  shall  be  regarded  as  abandoned  by  the  parties 
thereto ;  unless  it  be  shown  to  the  satisfaction  ^of  the  Commis- 
sioner of  Patents  that  such  delay  was  ujia voidable."  By  §  32 
of  the  Act  of  July  8th,  1870,  (16  M,  202,)  it  was  enacted  as 
follows :  '^  All  applications  for  patents  shall  be  completed  and 
prepared  for  examination  within  two  years  after  the  filing  of 
the  petition,  and,  in  default  thereof,  or  upon  failure  of  the  ap- 
plicant to  prosecute  the  same  within  two  years  after  any  action 
therein,  of  which  notice  shall  have  been  given  to  the  applicant, 
"they  shall  be  regarded  as  abandoned  by  the  parties  thereto,  un- 
less it  be  shown  to  the  satisfaction  of  the  Commissioner  that 
«uch  delay  was  unavoidable."  This  section  is  substantially  re- 
enacted  in  §  4,894  of  the  Revised  Statutes,  approved  June  22d, 
1874,  the  only  change  being  that  the  words  "  the  filing  of  the 
petition,"  in  §  32,  are  altered  to  the  words  **  the  filing  of  the 
Application,"  in  §  4,894.  On  comparing  §  32  of  the  Act  of 
1870  with  §  12  of  the  Act  of  1861,  it  is  seen  that  a  material 
change  was  made,  by  the  addition,  in  §32,  of  the  words, 
^^or  upon  failure  of  the  applicant  to  prosecute  the  same 
'within  two  years  after  any  action  therein."    The  effect  of 


876  SOUTHERN  DISTRICT  OP  NEW  YORK, 

Lindsay  v.  Stein. 

the  addition  was,  that  when  an  applicant  for  a  patent  should 
make  an  application,  and  complete  it  for  examination,  and 
the  Patent  Office  should  take  action  npon  it,  and  reject 
it,  and  notify  him  of  such  action,  and  he  should  fail  Uy 
prosecute  it  within  two  years  after  such  rejection,  it  should 
be  regarded  as  abandoned,  so  that  it  could  not  be  resumed  and 
prosecuted  further  after  the  lapse  of  such  two  years,  unless  it 
should  be  shown  to  the  satisfaction  of  the  Commissioner  of 
Patents  that  such  delay  was  unavoidable.  It  is  not  the  inven- 
tion which  should  be  regarded  as  abandoned,  but  the  applica- 
tion. In  the  present  case  the  application  of  October  28th, 
1874,  was  rejected  a  second  time  January  2d,  1875.  That 
application  was  never  prosecuted  at  all  after  that.  More  than 
two  years  elapsed,  and,  in  December,  1 877,  the  plaintiff  em- 
ployed new  attorneys,  and  gave  them  a  power  of  attorney,  and 
revoked  the  power  of  attorney  given  to  his  former  attorney. 
A  paper  to  that  effect  was  filed  in  the  Patent  Office  December 
17th,  1877,  in  the  files  of  the  first  application.  The  new 
attorneys,  with' the  whole  matter  before  them,  advised  the 
plaintiff  that  he  had  better  make  a  new  application.  They 
did  this,  unquestionably,  because  they  saw  that  they  could  not 
show  to  the  satisfaction  of  the  Commissioner  that  the  delay 
beyond  two  years  from  January  2d,  1875,  was  unavoidable. 
The  new  appb'cation  was  made,  complete,  April  9th,  1878. 

The  defendant  contends  that  the  effect  of  the  Act  of  1870 
is,  that  when  an  application  is,  under  §  32,  to  be  regarded  aa 
abandoned,  no  new  application  for  a  patent  for  the  same  thing 
can  be  subsequently  made.  There  is  nothing  to  prevent  a 
subsequent  application.  When  made,  it  can  derive  no  aid,  as 
to  time,  from  the  prior  abandoned  application,  and  the  appli- 
cant must  stand,  as  to  defences  in  suits  on  the  patent,  as  if  the 
new  application  were  the  first  application.  Therefore,  as 
applied  to  the  present  case,  the  words  '^  two  years  prior  to  his 
application,"  in  §  4,886  of  the  Bevised  Statutes,  and  the  words 
"  two  years  before  his  application  for  a  patent,"  in  §  4,920, 
must  mean,  two  years  before  April  9th,  1878,  so  that  No. 
202,735  wiU  be  invalid,  if  the  inventions  covered  by  it  were- 


FEBRUARY.  1882.  37T 


liodsay  v.  Stein. 


in  public  use  or  on  Bale  in  this  conntry  for  more  than  two 
years  before  April  9th,  1878.  The  dedsions  of  the  Conrtg 
nnder  the  statutory  provisions  before  that  in  §  82  of  the  Act 
of  1870,  in  regard  to  the  continuity  of  an  application  once 
made,  can  have  no  application  to  a  case  like  the  present,  in 
view  of  the  express  provision  of  §  32.  An  application  which 
is  to  be  ^^  regarded  ias  abandoned  "  must  be  regarded  as  aban- 
doned by  the  Commissioner  and  the  Courts,  aud,  if  it  is  to  be 
regarded  as  abandoned,  it  cannot  be  regarded  as  subsisting  for 
the  purposes  of  §§  4,886  and  4,920.  The  cases  of  Singer  v. 
Braunadorf^  (7  Blatchf.  C.  C,  jB.,  521,)  Blcmdy  v.  Qriffithy 
(8  FUKer^B  Pat.  Cas€8,  609,)  H(rwes  v.  McNeal^  (15  Blatchf. 
C.  O.  R.,  103,)  Godfrey  v.  Eamee^  (1  Wallace,  817,)  and 
Smith  V.  Qoodyea/r  Dental  Vulcanite  Co.,  (3  Otto,  486,)  arose 
under  statutory  provisions  enacted  before  the  Act  of  1870  and 
can  have  no  application  to  the  present  case. 

It  is  argued,  for  the  plaintiff,  that,  as  No.  202,735  waa 
granted  on  the  second  application  for  the  same  invention  that 
was  claimed  in  the  first  application,  it  must  be  presumed  that 
the  Commissioner  had  before  him  evidence  showing  that  the 
delay  in  prosecuting  the  first  application  was  unavoidable. 
This  would  be  so  if,  in  fact,  the  Commissioner  had  allowed  the 
first  application  to  be  prosecuted  further.  But  he  did  not. 
It  was  the  application  of  April  9th,  1 878,  that  was  rejected 
April  11th,  1878,  and  granted  April  38th,  1878,  and  No. 
202,785  was  issued  on  that  application,  as  appears  on  its  face 
and  by  the  records  of  the  Patent  OflSce. 

The  defences  of  want  of  novelty  and  of  public  use  and  sale 
of  the  invention  for  more  than  two  years  before  the  applica- 
tion for  the  patent  are  urged  by  the  defendant.  The  latter 
defence  is  not  set  up  in  the  answer,  but  the  plaintiff  appeara 
desirous  of  having  it  considered  under  the  proofs. 

There  is  no  satisfactory  evidence  that  the  plaintiff,  either 
by  himself  or  by  his  agents,  allowed  his  sleeve  supporter  to  be 
in  public  use  or  on  sale  at  any  time  prior  to  two  years  before 
April  9th,  1878 ;  or  that  a  structure  substantially  like  his  waa 
in  public  use  or  on  sale  at  any  time  prior  to  two  years  before 


878  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Lindflay  v.  Stein. 

April  9th,  1878.  The  date  of  any  sale  by  Taylor  Brothers 
cannot  be  fixed  earlier  than  January,  1877.  There  was  no  sale 
by  Shelby  before  the  last  part  of  1876.  The  Thomas  transac- 
tion was  in  May,  1876.  The  evidence  as  to  sales  by  Rollins 
does  not  show,  beyond  a  reasonable  doubt,  that  such  sales 
were  made  before  April  10th,  1876. 

Defendant's  Exhibits  1  and  2  are  arranged  to  penetrate  or 
pass  through  at  one  end  one  portion  of  the  article  to  be  sup- 
ported, while  at  the  other  end  are  loops  or  hooks  to  pass  over 
or  around  buttons  or  some  other  previously  arranged  attaching 
means  formed  upon  the  garment.  Defendant's  Exhibits  Nob. 
3  and  16  have  no  hinged  jaws  and  require  a  further  shortening 
of  the  garment  to  allow  of  attaching  or  disengaging  the  wires, 
and  the  device  is  liable  to  lose  its  hold  and  cannot  seize  the 
margin  of  a  garment.  Defendant's  Exhibit  No.  21  is  the 
patent  to  Bobbins,  Ko.  88,984,  and  defendant's  Exhibit  No. 
5  is  a  garter  made  according  to  that  patent,  in  part.  They 
fihow  devices  the  structure  of  which  is  such  as  to  necessitate 
the  penetration  of  the  garment  at  each  end  of  the  webbing, 
by  the  devices.  The  Eobbins  patent  is  the  only  one  of  the 
prior  patents  referred  to  by  the  Patent  OlKce,  (except  No. 
156,429,)  which  has  been  put  in  evidence  by  the  defendant. 
It  shows  two  like  devices  at  each  end  of  a  piece  of  webbing. 
It  is  of  the  date  of  1869.  But  the  existence  in  it  of  identity 
between  the  fastening  devices  at  each  end  of  it  does  not,  in 
view  of  the  evidence  as  to  the  invention  by  the  plaintiff  of  the 
clasp  and  of  the  supporter,  and  of  the  characteristic  features  of 
the  supporter,  show  a  want  of  patentability  in  the  invention  of 
the  supporter.  The  Ellis  patent,  No.  187,539,  requires  a  but- 
ton at  one  end  of  the  device.  The  Cook  patent.  No.  55,064, 
has  no  clamping  jaws  and  no  webbing  with  holding  means 
at  each  end  of  it.  The  Kendall  or  Vail  patent,  No.  61,011, 
has  no  clamping  jaws  on  each  end  of  a  strip  of  webbing.  De- 
fendant's Exhibit  No.  22,  the  Demorest  book,  is  not  proved 
as  to  its  date  of  publication  and  is  not  set  up  in  the  answer. 
Independently  of  this,  it  is  not  clear  what  the  thing  shown  in 
it  is,  or  how  such  thing  is  to  be  used.     From  what  can  be 


FEBRUARY,  1882.,  879 


Lindsay  v.  Stein. 


made  oat  it  is  liable  to  the  same  objections  as  defendant's  Ex- 
hibit 3,  requiring  the  fabric  to  be  forced  into  a  narrow  opening, 
and  requiring  increased  shortening  to  free  the  fabric,  and  hav- 
ing no  clamping  jaws.  As  to  the  Exhibits  Furness  and  Fnr- 
ness  No.  3,  no  original  article  actually  made  more  than  two 
years  before  April  9th,  1878,  is  produced.  The  question  as  to 
the  time  when  any  sleeve  supporters  of  the  kind  were  made 
and  sold  rests  wholly  on  the  unaided  memory  of  Mr.  Furness, 
and,  in  view  of  all  the  evidence,  it  must  be  held  that  the  de- 
fence as  to  the  Famess  sleeve  supporter  is  not  established. 
Irrespective  of  this,  it  is  not  at  all  clear  that  the  Furness 
Exhibits  embrace  the  plaintifi^s  invention,  or  will  practically 
accomplish  the  results  which  the  plaintiff's  supporter  will 
accomplish.  None  of  the  prior  articles  or  patents  anticipate 
the  invention  of  the  plaintiff,  and  none  of  the  defences  con- 
sidered are  established. 

It  appears  that  the  patented  article  is  one  of  great  utility 
and  has  found  a  ready  market,  as  compared  with  any  prior 
structures.  Under  the  plaintiff's  authority,  from  860,000  to 
1,160,000  pairs  of  his  supporters  have  been  sold  during  1878, 
1879  and  1880,  and  there  have  been  infringements.  The  ar- 
ticle combines  these  points  of  advantage — it  does  not  compress 
the  arm ;  it  does  not  require  adjustment  of  length  for  arms  of 
different  sizes ;  it  does  not  require  previous  preparation  of  the 
garment,  by  putting  on  buttons  or  making  eyelet  holes  at 
either  end ;  it  can  be  used  to  support  cuffs  and  stiff  articles  on 
their  edges ;  it  can  be  applied  by  one  hand ;  it  is  secured  with- 
out perforating  the  garment ;  it  is  not  pulled  off  by  a  slight 
strain ;  it  does  not  require  to  be  pulled  lengthwise  to  release 
its  hold.  It  has  superseded  older  articles  and  is  largely  rec- 
ognized by  the  public  and  licensees  as  a  useful  invention.  All 
these  matters  are  very  persuasive  in  favor  of  its  patentability. 
(Smith  V.  Ooodyear  Dental  Vulcanite  Co.^  3  Otto^  486,  406.) 

The  defendant  has  sold  two  structures.  No.  1  and  No.  2. 
No.  2  is  identical  with  the  plaintiff's,  in  all  substantial  partic- 
ulars. It  is  a  sleeve  supporter,  formed  of  a  short  piece  of 
elastic  webbing,  with  a  clasp  at  each  end.    Each  clasp  is  com- 


380  SOUTHERlf  DISTRICT  OF  NEW  TORE, 

LlndMy  w.  Stein. 

posed  of  two  jawed  levers,  pivoted  together,  with  a  spring 
between  them,  which  closes  the  jaws  automatically,  and  the 
jaws  are  opened  by  pressing  together  the  tails  of  the  levers. 
Each  jaw  has  across  its  end  teeth  or  projections  which  take 
into  corresponding  indentations  in  the  end  of  the  other  jaw. 
This  construction  is  an  equivalent  construction  for  the  dosing 
of  the  lower  jaw  within  the  upper  jaw,  as  shown  in  No. 
156,429  and  in  the  drawings  of  No.  202,735.  The  bending  of 
the  fabric,  in  the  one  case  transversely  and  in  the  other  case 
longitudinally,  assists  in  holding  it,  though  it  by  no  means  fol- 
lows that  No.  202,735  would  not  be  infringed  if  the  clasps  had 
flush  meeting  edges  in  the  jaws  with  a  spring,  or  means  of 
holding  them  together,  sufficiently  powerful.  No.  1  is  a 
sleeve  supporter  having  at  each  end  of  a  piece  of  elastic  web- 
bing a  clasp  made  of  two  jaws  of  springy  metal,  the  end  of 
each  of  which  is  a  lip  projecting  towards  the  other  jaw,  one 
lip  shutting  inside  of  the  other  and  the  ends  of  the  lips  not 
meeting.  There  is  a  slide  enclosing  the  shanks  of  the  two 
jaws,  and  the  bite  is  made  by  sliding  the  slide  towards  the 
lips,  which  forces  the  lips  together.  Sliding  the  slide  in  the 
reverse  direction  allows  the  jaws  to  open,  which  they  do  by 
their  springy  action,  they  being  set  to  stand  open  unless  made 
to  shut.  They  shut  against  the  action  of  the  spring,  while 
in  the  plaintiff's  form  the  clasp  opens  against  the  action  of  the 
spring.  The  form  of  clasp  in  No.  1  is  substantially  the  clasp 
shown  in  the  Ellis  patent,  No.  137,539,  granted  April  Sth^ 
1873.  But  that  patent  shows  that  Ellis  contemplated  the  use 
of  only  one  clasp,  and  that  at  the  top  of  a  stocking,  while 
above  the  supporter  was  to  be  attached  by  a  button  to  a  waist- 
band. No.  1  has  all  the  points  of  advantage  of  the  plaintiff's 
structure.  It  has  an  automatic  clasping  device  at  each  end, 
consisting  of  clamping  jaws,  and  the  structure  as  a  whole,  and 
in  its  pai*tB,  and  in  their  co-operation  to  effect  the  result  pro- 
duced by  the  whole,  is  the  equivalent  of  the  plaintiff's  struc- 
ture. The  change  in  the  springy  action,  to  hold  open  instead 
of  to  hold  shut,  is  immaterial  in  regard  to  the  action  of  the 
structure  as  a  whole.    There  was  nothing  in  the  Ellis  clasp  by 


MARCH,   1882.  881 


Donnelley,  Gaaaette  A  Loyd  v.  Iren. 


itself  to  indicate  the  plaintiff's  supporter  or  Ko.  1,  any  more 
than  there  was  anything  in  the  plaintiff's  clasp  by  itself  to 
indicate  the  plaintiff's  supporter  or  No.  2.  On  the  foregoing 
i^onsiderations  it  must  be  held  that  both  No.  1  and  No.  2  in- 
fringe the  second  claim  of  No.  202,735,  and  there  must  be  a 
decree  to  that  effect  and  for  an  account  of  profits  and  damages, 
with  a  perpetual  injunction,  and  costs  to  the  plaintiff. 


Mtmean  <&  Philipp^  for  the  plaintiff. 
«/.  B.  Staples^  for  the  defendant. 


DoiiOirELLEY,   GaSSSITB  &  LoTD 

Matthew  J.  Itebs  Ain>  James  Sttllivan.    Ik  Equift. 

The  title  deposited  with  a  yiew  to  a  oopyright  for  a  book  was  this :  *'  Orer  One 
ThonBand  Recipes.  The  Lake- Side  Cook  Book;  A  Complete  Manaal  of 
Practical,  Economical,  Palatable  aod  Healthfdl  Cookery.  Chicago :  Donnelley, 
Loyd  and  Company,  1878.**  The  book  was  published  with  this  title  page  : 
**  The  Lake-Side  Cook  Book  No.  1.  A  Complete  Manaal  of  Praotioal,  Eoo- 
nomical.  Palatable  and  Healthful  Cookery.  By  N.  A.  D.,"  followed  by  the 
imprint  of  the  place  of  publication  and  the  name  of  the  proprietor  and  the 
notice  of  oopyright,  on  the  title  page :  Htld,  that  the  omission,  in  the  title 
page  of  the  published  book,  of  the  words  '*  Otst  One  Thousand  Recipes," 
and  the  addition,  in  it,  of  the  words  "  No.  1 "  and  "  By  N.  A.  D."  were  im- 
material, and  that  the  title  published  was  deposited,  in  compliance  with 
§  4,966  of  the  Reyised  Stotutes. 

(Before  Blatohpobd,  J.,  Southern  District  of  New  York,  March  4th,  1882.) 

Blatohfobd,  J.  On  the  19th  of  April,  1878,  Donnelley, 
Lojd  and  Company,  a  copartnership  firm,  deposited  in  the  of- 
fice of  the  Librarian  of  Congress  the  title  of  a  book,  the  title 
or  description  whereof  was  in  the  following  words :    '^  Over 


382  SOUTHERN  DISTRICT  OF  IHSW  YORK, 

DoniMlIey,  GuMtto  A  Loyd  «.  Iven. 


One  Thousand  Recipes.  The  Lake-Side  Ck>ok  Book ;  A  Com- 
plete Maunal  of  Practical^  Economical,  Palatable  and  Health- 
fol  Cookery.  Chicago:  Donnellej,  Lojd  and  Company, 
1878,"  the  right  whereof  they  claimed  as  proprietors  in  con- 
formity with  the  laws  of  the  United  States  respecting  copy- 
rights. Whatever  right  and  title  the  firm  acquired  in  the 
copyright  it  subsequently  assigned  to  the  plaintiff.  The  firm 
and  the  plaintiff,  in  publishing  the  book  which  it  is  claimed 
the  copyright  applies  to,  have  always  published  it  with  the 
following  title  page :  "  The  Lakeside  Cook  Book  No.  1.  A 
Complete  Manual  of  Practical,  Economical  and  Palatable  and 
Healthful  Cookery.  By  N.  A.  D.,"  followed  by  the  imprint 
of  the  place  of  publication  and  the  name  of  the  proprietor 
and  the  notice  of  copyright,  on  the  title  page.  The  plaintiff 
moves  for  an  injunction,  before  final  hearing,  to  restrain  the 
infringement  of  the  copyright.  The  defendants  have  printed 
and  published  a  book,  the  body  of  which  is  a  verbatim  copy, 
as  to  matter  and  type,  of  the  plaintiff's  book,  and  which  has 
the  following  title  page :  ^^  The  flome-Made  Cook  Book  ;  A 
Complete  Manual  of  Practical,  Economical,  Palatable  and 
Healthful  Cookery.  New  York ;  M.  J.  Ives  &  Co.,  86  Nassau 
Street." 

The  defendants  contend  that  the  copyright  is  invalid  be- 
cause the  words,  "  Over  One  Thousand  Recipes  "  are  not  on 
the  title  page  of  the  plaintiff's  published  book,  and  are  in  the 
title  deposited,  and  because  the  words  '*  No  1 "  and  "  By  N. 
A.  D."  are  on  said  title  page  and  are  not  in  the  title  depos- 
ited. The  provision  of  §  4,952  of  the  Revised  Statutes  is, 
that  the  exclusive  right  secured  under  a  copyright  is  to  be 
enjoyed  "  upon  complying  with  the  provisions  of  this  chapter." 
Section  4,953  says  that  copyrights  shall  be  granted  ^'  in  the 
manner  hereinafter  directed."  There  is  no  investigation  or 
decision  by  any  officer,  nor  is  any  grant  issued.  What  is  done 
is  to  be  done  by  the  party  desiring  the  copyright.  Nothing 
is  to  be  done  by  any  officer,  except  that  the  librarian  of  Con- 
gress is  to  give  to  the  proprietor  a  copy,  under  seal,  of  the 
recorded  title,  when  required.     Section  4,956  provides  as  fol- 


MARCH,  1882.  38S 


Donnelley,  Gaeaette  A  Loyd  v.  lyera. 


lowfi :  ^'  No  person  shall  be  entitled  to  a  copyright  unlese  he 
shall,  before  publication,  deliver  at  the  ofSce  of  the  librarian 
of  Congress,  or  deposit  in  the  mail,  addressed  to  the  librarian 
of  Congress,  at  Washington,  District  of  Columbia,  a  printed 
copy  of  the  title  of  the  book  *  ♦  ♦  for  which  he  desirea 
a  copyright."  Section  4,967  provides  that  "  the  librarian  of 
Congress  shall  record  the  name  of  sach  copyright  book 
*  *  *  forthwith,  in  a  book  to  be  kept  for  that  purpose, 
in  the  words  following : "  The  form  states  the  fact  of  the  de- 
posit of  ^^  the  title  of  a  book  "  on  a  day  named,  by  a  person 
named,  '*  the  title  *  *  *  of  which  is  in  the  following 
words,  to-wit :  (here  insert  the  title  *  *  *,)  the  right 
whereof  he  claims  as  proprietor,  in  conformity  with  the  laws 
of  the  United  States  respecting  copyrights."  By  §  4,964, 
damages  for  the  violation  of  a  copyright  of  a  book  are  made  to 
depend  on  the  fact  of  the  recording  of  the  title  of  the  book, 
*'  as  provided  by  this  chapter." 

It  was  settled  in  the  case  of  Wheaton  v.  Peters,  (8  Peters^ 
591,)  that  there  can  be  no  exclusive  property  in  a  published 
work  except  under  some  Act  of  Congress ;  that  Congress^ 
when  aboat  to  vest  an  exclusive  right  in  an  author,  has  the 
power  to  prescribe  the  conditions  on  which  such  right  shall 
be  enjoyed  ;  and  that  no  one  can  avail  himself  of  such  right 
who  does  not  substantially  comply  with  the  provisions  of  the 
law.  It  has  been  held  to  be  necessary  to  show  that  the  title 
was  deposited  before  publication ;  that  this  is  an  absolute  re- 
quirement ;  and  that  the  Court  cannot  disregard  the  require- 
ment. {Cfhose  V.  Sanborn,  4  Clifford,  306.)  In  Baker  v.  Tay- 
lor, (2  Blatchf,  C.  C.  B,,  82,)  it  was  held  that,  under  a  title 
deposited  in  1846,  a  printing,  on  the  page  following  the  title 
page  in  the  book,  of  a  notice  that  the  copyright  had  been  en- 
tered in  1847,  was  fatal  to  the  plaintiflPs  right.  The  Court 
said :  "  Even  though  the  failure  to  publish  the  statutory 
notice  arose  from  mistake,  this  Court  would  have  no  power 
to  accept  the  intention  of  the  party,  in  place  of  a  perform- 
ance, any  more  in  respect  to  the  insertion  of  that  notice  on 
the  proper  page,  than  in  respect  to  the  deposit  of  the  title  of 


884  SOUTHERN  DISTRICT  OP  NEW  YORK, 

Donnelley,  Gaaeetfce  A  Lojd  tr.  Irers. 


the  book.'-'  The  same  principle  was  applied  in  Strove  t. 
Schwedler^  (4  Blatohf,  C,  (7.  ^.,  23.)  In  Parkinson  v.  Zor 
sdUj  (3  SawyeVj  330,)  it  was  held,  in  reference  to  the  deposit 
of  the  title,  that,  under  §§  4,952  and  4,956,  a  person  can  have 
no  copyright  nntil  he  has  performed  that  condition. 

In  the  present  case  a  certain  title  was  deposited.  That 
title,  verlxxtim,  is  not  the  title  page  of  the  book  afterwards 
published  as  the  book  to  which  such  title  appertained.  So, 
too,  a  book  with  a  certain  title  page  was  published,  but  no 
verbatim  copy  of  such  title  page  was  deposited  before  publi- 
<»ttion.  The  title  deposited  and  the  title  page  of  the  book 
published  contain,  in  common,  the  name  or  designation : 
*^  The  Lake-Side  Cook  Book ;  A  Complete  Manual  of  Prac- 
tical, Economical,  Palatable  and  Healthful  Cookery."  The 
words  ^^  Over  One  Thousand  Recipes,"  in  the  deposited  title, 
Are  not  on  the  title  page  of  the  published  book ;  and  it  is 
shown  that  there  are  in  the  book  only  about  800  recipes. 
The  words  "  No.  1 "  and  "  By  N.  A.  D."  are  in  the  title  page 
of  the  published  book  and  are  not  in  the  deposited  title. 
What  the  statute  requires  to  be  deposited  is  ^'  a  printed  copy 
of  the  title."  The  language  is  not  *'  a  printed  copy  of  the 
title  page,"  that  is,  a  printed  copy  of  the  page  containing  the 
title.  Everywhere  in  the  statute,  in  reference  to  the  thing 
deposited,  it  is  "  the  title."  What  is  "  the  title  ?"  Section 
4,957  provides,  that,  as  soon  as  '^  the  title  "  is  deposited,  the 
librarian  of  Congress  shall  ^^  record  the  name  of  such  copy- 
right book."  Therefore,  "  the  title  "  to  be  deposited  and  re- 
corded is  "  the  name  "  of  the  book.  The  record  in  the  libra- 
rian's book  must  undoubtedly  contain,  as  the  name,  the  title 
deposited.  But  the  question  is  as  to  what  is  a  sufficient  title 
or  name  to  be  deposited  and  recorded,  when  it  is  seen  after- 
wards what  is  the  title  page  of  the  book  published  after  the 
deposit. 

The  theory  of  the  copyright  statutes  is,  that  every  book 
must  have  a  title  or  name  or  designation — something  short 
and  convenient  by  which  it  may  be  identified  in  the  speech  of 
the  people ;  that  that  title  or  name  must  appear  on  it,  or  in 


MARCH,  1681  886 


Donnelley,  Gaasette  A  Loyd  v.  lyen. 


it,  when  pablished,  on  a  title  page  or  its  equivalent ;  and  that 
tneh  title  or  name  must  have  been,  before  the  publication  of 
the  book,  deposited  in  the  designated  office.  The  copyright 
to  be  protected  is  the  copyright  in  the  book.  A  printed  copy 
of  the  title  of  such  book  is  required  to  be  deposited,  before 
publication,  only  as  a  designation  of  the  book  to  be  copy* 
righted.  The  title  is  ^^  a  mere  appendage,  which  only  identi- 
fies, and  frequently  does  not  in  any  way  describe,  the  literary 
composition  itself,  or  represent  its  character."  The  title  alone 
is  never  protected  separate  from  the  book  which  it  is  used  to 
designate.  {JolUe  v.  Jaques,  1  BJMchf.  C.  G.  ^.618,  627; 
09good  V.  AUen^  1  Holmes^  185, 193.)  In  determining,  there- 
fore, whether  this  book  is  protected  by  a  copyright,  the  in^ 
quiry  is,  whether  its  title  or  name  was  deposited.  Its  title  or 
name  is  to  be  gathered  from  the  title  or  name  now  given  to  it 
and  appearing  on  its  title  page.  There  is  nothing  connected 
with  its  title,  on  the  title  page,  that  is  not  found  in  the  title 
deposited,  except  the  words  "  No.  1 "  and  "  By  N.  A.  D.** 
Everything  else,  the  real  name  and  designation  of  the  book, 
as  found  on  the  title  page,  is  in  the  title  deposited.  The 
words  not  found  in  the  title  deposited  are  immaterial  and  no 
part  of  title  or  name.  The  '^By  N.  A.  D."  is  mere  surplus- 
age, and  neither  helps  nor  harms  the  title.  The  ^^  No.  1 " 
appears  to  have  been  put  in  because  the  same  parties,  in  1878, 
copyrighted  and  published  a  book  called  ^^The  Lake-Side 
Cook  Book  No.  2."  Under  the  foregoing  views,  the  title  of 
the  book  was  deposited  before  publication.  The  presence,  in 
the  title  deposited,  of  the  words  ^^  Over  One  Thousand  Reci- 
pes "  is  immaterial.  They  are  no  part  of  the  substantial  title. 
When  the  title  was  deposited  it  may  have  been  intended  to 
put  into  the  book  over  one  thousand  recipes.  That  purpose 
was  afterwards  changed.  Yet  the  book  was  published  with 
the  same  title  substantially.  Aside  from  this,  it  is  sufficient 
if  the  title  of  the  published  book  was  deposited,  without  its 
being  necessary  that  everything  in  the  paper  deposited  as  a 
title  should  be  reproduced  on  the  title  page  of  the  book  after- 
wards published.  The  requirement  as  to  the  deposit  of  the 
Vol.  2X— 25 


886  NOBTBERN  DISTRICT  OF  NEW  TORE, 

The  N.  T.  Gnpe  Sugar  Co.  v.  The  American  Grape  Sugar  Go. 


title  having  been  substantiaUj,  in  good  faith,  complied  with, 
{MyerB  Y.CaUagham^  6  Fed.  Rep.,  726,  731, 732,)  the  objection 
that  the  Btatate  as  to  depositing  the  title  was  not  observed  is 
not  tenable. 

There  are  defects  in  the  bill  filed,  which  mnst  be  amended, 
and,  when  that  is  done,  the  motion  for  an  injnnction  may 
be  renewed.  The  defects  referred  to  were  pointed  out  at  the 
hearing. 

James  Watacn,  for  the  plaintiff. 

RoberUafij  Hartnan  dk  Cuppia,  for  the  defendants. 


The  New  York  Grape  Sugar  Company 

vs. 

The  American  Grape  Sugar  Company  and  others. 

In  Equity. 

It  being  donbtftd  whether  there  was  any  ioTentlon  in  forming  the  bottom  of  a 
starch  timy  of  sheet  metal,  it  hsying  before  been  made  of  wood  and  lined 
with  metal,  a  preliminary  injnnction  on  a  patent  for  so  forming  the  bottom 
was  refused. 

It  would  seem  that  the  presumption  arising  from  the  grant  of  a  patent^  especially 
when  not  of  recent  date,  oaght  to  be  a  sufficient  ground  for  granting  a  prelim- 
inary injunction  ag^ainst  an  infringer  who  does  not  attack  the  patent 

Where  a  plaintiff  had  bought  a  patent  and  proposed  to  use  it  not  by  mannfao> 
turing  under  it»  but  by  selling  licenses,  but  had  not  established  any  license 
fee,  and  the  defendant  was  responsible,  and  serious  consequences  to  him  would 
arise  from  granting  a  preliminary  injunction,  it  was  refused. 

(Before  Wallaob,  J.,  Northern  District  of  New  York,  March  6th,  1882.) 

Wallace,  J.  The  complainant  moves  for  a  preliminary 
injunction  to  restrain  the  defendants  from  infringing  four 
patents  owned  by  the  complainant,  relating  to  improvements 


MARCH,   1882.  387 


The  N.  Y.  Grape  Sngnr  Co.  v.  The  AmericAn  Grape  Sugar  Co. 

iu  the  apparatus  for  manufacturing  starch.  Of  these  patents 
the  first  was  issued  January  14th,  1868,  to  John  A.  Owens, 
and  was  re-issued  to  Thomas  A.  Jebb  and  William  T.  Jebb, 
May  31st,  1881,  for  a  combination  of  an  agitator  and  vibrat- 
ing screen  or  sieve ;  the  second  was  issued  May  26th,  1868,  to 
John  A.  Owens,  for  an  improvement  in  starch  trays,  which 
consists  in  forming  the  bottoms  of  sheet  metal;  the  third 
was  issued  September  8th,  1868,  to  J.  J.  Gilbert,  as  assignee 
of  Colgate  Gilbert,  for  a  bolting  sieve  vibrated,  supported, 
and  fed  as  described,  and  the  constituent  parts  thereof;  and 
the  fourth  was  issued  to  Colgate  Gilbert,  April  16th,  1878, 
for  an  adjustable  support  to  a  starch  separator.  Except  ae  to 
the  second  patent  the  defendants  have  entirely  failed  to  im- 
pugn the  right  of  the  complainant  to  an  injunction,  if  this 
were  a  final  hearing  instead  of  a  motion  for  a  preliminary  in- 
junction. 

As  to  the  second  patent,  sufficient  appears  to  raise  doubts 
as  to  the  patentable  novelty  of  the  improvement  described. 
It  would  seem  that  the  employment  of  sheet  metal  as  a  lining 
for  the  bottom  of  a  starch  tray  involves  no  invention.  The 
bottom  had  been  made  of  wood,  and,  undoubtedly,  when 
lined  with  lead  or  copper  or  galvanized  iron,  would  be  more 
durable  and  more  easily  cleaned.  But  it  is  within  common 
knowledge  that  such  linings  had  been  used  analogously  in 
many  other  vessels  made  to  contain  liquids,  because  of  these 
advantages.  Such  a  lining  had  also  been  employed,  as  de- 
scribed, in  the  Belgian  patent  of  Heidt,  for  forming  the 
bottom  of  a  trough  or  channel  used  for  the  deposition  of 
starch,  in  place  of  the  tray  used  by  Owen.  Inasmuch  as  the 
Court  will  not  decide  doubtful  questions  as  to  the  com- 
plainant's right  upon  a  motion  for  a  preliminary  injunction, 
the  motion  fails  as  to  this  patent. 

The  other  patents  are  not  seriously  assailed,  and  it  is  not 
denied  that  the  defendants  have  appropriated  the  improve- 
ments covered  by  them  and  are  now  employing  them  in  their 
glucose  factories. 

An  attempt  has  been  made  to  present  the  defence  of  aban- 


888  NORTHERN  DISTRICT  OF  NBW  YORK, 

The  N.  T.  Gn^  Sugar  Co.  v.  The  AmerlMD  Qrape  Sugar  Co. 

donment.  It  is  not  claimed  that  there  had  been  an  abandon- 
ment before  the  letters  patent  were  obtained,  and  the  facts 
disclosed  signallj  fail  to  show  any  intention,  on  the  part  of 
the  owners  of  the  patents,  to  abandon  or  dedicate  their  rights 
to  the  pablic  subsequently.  It  is  not  shown  that  the  owners 
of  the  patents,  prior  to  the  Jebbs,  who  acquired  title  in  the 
spring  of  1881,  had  any  knowledge  that  the  defendants  or 
others  were  using  the  patented  improYements.  It  would 
seem  to  be  fairly  inferable,  although  not  distinctly  shown^ 
that  the  Gilberts,  who  owned  all  the  patents  prior  to  the  pur^- 
chase  by  the  Jebbs,  iiatended  to  preclude  the  public  from 
participation  in  the  use  of  the  patents,  and  to  use  them  exclu- 
sively in  their  own  starch  factories.  The  improvements  were 
surreptitiously  appropriated  from  the  Gilberts  by  Fox  &  Co., 
from  whom  they  were  also  surreptitiously  acquired  by  the 
Buffalo  Grape  Sugar  Company  and  these  defendants.  The 
history  of  the  process  patent  throws  no  light  upon  that  of 
the  apparatus  patents. 

It  is  insisted  that  the  complainant  has  not  shown  such  an 
exclusive  enjoyment  by  the  owners  of  the  patents,  and  recog- 
nition by  the  public  of  their  rights,  as  to  authorize  a  prelimi* 
nary  injunction,  in  the  absence  of  any  adjudication  upon  the 
patent.  If,  by  the  policy  of  the  owners,  information  as  to 
the  practical  working  of  the  inventions  was  withheld  from 
the  public,  of  course  there  could  not  be  such  a  recogni- 
tion and  acquiescence  as  in  many  of  the  cases  has  been  held 
to  be  necessary.  Formerly,  the  rule  undoubtedly  was,  that  a 
preliminary  injunction  would  not  be  granted  unless  the  right 
secured  by  the  patent  was  forfeited  by  evidence  of  an  exclu- 
sive or  recognized  enjoyment  of  the  right,  or  by  former 
adjudications  sustaining  it.  In  more  recent  practice  this  rule 
has  been  relaxed  when  the  validity  of  the  patent  is  not  as- 
sailed and  the  proof  of  infringement  is  clear.  {North  v. 
Kershaw,  4  Blatchf,  C.  C.  jB,,  70 ;  The  Burleigh  Rock  Drill 
Co,  V.  Lohdell^  1  Holmes^  450 ;  Steam  Gauge  dk  Lantern  Co. 
V.  Miller,  8  Fed.  Rep.,  314.)  It  would  seem  that  the  presump- 
tion arising  from  the  grant,  especially  when  not  of  recent 


MARCH,   1881  2)89 


The  N.  T.  Qnpe  Sugar  Co.  v.  The  Amerioaa  Grape  Sugar  Co. 

date,  ought  to  snfSce  as  against  a  defendant  who  has  appro- 
priated an  invention  secured  to  another  by  letters  patent, 
which  are  not  attacked.  It  is  not  necessary,  however,  to  pass 
definitely  upon  the  point  in  the  present  case,  because  the  in- 
junction must  be  denied  upon  another  ground. 

The  complainant  has  recently  purchased  the  patents  and 
proposes  to  nse  them  not  by  manufacturing  under  them  but 
by  selling  licenses  to  others.  It  is  expressly  alleged,  in  the 
moving  affidavits,  that  the  complainant  does  not  desire  to  en- 
join the  defendants  provided  they  will  accept  a  license  and 
pay  damages  at  the  same  rate  as  other  licensees.  It  does  not 
appear  that  the  complainant  has  as  yet  established  any  license 
fee  for  the  use  of  the  apparatus  patents  independently  of  the 
process  patent.  The  sum  which  the  defendants  should  pay 
cannot,  therefore,  well  be  determined  except  by  an  accounting 
for  profits,  and,  as  they  are  entirely  responsible,  when  this  is 
had,  the  complainant  can  be  adequately  compensated.  Irrep- 
arable damage  is  an  indispensable  element  upon  an  applicsr 
tion  for  provisional  injunction.  {Sanders  v.  Logan^  2  FUhei^s 
Pat.  Cos.,  167 ;  M(yrrU  v.  Lcywell  Mfg,  Co,^  3  Id.,  67 ;  PuH- 
man  v.  B.  dk  0.  E.  B.  Co.,  4  Hughes,  236.) 

On  the  other  hand,  the  defendants  have  gradually  created 
and  developed  an  extensive  market  for  glucose  and  grape 
sugar,  so  large  that,  if  their  works  were  stopped,  the  demand 
could  not  be  well  supplied  and  serious  inconvenience  would 
result.  They  have  not  only  invested  a  large  capital  in  their 
manufacturing  business,  but  they  employ  a  great  number  of 
workmen,  many  of  whom  would  be  temporarily  cut  adrift  if 
an  injunction  were  granted.  It  is  difficult  to  see  how  the  de- 
fendants could  remove  the  patented  apparatus  without  sub- 
stantially dismantling  and  re-organizing  their  works.  Under 
such  circumstances,  the  equitable  considerations  which  appeal 
to  the  discretion  of  the  Court,  and,  within  well  recognized 
-  rules,  should  lead  to  the  refusal  of  a  preliminary  injunction, 
cannot  be  ignored. 

If  the  complainant  has  any  reason  to  doubt  the  pecuniary 
ability  of  the  defendants,  now,  or  at  any  future  time,  to  pay 


390  EASTERN  DISTRICT  OP  NEW  YORK, 

Guntlier  «.  The  Liyerpool  and  London  u^d  Globe  Lumranoe  Compeoy. 

any  decree  that  may  be  obtained  in  the  suit^  it  may  apply  for 
a  further  order  requiring  the  defendants  to  enter  into  a  bond 
with  anreties. 

Diekerson  dk  Dickerson^  for  the  phuntiff . 

Bawen^  Rogers  dk  Locke^  for  the  defendants. 


Chablbs  Godfrey  Gunthbr 


The  Liverpool  and  London  and  Globe  Insurance  Cokpant. 

In  the  Second  Circuit,  actaal  dlsbiiraeinente  necessarily  iociirred  in  s  8ait»  in 
mddition  to  fees  paid  for  exemplifications  and  copies  of  papers,  under  §  983  of 
the  Revised  Statates,  are  taxed  io  tayor  of  the  preyailing  party. 

Accordingly,  in  a  suit  at  law,  $1  paid  for  serying  the  summons  by  which  the 
action  was  commenced  was  allowed  as  a  disbursement. 

Money  paid  to  a  stooogTapher  for  a  copy  of  the  minutes  of  the  testimony  giyen 
on  the  trial  was  not  allowed. 

Interest  on  the  yerdict  from  the  day  it  was  rendered  to  the  day  of  renderimg 
judgment  was  allowed. 

(Before  BorxDior,  J.,  Eastern  District  of  New  York,  March  7th,  1882.) 

Benedict,  J.  Prior  to  the  enactment  of  the  fee  bill  of 
February  26th,  1853,  (10  U,  8.  Stat,  at  Large^  161,)  the  actual 
disbursements  necessarily  incurred  and  deemed  reasonable 
were  allowed  in  the  taxation  of  costs,  in  accordance  with  the 
provisions  in  the  laws  of  the  State,  (2  R.  S,j  634,)  by  virtue 
of  the  Eules  of  Court.  (See  1  Blatohf.  C.  G.  R.y  652.)  Such 
is  the  law  now  unless  modified  by  the  fee  bill  of  1853.  That 
fee  bill  in  terms  relates  to  compensation  of  the  officers  named^ 
but  does  contain  a  provision  {p.  168,  now  §  983,  Rev.  Stat.) 
allowing  clerks  to  include  in  the  judgment  fees  for  exempli- 
fications and  copies  of  papers  necessarily  obtained  for  use  oa 


MARCH,   1882.  391 


Gonther  v.  The  Liverpool  and  London  and  Globe  Insnraoce  C!ompany. 


trial,  when  taxed  bj  the  judge  or  clerk.  This  provision  has 
by  some  been  considered  as  exclnsive  and  to  forbid  the  taxa- 
tion of  any  item  of  disbursement  other  than  fees  paid  for 
exemplifications  and  copies  of  papers,  but  in  this  Circuit  a 
different  understanding  has  prevailed,  and  actual  disburse- 
ments necessarily  incurred  have  been  taxed.  (See  Hussey  v. 
Bradley,  5  Blatchf.  C.  C.  R.,  212 ;  DennU  v.  Eddy,  12  /rf., 
195.)  The  rule  for  this  Oircnit,  as  laid  down  in  the  cases 
referred  to,  will  permit,  in  this  case,  the  taxation  of  the  item 
of  $1  paid  for  serving  the  summons  by  which  the  action  was 
commenced  in  the  State  Court.  It  was  a  necessary  disburse- 
ment actually  made  in  the  cause,  and  is  now  taxable  by  this 
Court,  by  virtue  of  the  Rules  of  the  Court,  as  it  would  have 
been  prior  to  the  fee  bill  of  1853. 

The  sum  paid  the  stenographers  by  the  plaintiff,  to  obtain 
a  copy  of  his  minutes  of  the  testimony  given  on  the  trial, 
cannot  be  taxed,  because  the  employment  of  a  stenographer 
was  not  directed  by  the  Court,  and  there  was  no  consent  to 
the  insertion  of  any  part  of  the  stenographer's  chaiges  in  the 
bill  of  costs. 

The  item  of  interest  on  the  verdict  from  the  day  of  the 
rendition  of  the  verdict  to  the  day  of  entry  of  the  judgment, 
amounting  to  some  $500,  may  be  allowed.  The  delay  was 
caused  by  a  stay  of  proceedings  during  the  pending  of  a 
motion  for  a  new  trial.  This  delay  should  not  be  at  the 
plaintiff's  expense.  The  payment  of  interest  meanwhile 
might  probably  be  deemed  a  condition  attached  to  the  stay  ; 
or,  if  not,  an  entry  of  the  judgment  as  of  the  date  of  enters 
ing  the  motion  for  a  new  trial  might,  if  necessary  to  avoid 
damage  to  the  plaintiff,  be  permitted ;  but  I  consider  the  item 
of  interest  on  a  verdict  within  the  equity  of  the  statute, 
(§  966  Rev,  Stat.,)  and  for  that  reason  taxable.  {Jlat  Bcmk 
V.  Mechcmiosl*  Nat  Bank,  94  U,  S,,  437 ;  see,  also,  DoweU  v. 
OriavDoldj  5  Saijnyer,  24.) 

The  clerk  will,  therefore,  allow  the  item  of  $1  paid  for 
serving  the  summons,  will  reject  the  item  of  cash  paid  the 
stenographer,  and  will  allow  interest  on  the  amount  of  the 


39S  80DTBGERN  DISTRICTT  OF  NEW  YORK, 

C!obiini  9.  Sebroeder. 

▼erdict  from  the  date  of  its  rendition  to  the  date  of  entering 
np  the  judgment.  The  sum  paid  for  the  copy  of  the  record 
of  the  coroner's  inqnest  maj  also  be  allowed. 

Oeorge  A.  Farster^  for  the  plaintiff. 

BuUer^  StiUman  4&  Bvhbwrd^  for  the  defendant 


OhABLBS  £.    COBTTBN  AlfD  0THEB8 

Nicholas  Schboedeb  and  othebs.    In  Equity. 

A  motioii  in  this  om6  by  the  defend«nt8  to  liftTe  the  decree  opened  to  put  in 

eridenoe  mdditionftl  matton  of  defence,  was  denied. 
An  Englieh  proyiiional  spedficetion  is  not  a  petent,  within  §  4,920  of  the  Be- 

Tised  Statutes. 

(Before  Whsbub,  J.,  Soothem  District  of  New  York,  March  8th,  1881) 

Whbbleb,  J.  This  cause  has  now  been  further  heard  upon 
motion  of  the  defendants  to  have  the  decree  opened,  (19 
Blatchf.  G.  C.  5.,  377,)  and  leave  granted  to  put  in,  as  further 
defences  to  the  patent,  an  English  proyisional  specification, 
left  bj  James  Ritchie  Butchart,  January  22d,  1866,  at  the 
office  of  the  Commissioner  of  Patents  in  England,  with  a  pe- 
tition for  a  patent,  and  other  evidence  of  prior  knowledge 
and  use.  The  invention  is  understood  to  have  been  made  in 
February,  1866.  The  introduction  of  the  provisional  specifi- 
cation would  be  unavailing  unless  it  would  bring  the  case 
within  the  third  division  of  section  4,920  of  the  Revised 
Statutes :  *'  that  it  had  been  patented  or  described  in  some 
printed  publication  prior  to  his  supposed  invention  or  discov- 
ery thereof."  In  Smith  v.  Ooodyea/r  Dental  Vulcanite  Oom- 
jpanj/,  (93  V.  /&,  486,)  the  invention  was  found  to  have  been 


MARCH,   1882.  393 


Cobmrn  v,  Sohroeder. 


made  in  the  spring  of  1855,  and  there  was  an  English  provia- 
ional  specification  and  patent  in  evidence.  The  Court,  at  page 
498,  on  this  snbject,  said :  ^^  Of  the  English  patent  of  Oharles 
Goodyear,  it  is  enough  to  say,  that,  though  the  provisional 
specification  was  filed  March  14th,  1865,  the  completed  sped- 
^cation  was  not  until  the  11th  of  September  following.  It 
was,  therefore,  on  the  last-mentioned  date  that  the  invention 
was  patented."  This  specification  is  printed  in  a  book  en- 
titled, "Specification  of  Patents,"  and,  as  printed  in  1866, 
found  in  the  Astor  Library  in  the  city  of  New  York,*;  and  it 
is  urged  that  this  would  show  a  sufficient  description  in  a 
printed  publication.  If  this  would  be  a  sufl^cient  printed 
publication,  it  would  not  be  printed  until  the  specification  had 
been  left  for  some  time  at  least,  and  this  invention  was  so 
soon  after  that  that  this  publication  would  not  appear  to  be, 
and  probably  was  not,  made  until  after  the  invention.  The 
other  new  evidence  shown  consists  of  affidavits  of  knowledge 
and  use  in  England,  France  and  Canada,  and  at  Buffalo,  New 
York.  The  evidence  of  such  knowledge  and  use  in  a  foreign 
country  would  not,  of  itself,  defeat  the  patent,  or  be  material. 
{Bev.  Stat. J  sec.  4,923.)  The  new  evidence  of  use  at  Buffalo 
is  set  forth  in  the  affidavit  of  John  W.  Sherwood,  to  the  effect 
that,  in  1856,  he  there,  ^^  personally  made  large  numbers  and 
quantities  of  said  bottomless  trays  divided  into  compartments 

containing  two  or  more  inside  cells,  as  above  stated,  —  - 

that  the  same  were  at  that  time  in  common  use  for  drug  store 
and  other  purposes.^'  This  evidence,  if  it  was  in,  and  should 
gain  credit  to  its  full  extent,  would  not  show  a  knowledge  and 
use  of  this  invention  as  patented,  as  the  patent  has  been  con- 
strued. An  urgent  appeal  is  made  for  the  opening  of  the 
decree  on  account  of  the  alleged  change  of  issue  made  by  the 
filing  of  the  disclaimer.  As  the  issue  was  framed,  and  un- 
derstood by  all  parties,  evidence  of  structures  of  more  than 
two  tiers  was  applicable,  and  as  much  so  as  it  would  be  since 
two  tier  structures  have  been  disclairaed;  and,  apparently. 


394  SOUTHERN  DISTRICT    OF  NEW  YORK, 

Cobnrn  «.  Sohroeder. 

the  defendants  strove  to  obtain,  and  introduced,  all  th^  evi- 
dence they  conld  obtain  of  prior  knowledge  and  nse  of 
straetnres  of  more  than  two  tiers,  and  the  plaintiffs  strove  to 
meet  it.  So,  there  is  not  only  no  new  issne,  but  the  parties 
were  not  in  any  way  misled  in  supposing  that  the  issne  left 
after  the  disclaimer  was  filed  was  not  in  the  case  before.  The 
defendants  claimed,  and  appear  to  have  supposed,  that  proof  of 
two  tier  structures  would  be  sufficient  to  defeat  the  patent; 
they  also  apparently  well  understood  that,  a  fartioriy  proof 
of  more  than  two  tier  structures  would,  and  to  have  acted 
fully  upon  that  understanding.  The  disclaimer  did  not 
broaden  the  issue  but  narrowed  it.  The  parties  have  had 
a  full  opportunity  to  try,  and  have  diligently  availed  them- 
selves of  the  opportunity  to  try,  the  question  which  would 
be  open  if  the  case  should  be  again  opened.  Therefore,  the 
filing  the  disclaimer  does  not  affect  this  question.  There  is  no 
proof  of  any  specific  new  evidence  to  be  offered,  except  that 
of  Sherwood,  accompanying  the  motion.  It  is  feally  an  ap- 
plication to  prepare  the  case  over  again,  although  it  has 
already  been  once,  apparently,  thoroughly  prepared  and  pre- 
sented. This,  although  quite  frequently  thought  by  losing 
parties  to  be  desirable,  is  not  by  any  rule  of  law  or  practice 
allowable. 

The  motion  must  be  denied. 

Andrew  J,  Toddj  for  the  plaintiffs. 
Sa/raud  Oreenbaum^  for  the  defendants. 


MARCH,  1882.  896* 


CroM  V.  McEinDon. 


Alonzo  T.  Cb08B 

VS, 

DuifOAH  MoKlNNON  AND  OTHERS.      Il7  EqUITY. 

LeMen  pAtent  No.  199,621,  gnwted  to  AIodco  T.  Gross,  Janiuury  29tli,  1878,, 
for  an  improvement  in  fonntain  pens,  are  ralid. 

Hie  principal  diatinctiye  feature  of  the  patent  is  a  spring  working  between  the 
Tibrating  writing  pin  and  the  air^tube,  to  project  the  pin  and  restrain  the 
flow  of  ink  when  the  pen  is  not  in  nse,  and  yield  to  the  pressare  of  the  point 
of  the  pin  and  make  room  for  the  flow  of  ink  when  the  pen  is  in  nse.  The 
inyention  is  not  anticipated  by  a  pen  in  which  the  vibrating  point  was  acta> 
ated  by  a  weight  instead  of  a  spring. 

A  daim  to  the  vibrating  pin  and  spring  combined  with  the  air-tobe,  case  of  the 
pen  and  ink4nbe,  is  a  valid  claim  to  a  combination. 

(Before  Wbbklib,  J.,  Southern  District  of  New  York,  March  8th,  1882.) 

Whsblbb,  J.  The  orator  has  a  patent,  nnmbered  199,621^ 
granted  January  29th,  1878,  for  an  improvement  in  fountain 
pens,  the  principal  distinctive  feature  of  which  is  a  spring 
working  between  the  vibrating  writing  pin  and  the  air-tube, 
to  project  the  pin  and  restrain  the  flow  of  ink  when  the  pen 
is  not  in  use,  and  yield  to  the  pressure  on  the  point  of  the 
pin  and  make  room  for  the  flow  of  ink  when  the  pen  is  in 
use.  The  first  claim,  which  is  the  one  in  controversy,  is  of 
the  vibrating  pin  and  spring  combined  with  the  air-tube,  case 
of  the  pen,  and  ink-tube.  The  defences  to  this  suit  upon  the 
patent  are  want  of  novelty  in  the  invention  patented  and 
non-infringement.  Fountain  pens  with  air-tubes,  vibrating 
points,  and  other  necessary  parts  were  well  known  at  the  time 
of  the  plaintiff 's  invention,  but  none  of  them  had  his  precise 
arrangement  of  a  vibrating  point  iporked  by  a  spring  con- 
nected with  an  air-tube,  as  he  arranged  them.  The  defend- 
ant McKinnon  had  a  patent  for  one  substantially  like  the 
plaintiff's  except  that  the  vibrating  point  was  actuated  by  a 
weight  instead  of  by  a  spring ;  in  others  there  were  springs^ 


896  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Cro68  V.  HoKfamon. 

but  which  were  not  connected,  and  did  not  operate  like  the 
pkintifiPe.  One  ground  of  want  of  novelty  presented  and 
urged  is  the  equivalencj  of  the  weight  in  McEonnon's  patent 
to  the  spring  in  the  plaintiff's.  That  they  are  equivalents  in 
flome  operations  is  well  established  and  known  ;  but  the  ques- 
tion on  this  part  of  the  case  is  whether  they  are  equivalents 
in  producing  the  desired  result  here.  The  efficiency  of  the 
weight  is  affected  by  its  necessary  confinement  in  a  small 
working  space,  and  by  the  necessary  inclination  of  the  pen 
from  a  perpendicular  both  when  in  and  out  of  use.  Some- 
thing to  act  more  quickly  in  the  direction  of  the  point  of  the 
pen,  without  regard  to  its  perpendicularity,  was  necessary,  and 
this  was  found  in  the  spring,  which,  in  this  operation,  was 
more  than  the  equivalent  of  the  weight.  Another  ground  of 
lack  of  patentable  novelty  is  an  alleged  want  of  working  to- 
gether of  the  parts  mentioned  as  combined  in  this  claim. 
This  position  rests  chiefly  upon  the  fact  that  the  air-tube,  as 
such,  has  nothing  to  do  with  the  spring ;  that  it  is  a  mere 
support  to  the  spring,  and,  for  that  purpose,  might  as  well  be 
a  solid  rod.  It  is  a  fact  that  the  air  in  the  tube  and  the 
tubular  form  of  that  part  have  nothing  whatever  to  do  with 
the  operation  of  the  spring ;  but  the  patent  does  not  rest  upon 
the  idea  that  they  do.  The  presence  of  the  air-tube  was  nec- 
essary in  the  pen,  and  the  merit  of  the  invention  consists  in 
making  the  further  use  of  this  necessary  part  to  sustain  the 
spring  where  it  is  wanted.  It  does  combine  with  the  spring 
for  this  purpose,  and  by  this  invention  is  made  to  do  two 
things  instead  of  one.  The  spring  could  be  attached  to  some- 
thing else,  but  that  would  make  a  different  pen,  and  probably 
not  so  good  an  one. 

The  defence  of  non-infringement  rests  upon  the  fact  that 
the  defendants  have  the  spring  inside  the  air-tube  instead  of 
outside.  This  may  be  «n  improvement  upon  the  plaintiff's 
mode  of  attaching  the  spring  to  the  tube ;  but,  if  it  is,  it  is 
none  the  less  an  use  of  his  arrangement.  They  make  use  of 
the  same  parts,  for  the  same  purpose,  in  substantially  the 
dame  way. 


MARCH,  1882.  397 


Dayiee  «.  Lathrop. 


Let  there  be  a  decree  for  the  plaintiff,  according  to  the 
prayer  of  the  bUl. 

Edwm  H.  Brown^  for  the  plaintiff. 

Eugene  N.  Eliot^  for  the  defendants. 


Jambs  R.  Davibs  and  another,  administbatobs  of  Louisa 

Fluhhb,  dbobasbd 

Frangib  S.  Lathbop,  Rbobivbb  of  the  Obntbal  Bailboad 

CoKFANT  of  New  Jebsey. 

This  floit  was  brought  in  a  State  Court  of  New  York,  agaiiiBt  the  reoeiver  of  a 
New  Jersey  railroad  oorporation,  to  recover  damages  for  the  death  of  the  in* 
teetate  of  the  plaintifb,  oansed  in  New  Jersey,  by  a  train  on  the  railroad  of 
the  corporation,  while  it  was  being  operated  by  the  receiver.  The  complaint 
alleged  a  liability  under  a  New  Tork  statute  and  permissioD  given  by  the  said 
State  Coart  of  New  York  to  sae  the  receiver.  The  answer  alleged  the  ap- 
pointment of  the  defendant  as  receiver  by  a  Court  of  New  Jersey,  and  his 
subsequent  appointment  by  the  said  State  Court  of  New  York  as  receiver  of 
the  property  of  the  corporation  situated  in  Nftw  York,  and  that  he  operated 
the  road  as  a  New  Jersey  receiver.  Afterwards,  the  defendant,  as  a  citizen  of 
New  Jersey,  the  plain tifib  being  dtiiens  of  New  York,  removed  the  suit  into 
this  Court,  the  State  Court  making  an  order  of  removal  The  case  was  then 
tried  by  a  jury  in  this  Court,  the  plaintifis  being  first  allowed  to  amend 
their  complaint  by  setting  up,  in  addition,  as  a  cause  of  action,  a  statute  of 
New  Jersey,  and  the  defendant  to  amend  his  answer  by  setting  up  the  order 
of  the  New  York  Court  granting  leave  to  sue  and  allbging  that  there  was  no 
other  leave  to  sue.  The  Court  held  that  the  complaint  must  be  dismissed 
because  it  set  forth  no  cause  of  action  against  the  defendant  as  a  New  York 
receiver,  and  because  there  was  no  leave  to  sue  him  as  a  New  Jersey  re- 
ceiver. No  order  or  judgment  to  that  effect  having  been  entered,  the  plaint* 
ifls  moved  to  remand  the  cause  to  the  State  Court :  Heid,  that  the  removal 
was  proper,  when  it  was  made,  and  that  adding  in  the  complaint  the  allegatiod 
as  to  the  New  Jersey  statute  did  not  affect  the  jurisdiction  of  this  Court. 

(Before  BLATOHfOBD,  J.,  Southern  District  of  New  York,  March  9th,  1882.) 


398  SOUTHERN  DISTBICT  OF  NEW  YORK, 

Dayies  «.  Lathrop. 

Blatohfoed,  J.  This  suit  was  begun  in  the  Supreme 
Oourt  of  New  York,  in  AuguBt,  1879.  It  is  brought  to  re- 
cover $5,000  damages  for  the  death  of  the  intestate  of  the 
plaintiffs,  caused  at  South  Amboy,  in  New  Jersey,  by  a  train 
on  the  railroad  of  the  Central  Railroad  Company  of  New 
Jersey,  in  June,  1 879,  while  the  road  was  being  operated  by 
the  defendant,  as  receiver  of  the  company,  through  his  em- 
ployees who  were  running  the  train.  The  complaint  is  mani- 
festly framed  on  a  liability  of  the  defendant,  in  a  Court  of 
New  York,  under  a  statute  of  New  York.  The  complaint 
alleges  that  the  defendant  ^^  is.  receiver  "  of  the  railroad,  ^^  a 
corporation  which  was  doing  business  in  fact  under  the  laws 
of  this  State,  having  its  principal  office,  now  the  office  of 
said  receiver,  in  said  city  of  New  York ; "  that  '^  he  became 
receiver  duly  by  appointment  of  Conrt ; "  that,  ^^  as  such  re- 
ceiver "  he  was,  in  June,  1879,  managing  and  operating  the 
road  ;  and  that,  ^^  while  so  operating  said  road,"  he,  through 
his  employees  engaged  in  running  a  train  on  said  road,  killed 
the  intestate,  by  negligence,  at  South  Amboy.  The  complaint 
then  states  that  the  suit  is  brought  for  $5,000  damages  done 
by  such  killing  to  the  next  of  kin  of  said  intestate,  a  son  and 
her  husband  ;  and  that  the  ''  plaintiffs,  as  her  personal  repre- 
sentatives, for  the  benefit  of,  and  as  compensation  for  injury 
done  to,  her  next  of  kiQ,  and  under  the  statute  of  said  State 
of  New  York,  pray  judgment  for  the  full  amount,  to-wit^ 
said  amount  of  $5,000  statutory  damages,  against  said  defend- 
ant, as  well  as  for  costs  of  this  action,  permission  to  bring 
which  was  given  to  plaintifb  by  order  of  this  Court,  August 
20th,  1879,  or,  likewise  for  the  benefit  of  those  indicated  by 
said  statute,  plaintiffs,  as  such  representatives,  pray  judgment 
against  said  defendant  for  such  relief  as  to  the  Court  shall 
seem  just."  This  complaint  does  not  allude  to  a  statute  of 
New  Jersey.  Though  it  does  not  say  that  the  defendant  was 
appointed  receiver  by  a  Court  of  New  York,  it  alleges  per- 
mission given  by  the  Supreme  Court  of  New  York  to  bring 
the  suit.     The  suit,  as  made  by  the  complaint,  must  be  re- 


MARCH,   1882.  399 


Dayiee  v.  Lathrop. 


garded  as  one  bronght  on  a  statute  of  New  York  against  the 
defendant  as  a  Kew  York  receiver. 

In  Angnst,  1879,  the  defendant  put  in,  in  the  State  Court, 
an  answer  to  the  complaint,  alleging  that  he  was  duly  ap- 
pointed receiver  of  the  company  by  the  Court  of  Chancery  of 
New  Jersey,  in  February,  1877 ;  that  two  days  thereafter  he 
was  duly  appointed  by  the  Supreme  Court  of  New  York 
receiver  of  the  property  of  the  company  situated  within  the 
State  of  New  York ;  that  such  last  appointment  was  in  con- 
nection with,  and  ancillary  to,  his  appointment  as  receiver  by 
the  Court  of  Chancery  of  New  Jersey ;  and  that,  pursuant  to 
his  appointment  as  receiver  by  the  Chancellor  of  New  Jersey, 
he  operated  said  railroad  during  June,  1879.  He  admitted  the 
killing  of  the  intestate  at  South  Amboy,  New  Jersey,  and  the 
existence  of  said  next  of  kin,  and  the  permission  of  the  New 
York  Court  to  bring  ^^  this  action,"  and  denied  the  alleged 
negligence. 

In  October,  1879,  the  defendant,  as  a  citizen  of  New 
Jersey,  the  plaintiffs  being  citizens  of  New  York,  removed 
the  suit  into  this  Court,  the  State  Court  making  an  order  of 
removal.  In  January,  1882,  the  suit  came  on  for  trial  in  this 
Court,  before  a  jury.  The  Court,  at  the  trial,  allowed  the 
plaintijBb  to  amend  their  complaint  by  inserting  at  the  end 
thereof,  immediately  before  the  prayer  for  relief,  an  allega- 
tion that  the  statute  of  New  Jersey  in  force  at  the  time  of 
the  death  of  the  intestate  provided  as  follows,  (setting  it 
forth,  it  being  a  statute  giving,  in  case  of  the  death  of  a  per- 
son by  neglect,  where  he  would  have  had  an  action  for  dam- 
ages for  injury  if  he  had  lived,  an  action  for  damages  to  his 
personal  representatives,  for  the  benefit  of  his  next  of  kin,  no 
limit  to  the  amount  of  damages  being  specified.)  At  the 
same  time  the  defendant  was  allowed  to  amend  his  answer  by 
inserting  the  order  of  the  New  York  Court  granting  leave 
to  sue,  and  alleging  that  no  other  leave  to  sue  was  ever 
granted  to  the  plaintifis.  The  leave  was  "  to  bring  an  action 
in  this  Court  against  said  Francis  8.  Lathrop,  receiver  of  the 
Central  Bailroad  of  New  Jersey,  acting  as  such  within  the 


400  SOUTHERN  DISTRICT  OF  NEW  YORK. 

Drnvies  v.  Lathrop. 

jurisdiction  of  the  Court,  for  the  alleged  wrongful  killing  of 
said  decedent  through  negligence  and  careleeanefiB."  The  de* 
fendant  was  also  allowed  to  amend  his  answer  so  as  to  admit 
permission  to  bring  ^^an  action"  instead  of  "this  action." 
At  the  trial,  the  order  of  leave  made  by  the  New  York 
Court,  and  the  order  of  the  New  York  Court  appointing 
the  defendant  receiver  of  the  property  of  the  company  '^  sit* 
uated  within  the  State  of  New  York,"  "  in  connection  with 
and  ancillary  to  his  receivership  "  under  his  New  Jersey  ap- 
pointment, and  the  fact  that  the  company  was  a  New  Jersey 
corporation,  and  papers  showing  the  receivership  under  the 
New  Jersey  appointment,  were  put  in  evidence,  (the  Court 
having  excluded  the  pbdntiJBPs  offer  to  prove  the  facts  stated 
in  the  complaint,)  and  the  defendant  moved  the  Court  to  dis- 
miss the  complaint  on  the  grounds  that,  as  to  the  defendant  aa 
a  New  Jersey  receiver,  the  Court  had  no  jurisdiction  of  the 
suit,  and  that,  as  to  the  defendant  as  a  New  York  receiver,  the 
complaint  contained  no  cause  of  action.  The  Court  decided 
that  the  complaint  must  be  dismissed  on  those  grounds,  but 
no  order  or  judgment  to  that  effect  has  been  entered.  The 
plaintiffs  now  move  to  remand  the  cause  to  the  State  Court 
on  the  ground  that  it  "  does  not  really  and  substantially  in- 
volve a  dispute  or  controversy  properly  within  the  jurisdic- 
tion of  this  Court."  The  question  as  to  the  propriety  of  the 
removal,  or  as  to  remanding  the  cause,  was  not  presented  at  the 
trial. 

The  plaintiffs  contend  that,  as  the  defendant  was  sued  as  a 
receiver  appointed  by  the  New  York  Court,  by  its  leave,  and 
in  it,  he  must,  though  personally  a  citizen  of  New  Jersey,  be 
regarded,  for  the  purposes  of  the  removal,  as  a  citizen  of  New 
York ;  that  the  leave  granted  by  the  Mew  York  Court  waa 
to  sue  in  that  Court  its  own  officer ;  and  that  the  suit  was  not 
brought  against  the  New  Jersey  officer. 

The  defendant  contends  that  the  citizenship  of  the  par- 
ties personally  was  different  and  sufficient  to  warrant  the  re- 
moval ;  that,  the  suit  being  brought  against  the  defendant  as  a 
New  York  receiver,  there  was  jurisdiction  as  to  the  subject- 


MARCH,  1862.  401 

DmTies  V.  Lathrop. 


matter  alleged  in  the  complaint  and  as  to  the  person  of  the 
defendant,  and  there  was  diyersitj  of  citizenship,  and  the 
only  defect  as  to  the  New  York  receiver  was,  that  there  was 
no  cause  of  action  on  the  facts  alleged  in  the  complaint,  even 
if  they  were  proved ;  that  the  duty  of  the  Court,  under  §  5 
of  the  Act  of  March  8d,  1875,  (18  U.  S.  Stat,  at  La/tge,  473,) 
where  it  has  no  jurisdiction  of  the  controversy,  is  ''  to  dismiss 
the  suit  or  remand  it,"  and  it  has  already  decided  to  dismiss 
it ;  and  that  the  motion  is  too  late,  because  it  was  made  after 
the  plaintiffs  submitted  to  and  invoked  the  jurisdiction  of 
this  Court  at  the  trial. 

This  case  must  be  first  considered  in  reference  to  its  condi- 
tion when  it  was  brought  and  when  it  was  removed  into  this 
Court.  There  was  then  in  force  a  statute  of  New  York, 
{Act  of  December  18M,  1847,  cAop.  450 ;  Ad;  of  AprH  7th, 
1849,  chap.  256 ;  Act  of  March  16th,  1870,  chap.  78,)  pro- 
viding for  suits  by  the  personal  representatives  of  a  deceased 
person  to  recover  damages  for  his  death  by  wrongful  neglect, 
not  exceeding  $5,000.  The  New  Jersey  Act  set  up  by  said 
amendment  was  passed  March  3d,  1848,  immediately  after  the 
first  New  York  Act,  and  in  substantially  the  same  words, 
not  being  limited  to  f  5,000,  the  amount  being  limited  to 
$6,000  by  the  New  York  Act  of  1849.  The  New  York  Act 
does  not  in  terms  require  that  the  wrongful  neglect  or  the 
death  should  have  occurred  within  the  territorial  limits  of 
New  York.  The  original  complaint  is  based  on  the  view  that, 
although  the  occurrence  took  place  in  New  Jersey,  on  a  rail- 
road there,  damages  for  the  death  could  be  recovered  in  a 
New  York  Court  by  virtne  of  the  New  York  statute,  from 
the  receiver  alleged  to  have  caused  the  death,  he  being  an  ap- 
pointee of  the  New  York  Court,  and  that  Court  having 
granted  permission  to  bring  the  suit.  The  case  as  made  by 
the  original  complaint  had  no  reference  to  the  New  Jersey 
statute  or  to  an  appointment  of  the  defendant  as  receiver  by 
the  New  Jersey  Court,  and  of  course  there  was  no  occasion 
for  the  plaintifib  then  to  alle^  or  show  any  leave  by  the  New 
Jersey  Court  to  bring  the  suit.  Accordingly,  in  lids  answer. 
Vol.  XX.— 26 


402  SOUTHERN  DISTRICT  OF  KEVT  YORK, 

Davies  v.  Lathrop. 

the  defendant  set  np  that  he  was  appointed  receiver  of  the 
company  by  the  New  Jersey  Court ;  that  he  was  afterwards 
appointed  by  the  New  York  Conrt  receiver  of  the  property  of 
the  company  in  New  York ;  that  the  latter  appointment  was 
ancillary  to  the  former ;  that  he  was  operating  the  road  by 
virtue  of  his  New  Jersey  appointment;  that  the  intestate 
was  killed  at  South  Amboy,  in  New  Jersey ;  and  that  per- 
mission to  bring  this  suit  was  given  by  the  New  York  Court. 
The  answer  demanded  judgment  for  the  dismissal  of  the  com- 
plaint. 

The  cause  of  action  thus  shown  by  the  original  complaint 
at  the  time  of  the  removal  involved  a  subject-matter  of  which 
this  Court  could  take  jurisdiction.  There  could  be  no  objec- 
tion to  suing  the  receiver  as  a  New  York  receiver,  because 
the  Court  which  appointed  him  had  given  leave  to  sue  him. 
No  restriction  arising  out  of  the  words  in  the  order  of  per- 
mission, *' acting  as  such  within  the  jurisdiction  of  the 
Court,"  as  applied  to  the  facts  set  out  in  the  original  com- 
plaint, seems  to  have  been  supposed  to  exist.  None  such  is 
set  up  in  the  original  answer,  and  there  was  a  general  appear- 
ance by  the  receiver,  and  a  general  answer,  and  no  allegation 
of  want  of  jurisdiction,  and  an  admission  that  the  order  gave 
permission  to  bring  ^^  this  action."  Then  the  removal  petition 
was  presented,  based  on  diversity  of  citizenship.  The  record 
was  filed  in  this  Court  November  6th,  1879,  by  the  defendant. 
The  plaintiffs  never  made  any  motion  to  remand,  but  went  to 
trial. 

Was  the  case  a  removable  one,  and  within  the  jurisdiction 
of  this  Court,  as  it  stood  down  to  the  time  the  pleadings  were 
amended?  The  order  of  the  New  York  Court  appointing 
the  defendant  receiver  appoints  him  receiver  of  the  property 
of  the  company  in  the  State  of  New  York,  or  which  shall 
come  within  that  State,  and  of  snch  property  only.  It  gives 
him  the  usnal  powers  of  receivers,  restraining  him  from  sell- 
ing any  of  said  property  without  the  order  of  the  Court,  but 
allowing  him  to  use  the  same  to  operate  the  railroad  and  the 
ferry-boats  of  the  company.     It  then  enjoins  all  persons  from 


MARCH,   1881  403 


Dayies  v.  Lathrop. 


taking  any  proceedings  against  the  company,  ^^  or  its  property 
within  the  State  of  New  York,  or  from  obtaining  any  prefer- 
ence oyer  other  creditors  as  against  the  same."  It  then  orders 
that  the  defendant  be  deemed  receiver  of  said  property  '^  in 
connection  with  and  ancillary  to  his  receivership  under  and 
by  virtue  of  any  appointment  of  himself  as  receiver  by  the 
Oonrt  of  Chancery  of  the  State  of  New  Jersey.'^  The  order 
of  leave  made  by  the  New  York  Court  gives  permission  to 
the  plaintifb  ^'  to  bring  an  action  in  this  Court,"  for  the  al- 
leged wrongful  killing,  that  is,  in  the  Supreme  Court  of  New 
York.  But  afterwards,  on  the  petition  for  removal,  that 
Court  made  the  order  removing  the  suit  into  this  Court  for 
trial,  and  declaring  that  it  would  proceed  no  farther  therein. 
That  is  equivalent  to  leave  to  bring  and  prosecute  the  suit  in 
this  Court,  so  far  as  any  objection  or  restriction  by  the  New 
York  Court  is  concerned.  It  left  open  only  the  question 
whether  this  Court  could,  by  reason  of  the  citizenship  of  the 
parties,  acquire  and  retain  jurisdiction  of  the  suit.  The  fact 
that  the  defendant  was  appointed  a  receiver  by  the  New 
York  Court  does  not  deprive  this  Court  of  its  jurisdiction 
derived  from  the  fact  of  his  being  a  citizen  of  New  Jersey 
wlule  the  plaintiffs  are  citizens  of  New  York,  and  from  the 
removal  proceedings,  when  the  State  Court  has  thus  expressly 
sanctioned  the  removal  to  this  Court.  Therefore,  the  removal 
was  regular  and  proper,  when  it  was  made. 

Adding  to  the  complaint  the  allegation  as  to  the  New  Jer- 
sey statute  and  its  provisions  did  not  destroy  or  alter  the 
cause  of  action  already  attempted  to  be  set  forth  in  it  against 
the  New  York  receiver,  under  the  New  York  statute.  This 
is  shown  by  the  fact  that,  in  the  order  amending  the  com- 
plaint, is  found  the  provision  amending  the  answer,  by  insert- 
ing the  order  of  the  New  York  Court  granting  leave  and 
alleging  that  no  other  leave  to  sue  was  granted.  At  most, 
under  the  pleadings,  the  original  cause  of  action  was  left  un- 
touched, and  another  one  was  added.  At  the  trial  the  suit 
seems,  under  the  amended  pleadings,  to  have  been  regarded 
as  a  suit  under  both  statutes  against  both  receivers.    This 


404  SOUTHERN    DISTRICT  OF  NEW  TORE, 

DaTies  v.  Lafthrop. 

Gonrt  having  jurisdiction  of  it  as  respected  the  New  Yoik 
receiver  and  the  cause  of  action  alleged  against  him  under 
the  New  York  statute,  and  having  jurisdiction  by  the  citizen* 
ship  of  the  parties  and  by  reason  of  the  subject-matter  and 
by  the  permission  and  order  of  the  New  York  Courts  pro- 
ceeded, as  it  had  a  right  to  do,  to  adjudicate  as  to  the  merits 
of  such  cause  of  action,  and  decided  against  the  phdntiffa 
thereon.  It  then  also  decided  against  any  cause  of  action  as 
respected  the  New  Jersey  receiver,  for  want  of  jurisdiction, 
which  must  have  meant  that  the  want  of  jurisdiction  was  that 
there  was  no  leave  to  sue  given  by  the  New  Jersey  Court, 
the  cause  of  action  having  arisen  in  New  Jersey.  Absence 
of  such  leave  took  away  the  jurisdiction  of  this  Court  as  re- 
spected the  New  Jersey  receiver.  This  is  fully  decided  in 
Banrion  v.  Bwfbour^  (104  U.  S.j  126,)  a  recent  case  in  the 
Supreme  Court  of  the  United  States.  But  that  is  not  suffi- 
cient cause  for  remanding  the  suit.  It  might  have  been  suffi- 
cient cause  for  striking  out  any  cause  of  action  against  the 
New  Jersey  receiver,  and  it  was  sufficient  cause  for  dismissing 
the  complaint  as  to  the  New  Jersey  receiver.  The  original 
alleged  cause  of  action  against  the  New  York  receiver  re- 
mained, however ;  and,  if  the  amendment  to  the  complaint 
were  to  be  considered  as  only  adding  an  allegation  of  a  cause 
of  action  against  the  New  York  receiver,  founded  on  the  New 
Jersey  statute,  the  decision  that  the  complaint,  as  amended^ 
did  not  state  a  cause  of  action  against  the  New  York  receiver^ 
was  a  decision  on  the  merits,  as  respected  a  cause  of  action 
under  either  statute,  in  a  suit  of  which,  as  before  shown,  the 
Court  had  jurisdiction. 

The  defendant,  while  an  officer  of  the  New  York  Court, 
and  sued  as  such,  was  a  citizen  of  New  Jersey.  He  was  a 
representative  as  much  as  an  executor  or  a  trustee  is.  In  fact, 
he  was  a  trustee.  The  personal  citizenship  of  the  executor  or 
trustee  is  what  is  regarded.  {Bice  v.  Soustan^  13  Wallaoey 
66 ;  Xnapp  v.  BaUroad  Co,,  20  Id.,  117,  128.)  The  New 
York  Court,  by  the  order  of  removal,  based  on  the  New  Jer- 
sey citizenship,  authorized  this  Court,  as  against  the  New 


MARCH,  1882.  405 


The  ProTidenoe  A  StODington  Steamship  Go.  v.  The  Yirginim  F.  A  M.  Ins.  Go. 


York  Court,  to  treat  the  defendant  as  a  citizen  of  New  Jer- 
sey, sned  for  a  recovery  of  $5,000  and  costs.  It  confided  to 
him  the  responsibility  of  defending  the  suit,  and  this  Coart 
has  a  right  to  deal  with  his  personal  citizenship,  on  the  ques- 
tion of  removal. 

It  foUows,  that  the  motion  to  remand  must  be  denied. 

£.  Zoewj/y  for  the  plainti&. 

jB.  W.  DeForeat^  for  the  defendant. 


The  Pbovidbnob  and  Stoninoton  Steamship  Oompant 
The  Yirginia  Fms  Ain)  Mabine  LfstrEANOE  Oompaitt. 

Under  the  provisions  of  the  Aet  of  the  LegisUtore  of  New  York,  passed  May 
11th,  1860/(Zkn0t  ofNwi  York,  1866,  ch4^.  694, p.  1,408,)  m  YiixinU insnrsnoe 
corporation  deposited,  in  1878,  with  the  insurance  superintendent  of  New 
York,  certain  honds.  In  1879,  it  withdrew  its  agency  from  New  York.  In 
1881,  all  its  risks  outstanding  in  New  York  were  cancelled.  Prior  to  that 
the  honds  had  heen  attached  in  New  York  in  a  soit  brought  there  by  a  Rhode 
Island  corporation  on  a  policy  of  insurance,  which  suit  was  remoyed  into  this 
Court  The  defendant  moved  to  set  aMde  the  levy  under  the  attachment: 
flUtf,  that  the  motion  must  be  granted. 

(Before  BLATOHroan,  J.,  Southern  District  of  New  York,  March  18th,*  188S.) 

Blatchfobd,  J.  The  plaintiff  is  a  Bhode  Island  corpora- 
tion. The  defendant  is  a  Virginia  corporation.  This  suit  is 
brought  to  recover  $5,000  on  a  policy  of  marine  insurance, 
issued  by  the  defendant  to  the  plaintiff,  insuring  a  steamer 
against  marine  perils.  It  was  brought  in  a  Court  of  the  State 
of  New  York  and  removed  into  this  Court.  On  the  bringing 
of  the  suit,  in  September^  1880,  the  State  Court  issaed  an  at- 
tachment against  the  property  of  the  defendant,  as  a  foreign 


i06  SOUTHERN  DISTRICTT  OF  NEW  YORK, 

The  ProyideDoe  A  Stonington  SteamBhip  Ck>.  v.  The  YirginiA  F.  A  M.  Ina.  Go. 

corporation  having  property  within  the  State  of  New  York^ 
and  it  was  levied  on  $10,000  of  United  States  ^per  cent  reg- 
istered bonds,  in  the  hands  of  the  superintendent  of  the  in- 
surance department  of  the  State  of  Kew  York,  at  Albany. 
The  said  bonds  were  deposited  with  the  insurance  superin- 
tendent by  the  defendant,  in  February,  1873,  under  the  pro- 
visions of  the  Act  of  the  Legislature  of  Kew  York,  passed 
May  11th,  1865,  {laws  qf  New  Torhy  1865,  chap.  694,  p. 
1,408.)  That  Act  provides,  that,  '^  whenever  the  existing  or 
future  laws  of  any  other  State  of  the  United  States  shall  re- 
quire of  insurance  companies  incorporated  by  or  organized 
under  the  laws  of  this  State,  and  having  agencies  in  such 
other  State,  or  of  the  agents  thereof,  any  deposit  of  securitiea 
in  such  State  for  the  protection  of  policy  holders,  or  other- 
wise, or  any  payment  for  taxes,  fines,  penalties,  certificates  of 
authority,  license  fees,  or  otherwise,  greater  than  the  amount 
required  for  such  purposes  from  similar  companies  of  other 
States  by  the  then  existing  laws  of  this  State,  then,  and  in 
every  such  case,  all  companies  of  such  States  establishing,  or 
having  heretofore  established,  an  agency  or  agencies  in  thia 
State,  shall  be  and  are  hereby  required  to  make  the  same  de- 
posit for  a  like  purpose  in  the  insurance  department  of  thia 
State,  and  to  pay  to  the  superintendent  of  said  department, 
for  taxes,  fines,  penalties,  certificates  of  authority,  license  f ees^ 
and  otherwise,  an  amount  equal  to  the  amount  of  snch  chargea 
and  payments  imposed  by  the  laws  of  such  State  upon  the 
companies  of  this  State  and  the  agents  thereof."  On  the  8d 
of  February,  1866,  the  Legislature  of  the  State  of  Virginia 
passed  an  Act,  {Zaws  of  Virginia^  1865-6,  ehap.  96,  jp.  206,) 
the  1st  section  of  which,  as  amended  by  an  Act  passed  March 
25th,  1871,  {Laws  of  Virginia,  1870-1,  chap.  194,  p.  284,) 
provided  that  no  insurance  company  not  incorporated  under 
the  laws  of  the  State  of  Virginia  £dbould  carry  on  its  business 
in  that  State  without  first  obtaining  a  license ;  and  that  no  such 
company  should  receive  snch  license  until  it  should  have  de- 
posited with  the  Treasurer  of  the  State  certain  specified  se- 
curities, and,  among  them,  bonds  of  the  United  States,  to  an 


MARCH,  1882.  407 


The  ProYidenca  is  Stonington  Steamship  Co.  v.  The  Yirginia  F.  A  M.  Ids.  Co. 

amount  equal  to  5  per  cent  of  its  capital  stock,  the  deposit  of 
securities  to  be  in  no  case  of  less  cash  value  than  $10,000,  and 
not  being  required  to  be  of  greater  cash  value  than  $50,000. 
The  Act  of  Virginia,  of  1866,  provides  that  the  bonds  are  to 
be  held  to  pay  the  liabilities  of  the  insurance  company,  upon 
its  insurance  policies  made  in  favor  of  any  citizen  or  inhabitant 
of  Virginia,  and  the  Treasurer  is  directed  to  apply  the  inter- 
est on  the  bonds,  and  the  proceeds  of  the  sale  of  them,  to  the 
payment  of  such  liabilities.  The  Act  also  provides,  that,  if 
the  company  shall  cease  to  carry  on  business  in  Virginia,  and 
its  liabilities  on  its  insurance  policies,  whether  fixed  or  con- 
tingent, to  the  citizens  and  inhabitants  of  Virginia,  shall  have 
been  satisfied  or  shall  have  terminated,  on  satisfactory  evi- 
dence of  that  fact  to  the  Treasurer,  he  ^' shall  deliver"  to  such 
company  the  bonds  deposited  with  him  by  it,  or  such  of  them 
at  remain  after  paying  its  liabilities  above  specified,  or,  if 
the  company  shall  reduce  the  amount  of  its  liabilities,  both 
fixed  and  contingent,  upon  its  policies  of  insurance  to  the  cit- 
izens and  inhabitants  of  Virginia,  below  the  amount  of  the 
bonds  in  the  possession  of  the  Treasurer,  he  '^  may  deliver  " 
to  such  company  a  part  of  the  bonds  deposited  by  it  with 
him,  but  so  that  the  bonds  in  his  possession  shall  always  be 
equal  to  its  liabilities  upon  the  insurance  policies  to  citizens 
and  inhabitants  of  Virginia. 

On  the  31st  of  August,  1879,  the  defendant  withdrew  its 
agency  from  the  State  of  New  York.  It  had  outstanding 
policies  of  insurance  against  fire  issued  to  residents  and  inhab- 
itants of  New  York,  to  an  amount  exceeding  $10,000,  from 
that  date  until  February  15th,  1881,  on  which  day  it  cancelled 
all  its  risks  outstanding  in  New  York,  and  called  its  policies 
in.  It  then  applied  to  the  insurance  superintendent  for  the 
said  bonds,  but  he  refused  to  deliver  them  because  of  said  at- 
tachment. The  bonds  were  so  deposited  solely  to  conform  to 
the  requirements  of  the  said  statute  of  New  York. 

The  defendant,  having  appeared  and  answered,  removed 
the  suit  into  this  Court,  and  now  moves  to  set  aside  the  levy 
under  the  attachment.     The  motion  is  made  with  the  concur- 


408  SOUTHERN  DISTRICT  OF  NEW  YORE, 


The  ProYidenoe  A  Stonington  Steunahip  Co.  v.  The  YirgiDia  F.  is  M.  Ins.  Oo. 

rence  of  the  insurance  superintendent.  It  is  plain  that  the 
defendant  deposited  the  bonds,  under  the  said  statute  of  New 
York,  because  the  Act  of  Virginia  required  from  a  New  York 
insurance  company  a  deposit  of  securities,  for  the  protection 
of  policy  holders,  which  the  statutes  of  New  York  did  not 
otherwise  require  from  a  Virginia  insurance  company.  Prior 
to  the  Act  of  1865,  of  New  York,  there  was  no  law  of  New 
York  requiring  any  deposit  from  a  fire  or  marine  insurance 
company  of  another  State  of  the  United  States,  nor  has  there 
been  any  since,  except  what  is  required  under  the  provisions 
of  the  Act  of  1 865.  The  deposit  required  by  §  28  of  the 
New  York  Act  of  June  25th,  1853,  {Laios  of  New  York, 
1858,  cliap.  466,)  is  required  only  from  fire  insurance  com- 
panies incorporated  or  organized  under  a  foreign  government, 
as  distinguished  from  another  State  of  the  United  States. 
The  enactment  by  Virginia,  of  its  Acts  of  1866  and  1871, 
brought  into  operation  on  the  defendant  the  New  York  Act 
of  1865.  But  the  deposit  made  under  that  Act  of  1865  is 
made  *'  for  a  like  purpose  "  with  the  purpose  for  which  a  de- 
posit is  made  in  Virginia,  under  the  Virginia  Acts  of  1866 
and  1871,  and  for  no  other  or  further  purpose.  That  purpose 
is  the  purpose  of  paying  the  liabilities  of  the  depositing  com- 
pany on  its  insurance  policies  to  citizens  and  inhabitants  of 
the  State  where  the  deposit  is  made.  When  such  company 
ceases  to  carry  on  business  in  such  State,  and  those  liabilities 
no  longer  exist,  the  depositing  company  is  entitled  to  receive 
back  the  bonds  deposited.  They  were  not  deposited  for  the 
j^tection  of  the  plaintiff  in  this  case,  nor  can  they  be  held, 
under  the  said  statutes  of  New  York,  for  its  protection,  by 
the  insurance  superintendent,  or  applied  by  him  to  any  liabil- 
ity of  the  defendant  to  the  plaintiff,  aside  from  any  force 
there  may  be  in  the  levy  under  the  attachment. 

The  question  is,  whether  the  bonds  were  subject  to  such 
levy,  in  the  hands  of  the  insurance  superintendent.  The 
plaintiff  contends  that  the  bonds  are  property  of  the  defend- 
ant in  this  State,  and  subject  to  the  levy,  particularly  as  they 
are  no  longer  held  for  the  protection  of  any  citizens,  residents 


MABCH,  1882.  409' 


The  Providence  S  Stonington  Steamship  Co.  v.  The  Vlrf^nie  F.  A  M.  loB.  Co. 

or  inhabitants  of  this  State,  holding  policies  issued  by  the  de- 
fendant. 

The  insurance  superintendent  is  a  public  officer  of  the 
State,  created  by  statute,  and  charged  with  the  execution  of 
the  laws  in  relation  to  insurance.  ISTo  case  of  acknowledged 
authority  is  found  which  holds  that  a  public  officer  of  a  State, 
charged  with  a  trust,  created  by  a  public  statute  of  the  State, 
in  respect  to  funds  or  securities  in  his  possession,  can  be  made 
liable  in  respect  to  them,  by  an  attachment  in  favor  of  a  per- 
son not  claiming  under  the  trust.  Decisions  in  analogous 
cases,  as  to  persons  holding  property  or  funds  by  authority  of 
a  statute  or  of  the  law,  under  a  trust  imposed  in  regard  to 
them,  are  numerous.  {Brooks  v.  Cooky  8  Mass.y  247 ;  Colby 
V.  CoateSj  6  Ct4sh.j  558  ;  Colombia  Book  Co.  v.  DeOoh/er^  115 
Mdss.j  67,  69 ;  Earria  v.  Dennie^  8  Peters^  292 ;  Buoha/nan 
V.  Alexander y  4  Howa/rd^  10.)  The  principle  was  applied  by 
the  Court  of  Appeals  of  Virginia,  in  RoU'O  v.  Andes  Ins*  Co,^ 
(23  Oratta/n^  509,)  to  a  case  like  the  present.  The  Treasurer 
of  Virginia,  under  the  Virginia  Acts  of  1866  and  1871,  held 
bonds  deposited  with  him  by  an  Ohio  insurance  company. 
It  ceased  to  do  business  in  Virginia,  and  its  liabilities,  fixed 
and  contingent,  to  citizens  or  residents  of  Virginia,  were  satis- 
fied. This  occurred  about  a  month  after  an  attachment  in  a 
suit  brought  in  Virginia,  against  the  Ohio  company,  by  a  citi- 
zen of  Illinois,  had  been  levied  on  the  bonds  in  the  hands  of 
the  Treasurer.  The  Ohio  company  and  the  Treasurer  moved 
to  abate  the  attachment,  (1,)  because  the  State,  and  its  officers 
and  agents,  were  not  subject  to  attachment  process ;  and  (2,) 
because  the  property  of  the  Ohio  company  in  the  State  treas- 
ury was  not  liable  to  attachment  at  the  suit  of  a  non-resident 
of  Virginia,  but  was  held  in  trust  there  for  the  benefit  of  the 
Virginia  creditors  of  the  company,  and,  as  to  any  residue 
after  the  satisfaction  of  those  claims,  in  trust  to  be  returned 
to  the  company.  The  Court  held  unanimously  that  the 
Treasurer  of  the  State,  having  the  control  and  custody  of 
insurance  funds  and  securities  under  an  Act  of  the  Legisla- 
ture, was  not  subject  to  the  proceeding  by  attachment,  even 


410  SOUTHERN  DISTRICT  OP  NEW  TORE, 

The  ProTidence  A  Stonington  SteMDahip  Co.  v.  The  Yirg^U  F.  A  If.  Ine.  Go. 

though  the  foreign  company  had  satisfied  all  its  liabilities  in 
the  State.  The  Conrt  said  :  '^  It  is  a  question  that  concerns 
the  State.  It  is  certainly  not  compatible  with  her  sovereignty 
and  dignity  to  be  arraigned  before  her  own  tribunals,  at  the 
suit  of  individuals,  in  any  other  mode  than  is  prescribed  by 
her  statutes.  Nor  is  it  consistent  with  her  interests,  or  the 
proper  administration  of  public  affairs,  that  her  officers  shall 
be  arrested  in  their  public  duties,  and  required  to  answer  be- 
fore the  Courts  for  funds  or  securities  committed  to  their 
custody  for  a  specific  purpose,  under  authority  of  a  public 
law.  ♦  ♦  *  The  Treasurer  is  required  by  the  statute  to 
retain  the  securities  in  the  treasury  for  the  special  objects 
contemplated  by  the  Act,  until  the  liabilities  of  the  company 
are  settled  or  terminated.  So  long  as  anything  remains  to  be 
done,  so  long  as  these  liabilities  continue,  he  is  expressly  pro- 
hibited from  disposing  of  or  surrendering  them.  And  when 
the  Treasurer  is  satisfied  these  securities  or  funds  are  no  longer 
required  to  meet  any  liabilities  of  the  company  in  the  State, 
he  is  authorized  and  required  to  deliver  them  to  the  company. 
This  is  the  extent  of  his  authority.  His  power  and  duty  are 
fixed  by  the  law.  Now,  whether  this  does  or  does  not  con- 
stitute a  contract  on  the  part  of  the  State  with  the  insurance 
company,  it  is  the  law  for  the  Treasurer,  fixing  the  measure  of 
his  authority  and  his  responsibility.  He  holds  the  securities 
in  trust,  to  be  administered,  first  for  the  people  of  Virginia, 
and  then  for  the  company  making  the  deposit.  This  is  the 
destination  given  them  by  the  law,  controlling  not  only  the 
Treasurer  but  the  Courts  also ;  and  it  would  seem  there  is 
no  power,  except  that  of  the  Legislature,  to  change  such  des- 
tination. *  *  *  In  returning  the  securities  to  the  com- 
pany depositing  them,  the  State  complies  with  her  engage- 
ment, as  expressed  through  her  statutes.  The  foreign  cred- 
itors have  no  just  cause  of  complaint.  As  to  them  the  secu- 
rities are  in  the  same  condition  they  occupied  before  the  de- 
posit was  made."  These  views  are  sound  and  nothing  can  be 
added  to  their  force.  The  statute  of  New  York  is  to  be  re- 
garded as  if  it  were  in  the  same  words  as  the  Virginia  stat- 


MARCH,  1882.  411 


Rose  V.  The  Stephens  and  Condit  TraDsportatioii  Cknopany. 

ute,  in  reepect  to  the  purpose  and  terms  and  conditions  of  the 
deposit.  Under  snch  a  statute  the  funds  are  not  liable  to 
attachment  at  the  suit  of  a  person  not  claiming  under  a 
policy  issued  to  a  citizen  or  inhabitant  of  New  York. 

The  motion  to  set  aside  the  levy  on  the  securities  in  the 
hands  of  the  insurance  superiotendent  is  granted. 

WilhelmiM  Mynderse^  for  the  motion. 

Wheder  H.  Peckham^  opposed. 


John  C.  Boss 
The  Stephens  and  CoNnrr  Transportation  Company. 

Negligence  may  be  inferred  from  the  fact  of  the  explosion  of  a  steam-boiler  on 
a  yessel,  eren  where  the  defendant  is  nnder  no  contract  obligation  to  the 
plaintift 

(Before  Wallace,  J.,  Southern  District  of  New  York,  March  18th,  1682.) 

Wallace,  J.  The  plaintiff  was  injured  by  the  explosion 
of  a  steam-boiler  which  was  being  used  by  the  defendant  to  pro* 
pel  a  vessel  chartered  by  the  defendant  to  others  to  be  used  for 
the  transportation  of  passengers  and  freight.  If  the  explosion 
resulted  either  from  the  carelessness  of  the  employees  of  the 
defendant  in  charge  of  the  boiler,  or  from  the  negligence  of 
the  defendant  in  sending  forth  an  unsafe  and  dangerous 
boiler  to  be  used  where  human  life  would  be  endangered  if 
the  boiler  should  explode,  it  is  conceded  the  defendant  was 
liable.  It  is  contended,  however,  that  it  was  error  to  instruct 
the  jury  that  they  might  infer  such  negligence  from  the  fact 
of  the  explosion,  and  it  is  argued  that  such  a  presumption 
only  obtains  when  the  defendant  is  under  a  contract  obliga- 


418  SOUTHERN  DISTRICT  OF  NBW  YORK, 

Rom  tr.  The  Stephaoa  and  Coadit  Traasportetion  GonpMi  j. 

tioQ  to  the  plaintiff,  at  in  the  case  of  a  common  carrier  or 
bailee.  Undoubtedly,  the  presumption  has  been  more  fre- 
quently applied  in  cases  against  carrien  of  passengers  than  in 
other  cases  of  negligence,  but  there  is  no  foundation  in  au- 
thority or  in  reason  for  any  such  limitation  of  the  rale  of 
evidence.  The  presumption  originates  from  the  nature  of 
the  act,  not  from  the  nature  of  the  relations  between  the 
parties.  It  is  indulged  as  a  legitimate  inference  whenever 
the  occurrence  is  such  as  in  the  ordinary  couree  of  things  does 
not  take  place  when  proper  care  is  exercised,  and  is  one  for 
which  the  defendant  is  responsible.  It  will  be  snflScient  to 
cite  two  cases  in  illustration  of  the  rule,  without  referring  to 
other  authorities.  In  Scott  v.  The  London  <6  St.  Kaiherme 
Dacha  Co,^  (3  Hurlstone  <&  CoUmafij  596,)  the  plaintiff,  as 
he  was  passing  by  a  warehouse  of  the  defendant,  was  injured 
by  bags  of  sugar  falling  from  a  crane  in  which  they  were  being 
lowered  to  the  ground.  The  Court  said  there  must  be  reason- 
able evidence  of  negligence,  but,  where  the  thing  is  shown 
to  be  under  the  management  of  the  defendant  or  his  servants, 
and  the  accident  is  such  as,  in  the  ordinary  course  of  things, 
does  not  happen  if  those  who  have  the  management  use 
proper  care,  it  affords  reasonable  evidence,  in  the  absence  of 
explanation  by  the  defendant,  that  the  accident  arose  from 
want  of  care.  This  case  is  dted  with  approbation  in  Ttcms- 
jportation  Co.  v.  Dovmer^  (11  WaU.^  129.)  In  MuUen  t.  St. 
John^  (57  If.  Y.^  567,)  the  plaintiff,  who  was  upon  a  street 
sidewalk,  was  injured  by  the  fall  of  an  unoccupied  building 
owned  by  the  defendant,  and  it  was  held  that,  from  the  hap- 
])ening  of  such  an  accident,  in  the  absence  of  explanatory 
circumstances,  negligence  should  be  presumed,  and  the  bur- 
den cast  upon  the  owner  to  disprove  it. 

In  the  present  case,  the  boiler  which  exploded  was  in  the 
control  of  the  employees  of  the  defendant.  As  boilers  do 
not  usually  explode  when  they  are  in  a  safe  condition  and  are 
properly  managed,  the  inference  that  this  boiler  was  not  in  a 
safe  condition,  or  was  not  properly  managed,  was  justifiable, 
and  the  instructions  to  the  jury  were  correct. 


MARCH,   1882.  41S 


SSmpflOD  V.  Dayii. 


The  other  qaestions  which  are  presented  upon  the  motion 
are  not  snflSciently  Berions  to  deserve  extended  comment.  The 
instractions  to  the  jury  must  be  considered  in  their  integrity 
and  not  in  isolated  parts,  and,  so  considered,  present  the  law 
of  the  case  fairly  and  correctly.  The  evidence  amply  justi- 
fied the  jury  in  the  conclusion  that  the  defendant  had  not 
made  such  an  examination  of  the  boiler  as  prudence  required, 
preparatory  to  its  employment  for  the  season  of  1878,  and 
which,  if  made,  would  have  revealed  the  defect. 

The  verdict  undoubtedly  awarded  the  plaintiff  liberal 
damages  for  the  injuries  he  sustained,  but  it  is  very  difficult 
to  measure  the  compensation  which  a  party  should  receive  for 
such  acute  suffering  as  the  plaintiff  experienced.  Certainly, 
the  verdict  is  not  so  obviously  extravagant  as  to  indicate 
prejudice  or  partiality. 

The  motion  for  a  new  trial  is  denied. 

Chaunoey  Sha^er^  for  the  plaintiff. 

JBuileTj  StUlman  <6  Buhiard^  for  the  defendant. 


Jambs  S.  Simpson  and  Geoboe  F.  Simpson 

vs. 
William  H.  Davis.    In  Equttt. 

Tb6  6th  daim  of  design  letters  patent.  No.  12,026,  granted  to  Henry  Teztor, 
Noyember  9th,  1S60,  for  a  design  for  newel  posts,  namely,  "  A  design  for  the 
upper  portion  of  a  newel  poet,  consisting  of  the  scrolled  ornaments,  /,  and  the 
bead,  m,  the  roees  or  rosettes,  n,  upon  each  side,  as  specified,"  is  not  a  claim 
to  a  single  ornament,  within  §  4,929  of  the  Revised  Statutes. 

It  wonld  seem  that  the  design  for  the  cap  of  a  newel  post  is  a  design  for  a 
mannfaetore,  within  said  statute. 

A  newel  post  of  a  certain  shape,  haying  ornaments  and  a  cap,  is  an  artide  of 
manufacture,  within  said  statute. 

(Before  Bbvbdiot,  J.,  Eastern  District  of  New  York,  March  18th,  1682.) 


414  EASTERN  DISTRICT  OF  KEW  YORK, 

SimpBon  v.  Daris. 

Bbnbdiot,  J.  This  action  is  broaght  upon  a  patent  owned 
by  the  plaintifb,  which,  it  is  alleged,  has  been  infringed  bj 
the  defendant.  The  patent  is  for  design  No.  12,026,  and  waa 
iBsned  November  9th,  1880,  to  Henry  Textor.  The  specifica- 
tion states  that  Henry  Textor  is  the  originator  and  producer 
of  a  new  and  improved  design  for  newel  posts,  the  character 
of  which  is  illustrated  by  a  drawing  accompanied  by  a  de- 
scription. There  are  11  claims.  Only  the  fifth,  the  sixth, 
and  the  eleventh  are  relied  on  here.  It  is  not  disputed  that 
the  defendant  is  engaged  in  manufacturing  newel  posts  sim- 
ilar in  ornament,  shape,  and  configuration  to  the  newel  posts 
described  in  the  plaintiffs'  patent.  The  similarity  is  so  great 
that  a  photograph  of  the  plaintifb'  newel  post  is  admitted  to 
correctly  represent  the  newel  post  made  by  the  defendant. 
No  question  in  regard  to  the  infringement  is,  therefore, 
raised,  but  it  is  contended  that  the  patent  is  void  for  want  of 
novelty  as  well  as  of  patentability  in  the  subject-matter. 

The  fifth  claim  of  the  patent  is  for  ^'  a  design  for  the  up- 
per portion  of  a  newel  post,  consisting  of  the  scrolled  orna- 
ments, Z,  and  the  bead,  m,  the  roses  or  rosettes,  n,  upon  each 
side,  as  specified."  The  statute  {Hev.  Stat.j  section  4,999,) 
authorizes  a  patent  for  any  new  and  original  ornament  to  be 
cast  or  otherwise  placed  on  any  article  of  manufacture.  The 
subject-matter  of  the  claim  under  consideration  is  for  an  or- 
nament, not  for  a  newel  post  or  a  part  of  a  newel  post  having 
a  new  or  original  shape  or  configuration,  but  for  an  ornament 
intended  to  be  placed  upon  a  newel  post.  The  claim  does  not 
seek  to  secure  the  scroll  by  itself,  nor  the  bead  by  itself,  nor 
the  roses  by  themselves.  Each  of  these  is  an  ornament,  but 
neither  of  them  is  new.  The  claim,  therefore,  seeks  to  cover 
these  forms  associated  together  in  the  manner  described,  as 
composing  a  single  ornament.  In  the  matter  of  ornamenta- 
tion, mere  juxtaposition  of  old  forms  is,  doubtless,  sufiScient  to 
authorize  a  patent  for  an  ornament,  when,  by  means  of  such 
juxtaposition,  accomplished  by  industry,  genius,  effort  and 
expense,  the  old  forms  are  made  to  become*  component  parts 
of  an   ornament  substantially  new  in  its  effect.    But,  the 


MARCH,   188S.  41S 


Simpson  v.  Dayis. 


resalt  of  the  industry,  genins,  efEort  and  expenae  employed 
must,  as  I  suppose,  be  a  single  ornament,  which,  taken  as  a 
whole,  can  be  considered  to  be  the  embodiment  of  a  new 
idea  in  ornamentation.  The  amount  of  the  novelty  may  be 
small,  but  the  effect  of  the  ornament  must,  to  some  extent,  at 
least,  be  new.  The  ornament  may,  in  this  sense,  be  new  and 
original,  although  all  the  forms  used  in  its  composition  are 
old  and  well  known  forms  of  ornamentation. 

The  claim  under  consideration  is,  therefore,  not  defeated 
when  it  is  shown  that  scrolls  similar  in  effect  to  the  scroll 
described  in  the  claim,  and  that  beads  and  roses  such  as  those 
described,  have  often  before  been  employed  in  the  ornamenta- 
tion of  newel  posts.  The  difficulty  with  the  claim  does  not 
arise  from  want  of  novelty  in  the  forms  employed,  nor  yet  in 
the  want  of  novelty  in  the  method  of  arran^ng  these  forms, 
because,  simple  as  the  arrangement  is,  the  case  furnishes  no 
evidence  that  a  scroll  and  roses  were  ever  before  arranged  one 
above  another,  with  only  a  bead  between.  But  I  Und  it  diffi- 
cult to  consider  that  the  scroll,  roses,  and  bead,  when  arranged 
as  described  in  the  claim,  constitute  a  single  ornament.  There 
is  no  commingling  of  the  lines  forming  the  scroll,  the  bead, 
and  the  roses;  no  new  idea  seems  to  be  embodied  in  the 
method  of  their  arrangement.  All  that  has  been  done  is  to 
place  these  distinct  and  well  known  ornaments  one  above  the 
other,  without  the  production  of  any  such  combined  effect  as 
to  entitle  the  whole  to  be  treated  as  a  new  and  original  orna- 
ment. No  new  ornament  has  in  fact  been  produced.  If, 
therefore,  the  plaintiffs'  action  rested  upon  the  fifth  claim  of 
his  patent  alone,  I  should  hesitate  to  uphold  it. 

The  sixth  claim  is  for  '^  a  design  for  the  cap  of  a  newel 
post,  consisting  of  the  gable-like  projection,  ^,  having  rounded 
or  curved  outlines,  the  recessed  or  sunken  scrolled  ornaments, 
9,  the  foliated  moulding,  ^,  and  the  fillet,  t/,  as  specified." 
The  statute  authorizes  a  patent  for  ^'any  new  and  original 
design  for  a  manufacture ; "  and  this  claim  is  intended  to 
cover  such  a  design.  The  first  question  presented  by  this 
daim  is,  whether  the  cap  of  a  newel  post  is  a  manufacture. 


416  SA8TERK  DISTRICT  OF  NEW  TOBB; 

SimpaoD  «.  DsTis. 

within  the  meaniDg  of  the  statate.  The  testimony  shows 
that  the  cap  of  a  newel  post  is  a  distinct  article,  often  mann* 
factnred  bj  itself,  but  never  nsed  except  in  connection  with 
other  parts,  which,  taken  together,  go  to  make  np  what  is 
known  as  a  newel  post.  Upon  this  testimony,  I  incline  to 
the  opinion  that  the  article  described  in  the  sixth  claim, 
namely,  a  cap  of  a  newel  post,  may  be  held  to  be  a  manofao- 
tnre ;  but  whether  this  be  so  or  not  seems  of  no  importance 
in  view  of  the  seventh  claim  of  the  patent,  which  is  for  the 
whole  newel  post,  indading  the  cap.  The  statate  permits  a 
patent  for  any  new,  nsefnl  and  original  shape  or  configaration 
of  any  article  of  manufacture.  The  seventh  claim  describes 
an  article  of  manufacture,  namely,  a  newel  post  of  a  certain 
shape  or  configuration,  and  having,  among  other  distinctive 
features,  the  ornaments  described  in  the  fifth  claim,  and  the 
cap  described  in  the  sixth  claim. 

Against  this  claim  the  only  defence  made  is  that  the  dis- 
tinctive features  of  the  newel  post  described  were  to  be  found 
in  other  newel  posts  prior  to  the  date  of  the  plaintifiEs'  inven- 
tion, and  many  of  them,  in  fact,  copied  by  the  inventor  him- 
self from  newel  posts  erected  in  New  York.  But  here  the 
difficulty  with  the  defence  is,  that  there  is  no  evidence  that 
any  newel  post  substantially  similar  in  shape  and  configura- 
tion to  the  one  described  in  the  plaintiffs'  patent  had  ever 
before  been  designed.  The  arrangement  of  ornament  and 
shape  presented  by  the  plaintiffs'  post  is  new,  useful  and 
original.  The  several  experts  testify  that  the  newel  post  de- 
scribed in  the  patent  would  not  be  considered,  either  by  the 
trade  or  by  those  wishing  to  buy  such  articles,  to  be  similar 
to  any  of  the  other  newel  posts  put  in  evidence ;  and  the 
proof  is,  that,  as  between  the  plaintiffs'  newel  post  and  the 
one  most  similar  to  it  of  all  those  put  in  evidence,  the  demand 
has  been  twenty  to  one  in  favor  of  the  plaintiffs'  post.  More- 
over, the  defendant  has  thought  it  worth  the  while  to  copy 
the  plaintiffs'  post  exactly. 

I  am,  therefore,  of  the  opinion  that  the  seventh  daim  of 
the  plaintiffs'  patent  can  be  upheld,  and  that  the  patent  se- 


MARCH,  1888.  417 


Shaw  V.  The  Colweli  Lead  Company. 


cares  to  the  plaintifis  the  exclnsive  right  to  make  newel  posts 
such  as  are  in  said  claim  described.  The  fact  being  undis- 
pnted  that  the  defendant  has  made  newel  posts  similar  to  the 
post  described  in  the  seventh  daim,  it  follows  that  the 
plaintifb  are  entitled  to  an  injunction  as  prayed  for,  and  also 
to  an  accounting. 


^wm  H.  Browfhj  for  the  plaintifiEs. 
itr.  H.  Clement^  for  the  defendant. 


William  AirrHomr  Shaw 


V9. 

The  Colwell  Lead  Company.     In  Equitt. 

The  second  daim  of  re-iflsaed  letters  patent,  No.  8,744,  g^ranted  to  Peter  Nay- 

lor,  assignee  of  William  Anthony  Shaw,  Noyember  28d,  1869,  for  an  im- 

proyement  in  the  mann&otnre  of  tin-lined  lead  pipe,  the  original  patent,  No. 

74,618,  having  been  granted  to  said  Shaw,  Febrnary  18th,  1868,  antedated 

Febroary  6th,  1868,  is  valid. 
The  invention  defined. 

The  qnestlons  of  novelty  and  infringement  considered. 
Public  use  for  two  years  before  the  application  for  the  re-issae  of  a  patent  does 

not  affoct  its  validity. 
It  is  sofficient  for  an  invention  to  be  nsefol  in  itself  to  be  patentable,  and  it  is 

not  necessary  it  should  be  better  than  what  was  before  known. 
The  right  to  recover  for  infringements  of  a  patent  is  assignable. 
The  question  of  a  verbal  license  to  the  defendant  to  use  the  patented  invention, 

considered.  ^ 

(Before  Whulcb,  J.,  Southern  District  of  New  York,  March  18th,  1882.) 

Whbelbb,  J.    This  snit  is  brought  for  relief  against  in- 
fringement of  letters  patent,  re-issue  No.  8,744,  dated  Novem- 
ber 23d,  1869,  for  an  improvement  in  the  manufacture  of 
Vol.  XX.— 27 


418  SOUTHERN  DISTRICT  OP  NEW  YORK, 

Shaw  V.  The  Colwell  Lead  Company. 

tin-lined  lead  pipe.  The  bill  allegee  the  grant  of  the  original 
letters,  No.  74,618,  dated  February  18th,  antedated  February 
6th,  1868,  to  tlie  orator;  the  aBsignment  of  them  by  the 
orator  to  Peter  Naylor,  upon  terms  that  he  should  pay  the 
expenses  of  a  re-issue,  prosecute  infringers,  and  pay  one-half 
the  net  profits  to  the  orator ;  the  re-issue  to  Naylor,  assignee 
of  the  orator ;  infringement  by  the  defendant  ever  since  the 
grant  of  the  re-issue ;  and  the  reconveyance  of  the  patent  and 
assignment  of  all  rights  of  action  for  infringement,  on  the 
17th  of  September,  1877,  before  the  bringing  of  the  bill. 
The  answer  sets  up  that  the  invention  had  been  previously 
patented  in  England  to  George  Alderson,  in  English  letters 
patent,  No.  2,749,  on  the  25th  of  February,  1804,  and  to  the 
orator  and  Gardiner  WUlard,  in  letters  patent  of  the  United 
States,  No.  41,401,  dated  January  26th,  1864;  that  the  in- 
yention  was  in  public  use  and  on  sale  for  more  than  two 
years  prior  to  the  application  for  the  re-issued  patent,  with 
the  knowledge,  consent  and  allowance  of  the  orator;  that 
the  orator,  during  the  years  1866, 1867  and  1868,  was  the 
treasurer  of  the  defendant,  and  allowed  the  defendant  to  use 
the  invention ;  and,  by  a  general  denial  of  so  much  of  the 
bill  as  is  not  otherwise  answered,  denies  infringement.  These 
are  the  only  questions  made  by  the  answer  that  are  continued 
in  the  evidence,  or  insisted  upon  in  argument;  there  are 
others  raised  by  the  evidence  and  insisted  upon. 

As  lead  pipe  is  made  by  forcing  a  short  and  very  thick- 
walled  piece  through  dies,  when  softened  by  heat,  and  thereby 
making  it  into  a  much  longer  piece  of  the  same  sized  bore 
and  of  the  required  thickness  of  wall,  so  tin-lined  lead  pipe  is 
made  by  forcing  a  like  short  piece,  composed  of  tin  next  to 
the  bore  and  lead  outside,  through  similar  dies,  when  softened 
by  heat,  thereby  making  a  much  longer  piece  of  pipe  with 
the  inside  of  tin  and  the  outside  of  lead.  The  great  difficulty 
in  making  it  successfully  lay  in  so  shaping  and  proportioning 
the  parts  of  tin  and  lead  in  the  short  piece,  that,  when  forced 
through  the  dies,  the  inside  would  be  of  tin  and  the  outside 
of  lead,  each  of  proper  uniformity  and  thickness.    This  inven- 


MARCH,   1882.  419 


Shaw  V.  Th«  Colwell  Lead  Company. 


tion  was  not  of  tin-lined  lead  pipe,  for  the  patent  asenimed 
that  to  be  before  known,  nor  of  machinery  for  making  sach 
pipe,  nor  of  arranging  tin  within  lead  for  the  purpose  of  being 
80  forced  through  dies,  for  these  were  either  mentioned  or 
described  in  the  patent  and  not  claimed.  The  bodies  of  the 
tin  and  lead,  when  arranged  in  the  short  piece,  ready  to  be 
forced  through,  are  called  ingots,  and  the  whole  a  charge,  in 
the  trade.  The  specification  of  the  patent  set  forth  a  central 
ingot  of  tin,  of  the  outward  form  of  an  inverted  double  frus- 
tum of  a  cone,  the  upper  frustum  containing  a  little  more 
metal,  and  being  a  little  shorter  and  more  tapering  than  the 
lower  one,  encircled  by  an  intermediate  lead  ingot  of  the 
outward  form  of  an  inverted  frustum  of  a  cone,  having  a 
deep  circular  cavity,  marked  D,  in  the  upper  end  of  the  ingot, 
and  an  outer  ingot  of  lead,  of  the  outward  form  of  a  cylinder, 
encircling  the  other ;  and  described  making  the  lead  ingots 
first,  and  casting  the  tin  ingot  in  the  intermediate  lead  one, 
which,  as  the  tin  would  melt  at  lower  temperature  than  the 
lead,  would  permit  so  casting  them  together  without  alloying 
the  tin  with  the  lead.  There  were  four  claims  in  the  original 
patent :  1.  Making  the  charge  of  metal  in  three  distinct  parts, 
as  described,  and  unitiag  them  either  before  or  after  they  are 
put  in  the  cylinder.  2.  Making  the  central  ingot  or  charge 
of  tin  in  the  form  of  a  double  frustum  of  a  cone,  or  its  equiv- 
alent, for  the  purpose  of  securing  a  uniform  thickness  of  tin 
in  the  lead  tube  or  pipe.  3.  Making  the  intermediate  lead  or 
alloy  ingot  in  the  form  of  a  frustum  of  a  cone,  substantially 
as  described.  4.  Making  the  cavities,  D,  in  the  upper  end  of 
the  charge,  for  the  purpose  specified. 

There  are  likewise  four  claims  in  the  re-issue:  1.  The 
manufacture  of  lead-encased  tin  pipe  from  ingots,  or  a  charge 
of  metal  made  substantially  as  herein  described,  of  three 
parts,  whether  the  same  be  united  before  or  after  they  are 
put  in  the  cylinder.  2.  The  manufacture  of  lead-encased  tin 
pipe  from  a  compound  ingot,  composed  of  concentric  parts 
of  lead  and  tin,  when  the  central  ingot  is  made  of  tin,  in  the 
form  of  superposed  inverted  frusta  of  cones,  or  their  equiv- 


420  SOUTHERN  DISTRICT  OF  NEW  YORK, 


Shaw  9.  The  CoIweU  Lead  Campaiiy. 


alent.  3.  In  the  mannfactiire  of  the  compoand  ingot  for  lead- 
encased  tin  pipe,  the  employment  of  an  intermediate  cone  or 
conee,  whereby  a  large  portion  of  the  lead  ingot  may  be  cast 
without  contact  with  the  tin,  thna  reducing  the  alloying  of 
the  two  metala.  4.  In  the  mannfactnre  of  the  compound 
ingot  aa  herein  described,  the  formation  of  the  tin  ingot  of 
superposed  inverted  frusta  of  cones,  the  upper  one  being  of 
laiger  diameter  but  proportionately  shorter  than  the  other. 

No  question  was  made  but  that  the  re-issued  patent  ia 
properly  supported  by  the  original.  The  infringement  claimed 
is  described  by  the  orator  himself  in  answer  to  cross-question 
236,  and  consists  in  making  a  lead  ingot  in  the  form  on  the 
inside  of  the  outside  of  superposed  inverted  frusta  of  cones, 
and  placing  accurately  in  the  centre  a  pipe  of  tin,  of  the  same 
height,  and  filling  the  space  between  them  with  melted  tin, 
making  a  central  ingot  of  tin  of  the  outward  form  of  super- 
posed inverted  frusta  of  cones,  encircled  by  an  ingot  of  lead 
of  the  outward  form  of  a  cylinder.  There  is  no  charge  of 
metal  in  three  parts,  as  described  in  the  first  claim,  nor  of 
intermediate  cones,  or  ingots,  as  described  in  the  third  daim, 
of  each  patent ;  nor  of  cavities  D,  as  described  in  the  fourth 
claim  of  the  original ;  nor  of  an  upp^  frustum  of  a  cone  of 
larger  diameter  but  proportionately  shorter  than  a  lower  one, 
as  described  in  the  fourth  claim  of  the  re-issued  patent. 
There  is  nothing  but  the  central  tin  ingot  in  the  form  of 
superposed  inverted  frusta  of  cones,  described  in  the  second 
claim  of  each. 

The  patent  of  Alderson  describes  a  charge  of  metal  for 
drawing  into  tin-lined  lead  pipe,  composed  of  a  central  ingot 
of  tin  cast  into  a  hollow  cylinder  of  lead,  making  the  tin 
ingot  cylindrical  in  outward  form,  and  anticipates  nothing  in 
the  claims  of  either  patent,  and  nothing  described  in  either,  to 
be  referred  to  by  the  claims,  except  the  casting  the  tin  into 
the  lead,  which  may  prevent  alloying,  as  mentioned.  The 
patent  of  Shaw  and  Willard,  set  up  in  the  answer,  is  for  a  tin 
ingot  tapering  at  the  lower  end,  and  enlarging  at  the  upper, 
either  cast  into  a  lead  ingot  shaped  to  receive  it,  or  with  a 


MARCH,  1882.  421 


Shaw  V.  Th«  C!olwell  Lead  CompaDj. 


lead  ingot  cast  about  it.  This  latter  patent  and  the  patent 
in  snit  might  infringe  upon  Alderson's  patent  if  that  was  in 
force ;  but  these  are  for  forms  of  ingots  different  from  his, 
and  are  only  for  these  improvements  in  form,  and  are  not 
anticipated  as  such  by  the  form  in  his.  And  for  the  same 
reason  the  Shaw  and  Willard  patent  does  not  anticipate  this. 
That  is  for  one  form  of  ingot  and  this  for  another ;  and,  as 
such,  each  stands  independent  of  the  other.  The  second 
claim  is  for  the  manufacture  of  lead-encased  tin  pipe  from 
such  ingot.  If  this  means  the  manufactured  article  as  a  pro- 
duct, both  these  patents  would  anticipate  this,  in  description, 
for  thej  both  describe  such  pipe ;  and,  in  fact,  this  would 
anticipate  itself,  and  on  its  face  would  claim  nothing  patent- 
able, for  it  mentions  and  describes  the  making  of  such  pipe 
before.  But  the  word  is  not  understood,  and,  in  argument,  is 
not  claimed,  to  have  been  used  in  that  sense.  It  is  understood 
to  have  been  used  as  a  verbal  noun,  signifying  the  making 
such  pipe  from  such  ingots,  as  set  forth  in  the  corresponding 
claim  in  the  original  patent.  Such  construction  seems  war- 
rantable by  the  authorities.    {Otirtia  on  PatentSy  §§  76,  77.) 

The  point  against  the  validity  of  the  patent  on  account  of 
public  use  for  two  years  before  the  date  of  the  re-issue  seems 
to  rest  upon  the  supposition  that  the  statutes  making  such 
use  a  defence  to  a  patent  apply  to  the  patent  in  suit,  and  to 
the  application  for  that,  whether  it  be  an  original  patent  or  a 
re-issued  patent.  No  case  is  cited  in  support  of  the  proposi- 
tion, nor  has  any  to  the  contrary  been  cited  or  noticed ;  but 
there  are  a  great  many  in  whidi  patents  have  been  upheld 
that  could  not  have  been  if  this  would  be  a  defence,  and  it 
had  been  made.  The  language  of  the  statutes  is  opposed  to 
8uch  construction.  In  section  15  of  the  Act  of  July  4th, 
1836,  (5  27.  S.  Stat,  at  Zargej  128),  this  defence,  as  provided, 
is  the  being  in  public  use  or  on  sale  with  the  consent  and 
allowance  of  the  patentee  before  his  application  for  a  patent. 
Section  7  of  the  Act  of  March  3d,  1839,  (5  U.  S.  SUU.  at 
Large^  354,)  limits  this  defence  to  cases  of  such  sale  or  prior 
use  for  more  than  two  years  prior  to  such  application  for  a 


422  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Sbaw  «.  The  Golwell  Lead  Company. 

patent.  The  Bame  expression  is  continued  in  Beyised  Statntes, 
section  4,886,  providing  for  granting  patents,  and  section 
4,920,  providing  for  this  defence  to  a  patent.  And  farther, 
the  re-issued  patent  is  not  a  new  patent,  but  is  only  an 
amended  form  of  an  old  one,  and  the  application  for  the  re- 
issne  is  not  an  application  for  a  patent,  bnt  is  an  application 
for  an  amendment  of  one ;  and  that  cannot  be  such  an  appli- 
cation as  is  referred  to  as  being  necessary  to  be  made  before 
two  years  of  pnblic  nse  shall  have  been  had. 

There  is  a  qnestion  made  in  the  evidence,  and  insisted 
upon  in  the  argument,  as  to  whether  this  form  of  ingot  it 
any  better,  or  makes  any  better  pipe,  than  prior  forms,  and 
whether,  if  it  does  not,  there  is  any  utility  to  support  the 
patent.  The  statutes  do  not  require  inventions  to  be  superior 
to,  or  better  than,  all  other  things  known,  to  be  patentable. 
It  is  sufiScient  if  they  are  useful  in  themselves,  if  they  are 
also  new.  There  is  no  question,  upon  the  evidence,  but  that 
this  form  of  ingots  is  useful  in  the  manufacture  of  this  kind 
of  pipe,  nor  but  that  the  defendant  uses  it.  If  there  is  an- 
other form  equally  useful,  or  better,  open  to  use  by  the  de- 
fendant, that  could  be  taken,  but  the  right  to  use  that  would 
not  defeat  the  patent  for  this. 

N'one  of  the  reasons  set  up  or  urged  against  the  validity 
of  the  patent  seem  to  be  sufiScient  to  defeat  it.  It  is  insisted, 
however,  that,  if  the  patent  is  valid,  the  use  of  the  invention 
by  the  defendant  has,  upon  the  ground  stated  in  the  answer, 
as  well  as  others,  been  so  permissive  that  the  defendant  is  not 
liable  to  the  orator  for  it.  It  is  expressly  admitted,  on  the 
record,  on  behalf  of  the  defendant,  that  the  orator  is  the 
owner  of  the  patent  and  of  ^^  all  the  rights  which  the  said 
Peter  Naylor  acquired  thereunder,  and  that  he  became  such 
owner  at  the  time  and  in  the  manner  alleged  in  the  bill.'^ 
The  right  to  recover  for  infringement  of  a  patent,  like  other 
choses  in  action,  is  assignable  in  equity,  and  the  real  owner 
of  the  right  is  entitled  to  maintain  a  suit  upon  it,  in  equity, 
in  his  own  name.  Upon  the  allegations  in  the  bill,  and  the 
concession,  the  orator  is  the  owner  of  the  right  to  recover 


MARCH,  1882.  423 


Shaw  tr.  The  ColweU  Lead  Company. 


for  infringements  which  accrued  to  Najlor,  as  well  as  for  any 
which  has  accrued  to  himself  since  he  became  re-entitled  to 
the  patent  itself.  Naylor  had  no  right  of  recovery  for  any- 
thing prior  to  the  date  of  the  re-issned  patent,  November 
28d,  1869.  The  permission  or  estoppel  set  up  in  the  answer 
coyers  only  the  years  1866, 1867, 1868,  and,  therefore,  can 
be  no  answer  to  the  daim  for  infringement  now  in  contro- 
rersy,  even  if  any  permission  from  the  orator,  alone,  would 
be  any  answer  to  a  claim  for  infringement  against  the  rights 
of  Naylor  acquired  from  him  by  the  orator. 

The  evidence  shows  that  the  defendant  brought  suit,  in  a 
State  Court  of  New  York,  against  the  orator,  and  that  the 
orator  set  up,  as  a  defence  to  that  action,  by  way  of  counter- 
claim, that,  in  the  year  1868,  he  was  the  owner  of  the  patent, 
and  gave  the  defendant  the  right  to  use  the  invention,  for 
which  the  defendant  agreed  to  pay  him  what  it  was  reason- 
ably worth ;  that  the  defendant  had  used  the  invention  ;  that 
the  use  was  worth  a  large  sum  of  money ;  and  that  he  had  a 
right  to  collect  the  gains  and  profits.  And,  in  this  present 
case,  the  orator  had  testified,  in  answer  to  the  first  interroga- 
tory, that  he  allowed  the  defendant  to  use  the  invention  upon 
the  understanding  and  agreement  of  the  president  and  secre- 
tary that  the  company  would  compensate  him  for  the  use. 
These  statements  are  relied  upon  and  urged  as  establishing 
such  permissive  use.  The  position  of  the  orator,  so  taken,  if 
unchallenged  by  the  defendant,  might  be  a  good  bar  to  the 
maintenance  of  this  suit  for  infringement.  But  the  defend- 
ant does  not  set  this  up  as  a  defence,  nor  accept  it  as  being 
the  true  situation.  The  validity  of  the  patent  is  denied  in 
the  answer,  and  all  such  recognition  of  its  validity  is  denied 
in  the  evidence,  in  effect.  The  denial  of  the  validity  of  the 
patent  leaves  the  orator  his  standing  in  this  Court ;  and  a  de- 
fence to  the  infringement  most  be  set  up,  and  made  out,  to 
defeat  his  right  of  recovery.  No  license  is  set  up.  If  one 
according  to  these  statements  was  set  up,  the  statements 
would  be  evidence  only,  and  not  conclusive,  and  it  would  not 
be  safe  to  say  now  how  such  an  issue  would  be  found,  if 


424  SOUTHERN  DISTRICT   OF  NEW  YORK, 

Shaw  V.  The  Colwell  Lead  Company. 

properly  made.    These  statements  refer  to  time  when  the 
orator  himself  held  the  patent,  and  before  the  conveyance  to 
Naylor.    If  sach  permission  was  given  it  might  amoant  to 
a  mere  revocable  license,  of  which  the  conveyance  of  the 
patent  wonld  be  a  revocation.    No  license  at  all  from  Naylor 
is  mentioned,  and  a  mere  license  from  the  orator  would  not 
operate  against  the  rights  of  Naylor,  unless  by  way  of  es- 
toppel against  these  rights  in  the  orator's  hands.    No  founda- 
tion for  such  an  estoppd  is  laid.    It  does  not  appear,  so  fa^ 
as  has  been  alluded  to  by  counsel,  or  observed,  but  the  de- 
fendant knew  of  the  conveyance  to  Naylor,  and  knew  that 
the  use  of  the  invention  was  an  infringement  of  Naylor's 
rights.    The  orator  had  ceased  to  be  an  officer  of,  and  to  be 
immediately  connected  with,  the  defendant  company,  and  it 
is  not  claimed  that  when  he  left  he  undertook  to  agree  that 
the  use  of  the  invention  patented  in  this  patent  might  be 
retained.     The  evidence  also  shows  that,  July  28d,  1867, 
the  defendant   entered   into  an    agreement  with  Tatham, 
Brothers,  a  firm,  for  license  to  them  to  use  several  patents 
owned  by  the  defendant  relating  to  tin-lined  lead  pipe,  and 
its  manufacture,  upon  certain  considerations  and  royalties. 
The  contract  was  in  writing,  executed  by  the  defendant  and 
by  that  firm,  and  contained  a  daase,  seventh,  providing  that 
the  agreement  should  ^*  remain  in  force  during  the  continu- 
ance of  the  said  patents,  and  any  improvement  in  the  manu- 
facture of  the  pipe  made  by  either  "  should  '^  be  for  the  mu- 
tual benefit  of  both  of  the  parties  to  this  agreement."    The 
orator  was  an  officer  of  the  defendant  at  the  time,  and  it  is 
argued  that  thereby  he  became  a  party  to  the  agreement  and 
bound  himself  to  not  only  give  to  Tatham,  Brothers,  but  to 
the  defendant,  any  improvement  he  might  make  in  that  man- 
ufacture.   The  defendant  was  a  corporation,  distinct  in  legal 
identity  from  its  officers,  and  that,  not  they,  was  the  contract- 
ing party  on  one  side  of  that  agreement.    The  clause  seems 
to  refer  to  two  parties  only,  one  on  each  side,  the  firm  on 
one  side  and  the  coiporation  on  the  other,  and  it  does  not 


MABOH,   1882.  435 


Shaw  V.  The  Colwdl  Lead  Company. 


seem  capable  of  including  any  others  within  its  scope  or 
operation. 

The  defendant  also  insists  that  it  made  large  outlays  upon 
experiments  to  ascertain  the  best  form  of  ingot  for  these  pur- 
poses, and  that  these  outlays  covered  materials  for  making 
this  form  of  ingot,  and  that  the  orator  knew  of  these  experi- 
ments and  expenditures,  and  did  not  object  to  them,  and  that 
now  he  ought  not,  in  justice,  to  be  heard  to  claim  that  the 
tise  by  the  defendant  of  this  form  of  ingot  was  an  infringe- 
ment upon  any  one's  rights.  The  defendant  does  not  go 
80  far  in  this  direction  as  to  set  up  that  this  invention  was 
known  to  and  used  by  others  in  the  employ  of  the  defendant 
prior  to  the  orator's  discovery  of  it,  so  as  to  defeat  the  pat- 
ent ;  nor  as  to  show  that  the  expenditures  were  made  in  com- 
pleting this  invention,  or  in  developing  it,  on  the  &ith  of  any 
representation  by  the  orator  that  the  defendant  should  have 
the  use  of  it.  The  outlays  were  made  in  experiments  upon 
various  other  forms  of  ingots ;  the  orator  invented  this  form, 
and  patented  it,  without  objection  by  the  defendant  or  any  of 
its  oiBcers,  and  no  expenditure  about  it  is  shown  other  than 
the  making  such  implements  as  were  necessary  to  use  it. 
The  defendant  may  have  understood  that  the  use  made  of  the 
invention  while  the  orator  was  treasurer  of  the  company  was 
permitted  on  account  of  that  relation,  and  not  wrongful,  but 
that  does  not  cover  the  claim  of  infringement  involved  in 
this  case.  The  relation  ceased,  the  patent  was  transferred  to 
Naylor  and  re-issued,  and  nothing  was  done  by  the  defendant 
to  retain  or  obtain  the  right  to  use  this  invention.  The 
orator  obtained  other  patents  alone,  and  as  joint  inventor,  and 
the  defendant  carefully  obtained  the  title  to  them;  but  it 
appears  to  have  taken  no  steps  to  do  the  same  with  this. 
The  defendant  may  have  been  misled  into  supposing  it  would 
have  the  right  to  use  the  invention,  notwithstanding  the  pat- 
ent, but,  if  so,  it  was  without  the  fault  of  the  orator,  so  far  as 
is  pointed  out.  Counsel  have  not  called  attention  to  the  tes- 
timony of  any  witness,  and  the  testimony  of  none  has  been 
noticed,  showing  that  the  orator  has  at  any  time  said  anything 


426  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Searlt  v.  Bonton. 

to  the  officers  or  agents  of  the  defendant  to  gi^e  them  to  nn* 
derstand  that  he  should  not  insist  upon  his  patent. 

Let  a  decree  be  entered  that  the  orator  is  the  owner  of  the 
patent ;  that  the  second  claim  is  valid ;  that  the  defendant 
has  infringed  that  claim ;  and  for  an  injunction  and  an  ac- 
count, with  costs. 

Amos  BroadnaaOj  for  the  plaintiff. 

Ten  Eyck  <6  Remi/n^toiiy  for  the  defendant. 


Anson  Seabls 
Charles  C.  Bouton  and  others.    In  Equitt. 

The  Mcond  eUim  of  re-issned  letters  patent  No.  9,297,  granted  to  Anson  Searls, 
Jnly  18th,  1880,  for  an  improTement  in  whip  sockets,  the  ori^al.  No. 
160,196,  haying  been  granted  April  28th,  1874,  and  letters  patent  No. 
281,610,  granted  Angnst  24th,  1880,  to  Anson  Searls,  assignee  of  John  M. 
Underwood,  for  an  improyement  in  whip  sockets,  are  valid. 

The  question  of  the  differeooe  between  the  re-issne  and  the  ori^^nal  patent  can- 
not be  considered  unless  the  original  is  pnt  in  eyidence. 

The  answer  alleged  prior  knowledge  by  persons  named,  bnt  not  prior  nse,  and 
aUeged  that  said  persons  were  "  of "  a  place  named,  but  did  not  allege  knowl- 
edge there  or  at  any  other  place.  Althoogh  knowledge  at  the  place  named 
was  proyed,  the  proof  was  objected  to  because  the  defence  was  not  alleged  in 
the  terms  provided  by  statute,  and  it  was  held  that  the  defence  could  not  pre- 
vail. 

The  question  of  a  license  considered. 

(Before  Whulu,  J.,  Southern  District  of  New  York,  March  18th,  1882.) 

Wheeleb,  J.  This  suit  is  brought  upon  re-issued  letters 
patent.  No.  9,297,  granted  Jalj  13th,  1880,  to  the  orator,  for 
an  improvement  in  whip  sockets,  the  original,  No.  150,195, 
haying  been  granted  April  28th.  1874;  and  upon  original 
letters  patent,  No.  231,510,  granted  August  24th,  1880,  to 


MARCH,  1882.  427 


Searls  v.  Boatoo. 


the  orator,  as  assignee  of  John  M.  Underwood,  also  for  an 
improyement  in  whip  sockets.  The  defences  set  np  in  the 
answer,  are,  to  the  former,  that  it  was  not  properly  re-issued 
for  the  same  invention  described  in  the  original ;  that  the  in- 
vention had  been  preyionslj  patented  in  several  prior  patents 
in  this  conntiy;  that  the  invention  was  previously  ^^well 
known ''  to,  among  others,  Charles  A.  Flesche,  John  Perpente 
and  E.  E.  Stevens,  without  saying  that  it  had  been  used  by 
any  person  ;  and  that  defendants  haye  not  infringed  ;  and  to 
the  latter  the  defence  is  want  of  novelty. 

Although  this  objection  to  the  re-issue  is  set  up  in  the 
answer,  the  original  patent  is  not  put  in  evidence  at  all ;  and 
there  is  nothing  properly  before  the  Court  by  which  to  de- 
termine whether  the  original  and  the  re-issue  are  for  the  same 
invention  or  not.    As  the  re-issue  was  granted  by  the  proper 
officer  the  presumption  is  that  it  was  properly  granted ;  and 
there  is  nothing  in  the  case  to  overcome  that  presumption. 
The  patent  is  for  a  centrally  perforated  rubber  disk  fitting 
loosely  into    an   inner   groove   near    the    top    of   a  whip 
socket,  to  steady  the  whip,  and  retained  there  by  its  expan- 
sive force  keeping  its  outer  edge  within  the  walls  of  the 
groove,  and  permitting  the  insertion  and  withdrawal  of  the 
whip  by  its  elasticity.     The  evidence  shows  that  such  disks 
had  been  for  some  time  known  and  used  for  this  purpose  by 
being  placed  in  the  whip  socket  near  the  top*,  and  being 
clamped  or  held  there  by  the  outer  edge  placed  firmly  between 
the  body  and  top  of  the  socket,  or  between  a  shoulder  in  the ' 
socket  and  a  closely  fitting  ring,  and  by  other  similar  arrange- 
ments for  holding  the  outer  edge  tightly.    These  were  pat- 
ented in  the  prior  patents  set  up  in  the  answer.    In  the  use 
of  disks  so  fastened,  the  insertion  and  withdrawal  of  the 
whip  would  bend  the  inner  part  up  and  down,  and  cause 
it  to  break  from  the  outer  part  at  the  edge  of  where  it  was 
firmly  held.    The  invention  of  the  orator  obviated  this  break- 
ing largely,  by  allowing  the  outer  edge  of  the  disk  to  roll  in 
the  groove  with  the  movement  up  and  down  of  the  interior. 
This  kind  of  disk  was  not  described  in  any  of  the  prior  pat- 
ents* It  could  be  used  in  a  socket  formed  in  one  piece  in  that 


438  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Saarls  v.  BouUnl 

part;  and  the  patent  describeB  making  its  oater  edge  of 
harder  mbber  than  its  inner  edge,  to  make  it  more  secnre  in 
its  place,  and  still  permit  the  insertion  and  withdrawal  of  the 
whip.  There  are  three  daims :  the  first  is  of  a  whip  socket 
formed  there  in  one  piece,  with  a  groove,  and  such  a  disk  m- 
serted  in  it;  the  second  is  for  the  combination  of  such  a  disk 
so  held  in  place  with  a  whip  socket ;  and  the  third  is  for  such 
a  combination  with  a  disk  having  its  outer  edge  of  harder 
mbber.  The  second  claim  seems  to  cover  the  whole  that  the 
patent  can  be  constmed  to  cover.  The  whip  socket  without 
the  loosely  fitting  disk  in  the  groove  would  not  be  new ;  and 
such  a  fitting  disk  in  a  whip  socket  would  include  one  with  a 
harder  edge.  This  combination  is  not  shown  in  any  of  the 
patents.  The  patents  are  all  for  comparatively  small  differ- 
ences ;  and  this  difference  is  small,  but  it  exists,  and  is  huge 
enough  to  be  patented. 

The  allegation  in  the  answer  as  to  knowledge,  without  an 
allegation  of  use,  seems  to  have  been  made  intentionally, 
in  view  of  the  evidence  to  support  it,  rather  than  inadvert- 
ently. The  proof,  at  most,  shows  that  but  two  sockets  were 
made  showing  this  invention,  and  that  these  were  laid  away 
with  other  specimens,  without  the  rubber  disks  being  in  the 
grooves.  Flesche,  who  made  them«  afterwards  took  a  patent, 
which  is  one  of  those  set  up  as  anticipations,  without  this 
feature,  and  no  use  of  them  otherwise  is  shown.  One  of 
them,  defendants^  exhibit  L,  is  in  evidence,  with  a  rubber 
disk,  made  since,  in  the  groove.  As  so  put  together,  this  ex- 
hibit does  seem  to  show  all  the  elements  of  this  patent,  as 
construed.  The  evidence  was  seasonably  objected  to  for  the 
reason  of  the  lack  in  the  answer,  and  the  question  is  whether 
such  an  answer  supported  by  proof  will  defeat  a  patent  The 
section  of  the  statute  relating  to  the  granting  of  patents  pro- 
vides that  they  may  be  granted  if  the  invention  was  not 
^^  known  or  used  "  by  others ;  as  if  either  knowledge  or  use 
would  prevent.  (Hev.  Stat.,  sec.  4,886.)  The  section  relat- 
ing to  defences  and  the  mode  of  making  them  (§  4,930)  pro- 
vides for  notice  stating  not  only  the  names  and  residences  of 


MARCH,  1882.  439 


Searli  v.  Bovton. 


the  perBonB  allied  to  have  had  prior  knowledge  of  the  inyen- 
tion,  but  adds,  ^^  and  where  and  by  whom  it  had  been  need." 
In  Oayler  v.  Wilder^  (10  How.^  477,)  it  was  held,  that  these 
statutes  were  to  be  construed  together,  and  with  others  on  the 
same  subject,  and  that  prior  knowledge  of  an  inyention  not 
accessible  to  the  public  would  not  defeat  a  patent.  The 
knowledge  might  be  acquired  in  a  foreign  country  and  the  in- 
yention not  be  patented  or  described  in  a  printed  pubUeation 
there,  and  such  knowledge  would  not  prevent  or  defeat  a  pat- 
ent by  another  in  this  country.  The  answer  alleges  knowl- 
edge by  persons  of  New  Haven,  Oonnecticut,  but  not  knowl- 
edge at  New  Haven,  or  any  other  place.  The  proof  goes 
beyond  this,  and  shows  such  knowle<^e  as  there  was  to  have 
been  at  New  Haven ;  but,  affirmative  defences,  and  especially 
this  defence,  as  provided  and  regulated  by  the  statute,  must 
be  alleged  as  well  as  proved,  and  proof  objected  to  for  want 
of  allegation  will  not  help  out  the  defence.  {Roemer  v.  Sir 
many  95  U.  S.y  214.)    This  defence  cannot  prevail,  as  made. 

The  defence  of  non-infringement  rests  upon  a  license 
granted  by  the  orator  to  John  O.  Merriam  and  Edwin  Cham- 
berlain, "to  manufacture,**  "at  their  shop  in  Troy,  N.  T., 
and  no  other  place  or  places."  This  appears  to  be  a  personal 
license,  not  transferable ;  and  a  license  to  make  only.  Mer- 
riam and  Chamberlain  had  a  shop  in  Troy  and  constituted  a 
firm.  Merriam  appears  to  have  sold  out  to  a  new  firm  com- 
posed of  Edwin  Chamberlain  and  Perry  D.  Eandall.  Edwin 
Chamberlain  has  since  died,  and  Edward  Chamberlain  has  suc- 
ceeded him  in  the  firm  of  Chamberlain  &  Bandall.  Merriam 
appears  to  have  ordered  materials,  or  to  have  permitted 
Chamberlan  &  Bandall  to  order  them  in  his  name,  for  use  in 
making  whip  sockets  at  that  shop,  but  he  does  not  appear  to 
have  been  engaged  himself  in  the  manufacture.  Sockets 
made  under  and  pursuant  to  the  license  would  be  free  to  the 
trade,  but  sockets  merely  dealt  in  by  the  licensees  would  not 
thereby  be  made  free.  The  defendants  have  not  made  it  clear 
that  the  sockets  they  have  sold,  which  would  otherwise  be  an 
infringement,  were  made  under  and  pursuant  to  the  license. 


480  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Hoe  tr.  Eahler. 

Therefore,  they  must  be  adjudged  to  have  infringed ;  the  ex- 
tent of  the  infringement,  unlawfully  done,  must  of  course  go 
to  the  master  for  determination. 

There  was  some  difficulty  in  having  these  rubber  disks 
thick  enough  to  well  retain  their  places  in  the  sockets,  and  at 
the  same  time  yielding  enough  to  permit  ready  insertion  and 
withdrawal  of  difEerent  sized  whips.  Underwood  invented 
cutting  away  portions  of  the  disk  at  intervals,  around,  be- 
tween the  outer  edge  and  the  perforation,  making  them 
more  yielding  in  the  interior,  whereby  this  difficulty  was,  in 
some  measure  at  least,  overcome.  His  patent  is  for  this  im- 
provement. The  evidence  of  anticipating  devices  shows 
nothing  like  this. 

As  the  case  is  made  up  and  presented,  the  patents  must 
be  adjudged  valid,  and  to  be  infringed. 

Let  a  decree  be  entered  for  the  orator,  for  an  injunction 
and  an  account,  according  to  the  prayer  of  the  bill,  with  costs. 

J.  P.  Mtohj  for  the  plaintiff. 

ilT.  Davenport^  for  the  defendants. 


BioHABD  M.  Rob  and  Stephen  D.  Titoksb 
CoNBAD  Kahlkb.    In  EgmTT. 

Claims  8  and  4  of  letters  patent  No.  181,217,  granted  to  Richard  H.  Hoe  and 
Stephen  D.  Tncker,  September  10th,  1872,  for  an  "  improvement  in  printing 
preaaes,"  namely,  **  8.  Separating  two  following  sheets  of  papers,  in  their  trarel 
to  the  fly  frame,  into  two  differeot  paths,  by  an  arrangement  of  tapes  and 
switches,  and  making  the  trarel  of  one  sheet  suitably  longer  than  the  other, 
so  that,  when  they  meet  again,  they  will  issue  one  upon  the  other  to  the  fly, 
substantially  in  the  manner  described  and  specified.  4.  The  employment  and 
use  of  the  acyusting  roller  69,  for  regulating  the  trarel  of  the  first  sheet,  oon- 


MARCH,   1882.  431 


Hoe  V.  Eahler. 


stnicted  uid  operating  rabBtantially  in  the  manner  deacribed  and  speotfied," 
are  valid. 

Claim  8  is  for  an  arrangement  of  tapee  and  switchee,  which  separates  two  fol- 
lowing sheets  of  the  printed  papers,  in  their  trarel  to  the  fly-frame,  into  two 
different  paths,  the  trayel  of  one  of  the  two  sheets  in  its  path  being  suitably 
longer  than  the  trarel  of  the  other  of  the  two  sheets  in  its  path,  so  that^  when 
the  two  sheets  meet  again,  they  will  issne  one  accurately  superimposed  upon 
the  other,  to  the  fly. 

The  defendant's  apparatus  had  no  fly-frames,  the  sheets  in  it  issuing  in  pairs  to 
a  folding  apparatus,  and  it  had  single-acting  switches,  instead  of  double-act- 
ing switches,  at  the  point  wbere  the  longer  and  shorter  paths  took  their  de- 
parture, and  It  had  no  switches  to  separate  the  sheets  after  they  had  issued  in 
pairs,  but  it  was  held  to  inMnge  claim  8. 

H.,  one  of  the  patentees,  filed  in  the  Patent  Office,  in  1864,  a  careat  describing 
the  inyention  covered  by  claim  8,  and  iUustrated  it  by  drawings  in  a  manner 
sufficiently  Ml  and  dear  to  have  enabled  the  apparatus  to  be  built  and  put  in 
practice.  In  the  affidavit  to  the  caveat,  H.  swore  that  he  verily  believed 
himself  to  be  the  original  and  first  inventor  of  the  improvement  The  caveat 
was  renewed  in  each  year  from  1860  to  1869,  both  inclusive.  The  patent  was 
appHed  for  in  April,  1872.  H.  and  T.  were  the  joint  inventors  of  what  is 
embraced  in  the  patent,  and  H.  was  not  the  sole  inventor.  H.  believed,  at 
the  time,  that  he  was  the  sole  inventor.  He  was  so  advised  by  his  counsel 
at  the  time,  on  the  ground  that,  although  he  and  T.  were  mutual  inventors, 
the  fact  that  T.  was  the  hired  employee  of  H.  made  the  invention  the  prop- 
erty of  H.  and  authorized  the  taUng  of  the  caveat  in  the  name  of  H.  alone. 
T.  concurred  at  the  time  in  that  view:  Hdd,  that  there  was  nothing  con- 
nected with  the  caveat  to  interfere  with  the  validity  of  the  patent,  or  to  pre- 
vent the  carrying  back  of  the  invention,  as  a  joint  invention,  to  the  date  of 
the  oci^al  flflng  of  the  caveat. 

In  the  contents  of  the  ffie-wrapper  was  an  oath  to  the  specification  and  applica- 
tion, sworn  to  by  H.,  at  London,  England,  before  "a  London  commissioner 
to  administer  oaths  in  common  law.**  No  other  oath  by  H.  appeared  now 
among  the  contents  of  the  file-wrapper.  There  was  a  proper  oath  by  T.  The 
London  commissioner  was  not  an  officer  specified  in  §  80  of  the  Act  of  July 
8th,  1870,  (16  U.  8.  8taL  at  Large,  202,)  as  one  before  whom  the  oath  could 
be  taken.  The  bill  alleged  ''  due  application."  The  answer  denied  that  alle- 
gation generally,  but  did  not  point  out  any  defect  as  to  the  oath  of  H.  The 
plainti/rs  put  in  evidence  the  patent.  The  defendant  put  in  evidence  the  file- 
wrapper  and  contents,  under  the  plain  tiflh'  objection.  The  defendant  took  no 
objection,  in  the  record  of  the  testimony,  as  to  the  oath,  or  as  to  the  putting 
in  evidence  the  patent.  The  defendant  did  not  show  that  there  was  no  proper 
oath  by  H.  or  that  the  oath  appearing  was  the  only  oath  he  made:  Hdd,  that 
it  was  not  shown  that  there  was  not  a  proper  oath  by  H.,  and  that  the  pre- 
sumption arising  from  the  grant  of  the  patent  and  from  the  recitals  in  it  was 
not  rebutted. 

Priority  of  completion  of  mechanism,  as  well  as  priority  of  invention,  deter- 
mined in  favor  of  H.  and  T.,  as  between  them  and  C. 


432  SOUTHERN  DISTRICT  OP  NEW  YORK, 

Hoe  V.  Kahler. 

CUim  4  is  a  daim  to  the  adjiutiiig  roller  for  regnlatiiig  tihe  trayel  of  the  first 
sheets  Id  ito  longer  path,  relatiyely  to  the  trayel  of  the  eecond  eheet^  in  Ua 
shorter  path,  and  Inyolyes  the  two  eeyeral  series  of  tapes  of  the  two  seyeral 
patha  The  adjustment  of  the  relatiye  lengths  of  the  two  paths  to  eaeh 
other,  by  modifying  the  length  of  the  longer  one,  through  an  adjnstment  of 
the  roller  acting  on  the  longer  tapes,  is  the  point  of  the  daim.  Sndk  inyen- 
tion  was  new. 

(Before  Blatoriobd,  J.,  Southern  District  of  New  York,  March  2Yt)h,  1882.) 

Blatohford,  J.  This  suit  is  brought  on  letters  patent 
No.  181,217,  granted  to  Bichard  M.  Hoe  and  Stephen  D. 
Tncker,  September  10th,  1872,  for  an  "  improvement  in  print- 
ing presses."    Infringement  is  alleged  of  only  claims  3  and 

4  of  the  6  daims,  and  only  those  parts  of  the  specification 
need  be  referred  to  which  concern  claims  3  and  4.  The 
specification  says  that  the  inyention  "relates  to  printing 
machines,  and  more  particularly  to  that  class  commonly 
known  as  '  perfecting  presses,'  in  which  the  sheets  of  paper 
are  printed  on  both  sides  in  passing  once  throngh  the  ma- 
chine. It  consists  in  certain  novel  combinations  and  arrange- 
ments of  parts  to  be  more  f ally  described  hereafter,  which 
have  for  their  object  the  more  perfect  operation  of  the  ma- 
chine in  presenting  the  sheets  of  paper  to  the  printing  mech- 
anism, and  conducting  them  away  after  being  printed." 
There  are  6  figures  of  drawings,  of  which  only  figures  4  and 

5  are  important  to  the  present  suit.  The  specification  says: 
"  The  sheets  of  paper  to  be  printed  are  carried  to  and  away 
from  the  printing  mechanism  by  the  series  of  tapes  a,  I,  e,  dy 
Cyf^  y.  A,  *,  shown  in  detail  in  Figs.  4,  5."  Then  the  print- 
ing mechanism  is  described,  which  prints  both  sides  of  each 
sheet,  and  the  means  of  carrying  the  sheets^  to  and  through 
such  mechanism.  Then  the  text  proceeds:  "The  sheets^ 
after  leaving  the  printing  mechanism,  are  carried  between  the 
tapes  Cy  fj  up  to  the  rollers  61,  62,  where,  by  an  arrange- 
ment of  tapes  and  switches,  they  are  alternately  directed  into 
different  paths.  The  tapes  g  and  h  run  in  contact  with  the 
tapes  e^  /,  after  they  diverge  at  the  rollers  61,  62,  and  they 
act  to  carry  the  sheets  forward  after  they  leave  the  tapes  e^f. 


MARCH,   1882.  438 


Hoe  V.  Eahler. 


The  tapes  g  pase  around  the  roller  63  horizontally  a  short  dis- 
tance in  contact  with  the  tapes  fy  and  thence  aronnd  the 
roller  69  to  the  roller  63  again ;  and  the  other  series  A  pass 
from  the  roller  60  upward  and  in  contact  with  the  tapes  e  to 
and  over  the  roUer  59  beneath  the  tapes  e;  thence  horizon- 
tally to  the  roller  58 ;  and  thence  to  and  around  the  roller  70 ; 
and,  finally,  in  a  horizontal  direction,  to  the  roller  63  and  over 
it  to  the  roller  60.  These  tapes  convey  the  printed  sheets  to 
the  flying  mechanism  as  they  are  directed  by  the  switches  72. 
The  printed  sheets,  as  they  leave  the  tapes,  are  received  by 
two  separate  fly-frames  R,  S,  and  laid  by  them  npon  two  sep- 
arate tables,  P,  Q,  and,  throogh  the  arrangement  of  the  tapes 
before  described,  and  the  operation  of  the  switches  71,  72, 
two  sheets  are  presented  at  the  same  time,  one  upon  the 
other,  and  taken  by  the  fly.  The  switches  72  act  to  direct 
the  sheets  into  different  paths,  and  the  switches  71  act  to  di- 
rect their  passage  to  the  fly-frames.  As  the  sheets  are  fed  in 
one  after  Uie  other  from  the  tables  T,  U,  Y,  W,  it  is  necessary 
to  make  some  take  a  longer  path  than  the  others,  in  order  to 
have  two  of  them  issue  together  at  the  same  time  from  the 
tapes,  to  be  taken  by  the  fly-frames,  and,  for  this  purpose, 
the  switches  72  are  employed  and  operated  as  follows:" 
Then  follows  a  description  of  means  for  operating  the 
switches  72,  and  of  means  for  operating  the  switches  71,  and 
the  fly-frames  R,  S,  the  fly-frames  being  alternately  raised 
and  lowered,  one  being  up  while  the  other  is  down.  The 
text  then  goes  on :  ''  In  conducting  the  sheets  from  the  last 
printing  cylinder  to  the  flying  mechanism,  between  the  tapes, 
they  follow  one  immediately  behind  the  other,  as  they  are  fed 
from  the  tables,  and  it  is  necessary,  as  before  stated,  to  make 
the  first  and  third  sheets  travel  a  longer  path  than  the  second 
and  fonrth,  in  order  to  cause  two  sheets  to  issue  simultaneously 
and  lie  one  upon  the  other,  when  taken  by  the  fly-frame.  As 
the  first  sheet,  therefore,  approaches  the  rollers  61,  62,  the 
switch  72  is  turned  into  the  position  shown  in  Fig.  4,  so  that 
the  sheet,  in  its  travel  upward,  strikes  against  the  curved 
edge  of  the  switches  72,  is  directed  by  them  between  the 
Vol.  XX.— 28 


iZ4t  SOUTHERN  DISTRICT  OF  NEW  TORE, 

Hoe  9.  Kahler. 

roIleiB  60,  61,  and  the  tapes  e,  A,  and  thns  caused  to  trayel 
between  these  tapes  over  the  roUere  59, 58,  while,  as  the  edge 
of  the  second  sheet  approaches  the  rollers  61,  62,  the  switch 
is  tnmed  back  into  the  position  shown  in  Fig.  5,  so  that  the 
sheet  will  be  directed  by  it  between  the  rollers  62,  63,  and 
caused  to  enter  between  the  tapes  y,  ^,  and  be  carried  by 
them  in  a  shorter  path  to  the  point  where  they  issue  to  the 
fly.    The  third  and  fourth  sheets  are  acted  upon  by  the 
switches  72  in  the  same  manner,  and  one  caused  to  take  a 
longer  path  than  the  other,  and  so  on  for  the  following  sheets. 
Two  printed  sheets  are  thus  brought  out  on  the  fly-frame  by 
being,  separated  in  their  course,  after  they  leave  the  printing 
mechanism,  into  two  difEerent  paths,  and  being  brought  to- 
gether again,  so  that,  when  they  meet,  they  will  issue  one 
upon  the  other.     The  roller  59  is  held  in  adjustable  bearings 
80,  secured  to  the  side-frames  C,  and  can  be  raised  or  lowered 
to  make  the  path  of  the  first  sheet  longer  or  shorter,  as  it  may 
be  necessary.    The  machine  is  provided  with  two  separate 
fly-frames  and  receiving  tables,  placed  back  to  back,  for  the 
purpose  of  causing  the  sheets,  when  thrown  upon  the  tables, 
to  have  one  side  exposed  to  view  on  one  table,  and  the  other 
side  in  view  on  the  other  table,  so  that  both  printed  sides  are 
in  sight  at  the  same  time,  for  inspection.     In  delivering  the 
double  sheets  to  the  fly-frames,  they  are  directed  alternately 
to  each  fly  by  the  switches  71,  which  vibrate,  between  the 
rollers  57,  68,  and  issue  in  front  of  the  fly  8;  but,  as  the 
edges  of  the  next  two  sheets  approach  the  switches  71,  they 
will  be  turned  in  the  other  direction,  Fig.  5,  and  caused  to 
direct  the  sheets  into  the  path  between  the  rollers  66,  67,  so 
that  they  will  issue  in  front  of  the  fly  R  and  be  laid  upon  the 
table  P."    Claims  8  and  4  are  as  follows:  "3.  Separating 
two  following  sheets  of  papers,  on  their  travel  to  the  fly- 
frame,  into  two  different  paths,  by  an  arrangement  of  tapes 
and  switches,  and  making  the  travel  of  one  sheet  suitably 
longer  than  the  other,  so  that,  when  they  meet  again,  they 
will  issue  one  upon  the  other  to  the  fly,  substantially  in  the 
manner  described  and  specified.    4.  The  employment  and  use 


MARCH,  1882.  435 


Hoe  V,  Eahler. 


of  the  adjiiBting  roller  59,  for  regulating  the  travel  of  the  first 
sheet,  constructed  and  operating  sabstantiallj  in  the  manner 
described  and  specified.^' 

Claim  3  is  for  an  arrangement  of  tapes  and  switches, 
which  separates  two  following  sheets  of  the  printed  papers,  in 
their  travel  to  the  fly-frame,  into  two  different  paths,  the 
travel  of  one  of  the  two  sheets  in  its  path  being  suitably 
longer  than  the  travel  of  the  other  of  the  two  sheets  in  its 
path,  so  that,  when  the  two  sheets  meet  again,  they  will  issue 
one  accurately  superimposed  upon  the  other,  to  the  fly.  Each 
sheet  follows  the  line  of  travel  of  its  controlling  tapes. 
Sheets  1,  3,  5  and  so  on,  in  numerical  order,  go  the  longer 
path,  and  sheets  2,  4,  6  and  so  on,  in  numerical  order,  go  the 
shorter  path,  so  that  sheet  1,  starting  before  sheet  2,  may  yet 
arrive  at  the  same  time  with  it,  and  the  two  issue  in  unison 
one  upon  the  other,  and  so  with  sheets  3  and  4,  and  sheets  5 
and  6.  Two  sheets  are  delivered  at  one  and  the  same  time,  to 
one  fly-frame,  and  then  two  others  are  delivered  at  another 
and  the  same  time,  to  the  other  fly-frame. 

The  defendant's  apparatus  has  no  fly-frames.  The  sheets 
in  it  issue  in  pairs  to  a  folding  apparatus.  It  also  has  single- 
acting  switches,  instead  of  double-acting  switches,  at  the  point 
where  the  longer  and  shorter  paths  take  their  departure,  and 
it  has  no  switches  71.  If  the  fly  delivery  devices,  and  the 
switches  71,  and  the  double-acting  switches,  as  distinguished 
from  the  single-acting  switches,  are  no  part  of  claim  3,  then 
the  infringement  is  clear.  In  the  defendant's  machine,  the 
printed  sheets  are  successively  carried  by  the  same  sets  of 
tapes  to  a  place  of  divergence,  where  there  are  single-acting 
switches,  along  the  edge  of  the  sheet.  When  the  switches 
are  out  of  the  way,  the  sheet  passes  on  in  a  path  which  is  a 
continuation  of  its  path  up  to  the  switches.  When,  for  the 
next  sheet,  the  switches  are  interposed,  that  sheet  is  diverted 
into  another  path.  Then  the  switches  move  out  of  the  way 
.  again,  and  the  first  operation  is  repeated,  and  so  on,  the 
switches  moving  into  the  way  and  out  of  the  way  alternately 
for  each  alternate  sheet.    One  of  the  paths  is  suitably  longer 


■436  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Hoe  V.  Kahler. 

than  the  other,  bo  that,  when  the  two  paths  meet  again,  the 
sheets  coincide,  and  one  is  upon  the  other,  and  they  issue  in 
pairs.  The  question  of  the  infringen>ent  of  claim  3  depends, 
therefore,  mainly  upon  the  proper  construction  of  that  claim. 
The  object  of  the  invention  in  claim  3,  as  indicated  by  the 
text  of  the  specification,  is,  to  carry  along  the  sheets  in  sue* 
cession,  and  divide  them  into  two  series,  each  series  consist- 
ing of  all  the  alternate  sheets,  and  to  cause  a  sheet  of  one 
series  and  the  following  sheet  of  the  other  series  to  be  brought 
together,  in  pairs,  surface  to  surface,  with  coinciding  forward 
edges,  and  thus  be  delivered  ready  for  the  next  operation  that 
is  required.  In  the  plaintiffs'  patent  a  fly  takes  them.  In 
the  defendant's  apparatus  they  pass  on  and  are  mechanically 
folded,  the  two  sheets  at  a  time.  In  the  plaintifiEs'  patent  the 
XLse  of  the  two  flies  makes  necessary  the  switches  71,  to 
direct  each  successive  pair  of  sheets  to  a  different  fly.  But, 
there  is  nothing  in  claim  3  which  refers  to  any  operation  that 
is  to  be  performed  upon  the  sheets  after  any  successive  two 
sheets  are  made  thus  to  coincide  and  be  superimposed.  The 
separation  into  two  paths,  the  longer  and  the  shorter  travel, 
the  meeting,  and  the  issuing  one  upon  the  other,  are  all  there 
is  that  is  made  essential  either  by  the  description  or  the  daim. 
It  is  true  that  the  travel  is  to  the  fly-frame,  because  there  is  a 
fly-frame,  and  that  the  fly  takes  the  pair  of  sheets,  when  they 
issue,  because  there  is  a  fly.  But  the  invention  of  separation, 
travel  in  paths  of  different  lengths,  and  uniting  and  issuing 
one  upon  the  other,  has  no  relation  to  and  does  not  include 
the  fly-frame  or  the  switches  71,  nor  does  daim  8  include 
them.  The  word  "switches,"  in  claim  3,  cannot  be  con- 
etrued  to  include  the  switches  71,  without  distorting  the  lan- 
guage of  the  claim.  The  switches  71  take  no  part  in  sepa- 
rating two  following  sheets  of  papers,  in  their  travel  to  the 
ffy-frame,  into  two  different  paths,  one  longer  than  the  other. 
Tlie  switches  71  act  upon  the  sheets  after  they  have  left  their 
different  paths  and  have  come  together  again,  one  upon  the 
other,  and  act  upon  them  only  as  pairs,  and  have  no  action  to 
make  pairs  of  them. 


MARCH,  1882.  437 


Hoe  V.  Eahler. 


A  determination  as  to  whether  the  switches  72  shall  be 
single-acting  or  double-acting  is  controlled  entirely  by  the 
fact  as  to  whether  the  original  path  is  to  proceed  on  from 
where  the  switches  are  located,  in  a  continuation  of  the  same 
line,  as  a  path  for  one  of  the  sheets,  leaving  the  other  sheet 
of  the  pair  to  be  diverted  by  the  switches  into  another  path, 
or  whether  the  original  path  is  not  to  proceed  on  in  the  same 
line,  but  there  are  to  be  two  new  paths,  each  controlled  by  a 
separate  movement  of  the  switches.  In  the  former  case,  the 
switches  keep  out  of  the  way,  to  permit  the  original  path  to 
continue  on  and  continue  open,  as  one  path,  and  then  come 
into  the  way  to  create  the  second  path.  In  the  latter  case, 
the  switches  come  into  the  way  to  divert  one  sheet  from  its 
original  line  into  one  path,  and  then  come  into  the  way  to 
divert  the  second  sheet  from  it»  original  line  into  another 
path.  There  is  no  difference  in  principle  between  the  switch- 
ing arrangement  in  the  two  cases.  The  change  is  purely  me- 
chanical, depending  on  the  courses  the  sheets  are  to  take  with 
reference  to  the  path  by  which  they  approached.  The  single- 
acting  switches  direct  the  travel  of  the  sheet  out  of  whose 
way  they  keep,  relatively  to  the  path  of  the  other  sheet,  as 
effectually  as  they  direct  the  path  of  the  latter  relatively  to 
that  of  the  former,  by  being  interposed  in  the  way. 

On  the  24th  of  January,  1854,  Mr.  Hoe  filed  in  the  Patent 
OflSce  a  caveat  which  described  the  invention  covered  by 
claim  3,  and  Illustrated  it  by  drawings  in  a  manner  sufiicient- 
ly  full  and  clear  to  have  enabled  the  apparatus  to  be  built  and 
put  in  practice.  The  affidavit  to  the  caveat  was  sworn  to  by 
Mr.  Hoe  February  24th,  1854,  and  was  filed  in  the  Patent 
Office  February  27th,  1854.  In  that  affidavit  Mr.  Hoe 
swears  that  he  verily  believes  himself  to  be  the  original  and 
first  inventor  of  the  improvement.  This  caveat  was  renewed 
October  4th,  1860;  September  18th,  1861;  October  9th, 
1862;  September  16th,  1863;  August  22d,  1884;  October 
5th,  1865;  October  5th,  1866;  October  8d,  1867;  October 
7th,  1868 ;  and  October  5th,  1869.  The  patent  in  suit  was 
applied  for  April  4th,  1872.    The  evidence  of  Mr.  Hoe  and 


488  80UTHBRN  DISTRICT  OF  NEW  YORK, 

Hoe  V.  Eahler. 

Mr.  Tncker  is  entirely  condnfiiye  to  show  that  they  were  the 
joint  inventors  of  what  is  embraced  in  the  patent,  and  that 
Mr.  Hoe  was  not  the  sole  inventor.  Notwithstanding  the 
affidavit  to  the  caveat,  the  fact  of  joint  invention  is  clear. 
Moreover,  the  evidence  shows  that  the  affidavit  was  true,  and 
that  Mr.  Hoe  did  at  the  time  he  made  it  believe  himself  to  be 
the  original  and  first  inventor  of  the  improvement  All  that 
Mr.  Hoe  swears  to  is  his  belief.  It  is  shown  that  he  had  snch 
belief ;  that  he  told  Mr.  Tncker,  at  the  time,  that  he  had  snch 
belief ;  that  he  was  advised  by  counsel,  that,  notwitlistanding 
he  and  Mr.  Tucker  mutually  produced  or  invented  what  was 
in  the  caveat,  yet  their  relations,  as  employer  and  hired  em- 
ployee, made  the  invention  the  property  of  the  employer,  and 
authorized  the  taking  of  the  caveat  in  the  name  of  the  em- 
ployer alone ;  that  he  told  Mr.  Tucker  of  such  advice,  at  the 
time;  and  that  Mr.  Tucker  concurred  in  what  was  done. 
With  this  explanation,  there  is  nothing  connected  with  the 
caveat  to  interfere  with  the  validity  of  the  patent,  or  to  pre- 
vent the  carrying  back  of  the  invention  claimed,  as  a  joint  in- 
vention, to  the  date  of  the  original  filing  of  the  caveat.  The 
caveat  having  been  filed  as  for  an  invention  of  Mr.  Hoe  alone, 
he  could  have  no  motive,  nor  could  there  be  any  advantage,  in 
the  joint  application  for  the  patent,  as  for  a  joint  invention,  ex- 
cept that  it  was  true  that  the  invention  was,  in  fact,  joint,  and 
that  the  advice  he  had  received  before  the  time  the  caveat  was 
filed  had  been  modified  by  different  advice  received  on  full 
'Consideration  of  all  the  facts,  when  a  patent  was  to  be  applied 
for.  The  impulse  of  self  interest  would  naturally  be,  to  dis- 
regard the  truth,  and  thus  avoid  any  necessity  for  explaining 
the  apparent  discrepancy  between  the  affidavit  to  the  caveat 
and  the  affidavit  to  the  application  for  the  patent.  Both  Mr. 
Hoe  and  Mr.  Tucker  testify  fully  and  without  reservation  and 
disclose  fully  all  the  facts  and  all  the  motives  which  induced 
the  action  taken.  There  is  nothing  to  impeach  their  truth  or 
credibility.  The  question  Js  as  to  what  Mr.  Hoe  and  Mr. 
Tucker  believed  at  the  time.  The  question  is  not  as  to 
whether  the  advice  of  the  counsel  was  correct  on  the  facts 


MABCH,  1882.  439 


Hoe  tf.  Eahler. 


presented  to  him.  Exactly  what  facts  were  presented  to  him 
cannot  now  be  told.  The  matter  was  oral.  Whether  all  the 
facts,  as  now  disclosed,  were  presented  to  him,  we  cannot  tell. 
The  evidence  shows  that  tlie  same  counsel  who  gave  the  ad- 
vice, afterwards  and  with  reference  to  taking  out  a  patent  for 
the  joint  inventions  of  Mr.  Hoe  as  employer  and  Mr.  Tncker 
as  his  employee,  advised  that  there  was  a  question  as  to  the 
propriety  of  taking  out  such  patent  in  the  name  of  the  em- 
ployer alone,  and  that  it  was  wiser  to  take  it  ont  in  their  joint 
names.  This  goes  to  confirm  the  fact  that  the  original  advice 
was  given.  Mr.  Hoe,  as  a  layman,  had  a  right  to  act  npon  it, 
and  to  swear  to  his  belief.    This  he  did. 

In  the  contents  of  the  file-wrapper  in  the  matter  of  the 
patent  is  an  oath  sworn  to  by  Mr.  Hoe,  March  12th,  1872,  at 
London,  England,  before  "  J.  Nnnn,  a  London  Commissioner 
to  administer  oaths  in  common  law,"  the  official  character  of 
Mr.  Nnnn  being  anthenticated  by  a  certificate  made  by  the 
Oonsnl-G-eneral  of  the  United  States  at  London.  No  other 
oath  by  Mr.  Hoe  to  the  specification  or  applications  appears 
among  the  contents  of  the  file  wrapper.  There  is  a  proper 
affidavit  by  Mr.  Tucker,  that  he  verily  believes  himself  to  be 
the  first,  original  and  joint  inventor  with  Mr.  Hoe,  and  as  to 
the  other  particulars  required.  The  form  of  the  oath  by 
Mr.  Hoe  is  not  criticised.  But  it  is  objected  that  the  oath 
was  not  taken  before  a  proper  officer,  and  so  there  was  no 
oath  by  Mr.  Hoe,  and  no  valid  patent.  The  contents  of  the 
oath  were  prescribed  by  §  30  of  the  Act  of  July  8th,  1870, 
(16  TJ.  S.  Stat,  at  Large,  202.)  That  section  provided  that 
the  oath  might  be  made  ^^  before  any  person  within  the 
United  States  authorized  by  law  to  administer  oaths,  or,  where 
the  applicant  resides  in  a  foreign  country,  before  any  minister, 
charg6  d'affaires,  consul,  or  commercial  agent,  holding  com- 
mission pnder  the  government  of  the  United  States,  or  before 
any  notary  public  of  the  foreign  country  in  which  the  appli- 
cant may  be."  ^ 

The  bill  alleges  that  the  plaintiffs  obtained  letters  patent 
for  their  invention  '^  in  due  form  of  law."    It  alleges  nothing 


440  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Hoe  V.  Ejthler. 

aB  to  any  oath  or  as  to  any  application,  except  to  say  that  they 
obtained  the  patent  "  upon  dne  apph'cation  therefor."  The 
answer  does  not  aver  any  defect  in  Mr.  Hoe's  oath  or  any 
want  of  an  oath,  bnt  alleges  merely  that  the  defendant  ^^  is 
not  informed  whether,  in  other  respects,  the  requirements  of 
law  relative  to  the  granting  of  letters  patent  were  complied 
with  by  the  said  Hoe  and  Tncker,  or  what,  if  any,  proceedings 
were  had  prior  to  the  issue  of  said  letters  patent,  and,  there- 
fore, denies  the  allegations  of  the  bill  of  complaint  in  respect 
to  the  same,  and  leaves  the  complainants  to  make  snch  proof 
thereof  as  they  may  be  advised."  The  plaintiffs  sustained 
whsLteyer  jprima  facie  burden  there  was  upon  them  because  of 
the  averment  as  to  '^  due  application^"  by  introducing  the  pat- 
ent. The  plaintiffs  did  not  put  in  evidence  the  jSle-wrap- 
per  and  contents.  They  were  put  in  evidence  by  the  defend- 
ant, under  the  objection  by  the  plaintiffs  that  they  were  in- 
competent, irrelevant  and  immaterial.  There  is  no  disclosure 
in  the  record  of  any  point  being  made  by  the  defendant  as  to 
a  defect  in  Mr.  Hoe's  oath,  or  as  to  the  want  of  an  oath  by  Mr. 
Hoe.  The  plaintiffs  had  put  the  patent  in  evidence  without 
any  objection  being  taken  by  the  defendant  that  it  was  not 
properly  granted,  because  there  was  no  proper  oath.  There  is 
no  evidence  put  in  by  the  defendant  to  rebut  the  presump- 
tion, from  the  grant  of  the  patent,  that  there  was  a  proper 
prior  oath  by  Mr.  Hoe,  tending  to  show  that  there  was  no 
such  oath  by  him,  or  that  the  oath  appearing  was  the  only 
oath  he  made.  The  copy  of  the  file-wrapper  and  contents  i» 
a  copy  certified  January  9th,  1881,  and  speaks  only  as  to  what 
were  the  contents  of  the  file-wrapper  on  that  date.  The 
papers  are  not  evidence  to  show  that  there  was  not  a  proper 
oath  by  Mr.  Hoe,  other  than  the  one  referred  to,  even  if  that 
were  an  improper  one.  They  were  not  competent  or  relevant 
to  show  the  want  of  an  oath.  The  patent  recites  (hat  the 
plaintiffs  ^^  have  complied  with  the  various  requirements  of 
law,  in  such  cases  made  and  provided,"  and,  ^^  upon  due  ex^ 
amination  made,"  they  are  ^'  adjudged  to  be  justly  entitled  to 
a  patent  under  the  law."    Section  26  of  the  Act  of  1870  pro- 


IfABCH,   1882.  441 


Hoe  «.  Bjihler. 


yides  that  the  inventor  must  make  application  in  writing  to 
the  Commissioner  of  Patents  for  the  patent.  Section  80  pro- 
yides  for  the  oath  to  be  made  by  the  applicant.  Section  81 
provides  that,  '^  on  the  filing  of  any  such  application  and  the 
payment  of  the  dnty  required  by  law,  the  Commissioner  shall 
cause  an  examination  to  be  made  of  the  alleged  new  invention 
or  discovery ;  and  if,  on  snch  examination,  it  shaU  appear  that 
the  claimant  is  jnstly  entitled  to  a  patent  under  the  law,  and 
that  the  same  is  sufficiently  useful  and  important,  the  Com- 
missioner shaU  issue  a  patent  therefor."  Assuming  that  it  is 
open  to  a  defendant,  on  pleadings  such  as  those  in  this  case,  or 
in  any  case,  to  defend  a  suit  on  a  patent  for  infringement, 
by  setting  up  and  showing  a  defect  in  or  a  want  of  the  pre* 
liminary  affidavit,  when  a  patent  is  issued  containing  such  re- 
citals  as  that  in  this  case — a  question  not  now  necessary  to  be 
considered  or  discussed — ^it  is  very  clear  that  the  defendant  in 
this  case  does  not  show  the  existence  of  such  a  defect  or  want 
by  any  competent  evidence. 

It  remains  to  consider  the  Campbell  machine,  on  the  ques- 
tion of  novelty  as  to  claim  8.  It  is  clear  that  Hoe  and  Tucker 
made  the  invention  before  Campbell  did,  and  clearly  de* 
scribed  it  in  the  caveat  and  drawings  filed  in  1854.  No  press 
containing  the  invention  of  claim  8  was  made  before  1871> 
because  a  printing  press  of  the  kind  and  capacity  shown  in  the 
caveat  is  a  structure  of  large  cost,  not  to  be  made  with  the 
chance  of  a  sale,  but  only  to  be  made  on  an  order,  of  a  par- 
ticular size,  for  a  particular  newspaper.  On  the  2 1st  of  April, 
1871,  an  order  for  the  press  was  received  from  the  Daily 
News.  By  December,  1871,  the  machine  was  built  and  set 
up  and  successfully  worked  in  the  factory  of  Mr.  Hoe,  em- 
bodying claim  3.  It  was  then  taken  down  and  was  put  up  in 
the  Daily  News  Office  and  worked  there  in  February,  1872. 
Although  the  Campbell  delivery  apparatus  is  alleged  to  have 
been  constructed  early  in  the  fall  of  1871,  tapes  were  not 
applied  to  it,  nor  were  the  switches  or  the  mechanism  that 
operates  the  switches  applied,  until  January  or  the  first  of 
February,  1872,  in  AyePs  factory  at  Lowell.    The  delivery 


442  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Hoe  V.  Ejthler. 

apparatus  was  not  set  ap,  nor  were  sheets  of  paper  ran  throngh 
it,  before  that  time.  Therefore,  priority  of  completion  of 
mechanism,  as  well  as  priority  of  invention,  mnst  be  deter- 
mined in  fayor  of  the  plaintiffs. 

Claim  4  is  a  claim  to  the  adjusting  roUer  for  regulating 
the  travel  of  the  first  sheet,  in  its  longer  path,  relatively  to 
the  travel  of  the  second  sheet,  in  its  shorter  path.  It  thus 
involves  the  two  several  series  of  tapes  of  the  two  several 
paths.  The  adjustment  of  the  relative  lengths  of  the  two 
paths  to  each  other,  by  modifying  the  length  of  the  longer 
one,  through  an  adjustment  of  the  roller  acting  on  the  longer 
tapes,  is  the  point  of  the  claim.  The  defendant's  expert  says 
that  the  English  patent  to  Dryden  and  Miles  does  not  contain 
any  description  of  the  apparatus  relied  on,  and  that  the  draw- 
ing alone  is  imperfect  and  is  not  a  sufficient  description  to  in- 
validate claim  4.  The  plaintifb'  expert  says  that  the  roller  of 
Dryden  and  Miles  does  not  act  on  one  set  of  tapes  alone,  but 
varies  the  lengths  of  two  sets  of  tapes  simultaneously  and  to 
substantially  the  same  extent. 

The  defendant's  expert  says  that  the  Dryden  press  at 
Gray  &  Green's  exhibited  the  invention  in  daim  4,  but  he 
gives  no  reason  for  so  thinking.  The  plaintiffs'  expert  says 
that  that  press  had  only  one  set  of  tapes,  and  had  no  method 
of  adjustment  by  which  the  travel  of  one  sheet  could  be  ad- 
justed relatively  to  the  travel  of  another  and  following  sheet ; 
and  that  the  adjustment  of  the  roller  in  it  adjusted  the  travel 
of  the  same  sheet  relatively  to  forms  of  types  which  printed 
the  two  sides  of  it,  so  as  to  make  the  impressions  rt^ster. 
This  is  not  the  invention  of  claim  4. 

There  must  be  a  decree  for  the  plaintiffs  as  to  daims  3 
and  4,  with  costs. 

M,  £,  Philipp  and  J5.  F.  Thurston^  for  the  plaintiffs. 

B.  F,  Lee  and  TT.  Z>.  Shipma/n,^  for  the  defendant. 


MABCH,  1889.  443 


The  Boston  Beef  Packing  Company  v.  Sterens. 


The  Boston  Beef  Packino  CoMPAmr 
Calyin  a.  Stbyeks  and  others. 

8.  and  others  were  sned  personally  and  also  in  their  representatire  capacity  as 
ezeeators  and  tmstees  under  a  will,  for  damages  caased  by  the  fall  of  a  bnild- 
ing  owned  by  ihem  as  such  executors  and  trustees,  and  which  had  been  leased 
by  them.  A  verdict  was  had  for  the  plaintiff,  establishing  that  the  building 
was  unsafe  at  the  time  it  was  leased  and  that  it  fell  without  any  contributory 
fault  in  the  lessees  or  in  the  plainti£  The  plaintiff  occupied  an  acyoining 
buUding:    JEMd, 

(1.)  That  the  action  could  not  be  maintained  against  the  defendants  in  their  rep- 
resentative character,  and  the  process,  pleadings  and  proceedings  must  be 
amended  by  striking  out  the  description  of  the  defendants  official  character, 
without  the  granting  of  a  new  trial ; 

(2.)  That  the  defendants  were  liable  as  individuals  for  negligence  in  authorising 
and  sanctioning  the  acts  of  the  tenants  in  the  use  of  the  property. 

(Before  Wallaob,  J.,  Southern  District  of  New  York,  March  a9th,  1888.) 

Wallace,  J.  The  defendants  are  sued  personally,  and  also 
in  their  representatiye  capacity  as  executors  and  tmstees  under 
the  will  of  Oalvin  Stevens,  deceased,  for  damages  aUeged  to 
have  been  sustained  by  the  plaintiff  by  the  faU  of  a  building 
owned  by  the  defendants  as  such  executors  and  trustees,  and 
which  had  been  leased  by  them  for  a  storage  warehouse.  The 
jury  found  for  the  plaintiff,  and,  under  the  instructions  of  the 
Court,  their  verdict  established  two  propositions :  first,  that 
the  building  was  unfit  and  unsafe  for  use  as  a  storage  ware- 
house at  the  time  the  defendants  let  it  for  such  use;  and, 
second,  that  the  building  fell  without  any  fault  contributing 
to  the  fall  on  the  part  of  the  lessees.  The  plaintiff  was  the 
occupant  of  an  adjoining  building,  and  the  verdict  of  the  jury 
further  established  that  there  was  no  contributory  negligence 
on  the  part  of  the  plaintiff. 

Upon  what  theory  the  defendants  were  sued  in  their  repre- 


444  SOUTHERN  DISTRICT  OF  NEW  YORK. 

The  Boston  Beef  Packing  Company  v.  Stevena. 

sentative  character,  and  by  what  rale  of  law  their  liability  in 
Buch  character  can  be  maintained,  has  not  been  satisfactorily 
shown.  The  question  was  reserved  upon  the  trial,  bnt  no 
authority  has  been  adduced  to  change  the  opinion  expressed 
by  the  Court  upon  the  trial,  that  an  action  cannot  be  main- 
tained against  an  executor  or  trustee  in  his  representative 
character,  for  a  wrongful  act  which  was  not  and  could  not  be 
committed  by  him  in  his  official  capacity,  but  which,  because 
it  was  a  wrongful  act,  was  in  excess  of  his  authority.   * 

A  new  trial,  however,  should  not  be  granted.  The  only 
defendants  in  the  case  are  the  individuals  named  as  such,  and, 
although  they  are  also  described  in  their  representative  char- 
acter, they  cannot,  in  an  action  at  law,  sever  their  identity. 
The  same  individuals  cannot  have  a  judgment  in  their  favor 
and  one  against  them,  in  the  same  record.  The  plaintiff  must 
amend  the  process,  pleadings  and  proceedings  by  striking  out 
the  description  of  the  defendants'  official  character. 

Upon  the  main  question  in  the  case,  that  of  the  liability  of 
the  defendants  for  negligence,  there  is  no  reason  to  doubt  the 
correctness  of  the  rulings  at  the  trial.  The  defendants  were 
carefully  protected  by  the  instructions  to  the  jury  from  all 
responsibility  for  the  acts  of  the  tenants.  They  were  held 
liable  only  to  the  extent  that  for  their  own  profit  they  author- 
ized and  sanctioned  the  acts  of  the  tenants  in  the  use  and 
control  of  the  property.  As  the  verdict  was  upon  the  theory 
that  the  tenants  were  not  guilty  of  negligence,  unless  the  de- 
fendants are  held  liable,  the  singular  result  would  follow,  that 
a  wrong  has  been  committed  for  which  no  person  can  be  held 
responsible.  Whoever,  for  his  own  advantage,  authorizes  his 
property  to  be  used  by  another  in  such  manner  as  to  endanger 
and  injure  unnecessarily  the  property  or  rights  of  others^  is 
answerable  for  the  consequences.  Sometimes,  the  liability  has 
been  referred  to  the  law  of  nuisance.  {Notctobs  v.  Th/yrM^  61 
Mainej  503 ;  Fish  v.  Dodge^  4  Denioy  311.)  But  it  exists 
when  the  injury  results  from  negligence  as  well  as  when  from 
an  intentional  wrong.  The  mere  fact  that  a  third  person  is 
interposed  between  the  owner  or  principal  and  the  party  in- 


APRIL,  1882.  445 


Tyler  v.  Galloway. 


jnred  cannot  affect  the  responBibility  of  him  who  originates 
and  sanctions  the  injnry.  {Swards  v.  Edga/r^  69  N.  Y.,  28.) 
As  is  said  in  Todd  v.  FUgkt,  (9  C  B.,  N.  S.,  877,)  "if  the 
wrong  cansing  the  damage  arises  from  the  non-feasance  or  the 
misfeasance  of  the  lessor,  the  party  suffering  damage  from  the 
wrong  may  sne  him."  The  case  of  H(yuse  v.  MeetoaUf^  (27 
Conn.^  631,)  is  precisely  in  point.  The  rule  is  too  well  settled 
to  require  farther  citations. 

The  motion  for  a  new  trial  is  denied. 


James  McKeen^  for  the  plaintiff. 

Oeorge  W.  MoAdamiy  for  the  defendants. 


LmcAisr  W.  Ttueb 
Jambs  D.  Gallowat  and  othebs.    In  Eguirr. 

The  fint  olaim  of  re-issaed  letters  patent  granted,  Aognet  Sth,  18T9,  to  Leman 
W.  Tyler,  as  assignee  of  William  Sternberg,  for  an  Improyement  in  cheese- 
hoops,  the  original  patent  having  been  granted  to  said  Sternberg,  March  21flt^ 
1871,  is  an  inexact  claim,  which,  if  constmed  according  to  its  natural  mean, 
ing,  woold  indnde  an  inyentioD  broader  than  the  one  which  was  made.  If  a 
limited  constmction  be  given  to  it,  it  woold  be  substantially  the  same  as  the 
second  daim  of  the  re-issue.  The  second  claim  of  the  re-issue  being  valid  and 
infringed,  the  Court  held  that  the  pUdntiif  could  have  a  decree  on  it,  without 
costs,  on  disdaimiDg  the  first  daim. 

(Before  Sbipicav,  J.,  Northern  District  of  New  York,  AprU  let,  188S.) 

SmpMANy  J.  This  is  a  bill  in  equity  to  prevent  the  in- 
fringement of  re-issned  letters  patent  granted,  August  Sth, 
1879,  to  the  plaintiff,  as  assignee  of  William  Sternberg,  for 
an  improvement  in  cheese-hoops.     The  original  patent  was 


446  NORTHERN  DISTRICT  OF  NEW  YORK. 

Tyler  v.  Qalloway. 

granted  to  Sternberg,  March  2l8t,  1871.  The  object  of  the 
bill  ifi  to  prevent  the  use  of  cheeae-hoops  known  as  the  Fra- 
zer  hoop,  which  are  made  under  the  patent  granted  to  Milton 
B.  Frazer,  January  9th,  1872. 

The  qnestionB  which  are  involved  in  this  case,  viz.,  the  va- 
lidity of  the  plaintiff's  re-issued  patent  and  its  infringement  by 
the  use  of  the  Frazer  hoop,  were  decided  by  Judge  Wallace 
in  the  case  of  Tyler  v.  Welch,  (18  Blatohf.  C.  C.  R.y  209.) 
At  the  suggestion  of  Judge  Wallace  this  case  was  heard  by 
another  judge,  as  it  was  thought  that  the  recently  decided 
cases  of  MiUer  v.  Brass  Co,^  (104  U.  /X,  350,)  and  James  v. 
Campbell,  {Id.,  356,)  might  present  the  question  of  the  valid- 
ity of  the  re-issne  in  a  new  light. 

The  nature  of  the  Sternberg  invention,  the  differences  be- 
tween the  original  and  re-issued  patents  in  the  descriptive  part 
of  the  respective  specifications,  and  the  method  of  construction 
of  the  two  hoops,  are  fuUy  described  in  Tyler  v.  Welch,  cited 
supra,  I  entirely  concur  with  Judge  Wallace,  and  for  the 
reasons  which  he  gives,  in  his  conclusions,  that  the  Frazer 
hoop  is  an  infringement  of  the  second  claim  of  the  re-issued 
patent,  and  that  there  is  no  ^^new  matter"  either  in  the  de- 
scriptive part  of  the  specification  or  in  the  second  claim  of  the 
re-issue.  This  claim  is  a  substantial  reproduction,  in  different 
phraseology,  of  the  single  claim  of  the  original  patent. 

The  original  claim  was  as  follows :  ^'  The  grooved  hoop  A, 
a,  in  connection  with  the  expansible  ring  B,  substantially  as 
and  for  the  purpose  herein  specified."  The  two  claims  of  the 
re-issue  are  as  follows :  ^^  1.  An  expansible  ring  or  band,  in 
connection  with  the  upper  part  of  a  cheese-hoop,  to  hold  the 
upper  edge  of  the  bandage  while  being  filled  with  curd  and 
during  the  process  of  pressing,  substantially  as  specified.  2. 
The  combination  of  the  expansible  ring  or  band  and  the 
cheese-hoop  grooved  or  depressed  sufScient  to  receive  said 
ring  or  band,  so  that  it  will  not  interfere  with  the  follower, 
substantially  as  specified." 

Judge  Wallace  was  of  opinion  that  the  first  daim  of  the 
re-issue  was  capable  of  a  broader  construction  than  Sternberg's 


APRIL,   1882.  447 


Tyler  v,  GaUoway. 


invention  warranted,  but  was  disposed  to  limit  the  claim  so 
that  it  shoald  only  cover  the  actnal  invention.  While  such 
limitation  is  in  accordance  with  the  existing  rules  of  construc- 
tion, yet,  in  view  of  the  recent  decisions  of  the  Supreme 
Court,  and  of  the  fact  that  in  this  case,  with  such  a  construc- 
tion, both  claims  of  the  re-issue  would  be  the  same,  but  espe- 
cially  in  view  of  the  late  decisions,  I  think  that  such  a  course 
is  not  advisable  and  that  the  claim  should  be  declared  void. 
The  plaintiff,  in  obtaining  a  re-issue,  introduced  an  inexact 
claim,  which,  if  construed  according  to  its  natural  meaning, 
would  include  an  invention  broader  than  the  one  which  was 
made.  If  such  a  construction  should  be  adopted,  the  patent 
would  be  improperly  enlarged.  If,  on  the  other  hand,  a  lim- 
ited construction  should  be  given,  the  first  claim  would  be 
substantially  the  same  as  the  second  and  would  be  superfluous. 
One  claim  in  a  re-issue  may  be  void  without  necessarily  inval- 
idating the  other  claims.  In  such  case,  it  is  proper  to  disclaim 
the  void  claim.  {(yiieiUy  v.  Morse,  15  How,,  62 ;  SchUlmger 
V.  Ovmthe/r,  17  Blatchf,  C.  O.  J?.,  66.)  In  this  case  there  has 
been  no  unreasonable  neglect  or  delay. 

Whenever  the  plaintiff  shall  have  satisfied  the  Court  that 
a  proper  disclaimer  has  been  filed  in  the  Patent  Office,  dis- 
claiming the  first  claim  in  such  manner  as  to  claim  only  the 
invention  as  specified  in  the  second  claim  of  the  re-issued  pat- 
ent, a  decree  will  be  entered  for  an  injunction  against  the 
infringement  of  the  second  daim,  and  for  an  accounting  of 
profits  and  damages  arising  under  said  infringement,  but  with- 
out costs. 


Oeorge  W,  Hey,  for  the  plaintiff. 
H.  R.  Dv/rfee,  for  the  defendants. 


448  NORTHERN  DISTRICT  OF  NEW  TORE, 

Foantam  v.  The  Town  of  Ani^elica. 


Jambs  T.  Fountain  vs.  The  Town  of  Anoslioa. 

The  proTinoD  of  §  5  of  the  Act  of  March  Sd,  1876,  (18  U.  3.  8UU.  si  Large,  47S,) 
that  the  Circait  Court  Bhall  dieiiiiss  a  snit  if  the  partiee  haye  been  improperlj 
or  oollnaiyely  made  or  joined  for  the  pnrpoae  of  creating  a  case  cognisable 
under  said  Act,  conrtmed. 

In  this  case  the  aait  was  diBmisaed,  it  appearing  that  the  plaintiff  had  no  sab- 
stantlal  interest  in  the  coupons  sned  on. 

(Before  Wallagi,  J.,  Northern  District  of  New  Tork,  April  8d,  188S.) 

Wallaob,  J.  By  the  5th  section  of  the  Act  of  March  3d, 
1875,  (18  U.  8.  Stat,  at  Larger  472,)  to  determine  the  jariB- 
diction  of  Circuit  Courts  of  the  United  States,  it  is  deckred, 
that  if,  at  any  time  in  the  progress  of  a  case,  either  originally 
commenced  in  a  Circuit  Court  or  removed  there  from  a  State 
Court,  it  shall  appear  that  such  suit  does  not  really  involve  a 
dispute  or  controversy  properly  within  the  jurisdiction  of  the 
Court,  or  that  the  parties  to  said  suit  have  been  improperly  or 
coUusively  made  or  joined,  either  as  plaintifb  or  defendants, 
for  the  purpose  of  creating  a  case  cognizable  or  removable 
under  the  Act,  the  said  Circuit  Court  shall  proceed  no  further 
but  shall  dismiss  the  suit,  or  remand  it  to  the  Court  from 
which  it  was  removed.  This  action  presents  the  question 
whether  the  plaintiff  has  been  improperly  or  collusively  made 
a  party  for  the  purpose  of  creating  a  case  cognizable  by  this 
Court,  within  the  meaning  of  the  section  referred  to. 

It  is  said  by  the  Supreme  Court,  in  Hawea  v.  Oakland^ 
(104  U,  S.y  450,)  that  this  statute  strikes  a  blow  at  improper 
and  collusive  attempts  to  impose  upon  this  Court  cognizance 
of  cases  not  justly  belonging  to  it.  Before  this  Act  was 
passed  it  was  settled  law,  that,  although  a  transfer  of  the  sub- 
ject of  the  controversy  may  have  been  made  for  the  purpose 
of  vesting  an  interest  in  parties  competent  by  reason  of  their 
domicile  to  litigate  in  the  Federal  Courts,  that  circumstance 
would  not  defeat  the  jurisdiction  if  the  transaction  invested 


APRIL,  1882.  449 


Fountain  v.  The  Town  of  Angelica. 


the  assignee  with  the  real  interest  in  the  sabject-matter ;  yet,  if 
the  assignment  was  colorable  only,  and  the  real  interest  still  re- 
mained in  the  assignor,  jurisdiction  wonld  not  be  entertained. 
{Barney  v.  Baltimore  Oity^  6  WaUace^  280.)    The  section  in 
question,  therefore,  was  qnite  unnecessary  if  it  was  only  in- 
tended to  reach  a  case  in  which  the  plaintiff,  by  assignment,  ob- 
tained merely  a  colorable  title  to  the  subject  of  the  controversy. 
It  is  not  difficalt  to  discern  the  purpose  of  the  section.     It  had 
long  been  notorious  that  the  jurisdiction  of  the  Circuit  Courts 
was  constantly  invoked  for  the  benefit  of  parties  not  within 
the  class  which  the  constitutional  grant  of  jurisdiction  to  the 
Federal  Courts  was  intended  to  include,  by  parties  who,  be- 
cause they  were  citizens  of  the  same  State  as  their  adversary, 
could  only  resort  to  the  Courts  of  the  State,  but  who,  for 
some  ulterior  motive,  desired  to  resort  to  the  Federal  Courts. 
The  convenient  device  was  resorted  to  of  transferring  the 
subject  of  the  controversy  to  a  citizen  of  another  State,  a 
friendly  coadjutor,  who,  while  acquiring  the  legal  title,  was 
expected  to  litigate  for  the  benefit  of  the  original  party. 
Thus  new  parties  were    introduced    into  controversies  in 
which  they  had  no  substantial  interest,  merely  to  bring  cases 
within  the  Federal  jurisdiction.     It  cannot  be  doubted  that 
the  provision  in  question  was  intended  to  meet  an(^  prohibit 
a  jurisdiction  sought  and  obtained  by  such  collusive  methods. 
It  should  be  held  that  a  plaintiff  who  has  been  introduced 
into  a  controversy,  by  assignment  or  transfer,  merely  that  he 
may  acquire  a  standing  and  relation  to  the  controversy  which 
will  enable  him  to  prosecute  it  for  the  beneficial  interests  of 
the  original  party,  has  been  improperly  and  collusively  made 
a  party,  for  the  purpose  of  creating  a  case  cognizable  under 
the  Act. 

No  better  illustration  of  the  class  of  cases  whicl}  the  sec- 
tion was  intended  to  meet  could  be  presented  than  the  present 
case  affords.  It  is  palpable,  upon  the  evidence,  that  the 
plaintiff  has  no  substantial  interest  in  the  coupons  which  are 
sued  upon,  conceding  that  he  acquired  the  le^  title  to  them 
so  as  to  enable  him  to  maintain  the  action.  He  bought  them 
Vol.  XX.— 29 


450  NORTHERN  DISTRICTT  OF  NEW  YORK. 

Phelps  V.  The  Canada  Central  Railroad  Company. 

at  the  solicitation  of  one  Dick,  without  any  inquiry  as  to  their 
validity  or  value,  and  without  any  negotiation  concerning  the 
price  to  be  paid.  He  pretended  to  pay  for  them  by  a  check 
which  he  has  never  paid ;  which  was  made  for  the  full  face 
amount  of  the  dishonored  and  contested  coupons ;  which  wa& 
paid,  if  paid  at  all,  by  a  bank  of  which  Dick  was  a  director 
and  the  plaintiff  was  an  assistant  cashier ;  and  which,  after 
the  expiration  of  three  years,  he  has  never  heard  of  since  he 
gave  it.  He  testifies  he  had  no  personal  interest  in  the  trans- 
action. He  was  informed  the  coupons  would  have  to  be  col- 
lected by  suit.  He  placed  them  in  the  hands  of  Dick's  at- 
torney for  collection,  very  soon  after  receiving  them.  He 
testifies  that  he  did  not  expect  to  be  responsible  to  the  attor- 
ney for  his  charges.  In  short,  he  was  merely  an  instrument 
of  Dick,  selected  by  Dick,  and  invested  with  a  formal  title  to 
the  coupons,  in  order  that  Dick  might  litigate  them  in  a  Fed- 
eral Court. 

It  is  the  duty  of  the  Court  to  dismiss  the  suit. 

Ma/rshaU^  Clinton  <&  Wilson,  for  the  plaintiff. 

Hamilton  Wa/rd^  for  the  defendant. 


George  B.  Phelps 
The  Canada  Central  Bailboad  Company. 

Before  this  action  was  removed  into  this  Court  the  State  Court  had  made  an 
order  restricting  the  plaintiff  from  setting  up  any  cause  of  action  in  addi- 
tion to  one  for  \>reach  of  contract,  on  which  an  attachment  had  been 
granted.  The  plaintiff  elected  to  consent  to  that  order,  as  a  condition  of  re- 
taining the  attachment,  and  it  was  in  force  when  the  action  was  removed. 
Nothing  haying  occurred  to  change  the  rights  or  position  of  the  parties,  a 
motion  by  the  plaintiff  for  leave  to  amend  his  complaint  was  denied  by  thia 
Court. 

(Before  Wallaoi,  J.,  Northern  District  of  New  Tork,  April  3d,  1882.) 


APRIL,  1882.  451 


Phelpe  V.  The  Canada  Central  Railroad  Company. 


Wallace,  J.  Before  this  action  was  removed  into  this 
Conrt  the  State  Conrt  had  granted  an  order  restricting  the 
plaintiff  from  averring  in  his  complaint  any  cause  of  action 
against  the  defendant  other  than  for  alleged  breach  of  con- 
tract set  forth  in  the  affidavit  upon  which  the  defendant's 
property  was  attached  and  its  appearance  thereby  compelled. 
Although  the  main  point  considered  by  the  State  Court  upon 
the  motion  which  resulted  in  such  order  was  the  right  of  the 
plaintiff  to  incorporate  into  his  complaint  a  cause  of  action 
and  prayer  for  equitable  relief,  the  order  made  was  both 
broad  and  explicit  in  its  terms,  and  confined  the  plaintiff  to 
the  cause  of  action  set  forth  in  the  affidavit  for  the  attach- 
ment. The  plaintiff  elected  to  consent  to  that  order  as  a  condi- 
tion of  retaining  his  attachment,  which  would  otherwise  have 
been  vacated.  Whether  the  State  Court  would  have  thus  ad- 
judged if  the  plaintiff  had  complained  upon  a  cause  of  action 
at  law  only  it  is  not  for  this  Court  to  determine.  It  suffices  that 
the  order,  as  made,  was  in  force  when  the  action  was  removed 
to  this  Court.  Undoubtedly,  this  Court  has  power  to  modify 
that  order,  but  it  would  be  unseemly,  when  nothing  has  oc- 
curred since  the  removal  to  change  the  rights  or  position  of 
the  parties,  to  disregard  the  adjudication  of  the  State  Court 
made  upon  hearing  and  deliberation  and  consented  to  by  the 
plaintiff. 

Although  the  plaintiff  is  entitled,  by  the  Code  of  Proce- 
dure of  the  State,  to  amend,  as  of  course,  within  the  time 
limited  by  the  Code  after  the  defendant  has  answered,  that 
right  was  waived,  in  so  far  as  the  exercise  of  it  would  involve 
any  departure  from  the  terms  of  the  order,  by  the  election 
signified  upon  the  hearing  which  resulted  in  the  order. 

The  motion  for  leave  to  serve  the  amended  complaint  is 
denied. 


Mvllin  <6  Oriffm,  for  the  plaintiff. 
Edward  C.  James^  for  the  defendant. 


462  SOUTHERN  DISTRICT  OF  NEW  YORK, 

TuengliDg  v.  Schile. 


Da  VXD  G.  YuENOLiNo,  Jr.  v.  Hrnrt  Schile.     In  Equht. 

T.  took  out  a  copyright,  in  1880,  on  a  cbromo-lithograpliic  print,  entitled  "  Gam- 
brioos  and  his  followers,"  as  proprietor,  he  being  a  citizen  of  the  United 
States.  The  chromo  was  designed  in  Europe,  by  an  alien,  and  printed 
there.    T.  showed  no  title  derived  from  the  author:  iTeM, 

(1.)  The  chromo  was  the  subject  of  a  copyright; 

(2.)  Y.,  not  being  the  author  or  denying  title  from  him,  could  not,  under 
§  4,952  of  the  Revised  Statutes,  lawfully  obtain  a  copyright  for  the  chromo ; 

(8.)  The  author,  not  being  a  citizen  of  or  resident  in  the  United  States, 
oould  not  obtain  a  copyright  for  the  chromo  as  author,  and,  therefore,  Y.  ooold 
not,  as  proprietor; 

(4.)  A  chromo  is  a  "  print,*'  within  §  4,971  of  the  Revised  SUtutes. 

(Before  Brown,  J.,  Southern  District  of  New  York,  April  8d,  1882.) 

Brown,  J.  The  plaintiflF  moves,  upon  a  bill  of  complaint 
and  affidavit,  for  a  preliminary  injunction  to  restrain  an  in- 
fringement of  the  plaintiffs  rights  under  a  copyright  alleged 
to  have  been  obtained  by  him  on  the  23d  of  August,  1880, 
upon  a  "  chromo  "  entitled  "  Gambrinus  and  his  followers." 
The  moving  papers  allege  that  the  complainant,  on  that  day, 
was  a  citizen  of  the  United  States,  and  "  proprietor  of  said 
chromo ; "  that  he  filed  on  that  day,  before  publication,  in  the 
office  of  the  librarian  of  Congress,  the  title  or  description 
thereof,  and  on  the  same  day  deposited  in  his  office  two  copies 
of  the  same,  and  gave  notice  of  his  copyright  by  inscribing 
(m  the  visible  front  of  such  chromo,  near  the  bottom,  the 
words,  "  Copyrighted,  1880,  by  D.  G.  Yuengling,  Jr.,  New 
York ; "  that  he  has  been  at  great  expense  in  producing  such 
chromo,  and  the  same  is  of  great  value  to  him ;  that  he 
has  used  it  as  a  gratuitous  advertisement  in  his  business,  as  a 
lager  bier  brewer ;  and  that  the  defendant  is  about  to  issue  a 
piratical  imitation  of  such  chromo,  in  violation  of  the  plaint- 
iflPs  rights  in  such  copyright. 

The  complainant's  chromo  is  of  evident  artistic  merit.  It 
u  designed  as  a  symbolic  glorification  of  lager  bier  drinking. 


APRIL,   1882.  453 


TnengliDg  v.  Schile. 


In  the  centre  is  a  congpicnoos  figure  of  King  Gambrinns,  his 
left  arm  resting  upon  a  keg  of  lager,  and  his  right  holding 
aloft  a  foaming  glass  of  that  beverage.  On  either  eide  of 
him  are  a  dozen  figures  of  persons  representing  various 
classes  in  life,  into  whose  eager  hands  his  page  is  distributing 
the  drink.  This  chromo,  by  its  subject,  its  brilliant  coloring,  its 
excellent  finish,  aod  the  artistic  grouping  of  its  figures,  forms 
a  striking  picture,  suitable  for  hanging  in  saloons,  and  well 
calculated  to  draw  attention  to  the  plain tifiT,  whose  name  is 
printed  in  large  type  beneath  the  figures,  as  a  person  engaged 
in  the  lager  bier  business,  and  constituting,  therefore,  a  valu- 
able mode  of  advertising.  Among  the  Germans,  and  in  the 
lager  bier  trade,  "  Gambrinus  "  is  familiarly  known  as  the  in- 
ventor of  lager  bier,  while  King  of  Flanders,  as  the  legend 
goes,  who  used  it  first  as  a  potion  or  draught. 

The  defendant's  chromo,  claimed  to  be  an  infringement,  is 
a  few  inches  smaller  than  the  first,  and  presents  the  same  gen- 
eral grouping,  expression  and  coloring  of  the  figures,  though 
having  some  conspicuous  changes.  Upon  the  head  of  the 
lager  bier  cask  the  words  "Bock  Bier"  are  conspicuously 
printed ;  and  the  figure  of  a  goat,  with  its  fore  feet  upon  the 
top  of  the  cask,  appears  prominently  in  the  foreground,  be- 
side the  King.  The  troubadour,  who,  in  the  first  picture,  is 
reclining  upon  the  ground  beside  a  maid  drawing  bier  at  the 
spigot,  is  omitted  in  the  defendant's  chromo,  which  also  con- 
tains at  the  left  a  prominent  typical  figure  of  "Brother 
Jonathan,"  who  is  substituted  in  the  place  of  a  tailor  in  the 
first.    There  are  various  other  minor  changes. 

Upon  the  whole,  it  is  plain  that  the  defendant's  chromo 
is  formed  upon  the  same  general  design  as  the  first,  althongh 
with  very  important  variations,  and  is  an  infringement  of  it, 
if  the  first  was  lawfully  copyrighted  before  any  publication 
of  it.  The  defendant's  chromo  is  designed  as  a  card,  adver- 
tising the  sale  of  "  bock  bier,"  which  is  sold  mainly  in  the 
months  of  April  and  May. 

From  the  defendant's  affidavits  it,  however,  appears,  that 
the  complainant's  chromo  was  designed  in  Europe  by  G^ 


454  SOUTHERN  DISTRICT  OF  NEW  YORK, 

TQengUng  v.  Scblle. 


Bartschy  an  alien  European  artist,  whose  name  is  engraved  on 
the  face  of  the  print ;  that  in  the  right  hand  comer  beneath 
are  printed  the  words,  "  Wittemann  Bros.,  Publishers  of  Art 
Lithographs,  New  York ; "  that  the  work  is  strictly  a  chromo- 
lithographic  print;  that  all  the  complainant's  copies  of  it 
were  printed  and  completed  in  Europe,  whence  it  was  im- 
ported to  this  city  by  the  complainant,  who  thereupon  xmder- 
took  to  take  oat  a  copyright,  by  depositing  two  copies  with 
the  librarian  of  Congress,  as  above  stated,  and  stamping  npon 
the  left-hand  comer  the  words  added  by  the  complainant, 
"Copyrighted,  1880,  by  D.  G.  Yuengling,  Jr.,  New  York  ;" 
that  the  defendant  has  long  been  a  designer,  and  is  also  en- 
gaged in  the  lager  bier  advertising  business;  that,  in  the 
summer  of  1880,  at  the  book  printer's  establishment  of  Kelly 
&  Bartholom,  22  College  Place,  in  this  city,  where  he  had 
previously  been  accustomed  to  get  work  done,  he  was  shown 
a  copy  of  all  the  colored  portion  of  this  chromo,  bnt  without 
the  copyright  stamped  thereon ;  that  he  was  informed  by 
them,  at  that  time,  that  it  was  a  German  work,  not  copy- 
righted, and  had  shortly  before  been  imported  and  received 
by  them  from  Europe ;  that  he  was  then  allowed  to  take  this 
copy  away  with  him,  and  had  retained  it  ever  since,  and  had 
made  his  own  chromo  therefrom,  with  the  variations  above 
pointed  out ;  and  that  he  never  saw  any  copy  with  any  copy- 
right stamp  upon  it,  and  had  no  knowledge  of  any  such 
copyright  until  the  commencement  of  this  suit. 

It  is  urged,  on  the  part  of  the  defendant,  that  the  plaint- 
iff's chromo  is  not  the  subject  of  a  copyright,  because  it  was 
designed,  used  and  circulated  by  him  as  a  gratuitous  adver- 
tising card,  for  the  benefit  of  his  private  business  as  a  lager 
bier  brewer,  and  not  for  the  instruction  or  improvement  of 
the  public.  The  case  of  Cobhett  v.  Woodward^  {Law  Rep.^ 
14  Eq.^  407,)  relied  on  by  the  defendant,  was  a  case  where 
the  catalogue  of  an  upholsterer  containing  engravings  of  the 
articles  offered  by  him  for  sale  and  circulated  gratuitously 
was  held  not  to  be  the  subject  of  copyright,  on  this  ground. 
A  similar  decision  was  made  in  this  Court,  in  the  case  of 


APRIL,   188S.  455 


YueQgliQg  V.  Schile. 


CoUender  v.  Oriffithy  (11  Bldtckf.  C.  C.  R.^  212,)  concerning 
engravings  of  billiard  tables  offered  for  sale ;  but  in  that  case 
it  was  held  that  the  engravings  were  not  works  of  art,  and  did 
not  have  any  valne  or  use  as  such,  and  that  it  was  a  mere 
mode  of  advertising  the  tables  for  sale.  The  case  of  Ehret 
V.  Pierce^  (18  Jd.^  302,)  was  decided  upon  the  same  principle. 
The  case  of  CoHbett  v.  Woodwardy  {eupra^  has  not  been  fol- 
lowed in  England,  but  was  substantially  overruled  in  the 
subsequent  case  of  Orace  v.  Newmrni^  {Law  Rep.y  19  J^., 
623.) 

The  plaintiff's  chromo  in  the  present  case  is  not  a  mere 
engraving,  or  print,  of  any  article  which  the  complainant 
offers  for  sale.  It  is  a  work  of  the  imagination,  and  has  such 
obvious  artistic  qualities  as,  in  my  judgment,  render  it  fairly 
a  subject  of  copyright,  without  regard  to  the  use  which  the 
plaintiff  has  made,  or  may  intend  to  make,  of  it.  Where  the 
work  in  question  is  clearly  one  of  artistic  merit,  it  is  not  ma- 
terial, in  my  judgment,  whether  the  person  claiming  a  copy- 
right expects  to  obtain  his  reward  directly  through  a  sale  of 
the  copies,  or  indirectly  through  an  increase  of  profits  in  his 
business,  to  be  obtained  through  their  gratuitous  distribu- 
tion. 

There  are  several  grounds,  however,  why  the  preliminary 
injunction  sought  in  this  case  should  not,  I  think,  be  granted. 

(1.)  It  being  conceded  that  the  complainant  is  not  the 
author  or  designer  of  this  chromo,  it  is  incumbent  upon 
him  to  show  how  he  became  entitled  to  any  exclusive  copy- 
right of  it.  In  Oreme  v.  Bishop,  (1  Cliff.,  186,  198,)  Clif- 
ford, J.,  says :  "  It  is  undoubtedly  true,  that,  when  a  party 
comes  into  a  Court  of  law  or  equity,  seeking  protection  to  a 
copyright,  he  must  show  that  he  is  the  author  of  the  work,  or 
that  his  title  is  derived  from  one  sustaining  that  relation  to 
the  publication."  {LilUe  v.  Oould,  2  Blatchf.  C.  G.  R.,  181.) 
The  plaintiff  does  not  show  any  such  derivative  title,  and  it 
appears  that  he  is  not  the  author. 

The  owner  or  proprietor  of  a  work  has  not,  since  the  Act 
of  July  8th,  1870,  any  more  than  before,  in  that  character 


456  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Ynengling  v,  Schile. 

alone,  any  right  of  copyright.  It  is  only  to  "  authors  and  in- 
ventors," or  to  persons  representing  the  author  or  inventor, 
that  Congress  is  authorized  by  the  Constitution  to  grant  a 
copyright.  {Constitution y  Art.  1,  sec.  8.)  The  right  of  any 
other  person  than  the  author  or  inventor  must,  therefore,  be 
a  purely  secondary  and  derivative  one;  and,  in  enforcing 
any  alleged  copyright,  such  a  person  must  show  an  exclusive 
right  lawfully  derived  from  the  author  or  inventor ;  and  this 
the  plaintiff  has  not  done.  I  find  no  other  averment  in  the 
papers  save  that  in  the  bill,  that,  on  the  23d  of  August,  1880, 
he  was  the  "  proprietor  of  said  chromo."  This  is  not  enough. 
It  does  not  show  any  exclusive  right  derived  from  an  orig- 
inal author.  It  appears,  in  opposition,  that  the  work  was  de- 
signed and  printed  in  Europe,  by  an  alien  artist,  and  that 
copies  of  this  design  were  imported  into  this  country,  and  came 
into  the  defendant's  hands,  independently  of  the  complain- 
ant. There  is  no  averment  either  that  the  design  itself  was 
new,  or  that  the  lithographic  stones  for  the  print  were  engraved 
by  any  person  employed  by  the  plaintiff,  or  in  his  behalf,  or 
that  any  right  of  copyright  was  ever  transferred,  or  intended 
to  be  transferred,  to  the  plaintiff',  by  the  author  or  artist.  The 
chromo  may  be  a  mere  copy  of  a  European  painting  long 
since  published  in  Europe,  and  free  to  be  copied  by  any  one. 
For  aught  that  appears,  the  whole  design  may  have  been  com- 
mon propert}'  for  an  indefinite  period,  as  would  seem  to  be 
the  case  with  the  typical  form  of  King  Oambrinus.  The 
complainant  may  have  been  the  ''  proprietor  "  of  the  chromes 
which  he  imported,  and  may  have  "  produced  them  at  great 
expense,"  and  yet  have  no  exclusive  right  whatever,  as  be- 
tween himself  and  the  European  artist,  to  the  sole  use  even 
of  the  lithographic  stones  in  Europe,  for  the  multiplication  of 
any  additional  copies,  much  less  to  the  original  design.  In 
that  case  he  could  acquire  no  copyright  which  would  exclude 
the  defendant,  or  any  other  person,  from  availing  himself, 
either  wholly  or  in  part,  of  other  copies  obtained  from  Eu- 
rope, either  from  the  same  stones,  or  from  the  common  source 
of  the  design.    In  Johnsaii  v.  Donaldson^  (18  Blatckf.   C. 


APRIL,   1882.  457 


Tnengling  v.  Schila 


(7.  -ff.,  287,)  in  reference  to  an  alleged  infringement  of  the 
copyright  of  a  chromo,  it  was  held,  by  Wallace,  J.,  that,  if  the 
plaintiff  acquired  his  copyright  by  appropriating  a  sketch  from 
a  foreign  publication,  he  wonld  not  become  a  proprietor  there* 
of,  and  coold  acquire  no  exclusive  copyright ;  and  that,  even 
if  the  plaintiff  were  the  artist  and  designer  of  the  picture  so 
appropriated,  the  defendant  wonld  not  be  liable  "  if  he  did 
not  avail  himself,  directly  or  indirectly,  of  the  plaintiff's  pro- 
duction." In  Roaenhach  v.  DreyfusSy  (2  Fed.  Hep.j  217,)  it  is 
said,  by  Ghoate,  J. :  '^  It  is  not  enough  that  the  defendant  may 
be  liable  if  the  facts  stated  in  the  complaint  be  true.  It 
must  appear  that  he  is  liable  if  the  complaint  is  true ; "  and 
judgment  was  rendered  for  the  defendant  on  demurrer,  be- 
cause it  did  not  certainly  appear  that  the  articles  described 
were  articles  for  which  a  copyright  could  be  granted  under 
the  laws  of  the  United  States. 

In  this  case  it  appears,  afBrmatiyely,  from  the  defendant's 
afiSdavits,  that,  in  making  his  chromo,  he  has  not  availed  him- 
self of  any  copy  of  the  chromo  imported  by  the  plaintiff ; 
while,  from  the  want  of  any  averment,  either  that  the  design 
was  new,  or  that  the  plaintiff  had  ever  acquired  the  exclusive 
right  of  the  foreign  artist,  in  case  the  artist  had  any  such  ex- 
clusive right,  it  is  impossible  to  say  that  the  defendant,  in 
availing  himself  of  parts  of  a  foreign  copy,  independently  im- 
ported, violated  any  right  of  the  author,  much  less  of  the 
plaintiff,  who  could  only  claim  through  the  author. 

(2.)  The  plaintiff  claims  that  the  Act  of  July  8th,  1870, 
(16  If.  S.  Stat,  at  La/rge,  212,  §  86,  Reo.  Stat,  §  4,962,)  au- 
thorizes a  citizen  or  resident  of  this  country,  if  he  be  the 
"  proprietor"  of  any  book,  map,  print,  chromo,  &c.,  to  obtain 
a  copyright  therefor,  although  the  author,  inventor,  or  de- 
signer is  an  alien.  The  Act  of  1870,  for  the  first  time,  uses 
the  word  "  proprietor  "  in  connection  with  the  words  "  author, 
inventor,^'  and  "  designer,"  as  one  of  the  persons  to  whom  a 
copyright  may  be  granted,  although,  ever  since  the  Act  of 
May  81st,  1790,  (I  U.S.Stat,  at  Zary^,  124,)  a  proprietor 


458  BOUTHERN    DISTRICT  OF  NEW  YORK, 

Yaengling  v.  Schile. 

might  obtain  a  copyright,  if  he  were  the  lawfnl  representa- 
tive of  the  exclusive  rights  of  a  native  or  resident  author. 
Thns,  though  the  connection  in  which  the  word  "  proprietor  " 
is  used  in  the  Act  of  1870  is  new,  the  use  of  the  word  itself, 
in  relation  to  copyrights,  is  as  old  as  the  laws  of  copyright.  (1 
C.  S.  Stat,  at  Large,  124,  125,  §§  2,  8,  4,  6 ;  2  /rf.,  171,  172, 
§§  1,  3;  4  M,  487,  §  3;  11  Jd.,  138,  139,  §  1;  18  Id.,  540, 
§  2;  8  George  11,  oh.  13,  §  1 ;  17  George  III,  oh.  67.) 

The  litend  reading  of  the  86th  section  of  the  Act  of  1870, 
now  embodied  in  §  4,952  of  the  Revised  Statutes,  does  not 
require  that  both  the  "author"  and  "proprietor''  shall  be 
citizens  or  residents  of  the  United  States.  It  provides  that 
'^  any  citizen  of  the  United  States  or  resident  therein,  who 
shall  be  the  author,  inventor,  designer,  or  proprietor  of  any 
book,  map,  chart,  dramatic  or  musical  composition,  engraving, 
cut,  print,  or  photograph  or  negative  thereof,  or  of  a  paint- 
ing, drawing,  chromo,  statue,  statuary,  and  of  models  or  de- 
signs intended  to  be  perfected  as  works  of  the  fine  arts,  and 
the  executors,  administrators,  or  assigns  of  any  such  person  " 
may  obtain  a  copyright ;  and  §  103  of  the  Act  of  1870,  em- 
bodied in  §  4,971  of  the  Kevised  Statutes,  provides  that  noth- 
ing therein  "  shall  be  construed  to  prohibit  the  printing,  pub- 
lishing, importation,  or  sale  of  any  book,  map,  chart,  dramatic 
or  musical  composition,  print,  cut,  engraving,  or  photograph, 
written,  composed  or  made  by  any  person  not  a  citizen  of  the 
United  States,  nor  resident  therein."  By  virtue  of  the  latter 
section  an  exclusive  copyright  in  the  work  of  any  foreign  au- 
thor or  artist  in  the  subjects  mentioned  in  that  section  is  pro- 
hibited ;  but  this  section  does  not  embrace  the  words  "  paint- 
ing, drawing,  chromo,  statue,  statuary  "  and  '^  models,"  which 
were  introduced  into  the  copyright  law  for  the  first  time  in 
the  Act  of  1870 ;  and,  on  this  ground,  it  is  urged  by  the  com- 
plainant, that  a  "proprietor"  may  obtain  a  copyright  on  the 
last-mentioned  subject,  though  the  artist  or  author  is  an  alien, 
because  these  are  not  prohibited  by  §  4,971. 

There  are  three  objections  to  the  plaintiff's  contention  in 
this  respect :  first,  that  it  involves  a  reversal  of  the  policy  of 


APRIL,  1882.  459 


Yaengling  v.  Sohile. 


the  GoYernment  from  its  fonndation,  to  protect  American 
artists  and  authors  only ;  second,  that  the  word  ''  proprietor," 
as  used  in  the  copyright  lawB,  in  itself  means  the  representa- 
tive  of  an  artist  or  anthor  who  might  himself  obtain  a  copy- 
right ;  and,  third,  that  chromos  are  in  reality  embraced  under 
the  description  of  a  "  print,"  in  the  restrictive  section  4,971. 

It  cannot  be  doubted  that  the  purpose  of  the  copyright 
laws,  from  the  foundation  of  the  Government,  has  been  to 
encourage  native  talent  and  to  protect  American  authors  and 
artists  only,  (Drone  on  Copyright^  231,  257 ;)  as  the  English 
Acts  were  designed  "  to  protect  those  works  which  were  de- 
signed, engraved,  etched,  or  worked  in  Great  Britain."  (Page 
V.  Townsend^  5  Simons^  395,  404.) 

In  the  first  Act  on  the  subject,  that  of  May  31st,  1790,  the 
prohibition  against  an  extension  of  the  copyright  to  alien  au- 
thors was  as  broad  as  the  section  authorizing  copyright  in 
favor  of  resident  authors.  (1  V.  8.  Stat  at  Large^  124,  125, 
§§1,2,  5.)  With  every  extension  of  the  subjects  of  copy- 
right, made  by  subsequent  statutes,  a  corresponding  restriction 
was  inserted  in  the  prohibitory  section  relating  to  foreign  au- 
thors or  artists,  until  the  Act  of  1870,  when  the  few  additional 
subjects  above-mentioned  were  added  to  the  subjects  of  copy- 
right, without  any  corresponding  insertion  in  the  restrictive 
clause  as  respects  foreign  authors  or  artists.  But,  even  this 
omission,  which  was  probably  accidental,  would  not  of  itself 
have  sufiiced  to  admit  copyright  upon  the  works  of  foreign  au- 
thors or  artists ;  because  the  section  authorizing  the  granting 
of  copyrights  has  always  been  limited  to  authors  or  artists  being 
citizens  or  residents  of  the  United  States,  or  to  their  lawful 
representatives  or  assigns.  It  is  only  by  the  introduction  of 
the  word  "  proprietor"  into  the  authorizing  clause  of  the  Act 
of  1870,  (§  86,)  that  any  doubt  could  arise  in  regard  to  the 
new  subjects  of  copyright  then  first  introduced  and  not  ex- 
pressly restricted  as  respects  foreign  artists ;  and  its  effect,  by 
a  mere  literal  reading,  to  allow  a  copyright  on  the  works  of 
foreign  artists,  has  the  appearance  of  being  accidental  only. 
After  a  policy  so  early  estabhshed  and  so  constantly  upheld, 


460  SOUTHERN  DISTRICT  OF  NEW   YORK, 

YueDgling  v.  Schile. 

in  reference  to  every  subject  of  copyright,  tlirough  all  the 
extensions  of  the  law  up  to  1870,  to  limit  its  protection  to  the 
works  of  native  or  resident  authors,  there  is  certainly  a  strong 
presumption  that  no  change  in  this  policy  was  intended  in  re- 
spect to  a  few  articles  only  added  for  the  first  time  by  the 
Act  of  1870  as  subjects  of  copyright.  There  is  nothing  ap- 
parent in  the  nature  of  these  new  subjects  of  copyright  them- 
selves to  distinguish  them  from  the  subjects  of  copyright 
previously  existing,  which  can  serve  as  a  probable  foundation 
for  any  such  supposed  change  of  policy.  A  copyright  here 
upon  such  articles  designed  and  manufactured  abroad  would 
be  a  double  injury  to  American  authors  and  designers.  It 
would  not  only  encourage  the  employment  of  foreign  artists, 
to  the  neglect  and  detriment  of  native  designers,  but  it  would 
prevent  tlie  use  by  the  latter  in  this  country  of  the  foreign 
material  which  would  otherwise  find  its  way  here,  to  the  edu- 
cation and  development  of  our  native  artists,  and  which  would 
serve  as  models  or  suggestions  for  their  own  work.  If  all 
foreign  works  of  this  kind  can  be  copyrighted  in  this  country, 
through  a  mere  transfer  to  some  resident  dealer,  or  agent  of 
the  foreign  authors,  our  native  artists  will  be  thereby  effect- 
ually foreclosed  and  debarred  from  availing  themselves  of  all 
such  materials  for  the  improvement  of  their  own  works. 
Every  intendment,  and  every  presumption,  to  be  derived  from 
the  history  of  copyright  in  this  country,  and  from  other  parta 
of  the  Act  of  1870,  seem  to  me  to  be  against  any  such  inten- 
tion in  that  Act. 

The  effect  of  the  literal  construction  contended  for  by  the 
plaintiff  would,  moreover,  be  to  make  the  Act  of  1870  inau- 
gurate two  diverse  and  confiicting  policies  in  reference  to  the 
articles  which  may  be  copyrighted  under  §  86,  now  §  4,952 
of  the  Revised  Statutes — one  policy  virtually  protecting 
foreign  artists  by  copyright  in  respect  to  the  few  subjects  first 
introduced  into  the  law  of  1870;  and  another  policy  exclud- 
ing them  in  regard  to  all  the  other  and  much  larger  num- 
ber of  subjects  of  copyright  named  in  that  Act.  I  cannot  be- 
lieve, in  the  light  of  the  history  of  the  copyright  Act,  that,  in 


APRIL,   1882.  461 


TDengling  v.  Sehile. 


reference  to  these  few  new  subjects.  Congress  intended  to 
inaagnrate  any  such  change  of  policy,  or  to  grant  an  exclusive 
copyright  upon  the  importation  of  works  wholly  designed, 
manufactured  and  completed  abroad,  upon  merely  depositing 
copies  of  lithographs  in  the  Congressional  Library  by  some 
resident  owner.  Such  a  construction  would,  in  effect,  confer 
upon  foreign  authors  and  artists,  in  respect  to  these  subjects 
of  copyright,  all  the  advantages  of  an  international  copyright 
Act,  without  any  reciprocal  rights  or  advantages  whatever  in 
favor  of  our  own  authors  and  artists. 

The  argument  for  the  plaintiff  rests  wholly  upon  the  use 
of  the  word  "  proprietor  "  in  the  authorizing  clause  (§  86)  of 
the  Act  of  1870.  But,  the  history  of  the  use  of  the  term 
"  proprietor,"  ever  since  the  Act  of  1790,  shows  that  it  has 
always  been  used  in  the  copyright  laws  in  the  limited  and  re- 
stricted sense  of  a  person  who,  by  purchase  or  otherwise,  has 
lawfully  acquired  the  exclusive  rights  of  some  native  or  resi- 
dent author  or  artist,  and  in  no  other  manner. 

By  §  1  of  the  Act  of  1790,  the  right  to  obtain  a  co  py- 
right  is  granted  to  a  resident  author  upon  his  works,  or  to 
any  other  person  being  a  dtizethj  or  resident^  who  has  jpur- 
chased  or  legally  acquired  the  copyright  of  any  such  work, 
or  the  executors,  administrators  or  assigns  of  such  persons. 
Section  2  imposes  a  penalty  for  publishing,  &c.,  *' with- 
out the  consent  of  the  author  or  proprietor.^^  The  same 
expression  "author  or  proprietor ^^  is  again  several  times 
used  in  §§  2,  3,  and  4  of  that  Act.  Thus  in  this  early  Act, 
the  term  "  proprietor  "  is  used  to  embrace  all  the  persons,  ex- 
cept the  original  author  himself,  who,  by  §  1,  might  obtain  a 
copyright,  viz.,  the  author's  executors,  administrators  or  as- 
signs, or  any  person  who  had  purchased  "  or  legally  acquired 
the  copyright."  By  §  1,  it  is  seen,-  moreover,  that  the  pur- 
chasers referred  to  are  the  purchasers  of  "  such  map,  chart, 
book,  or  books,"  i,  ^.,  of  the  works  of  resident  authors  only. 
It  is  the  same  in  all  the  subsequent  statutes  above  cited. 

From  the  Act  of  1790  down  to  1870,  there  could  be  no 
*'  proprietor,"  in  the  sense  of  the  copyright  law,  except  the 


462  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Tneogling  v,  SchUe. 

owner  of  the  work  of  a  citizen  or  resident  author,  ineiading 
a  transfer  of  such  resident's  right  of  copyright.  In  the  case 
of  Keene  v.  WheaUey^  (9  Am.  Law  Reg.^  33,)  Cadwakder, 
J.,  says,  p.  45 :  "  The  other  sections  concern  copyright. 
They  apply  only  to  authors  who,  if  not  citizens,  mnst  be  resi- 
dents of  the  United  States,  and  proprietors  under  derivations 
of  title  from  euch  authors.  No  other  proprietor  can  obtain 
a  copyright  under  the  Act."  A  third  person  may  become 
such  an  owner,  or  "  proprietor,"  through  a  transfer  or  assign- 
ment, verbal  or  written,  embracing  the  right  of  copyright, 
after  the  work  is  completed,  or  by  virtue  of  an  original  em- 
ployment under  a  contract  with  the  author,  which,  by  agree- 
ment, is  to  confer  upon  the  employer  the  complete  ownership 
both  of  the  work  itself  and  of  any  copyright  that  may  be 
obtained  thereon.  Upon  such  a  contract  "  the  person  who 
remunerates,"  says  Vice  Chancellor  Hall,  in  Ghrace  v.  New- 
man,  (Z.  li.j  19  £q.j  623,  626,)  "  must  be  taken  to  be  the 
equitable  assignee  "  of  the  copyright.  {Parton  v.  Prangs  3 
Clif,,  587,  547,  551 ;  Boudcault  v.  Fox,  5  Blatchf.  C.  C. 
P.,  87  ;  ZitOe  v.  Gould,  2  Id.,  362  ;  Sheldon  v.  Houyhtm,  5 
Id.,  285;  Paige  v.  Bcmks,  7  Id.,  152,  and  18  Wall.,  608; 
Dro7ie  on  Copyright,  238,  243-5,  257-9.) 

To  a  mere  owner  of  a  work  as  such,  to  a  "  proprietor  "  in 
that  sense  only,  without  any  express  or  implied  tranrfer  from 
the  author  or  inventor  of  his  right  to  a  copyright,  Congress, 
as  above  observed,  is  not  by  the  Constitution  vested  with  the 
power  to  grant  a  copyright.  Congress  is  not,  indeed,  prohib- 
ited from  protecting  foreign  authors  and  artists,  if  it  choose 
to  do  so  ;  but,  in  view  of  its  inflexible  refusal  to  do  so  up  to 
this  time,  the  phraseology  of  the  statute  of  1870,  in  §  86,  is 
not  to  my  mind  a  sufficient  indication  of  any  such  change  of 
purpose.  When,  therefore,  in  the  Act  of  1870,  the  word 
"  proprietor  "  is  found  used,  for  the  first  time,  in  connection 
with  the  words  "  author,  inventor,  designer,"  as  a  person  to 
whom  copyrights  may  be  granted,  it  must  be  construed,  if 
possible,  in  harmony  with  the  inflexible  policy  and  intent  of 
the  copyright  law  up  to  that  date,  and  be  held  to  be  used  in 


APRIL,   1882.  463 

Tuengling  v.  Schile. 


the  same  sense  in  which  the  word  had  always  before  been  used 
in  the  copyright  law  of  this  country,  viz.,  as  meaning  the 
lawful  owner  and  representative,  whether  by  assignment,  em- 
ployment, death,  or  other  lawful  succession,  of  the  exclusive 
rights  of  some  native  or  resident  author  or  artist  only.  It 
must  be  construed  in  harmony  with  the  policy  of  the  copy- 
right law,  rather  than  upon  its  literal  and  independent  read- 
ing. Upon  the  same  principle,  the  Supreme  Court,  in  the 
late  case  of  Wilmot  v.  Mudge^  (103  U,  S.,  217,  220,)  held  that 
the  literal  reading  of  an  amendment  of  the  section  of  the 
bankrupt  law  as  to  the  effect  of  a  discharge  of  a  fraudulent 
debt  by  a  composition,  must  give  way  to  the  manifest  general 
purpose  and  intent  of  the  Act.  In  that  case  the  Court  say  : 
^^  It  is  conceded  that  the  defendants  in  error  came  within  the 
terms  of  this  provision,  and  it  is  insisted  that  they  must  be 
bound  by  the  composition.  We  admit  the  apparent  force  of 
the  logic.  But,  as  we  have  already  said,  these  several  statutes, 
sections  and  provisions  are  to  be  construed  as  parts  of  one 
entire  system  of  bankrupt  law.  .  *  *  *  There  is  no  in- 
justice, nor  any  difficulty,  in  restraining  the  language  of  the 
composition  section,  as  regards  its  binding  force,  to  persons 
whose  debts  are  capable  of  being  discharged  by  the  bankrupt 
law.  *  *  *  In  this  manner  both  provisions  of  the  bank- 
rupt law  can  stand  and  be  consistent."  Upon  the  same  prin- 
ciple, the  word  "  proprietor  "  should  be  construed  so  as  to  pro- 
duce a  harmonious,  rather  than  a  contradictory,  policy  in  the 
different  parts  of  the  copyright  law,  by  giving  that  word  the  re- 
stricted meaning  and  sense  in  which  it  has  been  used  in  all 
the  past  copyright  Acts  in  this  country.  As  respects  this 
chromo,  the  plaintiff  was  not  a  "proprietor"  of  a  native 
work ;  and,  upon  the  construction  here  given,  he  was  not, 
therefore,  a  "  proprietor  "  within  the  meaning  of  §  4,952,  even 
had  he  shown  an  exclusive  right  from  the  foreign  artist ;  and 
he  is,  therefore,  not  entitled  to  the  benefits  of  the  copyright 
law  on  this  chromo. 

(3.)  The  chromo  in  question  is  nothing  but  a  lithographic 
j>rint  in  colors.    Lithographs  were  undoubtedly  embraced  in 


464  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Yuenglingv.  Schile. 

the  term  "  print,"  under  the  Act  of  February  3d,  1831,  both 
in  the  authorizing  and  the  restricting  clauses.  (4  TJ.  8.  Stat, 
cat  Large^  436,  438,  §§  1,  8.)  The  only  difference  between 
chromo-lithographic  prints  and  other  lithographs  is,  that  the 
former  are  printed  from  several  stones,  namely,  one  for  each 
color,  while  the  latter  are  printed  from  one  stone,  with  ink  of 
some  kind.  It  cannot  be  contended  that  a  ^^  print "  is  any 
the  less  a  ^^  print "  because  struck  off  in  different  colors ;  and 
it  has  been  held  that  playing  cards,  printed  in  colors,  are 
"  prints."  {JSichardson  v.  MiMer^  12  Off.  Gaz.  of  Pat.  Off.^ 
3.)  A  print  is  a  mark  or  form  made  by  impression  or  print- 
ing ;  anything  printed ;  that  which,  being  impressed,  leaves 
its  form,  as  a  cut  in  wood,  or  metal,  to  be  impressed  on  paper ; 
the  impression  made ;  a  picture ;  a  stamp ;  the  letters  in  a 
printed  book ;  an  impression  from  an  engraved  plate ;  a  pic- 
ture impressed  from  an  engraved  surface,  &c.  (  Web»t.  Did. ; 
Worces.  Diet. ;  Wood  v.  Abbott,  5  BlMohf.  G.  G.  B.,  326.) 
^^  It  means,  apparently,  a  picture,  something  complete  in  it- 
self, similar  in  kind  to  an  engraving,  cut  or  photograph." 
{RoaenbachY.  Breyfuaa,  2  Fed.  Rep.,  217,  221.) 

Chromo-lithographs  were,  therefore,  copyrightable  as 
"  prints,"  under  the  Act  of  1831,  and,  as  such,  were  within 
the  restriction  of  §  8  of  that  Act.  As  chromo-lithographs 
became  largely  dealt  in,  and,  nnder  the  slang  name  of 
"  chromos,"  became  a  considerable  article  of  trade,  it  was  not 
unnatural  that,  for  greater  certainty,  they  should  be  mentioned 
by  name,  in  the  revision  of  the  copyright  Act,  in  1870.  But, 
Congress  did  not  thereby  abolish  the  restriction  which  already 
existed  upon  copyrighting  them  when  made  by  alien  artists, 
because  such  chromo-lithographic  prints  are  included  in  the 
word  "  print,"  which  is  contained  both  in  §  103  of  the  Act  of 
1870  and  in  §  4,971  of  the  Eevised  Statutes.  Under  that 
general  designation  of  '*  prints,"  being  restricted  before,  they 
are  restricted  still ;  for,  in  the  use  of  the  new  and  specific 
word  ''  chromo,"  in  the  Act  of  1870,  and  in  §  4,952  of  the 
Bevised  Statutes,  there  is  nothing  incompatible  with  the  re- 


APRIL,  18S2.  465 


Rose  V.  The  Stephens  and  Gondii  Traaspoiiatlon  Company. 


«triction  under  the  more  general  word  "  print,"  which  both 
statutes  continne  in  force  as  before.  (65  Terra  Cotta  VaM$j 
10  Fed.  Rep.,  880.) 

The  preliminary  injunction  should,  therefore,  be  denied. 

Charles  Unangst,  for  the  plaintiff. 

Wiiliam  F.  PitsKke^  for  the  defendant. 


John  0.  Bose 

vs. 

The  Stephens  and  Condit  Tbanspobtation  Oo:mpant. 

In  a  suit  to  recoTer  damages  for  personal  injuries,  the  complaint  alleged  that  the 
plaintiff  had  sustained  severe  injuries,  and  claimed  $5,000  damages.  After  a 
Terdict  for  the  plaintiff,  the  defendant  moved  for  a  new  trial  because  of  newly, 
discovered  evidence  relating  to  the  extent  of  the  plaintiS's  injuries.  It  did 
not  appear  that  before  thlB  trial  the  defendant  had  made  any  investigation  aa 
to  the  character  or  extent  of  those  injuries.    The  motion  was  denied. 

(Before  Wallaos,  J.,  Southern  District  of  New  York,  April  8th,  1882.) 

Wallace,  J.  The  motion  for  a  new  trial  upon  the  ground 
of  newly-discovered  evidence  should  not  be  granted,  because 
the  defendant  has  failed  to  show  that  by  the  exercise  of  rea- 
sonable diligence  the  evidence  newly  discovered  could  not 
have  been  obtained  and  used  upon  the  trial.  The  evidence  * 
relates  to  the  extent  of  the  injuries  received  by  the  plaintiff 
through  the  negligence  of  the  defendant.  The  plaintiff  al- 
leged in  his  complaint  that  he  had  sustained  severe  injuries, 
and  claimed  $5,000  damages.  It  does  not  appear  that  prior 
to  the  trial  the  defendant  made  any  investigation  to  ascertain 
the  character  or  extent  of  these  injuries.  Its  officers  seem  to 
have  contented  themselves,  in  their  preparation  for  a  defence 
of  the  action,  with  accepting  the  plaintifTs  case  as  it  might 
Vol.  XX.— 80 


466  SOUTHERN  DISTRICT  OF  NEW  YORE, 

McKmy,  Tnutee,  Ac.  tr.  Jaekmu. 

appear  upon  the  trialy  so  far  as  this  issne  is  concerned.  If  it 
had  heen  shown,  upon  this  motion,  that  an  effort  had  been 
nnsnccessfullj  made  upon  their  part,  by  inquiry  of  such  per- 
sons as  would  be  likely  to  have  knowledge  of  the  facts,  to  as- 
certain the  character  of  the  plaintiff's  injuries,  a  very  different 
case  would  be  presented,  and  one  which  might  appeal  with 
some  force  to  the  favorable  consideration  of  the  Court.  To 
grant  the  motion  upon  such  a  case  as  is  made  would  encourage 
supineness  on  the  part  of  defendants.  The  precedent  would 
encourage  defendants  to  ignore  proper  preparation  upon  one 
material  issue,  in  order  to  obtain  the  chances  of  a  second  trial 
in  case  of  failure  upon  the  other  issues. 
The  motion  is  denied. 

Chatmcey  /Shaffer^  for  the  plaintiff. 

Thomas  E.  SiXUman^  for  the  defendants. 


Gordon  McKay,  Trustee,  Ac. 

vs. 
Andrew  H.  Jaokhan.    In  Equity. 

The  Same 

The  Soott  Sole  Sewing  Machine  Company  and  others.     In 

Equity. 

The  Same 

'OS. 

David  Lehman  and  others.    In  EQumr. 

Lyman  R.  Blake  inyented  an  improyemeDt  in  sewing  machines,  by  which  the 
soles  and  uppers  of  shoes  could  be  sewed  together  by  chain  stitches,  and  ob- 


APRIL,  1882.  467 


MoKay,  Tmstee,  Ac.  tf.  Jackman. 


tained  a  patent  for  it,  No.  20,770,  July  6th,  1868.  It  was  extended  for  7  years 
and  expired  July  6th,  1879.  August  14th,  I860,  he  obtained  two  other 
patents,  Noe.  26,961  and  26,962,  one  for  the  process  of  sewing  a  shoe  so 
sewed,  and  the  other  for  the  shoe  sewed  by  such  process.  August  18th,  1874, 
they  were  extended  for  7  years.  January  18th,  1880,  No.  29,6G1,  was  re- 
issued as  No.  9,048.  J.  took  a  license  from  the  plaintiif,  with  the  right  to 
use  it  under  all  three  of  the  patents,  during  the  term  of  either,  for  license 
fees  for  all  shoes  made  on  it.  After  No.  20,776  expired,  S.  made  machines  for 
sewing  shoes  by  said  process  and  sold  them  to  the  other  defendants,  who  used 
tbem.  J.  and  S.  and  the  other  defendants  were  sued,  after  No.  20,776  ex^ 
pired,  fur  infringing  No.  26,962  and  re-issue  No.  9,048.  Blake  did  not  inyent 
a  shoe  sewed  with  such  stitch :  Meld,  that  the  machine  alone  was  patentable 
and  not  the  process  or  the  product. 
The  bill  was  diamissed  as  to  all  the  defendants  and  subject-matter  except  the 
arrears  of  license  fees  due  by  J.  for  the  use  of  the  machine. 

(Before  Whkelxb,  J.,  Southern  District  of  New  York,  April  16th,  1882.) 

Wheeleb,  J.  These  stiits  are  brought  upon  two  patents 
originally  granted  to  Lyman  H.  Blake,  dated  Angnst  14th, 
1860,  one,  No.  29,561,  for  an  improvement  in  the  construc- 
tion of  boots  and  shoes,  and  the  other,  Ko.  29,562,  for  an  im- 
provement in  boots  and  shoes.  They  were  to  run  fourteen 
years,  and,  August  13th,  1874,  were  extended  seven  years. 
They  were  acquired  by  the  orator,  and  the  former  was  re- 
issued, in  No.  9,043,  dated  January  18th,  1880,  and  both  have 
expired  since  these  suits  were  brought. 

Before  Blake's  inventions  boots  and  shoes  were  made  by 
pegging  through  the  outer  sole,  upper  and  inner  sole,  by 
sewing  a  welt  to  the  inner  sole  and  upper,  and  then  sewing 
the  outer  sole  to  the  welt,  some  very  light  shoes  were  made 
wrong  side  out,  by  sewing  through  the  inner  sole,  upper,  and 
part  way  through  the  outer  sole,  and  then  turned,  and  some 
very  low  shoes  were  made  by  sewing  common  stitches  di- 
rectly through  the  inner  sole,  upper,  and  outer  sole.  Sewing 
parts  of  nppers,  and  pieces  of  leather  and  cloth  for  other  pur- 
poses, together,  by  chain  stitches,  made  by  a  machine,  by  draw- 
ing loops  of  the  thread  through  the  material,  without  drawing 
the  rest  of  the  thread  through,  was  then  known  and  practiced. 
But  no  boots  or  shoes  made  by  sewing  the  soles  and  uppers 


468  SOUTHERN  DISTRICT  OF  NEW   YORK, 

McKay,  Tmstee,  Ac.  v.  Jacknum. 

together  by  such  Btitches,  nor  any  method  of  so  sewing  them 
together,  was  then  known.  "No  means  to  which  that  place 
was  accessible,  for  setting  the  stitches,  had  then  been  discov^- 
ered.  Blake  invented  an  improvement  in  sewing  machines, 
by  which  the  soles  and  uppers  of  all  kinds  of  boots  or  shoes 
could  be  sewed  together  without  any  welt,  by  that  kind  of 
stitches ;  and  it  was  not  useful  for,  nor  adapted  to,  sewing  any 
other  kind  of  stitches,  nor  in  any  other  place.  This  improve- 
ment was  patented  to  him  in  letters  patent  JSo.  20,775,  dated 
July  6th,  1858,  and  was  highly  useful  to  the  public.  He 
mad^  boots  and  shoes  on  his  machine,  and  was  undoubtedly 
the  tirst  to  produce  such  boots  or  shoes,  or  to  practice 
that  mode  of  making  them.  He  made  application  for  a  pa- 
tent for  this  process  of  making  boots  and  shoes,  and  for  the 
boots  and  shoes  made  by  this  process,  as  a  new  manufacture, 
June  30th,  1859 ;  the  specification  was  returned  to  him  for  the 
erasure  of  one  of  the  claims,  with  information  that  claims  for 
the  process  and  product  could  not  be  considered  in  the  same 
application,  July  30th,  1859  ;  he  withdrew  the  claim  for  the 
product,  with  notice  that  he  intended  to  renew  it  in  a  separate 
application,  April  16th,  1860,  and  did  renew  it  July  21st, 
1860.  The  machine  patent  was  granted  for  fourteen  years, 
was  extended  seven  years,  was  owned  by  the  orator,  and  ex- 
pired July  6th,  1879.  The  defendant  Jackman  took  a  lease 
from  the  orator  of  a  sewing  machine,  with  the  right  to  use  it 
under  all  three  of  the  patents,  during  the  term  of  either,  for 
license  fees  for  all  boots  and  shoes  made  upon  it,  and  operated 
xmder  that  license.  Since  the  expiration  of  the  machine  pa- 
tent, the  defendant  the  Scott  Sole  Sewing  Machine  Com- 
pany has  made  machines  for  sewing  these  boots  and  shoes  by 
this  method,  and  sold  them  for  use  to  the  defendants  in  the 
other  cases,  who  have  used  them.  These  bills  are  brought  for 
relief  against  these  acts,  as  alleged  infringements  ;  and,  in  the 
case  against  Jackman,  the  bill  covers  any  arrears  of  license 
fee  there  may  be  for  the  use  of  the  machine,  as  this  Court 
bas  jurisdiction  of  that  subject  on  account  of  the  citizenship 


APRIL,   1882.  469 


McKay,  Tmstee,  &c  v.  Jackman. 


of  the  parties ;  no  queBtion  as  to  that,  however,  is  made  for 
decision. 

The  machine  patent  appears  to  have  always  been  of  un- 
questioned validity.  That  was  so  related  to  the  others  that 
any  question  as  to  their  validity  would  have  been  practically 
unavailing  while  that  was  in  force,  and  no  question  appears  to 
have  been  really  made  and  contested  about  either  until  after 
that  had  expired ;  and  the  actual  validity  of  these  two  patents, 
as  granted,  does  not  appear  to  have  ever  beeu  contested  until 
now.  In  McKay  v.  Dibert^  (5  JFed.  Hep.j  587,)  these  patents 
were  in  controversy ;  the  infringement  complained  of  appears 
to  have  been  the  use  of  a  machine  after  the  expiration  of  the 
machine  patent.  If  seems  to  have  been  argued  there,  that, 
as  the  exclusive  right  to  make  and  use  and  vend  to  others  to 
be  used,  during  the  term  of  the  patent,  had  been  granted  in 
consideration  of  the  full  right  which  the  public  should  have 
to  the  invention  after  the  expiration  of  the  term,  the  public 
would  have  the  full  right  to  the  machine  after  that  time,  not- 
withstanding the  other  patents,  and  that  they  would  practi- 
cally be  cut  down  to  the  life  of  the  machine  patent,  by  the 
expiration  of  that.  The  Court,  Nixon,  J.,  appears  to  have 
held  that  the  expiration  of  the  machine  patent  left  the  machine 
free  to  all,  except  for  use  to  infringe  other  patents  with,  but 
that  its  expiration  could  not  affect  the  validity  of  other  pa- 
tents. That  case  is  cited  in  the  orator's  brief  at  page  16,  and 
this  is  all  that  is  claimed  from  it.  The  same  point  was  made 
upon  the  hearing  on  the  motion  for  preliminary  injunctions 
in  these  cases,  and  was  disposed  of  orally  by  Blatchford,  J., 
upon  the  authority  of  that  case.  The  question  was  also  made, 
whether  a  mere  sale  of  the  machine  for  use  in  making  such 
boots  and  shoes  would  be  an  infringement,  and  it  was  held 
that  it  would  be  and  injunctions  were  granted  These  ques- 
tions appear  to  have  been  all  that  were  then  decided.  A  sten- 
ographic report  of  tlie  proceedings  upon  that  motion  has  been 
furnished  and  examined,  and  the  question  as  to  the  validity  of 
these  patents  when  granted  does  not  appear  to  have  been 
considered.    Both  of  these  decisions,  too,  were  made  before 


470  SOUTHERN  DISTRICT  OF  NEW  YORK, 

McKay,  Trustee,  Ac  v,  Jockman. 

those  of  the  Supreme  Court  in  Miller  v.  Brass  Co.,  (104  U. 
&,  850,)  and  in  James  v.  CampheUy  {Id,j  356.)  So,  the  ques- 
tions as  to  the  validity  of  these  patents,  as  made  in  these  cases, 
are  now  to  be  passed  upon. 

The  first  step  is  to  ascertain  exactly  what  Blake  did  in- 
vent. There  are  many  peculiar  and  valuable  qualities  of  this 
kind  of  stitch  when  nsed  to  bind  together  the  surfaces  of 
leather.  Only  the  loops  of  the  stitches  are  drawn  through  as 
made,  and  the  wax  is  not  scraped  off  and  the  thread  frayed 
and  worn,  as  is  the  case  when  each  stitch  is  set  by  drawing 
the  whole  length  of  the  thread  through  from  the  ends ;  each 
loop,  as  drawn  to  place,  tightens  the  preceding  loop  and  makes 
the  seam  very  close ;  and  they  can  be  sewed  by  machine  and 
drawn  tighter  than  by  hand,  making  the  binding  together  of 
the  surfaces  of  the  leather  very  firm.  These  qualities  are 
very  useful  in  the  sewing  together  of  the  soles  and  uppers  of 
boots  and  shoes,  but  none  of  them  are  peculiar  to  that  work, 
or  to  the  work  in  that  place.  The  same  qualities  existed  in 
this  kind  of  sewing  as  used  in  uniting  parts  of  uppers  and 
elsewhere,  and  Blake  had  the  advantage  of  knowing  all  about 
them.  Had  it  been  desirable  to  sew  seams  like  those  through 
soles  and  uppers  in  boots  and  shoes,  where  the  uppers  would 
not  have  been  in  the  way,  it  would  have  required  no  invention 
whatever  to  do  it  with  the  machines  then  in  use  and  with  this 
kind  of  stitch ;  or,  had  it  been  desirable  to  so  sew  any  seams, 
it  would  have  required  no  invention  to  take  these  stitches  for 
them.  The  fitness  of  the  seams  was  apparent,  but  the  uppers 
were  in  the  way  of  employing  them.  Blake  invented  means 
for  getting  by  the  uppers,  and  sewing  the  seams  there  not- 
withstanding the  uppers.  He  used  bis  means  to  sew  the 
seams  there,  and  accomplished  a  great  thing,  but  not  because 
he  had  made  a  new  kind  of  seam  or  given  a  seam  any  new 
quality,  but  because  he  had  put  a  well-known  seam  in  a  diffi- 
cult place.  This  was  all  due  to  the  machine  and  its  operation, 
and,  when  he  had  patented  the  machine,  he  had  patented  all 
there  was  of  it.  If,  after  he  had  made  his  machine,  and  be- 
fore he  had  made  a  boot  or  shoe  with  it,  some  one  else,  know- 


APRIL,   1882.  4:71 


MoEay,  Trustee,  Ao.  v.  Jackman. 


ing  all  about  it,  had,  by  hand  or  other  known  means,  made 
boots  or  shoes  by  sewing  the  soles  and  uppers  together  with 
this  stitch,  that  other  person  would  not  have  been  entitled  to 
a  patent  for  either  the  process  of  sewing  or  the  boot  or  shoe, 
for  there  would  have  been  no  invention  in  either.  After 
knowledge  of  a  machine  to  make  a  shoe  in  a  particular  man- 
ner, there  would  be  no  room  for  an  invention  of  that  manner 
of  making  a  shoe,  or  of  a  shoe  made  in  that  manner ;  and 
there  would  be  no  more  room  for  the  inventor  of  the  machine 
than  for  any  one  else. 

It  may  be  doubtful  whether  such  a  process  or  product  as 
these  is  by  itself  patentable.  Mr.  Justice  Grier,  in  delivering 
the  opinion  of  the  Court  in  Coming  v.  Burden^  (15  ffow.y 
252),  said  :  ^^  A  process  eo  nomine  is  not  made  the  subject  of 
a  patent  in  our  Act  of  Congress.  It  is  included  under  the 
general  term  *  useful  art.'  An  art  may  require  one  or  more 
processes  or  machines  in  order  to  produce  a  certain  result  or 
manufacture.  The  term  machine  includes  every  mechanical 
device  or  combination  of  mechanical  powers  and  devices  to 
perform  some  function  and  produce  a  certain  effect  or  result. 
But,  where  the  result  or  effect  is  produced  by  chemical  action, 
by  the  operation  or  application  of  some  element  or  power  of 
nature,  or  of  one  substance  to  another,  such  modes,  methods, 
or  operations  are  called  processes.  A  new  process  is  usually 
the  result  of  discovery ;  a  machine  of  invention."  In  Coch- 
rane y.  Deener,  (94  17.  S.j  780),  Mr.  Justice  Bradley  said: 
^^  A  process  is  a  mode  of  treatment  of  certain  materials  to 
produce  a  given  result.  It  is  an  act,  or  a  series  of  acts,  per- 
formed upon  the  subject-matter  to  be  transformed  and  reduced 
to  a  different  state  or  thing."  The  above  language  of  Mr. 
Justice  Grier,  with  more  to  the  same  import,  was  quoted  with 
approval  by  Mr.  Justice  Bradley,  in  TUghinan  v.  Proctor^ 
(102  U.  S.y  707.)  Neither  of  these  definitions  includes  mere 
mechanical  operations,  like  the  looping  and  drawing  thread  to 
form  stitches,  in  sewing,  either  by  machinery  or  by  hand ; 
and  such  operations,  apart  from  the  means  for  performing 
them,  do  not  appear  to  be  within  the  reach  of  protection  by 


4T2  SOUTHERN  DISTRICT  OF  NEW  YORK, 

McKay,  Trustee,  Ac.  «.  Jackman. 

the  patent  laws.    {CPReiUy  v.  Iforse^  15  How.^  62 :  Burr  v. 
Duryee,  1  WaU,,  570.) 

There  is,  of  course,  no  doubt  but  that  a  boot  or  shoe 
might  be  the  subject  of  a  patent,  as  an  article  of  manufacture, 
bnt  there  would  have  to  be  something  new  about  it,  as  such, 
in  the  sense  of  the  patent  laws.  Blake  did  not  invent  a  boot 
or  shoe ;  nor  a  sewed  boot  or  shoe ;  nor  a  boot  or  shoe  sewed 
with  this  kind  of  stitches ;  all  these  were  known  and  in  use 
before;  he  invented  a  machine  by  which  boots  and  shoes 
could  be  sewed  with  this  kind  of  stitches  in  parts  where  they 
could  not  be  so  sewed  before.  The  new  effect  was  due  to  the 
operation  of  the  machine.  The  patentability  belonged  to  the 
machine,  and  not  to  the  boot  or  shoe,  as  appeared  before.  In 
Collar  Company  v.  Yam,  Deu^en^  (23  WaXL.^  530,)  Mr.  Justice 
Clifford,  on  this  subject,  said:  ^'Articles  of  mannfactnre 
may  be  new  in  the  commercial  sense,  when  they  are  not  new 
in  the  sense  of  the  patent  law.  Kew  articles  of  commerce  are 
not  patentable  as  new  manufactures,  unless  it  appears,  in  the 
given  case,  that  the  production  of  the  new  article  involved 
the  exercise  of  invention  or  discovery  beyond  what  was  neces- 
sary to  construct  the  apparatus  for  its  mauufacture  or  produc- 
tion.''   In  this  case  that  requisite  does  not  appear. 

Further,  this  machine,  the  process  it  went  through  with, 
and  the  work  it  wrought,  were  so  intimately  connected  that 
the  machine  could  not  be  conceived  of  as  an  operative  thing 
without  involving  the  rest.  The  specification  of  the  machine 
and  its  use,  in  the  machine  patent,  included  also  a  description 
of  the  process  and  product.  This  is  shown  by  the  patent 
itself,  and  is  prcfved,  also,  by  the  testimony  of  experts,  exam- 
ined as  witnesses.  It  also  appears  to  have  been  the  view 
taken  by  Judge  Nixon,  in  McKay  v.  Dihert^  where  he  sug- 
gests that  a  surrender  and  re-issue  of  this  patent  in  divisions 
would  have  avoided  the  incongruity  arising  from  the  expira- 
tion of  the  patents  at  different  times.  In  MiUer  v.  Bra^  Co.,, 
{tibi  sttpra,)  it  is  strongly  intimated,  that,  whatever  a  patentee 
describes  in  the  patent  and  does  not  claim  is  abandoned  to 
the  public,  unless  it  was  omitted  to  be  claimed  by  inadvertence 


APRIL,   1882.  473 


McKay,  Trustee,  Ac,  v.  Jackman. 


or  mistake,  and  a  correction  is  sought  immediately  upon  dis- 
covery of  the  omission.  There  is  an  allusion  to  the  statute 
for  defeating  a  patent  by  two  years'  public  use  and  being  on 
sale  of  the  invention,  as  an  illustration  or  reason,  but  the  case 
does  not  seem  to  hold  that  two  years  are  to  be  allowed  in 
which  to  reclaim  what  is  so  described.  In  James  v.  Campbelly 
{ubiavpra,)  ITorton  had  taken  ont  a  patent,  December  16th^ 
1862,  for  a  post-marking  and  postage-cancelling  stamp,  con- 
taining a  combination  of  the  post-marker  and  blotter  and 
cross-bar  connecting  them,  the  blotter  to  be  made  of  steel  or 
other  material  which  would  answer  its  purpose,  and  to  have 
on  its  face  circular  cutters  inclosed  in  circular  rings,  to  cut 
the  postage  stamp  at  the  time  of  defacing  it  with  ink.  The 
specification  described,  and  the  drawings  showed,  the  whole. 
The  claims  were  for  the  cancelling  stamp  separately,  and  for 
the  combination  of  the  cancelling  stamp  with  the  cross-bar. 
On  the  5th  of  January,  1863,  twenty  days  after,  Jie  made  ap- 
plication for  a  patent  for  a  post-marking  and  postage-cancel- 
ling stamp  of  the  same  construction  as  the  other,  except  that 
the  blotter  was  to  be  made  of  wood,  cork,  rubber,  or  similar 
material,  held  by  a  tube  fastened  at  one  end  of  the  cross-bar. 
The  claims  were  for  the  blotter,  separately,  and  for  the  blotter 
in  combination  with  the  cross-bar  and  post-marking  device. 
This  patent  was  granted.  It  was  several  times  re-issued,  but 
the  validity  of  it,  as  originally  granted,  came  under  consider- 
ation, and  especially  the  claim  for  the  combination.  This 
combination  was  not  the  same  as  that  patented  in  the  former 
patent,  in  any  sense ;  that  was  a  combination  of  a  blotter  with 
a  cross-bar  only,  while  this  was  a  combination  of  a  different 
blotter  with  a  cross-bar  and  post-marker.  The  whole  of  this 
combination  was  described  in  the  former  patent,  except  the 
difference  in  the  blotter.  Of  these  patents  Mr.  Justice  Brad- 
ley said :  "  It  is  hardly  necessary  to  remark,  that  the  patentee 
could  not  include  in  a  subsequent  patent  any  invention  em- 
braced or  described  in  a  prior  one  granted  to  himself,  any 
more  than  he  could  an  invention  embraced  or  described  in  a 
prior  patent  granted  to  a  third  person.  Indeed,  not  so  well ; 
because,  he  might  get  a  patent  for  an  invention   before 


474  SOUTHERN  DISTRICT  OP  NEW  YORK, 

McOay  v,  Lamar. 

patented  to  a  third  person  in  this  country,  if  he  could  show 
that  he  was  the  first  and  original  inventor,  and  if  he  shonld 
have  an  interference  declared.  Now,  a  mere  inspection  of 
the  patents  referred  to  above  will  show,  that,  after  December, 
1862,  Norton  conld  not  lawfully  claim  to  have  a  patent  for 
the  general  process  of  stamping  letters  with  a  post-mark  and 
cancelling-stamp  at  the  same  time ;  nor  for  the  general  com- 
bination of  a  post-stamper  and  blotter  in  one  instrument ;  nor 
for  the  combination  of  a  post-stamper  and  blotter  connected 
by  a  cross-bar ;  for  all  these  things,  in  one  or  other  specific 
form,  were  exhibited  in  these  prior  patents."  The  original 
patent  was  declared  to  have  been  invalid  upon  this  ground. 
As  before  shown,  Blake's  machine  patent  exhibited  both  the 
shoe  of  his  product  patent,  and  the  mode  of  construction  of  his 
process  patent,  to  which  he  was  no  more  lawfully  entitled 
than  Norton  was  to  his  second  patent  for  what  was  exhibited 
in  the  first. 

It  is  conceded,  in  the  defendants'  brief,  that  there  should 
be  a  decree  for  an  account  of  license  fees,  against  Jackman. 

Let  decrees  be  entered  for  an  account  of  license  fees,  in  the 
case  against  Jackman,  and  dismissing  the  bill  as  to  the  resi- 
due ;  and  dismissing  the  bills,  with  costs,  in  the  other  cases. 

JEUas  Merwm  <&  J.  J.  StorroWy  for  the  plaintifiE. 

J.  C,  Clayton^  for  the  defendants. 


Charles  F.  McOat 
G.  De  Bossbtt  LAkAB.     In  Egurrr. 

G.  recovered  from  the  United  States,  by  suit  in  the  Conrt  of  Glaima,  money  aa 
the  proceeds  of  cotton  seized  in  the  Southern  States  and  sold.  G.  baying 
died,  L.,  bis  executor,  was  sued  by  M.,  to  reooTer  some  of  the  money,  aa  the 


APRIL,  1882.  476 


MeCay  v.  Lamar. 


proceeda  of  cotton  which  belonged  to  his  assignor,  a  Virginia  oorporatioD. 
The  proceeds  being  idcDtified :  Hdd : 

(1.)  Although  the  corporation  was  engaged  in  running  the  blockade,  and  in  aid- 
ing the  rebellion,  it  could  have  recovered  itself,  as  it  did  not  appear  that  the 
cotton  was  received  by  G.  under  any  arrangement  that  it  should  be  unlaw- 
fuUy  used ; 

(2.)  The  assignment  of  the  claim  by  the  corporation  to  M.  was  valid ; 

(8.)  The  failure  of  the  plaintiff  to  maintain  an  immaterial  issue  was  disregarded, 
the  material  allegations  of  the  bill  being  proved ; 

(4.)  M.  was  not  entitled  to  interest  on  the  ayaUs,  unless  it  was  received. 

(Before  Wbbelxr,  J.,  Southern  District  of  New  Tork,  April  21st,  1882.) 

Wheeleb,  J.  The  defendant  is  the  executor  of  the  will 
of  Gazawaj  B.  Lamar,  who  owned,  was  interested  in,  and 
connected  with,  large  amounts  of  cotton,  which  were  seized 
in  the  Sonthem  States  by  United  States  treasury  agents,  at 
abont  the  close  of  the  war  of  the  rebellion,  and  sold ;  and  the 
proceeds  of  which  were  turned  into  the  treasury  of  the 
United  States.  He  brought  proceedings  in  the  Court  of 
Claims  for  the  recovery  of  these  avails,  and  therein  recov- 
ered, in  April,  1874,  the  sum  of  $579,343  51.  The  orator 
claims  that  $23,844  88  of  this  sum  was  recovered  for  136 
bales  which,  subject  to  some  claim  for  advances  in  which 
Lamar  was  interested,  belonged  to  the  Bichmond  Importing 
and  Exporting  Company,  a  corporation  of  Virginia,  and  that 
the  right  of  that  company  to  this  cotton,  and  its- proceeds, 
has  been  assigned  to  him.  This  bill  is  brought  for  the  recov- 
ery of  these  avails,  and  the  cause  has  been  heard  upon  bill, 
answer,  replication,  proofs,  and  argument  of  counsel. 

Three  principal  questions  are  made  in  respect  to  the  ora- 
tor's right  of  recovery.  One  is  as  to  whether  these  136  bales 
were  embraced  in  Lamar's  recovery.  Upon  this  question 
careful  and  repeated  examinations  of  the  proofs  lead  to  the 
conclusion  that  they  were.  The  proof  of  the  proceedings  in 
the  Court  of  Claims  would,  alone,  leave  the  matter  somewhat 
in  doubt,  perhaps  too  much  so  for  a  foundation  for  a  recovery. 
But,  while  the  case  was  pending,  he  made  his  will,  that  of 
which  the  defendant  is  executor,  containing  these  clauses :  ^^  It 


476  SOUTHERN  DISTRICT  OF  NEW   YORK, 


McCay  v.  Lamar. 


is  my  further  will  and  desire,  and  I  hereby  direct  my  execu- 
tors to  press  my  claims  upon  the  Government  of  the  United 
States  for  the  payment  of  the  following  cotton,  which  are 
now  before  the  Court  of  Claims ;"  among  other  lots  following 
waa  specified:  '^  136  bales  cotton,  belonging  to  a  gentleman  in 
Richmond,  Virginia,  on  which  C.  A.  Lamar  made  advances/' 
"  When  all  the  collection  for  this  private  cotton  are  made, 
and  the  amount  placed  to  the  credit  of  the  several  accounts, 
and  interest  charged  to  each  account  for  my  advances,  then  a 
division  must  be  made  of  the  net  balance  to  the  private  ac- 
count of  each."  After  the  recovery  he  advertised,  in  the 
Richmond  Enquirer,  for  the  owner  of  two  parcels  of  cotton, 
and  this  lot  was  in  two  parcels,  stating,  ^^  I  have  today  received 
payment  for  the  same  from  the  United  States  Ti*easury,"  and 
requesting  the  owner  to  come  forward,  pay  advances  and  ex- 
penses, prove  ownership,  and  receive  the  balance  due.  The 
proofs  also  show  that  he  entered  this  cotton  in  his  books  as 
belonging  to  an  owner  unknown,  but  advertised  for  in  Rich- 
mond, charged  it  there  to  the  United  States  at  |23,844  88, 
and  credited  to  the  United  States  that  sum  as  received  for  it. 
This  clearly  shows  that  his  claim  embraced  this  cotton,  that 
he  understood  that  he  recovered  for  it,  and,  all  together,  the 
proof  is  quite  satisfactory  that  he  did  recover  for  it.  The 
proof,  including  correspondence,  shows  quite  clearly  that  thia 
cotton  was  purchased  and  forwarded  to  C.  A.  Lamar,  by  a 
Mr.  Hambleton,  of  Richmond,  as  agent  for  the  Richmond 
Importing  and  Exporting  Company,  and  was  owned  by  that 
company. 

Another  question  is  as  to  whether  that  company  conld 
have  recovered  for  this  cotton  or  its  avails ;  for,  it  is  said,  if 
that  company  could  not,  its  assignee  could  not.  It  is  argued 
that  it  could  not  because  it  was  chartered  and  organized  to 
run  the  blockade  and  aid  the  rebellion.  The  proof  shows 
that  it  was  chartered  "  for  the  purpose  of  owning,  navigating 
and  freighting  ships  and  other  vessels  engaged  in  foreign  and 
domestic  commerce,  and  of  buying  and  selling  the  products 
and  commodities  so  freighted  or  intended  to  be  freighted," 


APRIL,  1882.  4T7 


McCay  v.  Lamar. 


and  that  it  was  engaged  in  ranning  the  blockade,  and  in  that 
way  indirectly,  if  not  directly,  to  some  extent,  aiding  the  re- 
bellion. But  the  proof  does  not  show  that  C.  A.  Lamar  or 
Oazaway  B.  Lamar  received  this  cotton  under  any  arrange- 
ment that  it  should  be  used- in  aid  of  the  rebellion,  or  in  any 
unlawful  manner,  such  that  it  could  not  be  recovered  for  in 
the  hands  of  either ;  and  the  fact  that  it  was  recovered  for  by 
the  latter  shows  that  nothing  he  was  doing  with  it  forfeited  or 
outlawed  it.  The  corporation  appears  to  have  been  lawful 
enough  in  itself.  The  business  it  was  chartered  for  might  be 
lawful  or  unlawful.  In  transacting  unlawful  business  it 
woxdd  incur  the  consequences  of  its  unlawful  acts,  the  same 
as  a  person ;  but  such  unlawful  acts  would  not,  of  themselves, 
forfeit  its  property  not  involved  in  them,  nor  its  other  lawful 
rights.  As  the  case  is  presented,  no  good  reason  is  shown  why 
this  company  might  not,  in  its  own  name,  have  recovered 
these  avails  of  the  defendant's  testator  in  his  lifetime,  or  of 
his  executor  since  his  decease. 

The  other  principal  question  is,  whether  the  claim  is  so 
assigned  to  the  orator  that  he  can  recover  upon  it  in  his  own 
name.  It  is  not  questioned  but  that  an  assignee  of  a  mere 
right  of  action  or  recovery  may  maintain  a  suit  in  equity  upon 
it  in  his  own  name ;  but  it  is  strenuously  argued  that  no  real 
and  valid  assignment  of  this  claim  is  shown.  That  company 
had  a  valid  claim  against  Mr.  Lamar,  the  testator.  He  held 
these  avails  of  the  property  of  the  company  in  trust  for  the 
company.  The  company  had  a  right  to  charge  him  as  its 
trustee  of  the  funds,  whether  he  was  willing  or  not ;  he  seems 
to  have  been  willing,  however,  and  to  have  charged  himself, 
so  far  as  he  could.  The  disposition  of  the  cotton  was  directly 
within  the  corporate  powers  of  the  company ;  and  the  dispo- 
sition of  the  avails  of  the  cotton  was  impliedly  within  the 
same  scope.  The  charter  provided,  that  '^  the  afEairs  of  the 
company  shall  be  managed  by  a  president  and  board  of  di- 
rectors, whose  term  of  office,  and  their  number,  shall  be 
determined  and  elected  by  the  stockholders,  and  the  said 
board  of  directors  shall  possess  all  the  corporate  powers  of 


478  SOUTHERN  DISTRICT  OF  NEW  YORK, 

McOay  v,  Lamar. 

the  company."  The  proof  shows  that  no  meeting  of  the 
company  had  been  held,  for  any  purpose,  for  many  years,  and 
that  very  little  or  no  corporate  business  had  been  transacted 
witliin  a  number  of  years  before  the  assignment.  It  does 
not  show  what  term  of  office  was  determined  upon  for  the 
directors.  It  does  show,  by  the  testimony  of  the  officers,  who 
the  directors  were  at  the  time,  which  was  competent  for  that 
purpose,  especially  as  the  proof  also  shows  that  the  records 
were  destroyed.  One  of  the  directors  had  died.  The  presi- 
dent and  all  the  others  joined  in  the  execution  of  the  assign- 
ment. This  seems  to  be  sufficient  to  transfer  the  title  to  the 
claim  to  the  orator. 

The  bill  alleges  that  Gazaway  B.  Lamar  received  this  cot- 
ton as  executor  of  C.  A.  Lamar,  and  held  it  as  such  when  it 
was  seized.  The  anewer  denies  that  he  was  executor  of  C.  A. 
Lamar  or  held  it  as  such.  The  proof  does  not  support  the 
bill,  but  sustains  the  answer,  on  this  point.  He  appears  to 
have  received  it  as  surviving  partner.  This  failure  to  sustain 
the  bill  in  this  respect  is  argued  to  be  fatal  to  the  right  to 
recover  upon  the  bill.  This  argument  is  not  considered  to  be 
well  founded.  The  orator  does  not  seek  to  recover  through 
0.  A.  Lamar,  or  upon  any  right  of  his,  or  upon  any  obliga- 
tion incurred  by  him.  How  this  cotton  came  into  the  hands 
of  Gazaway  B.  Lamar  is  wholly  immaterial  in  this  case. 
The  statement  of  it  is  mere  inducement.  The  material  facts 
are,  that  the  cotton  belonged  to  the  Bichmond  Importing  and 
Exporting  Company,  that  the  testator  received  the  avails 
of  it,  and  that  the  orator  has  succeeded  to  the  right  of  the 
company  to  the  avails.  The  bill  ought  not  to  fail  when  the 
material  allegations  are  proved.  The  orator  appears  to  be  en- 
titled to  a  decree  for  the  payment  of  these  avails.  The  avails 
are  the  amount  received  for  this  cotton,  after  deducting  the 
expenses  belonging  to  it  and  the  recovery  for  it.  It  is  stipu- 
lated that  the  expense  of  recovering  the  whole  sum  was 
$100,000.  The  expense  of  recovering  this  part  may  be  in 
proportion,  and  may  not ;  it  is  not  stipulated  that  it  would 
be.     The  fact  is  to  be  ascertained. 


APRIL,  1882.  479 


Cramer  v.  Mack. 


The  orator  claims  interest  on  the  avails,  and  it  is  included 
in  the  prayer  of  the  bill.  On  the  facts  stated,  the  orator  is 
not  entitled  to  interest  as  snch.  The  testator  was  not  a  bor- 
rower of  the  money,  nor  was  he  wrongfully  withholding  it. 
Still,  if  these  avails  were  so  invested  as  to  bear  interest,  the 
orator  would  be  entitled  to  the  interest  they  bore,  as  a  part  of 
the  avails.  An  account,  therefore,  is  necessary  of  the  ex- 
penses and  charges  belonging  to  this  cotton  and  to  the  recov- 
ery of  the  sum  received  for  it,  and  of  the  interest  received,  if 
any. 

Let  there  be  a  decree  that  an  account  be  taken  of  the 
charges  and  expenses  chargeable  to  this  cotton,  and  to  the 
recovery  of  what  was  received  for  it,  and  of  the  interest 
received  upon  the  avails  of  it,  if  any,  and  for  the  payment 
of  the  balance  to  the  orator  out  of  any  assets  of  the  estate  in 
the  hands  of  the  defendant,  with  costs. 


Joseph  B.  Stewart^  for  the  plaintiff. 
Edward  N.  Dickeraon^  for  the  defendant. 


Andrew  B.  Obameb  vs.  Isaac  8.  Mace. 

In  a  suit  in  a  State  Coinrt  in  New  York,  issne  was  joined  by  Berving  an  answer 
which  did  not  require  a  replication.  Thereupon  the  plaintiff -noticed  the 
cause  for  trial,  and  placed  it  on  the  calendar  in  due  season  for  a  term.  After 
the  commencement  of  the  term,  but  within  20  days  from  the  service  of  the 
original  answer,  the  defendant  served  an  amended  answer,  haying  the  right 
to  do  60  as  of  course,  subject  to  its  being  stricken  out  if  served  for  delay  and 
for  causing  the  loss  of  a  term.  The  amended  pleading,  if  not  stricken  oat^  super- 
seded the  original  answer  and  nullified  the  notice  of  trial  The  plaintiff,  if 
the  cause  had  been  reached  before  the  amended  answer  was  served,  had  a 
right  to  try  the  cause,  and  thereafter  the  amendment  could  not  be  made. 


480  SOUTHERN  DISTBICrr   OF  NEW  YORE, 

Cramer  «.  M«ek. 

After  the  term  the  defiandant  filed  a  petttlon  for  the  remoTal  of  the  caoae  into 
this  CSoort:  Hdd^  that  the  petition  was  not  filed  before  or  at  the  term  at  whkk 
the  camw  ooold  be  first  tried,  within  the  Act  of  March  Sd,  1875,  (18  IT.  S, 
Stat  ai  Learffe,  471.) 

(Before  Wallaok,  J.,  Soathem  IMsfcriet  of  New  York,  April  2ad,  1881.) 

Wallaob,  J,  The  motion  to  remand  this  action  to  the 
State  Court  presents  the  question  whether  this  cause  could 
have  been  tried  at  the  January  term  of  the  Court  of  Com- 
mon Pleas  for  the  city  and  county  of  ]New  York,  within  the 
meaning  of  that  clause  of  the  removal  Act  of  March  3d,  1875, 
(18  U.  S.  Stat,  at  LwrgSy  471,)  which  requires  the  petition  for 
removal  to  have  been  filed  ^'  before  or  at  the  term  at  which 
said  cause  could  be  first  tried.''  If  the  cause  could  have  been 
tried  at  that  term,  the  petition  was  filed  too  late  and  the  mo- 
tion to  remand  must  prevaiL 

Issue  had  been  joined  by  the  service  of  an  answer  to  the 
plaintiff's  complaint,  which  answer  did  not  require  a  replica- 
tion. Thereupon  the  plaintiff  noticed  the  cause  for  trial,  and 
placed  it  on  the  calendar  in  due  season,  for  the  January  term. 
After  the  commencement  of  the  term,  but  within  twenty  days 
from  the  service  of  the  original  answer,  the  defendant  served 
an  amended  answer.  After  this  term  of  the  State  Court  the 
defendant  filed  his  petition  for  removal. 

By  the  practice  in  this  State,  within  twenty  days  after  a 
pleading  is  served  it  may  be  once  amended,  as  of  course,  sub- 
ject to  the  right  of  the  opposite  party  to  have  the  amended 
pleading  stricken  out  by  the  Court  if  it  is  made  to  appear  that 
the  amendment  was  for  the  purpose  of  delay,  and  that  the 
benefit  of  a  term  will  be  lost  thereby.  The  amended  plead- 
ing, unless  it  is  stricken  out  by  the  Court,  supersedes  the 
original  pleading  and  nullifies  a  notice  of  trial  which  may 
have  been  served  by  the  adverse  party  before  the  amend- 
ment. The  right  to  amend  is  not,  per  se^  a  stay  of  proceed- 
ings, and,  if  the  cause  has  been  noticed  for  trial,  the  party 
who  noticed  it  may  bring  on  the  cause,  and,  if  it  is  reached 


APRIL,   1888.  481 


Gnuner  v.  Mack. 


before  an  amended  pleading  is  served,  the  cause  may  be  tried, 
and  thereafter  an  amendment  is  of  no  avail. 

It  was  obviously  the  intention  of  the  removal  Act  to  pre- 
clnde  a  party  from  resortiug  to  the  expedient  of  a  removal  in 
order  to  deprive  his  adversary  of  the  opportunity  to  try  the 
cause,  and  the  decisions  in  construction  of  the  Act  are  to  the 
effect  that  a  party  loses  his  right  to  remove  if  he  permits  the 
term  to  pass  at  which  he  could  have  placed  the  cause  in  a  posi- 
tion to  be  tried  upon  the  merits,  if  he  had  conformed  to  the 
rules  of  practice  of  the  State  Court.  When  there  is  an  issue 
which,  by  the  practice  of  the  Court,  can  be  brought  to  trial, 
the  cause  is  triable,  and,  if  noticed  for  trial,  the  Court  can  en- 
tertain it,  and  it  matters  not  whether  the  parties  are  other- 
wise ready  for  trial  or  not,  or  whether  the  Court  will  see  fit 
to  entertain  the  trial  or  not.  {Chimee  v.  County  of  Brum- 
tDicky  1  Hughes^  270 ;  Ames  v.  Colorado  JR.  JR.  Co.,  4  DUl., 
261 ;  ScoU  V.  ainton  cfe  Springfidd  R.  JR.  Co.,  6  Biss.,  529.) 
In  KnowUon  v.  Congress  <&  Empire  Spring  Co.,  (13  Blatchf. 
C.  C.  JR.j  170,)  it  was  held,  that,  where  either  party  could 
notice  the  cause  for  trial  at  a  term,  that  term  must  be  consid- 
ered the  term  at  which  the  cause  could  be  first  tried ;  and  in 
Forrest  v.  Keeler,  (17  Blatchf.  C  C.  JR.,  522,)  Judge  Biatch- 
ford  held  that  the  defendant  lost  his  right  to  remove  when, 
the  cause  being  at  issue  and  triable  on  the  merits,  he  might 
have  noticed  it  for  trial.  Other  decisions  intimate  a  severer 
rule,  and  hold  that,  if  the  cause  could  have  been  triable  if  the 
party  seeking  to  remove  had  used  due  diligence  in  progress- 
ing the  cause,  the  term  at  which  it  could  have  been  ready  for 
trial  is  the  term  intended  by  the  Act. 

The  present  cause  was  triable  at  the  January  term  of  the 
State  Court.  The  defendant  had  the  power  and  the  right  to 
defeat  the  trial  by  serving  an  amended  answer.  The  exercise 
of  that  right  did  not,  however,  enlarge  his  time  for  removal 
There  was  an  issue  which  it  was  competent  for  either  party 
to  bring  to  a  hearing  and  which  the  plaintiff  sought  to  bring 
to  a  trial.  The  plaintiff  was  prevented  from  trying  the  cause 
by  the  act  of  the  defendant.  It  does  not  avail  the  defendant 
Vol.  X2L— 81 


48S  SOUTHERN  DISTRICT  OP  NEW  YORK, 

Matthews  v.  SpangeDberg. 


that  the  practice  of  the  Court  gave  him  the  right  thuB  to  pre- 
Tent  the  plaintiff  from  trying  die  canse. 
The  motion  to  remand  is  granted. 

Nathaniel  Myers^  for  the  plaintiff. 
Hugo  S.  Macky  for  the  defendant. 


John  Matthews 

vs. 

Ferdinand  Spanoenberg  and  Otto  Boettcher.    In  EgurrT. 

The  6th  and  7th  claims  of  re-issned  letters  patent  No.  9,028,  granted,  Janaary 
6th,  1880,  to  John  Matthews,  for  soda-water  apparatos,  the  original  patent. 
No.  60,265,  haying  been  granted  to  him  October  8d,  1865,  are  Toid  for  want 
of  noyelty. 

The  4th,  6th,  8th  and  9th  claims  are  valid.  The  parts  patented  in  them  being 
definitely  distingnishable  from  the  parts  claimed  in  the  5th  and  7th  claims, 
and  haying  been  infringed,  and  the  patentee  haying  made  the  latter  claims  by 
mistake,  supposing  himself  to  be  the  first  inyentor  of  the  parts  claimed  in 
them,  without  any  wilfal  default  or  intent  to  defraud  or  mislead  the  public, 
and  not  haying  unreasonably  neglected  thus  far  to  enter  a  disclaimer  of  those 
parts,  it  was  held  that  he  was  entitled  to  maintain  this  suit,  but  without  costs, 
on  entering  the  proper  disclaimer. 

Some  of  the  defendants'  eyidence  was  taken  out  of  time,  but,  as  no  motion  was 
filed  to  suppress  \t,  it  was  allowed  to  stand  and  was  considered. 

(Before  Whecleb,  J.,  Southern  District  of  New  York,  April  25th,  1882.) 

Wheeler,  J.  This  suit  is  bronglit  npon  re-iBsned  letters 
patent  No.  9,028,  dated  January  6th,  1880,  granted  to  the 
orator  npon  the  surrender  of  original  letters  patent  Ko.  50,255, 
dated  October  3d,  1865,  for  soda-water  apparatus.  The  de- 
fence relied  npon  is,  that  the  defendants  purchased  the  appa- 
ratns  used  by  them  of  William  Gee,  who  afterwards  settled 
with  the  orator ;  that  the  patent  is  void  for  want  of  novelty ; 
and  that  they  do  not  infringe.  The  origioal  patent  is  not  in 
evidence. 


APRIL,   1882.  483 


Matthews  v.  SpangODberg. 


Some  of  the  defendants'  evidence  was  taken  and  filed  out 
of  time.  No  motion  to  suppress  it  has  been  filed.  The  orator 
objects  to  its  consideration ;  and  the  defendants  ask  that  it  be 
considered,  or  the  time  extended  to  cover  its  taking.  As  no 
motion  to  suppress  has  been  filed,  it  is  allowed  to  stand  and 
is  considered.  Wooster  v.  Cla/rky  (9  JFed.  Hep.,  854,)  is  relied 
upon  by  the  orator  on  this  point,  but  in  that  case  there  was  a 
motion  to  suppress. 

The  case  does  not  show  that  the  defendants  purchased 
their  apparatus  of  Gee  before  he  settled  with  the  orator,, 
and,  therefore,  entirely  fails  to  show  that  he  settled  with  the 
orator  for  the  sales  to  the  defendants.  They  stand  by  them- 
selves, independently  of  Gee.  {Steam  Stone  Cutter  Company 
V.  Windsor  Manufacturmg  Compamy,  17  Blatchf.  G.  C.  R.y 
24.)    That  defence  fails  for  want  of  proof. 

The  patent  has  nine  claims.  The  second  and  third  are 
not  in  controversy.  Upon  all  the  evidence,  it  is  found  that 
the  first  claim  is  not  infringed ;  that  the  fifth  and  seventh 
are  anticipated  by  letters  patent  No.  44,645,  dated  October 
11th,  1864,  granted  to  A.  J.  Morse,  for  a  syrup  fountain ; 
and  that  the  fourth,  sixth,  eighth  and  ninth  are  not  anticipated 
and  have  been  infringed  by  the  defendants. 

The  parts  of  the  thing  patented  in  the  fourth,  sixth^ 
eighth  and  ninth  claims  are  definitely  distinguishable  from 
the  parts  claimed  in  the  fifth  and  seventh  claims ;  and  the 
orator  appears  to  have  made  the  latter  claims  by  mistake^ 
supposing  himself  to  be  the  original  and  first  inventor  of  the 
parts  claimed  in  them,  without  any  wilful  default,  or  intent 
to  defraud  or  mislead  the  public,  and  not  to  have  unreason- 
ably neglected  to  enter  a  disclaimer  of  those  parts,  thus  far. 
Therefore,  he  is  entitled  to  maintain  this  suit,  but  without 
costs,  on  entering  the  proper  disclaimer.  {Rev,  Stat.,  sec. 
4,922 ;  Burdett  v.  Estey,  15  Blatchf.  C  C.  R.,  349.) 

On  filing  a  certified  copy  from  the  Patent  Office  of  the 
record  of  a  disclaimer  by  the  orator  of  what  is  claimed  in  the 
fifth  and  seventh  claims,  let  a  decree  be  entered  that  the 


484  EASTERN  DISTRICT  OF  NEW  YORK, 

Hajes  «.  SetoD. 


fourth,  sixth,  eighth  and  ninth  claims  of  the  patent  are  valid, 
that  the  defendants  have  infringed,  and  for  an  injunction  and 
an  account,  without  costs. 

Arthur  V.  Brieaen,  for  the  plaintiff. 
Philip  Hathaway^  for  the  defendants. 


George  Hayes  vs.  John  Seton.    In  Equity. 

Re-iflsaed  letters  patent,  No.  8,597,  granted  to  George  Hayes,  Febniary  85th« 
1879,  for  an  "  improvement  in  TentiUtors,"  the  original  patent,  Na  94,S03, 
having  been  granted  to  him  August  Sist,  1869,  are  void,  becanse  a  feature  no 
where  alluded  to  in  the  original  patent  has  been  inserted  in  the  re-iseae  and 
made  an  essential  part  of  the  invention,  and  a  necessary  element  in  each 
claim. 
^Claims  8  and  4  of  re48sued  letters  patent  No.  8,674,  granted  to  George  Hayes, 
April  15tb,  1879,  for  an  "improvement  in  sky-lights,"  the  original  patent. 
No.  100,148,  having  been  granted  to  him  February  22d,  1870,  and  having 
:been  re-issaed  as  No.  5,698,  December  2Sd,  1878,  are  invalid,  because  of  the 
•omission  from  the  rafter  described  in  those  claims,  of  a  stay-plate,  which  the 
•original  patent  describes  as  an  essential  feature  of  the  invention.  Claim  6  is 
invalid,  because  it  omits  a  moulding  and  a  stay-plate,  designated  in  the 
original  patent  as  essential  features  of  the  invention.  As  to  claims  7,  9,  10, 
11,  12,  18,  14  and  16,  any  right  which  the  patentee  may  have  had  to 
secure  by  letters  patent  what  is  covered  by  those  claims  was  lost  by  delaying 
to  assert  such  right  for  over  9  years  from  the  date  of  the  original  patent. 

Claim  1  of  re-issued  letters  patent  No.  8,675,  granted  to  George  Hayes,  Apnl 
15th,  1879,  for  an  "improvement  in  sky-lights,"  the  original  patent,  No. 
106,157,  having  been  granted  to  him  August  9th,  1870,  considered.  Claims 
2  and  6  held  not  to  have  been  ininnged. 

Claims  1  and  8  of  re-issued  letters  patent  No.  8,688,  granted  to  George  Hayes, 
April  29ih,  1879,  for  an  "  improvement  in  sky-lights,"  the  original.  No. 
112,594,  having  been  granted  to  him  March  14th,  1871,  are  invalid,  because 
for  dififerent  inventions  from  those  described  in  the  original  patent.  Claim  8 
considered.    Claim  5  held  to  be  void. 

4Claim  8  of  re-issued  letters  patent  No.  8,689,  granted  to  George  Hayes,  April 
29th,  1879,  for  an  '*  improvement  in  sky-light  turrets  and  conservatories," 
held  not  to  have  been  infringed. 

(Before  BiarBDioT,  J.,  Eastern  District  of  New  York,  April  26th,  1882.) 


APRIL,   1882.  485 


Hayes  v,  Seton. 


Benedict,  J.  This  action  is  founded  npon  five  patents 
for  various  inventions  employed  in  the  construction  of  sky- 
lights, conservatories,  and  other  glazed  structures.  Infringe- 
ment of  these  patents  is  denied,  and  the  validity  of  each  of 
the  re-issues  is  contested,  upon  the  ground  that  the  re-issue  is 
not  for  the  same  invention  as  that  described  in  the  original 
patent,  and  the  further  ground  that  it  was  illegally  issued. 

The  first  patent  set  forth  in  the  bill  is  re-issue  K"o.  8,597, 
dated  February  25th,  1879.  The  original  patent.  No.  94,203,. 
put  in  evidence  by  the  defendant,  was  issued  August  81st, 
1869.  In  it  the  invention  is  stated  to  consist  of  a  metallic 
ridge-box,  capable  of  being  used  as  a  ventilator,  ^'so  con- 
structed as  to  admit  of  an  ingress  of  pure  air,  which,  coming 
in  contact  with  the  impure  air  of  the  building,  is  driven  into 
an  upper  cavity,  which,  being  perforated,  gives  the  egress  ; 
the  whole  arranged  86  that  all  leakage  is  avoided."  The 
method  of  constructing  this  ridge-box  is  set  forth  in  the  speci- 
fication and  a  drawing  connected  therewith.  The  drawing 
represents  the  rafters  of  a  building,  resting  against  two  ridge- 
boards,  separated  so  as  to  leave  an  opening  from  the  inside  of 
the  building,  between  the  ridge-boards.  Over  this  opening, 
and  upon  the  outside  of  the  roof,  is  a  box  or  frame,  G,  per- 
forated at  its  lower  edge  so  as  to  admit  the  outside  air  to  the 
interior  of  the  box,  and  having  a  flange,  F,  outside  of  its  junc- 
tion with  the  roof,  to  prevent  leakage  between  the  roof  and 
the  box.  Across  the  top  of  the  box  is  a  grating,  J,  for  the 
passage  of  air  from  the  interior  of  the  box  into  a  cap,  I,  con- 
structed so  as  to  cover  the  top  of  the  box.  This  cap  extends 
beyond  the  sides  of  the  box,  and  is  then  perforated  to  permit 
the  egress  of  air  from  the  cap.  Upon  the  grating  rests  a 
slide,  K,  perforated  to  act  with  this  grating,  so  as  to  open  or 
close  the  same,  when  desired.  The  single  claim  of  this  origi- 
nal is  as  follows  :  "  The  metallic  flange,  F,  the  frame,  G,  the 
grating,  J,  the  slide,  K,  and  the  cap,  I,  constructed  and  ar- 
ranged substantially  as  shown  and  set  forth,  for  the  purposes 
set  forth."  The  invention  described  in  this  patent,  and  sought 
to  be  secured  thereby,  is  a  simple  box,  intended  to  act  as  a 


486  EASTERN  DISTRICT  OF  NEW  YORK, 

Hayes  v.  SetoD. 

ridge,  and  at  the  same  time  serve  as  a  yentilator,  by  allowing 
«ir  from  the  outside  oi  the  bnilding  to  eDter  the  box,  and, 
there  mingling  with  the  inside  air,  then  to  pass  up  through 
the  box  into  the  cap,  and  so  out  by  perforations  in  the  cap,  as 
described.  If,  now,  the  re-issue  be  examined,  it  is  observable 
that  a  feature  nowhere  alluded  to  in  the  original  patent  has 
been  inserted,  namely,  a  plate  running  up  inside  of  and  par- 
allel with  the  sides  of  the  box,  and  connecting  at  its  foot  with 
the  flange  outside  the  box.  This  inside  plate  is  termed,  in 
the  re-issue,  ''  an  interior  vertical  flange,"  and  its  function  is 
49tated  to  be  to  form  an  air  space  or  flue  around  the  frame  on 
the  inside.  This  is  a  feature  wholly  new,  and  in  the  re-issue 
it  is  made  an  essential  part  of  the  invention,  by  the  terms  of 
the  specification.  It  is  also  made  a  necessary  element  in  each 
•claim  of  the  re-issue,  by  reference  to.  the  drawings  and  the 
specification.  By  the  addition  of  this  new  element  a  sub- 
stantial change  in  the  structure  claimed  to  have  been  invented 
is  effected,  and,  as  there  is  nothing  in  the  original  patent  upon 
which  a  right  to  this  new  structure  can  be  based,  the  re-issue 
must  be  held  to  cover  an  invention  different  from  that  de- 
scribed in  the  original,  and  to  be  for  that  reason  void. 

The  next  patent  set  forth  in  the  bill  is  re-issue  No.  8,674, 
dated  April  15th,  1879.  The  validity  of  this  patent  is  also 
disputed.  The  original  patent,  No.  100,143,  issued  February 
22d,  1870,  described  a  metallic  bar  or  rafter  intended  to  be 
used  in  the  construction  of  glazed  roofs.  The  construction 
of  this  rafter  is  particularly  set  forth.  Its  characteristic  feat- 
ures are  a  short  metal  body,  a,  a  stay-plate, y,  a  hollow  mould- 
ing, dy  the  same  being  fitted  together  and  arranged  so  as  to 
form,  on  the  upper  side  of  the  rafter,  rabbets,  J,  S,  for  the 
glasses  to  rest  on,  and  on  the  under  side  gutters,  Cj  c,  to  catch 
the  drip.  No  one  of  the  characteristics  of  this  rafter  is 
-claimed  to  have  been  first  invented  by  the  patentee.  But  he 
claims  to  have  been  the  first  one  to  employ  them  in  the  man- 
ner described,  and  thereby  to  have  invented  a  rafter  which  is 
new  in  form  and  useful  in  result.  The  original  patent  also 
describes  a  form  of  cap-plate,  to  be  fastened  to  the  upper  side 


APRIL,  1882.  487 


Hayes  v.  Seton. 


of  the  rafter,  above  the  rabbets,  between  which  and  the  ledge 
of  the  rabbet  the  glasses  are  to  rest.  No  new  resnlt  is  claimed 
to  have  been  attained  by  the  nse  of  this  cap-plate,  but  the 
combination  of  the  cap-plate  with  the  rafter  described  is  al- 
leged to  be  new  and  useful.  The  original  patent  also  de- 
scribes a  form  of  metal  clip  constructed  to  form  a  lap  under 
and  over  the  adjacent  edges  of  the  glasses  of  a  glazed  roo^ 
in  a  direction  crosswise  to  the  rafter,  and  extending  so  that 
each  end  is  covered  by  the  caphplate  attached  to  the  rafter. 
There  are  three  claims  in  the  original  patent :  ^^  (1)  The  me- 
tallic bar  or  rafter,  A,  formed  of  a  hollow  sheet-metal  bodj, 
a  staj-plate,  y,  and  hollow  moulding,  dj  fitted  together  and 
arranged  to  form  rabbets,  5,  5,  for  the  glasses,  and  gutters,  Oj  Cj 
substantially  as  specified*  (2)  The  combination  of  the  cap- 
plate,  d^  with  the  hollow  metal  bar  or  rafter,  A,  essentially  as 
shown  and  described.  (3  The  clip,  I,  in  combination  with 
the  cross  gutters.  A,  and  the  main  gutters,  c,  Cy  substantially  as 
specified." 

This  patent  was  re-issued  as  No.  5,698,  December  28d, 
1873,  and  again  in  1879,  the  latter  re-issue  being  the  patent 
set  forth  in  the  bill.  This  last  re-issue  has  15  claims,  whereby 
the  scope  of  the  patent  is  largely  extended.  Of  these  the  3d, 
4th,  6th,  7th,  9th,  10th,  11th,  12th,  13th,  14th  and  15th  are 
alleged  to  have  been  infringed.  The  invention  described  in 
the  3d  claim  of  the  re-issue  consists  of  a  hollow  sheet-metal 
rafter,  having  a  body,  a,  similar  to  the  body  of  the  rafter  de- 
scribed in  the  original  patent,  rabbets,  hy  hj  similar  to  the  rab- 
bets on  the  rafter  described  in  the  original,  gutters,  c,  c,  simi- 
lar to  the  gutters  of  the  rafter  described  in  the  original,  and 
a  hollow  moulding,  dj  similar  to  the  moulding,  dy  of  the 
rafter  described  in  the  original  patent.  It  will  be  perceived, 
from  the  description,  that  the  subject-matter  of  the  claim  is 
a  rafter  differing  from  the  rafter  described  in  the  original  pat- 
ent, in  this,  that  it  has  no  stay-plate,/.  This  stay-plate  is,  in 
the  original,  described  as  one  of  the  characteristic  and  essen- 
tial features  of  the  plaiu tiffs  invention.  Its  omission  from 
the  rafter  described  in  the  3d  claim  of  the  re-issue  effects  a 


488  EASTERN  DISTRICT  OF  NEW  YORK, 

Hayes  v.  SetoD. 

substantial  change  in  the  combination,  and,  therefore,  is  fatal 
to  the  claim.  The  claim,  as  made,  is  for  a  different  invention 
from  that  described  in  the  original  patent,  and,  for  that  rea- 
son, must  be  held  void. 

The  4th  claim  of  this  re-issne  is  also  illegal,  for  the  same 
reason.  It  covers  a  rafter  differing  from  the  rafter  described 
in  the  original,  in  that  it  has  no  stay-plate,/*. 

The  6th  claim  of  the  re-issne  is  for  a  hollow  sheet-metal 
rafter  having  rabbets  and  gntters  like  those  of  the  rafter  de- 
scribed in  the  original  patent,  and  also  a  cap-plate,  D,  attached. 
Both  the  moulding,  dy  and  the  stay-plate,  y,  which,  in  the 
original,  are  designated  as  essential  features  of  the  invention, 
are  omitted  from  this  claim,  and  a  substantial  change  in  the 
structure  is  thereby  effected.  This  claim,  therefore,  is  also 
void,  for  the  reason  that  it  covers  a  rafter  not  to  be  found  in 
the  original  patent. 

The  remaining  claims  of  this  re-issue,  alleged  to  have  been 
infringed,  in  every  instance  are  intended  to  enlarge  the  scope 
of  the  patent ;  and,  while  it  may  be  true  in  regard  to  some  of 
them,  that  the  subject-matter  of  the  claim  is  described  or 
suggested  in  the  original  patent,  it  is  evident,  on  the  face  of 
the  patent,  that  there  was  no  intention  to  assert  that  any  of 
these  matters  formed  part  of  the  patentee's  invention,  and  no 
intention  on  the  part  of  the  patentee  to  claim  any  exclusive 
right  therein.  Any  person  reading  the  original  patent  would 
be  justified  in  the  conclusion  that  no  exclusive  right  to  these 
matters  was  claimed  by  the  patentee.  Such  being  the  case, 
according  to  the  decision  of  the  Supreme  Court  of  the  United 
States,  in  MiUer  v.  Brass  Co,^  (104  U.  S.j  350,)  it  is  the  duty 
of  this  Court  to  declare  that  any  right  whidi  the  patentee 
may  have  had  to  secure  these  matters  by  letters  patent  has 
been  lost  by  delaying  to  assert  such  right  for  over  nine  years 
from  the  date  of  the  original  patent.  Says  the  Supreme 
Court :  ^^  The  claim  of  a  specific  device  or  combination,  and 
an  omission  to  claim  other  devices  or  combinations  apparent 
on  the  face  of  the  patent,  are,  in  law,  a  dedication  to  the  pub- 
lic of  that  which  is  not  claimed."    This  language  is  applicable 


APRIL,   1882.  489 


Hayes  v.  Seton. 


to  the  present  patent,  and,  because  dae  diligence  was  not  used 
to  rectify  the  omission,  and  to  claim  these  combinations,  this 
Coart  is  compelled,  by  the  authority  cited,  to  hold  that  these 
claims  are  invalid,  and  the  re-issne  to  that  extent  void. 

The  next  patent  set  forth  in  the  bill  is  re-issne  Ko.  8,675, 
dated  April  15th,  1879.  To  this  re-issne,  also,  the  defence  is 
set  up  that  it  is  illegal  and  void.  The  original  patent  was  No. 
106,167,  dated  August  9tb,  1870.  It  relates  to  an  improve- 
ment npon  the  rafter  forming  the  subject  of  the  patent  No. 
100,143,  already  referred  to.  The  improvement  is  stated  to 
consist  in  a  novel  arrangement  of  stay-plate  in  the  rafter, 
whereby  strength  is  secured  without  material  addition  to  the 
weight ;  and  also  to  consist  in  employing  a  novel  construc- 
tion of  end  clip ;  and  also  to  consist  in  an  indirect  arrange- 
ment of  escape  opening  from  the  main  gutters,  to  provide 
fo];the  escape  of  water,  and  prevent  snow  from  beating  in. 
A  description  of  these  improvements  is  given  in  the  specifi- 
cation, with  references  to  drawings  annexed.  The  claims  of 
the  original  patent  are  three  in  number,  and  are  as  follows : 
"(1)  The*  arrangement  of  the  vertical  stay-plate,  a,  with  the 
shell  or  body.  A,  of  the  rafter,  moulding,  d,  rabbets,  i,  i,  and 
gutters,  c,  Cj  substantially  as  specified.  (2)  The  clip  G, 
formed  with  corrugation,  &,  made  to  substitute  gutters,  and 
arranged  and  applied  relatively  to  the  glass  as  described. 
(8)  The  arrangement  of  the  end  outlets,  j^,y,  with  the  hollow 
body  of  the  lower  transom,  F,  and  escape  apertures,  g^  sub- 
stantially as  specified.  These  claims,  it  will  be  observed,  are, 
first,  for  a  rafter  constructed  in  a  certain  way ;  second,  for 
the  use  of  a  clip  of  a  certain  form,  when  applied  to  the  glasses 
of  a  glazed  roof  in  the  manner  described  ;  and,  third,  for  the 
arrangement  of  outlets  for  the  water  to  escape  from  the  gut- 
ters by  outlets  under  cover  of  the  lower  transom,  and  then  by 
apertures  in  the  end  clip  at  the  foot  of  the  roof,  arranged  in- 
termediate the  outlets  from  the  gutters.  The  elements  of 
these  combinations  are  all  old ;  the  combination  of  elements  is 
what  is  claimed  to  be  new. 

The  re-issue  has  7  claims,  of  which  the  1st,  2d  and  6th  are 


490  EASTERN  DISTRICT  OF  NEW  YORK. 

■ 

Hayes  v.  Seton. 

alleged  to  haye  been  infrioged  by  the  defendant  The  lat 
claim  of  the  re-issne,  like  the  Ist  claim  of  the  original,  is  for 
the  combinaition  of  the  yertical  inside  plate  with  a  rafter. 
Bat,  while  the  rafter  in  the  original  has  a  moulding,  d^  the 
rafter  in  the  first  claim  of  the  re-issne  is  described  as  having  a 
high  ridge,  and  no  mention  is  made  of  the  moulding,  A^  un- 
less such  mention  be  effected  by  the  words  ^^  formed  essen- 
tially as  shown."  If  these  words  do  not  have  the  effect  to 
constitute  the  moulding  mentioned  in  the  specification  a  part 
of  the  rafter  and  an  element  of  the  combination,  then  the 
claim  is  void,  because  for  a  different  structure  from  that  de- 
scribed in  the  originaL  If,  on  the  other  hand,  the  words 
"  formed  essentially  as  shown  "  carry  with  them  every  feature 
of  the  rafter  described,  including  a  ^^  sheet-metal  moulding 
properly  secured  to  the  rafter  or  bar  and  inside  plate,  and  so 
connected  to  the  gutters  of  the  rafter  as  to  constitute  a  brace 
to  prevent  their  closing  together,  or  a  clamp  to  prevent  their 
spreading,  or  both,"  then  the  first  claim  of  the  re-issue  is  for 
the  same  thing  as  that  described  in  the  2d  claim. 

The  2d  claim  of  the  re-issue  appears  to  be  for* the  same 
invention  described  in  the  original  patent,  and  I,  therefore, 
pass  to  the  question  whether  it  has  been  shown  to  have  been 
infringed  by  the  defendant.  In  my  opinion  such  infringe- 
ment has  not  been  proved.  None  of  the  bars  or  rafters  made 
by  the  defendant  have  a  moulding  secured  by  rivets  and  bolts 
to  the  rafter  or  bar,  and  attached  to  the  inside  stay-plate  by 
suitable  bolts  or  rivets,  so  as  to  form  a  brace  or  clamp  for  the 
gutter.  And  this  difference  appears  to  me  to  take  the  de- 
fendant's structure  out  of  the  scope  of  the  plaintiff's  patent. 
But,  if  the  defendant's  rafter  be  held  to  be  similar  in  con- 
struction to  the  rafter  described  in  the  claim  under  considera- 
tion, then  the  claim  must,  in  my  opinion,  be  held  void,  for 
the  reason  that  a  rafter  similar  to  the  defendant's,  in  the 
features  under  consideration,  is  described  in  Bunnett's  Eng- 
lish patent  of  1856. 

The  subject-matter  of  the  6th  claim  of  this  re-issue  is  not 
found  in  the  structures  claimed  to  be  infringing  structures.  In 


APRIL,  1882.  491 


Hayes  v.  Setoo. 


those  stractnres  there  is  bat  one  set  of  openings,  and  those 
from  the  gutter  directly  to  the  outside. 

The  next  patent  set  forth  in  the  bill  is  re-issue  Ko.  8,688, 
dated  April  29th,  1879.  Claims  1,  2,  3  and  5  are  alleged  to 
have  been  infringed.  The  subject-matter  of  the  1st  claim  of 
this  re-issue  differs  from  anything  described  in  the  original, 
Ko.  112,594,  dated  March  14th,  1871,  in  that  one  essential 
feature  of  the  structure  claimed  in  the  re-issue  is  that  it  is 
^'  formed  of  one  piece  of  folded  sheet  metal,"  and  another  es- 
sential feature  is  that  the  rafter  has  an  ''  upward  vertical  ex- 
tension forming  a  ridge."  The  rafter  described  in  the  original 
is  there  expressly  stated  to  be  formed  of  two  sheets  of  metal, 
and  the  specification  nowhere  alludes  to  any  '^  upward  verti- 
cal extension."  These  differences  have  been  insisted  upon  by 
the  counsel  for  the  plaintiff  as  being  important.  Moreover, 
from  this  first  claim  of  the  re-issae  is  omitted  the  under  cap, 
which  in  the  original  is  made  an  essential  feature.  These 
alterations  and  additions  introduced  into  the  re-issue,  in  my 
opinion,  effect  an  alteration  in  the  invention,  and  render  the 
claim  void,  because  for  a  different  invention  from  that  claimed 
in  the  original. 

The  2d  claim  of  this  re-issue  is  for  *'  the  hollow  metallic 
bar  or  rafter,  constructed  substantially  of  plates,  a  and  o,  bent 
to  support  or  connect  each  other,  and  to  form  gutters,  J,  J, 
arranged  in  juxtaposition  to  each  other,  and  under  cover  of 
the  base  or  bases  which  support  the  glass,  as  herein  set 
forth."  In  this  claim,  as  in  the  original  patent,  mention  is 
made  of  one  feature  of  the  invention,  namely,  that  the  gut- 
ters, 6,  i,  are  under  cover  of  the  bases  that  support  the  glass, 
so  that  the  gutters  offer  little  or  no  obstruction  to  the  light 
passing  through  the  glass.  This  appears  to  be  the  distinctive 
feature  of  the  rafter  sought  to  be  secured  by  this  claim.  But, 
no  such  feature  appears  in  the  devices  shown  in  Exhibit  Ko. 
11,  opposite  the  marginal  numbers  23  and  24,  which  are  de- 
scribed as  the  infringing  devices  of  the  defendant.  I  am 
unable,  therefore,  upon  the  testimony,  to  find  that  this  claim 
has  been  infringed,  unless  it  be  held  that  the  construction  of 


492  EASTERN  DISTRICT  OF  NEW  YORK, 

Hayes  v.  SetoD. 

the  gutters  so  as  to  keep  them  under  cover  of  the  bases  is 
not  an  essential  feature  of  the  invention.  But,  if  it  be  so  held, 
then  I  must  hold  the  claim  void  for  want  of  novelty ;  for,  the 
invention  described  in  this  claim,  so  understood,  appears  in 
the  patent  issued  to  Edward  Duisch,  August  26th,  1848,  set 
up  in  the  answer  and  duly  proved. 

The  3d  claim  of  re-issne  No.  8,688,  covers  a  clip,  H,  con- 
structed of  sheet  metal,  bent  to  form  a  groove.  A,  and  a  rabbet 
iy  as  set  forth.  The  clip  here  described  differs  from  the 
dip  in  the  origiual  patent  in  this,  that  a  gutter,  k,  is  in  the 
original,  (see  specification,  in  2d  claim,)  made  an  essential  part 
of  the  invention.  In  the  specification  of  the  re-issne,  and 
also  in  the  3d  claim  of  the  re-issue,  the  gutter  is  made  optional. 
The  effect  of  this  change  is  to  expand  the  patent  and  bring 
within  its  scope  a  form  of  dip  not  described  in  the  original. 
The  daim  must,  for  this  reason,  be  held  void. 

The  5th  claim  of  this  re-issue  comes  within  the  rule  laid 
down  in  Miller  v.  Brass  Co,y  already  referred  to,  and  must 
be  held  void  upon  the  authority  of  that  case. 

The  5th  and  last  patent  set  up  in  the  bill  is  re-issue  No. 
8,689,  dated  April  29th,  1879.  The  3d  claim  of  this  re-issue 
is  the  only  claim  here  in  question.  This  claim  is  for  '^  the 
swinging  sashes,  C,  provided  with  exterior  and  overlapping 
elastic  flanges, y,  essentially  as  described."  No  infringement 
of  this  claim  appears  in  the  complainant's  exhibit  ^'  Model  of 
infringing  sky-light,  August  17th,  1881."  The  defendant's 
swinging  sash  has  only  a  single  flange,  forming  an  ordinary 
joint,  without  any  exterior  and  overlapping  elastic  flange, 
such  as  is  described  in  the  patent. 

Upon  these  grounds  the  bill  is  dismissed,  and  with  costs. 

J.  n.  Whitelegge,  for  the  plaintiff. 

G,  G.  Frelinghuysen^  for  the  defendant. 


MAY,   1882.  493 


Armstrong  «.  The  Mntaal  Life  Insurance  Company  of  N.  T. 


JtnjA  Arhstbong,  as  Administbatbix,  &0. 

vs. 
The  Mutual  Life  Ikbubanoe  Company,  of  New  Tobk. 

By  a  policy  of  insurance,  issued  on  an  application  signed  by  A.,  a  life  insur- 
ance company  promised  to  pay  "to  A.,  his  assigns,"  on  a  ftitnre  day  named, 
$10,000,  "  or,  if  he  should  die  before  that  time,  then  to  make  said  payment 
to  his  legal  representatiyes."  If  any  claim  be  made  under  an  assignment^ 
proof  of  interest  to  the  extent  of  the  claim  will  be  required."  A.  executed 
an  assignment  of  the  policy  to  H.,  and  left  it  with  the  company,  and  both 
were  deliyered  by  the  company  to  H.  A.,  before  the  time  named,  died,  by 
the  hands  of  H.  The  administrator  of  A.  sued  the  company  to  recover  the 
$10,000.  On  the  trial,  it  appeared  that  H.  planned  the  death  of  A.  before 
the  insurance,  induced  him  to  effect  it  and  make  the  assignment,  paid  the  first 
and  only  premium  that  was  paid,  and  took  his  life  for  the  purpose  of  obtain- 
ing the  money  on  the  policy.  There  was  no  eridence  of  any  interest  of  H. 
in  the  life  of  A.  No  fraud  in  A.  was  alleged.  The  defendant  requested  tha 
Court  to  instruct  the  jury,  that^  if  the  company  made  no  contract  with  A.,  or 
if  the  real  contract  was  with  H.,  or  if  the  policy  was  made  and  issued  for  the 
benefit  of  H.,  the  plaintiff  could  not  recover.  Those  instructions  were  not 
^ven  and  no  questions  were  submitted  to  the  jury  on  those  aspects  of  the 
case :    Meld,  no  error. 

The  branch  of  the  contract  which  ran  to  H.  and  his  assigns  was  assignable,  and 
the  other  branch  was  not  The  general  assignment  to  H.  carried  only  the 
assignable  branch,  and  only  such  interest  in  the  life  of  A.  as  could  be  proved. 

(Before  Wsbelxe,  J.,  Eastern  District  of  New  York,  May  8th,  1882.) 

Wheeleb,  J.  This  is  an  action  of  assumpsit  upon  a  pol- 
icy of  insurance  issued  by  the  defendant  upon  the  life  of  John 
M.  Armstrong,  the  plaintiff's  intestate,  and  has  now,  after 
verdict  for  the  plaintiff  and  before  judgment,  been  heard  upon 
a  motion  of  the  defendant  for  a  new  trial,  in  review  of  qnes- 
tions  of  law. 

The  policy  was  issued  upon  an  application  signed  by  Arm- 
strong, and,  in  its'  operative  and  material  parts  in  question, 
ran :  "  The  Mutual  Life  Insurance  Compauy  of  New  York, 
*    *    in  consideration  of  the  application  for  this  policy  of 


494  EASTERN  DISTRICT  OF  NEW  YORK, 

ArmBtrong  «.  The  Mataal  Life  iDsnraDce  Company  of  N.  Y. 

insurance,    *    *    which    *    *    every  person  accepting,  or 
acquiring  any  interest  in,  this  contract,    *    *    warrants    * 

*  to  be  the  only  statement  upon  which  this  coDtract  is 
made,  and  *  *  of  the  payment  *  *  at  the  date  here- 
of *  *  and  of  the  payment  *  *  to  be  made  *  * 
daring  the  continuance  of  this  contract,  does  promise  to 
pay  to  John  M.  Armstrong,  of  Philadelphia,  Penna.,  his  as- 
signs, on  the  eighth  day  of  December,  in  the  year  1897,  the 
sum  of  ten  thousand  dollars,  *  *  at  the  office  of  the  com- 
pany in  the  city  of  New  York,  or,  if  he  should  die  before  that 
time,  then  to  make  said  payment  to  his  legal  representatiyes. 

*  *  If  any  statement  made  in  the  application  for  this 
policy  be  in  any  respect  untrue,  the  consideration  of  this  con- 
tract shall  be  deemed  to  have  failed,  and  the  company  shall  be 
without  liability  under  it.  *  *  The  contract  between  the 
parties  hereto  is  completely  set  forth  in  this  policy  and  the 
application  therefor,  taken  together.  *  *  If  any  claim  be 
imade  under  an  assignment,  proof  of  interest  to  the  extent  of 
the  claim  will  be  required."  Armstrong  executed  an  assign- 
ment of  the  policy  to  Benjamin  Hunter  and  left  it  with  the 
company,  and  both  were  delivered  by  the  company  to  Hun- 
ter. Armstrong  died  ;  and,  from  the  evidence  received,  and 
that  offered,  it  is  to  be  taken  that  he  died  by  the  hand  of 
Hunter,  who  planned  his  death  before  the  insurance,  indnoed 
him  to  effect  it  and  make  the  assignment,  paid  the  first  and 
only  premium  that  was  paid,  and  took  his  life  for  the  purpose 
of  obtaining  the  money  on  this  and  other  policies.  They 
were  not  related  in  any  way,  and  no  evidence  was  introduced 
or  offered  of  any  interest  in  fact  which  Hunter  had  in  the 
life  of  Armstrong.  The  second  defence  set  out  in  the  de- 
fendant's pleadings  allies  that  Hunter,  '^  being  or  pretending 
to  be  a  creditor  "  of  Armstrong,  did  so  and  so,  and  the  de- 
fendant offered  evidence  to  prove  the  facts  set  forth  in  that 
defence,  without  offering  to  prove  that  he  was  a  creditor  any 
more  than  that  he  pretended  to  be ;  and  this  was  not  under- 
stood to  be,  and  is  not  now  understood  to  have  been,  any  offer 
to  prove  any  fact  of  indebtedness  or  other  interest.    The  de- 


MAT,  1882.  495 


Armstroiig  v.  The  Mutual  Life  Insarance  Company  of  N.  Y. 

fendant  requested  the  Court  to  instruct  the  jury,  that,  if  the 
company  made  no  contract  with  Armstrong,  or,  if  the  real 
contract  was  between  the  company  and  Hunter,  or,  if  the 
policy  was  in  fact  made  and  issued  for  the  benefit  of  Hunter, 
the  plaintiff  could  not  recover.  These  instructions  were  not 
given,  and  no  question  was  submitted  to  the  jury  upon  those 
aspects  of  the  case.  The  principal  questions  are,  whether  the 
facts  stated  would  defeat  the  plaintiff's  recovery,  and  whether 
these  instructions  ought  to  have  been  given. 

There  is  no  evidence  in  the  case  of  any  intent  to  defraud 
or  want  of  good  faith  on  the  part  of  Armstrong,  and  none 
was  offered  to  be  shown,  nor  any  claim  made  that  there  was 
such.  The  misconduct  and  criminality  relied  upon  for  defence 
were  wholly  on  the  part  of  Hunter,  and  Armstrong  was  only 
his  victim. 

The  first  two  of  these  instructions  could  not  be  given 
without  submitting  to  the  jury  questions  of  contradiction,  or 
variation,  of  the  policy,  which  would  be  a  subversion  of  one 
of  the  most  important  principles  of  the  law  of  evidence  re- 
lating to  the  effect  of  written  contracts,  that  parol  proof  is 
not  admissible  to  alter,  contradict,  enlarge,  or  vary  them ; 
and  not  only  would  violate  the  ordinary  presumption  of  law, 
that  the  stipulations  of  the  parties  are  written  down  in  such 
contracts  as  finally  settled  upon  and  intended,  but  also  the 
express  provision  of  this  contract,  that  the  whole  contract 
and  its  inducing  statements  are  contained  in  itself.  The  other 
request  would  submit  the  effect  of  the  contract  and  assign- 
ment to  the  jury,  when  such  construction,  when  the  facts  to 
which  the  instruments  apply  are  ascertained,  is  always  for  the 
Court.  The  whole  of  this  part  of  the  case  must  depend  upon 
the  true  legal  effect  of  these  contracts. 

The  defendant  promised  Armstrong  to  pay  his  legal  rep- 
resentatives ten  thousand  dollars,  if  he  should  die  before  De. 
cember  8th,  1897.  He  did  die  before  that  day.  The  term  rep- 
resentatives, or  legal  representatives,  which  is  the  same  thing, 
for,  none  but  legal  would  be  intended,  indicated  the  adminis- 
trators.   ( Wason  V.  Cdburn,  99  M(MS.y  342.)     The  plaintiff 


496  EASTERN  DISTRICT   OF  NEW  TORE, 


ArmBiroDg  «.  The  Mntwd  Life  Insimnoe  Company  of  N.  T. 


is  the  administrator  in  Pennsylvania,  the  place  of  the  domicil, 
and  in  Kew  York  the  place  of  the  contract,  although  some 
question  was  made  about  the  effect  of  the  letters  in  the  latter 
place.  She  has  brought  this  suit  upon  this  contract,  and  upon 
these  facts  is  entitled  to  recover,  unless  something  further  is 
shown  to  defeat  it.  If  Armstrong  parted  with  this  contract 
to  Hnnter,  so  that  his  life  was  insured  to  Hunter,  and  to 
Hunter  only,  from  the  issuing  of  the  policy  to  the  day  named, 
it  is  plain  that  no  one  could  recover  for  this  death.  Not  Hun- 
ter, for  he  criminally  caused  the  death,  and  could  become  en- 
titled to  nothing  by  his  crime.  Not  the  admiuistratriz,  for 
she  would  have  nothing  to  recover  upon,  and  could  acquire 
nothing  from  Hunter,  for  he  could  confer  no  greater  right 
than  he  had.  The  contract  was  with  Armstrong,  and  ran  to 
his  representative  who  would  be  included  in  him,  so  it  was, 
donbtless,  at  his  disposal  So,  the  question  is,  whether  he 
did  dispose  of  it  to  Hunter.  The  payment  of  the  premium 
by  Hunter  wonld  not  make  the  insurance  his.  {Tristan  v. 
Sardey,  14  Beav.y  232 ;  JSina  Life  Ins.  Co,  v.  Fnmce^  94 
V.  S.y  561.)  The  question  must  turn  upon  the  construction 
of  the  written  instruments.  Ohoses  in  action  were  not  assign- 
able at  common  law,  although  for  a  valuable  consideration 
paid  they  were  assignable  in  equity.  {Bouv.  Bac,  Abr.^  As- 
signmentf  -O,  and  Obligation,  A  /  Winchester  v.  Eackley^  2 
Cranch^  342.)  There  is,  however,  no  cause  of  action  accrued 
npon  a  policy  of  life  insurance  nntil  the  death  insured  against 
happens.  Still,  there  is  no  question  but  that  the  accruing 
right  may,  with  the  consent  of  the  insurer,  be  transferred,  so 
that,  when  it  does  accrue,  it  will  accrue  to  the  assignee,  and 
become  a  right  of  action  in  his  favor.  Nor  but  that  before  it 
accrues  it  may  be  so  assigned  ap  to  make  the  assignee  an  ap- 
pointee to  receive  the  funds.  {Page  v.  Burnstine^  102  U. 
S.J  664.)  Nor  but  that  after  it  has  accrued  it  may  be  assigned 
in  equity,  like  other  rights  of  action  not  made  negotiable  in 
terms.  These  limitations  do  not  apply  to  contracts  made  ne- 
gotiable in  terms,  like  not^s  or  bonds  payable  to  the  bearer  or 
to  the  order  of  a  payee  named.    These  policies  commonly  run 


MAY,  1882.  49T 


Annstrond^  v.  The  Mutual  Life  Ixumrance  Company  of  N.  Y. 

,  -  -  -  

to  some  person  and  his  or  her  executors,  administrators  and 
assigns.    There  are  many  cases  in  which  they  have  been  held 
to  be  assignable,  bnt  stress  is  laid  npon  that  form.    In  JTew 
York  Life  Ins.  Co.  v.  Flacky  (3  Md.^  341,  1  Bigdow  Ins. 
Cas.y  146,)  Le  Grand,  Ch.  J.,  laid  stress  npon  the  word  '^  as- 
signs."   In  Pomeroy  v.  Mcmhattan  Zife  Ins.  Co.j  (40  Ill.y 
898,)  Walker,  Ch.  J.,  said  :  "  The  policy  declares  in  terms 
that  it  is  assignable.    It  provides  for  the  payment  of  the 
money  to  the  assured  or  to  her  assigns.    So  far  then  from 
such  an  instrument  being  prohibited,  it  is  authorized  by  the 
terms  of  the  policy."  In  Mvtual  Protection  Ins.  Co.  v.  Hanir 
ilton^  (5  Sneedy  269,)  McKinney,  J.,  said:  "By  the  terms  of 
the  policy  the  contract  is  with  the  assured,  his  personal  repre- 
sentatives and  assigns,  and  the  promise,  in  fact,  and  in  law,  is 
to  pay  the  money  to  the  personal  representative  or  assignee, 
as  tlie  case  may  be."       And,  in  Emerick  v.   CoaJdeyy  (85 
Md.j  188,)  Grason,  J.,  said:  "So  far  from  an  assignment 
being  prohibited  by  the  terms  of   this  policy,  the  amount 
of  the  insurance  is  made  payable  to  her  and  her  assigns." 
In  Koshkonong  v.  Burtony  (104  U.  5.,  668,)  the  expression 
of  opinion,  whether  the  phrases,  payable  to  the  order  of 
some  person,  or  payable  to  some  person,  or  his  order,  would, 
in  a  statute,  include  a  contract  payable  to  a  railroad  company 
or  its  assigns,  was  expressly  waived,  in  the  opinion  of  the 
Court,  by  Mr.  Justice  Harlan.      A  general  assignment  of 
all  insurance  policies,  where   the  assignor  has  some  which 
are  assignable  and  some  not,  will  not  carry  those  not  as- 
signable, nor  Euch  as  would  be  made  void  by  assignment. 
{Lazarus  v.  Commonwealth  Ins.  Co.y  19  Pick.y  81.)    This  as- 
signment is  to  be  looked  at  in  the  light  of  these  principles. 
One  branch  of  the  contract  ran  to  Armstrong  and  his  assigns, 
the  other  to  his  representatives ;  ore  was,  by  its  terms,  assign- 
able and  the  other  not ;  and  by  general  words  he  assigned. 
The  two  expressions  stand  side  by  side  in  the  instrument,  so 
that  their  difference  is  apparent.    According  to  these  princi- 
ples, it  would  seem  to  follow,  that  the  assignment  was  in- 
tended to  carry  the  branch  made  to  be  carried,  and  not  the 
Vol,  XX.— 83 


498  NORTHERN  DISTRICT  OF  NEW  YORK, 

Perry  v.  The  Co-operatire  Fonodry  Gomptoy. 

branch  not  so  made ;  that  the  general  words  of  the  assignment 
are  restrained  by  the  particular  words  creating  the  subject  of 
the  assignment.  The  assignment  conld  not  rise  higher  than 
the  instmment  assigned.  And,  further,  the  instrument  itself 
limits  the  rights  to  be  passed  to  assignees.  Such  right  could 
not  extend  beyond  an  interest  in  the  life  of  the  assured  which 
could  be  proved.  If  the  interest  was  that  of  a  creditor,  it 
would  be  limited  by  the  amount  of  his  proyable  debt. 
{Cwmmack  ▼.  Lewis,  15  WaU.,  648;  Thatch  v.  Metropole 
Ins.  Co,,  11  Fed.  Rep.,  29.)  As  no  debt  is  shown  no  inter- 
est is  shown,  and  nothing  is  shown  to  have  passed  to  the  as- 
signee. What  did  not  pass  to  the  assignee  was  left  in  Arm- 
strong, and  accrued  to  his  representatiye,  the  plaintiff.  As 
Armstrong  was  innocent,  no  right  of  his,  or  of  those  claim- 
ing through  him,  would  be  cut  off  by  the  wickedness  of 
Hunter. 

Other  questions  were  saved  by  exceptions  taken  at  the 
trial  and  allowed,  but  they  have  not  been  argued  or  relied 
upon  in  this  hearing. 

The  motion  is  overruled,  judgment  is  ordered  upon  the 
verdict,  and  the  stay  of  proceedings  is  vacated. 

Herbert  T.  Ketohmn,  for  the  plaintiff. 

Joseph  H.  Choate  and  PrescoU  Hall  BuUer,  for  the 
defendant. 


John  S.  Pebry  and  Grange  Sard,  Jr.,  as  Trustees,  &o. 

vs. 

The  Co-operative  Fottndry  Company  and  others. 

In  Equtty. 

Claim  8  of  re-issued  letters  patent  No.  6,709,  granted  to  Perry  A  Co.,  October 
19th,  1876,  for  an  "  improyement  in  coal  stoves,"  the  original  patent,  No. 
60,078,  haying  been  granted  to  Zebnlon  Hant,  as  inyentor,  September  19th, 


MAY,   1882.  499 


Perry  v.  The  Co-operaUve  Foundry  Company. 


1865,  namely,  "8.  The  adjoining  fines,  D  and  D',  sitoated  at  the  rear  of  the 
stove,  and  having  walls  bnilt  on  the  casing  of  the  same,  in  oombination  with 
the  illominating  doors  or  windows  in  the  draft-chamber  base-section,"  does 
not  claim  a  patentable  combination,  because  the  flues  operate  in  the  same 
manner  whether  there  are  illnminating  windows  in  the  place  designated  or 
not,  and  the  operation  of  such  windows  is  the  same  whether  the  fines  are  ar- 
ranged as  described  or  not. 

Claim  4  of  re-issued  letters  patent  No.  5,894,  granted  to  John  S.  Perry,  June 
2d,  1874,  for  an  "  improvement  in  stoves,"  the  original  patent.  No.  67,288, 
having  been  granted  to  Charles  H.  Frost,  as  inventor,  July  80th,  1867,  namely, 
"4,  A  grate  or  fire-bed  with  its  central  and  outer  sections  made  separately, 
and  placed  in  a  plane  below  the  base  of  the  fire-pot  or  combustion-chamber 
proper,  within  the  draft-chamber  base-section,  and  isolated  from  the  walls 
of  the  same,  substantially  as  shown  and  described,"  does  not  claim  any  pat- 
entable invention,  there  being  no  invention  in  substitutiog,  in  the  ^ven  com- 
bination, an  old  grate  made  in  two  parts  for  another  old  grate  made  in  one 
part,  preserving  the  same  relation  of  the  grate  to  the  fire-pot  and  to  the  ash- 
pit walls,  when  no  destructive  effect  in  the  combination  results  from  the  sub- 
stitution. 

Claim  11  of  said  patent,  namely,  "  11.  The  oombination  of  mica  or  other  trans- 
parent windows  in  the  walls  of  the  draft-chamber  base-section,  a  grate  or 
fire-bed  placed  in  a  plane  below  the  base  of  the  fire-pot  or  combustion-cham- 
ber proper,  the  free  open  space  formed  between  the  same,  and  the  said  grate 
or  fire-bed  isolated  from  the  walls  of  the  said  draft-chamber  base-section, 
substantially  as  shown  and  described,"  does  not  claim  any  patentable  inven- 
tion, because  a  window  in  an  ash-pit  cannot  modify  or  affect  the  action  or  op- 
eration of  the  grate  or  of  the  aoti-clinker  apace,  or  the  isolation  of  the  grate, 
nor  is  the  operation  or  use  of  the  windows  affected  or  modified  by  the  exist- 
ence or  non-existence  of  any  of  those  features. 

Claim  4  of  re-issued  letters  patent  No.  6,206,  Division  A,  for  an  **  improvement 
in  base-burning  stoves,"  granted  to  James  Spear,  January  6th,  1876,  the  orig- 
inal patent.  No.  100,886,  having  been  granted  to  said  Spear,  as  inventor, 
March  1st,  1870,  and  re-issued  to  him  in  two  divisions,  Nos.  6,469  and  5,460, 
June  17th,  1878,  and  again  re-issued  in  two  dividons,  January  6th,  1875,  No. 
6,206,  Division  A,  and  No.  6,207,  Division  B,  namely,  "  4.  The  combination 
of  a  fire-chamber  having  its  dinker-discharge  end  E  grated  or  illnminating 
and  projecting  downward  within  the  air-chamber  S,  a  g^ate  surface  or  fire- 
bed  projecting  beyond  the  inside  diameter  of  the  slate  and  dinker-discharge 
end  of  the  fire-chamber,  and  the  clinker-clearing  opening  B,  substantially  as 
herein  described,"  does  not  claim  a  patentable  invention,  because  it  was  only 
the  substitution,  in  an  existing  combination,  for  a  fire-chamber  with  its 
dinker-discharge  end  non-grated,  of  an  existing  fire-chamber  with  a  grated 
dinker-discharge  end,  the  substitution  working  no  change  in  the  operation 
of  the  parts. 

Claims  6,  7  and  8  of  said  patent,  namely,  "  6.  The  combination  of  the  vertical 
dioker-cleaning  opening  B,  and  mica  lights  cP,  indoors  opposite  the  openings 


600  NORTHERN  DISTRICT  OF  NEW  YORK, 

Perry  r.  The  Co-q[)emtiYe  Foundry  Gompany. 

BubetantiAUy  m  described"  "  1.  The  corobimition  of  the  yertieal  eUnker- 
cleaniog  opening  R,  mica  lights  d*,  and  cUnker-deaning  doors  C,  opposite  the 
opening,  snbstantially  as  herein  described."  "  8.  The  oonbinatioii  of  afire- 
chamber,  the  clinker-cleaning  opening  R,  between  the  fire-chamber  and  grate 
surface,  clinker-cleaning  doors  C,  opposite  the  said  opening,  and  mica  lights 
if',  opposite  the  illuminating  section  E,  of  the  fir»«hamber,  substantially  as 
described,"  do  not  claim  patentable  combinations,  there  being  no  patentable 
combination  between  the  mica  lights  and  the  other  elements  in  those  claims. 

Claim  12  of  said  patent,  namely,  "  12.  The  combination  of  a  fire-chamber,  hay- 
ing its  slate  and  dinker-discharge  end  contracted  and  projectbg  downward, 
a  grate-ring,  K,  and  a  clinker-cleaning  opening,  R,  above  the  ring,  substan- 
tially as  herein  described,"  does  not  claim  any  patentable  invention,  there 
being  no  relation  or  co-action  between  the  lower  end  of  the  fire-pot  and  the 
laterally  projectlDg  grate  and  the  space  outside  of  the  grate,  which  did  not 
exist  between  the  lower  ends  of  prior  uncontracted  fire-pots  and  the  project- 
ing grates  and  the  outside  spaces  in  prior  structures. 

Claim  2  of  letters  patent  No.  188,646,  for  an  "improyement  in  heating  stoyes," 
granted  to  Andrew  Dickey  and  John  S.  Perry,  as  inventors,  October  24th, 
1876,  namely,  "  2.  The  oombination  of  ascending  and  descending  flues  placed 
IB  the  rear  of  a  stove,  a  free  open  space  between  the  top  of  the  grate  and  the 
lower  end  of  the  fire-pot,  suffidently  large  to  permit  the  removal  of  clinkers 
and  other  obstructioos,  illuminating  windows  opposite  said  space,  and  a  grate 
or  fire-bed  having  an  open  space  between  it  and  the  walls  of  the  stove,  to  ad- 
mit of  clinkers  and  other  obstructions  being  dropped  between  the  grate  and 
said  walls  of  the  stove,  into  the  ash-pit,  substantially  as  described,"  does  not 
daim  a  patentable  combination,  but  only  an  aggregation  of  prior  revertible 
fines  with  other  features  before  existing  in  unison  in  the  same  stove,  those 
features  operating  together  in  the  same  way  whether  with  or  without  revertible 
fiues. 

(Before  Blatchtobd,  J.,  Northern  District  of  New  York,  May  8th,  1882.) 

Blatohford,  J.  This  salt  is  brought  on  four  patents : 
(1.)  Re-issued  letters  patent,  No.  6,709,  granted  to  Perry  & 
Co.,  October  19th,  1875,  for  an  "  improvement  in  coal  stoves," 
the  original  patent.  No.  50,073,  having  been  granted  to 
Zebulon  Hunt,  as  inventor,  September  19th,  1865 ;  (2.)  re- 
issued letters  patent,  No.  5,894,  granted  to  John  S.  Perry, 
June  2d,  1874,  for  an  'improvement  in  stoves,"  the  original 
patent.  No.  67,283,  having  been  granted  to  Charles  H.  Frost, 
as  inventor,  July  30th,  1867;  (3.)  re-issued  letters  patent, 
No.  6,206,  Division  A,  for  an  "  improvement  in  base-burning 
"  granted  to  James  Spear,  January  5th,  1875,  the  orig- 


MAY,   1882..  601 

Perry  v.  The  CkMyperatiye  Foundry  Company. 


inal  patent,  No.  100,385,  having  been  granted  to  said  Spear, 
as  inventor,  March  Ist,  1870,  and  re-issned  to  him  in  two 
divisions,  Nob.  5,459  and  5,460,  June  17th,  1873,  and  again 
re-issued  in  two  divisions,  January  6th,  1875,  No.  6,206, 
Division  A,  and  No.  6,207,  Division  B ;  (4.)  letters  patent, 
No.  183,645,  for  an  "improvement  in  heating  stoves," 
granted  to  Andrew  Dickey  and  John  S.  Perry,  as  inventors, 
October  24th,  1876. 

(1.)  As  to  the  Hunt  patent.  The  only  claim  alleged  to 
have  been  infringed  by  the  defendants  is  claim  3.  That  claim 
is  this :  "  The  adjoining  flues  D  and  D',  situated  at  the  rear 
of  the  stove,  and  having  walls  built  on  the  casing  of  the 
same,  in  combination  with  the  illuminating  doors  or  windows 
in  the  draft-chamber  basensection."  It  is  clear  that  this  is 
not  a  patentable  combination.  The  flues  operate  in  the  same 
manner  whether  there  are  illuminating  windows  in  the  place 
designated  or  not ;  and  the  operation  of  such  windows  is  the 
same  whether  the  flues  are  arranged  as  described  or  not.  The 
case  is  within  the  principle  decided  in  SaUes  v.  Van  Wot- 
mer,  (20  WaU.,  353,  368,)  Beckendcnfer  v.  Fdber,  (92  U.  8.^ 
347,  867,)  and  Pickering  v.  McGuO/mgh,  (104  JJ.  S.,  810.) 

(2.)  As  to  the  Frost  patent.  The  original  patent  con- 
tained only  one  claim,  as  follows :  "  So  arranging  the  cylinder 
a,  and  the  direct  and  indirect  draft  openings  and  passages, 
that  the  said  cylinder  becomes  an  ascending  channel  for 
the  escape  of  the  products  of  combustion  when  the  draft  is 
direct,  and  a  descending  channel  for  the  supply  of  air  to  the 
fire  when  the  draft  is  indirect,  substantially  as  set  forth." 
The  re-issue  has  16  claims.  A  disclaimer  of  claims  2,  3,  and 
9  of  the  re-issue  has  been  filed.  Infringement  is  alleged  of 
claims  4  and  11,  which  are  as  follows :  "  4.  A  grate  or  fire-bed 
with  its  central  and  outer  sections  made  separately,  and 
placed  in  a  plane  below  the  base  of  the  fire-pot  or  combus- 
tion-chamber proper,  within  the  draft-chamber  base  section, 
and  isolated  from  the  walls  of  the  same,  substantially  as 
shown  and  described.''  ^'  11.  The  combination  of  mica  or 
other  transparent  windows  in  the  walls  of  the  draft-chamber 


602  NORTHERN  DISTRICT  OF  NEW  YORK, 

Perry  v.  The  Co-operatiye  Fonodry  Company. 

base^section,  a  grate  or  fire-bed  placed  in  a  plane  below  the 
base  of  the  fire-pot  or  combustion-chamber  proper,  the  free 
open  space  formed  between  the  same,  and  the  said  grate  or 
fire-bed  isolated  from  the  walls  of  the  said  draft-chamber 
base-section,  substantially  as  shown  and  described.''  It  is 
shown  that  prior  to  Frost's  invention  fire  grates  with  their 
central  and  outer  sections  made  separatelj  existed;  and 
grates  made  in  one  part  existed ;  and  grates  not  touching  the 
walls  of  the  chamber  in  which  they  were  placed  existed ;  and 
grates  arranged  with  relation  to  the  fire-pot  so  as  to  leave  an 
anti-clinker  opening  above  the  grate  and  below  the  base  of 
the  fire-pot  existed ;  and  grates  of  larger  area  than  that  of 
the  base  of  the  fire-pot  existed ;  and  illuminating  windows  in 
various  parts  of  the  walls  of  a  stove  existed.  Claim  2,  so 
disclaimed,  covered  the  same  combination  as  claim  4,  omitting 
the  feature  of  the  separation  of  the  central  and  outer  sections 
of  the  grate.  There  was  no  invention  in  substitutiug,  in  the 
given  combination,  an  old  grate  made  in  two  parts  for  another 
old  grate  made  in  one  part,  preserving  the  same  relation  of 
the  grate  to  the  fire-pot  and  to  the  ash-pit  walls,  when  no 
distinctive  effect  in  the  combination  resulted  from  the  sub- 
stitution. That  is  this  case,  as  to  claim  4.  As  to  claim  11,  it 
is  for  the  combination  of  transparent  windows  in  the  walls  of 
the  ash-pit  with  the  disclaimed  arrangement  in  claim  2.  A 
window  in  an  ash-pit  cannot  modify  or  afiBCt  the  action  or 
operation  of  the  grate  or  of  the  anti-dinker  space  or  the 
isolation  of  the  grate,  nor  is  the  operation  or  use  of  the 
windows  affected  or  modified  by  the  existence  or  non-exist- 
ence of  any  of  those  features.  There  was  no  invention  in 
claim  11. 

(8.)  As  to  the  Spear  patent.  The  claims  alleged  to  have 
been  infringed  are  claims  4,  6, 7,  8  and  12,  which  are  as  follows : 
^^4.  The  combination  of  a  fire-chamber  having  its  clinker- 
discharge  end  E  grated  or  illuminating  and  projecting  down- 
ward within  the  air-chamber  S,  a  grate-surface  or  fire-bed 
projecting  beyond  the  inside  diameter  of  the  slate  and  clinker- 
discharge  end  of  the  fire-chamber,  and  the  dinker-deaning 


MAY,  1882.  603 

Perry  v.  The  Co-operative  Foundry  Company. 

opening  B,  sabstantiallj  as  herein  deficribed.''  ^^  6.  The  com- 
bination of  the  yertical  clinker-cleaning  opening  E,  and 
mica  lights  cP^  in  doors  opposite  the  opening,  snbstantiallj  as 
herein  described."  ^^7.  The  combination  of  the  vertical 
dinker-deaning  opening  B,  mica  lights  d^j  and  clinker-clean- 
ing doors  C,  opposite  the  opening,  substantiallj  as  herein 
described."  ^^8.  The  combination  of  a  fire-chamber,  the 
dinker-deaning  opening  B,  between  the  fire-chamber  and 
grate-surface,  dinker-deaning  door  C,  opposite  the  said 
opening,  and  mica  lights  d^,  opposite  the  illnminating  section 
£,  of  the  fij*e-chamber,  substantially  as  described."  ^^  12.  The 
combination  of  a  fire-chamber  having  its  slate  and  dinker- 
discharge  end  contracted  and  projecting  downward,  a  grate- 
ring  K,  and  a  dinker-deaning  opening  B,  above  the  ring, 
substantially  as  herein  described." 

There  existed  in  prior  structures  a  fire-chamber  having  its 
clinker-discharge  end  grated  or  illuminating  and  projecting 
downward  into  an  air-chamber;  a  grate-Burface  or  fire-bed 
projecting  beyond  the  inside  diameter  of  the  clinker-discharge 
end  of  the  fire-chamber;  and  a  dinker-deaning  opening 
between  the  grate-surface  and  the  fire-chamber  above  it. 
There  also  existed  before,  in  combination,  a  fire-chamber  with 
its  non-grated  clinker-discharge  end  projecting  downward 
into  an  air-chamber,  a  grate-surface  or  fire-bed  projecting 
beyond  the  inside  diameter  of  the  dinker4ischarge  end  of 
the  fire-chamber,  and  a  clinker-cleaning  opening  between  the 
grate-surface  and  the  fire-chamber  above  it.  It  was  no 
invention  to  substitute  in  such  combination,  for  a  fire-cham- 
ber with  its  clinker-discharge  end  non-grated,  a  fire-chamber 
with  a  grated  clinker-discharge  end.  The  substitution  worked 
no  change  in  the  operation  of  the  laterally  projecting  grate- 
surface  end  of  the  dinker-deaning  opening  in  unison  with  a 
fire-chamber  having  its  clinker-discharge  end  projecting  down- 
ward into  the  air-chamber.     This  makes  claim  4  invalid. 

As  to  claims  6,  7  and  8,  there  is  no  patentable  combination 
between  the  mica  lights  and  the  other  elements  in  those 
several  claims. 


504  NORTHERN  DISTRICT  OF  NEW  YORK, 

Perry  v.  The  Co-opentiTe  Foondry  Compeny. 

ClAim  12  remains  to  be  considered.  The  dinker-deaning 
opening  is  made  by  having  a  grate-ring  and  a  space  above  it 
between  it  and  the  lower  end  of  the  fire-pot.  The  main  idea 
embodied  in  the  claim  is  the  inward  contraction  of  the  lower 
end  of  the  fire-pot.  The  specification  says  that  the  inventor, 
instead  of  making  the  lower  section  of  the  fire-chamber  cy- 
lindrical, makes  its  dinker-dischai^  end  smaller  in  diameter 
than  the  fire-pot  above,  so  that  he  can  nse  a  broad  laterally 
projecting  grate-snrface  without  enlarging  the  aiivchamber 
below  into  which  snch  clinker-discharge  end  projects  down- 
wardly, to  the  extent  that  would  be  necessary  were  the  fire- 
pot  of  the  same  diameter  throughout.  The  proof  show 
several  prior  instances  of  fire-pots  with  their  clinker-disdiarge 
ends  contracted  and  projecting  downwardly,  and  provided 
with  fire-beds  or  grates  of  less  area  than  would  have  been 

,  necessary  if  the  area  of  the  base  of  the  fire-pot  had  been 
equal  to  its  area  above ;  and  of  grates  larger  in  area  than  the 
fire-chamber  above,  with  a  clinker-deaning  opening  between 
the  grate  and  such  fire-chamber.  Contracting  the  fire-pot 
necessarily  allows  the  grate  to  be  contracted  and  makes  more 
space  than  there  otherwise  would  be  between  the  outer  cir- 
cumference of  the  grate  and  the  wall  of  the  chamber.  There 
is  no  relation  or  co-action  between  the  contracted  lower  end 
of  Spear's  fire-pot  and  the  laterally  projecting  grate  and  the 
space  outside  of  the  grate,  which  did  not  exist  between  the 
lower  ends  of  the  uncontracted  fire-pots  and  the  projecting 
grates  and  the  outside  spaces,  in  prior  strnctures.  In  view  of 
all  this  there  was  no  patentable  invention  in  the  idea  that 
contracting  the  lower  end  of  the  fire-pot,  with  the  consequent 
lessening  of  the  area  of  the  grate,  would  enlarge  the  outside 
space. 

(4.)  As  to  the  Dickey  and  Perry  patent.  The  only  claim 
alleged  to  have  been  infringed  is*  claim  2,  which  is  as  follows : 
^^  The  combination  of  ascending  and  descending  flues  placed 
in  the  rear  of  a  stove,  a  free  open  space  between  the  top  of 

'  the  grate  and  the  lower  end  of  the  fire-pot,  sufficiently  large 
to  permit  the  removal  of  clinkers  and  other  obstrnctions^ 


MAY,  1882.  505 


Perry  v.  The  Co-operatiTe  Foundry  Ck>mpAny. 


illnminatiDg  windows  opposite  said  space,  and  a  grate  or  fire- 
bed  having  an  open  space  between  it  and  the  walls  of  the 
stove,  to  admit  of  clinkers  and  other  obstmctions  being 
dropped  between  the  grate  and  said  walls  of  the  stove  into 
the  ash-pit,  substantially  as  described."  This  claim  is  merely 
for  an  aggregation  of  prior  revertible  fines  with  the  other 
three  features  before  existing  in  unison  in  the  same  stove, 
namely,  an  anti-clinker  opening,  mica  windows  and  an  isolated 
grate,  and  does  not  contain  any  patentable  invention.  The 
last  named  three  features  operate  together  in  the  same  way 
in  a  stove  without  revertible  fines  and  in  a  stove  with  them, 
and  no  combined  patentable  result  is  due  to  the  union. 
The  bill  is  dismissed,  with  costs. 


SamMcl  A.  Duncan^  for  the  plaintiff. 
Theodore  Bacon^  for  the  defendants. 


John  S.  Fekby  and  Gsange  Sabd,  Jb.,  as  Tbustbks,  &o. 
Thb  Oo*oferativb  Foitndby  Company  and  othbbs.  In  Equtty. 

ClAima  1  and  4  of  re-iasaed  letters  patent  No.  9,247,  gnmted  to  John  S.  Perry 
and  Grange  Sard,  Jr.,  tmstees,  Jane  Stb,  1880,  for  an  "improyement  in 
Btoyes,"  the  original  patent,  No.  64,988i  haying  been  granted  to  John  R. 
Ifoore,  as  inyentor,  May  2  2d,  1866,  and  haying  been  re-iaaaed  as  No.  6,782, 
Noyember  9th,  1876,  namely,  "1.  The  combination  with  the  grate  or  fire-bed 
of  a  stoye,  of  a  downwardly-contracted  fire-pot,  the  two  being  so  arranged 
relatiyely  to  each  other  aa  to  leaye  an  opening  between  them,  substantially 
as  and  for  the  porpose  set  forth."  "  4.  The  combination,  in  a  stoye,  of  a 
downwardly-contracted  fire-pot  and  a  dumping-grate,  the  two  being  arranged 
relatiyely  to  each  other  so  as  to  leaye  an  opening  between  them,  substantially 
ae  and  for  the  purpose  set  forth,"  do  not  dum  patentable  inyentions,  there 
being  no  inyention  io  combining  an  old  downwardly-contracted  fire-pot  with 
an  old  anti-clinker  opening  and  dumping-grate. 

Claim  1  of  re-issued  letters  patent  No.  9,252,  granted  to  John  S.  Perry  and 


506  NORTHERN   DISTRICT  OF  NEW  YORK. 

Perry  «.  The  Ca>operatiTe  Foundrj  Compuiy. 

Grange  Sard,  Jr.,  tnuteea,  June  16th,  1880,  for  an  "improTement  in  stoTaa," 
the  original  patent,  No.  89,804,  haying  been  granted  to  Galyin  Folton,  ae  in- 
Tentor,  April  27th,  1869,  and  having  been  re-iasaed  ae  No.  6,907,  Jnne  9th, 
1874,  namely,  "  1.  A  stove  grate  so  oonetncted  and  arranged  relattrely  to 
the  fire-chamber  or  fdel-reoeptacle  as  to  leave  between  the  two  and  aroond 
the  edge  of  the  grate  a  free  open  qwoe,  and  to  permit  of  the  removal  of 
clinkers  and  other  refuse  through  such  space,  by  use  of  the  ordinary  poker  or 
slioer,  substantially  as  described,"  does  not  claim  a  patentable  invention,  all 
that  was  done  being  to  snbstitnte  an  eiisting  flat  grate  for  a  dished  grate,  in 
an  eristing  arrangement  of  a  diahedgrate  and  a  fire-poi  with  an  anti-dlnkir 
opening  between  them. 

(Before  BLATcmroBn,  J.,  Northern  District  of  New  York,  May  8th,  1881) 

Blatohfokd,  J.  This  Boit  is  brought  on  two  patents :  (1.) 
Be-issoed  letters  patent  !No.  9,247,  granted  to  John  8.  Ferry 
and  Grange  Sard,  Jr.,  trustees,  for  an  *^  improYement  in 
stoves,''  Jane  8th,  1880,  the  original  patent,  No.  54,938,  hav- 
ing been  granted  to  George  B.  Moore,  as  inventor.  May  22d, 
1866,  and  having  been  re-issued  as  No.  6,732,  November  9th, 
1875  ;  (2)  re-issued  letters  patent  No.  9,252,  granted  to  John 
S.  Ferry  and  Grange  Sard,  Jr.,  trustees,  Jnne  15th,  1880,  for 
an  ^'  improvement  in  stoves,"  the  original  patent,  No.  89,304, 
having  been  granted  to  Calvin  Fulton,  as  inventor,  April 
27th,  1869,  and  having  been  re-issued  as  No.  5,907,  June  9th, 
1874. 

(1.)  As  to  the  Moore  patent.  The  claims  alleged  to  have 
been  infringed  are  claims  1  and  4,  which  are  as  follows :  "  1. 
The  combination,  with  the  grate  or  fire-bed  of  a  stove,  of  a 
downwardly-contracted  fire-pot,  the  two  being  so  arranged 
relatively  to  each  other  as  to  leave  an  opening  between  them, 
substantially  as  and  for  the  purpose  set  forth.''  ^^4.  The 
combination,  in  a  stove,  of  a  downwardly-contracted  fire-pot 
and  a  dumping-grate,  the  two  being  arranged  relatively  to 
each  other  so  as  to  leave  an  opening  between  them,  substan- 
tially as  and  for  the  purpose  set  forth."  These  claims,  in 
view  of  what  existed  before,  show  no  patentable  invention. 
An  anti-clinker  opening  between  a  dumping-grate  and  the 
bottom  of  the  fire-pot  above  it,  with  the  grate  larger  in  area 
than  such  bottom,  existed  before.     Downwardly-contracted 


MAY,  1882.  507 

Perry  if.  The  Ck)-operatiTe  Foundry  Company. 

fire-pots  existed  before.  There  was  no  inyention  in  combin- 
ing an  old  downwardly-contracted  fire-pot  with  an  old  anti- 
clinker  opening  and  dumping-grate.  The  whole  idea  is  in 
the  anti-cUnker  opening.  No  new  or  different  effect,  in  the 
combination  which  resnlts  in  snch  opening,  exists  when  the 
fire-pot  above  is  contracted  downwardly  from  that  which  ex- 
ists when  the  fire-pot  above  is  cylindrical. 

(2.)  As  to  the  Fnlton  patent.  The  only  claim  insisted  on 
at  the  hearing  as  having  been  infringed  is  claim  1,  which 
is  as  follows :  ^^  A  stove  grate  so  constructed  and  ar- 
ranged relatively  to  the  fire-chamber  or  fuel  receptacle  as  to 
leave  between  the  two  and  around  the  edge  of  the  grate  a 
free  open  space,  and  to  permit  of  the  removal  of  clinkers  and 
other  refuse  through  such  space,  by  use  of  the  ordinary  poker 
or  slicer,  substantially  as  described."  An  anti-clinker  open- 
ing between  a  dished  grate  and  a  fire-pot  existed  before ;  and 
also  a  fiat  grate.  All  that  the  patentee  did  was  to  substitute 
a  fiat  grate  for  a  dished  grate  in  the  arrangement.  The  rela- 
tion between  the  grate  and  the  bottom  of  the  fire-pot  so  as 
to  leave  the  space  between  the  two  and  the  space  around  the 
edge  of  the  grate,  is  the  same  in  the  two  arrangements.  The 
only  difference  is  one  of  degree,  as  to  the  quantity  of  refuse 
which  the  rotation  of  the  grate  or  the  use  of  a  poker  will  dis- 
charge, or  one  of  convenience  as  to  the  character  of  the  poker 
whidi  will  be  used,  and  does  not  involve  invention. 

The  bill  is  dismissed,  with  costs. 

Samuel  A.  Duncan^  for  the  plaintiffs. 
Theodore  Baoan^  for  the  defendants. 


608  CONNECTICUT, 


Wertheiii  A  OomperU  v.  The  Contanenial  Raflway  A  Tnut  Co. 


Nathan  G.  Mnj.int  w.  Elmosb  A.  Kent. 

A  plaintiff,  by  delaying  for  oyer  a  year  after  the  remoTal  of  a  cause,  before 
moving  to  remand  it,  loeee  his  right  to  insist  that  the  petition  for  remoTal 
was  not  filed  in  time. 

(Before  Wallaok,  J.,  Southern  District  of  New  York,  Hay  17th,  1882.) 

Wallace,  J.  In  the  absence  of  any  explanation  of  the 
delay  in  moving  to  remand  this  action,  it  ahonld  be  determined 
that,  by  the  delay  of  over  a  year  since  the  canse  was  removed 
to  this .  Court,  before  making  this  motion  to  remand,  the 
plaintiff  has  lost  his  right  to  insist  that  the  petition  for  re- 
moval was  not  filed  in  time.  Motion  denied. 

Ia/mjlb  a.  Oouldj  for  the  plaintiff. 
Henry  S.  Bennett^  for  the  defendant. 


WeBTHEDT  &  GOMPEBTZ 

vs. 
The  Oontinbntal  Eailwat  and  Tbust  Coicpany.    In  Eourrr. 

After  the  time  for  filing  a  plea  in  abatement  in  the  State  Court  had  expired, 
the  defendant  removed  the  suit  into  this  Gonrt,  and  then  filed  such  plea  in 
this  Court:  Hdd,  that  the  plea  most  be  oyerroled. 

(Before  Shifican,  J.,  Connecticut,  May  18th,  1882.) 


MAT,  1888.  509 


Werthein  A  Gomperiz  v.  The  CootlDental  Bailway  A  Tnut  Co. 

Shifman,  J.  This  is  a  bill  in  equity  which  was  made  re- 
turnable before  the  Superior  Court  for  the  county  of  New 
London,  on  September  13th,  1881.  If  any  service  of  the  bill 
or  complaint  ever  was  made,  it  was  made  on  July  29th,  1881. 
Upon  the  return  day,  the  defendant  entered  its  appearance  in 
the  State  Court,  and,  without  pleading  or  making  other  sug- 
gestion of  a  want  of  jurisdiction  in  the  Court,  filed,  on  Sep- 
tember 22d,  1881,  its  petition  and  bond  for  the  removal  of 
the  cause  to  this  Court  at  the  present  term.  The  petition 
and  bond  were  accepted,  and,  upon  the  second  day  of  this 
term,  the  defendant  filed  in  this  Court  a  plea  in  abatement, 
for  non-service  of  the  complaint.  One  of  the  "General 
Bules  of  Practice''  of  the  Superior  Court  of  this  State,  and  a 
rule  very  rigidly  observed,  is  as  follows :  "All  pleas  in  abate- 
ment, in  the  Superior  Court,  must  be  filed  on  or  before  the 
opening  of  the  Court  on  the  day  following  the  return-day  of 
the  writ."  By  the  uniform  practice  of  the  State  Court,  the 
defendant  had,  by  its  appearance  and  unexcused  omission  to 
file  a  plea  in  abatement  on  the  second  day  of  the  term,  waived 
«any  right  to  take  advantage,  in  that  Court,  of  defective  or  in- 
sufiScient  service.  The  plea  was  set  down  by  the  plaintiff  for 
argument. 

The  important  point  in  the  case  is  this :  Can  a  defendant 
who  has,  by  inaction,  lost  his  right,  in  the  State  Court,  to 
object  to  the  defective  service  of  the  complaint,  and  has 
thereafter  removed  the  case  to  the  Circuit  Court,  be  per- 
mitted, in  this  Court,  to  plead  in  abatement  such  defective 
service  ? 

Section  6  of  the  statute  of  March  3d,  1875,  in  regard  to 
the  removal  of  causes,  (18  U.  S.  Stat  at  La/rge^  472,)  pro- 
vides "  that  the  Circuit  Court  of  the  United  States  shall,  in 
all  suits  removed  under  the  provisions  of  this  Act,  proceed 
therein  as  if  the  suit  had  been  originally  commenced  in  said 
Circuit  Court,  and  the  same  proceedings  had  been  taken  in 
such  suit  in  said  Circuit  Court  as  shall  have  been  had  therein 
in  said  State  Court  prior  to  its  removal."  It  cannot  now  be 
doubted  that  the  Circuit  Court  takes  the  case  where  the  positive, 


610  CX)imBCTICUT, 


Werthein  A  Gomperts  v.  The  Contineatal  BaUwmy  A  Trust  Co. 

affirmative  action  of  the  State  Oonrt  has  left  it.  If  the  State 
Oonrt  has  made  an  order,  and  thereafter  the  case  is  removed, 
it  goes  into  the  Circuit  Court  with  the  order,  if  unexecuted, 
to  be  executed,  and,  if  executed,  to  remain  a  valid  order. 
Thus,  in  Duncan  v.  Gegan,  (101  U.  S.,  810,)  Chief  Justice 
Waite  says :  ^'The  Circuit  Court,  when  a  transfer  is  effected, 
takes  the  case  in  the  condition  it  was  when  the  State  Court 
was  deprived  of  its  jurisdiction.  The  Circuit  Court  has  no 
more  power  over  what  was  done  before  the  removal  than  the 
State  Court  would  have  had  if  the  suit  had  remained  there. 
It  takes  the  case  up  where  the  Stafe  Court  left  it  off."  This 
language  had  reference  to  a  condition  in  which  the  case  had 
been  placed  by  the  positive  orders  or  decrees  of  the  State 
Court,  and  not  to  a  condition  or  state  in  which  the  case  was 
by  reason  of  the  non-action  of  the  removing  party.  But,  I 
think,  if  one  of  the  parties  had,  by  his  non-action  within  the 
time  prescribed  by  the  State  Court,  prevented  himself  from 
asserting  a  defence  or  an  objection  to  the  jurisdiction  of  the 
Court,  and  thereafter,  in  that  Court,  such  defence  or  objec- 
tion could  not  be  considered  as  existing,  that  the  Circuit 
Court  takes  the  case  in  the  condition  in  which  the  non-action ' 
of  the  "psirtj  left  it.  In  the  present  suit,  the  defendant  had, 
by  its  conduct,  declared  that  it  abandoned  the  defences  usual- 
ly taken  advantage  of  by  dilatory  pleas,  and,  so  far  as  the 
State  Court  was  concerned,  in  the  absence  of  an  excuse  for 
non-compliance  with  the  rule,  was  as  effectually  prevented 
from  making  a  defence  of  non-service  as  if  the  Court  had 
passed  a  decree  that  no  dilatory  plea  would  be  permitted,  and 
that,  for  the  purposes  of  the  case,  good  service  had  been 
made.  The  defendant  having  voluntarily  admitted  that  the 
action  was  properly  before  the  State  Court,  an  admission 
which  is  perpetual  while  the  case  is  in  that  Court,  it  is  not 
proper  that  it  should  now  be  permitted  to  assert  that  the  writ 
had  never  been  served,  and  that  the  cause  had  never  l^ally 
been  in  any  Court. 

If  such  a  plea  can  be  permitted  in  this  case,  it  must  also 
be  permitted  in  a  case  which  had  remained  in  the  State  Court 
three  months  or  six  months,  provided  no  pleadings  had  been 


MAT,  1888.  511 

Werthein  A  Gompertc  v.  The  Contineiital  Railway  A  Trust  Co. 


filed  and  no  admissions  had  been  made.  It  is  not  in  accord- 
ance with  orderly  practice  to  permit  a  defendant  who  had 
abandoned,  in  the  State  Conrt,  by  delay,  all  his  defences  of 
non-service,  non- joinder  of  parties  and  the  like,  to  remove  his 
case  into  this  Conrt  and  then  go  throngh  the  varions  dilatory 
pleas  in  their  order.  If  no  Oonrt  properly  has  jurisdiction  of 
the  case  by  reason  of  non-service  of  the  complaint,  but  the 
defendant  has  chosen,  in  accordance  with  the  rales  of  the 
Conrt  to  which  the  case  is  brought,  to  waive  the  defect  and 
submit  himself  to  the  jurisdiction  of  the  Court,  the  defect 
shoold  be  considered  as  f clever  waived. 

In  Sayles  v.  North  Western  Ins.  Co.^  (2  Curtis  C.  C.  i?,, 
212,)  a  case  removed  from  a  State  Court,  Mr.  Justice  Curtis 
said,  obiter,  upon  a  motion  to  dismiss  the  cause  for  want  of 
jurisdiction,  upon  the  ground  that  no  service  had  been  made, 
that  the  defendant  who  had  removed  a  case  from  a  State 
Court  to  the  Circuit  Conrt  had,  by  his  petition  for  removal, 
in  which  proceeding  he  was  the  actor,  voluntarily  treated 
the  suit  "  as  properly  commenced  and  actually  pending  in 
the  State  Court,  and  he  cannot,  after  it  has  been  entered 
here,  treat  it  otherwise,"  and  that,  after  removal  upon  his 
petition,  he  cannot  be  permitted  to  say,  in  effect,  that  there 
was  no  suit  before  the  State  Conrt.  For  the  decision  of  the 
present  case,  it  is  not  necessary  to  take  the  ground  which 
Judge  Curtis  was  willing  to  occupy,  for,  it  can  well  be 
assumed,  that,  if  the  defendant  had  pleaded  in  abatement  in 
the  State  Court,  and  then  had  forthwith  removed  the  canse, 
the  petition  for  removal  wonld  not  have  been  an  abandon- 
ment of  or  inconsistent  with  the  plea.  Inasmuch,  however, 
as  the  defendant  has,  by  inaction,  lost  the  opportunity  of  at- 
tacking, in  the  State  Court,  the  validity  of  the  service  of  the 
process,  and  has  thereafter  removed  the  case  to  this  Court,  I 
think  that  it  comes  in  the  same  condition  in  which  it  left  the 
State  Court. 

The  plea  is  overruled. 

c/1  Hatset/y  for  the  plaintiffs. 

Lewis  V,  Stanton^  for  the  defendant. 


512  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Fisher  v,  Meyer. 


Morton  C.  Fibhee  v.  Moritz  Meter  and  others. 

In  an  action  for  a  conspiracy,  the  jury  rendered  a  verdict  for  a  large  sum  against 
two  of  the  defendants,  and  one  for  $100  against  N.  N.  moved  to  set  as^de  the 
verdict^  on  the  ground  that  its  smallness  showed  that  the  jnry  did  not  find 
tiie  issues  against  him :  Held,  that  the  motion  conld  not  be  granted. 

(Before  Smnuir,  J.,  Soathern  District  of  New  York,  May  20th,  1882.) 

Shipman,  J.  This  is  a  civil  action  to  recover  damages  for 
a  conspiracy.  The  jury  returned  a  verdict  in  favor  of  the 
plaintiff,  for  a  large  sum,  against  two  of  the  defendants,  and 
for  one  hundred  dollars  against  the  defendant  B.  8.  New- 
combe.  He  now  moves  to  set  aside  the  verdict  against  him, 
upon  the  ground  that  it  is  an  illogical  and  inconsistent  ver- 
dict ;  that  it  shows,  and  the  fact  was,  that  the  jury  did  not 
find  that  the  allegations  of  the  complaint  in  r^ard  to  him 
were  true,  for,  if  they  had  found  that  he  committed  the  acts 
chained  in  the  complaint,  they  were  bound,  under  the  charge 
of  the  Court,  to  render  a  verdict  for  a  very  large  sum. 

I  think  that  I  am  obliged  to  regard  the  verdict  of  the  jury 
for  the  plaintiff  as  an  afiSrmative  finding  upon  the  issues 
which  were  presented  for  their  determination.  If  it  is  per- 
mitted either  to  assume  or  to  prove  that  the  jury  did  not  find 
what  the  verdict  says  they  did  find,  the  result  of  trials  by 
jury  will  be  thrown  into  great  confusion.  Starting  from  the 
position  that  the  jury  meant  to  find  the  issues  for  the  plaint- 
iff, and  not  merely  that  a  certain  sum  of  money  should  be 
paid  to  him  without  regard  to  the  cause  of  action  which  was 
set  forth  in  the  complaint,  it  is  true  that  the  verdict  against 
Mr.  Newcombe  was  an  inconsistent  one,  because,  under  the 
charge  of  the  Court,  if  he  committed  the  acts  charged  in  the 
complaint,  he  was  liable  in  a  much  larger  sum  than  the  jury 
gave.  If  the  plaintiff  had  moved  to  set  aside  the  verdict  as 
against  Mr.  Newcombe,  a  serious  question  would  have  been 
presented,  for,  it  is  manifest  that  the  verdict  was  not,  in  its 


JUNE,  1882.  618 


RpbiDflon  tf.  The  National  Stockyard  Oompany. 


amonnt,  in  aooordance  with  the  charge.  Bat,  if  the  plaintiff 
is  Batisfied  with  the  verdict,  I  do  not  think  that  it  Bhonld  be 
set  aside  upon  the  motion  of  the  defendant.  He  is  not  in- 
jured by  the  fact  that  it  was  for  nominal  damages,  when  it 
should  hare  been  for  a  very  large  sum,  if  the  jury  found  the 
issue  against  him ;  and  it  is  not  permitted  to  me  to  infer  that 
the  verdict  was  not  an  afiSrmative  finding  upon  the  issues 
which  were  presented. 
The  motion  is  denied. 


W.  O.  Wilsouj  for  the  plaintiff. 
Joseph  H.  OAocUey  for  the  defendant. 


Chables  Bobinson 

vs. 

The  ITational  Stockyard  Ooicpany. 

The  question  whether  a  (Jbrporation  of  another  State  has  been  properly  Berred 
with  process  in  a  snit  in  a  Cirooit  Conrt  cannot  be  raised  by  a  demorrer  to 
the  complaint. 

(Before  Wallacs,  J.,  Sontbem  District  of  New  York,  Jane  8th,  1882.) 

Wallaob,  J.  The  defendant  demurs  to  the  complaint, 
and,  pnrsnant  to  the  Code  of  Procedure  of  this  State,  alleges 
as  the  ground  of  demurrer,  ^'  that  it  appears  upon  the  face  of 
the  complaint  that  the  Court  has  not  any  jurisdiction  of  the 
person  of  the  defendant."  The  point  sought  to  be  presented, 
however,  is,  that  the  defendant  has  not  been  properly  served 
with  process,  in  that  the  law  of  Congress  has  been  disr^ 
garded,  which  provides  that  no  civil  suit  shall  be  brought,  in 
any  Circuit  Court  of  the  United  States,  ^'  against  an  inhab- 
itant of  the  United  States,  by  any  original  process,  in  any 
other  district  than  that  of  which  he  is  an  inhabitant,  or  in 
Vol.  XX.— 8d 


514  SOUTHERN  DISTRICT  OF  NEW  YORK, 

RobioBOD  V.  The  NstioDal  Stockyard  Companj. 

whicli  he  is  found  at  the  time  of  serving  the  writ."    {Jiev. 
Stat.,  §  739.) 

The  complaint  avers  that  the  defendant  is  a  corporation 
organized  and  existing  under  the  laws  of  the  State  of  !N'ew 
Jersey,  and  is  a  citizen  of  that  State.  Upon  this  averment, 
the  defendant  insists  that  it  is  to  be  presumed,  not  only  that 
the  defendant  is  not  an  inhabitant  of  this  judicial  district, 
but  also  that  it  was  not  found  here  when  the  writ  was  served. 

The  demurrer  is  untenable  for  two  reasons.  First,  no 
such  presumption  can  be  legitimately  indulged.  Although  a 
corporation  of  another  State  cannot  migrate  to  this  State,  it 
may  exercise  its  franchises  and  transact  business  here  upon 
such  conditions  as  the  laws  of  this  State  may  impose.  It  may 
consent  to  be  "  found  "  here  for  the  purpose  of  being  sued, 
within  the  meaning  of  the  Act  of  Congress.  {Railroad  Com- 
pany V.  Ha/rria,  12  TTaK.,  65 ;  ExpaHe  SchoUenberger,  96  ZTl  S.y 
869.)  The  presumption  that  a  corporation  cannot  be  found 
out  of  the  State  which  created  it  is  no  m,ore  cogent  than  that 
an  individual  is  not  to  be  found  out  of  the  State  of  which  he 
is  an  inhabitant ;  and  no  one  has  ever  supposed  such  a  pre- 
sumption obtains  when  an  individual  is  the  party. 

Secondly.  The  point  sought  to  be  raised  cannot  be  pre- 
sented by  a  demurrer.  The  statute  in  question  does  not  af- 
fect the  general  jurisdiction  of  the  Court.  It  confers  a  per- 
sonal exemption  or  privilege  upon  a  defendant,  which  can  be 
waived,  and  is  waived  by  a  general  appearance  in  the  action. 
{Irvine  v.  Zowry,  14  Peters^  293  ;  Inlanders  v.  Insurance  Co., 
3  Mason^  168 ;  Kitchen  v.  St/rawbridge^  4  Wash.  C.  C,  -ff.,  84; 
KeUey  v.  Pennsylvania  B.  JR.  Co.,  14  Blatchf.  G.  C.  B.j  89.) 
How  can  it  be  ascertained  on  demurrer,  whether  the  party 
has  been  properly  served  with  process  or  not,  or  whether  the 
personal  privilege  has  been  waived  ?  It  is  not  the  oflSce  of  a 
complaint  to  exhibit  the  proceedings  which  have  caused  the 
defendant's  appearance  in  the  action.  The  complaint  treats 
the  defendant  as  present  in  Court  and  exhibits  the  issue  be- 
tween the  parties.  How  the  defendant  came  there  is  an 
extraneous  matter.    If  the  person  selected  as  a  defendant  is 


JUNE,  1882.  515 


Hale  V,  The  GontiDeDtal  Life  Insiiranoe  Company. 


one  who  is  not  subject  to  the  jurisdiction  of  the  Court,  and 
this  is  apparent  upon  the  pleading,  the  objection  may  be 
reached  by  demurrer.  If  a  party  is  subject  to  the  jurisdic- 
tion, it  may  be  that  jurisdiction  has  not  been  properly  ac- 
quired, but  this  would  present  a  question  not  of  pleading  but 
one  of  practice.  The  precise  question  was  ruled  in  N(me%  v. 
Hope  MuimA  Life  Ins,  Co.^  (5  How.  Pr.  Hep.y  96,)  where  it 
was  held  that  the  defendant  could  not  raise  by  a  demurrer 
under  the  Code,  upon  the  ground  assigned  here,  the  qnestion 
whether  he  had  been  properly  served  with  process. 

This  defendant  is  subject  to  the  jurisdiction  of  the  Court. 
If  the  writ  was  irregularly  served  there  was  an  adequate  rem- 
edy by  a  motion  to  quash. 

Judgment  is  ordered  for  the  plaintiff.  Leave  is  granted 
the  defendant  to  answer  within  twenty  days,  upon  payment 
of  costs  of  the  demurrer. 


Ca/miUu8  O.  Kidder^  for  the  plaintiff. 
Fra/nJc  G.  Hcmghwovt^  for  the  defendant. 


'  Albert  TTale 
The  CoimNENTAL  Life  Insubanob  CoMPAinr.    In  Equitt. 

A  Gonnecticiit  corpontloD  was  sued  in  a  State  Court  in  Vermont,  by  a  dtiien 
of  New  Hampehire,  by  process  served  on  a  statutory  .ag^t  reqaired  by  the 
laws  of  the  State  for  the  purpose.  The  suit  haying  been  removed  into  this 
Court,  the  defendant  demurred  to  the  bill  for  want  of  suffioient  jurisdiction, 
acquired  by  the  service:  Hdd,  that  the  appearance  and  demurrer  established 
the  jurisdiction. 

An  endowment  policy  on  a  life,  with  a  right  to  share  in  profits,  to  be  appUed 
towards  premiums,  is  not  made  void  by  misrepresentationB  of  the  insurer's 
agent  as  to  what  the  profits  would  amount  to. 

Equity  has  cognizance  of  a  suit  to  account  for  such  profits. 

(Before  Whbblib,  J.,  Yermont,  June  14th,  1882.) 


616  YKBMOBT. 

EUe  V.  Hm  Contiiiaito]  Ufs  lamuamm  Campamj, 

Whkklkb,  J.  The  bill  all^esy  in  subetanc^  that  tbe 
orator  was  induced  to  take  an  endowment  policy  npon  his 
life  in  the  defendant  eompanj,  with  a  right  to  share  in  profits^ 
and  to  pay  preminma  thereon,  partly  in  money  and  partly  by 
his  notes,  through  varlons  representations  made  by  the  de- 
fendant's agent,  to  the  effect  that  the  profits  would  amount  to 
enough  to  pay  and  cancel  the  notes,  and  otherwise  as  to  what 
the  insurance  would  amount  to ;  that  the  time  has  elapsed 
and  the  defendant  insists  upon  taking  the  amount  of  die  notes 
from  the  amount  of  the  policy,  and  refuses  to  pay  what  the 
agent  represented  the  insurance  would  amount  to  upon  the 
payments  made;  and  prays  that  the  transaction  may  be 
declared  to  be  void,  the  notes  decreed  to  be  given  up,  the 
amount  of  premiums  paid  decreed  to  be  refunded,  with  interest, 
and  for  general  relief. 

The  plaintiff  is  a  citizen  of  New  Hampshire,  the  defendant 
of  Connecticut,  and  the  suit  was  brought  in  the  State  Court 
of  Chancery,  and  has  been  removed  to  this  Court.  The 
service  of  process  was  made  upon  a  statutory  agent  required 
by  the  laws  of  the  State  for  that  purpose.  The  defendant 
demurs  to  the  bill  for  want  of  sufficient  jorisdiction  acquired 
by  the  service,  and  for  want  of  equity,  and  the  cause  has 
been  beard  upon  the  demurrer. 

The  jurisdiction  is  to  be  measured  by  that  of  the  State 
Court  of  Chancery.  That  Court  is  a  Court  of  general  equity 
jurisdiction  and  has  full  cognizance  of  all  such  cases  as  this, 
if  any  Court  of  Equity  would  have,  between  parties  properly 
before  it.  As  the  defendant  appeared  and  demurred,  the 
parties  are  before  the  Court  and  jurisdiction  has  attached, 
and  there  can  be  no  question  remaining  upon  the  demurrer 
except  as  to  the  equity  of  the  bill,  and  that  question  is  to  be 
attended  to. 

The  misrepresentations  relied  upon  to  avoid  the  contract 
were  wholly  as  to  what  would  be  done  thereafter,  and  not  as 
to  any  past  or  then  present  fact.  The  orator  had  some  insur- 
ance upon  his  life  daring  the  running  of  the  policy;  his 
claim  now  is  that  it  does  not  amount  to  so  much  as  the 


JUNE,   1888.  517 


Dodge  V,  SchelL 


defendant  represented  it  wonld,  and  as  he  expected.  The 
frand,  if  there  is  any,  did  not  exist  at  the  time  of  the  making 
of  the  contract,  and  conid  not  vitiate  it.  Such  frand  would 
not  work  backwards.  The  insurance  which  the  orator  has  had 
cannot  be  restored.  There  is  no  way  to  protect  and  preserve 
the  rights  of  both  parties*but  to  carry  out  the  contract  accord- 
ing to  its  legal  effect,  as  affected  by  such  I'eprecifcntations, 
estoppels,  or  additional  contracts,  as  may  be  shown.  The  bill 
essentially  lacks  equity,  in  this  aspect.  The  question  remains 
whether  there  is  any  other  ground  stated  for  equitable  relief, 
for,  if  there  is,  the  bill  ought  to  be  retained,  to  prevent 
multiplicity  of  litigation^ 

As  the  bill  stands,  the  orator  is  entitled  to  a  share  in  the 
profits,  to  be  applied  on  his  notes.  The  share  belonging  to 
him  is,  apparently,  a  proper  subject  of  accounting.  The 
taking  that  account  and  applying  the  amount  to  which  the 
orator  is  entitled  to  the  satisfaction  of  the  notes  would  be  a 
proper  subject  for  equitable  cognizance.  On  that  ground  it 
appears  that  the  bill  should  be  retained. 

The  demurrer  ia  overruled,  the  defendant  to  answer  over 
by  the  next  rule-day  but  one.  • 


CUtbert  A.  DaviSj  for  the  orator. 
Charles  W.  Porter^  for  the  defendant. 


William  E.  Dodgb  and  othsbs  vs.  Augustus  Sohell. 

P.  employed  D.,  who  was  not  tn  attomej  at  kw,  to  prosecnte  a  daim  of  Mb 
againat  the  GoTemment,  to  reooTer  hack  datiea  UlegaUy  exacted,  agreeing  to 
pay  him  for  his  servicea  a  som  equal  to  one-half  of  the  recorery,  he  to  hear 
aU  the  ezpenaes.  He  employed  attorneys  and  hronght  stdt,  in  the  name  of 
P.,  against  a  ooUeetor  of  enstoms.  For  12  yeara,  and  nntil  he  died,  he  had 
eondnsiTe  oontrol  of  the  soit.  He  made  snhstitntions  of  attorneys  and  da- 
frayed  all  expenses.  After  his  death,  his  execotrix  controlled  the  soit,  and 
sahstitnted  an  attorney,  and  a  Judgment  for  over  |1 7,000  was  reooyered  in 


518  SOUTHERN  DISTRICT  OF  NBW  YORK, 


Dodge  V.  SdielL 


faYor  of  P.  Then  the  Court  demed  a  motloii  made  by  the  defendant  to  Taoate 
the  appearance  of  the  attorney  snbetitnted  by  the  ezeentrix.  Then  P.  anc- 
oeeded  in  ejecting  rach  attorney,  by  the  aid  of  the  defendaol^a  attorney,  dar- 
ing the  pendency  of  a  writ  of  error.  The  judgment  being  affirmed,  and  the 
derk  refosing,  on  the  mandate,  to  recognise  any  attorney  but  the  one  bo 
ejected,  P.  moved  to  vacate  the  appearance  of  rach  attorney.  The  motion 
was  granted,  on  P.'s  paying  to  the  ezecotriz  one-half  of  the  amoont  of  the 
judgment,  without  prejudice  to  his  right  to  reoorer  at  law  the  whole  or  any 
partthereot 

(Before  WaxxiAci,  J.,  Southern  District  of  New  York,  June  16th,  1882.) 

Wallace,  J.  This  is  a  motion  by  the  plaintifb  to  vacate 
an  appearance  by  an  attorney  in  their  bdialf,  as  nnanthorized. 
The  attorney  does  not  dispute  the  plaintiffs'  right  to  substi- 
tute another  attorney  in  his  place,  but  insists  they  should  not 
be  permitted  to  do  so  until  they  fulfil  their  obligations  to  one 
whom  the  present  attorney  immediately  represents. 

Prior  to  1864,  Phelps,  Dodge  &  Co.,  the  plaintijBEs,  made 
an  agreement  with  one  Douglass,  by  which  they  employed 
the  latter  to  prosecute  a  claim  of  theirs  against  the  Govem- 
ment,  growing  out  of  alleged  illegal  exactions  of  duties  and 
f eej.  By  this  agreement,  Douglass  undertook  to  ^^  endeavor 
to  establish  the  daim  by  legal  decisions  or  otherwise."  He 
was  to  be  paid  for  his  services  a  sum  equal  to  one-half  of  the 
recovery,  and  was  to  bear  all  the  costs  and  expenses  of  the 
proceedings.  In  1864,  he  employed  attorneys  and  brought 
suit,  in  the  name  of  the  plaintiffs,  against  the  collector  of  the 
port  of  New  York.  From  that  time  until  1876,  when  he 
died,  he  had  the  exclusive  control  of  the  suit.  Substitutions 
of  attorneys  had  been  made  by  him  and  he  had  defrayed  all 
the  expenses.  After  his  death,  his  executrix  assumed  control 
of  the  suit,  and,  under  her  administration,  the  present  attorney 
was  substituted  as  plaintiffs'  attorney,  and  a  judgment^  for 
$17,498  was  recovered  for  the  plaintiffs.  Until  this  judg- 
ment was  recovered,  the  plaintiffs  took  no  part  in  the  pro- 
ceedings, and  apparently  manifested  no  interest  therein. 
Their  first  intervention  in  the  suit  was  an  effort  to  wrest  its 
control  from  the  executrix.    A  motion  was  made,  ostensibly 


JUKE,   1888.  519 


Dodge  V.  Schell. 


by  the  defendant  in  the  Buit,  but  apparently  at  the  instigation 
or  in  the  interest  of  the  plaintiffs,  to  vacate  the  appearance  of 
the  attorney  substituted  by  the  executrix,  upon  the  ground 
that  the  agreement  between  the  plaintiffs  and  Douglass  was 
champertous  and  void,  and,  if  not,  because  the  executrix  had 
no  power  to  appoint  an  attorney  for  the  plaintifis.  This  mo- 
tion was  heard  before  my  predecessor  in  this  Court  and  de- 
nied. Notwithstanding  this,  the  plaintifis  succeeded,  through 
the  co-operation  of  the  defendant's  attorney,  in  ejecting  the 
attorney  from  the  suit  during  its  pendency  upon  a  writ  of 
error  from  the  judgment.  Upon  the  aflSrmance  of  the  judg- 
ment, however,  when  they  applied  to  enter  the  mandate  in 
this  Court,  the  derk  of  this  Court  refused  to  recognize  the 
right  of  any  attorney  to  appear  for  them  except  the  present 
attorney.    Hence  this  motion. 

The  plaintiffs  now  insist  that  their  contract  with  Douglass 
was  one  for  his  personal  exertions,  and  that  by  his  death  be- 
fore entire  performance  they  are  released  from  all  obligation 
to  his  executrix ;  that  his  interest  did  not  survive  his  death ; 
and  that  his  executrix  was  not  authorized  to  assume  charge  of 
the  suit  and  appoint  the  present  attorney. 

That  the  executrix  of  Douglass  has  a  valid  claim  against 
the  plaintifb  for  the  value  of  his  services  up  to  the  time  of 
his  death,  the  entire  performance  of  the  contract  on  his  part 
being  prevented  ^by  his  death,  is  established  by  many  author- 
ities, among  which  are  Wolfe  v.  Howe^  (20  N.  71, 197,)  and 
Spdldmg  v.  SoaOy  (71  ilT.  71, 40.)  It  is  more  doubtful  whether 
the  executrix,  upon  Douglass'  death,  had  the  right  to  control 
the  further  prosecution  of  the  action.  But,  after  she  was  per- 
mitted to  do  so  by  the  plaintiffs  for  a  considerable  period  of 
time,  and  by  her  exertions  and  at  her  expense  the  judgment 
was  obtained  which  the  plaintiffs  now  seek  to  control,  the  ob- 
jection to  her  conduct  seems  an  ungracious  one  and  should 
not  be  willingly  enforced.  The  question  of  her  authority  to 
appoint  the  attorney  must  have  been  passed  upon  by  Judge 
Blatchford,  on  the  former  motion  to  vacate  the  appearance, 
and  been  determined  affirmatively;  otherwise,  the  motion 


620  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Dodge  V.  SoheU. 

would  have  prevailed.  Whether  this  authority  was  held  to 
be  within  the  scope  and  contemplation  of  the  original  con- 
tract between  the  plaintiflb  and  DouglafiB,  or  to  be  implied 
from  the  subsequent  conduct  of  the  parties,  does  not  appear ; 
nor  is  it  material  now.  It  suffices  that  there  are  no  clamorous 
equities,  in  the  present  application,  to  urge  a  reconsideration 
of  that  adjudication.  For  thirteen  years  the  plaintifb  acqui- 
esced in  what  was  done  by  Douglass  and  his  executrix,  but, 
from  the  time  they  ascertained  that  a  large  judgment  had 
been  recovered,  they  have  seemingly  been  unwUling  to  recog- 
nize the  agreement.  They  now  present  affidavits,  in  which^ 
upon  information  and  by  inuendo,  they  impute  fraudulent 
condnct  to  Douglass,  not  towards  themselves,  but  towards  the 
Government.  They  claim  that  the  judgment  would  not  have 
been  affirmed  upon  the  writ  of  error  except  for  the  exertions 
of  counsel  employed  by  themselves;  but^  it  appears  that 
competent  counsel  were  employed  by  the  executrix  and 
ignored  by  the  plaintifb.  They  represent  themselves  willing 
to  pay  a  reasonable  compensation  to  the  executrix ;  but,  at 
the  same  time,  they  are  insisting  that  they  are  under  no 
legal  obligation.  They  have  made  no  definite  proposition  of 
payment. 

Notwithstanding  all  this,  the  plaintifis  have  the  right  to 
collect  the  judgment  themselves,  and  for  that  purpose  to  ap- 
point such  attorney  as  they  desire.  They  ^d  not  transfer 
the  cause  of  action  to  Douglass,  nor  did  the  agreement  effect 
an  equitable  adisignment  to  Douglass  of  half  of  the  proceeds 
of  the  suit.  The  suit  now  being  at  an  end,  the  executrix  has 
no  interest  in  controlling  its  further  disposition.  She  has^ 
however,  the  right  to  assert  any  lien  upon  the  judgment 
which  exists  by  virtue  of  the  agreement  and  the  services 
rendered  under  it. 

If  Douglass  had  been  an  attorney,  the  agreement  and 
services  would  have  created  a  lien.  There  is  no  magic  in  the 
name  ^^  attorney,"  which  conjures  up  a  lien.  It  is  the  nature 
of  the  services  and  the  control,  actual  or  potential,  which  the 
mechanical  or  professional  laborer  has  over  the  object  in- 


JUNE,  1882.  631 


Bodge  9.  SchelL 


truBted  to  him,  which  determines  whether  a  lien  is  or  is  not 
conferred.  The  services  which  Douglass  was  employed  to 
render,  and  did  render,  were,  in  character,  attorney's  services. 
As  he  appointed  and  discharged  attorneys,  he  had,  through 
them,  the  same  control  over  the  snit  as  if  he  had  been  an  at- 
torney himself.  It  is  said,  by  Best,  Oh.  J.,  in  Jacobs  v.  Lor- 
tauTy  (5  £ing.j  180 :)  ^^As  between  debtor  and  creditor  the 
doctrine  of  lien  is  so  equitable  that  it  cannot  be  favored  too 
much."  The  remark  is  peculiarly  applicable  in  the  present 
case. 

It  would  not  be  proper  to  determine  now,  or  by  any  pro- 
ceeding which  cannot  be  reviewed,  the  amount  of  the  lien  to 
which  the  executrix  is  entitled.  But,  for  present  purposes,  it 
should  be  held  that  she  is  not  to  be  turned  over  to  a  suit  at 
law,  to'receive  that  measure  of  compensation,  at  the  end  of  the 
litigation,  to  which  she  is  entitled  now  before  surrendering 
her  lien.  It  may  be  that  the  plainti£k  have  equities  and  legal 
rights  with  which  the  Court  has  not  been  impressed,  and  from 
which  they  should  not  be  definitely  precluded  by  the  present 
dedaioD.  It  may  tdtimately  appear  that  the  executrix  should 
not  receive  the  whole  compensation  contemplated  by  the 
agreement ;  but  the  burden  should  rest  upon  the  plaintifb, 
who  are  seeking  to  dispossess  her  of  a  lien,  to  show  that  she  is 
not  entitled  to  the  sum  which  they  promised  to  pay  when 
their  claim  should  be  established. 

It  is,  therefore,  ordered,  that  the  plaintiffs'  motion  be 
granted,  upon  the  payment  to  the  executrix  of  Douglass  of 
one-half  of  the  amount  of  the  judgment,  without  prejudice  to 
the  right  of  the  plaintiffs  to  recover  at  law,  if  they  can  show 
themselves  entitled,  the  whole  sum,  or  such  part  thereof  as 
may  be  just. 


John  E.  PoTWMy  for  the  motion. 
W.  iT.  OrcmweU^  opposed. 


522  SOUTHERN  DISTRICT  OP  NEW   YORK, 

CUflin  V.  McDermott. 


HoRAOB  B.  Olaflik  and  others 

VS. 

Charles  F.  MoDermott  and  others.    In  Eqitttt. 

A  creditor's  bUl,  founded  on  a  judgment  recoyered  agftinst  a  debtor  in  a  State 
Court  in  California,  will  not  lie  in  a  drenit  Court  of  the  CTnited  States  in 
New  York,  to  set  adde  a  fraudulent  transfer  of  personal  property  made 
by  the  debtor  in  California,  by  means  of  ooUusiTS  judgments  and  sales  under 
executions  thereon,  no  judgment  having  been  obtained,  or  execution  issued, 
in  such  Circuit  Court,  or  in  any  State  Court  of  New  York. 

(Before  Wallaox,  J.,  Southern  District  of  New  York,  June  16th,  1888.) 

Wallace,  J.  The  bill  in  this  case  is  filed  to  set  aside  the 
transfer  of  certain  personal  property,  made  at  San  Francisco, 
Oalifomia,  by  Kennedy  &  Darr  to  McDermott,  by  means  of 
collnsive  judgments  and  sales  under  executions  issued  thereon, 
the  complainants  being  creditors  of  Kennedy  &  Durr,  and 
having  recovered  judgment  in  a  State  Court  in  California, 
against  Kennedy  and  Durr,  upon  which  an  execution  has  been 
returned  unsatisfied. 

By  a  demurrer  the  question  is  presented  whether  the  bill 
can  be  maintained  here,  no  judgment  having  been  obtained, 
or  execution  issued,  in  this  Court,  or  in  any  Court  of  this 
State. 

Actions  like  the  present,  in  aid  of  the  execution  at  law, 
are  ancillary  to  the  original  suit,  and  are,  in  efifect,  a  continu- 
ance of  the  suit  at  law,  to  obtain  the  fruit  of  the  judgment, 
or  to  remove  obstacles  to  its  enforcement.  Because  this  is 
the  nature  of  such  an  action  it  has  been  decided  that  such  a 
suit  may  be  maintained  in  a  Federal  Court  although  all  the 
parties  reside  in  the  State  where  it  is  brought,  the  judgment 
in  the  original  suit  having  been  recovered  in  the  Federal 
Court  in  which  the  creditor's  suit  is  brought.  {Hatch  v. 
Dcrr^  4t  McLean^  112.)    It  is,  therefore,  difficult  to  under- 


JUNE,   1882.  523 


CUflin  V.  McDermott. 


stand  how  such  a  suit  can  be  maintained  in  any  Conrt  which 
does  not  exercise  an  auxiliary  jurisdiction  over  the  Court  in 
which  the  original  suit  was  brought. 

Authorities  are  found,  however,  upon  both  sides  of  the 
question  which  is  thus  presented.  In  T(irhell  y.  ChnggSj  (3 
PcUffSy  207,)  the  Court  of  Chancery  of  this  State  refused 
jurisdiction  of  a  creditor's  bill  filed  to  obtain  satisfaction  of  a 
judgment  obtained  in  the  United  States  Circuit  Court  for  the 
Southern  District  of  New  York,  upon  which  an  execution 
had  been  returned  unsatisfied.  The  judgment  was  treated 
as  a  foreign  judgment,  and  as  standing  on  the  same  footing 
with  a  judgment  of  the  Court  of  apother  State.  In  Davis  y. 
Brunsj  (23  Hun^  648,)  there  was  a  similar  adjudication. 
There,  the  plaintifi!  brought  his  action  in  the  Supreme  Court 
of  this  State,  to  set  aside  an  alleged  fraudulent  transfer  of 
real  estate,  having  obtained  a  judgment  against  the  grantor 
in  the  United  States  District  Court  for  the  Southern  District 
of  New  Fork,  and  an  execution  on  the  judgment  having  been 
returned  unsatisfied.  In  both  of  these  cases  it  was  held  that 
the  plaintifiPs  remedy  at  law  had  not  been  exhausted  by  the 
issuing  and  return  of  an  execution  upon  a  foreign  judgment. 

On  the  other  hand,  in  Wilkinson  v.  TdUj  (6  McLecm^  16,) 
a  creditor's  bill  was  maintained  in  the  United  States  Circuit 
Court,  founded  upon  a  judgment  of  the  State  Court  of  the 
State  in  which  the  Federal  Court  was  sitting.  The  decision 
was  placed  upon  the  power  of  the  Court  to  adopt  a  remedy 
given  by  the  law  of  the  State,  when  the  remedy  was  one 
appropriate  for  the  exercise  of  a  Court  of  equity ;  but  it  was 
also  assumed  that  the  bill  could  be  maintained  irrespective  of 
the.  State  statute. 

The  cases  in  the  Courts  of  New  York  seem  most  con- 
sonant with  this  principle.  Obviously,  the  complainants  are 
merely  creditors  at  large  of  the  defendants  in  the  California 
judgment.  The  judgment  of  another  State  has  no  force  in 
this,  save  what  it  derives  from  the  laws  of  this  State  and  the 
provision  of  the  Constitution  of  the  United  States  which 
relates  to  its  effect  as  evidence.  It  ranks  here  as  a  simple 
contract  debt.     It  does  not  have  the  force  and  operation  of  a 


524  SOUTHERN  DISTRICT  OF  NEW  YORK, 

dafliii  V.  MoDennott. 


domestic  judgment,  except  for  the  pnrpoBes  of  eyidence^ 
bejond  the  jurisdiction  where  it  is  obtained.  {MoElmjoyle  t. 
Cohen^  13  Peters^  312.)  It  will  not  be  contended  that  a 
creditor  at  large  can  invoke  the  jurisdiction  of  equity  to  enforce 
his  claim,  unless  upon  some  of  the  recognized  grounds  of 
trust  or  administration  of  equitable  assets.  Unless  some  of 
these  grounds  exist,  the  remedy  of  the  creditor  is  at  law ;  and 
equity  will  not  assist  him  until  that  remedy  is  exhausted. 
The  remedy  at  law  cannot  be  exhausted  by  the  recovery  of  a 
judgment  in  a  foreign  jurisdiction,  and  by  fruitless  efforts  to 
enforce  it  there.  Except  as  a  binding  adjudication  between 
the  parties  upon  the  subject-matter  of  the  suit,  the  judgment 
of  one  of  our  sister  States  has  no  operation  here  upon  the 
rights  or  the  remedies  of  the  parties  to  it.  It  cannot  be  a 
foundation  for  a  creditor's  bill  here,  any  more  than  a  judg- 
ment recovered  in  England  or  in  Oanada.  It  must  be  sued 
over  here  before  it  becomes  a  judgment  for  the  purposes  of 
any  remedy  here  at  law  or  in  equity. 

This  conclusion  is  reached  with  less  reluctance,  in  view  of 
the  practical  objections  which  would  exist  if  foreign  judg- 
ment creditors  were  permitted  to  resort  to  this  jurisdiction  to 
remove  obstacles  in  the  way  of  their  legal  remedies.  These 
obstacles  always  exist  in  the  jurisdiction  where  the  judgment 
is  obtained.  Frequently,  their  removal  involves  the  con- 
sideration of  the  force  and  effect  of  remedies  and  rights 
created  by  local  law,  which  are  more  appropriately  adjudi- 
cated by  the  local  tribunals.  The  present  case  affords  an 
illustration  in  point.  This  Court  is  asked  to  examine  into  a 
fraudulent  perversion  of  the  proceedings  of  a  Court  of  a  dis- 
tant State  and  set  aside  transfers  based  upon  those  proceed- 
ings, when  the  actors,  the  transactions,  and  the  property  are 
all  within  that  State.  Such  a  jurisdiction  should  not  be  will- 
ingly assumed. 

The  demurrer  is  sustained. 

Cha/rlea  W,  Oould^  for  the  plaintiffs. 
Eoerett  P.  Wheeler j  for  the  defendants. 


JUNE,  1882.  535 


Jaoobson  «.  Allen. 


AuousTirfl  Jaoobsok,  as  BsoBiyBB,  &o. 

vs. 
JoBH  Allen,  ab  Exbodtob,  &0.9  and  othebs.    In  Equxtt. 

A  receirer  of  "  all  the  estote,  property  and  ecfiiltable  interegts"  of  an  insolyent 
banking  corporation,  created  by  the  State  of  Illinois,  cannot  enforce  against 
a  stockholder  In  the  corporation  the  UablHty  imposed  by  the  statnte  of  Illi- 
nois on  each  stockholder  for  double  the  amount  oi  his  stock,  saoh  liability 
being  one  in  fairm  of  creditors  of  the  bank  and  not  in  iavor  of  the  cor* 
poration. 

(Before  Waulaoi,  J.,  Soathern  District  of  New  York,  Jnne  SOtfa,  1882.) 

Wallaob,  J.  Without  pasfiing  upon  sabordinate  ques- 
tioBs  raised  bj  the  demurrer,  the  bill  must  be  held  bad 
because  the  right  of  action  sought  to  be  enforced  does  not 
exist  in  favor  of  the  complainant. 

The  defendants  are  sued  as  stockholders  of  the  Bank  of 
Chicago,  an  insolvent  corporation  of  the  State  of  Illinois,  and 
the  bUl  seeks  to  charge  them  with  a  liability  imposed  by  one 
of  the  sections  of  the  incorporating  Act,  which  provides  that 
^^each  stockholder  shall  be  liable  to  double  the  amount  of 
stock  held  or  owned  by  him,  and  for  three  months  after 
giving  notice  of  transfer."  The  bill  alleges,  that,  in  a  suit 
brought  by  a  creditor  of  the  bank  in  the  Superior  Clourt  of 
Oook  County,  Illinois,  the  complainant  was  duly  appointed, 
by  that  Court,  ^^  receiver  of  all  the  estate>  property  and 
equitable  interests  of  said  bank,''  and  duly  qualified,  and  has 
ever  since  acted  as  such  receiver. 

Unless  the  right  of  action  to  recover  the  statutory  lia- 
bility of  stockholders  was  part  of  the  ^^  estate,  property  or 
equitable  interests  "  of  the  bank,  it  did  not  pass  to  the  re- 
ceiver under  his  appointment.  Not  only  because  of  the  alle- 
gation of  the  bill,  but  also  from  the  inherent  nature  of  a  re- 
ceiver's title,  the  complainant  did  not  acquire  the  right  to  en- 


526  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Jacobson  v.  Allen. 

force  the  statutory  liability  if  it  existed  only  in  favor  of 
creditors  of  the  bank  and  not  in  favor  of  the  corporation. 

It  is  not  contended  that  the  corporation  conld  have  en- 
forced this  liability  against  the  stockholders,  but  the  position 
is  taken,  that,  upon  the  insolvency  of  the  corporation,  a  fnnd 
arises,  by  force  of  the  statutory  provision,  for  the  benefit  of 
the  creditors  of  the  corporation,  which  is  to  be  deemed  part 
of  the  equitable  assets  of  the  corporation.  Undoubtedly, 
such  provisions  are  intended  to  create  a  fund  for  the  benefit 
of  creditors,  in  case  of  the  insolvency  of  the  corporation ; 
but,  whether  the  creditors  can  resort  to  the  fund  jointly  or 
only  severally,  and  whether  the  right  of  the  creditor  is  one 
at  law  or  one  to  be  enforced  in  equity,  and  in  subordination 
to  the  rights  of  the  whole  body  of  creditors,  depends,  in 
each  case,  upon  the  terms  of  the  particular  statute.  Obvi- 
ously, the  fund  resembles  an  asset  of  the  corporation  more 
nearly  when,  by  the  terms  of  its  creation,  it  constitutes  an 
equitable  fund  for  the  common  benefit  of  all  the  creditors, 
than  it  does  when  it  is  secured  to  the  creditors  severally  and 
at  law. 

Under  this  particular  statute,  it  has  been  determined,  by 
the  Courts  of  Illinois,  that  a  creditor  of  the  corporation  may 
sue  individually  and  at  law,  {McCa/rthy  v.  Lanxiache^  89  7S., 
270 ;)  and,  under  a  similar  statute,  it  was  held  by  the  same 
Court,  that  the  creditor's  right  of  action  was  not  divested  by 
the  appointment  of  a  receiver  of  the  corporation.  {Arem  v. 
Wei/r^  89  /K.,  26.)  Undoubtedly,  if  the  liability  were  mere- 
ly a  several  one  in  favor  of  the  creditors,  no  one  creditor 
could  be  divested  of  his  right  of  action  by  any  proceeding 
or  judicial  decree  to  which  he  was  not  a  party ;  and,  there- 
fore, a  receiver  appointed  in  a  suit  brought  by  one  creditor 
against  the  corporation  could  not  acquire  the  rights  of  the 
olher  creditors.  (  Wmcoch  v.  Turpitij  96  /K.,  186.)  It  has 
not  been  definitely  determined  by  the  Courts  of  Illinois  that 
a  suit  might  not  be  maintained  in  equity  by  all  the  creditors, 
or  one  in  behalf  of  all,  to  recover  of  the  stockholders,  when 
the  liability  is  imposed  in  the  terms  employed  in  the  present 


JUNE,  1882.  527 


Jacobeon-v.  Allen. 


statute.  If  the  question  were  to  be  determined  irrespective 
of  the  adjudications  of  that  State,  it  would  hardly  be  deemed 
donbtfnl  that  the  Act  creates  a  fund  which  may  be  pursued 
in  equity,  for  the  common  benefit  of  all  the  creditors. 
{Briggs  v.  Penniman,  8  Cow.^  887 ;  JUathee  y.  Ifeidig^  72 
If.  r.,  100 ;  Terry  v.  LitOe,  101  U.  S.,  216.) 

Assuming  that  such  is  the  character  of  the  fund,  it  still 
remains  for  the  complainant  to  maintain  that  it  is  property 
or  assets  of  the  corporation  and  passes  to  him  by  virtue  of 
his  appointment  as  receiver.  Ko  case  is  cited  to  support  this 
contention.  In  Weeks  v.  Zove^  (60  iT.  Y.^  571,)  it  is  said, 
obiterj  that  the  stockholders'  liability  may  be  treated  as  cor- 
porate property.  That  was  an  action  at  law,  by  a  creditor 
against  the  stockholder,  in  which  it  was  sought  to  be  main- 
tained that  the  creditor  must  resort  to  equity ;  but  the  action 
was  sustained.  Numerous  authorities  recognize  the  right  of 
a  receiver  or  assignee  in  bankruptcy  to  sue  for  the  recovery 
of  unpaid  stock ;  but,  in  these  cases,  the  corporation  could 
have  maintained  the  action.  So,  also,  the  right  of  such  an 
oflSeer  is  maintained,  to  recover  assets  of  the  corporation 
which  the  corporation  could  not  have  recovered  because  it 
would  have  been  estopped  from  asserting  its  own  fraudulent 
or  illegal  conduct  in  the  disposition  of  the  assets.  These  au- 
thorities fall  short  of  the  present  point. 

The  receiver  of  an  insolvent  corporation  makes  his  title 
through  the  corporation.  He  cannot,  through  his  appoint- 
ment, acquire  that  which  the  corporation  never  had.  He  rep- 
resents the  creditors  of  the  corporation  in  the  administra- 
tion of  his  trust,  but  his  trust  relates  only  to  the  corporate 
assets.  As  trustee  for  creditors,  he  represents  them  in  fol- 
lowing the  assets  of  the  corporation,  and  can  assert  their 
rights  in  cases  where  the  corporation  would  not  be  heard. 
He  is  not  a  trustee  for  creditors  in  relation  to  assets  which 
belong  to  them  individually  or  as  a  body.  {Bristol  v.  San- 
fordy  12  Blatchf.  C.  O*  H.^  841.)  As  is  said  in  Curtis  v. 
Zeamttj  (15  Jf.  Y,^  44,)  "  he  is,  by  law,  vested  with  the 
estate  of  the  corporate  body  and  takes  his  title  under  and 


628  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Searlt  9.  Bonton. 

throngh  it.  It  ifl  trae,  indeed,  that  he  is  declared  to  be  a 
tragtee  for  creditors  and  stockholders ;  bat  this  onlj  proves 
that  they  are  the  beneficiaries  of  the  f  and  in  his  hands,  with- 
oat  indicating  the  soorces  of  his  title  or  the  extent  of  his 
powers.'* 

The  liability  of  the  stockholders  to  creditors  may  be 
regarded  as  a  collateral  statatory  obligation  of  the  sharehold- 
ers for  the  benefit  of  the  creditors,  by  which  the  former  be- 
come sareties  to  the  latter  for  the  debts  of  the  corporation. 
(Hecka  y.  JBumSj  88  ilT.  S.j  145.)  It  matters  not  whether  it 
is  an  obligation  to  each  creditor  severally  or  to  aU  jointly; 
in  either  case  the  character  of  the  obligation  is  the  same* 
Neither  a  receiver,  nor  an  assignee  in  bankraptcy,  nor  an  as- 
signee nnder  a  volantary  general  assignment  for  the  benefit 
of  creditors,  each  of  whom  representee  creditors  as  well  as  the 
insolvent,  acquires  any  right  to  enforce  a  collateral  obligation 
given  to  a  creditor,  or  to  a  body  of  creditors,  by  a  third  per- 
son, for  the  payment  of  the  deljts  of  the  insolvent. 

The  demnrrer  is  sastained. 

Thomas  Thaoher^  for  the  plaintiff. 

Rewry  W,  Johnion^  Michad  W,  Divine^  WiUtam  W. 
MacFoHand  and  Ed/uoard  Patterson^  for  the  defendants. 


Anson  Seabls 


vs. 
Charles  C.  Bouton  and  others.    In  Equtit. 

The  second  claim  of  re-issned  letters  patent  No.  9,297,  granted  to  Aneon 
Searls,  July  18tli,  1880,  for  an  improyement  in  whip-sockets,  the  original 
patent.  No.  150,196,  haying  heen  granted  to  him  April  28th,  1874,  is  yoid, 
nnder  the  cases  of  MiUirr.  Bnm  Co.,  (104  U.  &,  860,)  and  Jamm  y.  Oampbdl, 


JUIXE,   1688.  529 


Searlfl  v.  Bonton. 


{Id,,  866,)  beoanse  the  claim  of  the  original  was  limited  to  a  bell-shaped  top 
and  the  claim  of  the  re-iasue  is  not  so  limited. 
The  qnestioii  of  delay  in  the  re-issue  held  to  be  open  for  consideration  under 
the  answer. 

(Before  Whvilcb,  J.,  Sonthem  District  of  New  York,  Jane  22d,  1882.) 

Wheeleb,  J.  This  cause  (an^,  p.  426,)  has  now  been  far- 
ther heard  as  to  the  validity  of  the  re-issned  patent  involved 
therein,  No.  9,297,  dated  July  1 8th,  1880,  the  original  of 
which,  No.  160,195,  was  dated  April  28th,  1874,  for  an  im- 
provement in  whip-sockets,  as  affected  by  the  original  patent, 
now  in  evidence.  The  only  question  is  whether  the  original 
will  sustain  the  re-issue. 

It  is  argued  for  the  orator  that  the  only  form  of  this 
question  raised  by  the  answer  is,  whether  the  re-issue  is  for 
the  same  invention  as  that  described  in  the  original,  and  that 
no  question  of  laches  can  properly  be  considered,  because  no 
delay  is  alleged.  Without  considering  whether  it  is  necessary 
to  set  that  defence  up  separately  in  the  answer  in  order  to 
raise  that  question,  it  is  sufficient  now  to  notice,  that,  in  this 
answer,  it  is  alleged  that  the  original  patent  was  not  surren- 
dered because  it  was  invalid  or  inoperative  by  reason  of 
claiming  too  much,  and  that  in  the  re-issue  the  claims  have 
been  broadened  so  as  to  cover  more  than  the  orator  had  the 
right  to  claim  as  new.  This  seems  to  sufficiently  put  in  issue 
the  propriety  and  lawfulness  of  the  enlargement  of  the  claims 
and  the  scope  of  the  patent  at  the  time  and  in  the  manner 
in  which  it  was  done. 

The  original  patent  was  for  a  whip-socket  having  a  bell- 
shaped  top,  and  a  rubber  disc  for  steadying  the  whip,  fitting 
into  an  inner  groove  near  the  top  in  the  bell-shaped  part,  and 
appears  to  cover  no  whip-sockets  not  having  such  a  shaped 
top.  The  re-issue  is  for  such  whip-sockets  generally,  without 
any  limitation  to  that  form  of  top.  The  patent  is,  to  that 
extent,  and,  perhaps,  in  some  other  particulars,  enlarged  in 
the  re-issue.    That  brings  this  case  within  the  principles  of 

Vol.  XX.— 84 


680  SOUTHERN  DISTRICT  OF  NEW  YORK, 

Braiiuu*d  v.  Gramme. 

Miller  v.  Brasa  Co.^  (104  U.  /S.,  360,)  and  James  v.  CampbdL, 
{Id,  366,)  as  now  understood. 

Let  the  decree  heretofore  ordered  be  so   modified  as  to 
dismiss  the  bill  as  to  this  patent. 

J.  P.  Fitch^  for  the  plaintiff. 

N.  Davenport^  for  the  defendants. 


Edwin  D.  Bbainakd  vs.  Fbedebiok  Crahme.    In  EQunr. 

Claim  4  of  re-iasned  letters  patent  No.  8,099,  granted  to  Edwin  D.  Brainard,  as 
assignee  of  Frederick  Hinckel,  February  26th,  1878,  for  an  improyed  ma- 
chine for  washing  shavings  in  breweries,  the  original  patent.  No.  86,628, 
haying  been  granted  Jannary  6th,  1869,  namely,  "Ayessel  capable  of  rota- 
tion on  its  axis,  in  combination  with  a  perfected  pipe  for  producing  jets 
of  water  within  such  yessel,  snbstantiaUy  as  described,"  is  substantially  iden- 
tical with  claim  1  of  the  original,  namely,  "  A  hollow  perforated  shaft,  in 
combination  with  the  cylinder  and  the  frame  arranged  and  operating  snbstan* 
tially  in  the  manner  and  for  the  purpose  described,"  and  is  yalid,  although, 
in  the  original,  the  cylinder  is  described  as  suspended  horizontally  on  the 
shaft,  and  as  rotating  by  the  reyolution  of  the  shaft,  while  in  the  re-issue  it  is 
not  stated  to  be  suspended  horizontally,  but  to  be  so  constructed  as  to  admit 
of  a  rotating  or  reciprocatiDg  action. 

The  re-issue  containing  claims  for  the  process  worked  out  by  the  apparatus, 
which  claims  were  not  in  the  original,  the  plaintiff  was  aUowed  to  recoyer  on 
claim  4  of  die  re-issue,  without  costs,  on  filing  a  disclaimer  as  to  the  claim 
for  the  process. 

(Before  Wallace,  J.,  Southern  District  of  New  York,  June  26Ui,  1882.) 

Wajllaoe,  J.  The  doubtful  question  in  this  case  is 
whether  the  re-issned  patent  on  which  this  action  is  founded 
is  for  the  same  invention  as  that  described  and  claimed  in  the 
original.  The  original  patent,  No.  85,528,  bears  date  January 
5th,  1869,  and  is  for  an  improved  machine  for  washing  shav- 
ings in  breweries.  As  described  in  the  specification,  the  in- 
vention consists  of  a  hollow  perforated  shaft  in  combination 


JUNE,   1882.  681 


Brainard  v.  Gramme. 


with  a  hollow  cylinder,  hung  together  in  a  frame,  for  the 
purpose  of  discharging  a  fresh  current  of  water  in  jets  upon 
the  contents  of  the  cylinder  while  it  revolves.  The  frame  is 
described  merely  as  a  strong  rectangular  frame  supported  on 
legs.  The  cylinder  is  made  with  open  staves  or  perforated 
sides,  and  is  suspended  horizontally  in  the  frame,  on  a  hollow 
shaft.  The  shaft  extends  through  the  cylinder  and  is  perfor- 
ated with  a  series  of  holes  on  all  sides.  One  end  of  the  hol- 
low shaft  is  fitted  to  run  in  a  thimble,  on  which  is  screwed  a 
pipe  for  conveying  water  into  the  shaft ;  the  other  end  of  the 
shaft  is  closed  and  carries  a  crank.  The  cylinder  has  a  re- 
movable cover.  In  operation,  the  shavings  to  be  washed  are 
put  into  the  cylinder,  the  cover  is  fastened  and  the  shaft  is 
revolved  by  turning  the  crank ;  the  cylinder  rotates  upon  the 
shaft  and  the  current  of  water  introduced  into  the  perforated 
shaft  is  discharged  in  jets  upon  the  shavings,  as  their  sur- 
faces are  presented  by  the  revolution  of  the  cylinder.  The 
dirty  water  escapes  through  the  openings  of  the  cylinder  at 
its  lower  side.  The  patentee  states,  in  his  description,  that 
cylindrical  washing  machines  are  in  use,  and  he  disclaims  the 
same  as  his  invention.  The  first  claim  is,  '^  A  hollow  perforated 
shaft,  in  combination  with  the  cylinder  and  the  frame  ar- 
ranged and  operating  substantially  in  the  manner  and  for  the 
purpose  described." 

The  re-issned  letters  patent,  No.  8,099,  granted  to  the 
plaintiff  as  assignee  of  Frederick  Hinckel,  bear  date  February 
26th,  1878 ;  and  herein  the  patentee  attempts  to  secure  to 
himself  both  a  process  and  the  apparatus  for  carrying  out  the 
process,  for  washing  shavings  in  breweries.  The  apparatus 
is  described  substantially  as  in  the  original  patent,  except 
that,  in  the  original,  the  cylinder  is  described  as  suspended 
horizontally  upon  the  hollow  shaft,  and  as  rotating  by  the 
revolution  of  the  shaft,  while  in  the  re-issue  the  cylinder 
is  not  stated  to  be  suspended  horizontally,  but  to  be  so  con- 
structed as  to  admit  of  a  rotating  or  reciprocating  action* 
Considerable  new  matter,  however,  descriptive  of  the  process, 
is  introduced.  Two  of  the  claims  relate  to  the  process.  The 
third  and  fourth  relate  to  the  apparatus  and  are  as  follows : 


582  SOUTHERN  DISTRICT  OF  KEW  YORK, 

Brainard  v.  Gramme. 


"  Third.  The  combination  of  a  vessel  capable  of  rotation  on 
its  axis  with  means  for  producing  jets  of  water  within  it, 
substantially  as  described.  Fourth.  A  vessel  capable  of  rota- 
tion on  its  axis,  in  combination  with  a  perforated  pipe  for  pro- 
ducing jets  of  water  within  such  vessel,  substantially  as  de- 
scribed." 

So  far  as  the  re-issue  is  an  attempt  to  secure  to  the 
patentee  the  process  for  the  treatment  of  brewers'  shavings, 
it  is  entirely  inoperative.  The  process,  as  described  and 
claimed  therein,  is  merely  for  the  treatment  of  the  shav- 
ings by  the  employment  of  the  described  apparatus.  It  is 
difficult  to  appreciate  any  practical  beneiit  which  is  obtained 
by  the  patentee  by  calling  his  patent  a  process  patent  instead 
of  one  for  the  machine.  And  it  is  conceded  that,  as  every- 
thing essential  to  the  process  was  pointed  out  in  the  original 
patent  nine  years  before  the  re-issue,  and  in  the  meantime 
other  inventors  have  occupied  the  ground  covered  by  the 
general  subject-matter  of  the  invention,  what  was  therein 
pointed  out  and  not  claimed  is  to  be  deemed  abandoned  to 
the  public,  within  the  recent  decisions  relative  to  re-issues. 
As  to  the  claims  for  the  process,  the  complainant  proposes 
to  file  a  disclaimer. 

The  claims  in  the  re-issue  relating  to  the  apparatus,  con- 
sidered literally,  are  broader  than  the  claim  in  the  original. 
Indeed,  they  describe  the  functions  rather  than  the  mechan- 
ism of  the  apparatus.  But,  they  are  to  be  construed  with 
reference  to  the  specification,  and  so,  if  consistent  with  the 
language  used,  as  to  secure  to  the  patentee  the  invention 
which  is  described.  They  are  not  to  be  construed,  if  the  lan<* 
guage  will  reasonably  bear  such  an  interpretation,  so  as  to 
embrace  any  invention  broader  in  its  scope  than  that  in  the 
original  patent. 

In  view  of  the  state  of  the  art,  and  of  the  apparatus  de- 
scribed in  the  original  patent  and  shown  in  the  drawings,  the 
patent  was  for  a  new  combination  of  old  parts,  which  con- 
sisted in  locating  the  hollow  perforated  shaft  within  a  hollow 
cylinder  having  openings  in  its  sides,  and  suspended  horizon- 


JUNE,  1882.  53^ 


Brainard  v,  Cnunme. 


f 

tally  in  a  frame,  so  that  cylinder  and  shaft  rotate  together,  by 
turning  the  crank  of  the  shaft. 

The  gist  of  the  invention  wa3  in  the  adaptation  of  the 
several  parts  for  the  specific  purpose  desired.  The  pectiliar 
materials  to  be  washed  required  special  instrumentalities.  A 
machine  for  cleaning  rags,  containing  a  revolving  horizontal 
cylinder  mounted  on  hollow  axles,  through  which  water  can 
be  conveyed  to  the  contents  of  the  cylinder  and  can  escape 
through  perforated  plates  at  the  end,  is  shown  in  the  English 
patent  to  Foudrinier,  of  1854.  But  in  this  patent  there  is 
not  shown  a  hollow  shaft  running  into  the  cylinder,  to  dis- 
charge jets  of  water  upon  the  contents  of  the  cylinder. 

A  machine  for  forcing  liquids  into  the  contents  of  a  ves- 
sel capable  of  rotation  on  its  axis,  through  a  perforated  verti- 
cal shaft,  is  shown  in  the  English  patent  to  Givine,  in  1851. 
But  the  contents  are  placed  in  cages  of  wire  gauze  and  the 
vessel  itself  is  tight.  These  two  English  patents  present  the 
nearest  approximation,  in  the  prior  state  of  the  art,  to  the 
present.  They  are  not  anticipations ;  neither  of  them  would 
satisfactorily  do  the  work  required  of  a  niachine  for  washing 
brewers'  shavings.  There  can  be  no  doubt  that  it  required 
thought  and  inventive  faculty  to  organize  the  distinctive  fea- 
tures of  these  prior  inventions  into  the  present  mechanism, 
so  as  to  adapt  them  to  the  special  work  to  be  done. 

Beverting,  now,  to  the  claims  of  the  re-issue  relating  to 
the  apparatus,  the  doubt  which  they  suggest  is,  whether  they 
are  not  to  be  construed  as  broad  enough  to  embrace  a  cylin- 
der which  is  not  horizontally  suspended  and  which  is  not  ro- 
tated by  means  of  the  hollow  shaft.  The  vessel  capable  of 
rotation  on  its  axis,  and  the  perforated  pipe  for  producing 
jets  of  water  within  such  vessel,  are  clearly  referable  to  the 
cylinder  and  the  shaft  described  in  the  specification ;  bat  the 
doubt  is,  whether  the  specification  of  the  re-issue  does  not 
describe  a  cylinder  which  need  not  be  horizontally  suspended, 
and  which  will  admit  of  a  reciprocating  as  well  as  a  rotating 
action  upon  the  shaft.  Considered  in  its  entirety,  it  would 
seem,  from  the  specification,  that  the  horizontal  cylinder  is 


534  SOUTHERN  DISTRICT  OF  NEW  YORK, 

BraiDard  v.  Gramme. 

indispenBable  to  the  efficiency  of  the  mechanism ;  and  there 
ifl  nothing  in  the  description  which  refers  to  any  means  for 
conveying  reciprocating  action  to  the  cylinder.  In  the  ab- 
sence of  anything  in  the  proofs  to  indicate  any  reason  for  an 
expansion  of  the  claim,  and  in  view  of  the  apparent  necessity 
of  employing  a  cylinder  which  is  suspended  horizontally  and 
is  rotated  by  the  shaf  t,  the  conclusion  is  reached,  that  the 
fourth  claim  of  the  re-issue  can  be  sustained  as  substantially 
identical  with  the  first  claim  of  the  original  patent. 

The  defendant  has  appropriated  the  invention  thus  se- 
cured to  the  complainant,  and  it  may  be  that  the  desire  to 
protect  the  complainant  against  the  piracy  of  his  invention 
has  led  to  undue  liberality  in  the  construction  of  the  re-issue. 
Precedents  are  not  wanting,  however,  to  justify  such  a  broad 
construction.  Swain  Turbine  ds  Ma/nufacturing  Co.  v. 
Ladd,  (2  Banning  dk  Arden  Pat  Cas,^  ^88^)  is  ^  point, 
where  a  more  nebulous  claim  than  the  present  Wjas  sustained, 
by  limiting  it  to  the  particular  mechanism  described.  This 
case  was  affirmed  by  the  Supreme  Court.    (102  U.  S.y  408.) 

It  is  not  intended  to  intimate  that  the  defendant's  patent 
is  not  a  valid  one.  Yery  possibly  his  mechanism  is  an  im- 
provement upon  the  complainant's,  but  this  will  not  protect 
him  from  the  charge  of  infringement. 

The  complainant  will  have  a  decree  for  an  injunction  and 
accounting,  but  without  costs,  upon  making  due  proof,  on 
notice  to  the  adverse  party,  of  the  filing  of  a  disclaimer  as  to 
the  claims  for  the  process,  according  to  law. 

Andrew  J,  Todd,  for  the  plaintiff. 

Edwa/td  Fitoh^  for  the  defendant. 


JUNE,  1882.  S35 


Ransom  v.  Geer. 


Aason  p.  Baksom  akd  Wabben  A.  Bansom,  Exeoutobs,  &o. 

■ 

Dabius  W.  Geeb.    In  EQTjmr. 

O.,  a  co>ezecator  with  A.  and  W.,  borrowed  the  loodB  of  the  estate,  and  gaye 
bonds  and  mortgages  therefor  to  himself  and  his  co-execntors,  as  obligees  and 
mortgagees.  On  a  sale  of  the  mortgaged  property  nnder  a  foreclosure  of  the 
mortgages,  there  was  a  deficiency.  On  a  settlement  of  their  acconnts,  the  ex- 
ecutors were  anthorized  to  retain  a  certain  som  as  commissions,  one-third  of 
which  was  the  share  of  G.  The  co-executors  brought  this  bill  in  equity  for  a 
decree  to  apply  to  the  debt  of  G.  his  share  of  commissions :  Sield,  that  the 
bill  would  lie,  the  sole  remedy  being  in  equity. 

Beld,  also,  that  the  plaintifb  were  entitled  to  the  share  of  a  composition  in 
bankruptcy  payable  by  G.,  to  be  computed  on  such  deficiency ;  and  that  th« 
debt  was  not  discharged  by  the  composition,  because  there  had  been  no  pay- 
ment or  ofier  to  pay  according  to  the  composition. 

(Before  Wallack,  J.,  Southern  District  of  New  York,  Jane  27th,  1882.) 

Wallace,  J.  The  complainaBts'  bill  is  filed  npon  the 
theory  that  they  are  entitled  to  invoke  the  jurisdiction  of 
equity  to  set-off  the  cross  demands  between  themselves  and 
the  defendant. 

The  complainants  and  defendant  were  co-executors  and 
trustees  under  the  will  of  Jonathan  D.  Bansom,  deceased, 
and,  upon  several  occasions,  the  defendant  borrowed  a  portion 
of  the  trust  funds  and  executed  and  delivered  his  three  sev- 
eral bonds  and  mortgages  therefor.  The  defendant  was 
named  as  one  of  the  obligees  in  the  bonds,  and  as  one  of  the 
mortgagees  in  the  mortgages  executed  by  him.  He  failed  to 
make  payment,  and  the  mortgages  were  foreclosed  in  the 
Court  of  Chancery  of  New  Jersey,  and  the  mortgaged  prem- 
ises were  sold  under  the  decree,  on  the  7th  day  of  October, 
1879.  The  sale  failed  to  satisfy  the  mortgages  and  a  defi- 
ciency arose  in  the  sum  of  $21,290  40. 

The  bill  alleges,  and  the  answer  admits,  that,  under  the 


580  SOUTHERN  DISTRICT  OF  NEW  YORK, 

RftDBom  V,  Geer. 

decree  of  the  Surrogate  of  the  city  and  couDty  of  New  York, 
the  accountB  of  the  executors  and  truBtees  have  been  finally 
settled,  and  that  they  are  authorized  to  retain  out  of  the 
funds  remaining  in  their  hands  the  sum  of  $14,034  60,  as 
commissions,  of  which  the  share  of  the  defendant  is  one- 
third,  or  $4,678  20 ;  that  the  defendant's  share  still  remains 
undrawn ;  and  that  he  refuses  to  apply  such  sum  towards  the 
payment  of  his  indebtedness  to  the  estate  and  is  insolvent. 
The  defendant  insists  that  the  facts  do  not  present  a  case  for 
equitable  cognizance  and  that  the  complainants'  remedy  is  at 
law. 

Upon  the  facts  alleged  and  proved  the  complainants  are 
not  required  to  maintain  the  suit  upon  the  theory  that  equity 
will  set-off  the  cross  demands  of  the  parties  because  of  the 
insolvency  of  the  defendant.  The  defendant  is  both  an  obli- 
gor and  an  obligee  in  the  bonds,  and  could  not  be  both  plaint- 
iff and  defendant  in  an  action  at  law  founded  upon  them* 
{Moffatt  V.  Vom  MtUlmgerij  2  ChiMy^s  R,^  539 ;  Teague  v.  Huh- 
lard,  8  B.ds  C,  345 ;  Smith  v.  Lusher,  5  Cow.,  688.)  The 
remedy  of  the  co-obligors  is  in  equity.  (JBradfcrd  v.  WU- 
liamSy  4  How,,  576.)  As  is  stated  in  Broom  on  Parties,  {sec. 
134,)  owing  to  the  community  of  interest,  no  action  lies  at  law 
by  one  executor  or  administrator  against  his  co-representative, 
but  the  remedy  is  in  equity.  See,  also,  Smith  v.  Zawrenoey 
(11  Faige,  206.)  In  Warner  v.  Spooner,  (3  Fed.  Rep.,  890,) 
the  right  of  a  bankrupt  to  prove  against  his  estate  a  demand 
in  favor  of  an  estate  of  which  he  is  an  administrator,  is  placed 
upon  the  equitable  jurisdiction  possessed  by  Courts  of  bank- 
ruptcy. 

The  complainants  are,  therefore,  properly  here  to  recover 
the  deficiency  arising  npon  the  sale  of  the  mortgaged  prem- 
ises, and,  as  they  have  in  their  hands  the  funds  out  of  which 
the  defendant's  commissions  are  payable,  they  can  retain  the 
sum  due  as  his  share  and  apply  it  to  reduce  his  indebtedness 
to  the  estate. 

It  is  insisted  in  defence  of  the  action,  that  the  defendant 
is  discharged  from  his  indebtedness  to  the  estate  by  his  com- 


JUNE,   1882.  687 


Ransom  v.  Geer. 


poBition  proceedings  in  bankruptcy.  So  far  as  the  rights  of 
the  parties  depend  upon  the  effect  of  the  composition,  it  must 
be  held,  on  the  anthority  of  Pa/ret  v.  Ticknor^  (16  If.  B.  R. 
815,)  and  In  lie  CoJhy,  {MS,y  U.  S.  Diet  Court,  Southern 
DiM.  of  New  York^  that  the  executors  are  entitled  to  be  paid 
the  composition  percentage  upon  the  amount  of  the  indebted- 
ness for  which  their  security  proved  to  be  insufficient. 

The  defendant,  while  alleging  the  composition  proceeding 
as  a  bar  to  the  action,  does  not  allege  or  prove  that  he  has  ever 
offered  to  pay  the  complainants  according  to  the  terms  of  the 
composition  resolution.  The  creditors'  debt  is  not  discharged 
by  the  resolution  only.  It  is  discharged  only  when  the  terma 
of  the  composition  are  carried  out.  {In  re  Beiman,  12 
Blatchf.  C.  C.  B.y  562 ;  In  re  Hatton,  1.  R.,  7  Ch.  App.^ 
728 ;  Edwards  v.  Coornbe,  Z.  ^.,  7  Com.  PleaSy  619 ;  Oddney 
V.  Lording,  L.  jS.,  8  Q.  J?.,  182.)  The  bankruptcy  Court,  in 
the  exercise  of  its  supervisory  jurisdiction,  can  enforce  the 
composition  as  against  creditors  or  as  against  the  debtor,  but 
even  that  Court  will  not  restrain  a  creditor  from  pursuing  his 
action  to  recover  his  debt,  when  the  debtor  has  failed  to  carry 
out  the  provisions  of  the  composition.  In  the  present  case, 
the  defence  assumes  the  aspect  of  an  accord  without  a  satis- 
faction. 

The  sum  due  to  the  executors  as  unsecured  creditors  was 
not  established  until  the  sale  of  the  mortgaged  premises,  Oc- 
tober 7th,  1879.  That  was  a  judicial  sale,  to  which  the  de- 
fendant was  a  party,  and  he  is  precluded  from  asserting  that 
the  sum  realized  was  not  a  fair  sum.  Doubtless,  a  tender  of 
performance  of  the  composition  resolution  by  the  defendant 
at  that  time,  or  within  a  reasonable  time  after,  would  have 
satisfied  the  law.  Whether,  in  view  of  the  subsequent  delay, 
the  Court  of  bankruptcy  would  interpose  to  require  the  exec- 
utors to  accept  the  composition  percentage  and  would  have 
stayed  this  action  to  recover  the  indebtedness,  is  a  question 
which  does  not  require  decision  here ;  this  Court  has  not  the 
power  to  do  so.  For  present  purposes,  the  defendant  is  to  be 
considered  as  seeking  to  avail  himself  of  a  discharge  without 


588  80UTHERH  DLSTRICT  OF  HEW  YORK, 

Gardner  v.  Heriw 

baying  performed  the  conditions  essential  to  its  efficacj  as  a 
defence ;  and  a  Court  of  eqnity  can  no  more  qualify  or  enUuf^ 
its  operation  than  conld  a  Coort  of  law. 

A  decree  is  ordered  for  the  oomplainantSy  adjudging  due 
to  them  from  the  defendant  the  som  of  $21,290  40,  with  in- 
terest from  October  7th,  1879,  and  aathorizing  the  complain- 
ants to  applj  thereon  the  sum  of  $4,678  20,  the  defendant's 
share  of  the  conmiissions,  in  discbarge  of  the  liability  of  the 
complainants'  estate  to  the  defendant  personally,  with  costs 
to  the  complainants. 

John  Notmcmy  for  the  plainti£b. 

David  J.  H.  WilleoXy  for  the  defendant. 


William  Gabdneb  akb  othebs 

vs. 
Mabtdt  Hebz  Ain>  John  K.  Mayo.    Ik  EQunr. 

CUdm  2  of  re-issued  letters  patent  No.  9,094,  granted,  Febniary  24th,  1880,  to 
Oliyar  L.  Gardner,  William  Gardner,  and  Jane  £.  Gardner,  assignees  of 
George  Gardner,  for  an  improyement  in  chair-seats,  namely,  "  A  chair- 
seat  made  of  lamins  of  wood  glued  together,  with  the  grains  in  one  layer 
crossing  those  of  the  next,  concaye  on  the  upper  snr£aoe,  conyex  on  the  lower 
surface,  and  perforated,  as  a  new  article  of  manufiicture,  substantially  as  set 
forth,"  (the  original  patent,  No.  127,046,  haying  been  granted  to  George  Gard- 
ner, May  21st,  1872,  and  re-issued  as  No.  7,208,  July  4th,  1876,)  does  not  claim 
any  patentable  inyention,  the  form  of  the  seat  being  old,  the  material  being 
old,  and  the  method  of  imparting  the  form  to  the  material  being  old. 

(Before  Wallaok,  J.,  Southern  District  of  New  York,  June  27th,  1882.) 

Wallace,  J.  This  action  is  brought  to  restrain  the  in- 
fringement of  re-issued  letters  patent  No.  9,094,  dated  Feb- 
ruary 24th,  1880,  granted  to  Oliver  L.  Gardner,  William 
Gardner,  and  Jane  E.  Gardner,  assignees  of  George  Gardner, 


JUNE,  1882.  539 


Gardner  ».  Hers. 


for  an  improvement  in  chair-seats.  The  re-issue  contains 
two  claims,  of  which  the  second  only  need  be  stated,  which 
is :  ^^  A  chair-seat  made  of  laminsB  of  wood  glued  together, 
with  the  grains  in  one  layer  crossing  those  of  the  next,  con- 
cave on  the  upper  surface,  convex  on  the  lower  surface,  and 
perforated,  as  a  new  article  of  manufacture,  substantially  as 
set  forth." 

The  original  patent.  No.  127,045,  was  granted  to  Gteorge 
Gardner,  May  21st,  1872,  and  contained  but  a  single  claim, 
as  follows :  '^  As  a  new  article  of  manufacture,  a  chair-seat 
constructed  of  veneers  of  wood,  with  the  grains  running 
crosswise  of  each  other,  and  glued  together,  all  substantially 
as  set  forth  and  for  the  purpose  specified."  This  patent  has 
been  twice  re-issued,  the  first  re-issue,  No.  7,203,  bearing  date 
July  4th,  1876.  The  first  re-issue  has  been  before  this  Court 
upon  a  motion  for  a  preliminary  injunction  founded  upon  it, 
{Oardner  v.  Herz^  16  Blatchf.  G.  C,  R,y  303,)  and  it  was 
decided  by  Judge  Blatchford,  upon  that  occasion,  that  none 
of  the  claims  of  that  re-issue  were  valid,  except  the  sixth, 
which  was  not  in  controversy  and,  therefore,  was  not  consid- 
ered. The  second  claim  of  that  re-issue  was  as  follows:  ^^As 
a  new  article  of  manufacture,  a  bottom  for  a  seat  frame, 
constructed  of  two  or  more  veneers  or  thin  layers  of  wood, 
with  the  grain  of  the  one  layer  crossing  that  of  the  other, 
said  layers  being  secured  together  by  an  adhesive  substance, 
and  having  perforations  formed  therein  for  the  purpose  of 
ventilation  or  ornamentation,  substantially  as  set  forth.''  On 
that  occasion,  Judge  Blatchford  held  that  the  claim  of  the 
original  patent  was  anticipated  by  a  patent  granted  to  John 
£.  Mayo,  one  of  the  present  defendants,  December  26th, 
1865,  and  re-issued  to  him  and  two  others,  August  18th,  1868, 
in  8  divisions.  This  patent  was  for  an  improvement  in  the 
manufacture  of  material,  which  consisted  in  cementing 
together  a  number  of  scales  or  veneers  of  wood,  with  the 
grain  of  the  successive  pieces  running  crosswise  or  diversely, 
so  as  to  form  a  firm  material  adapted  for  the  construction  of 
various  articles,  including  chairs  and  settees.    In  division  E 


» 


640  SOUTHERN  DISTRICT  OF  NEW  YORK, 


Gardner  v.  Hers. 


of  the  re-iesne,  the  specification  states :  ^'  In  the  chair,  fig.  2, 
the  bottom,  B,  may  be  formed  of  flexible  material,  made  np 
by  the  nnion  of  two  or  more  thin  layers  of  wood  having  the 
grain  crossed  or  diversified  in  direction,  and  united  by  snita- 
ble  cement."  The  specification  also  states,  that,  '^by  adopting 
the  well-known  process  of  wet  and  dry  heating  in  the  course 
of  manufacture,  the  several  scales  of  wood  may  be  brought 
to  such  a  state  of  pliability  as  to  assume  any  desired  form,  by 
compression  in  a  matrix  or  upon  formers."  Upon  the  occa- 
sion referred  to,  Judge  Blatchford  likewise  held,  that  there 
was  no  patentable  novelty  in  the  second  claim  of  the  first  re- 
issue of  Gardner's  patent,  in  view  of  the  patents  prior  to 
Gardner's,  one  to  Tice  and  one  to  Cochran,  for  perforated 
chair-seats  of  metal  or  gutta-percha.  It  follows,  therefore, 
that  the  only  question  not  heretofore  decided  by  this  Court, 
and  now  open,  relating  to  the  present  re-issue,  is  whether  the 
concavity  of  form  which  is  an  element  of  the  new  claim  in 
this  re-issue  will  support  the  patent. 

Chair-bottoms  made  of  board  and  softened  by  steam  and 
pressed  to  a  concave  shape  in  a  mould,  so  that  the  form  of 
the  seat  will  conform  to  the  shape  of  the  person  who  may 
occupy  it,  are  shown  in  the  letters  patent  issued  to  Z.  B. 
Bellows,  bearing  date  March  15th,  1859.  So,  also,  the  concave 
or  dishing  form  of  chair-seats  had  been  adopted  long  before 
Gardner's  patent,  in  ordinary  chair-seats.  In  the  specification 
of  the  present  re-issue  the  inventor  states  that  he  does  not 
lay  any  claim  to  the  veneers  crossing  each  other  and  glued 
together,  as  these  have  been  used  for  various  purposes  and 
have  become  public  property,  and  that  he  does  not  claim  the 
pressing  of  a  chair-seat  into  the  concave  form  by  dies. 

If  there  was  no  patentable  novelty  in  using  the  perfora- 
tions of  the  metal  or  gutta-percha  chair-seats  in  the  veneer 
seat  by  Gardner,  neither  can  there  seem  to  be  any  in  employ- 
ing a  well-known  form  of  chair-seat  in  his  veneer  seat.  Ab 
it  had  been  pointed  out  by  Mayo  that  the  material  used  is 
pliable  and  can  be  pressed  into  any  desired  form,  and  as  the 
re-issue  disclaims  the  pressing  of  a  chair-seat  into  a  concave 


JUNE,  1882.  641 


Gardner  v.  Hers. 


form,  and  as  chair-seats  liad  been  so  formed,  it  is  difiScnlt  to 
see  how  there  was  any  invention  in  Gardner's  chair-seat. 
Gardner  merely  applied  a  process  that  was  old  to  a  material 
that  was  old,  to  obtain  an  old  form.  Considered  as  a  combi- 
nation, it  is  hardly  possible  to  believe  that  the  perforations  or 
the  concavity  performed  any  new  functions  in  the  Gardner 
seat.  An  ingenious  theory  has  been  presented,  to  the  effect 
that  the  perforations  and  concavity  co-operate,  in  Gardner's 
seat,  to  prevent  warping  and  curling  of  the  material  used.  If 
this  is  true,  the  same  elements  were  combined  in  the  Bailey 
chair  back  and  performed  there  the  same  functions  they  per^ 
form  in  the  Gardner  seat.  It  may  be  that  the  Gardner 
seat  is  mechanically  a  better  seat  than  any  which  preceded  it, 
but  his  improvement  is  not  a  patentable  one. 

It  is  strenuously  insisted,  that  the  popularity  and  success 
achieved  by  the  Gardner  seat,  beyond  those  of  his  predeces- 
sors, affords  cogent  evidence  both  of  the  utility  and  patentable 
novelty  of  his  invention.  The  answer  to  this  argument  is, 
that  the  success  of  his  seat  is  probably  due  to  a  feature  which 
is  not  suggested  in  the  original  patent,  that  is,  its  adaptability 
for  use  by  unskilled  workmen.  His  seats,  as  now  made,  can 
be  fitted  without  mechanical  skill  to  a  bottomless  chair,  and 
are  largely  used  to  repair  chairs  in  which  the  original  seats 
have  been  worn  out,  and  can  be  so  used  without  any  special 
skill.  They  are,  also,  largely  sold  to  chair-manufacturers, 
because  they  can  be  easily  adapted  to  chairs  of  different  sizes 
and  seats  of  different  forms.  But,  the  chair-seat  described  in 
Gardner's  original  patent,  and  shown  in  the  drawings,  did  not 
practically  possess  this  characteristic  of  adaptability,  but  was 
a  frame  seat,  which  could  only  be  fitted  to  a  chair  by  a  skilled 
laborer.  Such  a  chair>seat  would  fail  to  meet  the  peculiar 
want  which  the  present  chair-seat  supplies.  Considered  as  a 
new  article  of  manufacture,  if  the  complainant's  chair-seat 
has  no  frame,  and  its  novelty  and  utility  consist  in  its  adapt- 
ability to  be  sold  separate  from  the  frame,  and  to  be  readily 
applied  by  any  person  to  any  chair,  then  the  re-issue  is  for  a 
different  invention  from  that  disclosed  in  the  original  patent. 


642  SOUTHERN  DISTRICT  OF  KEW  YORK, 

The  CoUioB  Company  v.  Olhrer  Ames  S  Sons  Corporation. 

In  conclusion,  in  view  of  the  former  decision  of  this 
Court,  the  complainant  can  only  succeed  upon  the  theory  that^ 
by  imparting  a  concave  form  to  his  chair-seat,  he  has  imparted 
BufScient  patentable  novelty  to  his  article  to  sustain  a  patent ; 
and  this  when  such  a  form  of  chair-seat  was  old,  the  material 
used  was  old,  and  the  method  of  imparting  the  form  to  the 
material' was  old.    This  theory  cannot  stand. 

The  bill  must  be  dismissed. 

Oeorge  Oifford,  for  the  plaintiffs. 
■   James  P.  Foster^  for  the  defendants. 


The  Collins  Company 

vs. 

OuvEB  Ames  &  Sons  Corporation.    In  Equity. 

Prior  to  18S4,  S.  W.  Collins,  D.  C.  Collins  and  another,  copartners  as  Collins  A 
Co.,  made  edge  tools,  using  as  a  trade-mark  "  Collins  A  Co."  In  1884  they  as- 
signed to  the  Collins  Mannfiactaring  Company,  a  corporation,  the  right  to  sach 
trade-mark.  In  1848  the  right  to  make  aU  articles  of  metal  was  conferred  on 
the  corporation  and  its  name  was  changed  to  the  Collins  Company,  the 
plaintiff.  It  always  stamped  "  Collins  A  Co."  on  its  prodnctions.  In  1866 
the  firm  of  Oliver  Ames  A  Sons  began  to  pat  the  stomp  and  label  "  Collins  & 
Co."  on  shoyels  made  by  it,  and  sent  to  Australia.  The  plaintiff  had  not  up 
to  that  time  made  shovels,  but  it  had  a  market  in  Australia  for  the  articles  it 
made  and  stamped  "Collins  A  Co."  The  object  of  Oliver  Ames  A  Sons  in  put- 
ting  the  stamp  "CoUins  &  Co."  on  the  shovels  was  to  avail  themselves  of  the 
credit  and  reputation  and  market  which  the  plaintiff  had  established  for  it- 
self, for  articles  stamped  "Collins  A  Co."  The  plaintiff,  at  the  time  of  bring- 
ing this  8uit»  had  not  sent  or  sold  any  shovels  to  Australia.  The  defendant, 
in  succession  to  Oliver  Ames  A  Sons,  continued  to  do  what  the  latter  so  began 
to  do  in  1866 :  Heldf  that  the  acts  of  Oliver  Ames  A  Sons  and  of  the  defendant 
were  always  unlawful. 

The  plaintiff  having  had,  from  1848,  the  right  to  make  all  articles  of  metal,  and 
having  g^ne  on,  from  that  time,  both  before  and  after  1866,  extending  its 
manufacture  beyond  edge  tools  into  digging  tools,  such  as  picks  and  hoes,  and 


JULY,  1882.  548 


The  Collins  Company  v.  Oliyer  Ames  A  Sons  Corporation. 

haying  always  pnt  the  mark  "  Collins  <b  Co."  on  its  best  quality  of  articles, 
the  fiict  that  it  did  not  before  1856  make  a  digging  tool  such  as  the  shovel  on 
which,  in  1856)  Ames  <b  Sons  put  the  mark  "  Collins  &  Co."  does  not  warrant 
the  conclusion  that  that  mark  was  not,  in  1856,  the  mark  of  the  plaintiff's 
trade  in  respect  to  such  shoyels. 

(Before  BLATOHFonn,  J.,  Southern  District  of  New  York,  July  8d,  1882.) 

Blatchfobd,  J.  Prior  to  May,  1834,  Samuel  W.  Collins, 
David  C.  Collins  and  John  F.  "Wells,  as  copartners  under  the 
name  of  Collins  &  Co.,  had  been  carrying  on,  in  the  State  of 
Connecticut,  the  business  of  making  and  selling  axes  and 
other  edge  tools.  They  had  been  in  the  habit  of  using  as  a 
trade-mark  the  words  "  Collins  &  Co.,"  stamped  on  the 
articles  which  they  made.  They  failed  in  business.  In  May, 
1884:,  the  Legislature  of  Connecticut  created  a  corporation  by 
the  name  of  "  The  Collins  Manufacturing  Company,"  to  be 
located  in  the  town  of  Canton,  in  that  State,  "  for  the  pur- 
pose of  manufacturing  edge  tools."  In  October,  1834,  the 
copartners  in  said  firm  assigned  to  said  corporation  ^'the 
reputation  and  good-wUl  of  the  business  heretofore  carried  on 
by  the  said  firm  of  Collins  &  Co.,  of  manufacturing  and 
vending  axes  and  other  edge  tools,  also  the  right  to  stamp  the 
name  of  Collins  &  Co.  on  the  articles  manufactured  by  the 
said  corporation."  From  that  time  until  April  3d,  1835,  the 
corporation  had  Samuel  W.  Collins  and  David  C.  Collins  in 
its  employ.  On  the  latter  date  each  of  those  persons  exe- 
cuted an  agreement  with  the  corporation,  whereby  he  agreed 
to  continue  in  its  employ  for  5  years  from  September  27th, 
1834,  and  it  agreed  to  employ  him  for  that  time,  and  he  as- 
signed to  the  corporation  "  the  reputation  and  good-will  of 
the  business  heretofore  carried  on  by  Collins  &  Co.,  of  manu- 
facturing and  vending  axes  and  other  edge  tools,  also  the  sole 
and  exclusive  right  to  stamp  the  name  of  Collins  &  Co., 
Hartford,  on  the  articles  manufactured  by  said  corporation," 
and  he  agreed  not  to  sell  any  axes  or  other  edge  tools  having 
on  them  the  name  of  Collins  or  Collins  &  Co.,  except  such  as 
should  be  made  by  said  corporation,  its  successors  or  as- 


644  SOUTHERN  DISTRICT   OF  NEW  YORK, 

The  CoUins  Company  v,  Oliver  Ames  <b  Sons  CorporttioiL 

signs.  The  consideration  of  each  agreement  was  an  annual 
salary  and  certain  shares  of  the  capital  stock  of  the  corpora- 
tion. In  Majy  1843,  the  Legislatare  of  Connecticnt  altered 
and  enlarged  the  charter  of  the  corporation,  so  that  it  should 
have  "  power  to  manufacture  iron  and  steel  and  other  metals, 
and  any  articles  composed  of  said  metals,  or  either  of  them," 
and  enacted  that  the  name  of  the  corporation  should  be  '^  The 
Collins  Company,"  instead  of  ^^  The  Collins  Manufacturing 
Company,"  these  provisions  being  conditioned  on  their  ac- 
ceptance by  the  corporation  at  a  future  meeting  of  the  same, 
duly  convened.  In  October,  1844,  such  a  meeting  was  duly 
convened,  and  at  it  the  stockholders  accepted  the  said  altera- 
tions of  the  charter.  The  capital  stock  of  the  corporation 
was  originally  $300,000.  The  Legislature  increased  it  in  1868 
to  $500,000,  and  in  1866  to  $1,000,000. 

The  factories  of  the  corporation  have  always  been  at  Col- 
linsville,  in  the  town  of  Canton,  in  Hartford  county,  Con- 
necticut, about  16  miles  from  Hartford.  The  manufacturing 
business  of  the  old  firm  of  Collins  &  Co.  had  been  carried  on 
at  Collinsville.  It  had  an  ofiSce  in  Hartford.  The  charter  of 
the  corporation  was  obtained  for  the  benefit  of  the  creditors 
of  the  firm,  and  the  property  of  the  firm  passed  into  the  pos- 
session of  the  corporation  and  became  a  part  of  its  capital 
stock. 

The  complaint  in  this  suit  alleges  that  the  plaintiff  cor- 
poration has,  from  its  organization,  been  engaged  in  making 
^'  axes,  hatchets,  adzes,  picks  and  other  agricultnral  and  me- 
chanical tools  and  implements ; "  that  it  has  always  used  as  its 
trade-mark  the  name  of  ^^  Collins  &  Co.,"  but  has  placed  and 
now  places  that  name  upon  such  goods  only  as  have  obtained 
a  high  standard  of  excellence;  that  said  trade-mark  name 
was  intended  to  and  did  inform  purchasers  that  the  goods 
upon  which  it  appeared  were  of  the  manufacture  of  the 
plaintiff  exdasively ;  that  its  goods,  made  at  Collinsville, 
have  been  and  are  almost  exclusively  sold  on  commission  in 
the  city  of  New  York,  by  a  firm  there  called  Collins  &  Co., 
which  has  existed  since  1849 ;  that  the  goods  of  the  plaintiff 
*^  have  been  and  are  sold  in  large  quantities  in  all  parts  of  this 


JULY,   1882.  645 


The  Golline  Company  v.  Oliyer  Ames  A  Sons  Corporation. 

country,  in  Mexico,  in  most  coud tries  of  South  America,  and 
in  the  West  India  Islands,  in  England,  Germany,  Eussia  and 
other  countries  of  Europe,  and  also  in  parts  of  Asia  and 
Africa  and  in  Australia ;  that  the  plaintiff,  for  more  than  30 
years  last  past,  has  gradually  increased  and  extended  its  man- 
uf acture,  from  "  axes,  hatchets,  broad  axes,  picks,  mattocks  and 
other  similar  tools  and  implements,"  '^  eo  as  to  include  there- 
in other  mechanical  and  agricultural  tools  and  implements, 
such  as  hoes  of  various  descriptions,  machetes,  and  other  cane 
cutting  implements  for  use  in  the  West  Indies  and  South 
America,  and  also,  about  the  year  1857,  special  implements, 
and  tools  for  digging  Peruvian  guano,  and,  soon  afterwards,, 
other  implements  and  tools,  such  as  spades  and  plows  ";  that,, 
for  more  than  10  years  last  past,  it  has  made  and  sold  shovels, 
of  various  forms,  patterns  and  descriptions,  and  its  trade^ 
especially  for  export,  in  such  shovels,  has  been,  and  is  now, 
successful  and  profitable ;  and  that  the  best  qualities  of  the  said 
tools  and  implements  of  the  plaintiff's  manufacture  have  been 
and  are  stamped  or  branded  with  the  said  name  and  words 
'^  Collins  &  Co.,"  and  the  shovels  so  made  and  sold  by  it  have 
been  and  are  now  stamped  or  branded  and  labelled  with  the 
said  name  and  words  '^  Collins  &  Co." 

The  defendant  is  a  corporation  created  by  the  State  of 
Massachusetts,  having  its  factories  at  North  Easton  in  that 
State,  and  largely  engaged  in  making  shovels,  spades,  scoops, 
and  other  similar  implements  and  tools.  The  complaint  al- 
leges, that,  in  the  autumn  of  the  year  1879,  the  plaintiff  for 
the  first  time  discovered  that  shovels  had  been  and  were  be- 
ing sold  in  the  city  of  New  York,  having  stamped  or  branded 
upon  the  iron  the  name  and  words  "  Collins  &  Co.,"  "  Cast 
Steel,"  and  that  upon  the  handles  thereof  were  pasted  or 
fastened  labels  which  had  the  following  words  printed  or  en« 
graved  thereon : 

Vol.  XX.— 86 


646  SOUTHERN  DISTRICT  OF  NEW  YORK. 

The  ColliiiB  Company  v.  Oltyer  Ames  A  Sons  Corporation. 


''  Beet  Cast  Steel, 
Manufactured  and  Warranted    - 

by 

Collins  &  Co., 

Korth  Easton, 
Mass., 

U.  S.  A." ; 
that  tbe  said  shovels  were  in  fact  made  and  so  stamped  or 
branded  and  labelled  by  tbe  defendant  and  not  by  the  plaint- 
iff ;  that  said  shovels  were  sold  by  the  defendant  in  the  city 
of  New  York ;  that  the  statement  and  representation  con- 
tained in  and  made  by  said  stamps  or  brands  and  lal)els,  that 
the  said  shovels  were  made  by  ^'  Collins  &  Co.,"  is  false ;  that 
no  such  firm  as  "  Collins  &  Co."  is  or  has  been  enga^d  in 
any  such  manufacture  at  North  Easton,  Massacha setts;  that 
no  firm  in  the  country  in  the  same  business  bears  the  name  of 
*'  Collins  &  Co.''  other  than  that  represented  by  the  plaintiff 
or  its  said  commission  house  of  Collins  &  Co.  of  New  York  ; 
that  the  shovels  made  by  the  defendant,  and  so  branded, 
stamped  and  labelled  "  Collins  &  Co.,"  have  been  and  are 
now  being  sold  by  it  in  the  city  and  State  of  New  York,  and 
elsewhere  in  the  country,  and  considerable  quantities  thereof 
have  been  exported  to  foreign  countries,  such  as  AustraUa, 
South  Africa  and  elsewhere ;  that  the  use  of  the  name  of  "  Col- 
lins &  Co."  on  shovels  or  any  other  articles  by  the  defendant 
is  unaathorized ;  that  said  name  has  been  taken  and  is  so  used 
by  the  defendant  to  induce  purchasers  to  believe  that  said 
goods  were  and  are  made  by  the  plaintiff,  that  the  effect  of 
such  use  and  misrepresentation  by  the  defendant  is  also  to 
defraud  the  plaintiff  in  its  trade  and  to  injure  its  reputation ; 
that,  in  December,  1879,  the  defendant  was  requested  by  the 
plaintiff  to  discontinue  the  use  of  the  name  of  ^^  Collins  & 
Co."  on  shovels,  tools  and  implements  made  and  to  be 
made  by  the  defendant,  bat  it  refused  to  do  so  ;  that  the  de- 
fendant makes  and  sells  shovels  with  the  name  of  ^'  Collins  & 
Co."  thereon,  and  said  shovels  are  of  an  inferior  quality  to 
those  of  the  plaintiff,  and  also  of  an  inferior  quality  to  those 


JULY,  1882.  647 


The  Collins  Company  v.  Oliyer  Ames  A  Sons  Corporation. 

oi  the  defendant  upon  which  it  uses  its  own  name,  and  the 
repatation  and  trade  of  the  plaintiff  are  injured  bj  the  said 
acts  of  the  defendant ;  and  that  the  plaintiff  has  thereby 
unstained  damages  to  a  large  amount.  The  prayer  of  the 
complaint  is,  that  the  defendant  be  enjoined  from  stamping 
or  branding  the  name  or  words  "  Collins  &  Co."  or  *'  Collins" 
on  any  shovels  or  implements  of  its  manafacture,  and  from 
placing  any  labels  with  the  name  or  words  **  Collins  &  Co.'» 
or  "  Collins  "  on  any  shovels  or  implements  of  its  manufac* 
tare,  and  from  selling  or  disposing  of  any  shovels  or  imple- 
ments with  the  name  "  Collins  &  Co."  or  "  Collins  "  thereon, 
and  from  using  in  any  manner  the  name  or  words  '^  Collins 
<fe  Co."  or  "Collins"  as  a  trade-mark  upon  any  shovels,  im- 
plements or  other  articles,  and  from  using  in  any  manner  the 
plaintiff's  trade-mark  of  "  Collins  &  Co."  or  the  name  of 
•**  Collins."  It  also  prays  for  an  accounting  and  for  $10,000 
damages.  This  suit  was  brought  in  the  Supreme  Court  of 
New  York  and  was  removed  into  this  Court.  The  complaint 
was  put  in  in  the  State  Court.  The  answer  and  the  replica- 
tion to  it  were  put  in  in  this  Court.  The  answer  states 
that  it  treats  the  complaint  as  a  bill  of  complaint 

The  answer  denies  that  the  reputation  of  any  goods  of 
the  plaintiff's  manufacture  has  been  injured  or  impaired 
by  any  imitation  or  infringement  by  the  defendant,  and  that 
the  defendant  has  imitated  or  infringed  any  of  the  goods  or 
marks  or  trade-marks  of  the  plaintiff.  It  avers  that  the  de- 
fendant and  its  predecessors  are,  and  liave  been  for  upwards 
of  75  years,  largely  engaged  in  the  business  of  manufacturing 
flhovels,  spades,  scoops,  and  similar  implements  and  tools.  It 
admits  and  avers  that,  in  the  autumn  of  1879,  as  well  as  for 
upwards  of  23  years  before  that  time,  shovels  of  the  manufac- 
ture of  the  defendant  and  its  predecessors  were  being  and  had 
been  sold  in  the  city  of  New  York,  having  stamped  or  branded 
on  them  the  name  and  words  "Collins  &  Co.,  Cast  Steel,"  or 
put  in  similar  words,  and  having  pasted  or  fastened  on  the 
handles  thereof  labels  which  had  the  following  words,  or  such 
or  similar  words,  printed  or  engraved  thereon :  "  Best  Cast 


648  SOUTHERN   DISTRICT  OF  NEW  YORK, 

The  Collins  Company  v.  Oliyer  Ames  A  Sons  Corporation. 

Steel,  Manufactured  and  Warranted  by  Collins  &  Co.,  North 
Easton,  Mass.,  U.  S.  A. ; "  and  that  such  shovels,  bearing  such 
marks  and  labels  thereon,  were  in  fact  manufactured,  and  so 
stamped  and  branded  or  labelled,  by  the  defendant  and  its 
predecessors,  as  well  as  by  other  manufacturers,  and  not  by 
the  plaintiff.  It  avers  that  the  defendant  and  its  predecessors 
had  been  in  the  habit  of  manufacturing  shovels,  and  stamping, 
branding,  and  labelling  them  with  the  said  words,  or  with  such 
or  similar  words,  from  time  to  time  since  the  year  1856,  and 
that  the  plaintiff  and  its  predecessors  have  known  that  fact 
for  many  years  last  past,  and  since  about  the  time  of  the  use 
thereof  by  the  predecessors  of  the  defendant,  in  the  year 
1856.  .  It  admits  and  avers  that  the  defendant  and  its  prede- 
cessors have  made  such  shovels  from  time  to  time  since  the 
year  1856,  as  aforesaid,  and  that  no  such  firm  as  '^  Collins  & 
Co."  is  or  has  been  engaged  in  any  such  manufacture  at  North 
Easton,  in  Massachusetts ;  that  the  shovels  made  by  the  de- 
fendant, and  so  branded,  stamped,  and  labelled  "Collins  & 
Co.,"  have  been  and  are  now  being  sold  by  it  in  this  country, 
and  that  large  quantities  thereof  have  been  exported  to  for- 
eign countries,  such  as  Australia,  South  Africa,  and  else- 
where ;  that  such  sale  and  export  have  been  going  on  in  the 
usual  and  ordinary  course  of  business  of  the  defendant  and  its 
predecessors,  for  25  years  or  thereabouts;  and  that  neither 
the  plaintiff,  nor  the  Collins  Manufacturing  Company,  nor 
any  firm  of  Collins  &  Co.,  ever  manufactured  any  shovels 
branded,  stamped,  or  labelled  with  the  name  of  Collins  &  Co., 
or  any  shovels  whatsoever,  until  long  after  such  shovels  of  the 
defendant,  so  branded,  stamped  and  labelled,  had  been  intro- 
duced into  the  market  and  sold  and  exported  to  a  large 
amount,  and  had  acquired  a  high  reputation  in  consequence 
of  the  quality  of  the  material  of  which  they  were  manufac- 
tured, and  the  care  and  skill  exercised  in  the  manufacture 
and  selection  thereof,  or  ever  manufactured  or  sold  any  such 
shovels  until  within  the  last  few  years,  if  at  all.  It  denies 
that  the  use  by  the  defendant  of  the  name  "  Collins  &  Co." 

I 

on  shovels  or  any  other  articles  upon  which  such  name  may 


JULY,  1882.  549 


The  Collins  Company  v.  Oliver  Ames  <b  Sons  Corporation. 

be  used  by  it,  is  UDauthorized  or  involves  any  fake  represen- 
tation in  respect  thereto,  or  that  said  name  has  been  taken,  or 
has  been  or  is  used,  by  the  defendant,  to  induce  purchasers  to 
believe  that  said  goods  were  or  are  manufactured  by  the 
plaintiff,  or  that  the  effect  of  such  use,  or  of  any  representa- 
tions by  the  defendant  in  respect  thereto,  is  either  to  deceive 
purchasers  or  the  public,  or  to  defraud  the  plaintiff  in  any 
way,  or  to  injure  any  good  name  or  reputation  which  it  may 
have.  It  avers  that,  in  using  the  same,  the  defendant  used 
only  its  own  trade-mark,  to  which  it  became  entitled  by 
reason  of  the  use  of  such  mark  by  it  and  its  predecessors 
upon  its  and  their  shovels  since  the  year  1856.  It  admits 
that,  in  December,  1879,  the  defendant  was  applied  to  by  the 
plaintiff  to  discontinue  the  use  of  the  name  of  '^Collins  & 
Oo."  upon  its  shovels,  and  that  it  refused  to  discontinue  such 
use  thereof,  asserting  that  it  had  the  lawful  right  to  use  such 
name  upon  the  shovels  manufactured  and  sold  by  it.  It  ad- 
mits and  avers  that  the  defendant  makes  and  sells,  and  it  and 
its  predecessors  have,  for  nearly  25  years,  made  and  sold,  con- 
siderable quantities  of  such  shovels  with  the  name  of  *'  Col- 
lins &  Co."  thereon  ;  and  that  such  designation  is  used  by  it 
upon  a  quality  of  shovels  inferior  to  the  very  superior  grade 
of  shovels  upon  which  it  uses  its  own  name.  It  denies  that 
fiuch  shovels  are  of  an  inferior  quality  to  any  shovels  manu- 
factured by  the  plaintiff ,  that  the  reputation  of  the  plaintiff 
or  its  trade  is  injured  or  impaired  by  any  acts  of  the  defend- 
ant, or  that  the  plaintiff  has  thereby  sustained  any  damages. 
It  avers  that,  if  the  plaintiff  is  now  manufacturing  any  shovels 
and  is  stamping  the  same  with  the  brand  of  "  Collins  <fe  Co." 
and  selling  the  same  either  for  domestic  consumption  or  ex- 
port, it  is  wrongfully  acquiring  great  benefit  and  advantage 
from  the  use  which  the  defendant  and  its  predecessors  have 
heretofore  made  of  such  title  of  "Collins  <fe  Co."  upon 
fihovels  of  its  and  their  manufacture,  and  is  infringing  upon 
rights  which  the  defendant  has  heretofore  acquired  by  such 
use  of  such  name  in  connection  therewith.  It  avers  that,  in 
the  year  1856,  Oliver  Ames,  Cakes  Ames  and  Oliver  Ames, 


650  SOUTHERN  DISTRICT  OF  NEW  YORK, 


The  Collins  Company  v.  Oliver  Ames  <b  Sons  Corporation. 


Jr.,  of  North  Eaeton,  in  the  State  of  Maasachnsetts,  were 
doing  bnaineBS  as  copartners  nnder  the  firm  name  of  Oliver 
Ames  &  Sons,  and  were  engaged,  as  thej  and  their  predeces- 
sors, for  upwards  of  50  years,  had  been,  in  the  mannfactore, 
at  said  North  Easton,  of  shovels  and  spades ;  that  for  the  very 
highest  grade  of  shovels  manufactured  by  the  said  firm, 
which  was  of  superior  excellence  and  comprised  only  shovels^ 
and  spades  selected  with  great  care  from  the  pi*odaction  of 
their  factories,  the  name  of  O.  Ames  was  used  as  the  trade- 
mark of  the  said  firm ;  that  for  grades  of  the  shovels  and 
spades  manufactured  by  said  firm  which,  although  inferior  to 
the  first  grade  above  mentioned,  were  superior  to  most  of  the 
shovels  and  spades  manufactured  by  other  persons  or  parties^ 
other  names  and  trade-marks  were  applied,  which  were  se- 
lected for  the  purpose ;  that,  in  the  month  of  April,  1856^ 
the  name  "  Collins  &  Co."  was  by  said  firm  stamped  upon- 
and  used  to  designate  certain  of  the  shovels  which  were  man- 
ufactured by  it ;  that,  since  that  time,  the  said  name  of  ^^  Col- 
lins &  Co."  has  been,  from  time  to  time,  stamped  by  the  said 
firm  and  its  successors,  including  the  defendant,  upon  shovels- 
and  spades  manufactured  by  it  and  them  ;  that  such  firm  and 
its  successors,  including  the  defendant,  have  thereby  acquired 
a  right  to  the  use  of  such  name  upon  and  in  connection  with 
the  shovels  and  spades  manufactured  by  said  firm  and  its  suc- 
cessors, including  the  defendant;  that  such  firm  of  Oliver 
Ames  &  Sons  continued  until  the  year  1876,  new  members- 
being  admitted  to  such  firm  from  time  to  time,  and  the 
original  members  thereof  having  died ;  that  such  firm  con- 
tinued, notwithstanding  such  changes  in  the  membership 
thereof,  to  carry  on  its  business  of  the  manufacture  of  shovels 
and  spades  without  interruption,  and  to  own  and  enjoy  the 
marks  and  trade-marks  thereof,  and  to  carry  on  the  business- 
of  manufacturing  shovels  and  spades  at  the  same  place,  and  in 
the  same  factories,  and  with  the  same  establishment,  until 
the  said  year  1 876,  when  the  defendant,  then  a  corporation 
under  the  laws  of  Massachusetts,  succeeded  to.  and  became,  by 
transfer  from  the  said  firm,  the  owner  of  all  its  rights,  prop- 


JULY,  1882.  551 


The  OoUins  Company  v.  Oliver  Ames  <b  Sons  GorporatioD. 

erty,  marks  and  trade-marks,  iadnding  the  right  to  the  use  of 
the  name  or  mark  ^^  OoUins  &  Co."  apon  shovels,  and  the 
brands,  stamps  and  labels  theretofore  used  in  connection  there- 
with by  the  said  firm ;  that  the  defendant  thereby  acquired 
the  right  of  the  said  firm  to  the  use  of  the  said  name,  brands^ 
stamps  and  labels,  and  has  since  continued  to  exercise  the 
right  to  the  use  thereof,  which  has  now  been  enjoyed  by  the 
defendant  and  its  predecessors  for  nearly  25  years ;  that,  if 
the  firms  of  Collins  &  Co.,  and  the  Collins  Manufacturing 
Company,  and  the  plaintiff,  exist  and  have  existed,  they  have 
all  acquiesced  in  and  assented  to  the  use  by  the  defendant  and 
its  said  predecessors  of  the  name  of  the  said  ^^  Collins  &  Co.'^ 
and  the  brands,  stamps  and  labels  above  mentioned,  in  con- 
nection with  shovels,  in  the  like  manner  to  that  in  which  the 
same  are  now  used  by  it  in  connection  therewith,  and  have 
ratified  and  approved  the  same  and  are  estopped  now  from 
objecting  thereto;  that  neither  of  said  firms  of  Collins  & 
Co.,  nor  the  said  Collins  Manufacturing  Company,  nor  the 
plaintiff,  made  any  use  of  the  name  ^^  Collins  &  Co."  upon 
or  in  connection  with  any  shovels  manufactured  by  it  or 
them,  or  either  of  them,  or  ever  manufactured  any  shovels, 
upon  which  it  or  they  or  either  of  them  could  or  might  have 
used  such  name,  until  such  use  thereof  had  for  many  years, 
been  made  by  the  predecessors  of  the  defendant  and  by  the 
defendant ;  and  that  any  attempted  use  of  the  name  '^  Collina 
&  Co."  by  the  plaintiff,  after  the  acquisition  by  the  defendant 
of  the  rights  which  it  had  so  acquired  in  respect  to  the  use  of 
such  name  or  mark,  was  and  is  an  infringement  upon  the 
rights  of  the  defendant  to  the  use  of  such  name  or  mark 
upon  and  in  connection  with  shovels  manufactured  by  it. 

The  circumstances  under  which  the  firm  of  Oliver  Ame8 
&  Sons,  the  predecessor  of  the  defendant,  began  to  use  the 
mark  "Collins  <fe  Co."  on  shovels,  were  these:  On  the  21st 
of  March,  1856,  John  W.  Quincy,  a  merchant  in  the  city  of 
New  York,  wrote  the  following  letter  to  Oliver  Ames  & 
Sons: 


652  SOUTHERN  DISTRICT  OF  NEW  YORK, 


The  Collins  Company  v.  Oliver  Ames  A  Sons  Corporatioin. 

^'  Me88B8.  Oliveb  Ames  &  Sonb  : 

"  Gent — A  party  here  has  an  order  from  Australia  for 
the  following  shovels ;  they  must  be  exactly  to  order,  as  to 
weight  and  size.  His  order  is  for  Collins^  shovels,  but  I  have 
no  donbt  that  yonr  shovels  are  wanted.  I  gave  him  yonr  list 
prices  and  5  per  cent,  for  cash.  These  parties'  names  are 
J.  &  B.  Osbom,  and  if  they  write  yon  please  tnm  them  over 
to  me,  or  give  them  5  per  cent,  for  cash.  I  expect  my  adver- 
tisements brought  them,  and  I  want  to  make  part  of  advertise- 
ments out  of  these  folks.    Their  order  runs  thns : 

^^  100  dozen  best  and  lightest  bright  D  bandied  shovels, 
C.  S.,  well  packed  in  cases ;  should  weigh  only  3^  lbs. ; 
handles  to  measnre  23  to  24  inches  onli/, 

*^  25  dozen  C.  S.  spades,  with  extra  long  strap  and  side 
strap,  if  made  so. 

*^  12  dozen  long  handle  shovels,  square. 

"  12  dozen  do.      do.        do.      round. 

"  The  above  is  exact  copy  of  order  and  the  party  wishes 
us  to  furnish  the  price  of  each.  As  the  first  lot  of  100  doz. 
are  lighter  than  your  regular  shovels,  I  told  him  I  wonld 
write  you  and  get  an  answer  at  once  direct,  and  inform  him. 

"Please  say  how  soon  you  can  furnish  them  if  wanted, 
and  the  probable  cost  of  packing.  Yonr  immediate  answer 
will  oblige  Tonrs  truly, 

"  New  York,  March  21, 1856.  John  W.  Quinct." 

On  the  24th  of  March,  1856,  Oliver  Ames  &  Sons  replied  to 
Mr.  Quincy  by  a  letter,  but  neither  it  nor  a  copy  of  it  is  pro- 
duced. To  that  letter  Mr.  Quincy  replied  as  follows,  March 
26th,  1856 : 

"  New  York,  March  26th,  1856. 
^'  Messbs.  Oliver  Ames  &  Sons  : 

"  Gent. — Your  favor  of  the  24th  inst.  is  at  hand.  The 
party  gave  me  the  order ;  he  thinks  the  100  dozen  shovels  are 
to  be  aqibare  point,  as  the  order  does  not  say  round  point. 
Please  send  them  as  per  our  letter  of  the  21st  inst. : 

"  Please  have  a  label  made  for  them  thus : 
"  Made  expressly  for  C.  G.  Stevens. 


JULY,   1882.  853 


The  Collins  Company  v.  Oliyer  Ames  <b  Sons  Corporation. 

aud  get  a  stamp  for  the  shovels  Collins  &  Co.,  and  keep  the 
stamp  for  our  use,  as  we  expect  to  get  further  orders  for 
them ;  or,  if  you  prefer  it,  I  will  get  them  made  here  and  sent 
to  you.  We  would  like  the  shovels  made  and  forwarded  as 
soon  as  practicable. 

^^  To  be  packed  in  boxes  and  strapped  as  usual  for  ship- 
ping. These  boxes  are  to  be  shipped  to  England  and  put  in 
custom-house  (bond)  there  and  then  they  go  to  Australia  free 
of  duty.  It  costs  less  to  ship  this  way  than  to  pay  dtUy  di- 
rect to  Australia;  you  will,  therefore,  have  them  packed 
right.  Tours  truly,  John  "W.  Quincy." 

Mr.  Quincy  was  at  that  time,  and  before  and  after,  a  dealer 
in  the  shovels  made  by  Oliver  Ames  <fe  Sons.  The  shovels  so 
ordered  were  made  by  Oliver  Ames  <fe  Sons,  and  were  stamped 
or  branded  "Collins  &  Co."  by  them.  At  that  time  the 
selling  firm  of  Collins  <fe  Co.  existed  in  New  York.  The 
plaintiff  did  not  at  that  time  make  shovels,  but  the  articles 
which  it  did  make  were  sent  to  Australia,  and  it  had  an  estab- 
lished reputation  for  the  excellent  quality  of  such  articles. 
The  shovels  then  and  theretofore  made  by  Ames  &  Sons  had 
the  reputation  of  being  the  best  shovels  made. 

It  is  very  clear  that  when  Quincy  stated  to  Ames  <fe  Sons 
that  the  order  he  had  received  was  for  "  Collins'  shovels,"  he 
understood,  and  he  meant  that  Ames  &  Sons  should  under- 
stand, and  they  did  understand,  that  the  order,  as  given,  was 
for  shovels  made  or  to  be  made  by  the  Collins  Company,  that 
is,  the  plaintiff.  But  Quincy  knew  that  the  plaintiff  made  no 
shovels,  and  that  Ames  &  Sons  did  make  shovels.  So  he 
showed  to  those  who  came  to  him  the  shovel  list  of  Ames  & 
Sons.  For  some  reason,  a  party  in  Australia,  wanting  shovels, 
had  ordered  "Collins'  shovels,"  although  there  were  none. 
Other  articles  of  the  plaintiff's  manufacture  were  found  in 
Australia,  of  high  repute  and  good  quality,  articles  of  steel, 
kindred  in  character  to  shovels.  It  would  be  natural  to  think 
that,  as  other  good  articles  of  steel  were  of  the  Collins'  make, 
the  way  to  surely  get  a  good  shovel  was  to  get  one  of  the 
Collins'  make,  and  it  would  be  natural  to  assume  that  there 


564r  SOUTHERN  DISTRICT  OP  NEW  YORK, 

The  Ck>llinB  Company  v.  Oliver  Ames  A  Sodb  Corporation. 

were  Collins'  Bhovels.  The  letter  of  Qnincy  shows  that  he 
informed  those  who  came  to  him  with  the  order  that  there 
were  no  Collins  shovels,  and  also  informed  them  that  he  pro- 
posed that  the  order  shoold  be  filled  with  shovels  made  by 
Ames  &  Sons.  This  was  very  well  and,  so  far,  was  fair  deal- 
ing. The  proposal  was  acquiesced  in,  for  the  arrangement 
was  that  Qoincj  should  write  to  Ames  &  Sons  and  obtain  the 
prices  at  which  the  articles  would  be  furnished.  It  would 
appear  that  Ames  &  Sons,  iu  reply,  desired  to  know  whether 
the  order  was  given  absolutely  or  not  to  Qulncy ;  for,  Quincy 
replied  that  the  party  had  given  the  order  to  bim.  He  then 
requested  Ames  &  Sons  to  fill  it,  and  also  directed  that,  be- 
sides the  label  "  Made  expressly  for  C.  G.  Stevens,"  which  it 
must  have  been  intended  should  be  pasted  on  the  wooden  part 
of  each  shovel  and  each  spade,  each  shovel  of  the  100  dozen 
order  should  have  on  it,  impressed  on  the  metal,  the  mark 
"  Collins  &  Co.,"  to  be  made  by  a  stamp.  As  it  was  under- 
stood that  these  articles  were  to  go  to  Australia,  both  Quincy 
and  Ames  &  Sons  must  have  had  some  object  in  view  con- 
nected with  Australia.  Quincy  states,  in  his  second  letter, 
that  he  wishes  the  stamp  to  be  kept  for  his  use  in  filling^ 
further  orders  for  like  shovels,  meaning,  further  orders  from 
Australia.  He  and  the  defendant  could  have  intended  nothing* 
but  that  the  idea  which  had  come  from  Australia  that  there 
were  Collins*  shovels,  though  incorrect  in  fact,  should  become 
to  the  minds  of  people  in  Australia  a  realized  idea,  by  their 
seeing  on  shovels  the  stamp  ^'  Collins  &  Co.,"  and  deriving- 
therefrom  the  belief  that  the  same  Collins  &  Co.  which  had 
made  the  axes  and  other  articles  before  familiar  to  them  had 
made  these  shovels.  It  appears  that  the  axes  and  other  arti- 
cles made  by  the  plaintiff,  and  which  before  that  time  were 
known  and  used  in  Australia,  were  stamped  ^^  Collins  &  Co." 
Therefore,  although  the  shovels  made  by  Ames  &  Sons  under 
this  order,  and  subsequently,  and  stamped  ^'Collins  &  Co.,"  and 
sent  to  Australia  and  elsewhere,  may  intrinsically  have  been 
of  high  quality,  yet  the  only  object  of  the  defendant  in  put- 
ting the  stamp  '^  Collins  &  Co."  upon  them  must  have  been 


JULY,  1882.  555 


The  GoUins  Company  v.  Oliver  Amee  A  Sons  CorporatioD. 

to  avail  itself  of  the  credit  and  reputation  and  market  which 
the  plaintiff  had  established  for  the  articles  it  made  and  sold 
with  the  stamp  '^  Collins  &  Co."  npon  them.  There  was  no 
other  pnrpose  in  this.  Clearly,  those  who  purchased  shoveb 
made  by  Ames  &  Sons,  and  stamped  '^  Collins  &  Co.,"  would 
believe  that  such  shovels  were  made  by  the  plaintiff,  for  there 
was  no  other  Collins  &  Co.  than  the  plaintiff.  This  was  an 
unlawful  appropriation  of  the  plaintiff's  trade-mark.  It  is- 
true  that  the  plaintiff  up  to  that  time  had  made  no  shovels. 
It  is  also  true  that  Ames  &  Sons  and  the  defendant  have- 
built  up  a  business  in  shovels  stamped  ^^  Collins  &  Co."  But 
the  plaintiff  had  a  right  to  make  shovels,  and  it  had  made  kin- 
dred articles  of  metal,  and  its  good  name  and  reputation  in  it& 
business  were  wholly  connected  with  the  use,  in  its  trade,  of 
the  mark  "  Collins  <fe  Co."  Quincy's  first  letter  shows  that  the 
nature  of  the  plaintiff's  trade  was  such  that  persons  in  Aus- 
tralia desiring  shovels,  expected  to  find  shovels  made  by  the 
plaintiff,  which  shovels  if  found,  would  have  borne  the  stamp 
'*  Collins  &  Co."  If,  when  the  inquiry  was  made  of  Quincy, 
he  had  produced  the  shovels,  the  make  of  Ames  &  Sons, 
already  made  and  stamped  ^^  Collins  &  Co.,"  in  the  same  con- 
dition as  when  they  were  afterwards  made  on  the  order,  the 
purchaser  would  have  believed  that  the  shovels  were  the 
make  of  the  plaintiff,  that  being  what  the  order  really  asked 
for,  if  nothing  had  been  said  or  shown  to  indicate  that  they 
were  not  made  by  the  plaintiff.  As  the  fact  was,  the  impres- 
sion  produced  in  Australia,  by  the  shovel  itself,  with  the 
stamp  ^'  Collins  &  Co.,"  was  the  same,  although  the  persona 
who  visited  Quincy  were  informed  that  the  shovels  were  the 
make  of  Ames  &  Sons. 

It  is  true  that  the  plaintiff's  business  in  shovels  has  been 
very  small,  while  that  of  Ames  &  Sons  and  the  defendant 
has  been  very  large.  It  is  also  true  that  the  plaintiff  haa 
never  sold  or  sent  any  shovels  to  Australia.  It  is  also  true 
that  Ames  &  Sons  and  the  defendant  have  put  the  stamp 
"  Collins  &  Co."  on  only  a  particular  description  of  shovel  or 
spade,  in  all  52,000  dozen  since  1856,  while  their  make  of 


556  SOUTHERN  DISTRICT  OF  NEW  YORK, 

The  Collins  Company  tr.  Oliyer  Ames  <b  Sons  Corporation. 

fihovels  for  the  last  10  years  has  been  from  100,000  dozen  to 
120,000  dozen  a  year.  The  52,000  dozen  have  gone  abroad 
wholly,  largely  to  Anstralia.  But,  the  question  of  profit  to 
the  defendant  or  damage  to  the  plaintiff  is  aside  from  the 
question  of  the  right  of  the  plaintiff  to  its  trado-mark.  In 
view  of  the  circumstances  under  which  Ames  &  Sons 
adopted  the  mark  "  Collins  &  Co."  on  the  shovels,  it  must  be 
held  that  they  had  no  right  to  adopt  it  and  that  its  use  by 
them  was  always  unlawful. 

The  animus  of  the  defendant  is  shown  in  the  representa- 
tion, in  the  label  on  the  shovel,  that  "  Collins  &  Co."  is  a  firm 
making  shovels  at  North  Easton,  and  that  the  shovel  stamped 
"  Collins  <fe  Co."  was  made  by  that  firm  at  that  place.  To  the 
user  or  purchaser  of  the  individual  shovel  in  Australia,  the 
mark  "  Collins  &  Co."  on  the  steel  or  the  wood  would  be  all 
that  was  needed  to  induce  him  to  believe  that  he  was  using  or 
buying  a  shovel  made  by  the  same  "  Collins  &  Co."  which 
made  the  excellent  edge  tools,  while  in  the  United  States  it 
could  be  asserted  that  every  dealer  would  know  that  there 
was  no  firm  of  "  Collins  &  Co."  at  North  Easton,  making 
shovels,  and  so  that  representation  would  there  deceive  no 
•one,  and  would  not  there  induce  the  belief  that  the  shovels 
were  made  by  the  plaintiff. 

It  is  strongly  urged,  on  the  part  of  the  defendant,  that  a 
mark  or  stamp,  to  be  a  trade-mark,  must  be  the  mark  of  an 
existing  trade ;  that  the  mark  "  Collins  <fe  Co."  on  shovels, 
when  adopted  by  Ames  &  Sons,  became  the  mark  of  a  trade 
in  shovels,  carried  on  by  Ames  &  Sons ;  that  the  plaintiff  had 
no  trade  in  shovels  at  the  time ;  that  the  mark  '^  Collins  & 
Oo."  thus  became  the  mark  of  Ames  &  Sons'  trade  in  shovels, 
and  the  property  of  Ames  &  Sons  in  respect  to  shovels  made 
by  them,  by  prior  right ;  that  any  use  of  that  mark  on  shovels 
afterwards,  by  the  plaintiff,  became  wrongful  as  against  Ames 
^  Sons  or  the  defendant ;  and  that  the  plaintiff  has  no  right 
in  the  premises  which  it  can  enforce  against  the  defendant. 
This  view  is  specious  but  unsound.  The  plaintiff,  having, 
from  1843,  the  right  to  make  any  article  of  iron^  steel,  or 


JULY,   1882.  667 


The  Coast  Wreddng  Go.  v.  The  Phenlx  Insurance  Co.,  of  Brooklyn. 

other  metal,  and  having  gone  on,  from  that  time,  both  before 
and  after  1866,  extending  its  manufactare  beyond  edge  tool& 
into  digging  tools,  such  as  picks  and  hoes,  and  having  always 
put  the  mark  "  Collins  &  Co."  on  its  best  quality  of  articles, 
the  fact  that  it  did  not  before  1866  make  a  digging  tool  such 
as  the  shovels  on  which,  in  1866,  Ames  &  Sons  put  the  mark 
"  Collins  <fe  Co.,"  does  not  warrant  the  conclusion  that  that 
mark  was  not,  in  1866,  the  mark  of  the  plaintiff's  trade  in  re- 
spect  to  such  shovels. 

The  plaintiff  is  entitled  to  a  decree  for  a  perpetual  injunc- 
tion, as  prayed  in  the  bill,  and  for  an  accounting  before  a  mas- 
ter as  to  profits  and  damages,  and  for  the  costs  of  the  suit. 

John  Sherwood^  for  the  plaintiff. 

William,  M.  Eoarta  and  Charles  G.  Bea/man^  Jr,y  for  the 
defendant. 


The  Coast  Wbeckino  Company  aio)  others 
The  Phknix  Instjbance  Compakt,  of  Bbookltn. 

An  average  bond,  after  reciting  that  a  vessel,  with  a  cargo,  had  been  stranded, 
and  that  the  Coast  Wrecking  Company's  vessels  and  men  were  sent  to'  her,  and 
her  carg^  was  being  discharged,  authorized  the  vesseFs  owners  to  settle  the 
salvage  for  any  sam  agreed  upon  between  the  salvors  and  underwriters,  or  to  be 
awarded  by  a  Court,  and  stated  that  losses  and  expenses  had  been  and  might 
be  incurred,  which,  according  to  the  usage  of  the  port  of  New  York,  might 
constitute  a  general  average,  to  be  apportioned  on  vessel,  freight  and  cargo, 
and  other  charges  incurred  might  be  due  from  specific  interests,  and  thereby 
the  signers  agreed  with  J.  <k  H.,  average  adjusters,  "that the  loss  and  damage 
aforesaid,  and  other  incidental  expenses  thereon,"  should  be  paid  by  them 
ratably,  according  to  their  interests  in  vessel,  freight,  and  cargo,  if  stated 
and  apportioned  by  J.  <k  H.,  in  accordance  with  the  established  usage  and 
laws  of  the  State  in  similar  cases.  A  libel  in  Admiralty,  founded  on  the 
bond,  was  filed  by  the  salvors  and  J.  <k  H.,  against  an  insurer  of  cargo,  a 
signer  of  the  bond.    The  libel,  in  reciting  the  bond,  recited  it  as  one  applying 


*68  EASTERN  DISTRICT  OF  NEW  YORK, 

The  Coast  Wreckiog  Co.  v.  The  Pheniz  Insnranoe  Co.,  of  BrooUyn. 


to  an  apportionmeiit  of  only  general  aTerage  esqienaes.  Bat,  the  bond  was  in 
evidenoe,  and  in  the  answer  the  respondent  submitted  to  the  Conrt  the  ques- 
tion of  the  proper  amount  of  salyage.  There  was  no  exception  to  the  join- 
ing of  the  two  claims  in  one  libeL  The  respondent  objected  that  the  Admi- 
ralty had  no  jurisdiction,  because  the  suit  was  ooe  for  general  ayerage  charges ; 
that  there  were  no  general  average  expenses,  because  the  Toyage  of  the 
Teasel  was  abandoned;  and  that  the  daim  of  J.  <b  H.  was  not  one  of  Admiralty 
jurisdiction:  Held, 

'(1.)  The  bond  coyered  the  serrices  and  disbursements  of  J.  <b  H. ; 

{%.)  It  coyered  general  ayerage  losses  and  expenses  and  other  charges  in  respect 
to  salyage  and  rescuing  the  cargo,  and  the  seryices  and  expenses  of  J.  A  H. ; 

^8.)  The  seryices  and  expenses  coyered  by  the  bond  were  those  which,  if  per- 
formed and  incurred  by  the  owner  of  the  yeasel,  would  haye  been  within  his 
duty  to  saye  the  cargo,  and  such  duty  would  haye  extended  to  the  seryices 
and  disbursemeots  of  J.  <b  H.,  which  would  haye  been  maritime ; 

(4.)  The  bond  was  an  express  contract  for  a  maritime  seryice. 

As  salyage,  50  per  cmt,  of  the  yalue  of  the  property  sayed  was  awarded. 

The  equipment  and  readiness  of  the  yessels  of  the  Coast  Wrecking  Company  to 
saye  property,  considered,  in  fixing  the  amount. 

^Before  Blatohtord,  J.,  Eastern  District  of  New  York,  July  8th,  1882.) 

This  was  a  libel  in  personam^  filed  in  the  District  Court. 
After  a  decree  for  the  libellants,  (7  Fed.  Rep.y  236,)  the  re- 
spondent appealed  to  this  Ooart.  This  Court  found  the  fol- 
lowing facts :  "  The  libellant  the  Coast  Wrecking  Company, 
at  the  times  hereafter  mentioned,  was  a  corporation  created 
by  the  State  of  New  York  and  authorized  to  own  and  hire 
yessels  and  use  them  in  salvage  services.  It  had  a  capital  of 
$222,000  invested  in  steamers  and  wrecking  material,  and  a 
storehouse,  and  from  33  to  35  men  constantly  employed,  with 
an  experienced  superintendent  receiving  a  salary  of  from 
$4,500  to  $9,000  a  year,  and  its  men  and  vessels  were  always 
ready  to  start  at  an  instant's  notice  for  the  relief  of  a  vessel 
in  distress.  The  Phenix  Insurance  Company,  the  respondent, 
was  and  is  a  corporation  authorized  to  carry  on,  and  carrying 
on,  the  business  of  marine  insurance.  The  libellants  Johnson, 
Higgins  and  Krebs,  were  carrying  on  the  business  of  average 
adjusters  in  the  city  of  New  York,  as  copartners,  under  the 
firm  name  of  Johnson  &  Higgins.  On  the  Ist  of  January, 
1879,  the  steamship  Vindicator  sailed  from  Fall  River,  Massa- 
chusetts, with  a  general  cargo  of  merchandise  on  board,  bound 
to  Philadelphia.     On  the  4th  of  January  the  Vindicator 


JULY,  1882.  559 


The  Ck>a8t  Wrecking  Co.  v.  The  Pheniz  InsnraDce  Co.,  of  Brooklyn. 

stranded  on  the  shore  of  Long  Island,  near  Moriches,  and  be- 
came in  f^reat  danger  of  nltimate  total  destruction,  with  her 
^cargo.  She  was  stranded  jnst  inside  the  outer  bar,  heading 
towards  the  beach,  with  her  stem  to  the  inside  of  the  outer 
bar,  very  low  down  in  the  water,  listed  to  port  about  45  de- 
4^ree8,  and  covered  completely  with  ice.  The  place  where  she 
lay  was  about  70  miles  from  the  nearest  harbor,  and  was  one 
of  the  worst  spots  on  the  Long  Island  shore  for  rendering  as- 
^stance.  The  weather  was  very  cold,  and  ice  formed  all  over 
the  vessel.  The  lower  hold  was  entirely  full  of  water,  and 
in  the  between  decks  the  water  was  as  high  inside  as  it  was 
outside,  and  she  was  completely  full  at  high  water,  on  the  port 
«ide.  The  Coast  Wrecking  Company,  through  its  system  of 
shore  agents,  received,  at  New  York,  on  the  day  that  the  ves- 
sel was  stranded,  notice  of  the  fact  through  a  telegram  from 
its  coast  patrol.  On  the  same  day  the  Company  sent  out, 
from  New  York,  its  steamer  Relief,  and  the  schooner  John 
-Curtin,  with  men  and  materials  for  the  relief  of  the  vessel 
and  her  cargo.  The  Belief  and  the  John  Curtin  arrived 
alongside  of  the  Vindicator  at  3  o'clock  on  the  morning  of 
January  5th.  Mr.  Clyde,  the  owner  of  the  Vindicator,  ar- 
rived on  board  of  her  early  on  that  morning,  and  conferred 
with  her  master,  and  with  the  agent  or  the  Coast  Wrecking 
Oompany,  in  regard  to  saving  the  property.  A  steam  pump 
was  put  at  work  at  6  o'clock  p.  m.,  and  was  kept  at  work 
through  the  night,  and  on  the  morning  of  the  6th  another 
large  steam  pump  was  put  in,  and  both  pumps  were  worked 
during  the  night  of  the  6th,  but  they  had  no  effect  in  reduc- 
ing the  water  in  the  vessel,  and  work  with  them  was  discon- 
tinued. On  the  evening  of  the  5th,  the  schooners  S.  L.  Mer- 
ritt  and  H.  W.  Johnson,  owned  or  controlled  by  the  Coast 
Wrecking  Company,  were  sent  to  the  Vindicator  by  that 
Company.  On  the  morning  of  the  6th  the  Company  com- 
menced discharging  the  cargo  of  the  Vindicator  into  schoon- 
ers. The  schooners,  as  fast  as  they  were  filled,  were  taken  to 
s  storehouse  on  Staten  Island,  owned  by  the  Company,  and 
iheir  cargoes  were  there  unloaded.    The  crew  of  the  Vindi- 


560  EASTERSr  DISTRICT  OP  HEW  TORE, 

The  Coiflt  Wrecking  Co.  v.  The  PheDix  Inmnnee  Co.,  of  Brooklja. 


cator  were  discharged  on  the  6th  of  Jannaiy.  The  Coast 
Wrecking  Company,  by  its  representatives^  employed  laboreia 
from  the  neighboring  settlements,  who  aasisted  the  offioera 
and  crews  of  the  Relief  and  of  the  schooners  in  dischai^ng 
the  caigo.  A  few  days  after  the  discontinnance  of  the  pump- 
ing the  Coast  Wrecking  Company  made  an  examination  of 
the  ontside  of  the  Vindicator,  through  divers,  and  found 
nothing  on  the  outside  to  show  any  breaks  along  the  seams. 
Before  the  29th  of  January  nearly  all  of  the  cargo  was  out 
of  the  vessel  and  in  the  storehouse  at  Staten  Island.  Some 
cargo  was  taken  from  the  Vindicator  on  the  30th  and  31st  of 
January  and  on  the  Ist  and  2d  of  February.  On  the  8th  of 
February  an  examination  of  her  hull,  inside  and  out,  was 
made  by  divers.  Her  keel  was  found  to  be  broken  in  several 
places  and  her  bottom  to  be  badly  injured  under  her  boilers. 
It  was  then  determined  that  she  could  not  be  saved,  and  the 
Helief  returned  to  New  York  with  the  John  Curtin,  on  the 
9th  of  February,  taking  with  her  strippings  of  the  Vindi- 
cator, worth  several  hundred  dollars.  On  the  i2th  of  Febru- 
ary,  the  Vindicator  broke  up  and  came  on  shore.  Among 
the  cargo  of  the  Vindicator  were  341  bales  of  print  goods, 
consigned  to  the  Eddystone  Manufacturing  Company ;  8  cases 
and  8  boxes  of  yam,  consigned  to  Hale  &  Co ;  and  12  cases 
and  2  boxes  of  hats,  consigned  to  lippincott,  Mitchell  &  Co. 
All  of  these  goods  were  insured  by  the  Phenix  Insurance 
Company,  and  the  consignees  of  them  abandoned  them  to  that 
Company  shortly  after  the  stranding  of  the  Vindicator,  and 
that  Company  accepted  the  abandonment.  On  the  10th  of 
January,  1879,  the  Phenix  Insurance  Company,  with  other 
owners  of  cargo,  signed  an  average  bond,  of  which  the  fol- 
lowing is  a  copy,  the  part  put  in  brackets  in  this  copy  being 
in  writing  in  the  original,  and  the  rest  being  a  printed  form, 
there  being  no  brackets  in  the  original:  'Average  Bond. 
Whereas  the  [steamer  Vindicator]  whereof  [Rogers  is]  mas- 
ter, having  on  board  a  cargo  of  merchandise,  sailed  from  the 
port  of  [Fall  River]  during  the  month  of  [January  inst.] 
bound  for  [Philadelphia,]  and  in  the  due  prosecution  of  her 


JULY,   1882.  561 


The  Coast  Wreckmg  Co.  v.  The  Phenix  Insurance  Co. .  of  Brooklyn. 

said  voyage  [enconntered  heavy  weltther,  and  got  ashore  near 
Moriches,  Long  Island,  where  she  now  lies.    When  news  of 
the  disaster  was  received  at  New  York,  the  Coast  Wrecking 
Company's  vessels  and  men  were  sent  to  the  steamer  and  the 
cargo  is  now  being  discharged  and  sent  to  New  York.    The 
owners  and  agents  of  the  steamer  Vindicator  are  hereby  au- 
thorized to  settle  the  salvage  for  any  sam  that  may  be  agreed 
upon  between  the  salvors  and  underwriters  in  New  York  or 
Philadelphia  interested,  or,  in  the  event  of  a  suit,  for  such 
sum  as  may  be  awarded  by  Court]  by  which  means  certain 
losses  and  expenses  have  been  incurred,  and  other  expenses 
hereafter  may  be  incurred,  in  consequence  thereof,  which, 
according  to  the  usage  of  this  port,  may  constitute  a  general 
average,  to  be  apportioned  on  the  said  vessel,  her  earnings  as 
freight,  and  the  cargo  on  board  said  vessel,  and  other  charges 
thus  incurred  may  apply  to  and  be  due  from  specific  inter- 
ests :   Now  we,  the  subscribers,  owners,  shippers,  consignees, 
agents  or  attorneys  of  certain  consignees  of  said  vessel  and 
cargo,  do  hereby,  for  ourselves,  our  executors  and  adminis- 
trators, severally  and  respectively,  but  not  jointly,  or  one  for 
the  other,  covenant  and  agree  to  and  with  [Johnson  &  Hig- 
gins]  that  the  loss  and  damage  aforesaid,  and  other  incidental 
expenses  thereon,  as  shall  be  made  to  appear  to  be  due  from 
us,  the  subscribers  to  these  presents,  either  as  owners,  ship- 
pers, consignees,  agents  or  attorneys  of  certain  consignees  of 
said  vessel  or  cargo,  shall  be  paid  by  us  respectively,  accord- 
ing  to  our  parts  or  shares  in  the  said  vessel,  her  earnings  as 
freight,  and  the  said  cargo,  as  shall  belong  or  be  consigned  to 
us,  or  shall  belong  or  be  consigned  to  any  person  or  persons 
with  whom  we  are  copartners,  agents  or  attorneys,  or  in  any 
manner  concerned  therein,  provided  such  losses  and  expenses 
beforementioned  be  stated  and  apportioned  by  Henry  W. 
Johnson,  A.  Foster  Higgins  [and  Wm.  Blrebs]  average  ad- 
justers, in  accordance  with  the  established  usage  and  laws  of 
this  State  in  similar  cases.    And  we  do  further  bind  ourselves 
to  furnish  promptly,  on  request  of  said  adjusters,  all  such  in- 
formation and  documents  as  they  may  require  from  us  to 
Vol.  XX.— 86 


662  EASTERN  DISTRICT  OF  NEW  YORK, 

The  Coast  WreckiDg  Co.  v.  The  Pheoix  iDetiranoe  Co.,  of  BrooUyn. 

make  said  adjastment.    And  for  the  tme  performance  of  all 
and  singular  in  the  premises,  we  do  hereby  severally  bind 
ourselves,  our  respective  heirs,  executors  and  administrators, 
to  the  said  [Johnson  &  Higgins]  in  the  penal  sum  of  [ten 
thousand  (|10,000)]   dollars,  lawful  money  of  the  United 
States.     In  witness  whereof  we  have  to  these  presents  set  our 
hands,  in  the  city  of  New  York,  this  [tenth]  day  of  [Janu- 
ary] in  the  year  of  our  Lord  one  thousand  eight  hundred  and 
seventy-[nine.] '     The  Vindicator  was  a  large  and  valuable 
ocean  steamer,  built  of  iron.     The  total  value  of  the  cargo 
saved  was  $41,340  07,  in  its  damaged  condition.     The  total 
value  of  the  strippings  saved  from  the  wreck  was  $718  62. 
There  was  no  freight  saved.     The  cargo  saved  was  owned  by 
124  different  interests.     The  principal  interest  in  the  saved 
cargo  was  that  of  the  Phenix  Insurance  Company.  Of  the  341 
bales  of  print  goods  consigned  to  the  Eddystone  Manufactur- 
ing Company  and  insured  by  the  Phenix  Insurance  Company, 
339  were  saved,  of  the  value,  as  damaged,  of  $12,442  14. 
A    part  of    the  yarn  insured    by    the  Phenix    Insurance 
Company  was  saved,  of  the  value,  as  damaged,  of  $163  36. 
A  part  of  the  hats  insured  by  the  Phenix  Insurance  Com- 
pany was  saved,  of  the  value,  as  damaged,  of  $23  80.    Of  the 
339   bales  of  print  goods  saved,  all  but  51  were  out  of  the 
Yindicator  and  in  the  schooners  on  the  15th  of  January,  and 
were  in  the  store  at  Staten  Island  on  the  16th  and  17th.     On 
the  20th,  42  more  were  taken  out  of  the  Vindicator,  and 
were  in  said  store  on  the  22d,  and  the  remaining  9  bales  were 
taken  out  of  the  Yindicator  on  the  26th  and  were  in  said 
store  before  the  29th.    The  yarn  and  the  'hats  were  in  said 
store  on  or  before  the  22d.    The  services  of  the  Belief  ex- 
tended over  37  days.    She  had  a  crew  of  14  men,  all  told, 
was  fitted  with  steam  pumps,  and  was  worth,  with  her  outfit, 
about  $65,000.    The  schooner  John  Curtin  was  in  service  37 
days.    She  had  a  crew  of  6  men,  all  told,  and  was  worth 
about  $3,000.    She  was  owned  by  Captain  Merritt,  the  super- 
intendent  of  the  Coast  Wrecking  Company,  and  performed 


JULY,  1882.  563 


The  Coast  Wrecking  Co.  o.  The  Phenix  Inanrance  Co.,  of  Brooklyn. 

hard  service,  being  always  near  the  Vindicator  and  being  used 
as  a  lighter  between  the  Yijidicator  and  the  other  schooners. 
Her  owner  chartered  her,  with  her  crew,  to  the  Coast  Wreck- 
ing Company,  for  $40  a  day.  She  was  not  to  share  in  the 
salvage.  Twenty-one  days  of  her  service  were  prior  to  the 
27th  of  January.  The  schooner  H.  W,  Johnson  was  in 
service  18  days,  all  prior  to  January  23d.  She  had  a  crew  of 
7  men,  all  told,  and  with  her  working  equipment  was  worth 
about  $12,000.  She  was  owned  by  the  Coast  Wrecking 
Company.  The  schooner  S.  L.  Merritt  was  in  service  13 
days,  all  prior  to  the  19th  of  January.  She  had  a  crew  of  6 
men,  and  a  wrecking  equipment,  and  with  her  equipment  was 
worth  about  $12,000.  She  was  owned  by  Captain  Merritt 
and  he  chartered  her  to  the  Coast  Wrecking  Company  for 
$40  a  day  and  her  equipment  for  $15  a  day.  She  was  not 
to  share  in  the  salvage.  The  Coast  Wrecking  Company  also 
sent  two  divers  from  New  York,  to  whom  they  paid  wages 
ranging  from  $5  to  $10  a  day  each.  They  sent  also  3  fore- 
men, 2  engineers  and  2  firemen,  who  were  paid  $5  or  $6  a 
day  each.  They  also  sent  one  man  in  their  regular  employ, 
whose  wages  were  $60  a  month,  and  10  wreckers,  who  were 
paid  $2  a  day  each.  All  the  other  labor  and  assistance  that 
were  given  to  the  Vindicator  and  her  cargo  were  obtained 
from  the  neighboring  settlements,  and  were  paid  for  by  the 
Coast  Wrecking  Company.  Laborers  to  the  number  of  44 
were  employed  on  the  6th  of  January  ;  42  on  the  7th ;  37  on 
the  15th ;  28  on  the  5th ;  and  21  each  on  the  1 1th  and  25th. 
On  the  6th  14  laborers  worked  all  night;  on  the  7th  11 
worked  half  of  the  night ;  on  the  13th  17  worked  half  of  the 
night ;  and  on  the  19th  4  worked  all  night.  The  wages  of 
these  men  were  paid  by  the  Coast  Wrecking  Company  and 
were  $2  a  day  with  board  and  $2  50  a  day  without  board. 
None  of  these  employees  share  in  the  salvage.  On  the  7th 
of  January  the  schooner  S.  L.  Merritt  deposited  a  cargo  of 
merchandise  from  the  Vindicator  in  the  store  at  Staten  Is- 
land.  On  the  8th  the  schooner  John  Curtin  deposited  there 
a  cargo  of  merchandise.    On  the  12th  the  schooner  S.  L. 


564  EASTER5  DKTRJCT  OF  SEW  TOSK, 


Hie  CoMi  WnOaag  Co.  v.  Tbe  FWnx  Imwiti  Gb^  of  BkooUjiL 

Merritt  deposited  there  another  cugo.  On  the  14th  the 
schooner  H.  W.  Johnson  deposited  there  a  cugo.  From  that 
time  on  a  cargo  was  deposited  there  ereir  2  or  3  dajs,  nntil 
the  22d  of  Janoair.  The  caigoes  were  in  good  order  except 
being  wet  The  total  expenses  of  the  Coast  Wrecking  Com- 
pany for  the  hire  of  the  schooner  John  Cnrtin,  and  the  hire 
of  the  schooner  S.  L.  Merritt,  and  for  the  superintendents^ 
foremen,  divers,  engineers,  hiborers  and  others  employed  by 
them  at  the  Vindicator,  and  for  all  other  chaiges  of  CTcry 
kind,  except  the  wages  of  the  crews  of  the  Belief  and  the 
EL  W.  Johnson,  and  the  expenses  of  running  the  Relief^ 
were  $7,870  40.  Of  this  sum  $5,666  was  incurred  prior  to 
the  22d  of  January,  and  $6,284  prior  to  the  26th.  From 
the  time  the  Relief  went  to  the  assistance  of  the  Vindicator 
until  all  her  cargo  had  been  saved  and  she  had  gone  to  pieces, 
on  February  12th,  work  was  done,  night  and  day,  when  work 
was  possible,  for  the  preservation  of  the  property,  by  the 
Coast  Wrecking  Company  and  its  employees.  The  labor  of 
saving  the  cargo  was  dangerous  for  the  men  and  vessels  em- 
ployed, the  weather  was  stormy  and  no  port  of  refuge  wa& 
near.  The  cargo  had  to  be  got  out  by  divers  and  this  wa& 
rendered  more  difficult  owing  to  the  ship  having  settled  in 
the  sand  and  being  hogged,  which  jammed  everything  be- 
tween the  decks.  All  of  the  cargo  which  was  saved  wa& 
brought  to  New  York  and  delivered  to  the  owners  except  a 
small  part  unidentified,  which,  with  the  savings  of  the  wreck, 
was  sold.  After  the  Coast  Wrecking  Company  took  charge 
of  tbe  Yindicator,  the  libellants  Johnson  &  Higgins  were  em- 
ployed by  her  owners  to  render,  and  they  did  render,  the 
necessary  services  at  New  York,  in  corresponding  with  the 
consignees,  ascertaining  the  valuations,  and  identifying  the 
cargo,  and  taking  general  charge  of  the  interests  of  all  con- 
cerned, and  their  services  in  this  regard,  including  their  state- 
ment and  apportionment  hereafter  mentioned,  in  respect  to 
tbe  cargo  delivered  to  tbe  respondent,  were  reasonably  worth 
tbe  sum  of  $1,223  82.  This  does  not  include  any  commission 
to  them  for  collecting  and  paying  the  salvage.    On  the  9th  of 


JULY,  1882.  565 


The  Coast  W recking  Co.  v.  The  Pheniz  InRurance  Co.,  of  Brooklyn. 

■*- 

January,  they  issued  the  following  circular  to  the  shippers 
and  consignees  of  the  Vindicator's  cargo :  *  New  York,  Jan- 
uary 9th,  1879.  The  steamer  Vindicator,  from  Fall  Eiver 
for  Philadelphia,  went  ashore  near  Moriches,  L.  I.,  where  she 
now  lies.  Assistance  has  been  sent  to  her,  and  her  cargo  is 
being  discharged  and  sent  to  New  York.  To  enable  us  to 
identify  and  deliver  cargo  we  need  a  copy  of  your  invoice. 
Will  you  please  send  it  to  us  as  soon  as  possible,  and  state 
where  you  are  insured  and  in  what  company.  Any  informa- 
tion in  regard  to  cargo  saved  can  be  obtained  from  the  under- 
signed. Johnson  &  Higgins.'  A  copy  of  this  notice,  which 
had  been  sent  to  the  £ddyBtone  Manufacturing  Company, 
was  forwarded  by  it  to  the  Fhenix  Insurance  Company,  and 
was  received  by  the  latter  company  on  the  11th  of  January. 
Johnson  &  Higgins  paid  to  the  storekeeper  on  Staten  Island 
$100  for  receiving,  identifying  and  delivering  the  cargo. 
They  paid  to  a  professional  appraiser  $275  for  appraising  it. 
They  made  an  elaborate  statement .  in  the  form  of  a  general 
average  statement,  in  which  they  apportioned  the  charges  of 
the  Coast  Wrecking  Company  for  salvage  and  special  dis- 
bursements, and  their  own  disbursements  and  charges,  among 
the  owners  of  cargo  and  the  wreck.  Such  disbursements  and 
charges  were  in  accordance  with  the  established  usage  and 
laws  of  the  State  of  New  York  in  similar  cases,  and  the 
losses,  expenses,  disbursements  and  charges  which  they  so 
stated  and  apportioned  were  stated  and  apportioned  by  them 
in  accordance  with  the  established  usage  and  laws  of  the 
State  of  New  York  in  similar  cases.  They  have  already 
received  on  account  of  their  disbursements,  charges  and 
services,  from  the  owners  of  the  Vindicator  and  from  other 
owners  of  cargo,  about  $3,000.  The  Coast  Wrecking  Com- 
pany has  agreed  with  all  parties  interested  except  the  re- 
spondent, upon  a  salvage  of  60  per  cent,  and  has  received  the 
sum  of  $14,465  16  for  such  salvage.  The  value  of  the  prop- 
erty exposed  to  loss  in  rendering  the  salvage  service  was 
$92,000.  The  equipment  of  the  Coast  Wrecking  Company 
is  kept  up  at  a  large  expense,  and  is  in  active  service  only 


666  EASTERN  DISTRICT  OF  NEW  YORK, 

The  Coast  Wrecking  Co.  o.  The  Phenix  Insarance  Co.,  of  Brooklyn. 

about  one-qaarter  of  the  time,  and  daring  the  intervals  of 
rest  the  men  are  fed  and  paid  at  an  average  expense  of  $50  a 
month  for  wages  and  $25  a  month  for  keep,  for  each  man. 
A  reasonable  salvage  reward  for  the  services  performed  by 
the  Coast  Wrecking  Company,  in  respect  to  the  property  re- 
ceived by  the  respondent,  is  50  per  cent,  of  the  value  of  such 
property,  which  salvage  really  amounts  to  $6,314  65,  but  it 
was  taken  in  the  Court  below  at  $6,314  10." 

Oeorge  A.  Blacky  for  the  libellants. 
Thomas  E.  StiUman^  for  the  respondent. 

Blatohford,  J.  It  is  objected  by  the  respondent  that  the 
claim  made  in  the  libel  is  founded  wholly  on  the  bond  signed 
and  is  set  up  as  a  claim  for  general  average  charges,  and  that 
no  suit  to  recover  such  charges  can  be  maintained  in  the  Ad- 
miralty. It  is  also  objected  that  the  bond  provides  only  for 
the  payment  of  such  losses  and  expenses,  incurred  and  to  be 
incurred,  as  may  constitute  a  general  average,  when  stated 
according  to  the  established  usage  and  laws  of  the  State  of 
New  York ;  and  that  there  were  no  general  average  expenses 
incurred,  inasmuch  as  the  voyage  of  the  Vindicator  was 
abandoned,  and  all  community  of  interest  between  vessel, 
freight  and  cargo  was  destroyed.  It  is  true  that  the  libel  is 
based  on  the  bond  or  agreement,  and  that,  in  reciting  the 
agreement,  it  recites  it  as  one  applying  to  an  apportionment 
of  only  general  average  expenses.  But  the  agreement  is  in 
evidence,  and  in  the  answer  the  respondent  submits  to  the  de- 
termination of  the  Court  the  question  of  the  amount  of  corn- 
pensation  to  be  awarded  to  the  Coast  Wrecking  Company  for 
salvage.  The  answer  alleges  that  the  claim  of  Johnson  & 
Higgins  is  not  one  of  Admiralty  jurisdiction,  but  there  is  no 
exception  to  the  joining  of  the  two  claims  in  one  libel.  I  con- 
cur with  the  District  Judge  in  the  view  that  the  agreement 
covers  the  expense  of  the  services  rendered  by  Johnson  & 
Higgins,  and  their  disbursements  made  in  connection  witli 


JULY,   1882.  567 


The  CoDst  Wrecking  Co.  v.  The  Pbenix  Insurance  Co.,  of  Brooklyn. 


the  cargo,  although  the  case  may  not  be  one  of  general 
average.  The  bond  or  agreement  covers  general  average 
charges,  but  it  goes  farther.  It  recites  general  average 
losses  and  expenses,  and  then  it  recites  that  there  may  be 
other  charges  incurred  in  respect  to  salvage  and  discharging 
the  cargo  and  sending  it  to  New  York,  which  may  apply  to 
and  be  due  from  specific  interests,  according  to  the  usage  of 
the  port  of  New  York.  The  signers  then  agree  to  pay  "  the 
loss  and  damage  aforesaid  and  other  incidental  expenses  there- 
on," according  to  their  interest  in  vessel,  freight  and  cargo, 
provided  ^^such  losses  and  expenses  aforementioned"  be 
stated  and  apportioned  by  Johnson  &  Higgins  in  accordance 
with  the  established  usage  and  laws  of  the  State  of  New 
York  in  similar  cases.  This  includes  the  expenses,  disburse- 
ments, charges  and  services  sued  for  by  Johnson  &  Uiggins, 
because  they  were  incidental  to  ascertaining  and  adjusting  the 
proportionate  share  chargeable  to  the  cargo,  of' the  expenses 
incurred  in  saving  and  discharging  the  cargo  and  delivering 
it,  in  addition  to  embracing  such  expenses. 

As  to  the  Admiralty  jurisdiction,  the  services  and  ex- 
penses covered  by  the  agreement  are  those  which,  if  per- 
formed and  incurred  by  the  owner  of  the  vessel,  would  have 
fallen  within  the  line  of  his  duty  to  take  care  of  and  save  the 
cargo.  Such  duty  would  have  extended  to  all  the  disburse- 
ments and  services  of  Johnson  &  Higgins.  They  would 
have  been  maritime  in  their  nature,  and  their  character  is 
not  changed  or  affected  because  the  ship-owner  put  Johnson 
&  Higgins  in  his  place  and  the  liability  of  the  owners  of 
cargo  to  the  8hij>-owner  became  evidenced  by  a  written  obli- 
gation in  favor  of  Johnson  &  Higgins.  This  is  an  express 
contract  for  a  maritime  service.  Every  thing  that  was  done 
was  incident  to  saving  and  delivering  the  cargo. 

The  propriety  and  lawfulness  and  reasonableness  of  the 
charges  made  by  Johnson  &  Higgins  are  attacked,  but  there 
is  no  evidence  opposing  that  of  Mr.  Krebs  in  their  favor. 

As  to  the  amount  of  salvage  to  be  awarded  to  the  Coast 
Wrecking  Company,  it  is  contended  by  the  respondent. that 


568  EASTERN  DISTRICT  OF  NEW  YORK. 

The  Coast  WreckiDg  Co.  v.  The  Pheoix  Insurance  Co.,  of  Brooklyn. 

all  the  services  rendered  at  the  wreck  after  January  26th 
were  for  the  benefit  of  the  vessel  alone  and  with  the  hope  of 
saving  her,  and  not  for  the  benefit  of  the  cargo  of  the  re- 
spondent ;  and  that  the  cargo  cannot  be  made  to  pay  for  nn- 
snccessful  efforts  to  save  the  vessel.  It  is  also  urged  that  the 
50  j?^  c^n^.  salvage  awarded  by  the  District  Court  was  too 
large.  But,  even  if  the  services  in  regard  to  the  cargo  be 
considered  by  themselves,  it  ia  impossible  to  determine  what 
particular  services  were  rendered  in  respect  to  the  cargo  of  the 
respondent.  The  service  in  regard  to  all  the  cargo  was  a  con- 
tinuous service,  and  every  part  of  the  cargo  was  interested  in 
the  whole  of  it,  and  should  bear  its  due  proportion  of  the 
whole  expense  of  saving  aU  that  was  saved.  The  only  proper 
or  possible  mode  of  fixing  the  salvage  is  to  award  a  percent- 
age of  the  value  of  the  property  saved.  The  District  Court 
has  fixed  that  at  50  per  cent,  on  a  full  and  careful  consider- 
ation of  all* the  evidence.  That  rate  was  adopted,  without 
litigation,  by  all  the  owners  of  cargo  except  the  respondent. 
Not  only  is  the  service  in  the  particular  case  to  be  regard- 
ed, but  the  compensation  is  to  be  looked  at  as  it  may  induce 
aid  by  competent  salvors  to  other  property  in  distress ;  and 
the  equipment  of  the  Coast  Wrecking  Company  with  steam- 
ers and  pumps  and  wrecking  material  and  skilled  men,  and  its 
readiness  to  act  on  a  moment's  notice,  must  be  considered, 
involving  as  that  does  large  investments  and  expenses  which 
go  on  as  well  while  there  is  no  employment.  Even  the  award 
of  50  per  cent,  in  respect  to  the  respondent's  property  will 
not  give  more  than  $12,000  compensation,  beyond  expenses, 
for  saving  over  $40,000  worth  of  property.  This  is  liberal, 
as  it  ought  to  be,  but  I  concur  with  the  District  Court,  that  it 
cannot,  in  view  of  all  the  circumstances,  be  considered  ex- 
cessive. 

The  libellant  the  Coast  Wrecking  Company  is  entitled  to 
a  decree  against  the  respondent  for  the  sum  of  $6,314  10, 
with  interest  on  said  sum,  at  the  rate  of  6  per  cent  per 
annum,  from  May  2d,  1881,  the  date  of  the  decree  of  the 
District  Court  awarding  to  it  that  sum ;  the  libellants  the 


JULY,  1882.  569 


The  Bobinson  Tobacco  Company  v.  Philips. 


members  of  the  firm  of  Johnson  &  Higgins  are  entitled  to  a 
decree  against  the  respondent  for  the  snm  of  $1,223  82,  with 
interest  on  said  snm,  at  the  rate  of  6  per  cent  per  anrnrni^ 
from  December  4th,  1879,  the  date  of  the  filing  of  the  libel ; 
and  the  libellants  are  entitled  to  a  decree  against  the  respond- 
ent for  their  costs  in  the  District  Court,  taxed  at  $117  47,  and 
for  their  costs  in  this  Court,  to  be  taxed. 


The  Robinson  Tobaooo  Company 
Chables  S.  Philips  and  anotheb.    In  Equitt. 

Where  an  equity  suit  is  set  down  for  hearing  on  the  pleadings,  the  plaintiff 
cannot,  on  the  hearing,  introdace  in  evidence  docnments  which  are  not 
made,  by  proper  reference,  a  portion  of  the  bill. 

(Before  Wallace,  J.,  Southern  District  of  New  York,  July  10th,  1882.) 

Wallace,  J.  This  cause  having  been  set  down  for  hear- 
ing upon  the  pleadings,  on  the  motion  of  the  defendant,  and 
because  of  the  complainant's  default  in  taking  proofs  as  re- 
quired by  the  rules,  the  complainant  cannot  be  permitted  to 
introduce  exhibits  and  documents,  upon  such  hearing,  which 
are  not  made,  by  proper  reference,  a  portion  of  its  bill. 

The  order  setting  down  the  cause  upon  the  pleadings  was 
made  expressly  to  preclude  the  complainant  from  introduc- 
ing evidence  which  it  was  its  duty,  under  the  Eules,  to  proffer 
in  time  to  permit  the  defendant  to  reply  to  it. 

The  bill  is  dismissed,  with  costs. 

Worth  Osgood,  for  the  plaintiff. 
Hvhert  A.  Banning,  for  the  defendants. 


APPENDIX. 


L 

SlTLES. 

Jiules  of  the  CHrcuit  Court  of  the  United  States  for  the  SotOhem  District  of  Nem 
York,  adopted  tinoe  thepuMicaHon  of  the  nineteenth  volume  of  these  BeporU. 

CkrroBEB,  Ist,  1888. 

At  the  jury  terms  for  trials  of  issues  in  which  the  United  States  is  not  a 
party  or  interested,  a  day  calendar  shall  be  made  from  causes  on  the  general 
calendar.  The  first  twelve  causes  on  the  calendar  shall  comprise  the  day  calen- 
dar for  the  first  day  of  the  term.  For  each  subsequent  day,  six  causes,  to  be 
selected  by  the  derk  from  all  causes  noticed  for  the  day  calendar,  according  to 
their  order  on  the  general  calendar,  shall  comprise  the  day  calendar.  Causea 
that  have  not  been  placed  upon  the  day  calendar  may  be  reserved  for  a  future 
day,  by  filing  a  consent  of  the  attorneys,  specifying  the  day,  with  the  derk^ 
but  will  not  have  priority  oyer  causes  preriously  placed  on  the  day  calendar, 
unless  the  Court,  for  special  reasons,  so  directs.  Causes  will  be  placed  on  the* 
day  calendar  upon  the  notice  of  either  party  filed  with  the  clerk  by  8  o'clock 
p.  M.  of  the  preceding  day.  A  copy  of  the  day  calendar  for  each  succeeding 
day  shall  be  conspicuously  posted  by  the  clerk,  in  the  Court  room,  by  4  o'clock 
p.  iL  After  the  day  calendar  is  thus  posted,  no  change  shall  be  made,  and  each 
cause  must  be  disposed  of  for  the  term,  when  reached,  unless,  for  sufiicient 
cause  shown,  the  Court  may  otherwise  direct.  Causes  not  reserved  by  consent,, 
or  noticed  for  the  day  calendar  before  causes  having  a  later  date  of  issue  shall 
have  been  placed  thereon,  shall  be  deemed  passed  for  the  term. 


OCTOBEB  1st,  1888. 

When  a  cause  has  been  removed  from  a  State  Court,  either  party  may  forth- 
with cause  a  copy  of  the  record  to  be  filed  in  this  Court,  and  thereupon  may 
notice  the  cause  for  trial  io  this  Court,  although  the  term  has  commenced;  and» 
upon  filing  a  note  of  issue,  may  place  the  cause  upon  the  calendar,  as  of  the 
date  when  the  record  was  filed.  Such  cause  wUl  not  be  placed  on  the* 
calendar  until  five  days  after  the  filing  of  the  note  of  issue.  When  the  cause 
has  been  duly  noticed  for  trial  in  the  State  Court  before  removal,  no  new  notice 
of  trial  in  this  Court  will  be  required,  but  the  party  filing  a  note  of  issae 
shall,  on  the  day  of  filing  the  same,  serve  notice  thereof  on  the  adverse  party. 


572  APPENDIX. 

JiuU$  of  the  Circuit  Court  of  the  United  Statee  for  the  Northern  District  of  New 
York  J  adopted  nnce  the  publication  of  the  eighteenth  volume  of  these  Beporte, 

JuNS  2'7th,  1882. 

A.  term  of  this  Court  haying  been  appointed  by  law  to  be  held  in  the  City  of 
Syracose,  in  the  County  of  Onondaga,  on  the  third  Tuesday  of  Noyember  in 
each  year.  It  is  Ordered,  that  the  Clerk  of  this  Court  and  the  Commissioner  of 
Jarors,  on  or  before  the  first  day  of  October,  1882,  select  the  names  of  at  least 
four  hundred  jurors,  residents  of  Onondaga  County,  qualified  to  serve  as  grand 
and  petit  jurors,  in  the  manner  provided  by  the  general  Rule  of  this  Court 
regulating  the  selection  and  drawing  of  jurors  to  serve  in  thi^  Court ;  and  that 
thereafter  names  of  persons  to  serve  as  grand  and  petit  jurors  at  said  term  shall 
be  selected  at  the  time  and  in  the  manner  provided  in  said  Rule.  It  is  farther 
ordered,  that  the  Marshal  prepare  a  suitable  jury  box  for  Onondaga  County. 


March  2l8t,  1883. 

The  Rule  heretofore  adopted  regulating  the  selection  and  drawing  of  jurors 
to  serve  in  this  Court  is  hereby  amended  so  as  to  read  as  follows : 

"  Suitable  boxes  will  be  provided  by  tiie  Marshal  and  delivered  to  the  Clerk 
for  the  safe  keeping  of  the  names  of  persons  to  be  selected  as  eligible  to  serye 
as  grand  and  petit  jurors.  One  such  box  shall  be  provided  and  designated  for 
each  of  the  several  counties  within  the  district  where  stated  terms  of  the  Court 
Are  required  by  law  to  be  held.  Before  the  first  Tuesday  in  April  and  the  first 
Tuesday  in  May,  in  each  year,  the  Clerk  of  the  Court  and  the  Commissioner  of 
Jurors  shall  select  the  names  of  not  less  than  fonr  hundred  persons,  from  the 
residents  of  each  of  said  counties  in  which  a  stated  term  of  this  Court  is  re> 
quired  by  law  to  be  held,  qualified  to  serve  as  grand  and  petit  jurors.  Such 
names  shall  be  selected  without  reference  to  party  affiliations.  No  person  shall 
be  eligible  to  serve  as  a  grand  or  petit  juror  at  any  term  of  this  Court  unless 
he  is  at  the  time  a  resident  of  the  county  in  which  such  term  is  held.  The 
name  of  each  person  so  selected  shall  be  written  upon  a  separate  ballot,  with 
his  place  of  residence  and  occupation.  The  first  name  shall  be  selected  by  the 
Olerk  and  deposited  by  him  in  the  box  designated  for  the  proper  county,  and 
the  second  name  shall  be  selected  and  deposited  by  the  Commissioner  of  Jurors ; 
and  thereafter  the  Clerk  and  the  Commissioner  of  Jurors  shall  alternately 
select  and  deposit  a  name  in  the  box  until  the  required  number  shall  be  com- 
pleted.  If  at  any  time  less  than  three  hundred  names  remain  in  the  box,  the 
Clerk  and  Commissioner  of  Jurors  shall  replenish  the  quota  in  the  manner 
aforesaid.  This  provision,  however,  shall  not  be  deemed  to  have  any  reference 
to  the  annual  filling  of  the  boxes  for  the  several  counties,  which  must  contain, 
on  the  first  Tuesday  in  May  of  each  year,  not  less  than  four  hundred  namea. 
The  seyeral  boxes  shall  be  locked  and  retained  in  the  custody  of  the  Clerk, 
And  the  keys  shall  be  kept  by  the  Commissioner  of  Jurors.  The  names  of  all 
persons  who  may  be  required  to  serve  as  g^and  or  petit  jurors  at  any  term  of 
this  Court  shall  be  drawn  publicly  by  the  Clerk  from  the  box  for  the  county  in 


APPENDIX.  573 

which  snch  term  is  to  be  held,  and  at  the  close  of  each  term  the  ballots  con- 
taining  the  names  of  persons  who  actually  served  as  jurors,  or  who  proved  to 
be  ineligible  to  serve  as  jnrors,  shall  be  destroyed  by  the  Clerk.  The  Clerk 
shall  post  npon  the  outer  door  of  the  Clerk's  office  notice  of  the  time  and  place 
for  drawing  jurors,  at  least  t^n  days  prior  to  the  drawing,  except  when  jurors 
are  summoned  during  a  session  of  the  Courf 
All  Rules  inconsistent  with  this  Rule  are  hereby  abrogated. 


Maboh  21st,  1888. 

Whereas,  Charles  A.  Doolittle  has  tendered  his  resignation  as  United  States 
Commissioner  of  Jurors,  for  the  United  States  Circuit  Court  for  the  Northern 
District  of  New  York,  It  is  Ordered,  that  the  said  resignation  be  and  the  same 
is  hereby  accepted,  and  it  is  further  ordered  that  William  Townsend,  Counsellor 
at  Law,  of  the  City  of  Utica,  be  and  he  is  hereby  appointed  as  such  Com^lis- 
sioner. 


Bvle  of  the  Circuit  Court  of  the  United  States  for  the  District  of   Connedieittr 
adopted  since  the  publicatum  of  the  eighteenth  volume  of  these  Reports, 

July  12th,  1888. 

In  pursuance  of  the  provisions  of  the  second  section  of  the  Act  of  Congress 
of  the  United  States,  entitled  "  An  Act  making  appropriations  for  certain  judi- 
cial expenses  of  the  Government  for  the  fiscal  year  ending  June  80th,  1880,  and 
for  other  purposes,"  approved  June  80th,  1879,  It  is  Ordered,  that  suitable 
boxes  will  be  provided  by  the  Marshal  and  delivered  to  the  Clerk  for  the 
safe  keeping  of  the  names  of  the  persons  to  be  selected  as  eligible  to  serve  as 
grand  and  petit  jurors.  One  said  box  shall  be  provided  and  designated  for  the 
counties  of  Hartford,  Tolland,  Windham  and  New  London,  which  said  counties 
shall  be  known  as  Sub-District  No.  1,  and  another  box  shall  be  provided  and 
designated  for  the  counties  of  New  Haven,  Middlesex,  Fairfield  and  Litch- 
field, which  said  counties  shall  be  known  as  Sub-District  No.  2.  The  Jury 
Commissioner  and  Clerk  of  this  Court  shall,  as  soon  as  practicable  after  the 
entry  of  this  order,  and  annually  thereafter,  in  the  month  of  August  of  each 
year,  select  to  serve  as  grand  and  petit  jurors  in  this  Court,  and  place  in  the 
boxes  so  provided  as  aforesaid,  the  names  of  at  least  four  hundred  persons  for 
each  Sub-District,  each  of  which  persons  shall  possess  the  qualifications  pre- 
scribed in  Section  800  of  the  Revised  Statutes,  being  the  qualifications  set 
forth  in  **  An  Act  relating  to  Jurors,"  passed  by  the  General  Assembly  of  the 
State  of  Connecticut,  approved  March  25th,  1880,  and  shall  be  electors  of  ^  said 
State,  and  residents  of  said  respective  Sub-Districts.  Each  name  shall  be  writ- 
ten on  a  separate  slip  of  paper,  with  the  person's  place  of  residence,  and  the 
said  Clerk  and  the  said  Commissioner  shall  each  alternately  place  one  name  in 
said  respective  boxes,  commencing  with  said  Clerk,  without  reference  to  party 
affiliations,  until  the  required  number  shall  be  completed.    If  at  any  time  less 


874  APPENDIX 

than  three  hundred  namee  remain  in  the  hex,  the  Clerk  and  the  Commiaflioner 
eball  replenish  the  qaota  in  the  manner  aforesaid.  The  bozee  shall  be  locked 
and  retained  by  the  Clerk  and  the  key  shall  be  kept  by  the  Commissioner.  The 
names  of  all  jurors,  grand  and  petit,  to  senre  at  any  term  of  this  Conrt,  shall  be 
drawn  pnblidy  by  the  Clerk  from  the  box  for  the  Snb-Districi  in  which  the 
term  is  to  be  held,  and  from  the  names  placed  therein,  and  at  the  close  of  each 
term  the  baUots  containing  the  names  of  persons  who  actaally  served  as  jnrors, 
or  who  proved  to  be  ineligible  as  jnrors,  shall  be  destroyed  by  the  Clerk.  The 
Clerk  shall  post  nponthe  outer  door  of  the  Clerk's  office  notice  of  the  time  and 
place  of  drawing  jnrors  at  least  three  days  prior  to  the  drawing,  except  where 
jnrors  are  summoned  during  a  session  of  Court.  All  Rules  inconmstent  with 
this  Rule  are  hereby  abrc^gated. 


INDEX. 


ACTION. 

See  Mo^fCT  Had  and  Rxoexyzd. 
Tax,  8. 


ADMIRALTY. 


See  Salyagk,  4. 


AGREEMENT. 


See  Railboad. 


APPRAISEMENT. 


See  Dmsfly  1. 


ASSESSMENT. 


See  Tax,  1,  2. 


ASSIGNMENT. 

See  Imsubamob  (Lm),  1,  2. 
MoMST  Had  and  Bsokitxd. 


ATTACHMENT. 

See  FoBKiGN  Insttkanos  Coxpant. 
Skqizmtbation. 


ATTORNEY. 

1.  P.  employed  D.,  who  was  not  an  at- 
torney at  law,  to  prosecute  a  claim  of 
hia  aealDst  the  Goyernment,  to  re^ 
coyer  back  duties  illegally  exacted, 
afipreeiog  to  pay  him  for  his  seryices 
a  sun  equal  to  one-half  of  the  recoy- 


ery,  he  to  bear  all  the  expenses.  He 
employed  attorneys  and  brought  snit, 
in  the  name  of  P.,  against  a  collector 
of  customs.  For  12  years,  and  until 
be  died,  he  had  exclnsiye  control  of 
the  suit  He  made  substitutions  of 
attorneys  and  defrayed  all  expenses. 
After  his  death,  his  executrix  con- 
trolled the  suit,  and  substituted  an 
attorney,  and  a  judgment  for  oyer 
Jl  7,000  was  recoyered  m  fay  or  of 
P.  Then  the  Court  denied  a  motion 
made  by  the  defendant  to  yacate  the 
appearance  of  the  attorney  substi- 
tuted by  the  executrix.  Then  P. 
succeeded  in  ejecting  such  attorney, 
by  the  aid  of  the  defendant's  attor- 
ney, during  the  pendency  of  a  writ 
of  error.  The  judgment  being  af- 
firmed, and  the  clerk  refusing,  on 
the  mandate,  to  recognize  any  attor- 
ney but  the  one  so  ejected,  P.  moyed 
to  yacate  the  appearance  of  such  at- 
torney. The  motion  was  granted, 
on  P.  s  paying  to  the  executrix  one- 
half  of  the  amount  of  the  judgment, 
without  prejudice  to  his  right  to  re- 
coyer  at  law  the  whole  or  any  part 
thereof.    Dodge  y,  Schell,  517 


AVERAGE. 


See  SALyAQB,  4. 


B 


BANE. 


See  RaoEXyxB. 
Tax,  1,  8. 


BANBHUPTCY. 


See  Equity,  8. 


57< 


IHDBZ. 


0 

OOLLECrOK. 


I 


4.  Whaiare 


M 


Bm 


OOLUSION. 


UwB,"  defined. 
id. 


1.  Ateboooer  and  aateamer  collided. 
The  schooner's  side  lights  werebnm- 
ing,  but  not  properly,  and  were  not 
seen  from  the  steamer,  thoogh  those 
on  her  were  ngilant  The  steamer 
did  all  that  it  was  incumbent  on  Art  I, 
her  to  do,  when  she  disooTered  the  Art  I, 
schooner's  light.  The  schooner  did  Art  1, 
not  exhibit  any  lighted  torch,  al-  Art.  8, 
though  she  saw  the  approach  of  the 
steamer:  Htld,  that  the  schooner 
was  iHiolly  in  fsnlt    The  Narragan^ 

M€U,  SI 

OONSTITDnONAL  LAW. 


6.  Although,  by  section  10,  of  Article 
1,  of  the  Constifciitiaa  of  the  United 
States,  State  inqwction  laws  are 
made  subject  to  the  rerision  and  con- 
trol of  Congreas,  this  Court  hia  au- 
thority to  decide  whether  a  particular 
law  is  an  inq>ection  law  or  not      tdL 

ooNSTrrunoN  of  the  uhtted 

STATES. 


8,  4M 

9,  «» 

10,  296,897,  802»  808, 806 
2,  86 


ooirrRACT. 

SeeRiiLBOAB. 

OOPYMGHT. 


1.  The  Act  of  the  Legislature  of  New 
York,  passed  May  81st,  1881,  {Zowm 
of  New  York,  1881,  cht^,  432,  p.  590,) 
imposing  a  duty  of  $1  for  each  alien 

Sissenger  arriving  at  the  port  of 
ew  York  from  a  foreign  port,  and 
appropriating  the  money  to  "the 
execution  of  the  inspection  laws  of 
the  State  of  New  York  "  by  the  Com- 
missioners of  Emigration,  is  in  con- 
iUct  with  the  exclusive  power  of 
Congress,  under  the  Constitution  of 
the  United  States,  to  regulate  com- 
merce. ITie  People  v.  Compagfde 
Gmerale,  296 

2.  The  "inspection  laws"  referred  to 
are  the  provisions  of  the  Act  of  the 
Legislature  of  New  York,  passed 
May  28tb,  1881,  {Lawa  of  New  York, 
1881,  ehap.  427,^.  686,)  for  inspect- 
ing the  persons  and  effects  of  all 
persons  arriving  by  vessel  at  the 
port  of  New  York  from  a  foreign 
country.  td. 


8.  The  Act  of  May  Slst,  1881,  is  not 
yalid  as  a  statute  layinff  an  impost, 
or  a  duty  on  imports,  K>r  executing 
inspection  laws,  under  Article  1,  sec- 
tion 10,  of  the  Constitution  of  the 
United  States,  because  the  Act  of 
May  28th,  1881,  is  not  an  inspection 
law.  id,  I 


.  The  title  deposited  with  a  view  to 
a  copyright  for  a  book  was  this: 
*<  Over  One  Thousand  Redpes.  The 
Lake-Side  Cook  Book;  A  Complete 
Manual  of  Practical,  Economical,  Pal- 
atable and  Healthfol  Cookery.  Chi- 
cago: Donnelley,  Loyd  and  Com- 
pany, 1878."  The  book  was  pub- 
lished with  this  tiUe  page  :  "  The 
Lakeside  Cook  Book  No.  1.  A  Com> 
plete  Manual  of  Practical,  Econom- 
ical, PalaUble  and  Healthful  Cook- 
ery. By  N.  A,  D.,"  followed  by  the 
imprint  of  the  place  of  publication 
and  the  name  of  the  pr6prietor  and 
the  notice  of  copyright,  on  the  title 
page:  ffeld,  that  the  omission,  in 
the  tiUe  "page  of  the  published  book, 
of  the  words  "  Over  One  Thousand 
Recipes,"  and  the  addition,  in  it,  of 
tiie  words  "No.  1"  and  "Bv  N.  A. 
D."  were  immaterial,  and  tnat  the 
title  published  was  deposited,  in  com- 

Sliance  with  g  4,966  of  the  Revised 
tatntes.    Donnelley  v.  Ivert,      881 

2.  Y.  took  out  a  copyright,  in  1880,  on 
a  chromo-lithographic  print,  entitled 
"Qambrinus  and  his  followers,"  as 
proprietor,  he  being  a  citizen  of  the 
United  States.  The  chromo  was  de- 
signed in  Europe,  by  an  alien,  and 
printed  there.  Y.  showed  no  title 
derived  from  the  author:  Held, 


INDEX. 


577 


(I.)  The  chromo  was  the  sabject 
of  a  copyright ; 

(2.)  Y.,  not  being  the  author  or 
deriyiog  title  from  him,  could  not, 
under  §  4,962  of  the  Reviaed  Stat- 
utes, lawfully  obtain  a  copyright  for 
the  chromo ; 

(8.)  The  author,  not  being  a  citizen 
of  or  resident  in  the  United  States, 
could  not  obtain  a  copyright  for  the 
chromo  as  author,  and,  therefore,  Y. 
oould  not,  as  proprietor; 

(4.)  A  chromo  is  a  "print,*'  within 

§  4,971    of  the    Revised    Statutes. 

YuenglinffT,  Sehile,  452 


CORPORATION. 


JSee  JusisDioriON,  7. 
Fraotioe,  12. 
Railroad,  4. 
Reoeivir. 


COSTS. 


1.  In  the  Second  Circuit,  actual  dis- 
bursements necessarily  incurred  in  a 
suit,  in  addition  to  fees  paid  for  ex- 
emplifications and  copies  of  papers, 
under  §  983  of  the  Revised  Statutes, 
are  taxed  in  favor  of  the  prevailing 
party.  Guniher  v.  lAverpool,  <tc,, 
Ins.  Co.,  890 

2.  Accordingly,  in  a  suit  at  law,  (I 
paid  for  serving  the  summons  by 
which  the  action  was  commenced  was 
allowed  as  a  disbursement.  id. 

8.  Money  paid  to  a  stenographer  for  a 
copy  of  the  minutes  of  the  testimony 
g^ven  on  the  trial  was  not  allowed,  id. 

4.  Interest  on  the  verdict  from  the  day 
it  was  rendered  to  the  day  of  rend- 
ering judgment  was  allowed.  id. 

See  Patent,  107,  110,  180. 
Salvage,  8. 


CRIMINAL  LAW. 

1.  A  person  was,  on  an  examination  on 
a  criminal  complaint,  committed  by  a 
Commissioner  to  await  the  aclion  of 
the  grand  jury.  On  a  habeas  corpus 
and  a  certiorari,  the  Court  allowed 

Vol.  XX.— 87 


the  accused  to  depart  without  giving 
any  recognizance,  subject  to  the  issu- 
ing of  a  new  warrant  of  arrest,  11  ord- 
ered by  the  Court.  After  the  lapse 
of  five  months,  the  Court  was  asked 
by  the  accused  to  determine  whether 
the  evidence  before  the  Commissioner 
was  sufficient  to  warrant  his  com- 
mitment. Meantime  a  grand  jury 
had  met  and  been  discharged,  with- 
out indicting  the  accused,  and  no  in- 
formation had  been  filed  against  him. 
He  was  not  in  actual  or  constructive 
custody :  Hdd,  that  the  Court  would 
not  determine  the  said  question,  and 
that,  if  desired,  an  order  would  be 
entered  discharging  the  accused,  be- 
cause no  indictment  or  information 
had  been  filed  against  him.  In  re 
Esselbom,  1 

2.  An  Indictment,  under  §  8.266  of  the 
Revised  Statutes,  charged,  in  one 
count,  the  unlawful  use  of  a  still,  for 
the  purpose  of  distilling  spirits,  on 
premises  where  ale  was  made,  and,  in 
another  count,  substantially  a  like 
offence.  The  defendant  was  found 
guilty  on  one  count,  and  not  on  the 
other,  and  was  sentenced  to  be  im- 
prisoned and  fined.  At  a  subsequent 
term  he  moved  to  vacate  the  judg- 
ment, on  the  ground  that  the  same 
offence  was  charged  in  the  two 
counts,  and  that  the  verdict  on  the 
first  count  was  made  void  by  that  on 
the  second ;  Held,  that  the  motion 
must  be  denied,  because, 

(1.)  Under  the  Rules  of  the  Court 
the  motion  was  too  late ; 

(2.)  The  term  at  which  the  judg- 
ment was  entered  having  expired, 
the  Court  had  no  power  to  vacate  it ; 

(8.)  The  Question  raised  was  adju- 
dicated by  tne  passing  of  sentence ; 

(4.)  The  offences  charc^ed  in  the 
two  counts  were  two  different  of- 
fences.    United  States  v.  Malone,  187 

8.  Knowledge  is  not  made,  by  §  8,266, 
an  ingredient  in  the  offence,  and, 
therefore,  it  need  not  be  averred  in 
the  indictment  id 

4.  Evidence  that  the  accused  devised  a 
scheme  to  put  counterfeit  money  in 
circulation,  by  sending  through  the 
mail,  to  one  B.,  a  letter  calculated  to 
induce  B.  to  purchase  counterfeit 
money  at  a  low  price,  for  the  purpose 


578 


INDEX 


of  putting  it  off  as  good,  and  that,  in 
order  to  carry  said  scheme  into  effect, 
he  placed  in  a  post  office  a  letter  ad- 
dressed to  B.,  for  the  purpose  of  in> 
ducing  B.  to  purchase  counterfeit 
money  at  a  low  price,  in  order  that 
he  might  put  it  off  as  good  money, 
for  its  face  value,  is  sufficient  to  es- 
tablish an  offence  under  §  6,480  of 
the  Reyised  Statutes,  although  no  ev- 
idence is  given  to  show  an  intention 
in  the  accused  to  defraud  B.,  or  any 
other  particular  persoo.  United 
States  V.  Jones,  286 

6.  The  eofjms  ddieti,  in  such  offence,  is 
the  mailing  of  the  letter  in  execution 
of  the  unlawful  scheme.  id, 

6.  On  the  trial,  the  Court  refused  to 
permit  the  jury  to  inspect  a  copy  of 
the  letter  proved  to  have  been  mail- 
ed, which  copy  the  accused  made  in 
the  presence  of  the  jury:  Eeld,  no 
error.  id. 

7.  The  Court  also  refused  to  permit  an 
expert  in  handwriting  to  say  whether 
the  original  letter  put  in  evidence  by 
the  Government,  and  the  copy  of  it 
made  by  the  accused  in  the  presence 
of  the  jury,were  in  the  same  hand- 
writing :    ffeld^  no  error.  id, 

8.  Where  a  motion  to  quash  an  indict- 
ment is  made  after  plea,  and  so  much 
time  has  elapsed  since  the  date  of  the 
alleged  offence  that  it  is  too  late  to 
frame  a  new  indictment,  the  motion 
must  fail  unless  the  indictment  dis- 
closes defects  that  would  be  clearly 
fatal  after  verdict.  United  Slates  v. 
Bartow,  849 

9.  It  is  made  an  offence,  by  §  6,209  of 
the  Revised  Statutes,  for  a  cashier  of 
a  national  bank  to  make  any  false 
entry  in  any  report  or  statement  of 
the  association,  with  intent  to  de- 
fraud the  association,  or  to  deceive 
any  officer  of  the  association  or  any 
agent  appointed  to  examine  the  af- 
fiEiirs  of  any  such  association ;  and  an 
indictment  under  that  section  is  bad 
which  avers  only  an  intent  to  deceive 
the  Comptroller  of  the  Currency,  id. 

10.  An  indictment  under  that  section 
charged  the  making  a  false  report  of 
the  condition  of  the  bank,  and  had 


in  it  the  words,  "  whereby,  by  means 
of  a  false  entry  therein  by  him 
made/'  It  not  being  clear  that  that 
langfuage  would  be  neld  icsufficient- 
to  support  a  conviction  for  making  a 
false  entry  in  the  report,  the  question, 
was  left  to  be  raised  on  a  motion  in 
arrest  of  judgment,  and  a  motion  to 
quash  was  denied.  id. 

11.  A  motion  to  quash  an  indictaient^ 
made  after  plea,  cannot  prevail  un- 
less the  insufficiency  of  the  indict- 
ment is  so  palpable  that  no  judgment 
can  be  rendered  after  conyiction. 
United  States  v.  Bartow,  851 

12.  A  report  of  the  condition  of  a  na- 
tional bank,  made  by  its  cashier  to 
the  Comptroller  of  the  Currency 
and  verified  by  his  oath,  is  a  declara- 
tion, within  §  5,892  of  the  Revised 
Statutes.  id, 

18.  An  indictment  under  that  section 
charged  the  taking  of  a  false  oath  to 
a  report  to  the  Comptroller  of  the 
Currency,  but  did  not  specifically 
aver  that  the  report  was  made  on  the 
requirement  of  the  Comptroller,  or 
according  to  a  form  prescribed  by 
him,  but  averred  that  the  report  was 
made  to  the  Comptroller,  "  and  veri- 
fied as  aforesaid,  as  by  law  required."^ 
It  not  being  clear  that  such  averment 
was  not  sufficient,  after  verdict,  to 
warrant  judgment  on  the  conviction, 
a  motion  to  quash  the  indictment  was 
denied.  id. 


D 


DUTIES. 

1.  Under  §§  2.927  and  2,928  of  the  Re- 
vised Statutes,  there  can  be  an  ap- 
praisement for  an  abatement  of  du- 
ties, on  account  of  damage  to  goods 
sustained  during  the  voyage  of  im- 
portation, after  the  goods  have  been 
entered  at  the  Custom  House  and 
tlie  estimated  amount  of  duties 
thereon  have  been  paid.  United 
States  V.  Fhdps,  129 

2.  Hay  is  not  a  manufactured  article, 
under  §  2,616  of  the  Revised  Stat- 
utes, and  80  subject  to  a  duty  of  20 


mBEX. 


579 


per  cenium  ad  vcdorem^  but  is  a  raw 
or  unmanafactared  article, under  that 
eectioQ,  and  so  is  subject  to  a  duty 
oC  10'/>«r  cenium  ad  valorem.  J^'atee 
V.  Mqffltt,  267 

8.  Tbe  protest  in  this  case  was  "  against 
any  greater  rate  of  duties  *  ♦  * 
than  at  the  rate  of  ten  per  centum  ad 
valorem,  for  tbe  reason  and  on  the 
grounds  that  no  hlgber  rate  than  ten 
per  centum  can  lawfully  or  properly 
be  charged  on  hay  imported.*'  The 
collector  had  liquidated  the  duties  at 
20  per  cent.,  under  §  2,616 :  Held,  that 
the  protest  was  sufficient,  under 
§  2,981.  id 


E 

EQUITY. 

1.  The  bill  in  this  case  was  sustained, 
on  demurrer,  as  a  bill  by  second 
mortgage  bondholders  of  a  railroad 
company  against  the  mortgagor  and 
a  trustee  in  the  mortgage,  to  fore- 
close the  mortgi^e.  Webb  y.  Ver- 
mont Central  R.  R.  Co,,  218 

2.  It  is  a  sufficient  reason  for  the  bond- 
holders to  proceed  in  their  own 
names  and  behalf,  making  the  trust- 
ees defendants,  that  the  trustees  haye 
acquired  adyerse  interests,  and  stand 
in  a  hostile  position,  so  that  they 
cannot  maintain  the  plaintifEia'  rights 
without  attacking  their  own.         id, 

8.  A  demurrer  to  the  bill  by  the  trust- 
ees of  a  prior  mortgage  and  by  par- 
ties in  possession  under  them  was 
sustained,  because  the  bill  was  not 
framed  as  a  bill  to  redeem  the  prior 
mortgage.  id, 

4.  W.  contracted  with  K.,  that  E. 
should  conduct  a  litigation  on  behalf 
of  W.,  as  counsel,  and  receiye  ^  of 
the  ayails  thereof  for  so  doing.  E. 
contracted  with  M.  and  H ,  that  they 
should  assist  E.  in  the  litigation,  and 
share  equally  with  him  in  tbe  ^.  Tbe 
litij^ation  was  conducted  by  them 
with  the  knowledge  of  W.  until  he 
received  a  sum  as  its  avails.  M. 
assigned  his  share  of  the  avails  to 
B.    B.  sued  W.  and  E.  in  a  Stote  | 


Court  of  New  York  to  recover  such 
share.  The  suit  was  removed  into 
this  Court.  B.  filed  a  bill  in  eauity 
in  this  Court  setting  up  the  aoove 
facts.  It  was  demurred  to  on  the 
grounds  (1)  that  there  was  no  priy- 
ity  of  contract  between  W.  and  M., 
or  between  W.  and  B. ;  (2)  that  W. 
was  only  liable  to  E. ;  and  (8)  that 
the  remedy  of  B.  was  at  law :  Held, 
that  the  demurrer  must  be  over- 
ruled.    Benedict  v.  WiUiame,        276 

6.  The  distinctions  between  legal  and 
equitable  procedure  being  abolished 
in  the  State  Courts  of  New  York,  and 
the  right  of  B.  being  a  purely  equi- 
table right,  he  can,  in  this  Court, 
proceed  in  equity.  id, 

6.  A  creditor's  bill,  founded  on  a  judg- 
ment recovered  against  a  debtor  in 
a  State  Court  in  California,  will  not 
lie  in  a  Circuit  Court  of  the  United 
States  in  New  York,  to  set  aside  a 
fraudulent  transfer  of  personal  prop« 
erty  made  by  the  debtor  in  Califor- 
nia, by  means  of  collusive  judgments 
and  sales  under  executions  thereon, 
no  judgment  haying  been  obtained, 
or  execution  issued,  in  such  Circuit 
Court,  or  in  any  State  Court  of  New 
York.    Claflin  v.  McDermott,       622 

7.  Q.,  a  co-executor  with  A.  and  W., 
borrowed  the  funds  of  the  estate,  and 
gave  bonds  and  mortgages  therefor 
to  liimself  and  his  co-executors,  as 
obligees  and  mortgagees.  On  a  sale 
of  the  mortgaged  property  under  a 
foreclosure  of  the  mortgages,  there 
was  a  deficiency.  On  a  settlement 
of  their  accounts,  the  executors  were 
authorized  to  retain  a  certain  sum  aa 
commissions,  one-third  of  which  was 
the  share  of  G.  The  co-executors 
brought  this  bill  in  equity  for  a  de- 
cree to  apply  to  the  debt  of  G.  hia 
share  of  commissions:  Held,  that 
the  bill  would  lie,  the  sole  remedy 
being  in  equity.  BanMom^.Oeer,  685 

8.  Held,  also,  that  the  plaintiffs  were 
entitled  to  the  share  of  a  composi* 
tion  in  bankruptcy  payable  by  G.» 
to  be  computed  on  such  deficiency ; 
and  that  the  debt  was  not  discharged 
by  the  composition,  because  there 
had  been  no  payment  or  offer  to  pay 
according  to  the  composition.        id. 


880 


INDEX. 


See  Etidenob. 

Insveakob  (Life),  4. 
Patent,  3  to  6. 
Pleading. 
Practice,  1,  2,  6,  7. 
Sequestration. 


ESTOPPEL. 
See  Etidesce,  2. 


EVIDENCE. 

1.  A  bill  in  equity  will  lie,  under  §  866 
of  the  Revised  Statules,  to  obtoin  a 
direction  that  the  testimony  of  a  wit- 
ness be  taken  in  perpetuam  rei  memo- 
riam,  where  the  plaintiff  alleges  that 
he  ia  usin^  a  process  to  the  use  of 
which  the  defendant  daims  an  exclu- 
sive right  under  a  patent,  that  the 
patent  is  void  for  want  of  novelty, 
thnt,  in  case  the  defendant  sues  the 
plaintiff  for  infringement  of  said  pat- 
ent, the  plaintiff  relies,  for  bis  de- 
fence, on  the  testimony  of  the  wit- 
ness, that  the  witness  had  made  pub- 
lic use,  in  the  United  States,  of  the 
said  process,  for  upwards  of  12  years 
before  said  patent  was  issued,  that 
said  witness  is  upwards  of  90  yearts 
of  age,  that  the  defendant  does  not 
sue  the  plaintiff  for  infringement, 
and  that  the  plaintiff  cannot  bring 
his  rights  to  a  judicial  determina- 
tion. New  York  d:  BcdHmore  Coffee 
Poluhing  Co,  v.  New  York  Coffee 
Polishing  Co,,  174 

2.  B.  sued  3.,  in  this  Court,  in  equity, 
for  the  infringement  of  a  patent.  On 
an  issue  as  to  novelty  the  Court  de- 
cided in  fiiYor  of  S.,  and  held  that 
the  bill  must  be  dismissed.  After- 
wards B.  sued  S.  again,  io  this  Court, 
in  equity,  for  the  infringement  of  the 
same  patent  8.,  in  his  answer,  set 
up,  as  an  elstoppel,  the  former  suit. 
No  decree  had  in  fact  been  entered 
in  it.  Proofs  were  taken  in  the  sec- 
ond suit,  in  which  it  was  assumed  by 
both  parties  that  there  had  been  a 
decree  in  the  fii'st  suit.  At  the  hear- 
ing of  the  second  suit  B.  objected  that 
there  had  been  no  decree  m  the  first 
suit.  The  Court,  on  the  motion  of 
S.,  then  signed  and  entered  a  decree 
in  the  first  suit,  and  allowed  it  to  be 


put  in  eyidence  on  the  part  oi  S.,  in 
the  second  suit,  and  held  that  it  was 
a  bar  to  the  second  suit  Barker  y. 
Siowe,  186 

8.  The  modes  of  taking  testimony  in 
equity  cases  explained.  BisehoffJuim 
V.  Baltser,  229 

4.  The  provision  of  Kule  68,  in  Equity, 
for  taking  testimony  in  an  equity 
case,  after  it  is  at  issue,  by  deposi- 
tion, according  to  the  Acts  of  Con- 
gress, is  still  in  force.  id, 

6.  Where  testimony  in  a  foreign  coun- 
try can  be  taken  orally,  it  ou^ht  not, 
except  for  special  reasons,  to  be  taken 
otherwise.  id. 

6.  The  plaintiff  in  an  equity  suit  hav- 
ing applied  for  an  order  for  a  com- 
mission to  examine  himself  on  writ- 
ten interrogatories  to  be  annexed  to 
the  commission,  on  an  afiidavit  show- 
ing thnt  he  expected  to  prove  by 
himself  the  material  averments  in  the 
bill,  or  many  of  them,  the  Court  al- 
lowed the  defendant  to  cross-examine 
him  orally.  id, 

7.  Where  an  equity  suit  is  set  down 
for  hearing  oo  the  pleadines,  the 
plaintiff  cannot,  on  the  hearing,  in- 
troduce in  evidence  documents  which 
are  not  made,  by  proper  reference,  a 
portion  of  the  bill.  Bobinton  Tobaeeo 
Co,  V.  Philipt,  669 

See  Criminal  Law,  4  to  7. 
Money  Had  and  Received. 
Municipal  Bond,  2,  6. 
Negligence,  1,  S,  4. 
PATENr,  2,  91,  98,  110. 

EXECUTOR. 
See  Equity,  1, 8. 


P 

FEES. 
'    See  Costs,  1  to  8. 

FOREIGN  INSURANCE  COMPANY. 
1.  Under  the  provisioiis  of  the  Act  of 


INDEX. 


581 


the  Legislature  of  New  York,  passed 
May  nth,  1^5,  (Laws  of  New  York, 
1866,  chap,  694,  p,  1,408,)  a  Virginia 
insurance  corporation  deposited,  in 
1878,  with  the  insurance  superin- 
tendent of  New  York,  certain  bonds. 
In  1879,  it  withdrew  its  ag^ency  from 
New  York.  In  1881,  all  its  risks 
outstanding  in  New  York  were  can- 
celled. Prior  to  that  the  bonds  had 
been  attached  in  New  York  in  a  suit 
brought  there  by  a  Rhode  Island  cor* 
poration  on  a  policy  of  insurance, 
which  suit  was  removed  into  this 
Court.  The  defendant  moved  to  set 
aside  the  levy  under  the  attachment: 
Held,  that  the  motion  must  be 
panted.  Providence  db  Stonmffton 
\  8.  Co.  V.  Virginia  Jf,  A  M.  Jne. 
Co.,  406 


INDICTMENT. 

See  Criminal  Law,  2,  8,  9,  10,  11, 
13. 


INJUNCTION. 


See  Patknt,  8  to  6. 


INSPECTION. 
See  CoNSTiTDTiONAL  Law. 


INSURANCE  (FIRE). 

1.  A  policy  of  fire  insurance  on  a  hotel, 
owned  by  the  plaintiff,  provided  that 
it  should  be  void  if  the  premises 
should  be  used  so  as  to  increase  the 
risk,  within  the  control  of  the  as- 
sured, without  the  assent  of  the  in- 
surer, or  If  the  assured  should  keep 
gasolme  or  benzine  without  written 
permission  in  the  policy,  and  that 
neither  benzine  nor  gasoline  should 
be  stored,  used,  kept  or  allowed  on 
the  premises,  temporarily  or  perma- 
nently, for  sale  or  otherwise,  unless 
with  written  permission  endorsed  on 
the  policy,  '*  excepting  the  use  of 
refined  coal,  kerosene  or  other  car- 
bon oil,  for  lights,  if  the  same    is 


drawn  and  the  lamps  filled  by  day 
light;"  otherwise,  the  policy  to  be 
void.  There  was  written  in  the  pol- 
icy :  "  Privilege  to  upe  gasoline  pras, 
gasometer,  blower  and  generator  be- 
ing underf^round,  about  60  feet  from 
main  building,  in  vault,  no  heat  em- 
ploj'ed  in  process;"  and  "privilege 
to  keep  not  exceeding  6  barrels  ker- 
osene oil  on  said  premises."  There 
was  an  oil  room  in  the  basement  of 
the  hotel,  in  which  materials  for 
lighting  were  kept.  The  hotel  was 
run  by  the  wife  of  W.,  W.  being  her 
agent  in  its  management.  It  was 
destroyed  by  a  fire  which  took  in  the 
oil  room  between  sundown  and  dark, 
from  a  light  carried  in  there  by  serv- 
ants, by  direction  of  W.,  for  the  pur- 
pose of  drawing  oil  sent  for  from  a 
neighboring  hotel.  The  answer  set 
up,  as  defences  that  the  conditions 
of  the  policy  were  broken,  bj  keep- 
ing or  allowing  benzine  on  the  prem- 
ises, and  thereby  increasing  the  risk^ 
without  consent  or  permission,  but 
did  not  otherwise  set  out  any  broach 
by  drawing  oil  after  daylight,  or  by 
other  light.  On  the  trial  the  defend- 
ant gave  evidence  to  show  that  W. 
had  procured  benzine  and  put  it  in 
the  oil  room  for  use  in  lighting  the 
premises,  and  that  this  was  the  same 
as  gasoline,  and  was  what  was  sent 
for  from  the  other  hotel,  and  was  be- 
ing drawn  and  took  fire  from  the 
light,  and  caused  the  loss,  and  that  its 
presence  increased  the  risk.  The 
evidence  also  went  to  show  that  W. 
procured  the  benzine  to  use  at  a  pic- 
nic and  not  for  the  purposes  of  the 
hotel  The  plaintiff  gave  evidence 
to  show  that  no  benzine  was  brought 
there,  and  tiiat,  if  there  was,  it  was 
without  the  authority  or  knowledge 
of  the  plaintiff,  and  that  kerosene 
was  what  was  being  drawn  when  the 
fire  took.  There  was  evidence  that, 
in  the  use  of  gasoline  gas,  in  appa- 
ratus such  as  is  described  in  the  per- 
mission, it  is  usual  to  store  g  iRoHna 
in  the  generator.  The  Court  charged 
the  jury  that,  if  the  benzine  was 
there  and  was  procured  and  placed 
there  by  W.  in  the  course  of  his  bus- 
iness of  managing  the  hotel  for  his 
wife,  to  whom  the  plaintiff  had  com- 
mitted the  use  of  the  premises,  and 
storins:  it  in  the  oil  room  would  not 
be  within  what  would  be  understood 


582 


INDEX. 


and  expected  to  be  done  in  the  ex- 
ercise of  the  priyile^ire  granted  to  nse 
gasoline,  the  plaintiff  could  not  re- 
cover; but  that,  if  the  beDzine  was 
not  there,  or  was  placed  there  by 
W.  without  the  plaintiflTs  knowledge, 
for  some  outside  purpose,  not  con- 
nected with  the  management  of  the 
hotel,  nor  within  his  authority  as 
agent  of  his  wife  for  tliat  puqiose,  or 
if  it  was  to  be  understood  and  ex- 
pected, from  the  permission,  that  the 
gasoline  or  benziDe  might  be  stored 
I  the  oil  room,  in  the  usual  place  for 
storing  such  things,  and  it  was  so 
stored  there,  the  plaintiff  could  re- 
cover: Hdd,  no  error.  Qunther  v. 
Liverpool^  dbe.^  In»,  Co.,  862 

2.  The  defendant  requested  the  Court 
to  direct  a  verdict  for  the  defendant 
on  the  ground  that  drawing  the  oil 
after  daylight  was  eone,  by  arti- 
ficial light,  avoided  the  policy,  and 
to  charge  the  jury  that  the  plaintiff 
was  not  entitled  to  recover  if  oensdne 
was  there  and  increased  the  risk. 
The  Court  refused  to  comply  with 
such  requests  :    Held,  no  error,    id. 

INSURANCE  (LIFE). 

1.  By  a  policy  of  insurance,  issued  on 
an  application  signed  by  A.,  a  life 
insurance  company  promised  to  pay 
"  to  A.,  his  assigns,"  on  a  future  day 
named,  $10,000,  '*  or,  if  he  should 
die  before  that  time,  then  to  make 
said  payment  to  his  legal  represen- 
tatives. If  any  claim  be  made  un- 
der an  assignment,  proof  of  interest 
to  the  extent  of  the  claim  will  be 
required."  A.  executed  an  assien- 
ment  of  the  policy  to  H.,  and  left 
it  with  the  company,  and  both  were 
delivered  by  the  company  to  H.  A., 
before  the  time  named,  died,  by  the 
himds  of  H.  The  administrator  of 
A.  sued  the  company  to  recover  the 
$10,000.  On  the  trial,  it  appeared 
that  H.  planned  the  death  of  A.  be- 
fore the  insurance,  induced  him  to 
effect  it  and  make  the  assignment, 
paid  the  firat  and  only  premium  that 
was  paid,  and  took  his  life  for  the 
purpose  of  obtaining  the  monev  on 
the  policy.  There  was  no  evidence 
of  any  interest  of  H.  in  the  life  of  A. 
No  fraud  in  A.  waa  alleged.    The  de- 


fendant requested  the  Court  to  in- 
struct the  jnry,  that,  if  the  company 
made  no  contract  with  A.,  or  if  the 
real  contract  was  with  H.,  or  if  the 
policv  was  made  and  issued  for  the 
benefit  of  H..  the  plaintiff  could  not 
recover.  Those  instructions  were 
not  ^ven  and  no  questions  were  sub- 
mitted to  the  jury  on  those  aspects 
of  the  case :  Ifeld,  no  error.  Arm- 
stronff  V.  Mutual  Life  Jtu,  Co,,      498 

2.  The  branch  of  the  contract  which 
ran  to  H.  and  his  assigns  was  assign- 
able, and  the  other  branch  was  not. 
The  general  assi^^nment  to  H.  carried 
only  the  assignable  branch,  and  only 
such  interest  in  the  life  of  A.  as  could 
be  proved.  -  id, 

8.  An  endowment  policy  on  a  life,  with 
a  riffht  to  share  in  profits,  to  be  ap- 
plied towards  premiums,  is  not  made 
void  by  misrepresentations  of  the 
insurer's  agent  as  to  what  the  profito 
would  amount  to.  HaU  v.  CofUi- 
nental  Life  Jm.  Co.,  615 

4.  Equity  has  cognizance  of  a  suit  to 
account  for  such  profits.  id. 


INSURANCE  (MARINE). 

1.  A  valued  marine  policy  of  insurance 
insured  a  vessel  for  one  year.  In 
the  printed  part  of  the  policy  there 
was  a  warranty  by  the  assured  not 
to  use  certain  specified  ports  and 
places,  and  certain  waters,  and, 
among  them,  the  West  India  islands 
during  certain  months,  and  ports  and 
places  in  Texas,  except  Qalveston, 
and  foreis^  ports  and  places  in  the 
Gulf  of  Mexico  and  any  of  the  West 
India  salt  islands,  and  not  to  load 
more  than  her  registered  tonnage 
with  heavy  cargo  or  grain  on  any 
one  passage.  On  the  margin  of  the 
face  of  the  policy,  written  at  a  right 
angle  to  the  printed  lines,  were  these 
words:  "To  be  employed  in  the 
Coasting  Trade,  on  the  United  States 
Atlantic  Coast,**  in  one  line.  Under- 
neath that  line,  and  in  one  line  par- 
allel with  it,  were  these  written 
words:  **  Permitted  to  carry  Grain 
and  heavy  cargoes,  over  tonnage  on 
coastwise  voyages,  and  to  use  Gulf 


INDEX. 


583 


Ports  not  west  of  New  Orleans." 
The  yessel  was  wrecked  by  runoiiig 
on  shore  at  a  place  west  of  New  Or- 
leans, while  on  a  voyage  from  Maine 
to  a  port  in  the  Gulf  ot  Mexico  west 
of  New  Orleans :  JSdd, 

(1.)  That  the  use  of  Gulf  ports  in 
the  United  States  not  west  of  New 
Orleans  was  not  forbidden  by  the 
printed  clauses,  and  the  use  of  them 
was  not  allowed  by  the  written  words, 
"  the  Coasting  Trade,  on  the  United 
States  Atlantic  Coast ;  *' 

(2.)  That  the  policy  i)ermitted 
the  employment  of  the  vessel  in  the 
coasting  trade  on  the  United  States 
Atlantic  Coast  proper,  excluding  the 
Gulf,  but  with  tne  added  permission, 
that  she  might  use  ports  in  the  Gulf 
not  west  of  New  Orleans,  and  might 
'enter  the  Gulf  for  the  purpose  of  pro* 
needing  to  such  ports,  with  a  view 
to  use  them ; 

(3.^  That  the  loss  was  not  corered 
l>y  tne  policy.  New  Haven  8team 
MU  Co,  Y.  Security  Ins,  Co,,        192 


INTEREST. 

1.  On  the  let  of  March,  1881,  a  judg- 
ment was  docketed  in  this  Court,  in 
favor  of  the  plaintifiSg,  and  against 
the  defendant,  for  a  sum  of  money, 
in  a  suit  against  a  late  collector  of 
the  port  of  New  York,  to  recover 
back  money  paid  to  him  for  customs 
duties,  and  by  him  paid  into  the 
Treasury,  in  the  performance  of  his 
official  duty.  Prior  to  that,  and  at 
the  trial  of  the  action,  the  Court,  un- 
der §  Q89  of  the  Revised  Statutes, 
made  a  certificate  of  probable  cause. 
The  Government  paid  to  the  plaintiffs 
the  amount  of  the  judgment,  but  re- 
fused to  pay  any  interest  on  such 
amount.  The  United  States*  attor- 
ney then  applied  to  the  Court  to  re- 
<quire  the  plaintiffs  to  execute  a  full 
satisfaction  piece  of  the  judgment,  or 
to  make  an  order  that  full  satisfaction 
of  the  judgment  be  entered  on  the 
records  of  the  Court :  Held,  that  the 
judgment  was  satisfied  and  that  the 
clerk  must  make  all  proper  entries 
to  that  effect  in  the  records  of  the 
Court.     White  y.  Arthur,  287 

2.  The  question  of  the  payment  of  in- 
terest by  the  United  States  consid- 


ered, and  the  legislation  and  practice 
on  the  subject  reviewed.  id. 

8.  Whatever  may  have  been  the  prac- 
tice under  the  permanent  appropria- 
tion in  the  Revised  Statutes,  and 
under  statutes  prior  to  the  appropri- 
ation bill  of  1878,  it  is  clearly  ex- 
pressed in  the  appropriation  bills  of 
1878,  1879,  1880  and  1881,  that, 
where  there  are  judgments  against 
collectors  of  customs  for  duties  paid 
under  protest,  interest  accruing  after 
judgment,  on  the  amount  of  the  judg- 
ment, or  on  the  duties  improperly 
paid,  is  not  to  be  paid  by  the  Gov- 
ernment, either  from  the  permanent 
appropriation  or  from  the  special  ap- 
propriations, id. 

4.  Where  there  has  been  a  certificate 
of  probable  cause,  under  §  989,  there 
can  be  no  execution  against  the  col- 
lector, and  he  is  not  liable,  under 
the  judgment,  for  interest  on  it.    id. 

See  Costs,  4. 

MoKST  Had  astd  Rxosevkd. 


INTERPLEADER. 

1.  H.,  on  behalf  of  G.,  sold  to  a  national 
bank  a  promissory    note,  not  due, 
and  received  from  the  bank  the  pur. 
chase  price,  and  delivered  the  note 
to  the  Dank.    H.  gave  to  G.  a  cheque 
for  the  proceeds,  less  $3  77  commis- 
sion.   Before  the  cheque  was  paid, 
the    said  bank  learned    that  when 
the  note  was  sold  its  maker  had  sus- 
pended payment,  and  notified  H.  of 
the  fact  and  tendered  back  the  note 
and  demanded  back  the  purchase 
money.     II.  then  stopped  payment 
of  the  cheque,  and  G.  brought  this 
suit  against  H.,   on  the  cheque,  to 
recover  its  amount.    The  said  bunk 
claimed  from  H.  the  entire  proceeds. 
H.,  then,  on  notice  to  said  bank  and 
to  the  attorney  for  G.,  applied  to 
this  Court  to  substitute  said  bank  in 
place  of  H.,  as  defendant  in  this  suit, 
and  to  discharge  H.  from  liability  to 
either  G.  or  said  bank,  concerning 
the  claim  sued  on,  on  H.  paying  the 
money  into  Court.    The  application 
was  granted,  as  being  a  practice  pro- 
yidc3  for  in  a  suit  at  law,  by  §  820 
of  the  New  York  Code  of  Civil  Pro- 


S84 


INDEZ. 


cednre,  fud  adopted  by  §  914  of  the 
Reyified  Statutes,  aod  H.  was  ordered 
to  pay  into  Court  the  entire  proceeds. 
Hams  V.  Hew,  258 

2.  The  said  bank  haying,  after  notice 
of  said  application  was  eerred  on 
it,  sued  H.  in  a  Court  of  the  State  of 
New  York,  to  recover  the  m»»ney  so 
paid  by  it  to  H.:  Held,  that  the 
DriDging  of  such  suit  did  not  affect 
the  jurisdiction  of  this  Court  to 
grant  the  application.  id. 


JUDGMENT. 

See  Cbiiomal  Law,  2. 
Equity,  6. 
Intkhsst. 


JURISDICTION. 

1.  To  a  bill  in  equity  brought  in  the 
Circuit  Court  for  the  District  of  Ver- 
njont,  alleging  that  the  plaintiff  was 
a  citizen  of  Massachusetts  and  the 
defendant  a  citizen  of  Vermont,  the 
defendant  pleaded  that  he  was  a  cit- 
izen of  New  Hampshire ;  Held,  that 
the  plea  was  bad.     Brock*  v.  Bailey, 

86 

2.  The  Act  of  March  8d.  18*76,  (18  U. 
8.  Stat,  at  Large,  470,  8  1,)  extends 
the  jurisdiction  to  suits  oetween  cit- 
UEens  of  different  States,  without  re- 
quiring either  party  to  be  a  citizen 
of  the  State  where  the  suit  is 
brought  id. 

8.  S.  granted  an  ezdusiye  license,  in 
writing,  to  a  company,  to  make  and 
sell  a  patented  article  during  the 
term  of  a  patent,  returns  of  sides  to 
be  made  monthly,  and  license  fees 
paid  monthly,  S.  to  have  a  right  to 
terminate  the  license  by  a  written 
notice  to  the  company,  on  the  fail- 
ure  to  make  returns  and  payments 
f«)r  8  consecutive  months.  S.  duly 
served  notice  of  the  termination  of 
the  license,  but  the  company  contin- 
ued to  use  the  patented  invention, 
and  S.  brought  tins  suit  for  infringe- 
ment.   The  parties  were  citizens  of 


the  same  State.  In  A.'8  anawer,  the 
company  alleged  that  the  contract 
was  not  lawfully  terminated,  and^ 
also,  that  it  had  not  sold  any  of  the 
patented  articles,  and  was  not  mak- 
ing and  selline  them:  Held,  thai 
this  Court  had  jurisdiction  of  the 
suit.  Smith  V.  Standard  Laundry 
Machinery  Co.,  860 

4.  The  case  distinguished  from  WVr- 
ton  V.  Sandford,  (10  Haw.,  99,)  and 
Harldl  v.  Ttlghman,  (99  U.  8„  547.) 

6.  The  provision  of  §  R  of  the  Act  of 
March  8d,  1876,  (18  17.5.  Si  at.  at 
Large,  472,)  that  the  Circuit  Cuuri 
shall  dismiss  a  suit  if  the  parties 
have- been  improperly  or  collu^ively 
made  or  joined  for  the  purpose  of 
creating  a  case  cognizable  under 
said  Act,  construed.  Fountain  v. 
Tovm  of  Angelica,  448 

6.  In  this  case  the  suit  was  dismitised^ 
it  appearins:  that  the  plaintiff  had 
no  substantial  interest  in  the  cou- 
pons sued  on.  id^ 

7.  A  Connecticut  corporation  was  sued 
in  a  State  Court  in  Vermont,  by  a 
citizen  of  New  Hampshire,  by  pro- 
cess served  on  a  statutory  a^ent  re- 
quired by  the  laws  of  the  State  for 
the  purpose.  The  suit  having  been 
removed  into  this  Court,  the  defend- 
ant demurred  to  the  bill  for  want  of 
sufficient  jurisdiction,  acquired  by 
the  service :  Hdd,  that  the  appear- 
ance and  demurrer  established  the 
jurisdiction.  Haie  y.  Continental 
lAfe  Int.  Co.,  51{( 

See  Equitt,  2,  6. 
Interfleader,  2. 
Municipal  Bond,  8. 
Pleadino,  9  to  12. 
Removal  of  Suit. 
Salvage,  4. 


LACHES. 
See  Removal  of  Son,  10. 


INDEX. 


5S5 


LIEN. 
8ie  Skqukitsatioh. 


M 

MANHATTAN    RAILWAY  COM- 
PaNY. 

See  Railboad. 


METROPOLITAN    ELEVATED 
llAILWAY  COMPANY. 

See  Railroad. 


MONEY  HAD  AND  RECEIVED. 

1.  G.  recovered  from  the  UDited  States, 
by  suit  in  the  Court  of  Claims,  mon- 
ey as  the  proceeds  of  cotton  seized 
in  the  Southern  States  and  sold. 
6.  haying  died,  L.,  his  executor,  was 
sued  by  M.,  to  recover  some  of  the 
money,  as  the  proceeds  of  cotton 
which  belonged  to  his  assignor,  a 
Virginia  corporation.  The  proceeds 
beine  identined :  Hdd : 

(1.)  Although  the  corporation  was 
engaged  in  running  the  blockade, 
and  in  aiding  the  rebellion,  it  could 
have  recovered  itself,  as  it  did  not 
appear  that  the  cotton  was  received 
by  0.  under  any  arrangement  that 
it  should  be  unlawfully  used ; 

(2.)  The  assignment  of  the  claim 
by  the  corporation  to  M.  was  valid ; 

(8.)  The  failure  of  the  plaintiff  to 
maintain  an  immaterial  issue  was 
disregarded,  the  material  allegations 
of  the  bill  being  proved ; 

(4.)  M.  was  not  entitled  to  interest 
on  the  avails,  unless  it  was  received. 
AfeCay  v.  Lamar,  474 

MORTGAGE. 
See  Eq'jitt,  1  to  8. 


MUNICIPAL  BOND. 

1.  By  §  1  of  the  Act  of  the  Legisla- 
ture of  New  York,  passed  April  6th, 
1811  y  [Lams  of  J<lew  York,  lSl\,voL 
1,  chop,  298,  p,  686,)  the  New  York 


and  Oswego  Midland  Railroad  Com- 
pany was  authorized  to  extend  and 
construct  its  road  from  the  city  of 
Auburn,  or  from  any  point  on  "ud 
road  easterly  or  southerly  from  said 
city,  "  upon  such  route  and  location 
and  thritugh  such  counties  as  the 
Board  of  Directors  of  said  company 
shall  deem  most  feasible  and  favora- 
ble for  the  construction  of  saiii  rail- 
road, to  any  point  on  Lake  Eric  or 
the  Niagara  river."  It  was  also  pro- 
vided, that  any  town  "  in  any  c  *un- 
ty  through  or  near  which  said  rail- 
road or  its  branches  may  be  locat- 
ed **  miffht  aid  the  construction  of 
the  saidridlroad  and  its  braiwhes 
and  extensions,  by  the  issue  and  sale 
of  its  bonds,  which  were  to  be  issued 
and  exeimted  by  commissioners  to 
be  appointed  by  the  county  j-tdge 
of  the  county  in  which  the  town 
was  situated.  In  November,  1871, 
the  Board  of  Directors  of  the  com- 
pany passed  a  resolution  determin- 
ing "  that  the  construction  and  ex- 
tension of  the  said  railroad  westerly 
commence  at  and  from  the  village 
of  Cortland  in  the  said  county  of 
Cortland,  and  thence  to  Lake  Erie 
or  the  Niagara  river,"  In  October, 
1871,  commissioners  were  appci.ited 
for  the  town  of  Lansing,  in  I'omp- 
kins  county,  by  the  county  jud^e  of 
that  county.  In  December,  1871, 
maps  were  filed  in  the  office  of  the 
clerk  of  that  county,  locating  parte 
of  the  "Auburn  branch"  (f  the 
road  through  the  town  of  LarjRing, 
and  the  road  was  made  throufrh  that 
town  to  and  throuji^h  the  adjoining 
town  in  another  county,  and  on,  for 
26  miles  in  all,  to  a  point  in  a  firm- 
ing community,  unconnected  with 
any  other  road,  and  began  to  ran  in 
the  fall  of  1872.  In  January,  1872, 
and  afterwards,  bonds  of  the  town 
of  Lansing  were  issued  to  the  com- 
pany, to  the  amount  of  $76,000.  and 
it  received  in  exchange  a  certificate 
for  750  shares,  ot  $100  each,  of  the 
stock  of  the  company :  Held,  that 
the  "  western  extension  "  had  nothing 
to  do  with  the  Auburn  branch ;  that 
the  resolution  of  the  company  was 
insufficient  to  authorize  the  issuing 
of  any  bonds  by  said  town;  ihat 
the  said  maps  did  not  locate  any 
part  of  the  "western  extension ;'' 
that  there  was  no  power  in  any  town 


586 


INDEX. 


to  issue  any  bonds  until  all  the  coun- 
ties through  which  the  road  was  to 
pass  had  been  designated  by  the  di- 
rectors; and  that  the  absence  of 
such  location  was  fatal  to  the  bonds 
even  in  the  hands  of  a  bona  fid» 
holder  of  them,  although  the  town 
had  paid  some  coupons  on  the  bonds 
and  had  retained  the  certificate  of 
stock.      Mellen  y.  Jbwn  of  LanMing, 

278 

2.  An  Act  authorizing  the  commission- 
ers of  a  town  to  borrow  money  and 
issue  its  bonds  provided  that  the 
power  conferred  by  the  statute 
should  only  be  exercised  on  the  con- 
dition that  the  consent  should  first 
be  obtained,  in  writing,  of  tax-payers 
appearing  on  the  last  assessment  roll, 
representing  a  majority  of  the  taxa- 
ble property  of  the  town,  proof  of 
which  should  be  by  the  acknowledg- 
ment or  proof  thereof  filed  in  the 
town  and  county  clerk's  offices  and 
annexed  to  a  copy  of  the  assessment 
roll.  The  bonds  of  the  town  were 
issued,  payable  to  bearer,  and  recit- 
ing that  they  were  issued  in  pursu- 
ance of  the  Act.  The  plaintiff  sued 
the  town  on  some  of  the  bonds,  and 
at  the  trial  proved  that  he  obtained 
the  bonds  from  a  bank,  and  that  its 
attorney,  before  the  bank  purchased 
them,  examined  a  certifiea  copy  of 
the  consent  and  assessment  roU  and 
ascertained  therefrom  that  a  major- 
ity of  the  persons  on  the  roll  had 
•consented,  and  that  the  bank  then 
bought  the  bonds  and  paid  value  for 
them,  without  notice  of  any  defence. 
The  defendant  then  offered  in  evi- 
dence a  certified  copy  of  the  consent 
roll  of  the  town,  and  a  certified  copy 
of  the  assessment  roll,  to  show  that 
the  consent  of  a  majority  in  value  of 
the  tax-payers  was  not  obtained. 
The  Court  excluded  the  evidence. 
Held,  no  error.  Carrier  v  TWn  of 
Shatoanffttnk,  307 

9.  The  plaintiff  purchased  coupons 
from  municipal  oonds,  at  the  sug- 
gestion of  those  who  formerly  owned 
them,  with  a  view  to  collecting  them 
in  this  Court,  when  it  was  supposed 
a  recovery  could  not  be  obtained 
upon  them  in  the  State  Courts.  The 
former  owners  guaranteed  the  col- 
lection o{  the  coupons.    The  plaintiff 


was  protected  firmn  costs  if  he  was 
defeated,  and  he  waa  not  to  pay  for 
the  coupons  until  two  years  and  a 
half  alter  the  time  of  the  purchase : 
Held,  that  he  could  maintain  a  suit 
against  the  town  on  the  coupons, 
being  the  owner  of  them,  and  that 
his  intent  in  acquiring  them  was  im- 
materiaL  Me  Call  v.  2hwn  of  Han- 
eoekj  344 

4.  This  Court  held,  in  FooU  v.  Town  of 
Hancock,  (16  Blaiehf.  C  C.  A.  348,) 
that  a  bona  fide  holder  of  coupons 
from  bonds  issued  by  the  town  of 
Hancock  could  recover  on  them  not- 
withstanding the  irregularities  which 
took  place  in  the  issuing  of  the 
bonds.  Afterwards,  the  Court  of 
Appeals  of  New  York,  in  Ca^rwtn  y. 
Tovan  of  Hancock,  (84  N.  K,  682,) 
decided  to  the  contrary :  Hdd^  that 
that  decision  of  the  State  Court  not 
having  been  made  at  the  time  the 
bonds  were  issued,  and  before  the 
rights  of  purchasers  had  arisen,  this 
Court  was  not  bound  to  follow  it.  id. 

6.  The  case  of  TWn  of  Venice  v.  Mur- 
dock,  (92  U,  8.,  494,)  is  controlling 
upon  this  Court  in  reference  to  the 
bonds  of  the  town  of  Hancock,  those 
bonds  having  been  issued  under  a 
statute  which  authorized  the  com- 
missioners of  the  town  to  issue  the 
bonds  only  on  the  assent  of  a  major- 
ity of  the  taxables,  and  which  de- 
clared that  the  fact  that  such  major- 
ity had  been  obtained  should  be 
"  proved  "  by  the  affidavit  of  one  of 
the  assessors  of  the  town.  id, 

6.  The  plaintiff  is  entitled  to  judgment 
although  he  failed  to  show  that  the 
requisite  number  of  taxables  had  as- 
sented to  the  issuing  of  the  bonds. 

id. 


NATIONAL  BANK. 

See  CsiinNAL  Law,  12. 
Tax,  1,  8. 

NAVIGATION. 
See  CoLusiorr. 


INDEX. 


68T 


NEGLIGENCE. 

1.  R.,  a  passenger  on  a  railroad  car, 
was  injured  by  the  explosion  of  the 
boiler  of  the  locomotiye  need  to 
pnsh  the  train,  and  sued  the  rail- 
road company  for  negligence.  At 
the  trial  he  rested  by  proving  the 
explosion.  The  employees  of  the 
defendant  testified  to  due  care  in 
managing  the  boiler  at  the  time  of 
the  explosion,  that  the  boiler  bad  re- 
cently  been  repaired  and  tested  and 
fonoa  safe,  and  that  the  explosion  re- 
salted  from  a  hidden  flaw  in  the  iron 
of  the  boiler,  which  could  not  be 
seen.  The  jury  were  instructed  that 
they  might  infer  negligence,  upon 
the  theory  that  the  explosion  would 
not  have  taken  place  unless  the  boil- 
er had  been  in  a  defective  condition, 
or  unless  there  had  been  some  omis- 
sion or  mismanagement  on  the  part 
of  those  in  charge  of  it  at  the  time: 
ffeldf  no  error.  Bobtnaon  v.  J^.  Y. 
Central  d:  K  R  R,  Co,,  388 

2.  The  jury  were  also  instructed,  that 
it  was  incumbent  on  the  defendant, 
as  a  passenger  carrier,  to  see  to  it, 
by  every  tert  recognized  as  necessa- 
ry by  experts,  that  the  boiler  was  in 
a  sare  condition,  but  that  it  was  not 
liable  for  a  defect  which  could  not  be 
discovered  by  such  tests:  Held,  no 
error.  td 

8.  As  the  testimony  to  rebut  the  pre- 
sumption of  negligence  proceeded 
from  persons  who  would  be  guilty  of 
a  criminal  fault  unless  they  vindi- 
cated themselves  from  such  presump- 
tion, a  question  of  credibility  was 
presented  for  the  jury,  and  they 
might  disregard  such  testimony,    id, 

4.  Negligence  may  be  inferred  from  the 
fact  of  the  explosion  of  a  steam- 
boiler  on  a  vessel,  even  where  the 
defendant  is  under  no  contract  ob- 
ligation to  the  plaintiff.  Bote  v! 
Stephens  ±  Gondii  Transp,  Co.,    411 

5.  S.  and  others  were  sued  personally 
and  also  in  their  representative  ca- 

Sadty  as  executors  and  trustees  un- 
er  a  will,  for  damages  caused  by  the 
fall  of  a  building  owned  by  them  as 
such  executors  and  trustees,  and 
which  had  been  leased  by  them.    A 


verdict  was  had  for  the  plaintiff, 'es- 
tablishing that  the  building  was  un- 
safe at  the  time  it  was  leased  and 
that  it  fell  without  any  contributory 
fnult  in  the  lessees  or  in  the  plaint- 
iff.  The  plaintiff  occupied  an  ad- 
joining building :    Held, 

(1.)  That  the  action  could  not  be 
maintained  against  the  defendants  in 
their  representative  character,  and 
the  process,  pleadings  and  proceed- 
ings must  be  amended  by  striking 
out  the  description  of  the  defend- 
ants' oflScial  character,  without  the 
granting  of  a  new  trial ; 

(2.)  That  the  defendants  were  lia- 
ble as  individuals  for  negligence  in 
authorizing  and  sanctioning  the  acts 
of  the  tenants  in  the  use  of  the  prop- 
erty. BotUm  Beef  Paeking  Co.  v. 
Stevens,  448 


NEW  TRIAL. 

1.  In  a  suit  to  recover  damages  for  per- 
sonal injuries,  the  complaint  alleged 
that  the  plaintiff  had  sustained  severe 
injuries,  and  claimed  $6,000  damages. 
After  a  verdict  for  the  plaintiff,  the 
defendant  moved  for  a  new  trial  be- 
cause of  newly-discovered  evidence 
relating  to  the  extent  of  the  plaint- 
iff's injuries.  It  did  not  appear  that 
before  the  trial  the  defendant  had 
made  any  investigation  as  to  the 
character  or  extent  of  those  injuries. 
The  motion  was  denied  Boee  v. 
Siephene  dt  Condit  IVaneportation 
Co.,  466 

See  Pbaotiob,  11. 

NEW  YORK  ELEVATED  RAIL- 
ROAD COMPANY. 

See  Railroad. 


PATENT. 


1.  Invention. 

2.  Novelty,  (1.) 
8.  Abandonment. 
4.  Caveat. 

6.  Application. 
6.  Disclaimer. 


588 


INDEX. 


7.  Re-Usae. 

8.  Assignment. 

9.  License. 

10.  InfriDgement,  (2.) 

11.  Suit  in  Equity. 

12.  Injunction,  (3  to  6.) 
18.  Patent  for  a  Design. 
14.  Particular  Patents. 

(1.)  McEean,  Jackson  and  Brown 

—Bushing,  (6  to  8.) 
(2.)  McCloskey — Soft-metal    trap, 

(9,  10.) 
(8.)  Meyer  and  Neubauer — Wire- 

caie,(ll,  12.) 
(4.)  Maxheimer — Bird-cage.  (13  to 

16.) 
(6.)  Gray — ^Head-covering,  ( 1 7,1 8.) 
[6.)  Mallorv— Hat,  (19  to  21.) 
\l.)  Averili— Paint,  (22  to  24.) 
[8.)  Hetherington — Artificial  bon- 

ey-comb  foundation,  (26.) 
(9.)  Siedler— Plug  tobacco,  (26  to 

29.) 
(10.)  Knibbs — Steam     fire^ngine 

pump,  (SO  to  84.) 
(11.)  Strobridge— Coffee-mil),  (36 

to  89.) 
(12.)  Meyer    and    Evans — Indian 

rubber  shoe,  (40,  41 .) 
flS.)  Davis— Box-loop.  (42  to  41.) 
(14.)  Scbuessler  —  Buckle-fasten- 
ing, (48  to  60.) 
(16.)  Loercber  —  Uarness-backle, 

(61,  62.) 
(16.)  Holmes — ^Take-up  for  loom, 

(63.  64.) 
(IT.)  Western  Electric  Mfg.  Co.— 

Insulating  telegraph  wire,  (ti6, 

66.) 
(18.)  Barker — Bucket    for    cbain- 

pump,  (67  to  69.) 
(19.)  Coes— Wrench,  (60,  61.) 
(20.)  Campbell  and    Clute— Burr 

for  knitting-machiDe,  (62  to 

64.) 
(21.)  Searls  —  Whip-sockc't,  (66, 

66.) 
(22.)  Schneider — Shade-holder  for 

lamp,  (67.) 
(23.)  Hart— Keck-Ue  (68,  69.) 
(24.)  Wells— Fur     hat-body    ma- 
chinery, (70,  71.) 
(26.)  Ives  4  Miller— Wagon-hub; 

M  iller— Carriage-axle,(  7  2,73. ) 
(26.)  Bruce — PrintiDg-types,     (74 

to  76.) 
(27.)  Lindsay  —  Sleeve-supportwr, 

(77  to  82J 
(28.)  Cross— Fountiun-pen,  (83  to 

86.) 


(29.)  Teztor — ^Desifn  for  newel- 
post,  (86  to  88!) 

(80.)  Maylor— Tin-lined  lead  pipe^ 
(89  to  96.) 

(81.)  Searla— Whip-eocket;  Searls 
— Whip-eocket,  (96  to  99.) 

(82.)  Hoe  and  Tucker— Printing- 
press,  (100  to  106.) 

(88.)  Tyler— Cheeee-hoop,  (107.) 

(34.)  Blake — Sewing  a  shoe;  Blake 
— Shoe  sewed,  (108,  109.) 

(86.)  Matthews  —  Soda-water  ap> 
paratus,  (110  to  112.) 

(86.)  Hayes  —  Ventilator;  Huyes 
—Sky-light,  (8  patent*;^ 
Hayes — Sky-light  turret  and 
conservatory,  (118  to  117.) 

(87.)  Perry  *  Co. — Coal-stove; 
Perry — Stove ;  Spear — E  aae- 
burning  stove ;  Dickey  and 
Perry — Heating  stove,  (118  to 
124.) 

(38.)  Perry  and  Sard,  trustees — 
stove;  Perry  and  Sard,  trus- 
tees—Stove,  (126,  126.) 

(89.)  Searls  —  Whip-socket,  ( 1 27, 
128.) 

(40.)  Brainard — ^Machine  for  wash- 
ing shavings,  (129,  180.) 

(41.)  Gardner,  Gardner  and  Gard- 
ner— Chair-seat,  (181.) 

1.  Invention, 

See  9,  88,  39,  48,  66,  66,  76,  76, 
86,  90,  93,  103.  107,  US  to 
126,  181. 

2.  Novdty, 

1.  An  English  provisional  specification 
is  not  a  patent,  within  §  4,920  of  the 
Revised  Statutes.  Cobum  v.  Schro^- 
der,  392 

See  7,  14,  16,  18.  21,  26,  28,  89, 
82,  88,  41,  46,  47,  61,  62,  65, 
66,  66,  66,  78,  81,  84,  92,  105, 
106,  110. 

8.  AbandanmenL 
See  38,  34,  79,  80. 


4.  Caveat. 


See  109. 


6.  AppUcaUon. 


i8^104. 


INDEX. 


589 


6.  DiMelaimer. 
See  107,  110,  180. 


7.  JU-iesue. 

i8;j«  6,  11,  12,  22  to  24,  87,  40,  44, 
46.  54,  62,  68,  69,  78,  92,  97, 
107,  118,  114.  116,  127,  128, 
130. 


8.  Aseignment. 


:^ee  94, 


9.  Zicente. 


See  Jurisdiction,  8,  4. 
96,  99. 

10.  InfringemefiL 

%  In  this  suit,  brought  for  the  infringe- 
ment of  two  letters  patent  for  de- 
signs, one  for  a  "  lace  parllng  "  and 
the  other  for  a  '*  fringed  lace  fabric,** 
the  plaintiff  introduced  in  evidence 
the  patents  and  a  "nubia"  sold  by 
the  defendants,  but  examined  no  wit- 
ness as  to  identity  of  design.  The 
defendants  introduced  no  testimony. 
In  Tiew  of  the  decision  in  Oorham 
Co.  V.  White,  (14  WaUaee,  611,)  and 
of  the  simple  character  of  the  designs 
of  the  patents,  and  of  the  absence  of 
any  testimony  on  the  part  of  the  de- 
fendants, the  Court  compared  the 
nubia  with  the  patents,  as  to  design, 
and  determined  the  question  of  iden- 
tity from  such  comparison.  Jenninffs 
y.  Kibbe,  868 

See  4,  8,  16,  86,  48  to  68,  69  to  61, 
64,  67,  68,  70  to  72,  82,  91, 
94,  102,  116,  117. 


11.  SuU  in  Equity, 

See  Pleading,  1,  2. 
Pkaotiok,  7. 
8  to  6. 


12.  Injunction, 
3.  It  being  doubtful  whether  there  was 


any  invention  in  forming  the  bottom 
of  a  starch  trav  of  sheet  metal,  it 
havine  before  been  made  of  wood 
and  lined  with  metal,  a  preliminary 
injunction  on  a  patent  for  so  forming 
the  bottom  was  refused.  N,  Y,  Orape 
Sugar  Co,  v.  American  Orape  Sugar 
Co.,  886 

4.  It  would  seem  that  the  presumption 
arising  from  the  grant  of  a  patent, 
especially  when  not  of  recent  date, 
ought  to  be  a  sufficient  ground  for 
granting  a  preliminary  injunction 
against  an  infringer  who  does  not 
attack  the  patent  id 

6.  Where  a  plaintiff  had  bought  & 
patent  and  proposed  to  use  it  not  by 
manufacturing  under  it,  but  by  sell- 
ing licenses,  but  had  not  established 
any  license  fee,  and  the  defendant 
was  responsible,  and  serious  conse- 
quences to  him  would  arise  from 
granting  a  preliminary  injunction,  it 
was  refused.  id. 


IS.  Patent  for  a  Design. 
See  86  to  88. 

14.  Particular  Patents. 

(1.)  McKean,   Jackson   and    Brown — 
Bushing. 

6.  Re-issued  letters  patent  No  8,488, 
granted  November  12th,  1878,  to 
William  C.  McKean,  George  H.  Jack- 
son, and  Jefferson  Brown,  Jr.,  for  an 
"  improvement  in  bushings  for  faucet 
holes,"  the  original  patent,  No. 
141,473,  having  been  granted  to 
Samuel  R  Thomp$:on,  August  6th, 
1878,  are  for  an  invention  not  de- 
scribed io  the  original,  the  original 
being  for  a  particular  form  of  wooden 
bushing,  encased  in  an  iron  one,  and 
the  re-issue  being  for  any  form  of 
wooden  bushing  In  an  iron  one. 
Ifew  York  Bung  and  Bwthing  Co.  v. 
Hoffman f  8 


7.  The   original  patent  was  not  void 
for  want  of  novelty.  id. 

8.  The   defendant  was  held  to  have 
infringed,     because    he    furnished 


590 


IND£Z. 


wooden  bnngs  in  iron  casings,  with 
a  hole  nearly  through  the  bung,  and 
intended  to  become  the  compound 
bushing  of  the  re-issue,  by  the  driv- 
ing in  of  the  remaining  wood  by  the 
purchaser,  by  inserting  a  vent  tube 
in  tapping  the  barrel  id. 

(2.)  McClodcey—Softrtnetal  trap, 

9.  The  decision  (19  Blatehf,  C.  C.  i?., 
206)  that  letters  patent  No.  220,767, 
granted  to  John  McCloskey,  October 
2l8t,  1879,  for  an  improyement  in 
soft  metal  traps,  are  void,  for  want 
of  invention,  confirmed.  McCloskey 
V.  IhAoU,  7 

10.  A  motion  to  open  the  case  for  new 
evidence  was  denied,  the  new  evi- 
dence being  designed  to  show  only 
the  improved  quality  of  the  metal  in 
the  traps  of  the  patent,  and  such 
result  being  due  to  the  process  of 
manufacture.  id. 


(8.)  Meyer  and  Neubauer —  Wire-cage. 

11.  Re-issued  letters  patent  No.  8,594, 
granted  to  John  D.  Meyer  and 
Charles  M.  Neubauer,  February  26th, 
1879,  for  an  improvement  in  wire 
cages,  the  original  patent.  No. 
189,874,  having  been  granted  to 
Michael  Grebner,  June  10th,  1878, 
are  invalid,  being  for  a  different  in- 
vention from  the  original  Meyer  v. 
Maxheimer,  16 

12.  The  re-issue  was,  apparently,  ex- 
panded beyond  the  original,  to  cover 
the  intervening  inventions  of  others. 

id. 


(4.)  Maxheimer — Bird-cage, 

18.  Letters  patent  No.  162,400,  granted 
to  John  Maxheimer,  April  20tb,  1876, 
and  letters  patent  No.  218,768, 
granted  to  him  August  19th,  1879, 
each  for  improvements  in  bird  cages, 
are  valid.     Maxheimer  v,  Meyer,    17 

14.  The  first  patent  underlies  all  con. 
structions  of  cages  where  the  hori- 
zontal bands  are  held  in  place  solely 
by  shoulders  formed  on  the  upright 
wires.  id,  | 


16.  An  accidental  and  incidental  eflfeot^ 
not  observed,  if  it  existed,  held  not 
to  show  prior  Invention.  id. 

16.  An  improvement,  the  use  of  which 
involves  the  use  of  a  patented  inven- 
tion,  infringes  it,  even  though  the 
improvement  be  patented.  id, 

(6.)  Oray — Head^overing. 

17.  Letters  patent  granted  to  Robert 
Gray,  September  9th,  1879,  for  an 
"  improvement  in  head-coveringp,*^ 
are  valid.     Bernard  v.  Heimann,  81 

18.  The  invention  defined  and  dia- 
tinguished  from  prior  inventions,  id, 

(6.)  MaUary-^Eat. 

19.  Letters  patent  No.  74,892,  granted 
February  llth,  1868.  to  Geor^ 
Mallory,  for  an  "improvement  in 
hats."  are  vaUd.  Afauary  Mfg,  Co, 
V.  Marks,  82 

20.  The  claim  of  said  patent,  namely, 
"  The  combination  of  the  brim  of  a 
hat  with  a  drooping  hoop,  so  that  the 
brim  is  caused  to  droop  at  the  front 
and  the  rear,  and  to  rise  at  the  sides, 
substantially  as  set  forth,"  construed. 

id, 

21.  The  question  of  novelty  examined. 

id. 

(7.)  AveriU—PaifU, 

22.  Re-issued  letters  patent  No.  7,081, 
granted  April  4th,  1876,  to  Damon 
R.  Averill,  for  an  improvement  in 
paints,  the  original  patent,  No.  66,- 
778,  having  been  granted  July  16th, 
1867,  for  an  improved  paint  com- 

?ound,  are  invalid.    Averill  Chemical 
*aint  Co.  V.  National  Mixed  Paint 
Co.,  42 

28.  The  original  was  for  a  paint  com- 
posed of  certain  specified  ingredients, 
two  of  which  were  emulsating  agents, 
nothing  being  said  about  any  vessel 
to  contain  the  paint  The  re-issue  is 
for  a  paint  of  the  same  ingredients, 
other  than  the  specified  emulsating 
agents,  with  any  emulsating  agents, 
and  packed  in  tight  vessels.  id. 


ISDEX. 


591 


24.  The  re-lssae  was  granted  on  proof 
that,  before  the  ori^nal  application, 
the  inventor  had  pnt  up  bis  paints  in 
tight  vessels:  HM,  that  §  4,916  of 
the  Revised  Statutes  did  not  author- 
ice  this  to  be  done.  id, 

(8.)  HetheringUm — ArHficial  Eomsy- 
eamb  finmdatum, 

26.  The  first  claim  of  re-issued  letters 
patent  No.  8,962,  granted  to  John  £. 
Hetherington,  November  11th,  1879, 
for  an  ''improvement  in  artificial 
honey-comb  foundations,"  the  origi- 
nal patent  having  been  granted  to 
him  October  1st,  1878,  namely,  "  As 
a  new  article  of  manufacture,  an 
artificial  honey-comb  foundation  pro- 
duced from  a  cake  of  wax  having  on 
each  side  a  series  of  hexagonal  de- 
pressions with  flat  bottoms,  said  bot- 
toms forming  a  continuous  sheet, 
from  each  side  of  which  rise  the  ribs 
which  form  the  borders  of  the  hex- 
agonal depressions,  substantiaUy  as 
shown  ana  described,"  claims  noth- 
ing which  was  patentable,  in  view  of 
what  existed  before.  Van  Deusen  v. 
NelliM,  46 

(9.)  Siedler — Plug-tobaeco, 

26.  Re-issued  letters  patent  No.  7,862, 
granted,  October  24, 1876,  to  Charles 
iSiedler,  for  an  improvement  in  plug 
tobacco,  the  original  patent.  No.  168,- 
604,  having  been  granted  to  him 
January  12th,  1876,  are  valid.  Lo- 
rxUard  v.  Dohan,  68 

27.  The  invention  covered  by  the  re- 
issue, defined.  id, 

28.  The  date  of  an  invention  patented 
in  Great  Britain  is  the  date  when  the 
specification  was  filed  in  the  Great 
Seal  PaUnt  Office.  id, 

29.  The  question  of  the  novelty  of  the 
invention,  considered.  id 

(10.)  Kmhb9 — Sleam fir e^&nffine pump, 

80.  Letters  patent  No.  42,920,  granted 
Mny  24th,  1864,  to  James  Knibbs, 
for  an  improvement  in  steam  fire-en- 
^e  pumps,  are  valid.  CampbtU  v. 
Mayor,  <bo.,  67 


81.  The  invention  defined. 


id. 


82.  The  question  of  its  novelty  exam- 
ined, id^ 

88.  Certain  uses  of  the  invention  held 
to  have  been  experimentaL  id. 


84.  Under  §§  7  and  16  of  the  Act  of 
July  4th,  1886,  (6  U,  8.  Stat,  at  Large, 
119, 128,)and  §  7  of  the  Act  of  March 
8d,  1889,  (/d,  864,)  a  sale  or  use  of 
an  invention  more  than  two  years 
before  the  application  for  the  patent, 
must,  in  order  to  defeat  the  patent, 
have  been  a  public  sale  or  use  with 
the  consent  or  allowance  of  the  in- 
ventor, id. 

(11.)  StroMdffe—Coffet^^miU, 

86.  Re-issued  letters  patent  No.  7,688,. 
granted  to  Turner  Strobridge,  March 
27th,  1877,  for  an  improvement  in 
coffee-mills,  (the  original  patent,  No. 
169,467,  having  been  granted  to  him 
February  2d,  1876,  and  re- issued  to 
him  as  No.  7,174,  June  ISth,  1876,) 
are  valid.     Strobridge  v.  Landers,  78 

86.  The  first  claim  of  said  re-issue, 
namely,  "A  coffee  or  similar  mill, 
having  a  detachable  hopper  and 
grinding  shell,  formed  in  a  single 
piece,  and  suspended  within  the  Im>x 
Dy  the  upper  pnrt  of  the  hopper,  or 
a  flange  thereon,  substantially  as  and 
for  the  purpose  specified/'  is  infringed 
by  a  mill  constructed  in  accordance 
with  the  description  and  drawings  of 
letters  patent  No.  204,866,  granted 
to  Rodolphus  L.  Webb,  June  11th, 
1878.  id, 

87.  The  re-issue  is  not  for  a  diflS^rent 
invention  from  the  original,  and  does 
not  contain  new  matter.  id, 

88.  The  questions  of  novelty  and  pat- 
entability considered.  id. 

89.  The  devices  contained  in  the  first 
daim  held  to  be  a  combination  and 
not  merely  an  aggregation  of  parts,  id, 

(12.)  Meyer  and  Evane — Indiorruhber 
ihoe, 

40.  Re-issued  letters  patent  granted  to 
Christopher  Meyer  and  Mary  A.  Ev- 


600 


INDEX. 


1876,  tbe  original  patent,  No. 
100,886,  haying  been  sranted  to 
said  Spear,  as  inventor,  March  Ist, 
1870,  and  re-issned  to  him  in  two 
divisions,  Nos.  6,469  and  6,460,  June 
l^th,  1878,  and  ajB^in  re-issued  in  two 
divisions,  January  6th,  1876,  No. 
6,206,  Division  A,  and  No.  6,207,  Di- 
vision  B,  namely,  "  4.  The  combinar 
tion  of  a  fire-chamber  having  its 
clinker-discharge  end  £  grated  or 
iUaminating  and  projecting  down- 
ward within  the  air-chamber  S,  a 
ffrate  surface  or  fire-bed  projecting 
beyond  the  inside  diameter  of  the 
slate  and  clinker-discharge  end  of 
the  fire-chamber,  and  the  clinker- 
clearing  opening  R,  substantially  as 
herein  described,''  does  not  claim  a 
patentable  invention,  because  it  was 
only  the  substitution,  in  an  existing 
combination,  for  a  fire-chamber  with 
its  clinker-discharge  end  non-grated, 
of  an  existing  fire-chamber  with  a 
grated  clinker-discharge  end,  the 
substitution  working  no  change  in 
tbe  operation  of  the  parts.  id, 

122.  Claims  6,  7  and  8  of  said  patent, 
namely,  "6.  Tbe  combination  of  the 
vertical  clinker-cleaning  opening  R, 
and  mica  lights  d^,  in  doors  opposite 
the  opening,  substantially  as  de- 
scribea."  "7.  The  combination  of 
the  vertical  clinker-cleaning  opening 
R,  mica  lights  d^^  and  clinker-clean- 
ing doors  0,  opposite  the  opening, 
substantially  as  herein  described." 
"  8,  The  combination  of  a  fire-cham- 
ber, the  clinker-cleaning  opening  R, 
between  the  fire-chnmber  and  grate 
surface,  clinker-cleaning  doors  G,  op- 
posite the  said  opening,  and  mica 
lights  J',  opposite  the  illuminating 
section  £,  of  the  fire-chamber,  sul> 
stantially  as  described,"  do  not  claim 
patentable  combinations,  there  being 
no  patentable  combination  between 
the  mica  lights  and  the  other  elements 
in  those  claims.  id, 

128.  Claim  12  of  said  patent,  namely, 
"  12.  The  combination  of  a  fire-cham- 
ber, having  its  slate  and  clinker-dis- 
charse  end  contracted  and  project- 
ing downward,  a  grate-ring,  E,  and  a 
chnker-cleaning  opening,  R,  above 
the  ring,  substantially  as  herein  de- 
scribed," does  not  claim  any  patent- 
able invention,  there  being  no  rela- 


tion or  co-action  between  the  lo>wer 
end  of  the  fire-pot  and  the  laterally 
projecting  grate  and  the  space  out- 
side of  Ine  grate,  which  did  not  exist 
between  the  lower  ends  of  prior  un- 
contracted  fire-pots  and  the  project- 
ing grates  and  the  outdde  spaces  in 
prior  structures.  id, 

124.  Claim  2  of  letters  patent  No. 
188,646,  for  an  ''improvement  in 
heating  stoves,"  granted  to  Andrew 
Dickey  and  John  S.  Perry,  as  in- 
ventors,  October  24th,  1876,  namely, 
"  2.  The  combination  of  ascending 
and  descending  flues  placed  in  the 
rear  of  a  stove,  a  free  open  space  be- 
tween the  top  of  the  g^ate  and  the 
lower  end  of  the  fire-pot,  sufficiently 
lar^e  to  permit  the  removal  of 
clinkers  and  other  obstractions,  illu- 
minating windows  opposite  said 
space,  and  a  grate  or  fire-bed  having 
an  open  space  between  it  and  the 

*  walls  of  the  stove,  to  admit  of 
clinkers  and  other  obstructions  beinf- 
dropped  between  the  grate  and  said 
walls  of  the  stove,  into  the  ash-pit,, 
substantially  as  described,"  does  not 
claim  a  patentable  combination,  but 
only  an  asrgregation  of  prior  reverti> 
ble  flues  with  other  features  before 
existing  in  unison  in  the  same  stove, 
those  features  operating  together  in 
tbe  same  way  whether  with  or  with- 
out revertible  flaes.  t'c^L 

(88.)  Perry  and  Sard,  tnuten — Stove, 
Perry  and  Sard,  trtuteet — Si&ve, 

126.  Claims  1  and  4  of  re-issued  letters 
patent  No.  9,247,  granted  to  J(»hn  S. 
Perry  and  Grange  Sard,  Jr.,  trustees, 
June  8th.  1880,  for  an  "improve- 
ment in  stoves,"  the  original  patent. 
No.  64,988,  having  been  granted 
to  John  R.  Moore,  as  inventor,  May 
22d,  1866,  and  having  been  re-issued 
as  No.  6,782,  November  9th,  1876, 
namely,  **  1.  The  combination  witii 
the  grate  or  fire-bed  of  a  stove,  of  a 
downwardly-contracted  fire-pot,  the 
two  being  so  arran<;ed  relatively  to 
each  other  &s  to  leave  an  opening 
between  them,  substantially  us  and 
for  the  purpose  set  forth."  "4. 
The  combination,  in  a  stove,  of  a 
downwardly-contrflcted  fire-pot  and  a 
dumping-grate,  the  two  being  ar- 
ranged relatively  to  each  other  so  as 


INDEX 


601 


to  ]eaTe  an  opening  between  them, 
sabstantially  as  and  for  the  purpose 
set  forth,"  do  not  claim  pnteotable 
inventions,  there  being  no  invention 
in  oombiningan  old  downwardly-con- 
tracted fire-poi  with  an  old  atiti- 
clinker  opening  and  dumping-grate. 
Ptrry  v.  Co-<fper€Uive  Foundry  Co,y 

506 

126.  Claim  1  of  re-issued  letters  patent 
Ko.  9,262,  granted  to  John  S.  Perry 
and  Grange  Sard,  Jr.,  trustees,  June 
16tb,  1880,  for  an  *' improvement  in 
stoves,"  the  original  patent,  Ko. 
89,804,  having  been  granted  to  Cal- 
vin Fulton,  as  inventor,  April  27th, 
1869,  and  having  been  re-issued  as 
No.  6,907,  June  9th,  1874,  pamely, 
'*  1.  A  stove  grate  so  constructed 
and  arranged  relatively  to  the  fire- 
chamber  or  fuel-receptacle  as  to  lenve 
between  the  two  and  around  the 
edge  of  the  grate  a  free  open  space, 
and  to  permit  of  the  removal  of 
clinkers  and  other  refuse  through 
8uch  space,  by  use  of  the  ordinary 
poker  or  slicer,  substantially  as  de- 
scribed," does  n»t  claim  a  patentable 
invention,  all  that  was  done  being  to 
substitute  an  existing  flat  grate  for  a 
dished  grate,  in  an  existincc  arrange- 
ment of  a  dished  grato  and  a  fire-pot 
with  an  anti-dinker  opening  between 
them.  id, 

(39.)  SearU—WhijhWcket, 

127.  The  second  claim  of  re-issued 
letters  patent  No.  9  297,  granted  to 
Anson  Searls,  July  ISth,  1880,  for 
an  improvement  in  whip-sockets,  the 
original  patent,  No.  160,196,  having 
been  granted  to  him  April  28th, 
1874,  is  void,  under  the  cases  of  Mil- 
ler y.  Bra»  Co.,  (104  U.  A,  860,)  and 
Jamm  v.  CamfHU,  {Id.,  866,)  because 
the  claim  of  the  original  was  limited 
to  a  bell-shaped  top  and  the  claim  of 
the  re-issue  is  not  so  limited.  SearU 
V.  Bouton,  628 

128.  The  question  of  delay  in  the  re- 
issue held  to  be  open  for  considera- 
UoQ  under  the  answer.  id. 

(40.)  Brainard — Machine  for  tpothing 
thavinffs. 

129.  Claim  4  of  re-issued  letters  patent 


No.  8,099,  granted  to  Edwin  D. 
Brainard,  as  assignee  of  Frederick 
Hinckel,  February  26th,  1878,  for 
an  improved  machine  for  washing^ 
shavings  in  breweries,  the  originfQ 
patent.  No.  85,628,  having  been 
granted  January  6th,  1869,  namely, 
"A  vessel  capable  of  rotetion  on  its 
axis,  in  combination  with  a  perform 
ated  pipe  for  producing  jets  of  water 
within  snch  vessel,  substantially  as 
described,"  is  substantially  identical 
with  claim  1  of  the  original,  name- 
ly, "A  hollow  perforated  shaft,  in 
combination  with  the  cylinder  and 
the  frame  arr^ged  and  operating 
subsUntially  in  the  manner  and  for 
the  purpose  described,"  and  is  vaUd^ 
although,  in  the  original,  the  cylin- 
der is  described  as  suspended  hori- 
zontally on  the  shaft,  and  as  rotating- 
by  the  revolution  of  the  shaft,  while 
in  the  re-issue  it  is  not  steted  to  be 
suspended  horizontally,  but  to  be  so 
constructed  as  to  admit  of  a  rotating 
or  reciprocating  action.  Brainard  v^ 
Cramme,  180 

130.  The  re-issue  containing  claims  for 
the  process  worked  out  by  the  ap- 
paratus, which  claims  were  not  in 
the  original,  the  plaintiff  was  allowed 
to  recover  on  claim  4  of  the  re-issue,, 
without  costs,  on  filing  a  disclaimer 
as  to  thQ  claim  for  the  process.     idL 


(41.)    Qardner,   Gardner  and  Gardner 
— Chair-eeat. 

181.  Claim  2  of  re-issued  letters  patent 
No.  9,094,  granted,  February  '24th,. 
1880,  to  OUver  L.  Gardner,  William 
Gardner,  and  Jane  £.  Gardner,  as> 
signees  of  George  Gardner,  for  an 
improvement  la  chair-seate,  namely,. 
"A  chair-seat  made  of  laminie  of 
wood  glued  together,  with  the  grnina 
in  one  layer  crossing  those  of  the 
next,  coniuive  on  the  upper  surface, 
convex  on  the  lower  surface,  and  per- 
forated, as  a  new  article  of  manufac- 
ture, substantially  as  set  forth."  (the 
original  patent.  No.  127,045,  having 
been  granted  to  George  Gardner, 
May  21st,  1872,  and  re-issued  as  No. 
7,208,  July  4th,  1876,)  does  not  claim 
any  patenteble  invention,  the  form 
of  the  Seat  being  old,  the  material 
being  old,  and  the  method  of  impart- 


594 


INDEX. 


bam,"  on  the  inVention  of  said  Carr, 
considered,  in  view  of  the  specifica- 
tion and  claims  of  the  original  patent. 
Campbell  y.  Kavanauffh,  256 

68.  A  hnb,  composed  of  two  slotted 
TiDgBf  secnred  together,  vrith  an  out- 
wardly narrowed  annular  space  be- 
tween the  inner  ends  of  the  rings,  is 
not  claimed  in  the  re-issue,  either  by 
itself  or  in  combination  with  the 
ring^  but  such  a  hub  was  claimed  in 
cli£n  2  of  the  original,  and  was 
claimed  in  combination  with  the 
rings,  in  claim  8  of  the  original,  and 
was  made  a  prominent  feature  of  in- 
Tention  in  the  original.  The  origi- 
nal showing  that  the  inventor  had  no 
idea  of  using  hub  rings  not  slotted, 
or  of  an  interior  annular  space  in  a 
hub  not  formed  of  two  slotted  rings, 
claims  2  and  8  of  the  re-issue  must 
be  construed  as  referring  to  no  hub 
other  than  one  formed  of  two  slotted 
rings,  and  to  no  annular  space  except 
one  between  two  slotted  hub  rings,  td, 

64.  The  patent  is  not  infringed  by  mak- 
ing and  tselling  rings  like  the  ring  of 
the  patent,  if  they  are  not  sold  to  be 
used  in  a  burr  like  that  of  the  patent, 
there  being  no  claim  in  the  patent  to 
a  rine  other  than  a  ring  to  be  used  in 
a  hollow  slotted  hub.  id, 

(21.)  SearU—Whip^oekei. 

65.  The  claims  of  letters  patent  Ko. 
221,482,  granted  to  Anson  Searls,  as 
assignee  of  John  M.  Underwood,  the 
inventor,  November  Uth,  1879,  for 
an  "  improvement  in  whip  sockets," 
namely,  "1.  The  combination  with 
a  whip  socket  having  an  annular  re- 
cess in  it^  of  a  flexible  elastic  ring, 
which  may  be  held  in  such  recess  by 
its  own  elastic  force,  and  which  is 
provided  on  its  inner  edge  with  non- 
contiguous projections,  separated  so 
that  Siey  cannot  be  pressed  into  con- 
tact with  one  another  by  the  inser- 
tion of  the  whip  stock  into  the  ring. 
2.  The  ring  composed  of  a  body  with 
such  projections,"  are  invahd,  for 
want  of  invention.  SearU  v.  lierriam, 

268 

66.  A  ring  with  inward  non-contiguous 
projections  existed  before,  ttiough 
not  used  with  the  annular  recess,  and 


the    annular   recess  existed   before, 
used  with  a  plain  ring.  id, 

(22.)  8ehn9ider^8kad€-holder  for- 
lamp. 

67.  Re-issued  letters  patent  No.  7,511^ 
g^ranted  to  Bennett  B.  Schneider, 
February  18th,  1877,  for  an  "im- 
provement in  shade-holders  for 
lamps,"  the  original  patent.  No.  182,- 
978,  having  been  granted  to  Carl 
Votti,  as  inventor,  October  8d,  1876, 
do  not  describe  the  shape  or  size  of 
the  parts,  or  the  proportion  of  the 
parts  of  the  shade,  or  the  principle 
which  is  to  govern  the  coustmction 
of  the  shade  as  to  size  and  propor- 
tions, and  there  is  no  infringement  of 
the  patent  by  a  shade  which  is  not  of 
the  Torm  and  dimensions  and  size  and 
height  and  proportions  of  the  shade 
shown  in  the  drawings  of  the  patent. 
Sehfuider  v.  Lovetl,  811 

(28  )  Hart— Neck-He, 

68.  Re-issued  letters  patent.  No.  7,909,. 
granted  to  Wilham  H.  Hart,  Jr.,  Oc- 
tober 9th,  1877,  for  an  "improve- 
ment in  neck-ties,"  the  original  pat- 
ent, No.  169,921,  having  b^en  grant- 
ed to  him  February  16th,  1876,  are 
not  infringed  b^*  a  pin  constructed  ac- 
cording to  the  description  in  letters 
patent.  No.  206,673,  granted  to  Al- 
bert M.  Smith  and  Hiram  H  Thayer, 
April  23d,  1878.    UartY.  Thayer,  315 

69.  If  the  re-issue  claims  more  than  the 
original,  so  as  to  cover  the  defend- 
anVs  pin,  it  covers  new  matter  not 
found  in  the  original,  and  is  for 
an  invention  not  shown  in  the  origi- 
nal. tdL 

(24.)   Wdh^Fur  hat-body  maekinery, 

70.  Claim  6  of  re-issued  letters  patent 
No.  2,942,  granted  May  19th,  1868, 
to  Eliza  Wells,  administratrix  of 
Henry  A.  Well«,  for  "  improvements 
in  machinery  for  making  hat  bodies 
of  fur."  is  not  infringed  by  the  Gill 
machine.     Br^  v.  (^intard,       820 

71.  Under  the  decisions  in  regard  to 
this  patent,  in  Burr  y.  Durvee^  (1 
Wall,  681,)  and  in  QiU  v.  Weih,  (22 


mDEX. 


595 


Wall,  I A  the  Wells  machine  and  the 
Gill  macnine  contain  two  radically 
difFerent  yehicles  for  the  transmission 
offiir.  id. 

(26.)  Ivet  A  MilUr^Woffon-hub. 
Miller —  Carriage^ale, 

72.  Re-issued  letters  patent,  No.  8,179, 
granted  May  20th,  1879,  to  lyes  <& 
Miller,  as  assignees  of  Welcome  C 
Tucker,  for  an  improvement  in  wagon 
hubs,  the  original  patent  having  l]«en 
granted  September  10th,  1867,  and 
letters  patent  granted  to  Willis  E. 
Miller,  February  12tb,  1878,  for  an 
improvement  in  carriage  axles,  are 
not  infringed  by  carriage  axles  made 
under  letters  patent  granted  to  Ells- 
worth D.  Ives,  June  10th,  1879,  and 
November  2d,  1880.  Ivn  v.  Hart- 
ford Spring  and  Axle  Co.,  883 

78.  Unless  the  general  language  of  said 
re-issue  is  construed  in  accordance 
with  the  state  of  the  art  and  with  the 
limitations  of  the  original  patent  in 
regard  to  the  form  of  the  flanges,  the 
re-issue  is  broader  than  the  inven- 
tion, and  includes  devices  different 
from  those  which  were  intended  to 
be  the  subject  of  the  original  patent. 

id. 

(26.)  Bruee — Printing4ype9. 

74.  Letters  patent  No.  189,866,  granted 
to  David  W.  Bruce.  May  27th,  1878, 
for  an  improvement  in  printing  types, 
are  valid.     Bruce  v.  Harder,        865 

76.  The  invention  defined,  and  held  to 
be  patentable.  id. 

76.  The  claim  construed  by  the  lan- 
goage  of  the  specification.  id 

(27.)  lAndeajf — Sleeve-aupporter, 

77.  Letters  patent.  No.  202,786,  grant- 
ed to  John  P.  Lindsay,  April  28d, 
1878,  for  an  "  improvement  in  sleeve 
supporters,*  are  valid.  Lindaay  v. 
Stein,  870 

78.  The  patented  supporter  consists  of 
two  of  the  clasps  patented  to  Lind- 
say by  patent  No.  166,429,  Novem- 

*ber  8a,  1874,  one  at  each  end  of  a 
connection  either  elastic  or  non-elas- 


tic.   But  the  case  is  not  one  of  a 
mere  double  use  of  the  clasp.         id^ 

79.  Lindsay  applied  for  a  patent  for  th& 
supporter  in  October,  1874.  The  ap. 
plication  was  rejected  in  November^ 
1874,  and  again  in  January,  1876» 
and  nothing  more  was  doue  upon  it« 
In  April,  1878,  a  new  application 
was  filed,  on  which  the  patent  was 
granted :  Held,  that,  under  §  4,894  of 
the  Revised  Statutes,  the  first  ap- 
plication was  abandoned,  becau^'e  not 
prosecuted  within  two  years  after  ita 
rejection,  but  the  invention  was  not 
thereby  abandoned,  and  a  second  ap- 
plication could  be  made.  id^ 

80.  The  patent  would  be  invalid  if  the 
invention  covered  by  it  were  in  pub- 
lie  use  or  on  sale  in  this  country  for 
more  than  two  years  before  the  sec- 
ond application.  id, 

81.  The  features  of  Lindsay's  inventioD 
pointed  out,  on  the  question  of  nov-> 
elty.  id 

82.  The  question  of  the  infringement 
of  the  patent  considered.  id, 

(28.)  Cro»a — Fountain-pen. 

88.  Letters  patent  No.  199,621 ,  granted 
to  Alonzo  T.  Cross,  January  29th,. 
1878,  for  an  improvement  in  fountain 
pens,  are  valid.    Croat  v.  MeKinnon, 

89& 

• 

84.  The  principal  distinctive  feature  of 
the  patent  is  a  spring  working  be^ 
tween  the  vibrating  writing  pin  and 
the  air-tube,  to  project  the  pin  and 
restrain  the  flow  of  ink  when  the  pen 
is  not  in  use,  and  yield  to  the  pres^ 
sure  of  the  point  of  the  pin  and  make 
room  for  the  flow  of  ink  when  the* 
pen  is  in  use.  The  invention  is  not 
anticipated  by  a  pen  in  which  the 
vibrating  point  was  actuated  by  a 
weight  instead  of  a  spring.  id.. 

86.  A  clfdm  to  the  vibrating  pin  and 
spring  combined  with  the  air-tube» 
case  of  the  pen  and  ink-tube,  is  a 
valid  claim  to  a  combination.        id 

(29.)  Tezt&r—Deeign  for  newel-post. 

86.  The  6th  daim  of  design  letters  pat^ 


6»6 


IKI>EX. 


eot,  No.  12,026,  gnmied  to  Henry  I 
Teztor,  Korember  9th,  1S60,  for  •  de- 
sign  for  newel  ports,  namely,  "  A  de- 
sign for  the  upper  portion  of  •  newel 
post,  consisting  of  the  scrolled  ome- 
ments,  /,  *nd  the  beed,  m,  the  roees 
or  roeettes.  fi,  upon  eecdi  side,  as 
speetfied,"  is  not  a  daim  to  a  single 
ornament,  within  §  4,929  of  the  Re- 
Tlsed  Statotes.  iSim/wMi  y.  2)am,413 

87.  It  wonld  seem  thai  the  desien  for 
the  cap  of  a  newel  post  is  a  design 
for  a  mannfiictiire,  within  said  stat- 
ute, id, 

88.  A  newel  post  of  a  certain  shape, 
haying  omameots  and  a  cap,  is  an 
article  of  msnnfsctnre,  within  said 
statute.  id, 

(80.)  Nayhr^Tin4m8d  lead  pipe, 

89.  The  second  claim  of  re-issaed  let- 
ters patent,  No.  8,744,  granted  to 
Peter  Nay  lor,  assignee  of  William 
Anthony  Shaw,  Noyember  2dd,  1869, 
for  an  fmproyement  in  the  mannfac- 
ture  of  tin-lioed  lead  pipe,  the  orig- 
inal patent,  No.  74,618,  haying  been 
granted  to  said  8haw,  February 
I8th,  1868,  antedated  February  6th, 
1 868,  is  yalid.  Show  y.  ColweU  Lead 
Co.,  417 


90.  The  inyention  defined. 


id. 


91.  The  questions  of  noyelty  and  in 
fringement  considered.  id. ' 

92.  Public  use  for  two  years  before  the 
applicotion  for  the  re-issue  of  a  pat- 
ent does  not  affect  its  yalidity.     id. 

98.  It  is  sufiScient  for  an  inyention  to 
be  useful  in  itself  to  be  patentable, 
and  it  is  not  necessary  it  shonld  be 
better  than  what  was  before  Imown. 

id. 

94.  The  rifi^ht  to  recoyer  for  infringe- 
ments ofa  patent  is  assignable,      id, 

95.  The  questioD  of  a  yerbal  license  to 
the  defendant  to  use  the  patented  in- 
yention, considered.  id, 

(31.)  Searh—Whip-eocket, 
Searie —  Whip-Docket. 

96.  The  second  claim  of  re-issned  let- 


ters patent  No.  9,297,  granted  to  An- 
son 8earU»  Jnl^  Idth,  1880,  for  an 
improyement  m  whip  sockets,  the 
original.  No.  150.195,  haying  been 
granted  April  28th,  1874,  and  lei- 
ters  patent  No.  281,510,  granted 
Ao^nst  24th,  1880,  to  Anson  Searb, 
assignee  of  John  M.  Underwood,  for 
an  improyement  in  whip  sockets,  are 
yalid.     SearU  y.  BimUm,  426 

97.  The  question  of  the  difference  be- 
tween the  re-issne  and  the  original 
patent  cannot  be  considered  unless 
the  original  is  pot  in  evidence,      id, 

98.  The  answer  alleged  prior  knowl- 
edge by  persons  nan^ed,  bnt  not 
prior  use,  and  aUeged  thsA  said  per- 
sons were  "of **  a  place  named,  but 
did  not  allege  knowledge  there  or  at 
any  other  place.  Although  knowl- 
edge at  the  place  named  was  proved, 
the  proof  was  objected  to  because  the 
defence  was  not  aUeged  in  the  totns 
provided  by  statute,  and  it  was  held 
that  the  defence  could  not  prevail. 

id, 

99.  The  question  of  a  license  consid- 
ered, f^ 

(82.)  Eoe  and  Tueker^PrinHng-prtae, 

100.  Claims  8  and  4  of  letters  patent 
No.  181.217.  mnted  to  Richard  M. 
Hoe  and  Stephen  D.  Tucker,  Septem- 
ber 10th,  1872,  for  an  "improve- 
ment in  printing  presses,"  namely, 
*'  8.  Separating  two  following  sheets 
of  papers,  in  their  travel  to  the  fly 
frame,  into  two  different  paths,  by 
an  arrangement  of  topes  and  switches, 
and  making  the  travel  of  one  sheet 
Buitobly  longer  than  the  other,  so 
that,  when  they  meet  again,  Uiey 
will  issue  one  upon  the  other  to  the 
fly,  substentially  in  the  manner  de- 
scribed and  specified.  4.  llie  em- 
ployment and  use  of  the  adjusting 
roller  59,  for  regulating  the  travd 
of  the  first  sheet,  constructed  and 
operaUng  substontially  in  the  man- 
ner described  and  specified,"  are 
valid.     Hoe  v.  KaMer,  480 

101.  Claim  8  is  for  an  arrangement  of 
topes  and  switehes,  wMch  sepArates 
two  following  sheets  of  the  printed 
papers,  in  their  travel  to  the  fly- 


mDKX. 


597 


frame,  into  two  different  paths,  the 
trayel  of  one  of  the  two  sheets  in  its 
pnth  heing  suitahl j  longer  than  the 
travel  of  the  other  of  the  two  sheets 
in  its  path,  so  that^  when  the  two 
sheets  meet  again,  they  will  issue  one 
accurately  superimposed  upon  the 
other,  to  the  fly.  id. 

102.  The  defendant's  apparatus  had  no 
fly-frames,  the  sheets  in  it  issuine  in 
pairs  to  a  folding  apparatus,  and  it 
had  sing^le-acting  switches,  instead 
of  double-acting  switches,  at  the 
point  where  the  longer  and  shorter 
paths  took  their  departure,  and  it 
had  no  switches  to  separate  the  sheets 
after  they  had  issued  in  pairs,  hut  it 
was  held  to  infringe  claim  8.         id, 

108.  H.,  one  of  the  patentees,  filed  in 
the  Patent  Office,  in  1854,  a  caveat 
describing  the  invention  covered  by 
claim  8,  and  illustrated  it  by  draw- 
ings in  a  manner  snfficiently  full  and 
dear  to  have  enahled  the  apparatus 
to  be  built  and  put  in  practice.  In 
the  affidavit  to  the  caveat,  H.  swore 
that  he  verily  believed  himself  to  be 
the  original  and  first  inventor  of  the 
improvement  The  caveat  was  re- 
newed in  each  year  from  1860  to 
1869,  both  inclusive.  The  patent  was 
applied  for  in  April,  1872.  H.  and 
T.  were  the  joint  inventors  of  what 
is  embraced  in  the  patent,  and  H. 
was  not  the  sole  inventor.  H.  be- 
lieved, at  the  time,  that  he  Was  the 
sole  inventor.  He  was  so  advised 
by  his  counsel  at  the  time,  on  the 
ground  that,  althoagh  he  and  T. 
were  mutual  inventors,  the  fact  that 
T.  was  the  hired  employee  of  H. 
made  the  invention  the  property  of 
H.  and  authorized  the  taking  of  the 
caveat  in  the  name  of  H.  nloDe.  T. 
concurred  at  the  time  in  that  view: 
Heldf  that  there  was  nothing  con- 
nected with  the  caveat  to  interfere 
with  the  validity  of  the  patent,  or  to 
prevent  the  carrying  back  of  the  in- 
vention, as  a  joint  invention,  to  the 
date  of  the  original  filing  of  the  cav- 
eat, id. 

104.  In  the  contents  of  the  filo-wrapper 
was  an  oath  to  the  specification  and 
application,  sworn  to  by  H.,  at  Lon- 
don, England,  before  "a  London 
commissioner  to  administer  oaths  in 


common  law.**  No  other  oath  by  H. 
appeared  now  among  the  contents  of 
the  file-wrapper.  There  was  a  proper 
oath  by  T.  The  London  commia- 
sioner  was  not  an  officer  specified  in 
^  80  of  the  Act  of  July  8th,  1870, 
16  U.  8.  Stat,  at  Large,  202,)  as  one 
>efore  whom  the  oath  could  be 
taken.  The  bill  alleged  "  due  appli- 
cation."  The  answer  denied  that  al- 
legation generally,  but  did  not  point 
out  any  defect  as  to  the  oath  of  H. 
The  plaintiffs  put  in  evidence  the 
patent.  The  defendant  put  in  evi- 
dence the  file-wrapper  and  contents, 
under  the  plaintiffs'  objection.  The 
defendant  took  no  objection,  in  the 
record  of  the  testimony,  as  to  the 
oath,  or  as  to  the  putting^  in  evidence 
the  patent.  The  defendant  did  not 
show  that  there  was  no  proper  oath 
by  H.  or  that  the  oath  appearing:  was 
the  only  oath  he  made:  Rtld.  that 
it  was  not  shown  that  there  was  not 
a  proper  oath  b^  H.,  and  that  the 
presumption  arising  from  the  gront 
of  the  patent  and  from  the  recitals 
in  it  was  not  rebutted.  id. 

105.  Priority  of  completion  of  me- 
chanism, as  well  as  priority  of  in- 
vention, determined  in  favor  of  H. 
and  T.,  as  between  them  and  C.      id. 

106.  Claim  4  is  a  claim  to  the  adjusting 
roller  for  r^gulatinfi:  the  travel  of  the 
first  sheet,  in  its  longer  path,  rela- 
tively to  the  travel  of  the  second 
sheet,  in  its  shorter  path,  and  in- 
volves the  two  several  series  of  tapes 
of  the  two  several  paths.  The  adjust- 
ment  of  the  relative  lengths  of  the 
two  paths  to  each  other,  by  modify- 
ing the  length  of  the  longer  one, 
through  an  adjustment  of  tiie  roller 
acting  on  the  longer  tapes,  is  the 
point  of  the  claim.  Such  invention 
was  new.  id. 


(88.)  7\/ler—0hee8e-hoop. 

107.  The  first  claim  of  re-issued  letters 
patent  granted,  August  5th,  1879, 
to  Leman  W.  Tyler,  as  assig^nee  of 
William  Sternberg,  for  an  improve- 
ment in  cheese-hoops,  the  original 
patent  havine  been  granted  to  said 
Sternberg,  March  21st,  1871,  is  an 
inexact  claim,  which,   if  construed 


698 


INDEX. 


•according  to  its  natural  meaning, 
would  include  an  inyeDtion  broader 
than  the  one  which  was  made.  If  a 
limited  construction  be  given  to  it.  it 
would  be  subetantiallj  the  same  as 
the  second  claim  of  the  re-issue.  The 
second  claim  of  the  re-issue  beine 
Talid  and  infringed,  the  Court  held 
that  the  plaintinoould  haye  a  decree 
on  it,  without  cost«,  on  disclaiming 
the  first  daim.     J^ler  t.  OuUoway, 

446 


(84.)  Blake — Sewing  a  fhoe, 
Blake — Shoe  sewed. 

108.  Lyman  R.  Blake  invented  an  im- 
provement in  sewiog  machines,  by 
which  the  soles  and  uppers  of  shoes 
could  be  sewed  together  by  chain 
stitches,  and  obtained  a  patent  for  it. 
No.  20,776,  July  6th,  1868.  It  was  ex- 
tended for  7  years  and  expired  July 
«th,  1879.  August  14th,  1860,  he 
obtained  two  other  patents,  Nos. 
26,961  and  26,962,  one  for  the  pro- 
cess of  sewing  a  shoe  so  sewed,  and 
the  other  for  the  shoe  sewed  by  such 
process.  August  ISth,  1874,  they 
were  extended  for  7  years.  January 
13th,  1880,  No.  29,601,  was  re-issued 
as  No.  9,043.  J.  took  a  lease  of  a  ma- 
chine from  the  plain tiU,  with  the  right 
to  use  it  under  all  three  of  the  patents, 
during  the  term  of  either,  for  license 
fees  for  all  shoes  made  on  it.  After 
No.  20,776  expired,  S.  made  ma- 
chines for  sewing  shoes  by  said  pro- 
cess and  sold  them  to  the  other  de- 
fondants,  who  used  them.  J.  and  S. 
And  the  other  defendants  were  sued, 
After  No.  20,776  expired,  for  infring- 
ing No.  26,962  and  re-issue  No. 
9,048.  Blake  did  not  invent  a  shoe 
sewed  with  such  stitch :  Beld,  that 
the  machine  alone  was  patentable 
and  not  the  process  or  the  product. 
McKay  V.  Jaekman,  466 

109.  The  bill  was  dismissed  as  to  all 
the  defendants  and  subject-matter 
except  the  arrears  of  license  fees  due 
by  J.  for  the  use  of  the  machine,    id, 

(86.)  AfaUhewe — Sodorwater   appanUue. 

ilO.  The  6th  and  7th  claims  of  re-is- 
sued letters  patent  No.  9,028,  grant- 
«d,  January  6th,  1880,  to  John  Mat- 


thews, for  soda-water  apparatus,  the 
original  patent,  No.  60,266,  having 
been  granted  to  him  October  Sd, 
1866,  are  void  for  want  of  noyelty. 
Matthewt  V.  Spangenberg,  482 

111.  The  4th,  6th,  8th  and  9th  claims 
are  valid.  The  parts  patented  in 
them  being  definitely  distinguishable 
from  the  parts  claimed  in  the  6th 
and  7th  claims,  and  having  been  in- 
fringe, and  the  patentee  having 
made  the  latter  cmms  bv  mistake, 
supposing  himself  to  be  tne  first  in- 
ventor of  the  parts  claimed  in  them, 
without  any  wilful  default  or  intent 
to  defraud  or  mislead  the  public, 
and  not  having  unreasonably  neg- 
lected thus  far  to  enter  a  disclaimer 
of  those  parts,  it  was  held  that  he 
was  entitled  to  maintain  this  suit, 
but  without  costs,  on  entering  the 
proper  disclaimer.  id, 

112.  Some  of  the  defendants'  evidence 
was  taken  out  of  time,  but,  as  no 
motion  was  fiied  to  suppress  it,  it 
was  allowed  to  stand  and  was  consid- 
ered, id, 

(86.)  Hayee — Ventilator, 

Hai/es — Sky-lighi  (8  paJtewU.) 
Bayee — Sky4ight  turret  and  eon- 
eervalory. 

1 18.  Re-issued  letters  patent.  No.  8,697, 
granted  to  George  Hayes,  February 
26th.  1879,  for  an  "improvement  in 
ventilators,"  the  original  patent,  No. 
94,208,  having  been  granted  to  him 
August  81st,  1869,  are  void,  because 
a  feature  no  where  alluded  to  in  the 
original  patent  has  been  inserted  in 
the  re-issue  and  made  an  essential 
part  of  the  invention,  and  a  neces- 
sary element  in  each  claim.  Hayet 
V.  Seton,  484 

114.  Claims  8  and  4  of  re-issued  letters 
patent  No.  8,674,  granted  to  George 
Hayes,  April  16th,  1879,  for  an  "  im- 
provement in  sky-lights,"  the  origi. 
nal  patent.  No.  100,148,  having  been 
granted  to  him  February  22d,  1870, 
and  having  been  re-issued  as  No. 
6,693,  December  28d,  1878,  are  in- 
valid, because  of  the  omission  from 
the  rafter  described  in  those  claims, 
of  a  stay.plate,  which  the  original 
patent  describes  as  an  essential  feat- 


IKDEX. 


599 


tire  of  the  inTention.  Claim  6  is  in- 
Tftlid,  because  it  omits  a  moulding 
and  a  stay-plate,  designated  in  the 
original  patent  as  essential  features 
of  the  inyentioo.  As  to  claims  7,  9, 
10,  11,  12,  18,  U  and  16,  any  rifht 
which  the  patentee  may  haye  had 
to  secure  by  letters  patent  what  is 
coTered  by  those  claims  was  lost  by 
delaying  to  assert  sach  right  for  oyer 
9  years  from  the  date  of  the  original 
patent.  id, 

116.  Claim  1  of  re-issued  letters  patent 
No.  8.676,  granted  to  George  Hayes, 
April  16th,  1879,  for  an" improve- 
ment in  sky-lights/'  the  original 
patent.  No.  106,167,  haying  Deen 
granted  to  him  August  9th,  1870, 
considered.  Claims  2  and  6  held  not 
to  haye  been  infrioged.  id 

116.  Claims  1  and  S  of  re^issued  letters 
patent  No.  8,688,  granted  to  George 
Hayes,  April  29th,  1879,  for  an  "im-- 
provement  in  sky-lights,"  the  orig- 
inal, No.  112,694,  haying  been 
granted  to  him  March  14tb,  1871, 
are  invalid,  because  for  different  in- 
yentions  from  those  described  in  the 
original  patent.  Claim  2  considered. 
Claim  6  oeld  to  be  void.  id. 

117.  Claim  8  of  re-issued  letters  patent 
No.  8,689,  granted  to  George  Hayes, 
April  29th,  1879.  for  an  "improye- 
ment  in  sky-light  turrets  and  con- 
seryatories,"  held  not  to  haye  been 
infringed.  id. 


<87.)  Perry  d:  Cc-^Coamove, 
Ferry  ^Stove, 
i^ar — Baae-huming  »tove, 
Jjiekey  and  Perry — HeaUng  9lave. 

118.  Claim  8  of  re-issued  letters  patent 
No.  6,709,  granted  to  Perry  A  Co., 
October  19th,  1876,  for  an  "  improye- 
ment  in  coal  stoves,"  the  original 
patent.  No.  60,078,  haying  been 
granted  to  Zebnlon  Hunt,  as  invent- 
or, September  19th,  1866,  namely, 
-"8.  The  adjoining  flues,  D  and  D', 
aitnated  at  the  rear  of  the  stove,  and 
having  walls  built  on  the  casing  of 
the  same,  in  combination  with  the  il- 
luminating doors  or  windows  in  the 
draft-chamber  base-section,"  does  not 
claim  a  patentable  combinaUon,  be- 


cause the  flues  operate  in  the  same 
manner  whether  there  are  illuminat- 
ing  windows  in  the  place  designated 
or  not,  and  the  operation  of  such 
windows  is  the  same  whether  the 
flues  are  arranged  as  described  or 
not.  Perry  v.  Co-operative  Foundry 
Co,,  498 

119.  Claim  4  of  re-issued  letters  patent 
No.  6,894,  granted  to  John  S.  Perry, 
June  2d,  1874,  for  an  "  improvement 
in  stoves,"  the  original  patent.  No. 
67,288,  having  been  granted  to 
Charles  H.  Frost,  as  inventor,  July 
80th,  1867,  namely,  "4.  A  grate  or 
fire-bed  with  its  central  and  outer 
sections  made  separately,  and  placed 
in  a  plane  below  the  base  of  the  fire- 
pot  or  combustion-chamber  proper, 
within  the  draft-chamber  base-sec- 
tion, and  isolated  from  the  walls 
of  the  same,  substantially  as  shown 
and  described,"  does  not  claim  any 
patentable  invention,  there  being  no 
invention  in  subetitn^ng.  in  the  nven 
combination,  an  old  grate  made  in 
two  parts  for  another  old  grate  made 
in  one  part,  preserving  the  same  re- 
lation of  the  grate  to  the  fire-pot  and 
to  the  ash-pit  walls,  when  no  dis- 
tinctive effect  in  the  combination 
results  from  the  substitution.         id. 

120.  Claim  11  of  said  patent,  namely, 
"11.  The  combination  of  mica  or 
other  transparent  windows  in  the 
walls  of  the  draft-chamber  base-sec- 
tion, a  grate  or  fire-bed  placed  in  a 
plane  below  the  base  of  the  fire-pot 
or  combustion-chamber  proper,  the 
free  open  space  formed  between  the 
same,  and  the  said  grate  or  fire-bed 
isolated  from  the  walls  of  the  said 
draft-chamber  base-section,  substan- 
tially as  shown  and  described,"  does 
not  claim  any  patentable  invention, 
because  a  window  in  an  ash-pit  can- 
not modify  or  affect  the  action  or  o^ 
eration  of  the  grate  or  of  the  anti- 
clinker  space,  or  the  isolation  of  the 
grate,  nor  is  the  operation  or  use  of 
the  windows  affected  or  modified  by 
the  existence  or  non-existence  of  any 
of  those  features.  id, 

121.  Claim  4  of  reissued  letters  patent 
No.  6.206,  Division  A,  for  an  "  im- 
provement in  base-burning  stoves," 
g^nted  to  James  Spear,  January  6th, 


600 


INDEX. 


1876,  the  original  patent,  No. 
100,886,  havine  been  granted  to 
said  Spear,  as  myentor,  March  1st, 
1870,  and  re-issued  to  him  in  two 
diyisions,  Nos.  6,469  and  6,460,  Jane 
17th,  1878,  and  again  re-issned  in  two 
dividons,  January  6th,  1876,  No 
6,206,  Division  A,  and  No.  6,207,  Di- 
vision B,  namely,  "  4.  The  combina^ 
tion  of  a  fire-chamber  having  its 
clinker-discharge  end  £  grated  or 
illaminating  and  projecting  down- 
ward within  the  air-chamber  S,  a 
ffrate  surface  or  fire-bed  projecting 
Beyond  the  inside  diameter  of  the 
slate  and  clinker-discharge  end  of 
the  fire-chamber,  and  the  clinker- 
clearing  opening  R,  substantially  as 
herein  described,"  does  not  claun  a 
patentable  inyention,  because  it  was 
only  the  substitution,  in  an  existing 
combination,  for  a  fire-chamber  with 
its  clinker-discharge  end  non-grated, 
of  an  existing  fire-chamber  with  a 
grated  clinker-discharge  end,  the 
substitution  working  no  change  in 
the  operation  of  the  parts.  id, 

122.  Claims  6,  7  and  8  of  said  patent, 
namely,  *'  6.  The  combination  of  the 
yertical  clinker-cleaning  opening  R, 
and  mica  lights  cP^  in  doors  opposite 
the  opening,  substantially  as  de- 
scribeo."  "7.  The  combination  of 
the  vertical  clinker-cleaning  opening 
R,  mica  lights  d^t  and  clinker-clean- 
ing doors  C,  opposite  the  opening, 
substantially  as  herein  described." 
"  8.  The  combination  of  a  fire-cham- 
ber, the  clinker-cleaning  opening  R, 
between  the  fire-chamber  and  grate 
surface,  clinker-cleaning  doors  C,  op- 
posite the  said  opening,  and  mica 
lights  d\  opposite  the  illuminating 
section  £,  of  the  fire-chamber,  sub- 
stantially as  described,*'  do  not  claim 
patentable  combinations,  there  being 
no  patentable  combination  between 
the  mica  lights  and  the  other  elements 
in  those  claims.  t^. 

128.  Claim  12  of  said  patent,  namely, 
"  12.  The  combination  of  a  fire^ham- 
ber,  haying  its  slate  and  clinker-dis- 
charge end  contracted  and  project- 
ing downward,  a  grate-ring,  E,  and  a 
clmker- cleaning  opening,  R,  above 
the  ring,  substantially  as  herein  de- 
scribed," does  not  claim  any  patent- 
able inyention,  there  being  no  rela* 


tion  or  co^action  between  the  lower 
end  of  the  fire-pot  and  the  laterally 
projecting  grate  and  the  space  out- 
side of  tlie  grate,  which  did  not  exist 
between  the  lower  ends  of  prior  nn- 
coDtracted  fire-pots  and  the  project- 
ing grates  and  the  outside  spaces  in 
prior  structures.  id^ 

124.  Claim  2  of  letters  patent  No. 
188,646,  for  an  *' improrement  in 
heating  stoves,"  granted  to  Andrew 
Dickey  and  John  S.  Perry,  as  in- 
ventors, October  24th,  1876,  namely, 
"  2.  The  combination  of  ascending 
and  descending  flues  placed  in  the 
rear  of  a  stove,  a  free  open  space  be- 
tween the  top  of  the  grate  and  the 
lower  end  of  the  fire-pot,  sufficiently 
large  to  permit  the  removal  of 
clinkers  and  other  obstructions,  illu- 
minating windows  opposite  said 
space,  and  a  grate  or  fire-bed  having 
an  open  space  between  it  and  the 

'  walls  of  the  stove,  to  admit  of 
clinkers  and  other  obstructions  beins- 
dropped  between  the  grate  and  sidd 
walls  of  the  stove,  into  the  aeh-pit,. 
substantially  as  described,"  does  not 
claim  a  patentable  combination,  but 
only  an  ajrgregation  of  prior  reyerti> 
ble  flues  with  other  features  before 
existing  in  unison  in  the  same  stove,, 
those  features  operating  together  in 
the  same  way  whether  with  or  with- 
out revertible  flues.  t<f» 

(88.)  Perry  and  Sard,  trustea— Stone, 
Perry  and  Sard,  trusteet — Stov^ 

126.  Claims  1  and  4  of  re-issned  letters 
patent  No.  9,247,  granted  to  Ji>hn  S. 
rerry  and  Grange  Sard,  Jr.,  trustees^ 
June  8th,  1880,  for  an  "improve- 
ment in  stoves,"  the  original  patent,. 
No.  64,988«  having  been  granted 
to  John  R.  Moore,  as  inventor.  May 
22d.  1 866,  and  having  been  re-issued 
as  No.  6,782,  November  9th,  1876, 
namely,  "1.  The  combination  witti 
the  grate  or  fire-bed  of  a  stove,  of  a 
downwardly-contracted  fire-pot,  the 
two  being  so  arran«;ed  relatively  to 
each  other  as  to  leave  an  opening 
between  them,  substantially  us  and 
for  the  purpose  set  forth."  "4. 
The  combination,  in  a  stove,  of  a 
downwardly-contracted  fire-pot  and  a 
dumping-grate,  the  two  being  ar- 
ranged relatively  to  each  other  so  as 


INDEX 


601 


toleaye  an  opening  between  them, 
flubfltantially  as  and  for  the  purpose 
set  forth,"  do  not  claim  pstentable 
inventions,  there  being  no  inyention 
in  combining  an  old  downwardly-con- 
tracted fire-pot  with  an  old  anti- 
clinker  opening  and  dnmping-grate. 
Ferry  v.  Co-operative  Foundry  Co,, 

606 

126.  Claim  1  of  re-iasned  letters  patent 
No.  9,262,  granted  to  John  S.  Perry 
and  Grange  Sard,  Jr.,  trnstecs,  June 
16th,  1880,  for  an  "improyement  in 
stoves,"  the  original  patent,  Ko. 
89,804,  having  been  granted  to  Cal- 
vin Fniton,  as  inventor,  April  27th, 
1869,  and  having  been  re-issaed  as 
No.  6,907,  June  9th,  1874.  pamely, 
**  1.  A  stove  grate  so  constructed 
and  arranged  relatively  to  the  fire- 
chamber  or  fuel-receptacle  as  to  leave 
between  the  two  and  around  the 
edee  of  the  grate  a  free  open  space, 
and  to  permit  of  the  removal  of 
clinkers  and  other  refuse  through 
such  space,  by  use  of  the  ordinary 
poker  or  slicer,  substantially  as  de- 
scribed," does  n»t  claim  a  patentable 
invention,  all  that  was  done  being  to 
substitute  an  existing  flat  grate  for  a 
dished  grate,  in  an  existing:  arrange- 
ment of  a  dished  grate  and  a  fire-pot 
with  an  anti-dinker  opening  between 
them.  id. 

(89.)  Seark—Whip-Moeket. 

127.  The  second  claim  of  re-issued 
letters  patent  No.  9  297,  granted  to 
Anson  Searls,  July  18th,  1880,  for 
an  improvement  in  whip-sockets,  the 
original  patent,  No.  160,196,  having 
been  granted  to  him  April  28th, 
1874,  is  void,  under  the  cases  of  Mil- 
ler y.  Brau  Co,,  {104  U,  &,  860,)  and 
JafMB  V.  Campbell,  {Id,,  366,)  because 
the  claim  of  the  original  was  limited 
to  a  bell-shaped  top  and  the  claim  of 
the  re-issue  is  not  so  limited.  SearU 
V.  JBouton,  628 

128.  The  question  of  delay  in  the  re- 
issue held  to  be  open  for  considera- 
tion under  the  answer.  id. 

(40.)  Bramard — Machine  for  wathing 
shavinffM, 

129.  Claim  4  of  re-issued  letters  patent 


No.  8,099,  granted  to  Edwin  D. 
Brainard,  as  assignee  of  Frederick 
Hinckel,  February  2dth,  1878.  for 
an  improved  machine  for  washing 
shavings  in  breweries,  the  originfa 
patent.  No.  86,628,  having  been 
granted  January  6th,  1869,  namely, 
"A  vessel  capable  of  rotation  on  its 
axis,  in  combination  with  a  pe^fo^• 
ated  pipe  for  producing  jet«  of  water 
within  such  vessel,  substantially  as 
described,"  is  substantially  identical 
with  claim  1  of  the  original,  name- 
ly, '*A  hollow  perforated  shaft,  in 
combination  with  the  cylinder  and 
the  frame  arrfmged  and  operating 
substantially  in  the  manner  and  for 
the  purpose  described,"  and  is  vaUd^ 
although,  in  the  original,  the  cylin- 
der \b  described  as  suspended  nori- 
zontally  on  the  shaft,  and  as  rotating- 
by  the  revolution  of  the  shaft,  while 
in  the  re-issue  it  is  not  stated  to  be 
suspended  horizontally,  but  to  be  so 
constructed  as  to  admit  of  a  rotating 
or  reciprocating  action.  Brainardy. 
Cramme,  180 

130.  The  re-issue  containing  claims  for 
the  process  worked  out  by  the  ap- 
paratus, which  claims  were  not  in 
the  original,  the  plaintiff  was  allowed 
to  recover  on  claim  4  of  the  re-issue^ 
without  costs,  on  filing  a  disclaimer 
as  to  thQ  claim  for  the  process,     id. 


(41.)    Gardner,   Gardner  and  Gardner 
— Chair-teat. 

181.  Claim  2  of  re-issued  letters  patent 
No.  9,094,  granted,  February  24th,. 
1880,  to  Oliver  L.  Gardner,  William 
Gardner,  and  Jane  E.  Gardner,  as- 
signees of  George  Gardner,  for  an 
improvement  in  chair-seata,  namely,. 
"  A  chair-?eat  made  of  laminie  of 
wood  glued  together,  with  the  gr»ins 
in  one  layer  crossing  those  of  the 
next,  concave  on  the  upper  surface, 
convex  on  the  lower  surface,  and  per- 
forated, as  a  new  article  of  manufac- 
ture, substantially  as  set  forth."  (the 
original  patent.  No.  127,046,  having 
been  granted  to  George  Gardner, 
May  21st,  1872,  and  re-issued  as  No. 
7,208,  July  4th,  1876,)  does  not  claim 
any  patentable  invention,  the  form 
of  the  Seat  being  old,  the  material 
being  old,  and  the  method  of  impart- 


602 


INDEX. 


ioffthe  form  to  the  material  being 
old.     Gardner  y.  Htra,  688 


PLEADING. 

1.  The  defendant  in  a  suit  in  equity  for 
the  infringement  of  letters  patent, 
without  answering  the  bill,  filed  a 
plea  merely  denying  infringement 
The  plaintiff  moyed  that  the  plea  be 
stricken  from  the  files  as  improper 
or  else  be  ordered  to  stand  as  an  an- 
swer. In  answer  to  the  motion,  the 
defendant  showed,  by  afiidayit,  that 
he  had  other  defences  which  he 
wished  to  raise  by  answer,  especial- 
ly prior  patents  anticipating  the 
plaintiff's  patent,  and,  also,  limiting 
its  scope  80  as  to  render  infringe- 
ment impossible,  and  that  to  take 
<eyidence  in  regard  thereto  would  be 
ezpensiye  to  both  parties:  HM, 
that  the  plea  must  be  stricken  from 
the  files,  with  leaye  to  the  defendant 
to  answer.     Sharp  y.  ReUtner,      10 

2.  A  defendant  in  a  suit  in  equity  for 
the  infringement  of  letters  patent 
cannot  demur  to  the  whole  bill  and 
also  answer  the  whole  bill,  especial- 
ly where  the  answer  sets  up  every- 
thing that  is  in  the  demurrer,  and  he 
will,  on  motion,  be  compelled  to  elect 
between  his  demurrer  and  his  an- 
swer.    Adam»  v.  Howard,  88 

S.  A  plea  to  a  bill  in  equity,  that  there 
are  diyers  and  sundry  persons  whose 
names  are  known  to  and  ascertaina- 
ble by  the  plidntiffis  and  not  by  the 
•defendant,  not  setting  forth  any 
names,  and  not  accompanied  by  an 
answer,  but  accompanied  by  a  de- 
murrer for  want  of  parties,  is  not  a 
good  plea.  DwigM  v.  Central  Ver- 
mont R.  R  Co.,  200 

4.  Stockholders  in  a  railroad  company 
filed  a  bill  against  the  directors  of 
that  company,  alleging  a  refusal  of 
the  directors  to  take  legal  measures 
to  protect  their  rights,  and  against 
the  party  in  possession  of  the  road 
of  that  company,  and  the  lessee  of  it, 
and  i-ersons  claiming  liens  on  it,  to 
recoyer  possession  of  the  road  for 
■said  company.  To  this  bill  a  plea 
was  filed  alleging  that  the  company 
had  brought  a  like  suit  in  a  Court  of 


the  State  and  had  discontinued  it, 
through  its  directors,  by  preconcert 
with  the  plaintiffs,  that  this  suit 
might  be  brought  to  evade  the  prop- 
er jurisdiction  of  the  State  Court, 
and  denying  any  breach  of  trust  by 
the  directors:  Hdd,  that  the  {^ea 
was  bad.  id, 

6.  Another  plea  wae  filed  to  the  bill, 
alleging  that  the  plaintiffs  did  not, 
before  bringing  the  bill,  in  good 
faith  request  the  directors  to  take 
legal  measures  to  protect  their 
rights,  but  by  arrangement  between 
the  plaintiffs  and  &e  directors  a 
simulated  request  and  refusal  were 
made,  and  this  suit  was  brought  by 
the  company  in  the  name  of  the 
plaintififs,  and  denying  that  there 
liad  been  any  such  refusal  by  the 
directors  as  amounted  to  a  breach 
of  trust:  Held,  that  the  plea  was 
bad.  id, 

6.  Another  plea  was  filed  to  the  bill, 
alleging  that  security  holders  of  the 
same  class  as  those  made  defendants 
had  brought  proceedings  in  behalf 
of  themselves  and  all  o&ers  like  se- 
curity holders,  against  the  company, 
in  a  Court  of  the  State,  to  enforce 
their  security  on  the  road,  in  which 
a  decision  favorable  to  the  validity 
of  their  lien  had  been  made,  and 
which  were  pending,  and  setting 
forth  the  proceedings :  Held,  that  the 
plea  was  oad.  id, 

7.  Another  plea  was  filed  to  the  bill, 
by  the  party  in  possession  of  the 
road,  alleging  that  it  was  in  posses- 
sion as  a  receiver  of  a  Court  of  the 
State  and  setting  forth  the  proceed- 
ings on  which  its  possession  took 
place :  Held,  that  the  plea  must  be 
overruled,  and  the  case  proceed  to 
proofs.  id, 

8.  In  this  caae  a  demurrer  to  a  bill  in 
equity  was  sustained  because  the  bill 
did  not  show  definitely  and  distinct- 
ly a  right  in  the  plaintifiis  to  equita- 
ble relief  against  the  defendants. 
Dwiffht  V.  Smith,  210 

9.  J.  and  others,  citizens  of  New  York, 
and  executors  in  that  State  of  O., 
late  a  citizen  of  New  York,  filed  thia 
bill  to  enforce  Hens  on  rolling  stock. 


INDEX. 


603 


and  earnings  of  rolting  stock,  of  two 
railroads,  pledged  by  some  of  the 
defendants  while  in  possession  of 
those  roads,  and  a  corporation,  their 
successors  in  possession,  by  consent 
of  parties  and  order  of  a  Conrt  of 
the  State  of  Vermont  thereupon,  for 
the  secority  of  several  series  of  equip- 
ment loans,  in  which  the  plainti£», 
as  executors,  hiyested.  Some  of  the 
defendants  demurred  on  the  ground 
that  owners  of  the  different  series  of 
the  bonds  had  no  common  interest 
in  the  securities;  that  the  bonds 
were  not  referred  to  as  a  part  of  the 
bill,  Dor  made  a  part  of,  nor  attached 
to,  the  bill ;  that  the  doings  of  the 
managers  in  possession  prior  to  the 
possession  of  the  corporation  could 
not  properly  be  joined  with  its  do- 
ings ;  and  that,  on  the  face  of  the  bill, 
it  appeared  that  the  Court  had  not 
jurisdiction.  The  corporation  plead- 
ed the  proceedings  of  the  State 
Court  in  bar  of  jurisdiction,  part  of 
which  was  a  provision,  in  a  decree 
in  that  Court,  that  that  Court  might 
be  applied  to  for  the  realization  of 
the  securiUes  held  by  the  plaintifGs : 
Belli,  that  the  demurrer  and  the  plea 
must  be  overruled.  Oritwold  v.  Oen- 
tral  Vet-numt  R,  R  Co.,  212 

10.  The  plaintiffs,  although  executors 
in  New  York,  could  sue  in  Vermont, 
their  rights  never  haviog  accrued  to 
their  testator.  id. 

11.  The  said  provision  for  relief  in 
said  decree  of  the  State  Court  did 
not  exclude  all  other  remedies,      id. 

12.  The  fact  that  property  is  being  ad- 
ministered upon  in  Stete  proceed- 
ings does  not  prevent  citizens  of  oth- 
er Stetes  from  proceeding  in  the  Fed- 
eral Courts  to  establish  their  claims 
and  obtain  relief  id, 

18.  A  creditor's  bill  on  a  money  decree 
alleged  that  the  defendant  had  or 
had  had  property,  without  specify- 
ing any  in  particular.  It  prayed  a 
discovery  of  property.  It  contained 
interrogatories  making  more  specific 
inquiries,  and  required  the  defend- 
ants to  answer  such  interrogatories 
as  by  the  note  thereunder  written 
they  should  be  required  to  answer, 
but  there  was  no  note  thereunder 


written.  The  answer  denied  gener- 
ally that  the  defendant  had  any  prop- 
erty, or  that  any  was  held  in  trust  for 
him,  or  that  he  had  conveyed  away 
any  since  the  decree,  or  before,  in 
view  of  it,  to  defeat  it  On  excep- 
tions for  insufficiency,  the  answer 
was  held  sufficient.  Biterk  v.  Im- 
haeuter,  274 

See  Equity,  1  to  8. 

EVIDBNOK,  1. 

JuBisnionoN,  7. 
Patent,  128. 
Praotiob,  9,  10,  12. 

PRACTICE. 

1.  The  plaintiffs  in  these  suits,  having 
been  sued  at  law  by  the  defendonte 
in  these  suite,  and  having  equitable 
defences  to  the  suite  at  law,  which 
could  not  be  availed  of  therein,  but 
which,  if  esteblished,  would  warrant 
a  perpetoal  stey  of  the  suite  at  law, 
moved,  in  these  suite,  for  an  order 
that  the  service  of  subpoenas  to  ap- 
pear and  answer  therein  upon  the 
attorneys  for  the  plaintifiis  in  the 
suite  at  law  be  deemed  sufficient  and 
proper  service  upon  said  plaintiffs 
as  defendants  in  these  suits,  they 
being  either  foreigners  or  citizens  of 
California,  and  residente  of  Califor- 
nia: Held,  that  the  motion  must  be 
granted,  and  that  a  copy  of  the  sub- 
poena ought  also  to  be  served  on  the 
parties  personally,  if  they  could  be 
found,  wherever  they  might  be. 
Cortes  Co.  v.  ITuinnhmuer,  59 

2.  Such  a  suit  is  not  an  original  suit 
and  the  subpoena  in  it  is  not  original 

Srocess,  within  g  1  of  the  Act  of 
[arch  8d,  1875,  (18  U.  S.  Stat,  at 
Large^  470,)  and  Rule  18,  in  Equity, 
does  not  apply  to  such  a  subpcena. 

id. 

8.  The  defendant  held  to  have  been 
protected,  in  this  case,  while  attend- 
ing the  examination  of  witnesses  for 
the  plaintiff,  in  New  York,  in  an 
equity  suit  pending  in  Massachusette, 
brought  against  him  by  the  plaintiff, 
from  the  service  on  him  in  New  York 
of  a  subpoena  to  appear  and  answer 
in  this  suit.    FUmjkon  v.  Winslou,  82 

4.  P.,  in  a  suit  in  equity  against  him 


604 


INDEX. 


for  the  infringement  of  a  patent, 
moved  to  set  aside  the  service  of  the 
subpoena  on  him,  on  the  |2^onnd  that 
the  service  was  made  upon  him  while 
he  was  attending  the  examination  of 
witnesses  in  New  York  on  an  inter- 
ference depending  between  him  and 
the  plaintiff  before  the  United  States' 
Patent  Office.  His  moving  affidavits 
did  not  show  where  he  resided  or 
carried  on  business.  The  motion 
was  denied.  P.  afterwards  renewed 
the  motion  on  papers  showing  that 
at  the  time  of  the  service  he  was  a 
citizen  and  residftnt  of  Massachu- 
setts :  Held,  that  the  defendant  had 
waived  the  objection  to  the  service, 
as  made  while  he  was  protected  by 
a  privilege,  by  not  showing,  on  the 
first  motion,  where  he  resided.  Afat- 
thew$  V.  Pufei',  238 

5.  A  motion  for  a  trial  before  a  jury, 
in  an  equity  suit,  on  feigned  issues, 
of  certain  questions  of  fact  raised  bv 
the  pleadings,  was  denied,  no  testi- 
mony having  as  yet  been  taken,  and 
it  appearing  that  the  testimony 
would  be,  for  tlie  most  part,  in  writ- 
ing.    Htrdiman  v.  Leioit,  266 

6.  In  this  case,  after  a  verdict  against 
two  of  the  defendants  for  $181,000, 
they  applied  for  a  stay  of  proceed- 
ings during  the  time  allowed  for 
making  a  case,  and  till  further  order. 
The  applicants  being  in  active  busi- 
ness, the  Court  granted  the  applica^ 
tion  on  their  giving  a  bond,  with 
two  satisfactory  isareties,  in  the  sum 
of  $200,000,  conditioned  for  the  pay- 
ment to  the  plaintiff  of  any  judgment 
which  might  be  rendered  against 
them  in  this  suit,  or  for  the  satisfac- 
tion of  the  juc^gment.  FUher  v. 
Meyer,  273 

7.  An  interlocutory  decree  for  the 
plaintiff  having  oeen  made  in  tins 
suit,  (18  Blate^,  (7.  C.  R„  237,)  after 
a  final  hearing  on  proofs,  application 
was  now  made,  on  affidavits,  to  open 
the  decree  and  admit  a  new  defence 
of  public  use  of  the  patented  article, 
purchased  from  the  inventor,for  more 
than  two  years  prior  to  the  applica- 
tion for  the  patent  But  the  witness 
to  the  use  had  made  confficting  affi- 
davits, and  the  identical  article  used 
was  not  produced,  and  the  inventor 


testified  that  the  article  purchased 
from  him  was  not  the  completed  in- 
vention. For  these  reasons  the  ap- 
plication was  denied.  Munmm,  v. 
Th9  Mayor,  868 

8.  A  motion  in  this  case  by  the  defend- 
ants to  have  the  decree  opened  to 
put  in  evidence  additional  matters  of 
defence,  was  denied.  Cobum  v. 
Schroeder,  892 

9.  Before  this  action  was  removed  into 
this  Court  the  State  Court  had  made 
an  order  restricting  the  plaintiff  from 
setting  up  any  cause  of  action  in  ad- 
dition to  one  for  breach  of  contract^ 
on  which  an  attachment  had  been 
granted.  The  plaintiff  elected  to 
consent  to  that  order,  as  a  condition 
of  retaining  the  attachment,  and  it 
was  in  force  when  the  action  was 
removed.  Nothing  having  occurred 
to  change  the  rights  or  position  of 
the  parties,  a  motion  by  the  plaintiff 
for  leave  to  amend  his  complaint 
was  denied  by  this  Court.  Phefpt  v. 
Canada  Central  R.  R,  Co,,  460 

10.  After  the  time  for  filing  a  plea  in 
abatement  in  the  State  Court  had  ex- 
pired, the  defendant  removed  the  suit 
into  this  Court,  and  then  filed  such 
plea  in  this  Court:  Held,  that  the 
plea  must  be  overruled.  Wertkein  v. 
ContinmUal  Railway  d:  Truat  Co.,  60t^ 

11.  In  an  action  for  a  conspiracy,  the 
jury  rendered  a  verdict  for  a  large 
sum  against  two  of  the  defendants, 
and  one  for  $100  against  N.  N.  moved 
to  set  as^.de  the  verdict,  on  the  ground 
that  its  smallnesB  showed  that  the 
jury  did  not  find  the  issues  against 
him :  Held,  that  the  motion  could  not 
be  granted.    FUktr  v.  Meyer,      612 

12.  The  question  whether  a  corpora- 
tion of  another  State  has  been  prop 
erly  served  with  process  in  a  suit  in 
a  Circuit  Court  cannot  be  raised  by 
a  demnrrer  to  the  complaint.  Roi- 
inMtm  V.  National  Stock  Yard  Co,,  613 

See  Attornst,  1. 

CanuiTAL  Law,  2,  8, 10,  II,  18. 
Equity,  4,  6. 
EvmBNOB,  2  to  7. 
Imterpleadxe. 
JuBisDionoN,  7. 


INDEX. 


605 


KaoLionroi,  6. 

Nxw  Trial. 

Patsmt,  8  to  6,  10,  110,  128. 

PUADIIfO,  1,  2,  18. 

RmoTAL  OF  Suit,  1,  2,  4  to  7, 
10. 

SEQUXSnUTIOV. 


PROCESS. 


See  Praotiox,  1  to  4. 


PROTEST. 
See  Duties,  8. 


B 

RAILROAD. 

1.  The  history  giyen  of  the  leases  of 
May  20tb,  1879,  made  by  the  Metro- 
poUtao  Company  and  the  New  York 
Company  to  the  Manhattan  Com- 
pany, and  of  the  "  tripartite  aCTee- 
meDt "  of  that  date  between  the  %ree 
companies,  and  of  the  litigation  re- 
specting said  leases  and  said  agree- 
ment, and  of  the  ogreements  of  Octo- 
ber 22d,  1881,  between  the  three 
companies,  modiiring  the  said  leases 
and  the  said  "  tripartite  agreement." 
yiaffg  y.  Manhattan  RaUteay  Oo.,  142 

%  The  agreements  of  October  22d,  1 881 , 
do  not  impair  any  Tested  rights  of 
the  stoclcholders  of  the  Metropolitan 
Company.  id. 

3.  There  was  no  contract  between  the 
Manhattan  Company  and  the  indi* 
Tidnal  stockholders  of  the  Metropol- 
itan Company,  or  between  the  latter 
company  and  its  stockholders,  that 
they  should  have  a  dividend  of  10 per 
cent,  per  annum  on  tibeir  stocks       id 

4.  The  directOTB  of  a  corporation  have 
a  general  power  to  make  and  modify 
itS'  contracts,  and  its  stockholders 
cannot  cpntrol  that  power,  nor  was  it 
necessary  to  the  validity  of  the  agree- 
ments of  October  22d,  1881,  that  they 
should  have  been  approved  by  any 
one  or  more  stockholders.  uL 

JS.  The  Act  of  April  28d,  1889,  (Lawtt 


of  New  York,  1889,  cKt^.  218.  p.  196,) 
authorized  t^e  making  of  ti.e  said 
leases  and  agreements.  id. 

6.  The  new  agreements  were  made  in 
good  faith  and  with  a  fair  exercise 
of  the  judgment  and  discretion  of  the 
directors  of  the  Metropolitan  Com- 
pany, id. 

See  NKGLiOkMcv,  1  to  8. 


RECEIVER. 

1.  A  receiver  of  "  all  the  estate,  proj)- 
erty  and  equitable  interests  "  of  an  in- 
solvent banking  corporation,  created 
by  the  State  of  Illinois,  cannot  en- 
force against  a  stockholder  in  the 
corporation  the  liability  imposed  by 
the  statute  of  Illinois  on  each  stock- 
holder for  double  the  amount  of  his 
stock,  such  liability  being  one  in  favor 
of  creditors  of  the  bank  and  not  in 
favor  of  the  corporation.  Jacobson 
V.  Allen,  526 

REMOVAL  OF  SUIT. 

1.  This  case  was  remanded  to  the  State 
Court  because  the  petition  for  re- 
moval was  not  filed  before  or  at  the 
term  at  which  it  could  be  first  tried. 
Tradertf  Bank  v.  TaUmadge,  89 

2.  This  Court  is  to  pass  on  such  ques- 
tion even  though  the  State  Court 
passed  on  it  id, 

3.  S.,  a  citizen  of  New  York,  brought  a 
suit  in  the  State  Court  against  R.  and 
C,  citizens  of  Massachusetts,  and  J. 
and  M.,  citizens  of  New  York.  R. 
and  C.  removed  the  suit  into  this 
Court  There  being  a  separate  con- 
troversy between  S.,  on  one  side,  and 
R.  and  C,  on  the  other,  to  which  J. 
and  M.  were  not  necessary  parties, 
and  which  could  be  fully  determined 
as  between  the  parties  to  it  without 
the  presence  of  J.  or  M. :  Hddy  that 
the  suit  was  removable  under  §  2  of 
the  Act  of  March  8d,  1876,  (18  27.  8, 
Stat,  at  Large,  470.)  Stevens  v.  JHeh- 
ardson,  63 

4.  No  prior  notice  to  the  adverse  party 
of  the  presentation  of  a  petition  for 
removal  is  necessary.  id. 


606 


INDEX. 


5.  A  bond  on  removal  is  not  required 
by  §  8  of  said  Act  to  be  executed  by 
the  petitioner  for  retnoyal,  if  it  be 
executed  by  sufficient  surety.        id. 

6.  A  party  does  not,  by  voluntarily  ap- 
pearing in  a  suit  in  a  State  Court, 
waive  nis  right  of  removal.  id, 

7.  A  motion  that  the  plaintiff  replead 
in  this  Court  denied.  id 

8.  This  suit  was  brought  in  a  State 
Court  of  New  York,  against  the  re- 
ceiver of  a  New  Jersey  railroad  cor- 

S oration,  to  recover  damages  for  the 
eath  of  the  intestate  of  the  plaint- 
iffs, caused  in  New  Jersey,  by  a  train 
on  the  railroad  of  the  corporation, 
while  it  was  being  operated  by  the 
receiver.  The  complaint  alleged  a 
liability  under  a  New  York  statute 
and  permission  given  by  the  snid 
State  Court  of  New  York  to  sue  the 
receiver.  The  answer  alleged  the  ap- 
pointment of  the  defendant  as  receiv- 
er by  a  Court  of  New  Jersey,  and  his 
subsequent  appointment  by  the  said 
State  Court  of  New  York  as  receiver 
of  the  property  of  the  corporation 
situated  in  New  York,  and  tliat  he 
operated  the  road  as  a  Kew  Jersey 
receiver.  Afterwards,  the  defendant, 
as  a  citizen  of  New  Jersey,  the  plaint- 
iffs beiuff  citizens  of  New  York,  re- 
moved the  suit  into  this  Court,  the 
State  Court  making  an  order  of  re- 
moval. The  case  was  then  tried  by 
a  jury  in  this  Court,  the  plainti& 
being  first  allowed  to  amend  their 
complaint  by  setting  up,  in  addition, 
as  a  cause  of  action,  a  statute  of  New 
Jersey,  and  the  defendant  to  amend 
his  answer  by  setting  up  the  order 
of  the  New  York  Court  granting 
leave  to  sue  and  alleging  that  there 
was  no  other  leave  to  sue.  The 
Court  held  that  the  complaint  must 
be  dismissed  because  it  set  forth  no 
cause  of  action  against  the  defendant 
as  a  New  York  receiver,  and  because 
tliere  was  no  leave  to  sue  him  as  a 
New  Jersey  receiver.  No  order  or 
judgment  to  that  effect  having  been 
entered,  the  plaintiffs  moved  to  re- 
mand the  cause  to  the  State  Court : 
JETtftJ,  that  the  removal  was  proper, 
when  it  was  made,  and  that  adding 
in  the  complaint  the  allegation  us  to 
the  New  Jersey  statute  did  not  affect 


the  jurisdiction  of  this  Court.   Dovter 
V.  Lahrop,  897 

9.  In  a  suit  in  a  State  Court  in  New 
York,  issue  was  joined  by  serving  an 
answer  which  did  not  require  a  rep- 
lication. Thereupon  the  plaintiff  no- 
ticed the  cause  for  trial,  and  placed 
it  on  the  calendar  in  due  season  for  a 
term.  After  the  commencement  of 
the  term,  but  within  20  days  from 
the  service  of  the  original  answer,  the 
defendant  served  an  amended  answer^ 
having  the  right  to  do  so  aa  of  course^ 
subject  to  its  being  stricken  out  if 
served  for  delay  and  for  causing  the 
loss  of  a  term.  The  amended  plead- 
ing, if  not  stricken  out,  superseded 
the  original  answer  and  nullified  the 
notice  of  trial  The  plaintiff,  if  the 
cause  had  been  reached  before  the 
amended  answer  was  served,  had  a 
right  to  try  the  cause,  and  thereafter 
the  amendment  could  not  be  made* 
After  the  term  the  defendant  filed  a 
petition  for  the  removal  of  the  cause 
into  this  Court :  Held,  that  the  peti- 
tion was  not  filed  before  or  at  tho 
term  at  which  the  cause  could  be  first 
tried,  within  the  Act  of  March  Sd, 
1876,  (18  U,  8,  Stat,  at  Large,  471.) 
Crcaner  v.  Mack,  479 

10.  A  plaintiff,  by  delayiiu^  for  over  a 
year  after  the  removal  of  a  cause,  be- 
fore moving  to  remand  it,  loses  bis 
right  to  insist  that  the  petition  for 
removal  was  not  filed  in  time.  Mil- 
ler V.  Kent,  508 

8ee  JuBiSDionoN,  7^ 
Pbagtiob,  9,  10. 


s 


SALVAGE. 

1.  In  this  case  a  service  rendered  by 
one  steamer  to  another  steamer,  in 
towing  her  into  port,  after  she  had 
broken  her  steam  machinery  at  sea, 
was  held  to  be  a  salvage  service.  The 
Leipne,  288 

2.  Notwithstanding  a  written  agree- 
ment made  nt  sea  between  the  mas- 
ters of  the  two  steamers,  that  the  dis- 
abled steamer  .should  pay  £8,000  for 
the  service,  but  which  agreement  con- 


INDEX. 


607 


tamed  the  words  "but  leare  it  to 
the  Ck>nrt  to  prove  the  said  agree- 
ment," this  Court  awarded  as  a  salv- 
age compensation,  on  a  qtiarUum 
meruit,  $5,600,  giving  to  the  owners 
of  the  towing  steamer  9^,126,  to  her 
master  |I60,  and  dividing  the  re- 
maining $1,225  among  her  master, 
officers,  and  crew  in  proportion  to 
their  respective  wa^es,  although  the 
owners  of  the  towing  steamer  had 
sned  on  the  agreement  alone,  and  not 
for  salvage  for  owners,  master  and 
crew.  id, 

8.  The  District  Court  had  awarded 
$8,750,  of  which  the  owners  of  the 
towing  steamer  were  to  have  $2,250, 
her  master  $160,  and  her  master, 
officers  and  crew  $1,860,  and,  as  both 
parties  appealed  to  this  Court,  this 
Court  awarded  to  the  libellants  costs 
in  the  District  Court,  because  the 
claimant  had  made  no  tender,  and 
awarded  no  costs  in  this  Court  to 
either  party.  id. 

4.  An  average  bond,  after  reciting  that 
a  vessel,  with  a  cargo,  had  been 
stranded,  and  that  the  Coast  Wreck- 
ing Company's  vessels  and  men  were 
sent  to  her,  and  her  cargo  was  being 
discharged,  authorized  the  vessel's 
owners  to  settle  the  salvage  for  any 
sum  agreed  upon  between  the  salvors 
and  underwriters,  or  to  be  awarded 
by  a  Court,  and  stated  that  losses 
and  expenses  had  been  and  miffbt  be 
incurreid,  which,  according  to  the  us- 
age of  the  port  of  New  Yorlc,  might 
constitute  a  general  average,  to  be 
apportioned  on  veesel,  freight  and 
carffo,  and  other  charges  Incurred 
might  be  due  from  specific  interests, 
and  thereby  the  signers  agreed  with 
J.  <b  H:,  average  adjusters, "  that  the 
loss  and  damage  aforesaid,  and  other 
incidental  expenses  thereon,"  should 
be  paid  by  them  ratably,  according 
to  their  interests  in  vessel,  freight 
and  cargo,  if  stated  and  apportioned 
by  J.  S  H.,  in  accordance  with  the 
established  usage  and  laws  of  the 
State  in  similar  cases.  A  libel  in 
Admiralty,  founded  on  the  bond, 
was  filed  Dv  the  salvors  and  J.  <&  H., 
against  an  inaorer  of  cargo,  a  signer 
of  the  bond.  The  libel,  in  reciting 
the  bond,  recited  it  as  one  applying 
to  an  apportionment  of  only  general 


average  expenses.  But,  the  bond 
was  in  evidence,  and  in  the  answer 
the  respondent  submitted  to  the* 
Court  the  question  of  the  proper 
amount  of  salvage.  There  was  na 
exception  to  the  joining  of  the  two 
claims  in  one  libel.  The  respondent 
objected  that  the  Admiralty  had  no- 
jurisdiction,  because  the  suit  was  one 
for  general  average  charges;  that 
there  were  no  general  average  ex- 
penses, because  the  voyage  of  the 
vessel  was  abandoned ;  and  that  the 
claim  of  J.  &  H.  was  not  one  of  Ad- 
miralty iurisdiction :  Held, 

(1.)  Tne  bond  covered  the  servicer 
and  aisbursements  of  J.  A  H. ; 

(2.)  It  covered  ereneral  average 
losses  and  expenses  and  other 
charges  in  reiipect  to  salvage  and  res- 
cuing the  cargo,'^and  the  services  and 
expenses  of  J.  <fc  H. ; 

(8.)  The  services  and  expenses 
covered  by  the  bond  were  those 
which,  if  performed  and  incurred  by 
the  owner  of  the  vessel,  would  have 
been  within  his  duty  to  save  the  car- 
go, and  buch  duty  would  have  ex- 
tended to  the  services  and  disburse- 
ments of  J.  <b  H.,  which  would  have 
been  maritime  ; 

(4.)  The  bond  was  an  express  con- 
tract for  a  mariiime  service.  Coatt 
Wrecking  Co.  v.  Phenix  Jm,  Co,,  56 Y 

6.  As  salvage,  60  per  cent,  of  the  value 
of  the  property  saved  was  awarded. 

id. 

6.  The  equipment  and  readiness  of  the 
vessels  of  the  Coast  Wrecking  Com- 
pany to  save  property,  considered,, 
m  fixing  the  amount.  id. 


SEQUESTRATION. 

1.  Rule  XI  of  the  Circuit  Court  for  the 
District  of  Vermont,  providing  that 
"the  creation,  continuance  and  ter- 
mination of  liens  and  rights  created 
by  attachment  of  property,  or  the  ar- 
rest of  a  defendant,  shall  be  governed 
by  the  laws  of  this  State,"  covers 
the  issuing  and  serving  of  a  writ  of 
sequestration  in  a  suit  in  equity  in 
the  Circuit  Court,  after  an  interlocu- 
tory decree  for  the  plaintiff,  in  a  suit 
in  equity  for  the  innringement  of  let- 
ters patent,  fur  an  account  of  profits. 


608 


INDEX. 


under  which  writ  real  estate  of  the 
defendant  in  the  writ  is  attached,  to 
be  held  as  seoarity  for  a  final  recov- 
ery, and  the  Circuit  Court  had  power 
to  make  such  Role,  applying  to  snits 
in  equity.  Steam  /Aone-OtOUr  Co. 
V.  Sear9,  28 

2.  Service  of  such  writ  by  a  return  of 
attachment  on  a  copy  of  it  lodged 
in  the  town  clerk's  omce  where  the 
town  records  are  kept,  without  pos- 
session, is  sufficient  to  create  a  lien 
OD  the  real  estate.  id, 

3.  The  writ  is,  in  effect,  strictly  an  at- 
tachment to  create  a  lien.  id. 


STATUTES  CITED. 

United  Statks. 

1789,  September  24th,  Jurisdiction,  62, 

86 

1789.  September  24th,  Eyidence,     231 

1790,  May  81st,  Copyright,      467,  469 

182 
183 
183 
182 
464 
421 
248 


1799,  March  2d,  Duties, 
1818,  April  20th,  Appraisement, 
1820,  April  18th,  Appraisement, 
1828,  March  1st,  Appraisement, 
1831,  February  8d,  Copyright, 
1836,  July  4th,  Patent, 
1889,  March  8d,  Customs  Duties, 
1839,  March  8d,  Patent,        67,  72,  421 
1 842,  August  8th,  Interest  on  Judg- 
ment, 248 

1845,  February  26th,  Suit  against 

Collector,  248,  269 

1846,  Aus^ust  8th,  Kefund  of  Du- 

ties, 244 

1846,  August  10th,  Refund  of  Du- 
ties, 245 

1848,  June  28th,  Refund  of  Duties,  246 

1849,  March  8d,  Refund  of  Duties,  246 
1863,  February  26th,  Fees,  890 

1867,  March  8d,  Customs  Duties,      246 

1860,  April  11th,  Refund  of  Duties,  246 

1861.  March  2d,  Patent,  875 

1861,  March  2d,  Refund  of  Duties,  246 

1862,  May  1st,  Refund  of  Duties,     246 

1868,  February   18th,   Refund  of 

Duties,  .  246 

1863,  March  8d,  Interest  on  Judg- 

ments, 246 

1868,  March  8d,  Refund  of  Internal 

Rerenue  Duties,  246 

1863,  March  8(1,  Suit  against  Rey- 

enue  Officer.  241,  246 

1864,  June  80th,  Customs  Duties,    246 


1864,  June  80th,  Protest,  268 

1864,  June  80th,  Refund  of  Internal 

Revenue  Duties,  247 

1866,  July  28th,  Refund  of  Duties,  247 
1866,  July  28th,  Suit  against  Offi- 

cer  241 

1870,  July  8th,  Patent,       44,  875, 481. 

489,  457 
1876,  March  3d,  Interest,  240 

1876,  March  8d,  Jurisdiction,  60, 62, 85, 

86,  208 
1876,  March  8d,  Refund  of  Duties,  247 
1876,  March  3d,  Remoyal  of  Cause, 

41,  68,  64,  401,  480,  509 
1876,  March  8d,  Jurisdiction,  448 

1876,  February  16th,  Interest  on 

Judgments,  248 

1877,  February  27th,  Protest,  268 

1878,  June  14th,  Refund  of  Duties,  248 

1879,  March  8d,  Refund  of  Duties,  248, 

249 

1880,  June  16th,  Refund  of  Duties,  249 

1881,  March  8d,  Refund  of  Duties,  250 


.Revised  Statutes  of  the  United 
States. 


629,  Jurisdiction, 

86 

689,  Removal  of  Suit, 

67 

716,  Writs, 

26 

789,  Jurisdiction, 

62,  86,  614 

762,  Habeas  Corpus, 

2 

771,  District  Attorney, 

246 

778,  District  Attorney, 

246 

827,  Dist  rict  Attorney, 

246 

868,  Evidence, 

282 

864,  Evidence, 

282 

866,  Evidence, 

282 

866,  Evidence,               174,  176,  176, 

231,282 

867,  Evidence, 

176,  176 

918,  Practice, 

26 

914,  Practice, 

26,  268,  264 

916,  Practice, 

25 

916,  Practice, 

2R 

966,  Interest,  240,  241,  244,  261,  891 

967,  Judgment,  26,  80 

988,  Fees,  890 

989,  Suit  against  Revenue  Offi- 

cer,      288,  240,  241,  242,  246, 

261,  252 
1010,  Interest  as  Damages,  260 

1024,  Indictment,  140 

1089,  Interest  on  Judgments,        246 

1090,  Interest,  240,  246 

1091,  Interest  on  Judgments,        246 

1092,  Interest  on  Judgments,        246 

1093,  Interest  on  Judgments,        246 
1760,  Evidence,  282 


INDEX. 


609 


2012,  Snperrlsor  of  Election,  18 

2026,  Snperyisor  of  Election,  18 

2516,  Gagtoms  Datiee,  267,  268,  269, 

271,  272 

2927,  Appraisement,      129,  181,  186 

2928,  Appraisement,      129,  182,  186 
2981,  Protest,  246,  267,  268 


8011,  Protest, 
8012i,  Castoms  Duties, 
8220,  Interest, 
8266,  Unlawful  Still, 
8689,  Refnod  of  Duties, 
4288,  Navigation, 
4234,  Navigation, 
4886.  Patent, 
4894,  Patent^ 
4916.  Patent^ 
4920,  Patent, 


268 

246 

240,  247 

187,  188 

247 

88,89 

90 

876,  877,  428 

870,  876 


4922,  Patent^ 
4928,  PHtent, 


42,  44.  79 

20,  69,  876,  877,  892, 

428 
488 
898 
4929,  Patent  for  Design,        418,  414 
4962,  Ck>p7right,    882,  884,  467.  458, 

460,  468,  4^4 
4.958,  Copyright,  882 

4,966,  Oopyri<?ht,  881,  882,  884 

4,957,  Copyright,  888,  384 

4,964.  Copyright,  888 

„  4,971,  Copyright,  462,  468,  469,  464 
I  6,209,  National  Bank,  849 

6.211,  National  Bank,  851 

5.892,  National  Bank,  861,  852 

5,480,  Illegal  nse  of  Mail,      285,  236 
5,596,  Revised  Statates,  136 


Nwr  JsBsiT. 
1 848,  March  8d,  Suit  for  Death,      401 


New  YOBK. 

donstitntion,  of  1846,  Art  5,  sea 

8,  Inspection,  808 

1889,  April  28d,  Railroad,  142,  166 
1847,  December  18th,  chap.  450, 

Suit  for  Death.  401 

1849,  April  7th,  chap.  256,  Snit  for 

Death,  401 

1858,  Juno  25th,  chap.  466,  Foreign 

Insurance  Co.,  408 

1865,  May  11th,  chap.  694,  p.  1408, 

Foreign  Insurance  Co.,     405, 

406 

1866,  April  6th,  Town  Bonds,  280 

1866,  chap.  880,  p.  2,074,  Munid- 

.  pal  Bonds.  808 

1867,  May  16th,  New  York  and 

Vol.  XX.— 89 


Oswego  Midland  R.  R. 
Co.,  286 

1869,  March  81st,  New  York  and 

Oswego   Midland  R.  R. 
Co.,  286 

1870,  March  16th,  chap.  78,  Suit 

for  Death,  401 

1871,  April  6th,  New  York  and 

Oswego    Midland  R.  R. 
Co.  278  280 

1881,  May  28th,  Inspection,     296,'  299 
1881,  May  Slst,  Alien  Passengers, 

296,  298 
1881,  chap.  271,  p.  882,  Assess- 
ment, 841 
Rev.  Stat.,  part  1,  chap.  14,  Ut. 

Passengers,  800 

2  R.  S.,  684,  Fees,  890 

§  820,  Code  of  CMl  Procedure,  258, 

254 


YZBGINIA. 

1866,  February  8d,  chap.  96,  p. 
206,  Foreign  Insurance 
Co.,  406 

1871,  March  25th,  chap.  194,  p. 
284,  Foreign  Insurance 
Co.,  406 


GftVAT  BaiTAiir. 

8  Geo.  II,  ch.  18,  §  1,  Copyright,    458 
17  Geo.  UI,  ch.  57,  Copyright,        458 


SUPERVISOR  OF  ELECTION. 

I .  The  Court  being  required,  by  §  2,012 
of  the  Revised  Statutes,  to  appoint, 
in  each  election  district,  two  super- 
visors of  election  *'  of  difl^erent  polit- 
ical parties,"  and  there  being  a  dis- 
pute as  to  who  should  be  appointed 
from  the  Democratic  party  in  the 
city  of  New  York,  the  Court  selected 
persons  recommended  by  '*  The  New 
York  County  Democracy."  In  re 
Superviton,  18 


T 

TAX. 
1.  The  Act  of  the  L^slature  of  New 


610 


iin)EX. 


York,  {duip,  211,  Law  of  1881,  p, 
882,)  pnrpHDrting  to  validate  certain 
aaseasmeDts  on  Bhareholdere  in  Na- 
tional and  State  banks  in  tlie  city  of 
Albany,  \b  yoid,  because  it  denies  the 
shareholders  a  right  to  be  heard,  and 
makes  a  le(rislatiye  assessment  of  a 
tax  upon  £em  without  apportion- 
ment Ar  equality,  as  betwien  them 
and  the  genera)  class  out  of  which 
they  are  selected,  or  as  between 
themselves.  Albany  CUy  Nat,  Bank 
Y,  Maker,  841 

2.  No  tender  of  any  sum  for  a  tax  is 
necessary  in  the  case  of  a  void  assess- 
ment, id, 

8.  The  shareholders  having  a  right  to 
sue  the  bank  if  it  pnys  the  tax  or 
withholds  their  dividends,  the  bank 
can  sue  to  eiyoin  the  collection  of 
the  tax.  id. 


TOWN  BOND. 
See  Mdnicipil  Bohd. 


TRADE-MARE. 

1.  A  Inbel  on  a  bottle  upheld  as  a 
trade-mark,  in  conDcetioo  with  the 
size,  color,  shape  and  material  of  the 
bottle,  and  held  to  have  been  in- 
fringed.    HveteUer  v.  Adame,       826 

2.  The  general  effect  to  the  eye  of  an 
ordinary  person  acquainted  with  the 
plainti&'  bottle  and  label,  and  never 
having  seen  the  defendants'  label, 
and  not  expecting  to  see  it,  wap,  ou 
Bering  the  defendants',  to  bo  misled 
into  thinking  it  was  what  he  bad 
known  as  the  plaintiffs'.  id, 

8.  The  differences  which  he  would  see 
on  having  his  attention  called  to 
them  were  not  of  such  a  ciiaracter  as 
to  overcome  the  resemblances  to  the 
eye  of  a  person  expecting  to  see  only 
the  plaintiffs'  bottle  and  label  and 
having  no  knowledge  of  another,  id, 

4.  Prior  to  1884,  S.  W,  CoUins,  D.  C. 


Collins  and  another,  copartners 
Collins  A  Co.,  made  edge  tools,  using 
as  a  trade-mark  "  Collins  <&  Co."  Iil 
1884  they  assigned  to  the  Collins 
Manufactarinff  Company,  a  corpora- 
tion, the  right  to  such  trade-mark.. 
In  1848  the  right  to  make  all  articles 
of  metal  was  conferred  on  the  cor> 
poration  and  its  name  was  changed 
to  the  Collins  Company,  the  plaintiff. 
It  always  stamped  "  CoUins  A  Co,T 
on  its  productions.  In  1856  the  firm 
of  Oliver  Ames  A  Sons  benn  to  pat 
the  stamp  and  label  **Co1liDS  <&  Co.'^ 
on  shovels  made  by  it,  and  sent  to 
Australia.  The  plaintiff  had  not  up 
to  that  time  made  shovels,  but  it  had 
a  market  in  Australia  for  the  articlea 
it  made  and  stamped  '*  Collins  A  Co.*^ 
The  object  of  Oliver  Ames  A  Sons  in. 
potting  the  stamp  ** Collins  4  Co." 
on  the  shovels  was  to  avail  them- 
selves of  the  credit  and  reputation 
and  market  which  the  plaintiff  had 
established  for  itself,  for  articles 
sUmped'*  Collins  4k  Co."  The  plaints 
iff,  at  the  time  of  bring^ing  this  soit^ 
had  not  sent  or  sold  any  shovels  to 
Australia.  The  defendant,  in  suocea- 
sion  to  Oliver  Ames  4  Sons,  con- 
tinued to  do  what  the  latter  so  began 
to  do  in  1866 :  Hdd,  that  the  acts  of 
Oliver  Ames  <fc  Sons  and  of  the  de- 
fendant were  always  unlawful.  Col- 
line  d:  Co,  V.  Amee  db  Sone,  54& 

5.  The  plaintiff  having  had,  from  1848,. 
the  right  to  make  all  articles  of  metal, 
and  having  gone  on,  from  that  time,, 
both  before  and  after  1856,  extend- 
ing its  manufdcture  beyond  edse 
tools  into  digging  tools,  such  as  picks 
and  hoes,  and  having  always  put  the 
mark  "Collins  <b  Co.*'  on  its  best 
quality  of  articles,  the  lAct  that  it  did 
not  b^ore  1866  make  a  digging  tool 
such  as  the  shovel  on  which,  in  1856,. 
Ames  <fc  Sons  put  the  mark  "  CoUina 
d^  Co."  does  nut  warrant  the  oonclu* 
sion  that  that  mark  was  not,  in  1856,. 
the  mark  of  the  plaintiff's  trade  in 
respect  to  such  shovels.  idL 


TRIAL. 

See  New  Trial. 
Peactiob,  11. 


IKDBX. 


611 


VERDICT. 

B$€  PftAOTZGB,  11. 

VESSEL. 

Bu  COUJIZOH. 


w 


WITNESS. 


Bee  Etidvnob,  1. 
PftAonoB,  8. 


3  bios  01i3  105  3SS 


3  bios  Oka  *105  322