B. B. HILL MFG. CO. v. SAWYER-BOSS MFG. CO. et al. (two cases). (Circuit Court, E. D. New York. November 15, 1901.) TRADE-MARKS-INFRINGEMENT-NAME USED TO IDENTIFY ARTICLE WITH PATENT. Where the manufacturer of a patented article, in connection with the marking thereon, showing the date of the patent, gave the name of the patentee, and also an arbitrary name to the article, but without giv ing its own name as manufacturer, so that such arbitrary name merely identified the article with the patent, such marking did not constitute a trade-mark, but, on the expiration of the patent, another manufacturer has the right, not only to make and sell the article in the same form, but also to mark it with the same or a similar name, where, in connection with such name, it places thereon its own name as manufacturer, marked with sufficient prominence to clearly distinguish the article from those made by the original manufacturer.

William E. Warland, for complainant.
H. Albertus West, for defendants.

THOMAS, District Judge. In the above actions the complainant seeks to restrain the defendants from infringing designated trademarks, and from unfair competition in the sale of certain dating machines. The complainant is the assignee of letters patent for certain dating machines, pursuant to which letters it has, since 1884, through itself and others, caused dating stamps to be sold. Upon the circular head of one style of said stamps was cut,

And upon the circular head of another style of said stamps was cut,

The defendants, at the times stated in the bill, but subsequent to the expiration of said letters, have been manufacturing and selling a dating stamp in exact similitude to that of the complainant, save that upon the head of one type of such stamps appeared the marks,

And upon the head of the other type of such stamps appeared the marks,

Although there is no evidence that any person has been deceived in the purchase of such stamps, the defendants have intended to make a stamp which, in construction and outward appearance and similarity of name, was calculated to confuse the stamps manufactured by the defendants with stamps in fact manufactured by the complainant. In defense of such conduct, the defendants urge that the "Centennial Dater" and the "American Dater" are not trade-marks, but are terms identifying the stamps severally with the letters patent to which reference has been made, and that with the expiration of such patents the defendants and the public were permitted to manufacture daters in mechanical and exterior similitude to the daters of the complainant, and also to use the very names that the complainant had used while such goods were protected by the patent. It will be observed that upon the complainant's dater the name of the manufacturer or seller did not appear during the life of the patents, so as to indicate that the marks on the Centennial Dater or on the American Dater are trade-marks used by the complainant, B. B. Hill, personally, or by any manufacturer or dealer, but that such terms have been used simply on B. B. Hill's patent daters, as patented articles. Within the last two years the word "Hill's" has been added to the words, "Centennial Dater" on another part of the Centennial Daters, but no mark has been used by the defendant. It will be observed that on the head of the daters sold by the defendants the name of the seller is made a distinct part of the inscription. It is urged that upon. such a state of facts the defendants are justified by Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169, 16 Sup. Ct. 1002, 41 L. Ed. 118; Rahtjen's American Composition Co. v. Holzappel's Composition Co., 41 C. C. A. 329, 101 Fed. 257; Holzapfel's Compositions Co. v. Rahtjen's American Composition Co., 97 O. G. 958 (decided Oct. 21, 1891). In the Singer Case it was held:

"Where, during the life of a monopoly created by a patent, a name, whether it be arbitrary or be that of the inventor, has become, by his consent, either express or tacit, the identifying and generic name of the thing patented, this name passes to the public with the cessation of the monopoly which the patent created; and, where another avails himself of this public. dedication to make the machine and use the generic designation, he can do so in all forms, with the fullest liberty, by affixing such name to the machines, by referring to it in advertisements and by other means, subject, however, to the condition that the name must be so used as not to deprive others of their rights or to deceive the public, and therefore that the name must be accompanied with such indications that the thing manufactured is the work of the one making it as will unmistakably inform the public cof that fact."

112 F.-10

The defendants' name, marked with sufficient prominence upon the plate of each machine, sufficiently distinguishes it from that manufactured by the complainant. However, the evidence shows that in the sale of the defendants' daters a rubber cap, suitable to be placed over such plate, has been given away by defendants with daters sold. It also appears that Stewart & Co., who are the controlling persons in the defendant corporation, and who are general dealers in such articles, attempted, in an instance (that of the sale to the Long Island Railroad Company), to fill, in large part, an order for Centennial Daters with defendants' machines. While the defendants give away the rubber caps, that they may be used to protect the hand in the act of working the stamp, the complainant sells such rubber caps, which are used for the same purpose. While the use of the cap may conceal the defendants' name, there is no evidence that the defendants in selling the machines have used the cap to conceal the inscription, or that any different policy is observed by themselves or other dealers, whether complainant or defendants' device be exposed for sale, nor does it appear that when Stewart filled the order for the Long Island Railroad Company he did more than to send certain of the defendants' daters when the complainant's were ordered, and the substitution was quickly detected. Under the state of facts presented, the defendants seem to find legal protection from an obvious intention to copy, with approximate accuracy, the complainant's goods, in the decision of the court above stated.

The conclusion reached has not made it necessary to consider separately the liability of the persons sued individually, but all the defendants have been regarded as a single person. There must there fore be a decree dismissing the bill in each action.

GOODYEAR SHOE MACHINERY CO. v. JACKSON et al.

(Circuit Court of Appeals, First Circuit. December 6, 1901.)

No. 392.

1. PATENTS-CONTRIBUTORY INFRINGEMENT.

The essence of contributory infringement of a patent lies in concerting or planning with others in an unlawful invasion of the patentee's rights, which is usually done by making or selling a part of the patented invention with the intent and purpose of aiding another in its sale or use. Contributory infringement cannot be predicated of the rebuilding or replacing of parts of a patented machine by a purchaser for his own use.1 2. SAME INFRINGEMENT BY PURCHASER.

The purchaser of a patented machine, in order to infringe, must make or reproduce in substance the whole patented invention. The only difference between his position and that of an ordinary infringer is that he has bought a patented machine, and consequently his infringement does not consist in the construction of a wholly new machine, but in the reconstruction of his machine after it is worn out, or substantially destroyed; and, to constitute infringement on his part, where the patented invention comprises several elements in combination, it is only

1 Contributory infringement of patents, see note to Edison Electric Light Co. v. Peninsular Light, Power & Heat Co., 43 C. C. A. 485.

necessary that he shall have reconstructed all the material or essential elements of the combination.

3. SAME.

No general rule can be laid down by which to determine the line of demarcation between legitimate repairs which a purchaser of a patented machine may rightfully make thereon and a reconstruction or reproduction which will constitute infringement. Each case must, in that regard, be decided on its own facts, having reference to the scope and purpose of the invention and the fair and reasonable intention of the parties.

4. SAME SEWING MACHINES-RECONSTRUCTION OF PARTS OF COMBINATION. The Fowler & Warren patents, No. 545,625, No. 560,705, and No. 564,986, each of which covers a combination of mechanism for sewing machines, embracing a number of essential elements, held not infringed by purchasers who had one or more of such elements reconstructed when worn out or broken. There having been in each case remaining elements or parts which were essential to the patented combination, the replacement of those worn out or broken constituted repair, and not a rebuilding.

Appeal from the Circuit Court of the United States for the District of Massachusetts.

Benjamin Phillips (Elmer P. Howe, on the brief), for appellant. Vere Goldthwaite, for appellees.

Before COLT and PUTNAM, Circuit Judges, and WEBB, District Judge.

COLT, Circuit Judge. There is presented on this appeal the single question of legitimate or illegitimate repair by the purchasers of a patented machine. The defendants, in rather a small way, were engaged in the business of general jobbing and repair work, and several purchasers sent their machines to the defendants' shop for repairs. In repairing the machines, the defendants made and replaced a number of parts, and the contention is that these repairs constituted an infringement of three of the complainant's patents for attachments to these machines.

It is admitted by counsel that the case stands the same as if the suit had been brought directly against the purchasers. This limits. the issue strictly to the right of the purchasers to make these repairs, and eliminates any question of possible contributory infringement by the defendants by reason of making and selling parts of these machines.

But, although the case stands the same as if suit had been brought directly against the purchasers, the complainant's brief and argument have proceeded largely upon the assumption that infringement by the purchaser of a patented machine is closely allied to contributory infringement, in that both kinds of infringement relate to making a part of a patented invention, as distinguished from making the whole; and this has led the complainant to base infringement mainly upon the circumstance that the purchasers, in repairing their machines, replaced one of the material elements of the patented combinations. The fact is, however, that the two kinds of infringement are fundamentally different.

: Infringement is the unlawful making or selling or using of a patented invention. Contributory infringement is "the intentional aiding of one person by another in the unlawful making or selling or using of the patented invention"; and this is usually done by making or selling a part of the patented invention with the intent and purpose of so aiding. The essence of contributory infringement lies in concerting or planning with others in an unlawful invasion of the patentee's rights. Howson, Contrib. Infringe. Pat. 1; Thomson-Houston Electric Co. v. Kelsey Electric Ry. Specialty Co. (C. C.) 72 Fed. 1016; Thomson-Houston Electric Co. v. Ohio. Brass Co. (C. C.) 78 Fed. 139; Wallace v. Holmes, 9 Blatchf. 65, Fed. Cas. No. 17,100; Renwick v. Pond, 10 Blatchf. 39, Fed. Cas. No. 11,702; Saxe v. Hammond, I Ban. & A. 629, Fed. Cas. No. 12,411; Richardson v. Noyes, 2 Ban. & A. 398, Fed. Cas. No. 11,792; Schneider v. Pountney (C. C.) 21 Fed. 399; Travers v. Beyer (C. C.) 26 Fed. 450, 23 Blatchf. 423; Snyder v. Bunnell (C. C.) 29 Fed. 47; Celluloid Mfg. Co. v. American Zylonite Co. (C. C.) 30 Fed. 437; Singer Mfg. Co. v. Springfield Foundry Co. (C. C.) 34 Fed. 393; Schneider v. Missouri Glass Co. (C. C.) 36 Fed. 582; Heaton-Peninsular Button-Fastener Co. v. Eureka Specialty Co., 25 C. C. A. 267, 77 Fed. 288, 35 L. R. A. 728.

Infringement by the purchaser of a patented machine consists in the substantial rebuilding of such machine. A contributory infringer necessarily only makes or sells a part of the patented invention. The purchaser of a patented machine, in order to infringe, must make or reproduce, in substance, the whole patented invention. To prove infringement, in one case, it is only necessary to show a partial infringement in aid of an unlawful complete infringement, while in the other case a substantially full and complete infringement must be established. The rule that a person may be guilty of contributory infringement by making or selling a material element of the patented combination has no application to infringement by the purchaser of a machine embodying such patented combination. A purchaser stands in no different position from an ordinary infringer, except in the circumstance that he has bought a patented machine, and, consequently, his infringement does not consist in the construction of a wholly new machine, but in the reconstruction of such machine after it is worn out or substantially destroyed. The essense of the infringement is the same in both cases.

The ordinary infringer makes the entire patented machine; the infringing purchaser begins with what remains of the patented machine, and rebuilds it. To show infringement in the case of an ordinary infringer, where the patented invention comprises several elements in combination, it is necessary to prove that the alleged infringing machine contains all the elements (or their equivalents) which make up the combination, although some of the elements may not be material, or of the essence of the invention. To show infringement by the purchaser in such a case, the same strictness of proof is not required, for the reason that it may not be necessary for him to make the immaterial or unessential elements of the patented combination, because they may not be worn out or destroyed in his