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other employés, which consists of a sheet provided with separate spaces, having suitable headings, substantially as described, said headings being designatory of the several waiters to whom the several spaces on the sheet are individually appropriated, in conjunction with separate slips, each so marked as to indicate the waiter using it whereby the selling price of all the articles sold may be entered in duplicate, once upon the slip of the waiter making the sale, and once upon his allotted space upon the main sheet, substantially as and for the purpose specified.
“2. The herein-described improvement in the art of securing hotel or restaurant proprietors and others from losses by the peculations of waiters, cashiers, or other employés, which consists in providing separate slips for the waiters, each so marked as to indicate the waiter using it, and in entering upon the slip belonging to each waiter the amount of each sale that he makes, and also in providing a main sheet having separate spaces for the different waiters and suitably marked to correspond with the numbers of the waiters and of their slips, and in entering upon said main sheet all the amounts marked upon the waiters' slips so that there may thus be a duplication of the entries, substantially in the manner and for the purpose specified.”
Claim 1 points out how the benefits of the patent may be secured to hotel and restaurant proprietors, while claim 2 indicates what must be done to effectuate the purpose of the patentee. Importance is placed by the complainant upon the requirement that the so-called checker must enter in duplicate the articles purchased upon the waiter's slip and upon the main sheet under the number or symbol of the waiter. The method adopted and described in the patent apparently consists of a system of charging the waiter with the articles purchased by a guest upon the main sheet, and, assuming the vigilance and rectitude of the checker in charge of the main sheet, a correct detailed statement or total amount of the purchases by the guest may be kept.
The means for accomplishing the object of the patentee principally consists of utilizing a printed sheet of paper appropriately ruled into vertical columns, having the number, name, or other means of identifying a waiter printed thereon, and using in conjunction therewith a ruled slip or sheet of paper also having printed thereon the number of the waiter or any other arbitrary individual designation. The checker sits at a table in or near the kitchen with the main sheet before him, and as each waiter passes to supply the guest he inspects the articles on the waiter's tray, and in duplicate enters the prices thereof in the proper column upon the main sheet, and writes or stamps the prices upon the printed slip of the waiter. It was claimed at the hearing that users of the patent in suit are practically secured against loss by peculation, but of this I am not convinced. Dishonesty of the waiter or checker is not prevented by the use of the patent in suit, and to stop pilfering by the waiter or collusion with a customer the users, in fact, must rely upon the uprightness and accuracy of the checker. Neither does the record disclose means to prevent the latter from combining with a waiter to cheat and defraud the employer. The system undoubtedly has advantages which are useful, but the interesting question here is whether the means specified produce a patentable result. I am of the opinion that nothing of patentable novelty is disclosed. The entire scheme and its adaptability apparently depends upon a rule of conduct consisting of the correct use by the checker of the main sheet, the vigilance and carefulness of the employer; and, moreover, without conforming to the precise steps pointed out in the specification to secure the asserted advantages, there is nothing disclosed by the patent but the printed slips with the waiter's number and the vertically 'ruled main sheet. It is doubtful whether such slips and main sheet, with their spacings or printing thereon for columns, figures, and writing, together with the promulgation of rules for their proper use, disclose invention. United States Credit System Co. v. American Indemnity Co., 59 Fed. 139, 8 C. C. A. 49; Munson v. Mayor, 124 U. S. 601; United States Credit System Co. v. American Indemnity Co. (C. C.) 51 Fed. 1751.
The case at bar seems to me similar to Hocke v. New York Central & H. R. R. Co., 122 Fed. 467, 58 C. C. A. 627, where the Circuit Court of Appeals for the Second Circuit, speaking by Judge Wallace, says:
“It [the patent] purports to disclose to the public, and especially to that part of the public engaged in the business of shipping and transportation, an improved method of preventing and rectifying mistakes in the transaction of their business. Such improvements generally suggest themselves as their necessity becomes apparent to the intelligent and enterprising men who usually conduct this kind of business, and it would be surprising, indeed, if the long and extensive experience of forwarders and carriers had not discovered so obvious a method as that which is disclosed."
This principle is thought applicable here, in view of the evidence showing that prior to the patent in suit a patent was issued to George D. Smith, No. 449,973, which indicated means for securing to a proprietor the amounts collected for food served by waiters. In the Smith patent a single sheet having spaces and coupon headings for designating the waiters was used by the waiter. Although there are no parallel columns on the sheet, and no designation or number printed thereon when the sheet is delivered to the waiter, yet the elements of this method would seem to correspond to those of the patent in suit. No main sheet is used, but the coupon attached to the waiter's slip apparently serves a similar purpose. The rules of conduct for successfully carrying out the object of the Smith patent are also unlike those adopted by Hicks, but any dissimilarity is not of conspicuous consequence. The specification of the Smith patent shows that the amount of each purchase is entered upon a sheet attached to a coupon or waiter's check upon which the total amount only is placed. True, in the Hicks method the main sheet remains in charge of the checker, who duplicates the individual charges or the total, yet, assuming the claims patentable as to subject-matter, I am unable to perceive any advance in the art other than would occur to persons engaged in the business requiring the use of such a method. This conclusion also finds persuasive support in the oral evidence found in the record showing the prior use of various methods to accomplish the identical object in suit. Such methods are not thought essentially different in a patentable sense from the patent in suit. Furthermore, it is evident, as hereinbefore suggested, that the printed slips and main sheet of the Hicks patent do not positively secure the prevention of peculation by waiters and checkers. The integrity of the checker in charge of the main sheet and the watchfulness and carefulness of the employer himself or some trusted employé acting in his behalf are essential elements to its success, and these elements cannot be considered in determining the question of patentable invention.
In view of the foregoing, the asserted extensive use into which the device has gone and the large amounts in royalties that have been paid to complainant cannot be considered as giving the device patentable novelty. Upon this point, the adjudications uniformly hold that, where there is no invention, the extent of the sales and use of the patented article is immaterial. McClain v. Ortmayer, 141 U. S. 419, 12 Sup. Ct. 76, 35 L. Ed. 800; Adams v. Bellaire Stamping Co., 141 U. S. 539, 12 Sup. Ct. 66, 35 L. Ed. 849; Peoria Target Co. v. Cleveland Target Co. (C. C.) 47 Fed. 725; Olin v. Timken, 155 U. S. 155, 15 Sup. Ct. 49, 39 L. Ed. 100.
The bill is dismissed, with costs.
WESTON ELECTRICAL INSTRUMENT CO. V. EMPIRE ELECTRICAL
INSTRUMENT CO. et al.
(Circuit Court, S. D. New York. February 18, 1907.)
PATENTS-SUIT FOR INFRINGEMENT-INCREASE OF DAMAGES.
The conduct of defendants in a suit in equity for infringement of a patent held to have been such, in deliberately and intentionally infringing, in purposely protracting the litigation, and in transferring the property of the corporation, which was the principal defendant, for the purpose of rendering a recovery nugatory, as to warrant the court in imposing triple
damages, under Rev. St. $ 4921 [U. S. Comp. St. 1901, p. 3395.] In Equity. Suit for infringement of letters patent No. 497,482, for a shunt for electric light and power stations, granted to Edward Weston May 16, 1893. On report of master.
For former opinion, see 131 Fed. 82.
HOLT, District Judge. I am satisfied that this was a case of deliberate and intentional infringement by all the original defendants, who knew that they had no right to manufacture or deal in the Weston shunts, and that they have defended the suit with the purpose of protracting the litigation as much as possible while they continued to infringe, and of ultimately transferring the assets of the Empire Company, if judgment should go against them, and thus, if possible, render any recovery nugatory. The defendants' conduct on the accounting appears to have been equally blameworthy. They have pursued a policy throughout the proceedings on the accounting of obstruction and concealment of the facts, and in my opinion this is a proper case to impose upon the defendants triple damages. I do not think that the statute permits the court to impose triple costs. The fact that in the interlocutory decree no judgment was entered against the defendant Cooke prevents, in my opinion, any recovery against him on the case as it now stands; but, as the facts elicited on the accounting make it appear probable that Cooke was an actual party to the original infringement and to the proceedings by which the Empire Company parted with its assets, I direct that the case be referred back to the master, if the complainant so elects, with instructions to take any additional testimony which the defendant Cooke or any of the parties may desire to offer, and to report, upon such testimony and all the other testimony already taken in the case, whether judgment should be entered in this case against the defendant Cooke, as well as against the two companies held liable upon the interlocutory decree. If the complainant does not elect to take further proceedings before the master against the defendant Cooke, final judgment may be entered confirming the master's report, and for triple damages and the costs as taxed against the two companies held liable by the interlocutory decree.
The foregoing remarks as to the conduct of the defendants do not, of course, apply to the counsel representing them.
HAVANA COMMERCIAL CO. v. NICHOLS et al.
(Circuit Court, S. D. New York. June 19, 1907.) 1. TRADE-MARKS AND TRADE-NAMES-NAMES SUBJECT TO APPROPRIATION
The name "La Carolina," as a trade-mark for cigars, is not invalid as either the name of an individual or a geographical name, and is infringed by the name "La Coralina,” used also for cigars.
[Ed. Note.--For cases in point, see Cent. Dig. vol. 46, Trade Marks and Trade-Names, $$ 68, 72.
Use of geographical names, see notes to Hoyt v. A. T. Lovett Co., 17 C. C.
A. 657; Illinois Watch Case Co. v. Elgin Nat. Watch Co., 35 C. C. A. 242.] 2. SAME--SUIT FOR INFRINGEMENT-PRELIMINARY INJUNCTION.
While mere delay or acquiescence will not defeat the right to an injunction to restrain infringement of a trade-mark, it may afford good ground for denying a preliminary injunction to put a stop to an established business prior to a final hearing. In Equity. On motion for preliminary injunction. Wise & Lichtenstein, for complainant. Hotchkiss & Barber, for defendants.
LACOMBE, Circuit Judge. This seems to be a properly registered trade-mark, under the act of 1905. It is not the "name of an individual”; at least the court is informed of no individual, historical or other, whose name was or is “La Carolina,” and neither the affidavits nor the briefs disclose the existence of any such person. Nor is it a “geographical name or term.” Defendant's counsel was unable upon the argument to identify geographically any place as “La Carolina,” although reference was made to North Carolina and South Carolina and to the Caroline Islands. The term “La Coralina” is manifestly an infringement. The mere transposition of the vowels "a" and "0" effects a change hardly appreciable by either the eye or the ear.
It appears, however, by defendants' affidavits, that they began the puting up and selling of cigars under that term 19 years ago, that they advertised them extensively, and that their sales have been large and continuous. Complainant asserts that this was without the knowledge of itself or its predecessors; but it is thought that all questions can better be determined at final hearing upon pleadings and proofs, when the facts will be more satisfactorily presented. It is no doubt well settled that mere delay or acquiescence will not defeat the remedy by injunction, although it may debar complainant from any recovery of profits or damages. Menendez v. Holt, 128 U. S. 514, 9 Sup. Ct. 143, 32 L. Ed. 526. But such laches may,
But such laches may, in proper cases, afford good ground for further delay in putting a stop by injunction to an established business.
It would seem that the equities can be more satisfactorily considered at final hearing than upon motion on affidavits, and for that reason the present application is denied.
NADAY & FLEISCHER V. UNITED STATES.
(Circuit Court, S. D. New York. June 28, 1907.)
While ribbons that must be made up into bows, rosettes, and the like before being used for purposes of trimming or ornamentation are not dutiable as "trimmings," under Tariff Act July 24, 1897, c. 11, § 1, Schedule L, par. 390, 30 Stat. 187 [U. S. Comp. St. 1901, p. 1670], goods are so dutiable which are manufactured with ornamentation and characteristic design to be used as a trimming, and intended to be so used without anything further being done to them. On Application for Review of a Decision of the Board of United States General Appraisers.
For decision below, see G. A. 5,923 (T. D. 26,049), affirming the assessment of duty by the collector of customs at the port of New York.
Comstock & Washburn (Albert H. Washburn, of counsel), for importers.
J. Osgood Nichols, Asst. U. S. Atty.
MARTIN, District Judge. This is an appeal from the decision of the Board of General Appraisers at New York, affirming the action of the collector in the assessment of duty on certain articles at the rate of 60 per cent. ad valorem, under the provisions of paragraph 390 of the tariff act of 1897 (Act July 24, 1897, c. 11, § 1, Schedule L, 30 Stat. 187 [U. S. Comp. St. 1901, p. 1670]), or, if wool is a component material, under paragraph 371 of said act.
In argument before me it was contended on the part of the importer that the articles in question are ribbons, made of silk as the component material of chief value, containing two or three colors in the filling, and not especially provided for in any paragraph of the tariff act, except in paragraph 391, and therefore dutiable at 50 per cent. ad valorem under the provisions of said paragraph 391. The government claims that the articles in question are trimmings, and therefore especially provided for in paragraph 390. It has become well established that ribbons that must be made up into bows, rosettes, and the like before being user for the purposes of trimming or ornamentation are not to be included