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ties was illegal. The defendant excepted to the direction, and, after a judgment against him, brought this writ of error.
It was provided by section 2505, Rev. St. 1874, that the importation of the following articles should be exempt from duty:
First. Page 484, (2d Ed.) "Books, household effects, or libraries, or parts of libraries, in use, of persons or families from foreign countries, if used abroad by them not less than one year, and not intended for any other person or persons, nor for sale."
Second. Page 487, (2d Ed.) "Personal and household effects, not merchandise, of citizens of the United States dying abroad.”
Third. Page 489, (2d Ed.) "Wearing apparel, in actual use, and other personal effects, (not merchandise,) professional books, implements, instruments, and tools of trade, occupation, or employment of persons arriving in the United States. But this exemption shall not be construed to include machinery or other articles imported for use in any mannfacturing establishment, or for sale."
*By section 1 of the act of August 10, 1790, c. 39, (1 St. 181,) there were exempted from duty "the clothes, books, household furniture, and the tools or implements of the trade or profession of persons who come to reside in the United States." This exemption was continued by section 2 of the act of May 2, 1792, c. 27, (1 St. 260.) As to the above clause 1, Schedule I of the act of July 30, 1846, c. 74, (9 St. 49,) exempted from duty "household effects, old and in use, of persons or families from foreign countries, if used abroad by them, and not intended for any other person or persons, or for sale." The same exemption was continued in section 3 of the act of March 3, 1857, c. 98, (11 St. 194,) and in section 23 of the act of March 2, 1861, c. 68, (12 St. 195.) By section 22 of the act of July 14, 1870, c. 255, (16 St. 265, 268,) exemption was extended, in addition to "household effects of persons and families returning or emigrating from foreign countries, which have been in actual use abroad by them, and not intended for any other person or persons, or for sale, not exceeding the value of five hundred dollars." The above clause 1 first appeared in section 5 of the act of June 6, 1872, c. 315, (17 St. 234,) and is now in force as part of section 2503 of the Revised Statutes, by virtue of section 6 of the act of March 3, 1883, c. 121, (22 St. 518.) As to the above clause 2, section 9 of the act of August 30, 1842, c. 270, (5 St. 560,) exempted from duty "books and personal and household effects, not merchandise, of citizens of the United States dying abroad." Omitting the words "books and,” this provision was repeated in Schedule I of the act of July 30, 1846, c. 74, (9 St. 49,) and in section 3 of the act of March 3, 1857, c 98, (11 St. 194,) and in section 23 of the act of March 2, 1861, c. 68, (12 St. 195,) and is now in force as part of section 2503 of the Revised Statutes, by virtue of section 6 of the act of March 3, 1883, c. 121, (22 St. 520.) The history of clause 3 above is fully given in Astor v. Merritt, 111 U. S. 210; S. C. 4 SUP. CT. REP. 413.
In June, 1876, the attorney general advised the secretary of the treasury that the words "personal effects," in clause 3 above, did not include carriages previously in use, but only such things as are worn, like apparel, upon the person, or are used in connection therewith; and shortly afterwards he advised the same officer that the words "household effects," in clause 1 above, did not include carriages used abroad not less than one year and intended for personal use here. 15 Op. 113, 125. On this construction the department has acted. The last opinion proceeded on the ground that early and repeated decis ions in England had held that books, wares, horses, etc., did not pass under bequests of "household goods and effects," and that the express mention of books in clause 1, and the omission of other articles so determined not to be included under the general term "household effects," indicated that "carriages" were not within the exemption. The word "effects" means "property or
worldly substance." When it is accompanied, in a will, by words of narrower import, the bequest, if not residuary, may be confined to species of property ejusdem generis with those previously described. But the analogies to be derived from wills are not strictly applicable to a case like the present, and no material aid can be derived from decisions in regard to wills. The construction of the words "household effects" in a will often depends largely on the meaning of words in other provisions in the will, and upon the qualification by the word "other," as referring to specific articles before named, like the word "other" in clause 3 above. In the present case the only direct qualification of "effects" is "household."
Persons who dwell together as a family constitute a "household." In New York a statute exempted from execution a cow "owned by any person being a householder." In Woodward v. Murray, 18 Johns. 400, a judgment debtor, who owned a cow, had left his wife and children, they continuing to reside in the house he had occupied. While they were on the road, removing to the house of the wife's father, with the cow and their household furniture, the cow was seized on execution. The court held that the exemption continued so long as the wife and children remained together "as a family," and that they continued to be the debtor's "household," and he the "householder." The question for decision in this case is whether the carriage of the plaintiff fell under either of these heads: (1) Household effects in use of a person or a family from a foreign country, used abroad by the person or the family not less than one year, and not intended for any other person or persons, nor for sale; (2) personal effects, (not merchandise,) nor for sale, of a person arriving in the United States.
The carriage had been in use as a family carriage, abroad, by the plaintiff as owner for more than a year. She came from abroad after a temporary residence there of three years, and imported the carriage two weeks later for use here, and not for any other person, nor for sale. Was it "household effects" or "personal effects" of the plaintiff? We think that it fell within clause 1 and was "household effects." In the provision respecting the "household effects" of persons or families, there is an evident intention to include articles which pertain to a person as a householder, or to a family as a household, which have been used abroad not less than a year, and are not intended for others, nor for sale. A carriage is peculiarly a family or household article. It contributes in a large degree to the health, convenience, comfort, and welfare of the householder or of the family. The statute is not limited to articles of household furniture, or to things whose place is necessarily within the four walls of a house. Clause 2 above uses the words "personal and household effects." This serves to show that, by the use of the words "household effects" alone in clause 1, in the same section of the statute, something is intended different from "personal effects," and that those words embrace articles which the words "personal effects" do not cover. So, too, if the words "other personal effects" in clause 3 should be extended to embrace articles properly cov ered by the words “household effects” in clause 1, such household effects would come in free, although not used abroad for a year, and the door would be opened wide for the introduction without duty of large numbers of articles as "household effects" which it is intended should pay duty. We do not find it necessary in this case to consider any further the construction of the words "other personal effects" in clause 3, because we place our decision on the ground that this carriage was "household effects" of the plaintiff.
The protest claimed that the carriage was "personal effects" in actual use, under section 2505, and, as such, free and not subject to the duty imposed on it, but did not claim it to be "household effects." The solicitor general concedes that the objection to the protest is a "bare technicality," and that its language could hardly mislead the officers. A proper protest, as well as an appeal, are prerequisites to the right to sue. Section 3011, Rev. St., as
amended by the act of February 27, 1877, c. 69, (19 St. 247.) The protest must set forth "distinctly and specifically" the grounds of objection to the decision of the collector as to the rate and amount of duties. Section 2931, Rev. St. This provision was taken from the act of June 30, 1864, c. 171, § 14, (13 St. 214,) and is substantially the same as that in the act of February 26, 1845, c. 22, (5 St. 727.) A protest is not required to be made with technical precision, but is sufficient if it shows 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 practical advantage which the statute was designed to secure. Converse v. Burgess, 18 How. 413; Swanston v. Morton, 1 Curt. C. C. 294; Kriesler v. Morton, Id. 413; Burgess v. Converse, 2 Curt. C. C. 216; Steegman v. Maxwell, 3 Blatchf. 365; Frazee v. Moffitt, 20 Blatchf. 267; S. C. 18 Fed. Rep. 584. This protest apprised the collector that the carriage was claimed to be free, under section 2505, as a carriage actually used abroad over a year. The "household effects" clause was in the mind of the party, and the collector could not fail to so understand. The protest was sufficient. The judgment of the circuit court is affirmed.
(112 U. S. 485)
BIRDSELL and another v. SHALIOL and another.
(December 8, 1884.)
PATENT DAMAGES FOR INFRINGEMENT-SUBSEQUENT ACTION JOINING LICENSEE. Judgment for and payment of nominal damages upon a bill in equity by a patentee, without joining his licensee, against one who has made and sold a machine in violation of the patent, are no bar to a bill in equity by the patentee and licensee together, for the benefit of the licensee, against another person who afterwards uses the same machine.
Appeal from the Circuit Court of the United States for the Northern District of Ohio.
W. W. Leggett, for appellants. No brief for appellees.
GRAY, J. This was a bill in equity for an injunction and damages for the infringement of a patent for an improvement in machines for threshing and hulling clover-seed. The answer set up a former decree as an estoppel. The case was heard in the circuit court upon a statement of facts agreed by the parties, by which it appeared to be as follows: Birdsell was the inventor and patentee of the improvement, and granted to the Birdsell Manufacturing Company, a corporation of which he was the president and active manager, and owner of a large part of the stock, an exclusive oral license to make, vend, and use his invention, but did not give it authority to license others to make, vend, and use. The corporation paid him no royalty, but set apart a sinking fund to defray the expense of defending the patent in the courts. A former suit in equity was brought by Birdsell against the Ashland Machine Company for an infringement of his patent by making and selling large numbers of machines. The Birdsell Manufacturing Company was not made a party to that suit, but participated in instituting it and carrying it on till its close. In that suit a perpetual injunction was decreed, and the case was referred to a master, before whom damages sustained by the Birdsell Manufacturing Company were proved and claimed, and who reported that the defendant had made no profits for which it should account, and that, if any damages had been sustained, they had been sustained by the Birdsell Manufacturing Company, a stranger to the suit, and that Birdsell, the plaintiff,*was entitled to recover only one dollar, as nominal damages. The Ashland Machine Company afterwards, pending that suit, became insolvent; and a decree was rendered in Birdsell's favor according to the master's report, for nominal damages and for costs, which were paid by that company. The
present suit was brought by Birdsell and the Birdsell Manufacturing Company against Gerhart Shaliol and John Feikert, who had used one of the machines manufactured by the Ashland Machine Company, and embraced in the master's report in the suit against that company. The circuit court held that in the former suit the Birdsell Manufacturing Company, although not named as a party plaintiff in the bill, was in reality a co-plaintiff with Birdsell, and that, by the final decree in that suit, and the recovery and payment of nominal damages, Birdsell and the Birdsell Manufacturing Company were estopped to maintain the present bill; and therefore dismissed the bill, with costs. The plaintiffs appealed to this court.
The plaintiffs in the present suit-Birdsell, the patentee, in whom is the legal title, and the Birdsell Manufacturing Company, his licensee, in whom is the beneficial interest-make three objections to the decree set up by way of estoppel: (1) That the Birdsell Manufacturing Company was not a party; (2) that the present defendants were not parties; (3) that only nominal damages were recovered and paid.
1. A licensee of a patent cannot bring a suit in his own name, at law or in equity, for its infringement by a stranger; an action at law for the benefit of the licensee must be brought in the name of the patentee alone; a suit in equity may be brought by the patentee and the licensee together. Gayler v. Wilder, 10 How. 477, 495; Littlefield v. Perry, 21 Wall. 205, 223; Paper Bag Cases, 105 U. S. 766, 771. In a suit in equity brought by the patentee alone, if the defendant seasonably objected to the non-joinder of the licensee, the court might, as Judge LOWELL did in Hammond v. Hunt, 4 Ban. & A. 111, order him to be joined. But when a suit in equity has been brought and prosecuted, in the name of the patentee alone, with the licensee's consent and concurrence, to final judgment, from which, if for too small a sum, an appeal might have been taken in the name of the patentee, we should hesitate to say that the licensee, merely because he was not a formal plaintiff in that suit, could bring a new suit to recover damages against the same defendant for the same infringement.
2. It is a more serious question whether a decree in favor of the patentee, upon a bill in equity against one person for making and selling a patented machine, is a bar to a subsequent suit by the patentee against another person for afterwards using the same machine within the term of the patent. A license from the patentee to make, use, and sell machines gives the licensee the right to do so, within the scope of the license, throughout the term of the patent; and has the same effect upon machines sold by the licensee under authority of his license, that a sale by the patentee has upon machines sold by himself, of wholly releasing them from the monopoly, and discharging all claim of the patentee for their use by anybody; because such is the effect of the patentee's voluntary act of licensing or selling, in consideration of the sum paid him for the license or sale. Adams v. Burke, 17 Wall. 453. But an infringer does not, by paying damages for making and using a machine in infringement of a patent, acquire any right himself to the future use of the machine. On the contrary, he may, in addition to the payment of damages for past infringement, be restrained by injunction from further use, and, when the whole machine is an infringement of the patent, be ordered to deliver it up to be destroyed. Suffolk Co. v. Hayden, 3 Wall. 315, 320; Root v. Railway Co. 105 U. S. 189, 198; Needham v. Oxley, 8 Law T. Rep. (N. S.) 604; S. C. 2 New Rep. Eq. & C. L. 388; Frearson v. Loe, L. R. 9 Ch. Div. 48, 67. No more does one, who pays damages for selling a machine in infringement of a patent, acquire for himself or his vendee any right to use that * machine. In the case of a license or a sale by the patentee, the rights of the licensee or the vendee arise out of contract with him. In the case of infringement, the liability of infringers arises out of their own wrongful invasion of his rights. The recovery and satisfaction of a judgment for damages against
one wrong-doer do not ordinarily confer, upon him or upon others, the right to continue or repeat the wrong.
This view is in accord with the judgment of Vice Chancellor WOOD (after wards Lord Chancellor HATHERLEY) in two suits brought by a patentee, the one against the manufacturer, and the other against the user, where the plaintiff asked for an injunction against each, for an account against the man. ufacturer, and for damages against the user, and declined to accept an offel of the user to pay him the like royalties that other persons paid. It was argued in behalf of the user that the patentee was not entitled to damages against him, as well as to an account against the manufacturer, and could not have an account against the seller without adopting the sale, and, if he adopted the sale, had no right to get anything from the purchaser. But the vice chancellor held that the plaintiff was entitled to an injunction, to an account, or, upon his waiving that, to damages against the manufacturer, and also to damages against the user, and said: "With regard to the damages, i has never, I think, been held in this court that an account, directed against a manufacturer of a patented article, licenses the use of that article in the hands of all the purchasers. The patent is a continuing patent, and I do not see why the article should not be followed in every man's hand until the infringement is got rid of. So long as the article is used, there is continuing damage." "As to the royalties, I cannot compel the plaintiff to accept the same royalty from these defendants as he receives from others. I cannot in the decree do less than give the plaintiff his full right, and I cannot bargain for him what he may choose or may not choose to do." Penn v. Bibby, L. R. 3 Eq. 308; S. C. 15 Wkly. Rep. 192.
3. If one person is in any case exempt from being sued for damages for using the same machine for the making and*selling of which damages have been recovered against and paid by another person, it can only be when actual damages have been paid, and upon the theory that the plaintiff has been de prived of the same property by the acts of two wrong-doers, and has received full compensation from one of them. In that view, the case of the patentee, whose right of property under his patent had been invaded, would be analogous to that of one from whom personal property had been taken. But, according to the law of England, as well as of America, the owner of a chattel, which others have taken from him and converted to their own use, is not deprived of his property therein by recovering judgment for damages against any or all of them, without actual satisfaction by somebody. By the law of England, indeed, as declared by its courts, upon technical grounds, the owner of a chattel, who has recovered judgment for its value in trover against one of two joint tort-feasors, cannot, although that judgment remains unsatisfied, bring a like action against the other for the same cause. But, even by that law, such a judgment against the one, without satisfaction, does not vest the property in the chattel in him, or bar a subsequent action against the other for continuing to detain the chattel. HOLROYD and LITTLEDALE, JJ., in Morris v. Robinson, 5 Dowl. & R. 34, 47, 48; S. C. 3 Barn. & C. 196, 206, 207; Brinsmead v. Harrison, L. R. 6 C. P. 584, and L. R. 7 C. P. 547, 554; Ex parte Drake, L. R. 5 Ch. Div. 866. In Brinsmead v. Harrison, Mr. Justice WILLES observed that to say that the mere obtaining judgment for nominal damages vests the property in the defendant would be an absurdity. L. R. 6 C. P. 588. By our law, judgment against one joint trespasser, without full satisfaction, is no bar to a suit against another for the same trespass. Lovejoy v. Murray, 3 Wall. 1. The reasons are therefore stronger, if possible, here than in England for holding that a judgment for nominal damages against one wrongdoer does not bar a suit against another for a continuance of the wrong.
The result is that, in any view of the case, the decree of the circuit court fismissing this bill was erroneous, and must be reversed.