Dunlap v. Schofield
This was a bill brought by Benjamin Schofield, Jr., Edward F. Mason, and George N. Schofield, copartners as Schofield, Mason & Co., against John Dunlap, James Dunlap, and John Dunlap, Jr., copartners as J. Dunlap & Sons, for infringement of design patent No. 18,996, issued April 2, 1889, to Julius Stroheim, for a design for rugs. There was a decree for plaintiffs for the penalty of $250 prescribed by the act of February 4, 1887, and for an injunction, (42 Fed. 323,) and defendants appealed to this court.

This was a bill in equity, filed May 7, 1889, for the infringement of letters patent issued April 2, 1889, for the term of 3 1/2 years, by the United States to Julius Stroheim for a design for rugs.

The bill alleged that the design was new and original; that Stroheim was the original and first inventor thereof; that it was not, at the time of his application for a patent, in public use or on sale, with his consent or allowance; that before the issue of the patent he assigned the invention and the patent to be obtained therefor to the plaintiffs by an instrument in writing recorded in the patent office; that the invention was of great practical use and benefit to the plaintiffs, and they had applied it to large and extensive use, and had expended large sums of money in introducing it, and the public and the users of the invention had acknowledged and acquiesced in its value; that the defendants had infringed, and intended to continue to infringe, the patent, by making, using, and vending the patented design, substantially the same in outline, detail, and appearance as shown and described in the patent; and that the plaintiffs, 'after the issue of the aforesaid letters patent, notified the said defendants of the issue of said letters patent, of their infringement thereof, and requested them (the said defendants) to abstain and desist from any further violation thereof in infringement of' the plaintiffs' 'rights thereunder in the manufacture and sale of rugs bearing said patented design,' and prayed for a discovery, an injunction, an account of profits, damages, and further relief.

The defendants answered under oath, admitting the issue of the letters patent to Stroheim, denying all the other allegations of the bill, and, among other things, denying that 'after the issue of the aforesaid letters patent these complainants notified these defendants of the issue of said letters patent, or of their infringement thereof, and requested the said defendants to abstain and desist from infringement of the complainants' alleged rights thereunder, in the manufacture and sale of rugs bearing said patented design.' The plaintiffs filed a general replication.

At the hearing upon pleadings and proofs, it appeared by the testimony introduced by both parties that the plaintiffs made and sold many rugs with the patented design upon them, and there was conflicting evidence upon the question of infringement. The court held that the patent was valid, and that the defendants had infringed it by making and selling rugs bearing a design in imitation of, and substantially similar to, the design shown, described, and claimed in the patent.

No evidence was offered by either party upon the question whether the plaintiffs' rugs were marked 'Patented,' or upon the question whether the plaintiffs had notified the defendants that they were infringing the patent.

The defendants contended that they were not liable in damages, because the plaintiffs had failed to prove their own compliance with section 4900 of the Revised Statutes, which is as follows:

'It shall be the duty of all patentees, and their assigns and legal representatives, and of all persons making or vending any patented article for or under them, to give sufficient notice to the public that the same is patented; either by fixing thereon the word 'Patented,' together with the day and year the patent was granted, or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein one or more of them is inclosed, a label containing the like notice; and in any suit for infringement, by the party failing so to mark, no damages shall be recovered by the plaintiff, except on proof that the defendant was duly notified of the infringement, and continued, after such notice, to make, use or vend the article so patented.'

The court held that the notice alleged in the bill was not a sufficient compliance with this section, and that the burden of proof was upon the defendants to show that the plaintiffs had not complied with it. 42 Fed. 323.

The plaintiffs asked for an injunction, and for damages in the sum of $250, as penalty and damages under the act of February 4, 1887, c. 105, (which is copied in the margin,)  and waived all right to any further damages, or to an account of profits. The court, on May 13, 1890, entered a decree for the plaintiffs accordingly, and the defendants appealed to this court.

Jas. C. Fraley, for appellants.

Hector T. Fenton, for appellees.

Mr. Justice GRAY, after stating the case, delivered the opinion of the court. 

Notes

Section 1. Hereafter, during the term of letters patent for a design, it shall be unlawful for any person other than the owner of said letters patent, without the license of such owner, to apply the design secured by such letters patent, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or to sell or expose for sale any article of manufacture to which such design or colorable imitation shall, without the license of the owner, have been applied, knowing that the same has been so applied. Any person violating the provisions, or either of them, of this section, shall be liable in the amount of two hundred and fifty dollars; and in case the total profit made by him from the manufacture or sale, as aforesaid, of the article or articles to which the design, or colorable imitation thereof, has been applied, exceeds the sum of two hundred and fifty dollars, he shall be further liable for the excess of such profit over and above the sum of two hundred and fifty dollars. And the full amount of such liability may be recovered by the owner of the letters patent. to his own use, in any circuit court of the United States having jurisdiction of the parties, either by action at law or upon a bill in equity for an injunction to restrain such infringement.

Sec. 2. Nothing in this act contained shall prevent, lessen, impeach or avoid any remedy at law or in equity which any owner of letters patent for a design, aggrieved by the infringement of the same, might have had if this act had not been passed; but such owner shall not twice recover the profit made from the infringement. 24 Stat. 387.
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