11b

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To the mind of the writer it would be quite as vicious to permit a showing of "secondary meaning" as to the subjectmatter of an invalid design patent, as in the case of an uncopyrighted picture post-card. As was well said by the late Judge J. B. McPherson in a post-card case "the only possible way to compete with such a photograph is to reproduce it, and any one may do this lawfully after it has been published unless the protection of the federal statutes concerning copyright has previously been obtained. If no copyright at all, or -what comes to the same thing-no valid copyright, has been obtained, the author has no exclusive right in the product of his artistic skill, and to copy is therefore not to compete unfairly in a legal sense, but to compete with the full sanction of the law." The analogy seems perfect. The design patent held invalid is precisely of the same effect as "no valid copyright." The only way to compete with the design is to reproduce it, and the right to reproduce it has been given to the public by the adjudication that the patent is invalid. The patentee has had his day in court in the attempt to sustain his patent monopoly, can he be given another hearing on the theory of "secondary meaning" without taking from the defendant his right created by the invalidating decision, as a member of the public, to make, use, and sell the now unpatented design? Has he not, by that decision, been vested with the right "to compete with the full sanction of the law"? Where a mechanical patent is held invalid proof of unfair competition must be very clear to justify a preliminary injunction.11e

In examining these cases, it is curious to note how far some courts have gone toward attempting to establish a quasi right of property in ideas, which has no existence at common law, and which, if it did exist, would obviate all necessity for patent or copyright statutes.12

11b-Bamforth v. Douglas Post Card & Machine Co., 158 Fed. Rep. 355, 357. For an unsuccessful charge of unfair competition under an expired design patent see Lenox V. Jones, McDuffee & Stratton Corp., 271 Fed. Rep. 511, 516.

1le-Meccano, Ltd., v. John Wanamaker, 250 Fed. Rep. 450, 452.

12-"The defendants have made exact copies of the complainants' photographs by the half-tone process, and are selling the copies upon post cards at a much lower price than the originals can be sold. They have been engaged in this business for more than a year.

At first they printed and sold their half-tone cards with the name 'Bamforth & Co.' thereon, as well as the titles of the pictures; but, upon the advice of counsel, the use of the complainants' name was soon discontinued. Νο cards bearing their name had been printed for several months before the bill was filed, and the defendants disclaim any intention to resume its use, conceding that such action on their part was improper, and that a threatened continuance thereof should be enjoined. But they claim the right to go on with the reproduction of the subjects and the

§ 158. Threats as unfair competition. That threatened acts which would tend to injure or destroy the wronged person's business, as well as baseless threats founded on no intention or basis of action, may under appropriate circumstances be enjoined, is well established.12a

A threat to refuse to sell goods to one under contract with a third party, if he proceeds to perform his contract is actionable.13 So of a threat to ruin a customer of another if he persists in dealing with that other. 14

A threat to dismiss the men under him if they continued to deal with a certain merchant was held to sustain a judgment for damages in a suit of the merchant against a railway foreman, who had a rival merchant as a tenant.15 In Texas, however, it was held that a corporation having a company store on which it issued checks to its employes in lieu of pay, was not liable for threatening to discharge any employe who might deal with a competing merchant.16

Intimidation of a competitor's selling force by threats may be enjoined,17 as well as threats by a board of fire insurance underwriters to boycott persons holding policies issued by the plaintiff corporation. 18 Threats made in the course of a conspiracy of competitors to ruin the plaintiff's business are actionable. 19

Threats of suits for patent infringement, are peculiarly subject to the scrutiny of courts of equity, for the reasons concisely stated in a typical case by Judge Quarles:

"If such a campaign be skillfully conducted for a series of years, as seems to have been the case here, the competitor is helpless. His orders are countermanded, old customers desert him, through fear of litigation, or demand bond of indemnity as a condition for placing orders. His business is melting away. Everywhere the trade is apprehensive of 'peremptory measures' if they buy goods of an infringer. He appeals to the patentee to bring suit, and offers to enter an appearance in any court having jurisdiction, but all to no purpose. Customers will not listen to his explanations or denials, and unless he can get relief in a court of equity, his business, which represents 20

13--Schonwald v. Ragains, 122 Pac. Rep. 203; 32 Okla. 223.

14-Standard Oil Co. v. Doyle, 118 Ky. 662.

15-Graham v. St. Charles St. R. Co., 47 La. Ann. 214.

16-Robison v. Texas Pine Land Ass'n, (Tex. Civ. App.), 40 S. W. Rep. 843.

17-Drake Hdw. Co. v. WroughtIron Range Co., 78 N. Y. Supp. 1114; Economist Furnace Co. v. Wrought Iron Range Co., 86 Fed. Rep. 1010.

18-Continental Ins. Co. v. Board of Fire Underwriters, 67 Fed. Rep. 310.

19-Rourke v. Elk Drug Co., 75 N. Y. App. Div. 145.

years of effort, may be entirely ruined by a competition which is malicious and unfair." 20

It is the general rule that a notice warning the public or specific dealers or users of a suit for patent infringement is not actionable unless it appears that the notices were not given in good faith, or that they were entirely without foundation in the scope of the defendant's patent.21 The determination of the question of bona fides in the making of such threats is obviously of great difficulty at times. "The question whether the patent owner is acting in good faith in advertising his claims to the manufacturer's customers by circulars or letters can seldom be determined from the contents of the communication alone, and, like all questions of intent, must gen

20-Dittgen V. Racine Paper Goods Co., 164 Fed. Rep. 85; affirmed 96 C. C. A. 433; 171 Eed. Rep. 631 (C. C. A. 7); Judge Blodgett stated the rule more fully in an early case: "The proof in this case also satisfies me that these threats made by defendants were not made in good faith. The proof shows that defendants brought three suits against Emack's customers, for alleged infringement of the Goodrich patent by selling the Emack slates; that Emack assumed the defense in these cases, and, after the proofs were taken, and the suits ripe for hear ing, the defendants voluntarily dismissed them, the dismissals being entered under such circumstances as to fully show that the defendants knew that they could not sustain the suits upon their merits; that said suits were brought in a mere spirit of bravado or intimidation, and not with the bona fide intent to submit the question of infringement to a judicial decision.

"The effect of the circulars sent out by the defendant Kane certain

ly must have been to intimidate dealers from buying of the complainant, or dealing in slates of his manufacture, because of the alleged infringement of the Goodrich patent. No business man wants to incur the dangers of a lawsuit for the profits which he may make as a jobber in handling goods charged to be an infringement of another man's patent. The inclination of most business men is to avoid litigation, and to forego even certain profits, if threatened with a lawsuit which would be embarrassing and vexatious, and might mulet them in damages far beyond their profits; and hence such persons, although having full faith in a man's integrity, and in the merit of his goods, would naturally avoid dealing with him for fear of possibly becoming involved in the threatened litigation." Emack v. Kane, 34 Fed. Rep. 44.

21-Clip Bar Mfg. Co. v. Steel Protected Concrete Co., 209 Fed. Rep. 874; United Electric Co. v. Creamery Package Mfg. Co., 203 Fed. Rep. 53; Everett Piano Co. v. Bent, 60 Ills. App. 372; Aronson v. Orlov, 228 Mass. 1, 116 N. E. Rep. 951; Edwards v. Buffalo Specialty Co., 234 Mass. 521, 125 N. E. Rep. 624

erally be determined by the extrinsic facts." 22 The continued. circulation of threats, coupled with failure to bring a suit to determine the questions of the validity of the patent and its alleged infringement are jointly considered as controlling evidence that the threats are not made in good faith.23

§ 159. Private actions for damages under the federal antitrust acts. The Sherman act (July 2, 1890, 26 Stat. L. 209, ch. 647) provides:

"§ 7. Any person who shall be injured in his business or property by any other person or corporation by reason of anything forbidden or declared to be unlawful by this act, may sue therefor in any Circuit Court of the United States in the district in which the defendant resides or is found, without respect to the amount in controversy, and shall recover three-fold the damages by him sustained, and the costs of suit, including a reasonable attorney's fee."

The cases arising under this section, so far as reported, are less than 60 in number, and but a small percentage have resulted in judgments for the plaintiff. But the section has been interpreted and enforced according to its terms, both as to entry of judgment for treble the amount of the verdict, and the addition of an amount fixed by the trial court as a reasonable attorney's fee.24

The right of action depends upon the fundamental question whether the acts complained of come within the condemnation of the act.25 Next it must appear that the plaintiff has been injured in person or property by reason of the illegal contract or combination.20

The following plaintiffs have been held entitled to maintain the action. One who has, by reason of the agreement and combination of the defendants, been compelled to pay an

22-Wallace, J., in Adriance, Platt & Co. v. National Harrow Co., 58 C. C. A. 163; 121 Fed. Rep. 827, 829 (C. C. A. 2).

23-Electric Renovator Mfg. Co. v. Vacuum Cleaner Co., 189 Fed. Rep. 754.

24-Montague & Co. v. Lowry, 193 U. S. 38; 48 L. Ed. 608; affirm

ing 115 Fed. Rep. 27; 52 C. C. A. 621; 63 L. R. A. 58.

25- Whitwell v. Continental Tobacco Co., 125 Fed. Rep. 454; 60 C. C. A. 290; 64 L. R. A. 689. 26-Monarch Tobacco Works v. American Tobacco Co., 165 Fed. Rep. 774.