in the name that the owners of the vessels so used were enjoined from using the name when the shippers transferred their business to other vessels, the property of other ship-owners.54

One who is merely a forwarding agent may be enjoined. In an English case a firm of forwarding agents in London received from foreign correspondents several packages of cigars bearing forged brands. They were enjoined, but costs were not assessed against them because they had, prior to suit, given the makers of the brands so counterfeited full information as to the consignees and offered to return the cigars to the consignors or to erase the brands.55

The managers of an infringing corporation, who are themselves substantially the corporation, are properly joined as co-defendants with the corporation in a bill to restrain the infringement.56 The directors of an infringing corporation may be joined as co-defendants with it, where they have personally directed the infringement.57

The usual injunction against a corporation runs in terms against the officers, agents, servants and employes as well. Such an injunction is no bar to a subsequent application for injunction against such officers or others as individuals. Upon such an application it has been said: "The theory is that an injunction against the company bound its officers, agents and servants. That is true enough, but it was within the power of the defendants to dissolve the injunction, so far as they were concerned, by resigning, and thus ceasing to be officers, agents or servants of the enjoined company. Against their personal acts there could be no absolute protection except a personal injunction." 58

Servants, agents, and employes generally, may be joined as defendants; they are personally liable to injunction.59

American agents of foreign houses will be enjoined from selling counterfeit or imitation goods received from their principals. The same rule obtains in regard to English61 or Australian62 agents of foreign principals, and in regard to commission merchants.63

The principal is, of course, liable for the acts of his servants or agents, whether or not he can be shown to have knowledge of those acts.64

Difficulty arises in considering the rights and liabilities of innocent parties through whose hands counterfeit goods pass in transit, who hold them only as bailees and have no actual or imputed knowledge of their fraudulent nature. In the case of wharfingers so situated, who offered to act in regard to falsely marked wine in their possession as the court might direct, but asked to have their charges provided for, the court ruled that they were entitled to a lien upon the wine for their charges; that plaintiffs must pay defendant's costs; and if the plaintiffs had any lien for their own costs as against the wine, it must be subject to the lien of the wharfingers for their charges.65

An innocent mortgagee of wines bearing a simulated mark was held to have a valid lien thereon, and it was directed that the spurious marks should be effaced and the wines delivered to him.66

In no case, however, will relief in equity stop short of protecting the owner of a trademark of which imitations or counterfeits are found in the hands of a common carrier or ware

logg (1), 7 Fed. Rep. 721; Sawyer v. Kellogg (2), 9 Fed. Rep. 601.

60-Carbolic Soap Co. v. Thompson, 25 Fed. Rep. 625; Roberts v. Sheldon, 8 Biss. 398; Fed. Case No. 11916.

61-Siegert v. Ehlers, Seb. 432; Siegert v. Findlater, L. R. 7 Ch. D. 801; Farina v. Cathery, L. J. N. C. 1867, p. 134.

62-Siegert v. Lawrence, 11 Vict. L. R. 47.

63-Coats v. Holbrook, 2 Sandf. 586; Cox, 20; Twentsche Stoom Bleekery Goor v. Ellinger, 26 W. R. 70.

64-Low v. Hart, 90 N. Y. 457; Atkinson v. Atkinson, 85 L. T. Jour. 229; Twentsche Stoom Bleekery Goor v. Ellinger, 26 W. R. 70; Tonge v. Ward, 21 L. T. N. S. 480.

65-Moet v. Pickering, L. R. 6 Ch. D. 770; L. R. 8 Ch. D. 372. 66-Ponsardin v. Peto, 33 Beav.

67

houseman. It is the duty of the bailee so situated to give the owner of the trademark full information in regard to the goods which are or have been in his hands by virtue of the bailment, and where he refuses so to do, even after the goods have gone beyond his control, it has been held that a bill will lie against him to compel discovery.cs

If, on the other hand, the bailee gives the owner of the mark full information, he will be allowed costs if, notwithstanding his disclosures, proceedings are instituted against him.69 The wrongs of which this book treats being torts, and all participants in torts being principals, a person who assists in conducting an unfair competition by furnishing fraudulent packages or labels is liable for the injury resulting to the plaintiff from the unfair competition.70

§ 177. Forms of action. The most usual form of civil action to secure redress for trademark piracy in this country is by bill in equity, praying for an injunction, discovery, account of profits, and damages. The remedy at law is by an action on the case, for deceit; that form of action being both the form known to the common law and that prescribed by the Act of March 3, 1881.

An action of deceit may be brought by a purchaser who has been deceived by the vendor of the fraudulent article, but such actions are seldom, if ever, brought, and are practically unheard of.

One action in a federal court will lie for the infringement of a patent and the infringement of a trademark, where the trademark and the patent were both infringed together, and

67-Ponsardin v. Peto, 33 Beav. 642; Hunt v. Maniere, 34 Beav. 157; Del Valle v. Mayer, Seton (4th ed.), 236; Seb. 326; Rivero v. Norris, Seton (4th Ed.), 236; Seb. 299; Moet v. Pickering, L. R. 6 Ch. D. 770; L. R. 8 Ch. D. 372; Upmann v. Elkan, L. R. 12 Eq. 140.

68-Orr v. Diaper, L. R. 4 Ch. D. 92. See also Carver v. Pinto Leite, L. R. 7 Ch. D. 90; 41 L. J. Ch. 92; 25 L. T. N. S. 722; 20 W. R. 134.

69-Upmann v. Currey, 29 Sol. J. 735; Upmann v. Forester, L. R. 24 Ch. D. 231; Moet v. Pickering, L. R. 8 Ch. D. 372; Upmann v. Elkan, L. R. 12 Eq. 140.

70-Hildreth v. Sparks Mfg. Co., 99 Fed. Rep. 484.

71-Jaros Underwear Co. V. Fleece Underwear Co., 60 Fed. Rep. 622. See p. 431, post.

the same rule applies where a publication infringes both a trademark and copyright.72

73a

Accordingly a charge of unfair competition may be embraced in a bill for patent infringement,73 or trademark infringement," and a single bill of complaint may charge the infringement of a design patent, a mechanical patent, and a trademark or tradename.74

The objection that a bill is multifarious can not be raised for the first time upon appeal.75

72-Harper v. Holman, 84 Fed. Rep. 222.

73-Dunlap v. Willbrandt Surgical Mfg. Co., 80 C. C. A. 575; 151 Fed. Rep. 223; Germer Stove Co. v. Art Stove Co., 80 C. C. A. 9; 150 Fed. Rep. 141; Daniel O'Donnell v. Riscal Mfg. Co., 228 Fed. Rep. 127, 130.

73a-Samson Cordage Works v. Puritan Cordage Mills, 211 Fed. Rep. 603, 608, 609, 128 C. C. A. 203, L. R. A. 1915F, 1107, C. C. A. 6; 0. & W. Thum Co. v. Dickinson, 245 Fed. Rep. 609, 616, C. C. A. 6.

74-Wagner Typewriter Co., v. F. S. Webster Co., 144 Fed. Rep. 405. See as to joinder, how federal jurisdiction must attach to each cause of action, Shrauger & Johnson v. Phillip Bernard Co., 240 Fed. Rep. 131. For the history of the practice see Miller Rubber Co. v. Behrend 242 Fed. Rep. 515, 517, C.

C. A. 2.

75-Miller Rubber Co. v. Behrend, 242 Fed. Rep. 515, 517, C. C. A. 2.

CHAPTER XI.

THE CRIMINAL PROSECUTION-FEDERAL AND STATE.

§ 178. The Act of 1876.-The prosecutions under which the decision styled the Trademark Cases1 was rendered were instituted under the Act of Congress of 1876. This was a penal act applicable to infringers of trademarks registered under the registration act of 1870. Mr. Justice Miller says, in the conclusion of his opinion: "While we have, in our references in this opinion, had mainly in view the Act of 1870, and the civil remedy which that act provides, it was because the criminal offenses described in the Act of 1876 are, by their express terms, solely referable to frauds, counterfeits, and unlawful use of trademarks which were .registered under the provisions of the former act. If that act is unconstitutional, so that the registration under it confers no lawful right, then the criminal enactment intended to protect that right falls with it." 2

After the enactment of the Act of March 3, 1881, some able lawyers inclined to the belief that the Act of 1876 was by the passage of a valid registration act given new life, or, as stated by one eminent jurist: "This is not an instance of revival; for the penal act was not dead, but simply dormant. Its sleep was ended by the birth of the Act of 1881. No words were required in the latter to set the penal law in motion. That which is implied in a statute is just as much a part of it as that which is expressed. Nor is it repealed by the civil Act of 1881." 3

This reasoning, however, has not been followed by the courts. The proposition was first submitted to Judge Thayer, but in his opinion he expressly refrained from deciding it, sustaining demurrers to indictments based upon the Act of 1876 3-Browne, Trademarks (2d ed.),

1-100 U. S. 82.