effect. The first section of that act provides that "In all cases in which any relief or remedy within the jurisdiction of the said courts of chancery respectively is or shall be sought in any cause or matter instituted or pending in either of said courts, and whether the title to such relief or remedy be or be not incident to or dependent upon a legal right, every question of law or fact, cognizable in a court of common law, on the determination of which the title to such relief or remedy depends, shall be determined by or before the same court."

It is important to bear this enactment in mind in examining the earlier English trademark cases, as it explains the many failures of equity to act, or the deferring of relief by injunction until the determination of the right to the use of the trademark by trial at law.

Equity first extended its beneficent protection to the owners of trademarks because of the inadequacy of the remedy at law. This inadequacy arose from the absence of the power in courts of law to act in personam-the injunctive power. But there were other reasons why cognizance of trademark causes belonged peculiarly to equity. Prominent among these was the power of the chancellor in granting discovery-the right to discovery being, as Mr. Bispham says, one of the peculiar advantages of a complainant in equity, enjoyed by him in every case in which he was entitled to come into chancery, either for the purpose of asserting an equitable title, or setting up an equitable right or applying an equitable remedy;5 though the right was always conditioned by the necessary restriction that the person brought in on discovery need not disclose matters tending to incriminate him or expose him to penalty or forfeiture. And there was yet another reason why this litigation found its way to the chancellor. One of the most ancient forms of action at the common law was the action of account. "But," in the words of Mr. Justice Story, "the modes of proceeding in that action, although aided from time to time by statutable provisions, were found so very dilatory, inconvenient and unsatisfactory, that as soon as courts of equity began to assume jurisdiction in matters of account, as they did at a very early period, the remedy at law began to decline; and although some efforts have been made in

5 Bispham, Equity (4th ed.), p. 600, § 557.

modern times to resuscitate it, it has in England fallen into almost total disuse." So, when it became apparent that an account of profits must be sought as, at least, the basis of a proper money judgment against an infringer, the parties litigant were forced to enter the domain of equity. But, above all, there was that power in equity described by Blackstone as the power "to detect latent frauds and concealments, which the process of the courts of law is not adapted to reach."7 While not exclusive of the courts of law, the courts of equity had original, independent and inherent jurisdiction to relieve against every species of fraud.8

The remedy sought governs largely the question of jurisdiction in equity. If a mere accounting is sought for, it is insufficient to vest such jurisdiction, for the account must be incidental to some other equitable relief." Jurisdiction in equity will not attach for discovery simply, except in aid of a suit at law; the party applying must invoke some other distinct equitable ground, 10

§ 186. The bill in equity.-The new equity rules provide, as to the bill of complaint, as follows:

25.

BILL OF COMPLAINT-CONTENTS.

Hereafter it shall be sufficient that a bill in equity shall contain, in addition to the usual caption:

First, the full name, when known, of each plaintiff and defendant, and the citizenship and residence of each party. If any party be under any disability that fact shall be stated. Second, a short and plain statement of the grounds upon which the court's jurisdiction depends.

Third, a short and simple statement of the ultimate facts upon which the plaintiff asks relief, omitting any mere statement of evidence.

6-Story, Equity Jurisprudence (13th Ed.), § 442.

92.

7-1 Blackstone, Commentaries,

8-Kerr, Fraud and Mistake (Bump's Ed.), p. 43.

9-Root v. L. S. & M. S. Rail

way Co., 105 U. S. 189; 26 L. Ed. 975; Van Raalt v. Schneck, 159 Fed. Rep. 248, 251; affirmed in Van Raalt v. Schneck, 95 C. C. A. 672; 170 Fed. Rep. 1021.

10-Lord v. Whitehead & Atherton Machine Co., 24 Fed. Rep. 801.

Fourth, if there are persons other than those named as defendants who appear to be proper parties, the bill should state why they are not made parties-as that they are not within the jurisdiction of the court, or can not be made parties without ousting the jurisdiction.

Fifth, a statement of and prayer for any special relief pending the suit or on final hearing, which may be stated and sought in alternative forms. If special relief pending the suit be desired the bill should be verified by the oath of the plaintiff, or someone having knowledge of the facts upon which such relief is asked.11

The bill should show: (1) The ownership of the trademark, describing it and the mode of its application to merchandise. (2) The registration of that trademark under the act (if registered), and the value of the trademark. (3) The facts in relation to the infringement of the trademark by the respondent. This part of the bill differs from the corresponding part of the declaration at law in this, that it need not be averred that the defendant had guilty knowledge, 12 although that fact should be averred where it is true. Where profits are sought to be recovered there should be a direct averment that such profits have been realized by the defendant on account of the infringement.

In every case where the value of the complainant's trademark is over three thousand dollars, that fact should be pleaded,13 as a jurisdictional safeguard, independent of the fact of regis tration under the act of congress. A matter of paramount importance where the parties are citizens of the same state is an

(as the case may be); and, subject thereto, an averment of the performance or occurrence of all conditions precedent necessary for the case of the plaintiff or defendant shall be implied in his pleading."

As it has been repeatedly held that the recital of conditions precedent is not a "mere statement of evidence," and as the rule of stating ultimate facts has always obtained, it is the writer's opinion that the third paragraph of Rule 21 does not relieve the pleader of the necessity of pleading such conditions precedent, precisely as heretofore.

no

The fourth paragraph embodies the substance of former Rule 22. The fifth paragraph makes reference to the prayer for process of subpoena, specified in former Rule 23; the clerk is now required by Rule 12 to issue the subpœna as of course, rendering the prayer therefor unnecessary.

That the bill need state only the ultimate facts, see Wilson v. American Ice Co., 206 Fed. Rep. 736.

Where an allegation that one defendant had abetted the other in infringing plaintiff's trademark, without allegation of any facts support

ing that conclusion, the allegation was treated as a nullity. Gallagher Transfer & Storage Co. v. 0. K. Storage & Transfer Co. (La.), 92 So. Rep. 317.

That this rule prescribes what shall be sufficient to sustain a bill, but is not an absolute direction as to what the bill shall contain, see Pittsburgh Water Heater Co. v. Beler Water Heater Co., 222 Fed. Rep. 950. As to stating more than one cause of action, while avoiding repetition by cross-referencing, see Maxwell Steel Vault Co. v. National Casket Co., 205 Fed. Rep. 515. That no prayer for process is necessary, or waiver of answer under oath, see Pittsburgh Water Heater Co. v. Beler Water Heater Co.,

supra.

For further decisions under Rule 25 see Hopkins' Equity Rules, 4th Edition.

12-McLean v. Fleming, 96 U. S. 245; 24 L. Ed. 828.

13-Glen Cove Mfg. Co. v. Ludeling, 22 Fed. Rep. 823. A bill is sufficient in this regard which recites that "the amount in controversy exceeds the sum of $3,000." Griggs, Cooper & Co. v. Erie Preserving Co., 131 Fed. Rep. 359, 360.

averment that the complainant uses his trademark in interstate commerce or commerce with foreign nations or with the Indian tribes,1 and under the Act of 1881 it had to be averred and proven in such a case that the defendant had used the infringement in commerce with foreign nations or with the Indian tribes.15 Where the parties are of diverse citizenship no such averment is necessary." 16 Whatever allegations are essential must be made positively and not on information and belief." "On divers days and at divers places" has been held to be a sufficient allegation as to time and place of infringement, the bill alleging both to have been within the jurisdiction of the court.18

In a bill for unfair competition it has been held that to charge the defendant's acts as being "calculated to deceive" is insufficient, failing to charge him with intent to deceive, and rendering the bill demurrable.19

The prayer for relief should be both special and general, under the directions given in the twenty-fifth federal equity court. The special portion of the prayer should ask for a preliminary injunction (if it is desired), a perpetual injunction, for an account of the defendant's profits, and for an assessment of the damages sustained by the complainant by reason of the injuries he has sustained through the loss of reputation of his trademark or otherwise. A bill is not demurrable on the ground that it prays for damages in addition to profits, because both can be recovered where fraudulent intent is established.20

It is reversible error to decree damages, but not profits, in a case of infringement of a valid and registered trademark.20a The distinction between profits and damages is well settled.20b But punitive or exemplary damages should not be prayed for, as they

14-Ryder v. Holt, 128 U. S. 525; 32 L. Ed. 529; Luyties v. Hollender (1), 21 Fed. Rep. 281 22 Blatchf. 413; Schumacher v. Schwenke (1), 26 Fed. Rep. 818; Schumacher v. Schwenke (2), 36 Off. Gaz. 457; Gravely v. Gravely, 42 Fed., Rep. 265.

15-Gravely v. Gravely, 42 Fed. Rep. 265; 52 Off. Gaz. 1538; Warner v. Searle & Hereth Co., 191 U. S. 195; 48 L. Ed. 145.

16-Hennessy v. Braunschweiger & Co., 89 Fed. Rep. 669.

17-Gaines & Co. v. Sroufe, 117 Fed. Rep. 965; Helmet Co. v. Wm. Wrigley, Jr., Co., 245 Fed. Rep. 824, 826.

18-Charles E. Hires Co. v. Simpkins, 179 Fed. Rep. 1012.

19-Industrial Press v. W. R. C. Smith Pub. Co., 164 Fed. Rep. 842; 90 C. C. A. 604.

20-El Modello Cigar Co. v. Gato, 25 Fla. 886, 915; 7 So. Rep. 23; Benkert v. Feder, 34 Fed. Rep. 534. Under the Kentucky practice a plaintiff was compelled to elect between profits and damages. E. H. Taylor, Jr., & Sons Co. v. Taylor, 27 Ky. L. Rep. 625; 85 S. W. Rep. 1085.

20a-M. B. Fahey Tobacco Co. v. Senior, 252 Fed. Rep. 577, C. C. A. 3. 20b-Forster Mfg. Co. v. CutterTower Co., 215 Mass. 136, 101 N. E. Rep. 1083; Summerfield Co. v. Prime Furniture Co., Mass. 136 N. E. Rep. 396.