for their accommodation and safe-keeping. In Missouri, where this condition prevails, the St. Louis Court of Appeals has recommended the preservation of the brands or labels as a part of the record on appeal.28

The federal courts, however, afford every facility required for the care of exhibits and the following rule is in effect in all the federal circuit courts of appeals:

"1. Models, diagrams and exhibits of material forming part of the evidence taken in the court below, in any case pending in this court on writ of error or appeal, shall be placed in the custody of the marshal of this court at least ten days before the case is heard or submitted.

2. All models, diagrams and exhibits of material placed in the custody of the marshal for the inspection of the court on the hearing of a case must be taken away by the parties within one month after the case is decided. When this is not done, it shall be the duty of the marshal to notify the counsel in the case, by mail or otherwise, of the requirements of this rule, and, if the articles are not removed within a reasonable time after notice is given, he shall destroy them or make such other disposition of them as to him may seem best." 29

It is frequently expedient to annex to the order of injunction specimens of the marks used by the defendant.30

[§ 206 Discovery. The resistance of discovery is usually met with by complainants in trademark causes.

Lord Romilly compelled a defendant to make a full discovery of all his sales, the prices, profits realized and the names of the purchasers, notwithstanding the objection of the defendant that he would thereby disclose his business secrets;31 and full discovery has been compelled in other cases.32 The power to compel

28-Alden v. Gross, 25 Mo. App. 123. And in this connection see Mahler v. Sanche, 223 Ills. 136; 79 N. E. Rep. 9, reversed because of insufficient facts in the record as to similarity of instruments dealt in by the respective parties. The facts are embodied in Sanche v. Mahler, 219 Ills. 349; 76 N. E. Rep. 485. 29-The above rule is numbered rule 34 in each court of appeals

but that of the seventh circuit, where it is numbered rule 32.

30-Hansen v. Siegel-Cooper Co. (1), 106 Fed. Rep. 690, 691.

31-Howe v. McKernan, 30 Beav.

547.

32-Leather Cloth Co. v. Hirschfeld (2), 1 H. & M. 295; Seb. 224; Orr v. Diaper, L. R. 4 Ch. D. 92; 46 L. J. Ch. 41; Seb. 519.

discovery is inherent in equity, but is not vested in courts of law in the absence of statutory enactment.33

"Equitable jurisdiction will not attach for discovery simply, except in aid of a suit at law.” 34

In actions at law production of books and papers is fully provided for, in federal practice, by sec. 724 of the Revised Statutes. It has been held that inspection of books or writings may be ordered to be made before the trial.35 Its provisions, when affording an adequate remedy, preclude resorting to equity to compel discovery, 36 and render the issuance of a subpoena duces tecum unnecessary.37

In equitable proceedings discovery will not be enforced when it may tend to incriminate the person against whom discovery is sought,38 or to disclose trade secrets,39 and the same rule applies to the enforced production of books and papers by such persons.40 Subject to these restrictions, discovery of material facts will be compelled.41

When a defendant professes to answer, he must answer fully. If he desires protection against discovery, he must seek such protection by plea.42

§ 207. Evidence of recognition by others of plaintiff's right to the mark. The rule is well settled that a former adjudication establishing a trademark, where there has been an adjudication after a bona fide contest on the merits, and the same issues

33-Colgate v. Compagnie Francaise, 23 Fed. Rep. 82-85.

34-Colt, J., in Lord v. Whitehead & Atherton Machine Co., 24 Fed. Rep. 801. Discovery is now provided for by new equity rule 30, which see, post, § 211.

35-Lucker V. Phoenix Assurance Co., 67 Fed. Rep. 18; Exchange Bank v. Wichita Cattle Co., 61 Fed. Rep. 190; United States v. National Lead Co., 75 Fed. Rep. 94.

36-Washburn & Moen Mfg. Co. v. Freeman Wire Co., 41 Fed. Rep. 410; Paton v. Majors, 46 Fed. Rep.

210. But see Colgate v. Compagnie Francaise, 23 Fed. Rep. 82.

37-Kirkpatrick v. Pope Mfg. Co., 61 Fed. Rep. 46.

38-Byass v. Sullivan, 21 How. Pr. 50; Cox, 278.

39-See ante, Chapter VII. and Dobson v. Graham, 49 Fed. Rep. 17. 40-Ibid. See also Union Paper Collar Co. v. Metropolitan Collar Co. (Ltd.), 3 Daly, 171.

41-Benbow v. Low, L. R. 16 Ch. D. 93; Bvass v. Sullivan, 21 How. Pr. 50; Cox, 278.

42-Howe V. McKernan, 30 Beav. 547; Slater v. Banwell, 50 Fed. Rep. 150.

were presented as in the later suit, is of persuasive if not binding force in a later case. 43 But a mere showing that the claimant of the trademark has by threats of legal prosecution compelled or induced others to enter into undertakings to desist from the use of the name, or that others have submitted to injunctions without a contest, is very slight, if any, evidence of the plaintiff's right to use the mark. In a recent case before the House of Lords, Lord Davey said in regard to evidence of cases in which other persons had submitted to injunctions and had paid the costs: "That does not appear to me to be very strong evidence in favor of the pursuers. Of course, a shop-keeper or a person in that position would hesitate a long time before he incurred the expense, which in the case of a trademark or in a patent case is not slight, of defending an action of this character; probably the value to him of the trade he would lose would not in any way compensate for the risk he would incur. Therefore, as evidence of the fact, I do not attach much importance to those cases. An interlocutory decree of one court appears to be entitled to but little weight in a proceeding before another.45

77 44

§ 208. Contempts.-It is provided by sec. 725 of the United States Revised Statutes that the courts of the United States shall have the power to punish, "by fine or imprisonment, at the discretion of the court, contempt of their authority; provided, that such power to punish contempts shall not be construed to extend to any cases except the misbehavior of any person in their presence, or so near thereto as to obstruct the administration of justice, the misbehavior of any of the officers of said courts in their official transactions, and the disobedience or resistance by any such officer, or by any party, juror, witness, or other person,

43-Moxie Nerve Food Co. v. Beach, 33 Fed. Rep. 248; Symonds v. Greene, 28 Fed. Rep. 834; La Republique Francaise v. Saratoga Vichy Springs Co., 99 Fed. Rep. 733. But a decision of the English high court of chancery adverse to the claimant of a mark is not a bar to a suit for infringement of the mark brought in the United

States. City of Carlsbad v. Kutnow, 68 Fed. Rep. 794. And to the same effect see Hohner V. Gratz, 50 Fed. Rep. 369.

44-Cellular Clothing Co. V.

Maxton, L. R. (1899) A. C. 326-346. 45 Walter Baker & Co. v. Sanders, 80 Fed. Rep. 889; 26 C. C. A. 220.

to any lawful writ, process, order, rule, decree, or command of said courts."

Contempt of court is a specific criminal offense. 46 Imposition of a fine for contempt is a judgment in a criminal case. It has been held that a plaintiff who circulates matter prejudicial to the defense of a pending action for trademark infringement is guilty of a contempt, 48 as has also been held of a plaintiff who published a false and perverted construction of the purpose and effect of an injunction.49

By far the greater number of applications to commit for contempt in the class of cases under consideration are based upon the failure of the party enjoined to comply with the injunctive decree. Where no attempt has been made toward compliance with the decretal order, the respondent is, of course, in contempt and liable to commitment, like any other contemnor.50 But where some effort has been made to comply with the order, but to an extent not satisfactory to the complainant, an issue of fact is raised for the determination of the trial court, and as a rule its findings and judgment will not be reviewed on appeal;51 and where the contempt proceedings are referred, the court is reluctant to disturb the findings of fact made by the referee.52

It is a contempt, after decree, to offer the infringing goods for sale, even though no sale is actually effected;53 nor does it exempt the defendant from commitment to show that he intended to comply with the decree, if in fact he has not complied with it.54 But wherever the court determines that the defendant has so altered his marks or packages that there is no longer any danger of the public mistaking his goods for those of the plain

46-Fischer v. Hayes, 6 Fed. Rep.

63-68.

47-New Orleans v. Steamship Co., 20 Wall. 387-392; 22 L. Ed. 354; Butler V. Fayerweather, 91 Fed. Rep. 458; 33 C. C. A. 625; 63 U. S. App. 123.

48-Coats v. Chadwick, L. R. (1894) 1 Ch. D. 347.

49-Gorham Mfg. Co. v. EmeryBird-Thayer Dry Goods Co., 92 Fed. Rep. 774-779.

50-Rodgers v. Nowill (2), Cox, Manual, No. 115; 3 DeG. M. & G. 614.

51-Devlin v. Devlin, 69 N. Y. 212; Cox, Manual, No. 463. 52-Hennessy v. Budde, 82 Fed. Rep. 541.

53-Marcovitch v. Bramble, Wilkins & Co., Cox, Manual, No. 595. 54-Devlin v. Devlin, 69 N. Y. 212; Cox, Manual, No. 463.

tiff, he will be discharged.55 Where, however, the change is only sufficient to avoid the letter of the decree, and the defendant's mark or package is still calculated to promote deception, under the English practice the injunction may be enlarged upon the hearing of the contempt procedings so as to cover the new fraud, even though the motion to commit must be refused.56 The rulings of the courts in this regard have taken a wide range. There have been cases in which the court has declined to commit upon the defendant making an offer to devise such changes in his mark as would meet with the approval of the court,57 and others where the court has directed the defendant to make such changes with the alternative of being committed.58 Where an injunction is in part mandatory and in part prohibitive, and the mandatory portion is suspended by an appeal, the court can not punish the defendant for contempt for the violation of such mandatory portion, although his act is a joint violation of both portions. 59

60

And a defendant who sells a stock of bottles, labels and wrappers to a third party, after a decree enjoining him from dealing in an infringing liquor put up in the bottles, under the labels and enclosed in the wrappers, under circumstances indicating that it was for the purpose of enabling the purchaser to supply defendant's former customers with the infringing goods, is guilty of contempt. One who is enjoined from preparing, putting up, selling, offering or advertising for sale, any medicinal beverage made from fermented milk under the name of "Matzoon" is guilty of contempt if he aids another in doing the forbidden acts, as the agent or servant of the other.61 Where the injunctive order runs against agents, servants and employes "there is no restraint laid upon the agent, servant, or employe personally, but merely as the agent, servant, or employe of the enjoined defendant.' 62 One enjoined from using a firm name, who con

55-Swift v. Dey, 4 Robertson, 611; Cox, 319.

56-Cartier v. May, Cox, Manual, No. 200.

57-Croft v. Day (2), Cox, Manual, No. 77.

58-Rodgers v. Nowill (2), Cox, Manual, No. 115; 3 DeG. M. & G. 614.

59-Schwarz v. Superior Court, 111 Cal. 106.

60-Societe Anonyme v. Western Distilling Co., 42 Fed. Rep. 96. 61-Dadirrian V. Gullian, 79 Fed. Rep. 784.

62-Ibid; citing Slater v. Mer ritt, 75 N. Y. 268.