Tubular Heating & Ventilating Co. v. Mt. Vernon Furnace & Mfg. Co. , 2 F.2d 982 ( 1924 )

LINDLEY, District Judge

(after stating the facts as above). An injunction is not the appropriate remedy for past infringement of a trade-mark, and is to be used only for the prevention of further injury, when such injury .is actually threatened. If a defendant has in good faith ceased infringement before suit brought, and the plaintiff has had full opportunity to learn of said action, and if the court is convinced that further infringement is not intended, or is not treasonably to be apprehended,’it should refuse the injunction, and dismiss the bill. Kennicott Water Softener Co. v. Bain, 185 F. 520, 107 C. C. A. 626 (C. C. A. 7th Circuit).

The only question in the present case is whether, assuming that the trade-mark of the plaintiff is valid, that the defendants have infringed and that the infringement had ceased before the bill was filed, which is clearly proved, the plaintiff, when the bill was filed, did have any reasonable ground to believe that the infringement would be repeated. The defendant corporation left nothing undone that a reasonably prudent person might have done to show that it had actually abandoned the use of the‘word “Master,” and intended never to use the same again. It advised it's traveling men, its dealers, and the public generally, that it had abandoned the word “Master,” and that it had substituted therefor títe word “Vernois,” and it-placed in the trade journals full-page advertisements, stating the same facts, and giving the reason for such action. It not only abandoned the word “Master,” but it immediately began to endeavor to create good will and value in the trade-name “Vernois.” True it is that the then attorney for the defense did not at once dismiss the appeal, but the correspondence between the attorney and the defendant shows, beyo.nd peradventure, that he had been told to dismiss the appeal, and the defendant’s officers believed that he had done so, and had no knowledge to the contrary until after the decision of the Examiner had been affirmed by the Assistant Commissioner of Patents.

Had the plaintiff believed that the appeal was being prosecuted, it might have had some reason to believe that further infringement was intended. But it was advised in writing of the defendants’ various acts, which were not possibly consistent with any intention other than the absolute and final abandonment of the trade-mark “Master.”

The fact that a dealer in Philadelphia may have claimed the right to sell furnaces bought from the defendant under the name “Master” was not discovered by plaintiff until after the bill was filed. Furthermore, it was shown that the defendants had no control over said dealer, and that, as soon as his actions were brought to their attention, they forwarded new plates with the name “Vernois” to be placed upon said furnaces. The court therefore is inevitably driven to the conclusion that, at the time the present bill of complaint was filed, there was no infringement being committed by the defendants, no threat of further infringement, and no reasonable ground for apprehension upon the part of the plaintiff that there would be further infringement. Therefore there was no irreparable injury. Under the case cited above and numerous decisions, this bill cannot be retained for the purpose of granting an injunction.

The plaintiff seeks also an accounting for damages, but a bill in equity for a naked accounting for profits and damages against an infringer cannot be sustained. Root v. Railway Co., 105 U. S. 189, 26 L. Ed. 975. If plaintiff has suffered damages by action of defendant, there is a complete and adequate remedy at law. Van Raalt v. Schneck (C. C.) 159 F. 249, affirmed by C. A. A. for the 7th Circuit, 170 F. 1021, 95 C. C. A. 672.

It appears from what has been said that the defendants have been guilty of no eontempt of court by any violation of the temporary injunction heretofore issued. The actions of the dealer in Philadelphia were not the actions of tho defendants, and the defendants had no control over him. They are discharged from the rule, the temporary injunction is dissolved, and the bill is dismissed for want of equity.