author: WAY, District Judge.

text:
    THE HAMMITT L. ROBBINS.
    District Court, E. D. Virginia.
    April 1, 1931.
    Paul W. Kear, U. S. Atty., and H. H. Rumble, Asst. U. S. Atty., and Sp. Asst. to Atty. Gen., both of Norfolk, Va., for the United States.
    Howard M. Long, of Philadelphia, Pa., and A. L. Roper, of Norfolk, Va., for mortgagees (interveners).
   WAY, District Judge.

In this cause the United States of America filed its libel of information against the gas screw Hammitt L. Robbins seeking her condemnation and forfeiture and praying that all persons claiming any interest in the vessel be cited to appear and show cause why forfeiture should not be decreed as prayed.

The grounds upon which forfeiture is sought are briefly as follows: (1) That the Hammitt L. Robbins, having arrived from a foreign port or place and after its arrival within four leagues of the coast, permitted its cargo or a part thereof to be discharged before coming to a proper place for discharge and before obtaining a permit to discharge its cargo, contrary to sections 586 and1 587 of the Tariff Act of 1930' (19 USCA §§ 1586, 1587); (2) that said vessel at the time-of seizure was employed in another trade-from that for which she was licensed, contrary to section 4377 of the Revised Statutes (USCA, title 46, § 325); and (3) that the-vessel on or about February 6, 1931, arrived within four leagues of the coast of the United' States from a foreign port or place, to wit,, from some point on the high seas where she-had made contact with some vessel unknown- '■ to libelant and received from such vessel a cargo of foreign merchandise, and after her arrival within four leagues of the coast, and' before she had come to a proper place for the-discharge of such merchandise and before she-j had received a permit to unlade, did permit . a part of her cargo to be unladen contrary to-the provisions of section 586 of the Tariff Act of 1930.

In due time Frank T. Stowman, H. B. Stowman, and Lockwood W. Fogg, residents • of New Jersey, intervened and filed their libel and petition asserting a mortgage lien for $12,000 against the vessel, alleged to represent a part of the purchase price in a sale-of the vessel by them in December, 1930, to one Smith Hand of Leesburg, N. J., at the-price of $17,000, $5,000 of which it appears was paid in cash. It is alleged that the mortgage was duly executed and acknowledged by the mortgagor and on the day of the sale recorded in the office of the collector of customs • in Philadelphia. In support of these allegations a duly certified copy of the mortgage-with the usual notations thereon is filed as an ■exhibit with the intervening libel and petition. It is further shown that said Smith-Hand in January, 1931, sold the vessel to one Samuel Miller of Philadelphia, the latter sale-being made subject to the mortgage aforesaid, and that the bill of sale covering the lat- ■ ter transaction was also duly and promptly-recorded in the office of the collector of customs of Philadelphia.

The petition further set forth that the-debt secured by the mortgage was not due- and payable until March 26, 1931, that no ■ part of the debt has been paid, and paragraph 6 of the libel alleges: “That your li-bellants and petitioners had nothing to do • with the sale of said vessel by Smith Hand to the said Samuel Miller and they had no-reason to'believe that the said Samuel Miller would use or allow said vessel to be used for any unlawful business or in violation of any law of the United States, or for any purpose other than that allowed by her enrollment or license for the coasting trade, that they had no knowledge as to the said Samuel Miller, but in this connection aver that the said sale to him was made under and subject to the libellants and petitioners aforesaid mortgage.”

Exceptions were filed to the petition, challenging the validity of the defense of innocence of the mortgagees as well as challenging the jurisdiction of a eourt of admiralty over the claim asserted in the petition. These exceptions were not pressed at the trial, and the cause came on to be heard upon the pleadings and proofs and was fully argued both orally and by briefs.

The testimony and exhibits show that the Hammitt L. Robbins, a gas screw vessel of 48.66 gross, 39 net, tons, was licensed January 30,1931, for one year in the name of one Samuel Miller, for the purpose of carrying on the coasting trade and in order to obtain the license said Miller made oath, among oth•er things, that the vessel should not be used for any other employment than therein specified, or in any business or trade whereby the revenues of the United States might be defrauded. The vessel had carried a similar license prior to January 30, 1931. The Robbins was supposedly an oyster boat used in the oyster business. -

On February 6,1931, at about 5:30 p. m., the Robbins was located by Captain Moore and other members of the United States Coast Guard aground in or near Maehipongo channel about a mile from shore, on the Atlantic Ocean side of the Eastern Shore of Virginia, the point in. question being about twenty-eight miles north of Cape Charles. Her only occupant at that time was a Virginia state prohibition officer who had gone on her earlier in the day. The deck was loaded with oyster shells and she had aboard an ■oyster dredge and other paraphernalia, designed for use in oystering, thereby giving her all the appearances of a bona fide oyster •boat. Below deck, however, she was found to have a cargo consisting of 434 cases or bags and 9 kegs of spirituous liquors. Some of the eases or bags contained six quarts, but most of them apparently contained twelve quart or twenty-four pint, bottles of spirituous liquors bearing foreign labels. Specimens of these goods in ease as originally packed, and others unpacked, were introduced in evidence as exhibits. The liquors in the cases or bags were packed in heavy paper -cartons, each paper carton having around it a strong burlap bag. Each of the bottles exhibited was incased in a heavy corrugated paper wrapper. The bottles exhibited bore export labels and other printed matter indicating that all had been distilled and packed either in Edinborough, Scotland, or in Vancouver, or Marpole or Montreal, Canada.

About 3 or 3 o’clock a. m. on the same day that the Robbins was seized by the Coast Guard, one Smith, sleeping in his fishing vessel at Willis Wharf, Va., was aroused by two or three men who requested him to go down to the channel and save some men off a sunken boat. Smith agreed to go, but only one of the men accompanied him, the others going ashore at Willis Wharf. Smith describes his movements as follows:

“Q. Yes, just begin at the beginning and tell his Honor the whole story. A. I was at Willis Wharf aboard of my boat asleep and there was two or three men or four — I don’t know how many — come aboard my boat and asked me if I wouldn’t go down the channel and save some men off a sunken boat and, of course, I agreed to go and was only one man went with me. The rest got out on the wharf.
“Q. Only one man went with you? A. Yes, sir, and when we got where he thought the boat was, he said there was men aboard the sunk boat hollering for help, for somebody to save them, and, of course, I agreed to go and I didn’t think a thing until just before we got to where he thought the boat was and he told me that I needn’t worry, that I wouldn’t lose anything by the night’s work and,, of course, I knew there was something different from saving a man’s life and I told him, I said ‘Look, man, don’t get me in no trouble.’ He said ‘That is all right’. He said ‘I have got twelve brothers with me and they will take care of you,’ and he hauled his guns out. He didn’t put them on me but he hauled them out and let me know that I was in his' hands and, of course, I begged him to not get me in any trouble but still those men were in bad shape on the boat. The boat was sunk but he claimed that he had stolen the boat from ashore, been ashore in a small boat and stolen this gasoline boat.”

It further appears from Smith’s testimony that the sunken boat was found to contain from 75 to 125 eases or bags of whisky, and that under direction of the men, he carried the whisky ashore at Red Bank, it requiring two trips for that purpose; that after taking the whisky and the two men from the sunken boat and landing the whisky at Red Bank, the men then directed him to carry them to the Hammitt L. Robbins. On the way to the Robbins they had Smith stop at the sunken boat, take more liquor off, and then proceed to the Robbins, where they took a crew off the Robbins and landed them at Red Bank. The work was finished around 8 a. m. and Smith received for his services $75. While he could not say definitely what month or day of the month all of this occurred, Smith related occurrences which identified the occasion in such a way as to leave no reasonable doubt that it was the same day the Coast Guard seized the Robbins.

Smith further testified that the deck of the Robbins was loaded with oyster shells which "looked like they had been there all winter.” The Robbins and the sunken boat were about half a mile apart, the latter boat being nearer the shore, and Smith was directed by the same men to go on all of the trips described by him.

No permit was ever issued to the Robbins to discharge her cargo. The vessel was appraised at $4,000 and her cargo of liquors ar slightly over $16,000.

The only witness called by petitioners was Lockwood W. Fogg, one of the mortgagees and petitioners who testified that he owned a one-half interest in the mortgage. Fogg’s testimony was not contradicted and tends to establish the allegations of the petition relative to the mortgage of $12,000 against the Robbins; that he and his associate mortgagees had no connection with or knowledge of the illegal activities of the Robbins but were innocent thereof; and that their only interest in the Robbins was as mortgagees under the mortgage of December 27, 1930, securing a part of the purchase price to be paid to them by Smith Hand, the alleged purchaser. Fogg further testified that he had known Smith Hand to whom he and his associates sold the Robbins for three or four years, that Hand was in the oyster business and his reputation in the community in which he lived was excellent, but that he (Fogg) did not know Samuel Miller, the purchaser of the Robbins from Smith Hand, but understood that Miller is a resident of -Philadelphia.

It was suggested in the argument of counsel for the petitioners that the Robbins might have been stolen and thereafter used in-the illegal operations, but Smith Hand and Samuel Miller were not produced, in fact, no witness was produced, to verify such suggestion, and no explanation was given to the court for the failure to produce Hand and Miller as witnesses.

The contentions made by petitioners are:

1. That the government has failed to prove the allegations of its libel; and

2. That petitioners are bona fide mortgagees of the Hammitt L. Robbins standing virtually in the position of innocent owners having no connection with or knowledge of the illegal operations of the Robbins and' that no facts came to their attention to- cause them to suspect that either Hand or Miller or others were using the vessel for illegal purposes-until after the seizure by the C'oast Guard.

From the evidence adduced at the-hearing, an outline of a part of which is given above for convenience, the court finds that the essential allegations of the libel have been, proved, that there was reasonable and probable cause for the seizure of the Robbins and her cargo, and that the same should be condemned as prayed in the libel. This is particularly true as regards the second and third grounds above outlined upon which the prayer for condemnation and forfeiture is-based.

The uneontradicted testimony of libelants” witnesses establishes a case of the vessel being employed in another trade than that for which she was licensed in violation of the provisions of section 4377 of the Revised Statutes (USCA, title 46, § 326). The circumstances of the vessel’s deck being loaded with oyster shells which apparently had been there-all winter, the lack of any fact disclosed in, the evidence tending to show that she had recently been engaged in bona fide oystering, the absence of any one around her or appearing shortly afterwards claiming that he had been engaged in operating her as an oyster-boat or of any showing that she had been stolen or taken from lawful operators by force- and diverted to an illegal business, .the character of the real cargo aboard her, the evident concert of action and purpose between those in charge of her and those on the sunken vessel on the morning of the 6th, the landing of a part of her cargo, and the complete and immediate disappearance of all persons apparently interested in her, leave no serious-doubt in the mind of the court as to the establishment of that ground of forfeiture.

It was earnestly urged that the evidence - fails to establish the third charge, namely,that the vessel, before coming to a proper place for discharge and before receiving a permit to discharge, discharged foreign merchandise in the United States contrary to the-provisions of section 586 of the Tariff Act of 1930. It is argued both orally and in the brief of the petitioners that the labels on the.bottles-are not proof that the Robbins had contacted a foreign vessel at sea, obtained a cargo of foreign liquors, and discharged a part of' them, and that there is no proof that the liquors are in fact foreign.

This argument might be much more per- • suasive if the labels were in fact the only evi<-dence before the court on that point, but they are not. The great care, expense, and ex-pextness with which the goods were packed, the liquors having as they do the appearance of foreign goods of fine quality, the lack of any evidence of their having been in this country before, the isolated place at which they were landed, are also persuasive circumstances.- The only other inference which the -court could draw from these circumstances is a strained and unreasonable one: That the whisky was illegally made, bottled, and packed with care, expense, and expertness in this country, labeled with fraudulent labels, and illegally transported to the coast, illegally loaded on the vessel, illegally transported along the coast, and finally illegally landed at an isolated point on the Atlantic Coast, carries no strong appeal to common sense or reason. In view of all the circumstances shown in the evidence, the court has reached the conclusion that the third ground of forfeiture is clearly established.

- Numerous authorities are cited to sustain the contention of counsel that the evidence fails to prove the goods were of foreign origin and obtained by the Robbins through making contact with some vessel on the high seas. U. S. v. One Packard Sedan (D. C.) 14 F.(2d) 874, is among the eases cited. The facts in that case as set forth in the opinion (page 875) are not nearly so strong or convincing as the facts in this case. The facts in U. S. v. Packard Sedan (D. C.) 23 F.(2d) 865, at page 866, also differ materially from those in the instant case.

U. S. v. The Gas Screw Evelyn Ruth (D. C.) 42 F.(2d) 458, 1930 A. M. C. pages 1674, 1675, is also cited as authority for counsel’s contention. The facts and circumstances in that ease are in many respects similar to those in the instant ease. Upon appeal the Circuit Court of Appeals reversed tibe District Court in the Evelyn Ruth Case and expressly held that the evidence was sufficient to establish the contentions of the government and particularly to show the existence of probable cause for instituting the libel. See U. S. v. Victor H. Blackwood, Claimant (C. C. A.) 47 F.(2d) 849, 851, decided March 10, 1931. The Circuit Court of Appeals in reversing the decision of the District Court said:

“The District Court found that the government by its evidence had sustained the burden of proof, and that it was sufficient to warrant a finding in its favor of all the facts alleged in the libel, so far as concerns count 3, except as to the foreign origin of the liquors. The court assumed that the evidence warranted a finding of probable cause for instituting the proceeding, which necessarily included a finding of probable cause to believe that the liquors were of foreign origin, for the government could not have probable cause for instituting the libel if it did not have probable cause to believe the existence of all the facts therein alleged. But in substance and effect the District Court held that, notwithstanding section 615 placed the burden of proof upon the claimant, the burden was on the government. This was error. There was abundant evidence warranting a finding of probable cause for instituting the libel so far as it concerned the third count. It is unnecessary to recount it.
“This court in Vincent v. United States, 19 F.(2d) 344, 346, had under consideration this very question. It was there held that the ‘evidence was sufficient to justify the District Court in finding probable cause for the bringing of the libel (section 615), such as would require the claimant to assume the burden of proof and show that the motorboat was not guilty of the charges preferred against her (Locke v. United States, 7 Cranch, 339, 3 L. Ed. 364; The Squanto (C. C. A.) 13 F.(2d) 548; The Thompson, 3 Wall. (70 U. S.) 155, 18 L. Ed. 55), which he failed to do; * * * justifying a forfeiture of the vessel under sections 450 and 453, above quoted. * * *

This brings us to the defense that petitioners are bona fide holders for value of a valid mortgage lien against the vessel and are innocent of any connection with or knowledge of the illegal operations in which the Robbins was employed at and immediately before she was seized by the Coast Guard. Laying aside the failure of petitioners to throw any light upon the operations of the Robbins between the time of the sale of her to Smith Hand December 27,1930, and her seizure by the Coast Guard on February 6, 1931, and their failure to produce either Smith Hand or Samuel Miller as witnesses or to explain their failure so to do, and assuming that the testimony of the one witness produced by the petitioners fully establishes all the material affirmative allegations of their petition, this does not make a valid defense to the claim of the government that t“he vessel should be condemned and forfeited. In the view that the court takes this part of the case is controlled by the decision of our Circuit Court of Appeals in The Pilot, decided September 19, 1930, and reported in 43 F.(2d) 491, 493. In that ease Circuit Judge Northcott, speaking for the court, said:

“Innocence of the owner is not a defense to forfeitures in rem incurred under the customs and navigation laws. Thera is no disagreement among the courts on this proposition, and the law on this point, has been definitely settled. United States v. One Saxon Automobile et al. (C. C. A.) 257 F. 251; United States v. Mincey (C. C. A.) 254 F. 287, 5 A. L. R. 211; Logan v. United States (C. C. A.) 260 F. 746; United States v. One Black Horse (D. C.) 129 F. 167; The Esther M. Rendle [(C. C. A.) 7 F.(2d) 545; Id. (C. C. A.) 13 F.(2d) 839], supra; The Mineola [(C. C. A.) 16 F.(2d) 844], supra; Dobbins’ Distillery v. United States, 96 U. S. 395, 24 L. Ed. 637; United States v. Stowell, 133 U. S. 1, 10 S. Ct. 244, 33 L. Ed. 555; Goldsmith, Jr.-Grant Co. v. United States, 254 U. S. 505, 41 S. Ct. 189, 65 L. Ed. 376. See, also, United States v. Brig Malek Adhel, 2 How. 210, 233, 11 L. Ed. 239; Van Oster v. Kansas, 272 U. S. 465, 47 S. Ct. 133, 71 L. Ed. 354, 47 A. L. R. 1044.
“It was specifically held by the Circuit Court of Appeals, First Circuit, in Machado v. United States, 16 F.(2d) 844, that the law authorizing forfeiture of a vessel engaged in an unlicensed trade was not repealed by the National Prohibition Act, and that whether the vessel carried intoxicating liquor or other merchandise, when used in unlicensed trade, was immaterial.”

In concluding the opinion-Judge North-cott added: “While the innocence, good faith, and want of guilty knowledge on the part of the owner in the instant case might appeal strongly to the discretion of an executive, vested by Congress with the power to act in such eases, such facts are not legal defenses and may not properly be acted upon by the courts.”

It follows from what has been said herein that it is necessary to refuse the decree presented by petitioners, and the decree presented by libelant will with slight changes be entered as of this date.


source: Caselaw Access Project

author: BYERS, District Judge.

license: Public Domain

text:
    THE ALCYONE. Petition of PUTNAM.
    No. 12353.
    District Court, E. D. New York.
    May 15, 1931.
    Bigham, Englar, Jones & Houston, of New York City (George S. Brengle and Leonard J. Matteson, both of New York City, of counsel), for petitioner.
    Duncan & Mount, of New York City,-for Mrs. Lea M. Christie.
   BYERS, District Judge.

■ Motion by the administratrix of Martin R. Christie for an order modifying an order-appointing a commissioner in a limitation proceeding initiated by Henry W. Putnam, as owner of the yacht Alcyone.

The decedent Christie received injuries-while performing duties in the course of his employment on the said yacht on October 4, 1930, from the effects of which he died on January 23, 1931. His widow was duly appointed administratrix and, under date of March 18,1931, caused her attorneys to write a letter to the yacht owner, in the effort to-ascertain whether her claim could be amicably adjusted without recourse to litigation.

On March 25,1931, the attorneys to whom* the said letter had been referred by the firm-who handled the owner’s insurance, replied] suggesting an appointment; a conference-ensued between representatives of the two offices on the 26th, in which Mrs. Christie’s attorneys asked if the lawyers for the underwriters would appear for the yacht owner, in an action if one were brought. The reply was that instructions from the underwriters would be sought. A telephone inquiry of the 27th (Friday) elicited the statement that no letter had yet been written seeking the authority in question. In that telephone conversation, Mrs. Christie’s attorneys stated that they were drawing their papers, and would probably ask judgment for $150,000.00 -damages, having said, in the first interview, that they would be prepared to recommend .a settlement without suit for $35,000.00.

On Monday, March 30, 1931, the present -petition in limitation was filed, and an ex -parte order obtained, containing the conven-cional restraining clauses against the commencement or prosecution of any and all -suits or legal proceedings, except in this limitation proceeding, in respect to any claim •arising out of the accident and injuries to 'the said decedent.

Apparently an ad interim stipulation has 'been filed in the sum of $65,000.00.

On the argument, it was conceded that no .other claim has been filed, and none can be, ■for the reason that the decedent was the only ■person injured in the said accident.

Thus it appears that the administratrix has not been permitted to select her own forum, and the petitioner argues that, because of his diligence as- above recited, she may not be permitted to.

The recent decision of the Supreme Court in the case of Langnes v. Green, 282 U. S. 531, 51 S. Ct. 243, 247, 75 L. Ed. 520, decided February 24, 1931, involves a single claim, -and a petition in limitation filed by the owner of the vessel four months after the commencement of a state court action to recover damages against him for personal injuries said to have been suffered by the plaintiff in that action. The decision, which permitted the prosecution of the state court suit while the 'District Court retained jurisdiction of the limitation, is therefore to be clearly distinguished from this cause, because no state ■court action had -been commenced against this petitioner when his petition was filed.

Argument is made in opposition to the motion, that, the jurisdiction of this court ■having been first invoked, it cannot be surrendered even to the extent permitted in the •Green Case, and reliance is had upon the •case of Kline v. Burke Construction Co., 260 U. S. 226, 43 S. Ct. 79, 83, 67 L. Ed. 226, 24 A. L. R. 1077. In that case, an action in equity in a state court, involving the same issues as those presented in an earlier suit in the District Court for the Western District of Arkansas, was permitted to continue, because both actions were in personam. The opinion closes with this statement:

“The rule, therefore, that the court first acquiring jurisdiction shall proceed without interference from a court of the other jurisdiction is a rule of right and of law based upon-necessity, and where the necessity, actual or potential, does not exist, the rule does not apply. Since that necessity does exist in actions in rem and does not exist in actions in personam, involving a question of personal liability only, the rule applies in the former but does not apply in the latter.”

The application of the foregoing rule to this motion manifestly requires that the nature of the pending limitation proceeding be determined. An early definition is found in the City of Norwich, Fed. Cas. No. 2,762, decided in this court by Judge Benedict in 1873 (affirmed 118 U. S. 468, 6 S. Ct. 1150, 30 L. Ed. 134) :

“While, then, in most cases, doubtless, the possession of a fund for distribution will give to the cause of limited liability the aspect of a proceeding in rem, it is not such a proceeding, but rather partakes of the character of an action in personam. It is a proceeding sui generis, quite analogous, in respect to the maritbjae adventure involved, and the liability which arises therein, to a proceeding in bankruptcy — a proceeding limited, of course, to the' maritime capital involved, and resulting in a discharge of the owner from certain classes of. demands to which he has become liable in the use of that capital. It is taken in the admiralty by reason of the subject-matter, and is there to be conducted as the necessities of such a cause may require, in order to accomplish, the result intended by the act of 1851.

In the Matter of Morrison, 147 U. S. 14, 13 S. Ct. 246, 253, 37 L. Ed. 60, the court was passing upon a limitation proceeding initiated in the District Court (52 F. 598) for the District of Massachusetts, as the result of which an ad interim stipulation had been approved in a cause in which collision damage had been occasioned, and, in deciding that subsequent proceedings brought by the injured party in the Southern District of New York should not be permitted because of the earlier proceedings brought in the District of Massachusetts, the court used the following language:

“The proceeding to limit liability is not an action against the vessel and her freight, except when they are surrendered to a trustee, but is an equitable action.”

The latter expression, however, must be weighed in the light of the opinions of the same court, in Oregon Co. v. Balfour, 179 U. S. 55, 21 S. Ct. 28, 45 L. Ed. 82, Metropolitan Co. v. Doe, 223 U. S. 365, 32 S. Ct. 275, 56 L. Ed. 473, Ann. Cas. 1913D, 1221, and Hartford, etc., Co. v. Southern Pacific, 273 U. S. 207, 47 S. Ct. 357, 71 L. Ed. 612.

These discussions seem to proceed upon the theory that a limitation proceeding is both in rem and in personam, as declared in Benedict (5th Ed.) § 479, even though the vessel is not -in the custody of a trustee, but is in court in the form of an ad interim stipulation only. To the extent that the proceeding is in rem, the admonition quoted from Kline v. Burke, supra, seems to govern the circumstances here presented.

The filing of the petition without waiting for suit to be brought was not premature. See Ex parte Slayton, 105 U. S. 451, 26 L. Ed. 1066.

It is urged, on behalf of the motion, that these considerations need not enter into the disposition of the motion, because the opinion in the Green Case is based largely on reasons which apply equally well to the facts here involved, and that the pendency of the action in the state court, at the time of filing , the petition in limitation in that ease, was a mere incident, and not a controlling cireum- ■ stance. The concluding portion of that opinion well describes the situation of these parties, and the method whereby the owner of this yacht can limit any possible recovery, in a state court action, to the value of his vessel; if this court felt that the legal discretion vested in it could be so exercised, without offending against the rule declared in Kline v. Burke, the motion would be granted “to preserve the rights of both parties,” to quote-from the Green Case. It is not permitted,, however, to follow blindly that opinion without having in mind that the discussion there-presented arose in a case in which a state court action was first in point of time.

Likewise it is urged that this motion should be granted in conformity with the views expressed in The Aquitania, 20 F.(2d) 457, decided by the Second Circuit Court of Appeals. If the affidavit upon which the motion is based disclosed that the one claim against this petitioner was actually not in-excess of the value of the vessel, the argument would be of great force, but, in the absence-of such a showing, this court is not at liberty to apply that decision to this motion.

Motion denied. Settle order.


author: KIRKPATRICK, District Judge.

text:
    UNITED CHAIN THEATRES, Inc., et al. v. PHILADELPHIA MOVING PICTURE MACHINE OPERATORS UNION, LOCAL NO. 307, et al.
    No. 6509.
    District Court, E. D. Pennsylvania.
    May 5, 1931.
    Sigmund H. Steinberg, of Philadelphia, Pa., and Howard A. Lehman, of Bethlehem, Pa., for plaintiffs.
    Frank B. Murdoch, Jr., of Philadelphia, Pa., for defendants.
   Findings of Fact.

KIRKPATRICK, District Judge.

1. The plaintiff, United Chain Theatres, Inc., is an operating company engaged in the business of operating a number of moving picture theatres in Philadelphia, including the two involved in this suit, which are, respectively, Nixon’s Grand Theatre at Broad street and Montgomery avenue, having a seating capacity of some 3,000, and the Roxy at Ridge avenue and Leverington street, with a seating capacity of about 1,700. Each of these theatres requires, in addition to other employees, two moving picture operators, an employment calling for a considerable amount of training and skill.

2. The defendant, the Philadelphia Moving Picture Machine Operators Union, Local No. 307, is a union consisting of 253 members. Affiliated with it are some 125 nonunion men known as “permit men” who obtain employment through the union and who are subject to union regulations and orders. • The total number of licensed moving picture operators in the city of Philadelphia is about 3,000. There are about 150 theatres in Philadelphia each of which employs two regular operators, a small number of additional men being required from time to time for relief and extra work.

3. When the plaintiff took over the operation of the Roxy Theatre and of Nixon’s Grand (December 1, 1929, and December 1, 1930, respectively), the operators were union men employed by the former owners of these theatres. Their wages and terms of employment were regulated by a contract between the theatre owners and the union which contract imposed upon the 'owners certain restrictions as to the employment and discharging of men, wages, hours, working conditions, and other matters. The plaintiff, upon taking-control of the theatres, promptly discharged the union men and employed nonunion men at a lower wage scale and without any contract restrictions upon its relations with them as employees.

4. The discharge of the union operators •by the plaintiff when it took over the theatres was intended by it and accepted by the defendant union as the definite and final inauguration of a policy not to employ union men. The union had already taken an equally definite and fixed stand upon the question of wages and conditions of employment, embodied in the regular union contract with the theatres. No negotiations looking toward employment of union men or to a modification of union terms have taken place between the parties at any time, and it is evident that any attempt at compromise by either side would be futile. It is more than probable that nothing short of a complete surrender by one side or the other can end the controversy and even so it is doubtful whether the plaintiff would again employ union men upon any terms.

5. The defendant union began the series of acts complained of in this bill about March 16, 1931. These acts consisted of three general classes and were as follows: (a) Sending of postal cards enclosed in envelopes to a very large number of potential patrons living in the general neighborhood of each of the theatres involved. These postals vary somewhat in language but in general notify the recipient that the plaintiff’s theatres do not employ union operators and do not pay “regular wages” or “an American living wage.” Some of the postals close with a request for “support” or for “moral support,” while others ask the recipient to help in the fight against the theatres by “patronizing other theatres which give the Philadelphia working men a square deal.” (b) Driving in the neighborhood of the theatres a “music wagon” bearing large printed signs and placards containing, messages similar to those appearing on the post cards, (e) Employing men, most of whom are members of the union or permit men, to walk up and down in front of the theatres, bearing print-' ed signs hung on their shoulders, examples of which signs are as follows: “Nixon’s Grand is unfair to organized labor.” “Nixon’s Grand refuses to employ union moving picture operators, members of the A. F. of L. at American living wages.” “Nixon’s Grand no longer employs union moving picture operators, members of A. F. of L.” “Nixon’s Grand locked out union moving picture operators members of A. F. of L.”

6. None of the messages conveyed by any of the above-mentioned means to the potential patrons of the plaintiff’s theatres contain any threat of injury or inconvenience of any kind to persons who patronize the theatres, nor do they contain any matter which is abusive or libelous. The statements that the theatres refused to pay American living wage and that they are unfair to organized labor are, in view of the fact that they have, without cause other than such as arises from their union affiliation, discharged union men and employed others at lower wages, at least matters of argument entitled to be taken as made in good faith.

7. At Nixon’s Grand Theatre the sidewalk is patroled or picketed by four men during the hours when the theatre is open for business. In addition to this, a relief consisting of two, three, or four men sit continuously in a parked automobile along the curb within a few feet of the theatre property. The Roxy Theatre is picketed by two men during evenings and Saturday afternoons only. The defendant has instructed all of these men not to obstruct in any way free access of patrons to the theatre and not under any circumstances to speak to any one. In general these instructions have been observed and the picketing has been carried out without physical violence and without any threat, menace, insult, or annoyance to patrons of the theatre. There have been a few occasions where one or two of the men have overstepped the bounds of their instructions and have annoyed patrons by holding out their signs in front of them or by walking so close to the theatre entrance as to cause inconvenience in entering. These occasions have been exceptional and have not been authorized or countenanced by the defendant.

8. The effect of the defendant’s campaign has been very substantially to reduce the patronage at both theatres. At Nixon’s Grand Theatre the average weekly attendance has dropped from approximately 11,000 to-approximately 8,000; at the Roxy, from approximately 8,700 to approximately 7,200. This reduction in patronage is a substantial and serious injury to the plaintiff’s business and so long as it continues the plaintiff will be unable to operate the theatres at a profit.

Discussion.

This plaintiff’s business, or its reasonable expectation of continued patronage from the public, is property. Duplex Printing Press Company v. Deering, 254 U. S. 443, 465, 41 S. Ct. 172, 65 L. Ed. 349, 16 A. L. R. 196; Truax v. Corrigan, 257 U. S. 312, 327, 42 S. Ct. 124, 66 L. Ed. 254, 27 A. L. R. 375. Intentional injury to another’s property is prima facie a tort and, where necessary to prevent irreparable injury, will be restrained by injunction. A man’s business is, generally speaking, entitled to the same protection by law as any other kind of property; but where injury to business occurs or is threatened in the course of one of the conflicts generally accepted as necessarily incident to economic and social progress, the law may under certain circumstances permit the injury and withhold the remedy. Whether it will or not depends ultimately upon public policy, but the method of determining each particular case usually takes the form of an inquiry whether the acts causing or threatening the injury are for a justifiable purpose.

Where the conflict is between employees and employers, self-interest is generally accepted by the law as a justification for acts by employees, injurious to the employer’s business. But in such cases self-interest is not always a justification. An essential requirement is that it be not too remote. I had occasion to consider this question in Alco-Zander Company v. Amalgamated Clothing Workers of America, 35 F.(2d) 203, and there held that the interest of union men in a distant city with no possible expectation of employment here was too remote to justify the calling of unprovoked strikes in industries in Philadelphia, the sole purpose being to protect unionized markets in the city in which the defendants were located. The decision of the Supreme Court in Hitchman Coal & Coke Company v. Mitchell, 245 U. S. 229, 38 S. Ct. 65, 62 L. Ed. 260, L. R. A. 1918C, 497, Ann. Cas. 1918B, 461, required such holding.

In the ease at hand, however, these defendants are directly and immediately interested in employment at the plaintiff’s theatres. They want the jobs for their own members and they want them at the wages and under the restrictions established by the regular union contract which is in force in most of the theatres in Philadelphia. It is quite true that the immediate effort here is to unionize the plaintiff’s business but, more than in the ordinary case, this is only an intermediate step in obtaining what is really desired, namely, employment for union men at union wages and on union terms. While no member of the defendant union is now actually seeking employment in the plaintiff’s theatres, some of them-have been employed there and each one of them is a potential employee. Thus the union has much more than a remote interest in the plaintiff’s relations with employees.

In American Steel Foundries v. Tri-City Central Trades Council, 257 U. S. 184, 42 S. Ct. 72, 66 L. Ed. 189, 27 A. L. R. 360, the Supreme Court held that members of labor unions in three adjoining towns, although not ex-employees, had sufficient interest in the wages paid by a manufacturing plant which was resuming operations with a skeleton force of men, to justify them in promoting a strike by employees against a reduced scale of wages. The nearness of the self-interest of the unions in the Tri-City Case is the thing which distinguishes it from the Hitchman Case and justifies conduct which, where the interest is more remote, is unjustifiable. I entertain no doubt that the self-interest of the defendants in the present case is no more remote than that of the defendants in the Tri-City Case, and that it furnishes a legal justification for the injury occasioned to the plaintiff’s business by their conduct.

It may be objected that what was involved in the Tri-City Case was persuasion of employees to quit their employment, whereas the defendant’s conduct here takes the form of persuasion of the general public to withhold their patronage. There is really no substantial difference. “I do not perceive any distinction upon which a legal difference of treatment should be based between a lockout, a strike, and a boycott. They often look very unlike, but this litigation illustrates their basic identity. All are voluntary abstentions from acts which normal persons usually perform for mutual benefit; in all the reason for such abstention is a determination to conquer and attain desire by proving that the endurance of the attack will outlast the resistance of the defense.” Hough, in Gill Engraving Company v. Doerr (D. C.) 214 F. 111, 119.

Paradoxical as it may seem, the wide difference between the .conditions of the controversy in this ease and that in the Tri-City Case affords the strongest reason for dealing with the conduct of‘the defendants in both eases upon the same basis. In the Tri-City Case the plaintiff required a large supply of labor which the defendant had at its command and could withhold, thereby inflicting upon the plaintiff the only economic injury within its power; for it is obvious that little or nothing could have been accomplished in that ease by appeals to the plaintiff’s customers not to 'deal with it. In the present case the plaintiff employs only two men at each theatre. The outside supply of labor is practically unlimited. The calling of strikes would be perfectly futile, and to limit the effect of the Tri-City decision to strike eases only would be to put it upon a ground which has nothing whatever to do with its basic principle — -justification by self-interest —and to deny to employees in cases like the present resort to their only practicable weapon.

The conclusion that the defendants’ course of conduct was justified by its purpose means simply that the hare fact of injury to the plaintiff’s business, caused intentionally by the defendants, will not, under the circumstances of this case, entitle the plaintiff to relief. It still remains to consider the means adopted by the defendants. '.

Peaceful persuasion is universally recognized as a lawful method, and such peaceful persuasion may be addressed to patrons and customers as well as employees. On the other hand, the minute that the limits of peaceful persuasion are over-stepped and the element of coercion enters into the ease, the entire course of conduct becomes unlawful. This is true whether coercion consists of actual violence, threats of violence, intimidation, or of economic coercion such as the withdrawal of patronage from or refusal to deal with persons who patronize the employer (the so-called. secondary boycott). Of course, the threats need not be express to make conduct unlawful and intimidation may be and frequently is accomplished by the mere presence of numbers, by demeanor and bearing and without the spoken word. It was because of this that picketing generally was held in the Tri-City Case to be inconsistent with peaceful persuasion and when so conducted to be unlawful, and it was because the circulation of “unfair” lists, in the case of Gompers v. Buck’s Stove & Range Company, 221 U. S. 418, 31 S. Ct. 492, 55 L. Ed. 797, 34 L. R. A. (N. S.) 874, involved coercion by implied threats of loss of business to those to whom they were addressed that the use of such lists was held to be actionable. The decision in Truax v. Corrigan, 257 U. S. 312, 42 S. Ct. 124, 66 L. Ed. 254, 27 A. L. R. 375, rested upon the clear illegality of the means used which involved almost all the elements condemned by the courts except actual physical violence.

But, as was pointed out in the Tri-City Case, each ease must turn upon its own circumstances. In the present case the defendants are entitled to advise the public of the existence of their controversy with the plaintiff and of the reason for it and to ask for public support and to-request their friends and the public generally to assist them by not patronizing the plaintiff. I cannot find in anything that they have said any element of threat or of coercion.

On the other hand, I am inclined to think that the presence of four men patroling the sidewalk in front of Nixon’s Grand Theatre together with sympathizers in an automobile parked at the curb cannot but constitute a kind of implied threat or intimidation as to such of the public as are susceptible to that sort of influence. In addition, I do not see how in crowded hours accidental physical contacts can be avoided which may amount to annoyance to the patrons and obstruction of their free access to the theatre. I will therefore direct that the number of men at Nixon’s Grand Theatre be limited to two and that the defendant be restrained from permitting its agents to remain in a parked automobile at the curb while the pickets are on the sidewalk. It will also be required that the pickets remain at a distance of at least half of the sidewalk away from the steps leading to the theatre entrance.

I have conferred with counsel in the ease and am satisfied, in view of their assurances, that the foregoing directions will be voluntarily complied with and that it will not be necessary to issue an injunction. The defendants’ campaign has been generally well conducted. It was undertaken under advice of counsel and during the pendency of these proceedings they have at the suggestion of the court voluntarily suspended all operations. Specifically, in regard to the matters just referred to my finding is that the conduct criticized has been discontinued and that there is no reason to apprehend that it will be resumed.

The bill may be dismissed. Of course, such dismissal will not preclude the plaintiffs from taking further action in the event that any illegal acts occur hereafter. The costs will be divided two-thirds to the plaintiffs and one-third to the defendants.


author: GALSTON, District Judge.

text:
    THE KATHRYN.
    No. C-2560.
    District Court, E. D. New York.
    May 18, 1931.
    Howard W. Ameli, U. S. Atty., of Brooklyn, N. Y. (Alfred C. McKenzie, Asst. U. S. Atty., of Brooklyn, N. Y., of counsel), for libelant.
    Louis Halle, of New York City (Milton R. Kroopf, of New York City, of counsel), for claimant.
   GALSTON, District Judge.

This libel seeks the forfeiture of the boat Kathryn, for violation of sections 50 and 60 of title 46 of the. United States Code (46 USCA §§ 50, 60). These sections are as follows:

“§ 50. Change of name of documented vessel. No master, owner, or agent of any vessel of the United States shall in any way change the name of such vessel, or by any device, advertisement, or contrivance deceive or attempt to deceive the public, or any officer or agent of the United States, or of any State, or any corporation or agent thereof, or any person or persons, as to the true name or character of such vessel, on pain of the forfeiture of such vessel.
“§ 60. Penalty for fraudulent registry. Whenever any certificate of registry, enrollment, or license, or other record or document granted .in lieu thereof, to any vessel, is knowingly and fraudulently obtained or used for any vessel not entitled to the benefit thereof, such vessel,' with her tackle, apparel, and furniture, shall be liable to forfeiture.”
The facts as proved show that at various times prior to August 31, 1930, officers of the Coast Guard boarded the motorboat Kathryn and found that she bore the name "Happy Parrot” on bow and stern; also that her home port, "New Haven, Connecticut,” was painted on the stern, and an ostensibly official number carved on the main hatch. Measurements of the boat failed to agree with those indicated on the ship’s documents. A license which the boarding officer found on board was that of a vessel designated “Happy Parrot.”

Accordingly on August. 31, 1930, the Kathryn was seized in Coney Island Creek, Kings county. On that day, though she bore the name Kathryn, there was still discernible below that inscription the name “Happy Parrot,” and it was observed that the official number noted on the inspection made August 26,1930, had been chiseled out.

The proofs show that the Kathryn was not a registered vessel, but that the “Happy Parrot” was.

Prom the foregoing it must appear that the first cause of forfeiture under section 50, title 46, U. S. Code (46 USCA § 50), .must fail, because the Kathryn was not a documented vessel. United States v. Blair (C. C. A.) 190 F. 372.

On the other hand, there clearly was a violation of section 60, title 46, U. S. Code (46 USCA § 60), for the license found and used on the Kathryn was not her license but that of another vessel, which in the circumstances of the case apparently was knowingly and fraudulently used. Such violation carries with it the penalty, of forfeiture.

Something of an anomalous situation appears from the record, for though the Coast Guard made the seizure on August 31st and delivery of the vessel to the Collector of the Port of New York, it was not until October 21,1930, that the usual marshal’s notice of arrest and forfeiture was published ; the libel herein having been filed on October 3, 1930.

Meanwhile, in this court, Edith B. Wheeler et al., doing business under the name of Wheeler Shipyard, filed on September 25, 1930, a libel against the vessel, and accordingly there was published by the marshal of the district on October 2, 1930, a notice of arrest on behalf of -the libelant in that cause. Thus it appears that when the marshal gave notice of arrest in the pending cause he was already holding the vessel for the libelant, Wheeler Shipyard; and pursuant to a decree entered in the latter cause the vessel and her equipment were on November 28, 1930, sold. Distribution of the proceeds was made in satisfaction of the claim of the Wheeler Shipyard and in payment of incidental fees pursuant to an order of this court filed December 8, 1930.

Presumably since the proceeds of sale were in excess of the sums thus disbursed, such sum remains in the registry of the court, for there is no proof of its distribution.

I think that in all equity this balance may be considered to be that which is left of the res sought to be forfeited herein.

Certainly there is nothing to indicate that the Collector of - the Port abandoned the seizure. Such an inference of abandonment cannot be' spelled out of the arrest of the vessel by the marshal in the libel of the Wheeler Shipyard. In a situation not unlike that presented herein, it was found by the court in The Motor Boat No. L—7869 (C. C. A.) 21 F.(2d) 594, .that the Collector of the Port had not abandoned the seizure. In this connection it may be noted that in case of the forfeiture of a vessel for false registry, the forfeiture dates back to the time of the seizure. The Fredericka Schepp (D. C.) 195 F. 623; United States v. Stowell, 133 U. S. 1, 10 S. Ct. 244, 247, 33 L. Ed. 555. In the latter case it was said: "By the settled doctrine of this court, whenever a statute enacts that upon the commission of a certain act specific property used in or connected with that act shall' be forfeited, the forfeiture takes effect immediately upon the commission of the act; the right to the property then vests in the United States, although their title is not perfected until judicial condemnation; the forfeiture constitutes a statutory transfer of the right to the United States at the time the offense is committed; and the condemnation, when obtained, relates back to that time, and avoids all intermediate sales and alienations, even to. purchasers in good faith.”

Accordingly, the libelant may have a decree.


author: HINCKS, District Judge.

text:
    FOX v. SPIEGEL et al.
    No. 1999.
    District Court, D. Connecticut.
    May 19, 1931.
    George H. Gilman, of Norwich, Conn., for plaintiff.
    Sachs, Sachs & Sachs, of New Haven, Conn. (Edward H. Cumpston, of Rochester, N. Y., of counsel), for defendants.
   HINCKS, District Judge.

This is a suit charging the defendants with the infringement of design letters patent No. 73,226, granted to the plaintiff on August 9, 1927, on an application filed May 19,1927, for the design of a bottle.

The plaintiff, it seems, conducted a small bottling business at Norwich in this state, and in the spring of 1927 ordered a quantity of bottles, as per drawing submitted with the order, from the F. E. Reed Glass Company of Rochester, N. Y. Thereafter, the plaintiff, on his own application, procured the patent in suit upon the design of the very bottle thus purchased. He brings this suit against Spiegel, likewise engaged in the bottling business in New Haven, who had purchased and used bottles of the same design from the Reed Company. These facts are conceded. It is also conceded that the defendant’s use of the bottles in question was an infringement if indeed the plaintiff’s patent is valid.

The main issues were whether the plaintiff was in fact the inventor of the design issued on his sole application; whether Cohen, the agent and salesman of the Reed Glass Company, had earlier conceived the design disclosed, and reduced it to practice and manufacture so as to preclude its patentability on the plaintiff’s application; and whether the design, if indeed originated by the plaintiff, involves a true invention in view of the prior art. The evidence on these three issues was conflicting.

The plaintiff claimed that the Reed Company salesman, Cohen, called to make a sale and showed him numerous designs which were not satisfactory, but he (the plaintiff) had in mind a design for a bottle which Cohen undertook to draw on paper. He testified that after several attempts, all on this visit, Cohen succeeded in producing a drawing which embodied the plaintiff’s ideas; that he took this drawing with him when he left, perfected it, sent the perfected drawing to the plaintiff by mail, and a week later called and took his order for a quantity of bottles as per this drawing. He was corroborated, in part at least, by his wife and a relative.

Cohen, on the other hand, told a wholly different story. Cohen was a bottle designer as well as a salesman, and he testified that the design in question he had perfected at an earlier date, and that when he first called on the plaintiff to solicit his business, he submitted numerous designs including that in question. The design in question was selected by the plaintiff from this number and the order resulted.

There is no need for me to resolve this conflict in testimony. If Cohen’s version of the affair is accepted, it of course results that the plaintiff was not the inventor of the design. And the same conclusion necessarily results from analysis of the plaintiff’s own testimony.

Thus the plaintiff admits that he did not and could not make a drawing of his own design. Lacking the ability to draw, it results that the only vehicle available for the expression of his idea was the spoken word. Whether it was indeed the plaintiff’s mind which conceived the design in question can be judged, in the absence of a drawing by the plaintiff, only by the words which, he claims, communicated his idea to Cohen. To be sure, he testified that the completed design was his. But, obviously, this was no more than his conclusion as to one of the main issues of the case.

And so, taking at face value his own testimony and that of his witnesses, it becomes apparent that the sum of his expression fails to indicate any patentable invention. On the contrary, it discloses that his only participation in the evolution of the design was such that at most he was a joint designer with Cohen.

The design involved the various parts of the whole bottle which, for discussion, can conveniently be grouped into the three regions of (1) neck, (2) middle body, and (3) lower body. As to the lower body, the only expression which the plaintiff gave of his idea was: “I told him to draw it with lines, panels down from the center, down to the bottom, to draw down with panels and he did.” With regard to the neck of the bottle, .plaintiff testified that he wanted the neck ornamented with three rings like the bottles used by the Nugrape Company. Cohen told him that that design had been patented, and he said: "If three rings are patented by Nugrape Company, we will have two rings, two small rings on top.” As to the middle body, on direct examination the plaintiff said nothing about instructions for a bend or bulge in the middle of the bottle, but on cross-examination he said: “I told him to put the heavy bend in the middle.” The foregoing extracts are as definite as anything that appeared in the evidence as to the plaintiff’s instructions relative to the curved middle and paneled bottom of " the bottle, which were its only possible three claims for distinction.

The complete absence of expression by the plaintiff of the idea for which he claims invention, other than vague suggestions such as just recited, necessarily indicates that it was not the plaintiff’s mind which supplied the necessary correlation of shape, dimension, and ornamentation, through which alone the elusive notions of style can be reduced to finite form in a design.

Possibly he is sincere in believing himself the creator. It has been said that the true test of a great lyric is that it inspires every reader with the feeling that he could have written it. So perhaps it is with a design. It is human nature to feel at the sight of a design which satisfies that it is just what we had in mind. Surely one who suggests to a musician that he write music having, say, quick time at the beginning, low tones at the end, and loud chords in the middle, could not claim authorship of the resulting song. Yet compliance with such a suggestion might obviously have an effect of real beauty — or just the reverse. The point is that any aesthetic result from such vague suggestions comes more from the skill of the collaborator than from him who utters the initial suggestion. The latter, as I have suggested above, may indeed be sincere in his pride of creation, but as the old adage goes, it is a wise father that knows his own child.

And even if the plaintiff contributed some creative element to the design, on the plaintiff’s own testimony it appears that Cohen’s part in the finished product was such as to make him at least a joint designer, thus invalidating the sole patent to the plaintiff. Ross & Co. v. Wigder (C. C. A.) 290 F. 788.

Entirely apart from any question of origin, it is impossible to find any inherent invention in the design in question. The prior art certainly is suggestive. Thus the Goldberg design (48,371), the Levin design (51,927), the numerous Root designs (63,324, 63,326, 68,991), all show lower body at least partly paneled. The said Levin design, the Ginter design (67,025), the Reed design (68,-594), Root designs (68,991 and 54,682), all show the bulging middle body. As to the neck, plaintiff’s own testimony discloses the choice of two rings instead of three because of his belief that the Nugrape design, which -had three rings, was patented, and the suggestion of dots between the rings was Cohen’s idea and not the plaintiff’s. These same features appear singly and in different combinations in numerous bottles in evidence as exhibits antedating the plaintiff’s application.

Now it is undoubtedly true that in certain eases a new combination of old elements may be patentable. Smith v. Whitman Saddle Co., 148 U. S. 678, 13 S. Ct. 768, 37 L. Ed. 606; Steffens v. Steiner (C. C. A.) 232 F. 862, 864; Knapp v. Will & Baumer Co. (C. C. A.) 273 F. 380. But in all such cases the assembly or the correlation of the old elements must in itself amount to invention. As in every ease, invention must be present.

Invention in this technical sense seems not to have a single satisfactory definition. In the Steffens Case, supra, dealing with the patentability of a combination of old elements, it was said that the presence of invention depended “upon the novelty of the unitary and resultant design and the circumstances of the case.” Slight variations of the shape and disposition of the old elements, and mere mechanical skill, do not rise “to the level of invention.” In the case of Gor-ham Co. v. White, 14 Wall. 511, 526, 20 L. Ed. 731, it was said that the “true test of identity of design” was “sameness of effect upon the eye” of the ordinary, or lay, observer ; or whether the resemblance was such as to deceive a purchaser. And so, in the Gorham Case, it was held that the second design was an infringement and its patent invalid. That is not to say, however, that in every ease in which such identity of design is absent, invention necessarily is present in the second design. For even if the second design was without anticipation in the art, it might still wholly lack invention, if, in the words of the court in the ease of Strause Gas Iron Co. v. William M. Crane Co. (C. C. A.) 235 F. 126, 131, “the new combination [is] within the range of the ordinary routine designer.”

In this case it seems to me obvious that the design in suit to which, at most, the-plaintiff’s only contribution was a rearrangement of old elements with minor variations, was well within the range of the ordinary designer. The witness Cohen was just such a designer and two books of his designs are in evidence. None of these designs is claimed as an anticipation. But taken by the large, they confirm my conclusion that the design in suit is by no means beyond the ordinary range.

Accordingly, the defendant is entitled to. decree dismissing the bill of complaint, with costs.


author: ATWELL, District Judge.

text:
    DALLAS BANK & TRUST CO. v. HOLLOWAY et al.
    No. 3316—571.
    District Court, N. D. Texas, Dallas Division.
    May 19, 1931.
    McBride, O’Donnell & Hamilton and Ralph Wood, all of Dallas, Tex., for the motion.
    Goggans & Ritchie and Lewis M. Dab-ney, Jr., all of Dallas, Tex., and Baker, Botts, Andrews & Wharton, of Houston, Tex., opposed.
   ATWELL, District Judge.

The plaintiff, a Texas corporation, with its place of business in Dallas, sues, as executor and trustee of the will of Allie C. McClellan, deceased, Beatrice Holloway, Mrs. Nellie MeTieman, Ethel Niblo, Maggie Callahan, Charlie Puckett, Leona Brewer, R. H. Gamble, Elmo Niblo, all citizens of Texas, Thomas McClellan, a citizen of Alabama, George and Sallie Slaton and Ernest Linwood, whose residences are unknown, Teresa D. Castelan, a citizen of New York, Mamie White Eighelberger, a citizen of Alabama, Thomas Diegnan, a citizen of California, the City of Dallas, a municipal corporation existing under and by virtue of the laws of the state of Texas, St. Paul Sanitarium, Dallas, a Texas corporation, and James Y. All-red, as Attorney General of the state of Texas.

It alleges:

That on the 12 th day of June, 1929, the said will was admitted to prohate. That an appeal was taken from said order to the state district court, which continued to order probation. That all of the defendants, except the Attorney General, are devisees and beneficiaries. That, in addition to them, the will made plaintiff trustee of the residue of the estate after payment of the bequests made to the defendants, for the purpose of holding and administering the residuary estate in a fund to be created and called, “Allie C. McClellan Memorial Working Girls’ Loan Fund,” for the purpose of aiding and assisting deserving white working girls of Dallas.

That said will also provides that: “All bequests that are not claimed and paid within two full years after the probate of this will shall then become null and void, and the sum so claimed and paid shall revert to and become a part of my residuary estate; and for the purpose of paying said bequests, the said Dallas Trust & Savings Bank is authorized and empowered to convert any of my estate into money. * * * ”

That at the time of the death of the testatrix her estate consisted principally of real estate of the estimated value of more than $60,000. That at the time of the final probate of the will, through depressed conditions, and shrinkage in values, the property had decreased until it was insufficient; if sold, to pay all of said bequests, and to create the trust fund alleged. That the real estate market is still depressed, and values are sueh that, if the property is now sold, it is probable that the funds realized^ would be insufficient to pay said bequests in full, and to create the trust.

That, by reason of that provision of the will which provides for the payment of the bequests within two years after its probate, the plaintiff is uncertain as to the course it should pursue, and is uncertain whether it should sacrifice the property in order to partially pay said bequests, or whether it should hold same pending 'a more favorable real estate market. That it is unable to determine, from the terms of the will, whether it has the discretion to hold said property for a favorable market or whether it is required to dispose of the same within two years from the date of the probate. That therefore it is unable to act with safety.

It then prays that each defendant be cited, and that the court construe the will, and particularly the provision quoted relating to the payment of the bequests within two years from the probate of the will, and determine the validity of said will and all of the provisions and terms thereof, including the provision providing for the working girls’ me-moiial fund, and in all respects declaring said will and all of the terms and conditions thereof to be legal and valid, and to instruct plaintiff fully in its duties as exeeutor and trustee.

All nonresident defendants join in a petition to remove. They claim there is in dispute a controversy which is wholly between citizens of different states, and which can be fully determined as between them, to wit, a controversy between them and the hank. This controversy they allege to be over items 20 and.21 of the will.

An examination of the removal application discloses no further reference to item 20. Item 21 is described to be a provision, which has already been mentioned, for a trust to be administered for the benefit of working girls. It is claimed that this provision is void, and does not vest in the plaintiff the residuary estate claimed, because the trust attempted is vague, uncertain, and indefinite, and violates the rule against perpetuities as set forth in article 1, § 26, of the Constitution of Texas. Likewise, that it provides for an unlawful and perpetual accumulation, and the bequest is not for a charitable use, that in view of this invalidity, all of the rest of the estate after the payment of the debts and the legacies and bequests set forth in the will is the property of the nonresident citizens, and that neither the bank nor any of the other defendants have any interest therein.

Plaintiff moves to remand.

Federal courts have no probate jurisdiction. Where a state law, statutory or customary, gives to the citizens of the state in an action or suit inter partes the right to question, at law, the probate of a will, or to assail probate in a suit in equity, the courts of the United States in administering the rights of citizens of other states will enforce sueh remedies. Sutton v. English, 246 U. S. 199, 38 S. Ct. 254, 62 L. Ed. 664; Farrell v. O’Brien, 199 U. S. 89, 25 S. Ct. 727, 50 L. Ed. 101; Gaines v. Fuentes, 92 U. S. 10, 23 L. Ed. 524; Franks v. Chapman, 60 Tex. 46; O’Connor v. Slaker (C. C. A.) 22 F.(2d) 147; Reed v. Reed (C. C.) 31 F. 49; Anderson v. Appleton (C. C.) 32 F. 855.

The will, in its entirety, is not before the court, but, from the removal record, there are some allegations made in the answers of the resident defendants that indicate that the size of some of the local bequests and the size of the working girls’ fund may depend upon the size of the estate and the money realized therefrom, since there seems to be provisions in the will for the reduction of certain bequests upon certain contingencies.

Likewise, in an answer filed by the removing defendants, after the cause reached this court, it appears that the attack is made upon items 11 and 21, instead of items 20 and 21, as shown in the removal petition.

But those matters may he overlooked, since the plaintiff’s petition, in the absence of any suggestion of fraud, 'must control. The plaintiff entered the state court for the purpose of asking that court for construction and advice as to that provision of the will which would make void any legacy which remained unpaid after the expiration of two years. The plaintiff has been unable to realize cash on the properties. It is concerned as to what course it should take.

Coupled primarily and importantly with such construction is its further desire to discover its complete validity. This matter concerns every person that is a beneficiary. They are all joined together by the plaintiff’s allegations, and the cause is a complete entity inseparable and legally indistinguishable. That the nonresident defendants may have their benefits reduced by the validity of the girls’ provision or increased by its invalidity is not such a separate unit of controversy as brings it within the removal statute, and the court would not be justified in partitioning and dividing what the plaintiff desires done as a whole.

It does not certainly appear from the plaintiff’s pleading that the nonresidents are in no way interested in the pleaded desire of the plaintiff to have permission of the court before it delays the raising of funds to that point which might jeopardize the payment of legacies after the two-year period. Nor does it certainly appear that there can be such a separation of the plaintiff’s desire into issues as to make one of those issues determinable wholly by itself between the plaintiff and the nonresident defendants. The plaintiff’s desire is pleaded in such a unit as to make it inappropriate for a court to divide it in the face of the plaintiff’s good faith desire for its determination at one and the same time in the court of its choice.

The authorities agree upon the proposition that all of the beneficiaries under a will are indispensable parties, Harper et al. v. Hudgings (Mo. Sup.) 211 S. W. 63; Loomis Institute v. Healy, 98 Conn. 102, 119 A. 31; Nunnelly et al. v. Nunnelly, 173 Ky. 372, 191 S. W. 85; Marx v. Hale, 119 Miss. 410, 81 So. 119; Brown v. Brown (Sup.) 190 N. Y. S. 373; Early v. Arnold, 119 Va. 500, 89 S. E. 900; but this general rule would probably not control if and when a cause appeared to be clearly separable, even though such cause be for the reading of a will under the removal statute (28 USCA § 71).

The court is persuaded that the motion to remand is well taken.


author: INCH, District Judge.

text:
    CAFIERO & MENCACCI v. NAVIGAZIONE LIBERA TRIESTINA, S. A. WILLIAM A. CAMP & CO. v. SAME. BENNETT DAY IMPORTING CO., Inc., v. SAME.
    Nos. 9777, 9786, 9857.
    District Court, E. D. New York.
    April 8, 1931.

      Harry D. Thirkield, of New York City (Gregory S. Rivkins, of New York City, of counsel), for libelants.
    Loomis & Ruebush, of New York City (Philip A. Donahue, of New York City, of counsel), for respondent.
   INCH, District Judge.

The above three suits were duly tried together, the proofs being offered consecutively, the order being, testimony in the Cañero case first, then the proof in the Bennett Day case, and lastly the proof in the William A. Camp & Co. suit. Onei decision will suffice.

A somewhat similar.series of suits relating to the same ship and same voyage as here, but brought by different libelants and relating to different merchandise, was tried in the District Court, Southern District of New York. The Carso, 43 F.(2d) 736.

In thpse cases the court, among other things, found that the shipowner, having given clean bills of lading for cargo known to be in poor condition, was estopped to assert as against the consignees that the damage occurred before the goods were delivered into its custody and that libelants had made out a prima facie ease against the steamship and were entitled to a decree.

It likewise decided that the notice clause in the' bills of lading, which are the same as the bills in the cases before me, must be considered as an entirety, and was unreasonable and therefore invalid.

However, the facts as to the carrying of the merchandise in the three cases before me are different from the Southern District cases, and must be decided upon the evidence given at the trial.

A great deal of the testimony was presented by means of depositions and by documents, and, before finding the facts as to the individual shipments, there are certain facts applicable to all the cases which I find as follows:

The Carso is a steel, single screw, steamer, built nine years ago, and was less than four years old when the voyage in question took place. Her gross tonnage was over 6,200 tons and dead weight capacity 9,100 tons. The voyage in question had begun at Genoa on September 23,1926, at which place she had received some cargo. She then proceeded to another port, where further cargo had been received on or about September 25, and then came to Naples, where all of the cargo in the three libels before me was received. The Carso had a 100-A-I classification, and had been duly inspected a few months prior to the commencement of this voyage. She had likewise been in .drydock for the purpose of this inspection and for making minor repairs, and had been duly declared seaworthy.

After she had been loaded with libelants’ cargo and other merchandise, she sailed from Naples on October 10, 1926, and proceeded direct to New York, where she arrived on the night of November 6, 1926.

After the usual harbor inspection, she proceeded to her pier No., 3, Erie Basin, where she tied up about 11 o’clock the following day, November 7, 1926.

Her trip over from Naples (26% days) had taken somewhat longer than usual (18 to 20 days), and this is sufficiently accounted for by the fact that, after she had been out about 10 days, and on or about October 21, she ran into a severe storm, whieh was accompanied by gales and heavy seas. She then had the misfortune during this storm to have trouble with her circulating pump, which had to be repaired at sea under these adverse conditions. About a week later, on October 29, she encountered a second storm of even greater severity than the first; the wind reaching hurricane force. Finally, on November 5, a day from New York, she encountered still another storm, which was accompanied with high seas, rain, and wind.

According to her captain, an experienced man, these series of storms were unusually severe. It can be easily inferred that she rolled and tossed considerably.

There was nothing, however, indicating extraordinary peril or any such situation as is sometimes relied upon as an excuse for injury to cargo.

Likewise, in each of the eases before me, the libelants produced clean bills of lading, and claim that the shipowner was negligent in stowing the” various merchandise of libel-ants, causing, by such carelessness, damage to consignees’ merchandise by contact with decayed eheese in one instance (Cañero shipment), and with cherry brine or some similar salty substance in the other eases (the Bennett Day and Camp & Co. shipments).

The burden of proving such negligence rests upon libelants, and they each are obliged affirmatively to establish such negligence on the part of the carrier before they can recover.

The libels are drawn to cover any possible damage, and upon the trial it appears that the amount claimed is greatly exaggerated. In the Cañero case, relating to 1,250 eases of canned tomatoes, the libel claims $2,000, damage, but proctor for this libelant in his brief states that the amount of damage will be less than $500, representing the reconditioning of the cases and relabeling of same.

In the Bennett Day libel, consisting of 3,500 bags of nuts, the sum of $10,000 is claimed, but at the trial proctor for libelant states that this damage amounts to less than $200, and the proof shows that out of over the 3,500 bags of nuts only 26 bags were found to be damaged in any way; this being slightly more than half of 1 per cent, of the entire shipment of nuts for this consignee.

In the Camp case, relating to approximately 3,200 bags of nuts, the same claim of $10,000 is made, but proctor for' libelant asserts the damage to be something in the neighborhood of $2,000, while the proof here likewise indicates that, after certain bags were sent to the federal warehouse for reconditioning, only a few bags were found to be damaged, an equally small proportion of the entire shipment to this consignee.

Bearing the above in mind, we can now take up the individual shipments, and I will do so in the order of proof already mentioned.

The Cañero case relates to some 1,250 eases of canned tomatoes. There were 500 eases containing 48 cans each, 750 cases containing 24 cans each. These eases were about 18 inches wide and 15 inches high. At the bottom of hold No. 1 was stowed four tiers of these cases of cans of tomatoes, then was put some dunnage and mats, and then, on top of this, was stowed a large number of eases of this cheese which has already been the subject of controversy in the Southern District.

The eheese was contained in eases 3 feet long, about 2 feet deep, and altogether there were about eleven tiers of these cheese cases, bringing them pretty near to the deck of the ’tween deck. On them some more dunnage was placed, and on top of this was placed some of the bags of walnuts and filberts which are in controversy in the Bennett Day and Camp & Co. shipments.

The temperature at Naples was about 82 degrees. The course of the ship and the rough weather encountered caused her to continue in the Gulf Stream and remain in its vicinity longer than usual. The result was that, when the eases of canned tomatoes were delivered at New York, there seems to be little, if any, dispute that damage had been sustained by them by staining, which required reconditioning and relabeling. The cause of this damage consisted of animal fat or grease which had leaked out from the cases of cheese above and down and upon the cases of tomatoes beneath.

Briscoe, a marine surveyor, at the pier at New York, terms this animal fat as “seepage from the cases of cheese”; that the “eheese was painted with this animal fat as a protection.”

It is plain that the cases of canned tomatoes were so stowed that, in the event of such leakage, the cargo beneath had no protection at all from it. In fact, so far as I can see, all the witnesses for the ship, Monta, the captain, Schoffel the first officer, and others, indicate this source of this damage to the cases of tomatoes.

Cocks, a surveyor witness for the ship, likewise states that he found some of the eases of canned tomatoes covered with this “grease.” He states that he found “40 cases stained with grease and 234 cases covered with grease and vermin.” In other words, “75 per cent of stain was due to sweat and 25 per cent to grease from the cheese,” of those he found affected, “476 cases” of the 1,250 “being sound and unaffected.”

While the burden of proof to show negligence rests upon libelant, The Isla De Panay (C. C. A.) 292 F. 723, yet, before the respondent can avail itself of exceptions in its contract where merchandise is shown to have been received in good order and condition and delivered in bad order and condition, respondent must show a seaworthy vessel, and that the merchandise was properly stowed in a proper berth. The Thomas P. Beal (C. C. A.) 11 F.(2d) 49. It must satisfactorily explain these matters. The Southwark, 191 U. S. 1, 24 S. Ct. 1, 48 L. Ed. 65; The Wildcroft, 201 U. S. 378, 26 S. Ct. 467, 50 L. Ed. 794; Kaufer v. Luckenbach (D. C.) 294 F. 978. Such proof cannot be supplied by speculation. Herman v. Compagnie Generale (C. C. A.) 242 F. 859. It has been said that a doubt in regard to these matters should be resolved in favor of the shipper. The Edwin I. Morrison, 153 U. S. 199, 14 S. Ct. 823, 38 L. Ed. 688.

It is not necessary here to decide the exact extent of damage. It is sufficient if I find that some damage due to negligence was caused.

According to Briscoe, and I so find, it was improper stowage to place this cheese in the way it was placed on the top of the cases of canned tomatoes, considering the temperature and all the surrounding circumstances of the proposed voyage and the reasonable result, which should have been anticipated, occurred, which could have been avoided by the exercise of ordinary care and skill on the part of those in charge of the stowage of this merchandise.

As to the failure to comply with the notice clause of the bill of lading, I shall follow the decision of the District Court, Southern District. Shreve v. Cheeseman (C. C. A.) 69 F. 785-790. The bills before the Southern District Court are identical with the bills here. The ship arrived November 7, 1926. Briscoe examined the goods on the pier, and found the damage on or about November 16, 1926. Cocks, the expert for the ship, did the same on November 18, 1926, both examinations taking place while the ship was at the pier. On November 20, 1926,-proctor for libelant notified the proctor for the ship by telephone of the proposed filing of a libel, and received a confirmatory letter on November 22, 1926 (Libelant's Exhibit 6), and on December 1, 1926, the libel was duly filed. The D. Harvey (D. C.) 139 F. 755; Anchor Line v. Jackson (C. C. A.) 9 F.(2d) 543-545.

Accordingly, as to this shipment, because of improper stowage and negligence, libel-ant is entitled to a decree, the amount of damage to be determined later.

The next case is that of Bennett Day, and both this and the ease of Camp & Co. have substantially the same facts. Both of these consignments consisted of bags of walnuts and filberts. These were stowed in the 'tween decks, and the damage claimed by libelants consisted of staining of the bags; • the controversy being as to the nature of the stain. Libelant claims that this arose from leakage from barrels of cherries in cherry brine which was stowed near by. This is directly controverted by witnesses for the ship. In each of the suits the actual amount of damage due to staining from any cause appears to be nothing out of the ordinary, considering the weather encountered by the ship, the reasonable time contemplated for her voyage, and all the circumstances thereof.

It has been held in regard to perishable cargo that there is a certain normal loss to be expected. The Florinda (C. C. A.) 31 F.(2d) 262. While this does not apply to a covering such as bags, the proportion of damage here to the entire shipment is an element that can properly be considered on the question of whether there was negligence.

Briscoe, for the libelant, who examined the hags of nuts and found certain of them stained, gives his opinion that these stains were caused hy cherry brine leaking from the barrels.

Cocks, the surveyor for the ship, is equally positive that the stain was caused by “sweat,” of which he found evidence within the decks of the ship. Both tested the stains,. and there is an absolute contradiction in the testimony of these two expert witnesses.

It is my opinion, after considering all the testimony, that the libelants in question have failed to prove, by a fair preponderance of evidence, the cause of the staining of these bags of nuts, and that the same was due to cherry brine and negligence.

On the contrary, it seems to me that, in spite of all reasonable precautions and due care, the comparatively few bags of nuts were stained by sweat and under circumstances which show it could not be avoided, however carefully they had been stowed.

Accordingly, in these two libels (Bennett Day and William A. Camp & Co.), the libel-ants have failed to prove a cause of action, and the libels must therefore be dismissed.

I direct a decree in favor of libelants Cañero & Meneacci, with costs, and the usual reference] I dismiss the libels of Bennett Day Importing Company, Inc., and William A. Camp & Co., with costs.

If this opinion is not considered a sufficient compliance with rule 46% of the Rules in Admiralty (28 USCA § 723) findings of fact and conclusions "of law in accordance herewith may be submitted.

Settle decrees on notice.


author: NIELDS, District Judge.

text:
    GIBSON et al. v. SMOOT ENGINEERING CORPORATION.
    No. 601.
    District Court, D. Delaware.
    May 25, 1931.
    John E. Hubbell, of New York City, and William G. Mahaffy, of Wilmington, Del., for plaintiffs.
    Richard Eyre, of New York City, and Charles F. Curley, of Wilmington, Del., for defendant.
   NIELDS, District Judge.

George H. Gibson, patentee, and Leeds & Northrop Company, his licensee, filed tHeir bill of complaint in this court charging infringement of forty-one claims of five patents. All of these el-aims relate, generally speaking, to automatic control mechanism for boiler furnaces. On final hearing this court entered a decree dismissing the bill of complaint with respect to certain of the letters patent, and adjudging the defendant to have infringed certain other of those patents, including claims 1, 12, 13, and 16 of Gibson patent, No. 1,167,343. 28 F.(2d) 123. This decree was affirmed by the Circuit Court of Appeals. 40 F.(2d) 819.

The defendant has filed its petition bringing to the attention of the court a letter sent to the hoard of water and electric light commissioners of Lansing, Mich., by Leeds & Northrop Company, one of the plaintiffs. Defendant asserts the letter misrepresents the decision of this court and of the Circuit Court of Appeals, and was sent for the purpose and with the effect of injuring the defendant. The letter complained of was sent under the following circumstances. The board of water and electric light commissioners of the city of Lansing published specifications for a complete piping system to be installed in the extension to Moores Park Station in that city, including, among other things, a complete combustion control system for four boilers “as manufactured by the Smoot Engineering Corporation, and known as Smoot control, or equal.” The specifications also contained a description of the combustion control system called for. The defendant and the plaintiff Leeds & Northrop Company were competing bidders for the combustion control portion of the contemplated extension. The defendant was the successful bidder. Thereupon the Leeds & Northrop Company wrote the letter above complained of to the Lansing board, stating, among other things:

“We understand that the specifications for Moores Park Station specify combustion control apparatus, covered by claims 1, 12, 13 and 16 of U. S. Patent 1,167,343 granted to George H. Gibson, January 4, 1916. We have exclusive license rights under this patent, a copy of which is enclosed.
“The Court of Appeals for the Third Circuit recently held the above claims valid and infringed in a suit brought by Gibson and our company against the Smoot Engineering Corporation.
“We feel that you would not knowingly purchase from someone else, and install, combustion control apparatus infringing the above claims, and it is the purpose of this letter to notify you that apparatus, called for by the above mentioned specifications, we hold infringes these claims as construed by the Court of Appeals. It is not our desire to influence you toward the installation of our apparatus merely because of our patent rights, as we want all of our combustion control apparatus to be purchased on its merits. However, we are the only company which can supply combustion control apparatus according to the next to the last paragraph of page 1 of your specifications, as we are the only company having license rights under the above Gibson patent.”
The paragraph of the combustion control specification referred to in the letter reads: “The air regulator at each boiler shall balance the impulse from the master controller against the measure of the air supply of the boiler, as indicated by the boiler draft. This regulator shall move the boiler outlet damper through a suitable power cylinder or other power amplifying device.”'

This letter coming to the attention of the defendant, its counsel wrote to Leeds & Northrup Company stating, with respect to the above-mentioned letter, “These ■ statements are without justification, and we call on you to disavow them forthwith by a suitable letter to the recipient of your former letter;” and further, “We regard the writing of such a letter as this to customers or prospective customers of the Smoot Engineering Corporation as the making of an improper use of the process of the courts and as an act of unfair competition. * * * ” Counsel for Leeds & Northrup Company, in their reply to this letter, after quoting the above-mentioned paragraph of the specification, stated, “In view of the paragraph just quoted, I see no basis for your criticism of the Leeds & Northrup Company letter of June 20, 1930.” Thereupon defendant came into court asking for injunctive relief.

It is apparent from a study of the record that there is a definite difference of opinion between the parties, not only as to the proper interpretation to be given to the opinion of the court and the scope of the claims in question, but also as to what apparatus could be furnished under the Lansing specification and at the same time be without the scope of the claims of the Gibson patent in question. In view of the conclusion hereinafter reached it is unnecessary to decide now the disputed construction sought to be placed on such opinion, claims, and specification.

The plaintiffs had an undoubted right to notify the customer of the defendant of its patent rights under the Gibson patent. Clip Bar Mfg. Co. v. Steel Protected Concrete Co. (D. C.) 209 F. 874; Racine Paper Goods Co. v. Dittgen (C. C. A.) 171 F. 631. “Patents would be of little value if infringers of them could not be notified of the consequences of infringement, or proceeded against in the courts. Such action, considered by itself, cannot be said to be illegal.” Virtue v. Creamery Package Mfg. Co., 227 U. S. 8, 37, 33 S. Ct. 202, 208, 57 L. Ed. 393. This right, however, is limited by the requirement of good faith. Should it appear that, under pretense of giving notice of patent rights, a patentee, or one claiming under him, is pursuing a course which is calculated to injure unnecessarily a competitor’s business and with the plain intention of so doing, his conduct will be deemed malicious. Such a patentee brings himself within the rule of law obtaining in eases of unfair competition in trade, and is subject to injunction. Racine Paper Goods Co. v. Dittgen (C. C. A.) 171 F. 631.

I think this ease comes within the principle so well stated by Judge Denison, speaking for the Circuit Court of Appeals for the Sixth Circuit, in Alliance Securities Co. v. De Vilbiss Mfg. Co., 41 F.(2d) 668, 670. He there said: “We are aware of no ground upon which claims of infringement made by a patentee can be considered a legal wrong unless those claims are made in bad faith; that is, maliciously. This bad faith may be made to appear in a variety of ways, but until it does appear the patentee has the right to notify all those whom he believes to be infringing that he will hold them for such liability as he may be able to. establish.”

The affidavits and exhibits do not satisfy me that the Leeds & Northrup Company in sending this letter acted in bad faith. The important fact to be determined at this time is not whether the opinions and belief expressed in good faith by the skilled officers or employees of the Leeds & Northrup Company as to the meaning of the Lansing specification, the opinion of the Court of Appeals, and the scope of the claims of the-Gibson patent, are sound, or, on the other hand, whether the views taken of such specification, opinion, and claims by the skilled officers and employees of the defendant, are to be accepted. The crucial fact is whether the letter was written in good faith and expressed the opinions and belief actually entertained by the officers of the Leeds & Northrup Company. The letter to which objection is made was prepared and sent under the advice and upon the recommendation of patent counsel who represented the plaintiffs throughout this extended and hard-fought litigation. The substance and form of the letter was approved by the general patent counsel of the Leeds & Northrup Company. While it is true that advice of counsel is not always a complete defense to a charge of this kind, yet when one believes that he has a patent which will be infringed by the construction of a competitor, and that belief is substantiated by advice of reputable and learned counsel, whose good faith in giving it is not in dispute, it is at least doubtful whether a finding of bad faith on the part of the patent owner in sending a notice or warning of probable infringement to the competitor, or the competitor’s customer, could be sustained. The letter enumerated the claims of the patent relied on and inclosed a copy of the patent. It also called particular attention to the portion of the Lansing board specification which the Leeds & Northrup Company believed called for the furnishing of infringing apparatus. As to this portion of the specification, the letter stated, “We understand that the specifications for Moores Park Station specify combustion control apparatus, covered by” the claims of the Gibson patent in question. At most, this can only be said to express an opinion or belief. If in doubt, the Lansing board had before it its own specifications, and a copy of the patent, and was in a position to form its own judgment on the alleged charge of infringement. The most objectionable portion of the letter is the statement that the apparatus called for by the specification “we hold infringes these claims as construed by the Court of Appeals.” A copy of the opinion of the Court of Appeals, however, was not inclosed with the letter. It might well have been. Here again I think the use of the words “we hold” sufficiently qualifies the later phrase “infringes these claims as construed by the Court of Appeals” and clearly indicates to the recipient of the letter that it was but the expression of an opinion or belief on the part of the writer.

Further, the letter was sent to a municipal board. The court may take judicial notice of the fact that such boards usually, if not universally, have available to them the services of experienced counsel, and that contracts are let only on the advice and approval of counsel. Under these circumstances, it is difficult to conceive that the letter in question read as a whole would be considered by the Lansing board other than as an expression of opinion on the part of the Leeds & Northrup Company that the claims of the Gibson patent covered any apparatus that would comply with the combustion control specification issued by the board. Nor is there a scintilla of evidence that the board was in fact in any way misled or influenced by the receipt of the letter. It is true that when the formal order for the desired apparatus was given, it contained a clause making the order expressly contingent upon the defendant satisfying the city of Lansing that the latter would be protected against damages for patent infringement or litigation. But the defendant does not contend that the inclusion of such clause was due to the Leeds & Northrup Company letter. Such a patent protection clause is a usual one in such cases.

On the whole, I am not satisfied that the defendant has presented a case justifying the exercise of - the injunctive power of this court. In reaching this conclusion I am not unmindful of the importance of a court of equity seeing that its decrees are not made the means of working an injustice. But the situation before the court is far different from that considered by this court in Radio Corporation of America v. Radio Audion Co., 284 F. 581, 582, wherein Judge Morris found that many copies of the objectionable letter had been sent out to distributors, jobbers, and dealers in general, and that statements in the letter “were improper, misleading and deceptive.” Likewise, in Rollman Mfg. Co. v. Universal Hardware Works, 238 F. 568, 569, Judge Buffington, speaking for the Circuit Court of Appeals of this circuit, with respect to the letter there in controversy, found, “This disingenuous letter subtly left to be inferred by the defendant’s customers as facts and conclusions that which the writer carefully abstained from so stating.”

The prayer of the defendaht’s petition must be denied.