(118 Misc. Rep. 571)

(195 N.Y.S.)

EAGLE PENCIL CO. v. BAEHR.

(Supreme Court, Special Term, New York County. April, 1922.) Trade-marks and trade-names and unfair competition 68-Injunction for al

leged unfair competition denied.

Where plaintiff for many years has manufactured and sold a compass and divider protected by letters patent which have now expired, and defendant is importing and selling a compass and divider with all the essential features of plaintiff's article, the appearance being notably similar, so that a purchaser might not notice minor differences between them, but plaintiff's article has been sold in containers, showing the manufacturer, whose name is pressed on the article, and defendant's article was sold without container or name of manufacturer, held that, there being nothing in the moving papers to suggest that plaintiff's article had been sold in any part because of its source, as distinct from its utility or neat appearance, which alone would justify a refusal of an injunction, but further there being nothing in the use of the nonessential or ornamental features of defendant's articles to suggest it was manufactured by plaintiff, a motion for injunction must be denied.

Action by the Eagle Pencil Company against Eugene B. Baehr. On motion for an injunction. Motion denied.

Seasongood & Eager, of New York City (Clifford Seasongood, of New York City, of counsel), for plaintiff.

Cornell, Lockwood & Jeffery, of New York City (John L. Lockwood, of New York City, of counsel), for defendant.

LEHMAN, J. The plaintiff has for many years manufactured and sold a compass and divider which was protected by letters patent which have now expired. The defendant is now importing and selling a compass and divider which contains all the essential features of the compass and divider manufactured by the plaintiff, but also many nonessential features, so that, in spite of some minor differences, the appearance of the two articles is noticeably similar, and a casual, and perhaps even a careful, purchaser might not notice the differences. The plaintiff now seeks an injunction against the continued importation and sale by the defendant of an article, on the ground that it so closely resembles the article manufactured by the plaintiff as to be calculated to deceive the public.

In the case of Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169, 185, 16 Sup. Ct. 1002, 1008 (41 L. Ed. 118) the court stated:

"It is self-evident that on the expiration of a patent the monopoly created by it ceases to exist, and the right to make the thing formerly covered by the patent becomes public property. It is upon this condition that the patent is granted. It follows, as a matter of course, that on the termination of the patent there passes to the public the right to make the machine in the form in which it was constructed during the patent." (Italics are mine.)

This rule is so well established that no further argument or citation should be necessary to show that the defendant is entirely within his rights in selling the same article in the same form as the plaintiff has previously manufactured, subject, however, to one limitation laid down in the same case, viz. that he may not deceive the public into

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the belief that the article which he sells is manufactured by the same party which has previously had the sole right of manufacture and sale. In other words, the defendant has the right to sell the very same article manufactured and sold by the plaintiff, and therefore he has the right to tell the public in effect that it is the same article, but he has no right to tell the public in effect that it is not only the same article, but is derived from the same source.

There are a number of cases where the courts have held that the use of similar containers, or the inclusion in an article of ornamental, fanciful, or nonessential features previously used in connection with a patented article, are sufficient to induce a mistaken belief in the public that the source of the article is the same, and constitutes unfair competition with the original manufacturer, and it is claimed that under the authority of these cases the defendant herein may be enjoined. It seems to me, however, that the present case is clearly differentiated from the cases on which the plaintiff relies. The plaintiff's article has been sold in containers showing the manufacturer, and the manufacturer's name is pressed on the article, and there is nothing else about the article which in any way suggests a trade-mark or source of origin. The defendant's article is sold without container or name of manufacturer. There is nothing in the moving papers herein to suggest that the plaintiff's article has been sold "in any part because of its source as distinct from its utility or neat appearance," and in the case of Crescent Tool Co. v. Kilborn & Bishop Co., 247 Fed. 299, 159 C. C. A. 393, this fact alone was held sufficient to justify the refusal of an injunction, and further in this case there is nothing in the use of the nonessential or ornamental features which suggests to the public that the article is manufactured by the plaintiff. Undoubtedly the defendant is seeking to obtain the benefit of the demand by the public for the patented article, and he has a right to obtain this benefit by filling the demand through the sale of the same article, even though the demand has been created by the plaintiff. The skill and ingenuity of the plaintiff in designing an article of utility and neat appearance, pleasing to the public taste, gives them no superior right to the article designed by them after the expiration of their letters patent. They have the right only to enjoin a misrepresentation, express or implied, as to the source of the article, and I can find nothing in the present case to justify a finding that the nonessential features of the article copied by the defendant are intended to indicate or do indicate to the public that the article sold by the defendant is manufactured by the plaintiff.

In view of this determination, it seems unnecessary to consider the other contentions raised by the defendant. Motion denied, with $10

costs.

Ordered accordingly.

(118 Misc. Rep. 593)

(195 N.Y.S.)

SHEAFER v. VERMONT HYGEIA ICE CO. et al.

(Supreme Court, Special Term, New York County. May, 1922.)

1. Process 110-Service of defendant out of state, in lieu of publication of summons, complete ten days after filing of service.

The service of a defendant without the state, in lieu of publication of summons, under Civil Practice Act, § 233, is complete 10 days after the filing of proof of service under Rules of Civil Practice, No. 51.

2. Process 110-Service of defendant without state complete on actual service of summons.

Where a defendant in an action involving title to real estate is served outside of the state, and an order permitting such service is not required under Civil Practice Act, § 235, the service is complete on actual service of the summons.

Action by Henry Sheafer against the Vermont Hygeia Ice Company, the City Trust Company, and others. On plaintiff's motion for default judgment against the last-named defendant. Motion granted.

Leary & Somers, of New York City, for plaintiff.

Miller, Bretzfelder & Ruskay, of New York City, for defendants.

MCAVOY, J. [1, 2] The question arises here as to whether service is complete against a defendant served without the state, without an order permitting such service under section 235 of the Civil Practice Act. If service be made without the state in lieu of publication of a summons under section 233, service is complete 10 days after proof thereof is filed. See Rules of Civil Practice, rule 51. There is no provision, either in the Civil Practice Act or the Rules of Civil Practice, providing for the time when service may be deemed complete in the instance of service without the state where no order is required under the Code of Civil Procedure lately superseded. Provision for service without the state under an order for publication of the summons was made by subdivision 1 of section 443 thereof. Service without the state without an order was regulated by subdivision 3 of the same section. The time within which service was deemed complete under the Code, either made personally without the state under an order for publication or without an order, was the same—that is, 10 days after proof of service was filed. This regulation was found in subdivision 4 of section 443 of the Code, and, being contained in the same section in which both sorts of service were provided for, doubtless governed in either instance. Subdivision 4 is transferred to rule 51 of the Rules of Civil Practice, but is amended by adding, in so far as it is applicable to the situation, the words "in lieu of publication," and now reads:

"Service without the state in lieu of publication is complete ten days after proof thereof is filed."

This, unquestionably, distinguishes proof of service without the state in lieu of publication from proof of service without the state without an order for publication. The omission of a direction from

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both the act and the rules with respect to proof of service without the state, without an order that it shall be deemed complete 10 days after proof of service is filed, makes it evident that proof of service of a summons without the state without an order is deemed complete upon actual service of the summons outside the state. It is therefore ruled that the defendant City Trust Company is in default, and judgment may be entered against it upon the proof already filed. Ordered accordingly.

MULLEN v. SIOLA RUBBER MFG. CO., Inc.

(Supreme Court, Appellate Division, Second Department. June 29, 1922.) Appeal and error 221-Amount of recovery, raised first on appeal, not reviewed.

Where trial justice, while plaintiff's counsel was summing up to the jury, notified counsel that he intended to charge the jury "that they must find a verdict for the plaintiff for the full amount, or a verdict for the defendant," and no suggestion of an objection to the intended charge was made, and none was made when the justice charged to that effect, defendant will not be allowed to raise the question of damages for the first time on appeal.

Action by Tobias P. Mullen against the Siola Rubber Manufacturing Company, Inc. Judgment for plaintiff, and defendant appeals. Affirmed.

Argued before BLACKMAR, P. J., and KELLY, JAYCOX, MANNING, and KELBY, JJ.

PER CURIAM. The jury's finding that plaintiff was wrongfully discharged from his employment is supported by the evidence, and will not be disturbed on appeal. The learned trial justice, while plaintiff's counsel was summing up to the jury, notified counsel that he intended to charge the jury "that they must find a verdict for the plaintiff for the full amount, or a verdict for the defendant." No suggestion of an objection to this intended charge was made by defendant's counsel; nor later, when the trial justice charged to that effect, did defendant's counsel except or offer any request to charge. It sufficiently appears, we think, that defendant relied on its defense that plaintiff was rightfully discharged. Under the circumstances, defendant will not be allowed to raise this question of damage for the first time on appeal. Judgment and order unanimously affirmed, with costs.

BESSEY V. DRISCOLL et al.

(Supreme Court, Appellate Division, Second Department. June 29, 1922.) New trial 60-Contradictory verdict set aside.

A verdict by the same jury in the same case, making two contradictory decisions on the same essential issue, is "contrary to law," under Civil Practice Act, § 549, authorizing presiding judge to set aside verdicts contrary to law.

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(195 N.Y.S.)

Action by Charles Bessey against John Driscoll, impleaded with another. From orders setting aside a verdict for inconsistency, defendant Driscoll appeals. Affirmed.

PER CURIAM. The orders entered by the court in January recited that defendant had moved to set aside the verdict as against the corporation, and also that plaintiff had moved to set aside the verdict in favor of defendant Driscoll.

We must assume that this recital meant that a regular motion had been made at the proper term. This assumption accords with what appears on the minutes as having taken place on the 20th day of December, during the term at which the case was tried. Defendant moved to set aside the verdict as against the corporation, to which plaintiff's counsel consented on the ground of inconsistency. Defendant then emphasized the fact that the motion he made was in behalf of the corporation alone, and the court said: "And Mr. Buter joins in the application to set it aside on the ground that the verdict is inconsistent." The court thereupon stated that the motion was granted and the case returned to the general calendar for trial.

The remarks of the court and the counsel, made at the time of the trial, are susceptible of the interpretation that the court stated that plaintiff had moved to set aside the verdict on the ground of inconsistency, and that this referred to that portion of the verdict which was in favor of defendant Driscoll. No other reasoning is admissible, for the plaintiff had already consented to the limited motion made by defendant. We think that the recital in the order was fully justified by what appears in the clerk's minutes. The court had power to set aside the verdict in favor of defendant Driscoll. The Civil Practice Act (section 549) authorizes the judge presiding at the trial to set aside the verdict because it is "contrary to law." A verdict by the same jury in the same case, making two contradictory decisions on the same essential issue, is "contrary to law." Orders unanimously affirmed, with costs.

WARD v. MORSCHAUSER, Supreme Court Justice.

(Supreme Court, Appellate Division, Second Department. July 22, 1922.) 1. Prohibition 3(1)—Granted only in cases of extreme necessity.

The writ of prohibition should be granted only in cases of extreme necessity and where no other remedy can be had.

2. Prohibition 3(1)-Law affords ample protection for a rest.

The law affords ample protection to one threatened with arrest.

In the matter of the application of Walter S. Ward for alternative writ of prohibition against Joseph Morschauser, Justice of the Supreme Court of the State of New York. Application denied.

PER CURIAM. [1] Application for alternative writ of prohibition denied, in the exercise of our discretion. The facts presented are in

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