Graham v. Plate

CroGKETT J., delivered tbe opinion of tbe Court, Rhodes, C. J., Wallace, J., and Temple, J., concurring:

Tbe two grounds chiefly relied upon by tbe defendant for a reversal of tbe judgment are: First — That tbe evidence shows that tbe trade-mark of Henry Deringer was used under a license from him by tbe defendant; and, Second— That there was no proof that Deringer suffered any damage by tbe use of tbe trade-mark, and tbe damages awarded by tbe Court are excessive. But neither point is tenable. Tbe evidence in respect to tbe license, when viewed in tbe light most favorable for tbe defendant, was, at least, conflicting. Deringer testifies explicitly that be never granted any such license; and it is highly improbable that be ever did, considering all tbe circumstances disclosed by tbe evidence. I think tbe finding on this point is fully supported by tbe weight of evidence.

On tbe second point there is as little room for doubt. It clearly appears in proof, that tbe defendant has made a profit of $1,770 by tbe sale of pistols made in imitation of tbe Deringer pistol, and bearing Deringer’s trade-mark stamped thereon without bis consent; and tbe Court rendered a judgment for this amount against tbe defendant. It is insisted, on behalf of tbe defendant, that tbe profit realized by him from sales of tbe spurious article under tbe simulated trade-mark, is not a proper measure of damages. It is conceded that this is tbe proper rule in an action for damages for tbe infringement of a patent. It is said that tbe patentee, having tbe exclusive right to- manufacture and vend the patented article, is entitled,» legally and equitably, to all the profits made by any one from tbe manufacture and sale of it in violation of tbe rights of tbe patentee; but that one, who has acquired an exclusive right to use a particular trade-mark, has not thereby acquired an exclusive right to make and vend tbe commodity to which the trade-mark is affixed; that any one has the right to make and vend the same commodity, in exact imitation of that made by tbe owner of tbe trade-mark, and [598]that the offence consists, not in imitating the commodity, but the trade-mark only. Hence, it is argued, the profit made by a sale of the commodity ought not to be a measure of the damages; but the party is entitled to only such damages as resulted from a piracy of the trade-mark; and the profit realized by a sale of the commodity does not establish the amount of this damage, which may be greater or less than the amount of the profit. It is evident that the profit realized by the wrong-doer is not the only measure of damages. The spurious article may have injured the credit of the genuine one, and the profits of the owner of the trade-mark may have been greatly reduced, whilst the wrong-doer has made little or no profit. But whilst the profit made by the latter does.not limit the recovery, the owner of the trade-mark is entitled to all the profit which was in fact realized. In sales made under a simulated trade-mark it is impossible to decide how much of the profit resulted from the intrinsic value of the commodity in the market, and how much from the credit given to it by the trade-mark. In the very nature of the case it would be impossible to ascertain to what extent he could have effected sales and at what prices except for the use of the trade-mark. No one will deny that on every principle of reason and justice the owner of the trade-mark is entitled to so much of the profit as resulted from the use of the trademark. The difficulty lies in ascertaining what proportion of the profit is due to the trade-mark, and what to the intrinsic value of the commodity; and as this cannot be ascertained with any reasonable certainty, it is more consonant with reason and justice that the owner of the trade-mark should have the whole profit than that he should be deprived of any part of it by the fraudulent act of the defendant. It is the same principle which is applicable to a confusion of goods. If one wrongfully mixes his own goods with those of another, so that they cannot be distinguished and separated, he shall lose the whole, for the reason that the fault is his; and it is but just that he should suffer the loss rather than an innocent party, who in no degree con