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10 F.(2d) 22

retired. At the end of about 48 hours, and after successive reports from the jury, and after some supplemental charges had been given or refused, it became evident that the jury was about equally divided, that for 24 hours it had made no progress toward agreement, and that the jurors were convinced they could not agree. In answer to questions from the court, counsel for each party then said he thought an agreement was hopeless, and that the jury must be discharged. Thereupon the trial judge announced, in effect, that the public interest and the pressure of business upon the court made it important to get an agreement, if possible; that he thought the jury was unable to agree because controlling evidence had been kept away from them; that upon the two defensive issues Mr. and Mrs. Goffe and Sands and Isaacs were the persons who were best informed, and though all had been available, and some of them in the courtroom, no one of them had been called as a witness by either party; and that, under all the circumstances, this was a suppression of evidence which the court, in the public interest, should not permit. Accordingly he caused these four witnesses to be called, and they were examined in part by the court and to some extent by the parties, each of whom, however, disclaimed any responsibility for the witnesses. Further argument and charge were waived by both parties. Two special questions were submitted as to whether the fire was set by or for plaintiff, and whether there was fraud in the proofs of loss. The first question the jury answered in the negative, and the second in the affirmative, and there was a judgment for the defendants.

[1-3] We think there must be a reversal, on account of the reopening of the case, instead of discharging the jury. We base this conclusion on the particular facts of this case, without passing in any more general way upon the powers or duties of the trial judge under more or less analogous situations. The issue of intentional fire has, for the purposes of this review, disappeared from the case; the jury found the fire was not so caused, and the plaintiff cannot complain of this result nor of the proceedings which led up to it. That left the claim of fraudulent proof as the only defense remaining pertinent. The proof strongly tended to show-to say the least-that the statements of property destroyed were greatly exaggerated, and the substantial controversy was whether these excessive claims were made fraudulently or in good faith. Upon this point Mrs. Goffe and her husband, so far as he represented her in

the matter, seemed to be the best witnesses. However, as it turned out, and as plaintiff's counsel probably knew, they were unable as witnesses to make entirely satisfactory statements as to the vast amount of detail involved. This inability, even if perfectly honest, was bound to count against their credibility. Plaintiff's counsel had doubtless considered this question from both sides, and decided that the interest of the creditors represented by the plaintiff made it wiser for him to submit to any inferences which might be drawn from not calling these witnesses, rather than to suffer the inferences which their ignorance or confusion might create. Such a question is, normally, a proper one for counsel to decide finally; and, even though the plaintiff trustee stood in most respects in the shoes of the insured, yet, in deciding a question like this, counsel may well take the creditors' interest into account.

We conclude that, under these conditions, there was no such suppression, or quasi suppression, of apparently material evidence as to justify the trial judge in the course taken. If important documents, or facts which would appear rather indisputably, or an entire subject-matter1 were omitted, the power of the judge to complete the record would present a different question; and it is not without importance that the jury had, in practical effect, already disagreed. If such action by the trial judge as that here involved had been taken upon the close of the evidence, the case would have a different aspect, while postponing it till the jury has disagreed will tend to encourage experimentation.

[4-8] Since the case must be tried again, the other errors chiefly urged should be noticed, even if not duly saved:

(a) The judgment in the state court in one of the unremoved cases is not an adjudication controlling this one.

(b) Mrs. Goffe was the equitable owner of the cause of action, subject to the charge for her debts, and Walz, trustee, was not a bona fide assignee for value. Hence, if for no other reason, the admission and statements aginst her interest by Mrs. Goffe and her agent, made after the assignments, were generally admissible. If their effect

1 In Bank v. Maines (C. C. A. 6) 195 F. 62, 115 C. C. A. 64, after the testimony was closed and each party had offered no proof on one issue, claiming the burden was on the other, the trial judge called a witness having knowledge thereon, opening the subject, which the parties then tried out. This course was approved, sub silentio, by this court.

should be limited, as against any special interest represented by plaintiff, that can be carefully done.

(c) The trial judge's definition of that fraud in the proofs of loss which would defeat the policy was sufficiently favorable to Mrs. Goffe. If her statement was intended to get money, and was materially false, and was believed by her to be false, we know of no rule, state or federal, which would require also her absolute personal knowledge that it was false. Indeed, we do not observe that upon the trial she was required to answer for the fraud of her agent, acting within the scope of his employment, or for that fraud sometimes imputed to a statement made without any reasonable ground to believe it true.

(d) The act of 1921, passed after this fire, had no application to this loss, even if otherwise applicable to the case.

(e) Plaintiff's requests, as far as proper, were given in substance.

(f) The declarations of another, not covered by the principles of agency, and which depend for their ultimate rightful presence in the case upon the finding by the jury that a conspiracy did exist, should not be received preliminarily, or retained in the case, except with great care and caution. This will not be overlooked on retrial.

(g) Other points discussed, as far as there may be any fair ground for criticism, will probably not arise again.

The judgment is reversed, and the case remanded for a new trial.

ered by patent is not the exercise of any right under license, unless there is an adaptation of principle covered by patent.

In Error to the District Court of the United States for the Eastern Division of the Northern District of Ohio; D. C. Westenhaver, Judge.

Action by the Bucher & Gibbs Plow Company against the International Harvester Company of America. Judgment for defendant, and plaintiff brings error, and the defendant brings cross-error to review order sustaining demurrer to particular defenses. Judgment affirmed, and cross-writ dismissed.

Charles Neave, of New York City, and Harry Frease, of Canton, Ohio, for Bucher & Gibbs Plow Co.

H. P. Doolittle, of Chicago, Ill., for International Harvester Co. of America.

Before DONAHUE, MOORMAN, and KNAPPEN, Circuit Judges.

MOORMAN, Circuit Judge. [1] This is a suit at law to recover royalties alleged to be due under an agreement granting to defendant a license under United States reissue patent 13,163 to Frank B. Niesz, assignor of plaintiff, to make and vend tandem disc harrows. The patent was adjudged valid as between the parties in Bucher & Gibbs Plow Co. v. International Harvester Co. (D. C.) 211 F. 473. After that adjudication, the license agreement was entered into, which contains a covenant that forbids defendant's questioning the validity of the patent in a proceeding of this kind. Defendant contends, however, that the harrow it is selling is not covered by the license. So the primary

BUCHER & GIBBS PLOW CO. v. INTER- question here is the nature and scope of the

NATIONAL HARVESTER CO. OF
AMERICA.

INTERNATIONAL HARVESTER CO. OF
AMERICA v. BUCHER & GIBBS
PLOW CO.

(Circuit Court of Appeals, Sixth Circuit.
January 5, 1926.)

Nos. 4367, 4368. 1. Patents 328-Disc harrows, made by IIcensee, held not covered by license as affecting liability for royalties.

Disc harrows, made by one licensed to manufacture harrows under Niesz patent, 13,163, held not covered by license as affecting liability for royalties.

2. Patents 211(1)—Making of machine to perform same functions as patented machine not exercise of rights under license.

Patent licensee's making of machine that will perform same functions as machine cov

Niesz invention in regard to the harrow that defendant is selling. It is the contention of plaintiff that defendant's harrows, though somewhat different in dimensions and arrangement of parts, is in principle the same as the Niesz harrow, whereas defendant's position is that they are fundamentally different, the only similarity between the two being the turning movement, which was not new in Niesz.

In Ohio Rake Co. v. Bucher & Gibbs Plow Co., 266 F. 891, this court considered the Niesz patent, adjudged it invention, and defined the scope of its monopoly. It appeared in that case, and was so held, that the patent was for a combination of elements, all of which were old, producing a new and better type of disc harrow. The contribution of Niesz consisted of a new means of hitching

10 F.(2d) 24

a rear set of in-throw discs to a front set of out-throw discs. The connection, as pointed out in that case, was made by "a reach pivotly connected to the rear end of the tongue, thus making a central flexible draft connection." This method of joining the harrows afforded greater facility in turning, and resulted in the better tracking of the rear gangs. The flexibility in the draft connection permitted the turning of the harrow without strain resulting from resistance of the ground. The tracking benefits were produced by what is denominated as "the structural law of a disc harrow"; that is, the disc being arranged with oppositely facing sides, the lateral pressure or side thrust of one side was counterbalanced by that of the other, so as to keep the rear gangs in proper tracking relation with the front gangs. When the rear gangs were deflected or turned aside, the counterbalancing forces would, under ordinary conditions, act on the pivotal connection, creating a tendency to return the gangs to a normal tracking position.

But the evidence shows that the position of the rear gangs, even under the influence of the counterbalancing lateral pressure, could not be accurately maintained on sloping lands, and besides they were easily deflected or turned aside by obstructions or unusual resistance from the earth. The idea of the patent, however, consisted, as indicated, of a central and flexible draft attachment of the rear to the front harrow. This, it appears, is an element in each of the claims of the patent (Ohio Rake Company Case, supra), and this record brings forward no new art not brought to the attention of the court in that case.

Defendant's harrow, though accomplishing some of the same results as plaintiff's perhaps with greater facility and concededly more accuracy-has some essential differences in principle. It has two connecting draft or reach bars pivoted to the front harrow frame, seemingly nearer the respective ends thereof than the center, and extending rearwardly towards the center, which are engaged midway between the front and rear frames by a U-shaped draft bar attached to the rear frame. The ends of the U-shaped bar at the point where attached to the rear frame are in line with the pivotal connection of the reach bars with the front frame. The line of draft is not central, but is at the outer opposite sides. Facility in turning is obtained by the telescoping of the U-shaped bars into the reach bars. When the front harrow is turned at a sufficient angle, the entire draft is thrown on one reach bar, and

the opposite draft bar telescopes with the Ushaped bar and becomes idle. The extent of telescoping is limited to avoid contact between the rear and front gangs.

As has been observed, the central flexible draft connection of the Niesz patent permits the utilization of the "structural law of a disc harrow" to obtain the proper tracking by the rear gangs in straightway work. The defendant's harrow is different, in that in straightway work it has a substantially rigid connection maintained by the two outer bars, so that there is no utilization of opposing lateral pressure or side thrusts in the prevention of side movements of the rear harrow or the maintenance of alignment. It appears from a preponderance of the evidence, we think, that there is no perceptible departure from alignment in the rear gangs of defendant's device in straightway work under any condition except on hillsides, where there is a slight tendency to swing downhill as the result of gravity, which, however, is not sufficient to prevent the splitting of the ridges made by the front disc. Even in encountering obstructions, the gangs merely "jiggle" momentarily and then right themselves. On the other hand, the rear gangs on plaintiff's harrow are thrown out of alignment when brought in contact with obstructions or certain soil conditions, and the side sways on hillsides are often too great to allow of the splitting of the ridges made by the front disc. The balancing tendency of the opposing lateral pressure is the only force provided by Niesz to bring the rear gangs into alignment when once thrown out. The center of resistance is broader, and much less easily shifted on the rear gangs of defendant's harrow; the line of draft being always inside the draft bars. There is seemingly, in straightway work, no such thing as a central flexible draft connection to the harrow. [2] If, notwithstanding the two reach bars, there is a central flexible draft connection or its equivalent on defendant's harrow, then obviously the sales which it has made must be regarded as having been made under the license, and the royalties sued for are due. But it was not an exercise of any right under the license to make a harrow that would perform the same functions as the Niesz harrow, unless there was an adaptation thereto of Niesz's idea of the central flexible draft connection. That connection's main functionaside from facility in turning, to which we have referred―is utilization of the balancing side thrusts to prevent the side swaying of the rear gangs. Defendant's present structure does not appropriate or utilize those

counterbalancing forces. Its draft connection is along the outer sides. There is substantial rigidity in the straightway work, and the flexibility is only utilized in turning. These differences, we think, place defendant's harrow without the patent.

The cross-writ was brought to review an order sustaining a demurrer to certain defenses set up in the answer. The conclusions just announced render the questions presented thereunder wholly moot, and the writ is dismissed. But the final judgment is affirmed.

HUNYADI JANOS CORPORATION v.
STOEGER.

(Circuit Court of Appeals, Second Circuit.
December 7, 1925.)

No. 171.

1. Courts 292-Federal courts cannot consider charges of unfair competition in suit between citizens of same state.

Custodian, held not entitled to injunction against infringement of registrations Nos. 73036, 73037, which were not seized nor specifically mentioned in instrument of transfer, especially where such business did not own marks, which belonged to registrant.

6. Contracts 156-General terms limited by special designations.

General terms are limited by special designations.

Appeal from the District Court of the United States for the Southern District of New York.

Suit by the Hunyadi Janos Corporation against Alexander F. Stoeger. From a decree for plaintiff (5 F.[2d] 506), defendant appeals. Reversed and remanded, with directions to dismiss bill.

This is the same suit reported in 285 F. 861. We there affirmed an order denying preliminary injunction. Thereafter the bill of complaint was amended, trial held, and by the decree appealed from plaintiff was declared the owner, inter alia, of certain United States trade-mark registrations numbered 14,251, 14,252, 73,036, and 73,037. Defendant was declared to have infringed the "trade-mark rights of plaintiff" by selling mineral water under the names "Hunyadi Janos" and "Andreas Saxlehner," or one or both of said names. Defendant was ordered to be enjoined from importing, selling or force common-law trade-mark rights as be- offering for sale in bottles, bulk or any form

Federal courts have no jurisdiction, in suit between citizens of same state, to consider charges of unfair competition, and cannot enjoin simulation of bottle forms or other unfair practices,

2. Courts292-Federal courts cannot enforce common-law trade-mark rights between citizens of same state..

Federal courts have no jurisdiction to en

tween citizens of same state.

3. Trade-marks and trade-names and unfair competition 97-Defendant cannot be enjoined from doing acts not done or threatened.

Defendant, in trade-mark infringement suit, cannot be enjoined from doing acts not done or threatened.

4. Trade-marks and trade-names and unfair competition88-Purchaser of trade-mark not entitled to injunction against infringement, without showing alien registrant's location in country affording similar privileges to American citizens.

Purchaser of good will and trade-names, trade-marks, etc., of seized business from Alien Property Custodian, held not entitled to enjoin infringement of mark No. 14251, registered under Act March 3, 1881, in absence of showing that alien registrant was located in a country affording similar privileges to citizens of United States.

5. Trade-marks and trade-names and unfair competition88-Purchaser of business and trade-marks thereof from Alien Property Custodian not entitled to enjoin infringement of registrations not seized or mentioned in instrument of transfer.

Purchaser of trade-names, trade-marks, etc., of seized business from Alien Property

whatever, any mineral water under or in connection with the name "Hunyadi Janos," or "Janos," or the medallion of a knight's head, or the name "Andreas Saxlehner," or any combination thereof, or in bottles similar in shape to plaintiff's bottle. The decree contains further prohibition against using bottles or other containers similar in shape or design to the bottles or containers of the plaintiff.

The subject-matter of the suit is in one sense Hunyadi water, and the history of the name, the thing, and its use in the United States is set forth in Saxlehner v. Eisner, 179 U. S. 19, 21 S. Ct. 7, 45 L. Ed. 60. The plaintiff is the assignee by mesne conveyance of the Alien Property Custodian, as is set forth in the report in (C. C. A.) 285 F. 861.

The Custodian seized and sold the two trade-marks first above enumerated, Nos. 14,251, 14,252. He never seized or otherwise sought to appropriate trade-marks 73,036, 73,037. He did seize and sell what he called the "business conducted for, in the name of, or on behalf of [the Austro-Hungarian owners of these trade-marks] at 130 Fulton

10 F.(2d) 26

street, New York." It is amply shown that this place of business was a mere agency; there was no independent business there conducted; the place was occupied by a person or persons who might be described as clerks employed by the foreign owners of the trademarks above mentioned and others, and of the business of getting out of the Hungarian soil a cathartic water known in America as Hunyadi and selling it, not only in the United States, but in many other regions.

The plaintiff is a citizen of the state of New York, and so is the defendant, and the latter was held to have infringed because he had obtained in Europe and imported and offered for sale in the United States the water which Saxlehner the owner had, before the United States entered the world war, regularly sent to his agent at 130 Fulton street for sale in America.

the Custodian and now said to be the plaintiff's property relate to pills, and others to salts produced by concentration from Hunyadi water. But this defendant has not made nor offered to sell pills or salts. The portions of decree relating to these articles of commerce are surplusage.

[4] Again, in this suit upon registered trademarks only, plaintiff to prevail must prove himself the owner of registrations covering the words "Hunyadi Janos" as applied to a natural mineral water. This compels a stand upon one at least of the above enumerated registrations.

Nos. 14,251, 14,252 may be considered together. They were both taken out on the same date in 1887 under the act of 1881 (21 Stat. 502). Both pictorially set forth the same label and legend, but 14,251 was particularly restricted to protection of the word From final decree as above outlined de- symbol "Janos" as a trade-mark for natural fendant appealed. aperient water. The statement says so; Hans v. Briesen and Fred A. Klein, both whereas 14,252 is equally plain as to intent of New York City, for appellant. to protect the word symbol "Hunyadi." We are of opinion that protection for the word "Hunyadi" simpliciter was destroyed by Saxlehner v. Eisner, 179 U. S. 19, 21 S. Ct. 7, 45 L. Ed. 60.

Harry D. Nims and Minturn De S. Verdi, both of New York City, for appellee. Before ROGERS, HOUGH, and MANTON, Circuit Judges.

HOUGH, Circuit Judge (after stating the facts as above). [1] Since this suit is between citizens of the same state, there is no jurisdiction to consider the charges of unfair competition, and consequently no propriety in enjoining the defendant from simulation of bottle forms and other allegedly unfair practices. In this respect at least the decree complained of was erroneous.

[2] Jurisdiction rests entirely on the fact that the suit is upon registered trade-marks. Section 17, Act Feb. 20, 1905 (Comp. St., § 9502). If there ever was a business at 130 Fulton street of sufficient independent vitality to be seized by the Custodian, it may well be that as appurtenant to that business various rights, including what are usually called common-law trade-marks, have passed to the plaintiff. Stephano v. Stamatopoulos, 238 F. 89, 151 C. C. A. 165, L. R. A. 1917C, 1157. But the statutes have given to the courts of the United States no jurisdiction to enforce such rights between citizens of the same state. Miller Rubber Co. v. Behrend, 242 F. 515, 155 C. C. A. 291.

[3] But not only must plaintiff rest in this action upon its ownership of certain registered trade-marks, but defendant cannot be enjoined from acts it has not done nor threatened to do. Several registrations seized by

As to the registration of "Janos," there is no proof that the Saxlehner who filed that trade-mark was, as provided by the act (21 Stat. 502), located in a "foreign country

which by treaty, convention or law, affords similar privileges to citizens of the United States"; i. e., the privilege of obtaining registration of such trade-marks. Neither the statement nor declaration of No. 14,251 gives any information on the subject, and there is nothing in the evidence. Cf., for necessity of proof of jurisdictional facts under act of 1881. Warner v. Searle, 191 U. S. 195, 24 S. Ct. 79, 48 L. Ed. 145. [5] Quite evidently, the descendants of the Andreas Saxlehner who founded the business and died in 1889 did not, after the act of 1905 became effective, intend to stand on such precarious rights as were afforded by registration under the act of 1881, for they took out in 1909 registrations 73,036, 73,037, of which the earliest number covers the word "Janos," for natural mineral water, and the later number "Hunyadi Janos," for the same product. As above noted, these registrations were never seized. They are not mentioned in the original or amended bill of complaint; but it is said that, because the Custodian transferred to plaintiff's assignor the 130 Fulton street business "as a going concern," together with "the good will of said business

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