10 F.(2d) 26 street, New York." It is amply shown that the Custodian and now said to be the plainthis place of business was a mere agency; tiff's property relate to pills, and others to there was no independent business there con- salts produced by concentration from Hunducted; the place was occupied by a person yadi water. But this defendant has not made or persons who might be described as clerks nor offered to sell pills or salts. The poremployed by the foreign owners of the trade- tions of decree relating to these articles of marks above mentioned and others, and of commerce are surplusage. 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. From final decree as above outlined defendant appealed. [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 symbol "Janos" as a trade-mark for natural 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. Harry D. Nims and Minturn De S. Verdi, both of New York City, for appellee. Before ROGERS, HOUGH, and MAN. TON, 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 threat ened to do. Several registrations seized by 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. 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 busi ness 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 and all trade-names, trade-marks and labels of said business, including the following trade-marks," then enumerated (not including the registrations under consideration), plaintiff became the owner of these two registrations, without seizure and without specific mention in the instrument of transfer, by virtue of conveyance of the business. [6] We cannot agree; for the Custodian could not sell that which he had not seized, and he never in any way became seized or possessed of these registrations. In respect. of them he gave no notice of appropriation to the Patent Office, and as to the general words of the conveyance it is always true that general terms are held to be limited by special designations. 1 Cyc. p. 74. But further, while we express no opinion as to whether the agency at 130 Fulton street constituted a seizable business, if it did, such business did not own the registered trademarks. They belonged to Saxlehner, in whose name they were registered. Doubtless the registrations were physically seizable, but we hold that those of 1909 were never seized at all. Whether the attempted seizure of a registered trade-mark solely by filing notice with the Commissioner of Patents would be effective is a point not now necessary to decide. But because plaintiff cannot in this court rely on any so-called common-law rights against a fellow New Yorker, because it is not shown that plaintiff's predecessor had lawful right to register under the act of 1881, and because plaintiff does not own the reg istrations of 1909, the decree is reversed, and cause remanded, with directions to dismiss the bill, with costs in both courts. ments, not exceeding amount required to be expended, as entering into the bargain. 2. Receivers 163-No interest on claim for eviction of tenant after receiver appointed for insolvent landlord. Landlord having become insolvent, and receiver having been appointed for it, before tenant was evicted under superior title, tenant's claim for damages for breach of implied covenant of quiet enjoyment does not bear interest against the funds in hands of court. Appeal from the District Court of the United States for the Southern District of New York. Suit in equity by the American Brake Shoe & Foundry Company against the New York Railways Company. From a final order adverse to the Sanitary Wet Wash Laundry Company, Inc., which filed a claim in the suit, it appeals. Reversed and remanded, with directions. The suit above entitled is the usual credi tor's bill, and resulted in the administration of the insolvent defendant's estate. Some time before bill filed defendant Railways Company, being the owner of certain land on Manhattan Island, leased the 21 years from December 5, 1917, at a rental, same to Sanitary Company for the term of payable monthly in advance, of $3,500 per year. In the written lease Sanitary Company covenanted to make certain improvements to the leased premises; i. e., remodel and erect buildings according to plans and specifications to be approved by Railways Company, and to expend in so doing "not less than $19,000." ed to take (at the expiry of term) the premFurther, the Sanitary Company covenantises for a renewal, also of 21 years, at the option of Railways Company. If a renewal was not made, Railways Company was to pay Sanitary Company one-half the then reproduction cost of the improvements made by tenant; but, if renewal was granted, then at the end of the second 21-year period the improvements would pass to Railways Company without any payment or compensation. Sanitary Company spent more than $19, 000 (viz. $35,000) in making the specified improvements. The premises, however, were subject to a corporate mortgage, made in 1912 by Railways Company to secure a series of bonds. When, on the filing of this bill, the insolvency of defendant appeared and receivers were appointed, said mortgage was foreclosed, and in 1920 Sanitary Company's lease was wiped out by the foreclo sure sale. 10 F.(2d) 28 Thereupon Sanitary Company filed a claim in this suit, demanding that it be allowed recovery against Railways Company estate for the $19,000 aforesaid and interest. The matter was heard on an agreement as to facts, substantially ut supra; Sanitary Company claiming as damages the above $19,000 "for breach of implied covenant of quiet enjoyment during the term of 21 years," in that it had been "barred and foreclosed of its lease" within a short time after execution thereof. Admitting that there was an implied covenant as alleged, and a breach thereof, the court below held that the law prevented allowance of more than nominal damages. From order accordingly, entered by the receivers of defendant, Sanitary Company took this appeal. Simon Sultan, of New York City, for appellant. Cotton & Franklin, of New York City (J. A. Fowler, Jr., of New York City, of counsel), for receivers. Before HOUGH, MANTON, and HAND, Circuit Judges. HOUGH, Circuit Judge (after stating the facts as above). [1] This is a question of New York law, of which, however, the latest restatement known to us is our own decision in Thorley v. Pabst, 179 F. 338, 102 C. C. A. 522. Noyes, J., there concluded (page 345 [102 C. C. A. 529]) that the general rule is that a "tenant who has not paid in advance can, upon eviction by superior title, recover only nominal damages, and can recover nothing for the value of his lease or for improvements." There are certain exceptions duly enumerated, but the court below treated the claim at bar as if it were one for improvements, made not under the compulsion of a contract, but voluntarily, as is usual. If nothing had been said in the lease about improvements, and they had been lawfully added to the land, only because the tenant was not contractually restrained from improving, the order under review would have been right; the case being on all fours with Matter of Strasburger, 132 N. Y. 128, 30 N. E. 379, because Sanitary Company did not "advance" any rent, and it is certainly liable for no mesne profits. But the agreed statement at bar presents facts not, so far as we know, exhibited in any New York report, and therefore, we think, requiring some investigation into the origin or basis of a rule confessedly prevailing in few jurisdictions, though not peculiar to New York. Thorley Case, supra, at page 345 (102 C. C. A. 522), quoting Reeves' Real Property. An explanation of the New York rule given by Mr. Reeves, supra, is that the termination of the tenant's duty, to pay rent is thought sufficiently to compensate him for the loss of his term; i. e., for a breach of the covenant of quiet enjoyment, which is always implied in the usual lease. Mack v. Patchin, 42 N. Y. 167, 1 Am. Rep. 506. But this cannot even yet be called legal reasoning; a priori it would be certain that a rule originating in the early days of American law was once justified by considerations far more formal than the business result above stated. We think the origin of the New York rule is to be found in two decisions by Chancellor Kent, then Chief Justice Staats v. Executors of Ten Eyck, 3 Caines, 112, 2 Am. Dec. 254, and Pitcher v. Livingston, 4 Johns. 1, 4 Am. Dec. 229. Both these cases grew out of sales of land, wherein the vendor had given warranty both of seizin and quiet enjoyment, and the vendee had been ejected by title paramount to that of the vendor. It was shown by abundant citation of ancient law that upon a warrantia chartæ demandant could recover only the value of the land at the time the warranty was given, and this was applied to a warranty of seizin in the Staats Case, with the additional holding that, while the ejected vendee could not recover any increment in the value of the loss, he could recover, not only the consideration by him paid, but interest thereupon. In the Pitcher Case the effort of an evict ed vendee was to rely upon the covenant for or warranty of quiet enjoyment, and to recover the value of beneficial improvements placed upon the land during occupancy. This attempt to distinguish between the covenants for seizin and quiet enjoyment was disapproved; Kent, C. J., saying: "The covenant for quiet enjoyment respects the possession merely, and it would seem to be unreasonable and very inconsistent, for the plaintiff to recover under one covenant the whole value of the estate, as it was intended to be conveyed, and under another covenant in the same deed distinct and increased damages, because he was not permitted to enjoy that estate." Consequently, although an evicted vendee might recover upon either of the two covenants, he could not recover substantial damages on both; and since under the covenant of seizin he could recover no more than the consideration paid-i. e., the agreed value of the land at the time of attempted sale a reason was found for saying that he could recover no more than that under the covenant for quiet enjoyment. In respect of improvements, the Chief Justice said: "The subject of the contract [of sale] was the land as it existed and was worth when the contract was made. The purchaser may have made the purchase under the expectation of a great rise in the value of the land, or of great improvements to be made by the application of his wealth or his labor. But such expectations must have been confined to one party only, and not have entered as an ingredient into the bargain." It was declared repugnant "to the genius of our law" to oblige the seller, on the buyer's eviction, to refund, not only the price agreed upon, but "the expense of the meliorations made." Therefore, since "a seller may be presumed at all times able to return the consideration which he actually received," and since that return is enough to satisfy the covenant of seizin, it must also be enough to satisfy the covenant for quiet enjoyment. The improvements as made at much greater cost than the obligatory $19,000 deteriorated, as agreed, less than 6 per cent. before eviction, wherefore appellant's loss was more than the amount which "entered into the bargain," and we perceive no reason, even under the New York rule, why that amount is not a proper unsecured claim against the insolvent defendant's estate. [2] Appellant would be entitled, also, to interest from date of eviction, were it not for the insolvency of the landlord; but, as we gather from the record that the appointment of receivers preceded eviction, the claim cannot bear interest as against the funds in the hands of the court. Order reversed, and cause remanded, with directions to enter an order in accord with this opinion. Appellant will recover the costs of this appeal. LYON et al. v. BOH et al. (Circuit Court of Appeals, Second Circuit. January 15, 1926.) No. 37. But since the covenant for quiet enjoyment goes to the possession only, and except in the rare cases of rent paid in advance a tenant enjoys a possession measured by the rent he has paid, and is almost never evicted when the landlord has advance rent in his pocket, the rule can be practically explained as Mr. Reeves has done it, although Kent, C. J., assuredly did not use such language in justifying it. The rule was applied ment arises from commercial success. to leases in Kinney v. Watts, 14 Wend. 38, and that a lease contains by implication a covenant of quiet enjoyment is admitted. 1. Patents 36-Patent held entitled to whatever favorable treatment arises from commercial success. Patent for first successful automobile buffer was entitled to whatever favorable treat 2. Equity 54-Equity acts in præsenti. Equity acts in præsenti. 3. Patents 327-Decision in another circuit held binding on parties and privies. Decision in another circuit that patent involved therein was not infringed held binding on parties or their privies. It is observable that, in formulating the rule as to damages for loss of improvements, the Chancellor used as the very basis thereof the assumption, perfectly sound in all but the exceptional case, that the expectation of gain through meliorations to be made by the tenant was "confined to one party only, and 4. Patents 165-Patentee is entitled to ad(could not) have entered into the bargain." This is the exceptional case, it was a part of the bargain enforced against tenant by landlord that the former should expend "at least $19,000" on improvements, for which the landlord agreed to compensate the tenant at lease end, subject to deterioration agreed upon as amounting to 100 per cent. in 42 years, or 2.3 per cent. per annum. But such compensation could never exceed $19,000, because everything beyond that sum was a voluntary expenditure, and for improvements so produced there can be no recovery on eviction. Matter of Strasburger, supra. vantages inherent in disclosed invention duly claimed, whether he understood them or not. Patentee is entitled to all advantages inherent in his disclosed invention and duly claimed, whether he understood such advantages or not. 10 F.(2d) 30 Appeal from the District Court of the United States for the Southern District of New York. Suit by George Albert Lyon and others against John F. Boh and another, copartners doing business as, the New York & Brooklyn Automobile Supply Company, and another. Decree for defendants (1 F.[2d] 48), and plaintiffs appeal. Reversed. Suit is upon a patent issued to plaintiff Lyon September 12, 1916, upon an application filed April 21, 1913. This application was divided June 30, 1916, and this patent, 1,198,246, resulted from one of the divisions. The invention came before us in Lyon v. Hartford, 250 F. 1021, 162 C. C. A. 664, affirming (D. C.) 247 F. 524. In that earlier suit claim 18 (and other claims not here involved) were sued on, and the language of No. 18 may be found at 247 F. 528. The other claims now in suit, Nos. 9 and 14, are as follows: "9. The automobile buffer, comprising horizontally yielding and substantially vertically rigid elements, including transversely extending impact receiving members and open-ended lateral loops, connected attaching members to be attached to the vehicle, connecting means connecting said impact receiving members and holding them against substantial relative vertical movement, and means providing for the lateral adjustment of said attaching members to adapt them for attachment to parts of vehicles located at different distances apart." "14. The automobile buffer, comprising a vertically rigid spring having a transversely extending member and a rearwardly extending attaching member adapted to be attached to a side bar of the vehicle frame, said transversely extending member being arranged ad jacent another transversely extending spring member of the buffer, and means for securing together said adjacent transversely extending members." [1] It will be sufficient to refer to the Hartford Case for quotations from the specifications sufficiently showing the nature of the invention and the inventor's purpose; i. e., to produce a buffer for motor vehicles which would receive and withstand impacts without permanent distortion. In that case we also held, and now again hold, that the buffer of this patent invented by Lyon was the first successful motor vehicle buffer; it made the market for buffers, now very great, and the patent under which the successful Lyon buffer is made is entitled to whatever favorable treatment and/or interpretation arises from commercial success. Since the appeal herein was taken a suit has been concluded in the Ninth Circuit (Northern District of California) which we think materially affects this cause. The patent here in suit is owned by Lyon et al. and the Metal Stamping Company is their exclu sive licensee. The defendants Boh are merely dealers, and all that they are charged with doing is selling a buffer made under patent 1,374,893 (dated April 12, 1921, to Pancoast et al.) by defendant Biflex Products Company. But Biflex Company is the licensee of American Chain Company under patent to Hoover 1,191,306, issued July 18, 1916, on an application filed January 24, 1912. This Hoover patent is owned by American Chain Company, and the suit in the Ninth Circuit was entitled Chester N. Weaver, Inc., v. American Chain Co., Inc., 9 F. (2d) 372. In that suit Weaver was accused of having infringed claims 1, 3, and 6 of the Hoover patent. The grant to Hoover is for a "bumper for vehicles," and the first and broadest claim is as follows: "1. In a fender, the combination with a vehicle frame, of a continuous spring arranged transversely in front of the frame, the ends of the spring being bent upon itself to the rear and inwardly, the bends in said spring forming the ends of the fender, and means secured to the frame and to the said ends of the spring at a distance from the said bends and in rear of the main portion of the spring whereby the spring is supported." Weaver also was a mere dealer, and his defense was conducted by the owners of the Lyon patent, viz. the plaintiffs in the present suit, and the record herein shows that American Chain Company in respect of the |