A patentee of an invention or of a design cannot, in a suit
against infringers thereof, recover damages within section 4900 of
the Revised Statutes or the penalty imposed by the Act of February
4, 1887, c. 105, without alleging and proving either that patented
articles made and sold by him, or the packages containing them,
were marked "patented," or else that he gave notice to the
defendants of his patent and of their infringement.
This was a bill in equity, filed May 7, 1889, for the
infringement of letters patent issued April 2, 1889, for the term
of three and a half years, by the United States to Julius Stroheim
for a design for rugs.
The bill alleged that the design was new and original; that
Stroheim was the original and first inventor thereof; that it was
not at the time of his application for a patent, in public use or
on sale with his consent or allowance; that before the issue of the
patent, he assigned the invention and the patent
Page 152 U. S. 245
to be obtained therefor to the plaintiffs by an instrument in
writing recorded in the Patent Office; that the invention was of
great practical use and benefit to the plaintiffs, and they had
applied it to large and extensive use, and had expended large sums
of money in introducing it, and the public and the users of the
invention had acknowledged and acquiesced in its value; that the
defendants had infringed, and intended to continue to infringe, the
patent by making, using, and vending the patented design,
substantially the same in outline, detail, and appearance as shown
and described in the patent, and that the plaintiffs,
"after the issue of the aforesaid letters patent, notified the
said defendants of the issue of said letters patent, of their
infringement thereof, and requested them (the said defendants) to
abstain and desist from any further violation thereof in
infringement of"
the plaintiffs' "rights thereunder in the manufacture and sale
of rugs bearing said patented design," and prayed for a discovery,
an injunction, an account of profits, damages, and further
relief.
The defendants answered under oath, admitting the issue of the
letters patent to Stroheim, denying all the other allegations of
the bill, and, among other things, denying that
"after the issue of the aforesaid letters patent these
complainants notified these defendants of the issue of said letters
patent, or of their infringement thereof, and requested the said
defendants to abstain and desist from infringement of the
complainants' alleged rights thereunder, in the manufacture and
sale of rugs bearing said patented design."
The plaintiffs filed a general replication.
At the hearing upon pleadings and proofs, it appeared by the
testimony introduced by both parties that the plaintiffs made and
sold many rugs with the patented design upon them, and there was
conflicting evidence upon the question of infringement. The court
held that the patent was valid, and that the defendants had
infringed it by making and selling rugs bearing a design in
imitation of, and substantially similar to, the design shown,
described, and claimed in the patent.
No evidence was offered by either party upon the question
Page 152 U. S. 246
whether the plaintiffs' rugs were marked "Patented," or upon the
question whether the plaintiffs had notified the defendants that
they were infringing the patent.
The defendants contended that they were not liable in damages
because the plaintiffs had failed to prove their own compliance
with section 4900 of the Revised Statutes, which is as follows:
"It shall be the duty of all patentees, and their assigns and
legal representatives, and of all persons making or vending any
patented article for or under them, to give sufficient notice to
the public that the same is patented, either by fixing thereon the
word 'Patented,' together with the day and year the patent was
granted, or when, from the character of the article, this cannot be
done, by fixing to it, or to the package wherein one or more of
them is enclosed, a label containing the like notice, and in any
suit for infringement, by the party failing so to mark, no damages
shall be recovered by the plaintiff except on proof that the
defendant was duly notified of the infringement, and continued,
after such notice, to make, use or vend the article so
patented."
The court held that the notice alleged in the bill was not a
sufficient compliance with this section, and that the burden of
proof was upon the defendants to show that the plaintiffs had not
complied with it. 42 F. 323.
The plaintiffs asked for an injunction, and for damages in the
sum of $250, as penalty and damages under the act of February 4,
1887, c. 105, which is copied in the margin,
*
Page 152 U. S. 247
and waived all right to any further damages, or to an account of
profits. The court, on May 13, 1890, entered a decree for the
plaintiffs accordingly, and the defendants appealed to this
Court.
MR. JUSTICE GRAY, after stating the case, delivered the opinion
of the Court.
By section 4900 of the Revised Statutes (which, by virtue of
section 4933, applies to patents for designs), it is made the duty
of every patentee or his assigns, and of all persons making or
vending any patented article for or under them, to give sufficient
notice to the public that it is patented by putting the word
"Patented" upon it, or upon the package enclosing it,
"and in any suit for infringement by the party failing so to
mark, no damages shall be recovered by the plaintiff except on
proof that the defendant was duly notified of the infringement and
continued, after such notice, to make, use or vend the article so
patented."
The clear meaning of this section is that the patentee or his
assignee, if he makes or sells the article patented, cannot recover
damages against infringers of the patent, unless he has given
notice of his right either to the whole public by
Page 152 U. S. 248
marking his article "Patented," or to the particular defendants
by informing them of his patent and of their infringement of
it.
One of these two things -- marking the articles or notice to the
infringers -- is made by the statute a prerequisite to the
patentee's right to recover damages against them. Each is an
affirmative fact and is something to be done by him. Whether his
patented articles have been duly marked or not is a matter
peculiarly within his own knowledge, and if they are not duly
marked, the statute expressly puts upon him the burden of proving
the notice to the infringers before he can charge them in damages.
By the elementary principles of pleading, therefore, the duty of
alleging and the burden of proving either of these facts is upon
the plaintiff.
In the present case, although the plaintiffs had manufactured
and sold goods with the patented design upon them, they made no
allegation or proof that the goods were marked as the statute
required. They did allege in their bill that they notified the
defendants of the patent and of their infringement, but this
allegation was distinctly denied in the defendants' answer, and the
plaintiffs offered no proof in support of it. They could not,
therefore, recover, even if this were a suit for damages, within
section 4900 of the Revised Statutes.
But these plaintiffs, waiving all right to an account of profits
or to other damages, sought and were allowed to recover the fixed
sum of $250, in the nature of a penalty, imposed by the act of
February 4, 1887, c. 105, upon any person who, during the term of a
patent for a design, and without the license of the owner, applies
the design secured by the patent, "or any colorable imitation
thereof," to any article of manufacture for the purpose of sale, or
sells or exposes for sale any article of manufacture to which "such
design or colorable imitation" has been applied, "knowing that the
same has been so applied." 24 Stat. 387. This statute, according to
its clear intent and effect, requires that, in order to charge
either a manufacturer or a seller of articles to which has been
applied a patented design or any colorable
Page 152 U. S. 249
imitation thereof, he must have been "knowing that the same has
been so applied," which is equivalent to saying "with a knowledge
of the patent and of his infringement." The reasons for holding the
patentee to allege and prove either such knowledge or else a notice
to the public or to the defendant from which such knowledge must
necessarily be inferred are even stronger in a suit for such a
penalty than in a suit to recover ordinary damages only.
In none of the cases on which plaintiffs rely and by which the
court below considered its judgment as controlled was there any
adjudication inconsistent with this conclusion.
The leading case is
Rubber Co. v.
Goodyear, 9 Wall. 788, decided at October term,
1869, which was a bill in equity for an injunction, and for an
account of profits, against infringers of a patent for an
invention, and the passage in the opinion of this Court which is
relied on by the plaintiffs is that in which Mr. Justice Swayne,
after citing the provisions of the Act of March 2, 1861, c. 88, ยง
13, which are reenacted in section 4900 of the Revised Statutes,
proceeded as follows:
"It is said that the bill contains no averment on this subject,
and that the record is equally barren of proof that any such notice
was ever given to the defendants except by the service of process
upon the filing of the bill. Hence it is insisted that the master
should have commenced his account at that time, instead of the
earlier period of the beginning of the infringement. His refusal to
do so was made the subject of an exception. The answer of the
defendants is as silent upon the subject as the bill of the
complainants. No such issue was made by the pleadings. It was too
late for the defendants to raise the point before the master. They
were concluded by their previous silence, and must be held to have
waived it. It cannot be considered here."
9 Wall.
76 U. S.
801.
In that case, as appears in the passage just quoted from the
opinion, not only was there no averment in the bill or in the
answer on the subject of marking or of notice, but no objection to
the want of proof of either fact was made by the defendants at the
original hearing in the circuit court, as appears by its opinion,
reported in 2 Cliff. 351. The objection
Page 152 U. S. 250
was first taken at the subsequent hearing before a master, and
was therefore held to have been waived.
In some later cases in the circuit courts of the United States,
it has been assumed that the defendant was bound to allege and
prove that the patented articles were not marked if he would upon
that ground avoid liability for damages under the section in
question. But in none of those cases was that point in judgment. In
Goodyear v. Allyn, 6 Blatchford 33, the only question
before the court was of granting an injunction, a matter not
touched by this section. In
Herring v. Gage, 15 Blatchford
124, the point decided was that the statute did not apply to the
marking of the articles made and used by the infringing defendants.
In
New York Pharmical Association v. Tilden, 21 Blatchford
190, the answer alleged and the proof showed that the plaintiffs
goods were not marked, and the question was as to the sufficiency
of a verbal notice to charge the defendants in damages. And in
Allen v. Deacon, 10 Sawyer 210, the want of marking was
alleged and proved by the defendant, and he was also proved to have
been duly notified of the infringement. On the other hand, in
McComb v. Brodie, 1 Woods 153, it was held that if the
patentee did not prove that his articles were marked, or that he
gave the defendant notice of the infringement, he could recover
only nominal damages.
The patent having now expired, so that the injunction is of no
further value, the decree is reversed and the case remanded to the
circuit court with directions to
Dismiss the bill.
*
"An act to amend the law relating to patents, trademarks and
copyright."
"SEC. 1. Hereafter, during the term of letters patent for a
design, it shall be unlawful for any person other than the owner of
said letters patent, without the license of such owner, to apply
the design secured by such letters patent, or any colorable
imitation thereof, to any article of manufacture for the purpose of
sale, or to sell or expose for sale any article of manufacture to
which such design or colorable imitation shall, without the license
of the owner, have been applied, knowing that the same has been so
applied. Any person violating the provisions, or either of them, of
this section, shall be liable in the amount of two hundred and
fifty dollars, and in case the total profit made by him from the
manufacture or sale, as aforesaid, of the article or articles to
which the design, or colorable imitation thereof, has been applied,
exceeds the sum of two hundred and fifty dollars, he shall be
further liable for the excess of such profit over and above the sum
of two hundred and fifty dollars. And the full amount of such
liability may be recovered by the owner of the letters patent, to
his own use, in any circuit court of the United States having
jurisdiction of the parties, either by action at law or upon a bill
in equity for an injunction to restrain such infringement."
"SEC. 2. Nothing in this act contained shall prevent, lessen,
impeach or avoid any remedy at law or in equity which any owner of
letters patent for a design, aggrieved by the infringement of the
same, might have had if this act had not been passed; but such
owner shall not twice recover the profit made from the
infringement."
24 Stat. 387.
