40 Cal. 593 | Cal. | 1871
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
But if there were no authorities on the point, every consideration of reason, justice and sound policy, demands that one who fraudulently uses the trade-mark of another should not be allowed to shield himself from liability for the profit he has made by the use of the trade-mark, on the plea that it is impossible to determine how much of the profit is due to the trade-mark, and how much to the intrinsic value of the commodity. The fact that it is impossible to apportion the profit, renders it just that he should lose the whole.
Judgment affirmed.