276
rEDEr-AI.: REPORTER.
and costly disagreement, and so have thwarted their common understanding and enterprise. I cannot but think that it never would have so happened had not Bakel' become so erroneously impressed with the idea that the extension of the contract of December 20, 1878, expired June 22, instead of July 1, 18i:l3. He testifies, over and over again, that it was always his intention and purpose at all times faithfully to carry out that contract, and his every act done under it confirms his testimony in this respect. I find the following numbered allegations of the complaint, as numbered therein, sustained by the testimony submitted, to-wit: Nos. 1 and following to and including No. 16, with the exception of the last sentence thereof, in the words, "but the mortgage to Messrs. Morgan & Donahue still remains unpaid, and a lien upon the mine." Baker testifies that he has paid this mortgage. Also, Nos. 17 and following to and including No. 22. The allegations in subdivision 23 as to Baker's secretly retorting amalgam, and his insolvency, are not sustained. His possession of the mine and working the same are conceded. Let a preliminary decree be entered in favor of plaintiff, if desired, in accordance with this opinion, and the case be referred to the standing master in chancery of this court to take an account between the parties and report the same to the court.
LEOLANOHE BATTERY
Co. v.
WESTERN ELECTRIO
Co.
!Circuit Court, S. D. New York. }larch 27, 1885.) 1. TRADE-MARX-NAME OF NEW AnTICLE-HIGHT TO USE OF.
When an article is made that was theretofore unknown, it must be christened with a name by which it can be recognized and dealt in; and the name thus given to it becomes public property, and all who deal in the article have the right to designate it by the name by which alone it is recognizable. !::lAME-NAME, WREN NOT A TRADE-MARX.
2. 3.
A name alone is nota trade-mark when it is applied to designate, not the article of a particular maker or seller, but the kind or description of thing sold. SAME-IMITATION OF LABELS-INJUNCTION.
Although the name applied by a complainant to his goods may not afford protection as a trade-mark, where others are guilty of imitating the labels used by him.in making· sales thereof, they will be enjoined.
In Equity. Dickerson et Dickerson, for complainants. Geo. P. Barton, for defendant. WALLACE, J. The complainants cannot maintain their claim to the exclusive right to use either the word "Disque" or "Pile-Leclanche" as a trade-mark, when applied to the batteries manufactured and sold by them. As owners of the right to manufacture and sell the Leclanche batteries until the expiration of the patent granted to the
LEOLANOHE BATTERY 00. V. WESTERN ELECTRIO 00.
277
assignee of Leclanche, they have been accustomed to use the word "Disque" on the labels pasted on the glass jar which forms part of the battery, and the word "Pile·Leclanche" blown in the glass. Neither of these words are arbitrary names selected to denote the article as the production of a particular proprietor. They are appropriate, and are intended to indicate that the batteries are of a specified form, and are made according to the patent of Leclanche. "Disque" describes the form of the battery, and is used to distinguish it from the prism and other forms of porous-cnp batteries. "Pile" is synonymous with battery, and "Pile-Leclanche" is the designation in French of Leclanche's battery. When an article is made that was theretofore unknown, it must be christened with a name by which it can be recognized and dealt in; and the name thus given to it becomes public property, and all who deal in the article have the right to designate it by the name by which alone it is recognizable. Hostetter v. Fries, 17 FED. REP. 620; Singer lYlanuf'g Co. v. Stanage, 6 FED. REP. 279. As soon as Leclanche invented his battery in France, it was necessarily given the name "Pile-Leclanche," and that name could never again be appropriated exclusively as a trade-mark even by the inventor himself. A name alone is not a trade-mark, when it is applied to designate, not the article of a particular maker or seller, but the kind or description of thing which is being sold. Singer Manuf'g Co. v. Loog, 15 Reporter, 538; Wheeler <t Wilson Manuf'g Co. v. Shakespear, 39 Law J. Ch. 36; Youllg v. Macrae, 9 JUl'. (N. S.) 322; Canal Cu. v. Clark, 13 Wall. 311. The defendants have imitated the label of the complainant to the minutest details, except the signature at the bottom. The complainant is entitled to protection against the unlawful competition in trade thus engendered by the simulation of its label; and upon this ground a decree is ordered in its favor. See Wi.lcoa:: &: Gibbs Sewinr:·Machine Co. v. The Gibbens Frame, 17 FED. 623; Burton v. Stratton, 12 F1W. REP. 696, and note, 704, and Shaw Stocking Co. v. Mack, rd. 707, and note, 717.-[ED. HEP.
278
. FEDERAL REl'ORTEn.
RANDOLPH v. QUIDNICK CO. and others. (Oirouit Court, D. Rhode Island. :March 20, 1885.) EvmENem-CoMMUNIOATIONB MADE TO COUNSELOR-WHEN PRIVILEGED.
Communications made to a counselor in the course of his professional employment, by persons other than the client or his agents, are not privileu:cd. The rule extends only to communications made by or on behalf of the client.
In Equity. structions.
Opinion of court on request of the examiner for in-
CARPENTER, J. This is a bill brought to determine -the title to certain shares of the capital stock of the Quidnick Company. In the taking of the testimony before the examiner, Richard B. Comstock, Esq., a counselor at law, was called as a witness by the respondent. Having testified that he was of counsel for the complainant from some time in 1879 up to about December, 1883, he was asked the following questions: " Interrogatory 3. Did you have any interview while you were counsel for Evan Randolph with Ex-Governor Sprague, with reference to 4,022 shares of the capital stock of the QUidnick Company, to which Evan Handolph claimed title? If so, please state"fully what took place at these interviews, and when those interviews took place." Counsel for the complainant to the questions on the ground that it called for the disclosure of a communication which was privileged; whereupon the witness declined to answer unless so instructed by the court. Having further stated that he received into his possession a certain certificate of stock in August, 1883, the witness was asked as follows: "Intel'ro,gatol'Y 6. Had you, previous to the delivery of said certificate to you, had any interviews with Ex-Governor William t:iprague, or with Benjamin F. Butler, his counsel, or with Andrew B. Patton, also his counsel,' concerning said certificate or the. transfer of said shares? If so, please stato what those interviews were, and where they took place." Counsel for the complainant objected on the same ground as before, and the witness declined to answer. The witness further testified that he caused an attachment to be made on a judgment held by Evan Randolph against William Sprague and Amasa Sprague, upon funds in the hands of one Jenks, and that the information on which he acted in making the attachment did not come to him from the complainant or from any person claiming to act for him. He was then asked as follows: "Intetrogatol'y 13. Did said information come to you from William Sprague or Amasa Sprague, or anyone claiming to act for them or either of them?" Counsel for the complainant objected on the same ground as before, and the witness declined to answer. examiner reports
O. H. Parkhurst, for respondent.
w. H. Baker, for complainant.
UBU'ED STATES 11. SAN .JAOINTO TIN 00.
these facts, and he, together with the respondent, prays the instruotions of the court. The question in this matter is whether communications made to a counselor in the course of his professional employment by perSOilS other than the client or his agent are privileged. I find no sufficient authority for the proposition that they are so privileged. The rule 'extends only to communications made by or on behalf of the client. OroBby v. Berger, 11 Paige, 377, and cases cited; Steph. Dig. Ev. art. 115; Best, Ev. p. 567, § 58!. Two cases are cited by thQ complainant in support of his view. Greenough v. Gaskell, 1 Mylne & K. 98, decided by Lord BROUGHAM in 1833, "does indeed appear," to use the words of Chancellor IN ALWORTH, "to extend the privilege further than the previous cases would warrant, and beyond the principle upon which the privilege is founded." That case appears to me, however, to be contrary to the current of decision and opinion, both before and since it was decided· . The case of Whiting v. Barney, 30 N. Y. 330, also cited by complainant, does not appear to me to have any bearing on this qnestion. An order will therefore be made requiring the witness to WUlwer the interrogatories.
UNITED STATES ". SAN JACINTO TIN
Co. l
(Oircuit Oourt, D. Oalifornia. March 23, 1885.)
L
PuBLIC LANDS-MEXICAN GRANTS-CONFIRMATION AND
The confirmation and final location of a Mexican grant is conclusive against the United 8tates, in the absence of fraud, and to set aside a patent the fraud must 'be extrinsic and collateral to the matter determined, and not matter UPOD which the decree was rendered, SAME-FRAUD-EvIDENCE.
2.
a. L
The evidence to sllstain charges of fraud against a number of government of. ficers must I)e conclusive. Evidence held insufficient. SAME-REVIEW BY COURT.
The courts cannot review mere errors in location of Mexican proper officers. SAME-UNITED STATES AS 8UITOR.
by the
When the United States enters a court as a litigant, It waives its exemption from legal proceedings and stands upon the same footing with private individuals, and if, on a consideration of all the circumstances of the case, it be inequitable to grant the relief prayed against a citizen, such relief will be refused. 8AME-LACl'{ES AS DEFENSE.
I.
Although, on grounds of public policy, no statute of limitations runs against the United 8tiLtes, and no lRches in bringing a suit can be imputed to them, yet the facility with which the truth could originally have been shown by them, if different from the finding made, the changed condition of the parties and the property from lapse of time, the difficulty from this cause of meeting objections which might, perhaps, at the time have been readily explained, and the acquisition of interests by third parties upon faith of decree, - are elements which will be considered by the court in determining whether it \)e equitlloble JAIDrmed. See 8 Sup. Ct. Rep. 850.