The United States v. Miner.

THE UNITED STATES vs. JOSHUA D. MINER.

A defendant was tried on an indictment charging him with the possession of a counterfeit plate, and was acquitted. A second indictment was found against him, charging him with the possession of another counterfeit plate. He pleaded to the latter indictment, that he had been once tried and acquitted of the same act of possession stated therein. From the evidence given on such trial, and which was the evidence to be given on the trial of the second indictment, it appeared, that the act of possession charged was but a single act, and that the first trial necessarily involved a determination of the act of possession charged in the second indictment. The verdict of the jury on the first trial met with the approval of the Court, and it advised the District Attorney that the defendant ought not to be again put on trial upon the same evidence, and that a nolle prosequi ought to be entered on the second indictment. The District Attorney accordingly moved that a nolle prosequi be entered, and the motion was granted.

(Before BENEDICT, J., Southern District of New York, March 11th, 1874.)

may

BENEDICT, J. In this case, the defendant has interposed a plea of former jeopardy. He is, in the present indictment, charged with the possession of a certain $2 counterfeit plate, with an unlawful intent, and the plea avers that he has been once tried and acquitted of the same act of possession stated in this indictment. It is agreed, that the evidence which the District Attorney proposes to give on the trial of the present indictment is, in every respect, substantially the same as that given upon the trial of the former indictment, and that it be referred to upon this issue. This evidence shows the existence of two counterfeit plates, with the possession of one of which the defendant was charged in the former indictment, and as to the possession of the other in this. But, from the evidence, the Court can see that the act of possession charged was, as a fact, but a single act, and that the trial of the former case necessarily involved a determination of the act of possession charged in this indictment. The two plates were shown to have been so connected at the time, that the possession of

The United States v. Miner.

one necessarily involved the possession of the other. Where two counterfeits are engraved upon the same piece of metal, or otherwise so connected as to form, in substance, but a single article, and the charge is that of unlawful possession, it would seem that the possession of both may be made the basis of a single charge, and that separate trials for each engraving should not be permitted. Upon the peculiar facts of this case, the inclination of my mind is, therefore, in favor of the defendant's plea. But, if the law be otherwise, I have no hesitation in advising the District Attorney that it is not expedient again to present to a jury the testimony exhibited upon the trial of the former indictment against this man, where the possession of the two plates was also proved. In that case, a very intelligent jury refused, upon the evidence produced, to find that the defendant had the possession of the plates as charged. The conclusion of that jury met with the approval of the Court, and it cannot, with propriety, be impugned; and the prisoner should not be again put on trial upon the same evidence. (Rex v. Davis, 6 Carr. & P., 177.) If, therefore, as a matter of law, the defendant's plea be not sustainable, the alternative would be to advise the District Attorney to enter a nolle prosequi in the case. In either event, there would be no trial

of this indictment.

Upon the delivery of the foregoing opinion, the District Attorney moved that a nolle prosequi be entered, and the motion was granted.

Ambrose H. Purdy, (Assistant District Attorney,) for the United States.

William Fullerton, for the defendant.

The Troy Iron and Nail Factory v. Winslow.

THE TROY IRON AND NAIL FACTORY

vs.

JOHN F. WINSLOW AND OTHERS. IN EQUITY.

A suit in equity was brought against three persons doing business as copartners, and, as such, carrying on a manufactory, to restrain them from using a machine for which the plaintiff held letters patent, and to compel the defendants to account for and pay to the plaintiff the profits realized by the defendants from the use of said machine at said manufactory. The plaintiff had a decree for such injunction and account. The accounting was had, the master's report thereon was filed, reporting an amount of profits as due to the plaintiff, exceptions thereto were filed and argued, the opinion of the Court on such exceptions was filed, but no final decree had been entered. Then one of the defendants died, leaving a will appointing an executor. The plaintiff then filed a bill of revivor, praying the revival of the suit against the executor: Held, (1.) That the profits reported constituted a debt due by the copartnership to the plaintiff;

(2.) That the suit did not abate by the death of one of the copartners; (3.) That, it not being alleged that the surviving copartners were insolvent, or that the copartnership assets were not sufficient to satisfy the plaintiff's demand, the bill of revivor must be dismissed.

No suit at law or in equity can, in this country, be sustained against the representatives of a deceased copartner, or to charge his estate for the copartnership debts, if the surviving partners are solvent and the assets of the firm are sufficient.

Cases in England, holding apparently a contrary doctrine, noticed.

(Before WOODRUFF, J., Northern District of New York, March 17th, 1874.)

WOODRUFF, J. A suit was begun, and has hitherto been prosecuted, against Erastus Corning, John F. Winslow and James Horner, doing business as copartners, and, as such copartners, being the proprietors of, and carrying on their business at, what was known as the Albany Iron Works, for an injunction to restrain the use by them of a machine for which the complainant held letters patent theretofore granted to Henry Burden, and to compel the said defendants to account for and pay to the complainant the profits realized by the defendants from the use of the said machine by them

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The Troy Iron and Nail Factory v. Winslow.

at the Works aforesaid. The complainant had an interlocutory decree therein, declaring the rights of the complainant, awarding an injunction, and decreeing that the defendants. account for such gains and profits. For the purposes of such accounting, a reference was ordered, to ascertain the amount of such gains and profits, such accounting was had, and the master's report filed. Exceptions to such report were filed and were argued, and the opinion of the Court upon the exceptions has been filed, (6 Blatchf. C. C. R., 328,) but no final decree has been entered. Afterwards, Erastus Corning, one of the defendants, died, leaving a last will and testament, wherein he appoints Erastus Corning, Junior, executor. Thereupon, the complainant, preparatory to a final decree, and with a view to an appeal therefrom, moved this Court that the said executor be substituted as defendant in the place of his testator, and that the cause proceed against such executor, and the other defendants in the suit, "in the same manner that it would proceed, were the said Erastus Corning, deceased, still living." That motion was denied. The complainant has now filed a bill of revivor, setting out the proceedings in such suit, alleging its abatement by the death of the said Erastus Corning, and praying that the same be revived against the said executor, &c. The executor has answered, and, by stipulation, the parties have agreed upon certain facts, and the case has been brought to a hearing upon pleadings and proofs.

Upon consideration of the facts disclosed by the pleadings and proofs, in substance as above recited, I adhere to the views which governed the decision of the motion heretofore made in the principal cause. The theory of the case made by the complainant, and by the proofs, &c., is, that the original defendants, as copartners, by the unlawful use of the invention, the exclusive right to the use of which was vested in the complainant, have realized gains and profits which rightfully and in equity belong to the complainant; that, in equity, they were liable to be treated as trustees, receiving those profits to the use and for the benefit of the complain

The Troy Iron and Nail Factory v. Winslow.

ant; and that the defendants were, therefore, in equity, debtors of the complainant to the amount of such gains and profits. No question of damages sustained by the complainant by the wrong done arises in such case. When the original bill was filed, and when the decretal order was made, the law did not permit the recovery of damages in such a suit. To recover damages, a patentee must go to a Court of law, treat the defendants as tort-feasors, and establish his damages, which, being proved, might be recovered, whether the defendants had made any profits by their infringement of the patent or not. The subsequent alteration of the law by a statute which enables the complainant in a suit in equity to recover damages, does not apply to this case nor affect the present litigation. The original defendants then, as copartners in the business of manufacturing, &c., have received gains and profits, for which they have been required to account to the complainant, and for which he is entitled to ask a final decree. Those gains and profits constitute a debt due by the copartnership to the complainant. The liability is, in equity, in its nature, ex contractu, and a copartnership liability or obligation. On the death of Erastus Corning, his two copartners survived him. The copartnership property became, on such decree, vested in them, and the copartnership liabilities devolved upon them, as survivors. The suit, therefore, did not abate. Nothing was necessary but a suggestion of the death of Erastus Corning, and the suit would thereupon proceed against the others. This is a familiar elementary principle, and there is nothing in an equity suit founded on letters patent, and a prayer for an account of the profits arising from the infringement thereof, which withdraws this case from its operation. The fact, that the infringement was a tortious act, and the original defendants were tort-feasors, and might have been so treated, will not help the complainant. He did not so treat them, and, so far as the tortious nature of the defendants' acts gave character to the defendants or their liability, the inference is the other way. As tort-feasors, they may have been severally liable, and, being so, it would