to be construed distributively, and that 'making' is meant to be applied to the case of a composition of matter, and not to the case of a machine; that it is clear that the use of certain compositions, as patented pills, could not be an infringement, and unless making was so, there could be no remedy in such cases. We cannot feel the force of this distinction. The word making' is equally as applicable to machines, as to compositions of matter; and we see no difficulty in holding that the using or vending of a patented composition, is a violation of the right of the proprietor. It is farther argued, that the making of a machine cannot be an offence, because no action lies except for actual damage, and there can be no actual damages, or even a rule for damages for an infringement, by making a machine. We are, however, of opinion, that where the law gives an action for a particular act, the doing of that act imports, of itself, a damage to the party. Every violation of a right imports some damage, and if none other be proved, the law allows a nominal damage. We see no reason for departing from the plain import of the language of the statute, and the objection must be overruled."'

In the same case the plaintiff argued, that, al

3 Whittemore v. Cutter, 1 Gallison, 429.

though there was no evidence of actual damage, the jury ought to give damages either to the full value of the expense of making the machine, or of the price at which such a machine might be sold. Story J. said, that "neither of these estimates could form a rule for damages for the illegal making of the machine. As to the expense of making the machine, it is obvious that it is an expense altogether incurred by the defendant, and is not a loss sustained by the plaintiffs. The latter neither found the materials nor the labor. How then can it be an actual damage sustained by them? As to the price for which such a machine would sell, it is open to the same, and to this farther objection, that the price is compounded of the value of the materials and the workmanship, and also of the right of user of the machine. Now, admitting the plaintiff's recover in this action, there can be no pretence, that thereby a legal right will pass to the defendant to use the machine made by him. Every future use will be an infringement of the plaintiffs' patent; and, therefore, if the plaintiffs could, in this suit, recover such price, they not only would recover for materials and labor which they never furnished, and for a right of user which never passed from them, but, also, for that which might lawfully be the subject of another action; to wit, the future user of the defendant's machine; so that there

might be a double recovery for the same supposed injury."

Mr. Justice Story says, in regard to the expression, actual damages, in the act of congress: "By the term 'actual damages,' in the statute, are meant such damages, as the plaintiffs can actually prove, and have, in fact, sustained, as contradistinguished to mere imaginary or exemplary damages, which, in personal torts, are sometimes given. The statute is highly penal, and the legislature meant to limit the single damages to the real injury done, as in other cases of violation of personal property, or of incorporeal right."5

In the case of an infringement by using the machine, there always is some damage proved. The very fact of the defendant's using the machine is a practical admission of the value of the use. Mr. Justice Story laid down the general rule, in one case, that in an action for an infringement the damages should be estimated as high as they can be, consistently with the rule of law on this subject, if the plaintiff's patent has been violated; that wrong doers may not reap the fruits of the labor and genius of other men." But in a subsequent case before

4 Whittemore v. Cutter, 1 Gallison, 483. › Whittemore v. Cutter, 1 Gallison. 482. ⚫ Lowell v. Lewis, 1 Mason, 182.

cited,' the same judge, considering the trebling of the damages to be a sufficient discouragement to wrong-doers, seems to limit the rule of single damages more rigidly. His reasoning is as follows:

"It has been maintained by some learned persons that the price of the invented machine is a proper measure of damages, in cases where there has been a piracy by making and using the machine, because, in such cases, the verdict for the plaintiff entitles the defendant to use the machine subsequently, and, in short, transfers the right to him in the fullest manner, and in the same way, that a recovery in trover or trespass, for a machine, by operation of law, transfers the right to such machine to the trespasser, for he has paid for it. If I thought such was the legal operation of a verdict for the plaintiff, in an action for making and using a machine, no objection would very forcibly occur to my mind against the rule. But my difficulty lies here. The patent act gives to the inventor the exclusive right of making and using his invention during the period of fourteen years. But this construction of the law enables any person to acquire that right, by a forced sale, against the patentee, and compels him to sell, as to persons or places, when it may interfere essentially with his permanent interest, and involve him in the

7 Whittemore v. Cutter.

breach of prior contracts. Thus the right would not remain exclusive; but the very attempt to enforce it would involve the patentee in the necessity of parting with it. The rule itself, too, has no merit from its universality of application. How could it apply, when the patentee had never sold the right to any one? How, when the value of the right depended upon the circumstance of the right being confined to a few persons? Where would be the justice of its application, if the invention were of enormous value and profit, if confined to one or two persons, and of very small value if used by the public at large; for the result of the principle would be, that all the public might purchase and use it by a forced judicial sale. On the other hand, cases may occur where the wrong done to the patentee may very far exceed the price which he would be willing to take for a limited use by a limited number of persons. These, among others, are difficulties which press on my mind against the adoption of the rule; and where the declaration goes for a user during a limited period, and afterwards the party sues for a user during another and subsequent period, I am unable to perceive how a verdict and judgment in the former case is a legal bar to a recovery in the second action. The piracy is not the same, nor is the gravamen the same. If indeed the plaintiff, at the trial, consents that the defendant shall have the full benefit of the machine for ever, upon the ground