Now, on May 24, 1901, when the plaintiff, a foreign corporation, made this contract it had not registered. It therefore had no right under the statute to make it, and in doing so its officers and agents made themselves liable to a criminal prosecution with fine and imprisonment. It will also be observed that the purpose of the contract was to bind the corporation to do a large amount of unlawful work in the commonwealth. A contract thus made in violation of law, and whose pur pose was to procure further violations of law, will not be enforced by the courts. In Johnson v. Hulings, 103 Pa. 501, 49 Am. Rep. 131, plantiff had sold land, and pursuant to contract was entitled to $10,000 commissions. This the jury awarded him. He had not taken out a broker's license. The Supreme Court said:

"Such being the case, the plaintiff was, by virtue of the eighteenth section of the act of the 10th of April, 1849 [P. L. 573], brought within the provisions of the act of May 27, 1841 [P. L. 396], and was subject to the penalty therein prescribed in case of a violation of those provisions. The result follows that Johnson, in the transaction in hand, stands in the position of a real estaté broker who seeks to enforce a contract which, under the statute, he had no right to make, and by the making of which he subjected himself to the penalty imposed by that statute. But a contract such as this, opposed as it is alike to good morals and public policy, cannot be enforced. That has been ruled times without number. *** If, then, the business itself be unlawful, the commissions or gains arising from it without regard to the form of the contract for their payment are also unlawful."

If, then, the contract between Petrie and the plaintiff was illegal and intended to secure the performance by the plaintiff of unlawful acts, how can this action on the guaranty given by the defendants be enforced? That guaranty was an undertaking on their part to pay to the plaintiff the consideration for doing the unlawful things provided for in the contract. It is clear that an action on the guaranty cannot be sustained without disclosing the guarantied contract; for performance of its prohibited acts is the foundation of recovery against the guarantors. Now, "the test whether a demand connected with an illegal transaction can be enforced at law is whether the plaintiff requires the aid of the illegal transaction to establish his case." Johnson v. Hulings, supra. This is in accord with McMullen v. Hoffman, 174 U. S. 654, 19 Sup. Ct. 839, 43 L. Ed. 1117, where it is said:

"The authorities from the earliest time to the present unanimously hold that no court will lend its assistance in any way toward carrying out the terms of an illegal contract. In case any action is brought in which it is necessary to prove the illegal contract in order to maintain the action, courts will not enforce it, nor will they enforce any alleged rights directly springing from such contract."

This objection of invalidity and illegality may sound very ill coming from a party who on his part enjoyed the fruit of the contract; "but," as is said in Thorne v. Travellers' Insurance Co., 80 Pa. 29, 21 Am. Rep. 89, "it is not for his sake the objection is allowed. It is founded on general principles of policy which he shall have the advantage of, contrary to the real justice between the parties. The principle of public policy is that no court will lend its aid to a party who grounds his

151 F.-9

action upon an immoral or an illegal act." To the same effect is the holding of this court in Pittsburgh Dredging Company v. Monongahela Company (C. C.) 139 Fed. 780, where it is said:

"It will be observed that, when the law refuses to be used to enforce au unlawful contract, it is not done to benefit or aid the party who has profited by the wrong, and who is in possession of the fruits of the fraud, but on the higher ground of public policy."

We are clear, also, that the subsequent work under the contract, the estimate made by the engineer at the suggestion of the railroad, and the arbitration would not change the status of the contract. Once tainted with illegality there can be no cure so far as the contract is concerned. Such is the holding in Coppell v. Hall, 7 Wall. 558, 19 L. Ed. 244:

"In such cases there can be no waiver. The defense is allowed, not for the sake of the defendant, but of the law itself. The principle is indispensable to the purity of its administration. It will not enforce what it has forbidden and denounced. The maxim, 'Ex dolo malo non oritur actio,' is limited by no such qualification. The proposition to the contrary strikes us as hardly worthy of serious refutation. Whenever the illegality appears, whether the evidence comes from one side or the other, the disclosure is fatal to the case. No cousent of the defendant can neutralize its effect. A stipulation in the most solemn form to waive the objection would be tainted with the vice of the original contract, and void for the same reasons. Wherever the contamination reaches, it destroys. The principle to be extracted from all the cases is that the law will not lend its support to a claim founded upon its violation."

Nor does the award of the engineer have any efficacy in this case. Authority on his part to act and the obligation of parties to abide by his decision rests in both cases on the provision of a contract which is contra legem. The law will not enforce an award based on an illegal contract. Benton v. Singleton, 114 Ga. 548, 40 S. E. 811.

Upon the whole, therefore, we are of opinion that by reason of the nonregistration of the plaintiff corporation prior to the contract here involved the verdict for plaintiff cannot be sustained. Judgment will therefore be entered in favor of the defendant non obstante veredicto; but said judgment shall not bar any subsequent suit or proceeding by the plaintiff for services performed.

WARREN FEATHERBONE CO. v. LANDAUER et al.

(Circuit Court, E. D. Wisconsin. November 30, 1903.) INJUNCTION-GROUNDS-CIRCULARS GIVING NOTICE OF SUIT FOR INFRINGEMENT OF TRADE-MARK.

It is within the rights of a complainant, who has commenced suit for infringement of a trade-mark and for unfair competition, to issue circulars to the trade stating such facts and its claimed rights, where such circulars are sent in good faith and the claims made are fairly within the scope of the bill, and their issuance will not be enjoined on petition of the defendant, on mere denials of the allegations of the bill, and in advance of a hearing or the taking of any evidence upon the issues of fact joined.

[Ed. Note. For cases in point, see Cent. Dig. vol. 27, Injunction, §§ 170,

In Equity.

Offield, Towle & Linthicum, for complainant.

Lysander Hill and Jacob Rothschild, for defendants.

Before BUNN and SEAMAN, District Judges.

BUNN, District Judge. This is a motion upon a petition filed by the defendants for an injunctional order against the complainant, restraining it from issuing notices or printed circulars to its customers or others warning them against purchasing defendants' goods. In order to understand the question at issue, it will be necessary to state briefly the purpose of the suit and the answer to the complainant's bill. The suit is brought by the complainant, a corporation having its principal place of business at Three Oaks, Mich., for infringement of the complainant's trade-mark. By the allegations of the bill the complainant has, since 1884, been engaged in the business of manufacturing and selling stiffeners for garments in all parts of the United States, Great Britain, and elsewhere, made of the quill portion of feathers, to be used largely as whalebone has been used and in place. thereof, under the designation of "Featherbone," which name the complainant alleges it adopted as a trade-mark, and which Edward Kirk Warren, the complainant's predecessor, caused to be registered as such in the United States Patent Office upon August 5, 1884, as No. 11,401. This stiffener is composed of cords or splints made from quills or feathers split longitudinally, closely bound together and covered by ribbon or other textile fabric. These fabrics were made in various forms and covered with ribbons of various colors. The complainant has spent over $500,000 in advertising these goods, and has built up an extensive business in their manufacture and sale. By reason of their peculiar coverings, and of said colors and ornamentation, the stiffeners manufactured by the complainant have received a distinctive character in the markets of America and Europe, and have caused them to be recognized as of the manufacture of the complainant. The complainant further alleges that the defendants well knowing the great reputation of complainant's manufacture, and designing to divert to themselves the profit and gains to which the complainant is entitled, have falsely and fraudulently conspired to put up and offer for sale, and have so put up and offered for sale, goods identical with those of complainant. and containing complainant's trade-mark, and have used complainant's styles, shapes, sizes, finish, and packing, trade-names, trade-marks, sample cases, and entire business methods, in connection with their manufacture and sale of articles not manufactured by complainant, and vastly inferior to its goods, intending the same to be accepted by complainant's customers and the public as and for complainant's goods, in unfair competition with complainant, and in infringement of complainant's trade-mark; that said articles, manufactured and sold by defendants as the manufactures of complainant, are inferior in quality, put in packages and under labels so like complainant's that they are practically undistinguishable therefrom-all of which has been and is to complainant's great and irreparable loss and to the injury of the reputation of its manufacture and the obstruction of its business and the diminution of its profits; and it prays that the defendants may be en

joined by the order of the court from all further infringement. The complainant's bill was filed on July 9, 1903, and is under oath.

The answer of the defendant the American Featherbone Company admits much of the complainant's bill as that the article manufactured by it is a useful article, having the construction, qualities, and various uses described therein, and that Warren created and gave to said new article of manufacture the name of "Featherbone," by which name it has ever since been known; also that said Warren caused the word "Featherbone" to be registered as his trade-mark for said material; also that within the past year defendant has used the name "Featherbone" in connection with its manufacture and sale of goods, known everywhere as "Featherbone." But defendant denies that complainant has any exclusive right or property in the word "Featherbone," as applied to any goods of the classes referred to in the bill of complaint, and avers that said word is public property, free to the use of everybody; that when Edward Kirk Warren, in 1882 or 1883, first conceived the idea of splitting feather quills longitudinally into small splints or fibers, binding such fibers into cords, and wrapping the cords into flat strips to make stiffeners, he appropriately named the new product "Featherbone," and on January 9, 1883, he applied for a patent, which was granted October 16, 1883, in which he stated that he had given the name "Featherbone" to his new article of manufacture; that he began the manufacture in 1883 or 1884, and has continued the same under his own name and the name of the corporation ever since; that after that time Mr. Warren, either for himself or for the company, took out several other patents for alleged improvements upon his featherbone; that one of these patents was issued February 5, 1885, and one October 6, 1885, and that all three of these patents had expired before defendant began the manufacture, and have since been public property; that defendant company was organized in the fall of 1902, after the expiration of complainant's patents, and entered upon the manufacture and sale of featherbone, as it had a right to do, and without any purpose of deceiving the public, calling itself the "American Featherbone Company" to distinguish its products from those of the complainant, the Warren Featherbone Company. Defendant denies, also, that its products are in any way inferior to those of the complainant company, but avers that they are fully equal to complainant's goods in quality and value; that it has never tried to palm its goods off as made by the complainant, but has plainly and conspicuously marked all the boxes and packages with the words, "Made by the American Featherbone Company," and that it has taken all pains to let it be known that it is fairly competing with the complainant as a rival in the manufacture of these goods; that it has not indulged in unfair competition of any description.

Upon the answer which was filed August 21, 1903, and is not sworn to, and upon a petition filed, the defendant, before any testimony has been taken in the case, moves the court for an injunctional order restraining the complainant from issuing circulars or sending notices to customers that a suit has been commenced for infringement of its trade-mark. The petition is merely a reinforcement of the allegations of the answer, and contains no essential facts not already set forth in the pleadings. In short, the allegations are more conclusions of law

and of fact than allegations of fact, and the question to be determined is whether the defendant is entitled to such relief before any testimony has been taken or final hearing had upon the merits; or, rather, in order to grant the relief, must we not decide the merits of the case in advance of a hearing? Can we assume, without evidence and in advance of a hearing on the merits, that the allegations of the defendant's answer and petition are true, and that those of the bill of complaint are unfounded? If the allegations of the bill are true, then the plaintiff is clearly entitled to the relief sought. If those of the answer and petition are true, then we think the complainant not entitled to recover, and that the defendant is entitled to the relief prayed for in the petition. But can that question be properly determined by the court without furth-. er evidence and a full hearing? Can the court take the allegations of the answer, which is not sworn to, or the allegations of the petition, which is sworn to, against the allegations of the bill, without further evidence? In other words, can the merits of the case be anticipated and determined in advance upon the bare allegations of the pleadings in the case? If the defendant came with an adjudication in another court upon the validity of the complainant's trade-mark, we might follow that without proof and grant an injunction; but, so far as appears, there has never been an adjudication of the question. Such relief has been granted in many of the adjudged cases, sometimes on the application of the defendant, though more generally upon the application of the complainant and upon final hearing, as in Emack v. Kane (C. C.) 34 Fed. 46, Adriance, Platt & Co. v. National Harrow Co., 121 Fed. 827, 58 C. C. A. 163, and A. B. Farquhar & Co. v. Same, 102 Fed. 714, 42 C. C. A. 600, 49 L. R. A. 755.

Complainant moved on the hearing of the petition to have the same struck from the files, claiming that the defendant has no right to file such a petition and no right to the relief prayed for. Under the adjudged cases it seems clear that such relief as is here asked for may be granted in a proper case, as well on the application of the defendant as that of complainant. Since the case of Emack v. Kane (C. C.): 34 Fed 46, was decided, the doctrine has been affirmed in many cases. But in that case, as in most of those since decided, the doctrine has been placed upon the ground that, if the assumed owner of a patent or trademark neglects or refuses to bring suits, but instead thereof issues threatening notices and circulars to customers, warning them against the manufacture or sale of the supposed patented article, maliciously or in bad. faith, it is only just and reasonable that a court of equity should interpose to restrain such acts, to prevent irreparable injury or a multiplicity of suits. In Emack v. Kane, Judge Blodgett first laid down the rule as follows:

"Here the complainant seeks to restrain the defendants from making threats intended to intimidate the complainant's customers under the pretext that complainant's goods infringe a patent owned or controlled by defendants, and threats that if such customers deal in complainant's goods they will subject themselves to suit for such infringement; the bill charging, and the proof showing, that these charges of infringement are not made in good faith, but with a malicious intent to injure and destroy the complainant's business. While it may be that the owner of a patent cannot invoke the aid of a court of equity to prevent another person from publishing statements denying the validity of such patent, by circulars to the trade or otherwise, yet, if the owner