tion to stay waste generally was not prayed; if it was, that brings it within the common case. As to the case of the Bishop of Winchester v. Knight, 1 P. Wms. 406, I am at a loss to know upon what grounds the court went. The book says, because it was a demand against an executor; but I doubt greatly as to this, for it is far from being a general rule of this court to entertain a bill against an executor for a tort committed by his testator. The more probable reason for decreeing an account in that case seems to be, because it was the case of mines; and the court always distinguishes between digging of mines and cutting of timber, because the digging of mines is a sort of trade; and there are many cases where this court will relieve and decree an account of ore taken, when in any other tort or wrong done it has refused relief. If this be the reason of the determination in that case, as I really think it is, it stands quite different from the present; I am therefore of opinion, upon this first head, that this bill brought by Jesus College, to have satisfaction for timber cut down after an assignment of the lease, when the proper remedy is at law, ought to be dismissed.2

1 The suggestion that Bishop v. Knight, supra (1717), rests on a special equitable jurisdiction over mining cases is supported by dicta in Pulteney v. Warren, 6 Ves. 72, 89 (1801); Parrott v. Palmer, 3 M. & K. 632, 640 (1834). The holding of Bishop v. Knight that a bill for an account lies against an executor for waste committed by the deceased, is supported by Thomas v. Oakley, 18 Ves. 184 (1811), trespass; Seagram v. Knight, L. R. 2 Ch. App. 628 (1867), emphasizing the need of discovery; but such a bill was dismissed in Higginbotham v. Hawkins, L. R. 7 Ch. App. 676 (1872); Lippincott v. Barton, 42 N. J. Eq. 272 (1886). The last three cases said that an action lay at law. An action of tort did not lie against the executor at common law, Hambly v. Trott, 1 Cowp. 371 (1776); this was altered by 3 & 4 Wm. 4, c. 42, § 2 (1833). Assumpsit was held to lie at common law in Powell v. Rees, 7 Ad. & El. 426 (1837). Cf. Tightmeyer v. Mongold, 20 Kan. 90 (1878); Parks v. Morris, 63 W. Va. 51 (1907); Stone v. U. S., 167 U. S. 178, 181 (1897); Arizona v. Iron Cap, 119 Me. 213 (1920), 236 Mass. 185 (1920); 89 Am. Dec. 427n.; A. W. Scott, Fundamentals of Procedure in Actions at Law, 7-10 (1922).

Further light is thrown on Bishop v. Knight by Hambly v. Trott, supra; Landsdowne v. Landsdowne, 1 Madd. 116, 138 (1815); Phillips v. Homfray, L. R. 24 Ch. D. 439 (1883, C. A.), [1892] 1 Ch. 465 (C. A.); Head v. Porter, infra, 250n.1; J. B. Ames, Assumpsit for Use and Occupation," 2 Harv. L. Rev. 377 (1889); C. C. Langdell, "Bills of Equitable Assumpsit," 3 Harv. L. Rev. 237 (1890).

66

2 Accord, Grierson v. Eyre, 9 Ves. 341 (1804), copyright; Parrott v. Palmer, 3 M. & K. 632 (1834), waste; Root v. Ry., 105 U. S. 189 (1881), patent; Lippincott v. Barton, supra; Ackerman v. True, 56 App. Div. 54 (1900); Davis v. Silverton, 47 Ore. 171 (1905), trespass; Union Planters' Bank v. Memphis Hotel, 124 Tenn. 649, 664 (1911), nuisance; Rock County v. Weirick, 143 Wis. 500 (1910), literary property. See 1 Pom. § 237; 116 Am. St. Rep. 877n.; 19 L. R. A. N.s. 1064n.

Account for equitable waste although no injunction. If, however, there is no remedy at common law for waste, a bill for an account will be supported although no relief by injunction is given. Garth v. Cotton, 3 Atk. 751, 1 Dick. 183 s.c. (1753); Landsdowne v. Landsdowne, 1 Madd. 116 (1815); Morris . Morris, 3 De G. & J. 323 (1858), semble.

the action aside leaping to remity

is at low and the 48 SUBSTITUTIONAL REDRESS: PROFITS AND DAMAGES [CHAP. III the land is now token and wined.

At when as goes ahead during

litigation aford does just rofat.

the action in it is to rent LEWIS v. NORTH KINGSTOWN.

the

It will assis the

P

equity the way without moking f damaged gotipa lauret.

SUPREME COURT, RHODE ISLAND, 1887.

[16 Rhode Island Reports, 15.]

DURFEE, C. J. The bill sets out that the complainants are owners in possession of a lot of land situate on Washington Street in the village of Wickford, in the town of North Kingstown, in highway district No. 37 of said town, on which lot there is a building belonging to them; that the defendant, John H. Weeden, the surveyor of highways of said district, acting under order of the town council of said town, the members whereof are likewise made defendants, has entered on said lot, and is engaged in razing said building and taking away the foundations and grading said lot; thereby throwing the estate open to the public and obliterating its boundaries, to the irreparable injury of the complainants. The bill prays that the defendants may be enjoined from carrying out their purposes, and from further interfering in any way with the estate, and for general relief. The bill was filed February 28, 1885. The defendants by their answer filed May 27, 1885, admit that they are or were doing as charged, but deny that the lot is part and parcel of the estate of the complainants, and allege that it is and ever has been, from a time when the memory of man runneth not to the contrary, part and parcel of a public highway, and that the building had stood thereon by sufferance of the town. The defendants, also, by supplemental answer filed September 28, 1886, allege that their purposes have been fully carried out by removing the building and foundations and grading the lot, and set up that the complainants ought not to maintain their bill because their remedy is complete at law. To both answers the complainants have filed general replications.

In this state of the pleadings the defendants move that the bill be dismissed because the complainants have an adequate remedy at law, and in support of their motion contend: first, that the bill does not state a case for equitable relief; and second, if it does, that the case stated has ceased to exist by reason of the removal of the building and foundations and the grading of the lot.1 . . . We do not think the motion should be granted because of the statements of the supplemental answer, since those statements are controverted by the replication. Moreover, if they were admitted we do not think they would make a case for dismissal. It ought not to be in the power of a defendant in an injunction bill to oust the court of its jurisdiction by committing, pendente lite, the very acts to prevent which the suit was begun, and such, we think, is the law. "It is well settled," says the Supreme Judicial Court of 1 The court held that the bill stated a case for the injunction of threatened trespasses.

Massachusetts, "with little or no conflict of authority, that when a defendant in a bill in equity disenables himself, pending the suit, to comply with an order for specific relief, the court will proceed to afford relief by way of compelling compensation to be made, and for this purpose will retain the bill and determine the amount of such compensation, although its nature and measure are precisely the same as the party would otherwise recover as damages in an action at law." See Milkman v. Ordway, 106 Mass. 232,1 a case which contains a very full citation and discussion of authorities, and goes even beyond the passage quoted. See, also, Story Eq. Juris. 12th ed. §§ 794, 799. It may be that an amendment of the bill, setting forth the acts committed by the defendants pendente lite, will be necessary, notwithstanding the supplemental answer, if the complainants desire not only an injunction from further interference but also an award of damages, but if so the complainants should have an opportunity to make it. Motion dismissed.2

NOTE ON ACCOUNTING OF PROFITS IN EQUITY

PITNEY, J., HAMILTON-BROWN SHOE Co. v. WOLF BROS. & Co., 240 U. S. 251, 259 (1916): "The right to use a trade-mark is recognized as a kind of property, of which the owner is entitled to the exclusive enjoyment to the extent that it has been actually used. . . . The infringer is re

1 In this case (1870), A let premises to B, and B sublet to C. Then A, who was ignorant of the sublease, and B agreed to cancel the original lease. C sued B and A for specific performance of the sublease, not knowing of the cancellation, which was first disclosed to C by the answers. The decree dismissed the bill as to A; but, although specific performance was impossible, retained the bill for the purpose of assessing damages against B for breach of contract, on condition that C vacated the premises and paid into court the accrued rent, etc.; and committed the cause to a master for assessment of damages and an accounting. C complied with the decree, but B appealed on the ground that for all the purposes of the decree C had an adequate remedy at law. The decree was affirmed For other cases giving damages in lieu of specific performance, see 1 Pom. § 237 n.3, n.(h); 16 Colum. L. Rev. 326; W. D. Lewis, 41 Am. L. Reg. N.s. 394 (1902); McLennan v. Church, 163 Wis. 411 (1916); Phez v. Salem, 103 Ore. 514 (1921).

2 See 30 Harv. L. Rev. 188; 16 Colum. L Rev. 326; 1 Pom. § 237n.(e); 33 Yale L. J. 437; 72 U. Pa. L. Rev. 193; 2 Wis. L. Rev. 379.

Accord, Clark v. Wooster, 119 U. S. 322, 325 (1886), patent; Beedle v. Bennett, 122 U. S. 71 (1887), patent; N. Y. v. Pine, 185 U. S. 93 (1902), nuisance; Andrus v. Berkshire, 147 Fed. 76 (C. C. A., 2d, 1906), certiorari refused, 203 U. S. 596, same; West Pub. Co. v. Thompson Co., 176 Fed. 833 (C. C. A., 2d, 1910), copyright; Woodbury v. Marblehead, 145 Mass. 509, 512 (1887), trespass; Carlisle v. Cooper, 21 N. J. Eq. 576, 592 (1870), nuisance; Whipple v. Fair Haven, 63 Vt. 221 (1890), same; see Hazen v. Lyndonville, 70 Vt. 543, 556 (1898). See cases under statutes, 276n. Multiplicity of suits was a factor in Hat Sweat Mfg. Co. v. Porter, 34 Fed. 745 (N. J., 1888), patent; State v. Sunapee Dam, 72 N. H. 114, 122 (1903), nuisance. In Victor v. Am. Gramophone, 140 Fed. 860 (S. D., N. Y., 1905), the pltff. agreed before suit to license the dft. if the patent was held valid.

quired in equity to account for and yield up his gains to the true owner, upon a principle analogous to that which charges a trustee with the profits acquired by wrongful use of the property of the cestui que trust. Not that equity assumes jurisdiction upon the ground that a trust exists. As pointed out in Root v. Railway, 105 U S. 189, 214, and Tilghman v. Proctor, 125 U. S. 136, 148 (patent cases), the jurisdiction must be rested upon some other equitable ground — in ordinary cases, as in the present, the right to an injunction-but the court of equity, having acquired jurisdiction upon such a ground, retains it for the purpose of administering complete relief, rather than send the injured party to a court of law for his damages. And profits are then allowed as an equitable measure of compensation, on the theory of a trust ex maleficio.” 1

G. GRAY, J., P. E. SHARPLESS Co. v. LAWRENCE, 213 Fed. 423, 426 (C. C. A., 3d, 1914): "In theory, a technical trade-mark, like a patent right, is a species of property, and when it is invaded or appropriated, the owner thereof is entitled, not only to protection from further trespass, but to the recovery of the profits issuing therefrom, an incident to and a part of his property right. In suits for unfair competition, on the other hand, the complaint is not of an appropriation of a property right, but of a tort committed by the defendant, in that his conduct has been unlawful by reason of the consequential injury to the plaintiff. In such a case, it is contended the recovery should be for damages actually suffered by the plaintiff, and for those only, the wrong complained of being somewhat analogous to that which would be the basis of an action on the case at common law. It is true, however, as contended by the plaintiffs below, that courts of equity, in granting injunctive relief in cases of unfair competition, have sometimes decreed that the plaintiffs should recover of defendant, not only damages, but the profits, gains and advantages that have accrued to the defendant by reason of his unfair competition. Such an enlargement of the scope of the decree is generally made on the ground that the unfair competition is adjudged to have been willful and fraudulent, and the recovery of profits in such cases is a punitive addition to the ordinary decree of compensatory damages." 2

1 That an accounting of profits may be given in equity in connection with an injunction has long been established. Castlemain v. Craven, 15; Jesus College v. Bloom, 246, waste; Thomas v. Oakley, 38, trespass; Tyler v. Wilkinson, 4 Mass. 397 (R. I., 1827), nuisance; Allison's App. 77 Pa. 221 (1874), trespass; Avery v. Meikle, 85 Ky. 435 (1887), trademark. On patents, see Root v. Ry., 105 U. S. 189 (1881); Ames, 644n; G. P. Dike, "The Trial of Patent Accountings in Open Court," 36 Harv. L. Rev. 33 (1922). The reasonable royalty rule will be applied in the absence of express testimony, 36 ib. 627; cf. the fixed royalty for mechanical reproduction of copyrighted music, Act of Mar. 4, 1909, c. 320, § 1. On unfair competition and trademarks, see Nims, Unfair Competition (2d ed.), c. xxv.

During a patent infringement suit for injunction and profits the defendant died. Motion to dismiss the bill on the ground that the suit could not be revived against the executor because it was essentially a tort proceeding for damages and so did not survive. Head v. Porter, 70 Fed. 498 (Mass., 1895); Ames, 649n.

2 See Baker v. Slack, 130 Fed. 514 (C. C. A., 7th, 1904); 29 Harv. L. Rev. 764; 36 ib. 114.

Paved Dfoiresting his name and with /P. Priced the iny and wat

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of equity to give donges he suffered #. The locayed gave Phomages suffered because the exhiety of ought to give full sufficed by the frond

SECT. II] L. MARTIN CO. v. L. MARTIN & WILCKES

This is contedy to general riell of but conforefsensiblerrette

THE L. MARTIN CO. v. L. MARTIN & WILCKES Cmplete justice

COURT OF ERRORS AND APPEALS, NEW JERSEY, 1909te the it

[75 New Jersey Equity Reports, 257.Lt ass damages. Also they could

BILL in equity by a manufacturer of lampblack against a newly asclicales. formed competing corporation, alleging unfair competition through inalindefinite imitation of the complainant's name. The court of chancery and also profit rendered the following opinion, after final hearing on bill, answer, weiter made by D. answeration replication and proofs taken in open court. 75 N. J. Eq. 39. Lawabequity and the get only.

and con

STEVENSON, V. C.1 ... An appeal having been taken from thee & he chooses given.

66

decree of this court a statement of the reasons "therefore becomes necessary. . . . The issue still in litigation between the parties seems to relate solely to the liability of the defendant to account for the damages or diversion of profits which the decree adjudges that the plaintiff suffered as the result of the defendant's wrong.

...

The gist of the complainant's case lies in a charge of fraud against the defendants. The court of chancery of New Jersey has general jurisdiction of all cases of fraud. The only question as to jurisdiction where there is fraud is confined to the propriety of exercising the power which the court undoubtedly has. The cases decided in this court and the court of errors and appeals sustain the wide theory of equity jurisdiction in New Jersey in all cases of fraud which has prevailed in England. . . . It follows that where the complainant is found to have brought his case properly in the court of chancery of New Jersey for equitable relief based on fraud, and the court has administered a portion of the relief to which he is entitled, he ought not to be turned out of the court of equity and compelled to try his case all over again in a court of law in order to have his damages awarded to him. Assuming that this tort, called unfair competition, which is so peculiarly the creature of courts of equity, is cognizable at law in an action of trespass on the case, it may be that the court of chancery would not entertain a bill in this case, the sole object of which was to give the complainant damages which he had suffered on account of the defendant's fraud. If such a bill were presented, the court of chancery, while asserting its theoretical jurisdiction, might decline to exercise it on the ground that the complainant had an adequate remedy at law. Right here, it seems to me, comes the distinction between the award of damages in a fraud case and the award of damages in a nuisance case where an injunction goes. Without a Lord Cairns' act the court of chancery is powerless in a suit in which an injunction upon a nuisance is granted to go on and assess the damages which the complainant

1 The discussion of the existence of the tort, the reasons for issuing the injunction, and some citations are omitted.