This language was held in Falk v. Curtis Pub. Co., (102 Fed., 967, 971,) affirmed by the Circuit Court of Appeals for the Third Circuit in Falk v. Curtis Pub. Co., (107 Fed., 128,) to mean that before the action for the penalty would lie there must be a finding of the articles in the possession of the defendant by means of a proceeding instituted for the express purpose of condemnation and forfeiture, and that an action of assumpsit brought at the same time with the action of replevin was premature.

In the case of Bolles v. The Outing Co., (77 Fed., 966,) Judge Wallace, who spoke for the court of appeals in that case, said (p. 968:)

The statute is apparently framed to give the party whose copyright has been invaded complete relief by an action in which he can procure a condemnation of the infringing sheets, and at the same time recover, by way of compensation, a penalty for every sheet which he is entitled to condemn. The words" found in his possession" aptly refer to a finding for the purposes of forfeiture and condemnation. The remedy by condemnation and forfeiture is only appropriate in a case where the property can be seized upon process; and where, as here, the forfeiture declared is against property of the "offender," it is only appropriate when it can be seized in his hands. The section contemplates two remedies, enforceable in a single suit, each of which depends upon the same state of facts. The aggrieved party may, at his election, pursue either one or both remedies. But it does not contemplate a recovery of penalties, except in respect to the sheets which can be condemned.

And in Bolles v. The Outing Co., (175 U. S., 262, 266,) this Court, speaking by Mr. Justice Brown, observed:

No remedy is provided by the act, although by section 4970 a bill in equity will lie for an injunction, but the provision for a forfeiture of the plates and of the copies seems to contemplate an action in the nature of replevin for their seizure, and in addition to the confiscation of the copies, for a recovery of one dollar for, every copy so seized or found in the possession of the defendant.

And in that case the view expressed in the Circuit Court of Appeals for the Second Circuit was approved, (175 U. S., 268,) and while the point was not necessarily involved, we think the indication in Bolles v. The Outing Company, that a single action in the nature of replevin for the recovery of plates and copies and a penalty for copies found, is correct.

We agree with the Circuit Court of Appeals for the Second Circuit that the language in Thornton v. Schrieber, above quoted, was not intended to indicate that an action declaring the forfeiture was required by the statute before the adjudication of the articles to the plaintiff, as is generally necessary in actions of forfeiture, (Cooley's Constitutional Limitations, 518,) but that the true construction of the statute, and the one intended to be indicated by Mr. Justice Miller, is that before the penalty can be recovered it is necessary that the sheets be actually found in the possession of the defendant. As we have said, this section of the statute is highly penal (Bolles v.

The Outing Co., supra,) and there is nothing in its terms to indicate that the offender is to be subjected to more than one action; on the contrary, the provisions of the section seem to point clearly to the conclusion that when the offender is brought into court, under this section, he shall forfeit to the proprietor the plates on which the articles shall be copied and every sheet thereof, whether copied or printed," and shall further forfeit one dollar for every sheet of the same found in his possession, etc., and in case of a painting, etc.," he shall forfeit ten dollars for every copy of the same in his possession, or by him sold or exposed for sale.

There is nothing in this section which seems to contemplate the method of procedure pursued in this case, namely, a separate action for the money penalty, upon the theory that it arose only in case of actual finding and judgment of condemnation, but the statute contemplates the bringing of the offender into court in one suit, in which the plates and sheets shall be seized and forfeited and the penalty recovered.

If it had been the intention of Congress to provide two actions, one for the forfeiture of the plates, sheets, etc., and another for the recovery of the money penalty, it would have been easy to have said so. Likewise, had it been the intention of Congress to permit a recovery for the money penalty only after judgment of forfeiture had gone in favor of the plaintiff, it would have been equally as easy to have made such provision.

Until Congress shall provide otherwise, and this section might well be made more specific as to the nature and character of the remedy given, we think this section intended to provide, in a single action, all the remedy which is within its scope, and that to construe it as requiring two actions would be extending a penal act beyond the provisions incorporated in its terms.

In reaching this conclusion we have not overlooked the fact that one-half of the penalties go to the proprietors of the copyright and one-half to the United States. There is no requirement that the United States shall be a party to the action, and we think the purpose of the statute was to make the proprietor of the copyright accountable to the United States for one-half of the money penalty recovered. Upon this construction of the statute the plaintiff in error had exhausted his remedy in the judgment rendered in the first suit, and as the action is wholly statutory and no second action is given as we construe the act, the court was without power to award the second judgment in the separate action for the money penalty, and the circuit court properly directed the verdict for the defendant below.

The judgment of the United States Circuit Court of Appeals for the Second Circuit is affirmed.

[Supreme Court of the United States.]

DONNELL v. HERRING-HALL-MARVIN SAFE COMPANY AND HALL SAFE AND LOCK COMPANY.

Decided February 3, 1908.

134 O. G., 1051.

TRADE-MARKS-INFRINGEMENT-NAME OF INDIVIDUAL.

Where the Hall's Safe and Lock Company, a corporation, the stock of which was largely owned by Joseph L. Hall, the founder of the business, and his sons, sold all its property including trade-marks, trade-rights, goodwill, and its business as a going concern to another company, which subsequently conveyed such rights to the Herring-Hall-Marvin Safe Company and agreed to go out of business, which it did with the assent of all its stockholders, such transfer did not preclude the sons of Joseph L. Hall from subsequently engaging in the same business and using the name of Hall as a part of the corporate name, particularly where it is shown that the purchasing company had before its mind the possibility of competition by the Halls and gave the measure of its expectations and demands by personal contracts that it required, which were limited in time and scope and were discharged before the new company was formed; but such name must not be used by the new company in such a way as to represent that it is the successor of the original company, or that its goods are the product of that company or its successors, or interfere with the good-will bought from it.

Mr. S. S. Gregory and Mr. George Peck Merrick for the petitioner. Mr. Lawrence Maxwell, Jr., and Mr. Charles H. Aldrich for the respondent.

Mr. Justice HOLMES delivered the opinion of the Court.

This suit was brought in the superior court of Cook County, Illinois, by the Hall Safe and Lock Company against the Herring-HallMarvin Safe Company, and was removed by the latter to the United States Circuit Court. The bill sought to enjoin the defendant from representing itself to be the successor of the Hall Safe and Lock Company and otherwise, as need not be stated in detail. The defendant answered, denying the plaintiff's right and setting up its own. At the same time it filed a cross-bill to which it made the petitioner Donnell, the president of the plaintiff company, a party, and by which it sought to enjoin the plaintiff and Donnell from carrying on the safe business under any name of which the word Hall is a part, or marking or advertising their safes with any such name, etc., unless made by the defendant or its named predecessors in business. The bill was dismissed by the circuit court, no appeal was taken and it is not in question here. On the cross-bill an injunction was issued as prayed and an account of profits ordered. This decree was affirmed by the Circuit Court of Appeals. (143 Fed. Rep., 231; 74 C. C. A.,

361.) Subsequently an injunction was granted by the Circuit Court of Appeals for the Sixth Circuit, but in much more limited form, after a consideration of the present case. (146 Fed. Rep., 37; 76 C. C. A., 495.) Later still a certiorari was issued by this Court.

The facts are as follows: About sixty years ago Joseph L. Hall started a business of constructing safes, and in time attached a reputation to his name. In 1867 he and his partners organized an Ohio corporation by the name of Hall's Safe and Lock Company, which went on with the business. (This was not the plaintiff, which is an Illinois corporation of much later date.) Hall was the president, a part or the whole of the time, until he died in 1889. He owned the greater part of the stock and his children the rest. In 1892 the Ohio company sold all its property, including trade-marks, trade-rights and good-will, and its business as a going concern to parties who conveyed on the same day to the Herring-Hall-Marvin Company. Subsequently this company's property was sold to the Herring-Hall-Marvin Safe Company, the party to this suit. In its conveyance the Ohio company agreed to go out of business and get wound up, which it did with the assent, it may be assumed, of all the stockholders. The stock belonged to the Hall family and connections, and they, of course, ultimately received the consideration of the sale. A part consisted of stock in the new company, which was distributed to them at once, and a part was money paid to the selling company about to be dissolved. By election and under a contract made on the day of the sale Edward C. Hall, a son of the founder, became president of the purchasing corporation, the contract reciting that it was made as part of the inducement to the purchase, and he agreeing in it to hold the office until May 2, 1897, to devote all his time to the interests of the corporation, and, so long as it might desire to retain his services as stipulated, not to engage in any competing business east of the Mississippi River. Another son became treasurer under a nearly similar contract, and a son-in-law secretary.

Both sons resigned and left the service of the corporation August 1, 1896, and both were released, in writing, from their obligations under their contract. The next month the sons organized an Ohio corporation, under the name of Hall's Safe Company, which is party to the litigation in the sixth circuit, but is not a party here. The petitioner Donnell had been a selling agent of the original company, and afterwards of the company that bought it out, having a place in Chicago, with a large sign," Hall's Safes," on the front. In 1898 he, with others, organized the plaintiff, Hall Safe and Lock Company, the name differing from that of the original corporation only by not using the possessive case. This company does business in the petitioner's old place, with the old sign, and sells the safes of the present Ohio corporation as Hall's safes. It has accepted a decree forbid

ding it to go on under the above name. The question before us is upon the scope of the injunction finally issued, as we have stated, upon the cross-bill. That the petitioner contends is too broad, while the Herring-Hall-Marvin Safe Company contends that as against the Hall-family and any one selling their safes or standing in their shoes it has the sole right to the very valuable name Hall upon or for the sale of safes.

It no longer is disputed that the Herring-Hall-Marvin Safe Company is the successor of the original Hall's Safe and Lock Company, or that it has the right to use the word "Hall." But it is denied that it has the exclusive right. The name does not designate a specific kind of safe, and yet may be assumed to have commercial value as an advertisement even when divorced from the notion of succession in business, a sort of general good-will, owing to its long association with superior work. So far as it may be used to convey the fact of succession it belongs, of course, to the Herring-Hall-Marvin Safe Company, and the narrower decree, made in the sixth circuit, was intended to prevent the present Ohio company from using any name or mark indicating that it is the successor of the original company, or that its goods are the product of that company or its successor, or interfering with the good-will bought from it. But, as we have said, we presume that the word may have value, even when that idea is excluded, and when there is no interference with the good-will or the trade-name sold.

The good-will sold was that of Hall's Safe and Lock Company. There is nothing to show that while that company was going the sons of Joseph L. Hall could not have set up in business as safemakers under their own name and could not have called their safes by their own name, subject only to the duty not to mislead the public into supposing when it bought from them that it was buying their father's safes. Therefore it could not be contended that merely by a sale the father's company could confer greater rights than it had. But it was said that if a partnership had sold out by a conveyance in like terms the members would have given up the right to use their own names if they appeared in the firm-name, that in this case the Halls received the consideration for the good-will they had attached to their name, that they ratified the sale and necessarily assented to it, since otherwise the corporation could not have sold its property or have carried out its agreement to dissolve, and that under such circumstances a court ought to look through the corporation to the men behind it.

Philosophy may have gained by the attempts in recent years to look through the fiction to the fact and to generalize corporations, partnerships and other groups into a single conception. But to gen