Roger v. J. P. Cochrane & Co.

characteristic of the Pursuer's Patent, but bad in so far as it diminishes that fluidity. As they take advantage of the fluidity, which is the feature of the Pursuer's Patent, they infringe it, and that even if their change were an improvement, which it is not, Besides it is proved that in many cases-viz., 5 about 60 per cent.-the Defenders' core decomposes after it is put into the ball and turns into what is an incompressible liquid in every sense of the words, popular or scientific. It is in this condition when played with, and is then undoubtedly an infringement. As to damages, the Pursuer is entitled to his royalty of 1s. 6d. per dozen on all the "Ace" balls admitted 10 to have been sold. These balls were made under his Patent, and primâ facie he has lost a royalty on each of them, nor is there anything to displace that presumption.

Counsel for the Defenders contended :-The Claim is for a ball having a core of incompressible fluid; the Defenders' core is not a fluid but a mixture of the 15 fluid (water) used by the Pursuers with gelatine; the fact that it is such a mixture takes it out of the Claim which is for a fluid only; normally the mixture used by the Defenders is a jelly; if it decomposes at times to a more watery consistency this is accidental, and is not in view of the Defenders when they make the ball; the Defenders' object is to obtain a core which shall be a 20 jelly not a fluid, as they consider the fluid cored ball too lively. The cores are solid when sold by the Defenders, and are intended to remain so. Hence there has here been no infringement. The Pursuers can get no more than they claim, and they do not claim a mixture of an incompressible fluid and gelatine (Nobel's Explosives Company Ld. v. Anderson 11 R.P.C. 115, 519; 12 R.P.C. 164, 167, 25 168; Newellite Glass Tile Company Ld. v. Lawsons Non-Conducting Composition Ld. 24 R.P.C. 305; and Bailey v. Roberton L.R. 3 App. Cas. 1055). In any case it is extravagant to claim royalties on all the "Ace" balls sold. If such of these balls only as came to have fluid cores through the decomposition of the gelatine are infringements it lies with the Pursuer to show how many 30 such there were. Besides the Pursuer has to show not only that his Patent has been used but that he has suffered loss, before he can get damages. Here there is no proof that the Pursuer suffered loss by the competition of "Ace" balls, which were not regarded as liquid cored or as having the peculiar qualities of the Pursuer's ball. The competition was between the liquid cored balls at 198. 35 and ordinary balls including Defenders at 18s. not between two sorts of liquid cored. All who wished and were willing to pay for liquid cored balls bought the Pursuer's.

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The Lord Ordinary made avizandum and on the 6th of November pronounced the following judgment :

Lord SALVESEN L.O.-The Pursuer in this action is the assignee of Letters Patent granted to Frank Hedley Mingay, for an invention relating to an improvement in golf balls. The Defenders are manufacturers of golf balls; and hold a licence to manufacture golf balls under this Patent, in terms of an Agreement entered into between them and the Patentee in April 1906. The 45 Pursuer seeks interdict against the Defenders infringing the Patent; and the only defence to the action is that there has been no infringement.

The invention protected by the Patent may be shortly described as the use in a golf ball of a core, consisting of a rubber bag filled with fluid, round which core rubber tape and thread are wound in the usual way. The essence of the 50 Patent, therefore, is the substitution of a liquid core for the solid core, or core filled with compressible fluid-such as air-both of which were in common use at the date of the Patent. The Defenders maintain that they have not infringed the Patent, because the core of the "Ace" ball-which they manufacture, and which is the subject of complaint-is composed of a solid of the consistency of 55 jelly; and they maintain that the Patent is limited to a core consisting of an incompressible fluid, and does not cover a core filled with a substance which is not fluid in the sense that it does not flow at ordinary temperatures.

Roger v. J. P. Cochrane & Co.

As originally manufactured the Mingay ball had a core consisting of a single rubber bag into which water, under some pressure, had been forced. Under this pressure the rubber bag assumed a spherical shape; the bag was then closed, and the projecting orifice through which the fluid had been forced was cut off. Round this bag was wound rubber tape and thread until the core reached the 5 desired dimensions, an operation which involves considerable pressure. The Defenders say that because of the rubber being wound under tension, when this ball was played with, the bag containing the water was liable to burst; and, accordingly, they very soon commenced to use a double bag. The ball so made was at first very successful-over 14,000 dozen having been sold in the course 10 of the first year.

The Defenders further allege that, after some months' experience of the Mingay ball so manufactured, they had complaints that it was too lively in the short game; and it was suggested to them that a mixture of gelatine and water should be substituted for the water. They believed that the mixture would 15 form a jelly which would have the characteristic qualities of a solid; and they called the ball which they manufactured in this way, the "Ace" ball. This ball also proved very successful, it being admitted that 20,010 dozens were sold in the course of the period from 1st September 1906 to 30th September 1907.

35

The Defenders led evidence that their instructions to their workmen were to 20 the effect that 15 per cent. of gelatine should be mixed with 85 per cent. of water to form the jelly enclosed in the bag forming the core of the "Ace" ball. I have no reason to doubt that such instructions were given; but they cannot always have been carried out in practice, for a considerable number of the balls tested by the Pursuer's witnesses proved on analysis to have been made with a 25 jelly consisting of as much as 94 or 95 per cent. of water. The same experts also ascertained (what I believe the Defenders never contemplated) that, after the lapse of some time-probably not more than a few months-the jelly was liable to decompose and to become as fluid as water. The proportion of "Ace" balls tested, and which were found to contain absolutely fluid matter, was as 30 much as 60 per cent. of the whole. The only other points which I need refer to, as regards the manufacture of the "Ace" balls, are that the mixture of gelatine and water was filled into the rubber bag under pressure in a liquid state, at a temperature of about 120 degrees, and that a less high temperature was sufficient to liquify the contents, even after they had formed into a jelly. The question whether the "Ace" ball is within the Patent, depends on a construction of the Specification. In his first Claim the Patentee claims the core or nucleus of incompressible fluid as the substance of his invention. If the words "incompressible fluid" must be read literally there is no doubt that the Defenders would succeed, for the core which they use is not in a scientific 40 sense composed of fluid, nor is it incompressible; but I think the words occurring at the end of the Claim "substantially as herein before described " entitle the Patentee to refer to the description in the Specification, and it is plain from that description that, when he uses the words "incompressible fluid" he is speaking popularly and from a practical point of view. The specific 45 instances, which he gives of such fluid, are water " or other liquid or semi-liquid" and again "water, treacle, glycerine or the like." There being no question of the validity of the Patent, the question therefore is, does the substance which the Defenders employ come under any of these descriptions. It may be difficult to define what a "semi-liquid " is, or at what point a substance ceases to 50 be liquid and becomes solid; but, from a popular point of view, I think a jelly consisting of from 6 to 15 parts of gelatine and 94 to 85 parts of water, and which is forced out through any puncture of the bag by the pressure of the envelope in the form of a worm which crumbles on the least_pressure being applied to it, is just what popularly answers that description. It was admitted 55 by the Defenders' leading experts that, for practical purposes, this combination of gelatine and water might be treated as equally incompressible with water;

Roger v. J. P. Cochrane & Co.

and the behaviour, therefore, of the Defenders' core at the time when the rubber tape and thread are wound round it, cannot be distinguished from the behaviour of the liquid core. Nor does the evidence satisfy me that there is any substantial difference between the two balls in use; although it is possible that 5 the "Ace" ball, owing to the semi-liquid character of its core, does not exhibit the same lively qualities as the Mingay ball with the water core. Whether precisely the same result in practice might not be achieved by using some viscous liquid instead of jelly has not been tried, the Defenders apparently being more anxious to avoid the Patent than to improve on the original manu10 facture.

I accordingly reach the conclusion that the "Ace" ball constitutes an infringement of the Patent, although I fully admit that a mixture of 15 per cent. of gelatine and water, when allowed to cool, possesses some of the characteristics of a solid. Even on the opposite assumption, however, the Defenders would 15 not necessarily escape. It is only when the "Ace" ball is used within a short time of its manufacture that it has a core which can, even in a scientific sense, be described as "solid." The exact time within which the jelly will decompose into an evil smelling liquid has not been ascertained; but it is quite certain that a large proportion of the "Ace" balls, before being used, have been trans20 formed in this way. Unless, therefore, it could be held that the mere fact that the ball when manufactured and sold by the Defenders had a solid or semisolid core was sufficient to take it out of the Patent, it is difficult to see how the Defenders can entirely escape responsibility, although they may be able now to devise some method of preventing decomposition.

25

On the question of damages, I think the Pursuer is entitled to decree for 1,5007. 158., being royalty at the rate of 1s. 6d. per dozen on the "Ace" balls admittedly sold by the Defenders. If the "Ace" ball is a ball made according to Mingay's Patent, the Defenders were entitled to manufacture it on payment of royalty to that amount, and they ought not to be in a better position than if 30 they had accounted for the royalty throughout. It may be, of course, that the sales of the "Ace" ball would not have been so large but for the Defenders selling them at 18s. a dozen to the trade, instead of the 19s. that, under arrangement with the Patentee, they demanded for the liquid cored balls; but I am afraid I can take no account. of that. I shall, however, hear parties on the 35 question whether, as the Defenders are licensees, interdict can competently be granted against them.

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Counsel (ut supra) were further heard on the 8th of November, and the LORD ORDINARY thereafter issued the following interlocutor :-" Finds that "the Defenders have made and sold in the United Kingdom, between 1st 40" September, 1906, and 30th September, 1907, 20,010 dozen golf balls under the name of the "Ace" ball; finds that the said balls are manufactured in terms "of Letters Patent, No. 20,905 of 1905, belonging to the Pursuer; finds further "that the Defenders are liable to pay damages in lieu of royalty to the Pursuer "in respect of the manufacture and sale of said balls at the rate of 1s. 6d. per 45" dozen balls, amounting in all to 1,5007. 15s.; decerns against the Defenders to "make payment of that sum to the Pursuer accordingly; further, in respect "that the Defenders hold a licence for the manufacture of balls under the said "Patent, dismisses the conclusions for interdict; finds the Pursuer entitled "to expenses."

Jefferson Dodd Ld. v. Dodd's Drug Stores Ld.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE NEVILLE.

October 14th, 1907.

JEFFERSON DODD LD. AND OTHERS v. DODD'S DRUG STORES LD.

Trade Name.-Defendants successors in business of one of the Plaintiffs.- 5 Order by consent.-Motion to sequestrate for breach of Order.

The Defendants, Dodd's Drug Stores Ld., were successors in business to Richard Jefferson Dodd, and in an action brought by him and a Company, which he had formed, an Order was made by consent restraining the Defendant Company from using as part of its name or upon its 10 shops &c. the word "Jefferson," or any other name or word, not being part of its registered name, calculated to induce the belief that the Defendant Company was carrying on the business of the Plaintiff Company, or of the Plaintiff Richard Jefferson Dodd, but the injunction was not to prevent the Defendant Company from representing that it was the successor in business 15 of the Plaintiff Richard Jefferson Dodd, and also restraining the Defendant Company from using the words "Dodd's Female" in connection with pills or remedies manufactured or sold by the Defendant Company without distinguishing them from those of the Plaintiffs. The Plaintiff's moved for an Order for sequestration alleging breaches of this Order, and in particular the sale by 20 the Defendant Company of "Dodd's Female Pills," and, as to the name, complaining of the use of the name "Jefferson Dodd" on the lower fascia of a shop with the words "Successors to" on the window so as, as they alleged, to be almost unnoticeable, and of the same words on a fan-light, with a similar addition, and also of the use of " J. Dodd."

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Held, that "Dodd" was part of the registered name of the Defendant Company, and that "J." was neither a name or word, so that the use of neither of these was forbidden by the injunction, and that as regards the fanlight the assertion was a proper one, but that as regards the use of "Jefferson "Dodd" on the fascia it was calculated to induce the belief that the Defendant 30 Company was carrying on the business of the Plaintiff Company or of the

5

Jefferson Dodd Ld. v. Dodd's Drug Stores Ld.

Plaintiff Richard Jefferson Dodd, and that there had also been a breach of the Order by the use by the Defendants' agents and servants of "Dodd's Female "Pills." The Motion was ordered to stand over for a month with a view of enabling the Defendants to carry out the injunction.

4

On the 21st of March 1907 an Order was made by consent in the abovementioned action, in which Jefferson Dodd Ld., Richard Jefferson Dodd, and Edith Maud Dodd were Plaintiffs.

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The Order was, so far as material for this Report, in the following terms :— "This Court doth order that the Defendant Company, its directors, managers, 10 "servants, and agents be perpetually restrained from using as part of its name, or upon any of its shops, premises, labels, wrappers, advertisements, or other"wise, the word "Jefferson," or any other name or word, not being part of its registered name, calculated to induce the belief that the Defendant Company "is carrying on the business of the Plaintiff Company or of the Plaintiff Richard 15" Jefferson Dodd, but this injunction is not to prevent the Defendant Company "from representing that it is the successor in business of the Plaintiff Richard "Jefferson Dodd. . . And it is ordered that the Defendant Company,

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"its directors, managers, servants, and agents be perpetually restrained from "selling or advertising or offering for sale or otherwise representing or disposing 20" of any medicine or compound, not being made or compounded by the Plaintiff "Richard Jefferson Dodd, as made or compounded by him, and from using the "words Dodd's Female as the description of or in connection with any "pills or remedies manufactured by the Defendant Company or any medicines "or remedies (not being of the manufacture of the Plaintiffs or one of them) 25" sold or advertised for sale by the Defendant Company without clearly distinguishing such medicines or remedies from those of the Plaintiffs' "respectively the Plaintiffs by their Counsel undertaking not to "advertise or publish by circular or otherwise the above injunctions or either "of them or the terms of this Order."

30

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On the 27th of June 1907 the Plaintiffs gave notice of Motion for an Order that the Plaintiffs might be at liberty to sue out a writ or writs of sequestration against the Defendant Company and Henry Rous, Albert Neve Beck, George Hand, and Frederick William Hine, the directors of the Defendant Company, for contempt of Court committed by the Respondents respectively in wilfully 35 disobeying the Order of the Court of the 21st day of March 1907, and that the costs of the application might be paid by the Defendant Company and the other Respondents.

The affidavits filed on behalf of the Plaintiffs alleged various breaches of the Order, including the sale of " Dodd's Female Pills" by the Defendant Company; 40 also that the name 66 Jefferson Dodd" was on the lower fascia of the window of the Defendant Company's shop at 146 Edgware Road, and also at their shop at 35 Hampstead Road; that on the fan-light at the first-named shop in a recess to the side door were the words "Jefferson Dodd, Chemist and "Optician"; that the Defendant Company had put the words "Successors to " 45 not on the fascia, but on the window glass about a foot above the lower fascia, and that those words were small; that they had also put the words "Successors to over the fan-light, but that the words were almost unnoticeable; and that "J. Dodd" was in the mosaic in the doorway at 35 Hampstead Road.

The affidavits filed on behalf of the Defendant Company (inter alia) denied 50 disobedience of the Order, and said that if there were any it was not wilful, and denied the sale of " Dodd's Female Pills," and alleged that the words "Successors to" were plainly shown over the words " Jefferson Dodd" on the lower fascia of the shop window of 146 Edgware Road; that it was not possible to have inserted the words in the fascia; that the same words were also

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