Nos. 14, 15. — Hargrave v. Le Breton; Smith v. Spooner. Notes.

The plaintiff put up for auction eight unfinished houses in X. The defendant, a surveyor of roads, appointed under 7 & 8 Vict. c. 84, had previously insisted that these houses were not built in conformity with the Act. He attended the sale and announced that he would not allow the houses to be finished until the roads were made good. Only two houses were sold. It was held that the defendant acted under a mistaken sense of his duty but not maliciously, and that no action lay. Pater v. Baker (1847), 3 C. B. 831, 16 L. J. C. P. 124. Similarly no action lies when the defendant makes a representation bona fide for the purpose of protecting the interest of his connections or relatives. Pitt v. Donovan (1813), 1 M. & S. 639, 14 R. R. 535; Gutsole v. Mathers (1836), 1 M. & W. 495, -2 Gale 64, 5 D. P. C. 69; Watson v. Reynolds (1826), Moo. & Mal. 1; Pawley v. Seratton (1886), 3 Times Law Rep. 146.

A. having bought goods from B., C. maliciously caused B. to refuse to deliver them, by asserting that he had a lien on the goods, well knowing that he had no lien. He was held liable. Green v. Button (1835), 2 Cr. M. & R. 707. So in Bailey v. Walford (1846), 9 Q. B. 196, 15 L. J. Q. B. 369, a demurrer was overruled to a declaration that the defendant, in order to defraud the plaintiff, had represented that the pattern of goods which the plaintiff intended to sell was a registered design, and that the plaintiff had in consequence incurred expense and had been prevented from selling his goods.

Declaration that the plaintiff was the proprietor and possessor of the Argyll Rooms, adapted for a dancing academy, or subscription ballroom, or a concert room, that the defendant falsely and maliciously published the following: "Argyll Rooms. Notice is hereby given. that the magistrates of the County of Middlesex having this day refused to renew a music and dancing license to the proprietor of the above rooms, all such entertainments there carried on, whether advertised under the name of an academy, subscription ball, concert or otherwise, are illegal; that the proprietor renders himself thereby indictable for keeping a disorderly house, and that every person who shall be found upon the premises is liable to be apprehended and dealt with according to law." And that the plaintiff was thereby prevented from utilizing the rooms to profit. On demurrer it was held that the declaration disclosed a good cause of action. Bignell v. Buzzard (1858), 3 H. & N. 217, 27 L. J. Ex. 355.

The widow of an intestate, to whom she acted as executor de son tort, executed a bill of sale of the goods of such intestate to A., one of his creditors, for securing the debt due. After her death, the plaintiff became the lawful administrator of the estate of the said intestate, and as such caused the goods which had been assigned by the bill of

Nos. 14, 15. — Hargrave v. Le Breton; Smith v. Spooner. -Notes.

sale to be put up for sale by auction, when the defendant, who was A.'s agent, attended and forbade the sale taking place, saying he held a bill of sale over everything in the house in favour of A. The defendant had received a letter from the auctioneers the day before the sale, telling him that the bill of sale was valueless, as the widow had no title to the goods. The plaintiff was nonsuited. It was held that the nonsuit was right, as the defendant was not liable unless he acted maliciously, and that, notwithstanding the letter from the auctioneers, there was no evidence from which a jury could have found malice. Steward v. Young (1870), L. R., 5 C. P., 122, 39 L. J. C. P. 85, 22 L. T. 168, 18 W. R. 492.

The owner of a property called by a particular name brought an action against the defendant, owner of the adjoining property, to restrain him from calling his property by the same name. The statement of claim alleged inconvenience, injury and consequent damage by way of depreciation to the plaintiff's property, but did not allege malice, or intention to cause damage, or any facts, except the mere damage, to support the general term "injury." It was held that no right of action was disclosed. Day v. Brownrigg (C. A. 1879), 10 Ch. D., 294, 48 L. J. Ch. 173.

The plaintiff, who was the registered proprietor of a certain trademark, and a dealer in a brand of champagne introduced by him and known as the Delmonico Champagne, sued the defendant for falsely and maliciously publishing certain statements imputing that he had no right to use the trade-mark, and that the champagne sold by him was not of the brand named. Before trial, the plaintiff died. His execu trix was held entitled to maintain the action if special damage were proved. Hatchard v. Mège (1887), 18 Q. B. D. 771, 56 L. J. Q. B. 397, 56 L. T. 662, 35 W. R. 576 (referred to in Notes to Hambly v. Trott, No. 20 of "Action" 2 R. C. 13).

Actions of slander of title are sometimes brought in connection with patents, copyrights, &c. In Wren v. Weild (1869), L. R., 4 Q. B. 730, 38 L. J. Q. B. 327, 10 B. & S. 51, the plaintiff and the defendant were each of them possessed of a separate patent for the construction of spooling machines. The plaintiff was negotiating for the sale of his patent to various manufacturers, some of whom were already using it under licenses from him. The defendant wrote to these manufac turers alleging that the plaintiff's patent infringed his patent and that if they used it without paying royalty to him (the defendant) he would take legal proceedings against them. The result was that the plaintiff lost the sale of his patent. He brought this action, averring the above facts and alleging malice on the defendant's part. The plaintiff tendered evidence to show that the defendant's patent was

Nos. 14, 15. Hargrave v. Le Breton; Smith v. Spooner. — Notes.

void for want of novelty. This evidence was rejected and a nonsuit entered. It was held that the nonsuit was right, for the plaintiff ought to have proved malice on the part of the defendant, and if the plaintiff failed to prove that the threat was malâ fide and without any intention to follow it up by an action against purchasers, it was immaterial to show that the defendant's patent was void, and that an action for infringement of it must have failed.

On the other hand the judgment of the Court in Wren v. Weild, supra, suggests that a patentee has no right, unless he has the bonâ fide intention of maintaining his patent by action against infringers, to threaten such action so as to damage the trade of a rival; and in two cases, Robbins v. Hinks (1872), L. R., 13 Eq. 355, 41 L. J. Ch. 358, and Axmann v. Lund (1874), L. R., 18 Eq. 330, 43 L. J. Ch. 655, Vice-Chancellor MALINS granted an injunction to restrain such threats, on the mere ground that the plaintiff declined to take proceedings to establish the validity of his patent. These cases were considered in Halsey v. Brotherhood (1880), 15 Ch. D. 514, 49 L. J. Ch. 786. There it was laid down by the MASTER OF THE ROLLS (Sir G. JESSEL), that a patentee is entitled for the protection of the primâ facie right conferred by his patent, to warn persons intending to deal with a rival manufacturer, provided the warning is given bona fide in assertion of his legal rights; and that the patentee is not bound as the condition of obtaining relief to follow up the warning notices by actual legal proceedings. The case would be different where the warning is given in bad faith, or with a knowledge of the invalidity of his patent. The judgment was affirmed in the Court of Appeal (1882), 19 Ch. D. 386, 51 L. J. Ch. 233, the Court considering that it was in accordance with the true principle of Wren v. Weild, supra.

The law on this subject has now been defined by section 32 of the Patent and Trade Marks Act, 1883, which is as follows: "Where any person claiming to be the patentee of an invention, by circulars, advertisements or otherwise threatens any other person with any legal proceedings or liability in respect of any alleged manufacture, use, sale, or purchase of the invention, any person or persons aggrieved thereby may bring an action against him, and may obtain an injunction against the continuance of such threats, and may recover such damage (if any) as may have been sustained thereby, if the alleged manufacture, use, sale, or purchase to which the threats related was not in fact an infringement of any legal rights of the person making such threats, Provided that this section shall not apply if the person making such threats with due diligence commences and prosecutes an action for infringement of his patent."

Under this section it has been held (by NORTH J.), that, if the

Nos. 14, 15. Hargrave v. Le Breton; Smith v. Spooner. — Notes.

threat of legal proceedings is actually followed by a bonû fide action for infringement, even though the action is against a licensee who could not contest the validity of the patent, the defendant cannot be sued for issuing the threats, the object of the proviso being merely to furnish a criterion for testing the bona fides of the threats. Barrett v. Day (1890), 43 Ch. D. 435, 59 L. J. Ch. 464, 62 L. T. 597, 38 W. R. 362. The action need not be commenced against the party suing in respect of the threat. It is sufficient if the patentee brings a bonû fide action with due diligence, against any person to whom a notice of threat has been issued in connection with the right of the plaintiff. Challender v. Royle (C. A. 1887), 33 Ch. D. 425, 56 L. J. Ch. 995, 57 L. T. 734, 36 W. R. 357.

In the above action of Challender v. Royle important questions were considered, as to what are the conditions of the enacting part of section 32. Although in the result a decision upon these questions was unnecessary for the purpose of the judgment, the following points are stated in the judgment of BOWEN, L. J., as coming within his view of the meaning of that part of the section: (1) The section gives a new right of action to a person aggrieved by a threat in regard to the future. (2) It must be a threat in respect of an alleged actual (not merely proposed) manufacture. (3) That the plaintiff must establish his legal rights including if the defendant raises the question-the validity of his patent. And (4) that, if the plaintiff applies for an interlocutory injunction, he must make out a prima facie case the validity of the patent (if the question is raised) being essential to the right. An action commenced against a third party to whom notice of threat has not been issued in respect of the plaintiff's alleged infringement, has been held (by KEKEWICH, J.,) not sufficient. Combined Weighing Machine Company v. Automatic Weighing Machine Company (1889), 42 Ch. D. 665, 58 L. J. Ch. 709, 61 L. T. 474, 38 W. R. 233.

In Colley v. Hart (1890), 44 Ch. D. 179, 59 L. J. Ch. 308, 62 L. T. 424, 38 W. R. 501, it was held by NORTH, J., that if an action for infringement has been bonâ fide commenced, although the plaintiff in that action has discontinued it upon discovering that the manufacture was not an infringement, the fact that he had "with due diligence commenced and prosecuted" his action down to the time of discontinuance, is sufficient, under s. 32, to avoid the cause of action for threatening legal proceedings.

AMERICAN NOTES.

Both principal cases are cited by Townshend (Slander and Libel, p. 208); and by Newell (Defamation, pp. 204, 205, 207); and their doctrine is supported in Kendall v. Stone, 5 New York, 14; citing Smith v. Spooner, Dodge

v. Colby, 108 New York, 445; Walkley v. Bostwick, 49 Michigan, 374; Hill v. Ward, 13 Alabama, 310; Stark v. Chetwood, 5 Kansas, 141; McDaniel v. Baca, 2 California, 326; 56 Am. Dec. 339; Ross v. Pynes, Wythe (Virginia), 71; Dodge v. Colby, 108 New York, 445; Andrew v. Deshler, 43 New Jersey Law, 16; 45 ibid., 168; Gent v. Lynch, 23 Maryland, 58; 87 Am. Dec. 558; Flint v. Hutchinson S. B. Co., 110 Missouri, 492; 33 Am. St. Rep. 476; Swan v. Tappan, 5 Cushing (Mass.), 104; Burkett v. Griffith, 90 California, 532; 13 Lawyers' Rep. Annotated, 707.

The defendant is not responsible for words or acts in pursuance of a claim bonâ fide, of title. Bailey v. Dean, 5 Barbour (New York), 297; Meyrose v. Adams, 12 Missouri Appeals, 329; Andrew v. Deshler, supra: Hill v. Ward, supra; Van Tuyl v. Riner, 3 Bradwell (Illinois Appellate Ct.), 556; Harriss v. Sneeden, 101 North Carolina, 273.

Nearly all these cases show that it is essential also to prove special damages.

"But whenever a man unnecessarily intermeddles with the affairs of others with which he is wholly unconcerned, such officious interference will be deemed malicious, and he will be liable if damages follow. It is enough for the plaintiff to establish the speaking or writing of the words, their falsity, and that there was no ground for the defendant's claim." Townshend on Slander and Libel, p. 203.

In Bailey v. Dean, 5 Barbour (New York Supreme Ct.), 297, it was held that if the words in question are uttered in pursuance of a claim of title, and "if there be some ground for the claim, the cases all agree that the action cannot be sustained." Citing Smith v. Spooner. Although the title asserted by the defendant was invalid, yet if asserted in good faith, without malice, he is not subject to action for slander. "Malice is a necessary ingredient' to recovery. Hill v. Ward, supra. "An essential element of this cause of action is the false and malicious statement or representation as to the title, and special damage to the complaining party occasioned thereby." Harriss v. Sneeden, supra.

UNTIL the change introduced by the statute 6 & 7 Vict. c. 96, evidence was inadmissible to show that a libel, the subject-matter of a criminal information, was true.