
    MUNRO v. SMITH.
    
      N. Y. Supreme Court, First Department, General Term ;
    
      July, 1889.
    1. Judgment, interlocutory, and findings.] It is proper that an interlocutory judgment should determine the value of the subject matter involved in the action, where it may be made the basis of an application for an allowance, even though its value be not otherwise material to the judgment.
    
    2. Costs,—extra allowance.] A valuable trade mark may, for the purposes of computing the allowance additional to costs, in an action, for its infringement, be regarded like an easement; and the allowance is to be computed not on the mere amount of damages recovered, but on the value of the trade mark.
    3. The same; evidence of value.] The plaintiff’s affidavit, which wasuncontradicted, stated that he had spent $50,000 in advertising the articles on which he used the trade mark, and thought that the right to its exclusive use was of that value to him. Held, sufficient evidence of value.
    Appeal from an order.
    The facts appear sufficiently in the opinion.
    
      Roger Foster, for the appellant.
    
      Archibald L. Sessions, for the respondents.
    
      
       See 2 A65. New Pr. & F. 953, clause 8.
    
   Brady, J.

This was an action brought to enjoin the defendants from using upon the covers of a publication called “ The Secret Service Series,” a picture of Old Sleuth, also of the title of Old Sleuth,” the detective, and of the pseudonym, “ Old Sleuth,” as referring to Harlan P. Halsey, the author of' certain stories published by both -plaintiff and defendants. The trial resulted in an interlocutory decree denying the plaintiff’s claim to the exclusive right, of the pseudonym, “ Old Sleuth,” and sustaining his claim to the picture itself, and ordering a reference to ascertain the amount of the defendants’ profits.

Upon the coming in of the referee’s report an application was made for an extra allowance, which was granted, but confined to the amount of the damages ascertained and declared by the referee, and upon the ground that the court had no power to grant an allowance- on any other sum. The question of power, therefore, is presented for consideration.

The Code, by section 3253, provides for an allowance, by its second subdivision, upon the sum recovered or claimed or the value of the subject-matter involved. It is necessary, therefore, that there should be some evidence of value.

In some of the reported cases the interlocutory decree has provided for the ascertainment of the value of the subject-matter, and doubtless with a view of determining to what extent an extra allowance should be granted ; and if the decree in this case had contained such a provision, it is not at all unlikely that an appeal would not have become necessary. Assuming, therefore, that the subdivision referred to has any application to this case, the next question which presents itself, and the only question, is this: Is there any evidence of value ?

Upon that subject the plaintiff, as appears from the record, testified that over fifty thousand dollars had been expended by him in advertising the stories containing the picture which the defendants had improperly employed in their enterprises; and he stated that he thought the right to the exclusive use of that picture as a trade mark, and which he had secured by the interlocutory decree, was of the value to him of at least $50,000 dollars ; and he submitted that an allowance should be based upon that amount. This statement of value was uncontradicted.

It is true, as suggested by Judge Jones in an able opinion delivered in Coates v. Goddard (34 Super. Ct. [J. & S.] 118), that.no money value could be assigned to the trade mark which was the subject of the controversy in that case, as distinct from the article of which it was the trade mark. It appeared, however, in that case that the plaintiff had not recovered a money judgment, but one directing an injunction perpetual.

There is in this case, as already suggested, a statement of value of one of the things which formed the basis of the action, and which, in its use by the plaintiff in his business, was very productive. It is not understood why this is not analogous to an easement or to anything else the enjoyment of which is vested or the profits of which are secured by its use. It was held, for example, in Warren v. Buckley (2 Abb. N. C. 323), that in an action to recover damages for a trespass, where the title to real property is the question involved in issue, an extra allowance should be computed upon the value of the property, instead of the amount of the damages recovered. And in Lattimer v. Livermore (72 N. Y. 174), in an action to restrain an infringement of easement, the value of the easement was declared to be the basis on which an allowance was to be computed.

These seem to be analogous cases to the one in hand. The subject-matter of the action upon which the plaintiff succeeded, had, it must be said, a conceded value, such as is stated by him in his evidence on this subject and which is not disputed, and his opinion of value seems to rest upon facts which are sufficiently stated, perhaps, to justify the conclusion at which .he arrived upon the subject.

It is true, as suggested by Judge Jones in the case referred to herein, that a trade-mark has no value separate and distinct from the article to which it is applied—a proposition which necessarily involves the converse, namely : that when applied it may have a value varying in amount according to circumstances. Here it is positively asserted under oath that its value as used with the article to which it is to be attached or applied, or with which it is to be connected, is $50,000 dollars.

It becomes necessary, therefore, to remit this case to the learned justice by whom it was heard, for the further consideration of the application for an allowance.

Daniels, J., concurred, and VanBeunt, P. J., concurred in the result.

Ordered accordingly.  