
    Dr. Jaeger’s Sanitary Woolen System Co. v. Le Boutillier. Same v. Loeser et al.
    
    
      (Supreme Court, General Term, First Department.
    
    February 18, 1892.)
    Costs—Additional Allowance—Action for Infringement of Trade-Mark.
    Code Civil Proc, § 3253, providing that in all cases not expressly provided for an extra allowance may, in the discretion of the court, be granted, “not exceeding five per centum upon the sum recovered or claimed, or the value of the subject-matter involved, ” does not authorize an allowance in an action for infringement of a trademark, and for damages arising therefrom, where it is determined that no right to the trade-mark existed..
    Appeal from special term, New York county.
    Actions by Dr. Jaeger’s Sanitary Woolen System Company against George Le Boutillier, and by the same plaintiff against Frederick Loeser and another, to restrain infringements of a trade-mark. The plaintiff appeals from orders in both cases appointing a referee to take testimony as to the value of the trade-mark, with a view to granting an additional allowance of costs to defendants.
    Reversed.
    Argued before Van Brunt, P. J., and Patterson and O’Brien, JJ.
    
      Root & Clarke and J. Van Santvoord, (Samuel B. Clarke, of counsel,) for appellant. Goepel & Raegcner, (R. L. Maynard, of counsel,) for respondents.
   Patterson, J.

These are appeals from orders in two actions brought for infringement of an alleged trade-mark right claimed by the plaintiff. Judgment in each action was for the defendant. In the case against Le Boutillier a temporary injunction was granted. The defendant in each case moved for an extra allowance, and the court below directed a reference in each case, to take proof of the value of the plaintiff’s alleged trade-mark, with a view to granting such additional allowance; and, in connection with the order in the Le Boutillier case, the referee was authorized to ascertain the damages caused by the injunction. Ho objection is made to that part of the order last referred to, and the only question requiring consideration is as to the ordering of the reference in aid of the motions for an extra allowance, and that, of course, depends upon the power of the court to grant such an allowance in cases of this character. We are of the opinion that such power does not exist. The whole subject is regulated by statute. Section 3253 of the Code of Civil Procedure confers the only authority the court has concerning it, and it is expressly stated there that in all cases not otherwise provided for an extra allowance may in the discretion of the court be granted upon a “sum recovered or claimed, or the value of the subject-matter involved.” There was no sum claimed by the plaintiff, except as incidental damages, arising from alleged profits made, by the defendants out of the infringement of the trade-mark claimed, but the real contest was as to the trade-mark right, and, it having been determined that no such right existed, there was no question in the case at all as to damages. They could only have resulted from an accounting after a determination that the plaintiff was entitled to judgment on the real issue, and Weaver v. Ely, 83 N. Y. 89, is quite in point. That was an action for an accounting, and for the payment of any amount found due on such accounting. The complaint was dismissed on findings which showed the defendants were not liable to account. Extra allowances were awarded them, but the court of appeals held in reversing the orders, in substance, that, where undefined and unascertained interests, dependent wholly on the result of previous inquiry, are in question, and the main relief is denied, there is nothing upon which an allowance may be based. Conaughty v. Bank, 92 N. Y. 401, defines also what is meant by the word “involved,” in the section of the Code above alluded to. It means the possession, ownership, or title to the property or other valuable thing which is to be determined by the result of the action. That, in these cases, was the trade-mark, and nothing else. There are several cases on this subject more recent than those cited by counsel, and among them is Adams v. Arkenburgh, 106 N. Y. 615, 13 N. E. Rep. 594, and in that case a distinction is made between it and Weaver v. Ely, supra. The opinion in each of those cases was written by the same judge, (Danforth,) but it was held in the later case that there was a specific value to be fixed upon the result of an accounting, under the peculiar facts of the case,—it was for a copartnership accounting,—and that the matter should not have been disposed of as a question of law. Here the subject comes up distinctly as a question of law, and our decision is put upon the plain ground that in such a case as this an extra allowance cannot be granted to a defendant, on the dismissal of a complaint seeking an accounting, where the judgment of the court is final that such an accounting cannot be had, and for the reason that any further claim is merely incidental. Moore v. Appleby, 108 N. Y. 237, 15 N. E. Rep. 377. But it is further contended that there was a value to the trade-mark, and that, therefore, something existed and was in controversy coming within the requirement of the law, as above stated. What possible value a mere trade-mark right can have per se, ascertainable by a money standard, it is difficult to understand in the absence of proof. But when it is adjudged that no trade-mark right exists at all, it is more difficult to comprehend what value can be attached to that which is non-existent. Hothing was really involved but the right to the trade-mark. The case of Munro v. Smith, 6 N. Y. Supp. 426, is referred to as being an authority in favor of the granting of an allowance to the defendant. No such deduction is to be fairly drawn from that case. The learned judge who wrote the opinion there made careful -reference to Coates v. Goddard, 34 N. Y. Super. Ct. 118, in which it was held that no money value could be assigned to a trade-mark; and it is quite evident that the allowance was made in the Munro Case on' the undisputed testimony that the trade-mark was worth the sum of $50,000. The orders, so far as they provide for a reference as to an extra allowance, are reversed, with costs and disbursements; but in the Le Boutillier case so much of the order as provides for ascertaining damages on the injunction is affirmed. All concur.  