
    BURNETT a. PHALON.
    
      New York Superior Court;
    
    
      General Term, March, 1861.
    Trial.—Reception of'Evidence.—Measure of Damages for Infringement of Trade-mark.
    On the first trial, plaintiff being sworn as a witness in his own behalf, refused, on cross-examination, to answer a certain question, for which refusal the report of the referee before whom the case was tried was set aside by the court, and a new trial ordered. On the second trial, the plaintiff offered proof upon condition that he should not be required to answer such question, which offer the referee rejected. Held, that the rejection was not ground of exception. It could not be assumed that the plaintiff would have been asked the question, or, if asked the question, that he would have refused to answer.
    In an action for infringement of a trade-mark, the plaintiff is not entitled to recover, as a part of the damages caused by the infringement, the costs of obtaining an injunction in the cause.
    Appeal from an order confirming the report of a referee.
    This action was brought to restrain the defendant from using the word Cocoine as the name of a compound sold by him, on the ground that it was an infringement of the plaintiffs’ alleged right to the exclusive use of the word Oocoaine for such compound.
    The plaintiffs obtained an injunction, and, after judgment as to their title, an order of reference to ascertain their damages. Upon the first trial of the claim for damages, one of the plaintiffs was sworn as to the loss of profits, but, upon cross-examination, he refused to disclose the ingredients of Oocoaine. Upon exceptions to the referee’s report, the court sent the case back to the referee, and decided that if the plaintiffs claimed damages by reason of a loss of profits, they must state the ingredients of their compound, even though it was a secret of great value, as claimed by them. (See the case reported, 11 Ante, 157.) On the next hearing before the referee, the same plaintiff was proposed to be offered as a witness to prove loss of profits by reason of defendant’s use of the word Cocoine, but coupled the offer with the condition that he would not disclose the ingredients of Cocoaine. The referee rejected the offer, and, upon all the evidence, allowed the plaintiffs six cents damages. To this decision the plaintiffs excepted, and Justice Hoffman, at special term, sustained the report. The plaintiffs then appealed to the general term.
    
      John Sherwood, for the appellants.
    
      E. W. Dodge, for the respondent.
   By the Court.—Moncrief, J.

—But two of the exceptions taken upon the reference and to the report of the referee, were argued by the counsel for the appellants, and the others are plainly untenable, and were properly overruled.

' The first of these two, marked “ twelfth exception,” in my opinion, should not be sustained. The facts will not warrant an exception. This court has held that one of the plaintiffs offering himself as a witness, and testifying on behalf of the plaintiffs, and having been asked and answered on his direct examination the question, “ What profits have been realized by your firm on each dozen of the article sold ?” was bound, upon the cross-examination, to have answered the question, “In making up your estimates of profits as you have given, what materials do you calculate the cost upon?” The counsel for the plaintiffs has not seen fit to ask the question formerly put, and the counsel for the defendant, therefore, has had no opportunity to invoke the previous ruling of this court by repeating the question then refused to be answered. We cannot assume that the question would again be put to the witness, or that the circumstances attendant thereat would produce the former result. It cannot be assumed that the witness, if asked, would not have answered the question. If the plaintiffs’ counsel desired to test the soundness of the rule requiring an answer, the plaintiff should have presented himself in a position similar to that he occupied upon his previous examination, and awaited such order or direction as the referee or the court might make in the premises.

The other and only remaining exception arises upon the refusal of the referee to allow the question, “ What expenses have you necessarily incurred for counsel-fees in obtaining the injunction?” It is difficult to see upon what principle the expenses attending the obtaining of an injunction could be embraced within the range of damages for the infringement of the rights of plaintiffs. The injunction must have been sought for and granted in furtherance and pursuit of protection of the rights of the plaintiffs, and to prevent the continuance of the acts of the defendant. Under the system existing previous to the Code, it was usual to require the plaintiff to test his legal title to the right claimed by an action at law, before an injunction would be granted. The action for an injury similar to that complained of by these plaintiffs, would have been trespass on the case, and claiming to recover damages for the loss or prejudice sustained by the defendant’s unlawful or fraudulent act. The plaintiffs, upon proof of their cause of action, were entitled to recover nominal damages, although they did not show that they had been deprived of any particular amount off profits by means of the defendant’s fraud. The plaintiffs could also apply to a court of equity to restrain the defendant from continuing the fraud; and the practice generally followed was to let the motion stand over until the legal title was determined, and to direct the defendant, in the mean time, to keep an account of the sales, transactions, &c., made by him. (3 Vesey, 140; Corwin a. Daly, MSS., 1860.) It is said in 3 M. and Cr., 428, that, “in consequence of the difficulty of making out a decree of taking an account of profits, such an account is rarely taken.” The application for an injunction is a motion. (Code, § 401; 5 Abbott' Pr., 252.) Costs of a motion are in the discretion of the court. (Code, § 315.) Costs of the application for an injunction were allowed in Knott a. Morgan (2 Keen, 213). If no costs are allowed in the order, none can be given. (3 Code R., 27; 4 How. Pr., 164.)

It appearing that none of the exceptions can be sustained, they were properly overruled, and the report confirmed.

The order at special term was correct, and must be affirmed, with costs. 
      
       Present, Hoffman, Woodruff, Moncrief, Robertson, and White, JJ.
     