
    Seed Filter & Mfg. Co., Inc., Respondent, v. James F. Stocking and Union Filter and Novelty Co., Inc., Appellants.
    First Department,
    May 5, 1916.
    Injunction — restraining sale of manufactured articles — sale justified where letters patent have been granted to seller — effect of issuance of letters patent.
    Defendants who have been enjoined from selling certain filters similar to those manufactured by the plaintiff should not be adjudged guilty of contempt in making sales, when as a matter of fact letters patent have been granted on the filters manufactured and sold by the defendants after a proceeding in the patent office wherein the defendants’ application was put, in interference with prior patents issued to the plaintiff, and the examiner held that the defendants’ filter was of a substantially different design.
    The granting of letters patent to the defendant is prima facie evidence that he is the first inventor of the design of the filter sold by him and that his design differs from that of the plaintiff’s filter.
    Appeal by the defendants, James F. Stocking and another, from an order of the Supreme Court, made at the New York Special Term and entered in the office of the clerk of the county of New York on the 10th day of January, 1916, adjudging the defendants in contempt of court.
    
      Benjamin Davidson, for the appellants.
    
      Joseph H. Kohan, for the respondent.
   Davis, J.:

The defendants were adjudged in contempt of a certain injunction order and ordered to pay a fine of $250 and, in default of payment, to be imprisoned in the county jail for six months. From this order the defendants have appealed.

The action is brought to enjoin the defendants from using the trade name of J. H. Seed Filter and Manufacturing Company, and Seed Filter Company, and also to enjoin the defendants for a period of ten years from February 27, 1913, from selling to jobbers and dealers certain articles referred to in a certain inventory annexed to the complaint, in violation of an agreement entered into between the plaintiff and the defendant Stocking. The agreement referred to is annexed to the complaint, and, in the 4th paragraph thereof, provides, among other things, that the defendant Stocking will not “engage in or sell, either directly or indirectly, to jobbers or dealers on any line of trade, any of the goods or merchandise so shown on said inventory of February 1st, 1913, for a period of ten (10) years.” And the plaintiff agrees on its part not to engage in “agent’s trade” during a like period so far as the articles set forth in the inventory are concerned.

On the 29th of March, 1915, the court made a temporary restraining order restraining the defendants during the pend-ency of the action from selling to jobbers or dealers any of the goods mentioned in the inventory of February 1,1913. Among the articles enumerated in this inventory is a filter known as a “No. 6 Filter,” and it was because of the sale of one'-half gross of filters alleged to be identical with No. 6 filters on December 6, 1915, in violation of the order of March 29, 1915, that the defendants were adjudged in contempt. It is conceded, however, by the plaintiff that the defendants’ filter differs from the plaintiff’s, in that the former is made of corrugated glass — but it is claimed that the only purpose of the corrugated glass is to deceive the public and evade the provisions of the injunction order granted herein. The “No. 6 Filter” and the defendants’ filter are both patented articles, the plaintiff’s patent having been issued June 17, 1902, and the defendants’ October 12, 1915. Before the defendant’s patent was issued his application was examined with reference to the then existing patent of the plaintiff, with the result that the examiner of patents found that the defendant’s filter was different in appearance and design from that of the plaintiff, and accordingly a patent was issued to the defendant for a “new and ornamental design for a filter,” with the exclusive right to make, use and vend the filter. And this is the filter, the selling of which by the defendants has resulted in their being adjudged in contempt of court.

The granting of the letters patent to the defendant is prima facie evidence that the defendant is the first inventor of the design for the filter sold by him, and that his design is different from that of the No. 6 filter of the plaintiff. (Cantrell v. Wallick, 117 U. S. 689; Smith v. Goodyear Dental Vulcanite Co., 93 id. 486; Gordon v. Turco Halvah Co., U. S. Dist. Ct., Southern Dist. of N. Y., N. Y. L. J., Dec. 11, 1915.)

It is asserted by the defendant, and not denied in this record, that the many faucet filters now on the market differ from one another mainly in .appearance and design, their mechanical and functional features being substantially the same. A comparison of the two filters in the case at bar shows substantially the same mechanical and functional features in each, but a substantially different design. For the reasons above stated, we are of opinion that there is no evidence that the defendants sold No. 6 filters in violation of the terms of the injunction.

Moreover, the records show that the defendant acted in good faith with reference to this injunction. It is charged that he sold the No. 6 filter in December, 1915. In the preceding January he consulted an attorney, who was also a mechanical engineer, about his new filter. He laid before him the No. 6 filter and the agreement forbidding him to sell the No. 6 filters, and he informed him of this litigation now in progress. The attorney made an investigation in the United States Patent Office, and on March 2, 1915, filed an application in that office for the patent, which was issued thereafter to defendant on October 12, 1915, after the decision in a proceeding in which defendant’s application was brought into interference with plaintiff’s patent. And as a result of all this, he and his attorney came to the conclusion, properly, we think, that the defendant might sell his own patented article without violating the agreement between plaintiff and defendant, and without violating the injunction of the court.

The order appealed from is reversed, with ten dollars costs and disbursements, and the motion denied, with ten dollars costs.

Clarke, P. J., Laughlin, Dowling and Page, JJ., concurred.

Order reversed, with ten dollars costs and disbursements, and motion denied, with ten dollars costs.  