in several newspapers warning against the use of certain patents and that suits were already pending. In addition, the notice contained statements that in fact were false. The plaintiff was non-suited on the ground that there was no evidence of malice or want of probable cause sufficient to maintain the action. The Court of Errors and Appeals of New Jersey in reversing stated that all cases agree that there must be evidence of malice, express or implied. The real point on malice was held to be whether the defendant made the statement bona fide and under an honest impression of its truth or whether he made it maliciously with the purpose of slandering plaintiff's title. A want of good faith in New Jersey is essential.
The rule as to notices generally, as stated by the Circuit Court, is that 'A notice warning the public or specific dealers or users of a suit for patent infringement is not actionable unless it appears that the notices were not given in good faith, or that they were entirely without foundation in the scope of the defendant's patent.'
Malice in New Jersey has been recently described as 'The intentional doing of a wrongful act without justification or excuse * * * . A 'wrongful act' * * * is any act which, in the ordinary course, will infringe upon the rights of another to his damage, except it be done in the exercise of an equal or superior right.' Louis Kamm, Inc., v. Flink, 113 N.J.L. 582, 175 A. 62, 66; Stein v. Schmitz, 21 N.J.Misc. 218, 32 A.2d 844.
The giving of notices of infringement is provided for in the statutes as a prerequisite to recovery of damages for infringement. R.S. 4900, 35 U.S.C.A. 49. Bates was fully within its rights in its reliance upon the validity of the Peter and Drucker patents and in taking steps to advise the public of its rights. The sending of notices of infringement to a manufacturer's customers in bad faith and without intention of bringing suit, but solely to injure the manufacturer's business, is an unfair competitive practice. The evidence here falls short of establishing such bad faith or intent to harass plaintiff's customers.
No averment has been made and no evidence found indicating that the statements contained in the notices were false in any respect. The contents of the notices are not vicious or virulent in form or design. Nor was there a long passage of time between the sending of the notices and an action instituted, albeit initially by Zephyr.
The notices were sent out in great volume, amounting in fact, to a circularization of the trade. Such fact might be indicative, and has been so held, of an intent to injure the manufacturer's business. Where, as here, however, the subject matter of the alleged infringement is produced in great volume and will normally be sold by the trade generally, and will not be limited to specified dealers to the exclusion of the remainder, such circularization, without more, will fall short of establishing the charge of bad faith.
The reasonable conclusion is that the defendant believed its patents valid and infringed and gave notice accordingly. In such case, the charge of bad faith and unfair competition cannot be sustained.
The plaintiff finally contends that the defendant Bates Company circulated printed copies of the District Court opinion in bad faith and with the intent solely to injure plaintiff's business.
It appears that during a stationers convention, at which time an appeal was pending from the District Court judgment, a Bates representative, upon a request for information regarding this infringement action, was instructed to hand out a copy of the District Court opinion. He was specifically instructed to indulge in no discussion of the matter. No copies were to be given except on request for information, and then only during the convention. Copies of the opinion were never mailed or circulated throughout the trade. It is noted that at the time the copies were given no mention was made that an appeal had been taken. It might well have been a fairer course to pursue to have further advised that an appeal had been taken. But this fact, in the light of all the circumstances, is not sufficient to spell out bad faith.
Accordingly, it is my conclusion that the plaintiff has failed to establish the requisite bad faith and malice to sustain their charges of unfair competition.
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