(concurring.) This action was brought to recover damages as for an alleged libel by the defendant of and concerning the plaintiff in his business of manufacturer of and dealer in an insecticide. The appellant and its predecessors in business had prepared and sold an insecticide put up in boxes bearing a label upon which was duly displayed as its trade-mark the arbitrary word “ Roachsault,” which name was registered in the patent office at Washington as a trade-mark. The respondent put up and sold a preparation of his own in boxes which bore, with other matter, the words, “ Stern’s Inseetago.” It does not appear that this arbitrary word was ever registered. Subsequently, Stern caused his label to be altered by placing thereon in prominent type the words “ Warranted Chemical' Roach Salt,” the last nine letters being printed in capitals, but not so as to indicate very plainly whether as one word or two. After this change of label, the defendant in writing notified the plaintiff that it had been informed that he was “ using the word ‘ Roachsault ’ -x- * * in connection with an insecticide,” stated that such use was wrongful, because in violation of the exclusive rights secured by Nnited States trade-mark for the word “ Roachsault,” and requested him to immediately discontinue the use of the word “ Roachsault.” To this the plaintiff replied, “ I believe I have a perfect right to call my inseetago a Roachsalt and I shall continue to do so unless restrained by the courts.” Then the defendant company wrote to its customers that it had recently come to its knowledge that its business word and trade-mark “Roachsault ” was being unlawfully placed upon the labels of an insecticide with which it had no connection, adding: “ Confident that all honest and fair-minded dealers will sustain us in our position against such robbery of our property (our trade-mark word), we, nevertheless, desire to give everybody notice that we shall hold responsible, both civilly and criminally, all parties who deal in or keep any insecticide which is put up or sold under any name or label which includes our word ‘Roachsault ’ or any imitation of that word. We call attention to the following extract from the Penal Code of the State of New York,” which extracts were sections 364-368 and section 15 of the Penal Code. It appeared upon the trial that no chemical was known as Roachsault or Roach salt. The jury returned a verdict for the plaintiff. As intimated above, it was alleged and proven that the word “ Roach*613sauli ” was first adopted and used by another corporation to whose business of making and selling insecticides the defendant succeeded, and that, by assignment, it became the sole owner thereof, and that the same was registered in the Hnited States Patent Office. There was ample proof of a valid trade-mark in the word, and there being no attempt at contradiction of the fact, of which something had been made upon the trial, the defendant was entitled to a charge to that effect upon due application, but the court, upon request in writing to charge, “ Eirst. Defendant had a valid trade-mark in the word ‘ Roachsault,’ ” replied: “ The first request I declined and leave the question to the jury,” to which the defendant excepted. Eor aught that appears, the jury may have reached their conclusion in favor of the plaintiff, premising such conclusion upon the fact that defendant was not entitled to any trade-mark or any protection of it. This is the more probable in view of the fact that the learned justice had already said to the jury: “ If this was a trade-mark, then, of course, that ends this action, and your verdict must be for the defendant.” Hnder this charge, and the leaving of the proven fact in abeyance, it would seem to follow that the jury must have found that the-word “ Roachsault ” was not a trade-mark. Again, the court said: “ If this was a trade-mark, and this letter was issued in regard to an infringement of it, it would not be a libel; it would' be justified, and the defendant would be entitled to a verdict.” This seems to say, in effect, that the alleged defamatory matter was privileged, if the jury should find as a fact that it had not been contradicted by the plaintiff. But when the court was requested to charge that the letter and the quotations from the Penal Code sent by the defendant to its customers were privileged, the court refused, against the exception of the defendant. This was also error. The question of privilege was a question of law. Klinck v. Colby, 46 N. Y. 427; Hamilton v. Eno, 81 id. 116, 122; Byam v. Collins, 111 id. 143, 150. Furthermore, the court, on being requested to charge that unless the defendant’s acts were malicious, the plaintiff could not recover, also declined, against the exception of the defendant. This, too, was error. Proof of the validity of the trade-mark remaining uncontradicted, the publication was privileged, because both the one making and the one receiving the communication were interested therein, and the court should have so charged. The presumption of malice—■ *614“ malice in law ”— disappears on proof that the occasion was privileged, and the plaintiff, to defeat this defense, must prove actual malice — “ malice in fact.” The court also refused, against exception, to admit evidence bearing upon actual malice, but this need not now be commented upon, because the court improperly refused to charge that actual malice was part, and a very important part, of the plaintiff’s case. The judgment should be reversed.
Judgment reversed, and new trial ordered, with costs to appellant to abide event.