(dissenting). The bill in this case was filed expressly upon the act of February 4, 1887. That act does not apply to all infringements of design patents, but only to such infringements as are willful and deliberate. Such infringements are punished by giving the patentee $250, even if no profits have been made by the defendant on the article manufactured or sold to which the patented design was applied, together with all profits, if any have been made, on the article in excess of that sum. These provisions are penalties, and have been so regarded in Dunlap v. Schofield, 152 U. S. 244, 14 Sup. Ct. 576, 38 L. Ed. 426; Monroe v. Anderson, 58 Fed. 398, 7 C. C. A. 272; Lowell v. Hogg (C. C.) 70 Fed. 787; Fuller v. Field, 82 Fed. 813, 27 C. C. A. 165; Gimbel v. Hogg, 97 Fed. 791, 38 C. C. A. 419.
The first section of the act is as follows:
“See. 1. Unauthorised Use of Patented Design — Penalty and Liability — Suits. That hereafter, during the term of letters patent for a design, it shall be unlawful for any person other than the owner of said letters patent, without the license of such owner, to apply the design secured by such letters patent, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or to sell or expose for sale any article of manufacture to which *84such design or colorable imitation shall, without the license of the owner, have been applied, knowing that the same has been so applied. Any person violating the provisions or either of them, of this section, shall be liable in the amount of two* hundred and fifty dollars; and in case the total profit made by him from the manufacture or sale, as aforesaid, of the article or articles to which the design, or colorable imitation thereof, has been applied, exceeds the sum of two hundred and fifty dollars, he shall be further liable for the excess of such profit over and above the sum of two hundred and fifty dollars. And the full amount of such liability may be recovered by the owner of the letters patent, to his own use, in any Circuit Court of the United States having jurisdiction of the parties, either by action at law or upon a bill in equity for an injunction to restrain such infringement.”
The second section provides that nothing in the act contained shall limit any remedy at law or in equity that the owner of a design patent might have, had it not been passed, except that he shall not twice recover the defendant’s profits. Accordingly a patentee whose design patent has been willfully infringed may either pursue remedies existing before and outside of the act of 1887 or he may sue under that act. If he takes the latter course, he is bound by the act. Its purpose was to relieve a design patentee, in fhe case of a deliberate and knowing infringement, from any obligation to prove what part of the wrongdoer’s profits were due to the infringement. If there were no profits on the article manufactured and sold, or if they were less than- $250, the patentee could recover that sum. If they were more than that sum, then all in excess of it. This court, speaking through Judge Shipman, in Untermeyer v. Freund, 58 Fed. at page 211, 7 C. C. A. at page 189, said of the case of Carpet Co. v. Dobson (C. C.) 10 Fed. 385:
“Upon appeal, the Supreme Court disagreed with the conclusión of the Circuit Court, and held that the complainant must be required to establish the actual damages or profits by trustworthy legal proof; and, as there was no evidence in the case of the value which the patented designs had contributed to the infringing carpets, the decree must be reversed, and nominal damages only should be awarded. Dobson v. Carpet Co., 114 U. S. 439 [5 Sup. Ct. 945, 29 Xj. Ed. 177]. The statute of 1887 was passed in consequence of this decision. The manifest purpose of Congress was to enlarge the remedy against infringers of design patents, and to declare that the measure of profits recoverable on account of the infringement should be considered to be the total net profits upon the whole article. A construction, which should limit a, recovery above $250 to the amount which the complainant could clearly establish to be the value which the design had contributed to the infringing carpets would be at variance, not only with the apparent legislative intent, but with the language of the statute. The rule which Congress declared for the computation of profits was the total profit from the manufacture or sale of the article to which the design was applied, as distinguished from the pre-existing rule of the profit which could be proved to be attributable to the design.”
A great deal that is said in the opinion of the court would be perfectly applicable if the suit in this case were not under the act of 1887, which made an entirely new rule to cover cases of willful infringement of design patents. No light is afforded by decisions in cases of infringements of other patents, especially upon the question of damages as distinguished from profits.
If the article sold to which the patented design was applied in this *85case had been the piano, then the complainant patentee would have been entitled to all the defendant’s profits on the piano over $250, as Judge Hazel originally held. As, however, this court on appeal has held that the article sold was not the piano, but the piano case, the question is: What profits did the defendant make on the sale of the case? It is conceded, and indeed is obvious, that it is impossible to prove any such profit separately. The design contributes only to the selling of the piano; it does not affect either its tone, its durability, its economy, or its use. Therefore I think all the complainant can recover in this case is $250. The method adopted by the court below on the accounting and approved by this court is purely arbitrary. To say that the design contributes to the profits in the proportion that the cost of manufacturing the case bears to the cost of manufacturing the whole piano is a pure guess. It seems to me that the logical result of the opinion of the court should be that the complainant recover all the defendant’s profits on the piano. We should not be dismayed by the consequences of a statute whose construction is plain.