CHASE and others v. TUTTLE and others.1
(Circuit Oourt, N. D. N/!/UJ York. April 5, 1886.)
PATENTS FOR INVENTIONS -INJUNCTION MENT. CIRCULARS CHARGING INFRmGBI
An injunction to restrain defendants' use of circulars charging infringe ment of their patent by complainant, and threatening the trade with infringement suits, refused, where the question of infringement had never been decided, and where it was not shown that the statements of the defendants were false or fraudulent.
The court had grave doubts whether it had Jurisdiction for the purpose of granting an injunction to restrain the use of CIrculars charging infringement of patents. Although an opinion stated in a circular may be erroneous, 'an injunction will not be issued to restrain the use of such a circular, where it is not shown that the statements contained in it are false or fraudulent.
4. SAME-SUGGESTION AS TO CIRCULARS.
The court suggested that it would perhaps save misunderstanding if the defendants in the future should attach to their circulars a cut of the harrow covered by their patent, in order that persons charged with infringement might act lDtelligently.
The defendants in this case had brought suit against the complainants under the Garver patent for spring-tooth harrows, and alleged that the complainants' "Clipper" spring harrow was an infringement. After that suit was commenced defendants issued circulars notifying the trade that such suit had been brought, and warning all dealers that if the case was decided in their favor they would hold all in· fringers liable to the full extent of the law. Complainants thereupon filed this bill, and asked an injunction to prevent the continued issue of circulars by defendants, which circulars complainants alleged to be false, as they contended that their "Clipper" harrow did not infringe the Garver patent. One defense made against the motion for an injunction was that a court of equity had no power to issue an injunction to prevent the continued use of circulars alleged to be So slander upon complainants' title to make their harrow. John R. Bennett, Fred. G. Fincke, and N. H. Stewart, for the motion. Charles H. Duell, opposed. COXE, J. The question whether or not the harrow manufactured by the oomplainants, and known as the "Clipper" spring harrow, is an infringement of the Garver patent, has never been judicially decided. The complainants contend that it does not infringe; the defendants are equally persistent in their assertion that it does. Neither have been slow in expressing their opinions, or parsimonious in the use of notices aud circulars setting forth in plain and vigorous
Reported by Charles C, Linthicum, Esq., of the Chicago bar.
NEW YORK BELTIKG & PACKING CO. 11. MAGOWAN.
language their respective views upon the proposition at issue. Upon these papers, however, it cannot be successfully maintained that the defendants have made false or fraudulent statements regarding the complainants or their property. They have freely expressed their opinion, and this opinion may be an erroneous one; but nothing beyond this is shown. Assuming, then, that the court has jurisdiction, -and the examination I have been able to give to the subject leaves a very grave doubt in my mind upon this question,-the motion must be denied for the reason that the defendants have done nothing illegal or fraudulent in advertising their harrows. It would, perhaps, save misunderstanding if the defendants, in the future, should attach to their circulars a cut of the harrrow covered by the Garver patent in order that persons charged with infringement may act intelligently. The p.ourt can advise this course. but cannot compel it. The motion is denied.
NEW YORK BELTING
(Oircuit Oowrl, D. New Jer8ey. March 5, 1886.)
PATENTS FOR INVENTIONS-INJUNCTION AFTER PATENT EXPIRES.
Courts are authorized to grant an injunction, after the expiration of a pat· ent, to restrain the sale of infringing articles made during its term, and often exercise such authority when the circumstances warrant it.
SAME-WHAT CIRCUMS'l'ANCES JUSTIFY INJUNCTION.
Where the defendants were advised of the claim that their manufacture an infringement of complainant's patent, and a suit was pending for such infringement, held, that there was a proper case or interference, by injunction, after the patent expired, to restrain the selling of infringing articles made during its term.
On Settlement of Decree. T'urner, Lee et McClure, for complainant. F. C. LowtllOrp, Jr., for defendants.
NIXON, J. The question raised in this case is whether, after the expiration of the patent sued on, the court ought to include in the decree an injunction against the defendants' using or selling the infringing articles manufactured by them during the life of the patent. The bill of complaint prayed for an injunction, and for an account of profits and damages. On filing the bill, an application was made for a preliminary injunction, affidavits were put in by the defendants, which suggested a doubt concerning the validity of the complainant's invention, and, as the defen<iants were pecuniarily responsible, the
by Charles C. Lintbicum, Esq., oftbe Chicago bar.
court denied the injunction, but required a bond and monthly statement, under oath, of the sales. Before a final decision of the suit was reached on the merits, the patent expired. The defendants now object to any injunction restraining them from selling any of the vulcanized rubber packing, infringing the patent of the complainant, which was manufactured by them previous to January 26, 1886, the date of the expiration of the patent. The counsel for the complainant is not quite correct in assuming that it is the ordinary rule to grant the injunction in all such cases; but courts are authorized to do it, and often exercise their authority when the circumstances warrant it. Root v. Railway Co., 105 U. S. 189. In American Diamond Rock-boring Co. v. Rutland l11arble Co., 2 Fed. Rep. 356, Judge WHEELER, in discussing the propriety of snch action, says:
"The grant to the patentee was of the exclusive right to make, use, and sell to others to be used, the invention, during thfil tfilrm.. The right to exclude others from making, using, and selling was the essential thing, and really all that was granted. * * * Any making for use during the term was taking from him what belonged to him. To permit any others to make such machines during the term, and hold them till the expiration, and then use them freely as if made after, would be to permit them to make off with so much of his (the patentee's) property that the law had granted to him."
See, also, to the same effect, American Diamond Rock-boring Co. v. Sheldon, 1 Fed. Rep. 870. The English equity practice is the same, as shown in Crossley v. Gas-light Co., 4 Law J. Oh. (N. S.) 25, in which LYNDHURST, L. J., said:
"It was objectlld that the court would not interfere, etc. The point has never yet been decided; but I am of the opinion that the court would interfere, after a patent had expired, to restrain the sale of articles manufactured previous to its expiration, in infringement of a patent-right."
I think this is a proper case for interference. A suit was pending against the defendants, and they were advised of the claim of the complainants. With their eyes wide open, they went on, and agreed to take the consequences. The consequences may be serious, but if they had wished to avoid them they ought to have refrained from such manufacture until the issues raised by the pleadings had been determined.
118 and another. l
and another v.
(District Oourt, D. Oonnecticut. March 22, 1886.)
1. SEAMEN'S WAGES-WHALING VOYAGE-ACTS JUNE 9, 1874, AND JUNE 20,17110,
$\§ 4520, 4fi68,
The libelants signed shipping articles which were partly written and partly printed. The printed part of the paper was the usual "whalemen's shipping paper," and described the voyage as a "whaling voyage from the port of Ne)V London to Cumberland inlet and elsewhere." The seamen's wages were called "shares of the net proceeds." The written part of the contract was as follows: "It is also further understood and agreed that we are to receive monthly wages as set opposite our names, in lieu of our lays in freight earnings, from the time that the said schooner leaves the port of New London until all freights are discharged, and all freight is takeh on board at A., C., and N. If, on taking on board all freights at above-named stations, the vessel has not sufficient quantity, say from six to seven hundred barrels, then our wages are to cease, and we are to· stop to whale at N. or elsewhere, and receive the lays set opposite our names on all catchings taken after such date in lieu of wages; but if the quantity taken on board is sufficient to come home, then our wages are to continue until arrival of vessel at New London, fall of 1884." Held that, by the terms of the contract, monthly wages were to be paid in lieu of a lay in freight earnings, and if the vessel got enough freight to fill her, monthly wages were to be paid continuously, and the vessel was to return in the fall of lil84. If a sufficient quantity of freight was not received, whaling was to begin, and monthly wages were to cease; and, from the surrounding circumstances, it also appeared that no contract was made that the whaling voyage should cease in the fall of 1884.
SAME-ACT OF 1874-REV. ST.
HEV. ST., CONSTRUED-FAILURE 1'0 DELIVER ENTIRE CARGODEVIATION AND DELAY, WHEN JUSTIFIABLE - CONS1'RUCTION OF SHIPPING ARTICI,ES.
§ 4520. The shipping articles were not void for non-compliance with the shipping commissioners' act, which, by the act of June 9, 1874, do not appl, to vessels in the trade hetween the United States and the British North AmerICan possessions, or in any case where the seamen are entitled to participate in the result of a voyage, The shipping agreement was not in violation of section 4520, Rev, St.
After the delivery of freight had ceased, and whaling had commenced, the vessel and crew, on account of stress of weather, and not by the negligence of the captain, were compelled to winter in Davis straits, and did not return till the fall of 1885. Meanwhile, they shared their 17 months' supply of provisions with a shipwrecked crew. Provisions grew scarce, and for a time they were on short allowance, The voyage was unsuccessful. No catchings were to be divided, and the libelants returned penniless. There was a deviation to St. Johns, Newfoundland, to land the shipwrecked crew, and to refit. Held, that the crew were not entitled to monthly wages, or to extra wages on account of short allowance of provisions, they having been diminished by delivery to a crew in distress, without the fault of the respondents. Held, aliJo, that the circumstance that the respondents were unable, without peril to life, to deliver at Cumberland inlet a small and immaterial part of the cargo, could not be taken advantage of by the libelants as a ground for exLending the period wherein monthly wages were due.
SAME-DEVIATION-SIIORT AI,LOWANCE OF PROVISIONS-MONTHLY WAGES.
In Admiralty. Thomas A. Codd and E. L. Barney, for libelants·
. . 1 Reported
by Theodore M. ELtinl1:, Esq., of the Philadelphia bar.