residence of the person designated: and. if it is within a city. the street and street number. if any, or other suitable designation of the particular locality. It remains in force until the filing in the same office of a written revocation theteof, or of the consent, executed in like manner; but the person designated may fn>m time to time change the place specified as bis office or residpnce to some other place within the state, by a writing. executed by him. and filed in like manner." In May, 1880. defendant designated a person on whom process against it might beserved, and specified his residence as being at 262 Fourth Avenue,' and his office as being at 37 WaH street, in the city of New York. In 1881 he changed his residence to Thirty-Fourth street, and his office to State street; and in October, 1883, he went to Europe, and remained away until September, 1884. By the terms of section 401 the limitation operates only while the designation is in force. The object of the designation is to provide a pElI'son on whom service of process may be made. 'It is not accomplishflrl by the lUere making and acceptance designation in the manner prescribed. The service provided Jor is upon the person, and not at the place named, in his absence, for him, or for the defendant. The continuation of the presence of the person within the jurisdiction at least, if not in the same location, is absolutely essential to the continued' operation of the designation for the purpose rorwhich' it is made, and to its continuing in force within the meaning of the statute. The provision in the statute that it remains in force until the filing: of a written revocation, refers to the force derived from the act of the parties, and continues that until it is withdrawn in the manner, pointed olit, and not to the removal of the means by which the designation cduld have any effect. The designation did not continue in force at most any longer than until the person designated left for Europe in September', 1883, which was before the expiration of three years from theadcrning'of the cause of action, and before it was barred. The des· ignation was not renewed; neither did he return to the place designated; the force' olthe designation was not in any mannerrestored; nor was there anything to set the limitation running again. This conclusion bas been reached upon conference with and with the concurrence of Circuit Judge' LAcOiUiE.' Motion overruled, and stay vacated.
WnHBuRN& MOEN MANUF'G
'11, SOUTHERN WIRE
(qircuit Oourt. E. D. Mi88ourl, E. D. January 28,1889.)
,, patentee is doing a large and profitable business in themanufact, uTe'and ,ssle of the patented article, and his patents have been infringed. a covenl\ilt iD II. license granted by him to manufacture and seli such article, , thiJ:t the licensee ,will give his co-operation in properly maintaining the busi'n&Ss"snd the'patents; binds the licensee to assist in ali lawful ways in suppressthe infringement of the patent.
. '; U fAT;El.'TS ,FOR INVENTIONS-LICENSES-COVENANT TO UPHOLD PATENT.
WASHBURN &: MOEN MANUF'a CO. II. SOUTHER:N WIRB CO.
Though the covenant does not oblige the licensee to continue the manufacture snd sale of the article for any specified period. or deprive him of the right of retiring from business and selling his plant, it is still a continuing obligation, which the licensee's abandonment of .the business will not release. A sale by the licensee of his plant with knowledge that the purchaser intends to employ it in violation of the patent. and with intent to aid him therein, is a breach of the covenant.
At Law. On demurret to the petition. This was an action at law to recover damages for an alleged breach of a covenant contained in a license to manufacture andeell barbed fencewire, granted by the plaintiff to the defendant on November 25, 1885. In consideration of' the license granted, defendant, among other things, covenanted that it would pay the royalty reserved therein, and make monthly reports of the amount of wire by it manufactured and sold. and "that it would faithfully carry out and perform all and each of the tenns and conditions set forth in license, and would give to said Wash-' burn & Moen Manufacturing Company its co-operation in properly maintaining the barbed-wire business, and the patents under which said license was grllnted-'" The act charged as amounting to a violation of: the last-recited covenant consisted in a sale made by the defendant toa corporation known as the "St. Louis Wire-Mill Company," its plaat,' machiner,y, stock in hand, good-will, and business," including orders fOf' barbed wire then on hand. The petition alleged, in substance, that the St. Louis Wire-Mill Company was not authorized to manufacture, use, or sell balbedwire made in accordance with fhepatents owned and controlled by plaintiff, and under which defendimt had operated in conforrnitywith 'its license up to the date of the alleged transfer; that such. fact was well known. to defendant at the time of the sale; and that the' sale was ,intentionally made by the defendant to enable the wire-mill company to engage on a· large scale in the manufacture of unlicensed: barbed wire, in violation of plaintiff's rights, and with the intent of en·· abling persons, not duly licensed. to make, use, and vend barbed wire in: violation of plaintiff's patents, and to its injury, and·in competition with its business, and the business .of its licensees. The petition also averred, that some of the .defenuant's stockholders and officers were also stockholders and oflkers of the St. Louis Wire Mill Company andcontrolkd the same', and that the sale complained of was a mere scheme on the part ' of such. individuals holding office in both companies to violate and'evade defendant's covenant and obligations expressed in the license. The petition also alleged in effect that when the license was executed a! large up throughout the west ,for barbed fence-wire made demand in conformity with the patents owned or controlled by plaintiff;. that plaintiff was at the time manufacturing wire in large quantities to supply suchdemand,and was doing a very profitable business in thatline,; that certain unlicensed manufacturers of wire had .theretofore from.time to time pirated its inventions and improveI1lents. in barbed ,wire; 'and, thatlill such facts were well known tothedefendant.i.The fourth count'
/'QDER4M REPQRTER" yQl.,37.
Qf the petitiQn containing the averments aforesaid was demurred to on showed DQ Qf the covenant "to give its co,etc. ,,' " " \'HiJ.ckaock,Madill&; Finkelnb'ttrg, fOT plaintiff. R." Bennett alld Dyer, Lee, &; Ellis, for defendant.
< ..·· ,,' :,', ,
, TH:A YER; J:,(after stating the facts as above.) I have no doubt that the covenant involved in this case bound the defendant, and was intended to bind it, to co-operate with the plaintiff in all lawful ways in suppressi'ngthe manufacture and sale by unlicensed persons of barbed fence-wire thatinfringed patents. 'fhe covenant "to give the Washburn & Moan Manulaetunng Company, its co-operation in properly maintaining the barbed-wire business, and the patents under which the license to,defendant was granted," must be construed 'in the ,light of all of the ciroumstances alleged to have, existed when the same was executl:'d. In view of ;the allegations in the petition to theeflect that plaintiff, by virtue: 01 its exclusive rights tinder itB, letter,s patent, was doing a large and profitable husinessin the manufacture and sale of barbed wire when the license and was interested in maintaining its exclusive rights" and ' that certain persons had theretofore from time to time infringed its patents, it is manifest: that in stipulating for the co-operation of ,its licensee iu,maintaining the barbed-wire business, and the patents under which thelicimse was granted, the plaintiff bargained I'(lf aid in suppressing unlicensed traffic in such barbed wire as was covered by its patent. The licensGr and licensee unquestionably regarded the prosperity of the business in which they were engaged,or were about to engage, as largely dependent upon the rigid enforcement of the exclusive right to manufacture certain styJesof barbed It\l1ce-wire, which plaintiff claimed under and by virtue of its patents. In all probability, when theJicensor and licensee executed the license, they contemplated maintainingthe barbed-wire business. ,mainly by a rigid enforcement of such exclusive ,rights, and by a diligent prosecution of infringers. For these reasons I conclude that the chief'obligation assumed. by the defendant, when it executed the covenant in question, was all obligation to co-operate or assist· in all lawful ways in prc::vellting infringements of the barbed-wire patents that are enumerated in the license. r concur with ,defendant's cou.nsel in the view that the covenant" to co-oper.ate in properly maintaining the barbed"wire business and patents" did not:obligate the detEmdant to continue the manufacture and sale of .barbed,wil:eduring the We of the license, or for any specified period; and that It did not deprive'the defendant of the right to retire from business;, or!necessarily deprive it of the right to sell its machinery, plant, stook-.in trade, etc. Nevertheless itis obvious that the agreement to,co-operate in maintaining the business and patents in question was a continuing obligation, and that.tQe defendant was tlotreleased therefrom merely by abandoning .its business operations under the license. Suoh 'being"itllmy,QpmioD, the proper construction of the covEmant;theiOnly doubtful question in the case is whether the alleged sale bJ the deftmdT
WA&HBURN &'lMOEN MANUF'G CO. fl. SOU'rHERN WIRE
ant to the St. Louis Wire-Mill Company of its machinery and plant for the production of barbed wite', together with 'its stock in trade and unfilled orders, amounted to a breach of the covenant by reason of the fact that defendant knew, as the plaintiff a.vers\ that the wire-mill company was an unlicensed manufacturer of barbed wire, and intended to employ the machinery, plant, and other property so acquired, in a manner tb""t would violate plaintiff's asserted exclusive rights and privileges, under , its patents. A careful analysis of the fourth count of the petition, to which the demurrer relates, shows very clearly thll-t no act is charged a.mounting to a: breach of the covenant, unless the sale ma<,le by the defendant of its machinery and plant with the knowledge aforesaid, with as to aid the ,Wire-mill cOinJ>any , In theproductl,on of unlicensed WIre upon a large scale, amounts to,sllch breach. It is true that in actions ex ;contractu it is usually unnecessary to inquire with what knowledgeor hltenta given to decide whether it amounted to a violation of"the agreement :sued upon. It is ordinarily the case that if an act, considered by itself, does not ,amount to a breach of an agreeme,nt., the knowledge or intent; with which the act is done will Dot render it unlawful. This result is,a:ue, I apprehend, altogether to thtl, nature of ordinaryc0'lenants met;lts, ,and to the language In which they a,re ,I 'know ,(;If no ' , reason, ,how,ever, why parties may not put,their,engagementsillto,;such form as to render an inquiry into the knowledge with which a given act was done, and the motives that prompted it, both legitimate and necessary, even in an action ex contractu. It appears to me that the: ppusi:deJ.'ll-ti0nis of the character last iJildicated. ,The defendant bound itself to co-operate. that is, to act jointly Or in concert with plaintiff, in maintaining the busine&s and ()erJ:ain<patents. That covenant implied tl1at it woUld ,not, knowingly and intentionally, give aid and comfort to a class of barbed-wire manuwhom,the licensor al)d licensee evidently had in qlind, and regard'ed' ll8thecommon enemy, when the'license. was granted. 1t<oe;r'tainly',implied that defendant would not place machinery and' that wer¢ specially adl;l.pted to the production of 'the patented article in the hamW.'Of the enemy, with knowledge that they Were to be used the production of unlicensed wire, and with VinMnt .to aid in tbeproduction.·· I accordingly conClude that the allegations 'in the fourth count Of the petition, as to the knowledge and 'intent withwhicb defendant 801d; machinery. and plant, are material, and that the count, by reason .. of stich allegations,: states a good cause of action. Either this view should be taken, in my opinion, or the other to be adopted, ,thatdefenclant,hefore making the sale 'in question, was bound to pro'vide at its pedl that the machinery and plant were'not employed in the . produqtion Of infringing 1;>arbed wire. '. According to either view the derimrrershould be overruled, and it iSBO ordered. '
CR;mNSHAWE 'l1. PKARCE.
(Di8trict Court, 8. D.
York. January 12, 1889.)
SJlIPPING-LUBILITY Oll' OWNER FOR CONTRACT-BILLS Oll' LAnmG-MrsTAXB'J AGENT'S OPTION.
U.. the commoD ap;ent of several different steamships, owned by different owners, and running' independently upon stated days, forming the "Guion Line. "agreed with libelants to transport about 800 bales of cotton per steamer ; A.a:;: W., agent's option. A part were sent by tbe A., the rest by the W., a week later. U. only had authority to determinEl,by which vessel "and or" gQods should go, Without his knowledge or assent, shipping receipts were delivered to libelants, through. some mistake of the subemployes. apparently induced in part by the libelants' slips. The receipts stated that the goods were to go by the A: onl),,; upon the faith of which, without U.'s knowledge, J:liUs of lading were at bis office, for all the cotton per steamer A. Tbe cotton shipped by the W, arrived about 10 days later than that by the A., and, the price falling in 'the mean time, the libelants sued the respondent, who is sole ownefpftheA.. for the, loss. Held (1) the original contract was the agElnt's and did not J>ind eitber the vessel or ber owners; (2) the different vessels apd own'ers'liere not liable for each other's contracts; (3) 'the shipping receipts and billeof lading per A. only. being issued by mistake, and wjtbout,U.',s knowle(lge or authority, did not constitute any exercise of the option reserved intheoriginal contract, and did not bind the respondent. as respects tbo goods carried ',by the W.; (4) tbat tbe W.'s goods had never been delivered to the A.; or under her control; and that the respondents were Dot liable.
In Admiralty., , Action upon three ,bills of lading for failure to transport 559 bales cotton by steamer Arizona. ' jj}vart8,Choate &- Bea'TMn, for libelants. Wilcox, Adums&Macklin, for respondent.
848 bales otcotton on board the steam-ship Arizona, for Liverpool, dated August 31st, September 1st, and September2d." She sailed on Tuesday, September 6tq. Only' 289 bales went by the Arizona. The re559 bales were, carried by ,the Wisconsin, of the same line, wJ#ch left A-week later, and arri.ve4 in Liverpool about 10 days after the ".Arizona. , .Ouringthisintervnl there was a fall of three:-eighths of a penny ',ver pound in the market price of cotton, to recover which this libel was '1iled., , 'The evidence shows that the 24th and 26th of August preceding, tl;\Vri,ttencontracts made the libelants and the representatives ofIJl1derhill&Co., whereby transportation was engaged for "about 800 bales of cotton on of the ,Guion line, expected sailing the 6th aonrd 13th September, agent's option, subject to the terms and conditions of the form of the bill of lading approved by the New York Produce Exchange;" and that the bales in question were sent by the
BROWN, J. in September, 1887, received from UnderhHI & CQ., in this,oity, three bills of lading, reciting the shipment of