liinitation:, established, by'" tlle\'()()ogtess;' thereforethewbole fAifriiityiHe'l:lnjoibed. 'That which is due must be first paid or tendered. This ffulEFhlllfbeeii laid down court. 'StdteRa:ilroad Ta:t ':; i' L< ' i that made the entrUed W:aIiihjunctionagainst:tbe'exeess of taxation resulting from the excessive 'a$!iesstritints' against:thtrilrrespectiye shareholders; 'and' perhaps to the' full extent claimed ih th&bills. A reference will be tbemost satisfactory method 'ofBscertairting thefredhction, by reasOn:of exempt properly held bythil banks; Eacheomplainant is entitled to claim on the valuations 8.lf made by the flSsessors under the views herein expressed; and, unless counsel,agree as to the prot>er reduction 08 the showing already niade, such reference 'Will'lUfbrdered prior to issuing injunction
L SPBOIJ'IO PBRlIOR1U,NCE-REQUIBITEB OJ' CoNTRAOTS-PA.TENTS.
Where Ucenses t,q the article, and the l1censee agrees to pay royalty, toniaTre monthly repons of sales, to admit va.and to give its'oo.operation in maintaining the business the under whio4t1;l.;liQanae.islssued, the vatentee,reaerving the power to revoke the license, the cannot be specificilJly enforced, the covg enant' a,s to,,', ,co-opera"tio,nbeln, .too va., go,e'.".and t,he remedy of the patentee, by revo(lithe UCjJWleor action at ' ';, undet'sub'b CQl1traet. will not b!l , , ' ,'i , ( , ;
',,", . , . '
" 'A bill for ,an
;, In Equity. On.. demurrer to bill.' . The bill in thiS' case aV6nt; in substance, that complainant is the, owner <if Certain wire patetitai'ahd that on or about May 1, 1888, a license to defendant to'n18nufacture andsellcertain styles of btiroed fence wire to the amount of 6',,000 tons per annum; that by the terms 'of the,license defendant agreed to pay a royalty of 15 cents per potirtds'onall fence wiresb' manufactured arid' sold, arid to ·J)ay' the sanle monthly; that the' to makemorithly reports'tO tn.Hicensorofthe number ofpbunds offence wirescild,and alSo of the i1.:ttniber of pounds consigned by'the licensee during the preceding month', of the per.. an'd,'that sueD j reports should' give'tbe ,names' and S'6hs'tO'Wh'omeales had been 'made, and shOUld 'also show in detail the: prices and terms of delivery and payment; tbil.t"tllelicensee also agreed tbadmit the validity of the, ipatentS 'under which the .license was taken" that it would natbJalte orselldunhg the period of the license anybarbed fence wire other than that which it was licensed to make and sell, and that it would cO-operate in properly maintaining the 'barbed-wire bus-
G. J'BEEIlAN WIRE 00.
ineFlS,\and the patents tinder: 'which the license was By the tennsoHbe license, the licensor reserved the right to cancel and annul the same for any failure of: the licensee to comply with the provisions thereof. The bill further avers that complainant. had at the time of granting the license issued similar licenses to other persons throughout the United States; thaUhe complainant was itselfa manufacturer of barbed wire; and that, in order to maintain its rights and secure the benefits to which it was entitled under its. patents, it wag necessary that all the covenants ,and agreements made by its several licenses Should be faithfully kept; and that deftmdant had notice of such facts when it accepted the license in question. The bill also shows· that since May, 1888, the defenqant. bas willfully violated the provisions of the license by making and selling barbed fence wire such as is descril:>ed in the license, and I:>y fl\ilin:g .and refusing to make the monthly reports called for, and by refusinj:t tb pay royalties. In view of the premises, complainant prays. for a decree requiring the defendant to render 'an account of all wire made nnd sold since May 1, 1888; that it be required in future to strictly keep and perform the covenants contained in the license; and that in the mean time, and until the further order of the court, it may be enjoined from n'lll.kingandselling barbed fence wire of the kind described in the licellF;e. Lehmann « Park and Hitchcock, Madill « F'inkelnburg, for complainant. .W. B. H(YTMl', for defendant. 'TJlAYER,J., (after ikfactB as above.) On the case made by the bill,thecomplainant is not.entitled to equitable relief. It cannot maintain ,a suit in equity, merely to have an account taken of the royalties dJitetoit, fl;pd a decree:for their payment, as.it is now settled that courts of equity; even in patent .cases, will not entertain bills merely to obtain an account of profits or damages realized or sustained by the infringementof letters patent. To authorize a decree for an accounting, filitheras to, profits or damages, to which a complainant is entitled under the patent laws,the court must first acquire jurisdiction of the cause, on , some well-defined equitable ground. A case does not become one of equitable cognizance merely because an accounting is prayed for, or because it is proper or even necessary to take an account, as courts of law are competent to deal with suits of that character. Though it is usual, in many equitable proceedings where the bill is sustained, to order an accounting, yet in most, if not all, cases where such relief is afforded it is regarded- 8S relief that is incidental to the main purposes of the suit, and an order fOJ: aD accountingis almost invariably granted in obedience to' the well-known rule that a court of equity, when it acquires jurisdiction, should I;l.dminister full and complete relief. Root v.Railway Co., 105 U. S. 189, and cases cited; Purifier Co. v. Wolf, 28 Fed. Rep. 814; CrandaU v. Manufacturing Co., 24 Fed. Rep. 738. It is not claimed in the present case (nor could it be successfully claimed) that complainant is entitled to the injunctive relief prayed for j and hence that, an account Ulny be taken of the r?yalties that have under the license, an
FEDERAL UPO'1ml:R J
inciMnt of,'sucb'injunctive reliai'.' :!Aninjunction cannot be granted to restra:iIHheJdefendant and selling barbed wire, because defendanfl-is confessedlyopera.ting ullder a license granted to it' by the pla,ihtitr; which is as yet unrevoked. So long as the license remains in fOrce,'cdnlplainant is not entitled: to an injunction to restrain the man· ufl\Cture;a;nd sale of 'the patentedlll'ticle, but must content itself with such remedies as: it has under the license. Purifier Co. v. Wolf, sUpra; Densmore v.Tanite 00.,32 Fed. Re!p. 544. While complainant's counsel impliedly ooncedesthat an injuhction as prayed for cannot be awarded, and thereforeboncedes that anrs;ccounting cannot be ordered as an inci. dent to au'ch :equitahle relief, yet it is strenuously urged that in the present case complainant has an independent right to an accounting in eq'Uity, and 'tliJ.at grows out of !the peculiar relations existing between the parties, under the provisions 'of the license. It is said that complainant is itself a manufacturer of barbed wire; that it 'needs the information which defendant covenanted to furnish by ita monthly reports, both for the' proper management ofiitsown business asa manufacturer, and for the defense of its rightsurider its patents; and that, in view of this fact, it has a right to call fora discovery and an accounting, and to invoke the aid of a court of equity in: that behalf. The answer to this contention is that the relation between complainant and defendant, so far as the bill shows, does not differ essentially from that existing between any licensor and licensee, where royalties are paid for the use of an inIf eOrl1plainant is entitled Vi a discovery and an accounting in equity, and to: maintain a bill solelyifoT that purpose, and entirely indeno reason is' pert2eivedwhy any pendent of other other Hcensor'might not bilI on the same pretehse. .The position taken is therefore untenable', and cannot be maintained 'consistently with, thetitlthorities abovecire'd, holding that a bill in equity fOli6h accounting Iiierely is ··not theprope:r remedy to l'eeov&1"profits by all infrillgenieht6f letterspatent,!or to reCOver royalties due under a license·. FUrthermore, ul1defthepraotice which now prevails atlaw, under the iwovisi6ns of section 724; Rev. St. U. S.; the' complainant :may obtain !as/full' informaiion for the protection of its interests by a suit at law'to recovet'theroyaltiesirl!(}uestion as it could possibly obtain bya proceeding in chancery. There's'eeri:ls :to be no oCcasion, therefore, for resorting to eqtiity merely to obtainS. discovery and' ali, accounting. The equitable powers .of the court :Mnfiot be called into requisition on the plea of necessity, because the authority 'of a court of law is ample, ifan .nccounting and a decree for thepa'Y:ri1ent Of rOyalties is' all'the relief plainant is entitled to; ,;; , .· But it is furthel'-insisted that the bill fuay properly:'be entertained as a bill for speciftcperformance;There al'e,however, insuperable objections to retaining it on that ground. 'No court, sofaI' ad am advised,has enforce theifpemfic performance of' covenants such as the license existing between }:tatties to this suifcontains. For a breach of the maincovenaIits cotltt9.l1ed in the license,.......those l for in!!tance t
BANK OF THE METROl'OLtS iI. WEBER.
whereby defendant binds itself to render monthly reports and to pay royaltiesl-the complainant can, as before shown, obtain adequate redresS in Rsuitat law. Another covenant in the license---that whereby the' defendant :bound itself "to give, its co-operation in maintaining the barbedwire business, and the patents under which the license is granted"-is altogether too vague and indefinite to warrant any court in attem pting to specifically enforce it by judicial order or decree. The license also calls for the performance of personal duties that are continuous during the existence of the license, and it seems to be the hetter opinion that it is into enforce the specific performexpedient for courts of equity ance ofcovenants of that nature. Marble Co. v. Ripley, 10 Wall. 358; Port ClintonR. C,o.v. Cleveland, 1JtC., R .. Co., 13 Ohio St., 544. At all events, this. court does not, feel' inclined to undertake to supervise the performance of all the duties assumed by the defendant under the provisions of the license"and for the faU term of the license" without some stronger Rssu:rance than the present bill affords that the complainant will suffer irreparable injury, .ifleft to enforce its rights in a legal proceeding. And, lastly" it may be observed, as an additional reason for refusing specific performance, that the complainant has the power to revoke the license in question at any time, if the remedy at law for the enforcement of the covenants therein contained is in any respect, or for any cause. incomplete or inadequate. For the reasons givell I conclude that the bill does not state a case for equitable relief of any sort. demurrer thereto is accordingly sustained.
,,:J3ANK OF T,HE METROPOLIS 'V.W,EBER;
(Oircuit Oourt, S. D. New York. November 27,1889.)
, ,Jt,ev. St, U, S, §34(l8, providl,ls tbatstate banks shallpllY a tax of one twenty·fourth of one per cent. per month on the average deposits of money subject to payment by check, 01' draft, or represented, by certificates of deposit or otherwise, whether payou. demand or at som,e.future day. PIl'intiff"as suchbank, received forde' P061t checks and drafts on (jther city banks, which were sen,t by it to another bank to ,be put through the clearing-house, necessitating :the keeping of a large balance in 8ucll;other. bank to meet, any 'balances that might be due from plaintiff ,to such bank on account of those clearances. 1:lela, that the check;s and drafts upon other city banks constituted a part of plaintiff'sde'posits subject to payment on check or dJ;aft,lj.ndshould be included in determining the average da.lly deposits for the purpose of taxation.
AND DRAJ!'TSOl!' 'CITY BANKS.
SAMIll--CliECKS AND DRAFTS OJ!' COUNTRY B A N K S . '
B,ut Where.' a po,rt,ion Of, P,''laillt,tit'S, deposits 'consisted of checks of count,ry whIch were not considered as subject to payment on check .or draft until they haa been sent to the respective.country, banks against they were drawn, and reo . turned as good; such deposits should not be included bi the average da1l1 deposits such retll,rn had been madlil. . ." .