KILLER V. MORI,EY FINISHING MACH. CO.
of their attorneys' former connection with the appellee .and its litigation in connection with this land, it seems clear to us that the appellants are chargeable with notice of the appellee's right in this land by reason of the record of the mortgage itself. The mortgagor thought he was conveying in mortgage the land on wbich the grist mill and flouring mill stood. It was his intention to do so. The appellee thought it was receiving a conveyance in mortgage to the land upon which the mill plant stood. The court of chancery has decreed that this property was embraced in the mortgage. The claim of the appellants rests solely, as far as we can discover, upon the assumption that by some fixed law-whose origin, or the evidence of its existence, we have failed to discover-3D acres out of the S. W. part of the N. W. i of section 33 could only be laid off in the form of a square, one angle of which conforms to the S. W. angle of the quarter section. We think the appellants' elaim has no support either in law or equity, and therefore the judgment of the circuit court is affirmed.
MILLER v. MORLEY FINISHING MACH. CO. (CircuIt Court of Appeals, First Circuit. No. 241.
SPECIFIC PERFORMANCE-PRELIMINARY INJUNCTION.
April 15, 1898.)
In a suIt for specific performance of an alleged contract for the assignment of a large number of patents belonging to defendant, a preliminary injunction, involving the defendant in much inconvenience and possible loss, should not be granted, restraining him from seIling or otherwise dIsposIng of a list of patents enumerated as coming within the agreement, where one of the terms of the contract Is so indefinite as to make It doubtful whether the court could enforce it, and where it is also doubtful whether some of the patents for which the injunction is sought are embraced within the terms of the contract.
Appeal from the Circuit Court of the United States for the District of Massachusetts. This was a bill by the Morley Finishing Machine Company, a corporation organized under the laws of Maine, against Oliver A. Miller, a of Massachusetts, for specific performance of a contract. In the circuit court a preliminary injunction was granted, restraining the defendant from selling, assigning, or transferring certain patents owned by him, and which were alleged to be subject to the agreement sought to be enforced. From this order the defendant has appealed. The bill contains the following allegation, among others:
(1) The plaIntiff company is the owner of a number of United States letters patent covering Inventions and Improvements In tree feet or boot trees and boot-treeing machines, used by boot and shoe manufacturers in the finishing ()f boots and shoes, and was organized for the purpose of manufacturing tree fl'et or boot trees and boot-treeing machines embodying the inventions and Improvements covered by said patents or such other patents as it might acquire, and selllng or leasing the machines and appliances so manufactured. The defendant, Miller, is the owner of a large number of patents and rIghts in patents covering other inventions and improvements In the same line as those covered by the plaintiff's patents,-tbat is to say, In boot and shoe trees or tree feet and boot-treeing machines and devIces, to be. used in con-
87 FEDERAL' REPORTER.
nectluntherewltb, !lnd ,m!lchlneryto:be used In the finisblng of boots !lnd shoes; and 'accomplishing the same or similar results as the and boot-treeiijg machines covered]:Jy the plaintiff's patents,-and for, some years past has been, and is now, engagell In manufacturing, in a Sholl or factory owned by in said Brockton, boot trees and boot-treeing machines and devices, to be used in connection therewith under his said patents, and in selling or leasing the same; and such boot trees, boot.treeing machines, and devices manufactured by the defendant,. Miller, are widely distributed in boot and shoe fa.ctories throughout the United States. '
The bill then enumerates certain patents as being among those owned by the defendant, Miller. The contract which the bill seeks to enforce related to these patents. It was negotiated in behalf of the complainant by Charles A. Sinclair, one of its directors, and was dated October 9, 1897; being in full as follows:
Memorandum of an agreement made this day, between Mr. O. A. Miller, of Brockton, Mass., and the Morley Finishing Machine Company, by Wm. B. LeWis, of Boston, president of'said company, witnesseth as follows: , In consideration of one dollar, and other valuable consideration, receipt of which is hereby acknowledged each to the other, the said Miller agrees to turn over and transfer his business in tree feet, tree-feet machinery, all patents, all machines, tools, and fixtures, and everything pertaining to the manufacturing of said machines and said tree feet, to the said' Morley Finishing )Iachine Company Qr its representatives, and further agrees that he will not engage in any business, during the life of the said Morley Fini'shing Machine Company's patent, that shall In any way interfere or injure said tree-feet business. In consideration and upon the promise of the said Morley Finishing Machine Company to take the necessary steps, immediately to Inc,rease the capital stock of thel:r: company to three hundred and fifty thousand dollars, the said Miller to receive, outright one hundred thousand dollars of this stock, and fifty thousand dollars to be put into the treasury of, saidrMorley FinishingMachine Company. 'It is understood and agreed that ther said Miller, in consideration of his turning over the above-mentioned business, patents, machinery, tools, and fixtures, and everything that pertains to the business e:lhcepting his real estate; shall be elected manager of said business for the term of one year, receivlnga:s compensation for his services five thousand dollars, payable in equal quarterly payments. !tis ,further understood and agreed that the _Morley Machine have the use, for one year from the date of this transfer, of the said real! estate; power, and plant, and everything that pertains to the manufacturing of tree feet now used by the said Miller, free of expense to the said Morley .Flnishing Machine Company during that time, or for su,ch less time as said Morley Finishing Company may occupy it. It Is agreed by both parties to this agreement that this agreement shall be submitted to Messrs: Fish, Richardson & Storrow, who shall draw up an agreement,which shall be signed by both parties to this· agreement, which, shall insure the faithful performance of everything outlined in this agreement; and. it Is .further agreed that the agreement and transfer shall go Into effect as ,of November first, eighteen hundred and ninety-seven. Witness our bands and seals, tnis ninth day of OctOber, eighteen hundred and ninety-seven. William B. LeWis, Pl'esident. '[Seal.l , .... Morley Finis,hiI1g Machine 00. Oliver A. Miller. Witnesses: :', ' J. F. Edw. O.,S.torrow·
.' On October Mr. Lewis:
acldresse.d'the following le.tter to
Manchester and Lawrencenailroad, Boston, Mass., October 11, '1897:' William Lewis,. Esq., Prel!il'lellt ¥orll!y Finishing Machine Company-Dear Sir: Mr. Miller DAsjus't been In to see me,and has Called my attention to the
MILLER V. MORLEY FINISHING MACH. CO.
fact that, In the agreement which we signed for the consolidation of our businesses, we omitted to state the fact that he was to receive cash for his merchandise. This was my understanding, and was what we agreed to do, with Mr. Mlller. Leaving it out of the sIgned agreement was an oversight, and it is entirely proper he should have something to show what the understanding Is. If you agree with me as to the intention, I will ask you to please indorse on the back of this your aPPToval. I think this will cover the necessity, as Mr. Fish is to draw up an agreement. and can embody this part of the transaction in the agreement which we will all finally sign. Yours, truly, [Signed) Chas. A. Sinclair.
Indorsed as follows:
My understanding is the same as outlined within, and we will. in the agreement to be drawn by Messrs. Fish, Richardson & Storrow,.have it fUlly set forth. [Signed] Wllliam B. Lewis. President, Nlorley Finishing Machine Company. Boston, Oct. 11/97.
The bill, after setting out the agreement of October 9, 1897, and alleging various steps taken on its part by way of performance, proceeded as follows:
And the plaintiff company further avers that the said agreement of October 9, 1897, was submitted, as provided by its terms, to Messrs. Fish, Richardson & Storrow, counsel for the plaintiff company, who have drawn up an agreement, a copy of which is hereto annexed, marked "Exhibit B," which has been duly executed by the plaintiff company, and which by its terms secures the faithful performance by both parties of everything outlined in said agreement of October 9. 1897; and the plaintiff company has tendered said agreement so prepared and so executed by it to the defendant for his signature; and that the defendant has refused to execute the same, or to execute any other proper instrument turning over and transferring his said business, patents, and other property to the plaintiff, as provided in the said agreement of October 9, 1897, and has refused and stlll refuses to perform or carty out his said agreement in any respect, and has retained said business, patents, and other property for his own use, and has, by the use of said business, patents, and other property, carried on a business of manufacturing, selling, and leasing boot trees and other boot-treeing machinery In competition with the plaintiff with great profit to him, but to what amount the plaintiff is ignorant and cannot learn save by the' discovery herein prayed fQr, and to the great and irreparable damage of the plaintiff, and proposes to cQntinue said' wrongful acts. And your ,orator is informed and believes that the said defendant, contriving to Injure the plaintiff, and to place it forever out of the power-of this plaintiff to secure the performance of said contract, and wholly regardless of his. agreement with the plaintiff, is secretly planning to sell the most valuable parts of said· business, property, and patents to some person or persons to the plaintiff unknown; and, unless restrained by the of this honorable court, the said defendant will actually make said sale and transfer, whereby the rights secured to the plaintiff by said agreement will be rendered worthless.
The Exhibit B mentioned in the bill as having been prepared by of complainant's counsel for the purpose of carrying the October ,9,,1897, into effect, is here setout in full:
Exhibit B. This agreement and assignment, made this --.....'day·of - - , A. D. 1897, by and between Oliver A. Miller, of Brockton, Massachusetts, and the Morley 'Finishing Machine .. a corporation duly organized under the Jaws of the state Qf Maine, hereinafter called the "Morley Company," witnesseth: That whereas said Miller, ;by the terms of a certain agreement dated October 9th, 1897, agreed to turli over and .transfer to the Morley Company his business In tree feet, tree-feet machinery; all patents. all machines, :tools,
87 FEDERAL REl?ORTER.
and fixtures, and everything pertaining to the manufacturing of said rna· ehlnes and said tree feet, excepting his .real estate, for the consideration set out In said agreement: and Wher.eas the capital. stock of the Morley Company has been Increased as provided In said agreement, except that by the agreement of the parties said increase was to .five hundred thousand dollars instead of to three hundred and fifty tbousand dollars, and tbe Morley has Issued and delivers to said Miller simultaneously berewltba certificate for ten thousand sbares of Its capital stock, of the par value of one hundred thousand dollars, and bas In its treasury twenty thousand shares of Its capital stock, of the par value of two hundred thousand dollars: N:ow, therefore, be It known: (1) That in consideration of the issue and delivery of the said stock to said Miller, and of the covenants and agreements of said MQrley Company herein contained, and in further consideratlop. of the sum of one dollar to him paid by the said Morley the receipt Whereof is hereby acknowledged, the said Miller doell hereby grant, sell, assign, transfer, and deliver unto the said Morley Company his business in tree feet and tree·feet machinery, all machines, tools, and fixtures, and everything pertaining to the manufacture of tree feet and tree·feet machines and to his tree-feet business, except real estate owned by him., (2) For the consideration aforesaid, !:laid Miller' does further sell, assign, transfer, and set over unto the Morley Company the following letters patent of the United Statei'!. together with the inventions therein shown and deNo. 317,47G, granted to Abel D. Tyler, Jr., for boot tree, May scribed, 5, 1885; No. 319,354, granted to Abel D. Tyler, Jr., assignor to Oliver A. Miller, for boot tree, June 2,1885; No. 319,355, granted to Abel D. Tyler, Jr., assignor. toOilverA. MUler, for boot tree, June 2, 18S5.; No. 319,356, granted to Abel D. Tyler, Jr., asslg'nor to Oliver A. Miller, for boot tree, June 2, 1885: No. 347,309, granted to A. R.Wellman, assignor to Oliver A. Ml1Ier, for boot tree', August 10, 1886; No. 348,937, granted to Abel 'D.' Tyler, Jr., assignor to Oliver A. Miller, for boot or shoe tree, September 7, 1886: No. 393,003, granted to Alfred B. FOWler, assignor to Oliver A. Miller, for boottreeing machine, November 20, 1888;: No. 395,6(',8, granted to George E. Smith" assignor of one-half to William A.Knipe, for last, January I, 1889; No. 427,698, granted' to Howard· G. Locke, assignor of one-half' to Brockton Last Co., for boot or shoe tree, May 13, 1890; No. 440,788, granted· to .Jothan H. Burbank, Lovina J. Burbank, administratrix, assignor to Oliyer A. Mlller, for boot tree, November 18, 1890; No. 441,115, granted to F. L. Stone and A. R. Wellman, assIgnors to Oliver A. Miller, for boot or shoe tree, November 18,1890; No. '441,116, granted to A.R. Wellman, assignor to Oliver A; Miller, for boot tree, November 18, 1890: No. 441,117, granted to A. R. Wellman, assignor to Oliver A. Miller, for boot tree, November 18, 1890; No. 442,033, granted to Alfred B. Fowler, assignor fo' Oliver A. Miller, for boot-treeing machine, December 2, 1890; No.442,034,g-ranted to Alfred B. Fowler, assignor to Oliver A. Miller, for boot-treeing machine, December 2, 1890; No. 449,877, granted to W. Gordon, assignor of ,one-half toOHvel' A. Miller, for .last, April 7, 1891: No. 452,142, granted to Howard G. Locke, William H. Cary, and JosephE. Kimball, said Locke assignor to BroclrtonLast Co., for shoe tree, May 12, 1891; !'i'o. 500,711, granted to W. Gordon; assignor to O. A. Miller, for last, July 4, 1893; No. 55G,096, granted to W.Gordon and O.E. Gordon, for ,last, March 10, 1896: design. No. 26,040, granted to Oliver A. Miller, forlroning tool, September 15, 1800: No. 557,210, granted to Ii. G. Locke, asslgnor to O. A.MiJler, forla'st, March 31, 1896; 559,492, granted to H. G. Locke, assignor to Last' Cp., for last" May 5, 1896; l':io. 568,326, granted to J. W. Barlow, assignor to O. A. Miller, for last, September 29, 1895. " Said'Miller does ,alllo, for the, cons,id-erllUon aforesaid, hereby sell, assign, transfer, and set ov:er unto the Morley Company all his right, title, and interest In, to, and under any and all other Jetters patent (alld the Inventions therelnshowD and ,described), whether.of the United StatM,.Qr of any foreign country, ,which pertain to tree feet and tree-feet machil1cry, especially .includingtbe following letters patent of the United StlJ,t<;% viz.: .' No. 342,298, granted to Oliver .I. ,Howe, for boot Or shoe tree foot, May 18, 1886: No.
MILLER V. MORLEY FINISHIKG MACH. CO.
granted to Clarence A. Sumner, assignor 01' one-hall' to OliverA. MUler, tor hoot or shoe treeIng machine, February' 4, 1890. And also the following foreign letters patent, Viz.: English letters patent No. 6,709, dated June 2, 1885, to 'Villiam R. Lake, on communication from O. A.. :'Iiiller; English letters patent No. 6,710, dated June 2, 1880, to William R. Lake, on communication from O. A.. MlIler; English letters patent No. 7,974, dated May 22, 1890, to Alfred B. Fowler; English letters patent No. 18,629, dated November ,18, 1890, to Henry H. Lake, on communication from O. A.. Miller; French letters patent No. 169,302, dated June 2, 1885, to Oliver A. Miller; French letters patent Ko. 209,964, dated December 3, 1890. to Alfred B. Fowler; German letters' patent No. 34.593, dated June 2. 1885, to Oliver A. MUleI'; German letters patent No. 34.687, dated June 2, 1885, to Oliver A.. Miller; German letters patent No. 58,742, dated December 3, 1890, to Alfred B. Fowler; German letters patent No. 59,978, dated November 18, 1890, to Oliver A. Miller. And said Miller does also, for the consideration aforesaid, hereby sell, assign, transfer, and set over unto the Morley Company all his right, title, and interest In and to any and all appllcations for letters patent the inventions of which pertain to tree feet and tree-feet machinery, especially includIng the following appllcations for letters patent of the United States, viz.: Serf No. 364,688, filed September 11, 1880, by Howard G. I,ocke; Serf No. 453,749, filed December 1, 1892, by Howard G. Locke; appllcation filed by George E. Smith for lasts, assigned to O. A.. Miller, July 22, 1895, recorded In United States patent office, lAbel' Tn, page 416; application filed by George E. Smith, for lasts, assigned to O. A. Miller, October 5, 1896, recorded In United States patent office. Libel' 0 54, page 269; application filed by Charles H. Saunders, for hinged last, assigned to O. A. Miller, August 14, 1896, recorded In United States patent office, Libel' K 54, page 168; application filed by CharlesH. Saunders, for lasts, assigned to O. A. Miller, October 7, 1896. recorded In United States patent office, Libel' W 54, page 111; application filed by Oliver A. Miller and Don C. Luce, for lasts, said Luce's interest baving been assigned to said O. A. MUleI', July 3, 1897, recorded In United States patent office,Llber F 56, page 199; appllcation filed by John W. Barlow, for lasts, assigned to O. A. Miller, February 17, 1897, recorded In United States patent office, Libel' P 55, page 4; application filed by John W. Barlow, for lasts, assigned to O. A. Miller, February 17, 1897, recorded In United States patent office, Libel' P 55, page 4. Said Miller does hereby authorize and request the commissioner of patents to Issue the several letters patent that may be granted on such applications, or any of them, to the said Morley Finishing Machine Company, its successors and assigns. To have and to hold the said goods and chattels, letters patent, applications, and other property to the said Morley Finishing Machine Company and Its successors and assigns, to its and their own use and behoof forever. (3) For the consideration aforesaid, said Oliver A. Miller does hereby covenant and agree that he will permit the Morley Company to use and occupy, free of expense to the Morley Company, for one year from November 1, 1897, his factory, power, plant, and everything tnat pertains to the manufacture of tree feet used by the said Miller on the ninth day of October, A. D. 1897. (4) For the consideration aforesaid, the said Miller does hereby covenant and agree that he will not engage in any business that shall in any way Injure the said tree-feet business assigned and sold by these presents to the Morley Company, until the expiration of the Morley Company's letters patent No. 589,696, dated September 7, 189i. (5) In consld'eration of the foregoing transfers and assignments from and agreement of the said Miller, the Morley Company does hereby covenant and agree that said Miller shall be elected manager of its business for the term of one, year from the first day of November, 1897, and that It wlll pay to said Miller for said period of one year a salary of five thousand dollars in equal quarterly payments, the first payment to be made February 1, 1898. (6) This Instrument shall take effect as of the close of business on the thirty-first day of October, A. D. 1897. In witness whereof, the said Oliver A.. Miller bas hereunto set his hand
and 'a:fllxl!d, hIs seal, and the Morley 'FinIshing MacblneConmany.hal caused'. this .Instrument .to be slgned,.and Its corporate. seal W, be hereunto affixed byWm. B. Lewis, Its presIdenT. and John F. Springfield, its trt¥UIl\rer, thereunto duly authorized. In dupllcate,the day and Year tlTst,above written. ) ,·l\iorley Finishing MacbIne. Company, [Cotllorate Seal.] By Wililam B, Lewis, President, John F. Springfield, Treasurer.
The restraining order (which by, astlbsequent order of, the court became a preliminary injunction) was in part as
We therefore, In consideration thereof, enjoin and command.,you, each and every of you, that from and Immediately after the receipt and notice of this. our wrIt, by you,or any of you, you shall not sell, assign, transfer, or incumber, or otherwise Intermeddle with the tltle to any of the businesl! and property used therein, and patents and patent rights subject of the contract between you and the said Finishing Machine Company of Octoher 0, 1897, and particularly shall Dot withdraw :aoy money from said bnsiness, nor sell, assign, transfer; Incumber, or otherwise Intermeddle with the title to any of the following described patents and Inventions, or the !'ights therein: [Then followed along list of patents and pending appllcations for patents.]
William Quinby, for appellant Frederick P. Fish and Robert F. ;tIerrick, for appellee. Before PUTNAM, Circuit Judgf:!, and BROWN and LOWELL, District J lldges. ', PER CURIAM. With reference to the Jetter of Mr. Sinclair, which it is. admitted must be read into the alleged agreement which the plaintiff seeks to enforce; it appears to the court that the expresIlion "cash for his merchandise" is s,o indefinite as to leave the alleged agreement so.vague that it is doubtful whether an equity court can compel its enforcement; and, moreover, it is doubtful whether the instrument of conveyance submitted'to the defendant f()r execution by him c()ntained a proper offer to carry out the contract asIt ",as supplemented by that letter; further, it appears very doubtful whether the alleged agreement covers the patents, relating to hinged lasts, in reference to whichanapparently fair controversy has arisen between the On the Whole, theeourtis of the opinion thll:t"tlJ.e case,as :gresented,is sO,doqbtful on the merits that an injunction of the broad character granted below, involving the defendant i;n so much inconvenience and possible loss, oug.ht not, in this,case, to be The order appealed from.'is reversed,and the costs of this CQurt are.'awarded to the '. , :' , ,
et a1. T. P.J.WILLIS & BRO.ll P. J. WILLIS & BRO; v. OAKES et'aJ: (0Irc111t Court of Appeals" Fifth Clrault., iq;: 1<8nS.,:
'.. No. 671.
'.' '" . '
ADVERSE POSSESSION---:COLOR OF T,rl'r,E. . . , . , , ' ' ' ' ' .
"Title." as the 'l'exas nrescrjbln/f three-Years Ilm!ta.tlon, means a chain of from or unuer, sovereignty the soil; and "color of title" means acol1secUlive chain' .trans.fer down to the person in possession, without, however, being regnlar; as where one June 2d,
Petition for rehearing filed May 23d, and