224
FEDERAL REPORTER,
vol. 48.
F ALK v. SEIDENBERG' et al'. <Circuit Oourt, S. D. New York., November
bill.
In
infringement of copyright. On demurrer to . Isaac'N. Falkand Roland Cox, for plaintiff. . . John B. Talmdge and Augustus T.(;U1'litz, for defendants·
Suit to Dem'urrer Q.verruled.
. .CoXE, The decision in Balk v. Schumacher, 48 Fed. Rep. 222, ()f this cause, also. The demurrer is overruled. The may answer . within 20 days. , ;
,
'ELEcTRIO
LIGHT CO. et al. '11. TRIO C o . '
ELEC- . '.
(CircUit Oourt, D. Oonnecticut. November 1,1891.) . PATENTS' FOR' INVENTIONS '';'" LIOENSE TO SELL -- RIGHTS 011" ll'RINGEMBN'r-PARTIES., . .' ..' . ·. ' · SUITII'OB ;'
IiJ.
An Ohio corporation owning an electric light patent gave another..company an exclusive license to sell the patented article in New England,' :Afterwards a Coil:· corporation owning other elect,l'ic light obtained.a' conttC)lling iJJterest in the stock of the licensor. HeZ4, that the licensee, a, suit in the district of Connecticut against the Connecticut cOrporation for selling an inMng'ing article within .had 'P'1'ima facie imj.>lied authority, PY, Virtue, ,tM'licl:lnse, 'to join the licensor as a party plaintiff agamst the latter's Will; especIally as the lat,ter, being'out of the jurisdiotion of the oourt; could 110t be served a/i'll,'party defendant. ,., \
MQr1"iB W., Seymour and Wm. G. Wilson, for. Br\lsh-Swa.n .Company.
.
"
'"
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F. L. Or,a'Wjord and, Oharles R. IngersoU, for Brush Electric Company. SHIPMAN, J .. This is a bill in equity, which is blionght.under the patent laws, to restrain an. alleged infringement of letters patent No. 219,208, datediSeptember .2, 1877, to Oharles F. Brush., The bill alleges that the Brush·Swan Electric Light Company of New England, a New York corporation, which will hereafter be called the Brush-Swan Company, is vested with the exclusive license and agency for the saieofthe described ..po.tentedimprovement throughout a specified territoryofthe United States, by virtue of Bundrycontracts, which a.re annexed to the bill, with the Brush Electric Company, an Ohio corporation, hereinafter called the Clevtlland Company, which is, by assignment, the sole owner of the patent. These two corporations are the complainants. The bill further alleges that the defendant, the Thomson·Houston Electric Company, a Oonnecticut corporation, is and has been making, selling, using, and renting to others to be used, infringing electric lamps within the territory named in said contracts.
BRUSH-SWAN ELECTRIC LIGHT
co. tI. THOMSON·HOUSTON
ELECTItIC CO.
225.'
'The matter now under consideration is' the Cleveland Company's tion to strike out its name as a party complainant, because the bHl has been filed without its authority orrconsent. It is conceded that the bill was brought by the solicitors of the Brush-Swan Company without the knowledge of the ClevelaLld Company, and that no express authority to bring suits in its name given either in said contracts ol'otherwise; but it is contended that, by virtue of the license, the licensee has the implied consent and authority to use the name of the owner of the patent as a co-complainant, and a vested right to bring a suit in its name, whether wIth or against its will. The facts in this case are peculiar. The various contracts "of license and agency" give to the BrushSwan Company an exclusive agency and license for the sale, within a specified territory, of "the dynamo electric machines and apparatus made and sold by j orthe patents. for, which are controlled by, the ties of the first part. " The patents are described. T1J.e Brush-Swan Company is not to 'sell appal'atus of the described character, except that sold by the Cleveland Company, without its consent. TheCleveland Company is to fix prices,' 'and the agent is to have a discount of 20 per cent. The parent company hilS no right to sell machines or apparatus withinthespeeitied'territory, except under to be mutuallyagreedupon,l1lld in such case it pays to the Brush-Swan Company the 20 per !l'he contl'a<:tsiare, in their important features, contraetsofageney between a principal manufactul1erand a selling agent. In some :ot: their features they have the ,appearance of contracts between a and a person wbo is, under· limitations, tobave tbe exc1l.1sive right to deal ar- . tides within a specified territory; but they are probably contracts of license, under the to sell within a .specified! portion of. the United States a pa1Jentedimprovement1 'manufactlired by the owner of the patent.. The licensotbecame distrustful of the licensee; thought that it had broken itseontraCt;desired, to put an end :to the r.gency;:and declllred tbe c()ntracts to be termiuated. ,Litigation erisued in the sOl.1therndistricfof New York, whkh hl18 proceeded to an interlocutory decree, and has thus far resulted favorably to the 'Brush-Swan Company. The entire capHal'stock.oftheClevElland' Company is $2,500,OOO,of which $2,OOOjOOO are common and $500,000 are preferred stock. During the year preceding January 19,1891, about nineteen-twentieths of the commonLEitock went into the hands of the defendant'in this case, the Thomson-HollSton Electric Company. It thus appears that the defendant is in control onhe Cleveland Company. Upon the motion, the Brush-Swan Company contended broadly that thelicensee.to'seH a ,patented device within a specified territory has an absolute implied right, under all circumstances, to join the owner of the patent, against his will, in a bill in equity against a person who is alleged to infringe tM entire patent-right of the owner by makingjselling, using, and renting infringing devices. .This general. question I do not intend to J It. is obvious thatif ,the licensee of the bare right to sell has, under ,il,11 circumstances, by the mere agreement. to v.48F.no.3-15
an absolote:" implied power, whicht'cannot be CQIitrolled by a court'of equity, it is,aiJarge power. He can, by joining the owner of the entire. legal and remaining. equitable right in the patent, compel him to enter into an expen.sille and perilous litigation, or to submit to an adjudication in regard to the validity or the·(.construction or the extent of his patent, which may: be injurious to his pecuniary interests. If the interest of the owner, who has merely gi:ven his agent a license to sell specified territory" and w.ho is still the owner of the substantial and important:portion of the patent, can be, against his will and without the service ofprocells, subjected to litligation and judicial decree, there is danger that the power of the liceoseewill be wantonly exercised. On the other hand, it is reasonably certain that a licensee Call, in an action at law, use the nameoHhe owner of the patent, (Wilson. v. Chickering, 14 Fed. 917; Goodyear v·. McBurney, 8 Blatchf. 32; Same v. Bi8hop, ;)and; it 'has also been declared with positiveness that a plil!tent cannot bring a snit in his own name, at law t:>r in equityj,,joritllinfringementby a stranger, (Bir&eU v. Shaliol, 112U. S. 486,.6" Sup. Ct. Rep. 244.) In this· case, the Cleveland Company is really a co-defendant, in view of' the Thomson-Houston Company's trolling· ownership of its stock; ..but,being a resident of Ohio,,it cannot· beise;rved'with process, as a co-defendant, in this suit. .Though it cannot be compelled to:comEHntocourtas a. defendant, "a court of equity looksav:Silbstance rather than form.;, When it, has jurisdiction of the pa.rties{lit grantstheappltopriate relief, whether they come as plaintiff or Wall. 0205,) and places them according to the 'real positions which they respectively occupy in the controversy. The necessitr of making ,the owner of the patent a party in an action for is authoritatively declared in. Waterman v·. Makenzie, 138 U. S. 252, HSu}>. Ct; Rep'.: 884, as foilews: "In equity"asinJaw, when the transfer amounts to a license, only, the title remains in the owner of the patent,. lind' Buit must be brought in his name,and never in the name of the licenaeealonej unless that is neeessary to prevent an absolute failure of justice, atswhen.:the!patentee is the infringer and cannot Bue himself." . Itrthis 'caSe, it isrtrtttHhat the Cleveland Company is called upon to attack thescts oHts controlling owner, and, in a certain sense, to sue for its owcdnfringement;!(yet the two corporations are separate legal en· tities; one carr sue the. otherjand it is. not necessary for thelioensee to , sue alone, in orde,r, Ito. prev.ent an absolute failure of justice. When the owner is not the infringer, rand therefore cal'lllot be made a defendant, if the to have 'an opportunity to assert his alleged rights he is at a great, disadvantage, i unless he has the power of bringing a suit in equity in the name of the owner, though against his will. In my opinion; he; has, primajaciej'soch aniniplied power; Whether a court of equity.w:ould perluita wanton Of1i,J;ij.ust or inequitable use oLtha name of the dwnet·l)fthe patent, .by the licensee aLthe bare right fosell within a limited territory,:is a question which does not apparently arise, and upon which I express no opinion. The motionis.denied.
. X>UG.!N
v. GREGG'· .
221
DUGAN
(Oircuit.Oov,rt,
S. D.
Nco.t1 Y01'1f, NovelI1\)er 16, 1891.)
t.
. 1/ined booli and index so a.t'!'lWged by uniting one edge of the QOver, leaf of the in. dextothe o·uter edge ot one of the leaves of the book, that.'the index may be withdl'Q'Wn·from between the covers of the book and again retilrnf'd to its place, without turning the pages of the book or losing pl&96, involved a patentable invention, and not a mere mechanical adaptation.
SAME-CON8TBUCTION OF OUIM-INFtlINGEMENT.·
. The claim was for ."the combination, with a·b<Iokprovided with a leaf, 0, free of the book-cover, to its rear edge, " of an index by itp co,VE\r·leaf to loaf,.O. In thespecifteations the patentee says: "The book W.ill pre.ferably be p.roVlded wl.tli a speOialleaf. of considerable strength, and bonnd or united firmly to the bO* cover, B, 'tt the point, A, or at IIuch a point distant from the. edge of the cover, .B, as will prOvide room enough to rccei the index when folded there between." Held, ttJat the claim should be construed to mean that the le"'f,'O, should be fre.eot the boo'k-covllr to the leaf'srllBr edge, and not to the rear edge,; ,and. hence an index connected with a leaf which is united to the .Dook-cover some diatance.frQm the cover's rear edge constitutes an infringement.
In Equity. Suit by George Dugan . fringement of a patent. . Edwin H. Brown, for complainant. Francis Forbes, for defendant.
Thornton F. Gregg for in-
COXE, J., This is an equity suit forth.8 of letters patent No. 383,543, granted to Robert M. Rigby, May 29, 1888. and by him assigned to the complainant. The invention relates generally toa combined book and index where the index is independent of the book, but combined with it SO that both can be referred to at the Same time. The object of the inventor was to connect the two so 88 to facilitate a more ready arid convenient handling thereof. This is accoml'lished by "uniting one edge of one of the leaves of the index to the etige of one of tlle leaves of the book, whereby the index may be confined or withdrawn from between the covers of. the book after reference or other use," The advantage plaimedfor the invention is that at any time the index may be pulled out beyond the bqok by a simple movement of one hand and to its position in the book withoutn6returned by the same cessitating the turning of any of the pages of theb()ok und without losing the place in the book which the reader is consulting. The claim is as follows: '
"In a combined book and index. the combination, wIth a book prOVided with a leaf, C, free of the book-cover. to its tear edge, of an index provide<J with a leaf or cover, F, the free edge of the latter beingftexibly united to the free edge of the leaf, C, wbereby the index is independent, of the book-cover and may be inserted and confined betweentbe book-cover iand tbp leaf, 0, with the front edges of its leaves outermost, SUbstantially as described."
The defenses are non-infringement and lack of novelty and invention, Rigby's contribution to the art was a simple one', and yet he accom" pUshed a useful result in a better way than it had been done before. As defendant's expert puts it: .