Majority
p. 522SAMUEL D. HOVEY and ELBRIDGE S. HOVEY, Plaintiffs and Appellants, v. THE RUBBER TIP PENCIL COMPANY, Defendant and Respondent. Before Barbour, Ch. J., Freedman and Spencer, JJ. Decided December 31, 1871.
Headnote
Patents. —Injunctions in State courts.1. Notices to the public, restraint of right to issue.'
а. One being the proprietor of a patent for the manufacture of a certain article, has a right to issue and circulate notices cautioning the public against purchasing any such articles from persons not licensed by him.
б. The issuing and circulating of said notices cannot be restrained by a State court on allegations that the patent of the issuer is invalid, or that the article cautioned 'against is not an infringement of the patent, or that he who vends the article cautioned against has a prior or an improved patent, if they are contested—
a. Because a decision in the contested matters would involve the determination of conflicting claims under patents, the exclusive jurisdiction whereof is vested in the United States courts.
Appeal from judgment.
This suit was brought to obtain a perpetual injunction by judgment restraining defendant from continuing to publish the following circular:
Ebbrhard Faber, Pres’t. Levi L. Tower, / ,,g Jos. Reckendoreer, Treas. George Merritt, j ^
THE RUBBER TIP PENCIL COMPANY. Incorporated July 20, 1869, under the laws of the State of New York.
Capital $378,000.
p. 523
Act of Legislature, February 17, 1848, and Supplementary Acts.
Office and Warerooms, 133 William-street, N. Y.
New York, Oct. 1, 1869.
M
Having purchased the following letters patent:
No. 19,783, March 30, 1858; No. 35,355, May 20, 1862; No. 35,467, June 3, 1862; No. 38,892, June 16, 1863; No. 46,358, February 14, 1865; No. 62,555, March 5, 1867; No. 2,595, reissue May 7, 1867; No. 66,938, July 23, 1867; No. 80,485, July 28, 1868; No. 85,861, January 18, 1869 ; and all the rights, titles, or interests connected with, or in any way affecting
RUBBER TIPS FOR PENCILS AND RUBBER TIP PENCILS,
including all the appurtenances for making, and stock on hand of same, we would inform the public, that we own the exclusive and sole right to manufacture ánd sell these goods!
Our letters patent, comprising all the fundamental principles for the manufacture of rubber tips, in connection with our ownership of the exclusive manner or way of making the same, renders our position impregnable ; and it is our intention to punish to the extent of the law all infringements, should any exist or arise.
We caution all parties against purchasing any rubber tips or rubber tip pencils of any shape, style, hind, or brand, or the application, or connection in any manner or form, of a piece of rubber to the end of a pencil, causing it to assume the appearance or warrant the name of a rubber tip pencil; unless such goods are licensed under one of the abone mentioned Letters Patent, or are labeled with the stamp of the Company.
Which publication was alleged by the plaintiffs to be injurious to their business of manufacturing and
p. 524I. Under the facts so found by the learned judge the plaintiffs were entitled to the relief demanded in the complaint. 1. The decision arrived at by the learned judge w’as based upon an entire misapprehension of the case at bar. 2. The second conclusion of law is founded upon a similar misapprehension. No such supposed questions arose in the case. The question of infringement or validity of patents could not possibly arise in this case, {a.) It is true that all actions, suits, controversies and causes whatever, arising under the patent laws, are without exception originally cognizable in the courts of the United States, and their jurisdiction is exclusive (5 U. S. Stat. at L. 124 ; Act of 1836, § 17). (5.) Both plaintiffs and defendant having patents, are by the United States authorized to manufacture these articles, (c.) The statutes of the United States provide adequate remedies for the protection of patents. Such remedy is wholly statutory, and the' defendant, if claiming to.be injured by the infringement of any patent owned by it, must follow the statute if it desires redress (Act of 1870, § 55). (d.) Any investigation . into the validity or effect of the plaintiffs’ patent can only be had in the courts of the United States. Until this investigation be had, and the patent of the plaintiffs declared invalid or to be an infringement on those of the defendants, the law presumes that they manufacture lawfully, and the defendant has
selling rubber tip pencils under a patent which had been granted to them. The defendants claimed in their answer that they had the sole and exclusive right, under and by virtue of several patents of which they were the owners, to make and vend the rubber tip pencils described in their circular, and that the patents of the plaintiffs, if any they had, were invalid.
Monell and Zeglio, attorneys for appellants, and Ambrose Monell, of counsel,—urged :
p. 525no right to claim that it holds the sole and exclusive right to manufacture, (e.) The authorities are numerous that where the question of patents is only collaterally in issue, that fact does not divest the State court of jurisdiction. It is only where the infringement of a patent is in issue that the United States circuit court has jurisdiction (Slemmer’s Appeal, 58 Penn. 156 ; Sherman v. Champlain Transportation Co., 31 Vt. 162 ; Cross v. Huntley, 13 Wend. 385 ; Head v. Stevens, 19 Id: 411 ; Hotchkiss v. Oliver, 5 Denio, 314 ; Burrall v. Jewett, 2 Paige, 134, 146. (f.) The only relief demanded by the plaintiffs is the restraining of the publication of a circular, which the court has held to be in fad damaging to, their business. The question whether the defendant shall be restrained from issuing the circulars complained of in this action, does n'ot involve the validity of the patents of either the plaintiffs or defendant, or the infringement of the one on the other.
II. The case at bar is one peculiarly entitled to equitable interposition and relief. 1. Ho action at law would enable the plaintiffs to recover damages (even if ascertainable) commensurate with the injury inflicted. 2. Indeed, if driven to such action, their entire business would be destroyed by the repeated issues of circulars, and their only remedy would be in commencing a multiplicity óf suits. For this reason, as well as for the constant recurring nature of the grievance, equity is the only remedy for the proper protection of the plaintiffs in their' rights (Messerole v. Goldsmith, the opinion per Ingraham, J. ; Springhead Spinning Co. v. Riley, 6 Paw Reports, Eq. Series, 551 ; Dixon v. Holden, 7 Ed. 489 ; Brandreth v. Lance, 8 Paige, 24; Burrall v. Jewett, 2 Paige, 145).
John S. Washburn, attorney and of counsel for respondent,—urged :
p. 526I. The court properly decided that “if defendant, under its letters patent, had the exclusive right to manufacture and vend rubber tips for pencils and rubber tip pencils (including therein pencils made in the manner as manufactured by plaintiffs), then it is its right, and a matter of fair play to the public, to give notice of its claim, and a warning, so that penalties may not be incurred by the public for vending without permission of the patentee an article which is patented (Wren v. Wield, Q. B. vol. iv. p. 70 ; Pitts v. Donovan, 1 Maule & S. 639.) The case of Snow v. Judson, 38 Barb. 210 , which was claimed by plaintiffs at the trial to sustain this action, is not only inapplicable for that purpose, and so held by, the court, but confirms the principle stated. It is, in fact, clearly within, and illustrates the exception suggested in Wren v. Wield ; for the circumstances were “ such as to make the bringing of an action altogether wrongful.” It was an action at law for damages, and the questions arose upon demurrer to the comolaiht whereby all its allegations were admitted. The court, Johnson, J., said : “ The facts, as admitted by the demurrer, are that the defendant intentionally made false statements in regard to the articles manufactured by plaintiffs, for the purpose of preventing sales by them of such articles, and thereby did prevent such sales and greatly injured them in their business.” . . . The only cause of action * alleged is the false assertion and resulting injury, and the demurrer admits the speaking of the words, their falsity, and the alleged injury.” . . . The defendant comes admitting the fraud and injury, and says that the action cannot be maintained in this court, because he holds from the general government an exclusive right to the use of a particular article, which he, though falsely, claimed the plaintiff’s article resembled.”
p. 527II. The court properly decided that the case, as presented, is one over which this court has no jurisdiction. By the act of Congress of 1793, section 5, it was provided that an action might be brought “in the circuit court of the United States, or any other court having competent jurisdiction.'" This section was repealed by section 4 of the act of 1800; and by section 3 of that act, it was provided that such action might be brought “ in the circuit court of the United States having jurisdiction thereof." In Burrall v. Jewett, 2 Paige, 134, it was held by Chancellor Walworth that the State courts had jurisdiction, and that neither said last-named act,, nor the subsequent act of Congress of 1819, although the latter extended the jurisdiction of the United States circuit court, necessarily rendered the jurisdiction of that court exclusive. But the same chancellor, in Gibson v. Woodworth, 8 Paige, 131 (1840), after the passage of the act of Congress of 1836 (sections 16, 17), held that by force of the change made fcy that act, the United States court had exclusive jurisdiction. And in Dudley v. Mahew, 3 N. Y. 14 (1849), the court of appeals sustained such exclusive jurisdiction of the United States courts. This has ever since, it is believed, remained settled, not only in this State, but generally, except that where questions as to a patent arise in a State court, which has otherwise jurisdiction, only collaterally, and not so as to render essential a decision as to the validity or invalidity of the patent, or were fraud is proved. There are decisions to the effect that to that, and only to that extent, the State court can assume jurisdiction. Thus, in Tomlinson v. Battel, cited in Law's Am. Dig. 229, pl. 11, 12, as having been decided in the N. Y. superior cohrt in 1857 (not reported), Duer, J., is stated to have held that, when a question as to the construction, and “perhaps as to the validity of a vatent" arises collaterally
p. 528in the progress, and upon the trial, of a cause, the necessity of its determination will not oust a State court of the jurisdiction which it may have derived from the nature of the action and state of the pleadings. But that where the existence and validity of a patent lie at the very foundation, a State court cannot entertain jurisdiction. And the provisions of the act of 1836, in this respect, are incorporated in the recent act of Congress of 1870 (section 55) in still more direct language. In Ball v. Murry, 10 Penn. 113 , in an action on bonds given in payment of the assignment of a patent, it was held that the obligors could not raise the question of the validity of the patent until it had been settled elsewhere. And in Elmer v. Pennal, 40 Maine, 434, it was held that the United States courts have exclusive jurisdiction, and that in a suit on a note given for the conveyance of a patent right, proof that the patent was void, for being an infringement of a prior patent, was not admissible without that fact having been determined by a court of competent jurisdiction. III. The judgment appealed from is justified, also, upon other grounds, which were presented at the trial, but the decision of which was rendered unnecessary by that of the court upon the questions already discussed. 1. The claim of the plaintiffs is not the subject of an injunction. A publication of such character as to surreptitiously appropriate .the business reputation acquired by, and belonging to, the plaintiff, will be enjoined. But the present case does not come within the rule or its reason. Even did.the circular amount to a libel upon the title, character or validity of the alleged patent of said Hovey, a court of equity would not interfere, and would have no jurisdiction to restrain its publication. Clark v. Freeman, 10 Bevan, 112. And in Brandveth v. Lance, 8 Paige, 24, Chancellor Walworth expressed himself most strongly against, the right of the court to restrain a man from publishing a
p. 529libel. The remedy, if the plaintiffs be entitled to any, which, in the present case, upon the grounds stated, it is claimed they are not, lies at law for damages, which they have not exhausted, no? even attempted to assert, and which is not, for any reason, shown or claimed to be inadequate.
A grant to a patentee of an exclusive right to manufacture and vend an article described therein is a grant of property, and if the validity of the patent is unquestioned, State Courts will protect the owner of such property in the enjoyment thereof, by means of a decree of injunction, to the same extent as they would do were the subject matter of the litigation of any other description. But where the validity of the plaintiff’s patent is put in question by the pleadings in a State Court, and the defendant presents such proofs upon the trial as render it necessary for the court to examine and pass upon conflicting patents or claims of priority in invention in order to determine whether the plaintiff has such a property in the subject matter of the grant as entitles him to the exclusive and unmolested use of it, and an objection is taken to the jurisdiction of the court for that reason, the bill must be dismissed ; for, in such cases, the jurisdiction is in the courts of the United States, exclusively. Gibson v. Woodworth, 8 Paige, 131 ; Dudley v. Mahew, 3 N. Y. 14 . The appellant in the case before us has failed to insert in his case and print the several patents read in evidence, or even his own; and, of course, it is impossible for us to determine to what extent, if at all, they conflict with each other. The learned judge before whom the trial was had, however, found, in effect, that there was enough evidence before him, tending to establish a conflicting claim on the part of the defendants, to oust the court of jurisdiction, and, thereupon, dismissed the com
p. 530
plaint; and we cannot say, upon the proofs laid before . us, that he erred in so doing. The judgment should, therefore, be affirmed,'with-costs.
Cases cited
- Cross v. Huntly 13 Wend. 385 p. 525
- Snow & Bush v. Judson 38 Barb. 210 p. 526