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these cases lends support to the contention that the patent grant confers upon the patentee the right to dictate the price at which patented articles absolutely sold by him shall be resold by his purchaser. In the Bobbs-Merrill Case, supra, which involved the right of an owner of a copyright to restrict the price on resale, it was said (210 U. S. 345, 28 Sup. Ct. 724, 52 L. Ed. 1086) of the Bement Case that:

It was "between the owners of the letters patent as licensor and licensees, seeking to enforce a contract as to the price and terms on which the patented article might be dealt with by the licensee. The case did not involve facts such as in the case now before us, and concerned a contract of license sued upon in the state court, and, of course, does not dispose of the questions to be decided in this case."

The Creamery Package Case merely held, so far as material here, that a contract by which the manufacturer of a patented article appointed another and distinct manufacturer, selling like articles, his exclusive agent for the output of the factory does not violate the Sherman Act. Manifestly, neither of these decisions relates in any way to restrictions upon the right of resale of patented articles purchased absolutely. Not only has the Supreme Court not held that the right given by the patent law extends to a control of the price at which articles absolutely sold by the manufacturer patentee could be resold by his vendee, but that court has repeatedly held the contrary.

In the Sanatogen Case, supra, where it was held that an attempt to reserve the right to fix the price at which a patented article fully and completely transferred should be resold by the vendee is futile under the statute, it was said (229 U. S. 10, 33 Sup. Ct. 617, 57 L. Ed. 1041, 50 L. R. A. (N. S.] 1185, Ann. Cas. 1915A, 150):

“The right to make, use and sell an invented article is not derived from the patent law."

And again (229 U. S. 17, 33 Sup. Ct. 620, 57 L. Ed. 1041, 50 L. R. A. [N. S.) 1185, Ann. Cas. 1915A, 150):

“The right to vend conferred by the patent law has been exercised, and the added restriction is beyond the protection and purpose of the act.”

This proposition was recognized and applied in the Victor Case, supra; and see by analogy the Universal Film Case, supra, 243 U. S. at page 513, 37 Sup. Ct. 416, 61 L. Ed. 871.

Henry v. Dick, 224 U. S. 1, 32 Sup. Ct. 364, 56 L. Ed. 645, Ann. Cas. 1913D, '880, lends no support to the plaintiff's propositions. In that case contributory infringement was found in the direct sale (to the purchaser of a patented mimeograph) of a kind of ink suitable for use with the machine, with knowledge by the seller of a license restriction that the mimeograph be used only with ink made by the vendor, and with the expectation that the ink sold would be used with the machine. In the Sanatogen Case, supra, the Dick Case was distinguished by the consideration that in that case merely a qualified title passed to the purchaser, while in the Sanatogen Case the absolute title passed; and in the recent Universal Film Case, supra, 243 U. S. 518, 37 Sup. Ct. 416, 61 L. Ed. 871, the Dick Case was distinctly overruled.

Counsel cite several cases thougint to be inconsistent with the views we have thus far expressed. Many of these cases were referred to in the Kellogg Case, supra. But it seems enough to say that we find in none of them anything opposed to the propositions we have stated, except so far as such cases are in conflict with the decisions of the Supreme Court, notably in the Sanatogen, Victor and Universal Film Cases, supra. We find nothing in either the Clayton Act (Act Oct. 15, 1914, c. 323, 38 Stat. 730) or the federal Trade Commission Act (Act Sept. 26, 1914, c. 311, 38 Stat. 717 [Comp. St. 1916, $$ 8836a8836k]) validating price restrictions by a vendor on resale of property sold absolutely by him.

But counsel contends, and with especial emphasis, that the decisions of the Supreme Court in both the Bobbs-Merrill and Sanatogen Cases were grounded "solely upon the principle that the owner of a patent or copyright cannot qualify the title passed by means of a mere notice attached to the chattel, so as to restrict third persons in the sale of such articles”; and it is argued that the instant case is distinguished from the cases mentioned by the existence of express contract between the manufacturer-patentee and the dealer. It is true that in the Bobbs-Merrill Case (which involved a copyrighted book) the wholesale dealers from whom defendants purchased copies of the book were under no agreement to enforce the terms of the notice by retail dealers, or to restrict their sales to such dealers as would agree to observe the terms stated in the notice, which were that no dealer is licensed to sell at a less price than $1, and that a sale at a less price would be treated as an infringement of the copyright; and there was thus no claim of contract limitation or license agreement controlling the subsequent sales of the book. The hoiding (210 U. S. 350, 28 Sup. Ct. 726, 52 L. Ed. 1086) was that the copyright statutes “do not create a right to impose, by notice, such as is disclosed in this case, a limitation at which the book shall be sold at retail by future purchasers, with whom there is no privity of contract." In the Sanatogen Case it does not appear whether or not the jobber from whom appellee (a retailer) purchased the patented article was under contract relations with the patentee's selling agent not to sell below a given price. Upon the package was a "notice to the retailer" in effect similar to that in the Bobbs-Merrill Case. The case was in the Supreme Court on certificate from a Court of Appeals, and the sole question presented was whether the acts of the appellee, in retailing at less than the price fixed in the notice, constituted an infringement of appellant's patent. While the ultimate decision was limited to a negative answer to the question propounded by the Court of Appeals, the principles declared in the opinion would equally deny relief in the case of actual contract between the manu

1 It is said in the brief of plaintiff's counsel here that the Waltham Watch Company filed a brief in the Sanatogen Case calling to the court's attention that it had certain litigation pending involving the validity of written contracts, and requested the Supreme Court not to decide “any such question." Manifestly, the only question to be passed upon was that propounded by the certificate of the court below.

*

facturer and the dealer. It was said (229 U. S. 16, 17, 33 Sup. Ct. 619, 57 L. Ed. 1041, 50 L. R. A. (N. S.] 1185, Ann. Cas. 1915A, 150):

“The packages were sold [by the jobber from whom appeliee purchased) with as full and complete title as any article could have when sold in the open market, excepting only the attempt to limit the sale or use when sold for not less than $1.

The right to vend conferred by the patent law has been exercised, and the added restriction is beyond the protection and purpose of the act. This being so, the case is brought within that line of cases in which this court from the beginning has held that a patentee who has parted with a patented machine by passing title to a purchaser has placed the article beyond the limits of the monopoly secured by the patent act."

And again (quoting with approval from Adams v. Burke, 17 Wall. 453, 21 L. Ed. 700, 229 U. S. 18, 33 Sup. Ct. 620, 57 L. Ed. 1041, 50 L. R. A. (N. S.] 1185, Ann. Cas. 1915A, 150):

“When the patentee, or the person having his rights, sells a machine or instrument whose sole value is in its use, he receives the consideration for its use and he parts with the right to restrict that use. The article, in the language of the court, passes without the limit of the monopoly. That is to say, the patentee or his assignee having in the act of sale received all the royalty or consideration which he claims for the use of his invention, in that particular machine or instrument, it is open to the use of the purchaser without further restriction on account of the monopoly of the patentees.”

All italics in quotations from opinions are ours.

We are unable to see any principle upon which the existence of a contract between the manufacturer and his vendee restricting the price on resale can give right of action against the purchaser from his vendee which is denied in the absence of such contract, but in the presence of a warning notice. In each case the purchaser from the manufacturer's vendee has knowledge of the attempted restriction; in neither case is there privity of contract, between the manufacturer and the purchaser from his vendee; and this feature of lack of privity is prominent in the decision of the Bobbs-Merrill Case, from which we have quoted. Moreover, in the Victor Case the reason given (243 U. S. 497, 37 Sup. Ct. 414, 61 L. Ed. 866) for the proposition that "whatever rights the plaintiff has against the defendants must be derived from the ‘license notice' attached to each machine” is that "no contract rights existed between them, the defendants being only ‘members of the unlicensed general public,' and that the sole act of infringement charged against the defendants is that they exceeded the terms of the license notice by obtaining machines from the plaintiff's wholesale or retail agents, and by selling them at less than the price fixed by the plaintiff.”

But the question we are considering is set at rest by the recent decision in the Victor Case, for it there expressly appears (243 U. S. 495, 496, 37 Sup. Ct. 412, 61 L. Ed. 866) that the plaintiff (who was denied relief) had with each of its licensed dealers “a written contract in which all the terms of the license notice are in substance repeated," and that the dealer is authorized to dispose of machines only subject to the conditions expressed in that notice.

The instant case is not distinguished from the otherwise controlling decisions cited by the considerations that here the purchases from the retailers were covert and secret and at less than the restricted prices. While in the Sanatogen Case it does not appear whether the

244 F.-11

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price at which defendant purchased was below the restricted price, in the Victor Case it was expressly alleged that the dealers were "induced 'covertly and on various pretenses' to violate their contracts with the plaintiff, and that the sales were at less than the restricted prices.

We see no merit in the contentions earnestly pressed that the plaintiff's price restrictions were incidental only to the building up of its business and procuring the widest possible stable market, and so were reasonable and proper, as being in the interest of the public, especially in that they tended to secure constant, uniform and convenient service (including garage and repair service), which could not be had unless dealers are protected against price-cutting competition. The law cannot “be evaded by good motives”; it is “its own measure of right and wrong, of what it permits or forbids, and the judgment of the courts cannot be set up against it in a supposed accommodation of its policy with the good intention of the parties, and, it may be, of some good results." Standard Sanitary Mfg. Co. v. United States, 226 U. S. 20, 49, 33 Sup. Ct. 9, 57 L. Ed. 107; International Harvester Co. v. Missouri, 234 U. S. 199, 34 Sup. Ct. 859, 58 L. Ed. 1276, 52 L. R. A. (N. S.) 525; Thomsen v. Cayser, 243 U. S. 66, 85, 37 Sup. Ct. 353, 61 L. Ed. 597; United States v. Gt. Lakes Towing Co. (D. C.) 208 Fed. 733, 744.

The earnestness with which the validity of plaintiff's price restrictions has been pressed upon us has seemed to justify the discussion we have made of recent authorities, reference to which, especially the Sanatogen, Victor and Universal Film Cases (the two latter were made since plaintiff's original brief was prepared), so far from showing a tendency to "go back to the firm ground of the right of a patentee to absolutely monopolize the vending, as well as the manufacture and use of the patented article” indicates to our minds a constantly progressive tendency in the opposite direction. The Victor and Universal Film Cases, the latest utterances of the Supreme Court on the questions here involved, have, to say the least, marked no backward step. The invalidity of plaintiff's price restrictions is clearly demonstrated by the decisions we have cited, and no room is thus left for the charge of unfair competition in invading these restrictions.

Of the territorial restrictions we need only say that they cannot make valid a price restriction otherwise invalid.

The decree of the District Court dismissing plaintiff's bill is affirmed.

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SUNDH ELECTRIC CO. V. CUTLER-HAMMER MFG. CO.

SAME V. GENERAL ELECTRIC CO.

(Circuit Court of Appeals. Second Circuit. May 25, 1917.)

Nos. 152, 179.

1. PATENTS 328-INFRINGEMENT.

The Lindquist patents, No. 744,773 and No. 764,608, each for an electromagnet having a plurality of coils “symmetrically disposed around a central axis, the individual axis of each of said coils being parallel to said central axis," must be construed to refer, and be limited, to physical or geometrical symmetry, and not to a theoretical magnetic symmetry. As

so construed, held not infringed. 2. PATENTS COM327-SUIT FOR INFRINGEMENT-OPENING INTERLOCUTORY DE

CREE AFTER APPEAL-CONSENT OF APPELLATE COURT,

Where an interlocutory decree in an infringement suit has been reviewed on appeal, the further action of the District Court is controlled by the mandate of the appellate court; and while the latter court cannot recall the mandate after the term, it may, on request of the District Court, before entry of final decree, permit that court to open the interlocutory decree and take further testimony.

Appeal from the District Court of the United States for the Southern District of New York.

Appeal from the District Court of the United States for the Northern District of New York.

Suits in equity by the Sundh Electric Company against the CutlerHammer Manufacturing Company and against the General Electric Company. From a decree for defendant in the first case, complainant appeals; and from the decree in the second, both parties appeal. Decree in the first suit affirmed, and in the second reversed on defendant's appeal.

For opinion below, see 235 Fed. 708.

The first of the causes above entitled is an appeal by plaintiff from the final decree of the District Court for the Southern District of New York, dismissing bill in equity for alleged infringement of patents Nos. 744,773 (claims 1, 2, 3, and 4) and 764,608 (claims 1, 2, and 3), issued to David L. Lindquist. The second cause is here upon cross-appeals from the District Court for the Northern District of New York. The action is upon the same claims of the same patents, and was originally brought to restrain an infringement: consisting of the manufacture and sale of a device hereinafter called Magnet H. After trial, interlocutory decree declared infringement (198 Fed. 116), and such decree was aflirmed in this court (204 Fed. 277, 122 C. C. A. 475). Subsequently, and before any final decree, the General Electric Company manufactured and sold seven other devices, hereinafter severally called Magnets A to G, inclusive. Thereupon plaintiff filed petition for supplementary injunction against such new infringements, which, pending further hearing, was granted (217 Fed. 583). Testimony was then taken, and much evidence introduced, which would have been material and relevant upon the original hearing. Upon the completion of this proceeding, the court modified the supplementary injunction (though still holding Magnets A to E, inclusive. to be infringements) by declaring that Magnets F and G did not infringe. From decree following this opinion (235 Fed. 708), both parties appealed.

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

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