Somerby v. Buntin

Decision Date06 September 1875
Citation118 Mass. 279
CourtUnited States State Supreme Judicial Court of Massachusetts Supreme Court
PartiesJohn P. Somerby & another v. George Buntin

Argued November 24, 1874 [Syllabus Material] [Syllabus Material] [Syllabus Material] [Syllabus Material]

Suffolk. Bill in equity filed January 9, 1872, by John P. Somerby and Jeremiah Prescott, alleging the following facts:

The defendant in the year 1865, and the early part of the year 1866, invented a new and useful improvement in seats for railroad passenger cars, and, being desirous to obtain letters patent therefor from the government of the United States, or otherwise to so use or dispose of his invention as to realize money therefrom, but not having the pecuniary means to pay the expenses of obtaining said letters patent, or otherwise putting his invention favorably upon the market, applied to the plaintiffs for assistance in both of these respects, and offered the plaintiffs each one third part of the property in the invention, and of all moneys and emoluments which should result therefrom, as compensation for affording him the solicited assistance. The plaintiffs believing the said invention to be useful, and that, with the expenditure of the necessary amount of money, and the devotion of time, skill, care and labor, it could be made remunerative, accepted the said offer of the defendant; and an oral agreement was made between the parties that the invention, by which all letters patent which should be granted therefor, should be the joint property of the plaintiffs and the defendant, each to be the owner of one third part thereof, and that each and all of the parties should use his best efforts to make said invention available and remunerative for the common benefit of all the parties. In pursuance of this agreement, application was made in the name of Buntin for letters patent of the United States, and the expenses of making and prosecuting the application were paid by Somerby, and sales of the right to use the invention were made principally through the agency of Prescott, from which sales divers sums of money were received, which were divided between Buntin and the plaintiffs in the proportion of one third part to each, in pursuance of the agreement. The invention was rapidly advancing in public favor, chiefly through the labor, expenditures and exertions of the plaintiffs, and the sales of rights to use the same were increasing in a similar ratio, so that the proceeds of the sales had become large and were steadily augmenting, and would have yielded to the plaintiffs a large income for their time, labor and expenditures in the premises, but that the defendant early in the year 1867, while the aforesaid application to the United States for letters patent was pending, and without the knowledge or consent of the plaintiffs, or either of them, made application to the United States for letters patent in his name, and in another form, for the said invention, on which application letters patent were granted to him, on or about April 2, 1867, for a "design for end frame of a car seat," which was the invention of the defendant that had become the property of the defendant and the plaintiffs. Upon the receipt of the said letters patent by the defendant, he refused to assign any part thereof to the plaintiffs, and denied that they had any right therein or in the invention, or in the proceeds thereof, and proceeded to make large sales of rights to use the invention under the letters patent, and has received therefrom divers large sums of money for which he refuses to render any account to the plaintiffs, or to make any division thereof with them, and pretends that all said sums of money belong to him, and that the plaintiffs, or either of them, have no property or right therein.

The prayer of the bill was that the defendant might be restrained from making any sale or assignment of the said letters patent, or of the invention, to any person or persons other than the plaintiffs without their consent; that he be compelled to assign and transfer to each of the plaintiffs one third part of said letters patent and invention; for an account of all sums of money and of all other considerations received by him for sales under said letters patent or for licenses to use the invention; and the payment to each of the plaintiffs of such sums of money and other considerations as should be found to be due to them respectively; and for general relief.

The defendant demurred to the bill upon the grounds which appear in the opinion. The case was heard by Gray C. J., upon the bill and demurrer, and reserved, at the request of the parties, for the consideration and determination of the full court.

Demurrer overruled.

T. L. Livermore, for the defendant. 1. The contract is within the statute of frauds. It is for the sale of goods or merchandise. Tisdale v. Harris, 20 Pick. 9. An invention is property, and as capable of being sold as is a chose in action, a sale of which is within the statute. Baldwin v. Williams, 3 Met. 365. Letters patent may be sold before they are granted. Herbert v. Adams, 4 Mason 15. Nesmith v. Calvert, 1 Wood. & M. 34. Gay v. Cornell, 1 Blatchf. C. C. 506. Rathbone v. Orr, 5 McLean 131. Rich v. Lippincott, 2 Fish. Pat. Ca. 1. Gayler v. Wilder, 10 How. 477.

The contract set up must be construed as providing that the parties should use their best efforts in making the invention "available and remunerative," and should share the profits during the existence of "all letters patent which should be granted therefor," which would be at least seventeen years, (U. S. St. 1861, c. 88, § 16,) or else no time is prescribed for its continuance. In the first case, being a contract not to be performed within one year, it is within the statute; Packet Co. v. Sickles, 5 Wall. 580; Hill v. Hooper, 1 Gray 131; Doyle v. Dixon, 97 Mass. 208; and being inseparable, will not sustain a decree for a conveyance or an account. Irvine v. Stone, 6 Cush. 508. McMullen v. Riley, 6 Gray 500. In the second case, the contract for a division of profits is void for uncertainty, and there is no time fixed for which an account may be decreed; for the mere joint ownership of a patent gives no right to the owners to participate in profits. Boston & Maine Railroad v. Babcock, 3 Cush. 228, 232. Vose v. Singer, 4 Allen 226. Curtis on Pat. (3d ed.) §§ 186--191, and cases cited.

2. The retention in Gen. Sts. c. 113, § 2, of the clause conferring power to enforce specific performance of written contracts, limits the jurisdiction of this court to that class of contracts. In the construction of a statute every word should have effect. Opinion of Justices, 22 Pick. 571, 573. Commonwealth v. Intoxicating Liquors, 105 Mass. 178, 179. The maxim expressio unius est exclusio alterius, "never more applicable than when applied to the interpretation of a statute," (Broom's Leg. Max. 5th ed. 585, 664,) affords the only interpretation of this statute which at the same time gives every word effect and makes it consistent with the course of legislation on the subject. The general jurisdiction clause was enacted in 1857. St. 1857, c. 214. In 1859 it was enacted that specific performance of written contracts for the sale of land might be enforced against guardians of the contractors subsequently appointed, and the same was reenacted with the similar provision as to executors and administrators (St. of 1855, c. 374, § 1) in the Gen. Sts. c. 117, §§ 5, 6, where concurrent jurisdiction is given to this court and the probate courts. The Legislature either intended to give a remedy against guardians in this court, coextensive with the jurisdiction as to specific performance given to it by the St. of 1857 and the Gen. Sts. c. 113, § 2, or else it left contracts entered into by persons, who were afterwards put under guardianship, to be enforced under the general jurisdiction clause in the difficult and dilatory method before pursued in courts of equity, according to the "practice and usage" of which all oral contracts for the sale of land will be enforced in case of fraud, (Glass v. Hulbert, 102 Mass. 24, 32,) even against one who becomes insane after entering into it by a decree for possession and performance. Pegge v. Skynner, 1 Cox Ch. 23. Owen v. Davies, 1 Ves. Sen. 82. Hall v. Warren, 9 Ves. 605.

3. The plaintiffs allege that the defendant offered them "each one third part of the property in the invention and of all moneys and emoluments which should result therefrom as compensation for affording him the solicited assistance," and that it was agreed "that each and all of the parties should use his best efforts to make said invention available and remunerative for the common benefit of all the parties," but do not allege that they so used "their best efforts"--which is a fatal defect. Ely v. McKay, 12 Allen 323, 329.

The plaintiffs do not offer to do equity. There is no allegation that they have made no sales or realized no profits since the defendant refused to share his profits with them. They do not offer to account, neither do they offer to use their best efforts for the common benefit nor divide profits in the future, and they ask to share all the defendant's profits and to restrain him from conveying his share of the patent.

If there are not mutual accounts to adjust, this court has no jurisdiction to compel an account; because an action for money had and received, or on the alleged agreement, would be a plain, adequate and complete remedy at law, and it would not be according to the usage and practice of courts of equity to grant this relief. Pool v. Lloyd, 5 Met. 525. Mitchell v. Green, 10 Met. 101. Gen. Sts. c. 113, § 2. Dan. Ch. Pract. (4th Am. ed.) 551, and n. 3.

The bill prays that the defendant "may be restrained from making any sale or assignment of...

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