3 N.Y. 9, Dudley v. Mayhew

Citation:3 N.Y. 9
Party Name:DUDLEY v. MAYHEW.
Case Date:December 01, 1849
Court:New York Court of Appeals

Page 9

3 N.Y. 9

DUDLEY

v.

MAYHEW.

New York Court of Appeal

December 1, 1849

Page 10

COUNSEL

S. G. Havens, for appellant, cited Const. U.S. art. 3, §§ 1, 2; Judiciary Act of 1789, § § 9, 11, 13, 25; Delafield v. The State of Indiana, (2 Hill, 159;) 3 Story on the Const. 624; 17 John. 5; 2 Kent's Com. 367, 368; Gibson v. Woodworth, (8 Paige, 132;) Burrall v. Jewett, (2 id. 134;) Clark v. Smith, (13 Peters, 203;) 9 Law Rep. 493; Osborne v. Bank of The United States, (9 Wheat. 738;) Livingston v. Van Ingen, (1 Paine's C. C. Rep. 45;) 3 Story on the Const. 1147, and cases cited; 1 Chit. Plead. 159, Springfield ed.; 2 id. 764, and cases cited; Phillips on Patents, 382; 9 John. 507, and cases cited; Borden v. Crocker, (10 Pick. 383;) Beckford v. Hood, (7 T. R. 620;) King v. Harris, (4 id. 205;) Castle's case, (Cro. Jac. 644.)

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J. L. Talcott, for respondent.

I. The bill in this case was filed for the sole purpose of establishing the validity of a patent, and to restrain the infringement of the same. The jurisdiction to do this is, by the constitution, vested exclusively in the federal courts, and the court of chancery of the state of New-York had no jurisdiction to entertain the suit.

The power to restrain the defendant from making and vending the stove in question does not exist in the court of chancery, independently of the constitution and laws of the United States; and no power of jurisdiction can be conferred upon the state courts by congress under the constitution. (Constitution U.S. Art. 3, § § 1, 2; Martin v. Hunter's Lessee, 1Wheat. 334, 5, 7; 3 Story on the Constitution, § § 1748, 1749; Mannhardt v. Soderstrom, 1 Binney, 138; U.S. v. Lathrop, 17 John. 4; 1 Kent's Com. 1st ed. 372; 3 McLean, 186; Curtis on Patents, p. 452, § 406; Phillips on Patents, 378.)

II. And if congress has the power to confer upon the state courts jurisdiction to enforce the patent laws, yet it has not done so; but on the contrary, has vested the jurisdiction exclusively in the federal courts, by necessary implication. (Patent Law of 1836, § 17; 5 Peters' Laws U.S. 124; Almy v. Harris, 5 John. 175; 5 Cowen, 165; Aldrich v. Hawkins, 6 Blackf. 125; Lang v. Scott, 1 id. 405; Parsons v. Barnard, 7 John. 144, and see Patent Law of 1837, § 2; 5 Peters' Laws U.S. 191; 4 Burr, 2319, 2323; 5 Mass. 514; 2 Watts & Serg. 163; 2 Penn. 462; 1 Paine, 45; 9 John. 507.)

III. If the court of chancery had not originally any jurisdiction of the subject matter, the alledged stipulation could not confer it. It is not a personal privilege which may be waived by the parties. (Coffin v. Tracy, 3Caine's Rep. 129; Davis v. Packard, 6 Peters, 276; Overstreet v. Brown, 4McCord, 79; Lindsley v. McLelland, 1 Bibb 262; 3 Blackf. 48.

STRONG, J.

It was insisted on the argument before us, as it had been in the court below, by the counsel for the plaintiff, that the defendant was precluded from raising the question of jurisdiction by his

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written stipulation that he would not do so, given for a valuable consideration, and filed with the examiner as a document in the cause. It may have been a breach of faith and of good morals in the defendant to insist upon the objection after his solemn agreement to waive it; but that is no reason why any court should adopt the strong measure of granting a perpetual injunction in a case where it has no jurisdiction. It has been long and correctly settled that not even a direct assent by the parties can confer jurisdiction, or render the judgment of a tribunal in a matter over which it has not by law any cognizance, effectual. (Coffin v. Tracy, 3Caines' Rep. 129.Davis v. Packard, 7 Peters, 276.)

It was contended, although I think not strenuously, by the plaintiff's counsel, that inventors have at common law and independently of the act of congress, the exclusive right to make and vend implements according to their models, and that consequently the statutory remedies are merely cumulative, and that the pre-existing right to resort to our state courts for redress in such cases is not impaired. It was formerly supposed in England, that the author of a literary composition had, independently of any act of parliament, the exclusive right to print and publish it for sale, and could maintain an action against any one who should invade such right. And it was so decided by a majority of the judges of the court of king's bench, in opposition to the opinion of Justice Yates, in the case of Miller v. Taylor, (4 Burr. 2305.) But that case was overruled, and the able opinion of Judge Yates finally prevailed in the House of Lords, in the case of Donaldson v. Becket et al. decided in 1774. (7 Bro. P. C. 88.) The case of Buckford v. Hood, (7 Durn. & East, 620,) is not at all in conflict with Donaldson v. Becket. Lord Kenyon's opinion proceeded expressly on the ground that the act of parliament, while conferring a right, provided no remedy to the proprietor for its invasion, and he said that for that reason the common law remedy attached; and Judge Gross said that although the author's right was extended for a second term, yet that the statutory penalties applied only to the first; and if there was no redress at common law there would be a

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right during the period prescribed in the second term without any means of enforcing it.

But although there was at first some difference of opinion among the English judges as to the alledged common law right of literary authors, none of them ever supposed that the inventor of a mechanical improvement had at common law the exclusive right to make and vend instruments according to his model, after he had published it to the world. All the judges admitted, in Miller v. Taylor, that the inventor had no such right independently of his patent. Willes, J. said, "As by the communication of an invention in trade, manufactures or machines, men are taught the art or science, they have a right to use it." Astor, J. remarked that "the property of the maker of a mechanical engine is confined to that individual thing which he has made; and the machine made in imitation or resemblance of it is a different work in substance, materials, labor and expense, in which the maker [inventor] of the machine can not claim any property." "The imitated machine, therefore, is a new and different work." And Yates, J. said, "We all know whenever a machine is published (be it ever so useful and ingenious) the inventor has no right to it, but only by patent." That eminent judge, however, could not discover any material difference in this respect between literary works and mechanical inventions. He thought that neither of them had the requisite common law indicia of property. His opinion finally prevailed in the House of Lords, where it was fully sustained by Barons Eyre, Perrot...

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142 practice notes
  • 3 Mont. 282 (Mont. 1879), Meyendorf v. Frohner
    • United States
    • Montana Supreme Court of Montana
    • Invalid date
    ...of this kind, where the statute has provided a remedy and provided adequate means for its protection and enforcement. Dudley v. Mayhew, 3 N.Y. 15; Cofield v. McClellan, 1 Col. 373; Territory v. Ross Deegan, ante, 82; Pimental v. City of San Francisco, 21 Cal. 354; Peabody v. Phelps, 9 id. 2......
  • 118 N.Y. 19, Flynn v. Hurd
    • United States
    • New York New York Court of Appeals
    • December 10, 1889
    ...v. Lance, 59 id., 604; Super. v. Briggs, 2 Den. 26; First National v. Lamb, 57 Barb. 434; Almy v. Harris, 5 Johns. 175; Dudley v. Mayhew, 3 N.Y. 9, 15; Campbell v. Grooms, 101 Penn. St. 481, 484; Nat. B'k v. Super., 106 N.Y. 492, 493; People v. Everett, 93 id. 397.) The facts expressly foun......
  • 147 N.Y. 329, Isola v. Weber
    • United States
    • New York New York Court of Appeals
    • October 29, 1895
    ...Suprs., 65 N.Y. 300; Salter v. U. & B. R. R. Co., 86 N.Y. 401; In re Lee & Co.'s Bank, 21 N.Y. 12.) The rule of Dudley v. Mayhew (3 N.Y. 9), that when rights are conferred by statutes and specific remedies provided therein for their protection, such remedies are exclusive and must b......
  • 156 N.Y. 36, People ex rel. Feeny v. Board of Canvassers of Richmond County
    • United States
    • New York New York Court of Appeals
    • May 10, 1898
    ...by the statute, and a party is restricted to the remedy and forum provided. (Sutherland on Statutory Construction, § 399; Dudley v. Mayhew, 3 N.Y. 9, 15; Hollister v. Hollister Bank, 2 Keyes, 245, 248; Rex v. Robinson, 2 Burr. 799; Plankroad Co. v. Morley, 23 N.Y. 554; Darlington v. Mayor, ......
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142 cases
  • 3 Mont. 282 (Mont. 1879), Meyendorf v. Frohner
    • United States
    • Montana Supreme Court of Montana
    • Invalid date
    ...of this kind, where the statute has provided a remedy and provided adequate means for its protection and enforcement. Dudley v. Mayhew, 3 N.Y. 15; Cofield v. McClellan, 1 Col. 373; Territory v. Ross Deegan, ante, 82; Pimental v. City of San Francisco, 21 Cal. 354; Peabody v. Phelps, 9 id. 2......
  • 118 N.Y. 19, Flynn v. Hurd
    • United States
    • New York New York Court of Appeals
    • December 10, 1889
    ...v. Lance, 59 id., 604; Super. v. Briggs, 2 Den. 26; First National v. Lamb, 57 Barb. 434; Almy v. Harris, 5 Johns. 175; Dudley v. Mayhew, 3 N.Y. 9, 15; Campbell v. Grooms, 101 Penn. St. 481, 484; Nat. B'k v. Super., 106 N.Y. 492, 493; People v. Everett, 93 id. 397.) The facts expressly foun......
  • 147 N.Y. 329, Isola v. Weber
    • United States
    • New York New York Court of Appeals
    • October 29, 1895
    ...Suprs., 65 N.Y. 300; Salter v. U. & B. R. R. Co., 86 N.Y. 401; In re Lee & Co.'s Bank, 21 N.Y. 12.) The rule of Dudley v. Mayhew (3 N.Y. 9), that when rights are conferred by statutes and specific remedies provided therein for their protection, such remedies are exclusive and must b......
  • 156 N.Y. 36, People ex rel. Feeny v. Board of Canvassers of Richmond County
    • United States
    • New York New York Court of Appeals
    • May 10, 1898
    ...by the statute, and a party is restricted to the remedy and forum provided. (Sutherland on Statutory Construction, § 399; Dudley v. Mayhew, 3 N.Y. 9, 15; Hollister v. Hollister Bank, 2 Keyes, 245, 248; Rex v. Robinson, 2 Burr. 799; Plankroad Co. v. Morley, 23 N.Y. 554; Darlington v. Mayor, ......
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