Armstrong v. Emerson Radio & Phonograph Corp.

• Decision Date: 06 June 1955
• Parties: Edwin H. ARMSTRONG, Plaintiff, v. EMERSON RADIO & PHONOGRAPH CORPORATION, Defendant. Edwin H. ARMSTRONG, Plaintiff, v. RADIO & TELEVISION, Inc., Defendant.
• Court: U.S. District Court — Southern District of New York

132 F. Supp. 176

Edwin H. ARMSTRONG, Plaintiff, v. EMERSON RADIO & PHONOGRAPH CORPORATION, Defendant.

Edwin H. ARMSTRONG, Plaintiff, v. RADIO & TELEVISION, Inc., Defendant.

United States District Court S. D. New York.

June 6, 1955.

Byerly, Townsend & Watson, New York City, Alfred McCormack (of Cravath, Swaine & Moore), New York City, of counsel for Esther Marion Armstrong, executrix.

Darby & Darby, New York City, Floyd H. Crews, New York City, of counsel, for defendant Emerson Radio & Phonograph Corp.

Alfred O. Englander, New York City, for defendant Radio & Television, Inc.

DAWSON, District Judge.

This is a motion to substitute the executrix of the plaintiff pursuant to Rule 25(a), Fed.Rules Civ.Proc. 28 U.S.C.¹

The issue is whether an action for past patent infringement survives the death of the owner of the patent.

This action was commenced on December 21, 1953, seeking damages for past infringement of two expired patents and of one unexpired patent, and an injunction to restrain present infringement on the unexpired patent. Defendants oppose the motion as to the claims for past infringement on the two expired patents and on the unexpired patent on the ground that the actions have been extinguished by the death of the owner of the patent. The facts are not in dispute.

Recent decisions in other districts have held, without opinion, that in an action on the present patents, the executrix should be substituted. Armstrong v. Sylvania (D.C.Mass., Feb. 3, 1955), Civ. Act. No. 54-6-S, mandamus denied In re Sylvania Elec. Products, 1 Cir., 1955, 220 F.2d 423; Armstrong v. Motorola (D.C.N.D.Ill., Mar. 28, 1955), Civ.Act. No. 54-C-19. However, the only reported decision, Van Choate v. General Electric Co., D.C.Mass.1917, 245 F. 120, held to the contrary in a case involving another patent.

Defendants contend that there are three basic reasons why the death of the plaintiff extinguishes the actions:

(1) The action is for a tort.

(2) The action is to recover a penalty.

(3) The action to recover for past infringement is not assignable.

I will consider the questions in that order.

It is well settled that a cause of action based upon patent infringement, being purely of statutory creation, arises out of Federal law, and in the absence of a statute prescribing that the action shall survive, survival or not depends upon the interpretation of the statute in the light of the Federal common law, 1 C.J.S., Abatement and Revival, § 135, p. 183. Schreiber v. Sharpless, 1884, 110 U.S. 76, 3 S.Ct. 423, 28 L.Ed. 65; Sullivan v. Associated Billposters & Distributors, 2 Cir., 1925, 6 F.2d 1000, 42 A.L.R. 503.

Consideration of the cases construing the common law and the statute creating the right indicates that the present actions survive. The fact that an action is one for a tort does not mean, in and of itself, that the action abates upon the death of a plaintiff. The old rule to that effect was modified as far back as the Statute of 4 Edw. III, called the "Statute de Bonis Asportatis in Vita Testatoris" which allowed executors to maintain actions of trespass for chattels taken and carried away in the lifetime of their testator. The real test, at common law, so far as tort actions were concerned, seems to have been whether the injury on which the cause of action was based affected property rights, or affected the person alone. In the former case, the cause of action survived, while in the latter, it abated. Sullivan v. Associated Billposters & Distributors, supra; see Sperbeck v. A. L. Burbank & Co., 2 Cir., 1951, 190 F.2d 449.

As early as 1884, the United States Supreme Court considered a case where a patentee had died after an appeal had been taken. Appellants suggested that the cause of action for past infringement did not survive and could not be further prosecuted in the name of the legal representatives of the decedent. The Court, in rejecting this contention, said:

"It is every-day practice to revive such suits, and the books are full of cases in which this has been silently done, no one apparently entertaining a doubt of its propriety." Illinois Central Railroad Co. v. Turrill, 1884, 110 U.S. 301, 4 S.Ct. 5, 6, 28 L.Ed. 154.

The Court of Appeals of this Circuit assumed, in a case discussing another issue, that the law was clear that where claims for patent infringement are made and injunctions are sought, the suits survive in favor of the personal representatives of the plaintiff. Sullivan v. Associated Billposters & Distributors, supra, 6 F.2d at page 1003.

Even at common law, in certain instances, an administrator or executor might recover where the wrong was an injury to property and not an injury to the person. Van Beeck v. Sabine Towing Co., 1937, 300 U.S. 342, 57 S.Ct. 452, 81 L.Ed. 685. A cause of action under the patent laws of the United States is not based upon an injury to the person but on an injury to property rights. Hartford-Empire Co. v. United States, 1945, 323 U.S. 386, at page 415, 65 S.Ct. 373, 89 L.Ed. 322. An infringement of a patent right belonging to another is a taking of his property. Crozier v. Fried Kruppaktiengesellschoft, 1912, 224 U.S. 290, at page 304, 32 S.Ct. 488, 56 L.Ed. 771.

Defendants' next point is that the complaint seeks treble damages pursuant to the provisions of the patent law, 35 U.S.C. § 284, that actions for treble damages are penal in nature and that actions that are penal in nature do not survive.

There is no doubt that at common law actions that were penal in nature did not survive. Schreiber v. Sharpless, supra 110 U.S. 76, 3 S.Ct. 424 But as that case said: "Whether an action survives depends on the substance of the cause of action, not on the forms of proceeding to enforce it."

Thus, the fact that a statute grants the right of assessment of treble damages does not make an action on the statute a penal one so that the death of a party extinguishes the right thereon. Cf. Kirk v. Commissioner of Internal Revenue, 1 Cir., 1950, 179 F.2d 619, 15 A.L.R.2d 1031; Popplewell v. Stevenson, 10 Cir., 1950, 185 F.2d 111; Moore v. Backus, 7 Cir., 1935, 78 F.2d 571, 101 A.L.R. 379, certiorari denied 296 U.S. 640, 56 S.Ct. 173, 80 L.Ed. 455; Sullivan v. Associated Billposters & Distributors, supra.

In such an action, the compensation sought is that fixed by the statute. This is merely an arbitrary yardstick fixed by Congress for determining the compensation which may be recovered; it is not a...