Billings v. Ames

• Decision Date: 31 March 1862
• Citation: 32 Mo. 265
• Parties: HORACE BILLINGS, Respondent, v. HENRY AMES et al., Appellants.
• Court: Missouri Supreme Court

32 Mo. 265

HORACE BILLINGS, Respondent,

v.HENRY AMES et al., Appellants.

Supreme Court of Missouri.

March Term, 1862.

Appeal from St. Louis Court of Common Pleas.

J. A. Buchanan, with Glover & Shepley, for appellants.

I. The St. Louis Common Pleas had no jurisdiction of the cause of action. The action was substantially for the infringement of a patent right, of which only the courts of the United States have jurisdiction. (5 Stat. U. S. 117; act July 4, 1836; 2 Kent, 405; Curtis on Pat., § 405; Parsons v. Barnard, 7 J. R. 144; Gilson v. Woodworth, 8 Paige, 132; Dudley v. Mayhew, 3 Comst. 9.)

The error is not cured by verdict. A verdict will cure a title defectively set out, but not a defective title. (Rushton v. Aspinwall, 1 Smith's L. C. 334; Andrews v. Lynch, 27 Mo. 167.)

II. The defendants were entitled to prove that the plaintiff's recipe had been known and used prior to plaintiff's patent. The evidence would have been admissible in a suit for the infringement of the patent. (Hotchkiss v. Greenwood, 11 How. 248.) In this case defendant had the same right, a, to show that plaintiff had no right to a patent, and, therefore, there was no consideration for the agreement (Joliffe v. Collins, 21 Mo. 338, 343; Dickinson v. Hall, 14 Pick. 220; Van Ostrand v. Reed, 1 Wend. 424;) and, b, in mitigation of damages, (Segman et al. v. McCormick, 16 How. 480.)

III. The defendants were entitled to prove that the hams branded “G. J. Griggs” were put up according to a recipe different from the plaintiff's, thus to show that defendants had not violated their agreement. (Keflinger v. De Young, 10 Wheat. 358; Carson v. Hyde, 16 Pet. 513; 2 Greenl. Ev. § 496; Honey v. Pitcher, 13 Mo. 191; Pitcher v. Honey, 16 Mo. 436; Rich v. Atwater, 16 Conn. 409.)

IV. The contract between the parties was in effect that defendants would not violate the patent of plaintiff. a. It so appears from the circumstances under which the contract was made. (2 Pars. Cont. 12; Patterson v. Camden, 25 Mo. 13; Rich v. Atwater, 16 Conn. 409; Player v. Homersham, 4 M. & S. 422; 3 Barn. & Ald. 175; 2 Ves. 310; 1 Cowen, 122; Cowp. 9.) b. Because, the construction the plaintiff puts upon the contract would make it a contract in restraint of trade, and therefore void. (2 Pars. Cont. 121; Rich v. Atwater, 16 Conn. 409; Clark v. Pinney, 7 Cow. 681; Hardcastle v. Hickman, 26 Mo. 476; 1 How. 169; 19 Me. 394; 8 Mass. 216; 5 Barn & Ald. 606; 4 M. & S. 42; 38 Me. 367; 8 Mass. 183; 5 T. R. 522.)

V. The contract, if in restraint of trade, was void. (2 Pars. Cont. 254 & 257, and notes; Alger v. Thatcher, 19 Pick. 51; Chit. Cont. 664; Mitchell v. Reynolds, 1 Smith's L. C., 174; Ward v. Byrne, 5 M. & W. 547; 561, 562; Price v. Green, 16 M. & W. 346; Chappell v. Brockway, 21 Wend. 157.)

VI. The measure of damages laid down by the court was erroneous. By the instruction, the plaintiff could recover remote and speculative damages, and therefore it was erroneous. (2 Pars. Cont. 454; Bridges v. Stickney, 38 Me. 361; Hadley v. Boxendale, 9 Exch. 241.)

a. The agreement being that defendant shall not violate plaintiff's patent, the plaintiff could only recover the profits defendants had made, and the burden of proof as to this amount was upon the plaintiff. (Segman v. McCormick, 16 How. 487; City New York v. Ransom, 23 How. 487; Curtis on Part., § 251; 2 Pars. Cont. 458.)

b. If the agreement prevented defendants putting up cemented hams of any kind, the plaintiff could only recover such damages as were the immediate and necessary result of the breach of contract. (Mayne on Dam. 6 & 52; Bridges v. Stickney, 38 Me. 361; Batchelder v. Sturgis, 3 Cush. 201; Fox v. Hardin, 7 Cush. 516; Bradley et al. v. Denton, 3 Wis. 557; Barnard v. Poor, 21 Pick. 378; Chapin v. Norton, 6 McLean, 500; Hamlin v. Gt. Western Railway, 38 Eng. L. & E. 335; Sedg. Dam. 104.)

G. P. Strong, for respondent.

I. The court had jurisdiction of the cause of action. The suit was not upon the patent, nor for an infringement of the patent, but for the breach of a contract collateral to the patent, as much so as if it had been upon a note given for a patent right.

It is only in actions directly upon the patent that the jurisdiction of the federal courts is exclusive. (7 J. R. 144; 16 Conn. 409.)

The contract is not void as being in restraint of trade. (Presbury v. Fisher, 18 Mo. 50; Chit. Cont. 663; Chappell v. Brockway, 21 Wend. 158; Ross v. Sadgbear, 21 Wend. 166; Whittaker v. Howe, 3 Beav. 383, 393; Mitchell v. Reynolds, 1 P. Wms. 181; 1 Smith's L. C. 172; Perkins v. Lyman, 9 Mass. 494, 500.)

The contract was limited as to space. It was reasonable. It was limited as to time.

II. The court correctly laid down the rule by which to estimate damages. (2. Pars. Cont. 454, 461; Alder v. Keightly, 15 Mee. & W. 117; 13 How. 307.)

BAY, Judge, delivered the opinion of the court.

Plaintiff brought suit against defendants in the St. Louis Court of Common Pleas for an alleged breach of contract, which contract is as follows:

“ST. LOUIS, March 5, 1856.

Mr. Horace Billings.--Dear Sir: In consideration of your withdrawing the suit brought against us in New York, for infringing your patent for putting up cemented hams, and for the privilege of putting up fifty thousand hams this year and selling them, we hereby agree and bind ourselves to put up no more cemented hams of any kind without your consent during the existence of your patent.

HENRY AMES & Co.”

Plaintiff alleges in his petition that in pursuance of said agreement he caused the suit mentioned therein to be dismissed, and that defendant exercised the privilege of putting up and selling, during the year 1856, the number of hams specified in the agreement. The petition further alleges, as a breach of said agreement, that in the years 1857 and 1858, defendants, without the consent of plaintiff, put up and sold in the New York market a large number of cemented hams. Plaintiff further states that in 1857 he put up and sold in the New York market 29,456 lbs. of cemented hams, put up according to his patent; and in 1858, 930,604 lbs.--one-half of the latter for account of Nolte & McClure, of Illinois; that during said year the demand in New York for cemented hams was limited, and almost exclusively for the California market; that by reason of the breach of said contract by said defendants, the price of the cemented hams of plaintiff, sold as aforesaid, depreciated to the extent of half a cent per pound, and plaintiff lost that amount.

The answer of defendants sets up a want of jurisdiction in the Court of Common Pleas, also an agreement executed by plaintiff in the words and figures following, to-wit:

“ST. LOUIS, March 5, 1856.

In consideration of three thousand dollars, the receipt of which is hereby acknowledged, I hereby agree to cause to be dismissed the suit brought against Henry Ames and Edgar Ames, in New York, for infringing my patent for the covering of hams, and also release them from all damages from any infringement of said patent heretofore; and also give them the privilege of putting up fifty thousand hams this year in the same manner as they have heretofore covered them, which privilege expires this year, with the understanding that they are to put up no more cemented hams without my consent during the existence of my patent.

HORACE BILLINGS.”

The answer denies any violation of the agreement, and avers that since the year 1856 the defendants have not put up any cemented hams according to the method shown by the patent of plaintiff; that one George W. Griggs had invented a preparation or composition for covering hams different entirely from that of the plaintiff, and that he (Griggs) had put for the defendants a number of hams openly marked with the name of said Griggs.

Upon the trial plaintiff read in evidence his patent from the government, bearing date March 25, 1851, giving him the exclusive right, for the term of fourteen years, of making, constructing, using, and vending to others to be used, his composition for covering hams. Also, the record of the suit brought in New York against defendants for an infringement of the patent referred to in the agreement, and the dismissal of the same. A large number of depositions of commission merchants in New York, some of whom were doing business in California, were read in evidence, all tending to prove that in 1857 and 1858 the Billings hams commanded a higher price in the California market than any other hams; that during said years defendants consigned to commission houses in New York and California for sale a very large number of cemented hams, resembling in appearance the hams of plaintiff, but marked with the name of Griggs; that they were well understood to be Ames' hams, put up by Ames, and by him directly consigned. The consignees knew no such man as Griggs; that these hams came in competition with those of Billings, the market being limited, and depreciated the sale and price of plaintiff's hams one cent per pound. The depositions show the number and amount of hams so consigned by defendants during said years, and the number and amount put in market by plaintiff.

The defendants gave in evidence the contract set out in their answer, and evidence tending to show that, by permission of plaintiff, they put up for him, in 1857, 19,834 cemented hams, branded with the name of G. W. Griggs, and shipped the same to Woodruff, of New York, for plaintiff, and received payment therefor from Henning & Woodruff, of St. Louis, on account of plaintiff.

Defendants then offered to prove that the cement used by plaintiff was composed of rosin, shellac and linseed oil, and that his composition was known and used by other porkpackers prior to 1850; that the cement used by Griggs was composed of rosin, cotton-seed oil and Venetian red, and was essentially different from plaintiff's; that none of the hams put up by Griggs for the defendants since 1856 had been put up with the cement of plaintiff, but had been put up with the cement of...