Bragg v. City of Stockton

• Decision Date: 10 May 1886
• Citation: 27 F. 509
• Court: United States Circuit Court, District of California
• Parties: BRAGG v. CITY OF STOCKTON.

27 F. 509

BRAGG v. CITY OF STOCKTON.

United States Circuit Court, D. California.

May 10, 1886

Joseph Leggett and Montague R. Severson, for complainant.

F. H Smith, for defendant.

SAWYER J., (orally.)

In this case I have had some difficulty in determining, under the decisions in the circuit courts on the subject, whether or not the bill in equity should be maintained. See Smith v Sands, 24 F. 470, and cases cited. It does not appear that this defendant has ever made or sold any machines including the invention in question, or that it intends to do anything of the kind, but has only used some three or four machines which other parties made for it, there being no evidence of an intention to use any other machines than those it now has.

As compensation for the machines used is prayed for, the question arises whether complainant will be entitled to an injunction. As said in the case of Spaulding v. Page, 1 Sawy. 703, I think the complainant may waive a license fee, and elect as his remedy an injunction against the further or continued use of the machines. Of course, if he can do that, he can maintain his suit in equity. But in order to do that he cannot recover a royalty upon those machines for by paying the royalty the defendant would be entitled to use them until worn out, and should not be enjoined from so doing; and for the royalty his remedy at law is simple. Complainant would have to be limited to the profits and damages arising from the use of those particular machines, up to the time of the restraining of their further use, if a perpetual injunction against further use is sought. In that aspect, I think it is a proper case for equity jurisdiction on the ground that the complainant is entitled to an injunction, without damages, if he prefers, or to an account of profits to the present time, and to an injunction against further use.

In Birdsell v. Shaliol, 112 U.S. 487, S.C. 5 S.Ct. 244, says Mr. Justice GRAY:

'But an infringer does not, by paying damages for making and using a machine in infringement of a patent, acquire any right himself to the future use of the machine. On the contrary, he may, in addition to the payment of damages for past infringement, be restrained by injunction from further use, and, when the whole machine is an infringement of the patent, be ordered to deliver it up to be destroyed.'

It would seem that the injured party should be the one to elect that one of two remedies against a wrong-doer which he deems most advantageous. An injunction against further use may be preferable to a license fee. The mere license fee is not a complete recompense, when the patentee is driven to the expense of a lawsuit by the wrong-doer.

From a careful examination of the...