Dare v. Boylston

• Decision Date: 31 December 1880
• Citation: 6 F. 493
• Parties: DARE v. BOYLSTON.
• Court: U.S. District Court — Southern District of New York

6 F. 493

DARE v. BOYLSTON.

United States Circuit Court, S.D. New York.

December 31, 1880

A. v Briesen, for plaintiff.

Edwin H. Brown, for defendant.

BLATCHFORD C.J.

Letters patent for an 'improvement in canopy-tops for children's carriages ' were granted to Calvin E Fosburgh, May 29, 1877. On the seventh of January, 1878, an agreement in writing, under seal, was executed by and between Fosburgh and Charles W. F. Dare, the plaintiff, and recorded in the patent-office January 9, 1878, whereby Fosburgh granted to Dare, for an in consideration of the covenants therein contained, to be kept by Dare, the sole and exclusive right, license, and privilege to manufacture, use, and sell canopy-tops, embodying the invention covered by said patent for the full unexpired term of the same, with the exclusive right to grant sublicenses to other parties, under said patent. As a consideration, Dare thereby agreed to pay to Fosburgh, as a royalty or patent fee, 25 cents for each canopy-top and child's carriage provided with the canopy-top made and sold by or on behalf of, or with the license or consent of, Dare, containing said invention payments of royalty 'to be made quarterly,-- that is to say, on the first day of January, April, July, and October, or within ten days thereafter, of each and every year ' during the continuance of the agreement,-- for all the said articles made and sold by or on behalf of, or with the consent of, Dare, 'during the three months preceding the respective dates of payment;' each payment to be accompanied by a statement, under oath, of Dare, setting forth the number of said articles made, and the number sold by or on behalf of, or with the consent of, Dare, during the three months preceding each of said accounts and dates of payment. Dare also agreed thereby to keep proper books of account of the manufacture and sale, and to use his best endeavors to introduce the article into the market, and make it known to the public, and create a demand for it. Fosburgh agreed thereby to execute the necessary papers for re-issuing the patent, if, and as soon as, Dare should desire such re-issue; the expense of the re-issue, if not more than $60, to be deducted from the royalty that might be due to Fosburgh after the re-issue. It was further thereby agreed by Dare that 'if he should fail to well and truly make the payments above referred to, or to execute or fulfil any of the other conditions hereinabove contained, then and in that case this agreement and license shall become null and void.'

Application for a re-issue of the patent was made January 18, 1878, on a specification signed by Fosburgh, No. 8,074, February 5, 1878. The plaintiff now brings suit against the defendant on the re-issue, alleging infringement. The answer sets up that any right granted to the plaintiff became null and void before this suit was brought, because the grant was made subject to conditions which have not been fulfilled by the plaintiff, and that the defendant has acquired, by an instrument in writing from Fosburgh, made April 7, 1878, the right to make and use and sell articles containing said invention.

The plaintiff was and is a manufacturer of children's carriages, having an office in the lower part of the city of New York, and a factory in a distant part of said city. Immediately after the execution of the instrument of January 7, 1878, Fosburgh entered the employment of the plaintiff at his factory as a painter. The plaintiff, prior to April 1 1878, employed the patented invention to such an extent that on that day there was due to Fosburgh, as royalty, under said instrument, $105.25, less $60 expenses of the re-issue, leaving a balance of $45.25. Meantime the plaintiff had advanced the money necessary to obtain the re-issue, and had advertised the invention, and procured engravings of it for advertising. The plaintiff testifies that on the morning of April 2, 1878, he saw Fosburgh, as usual, and told him that his account was made up and ready for him down town. The plaintiff says: 'He asked me how much there was due him, and I told him that I really could not tell, as I had not stopped to figure. ' Fosburgh testifies as follows: 'On the second of April, Mr. Dare said that 'he supposed the royalty was due on the first of the month, and I think we owe you something. I haven't figured it up yet, and don't know how much it is;' or words to that effect. * * * I asked him if he had sublicenses any parties. He said he had not; that the carriage dealers were all throwing cold water on the patent. That's about all. ' Fosburgh denies that Dare told him, on the second of April, that the statement was ready for him. Fosburgh continued to work at the factory until and including April 9th. On April 10th he did not go to the factory. He absented himself on that day and on the 11th, without having given notice that he would not return. On the 11th he went to the place of business of the defendant, and there announced to him, or to Jay F. Butler, or to both, that his contract with Dare was broken. He saw the defendant and Butler again on the 12th, and went with Butler on that day to a lawyer, Mr. Meyer, and submitted to him the agreement with Dare, for advice as to whether it had become void. On the 15th, Fosburgh, the defendant, and Butler went to Meyer's office, and received the advice that the contract with Dare had become void. Then, on the seventeenth of April, Fosburgh and the defendant and Butler executed an agreement, whereby Fosburgh granted to the defendant and Butler the exclusive right to make, use, and sell articles containing the invention covered by said re-issued...