Ex parte Wagner et al. riginal

• Decision Date: 14 April 1919
• Docket Number: No. 29,O,29
• Citation: 63 L.Ed. 709,39 S.Ct. 317,249 U.S. 465
• Parties: Ex parte WAGNER et al. riginal
• Court: U.S. Supreme Court

249 U.S. 465

39 S.Ct. 317

63 L.Ed. 709

Ex parte WAGNER et al.

No. 29, Original.

Argued March 17, 1919.

Decided April 14, 1919.

Messrs.

H. A. Toulmin and H. A. Toulmin, Jr.,

both of Dayton, Ohio, for petitioners.

Mr. Reeve Lewis, of Washington, D. C., for respondents.

Mr. Justice CLARKE delivered the opinion of the Court.

The petitioners pray that a writ of mandamus shall issue out of this court requiring the Circuit Court of Appeals for the Sixth Circuit and the judges thereof and the United States District Court for the Southern District of Ohio, Western Division, and the judge thereof, to stay further proceedings in a suit pending in the District Court, and the execution of a judgment against petitioners rendered therein by that court (Meccano v. Wagner, 234 Fed. 912) and affirmed by the Circuit Court of Appeals (Wagner v. Meccano, Limited, 246 Fed. 603, 158 C. C. A. 573). The answers of the courts and judges to the usual rule to show cause are before us.

The facts upon which the prayer for this extraordinary remedy is based are as follows: The Meccano, Limited, a corporation, brought a suit, which we shall designate as the Ohio case, in the District Court for the Southern District of Ohio against F. A. Wagner, trading as the American Mechanical Toy Company, and the Strobel & Wilken Company, a corporation, charging: (1) The infringement of letters patent, which the plaintiff claimed to own, covering certain parts of a model builder or mechanical toy, known by the trade-name of 'Meccano'; (2) the infringement of two copyrights which the plaintiff claimed to own upon the manual or book of instructions, which was sold with the toy and which was essential to the use of it; and (3) unfair competition. An accounting and permanent injunction were prayed for. The defendants denied the allegations of the bill and asserted a counterclaim.

Upon the trial on the merits the District Court found for the plaintiff on all of the issues, dismissed the counterclaim of defendants, and, granting an injunction, ordered an accounting.

On appeal the Circuit Court of Appeals for the Sixth Circuit affirmed the decree of the District Court except as to the infringement of the patent, which was held to be invalid for want of invention, and remanded the case for a decree not inconsistent with its opinion.

Pursuant to this affirmance the District Court entered a decree, and appointed a master to take an account of gains, profits, and damages and to report his conclusions to that court.

Thus was the Ohio case ripe for an accounting, which had been ordered, when the petition which we are considering was filed.

After the decision by the District Court in the Ohio case, but before it was affirmed by the Circuit Court of Appeals, the Meccano, Limited, instituted a suit which we shall designate as the New York case, in the United States District Court for the Southern District of New York against John Wanamaker, a corporation, charging that the defendant, a customer of the defendants in the Ohio case and a retail dealer engaged in selling the toy manufactured by Wagner, was guilty of the same violations of complainant's rights as were alleged in the Ohio case. Upon 'affidavits and exhibits' a motion for an injunction pendente lite was filed, which, upon hearing, was granted. From this order allowing a temporary injunction an appeal was taken to the Circuit Court of Appeals for the Second Circuit, and after the appeal was argued, but before it was decided, the decree of the District Court in the Ohio case was affirmed by the Circuit Court of Appeals for the Sixth Circuit. Thereupon the Meccano Company filed a 'motion for a decision on the merits' in the New York case, then pending on appeal in the Circuit Court of Appeals for the Second Circuit, and in support of this motion were filed copies of the opinion of the Circuit Court of Appeals for the Sixth Circuit and of the decree entered by the District Court pursuant thereto.

This motion for a judgment on the merits was bottomed on the claim that the two cases involved the same issues, that Wagner had assumed the defense in the New York case, and that the decree rendered by the Circuit Court of Appeals for the Sixth Circuit constituted an estoppel by judgment when pleaded in the case in the Second circuit, but the motion was denied.

Later on the appeal from the order granting a preliminary injunction, which was argued gued before the motion for judgment on the merits was filed, was decided, and the District Court was reversed, the Circuit Court of Appeals for the Second Circuit holding with the Circuit Court of Appeals for the Sixth Circuit that the patent declared on was invalid for want of invention, but the court also held that a very clear case was necessary to justify a preliminary injunction for a claimed infringement of copyright or for unfair competition, the only remaining claims in the bill, and that the affidavits and exhibits before the District Court were not sufficient to warrant its conclusion. For these reasons the order of the District Court allowing a temporary injunction was reversed.

Following this decision by the Circuit Court of Appeals for the Second Circuit the Meccano, Limited, filed a petition in this court for a writ of certiorari, giving as the reasons relied upon to secure the writ that there was a conflict of opinion between the Courts of Appeals of the Second and Sixth Circuits upon the questions involved in the case, and that the cause should be brought before this court for review to determine:

(1) The legal effect to be given to a prior decree in the Sixth circuit against the manufacturer as against a customer in the Second circuit.

(2) Whether the preliminary injunction could be legally denied by the Circuit...