Hammacher v. Wilson

• Decision Date: 01 January 1886
• Citation: 26 F. 239
• Parties: HAMMACHER and others v. WILSON. [1]
• Court: U.S. District Court — District of Massachusetts

26 F. 239

HAMMACHER and others v. WILSON. ^[1]

United States Circuit Court, D. Massachusetts.

January, 1886

Daniel C. Linscott, for complainants.

Ira D Van Duzee, for respondent.

Before COLT and CARPENTER, JJ.

CARPENTER J.

This is a bill charging infringement of letters patent No. 169,931 granted November 16, 1875, to William F. Ulman, for an improvement in piano-forte pedals. The respondent admits the validity of the patent, and the infringement, but justifies under a license made to him June 1, 1877, by Jacob Ulman, who was then the owner of the letters patent. The complainants reply that the license was revoked and canceled August 13 1880, by William F. Ulman, who was then the owner of the letters patent, in accordance with the provisions of the license, and on account of failure by respondent to perform his covenants contained therein. This being the state of the controversy, the respondent denies the jurisdiction of the court. He points out that the question whether or not the license has been forfeited is a question arising under the license itself, and not under the patent law, and that this question must be determined for the complainants before it can be determined that he unlawfully infringes the patent and he claims that this court has no jurisdiction to try that question in a suit for infringement. We find no authority to support this position. It is undoubtedly the rule that where there appears to be a subsisting license between the complainant and the respondent, the jurisdiction of the court, under the patent law, will not be extended to cover a suit to enforce the terms of the license, or to forfeit the license, on the ground that the terms thereof have been violated. Hartell v. Tilghman, 99 U.S. 547. But we think that where a suit is brought for infringement, and the existence of a license is alleged by the respondent, and denied by the complainant, it is competent for the court to determine whether, at the time of the filing of the bill, there was a subsisting license between the parties. The court, in Hartell v. Tilghman, found as a fact that there was a subsisting license, and on that ground dismissed the bill. The same rule has been followed in other cases. Cohn v. National Rubber Co., 15 O.G. 829; Kelly v. Porter, 17 F. 519; White v. Lee, 3 Fed.Rep. 222, 4 F. 916, and 14 F. 789.

We proceed, therefore, to consider whether there was a subsisting license between the parties at the date of the filing of this bill. The license contains the following provisions 'Fourth. The said E. Wilson & Co. agree to pay said Ulman, his representatives or assigns, 6 per cent., in money, of the amount of sales during the first four years of said term, and 6 2/3 per cent., in money, of the amount of sales during the remainder of said term, such payments to be made on the days the accounts of sales are rendered, to-wit: On the first days of January, April, July, and October in each year, and on the last day of the term; but the said E. Wilson & Co. shall not be required to make any return or payment for the time previous to October 1, 1877. ' 'Eighth. Upon a failure of either party to perform any of its engagements here entered into, either party, the representatives or assigns of said...