In re Opinion of the Justices

• Decision Date: 30 April 1907
• Citation: 81 N.E. 142,193 Mass. 605
• Parties: In re OPINION OF THE JUSTICES.
• Court: United States State Supreme Judicial Court of Massachusetts Supreme Court

193 Mass. 605

81 N.E. 142

In re OPINION OF THE JUSTICES.

Supreme Judicial Court of Massachusetts.

April 30, 1907.

Application by the Senate of the commonwealth of Massachusetts, for the opinion of the justices of the Supreme Judicial Court as to the constitutionality of certain contemplated legislation regulating the sale of patented devices and unpatented materials.

The following is a copy of the submission and the proposed acts:

‘Senate, April 12, 1907.

‘Ordered, that the opinion of the justices of the Supreme Judicial Court be required upon the following important questions of law:

‘First. Is it within the constitutional power of the Legislature to enact a law that the owner of or a licensee under letters patent of the United States, doing business in this commonwealth, shall not lease and license the use of machines embodying the patented invention, upon conditions which are, when agreed to by the lessee and licensee, in effect, a prohibition upon the lessee and licensee from obtaining of any other person than the lessor and licensor machines for performing the same operation as that performed by the leased and licensed machine, during the term of such lease and license?

‘Second. Is it within the constitutional power of the Legislature to enact a law that the owner of or licensee under letters patent of the United States, doing business in this commonwealth, where he has certain patented machines designed to perform two certain successive steps in making an article or product, shall not lease and license the use of one of said machines, which is designed to perform one of said steps, upon conditions which are, when agreed to by the lessee and licensee, in effect a prohibition upon the lessee and licensee from using, in the manufacture of said article or product, the leased and licensed machine, if a machine not obtained from the lessor and licensor, is or is to be used to perform the other of said steps, during the term of said lease and license?

‘Third. Is it within the constitutional power of the Legislature to enact a law that the owner of or a licensee under letters patent of the United States, doing business in this commonwealth, shall not lease and license the use of a machine embodying the patented invention, upon the conditions when agreed to by the lessee and licensee, that the latter, as rental for the machine and as royalty for the use of the patented invention, shall purchase from the lessor exclusively material or merchandise to be used in the machine during the term of such lease and license?

‘These questions are propounded with a view to legislation, which is the subject-matter of a pending bill, Senate Bill No. 275, to regulate the lease and sale of machinery, tools, implements and appliances which embody one or more inventions patented pursuant to the Constitution of the United States and the laws enacted by Congress in respect to letters patent for inventions, in view of the fact that, for many years, contracts have been made by owners of patented machines, doing business in this commonwealth, in which the lessee and licensee has agreed to do all the work which he has to do upon the leased and licensed machine; and, in case he has too much work for that machine, to take from the lessor under that lease or a similar lease, sufficient additional machines to do his work; to pay the lessor, as rent or royalty for the use of the machine, certain sums in cash, or to purchase exclusively of the lessor material or merchandise for use in the machine, such as fastenings for use in a button fastening machine, eyelets or hooks in an eyelet or hook setting machine, tacks in a tack driving machine, or records in a phonograph or talking-machine; and, in some cases, where the lessor has other machines designed to perform successive steps in making an article or product, the lessee and licensee has agreed to use the leased and licensed machine only on an article or product in making which one or more of the lessor's other patented machines are used.

‘A copy of the Senate Bill No. 275, now pending before the Senate, is hereby ordered to be transmitted herewith to the justices of the Supreme Judicial Court, together with briefs and opinions of counsel which were filed with the joint committee on the judiciary at the hearing on the petitions on which the said bill is based.

‘Henry D. Coolidge, Clerk.

“An Act

“To Regulate the Lease and Sale of Machinery, Tools, Implements and Appliances.

“Be it enacted by the Senate and House of Representatives in General Court assembled, and by the authority of the same, as follows:

“Section 1. No person, firm, corporation or association shall insert in or make it a condition or provision of any sale or lease of any tool, implement, appliance or machinery that the purchaser or lessee thereof shall not buy, lease or use machinery, tools, implements or appliances or material or merchandise of any person, firm, corporation or association other than such vendor, or lessee, but this provision shall not impair the right, if any, of the vendor or lessor of any tool, implement, appliance or machine protected by a lawful patent right vested in such vendor or lessor to require by virtue of such patent right, the vendee or lessee, to purchase or lease from such vendor or lessor such component and constituent parts of said tool, implement, appliance or machine, as the vendee or lessee may thereafter require during the continuance of such patent right: provided, that nothing in this act shall be construed to prohibit the appointment of agents or sole agents to sell or lease machinery, tools, implements or appliances.

“Sec. 2. Any person, firm, corporation or association, or the agent of any such person, firm, corporation or association, violating the provision of this act, shall be punished for each offence by a fine not exceeding five thousand dollars.

“All leases, sales or agreements therefor hereafter made in violation of any of the provisions of this act shall be void as to any and all of the terms or conditions thereof so in violation of said provisions of this act.'

‘Henry D. Coolidge, Clerk.

‘Senate, April 15, 1907.

‘Ordered, that the opinion of the justices of the Supreme Judicial Court be required upon the following important question of law:

‘Is it a constitutional exercise of the legislative power of the General Court to enact a statute in the following form, viz.:

“An Act

“To Regulate the Lease and Sale of Machinery, Tools, Implements and Appliances.

“Be it enacted, etc.

“Section 1. No person, firm, corporation or association shall insert in or make it a condition or provision of any sale or lease of any tool, implement, appliance or machinery that the purchaser or lessee thereof shall not buy, lease or use machinery, tools, implements or appliances or material or merchandise of any person, firm, corporation or association other than such vendor, or lessor, but this provision shall not impair the right, if any, of the vendor or lessor of any tool, implement, appliance, or machine protected by a lawful patent right vested in such vendor or lessor to require by virtue of such patent right, the vendee or lessee, to purchase or lease from such vendor or lessor such component and constituent parts of said tool, implement, appliance or machine, as the vendee or lessee may thereafter require during the continuance of such patent right: provided, that nothing in this act shall be construed to prohibit the appointment of agents or sole agents to sell or lease machinery, tools, implements or appliances.

“Sec. 2. Any person, firm, corporation or association, or the agent of any such person, firm, corporation or association, violating the provision of this act, shall be punished for each offence by a fine not exceeding five thousand dollars.

“All leases, sales or agreements therefor hereafter made in violation of any of the provisions of this act shall be void as to any and all of the terms or conditions thereof so in violation of said provisions of this act.'

‘Ordered, that copies of the briefs submitted to the joint committee on the judiciary by counsel for the petitioners for such legislation, and of counsel for the remonstrants thereto be transmitted herewith to the justices of the Supreme Judicial Court.

‘Henry D. Coolidge, Clerk.’

To the Honorable the Senate of the Commonwealth of Massachusetts.

We, the Chief Justice and one of the Associate Justices of the Supreme Judicial Court, have received the questions proposed by the orders of the honorable Senate, bearing date April 12, 1907, and April 15, 1907, respectively, and we answer them as follows:

These questions arise under the Constitution of the United States, and the only tribunal that can give answers of final authority is the Supreme Court of the United States. They introduce us to a field in which we often find a nice, and sometimes difficult, balancing of considerations, to determine the line of demarcation between the rights of the people, under the Constitution, to make contracts and transact business as they choose, and the right of the state, in the exercise of the police power, to regulate and limit such action for the common good. The general subject was considered in Commonwealth v. Strauss, 191 Mass. 545, 78 N. E. 136, which case is now pending upon a writ of error before the Supreme Court of the United States. The questions before us relate to a subject which is not embraced in the statute then before the court, and which was not referred to by counsel or the justices at any stage of the proceedings in that case. They relate partly to the rights of a patentee to lease or license the use of machines embodying his patented invention.

The patent laws of the United States had their origin in an intention of the framers of the federal Constitution, expressed in section 8 of article 1 of that instrument, to encourage inventors by giving to a patentee, for a term of years, a monopoly of the use...