Leman v. Hinge Last Co

• Decision Date: 15 February 1932
• Docket Number: No. 332,KRENTLER-ARNOLD,332
• Citation: 284 U.S. 448,76 L.Ed. 389,52 S.Ct. 238
• Parties: LEMAN et al. v. HINGE LAST CO
• Court: U.S. Supreme Court

284 U.S. 448

52 S.Ct. 238

76 L.Ed. 389

LEMAN et al.

v KRENTLER-ARNOLD HINGE LAST CO.

No. 332.

Argued Jan. 13, 14, 1932.

Decided Feb. 15, 1932.

Mr. Ellis Spear, Jr., of Boston, Mass., for petitioners.

Mr. Robert Cushman, of Boston, Mass., for respondent.

Mr. Chief Justice HUGHES delivered the opinion of the Court.

This is a contempt proceeding against the respondent, Krentler-Arnold Hinge Last Company, for violation of a permanent injunction granted in an infringement suit.

In that suit, which was brought by the respondent, a Michigan corporation, in the Federal District Court for the District of Massachusetts, the bill of complaint for the infringement of the respondent's patents was dismissed and the counterclaim of the present petitioners for the infringement of their patent (Peterson patent, No. 1,195,266, for hinged lasts for shoes) was sustained. 300 F. 834. The decree, as modified, was affirmed by the Circuit Court of Appeals. 13 F.(2d) 796. The decree perpetually enjoined the respondent from making, using or selling lasts containing the invention covered by designated claims of the petitioners' patent and 'any substantial or material part thereof, or any substantial equivalent or colorable imitation thereof.' Final decree, after accounting, was entered on March 1, 1928. 24 F. (2d) 423. Thereafter the respondent placed upon the market a 'sliding link' hinge which was claimed to be a new invention. The petitioners then (June 4, 1929) brought the present proceeding for contempt in the court which had entered the decree.

The order to show cause, with the supporting affidavits, was served upon the respondent by the delivery of copies to its attorney of record in the infringement suit and by the mailing of copies to the respondent at its office in Michigan. On June 10, 1929, the attorney of record for the respondent in the infringement suit filed with the clerk of the court a withdrawal of appearance. The respondent then appeared specially in the contempt proceeding and moved to dismiss the petition 'for lack of jurisdiction over the respondent.' In support of the motion, affidavits were presented to the effect that the authority of the attorney of record in the infringement suit was terminated on the entry of the final decree, and that the respondent had no office or place of business in Massachusetts and had not manufactured, sold, or used within that state the device of which the petitioners complained. The motion was denied. Upon hearing, the District Court held the respondent to be guilty of 'civil contempt' for deliberate violation of the injunction and ordered a reference to a master to take an account of the profits made by the respondent through such violation and to ascertain the petitioners' costs and expenses in the contempt proceeding. On the master's report, the District Court entered a decree for the recovery by the petitioners of $39,576.26 as profits, together with counsel fees, expenses, and interest, making a total of $49,292.89. On appeal, the Circuit Court of Appeals deemed it to be clear that the respondent's new device answered in every respect the claims of the petitioners' patent and that 'the question of infringement is not doubtful or even merely colorable, but certain.' The Circuit Court of Appeals sustained the jurisdiction of the District Court but held that profits could not be recovered. Certain expenses were also disallowed, and the decree of the District Court, with respect to the amount of the recovery, was vacated. 50 F. (2d) 699, on rehearing 50 F.(2d) 707. This Court granted a writ of certiorari. 284 U. S. 605, 52 S. Ct. 33, 76 L. Ed. —.

First. The question of jurisdiction turns upon the nature and effect of the decree in the infringement suit and the relation to that suit of the contempt proceeding. When the respondent brought the suit in the Federal District Court for the District of Massachusetts, it submitted itself to the jurisdiction of the court with respect to all the issues embraced in the suit, including those pertaining to the counterclaim of the defendants, petitioners here. Equity Rule 30 (28 USCA § 723). See Langdell's Eq. Pleading, ch. 5, § 119; Frank L. Young Co. v. McNeal-Edwards Co., 283 U. S. 398, 400, 51 S. C.t. 538, 75 L. Ed. 1140. The decree upon the counterclaim bound the respondent personally. It was a decree which operated continuously and perpetually upon the respondent in relation to the prohibited conduct. The decree was binding upon the respondent, not simply within the District of Massachusetts, but throughout the United States. Macaulay v. White Sewing Machine Company (C. C.) 9 F. 698; Kessler v Eldred, 206 U. S. 285, 288, 27 S. Ct. 611, 51 L. Ed. 1065; Rubber Tire Company v. Goodyear Company, 232 U. S. 413, 417, 34 S. Ct. 403, 58 L. Ed. 663; Hart Steel Company v. Railroad Supply Company, 244 U. S. 294, 298, 299, 37 S. Ct. 506, 61 L. Ed. 1148; Louisville & Nashville Railroad Company v. Western Union Telegraph Company, 250 U. S. 363, 368, 39 S. Ct. 513, 63 L. Ed. 1032; Toledo Company v. Computing Company, 261 U. S. 399, 426, 43 S. Ct. 458, 67 L. Ed. 719. The respondent could not escape the decree by removing from, or staying without, the District of Massachusetts. Wherever it might conduct its affairs, it would carry with it the prohibition. Disobedience constituted contempt of the court which rendered the decree, and was none the less contempt because the act was committed outside the district, as the contempt lay in the fact, not in the place, of the disobedience to the requirement.

In view of the nature and effect of the decree in the infringement suit, it cannot be said that the suit was terminated in the sense that the court had no further relation to the party subject to its permanent injunction. The terms of the injunction continued the relation. The question is not one of an attempted rehearing of the merits of the controversy which was determined by the final decree, or of the modification of that decree, after the expiration of the term in which an application for that purpose could properly be made. Equity Rule 69 (28 USCA § 723); Roemer v. Simon, 91 U. S. 149, 23 L. Ed. 267; Brooks v. Railroad Company, 101 U. S. 443, 25 L. Ed. 1057, rehearing denied 102 U. S. 107, 26, L. Ed. 91; Bronson v. Schulten, 104 U. S. 410, 415, 26 L. Ed. 797. This proceeding was for the enforcement of the decree, and not to review or alter it. It was heard and determined as a proceeding for civil, not criminal, contempt. 50 F.(2d) at page 701. The question of the relation of such a proceeding to the main suit was fully considered in the case of Gompers v. Buck Stove & Range Company, 221 U. S. 418, 31 S. Ct. 492, 55 L. Ed. 797, 34 L. R. A. (N. S.) 874, and it was determined that the proceeding was not to be regarded as an independent one, but as a part of the original cause. The court said: 'Proceedings for civil contempt are between the original parties, and are instituted and tried as a part of the main cause.' Id., at pages 444, 445 of 221 U. S., 31 S. Ct. 492, 499. The distinction was made in this respect between such proceedings and those at law for criminal contempt which 'are between the public and the defendant, and are not a part of the original cause.' In the Gompers Case, the contempt proceeding had been instituted after the entry of the final decree awarding the permanent injunction and pending an appeal from that decree. Id., pages 421, 422 of 221 U. S., 31 S. Ct. 492. This Court held that the proceeding had been improperly treated as one for criminal contempt, and, as there had been a complete settlement of all matters involved in the equity suit, the contempt proceeding was necessarily ended. The conclusion of the Court was thus stated (Id., pages 451, 452 of 221 U. S., 31 S. Ct., 492, 502): 'When the main case was settled, every proceeding which was dependent on it, or a part of it, was also necessarily settled,-of course, without prejudice to the power and right of the court to punish for contempt by proper proceedings, punish for contempt by proper proceedings. 30 L. Ed. 853. If this had been a separate and independent proceeding at law for criminal contempt, to vindicate the authority of the court, with the public on one side and the defendants on the other, it could not, in any way, have been affected by any settlement which the parties to the equity cause made in their private litigation. But, as we have shown, this was a proceeding in equity for civil contempt, where the only remedial relief possible was a fine, payable to the complainant. The company prayed 'for such relief as the nature of its case may require,' and when the main cause was terminated by a settlement of all differences between the parties, the complainant did not require, and was not entitled to any compensation or relief of any other character. The present proceeding necessarily ended with the settlement of the main cause of which it is a part.' See Michaelson v. United States, 266 U. S. 42, 64, 65, 45 S. Ct. 18, 69 L. Ed. 162, 35 A. L. R. 451; Oriel v. Russell, 278 U. S. 358, 363, 49 S. Ct. 173, 73 L. Ed. 419.

As the proceeding for civil contempt for violation of the injunction should be treated as a part of the main cause, it follows that service of process for the purpose of bringing the respondent within the jurisdiction of the District Court of Massachusetts was not necessary. The respondent was already subject to the jurisdiction of the court for the purposes of all proceedings that were part of the equity suit and could not escape it, so as...