Mark v. Hyatt

• Decision Date: 04 October 1892
• Parties: MARK v. HYATT.
• Court: New York Court of Appeals Court of Appeals

135 N.Y. 306

31 N.E. 1099

MARK

v.HYATT.

Court of Appeals of New York.

Oct. 4, 1892.

Appeal from supreme court, general term, first department.

Action by Jacob Mark against Elizabeth Hyatt for damages by reason of an injunction obtained by defendant against plaintiff. From a judgment of the general term (15 N. Y. Supp. 885) affirming a judgment of the special term dismissing the complaint on the merits, plaintiff appeals. Affirmed.

McCarthy & Berier,(E. D. McCarthy, of counsel,) for appellant.

A. P. & W. Man, (Henry H. Man, of counsel,) for respondent.

FINCH, J.

The injury alleged in this action, and for which compensation is sought, originated in the operation and effect of a previous judgment obtained by Elizabeth Hyatt, one of the present defendants. In that action she sued the firm of Mark & Ingalls under a contract to manufacture, as her licensees, a patented article. Her complaint set out the terms of that agreement, which showed a license granted by her for the term of her patents granted by her for the term of her patents and of any reissues thereof; the licensees binding themselves to pay a specific royalty, and to render due and correct accounts of their manufacture. The validity of the patents, and the consequent right of their owner, were thus recognized; and the licensees, while the agreement stood, could not call in question the title of the patentee. Her complaint further alleged that an account had been refused, and payment of the royalties withheld; that the licensees were wholly irresponsible; and asked as relief an accounting and recovery of the royalties due; that the license granted should be delivered up to be canceled, and the licensees be enjoined from further manufacture under the agreement. Of this action the court had full and undoubted jurisdiction, and all the relief asked was clearly within its autnority. The plaintiff sought no decree beyond its admitted power to grant. An answer was served, denying most of the material averments of the complaint, and upon the issues joined the case was heard at special term. The court rendered an interlocutory judgment in favor of the plaintiff, which ordered an accounting before a referee, directed a cancellation and revocation of the license, and awarded an injunction, which exceeded the relief demanded in that it restrained the licensees perpetually from manufacturing the patented article, without in express terms merely forbidding it under the license. That judgment was erroneous in part, but not void for want of jurisdiction to hear and determine the action; that existed both as to the parties and the subject-matter. There was power to grant an injunction, but the power was erroneously exercised in not explicitly limiting its operation. That error is claimed to have been in excess of the jurisdiction, outside of and beyond it, and so the injunction was wholly void; but it was not so treated. A copy of it was served upon the licensees, and they, with full liberty to disregard it, elected not to do so, but to obey it, and deem it valid until reversed. The copy was served upon them on the 1st day of May, 1883. They were not bound to take the risk of disobedience, but, while free to do so, were at liberty to proceed againstit by appeal. They chose that remedy. They appealed from the judgment, and on the 5th of June obtained an order staying the effect and operation of the judgment, and leaving them free, pending the appeal, from the restraint of the injunction. They might probably have obtained that order earlier, and so have protected themselves from all substantial loss; but from May 1st to June 5th they claim to have submitted to the injunction, to have discontinued their manufacture, and to have suffered thereby damages, to recover which the present action of trespass was brought. The complaint for that alleged wrong was dismissed on the trial, and the general term have affirmed the dismissal.

It seems to me that the plaintiff founds his argument upon two inconsistent theories, and constructs it by shifting unconsciously from one to the other, as the emergency requires. The judgment against him in the prior suit, so far as it awarded an injunction, was either utterly void for excess of jurisdiction or was merely an erroneous exercise...