McKay v. Smith
| Citation | 39 F. 556 |
| Parties | McKAY v. SMITH et al. |
| Decision Date | 02 August 1889 |
| Court | U.S. District Court — District of Massachusetts |
J. J Myers, for complainant.
P. E Tucker and C. A. Taber, for defendants.
The complainant in this suit seeks to recover of the defendants certain license fees for the use of a machine known as the 'McKay Sewing-Machine.' The machine is for uniting the soles of boots and shoes to their vamps or uppers, and embodies in its construction several patents. The lease bears date January 23, 1878, and it terminated September 6, 1887 or at the expiration of the youngest patent used in the machine. McKay v. Mace, 23 F. 76. The plaintiff association issued many licenses of the same kind as that taken by the defendants. Upon the taking out of a license a certain sum of money was paid, either by way of expenses for putting up the machine, or on account of its cost. By the terms of the license the licensee was to pay the sum of 10 cents for each and every pair of shoes made by aid of the machine, or instead thereof, he might purchase and affix a certain stamp to each pair of shoes. The present machine was originally licensed by the plaintiff to Richard, Smith & Co. In January, 1878, a new firm was formed, comprising the present defendants, and subsequently the original lease was surrendered to the plaintiff, and a new one issued to the new firm. For this license, and some other machinery, the defendants paid $425 to the old firm.
Several defenses were set up in the answer, but at the present hearing the main ground relied upon is the eviction of the defendants by the acts of the plaintiff. The principal act complained of as constituting an eviction is as follows: In the spring of 1881, for certain reasons which it is unnecessary to enter into, the McKay association, represented by the plaintiff, determined after August 14th of that year to exact no more royalties for their machines, but to sell them to their licensees, or to strangers, for a gross sum of $350 for a new and $250 for an old machine, which were about the same amounts the original lessees paid for the expenses incidental to setting up their machines. This was called a commutation of royalties. This court of action was determined upon after consultation between the plaintiff association and many of the leading manufacturers who had licenses, and the proposition has been accepted by most of the licensees. It is contended by the defendants that this action on the part of the McKay association put strangers on a more advantageous footing than themselves with respect to the patents covered by their license, because strangers could buy a machine upon the payment of the same sum which they originally paid, and use it without the payment of any royalty. The broad ground is taken that a licensor, independent of any express covenants in the license, has no right to do any act which will impair the licensee's enjoyment of the monopoly granted by the license; that the licensee has a vested interest in the monopoly which the licensor is bound to respect, and, it may be, to defend, and that if the licensor does any act whereby the monopoly is injuriously affected, such as granting other licenses for a less royalty, the licensee is relieved from the further payment of license fees under his license.
I do not understand that the doctrine of eviction, as between licensor and licensee has ever been pushed so far as this and I find no case which supports the position of the defendants. It has been held that where a patent has been repealed, or where a licensee is enjoined from acting under a license at the suit of the owner of a senior patent, there is an eviction. Walk. Pat. Sec. 307; Marston v. Swett, 66 N.Y. 206, 82 N.Y. 526; Iron Works v. Newhall, 34 Conn. 67. It was admitted by counsel for the plaintiff in Lawes v. Purser, 6 El. & Bl. 930, 932, that, if every one had publicly used the patented invention, that might amount to an eviction, and Walker, in the section cited, says that an eviction will probably be held to occur wherever the patentee is...
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Wynne v. Allen, L-V
...an action for royalties must, to be sufficient, consist of 'something corresponding to eviction.' White v. Lee, C.C., 14 F.789; McKay v. Smith, C.C., 39 F. 556; Holmes, Booth & Haydens v. McGill, 2 Cir., 108 F. 238, 47 C.C.A. 296; Victory Bottle Capping Mach. Co. v. O. & J. Mach. Co., 1 Cir......
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...patent is invalid, or that his machine is not covered by it. White v. Lee, C.C., 14 F. 789; Marston v. Swett, 82 N.Y. (526) 528; McKay v. Smith, C.C., 39 F. 556; National Rubber Co. v. Boston Rubber-Shoe Co., C.C., 41 F. 48; Pope Mfg. Co. v. Owsley, C.C., 27 F. (100) 108. See, also, Eureka ......
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Crew v. Flanagan, 36181
...of a valid patent and that, as the patent may be respected, the licensee would then have just what he bargained for, citing McKay v. Smith, C.C.D.Mass., 39 F. 556. The court in the Drackett case held that under the authorities on which it relied and had reference to there was no such mistak......
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Zenith Laboratories, Inc. v. Carter-Wallace, Inc.
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Implied Non-infringement and Ownership Warranties in Intellectual Property Agreements
...is granted is valid). 8. Cordis Corp. v. Medtronic, Inc., 780 F.2d 991, 996 (Fed. Cir. 1985). 9. Id. at 996. 10. Id. 11. McKay v. Smith, 39 F. 556 (C.C.D.Mass. 1889). 12. Id. at 558. 13. Id. 14. Loew's Inc. v. Wolff, 101 F.Supp. 981, 987 (S.D.Cal. 1951). 15. Id. at 983. 16. Id. at 984. 17. ......