Victor Talking Mach. Co. v. Straus

• Decision Date: 17 July 1915
• Docket Number: 287.
• Citation: 225 F. 535
• Parties: VICTOR TALKING MACH. CO. v. STRAUS et al.
• Court: U.S. Court of Appeals — Second Circuit

225 F. 535

VICTOR TALKING MACH. CO. v. STRAUS et al.

No. 287.

United States Court of Appeals, Second Circuit.

July 17, 1915

This cause comes here on an appeal from a decree entered by the District Court of the United States for the Southern District of New York dismissing the plaintiff's bill. 222 F. 524.

The Victor Talking Machine Company is a corporation organized and existing under the laws of the state of New York.

The defendants are each and all of them citizens of the state of New York, and constitute a copartnership under the trade-name of R. H. Macy & Co., and carry on business in the city of New York. The Victor Talking Machine Company claims to be the sole owner of letters patent of the United States No. 947,227 issued to it January 25, 1910, as assignee of John C English, and of certain other patents relating to talking machines and records and which are not here specified.

The defendants were impleaded in the court below in an action in equity charging them with infringement of a number of patents (some of which have been adjudicated) owned by the plaintiff corporation for its well-known sound-reproducing machines and sound records adapted to be used therewith. The infringement charged was not the usual one of a making and selling, for the machines and records which came into the possession of defendants, and which they sold and offered for sale, are genuine machines and sound records, of plaintiff's manufacture, but for an inhibited sale and violative use of such machines and records, in excess of the license grant; each specific machine and sound record being licensed for use only, by a specific and nonassignable license attached thereto, and also limited under certain conditions and restrictions as to such use, and by the same license grant the licensee obtained a conditional title only to the physical thing embodying the patented invention and to which the patent license appertained.

The defendants, without pleading to the merits by answer, filed their motion, under new equity rule 29 (198 F. xxvi, 115 C.C.A. xxvi), to dismiss the bill, assigning as one of the grounds, in the nature of a demurrer, that the bill did not set forth any cause of action in equity; the defendant contending argumentatively in support of this ground of demurrer, that the license contract was in fact and in law an unlimited and unconditional sale, under which the patented machines and sound records had, in fact and in law, passed out of the monopoly, and hence that defendants had a valid and unlimited title thereto to do as they pleased with them.

Frederick A....