Victor Talking Mach. Co. v. The Fair

• Decision Date: 15 November 1902
• Citation: 118 F. 609
• Parties: VICTOR TALKING MACH. CO. et al. v. THE FAIR.
• Court: U.S. District Court — Northern District of Illinois

118 F. 609

VICTOR TALKING MACH. CO. et al. v. THE FAIR.

United States Circuit Court, N.D. Illinois, Northern Division.

November 15, 1902

Horace Pettit and Peirce & Fisher, for complainant.

Walter H. Chamberlain, for defendant.

KOHLSAAT District Judge.

On or about April 18, 1902, complainant the Victor Talking Machine Company sold one of its patented talking machines, numbered 23,157, to a jobber. The jobber took the machine subject to the legal effect of certain conditions, to wit, those contained in a certain printed notice fastened upon said machine, which reads as follows:

'This machine, which is registered on our books, No. 23,157, is licensed by us for sale and use only when sold to the public at a price not less than $25. No license is granted to use this machine when sold at a less price. Any sale or use of this machine when sold in violation of this condition will be considered as an infringement of our United States patent under which this machine and records used in connection therewith are constructed, and all parties so selling or using this machine contrary to the terms of this license will be treated as infringers of said patents, and will render themselves liable to suit and damages. This license is good only so long as this label and the above-noted registered number remain upon the machine, and erasures or removals of this label will be construed as a violation of the license. A purchase is an acceptance of these conditions. All rights revert to the undersigned in the event of any violation.

'Victor Talking Machine Co.

'March 1st, 1902.'

Of this notice the jobber was advised. The jobber sold the same to the defendant herein, who took the same charged with such notice. The defendant subsequently advertised and sold said machine for $18, without any authority from complainant so to do, and, it is alleged, in violation of the terms and conditions of the said requirement.

Complainants charge that the transaction amounted simply to a license upon condition, viz., a limited license, and not to an absolute sale, and that, by reason of the sale of said machine at less than $25, defendant became an infringer. On the other hand, the defendant insists that the sale, as originally made, was an absolute sale of the machine, and that, if the complainant has any remedy, it grows out of the contract. The suit is for infringement of complainant's patent.

In support of its right to maintain such a proceeding, complainant cites Bement v. Harrow Co., 186 U.S. 70, 22 Sup.Ct. 747, 46 L.Ed.--, which was a case taken by writ of error to the supreme court. It was brought originally in the courts of New York, and, of course, could not have involved any question of infringement of a patent. Justice Peckham, speaking for the court, said that the only federal question raised in the record was as to the so-called Sherman act. It was in fact a suit on the contract of license which the New York court of appeals took jurisdiction of, and which was affirmed by the supreme court. Moreover, that case grew out of a license to manufacture and sell the patented articles in manufacturing and selling harrows, and no attempt was thereby made to bind purchasers from the licensee.

Complainant also cites Heaton-Peninsular Button Fastener Co. v. Eureka Specialty Co., 25 C.C.A. 267, 77 F. 288, 35 L.R.A. 728, decided by the circuit court of appeals for the Sixth circuit. In that case the facts were briefly as follows, viz.: Complainant sold a patented machine for fastening buttons to shoes. Affixed to the machine was a metal plate inscribed:

'Condition of Sale.

'This machine is sold and purchased to use only with fasteners made by the Peninsular Novelty Company, to whom the title to said machine immediately reverts upon violation of this contract of sale.'

The defendant, the manufacturer of rival fasteners, was held to be a contributory infringer. The court held that only a limited right to the use of the machine was granted, i.e., in connection with complainant's fasteners. This case carries the law very far, but it is decided upon circumstances which do not exist in the case at bar.

The supreme court, in Bement v....