American Bell Tel. Co. v. Kitsell

35 F. 521 | U.S. Circuit Court for the District of Southern New York | 1888

Walt,ace, J.

In refusing to insert a provision in the decree that the defendant deliver over the infringing instruments to the complainant to be destroyed, notwithstanding the bill, which has been taken as confessed, contains a prayer, among others, for such relief, the refusal is placed not oil the want of power of the court to make such a decree, but upon the want of any apparent necessity for making one differing from those ordinarily granted by the courts of this country in suits for the infringement of patent rights. Where tho court has power to decree, necessarily it has power to carry its decree into effectual execution; and a" court which does not hesitate 1o enforce its process by attachment and imprisonment of the person, and by sequestration of the property of parlies, in order to compel obedience, would not hesitate from any consideration of want of power or propriety to order property to be destroyed which has been created in defiance of the rights of another, and is being used in further encroachment upon such rights, whenever it might be essential to the ends of justice that this should be done. It is common in England to include such a provision as is asked for in tho decree. Freanon v. Loe, L. R. 9 Ch. 67; Betts v. De Vitre, 34 Law J. Ch. 289; Needham v. Oxley, 8 Law T. (N. S.) 604. The power of the court to make such a decree is recognized in Birdsell v. Shaliol, 112 U. S. 485, 487, 5 Sup. Ct. Rep. 244. An example in close analogy to such a decree is found in tho case of Emperor v. Day, 2 Griff. 628, where Kossuth, who assumed to be acting as president of Hungary, chosen by the estates of the nation, had caused notes to be prepared, intending to issue them at some future time as the public paper money of the nation, when lawfully sanctioned by the diet; and the bill filed against him prayed that the defendants deliver to the plaintiff, to be destroyed, the plates and the documents printed therefrom. The court decreed according to the prayer of the bill. In this country the common injunction against making, vending, or using the infringing article has generally been found ample to protect the owner of a patent-right; and it is not desirable to put in motion .any of the extraordinary machinery of the court to attain ends which its simple and familiar process is fully adequate to accomplish. If it appeared that the defendant had mala fide and clandestinely set about to appropriate the invention patented, or if it appeared probable from his conduct in the past that he would attempt to use the infringing article in the future, or even if there were any peculiar circumstances to indicate that the infringing telephonic instruments could be readily used surreptitiously to the injury of the complainant, the exceptional decree sought might be granted. As nothing of this kind appears, the complainant must be content with the remedy given to ordinary suitors. The application savors of oppression.