3 McLean 523 | U.S. Circuit Court for the District of Ohio | 1845
This is an application at chambers for an injunction to restrain the defendant from using a certain planing machine, claimed by the complainants under Woodworth’s patent. In their bill, the complainants set out the obtainment of the original patent by Woodworth, and the renewal of it by his administrator, the 16th November, 1842, all of which proceedings are alleged to be formal and valid: and they furtlier state that they are the assignees of the patent for Hamilton county, Ohio, and other territory, as specified in the assignment-; that in the above county, they have had for a long time the machine in operation, and that the defendant, having full knowledge of this, applied for a license to run said machine in Hamilton county, which was granted by the complainants, agreeably to the terms of a sealed contract, dated the 11th of September, 1843; that, by the contract, defendant bound himself to pay to the complainants one dollar and twenty-five cents for every thousand feet of boards he should plane, to be paid on Monday of every week, and that he should render an account, if required, under oath, and also should keep books, to which the complainants should have access, and in which the boards planed should be entered; that the defendant should require payment in cash before the boards planed, except those planed for himself, should be taken out of his possession; that, for a short time, the defendant complied with the contract by making payment, &c., but for some time past he has utterly refused to make the stipulated payments to the complainants, and in other respects has refused to be governed by the contract, although he still continues to run the machine; and on this ground an injunction is prayed, &c.
The defendant admits the obtainment, renewal and assignment of the patent, as stated by the complainants; but he denies the validity of the renewed patent He denies that he has refused to render an account of the plank planed, or that he has rendered a false account. His books, he alleges, have always been accessiuie to the complainants, but he admits the failure to make payment and he avers that the complainants have, in several respects, violated the contract on their part; that he was deceived as. to the import of certain parts of the contract, &c., and he insists that the complainants have ample remedy at law, &c. The application is made on the bill and contract referred to; and on these it must be considered, in connection with the answer. In the argument, an objection is made to the jurisdiction; and this will be first examined.
It is suggested that, as the whole controversy in the case arises under the contract of license, the parties to which being citizens of this state, the federal court cannot take jurisdiction. This objection would be unanswerable, if no right were involved in the controversy, except what arises out of the contract: as, for instance, the circuit court could take no jurisdiction under the contract, of an action, merely to recover the sums agreed to be paid by the defendant; but, in the present aspect of the case, it is not limited to the contract. The complainants set up their right under the patent, and allege that the defendant is infringing that right; that the license affords no justification whatever to the defendant. The right then of the complainants to an injunction, is not founded by them on the contract, but on the assignment of the patent. If the object of the bill were merely to enforce a specific execution of the contract, the circuit court of the United States could exercise no jurisdiction in the case. It must be admitted that the contract constitutes an important part of the case. Except on the ground that the patent is invalid, under which the complainants claim, there is no pretence of right by the defendant to use the machine, unless he derives it from the contract. In this view, the contract must be considered as a license to the defendant, and its terms must be- construed. As the validity of Wood-worth’s patent, and the assignment to complainants, as far as regards the right to an injunction, has been heretofore considered and decided, on this motion that question will not be examined. It may not be im
Now the terms of the contract make the performance of its stipulations by the defendant a condition to his continued use of the machine; and if the words of the contract did not import, and indeed clearly sustain this view, equitable considerations, arising from the nature of the contract, would require such a construction of it. The payment is to be made weekly. Could any reasonable construction of the contract give the right to run the machine by the defendant, in default of such payment? The frequent settlement and payments show that longer indulgence was not intended by the parties, and that a remedy at law would be no adequate relief to the complainants. To enforce the payments by legal means, would require a weekly suit; and this would subject the complainants to inconvenience, delay and expense, which would nearly, if not quite, be equal to the amount recovered. Such a construction of the agreement would be as inequitable as the remedy proposed- would be inadequate. If the defendant claims any right under the contract, he must show that he has done everything on his part, which in equity he can be required to do, to entitle him to the right asserted. He has a, license to use the machine on certain conditions; but it does not follow that he may use it without conditions. The alleged violation of the contract by the complainants, does not help the equity of the defendant. He asks a specific execution of the contract, for he justifies under it. Can he do this on the ground that the complainants have given a license to others to use Woodworth’s patent, in violation of the agreement? In admitting his failure to make the weekly payments, he, in effect, admits that he has done nothing to entitle him to the use of the machine. The complainants, in the close of the contract, reserve the right, under certain circumstances, to give other licenses. This the defendant avers was not understood by him, and that he was overreached by it If the defendant be dissatisfied with the • contract, he has only to abandon it. He is under no obligation to run the machine. But if he do run it, he must conform to the conditions on which the right to do so was granted.
The complainants invoke the aid of equity, not to decree a specific execution of the contract, but to protect their rights as assignees of the patent. This right they allege has been infringed. The defendant relies on the license contained in the contract; but, having failed to make the weekly payments, he has no pretence of right to run the machine. To entitle himself to the benefit of the license, it is incumbent on the defendant to do all which he is bound to do; and then, if be fail in the strict performance, by reason of the act of the complainants, he will be equally entitled to the use of the machine, as if he had literally and fully performed his part of the contract — as if he had tendered the weekly payments, having kept a regular account, and the complainants refused to receive the money, the defendant’s right could not be questioned. But he has failed either to make or tender these payments. He, therefore, can have no standing or claim in law or equity, either to the use of the machine or to damages from the complainants.
A question is made whether the failure of the defendant to make the weekly payments operates as a forfeiture of the contract. There is no condition of forfeiture in the contract. Whether it has been abandoned by the defendant must depend upon the fcir-cumstances of the case. A court of chancery will not decree the cancelment of a contract, except for fraud or mistake. In this case, the party who has violated the contract, and complains of its unfairness, claims the benefit of it. A court of equity, as well as a court of law, must act upon a contract as it is; or, for sufficient reasons, chancery will direct it to be delivered up and canceled. The right claimed by the complainants is an equitable right, which is pro
Upon the whole, I will allow the writ prayed for, to enjoin the defendant from the use of the planing machine described in the bill, unless he shall pay, or offer to pay, to the complainants, one dollar and twenty-five cents for each and every thousand feet of boards he may have planed, the preceding week, every Monday, during the unexpired term of the patent; and unless he shall keep a regular account of the planing done, and permit the complainants to have access to the books, and unless the defendant shall also do the other things, which, by the contract, he is bound to do, as the conditions od which he is authorized to use the machine.