17 Blatchf. 308 | U.S. Circuit Court for the District of Southern New York | 1879
The motion for a preliminary injunction in this case is opposed, on special grounds not involving the construction or validity of the plaintiffs patent, or the question of infringement.
The defendant is a corporation created under the laws of the state of New York, prior to January 2d. 1SGG. On that day an act was passed by the legislature of the state of Florida, granting to said corporation “the sole and exclusive right and privilege,” for 21
On the 5th of May, 1806, an act was passed by the congress of the United States (14 Stat. 44) granting to said corporation the sole privilege, for a period of 14 years from that day, “to lay, construct, land, maintain and operate, telegraphic or magnetic lines or cables, in and over the waters, reefs, islands, shores and lands, over which the United States have jurisdiction, from the shores of the state of Florida, in the said United States, to the island of Cuba and the Bahamas, cither or both, and other West India islands.”
The corporation has, also, concessions from the government of Spain in regard to the maintenance, in Cuba, of a submarine cable landed there.
The bill alleges, that the defendant, “at the city of New York and elsewhere, has (particularly in the state of Florida, and the waters thereof, where said defendant uses and operates a telegraph cable extending to the island of Cuba, and also on the lines of telegraph connecting said cable with New York City and other points), within the said southern district of New York and elsewhere,” without license, ever since the date of the plaintiff’s patent, made, used and sold the patented invention in insulating submarine cables or telegraphic wires, used in connection with the telegraphic lines of the defendant, and in insulating wires and other conductors of electricity, used in connection with electric or galvanic batteries and telegraphic instruments.
The defendant has been using, for telegraphic communication between Florida and Cuba, cables containing wires insulated by gutta percha, within the claim of the plaintiff’s patent, and is now using such cables. The defendant contends, that, because of the exclusive grants to it from the state of Florida and the congress of the United States, which were made before May 21st, ISO", the date of the issuing of the plaintiff’s patent, the plaintiff has no right to use or operate his patented invention for telegraphic purposes between the shores of Florida and the island of Cuba, and, therefore, cannot enjoin the defendant from using such invention for suck purposes between such termini. The proposition on the part of the defendant is, that, by the grants to it of the exclusive right, for a defined period of time, to lay telegraphic submarine cables, and maintain thereby telegraphic communication, between the state of Florida and the island of Cuba, it acquired the right to use without molestation all subsequently patented inventions in the construction of such cables, because the patentees of such inventions cannot lay such cables. In another form, it is contended, that, as the plaintiff has no right to use his patented invention in the place where the defendant is using it, he can recover no profits or damages for its use in that place, and, therefore, has no right in that place which can be protected by injunction.
The grants to the defendant are grants to lay a cable, not to lay a cable of a particular construction, nor to lay any cable the use of which would violate a patent either existing or subsequently granted. Neither the government nor an agent of the government, nor a private individual, whether claiming to act under the authority of the government or otherwise, can use a patented improvement without the license of the paten-tee. U. S. v. Burns, 12 Wall. [79 U. S.] 246; Cammeyer v. Newton, 94 U. S. 225, 235. [See Campbell v. James, Case No. 2,361.]
The same order will be made in this case which was made in the case against the Western Union Telegraph Company [Case No. 2,993],
[From 9 Reporter, 166.]