Cortelyou v. Charles Eneu Johnson & Co.
207 U.S. 196
SCOTUS
1907
Check Treatment
Mr. Justice Brewer

delivered the opinion of the court.

This is а suit to restrain'an alleged infringement of-a patent granted June 22, 1897, for the stencil ■ duplicating machine known as the rоtary Neostyle. .The plaintiffs below, petitioners here,' represent the entire interest in the patent. There is nо claim of any infringement, by using or selling the patented machines, but of-an indirect infringement in the following ‍‌‌‌​​‌​‌​‌‌‌​​​​​​‌​‌‌‌​‌​‌‌​​‌‌‌​‌​‌‌‌​​​​​​‌​‌‍manner: For the last few years the rotary Neostyle has been sold subject to this license, which was plainly disclosed on the baseboard of tlie'fnachine: “License agreement. This machine is sold by the Neostyle Company with the license restriction thаt it can be used only with stencil paper, ink and other supplies made by the Neostyle Company, New York city.” '

*199 The defendant company (which is engaged in the manufacture and sale of ink) is, it is contended, engaged in selling ink to the purсhasers of these machines for use thereon; that it is thus inducing a breach of the license contracts and is responsible as indirectly infringing the patent rights of plaintiffs. The Circuit ‍‌‌‌​​‌​‌​‌‌‌​​​​​​‌​‌‌‌​‌​‌‌​​‌‌‌​‌​‌‌‌​​​​​​‌​‌‍Court sustainéd the contention and entered an interlocutory dеcree for an injunction and an accounting;'. 138 Fed. Rep. 110. On appeal the Circuit Court of Appeals for thе Second Circuit reversed this decree and remanded the case to the Circuit Court, with instructions to dismiss the bill (145 Fed. Rep. 933; 76 C. C. A. 455), whereupon the case was brought here on certiorari.

Thе three judges of the Circuit Court of Appeals concurred in reversing the decree of the Circuit Court on the ground that the evidence was not sufficient to show that the defendant had notice that the machines for which the ink was ordered had been sold under any restrictions, but they differed upon the question whether there was any liability in case sufficient notice of the license agreement had been brought home to the defendant. The majority were of the opinion ‍‌‌‌​​‌​‌​‌‌‌​​​​​​‌​‌‌‌​‌​‌‌​​‌‌‌​‌​‌‌‌​​​​​​‌​‌‍that the doctrine of contributory infringement, which they conceded to exist, should not be extended beyond those articles which are either parts, of a patented combination or device, or which are produced for the sole purpose of being so used, and should not be applied to the staple articles of сommerce. In that view of the case the article supplied being ink, a thing of common use, its sale to a purchaser of the Neostyle machine would be no infringement.

While in Bement v. National Harrow Company, 186 U. S. 70, this court held, in respect to patent rights, that with few excеptions “any conditions which are not in their very nature illegal with regard to this kind of property, imposed by the patеntee and agreed to by the licensee for the right to manufacture ‍‌‌‌​​‌​‌​‌‌‌​​​​​​‌​‌‌‌​‌​‌‌​​‌‌‌​‌​‌‌‌​​​​​​‌​‌‍or use or sell the article, will be upheld by thе courts,” it is unnecessary to consider how far a stipulation in a contract between the owner, of a patent right and the purchaser from-.him of a machine manufactured under that right, that it should *200 be used only in a certain way, will sustain аn action in favor of the vendor against the purchaser in case of a breach of that stipulation. So, although” “if one maliciously interferes ‍‌‌‌​​‌​‌​‌‌‌​​​​​​‌​‌‌‌​‌​‌‌​​‌‌‌​‌​‌‌‌​​​​​​‌​‌‍in a contract between two- parties, and induces one of them to breаk that contract to the injury- of the other, the party injured can maintain an action against the wrongdoer,” Angle v. Chicago, St. Paul &c. Railway, 151 U. S. 1, 13, it is alsо unnecessary to determine whether this states the full measure of liability resting upon a party interfering and inducing the breaking of a contract, for we concur in the views expressed by all the judges of the Court of Appeals that there is no sufficient evidence of notice. True, the defendant filled a few orders for ink to be used on a rotary Neоstyle, but it does not appear that it ever solicited an order for ink to be so used, that it was ever notified by the рlaintiffs of the .rights which they claimed, or that anything which it did was considered by them an infringement upon those rights. Further, none of the сhief executive officers of thé company had knowledge of the special character of the rotary-Neostyle machine or the restrictions on the purcháse of supplies. The case of the plaintiffs in this resрect rests mainly ’ on the testimony of the witness, Gerber, who testified that at the instance of the manager of the Neostyle Company he wrote to the defendant for a one-pound can of black ink for use on the rotary Neоstyle, saying, “I will be at my office Friday' afternoon, between 1:30 and 3:30, and if convenient have your representative сall at that time.” A salesman of the defendant, named Randall, did call. The witness directed Randall's attention to the rеstrictions on the single machine he had in. his office, and asked if he would have any trouble with the Neostyle Company if he used the defendant’s ink. Randall replied in the negative, and added that “the ink in question was not patented, that anybody could make or use it; that no trouble would come to me from the use of the ink which he sold.” The restriction on the machine shown to Randall was one formerly used by plaintiffs, but which had been discarded prior toAhis transaction and for it the present licensé agreement *201 had been substituted. The restriction shown to Randall stated that the machine was sold “with the express understanding that it is licensed to be used only with stencil paper and ink (both of which are patented) made by the Neostyle Company of New York city.” Evidently from, his reply Randall’s attention was drawn to the question of a patent оn the ink. Further he was not an officer or general agent of the defendant company, but simply a salesman and it cannot be that this talk with him is notice to and binding on his principal in respect to all future transactions.

After reviewing all thе minor considerations to which our ' attention has been called by the plaintiffs, we see no sufficient reason for disagreeing with the unanimous opinion of the Circuit Court of Appeals in respect to the matter of notice, and its decree is

Affirmed.