194 Iowa 1213 | Iowa | 1922
This appeal involves a question of jurisdiction and nothing else. Did the cause of action- stated in the counterclaim to which the demurrer is addressed involve state or Federal jurisdiction? We think the case of American Well Works Co. v. Layne & Bowler Co. 241 U. S. 257 (60 L. Ed. 987) is controlling on the point in issue. Here, as there, the question depends upon the allegations upon which the cause of action is declared. Here, as there, the cause may be summed up in a few words.
Plaintiff alleges ownership in a certain United States pat
Without question plaintiff selected the right forum. Binney v. Annan, 107 Mass. 94; Annin v. Wren, 44 Hun (N. Y.) 352; Pliable Shoe Co. v. Bryant, 81 Fed. 521; Wise v. Tube Bend. Mach. Co. 194 N. Y. 272 (87 N. E. 430); Billings v. Ames, 32 Mo. 265; Blakeney v. Goode, 30 O. St. 350; Hunt v. Hoover, 24 Iowa 231; Lockwood v. Lockwood & Frederick, 33 Iowa 509; Meyers v. Funk 56 Iowa 52; Hartell v. Tilghman, 99 U. S. 547 (25 L. Ed. 357); Dale Tile Mfg. Co. v. Hyatt, 125 U. S. 46 (31 L. Ed. 683).
Defendant in his answer denied the right of the plaintiff to the relief demanded and by way of counterclaim alleged that during the years 1915 and 1916 the plaintiff maliciously and with an intent to injure by means of oral threats and written and printed letters and circulars directed to the customers of the defendant, sought to induce the defendant’s customers to cease buying the products of the defendant well knowing that the defendant was engaged in the manufacture and sale of steel wagon tongues with adjustable hounds to various buyers in the United States and Canada; that the plaintiff sought by said means to intimidate said trade and to induce the said customers to cease buying plaintiff’s products; that said circulars alleged that the plaintiff had the sole and exclusive right to malee use and sell the wagon tongue like that manufactured by the defendant and threatened infringement suit against those dealers who handled the defendant’s products; that such statements were false and were made with the malicious purpose of injuring the defendant’s trade; that the plaintiff did not own the exclusive right to manufacture and sell said article; that at the time said circulars were sent to the defendant’s trade the defendant was manufacturing the wagon tongues described in the plaintiff’s circulars, but said wagon tongue was not covered by any patent owned by the plaintiff and said circulars were issued and circulated with the intent on plaintiff’s part to make said trade and dealers believe that the defendant was manufacturing a
A demurrer to this counterclaim was filed on the ground that the district court of Iowa had no jurisdiction over the subject-matter of the counterclaim for the reason that the said cause of action involves an infringement and construction of a patent of which the Federal court has exclusive jurisdiction.
This action on the counterclaim sounds in tort and is predicated on slander of property or title. In order to recover under the counterclaim the defendant had the burden to prove (1) the uttering and publication of the slanderous words (2) that they were false (3) that they were malicious (4) that he sustained special damages thereby (5) that it has an estate or interest in the property slandered.
Can the defendant prove that the alleged slanderous words were false without presenting and calling for an .analysis and construction of the plaintiff’s patents and in effect showing that the scope of the plaintiff’s patent is narrower than that claimed and in fact and in law an infringement upon the other patents pleaded ?
In the Layne & Bowler Co. case, supra, it is said: “It is evident that the claim for damages is based upon conduct, or, more specifically, language, tending to persuade the public to withdraw its custom from the plaintiff and having that effect to its damage. Such conduct having such effect is equally actionable whether it produces the result by persuasion, by threats, or by falsehood, * * * and it is enough to allege and prove the conduct and effect, leaving the defendant to justify if he can.
In brief, the counterclaim is not founded on any of. the patent laws of the United States, but is specifically based upon an alleged tort of the plaintiff. The decisions make a clear distinction between a case arising under the patent laws and a qtiestion arising under those laws. Pratt v. Paris G. L. & C. Co. 168 U. S. 255 (42 L. Ed. 458).
It is also well settled that the 'Federal courts have exclusive jurisdiction in law and in equity over cases arising under patent laws and involving the construction and infringement of a patent, but there is nothing in the Federal statutes that deprives a state court of jurisdiction in tort when a patent is incidentally or collaterally brought into the case. Letters and circulars threatening to bring suit for infringement of a patent may be actionable as slander of the property. Computing Scale Co. v. National Com. Scale Co. 79 Fed. 962; New York Filter Co. v. Schwarzwalder, 58 Fed. 577. An action for deceit in the sale of patent rights is maintainable in a state court although the determination of the case collaterally involves the question of the construction and validity of a United States patent. David v. Park, 103 Mass. 501. Likewise a state court has jurisdiction to try an action for damages for the alleged violation of a contract based upon patent rights even if the defense is based on the invalidity of the patent or that its scope does not include the articles involved. Buffalo Specialty Co. v. Gougar, 26 Colo. App. 523 (144 Pac. 325). See, also, Smith & Egge Mfg. Co. v. Webster, 87 Conn. 74 (86 Atl. 763); Robison v. Fishback, 175 Ind. 132 (93 N. E. 666).
