65 F. 619 | U.S. Circuit Court for the District of Western Michigan | 1895
The bill is filed to restrain the alleged infringement of rights claimed to be possessed by the complainant under certain patents issued for inventions in button-fastening machines. The pith of the allegations is that the complainants, being the owners of said patents, do not. sell the machines manufactured under them, outright, but with a condition, and that they attach to each machine, when they sell it, a conspicuous plate or tag, on which there is expressed a restriction to the effect that the machine was sold and purchased to use only the staples employed for fastening made by the owner of the patent, and that every user of the machine has full notice of this restriction; that the defendants, notwithstanding this, and with knowledge of these facts, manufacture staples adapted only for use in the machines so sold by the complainants, and persuade the users of the machines to buy and use them in violation of the above-mentioned restriction. To this bill the defendants have demurred. The two principal objections to the bill which have been argued, and to which this opinion will be limited, are (1) that as the defendants are not engaged in the business in which the machines are employed, and are. only concerned therewith in selling to those who are so employed a nonpateuted article,— an article which constitutes no part of the patented thing, — they are not accountable to the complainant; (2) that the restriction which the complainant puts upon the uses of these machines, whereby a monopoly in an unpatented article is secured to the complainant, is contrary to public policy, and that a court of equity will not enforce it.
In support of the first objection, it is urged that the cases cited by the complainant to show that parties -held guilty of contributory infringement should be restrained were cases in which some part of a patented article was sold to another, with intent that it should be combined with other elements to make up the infringing article. I am not clear, however, that this distinction can be maintained upon the allegations of this bill, which are very broad and emphatic in asserting, not merely that the defendants make and sell the staples, but that they actively persuade the users of the machines to violate the supposed rights secured to the complainant by the páteni, and the restriction in the sale of its machines. It would rather seem that, if the complainant has such rights as it asserts, the defendants would, upon such facts, be tort feasors, and that equity would restrain them, in the circumstances alleged.
But, upon the second ground, I think the demurrer should be sus
“From time immemorial, it has been the recognized duty of such courts to exercise a discretion; to refuse their aid in the enforcement of unconscionable, oppressive, or iniquitous contracts; and to turn the party claiming the benefit over to a court of law. This distinction was recognized by this court in Cathcart v. Robinson, 5 Pet. 264, 276, wherein Chief Justice Marshall says: 'The difference between that degree of unfairness which will induce a court of equity to interfere actively, by setting aside a contract, and that which will induce a court to withhold its aid, is well settled. 10 Ves. 292; 2 Cox, Ch. 77. It is said that the plaintiff must come into court with clean hands, and that a defendant may resist a bill for specific performance by showing that under the circumstances the plaintiff is not entitled to the relief he asks. Omission or mistake in the agreement, or that it is unconscientious or unreasonable, or that there has been concealment, misrepresentation, or any unfairness, are enumerated among the causes which will induce the court to refuse its aid.’ ”
A bill for an injunction, since it invokes tbe discretion of tbe court, is subject to tbe same objections. 2 Story, Eq. Jur. § 959a. Tbe demurrer will be sustained, and tbe bill dismissed.