Snow & Bush v. Judson, 38 Barb. 210

Snow & Bush v. Judson

38 Barb. 210 | N.Y. Sup. Ct. | 1862

By the Court, Johnson, J.

There can be no doubt that a good cause of action is stated in the complaint. The facts, as admitted by the demurrer, are that the defendant intentionally made false statements in regard to the articles manufactured by the plaintiffs, for the purpose of preventing sales by them, of such articles, and thereby did prevent such sales, and greatly injured them in their business. This constitutes a cause of action. (Benton v. Pratt, 2 Wend. 385. White v. Merritt, 3 Seld. 352. Gallager v. Brunel, 6 Cowen, 346.)

The only question for consideration, therefore, is, whether the court has jurisdiction of the subject of the action. The subject matter of the action is the very common one of fraudulent misrepresentations by one party, to the prejudice and direct injury of another; and but for the elaborate and ingenious argument of the defendant’s counsel, I should have supposed there could be no question in respect to the jurisdiction of this court to try it. Of course the argument goes to the extent of insisting that a final judgment rendered upon this demurrer, by this court, would be a nullity, because the want of jurisdiction would appear upon the face of the record. Unless the argument goes this length, its fallacy must be but too apparent. This would be true, I suppose, if the alleged injury and cause of action grew out of the infringement of a right secured by a patent; because it must be conceded that this court has no jurisdiction in such a case, and the want of it would, in the case supposed, appear upon the face of the record. But this is no such case. The violation of the rights secured to the patentee, and his assigns, is no part of the cause of action alleged. The patent, while it confers an ex-*213elusive privilege upon the legal owner of the right, as respects the use of the invention, or the continuance, confers no right or privilege beyond that, and secures no immunity either to the person, or the acts, or the other property of such owner. He still remains amenable to the ordinary tribunals of justice, upon his promises, and for his tortious acts, the same as though he had no exclusive right whatever, even though they relate, in part, to this exclusive right. If he assails and injures another, with his patented implement, or, for the purpose of injuring, asserts a falsehood in regard to it, and thus effects the intended injury, the exclusive right affords no shield, and has nothing to do with the cause of action, except, it may he, incidentally, and as part of the evidence to establish it. This must be so, or the consequence would he a flat denial of justice in a case like this. The plaintiffs could not maintain this action in the United States courts, and must he remediless unless they can prosecute here. The only cause of action alleged is the false assertion and the resulting injury, and the demurrer admits the speaking of the words, their falsity and the alleged injury. Upon the case as it thus stands, there does not seem, to me at least, to be much room for an argument. The defendant comes, admitting the fraud and the injury, and says that the action cannot be maintained in this court, because he holds from the general government an exclusive right to the use of a particular article which he, though falsely, claimed the plaintiffs' article resembled ; and that the federal courts have exclusive jurisdiction of all causes of action for any violation of this exclusive right. It is apparent that the exclusive jurisdiction claimed does not cover the cause of action alleged. The case does not come within the letter or the intention of the act of congress. By the act of congress of July 4, 1836, jurisdiction is given to the circuit court of the United States, or any district court having the same powers, of “ all actions, suits, controversies and cases arising under any law of the United States granting or conferring to inventors the exclusive right to their inventions *214or discoveries,” In respect to all such cases state courts have no jurisdiction. (Dudley v. Mayhew, 3 Comst. 9.) But in an action to enforce the specific performance of a contract for the sale or use of a patent right, it has been held that neither the circuit nor the district court of the United States had any jurisdiction when the parties both resided in the same state in which the action was brought. (Brooks v. Stolley, 3 McLean, 523. Burr v. Gregory, 3 Paine, 426.) In case an issue should be joined in the action, and the plaintiffs put to their proofs to maintain it, they would, I apprehend, be compelled to show affirmatively that their article bore no such resemblance to that of the defendants, as to constitute an infringement of his right, But this would in no sense be an inquiry into an injury to the defendant's exclusive right, nor would it involve any question or controversy under the law granting the patent. It would be a mere comparison of two manufactured articles, in respect to the identity of the plan of construction, and for the purpose merely of establishing the falsity of the assertion, out of which the alleged cause of action has arisen.

The cases cited by the defendant’s counsel do not sustain his position. "If Under the general issue, or any other answer which the defendant may properly interpose, the trial of the action would necessarily involve an inquiry into the nature and extent of the defendant’s rights under his patent, and to a determination of those rights, this court, as those cases show, would have no jurisdiction to try the action—as in that class of actions where the issue to be tried is prize or no prize. In all such cases, whatever be the form of the action, if that question arises and is to be tried and determined, the action must be tried in the admiralty court, and no other court has jurisdiction.. This is clearly shown in the case of Hallett v. Novion, (14 John. 278; S. C. 16 id. 327,) where all the previous cases are reviewed and commented upon by the distinguished counsel for the respective parties, and by *215the court, iio matter how the question may he determined, if it is in issue to be tried.

[Monroe General Term, September 1, 1862.

But in this case, no question of patent or no patent, nor any question as to any right the defendant may have under such patent, or any violation of such right, can possibly arise to be tried. The existence of his patent, and all his rights under it, are conceded in the bringing of the action, and the only issue to be tried would.be fraud or no fraud.

I am of the opinion, therefore, that the demurrer was properly overruled at the special term, and that the order should be affirmed.

Johnson, Welles and J. C. Smith, Justices.]