the books to which it is applied; and the use by the defendants of the name "Chatter-book" upon the books which are represented by the exhibits in the case, the same being books of a juvenile character, of the general appearance, style, and manner of cover of complainants' books, should be enjoined pendente lite.
(Oircuz't Court, S. D. New York. November 15, 1886.)
1, PATENTS FOR INVENTIONS-INFRINGEMENT-ASSIGNMENT AND LICENSE-lNJUNOTION AND DAMAGES-PARTY ENTITLED.
Where a patentee has transferred "the exclusive right to the use of the improvements and rights secured to her by the letters patent," for the whole term of the patent, "b:r way of license, and not as transfer of a title to the letters patent," and stIpulates to "defend the validity of the patent against all infringements, .. and, on due notice of infringements, "to proceed to seek to enjoin" such infringement, and to secure such damages as may be reason· able and commensurate with the injury done by such infringement to the rights secured" by the transfer, an action for damages for infringement and injunction should be brought in the transferee's name, as the patentee would not suffer damages by the infringement, and has not made herself liable for the payment of damages, and they would not belong to her if recovered.
FORMER EMPLOYE IMPLIED LWENSE-
SAME - PRELIMINARY INJUNOTION "DAISY HOOD."
Where tne affidavits show that inventor, while employed by a manufacturer ItS superintendent, had been accustomed to prepare new designs for the use of defendant's business, for some of which he had obtained patents, and that this was part of his employment and duty, and that in the course of such employment he designed the Daisy Hood and applied for a patent therefor, the solicitor's charge for which was paid by defendant, and defendant, for several months, manufactured the design under the inventor's superintendence and by his permission, and without further compensation to him than his salary, and the inventor, having quit defendant's employ, assigned the patent-right in the design to his wife, and organized a new firm for the manufacture of the design, to which his wife assigned the exclusive right to use the patent-right, held, that a grant, license, or to use the design was implied from the contract and relation of the parties, and that a prelim· inary injunction should not be granted.
Tn Equity. Bill for injunction and damages. Walter R. Leggat, for complainant. Wm. B. Elli80n and Cha8. C. Gill, for defimdant.
BROWN, J. The complainant 'seeks to enjoin the defendant against the manufacture and sale of a certain form of "hood" known as the "Daisy Hood," the design for which was invented bY' hel' husband, Isidor Herman, and for which a patent was taken out, in the complainant's name, October 12, 1886. The defendant does not assail the validity of the patent, but den'ies the right of the plaintiff to bring suit in her own name; and also sets up a license in effect for the manufacture of the hood in question.
BERMAN 'V. BERMAN.
tomed to perform embraced the preparation of new designs, many hundreds of which he had prepared forothe use of the defendant's business, and for some of which he had obtained patents. I ani sat. isfied that this was a part of the plaintiff's employment and duty; and that the skill, taste, and inventive resource of Isidor Herman in the preparation of new designs were an important part of the consid. , eration of his employment, on which the success of the business was in part deemed to depend;. and that it was within the contemplation .and expectation of both parties that the defendant should have the right to use in his business all the designs of Isidor Herman made in this department, and in the course of his employment. The de·sign for the "Da.isy Hood" was invented by him in 1886, while thus -employed, and in the course of his employment. Application for a patent thereon was made by him on the sixteenth of June, 1886. Two days before that date, he had paid to his solicitors $25 for that pm'pose; and on the same day received a check from the defendant for $35, $25 of which was on account of the solicitor's charge, and -entered on the defendant's books, not as a charge against Isidor Herman, but as one of the items of the expenses of the defendant's business. In August following, Isidor Herman left the defendant's employ, without any legal justification, so far as the papers submitted to me disclose; and, having assigned the patent-rights to his wife, he organizeda new firm for the manufacture of the "Daisy Hood" and other articles. Before !sidor Herman left the defendant's employ, the defendant had been engaged for several months in manufacturing the "Daisy Hood" under his superintendence, by his permission, and without objection, and without further compensation. The case, as presented upon the affidavits, seems to me to fall within the principles of the decisions in McOlu·rg v. Kingsland, 1 How. 202, and Ohabot v. American Button-hole Co., 6 Fish. Pat. Cas. 71, in which a license, special privilege, or grant to use the invention is to be necessarily inferred from the contract, and from the relations and acts of the parties. See, also, Blanchard v. Sprague, 1 Cliff. 288. The moJiion for an injunction should be denied.
BALTIMORE CAR-WHEEL CO. V. BEMIS.
BALTIMORE CAR- WHEEL CO.
and others v.
(lUrc'Uit Oourt, D. J!asB(Jchusett8. November 24, 1886.)
PATENTS FOR lNvENTIONS-LmEL-INJUNOTION.
There is no jurisdiction in the United States courts of equity to enjoin a libel on the rights or title of an owner of letters patent.
Benjamin Price and William G. Williamson, for complainants. Benjamin F. Thltrston and Wilmarth H. Thurston, for respondents. Heard by COLT and CARPENTER, JJ.
CARPENTER, J. This bill alleges that the complainants are the owners of and licensees under certain letters patent for cars and car axle boxes, and that the respondents have falsely and maliciously published statements and written letters to the effect that the complainants have failed in a suit for infringement of said letters patent brought against the respondents; that the axle boxes and gear manufactured by the complainants are infringements of certain other letters patents owned by the respondents; and that suits are about to be brought by the respondents, on account of such infringement, against the complainants, and those who shall purchase and use their axle boxes and gears. The bill further alleges that, by reason of the said false statements, those who desire to purchase and use the apparatus made and sold by the complainants are deterred from so doing through fear of litigation, and the business of the complainants is thereby injured; and prays for an injunction. To this bill respondents demur. · We think the demurrer is well founded. There is no jurisdiction in a court of equity to enjoin libel on the rights or title of the complainant. We understand this to be the settled law both in England and in this country, in the absence of statutory provisions conferring such jurisdiction. The question is so fully and clearly discussed in the leading dElcisions that we do no more than cite them. PrudentialAssur. Go.v. Knott, L. R.lO Ch.142; Boston Diatite Go. v.Flor,nee Manuj'g Go., 114 Mass. 69; Kidd v. Horry, 28 Fed. Rep. 773.