PUTNAM, Circuit Judge.
Tlie prayer of tlie bill in this case asks expressly for a specific performance of the contract set out. It also contains some expressions looking to relief as on a bill for infringement of a patent. It is impossible to sustain the bill as one with a double aspect, because, in a bill for an infringement, the determination wlio are the necessary parties must be made from a different standpoint from that in a bill for specific enforcement of a, ■contract. Other substantial reasons might be given, but it is sufficient to add thai, for a bill with a double aspect, Ihe title to relief must be precisely the same in each event, which seems not possible in ihe class of bills to which this at bar belongs. Story, Eq. Pl. § 254. Unless, therefore, the complainant confesses that this bill Is strictly for an infringement, and has arranged parties accordingly, or Unit it is for a specific performance of a contract, and has arranged parties accordingly, it must be treated as multifarious, though, as the respondents have not. made that point, it cannot be dismissed on that account. Nevertheless, tlie court of its .own motion must see that the litigation is put in form to be disposed of understanding]^
The complainant cites the opinion of Judge Shipman in Magic Ruffle Co. v. Elm City Co., 13 Blatchf. 151, as though it justified a double remedy under this bill; but it seems Judge Sliipinan (page 156) declined to commit himself to that position, and Ms conclusion was that although the bill ivas so framed that it might, perhaps, have been considered either as for infringement or for [1026]*1026specific performance, yet, on the whole, it was to be held that the pleader made the alleged breach of agreement the basis of the action, and sought to recover damages for injury arising from a violation thereof. Thereupon Judge Shipman evidently worked out the case as though the bill was founded solely on the contract.
It is also apparent in the case at bar that the respondents accepted the bill as one for specific performance. This is particularly apparent from the method in which they meet the claim that they had not denied infringement, for they point out that the answer denies that respondents, “in violation of the covenant,” had made use and sold, etc. So far as the bill is uncertain in this particular, or has a double sound, the respondents were entitled to elect the construction to be put upon it; and the court approves their election. It is only by treating the bill as respondents have treated it that the court can avoid the difficulties which appear in Hartell v. Tilghman, 99 U. S. 547, in White v. Rankin, 144 U. S. 628, 12 Sup. Ct. Rep. 768, and in the other cases therein cited. :
This conclusion renders it easy to dispose of the relations to this; case of Metcalf as a special partner in Frank & Duston. I see some difficulties in the way of his being made a party defendant to a bill for infringement, without joining his partners, also; but,, on a bill for specific performance of a contract executed by Met-calf, I think he can be holden because he is a contractor, although it may embarrass the partnership with which he has allied himself. I think, also, that he cannot be permitted to avail himself of the profits of that partnership in violation of his own contract, and then excuse himself on the ground that his relations as a partner are inactive, dormant, ■ silent, or limited.
It is sufficiently plain that a mere recovery of damages, which is the only remedy the common law affords, would not be an adequate remedy for the complainant in the case at bar,, and therefore I must hold that there is jurisdiction in equity to furnish the relief which the complainant desires.
I do not consider it necessary to investigate the mass of evidence bearing on the proposition that the contract at bar was made with reference• to a certain existing machine or machines; neither do I concur in the proposition of the complainant that, so far as the contract provided for a license to Kilham, as trustee, it covered only what was expressly claimed in the Glazier patent.
That the contract did not relate to specific machines appears from many expressions in it, apportioning the rights between the complainant and the respondents according to patents, and not according to existing siructui'es. I find not a word in it which refers to the latter, while the sixth clause gives the trustee the right to make, or cause to be made, the single-strip machines, “that embody the inventions, or substantial parts thereof, described in the said patents,” meaning the Glazier patents; and this was the only license given to the trustee, or any of the defendants, [1027]*1027under this contract. As to the other proposition, while the mere letter of'what I have just, cited touches only “the inventions, or substantial parts thereof,” described in the (Hazier patents, yet it seems a strained construction to deny that Botham, as trustee, was licensed to make, or cause to he made, the machine as actually shown in the specifications and drawings attached to them. This is the practical interpretation given by the joint circular of May 25, 1888, found on the cover of complainant’s Exhibit H, as at least, so much as this was covered by the expression “Lynn covering machines,” which that circular expressly allotted to Kilhem, trustee, or his agent.
It is a simple principle, especially with reference to parties asking a specific performance of a contract by an equity court, that, when it has been varied in i he execution of details by common understanding and mutual consent, the change will be insisted on by the court, either as a practical construction, illustrating the original intention of the contract, or as a supplemental agreement. But although, in' the case at; bar, it appears, and is claimed by the complainant, that the modifications of the respondents’ machine complained of were; adopted by it immediately after the contract was executed, and although I might, perhaps, find enough in the record, showing that the complainant had slept on its rights, to bar an account or assessment of damages, if the case came to that, yet I am not satisfied that the complainant was properly aware of the course of manufacture, knowingly waived its rights, or has intentionally given any construction to (he agreement, except such as it properly bears on its face.
Subject to the possible effect of the above qualifications, it must be held that all parties to the contract agreed in the strongest terms to maintain in the complainant, not only the exclusive right to ihe peculiar machines described in any of the patents originally owned by it, but also any method of covering boxes with a plurality of strips simultaneously. The portion of the contract which provided that some of the defendants might experiment on the single-strip machine, with a view of converting it into a double-strip machine, on terms to be accepted by the complainant, make especially clear ihe extent to which that contract intended to go in this direction.
It is apparent, for reasons which are stated at length in the testimony of Inman, that no machine shown by the Glazier patents could he used for a simultaneous plurality of strips, without some adaptation for that purpose.
Free access — add to your briefcase to read the full text and ask questions with AI
PUTNAM, Circuit Judge.
Tlie prayer of tlie bill in this case asks expressly for a specific performance of the contract set out. It also contains some expressions looking to relief as on a bill for infringement of a patent. It is impossible to sustain the bill as one with a double aspect, because, in a bill for an infringement, the determination wlio are the necessary parties must be made from a different standpoint from that in a bill for specific enforcement of a, ■contract. Other substantial reasons might be given, but it is sufficient to add thai, for a bill with a double aspect, Ihe title to relief must be precisely the same in each event, which seems not possible in ihe class of bills to which this at bar belongs. Story, Eq. Pl. § 254. Unless, therefore, the complainant confesses that this bill Is strictly for an infringement, and has arranged parties accordingly, or Unit it is for a specific performance of a contract, and has arranged parties accordingly, it must be treated as multifarious, though, as the respondents have not. made that point, it cannot be dismissed on that account. Nevertheless, tlie court of its .own motion must see that the litigation is put in form to be disposed of understanding]^
The complainant cites the opinion of Judge Shipman in Magic Ruffle Co. v. Elm City Co., 13 Blatchf. 151, as though it justified a double remedy under this bill; but it seems Judge Sliipinan (page 156) declined to commit himself to that position, and Ms conclusion was that although the bill ivas so framed that it might, perhaps, have been considered either as for infringement or for [1026]*1026specific performance, yet, on the whole, it was to be held that the pleader made the alleged breach of agreement the basis of the action, and sought to recover damages for injury arising from a violation thereof. Thereupon Judge Shipman evidently worked out the case as though the bill was founded solely on the contract.
It is also apparent in the case at bar that the respondents accepted the bill as one for specific performance. This is particularly apparent from the method in which they meet the claim that they had not denied infringement, for they point out that the answer denies that respondents, “in violation of the covenant,” had made use and sold, etc. So far as the bill is uncertain in this particular, or has a double sound, the respondents were entitled to elect the construction to be put upon it; and the court approves their election. It is only by treating the bill as respondents have treated it that the court can avoid the difficulties which appear in Hartell v. Tilghman, 99 U. S. 547, in White v. Rankin, 144 U. S. 628, 12 Sup. Ct. Rep. 768, and in the other cases therein cited. :
This conclusion renders it easy to dispose of the relations to this; case of Metcalf as a special partner in Frank & Duston. I see some difficulties in the way of his being made a party defendant to a bill for infringement, without joining his partners, also; but,, on a bill for specific performance of a contract executed by Met-calf, I think he can be holden because he is a contractor, although it may embarrass the partnership with which he has allied himself. I think, also, that he cannot be permitted to avail himself of the profits of that partnership in violation of his own contract, and then excuse himself on the ground that his relations as a partner are inactive, dormant, ■ silent, or limited.
It is sufficiently plain that a mere recovery of damages, which is the only remedy the common law affords, would not be an adequate remedy for the complainant in the case at bar,, and therefore I must hold that there is jurisdiction in equity to furnish the relief which the complainant desires.
I do not consider it necessary to investigate the mass of evidence bearing on the proposition that the contract at bar was made with reference• to a certain existing machine or machines; neither do I concur in the proposition of the complainant that, so far as the contract provided for a license to Kilham, as trustee, it covered only what was expressly claimed in the Glazier patent.
That the contract did not relate to specific machines appears from many expressions in it, apportioning the rights between the complainant and the respondents according to patents, and not according to existing siructui'es. I find not a word in it which refers to the latter, while the sixth clause gives the trustee the right to make, or cause to be made, the single-strip machines, “that embody the inventions, or substantial parts thereof, described in the said patents,” meaning the Glazier patents; and this was the only license given to the trustee, or any of the defendants, [1027]*1027under this contract. As to the other proposition, while the mere letter of'what I have just, cited touches only “the inventions, or substantial parts thereof,” described in the (Hazier patents, yet it seems a strained construction to deny that Botham, as trustee, was licensed to make, or cause to he made, the machine as actually shown in the specifications and drawings attached to them. This is the practical interpretation given by the joint circular of May 25, 1888, found on the cover of complainant’s Exhibit H, as at least, so much as this was covered by the expression “Lynn covering machines,” which that circular expressly allotted to Kilhem, trustee, or his agent.
It is a simple principle, especially with reference to parties asking a specific performance of a contract by an equity court, that, when it has been varied in i he execution of details by common understanding and mutual consent, the change will be insisted on by the court, either as a practical construction, illustrating the original intention of the contract, or as a supplemental agreement. But although, in' the case at; bar, it appears, and is claimed by the complainant, that the modifications of the respondents’ machine complained of were; adopted by it immediately after the contract was executed, and although I might, perhaps, find enough in the record, showing that the complainant had slept on its rights, to bar an account or assessment of damages, if the case came to that, yet I am not satisfied that the complainant was properly aware of the course of manufacture, knowingly waived its rights, or has intentionally given any construction to (he agreement, except such as it properly bears on its face.
Subject to the possible effect of the above qualifications, it must be held that all parties to the contract agreed in the strongest terms to maintain in the complainant, not only the exclusive right to ihe peculiar machines described in any of the patents originally owned by it, but also any method of covering boxes with a plurality of strips simultaneously. The portion of the contract which provided that some of the defendants might experiment on the single-strip machine, with a view of converting it into a double-strip machine, on terms to be accepted by the complainant, make especially clear ihe extent to which that contract intended to go in this direction.
It is apparent, for reasons which are stated at length in the testimony of Inman, that no machine shown by the Glazier patents could he used for a simultaneous plurality of strips, without some adaptation for that purpose. It is also plain that the respond-en f s’ machine has been adapted, either intentionally or otherwise, so that now is is capable of the extended use; this coming apparently from the interposition of a circular guide, which operates as a. double guide, in lieu of the finger, or single guide, shown in the specifications and drawings of the Glazier patent No. 360,-582, and from the omission, in connection with the reversing the frame of the machine, of the weighted level’, m, and possibly in part' from (he addition of another roller, as shown in complainant’s Exhibit A. It is not necessary, however, for the court to [1028]*1028go into these details. It is sufficient that it holds that no machine shown in the Glazier patents was capable of the use of*a simultaneous plurality of strips without some change or adaptation, while the machine as sold is thus capable. Of course, respondents cannot be limited to a. precise form of machine, so far ■ as concerns mere mechanical details which are not injurious; but what may be allowed, or not allowed, in that direction, will be a matter for consideration when the terms of the final decree are settled.
Complainant’s brief enters on a discussion of matters not charged in the bill, as, for example, a claim that the Lynn Box Machine Company be enjoined from making, selling, or using any box-making machinery covered by any of the patents. Indeed, so far as this is concerned, the nineteenth paragraph of the bill alleges that what this corporation has done was with “the consent of the defendant Kilham;” and, as he was authorized by the contract to appoint such selling agents as he saw fit, and was also to procure the manufacture of the single-strip machines by such persons as he deemed proper, subject to being personally responsible for agents not approved by the complainant, it is of no consequence whether his appointment was formal or informal, or by ratification or consent. The pith of the bill aims only at respondents’ making, using, or selling a two-strip machine, and, when this call of the bill is met, nothing further remains to be answered for.
It is admitted by the' complainant’s brief that the Lynn Box Machine 'Company neither manufactured nor sold the offending-machine. There is no proof of any complicity on its part, unless-it be by what appears on page 2 of the catalogue of complainant’s Exhibit H. There is nothing in the text of this page, and I have not been referred to anything in the proofs, which indicates that the machine there shown was adapted for two strips, or was offered as such, and the drawing is not sufficiently accurate to throw light on that point. Taken in connection with the joint circular of May 25, 1888, which appears in this catalogue, I am unable to see that it furnishes any ground of complaint. I have no doubt of the right of Kilham, trustee, or of his selling agent, Metcalf, or of any other person interested in selling the single-strip machine, to advertise it through the catalogues of the Lynn Box Machine Company, or of any other person or corporation, unless the advertisement is shown to contain some unauthorized feature; and such is not the case with this in question.
I do not find any claim of any act by Grosman, individually, or anything connecting him with this case except as director of the Lynn Box Machine Company, and I therefore think he must go out of the suit with that corporation. Rollins and Glazier are properly charged as the manufacturers, and Metcalf as" the seller, of the offending machine, and therefore must be retained in the bill.
It also appears that Metcalf is a special partner in the limited partnership of Frank & Duston, and that this partnership has [1029]*1029been using the machine in question for covering boxes with two strips simultaneously. For reasons already stated, Metcalf must be charged with the acts of the partnership, so far as his obligations under the contract are concerned, hut no account can he taken of profits as against him, in the absence of his copartners as defendants in this suit.
In Magic Ruffle Co. v. Ehn City Co., supra, Judge Shipman ordered an account of profits; but in the case at bar the complainant has not proven specific facts sufficient to show that any of the respondents have made; any profits on account of the features complained of in the machines which they sell; and, while it is very probable that unrestricted sale would eventually seriously impair the trade of the complainant, which fact is the basis of jurisdiction in tins case, yet the proofs also lack specific evidence of actual damage already suffered. On the whole I do not find enough In the record to justify ordering an account or making a reference for the purpose of assessing damages.
Let there he a decree dismissing the bill as against Grosman and the Lynn Box Machine Company, with costs, but for the complainant, against the' remaining respondents, for an injunction, with costs, and, further, against Metcalf from continuing in the partnership of Frank & Dus ton, so long as they are using the machines complained of: the terms of the decree to he settled in accordance with this opinion.